17-09-08 Samsung Design Patent Damages Brief

Case 5:11-cv-01846-LHK Document 3521 Filed 09/08/17 Page 1 of 30

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP

John B. Quinn (Bar No. 90378)
2 [email protected]
William C. Price (Bar No. 108542)
3 [email protected]
Michael T. Zeller (Bar No. 196417)
4 [email protected]
865 S. Figueroa St., 10th Floor
5 Los Angeles, California 90017
Telephone: (213) 443-3000
6 Facsimile: (213) 443-3100
7 Kathleen M. Sullivan (Bar No. 242261)

[email protected]
8 Kevin P.B. Johnson (Bar No. 177129)
[email protected]
9 Victoria F. Maroulis (Bar No. 202603)
[email protected]
10 555 Twin Dolphin Drive, 5th Floor
Redwood Shores, California 94065-2139
11 Telephone: (650) 801-5000
Facsimile: (650) 801-5100
12
Attorneys for Samsung Electronics Co., Ltd.,
13 Samsung Electronics America, Inc., and Samsung
Telecommunications America, LLC
14
UNITED STATES DISTRICT COURT
15
NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
16
APPLE INC., a California corporation, CASE NO. 11-cv-01846-LHK
17
Plaintiff, SAMSUNGS OPENING BRIEF
18 PURSUANT TO ORDER OF JULY 28,
vs. 2017 REGARDING NECESSITY OF NEW
19 TRIAL ON DESIGN-PATENT DAMAGES
SAMSUNG ELECTRONICS CO., LTD., a
20 Korean business entity; SAMSUNG Hearing:
ELECTRONICS AMERICA, INC., a New
21 York corporation; SAMSUNG Date: October 12, 2017
TELECOMMUNICATIONS AMERICA, Time: 1:30 p.m.
22 LLC, a Delaware limited liability company, Place: Courtroom 8, 4th Floor
Judge: Hon. Lucy H. Koh
23 Defendants.
24
25
26
27
28
Case No. 11-cv-01846-LHK

SAMSUNGS OPENING BRIEF RE JULY 28, 2017 ORDER
1 TABLE OF CONTENTS
2 Page
3 TABLE OF AUTHORITIES ............................................................................................................ ii
4 INTRODUCTION..............................................................................................................................1
5 ARGUMENT .....................................................................................................................................3
6 RESPONSES TO THE SEVEN ISSUES THAT THE COURT IDENTIFIED ................................3
7 What is the test for identifying the article of manufacture for purposes of
289? ............................................................................................................................3
8
Is the identification of an article of manufacture a factual question, a legal
9 question, or a mixed question of law and fact? What issues should be
decided by a jury? What issues should be decided by the Court?..............................7
10
Who bears the burden of proof to identify the relevant article of
11 manufacture for purposes of 289? ...........................................................................8
12 Who bears the burden of proof to demonstrate total profits on an article of

manufacture for purposes of 289? .........................................................................11
13
Identify the relevant article of manufacture for the D677 patent, D087
14 patent, and D305 patent. .........................................................................................12
15 Identify evidence in the record supporting each partys asserted article of

manufacture for the D677 patent, D087 patent, and D305 patent........................12
16
The Scope Of The Design Patents................................................................12
17
The Accused Products And Scope Of Alleged Infringement.......................15
18
Identify evidence in the record supporting the total profit for each partys
19 asserted article of manufacture for the D677 patent, D087 patent, and
D305 patent. ............................................................................................................22
20
CONCLUSION ................................................................................................................................24
21
22
23
24
25
26
27
28
-i- Case No. 11-cv-01846-LHK

1 TABLE OF AUTHORITIES
2
Cases
3
Abbott Labs. v. Syntron Bioresearch Inc.,
4 2001 WL 34082555 (S.D. Cal. Aug. 24, 2001) .................................................................. 16
5 Alaska Dept of Envtl. Conserv. v. EPA,

540 U.S. 461 (2004) ............................................................................................................ 11
6
Apple Inc. v. Samsung Electronics Co., Ltd.,
7 678 F.3d 1314 (Fed. Cir. 2012)....................................................................................... 4, 16
8 Astrue v. Ratliff,
560 U.S. 586 (2010) ............................................................................................................ 10
9
Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,
10 489 U.S. 141 (1989) .............................................................................................................. 3
11 Boyle v. United Techs. Corp.,

487 U.S. 500 (1988) ............................................................................................................ 24
12
Clem v. Lomeli,
13 566 F.3d 1177 (9th Cir. 2009)............................................................................................. 22
14 Cornell Univ. v. HewlettPackard Co.,

609 F. Supp. 2d 279 (N.D.N.Y. 2009) ................................................................................ 11
15
Dang v. Cross,
16 422 F.3d 800 (9th Cir. 2005)............................................................................................... 22
17 Don Burton, Inc. v. Aetna Life & Cas. Co.,

575 F.2d 702 (9th Cir. 1978)............................................................................................... 20
18
Door-Master Corp. v. Yorktowne, Inc.,
19 256 F.3d 1308 (Fed. Cir. 2001)..................................................................................... 4, 5, 8
20 Dow Chem. Co. v. Mee Indus., Inc.,

341 F.3d 1370 (Fed. Cir. 2003)........................................................................................... 10
21
Dynetix Design Sols., Inc. v. Synopsys, Inc.,
22 2013 WL 4538210 (N.D. Cal. Aug. 22, 2013).................................................................... 10
23 Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008)............................................................................................... 7
24
Facebook, Inc. v. Power Ventures, Inc.,
25 2017 WL 1650608 (N.D. Cal. May 2, 2017) ...................................................................... 22
26 Finjan, Inc. v. Secure Computing Corp.,

626 F.3d 1197 (Fed. Cir. 2010)........................................................................................... 23
27
Gantt v. City of Los Angeles,
28 717 F.3d 702 (9th Cir. 2013)............................................................................................... 22
-ii- Case No. 11-cv-01846-LHK

1 Golden Bridge Tech. v. Apple Inc.,

2014 WL 2194501 (N.D. Cal. May 18, 2014) .................................................................... 10
2
Gorham v. White,
3 81 U.S. 511 (1871) ................................................................................................................ 3
4 In re Hruby,
373 F.2d 997 (C.C.P.A. 1967)............................................................................................. 21
5
Invitrogen Corp. v. Clontech Labs., Inc.,
6 429 F.3d 1052 (Fed. Cir. 2005)............................................................................................. 7
7 IP Innovation L.L.C. v. Red Hat, Inc.,

705 F. Supp. 2d 687 (E.D. Tex. 2010) ................................................................................ 10
8
Lindy Pen Co. v. Bic Pen Corp.,
9 982 F.2d 1400 (9th Cir. 1993)............................................................................................. 10
10 Lucent Techs., Inc. v. Gateway, Inc.,

580 F.3d 1301 (Fed. Cir. 2009)....................................................................................... 8, 11
11
Meyer Intellectual Props. Ltd. v. Bodum, Inc.,
12 690 F.3d 1354 (Fed. Cir. 2012)........................................................................................... 16
13 Miles v. Apex Marine Corp.,

498 U.S. 19 (1990) .............................................................................................................. 10
14
Minnesota Min. & Mfg. Co. v. Johnson & Johnson Orthopedics, Inc.,
15 976 F.2d 1559 (Fed. Cir. 1992)............................................................................................. 5
16 O2 Micro Intl Ltd. v. Beyond Innovation Tech. Co.,

521 F.3d 1351 (Fed. Cir. 2008)............................................................................................. 7
17
OddzOn Prod., Inc. v. Just Toys, Inc.,
18 122 F.3d 1396 (Fed. Cir. 1997)............................................................................................. 5
19 Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC,
739 F.3d 694 (Fed Cir. 2014).............................................................................................. 14
20
Pearson v. Duane,
21 71 U.S. (4 Wall.) 605 (1866)................................................................................................. 7
22 Polar Bear Prods., Inc. v. Timex Corp.,

384 F.3d 700 (9th Cir. 2004)................................................................................................. 9
23
Samsung Elecs. Co. v. Apple Inc.,
24 137 S. Ct. 429 (2016) ................................................ 3, 4, 5, 6, 7, 8, 9, 11, 13, 14, 15, 16, 21
25 Schaffer v. Weast,
546 U.S. 49, 57 (2005) .................................................................................................... 8, 11
26
SmithKline Diagnostics, Inc. v. Helena Labs. Corp.,
27 926 F.2d 1161 (Fed. Cir. 1991)................................................................................... 7, 8, 11
28
-iii- Case No. 11-cv-01846-LHK

1 State Contracting & Engg Corp. v. Condotte Am., Inc.,

346 F.3d 1057 (Fed. Cir. 2003)........................................................................................... 24
2
In re Stevens,
3 173 F.2d 1015 (C.C.P.A. 1949)......................................................................................... 3, 8
4 SunEarth, Inc. v. Sun Earth Solar Power Co.,

839 F.3d 1179 (9th Cir. 2016)............................................................................................. 10
5
Transclean Corp. v. Bridgewood Servs., Inc.,
6 290 F.3d 1364 (Fed. Cir. 2002)........................................................................................... 11
7 United States v. Dreyer,

804 F.3d 1266 (9th Cir. 2015)............................................................................................. 22
8
Voda v. Cordis Corp.,
9 536 F.3d 1311 (Fed. Cir. 2008)........................................................................................... 22
10 In re Zahn,
617 F.2d 261 (C.C.P.A. 1980)........................................................................................... 4, 8
11
12 Statutory Authorities
13 15 U.S.C. 1117(a)........................................................................................................................... 9
14 17 U.S.C. 504 ................................................................................................................................. 9
15 35 U.S.C. 171(a)....................................................................................................................... 3, 15
16 35 U.S.C. 289 ............................................................................................................................... 10
17
Treatises
18
1 MCCORMICK ON EVIDENCE 54 (7th ed. 2016)............................................................................ 16
19
2 MCCORMICK ON EVIDENCE 337 (7th ed. 2016).......................................................................... 11
20
21 Legislative Materials
22 H.R. Rep. No. 49-1966 (1886) .................................................................................................... 9, 11
23
Additional Authorities
24
88 C.J.S. Trial 188........................................................................................................................ 16
25
26
27
28
-iv- Case No. 11-cv-01846-LHK

1 INTRODUCTION
2 Samsung respectfully submits this memorandum of law in response to the Courts July 28,
3 2017 Order (the Order, Dkt. 3509). In the Order, the Court ruled that Samsung preserved its
4 argument that an article of manufacture under Section 289 can be less than an entire product as sold
5 (id. at 13-27, 32) and that the juries that awarded Apple $399 million in design-patent damages were
6 not provided an instruction that stated the law as provided by the United States Supreme Court
7 decision (id. at 22). The Court, however, deferred consideration of whether Samsung is entitled to
8 a new trial to determine design-patent damages in light of the Supreme Courts decision. Id. at 32.
9 The answer to that question is Yes: The Court should vacate the $399 million design-
10 patent award and grant a new trial. In no event can the Court forego a new trial and allow the
11 existing $399 million award to stand, because the evidence does not establish as a matter of law
12 that the entirety of Samsungs phones are the relevant article of manufacture. Dkt. 3509 at 29. The
13 only way the Court could forego a new trial is by ruling that Apple is entitled to no infringers profits
14 because it was Apples burden to prove total profit from the relevant articles of manufacture, Apple
15 failed to prove any article of manufacture less than the entire phones, and the entire phones cannot
16 be the article of manufacture on the record here in light of the Supreme Courts decision.
17 If the Court does not so rule, then there must be a new trial, and the only remaining issue is
18 what it should decide. Samsung believes that the identity of the relevant articles of manufacture
19 here is clear based on the undisputed evidence, including Apples own admissions. Samsung thus
20 urges the Court to issue an order identifying the articles of manufacture as a matter of law and grant
21 a new jury trial limited to the quantum of profit from those articles. The proper answers to the seven
22 questions the Court identified clearly support this approach. And this approach would greatly
23 streamline the case. If the Court does not take this approach, then at a minimum it should grant a
24 new jury trial on both the relevant articles of manufacture and the quantum of profit.
25 As the detailed answers below to the Courts seven questions explain, the relevant article of
26 manufacture under Section 289 is the specific part, portion, or component of a product to which the
27 patented design is applied. That article is determined by comparing the scope of the design patent
28 claim to the accused product. While identifying the article of manufacture to which a patented
-1- Case No. 11-cv-01846-LHK

1 design is applied is ultimately a question of fact for the jury, that determination must be guided by
2 the scope of the design patents claim, which is a question of law for the court.
3 Where, as here, design patents clearly delimit the claimed designs scope, and there are no
4 disputes of material fact as to the components to which the patented designs are applied, the court
5 should identify the relevant article(s) of manufacture itself as a matter of law and limit the jurys
6 determination to the quantum of profit. Here, the scope of Apples claimed designs is both clear
7 and narrow. Moreover, there is voluminous undisputed evidence, including Apples own
8 admissions, that makes clear to what components of the phones those designs were applied. The
9 Court therefore should rule as a matter of law pre-trial that the relevant articles of manufacture in
10 this case are:
11 the phones round-cornered, glass front face (D677);

12 the phones round-cornered glass front face plus surrounding rim or bezel (D087); and
13 the phones display screen while displaying the single claimed array of GUI icons
14 (D305).
15 At a minimum, the Court should rule as a matter of law pre-trial that the relevant articles of
16 manufacture are not the entire phones as sold. Apples patented designs cover only discrete portions
17 of a smartphones exterior. As a matter of law, those designs were not and could not have been
18 applied to Samsungs entire phones, which indisputably include many components, both internal
19 and external, that do not correspond to the claimed attributes of Apples designs.
20 Identifying the articles of manufacture now (or at least resolving that they are not and cannot
21 be Samsungs entire phones) would yield substantial efficiencies for the remaining proceedings in
22 this case. It would greatly streamline fact and expert discovery, eliminate the need for dispositive
23 motions on the identity of the articles of manufacture, and leave fewer issues to be resolved by the
24 jury at trial.
25 Accordingly, the Court should vacate the $399 million design-patent award, determine the
26 identity of the relevant articles of manufacture based on the scope of the patents and the undisputed
27 record, and grant a new trial limited to the quantum (if any) of design-patent damages.
28
-2- Case No. 11-cv-01846-LHK

1 ARGUMENT
2 RESPONSES TO THE SEVEN ISSUES THAT THE COURT IDENTIFIED
3 Samsung addresses in turn the seven issues that the Court identified in the Order (at 32-33):
4 What is the test for identifying the article of manufacture for purposes of
289?
5
Answer: The relevant article of manufacture is the specific part, portion, or component of
6
a product to which the patented design is applied. The article is identified by comparing the claimed
7
attributes of the design patent to the accused product to identify the specific part, portion, or
8
component of the product that corresponds to the patents claim. The relevant article of manufacture
9
does not include any part, portion, or component of a product that is disclaimed by the patent or that
10
does not correspond to the claimed attributes of the patented design, including any part, portion, or
11
component of a product that is not considered when determining infringement.
12
Analysis: To identify the article of manufacture to which the infringed design has been
13
applied, as the Supreme Court has directed, Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429, 434
14
(2016), requires examination of (1) the patent, which defines and limits the scope of the patented
15
design, and (2) the accused product, to determine the part, portion, or component of the product that
16
corresponds to the scope of the patented design.
17
(1) The Patent: The scope of a design patent, as depicted in the patent illustration and
18
construed by a court, will principally determine the identity of the article of manufacture. The
19
illustrations of a design patent dictate the scope of its claim and thus establish whether the design
20
extends to an entire product or a product component. A design patent claim may extend only to the
21
ornamental appearance of an article of manufacture, 35 U.S.C. 171(a), meaning aspects
22
contributing to an aesthetically pleasing appearance. Bonito Boats, Inc. v. Thunder Craft Boats,
23
Inc., 489 U.S. 141, 148 (1989); see also Gorham v. White, 81 U.S. 511, 524-25 (1871). It may not
24
extend to features concealed or obscure[d] in normal use. In re Stevens, 173 F.2d 1015, 1016
25
(C.C.P.A. 1949); see Samsung, 137 S. Ct. at 435 (noting that Section 289 must be read to be
26
consistent with Section 171(a)).
27
28
-3- Case No. 11-cv-01846-LHK

1 In modern practice, design patents commonly issue on partial claims to discrete portions of
2 a products design, and expressly disclaim the remainder of the product, including by the use of
3 broken lines in the patent figure. See, e.g., Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308,
4 1313 (Fed. Cir. 2001); In re Zahn, 617 F.2d 261, 263 (C.C.P.A. 1980). For example, some design
5 patents claim only the design for the heel of a shoe (D677,041), the waistband on a pair of shorts
6 (D652,199), the bed of an asphalt paver (D652,432), or buttons on a video game controller
7 (D667,892). Such a partial claim is an admission by the patentee that the patented design covers
8 less than the entire product. See, e.g., Apple Inc. v. Samsung Electronics Co., Ltd., 678 F.3d 1314,
9 1317 (Fed. Cir. 2012); Door-Master, 256 F.3d at 1313. Indeed, those seeking design patents often
10 engage in the standard and well-accepted patent gamesmanship of filing multiple partial design-
11 patent claims for discrete portions of the same product so as to maximize their possible infringement
12 claims against competitors. Perry J. Saidman, The Crisis in the Law of Designs, 89 J. PAT. &
13 TRADEMARK OFF. SOCY 301, 319-22 (2007).
14 (2) The Product. Once the scope of the patent claim is determined, the relevant article of
15 manufacture is further identified by comparing the patent claim to the part, portion, or component
16 of the accused product that corresponds to the scope of the patented design. If a patented design is
17 applied to a single-component product, such as a dinner plate, Samsung, 137 S. Ct. at 432, then
18 the article of manufacture is necessarily the entire product. But if a product is a multicomponent
19 product, such as a kitchen oven, id., and the patent claims only a design for a part, portion, or
20 component of such a product, then the relevant article of manufacture to which the design is
21 applied is the specific part, portion, or component of the product that corresponds to the claimed
22 attributes of the patented design, and not the entire product. See id. at 435 (While the design must
23 be embodied in some articles, the statute is not limited to designs for complete articles, or discrete
24 articles, and certainly not to articles separately sold .) (quoting Zahn, 617 F.2d at 268).
25 Comparing the scope of the patent claim to the accused product for article-of-manufacture
26 purposes is closely analogous to comparing the scope of the patent claim to the accused product in
27 infringement analysis. Whether a design patent is infringed is determined by first construing the
28 claim to the design, when appropriate, and then comparing it to the design of the accused device.
-4- Case No. 11-cv-01846-LHK

1 OddzOn Prod., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404-05 (Fed. Cir. 1997); see Minnesota Min.
2 & Mfg. Co. v. Johnson & Johnson Orthopedics, Inc., 976 F.2d 1559, 1570 (Fed. Cir. 1992)
3 (determining infringement requires a two step analysisfirst, the language of the claim at issue
4 must be interpreted to define its proper scope and, second, the evidence before the court must be
5 examined to ascertain whether the claim has been infringed, whether the claim reads on the
6 accused product or process.). The infringement test involves a comparison of the specific claim of
7 a patented design to the corresponding portion of an accused product, disregarding other product
8 attributes. Door-Master, 256 F.3d at 1312-14; see Samsung Elecs. Co. v. Apple Inc., No. 15-777,
9 Br. for Respondent 53 (July 29, 2016) (Apple admitting that, to prove infringement of a design
10 patent for a cupholder in a car, the patentee would ask the jury to compare its cupholder design
11 with the accused cupholder, not with the car in which the cupholder appears). Just as product
12 components that do not correspond to the claimed attributes of a design patent are not relevant to
13 infringement, they are not relevant to infringers profit under Section 289.
14 Application: As more fully explained below (see infra, at 13-15), the Apple design patents
15 here are narrow, partial design patents. Indeed, Apple engaged in the standard and well-accepted
16 patent gamesmanship of obtaining at least thirteen design patents covering the external design
17 features of the original iPhone, one of which is for the entire external case of an iPhone (U.S. Patent
18 No. D580,387 (filed Jan. 5, 2007)) and twelve of whichincluding the patents-in-suitare for
19 designs covering only discrete, partial features of the overall iPhone, using broken lines to disclaim
20 the remainder of the product.1 Similarly, Apple obtained at least twenty-one design patents covering
21
22
23
24
1
U.S. Patent No. D558,756 (filed Jan. 5, 2007); U.S. Patent No. D558,757 (filed Jan. 5, 2007);
25 U.S. Patent No. D558,758 (filed Jan. 5, 2007); U.S. Patent No. D581,922 (filed July 30, 2007); U.S.
Patent No. D586,800 (filed July 30, 2007); U.S. Patent No. D593,087 (filed July 30, 2007); U.S.
26 Patent No. D601,558 (filed Feb. 13, 2009); U.S. Patent No. D613,736 (filed May 12, 2009); U.S.
27 Patent No. D618,677 (filed Nov. 18, 2008); U.S. Patent No. D618,678 (filed Feb. 23, 2009); U.S.
Patent No. D627,343 (filed Sept. 15, 2009); U.S. Patent No. D634,319 (filed June 21, 2010).
28
-5- Case No. 11-cv-01846-LHK

1 various designs for graphic user elements in the original iPhone,2 and then pursued infringement in
2 this case based on a single one of those designs claiming a single, specific grid of icons.
3 The corresponding components of the accused products here accordingly cannot be the entire
4 phones as sold. A patented design for a smartphones front face or front face and bezel corresponds
5 only to the front face or the front face and bezel in the accused productand is not applied to other
6 exterior components, or to the circuits, microchips, speakers, processors and other internal, non-
7 design features that give a smartphone its functionality. See Samsung, No. 15-777, Tr. 40 (Roberts,
8 C.J.) (Maybe Im not grasping the difficulties in the case. It seems to me that the design is applied
9 to the exterior case of the phones. Its not applied to theall the chips and wires. So there
10 shouldthere shouldnt be profits awarded based on the entire price of the phone.). The same is
11 true, a fortiori, for a design patent for a single display of icons that appears only fleetingly on a
12 display screen.
13 Apples infringement case at trial confirms these conclusions. Apple pointedly limited its
14 infringement case to the narrow, discrete attributes of the claimed designs, insisting that the jury and
15 the Court should disregard all other aspects of the patent drawings and Samsungs products that
16 might have pointed to material differences. Dkt. 1611 at 1051; Dkt. 1612 at 1421-24; see also infra,
17 at 19-20. Components of the accused products that are disregarded for purposes of infringement
18 cannot be part of the relevant article of manufacture for purposes of Section 289 damages.
19
20
21
22 2
U.S. Patent No. D621,845 (filed July 30, 2007); U.S. Patent No. D621,849 (filed July 30,
2007); U.S. Patent No. D627,790 (filed Aug. 20, 2007); U.S. Patent No. D624,555 (filed May. 6,
23
2008); U.S. Patent No. D617,334 (filed July 15, 2008); U.S. Patent No. D618,248 (filed Sept. 23,
24 2008); U.S. Patent No. D652,428 (filed Apr. 30, 2010); U.S. Patent No. D642,588 (filed May 19,
2010); U.S. Patent No. D644,239 (filed May 19, 2010); U.S. Patent No. D686,218 (filed June 14,
25 2010); U.S. Patent No. D668,666 (filed June 14, 2010); U.S. Patent No. D659,160 (filed June 21,
2010); U.S. Patent No. D660,315 (filed June 21, 2010); U.S. Patent No. D665,818 (filed June 21,
26 2010); U.S. Patent No. D652,054 (filed June 21, 2010); U.S. Patent No. D651,610 (filed June 30,
27 2010); U.S. Patent No. D668,263 (filed Oct. 18, 2010); U.S. Patent No. D651,215 (filed Oct. 22,
2010); U.S. Patent No. D675,639 (filed Sept. 19, 2011); U.S. Patent No. D726,765 (filed June 9,
28 2013).
-6- Case No. 11-cv-01846-LHK

1 Is the identification of an article of manufacture a factual question, a legal

question, or a mixed question of law and fact? What issues should be decided
2 by a jury? What issues should be decided by the Court?
3 Answer: The identity of the relevant article of manufacture is ultimately a question of fact
4 for the jury, but it depends upon the scope of the patented design, which is a question of law for the
5 court. The part, portion, or component of the accused product corresponding to that patent scope is
6 a question of fact for the jury subject to the courts legal guidance. The court may determine the
7 identity of the relevant article of manufacture as a matter of law where there are no disputed issues
8 of material fact.
9 Analysis: Identifying the relevant article of manufacture is a necessary aspect of a damages

10 analysis under Section 289, see Samsung, 137 S. Ct. at 434, and damages present questions of fact
11 triable to a jury. See, e.g., SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 926 F.2d 1161, 1164
12 (Fed. Cir. 1991) ([T]he amount of a prevailing partys damages is a finding of fact on which the
13 plaintiff bears the burden of proof by a preponderance of the evidence.); Pearson v. Duane, 71 U.S.
14 (4 Wall.) 605, 614 (1866) (The damages are a matter which are in the nature of a finding by a
15 jury.).
16 While identifying the relevant article of manufacture is ultimately a question of fact for a
17 jury, the issue is nevertheless subject to legal inputs that must be established by courts. A court
18 must determine the scope of a patent claim, which presents a question of law. Cf. Egyptian Goddess,
19 Inc. v. Swisa, Inc., 543 F.3d 665, 679-80 (Fed. Cir. 2008) (en banc). And just as courts instruct
20 juries regarding the meaning and scope of patents in considering infringement, id. (design-patent
21 context); O2 Micro Intl Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1359 (Fed. Cir. 2008)
22 (utility-patent context), courts should instruct juries regarding design-patent scope to guide them in
23 identifying the article of manufacture to which a design is applied.
24 As with all questions of fact, the identity of the article of manufacture to which a design is
25 applied may be determined by the court as a matter of law on summary judgment where there are
26 no disputed issues of material fact. Cf. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052,
27 1075-81 (Fed. Cir. 2005) (affirming partial summary judgments related to patent validity and
28 infringement). If a court determines the identity of the relevant article of manufacture as a matter
-7- Case No. 11-cv-01846-LHK

1 of law on summary judgment, it should instruct the jury regarding that determination, leaving it to
2 the jury to calculate only the total profit on that article.
3 Application: In light of the undisputed record discussed below, the Court should identify
4 the relevant articles of manufacture in this case as a matter of law in advance of trial, leaving for the
5 jury only the issue of the quantum of damages. Even if the Court does not instruct the jury as to
6 what the relevant articles of manufacture are, it should at least instruct the jury that the relevant
7 articles are not the entire phone. If the identity of the articles goes to the jury, then the Court should
8 instruct the jury as to the scope of the patented designs by, for example, stating that the D677 patent
9 cover[s] a black rectangular front face with rounded corners, the D087 patent cover[s] a
10 rectangular front face with rounded corners and a raised rim, and the D305 patent cover[s] a grid
11 of 16 colorful icons on a black screen. Samsung, 137 S. Ct. at 433. In this circumstance, the Court
12 should also explain to the jury that Apples patented designs disclaim everything outside the broken
13 lines, including the interior componentry. See, e.g., Door-Master, 256 F.3d at 1313; Zahn, 617 F.2d
14 at 263; Stevens, 173 F.2d at 1016. The jury would then identify the relevant articles of manufacture
15 and Samsungs total profit therefrom.
16 Who bears the burden of proof to identify the relevant article of manufacture
for purposes of 289?
17
Answer: The patentee bears the burden to prove the identity of the relevant article of
18
manufacture for purposes of Section 289. That burden never shifts to the defendant.
19
Analysis: The ordinary default rule is that plaintiffs bear the burden of persuasion
20
regarding the essential aspects of their claims. Schaffer v. Weast, 546 U.S. 49, 57 (2005). Absent
21
some reason to believe that Congress intended otherwise the burden of persuasion lies where it
22
usually falls, upon the party seeking relief. Id. at 57-58. Patent cases are no exception to this rule:
23
The burden of proving damages falls on the patentee. Lucent Techs., Inc. v. Gateway, Inc., 580
24
F.3d 1301, 1324 (Fed. Cir. 2009); see SmithKline Diagnostics, 926 F.2d at 1164. Apple has thus
25
conceded that it bears the burden of proof on damages. See Dkt. 3486 at 7 ([T]he issue of damages
26
is one on which Apple carries the burden.).
27
28
-8- Case No. 11-cv-01846-LHK

1 The plaintiff bears the burden of identifying the article of manufacture just as much as it
2 bears the burden of proving a quantum of damages. As the Supreme Court made clear, the
3 identification of the relevant article of manufacture is an essential aspect of a plaintiffs claim for
4 damages under Section 289. See Samsung, 137 S. Ct. at 434 (Arriving at a damages award under
5 289 thus involves two steps. First, identify the article of manufacture to which the infringed
6 design has been applied. Second, calculate the infringers total profit made on that article of
7 manufacture.). Nothing in the text or legislative history of Section 289 reveals any legislative
8 intent to put the burden on defendants to prove a plaintiffs claim for damages by identifying the
9 relevant article of manufacture. To the contrary, the legislative history of Section 289s predecessor
10 expressly provides that a patentee can recover[] the profit actually made on the infringing article if
11 he can prove that profit, thus confirming that the patentee bears the burden of proving profit from
12 the relevant article of manufacture. H.R. REP. NO. 49-1966, at 3 (1886) (emphasis added).
13 In sharp contrast to infringers profit awards under the copyright and trademark laws, Section
14 289 does not on its face shift any burden to the defendant. Under the Copyright Act, Congress
15 imposed on plaintiffs the burden of proving gross revenue but shifted the burden to defendants to
16 prove both deductible expenses and the portion of profit attributable to the copyrighted work: In
17 establishing the infringers profits, the copyright owner is required to present proof only of the
18 infringers gross revenue, and the infringer is required to prove his or her deductible expenses and
19 the elements of profit attributable to factors other than the copyrighted work. 17 U.S.C. 504
20 (emphasis added); see Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 711 (9th Cir. 2004)
21 ( 504(b) creates a two-step framework for recovery of indirect profits: 1) the copyright claimant
22 must first show a causal nexus between the infringement and the gross revenue; and 2) once the
23 causal nexus is shown, the infringer bears the burden of apportioning the profits that were not the
24 result of infringement.). Similarly under governing interpretation of the Lanham Act, Congress
25 imposed on plaintiffs the burden to prove the defendants sales of the infringing product, but shifted
26 the burden to defendants to prove both deductible expenses and the amount of profit attributable to
27 use of the trademark: In assessing profits the plaintiff shall be required to prove defendants sales
28 only; defendant must prove all elements of cost or deduction claimed. 15 U.S.C. 1117(a)
-9- Case No. 11-cv-01846-LHK

1 (emphasis added); see Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1408 (9th Cir. 1993) (Under
2 the Lanham Act, [o]nce the plaintiff demonstrates gross profits, they are presumed to be the result
3 of the infringing activity. The defendant thereafter bears the burden of showing which, if any, of its
4 total sales are not attributable to the infringing activity, and, additionally, any permissible deductions
5 for overhead.) (internal citations omitted), abrogated on other grounds by SunEarth, Inc. v. Sun
6 Earth Solar Power Co., 839 F.3d 1179 (9th Cir. 2016).
7 Section 289 contains no such burden-shifting languageeven though it was enacted after
8 these copyright and trademark laws. Section 289 instead merely provides that a design-patent
9 infringer shall be liable to the owner to the extent of his total profit. 35 U.S.C. 289. Congress
10 could well have imposed upon a defendant the burden to prove what the article of manufacture is,
11 but chose not to; its failure to do so in light of its copyright and trademark enactments precludes
12 such an interpretation now. See, e.g., Astrue v. Ratliff, 560 U.S. 586, 595 (2010) (where Congress
13 knows how to achieve a specific statutory effect, we are reluctant to interpret another provision
14 to achieve that effect absent clear textual evidence supporting such an interpretation); cf. Miles v.
15 Apex Marine Corp., 498 U.S. 19, 32 (1990) (We assume that Congress is aware of existing law
16 when it passes legislation.).
17 Placing the burden of identifying the correct article of manufacture on the patent plaintiff
18 also corresponds with the analogous law of utility-patent damages for multicomponent products,
19 where the patent plaintiff similarly must prove the correct component to be used as a royalty base
20 and the quantum of damages relating to that component. See, e.g., IP Innovation L.L.C. v. Red Hat,
21 Inc., 705 F. Supp. 2d 687, 689-90 (E.D. Tex. 2010) (Rader, J.) (stating that the plaintiff, not the
22 defendant, has the burden of proving damages by a preponderance of evidence, and thus ruling
23 that the plaintiff many not shift the burden to [defendants] where the plaintiffs expert fails to
24 identify the correct product component to use as a royalty base) (citing Dow Chem. Co. v. Mee
25 Indus., Inc., 341 F.3d 1370, 1381 (Fed. Cir. 2003)); Golden Bridge Tech. v. Apple Inc., 2014 WL
26 2194501, at *6 (N.D. Cal. May 18, 2014) (excluding at Apples urging the patentees expert
27 damages opinion for failure to identify the smallest salable patent-practicing unit within Apples
28 iPhones as the royalty base); Dynetix Design Sols., Inc. v. Synopsys, Inc., 2013 WL 4538210, at *3-
-10- Case No. 11-cv-01846-LHK

1 4 (N.D. Cal. Aug. 22, 2013) ([T]he patentee must determine the smallest salable infringing unit
2 with close relation to the claimed invention .) (quoting Cornell Univ. v. HewlettPackard Co.,
3 609 F. Supp. 2d 279, 288 (N.D.N.Y. 2009) (Rader, J.)).3
4 Application: Apple has the burden to identify the relevant article of manufacture in order
5 to recover infringers profit under Section 289. Samsung bears no burden with respect to the identity
6 of the relevant article of manufacture at any stage of the case.
7 Who bears the burden of proof to demonstrate total profits on an article of

manufacture for purposes of 289?
8
Answer: The patentee bears the burden to prove the total profit on the relevant article of
9
manufacture for purposes of Section 289.
10
Analysis: Apple has conceded that it bears the burden on quantum of damages. See supra,
11
at 8. Settled law likewise confirms that the patent owner bears the burden of proving by a
12
preponderance of the evidence the quantum of damages. Transclean Corp. v. Bridgewood Servs.,
13
Inc., 290 F.3d 1364, 1370 (Fed. Cir. 2002); accord Lucent, 580 F.3d at 1324; SmithKline
14
Diagnostics, 926 F.2d at 1164; see supra, at 8. Moreover, as discussed above, the legislative history
15
of Section 289s predecessor expressly provides that a patentee can recover an infringers total profit
16
if he can prove that profit, thus confirming that the patentee bears the burden of proof. H.R. REP.
17
NO. 49-1966, at 3 (1886). Nothing in the text of Section 289 suggests otherwise, meaning that the
18
burden rests solely on the plaintiff. See Schaffer, 546 U.S. at 57, 58 (Absent some reason to believe
19
that Congress intended otherwise the burden of persuasion lies where it usually falls, upon the
20
party seeking relief).
21
22
23
3
24 The Court should disregard the governments passing, extra-statutory proposal to shift to
defendants the burden of identifying the relevant article of manufacture based on supposed
25 asymmetry of information. See Samsung, No. 15-777, Br. for the United States As Amicus Curiae
Supporting Neither Party 31 (June 8, 2016). No court has adopted that approach. And there is no
26 reason to believe that defendants in design-patent cases will have exclusive knowledge of relevant
27 information that the plaintiff does not already have or could not obtain in discovery. 2 MCCORMICK
ON EVIDENCE 337 (7th ed. 2016) (emphasis added); see Alaska Dept of Envtl. Conserv. v. EPA,
28 540 U.S. 461, 494 n.17 (2004).
-11- Case No. 11-cv-01846-LHK

1 In addition, as shown above, this result is consistent with analogous utility-patent law, which
2 requires the patentee to prove not only the appropriate component to use as the royalty base, but
3 also the amount of damages attributable to that properly-identified component. See supra, at 10-11.
4 Application: Apple has the burden to prove the quantum of Samsungs profit on the relevant
5 article of manufacture. Samsung bears no burden with respect to the quantum of infringers profits
6 at any stage of the case.
7 Identify the relevant article of manufacture for the D677 patent, D087
patent, and D305 patent.
8
Answer: Based on the article-of-manufacture test presented above (see supra, at 3-6), and
9
the overwhelming record evidence described in detail below (see infra, at 13-20), the relevant
10
articles of manufacture are:
11
D677 The phones round-cornered, glass front face.
12
D087 The phones round-cornered, glass front face plus its surrounding rim or
13
bezel.
14
D305 The display screen while displaying the single, patented array of GUI icons.
15
Identify evidence in the record supporting each partys asserted article of
16 manufacture for the D677 patent, D087 patent, and D305 patent.
17 Answer: Overwhelming evidence demonstrates that the relevant articles of manufacture are
18 those set forth above. This evidence far exceeds the minimal any evidence that Samsung needed
19 to support its proposed article-of-manufacture instruction and thus is sufficient to require a new trial
20 on design-patent damages. Indeed, the undisputed evidence is so overwhelming that this Court
21 should rule now, as a matter of law, that these product components are the relevant articles of
22 manufacture. At the very least, the Court should declare based on the undisputed record that the
23 relevant articles of manufacture are not Samsungs entire phones.
24 Analysis:
25 The Scope Of The Design Patents
26 Each of Apples design patents depicts a design that applies only to discrete, limited portions
27 of a smartphone, and not an entire smartphone.
28
-12- Case No. 11-cv-01846-LHK

1 First, the D677 patent claims a design for a black, rectangular front glass face with rounded
2 corners and specifically disclaims the surrounding rim or bezel, the circular home button on the
3 front, and the sides, top, bottom and back of the smartphone (i.e., the rest of the phone). The patent
4 does not (and indeed could not) depict or claim any internal componentry of the phone.
10
JX1043.5. The Court instructed the jury that [t]he broken lines in the D677 Patent constitute
11
unclaimed subject matter. Dkt. 1903 at 59 (Inst. No. 43). The Supreme Court also recognized that
12
the D677 patent covers only a black rectangular front face with rounded corners[.] Samsung,
13
137 S. Ct. at 433.
14
Second, the D087 patent, like the D677 patent, claims a design for a rectangular front face
15
with rounded corners, minus the black shading and with the addition of a bezel. The patent
16
specifically disclaims the sides, back, top, and bottom of the smartphone (i.e., the rest of the phone),
17
as well as features on the front, such as the circular home button. The patent does not (and could
18
not) depict or claim any internal componentry of the phone.
19
20
21
22
23
24
25 JX1041.7. The Court instructed the jury that [t]he broken lines in the D087 Patent constitute
26 unclaimed subject matter. Dkt. 1903 at 59 (Inst. No. 43). The Court also instructed that the D087
27 Patent claims the front face, a bezel encircling the front face of the patented design that extends
28 from the front of the phone to its sides, and a flat contour of the front face, but does not claim the
-13- Case No. 11-cv-01846-LHK

1 rest of the [phone]. Id. (emphasis added).4 The Supreme Court likewise recognized that the D087
2 patent covers only a rectangular front face with rounded corners and a raised rim[.] Samsung, 137
3 S. Ct. at 433.
4 Third, the D305 patent claims a design for a specific grid of sixteen colorful icons that can
5 appear, temporarily, on a display screen. The patent specifically disclaims every attribute of a
6 smartphone except that specific display image, and does not depict or claim any other display screen
7 images or any internal componentry of the phone.
10
11
12
13
14
15 JX1042.6. The Court instructed the jury that [t]he broken line showing of a display screen in both
16 views forms no part of the claimed design. Dkt. 1903 at 60 (Inst. No. 43). The Supreme Court
17 likewise recognized that this patent covers only a grid of 16 colorful icons on a black screen.
18 Samsung, 137 S. Ct. at 433.

19 Apple, moreover, specifically disclaimed rights as to other design elements in prosecuting
20 its patents. For example, as to the D305 patent, Apples original application claimed designs for
21 194 separate images that could appear on a display screen, but as issued by the PTO, the D305
22 patent claims only a design for a single array of icons. See JX1042; see also Pac. Coast Marine
23 Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 703-04 (Fed Cir. 2014) (holding that
24
25
4
The Courts instruction used the term article of manufacture rather than phone, see Dkt.
26 1903 at 59, but did so based on the erroneous understanding that article of manufacture meant an
27 entire product as sold, see Dkt. 3509 at 20. While use of the term article of manufacture in the
claim construction for the D087 patent was incorrect, the construction correctly recognized that
28 Apples patented design does not claim most of a phone. See Dkt. 1903 at 59.
-14- Case No. 11-cv-01846-LHK

1 prosecution history estoppel applies to limit claim scope where applicant surrenders subject matter
2 to comply with single-claim requirement for design patent). The prosecution history for the D677
3 and D087 patents is similar. See JX1064.20-.25, .177-.179, .192-.193, .221-.223, .334-.341, .353-
4 .354; JX1062.86-.97, .164-.165, .169-.173, .307-.308; see also Dkt. 943-7 through 943-10 (D677
5 file wrapper); Dkt. 944 through 944-5 (D087 file wrapper).
6 At trial, Apples own experts on design-patent infringement expressly admitted the above
7 narrow constructions. Apples expert on hardware design, Peter Bressler, admitted at trial that the
8 D677 patent claimed a design for only the front face of an electronic device that is black in color,
9 with the dotted lines excluding what is not being claimed in this patent because the only thing
10 being claimed is the area in the solid lines. Dkt. 1611 at 1014-15; id. at 1015 (all its claiming is
11 that front face.). Similarly, Bressler admitted that the D087 patent claimed a design for only the
12 flat front face and the bezel of a phone: As you can see by the broken lines, again, its not
13 claiming the body. Its claiming the bezel and the front face. Dkt. 1611 at 1018-19. Apples
14 expert on graphical user interface design, Susan Kare, likewise testified that the D305 patent was
15 limited to a design for the rectangular area thats within the dotted line that goes around the
16 outside. Dkt. 1612 at 1367.
17 Accordingly, the scope of Apples patented designs is unquestionably narrow. Each design
18 patent claims only a portion of the design for a smartphone. None claims a design for an entire
19 phone, and none claims the design for any interior componentry. Therefore, because Apples patents
20 do not claim designs for entire products, the articles of manufacture to which those designs are
21 applied are not Samsungs entire products. See Samsung, 137 S. Ct. at 435 (explaining that the
22 meaning of article of manufacture in 289 is consistent with 35 U.S.C. 171(a), under which a
23 design extending to only a component of a multicomponent product is patentable as a design for
24 an article of manufacture); see also supra, at 5-6.
25 The Accused Products And Scope Of Alleged Infringement

26 The accused products and scope of alleged infringement further confirm that the relevant
27 articles of manufacture here are not Samsungs entire phones and, instead, are the components of
28 Samsungs phones that correspond to the attributes of the patented designs. All of the evidence
-15- Case No. 11-cv-01846-LHK

1 described below is in the trial record, and all of it is undisputed or the admissions of Apples
2 witnesses. Such evidence, once admitted, may be used for any purpose to which it is relevant
3 including, here, to show the relevant articles of manufacture.5 Thus, contrary to Apples prior
4 arguments, the Court need not determine the purpose for which this evidence was admitted at trial.
5 Accordingly, had the juries been properly instructed, Samsung could have relied on all of this
6 evidence in its closings to argue that the relevant articles of manufacture were particular components
7 of Samsungs phones.
8 (i) Evidence Showing That The Proposed Articles Of Manufacture Are

Separable Components Of Samsungs Products
9
First, the evidence overwhelmingly showed that Samsungs accused smartphones are
10
complex, multi-component devices containing hundreds of different components. The accused
11
smartphones themselves demonstrate this. These complex, functional, working devices were
12
provided to the juries to examine through hands-on use. Samsungs smartphones are obviously far
13
more complex than a kitchen oven, which the Supreme Court identified as an example of a multi-
14
component product containing several articles of manufacture. Samsung, 137 S. Ct. at 432.6
15
Similarly, during the testimony of Apple executive Scott Forstall, the jury saw detailed tear-
16
down analyses of the Samsung Vibrant, which included breaking out each component and looking
17
both at hardware components and the actual boards that are used. Dkt. 1610 at 772; id. at 769-72.
18
19
20 5
See, e.g., Abbott Labs. v. Syntron Bioresearch Inc., 2001 WL 34082555, at *3 (S.D. Cal. Aug.
21 24, 2001) (agreeing that prior art reference[s], like any other piece of evidence, once admitted, [are]
admissible for any purpose for which [they are] relevant); 1 MCCORMICK ON EVIDENCE 54 (7th
22 ed. 2016) ([T]estimony received without objection becomes part of the evidence in the case
and is usable as proof to the extent of its rational persuasive power.); 88 C.J.S. Trial 188 (2017)
23 (Where evidence is admitted generally, it may be considered for any purpose for which it is relevant
and competent.) (collecting cases; footnotes omitted); cf. Meyer Intellectual Props. Ltd. v. Bodum,
24 Inc., 690 F.3d 1354, 1377 (Fed. Cir. 2012) (reversing order excluding certain prior art references
25 because, even if they were outside court order limiting scope of admissible prior art at trial, they
were also relevant to corroborating witnesss testimony about product characteristics).
26 6
The Court previously ruled that Samsungs phones themselves provide substantial evidence
27 to support the first jurys findings regarding infringement, demonstrating that the phones themselves
can be probative evidence. Dkt. 2219 at 10 (Order on Apples JMOL motion); see Dkt. 2220 at 3,
28 15 (Order on Samsungs JMOL motion) (similar).
-16- Case No. 11-cv-01846-LHK

1 This presentation shows the phone being systematically taken apart, with slides for each step of the
2 dismantlement displaying annotated images of the phones loudspeaker, SIM card slot, camera,
3 motherboard, and other components in isolation, and describing them as separate sub-modules.
4 DX2519.005-.011. Another slide, entitled Phone Features, shows separate physical features such
5 as the light sensor, the power/wake/sleep button, the camera, and capacitive touch buttons.
6 DX2519.004. Below are sample images from the teardown:
10
11
12
13
14
15
16
17
DX2519.004, .006, .008, .012.
18
Apples witnesses likewise acknowledged the many components that make up a smartphone.
19
Apples Vice President of Procurement, Tony Blevins, who was responsible for acquiring
20
necessary components for Apples iPhones, showed the jury a disassembled iPhone 4s internal
21
motherboard or major logic board and the baseband processor on it. Dkt. 1842 at 3165-68.
22
Blevins further explained that there are 900 to 1,000 parts total in the iPhone. Dkt. 1842 at 3168.
23
Apples damages expert, Terry Musika, testified about the Samsung division that manufactured
24
components such as processor[s], memory chips, touchscreen[s], and flash memory for
25
various phone manufacturers, including Samsung and Apple products. Dkt. 1839 at 2148-53.
26
Second, the trial record contains extensive evidence that the articles of manufacture here are
27
specific components of the accused phones. For example, Samsung witnesses confirmed that these
28
-17- Case No. 11-cv-01846-LHK

1 components were often manufactured separately. Samsung Chief Strategy Officer Justin Denison
2 gave uncontradicted testimony that the display, speakers, microphones, and input keys were some
3 of the main components in a phone. Dkt. 1610 at 868-72. Denison described how the display
4 screen is separate from the bezel, if theres a bezel, or the frame if theres a unibody frame, and
5 how the front glass face is yet another component separate from those. Id. at 871-72; see id. at 872
6 ([T]heres a piece of glass and then underneath that is a display and you have to glue that on top.).
7 The teardown likewise shows non-accused graphical user interface screens on Samsungs phones,
8 including the lock screen, home screen, social hub, and keyboard. DX2519.004; DX2519.012. And
9 Samsungs expert witness Itay Sherman similarly testified that there are a lot of components that
10 reside below the surface of the phones glass face and that a black mask is used to hide them.
11 Dkt. 1840 at 2610-11.
12 Additionally, Samsungs damages expert, Michael Wagner, testified to the process of
13 designing around Apples asserted patents and the ease with which the accused Samsung application
14 menu, as well as other software features, could be separately redesign[ed] and applied to the
15 device through a software update without having to take the phone and take it apart and look at
16 the innards. Dkt. 2842 at 996, 1030. That is, not only are Samsungs accused phones made up of
17 separate physical components, but images and components within the graphical user interface are
18 also separable from one another at the software-programming level.

19 Finally, Apple industrial designer Chris Stringer, a named inventor on the D677 and D087
20 patents, testified about the manufacturing challenges Apple faced in working with separate
21 components for its products, including producing the glass, putting the glass in close proximity
22 to hardened steel, and separately machining a high grade of steel for bezels at volumes that
23 were unprecedented at that time. Dkt. 1547 at 494-95. Stringer further testified that the iPhones
24 exterior was designed independently of any requirements from the components or the internal
25 elements of the phone. Id. at 496. As for the graphical user interface, Apple witness Paul Dourish,
26 a computer science professor who was offered as an expert in the field of interface technology,
27 testified that the phones could download and install software programs that can extend the
28 functionality of the device by letting it do things that hadnt necessarily been designed into it or
-18- Case No. 11-cv-01846-LHK

1 conceived of when it was designed (Dkt. 1842 at 3195-96), further showing that accused
2 applications screens were separable from other interface elements of the phones.
3 Thus, the undisputed evidence establishes that Samsungs smartphones are complex
4 products consisting of many components, including numerous components other than those that
5 correspond to the claimed attributes of Apples narrow patented designs. Only the specific
6 components that correspond to those narrow designs are the relevant articles of manufacture.
7 (ii) Evidence Showing The Narrow Scope Of Apples Infringement

Allegations
8
Apples narrow infringement allegations further demonstrate the metes and bounds of the
9
relevant articles of manufacture. In asserting infringement, Apple did not claim that all components
10
of Samsungs phones were infringing. To the contrary, Apples infringement experts limited their
11
infringement opinions to particular components of Samsungs phones, to the exclusion of all other
12
parts.
13
First, as to the D677 patent, Apples expert Bressler testified that Samsungs phones
14
infringed because they ha[d] a flat, uninterrupted surface that is rectangular in proportions
15
described in the 677 patent; it runs edge to edge across the front of the phone and is transparent and
16
is black; and it has a display that is centered on the face of the phone and a lozenge shaped speaker
17
slot, and I find those features to be substantially the same. Dkt. 1611 at 1050 (emphasis added).
18
Bressler disregarded all other portions of Samsungs phones that did not correspond to the attributes
19
of the claimed design. For example, Bressler considered only the front of the Galaxy S 4G and
20
did not consider aspects like the back of the Samsung phone, because they were not part of the
21
claimed design. Dkt. 1611 at 1050-51 (emphasis added); see id. at 1051 (I looked at it but did not
22
consider it as part of my analysis [b]ecause it is the back of the phone and this patent is
23
specifically for the face of the phone.) (emphasis added). Bressler also testified that the lack of a
24
physical home button on the accused Samsung phones doesnt matter because the location of the
25
iPhones home button is disclaimed through broken lines in the D677 patent. Id. at 1016.
26
Second, Bresslers testimony with respect to the D087 patent was similar. As to that patent,
27
Bressler examined only the front face and bezel of Samsungs accused phones in considering his
28
-19- Case No. 11-cv-01846-LHK

1 infringement analysis. Dkt. 1611 at 1058. As with the D677 patent, dissimilar portions of the
2 accused phones did not matter to Bressler because, as you can see by the broken lines, the D087
3 patent was not claiming the body but only the bezel and front face. Id. at 1019.
4 Third, Apples expert Kare similarly testified that she considered only a particular screen
5 within the GUI of the accused Samsung devices when assessing infringement of the D305 patent,
6 and disregarded all other screens and all other smartphone components. Specifically, Kares
7 infringement comparisons were limited to the Samsung application screen and not the start-up
8 screen, unlock screen, or home screen of the Samsung phone[s]. Dkt. 1612 at 1421-24.
9 Further, Apple asked that body style not be included in trial exhibits for the D305 patent, and the
10 Court excluded exhibits depicting the overall phone in the context of D305 patent infringement
11 comparisons, allowing only screen-to-screen shots. Id. at 1372-73.7
12 Application: At a minimum, there was an adequate foundation for Samsungs proposed

13 article-of-manufacture instruction because a properly-instructed jury could have found that
14 smartphone components are the relevant articles of manufacture, as Chief Justice Roberts
15 recognized at oral argument (see supra, at 6). See Don Burton, Inc. v. Aetna Life & Cas. Co., 575
16 F.2d 702, 706 (9th Cir. 1978) (While it is unnecessary to give instructions unsupported by the
17 evidence, a litigant is entitled to have the jury charged concerning his theory of the case if there is
18 any direct or circumstantial evidence to support it.), quoted in Dkt. 3509 at 28; see also Dkt. 3509
19 at 29 (The determination whether there is an adequate foundation necessarily would require
20 finding, for example, that the evidence in the record does not establish as a matter of law that the
21 entirety of Samsungs phones are the relevant article of manufacture.).
22
23 7
In addition to the phones themselves, the record also contains extensive evidence regarding
24 the numerous software applications and GUI screens that are displayed on the phones apart from
the specific array of icons depicted in the D305 patentincluding the unaccused Samsung home
25 screen and the web browser, contacts program, and picture gallery. For example, Apples expert
Dr. Ravin Balakrishnan, in testifying about infringement of Apples utility patents, referred to the
26 gallery application, which was separate from the browser application and the contacts list
27 application. Dkt. 1695 at 1741-49. And Apples expert Dr. Karan Singh separately testified as to
infringement by the browser application. Id. at 1904.
28
-20- Case No. 11-cv-01846-LHK

1 In fact, the extensive evidentiary record supports determination as a matter of law that the
2 relevant articles of manufacture are not Samsungs entire phones, but rather are the specific
3 components of those phones that correspond to Apples narrow patented designs: for the D677
4 patent, the phones round-cornered, glass front face; for the D087 patent, the phones round-
5 cornered, glass front face plus its surrounding rim or bezel; and for the D305 patent, the display
6 screen while displaying the single, patented array of GUI icons.8 See, e.g., Samsung, 137 S. Ct. at
7 436 (the term article of manufacture is broad enough to embrace both a product sold to a
8 consumer and a component of that product, whether sold separately or not).
9 The Court should so rule now (or on summary judgment) and instruct the jury accordingly.
10 Apple obtained patents on narrow designs, deliberately excluding most smartphone attributes from
11 the scope of its claims. Apple then accused Samsung of infringing those narrow design patents
12 based solely on elements of Samsungs phones that correspond to the claimed attributes of Apples
13 designs, disregarding the many dissimilarities as to subject matter expressly disclaimed by the use
14 of broken lines or otherwise outside the scope of the claims. The articles of manufacture to which
15 Apples designs were applied are the components that correspond to the claimed attributes of the
16
17
18
8
For the D305 patent, the article of manufacture cannot be the entire display screen because
19 the entire screen does not correspond to Apples design patent and only a single GUI image that
appears on that screen, fleetingly, was found to infringe. Apple specifically limited its infringement
20 case to that single image, disregarding other images on the display screen that it had not accused of
21 infringement. Dkt. 1612 at 1421-24. The display screen while displaying that image therefore
corresponds to the patented design and is the relevant article of manufacture. See, e.g., In re Hruby,
22 373 F.2d 997, 999 (C.C.P.A. 1967) (holding under Section 171 that the portion of a water fountain
which is composed entirely of water in motion is within the statutory term article of manufacture
23 even though the pattern created is wholly fleeting) (internal quotation marks omitted), cited
with approval in Samsung, No. 15-777, Br. for Respondent 36.
24
Hruby, moreover, reinforces that the relevant article of manufacture for the D305 patent cannot
25 be the entire phone as a matter of law because there the article of manufacture was held to be the
water display itself, not a catch basin and a fountain producing device that produced the
26 ornamental appearance but that were excluded by broken lines. 373 F.2d at 998, 999. So too
27 here, the D305 disclaims large portions of the phones necessary to produce the single array of icons
that it claims.
28
-21- Case No. 11-cv-01846-LHK

1 patented design, which Apple accused of infringement. The articles of manufacture are not, and
2 could not be, Samsungs entire phones.
3 The instructions failed to so guide the jury, and Apple may not now avoid a new trial by
4 claiming that this instructional error was harmless. Apple waived any harmless-error argument by
5 raising it for the first time on remand after losing in the Supreme Court, which is far too late.9 The error
6 was also clearly prejudicial: the jury instructions required the jury, if it elected Section 289
7 damages, to award Samsungs profit on its entire accused phones, see Dkt. 3509 at 22 (finding that
8 given instructions direct[ed] the jury to find that the article of manufacture and product are the
9 same), even though the evidence did not require such an award, see supra, at 13-20. Instructing a
10 jury to award entire-product profit when the facts do not require such an award is the epitome of
11 prejudice. See, e.g., Gantt v. City of Los Angeles, 717 F.3d 702, 707 (9th Cir. 2013) ([P]rejudicial
12 error results when, looking to the instructions as a whole, the substance of the applicable law was
13 [not] fairly and correctly covered.); Dang v. Cross, 422 F.3d 800, 811-12 (9th Cir. 2005) (similar;
14 holding that the party defending the verdict has the burden to show that the instructional error was
15 harmless); see also Voda v. Cordis Corp., 536 F.3d 1311, 1328 (Fed. Cir. 2008) (regional circuit
16 law governs harmless-error review).
17 Identify evidence in the record supporting the total profit for each partys
asserted article of manufacture for the D677 patent, D087 patent, and D305
18 patent.
19 Answer: The trial record contains evidence from which a properly-instructed jury could
20 have calculated profits from the relevant articles of manufacture. Even if there were not sufficient
21 evidence, Samsung still would be entitled to a judgment of no infringers profits or, at a minimum,
22 a new trial on design-patent damages, because Apple bore the burden of proving infringers profits.
23
24
9
See, e.g., Clem v. Lomeli, 566 F.3d 1177, 1182 (9th Cir. 2009) (harmless-error argument
25 waived if not raised in appellees brief); United States v. Dreyer, 804 F.3d 1266, 1277 (9th Cir.
2015) (en banc) (Generally, an appellee waives any argument it fails to raise in its answering
26 brief)), quoted in Dkt. 3509 at 25; Facebook, Inc. v. Power Ventures, Inc., 2017 WL 1650608, at
27 *7 (N.D. Cal. May 2, 2017) ([A]n issue or factual argument waived at the trial level before a
particular order is appealed, or subsequently waived on appeal, cannot be revived on remand.),
28 quoted in Dkt. 3509 at 24; see also Dkt. 3498 at 12-13 (Samsungs opposition brief arguing same).
-22- Case No. 11-cv-01846-LHK

1 Analysis: Apples own damages experts provided the juries information from which they
2 reasonably could have awarded Samsungs profit from the relevant articles of manufacture, which
3 are less than the entire phone. Apples experts offered reasonable-royalty calculations for the
4 D677, D087, and D305 patents, with one methodology (the income method) suggesting a value
5 of $9 per phone for those three patents combined. Dkt. 1839 at 2088-92 (testimony of Apples
6 damages expert Musika at 2012 trial); Dkt. 2840 at 704-08 (testimony of Apples damages expert
7 Davis at 2013 trial); PX25A1.16 (Apples 2012 trial exhibit summarizing its damages contentions);
8 PX25F.16 (same for 2013 trial). These income method opinions used Samsungs actual profits
9 as the measure of what Samsung would earn from the components embodying the patented
10 [designs]. PX25A1.16 (emphasis added); PX25F.16 (same); see, e.g., Dkt. 2840 at 771-72
11 (Apples damages expert Davis testifying that Apples proposed royalty estimated the value of each
12 phones case, not its guts) (emphasis added); id. at 773 (similar). Samsungs actual profit from
13 the relevant articles of manufacture here would in fact be far less than Apples proposed $9 per unit
14 because, among other things, that figure purported to estimate the value of all design patents
15 combinedeven though none of the accused phones subject to the partial judgment was found to
16 infringe all three patents (see PX25A1.16; Dkt. 1931 at 6-7; Dkt. 3290 at 1).
17 The trial record also contains evidence supporting inferences that smartphones derive their
18 value principally from features other than the components to which Apples designs were applied.
19 Apples own market research and analysis shows, for example, that consumer demand was driven
20 by features and components such as larger display, choice of wireless carrier, trust in the Google
21 brand, access to Android app market, integrated Google services, and turn-by-turn GPS navigation
22 (DX572.082); web capabilities, ease of use, and availability of apps (PX143.5); improved battery
23 life and camera quality (PX143.6); and brand choice and multimedia functions (DX592.010, .023).
24 One trial exhibit shows a presentation in which Apple itself asserted, before filing this lawsuit, that
25 [s]oftware creates the largest share of product value. DX586.004.
26 Application: The foregoing evidence would have allowed a properly-instructed jury to

27 determine total profit from the relevant articles of manufacture at amounts within a range [of
28 damages] encompassed by the record as a whole. Finjan, Inc. v. Secure Computing Corp., 626
-23- Case No. 11-cv-01846-LHK

1 F.3d 1197, 1212 (Fed. Cir. 2010); see id. at 1208-09 (jury did not have to accept either parties
2 damages calculations and was entitled to choose its own figures from the evidence); State
3 Contracting & Engg Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1072-73 (Fed. Cir. 2003)
4 (affirming jurys award, which was substantially smaller than the amount calculated by
5 [plaintiffs] expert, even though defendants presented no expert damages testimony). And the
6 amounts awarded undoubtedly would have been a small fraction of Samsungs total profit on the
7 entire phones, which was as much as $70 per phone. See Dkt. 1931 at 16; JX1500.1.
8 But even if the evidentiary record were not sufficient to allow the juries to calculate total
9 article-of-manufacture profit (and it was), the existing design-patent judgment still cannot stand. As
10 shown above (see supra, at 11-12), Apple alone bore the burden of proving the quantum of damages
11 from the relevant articles of manufacture. If the evidence demonstrating Samsungs profits from
12 the correct articles of manufacture was insufficient, the Court should find that Apple failed to meet
13 its burden and cannot obtain infringers profits under Section 289. See, e.g., Boyle v. United Techs.
14 Corp., 487 U.S. 500, 513 (1988) (where the evidence presented in the first trial would not suffice,
15 as a matter of law, to support a jury verdict for the plaintiff under correct instructions, judgment
16 may be entered for defendant without a new trial).
17 If the Court does not direct judgment for Samsung, then, at a minimum, it should grant a
18 new trial. That trial should be limited to the quantum of Samsungs profits from the relevant articles
19 of manufacture as determined by the Court. Alternatively, the Court should grant a new trial at
20 which the jury determines both articles and quantum. In no event, however, can the state of the
21 evidentiary record regarding Samsungs profits be used against Samsung, which as the defendant
22 had no burden to introduce any evidence of profits at all.
23 CONCLUSION
24 The Court should vacate the $399 million design-patent judgment. Apple cannot establish
25 as a matter of law that the entirety of Samsungs phones are the relevant article of manufacture
26 (Dkt. 3509 at 29), given the Supreme Courts decision and the overwhelming evidence that Apples
27 narrow design patents were applied to discrete components of Samsungs phones. Upon vacatur,
28 the Court should enter judgment of no infringers profits because Apple failed to satisfy its burden
-24- Case No. 11-cv-01846-LHK

1 to prove total profit from the relevant articles of manufacture, which cannot be the entire phones. If
2 the Court does not so rule, then it should identify pre-trial, as a matter of law, the relevant articles
3 of manufacture, and order a new jury trial limited to the quantum of profit from those articles. If
4 the Court does not so rule, then, at a minimum, the Court should grant a new jury trial on both the
5 relevant articles of manufacture and the quantum of profit.
6 DATED: September 8, 2017 QUINN EMANUEL URQUHART &

SULLIVAN, LLP
7
9 By /s/ Victoria F. Maroulis

John B. Quinn
10 Kathleen M. Sullivan
William C. Price
11 Michael T. Zeller
Kevin P.B. Johnson
12
Victoria F. Maroulis
13
Attorneys for SAMSUNG ELECTRONICS CO.,
14 LTD., SAMSUNG ELECTRONICS AMERICA,
INC., and SAMSUNG
15 TELECOMMUNICATIONS AMERICA, LLC
16
17
18
19
20
21
22
23
24
25
26
27
28
-25- Case No. 11-cv-01846-LHK


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Case 5:11-cv-01846-LHK Document 3521 Filed 09/08/17 Page 1 of 30

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP

7 Kathleen M. Sullivan (Bar No. 242261)

Case No. 11-cv-01846-LHK

6 RESPONSES TO THE SEVEN ISSUES THAT THE COURT IDENTIFIED ................................3

12 Who bears the burden of proof to demonstrate total profits on an article of

15 Identify evidence in the record supporting each partys asserted article of

-i- Case No. 11-cv-01846-LHK

5 Alaska Dept of Envtl. Conserv. v. EPA,

11 Boyle v. United Techs. Corp.,

14 Cornell Univ. v. HewlettPackard Co.,

17 Don Burton, Inc. v. Aetna Life & Cas. Co.,

20 Dow Chem. Co. v. Mee Indus., Inc.,

23 Egyptian Goddess, Inc. v. Swisa, Inc.,

26 Finjan, Inc. v. Secure Computing Corp.,

-ii- Case No. 11-cv-01846-LHK

1 Golden Bridge Tech. v. Apple Inc.,

7 IP Innovation L.L.C. v. Red Hat, Inc.,

10 Lucent Techs., Inc. v. Gateway, Inc.,

13 Miles v. Apex Marine Corp.,

16 O2 Micro Intl Ltd. v. Beyond Innovation Tech. Co.,

22 Polar Bear Prods., Inc. v. Timex Corp.,

-iii- Case No. 11-cv-01846-LHK

1 State Contracting & Engg Corp. v. Condotte Am., Inc.,

4 SunEarth, Inc. v. Sun Earth Solar Power Co.,

7 United States v. Dreyer,

14 17 U.S.C. 504 ................................................................................................................................. 9

16 35 U.S.C. 289 ............................................................................................................................... 10

22 H.R. Rep. No. 49-1966 (1886) .................................................................................................... 9, 11

-iv- Case No. 11-cv-01846-LHK

-1- Case No. 11-cv-01846-LHK

10 this case are:

11 the phones round-cornered, glass front face (D677);

-2- Case No. 11-cv-01846-LHK

-3- Case No. 11-cv-01846-LHK

13 TRADEMARK OFF. SOCY 301, 319-22 (2007).

-4- Case No. 11-cv-01846-LHK

-5- Case No. 11-cv-01846-LHK

-6- Case No. 11-cv-01846-LHK

1 Is the identification of an article of manufacture a factual question, a legal

9 Analysis: Identifying the relevant article of manufacture is a necessary aspect of a damages

23 identifying the article of manufacture to which a design is applied.

-7- Case No. 11-cv-01846-LHK

2 the jury to calculate only the total profit on that article.

15 and Samsungs total profit therefrom.

-8- Case No. 11-cv-01846-LHK

-9- Case No. 11-cv-01846-LHK

16 when it passes legislation.).

-10- Case No. 11-cv-01846-LHK

3 609 F. Supp. 2d 279, 288 (N.D.N.Y. 2009) (Rader, J.)).3

6 of the relevant article of manufacture at any stage of the case.

7 Who bears the burden of proof to demonstrate total profits on an article of

-11- Case No. 11-cv-01846-LHK

6 at any stage of the case.

23 relevant articles of manufacture are not Samsungs entire phones.

27 of a smartphone, and not an entire smartphone.

-12- Case No. 11-cv-01846-LHK

-13- Case No. 11-cv-01846-LHK

7 images or any internal componentry of the phone.

18 Samsung, 137 S. Ct. at 433.