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Apple Inc vs Samsung Electronics Co Ltd et al, No. 11-CV-01846-LHK

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Case No.: 11-CV-01846-LHK

APPLE, INC., a California corporation, Plaintiff and Counterdefendant,


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.

Notes / References in the Case

1. Legal Standard

  • Federal Rule of Civil Procedure 56(a)
  • Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986): Material facts are those that may affect the outcome of the case.
  • United Steelworkers of Am. v. Phelps Dodge Corp., 865 F.2d 1539, 1542 (9th Cir. 1989) (en banc) (citing Liberty Lobby, 477 U.S. at 255): [A]ll justifiable inferences must be drawn in [the nonmovant’s] favor.
  • Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986): The moving party bears the initial responsibility for informing the district court of the basis for its motion and identifying those portions of the pleadings, depositions, interrogatory answers, admissions and affidavits, if any, that it contends demonstrate the absence of a genuine issue of material fact.
  • Fed. R. Civ. P. 56(e); see also Liberty Lobby, 477 U.S. at 250.: A party opposing a properly supported motion for summary judgment “may not rest upon the mere allegations or denials of [that] party’s pleading, but . . . must set forth specific facts showing that there is a genuine issue for trial.

2. Trade Dress

  • TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 28 (2001): “It is well established that trade dress can be protected under federal law. The design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source.”
  • Disc Golf Ass’n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1005 (9th Cir. 1998): To succeed on its trade dress claims, .. must satisfy three elements: nonfunctionality, distinctiveness, and likelihood of confusion.
  • Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1258 (9th Cir. 2001): Functionality is a factual question.
  • 15 U.S.C. §1125(a)(3) (2006): A party asserting protection for unregistered marks “has the burden of proving that the matter sought to be protected is not functional.”
  • Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir. 2002): A registered mark enjoys the presumption of validity. However, this presumption can be rebutted through “law, undisputed facts, or a combination thereof that the mark is invalid” such that registration alone does not protect the trademark holder against summary judgment.
  • Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 164 (1995): [T]he functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature
A. Utilitarian Functionality
  • Talking Rain Beverage Co. v. S. Beach Beverage Co., 349 F.3d 601, 603 (9th Cir. 2003) (citing Disc Golf, 158 F.3d at 1006); see also Au-Tomotive Gold, Inc., 457 F.3d at 1072 n.8: In applying utilitarian functionality test, the Ninth Circuit assesses four factors: “(1) whether advertising touts the utilitarian advantages of the design, (2) whether the particular design results from a comparatively simple or inexpensive method of manufacture, (3) whether the design yields a utilitarian advantage and (4) whether alternative designs are available.”
  • Adidas-Solomon AG v. Target Corp., 228 F. Supp. 2d 1192, 1195 (D. Or. 2002) (citing Clicks Billiards, 251 F.3d at 1259): “The fact that individual elements of the trade dress may be functional does not necessarily mean that the trade dress as a whole is functional; rather, functional elements that are separately unprotectable can be protected together as part of a trade dress.”
  • Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1013 (9th Cir. 1999): “where the whole is nothing other than assemblage of functional parts, and where even the arrangement and combination of the parts is designed to result in superior performance,”
1. Advertising
  • Talking Rain, 349 F.3d at 603-604: Advertising focused on the ease of holding the beverage bottle at issue demonstrates functionality
2. Method of Manufacture
3. Utilitarian Advantage
4. Alternative Designs
B. Aesthetic Functionality
  • Qualitex, 514 U.S. at 169 (citing Inwood Lab., Inc. v. Ives Lab., Inc., 465 U.S. 844, 853 (1982): The appearance of the product contributes to the overall usefulness of the product. The functionality of the color of a medical pill which serves to distinguish the type of medicine
  • TrafFix, 532 U.S. at 33: Trademark does not protect designs if protection would place competitors at a “significant non-reputation-related disadvantage.”
  • Clicks Billiards, 251 F.3d at 1260: The ‘aesthetic functionality’ theory, that is, the notion that a purely aesthetic feature can be functional.”
  • First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1382 n.3 (9th Cir. 1987): The ‘aesthetic’ functionality test has been limited, if not rejected, in favor of the ‘utilitarian’ functionality test.”

3. Trade Dress Dilution

  • 15 U.S.C. §1125(c): Trademark dilution is caused by the use in commerce of a mark that “impairs the distinctiveness” or “harms the reputation” of a famous mark.
  • Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 903 (9th Cir. 2002): “Dilution refers to the whittling away of the value of a trademark when it’s used to identify different products.”
  • 15 U.S.C. §1125(c)(4): While many dilution claims refer to trade names, the current statute explicitly applies dilution protection to trade dress.
  • Jade Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008): To establish a claim of trade dress dilution, a plaintiff must show that (1) the trade dress is “famous and distinctive,” (2) the defendant is “making use of the [trade dress] in commerce,” (3) the defendant’s “use began after the [trade dress] became famous,” and (4) the defendant’s use of the trade dress is “likely to cause dilution by blurring” or by “tarnishment.”
  • 15 U.S.C. §1125(c)(2)(A): A trademark dilution claim is limited to “famous marks,” which are marks that are “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”
  • 15 U.S.C. §1125(c)(4)(A): The party asserting protection bears the burden of showing the “claimed trade dress, taken as a whole, is not functional and is famous.”
  • 15 U.S.C. §1125(c)(4)(B): if a product design includes registered marks, the party must prove that the “unregistered matter, taken as a whole, is famous separate and apart from” the registered marks.
  • 15 U.S.C. §1125(c)(1): .. fame must already be established at the time the junior user begins to use the mark; dilution can only occur “at any time after the owner’s mark has become famous.”
  • Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1013 (9th Cir. 2004): the initial use of the mark by the junior user demarcates the time at which both fame and consumer use must be established.
  • Thane Int., Inc., v. Trek Bicycle Corp., 305 F.3d 894, 911-12 (9th Cir. 2002) (overturned by statute on other grounds): .. fame requires a high standard of consumer awareness beyond the trademark owner’s specific market—the mark should be a “household name” or “part of the collective national consciousness.”


A. The ’381 Patent

1. Prior Art
  • Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 622 (Fed. Cir. 1985); Allied Colloids Inc. v. American Cyanamid Co., 64 F.3d 1570, 1574 (Fed. Cir. 1995): Whether a reference may be considered prior art under § 102 is a question of law, based upon underlying factual determinations
  • Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1373 (Fed. Cir. 1998): the uncorroborated oral testimony of interested Flowertree witnesses as to 102(a) prior art was insufficient evidence to invalidate the patent
  • Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1368 (Fed. Cir. 1999): “corroboration is required of any witness whose testimony alone is asserted to invalidate a patent, regardless of his or her level of interest.”
  • Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334, 1339 (Fed. Cir. 2001) (citing Apotex USA, Inc. v. Merck & Co., 254 F.3d 1031, 1037-39 (Fed. Cir. 2001): If the patentee carries this burden of production, the challenger may rebut the evidence of abandonment, suppression, or concealment, with clear and convincing evidence to the contrary.”
  • Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (citing Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993)): Corroboration for an invention date is required “where a party seeks to show conception through the oral testimony of an inventor.”
  • Mahurkar, 79 F.3d at 1577 (citing Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 60 (1923)): This requirement arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent.”
2. Anticipation
  • Bristol-Myers Squibb Co. v Ben Venue Labs., Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001): “if each and every limitation is found either expressly or inherently in a single prior art reference.”
  • Green Edge Enterprises, LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1297 (Fed. Cir. 2010): Whether a patent is anticipated is a question of fact.
  • SRAM Corp. v. AD-II Eng’g, Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006): In assessing whether a patent claim is anticipated at summary judgment, the evidence is viewed “through the prism of the evidentiary standard of proof that would pertain at a trial on the merits.”

B. The ’915 Patent

  • Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999): Summary judgment of non-infringement is a two-step analysis. “First, the claims of the patent must be construed to determine their scope. Second, a determination must be made as to whether the properly construed claims read on the accused device.”
1. Claim Construction
  • Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)): “[i]t is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’”
  • Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996); see also Phillips, 415 F.3d at 1324: In order to construe the meaning of a disputed term, courts generally begin by examining intrinsic evidence (including the claims, the specification, and, if in evidence, the prosecution history) before turning to extrinsic evidence (e.g., expert testimony, dictionaries, and treatises).
  • Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370 (1996): The claims must be read “in view of the specification, of which they are a part.”
  • Phillips, 415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582)" The specification is “‘always highly relevant’” and “‘[u]sually [] dispositive; it is the single best guide to the meaning of a disputed term,’”
  • Phillips, 415 F.3d at 1318. Id. at 1317-18: ..types of extrinsic evidence are “less significant than the intrinsic record” and “less reliable than the patent and its prosecution history in determining how to read claim terms.”
2. Non-Infringement
  • PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998): “the task of determining whether the construed claim reads on the accused product is for the finder of fact.”
  • Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1302 (Fed. Cir. 2011): ...the infringement question collapses into one of claim construction only where the parties agree that the accused product infringes under one claim construction and that the accused product does not infringe under an alternative claim construction.
  • Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 38 (1997); Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1317 (Fed. Cir. 2003): ...substantially the same function in substantially the same way to obtain substantially the same result.”
  • Lockheed Martin, 324 F.3d at 1321: Courts apply the function-way-result analysis to each limitation of a claim, and there can be no infringement “if even one limitation of a claim or its equivalent is not present in the accused device.”

C. The ’607 Patent

  • In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009): “Obviousness is a question of law based on underlying findings of fact.”
  • KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)); Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1332 (Fed. Cir. 2012): The underlying factual inquiries are: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the art; and (4) any relevant secondary considerations, such as commercial success, long felt but unsolved needs, and the failure of others.
  • KSR, 550 U.S. at 418: “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”

D. The ’163 Patent

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