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Judge Koh Rules in Apple v. Samsung - No Willfulness, No Enhanced Damages for Apple but No New Trial Either ~pj
Wednesday, January 30 2013 @ 12:20 AM EST

The presiding judge in the Apple v. Samsung litigation in San Jose, CA, the Hon. Lucy Koh, has issued four rulings on the parties' post-trial briefs. No to a new trial for Samsung, as she views the trial as fair. No to more money for Apple. They failed to prove they were undercompensated by the jury, she writes without conscious irony. And she has ruled that Samsung did not willfully infringe.

Next stop, appeals court, where we will find out if they agree with Judge Koh that the trial was fair. Meanwhile, poor Apple will have to make do with a mere $1 billion as its jury award. We'll see if that stands on appeal too. A billion dollars for infringement that was officially not willful. Your US patent law at work. How do you like it?

Jump To Comments

Here are some links to take you to the various orders:

#2218, Order Re Indefiniteness
#2219, Order Granting in Part and Denying in
Part Apple's Motion for Judgment
as a Matter of Law
#2220, Order Granting in Part and Denying in
Part Samsung's Motion for Judgment
as a Matter of Law
(the one about it not being willful)
#2221, Order Denying Damages Enhancements

Here are the filings:

2218 - Filed & Entered: 01/29/2013
ORDER by Judge Lucy H. Koh denying [1988] Motion re: Indefiniteness (lhklc2, COURT STAFF) (Filed on 1/29/2013)

2219 - Filed & Entered: 01/29/2013
ORDER by Judge Lucy H. Koh granting in part and denying in part [1820] Motion for Judgment as a Matter of Law (lhklc2, COURT STAFF) (Filed on 1/29/2013)

2220 - Filed & Entered: 01/29/2013
ORDER by Judge Lucy H. Koh granting in part and denying in part [2013] Motion for Judgment as a Matter of Law (lhklc2, COURT STAFF) (Filed on 1/29/2013)

2221 - Filed & Entered: 01/29/2013
ORDER re [1982] Motion for Damages Enhancements filed by Apple Inc.. Signed by Judge Lucy H. Koh on 1/29/2013. (lhklc2, COURT STAFF) (Filed on 1/29/2013)

The reason she found Samsung was not willful is because of all the prior art that their experts testified showed that the Apple patents were invalid. She defends the jury's decision not to accept the prior art, but she accepts that it does prevent a finding of willfulness. That's in 2220, her Order Granting in Part and Denying in Part Samsung's Motion for Judgment as a Matter of Law.

She defends the jury by saying, in effect, that they could reasonably accept Apple testimony about the prior art. For one example:

The Court also finds that claim 19 is not obvious in light of Tablecloth and LaunchTile. In finding validity, the jury implicitly found that the gaps identified by Dr. Balakrishnan were significant.
No. They didn't, not according to what the jury foreman said were their reasons for not crediting the prior art, like Tablecloth:
The software on the Apple side could not be placed into the processor on the prior art and vice versa. That means they are not interchangeable. That changed everything right there.
That is not a valid reason in patent law not to accept prior art.

She doesn't mention that, which I think is an appealable issue. I hope it is pursued, because it's totally unfair to allow a jury to reach a verdict based on wrong law. That's what courts are supposed to be for, justice. She's the judge, and she can do whatever she wishes, even pretend that the jury was thinking what they say they were not. But that is why we have appeals courts. By glossing over their mistaken reasoning and attributing to them plausible reasons to do what they did while at the same time using the prior art to reach the decision that Samsung had a prior art defense does make the result less unfair. But to me, it's not justice.

And by the way, one reason patent infringement litigation is so wildly expensive with respect to legal expenses is because lower courts like this one get overturned with such frequency, district court decisions are usually worth appealing.

Still, she has made it better. I mean, Apple called Samsung names from one end of the earth to the other. Copycat, for example. But the judge has found that because of prior art that Samsung believed was valid, it was not deliberately infringing.

So that, at least, helps to clear Samsung's name.

And if you recall, the jury didn't accept Apple's weird theory about Samsung's FRAND patents, and neither does the judge. In #2219, she writes, in part:

1. Breach of Contract

The jury found that Samsung was not liable to Apple for breach of the ETSI IPR policy. Apple now moves for judgment as a matter of law that Samsung is liable for breach of contract for two reasons: (1) Samsung’s violations of the ETSI IPR Policy’s disclosure requirement; and (2) Samsung’s violations of the ETSI FRAND licensing requirement. Apple also moves in the alternative for a new trial on these bases....

In sum, Apple’s evidence in support of its argument that ETSI would likely have adopted an alternative standard had ETSI known of Samsung’s IPR is sufficiently equivocal that the jury could reasonably have found that the causation element was not satisfied. This conclusion was not against the clear weight of the evidence. Accordingly, the record is consistent with the jury’s finding that there was no breach of contract due to the ETSI disclosure provisions.

Apple has also failed to establish that the jury was wrong as a matter of law to find that Samsung did not breach the ETSI policy by its conduct relating to FRAND obligations. Whether Samsung violated its FRAND licensing obligations is a question of fact. The jury heard conflicting expert testimony as to whether Samsung’s offer to license Apple Samsung’s entire declared-essential patent portfolio at a 2.4% royalty rate met Samsung’s FRAND licensing obligations. Compare testimony of Samsung’s expert David Teece, Tr. 3145:1-3146:23 (FRAND) with testimony of Apple’s expert Richard Donaldson, Tr. 3537:12-3538:6; 3539:6-20 (not FRAND). Dr. Teece’s testimony represents substantial evidence in the record in support of the jury’s finding that Samsung did not violate its FRAND licensing obligation under the ETSI IPR Policy. Further, given the conflicting nature of the testimony, the jury’s finding was not against the clear weight of the evidence. Thus, the Court DENIES Apple’s motion for judgment as a matter law that Samsung is liable to Apple for breach of contract, and DENIES Apple’s motion for a new trial on this basis.

2. Antitrust

The jury found that Samsung did not violate section 2 of the Sherman Act....

Regarding FRAND obligations, Samsung’s licensing behavior could only give rise to Sherman Act liability if it constituted anticompetitive behavior. However, the jury, as discussed above, implicitly found that the conflicting testimony had not established that Samsung had failed to meet its FRAND obligations. In so finding, the jury could also reasonably have found that Samsung’s licensing behavior was not anticompetitive, and thus did not meet the third requirement for Sherman Act liability. Accordingly, the Court DENIES Apple’s motion for judgment as a matter of law that Samsung violated section 2 of the Sherman Act, and DENIES Apple’s motion in the alternative for a new trial.

Apple's theory that asking for a certain amount, 2.4%, in opening negotiations is a violation of the FRAND agreement is identical to Microsoft's against Motorola's FRAND patents, except that Motorola asked for 2.25%. Here, in California, Judge Koh wasn't buying it. And the judge in the Microsoft v. Motorola case didn't accept that just listing an opening price was a violation of FRAND obligations. Let's hope this ridiculous theory, which was in my view a mere pretext anyhow to avoid negotiating so as to be able to litigate instead, has now bitten the dust forevermore.

Here are all four orders, as text:

Here's 2218, as text:

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

APPLE, INC., a California corporation,

Plaintiff,

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.

_________________

Case No.: 11-CV-01846-LHK
ORDER RE: INDEFINITENESS

_______________

In this patent case, a jury found that Samsung had infringed several of Apple’s patents, including Claim 50 of U.S. Patent No. 7,864,163 (“the ’163 Patent”) and four design patents: No. D618,677 (“the D’677 Patent”); No. D593,087 (“the D’087 Patent”); No. D604,305 (“the D’305 Patent”); and No. D504,889 (“the D’889 Patent”). Samsung now argues that Claim 50 of the ’163 Patent and all four design patents are invalid for failure to meet the definiteness requirement of 35 U.S.C. § 112. See Motion on Samsung’s Non-Jury Claims, ECF No. 1988 (“Mot.”).1 Apple

1

opposed this motion, ECF No. 2027 (“Opp’n”), and Samsung filed a reply. ECF No. 2042 (“Reply”). This Court will first address the ’163 Patent, and will then address the design patents.

I. ’163 INDEFINITENESS

As an initial matter, this claim is not waived. Apple asserts that this argument is waived because Samsung did not seek claim construction of the term “substantially centered” or include the indefiniteness issue in its pretrial statement. However, failure to seek construction of a term during claim construction does not constitute waiver of an indefiniteness argument. For one thing, under this District’s Patent Local Rules, the parties were limited in the number of terms for which they could seek construction.2 See Pat. Loc. R. 4-1 (limiting parties to a total of 10 terms). Thus, failure to include a term at that stage cannot reasonably constitute a waiver. Further, Samsung has continued to raise the issue, first in invalidity contentions and in later in arguing for a jury instruction. See Pierce Reply Decl. Exh. 2 at 53 (invalidity contentions); ECF No. 1809 (proposed jury instruction). During trial, Apple agreed that Samsung could “make a JMOL on that” and “let the Court determine it.” See Tr. at 3336:18-25. Finally, this Court specifically included indefiniteness of the ’163 Patent as a topic Samsung could address in a non-jury brief. ECF No. 1965. There is no question that Apple has been on notice of Samsung’s assertion of this claim. Accordingly, the Court finds that it is appropriate for Samsung to raise the issue now.

In order to be valid, a patent claim must “particularly point [] out and distinctly claim[] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. The purpose of this definiteness requirement is “to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee’s right to exclude.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). Patent claims are invalid for indefiniteness when they are not “amenable to construction,” or are “insolubly ambiguous.” Exxon Research and Engineering Co. v. U.S., 265 F.3d 1371, 1375 (Fed. Cir. 2001).

Samsung contends that the term “substantially centered” in the ’163 Patent is an indefinite

2

term of degree, which cannot be construed because no objective anchor is provided in the specification. Claim 50, the only claim at issue in this litigation, reads:
A portable electronic device, comprising:
a touch screen display;
one or more processors;
memory; and
one or more programs, wherein the one or more programs are stored in the memory and configured to be executed by the one or more processors, the one or more programs including:
instructions for displaying at least a portion of a structured electronic document on the touch screen display, wherein the structured electronic document comprises a plurality of boxes of content;
instructions for detecting a first gesture at a location on the displayed portion of the structured electronic document;
instructions for determining a first box in the plurality of boxes at the location of the first gesture;
instructions for enlarging and translating the structured electronic document so that the first box is substantially centered on the touch screen display;
instruction for, while the first box is enlarged, a second gesture is detected on a second box other than the first box; and
instructions for, in response to detecting the second gesture, the structured electronic document is translated so that the second box is substantially centered on the touch screen display.
U.S. Patent No. 7,864,163 B2 (emphasis added).

The imprecise claim term at issue here, “substantially,” is a word of degree. See, e.g., LNP Engineering Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1359 (Fed. Cir. 2001) (considering the term “substantially completely wetted”); Exxon, 265 F.3d at 1377 (considering the phrase “to increase substantially”). “When a word of degree is used the district court must determine whether the patent’s specification provides some standard for measuring that degree.” Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). If the specification does not provide a standard for imposing a more precise construction of the term, the Federal Circuit has ruled that imposing a more precise construction would be error. See Playtex Products, Inc. v. Procter & Gamble Co., 400 F.3d 901, 907 (Fed. Cir. 2005); Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1360 (Fed. Cir. 2003).

For example, in Playtex, the Federal Circuit, quoting Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361, 1368 (Fed. Cir. 2004), stated that “substantial” implies “approximate” rather than “perfect.” 400 F.3d at 907. The Playtex Court further stated that, “the definition of ‘substantially flattened surfaces’ adopted by the district court introduces a numerical tolerance to

3

the flatness of the gripping area surfaces of the claimed applicator. That reading contradicts the recent precedent of this court, interpreting such terms of degree.” Id. The Playtex Court then discussed Cordis, 339 F.3d at 1360. In Cordis, the Federal Circuit held that: “The patents do not set out any numerical standard by which to determine whether the thickness of the wall surface is ‘substantially uniform.’ The term ‘substantially,’ as used in this context, denotes approximation.” In refusing “to impose a precise numeric constraint on the term ‘substantially uniform thickness,’” the Cordis Court held that “the proper interpretation of this term was ‘of largely or approximately uniform thickness’ unless something in the prosecution history imposed the ‘clear and unmistakable disclaimer’ needed for narrowing beyond this plain-language interpretation.” Playtex, 400 F.3d at 907 (quoting Cordis, 339 F.3d at 1361).

Similarly, in Anchor Wall Systems, Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003), the Federal Circuit held that the phrase “generally parallel” envisions “some amount of deviation from exactly parallel.” The Anchor Wall Court also noted that “words of approximation, such as ‘generally’ and ‘substantially,’ are descriptive terms ‘commonly used in patent claims “to avoid a strict numerical boundary to the specified parameter.”’” Id. at 1310-11 (internal citations omitted). Furthermore, the Court noted that “nothing in the prosecution history of the #015 patent family clearly limits the scope of ‘generally parallel’ such that the adverb ‘generally’ does not broaden the meaning of parallel.” Id. at 1311.

In Liquid Dynamics Corp., 355 F.3d at 1369, the Federal Circuit construed a claim with the phrases a “substantial helical flow” and a “substantially volume filling flow” as “all flow patterns that are generally, though not necessarily perfectly, spiral, and that fill much, though not necessarily all, of the tank’s volume.” The Court held that, “Because the plain language of the claim was clear and uncontradicted by anything in the written description of the figures, the district court should not have relied upon the written description, the figures, or the prosecution history to add limitations to the claim.” Id. at 1368.

Other Federal Circuit cases have also held that the term “substantially” does not require a strict numerical boundary. “We note that like the term ‘about,’ the term ‘substantially’ is a descriptive term commonly used in patent claims to ‘avoid a strict numerical boundary to the

4

specified parameter.”” Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001) (quoting Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211 (Fed. Cir. 1995)). “Expressions such as ‘substantially’ are used in patent documents when warranted by the nature of the invention, in order to accommodate the minor variations that may be appropriate to secure the invention.” Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002). Thus, the law is clear that a court need not, and indeed may not, construe terms of degree to give them greater precision, absent a standard for imposing a more precise construction in the specification.

In the instant case, the Court finds no standard for measuring the precise boundaries of “substantially centered” in the specification. Accordingly, under Federal Circuit precedent, it would be inappropriate for this Court to issue a construction of “substantially centered” that gives it greater precision.

The Federal Circuit has never suggested, however, that this lack of precision constitutes a lack of construability, so as to render a term of degree indefinite. Indeed, the Federal Circuit has construed such terms of degree. In so doing, the Federal Circuit has taken one of two approaches. In some cases, the Federal Circuit relies on the commonly understood meaning of other terms of degree. See, e.g., Cordis, 339 F.3d at 1360 (“substantially uniform thickness” construed as “of largely or approximately uniform thickness”); Anchor Wall, 340 F.3d at 1311 (“generally parallel” construed as “some amount of deviation from exactly parallel”). In other cases, the Federal Circuit points to some contrasting example to provide an indication of what is not meant by the term. See, e.g., Playtex, 400 F.3d at 909 (“substantially flattened surfaces” construed as “surfaces, including flat surfaces, materially flatter than the cylindrical front portion of the applicator”). In none of these cases has the Federal Circuit found that the term of degree was not amenable to construction or insolubly ambiguous.

Samsung has not attempted to argue that a court would be unable to issue such a plain meaning-based construction of the term “substantially centered.”3 Instead, Samsung has argued

5

that the fact that the Court cannot issue a more precise construction, based on the lack of an objective standard in the specification, makes it impossible to construe the term at all, thus rendering the term indefinite. However, as the cases cited above demonstrate, this is simply not the law. The Federal Circuit has explained that “[e]xpressions such as ‘substantially’ are used in patent documents when warranted by the nature of the invention, in order to accommodate the minor variations that may be appropriate to secure the invention.” Verve, 311 F.3d at 1120. Samsung has not contended, and this Court does not find, that the term “substantially centered” as used in this patent is not amenable to construction consistent with the Federal Circuit’s constructions of terms of degree.

The parties have also presented extrinsic evidence that the term “substantially centered” can be understood by persons of ordinary skill in the art. The Federal Circuit has explained that although courts “have emphasized the importance of intrinsic evidence in claim construction, we have also authorized district courts to rely on extrinsic evidence, such as expert testimony.” Datamize, 417 F.3d at 1348 (internal quotation marks and citation omitted). The opinion of an expert can illuminate the meaning of an ambiguous term of degree. See Datamize, 417 F.3d at 1353-54; Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1218 (Fed. Cir. 1991). The testimony of an inventor can also shed light on the meaning of a term insofar as the inventor is a person of ordinary skill in the art, but testimony about the inventor’s subjective state of mind cannot bear on definiteness. See CBT Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1360 (Fed. Cir. 2011) (considering an inventor’s testimony as testimony of one of skill in the art); Bancorp Services, L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1370 (Fed. Cir. 2004) (noting a district court’s proper rejection of inventor testimony concerning subjective intent).

Regarding “substantially centered,” Apple’s expert, Dr. Karan Singh, testified that “a person of ordinary skill in the art, or actually even a -- a person, a layman, would tell you that visually it’s by and large centered.” Declaration of John Pierce in support of Samsung’s Reply

6

(“Pierce Decl.”), Exh. 1, Singh 4/26/12 Depo. Tr. 119:11-21. Dr. Singh also explained that “by and large, it’s something that a person of ordinary skill in the art will have no problem understanding.” Singh 8/10/12 Trial Tr. 1901:17-19.

Similarly, Samsung’s expert, Mr. Gray, testified during his deposition that he had determined that some of Samsung’s accused products were capable of substantial centering as contemplated in the ’163 Patent:

So of the products that I -- that I have tested, except for -- except for the tab -- I think the tab 10.1. Then at least on one occasion in the boxes that I tested, my best recollection today is that there were none of the products which were incapable of centering in at least one direction under some circumstances when that first gesture selected a box. My recollection -- or “substantially centered” is the language. But not in all cases, there’s cases where they don’t. But there are some -- some cases where at least they did center it at some -- as best I can recollect, or at least approximate a centering of it.

And, in fact, let me rephrase. I think that my recollection is that even in the tab 10.1, there is occasions when -- when it when it enlarged and substantially centered.

Declaration of Nathan Sabri in support of Apple’s Opposition (“Sabri Decl.”), Exh. 3, Gray 5/4/12 Depo. Tr. 181:24-182:14. Mr. Gray further testified that a second box in some of the Samsung accused products was “substantially centered” on the touch screen display:
I believe that I have observed on at least some of the accused devices the ability to, while a first box is enlarged, select a -- select a second box. And then in response to detecting the second gesture, that that second box is substantially centered -- translated so that the second box is substantially centered on the touch screen display.
Sabri Decl., Exh. 3, Gray 5/4/12 Depo. Tr. 185:16-22. However, at trial, Mr. Gray testified that “I don’t know when something is substantially center [sic]. I know when something is fully centered or not centered, but ‘substantially centered’ is ambiguous. How would a patent – how would an engineer understand how to make something substantially centered or not?” Gray 8/15/12 Trial Tr. 2922:19-25.

The Court recognizes that “[t]he test for indefiniteness does not depend on a potential infringer’s ability to ascertain the nature of its own accused product to determine infringement, but instead on whether the claim delineates to a skilled artisan the bounds of the invention.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1373 (Fed. Cir. 2008) (quoting Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005) (quoting SmithKline

7

Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005). Nonetheless, Mr. Gray’s ability during his deposition to determine whether parts of the accused Samsung products were substantially centered or not supports the conclusion that “substantially centered” is not insolubly ambiguous.

In sum, the Federal Circuit’s cases establish that precise construction is not required, or even permissible, when a patent uses a term of degree such as “substantially,” and the specification does not provide a standard for measuring the precise boundaries of that term of degree. Moreover, the evidence suggests that persons of ordinary skill in the art can understand the meaning of the term “substantially centered.” Accordingly, the Court finds that the term “substantially centered” is not indefinite.

II. DESIGN PATENT INDEFINITENESS

Apple claims that Samsung’s design patent indefiniteness defense, like the utility patent indefiniteness defense, is waived. Apple asserts that Samsung cannot argue design patent indefiniteness now, because Samsung submitted an interrogatory response to a question about invalidity defenses that did not provide any details about the defense. Opp’n at 3. Apple further explains that Judge Grewal then struck expert testimony that included material beyond what was disclosed in that interrogatory response. ECF No. 1144.

This failure to disclose relevant evidence does not constitute waiver of the claim. Indeed, Samsung has continued to raise this issue, from its answer, ECF No. 80 at ¶ 278, through summary judgment briefing, ECF No. 931-1 at 15, and at trial, in its proposed jury instructions, ECF No. 1694 at 123-24. Thus, Apple has been on notice of this defense throughout the litigation. Accordingly, the Court properly entertains Samsung’s motion at this time.

Samsung argues that all four of the design patents at issue in this case – the D’889, D’305, D’677, and D’087 Patents – are indefinite, for a variety of reasons.

A. LEGAL STANDARD

The standard for indefiniteness is explained above. The definiteness requirement applies to design patents as well as utility patents. See Litton Systems, Inc. v. Whirlpool Corp, 728 F.2d 1423,1440-41 (Fed. Cir. 1984) (overruled on other grounds by Egyptian Goddess, Inc. v. Swisa,

8

Inc., 543 F.3d 665 (Fed. Cir. 2008)). Thus, even in design patents, “[c]laims are considered indefinite when they are not amenable to construction or are insolubly ambiguous . . . Indefiniteness requires a determination whether those skilled in the art would understand what is claimed.” Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007).

There is little clear precedent on the question of how this standard is to be applied to design patents. Courts considering the question have analyzed whether “a person of skill in the art” would get “an overall understanding of the total substance of the designs.” Antonious v. Spalding & Evenflo Companies, Inc., 217 F.3d 849 (Fed. Cir. 1999) (unpublished); see also Seed Lighting Design Co., Ltd. v. Home Depot, C 04-2291, 2005 WL 1868152 (N.D. Cal., Aug. 3, 2005) (considering whether a person skilled in the art would understand the bounds of a design patent claim from inconsistent drawings); HR U.S. LLC v. Mizco Int'l, Inc., CV-07-2394, 2009 WL 890550 (E.D.N.Y., Mar. 31, 2009) (design patent would be indefinite where “the overall appearance of the design is unclear”).

As indefiniteness is intimately linked to claim construction, the cases discussing claim construction in design patents bear on the indefiniteness analysis. Further, the test for infringement certainly bears on the test for indefiniteness, since the ultimate inquiry for indefiniteness is whether a person having ordinary skill in the art could tell what is claimed – and therefore, what infringes. See LNP Engineering, 275 F.3d at 1360. Design patents protect “overall designs” rather than individual specific features. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239-41 (Fed. Cir. 2009); see also Egyptian Goddess, 543 F.3d at 665 (noting the risk that a verbal description will lead a jury to “plac[e] undue emphasis on particular features of the design and. . . focus on each individual described feature in the verbal description rather than on the design as a whole”). Design patents are infringed when “an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design.” Crocs, Inc. v. Int'l Trade Com'n, 598 F.3d 1294, 1303 (Fed. Cir. 2010). Further, the Federal Circuit has explained that in construing design patent claims, a district court “[i]s not obligated to issue a detailed verbal description of the design,” Egyptian Goddess, 543 F.3d at 680, but “can usefully guide the finder of fact by addressing a number of other issues that bear on the

9

scope of the claim. Those include such matters as describing the role of particular conventions in design patent drafting, such as the role of broken lines; assessing and describing the effect of any representations that may have been made in the course of the prosecution history; and distinguishing between those features of the claimed design that are ornamental and those that are purely functional.” Id. (internal citations omitted). It is with these parameters in mind that the Court considers whether the design patents now at issue allow “those skilled in the art [to] understand what is claimed.” Young, 492 F.3d at 1346.

To prevail on its indefiniteness defense, Samsung must show by clear and convincing evidence that a designer of ordinary skill in the art would not understand what is claimed. See Datamize, 417 F.3d at 1348. This is a high standard, necessary to give effect to the statutory presumption of validity afforded to issued patents. See 35 U.S.C. § 282.

B. DISCUSSION

Samsung has made a range of arguments about why the various design patents are indefinite. Specifically, Samsung argues that the D’889 Patent is indefinite for four reasons: (1) drawings showing the design oriented in different directions make it impossible to know which way the design is supposed to be oriented or where features actually appear; (2) the use of broken lines is inconsistent, making it difficult to tell which elements are claimed and which are not; (3) the use of surface shading is different in different pictures, making it unclear what type of surface is being represented; and (4) the 035 Mockup 4 and iPad 2 are both said to embody the design, while the original iPad is not. Samsung then presents a single argument for indefiniteness of the D’305 Patent: that the use of color in one drawing but not another makes it impossible to tell whether color is necessary for the claim. Finally, Samsung presents two arguments for indefiniteness of the related D’677 and D’087 Patents: (1) that the drawing does not make clear whether the “lozenge” shape and rectangular shape are beneath the surface, a break in the surface, or resting on top of the surface; and (2) that the lack of shading on the D’087 drawing makes it impossible to see that there is, in fact, a display area below a transparent surface.

10

Several of Samsung’s arguments concern use of drafting techniques (broken lines and shading). In support of its argument that inconsistent use of broken lines is per se indefinite, Samsung cites In re Blum, 374 F.2d 904 (C.C.P.A. 1967). The court in Blum noted that “[d]otted and broken lines may mean different things in different circumstances” and that “in each case it must be made entirely clear what they do mean” to avoid indefiniteness. Id. at 907. This case, however, precedes Young, Datamize, Exxon, and other cases explaining that a claim need only be amenable to construction to be definite, and precedes Egyptian Goddess, which explains the responsibilities of district courts in construing design patent claims, including construing the use of drafting techniques. Further, it makes clear that it “is the examiner’s responsibility to obtain such definiteness.” Blum, 374 F.2d at 907. Here, when the patent has already issued, the patent comes with a strong presumption of validity. Thus, there is no per se rule that inconsistent use of dotted lines renders a patent invalid.

Indeed, the Court’s claim construction of the design patents shows that these features are amenable to construction. ECF No. 1425 (construing the use of broken lines, oblique lines, and shading in all four of the design patents). Similarly, the Federal Circuit found no difficulty in interpreting the claimed designs in the D’677, D’087, and D’889 Patents. See Apple, Inc. v. Samsung Electronics Co., Ltd., 678 F.3d 1314 (Fed. Cir. 2012) (preliminary injunction opinion). Given that this Court and the Federal Circuit have construed the claims in these patents, they are not “insolubly ambiguous” or “not amenable to construction.” Young, 492 F.3d at 1346.

Moreover, the Federal Circuit has explicitly recognized that it is appropriate for district courts to issue interpretations of drafting conventions, see Egyptian Goddess, 543 F.3d at 680. If the use of drafting conventions had to be facially obvious for the patent to be valid, no such interpretations would ever be necessary. Further, the law is clear that the fact that claim construction is necessary does not render the patent indefinite. See, e.g., Exxon, 265 F. 3d at 1375 (patent is not indefinite even if claim construction is quite difficult). Accordingly, the patents are not per se indefinite due to their inconsistent use of drafting techniques including shading and broken lines.

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Regarding the differently oriented drawings in the D’889 Patent, the Court sees nothing inconsistent about these drawings. They show a device facing different directions, but there is no place in which an identifiable feature of the design appears in two different places in two different figures, taking into account the rotation of the object depicted. The fact that a feature may be invisible in one of the figures due to the resolution and orientation of the drawing does not make it impossible to determine whether or not the feature is part of the design. Samsung argues that the “environmental features” in Figures 1-4 are “switched to different sides” in Figures 5-8. Mot. at 6. Without any further specifics in Samsung’s argument, the Court cannot be certain as to what features Samsung intends to refer, but having examined the drawings, the Court sees no inconsistency. There is a circular hole on one edge and a rectangular opening on another edge visible in Figure 2; the same features are visible in the same relative places in Figures 6 and 8, though the entire object is rotated. Further, contrary to Samsung’s assertion, there is simply no requirement that a claimed design must have a particular preferred orientation; indeed, Samsung cites no law even suggesting that there is. The fact that the D’889 Patent shows a design in different orientations merely shows that the particular orientation – landscape or portrait, head-on or perspective – is not part of what is claimed.

Samsung also argues that the fact that the iPad 2 and the 035 Mockup both embody the D’889 Patent necessarily renders the patent indefinite. But the law is clear that the same design patent can have multiple embodiments. See Antonious, 217 F.3d at 7; In re Rubinfield, 270 F.2d 391, 391 (C.C.P.A. 1959). Thus, the fact that both of these objects are said to embody the design does not necessarily propose a definiteness problem. Samsung seems to suggest that if two objects as different as the iPad 2 and the 035 Mockup can both embody the patented design, where the original iPad does not, the patent simply must be indefinite. But Samsung presents no evidence to support its assertion that the 035 Mockup and iPad2 are less similar in relevant ways than the original iPad and iPad2, and a mere assertion in a brief that objects are similar or dissimilar cannot serve as a basis for invalidating a patent. Given the strong presumption of validity accompanying issued patents, this Court cannot find, based on Samsung’s bald assertion, that the similarities and differences between these three articles and the patent itself warrant a finding of indefiniteness.

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Next, Samsung claims that because only one of the figures in the D’305 Patent is in color, there is no possible way to know whether color is part of the claimed design. As Samsung acknowledges, the Model of Patent Examining Procedure explains that color drawings are allowed where “color is an integral part of the claimed design.” MPEP 1503.02(V). Thus, by including a color drawing, Apple has made clear that color is necessary to the design. The regulations governing color drawings make clear that they are to be used only rarely and only where necessary to convey what is claimed. See 37 C.F.R. § 1.84(a)(2). Nowhere do the regulations say that if one drawing is in color, all drawings must be in color, and Samsung cites no authority for that proposition. Given the presumption of validity afforded to issued patents, see Datamize, 417 F.3d at 1347, the Court declines to adopt a rule requiring all depictions of the design to be in color in order for color to be part of the claimed design.

Samsung next argues that the D’677 and D’087 Patents are indefinite because it is unclear whether the lozenge and rectangle shapes are below, in, or on top of the surface. But it does not matter “whether the lozenge and rectangle features on the front faces are below a surface, material breaks on the surface, or features drawn on top of a continuous surface,” Mot. at 8, as long as any of those could produce interchangeable visual effects that would appear “substantially the same to the ordinary observer.” Egyptian Goddess, 543 F.3d at 678. As this Court explained in its Claim Construction Order, a design patent protects an overall visual impression, and “it will be for the jury to decide whether the accused device’s ‘lozenge-shaped element would appear as it does in the figures.’” ECF No. 1425 at 7. In other words, the design patent need not specify how the lozenge shape is created. It need only provide the visual standard for comparison. It may be possible to produce the same overall visual impression with the lozenge in any one of those three positions, relative to the smooth surface. This fact does not render the design patent indefinite; it simply means that there may be more than one way to manufacture an article that embodies the claimed design.

Finally, Samsung argues that Apple’s “named inventors and other witnesses” testified “that they could not understand the designs reflected in Apple’s patents.” Reply at 3 n.1 (citing exhibits to Pierce Reply Decl.). Generally, the witnesses to whom Samsung points express a lack of

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familiarity with the conventions used in the drawings, or a lack of understanding about what design patents are. However, the witnesses’ reluctance to verbally interpret the drawings presented in depositions as parts of patents subject to intense litigation does not, in and of itself, establish indefiniteness. Rather, the testimony Samsung cites consistently indicates a lack of familiarity with design patent conventions. See, e.g., Pierce Reply Decl. Exh. 10 (“Q: And why is it you can’t ascertain that? Is there not enough information in the drawings here to tell you? A: I don’t understand the language of the patent drawing.”); id. Ex. 12 (“Q: And in some instances you said you couldn’t make that judgment based on the drawings. Do you recall that? A: Yes. Q: Why is that, sir? A: I—I can’t – I can’t interpret patent drawing.”) Witnesses’ ignorance of drafting conventions, which are detailed in the Manual of Patent Examining Procedure (see Mot. at 7; Opp’n at 7), does not establish that the patents cannot be construed so as to clearly delineate what design is claimed. Further, definiteness does not require that persons of skill in the art be able to clearly describe the designs in words; they must simply be able to replicate the patented design and understand what is claimed. Here, the testimony to which Samsung points demonstrates a general unease among some witnesses with the concept of design patents – not an inability to understand or replicate the claimed designs.

Further, Apple presents some trial testimony of witnesses who were able to interpret the drawings. Most notably, Samsung’s design expert, Itay Sherman, testified that the designs were obvious and functional (see, e.g., Tr. 2578:10-21; 2579:8-20; 2581:22-25). As Apple points out, it would be difficult to have an opinion that a given design was obvious without understanding what the design actually was.

Taken together, Samsung’s arguments, which all concern the quality and specificity of the drawings, are in contrast to the types of defects that courts have found constituted design patent indefiniteness. For example, in Seed Lighting, the lamp was depicted with a base that had one shape in one drawing and a completely different shape in another drawing. 2005 WL 1868152 at *9. The difference could not be attributed to the way in which the design was represented; there were unambiguously two different shapes in the two different pictures. The Federal Circuit in Antonious confirms that where the ambiguities concern representation, and not the actual article, a

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court need not find indefiniteness. 217 F.3d at 7-8 (no indefiniteness where discrepancies between drawings may be due to differing use of perspective). The distinction between drafting inconsistencies and actual ambiguity is especially relevant here, where the Court has been able to construe the drafting techniques, as the Federal Circuit has stated that district courts may do. See Egyptian Goddess, 543 F.3d at 680. In sum, all of Samsung’s alleged sources of indefiniteness concern how the design is represented, rather than the nature of the design itself. These ambiguities are not fatal to patents that this Court must view with a strong presumption of validity. Accordingly, Samsung has not established indefiniteness by clear and convincing evidence, and Apple’s design patents remain valid.

III. CONCLUSION

For the reasons stated above, the Court finds that neither the ’163 Patent nor Apple’s design patents are invalid for indefiniteness.

IT IS SO ORDERED.

Dated: January 29, 2013

[signature]
LUCY H. KOH
United States District Judge

____________
1 Samsung also argues that its infringement was not willful, and that Apple’s patents are invalid for obviousness. Because Samsung also addressed these arguments in its motion for judgment as a matter of law, the Court does not address them in this Order.

2 Although the parties originally identified 10 claim terms for construction, by the time of the Markman hearing, the parties stipulated to the construction of two terms and asked the Court to construe only eight terms. See Order Construing Disputed Claim Terms, ECF No. 849, at 1.

3 Neither party requested construction of the term “substantially centered.” Moreover, Samsung did not make any noninfringement, anticipation, or obviousness argument that depended on a disputed interpretation of the term “substantially centered.” Cf. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (noting that claim construction was required where the parties had an actual dispute about whether or not the term “only if” permitted any exceptions).

4 The 035 Mockup is a model Apple produced of one of its designs. It was admitted at trial as DX741.

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Here's #2219, Order Granting in Part and Denying in Part Apple's Motion for Judgment as a Matter of Law:

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

APPLE, INC., a California corporation,

Plaintiff,

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.

_________________

Case No.: 11-CV-01846-LHK
ORDER GRANTING IN PART AND
DENYING IN PART MOTION FOR
JUDGMENT AS A MATTER OF LAW

______________

On August 24, 2012, after a thirteen day trial and approximately three full days of deliberation, a jury in this patent case reached a verdict. See ECF No. 1931. Apple now seeks judgment as a matter of law to overturn certain of the jury’s findings, and judgment as a matter of law as to other issues that the jury did not reach. See ECF No. 2002 (“Mot.”). In the alternative, Apple moves for a new trial on most of the issues on which Apple seeks judgment as a matter of law. For the reasons discussed below, the Court GRANTS Apple’s motion for judgment as a matter of law that claims 10 and 15 of Samsung’s U.S. Patent No. 7,675,941 are invalid; DENIES

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Apple’s motion for judgment as a matter of law in all other respects; and DENIES Apple’s motion for a new trial.1

I. LEGAL STANDARD.

Rule 50 permits a district court to grant judgment as a matter of law “when the evidence permits only one reasonable conclusion and the conclusion is contrary to that reached by the jury.” Ostad v. Oregon Health Sciences Univ., 327 F.3d 876, 881 (9th Cir. 2003). A party seeking judgment as a matter of law after a jury verdict must show that the verdict is not supported by “substantial evidence,” meaning “relevant evidence that a reasonable mind would accept as adequate to support a conclusion.” Callicrate v. Wadsworth Mfg., 427 F.3d 1361, 1366 (Fed. Cir. 2005) (citing Gillette v. Delmore, 979 F.2d 1342, 1346 (9th Cir.1992)).

A new trial is appropriate under Rule 59 “only if the jury verdict is contrary to the clear weight of the evidence.” DSPT Int’l, Inc. v. Nahum, 624 F.3d 1213, 1218 (9th Cir. 2010). A court should grant a new trial where necessary “to prevent a miscarriage of justice.” Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007).

II. DISCUSSION

A. The Unregistered iPad/iPad2 Trade Dress

Apple moves for judgment as a matter of law that the unregistered iPad/iPad 2 Trade Dress is (1) protectable; (2) infringed; and (3) famous and diluted. In the alternative, Apple moves for a new trial on the unregistered iPad/iPad 2 Trade Dress. The jury found that the unregistered iPad/iPad 2 Trade Dress was not protectable and not famous. Therefore, the jury did not reach the questions of whether Samsung infringed or diluted Apple’s unregistered iPad/iPad2 Trade Dress.

1. Protectability

At trial, Apple had the burden of proving protectability by a preponderance of the evidence. See 15 U.S.C.A. § 1125; Final Jury Instruction No. 63. “The physical details and design of a product may be protected under the trademark laws only if they are nonfunctional and have acquired a secondary meaning.” Clamp Mfg. Co., Inc. v. Enco Mfg. Co., Inc., 870 F.2d 512, 515

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(9th Cir. 1989). In finding the trade dress not protectable, the jury might have found that either requirement was not met, or that neither was met. Thus, to establish that its unregistered trade dresses are protectable as a matter of law despite the jury’s contrary verdict, Apple would have to show that a reasonable jury would necessarily have found both non-functionality and secondary meaning.

There are two types of functionality: utilitarian functionality and aesthetic functionality. See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33 (2001). Under the traditional, utilitarian functionality test, a trade dress is functional “when it is essential to the use or purpose of the device or when it affects the cost or quality of the device.” Id. In applying this test, the Ninth Circuit assesses four factors: “(1) whether advertising touts the utilitarian advantages of the design, (2) whether the particular design results from a comparatively simple or inexpensive method of manufacture, (3) whether the design yields a utilitarian advantage and (4) whether alternative designs are available.” Talking Rain Beverage Co. v. South Beach Beverage Co., 349 F.3d 601, 603 (9th Cir. 2003) (citing Disc Golf Ass’n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998)); see also Au-Tomotive Gold, Inc., v. Volkswagen of America, Inc., 457 F.3d 1062, 1072 n.8 (9th Cir. 2006) (acknowledging the four factor test applied by the Ninth Circuit). Apple argues that the evidence of non-functionality and secondary meaning presented at trial established protectability as a matter of law.

Apple cites evidence attempting to establish utilitarian functionality under all four Disc Golf factors. As to the first factor, “whether advertising touts the utilitarian advantages of the design,” Apple points to iPad advertising that presents the iPad design without touting any utilitarian design advantages. See Mot. at 3 (citing PX11; PX128). As to the second factor, “whether design results from a comparatively simple or inexpensive method of manufacture,” Apple cites the testimony of Apple design executive Christopher Stringer that the iPad was not designed to make manufacture cheaper or easier. See Mot. at 3 (citing Tr. 505:18-21). As to the third factor, whether the design yields utilitarian advantage, Apple cites Mr. Stringer’s testimony that the iPad design was chosen for beauty rather than function. See Mot. at 3 (citing Tr. 499:5-6; 504:1-3). As to the fourth factor, Apple cites expert testimony of Apple’s experts Peter Bressler

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and Susan Kare that competitor products with alternative designs can perform the same functions as the iPad. See Mot. at 3 (citing Tr. 1095:10-1096:22 (Bressler); Tr. 1399:24-1401:1 (Kare); Tr. 1403:16-1405:12 (Kare). See also PX10 (depicting alternative designs).

Although Apple has presented some favorable evidence on each factor, judgment as a matter of law overturning the jury’s verdict of nonprotectability is not appropriate here. It was Apple’s burden to prove protectibility of the unregistered iPad trade dress, and Apple has not established that protectability was the only reasonable conclusion. See Ostad, 327 F.3d at 881. Indeed, in its opposition, Samsung cites substantial evidence in the record supporting the jury’s finding. See Samsung’s Opposition to Apple’s Motion for Judgment as a Matter of Law (“Opp’n”), ECF No. 2053, at 1-3. As to evidence suggesting functionality, Samsung first cites testimony of Samsung’s design expert Dr. Itay Sherman that the iPad trade dress is functional. Specifically, Samsung cites Dr. Sherman’s testimony that the rectangular shape, rounded corners, and flat front face had “significant benefits” for “usability and economics.” Opp’n at 1 (citing Tr. 2603:11-2609:9). Samsung also cites the testimony of Apple witnesses Dr. Bressler and Dr. Kare that the iPad’s clear surface covering the display and familiar icon images served utilitarian functions. See id. (citing Tr. 1199:25-1200:16 (Bressler); 1451:13-1455:25 (Kare)). Samsung also points to Apple advertisements that tout the iPad’s functionality. See id. (citing PX11 (“Thinner. Lighter. . .”)). Finally, Samsung argues that Apple’s experts admitted that they failed to seriously consider functionality and offered only conclusory testimony that alternative designs could perform the same functions as the iPad. See id. at 2 (citing Tr. 1469:24-1470:16 (Kare admitting that she did not consider trade dress functionality); Tr. 1206:18-1208:6 (Bressler testifying that his analysis of trade dress functionality was based upon “looking at the packaging and turning the phones on to see their operating system”)); Opp’n at 1 (citing Tr. 1079:2-18; Tr. 1094:19-1096:2 (Bressler testimony that alternatives “would provide the same functions”)). A reasonable jury could have weighed this substantial evidence of functionality against the evidence of non-functionality cited by Apple, and concluded that Apple did not carry its burden of showing a lack of utilitarian functionality.

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Furthermore, there is substantial evidence to support the jury’s finding of non-protectability on the theory that the iPad trade dress has “aesthetic” functionality.” See Au-Tomotive Gold, 457 F.3d at 1072. The asserted iPad Trade Dress has aesthetic functionality if limiting Samsung’s use of the iPad Trade Dress would impose “significant non-reputation-related competitive disadvantage” on Samsung. See id. (citing TrafFix, 532 U.S. at 33). The Supreme Court in TrafFix explained that such significant disadvantage arises where there is a “competitive necessity” to infringe or dilute. 532 U.S. at 32-33.

The testimony of Apple’s own witnesses supports a finding of aesthetic functionality. Apple industrial designer Christopher Stringer testified that the iPad was designed to be beautiful (Tr. 499:3-8), and Apple executive Philip Schiller also testified that Apple intended the iPad to be “something beautiful.” Tr. 617:22-618:1. Mr. Schiller further testified that a primary reason for the iPad’s “success” is that the iPad is “absolutely beautiful” (Tr. 626:5-19) and that “customers value beautiful products.” Tr. 629:2-9. If the jury accepted Apple’s own evidence that Apple had designed an objectively beautiful product desired by consumers for its beauty, the jury could reasonably conclude that excluding Samsung from selling products with this claimed trade dress would impose a “significant non-reputation-related competitive disadvantage.” Au-Tomotive Gold, 457 F.3d at 1072. Thus, again, substantial evidence in the record supports the jury’s finding of non-protectability on a theory of functionality.

Trade dress protectability requires not only non-functionality, but also secondary meaning. A trade dress has secondary meaning if “the purchasing public associates the dress with a particular source.” Clamp, 870 F. 2d at 517 (citing Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 843 (9th Cir. 1987)). “[F]actors to be assessed in determining secondary meaning include: [1] whether actual purchasers associate [the trade dress] with [the plaintiff]; [2] the degree and manner of [the plaintiff’s] advertising; [3] the length and manner of [the plaintiff’s] use of the [trade dress]; and [4] whether [the plaintiff's] use of the [trade dress] has been exclusive.” Id.

As to the first Clamp factor, whether actual purchasers associate the trade dress with Apple, Apple cites Apple expert Dr. Hal Poret’s survey evidence that 40-65% of respondents associated iPad Trade Dress with Apple. See Mot. at 4 (citing Tr. 1585:22-1589:16 (Poret testifying on his

5

survey results)). As to the second Clamp factor, the degree and manner of Apple’s advertising, Apple points to its extensive advertising. See Mot. at 4 (citing Tr. 639:13-22 and 649:2-650:19 (Schiller testifying on Apple’s advertising strategy, including the “product as hero” approach and the various media used by Apple); Tr. 656:4-15 and PX16 (Schiller testimony and supporting documentation that Apple spent $379.5 million on U.S. iPad advertising through June, 2011)). Apple also argues that trade dress recognition may be inferred from the high volume of iPad sales. See Mot. at 4. This argument may have some relevance to the third Clamp factor, the length and manner of use.

Samsung argues that the jury could reasonably have found non-protectability based upon lack of secondary meaning. As to the first Clamp factor, Samsung argues that Apple did not show that actual purchasers associate the unregistered iPad/iPad2 Trade Dress with Apple. Instead, Samsung argues that Dr. Poret’s survey was deficient because the survey asked whether consumers associated Apple with product images that included features that are not part of the claimed iPad trade dress. See Opp’n at 2 (citing Tr. 1680:19-1682:11). Furthermore, Samsung argues that the survey was conducted after Samsung began selling the accused tablets, and therefore has no relevance to the question of whether the iPad/iPad 2 Trade Dress had acquired secondary meaning before the accused Samsung tablets were released. See Opp’n at 2 (citing Tr. 1601:5-1602:12). Samsung also argues that Dr. Poret’s survey evidence lacks credibility and scientific objectivity because Dr. Poret changed his survey methodology at Apple’s request. See Opp’n at 3 (citing Tr. 1679:15-1680:18). As to the second Clamp factor, the degree and manner of Apple’s iPad advertising, Samsung argues that Apple’s advertisements are not limited to showing the claimed trade dress. See Opp’n at 3 (citing PX11; PX128 (Apple advertisements)). Therefore, Samsung reasons, the degree and manner of Apple’s advertising do not support a strong inference that Apple’s advertising caused the unregistered iPad/iPad 2 Trade Dress to acquire secondary meaning. Finally, as to the fourth Clamp factor, whether Apple had exclusive use of the iPad/iPad 2 Trade Dress, Samsung argues that numerous third party products use iPad-like designs. Opp’n at 2 (citing DX687). Samsung also argues that the iPad’s popularity is not necessarily either a cause

6

or a result of trade dress recognition by consumers, and thus is not evidence of secondary meaning. See Opp’n at 3 (citing 4 McCarthy on Trademarks and Unfair Competition 15:47 (4th ed. 1996)).

Samsung has demonstrated that substantial evidence in the record supports the jury’s finding of no secondary meaning. Specifically, Samsung presented substantial rebuttal evidence to Dr. Poret’s survey, along with some evidence on the other relevant factors. Though there is evidence pointing each way, there was substantial evidence to support a conclusion that on balance, Apple failed to establish protectability.

In sum, there is substantial evidence in the record to support the jury’s finding that Apple’s unregistered iPad/iPad 2 Trade Dress is not protectable on any of three independent grounds: (1) utilitarian functionality; (2) aesthetic functionality; and (3) lack of secondary meaning. In light of this finding, the Court also finds that the jury’s conclusion was not against the clear weight of the evidence. Accordingly, the Court DENIES Apple’s motion for judgment as a matter of law that the unregistered iPad/iPad 2 Trade Dress is protectable, and DENIES Apple’s alternative motion for a new trial on the issue of iPad/iPad 2 Trade Dress protectability.

2. Infringement and Dilution

Apple also moves for judgment as a matter of law that the unregistered iPad/iPad 2 Trade Dress is infringed and diluted. In the alternative, Apple moves for a new trial on the questions of iPad/iPad 2 Trade Dress infringement and dilution. The jury did not reach the question of infringement because it found the iPad/iPad 2 Trade Dress non-protectable. For the reasons discussed above, the Court does not overturn the jury’s finding of non-protectability. A non- protectable trade dress cannot be infringed or diluted. Accordingly, the Court does not reach Apple’s motion for judgment as a matter of law or a new trial on infringement and dilution.

B. D’889 Infringement

Apple moves for judgment as a matter of law that the Samsung Galaxy Tab 10.1 infringes U.S. Patent No. D504,889 (“the D’889 Patent”), or, in the alternative, a new trial on the question of D’889 infringement. See Mot. at 7-13. A product infringes a design patent if the product’s design appears “substantially the same” as the patented design to an “ordinary observer.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc). Comparison of the

7

claimed design to the prior art serves to focus this infringement analysis “on those aspects of [the claimed] design which render [the claimed] design different from prior art designs.” Id. at 677 (internal punctuation omitted).

Apple argues that the Galaxy Tab 10.1 infringes the D’889 Patent because the designs would appear substantially the same to an ordinary observer. Apple first cites this Court’s and the Federal Circuit’s rulings on the preliminary injunction in this case in which the Federal Circuit implicitly affirmed this Court’s finding of a substantial likelihood of success on the merits as to D’889 infringement. See Mot. at 8 (citing Apple, Inc. v. Samsung Electronics Co., Ltd., 678 F.3d 1314, 1329 (Fed. Cir. 2012)). However, the Federal Circuit’s ruling was not a finding of actual infringement, and the preliminary injunction order was not binding on the jury. Indeed, the jury was presented with significant evidence not presented at the preliminary injunction stage, including Apple’s admission that the original iPad did not embody the D’889 Patent. Thus, the prior ruling on the preliminary injunction does not justify judgment as a matter of law or a new trial on infringement.

Apple also argues that the evidence at trial established infringement as a matter of law. The Court does not agree. Though Apple did present testimony about the similarity of the accused Galaxy Tab 10.1 to the D’889 Patent, Samsung noted a variety of differences. See Opp’n at 6-7. One difference is that the Galaxy Tab 10.1 has a matte back surface rather than a shiny back surface. Other differences include the Galaxy Tab 10.1’s thinner profile than the D’889, the Galaxy Tab 10.1’s curved junction between the front surface and the sides in contrast to the D’889’s right angle (see D’889 at Fig. 5), and the Galaxy Tab 10.1’s back surface design with a seam in contrast to the seamless D’889. Although the Court presumes that the jury followed the Court’s instruction to take a gestalt approach to analyzing design patent infringement, these specific differences and others cited by Samsung are sufficient such that their cumulative effect could reasonably render the overall design of the Galaxy Tab 10.1 non-infringing. The Court thus finds that there was substantial evidence in the record to support the jury’s overall conclusion of noninfringement, and that the jury’s finding of noninfringement was not against the clear weight of the evidence.

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Apple also argues that the Court’s claim construction of the D’889 Patent was erroneous, and that under a correct claim construction, judgment as a matter of law would be warranted. Apple further argues that the claim construction is grounds for a new trial. Specifically, Apple argues that, contrary to this Court’s construction, the D’889 Patent does not require a shiny back surface, and thus, the Galaxy Tab 10.1, with its matte surface, infringes. However, this Court explicitly ruled, and subsequently instructed the jury, that the oblique lines used to shade the back surface in Figure 2 depict “a transparent, translucent, or highly polished or reflective surface.” ECF No. 1425 at 10-11; see also Final Jury Instruction No. 43. These lines are highly similar to those in Figures 1 and 3, which Apple admits show transparent, translucent, or highly polished or reflective surfaces.2 Apple argues that although oblique lines “must” be used to indicate any shiny surface, they may also be used for other purposes, such as indicating flatness or curvature, and thus, the presence of oblique lines does not necessarily imply a shiny surface. See MPEP 1503.02. Therefore, Apple argues, the Court should not have construed the oblique lines as representing a shiny surface. However, flatness or curvature may be indicated by any appropriate surface shading – oblique lines are not required. See id. As this Court has previously ruled, by using oblique lines in Figure 2 that are highly similar or even indistinguishable from those used in Figures 1 and 3, Apple claimed a transparent, translucent, or highly polished or reflective back surface. ECF No. 1425 at 10-11. Accordingly, Apple’s arguments that judgment as a matter of law would be warranted under a different construction and that a new trial is warranted on the basis of an incorrect construction cannot succeed.

Finally, Apple argues that a new trial is warranted on infringement of the D’889 Patent because the jury was incorrectly instructed. Specifically, Apple argues that the Court erroneously instructed the jury that consumer purchasing confusion was required for design patent infringement. Although the Court did refer to the concept of confusion in illustrating the test for infringement, the Court also explicitly instructed the jury that “[y]ou do not need . . . to find that any purchasers were actually deceived or confused . . . .” Final Jury Instruction No. 46. Thus,

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Apple’s characterization of the jury instruction as requiring the jury to find actual confusion is incorrect. The Court’s instructions provided an accurate description of the test for design patent infringement, and no new trial is warranted on the basis of this instruction.

Accordingly, the Court DENIES Apple’s motion for judgment as a matter law that Samsung Galaxy Tab 10.1 does not infringe the D’889 Patent, and DENIES Apple’s alternative motion for a new trial on the issue of D’889 infringement.

C. Apple’s Remaining Claims

1. Non-Infringement of the D’677 Patent and the D’807 Patent

The jury found that the Galaxy Ace phone did not infringe U.S. Patent No. D618,677 (the “D’677 Patent”) and that the Galaxy S II and Infuse 4G phones did not infringe U.S. Patent No. D593,087 (the “D’087 Patent”). Apple argues that these findings should be reversed by a grant of judgment as a matter of law. See Mot. at 13-14. However, the Court finds that there is substantial evidence in the record to support the jury’s findings of non-infringement. Specifically, the Court finds that the phones themselves provide substantial evidence to support the jury’s finding of non-infringement.

Although specific individual differences or similarities do not themselves determine non-infringement of design patents, individual differences may contribute to the gestalt impression that the jury found non-infringing. See Egyptian Goddess, 543 F.3d at 678-79. For example, among other differences from the D’677 Patent, the Galaxy Ace phone has a rectangular center button, prominent ornamentation, and wide lateral boarders. See JX1030 (the Galaxy Ace). See also Tr. 1119:19-22 (Bressler testimony that the D’677 Patent was distinguished from the prior art based upon button size). The Galaxy S II phones and the Infuse phone have either bezels distinct from the D’087 Patent’s bezel, or no bezel, as well as front-face icons, writing, and logos, and different corner shapes. See JX1027 (Infuse 4G); JX1031 (Galaxy S II – AT&T); JX1032 (Galaxy S II – i9100); JX1034 (Galaxy S II – Epic 4G Touch); JX1035 (Galaxy S II – Skyrocket). See also Tr. 1121:7-10 (Bressler testimony that “the absence of a bezel takes you out of substantial similarity”); Tr. 1126:22-1127:1 (Bressler testimony that the Infuse 4G lacks a bezel). The jury could reasonably have concluded that the designs of these phones were not substantially the same as the

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D’677 and D’087 Patents based on these phones and the testimony about them, and this conclusion was not against the clear weight of the evidence. Accordingly, the Court DENIES Apple’s motion for judgment as a matter of law that the Galaxy Ace does not infringe the D’677, and that the Galaxy S II and the Infuse 4G phones do not infringe the D’807, and DENIES Apple’s request for a new trial including these issues.

2. Non-Dilution Findings as to the Registered iPhone Trade Dress and
Unregistered iPhone 3G Trade Dresses

Apple moves for judgment as a matter of law that all the accused products dilute Apple’s registered iPhone and unregistered iPhone 3G Trade Dresses. The jury found these trade dresses protectable and famous, and found dilution as to some devices, but did not find dilution as to every accused device.

Apple cites the testimony of its expert Dr. Russell Winer that “the sale of Samsung’s Galaxy S phones is likely to dilute the distinctiveness of Apple’s iPhone trade dresses” (Tr. 1528:17-21), and the testimony of its expert Dr. Kent Van Liere that the results of his survey using the Samsung Galaxy Fascinate and the Samsung Galaxy S II Epic 4G show “that it is likely that consumers will associate the look and design of the Samsung Galaxy phones with Apple or with the iPhone, and that would be evidence suggestive of dilution.” Tr. 1695:23-1696:2. Apple argues that likelihood of dilution was the only reasonable conclusion for the jury to draw upon hearing this evidence.

However, the jury was instructed that the degree of similarity between the accused Samsung phones and Apple’s trade dresses was relevant in determining dilution. See Final Jury Instruction No. 67. The fact that Dr. Winer and Dr. Van Liere testified that all the accused Samsung phones were likely to dilute Apple’s phone trade dresses would not preclude the jury from examining the accused phones, which were in evidence, and reaching its own conclusions as to the likelihood of dilution. Indeed, the accused phones vary in appearance, and Samsung argues that features of these iPhone 3G trade dresses, including a “metallic bezel” and “rounded silver edges,” are missing from the accused devices. See Opp’n at 13 (citing JX1011-12, 1016, 1022, 1025, 1027, 1031-35). Evidence on which to determine that the accused phones were not

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sufficiently similar to Apple’s trade dresses to give rise to a likelihood of dilution was before the jury. Accordingly, the jury’s findings of non-dilution are consistent with substantial evidence in the record, and the jury’s finding of non-dilution was not against the clear weight of the evidence. Apple’s motion for judgment as a matter of law or a new trial on dilution of the registered iPhone trade dress and unregistered iPhone 3G trade dresses is DENIED.

3. Dilution of Apple’s Unregistered Combination iPhone Trade Dress

Apple moves for judgment as a matter of law that Apple phones dilute the unregistered Combination iPhone Trade Dress, or in the alternative, for a new trial on this basis. See Mot. at 15- 16. Trade dress dilution requires predicate findings that the asserted trade dress is protectable and famous. The jury found that the unregistered Combination iPhone Trade Dress was not protectable and not famous. As discussed previously in the context of the iPad/iPad 2 Trade Dress, a trade dress is protectable if it is: (1) non-functional; and (2) has acquired secondary meaning.

The evidence cited by Apple in support of its motion for judgment as a matter of law is insufficient to overturn the jury verdict. As discussed above, Apple bore the burden of establishing protectability of its unregistered trade dress at trial. In support of non-functionality, Apple cites only Mr. Bressler’s testimony that: “It’s my opinion that [all] aspects of the iPhone trade dress are not functional.” See Mot. at 15 (citing Tr 1094:14-18). In support of secondary meaning, Apple cites only Dr. Winer’s testimony that “Apple trade dresses are among the most distinctive in the world, and particularly in the U.S., and have a very high degree of recognition.” See Mot. at 15 (citing Tr. 1507:4-9). A reasonable jury considering this brief and conclusory testimony could find that Apple had not carried its burden of proof on the issue of the Combination iPhone Trade Dress’s protectability. Indeed, the cited testimony regarding secondary meaning was not even specifically about the Combination iPhone Trade Dress, but rather concerned general attributes of “Apple trade dresses.” Tr. 1507:7. The jury would have been reasonable to conclude that Apple had not established the required non-functionality on the basis of this testimony, and such a finding was not against the clear weight of the evidence. Accordingly, the Court DENIES Apple’s motion for judgment as a matter of law that the unregistered Combination iPhone Trade Dress is protectable, and DENIES Apple’s request for a new trial on this basis. Because a trade dress that is

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not protectable cannot be famous or diluted, the Court need not reach Apple’s motion on these issues.

4. Infringement of the ’163 and ’915 Patents

The jury found that 21 of 24 accused Samsung products infringed U.S. Patent No. 7,844,915 (“the ’915 Patent”), and that 16 of 24 accused Samsung products infringed U.S. Patent No. 7,864,163 (“the ’163 Patent”). Apple now argues that all of the accused Samsung devices actually infringe these patents, and that judgment as a matter of law should be granted for the products the jury found not to infringe.

Apple’s one-paragraph motion cites only Apple expert Dr. Karan Singh’s testimony at trial that all of the Samsung devices accused of infringement actually infringe. Apple’s broad citations to large blocks of transcript with minimal analysis skirts the limits of the Court’s order that parties make all relevant arguments in the body of their motion, and specifically cite and quote the supporting evidence. See ECF No. 1945. Even if Apple’s argument were properly presented, the jury was not obligated to credit Dr. Singh’s testimony that all of the accused devices infringed. Instead, the jury was entitled to examine the accused devices, all of which were in evidence, and reach its own conclusions. Additionally, Samsung points to testimony from Samsung’s expert Stephen Gray, which also could have provided a basis for the jury’s finding of noninfringement. Based on all the evidence presented at trial, the Court finds that there is substantial evidence in the record to support the jury’s finding, and the jury’s finding was not against the clear weight of the evidence. Accordingly, the Court DENIES Apple’s motion for judgment as a matter of law that all the accused phones infringe the ’163 and ’915 Patents, and DENIES Apple’s request for a new trial on this basis.

D. Willfulness and Inducement

Apple next moves for judgment as a matter of law that Samsung willfully infringed the D’087 Patent. See Mot. at 17. The Federal Circuit has laid out the relevant standard for the willfulness inquiry for patent infringement: “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. The state of mind of the accused infringer is not relevant to this

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objective inquiry. If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk. . . was either known or so obvious that it should have been known to the accused infringer.” In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (internal citation omitted). Thus, the willfulness inquiry is a two-prong analysis, requiring an objective inquiry and a subjective inquiry. The objective inquiry is a question for the Court, and the subjective inquiry is a question for the jury. Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 682 F.3d 1003, 1007 (Fed. Cir. 2012).

In this case, the jury found that, as a subjective matter, Samsung did not willfully infringe the D’087 Patent. In other words, the jury considered whether the “objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer,” Seagate, 497 F.3d at 1371, and determined that it was not. This finding was supported by substantial evidence. In particular, Samsung cites evidence that the differences between the D’087 Patent and the D’087 prior art were similar in type and scope to the differences between the D’087 Patent and the accused devices. See Tr. 1121:7-1178:25 (discussing varying speaker location, bezel shape, key locations, and number of keys). This evidence could reasonably have supported the jury’s finding that the D’087 Patent was limited in scope, rendering it reasonable for Samsung to believe that its products, while perhaps in some ways similar to the D’087 Patent, did not infringe. Indeed, the jury’s understanding that the D’087 Patent has limited scope is consistent with the jury’s finding that 5 of the 8 devices accused of infringing the D’087 Patent were in fact non-infringing. This evidence of the limited scope of the D’087 Patent is sufficient to support the jury’s conclusion that the infringement was not so obvious that Samsung “should have known” that there was a high likelihood of infringement.

Moreover, Apple has failed to cite any evidence of actual knowledge of infringement on Samsung’s part. Instead, Apple relies on evidence that Samsung purposely imitated Apple’s designs. See Opp’n at 10. Evidence of copying, however, is not evidence of infringement or knowledge thereof. See Allen Engineering Corp. v. Bartell Industries, Inc., 299 F. 3d 1336, 1351 (Fed. Cir. 2002) (“While copying may be relevant to obviousness, it is of no import on the question

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of whether the claims of an issued patent are infringed.”). Given that, as explained above, it would have been reasonable for Samsung to believe that the D’087 Patent was limited in scope, Apple’s evidence that Samsung engaged in some copying of Apple’s designs does not establish that Samsung knew or should have known it was infringing. Rather, Samsung may have believed that any elements of Apple’s designs that it was copying were not protected by the limited scope of the D’087 Patent. Apple’s evidence thus does little to establish that Samsung knew or should have known it was infringing. Accordingly, the Court finds that the jury’s determination that Samsung’s infringement was not willful as a subjective matter is supported by substantial evidence in the record.

As explained above, a finding of willfulness requires both that the jury find subjective willfulness and that the court find objective willfulness. Here, the jury found that there was no subjective willfulness, and the Court agrees that this finding was supported by substantial evidence in the record. Therefore, even if the Court were to find the objective prong satisfied, there can be no ultimate willfulness determination. Accordingly, the Court need not reach the objective analysis.

Apple also moves for judgment as a matter of law that Samsung willfully infringed the D’889 Patent, willfully diluted the unregistered Combination iPhone Trade Dress, and willfully infringed and diluted the unregistered iPad/iPad 2 Trade Dress. See Mot. at 17. The jury did not find infringement or dilution of any of this intellectual property, and the Court has denied Apple’s motion for judgment as a matter law as to infringement and dilution for the reasons explained above. Accordingly, the Court does not reach Apple’s motion for judgment as a matter of law that these alleged acts of infringement and dilution were willful.

Finally, Apple moves for judgment as a matter of law that Samsung Electronics Corp. (SEC) induced infringement of Apple’s patents with respect to the products and patents for which the jury found no infringement.3 See Mot. at 17-18. However, the jury found no infringement, and

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the Court has denied Apple’s motion for judgment as a matter of law on infringement for these products and patents for the reasons explained above. Without infringement, there can be no inducement. Accordingly, Apple’s motion for judgment as a matter of law that SEC induced these nonexistent acts of infringement is DENIED.

E. Validity of Samsung’s Patents

Apple seeks judgment as a matter of law that all five of Samsung’s asserted patents are invalid on grounds of anticipation, obviousness, or both. A patent claim is invalid by reason of anticipation under 35 U.S.C. § 102 “if each and every limitation is found either expressly or inherently in a single prior art reference.” Bristol-Myers Squibb Co. v Ben Venue Laboratories, Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001). Whether a patent is anticipated is a question of fact. Green Edge Enterprises, LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1297 (Fed. Cir. 2010). Anticipation must be shown by clear and convincing evidence. Id. at 1292.

A patent is invalid for obviousness “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). “Obviousness is a question of law based on underlying findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying factual inquiries are: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the art; and (4) any relevant secondary considerations, such as commercial success, long felt but unsolved needs, and the failure of others. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)); Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1332 (Fed. Cir. 2012). Though obviousness is ultimately a question of law for the Court to decide de novo, in evaluating a jury verdict of obviousness, the Court treats with deference the implied findings of fact made by the jury. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1356-57 (Fed. Cir. 2012). “A party seeking to invalidate a patent on the basis of obviousness must demonstrate by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of

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the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Id. at 1360.

1. Claim 10 of U.S. Patent No. 7,456,893 (“the ’893 Patent”)

Apple moves for judgment as a matter of law that claim 10 of the ’893 Patent is invalid. See Mot. at 19-20. Claim 10 claims switching between camera mode and a file displaying mode, such that after switching to the camera mode and back to the file displaying mode, the same image will appear in the file displaying mode that appeared before switching to camera mode. Specifically, claim 10 recites:
a digital image processing apparatus comprising:
an optical system for receiving a light reflected from a subject;
a photoelectric conversion module in optical communication with the optical system for converting the light to image data;
a recording medium for storing the image data in an image file;
a display screen for displaying the image data; and
a controller connected with the photoelectric conversion module, the recording medium and the display screen, the controller being operative in a photographing mode to process the image data for storage in the recording medium and, a stored-image display mode, being operative to control the display screen for displaying a single image relative to the image data,
wherein upon a user performing a mode-switching operation defined by switching from the stored-image display mode to the photographing mode and back to the stored-image display mode the controller causes the display screen to first display a single image file that was most recently displayed before the mode- switching operation, the single image file being different from a most-recently stored image file, and the single image file being first displayed irrespective of a duration that the camera was used in the photographing mode during the mode- switching operation.
’893 Patent, 10:20-47.

The prior art Korean Patent No. 10-2004-0013792 (PX112) discloses switching between two display modes, according to the testimony of Apple expert Dr. Paul Dourish -- an image- display mode, and a file-display mode. Tr. 3206:5-3216:25. After showing an image in the image- display mode, the prior art can switch back to the file-display mode to show either the earliest file, the oldest file, or the most recently displayed file (“bookmarking”), but does not specifically identify which file should be displayed upon switching back to file-display mode.

Regarding anticipation, Apple argues that the Korean Patent discloses every limitation of Claim 10, thus rendering Claim 10 invalid for anticipation. Mot. at 17. However, Claim 10 has at

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least two limitations that are not disclosed in the Korean Patent: a photographing mode, and the requirement of bookmarking specifically to the most recently displayed image. Accordingly, the Court finds that Apple has not shown anticipation by clear and convincing evidence.

Regarding obviousness, the parties dispute: (1) whether the prior art switching between image-display and file-display modes renders it obvious to switch between photographing and stored-image display modes; and (2) whether it would have been obvious to switch back to the last- displayed image, rather than to some other image, after being in photograph mode. Apple argues that the evidence presented renders the patent obvious as a matter of law.

At trial, Apple’s expert, Dr. Dourish, testified that it would have been obvious to switch back specifically to the last-displayed image, because the combination of bookmarking and mode-switching was already developed in the prior art Korean patent. Tr. 3217:1-3219:1. However, Samsung’s expert Dr. Woodward Yang testified that the Korean prior art patent did not disclose mode-switching and bookmarking in the context of photography (Tr. 3666:4-19). Dr. Dourish did not explain why it would be obvious to apply the mode switching and book-marking in the context of photography. Considering this conflicting testimony, the Court finds that Apple has not presented clear and convincing evidence that it would have been obvious to switch between a photographing mode and a stored-image display mode. Furthermore, given that camera users may generally be interested in their most recent photographs, it is not at all obvious that bookmarking specifically to the image file last viewed, rather than the most recently recorded photograph or some other file, would necessarily be a desirable user interface feature in the context of an actual photography mode as claimed by the ’893 Patent. Thus, the Court finds that as a matter of law, Apple has not produced clear and convincing evidence that the claimed invention was obvious in light of the prior art. Accordingly, the Court DENIES Apple’s motion for judgment as a matter of law that Apple proved invalidity of the ’893 Patent by clear and convincing evidence, and DENIES Apple’s motion for a new trial on this basis.

2. Claim 9 of U.S. Patent No. 7,698,711 (“the ’711 Patent”)

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Next, Apple moves for judgment as a matter of law that claim 9 of the ’711 Patent is invalid. See Mot. at 20. Claim 9 of the ’711 Patent claims using applets to play music on a mobile device. Specifically, claim 9 recites:
A multi-tasking apparatus in a pocket-sized mobile communication device including an MP3 playing capability, the multi-tasking apparatus comprising:
a controller for generating a music background play object, wherein the music
background play object includes an application module including at least one applet, for providing an interface for music play by the music background play object, for selecting an MP3 mode in the pocket-sized mobile communication device using the interface, for selecting and playing a music file in the pocket-sized mobile communication device in the MP3 mode, for switching from the MP3 mode to a standby mode while the playing of the music file continues and for selecting and performing at least one function of the pocket-sized mobile communication device from the standby mode while the playing of the music file continues; and
a display unit for displaying an indication that the music file is being played in the standby mode and for continuing to display the indication that the music file is being played while performing the selected function.
’711 Patent, 7:43-8:10.

Apple argues that claim 9 is rendered obvious by: (1) the K700i device (PX125), introduced in 2004, which allegedly discloses all elements except the applet element; and (2) U.S. Patent No. 6,928,948, issued to Wong et al. in 2001 (PX91) (the “Wong Patent”), which discloses using applets with a mobile device. See Mot. at 20. At trial, Apple’s expert Dr. Tony Givargis testified that it would have been obvious to combine the Wong Patent’s use of applets with the K700i, because the advantages of applets in mobile devices as described in the Wong Patent were substantial and well known. Tr. 3244:20-3248:14. Thus, Apple argues, it would have been obvious to one of skill in the art to combine the well-known applet technology from the Wong Patent with the remaining elements disclosed in the K700i device.

The Court does not agree that Apple presented clear and convincing evidence of obviousness for three reasons. First, there was conflicting expert testimony on the question of whether the combination would in fact have been obvious. Samsung’s expert, Dr. Yang, testified that contrary to what Dr. Givargis said, the Wong Patent would not lead an inventor to include an applet in technology like the K700i. Tr. 3667:10-15. The jury could have credited Dr. Yang’s testimony over Dr. Givargis’s. Second, Dr. Givargis did not explain why the K700i did not also

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use the applet technology. The applet technology disclosed by the Wong Patent had been available for three years at the time the K700i was released. If its advantages were as obvious as Dr. Givargis claimed, one might have expected the applet technology to be included in the K700i. The omission of the applet technology from the K700i device thus suggests that the combination was not as obvious as Dr. Givargis claimed. Third, Dr. Givargis’s testimony that there were no secondary indicia of non-obviousness was brief and conclusory: “I did not find anything that would have been, that would have suggested that the claim 9 of the ’711 Patent would have been a commercial success.” See Mot. at 20 (citing Dr. Givargis’s testimony on “secondary considerations” at Tr. 3248:5-14). Moreover, the jury found the ’711 Patent valid, and so implicitly rejected Apple’s claim that there were no secondary indicia of non-obviousness. The Court must defer to this implicit factual finding. See Kinetic Concepts, 688 F.3d at 1356-57.

In sum, when viewed in the context of the record as a whole, Apple’s evidence that claim 9 was obvious is of limited weight. The evidence thus does not rise to the level of clear and convincing evidence. Accordingly, the Court DENIES Apple’s motion for judgment as a matter of law that claim 9 of the ’711 Patent is invalid as obvious, and DENIES Apple’s motion for a new trial on this basis.

3. Claim 1 of U.S. Patent No. 7,577,460 (“the ’460 Patent”)

Next, Apple moves for judgment as a matter of law that claim 1 of the ’460 Patent is invalid. See Mot. at 20. Claim 1, the only claim of the ’460 Patent, claims:
A data transmitting method for a portable composite communication terminal which functions as both a portable phone and a camera, comprising the steps of:

entering a first E-mail transmission sub-mode upon user request for E-mail transmission while operating in a portable phone mode, the first E-mail transmission sub-mode performing a portable phone function;

entering a second E-mail transmission sub-mode upon user request for E-mail transmission while operating in a display sub-mode, the second E-mail transmission sub-mode displaying an image most recently captured in a camera mode;

sequentially displaying other images stored in a memory through the use of scroll keys;

transmitting the address of the other party and a message received through a user interface in the first E-mail transmission sub-mode; and

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transmitting the address of the other party and the message received through the user interface and the image displayed on the display as an E-mail in the second E-mail transmission sub-mode.
’460 Patent, 14:24-44. Apple argues that this claim is invalid as obvious in view of three patents in the prior art: U.S. Patent No. 6,069,648, issued to Suso et al. in 2000 (PX119) (the “Suso Patent”), U.S. Patent No. 6,009,336, issued to Harris et al. in 1999 (PX118) (the “Harris Patent”), and U.S. Patent No. 6,690,417, issued to Yoshida et al. in 2004 (PX120) (“the Yoshida Patent”).

Samsung asserts that one key element was never identified in any of the prior art: the element of “displaying an image” in the body of an email. Apple argues that the Yoshida Patent does disclose this element. See Mot. at 20. However, the passages from the Yoshida Patent cited by Apple merely disclose displaying an image and easily attaching that image file to an email. The Yoshida Patent does not disclose displaying the image in the email. See, e.g., PX120 at 20:35 (“attach an image file”); 17:63-64 (“transfer of image information by use of electronic mail”); 6:38-44 (“send [the image] to a desired party as the electronic mail”). Apple has not presented any evidence that the key element of displaying an image in the body of an email was disclosed anywhere in the prior art. Without prior disclosure of all of the elements in the prior art, the patent cannot be obvious. Thus, the evidence in the record supports the jury’s finding that Apple has not proven invalidity by clear and convincing evidence. Accordingly, the Court DENIES Apple’s motion for judgment as a matter of law that claim 1 of the ’460 Patent is invalid, and DENIES Apple’s motion for a new trial on this basis.

4. U.S. Patent No. 7,447,516 (“the ’516 Patent”)

Apple also moves for judgment as a matter of law that claims 15 and 16 of the ’516 Patent are invalid. Claims 15 and 16 claim an apparatus for data transmission that can reduce power flow through a low-priority data transmission channel (the HARQ channel) without reducing power flow through other higher-priority channels. Claim 15 recites:
An apparatus for transmitting data of a first channel not supporting Hybrid Automatic Repeat reQuest (HARQ) and a second channel supporting the HARQ in a mobile telecommunication system which supports an enhanced uplink service, the apparatus comprising:

a controller for determining transmit power factors for the channels, determining if total transmit power required for transmission of the channels exceeds the

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maximum allowed power, and scaling down the transmit power factor for the second channel if the total transmit power exceeds the maximum allowed power;

first and second channel generators for generating first and second data frames by performing channel-coding and modulation of the first and second channel data; and

a gain scaling unit for adjusting the transmit powers of the first and second channels, with which the data frames of the first and second channels is transmitted, using the scaled transit power factor for the second channel and the transmit power factor for the first channel.

Claim 16 recites:
The apparatus as claimed in claim 15, wherein the controller scales the transmit power factor for the second channel from slot to slot when the total transmit power exceeds the maximum allowed power.
’516 Patent, 21:11-34.

Apple argues that these two claims are invalid as obvious in view of the prior art. Specifically, the prior art listed in the ’516 Patent itself discloses HARQ channels in which power is scaled equally with the power on non-HARQ channels. Tr. 3423:6-3424:19; ’516 Patent at Figs. 4-5. Separately, the Hatta Reference (PX100), a Japanese patent application, discloses unequal channel scaling, but not in the context of HARQ channels. Indeed, the Hatta Reference shows scaling of multiple channels, while the ’516 Patent limits scaling to the single HARQ channel. See PX100, Fig. 5; ’516 Pat., Fig. 6. The question, then, is whether it would have been obvious to combine these two. Apple has not presented clear and convincing evidence that such a combination would have been obvious.

Although Apple’s expert Dr. Hyong Kim testified that applying scaling of some but not all channels to solve the problem solved by the ’516 Patent – the desire to prioritize data transmitted over non-HARQ channels – would be obvious (Tr. 3427:8-20), Samsung’s expert Dr. Tim Williams testified to the contrary (Tr. 3657:3-3658:17). Furthermore, Dr. Kim failed to explain why it would have been obvious to treat the HARQ channel as a separate and lower priority category. Instead, Dr. Kim testified only that:

if you look at the prior art, Figure 5 [of the ’516 Patent], and then the Hatta Patent application, it’s quite obvious. If you think about channels that you have in the 3GPP standard [that allegedly infringes the ’516 Patent], multiple channels you have, you could easily classify the channel with a HARQ and a channel without the

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HARQ. So Hatta teaches us that if you classify differently, you would scale power of those channels differently.
Tr. 3427:11-20. Dr. Kim’s testimony that a HARQ channel could be classified differently does not indicate that it would be obvious to do so, or that it would be obvious to prioritize data transmitted over non-HARQ channels. Dr. Kim also briefly testified that he had not identified any evidence of secondary indicia of non-obviousness, specifically, copying (“No.”); commercial success (“No.”); failed attempts by others to make the invention (“No.”); and praise in the industry (“No.”). Tr. 3430:19-3431:6. Dr. Kim did not describe his investigation methods as to these secondary indicia of non-obviousness. Moreover, the Court, pursuant to Kinetic Concepts, infers from the jury’s ultimate finding of validity that the jury implicitly found this testimony of lack of secondary indicia of non-obviousness unpersuasive. Accordingly, in light of Apple’s failure to present evidence as to why it would be obvious to treat the HARQ channel as low-priority, and the jury’s rejection of Apple’s claim that there were no secondary indicia of non-obviousness, the Court finds that Apple has not established obviousness by clear and convincing evidence. Accordingly, the Court DENIES Apple’s motion for judgment as a matter of law that claims 15 and 16 of the ’516 Patent are invalid, and DENIES Apple’s motion for a new trial on this basis.

5. Claims 10 and 15 of U.S. Patent No. 7,675,941 (“the ’941 Patent”)

Claims 10 and 15 of the ’941 Patent claim a system for data transmission over wireless systems by chopping up data in discrete packets, with headers containing information needed for data reassembly after transmission. Specifically, claim 10 recites:
An apparatus for transmitting data in a mobile communication system, comprising:
a transmission buffer for receiving a service data unit (SDU) from a higher layer,
determining whether the SDU can be comprised in one protocol data unit (PDU) segmenting the SDU into a plurality of segments according to a transmittable PDU size if the SDU does not be comprised in one PDU, and constructing one or more PDUs;
a header inserter for constructing a header of each PDU, wherein the header comprises a serial number (SN) field, a one-bit field, at least one Length Indicator (LI) field;

a one-bit field setter for setting the one-bit field of the at least one PDU to indicate whether the PDU contains an entire SDU in the data field;

an LI inserter for inserting an LI field after the one-bit field in the at least one PDU if the SDU is not comprised in one PDU, and setting an LI field to a predefined value indicating that the PDU contains neither a first segment nor

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a last segment of the SDU to contain the intermediate segment of the SDU;
and
a transmitter for sending the PDUs to a receiver.
’941 Patent, 12:62-13:16. Claim 15 recites:
An apparatus for receiving data in a mobile communication system, comprising: a reception buffer for receiving a protocol data unit (PDU) from a transmitter and storing the PDU;

a reassembly controller for detecting a sequence number (SN) field and a one-bit field indicating whether the PDU contains an entire service data unit (SDU) in its data field from the header, detecting the following length indicator (LI) field from the header of the PDU and determining whether the LI field is set to a predefined value indicating that the PDU contains an intermediate segment that is neither a first segment nor a last segment of the SDU if the one-bit field indicates that the PDU does not contain an entire SDU in its data field;

a header and LI remover for eliminating the SN field, the one-bit field, and the LI field if the one-bit field indicates that the PDU does not contain the entire SDU in its data field,; and

a reassembler for receiving the intermediate segment from the header and LI remover and constructing the SDU by combining the intermediate segment with at least one previous segment extracted from a data field of at least one previous PDU and at least one following segment extracted from a data field of at least one following PDU.

’941 Patent, 13:37-14:22.

Apple argues that these claims are invalid because they are anticipated by a single prior art reference: U.S. Patent No. 6,819,658 (“the Agarwal Patent”). See PX97. Samsung attempts to distinguish the Agarwal Patent based solely upon Dr. Williams’ testimony that the Agarwal Patent occurs in a different context than the ’941 Patent (satellites rather than mobile networks), and that several elements of claims 10 and 15 are missing from the Agarwal Patent “if you look.” Opp’n at 21 (citing Tr. 3658:18-3659:17). The three allegedly missing elements that Dr. Williams identified are: (1) “no one bit field”; (2) “no serial number”; and (3) “no length indicator.” Id.

However, Apple has presented evidence addressing each of these alleged differences. First, as to the satellite versus mobile network context issue, the Agarwal Patent is explicitly addressed to “satellite and wireless” networks. PX97 at [57] (Agarwal abstract). Thus, the plain text of the Agarwal Patent is inconsistent with Samsung’s suggestion that the Agarwal Patent is limited to the satellite context. The Court thus finds that there is no significant difference in contexts.

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As to the three supposedly missing elements, Apple’s expert Dr. Edward Knightly walked the jury through the Agarwal Patent’s Figure 7(B), which accounts for all three missing elements asserted by Dr. Williams. First, Dr. Knightly explained that the Agarwal Patent discloses a “one bit field.” See Tr. 3455:23-3456:3; 3456:22-3457:15; 3458:18-3459:2. The ’941 invention includes the limitation that each packet-header contains a 1-bit field (0 or 1) that indicates whether the packet is a serviceable data unit (SDU) containing a segment of the transmitted data. In the Agarwal Patent, this feature takes the form of the “V” bit – V for “valid,” which indicates whether there is a segment of transmitted data in the packet, and is similarly a one bit field. See PX97, 10:25-32 (explaining the V bit in Fig. 7B). Thus, the Court finds that the “one bit field” limitation of the ’941 Patent allegedly missing from the Agarwal Patent is, in fact, disclosed in the Agarwal Patent.

Second, Dr. Knightly explained that the Agarwal Patent discloses a sequence number. See Tr. 3456:17-21; 3458:18-22. The ’941 Patent includes the limitation that packet headers include a sequence number for each packet. In Figure 7(B) of the Agarwal Patent, this is disclosed as the “PKTSEQNO” – the PacKeT SEQuence NO. (packet sequence number) – i.e. the sequence number for each specific packet of data. See PX97, 10:12-14; 10:33-37 (explaining the packet sequence number in Fig. 7B). Thus, contrary to Dr. Williams’s suggestion, the Agarwal Patent does disclose the sequence number limitation in the ’941 Patent.

Third, Dr. Knightly explained that the Agarwal Patent includes a length indicator. See Tr. 3456:4-16; 3459:3-6. The ’941 Patent includes the limitation of a length indicator that shows whether the segment is the first data segment, the last data segment, or an intermediate segment. The packet header in Figure 7(B) of the Agarwal Patent discloses this limitation as the adjacent F/L fields – first / last, in which 1 0 would indicate the first segment, 0 0 an intermediate segment, and 0 1 would indicate the last segment. See PX97, 10:15; 10:18-20 (explaining the F and L fields in Fig. 7B). The adjacent F/L fields are thus exactly the type of length indicator included in the ’941 Patent. Therefore, Dr. Williams’s statement to the contrary notwithstanding, the Agarwal Patent discloses the length indicator limitation of the ’941 Patent. There is no dispute that the remaining elements of these claims are disclosed by the Agarwal Patent.

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“To anticipate, a single reference must teach every limitation of the claimed invention.” MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). Each of the three allegedly missing elements identified by Dr. Williams is in fact disclosed by Figure 7B of the Agarwal Patent. Moreover, at the hearing on December 6, 2012, Samsung conceded that it had no evidence other than Dr. Williams’s testimony that the Agarwal Patent did not anticipate the ’941 Patent, and did not argue that any additional limitations were missing from the Agarwal Patent. See Dec. 6 Tr. 66:18-67:6. Dr. Williams’s trial testimony, on which Samsung relies, was brief and conclusory, covering just over one page of transcript, and did not offer any response to any of Apple’s arguments. Tr. at 3658:18-3659:21. In short, Apple has clearly identified where each of the allegedly missing elements is disclosed in a single prior art reference, as is required for anticipation, and Samsung has failed to respond to these arguments. The Court finds that Apple has established anticipation by clear and convincing evidence. Accordingly, the Court GRANTS Apple’s motion for judgment as a matter of law that claims 10 and 15 of the ’941 Patent are invalid.4

F. Breach of Contract and Antitrust

Finally, Apple argues that Apple is entitled to judgment as a matter of law that Samsung breached the European Telecommunications Standards Institute’s (“ETSI’s”) Intellectual Property Rights (“IPR”) Policy, and that in so doing, Samsung violated section 2 of the Sherman Act.

Electronics companies often work together to create and adopt technical standards in order to make products that will be able to work together, despite being made by different manufacturers. The Universal Mobile Telecommunications System (“UMTS”) is a technical standard pertaining to cellular phone technology. Several organizations participated in the development of the UMTS, including ETSI. Apple and Samsung are both members of ETSI. ETSI has a set of policies concerning the IPRs of its members, including when and how they must be disclosed during the standard-setting process, and what sorts of terms ETSI members must offer for licenses of their

26

IPRs that are necessarily infringed by practicing the standards (so-called “essential IPRs”). IPRs include patents and patent applications.

In 2005, during the process of designing and finalizing specifications for inclusion in the UMTS, Samsung submitted two technical proposals to ETSI, seeking specific changes to draft specifications that would become part of the standard. See PX72 (report of working group discussing a Samsung proposal); PX70 (same); PX84 (ETSI document showing formal adoption of specifications including Samsung’s proposals). These two proposals involved the incorporation of new technologies: one corresponding to what became the ’941 Patent, and the other corresponding to what became the ’516 Patent. After components of the UMTS incorporating Samsung’s two proposals were formally adopted, Samsung declared several patents, including the ’941 and ’516 Patents, “essential” to the UMTS, meaning that Samsung believed it would be impossible to comply with the standard without infringing the patents. See PX122 (ETSI database showing Samsung’s declarations). Samsung also made both general and patent-specific declarations that it was prepared to license these and other standards-essential patents on fair, reasonable, and non-discriminatory (“FRAND”) terms. See PX122.1 (December 14, 1998 general declaration); PX122.41 (August 9, 2007 ’941 declaration); PX122.24 (May 19, 2006 ’516 declaration).

The parties do not dispute that the ’941 Patent claims priority to a Korean patent application which was filed shortly before Samsung’s submission of the proposal incorporating that technology, and that the ’516 Patent claims priority to several Korean patent applications, one of which was filed shortly before Samsung’s submission of a proposal incorporating the ’516 technology. In other words, Samsung had filed patent applications in Korea, which correspond to the two U.S. patents at issue here, covering the technology it sought to work into the standard before submitting its proposals to ETSI.

On June 30, 2011, Samsung filed its counterclaims against Apple in this case, alleging violation of a range of Samsung patents. ECF No. 80. Samsung’s primary argument for infringement of the two patents at issue here was that Apple’s products that comply with the UMTS necessarily infringe the ’516 and ’941 Patents. See Tr. 437:19-438:9 (Samsung’s opening

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statement regarding the ’516 Patent); id. at 440:14-19 (same regarding ’941 Patent). In July of 2011, Samsung offered Apple a license to its portfolio of declared-essential patents, consisting of some 86 patents including the two at issue here, seeking a royalty of 2.4% of the selling price of each Apple product. See Tr. 3145:1-16; PX80 (license offer).

1. Breach of Contract

The jury found that Samsung was not liable to Apple for breach of the ETSI IPR policy. Apple now moves for judgment as a matter of law that Samsung is liable for breach of contract for two reasons: (1) Samsung’s violations of the ETSI IPR Policy’s disclosure requirement; and (2) Samsung’s violations of the ETSI FRAND licensing requirement. Apple also moves in the alternative for a new trial on these bases.

Regarding the disclosure requirement, the ETSI IPR Policy requires ETSI members such as Samsung to timely disclose potentially essential IPRs on a good faith (“bona fide”) basis. PX74, Annex 6, Article 4. There are serious questions about whether Samsung fulfilled its good faith disclosure obligations under the ETSI IPR Policy when Samsung failed to disclose Samsung’s Korean patent applications before the inventions were incorporated into the UMTS standard. However, the Court need not decide whether Samsung actually breached a contractual obligation. As this Court instructed the jury, to recover for breach of contract, there must be not only a breach, but also a causal link between the breach and the alleged harm. See Final Jury Instruction No. 75. Apple has not provided sufficient evidence of this required causal link to disturb the jury’s finding of no liability for breach of contract.

Apple alleges that the causal link between Samsung’s conduct and harm to Apple is that ETSI “may not have” adopted the standard it chose if Samsung had disclosed the disputed IPR (Korean Patent applications), but instead may have adopted some other standard. See Tr. 3579:2-6 (testimony of Apple’s expert Janusz Ordover). The hypothetical alternative standard would not have required standard-users to infringe Samsung’s IPR, and thus there would have been no risk of infringement, and Apple would not have been forced to defend this infringement action.

However, Apple’s evidence of causation consists of the testimony of three experts, Dr. Ordover, Dr. Kim, and Dr. Knightly, and is not strong. Dr. Ordover said only that Samsung’s non-

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disclosure “led to a choice of technology that may not have been chosen but for [Samsung’s] conduct.” Tr. at 3579:4-6. Dr. Ordover’s conclusory testimony relied on Dr. Kim’s testimony that alternatives to the ’516 technology were considered, and Dr. Knightly’s testimony that alternatives to the ’941 technology existed at the time the UMTS was adopted. Tr. 3432:2-15 (Kim); Tr. 3460:20-23 (Knightly). However, Dr. Kim failed to address the advantages or disadvantages of the alternative technologies. Thus, Dr. Kim’s testimony does not show that these alternative technologies would likely have been chosen but for Samsung’s non-disclosure – only that there was an abstract possibility that ETSI could have chosen something different.

Dr. Knightly similarly failed to establish causation. He first testified that the Agarwal Patent provides an alternative to the ’941 technology. See Tr. 3460:20-23. However, Dr. Knightly did not testify as to what alternative technology the Agarwal Patent discloses. See id. Indeed, the Agarwal Patent is the reference that Dr. Knightly argued, and this Court has ruled, anticipates the ’941 Patent, meaning that it discloses the same technology as the ’941 Patent, rather than some alternative technology. Though some other part of the Agarwal Patent could theoretically disclose an alternative technology in addition to the technology that anticipates the ’941 Patent, Dr. Knightly did not identify any such alternative in the Agarwal Patent. His reliance on the Agarwal Patent thus fails to establish that there was an available alternative. Dr. Knightly also testified that one alternative available at the time of standard-setting – “the original e-bit” – existed in the market at the time of standard-setting. Tr. 3460:24-3461:17. But this testimony, like Dr. Kim’s testimony, fails to address whether there are any advantages to one alternative or the other, and thus whether there was a realistic possibility of the adoption of the alternative over the ’941 technology.

In sum, Apple’s evidence in support of its argument that ETSI would likely have adopted an alternative standard had ETSI known of Samsung’s IPR is sufficiently equivocal that the jury could reasonably have found that the causation element was not satisfied. This conclusion was not against the clear weight of the evidence. Accordingly, the record is consistent with the jury’s finding that there was no breach of contract due to the ETSI disclosure provisions.

Apple has also failed to establish that the jury was wrong as a matter of law to find that Samsung did not breach the ETSI policy by its conduct relating to FRAND obligations. Whether

29

Samsung violated its FRAND licensing obligations is a question of fact. The jury heard conflicting expert testimony as to whether Samsung’s offer to license Apple Samsung’s entire declared- essential patent portfolio at a 2.4% royalty rate met Samsung’s FRAND licensing obligations. Compare testimony of Samsung’s expert David Teece, Tr. 3145:1-3146:23 (FRAND) with testimony of Apple’s expert Richard Donaldson, Tr. 3537:12-3538:6; 3539:6-20 (not FRAND). Dr. Teece’s testimony represents substantial evidence in the record in support of the jury’s finding that Samsung did not violate its FRAND licensing obligation under the ETSI IPR Policy. Further, given the conflicting nature of the testimony, the jury’s finding was not against the clear weight of the evidence. Thus, the Court DENIES Apple’s motion for judgment as a matter law that Samsung is liable to Apple for breach of contract, and DENIES Apple’s motion for a new trial on this basis.

2. Antitrust

The jury found that Samsung did not violate section 2 of the Sherman Act. The jury was instructed that the elements of the violation are: (1) that the alleged market is a relevant antitrust market; (2) that Samsung possessed monopoly power in that market; (3) that Samsung “willfully” acquired its monopoly power in that market by engaging in anticompetitive conduct; (4) that Samsung’s conduct occurred in or affected interstate commerce; and (5) that Apple was injured in its business or property because of Samsung’s anticompetitive conduct. See Final Jury Instruction No. 77. Apple has moved for judgment that Samsung violated the Sherman Act as a matter of law, meaning that the only reasonable conclusion the jury could have drawn from the evidence was that all five elements were met. Failure to establish any one of these five elements would justify the jury’s finding of no liability.

Apple’s allegations of anticompetitive conduct concern the same behavior that gave rise to the failed breach of contract claim: breach of the disclosure policy, and failure to comply with FRAND obligations. See Mot. at 25-26. Regarding the disclosure policy, Sherman Act liability, requires that Samsung’s conduct have caused Apple harm. However, as explained above, Apple’s evidence that any breach of the disclosure policy by Samsung caused any harm suffered by Apple is not sufficiently strong to require the jury to find for Apple. Thus, for the reasons explained above in the context of breach of contract, the Court will not upset the jury’s determination that

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there can be no Sherman Act liability for Samsung’s alleged failure to abide by ETSI’s IPR disclosure policy.

Regarding FRAND obligations, Samsung’s licensing behavior could only give rise to Sherman Act liability if it constituted anticompetitive behavior. However, the jury, as discussed above, implicitly found that the conflicting testimony had not established that Samsung had failed to meet its FRAND obligations. In so finding, the jury could also reasonably have found that Samsung’s licensing behavior was not anticompetitive, and thus did not meet the third requirement for Sherman Act liability. Accordingly, the Court DENIES Apple’s motion for judgment as a matter of law that Samsung violated section 2 of the Sherman Act, and DENIES Apple’s motion in the alternative for a new trial.

3. CONCLUSION

For the reasons discussed above, the Court:

(1) GRANTS Apple’s motion for judgment as a matter of law that claims 10 and 15 of the ’941 Patent are invalid;

(2) DENIES Apple’s motion for judgment as a matter of law that Apple’s unregistered iPad/iPad 2 trade dress is protectable, infringed, and diluted;

(3) DENIES Apple’s motion for judgment as a matter of law that the Galaxy Tab 10.1 infringes the D’889 Patent;

(4) DENIES Apple’s motion for judgment as a matter of law that all accused Samsung phones infringe or dilute all Apple’s intellectual property as asserted, and that all acts of infringement or dilution by accused Samsung phones and tablets were willful and induced by SEC;

(5) DENIES Apple’s motion for judgment as a matter of law that the ’893, ’711, ’460, and ’516 Patents are invalid; and

(6) DENIES Apple’s motion for judgment as a matter of law that Samsung is liable to Apple for breach of contract and antitrust violations stemming from breach of the ETSI IPR Policy.

IT IS SO ORDERED.

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Dated: January 29, 2013

[signature]
LUCY H. KOH
United States District Judge

____________
1 Apple has also moved for an amended judgment to award additional damages, and for prejudgment interest. These claims will be addressed in a separate order.

2 Samsung argues that the admitted model for the D’889 Patent has a shiny back, but this fact did not obligate Apple to claim that shiny back as an element of the D’889 design patent.

3 For the products and patents on which the jury did find infringement, the jury also uniformly found inducement. Regarding the ’915 Patent, Apple’s present motion concerns the Intercept and Replenish phones. Regarding the ’163 patent, Apple’s present motion concerns the Captivate Continuum, Gem, Indulge, Intercept, Nexus S 4G, Transform, and Vibrant phones.

4 As the jury found that these claims were not infringed, this ruling does not affect the overall outcome of this case.

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Here's 2220, Order Granting in Part and Denying in Part Samsung's Motion for Judgment as a Matter of Law:

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

APPLE, INC., a California corporation,

Plaintiff,

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.

_________________

Case No.: 11-CV-01846-LHK
ORDER GRANTING IN PART AND
DENYING IN PART MOTION FOR
JUDGMENT AS A MATTER OF LAW

_______________

On August 24, 2012, after a thirteen day trial and approximately three full days of deliberation, a jury in this patent case reached a verdict. See ECF No. 1931. Samsung now seeks judgment as a matter of law to overturn certain of the jury’s findings. In the alternative, Samsung moves for a new trial. See Samsung’s Motion for Judgment as a Matter of Law, New Trial And/Or Remittitur Pursuant to Federal Rules of Civil Procedure 50 and 59 (“Mot.”), ECF No. 2013. Apple filed an opposition (“Opp’n”), ECF No. 2050, and Samsung filed a Reply (“Reply”), ECF No. 2131. For the reasons discussed below, the Court GRANTS Samsung’s motion for judgment as a matter of law that claims 15 and 16 of Samsung’s U.S. Patent No. 7,447,516 (“the ’516 Patent”) are not exhausted. The Court also GRANTS judgment as a matter of law that Samsung’s acts of patent infringement were not willful. However, for the reasons discussed below, the Court

1

DENIES Samsung’s motion for judgment as a matter of law in all other respects, and DENIES Samsung’s motion for a new trial.1

I. LEGAL STANDARD

Federal Rule of Civil Procedure 50 permits a district court to grant judgment as a matter of law “when the evidence permits only one reasonable conclusion and the conclusion is contrary to that reached by the jury.” Ostad v. Oregon Health Scis. Univ., 327 F.3d 876, 881 (9th Cir. 2003). A party seeking judgment as a matter of law after a jury verdict must show that the verdict is not supported by “substantial evidence,” meaning “relevant evidence that a reasonable mind would accept as adequate to support a conclusion.”

Callicrate v. Wadsworth Mfg., 427 F.3d 1361, 1366 (Fed. Cir. 2005) (citing Gillette v. Delmore, 979 F.2d 1342, 1346 (9th Cir.1992)).

A new trial is appropriate under Rule 59 “only if the jury verdict is contrary to the clear weight of the evidence.” DSPT Int’l, Inc. v. Nahum, 624 F. 3d 1213, 1218 (9th Cir. 2010). A court should grant a new trial where necessary “to prevent a miscarriage of justice.” Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007).

II. ANALYSIS

A. The Jury Reasonably Found Apple’s Design Patents to be Valid and Infringed

1. Infringement

Samsung moves for judgment as a matter of law that Samsung’s accused devices do not infringe U.S. Patent No. D593,087 (“the D’087 Patent”), U.S. Patent No. D618,677 (“the D’677 Patent”), and U.S. Patent No. D604,305 (“the D’305 Patent”). See Mot. at 4-7. In the alternative, Samsung moves for a new trial on infringement of Apple’s design patents. Id.

Samsung argues that there is no evidence to support the jury’s findings of design patent infringement. Samsung cites evidence that would have supported a jury finding of non- infringement. Specifically, Samsung points to evidence of similarities between Apple’s design patents and the prior art that might limit the scope of the design patents, thus rendering Samsung’s

2

designs outside of the scope of Apple’s patents. See Mot. at 5-7. However, other evidence in the record supports the jury’s finding of infringement. Specifically, the jury was presented with the design patents, accused devices, and prior art, and was appropriately instructed on the “substantially the same” standard for infringement and the role of prior art in analyzing design patent infringement. See Final Jury Instruction No. 46. Furthermore, the jury heard expert testimony supporting the conclusion that Samsung devices infringed Apple’s design patents. See Tr. 1049:6-1064:11 (Apple design expert Peter Bressler’s testimony on substantial similarity between Samsung’s accused phones and the D’087 and D’677 Patents); Tr. 1371:18-1381:23 (Apple design expert Dr. Susan Kare’s testimony on substantial similarity between Samsung’s accused phones and the D’305 Patent). The phones themselves, along with the expert testimony, constitute substantial evidence in the record to support the jury’s finding of infringement. Given this evidence, the jury’s conclusion of infringement was not against the clear weight of the evidence.

Samsung also argues that the Court inappropriately failed to instruct the jury to factor out functional design elements. As a preliminary matter, Samsung raised this objection during the briefing on the final jury instructions, and therefore this argument is not waived. See Reply at 6, n. 7. However, a “filtering” instruction of the type Samsung requested is not required. The Federal Circuit has explained that a court may aid a jury in determining design patent infringement by construing the claims, see Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679-80 (Fed. Cir. 2008) (en banc), and that claim construction may, but need not, include listing functional elements that should be factored out of the claimed design. See Richardson v. Stanley Works, Inc., 597 F. 3d 1288, 1293-94 (Fed. Cir. 2010) (construing a design patent by factoring out functional elements in the context of a bench trial). However, claim construction is a matter of law for the Court. The cases do not suggest that this type of claim construction is appropriate when instructing a jury. The cases engaging in such explicit filtering analysis generally do so in contexts in which a court then rules directly on infringement, such as summary judgment or a bench trial. See, e.g., Richardson, 597 F.3d 1288 (bench trial). Indeed, Egyptian Goddess warns of the risks of providing an element- by-element construction to a jury, as such instruction could divert the jury’s attention from “the

3

design as a whole.” Id.; see also 543 F.3d at 680. Moreover, the Court determined in considering Samsung’s request for a jury instruction that Samsung had not shown that the allegedly functional design elements were actually functional under the Federal Circuit’s “dictated by function” standard, particularly in light of Apple’s evidence that alternative designs existed. See Richardson, 597 F.3d at 1294 (applying the “dictated by function” standard during design patent claim construction). See also PX163-168 (alternative designs created by Apple); PX10, PX148, PX150, PX2277, PX2278 (alternative designs created by third parties).

In sum, the Court appropriately instructed the jury, and there is substantial evidence in the record to support the jury’s ultimate finding of infringement of the D’087, D’677, and D’305 Patents. Moreover, the jury’s verdict was not against the clear weight of the evidence. Accordingly, the Court DENIES Samsung’s motion for judgment as a matter of law that none of Samsung’s accused phones infringe Apple’s design patents, and DENIES Samsung’s motion in the alternative for a new trial.

2. Invalidity

Samsung also moves for judgment as a matter of law that Apple’s D’087, D’677, and D’305, Patents, as well as U.S. Patent No. D504,889 (“the D’889 Patent”) are invalid, or in the alternative for a new trial. See Mot. at 7-8. Samsung argues that no reasonable jury could have found Apple’s design patents valid.

a. Functionality

First, Samsung argues that the patents are invalid because the patented designs are functional. It was Samsung’s burden at trial to establish invalidity by clear and convincing evidence. Samsung points to expert testimony identifying some allegedly functional elements of the designs. However, invalidity requires not just some functional elements, but that the overall design is “primarily functional.” See PHG Techs. v. St. John Companies, Inc., 469 F. 3d 1361, 1366 (Fed. Cir. 2006). A design is primarily functional if “the appearance of the claimed design is ‘dictated by’ the use or purpose of the article.” Id. (quoting L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F. 2d 1117, 1123 (Fed. Cir. 1993)). Expert testimony of the type Samsung identifies, stating that individual design elements confer specific functional benefits (e.g., that round corners

4

“help you move things in and out of your pocket,” Tr. 680:9-15), does not constitute clear and convincing evidence that the overall patented designs are dictated by function. Samsung has not identified any other evidence of functionality directed at the designs as a whole. Accordingly, the Court cannot say that the jury’s finding that Samsung had not met its burden to establish functionality was unsupported by substantial evidence, or was against the clear weight of the evidence. Samsung’s motion for judgment as a matter of law or a new trial on the question of design patent functionality is DENIED.

b. D’677 and D’087 Obviousness

Second, Samsung argues that the D’677 and D’087 Patents are invalid for obviousness. 2 “Because obviousness is a mixed question of law and fact, we first presume that the jury resolved the underlying factual disputes in favor of the verdict and leave those presumed findings undisturbed if they are supported by substantial evidence.” Kinetic Concepts, 688 F.3d at 1357. The factual inquiries underlying the obviousness inquiry are: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the art; and (4) any relevant secondary considerations, such as commercial success, long felt but unsolved needs, and the failure of others. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)); Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1332 (Fed. Cir. 2012). “Then we examine the ultimate legal conclusion of obviousness de novo to see whether it is correct in light of the presumed jury fact findings.” Kinetic Concepts, 688 F.3d at 1357. The jury found the D’688 and D’087 Patents valid. Thus, the Court will first examine whether substantial evidence supported the jury’s underlying factual conclusions that there was a significant gap between the prior art and the patents, and that there were persuasive secondary indicia of non-obviousness.

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In addressing a claim of obviousness in a design patent, “the ultimate inquiry. . . is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009) (quoting Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed.Cir.1996)). “To determine whether ‘one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design,’ the finder of fact must employ a two-step process.” Apple, Inc. v. Samsung Electronics Co., Ltd., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (quoting Titan Tire, 566 F.3d at 1381). “First, ‘one must find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design.’” Id. at 1329 (quoting Durling, 101 F.3d at 103). “Second, ‘other references may be used to modify [the primary reference] to create a design that has the same overall visual appearance as the claimed design.’” Id. “However, the ‘secondary references may only be used to modify the primary reference if they are so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other.’” Id. at 1329-30 (quoting Durling, 101 F.3d at 103).

To support Samsung’s claim that the D’677 and D’087 Patents are obvious, Samsung cites expert Itay Sherman’s testimony that these patents are obvious over two Japanese patents, a Korean patent (K’547), and the LG Prada, individually or in combination. Mr. Sherman’s expert testimony consisted of identification of similarities between the prior art and the D’677 and D’087 Patents, followed by a bare assertion that a designer of ordinary skill would have found it obvious to combine the identified prior art to create the D’677 and D’087 Patents. See, e.g., Tr. 2595:7-22 (Sherman testimony that it would have been obvious to combine the two Japanese patents to create the D’087 Patent). However, Mr. Sherman acknowledged that some differences between the prior art and the D’677 and D’087 exist. For example, Mr. Sherman admitted that one of the Japanese patents, JP’638, has a curved front face rather than a flat front face. See Tr. 2582:5-7. Other differences are apparent from the evidence, although Mr. Sherman did not specifically acknowledge them in his testimony. For example, the Korean patent K’547 discloses a screen that is much smaller in comparison to the overall front face than the screen in the D’677 and D’087

6

Patents, particularly in the shorter dimension. See DX727.002 (K’547 disclosure of the front face). Thus, there was substantial evidence in the record to support the jury’s implicit factual finding that there existed a significant gap between any primary reference in the prior art and the D’677 and D’087 Patents. As Samsung bears the burden on this issue, the Court cannot say that the jury’s implied finding that these gaps were significant was not supported by the record.

Furthermore, Apple cites substantial evidence in the record of objective indicia of non-obviousness, including design awards, other accolades, and alleged copying by Samsung. See Opp’n at 7 (citing Tr. 508:4-509:4 (testimony on design awards); PX135.1 (“iPhone is pretty” was top reason for invention of the year award); PX44.122, .PX44.127, and .PX44.131 (evidence of Samsung copying)). Pursuant to Kinetic Concepts, the Court understands that in reaching the ultimate legal conclusion of non-obviousness, the jury made implied findings of fact accepting this evidence of secondary indicia of non-obviousness. The Court finds that the jury’s implied finding that secondary indicia support non-obviousness is supported by substantial evidence in the record.

In light of these factual findings, the Court must now consider whether, as a matter of law, it would have been obvious to a designer of ordinary skill in the art to bridge the significant gap the jury implicitly found. The Court notes that Mr. Sherman did not identify the required primary and secondary reference. See Tr. 2580:5-2586:7; 2588:4-2589:22 (Mr. Sherman’s testimony about prior art). Nor did he attempt to explain why it would have been obvious for a designer of ordinary skill to take whichever of these prior art designs might have been a primary reference and combine it with the relevant element of a secondary reference or otherwise modify it to arrive at the patented designs. Instead, Samsung offers only the bare ipse dixit of Mr. Sherman, who is not himself an industrial designer, that it would have been obvious for an ordinary designer to bridge the gaps between various pieces of prior art and the patents. This testimony does not satisfy the Federal Circuit’s articulated requirements for obviousness in design patents. See Apple, 678 F.3d at 1329- 20. Samsung did not present any other testimony on obviousness for these two design patents. Thus, the Court finds no persuasive evidence of obviousness in the record.

In sum, the jury’s implied factual findings of a significant gap and indicia of non-obviousness are supported by substantial evidence in the record. In light of the gaps between the

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prior art and the D’677 and D’087 Patents, the secondary indicia of non-obviousness, and the lack of evidence about a secondary reference or how the identified gap might be bridged, the Court finds that the D’677 and D’087 are not invalid for obviousness.

c. D’889 Obviousness

Third, Samsung moves for judgment as a matter of law that the D’889 Patent is obvious over two prior art references: the Fidler tablet and TC1000 tablet. The Federal Circuit previously ruled that “the Fidler reference, with or without the TC1000, cannot serve to render the D’889 patent invalid for obviousness” because its similarity to the claimed design is at “too high a level of abstraction.” Apple, 678 F.3d at 1332. Thus, the Federal Circuit ruled that neither the Fidler tablet nor the TC1000 tablet was an appropriate primary reference. See id. Although the Federal Circuit’s ruling at the preliminary injunction stage does not necessarily preclude a finding of obviousness in light of additional evidence presented at trial, the jury agreed with the Federal Circuit and concluded that the D’889 Patent was not obvious. This Court now considers whether the factual record could support the jury’s conclusion.

In reaching its finding that the D’889 Patent was valid, the jury made implicit findings of fact about the scope of the prior art. In particular, there was significant evidence before the jury that these two prior art references and the D’889 patent differ in several respects, including the Fidler tablet’s curved front face, and the Fidler tablet’s inclusion of a screen frame that is asymmetric and not flush with the screen. The TC1000 is more different still. Kinetic Concepts requires this Court to credit the jury’s implicit finding that these gaps are significant. In light of these implicit findings of fact, supported by the record and in accord with the Federal Circuit’s reasoning in Apple, 678 F.3d 1314, neither the Fidler tablet, nor the still more divergent TC1000, can serve as a primary reference for obviousness. Accordingly, the Court finds that as a matter of law, the Fidler tablet and the TC1000 do not render the D’889 Patent obvious, and the Court DENIES Samsung’s corresponding motion for judgment as a matter of law or a new trial.

d. D’677 Double Patenting

Fourth, Samsung argues that the D’677 Patent is invalid for double-patenting over the D’087 Patent. 35 U.S.C. § 101 states that an inventor may obtain “a patent” for an invention.

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Accordingly, the statute “permits only one patent to be obtained for a single invention.” Boehringer Ingelheim Intern. GmbH v. Barr Labs., Inc., 592 F.3d 1340, 1346 (Fed. Cir. 2010) (quoting In re Lonardo, 119 F.3d 960, 965 (Fed. Cir. 1997)). However, § 101 “only prohibits a second patent on subject matter identical to an earlier patent.” Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1377 (Fed. Cir. 2003). Accordingly, courts developed the doctrine of obviousness-type double patenting to “prevent the extension of the term of a patent . . . by prohibiting the issuance of the claims in a second patent not patentably distinct from the claims of the first patent.” Boehringer Ingelheim, 592 F.3d at 1346 (quoting In re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985)).

The Federal Circuit has explained that “a patentee may [assure the validity of a patent by filing] a disclaimer after issuance of the challenged patent or during litigation, [and] even after a finding that the challenged patent is invalid for obviousness-type double patenting.” See Boehringer Ingelheim, 592 F.3d at 1347 (citing Perricone v. Medicis Pharmaceutical Corp., 432 F. 3d 1368, 1975 (2005)). Apple has now filed a terminal disclaimer with the P.T.O., limiting the term of the D’677 Patent to the duration of the earlier-expiring D’087 Patent. See ECF No. 2162. Accordingly, under Boehringer, Apple has assured the validity of the D’677 Patent as against Samsung’s claim of double patenting over the D’087 Patent. For this reason, Samsung’s motion for judgment as a matter of law that the D’677 Patent is invalid on the basis of double patenting is DENIED.

B. Apple’s Registered iPhone Trade Dress and Unregistered iPhone 3G Trade
Dress are Protectable and Diluted

Samsung moves for judgment as a matter of law that Apple’s registered iPhone Trade Dress and unregistered iPhone 3G Trade Dress are not protectable and not diluted. See Mot. at 8-12. In the alternative, Samsung moves for a new trial on trade dress. Id.

1. Functionality

Samsung argues that Apple’s registered iPhone Trade Dress and unregistered iPhone 3G Trade Dress are not protectable because they are functional. As a preliminary matter, Apple’s registered iPhone Trade Dress is presumed valid, and therefore non-functional, while Apple’s

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unregistered iPhone 3G Trade Dress is presumed functional. See 15 U.S.C.A. § 1125; Final Jury Instruction No. 62.

There are two types of functionality: utilitarian functionality and aesthetic functionality. See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33 (2001). A finding of either type of functionality would defeat protectability. Under the traditional, utilitarian functionality test, a trade dress is functional “when it is essential to the use or purpose of the device or when it affects the cost or quality of the device.” Id. In applying this test, the Ninth Circuit assesses four factors: “(1) whether advertising touts the utilitarian advantages of the design, (2) whether the particular design results from a comparatively simple or inexpensive method of manufacture, (3) whether the design yields a utilitarian advantage and (4) whether alternative designs are available.” Talking Rain Beverage Co. v. South Beach Beverage Co., 349 F.3d 601, 603 (9th Cir. 2003) (citing Disc Golf Ass’n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998)); see also Au-Tomotive Gold, Inc., v. Volkswagen of America, 457 F.3d 1062, 1072 n.8 (9th Cir. 2006) (acknowledging the four factor test applied by the Ninth Circuit).

Samsung argues that the record lacks substantial evidence to support the jury’s findings that: (1) Apple had established nonfunctionality for its unregistered iPhone 3G trade dress; and (2) that Samsung had not proven functionality for Apple’s registered iPhone trade dress.3 Apple cites evidence disputing utilitarian functionality under all four Disc Golf factors. As to the first factor, “whether advertising touts the utilitarian advantages of the design,” Apple cites Apple executive Phil Schiller’s testimony that Apple’s advertising used a “product as hero” pitch that does not tout design utility. See Opp’n. at 8 (citing Tr. 654:24-655:1). As to the second factor, “whether design results from a comparatively simple or inexpensive method of manufacture,” Apple cites the testimony of Apple design executive Christopher Stringer that Apple encountered difficulties in manufacturing iPhones, suggesting that the designs were not especially simple to manufacture. See Mot. at 8 (citing Tr. 494:15-495:21). As to the third factor, whether the design yields utilitarian

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advantage, Apple cites Mr. Stringer’s testimony that the iPhone design was selected from among alternative designs because “[i]t was the most beautiful” rather than for some functional purpose. See Opp’n. at 8 (citing Tr. 493:14-15). As to the fourth factor, Apple cites actual alternative phone body designs (see Opp’n. at 8 (citing PX10)), and the testimony of Apple’s expert Susan Kare on alternative phone screen designs. See Opp’n. at 8 (citing Tr. 1400:6-1401:1). This body of evidence is sufficient to support a jury’s finding that Apple had proven utilitarian nonfunctionality for its unregistered iPhone 3G trade dress and that Samsung had not proven utilitarian functionality for Apple’s registered iPhone trade dress.

Furthermore, there is substantial evidence to support the jury’s finding of protectiblity because the asserted iPhone Trade Dresses lack “aesthetic functionality.” See Au-Tomotive Gold, 457 F.3d at 1072. A trade dress has aesthetic functionality only if limiting competitors’ use of the trade dress would impose a “significant non-reputation-related competitive disadvantage.” See id. (citing TrafFix, 532 U.S. at 33). The Supreme Court in TrafFix explained that such significant disadvantage arises where there is a “competitive necessity” to infringe or dilute. 532 U.S. at 32-33.

Samsung argues that Apple admitted aesthetic functionality when Apple witnesses testified that the beauty of the iPhone is a factor in its success. See Mot. at 9 (citing testimony of Apple design executive Mr. Stringer, Tr. 484:1-11; Apple executive Mr. Schiller, Tr. 602:8-19; 625:4- 626:4; 635:24-636:5; and 721:3-7). However, Samsung elsewhere identifies evidence that few consumers are primarily motivated by design considerations such as aesthetics. See, e.g., Mot. at 19 (citing DX592.023; PX69.43 (surveys showing that only between 1% and 5% of purchasers are motivated by phone design and appearance). Samsung cannot credibly argue that consumers are not motivated by aesthetics in hoping to avoid an injunction or damages award, and simultaneously argue that aesthetics are a significant motivator in hopes of invalidating Apple’s trade dress. Although, as Samsung points out, the evidence in the record shows that some fraction of consumers may be motivated in some part by smartphone design and aesthetics, on balance, the evidence introduced by both Apple and Samsung concerning the limited role of aesthetics in purchasing decisions is sufficient to support the jury’s implicit finding that Samsung did not need

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to infringe Apple’s trade dress in order to compete with the iPhone, as would be required for a finding of aesthetic functionality. See TrafFix, 532 U.S. at 32-33.

Accordingly, the Court finds that there is substantial evidence in the record to support the jury’s findings that: (1) Apple rebutted the presumption that the unregistered iPhone 3G Trade Dress is functional, and (2) Samsung failed to rebut the presumption that the registered iPhone Trade Dress is non-functional. Samsung’s motion for a new trial or judgment as a matter of law that Apple’s trade dresses are invalid for functionality is DENIED.

2. Secondary Meaning and Fame

To be protectable, a trade dress must have secondary meaning such that the purchasing public associates the trade dress with a particular source. See Clamp Mfg. Co., Inc. v. Enco Mfg. Co., Inc., 870 F. 2d 512, 517 (9th Cir. 1989) (citing Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 843 (9th Cir. 1987)). Further, a trade dress cannot be diluted unless it is famous such that it is “truly prominent and renowned” among the general public. Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 875 (9th Cir. 1999). Apple bears the burden of showing dilution for both registered and unregistered trade dress. See 15 U.S.C. § 1125; Final Jury Instruction No. 65.

Although secondary meaning and fame are different issues, here they rise and fall on largely the same evidence. Samsung argues that Apple has failed to show that its registered iPhone Trade Dress and unregistered iPhone 3G Trade Dress have acquired secondary meaning and are famous. Apple has introduced: (1) survey expert testimony (Tr. 1578:24-1585:5 (Dr. Hal Poret’s testimony that his surveys showed consumers associated iPhones with Apple); Tr. 1695:17- 1695:22 (Apple expert Dr. Kent Van Liere, same); (2) iPhone advertisements from 2007 through 2010, including iPhone 3G advertisements from 2008 (PX11, 12, 127); (3) television show clips from 2007 through 2010 (PX14); (4) media reviews of the original iPhone from 2007 (PX 133, 135); (5) advertising expenditures (PX16 (“Advertising Expenditures (U.S.)”); Tr. 653:24-654:1 (Mr. Schiller testimony estimating $120-130 in advertising expenses between October 2009 and June 2010)); and (6) fact witness testimony (Tr. 639:8-640:3 (Mr. Schiller’s testimony on product as hero advertising)). This significant pool of evidence represents substantial evidence in the record from which the jury could infer both secondary meaning and fame. Accordingly,

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Samsung’s motion for judgment as a matter of law or a new trial on grounds that Apple’s trade dress was not protectable or famous is DENIED.

3. Other Elements of Dilution

Trademark dilution is caused by the use in commerce of a mark that “impairs the distinctiveness” or “harms the reputation” of a famous mark. 15 U.S.C. §1125(c). “Dilution refers to the whittling away of the value of a trademark when it’s used to identify different products.” Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 903 (9th Cir. 2002) (citation and quotation marks omitted). While many dilution claims refer to trade names, the dilution statute explicitly applies dilution protection to trade dress. See 15 U.S.C. §1125(c)(4). To establish a claim of trade dress dilution, in addition to proving fame, a plaintiff must show that (1) the defendant is “making use of the [trade dress] in commerce,” (2) the defendant’s “use began after the [trade dress] became famous,” and (3) the defendant’s use of the trade dress is “likely to cause dilution by blurring” or by “tarnishment.” See Jade Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008) (emphasis added).

Samsung does not dispute that substantial evidence supported a finding that Samsung used the asserted Apple trade dresses “in commerce.” Instead, Samsung argues that Samsung is entitled to judgment as a matter of law or a new trial on dilution because the evidence did not show that the asserted trade dresses had become famous prior to Samsung’s first sale of the accused diluting phones in July 2010. See Mot. at 10-11. However, Apple’s substantial advertising and press coverage prior to release of Samsung’s phones (PX11; PX12; PX 16; PX127; PX133; PX135; Tr. 639:8-640:3; Tr. 653:24-655:1), taken together with Apple’s later-collected survey evidence (Tr. 1578:24-1585:5; Tr. 1695:17-22), provides substantial evidentiary support for the jury’s finding that Apple’s trade dresses were famous before Samsung’s first sale of an accused diluting phone in July, 2010.

Samsung also argues that Apple has not provided evidence of likely dilution, and that Samsung’s evidence of 25 third-party iPhone-like smartphones in the market “undermines any finding of likely dilution” by Samsung’s accused devices. See Mot. at 11. However, Apple presented significant evidence that dilution by blurring was likely, including: (1) actual accused

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Samsung products that allegedly have iPhone-like appearances; (2) press reports discussing the similar appearances of the iPhone and the accused products (PX6); (3) testimony by Apple expert Dr. Winer that Samsung’s phones dilute Apple’s trade dresses by blurring (Tr. 1521:14-24); (4) evidence of copying by Samsung (Tr. 1506:16-1507:2 (Dr. Winer testimony on Samsung copying)); PX36.20 (Samsung believed the iPhone was “a revolution”); PX44 (Samsung’s “Relative Evaluation Report on S1, iPhone”); and (5) testimony of Apple’s expert Dr. Van Liere that 37-38% of consumers associated Apple and Samsung smartphones. Tr. 1691:13-1696:2. This collection of evidence constitutes substantial evidence in the record to support the jury’s finding of dilution by blurring. Accordingly, Samsung’s motion for judgment as a matter of law or a new trial on grounds that Apple did not establish a likelihood of dilution is DENIED.

Finally, an award of damages for trade dress dilution requires a finding that the dilution was willful, i.e. that Samsung “willfully intended to trade on the recognition” of Apple’s trade dresses. 15 U.S.C. §1125(c). Here, it is undisputed that Samsung was aware of the iPhone design. Samsung argues that Apple has not submitted evidence that could support the jury’s verdict of willful dilution. However, Apple has submitted evidence that Samsung viewed the iPhone as revolutionary (PX36.20), and that Samsung attempted to create similar products (PX44). This constitutes substantial evidence in the record to support the jury’s finding that Samsung willfully intended to trade on the recognition of Apple’s trade dresses. Accordingly, Samsung’s motion for a new trial or judgment as a matter of law on grounds that Apple did not present evidence of willful dilution is DENIED.

In sum, Apple has identified substantial evidence in the record of trade dress non- functionality, trade dress secondary meaning, trade dress fame prior to the release of Samsung’s accused devices, likelihood of dilution, and willful dilution. Moreover, the jury’s findings were not against the clear weight of the evidence. Accordingly, the Court DENIES Samsung’s motion for judgment as a matter of law that Apple’s registered iPhone Trade Dress and unregistered iPhone3G Trade Dress are not protectable and not diluted, and DENIES Samsung’s motion in the alternative for a new trial.

C. Utility Patents

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1. Infringement

Samsung moves for judgment as a matter of law that no accused Samsung device infringes any of Apple’s utility patent claims. See Mot. at 13-15. In the alternative, Samsung also moves for judgment as a matter of law or a new trial on infringement of claim 8 of Apple’s U.S. Patent No. 7,844,915 (“the ’915 Patent”) and claim 19 of U.S. Patent No. 7,469,381 (“the ’381 Patent”). In order to find infringement, the jury had to find that each infringing Samsung product met every limitation of each of the infringed patent claims. See Pennwalt Corp. v. Durand-Wayland Inc., 833 F.2d 931, 935 (Fed. Cir. 1987) (en banc). Samsung argues that Apple did not offer sufficient evidence of utility patent infringement to support the jury’s findings.

Samsung’s first argument applies to all of the jury’s infringement findings for the ’915 and ’381 Patents. Samsung argues it was insufficient for Apple’s experts to perform an element-by- element infringement analysis of one Samsung device and then simply show the jury videos of other Samsung devices performing the same patented user-interface (“UI”) operation. The Court cannot agree. Apple’s experts Dr. Karan Singh and Dr. Ravin Balakrishnan testified that certain UI operations necessarily infringed all of the required elements. Thus, showing that those same UI operations were performed by different devices is the logical equivalent of showing that all of the required elements were performed on each device performing those UI operations. Furthermore, having had the patented UI operations demonstrated by Dr. Singh and Dr. Balakrishnan, the jurors entered the jury room with both an understanding of how the accused UI features were alleged to work and actual working products, which the jurors could test to confirm whether the devices infringed the UI utility patents. Thus, the combination of the testimony and the devices themselves constituted substantial evidence in the record to support a finding of infringement, and the jury’s finding of infringement was not against the clear weight of the evidence. Samsung’s motion for judgment as a matter of law that Apple did not establish infringement for each accused product and Samsung’s motion for a new trial on this basis are accordingly DENIED.

a. Claim 8 of the ’915 Patent

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Samsung also moves for judgment as a matter of law that Samsung did not infringe claim 8 of the ’915 Patent. Claim 8 of the ’915 Patent claims a device performing a method for scrolling and scaling objects on a touch screen using gestures. Specifically, claim 8 recites:
A machine readable storage medium storing executable program instructions which when executed cause a data processing system to perform a method comprising:

receiving a user input, the user input is one or more input points applied to a touch-sensitive display that is integrated with the data processing system; creating an event object in response to the user input;

determining whether the event object invokes a scroll or gesture operation by distinguishing between a single input point applied to the touch-sensitive display that is interpreted as the scroll operation and two or more input points applied to the touch-sensitive display that are interpreted as the gesture operation;

issuing at least one scroll or gesture call based on invoking the scroll or gesture operation;

responding to at least one scroll call, if issued, by scrolling a window having a view associated with the event object; and

responding to at least one gesture call, if issued, by scaling the view associated with the event object based on receiving the two or more input points in the form of the user input.

’915 Patent, 23:65-24:21.

Samsung makes three arguments to support its motion for judgment as a matter of law or a new trial on ’915 Patent infringement. First, Samsung argues that Samsung’s software does not satisfy the “invoking” limitation because the MotionEvent object in Samsung’s code, which directly stores the user’s touch data in the operating system, does not directly cause the scroll or gesture to occur as required by the claim limitation, but that instead the MotionEvent data is used by another program, WebView object, which actually causes the scroll or gesture operation to occur. See Mot. at 14 (citing Tr. 2911:6-2912:1 (noninfringement testimony of Samsung expert Mr. Gray)). This argument, however, is premised upon a claim construction that the Court has already rejected, that the claimed “event object” that detects the user touch must directly cause the scroll or gesture. Instead, the Court ruled that causation with intervening events still meets the claim limitation of “invoke[ing] a scroll or gesture operation.” See ECF No. 1158. Accordingly, this intervening step does not defeat Apple’s claim of infringement.

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Second, Samsung argues that some Samsung devices do not perform the “gesture” operation required by the claim in response to a two finger touch. See Mot. at 14. Samsung explains that these devices instead perform a “scroll” operation. Id. As a preliminary matter, Samsung’s expert Mr. Gray testified as to only one such specific device, the Samsung Galaxy Tab 10.1. See Tr. 2912:2-19. Thus, even if this argument were persuasive, it would apply only to the Galaxy Tab 10.1, and not to any of the other accused devices. Samsung’s motion on this basis is DENIED as to all accused devices except the Galaxy Tab 10.1.

Regarding the Galaxy Tab 10.1, Apple’s expert Dr. Singh testified that the operation performed by the Samsung Galaxy Tab 10.1 in response to the two finger touch was not, in fact, a “scroll” as Samsung contends, but a simultaneous scroll and scale (“translate” and “scale,” in Dr. Singh’s words). Tr. 1863:1-1864:16. The plain language of the claim requires a finger scroll that is “interpreted as the gesture operation” that leads to “scaling” of the view on the touch screen. This plain language does not exclude the possibility that a gesture operation causes both scaling and some other event, such as simultaneous scrolling. Thus, Dr. Singh’s testimony could have supported a jury’s finding that the Galaxy Tab 10.1 did, in fact, perform scaling in resonse to a gesture operation, as defined by the claim, and thus did infringe. Accordingly, the Court DENIES Samsung’s motion for judgment as a matter of law that claim 8 of the ’915 Patent is not infringed.

Finally, Samsung argues that a new trial is necessary to resolve inconsistencies in the jury verdict. See Mot. at 14. Specifically, Samsung argues that the jury found no ’915 Patent infringement by the Galaxy Ace, running Android 2.2.1, and by the Intercept and Replenish, running Android 2.2.2., but that the jury found ’915 Patent infringement by many other accused devices that run the exact same software. Id. In opposition, Apple argues: (1) that Samsung waived its objection by failing to raise this argument before the jury was dismissed; (2) that the verdicts are not inconsistent because the jury may have tested the three non-infringing phones in a manner that would give a false non-infringement conclusion; and (3) that any inconsistency does not merit a new trial in this case.

As to Apple’s first argument, waiver by Samsung, the Court finds that Samsung did not waive its right to object to inconsistencies in the jury verdict. In fact, it was clear that Samsung

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was reserving its right to raise any additional inconsistencies. Tr. 4316:18-21. (“Johnson: That’s it for right now your honor.” (emphasis added); “The Court: At this point . . . , no further inconsistencies; right?” (emphasis added)).

Apple also argues that the verdicts are not inconsistent. However, Apple implicitly admits that the verdicts are factually inconsistent. Specifically, Apple suggests that the jury simply made a mistake in analyzing the Ace, Intercept, and Replenish in the jury room, perhaps “test[ing] them on a ‘mobile’ website that did not allow two-finger scaling and therefore concluded that those particular devices did not infringe.” Opp’n at 12. Thus, Apple implicitly agrees that all the devices running a particular Android version either infringe or do not infringe together, and that the jury’s findings are factually inconsistent.

Apple argues that these factual inconsistencies do not merit a new trial. Courts are not obligated to set aside a verdict wherever there is any sort of inconsistency. Indeed, the Ninth Circuit allows courts to set aside verdicts on grounds of inconsistency only when absolutely necessary. “The question is whether the verdict can be reconciled on any reasonable theory consistent with the evidence.” Ward v. City of San Jose, 967 F.2d 280, 286 (9th Cir. 1991). Thus, “[w]hen faced with a claim that verdicts are inconsistent, the court must search for a reasonable way to read the verdicts as expressing a coherent view of the case, and must exhaust this effort before it is free to disregard the jury's verdict and remand the case for a new trial.” Toner for Toner, 828 F.2d at 512.

In Zhang v. Am. Gem Seafoods, Inc., 339 F.3d 1020, 1034 (9th Cir. 2003), the Ninth Circuit undertook a comprehensive analysis of the law on inconsistent verdicts. In upholding a jury’s verdict that a corporate defendant was liable where the only individual acting on behalf of the corporation was not, the Ninth Circuit explained that seeming inconsistencies in a jury’s understanding of facts does not warrant a new trial. Id. at 1030. Only verdicts that entail two legal conclusions that cannot logically coexist, such as an award of damages and a finding of no liability, rather than a mere inconsistent view of facts, warrant the Court’s intervention. See id. at 1034 (“Unless one legal conclusion is the prerequisite for another, inconsistencies between them must stand.”); see also Duhn Oil Tool, Inc. v. Cooper Cameron Corp, 818 F. Supp. 2d 1193 (E.D. Cal.,

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2011) (jury’s verdicts that independent patent claim is obvious, but dependent claim is not, are inconsistent and require new trial).

Here, an infringement finding for one product is not the legal prerequisite for an infringement finding of another product, even if the products are identical in all relevant respects. Rather, this situation is analogous to Zhang, where a finding that the corporation was liable logically should also have meant that the individual through which the corporation acted was liable, but the two liability determinations, while depending on the same facts, were legally independent of one another. In Zhang, the Ninth Circuit held that the verdicts, though apparently factually inconsistent, must stand. Id. at 1030. The same is true here. Accordingly, a new trial to resolve inconsistencies is inappropriate as to ’915 Patent infringement. Therefore, the Court DENIES Samsung’s motion for a new trial as to infringement of claim 8 of the ’915 Patent.

b. Claim 19 of the ’381 Patent

Samsung also moves for judgment as a matter of law that Samsung did not infringe claim 19 of the ’381 Patent. Claim 19 of the ’381 Patent claims a device performing a method of bouncing back when a user scrolls an object such as a web page off the end of a display screen. Specifically, claim 19 recites:
A device, comprising: a touch screen display; one or more processors; memory; and one or more programs, wherein the one or more programs are stored in the memory
and configured to be executed by the one or more processors, the programs including:
instructions for displaying a first portion of an electronic document;
instructions for detecting a movement of an object on or near the touch screen display;
instructions for translating the electronic document displayed on the touch screen display in a first direction to display a second portion of the electronic document, wherein the second portion is different from the first portion, in response to detecting the movement;
instructions for displaying an area beyond an edge of the electronic document and displaying a third portion of the electronic document, wherein the third portion is smaller than the first portion, in response to the edge of the electronic document being reached while translating the electronic document in the first direction while the object is still detected on or near the touch screen display; and

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instructions for translating the electronic document in a second direction until the area beyond the edge of the electronic document is no longer displayed to display a fourth portion of the electronic document, wherein the fourth portion is different from the first portion, in response to detecting that the object is no longer on or near the touch screen display.
’381 Patent, 36:59-37:22.

Samsung argues that the “hold still” function of its phones is not a bounce-back feature as claimed by the ’381 Patent, and that therefore its phones do not infringe. See Mot. at 14-15. Apple does not dispute that the “hold still” function is not claimed by the ’381 Patent, but cites Apple expert Dr. Balakrishnan’s testimony that in addition to the “hold still” function, the accused Samsung phones also perform the claimed bounce-back function, and that the accused phones contain the software instructions for performing the bounce-back function. See Opp’n. at 13 (citing Tr. 1751:21-1757:21).

Samsung argues that the Court has already ruled that the ’381 Patent requires that the bounce-back function occur every time the user scrolls past the edge of the electronic document, and that therefore even if the accused phones do sometimes display the bounce-back feature or contain software instructions for that feature, they do not infringe. See Mot. at 14-15. However, this Court’s prior ruling did not concern claim 19, but rather claim 1 of the ’381 Patent, a method claim. See ECF No. 452 at 58-60. Thus, that ruling does not control here. The jury found that some Samsung products infringe claim 19 of the ’381 Patent, which claims not a method, but an apparatus with instructions for performing the bounce-back function. The plain language of the claim does not require that the instructions operate to perform the function in every instance. Thus, the jury could reasonably have interpreted the claim language to require only that a device contain the instructions for the bounce-back feature, which Dr. Balakrishnan testified that Samsung’s devices did. Accordingly, there is substantial evidence in the record to support the jury’s findings of infringement as to claim 19 of the ’381 Patent, and this finding of infringement was not against the clear weight of the evidence. Therefore, the Court DENIES Samsung’s motion for judgment as a matter of law that Samsung’s accused devices do not infringe claim 19 of the ’381 Patent, and DENIES Samsung’s motion for a new trial on this basis.

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2. Validity

Samsung seeks judgment as a matter of law that all three of Apple’s asserted utility patents are invalid on grounds of anticipation, obviousness, or both.4 A patent claim is invalid by reason of anticipation under 35 U.S.C. § 102 “if each and every limitation is found either expressly or inherently in a single prior art reference.” Bristol-Myers Squibb Co. v Ben Venue Labs., Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001). Whether a patent is anticipated is a question of fact. Green Edge Enterprises, LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1297 (Fed. Cir. 2010). Anticipation must be shown by clear and convincing evidence. Id. at 1292.

As with design patents, as discussed above, a utility patent is invalid for obviousness “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). “Obviousness is a question of law based on underlying findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying factual inquiries are: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the art; and (4) any relevant secondary considerations, such as commercial success, long felt but unsolved needs, and the failure of others. KSR Int’l, 550 U.S. at 406 (2007) (citing Graham, 383 U.S. at 17-18); Aventis, 675 F.3d at 1332. Though obviousness is ultimately a question of law for the Court to decide de novo, the Court treats with deference the implied findings of fact regarding obviousness made by the jury. Kinetic Concepts, 688 F.3d at 1356-57. “A party seeking to invalidate a patent on the basis of obviousness must demonstrate by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Id. at 1360.

a. Claim 8 of the ’915 Patent

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Samsung moves for judgment as a matter of law that claim 8 of the ’915 Patent is invalid based on two pieces of prior art: (1) the DiamondTouch with FractalZoom; and (2) the Nomura patent application.5 See Mot. at 12. First, Samsung argues that the DiamondTouch with FractalZoom included all the elements of claim 8 of the ’915 Patent, rendering claim 8 invalid for anticipation. Although Samsung’s expert Stephen Gray testified that this prior art contained all the elements of claim 8 of the ’915 Patent (Tr. 2897:12-2902:5:25), Apple’s expert Dr. Singh gave contrary testimony (Tr. 3623:7-3625:5). Specifically, Dr. Singh testified that: (1) the DiamondTouch does not contain an “integrated” “touch-sensitive display;” (2) the DiamondTouch treats a three-finger input the same as a one-finger input, thereby failing to distinguish between a “single input point” and “two or more input points”; and (3) Mr. Gray never identified a “view object” that was associated with an “event object.” Though conflicting with Mr. Gray’s testimony to some extent, this testimony is sufficient to support the jury’s finding that Samsung has not proven anticipation by clear and convincing evidence.

Moreover, in finding the patent valid, the jury made implied findings that these gaps between the prior art and claim 8 of the ’915 Patent were significant. Samsung has failed to identify evidence suggesting that it would have been obvious to a person of ordinary skill in the art to bridge these gaps, such as testimony or documentary evidence as to how or why the gap would have been bridged. Thus, the Court cannot find that Samsung has met its burden to establish obviousness by clear and convincing evidence. Therefore, the Court DENIES Samsung’s motion for judgment as a matter of law that claim 8 of the ’915 Patent is invalid over the DiamondTouch with FractalZoom prior art.

Samsung also argues that the Nomura patent application includes all elements of claim 8 of the ’915 Patent, and thus renders claim 8 invalid for anticipation. See Mot. at 12. Claim 8 covers a user interface created by a specific programming technique. However, Dr. Singh testified that Nomura does not include “events, objects, [or] views,” as required by claim 8. Thus, Nomura may disclose a similar user interface, but one that is implemented using different programming

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techniques than claim 8 of the ’915 Patent. Tr. 3625:10-3626:24. As with the DiamondTouch, Dr. Singh’s testimony about the Nomura reference supports the jury’s finding of non-anticipation.

Furthermore, the jury’s finding of validity indicates that the jury made an implied finding of fact affirming Dr. Singh’s testimony that the gap between Nomura and the ’915 Patent was significant. The Court must give that finding deference. See Kinetic Concepts, 688 F.3d 1342, 1356. In light of the lack of clear Samsung evidence as to why such a gap would be obvious to bridge, the Court finds claim 8 of the ’915 Patent non-obvious as a matter of law. Accordingly, the Court DENIES Samsung’s motion for judgment as a matter of law that claim 8 of the ’915 Patent is invalid based on the Nomura prior art.

b. Claim 19 of the ’381 Patent

Samsung also moves for judgment as a matter of law that claim 19 of the ’381 Patent is invalid because of the TableCloth and LaunchTile prior art references, based upon testimony to that effect from Samsung’s expert Dr. van Dam. See Mot. at 12.

Apple argues that the jury’s finding of non-anticipation was supported by the testimony of Dr. Balakrishnan. Dr. Balakrishnan testified that TableCloth does not respond to the edge of an electronic document as required by claim 19. See 3631:14-3634:19. Instead, he testified that TableCloth simply snaps back to the original position when the user’s finger is lifted off the touch-screen, regardless of whether a document edge has been crossed. Id. This testimony alone is sufficient to support the jury’s finding that TableCloth does not anticipate claim 19. Similarly, Dr. Balakrishnan testified that TableCloth snaps back not only until space beyond the edge of an electronic document is no longer displayed, but rather all the way to the document’s original position, before it was moved at all. Id. Yet claim 19 explicitly excludes this type of snapping back to the original position (“wherein the fourth portion is different from the first portion”). Again, this testimony is sufficient to support the jury’s finding of validity.

Dr. Balakrishnan also provided testimony sufficient to support the jury’s finding that LaunchTile does not anticipate claim 19. He testified that LaunchTile fails to meet the limitations of claim 19 of the ’381 Patent because LaunchTile does not respond “to the edge of the electronic document being reached,” as required by the claim. Tr. 3634:20-3635:18. Instead, Dr.

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Balakrishnan testified that LaunchTile tracks the center of the document. Id. Dr. Balakrishnan also testified that LaunchTile will simply move to center a displayed document, but that such centering will not necessarily be “in a second direction” as required by claim 19. See id. (“If it’s more than a sixth of the way, it goes to the next set of tiles.”). Furthermore, Dr. Balakrishnan testified that LaunchTile sometimes also demonstrated situations in which LaunchTile will not move past an edge (the so-called “frozen screen problem”), and situations in which LaunchTile allows dragging far past an edge (the so-called “desert fog problem”). Tr. 3635:19-3636:8. The emergence of these two problems supports Dr. Balakrishnan’s testimony that although LaunchTile may sometimes appear to be responding to an edge as required by claim 19, in fact it is not. In sum, Dr. Balakrishnan’s testimony constituted substantial evidence in the record to support the jury’s finding of non-anticipation. Accordingly, Samsung’s motion for judgment as a matter of law that claim 19 of the ’381 Patent is invalid for anticipation is DENIED.

The Court also finds that claim 19 is not obvious in light of Tablecloth and LaunchTile. In finding validity, the jury implicitly found that the gaps identified by Dr. Balakrishnan were significant. Samsung’s expert Dr. van Dam testified only that Tablecloth rendered claim 19 obvious because a person of ordinary skill in the art would “understand the advantage of this snapping back behavior.” Tr. 2872:23-25. Dr. van Dam also testified that LaunchTile rendered the ’381 Patent “obvious because, again, you can see every element there.” Tr. 2873:6-7. These bare assertions by Dr. van Dam are insufficient to prove by clear and convincing evidence that it would have been obvious to bridge the gaps between Tablecloth or LaunchTile and claim 19. Accordingly, in light of the jury’s implied findings of fact and Samsung’s minimal evidence as to obviousness, the Court finds claim 19 of the ’381 Patent non-obvious as a matter of law. Therefore, the Court DENIES Samsung’s motion for judgment as a matter of law that claim 19 of the ’381 Patent is invalid.

c. Claim 50 of the ’163 Patent

Claim 50 of U.S. Patent No. 7,864,163 (“the ’163 Patent”) claims a touch screen device with tap-to-zoom functionality. Specifically, claim 50 recites:
A portable electronic device, comprising:

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a touch screen display;
one or more processors;
memory; and
one or more programs, wherein the one or more programs are stored in the memory and configured to be executed by the one or more processors, the one or more programs including:
instructions for displaying at least a portion of a structured electronic document on the touch screen display, wherein the structured electronic document comprises a plurality of boxes of content;
instructions for detecting a first gesture at a location on the displayed portion of the structured electronic document;
instructions for determining a first box in the plurality of boxes at the location of the first gesture;
instructions for enlarging and translating the structured electronic document so that the first box is substantially centered on the touch screen display;
instruction for, while the first box is enlarged, a second gesture is detected on a second box other than the first box; and
instructions for, in response to detecting the second gesture, the structured electronic document is translated so that the second box is substantially centered on the touch screen display.
’163 Patent, 29:14-40.

Samsung argues that claim 50 of the ’163 Patent is invalid based on LaunchTile, and two additional references, Agnetta and Robbins. In support of this argument, Samsung cites the testimony of Mr. Gray. See Mot. at 12-13. Apple’s expert Dr. Singh gave rebuttal testimony as to LaunchTile and Agnetta, explaining that neither LaunchTile nor Agnetta “enlarge[s] a structured electronic document” as required by claim 50. Tr. 3615:19-3616:4. Instead, Dr. Singh testified that to the extent any structured electronic document exists, LaunchTile and Agnetta replace that structured electronic document with new content. Id. This testimony is sufficient to support the jury’s finding that Samsung did not prove anticipation by LaunchTile or Agnetta by clear and convincing evidence. As to the Robbins reference, Mr. Gray did not address all the limitations of claim 50 on direct examination. See Tr. 3619:4-3620:10 (Dr. Singh testimony that Mr. Gray had neglected to explain how all claim elements were present in Robbins). The incomplete nature of Mr. Gray’s testimony supports the jury’s finding that Samsung did not prove anticipation over Robbins by clear and convincing evidence. Tr. 2919:17-2922:6. Accordingly, Samsung’s motion for judgment as a matter of law that claim 50 is invalid for anticipation is DENIED.

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Furthermore, Mr. Gray admitted that he gave no testimony as to obviousness of claim 50 of the ’163 Patent. Tr. 2924:12-17 (admitting that “anticipation is all [Mr. Gray] spoke to”). Indeed, because the jury implicitly found, as Dr. Singh testified, that there are differences between the prior art and Apple’s utility patents, Samsung had the burden of showing that these gaps would have been obvious to bridge. Samsung failed to offer such evidence. Accordingly, the Court DENIES Samsung’s motion for judgment as a matter of law that claim 50 of the ’163 Patent is invalid for obviousness over the LaunchTile, Agnetta, and Robbins references.

D. Willfulness

To establish willful patent infringement,6 “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. The state of mind of the accused infringer is not relevant to this objective inquiry. If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk. . . was either known or so obvious that it should have been known to the accused infringer.” In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (internal citation omitted). Thus, the willfulness inquiry is a two-prong analysis, requiring an objective inquiry and a subjective inquiry. The objective inquiry is a question for the Court, and the subjective inquiry is a question for the jury. Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 682 F.3d 1003, 1007 (Fed. Cir. 2012).

Because both prongs must be established for the Court to make an ultimate finding of willfulness, failure on either prong defeats a claim of willfulness. Thus, where the jury found willfulness, the Court must also find willfulness. If the Court finds no objective willfulness, the inquiry is at an end, and the Court need not consider whether the jury’s finding of subjective willfulness was supported by substantial evidence. Conversely, if the jury found no subjective

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willfulness, the Court need not consider objective willfulness, as the willfulness claim must fail either way.7

Here, the Court sent the subjective prong of willfulness to the jury, and the jury found that Samsung’s infringement was subjectively willful for five of the seven patents (three utility patents and two design patents). See Final Jury instruction No. 59; Amended Jury Verdict, ECF No. 1890, at 9. Thus, for these five patents, the Court must find the objective prong also satisfied in order to make an ultimate finding of willfulness.8

To establish objective willfulness, Apple must prove by clear and convincing evidence that there was an “objectively high likelihood that its actions constituted infringement of a valid patent.” Bard, 682 F.3d at 1005 (citing Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 1319 (Fed. Cir. 2010)). If Samsung had an objectively reasonable defense to infringement, its infringement cannot be said to be objectively willful. See Spine Solutions, 620 F.3d at 1319 (“The ‘objective’ prong of Seagate tends not to be met where an accused infringer relies on a reasonable defense to a charge of infringement.”); Bard, 682 F.3d at 1006 (objective willfulness determination “entails an objective assessment of potential defenses based on the risk presented by the patent. Those defenses may include questions of infringement but also can be expected in almost every case to entail questions of validity that are not necessarily dependent on the factual circumstances of the particular party accused of infringement”). The Court will consider each patent in turn.

1. ’381 Patent

First, the Court finds that Samsung had an objectively reasonable defense to infringement of claim 19 of the ’381 Patent. Specifically, Samsung had a reasonable defense that this claim was invalid for anticipation by Tablecloth. At summary judgment, Samsung presented evidence that Tablecloth was invented and may have been in public use more than one year prior to the filing of

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the ’381 Patent’s parent provisional application, thus qualifying as prior art under § 102(b). See Decl. of Adam Bogue in support of Samsung’s motion for summary judgment, ECF No. 933, at ¶¶ 8-12. Samsung also presented a date stamp on the files for the Tablecloth software showing its invention before the ’381 Patent application was filed. See Decl. of Bill Trac in support of Samsung’s summary judgment reply, ECF No. 1068, at ¶ 28 & Exh. 25; Order Denying Samsung’s Motion for Summary Judgment, ECF No. 1158, at 13-16 (citing Samsung’s evidence).

Further, Samsung presented an expert’s declaration opining that Tablecloth disclosed all of the limitations of claim 19. See Decl. of Andries Van Dam in support of Samsung’s motion for summary judgment, ECF No. 937, at §§51-82. Similar evidence was presented at trial. See Tr. 2276:17-2299:16 (Adam Bogue testifying about DiamondTouch and Tablecloth); id. at 2846:10- 2847:2; 2855:1-2858:22 (Dr. van Dam testifying about Tablecloth’s disclosure of claim elements). Though the evidence was not sufficient to establish anticipation as a matter of law, nor to persuade the jury of anticipation by clear and convincing evidence, there was certainly an objectively reasonable argument for anticipation.9

Accordingly, the Court finds that, objectively, Samsung’s infringement of the ’381 Patent was not willful, due to its reasonable reliance on an invalidity defense. Because the objective willfulness prong is not satisfied, the Court need not examine the jury’s finding on subjective willfulness. Samsung’s motion for judgment as a matter of law that its infringement of claim 19 of the ’381 Patent was not willful is GRANTED.

2. ’163 Patent

Regarding the ’163 Patent, Samsung again had an objectively reasonable defense. Specifically, Samsung had a reasonable defense that claim 50 of the ’163 Patent was invalid for indefiniteness. Indeed, although the Court has ultimately found the term “substantially centered”

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definite, see Order re:Indefiniteness, ECF No. 2218, Samsung’s position, as argued in Samsung’s motion on non-jury claims, was objectively reasonable, and raised close questions of law concerning the definiteness requirement in the context of terms of degree. Because the objective willfulness prong is not satisfied, the Court need not examine the jury’s finding on subjective willfulness. Samsung’s motion for judgment as a matter of law that its infringement of claim 50 of the ’163 Patent was not willful is GRANTED.

3. ’915 Patent

As to the ’915 Patent, Samsung had an objectively reasonable defense that claim 8 was invalid for obviousness. As explained above in resolving Samsung’s motion for judgment as a matter of law on obviousness, the ’915 Patent distinguishes between one-finger scrolling and two- finger gestures. There is no dispute that DiamondTouch does both one-finger scrolling and two- finger gestures. The DiamondTouch, however, treats a two-finger touch as unique, and a single finger or a three-or-four-finger touch as the same. The ’915 Patent, in contrast, treats one-finger touches as unique, and two, three, or four-finger touches as the same. Though this jury did not, a jury could reasonably have found that the gap between DiamondTouch’s function and the ’915 Patent (i.e., whether the one-finger or the two-finger touch is unique) was not significant. Thus, it was objectively reasonable for Samsung to contend that treating all multiple-finger touches the same, instead of treating a two-finger touch as unique, would have been obvious to a person having ordinary skill in the art.

Samsung had an additional objectively reasonable (though ultimately unsuccessful) obviousness defense to infringement of the ’915 Patent. Apple distinguished another prior art reference, the Nomura patent application, on the grounds that the Nomura reference and the ’915 Patent used different programming methods. Apple explains that the Nomura reference did not disclose the use of object-oriented programming, and that the ’915 Patent added this feature. Tr. 3625:10-3626:24 (Apple expert Dr. Singh testifying that the Nomura reference does not disclose “events, objects, [or] views,” and explaining “you can easily replace events with, with polling in a device. . . procedural programming and languages can replace objects, . . . and you can have a single block of display logic instead of views.”) Samsung argues that any such gap in

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programming technique would have been obvious to a person of ordinary skill in the art. Samsung had an objectively reasonable argument that the unique aspect of the ’915 patent was not the programming techniques used to implement it, but rather the user interface aspect, and accordingly, it would be obvious to implement the same user interface with different underlying programming.10 Because the objective willfulness prong is not satisfied, the Court need not examine the jury’s finding on subjective willfulness. Samsung’s motion for judgment as a matter of law that its infringement of claim 8 of the ’915 Patent was not willful is GRANTED.

4. D’677 and D’305 Patents

Turning to the two design patents that the jury found that Samsung had willfully infringed, the D’677 and D’305 Patents, the Court finds that Apple has not met its burden to show by clear and convincing evidence that there was an objectively high likelihood that Samsung’s actions would infringe valid design patents. Leaving aside the question of whether Samsung actually knew about the patents (as this question was part of the jury’s subjective analysis), the Court finds that Samsung would have been reasonable to rely on its noninfringement defenses.

Apple argues that Samsung had no reasonable noninfringement defense for either the D’677 or the D’305 Patent. See Apple’s Brief on Nonjury Claims, ECF No. 1981, at 13. For the D’677 Patent, Apple relies on this Court’s finding, at the preliminary injunction stage, that the Samsung Galaxy S 4G and Samsung Infuse likely infringed the D’677 Patent. However, for both products, the Court noted that it was “a close question,” ECF No. 452 at 26, 27. The Court pointed out differences such as the “four small functional buttons at the bottom, and a camera lens at the top of the front face” of the Galaxy S 4G, which could “take on greater significance” in light of the prior art. Id. at 25. And with regard to the Infuse, the Court noted “the addition of buttons and writing,” and the fact that the “Infuse 4 appears broader and longer, with a larger screen face relative to the rest of the front face, and sharper corners” than the D’677 Patent. Id. at 27. Thus, the Court’s ultimate conclusion, after careful consideration, that infringement was likely does not render

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Samsung’s reliance on an infringement defense unreasonable. Indeed, the closeness of the question suggests that noninfringement was indeed a reasonable defense. Accordingly, the Court finds that Apple has not met its burden to establish that there was an objectively high likelihood that Samsung’s actions would constitute infringement of the D’677 Patent, and Samsung’s motion for judgment as a matter of law that its infringement was not willful is GRANTED.

Regarding the D’305 Patent, Apple does not present any specific evidence as to the unreasonableness of Samsung’s infringement defense. Instead, Apple relies on general evidence that “some of the accused products” were very similar to the D’305 Patent. Apple’s Mot. for Damages Enhancements at 13. Apple points to one internal Samsung document (PX44.131) noting a “[s]trong impression that iPhone’s icon concept was copied.” The document includes a side-by- side comparison of an iPhone and a phone labeled “GTi9000.” The document does not mention the D’305 patent. Further, the document actually points out some differences between the Samsung phone and the iPhone in the form of suggestions for how the Samsung product could be made to look more iPhone-like: “Insert effects of light for a softer, more luxurious icon implementation. Make the edge curve more smooth to erase the hard feel. Remove a feeling that iPhone’s menu icons are copied by differentiating design.” PX44.131. Thus, even where aware of the similarities, Samsung had also identified several differences. As noted above, individual differences such as those Samsung has identified can take on a greater significance in the infringement analysis when compared with the prior art, thus providing further reason to believe that a design with such differences does not infringe. See Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir. 2010). PX44 therefore does not provide convincing evidence that Samsung’s infringement defense for the D’305 Patent was unreasonable.

Apple’s other piece of evidence regarding Samsung’s noninfringement defense is a single quotation from Wired magazine noting that “[t]he Vibrant’s industrial design is shockingly similar to the iPhone 3G.” PX6.1. The discussion in the passage cited by Apple is largely focused on the exterior of the phone, not the user interface or icons covered by the D’305 Patent, though it does mention that “the square icons are, again, very similar in their looks to the iPhone 3G’s.” Id. The Vibrant is one of the phones accused of infringing the D’305 patent. However, all Apple has

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presented here is one industry reporter’s assessment that the icons are “very similar” in their looks. This article provides some limited evidence that one phone, the Vibrant, had the potential to infringe the D’305 Patent. It does not, however, make clear whether the similarity is in individual icons themselves, the layout of the icons, or, as would be more relevant to the question of design patent infringement, the overall visual impression of the home screen. The fact that the Vibrant’s square icons are similar to the iPhone’s would not necessarily mean that the Vibrant would infringe the D’305 Patent.

As this is the sum total of Apple’s arguments and evidence that Samsung’s infringement was willful, the Court cannot conclude that Apple has met its burden to show willfulness by clear and convincing evidence. In light of Samsung’s reasonable, if ultimately unsuccessful, noninfringement defense, Apple simply has not established that there was an objectively high likelihood that Samsung’s actions would constitute infringement of the D’305 Patent. This finding makes it unnecessary for the Court to review Samsung’s invalidity defenses, as Samsung needed only one reasonable defense on which to rely, in order to defeat the objective willfulness inquiry. Accordingly, Samsung’s motion for judgment as matter of law that Samsung did not willfully infringe the D’305 Patent is GRANTED.

E. SEC’s Liability

The Defendants in this case are three Samsung entities: the Samsung Korean parent company, Samsung Electronics Corporation (“SEC”); and two United States subsidiaries, Samsung Telecommunications America (“STA”) and Samsung Electronics America (“SEA”). The jury found SEC liable for both direct infringement and inducing infringement by STA and SEA. Samsung moves for judgment as a matter of law that SEC did not directly infringe or induce infringement, and in the alternative for a new trial. Samsung also moves for a new trial on damages on the grounds that damages were improperly calculated as a global figure for SEC and its United States subsidiaries based upon the finding that SEC was liable for patent infringement.

As to direct infringement, Samsung argues that the Korean parent company, SEC, does not commit patent infringement in the United States because when SEC sells the accused devices to the subsidiaries, title to the accused devices is transferred to STA and SEA before the SEC ships the

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devices. “Mere knowledge that a product will ultimately be imported into the United States is insufficient to establish liability [for direct patent infringement] under section 271(a).” MEMC Elec. Materials v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1377. However, Samsung’s 30(b)(6) witness Justin Denison testified that STA and SEA collect orders in the United States, that SEC manufactures the accused devices, and that SEC then ships the accused devices to Chicago and Dallas. Tr. 793:25-795:12. Furthermore, Apple’s financial expert Terry Musika testified that STA and SEA buy phones from SEC, which STA and SEA resell in the United States. Tr. 2068:14-2069:16. The jury could reasonably infer that this exchange involves more than “mere knowledge.” Indeed, STA and SEA are based in the United States, and SEC ships the phones directly into the United States, albeit having first transferred title to STA and SEA. See Tr. 790:17- 795:12 (Denison testimony). This is the same arrangement found sufficient to constitute direct infringement in Litecubes, LLC v. N. Light Prods., 523 F.3d 1353, 1371 (Fed. Cir. 2008) (“Since the American customers were in the United States when they contracted for the accused cubes, and the products were delivered directly to the United States, under North American Philips [Corp. v. American Vending Sales, Inc., 35 F.3d 1576 (Fed. Cir. 1994)] and MEMC there is substantial evidence to support the jury's conclusion that GlowProducts sold the accused cubes within the United States.”)

Furthermore, substantial evidence suggests that SEC exerted a high degree of control over SEA and STA activities in the United States, including setting wholesale prices and analyzing product returns. See, e.g., Tr. 796:14-18 (Denison testimony that “there’s a lot of conversations back and forth [that] could be construed as directions [from SEC to STA]”); PX204 at 188:9-17 (“SEC [and not STA] sets the wholes price”); PX59.2 (“Headquarters” personnel lead STA employees investigating Tab returns at Best Buy); Tr. 793:17-24 (Denison testimony that SEC is referred to as “HQ or headquarters”). This control is further evidence that the sale of infringing phones in the United States by SEA or STA can be considered infringement in the United States by SEC. Accordingly, substantial evidence in the record supports the jury’s finding that SEC directly infringed Apple’s patents. Therefore, the Court DENIES Samsung’s motion for judgment as a matter of law that SEC did not commit direct infringement, and DENIES Samsung’s motion for a

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new trial on damages on the grounds that the damages figure was based upon the incorrect finding of SEC liability.

Having found that SEC is directly liable for infringement, the Court need not reach the question of whether the jury’s findings of inducement for these same products and patents was also supported by substantial evidence. Inducement can only occur where there is direct infringement by another. See Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1274 (Fed. Cir. 2004). Here, for every patent and product for which the jury found direct infringement by STA or SEA (and thus for which inducement is possible), the jury also found, and the Court affirmed, direct infringement by SEC. Thus, SEC’s liability has been conclusively established; an additional finding on an alternative theory of liability will not change the outcome. Accordingly, the Court need not reach the question of whether substantial evidence supported the jury’s finding that SEC induced infringement by STA or SEA.

F. Samsung’s Affirmative Case

1. Claims 10 and 15 of the ’941 Patent

Samsung moves for judgment as a matter of law that Apple’s accused devices infringe claims 10 and 15 of the U.S. Patent No. 7,675,941 (“the ’941 Patent”). Samsung also moves for judgment as a matter of law that the asserted claims are not exhausted as to Apple’s accused devices. The Court has granted Apple’s motion for judgment as a matter of law that claims 10 and 15 of the ’941 Patent are invalid for anticipation. See Order granting in part and denying in part Apple’s motion for judgment as a matter of law, ECF No. 2219. Accordingly, the Court does not reach Samsung’s motions as to the ’941 Patent.

2. Claims 15 and 16 of the ’516 Patent

Samsung moves for judgment as a matter of law that Apple’s accused devices infringe claims 15 and 16 of the ’516 Patent, and that these claims are not exhausted as to Apple’s accused devices. Samsung alleges that claims 15 and 16 of the ’516 Patent are embodied by Intel chipsets which were sold to Apple, and used in Apple’s accused devices. The jury found that Samsung’s chip patents were exhausted, but not infringed. Pursuant to the jury instructions, the jury, in finding exhaustion, made implicit findings of fact: (1) that Intel’s sales to Apple were authorized

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by Samsung; (2) that those sales occurred in the United States; and (3) that if the accused products infringe, it is because the baseband chips substantially embody the ’516 and/or ’941 Patents. See Final Jury Instruction No. 34. The Court will consider exhaustion first, and will then turn to the question of infringement.

Regarding the first requirement for exhaustion, authorization, there is substantial evidence in the record to support the jury’s conclusion that Intel was licensed to sell its chips directly or indirectly to Apple (see PX81.11, PX81.23 (Samsung licenses to Intel allowing indirect sales by Intel); Tr. 3543:12-24 (Apple expert Richard Donaldson testifying that license language allowing Intel to sell “indirectly” allowed sales through Intel subsidiaries). Apple’s expert Tony Blevins testified that Intel indeed sold the chips indirectly to Apple, through an Intel subsidiary based in the United States, Intel Americas. See PX78 (Intel Americas invoices); Tr. 3170:1-4 (Blevins testimony on Intel Americas). This is exactly the type of sale that Mr. Donaldson testified was authorized by the Samsung/Intel license agreement. Thus, Mr. Donaldson’s testimony, combined with Mr. Blevins’s testimony, constitutes substantial evidence in the record that Intel’s sales to Apple were authorized.

Samsung argues that Apple failed to present evidence that Intel took any affirmative action to sublicense Intel Americas, and thus that Samsung’s authorizations to Intel did not extend to Intel America. Samsung cites Intel Corp. v. Broadcom Corp., 173 F. Supp. 2d 201, 222 (D. Del., 2001), in support of the argument that an affirmative act of sublicensing to Intel Americas would be necessary. However, the terms of the Samsung/Intel license agreement do not require any particular action on the part of Intel in order to license a subsidiary. In Broadcom, a sublicensed subsidiary was required to undertake obligations to the licensor, including cross-licensing any patents held by the subsidiary. In contrast, here there is no term in the sublicensing provision of the Samsung/Intel agreement that requires an Intel subsidiary to undertake any obligations to Samsung. See PX81.11-12, PX81.23. Instead, extension of sublicenses to subsidiaries is a right granted to Intel, with the only limitations being the duration of Intel’s own license and the requirement to inform Samsung of any licenses upon Samsung’s request. See id. Indeed, Apple argues that Intel was not required to take any affirmative action when sublicensing under the terms

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of Intel’s contract with Samsung, citing language allowing “indirect” sales by Intel, and testimony that Intel Americas “send[s] invoices and collect[s] payments for Intel products.” See Opp’n at 27. Thus, the lack of affirmative sublicensing activity does not undermine the jury’s finding that Intel’s sales to Apple through Intel Americas were authorized by Samsung.

Regarding the second exhaustion requirement, there is substantial evidence in the record that the authorized sales to Apple occurred in the United States. Location of sale is determined based upon where the essential activities of the sale occurred. MEMC, 420 F.3d at 1375-77. Apple offered evidence that both parties to the sales were based in the United States, and that payment occurred in the United States. See PX78 (Intel Americas invoices). Furthermore, the jury could reasonably infer that the negotiations between the two United States corporations occurred in the United States. This is sufficient evidence to conclude that the sale occurred in the United States.

Regarding the third requirement, Samsung argues that Apple did not present sufficient evidence to satisfy the embodiment requirement for exhaustion, given that the jury found that Apple’s products did not infringe Samsung’s chip patents. Infringement is not necessarily required for patent exhaustion. However, for a patent to be exhausted by sale of a non-infringing product, the “only and intended use” of that non-infringing product must be infringing. See Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617, 628 (2008). Here, the jury found that Apple’s accused devices do not infringe claims 15 and 16 of the ’516 Patent. Without infringement or evidence of infringing use, there can be no exhaustion. Accordingly, the Court GRANTS Samsung’s motion for judgment as a matter of law that claims 15 and 16 of the ’516 Patent are not exhausted. This ruling does not change the outcome in this case because of the jury’s non-infringement finding.

The Court need not reach the question of whether Apple’s accused devices infringe the ’516 Patent as a matter of law, because a finding of infringement would satisfy the final requirement for exhaustion – embodiment -- and thus render the patent exhausted. Thus, there would be no liability. Because a ruling on Samsung’s motion as to infringement of the ’516 Patent cannot change the outcome of this case, the Court does not reach the issues raised in that motion.

3. Samsung’s User Interface Patents: Claim 1 of the ’460 Patent; Claim 10

36

of the ’893 Patent; and Claim 9 the ’711 Patent

Samsung moves for judgment as a matter of law that Apple’s accused devices infringe claim 1 of U.S. Patent No. 7,577,460 (“the ’460 Patent”); claim 10 of U.S. Patent No. 7,456,893 (“the ’893 Patent”); and claim 9 of U.S. Patent No. 7,698,711 (“the ’711 Patent”). All three of these asserted claims include a limitation involving the use of “modes.” See ’460 Patent, claim 1 (“E-mail transmission sub-mode”); ’893 Patent claim 10 (“photographing mode;” “stored-image display mode”); ’711 Patent claim 9 (“MP3 mode”). Apple witnesses testified that Apple’s products generally use “apps” rather than “modes.” See Tr. 3196:15-3197:5 (Dr. Dourish); Tr. 3181:2-8 (Dr. Kim); Tr. 3297:4-7; 3304:12-3306:4 (Dr. Srivastava); Tr. 3232:9-3233:8 (Dr. Givargis). Cf. Tr. 2482:15-2483:2 (Samsung expert Dr. Yang testifying that “application programs and modes are different”). Samsung argues that, in spite of this testimony, the record lacked substantial evidence to support the jury’s findings that the accused Apple devices use “apps” instead of “modes.” Samsung cites contrary testimony, including a statement by an Apple expert that could be interpreted as using “app” and “mode” interchangeably. See Mot. at 29 (citing Tr. 3244:8-15). The existence of competing testimony on the distinction between “apps” and “modes” does not entitle Samsung to judgment as a matter of law; it is for the jury to weigh this competing testimony and decide whether the evidence showed that the two were different.

Moreover, there is substantial expert testimony in the record to support the jury’s conclusion that even if Apple’s products do use modes for some purposes, Apple’s products do not include any of the claimed modes. See Tr. 3305:5-9 (Dr. Srivastava explaining that “Apple products do not have the portable phone mode; they do not have a camera mode; they do not have the first E-mail transmission sub-mode; they do not have the second E-mail transmission sub- mode; they do not have the display sub-mode.”); Tr. 3180:19-3181:8 (Dr. Kim explaining that the iPhone’s “modes,” such as airplane mode, are different from the iPhone’s “apps”); Tr. 3232:25- 3233:1 (Dr. Givargis explaining the difference between “MP3 mode” on a Samsung device and a music-playing app on an Apple device). Thus, the record contains substantial evidence to support the jury’s finding that Apple’s devices do not use the “modes” defined in Samsung’s patents. As infringement requires the accused device to satisfy every limitation of the asserted claim, this

37

substantial evidence that the “mode” limitation was not satisfied for any of the patents is sufficient to sustain the jury’s finding of non-infringement. Accordingly, the Court DENIES Samsung’s motion for judgment as a matter of law that the asserted claims of the ’460, ’893, and ’711 Patents are infringed because there is sufficient evidence in the record that Apple’s accused devices do not implement their relevant user interfaces using the claimed “modes.”

G. The Trial was not manifestly unfair.

Samsung argues that: (1) the trial time limitation prejudiced Samsung; (2) allowing Apple to point out to the jury which Samsung witness were not called prejudiced Samsung; (3) Samsung’s witnesses were barred from making some arguments, where Apple’s witnesses were allowed to make other arguments; (4) Samsung was required to lay foundation for documents while Apple was not; (5) Samsung was forbidden to play advertisements while Apple was not; and (6) Samsung could not use depositions to cross-examine Apple’s witnesses while Apple was allowed to used deposition testimony during cross examination. See Mot. at 30.

None of these arguments merits a new trial. First, Samsung was offered the option of bifurcating its affirmative case, but chose not to do so. See ECF No. 1329 at 2 (minute order and case management order following July 24, 2012 hearing). Furthermore, Samsung and Apple had equal trial time and chose how to best allocate their allotted time. Id. Samsung cannot now argue that its own litigation strategy created a manifest injustice that requires a new trial. As the Court observed, “Samsung made a strategic decision to spend more time to cross-examine Apple witnesses during Apple’s affirmative case than Apple used to present its affirmative case.” 3250:22-3251:1.

Second, Ninth Circuit and other precedent allows parties to point out each other’s absent witnesses, as discussed in this Court’s Order denying Samsung’s Motion to Exclude Examination and Comment on Absent Witnesses , ECF No. 1721. The Court did not simply grant the parties carte blanche to discuss absent witnesses, but warned the parties that it would not tolerate “abuse” of missing witness arguments and continued to rule on missing witness argument objections on a case-by-case basis. See id. Moreover, Samsung pointed out in cross-examining one of Apple’s experts that the expert could have, but did not, consult with Apple’s inventors. Tr. 1878:9-15 (“By

38

the way, are you aware that many of the inventors are working for Apple and they’re readily accessible to you if you wanted to speak to them and ask them about their invention and what led to it and their insights and that sort of thing? Were you aware of that that, that’s available to you as an expert for Apple?”). Accordingly, Samsung has not established that it was unfairly prejudiced by Apple’s absent witness arguments.

Regarding Samsung’s third argument, that Samsung witnesses were unfairly prevented from making their arguments where Apple witnesses were not, the Court excluded untimely disclosed arguments regardless of which side had failed in its duty to disclose. The Court applied uniform standards in excluding testimony. See, e.g, exclusion of the entire testimony of Apple’s proposed witness Edward Sittler for untimely disclosure by Apple, ECF No. 1662 at 1; exclusion of testimony about the ’915 Patent, the ’381 Patent, and the D’308 Patent by Apple’s witness Scott Forstall because of Apple’s untimely disclosure, ECF No 1563 at 6.

Similarly, regarding Samsung’s fourth argument, both parties were required to lay foundation for admitted documents. See, e.g., Tr. 2484:21-2485:3 (sustaining Samsung’s objection for lack of foundation); Tr. 1958:2-5 (requiring Apple to lay foundation before proceeding).

Regarding Samsung’s fifth argument, that Samsung’s advertisements were unfairly excluded where Apple’s were admitted, Apple’s advertisements were relevant evidence for secondary meaning and fame, elements of Apple’s trade dress claims. See Final Jury Instructions Nos. 63 (Secondary Meaning); 66 (Fame). Samsung has not established that its advertisements were similarly relevant.

Finally, both parties were allowed to use deposition testimony, and the exclusions and admissions cited by Samsung were admitted or excluded based upon whether the theories being introduced by the parties had been disclosed timely or untimely during discovery. Samsung was allowed to play deposition testimony on cross-examination of witnesses where appropriate. See, e.g., Tr 1103:2-6 (deposition testimony played in open court during Samsung’s cross-examination of Apple witness Peter Bressler).

Accordingly, the trial was fairly conducted, with uniform time limits and rules of evidence applied to both sides. A new trial would be contrary to the interests of justice.

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IV. CONCLUSION

For aforementioned reasons, the Court GRANTS Samsung’s motion for judgment as a matter of law that claims 15 and 16 of the ’516 Patent are not exhausted. The Court also grants judgment as a matter of law that Samsung’s acts of patent infringement were not willful. However, for the reasons discussed below, the Court DENIES Samsung’s motion for judgment as a matter of law in all other respects, and DENIES Samsung’s motion for a new trial.

IT IS SO ORDERED. Dated: January 29, 2013

[signature]
LUCY H. KOH
United States District Judge

___________
1 Samsung has also moved for remittitur or a new trial on damages. These claims will be addressed in a separate order.

2 Samsung appropriately addressed obviousness as a legal conclusion in the context of its motion on non-jury claims. However, the Court addresses obviousness in this Order, along with other invalidity arguments, because obviousness turns on the jury’s implied findings of fact in support of non-obviousness, which the Court evaluates under the “substantial evidence in the record” standard. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1357 (Fed. Cir. 2012).

3 As the designs in the iPhone and iPhone 3G trade dress are similar and apply to different versions of the same product, the iPhone, the parties rely on the same evidence in analyzing the functionality of both trade dresses. The Court will do the same.

4 Samsung has also moved for a new trial on validity. However, Samsung’s motion for a new trial is based upon Samsung’s allegation that despite correct instruction, the jury applied an incorrect legal standard to evaluate patent validity. This argument has already been addressed in the Court’s Order re: Juror Misconduct. See ECF No. 2198.

5 Samsung does not move for judgment as a matter of law that claim 8 of the ’915 Patent is invalid based on the Han reference, but Apple’s opposition discusses the Han reference.

6 This standard applies only to patents. To the extent that the parties suggest that the Court should consider willfulness regarding trade dress dilution, the Court declines to do so. Willfulness is part of dilution inquiry, and a finding of willfulness is required to award remedies for trade dress dilution. Accordingly, the jury’s findings on willfulness as to trade dress dilution are addressed in the section on trade dress, and are not independently considered here, in the discussion of willful patent infringement.

7 Of course, a jury’s finding of no subjective willfulness must also be supported by substantial evidence in the record. This question was briefed in Apple’s motion for judgment as a matter of law, and is addressed in this Court’s separate Order on that motion.

8 Apple argues that Samsung inappropriately argued non-willfulness in Samsung’s motion on non-jury claims. Although the Court addresses willfulness in this Order, in light of Bard, it was appropriate for Samsung to raise the objective prong of willfulness in Samsung’s motion on non-jury claims.

9 Samsung has also directed the Court to the PTO’s recent non-final action rejecting claims 1-20 for anticipation in an ex parte reexamination. See ECF No. 2079. However, the Federal Circuit “has stressed that initial rejections by the PTO of original claims that were later confirmed on reexamination is so commonplace that they hardly justify a good faith belief in the invalidity of the claims.” Hoescht Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1584 (Fed. Cir. 1996); id. at 1584 (stating that a grant of a request for reexamination does not establish a likelihood of patent invalidity); see also Q.G. Prods. v. Shorty, Inc., 992 F.2d 1211, 1213 (Fed. Cir. 1993) (noting that initial patent “rejections often occur as a part of the normal application process”). Accordingly, the Court does not rely on the PTO’s non-final action in ruling on Samsung’s motion.

10Here, Samsung has directed the Court to another non-final PTO action rejecting claim 8 of the ’915 Patent. See ECF No. 2202. For the reasons explained above, the Court does not consider this PTO non-final action in ruling on Samsung’s present motion.

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Here's 2221, the Order Denying Damages Enhancements, as text:

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

APPLE, INC., a California corporation,

Plaintiff,

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.

_________________

Case No.: 11-CV-01846-LHK
ORDER DENYING DAMAGES ENHANCEMENTS

_______________

In this patent case, a jury found that a range of Samsung products infringe several of Apple’s design and utility patents, and that several Samsung products dilute Apple’s trade dress. Apple now seeks damages enhancements under two sources of authority: the Patent Act, 35 U.S.C. § 284, and the Lanham Act, 15 US.C. § 1117(a). See Apple’s motion for a permanent injunction and for damages enhancements (“Mot.”), ECF No. 1982.

Though § 284 permits the Court to increase the damages “up to three times the amount found or assessed,” such an award is only appropriate where infringement was willful. See Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 682 F.3d 1003, 1005 (Fed. Cir. 2012). This Court has already found that the objective willfulness inquiry is not satisfied. See Order on Apple’s motion for judgment as a matter of law, ECF No. 2219; Order on Samsung’s motion for

1

judgment as a matter of law, ECF No. 2220. Accordingly, there can be no damages enhancement under the Patent Act, and the Court need not consider Apple’s arguments that other factors favor enhancement under the Patent Act.

This leaves the question of Lanham Act enhancements. The Court must first decide whether, when the jury awarded damages for a given product that both infringes patents and dilutes trade dress, without specifying which portion of the damages is for which injury, the award can be increased under the authority of the Lanham Act. If this is possible, the Court must then determine whether such enhancements are warranted here.

I. Mixed Award

The Lanham Act permits a court to “enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount.” 15 U.S.C. § 1117(a). This type of enhancement is intended only to compensate a plaintiff for additional losses not compensated by the existing award, not to punish a defendant. Id. All six products that the jury found to dilute trade dress were also found to infringe design patents. The jury returned its award, however, by product, rather than by claim. Thus, for each product that dilutes Apple’s trade dress, the jury returned a single damages number that also incorporates design patent infringement damages. This is consistent with the Federal Circuit’s direction that in cases of more than one infringement per product, plaintiffs are entitled to recover only once for each infringing sale. See Aero Products Intern., Inc., v. Intex Recreation Corp., 466 F.3d 1000, 1019 (Fed. Cir. 2006).

Samsung’s chief argument that the Court may not increase Apple’s award under the Lanham Act’s enhancement provision is that 35 U.S.C § 289, which authorizes infringer’s profits as damages for design patent infringement, forbids enhancement. See Samsung’s opposition to Apple’s motion for a permanent injunction and damages enhancement (“Opp’n”), ECF No. 2054, at 23 (citing 35 U.S.C. § 289). Samsung is correct that an award of infringers’ profits for design patent infringement, as authorized by § 289, is not subject to enhancement. However, there are two problems with Samsung’s argument that § 289 forbids enhancement of the combined award. First, the Court cannot determine whether the jury made its award pursuant to 18 U.S.C. § 284, the

2

general patent damages provision, which does not contain the prohibition on enhancement, or whether, instead, its award constituted the special infringer’s profits award authorized for design patent infringement by § 289. Second, it does not follow that an award made for multiple types of infringement cannot be enhanced simply because the award might have been made in part pursuant to § 289. The parties cite, and the Court is aware of, no case considering whether an award made for both design patent infringement and trade dress dilution may be enhanced under the Lanham Act’s enhancement provisions.

As an initial matter, Samsung’s attempts to show that the jury’s award must have constituted infringer’s profits are unavailing. The Court will not speculate as to how, precisely, the jury calculated its damages award. The Court does, however, find it reasonable to assume that an award made for a product found to infringe multiple separate rights was intended to compensate Apple for losses stemming from all of the violations the jury found for that product. It would be illogical to suggest that the jury found that a particular product both infringed a design patent and diluted trade dress, but awarded damages only for the design patent, while declining to compensate Apple for its acknowledged trade dress losses. Further, under Federal Circuit precedent, an award made for a given product does not necessarily correspond to one specific intellectual property right, but rather to one sale of the infringing product, even if that product infringed multiple rights. See Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277 (Fed. Cir. 2002) (holding that an award of infringer’s profits made on a finding of design patent infringement also compensated the plaintiff for infringement of a utility patent by the same product). Thus, the award need not be directed to one injury or the other, but rather could be for both simultaneously.

Instead, the Court proceeds on the reasonable assumption that the award for each of the six products found to dilute trade dress was made pursuant to both the Patent Act and to the Lanham Act. Whether the patent damages were awarded under § 284 or § 289, the Court cannot determine. However, because the Court determines, as discussed below, that in neither case would the award prevent an enhancement under the Lanham Act, this uncertainty is of no moment.

As the jury may have made its award in part pursuant to § 289, the question is whether § 289’s prohibition on enhancements could trump the Lanham Act’s authorization of enhancements.

3

The Court finds that it does not. Section 289 says that a party “shall not twice recover the profit made from the infringement.” The parties agree that an award made only pursuant to § 289 is thus not subject to enhancement. See Mot. at 28; see also Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 824 (Fed. Cir. 1992). However, nothing in § 289 suggests that it has any effect on awards made pursuant to other statutes. Indeed, § 289 explicitly says that “[n]othing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title.” Id. The referenced “title” is Title 35 of the United States Code, governing patents. Though the Lanham Act is part of Title 15, governing commerce and trade, Congress’s explicit direction that other patent remedies not be foreclosed strongly suggests that the limitations of § 289 were not intended to prevent recovery for any injuries beyond design patent infringement, be they patent-related injuries or other intellectual property-related injuries. Further, § 289 specifically addresses double recovery “from the infringement” of a design patent. Apple’s requested Lanham Act enhancements are not “from the infringement” of the patents addressed by § 289; rather, Apple is seeking enhancement of damages from trade dress dilution. The Court thus finds that nothing in § 289 forbids the application of the Lanham Act’s enhancement provision to an award made for both design patent and trade dress injuries. Accordingly, the awards made for the six products found to dilute Apple’s trade dresses are eligible for enhancements under the Lanham Act.

II. Lanham Act Enhancements

15 U.S.C. § 1117(a) provides, in relevant part:

In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty.
Here, the jury has awarded $382 million in damages for six products found to have diluted Apple’s trade dresses. Apple has argued that the $382 million the jury awarded for these six products is not adequate to address Apple’s harms, and that the Court should award an additional

4

$400 million. Mot. at 25. The primary uncompensated harm Apple has identified is its loss of market share, which will, Apple argues, cost Apple sales of phones and other products going forward.

Apple argues that a damages enhancement is warranted because Apple has not been fully compensated for Samsung’s “ill-gotten gains,” and notes that Samsung’s profits “would be billions less” if it had not seen the market share “head start” and “stickiness’ that Apple attributes to Samsung’s dilution of Apple’s trade dress. Mot. at 26. Apple then proceeds to calculate the profits it would have made between July 2010 and June 2012, but for Samsung’s diluting and infringing phones. These arguments fail for two reasons.

First, the calculations that Apple provides in arguing for a Lanham Act enhancement are for profits already lost on existing sales, which, by Apple’s own admission, do “not account for the sales of any downstream or follow-on products and services from Apple’s product ecosystem.” Mot. at 27. Rather, they are calculations of lost profits for the same period in which the jury was considering Apple’s losses. Thus, it is not clear why Apple believes that these losses are uncompensated. To the extent that Apple does address lost downstream sales, Apple discusses only Samsung’s gains, and makes no attempt to identify any specific losses Apple has suffered. See Mot. at 26. Lanham Act enhancements are designed to compensate plaintiffs for losses, not to disgorge ill-gotten gains. See 5 U.S.C. § 1117(a). Apple identifies only losses for which the jury has already awarded compensation, and future gains to Samsung that are not clearly tied to any losses on Apple’s part. Thus, Apple has not clearly identified any uncompensated loss for which a Lanham Act enhancement would be appropriate.

Second, Apple has made no attempt to disaggregate losses caused by dilution, for which a court may permissibly award additional damages, from losses caused by patent infringement for which the Court has found no enhancement can be awarded. As explained above, a single award may compensate for more than one type of harm, but this does not mean that all of Apple’s losses were caused equally by all of Samsung’s intrusions into Apple’s intellectual property. Apple has been quite clear elsewhere in its briefing that Apple believes its downstream losses to be attributable, at least in part, to Samsung’s patent infringement. See Mot. at 10 (discussing the

5

difficulty in compensating Apple for loss of downstream sales due to “Samsung’s adjudicated infringement and dilution”) (emphasis added). Thus, even if Apple had clearly shown uncompensated loss, it would not follow that the loss was due to trade dress dilution, and thus that a Lanham Act enhancement would be an appropriate response.

Further, Apple is making two inconsistent arguments: first, that money cannot compensate Apple for the harm its lost market share may cause going forward, Mot. at 9-10, and second, that the Court should award $400 million to compensate Apple for lost market share, Mot. at 25-28. If an amount cannot be calculated to compensate for this loss, then it is unclear why $400 million would be an appropriate award.

The Lanham Act and the cases interpreting it are clear that the Court has discretion where enhancements are concerned. See, e.g., Dist. Re/Max N. Cent., Inc. v. Cook, 64 F. App'x 562, 565 (7th Cir. 2003) (“If the circumstances warrant, it is solely within the district court's discretion to enhance damages under the Lanham Act.”). It does not require an award of enhanced damages, even where specific amounts cannot easily be quantified, but rather permits courts, in their discretion, to award additional damages to avoid injustice. See, e.g., JTH Tax, Inc. v. H & R Block E. Tax Services, Inc., 245 F. Supp. 2d 749, 755 (E.D. Va. 2002) (declining to award a damages enhancement under § 1117(a) despite some evidence of undercompensation). Here, a jury has made a very large award in a case where the trade dress dilution claim concerns product design – a doctrine at the outer reaches of trademark and trade dress law. See, e.g., I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 50 (1st Cir. 1998) (“We doubt that Congress intended the reach of the dilution concept under the FTDA to extend this far and our doubts are heightened by the presence of constitutional constraints.”); Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 383 (7th Cir. 1996) (“Although we have held that trademark protection can extend to product configurations consonant with the patent laws, a sensitive application of the principles governing trademark recognition is necessary to relieve the undeniable tension between the two bodies of law in this area.”) (internal quotation marks and citation omitted). Further, the jury found that all six of the products that dilute trade dress also infringe Apple’s design patents. Thus, the jury had ample opportunity to compensate Apple for Samsung’s use of its product designs. Given that Apple has

6

not clearly shown how it has in fact been undercompensated for the losses it has suffered due to Samsung’s dilution of its trade dress, this Court, in its discretion, does not find a damages enhancement to be appropriate.

IT IS SO ORDERED.

Dated: January 29, 2013

[signature]
LUCY H. KOH
United States District Judge

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