the key point here is that there was a failure in this case factor out functional from where i'm at a little close i appreciate that and maybe be a process question but it seems to me there is a distinction perhaps between getting that period out in the context of clean construction or ferreting it out as you suggest in your case because you're appealing to the jury instruction not the plain constructionist so is that not an important distinction i mean you rely on odds on and richard then and i appreciate your reliance on those cases but that those also spoke to claim construction not a kind of jury instruction at which point you steer it all functional your honor with respect we appeal but we believe there is a legal or both with respect to claim construction and with respect to the jury instructions i could refer it reminder on our of what happened we saw it multiple times to get functional distinguish from ornamental which we think is the key issue  design patents as this court has said repeatedly we were denied an early claim construction and we came back later and we said we'd like that claim construction that you postponed and appendix forty three seventy seven five the district court declines then to give at the validity stage it's important to look at whether dictated by a function has been met but i think when you put together odds on the gyptian goddess and richardson after egyptian goddess it's absolutely clear that there must be some distinctions between the functional an ornamental elements whether it's through playing constructions or through a jury instruction if in the gyptian goddess this court says the duty is to distinguish functional from ornamentals there's a duty we just give the court discretion how to fulfil that duty here in the district court and didn't give up and didn't fulfill that duty either way the district court declined the claim construction of forty three seven seven five we've built our entire trial around trying to get meant when she repeatedly said only the ornamental design track of your energy that with respect that's not correct with respect to the infringement instructions if you look at the infringement instruction as given it says and this is a forty four  zero two zero zero two three this is instruction number forty six this is the crucial instruction your honor as given the infringement instruction at forty four zero to two to two three as she reads in the transcript invalidity instruction can't assure the problem with the infringement instructions especially because the info in both of the instruction number fifty two was wrong anyway we're not appealing it but it said that shape and configuration can be protected which they obviously cannot what should have been instructed and your honor we're not saying there should have been exact magic words we gave her multiple choice as we said please define the difference between functional and or mental we said please district court take out at least the few things which apple has admitted are functional rectangular nests rounded corner nests flat screen that clear the clear clear cover over an underlying rectangular display there were admissions as to the functionality of those elements and whether as egyptian got a sense the district court has discretion how to distinguish functional from ornamental but it does not have discretion whether to distinguish functional from ornamental in a case like this where obviously both are involved and in which obviously purchases of consumer demand were driven largely by not more the mental features a target we've already visited twice now in the context of the injunction and what do we do with the case of that says you're supposed to look at the overall design and you're not hosted just take ornamental features and isolation your honor what you do is you say overall ornamental of tears overall ornamental appearance said the crucial problem here is that the jury was not instructed to nor was there any claim construction limiting it to comparing the overall ornamental appearance let me be clear of that are you saying that somehow just because the discussion of ornamental aspect stage and the invalid just invalidity saves the ink or is different at the infringement stage what has to be done as a comparison between the news product and the claims designed we're not deciding that with the claim design should have any presumptive a little bit we're deciding now whether there's infringement and you've been quite clear and there's two areas in the instructions of course first there's a failure to require that overall appearance be viewed in light of only the ornamental features with the functional features factored out there's also the two designs are in the different ignoring the functional elements of the two will and there's no surprise in that because you had said earlier in objection got us that there's a duty to separate them it can be done through claim construction addiction got it's just clear that you didn't have what got filtered out was the it's like it's the stepfather says the foobar and they were a combined hammer and stepped on crowbar what got filtered out with the functional elements of the hammer the cloth and the all the more important in the science or fact of the jury to factor out functional elements but then then the court looks to the differences only in the ornamental features that remain obviously we're in the hypothetical ordinary observer test that we have from bor this but in the hypothetical exercise what the court did exactly or with in his mind's eye filter out the functional elements ignore the functional elements that's the exact language and says well there's a hammer but one is tapered there are elements that are more rounded others are more sharp and that's exactly what we're saying here your honor if the jury had been properly instructed and we submit that it would have to reach this result it would filter out the things that apple conceded in the course of the trial levels witnesses can see that they were functional or structural the rectangular shapes the large displays free the location of the speakers slot near the top secret of colorful icons with respect to the need for you know but if you filter out all those functional elements then what would remain would be the differences in the ornamental designs and we think what about the fact that the jury instruction number forty three where the court actually does ride and what the pattern cover each instance she said the pat ornamental and functional she had to be able to say that ornamental and functional need to are distinct functional is not protected and the mere recitation of the term ornamental in the description is not the equivalent of an instruction to factor out so we don't think forty three can cure the problem but your honor here let me have a simple analogy of this all started with of a carpet bag and with the congress of eight hundred eighty seven overruling the dogs in case let's imagine that there is a patented design for a carpet design and the patented design is on a flat durian like parks well so i can't come along and say i'm going to apply that to a plush carpet you would say to the jury if the same designs on a plush part of the plush one is easier on the feet and it doesn't slip the flap on is easier to transport those are functional differences if the design is the same there's infringement arab case is very obvious in arab case if you put the hands of designs which remember very narrow phones which have tons of other design patterns as well as other utility that was built in our case is the opposite are cases where you've got two flat rugs at the same functionality they've got the same rectangular shape and flat clear and display and rounded corners once you factor out those similar functional elements our submission is a reasonable jury would have to believe that the ordinary observer would see all the profound warning mental differences between the two apple created an i phone that's beautiful that's changed the world we don't contest that but its beauty consisted of its minimalism of its flat oily palms of its lack of vision that's an organization and when you put it next to any other fronts and with respect to all of the accused products these differences are the same we have buttons on the bottom front we have circular holes on the top we have differently shaped in place please speak your spots they have different shapes and they're higher up  we're trying to figure out exactly what do you mean when you say functional parts do you mean built around the elements that are dictated by the function that their parents and dick do by function or you know anything that has anything that could be regarded as so it just seems going to get strange so what do you mean your honor we believe the proper test is  functional primarily functional significantly functional but we think we win at any standard of functionality here because apple's own witnesses conceded in the course of the trial that certain features were in a sense dictated by function apple's witness please let me distinguish two things because i think your cases have at the validity stage we presume the patent valid and only if every aspect of it is dictated by function that there's no ornamental elements do we deny validity now we're in the infringement stage you've said over and over again that we've come a long way from silver spoon tests and in the world of a complex multi component high tech product like the one we're talking about here we're certainly in the realm of many many many different aspects of ornamentation and functionality that are going on and you've said in the different goddess when there are both ornamental and functional elements there needs to be some distinction between the two and that's really constitutionally compelled you have to read the statute to filter out the unprotected elements or else you need finding infringement for a part of the device that is not entitled to a monopoly for a limited term so we think our interpretation of the statute your honor we think we prevail here and you at a minimum have to send it back for retrial based on the erroneous first instruction whether functionality is significantly functional primarily functional or fully functional because as to the elements of just enumerated rectangular shape large display screen clear cover over the display speaker opening near the top or grid of colorful i phone apple either invalidation but just to go i want to be very clear and answer judge or malice question we're not insisting on an element by element analysis we can see that you said overall appearance we just insist that you don't post an overall ornamental appearance and that we need to be looked at as ornamental stuff the drug use those words in the general you're saying you need more absolutely or simply to use the word ornamental didn't give the jury any guidance it didn't say we're in a mental contra distinguished from functional it didn't say look only an ornamental it didn't define ornamental and we're not saying that there's a particular set of magic words in my suite except that you have said that the judge can do this many different ways we just would argue respectfully to you that here in the district court didn't try any method of of enlightening the jury on the difference between for a mental functional well we're talking about functional just because the clock is running so does your i have another quick point you want to make on designs i was going to move to sometimes total profits total profits for all these spells even though that i use this word respectfully is absurd it's like ordering it's life ordering the entire process in the car the car example if you have a patented couple or they're going to get the entire process and then the patent tailfin folks are going to come in and they're going to get the entire process and then the patent rear window folks are going to come in and get one hundred percent of the profits on their design that problem is always the entire product sold it says find the article of manufacture to which the design of the pot and then it's a very important positional thing your honor we focus on this language in the statute it said you can have up to the extent of total prost up to the defined article of manufacture but it didn't say entire product and the second thing that happened is it didn't abrogate causation principles that were part of the common law as well settled that we attribute to congress knowledge of the common law at the time kerry versus congress knew about are mostly construed of not about ordinary causation principles this court has said over and over again that patent infringement is a species of tort and tort requires causation you require causation and every other element of your some kind of equitable principle reporting the principle different birds and we will get straight goods i don't want to hang on the device i just say this if you have any doubt about whether you can construe the statute to eliminate this total profit absurdity for a complex multi component high tech product you have any doubt if you think that you can't bring the rationality to design patents or as prudence of this court has worked so hard to bring two injunctions into utility patent damages then i respectfully suggest you go back and you look again at my liability artist it can't be that they can come in and take over all appearance a big dish all to just look at whether they look alike don't factor out the functional differences and then get a little profit that can't honor i think there's an overlap between the functionality analysis in the trade dress side of our case and the and the design and size i i think that the lack of function the failure to factor out features is a problem on the trade dress side as well as on the design pattern but on a train just that you're not objecting to any of the jury instructions that are director i'm just saying you don't think the jury did it we think your honor we think that the evidence is insufficient as a matter of law below and most i could find was a footnote in your game all having to do with the starting point that's right or for it for grabs is a rematch and all that matters about the difference between the two is that the unregistered what is the trade risk here if what if i leave you with nothing else to say i want to remind you that this is not a case about the apple brand it's not a case about the apple logo it's not  case about iphone it's not a case about the iconic features of the phone like the home but those are not the trade presses that are at issue here and your honor if you want to go to the record of look at them you'll see that the unregistered which was invented for this litigation and it reads on elements that are not in the sense of phones by design so that it doesn't say that the home button is claimed obviously explains the home button we couldn't dialup because we don't have a home but the understood trade dress is a set  very particular i's physical features not including the most famous things the apple logo on the back the home button on the front the registered trademark is similarly exceedingly narrow it's a rich change your handheld mobile digital electronic device taking a brand a famous brand a brand so famous that everybody in america knows it as a friend and diluting its reputational capital by applying it to a non competing product in the legislative history the examples were things like buick shoes or if we were to think about it today so then like coca cola motor oil this is not that case this is a case between competitors and the ip london decision of the first circuit which we cited reminds us that when we're talking about product configuration trade dress in a case between competitors where the power limits of the statute were treading very close to the world where competition should be allowed to if you ask the court for having seen in the record but you  honor the real principle here is as a matter of law you're that faced with the need to construe a statute and to construe a statute in light of constitutional principles and the only way to avoid a serious constitutional question of whether apple is going to get through the identifying qualities you're making people less likely to associate the product with the brands which is associated even to engage in indulging the heroic assumption that the zero trade dresses connote an apple brand even without all the iconic apple features there is no showing that they have that sense and willfully try to preyed on that source recognition no evidence or truth that there was an effort to trade on recognition of claim dresses and the reason that's so clear two to something that might have reasonably thought that its proposed usage was not barred by the statute now that's a very obvious holding because there are serious  to enhance damages for utility patent infringement or whether it's being used to decide whether to give attorneys fees for trademark infringement and the reason is you relied on general principles of well willfulness in cases like se we don't even think that apple starts with any subject of showing of willfulness there was never a showing in this case that sounds and knew of the registration register traitorous and there was certainly never showing that it knew of these registered trade as that was made up for this litigation so there's no you even if you don't agree with us that there is insufficient evidence of willfulness and you should throw out three hundred million dollars trade dress award we think at a minimum you should remand for a new trial in trade dress because we did ask for the exact language of the statute to be given the instructional error is what you can find a proposal at a seven zero nine zero and that's a proposed instruction number sixty one point two we wanted to give the statute that wilfulness require that we intended to trade on recognition of the trade and not only to the district court not to give that statutory definition the district court also created the potential for misleading us and confusion because the court did give a definition of willfulness for patent infringement but in that instruction it said oh willfulness commune reckless so not only do we not get the specific intent version of the willfulness instruction we should have gotten as a matter of law we have the jury thinking maybe recklessness is enough and we don't even know anything not apple brand so these funny little particularized trade dresses that were concocted so they wouldn't read on samsung's phones the lack of evidence of saying the lack of the evidence of functionality even that of apple's own witnesses and the lack of evidence  brand that's a quote and he also admitted in response to questioning that he had no evidence that apple had lost any market share as a result of dilution this is such a week that lucian case we think you should reverse either liability or damages and then we can talk about how whether you're sending anything back and if you send it back respectfully submit that any new trial must allow us to our evidence of independent development we weren't allowed to show that we developed smartphones with faces before the i phone was released and if you look at nothing else about that point look at our grave and compare page forty one of the bravery if it shows what apple is allowed to show a bunch of pre i phone sensing phones that look like they're kind of tiny and they have little antennas and don't look like an i phone at all apple is able to bring that in and say see they copy copy copy we have we had to go into this case with one hand tied behind their back because we couldn't put in evidence from ms park that would have allowed us to show what you can see in grade three forty three which is beautiful across the board so if theoretically we were to send back only a portion of the case that didn't include design patterns wouldn't that still down allow at least the trial court to re re re re that question in re re the question of whether or not the sanction should include reference to that in the trademark sheet if there were ever reached probable there's not she would always have an opportunity to reconsider it but there are actually some additional facts in the chronology outlined enough i don't want to spend a lot of my time on this because it's an abuse of discretion issue but i think it actually tells you a lot when samson comes in and calls our claims absurd or there's no weapons of will this is what the trial court and from her three times the fourth time was on the day of the opening when they offered slides which were specifically what had been excluded she excluded again telling them they come back four times while jury was being selected samsung went back and posted those five on the internet with a press release that said the jury ought to know about these by the time the jury will handle those flies around the internet didn't give up they raised the issue again and that's actually i think what your honor was referring to when she went to the for three analysis and said look i've seen this now five different times and i said at the outset i was excluding you to the discovery one for one nine it says in deciding whether there's been dilution you should consider a variety of factors one of which is whether and intended to create an association that is traitorous then incorrect their argument to you is that there was something more that was required and i think from the district court's point of view and from our point of view and i hope from your point of view it's important to look at what they propose to her  seven zero nine zero the first is the burden of proof is wrong and all of the discussion before the discord before the charging conference and before the jury was charged was about whether the bird and convincing evidence or pontins their proposed instruction was wrong for that reason it was wrong for a second reason that instruction said that apple must prove it and i quote at eighty seven and i know samsung willfully intended to trade on the recognition of apple's trade dress or intended to harm apple's case that actually is complaining or combining two distinct concepts one is delusion by blurring one department the second half of their definition had nothing to do with what went to the jury so we're in a situation where the court's instructions not challenged by them on dilution are correct she said it ha rely upon is in other words their restating what willful dilution did the court charges eighty four pages long it took two and a half hours to deliver to the jury if she was obliged to restate in other words every single day that one of us had asked to do which believe in their own proposed instruction which is the place where the argument should begin is the following it says in other words and she was not obligated to give a cumulative instruction and it was wrong and that is why the procedural now samsung says you she said that all of your objections are research made before but samsung said we said the same thing because they thought it was correct your honor we think we need to restate them to preserve they didn't we was associated with the samsung phone it's just wrong there was a survey from mr poor a that showed that something close to seventy percent of smartphone purchasers i'm not sure how the district court would address an argument like that she didn't address that in part because it wasn't fleshed out or made completely there is no constitutional concern it's not indefinite your trade addresses  spectrum are things that might be truly designed on the other end of the spectrum there is what is essential or where design is driven where design is driven by functions in between there are designs that have some utilitarian benefit to keep to say that in fact the judge specific charges during this there is some utilitarian that if they are used to designs but that different than all these various elements of your trade dress and pointing out why each one of those elements at the utilitarian advantage to us and then i didn't see anything in the record or your briefing that rebut that in terms of are the things something that made the overall phone work better and what i saw inste was this is beautiful so this is for you you know this is a very compelling to look at phone that's all well and good but that doesn't really complete the analysis on want to go nearly as far as de facto functional i mean i'm now trying to understand ninth circuit all ninth circuit law looks a little stingy when it comes to trade dress protection through you know the functional nonfunctional standard functionality there's no dispute about that the jury made a decision to trust that if you sat there preferment decision but here are the four factors that i think will answer your question the first is advertising and a pa right fingers touching yes for sure for sure but there is nothing in talking rain that suggests that the american fact that there is a utilitarian benefit or function disqualifies you from trade yes there was evidence that it improved quality in some respects but it actually increased costs it increased difficult to manufacture but at the end of the day i think the key factor is that it's this question for  no one is challenging her judge codes instructions you have it correctly instruct the jury you have prove going in from both sides it's not a different we're the only people entitle to offer evidence from both sides cases and decided before and it's not a coincidence this court all the time confront the challenges of applying old legal principles for relatively want to this legal principle to new technology can't suggesting follow the test of the collection of factors it's not just that chris realised self is number one number two i'm suggesting that there was evidence on all four factors number  demanding on the other i actually think they're very close i mean the difference being dictated by function or essential or very well if they are facile questions at the end of the day there was a host of evidence on both and point that mr sullivan raised several times which is then i think she may be right so tell me why she's not that the cases you cite elena here and all of the cases that are cited with respect to dictating function in terms of design that right now are all valid in the case and in the infringement context something less than dictating the function is the terminology we've historically new that wrong your honor the first part of the second part for all the first part of the case similarities and overall designs not similarities of ornamental they're very good if i can make two points here on the test they're offering you exactly the opposite of what you you can do more but you are not obligated to if you want to do more you could consider these things that was a citation on that but it is in your discretion and the think it is helpful to look at what samsung was asking her to filter out and what samsung had asked her to filter out what is a rectangular discovery display screen a relatively large display screen functional in fact they all had ornamental benefit designs and purposes and what we also know we know the jury was given the same question was the fifty eight hundred cases the trends there are a variety of other things that could have proposed but what we do know here is what they did propose and what we do know is what he did do and we know the thing the me on this issue because we think that if you but to eighty nine says and you look at the jobs in cases you look at the legislative history of the house boards look at the stats you look at ninety and you look at the changes made allowing functional elements to be factored by the jury into a comparison between apples and sounds and designs all we ask is the chance for a jury to be told where apple has admitted a number of features are functional at the infringement stage try to imagine what the hypothetical jury would do separate your medal from the function so we accept that the judge could do it in many forms she didn't do it at all either it claims a structure or an infringement and in reviewing this court cases if you look just that's not surprising because when you properly factor functional elements out of sort of and here and it's very difficult to say that the or and then to all appearances only have been in french on the bad damages and i just would respectfully suggest that nike which was in which the apportionment discussion was dicked which was about the marking statute ninety is not dispositive on the issues we've raised here about section two eighty nine it can't be that the piano cases as well as young under my or in other cases they were all responding to the notion and by the way i didn't suggest that apple's playing for absurd i was trying to argue against an absurd interpretation of section two eighty nine and that's what the piano cases and young untermeyer did they said we're not going to give entire process on the refrigerator latch we're not going to entire process on the piano of including the case and as to the notion of the article of manufacture here it is the whole song with respect that's just not so different original equipment manufacturers make the glass and the chips and the other things that combine to the a very healthy after market for used phones because glass and bezels and chips and other components can be can be this aggregated the pm cases dissenting judge said there's no separate market for piano cases and the majority said that doesn't matter so with respect we think you do have an opportunity to construe article of manufacture in a sensible way if specially relying on to the extent of so as not to confer entire profits here but if you have any doubt please at least go back to liability copy that apple gets to say overall appearances are enough and we get entire profits on trade grounds i just want to be clear that the instruction was not waved at the ninth circuit last week put in their proposed instruction the judge very clearly said you don't need to repeat yourselves everything you've already put in your briefs is preserved and we proposed the instruction that she declined to give so with respect if you just focus on the instruction on willfulness for damages we did preserve that but we don't think you need to rely just on instructional error because there was no proof of w s and i want to be very clear mr leeson a long time picking apart the language of our proposed instruction he never argued with the fact that the core of that was absolutely correct and never given by the judge the instruction needed to say that we were trading on recognition of the source not intend to be not intend to harm in the abstract intent to trade on source recognition that instruction was not given and and there was no evidence to support it the survey evidence that mr lee cites we've covered it in their brief but mr portray didn't ask about people in the general population yes people already rate recognise the trade dress so he's you your honor with respect we hope that you will reverse