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Case: 14-1335

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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.
Appeals from the United States District Court for the
Northern District of California in case no. 11-CV-1846, Judge Lucy H. Koh.
PLAINTIFF-APPELLEE APPLE INC.S RESPONSE TO DEFENDANTSAPPELLANTS PETITION FOR REHEARING EN BANC
RACHEL KREVANS
RUTH N. BORENSTEIN
NATHAN B. SABRI
CHRISTOPHER L. ROBINSON
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, CA 94105
(415) 268-7000

WILLIAM F. LEE
MARK C. FLEMING
LAUREN B. FLETCHER
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000

MARK D. SELWYN
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, CA 94304
(650) 858-6000

JAMES L. QUARLES III


WILMER CUTLER PICKERING
HALE AND DORR LLP
1875 Pennsylvania Avenue, N.W.
Washington, DC 20006
(202) 663-6000

July 20, 2015

Counsel for Plaintiff-Appellee Apple Inc.

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CERTIFICATE OF INTEREST
Counsel for Plaintiff-Cross Appellant Apple Inc. certifies the following:
1.

The full name of every party or amicus represented by us is:

Apple Inc.
2.

The name of the real party in interest represented by us is:

Not applicable.
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:
None.
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 agency
or are expected to appear in this court are:
MORRISON & FOERSTER LLP: Ruchika Agrawal (former), Deok Keun
Matthew Ahn (former), Charles S. Barquist, Jason R. Bartlett, Ruth N.
Borenstein, Brittany N. DePuy (former), Francis Chung-Hoi Ho (former),
Richard S.J. Hung, Michael A. Jacobs, Esther Kim, Grant L. Kim, Alexei
Klestoff (former), Rachel Krevans, Kenneth Alexander Kuwayti, Jack
Williford Londen, Harold J. McElhinny, Andrew Ellis Monach, Erik J.
Olson, Marc J. Pernick (former), Taryn Spelliscy Rawson, Christopher
Leonard Robinson, Nathaniel Bryan Sabri, Jennifer Lee Taylor, Alison
Margaret Tucher (former), Christopher James Wiener, Patrick J. Zhang
(former)
WILMER CUTLER PICKERING HALE AND DORR LLP: David B. Bassett, James
C. Burling, Robert Donald Cultice, Andrew J. Danford, Michael A. Diener,
Christine E. Duh, Mark D. Flanagan, Mark C. Fleming, Eric Fletcher,
Lauren B. Fletcher, Sarah R. Frazier, Richard Goldenberg, Robert J.
Gunther, Jr., Liv Leila Herriot, Michael R. Heyison, Peter James Kolovos,
Derek Lam, Gregory H. Lantier, Brian Larivee, William F. Lee, Andrew L.
Liao, Joseph J. Mueller, Kevin Scott Prussia, James L. Quarles, III, Michael
Saji (former), Brian Seeve, Mark Daniel Selwyn, Ali H. Shah (former),

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Victor F. Souto, Thomas G. Sprankling, Timothy Davis Syrett, Nina S.


Tallon, Samuel Calvin Walden, Emily R. Whelan, Jeremy S. Winer
COOLEY LLP: Benjamin George Damstedt, Jesse L. Dyer (former), Timothy
S. Teter
TAYLOR & COMPANY LAW OFFICES, LLP: Joshua Ryan Benson, Stephen
McGeorge Bundy, Stephen E. Taylor
MAVRAKAKIS LAW GROUP LLP: Kenneth H. Bridges (former), Michael T.
Pieja

Dated: July 20, 2015

/s/ William F. Lee


WILLIAM F. LEE
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000

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TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES ....................................................................................iv
INTRODUCTION .....................................................................................................1
ARGUMENT .............................................................................................................5
I.

II.

THE PANELS DECISION IS CONSISTENT WITH THE STATUTE AND


THIS COURTS PRECEDENT ............................................................................... 5
A.

The Panels Ruling On Design Patent Scope Is Correct ....................... 5

B.

The Panels Ruling On Design Patent Damages Is Fully


Consistent With 289s Text, Legislative History, And
Judicial Interpretation ............................................................................9

SAMSUNGS POLICY-BASED ARGUMENTS SHOULD BE REJECTED .................. 14

CONCLUSION ........................................................................................................15
CERTIFICATE OF SERVICE
CERTIFICATE OF COMPLIANCE

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TABLE OF AUTHORITIES
CASES
Page(s)
Advanced Magnetic Closures, Inc. v. Rome Fastener Corp.,
607 F.3d 817 (Fed. Cir. 2010) ..............................................................................5
Bilski v. Kappos,
561 U.S. 593 (2010) ............................................................................................12
Bush & Lane Piano Co. v. Becker Brothers,
234 F. 79 (2d Cir. 1916) ............................................................................... 12-13
Catalina Lighting, Inc. v. Lamps Plus, Inc.,
295 F.3d 1277 (Fed. Cir. 2002) ..........................................................................11
Dobson v. Bigelow Carpet Co.,
114 U.S. 439 (1885) ............................................................................................10
Dobson v. Dornan,
118 U.S. 10 (1886) ..........................................................................................6, 10
Dobson v. Hartford Carpet Co.,
114 U.S. 439 (1886) ............................................................................................10
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) (en banc) ..................................................5, 6, 7, 8
Inwood Laboratories, Inc. v. Ives Laboratories, Inc.,
456 U.S. 844 (1982) ..............................................................................................7
L.A. Gear, Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117 (Fed. Cir. 1993) ............................................................................7
Lee v. Dayton-Hudson Corp.,
838 F.2d 1186 (Fed. Cir. 1988) ............................................................................8
Markman v. Westview Instruments, Inc.,
517 U.S. 370 (1996) ..............................................................................................6
Microsoft Corp. v. AT&T Corp.,
550 U.S. 437 (2007) ............................................................................................15
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Nautilus, Inc. v. Biosig Instruments, Inc.,


134 S. Ct. 2120 (2014) ..........................................................................................6
Nike, Inc. v. Wal-Mart Stores, Inc.,
138 F.3d 1437 (Fed. Cir. 1998) ................................................................5, 10, 11
OddzOn Products, Inc. v. Just Toys, Inc.,
122 F.3d 1396 (Fed. Cir. 1997) ............................................................................ 7
Read Corp. v. Portec, Inc.,
970 F.2d 816 (Fed. Cir. 1992) .............................................................................. 8
Richardson v. Stanley Works, Inc.,
597 F.3d 1288 (Fed. Cir. 2010) ....................................................................4, 7, 8
Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831 (2015) ............................................................................................6
Untermeyer v. Freund,
58 F. 205 (2d Cir. 1893) .....................................................................................13
Young v. Grand Rapids Refrigerator Co.,
268 F. 966 (6th Cir. 1920) ..................................................................................13
STATUTES
35 U.S.C.
171....................................................................................................................13
289.............................................................................................................passim
Design Patent Act of 1887, Act of Feb. 4, 1887, 1, ch. 105,
24 Stat. 387 .........................................................................................................10
LEGISLATIVE HISTORY
18 Cong. Rec. 834-836 (Jan. 20, 1887) ...................................................................10
OTHER AUTHORITIES
Lemley, Mark A., A Rational System of Design Patent Remedies, 17
Stan. Tech. L. Rev. 219 (2013) ...........................................................................12

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INTRODUCTION
Samsungs petition for rehearing attempts to make a straightforward
decision by a unanimous panel seem unduly complex, and accuses the panel of
contradicting no fewer than three Supreme Court decisions and five decisions of
this Court. Pet. 1. Samsungs protest lacks merit. The panel correctly applied
well-established case law on two narrow questions related to design patent
infringement to the particular facts of this case. En banc review is unwarranted.
Samsungs petition deals with three design patents that, taken together,
protect the unique look and feel of Apples iconic iPhone. U.S. Design Patent No.
618,677 (D677 patent) protects the iPhones distinctive front face, U.S. Design
Patent No. 593,097 (D087 patent) protects the iPhones distinctive overall
appearance (such as its particular shape, the flat contour of the front face, and the
raised edge separating the glass display from the rest of the device), and U.S.
Design Patent No. 604,305 (D305 patent) protects the iPhones colorful
graphical user interface. See Apple Br. 7-9 (displaying protected designs).
The iPhones distinctive appearance is hardly an undisputed[ly] minor
component of the device. Cf. Pet. 2. To the contrary, it was the result of years of
research and development within Apple, and received immediate critical acclaim
upon release. Apple Br. 5; e.g., A27141-27144 (New York Times describing
iPhone as gorgeous with a shiny black [front face], rimmed by mirror-finish

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stainless steel and a spectacular user interface). The iPhones unique design
and user interface quickly brought Apple enormous success. Apple Br. 5.
Samsung coveted that success. As the head of Samsungs mobile division
told its highest executives, Samsung faced a crisis of designwhen our [user
interface] is compared to the unexpected competitor Apples iPhone, the difference
is truly that of Heaven and Earth. Apple Br. 12. Rather than create its own
innovative look, Samsung appropriated Apples. Almost overnight, Samsungs
smartphone products transformed from bulky, walkie-talkie-like boxes into sleek,
streamlined, narrow rectangles that mimicked the iPhones appearance, as shown
in the following trial demonstratives:

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Id. 12-15. Samsungs own internal documentation revealed specific directions for
improvement to make Samsungs graphical user interface and icons more like
Apples. Id. 14. See, for example, the following trial demonstrative:

A90143.
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Samsungs strategy worked. Its share of the smartphone market swung


abrupt[ly] upward following its copyingjumping from 5% to 20% in just two
yearswhile Apples market share fell. Apple Br. 17-19. Samsung reaped
billions of dollars in revenue and profits from its infringing products during those
years alone. Id. 18.
After a 13-day trial, the jury found, inter alia, that numerous Samsung
smartphones infringed Apples design patents and awarded damages. The district
court ultimately entered judgment in Apples favor. Samsung appealed numerous
design patent issues; the panel unanimously rejected every one. See Op. 18-28.
As relevant here, the panel correctly concluded that the design patent
infringement analysis requires the fact finder to review the overall ornamental
appearance of a design, even if some design features also serve some utilitarian
purpose. Op. 20-22. This holding is fully in line with this Courts precedent and
common sense. See, e.g., Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295
(Fed. Cir. 2010) (discounting of functional elements must not convert the overall
infringement test to an element-by-element comparison).
The panel also concluded that Samsungs quest to read an apportionment
requirement into 35 U.S.C. 289, a statute that explicitly authorizes the award of
total profit, was contrary to the provisions plain meaning, legislative history, and
purpose. Op. 26-28. As the panel explained, Samsungs contention that 289

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only permitted the jury to award the profit attributable to the infringement
advocate[s] for an approach that Congress rejected. Op. 25-26; accord Nike,
Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1441 (Fed. Cir. 1998).
Samsungs petition relies on rhetoric and arguments already rejected by this
Court. Its citation to supposedly conflicting cases is unavailing; Samsungs
cases are largely off-point, nonbinding, or both. Samsungs petition should be
denied.
ARGUMENT
I.

THE PANELS DECISION IS CONSISTENT WITH THE STATUTE AND THIS


COURTS PRECEDENT
A.

The Panels Ruling On Design Patent Scope Is Correct

1.

Samsungs assertion (at 7) that this Court has never before [up]held

design patent claim constructions like those at issue in this case is refuted by the
very case law on which Samsung relies.1 In fact, this Court has upheld a claim
construction as simple as a tray of a certain design as is shown in figures 1-3.
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679-680 (Fed. Cir. 2008) (en
banc) (internal quotation marks omitted). The claim constructions in this case
were actually more detailed: the district court instructed the jury to consider the
ornamental design of the patents at issue. A1390-1391 (emphasis added); Op. 21.
1

Additionally, Samsung waived this issue by raising it for the first time in a
short paragraph in its reply brief. See Advanced Magnetic Closures, Inc. v. Rome
Fastener Corp., 607 F.3d 817, 833 (Fed. Cir. 2010); see also Samsung Reply 3-4.
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Indeed, this Court has explained that [a]s a general matter, the [district]
courts should not treat the process of [design patent] claim construction as
requiring a detailed verbal description of the claimed design, as would typically be
true in the case of utility patents. Egyptian Goddess, 543 F.3d at 680 (emphasis
added). Design patents are different because they typically are claimed as shown
in drawings and a design is better represented by an illustration than it could be
by any description. Id. at 679 (quoting Dobson v. Dornan, 118 U.S. 10, 14
(1886)). While there is no per se rule prohibiting a detailed verbal description of
the claimed design, the preferable course ordinarily will be for a district court
not to attempt to do so. Id.
Many of the cases that Samsung relies upon (at 7) are accordingly easily
distinguishable, because they involved utility patents. See Markman v. Westview
Instruments, Inc., 517 U.S. 370 (1996); Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120 (2014); Teva Pharms. USA, Inc. v. Sandoz Inc., 135 S. Ct. 831
(2015). And while Samsung is right that there is a duty to conduct claim
construction (Egyptian Goddess, 543 F.3d at 679 (quoted at Pet. 6)), it does not
confront the fact that this Court has not prescribed any particular form that the
claim construction must take, and, as discussed above, discourages using detailed
verbal descriptions (id. (emphasis added)). Relatedly, Egyptian Goddess makes
clear that the district court has discretion to decide whether to deliver a jury

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instruction of the kind described in OddzOn Products, Inc. v. Just Toys, Inc., 122
F.3d 1396 (Fed. Cir. 1997). See Egyptian Goddess, 543 F.3d at 680. Richardson
did not purport to overrule Egyptian Goddess (nor could it have); indeed,
Richardson emphasized that the infringement analysis does not require or permit
an element-by-element comparison of the ornamental features of the patented
design and the infringing design. See 597 F.3d at 1295.2
2.

Samsung also mischaracterizes the panels opinion by arguing (at 7-9)

that the Court endorsed an instruction ordering the jury to consider any perceived
similarities between Apples patented designs and Samsungs products rather than
simply the ornamental similarities. In fact, the panel held that Samsung failed to
show that there was prejudicial error. Op. 21-22. This is because the instructions
as a whole made clear that the jury was only to consider whether the ornamental
features of Apples patented designs and Samsungs products were substantially
the same. Id. (the design patents were each construed as claiming the ornamental
design as shown in the patent figures); see also, e.g., A1403 (design patent
2

While the panel vacated the award on Apples trade dress claim, that in no
way undermines its design patent ruling. The bar for trade dress functionality is
different from the bar for design patent functionality. Compare Inwood Labs., Inc.
v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982) (trade dress is functional if it is
essential to the use or purpose of the article or it affects the cost or quality of the
article), with L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed.
Cir. 1993) (patented design can have some utilitarian purpose; it is only deemed
functional when the appearance of the claimed design is dictated by the use or
purpose of the article).
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cover[s] ornamental aspects); A1401 (a design is not ornamental if the


overall appearance of [the] design is dictated by how the article claimed in the
patent works). Accordingly, there is no conflict between this case and OddzOn,
Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992), or Lee v. DaytonHudson Corp., 838 F.2d 1186 (Fed. Cir. 1988).
Relatedly, Samsungs attempt (at 8 n.4) to nit-pick the panels reading of
Richardson fails. Richardson rejected the kind of element-by-element
comparison, 597 F.3d at 1295, that Samsung asks the en banc Court to adopt.
The case certainly does not require the district court to provide a detailed verbal
description of a design patent claim or (as Samsung would have it) specify the
ornamental aspects of particular components. Pet. 8 n.4. Such a rule would have
conflicted with this Courts en banc holding in Egyptian Goddess, which predated
Richardson by two years. See 543 F.3d at 679; supra pp. 5-6. Ultimately,
Samsung misses the panels point, which is that Richardson requires the fact finder
to review the overall ornamental appearance of a design, even if some design
features also serve some utilitarian purpose. See Op. 20-22.3

Samsungs assertion that it has never argued that entire components must
be eliminated from the claim scope (Pet. 9 n.4) is revisionist history. See
Samsung Opening Br. 29 (arguing that the rectangular form, rounded corners, and
large rectangular display of Apples designs should be ignored). Samsung
makes precisely this argument just one page later in its petition. Pet. 10 n.5
(criticizing Apples experts [for] not filter[ing] out any functional elements in
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Finally, Samsung asserts (at 9-10) that the en banc Court should

rehear the panels determination that there was sufficient evidence to support the
jurys verdict. The fact-heavy and highly deferential analysis involved in
reviewing a denial of JMOL does not resolve any broad-based legal question and
thus does not warrant en banc consideration. 4
B.

The Panels Ruling On Design Patent Damages Is Fully


Consistent With 289s Text, Legislative History, And Judicial
Interpretation

1.

The panel correctly recognized that 35 U.S.C. 289s plain text

explicitly authorizes the award of total profit from the [infringing] article of
manufacture bearing the patented design. Op. 26-28. The statute, after all,
expressly states that the infringer shall be liable to the extent of his total
profit. 35 U.S.C. 289. This straightforward reading of 289that total profit
means all profits and not some profitsis well supported by the statutes
history and purpose. Before 1887, design-patent holders could recover only the
forming their opinions, such as a rectangular display area under a transparent
surface (emphasis added)).
4

Samsungs summary description of the evidence presented at trial (Pet. 10


n.5) and its suggestion that its account of the facts is undisputed (Pet. 2) are
highly misleading. Apples witnesses merely recognized that some components of
the patented designs have some utilitarian value, not that they were functional in
the design patent context. See generally Apple Br. 29-30 (explaining design patent
test for functionality). For example, Apples D677 expert testified that the
patented display screen design is not functional under the design patent definition
of functionality because the shape, location [and] size of the display are not
required by [its] functions. A41201-41203.
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proportionate amounts [of profits] that were proven to be attributable to the


patented feature. Nike, 138 F.3d at 1441. As Samsung concedes (at 11), this
remedys inadequacy became apparent in the Dobson cases, where the Supreme
Court held several carpet design patents infringed, but awarded only six cents in
damages because the patentees could not show what portion of their losses or the
infringers profits was due to the patented design and what portion was due to the
unpatented carpet. Nike, 138 F.3d at 1441 (discussing Dobson v. Dornan, 118
U.S. 10 (1866); Dobson v. Hartford Carpet Co., 114 U.S. 439 (1886); Dobson v.
Bigelow Carpet Co., 114 U.S. 439 (1885)).
Congress responded with the Design Patent Act of 1887, which the House
Committee on Patents explained created a special rule of recovery for design
patents. 18 Cong. Rec. 834 (Jan. 20, 1887). The new law entitled the designpatent holder to an infringers total profit. Act of Feb. 4, 1887, ch. 105, 1, 24
Stat. 387, 387; see also 18 Cong. Rec. 834 (It is expedient that the infringers
entire profit should be recoverable, as otherwise none of his profit can be
recovered, for it is not apportionable. (emphases added)). 5
5

Against the report of the House Committee on Patents, Samsung invokes a


single floor statement from one congressman. Pet. 12. But Representative Martin
corrected his statement after questioning, acknowledging that 289s predecessor
gave the patentee the ability to recover the total earnings of the business from
th[e] source of the infringement. 18 Cong. Rec. 836. He also conceded that he
did not pretend to be as familiar with the language employed about patents, as
perhaps, I ought to be. Id. at 835.
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This Court has interpreted 289 accordingly. Op. 26; Nike, 138 F.3d at
1441 (observing that [ 289s predecessor], specific to design patents, removed
the apportionment requirement). While Samsung (at 14) tries to distinguish the
statements in Nike as dicta, the Nike Courts interpretation was crucial to its
determination that Wal-Mart was required to pay Nike its pre-tax (rather than posttax) profits from infringement. See Nike, 138 F.3d at 1448 (The statute requires
the disgorgement of the infringers profits to the patent holder, such that the
infringers retain no profit from their wrong. (emphasis added)); see also Op. 27
(collecting other cases that have adopted this interpretation).
2.

Samsung identifies no case law from this Court or the Supreme Court

that conflicts with the panels interpretation. Indeed, Samsung identifies no court
that has approved inserting Samsungs desired amendment into 289s clear
statutory language. Op. 27. Samsungs chief support for its rewriting of the
statutewhich would counterintuitively impose the same apportionment
requirement that Congress rejected, Op. 26is the fact that the patent holder
shall not twice recover the profit made from the infringement, see Pet. 10-12.
But this Court has already interpreted that language as merely insuring that a
patentee [cannot] recover both the profit of an infringer and some additional
damage remedy from the same infringer, such as a reasonable royalty. Catalina
Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1291 (Fed. Cir. 2002) (internal

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quotation marks omitted). That phrase does not negate 289s express grant of an
infringers total profit as an available remedy. Congress would not have
contradicted its own clear language in such a backhanded manner; it does not, one
might say, hide elephants in mouseholes. Bilski v. Kappos, 561 U.S. 593, 645
(2010) (Stevens, J., concurring) (internal quotation marks omitted). In fact, several
of Samsungs own amici have acknowledged that failing to award Apple
Samsungs entire profits would have been wrong as a matter of law. E.g.,
Lemley, A Rational System of Design Patent Remedies, 17 Stan. Tech. L. Rev.
219, 220-221 & n.3 (2013); see also Apple Br. 46 n.11 (similar statements from
Professors Cotter and Risch).
Samsung also asserts that 289s phrase article of manufacture means the
specific portion of the product as sold to which the patented design is applied.
Pet. 10, 12-14. But it relies only on century-old cases that are neither binding nor
apposite. As the panel explained, the Second Circuits Piano Cases involved a
factual situation very different from that present here. Op. 27. There, a purchaser
desiring a piano of a particular manufacturer [could] have the piano placed in any
one of several cases dealt in by the maker; here, Apples design patents cover a
smartphones external appearance (its look and feel), which is not severable from
its inner workings. Op. 27-28. Moreover, the Second Circuit openly
acknowledged that it was engaging in apportion[ment], Bush & Lane Piano Co.

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v. Becker Bros., 234 F. 79, 83 (2d Cir. 1916), which is contrary to the statutes text
and purpose.
Samsungs remaining authorities are similarly inapposite. Young v. Grand
Rapids Refrigerator Co., 268 F. 966 (6th Cir. 1920), involved the design of a de
minimis portion of a refrigerator, where the patentee did not seriously contend[]
that all the profits from the refrigerator belonged to him. Id. at 974. Untermeyer
v. Freund, 58 F. 205 (2d Cir. 1893), actually supports the panels ruling: it held
that 289s predecessor required an award of the total profit from the
manufacture or sale of the article to which the [patented] design was applied. Id.
at 212 (emphasis added). And Samsungs argument (at 13 n.6) that 35 U.S.C.
171 somehow sub silentio adopted an apportionment requirement is both
unsupported (no court has ever adopted it) and waived (because it was raised only
in a footnote on reply, see Samsung Reply 17 n.9).
Finally, Samsung sets up a strawman by contending that the panel held that
289 compels an award of all profits. Pet. 3-4, 10-11 (emphasis added). In fact,
the statute gives the option to award total profit; the district court instructed the
jury accordingly. See A1403 (If you find infringement by any Samsung

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defendant and do not find Apples design patents are invalid, you may award
Apple that Samsung defendants total profit. (emphasis added)).6
II.

SAMSUNGS POLICY-BASED ARGUMENTS SHOULD BE REJECTED


Samsung spends only a page (Pet. 14-15) asserting why it believes this case

qualifies as exceptional and thus worthy of en banc review, but the panels wellreasoned ruling demonstrates otherwise.
As shown above, the panel applied established precedent and a
straightforward reading of a clearly written statute. Congress and this Court have
both recognized that design patents are subject to different rules from utility
patents. Accordingly, Samsung is reduced to relying on speculative policy
arguments, such as its warning that the panels ruling would permit an award of
total profits for a car based on an infringing cupholder. Pet. 15. But Apples
design patents do not cover a small or minor component of the smartphone
(Pet. 2, 11); they cover the overall appearance of the devices distinctive front face,
bezel, and graphical user interfacein other words, the iconic look and feel of
Apples iPhone. Apple Br. 6-9. As the panel correctly recognized, this distinctive
design was not severable from the inner workings of Samsungs smartphones, see
6

Samsungs selective quotation of the relevant jury instruction (Pet. 3) is


highly misleading. See A1403. The instruction has four paragraphs. The first,
quoted in text above, makes clear that the jury may, but need not, award total
profits. The third paragraph, quoted by Samsung for the proposition that Apple is
entitled to all profit, merely lays out how to calculate a partys total profit and
explains that the term does not include certain expenses incurred by Samsung. Id.
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Page: 21

Filed: 07/20/2015

Op. 27-28, in the way that a cupholder is analytically distinct from the overall
look-and-feel of a car. Samsungs wide-ranging copying of Apples innovatively
designed devices accordingly provides no basis for rewriting the patent law.
Finally, as the panel explained, such policy arguments should be
directed to Congress. We are bound by what [ 289] says, irrespective of policy
arguments that may be made against it. Op. 27 n.1. The Supreme Court has
expressly endorsed this reasoning, recognizing that [i]f the patent law is to be
adjusted , the alteration should be made after focused legislative consideration,
and not by the Judiciary forecasting Congress likely disposition. Microsoft Corp.
v. AT&T Corp., 550 U.S. 437, 458-459 (2007).
CONCLUSION
The petition should be denied.

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Respectfully submitted,

RACHEL KREVANS
RUTH N. BORENSTEIN
NATHAN B. SABRI
CHRISTOPHER L. ROBINSON
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, CA 94105
(415) 268-7000

/s/ William F. Lee


WILLIAM F. LEE
MARK C. FLEMING
LAUREN B. FLETCHER
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000

MARK D. SELWYN
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, CA 94304

JAMES L. QUARLES III


WILMER CUTLER PICKERING
HALE AND DORR LLP
1875 Pennsylvania Avenue, NW
Washington, DC 20006

July 20, 2015

Counsel for Plaintiff-Appellee Apple Inc.

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Document: 205

Page: 23

Filed: 07/20/2015

CERTIFICATE OF SERVICE
I hereby certify that, on this 20th day of July, 2015 I filed the foregoing
Plaintiff-Appellee Apple Inc.s Response to Defendants-Appellants Petition for
Rehearing En Banc with the Clerk of the United States Court of Appeals for the
Federal Circuit via the CM/ECF system, which will send notice of such filing to all
registered CM/ECF users.

/s/ William F. Lee


WILLIAM F. LEE
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000

Case: 14-1335

Document: 205

Page: 24

Filed: 07/20/2015

CERTIFICATE OF COMPLIANCE
Counsel for Plaintiffs-Appellee Apple, Inc. certifies that:
1.

The brief complies with the type-volume limitations of Federal Rule

of Appellate Procedure 40(b) because exclusive of the exempted portions it does


not exceed 15 double-spaced pages.
2.

The brief complies with the typeface requirements of Federal Rule of

Appellate Procedure 32(a)(5) and the type-style requirements of Federal Rule of


Appellate Procedure 32(a)(6) because it has been prepared using Microsoft Word
2010 in a proportionally spaced typeface: Times New Roman, font size 14 point.

/s/ William F. Lee


WILLIAM F. LEE
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000

July 20, 2015