You are on page 1of 60

No.

2014-1335

United States Court of Appeals
for the
Federal Circuit

APPLE INC., a California corporation,
Plaintiff-Appellee,
– v. –
SAMSUNG ELECTRONICS CO., LTD., a Korean corporation,
SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation,
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
a Delaware limited liability company,
Defendants-Appellants.

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


SUSAN R. ESTRICH
MICHAEL T. ZELLER
ROBERT J . BECHER
B. DYLAN PROCTOR
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
865 South Figueroa Street, 10
th
Floor
Los Angeles, California 90017
(213) 443-3000
KATHLEEN M. SULLIVAN
WILLIAM B. ADAMS
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22
nd
Floor
New York, New York 10010
(212) 849-7000
Attorneys for Defendants-Appellants Samsung Electronics Co., Ltd., Samsung
Electronics America, Inc. and Samsung Telecommunications America, LLC
(For Continuation of Appearances See Inside Cover)

Case: 14-1335 Document: 129 Page: 1 Filed: 09/05/2014
CORRECTED REPLY BRIEF FOR DEFENDANTS-APPELLANTS


VICTORIA F. MAROULIS
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, 5
th
Floor
Redwood Shores, California 94065
(650) 801-5000
KEVIN A. SMITH
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California Street, 22
nd
Floor
San Francisco, California 94111
(415) 875-6600

Attorneys for Defendants-Appellants Samsung Electronics Co., Ltd., Samsung
Electronics America, Inc. and Samsung Telecommunications America, LLC


Case: 14-1335 Document: 129 Page: 2 Filed: 09/05/2014
i

TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES .................................................................................... iv
INTRODUCTION ..................................................................................................... 1
ARGUMENT ............................................................................................................. 2
I. APPLE IS UNABLE TO DEFEND THE $399 MILLION
JUDGMENT FOR DESIGN-PATENT INFRINGEMENT ........................... 2
A. No Properly-Instructed Jury Could Find Design-Patent
Infringement .......................................................................................... 2
1. Apple Fails To Rehabilitate The District Court’s
Instructions On Scope And Infringement ................................... 2
(a) Scope And Functionality .................................................. 3
(b) Deceptive Similarity ......................................................... 5
(c) Prior Art ............................................................................ 6
2. Apple Fails To Identify Substantial Evidence Of
Deceptive Similarity To Ornamental Features ........................... 6
(a) D’677 And D’087 Patents ................................................ 7
(b) D’305 Patent ................................................................... 14
B. No Properly-Instructed Jury Could Award Samsung’s Entire
Profits For Design-Patent Infringement .............................................. 14
1. Apple Fails To Overcome The District Court’s Error In
Omitting A Causation Requirement ......................................... 14
2. Apple Fails To Overcome The District Court’s Error In
Omitting A Nexus To The “Article Of Manufacture” .............. 16
II. APPLE IS UNABLE TO DEFEND THE $382 MILLION
JUDGMENT FOR TRADE-DRESS DILUTION ........................................ 18
Case: 14-1335 Document: 129 Page: 3 Filed: 09/05/2014
ii

A. Apple Fails To Show That A Reasonable Jury Could Find
Trade-Dress Dilution Liability ............................................................ 19
1. Apple Fails To Identify Substantial Evidence That Its
Trade Dresses, As Claimed, Were Famous .............................. 19
(a) Apple’s Promotional Materials Do Not Even
Depict The Claimed Trade Dresses ................................ 19
(b) There Is No Evidence Of Fame-Creating Sales Of
Products Practicing The Trade Dresses .......................... 21
(c) There Is No Evidence Of Substantial Actual
Recognition Of The Trade Dresses ................................ 21
2. Apple Fails To Refute That Its Trade Dresses Are
Functional .................................................................................. 22
3. Apple Does Not Identify Substantial Evidence Of Likely
Dilution ..................................................................................... 24
4. The TDRA Should Not Be Interpreted To Create A
Perpetual Patent Monopoly ....................................................... 26
B. No Properly-Instructed Jury Could Award $382 Million In
Trade-Dress Dilution Damages ........................................................... 27
1. Samsung Preserved Its Objection To The Willfulness
Instruction ................................................................................. 27
2. Apple Fails To Identify Substantial Evidence That Any
Dilution Was Willful ................................................................. 29
3. Apple Does Not Identify Substantial Evidence To
Support The Infringer’s Profits And Lost Profits Awards........ 31
(a) The $291 Million Infringer’s Profits Award
Cannot Stand ................................................................... 31
(b) The $91 Million Lost Profits Award Cannot Stand ....... 32
III. APPLE IS UNABLE TO DEFEND THE $149 MILLION
JUDGMENT FOR UTILITY-PATENT INFRINGEMENT ........................ 33
Case: 14-1335 Document: 129 Page: 4 Filed: 09/05/2014
iii

A. No Reasonable Jury Could Find Liability As To The ’915 And
’163 Patents ......................................................................................... 33
1. Apple Fails To Refute That Claim 8 Of The ’915 Patent
Is Anticipated ............................................................................ 33
2. Apple Fails To Refute That Claim 50 Of The ’163 Patent
Is Indefinite ............................................................................... 34
B. No Reasonable Jury Could Award $149 Million In Damages
For Utility-Patent Infringement ........................................................... 37
1. Apple Does Not Identify Substantial Evidence To
Support The $114 Million Lost Profits Award For
Infringement Of The ’915 Patent .............................................. 37
2. Apple Does Not Identify Substantial Evidence To
Support The $35 Million Reasonable Royalty Award For
Infringement Of The Three Utility Patents ............................... 39
IV. APPLE IS UNABLE TO EXPLAIN WHY AT THE VERY LEAST
A NEW TRIAL IS NOT WARRANTED ..................................................... 40
A. The Instructional Errors At Minimum Require Vacatur And
Remand ................................................................................................ 40
B. Apple Fails To Justify The Erroneous Exclusion Of Samsung’s
Evidence Of Independent Development ............................................. 40
CONCLUSION ........................................................................................................ 45
PROOF OF SERVICE ............................................................................................. 47
CERTIFICATE OF COMPLIANCE ....................................................................... 48

Case: 14-1335 Document: 129 Page: 5 Filed: 09/05/2014
iv

TABLE OF AUTHORITIES
Page(s)
Cases
American Seating Co. v. USSC Group, Inc.,
514 F.3d 1262 (Fed. Cir. 2008) .......................................................................... 37
Andreas v. Volkswagen of Am., Inc.,
336 F.3d 789 (8th Cir. 2003) .............................................................................. 15
Apple Inc. v. Samsung Elecs. Co. Ltd.,
678 F.3d 1314 (Fed. Cir. 2012) .......................................................... 2, 14, 16, 17
Apple Inc. v. Samsung Elecs. Co., Ltd.,
695 F.3d 1370 (Fed. Cir. 2012) ............................................................................ 2
Apple Inc. v. Samsung Elecs. Co., Ltd.,
735 F.3d 1352 (Fed. Cir. 2013) ................................................................ 1, 16, 38
Atkins v. New York City,
143 F.3d 100 (2d Cir. 1998) ............................................................................... 27
Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc.,
457 F.3d 1062 (9th Cir. 2006) ............................................................................ 23
Bandag, Inc. v. Al Bolser’s Tire Stores, Inc.,
750 F.2d 903 (Fed. Cir. 1984) ............................................................................ 31
Best Lock Corp. v. Ilco Unican Corp.,
94 F.3d 1563 (Fed. Cir. 1996) .............................................................................. 5
Blockbuster Videos, Inc. v. City of Tempe,
141 F.3d 1295 (9th Cir. 1998) ............................................................................ 30
Bobrick Washroom Equip., Inc. v. Am. Specialties, Inc.,
2012 WL 3217858 (C.D. Cal. Aug. 8, 2012) ..................................................... 26
Bollinger v. Oregon,
305 F. App’x 344 (9th Cir. 2008) ....................................................................... 28
Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,
489 U.S. 141 (1989) ............................................................................................ 26
Case: 14-1335 Document: 129 Page: 6 Filed: 09/05/2014
v

Bush & Lane Piano Co. v. Becker Bros.,
222 F. 902 (2d Cir. 1915) ................................................................................... 17
Bush & Lane Piano Co. v. Becker Bros.,
234 F. 79 (2d Cir. 1916) ..................................................................................... 17
Carey v. Piphus,
435 U.S. 247 (1978) ............................................................................................ 15
Citrus El Dorado, LLC v. Stearns Bank,
552 F. App’x 625 (9th Cir. 2014) ....................................................................... 29
Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356 (Fed. Cir. 2012) .......................................................................... 24
Commil USA, LLC v. Cisco Sys., Inc.,
720 F.3d 1361 (Fed. Cir. 2013) ...................................................................... 6, 40
Crocs, Inc. v. ITC,
598 F.3d 1294 (Fed. Cir. 2010) ............................................................................ 3
Datamize LLC v. Plumtree Software, Inc.,
417 F.3d 1342 (Fed. Cir. 2005) .......................................................................... 36
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314 (Fed. Cir. 2009) .......................................................................... 38
Disc Golf Ass’n v. Champion Discs, Inc.,
158 F.3d 1002 (9th Cir. 1998) ............................................................................ 23
DSU Med. Corp. v. JMS Co.,
471 F.3d 1293 (Fed. Cir. 2006) ...................................................................... 6, 37
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) ................................................................ 3, 4, 6, 10
Elwood v. Christie,
144 E.R. 537 (1865) ............................................................................................ 16
Environ Prods., Inc. v. Furon Co.,
215 F.3d 1261 (Fed. Cir. 2000) ............................................................................ 7
Case: 14-1335 Document: 129 Page: 7 Filed: 09/05/2014
vi

First Brands Corp. v. Fred Meyer, Inc.,
809 F.2d 1378 (9th Cir. 1987) ...................................................................... 19, 21
Gantt v. City of Los Angeles,
717 F.3d 702 (9th Cir. 2013) .............................................................................. 29
Georgia-Pacific Corp. v. U.S. Plywood Corp.,
318 F. Supp. 1116 (S.D.N.Y. 1970) ............................................................. 39, 40
In re Gleave,
560 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 34
Glover v. BIC Corp.,
6 F.3d 1318 (9th Cir. 1993) ................................................................................ 28
Grain Processing Corp. v. Am. Maize-Prods. Co.,
185 F.3d 1341 (Fed. Cir. 1999) .......................................................................... 38
Grosvenor Properties Ltd. v. Southmark Corp.,
896 F.2d 1149 (9th Cir. 1990) ............................................................................ 28
Gulliford v. Pierce Cnty.,
136 F.3d 1345 (9th Cir. 1998) ............................................................................ 28
Hunter v. County of Sacramento,
652 F.3d 1225 (9th Cir. 2011) ...................................................................... 28, 29
Intel Corp. v. Terabyte Int’l, Inc.,
6 F.3d 614 (9th Cir. 1993) .................................................................................. 32
Kaufman Co. v. Lantech, Inc.,
926 F.2d 1136 (Fed. Cir. 1991) .................................................................... 33, 37
Krippelz v. Ford Motor Co.,
667 F.3d 1261 (Fed. Cir. 2012) .......................................................................... 34
L.A. Gear, Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117 (Fed. Cir. 1993) ............................................................................ 4
Lee v. Dayton-Hudson Corp.,
838 F.2d 1186 (Fed. Cir. 1988) ............................................................................ 5
Case: 14-1335 Document: 129 Page: 8 Filed: 09/05/2014
vii

Lindy Pen Co. v. Bic Pen Corp.,
982 F.2d 1400 (9th Cir. 1993) ............................................................................ 31
Mackie v. Rieser,
296 F.3d 909 (9th Cir. 2002) .............................................................................. 15
Meyer v. Holley,
537 U.S. 280 (2003) ............................................................................................ 15
Nautilus Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120 (2014) .............................................................................. 4, 34, 36
Norwood v. Vance,
591 F.3d 1062 (9th Cir. 2010) ............................................................................ 27
OddzOn Prods., Inc. v. Just Toys, Inc.,
122 F.3d 1396 (Fed. Cir. 1997) .............................................................. 3, 4, 5, 14
PHG Techs., LLC v. St. John Cos.,
469 F.3d 1361 (Fed. Cir. 2006) ............................................................................ 4
Presidio Components, Inc. v. American Technical Ceramics Corp.,
702 F.3d 1351 (Fed. Cir. 2012) .......................................................................... 32
Read Corp. v. Portec, Inc.,
970 F.2d 816 (Fed. Cir. 1992) .............................................................................. 3
Revision Military, Inc. v. Balboa Mfg. Co.,
2011 WL 3875624 (D. Vt. Aug. 31, 2011) ......................................................... 10
Richardson v. Stanley Works, Inc.,
597 F.3d 1288 (Fed. Cir. 2010) ........................................................................ 3, 4
Rite-Hite Corp. v. Kelley Co.,
56 F.3d 1538 (Fed. Cir. 1995) ............................................................................ 27
Schnadig Corp. v. Gaines Manufacturing Co.,
1977 WL 23183 (W.D. Tenn. July 20, 1977) ..................................................... 17
SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312 (Fed. Cir. 2006) ............................................................................ 3
Case: 14-1335 Document: 129 Page: 9 Filed: 09/05/2014
viii

Snake River Valley Elec. Ass’n v. Pacificorp,
357 F.3d 1042 (9th Cir. 2004) ............................................................................ 28
SynQor, Inc. v. Artesyn Techs., Inc.,
709 F.3d 1365 (Fed. Cir. 2013) ............................................................................ 6
Talking Rain Beverage Co. v. S. Beach Beverage Co.,
349 F.3d 601 (9th Cir. 2003) .............................................................................. 23
Thane Int’l, Inc. v. Trek Bicycle Corp.,
305 F.3d 894 (9th Cir. 2002) .............................................................................. 22
Tie Tech, Inc. v. Kinedyne Corp.,
296 F.3d 778 (9th Cir. 2002) .............................................................................. 22
Tilghman v. Proctor,
125 U.S. 136 (1888) ............................................................................................ 15
TrafFix Devices, Inc. v. Marketing Displays, Inc.,
532 U.S. 23 (2001) .............................................................................................. 30
United States v. Hankey,
203 F.3d 1160 (9th Cir. 2000) ............................................................................ 44
United States v. Marcus,
560 U.S. 258 (2010) ............................................................................................ 29
United States v. Mason,
902 F.2d 1434 (9th Cir. 1990) ............................................................................ 29
United States v. Philip Morris USA, Inc.,
219 F.R.D. 198 (D.D.C. 2004) ........................................................................... 45
Untermeyer v. Freund,
50 F. 77 (C.C.S.D.N.Y. 1892) ............................................................................ 17
Untermeyer v. Freund,
58 F. 205 (2d Cir. 1893) ..................................................................................... 17
Va. Polytechnic Inst. & State Univ. v. Hokie Real Estate, Inc.,
2011 WL 926862 (W.D. Va. Mar. 15, 2011) ..................................................... 24
Case: 14-1335 Document: 129 Page: 10 Filed: 09/05/2014
ix

Versa Prods. Co. v. Bifold Co.,
50 F.3d 189 (3d Cir. 1995) ................................................................................. 31
Weinar v. Rollform, Inc.,
744 F.2d 797 (Fed. Cir. 1984) .......................................................................... 6, 7
Whitserve, LLC v. Computer Packages, Inc.,
694 F.3d 10 (Fed. Cir. 2012) .............................................................................. 39
Young v. Grand Rapids Refrigerator Co.,
268 F. 966 (6th Cir. 1920) ............................................................................ 17, 18
Statutes, Regulations & Rules
15 U.S.C. § 1125(c)(1) ............................................................................................. 21
15 U.S.C. § 1125(c)(2)(A) ....................................................................................... 24
15 U.S.C. § 1125(c)(5)(B)(i) .............................................................................. 29, 30
35 U.S.C. § 284 ........................................................................................................ 27
35 U.S.C. § 287 ........................................................................................................ 27
35 U.S.C. § 289 ............................................................................................ 15, 16, 18
37 C.F.R. § 1.153(a) ................................................................................................. 17
Fed. R. Civ. P. 14(a)(1) ............................................................................................ 18
Fed. R. Civ. P. 51(d)(2) ............................................................................................ 28
Fed. R. Civ. P. 59 ..................................................................................................... 27
Fed. R. Evid. 403. .................................................................................................... 44
An Act for Amending the Law for Granting Patents for Inventions,
1852, 15 & 16 Vict., c. 83, § 42 .......................................................................... 16
Designs Act, 1842, 5 & 6 Vict., c.100, §§ 8-9 ......................................................... 16
Patents, Designs, & Trade Marks Act, 1883, 46 & 47 Vict., c. 57, §§ 58-59 ......... 16

Case: 14-1335 Document: 129 Page: 11 Filed: 09/05/2014
x

Miscellaneous Authorities
18 Cong. Rec. 835 (1887) ........................................................................................ 15
4 McCarthy on Trademarks § 24 (4th ed. 2014) ............................................... 22, 26
Michael Risch, Functionality and Graphical User Interface Design Patents,
17 Stan. Tech. L. Rev. 53 (2013) ........................................................................ 14
S. Rep. No. 49-206 (1886) ....................................................................................... 16
Wright & Miller, 11 Fed. Prac. & Proc. Civ. § 2886 (3d ed. 2014) .......................... 6
Case: 14-1335 Document: 129 Page: 12 Filed: 09/05/2014
1

INTRODUCTION
Apple’s answering brief tracks its trial strategy: Apple touts the iPhone and
the iPad as “iconic” and “beautiful” and endlessly repeats (Br. 3-4, 12, 15, 19, 22-
24, 33, 65, 70-71, 87, 91) that Samsung supposedly “copied” those designs. But
the issue before this Court is whether Samsung infringed the ornamental
appearance of specific Apple designs, or diluted particular Apple trade dresses, so
as to cause Samsung’s profits or Apple’s lost sales. Whether the iPhone was the
“Invention of the Year” (Br. 5), the tech press praised the iPhone’s overall look (id.
at 5-6, 14-15, 56), or consumers value such generalized features as “beauty,”
“design and style” (id. at 50 n.14), is irrelevant. And because copying is not an
element of patent infringement (as the district court erroneously failed to instruct,
see Samsung Br. 8-9), a jury barraged with irrelevant copying evidence should at
least have been permitted to hear evidence that Samsung had itself developed
iPhone-like smartphone designs well before the iPhone was ever released.
Moreover, Apple’s insistence that it may receive all of Samsung’s profits for
supposed infringement of narrow design features that constitute only a minor part
of a complex smartphone—features that Apple’s own co-founder called only “very
small things I don’t really call that innovative” (A9145)—runs counter to this
Court’s extensive jurisprudence requiring a causal nexus between infringement and
harm. Cf. Apple Inc. v. Samsung Elecs. Co., Ltd., 735 F.3d 1352, 1365-68 (Fed.
Case: 14-1335 Document: 129 Page: 13 Filed: 09/05/2014
2

Cir. 2013) (“Apple III”); Apple Inc. v. Samsung Elecs. Co., Ltd., 695 F.3d 1370,
1375-77 (Fed. Cir. 2012) (“Apple II”); Apple Inc. v. Samsung Elecs. Co. Ltd., 678
F.3d 1314, 1324-25 (Fed. Cir. 2012) (“Apple I”). Nothing in the Patent Act
immunizes design patents from this Court’s well-developed requirements of
causation and proportionality in patent damages, as the amici supporting Samsung
confirm.
The judgment below should be reversed or at a minimum vacated and
remanded for new trial.
ARGUMENT
I. APPLE IS UNABLE TO DEFEND THE $399 MILLION JUDGMENT
FOR DESIGN-PATENT INFRINGEMENT
A. No Properly-Instructed Jury Could Find Design-Patent
Infringement
1. Apple Fails To Rehabilitate The District Court’s
Instructions On Scope And Infringement
Apple fails in defending (Br. 27-32) the district court’s design-patent jury
instructions despite their failure to require the jury (a) to factor out functional or
structural elements, (b) to consider lack of actual deception, and (c) to take the
prior art into account.
Case: 14-1335 Document: 129 Page: 14 Filed: 09/05/2014
3

(a) Scope And Functionality
1

First, this Court’s decisions do not permit infringement findings based on
the overall appearance of a design “as a whole” or “in its entirety,” but rather only
on a design’s “overall ornamental visual impression,” OddzOn Prods., Inc. v. Just
Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) (emphasis added)—that is, overall
appearance with functional features factored out, see Richardson v. Stanley
Works, Inc., 597 F.3d 1288, 1293-94 (Fed. Cir. 2010); Read Corp. v. Portec, Inc.,
970 F.2d 816, 825 & n.5 (Fed. Cir. 1992). Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665, 677 (Fed. Cir. 2008) (en banc), and Crocs, Inc. v. ITC, 598 F.3d
1294, 1303 (Fed. Cir. 2010), are not to the contrary, for neither involved
functionality limitations let alone held that such elements may be included in
infringement analysis.
Second, factoring out functional elements is not merely discretionary.
Egyptian Goddess confirmed that “trial courts have a duty to conduct claim
construction in design patent cases,” 543 F.3d at 679 (emphasis added), and that
“‘the scope of the claim must be construed in order to identify the non-functional

1
Samsung did not waive claim-construction arguments in its opening brief,
which identified unprotected features of Apple’s design patents (Samsung Br. 26-
28) and argued that the district court erred in failing to “construe[] the design
patents so as to properly limit their scope” and “to require” the jury to exclude
functional aspects (id. at 22-24 (citing proposed claim-construction and
infringement instructions)). SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d
1312, 1320 (Fed. Cir. 2006), requires no more.
Case: 14-1335 Document: 129 Page: 15 Filed: 09/05/2014
4

aspects of the design as shown in the patent,’” id. at 680 (quoting OddzOn, 122
F.3d at 1405) (emphasis added); see Richardson, 597 F.3d at 1293-94. And
because design-patent drawings setting forth a claim do not, in and of themselves,
disclose limitations based on the inclusion of functional elements, those limitations
must be explained to the jury in order “to afford clear notice of what is claimed.”
Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014).
Third, Apple incorrectly argues (Br. 29-30 & n.6) that a design patent’s
scope need not be limited unless the entire design is “dictated by function.”
Apple’s authorities all deal with challenges to validity, but even where “functional
characteristics do not invalidate the design patent,” they still “limit the scope of the
protected subject matter,” OddzOn, 122 F.3d at 1406 (emphasis added); see
Richardson, 597 F.3d at 1294 (same), and thus must be factored out of the
infringement analysis.
Fourth, Apple incorrectly states (Br. 30 & n.7) that functionality is negated
by the mere existence of alternative designs. To the contrary, such designs defeat
functionality only if “functionally equivalent” such that they “do not adversely
affect the utility” of the article. PHG Techs., LLC v. St. John Cos., 469 F.3d 1361,
1367 (Fed. Cir. 2006) (emphasis added).
2
Moreover, the basic configuration or

2
Apple misplaces reliance (Br. 29-30) on L.A. Gear, Inc. v. Thom McAn
Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993), where it was undisputed that
alternative designs could “perform the functions of the elements of the [patented]
Case: 14-1335 Document: 129 Page: 16 Filed: 09/05/2014
5

structure of a design is unprotected even if alternative designs could be created
using the same concept or elements.
3

Finally, Apple’s assertion (Br. 31) that “no design element” here was
“dictated by function” is belied by the testimony of Apple’s own witnesses that the
elements of a display screen, clear cover over the display, and speaker at the top
(for the D’677 and D’087 patents) and finger-sized icons used as “visual
shorthand” and arranged in a grid (for the D’305 patent) were either “absolutely
functional,” “necessary,” or not features “Apple owns.” A41202:25-A41203:1-9;
A41200:13-17; A40681; A41459:9-25; A41471-72; A41479:25-A41480:7;
A41442-44; A41456. Apple’s evidence of alternative designs for entire
smartphones or icon screens (Br. 37, 44) is irrelevant to the functionality of such
elements.
(b) Deceptive Similarity
Apple argues (Br. 32) that the court correctly instructed that “proof of actual
deception was not required,” but does not deny that its own experts admitted that

design,” and Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563, 1566 (Fed. Cir.
1996), where all alternative designs were rejected because they could not provide
equivalent functionality.
3
See OddzOn, 122 F.3d at 1405-06 (holding unprotectable general
configuration of “rocket-like tossing ball” having “football shape combined with
fins on a tail”); Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188-89 (Fed. Cir.
1988) (holding unprotectable “basic configuration” of massager having “an
elongated handle [and] two opposing balls at one end”).
Case: 14-1335 Document: 129 Page: 17 Filed: 09/05/2014
6

there has been no marketplace deception despite extensive sales of the relevant
products. Apple offers no justification, in light of that evidence, for the court’s
refusal to instruct that it might be relevant to whether ordinary-observer deception
is likely.
(c) Prior Art
Apple fails to explain how Egyptian Goddess, 543 F.3d at 677-78, permits
use of discretionary “guidelines” in which small differences merely “may be
important” to the ordinary observer (A01394 (emphasis added)), even when the
claimed design is similar to prior-art designs and the accused similarities also
existed in prior art. It does not.
2. Apple Fails To Identify Substantial Evidence Of Deceptive
Similarity To Ornamental Features
These instructional errors at a minimum require a new trial because they
“could have changed the result.” Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d
1361, 1367 (Fed. Cir. 2013).
4
Here, however, the absence of evidence that would

4
Apple disagrees that an error that “could have changed the result”
supports a new trial (Br. 26 n.2), but this has long been the canonical instructional-
error test. E.g., Weinar v. Rollform, Inc., 744 F.2d 797, 808 (Fed. Cir. 1984);
Wright & Miller, 11 Fed. Prac. & Proc. Civ. § 2886 & n.3 (3d ed. 2014) (endorsing
test and collecting cases). The language in SynQor, Inc. v. Artesyn Techs., Inc.,
709 F.3d 1365 (Fed. Cir. 2013), that Apple claims is contradictory—that errors
“‘as a whole clearly mislead the jury’” (id. at 1379 (quoting DSU Med. Corp. v.
JMS Co., 471 F.3d 1293, 1304 (Fed. Cir. 2006) (en banc)))—merely requires that
errors be reviewed in context because a statement in one instruction might clarify
Case: 14-1335 Document: 129 Page: 18 Filed: 09/05/2014
7

support a liability finding by a properly-instructed jury warrants judgment for
Samsung.
(a) D’677 And D’087 Patents
Apple relies (Br. 33-35) on its expert’s opinions that Samsung’s products
bore an “overall similarity” to Apple’s designs, but such reliance is misplaced
because only evidence of deceptive similarity to their protected ornamental
appearance can support infringement, and Apple’s experts concededly factored
nothing out in their comparisons. See supra, at 3-5.
Scope and Functionality. Apple’s witnesses admitted that elements of a
display screen with a clear cover and speaker-at-the-top are “necessary” and
“functional.” A41202:25-A41203:1-9; A41200:13-17; A40681. Apple cites (Br.
37) “alternative” designs that supposedly show non-functionality, but each of those
“alternatives” shows the same elements—a pattern that confirms their functionality.
Apple nowhere contests that it may not monopolize the basic form of a rectangle
with rounded corners or the use of large screens, and does not argue that there are
functionally equivalent alternatives for such attributes, nor could it, as the evidence
showed that such elements provide superior functionality. A40676-77;
A40873:18-19; A40869:13-40870:3; A40682:13-15; A42612:3-42618:12;
A28590-95.

another. Environ Prods., Inc. v. Furon Co., 215 F.3d 1261, 1266-67 (Fed. Cir.
2000) (stating both parts of test); Weinar, 744 F.2d at 808.
Case: 14-1335 Document: 129 Page: 19 Filed: 09/05/2014
8

Deceptive Similarity. Apple cannot refute its own expert’s admissions that
the ordinary consumer would not be deceived in purchasing. A41104:11-
A41105:8; A41106:13-A41107:13. Apple’s expert’s statement that an ordinary
observer “might mistake” a single Samsung phone for the D’677 patent (A41058,
cited at Br. 35) falls far short of showing the required likelihood of deception. And
Apple’s reliance on news articles (Br. 35-36) is unavailing, for these hearsay
statements were excluded as to the truth and do not show deception. A08427
(listing PX6); A08431 (listing PX174); A41078-79; A41528:22-A41529:1.
Apple simply ignores that once similarities in unprotected functional and
structural attributes are disregarded, the differences between the parties’ products
become prominent:

D’677 GSII (T-Mobile) GSII (Epic 4G Touch)
A01314 A24719 A24721
Case: 14-1335 Document: 129 Page: 20 Filed: 09/05/2014
9

These devices are all rectangular and have rounded corners and large display
screens with clear covers and speakers at the top, but such similarities in functional
or structural features are not actionable. As to protected ornamental attributes,
Samsung’s devices are very different from Apple’s minimalist designs, employing
different proportions and filling the limited space outside the operative display
screens with multiple icons across the bottom, bold metallic writing, and other
ornamentation, such as speaker covers, sensors and camera holes at the top:

D’677 GSII (T-Mobile)
A01314 A24719
Apple is unpersuasive (Br. 33) in dismissing these differences as “minor.”
5


5
Apple is wrong (Br. 33 n.8) that the presence of bright metallic writing on
Samsung’s phones is irrelevant, for this writing creates an aesthetic difference
regardless of the words that are used. As the district court instructed, “[t]he
placement and ornamentation of a logo may alter the overall design.” A44024; see
Case: 14-1335 Document: 129 Page: 21 Filed: 09/05/2014
10

Prior Art. While Apple argues (Br. 38-41) that no single piece of prior art
reveals every element of its designs, the ordinary observer considers prior art in
the aggregate when assessing infringement. Egyptian Goddess, 543 F.3d at 678-
83. Apple never disputes that, in the aggregate, the prior art reveals every
similarity on which Apple relied for its proof of infringement. Those similarities
are even more apparent once functional and structural elements are disregarded.
Moreover, Apple’s positions are unpersuasive even taking the prior art one-
by-one. As to the LG Prada, for example, Apple argues only that it has a
“noticeably smaller screen” that is supposedly “‘not centered,’” a purportedly
“‘longer and narrower’” body, and a “‘large key’” running across the bottom (Br.
40-41 (quoting A43611:15-25)):

Revision Military, Inc. v. Balboa Mfg. Co., 2011 WL 3875624, *16 (D. Vt. Aug.
31, 2011), vacated in part on other grounds, 700 F.3d 524 (Fed. Cir. 2012).
Case: 14-1335 Document: 129 Page: 22 Filed: 09/05/2014
11


D’677 LG Prada
A01314 A24675
If those variations yield a “‘different all over impression’” defeating substantial
similarity (Br. 40 (quoting A43611:15-22)), then so too must comparable
variations between Apple’s and Samsung’s designs. For example, the Fascinate
has a screen that is “not centered,” is “longer and narrower” than the D’677, has
different corner roundness, has visually-significant icons and writing across the
bottom akin to the Prada’s “large key,” and includes additional ornamentation
absent from Apple’s design:
Case: 14-1335 Document: 129 Page: 23 Filed: 09/05/2014
12


D’677 LG Prada Fascinate
A01314 A24675 A24703
Those same variations and more exist as to the D’087 patent, for the uneven
bezels in Samsung’s devices further enhance the dissimilarity:
Case: 14-1335 Document: 129 Page: 24 Filed: 09/05/2014
13



D’087 Galaxy S4G
A01298 A24712
Apple dismisses (Br. 34) bezel variations as “minor,” but Apple itself argues (id. at
39) that comparable differences as to the prior art, noticeable only in the side view,
create an “extraordinarily different” visual impression:

D’087 JP’638
Case: 14-1335 Document: 129 Page: 25 Filed: 09/05/2014
14

Apple I, 678 F.3d at 1326.
(b) D’305 Patent
Apple errs (Br. 41-43) in suggesting that there was substantial evidence that
Samsung’s phones convey the same “overall visual impression” as its patented
graphical user interface design based on the use of a grid of colorful icons in
rounded rectangular form, for such elements are unprotected as functional and
structural. See Michael Risch, Functionality and Graphical User Interface Design
Patents, 17 Stan. Tech. L. Rev. 53, 100-01 (2013).
6
An Apple witness’s view that
the overall design is “‘beautiful’” (Br. 43 (quoting A40630:21-22)) fails to
establish deceptive similarity based on ornamental elements alone of the narrow
patent-in-suit, see OddzOn, 122 F.3d at 1405-07, and Apple does not dispute the
prominent difference between the parties’ designs when focusing on such attributes.
B. No Properly-Instructed Jury Could Award Samsung’s Entire
Profits For Design-Patent Infringement
1. Apple Fails To Overcome The District Court’s Error In
Omitting A Causation Requirement
As Apple fails to acknowledge in defending the design-patent damages
instructions (Br. 45-51), causation is a separate requirement that precedes any

6
Apple does not dispute that its expert Dr. Kare did not even consider
“from a functional standpoint, what is or is not necessary for the user” (A43487;
A41474)—rendering her conclusory testimony of overall “confusing similarity”
immaterial.
Case: 14-1335 Document: 129 Page: 26 Filed: 09/05/2014
15

apportionment inquiry. Cf. Mackie v. Rieser, 296 F.3d 909, 915 (9th Cir. 2002);
Andreas v. Volkswagen of Am., Inc., 336 F.3d 789, 796 (8th Cir. 2003).
Congress recognized this distinction in enacting what is now Section 289.
By 1887, causation was a well-established prerequisite to damages in American
common law and patent law.
7
The provision’s primary sponsor, Representative
Martin, insisted that there was no intent to abrogate that rule; when asked whether
“the plaintiff may recover the entire profit upon the article of product, without any
proof that this arises from the use of the design,” he responded, “I can not put any
such construction on this law,” and when asked whether “all the profits made on
the article embodying the infringement” could be awarded “whether those profits
arise from the use of the design alone or from various other circumstances which
may enter into the manufacture,” he responded that the bill had “no such
purpose.” 18 Cong. Rec. 835 (1887) (emphases added).

7
See, e.g., Carey v. Piphus, 435 U.S. 247, 255-56 (1978) (“principle that
damages are designed to compensate persons for injuries caused by the deprivation
of rights hardly could have been foreign to the many lawyers in Congress in
1871”) (emphasis added); Tilghman v. Proctor, 125 U.S. 136, 146 (1888) (“The
profits … which he must account for, are not those which he might reasonably
have made, but those which he did make, by the use of the plaintiff’s invention.”)
(emphasis added); cf. Meyer v. Holley, 537 U.S. 280, 285 (2003) (“[W]hen
Congress creates a tort action, it legislates against a legal background of ordinary
tort-related … rules and consequently intends its legislation to incorporate those
rules.”).
Case: 14-1335 Document: 129 Page: 27 Filed: 09/05/2014
16

Indeed, as Apple’s amici acknowledge, the Patent Act of 1887 was modeled
on British patent-infringement statutes, which impose a similar requirement.
8
See
Br. of Amici Curiae Jason J. Du Mont & Mark D. Janis at 24; see also S. Rep. No.
49-206, at 2 (1886). Under the British scheme, where a patentee sought an
accounting of infringer’s profits, it was “clearly not entitled to anything beyond the
profits which the defendants have actually made by the infringement of the patent.”
Elwood v. Christie, 144 E.R. 537, 538 (1865) (emphasis added); accord id. at 539
n.2.
In a footnote (Br. 50 n.14), Apple purports to identify evidence of “a causal
relationship between design and sales,” but that generic evidence about consumer
interest in “design” or “style” is insufficient to show causation as to the specific
patented features here. See Apple III, 735 F.3d at 1366. And Apple’s so-called
“copying evidence” cannot alone show causation. See id. at 1367; Apple I, 678
F.3d at 1327-28.
2. Apple Fails To Overcome The District Court’s Error In
Omitting A Nexus To The “Article Of Manufacture”
Nor does Apple succeed in defending (Br. 51-53) the district court’s failure
to instruct that an “article of manufacture” under Section 289 may comprise less

8
Designs Act, 1842, 5 & 6 Vict., c.100, §§ 8-9 (establishing remedies for
design-patent infringement); Patents, Designs, & Trade Marks Act, 1883, 46 & 47
Vict., c. 57, §§ 58-59 (reenacting same); An Act for Amending the Law for
Granting Patents for Inventions, 1852, 15 & 16 Vict., c. 83, § 42 (jurisdictional
statute for infringement claims).
Case: 14-1335 Document: 129 Page: 28 Filed: 09/05/2014
17

than the entire product. A portion of a phone’s outer casing and a graphical user
interface—which are all that Apple’s design patents purport to cover—are just as
distinct from a smartphone as “a piano and a piano case” (Br. 51). See Br. of
Amicus Curiae Computer & Communications Industry Association at 5-6.
9
A
consumer need not be able to purchase an “article of manufacture” separately;
whether a product’s components are separately marketable “makes no difference in
the rule of law, … once the article to which the design was applied has been
ascertained.” Bush & Lane Piano Co. v. Becker Bros., 234 F. 79, 83 (2d Cir.
1916).
10
Apple identifies no decision from this Court or its predecessors holding

9
Indeed, the title of Apple’s patent application for the D’305 limits the
“article of manufacture” to the “Graphical User Interface for a Display Screen or
Portion Thereof” (A01289); see 37 C.F.R. § 1.153(a) (“The title of the design must
designate the particular article. … The claim shall be in formal terms to the
ornamental design for the article (specifying name) as shown, or as shown and
described.”) (emphasis added). And while Apple’s applications for the D’677 and
D’087 have improperly broader titles (“Electronic Device” (A01294; A01310)),
the claims are limited to the top case portion of the device (Apple I, 678 F.3d at
1317).
10
Nor do the Piano Cases conflict with Untermeyer v. Freund, 58 F. 205
(2d Cir. 1893), as there, the “article of manufacture” for which profits could be
recovered was only the watch case, not the watch itself. See Untermeyer v.
Freund, 50 F. 77, 77-78 (C.C.S.D.N.Y. 1892); Bush & Lane Piano Co. v. Becker
Bros., 222 F. 902, 905 (2d Cir. 1915) (noting same).
Apple’s efforts to distinguish Schnadig Corp. v. Gaines Manufacturing Co.,
1977 WL 23183 (W.D. Tenn. July 20, 1977), and Young v. Grand Rapids
Refrigerator Co., 268 F. 966 (6th Cir. 1920), likewise fail as those cases both
involve consideration of profits for only the component of a product as to which
the patented design was applied (sectional sofa and latch, respectively)—not the
entire product as sold. Indeed, Apple’s interpretation of Section 289 would permit
Case: 14-1335 Document: 129 Page: 29 Filed: 09/05/2014
18

that a patentee is entitled to profits for an entire product where (as here) the
patented design covers less than all or nearly all of the product.
Apple likewise fails to dispel the risk of double recovery. Section 289’s
double-recovery provision prohibits only a single patentee from obtaining multiple
recoveries, see 35 U.S.C. § 289, leaving multiple patentees free to seek entire
profits multiple times over. Apple’s suggestion that an alleged infringer could
implead the initial plaintiff in subsequent suits disregards that an impleaded
patentee would have to be potentially “liable to [the alleged infringer] for all or
part of the claim against it.” Fed. R. Civ. P. 14(a)(1).
II. APPLE IS UNABLE TO DEFEND THE $382 MILLION JUDGMENT
FOR TRADE-DRESS DILUTION
Apple fails to explain why it should be able to obtain through trade-dress
law what it could never obtain through patent law—an unprecedented perpetual
monopoly on such broad and generic concepts as a rectangular shape with round
corners. While Apple’s brief repeatedly refers to the “iPhone” in general, its trade
dresses are far narrower. Apple omitted from its trade dresses the word “Apple,”
the iPhone’s “home button,” and the Apple logo. Instead, they consist only of
specific features like a specific array of icons, a “row of small dots,” and a bottom

a holder of a patent for a refrigerator latch to recover all the profits from the sale of
a refrigerator containing that latch—an interpretation so extreme that it was not
even “seriously contended” in Young, 268 F. at 974.
Case: 14-1335 Document: 129 Page: 30 Filed: 09/05/2014
19

dock of icons that “does not change as other pages of the user interface are
viewed.” A01330-31; A07357.
A. Apple Fails To Show That A Reasonable Jury Could Find Trade-
Dress Dilution Liability
1. Apple Fails To Identify Substantial Evidence That Its Trade
Dresses, As Claimed, Were Famous
Apple incorrectly asserts (Br. 55 n.16) that trade-dress fame turns on
“‘overall visual impression.’” The fame of the iPhone home button and Apple
logo are irrelevant, as they are not elements of the claimed trade dresses. See First
Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987). Apple
must point to evidence that ties fame among general consumers to its specific trade
dresses, and minor differences are significant, as illustrated by the fact that the jury
found some of Apple’s trade dresses unprotectable (e.g., the “combination iPhone
trade dress” that omitted the “row of small dots,” see A7552; A7358).
(a) Apple’s Promotional Materials Do Not Even Depict
The Claimed Trade Dresses
Apple misplaces reliance (Br. 55) on “clips from popular news and TV
shows,” for this evidence does not depict the claimed trade dresses, and a bare list
of television program titles (A24900) cannot fill this gap. The “representative
television ad” does not feature all sixteen icons claimed by the registered trade
dress or the “row of small dots” claimed in the unregistered trade dress. Nor did
Case: 14-1335 Document: 129 Page: 31 Filed: 09/05/2014
20

the commercial (or any print ad) show that the bottom dock of icons did “not
change as other pages of the user interface are viewed.”

A31073. Apple also cites (Br. 56) a Time article that depicts two entirely different
trade dresses, one fictionalized, and one that contains neither a row of dots nor
shows that the bottom dock of icons does not change:

Case: 14-1335 Document: 129 Page: 32 Filed: 09/05/2014
21

A27150-52. Not only do mere depictions of trade dress in advertisements in
themselves fail to prove fame, but materials that do not even depict the features of
the trade dresses are not evidence that the trade dresses, as claimed, are famous and
designate Apple as a product’s source. See First Brands, 809 F.2d at 1383.
(b) There Is No Evidence Of Fame-Creating Sales Of
Products Practicing The Trade Dresses
Apple cites (Br. 56) testimony that the iPhone sells “extremely well” and
sales “spike” when it releases a new model. But conclusory statements that a
product sells well are not substantial evidence of fame. Nor is Apple’s slide
depicting “cumulative unit sales” of all iPhone models (A24901), for it lumps
together sales of the original iPhone (embodying the alleged registered trade
dress), the iPhone 3G and iPhone 3GS (embodying the alleged unregistered trade
dress), and the iPhone 4 (not embodying any trade dress).
11

(c) There Is No Evidence Of Substantial Actual
Recognition Of The Trade Dresses
Apple’s evidence of “actual recognition” of the trade dresses fails. First,
Apple cites (Br. 56-57) evidence that consumers recognize the word “iPhone,”
unclaimed features of different iPhone models, or the “iPhone” brand generally.

11
Apple bore the burden of proving fame by the time Samsung allegedly
began diluting in July 2010. 15 U.S.C. § 1125(c)(1). All sales after that date and
all sales of iPhone models that do not practice the trade dresses are therefore
irrelevant, including the iPhone 4. Apple erroneously claims that “the chart
tracked only sales before the iPhone 4’s release in June 2010” (Br. 56), but the
chart plainly extends far beyond June 2010 (A24901).
Case: 14-1335 Document: 129 Page: 33 Filed: 09/05/2014
22

But the claimed trade dresses specifically omitted the word “iPhone” and features
like the iPhone’s home button, and not all iPhone models use either trade dress.
Apple’s only citation for the proposition (Br. 57, citing A24904) that “[n]umerous
press articles prominently displayed the iPhone’s front face and graphical user
interface” is Apple’s own summary of news articles that allegedly displayed “some
of the design features.”
Second, Apple relies (Br. 56-57) on the Van Liere survey, but that survey
defeats fame because it showed recognition by only “38 percent and 37 percent”
among a limited consumer universe (A41701), a far cry from the “75% of the
general consuming public,” 4 McCarthy on Trademarks § 24:104, 24:106 (4th ed.
2014) (“McCarthy”), that might make the claimed trade dress “part of the
collective national consciousness,” Thane Int’l, Inc. v. Trek Bicycle Corp., 305
F.3d 894, 911-12 (9th Cir. 2002).
2. Apple Fails To Refute That Its Trade Dresses Are
Functional
While conceding (Br. 58) that a trade dress that “affects the cost or quality of
the article” is functional, Apple argues nonetheless that its trade dresses must be
analyzed “as a whole,” even if each of their component parts is functional. The
Ninth Circuit has rejected this argument as “semantic trickery.” Tie Tech, Inc. v.
Kinedyne Corp., 296 F.3d 778, 786 (9th Cir. 2002) (internal quotation marks
omitted).
Case: 14-1335 Document: 129 Page: 34 Filed: 09/05/2014
23

Contrary to Apple’s argument (Br. 60-62), the four utilitarian functionality
factors set forth in Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1006
(9th Cir. 1998), do not show non-functionality here. First, advertisements may
emphasize the “product as hero” and “showcase the products” precisely because of
the products’ functional appeal.
Second, the iPhone’s use of “hardened” or “high grade” steel is irrelevant;
although the original iPhone may have used it, neither of the claimed trade dresses
included “hardened,” “high grade” steel.
Third, Apple’s testimony that the original iPhone was “beautiful” merely
shows that its “appeal” is aesthetic, not based on its identification of source. Au-
Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1073 (9th Cir.
2006). Further, this testimony relates to the original iPhone, which Apple does not
contend practiced the unregistered trade dress, and is not tied to the elements of the
registered trade dress.
Fourth, “the existence of alternative designs cannot negate a trademark’s
functionality.” Talking Rain Beverage Co. v. S. Beach Beverage Co., 349 F.3d
601, 603 (9th Cir. 2003). If it affects quality, “the inquiry is over—the feature is
functional and not protected.” Au-Tomotive Gold, 457 F.3d at 1072.
Case: 14-1335 Document: 129 Page: 35 Filed: 09/05/2014
24

3. Apple Does Not Identify Substantial Evidence Of Likely
Dilution
Similarity. Apple cites (Br. 63) the conclusory testimony of its expert that
the parties’ products look similar and claims that the differences are “tiny” only by
ignoring the language of its registered trade dress, with which the accused products
share only one of sixteen icons in common. A01330-31. In light of the specificity
of the registration, these differences are significant.
Distinctiveness. Apple argues (Br. 64) that its trade dresses acquired
distinctiveness through advertising, but fails to show that any advertisement
depicts its trade dresses, including the user interface features. Apple relies on the
Poret survey, but that survey was limited to respondents who already recognized
the iPhone (A41587-88)—rendering it irrelevant to the statute’s requirement that
the trade dress be “widely recognized by the general consuming public.” 15
U.S.C. § 1125(c)(2)(A) (emphasis added); see Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 1372 (Fed. Cir. 2012).
Exclusive Use. Apple contends (Br. 64) that it has not licensed its trade
dresses, but the “exclusive use” factor is not limited to licensed use. See Va.
Polytechnic Inst. & State Univ. v. Hokie Real Estate, Inc., 2011 WL 926862, *15
(W.D. Va. Mar. 15, 2011). Apple also ignores that many other manufacturers used
similar trade dresses, some of which are depicted below:
Case: 14-1335 Document: 129 Page: 36 Filed: 09/05/2014
25


A29511 A29516 A29521

A29522 A29487 A29512
Degree of Recognition. Apple relies (Br. 64-65) on the same deficient
Poret survey, which excluded all respondents who did not associate the trade
dresses with any manufacturer (A41587-88), rendering it irrelevant to recognition
by “the general consuming public.”
Case: 14-1335 Document: 129 Page: 37 Filed: 09/05/2014
26

Intent to Create Association. Apple cites (Br. 65) only evidence of alleged
copying of either functional or unclaimed features, which is irrelevant to an intent
to create an association with the trade dresses as claimed. Further, Apple cites no
evidence that any alleged copying was motivated by any intent to create an
association with Apple or its trade dress. See Bobrick Washroom Equip., Inc. v.
Am. Specialties, Inc., 2012 WL 3217858, *14-15 (C.D. Cal. Aug. 8, 2012).
Actual Association. Apple relies (Br. 65) on media reports opining that two
accused products, the Galaxy S and Vibrant, resemble an iPhone 3G or 3GS
(A24687-88), but Apple does not contend that the iPhone 3G or 3GS practices the
registered trade dress. Apple also cites (Br. 66) the Van Liere survey, but it
concerned only supposed association of a single Samsung product with “Apple” or
“the iPhone”—not each of the accused products with the claimed trade dresses, see
4 McCarthy § 24:119.
4. The TDRA Should Not Be Interpreted To Create A
Perpetual Patent Monopoly
Contrary to Apple’s argument (Br. 66), Samsung does not contend that all
dilution claims are precluded by the Patent Clause, but only that constitutional
avoidance counsels construing the TDRA to deny Apple a monopoly “of unlimited
duration” on the record here. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489
U.S. 141, 146 (1989).
Case: 14-1335 Document: 129 Page: 38 Filed: 09/05/2014
27

B. No Properly-Instructed Jury Could Award $382 Million In
Trade-Dress Dilution Damages
Apple cannot defend (Br. 67) the $382 million trade-dress dilution award on
the alternative grounds of patent infringement, for the trade-dress award exceeds
any patent-infringement judgment allowable under the statutory-notice
requirements for patent infringement, see 35 U.S.C. § 287, while utility-patent law
could not support the $291 million award of Samsung’s profits, see id. §
284.
12
The award is also unsustainable as a matter of trade-dress law.
1. Samsung Preserved Its Objection To The Willfulness
Instruction
Samsung did not waive objection to the district court’s failure to instruct the
jury on the definition of trade-dress willfulness. If anything, Apple “waive[d]
waiver implicitly by failing to assert it,” Norwood v. Vance, 591 F.3d 1062, 1068
(9th Cir. 2010) (internal quotation marks omitted), in response to Samsung’s
argument in its Rule 59 motion that the instruction was grounds for a new trial
(A07583-84). See Atkins v. New York City, 143 F.3d 100, 103 (2d Cir. 1998).

12
Because the earliest design-patent notice date is April 15, 2011 (see
A00106), any recovery of Samsung’s profits before that date must necessarily rely
on trade-dress liability. For all five of the trade-dress phones sold in the United
States, Apple claimed and was awarded Samsung’s profits for several months
before that earliest notice date. See A24676. Apple’s reliance (Br. 75-76) on Rite-
Hite Corp. v. Kelley Co., 56 F.3d 1538, 1548 (Fed. Cir. 1995), is unavailing, for
that decision does not support the contention that patents may be used to justify a
lost-profits award on trade-dress dilution even before those patents are eligible for
damages.
Case: 14-1335 Document: 129 Page: 39 Filed: 09/05/2014
28

Even if Apple’s waiver argument (Br. 68) were properly presented, it fails.
“An objection to a jury instruction need not be formal, and a party may properly
object by submitting a proposed instruction that is supported by relevant authority,
so long as the proffered language [is] sufficiently specific to bring into focus the
precise nature of the alleged error.” Hunter v. County of Sacramento, 652 F.3d
1225, 1230 (9th Cir. 2011) (internal quotation marks omitted). Indeed, a proffered
instruction is sufficient to preserve error where, as here, the district court “noted
for the record [appellant’s] objection to any requested instructions the court did not
give.” Glover v. BIC Corp., 6 F.3d 1318, 1327 (9th Cir. 1993); see A43914
(“[W]hatever you have already argued or has already been in the hundreds of pages
that have already been filed, I say that’s been preserved. So for now I’d like you to
focus on things that haven’t been raised.”).
13

In any event, the district court’s failure to instruct on the definition of trade-
dress willfulness amounted to plain error reviewable under Fed. R. Civ. P.
51(d)(2). The district court erred because Samsung was “entitled to an instruction

13
In neither Bollinger v. Oregon, 305 F. App’x 344 (9th Cir. 2008), nor
Snake River Valley Elec. Ass’n v. Pacificorp, 357 F.3d 1042 (9th Cir. 2004) (cited
at Br. 68), did the district court advise the parties that their written submissions
were sufficient to preserve their objections. And, in contrast to Grosvenor
Properties Ltd. v. Southmark Corp., 896 F.2d 1149, 1153 (9th Cir. 1990),
Samsung’s proffered instruction specifically focused the district court on the issue
presented on appeal. See Gulliford v. Pierce Cnty., 136 F.3d 1345, 1349 n.6 (9th
Cir. 1998) (distinguishing Grosvenor).
Case: 14-1335 Document: 129 Page: 40 Filed: 09/05/2014
29

about [its] theory of the case,” which was “supported by law and has foundation in
the evidence.” Gantt v. City of Los Angeles, 717 F.3d 702, 706-07 (9th Cir. 2013).
And the error was plain because the standard for trade-dress willfulness is codified
as the “inten[t] to trade on the recognition of the famous mark.” 15 U.S.C. §
1125(c)(5)(B)(i). Taken together with its instruction that mere recklessness
suffices for patent-infringement willfulness, the court’s omission was
“misleading.” Hunter, 652 F.3d at 1232 (“jury instructions … must not be
misleading”); see United States v. Mason, 902 F.2d 1434, 1441 (9th Cir. 1990).
That plain error thus affected Samsung’s substantial rights because the “incorrect
... instruction likely caused the jury to assign liability to” Samsung. Citrus El
Dorado, LLC v. Stearns Bank, 552 F. App’x 625, 627 (9th Cir. 2014); see United
States v. Marcus, 560 U.S. 258, 262 (2010) (substantial rights affected where
“reasonable probability that the error affected the outcome of the trial”); Samsung
Br. 58-61; infra, at 29-31. And allowing the judgment to stand would seriously
affect the fairness and integrity of the proceedings by denying Samsung its jury-
trial right on an essential element of a claim underlying a judgment worth hundreds
of millions of dollars.
2. Apple Fails To Identify Substantial Evidence That Any
Dilution Was Willful
Trademark infringement is not willful where the defendant “might have
reasonably thought that its proposed usage was not barred by the statute,”
Case: 14-1335 Document: 129 Page: 41 Filed: 09/05/2014
30

Blockbuster Videos, Inc. v. City of Tempe, 141 F.3d 1295, 1301 (9th Cir. 1998)
(internal quotation marks omitted), and no different definition can apply to
dilution. The district court’s order of August 20, 2014, denying Apple’s motion
for attorney’s fees (A9204-23) confirms the reasonableness of Samsung’s beliefs
here, ruling that “Samsung raised several reasonable defenses to Apple’s trade
dress dilution claims, establishing that Samsung ‘might have reasonably thought
that its proposed usage was not barred by the statute.’” A9222 (quoting
Blockbuster, 141 F.3d at 1300) (emphasis added). The district court further ruled
that “it was a ‘close question’ whether Apple had presented sufficient evidence for
a reasonable jury to find that Apple’s trade dresses had achieved the requisite fame
for trade dress protection.” Id.; see A9218-21.
Nor does Apple’s cited evidence (Br. 70-71) show that Samsung “intended
to trade on the recognition of the famous mark.” 15 U.S.C. § 1125(c)(5)(B)(i).
The parties’ pre-suit licensing negotiations did not mention trade dress, and
Samsung’s knowledge of the iPhone product cannot show knowledge of an
intention to trade on recognition of the claimed trade dresses. Nor can copying
allegations fill that gap: “Trade dress protection must subsist with the recognition
that in many instances there is no prohibition against copying goods and products,”
TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001), and “the
mere copying of product configurations does not suggest that the copier was
Case: 14-1335 Document: 129 Page: 42 Filed: 09/05/2014
31

necessarily trying to capitalize on the good will of the source of the original
product,” Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 201 (3d Cir. 1995).
3. Apple Does Not Identify Substantial Evidence To Support
The Infringer’s Profits And Lost Profits Awards
(a) The $291 Million Infringer’s Profits Award Cannot
Stand
Apple improperly tries to shift to Samsung (Br. 73-74) its burden to show
that dilution caused Samsung’s profits, see, e.g., Lindy Pen Co. v. Bic Pen Corp.,
982 F.2d 1400, 1409 (9th Cir. 1993) (plaintiff’s burden to show “unjust enrichment
arising from the infringement”); Bandag, Inc. v. Al Bolser’s Tire Stores, Inc., 750
F.2d 903, 919 (Fed. Cir. 1984), again confusing apportionment with the antecedent
question of causation. Nor does Apple cite substantial evidence supporting the
conclusion that all of Samsung’s profits on its six products found to dilute derived
from Apple’s asserted trade dresses. The products at issue are complex, with
hundreds of features. A40701; A42133. The uncontroverted evidence shows that,
at most, trade dress accounted for a small percentage of Samsung’s profit,
compared to the many other features consumers want. A28599; A26444; A28645;
A31007. Apple’s own customers rated “attractive appearance and design”
“relatively lower” than factors that have nothing to do with Apple’s claimed trade
dresses, such as web capabilities, ease of use, availability of apps, improved
battery life, camera quality, and retina display. A27170-74. Apple’s suggestion
Case: 14-1335 Document: 129 Page: 43 Filed: 09/05/2014
32

(Br. 74 n.21) that certain of that evidence is directed to “phone design generally”
rather than Apple’s specific claimed trade dresses only reinforces that the value of
the narrower set of features is small.
Apple also incorrectly suggests (Br. 74) that the jury awarded less than
Samsung’s total profit. As the district court itself recognized, the jury awarded
40% of Samsung’s gross profit, which is what Apple sought to recover. See
A00097; A42066-69. Samsung presented substantial evidence of costs and
showed that its total profit was even less than 40% of the gross profit. A29302-
416; A43035; A43038-39; A29690.
(b) The $91 Million Lost Profits Award Cannot Stand
Apple likewise fails (Br. 75) to show substantial evidence that any dilution
caused Apple’s lost profits. Its expert’s consideration of “market share, and
market alternatives” assumes rather than proves that Samsung’s consumers would
have bought phones from Apple in the absence of dilution. To the contrary,
Apple’s own documents show that a large percentage of Android phone purchasers
did not even consider an iPhone. A28599.
Apple’s appellate authorities (Br. 75) are irrelevant: Intel Corp. v. Terabyte
Int’l, Inc., 6 F.3d 614, 619-20 (9th Cir. 1993), was a counterfeiting case in which
the plaintiff showed threatened harm to “Intel’s reputation and good will”; and
Presidio Components, Inc. v. American Technical Ceramics Corp., 702 F.3d 1351,
Case: 14-1335 Document: 129 Page: 44 Filed: 09/05/2014
33

1360-62 (Fed. Cir. 2012), and Kaufman Co. v. Lantech, Inc., 926 F.2d 1136, 1142
(Fed. Cir. 1991), are patent cases relying on evidence that non-infringing
alternatives were functionally inferior to the patented technology, but functional
differences cannot support a theory of lost profits for trade-dress dilution.
III. APPLE IS UNABLE TO DEFEND THE $149 MILLION JUDGMENT
FOR UTILITY-PATENT INFRINGEMENT
A. No Reasonable Jury Could Find Liability As To The ’915 And
’163 Patents
1. Apple Fails To Refute That Claim 8 Of The ’915 Patent Is
Anticipated
Apple does not dispute that Nomura discloses the single-figure scroll and
two-finger zoom gestures claimed in the ’915 patent:

A28324; A28323. Apple’s only argument (Br. 76-77) is that it cannot be
determined whether Nomura discloses an “event object” because Nomura does not
contain source code. But the ’915 patent does not require or disclose any source
code.
Case: 14-1335 Document: 129 Page: 45 Filed: 09/05/2014
34

The ’915 patent merely describes the “event object” as information stored in
memory regarding a user’s finger movements. For example, the specification
states that the ’915 patent “creat[es] an event object in response to the user input
….” A01127 (6:36-37). Although Nomura does not use the exact term “event
object,” it discloses (A28307-37) creating a “movement history” that is identical to
the “event object” of the ’915 patent: “the information storage medium includes:
information on the movement history of the finger ….” A28312 (¶ 0042). That
movement history is then used to cause the scrolling and zooming behavior shown
in the figures above. A28312 (¶ 0053). That is enough for anticipation. See In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (“the [anticipatory] reference need
not satisfy an ipissimis verbis test”). Apple tries (Br. 76) to transform its
unsupported construction into a “factual dispute” based solely on thirty-four
conclusory lines of expert testimony (A43636-37). Such conclusory testimony
cannot overcome Nomura’s clear disclosure of a movement history. See Krippelz
v. Ford Motor Co., 667 F.3d 1261, 1268-69 (Fed. Cir. 2012) (generic expert
statements too conclusory to sustain verdict).
2. Apple Fails To Refute That Claim 50 Of The ’163 Patent Is
Indefinite
The ’163 patent is indefinite because it offers no guidance regarding the
scope of the term “substantially centered.” See Nautilus, 134 S. Ct. at 2124.
Apple argues (Br. 79) that its annotated version of Figure 5C (below) discloses
Case: 14-1335 Document: 129 Page: 46 Filed: 09/05/2014
35

substantial centering because the amount of padding at the top and bottom of the
display differs:

However, the specification (A01244 (17:26-30)) refers only to “predefined
padding along the sides of the display” and centering in the horizontal direction.
There is no description of “predefined padding” or centering in the vertical
direction as Apple’s annotations misleadingly suggest. Moreover, nothing in the
specification explains the amount of “predefined padding” that would fall within or
outside the scope of the claims. In any event, Block 5 is exactly vertically centered
“in the web page display”—i.e., the display portion that does not include the
Case: 14-1335 Document: 129 Page: 47 Filed: 09/05/2014
36

current time, welcome, URL and user interface icons—which is the portion of the
display where centering takes place (A01244, 17:20-23).

A01215 (annotations added). Finally, the district court itself found “no standard
for measuring the precise boundaries of ‘substantially centered’ in the
specification.” A00006. This finding alone renders the ’163 patent indefinite,
under both Nautilus and this Court’s prior precedent. See Datamize LLC v.
Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005) (“[A] court must
determine whether the patent’s specification supplies some standard for measuring
the scope of the phrase.”) (emphasis added).
Case: 14-1335 Document: 129 Page: 48 Filed: 09/05/2014
37

B. No Reasonable Jury Could Award $149 Million In Damages For
Utility-Patent Infringement
1. Apple Does Not Identify Substantial Evidence To Support
The $114 Million Lost Profits Award For Infringement Of
The ’915 Patent
First, Apple does not seriously dispute (Br. 81-82) that, by the start of the
lost-profits period, Samsung’s Intercept and Galaxy Ace were non-infringing
alternatives offering substantially the same functionality as claimed in the ’915
patent, but instead wrongly contends that neither device is an acceptable, available
non-infringing alternative. As to the Intercept, Apple’s argument that a non-
infringing alternative must be acceptable to all purchasers relies exclusively on
American Seating Co. v. USSC Group, Inc., 514 F.3d 1262, 1270 (Fed. Cir. 2008),
which has never been applied outside of the unique “bait-and-switch” context.
14

As to the Galaxy Ace, Apple ignores (Br. 83) that, because of the pre-retrial
ruling that Samsung would have completed its design-around efforts for the ’381
and ’163 patents before the lost-profits period began, Apple was unable to present
any argument or evidence that the first jury’s infringement findings rendered the
Galaxy Ace unavailable. A9185-96; A9197-203. And Apple’s objection (Br. 83)

14
Apple’s other cases are equally distinguishable. In DSU Medical, 471
F.3d at 1309, this Court considered whether third parties could meet demand with
other non-infringing substitutes, where the defendant could not bring its non-
infringing substitute to market before the lost-profits period began. And in
Kaufman, 926 F.2d at 1142, this Court noted that the substitutes “were more
expensive to purchase and operate” than the patented product. Neither situation
applies here. A43058-60; A24625.
Case: 14-1335 Document: 129 Page: 49 Filed: 09/05/2014
38

that the Galaxy Ace was not sold in the United States misunderstands the
hypothetical nature of the lost-profits inquiry. See, e.g., Grain Processing Corp. v.
Am. Maize-Prods. Co., 185 F.3d 1341, 1350-51 (Fed. Cir. 1999).
Second, with respect to consumer demand for the ’915 patented feature,
15

Apple continues to rely (Br. 84) on evidence purporting to show that “two fingered
pinch and flick” was fun and cool, but ignores that it does not own a patent on
“two fingered pinch and flick” generally.
16
Apple likewise ignores this Court’s
holding that neither Apple’s purported evidence of the importance of “ease of use”
nor Samsung’s documents referring to specific features in Apple phones is
sufficient to show that Apple’s patented features drive demand. Apple III, 735
F.3d at 1367.
Apple’s survey expert, Dr. Hauser, never adequately considered non-
infringing alternatives; as Apple concedes (Br. 86), Hauser’s survey never
presented the non-infringing “two fingered pinch and flick” functionality in either

15
Apple asserts that a patentee need not prove demand for the patented
feature to obtain lost profits, but its own authority (Br. 83) says otherwise. See
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1330-31
(Fed. Cir. 2009) (stating that “the elimination or substitution of particular features
corresponding to one or more claim limitations goes to the availability of
acceptable noninfringing substitutes”).
16
Nor is Apple correct (Br. 84) that Samsung’s damages expert found such
evidence relevant. Mr. Wagner testified that he had “not seen evidence that the
single patent at issue for lost profits drove demand for any of Samsung’s products
….” A50997.
Case: 14-1335 Document: 129 Page: 50 Filed: 09/05/2014
39

the Intercept or the Galaxy Ace. Nor does Apple address the district court’s
careful explanation why Hauser’s survey does not adequately account for other
non-infringing features. A08281-82.
2. Apple Does Not Identify Substantial Evidence To Support
The $35 Million Reasonable Royalty Award For
Infringement Of The Three Utility Patents
With respect to the reasonable-royalty award, Apple contends (Br. 86) that it
was sufficient that its expert, Ms. Davis, mentioned in her lost-profits testimony
(A50652) that her demand analysis was relevant to a reasonable royalty. But
demand is not a Georgia-Pacific factor. Georgia-Pacific Corp. v. U.S. Plywood
Corp., 318 F. Supp. 1116, 1119-20 (S.D.N.Y. 1970). And Davis never explained
why demand was relevant to any of the Georgia-Pacific factors she purportedly
considered. Similarly, Apple’s other “demand evidence” (Br. 87-88) cannot
support the reasonable-royalty award because Davis failed to explain her
calculation to the jury. The only factor she discussed was the parties’ commercial
relationship (A50708-09), but that limited testimony did not allow the jury “to
evaluate the probative value of [her] numbers,” Whitserve, LLC v. Computer
Packages, Inc., 694 F.3d 10, 32 (Fed. Cir. 2012).
Mr. Musika’s analysis of the Galaxy Tab royalty was no better. In the
testimony that Apple cites (Br. 88), he identified only three factors, and provided
Case: 14-1335 Document: 129 Page: 51 Filed: 09/05/2014
40

no meaningful analysis of any of them (A42093-100). And the cited exhibit
(A24960) does not discuss the Georgia-Pacific factors at all.
IV. APPLE IS UNABLE TO EXPLAIN WHY AT THE VERY LEAST A
NEW TRIAL IS NOT WARRANTED
A. The Instructional Errors At Minimum Require Vacatur And
Remand
Contrary to Apple’s passing suggestion of waiver (Br. 88 n.29), Samsung
clearly presented its substantial alternative arguments for new trial in light of errors
in the design-patent liability, design-patent damages and trade-dress willfulness
instructions, and the result “could have” been different absent those errors,
Commil, 720 F.3d at 1367. A new trial is also warranted because the judgment is
excessive and against the great weight of the evidence, and Apple’s boilerplate
response (Br. 89) does not show otherwise.
B. Apple Fails To Justify The Erroneous Exclusion Of Samsung’s
Evidence Of Independent Development
Nor does Apple show why new trial is not warranted at which Samsung may
introduce evidence that it did not copy. At trial, Apple was permitted to tell its
version of events:
Case: 14-1335 Document: 129 Page: 52 Filed: 09/05/2014
41


A24679; A40307; A40317; A44091.
Case: 14-1335 Document: 129 Page: 53 Filed: 09/05/2014
42


A24681. But Samsung was not permitted to show that it independently designed
the same basic visual elements before the iPhone was even announced:
Case: 14-1335 Document: 129 Page: 54 Filed: 09/05/2014
43


A9128; see also A9120-27.
Apple offers no plausible argument that this exclusion did not affect the
outcome of the case. Although it concedes (Br. 91) that the jury rejected Apple’s
tablet-based design claims after Samsung introduced a pre-iPad sketch of one of
Samsung’s early tablet designs, it dismisses any causal relationship since the jury
found the tablets infringed utility patents, ignoring that the utility patents had
nothing to do with exterior appearance—the sole subject of the tablet trade-dress
and design-patent claims. Further, Apple’s contention (Br. 90) that no evidence
tied these independent designs to the accused products ignores that the accused
Case: 14-1335 Document: 129 Page: 55 Filed: 09/05/2014
44

products’ designer testified in deposition that his work consciously drew on the
F700. A06821-24. The fact that the designer himself was not precluded from
testifying (Br. 90 n.30) is irrelevant; Samsung could not call him to testify about
excluded evidence.
Apple offers no reasonable justification for excluding this critical evidence
under Fed. R. Evid. 403, and fails (Br. 89-90) in seeking to re-characterize the
exclusion as a discovery sanction. The discovery sanction Apple refers to
precluded use of certain evidence as prior art because Samsung purportedly had
not disclosed it in response to a discovery request for the basis of Samsung’s
design patent invalidity defense. A90024; A90042-44; A04489; A06832. That
interrogatory did not seek the basis for Samsung’s rebuttal to Apple’s willfulness
or copying allegations (A05541-42), and before the final exclusion order, the
district court repeatedly ruled that the evidence was admissible, “including to rebut
an allegation of copying.” A06685; A9074.
Given that Samsung had confirmed that it would not argue that the excluded
evidence was prior art, and that the evidence was relevant and admissible for other
purposes (A9071; A9074-81; A06793-94), exclusion was an abuse of discretion.
Rule 403 demands “cautious and sparing” use, only excluding evidence of “scant
or cumulative probative force, dragged in by the heels for the sake of its prejudicial
effect.” United States v. Hankey, 203 F.3d 1160, 1172 (9th Cir. 2000) (internal
Case: 14-1335 Document: 129 Page: 56 Filed: 09/05/2014
45

quotation marks omitted); see United States v. Philip Morris USA, Inc., 219 F.R.D.
198, 201 (D.D.C. 2004) (“draconian” and unsupportable to keep partially limited
evidence out for “all purposes”). And the court’s instructions that the F700 was
not prior art (A41186-88; A42849) eliminated any supposed prejudice, leaving
none that could have substantially outweighed the significant relevance.
17

Samsung thus was improperly denied the opportunity to show that it did not copy
Apple’s designs.
CONCLUSION
The judgment should be reversed or, alternatively, vacated and the case
remanded for new trial.

17
The district court even went so far as to exclude Samsung’s evidence of
independent development from the damages retrial, where validity was not at
issue. During retrial, Apple was given free rein to argue copying. A50362;
A50853-54; A51040-41; A51296; A51300; A51305; A51307; A51331. Yet the
district court excluded Samsung’s independent development evidence. A90350-54.
Dated: September 4, 2014 Respectfully submitted,

By: /s/ Kathleen M. Sullivan
Susan R. Estrich
Michael T. Zeller
Robert J. Becher
B. Dylan Proctor
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
865 S. Figueroa St., 10th Floor
Los Angeles, CA 90017
Telephone: (213) 443-3000
Facsimile: (213) 443-3100
Kathleen M. Sullivan
William B. Adams
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
Telephone: (212) 849-7000
Facsimile: (212) 849-7100
kathleensullivan@quinnemanuel.com
Case: 14-1335 Document: 129 Page: 57 Filed: 09/05/2014
46


Attorneys for Defendants-Appellants

Victoria F. Maroulis
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
Telephone: (650) 801-5000
Facsimile: (650) 801-5100
Kevin A. Smith
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California St., 22nd Floor
San Francisco, CA 94111
Telephone: (415) 875-6600
Facsimile: (415) 875-6700

Case: 14-1335 Document: 129 Page: 58 Filed: 09/05/2014
47

PROOF OF SERVICE
The undersigned hereby certifies that on September 5, 2014, I electronically
filed the foregoing CORRECTED REPLY BRIEF FOR DEFENDANTS-
APPELLANTS with the Clerk of the Court for the United States Court of Appeals
for the Federal Circuit by using the appellate CM/ECF system. I certify that all
participants in the case are registered CM/ECF users and that service will be
accomplished by the CM/ECF system.
/s/ Kathleen M. Sullivan
Kathleen M. Sullivan
Case: 14-1335 Document: 129 Page: 59 Filed: 09/05/2014
48

CERTIFICATE OF COMPLIANCE
Counsel for Defendants-Appellants hereby certifies that:

1. The brief complies with the type-volume limitation of this Court’s
August 20, 2014 Order permitting a reply brief of up to 8,500 words because
exclusive of the exempted portions it contains 8,498 words as counted by the word
processing program used to prepare the brief; and
2. The brief complies with the typeface requirements of Federal Rule of
Appellate Procedure 32(a)(5) and the type-style requirements of Federal Rule of
Appellate Procedure 32(a)(6) because it has been prepared using Microsoft Office
Word 2007 in a proportionately spaced typeface: Times New Roman, font size 14.

Dated: September 4, 2014 /s/ Kathleen M. Sullivan
Kathleen M. Sullivan

Case: 14-1335 Document: 129 Page: 60 Filed: 09/05/2014