【参考資料】

判例

（１）米 国①United States District Court for the Northern District of California in No.
11-CV-1846 (報告書本文 p.30)
The United States District Court for the Northern District of California のWebsitehttp://cand.uscourts.gov/applevsamsung/casedocs（２）OHIM①2011 年 6 月 14 日の判決、 Case T-68/10, Sphere Time / OHIM, (WATCH),
para. 26-29） (報告書本文 p43)
Court of Justice of European Union Website
http://curia.europa.eu/juris/document/document.jsf;jsessionid=9ea7d0f13
0d65c64fbfda63a4432819ded2a3481c49e.e34KaxiLc3eQc40LaxqMbN4Oa
xyMe0?text=&docid=85084&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=93785（３）台 湾
①電子プレーヤー意匠権侵害事件（知的財産法院 100 年度民事第 7 号）
p.228)(報告書本文UPSC 聯合專利商標事務所 Website
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United States District Court
For the Northern District of California

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UNITED STATES DISTRICT COURTNORTHERN DISTRICT OF CALIFORNIASAN JOSE DIVISIONAPPLE, INC., a California corporation,))
Plaintiff and Counterdefendant,)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 and Counterclaimants. ))Case No.: 11-CV-01846-LHK
ORDER DENYING MOTION FOR
SUMMARY JUDGMENT

Defendants and Counterclaimants Samsung Electronics Co., Ltd., Samsung Electronics

15

America, Inc., and Samsung Telecommunications America, LLC (collectively “Samsung”) filed a16

motion for summary judgment against Plaintiff and Counterdefendant Apple, Inc. (“Apple”) on

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May 17, 2012 (“MSJ”). Apple filed its opposition on May 31, 2012 (“Opp’n”). Samsung filed its

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reply on June 7, 2012 (“Reply”). The Court held a hearing on June 21, 2012. The pretrial

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conference in this matter is set for July 18, 2012; the trial will begin on July 30, 2012. Because the20parties require a ruling on this motion on an expedited basis, the Court will keep its analysis brief.

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The parties are familiar with the factual and procedural background of this case, and the22

Court will not repeat it in detail here. In sum, at the center of the parties’ dispute in this lawsuit are23

Samsung’s cellular telephones and tablet computers. Apple alleges that Samsung’s products

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infringe on Apple’s utility and design patents as well as Apple’s trade dress. In addition, Samsung

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filed counterclaims against Apple alleging that Apple products infringe Samsung patents. Because

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several of Samsung’s asserted patents are incorporated into the UMTS standards (“standards

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essential patents”), Apple also alleges, in its counterclaims in reply, that Samsung’s refusal to28

license its standards essential patents on fair, reasonable, and non-discriminatory (“FRAND”)
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ORDER REGARDING SAMSUNG’S MOTION FOR SUMMARY JUDGMENT

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terms, constitutes antitrust violations. Additional facts are discussed below, as necessary, in the2

Court’s analysis.

United States District Court
For the Northern District of California

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In order to prepare this case for trial on July 30, 2012, the parties stipulated to dismiss many4of the claims originally asserted in the complaint, counterclaims, and counterclaims in reply.

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Samsung moves for summary judgment on all of Apple’s affirmative claims. At issue in this6

motion for summary judgment are the following claims: (1) trade dress infringement; (2) trade7

dress dilution; (3) utility patent infringement; (4) design patent infringement; and (5) antitrust8

claims. After hearing oral argument on the matter, and reviewing the briefing by the parties, the9evidence offered in support of the briefing, and the relevant case law, the Court DENIES

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Samsung’s motion for summary judgment. Each of Samsung’s arguments challenging Apple’s

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claims is addressed in turn below.

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I.

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LEGAL STANDARD
Under Federal Rule of Civil Procedure 56(a), “the court shall grant summary judgment if

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the movant shows that there is no genuine dispute as to any material fact and the movant is entitled15

to judgment as a matter of law.” Material facts are those that may affect the outcome of the case.

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See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a material fact is

17“genuine” if the evidence is such that “a reasonable jury could return a verdict for the nonmoving

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party.” See id. “[I]n ruling on a motion for summary judgment, the judge must view the evidence

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presented through the prism of the substantive evidentiary burden.” Id. at 254. The question is20“whether a jury could reasonably find either that the [moving party] proved his case by the quality

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and quantity of evidence required by the governing law or that he did not.” Id. “[A]ll justifiable

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inferences must be drawn in [the nonmovant’s] favor.” See United Steelworkers of Am. v. Phelps

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Dodge Corp., 865 F.2d 1539, 1542 (9th Cir. 1989) (en banc) (citing Liberty Lobby, 477 U.S. at

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255).

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The moving party bears the initial responsibility for informing the district court of the basis

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for its motion and identifying those portions of the pleadings, depositions, interrogatory answers,

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admissions and affidavits, if any, that it contends demonstrate the absence of a genuine issue of28

material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). A party opposing a properly
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supported motion for summary judgment “may not rest upon the mere allegations or denials of2[that] party’s pleading, but . . . must set forth specific facts showing that there is a genuine issue for3

trial.” See Fed. R. Civ. P. 56(e); see also Liberty Lobby, 477 U.S. at 250. The opposing party need4

not show the issue will be resolved conclusively in its favor. See Liberty Lobby, 477 U.S. at 248–

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49. All that is necessary is submission of sufficient evidence to create a material factual dispute,6

thereby requiring a jury or judge to resolve the parties’ differing versions at trial. See id.

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II.

United States District Court
For the Northern District of California

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TRADE DRESS“It is well established that trade dress can be protected under federal law. The design or

9packaging of a product may acquire a distinctiveness which serves to identify the product with its

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manufacturer or source.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 28

11(2001). To succeed on its trade dress claims, Apple must satisfy three elements: nonfunctionality,

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distinctiveness, and likelihood of confusion. See Disc Golf Ass’n, Inc. v. Champion Discs, Inc.,13

158 F.3d 1002, 1005 (9th Cir. 1998). On its motion for summary judgment, Samsung only argues

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that Apple’s product designs are unprotectable because they are functional. Functionality is a

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factual question. Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1258 (9th Cir. 2001)

16(citation omitted).

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The burden of proof of functionality on trade dress claims depends upon whether the trade18

dress is registered or not. A party asserting protection for unregistered marks “has the burden of

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proving that the matter sought to be protected is not functional.” 15 U.S.C. §1125(a)(3) (2006). In

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contrast, a registered mark enjoys the presumption of validity. However, this presumption can be21

rebutted through “law, undisputed facts, or a combination thereof that the mark is invalid” such

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that registration alone does not protect the trademark holder against summary judgment. Tie Tech,

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Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir. 2002). Apple continues to assert “[t]he iPhone24

trade dress (based on the trade dress Registration No. 3,470,983, the unregistered combination

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iPhone trade dress, and the unregistered iPhone 3G trade dress)1” as well as “[t]he iPad trade dress

26(based on unregistered iPad/iPad 2 trade dress).” See ECF No. 902. Apple clarified at the hearing

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1

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Although it is unclear whether Apple continues to assert the iPhone 3G as an independent tradedress claim, because Samsung offers arguments challenging the iPhone 3G trade dress, the Court
will address this issue. MSJ at 6.
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on the Daubert motions that the only iPhone trade dress claim asserted was trade dress dilution.

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Apple continues to assert both trade dress infringement and trade dress dilution as to the iPad.

United States District Court
For the Northern District of California

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Trade dress protection “must subsist with the recognition that in many instances there is no4

prohibition against copying goods and products.” TrafFix Devices, Inc., 532 U.S. at 29.

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Therefore, “[t]he functionality doctrine prevents trademark law, which seeks to promote

6competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by

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allowing a producer to control a useful product feature.” Qualitex Co. v. Jacobson Prod. Co., 514

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U.S. 159, 164 (1995).

9

The Supreme Court has recognized two types of functionality: a “traditional rule” and a10

second rule addressing “aesthetic functionality.” TrafFix, 532 U.S. at 32-33. First, if a product11

feature is “essential to the use or purpose of the article or if it affects the cost or quality of the

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article,” it is functional and cannot be protected by trade dress. Id. at 32. Second, in cases where13

the first test is not satisfied, the question becomes whether trademark protection would place

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competitors at a “significant non-reputation-related disadvantage.” Id. (internal quotation marks

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omitted); see also Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1072 (9th16

Cir. 2006). The Court will address each of the types of functionality recognized by the Supreme

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Court in turn.

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A. Utilitarian Functionality

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As explained above, under the traditional, utilitarian functionality test, a trade dress is20functional “when it is essential to the use or purpose of the device or when it affects the cost or21

quality of the device.” TrafFix, 532 U.S. at 33. In applying this test, the Ninth Circuit assesses

22four factors: “(1) whether advertising touts the utilitarian advantages of the design, (2) whether the23

particular design results from a comparatively simple or inexpensive method of manufacture, (3)24whether the design yields a utilitarian advantage and (4) whether alternative designs are available.”

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Talking Rain Beverage Co. v. S. Beach Beverage Co., 349 F.3d 601, 603 (9th Cir. 2003) (citing

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Disc Golf, 158 F.3d at 1006); see also Au-Tomotive Gold, Inc., 457 F.3d at 1072 n.8

27(acknowledging the four factor test applied by the Ninth Circuit). While the existence of

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alternative designs does not alone prevent a finding of functionality, alternative designs may
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provide evidence as to whether the trademark “embodies functional or merely ornamental aspects

2of the product.” Id. (citations and quotation marks omitted).

United States District Court
For the Northern District of California

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Samsung first argues that each feature of the trade dress Apple seeks to claim serves

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utilitarian functions, and that the combination of utilitarian features is functional. MSJ at 3-5.

5Samsung’s argument, however, is in tension with Ninth Circuit precedent, which requires that in

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evaluating functionality, the trade dress should be considered as a whole rather than as a collection

7of individual elements. Clicks Billiards, 251 F.3d at 1259. “The fact that individual elements of8

the trade dress may be functional does not necessarily mean that the trade dress as a whole is9functional; rather, functional elements that are separately unprotectable can be protected together as

10part of a trade dress.” Adidas-Solomon AG v. Target Corp., 228 F. Supp. 2d 1192, 1195 (D. Or.

112002) (citing Clicks Billiards, 251 F.3d at 1259).

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Samsung finds some support for its position in Leatherman Tool Grp., Inc. v. Cooper

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Indus., Inc., 199 F.3d 1009, 1013 (9th Cir. 1999). In Leatherman Tool, the Ninth Circuit

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concluded that “where the whole is nothing other than assemblage of functional parts, and where

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even the arrangement and combination of the parts is designed to result in superior performance,”

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there is no basis to conclude the trade dress as a whole is non-functional. Id. Although Samsung

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offers evidence regarding the functional and useful qualities of many of the design features of

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Apple’s trade dresses, Samsung does not offer any support for its assertion that the arrangement of

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features in the overall trade dress is strictly functional, as was the case in Leatherman.

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Apple, on the other hand, applying the four Disc Golf factors, has raised a triable issue of21

fact as to the functionality of the Apple trade dresses. Specifically, each of the factors is addressed

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below:

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1. Advertising

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Advertising that touts the utility of the product design provides evidence of functionality.

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See Talking Rain, 349 F.3d at 603-604 (noting that advertising focused on the ease of holding the26

beverage bottle at issue demonstrates functionality). Apple points to evidence of its advertising,27

which focuses on the aesthetic beauty rather than utilitarian features. Opp’n at 3. The print

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advertisements identified by Apple highlight the product, without necessarily indicating anything
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68. Samsung also presents evidence on the existence of alternative designs but offers no support

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for the contention that each of these designs would be more expensive or difficult to manufacture

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or would otherwise be less useful to consumers. See MSJ at 3 n.5; Arnold Decl. Exs. 66-67. Thus,

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Apple has a raised a material issue of fact regarding the availability and existence of alternative

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designs.

United States District Court
For the Northern District of California

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In short, Apple has pointed to sufficient evidence in the record from which a reasonable

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juror could find that Apple’s asserted trade dress is not functional under the Ninth Circuit’s

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definition of utilitarian functionality.

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B. Aesthetic Functionality

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Samsung also argues that Apple’s product designs are not protectable under the doctrine of11aesthetic functionality. In some cases, the appearance of the product contributes to the overall

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usefulness of the product. Qualitex, 514 U.S. at 169 (citing Inwood Lab., Inc. v. Ives Lab., Inc.,

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465 U.S. 844, 853 (1982) (noting the functionality of the color of a medical pill which serves to14

distinguish the type of medicine)). Trademark does not protect designs if protection would place

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competitors at a “significant non-reputation-related disadvantage.” TrafFix, 532 U.S. at 33

16(quotation marks omitted).

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Some have suggested the Ninth Circuit has rejected the aesthetic functionality doctrine. See

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Clicks Billiards, 251 F.3d at 1260 (“Nor has this circuit adopted the ‘aesthetic functionality’

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theory, that is, the notion that a purely aesthetic feature can be functional.”); First Brands Corp. v.

20Fred Meyer, Inc., 809 F.2d 1378, 1382 n.3 (9th Cir. 1987) (“In this circuit, the ‘aesthetic’

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functionality test has been limited, if not rejected, in favor of the ‘utilitarian’ functionality test.”)22(internal citations and quotation marks omitted). However, recent case law suggests the “doctrine,

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albeit restricted over the years, retains some limited vitality.” Au-Tomotive Gold, 457 F.3d at 1070.

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The fact that a feature “contributes to the consumer appeal and salability of the product”

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does not alone make that feature functional as a matter of law. Id. at 1072 (quotation marks and26

citation omitted). Instead, aesthetic functionality is a limited doctrine that applies “[w]hen goods27

are bought largely for their aesthetic value.” Id. at 1068 (citing Restatement of Torts § 742). In

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that case a product’s features “may be functional because they definitely contribute to that value
7
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ORDER REGARDING SAMSUNG’S MOTION FOR SUMMARY JUDGMENT

United States District Court
For the Northern District of California

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and thus aid the performance of an object for which the goods are intended.” Id. Where the feature2

or design “is a mere arbitrary embellishment, a form of dress for the goods primarily adopted for3

purposes of identification and individuality” and “unrelated to basic consumer demands in

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connection with the product” aesthetic functionality is not shown. Id. A few examples of products

5that meet the “aesthetic functionality” doctrine have been given over the years: a heart-shaped

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candy box, a distinctive printing typeface, or a distinctive blossom pattern on a set of china are all7

considered “aesthetically functional.” Id.

8

Samsung argues that Apple’s product design contributes to its market success rendering the9design aesthetically functional. MSJ at 7. Apple argues that a product’s design that contributes to10sales does not alone determine aesthetic functionality. Opp’n at 4 (citing Au-Tomotive Gold, 457

11F.3d at 1072). In any event, the parties’ contradiction illustrates that a factual dispute regarding

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whether the trade dresses are aesthetically functional precludes summary judgment. See Bartlett

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Decl. Ex. 16 ¶ 8; Ex. 7. Especially in light of the Ninth Circuit’s admonition that the aesthetic

14functionality concept is a limited doctrine, the Court finds that summary judgment on the factual

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issue of functionality is not appropriate given the factual record. Accordingly, Samsung’s motion

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for summary judgment on Apple’s trade dress claims based on functionality is DENIED.

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III.

TRADE DRESS DILUTION

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Trademark dilution is caused by the use in commerce of a mark that “impairs the19

distinctiveness” or “harms the reputation” of a famous mark. 15 U.S.C. §1125(c). “Dilution refers

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to the whittling away of the value of a trademark when it’s used to identify different products.”

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Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 903 (9th Cir. 2002) (citation and quotation marks

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omitted). While many dilution claims refer to trade names, the current statute explicitly applies

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dilution protection to trade dress. 15 U.S.C. §1125(c)(4). To establish a claim of trade dress

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dilution, a plaintiff must show that (1) the trade dress is “famous and distinctive,” (2) the defendant25

is “making use of the [trade dress] in commerce,” (3) the defendant’s “use began after the [trade26

dress] became famous,” and (4) the defendant’s use of the trade dress is “likely to cause dilution by27

blurring” or by “tarnishment.” See Jade Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir.

28
8
Case No.: 11-CV-01846-LHK
ORDER REGARDING SAMSUNG’S MOTION FOR SUMMARY JUDGMENT

Case5:11-cv-01846-LHK Document1158 Filed06/30/12 Page9 of 4212008). Samsung only disputes, for the purposes of its motion for summary judgment, that Apple is2

able to establish that its asserted trade dress is “famous.”

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A trademark dilution claim is limited to “famous marks,” which are marks that are “widely

4

recognized by the general consuming public of the United States as a designation of source of the5goods or services of the mark’s owner.” 15 U.S.C. §1125(c)(2)(A). The party asserting protection

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bears the burden of showing the “claimed trade dress, taken as a whole, is not functional and is7

famous.” 15 U.S.C. §1125(c)(4)(A). Moreover, if a product design includes registered marks, the8party must prove that the “unregistered matter, taken as a whole, is famous separate and apart9from” the registered marks. 15 U.S.C. §1125(c)(4)(B).

United States District Court
For the Northern District of California

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It is important to note that fame must already be established at the time the junior user

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begins to use the mark; dilution can only occur “at any time after the owner’s mark has become

12famous.” 15 U.S.C. §1125(c)(1). Furthermore, the initial use of the mark by the junior user

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demarcates the time at which both fame and consumer use must be established. Nissan Motor Co.

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v. Nissan Computer Corp., 378 F.3d 1002, 1013 (9th Cir. 2004). Thus, the relevant dates for each15of the asserted trade dresses are as follows. In order to establish dilution of the iPhone trade dress,

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which was announced in January 2007 and released in June 2007, Apple must show that its product17

was “famous” as of November 2007, when Samsung released the Samsung F700, the accused

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product. FAC ¶ 80. In order to establish dilution of the iPad trade dress, which was announced in

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January 2010 and released in April 2010, Apple must show that its product was “famous” as of20

November 2010, when Samsung released the Galaxy Tab, the accused product. FAC ¶¶ 22, 82.

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Finally, in order to establish dilution of the iPhone 3G trade dress, which was released in July

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2008, Apple must show that its product was “famous” as of March 2010, when Samsung released

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the Samsung Galaxy i9000, the accused product. FAC ¶¶ 60, 81.

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The Ninth Circuit has recognized that fame requires a high standard of consumer awareness25

beyond the trademark owner’s specific market—the mark should be a “household name” or “part26of the collective national consciousness.” Thane Int., Inc., v. Trek Bicycle Corp., 305 F.3d 894,27

911-12 (9th Cir. 2002) (overturned by statute on other grounds). The Federal Trademark Dilution

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Act provides four non-exclusive factors courts may consider to determine whether the mark has
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United States District Court
For the Northern District of California

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Although some of the evidence cited by Apple does not relate specifically to evidence of2

fame at the time of the release of the junior user’s demarcation, Apple has pointed to other3

evidence in the record suggesting “fame” in the relevant time period. Specifically, Apple points to4

several news stories in mainstream news outlets touting the iPhone, iPhone 3G, and iPad products.

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For example, Time named the iPhone invention of the year in a November 1, 2007 publication,

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before the release of the Samsung F700. Winer Decl. Ex. 1 at nn.115. Other unsolicited media

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reports with photographs of the iPhone 3G and the iPad appeared in newspapers such as The New

8York Times, The Washington Post, San Jose Mercury News, and San Francisco Chronicle. Winer

9

Decl. Ex. 1 at nn.119, 137. Finally, Apple has provided some evidence suggesting that it has

10consistently spent significant sums on the advertising of the iPhone and the iPad, even before the11release of the accused Samsung devices. See Bartlett Decl. Exs. 14-15.

12Although Samsung argues that Apple’s survey precludes a finding of fame as a matter of13

law – because it shows that less than 60% of respondents were aware of the trade dress in the

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iPhone and iPad product designs claimed – such a conclusion is not necessarily warranted. The

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factors to be established for fame are non-exhaustive, so survey results are not required.

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It is a close question as to whether a reasonable juror could find on the record before the17

Court that the designs of Apple’s products (exclusive of the Apple name, logo, or home button)

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were famous at the time Samsung released its products. Nonetheless, viewing the evidence in the

19

light most favorable to Apple, there appears to be enough evidence from which a reasonable jury

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could conclude that the iPhone, iPhone 3G, and iPad trade dresses were “famous” for establishing21

the dilution claim. Accordingly, Samsung’s motion for summary judgment is DENIED.

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IV.

UTILITY PATENTS

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Apple asserts that Samsung’s accused devices infringe on the asserted claims of the24

following patents-in-suit: (1) claim 19 of U.S. Patent No. 7,469,381 (“’381 Patent”); (2) claim 8 of

25

U.S. Patent No. 7,844,915 (“’915 Patent”); (3) claim 8 of U.S. Patent No. 7,663,607 (“’607

26

Patent”); (4) claim 50 of U.S. Patent No. 7,864,163 (“’163 Patent”).

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A.

The ’381 Patent

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The ’381 Patent, entitled “List Scrolling And Document Translation, Scaling, And Rotation

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On A Touch-Screen Display,” discloses a method for displaying when a user has gone beyond the3edge of an electronic document. ’381 Patent Abstract. The application for the ’381 Patent was

4

filed on December 14, 2007, and the patent issued on December 23, 2008. The ’381 Patent has

5been discussed at length in the Court’s December 2, 2011 preliminary injunction order and in the6

Court’s April 4, 2012 claim construction order. Therefore, the claimed invention of the snap-back7

feature will not be discussed at length here.

89United States District Court
For the Northern District of California

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Apple has narrowed its trial claims and currently only asserts that the accused devices
infringe claim 19 of the ’381 Patent. Claim 19 of the ’381 patent recites:
19. A device, comprising:a touch screen display;
one or more processors;
memory; andone or more programs, wherein the one or more programs are stored in the memoryand configured to be executed by the one or more processors, the programs
including:15

instructions for displaying a first portion of an electronic document;

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instructions for detecting a movement of an object on or near the touch
screen display;

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19

instructions for translating the electronic document displayed on the touch
screen display in a first direction to display a second portion of the electronic
document, wherein the second portion is different from the first portion, in
response to detecting the movement;

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instructions for displaying an area beyond an edge of the electronic
document and displaying a third portion of the electronic document, wherein
the third portion is smaller than the first portion, in response to the edge ofthe electronic document being reached while translating the electronic
document in the first direction while the object is still detected on or near the
touch screen display; and

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instructions for translating the electronic document in a second direction
until the area beyond the edge of the electronic document is no longer
displayed to display a fourth portion of the electronic document, wherein the
fourth portion is different from the first portion, in response to detecting thatthe object is no longer on or near the touch screen display.

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Case5:11-cv-01846-LHK Document1158 Filed06/30/12 Page13 of 421’381 Patent 36:58-37:22. Samsung argues in its motion for summary judgment that claim 19 of the2’381 Patent is invalid because it is anticipated by a program called Tablecloth. Samsung argues

3

that Tablecloth discloses each limitation in claim 19 of the ’381 Patent. MSJ at 20-21. Tablecloth4

ran on a device called DiamondTouch. The DiamondTouch table is “a touch-sensitive display that5

was originally developed at the Mitsubishi Electric Research Laboratories (“MERL”) in 2001. The

6

Tablecloth application was created in January 2005, and left on display in the MERL lobby around7

the same time. Bogue Decl. ¶¶ 8-9. The Tablecloth demo was available and accessible to visitors

8of the MERL lobby. Id. Additionally, the Tablecloth application was demonstrated to customers

9

in 2006. Id. ¶ 12.

United States District Court
For the Northern District of California

10

1. Prior Art

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First, Apple disputes whether Tablecloth may serve as a prior art reference. Whether a12reference may be considered prior art under § 102 is a question of law, based upon underlying

13

factual determinations. See Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613,14622 (Fed. Cir. 1985); Allied Colloids Inc. v. American Cyanamid Co., 64 F.3d 1570, 1574 (Fed.

15

Cir. 1995). Samsung contends that Tablecloth is prior art under 102(a), (b), and (g)(2).

16

Samsung asserts that Tablecloth was invented and reduced to practice by January 2005 at

17

Mitsubishi Electronic Research Laboratory (MERL) in Cambridge, MA, by Adam Bogue, a former

18

MERL employee. Bogue Decl. ¶¶6-8. Apple claims a priority date of February 2005. Mr. Bogue

19

has declared that a device (DiamondTouch) on which Tablecloth was installed was available and20

demonstrated in the MERL office lobby in the U.S. in January 2005. Bogue Decl. ¶ 9.

21

Furthermore, Mr. Bogue has declared that he demonstrated a Tablecloth program at trade shows in

22

the U.S. since at least March 2006. Bogue Decl. ¶ 12.

23

If Mr. Bogue’s testimony on his public demonstrations of Tablecloth is credited, it might24

show that Tablecloth was known or used in a publicly accessible manner in the United States, prior25

to invention of the ’381, qualifying as prior art under § 102(a). See MPEP § 2132 (citing Carella v.

26

Starlight Archery, 804 F.2d 135 (Fed. Cir. 1986) (stating that 102(a) knowledge or use must be in a27

manner accessible to the public). Additionally, Mr. Bogue’s testimony on his public

28

demonstrations of Tablecloth suggests that Tablecloth may have been in public use or on sale more
13
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1

than one year prior to the filing of the ’381 Patent’s parent provisional application, qualifying as

2prior art under § 102(b). See 35 U.S.C. § 102(b) (stating that an invention is prior art if it was “in3

public use or on sale in this country, more than one year prior to the date of application for4patent”). Finally, Mr. Bogue’s testimony as to the date of Tablecloth’s invention suggests that

5

Tablecloth was invented prior to the ’381 Patent, and Mr. Bogue’s testimony as to his public

6demonstrations of Tablecloth suggests that Tablecloth was “not abandoned, suppressed, or

7

concealed,” qualifying Tablecloth as prior art under 35 U.S.C. § 102(g)(2).

United States District Court
For the Northern District of California

8

Other than Mr. Bogue’s declaration, Samsung cites no evidence that Tablecloth was known

9

or used in a publicly accessible manner, or that Tablecloth was in public use or on sale. Absent

10

corroboration, Mr. Bogue’s declaration cannot serve to invalidate the ’381 Patent. See Woodland

11

Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1373 (Fed. Cir. 1998) (holding that the12

uncorroborated oral testimony of interested Flowertree witnesses as to 102(a) prior art was

13

insufficient evidence to invalidate the patent); Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d

141354, 1368 (Fed. Cir. 1999) (holding that “corroboration is required of any witness whose

15

testimony alone is asserted to invalidate a patent, regardless of his or her level of interest.”); see

16also Norian Corp. v. Stryker Corp., 252 F. Supp. 2d 945, 956-57 (N.D. Cal. 2002) aff’d in part,17

rev’d in part on other grounds by 363 F.3d 1321 (Fed. Cir. 2004). (“Finnigan and the foregoing18

precedents . . . mean that corroboration is required for prior inventorship, derivation and public use.

19

Whether corroboration over and above clear and convincing evidence should also be required for20

other § 102 challenges depends upon a considered evaluation of each type of challenge.”);21

Netscape Communications Corp. v. ValueClick, Inc., 704 F. Supp. 2d 544, 554 (E.D. Va. 2010)

22(raising doubt about the applicability of Finnegan, but noting that “[u]ntil the Federal Circuit

23

further clarifies this issue, the safest course, in the circumstances, is to apply the Finnigan

24

corroboration requirement broadly”). With respect to the alleged public demonstrations of

25

Tablecloth in the MERL lobby and at trade shows, Mr. Bogue is a single, uncorroborated witness,

26

precisely the class of witnesses that may not establish priority under Federal Circuit precedent.

27

Because Mr. Bogue’s testimony is the only evidence that Tablecloth was publicly accessible or in28
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1

public use and qualifies as prior art under § 102(a) or § 102(b), Samsung has not established2

priority under § 102(a) or § 102(b).

3However, Samsung has provided additional evidence regarding the invention date of

4

Tablecloth in order to establish priority under § 102(g)(2). To establish priority under § 102(g)(2)5“[t]he challenger of the validity of a patent must establish prior invention by clear and convincing

6

evidence. If the challenger does so, the burden of production shifts to the patentee to produce

7

evidence sufficient to create a genuine issue of material fact as to whether the prior inventor

8

abandoned, suppressed, or concealed the invention. If the patentee carries this burden of

9

production, the challenger may rebut the evidence of abandonment, suppression, or concealment,

10with clear and convincing evidence to the contrary.” Dow Chemical Co. v. Astro-Valcour, Inc.,11

267 F.3d 1334, 1339 (Fed. Cir. 2001) (citing Apotex USA, Inc. v. Merck & Co., 254 F.3d 1031,

121037-39 (Fed. Cir. 2001).

13

The two dates relevant to the Court’s analysis under § 102(g)(2) are the date of the14

invention of the ’381 Patent and the date of the invention of Tablecloth. The asserted invention

15

date of the ’381 Patent is February 2005. Corroboration for an invention date is required “where a16

party seeks to show conception through the oral testimony of an inventor.” Mahurkar v. C.R.

17

Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (citing Price v. Symsek, 988 F.2d 1187, 1195 (Fed.

18

Cir. 1993)). “This requirement arose out of a concern that inventors testifying in patent

19

infringement cases would be tempted to remember facts favorable to their case by the lure of

20

protecting their patent or defeating another’s patent.” Mahurkar, 79 F.3d at 1577 (citing Eibel

21

Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 60 (1923)). Here, Apple relies

22mainly on the deposition testimony of Bas Ording, the inventor of the ’381 Patent. Opp’n at 19;

23

Bartlett Decl. Ex. 56 at 129-130. However, it appears from the deposition testimony that Mr.

24

Ording has produced an exhibit which shows the file date for the program is February 11, 2005.

25

See id. Therefore, Mr. Ording’s testimony is not uncorroborated, and Apple has at least established26

a dispute of material fact regarding the invention date of the ’381 Patent.

27
28

There appears to be a dispute of material fact regarding the invention date of Tablecloth.
Mr. Bogue declares that Tablecloth was created in January 2005 – prior to the ’381 Patent’s alleged
15
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1

February 2005 conception date. Moreover, this priority date is corroborated by the date stamp on2

the program used to launch the Tablecloth application. Trac Decl. ¶ 28; Ex. 25 (showing the date3

stamp as to when Tablecloth_27.htm was last updated as January 2005).

4

At the hearing on June 21, 2012, Apple introduced a new expert declaration which noted

5

that the Tablecloth_27.swf application was last updated in June 2005. See Balakrishnan Suppl.

6

Decl. Apple objects to Samsung’s date stamp evidence corroborating the January 2005 invention

7

date as “inaccurate and extremely misleading.” See Apple’s Objection to Reply Evidence.

8

Although the Court does not weigh the evidence in reaching its ultimate decision on summary

9

judgment, for purposes of Apple’s Objection, the Court notes that evidence as to when10

Tablecloth_27.swf reached its final form does not necessarily reveal when Tablecloth was

11conceived. The fact that application launcher Tablecloth.htm existed in January 2005 is still

12

probative as to whether Tablecloth may have been conceived by that date.2 At the very least, a

13

genuine issue of material fact exists regarding when Tablecloth was invented and thus, whether it

14

meets the priority requirements of § 102(g)(2).

15

2. Anticipation

16

Even if Tablecloth is a prior art reference, Apple also argues that the program does not17

disclose every limitation in claim 19 of the ’381 Patent. A patent claim is invalid by reason of18

anticipation under 35 U.S.C. § 102, “if each and every limitation is found either expressly or

19

inherently in a single prior art reference.” Bristol-Myers Squibb Co. v Ben Venue Labs., Inc., 246

20

F.3d 1368, 1374 (Fed. Cir. 2001). Whether a patent is anticipated is a question of fact. Green

21

Edge Enterprises, LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1297 (Fed. Cir. 2010). In

22

assessing whether a patent claim is anticipated at summary judgment, the evidence is viewed

23“through the prism of the evidentiary standard of proof that would pertain at a trial on the merits.”

24

SRAM Corp. v. AD-II Eng’g, Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006). Because patents are25

presumed valid, “a moving party seeking to invalidate a patent at summary judgment must submit

26
27
28

2

The Court does not agree that the date stamp is “inaccurate and extremely misleading” in light ofthe discussion above. Apple may raise these issues in cross-examination. Therefore, the Court
DENIES Apple’s Objection to Reply Evidence.
16
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1such clear and convincing evidence of facts underlying invalidity that no reasonable jury could find2

otherwise.” Id.

United States District Court
For the Northern District of California

3

Samsung provides the expert declaration from Dr. van Dam, as well as an accompanying

4claim chart and videos, to establish that Tablecloth discloses each limitation of claim 19 of the ’381

5

Patent. See van Dam Decl. ¶¶ 71-107. Apple argues that three limitations are not met by the6

Tablecloth: (1) Tablecloth did not disclose a touch screen display; (2) Tablecloth did not disclose

7

instructions for displaying an area beyond the edge of the electronic document . . . in response to8

the edge of the electronic document being reached;” and (3) instructions for translating the9electronic document in a second direction until the area beyond the edge of the electronic

10

document is no longer displayed.” See Opp’n at 20.

11

Based on the testimony of Apple’s expert, it does appear that a triable issue of fact remains

12

regarding whether Tablecloth discloses all elements of claim 19. Tablecloth utilized a “touch13

sensitive table” with an image projected on to it. Balakrishnan Decl. ¶ 76. It is a question for the14jury as to whether the DiamondTouch’s touch sensitive table, which included an apparatus for

15

projecting an image onto a touch sensor, reads on to the limitation of a “touch screen display.” Id.

16

Thus, whether Tablecloth anticipates every limitation of claim 19 is a fact question inappropriate

17

for summary judgment.3

18

Apple has identified several issues of material fact regarding whether Tablecloth anticipates

19

claim 19 of the ’381 Patent. Therefore, Samsung’s motion for summary judgment of invalidity as

20

to claim 19 of the ’381 Patent is DENIED.

21

B.

The ’915 Patent

22

The ’915 Patent, entitled “Application Programming Interfaces For Scrolling Operations,”

23

discloses a method for operating through an application programming interface (API) that provides

24

scrolling operations. ’915 Patent, Abstract. Apple claims that Samsung’s accused products

25

infringe independent claim 8 of the ’915 Patent. Samsung claims that it is entitled to summary

26

judgment of non-infringement because one of the limitations does not read on to the accused

27

3

28

Apple raises two other arguments that also plausibly mean this claim should be sent to a jury.
Because the Court has found material issues of disputed fact exist with respect to this claim, theCourt need not reach these additional issues raised by Apple.
17
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devices. MSJ at 17-18. At issue in this summary judgment motion is the following claim

2

limitation in independent claim 8:3
45

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

6’915 Patent at 24:5-11 (emphasis added). Specifically, Samsung argues that Android’s “event
7
object” in the accused devices does not “invoke a scroll or gesture operation,” as is required by the8claim limitation identified above. Because Samsung argues that the accused devices do not
9practice the above referenced limitation, it is entitled to summary judgment of non-infringement.
United States District Court
For the Northern District of California

10
Summary judgment of non-infringement is a two-step analysis. “First, the claims of the11patent must be construed to determine their scope. Second, a determination must be made as to12
whether the properly construed claims read on the accused device.” Pitney Bowes, Inc. v. Hewlett13
Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999) (internal citation omitted). “[S]ummary
14
judgment of non-infringement can only be granted if, after viewing the alleged facts in the light15
most favorable to the non-movant, there is no genuine issue whether the accused device is
16
encompassed by the claims.” Id. at 1304.
17
1. Claim Construction
18
Samsung argues that the disputed term “the event object invokes a scroll or gesture
19
operation” requires that “the object calls a method or function.” In other words, under Samsung’s
20
construction, the “event object” must directly call a function without intervening steps. See MSJ at
21
17. In contrast, Apple argues that “invoke” merely means that the event object “causes” or “causes
22
a procedure to be carried out” and includes no requirement that the event object calls the function
23
without intervening steps.
24
In construing disputed terms, the Court looks first to the claims themselves, read in context,
25
for “[i]t is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to26
which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
27
(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
28
18
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381 F.3d 1111, 1115 (Fed. Cir. 2004)). Generally, the words of a claim should be given their

2“ordinary and customary meaning,” which is “the meaning that the term would have to a person of

3

ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of4

the patent application.” Id. at 1312-13 (internal quotation marks and citations omitted). In order to5

construe the meaning of a disputed term, courts generally begin by examining intrinsic evidence

6(including the claims, the specification, and, if in evidence, the prosecution history) before turning7

to extrinsic evidence (e.g., expert testimony, dictionaries, and treatises). Vitronics Corp. v.

8Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996); see also Phillips, 415 F.3d at 1324.

9

The claim language itself does not define the term “invoke,” nor does the claim language

10

explicitly require that the event object call a function without intervening steps. Indeed, if

11anything, the claim language supports Apple’s construction that the event object need not call a12function. The next claim limitation requires “issuing at least one scroll call or gesture call based on

13

invoking the scroll or gesture operation.” ’915 Patent at 24:12-13. This claim limitation would

14

arguably be redundant if the Court were to adopt Samsung’s construction. If the term “invokes”

15means “call a function,” then the next claim limitation would read: “issuing at least one scroll or

16

gesture call based on calling the scroll or gesture operation.”

17

The specification further supports Apple’s construction. The claims must be read “in view18of the specification, of which they are a part.” Markman v. Westview Instruments, Inc., 52 F.3d

19967, 979 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370 (1996). The specification is “‘always

20

highly relevant’” and “‘[u]sually [] dispositive; it is the single best guide to the meaning of a21

disputed term,’” Phillips, 415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582). Apple points to22

several parts of the specification that undermine Samsung’s construction. For example, the23

specification refers to “user input invokes a scroll” which means that the user input causes a scroll

24function to be carried out. See ’915 Patent at 10:66-11:2; 22:62-64. Based on the use of “invoke”

25

in the specification, the Court is persuaded by Apple’s expert’s opinion that “One skilled in the art

26

would understand that ‘user input’ cannot itself ‘call’ scroll or gesture operation code, but instead27

causes the scroll or gesture operation to occur via intervening hardware detection and software

28

steps.” Singh Decl. ¶ 51.
19
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12

gesture operation to execute after multiple intervening steps. For example, the specification

3

discloses “[a] window server receives the event object and determines whether the event object is a

4

gesture object. If the window server determines that a gesture event object has been received, then5user interface software issues or transfers the handle gesture call at block 1302 to a software

6

application associated with a view.” ’915 Patent at 12:32-37. Thus, the specification supports

7

Apple’s construction that the term “invoke” means “causes” and that the event object is not

8required to call a function without intervening steps.

9

United States District Court
For the Northern District of California

Additionally, the specification also describes how the event object may cause a scroll or

In support of its construction, Samsung points to several sources: inventor deposition10

testimony, dictionary definitions, and expert declarations. MSJ at 17-18. The Court is11

unpersuaded by these sources for two reasons. First, as a legal matter, these types of extrinsic

12

evidence are “less significant than the intrinsic record” and “less reliable than the patent and its

13

prosecution history in determining how to read claim terms.” Phillips, 415 F.3d at 1318. Id. at

141317-18 (internal quotation marks and citation omitted).

15

Second, at best, the inventor and expert testimony and dictionary definitions of “invoke”

16

are ambiguous and do not strongly support Samsung’s construction. One of the named inventors

17

testified that invoke “is often used as a synonym for calling a function.” Gray Ex. 9 at 79-80. The

18

other named inventor testified that “an example of invoking something would be . . . causing that

19

code to run.” Gray Ex. 8 at 95-96. Thus, the inventors merely confirm that Samsung’s

20

construction is possible; they do not clearly define “event object invokes” in the way that Samsung

21

proposes. Similarly, it does not appear that Dr. Singh, Apple’s expert, testified that “invoke” here

22

must mean that the event object calls a function. Instead, Dr. Singh testified that the meaning of

23“invokes” depends on the context. See Gray Decl. Ex. 7 at 313-319. Finally, both parties have

24

offered dictionary definitions that could plausibly support their proposed constructions. See Gray25

Decl. Ex. 16; Singh Decl. Exs. 9-10. As these extrinsic sources are not persuasive in construing the26

disputed term, the Court relies on the intrinsic evidence in construing the disputed claim term.

27
28

Accordingly, the Court construes the term “invokes” as “causes” or “causes a procedure
to be carried out.” In other words, the event object is not required to directly call a function.
20
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United States District Court
For the Northern District of California

1

2. Non-Infringement2

After the court has defined the disputed claim term, “the task of determining whether the3

construed claim reads on the accused product is for the finder of fact.” PPG Indus. v. Guardian

4

Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998). The Federal Circuit has explained that the5

infringement question collapses into one of claim construction only where the parties agree that the6accused product infringes under one claim construction and that the accused product does not

7

infringe under an alternative claim construction. See Uniloc USA, Inc. v. Microsoft Corp., 632

8

F.3d 1292, 1302 (Fed. Cir. 2011). Samsung argues that even if the Court adopts Apple’s

9construction for “invoke” there is no infringement because the event object does not cause a scroll

10

or gesture operation to occur. According to Samsung, the event object identified by Apple is11“simply a container that holds touch information.” Reply at 10.

12Apple has identified sufficient evidence in the record from which a jury could conclude that13

literal infringement has occurred. Apple’s expert has pointed to evidence that the “event object

14

invokes a scroll or gesture operation,” and thus that the accused devices infringe. See Singh Decl.

15¶¶ 45-47. Apple has identified a material factual dispute regarding whether the event object causes

16

a scroll or gesture operation, and thus whether the accused devices infringe the asserted claim.

17

Compare Singh Decl. ¶¶ 56-59, with Reply at 10 (citing Gray Decl. ¶ 34).

18

Moreover, even if Apple is not able to establish literal infringement, Apple has pointed to19

evidence from which a jury could conclude that Samsung’s accused devices infringe under the20

doctrine of equivalents. To prove infringement under the doctrine of equivalents, a plaintiff must

21

show that the allegedly infringing device and claimed limitation perform “substantially the same

22

function in substantially the same way to obtain substantially the same result.” Warner-Jenkinson

23

Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 38 (1997); Lockheed Martin Corp. v. Space

24

Sys./Loral, Inc., 324 F.3d 1308, 1317 (Fed. Cir. 2003). Courts apply the function-way-result

25

analysis to each limitation of a claim, and there can be no infringement “if even one limitation of a26

claim or its equivalent is not present in the accused device.” Lockheed Martin, 324 F.3d at 1321.

27

Apple disclosed to Samsung in its original infringement contentions in August 2011 that it

28

intended to proceed based on a doctrine of equivalents theory. See Bartlett Decl. Ex. 80 at 4.
21
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1

Additionally, Apple cites to the record to support infringement under the doctrine of equivalents

2

for the ’915 Patent. Apple’s expert identified the function, way, and result to prove there is no3

substantial difference between the accused devices and the asserted claims. Opp’n at 15. The

4expert report analyzes the claim language and the code of the accused devices in support of his

5conclusion regarding the doctrine of equivalents. Singh Decl. ¶¶ 67-73. Thus, Apple has identified

6

evidence in the record from which a reasonable jury could find infringement under the doctrine of7

equivalents. Accordingly, Samsung’s motion for summary judgment is DENIED as to non-8

infringement of claim 8 of the ’915 Patent.

9

United States District Court
For the Northern District of California

10

C.

The ’607 Patent

The ’607 Patent, entitled “Multipoint Touchscreen,” discloses a “touch panel having a

11transparent capacitive sensing medium configured to detect multiple touches or near touches that

12

occur at the same time and at distinct locations in the plane of the touch panel.” ’607 Patent,

13

Abstract. The application for the ’607 Patent was filed on May 6, 2004, and the patent issued on

14

February 16, 2010. The ’607 Patent is directed toward a planar touchscreen with the ability to15

detect multiple touches that occur simultaneously at different locations and to generate distinct

16

signals corresponding to each of the multiple touches. ’607 Patent, Abstract. The system disclosed

17

in the ’607 Patent relies on a two-layer, “transparent capacitive sensing medium.” ’607 Patent,

18

21:35-36. In other words, the ’607 Patent discloses a clear screen embedded with two layers of

19

conducting lines. When a user touches the screen, the capacitance between the two layers of20

conducting lines changes. By measuring changes in charge coupling between the conducting lines

21in the two layers, the system disclosed in the ‘607 Patent can detect the presence and location of22

multiple touches simultaneously.

23

Apple accuses Samsung’s mobile touchscreen devices of infringing claim 8 of the ’607

24

Patent. Claim 8 is a dependent claim, depending from claim 7, which itself is a dependent claim,

25

depending from claim 1. Claim 1 of the ’607 Patent recites:

26
27

A touch panel comprising a transparent capacitive sensing medium configured todetect multiple touches or near touches that occur at a same time and at distinct
locations in a plane of the touch panel and to produce distinct signals representative

28
22
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1
2
3
4
5
6
7
8
9

United States District Court
For the Northern District of California

10
11
12
13
14

of a location of the touches on the plane of the touch panel for each of the multiple
touches, wherein the transparent capacitive sensing medium comprises:
a first layer having a plurality of transparent first conductive lines that areelectrically isolated from one another; anda second layer spatially separated from the first layer and having a pluralityof transparent second conductive lines that are electrically isolated fromone another, the second conductive lines being positions transverse to thefirst conductive lines, the intersection of transverse lines being
positioned at different locations in the plane of the touch panel, each of
the second conductive lines being operatively coupled to capacitive
monitoring circuitry;
wherein the capacitive monitoring circuitry is configured to detect changes
in charge coupling between the first conductive lines and the second
conductive lines.
’607 Patent, 21:35-55. Claim 7 of the ’607 Patent recites:
The touch panel as recited in claim 1, wherein the capacitive sensing medium is amutual capacitance sensing medium.
’607 Patent, 22:14-16. Claim 8 of the ’607 Patent recites:
The touch panel as recited in claim 7, further comprising a virtual ground charge
amplifier coupled to the touch panel for detecting the touches on the touch panel.
’607 Patent, 22:17-19. Claims 1 and 7 of the ’607 Patent have previously been the subject

15of litigation, and were found to be invalid as obvious by both an International Trade
16
Commission (“ITC”) Administrative Law Judge (“ALJ”) and the ITC. Declaration of Brian17
Von Herzen (“Von Herzen Decl.”) ¶¶ 22-27. Claim 8, however, was not asserted in that18
litigation. Id.
19
A patent is invalid for obviousness “if the differences between the subject matter sought to20
be patented and the prior art are such that the subject matter as a whole would have been obvious at21
the time the invention was made to a person having ordinary skill in the art to which said subject
22
matter pertains.” 35 U.S.C. § 103(a). “Obviousness is a question of law based on underlying
23
findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying factual
24
inquiries are: (1) the scope and content of the prior art; (2) the differences between the prior art and25
the claims at issue; (3) the level of ordinary skill in the art; and (4) any relevant secondary
26
considerations, such as commercial success, long felt but unsolved needs, and the failure of others.
27
28
23
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1

KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007) (citing Graham v. John Deere Co., 383

2

U.S. 1, 17-18 (1966)); Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1332 (Fed. Cir. 2012).

3

Under this framework, “a patent composed of several elements is not proved obvious

4

merely by demonstrating that each of its elements was, independently, known in the prior art.”

5

KSR, 550 U.S. at 418. Because it is possible that the claimed invention combines known building

6

blocks in some novel way “it can be important [to a showing of obviousness] to identify a reason

7

that would have prompted a person of ordinary skill in the relevant field to combine the elements in8

the way the claimed new invention does.” Id. Nevertheless, “when a patent ‘simply arranges old

9elements with each performing the same function it has been known to perform’ and yields no10

more than one would expect from such an arrangement, the combination is obvious.” Id. at 417

11(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).

12

Samsung argues that, as a matter of law, claim 8 of the ‘607 Patent is obvious in light of the

13prior art. MSJ at 22. In Samsung’s view, claim 8 is nothing more than a combination of two

14

elements, the device disclosed in claim 7 and a virtual ground charge amplifier, each of which was

15

independently obvious or well-known. See id. Claim 7, Samsung points out, has already been

16

found to be obvious by ITC. Id. Indeed, both the ALJ and the ITC agreed on the obviousness of

17claim 7. Von Herzen Decl. ¶¶ 22-27. Samsung cites two prior art references considered by the

18

ITC, U.S. Patent No. 7,372,455 (“Perski”) and the Smartskin paper (“Smartskin”), to demonstrate19

the obviousness of claim 7.

20

Samsung also identifies several prior art references that it claims lead to the inevitable21

conclusion that the additional limitation in claim 8 of a virtual ground charge amplifier circuit

22

would have been obvious to one of ordinary skill in the art at the time of the invention of the ’607

23

Patent. Specifically, Samsung relies on three patents (Blonder, Gerpheide ’658, and Gerpheide

24’017), all in existence over a decade before the filing of the ’607 Patent, that disclose the use of a25

charge amplifier in the field of capacitive touch sensing as a “capacitive measuring element.” Van

26

Herzen Decl. ¶¶ 34-49; MSJ at 23.

27
28

Judge Grewal recently granted Apple’s motion to strike the Blonder reference because it
was not timely disclosed. Order Granting in part, Denying in part Motions to Strike at 5, ECF No.
24
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Case5:11-cv-01846-LHK Document1158 Filed06/30/12 Page25 of 4211144. Therefore, the Blonder reference will not be admissible at trial, and the Court will not2

consider it on this motion for summary judgment.4 Fed. R. Civ. P. 56(e). Apple also argues that3

all of the other prior art Samsung cites to attack the additional limitations of claim 8 (except

4

Smartskin and Perski) should be stricken because none was timely disclosed in Von Herzen’s

5report or in Samsung’s invalidity contentions. See Opp’n at 21; Kramer Decl. ¶¶ 1-10. The Court

6

notes that the Gerpheide ’658 and Gerpheide ’017 references were both disclosed and charted in

7

Samsung’s invalidity contentions with respect to their obviousness arguments in claim 8. Von

8Herzen Decl. ¶ 52; Ex. 15 at 10-11.

9While Samsung lays out a persuasive argument in favor of finding claim 8 of the ’607

10

Patent to be invalid, underlying factual disputes preclude resolving this dispute as a matter of law.

11

The parties’ briefings have made clear that there remains a genuine dispute between Apple’s and

12

Samsung’s experts as to what is taught by the prior art, and in particular whether or not the prior art

13teaches toward or away from the use of a virtual ground charge amplifier in combination with the14device described in claim 7. Samsung’s expert, for instance, claims that the Perski reference

15“provides the motivation for one of ordinary skill in the art to use the [virtual ground charge]

16

amplifier configuration” in combination with the apparatus of claim 7. Von Herzen Decl. ¶ 77.

17

Apple’s expert argues, however, that all of “the prior art either teaches away from the virtual

18

ground charge amplifier . . . or uses a similar circuit in a completely different way that does not

19teach towards the innovation described and claimed in the ’607 Patent.” Declaration of Michael

20

Maharbiz (“Maharbiz Decl.”) ¶ 44. Because what is taught by a prior art, Ashland Oil Inc. v. Delta

21

Resins & Refracs. Inc., 776 F.2d 281 (Fed. Cir. 1985), and whether a prior art teaches away from a22claimed invention, In re Harris, 409 F.3d 1339 (Fed. Cir. 2005), are both questions of fact, the23

disagreement between the two experts constitutes a factual dispute, inappropriate for resolution at24

summary judgment. Accordingly, since Apple has demonstrated the existence of a genuine issue

25

of material fact, Samsung’s motion for summary judgment is DENIED.

26

4

27
28

Even if Blonder were to be considered, the Court would still find a genuine issue of material fact.
Samsung’s expert claims that Blonder teaches using a virtual ground charge amplifier, identical tothe one described in the ’607 Patent, in touch sensors. Von Herzen Decl. ¶¶ 45-48. Apple’s expert
argues that “the instrumentation in the Blonder ’041 Patent system simply teaches away from doing
this.” Maharbiz Decl. ¶ 44.
25

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United States District Court
For the Northern District of California

1

D.

The ’163 Patent

2

The ’163 Patent, entitled “Portable Electronic Device, Method, and Graphical User

3

Interface For Displaying Structured Electronic Documents,” discloses a method for displaying a4

structured electronic document on a touch screen display, detecting a gesture at a location on the5display of the document, and enlarging and centering the selected portion of the structured

6electronic document. See ’163 Patent, Abstract. The application for the ’163 Patent was filed on

7

September 4, 2007, and the patent issued on January 4, 2011. Apple asserts that Samsung’s

8accused devices infringe independent claim 50 of the ’163 Patent. Samsung moves for summary

9

judgment on invalidity of claim 50 arguing that it is anticipated by the “Launch Tile System.” MSJ

10

at 18-20. Independent claim 50 recites:

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

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

26
A patent claim is invalid by reason of anticipation under 35 U.S.C. § 102, “if each and27
every limitation is found either expressly or inherently in a single prior art reference.” Bristol28
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1

Myers Squibb Co., 246 F.3d at 1373. Whether a patent is anticipated is a question of fact. Green

2

Edge Enterprises, LLC, 620 F.3d at 1297. In assessing whether a patent claim is anticipated at3summary judgment, the evidence is viewed “through the prism of the evidentiary standard of proof

4

that would pertain at a trial on the merits.” SRAM Corp., 465 F.3d at 1357. Because patents are5

presumed valid, “a moving party seeking to invalidate a patent at summary judgment must submit

6

such clear and convincing evidence of facts underlying invalidity that no reasonable jury could find7

otherwise.” Id.
The Court previously discussed LaunchTile, the allegedly anticipatory reference,5 in the

United States District Court
For the Northern District of California

89

December 2, 2011 preliminary injunction order. In sum, LaunchTile is a program that provides a10

one-handed solution for interaction on a stylus-free touch screen mobile device. The LaunchTile

11

Program displayed an interactive information space called “the zoomspace.” Bederson Decl. ¶10.

12

The zoomspace consisted of 36 “tiles,” each representing an application. At the outermost level of13zoom – “the World View” – the zoomspace is divided into 9 areas of 4 tiles each. Id. A user has

14

the option to zoom in on one of the 9 4-tile Zones (“Zone View”). Id. ¶¶ 11. From the Zone View,

15

the user can further zoom in to an “Application View.” Id.

16

Apple argues that Samsung has not established that LaunchTile discloses several limitations

17

in claim 50. First, there exists a dispute as to whether the zoomspace disclosed in LaunchTile is in

18

fact a “structured electronic document.” Although Samsung attempts to frame the issue as one of19

claim construction, the issue appears to be a factual dispute regarding what exactly the20“zoomspace” is. See Reply at 10. For example, even adopting Samsung’s expert’s proposed21

definition of a “structured electronic document” as a “two dimensional information space

22

containing embedded coding that provides some meaning or ‘structure’ to the document,” Apple23

has identified a dispute as to whether LaunchTile meets the definition. See Gray Decl. ¶ 60. For

24

example, Apple’s expert opines that LaunchTile arranges a set of conceptually independent

25

application tiles onto a grid for display and that the tiles lack a “conceptual relationship or

26
5

27
28

Dr. Bederson developed LaunchTile no later than mid-2004 and presented a paper on the projectat the April 2005 ACM Conference on Human Factors in Computing Systems. Bederson Decl. ¶ 6.
Apple does not appear to contest that LaunchTile may be considered prior art pursuant to 35 U.S.C.
§ 102.
27

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2

LaunchTile’s zoomspace contains sufficient “structure” to meet the limitation of a “structured

3electronic document.”6

4Apple has identified a material issue of fact regarding whether LaunchTile discloses every

5

element of claim 50 of the ’163 Patent. Therefore, Samsung’s motion for summary judgment of

6

invalidity as to claim 50 of the ’163 Patent is DENIED.
V.

United States District Court
For the Northern District of California

7

DESIGN PATENTS

8

Samsung moves for summary judgment on all of the design patent claims asserted by

9Apple. Samsung argues that each of the asserted patents is invalid because each patent is obvious

10or anticipated in light of prior art. Additionally, Samsung argues that the D’334 Patent is invalid

11

based on the on-sale bar.
Design patents are presumed valid, absent clear and convincing evidence presented by

12
13

Samsung to the contrary. See Aero Products Int’l., Inc. v. Intex Recreation Corp., 466 F.3d 1000,

141015 (Fed. Cir. 2006). In its recent opinion, the Federal Circuit reiterated the proper analysis for15

obviousness of design patents. “To determine whether ‘one of ordinary skill would have combined

16

teachings of the prior art to create the same overall visual appearance as the claimed design, the17finder of fact must employ a two step process.” Apple, Inc. v. Samsung Electronics Co. Ltd., 678

18

F.3d 1314, 1329 (Fed. Cir. 2012). First, “one must find a single reference, a something in

19

existence, the design characteristics of which are basically the same as the claimed design.”

20

Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir. 1996) (internal quotations

21and citations omitted). Second, after a primary reference is found, other secondary references

22“may be used to modify it,” but only if “they are so related to the primary reference that the

23
24
6

25
26
27
28

Apple raises two other arguments that also plausibly mean this claim should be sent to a jury: (1)LaunchTile does not meet the limitation of “enlarging and translating the structured electronic
document so that the first box is substantially centered on the touch screen display” because thecontent of the “first box” changes; and (2) LaunchTile does not meet the limitation of “while thefirst box is enlarged, a second gesture is detected on a second box other than the first box.” Apple
argues that the “second box” in LaunchTile is not “other than the first box” because the second box
is “within the first box.” Because the Court has found a material issue of disputed fact exists as toanother claim limitation, the Court need not reach these additional issues raised by Apple.
28
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appearance of certain ornamental features in one would suggest the application of those features to2

the other.” Id. (internal quotation marks, citations, and alterations omitted).

3“Once that piece of prior art has been constructed” by one skilled in the art, whether by

4“combin[ing] earlier references . . . or [by] modify[ing] a single prior art reference,” only then does

5

“obviousness, like anticipation, require[] application of the ordinary observer test,” asking whether

6an ordinary observer would find the patented design substantially the same as the hypothetical prior

7

art reference. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240-41

8(Fed. Cir. 2009). Additionally, in order to avoid the trap of hindsight bias, one must also take into

9

account “secondary considerations” such as “commercial success, long felt but unsolved needs,

10[and] failure of others” in order to determine whether the subject matter sought to be patented

11

would have been obvious to one of ordinary skill in the art at the time of invention.” KSR, 550

12U.S. at 406 (citing Graham, 383 U.S. at 17-18); see also Catalina Lighting, Inc. v. Lamps Plus,

13

Inc., 295 F.3d 1277, 1288 (Fed. Cir. 2002) (secondary considerations apply to design patents).

14

A.

The D’087 Patent

15
Apple’s D’087 Patent

Sharp JPN No. 1241638

16
17
18
19
20
21
22
23
24

Several material factual disputes preclude summary judgment in favor of Samsung on theissue of whether the D’087 is obvious in light of prior art.

25

First, the finder of fact is tasked with identifying a primary reference, “the design

26

characteristics of which are basically the same as the claimed design.” Apple, 678 F.3d at 1329

27

(internal citations omitted). Samsung argues that Japanese Patent 1241638 (the “’638 Patent”) may

28

serve as a primary reference for purposes of determining obviousness. See MSJ at 11. As the29
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Federal Circuit found, the’638 Patent is not properly an anticipatory reference because the D’087

2

Patent claims an entirely flat front face with a bezel that wraps around the sides. In contrast, the3’638 Patent contains an arched, convex front, which distinguishes it from the D’087 Patent. See

4Apple, 678 F.3d at 1326. While the ’638 Patent is not an anticipatory reference, the ’638 Patent

5

might serve as a primary reference for the obviousness analysis. However, the ’638 is only a

6primary reference if it embodies the same “overall appearance and aesthetic appeal” as the D’087

7

Patent. See In re Rosen, 673 F.2d 388, 391 (Fed. Cir. 1982). Based on the designs, it is a factual

8question for the jury to determine whether the convex front face so alters the visual appearance of9

the design that the ’638 Patent has a different overall appearance and aesthetic appeal. If a jury

10finds the visual appearance of the’638 Patent is not basically the same as the D’087 Patent, the11inquiry stops, and the patented design is not obvious. See Durling, 101 F.3d at 103-105.

12

Additionally, Samsung argues that a designer of ordinary skill in the art would have13

combined other prior art references, including the Bluebird Pidion, the JP’221, and the iRiver U10,

14which would have rendered the D’087 Patent obvious. MSJ at 12-13. As an initial matter, the15

Court notes that Judge Grewal recently ordered that these references be excluded because Samsung

16

failed to timely disclose the prior art or invalidity theory. See Order Granting in part and Denying

17

in part at 4-5, ECF No. 1144. On this basis alone, summary judgment in favor of Samsung is not

18

proper because the evidence in support of Samsung’s obviousness argument will not be admissible

19

at trial. See Fed. R. Civ. P. 56(e); In re Oracle Corp. Securities Litig., 627 F.3d 376, 385 (9th Cir.

202010) (“A district court’s ruling on a motion for summary judgment may only be based on

21

admissible evidence.”).

22

In any event, even if the references were admissible at trial, a material factual dispute

23

would still preclude summary judgment. Although the Pidion reference discloses a bezel around24

the front face of the design, Apple has provided evidence that the Pidion and the ’638 Patent are25

not so related in visual appearance that one of ordinary skill in the art would have looked to26

combine them. See Bressler Decl. ¶¶ 66-73. Similarly, Apple has provided evidence that the27

JP’221, the U10, and the ’638 Patent are not so related in visual appearance that one of ordinary

28

skill in the art would have looked to combine them. See Bressler Decl. ¶¶ 61-65, 75-76. Thus,
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1

Apple has raised a triable issue of fact as to whether the proposed secondary prior art references2taught the design elements such that a designer of ordinary skill would have altered the ’638 Patent3

into the claimed design. See In re Borden, 90 F.3d 1570, 1576 (Fed. Cir. 1996) (“The question of

4

what the prior art teaches is a question of fact.”).

5

Finally, Apple has pointed to evidence in the record of secondary considerations that are

6

probative evidence of non-obviousness of a design patent. See Crocs, Inc. v. International Trade

7

Comm’n, 598 F.3d 1294, 1310-11 (Fed. Cir. 2010). Apple has provided evidence of praise for the

8Apple iPhone, the commercial embodiment of the D’087 and D’677 Patents. See Bartlett Decl. Ex.

926 (“As you’d expect of Apple, the iPhone is gorgeous. Its face is shiny black, rimmed by mirror-

10

finish stainless steel.”). Apple has also provided evidence of the commercial success of the iPhone,11

as well as evidence that Samsung took steps to copy the iPhone design. Musika Decl. ¶ 6; Winer

12

Decl. Ex. 1 ¶¶ 65, 82-85; Bressler Decl. ¶¶ 91-104. While Samsung contests whether the13

commercial success is tied to the D’087 and D’677 Patents, Reply at 6, Apple has identified

14

evidence from which a reasonable juror could find the necessary nexus between the asserted

15patents and the secondary considerations. Therefore, Apple has raised a genuine issue of material

16

fact which precludes resolution on summary judgment of the question of the existence of these17

secondary considerations. See Monarch Knitting Machinery Corp. v. Sulzer Morat GmbH, 139

18

F.3d 877, 886 (Fed. Cir. 1998).

19

B.

The D’677 Patent

20

Apple’s D’677 Patent

Sharp JPN No. 1241638

21
22
23
24
25
26
27
28
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3

the D’677 is obvious in light of prior art. As this Court already found, the D’677 Patent is

4

substantially the same as the D’087 Patent, and discloses an additional element of a black

5

transparent and glass-like front surface.

6

United States District Court
For the Northern District of California

For many of the same reasons identified above with respect to the D’087 Patent, several

First, whether Samsung has properly identified a primary reference will be a question for7

the finder of fact. Samsung has identified several prior art references that it believes could serve as

8

a “primary reference” including the ’638 Patent, the iRiver U10 MP3 player, and the Nokia

9

Fingerprint. See MSJ at 11-12. It is far from clear, however, that any of these references may

10properly serve as a “primary reference.” As previously explained, the ’638 Patent discloses an

11arched, convex front, while the D’677 Patent claims a smooth, black, flat surface. It will be for the12jury to determine whether the ’638 Patent embodies the same “overall appearance and aesthetic

13

appeal” as the D’677 Patent. See In re Rosen, 673 F.2d at 391. Based on the designs, a reasonable

14

jury could find that the convex front face so alters the overall visual appearance of the design that15

the ’638 Patent does not have “basically the same visual impression.”

16

Moreover, the Court notes that Judge Grewal recently ordered that the iRiver U10 and the17

Nokia Fingerprint be excluded from trial because Samsung failed to timely disclose the prior art or18

invalidity theory. See Order Granting in part and Denying in part at 4-5, ECF No. 1144. On this19

basis alone, summary judgment in favor of Samsung is not proper because the evidence in support

20

of Samsung’s obviousness argument will not be admissible at trial. See Fed. R. Civ. P. 56(e); In re

21

Oracle Corp. Securities Litig., 627 F.3d at 385.

22

In any event, even if the iRiver U10 and the Nokia Fingerprint were admissible, a material

23

factual dispute would still preclude summary judgment. The Nokia Fingerprint design has a24relatively long, narrow front display, with more deeply rounded corners, and an off center display.

25

Additionally, it is not clear from the reproduced image that the Fingerprint discloses a transparent

26

black front face. See Arnold Decl. Ex. 10. In comparison, the D’677 Patent claims a wider front

27

face with sharper edges and a transparent black front face. Based on the designs, a reasonable jury

28
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1

could find that the Nokia Fingerprint does not have “basically the same visual impression” as the2

D’677 Patent.

3

Additionally, the iRiver U10 discloses a flat black front face. However, the design also

4

discloses a wide, almost square, front face. Moreover, it is not clear from the reproduced image

5

that the reference discloses a transparent black front face. See Arnold Decl. ¶ 12. In contrast, the6

D’677 Patent claims a narrower front face with a transparent black front face. Based on the7designs, a reasonable jury could find that the iRiver U10 does not have “basically the same visual8

impression” as the D’677 Patent.

9

Secondly, Samsung argues that several secondary references may be combined with the10asserted primary references to create a hypothetical piece of prior art such that an ordinary observer

11

would find the patented design substantially the same as the hypothetical prior art reference.

12

International Seaway Trading Corp., 589 F.3d at 1240-41. As an initial matter, Judge Grewal has

13

precluded these references from trial. Additionally, even if these references were admissible,

14

Samsung has not established as a matter of law that the secondary references upon which it relies

15

are “so related that the appearance of certain ornamental features in one . . . would have suggested

16

application of those features to another.” See In re Harvey, 12 F.3d 1061, 1063 (Fed. Cir. 1993)

17(quotation marks and citation omitted). Indeed, Apple’s design expert contends that the references18

are so distinct in visual impression that a skilled designer would not combine the references in the19

way proposed by Samsung. Bressler Decl. ¶¶ 34-57. Thus, summary judgment as to whether the20

D’677 Patent would have been obvious to a designer of ordinary skill in the art is not appropriate.

21

See In re Borden, 90 F.3d at 1576 (“The question of what the prior art teaches is a question of

22

fact.”).

23

Finally, as discussed above, factual disputes regarding secondary considerations likewise

24

preclude a conclusion that the D’677 Patent was obvious as a matter of law. See Crocs, 598 F.3d at

251310-11; Monarch Knitting Machinery Corp., 139 F.3d 877, 886 (Fed. Cir. 1998).

26

C.

The D’889 Patent

27
28
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1

Samsung also moves for summary judgment on the D’889 Patent arguing that the patent

2

would have been obvious to one of ordinary skill in the art. However, as discussed above, there are3several factual issues that preclude summary judgment on the validity of the D’889 Patent.

4
5

D’889 Patent

D’037 Patent

6
7
8
9

United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
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1

The Brain Box

2
3
4
5
6
7
8
9

United States District Court
For the Northern District of California

10
11
12
13
14

First, whether Samsung has properly identified a primary reference will be a question for

15

the finder of fact. Samsung has identified two prior art references that it believes could serve as a16

“primary reference” including the D’037 Patent, and the Apple Brain Box. See MSJ at 14 (citing

17

Exs. 22, 25). These two primary art references were not part of the record in Apple’s motion for

18

preliminary injunction.7
As an initial matter, the Court notes that Judge Grewal recently ordered these references be

19
20

excluded from trial because Samsung failed to timely disclose the prior art or invalidity theory.

21

See Order Granting in part and Denying in part at 4-5, ECF No. 1144. On this basis alone,22

summary judgment in favor of Samsung is not proper because the evidence in support of23

Samsung’s obviousness argument will not be admissible at trial. See Fed. R. Civ. P. 56(e); In re

24

Oracle Corp. Securities Litig., 627 F.3d at 385 (9th Cir. 2010).

25
26
27
28

7

Apple objects to Samsung’s prior art references because Apple argues they were not timely
disclosed in discovery. Apple’s motion to strike is before Magistrate Judge Grewal. Resolution of
the motion for summary judgment does not depend on resolution of Apple’s motion. Even if
Samsung may rely on these prior art references, factual disputes prohibit granting summary
judgment in Samsung’s favor.
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1

Even if the D’037 and the Brain Box were admissible, Apple has raised a triable issue of2fact as to whether “the design characteristics of [the D’037] are basically the same as the claimed

3

design.” Durling,101 F.3d at 103. As explained by the Federal Circuit, the overall visual4

impression of the D’889 Patent is as follows: “[t]he transparent glass-like front surface of the5

D’889 Patent . . . covers essentially the entire front face of the patented design without any breaks

6or interruptions. As a result, the D’889 design creates the visual impression of an unbroken slab of

7

glass extending from edge to edge on the front side of the tablet.” Apple, 678 F.3d at 1331. In

8contrast, as admitted by Samsung, the D’037 Patent does not disclose oblique line shading (which9

is required to claim a translucent or transparent surface) or a border underneath the display.

10

Instead, the D’037 Patent discloses “certain detail on the back.” Reply at 7. Moreover, the D’037

11

discloses a thicker form with steeper, more angled sides. Thus, a jury could find that the overall

12

visual impression of “an unbroken slab of glass extending from edge to edge on the front side of13

the tablet” is not met by the D’037.

14

Similarly, Samsung points to the “Brain Box,” an Apple design of a display made public as15

early as 1997. MSJ at 14 (citing Ex. 25). The one photograph of the Brain Box submitted by

16

Samsung does not disclose all views of the reference, and so it will be difficult for the jury to17evaluate whether the reference creates “basically the same visual impression” as the D’889 Patent.

18

See Durling, 101 F.3d at 103 (internal quotations omitted). For example, it is difficult to discern

19

whether the Brain Box has a flat front piece, and whether the back view of the reference is flat,

20

rounded, or otherwise has the same overall visual impression as the D’889. See Bartlett Decl. Ex.

21

20 at 40-41; cf. Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1378 (Fed. Cir. 2002);

22

Int’l Seaway Trading, 589 F.3d at 1241 (the obviousness inquiry on invalidity focuses on the23

overall design). Accordingly, a reasonable jury could not conclude that the Brain Box is a primary24

reference because it could not determine whether the reference discloses the same overall visual25

impression.

26

Moreover, even if the jury were to find that the D’037 is properly a primary reference, the27jury would need to determine whether the Brain Box is a proper “secondary reference” that is, if

28

the Brain Box is so related to the D’037 “that the appearance of certain ornamental features in one
36
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United States District Court
For the Northern District of California

Case5:11-cv-01846-LHK Document1158 Filed06/30/12 Page37 of 42

1would suggest the application of those features to the other.” Durling, 101 F.3d at 103 (internal

2

quotation marks omitted) (citing In re Harvey, 12 F.3d at 1063. Finally, even if the Brain Box was

3

used to modify the D’037 Patent, it is not clear that the combination of references would render the4

D’889 obvious. Apple’s expert has identified differences between the hypothetical combination of

5

references and the D’889 Patent including even borders that appear beneath the transparent front

6

surface of the D’889 Patent, and the D’889 Patent’s rounded edge profile. Bressler ¶ 112. The

7jury must apply the ordinary observer test to determine if one would find the patented design8

substantially the same as the hypothetical prior art reference. International Seaway Trading Corp.,

9589 F.3d at 1240-41. Here, there exists an issue of material fact regarding whether the ordinary

10

observer would find the patented design substantially the same as the hypothetical prior art. Cf.

11

Sun-Mate Corp. v. Koolatron Corp., No. 10-4735, 2011 WL 3322597, at * 9 (C.D. Cal. Aug. 1,

122011).

13

Finally, Apple has also pointed to evidence in the record of secondary considerations that14

are probative evidence of non-obviousness of a design patent. See Crocs, 598 F.3d at 1310-11.

15

Apple has provided evidence of industry praise for the design of the iPad and iPad2, as well as

16

evidence of copying of the iPad design. Bressler Decl. ¶¶ 116-117, 122-123. Therefore, Apple has

17

raised a genuine issue of material fact which precludes resolution on summary judgment of the18question of the existence of these secondary considerations. See Monarch Knitting Machinery

19

Corp., 139 F.3d at 886. Accordingly, Samsung’s motion for summary judgment on invalidity of20

the D’889 Patent is DENIED.

21

D.

The D’305 Patent8

22

Samsung also argues that the D’305 is anticipated and obvious in light of images of the23

iPhone that were shown to the public on January 9, 2007. MSJ at 15-16. The D’305 Patent was

24

filed on June 23, 2007. Apple conceived of the D’305 no earlier than April 26, 2007. Ex 23 at 9.

25

Whether a reference may be considered prior art under section 102 is a question of law, based upon26

underlying factual determinations. Shatterproof Glass Corp., 758 F.2d at 622; Allied Colloids Inc.,

27

64 F.3d at 1574.

28

8Apple has withdrawn its claim that Samsung’s accused devices infringe the D’334 Patent.
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Case5:11-cv-01846-LHK Document1158 Filed06/30/12 Page38 of 42

1

As an initial matter, the Court notes that Judge Grewal recently ordered the January 2007

2

iPhone image publication (“January 2007 image”) excluded from trial because Samsung failed to3timely disclose the prior art. See Order Granting in part and Denying in part at 4, ECF No. 1144.

4

On this basis alone, summary judgment in favor of Samsung is not proper because the evidence in

5

support of Samsung’s obviousness argument will not be admissible at trial. See Fed. R. Civ. P.

656(e); In re Oracle Corp. Securities Litig., 627 F.3d at 385.

7

In the alternative, Apple argues that the January 2007 image cannot serve as a prior art

8reference for the D’305 Patent because the January 2007 image publication has the same inventors

9

as the ’305 Patent. Therefore, Apple argues, the January 2007 image publication can only qualify

10

as anticipatory prior art under 35 U.S.C. §102(b), and not under §102(a). The Court agrees.

11

Section 102(a) bars patenting an invention when “the invention was known or used by others in

12this country, or patented or described in a printed publication in this or a foreign country, before

13

the invention thereof by the applicant for a patent.” (emphasis added). Section 102(b), on the other14

hand, bars patenting an invention that “was patented or described in a printed publication in this or15

a foreign country or in public use or on sale in this country, more than one year prior to the date of16

the application for patent in the United States.” Id. (emphasis added). Thus, the relevant date for17

priority under 102(a) is the date of invention, while the relevant date for priority under 102(b) is18

one year before the application date.

19

On its face, section 102(a) might include printed publications as prior art, even if a prior20

publication is the inventor’s own work. However, including an inventor’s own publications as

21

102(a) prior art would negate the one-year grace period explicitly provided to inventors under22

102(b). In re Katz, 687 F.2d 450, 454 (C.C.P.A. 1982). Therefore, the requirement that prior art

23

be created “by others” applies to “all types of references eligible as prior art under 35 U.S.C.

24

102(a) including publications as well as public knowledge and use.” MPEP § 2132 (citing In re25

Katz, 687 F.2d at 454) (emphasis added). Samsung argues that publication “by others” is only

26

required when the publication occurs after the inventor’s date of conception, but cites no27

supporting statutory authority or case law.

28
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1

In this case, the relevant priority date for the D’305 inventors’ own work is one year prior2

to the date of application of the D’305 Patent: June 23, 2006. The January 2007 image publication3

was not before the priority date, and therefore is not a prior art reference for the D’305. Therefore,

4

Samsung’s motion for summary judgment of invalidity as to the D’305 Patent is DENIED.

5

ANTITRUST CLAIM

6

Samsung argues that it is entitled to summary judgment on Apple’s counterclaims for

7

violations of the Sherman Act § 2. Samsung argues that Apple has failed to offer any evidence of8damages. MSJ at 23.

9

United States District Court
For the Northern District of California

VI.

Although the factual allegations underlying this claim are more fully set forth in the Court’s

10

October 18 and May 14 Orders, a brief summary is provided below. In the course of this lawsuit

11

Samsung counterclaimed that Apple has infringed Samsung patents, which are essential to the12

Universal Mobile Telecommunications Standard (“UMTS”). In response, Apple counterclaimed

13(in reply) that Samsung has engaged in anticompetitive behavior with respect to the UMTS-

14

essential patents. Specifically, when Samsung participated in setting the UMTS standard, it

15committed itself to abide by the intellectual property rights (“IPR”) policy of the European

16

Telecommunication Standards Institute (“ETSI”), a standard-setting organization (“SSO”) which

17

coordinated UMTS development. The ETSI IPR policy allegedly obligated Samsung to disclose18

any UMTS-essential patents during UMTS development and to license the UMTS-essential patents

19

on fair, reasonable and non-discriminatory (“FRAND”) terms. Samsung’s IPR violations allegedly

20

caused inclusion of Samsung’s patented technology in UMTS with anticompetitive effects.

21

Samsung moves for summary judgment on the antitrust claim arguing that Apple has not

22

provided sufficient evidence of § 2 damages. MSJ at 23. Apple does not dispute that it has

23

presented only one potential basis for awarding antitrust damages: that Apple has incurred legal

24

expenses fighting Samsung’s infringement allegations in this suit. In its briefing, Samsung

25

presented two arguments in support of its motion: (1) that legal expenses alone cannot support an26

award of antitrust damages as a matter of law; and (2) that as a matter of proof at summary

27

judgment, Apple has failed to introduce any evidence as to the actual amount of damages. MSJ at

28

23-25, n.35. At the hearing, Samsung essentially conceded that litigation fees and costs may form
39
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1

the basis for antitrust damages in this context and clarified that the main basis of its challenge to

2

Apple’s antitrust claims is that Apple has failed to meet its burden on summary judgment of3

pointing to evidence in the record to support its claim for damages.

United States District Court
For the Northern District of California

4

As an initial matter, to the extent this issue remains contested by the parties, litigation

5

expenses may establish damages for an antitrust claim. Litigation costs have been recognized as

6

appropriate antitrust damages in the context of anticompetitive sham litigation. See Handgards v.

7

Ethicon, 601 F.2d 986, 997 (9th Cir. 1979) (noting that “[i]n a suit alleging antitrust injury based

8

upon a bad faith prosecution theory it is obvious that the costs incurred in defense of the prior

9patent infringement suit are an injury which ‘flows’ from the antitrust wrong”). Similarly, where10

the alleged anticompetitive conduct arises out of abusive patent litigation, it is possible that

11

litigation costs may suffice to establish antitrust damages. For example, in Hynix Semiconductor

12Inc. v. Rambus Inc., the district court held that where patent litigation is “causally connected to

13

anticompetitive harms” stemming from an anticompetitive “scheme,” the patent litigation is not

14

immune from antitrust. 527 F. Supp. 2d 1084, 1097 (N.D. Cal. 2007). Hynix explained that15

“where the patent litigation is used to further the harm caused under a ‘more traditional antitrust

16

theory,’ a plaintiff should be allowed a full recovery, . . .[even where] proposed damages

17

calculations are too speculative to award [damages other than litigation costs].” Id. In Hynix, the18“more traditional antitrust theory” was anticompetitive conduct in violation of Sherman Act § 2,

19

specifically, that Rambus failed to disclose Rambus patents to an SSO setting the SDRAM

20

computer memory standard, enabling Rambus to “hold up” the computer memory industry after the21

industry became “locked in” to Rambus’s patented technology. Id. at 1098. Patent hold up has

22

anticompetitive effects, but is ineffective absent the threat of litigation. Id. In Hynix, the cost of

23

litigation was causally connected to the anticompetitive harms and flowed from the alleged24

violations of the statute. Thus, because Apple has alleged patent holdup stemming from25

Samsung’s failure to disclose essential patents to ETSI and Samsung’s failure to license on

26

FRAND terms, and because Apple’s litigation costs stem directly from Samsung’s alleged27

anticompetitive behavior, these litigation costs are a sufficient basis for a potential award of28

antitrust damages.
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12

damages that it may be owed. MSJ at 24 (citing testimony of Apple’s expert witness on antitrust).

3

Apple argues that expert witness testimony is not required for a showing of damages; instead, fact

4

witness testimony can suffice. Opp’n at 23-24. While not comprehensive, Apple has provided

5

some evidence of specific litigation expenses that it has incurred in defending itself as a result of

6

Samsung’s allegedly anticompetitive conduct. Apple points to fees paid to certain experts in the7course of litigation. Opp’n at 23 (citing Selwyn Decl., Ex. A (deposition testimony of expert as to8

the amount of his fees); Selwyn Decl., Ex. B (same)). At this point, the evidence provided is9

sufficient for Apple to meet its burden to avoid summary judgment.

10
United States District Court
For the Northern District of California

Samsung argues that Apple has pointed to no evidence in the record as to the amount ofMoreover, where the amount of damages is uncertain, nominal damages may still be

11awarded. See In re Static Random Access Memory (SRAM) Antitrust Litig., No. 07-01819 CW,

122010 WL 5141861, at *4 (N.D. Cal. Dec. 13, 2010) (“if plaintiff has insufficient proof of amount13

of damages, the proof of violation and fact of damage is a sufficient basis for an award of nominal

14

damages”); see also Knutson v. Daily Review, Inc., 468 F. Supp. 226, 228 (N.D. Cal. 1979)15(awarding nominal damages for Sherman Action violation) aff’d, 664 F.2d 1120 (9th Cir. 1981).

16

Samsung argues that sufficient evidence as to the amount of damages was provided in In re SRAM

17

Antitrust Litig. (Reply at 15 n. 16); however, the SRAM court cited availability of nominal damages18

as an independent basis for denying summary judgment. In re SRAM Antitrust Litig., 2010 WL

195141861, at *4. Other circuits commonly award nominal damages in antitrust cases. See, e.g.,20

Sciambra v. Graham News, 892 F.2d 411, 415 (5th Cir. 1990) (“[e]ven if there is insufficient proof

21of the amount of damages, however, proof of an antitrust violation and the fact of damage is a22

sufficient basis for an award of nominal damages”); Rosebrough Monument Co. v. Mem’l Park

23

Cemetery Ass’n, 666 F.2d 1130, 1147 (8th Cir. 1981) (“[because] appellant’s evidence was24

insufficient only as to the measurement of damages . . . an award of nominal damages is justified”).

25

Thus, even if Apple did not point to evidence of amount of damages, such a failure would not be

26

fatal to Apple’s antitrust counterclaim.

27

In sum, Apple’s litigation expenses provide sufficient basis for an award of antitrust

28

damages. In any event, nominal damages may be awarded where the fact of damages is proven but
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1

the amount of damages is uncertain. Therefore, Samsung’s motion for summary judgment is

2

DENIED.

3

VII.

CONCLUSION

4

For the reasons stated above, Samsung’s motion is DENIED. Specifically, the Court denies

5

Samsung’s motion for summary judgment on the following claims: (1) trade dress; (2) utility patent

6

infringement; (3) design patent infringement; and (4) antitrust.

7

IT IS SO ORDERED.

8

Dated: June 29, 2012_________________________________
LUCY H. KOH
United States District Judge

9

United States District Court
For the Northern District of California

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42
Case No.: 11-CV-01846-LHK
ORDER REGARDING SAMSUNG’S MOTION FOR SUMMARY JUDGMENTJUDGMENT OF THE GENERAL COURT (Fourth Chamber) 1
14 June 2011(*)(Community design – Invalidity proceedings – Registered Community
design representing a watch attached to a lanyard – Prior design –Disclosure of prior design – Individual character – Misuse of powers –Articles 4, 6, 7 and 61 to 63 of Regulation (EC) No 6/2002)

In Case T-68/10,
Sphere Time, established in Windhof (Luxembourg), represented by C.
Jäger, N. Gehlsen and M.-C. Simon, lawyers, applicant,v
Office for Harmonisation in the Internal Market (Trade Marks andDesigns) (OHIM), represented by D. Botis, acting as Agent, defendant,
the other party to the proceedings before the Board of Appeal of OHIM
being
Punch SAS, established in Nice (France),
ACTION brought against the decision of the Third Board of Appeal of
OHIM of 2 December 2009 (case R 1130/2008-3), concerning invalidity
proceedings between Punch SAS and Sphere Time,THE GENERAL COURT (Fourth Chamber),composed of I. Pelikánová (Rapporteur), President, K. Jürimäe and M.
van der Woude, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Court Registry on 15
February 2010,1

http://curia.europa.eu/juris/document/document.jsf;jsessionid=9ea7d0f130d65c64fbfda63a
4432819ded2a3481c49e.e34KaxiLc3eQc40LaxqMbN4OaxyMe0?text=&docid=85084&pageI
ndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=93785
1

having regard to the response lodged at the Court Registry on 1 June2010,
having regard to the written question from the Court to the applicant,further to the hearing on 18 January 2011,
gives the following
Judgment
Background to the dispute
1

The applicant, Sphere Time, is the holder of the Registered
Community Design No 325949-0002, filed on 14 April 2005 (‘thecontested design’). The contested design, intended to be used forwatches, is represented as follows:2

On 26 March 2007, the other party before the Board of Appeal of the
Office for Harmonisation in the Internal Market (Trade Marks andDesigns) (OHIM), Punch SAS, filed an application for a declaration ofinvalidity in respect of the contested design with OHIM, based upon2

Article 25(1)(b) of Council Regulation (EC) No 6/2002 of 12 December
2001 on Community Designs (OJ 2002 L 3, p. 1). In the application for adeclaration of invalidity, the other party before the Board of Appeal
maintained that the contested design was not new and that it lacked
individual character within the meaning of Article 4 ofRegulation No 6/2002, read in conjunction with Articles 5 and 6 of that
regulation.
3

In support of its application for a declaration of invalidity, the otherparty before the Board of Appeal submitted several designs that
allegedly had priority over the contested design.

4Firstly, the other party before the Board of Appeal submitted acatalogue showing two watch designs made by Fuzhou Eagle Electronic
Co. Ltd (‘the C and F designs’), as well as a certificate from thatcompany stating that the C and F designs had been marketed in Europe
in 2001.

5

Secondly, the other party before the Board of Appeal submitted acatalogue showing two watch designs made by Great Sun Technology
Corp., as well as a certificate from that company stating that those
designs had been marketed in Europe since 2004. Those items wereaccompanied by a shipping invoice and a certificate of origin relating to
the delivery of 2 000 samples of one of the said two designs, covered by
the trademark SYMBICORT, in April 2004 to a client situated in the
Netherlands (the latter design being hereinafter referred to as ‘theSYMBICORT design’). The SYMBICORT design was represented asfollows:

6

By decision of 31 March 2008, the Invalidity Division declared thatthe contested design was invalid. It considered it to lack individual3character since it produced the same overall impression as the C and F
designs. The applicant filed a notice of appeal against that decision on
13 May 2008.
7

By decision of 2 December 2009 (‘the contested decision’), the Third
Board of Appeal of OHIM dismissed the appeal. As a preliminary point,
the Board of Appeal held that the shipping invoice and certificate oforigin relating to the delivery of the SYMBICORT design were
sufficient legal proof that that design had been disclosed before the dateon which the application for registration of the contested design was
filed. Taking into account the comparison between the contested design
and the SYMBICORT design, as they would be perceived by an ordinary
consumer familiar with watches attached to a lanyard, the Board of
Appeal held, firstly, that they were very similar, secondly, that thedifferences were insignificant and, finally, that, while the designer had
freedom in the creation of the design, in particular in relation to thewatch face, little use had been made of that freedom. In summary, theBoard of Appeal found that, in so far as the contested design produced
the same overall impression on the informed user as the SYMBICORT
design, it lacked individual character.
Forms of order sought

8

The applicant claims that the Court should:––

9annul the contested decision;order (i) OHIM to pay the costs of the proceedings before the
Court and (ii) the other party before the Board of Appeal to pay thecosts of the proceedings before the Board of Appeal of OHIM.
OHIM contends that the Court should:–

dismiss the action;–order the applicant to pay the costs.

Law

4

10

The applicant puts forward three pleas in law. The first plea alleges,
according to the wording of the application, an infringement of Articles
4 and 5 of Regulation No 6/2002 concerning the novelty of the contested
design. The second plea alleges an infringement of Articles 4 and 6 ofRegulation No 6/2002 concerning the assessment of the individual
character of the contested design. The third plea alleges a misuse of
powers. The applicant also submits that, in light of the content of thecontested decision, the assessment of the C and F designs does not form
part of the subject-matter of the action before the Court. In that regard,in the contested decision, the Board of Appeal wrongly departed fromthe decision of the Invalidity Division, since it merely compared thecontested design with the SYMBICORT design and did not give reasonsfor that choice.

11

OHIM contests the merits of the three pleas. It submits, further, thatthe subject-matter of the dispute before the Court includes thesimilarity of the contested design with both the C and F designs and the
SYMBICORT design, the Board of Appeal merely having added afurther reason to the decision of the Invalidity Division.

12

As a preliminary point, it should be noted that the Board of Appeal
was entitled to base its decision on the comparison between thecontested design and the SYMBICORT design.

13

Indeed, it follows from Article 60(1) of Regulation No 6/2002 that,through the effect of the appeal before it, the Board of Appeal is called
upon to carry out a new, full examination of the merits of theapplication for invalidity, in terms of both law and fact (Case C-29/05 P
OHIM v Kaul [2007] ECR I-2213, paragraph 57). That means that theBoard of Appeal may base its decision on any of the prior designs raisedby the applicant for invalidity, without being bound by the decision of
the Invalidity Division and without having to provide specific reasonsin that regard.

14

In this case, it is not disputed that the SYMBICORT design was
raised by the other party before the Board of Appeal during theproceedings before the Invalidity Division.

15

Accordingly, it is not necessary to determine, at this stage, whether
the assessment of the C and F designs forms part of the subject-matter5

of the action before the Court. Consideration should, however, first of
all be given to the possible merits of the action in so far as it relates tothe assessment of the SYMBICORT design carried out in the contested
decision. It is only if the Court finds that that assessment is vitiated byillegality that the assessment of the C and F designs may, if need be,prove relevant for the determination of the dispute before it.

The first plea, alleging an infringement of Articles 4 and 5 ofRegulation No 6/2002
Arguments of the parties
16

The applicant submits that, in relation to the date of disclosure of the
SYMBICORT design, the provision made by Article 7(2)(b) ofRegulation No 6/2002 should be taken into account. Consequently, inthis case, the date that should be taken into account is not the date on
which the application for the contested design was filed, that is 14 April
2005, but 14 April 2004.

17

The shipping invoice concerns a delivery of merchandise of the
SYMBICORT design which took place on an unspecified date in April
2004. As that document was drawn up on 3 April 2004 in Hong Kong
(China), it is very likely, in view of the distance between Hong Kong and
the Netherlands, that the entry into the European market of the
SYMBICORT design samples and, therefore, the disclosure of thatdesign to the public, was later than 14 April 2004.

18

The applicant adds that the shipping invoice was furnished to theother party before the Board of Appeal by the manufacturer of the
SYMBICORT design watches, which has an interest in proving thepriority of that design. Similarly, it is not certain that the original ofthat invoice was submitted to OHIM. The applicant therefore submits
that that document cannot be taken into account.

19

In those circumstances, the applicant submits that the priordisclosure of the SYMBICORT design has not been proven. It thus
concludes that the contested design must be considered to be new.

20

OHIM contests the merits of the applicant’s submissions.
Findings of the Court
6

21

According to the wording of the application, the first plea alleges aninfringement of Articles 4 and 5 of Regulation No 6/2002, concerning
the novelty of a Community design. As noted by OHIM, the contested
decision is not based on the lack of novelty of the contested design.

22

In point of fact, the first plea concerns the question of prior disclosureof the SYMBICORT design. Thus, it concerns, in actual fact, an alleged
infringement of Article 6(1) of Regulation No 6/2002, read in
conjunction with Article 7 of that regulation.

23

Those provisions provide as follows:‘Article 6
Individual character1.
A design shall be considered to have individual character if theoverall impression it produces on the informed user differs from theoverall impression produced on such a user by any design which has
been made available to the public:…
(b)in the case of a registered Community design, before the date offiling the application for registration or, if a priority is claimed, thedate of priority.

…
Article 7
Disclosure1.
For the purpose of applying Articles 5 and 6, a design shall bedeemed to have been made available to the public if it has been
published following registration or otherwise, or exhibited, used in
trade or otherwise disclosed, before the date referred to in [Article] …
6(1)(b) … except where these events could not reasonably have become
known in the normal course of business to the circles specialised in the
sector concerned, operating within the Community …
2.
A disclosure shall not be taken into consideration for the purposeof applying Articles 5 and 6 and if a design for which protection is7

claimed under a registered Community design has been made available
to the public:(a)by the designer, his successor in title, or a third person as aresult of information provided or action taken by the designer or
his successor in title; and(b)during the 12-month period preceding the date of filing of theapplication or, if a priority is claimed, the date of priority.

…’
24

In relation, firstly, to the applicability of Article 7(2) of Regulation No
6/2002 to this case, it should be noted that the objective of thatprovision is to offer a creator or his successor in title the opportunity tomarket a design, for a period of 12 months, before having to proceedwith the formalities of filing.

25

Thus, during that period, the creator or his successor in title may
ascertain that the design concerned is a commercial success before
incurring the costs relating to registration, without fear that thedisclosure that takes place at that time may be successfully raised
during any invalidity proceedings brought after the possible
registration of the design concerned.

26

It is apparent from the foregoing that, for Article 7(2) of Regulation
No 6/2002 to be applicable in the context of invalidity proceedings, theowner of the design that is the subject of the application for invalidity
must establish that it is either the creator of the design upon which thatapplication is based or the successor in title to that creator.

27

Thus, in this case, the applicant must establish that it is the creatorof the SYMBICORT design or his successor in title.

28

The applicant does not even claim that such is the case.

29

Consequently, Article 7(2) of Regulation No 6/2002 is not applicable tothe disclosure of that design.

30

Thus, secondly, taking account of the fact that the applicant did not
claim priority for the contested design, it must be examined whether
the information provided to OHIM shows that the SYMBICORT design
8had been disclosed to the public before 14 April 2005, which was thedate of the filing of the application for the contested design.
31

In that regard, the other party before the Board of Appeal provided ashipping invoice relating to the delivery of 2 000 watches of the
SYMBICORT design to a client in the Netherlands. According to thatinvoice, the items at issue were shipped from Hong Kong on 3 April
2004.

32

Thus, taking account of the normal length of time for transport, theshipping invoice indicates that the watches at issue were delivered to
the Netherlands and, therefore, that the SYMBICORT design wasdisclosed to circles specialised in the sector concerned, operating in theCommunity, before 14 April 2005, which is the date of filing of thecontested design. Moreover, the applicant did not put forward any
element capable of establishing that that disclosure had not taken placeor that it had done so after that date of filing.

33

Thirdly, as to the probative value of the shipping invoice, Great Sun
Technology, which manufactures the watches of the SYMBICORT
design and which provided the document in question to the other party
before the Board of Appeal, admittedly has an interest in the contested
design being declared invalid. Indeed, that result will allow it to pursue
the marketing of its goods within the European Union.

34

While that fact may cast a doubt on the credibility of the statement of
the manager of Great Sun Technology, also provided to OHIM, the sameconclusion cannot be applicable to the shipping invoice.

35

Indeed, that latter document was not created specifically to serve as
evidence in the context of the invalidity proceedings, but was created in
the context of current commercial operations, in order to certify that aservice had been provided and to request the debtor to pay the agreed
price.

36

Further, the shipping invoice is not addressed to the other party
before the Board of Appeal, but to a third party company, and it wasissued in April 2004, almost three years before the application forinvalidity was brought on 26 March 2007.

9

37

In those circumstances, it cannot be held that the probative nature of
the shipping invoice is affected by the fact that it was provided to theother party before the Board of Appeal by the manufacturer of watchesof the SYMBICORT design.

38

As to the fact that a copy of the shipping invoice was provided, rather
than the original thereof, that fact does not amount, in itself, to abarrier to that document being taken into consideration.

39

The provision of the original of that document could, depending on thecircumstances, be relevant if the copy were illegible or if it there wereindications that the document had been tampered with in order tomodify its content. The applicant does not raise submissions to that
effect and the examination of the shipping invoice, as provided to OHIM,
does not give rise to questions in that regard.

40

Consequently, the fact that a copy of the shipping invoice wasprovided, rather than the original, does not affect the probative natureof the document produced either.

41

In light of all the foregoing, it must be concluded that the Board of
Appeal did not err in holding that it had been established that the
SYMBICORT design had been disclosed to the public before the date offiling of the application for the contested design. Therefore, the firstplea must be rejected.

The second plea, alleging an infringement of Articles 4 and 6 ofRegulation No 6/2002
Arguments of the parties
42

The applicant submits that, in finding that the contested design
produced the same overall impression as the SYMBICORT design, theBoard of Appeal made an error of assessment.

43Firstly, the applicant submits that, given that the SYMBICORT
design was intended to be used for marketing purposes, the informed
user is a professional wishing to acquire promotional items. It submits
that, given that there are a large number of lanyards on the market, theinformed user would look closely at the specific character of a given
lanyard.
10

44

The applicant goes on to take issue with the Board of Appeal, firstly,
for not taking account of all the relevant elements of the two designs in
issue, namely the lanyard, the watch case, the watch itself and theattachment clip. Indeed, the Board of Appeal merely compared thewatch screen, the position of the watch and the colour of the two designs.
In so doing, it ignored the fact that the freedom of the designer of ananalogue watch is limited. Conversely, the designer has great freedom
in relation to the lanyard and the attachment clip.

45

Secondly, in the representation provided to OHIM, the SYMBICORT
design was not depicted in its entirety in that it shows only two strips
going in two different directions, but no loop joining them together.
Given that the comparison of the designs must be carried out in thelight of the way in which they are represented, the Board of Appeal
should not have assumed that the SYMBICOURT design had a lanyard
allowing a watch to be worn around the neck.

46

Thirdly, the applicant objects to the statement of the Board of Appeal
that the attachment clip of the contested design was represented bydotted lines. The attachment clip in question was represented by solidlines and should therefore have been taken into consideration,
particularly because it constitutes an important component of thecontested design. Indeed, the attachment clip would attract theattention of the informed user in so far as, on the one hand, the freedomof the designer is not limited in that regard and, on the other hand, its
shape determines which objects can be attached to the lanyard.

47

The applicant argues that, in this case, firstly, the attachment clip of
the SYMBICORT design is not visible on the representation provided to
OHIM, so that it cannot be ascertained whether it has an attachment
clip and, if it does, what the characteristics of it are. Secondly, theattachment clip of the contested design is clearly different from the end
part of the SYMBICORT design.

48

OHIM contests the merits of the applicant’s submissions.
Findings of the Court

49

According to Articles 4 and 6 of Regulation No 6/2002:‘Article 4
11Requirements for protection
1.
A design shall be protected by a Community design to the extent
that it is new and has individual character.
…
Article 6
Individual character1.
A design shall be considered to have individual character if theoverall impression it produces on the informed user differs from theoverall impression produced on such a user by any design which has
been made available to the public:…
(b)in the case of a registered Community design, before the date offiling the application for registration or, if a priority is claimed, thedate of priority.

2.
In assessing individual character, the degree of freedom of thedesigner in developing the design shall be taken into consideration.’
50

Therefore, it must be examined whether, from the point of view of theinformed user and taking account of the degree of freedom of thedesigner of a watch attached to a lanyard, the overall impression
produced by the contested design differs from that produced by the
SYMBICORT design.
–

51

The informed user

With regard to the interpretation of the concept of informed user, thestatus of ‘user’ implies that the person concerned uses the product inwhich the design is incorporated, in accordance with the purpose forwhich that product is intended. The qualifier ‘informed’ suggests inaddition that, without being a designer or a technical expert, the user isfamiliar with the various designs which exist in the sector concerned,
possesses a certain degree of knowledge with regard to the features
which those designs normally include, and, as a result of his interest in
the products concerned, shows a relatively high degree of attention
12when he uses them (Case T-153/08 Shenzhen Taiden v OHIM – Bosch
Security Systems (Communications equipment) [2010] ECR II-0000,
paragraphs 46 and 47).
52

In this case, at paragraph 21 of the contested decision, the Board of
Appeal held that the informed user is an ordinary consumer who isfamiliar with watches attached to a lanyard and suspended from the
neck.

53

It is not disputed that the SYMBICORT design, like the contested
design, is a promotional item. In relation to such items, the concept of
informed user, as defined at paragraph 51 above, includes, firstly, a
professional who acquires them in order to distribute them to the final
users and, secondly, those final users themselves.

54

Consequently, in this case, the informed user should be held to beboth the average consumer, referred to in the contested decision, andthe professional buyer, mentioned by the applicant.

55

That said, the applicant does not put forward any submissions
suggesting that the perception of the designs at issue by the two groups
of users is different.

56

Moreover, in any event, the fact that one of the two groups of informed
users mentioned above perceives the designs at issue as producing thesame overall impression is sufficient for a finding that the contested
design lacks individual character.

57

Accordingly, the fact that the contested decision does not mention theprofessionals among the informed users of watches attached to alanyard does not affect the legality of that decision.
–

58

The degree of freedom of the designer

Before examining the degree of freedom of the designer, which,according to the applicant, is limited in relation to the watch andextensive in relation to the lanyard and the attachment clip, it isnecessary to determine which elements are actually protected by thecontested design and are, as a consequence, relevant in the context ofthe comparison of that design with the SYMBICORT design.
13

59

In this regard, paragraph 11.4 of the examination guidelines forCommunity designs, adopted by decision EX-03-9 of the President of
OHIM, of 9 December 2003, headed ‘Format of the Representation of the
Design’, provides:‘…
The representation of a design should be limited to the features forwhich protection is sought. However, the representations may comprise
other elements that help identify the features of a design for which
protection is sought. In an application for registration of a Community
design the following identifiers will be allowed:
1.
Dotted lines may be used in a view either to indicate the elements
for which no protection is sought or to indicate portions of the design
which are not visible in that particular view, i.e. non-visible lines.
Therefore, dotted lines identify elements which are not part of the viewin which they are used.
…’

60

The applicant does not dispute that rule. However, relying on the
representation of the contested design in the contested decision, in theCommunity Designs Bulletin and in the Community designs databaseavailable on the OHIM website, it maintains that, contrary to what washeld by the Board of Appeal at paragraph 20 of the contested decision,
the attachment clip of the contested design is not represented by dottedlines.

61

In that regard, firstly, it should be observed that the representation of
the contested design in the contested decision is irrelevant in relation to
the scope of the protection of that design.

62

Secondly, it can be seen from the summary depiction of the contested
design, reproduced in the Community Designs Bulletin and in theCommunity designs database, that certain elements of that design, andin particular its attachment clip, are represented by less pronounced
lines than those showing the other elements, such as the lanyard andthe watch case. However, due to the reduced size of the summary
depiction, it is not possible to be certain that the elements at issue arerepresented by dotted lines.
14

63

Thirdly, the possible uncertainty on that point is dissipated by the fullview of the contested design, available from the summary depiction in
the electronic version of the Community Designs Bulletin and theCommunity designs database, and identical moreover to therepresentation of the contested design appearing in the application forregistration presented by the applicant to OHIM. Indeed, that depiction
clearly shows that the attachment clip of the contested design isrepresented by dotted lines, as are the hands of the watch and therectangular element affixed to the watch face.

64

Accordingly, it must be held that the attachment clip of the contested
design, the hands of the watch and the rectangular element affixed to
the watch face do not form part of the elements that are protected by
the contested design. That finding means that the degree of freedom of
the designer with regard to those elements is irrelevant in this case.

65

As regards the other elements put forward by the applicant, firstly,
the applicant exaggerates the degree of freedom of the designer in
relation to the lanyard.

66

While there is some room for variation as regards the length andwidth of that element, those characteristics must not, however, affectthe possibility of wearing the lanyard comfortably around the neck. The
same conclusion is applicable in relation to the positioning of the watch
on the lanyard.

67

Consequently, the findings of the Board of Appeal to that effect, atparagraph 21 of the contested decision, are not vitiated by error.

68

Secondly, in relation to the degree of freedom of the designer in
relation to the watch, an analogue watch must, admittedly, containcertain elements in order to fulfil its purpose, such as a face, hands
placed approximately in the centre of the face and a knob for setting the
time.

69

However, those constraints relate to the presence of certain elements
in a watch, but do not influence, to a significant degree, its shape andgeneral appearance. Thus, in particular, the face and the watch case
may take various shapes and may be structured in various ways, as wasstated, in substance, by the Board of Appeal at paragraph 21 of thecontested decision.
15

–The comparison of the overall impressions produced by the two
designs at issue
70

Having regard to what has been stated above concerning the elementsthat are protected by the contested design and the degree of freedom of
the designer of a watch attached to a lanyard, the overall impression
produced by the contested design must be held to be determined by thefollowing elements:–

a lanyard, the strips of which are joined at one end, then overlap
and form a loop at the other end;–a round watch attached to the lanyard at the place where the two
strips of the lanyard move away from each other;–

two concentric rings around the edge of the watch, the outer ringwith a gap in the top part in which the knob for setting the time isplaced.

71

As to the overall impression produced by the SYMBICORT design,consideration must be given first of all to the applicant’s argument thatthe Board of Appeal should not have presumed that the SYMBICORT
design had a lanyard allowing the watch to be worn around the neck.

72

In that regard, it is true that the representation of the SYMBICORT
design provided to OHIM merely shows two strips going in two different
directions, but no loop supposed to be worn around the neck.

73

However, in the assessment of prior designs, their graphic
representations should not be examined in isolation and exclusively:
instead all the elements presented should be subject to a global
assessment allowing the overall impression produced by the design at
issue to be determined in a sufficiently precise and certain manner.

74

Indeed, in relation, in particular, to a design that has been useddirectly in trade, without being registered, it may be the case that there
is no graphic representation of the design showing its relevant details,
comparable to the representation appearing in an application forregistration. In those circumstances, it would be unreasonable torequire the applicant for invalidity to provide such a representation in
all cases.
16

75

In this case, firstly, on the reproduction of the SYMBICORT design
provided by the other party before the Board of Appeal, the two strips ofthe lanyard are sharply interrupted and the term ‘symbicort’ is only
partially represented on one of them. That suggests that the absence ofa loop is due to the incomplete nature of the reproduction and not to theactual appearance of the design at issue.

76

Secondly, it is apparent both from the shipping invoice and thecertificate of origin that the consignment dispatched by Great Sun
Technology to the Netherlands, on 3 April 2004, contained 2 000
examples of ‘“SYMBICORT” lanyard with watch’.

77

It cannot be denied that the function of a lanyard such as the one atissue is to allow an object to be worn around the neck.

78

Accordingly, taking into account that the overall impression produced
by a design on the informed user must necessarily be determined also in
the light of the manner in which the product at issue is used
( Communication equipment , cited above, paragraph 66), the Board of
Appeal was correct to hold, at paragraph 20 of the contested decision,that the SYMBICORT design did in fact entail a lanyard allowing thewatch to be worn around the neck, despite the incomplete graphic
representation presented before OHIM.

79

In light of the foregoing, it must be held that the overall impression
produced by the SYMBICORT design is determined by the elements set
out at paragraph 70 above. Indeed, as the Board of Appeal correctly
held at paragraph 19 of the contested decision, the SYMBICORT design
also shows a lanyard with essentially the same proportions, to which is
attached, in the same place, a round analogue watch. Similarly, theedge of the watch is surrounded by two concentric rings, the outer ring
being broken by a gap on the same side, in which a knob for setting thetime is placed.

80

Moreover, the Board of Appeal was correct in holding, at paragraph 20of the contested decision, that the differences between the designs at
issue, put forward by the applicant, were negligible.

81

Thus, firstly, no significant difference can be held to exist in relation
to the relative length and width of the lanyards of the designs at issue.
17

82

Next, the fact that the lanyard of the SYMBICORT design isrepresented in black is not significant, given that no colour has been
claimed for the contested design. Similarly, inasmuch as the contested
design represents a promotional item, it is reasonable to hold that,when it is used, it will carry a trade mark. Consequently, the presenceof the SYMBICORT mark in the SYMBICORT design does not amountto a significant difference either.

83

Finally, the details of the watch cases and the watch faces of the two
designs are not sufficiently striking to have any influence on the overall
impression produced by the designs. That is a fortiori the case since, as
is apparent from paragraphs 58 to 64 above, the watch’s hands and therectangular element affixed to the face of the watch are not among theelements that are protected by the contested design.

84

In light of all the foregoing, it must be held that the contested design
and the SYMBICORT design produce the same overall impression on
the informed user. Therefore, the Board of Appeal was correct inarriving at that same conclusion, at paragraph 22 of the contested
decision, and in inferring therefrom that the contested design was
devoid of individual character within the meaning of Article 6 ofRegulation No 6/2002 and was therefore to be declared invalid.

85

Accordingly, the second plea must be rejected.

The third plea, alleging a misuse of powers within the meaning of
Article 61(2) of Regulation No 6/2002
Arguments of the parties
86

The applicant submits that the Board of Appeal misused its powers in
that: (i) it did not consider in sufficient detail the submissions of theapplicant and the evidence that was furnished, in particular the
shipping invoice; (ii) it misinterpreted the freedom of the designer as
regards the lanyard and the attachment clip; and (iii) it based thecontested decision on an incorrect assessment of the attachment clip ofthe contested design. In this regard, the applicant submits that theBoard of Appeal did not carry out a proper examination, but instead
merely expressed findings which were not supported by explanation orreferences to evidence, thereby infringing its rights of defence.
Furthermore, it is possible that, in making reference to the fact that the18attachment clip was represented by dotted lines, the Board of Appeal
was referring to an unknown design.
87

OHIM contests the merits of the applicant’s submissions.
Findings of the Court

88

It should be borne in mind that the concept of misuse of powers has a
precisely defined scope in European Union law and refers to cases
where an administrative authority has used its powers for a purpose
other than that for which they were conferred on it. In that respect, it
has been consistently held that a decision may amount to a misuse of
powers only if it appears, on the basis of objective, relevant andconsistent evidence, to have been taken for purposes other than thosestated (Joined Cases T-551/93 and T-231/94 to T-234/94 Industrias
Pesqueras Campos and Others v Commission [1996] ECR II-247,
paragraph 168, and Case T-19/99 DKV v OHIM (COMPANYLINE)[2000] ECR II-1, paragraph 33).

89

In this case, the applicant has not established, or even alleged, thatsuch evidence exists. The alleged misuse of powers it raises amounts, atthe most, to potential errors of assessment that may result in an
infringement of Articles 4, 6 and 7 of Regulation No 6/2002. However, it
is apparent from the examination of the first and second pleas that theapplicant’s allegations in this regard are, in any event, unfounded.

90

In relation to the alleged infringement of the applicant’s rights ofdefence, it is apparent from Article 62 of Regulation No 6/2002 that
OHIM’s decisions may be based only on reasons or evidence on which
the parties concerned have had an opportunity to present theircomments. In this case, before the adjudicating bodies of OHIM, theapplicant expressed its opinion on the probative force of the shipping
invoice, on the freedom of the designer, on the incomplete nature of therepresentation of the SYMBICORT design and on the importance of theattachment clip in the overall impression produced by a watch attached
to a lanyard. The fact that the attachment clip is not among theelements protected by the contested design was expressly mentioned atparagraph 21 of the decision of the Invalidity Division; the applicant
was thus in a position to present its observations on that point in thecontext of the appeal proceedings. Accordingly, the complaint alleging
19

an infringement of the applicant’s rights of defence must also be
rejected.
91

92
93

94

To the extent that the arguments put forward in the context of thethird plea may further be interpreted as concerning an infringement of
the duty to state reasons, as specified in Article 62 of Regulation No
6/2002, or the duty to examine facts, evidence and arguments provided
by the parties, as laid down in Article 63(1) of that regulation, it must
be stated that the contested decision sets out, in a coherent andsufficiently detailed manner, the reasons for which the Board of Appeal
considered, firstly, that the evidence relating to the SYMBICORT
design, in particular the shipping invoice, was credible and probative(paragraphs 7 and 15 to 17 of the contested decision) and, secondly, that,in the perception of the informed user, the contested design produced
the same overall impression as the SYMBICORT design, taking accountof the freedom of the designer (paragraphs 18 to 22 of the contested
decision). Thus, the contested decision is not vitiated by illegality inthat regard.
In light of the foregoing, the third plea must be rejected.
Since none of the pleas put forward by the applicant is well-founded inso far as those pleas relate to the disclosure of the SYMBICORT design
and the comparison between that design and the contested design, there
is no longer any need to examine them in relation to the C and F designs,
as has been explained at paragraphs 12 to 15 above. In thosecircumstances, the comparison between the contested design and the
SYMBICORT design carried out by the Board of Appeal is a sufficientbasis for the contested decision.
Therefore, the action must be dismissed in its entirety.
Costs

95

Under Article 87(2) of the Rules of Procedure of the General Court,
the unsuccessful party is to pay the costs if they have been applied forin the successful party’s pleadings. Since the applicant has been
unsuccessful, it must be ordered to pay the costs, as applied for by
OHIM.
20

On those grounds,
THE GENERAL COURT (Fourth Chamber)hereby:1.

Dismisses the action;

2.

Orders Sphere Time to pay the costs.

Delivered in open court in Luxembourg on 14 June 2011.
[Signatures]21【台 湾】
電子プレーヤー意匠権侵害事件（知的財産法院 100 年度民事第 7 号）
Subject：意匠権侵害の判断（台湾） 1
知的財産局ウェブサイトの、本年 6 月 5 日付電子報の法律に関する頁に、意匠権侵害の判断に関する判例の要約が掲載された。
以下はその訳文である。
電子報掲載日：2012 年 6 月 5 日
原告は、「音楽プレーヤー」を特許主務官庁に意匠登録出願(以下、係争登録という)した。特許主務官庁は登録査定とし、登録証書を発給した。原告は起訴前に、被告の製品が係争登録を侵害していると通知しており、被告の受取が記録に残されている。
しかしながら、被告は、原告が発送した警告書受領後も継続して係争製品を輸入した。
これとは別に、被告は原告の係争登録の意匠並びに製品構造を実用新案登録出願した。
被告は単に製品の外観を盗用しただけでなく、使用説明書まで盗用したとして、原告は被告が故意に係争登録を侵害した行為について、賠償するよう申し立てた。
被告の抗弁によると、原告の警告書受領後、直ちに「自ら比較対照」、「行政院公平交易委員会へ告発」、「係争登録の無効審判請求」及び「登録侵害鑑定報告の提出」
等のプロセスを進め、係争製品は係争登録を侵害するおそれがないことを確信した後、引き続き係争製品を販売したので、主観的な悪意はない。被告は、その購入した「係争製品」を特許主務官庁に実用新案登録出願したのであり、「係争登録の製品」を出願したのではない。この他、係争登録は意匠であり、被告は係争製品を実用新案として登録出願したのであって、両者が求める登録性の意味は完全に異なり、被告が主観的に故意で係争登録を侵害したことは全くないことを十分証明している。

裁判所は、本件審理後、以下の通り認めた。登録意匠に関する侵害判断は、「登録出願された意匠 [以下、登録出願意匠という] の範囲の解釈」、及び「解釈後の登録出願意匠の範囲と権利侵害を訴えられた物品 [以下、被訴権利侵害物品という] の比較対照」のプロセスを含まなければならず、「登録出願意匠の範囲の解釈」は、出願時に、出願前の先行技芸と比較対照し、客観的に視覚を通して、新規性、創作性を与える新規な特徴を追求したものに限られ、機能的な意匠は排除しなければならない。
「解釈後の登録出願意匠の範囲と被訴権利侵害物品の比較対照」については、当該意匠が属す
1

http://www.unionpatent.com.tw/p2-1j.asp?nid=472&strKey=&ppage=1

る技芸分野について通常の知識を有する者を基準として、被訴権利侵害物品の技芸内容を解釈、分析し、更に一般的な消費者を基準として、解釈、分析後の被訴権利侵害
物品と解釈後の登録出願意匠物品とを視覚的に意匠全体が同一又は類似であるか否か判断しなければならない。被訴権利侵害物品と登録出願意匠物品が視覚的に意匠全体が同一又は類似であるときは、更に当該意匠が属する技芸分野において通常の知識を有する者を基準として、被訴権利侵害物品が登録出願意匠の新規的特徴を含むか否かを判断する。そして被訴権利侵害物品と登録出願意匠物品が視覚的に意匠全体が同一又は類似であり、且つ新規的特徴を包含しているのであれば、そこで始めて登録出願
意匠の範囲に入り、侵害を構成する。係争登録の全体的な視覚上の意匠と係争製品は、ほぼ同一という程度に類似しており、従って係争製品は係争登録の新規的特徴を包含すると認定できる。係争製品は係争登録の登録出願範囲にあり、侵害を構成すると十分に認められる。

裁判所は、原告が要求した賠償及び被告は製造、販売の申し出、販売、使用又は上述の目的で係争登録を侵害する物品の輸入はできないとの申立は理由があり、認めなければならないとの判決を下した。

(報告書本文 p.228)
UPSC 聯合專利商標事務所 Website
http://www.unionpatent.com.tw/p2-1j.asp?nid=472&strKey=&ppage=2