United States Court of Appeals 

for the Federal Circuit ______________________ 

APPLE INC., a California corporation,

Plaintiff-Appellee

v.

SAMSUNG ELECTRONICS CO., LTD., 

a Korean corporation, 

SAMSUNG ELECTRONICS AMERICA, INC., 

a New York corporation, 

SAMSUNG TELECOMMUNICATIONS AMERICA, 

LLC, a Delaware limited liability company,

Defendants-Appellants

______________________ 

2014-1335, 2015-1029

______________________ 

Appeals from the United States District Court for the 

Northern District of California in No. 5:11-cv-01846, 

Judge Lucy H. Koh.

______________________ 

Decided: May 18, 2015

______________________ 

WILLIAM F. LEE, Wilmer Cutler Pickering Hale and 

Dorr LLP, Boston, MA, argued for plaintiff-appellee. Also 

represented by ANDREW J. DANFORD, MARK CHRISTOPHER 

FLEMING, ERIC FLETCHER, LAUREN B. FLETCHER, SARAH R.

FRAZIER, KEVIN SCOTT PRUSSIA; JAMES QUARLES, III, MARK 

D. SELWYN, THOMAS GREGORY SPRANKLING, Washington, 

DC; RACHEL KREVANS, CHRISTOPHER ROBINSON,
2 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

NATHANIEL BRYAN SABRI, RUTH N. BORENSTEIN, Morrison 

& Foerster LLP, San Francisco, CA.

KATHLEEN M. SULLIVAN, Quinn Emanuel Urquhart & 

Sullivan, LLP, New York, NY, argued for defendantsappellants. Also represented by WILLIAM ADAMS; ROBERT 

JASON BECHER, SUSAN RACHEL ESTRICH, B. DYLAN 

PROCTOR, MICHAEL THOMAS ZELLER, Los Angeles, CA; 

VICTORIA FISHMAN MAROULIS, Redwood Shores, CA; 

KEVIN ALEXANDER SMITH, San Francisco, CA.

ERIK SCOTT JAFFE, Erik S. Jaffe, P.C., Washington, 

DC, for amicus curiae Hispanic Leadership Fund.

TIM DELANEY, Brinks Gilson & Lione, Chicago, IL, for 

amicus curiae National Grange of the Order of the Patrons of Husbandry. Also represented by LAURA A.

LYDIGSEN. 

MARK A. LEMLEY, Durie Tangri LLP, San Francisco, 

CA, for amici curiae David Abrams, Sarah Burstein, 

Michael A. Carrier, Bernard Chao, Andrew Chin, Ralph 

D. Clifford, Jorge Contreras, Thomas Cotter, Robin Feldman, William Gallagher, Jon M. Garon, Shubha Ghosh, 

Amy Landers, Mark A. Lemley, Oskar Liivak, Brian J. 

Love, Jonathan Masur, Stephen McJohn, Mark P. 

McKenna, Tyler T. Ochoa, Michael Risch, Jason Michael 

Schultz, Lea Shaver, Jessica Silbey, Katherine J. Strandburg, Rebecca Tushnet, Ryan Vacca.

JOSEPH CARL CECERE, JR., Cecere PC, Dallas, TX, for 

amicus curiae The National Black Chamber of Commerce. 

MATTHEW SCHRUERS, Computer & Communications 

Industry Association, Washington, DC, for amicus curiae 

Computer & Communications Industry Association.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 3

MARK DAVID JANIS, Indiana University Maurer School 

of Law, Bloomington, IN, for amici curiae Jason J. Du 

Mont, Mark David Janis.

PERRY J. SAIDMAN, Saidman DesignLaw Group, Silver 

Spring, MD, for amici curiae Design Ideas, Ltd., Novo 

Nordisk Inc., Lutron Electronics, Inc., Nuvasive, Inc., 

Method Products, PBC, Oakley, Inc., Deckers Outdoor 

Corporation, Kohler Company. 

JOEL SAYRES, Faegre Baker Daniels LLP, Denver, CO, 

for amicus curiae Crocs, Inc. 

BRIAN BUROKER, Gibson, Dunn & Crutcher LLP, 

Washington, DC, for amici curiae Michael McCoy, Steven 

Carl Visser, Lorraine Justice, Jim Agutter, Prasad 

Boradkar, James G. Budd, Rama Chorpash, Gregory 

Bryant Darby, Ed Dorsa, Tom Gattis, Allan Hastings, 

James Kaufman, Brook Kennedy, Haig Khachatoorian, 

Carol Joan Lasch, Thornton Lothrop, Tom Matano, 

George L. McCain, Zhenyu Cheryl Qian, Lance G. Rake, 

James Morley Read, Kevin Reeder, Jinseup Shin, aka Ted 

Shin, Bruce M. Tharp, Gregory Thomas, Richard Wilfred 

Yelle. Also represented by HOWARD S. HOGAN, MARK 

ANDREW PERRY, SARAH SLADIC, LUCAS C. TOWNSEND;

THEODORE J. BOUTROUS, JR., Los Angeles, CA; HERVEY 

MARK LYON, Palo Alto, CA.

MARK S. DAVIES, Orrick, Herrington & Sutcliffe LLP, 

Washington, DC, for amici curiae Charles L. Mauro, 

James Douglas Alsup, Jr., Charles Austen Angell, Daniel 

W. Ashcraft, Joseph M. Ballay, Alex Bally, Michelle S. 

Berryman, Eric Beyer, Robert Ian Blaich, Gordon Paul 

Bruce, Robert Brunner, William Bullock, Bruce Claxton, 

Del Coates, Robert J. Cohn, James Couch, George Russell 

Daniels, Mark Dziersk, John Edson, Gerard Furbershaw, 

Carroll Gantz, John Leavitt Gard, Michael Garten, Donald M. Genaro, Betsy Goodrich, Stephen G. Hauser, 
4 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

James J. Lesko, Scott David Mason, Patricia Moore, Louis 

Nelson, Christopher J. Parke, Nancy Perkins, Gordon 

Perry, Samuel B. Petre, Dale Raymond, Raymond W. 

Riley, Brian Roderman, Bryce G. Rutter, Andrew Serbinski, Ritasue Siegel, Paul Specht, Budd Steinhilber, John 

V. Stram, Kerstin Nelsen Strom, Mathieu Turpault, Gary 

Van Deursen, Frank Von Holzhausen, Sohrab Vossoughi, 

Arnold Wasserman, Allan E. Weaver, Edmund A. Weaver, 

Robert Welsh, Stephen B. Wilcox, Angela Yeh. Also represented by KATHERINE M. KOPP; RACHEL WAINER APTER, 

New York, NY; WILL MELEHANI, Irvine, CA.

______________________ 

Before PROST, Chief Judge, O’MALLEY and CHEN, Circuit 

Judges.

PROST, Chief Judge. 

Samsung Electronics Co., Ltd., Samsung Electronics 

America, Inc., Samsung Telecommunications America, 

LLC (collectively, “Samsung”) appeal from a final judgment of the U.S. District Court for the Northern District 

of California in favor of Apple Inc. (“Apple”). 

A jury found that Samsung infringed Apple’s design 

and utility patents and diluted Apple’s trade dresses. For 

the reasons that follow, we affirm the jury’s verdict on the 

design patent infringements, the validity of two utility 

patent claims, and the damages awarded for the design 

and utility patent infringements appealed by Samsung. 

However, we reverse the jury’s findings that the asserted 

trade dresses are protectable. We therefore vacate the 

jury’s damages awards against the Samsung products

that were found liable for trade dress dilution and remand 

for further proceedings consistent with this opinion.

BACKGROUND

Apple sued Samsung in April 2011. On August 24, 

2012, the first jury reached a verdict that numerous 
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 5

Samsung smartphones infringed and diluted Apple’s 

patents and trade dresses in various combinations and 

awarded over $1 billion in damages. 

The infringed design patents are U.S. Design Patent 

Nos. D618,677 (“D’677 patent”), D593,087 (“D’087 patent”), and D604,305 (“D’305 patent”), which claim certain 

design elements embodied in Apple’s iPhone. The infringed utility patents are U.S. Patent Nos. 7,469,381 

(“’381 patent”), 7,844,915 (“’915 patent”), and 7,864,163 

(“’163 patent”), which claim certain features in the iPhone’s user interface. The diluted trade dresses are 

Trademark Registration No. 3,470,983 (“’983 trade dress”) 

and an unregistered trade dress defined in terms of 

certain elements in the configuration of the iPhone.

Following the first jury trial, the district court upheld 

the jury’s infringement, dilution, and validity findings

over Samsung’s post-trial motion. The district court also 

upheld $639,403,248 in damages, but ordered a partial 

retrial on the remainder of the damages because they had 

been awarded for a period when Samsung lacked notice of 

some of the asserted patents. The jury in the partial 

retrial on damages awarded Apple $290,456,793, which 

the district court upheld over Samsung’s second post-trial 

motion. On March 6, 2014, the district court entered a 

final judgment in favor of Apple, and Samsung filed a 

notice of appeal. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(1).

DISCUSSION

We review the denial of Samsung’s post-trial motions 

under the Ninth Circuit’s procedural standards. See 

Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 

1358, 1370-71 (Fed. Cir. 2009). The Ninth Circuit reviews 

de novo a denial of a motion for judgment as a matter of 

law. Id. “The test is whether the evidence, construed in 

the light most favorable to the nonmoving party, permits 

only one reasonable conclusion, and that conclusion is
6 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

contrary to that of the jury.” Id. (citing Theme Promotions, Inc. v. News Am. Mktg. FSI, 546 F.3d 991, 999 (9th 

Cir. 2008)).

The Ninth Circuit reviews a denial of a motion for a 

new trial for an abuse of discretion. Revolution Eyewear, 

563 F.3d at 1372. “In evaluating jury instructions, prejudicial error results when, looking to the instructions as a 

whole, the substance of the applicable law was [not] fairly 

and correctly covered.” Gantt v. City of Los Angeles, 717 

F.3d 702, 707 (9th Cir. 2013) (quoting Swinton v. Potomac 

Corp., 270 F.3d 794, 802 (9th Cir. 2001)) (alteration in 

original). The Ninth Circuit orders a new trial based on 

jury instruction error only if the error was prejudicial. Id. 

A motion for a new trial based on insufficiency of evidence 

may be granted “only if the verdict is against the great 

weight of the evidence, or it is quite clear that the jury 

has reached a seriously erroneous result.” Incalza v. 

Fendi N. Am., Inc., 479 F.3d 1005, 1013 (9th Cir. 2007)

(internal quotation marks omitted). 

Samsung appeals numerous legal and evidentiary bases for the liability findings and damages awards in the 

three categories of intellectual property asserted by 

Apple: trade dresses, design patents, and utility patents. 

We address each category in turn.

I. Trade Dresses

The jury found Samsung liable for the likely dilution 

of Apple’s iPhone trade dresses under the Lanham Act. 

When reviewing Lanham Act claims, we look to the law of 

the regional circuit where the district court sits. ERBE 

Elektromedizin GmbH v. Canady Tech. LLC, 629 F.3d 

1278, 1287 (Fed. Cir. 2010). We therefore apply Ninth 

Circuit law.

The Ninth Circuit has explained that “[t]rade dress is 

the totality of elements in which a product or service is 

packaged or presented.” Stephen W. Boney, Inc. v. Boney 
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 7

Servs., Inc., 127 F.3d 821, 828 (9th Cir. 1997). The essential purpose of a trade dress is the same as that of a 

trademarked word: to identify the source of the product. 1 

McCarthy on Trademarks and Unfair Competition § 8:1 

(4th ed.) (“[L]ike a word asserted to be a trademark, the 

elements making up the alleged trade dress must have 

been used in such a manner as to denote product 

source.”). In this respect, “protection for trade dress 

exists to promote competition.” TrafFix Devices, Inc. v. 

Mktg. Displays, Inc., 532 U.S. 23, 28 (2001). 

The protection for source identification, however,

must be balanced against “a fundamental right to compete 

through imitation of a competitor’s product . . . .” Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 

1009, 1011-12 (9th Cir. 1999). This “right can only be 

temporarily denied by the patent or copyright laws.” Id. 

In contrast, trademark law allows for a perpetual monopoly and its use in the protection of “physical details and 

design of a product” must be limited to those that are 

“nonfunctional.” Id. at 1011-12; see also Qualitex Co. v. 

Jacobson Prods. Co., 514 U.S. 159, 164-65 (1995) (“If a 

product’s functional features could be used as trademarks, 

however, a monopoly over such features could be obtained 

without regard to whether they qualify as patents and 

could be extended forever (because trademarks may be 

renewed in perpetuity).”). Thus, it is necessary for us to

determine first whether Apple’s asserted trade dresses, 

claiming elements from its iPhone product, are nonfunctional and therefore protectable. 

“In general terms, a product feature is functional if it 

is essential to the use or purpose of the article or if it 

affects the cost or quality of the article.” Inwood Labs., 

Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982). “A 

product feature need only have some utilitarian advantage to be considered functional.” Disc Golf Ass’n v. 

Champion Discs, Inc., 158 F.3d 1002, 1007 (9th Cir.

1998). A trade dress, taken as a whole, is functional if it 
8 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

is “in its particular shape because it works better in this 

shape.” Leatherman, 199 F.3d at 1013. 

“[C]ourts have noted that it is, and should be, more 

difficult to claim product configuration trade dress than 

other forms of trade dress.” Id. at 1012-13 (discussing

cases). Accordingly, the Supreme Court and the Ninth 

Circuit have repeatedly found product configuration trade 

dresses functional and therefore non-protectable. See, 

e.g., TrafFix, 532 U.S. at 26-27, 35 (reversing the Sixth 

Circuit’s reversal of the district court’s grant of summary 

judgment that a trade dress on a dual-spring design for 

temporary road sign stands was functional); Secalt S.A. v. 

Wuxi Shenxi Const. Mach. Co., 668 F.3d 677, 687 (9th Cir. 

2012) (affirming summary judgment that a trade dress on 

a hoist design was functional); Disc Golf, 158 F.3d at 1006

(affirming summary judgment that a trade dress on a disc 

entrapment design was functional). 

Moreover, federal trademark registrations have been 

found insufficient to save product configuration trade 

dresses from conclusions of functionality. See, e.g., Talking Rain Beverage Co. v. S. Beach Beverage, 349 F.3d 601, 

602 (9th Cir. 2003) (affirming summary judgment that 

registered trade dress covering a bottle design with a grip 

handle was functional); Tie Tech, Inc. v. Kinedyne Corp., 

296 F.3d 778, 782-83 (9th Cir. 2002) (affirming summary 

judgment that registered trade dress covering a handheld 

cutter design was functional). The Ninth Circuit has even 

reversed a jury verdict of non-functionality of a product 

configuration trade dress. See Leatherman, 199 F.3d at 

1013 (reversing jury verdict that a trade dress on the 

overall appearance of a pocket tool was non-functional). 

Apple conceded during oral argument that it had not cited 

a single Ninth Circuit case that found a product configuration trade dress to be non-functional. Oral Arg. 49:06-

30, available at http://www.cafc.uscourts.gov/oralargument-recordings/14-1335/all. 
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 9

The Ninth Circuit’s high bar for non-functionality

frames our review of the two iPhone trade dresses on 

appeal. While the parties argue without distinguishing 

the two trade dresses, the unregistered trade dress and 

the registered ’983 trade dress claim different details and 

are afforded different evidentiary presumptions under the 

Lanham Act. We analyze the two trade dresses separately below. 

A. Unregistered Trade Dress

Apple claims elements from its iPhone 3G and 3GS 

products to define the asserted unregistered trade dress:

a rectangular product with four evenly rounded 

corners;

a flat, clear surface covering the front of the product;

a display screen under the clear surface;

substantial black borders above and below the 

display screen and narrower black borders on either side of the screen; and

when the device is on, a row of small dots on the 

display screen, a matrix of colorful square icons 

with evenly rounded corners within the display 

screen, and an unchanging bottom dock of colorful 

square icons with evenly rounded corners set off 

from the display’s other icons.

Appellee’s Br. 10-11. As this trade dress is not registered 

on the principal federal trademark register, Apple “has 

the burden of proving that the claimed trade dress, taken 

as a whole, is not functional . . . .” See 15 U.S.C. 

§ 1125(c)(4)(A). 

Apple argues that the unregistered trade dress is nonfunctional under each of the Disc Golf factors that the 

Ninth Circuit uses to analyze functionality: “(1) whether 
10 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

the design yields a utilitarian advantage, (2) whether 

alternative designs are available, (3) whether advertising 

touts the utilitarian advantages of the design, and 

(4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.” See 

Disc Golf, 158 F.3d at 1006. However, the Supreme Court 

has more recently held that “a feature is also functional 

. . . when it affects the cost or quality of the device.” See 

TrafFix, 532 U.S. at 33. The Supreme Court’s holding 

was recognized by the Ninth Circuit as “short circuiting 

some of the Disc Golf factors.” Secalt, 668 F.3d at 686-87. 

Nevertheless, we explore Apple’s contentions on each of 

the Disc Golf factors and conclude that there was insufficient evidence to support a jury finding in favor of nonfunctionality on any factor.

1. Utilitarian Advantage

Apple argues that “the iPhone’s physical design did 

not ‘contribute unusually . . . to the usability’ of the device.” Appellee’s Br. 61 (quoting J.A. 41095:11-12) (alteration in original). Apple further contends that the 

unregistered trade dress was “developed . . . not for ‘superior performance.’” Id. at 62 n.18. Neither “unusual 

usability” nor “superior performance,” however, is the 

standard used by the Ninth Circuit to determine whether 

there is any utilitarian advantage. The Ninth Circuit 

“has never held, as [plaintiff] suggests, that the product 

feature must provide superior utilitarian advantages. To 

the contrary, [the Ninth Circuit] has suggested that in 

order to establish nonfunctionality the party with the 

burden must demonstrate that the product feature serves 

no purpose other than identification.” Disc Golf, 158 F.3d 

at 1007 (internal quotation marks omitted). 

The requirement that the unregistered trade dress 

“serves no purpose other than identification” cannot be 

reasonably inferred from the evidence. Apple emphasizes 

a single aspect of its design, beauty, to imply the lack of 
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 11

other advantages. But the evidence showed that the 

iPhone’s design pursued more than just beauty. Specifically, Apple’s executive testified that the theme for the 

design of the iPhone was:

to create a new breakthrough design for a phone 

that was beautiful and simple and easy to use and 

created a beautiful, smooth surface that had a 

touchscreen and went right to the rim with the 

bezel around it and looking for a look that we 

found was beautiful and easy to use and appealing.

J.A. 40722-23 (emphases added). 

Moreover, Samsung cites extensive evidence in the 

record that showed the usability function of every single

element in the unregistered trade dress. For example, 

rounded corners improve “pocketability” and “durability”

and rectangular shape maximizes the display that can be 

accommodated. J.A. 40869-70; J.A. 42612-13. A flat clear 

surface on the front of the phone facilitates touch operation by fingers over a large display. J.A. 42616-17. The 

bezel protects the glass from impact when the phone is 

dropped. J.A. 40495. The borders around the display are 

sized to accommodate other components while minimizing 

the overall product dimensions. J.A. 40872. The row of 

dots in the user interface indicates multiple pages of 

application screens that are available. J.A. 41452-53. 

The icons allow users to differentiate the applications 

available to the users and the bottom dock of unchanging 

icons allows for quick access to the most commonly used 

applications. J.A. 42560-61; J.A. 40869-70. Apple rebuts 

none of this evidence.

Apple conceded during oral argument that its trade 

dress “improved the quality [of the iPhone] in some respects.” Oral Arg. 56:09-17. It is thus clear that the 

unregistered trade dress has a utilitarian advantage. See 

Disc Golf, 158 F.3d at 1007. 
12 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

2. Alternative Designs

The next factor requires that purported alternative 

designs “offer exactly the same features” as the asserted 

trade dress in order to show non-functionality. Tie Tech, 

296 F.3d at 786 (quoting Leatherman, 199 F.3d at 1013-

14). A manufacturer “does not have rights under trade 

dress law to compel its competitors to resort to alternative 

designs which have a different set of advantages and 

disadvantages.” Id. 

Apple, while asserting that there were “numerous alternative designs,” fails to show that any of these alternatives offered exactly the same features as the asserted 

trade dress. Appellee’s Br. 62. Apple simply catalogs the

mere existence of other design possibilities embodied in 

rejected iPhone prototypes and other manufacturers’ 

smartphones. The “mere existence” of other designs, 

however, does not prove that the unregistered trade dress 

is non-functional. See Talking Rain, 349 F.3d at 604. 

3. Advertising of Utilitarian Advantages

“If a seller advertises the utilitarian advantages of a 

particular feature, this constitutes strong evidence of 

functionality.” Disc Golf, 158 F.3d at 1009. An “inference” of a product feature’s utility in the plaintiff’s advertisement is enough to weigh in favor of functionality of a 

trade dress encompassing that feature. Id. 

Apple argues that its advertising was “[f]ar from touting any utilitarian advantage of the iPhone design . . . .” 

Appellee’s Br. 60. Apple relies on its executive’s testimony that an iPhone advertisement, portraying “the distinctive design very clearly,” was based on Apple’s “product as 

hero” approach. Id. (quoting J.A. 40641-42; 40644:22). 

The “product as hero” approach refers to Apple’s stylistic 

choice of making “the product the biggest, clearest, most 

obvious thing in [its] advertisements, often at the expense 

of anything else around it, to remove all the other ele-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 13

ments of communication so [the viewer] see[s] the product 

most predominantly in the marketing.” J.A. 40641-42. 

Apple’s arguments focusing on its stylistic choice, 

however, fail to address the substance of its advertisements. The substance of the iPhone advertisement relied 

upon by Apple gave viewers “the ability to see a bit about 

how it might work,” for example, “how flicking and scrolling and tapping and all these multitouch ideas simply

[sic].” J.A. 40644:23-40645:2. Another advertisement 

cited by Apple similarly displayed the message, 

“[t]ouching is believing,” under a picture showing a user’s 

hand interacting with the graphical user interface of an

iPhone. J.A. 24896. Apple fails to show that, on the 

substance, these demonstrations of the user interface on 

iPhone’s touch screen involved the elements claimed in 

Apple’s unregistered trade dress and why they were not 

touting the utilitarian advantage of the unregistered 

trade dress. 

4. Method of Manufacture

The fourth factor considers whether a functional benefit in the asserted trade dress arises from “economies in 

manufacture or use,” such as being “relatively simple or 

inexpensive to manufacture.” Disc Golf, 158 F.3d at 1009.

Apple contends that “[t]he iPhone design did not result from a ‘comparatively simple or inexpensive method 

of manufacture’” because Apple experienced manufacturing challenges. Appellee’s Br. 61 (quoting Talking Rain, 

349 F.3d at 603). Apple’s manufacturing challenges, 

however, resulted from the durability considerations for 

the iPhone and not from the design of the unregistered 

trade dress. According to Apple’s witnesses, difficulties 

resulted from its choices of materials in using “hardened 

steel”; “very high, high grade of steel”; and, “glass that 

was not breakable enough, scratch resistant enough.” Id. 

(quoting J.A. 40495-96, 41097). These materials were 

chosen, for example, for the iPhone to survive a drop:
14 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

If you drop this, you don't have to worry about the 

ground hitting the glass. You have to worry about 

the band of steel surrounding the glass hitting the 

glass. . . . In order to, to make it work, we had to 

use very high, high grade of steel because we 

couldn’t have it sort of deflecting into the glass. 

J.A. 40495-96. The durability advantages that resulted 

from the manufacturing challenges, however, are outside 

the scope of what Apple defines as its unregistered trade 

dress. For the design elements that comprise Apple’s 

unregistered trade dress, Apple points to no evidence in 

the record to show they were not relatively simple or 

inexpensive to manufacture. See Disc Golf, 158 F.3d at 

1009 (“[Plaintiff], which has the burden of proof, offered 

no evidence that the [asserted] design was not relatively 

simple or inexpensive to manufacture.”). 

In sum, Apple has failed to show that there was substantial evidence in the record to support a jury finding in 

favor of non-functionality for the unregistered trade dress 

on any of the Disc Golf factors. Apple fails to rebut the 

evidence that the elements in the unregistered trade 

dress serve the functional purpose of improving usability. 

Rather, Apple focuses on the “beauty” of its design, even 

though Apple pursued both “beauty” and functionality in 

the design of the iPhone. We therefore reverse the district court’s denial of Samsung’s motion for judgment as a 

matter of law that the unregistered trade dress is functional and therefore not protectable. 

B. The Registered ’983 Trade Dress

In contrast to the unregistered trade dress, the ’983 

trade dress is a federally registered trademark. The 

federal trademark registration provides “prima facie 

evidence” of non-functionality. Tie Tech, 296 F.3d at 782-

83. This presumption “shift[s] the burden of production to 

the defendant . . . to provide evidence of functionality.” 

Id. at 783. Once this presumption is overcome, the regis-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 15

tration loses its legal significance on the issue of functionality. Id. (“In the face of sufficient and undisputed facts 

demonstrating functionality, . . . the registration loses its 

evidentiary significance.”).

The ’983 trade dress claims the design details in each 

of the sixteen icons on the iPhone’s home screen framed 

by the iPhone’s rounded-rectangular shape with silver 

edges and a black background: 

The first icon depicts the letters “SMS” in green 

inside a white speech bubble on a green background; 

. . . 

the seventh icon depicts a map with yellow and 

orange roads, a pin with a red head, and a redand-blue road sign with the numeral “280” in 

white; 

. . . 

the sixteenth icon depicts the distinctive configuration of applicant’s media player device in white 

over an orange background.

’983 trade dress (omitting thirteen other icon design 

details for brevity). 

It is clear that individual elements claimed by the 

’983 trade dress are functional. For example, there is no 

dispute that the claimed details such as “the seventh icon 

depicts a map with yellow and orange roads, a pin with a 

red head, and a red-and-blue road sign with the numeral 

‘280’ in white” are functional. See id. Apple’s user interface expert testified on how icon designs promote usability. This expert agreed that “the whole point of an icon on 

a smartphone is to communicate to the consumer using 

that product, that if they hit that icon, certain functionality will occur on the phone.” J.A. 41458-59. The expert 

further explained that icons are “[v]isual shorthand for 
16 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

something” and that “rectangular containers” for icons 

provide “more real estate” to accommodate the icon design. J.A. 41459, 41476. Apple rebuts none of this evidence. 

Apple contends instead that Samsung improperly disaggregates the ’983 trade dress into individual elements 

to argue functionality. But Apple fails to explain how the 

total combination of the sixteen icon designs in the context of iPhone’s screen-dominated rounded-rectangular 

shape—all part of the iPhone’s “easy to use” design 

theme—somehow negates the undisputed usability function of the individual elements. See J.A. 40722-23. Apple’s own brief even relies on its expert’s testimony about 

the “instant recognizability due to highly intuitive icon 

usage” on “the home screen of the iPhone.” J.A. 41484; 

Appellee’s Br. 43, 70, 71 (quoting J.A. 41484). Apple’s 

expert was discussing an analysis of the iPhone’s overall 

combination of icon designs that allowed a user to recognize quickly particular applications to use. J.A. 41484, 

25487. The iPhone’s usability advantage from the combination of its icon designs shows that the ’983 trade 

dress viewed as a whole “is nothing other than the assemblage of functional parts . . . .” See Tie Tech, 296 F.3d at 

786 (quoting Leatherman, 199 F.3d at 1013). There is no 

“separate ‘overall appearance’ which is non-functional.” 

Id. (quoting Leatherman, 199 F.3d at 1013). The undisputed facts thus demonstrate the functionality of the ’983 

trade dress. “In the face of sufficient and undisputed facts 

demonstrating functionality, as in our case, the registration loses its evidentiary significance.” See id. at 783. 

The burden thus shifts back to Apple. See id. But 

Apple offers no analysis of the icon designs claimed by the 

’983 trade dress. Rather, Apple argues generically for its 

two trade dresses without distinction under the Disc Golf

factors. Among Apple’s lengthy citations to the record, we 

can find only two pieces of information that involve icon 

designs. One is Apple’s user interface expert discussing
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 17

other possible icon designs. The other is a citation to a 

print iPhone advertisement that included the icon designs 

claimed in the ’983 trade dress. These two citations, 

viewed in the most favorable light to Apple, would be 

relevant to only two of the Disc Golf factors: “alternative 

design” and “advertising.” But the cited evidence suffers 

from the same defects as discussed in subsections I.A.2 

and I.A.3. Specifically, the expert’s discussion of other 

icon design possibilities does not show that the other 

design possibilities “offer[ed] exactly the same features” as 

the ’983 trade dress. See Tie Tech, 296 F.3d at 786 (quoting Leatherman, 199 F.3d at 1013-14). The print iPhone 

advertisement also fails to establish that, on the substance, it was not touting the utilitarian advantage of the 

’983 trade dress. The evidence cited by Apple therefore

does not show the non-functionality of the ’983 trade 

dress.

In sum, the undisputed evidence shows the functionality of the registered ’983 trade dress and shifts the 

burden of proving non-functionality back to Apple. Apple, 

however, has failed to show that there was substantial 

evidence in the record to support a jury finding in favor of 

non-functionality for the ’983 trade dress on any of the 

Disc Golf factors. We therefore reverse the district court’s 

denial of Samsung’s motion for judgment as a matter of 

law that the ’983 trade dress is functional and therefore 

not protectable. 

Because we conclude that the jury’s findings of nonfunctionality of the asserted trade dresses were not supported by substantial evidence, we do not reach Samsung’s arguments on the fame and likely dilution of the 

asserted trade dresses, the Patent Clause of the Constitution, or the dilution damages.
18 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

II. Design Patents

The design patents on appeal claim certain design elements embodied in the iPhone. The D’677 patent focuses 

on design elements on the front face of the iPhone:

The D’087 patent claims another set of design features 

that extend to the bezel of the iPhone:

The D’305 patent claims “the ornamental design for a 

graphical user interface for a display screen or portion 

thereof” as shown in the following drawing:
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 19

Samsung contends that it should not have been found 

liable for infringement of the asserted design patents 

because any similarity was limited to the basic or functional elements in the design patents. Moreover, according to Samsung, there was no evidence of actual deception 

of consumers and that the differences between the accused smartphones and the asserted design patents 

should have been clear if prior art designs were properly 

considered. Samsung raises these three issues—

functionality, actual deception, and comparison to prior 

art—in the context of the jury instructions and the sufficiency of evidence to support the infringement verdict. 

Finally, Samsung argues that the district court legally 

erred in allowing the jury to award as damages Samsung’s entire profits on its infringing smartphones. We do 

not find any of these challenges persuasive as discussed 

below. 

A. Infringement

1. Jury Instructions 

a. Functional Aspects in the Asserted Design Patents

“Where a design contains both functional and nonfunctional elements, the scope of the claim must be con-
20 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

strued in order to identify the non-functional aspects of 

the design as shown in the patent.” OddzOn Prods., Inc. 

v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). 

Samsung contends that the district court erred in failing 

to exclude the functional aspects of the design patents 

either in the claim construction or elsewhere in the infringement jury instructions. Specifically, Samsung 

contends that the district court should have excluded

elements that are “‘dictated by their functional purpose,’ 

or cover the ‘structural . . . aspects of the article.’” Appellants’ Br. 23 (quoting Richardson v. Stanley Works, Inc., 

597 F.3d 1288, 1294 (Fed. Cir. 2010); Lee v. DaytonHudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988)) 

(alteration in original) (citation omitted). Such elements, 

according to Samsung, should be “ignored” in their entirety from the design patent claim scope. Id. at 29. For 

example, Samsung contends that rectangular form and 

rounded corners are among such elements that should be 

ignored in the infringement analysis. See, e.g., id.

Our case law does not support Samsung’s position. In 

Richardson, the design patent at issue depicted a multifunction tool with numerous components that were “dictated by their functional purpose.” 597 F.3d at 1294. But 

the claim construction in Richardson did not exclude 

those components in their entirety. Rather, the claim 

construction included the ornamental aspects of those 

components: “the standard shape of the hammer-head, 

the diamond-shaped flare of the crow-bar and the top of 

the jaw, the rounded neck, the orientation of the crow-bar 

relative to the head of the tool, and the plain, undecorated 

handle.” Richardson v. Stanley Works, Inc., 610 F. Supp.

2d 1046, 1050 (D. Ariz. 2009). That construction was 

affirmed on appeal. Richardson, 597 F.3d at 1294. As 

such, the language “dictated by their functional purpose” 

in Richardson was only a description of the facts there; it 

did not establish a rule to eliminate entire elements from 

the claim scope as Samsung argues. 
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 21

Our case law likewise does not support Samsung’s 

proposed rule of eliminating any “structural” aspect from 

the claim scope. Samsung arrives at its proposed rule by 

selecting a few words from the following statement in Lee: 

“[d]esign patents do not and cannot include claims to the 

structural or functional aspects of the article . . . .” 838 

F.2d at 1188. But that statement addressed design 

patent validity. See id. (quoting 37 C.F.R. § 1.153(a) on a 

design patent application requirement). It did not specify 

a rule, as Samsung represents, to eliminate elements 

from the claim scope of a valid patent in analyzing infringement.

More directly applicable to the claim scope issue at 

hand, Lee stated elsewhere that “it is the non-functional, 

design aspects that are pertinent to determinations of 

infringement.” Id. (footnote omitted). That principle was 

properly reflected in this case in the district court’s construction of the design patents as claiming only “the 

ornamental design” as shown in the patent figures. J.A. 

01390-91. Samsung has not persuasively shown how the 

district court’s claim constructions were legally erroneous 

under Lee or Richardson. See Richardson, 597 F.3d at 

1295 (noting that “discounting of functional elements 

must not convert the overall infringement test to an 

element-by-element comparison”).

Samsung asserted alternatively during oral argument

that the jury should have been instructed to compare the 

accused Samsung smartphones to the “overall ornamental

appearance” of a patented design, instead of simply “the 

overall appearance” as the district court provided. Oral 

Arg. 4:06–4:25, 5:54–6:10. According to Samsung, “crucially, what’s missing there is the word ‘ornamental.’” Id. 

at 4:25–4:28. But jury instructions are reviewed “as a 

whole” to determine whether “the substance of the applicable law was [not] fairly and correctly covered” such that 

the alleged error was prejudicial. See Gantt, 717 F.3d at 

706 (quoting Swinton, 270 F.3d at 802) (alteration in 
22 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

original). The jury instructions, as a whole, already 

limited the scope of the asserted design patents to the 

“ornamental” elements through the claim constructions as 

discussed earlier: the design patents were each construed 

as claiming “the ornamental design” as shown in the 

patent figures. J.A. 01390-91. As such, Samsung has 

failed to show prejudicial error in the jury instructions as 

a whole that would warrant a new trial. 

b. Actual Deception and Role of Prior Art

Samsung further contends that the infringement instruction was erroneous for stating that actual deception 

was not required, and for providing guidelines in considering prior art. A design patent is infringed if an ordinary 

observer would have been deceived: “if, in the eye of an 

ordinary observer, giving such attention as a purchaser 

usually gives, two designs are substantially the same, if 

the resemblance is such as to deceive such an observer, 

inducing him to purchase one supposing it to be the other, 

the first one patented is infringed by the other.” Gorham 

Co. v. White, 81 U.S. 511, 528 (1872). Moreover, an 

infringement analysis must include a comparison of the 

asserted design against the prior art: “[i]f the accused 

design has copied a particular feature of the claimed 

design that departs conspicuously from the prior art, the 

accused design is naturally more likely to be regarded as 

deceptively similar to the claimed design, and thus infringing.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 

665, 678 (Fed. Cir. 2008) (en banc). 

These holdings from Gorham and Egyptian Goddess

were reflected in the infringement instruction here, and 

Samsung does not contend otherwise. Samsung argues 

instead that the portions in the infringement instruction 

highlighted below made the jury consider a lack of actual 

deception irrelevant and led the jury to disregard the 

prior art: 
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 23

Two designs are substantially the same if, in the 

eye of an ordinary observer, giving such attention 

as a purchaser usually gives, the resemblance between the two designs is such as to deceive such 

an observer, inducing him to purchase one supposing it to be the other. You do not need, however, to 

find that any purchasers actually were deceived or 

confused by the appearance of the accused Samsung products. . . . 

This determination of whether two designs are 

substantially the same will benefit from comparing the two designs with prior art. You must familiarize yourself with the prior art admitted at 

trial in making your determination of whether 

there has been direct infringement.

You may find the following guidelines helpful to 

your analysis . . . . 

J.A. 1394 (emphases added). 

We conclude instead that the jury instruction simply 

clarified that actual deception was not required, which is 

an accurate reflection of the analysis in Gorham. See 81 

U.S. at 530 (crediting expert opinions “that ordinary 

purchasers would be likely to mistake the [accused] 

designs for the [patented design]”). 

We also conclude that the jury instruction expressly 

required that each juror “must” consider the prior art 

admitted at trial. J.A. 1394 (“You must familiarize yourself with the prior art admitted at trial in making your 

determination of whether there has been direct infringement.”). The jury instruction’s guidelines did not reduce 

the entire prior art analysis to a mere option as Samsung 

contends. 

Samsung again has failed to show that “when, looking 

to the instructions as a whole, the substance of the applicable law was [not] fairly and correctly covered.” See 
24 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

Gantt, 717 F.3d at 706 (quoting Swinton, 270 F.3d at 802) 

(alteration in original). 

2. Supporting Evidence

Samsung contends that the infringement verdict was 

not supported by substantial evidence. Samsung’s contentions, however, are premised on the same issues—

functionality, actual deception, and comparison to prior 

art—it raises in the context of the jury instructions. See, 

e.g., Appellants’ Br. 27 (“The uncontroverted evidence at 

trial showed the claimed features in Apple’s design patents to be overwhelmingly not ornamental, but structural or functional.”). 

Having rejected the jury instruction challenges, we 

likewise find Samsung’s parallel substantial evidence 

complaints unpersuasive. Apple’s witnesses provided 

sufficient testimonies to allow the jury to account for any 

functional aspects in the asserted design patents. Additionally, the witnesses testified on the similar overall 

visual impressions of the accused products to the asserted 

design patents such that an ordinary observer would 

likely be deceived. Apple’s experts also testified about the 

differences between the asserted patents and both the 

prior art and other competing designs. The jury could 

have reasonably relied on the evidence in the record to 

reach its infringement verdict. 

3. Preclusion of Evidence

Samsung also appeals the district court’s preclusion of

testimony on Samsung’s independent development of its 

F700 phone that pre-dated the iPhone to rebut an allegation of copying. The evidence on the F700 was previously 

excluded as a prior art reference under a Rule 37 sanction 

due to Samsung’s failure to timely disclose the evidence 

during discovery, which Samsung does not challenge. 

The district court found that Samsung’s witness did 

not design any of the accused devices and was unaware 
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 25

that any of the accused devices was based on the F700. 

The district court thus determined that the proffered 

testimony of Samsung’s witness would have limited 

probative value on the question of whether Samsung 

copied any of Apple’s design patents because she lacked 

first-hand knowledge relevant to the underlying issue. As 

a result, the district court concluded that the limited 

probative value of the testimony was outweighed by the 

likelihood that it would be considered by the jury for the 

prohibited purpose under the earlier Rule 37 sanction. 

We find that the district court acted within its discretion 

in precluding Samsung’s proffered testimony to rebut an 

allegation of copying. 

We conclude that there was no prejudicial legal error 

in the infringement jury instructions on the three issues 

that Samsung raises: functionality, actual deception, and 

comparison to prior art. We further conclude that the 

district court did not abuse its discretion in excluding 

Samsung’s evidence of independent development and that 

there was substantial evidence to support the jury’s 

infringement findings. We therefore affirm the district 

court’s denial of Samsung’s motion for judgment as a 

matter of law on design patent infringement and Samsung’s alternative motion for a new trial.

B. Damages

Finally, with regard to the design patents, Samsung 

argues that the district court legally erred in allowing the 

jury to award Samsung’s entire profits on its infringing 

smartphones as damages. The damages, according to 

Samsung, should have been limited to the profit attributable to the infringement because of “basic causation 

principles . . . .” Appellants’ Br. 36-37. Samsung contends that “Apple failed to establish that infringement of 

its limited design patents . . . caused any Samsung sales 

or profits.” Id. at 40. Samsung further contends that 
26 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

consumers chose Samsung based on a host of other factors. Id. 

These “causation” arguments, however, advocate the 

same “apportionment” requirement that Congress rejected. See Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 

1441 (Fed. Cir. 1998). “Apportionment . . . required [the 

patentee] to show what portion of the infringer’s profit, or 

of his own lost profit, was due to the design and what 

portion was due to the article itself. . . . The Act of 1887, 

specific to design patents, removed the apportionment 

requirement . . . .” Id. The provisions in the Act of 1887 

on design patent infringement damages were subsequently codified in Section 289 of Title 35. Id. at 1440-43 

(containing a detailed and thorough discussion of the 

legislative history that need not be repeated here).

Section 289 now provides:

Whoever during the term of a patent for a design, 

without license of the owner, (1) applies the patented design, or any colorable imitation thereof, 

to any article of manufacture for the purpose of 

sale, or (2) sells or exposes for sale any article of 

manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than 

$250, recoverable in any United States district 

court having jurisdiction of the parties.

Nothing in this section shall prevent, lessen, or 

impeach any other remedy which an owner of an 

infringed patent has under the provisions of this 

title, but he shall not twice recover the profit 

made from the infringement.

35 U.S.C. § 289 (emphasis added). In reciting that an 

infringer “shall be liable to the owner to the extent of [the 

infringer’s] total profit,” Section 289 explicitly authorizes 

the award of total profit from the article of manufacture 
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 27

bearing the patented design.1 Several other courts also 

concluded that Section 289 authorizes such award of total 

profit. See Schnadig Corp. v. Gaines Mfg. Co., 620 F.2d 

1166, 1171 (6th Cir. 1980); Henry Hanger & Display 

Fixture Corp. of Am. v. Sel-O-Rak Corp., 270 F.2d 635, 

643-44 (5th Cir. 1959); Bergstrom v. Sears, Roebuck & 

Co., 496 F. Supp. 476, 495 (D. Minn. 1980). The clear 

statutory language prevents us from adopting a “causation” rule as Samsung urges.

Samsung continues its quest for apportionment by arguing, alternatively, that the profits awarded should have 

been limited to the infringing “article of manufacture,” 

not the entire infringing product. Samsung argues for 

limiting the profits awarded to “the portion of the product 

as sold that incorporates or embodies the subject matter 

of the patent.” Appellants’ Br. 38. Samsung contends 

that the Second Circuit had “allowed an award of infringer’s profits from the patented design of a piano case but 

not from the sale of the entire piano . . . .” Id. These 

Second Circuit opinions, however, addressed a factual

situation where “[a] purchaser desiring a piano of a particular manufacturer may have the piano placed in any 

one of several cases dealt in by the maker.” Bush & Lane 

Piano Co. v. Becker Bros., 222 F. 902, 903 (2d Cir. 1915). 

That factual situation occurred in the context of the 

commercial practice in 1915 in which ordinary purchasers 

regarded a piano and a piano case as distinct articles of 

manufacture. The facts at hand are different. The innards of Samsung’s smartphones were not sold separately 

1 Amici 27 Law Professors argues that an award of 

a defendant’s entire profits for design patent infringement 

makes no sense in the modern world. Those are policy 

arguments that should be directed to Congress. We are 

bound by what the statute says, irrespective of policy 

arguments that may be made against it.

 
28 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

from their shells as distinct articles of manufacture to 

ordinary purchasers. We thus do not agree with Samsung 

that these Second Circuit cases required the district court 

to limit the damages for design patent infringement in 

this case. 

We agree with the district court that there was no legal error in the jury instruction on the design patent 

damages. Samsung does not argue a lack of substantial 

evidence to support the damages awards under the district court’s jury instruction. We therefore affirm the 

damages awarded for design patent infringements. 

III. Utility Patents

Finally, Samsung challenges the validity of claim 50 

of the ’163 patent and claim 8 of the ’915 patent. Samsung also challenges the damages awarded for utility 

patent infringement.

A. Validity

1. Indefiniteness of Claim 50 of the ’163 Patent

Claim 50 of the ’163 patent relates to a user interface 

feature in which a user’s double tapping on a portion of an 

electronic document causes the portion to be enlarged and 

“substantially centered” on the display. ’163 patent, claim 

50. Samsung contends that claim 50 is indefinite because 

the ’163 patent provides “no objective standard to measure the scope of the term ‘substantially centered.’” Appellants’ Br. 66. 

Samsung’s complaint about a lack of an “objective 

standard [of] measure” is seeking a level of precision that 

exceeds the definiteness required of valid patents. “The 

definiteness requirement . . . mandates clarity, while 

recognizing that absolute precision is unattainable.” 

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 

2129 (2014). Given this recognition, “a patent is invalid 

for indefiniteness if its claims, read in light of the specifi-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 29

cation delineating the patent, and the prosecution history, 

fail to inform, with reasonable certainty, those skilled in 

the art about the scope of the invention.” Id. at 2124. 

Samsung, however, points to no evidence showing 

that skilled artisans would find the element “substantially centered” as lacking reasonable certainty in its scope. 

In contrast, Apple’s expert explained that the “padding” 

allowed in the ’163 patent provides skilled artisans with 

enough information to understand what “substantially 

centered” means in the patent. J.A. 41907-09. Apple’s 

expert cites a discussion in the specification of an embodiment referring to the figure reproduced below where the 

enlarged portion of the document is essentially centered 

except for “a predefined amount of padding along the 

sides of the display.” See ’163 patent col. 17 ll. 26-30. 

Apple thus presented evidence to show that skilled artisans would interpret “substantially centered” in the ’163 

patent to mean essentially centered except for a marginal 

spacing to accommodate ancillary graphical user interface

elements. We are not persuaded by Samsung’s attempt to 

discredit this expert testimony. We therefore agree with 

the district court that Samsung failed to carry its burden 
30 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

in challenging the validity of claim 50 of the ’163 patent

for indefiniteness. 

2. Anticipation of Claim 8 of the ’915 Patent

Claim 8 of the ’915 patent describes a computer-based 

method for distinguishing between scrolling and gesture 

(such as zooming) operations on a touch screen. ’915 

patent, claim 8. The dispute centers on whether a prior 

art reference, the Nomura patent application, taught the 

“event object” element in claim 8. The claim recites 

“event object” in the context such as: “creating an event 

object in response to the user input; determining whether 

the event object invokes a scroll or gesture operation . . . .” 

Id. Samsung contends that the “movement history” in 

Nomura inherently disclosed the “event object” in claim 8 

based on the opinion of its expert. Appellants’ Br. 64-65.

Apple, however, rebuts with its own expert testimony. 

Apple’s expert explained that “event objects” in claim 8 

refers to a particular “programming construct[]” and that 

there were many potential programming alternatives that 

Nomura could have used to implement the “movement 

history” it disclosed. J.A. 43636-37. According to the 

explanation by Apple’s expert, Nomura did not inherently 

disclose the claimed “event object.” We find that a reasonable jury could have credited the testimony of Apple’s 

expert over Samsung’s expert. Thus, we agree with the 

district court that there was substantial evidence to 

support the jury’s finding that claim 8 of the ’915 patent 

was not anticipated.

B. Damages

Apple advanced at trial both lost profits and reasonable royalty damages theories. The jury determined that 

for certain Samsung phones found to infringe the ’915 

patent, no reasonable non-infringing alternative was 

available, and thus lost profits was an appropriate measure of damages. For the other Samsung phones found to 
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 31

infringe Apple’s utility patents-in-suit, the jury determined that an award of lost profits was not supported, 

and thus awarded Apple a reasonable royalty for Samsung’s infringement. 

1. Lost Profits for Infringement of the ’915 Patent

“To recover lost profits, the patent owner must show 

causation in fact, establishing that but for the infringement, he would have made additional profits.” Grain 

Processing Corp. v. Am. Maize-Prods., 185 F.3d 1341, 

1349 (Fed. Cir. 1999). The patentee must “take[] into 

account any alternatives available to the infringer.” Id. at 

1351. “[M]arket sales of an acceptable noninfringing 

substitute often suffice alone to defeat a case for lost 

profits.” Id. at 1352.

Samsung argues that lost profits should not have 

been awarded because the evidence showed the existence 

of non-infringing substitutes. Specifically, Samsung 

contends that two Samsung phones, found to have not 

infringed the ’915 patent, should have been considered by 

the jury as non-infringing substitutes. Samsung further 

asserts that Apple failed to prove consumer preference of 

the ’915 patent’s technology over a purportedly comparable feature available in the two non-infringing Samsung 

phones. 

However, “the ‘[m]ere existence of a competing device 

does not make that device an acceptable substitute.’” 

Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 

702 F.3d 1351, 1361 (Fed. Cir. 2012) (quoting TWM Mfg. 

Co. v. Dura Corp., 789 F.2d 895, 901 (Fed. Cir. 1986)) 

(alteration in original). The mere existence of noninfringing phones is all Samsung is relying on to attack 

the jury’s verdict. For example, Samsung points to no 

evidence to support its assertion that the two noninfringing phones included a feature comparable to the 

one claimed in the ’915 patent. 
32 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

In contrast, there was substantial evidence to support 

the jury’s refusal to consider the two phones asserted by 

Samsung as non-infringing substitutes. Of these two 

phones, one had significantly different features, such as a 

slide-out physical keyboard in combination with a small, 

low-resolution screen. See Kaufman Co. v. Lantech, Inc., 

926 F.2d 1136, 1142 (Fed. Cir. 1991) (“To be deemed 

acceptable, the alleged acceptable noninfringing substitute must not have a disparately higher price than or 

possess characteristics significantly different from the 

patented product.”). And the other phone was never sold 

by a U.S. carrier. See Grain Processing, 185 F.3d at 1349 

(“[T]o be an acceptable non-infringing substitute, the 

product or process must have been available or on the 

market at the time of infringement.”). The jury could

have reasonably found that these two Samsung phones 

were not acceptable alternatives. Samsung’s unsupported 

assertion to the contrary fails to show a lack of substantial evidence supporting the awards of lost profits.

2. Reasonable Royalty

Samsung argues that Apple’s expert in the damages 

retrial, Ms. Davis, offered only a cursory explanation of 

how she arrived at the royalty rates she calculated based 

on the Georgia-Pacific factors. Samsung complains specifically about Ms. Davis’s testimony that the evidence of 

demand from her lost profits analysis was “also relevant 

to the determination of the amount of reasonable royalties.” Appellants’ Br. 72. 

Samsung does not dispute that Ms. Davis sufficiently 

explained her analysis of demand in the lost profit context. Samsung is only challenging that she did not repeat 

the same information with all of the details in testifying 

about her reasonable royalty calculation. However, Ms. 

Davis expressly testified that the demand factor for lost 

profits was also relevant to the determination of a reasonable royalty. J.A. 50651-52 (“Q. Is this issue of de-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 33

mand relevant to any category of damages other than lost 

profits? A. Yes. It’s relevant to the determination of the 

amount of reasonable royalties.”). A reasonable jury could 

refer to Ms. Davis’s testimony from an earlier context and 

appropriately weigh the evidence in considering Ms. 

Davis’s calculation on the royalty rates. Moreover, Ms. 

Davis’s testimony included additional substance on the 

Georgia-Pacific factors. For example, Ms. Davis expressly 

considered the cost to Samsung of being out of the market 

long enough to design around the patents, the profits 

attributable to Samsung’s use of the patented technology, 

and the commercial relationship between the parties. 

Taken as a whole, Ms. Davis’s testimony provided sufficient evidence to support the jury’s reasonable royalty 

awards in the damages retrial.

Finally, Samsung complained that Apple’s expert in 

the first damages trial, Mr. Musika, failed to explain his 

Georgia-Pacific analysis and identified no evidence supporting his royalty rates. Upon Apple’s response, Samsung acknowledges that Mr. Musika did in fact identify 

and discuss specific Georgia-Pacific factors and that Mr. 

Musika referred to an exhibit during his testimony. 

Samsung now contends that the analysis was not meaningful and the cited exhibit did not discuss the GeorgiaPacific’s factors at all. Samsung’s fault-finding is meritless.

We therefore affirm the district court’s denial of Samsung’s motion for judgment as a matter of law on the 

invalidity of claim 50 of the ’163 patent and claim 8 of the 

’915 patent, as well as the damages awarded for utility 

patent infringement. We also affirm the district court’s 

denial of Samsung’s motions for a new trial on these same 

issues. We remand for immediate entry of final judgment 

on all damages awards not predicated on Apple’s trade 

dress claims and for any further proceedings necessitated 

by our decision to vacate the jury’s verdicts on the unregistered and registered trade dress claims.
34 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

AFFIRMED-IN-PART, REVERSED-IN-PART, 

VACATED-IN-PART and REMANDED

COSTS

Each party shall bear its own costs.