15-07-20 apple response to motion for rehearing

8/20/2019 15-07-20 Apple Response to Motion for Rehearing

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Nos. 2014-1335, 2015-1029

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

APPLE I NC., a California corporation,

Plaintiff-Appellee,

v.

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

SAMSUNG ELECTRONICS AMERICA, I NC., 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 DEFENDANTS-

APPELLANTS’ PETITION FOR REHEARING EN BANC

R ACHEL K REVANS

R UTH N. BORENSTEIN NATHAN B. SABRI

CHRISTOPHER L. R OBINSON MORRISON & FOERSTER LLP

425 Market Street

San Francisco, CA 94105

(415) 268-7000

MARK D. SELWYN WILMER CUTLER PICKERING

HALE AND DORR LLP

950 Page Mill RoadPalo Alto, CA 94304

(650) 858-6000

July 20, 2015

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

JAMES L. QUARLES IIIWILMER CUTLER PICKERING

HALE AND DORR LLP

1875 Pennsylvania Avenue, N.W.Washington, DC 20006

(202) 663-6000

Counsel for Plaintiff-Appellee Apple Inc.

Case: 14-1335 Document: 205 Page: 1 Filed: 07/20/2015


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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 agencyor 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, AlexeiKlestoff (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, AlisonMargaret Tucher (former), Christopher James Wiener, Patrick J. Zhang(former)

WILMER CUTLER PICKERING HALE AND DORR LLP: David B. Bassett, JamesC. 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, StephenMcGeorge Bundy, Stephen E. Taylor

MAVRAKAKIS LAW GROUP LLP: Kenneth H. Bridges (former), Michael T.

Pieja

Dated: July 20, 2015 /s/ William F. LeeWILLIAM 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. THE PANEL’S DECISION IS CONSISTENT WITH THE STATUTE A NDTHIS COURT’S PRECEDENT ............................................................................... 5

A. The Panel’s Ruling On Design Patent Scope Is Correct ....................... 5

B. The Panel’s Ruling On Design Patent Damages Is FullyConsistent With § 289’s Text, Legislative History, AndJudicial Interpretation ............................................................................ 9

II. SAMSUNG’S POLICY-BASED ARGUMENTS SHOULD BE R EJECTED .................. 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, 17Stan. Tech. L. Rev. 219 (2013) ........................................................................... 12



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INTRODUCTION

Samsung’s 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. Samsung’s 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.

Samsung’s petition deals with three design patents that, taken together,

protect the unique look and feel of Apple’s iconic iPhone. U.S. Design Patent No.

618,677 (“D’677 patent”) protects the iPhone’s distinctive front face, U.S. Design

Patent No. 593,097 (“D’087 patent”) protects the iPhone’s 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 (“D’305 patent”) protects the iPhone’s colorful

graphical user interface. See Apple Br. 7-9 (displaying protected designs).

The iPhone’s 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 iPhone’s unique design

and user interface quickly brought Apple enormous success. Apple Br. 5.

Samsung coveted that success. As the head of Samsung’s mobile division

told its highest executives, Samsung faced a “crisis of design”—“when our [user

interface] is compared to the unexpected competitor Apple’s iPhone, the difference

is truly that of Heaven and Earth.” Apple Br. 12. Rather than create its own

innovative look, Samsung appropriated Apple’s. Almost overnight, Samsung’s

smartphone products transformed from bulky, walkie-talkie-like boxes into sleek,

streamlined, narrow rectangles that mimicked the iPhone’s appearance, as shown

in the following trial demonstratives:



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Id. 12-15. Samsung’s own internal documentation revealed specific “directions for

improvement” to make Samsung’s graphical user interface and icons more like

Apple’s. Id. 14. See, for example, the following trial demonstrative:

A90143.



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Samsung’s strategy worked. Its share of the smartphone market swung

“abrupt[ly] upward” following its copying—jumping from 5% to 20% in just two

years—while Apple’s 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 Apple’s design patents and awarded damages. The district

court ultimately entered judgment in Apple’s 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 Court’s 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 Samsung’s “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 provision’s plain meaning, legislative history, and

purpose. Op. 26-28. As the panel explained, Samsung’s 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).

Samsung’s petition relies on rhetoric and arguments already rejected by this

Court. Its citation to supposedly “conflicting” cases is unavailing; Samsung’s

cases are largely off-point, nonbinding, or both. Samsung’s petition should be

denied.

ARGUMENT

I. THE PANEL’S DECISION IS CONSISTENT WITH THE STATUTE AND THISCOURT’S PRECEDENT

A. The Panel’s Ruling On Design Patent Scope Is Correct

1. Samsung’s 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 panel’s opinion by arguing (at 7-9)

that the Court endorsed an instruction ordering the jury to consider “any perceived

similarities” between Apple’s patented designs and Samsung’s 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 Apple’s patented designs and Samsung’s 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 Apple’s 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 thearticle”), 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. Dayton-

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

Relatedly, Samsung’s attempt (at 8 n.4) to nit-pick the panel’s 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 Court’s 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 panel’s 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

3 Samsung’s assertion that it has “never argued that entire components must

be eliminated from the claim scope” (Pet. 9 n.4) is revisionist history. SeeSamsung Opening Br. 29 (arguing that the “rectangular form, rounded corners, and

… large rectangular display” of Apple’s designs should be “ignored”). Samsungmakes precisely this argument just one page later in its petition. Pet. 10 n.5

(criticizing “Apple’s experts [for] not filter[ing] out any functional elements in



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3. Finally, Samsung asserts (at 9-10) that the en banc Court should

rehear the panel’s determination that there was sufficient evidence to support the

jury’s 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 Panel’s Ruling On Design Patent Damages Is Fully

Consistent With § 289’s Text, Legislative History, And Judicial

Interpretation

1. The panel correctly recognized that 35 U.S.C. § 289’s 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 § 289—that “total profit”

means “all profits” and not “some profits”—is well supported by the statute’s

history and purpose. Before 1887, design-patent holders “could recover only the

forming their opinions,” such as a “rectangular display area under a transparentsurface” (emphasis added)).4 Samsung’s 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. Apple’s witnesses merely recognized that some components ofthe patented designs have some utilitarian value, not that they were “functional” in

the design patent context. See generally Apple Br. 29-30 (explaining design patenttest for functionality). For example, Apple’s D’677 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 notrequired 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

remedy’s 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 design-

patent holder to an infringer’s “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 infringer’s

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 asingle floor statement from one congressman. Pet. 12. But Representative Martin

corrected his statement after questioning, acknowledging that § 289’s 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 hedid “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 “[§ 289’s predecessor], specific to design patents, removed

the apportionment requirement”). While Samsung (at 14) tries to distinguish the

statements in Nike as dicta, the Nike Court’s interpretation was crucial to its

determination that Wal-Mart was required to pay Nike its pre-tax (rather than post -

tax) 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 panel’s interpretation. Indeed, Samsung identifies no court

that has approved inserting Samsung’s desired amendment into § 289’s “clear

statutory language.” Op. 27. Samsung’s chief support for its rewriting of the

statute—which would counterintuitively impose “the same ‘apportionment’

requirement that Congress rejected,” Op. 26—is 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 § 289’s express grant of an

infringer’s 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 Samsung’s own amici have acknowledged that failing to award Apple

“Samsung’s 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 § 289’s 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 Circuit’s 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, Apple’s design patents cover a

smartphone’s 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 statute’s text

and purpose.

Samsung’s 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 panel’s ruling: it held

that § 289’s 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 Samsung’s 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 Apple’s design patents are invalid, you may award

Apple that Samsung defendant’s total profit….” (emphasis added)).6

II. SAMSUNG’S 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 panel’s well-

reasoned 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 panel’s ruling would permit “an award of

total profits for a car based on an infringing cupholder.” Pet. 15. But Apple’s

design patents do not cover a “small” or “minor” component of the smartphone

(Pet. 2, 11); they cover the overall appearance of the device’s distinctive front face,

bezel, and graphical user interface—in other words, the iconic look and feel of

Apple’s iPhone. Apple Br. 6-9. As the panel correctly recognized, this distinctive

design was not severable from the inner workings of Samsung’s smartphones, see

6 Samsung’s 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 isentitled to all profit,” merely lays out how to calculate a party’s total profit andexplains that the term does not include certain expenses incurred by Samsung. Id.



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Op. 27-28, in the way that a cupholder is analytically distinct from the overall

look-and-feel of a car. Samsung’s wide-ranging copying of Apple’s 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,

/s/ William F. Lee

R ACHEL K REVANS

R UTH N. BORENSTEIN NATHAN B. SABRICHRISTOPHER L. R OBINSON

MORRISON & FOERSTER LLP425 Market Street

San Francisco, CA 94105(415) 268-7000

MARK D. SELWYN

WILMER CUTLER PICKERING HALE A ND DORR LLP

950 Page Mill RoadPalo Alto, CA 94304

July 20, 2015

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

JAMES L. QUARLES III

WILMER CUTLER PICKERINGHALE A ND DORR LLP

1875 Pennsylvania Avenue, NWWashington, DC 20006

Counsel for Plaintiff-Appellee Apple Inc.



23/24

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. LeeWILLIAM F. LEE WILMER CUTLER PICKERING

HALE AND DORR LLP 60 State StreetBoston, MA 02109

(617) 526-6000



24/24

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 StreetBoston, MA 02109

(617) 526-6000

July 20, 2015


15-07-20 apple response to motion for rehearing

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