petition for en banc rehearing

8/21/2019 Petition for En Banc Rehearing

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Nos. 2014-1335, 2015-1029

United States Court of Appeals for the

Federal Circuit

APPLE INC., a California corporation,

Plaintiff-Appellee,

– v. –

SAMSUNG ELECTRONICS CO., LTD., a Korean corporation,

SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation,

SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,a Delaware limited liability company,

Defendants-Appellants.

ON APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA IN CASE NO. 11-CV-01846-LHK,

HONORABLE LUCY H. KOH

PETITION FOR REHEARING EN BANC

SUSAN R. ESTRICH

MICHAEL T. ZELLER R OBERT J. BECHER

B. DYLAN PROCTOR

QUINN EMANUEL URQUHART& SULLIVAN, LLP

865 South Figueroa Street, 10th

Floor

Los Angeles, California 90017

(213) 443-3000

K ATHLEEN M. SULLIVAN

WILLIAM B. ADAMS QUINN EMANUEL URQUHART

& SULLIVAN, LLP

51 Madison Avenue, 22nd

Floor New York, New York 10010

(212) 849-7000

Attorneys for Defendants-Appellants Samsung Electronics Co., Ltd., Samsung

Electronics America, Inc. and Samsung Telecommunications America, LLC

(For Continuation of Appearances See Inside Cover)

Case: 14-1335 Document: 159 Page: 1 Filed: 06/17/2015


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VICTORIA F. MAROULIS QUINN EMANUEL URQUHART

& SULLIVAN, LLP

555 Twin Dolphin Drive, 5th

FloorRedwood Shores, California 94065

(650) 801-5000

K EVIN A. SMITH QUINN EMANUEL URQUHART

& SULLIVAN, LLP

50 California Street, 22nd

FloorSan Francisco, California 94111

(415) 875-6600

Attorneys for Defendants-Appellants Samsung Electronics Co., Ltd., Samsung

Electronics America, Inc. and Samsung Telecommunications America, LLC



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CERTIFICATE OF INTEREST

Counsel for Defendants-Appellants certifies the following:

1. The full name of every party or amicus represented by me is:

Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. Effective

January 1, 2015, Samsung Telecommunications America, LLC (“STA”) merged

with and into Samsung Electronics America, Inc., and therefore STA no longer

exists as a separate corporate entity.

2. The name of the real party in interest (if the party named in the caption

is not the real party in interest) represented by me is:

N/A

3. All parent corporations and any publicly held companies that own 10

percent or more of the stock of the party or amicus curiae represented by me

are:

Samsung Electronics America, Inc. (“SEA”) is a wholly-owned subsidiary of

Samsung Electronics Co., Ltd. (“SEC”), a publicly held corporation organized

under the laws of the Republic of Korea. SEC is not owned by any parent

corporation and no other publicly held corporation owns 10% or more of its stock.

No other publicly held corporation owns 10% or more of SEA’s stock.



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4. The names of all law firms and the partners or associates that appeared

for the party or amicus now represented by me in the trial court or are

expected to appear in this court are:

Quinn Emanuel Urquhart & Sullivan, LLP: Anne E. Abramowitz; William B.

Adams; Anthony P. Alden; Carl G. Anderson; Brett J. Arnold; Katharine F.

Barach; Robert J. Becher; Albert P. Bedecarre; Heather E. Belville; Kara M.

Borden; Todd M. Briggs; Margret M. Caruso; Jon C. Cederberg; Melissa N. Chan;

Prashanth Chennakesavan, Kenneth R. Chiate; Edward J. DeFranco; Susan R.

Estrich; Michael L. Fazio; Ryan S. Goldstein; John S. Gordon; Diane Hutnyan;

Kevin P.B. Johnson; Rachel H. Kassabian; Scott B. Kidman; Brian E. Mack;

Victoria F. Maroulis; Joseph B. Martin; Joseph Milowic; Melissa Chan O’Sullivan;

Thomas D. Pease; John M. Pierce; William C. Price; B. Dylan Proctor; John B.

Quinn; Carey R. Ramos; Kevin A. Smith; Christopher E. Stretch; Robert W. Stone;

Kathleen M. Sullivan; Bill Trac; Mark Tung; Charles K. Verhoeven; Curran M.

Walker; Scott L. Watson; Thomas R. Watson; Alan L. Whitehurst; Robert Wilson;

Michael T. Zeller

Colt / Singer / Bea LLP: Benjamin L. Singer

Crone Hawxhurst LLP: Daryl M. Crone

DLA Piper US LLP: Thomas G. Pasternak



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Hopenfeld Singer Rice & Saito: James E. Hopenfeld; Edward H. Rice; Marina N.

Saito

Sheppard Mullin Richter & Hampton LLP : Gary L. Halling; Mona Solouki

Steptoe & Johnson LLP: John M. Caracappa; Paul A. Gennari; Michael R.

Heimbold; Huan-Yi Lin; Kfir B. Levy; Dylan Ruga

Dated: June 17, 2015 Respectfully submitted,

By: /s/ Kathleen M. Sullivan

Kathleen M. SullivanQUINN EMANUEL URQUHART

& SULLIVAN, LLP51 Madison Avenue, 22nd Floor

New York, NY 10010(212) 849-7000

Attorney for Defendants-Appellants



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TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES .................................................................................... vi

STATEMENT OF COUNSEL PURSUANT TO FED. CIR. R. 35(B)(2) ............... 1

PRELIMINARY STATEMENT ............................................................................... 1

FACTUAL STATEMENT ........................................................................................ 3

ARGUMENT ............................................................................................................. 5

I. EN BANC REVIEW IS WARRANTED TO SECURE UNIFORMITYIN DESIGN-PATENT INFRINGEMENT AND DAMAGES LAW ............. 5

A. The Panel Decision Conflicts With Prior Decisions GoverningDesign-Patent Infringement .................................................................. 5

1. The Panel Decision Conflicts With Decisions RequiringTrial Courts To Construe Design-Patent Claims WithReasonable Certainty .................................................................. 5

2. The Panel Decision Conflicts With PrecedentsPrecluding Design-Patent Infringement Based On

Functional Elements .................................................................... 7

3. The Panel Decision’s Substantial-Evidence RulingCannot Dispel These Conflicts ................................................... 9

B. The Panel’s Design-Patent Damages Ruling Conflicts With TheText, History And Purpose Of Section 289 And With DecisionsOf Predecessor Courts ......................................................................... 10

1. The Panel Decision Conflicts With Terms Of Limitation

In Statutory Text ....................................................................... 10

2. The Panel Decision Conflicts With Legislative HistoryAnd Purpose .............................................................................. 11

3. The Panel Decision Conflicts With Pre-Federal CircuitDecisions ................................................................................... 12



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4. The Panel Decision’s “Separately Marketed” Test CannotDispel These Conflicts .............................................................. 13

II. EN BANC REVIEW IS WARRANTED BECAUSE THE PANELDECISION PRESENTS QUESTIONS OF EXCEPTIONAL

IMPORTANCE FOR DESIGN-PATENT LAW .......................................... 14

CONCLUSION ........................................................................................................ 15

ADDENDUM

PROOF OF SERVICE



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TABLE OF AUTHORITIES

Page(s)

Cases

Apple Comp., Inc. v. Microsoft Corp.,35 F.3d 1435 (9th Cir. 1994) .............................................................................. 15

Apple Inc. v. Samsung Elecs. Co. Ltd.,678 F.3d 1314 (Fed. Cir. 2012) .......................................................................... 13

Apple Inc. v. Samsung Elecs. Co.,695 F.3d 1370 (Fed. Cir. 2012) .......................................................... 2, 3, 4, 5, 15

Applied Arts Corp. v. Grand Rapids Metalcraft Corp.,

67 F.2d 428 (6th Cir. 1933) ................................................................................ 15

Bilski v. Kappos,561 U.S. 593 (2010) ............................................................................................ 15

Bush & Lane Piano Co. v. Becker Bros.,222 F. 902 (2d Cir. 1915) ............................................................................. 12, 13

Bush & Lane Piano Co. v. Becker Bros.,234 F. 79 (2d Cir. 1916) ......................................................................... 12, 13, 14

Dobson v. Dornan,118 U.S. 10 (1886) .............................................................................................. 11

eBay Inc. v. MercExchange, L.L.C.,547 U.S. 388 (2006) ...................................................................................... 11, 15

Egyptian Goddess, Inc. v. Swisa, Inc.,543 F.3d 665 (Fed. Cir. 2008) .................................................................. 1, 6, 7, 8

Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995) .............................................................................. 6

Ill. Watch Case Co. v. Hingeco Mfg. Co.,81 F.2d 41 (1st Cir. 1936) ................................................................................... 15

Lee v. Dayton-Hudson Corp.,838 F.2d 1186 (Fed. Cir. 1988) ................................................................ 1, 7, 8, 9



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Markman v. Westview Instruments, Inc.,517 U.S. 370 (1996) .................................................................................. 1, 5, 7, 8

Nautilus, Inc. v. Biosig Instruments, Inc.,134 S. Ct. 2120 (2014) .............................................................................. 1, 6, 7, 8

Nike, Inc. v. Wal-Mart Stores, Inc.,138 F.3d 1437 (Fed. Cir. 1998) .......................................................................... 14

OddzOn Prods., Inc. v. Just Toys, Inc.,122 F.3d 1396 (Fed. Cir. 1997) ................................................................ 1, 7, 8, 9

Read Corp. v. Portec Inc.,970 F.2d 816 (Fed. Cir. 1992) .................................................................. 1, 7, 8, 9

ResQNet.com, Inc. v. Lansa, Inc.,594 F.3d 860 (Fed. Cir. 2010) ............................................................................ 15

Richardson v. Stanley Works, Inc.,597 F.3d 1288 (Fed. Cir. 2010) ................................................................ 1, 7, 8, 9

Rite-Hite Corp. v. Kelley Co.,56 F.3d 1538 (Fed. Cir. 1995) ............................................................................ 15

Teva Pharms. USA v. Sandoz, Inc.,135 S. Ct. 831 (2015) ................................................................................ 1, 5, 7, 8

Trans-World Mfg. Corp. v. Al Nyman & Sons Inc. ,750 F.2d 1552 (Fed. Cir. 1984) .......................................................................... 11

Untermeyer v. Freund ,50 F. 77 (C.C.S.D.N.Y. 1892) ............................................................................ 12

Untermeyer v. Freund ,58 F. 205 (2d Cir. 1893) ..................................................................................... 12

Young v. Grand Rapids Refrigerator Co.,268 F. 966 (6th Cir. 1920) .................................................................................. 13

Statutes & Regulations

35 U.S.C. § 171 ........................................................................................................ 13

35 U.S.C. § 289 .................................................................................5, 10, 11, 13, 14,



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37 C.F.R. § 1.153(a) ................................................................................................. 13

Miscellaneous Authorities

18 Cong. Rec. 835 (1887) ........................................................................................ 12

H.R. Rep. No. 1966 (1886) ...................................................................................... 12

Ryan Davis, Fed. Circ’s Apple Ruling Shows Power of Design Patents,Law360 (May 18, 2015) .................................................................................... 14

Jason Rantanen, Apple v. Samsung: Design Patents Win, available at http://patentlyo.com/patent/2015/05/samsung-design-patents.html ................... 14



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STATEMENT OF COUNSEL PURSUANT TO FED. CIR. R. 35(b)(2)

Based on my professional judgment, I believe the panel decision is contrary

to the following decisions of the Supreme Court and this Court: Teva Pharms.

USA v. Sandoz, Inc., 135 S. Ct. 831 (2015); Nautilus, Inc. v. Biosig Instruments,

Inc., 134 S. Ct. 2120 (2014); Markman v. Westview Instruments, Inc., 517 U.S. 370

(1996); Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010);

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc);

OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997); Read Corp.

v. Portec Inc., 970 F.2d 816 (Fed. Cir. 1992); and Lee v. Dayton-Hudson Corp.,

838 F.2d 1186 (Fed. Cir. 1988).

Based on my professional judgment, I believe this appeal requires an answer

to these precedent-setting questions of exceptional importance: (a) Whether a

district court must ensure, through proper claim construction and jury instructions,

that a finding of design-patent infringement does not rest on unprotected functional

elements of the design; and (b) Whether an award of an infringer ’s entire profits

exceeds the scope of section 289 of the Patent Act where a patented design is only

a minor feature of the infringing product.

/s/ Kathleen M. Sullivan

PRELIMINARY STATEMENT

This appeal arises from a $930 million judgment entered by the U.S. District

Court for the Northern District of California (Koh, J.) on Apple’s claims for patent



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infringement and trade-dress dilution. The panel (Prost, C.J., joined by O’Malley

& Chen, JJ.) reversed the award of $382 million in trade-dress dilution damages

but affirmed the remaining $548 million in damages. Of that amount, $399 million

represents an award of Samsung’s entire profits from products found to infringe

Apple’s design patents; this petition seeks en banc review of that award.

The panel decision is the first from this Court involving design-patent

infringement by a complex electronic device. Unlike rugs, spoons, and simple

mechanical objects, smartphones incorporate hundreds or thousands of different

patented technologies, and it is undisputed here that Apple’s design patents claim

only partial, minor features of such devices and that some attributes of those

designs are functional. And yet the panel upheld the infringement finding without

requiring the district court to properly construe the patents or instruct the jury to

filter out functional attributes. And the panel deemed itself bound by Section 289

to uphold an award of all of Samsung’s profits from the infringing products even

though the patented designs are only minor features of those products. Both

holdings warrant en banc review, for they conflict with precedent, create

confusion, and raise the prospect that a design patent, alone among all species of

intellectual property, will allow its holder to “leverage its patent for competitive

gain beyond that which the inventive contribution and value of the patent warrant.”

Apple Inc. v. Samsung Elecs. Co., 695 F.3d 1370, 1375 (Fed. Cir. 2012).



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FACTUAL STATEMENT

1. The Apple design patents at issue claim only a portion of a smartphone’s

front face (D’087, D’677) and one graphical-user-interface screen (D’305). At

trial, the district court declined to construe the patents except to say that each

patent “claims the ornamental design of an electronic device [or graphical user

interface] as shown” in the patent figures (A1390-91; A44019-21). And the

court’s instructions told the jury to find infringement if “the overall appearance of

an accused Samsung design is substantially the same as the overall appearance of

the claimed Apple design patent,” without limiting those similarities to ornamental

features. A1394; see id. (“You should consider any perceived similarities or

differences between the patented and accused designs.” (emphasis added)).1

As to damages, the court instructed that “Apple is entitled to all profit

earned by [a] defendant on sales of articles that infringe Apple’s design patents,”

which it defined as the “entire profit on the sale of the article to which the patented

design is applied, and not just the portion of profit attributable to the design or

1 The court rejected Samsung’s proposed instructions that, “to determineinfringement … you must consider only the ornamental design features of the

design patents…. Apple must prove by a preponderance of the evidence that theordinary observer would be deceived by reason of the common features in theclaimed and accused designs that are ornamental” (A6936), and that the designs’functional features include: “[a] rectangular display screen; [a] relatively large

display screen; [a] clear, unadorned cover over the display screen, [and] [h]aving aspeaker in the upper portion” (A7242).



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ornamental aspects covered by the patent.” A1403 (emphases added).2

2. On appeal, the panel reversed the award of trade-dress-dilution damages,

holding in a detailed 11-page discussion that Apple’s claimed trade dresses are

unprotected as functional. Slip Op. 6-17. As to Apple’s unregistered trade dress,

for example, “rounded corners improve ‘ pocketability’ and ‘durability,’”

“rectangular shape maximizes the display that can be accommodated,” and “[a] flat

clear surface on the front of the phone facilitates touch operation ….” Id. at 11.

As to Apple’s registered trade dress, Apple’s GUI “icon designs promote usability”

by “‘communicat[ing] to the consumer … that if they hit that icon, certain

functionality will occur on the phone.’” Id. at 15 (quoting Apple’s expert witness).

3. In contrast to its detailed analysis of trade-dress functionality, the panel

spent barely 3 pages rejecting Samsung’s argument that the district court had

improperly allowed the jury to base its design-patent infringement finding on the

same or similar functional features. Slip Op. 19-22, 24. The panel held that the

court had not abdicated claim construction to the jury by instructing tautologically

that the patents “claim[] only ‘the ornamental design’ as shown in the patent

2

The court declined, over Samsung’s objection (A43928-29), to instruct thatthe jury could award only profits “derived from” the “ portion of the product assold that incorporates or embodies the subject matter of the patent” (A6984

(emphasis added)). And it also rejected Samsung’s proposed instruction limitingsuch an award to profit “that is attributable to whatever infringement you have

found.” A6982; see A43924.



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figures.” Id. at 21 (quoting A1390-91). The panel held that the court’s failure to

direct the jury to consider only “‘ornamental ’ ” rather than functional similarities

was harmless. Id. at 21-22. And the panel rejected Samsung’s insufficiency

argument, holding simply that “Apple’s witnesses provided sufficient testimonies

to allow the jury to account for any functional aspects” in the patents. Id. at 24.

4. The panel held that 35 U.S.C. § 289 authorizes the award of an infringer’s

entire profits from a product containing a patented design on only a partial, minor

feature. Slip Op. 25-28. Holding that the statute allows “the award of total profit

from the article of manufacture bearing the patented design” (id. at 26-27), the

panel interpreted “article of manufacture” as something that is “sold separately …

to ordinary purchasers” and held that the term could not be limited to a product

component that embodies the claimed subject matter of the patent (id. at 27-28).

ARGUMENT

I. EN BANC REVIEW IS WARRANTED TO SECURE UNIFORMITY

IN DESIGN-PATENT INFRINGEMENT AND DAMAGES LAW

A. The Panel Decision Conflicts With Prior Decisions Governing

Design-Patent Infringement

1.

The Panel Decision Conflicts With Decisions Requiring

Trial Courts To Construe Design-Patent Claims With

Reasonable Certainty

The Supreme Court has made clear that district courts must construe the

scope and meaning of a patent claim and may not abdicate such claim construction

to a jury, Markman, 517 U.S. at 390, even when it involves factual disputes, Teva,



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135 S. Ct. at 835. Such construction must “inform, with reasonable certainty,

those skilled in the art about the scope of the invention .” Nautilus, 134 S. Ct. at

2124. And “trial courts have a duty to conduct claim construction in design patent

cases, as in utility patent cases.” Egyptian Goddess, 543 F.3d at 679 (citing Elmer

v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)).

The panel decision conflicts with these precedents, for it upholds a design-

patent infringement finding in the absence of any judicial claim construction

distinguishing ornamental from functional elements in Apple’s design patents. The

panel decision found adequate the court’s “construction” of the patents as claiming

“‘the ornamental design’ as shown in the patent figures.” Slip Op. 21 (quoting

A1390-91). But the judicial obligation to construe the scope of a design patent

cannot be satisfied merely by reciting the term “ornamental,” which already

appears on the face of the patents themselves (A20046-47; A20062; A20123). Nor

can it be satisfied by telling the jury to look at the “ patent figures” unaided by

guidance as to what is (or is not) ornamental about them, for the term “ornamental”

is not self-executing, and there can be no doubt that the figures of Apple’s design

patents contain functional elements, as the panel’s trade-dress holding confirms.3

3 The D’087 and D’677 claim elements similar to the unregistered trade dressthe panel found functional, and the D’305 claims a GUI with icons similar to the

registered trade dress the panel found functional.



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Until now, this Court’s precedents have made clear that, where “a design

contains both functional and non-functional elements, the scope of the claim must

be construed” to distinguish those elements. OddzOn, 122 F.3d at 1405, quoted in

Egyptian Goddess, 543 F.3d at 680; see Richardson, 597 F.3d at 1294. This Court

has never before held that requirement satisfied by merely reciting a patent’s claim

to the “ornamental design” as shown in the figures, and the panel decision thus

conflicts with precedent by leaving district courts free to forego a construction that

“limits the scope of the patent” to ornamental attributes. OddzOn, 122 F.3d at

1405. The decision also conflicts with Markman, Nautilus, Teva, and Egyptian

Goddess by leaving it up to “the jury to account for any functional aspects in the

asserted design patents” (Slip Op. 24 (emphasis added)), when that role is for the

court. These conflicts warrant en banc review.

2.

The Panel Decision Conflicts With Precedents Precluding

Design-Patent Infringement Based On Functional Elements

The panel decision further conflicts with this Court’s uniform line of

decisions requiring that design-patent infringement be based on similarities in the

overall appearance of only those “features in the claimed and accused designs

which are ornamental .” Read, 970 F.2d at 825 (emphasis added). On a record in

which Apple’s designs clearly contain significant functional elements, the panel

decision cannot be reconciled with these prior decisions.

For example, in Lee, 838 F.2d 1186, this Court affirmed a bench-trial



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judgment of non-infringement where an accused massager had a “general

configuration” similar to a patented design but lacked “similarity of or namental

appearance.” Id. at 1188-89. In Read , this Court reversed the denial of a motion

for JNOV of non-infringement where a “screening apparatus” was similar to a

claimed design as drawn, but there was no showing of similarity based solely on

ornamental attributes. 970 F.2d at 825-26. In OddzOn, this Court affirmed a

summary judgment of non-infringement despite overall similarity in the “football

shape,” “tail and fins,” and “‘rocket-like appearance’” of the accused toys and the

patented designs, reasoning that those elements were not protected ornamental

features. 122 F.3d at 1405-07. And in Richardson, this Court affirmed a bench-

trial judgment of non-infringement despite overall similarity between an accused

carpentry tool and the claimed design, reasoning that the district court had

“properly factored out the functional aspects of Richardson’s design as part of its

claim construction” and had properly “ignor[ed] the functional elements of the

tools” in its infringement analysis. 597 F.3d at 1293, 1296.4

4 The panel’s effort to reconcile its decision with Richardson (Slip Op. 20) isunavailing. The panel notes that the claim construction approved in Richardson

“did not exclude” functional components “in their entirety” but instead “includedthe ornamental aspects of those components” (e.g ., a hammer head of a “standardshape” or a crow- bar with a “diamond-shaped flare”). But here the district court’sconstruction did not mention any features of Apple’s designs, much less specifythe ornamental aspects of particular components (e.g ., rounded corner s with “ashallow radius,” or an outer casing with “a narrow bezel”). Contrary to the panel’s



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In each of these precedents, there was overall similarity between the designs,

but this Court held infringement precluded for lack of proof of overall ornamental

similarity. The panel decision breaks with this line of authority by upholding an

instruction that the jury should consider “any similarities” rather than only

ornamental, not functional, similarities and that never explained the standard for

determining functionality for infringement purposes. See supra, at 3 & n.1. The

panel’s holding conflicts with Lee, Read , OddzOn, and Richardson, and warrants

en banc review by this Court.

3. The Panel Decision’s Substantial-Evidence Ruling Cannot

Dispel These Conflicts

The panel devoted but a single paragraph (Slip Op. 24) to rejecting

Samsung’s arguments that the record failed to support infringement under the

proper standards, holding that “A pple’s witnesses provided sufficient testimonies

to allow the jury to account for any functional aspects in the asserted design

patents” and that those “witnesses testified on the similar overall visual

impressions of the accused products to the asserted design patents.” But these

unexplained statements only compound the conflicts described above, for Apple’s

suggestion (id.), Samsung has never argued that entire components must be“eliminate[d] … from the claim scope” when they serve a function, but rather thatonly their ornamental attributes may be considered and their functional attributesmust be identified and discounted.



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experts relied on functional features in forming their “overall similarity” opinions.5

Thus the record did not enable the jury to find its own way to an infringement

verdict limited to ornamental similarity. This Court should grant en banc review.

B.

The Panel’s Design-Patent Damages Ruling Conflicts With The

Text, History And Purpose Of Section 289 And With Decisions Of

Predecessor Courts

1.

The Panel Decision Conflicts With Terms Of Limitation In

Statutory Text

Section 289 allows damages “to the extent of [the infringer’s] total profit”

for applying a patented design to an “article of manufacture,” and prohibits a

patentee from “twice recover[ing] the profit made from the infringement.” 35

U.S.C. § 289 (emphases added). The panel deemed itself “bound” by this text to

uphold the award of all of Samsung’s profits on phones found to infringe Apple’s

design patents — no matter how minor a portion of a smartphone the patented

designs comprise, whether or not the patented designs drove a single sale, and even

if such an award “makes no sense in the modern world.” Slip Op. 26-27 & n.1.

5 For example, Apple’s D’305 expert opined that Samsung’s productsconveyed a similar overall impression because they included “a regular grid” and a

“colorful mix of icons” (A41379), even though Apple admitted that it cannot own“a colorful matrix of icons” or “icons arranged in rows and columns in a grid”

(A41479-80). Likewise, Apple’s D’677 expert testified that features including a“rectangular display area” under a “transparent” surface and a “receiver slot in theupper border area” contributed to the overall impression of the design (A41015-19), even though Apple admitted those features were essential for function and“absolutely functional” (A41202-03; A40681). Apple’s experts did not filter outany functional elements in forming their opinions. A41093; A41474; A43486.



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Nothing in the text of Section 289, however, compels an award of all profits

from the sale of a product containing an infringing design even where, as here, “the

patented invention is but a small component of the product” as sold, eBay Inc. v.

MercExchange, L.L.C ., 547 U.S. 388, 396 (2006) (Kennedy, J., concurring). To

the contrary, the phrase “to the extent of his total profits” is best read as a term of

limitation that makes total infringer’s profits a ceiling not a floor; the phrase “profit

made from the infringement” shows that Section 289 permits only profits caused

by the infringement; and the term “article of manufacture” is most naturally

interpreted to mean the portion of a product as sold to which the patented design is

applied, as otherwise a defendant could be held liable for all its profits multiple

times over if its product infringed design patents held by multiple patentees.

2. The Panel Decision Conflicts With Legislative History And

Purpose

Congress enacted what is now Section 289 in the Patent Act of 1887 in

response to Dobson v. Dornan, 118 U.S. 10 (1886), which had limited a plaintiff to

“only nominal damages” for infringement of a patented carpet design absent proof

of the portion of the defendant’s profits “attributable to the value of the design as

distinct from the value of the carpet itself.” Trans-World Mfg. Corp. v. Al Nyman

& Sons Inc., 750 F.2d 1552, 1567 (Fed. Cir. 1984). Congress viewed the decision

as precluding “effectual money recovery for infringement” of design patents,

which then principally covered unitary articles like “beautiful carpets and wall-



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papers and oil-clothes,” as to which it would be difficult to separate the design’s

value from the value of the article itself. H.R. R EP. NO. 1966, at 1, 3 (1886).

The legislative history, however, contradicts the panel’s holding that an

award of total profits is authorized even for products containing a patented design

as only a minor component. To the contrary, the bill’s s ponsor, Representative

Martin, disclaimed any intent to displace the bedrock causation principles

underlying patent law, reassuring skeptics that the new act would not permit total-

profits awards “without any proof that this arises from the use of the design” or

where “those profits arise … from various other circumstances which may enter

into the manufacture.” 18 Cong. Rec. 835 (1887) (Rep. Martin) (emphases added).

3.

The Panel Decision Conflicts With Pre-Federal Circuit

Decisions

The panel’s damages holding also conflicts with key design-patent decisions

closer in time to the Patent Act of 1887: In Untermeyer v. Freund , 58 F. 205 (2d

Cir. 1893), the Second Circuit affirmed an award of infringer’s profits from sale of

a watch case to which the design was applied and not from sales of the watch itself,

see Untermeyer v. Freund , 50 F. 77, 77-78 (C.C.S.D.N.Y. 1892). In the Piano

Cases, the Second Circuit allowed an award of infringer’s profits from the patented

design of a piano case but not from the sale of the entire piano, holding that

“recovery should be confined to the subject of the patent” and “[w]hen the patent

owner is awarded the profits due to his design he receives all he is entitled to.”



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13

Bush & Lane Piano Co. v. Becker Bros., 222 F. 902, 904-05 (2d Cir. 1915); see

Bush & Lane Piano Co. v. Becker Bros., 234 F. 79, 81-83 (2d Cir. 1916) (“ Piano

II ”). And in Young v. Grand Rapids Refrigerator Co., 268 F. 966, 974 (6th Cir.

1920), the Sixth Circuit affirmed the denial of all profits from the sale of

refrigerators where the infringed patent related only to the design of the

refrigerator’s door latch. The panel decision cannot be reconciled with these cases.

4. The Panel Decision’s “Separately Marketed” Test Cannot

Dispel These Conflicts

The panel suggested that a minor component of a complex product could

constitute an “article of manufacture” only if it is “sold separately … to ordinary

consumers.” Slip Op. 27-28. This newly announced test, however, lacks basis in

the statutory text, and the panel did not explain why the marketplace, rather than

the design patent itself, should determine the “article of manufacture.”6 Moreover,

the panel miscited the Piano Cases for the proposition that “ordinary purchasers

regarded a piano and a piano case as distinct articles of manufacture” (id. at 27),

6 Section 289 must be read in conjunction with Section 171, which providesthat a design patent is for an “article of manufacture.” 35 U.S.C. § 171. And byregulation, “[t]he title of the design [in an application] must designate the

particular article.” 37 C.F.R. § 1.153(a). Design patents thus are regularly applied

to “articles” that are mere components of products as sold. Here, for example,Apple’s D’305 application limits the “article of manufacture” to the “GraphicalUser Interface for a Display Screen or Portion Thereof.” A1289. While Apple’s

D’677 and D’087 applications have improperly broader titles (“Electronic Device”(A1294; A1310)), the claims are limited to the top portion of the device’s case.See Apple Inc. v. Samsung Elecs. Co. Ltd ., 678 F.3d 1314, 1317 (Fed. Cir. 2012).



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14

when in fact the Second Circuit clarified in Piano II that that proposition was

“unsupported by the evidence” and that the existence of a “separate market …

makes no difference in the rule of law ….” 234 F. at 83 (emphasis added).7

II. EN BANC REVIEW IS WARRANTED BECAUSE THE PANEL

DECISION PRESENTS QUESTIONS OF EXCEPTIONAL

IMPORTANCE FOR DESIGN-PATENT LAW

The panel decision’s design-patent holdings also warrant en banc review

because their combined effect is to invite overprotection and overcompensation for

design patents, free from the limitations imposed in other areas of intellectual

property law, with potentially far-reaching consequences. As commentators have

already suggested, such a unique outlier status for design patents will predictably

lead to “an explosion of design patent assertions and lawsuits.”8

First , the panel decision allows a design-patent holder to impose

infringement liability based on functional attributes, thereby expanding the scope

of a design-patent monopoly. Such overprotection is not permitted in other areas

7 Nor does Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437 (Fed. Cir. 1998),dispel any conflict. Nike involved interpretation of the term “damages” in themarking statute and did not hold that Section 289 requires an award of all profitsfor products containing an infringing design on a minor feature.

8

Jason Rantanen, Apple v. Samsung: Design Patents Win, available at http://patentlyo.com/patent/2015/05/samsung-design-patents.html; see Ryan Davis, Fed. Circ’s Apple Ruling Shows Power of Design Patents , Law360 (May 18, 2015)(reporting commentary that panel decision will “lead to surge in design patentapplications and later, in litigation over them”), available at http://www.law360.com/articles/657105/fed-circ-s-apple-ruling-shows-power-of-design-patents.



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15

of law.9 Second, the decision allows a design-patent holder to automatically obtain

total infringer’s profits even if “the patented invention is but a small component of

the product” as sold, eBay, 547 U.S. at 396 (Kennedy, J., concurring), risking

absurd results such as an award of total profits for a car based on an infringing

cupholder. Such overcompensation is not permitted in other areas of law.10

Long before this Court was created, predecessor courts sought to ensure that

unprotectable attributes of designs were not wrongly monopolized by findings of

infringement.11 Whether design patents will face similar limitations in the future

raises questions of exceptional importance that warrant en banc review.

CONCLUSION

For the foregoing reasons, the petition should be granted.

9 For example, Apple’s attempt to monopolize a GUI was rejected long ago

under copyright law, where unprotectable ideas are filtered out before consideringinfringement. Apple Comp., Inc. v. Microsoft Corp., 35 F.3d 1435, 1445 (9th Cir.1994). As the panel held in reversing the trade-dress judgment, trademark lawavoids wrongful monopoly by limiting protection of design features to “those thatare ‘nonfunctional.’” Slip Op. 7. And in patent law, “abstract ideas” and “natural phenomena” cannot be monopolized. Bilski v. Kappos, 561 U.S. 593, 603 (2010).

10 For example, proof of causation is required for utility-patent infringementdamages. Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1545 (Fed. Cir. 1995) (en

banc) (lost profits); ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 869 (Fed. Cir.2010) (reasonable royalty). A patent injunction likewise requires proof of a“causal nexus” to irreparable harm. Apple, 695 F.3d at 1375.

11 E.g., Ill. Watch Case Co. v. Hingeco Mfg. Co., 81 F.2d 41, 45 (1st Cir. 1936)(infringement cannot be based on device’s “essential characteristics,” on which “no

one could have a monopoly”); Applied Arts Corp. v. Grand Rapids Metalcraft

Corp., 67 F.2d 428, 430-31 (6th Cir. 1933) (similar).



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16

Attorneys for Defendants-Appellants

Dated: June 17, 2015 Respectfully submitted,

By: /s/ Kathleen M. SullivanSusan R. EstrichMichael T. ZellerRobert J. BecherB. Dylan ProctorQUINN EMANUEL URQUHART

& SULLIVAN, LLP865 S. Figueroa St., 10th FloorLos Angeles, CA 90017(213) 443-3000

Kathleen M. SullivanWilliam B. AdamsQUINN EMANUEL URQUHART

& SULLIVAN, LLP51 Madison Avenue, 22nd Floor

New York, NY 10010(212) 849-7000

Victoria F. MaroulisQUINN EMANUEL URQUHART

& SULLIVAN, LLP555 Twin Dolphin Drive, 5th FloorRedwood Shores, CA 94065(650) 801-5000

Kevin A. SmithQUINN EMANUEL URQUHART& SULLIVAN, LLP

50 California St., 22nd FloorSan Francisco, CA 94111(415) 875-6600



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ADDENDUM



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United States Court of Appeals

for the Federal Circuit ______________________

APPLE INC., a California corporation, Plaintiff-Appellee

v.

SAMSUNG ELECTRONICS CO., LTD.,a Korean corporation,

SAMSUNG ELECTRONICS AMERICA, INC.,a New York corporation,

SAMSUNG TELECOMMUNICATIONS AMERICA,LLC, a Delaware limited liability company,

Defendants-Appellants

______________________

2014-1335, 2015-1029

______________________

Appeals from the United States District Court for theNorthern District of California in No. 5:11-cv-01846,Judge Lucy H. Koh.

______________________

Decided: May 18, 2015 ______________________

WILLIAM F. LEE, Wilmer Cutler Pickering Hale andDorr LLP, Boston, MA, argued for plaintiff-appellee. Alsorepresented by A NDREW J. D ANFORD, M ARK CHRISTOPHER

FLEMING, ERIC FLETCHER, L AUREN B. FLETCHER, S ARAH R. FRAZIER, K EVIN SCOTT PRUSSIA ; J AMES QUARLES, III, M ARK

D. SELWYN, THOMAS GREGORY SPRANKLING, Washington,DC; R ACHEL K REVANS, CHRISTOPHER ROBINSON,

Case: 14-1335 Document: 158-2 Page: 1 Filed: 05/18/2015Case: 14-1335 Document: 159 Page: 28 Filed: 06/17/2015


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APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.2

N ATHANIEL BRYAN S ABRI, RUTH N. BORENSTEIN, Morrison& Foerster LLP, San Francisco, CA.

K ATHLEEN M. SULLIVAN, Quinn Emanuel Urquhart &

Sullivan, LLP, New York, NY, argued for defendants-appellants. Also represented by WILLIAM A DAMS; ROBERT

J ASON BECHER, SUSAN R ACHEL ESTRICH, B. D YLAN

PROCTOR, MICHAEL THOMAS ZELLER, Los Angeles, CA; VICTORIA FISHMAN M AROULIS, Redwood Shores, CA;K EVIN A LEXANDER SMITH, San Francisco, CA.

ERIK SCOTT J AFFE, Erik S. Jaffe, P.C., Washington,

DC, for amicus curiae Hispanic Leadership Fund.

TIM DELANEY , Brinks Gilson & Lione, Chicago, IL, foramicus curiae National Grange of the Order of the Pa-

trons of Husbandry. Also represented by L AURA A. L YDIGSEN.

M ARK A. LEMLEY , Durie Tangri LLP, San Francisco,CA, for amici curiae David Abrams, Sarah Burstein,Michael A. Carrier, Bernard Chao, Andrew Chin, Ralph

D. Clifford, Jorge Contreras, Thomas Cotter, Robin Feld-man, William Gallagher, Jon M. Garon, Shubha Ghosh,

Amy Landers, Mark A. Lemley, Oskar Liivak, Brian J.Love, Jonathan Masur, Stephen McJohn, Mark P.McKenna, Tyler T. Ochoa, Michael Risch, Jason MichaelSchultz, Lea Shaver, Jessica Silbey, Katherine J. Strand-

burg, Rebecca Tushnet, Ryan Vacca.

JOSEPH C ARL CECERE, JR., Cecere PC, Dallas, TX, foramicus curiae The National Black Chamber of Commerce.

M ATTHEW SCHRUERS, Computer & Communications

Industry Association, Washington, DC, for amicus curiae

Computer & Communications Industry Association.



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APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 3

M ARK D AVID J ANIS, Indiana University Maurer Schoolof Law, Bloomington, IN, for amici curiae Jason J. Du

Mont, Mark David Janis.

PERRY J. S AIDMAN, Saidman DesignLaw Group, SilverSpring, MD, for amici curiae Design Ideas, Ltd., Novo

Nordisk Inc., Lutron Electronics, Inc., Nuvasive, Inc.,Method Products, PBC, Oakley, Inc., Deckers OutdoorCorporation, Kohler Company.

JOEL S AYRES, Faegre Baker Daniels LLP, Denver, CO,for amicus curiae Crocs, Inc.

BRIAN BUROKER, Gibson, Dunn & Crutcher LLP,Washington, DC, for amici curiae Michael McCoy, StevenCarl Visser, Lorraine Justice, Jim Agutter, Prasad

Boradkar, James G. Budd, Rama Chorpash, GregoryBryant Darby, Ed Dorsa, Tom Gattis, Allan Hastings,

James Kaufman, Brook Kennedy, Haig Khachatoorian,Carol Joan Lasch, Thornton Lothrop, Tom Matano,George L. McCain, Zhenyu Cheryl Qian, Lance G. Rake,James Morley Read, Kevin Reeder, Jinseup Shin, aka Ted

Shin, Bruce M. Tharp, Gregory Thomas, Richard Wilfred Yelle. Also represented by HOWARD S. HOGAN, M ARK

A NDREW PERRY , S ARAH SLADIC, LUCAS C. TOWNSEND;

THEODORE J. BOUTROUS, JR., Los Angeles, CA; HERVEYM ARK L YON, Palo Alto, CA.

M ARK S. D AVIES, Orrick, Herrington & Sutcliffe LLP,Washington, DC, for amici curiae Charles L. Mauro,

James Douglas Alsup, Jr., Charles Austen Angell, DanielW. Ashcraft, Joseph M. Ballay, Alex Bally, Michelle S.Berryman, Eric Beyer, Robert Ian Blaich, Gordon PaulBruce, Robert Brunner, William Bullock, Bruce Claxton,

Del Coates, Robert J. Cohn, James Couch, George Russell

Daniels, Mark Dziersk, John Edson, Gerard Furbershaw,Carroll Gantz, John Leavitt Gard, Michael Garten, Don-ald M. Genaro, Betsy Goodrich, Stephen G. Hauser,



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James J. Lesko, Scott David Mason, Patricia Moore, LouisNelson, Christopher J. Parke, Nancy Perkins, Gordon

Perry, Samuel B. Petre, Dale Raymond, Raymond W.Riley, Brian Roderman, Bryce G. Rutter, Andrew Serb-

inski, Ritasue Siegel, Paul Specht, Budd Steinhilber, John V. Stram, Kerstin Nelsen Strom, Mathieu Turpault, Gary

Van Deursen, Frank Von Holzhausen, Sohrab Vossoughi, Arnold Wasserman, Allan E. Weaver, Edmund A. Weaver,Robert Welsh, Stephen B. Wilcox, Angela Yeh. Also repre-sented by K ATHERINE M. K OPP; R ACHEL W AINER A PTER,

New York, NY; WILL MELEHANI, Irvine, CA. ______________________

Before PROST, Chief Judge, O’M ALLEY and CHEN, CircuitJudges.

PROST, Chief Judge.

Samsung Electronics Co., Ltd., Samsung Electronics

America, Inc., Samsung Telecommunications America,LLC (collectively, “Samsung”) appeal from a final judg-ment of the U.S. District Court for the Northern District

of California in favor of Apple Inc. (“Apple”).

A jury found that Samsung infringed Apple’s design

and utility patents and diluted Apple’s trade dresses. Forthe reasons that follow, we affirm the jury’s verdict on thedesign patent infringements, the validity of two utility

patent claims, and the damages awarded for the designand utility patent infringements appealed by Samsung.

However, we reverse the jury’s findings that the assertedtrade dresses are protectable. We therefore vacate the

jury’s damages awards against the Samsung productsthat were found liable for trade dress dilution and remand

for further proceedings consistent with this opinion.

B ACKGROUND

Apple sued Samsung in April 2011. On August 24,2012, the first jury reached a verdict that numerous



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Samsung smartphones infringed and diluted Apple’spatents and trade dresses in various combinations and

awarded over $1 billion in damages.

The infringed design patents are U.S. Design Patent

Nos. D618,677 (“D’677 patent”), D593,087 (“D’087 pa-tent”), and D604,305 (“D’305 patent”), which claim certaindesign elements embodied in Apple’s iPhone. The in-fringed utility patents are U.S. Patent Nos. 7,469,381

(“’381 patent”), 7,844,915 (“’915 patent”), and 7,864,163(“’163 patent”), which claim certain features in the iPh-

one’s user interface. The diluted trade dresses areTrademark Registration No. 3,470,983 (“’983 trade dress”)

and an unregistered trade dress defined in terms ofcertain elements in the configuration of the iPhone.

Following the first jury trial, the district court upheld

the jury’s infringement, dilution, and validity findingsover Samsung’s post-trial motion. The district court also

upheld $639,403,248 in damages, but ordered a partialretrial on the remainder of the damages because they hadbeen awarded for a period when Samsung lacked notice ofsome of the asserted patents. The jury in the partial

retrial on damages awarded Apple $290,456,793, whichthe district court upheld over Samsung’s second post-trial

motion. On March 6, 2014, the district court entered afinal judgment in favor of Apple, and Samsung filed anotice of appeal. We have jurisdiction under 28 U.S.C.

§ 1295(a)(1).

DISCUSSION

We review the denial of Samsung’s post-trial motionsunder the Ninth Circuit’s procedural standards. SeeRevolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d1358, 1370-71 (Fed. Cir. 2009). The Ninth Circuit reviews

de novo a denial of a motion for judgment as a matter of

law. Id. “The test is whether the evidence, construed inthe light most favorable to the nonmoving party, permitsonly one reasonable conclusion, and that conclusion is



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contrary to that of the jury.” Id. (citing Theme Promo-tions, Inc. v. News Am. Mktg. FSI , 546 F.3d 991, 999 (9th

Cir. 2008)).

The Ninth Circuit reviews a denial of a motion for a

new trial for an abuse of discretion. Revolution Eyewear,563 F.3d at 1372. “In evaluating jury instructions, preju-dicial error results when, looking to the instructions as awhole, the substance of the applicable law was [not] fairly

and correctly covered.” Gantt v. City of Los Angeles, 717F.3d 702, 707 (9th Cir. 2013) (quoting Swinton v. PotomacCorp., 270 F.3d 794, 802 (9th Cir. 2001)) (alteration inoriginal). The Ninth Circuit orders a new trial based on

jury instruction error only if the error was prejudicial. Id. A motion for a new trial based on insufficiency of evidence

may be granted “only if the verdict is against the greatweight of the evidence, or it is quite clear that the jury

has reached a seriously erroneous result.” Incalza v.Fendi N. Am., Inc., 479 F.3d 1005, 1013 (9th Cir. 2007)

(internal quotation marks omitted).

Samsung appeals numerous legal and evidentiary ba-ses for the liability findings and damages awards in the

three categories of intellectual property asserted by Apple: trade dresses, design patents, and utility patents.

We address each category in turn.

I. Trade Dresses

The jury found Samsung liable for the likely dilution

of Apple’s iPhone trade dresses under the Lanham Act.When reviewing Lanham Act claims, we look to the law of

the regional circuit where the district court sits. ERBEElektromedizin GmbH v. Canady Tech. LLC , 629 F.3d1278, 1287 (Fed. Cir. 2010). We therefore apply Ninth

Circuit law.

The Ninth Circuit has explained that “[t]rade dress isthe totality of elements in which a product or service ispackaged or presented.” Stephen W. Boney, Inc. v. Boney



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Servs., Inc., 127 F.3d 821, 828 (9th Cir. 1997). The essen-tial purpose of a trade dress is the same as that of a

trademarked word: to identify the source of the product. 1McCarthy on Trademarks and Unfair Competition § 8:1

(4th ed.) (“[L]ike a word asserted to be a trademark, theelements making up the alleged trade dress must have

been used in such a manner as to denote productsource.”). In this respect, “protection for trade dressexists to promote competition.” TrafFix Devices, Inc. v.

Mktg. Displays, Inc., 532 U.S. 23, 28 (2001).

The protection for source identification, however,must be balanced against “a fundamental right to compete

through imitation of a competitor’s product . . . .” Leath-erman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d

1009, 1011-12 (9th Cir. 1999). This “right can only betemporarily denied by the patent or copyright laws.” Id.

In contrast, trademark law allows for a perpetual monop-oly and its use in the protection of “physical details anddesign of a product” must be limited to those that are“nonfunctional.” Id. at 1011-12; see also Qualitex Co. v.Jacobson Prods. Co., 514 U.S. 159, 164-65 (1995) (“If aproduct’s functional features could be used as trademarks,

however, a monopoly over such features could be obtained

without regard to whether they qualify as patents andcould be extended forever (because trademarks may berenewed in perpetuity).”). Thus, it is necessary for us to

determine first whether Apple’s asserted trade dresses,claiming elements from its iPhone product, are non-

functional and therefore protectable.

“In general terms, a product feature is functional if itis essential to the use or purpose of the article or if itaffects the cost or quality of the article.” Inwood Labs.,Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982). “A

product feature need only have some utilitarian ad-

vantage to be considered functional.” Disc Golf Ass’n v.Champion Discs, Inc., 158 F.3d 1002, 1007 (9th Cir.1998). A trade dress, taken as a whole, is functional if it



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is “in its particular shape because it works better in this

shape.” Leatherman, 199 F.3d at 1013.

“[C]ourts have noted that it is, and should be, moredifficult to claim product configuration trade dress than

other forms of trade dress.” Id. at 1012-13 (discussingcases). Accordingly, the Supreme Court and the NinthCircuit have repeatedly found product configuration tradedresses functional and therefore non-protectable. See,

e.g., TrafFix , 532 U.S. at 26-27, 35 (reversing the SixthCircuit’s reversal of the district court’s grant of summary

judgment that a trade dress on a dual-spring design fortemporary road sign stands was functional); Secalt S.A. v.

Wuxi Shenxi Const. Mach. Co., 668 F.3d 677, 687 (9th Cir.2012) (affirming summary judgment that a trade dress on

a hoist design was functional); Disc Golf , 158 F.3d at 1006(affirming summary judgment that a trade dress on a disc

entrapment design was functional).

Moreover, federal trademark registrations have beenfound insufficient to save product configuration tradedresses from conclusions of functionality. See, e.g., Talk-ing Rain Beverage Co. v. S. Beach Beverage, 349 F.3d 601,

602 (9th Cir. 2003) (affirming summary judgment thatregistered trade dress covering a bottle design with a grip

handle was functional); Tie Tech, Inc. v. Kinedyne Corp.,296 F.3d 778, 782-83 (9th Cir. 2002) (affirming summary

judgment that registered trade dress covering a handheldcutter design was functional). The Ninth Circuit has even

reversed a jury verdict of non-functionality of a productconfiguration trade dress. See Leatherman, 199 F.3d at

1013 (reversing jury verdict that a trade dress on theoverall appearance of a pocket tool was non-functional).

Apple conceded during oral argument that it had not citeda single Ninth Circuit case that found a product configu-

ration trade dress to be non-functional. Oral Arg. 49:06-

30, available at http://www.cafc.uscourts.gov/oral-argument-recordings/14-1335/all.



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The Ninth Circuit’s high bar for non-functionalityframes our review of the two iPhone trade dresses on

appeal. While the parties argue without distinguishingthe two trade dresses, the unregistered trade dress and

the registered ’983 trade dress claim different details andare afforded different evidentiary presumptions under the

Lanham Act. We analyze the two trade dresses separate-

ly below.

A. Unregistered Trade Dress

Apple claims elements from its iPhone 3G and 3GSproducts to define the asserted unregistered trade dress:

a rectangular product with four evenly roundedcorners;

a flat, clear surface covering the front of the prod-

uct;

a display screen under the clear surface;

substantial black borders above and below thedisplay screen and narrower black borders on ei-

ther side of the screen; and

when the device is on, a row of small dots on the

display screen, a matrix of colorful square iconswith evenly rounded corners within the displayscreen, and an unchanging bottom dock of colorful

square icons with evenly rounded corners set offfrom the display’s other icons.

Appellee’s Br. 10-11. As this trade dress is not registered

on the principal federal trademark register, Apple “hasthe burden of proving that the claimed trade dress, takenas a whole, is not functional . . . .” See 15 U.S.C.

§ 1125(c)(4)(A).

Apple argues that the unregistered trade dress is non-functional under each of the Disc Golf factors that theNinth Circuit uses to analyze functionality: “(1) whether



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the design yields a utilitarian advantage, (2) whetheralternative designs are available, (3) whether advertising

touts the utilitarian advantages of the design, and(4) whether the particular design results from a compara-

tively simple or inexpensive method of manufacture.” See Disc Golf , 158 F.3d at 1006. However, the Supreme Court

has more recently held that “a feature is also functional. . . when it affects the cost or quality of the device.” SeeTrafFix , 532 U.S. at 33. The Supreme Court’s holdingwas recognized by the Ninth Circuit as “short circuiting

some of the Disc Golf factors.” Secalt, 668 F.3d at 686-87.Nevertheless, we explore Apple’s contentions on each of

the Disc Golf factors and conclude that there was insuffi-

cient evidence to support a jury finding in favor of non-functionality on any factor.

1. Utilitarian Advantage

Apple argues that “the iPhone’s physical design did

not ‘contribute unusually . . . to the usability’ of the de-vice.” Appellee’s Br. 61 (quoting J.A. 41095:11-12) (alter-ation in original). Apple further contends that theunregistered trade dress was “developed . . . not for ‘supe-

rior performance.’” Id. at 62 n.18. Neither “unusualusability” nor “superior performance,” however, is the

standard used by the Ninth Circuit to determine whetherthere is any utilitarian advantage. The Ninth Circuit“has never held, as [plaintiff] suggests, that the productfeature must provide superior utilitarian advantages. To

the contrary, [the Ninth Circuit] has suggested that inorder to establish nonfunctionality the party with the

burden must demonstrate that the product feature servesno purpose other than identification.” Disc Golf , 158 F.3d

at 1007 (internal quotation marks omitted).

The requirement that the unregistered trade dress

“serves no purpose other than identification” cannot bereasonably inferred from the evidence. Apple emphasizesa single aspect of its design, beauty, to imply the lack of



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other advantages. But the evidence showed that theiPhone’s design pursued more than just beauty. Specifi-

cally, Apple’s executive testified that the theme for thedesign of the iPhone was:

to create a new breakthrough design for a phonethat was beautiful and simple and easy to use andcreated a beautiful, smooth surface that had atouchscreen and went right to the rim with the

bezel around it and looking for a look that wefound was beautiful and easy to use and appeal-

ing.

J.A. 40722-23 (emphases added).

Moreover, Samsung cites extensive evidence in the

record that showed the usability function of every singleelement in the unregistered trade dress. For example,

rounded corners improve “pocketability” and “durability”and rectangular shape maximizes the display that can beaccommodated. J.A. 40869-70; J.A. 42612-13. A flat clearsurface on the front of the phone facilitates touch opera-

tion by fingers over a large display. J.A. 42616-17. Thebezel protects the glass from impact when the phone is

dropped. J.A. 40495. The borders around the display are

sized to accommodate other components while minimizingthe overall product dimensions. J.A. 40872. The row ofdots in the user interface indicates multiple pages of

application screens that are available. J.A. 41452-53.The icons allow users to differentiate the applications

available to the users and the bottom dock of unchangingicons allows for quick access to the most commonly usedapplications. J.A. 42560-61; J.A. 40869-70. Apple rebuts

none of this evidence.

Apple conceded during oral argument that its trade

dress “improved the quality [of the iPhone] in some re-

spects.” Oral Arg. 56:09-17. It is thus clear that theunregistered trade dress has a utilitarian advantage. See

Disc Golf , 158 F.3d at 1007.



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2. Alternative Designs

The next factor requires that purported alternativedesigns “offer exactly the same features” as the assertedtrade dress in order to show non-functionality. Tie Tech,

296 F.3d at 786 (quoting Leatherman, 199 F.3d at 1013-14). A manufacturer “does not have rights under tradedress law to compel its competitors to resort to alternativedesigns which have a different set of advantages and

disadvantages.” Id.

Apple, while asserting that there were “numerous al-ternative designs,” fails to show that any of these alterna-

tives offered exactly the same features as the asserted

trade dress. Appellee’s Br. 62. Apple simply catalogs themere existence of other design possibilities embodied inrejected iPhone prototypes and other manufacturers’

smartphones. The “mere existence” of other designs,however, does not prove that the unregistered trade dress

is non-functional. See Talking Rain, 349 F.3d at 604.

3. Advertising of Utilitarian Advantages

“If a seller advertises the utilitarian advantages of a

particular feature, this constitutes strong evidence offunctionality.” Disc Golf , 158 F.3d at 1009. An “infer-

ence” of a product feature’s utility in the plaintiff’s adver-tisement is enough to weigh in favor of functionality of a

trade dress encompassing that feature. Id.

Apple argues that its advertising was “[f]ar from tout-

ing any utilitarian advantage of the iPhone design . . . .” Appellee’s Br. 60. Apple relies on its executive’s testimo-ny that an iPhone advertisement, portraying “the distinc-tive design very clearly,” was based on Apple’s “product as

hero” approach. Id. (quoting J.A. 40641-42; 40644:22).The “product as hero” approach refers to Apple’s stylistic

choice of making “the product the biggest, clearest, mostobvious thing in [its] advertisements, often at the expenseof anything else around it, to remove all the other ele-



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ments of communication so [the viewer] see[s] the product

most predominantly in the marketing.” J.A. 40641-42.

Apple’s arguments focusing on its stylistic choice,however, fail to address the substance of its advertise-

ments. The substance of the iPhone advertisement reliedupon by Apple gave viewers “the ability to see a bit abouthow it might work,” for example, “how flicking and scroll-ing and tapping and all these multitouch ideas simply

[sic].” J.A. 40644:23-40645:2. Another advertisementcited by Apple similarly displayed the message,

“[t]ouching is believing,” under a picture showing a user’shand interacting with the graphical user interface of an

iPhone. J.A. 24896. Apple fails to show that, on thesubstance, these demonstrations of the user interface on

iPhone’s touch screen involved the elements claimed in Apple’s unregistered trade dress and why they were not

touting the utilitarian advantage of the unregistered

trade dress.

4. Method of Manufacture

The fourth factor considers whether a functional bene-fit in the asserted trade dress arises from “economies in

manufacture or use,” such as being “relatively simple or

inexpensive to manufacture.” Disc Golf , 158 F.3d at 1009. Apple contends that “[t]he iPhone design did not re-

sult from a ‘comparatively simple or inexpensive methodof manufacture’” because Apple experienced manufactur-

ing challenges. Appellee’s Br. 61 (quoting Talking Rain,349 F.3d at 603). Apple’s manufacturing challenges,

however, resulted from the durability considerations forthe iPhone and not from the design of the unregisteredtrade dress. According to Apple’s witnesses, difficultiesresulted from its choices of materials in using “hardened

steel”; “very high, high grade of steel”; and, “glass that

was not breakable enough, scratch resistant enough.” Id.(quoting J.A. 40495-96, 41097). These materials were

chosen, for example, for the iPhone to survive a drop:



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If you drop this, you don't have to worry about theground hitting the glass. You have to worry about

the band of steel surrounding the glass hitting theglass. . . . In order to, to make it work, we had to

use very high, high grade of steel because wecouldn’t have it sort of deflecting into the glass.

J.A. 40495-96. The durability advantages that resultedfrom the manufacturing challenges, however, are outside

the scope of what Apple defines as its unregistered tradedress. For the design elements that comprise Apple’s

unregistered trade dress, Apple points to no evidence inthe record to show they were not relatively simple or

inexpensive to manufacture. See Disc Golf , 158 F.3d at1009 (“[Plaintiff], which has the burden of proof, offered

no evidence that the [asserted] design was not relativelysimple or inexpensive to manufacture.”).

In sum, Apple has failed to show that there was sub-

stantial evidence in the record to support a jury finding infavor of non-functionality for the unregistered trade dresson any of the Disc Golf factors. Apple fails to rebut theevidence that the elements in the unregistered trade

dress serve the functional purpose of improving usability.Rather, Apple focuses on the “beauty” of its design, even

though Apple pursued both “beauty” and functionality inthe design of the iPhone. We therefore reverse the dis-trict court’s denial of Samsung’s motion for judgment as amatter of law that the unregistered trade dress is func-

tional and therefore not protectable.

B. The Registered ’983 Trade Dress

In contrast to the unregistered trade dress, the ’983trade dress is a federally registered trademark. Thefederal trademark registration provides “prima facie

evidence” of non-functionality. Tie Tech, 296 F.3d at 782-

83. This presumption “shift[s] the burden of production tothe defendant . . . to provide evidence of functionality.”Id. at 783. Once this presumption is overcome, the regis-



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tration loses its legal significance on the issue of function-ality. Id. (“In the face of sufficient and undisputed facts

demonstrating functionality, . . . the registration loses itsevidentiary significance.”).

The ’983 trade dress claims the design details in eachof the sixteen icons on the iPhone’s home screen framedby the iPhone’s rounded-rectangular shape with silver

edges and a black background:

The first icon depicts the letters “SMS” in green

inside a white speech bubble on a green back-ground;

. . .the seventh icon depicts a map with yellow andorange roads, a pin with a red head, and a red-

and-blue road sign with the numeral “280” inwhite;

. . .

the sixteenth icon depicts the distinctive configu-ration of applicant’s media player device in white

over an orange background.

’983 trade dress (omitting thirteen other icon designdetails for brevity).

It is clear that individual elements claimed by the’983 trade dress are functional. For example, there is no

dispute that the claimed details such as “the seventh icondepicts a map with yellow and orange roads, a pin with a

red head, and a red-and-blue road sign with the numeral‘280’ in white” are functional. See id. Apple’s user inter-face expert testified on how icon designs promote usabil-ity. This expert agreed that “the whole point of an icon on

a smartphone is to communicate to the consumer using

that product, that if they hit that icon, certain functionali-ty will occur on the phone.” J.A. 41458-59. The expertfurther explained that icons are “[v]isual shorthand for



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something” and that “rectangular containers” for iconsprovide “more real estate” to accommodate the icon de-

sign. J.A. 41459, 41476. Apple rebuts none of this evi-dence.

Apple contends instead that Samsung improperly dis-aggregates the ’983 trade dress into individual elementsto argue functionality. But Apple fails to explain how thetotal combination of the sixteen icon designs in the con-

text of iPhone’s screen-dominated rounded-rectangularshape—all part of the iPhone’s “easy to use” design

theme—somehow negates the undisputed usability func-tion of the individual elements. See J.A. 40722-23. Ap-

ple’s own brief even relies on its expert’s testimony aboutthe “instant recognizability due to highly intuitive icon

usage” on “the home screen of the iPhone.” J.A. 41484; Appellee’s Br. 43, 70, 71 (quoting J.A. 41484). Apple’s

expert was discussing an analysis of the iPhone’s overallcombination of icon designs that allowed a user to recog-nize quickly particular applications to use. J.A. 41484,25487. The iPhone’s usability advantage from the com-

bination of its icon designs shows that the ’983 tradedress viewed as a whole “is nothing other than the assem-

blage of functional parts . . . .” See Tie Tech, 296 F.3d at

786 (quoting Leatherman, 199 F.3d at 1013). There is no“separate ‘overall appearance’ which is non-functional.”

Id. (quoting Leatherman, 199 F.3d at 1013). The undis-

puted facts thus demonstrate the functionality of the ’983trade dress. “In the face of sufficient and undisputed facts

demonstrating functionality, as in our case, the registra-

tion loses its evidentiary significance.” See id. at 783.

The burden thus shifts back to Apple. See id. But Apple offers no analysis of the icon designs claimed by the’983 trade dress. Rather, Apple argues generically for its

two trade dresses without distinction under the Disc Golf

factors. Among Apple’s lengthy citations to the record, wecan find only two pieces of information that involve icondesigns. One is Apple’s user interface expert discussing



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other possible icon designs. The other is a citation to aprint iPhone advertisement that included the icon designs

claimed in the ’983 trade dress. These two citations,viewed in the most favorable light to Apple, would be

relevant to only two of the Disc Golf factors: “alternativedesign” and “advertising.” But the cited evidence suffers

from the same defects as discussed in subsections I.A.2and I.A.3. Specifically, the expert’s discussion of othericon design possibilities does not show that the otherdesign possibilities “offer[ed] exactly the same features” as

the ’983 trade dress. See Tie Tech, 296 F.3d at 786 (quot-ing Leatherman, 199 F.3d at 1013-14). The print iPhone

advertisement also fails to establish that, on the sub-

stance, it was not touting the utilitarian advantage of the’983 trade dress. The evidence cited by Apple thereforedoes not show the non-functionality of the ’983 trade

dress.

In sum, the undisputed evidence shows the function-ality of the registered ’983 trade dress and shifts theburden of proving non-functionality back to Apple. Apple,

however, has failed to show that there was substantialevidence in the record to support a jury finding in favor of

non-functionality for the ’983 trade dress on any of the

Disc Golf factors. We therefore reverse the district court’sdenial of Samsung’s motion for judgment as a matter oflaw that the ’983 trade dress is functional and therefore

not protectable.

Because we conclude that the jury’s findings of non-functionality of the asserted trade dresses were not sup-

ported by substantial evidence, we do not reach Sam-sung’s arguments on the fame and likely dilution of theasserted trade dresses, the Patent Clause of the Constitu-

tion, or the dilution damages.



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II. Design Patents

The design patents on appeal claim certain design el-ements embodied in the iPhone. The D’677 patent focuseson design elements on the front face of the iPhone:

The D’087 patent claims another set of design features

that extend to the bezel of the iPhone:

The D’305 patent claims “the ornamental design for agraphical user interface for a display screen or portion

thereof” as shown in the following drawing:



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Samsung contends that it should not have been foundliable for infringement of the asserted design patentsbecause any similarity was limited to the basic or func-

tional elements in the design patents. Moreover, accord-ing to Samsung, there was no evidence of actual deception

of consumers and that the differences between the ac-cused smartphones and the asserted design patentsshould have been clear if prior art designs were properlyconsidered. Samsung raises these three issues—

functionality, actual deception, and comparison to prior

art—in the context of the jury instructions and the suffi-ciency of evidence to support the infringement verdict.Finally, Samsung argues that the district court legallyerred in allowing the jury to award as damages Sam-sung’s entire profits on its infringing smartphones. We do

not find any of these challenges persuasive as discussedbelow.

A. Infringement

1. Jury Instructions

a. Functional Aspects in the Asserted Design Patents

“Where a design contains both functional and non-

functional elements, the scope of the claim must be con-



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strued in order to identify the non-functional aspects ofthe design as shown in the patent.” OddzOn Prods., Inc.

v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997).Samsung contends that the district court erred in failing

to exclude the functional aspects of the design patentseither in the claim construction or elsewhere in the in-

fringement jury instructions. Specifically, Samsungcontends that the district court should have excludedelements that are “‘dictated by their functional purpose,’or cover the ‘structural . . . aspects of the article.’” Appel-

lants’ Br. 23 (quoting Richardson v. Stanley Works, Inc.,597 F.3d 1288, 1294 (Fed. Cir. 2010); Lee v. Dayton-

Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988))

(alteration in original) (citation omitted). Such elements,according to Samsung, should be “ignored” in their entire-ty from the design patent claim scope. Id. at 29. For

example, Samsung contends that rectangular form androunded corners are among such elements that should be

ignored in the infringement analysis. See, e.g., id.

Our case law does not support Samsung’s position. In

Richardson, the design patent at issue depicted a multi-function tool with numerous components that were “dic-

tated by their functional purpose.” 597 F.3d at 1294. But

the claim construction in Richardson did not excludethose components in their entirety. Rather, the claimconstruction included the ornamental aspects of those

components: “the standard shape of the hammer-head,the diamond-shaped flare of the crow-bar and the top of

the jaw, the rounded neck, the orientation of the crow-barrelative to the head of the tool, and the plain, undecoratedhandle.” Richardson v. Stanley Works, Inc., 610 F. Supp.2d 1046, 1050 (D. Ariz. 2009). That construction was

affirmed on appeal. Richardson, 597 F.3d at 1294. Assuch, the language “dictated by their functional purpose”

in Richardson was only a description of the facts there; itdid not establish a rule to eliminate entire elements from

the claim scope as Samsung argues.



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Our case law likewise does not support Samsung’sproposed rule of eliminating any “structural” aspect from

the claim scope. Samsung arrives at its proposed rule byselecting a few words from the following statement in Lee:

“[d]esign patents do not and cannot include claims to thestructural or functional aspects of the article . . . .” 838

F.2d at 1188. But that statement addressed designpatent validity. See id. (quoting 37 C.F.R. § 1.153(a) on adesign patent application requirement). It did not specifya rule, as Samsung represents, to eliminate elements

from the claim scope of a valid patent in analyzing in-fringement.

More directly applicable to the claim scope issue athand, Lee stated elsewhere that “it is the non-functional,

design aspects that are pertinent to determinations ofinfringement.” Id. (footnote omitted). That principle was

properly reflected in this case in the district court’s con-struction of the design patents as claiming only “theornamental design” as shown in the patent figures. J.A.01390-91. Samsung has not persuasively shown how the

district court’s claim constructions were legally erroneousunder Lee or Richardson. See Richardson, 597 F.3d at

1295 (noting that “discounting of functional elements

must not convert the overall infringement test to anelement-by-element comparison”).

Samsung asserted alternatively during oral argumentthat the jury should have been instructed to compare the

accused Samsung smartphones to the “overall ornamental appearance” of a patented design, instead of simply “the

overall appearance” as the district court provided. Oral Arg. 4:06–4:25, 5:54–6:10. According to Samsung, “cru-cially, what’s missing there is the word ‘ornamental.’” Id.at 4:25–4:28. But jury instructions are reviewed “as a

whole” to determine whether “the substance of the appli-

cable law was [not] fairly and correctly covered” such thatthe alleged error was prejudicial. See Gantt, 717 F.3d at706 (quoting Swinton, 270 F.3d at 802) (alteration in



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original). The jury instructions, as a whole, alreadylimited the scope of the asserted design patents to the

“ornamental” elements through the claim constructions asdiscussed earlier: the design patents were each construed

as claiming “the ornamental design” as shown in thepatent figures. J.A. 01390-91. As such, Samsung has

failed to show prejudicial error in the jury instructions as

a whole that would warrant a new trial.

b. Actual Deception and Role of Prior Art

Samsung further contends that the infringement in-struction was erroneous for

petition for en banc rehearing

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