Apple Inc. v. Samsung Electronics Co. Ltd. et al, Docket No. 5:11-cv-01846 (N.D. Cal. Apr 15, 2011), Court Docket
Multiple Documents Part Description 1 18 pages 2 Exhibit 4 to the Cashman Declaration 3 Exhibit 14 to the Cashman Declaration 4 Exhibit 15 to the Cashman Declaration 5 Exhibit 17 to the Cashman Declaration 6 Exhibit 18 to the Cashman Declaration 7 Exhibit 20 to the Cashman Declaration 8 Exhibit 63 to the Cashman Declaration 9 Exhibit 64 to the Cashman Declaration 10 Exhibit 65 to the Cashman Declaration 11 Exhibit 66 to the Cashman Declaration
© 2013 Bloomberg Finance L.P. All rights reserved. For terms of service see bloomberglaw.com // PAGE 1 Document Link: http://www.bloomberglaw.com/ms/document/X1Q6LJBLEO82?documentName=1372.xml Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page1 of 18
1 QUINN EMANUEL URQUHART & SULLIVAN, LLP Charles K. Verhoeven (Cal. Bar No. 170151) [email protected] 50 California Street, 22nd Floor San Francisco, California 94111 Telephone: (415) 875-6600 Facsimile: (415) 875-6700
Kevin P.B. Johnson (Cal. Bar No. 177129) [email protected] Victoria F. Maroulis (Cal. Bar No. 202603) [email protected] 555 Twin Dolphin Drive 5th Floor Redwood Shores, California 94065 Telephone: (650) 801-5000 Facsimile: (650) 801-5100 Michael T. Zeller (Cal. Bar No. 196417) [email protected] 865 S. Figueroa St., 10th Floor Los Angeles, California 90017 Telephone: (213) 443-3000 Facsimile: (213) 443-3100
Attorneys for SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC. and SAMSUNG TELECOMMUNICATIONS AMERICA, LLC
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION APPLE INC., a California corporation, CASE NO. 11-cv-01846-LHK
Plaintiff, SAMSUNG’S OPENING MEMORANDUM REGARDING CLAIM CONSTRUCTION vs.
SAMSUNG ELECTRONICS CO., LTD., a Date: July 18, 2012 Korean business entity; SAMSUNG Time: 2:00 pm ELECTRONICS AMERICA, INC., a New Place: Courtroom 8, 4th Floor York corporation; SAMSUNG Judge: Hon. Lucy H. Koh TELECOMMUNICATIONS AMERICA, LLC, a Delaware limited liability company, HIGHLIGHTED VERSION Defendants.
02198.51855/4808331.1 Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page2 of 18
1 TABLE OF CONTENTS
2 Page 3 ARGUMENT ...... 1 4 I. THE D‟889 PATENT ...... 2 5 A. The D‟889 Design Is Limited ...... 2 6 1. The D‟889 May Not Claim Concepts Or Ideas ...... 2 7 2. Prior Art References Limit D‟889 ...... 3 8 3. D‟889 Does Not Protect Functional Aspects ...... 5 9 B. D‟889 Does Not Depict An Uninterrupted Flat Front Face ...... 5 10 C. Apple Has Admitted That Its D‟889 Patent Should be Narrowly Construed ...... 6 11 D. The Scope of The D‟889 ...... 8 12 II. THE D‟087 AND D‟677 PATENTS ...... 8 13 A. D‟087 and D‟677 Are Limited ...... 8 14 1. The D‟087 and D‟677 May Not Claim General Concepts ...... 8 15 2. Prior Art References Limit D‟087 and D‟677 ...... 9 16 3. Apple‟s Other Admissions Limit D‟087 and D‟677 ...... 10 17 4. The D‟087 and D‟677 Do Not Protect Functional Aspects ...... 11 18 5. The Scope of The D‟087 and D‟677 ...... 12 19 III. THE D‟305 AND D‟334 PATENTS ...... 13 20 A. The D‟305 and D‟334 Designs Must be Narrowly Construed ...... 13 21 1. The D‟305 and D‟334 Do Not Cover General Concepts or Ideas ...... 13 22 2. The D‟305 and D‟334 Patents Must Be Construed in Light of Prior 23 Art ...... 13 24 3. The D‟305 and D‟334 Do Not Protect Functional Components ...... 14 25 4. The Scope of the D‟305 and D‟334 ...... 15
26 27 28 02198.51855/4808331.1 -i- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page3 of 18
1 TABLE OF AUTHORITIES
2 Page 3 Cases 4 Amazon.com, Inc. v. Barnesandnoble.com, Inc., 5 239 F.3d 1343 (Fed. Cir. 2001) ...... 3 6 Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365 (Fed. Cir. 2006) ...... 5 7 Apple Computer, Inc. v. Microsoft Corp., 8 35 F.3d 1435 (9th Cir. 1994) ...... 13
9 Apple, Inc. v. Samsung Electronics Co., Ltd., No. 2012-1105, 2012 WL. 1662048 (Fed. Cir. May 14, 2012) ...... 2, 3, 5, 9 10 Bilski v. Kappos, 11 130 S. Ct. 3218 (2010) ...... 1 12 Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996) ...... 1, 2 13 Egyptian Goddess, Inc. v. Swisa, Inc., 14 543 F.3d 665 (Fed. Cir. 2008) ...... 1, 2 15 International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) ...... 3 16 L.A. Gear, Inc. v. Thom McAn Shoe Co., 17 988 F.2d 1117 (Fed. Cir. 1993) ...... 2 18 In re Mann, 861 F.2d 1581 (Fed. Cir. 1988) ...... 1, 3, 8 19 Miller v. Eagle Mfg. Co., 20 151 U.S. 186 (1894) ...... 7 21 OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997) ...... 1, 13 22 Richardson v. Stanley Works, Inc., 23 597 F.3d 1288 (Fed. Cir. 2010) ...... 2 24 Statutes 25 35 U.S.C. § 171 ...... 1, 2, 7, 10 26 37 C.F.R. 1.63(a)(4) ...... 7, 10 27
28 02198.51855/4808331.1 -ii- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page4 of 18
1 ARGUMENT 2 Apple argues that it has exclusive rights to basic design ideas and would have the jury 3 compare the figures of its design patents to Samsung‟s accused products without the guidance of a 4 judicial claim construction. Any protection afforded to Apple‟s design patents, however, is more 5 limited than Apple asserts and than an unguided view of the figures might suggest. That is 6 especially true because the relevant field has long been crowded with rectangular shaped 7 electronic devices with rounded corners, and even Apple now concedes that key features are 8 essential to the use of smartphones and therefore must be excluded as functional from the
9 construction. Claim construction by the Court will be essential to avoid jury confusion and error. 10 First, contrary to Apple‟s constructions, design patents do not protect “general design 11 concepts” depicted in their figures, but only their “overall ornamental visual impression.” OddzOn 12 Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) (“We agree with the district 13 court‟s claim construction, which properly limits the scope of the patent to its overall ornamental 14 visual impression, rather than to the broader general design concept of a rocket-like tossing ball.”); 15 see also Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 104 (Fed. Cir. 1996); In re Mann,
16 861 F.2d 1581 (Fed. Cir. 1988) (“Design patents have almost no scope”). Apple‟s designs are, 17 by its own account, “minimalist” and devoid of ornamentation. See Am. Compl. ¶ 1. Overbroad 18 protection of any design philosophy and concepts inherent in Apple‟s claimed designs is not only 19 legally impermissible under design patent law, but it would improperly grant monopoly protection 20 to an unpatentable abstract idea. Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010). 21 Second, because design patent law protects only “new” and “original” ornamental designs,
22 35 U.S.C. § 171, the scope of a design claim must be viewed “in the context of the prior art.”
23 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008) (en banc). “[W]hen 24 the claimed design is close to the prior art designs, small differences between the accused design 25 and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.” 26 Id. (italics added). Further, differences “that might not be noticeable in the abstract can become 27 significant to the hypothetical ordinary observer who is conversant with the prior art.” Id. at 678. 28 Thus, when “a field is crowded with many references” relating to the design of the same type of 02198.51855/4808331.1 -1- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page5 of 18
1 article, a design patent‟s “scope of protection” is limited to a more “narrow range”. Id. at 676
2 (quoting Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)). 3 Third, because design patent law protects only “ornamental” designs, 35 U.S.C. § 171, any 4 functional aspects must be “factored out” when a design patent is construed and infringement 5 analysis is conducted. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010); 6 Dkt. 449 at 14-15 (Court following Richardson). Apple has now conceded that key features are 7 essential to the use of the devices depicted in the patents, and these features must be excluded 8 from any protection afforded the patents when they are compared to Samsung‟s accused devices.
9 I. THE D’889 PATENT 10 A. The D’889 Design Is Limited 11 The D‟889 patent claims the design of an entire electronic device. Declaration of Adam 12 Cashman (“Cashman Decl.”), Ex. 1. All views of the device as shown must be included in its 13 construction. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed. Cir. 1993) 14 (“the patented design is viewed in its entirety, as it is claimed”). Further, because “[s]urface 15 shading is also necessary to distinguish between any open and solid areas of the article,” MPEP
16 1503.02, ¶15.48, the circular and rectangular shapes on Figures 6 and 8 respectively (even if 17 claimed) are not openings or holes in the surface, but instead are two-dimensional features.
18 1. The D’889 May Not Claim Concepts Or Ideas 19 Based on Apple‟s requested construction, this Court previously described the D‟889 as “a 20 broad, simple design that gives the overall visual impression of a rectangular shape with four 21 evenly rounded corners, a flat glass-like surface without any ornamentation and a rim surrounding 22 the front surface. The back is a flat panel that rounds up near the edges. The overall design
23 creates a thin form factor. The screen takes up most of the space on the front of the design.” 24 Dkt. No. 452 at 40. The Federal Circuit ruled this was error in the invalidity context because it 25 “viewed the various designs from too high a level of abstraction” and “construed [the] claimed 26 design too broadly”. Apple, Inc. v. Samsung Electronics Co., Ltd., No. 2012-1105, 2012 WL 27 1662048, at *13 (Fed. Cir. May 14, 2012) (quoting Durling, 101 F.3d at 104). Because the test 28 for infringement mirrors the test for invalidity, the Federal Circuit‟s construction equally applies 02198.51855/4808331.1 -2- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page6 of 18
1 to the infringement analysis. See International Seaway Trading Corp. v. Walgreens Corp., 589
2 F.3d 1233, 1239 (Fed. Cir. 2009) (“That which infringes, if later, would anticipate, if earlier.”) 3 (quoting Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889)); Amazon.com, Inc. v. 4 Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent may not, like a „nose 5 of wax,‟ be twisted one way to avoid anticipation and another to find infringement.”) (internal 6 citation omitted). The D‟889 accordingly should not be construed in the manner Apple has 7 advocated and the Federal Circuit has considered overbroad, but instead should make clear that the 8 patent does not and cannot protect general concepts like “a rectangular tablet with four evenly
9 rounded corners and a flat back” or “thin form factor.” Apple v. Samsung, 2012 WL 1662048, at 10 *13 (“Rather than looking to the „general concept‟ of a tablet, the district court should have 11 focused on the distinctive „visual appearances‟ of the reference and the claimed design.”).
12 2. Prior Art References Limit D’889 13 The D‟889 must be construed in light of the prior art. For example, U.S. D500,037 14 (“D‟037”), filed September 3, 2002 and issued to Bloomberg LP on December 21, 2004, is a pre- 15 D‟889 design for a flat panel display. Cashman Decl., Ex. 2. The D‟037 has nearly the same
16 rectangular shape as the D‟889, nearly the same rounded corners as the D‟889, a flat, transparent 17 or reflective front surface running from edge to edge on the front of the device without 18 ornamentation, a rim surrounding the front surface that is formed by the back of the device 19 curving upward to create a single-piece housing, a symmetrical and smooth form, a flat back, and 20 a similar profile. 21 The D‟037 design is a proper reference for D‟889, which claims a design for an 22 “Electronic Device,” without limitation. The D‟889 file history confirms that the design was not
23 just for a tablet device, but also a display or screen that could be coupled to a computing device. 24 See Cashman Decl. Ex. 3 at APLPROS0000010190. Indeed, the D‟889 itself originated from a 25 laptop computer display. Id. Ex. 4 at 61:3-8; 208:9-24; 209:14-210:2. The D‟037 is entitled 26 “Bezel-less Flat Panel Display” and shows a display screen that has a transparent front surface. 27 The related utility patent, US 6,919,678, filed on the same day by the same inventors, shows that 28 the front face of the display is a sheet of clear glass or plastic that has a transparent portion over 02198.51855/4808331.1 -3- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page7 of 18
1 the active display area and a mask behind the glass that borders the display area. See id. Ex. 5, at
2 column 5, line 53 to column 6, line 31. Further, Figure 3 of D‟037 and Figure 9 of the „678 show 3 parallel exploded views depicting the transparent or reflective top surface and uniform mask 4 border around the edges of the display area. See id. The following comparisons illustrate the 5 point: 6 7 8
9 10 11 12 13 14 15
16 17 18 19 20 21 22
23 24 25 26 27 Many other prior art designs share the visual traits of the D‟889 as claimed by Apple. See 28 Cashman Decl. Exs. 6-13. Indeed, Apple has sought to distinguish those references based on 02198.51855/4808331.1 -4- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page8 of 18
1 differences that include the addition of “other visual elements” on the back surface or disclose
2 different aspect ratios. Id. Ex. 14, at ¶¶ 104, 110, 117; see also Apple, Inc., 2012 WL 1662048, at 3 *12. Because those differences must equally apply to any infringement analysis, the D‟889 4 construction must focus the jury on these differences from the prior art when it makes its 5 infringement comparisons as well. Apple also has distinguished the D‟889 design as disclosing 6 minimal ornamentation, with no protrusions such as buttons or holes. See Dkt. 86, at 14; Dkt. 90, 7 ¶ 46; Cashman Decl. Ex. 14, at ¶¶ 111-112, 117, 247; see also Apple, Inc., 2012 WL 1662048, at 8 *12. In addition, the figures show that the D‟889 design is comprised of a one-piece housing that
9 make up the back and relatively thick sides of the device and that receives the separate flat front 10 face that is shown as transparent or reflective. Cashman Decl. Ex. 1.
11 3. D’889 Does Not Protect Functional Aspects 12 After first denying it, Apple‟s expert Peter Bressler now concedes that having a display is 13 essential to the purpose and use of a smartphone and that it is “critically important” to have a 14 transparent cover directly over the display for such devices. Cashman Decl. Ex. 15, at 784:17- 15 785:8, 782:16-783:4. Obviously, the same is true of tablet computers. This Court has noted
16 that “several aspects of the D‟889 patent” are functional, including that (i) the tablet‟s size must 17 allow portability, and (ii) it must have a “relatively large screen” that encompasses a “large portion 18 of the front face of the product.” Dkt. 449 at 39-40.1 The D‟889 construction must direct the jury 19 to factor out those characteristics in deciding infringement.
20 B. D’889 Does Not Depict An Uninterrupted Flat Front Face 21 Apple argues that the front face of the D‟889 design extends from edge-to-edge without 22 interruption. Discovery has now shown this to be wrong. After Samsung moved to compel it,
23 Apple produced a prototype or mockup, known as the “035.” Cashman Decl. Ex. 16. As Apple
24 1 As the Court is aware, Samsung has argued that functionality for design patents is not limited to features that are “essential” to the use or purpose of an article, but also extends to 25 features that “affect” the article‟s “cost or quality.” Amini Innovation Corp. v. Anthony California, 26 Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2006). To avoid burdening the Court, and without waiving its position on that score, however, Samsung limits its functionality discussion for current claim 27 construction purposes in this brief only to those features that are “essential” in light of the Court‟s previous ruling regarding design patent functionality. See Docket No. 449, at 13-15. 28 02198.51855/4808331.1 -5- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page9 of 18
1 has now admitted, the figures in the D‟889 were drawn to depict the 035 mockup; the 035
2 embodies the D‟889; and Apple submitted photographs of the 035 to the PTO with its D‟889 3 application claiming that it depicted the D‟889 design. Cashman Decl. Ex. 3 at 4 APLPROS0000010190; Ex. 17, at 185:10-188:14; Ex. 18, at 95:5-21, 98:7-104:3; Ex. 19; Ex. 20, 5 at 102:5-10, 103:15-104:4, 117:25-119:9, 121:21-122:16. 6 The 035 shows a prominent, intentional gap between the outer edge of the glass surface on 7 the front and the frame – a “gap” that Apple inventors admit the D‟889‟s Figures “reflect” by the 8 use of bold ink as shown:
9 10 11 12 13 14 15
16 17 2 18 See id, Ex. 17, at 192:23-193:6. 19 C. Apple Has Admitted That Its D’889 Patent Should be Narrowly Construed 20 Other Apple admissions demonstrate that the D‟889 does not include a continuous flat 21 front surface. In 2008 and 2009, years after the D‟889 issued, Apple submitted applications for 22 the D‟677 and D‟678. The PTO initially rejected both as obvious in light of prior art. To
23 overcome this objection, Apple asserted that its D‟677 and D‟678 designs were distinctive over 24 the prior art because they did not disclose “a substantially continuous transparent surface on an 25 electronic device and the substantially smooth or flush transition between the display screen and
26 2 Apple‟s insistence that photographs of the 035 were cancelled by the PTO (Dkt. 1033-2, at 27 8) misses the point. The 035‟s visual appearance matters because it embodies the D‟889, which was drawn based on it, not because the 035 was or was not separately patentable from D‟889. 28 02198.51855/4808331.1 -6- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page10 of 18
1 the rest of the front face of the device[.]” Cashman Decl. Ex. 21 at APLPROS0000011937; Ex. 22
2 at APL-ITC7960000003884. Because the D‟889 was cited as prior art to the D‟677 and D‟678 3 designs, the D‟889 necessarily must exclude the features Apple represented to the PTO had not 4 previously been disclosed, namely, the “substantially continuous transparent surface” and a 5 “substantially smooth or flush transition between the display screen and the rest of the front face 6 of the device.” 7 Moreover, years after the D‟889 issued, Apple filed several design patent applications that 8 claim designs for electronic devices with an overall rectangular shape, evenly rounded corners, a
9 flat front face covered by a clear or transparent material stretching from edge to edge of the face of 10 the device and a thin form factor – features that Apple now claims were disclosed by the D‟889: 11 12 13 14 15
16 17 18 19 20 21 22
23
24 See Cashman Decl., Exs. 23-25. Apple swore under oath in each of these applications that the 25 claimed designs were “new” and “original” over the prior art, including the D‟889. Id.; see 35 26 U.S.C. § 171; 37 CFR 1.63(a)(4). Thus, by its own statements to the PTO, Apple recognized that 27 the D‟889 does not extend to such designs. See 35 U.S.C. § 171; Miller v. Eagle Mfg. Co., 151 28 02198.51855/4808331.1 -7- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page11 of 18
1 U.S. 186, 198 (1894) (“no patent can issue for an invention actually covered by a former patent,
2 especially to the same patentee.”); Cashman Decl. Ex. 20 at 237:11-16 (Apple employee 3 responsible for Apple‟s design patent portfolio acknowledging awareness that Apple “can‟t get 4 more than one design patent for what is substantially or essentially the same design.”). 5 In short, contrary to Apple‟s contentions, the front face of the D‟889 does not show an 6 uninterrupted, continuous glass surface running from edge to edge, but instead depicts a gap 7 between the glass surface and surrounding frame. Nor do Apple‟s iPad devices embody the 8 D‟889. Those devices instead are the subject of separate design patents and applications which
9 Apple swore to the PTO were new and original designs over the D‟889.
10 D. The Scope of The D’889 11 The Court accordingly should construe the D‟889 as follows: 12 The D‟889 is for an ornamental electronic device design that (i) has the shape that is shown in all views of the figures, with the corner radii, proportions and relative 13 thick sides that are shown in those figures, (ii) has a uniform gap around the entire front face between the front face surface and the frame, (iii) has no ornamentation, 14 protrusions or holes on any surface and (iv) has a single frame that forms the back and sides of the device in the manner and proportions shown in the figures. In 15 addition, the D‟889 does not give Apple rights to a large display screen that encompasses a large portion of the front face of the product, to the use of a 16 transparent cover over the display or to the size and proportions that allow for the portability of tablet computer devices. 17 II. THE D’087 AND D’677 PATENTS 18 A. D’087 and D’677 Are Limited 19 1. The D’087 and D’677 May Not Claim General Concepts 20 Based on Apple‟s arguments, this Court had construed these design patents as disclosing: 21 a flat front surface with four evenly rounded corners with an inset rectangular 22 display screen centered on the front surface that leaves very narrow borders on either side of the display screen and substantial borders above and below the 23 display screen. The D‟087 patent has a horizontal speaker slot centered on the front surface. The front surface is also substantially free of additional ornamentation 24 outside of an optional button centrally located below the display . . . The D‟677 patent is substantially the same as the D‟087 patent, and discloses an additional 25 element of a black transparent and glass-like front surface. 26 Dkt. 449 at 20-21. The Federal Circuit employed a more particularized approach in evaluating 27 anticipation of the D‟087, however, finding that the D‟087‟s “perfectly flat” front face sufficed to 28 distinguish it from the prior art‟s “arched, convex” face at the top and bottom (as seen in side 02198.51855/4808331.1 -8- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page12 of 18
1 view). Apple, Inc., 2012 WL 1662048, at *9. That construction must apply equally to the
2 infringement analysis, and Apple‟s claim of rights to minimalist electronic device designs using 3 rectangles with rounded corners and similarly broad design concepts is untenable. 4 The D‟087 shows no oblique line shading. It thus claims an opaque, rather than a 5 transparent or reflective, front surface. MPEP 1503.02 (“Oblique line shading must be used to 6 show transparent, translucent and highly polished or reflective surfaces, such as a mirror.”) 7 (emphasis added); Dkt. 997-02, at 10 (Apple citing and relying on this MPEP provision for this 8 same point); Cashman Decl. Ex. 15 at 751:15-22; Ex. 14, at ¶ 124 (Apple‟s expert opining that
9 lack of oblique lines in border disclosed by prior art signifies lack of transparent material). The 10 D‟087 also depicts a completely flush, flat front surface, such that the front surface and the top 11 bezel surface are level and co-planar. Cashman Decl. Ex. 14, at ¶ 198. According to Apple, 12 such a completely flat front face is a “major design choice” that distinguishes its designs from the 13 prior art. Id. Ex. 29 at 2038:2-2039:1; see also id. Ex. 14, at ¶ 117. Further, as noted, “[s]urface 14 shading is also necessary to distinguish between any open and solid areas of the article,” MPEP 15 1503.02, ¶15.48, and thus the lozenge-shaped feature near the top and the circular feature near the
16 bottom of the front face are not openings or holes in the surface, but instead represent two- 17 dimensional features on the front surface. 18 The D‟677 claims only the front face. Dkt. 449 at 16-17. It shows a transparent, 19 reflective front surface that is black and uniform in color across the entire front surface. There is 20 no surface shading on the lozenge shape, which therefore does not depict an open hole. MPEP 21 1503.02, ¶15.48. The circular feature is depicted with broken lines and not claimed.
22 2. Prior Art References Limit D’087 and D’677 23 Under the law, the D‟087 and D‟677 are limited by the numerous prior art references in the 24 crowded field of electronic device design. These references show that designs with generally 25 rectangular shapes, rounded corners, mask areas and other elements depicted in Apple‟s design 26 patents were common: 27 28 02198.51855/4808331.1 -9- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page13 of 18
1
2 3 4 5 6 7
8 See Cashman Decl., Exs. 26, 30-34. In the invalidity context, Apple has sought to distinguish the 9 prior art based on what it says are “key differences” that the ordinary observer would discern 10 between its designs and the prior art, including (i) the shape and radii of the corners, see id. Ex. 14 11 at ¶¶ 147, 156, 161; (ii) the size of the lateral borders on either side of the display (id. ¶¶ 70, 87, 12 163, 170, 178, 180, 182, 204), (iii) the height to width ratio of the front face (id. ¶¶ 67, 75, 135, 13 163, 164, 170, 206), (iv) the curvature on the top and bottom edges (id. ¶¶ 147, 180), (v) the size 14 and placement of the speaker slot (id. ¶¶ 67, 83, 184, 198), (vi) the relative size of the display 15 screen (id. ¶¶ 170, 178, 180), (vii) the shape and uniformity of the bezel (id. ¶¶ 83, 193, 198, 206, 16 207), (viii) whether the front face rests sub-flush to the bezel instead of flush (id. ¶ 198), and (ix) 17 the presence of buttons and other ornamentation, including soft keys, on the lower face of the 18 device (id. ¶¶ 178, 180, 184, 198, 204, 232). As shown by the authorities cited previously, such 19 differences must therefore be applied equally to the scope of Apple‟s design patents in construing 20 them for infringement purposes as well. 21 3. Apple’s Other Admissions Limit D’087 and D’677 22 Apple has obtained dozens of design patents designs that purportedly embody its various 23 iPhone products. In doing so, Apple swore that these designs were “new” and “original” over the 24 prior art, including D‟087 and D‟677. See 35 U.S.C. § 171; 37 CFR 1.63(a)(4). These included 25 each of the following:3 26
27 3 Cashman Decl. Exs. 35-61. 28 02198.51855/4808331.1 -10- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page14 of 18
1
2 3 4 5 6 7 8
9 10 11 12 Moreover, the D‟677 cites as prior art Apple‟s separate application that led to the D‟678. 13 Cashman Dec. Ex. 21. That patent is identical to D‟677, apart from D‟677‟s black front surface: 14
15
16
17
18
19
20
21
22 The only thing that could make the D‟677 distinct from the D‟678 to justify a separate patent is its 23 black surface, showing that such a surface is an integral part of the claimed design. 24 4. The D’087 and D’677 Do Not Protect Functional Aspects 25 The Court previously found, with respect to the D‟087 and D‟677 designs, that “[i] a size 26 that can be handheld, [ii] a screen that encompasses a large portion of the front face of the 27 smartphone, and [iii] a speaker on the upper portion of the front face of the product” are each 28 02198.51855/4808331.1 -11- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page15 of 18
1 “dictated by” the devices‟ function. Dkt. 449, at 15. Apple‟s expert now admits that having a
2 display, having a transparent cover directly above the display and having the receiver hole located 3 in the upper portion of the front face are essential to the use of a smartphone. Cashman Decl. Ex. 4 15, at 782:16-783:4, 784:17-785:8, 785:18-786:1.
5 5. The Scope of The D’087 and D’677 6 Thus, the Court should construe the D‟087 as follows: 7 The D‟087 is for an ornamental electronic device design that has (i) the shape that is shown in all views of the figures, with the four equally rounded corner radii and 8 proportions that are shown in those figures, (ii) an opaque, non-reflective front surface that is without any hole or opening, (iii) a prominent, uniform bezel that has 9 equally rounded corner radii and is completely flush with the remainder of the front surface, and (vi) no ornamentation except for one or two of the following: 10 (a) interior borders that are narrow on the side and otherwise are in the proportions shown in the figures, (b) a circular shaped, two-dimensional surface decoration 11 centered near the bottom of the front face or (c) a two-dimensional lozenge shaped surface decoration that is of the shape and proportions shown in the figures and is 12 in the center location on the front face as shown in the figures.4 In addition, the D‟087 does not give Apple rights to a size that can be handheld, a large screen on 13 the front face of a smartphone, a transparent cover over the display or a speaker on the upper portion of the front face. 14 The Court should instruct on the D‟677 as follows: 15 The D‟677 is for an ornamental electronic device design that has (i) the shape that 16 is shown in all views of the figures, with the four equally rounded corner radii and proportions that are shown in those figures, (ii) a reflective front surface that is 17 entirely flat, is without any hole or opening and is the same uniform black color across the entire front surface and (iv) no ornamentation except for (a) interior 18 borders that are narrow on the side and otherwise are in the proportions shown in the figures, and (b) a two-dimensional lozenge shaped surface decoration that is of 19 the shape and proportions shown in the figures and is in the center location on the front face as shown in the figures. In addition, the D‟677 does not give Apple rights 20 to a size that can be handheld, a large screen on the front face of a smartphone, a transparent cover over the display or a speaker on the upper portion of the front 21 face.5 22
23
24 4 The sources for each element of this construction, in addition to the discussion above, include: (i) Figures 1, 3; (ii) Figures 5,6; (iii) Figures 7,8; (iv) Figures 9, 11; (v) Figures 13, 14; 25 (vi) Figures 15, 16; (vii) Figures 17, 19; (viii) Figures 21, 22; (ix) Figures 23, 24; (x) Figures 25, 26 27; (xi) Figures 29, 30; (xii) Figures 31, 33; (xiii) Figures 35, 36; (xiv) Figures 37, 38; (xv) Figures 39, 40; (xvi) Figures 41, 43; (xvii) Figures 45, 46; (xviii) Figures 47, 48. 27 5 The sources for each element of this construction, in addition to the discussion above, include: (i) Figures 1, 3; (ii) Figures 5, 6; (iii) Figures 7, 8. 28 02198.51855/4808331.1 -12- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page16 of 18
1 III. THE D’305 AND D’334 PATENTS
2 A. The D’305 and D’334 Designs Must be Narrowly Construed 3 1. The D’305 and D’334 Do Not Cover General Concepts or Ideas 4 These Apple design patents cannot cover the general concept of a GUI – a monopoly 5 Apple sought years ago under copyright law and that the courts rejected. Apple Computer, Inc. v. 6 Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994). Just as no one can claim a monopoly over 7 the abstract idea of “iconic representation of familiar objects from the office environment,” id. at 8 1443-34, the use of colorful square icons arranged in a grid to enable user interaction is not
9 protectable. OddzOn, 122 F.3d at 1405 (no protection for “the broader general design concept”).
10 2. The D’305 and D’334 Patents Must Be Construed in Light of Prior Art 11 D‟305 and D‟334 must be limited in light of the many GUI prior art references, including: 12 13 14 15
16 17 18 19 20 21 Cashman Decl. Ex. 63. 22 That Apple obtained separate design patents for its D‟305 and D‟334 designs also shows 23 the importance of even minor differences. These separate design patents differ in that the D‟334 24 shows a partial fifth row of icons and two small dots above the bottom row, while the D‟305 does 25 not. Apple‟s claim that such variations entitle it to separate patents without double patenting 26 highlights the importance of even minor variations. Indeed, in response to the PTO‟s rejection of 27 its D627,790 patent as obvious in light of the prior art because icons have long been laid out in a 28 02198.51855/4808331.1 -13- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page17 of 18
1 grid pattern, Apple claimed that the matrix of sixteen rounded squares giving the appearance of a
2 “missing row” of icons between the third and fourth rows of its design distinguished it from the 3 prior art. See Cashman Decl. Ex. 62, at APLPROS0000012230. The D‟305 patent also discloses 4 sixteen rounded squares giving the appearance of a missing row, so the D‟305 patent must be 5 construed narrowly to avoid reading on the D‟790 patent or the prior art.
6 3. The D’305 and D’334 Do Not Protect Functional Components 7 The visual impression created by the D‟305 and D‟334 patents must exclude functional 8 elements essential for a smartphone GUI. Any smartphone GUI must necessarily be designed for
9 devices that are small enough to be handheld. Dkt. 449, at 15. The use of icons as metaphors to 10 represent applications and commands is therefore necessary given the spatial restrictions for a 11 hand-held phone GUI. As Apple‟s designers admit, icons are “the most simple visual” metaphor 12 to communicate an application to the user. Cashman Decl. Ex. 65, at 65:18-67:21. It is essential 13 that these icons be arranged within the confines of the active display area in an fashion 14 comprehensible to the user. Imran Chaudhri, the named inventor on Apple‟s D‟305, D‟334, and 15 D‟790 patents, conceded that he was aware of no other arrangement of icons that was as effective
16 as rows and columns, and acknowledged, as did the PTO, that the prior art disclosed a matrix of 17 square icons arranged in a grid. Id. Ex. 64, at 133:14-153:4, 137:2-138:20, 152:4-16; 156:3- 18 159:6; see also id. Ex. 65, at 136:11-13. 19 In addition, a GUI designed for a smartphone also must take into account the fact that users 20 often operate the device with only one hand. The most popular and important features of the 21 phone must therefore be accessible during one-handed use. As Apple‟s named inventor, Mr. 22 Chaudhri, explained, a static row of icons at the bottom of the screen – the “dock” – gave the user
23 “quicker access” to those key icons. Id. Ex. 64, at 133:14-135:4. Finally, as a device that is 24 battery powered and designed for the purpose of connecting to cellular or other wireless networks, 25 the user must be able to obtain updated information regarding battery life, signal strength and 26 network information. The status bar located at the top of the screen is not only known in the prior 27 art, but also delivers this essential information. Ex. 63, at 20. 28 02198.51855/4808331.1 -14- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356 Filed07/26/12 Page18 of 18
1 Thus, Apple‟s GUI patents should not be construed to include the elements that were
2 known in the prior art and functional: (i) the use of icons as metaphors for applications, features, 3 and commands; (ii) the layout of those icons in a grid pattern (i.e., columns and rows); (iii) a 4 “dock” of icons at the bottom of the screen; and (iv) a status bar.
5 4. The Scope of the D’305 and D’334 6 Accordingly, the Court should construe the GUI design patents as follows: 7 The D‟305 is for an ornamental graphical user interface design that (i) has the uniform icon shape and order shown in all views of the figures, with the corner 8 radii and proportions shown in those figures, (ii) in which at least some icons that are lighter in color near the top than near the bottom as shown in the figures, (iii) 9 has a black background except for a divided black/gray background for the dock row, and (iv) has four rows of four icons each, with an empty row between the third 10 row and the dock row as shown in the figures. In addition, the D‟305 patent does not give Apple rights to the use of icons, pictures or text associated with icons, a 11 grid pattern for the arrangement of icons, use of equidistant rows and columns, a dock row on the bottom or a status bar. 12 The D‟334 is for an ornamental graphical user interface design that (i) has the 13 uniform icon shape and order shown in all views of the figures, with the corner radii and proportions shown in those figures, (ii) in which at least some icons that 14 are lighter in shading near the top than near the bottom as shown in the figures, (iii) has a black background except for a divided black/gray background for the dock 15 row, (iv) has four rows of four icons each, with a row of two or three icons between the third row and the dock row as shown in the figures and (v) has two plain dots 16 between the fourth row and the dock row in the location shown in the figures. In addition, the D‟305 patent does not give Apple rights to the use of icons, pictures or 17 text associated with icons, a grid pattern for the arrangement of icons, use of equidistant rows and columns, a dock row on the bottom, dots for page indicators 18 or a status bar at the top. 19 See Cashman Decl. Ex. 66, at ¶¶34-35. 20 DATED: June 12, 2012 QUINN EMANUEL URQUHART & SULLIVAN, LLP 21
22 By /s/ Victoria Maroulis 23 Charles K. Verhoeven Kevin P.B. Johnson 24 Victoria F. Maroulis Michael T. Zeller 25 Attorneys for SAMSUNG ELECTRONICS CO., 26 LTD., SAMSUNG ELECTRONICS AMERICA, INC., and SAMSUNG 27 TELECOMMUNICATIONS AMERICA, LLC 28 02198.51855/4808331.1 -15- Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF
Case5:11-cv-01846-LHK Document1356-1 Filed07/26/12 Page1 of 13
EXHIBIT 4 FILED UNDER SEAL
Case5:11-cv-01846-LHK Document1356-1 Filed07/26/12 Page2 of 13 Attorneys' Eyes Only
Page 1 1 UNITED STATES INTERNATIONAL TRADE COMMISSION 2 WASHINGTON, D.C.
3
4 In the Matter of: ) 5 Certain Electronic Digital ) 6 Media Devices and ) NO. 337-TA-796 7 Components Thereof ) 8 ------) 9 )
10
11
12
13 *** 14 ATTORNEYS' EYES ONLY 15 PURSUANT TO THE PROTECTIVE ORDER 16 ***
17
18 VIDEOTAPED DEPOSITION OF DAVID MASAMI BUNGO 19 SAN JOSE, CALIFORNIA 20 TUESDAY, MARCH 27, 2012
21
22
23 Reported By: 24 Yvonne Fennelly, CCRR, CSR No. 5495 25 JOB NO. 47856
TSG Reporting - Worldwide - 877-702-9580 Case5:11-cv-01846-LHK Document1356-1 Filed07/26/12 Page3 of 13 Attorneys' Eyes Only
Page 2 1 MARCH 27, 2012 2 9:27 A.M.
3
4 Videotaped deposition of DAVID MASAMI 5 BUNGO, held at the Fairmont Hotel, 170 S. Market 6 Street, San Jose, California, pursuant to 7 Subpoena, before Yvonne Fennelly, CCRR, CSR 8 5495.
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
TSG Reporting - Worldwide - 877-702-9580 Case5:11-cv-01846-LHK Document1356-1 Filed07/26/12 Page4 of 13 Attorneys' Eyes Only
Page 3 1 A P P E A R A N C E S 2 MORRISON & FOERSTER LLP 3 Attorneys for Complainant 4 425 Market Street, 34th Floor 5 San Francisco, California 94105 6 BY: WESLEY E. OVERSON, Esq. 7 (415) 268-6096 8 (415) 268-7522 9 [email protected]
10
11 QUINN EMANUEL URQUHART & SULLIVAN, LLP 12 Attorneys for Respondent 13 865 S. Figueroa Street 14 10th Floor 15 Los Angeles, California 90017 16 BY: MICHAEL T. ZELLER, Esq. 17 (213) 443-3000 18 [email protected]
19
20 VIDEOGRAPHER: Aric Kerhoulas
21
22
23
24
25
TSG Reporting - Worldwide - 877-702-9580 Case5:11-cv-01846-LHK Document1356-1 Filed07/26/12 Page5 of 13 Attorneys' Eyes Only
Page 60 1 the top or the front of the device? 2 MR. OVERSON: Objection; vague. 3 THE WITNESS: They all had an edge, a 4 bezel. 5 BY MR. ZELLER: 6 Q. And when you say "bezel" in this 7 context, are you talking about a surround on the 8 front face? 9 A. Yeah, it was like this laptop had a 10 plastic around the display. 11 Q. Looking here a moment at the '889 12 design patent, Exhibit 2, do you have any 13 knowledge or information as to what, if 14 anything, was new or the original about this 15 design back in the 2002 or 2003 time period? 16 MR. OVERSON: Objection; foundation, 17 speculation, calls for a legal conclusion. 18 THE WITNESS: I don't know anything 19 about this patent, actually. 20 BY MR. ZELLER: 21 Q. And, I take it, from looking at it, 22 there is nothing that you see in terms of this 23 design that strikes you as being new or original 24 back in the time period of 2003 or 2004; is that 25 correct?
TSG Reporting - Worldwide - 877-702-9580 Case5:11-cv-01846-LHK Document1356-1 Filed07/26/12 Page6 of 13 Attorneys' Eyes Only
Page 61 1 MR. OVERSON: Same objections. 2 THE WITNESS: I wouldn't know. 3 BY MR. ZELLER: 4 Q. The tablet computers that you worked 5 on as part of Q79 had their origins in the iBook 6 design? 7 MR. OVERSON: Objection; foundation. 8 THE WITNESS: Yes. 9 BY MR. ZELLER: 10 Q. And the models and prototypes that 11 you talked about from Q79 that use the iBook 12 components, they use the screen of it? 13 A. I don't believe so. 14 Q. What were the components that were 15 used from the iBooks? 16 A. The main logic board. 17 MR. ZELLER: If we could maybe get 18 that, you know, that white one that we were 19 talking about earlier, show him that one. 20 MR. OVERSON: Could we go off the 21 record? 22 THE VIDEOGRAPHER: Going off the 23 record, the time is 10:30 a.m. 24 (Discussion off the record.) 25 THE VIDEOGRAPHER: This marks the end
TSG Reporting - Worldwide - 877-702-9580 Case5:11-cv-01846-LHK Document1356-1 Filed07/26/12 Page7 of 13 Attorneys' Eyes Only
Page 62 1 of Disk 1. We'll go off the record. The time 2 is 10:31 a.m. 3 (Recess taken.) 4 THE VIDEOGRAPHER: This marks the 5 beginning of Disk 2, Volume, I in the deposition 6 of David Bungo. We're on the record. The time 7 is 10:37 a.m. 8 MR. ZELLER: Please mark as Exhibit 3 9 a multi-page document bearing Bates numbers 10 APLNDC0000101322 through 101364. The first page 11 is an e-mail entitled, Q79 Exec Review Slide 12 Presentation, from the witness dated 13 February 25th, 2004. 14 (Document marked Exhibit 3 15 for identification.) 16 BY MR. ZELLER: 17 Q. And please take a look at Exhibit 3, 18 and let me know if this is something you 19 recognize. 20 You've had a chance to look at 21 Exhibit 3? 22 A. Yes. 23 Q. Do you recognize Exhibit 3 as an 24 e-mail that you sent in the February of 2004, 25 time period with an attachment?
TSG Reporting - Worldwide - 877-702-9580 Case5:11-cv-01846-LHK Document1356-1 Filed07/26/12 Page8 of 13 Attorneys' Eyes Only
Page 207 1 the Q72 iBook; right? 2 MR. OVERSON: Objection; asked and 3 answered, misstates the testimony. 4 THE WITNESS: I'm not sure you can 5 make that conclusion. 6 BY MR. ZELLER: 7 Q. Well, again, I'm not asking about 8 what I can conclude or what anyone else can 9 conclude. I'm trying to find out your 10 understanding about this, and this is why I'm 11 not trying to pester you or harass you, I'm just 12 trying to make sure, because every time you're 13 kind of shifting it away from your 14 understanding, so let me try it again. 15 So now, so you're saying it could 16 mean something and it could mean something else, 17 and I'm just trying to find out your 18 understanding, so let me try and ask it in a 19 slightly different way. 20 Based on your knowledge and 21 information about everything you know about the 22 Q79 project, is it your understanding that this 23 reference here, when it says, Design based on 24 Q72 iBook, this page here, 1328, is saying that 25 that includes, it's not limited to, but it
TSG Reporting - Worldwide - 877-702-9580 Case5:11-cv-01846-LHK Document1356-1 Filed07/26/12 Page9 of 13 Attorneys' Eyes Only
Page 208 1 includes the Q72 iBook enclosure, serving as the 2 basis for the Q79 enclosure design? 3 MR. OVERSON: Objection; asked and 4 answered, foundation, vague. 5 THE WITNESS: The Q72 was a totally 6 different object. It had a keyboard and was 7 different. 8 BY MR. ZELLER: 9 Q. Well, focusing on the display screen 10 for the Q72 iBook -- 11 A. Uh-huh. 12 Q. -- and setting aside the keyboard, 13 did you see any resemblance between the 14 appearance of the Q72 iBook display screen 15 component and the external appearance, this 16 enclosure, for Q79? 17 MR. OVERSON: Objection; asked and 18 answered, foundation, vague. 19 THE WITNESS: So if you want to limit 20 it just to the display portion only? 21 BY MR. ZELLER: 22 Q. Right. 23 A. Other than the size, and the Q79 does 24 resemble the display portion of the Q72 iBook. 25 Q. And, in fact, here on this document,
TSG Reporting - Worldwide - 877-702-9580 Case5:11-cv-01846-LHK Document1356-1 Filed07/26/12 Page10 of 13 Attorneys' Eyes Only
Page 209 1 1328, what it's referencing is the same thing 2 you're saying right here, which is that the 3 design for the Q79 was based on the Q72 iBook 4 display, but with reduced size and power? 5 MR. OVERSON: Objection; misstates 6 the document, asked and answered several times. 7 THE WITNESS: Yeah, it doesn't say 8 "display" on here. 9 BY MR. ZELLER: 10 Q. But that's how you understand it; 11 right? I'm trying to gain your understanding of 12 what this document is. 13 MR. OVERSON: Same objections. 14 BY MR. ZELLER: 15 Q. And you understand what it's saying 16 here, that the design for the Q79 is based on 17 the Q72 iBook, but with reduced size and power, 18 it's saying here that the display portion for 19 the Q72 iBook is the basis for the Q79 design, 20 but with, as you mentioned, reduced size and 21 power? 22 MR. OVERSON: Objection; misstates 23 the document, asked and answered, argumentative, 24 badgering the witness, foundation. 25 THE WITNESS: If you limit it solely
TSG Reporting - Worldwide - 877-702-9580 Case5:11-cv-01846-LHK Document1356-1 Filed07/26/12 Page11 of 13 Attorneys' Eyes Only
Page 210 1 to the display, then there is some resemblance, 2 yes. 3 BY MR. ZELLER: 4 Q. And do you understand this statement 5 when it's saying here that the design for the 6 Q79 is based on the Q72 iBook but with reduced 7 size and power, it's referring to that display 8 portion of the Q72 iBook? 9 MR. OVERSON: Objection. Same 10 objections; asked and answered several times, 11 foundation. 12 BY MR. ZELLER: 13 Q. I'm sorry, I couldn't hear. 14 A. I don't know that. 15 MR. ZELLER: If we can have those two 16 tangibles we had earlier. 17 MR. OVERSON: Should we go off the 18 record? 19 THE VIDEOGRAPHER: We'll go off the 20 record. Time is 2:58 p.m. 21 (Recess taken.) 22 THE VIDEOGRAPHER: We're on the 23 record. The time is 3:01 p.m. 24 BY MR. ZELLER: 25 Q. So I'm going to show you again Apple
TSG Reporting - Worldwide - 877-702-9580 Case5:11-cv-01846-LHK Document1356-1 Filed07/26/12 Page12 of 13 Attorneys' Eyes Only
Page 211 1 Proto 0791 that we had talked about a little bit 2 earlier today. 3 A. Okay. 4 Q. And does the display portion of what 5 you have there, as this prototype, look like the 6 iBook display? 7 MR. OVERSON: Objection; vague. 8 THE WITNESS: It's definitely a lot 9 thicker than an iBook display. And the XY looks 10 smaller than what I remember. 11 BY MR. ZELLER: 12 Q. And other than those dimensions, 13 those differences in dimensions that you 14 mentioned, does it resemble the Q72 iBook 15 display? 16 MR. OVERSON: Objection; vague. 17 THE WITNESS: I think it kind of 18 resembles it, yes. There is some resemblance. 19 BY MR. ZELLER: 20 Q. And I'm going to show you what we 21 showed you previously as Apple Proto 035. And 22 I'll hand that to you. 23 And as we talked about earlier, you 24 said that the prototypes that you saw did not 25 have that gap area that runs the perimeter of
TSG Reporting - Worldwide - 877-702-9580 Case5:11-cv-01846-LHK Document1356-1 Filed07/26/12 Page13 of 13 Attorneys' Eyes Only
Page 259 1 Q. What was your role in that project? 2 A. It was to manage the project from a 3 logistical and administrative standpoint, kind 4 of a coordinations role, and set up meetings and 5 presentations and so forth. 6 MR. OVERSON: Thanks. I have no 7 further questions. 8 MR. ZELLER: Thank you. 9 THE VIDEOGRAPHER: This marks the end 10 of Disk 4, and will conclude the deposition for 11 today. All disks will be held by TSG. 12 We're off the record, the time is 13 4:09 p.m. 14 (Time noted: 4:09 p.m.)
15
16
17
18
19
20
21 ______22 DAVID MASAMI BUNGO
23
24 Subscribed and sworn to before me 25 this ______day of ______, 2012.
TSG Reporting - Worldwide - 877-702-9580 Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page1 of 33
EXHIBIT 14 FILED UNDER SEAL
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page2 of 33
1
2 3
4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION 7 APPLE INC., a California corporation, Case No. 11-cv-01846-LHK
8 Plaintiff, REBUTTAL EXPERT REPORT 9 v. OF PETER W. BRESSLER, FIDSA 10 SAMSUNG ELECTRONICS CO., LTD., A Korean business entity; SAMSUNG 11 ELECTRONICS AMERICA, INC., a New York corporation; SAMSUNG 12 TELECOMMUNICATIONS AMERICA, LLC, a Delaware limited liability company, 13 Defendants. 14
15 **CONFIDENTIAL – CONTAINS MATERIAL DESIGNATED AS HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY PURSUANT TO A PROTECTIVE 16 ORDER** 17 18 19 20 21 22 23 24 25 26 27 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page3 of 33
1 67. The D’677 patent is further distinguished from the JP’638 Patent based on 2 additional differences, including the smaller speaker slot depicted in the JP’638 Patent, which is 3 narrower relative to the overall design than the speaker slot depicted in the D’677 patent, and the 4 relative narrowness of the front face of the JP’638 design as compared to the D’677 design. 5 Mr. Sherman concedes these differences. (Sherman Report at 7.) 6 68. As a result of Mr. Sherman’s erroneous analysis, key differences between the 7 JP’638 design’s front surface and the corresponding portions of the D’677 patent were ignored: 8 (1) the JP’638 design’s significant camber; (2) its lack of a continuous front surface covered 9 entirely by a single piece of material; (2) its lack of edge-to-edge transparency across the front 10 surface; and (4) its lack of a black color designation. These differences would be readily noticed 11 by the ordinary observer and given significant weight in a visual comparison. Based on the 12 contrast in overall visual impressions, it is my opinion that an ordinary observer would not find 13 the D’677 design to be substantially the same as the JP’638 design.6 14 69. JP’221 Patent. I also disagree with Mr. Sherman that the JP’221 patent 15 anticipates the D’677 design. In particular, there’s no indication in the JP’221 reference that 16 there is a continuous and transparent surface covering the entire front face of the device. Rather, 17 JP’221 shows an opaque black border around a matte gray screen. Moreover, despite 18 Mr. Sherman’s assertion otherwise (Sherman Report at 34), there is no indication that any kind of 19 transparent surface stretches over the gray display area. Accordingly, the JP’221 Patent does not 20 disclose a continuous transparent front surface that extends over the entire front face of the
21 device. 22 23 24 6 Mr. Sherman’s analysis also refers to the Sharp 825SH product as the implementation of the 25 JP’638 design. I am informed, however, that the Sharp 825SH product was not announced and released until 2008, after the D’677 patent had been filed in 2007 and is not prior art. Moreover, I find that there 26 are significant differences between the JP’638 design and the Sharp 825SH phone that make it clear that the latter is not an accurate representation of the JP’638 design. Most significantly, the Sharp phone has 27 much less camber to its front surface when compared to the JP’638 design, and the Sharp phone appears to use a black-colored transparent front surface, which is not indicated in the JP’638 design. 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 25
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page4 of 33
1 70. Also, the lateral borders of the design in the JP’221 patent are noticeably wider 2 than the lateral borders depicted in the D’677 patent. 3 71. Accordingly, Mr. Sherman’s analysis ignores that a distinctive element of the 4 D’677 design is entirely missing from the JP’221 reference—a continuous, black-colored, 5 transparent edge-to-edge surface. This difference alone would be readily noticed by the ordinary 6 observer and given significant weight in a visual comparison. Based on the contrast in overall 7 visual impressions, it is my opinion that an ordinary observer would not find the D’677 design to 8 be substantially the same as the JP’221 design. 9 72. D’889 patent. As explained above, Mr. Sherman does not opine that an ordinary 10 observer would find the D’677 design to be substantially the same as the D’889 design. Nor does 11 Mr. Sherman opine that he finds the D’677 design to be substantially the same as the D’889 12 design. When the ordinary observer test is applied, I believe that an ordinary observer would not 13 find the D’677 design to be substantially the same as the D’889 design. 14 73. Mr. Sherman’s analysis of the D’889 patent relates primarily to the flat, 15 continuous, and transparent front surface of the D’889 design. Mr. Sherman, however, ignores a 16 number of differences between the D’677 design and the D’889 design that are readily apparent 17 to the ordinary observer. 18 D’889 patent D’677 Patent 19 20 21 22
23 24 25 26 27 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 27
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page5 of 33
1 2 3 4 5 6 7
8 75. Moreover, the overall appearance of the D’889 design is also unlike that of the 9 D’677 design because the D’889 design does not have the shape and proportion of a hand-held 10 mobile phone. The portion of Figure 9 of the D’889 patent depicted in dotted lines shows the 11 environment surrounding the design disclosed in the D’889 patent, and illustrates the D’889 12 design in use. The way in which the D’889 design is depicted as being held and used in a 13 person’s hand in Figure 9 underscores that the D’889 design is not of a shape and proportion 14 similar to a hand-held mobile phone. 15 16 17 18 19 20 21 22 23 24
25 76. As noted above, a number of key differences were omitted as a result of 26 Mr. Sherman’s failure to fully analyze the differences between the D’677 patent and the D’889 27 patent. These differences in the D’889 patent would be readily noticed by the ordinary observer 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 29
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page6 of 33
1 83. As is made apparent from the side views, the JP’638 patent shows a significantly 2 cambered, non-flat front surface. The JP’638 surface is surrounded by an enclosure part that 3 tapers toward the top and bottom of the device. The effect of the cambered surface and tapered 4 enclosure part in the JP’638 can be distinctly seen in its profile views, which markedly contrast 5 with the profile views of the D’087 patent. Not only does the cambered surface in the JP’638 6 design produce a very different visual impression than the iPhone design, the thin uniform bezel 7 of the iPhone also starkly contrasts with the thick, tapered enclosure part of the JP’638 design. 8 Moreover, the JP’638 design has a smaller speaker slot that is shifted noticeably higher than the 9 D’087 design. 10 84. Accordingly, it is my opinion that the ordinary observer would not find the overall 11 visual impression of the JP’638 patent substantially the same as that of the D’087 patent. 12 85. JP D1241383 (“the JP’383 patent”). Mr. Sherman alleges that the JP’383 design 13 anticipates the D’087 patent. I disagree. The JP’383 reference includes a number of confusing 14 and inconsistent drawings purportedly disclosing an electronic device inside a transparent cover. 15 Due to the overlapping lines introduced by this design, and apparent contradictions within 16 different figures, an ordinary observer would not be able to ascertain a single design from the 17 JP’383 figures that is substantially the same as the D’087 design.
18 JP’383 Patent D’087 Patent (Selected Embodiments) 19 20 21 22
23 24 25 26 27 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 33
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page7 of 33
1 2 3 4 5 6 7 8
9 87. Similarly, the perspective view below does not disclose any borders on the lateral 10 sides of the display screen. From the perspective views of the JP’383 design, it is clear that the 11 screen effectively cuts across the entire front surface, and that no border is left on the lateral 12 edges of the display. I believe that an ordinary observer would not understand narrow lateral 13 borders to be part of the JP’383 design. 14 15 16 17 18 19 20 21
22 23 88. Accordingly, the JP’383 reference fails to disclose a single consistent design to the 24 ordinary observer. To the extent some figures appear to show a design that Mr. Sherman claims 25 is anticipatory, this position is not corroborated by the other views, and therefore the JP’383 26 reference constitutes an incomplete disclosure that cannot be used to compare against the D’087 27 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 35
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page8 of 33
1 significant that major modifications of each Fidler design would be required to make any of them 2 appear substantially the same as the D’889 design. 3 103. Even if any of the Fidler designs were considered a primary reference against the 4 D’889 design, the unmodified Fidler design would not appear substantially the same to the 5 ordinary observer, as I opined previously. 6 104. Moreover, Mr. Sherman has not identified any secondary reference that he 7 proposes to combine with any of the Fidler designs. Mr. Sherman suggests, however, that 8 modifications “to have the identical profile as the D’889, as well as changes in aspect ratios and 9 width of rims, would have been trivial to someone skilled in the art to produce the design of the 10 D’889.” (Sherman Report at 30.) But Mr. Sherman fails to provide any explanation why the 11 proposed modifications would have been obvious to the ordinary designer at the time the D’889 12 design was invented, or any suggestion that would have caused the ordinary designer to make the 13 proposed modification. Accordingly, Mr. Sherman’s statement is unsupported and conclusory in 14 my opinion. Furthermore, Mr. Sherman’s analysis does not even address the lack of a continuous 15 transparent front surface on the original Fidler designs. Even if one changed the profiles, the 16 aspect ratios, and the width of the rims of the Fidler designs, as suggested by Mr. Sherman, the 17 resulting design would still not have a continuous transparent front surface with a viewable 18 rectangular element as in the D’889 patent. 19 105. As discussed previously, I disagree that the differences between each Fidler design 20 and the D’889 design are trivial. Neither the Fidler 1981 design nor the Fidler 1997 Plexiglas 21 sheet is an executable tablet design at all. They are mere concepts or abstractions that would 22 need to be built from the ground up according to the blueprint of the D’889 design. The Fidler 23 1981 and 1994 tablet mockups feature thick, raised, asymmetrical frames over a display screen, 24 rather than a thin rim surrounding a fully continuous, transparent surface that is without added 25 adornment aside from an underlying rectangular element that marks an even border. This 26 modification alone would not have been trivial or obvious to the designer of ordinary skill in the 27 art at the time the D’889 patent was invented, as evidenced by the fact that Mr. Sherman could 28 not identify a single prior art reference having this particular design feature.
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 42
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page9 of 33
1 106. Therefore, even if one of the Fidler designs were considered a primary reference, it 2 is my opinion that the ordinary designer, at the time the D’889 design was invented, would not 3 have found it obvious to modify any of the Fidler designs to arrive at the D’889 design. 4 107. The D’037 Patent. Due to the same visual differences identified in my foregoing 5 treatment of the D’037 patent, it is my opinion as a designer of ordinary skill in the art that the 6 D’037 design does not present basically the same overall visual impression as the D’889 patent. 7 Notably, the D’037 patent fails to disclose a tablet having a continuous transparent front surface 8 through which a centered rectangular element is visible. The differences between the D’037 9 design and the D’889 patent are significant enough that major modifications to the D’037 design 10 would be required to make it substantially the same as the D’889 design. 11 108. Even if the D’037 patent were considered a primary reference against the D’889 12 design, the unmodified design would not appear substantially the same to the ordinary observer, 13 as I opined previously. 14 109. Moreover, Mr. Sherman has not identified any secondary reference that he 15 proposes to combine with the D’037 design. Mr. Sherman suggests, however, that modifications 16 “to have the identical profile as the D’889, as well as changes in aspect ratios and width of rims, 17 would have been trivial to someone skilled in the art to produce the design of the D’889.” 18 (Sherman Report at 30.) But Mr. Sherman fails to provide any explanation why the proposed 19 modifications would have been obvious to the ordinary designer at the time the D’889 design was 20 invented, or any suggestion that would have caused the ordinary designer to make the proposed 21 modification. Accordingly, Mr. Sherman’s statement is unsupported and conclusory in my 22 opinion. 23 110. As discussed previously, I disagree that the differences between the D’037 design 24 and the D’889 design are trivial. The D’037 design merely discloses a continuous front surface, 25 and not a transparent front surface with a viewable rectangular element marking an even border. 26 Even if one changed the profiles, the aspect ratios, and the width of the rims of the D’037 patent, 27 as suggested by Mr. Sherman, the resulting design would still not have a continuous transparent 28 front surface with a viewable rectangular element as in the D’889 Patent. Moreover, the D’037 is
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 43
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page10 of 33
1 also significantly thicker than the D’889 design, and has straight sides that form an angled edge 2 with the back surface that differs from the D’889 design. It would not have been trivial or 3 obvious to the ordinary designer at the time the D’889 design was invented to change all these 4 features of the D’037 design to the exact features claimed in the D’889 patent. This is evidenced 5 by the fact Mr. Sherman could not identify a single prior art reference having these design 6 features of the D’889 patent. 7 111. Therefore, even if the D’037 patent were considered a primary reference, it is my 8 opinion that the ordinary designer, at the time the D’889 design was invented, would not have 9 found it obvious to modify the D’037 design to arrive at the D’889 design. 10 112. The D’157 Patent. Due to the same visual differences identified in my foregoing 11 treatment of the D’157 patent, it is my opinion as a designer of ordinary skill in the art that the 12 D’157 design does not present basically the same overall visual impression as the D’889 patent. 13 Notably, the D’157 patent fails to disclose a tablet having a continuous transparent front surface 14 through which a centered rectangular element is visible. The differences between the D’157 15 design and the D’889 patent are such that major modifications to the D’157 design would be 16 required to make it look like the D’889 design. 17 113. Even if the D’157 patent were considered a primary reference against the D’889 18 design, the unmodified design would not appear substantially the same to the ordinary observer, 19 as I opined previously. 20 114. Moreover, Mr. Sherman has not identified any secondary reference that he
21 proposes to combine with the D’157 design. Mr. Sherman suggests, however, that modifications 22 “to have the identical profile as the D’889, as well as changes in aspect ratios and width of rims, 23 would have been trivial to someone skilled in the art to produce the design of the D’889.” 24 (Sherman Report at 30.) But Mr. Sherman fails to provide any explanation why the proposed 25 modifications would have been obvious to the ordinary designer at the time the D’889 patent was 26 invented, or any suggestion that would have caused the ordinary designer to make the proposed 27 modification. Accordingly, Mr. Sherman’s statement is unsupported and conclusory in my 28 opinion.
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 44
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page11 of 33
1 115. As discussed previously, I disagree that the differences between the D’157 design 2 and the D’889 design are trivial. At most, the D’157 design discloses an opaque frame 3 surrounding a transparent surface. It does not disclose a transparent front surface with a viewable 4 rectangular element that marks an even border around the element. Even if one changed the 5 profiles, the aspect ratios, and the width of the rims of the D’157 patent, as suggested by 6 Mr. Sherman, the resulting design would still not have a continuous transparent front surface with 7 a viewable rectangular element as in the D’889 Patent. That modification alone would not have 8 been trivial or obvious to the ordinary designer at the time the D’889 patent was invented, as 9 evidenced by Mr. Sherman’s inability to identify a single prior art reference having this feature of 10 the D’889 patent. 11 116. Therefore, even if the D’157 patent were considered a primary reference, it is my 12 opinion that the ordinary designer, at the time the D’889 design was invented, would not have 13 found it obvious to modify the D’157 design to arrive at the D’889 design. 14 117. JP D1142127 (“the JP’127 patent”). Mr. Sherman appears to assert that the 15 JP’127 patent is a primary reference against the D’889 patent. I disagree with any such opinion. 16 The JP’127 design discloses an opaque frame around a center display area. The opaque frame 17 also includes patterns formed of circular holes on the left and right-hand sides. The opaque frame 18 is also raised above the front surface, such that it is visible in the profile views. This visual 19 appearance is distinctly different than that of the D’889 design. Moreover, the JP’127 patent 20 includes a visible notch on its top surface and various other visual elements on its back surface,
21 which do not exist in the D’889 patent. Due to these visual differences, it is my opinion as a 22 designer of ordinary skill in the art that the JP’127 design does not present basically the same 23 overall visual impression as the D’889 patent. The differences between the JP’127 design and the 24 D’889 patent are such that major modifications to the JP’127 design would be required to make it 25 substantially the same as the D’889 design.
26 JP’127 Patent D’889 Patent 27 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 45
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page12 of 33
1 JP’127 Patent D’889 Patent 2 3 4 5 6
7 8 No corresponding view. 9 10 11 12 13 14
15 16 17 18 19
20
21
22 23
24
25
26 27 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 46
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page13 of 33
1 transparent or reflective. The D’802 design includes a protrusion on the top area for what 2 appears to be a pen-holder slot that is located on the front surface. Its side profile also slopes 3 downward and outward from the front surface to a wider base. In light of these visual 4 differences, it is my opinion that the designer of ordinary skill in art would not find the D’802 5 reference to be basically the same in overall visual impression as the D’889 patent. The 6 differences between the D’802 design and the D’889 patent are such that major modifications to 7 the D’802 design would be required to make it be substantially the same as the D’889 design. 8 124. Mr. Sherman appears to assert that the D’802 design includes a transparent surface 9 over the entire front face. I disagree with any such opinion. In particular, Figure 1 of the D’802 10 reference uses only oblique lines in the inner rectangular portion of the front face. Moreover, 11 there is a clear transition in material shown between the inner portion of the patterned border and 12 the flat center surface, which suggests that a different non-transparent material is used for the 13 border. Moreover, the outer bounds of the patterned border show no indication of a transparent 14 surface on top of the patterned border and reaching the edge of the design where the rim slopes. 15 When the perspective view of Figure 1 is viewed in conjunction with the profile views, it appears 16 that no additional transparent surface exists over the patterned border. 17 125. The front view of Figure 6 includes one set of oblique lines that cross over the 18 boundary between the center area and the patterned border. However, given the aforementioned 19 visual cues, it appears to be a contradiction in the drawings. As seen even in Figure 6, there is a 20 clear transition in material between the flat center area and the border region having textured 21 patterns. Moreover, the top two sets of oblique lines in Figure 6 do not cross into the border area 22 and appear situated and lend confusion. Therefore, any interpretation of this one set of oblique 23 lines as disclosing a design having a continuous transparent surface over the rectangular portion 24 and the inner portion of the patterned border would conflict with all of the other visual cues that 25 indicate otherwise. It also would not be an edge-to-edge transparent front surface because the 26 outer boundaries of the patterned border show no indication of a transparent surface. 27 126. Regardless, even if such a continuous transparent front surface existed in the 28 D’802 design, key differences described above in paragraph 125 would remain, and it would not
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 48
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page14 of 33
1 134. Even if the JP’221 design were considered a primary reference for the D’677 2 patent, for the reasons discussed above, the JP’221 design would not appear substantially the 3 same as the D’677 design to an ordinary observer and therefore would not render the D’677 4 patent obvious on its own. Mr. Sherman does not suggest any modifications to the JP’221 design 5 or identify any secondary references for combination with the JP’221 design, so I cannot further 6 rebut his opinion that the JP’221 patent renders the D’677 patent obvious. 7 135. The D’889 Patent. To the extent Mr. Sherman implies that the D’889 patent 8 could be considered a primary reference against the D’677 patent, I disagree. As discussed in 9 detail above, the overall appearance of the D’889 design is significantly different from that of the 10 D’677 patent. In particular, the D’889 patent has a different form factor, different proportions, 11 lacks the unique border configuration of the D’677 design, and is missing a lozenge-shaped slot 12 feature. The D’889 design also lacks the D’677 patent’s black color. The D’889 design cannot 13 be used as a primary reference, because in my opinion, it does not create basically the same visual 14 impression as the D’677 design to the designer of ordinary skill in the art. 15 136. Even if the D’889 design were considered a primary reference for the D’677 16 patent, for the reasons discussed above, the D’889 design would not appear substantially the same 17 as the D’677 design to an ordinary observer and therefore would not render the D’677 patent 18 obvious on its own. Mr. Sherman does not suggest any modifications to the D’889 design or 19 identify any secondary references for combination with the D’889 design, so I cannot further 20 rebut his opinion that the JP’221 patent renders the D’677 patent obvious. 21 137. The JP’638 Patent. To the extent Mr. Sherman implies that the JP’638 patent 22 could be considered a primary reference against the D’677 patent, I disagree. As discussed in 23 detail above, the overall appearance of the JP’638 design is significantly different from that of the 24 D’677 patent. In particular, the JP’638 design lacks a flat, continuous, and edge-to-edge 25 transparent front surface, which is an integral visual element of the D’677 design. The JP’638 26 design cannot be used as a primary reference, because in my opinion, it does not create basically 27 the same visual impression as the D’677 design to the designer of ordinary skill in the art. Major 28 modifications are required to make the JP’638 design look like the D’677 patent.
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 52
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page15 of 33
1 Nokia Fingerprint Phones D’677 Patent 2 3 4 5 6 7 8
9
10 Corresponding views unavailable.
11
12 13 14 15 16 17 18 19
20
21 146. As an initial matter, the disclosure of the Fingerprint phones is incomplete, 22 because a full front view of the “MODO CINEMA” mode of the Fingerprint phone, relied on by 23 Mr. Sherman, is unavailable. But even from the incomplete disclosure, distinctive visual 24 differences are immediately apparent. 25 147. In particular, the Fingerprint phone has a distinctly rounded overall shape. Its top 26 and bottom ends are rounded and its shoulders are gently sloped. This visual impression stands in 27 stark contrast to the straight ends of the D’677 design’s rectangular shape and its evenly curved 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 55
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page16 of 33
1 corners. The Fingerprint phone is also significantly narrower in width in proportion to the D’677 2 design. 3 148. Moreover, the Fingerprint phone does not include any disclosure of a continuous 4 front surface that is transparent from edge-to-edge. The photographs provided by Mr. Sherman 5 do not show such a continuous transparent front surface over the entire front face of the phone. 6 Although I understand that Mr. Vilas-Boas stated in his declaration that such a surface was 7 disclosed, the photographs attached to Mr. Vilas-Boas’s declaration do not show it. (See 8 SAMNDCA00326383-85; SAMNDCA00326380-82.) 9 149. Further differences exist in the geometries shown in the front face of the 10 Fingerprint phone. It is difficult to fully appreciate the appearance of the borders surrounding the 11 display screen in the Fingerprint phone, because no full frontal view of the “MODO CINEMA” 12 mode is shown. But from the perspective view, I ascertain that the display screen is not centered 13 on the front face because the top border is significantly wider than the bottom border. 14 Furthermore, Mr. Sherman admits that the Fingerprint phone has a circle-shaped speaker feature, 15 which looks very different from the lozenge-shaped slot of the D’677 design. 16 150. Any attempt to alter the Fingerprint to make it look like the D’677 design would 17 constitute a major modification. In particular, the overall shape of the phone would have to be 18 made wider and more rectangular, a transparent front surface would have to be added across the 19 entire front face, the display screen would have to be centered, and the speaker feature design 20 would have to be revamped. Accordingly, it is my opinion that, even if a complete disclosure 21 were obtained, the Fingerprint phone design would not appear basically the same in overall visual 22 appearance as the D’677 patent to the designer of ordinary skill in the art. 23 151. Even if the Fingerprint phone were considered a primary reference, the Fingerprint 24 phone design would not appear substantially the same as the D’677 design to an ordinary 25 observer for the reasons discussed above. Therefore, the unmodified Fingerprint phone design 26 would not render the D’677 patent obvious on its own. 27 152. I disagree with Mr. Sherman’s suggestion that it would have been obvious to 28 modify the Fingerprint design to change the speaker opening design to that of the D’677 design.
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 56
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page17 of 33
1 D’590 Patent D’677 patent 2
3 4 5 6 7 8
9 10
11 12
13 14 15 16 17 18 19
20 156. In particular, in the D’590 design, rather than having rounded corners at the top of 21 the flat front surface, two sharp right angles are formed. A number of horizontal lines break the 22 front surface before it continues with a backward leaning slope. 23 157. Despite Mr. Sherman’s description of an “inset display below a flat transparent 24 surface” in the D’590 design, there is in fact no indication of a display screen in that design. 25 (Sherman Report at 55.) As such, the D’590 does not show a rectangular display area centered on 26 the front surface leaving very narrow borders to the left and right, and wide even borders above 27 and below. The D’590 design also fails to disclose the lozenge-shaped speaker slot of the D’677 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 58
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page18 of 33
1 patent. Furthermore, there are two long buttons protruding from the sloped top portion of the 2 D’590 design. The visual appearance of those buttons has no corresponding feature in the D’677 3 patent. The D’590 patent is also missing the black color designation of the D’677 patent. 4 158. Accordingly, it is my opinion that the ordinary designer would not find the D’590 5 patent basically the same in visual appearance as the D’677 patent. Any attempt to add a centered 6 display area, add borders surrounding the display, change the shape of the sloped top, add black 7 color, and remove the protruding buttons, would constitute a major change to the D’590 design’s 8 front surface. 9 159. Even if the D’590 design were considered a primary reference, for the reasons 10 discussed above, the D’590 design would not appear substantially the same as the D’677 design 11 to an ordinary observer and therefore would not render the D’677 patent obvious on its own. 12 160. The only modification Mr. Sherman proposes for the D’590 design is the addition 13 of an “earpiece slot.” But the only rationale that Mr. Sherman provides for adding such a feature 14 is directed to function, i.e., “add an earpiece slot to modify the design for mobile telephone use,” 15 and not visual appearances. Moreover, because Mr. Sherman fails to identify any secondary 16 reference that he proposes to use to modify the D’590 design to add this feature, I am unable to 17 opine on whether the two designs of the alleged combination would be so related as to suggest a 18 modification of the D’590 design. I am also unable to opine on the exact appearance of the 19 design that would result from this modification. 20 161. Even if this hypothetical modification to the D’590 patent were made to add a 21 speaker slot exactly like the D’677 design, it is my opinion that the resulting design would not be 22 viewed by the ordinary observer as substantially the same as the D’677 design. Numerous key 23 differences would remain in the hypothetically modified D’590 design, as discussed in the 24 foregoing, including squared upper corners, a lack of display screen, lack of a black front surface, 25 and an upper portion sloping back from the front with a large horizontal button. 26 162. iRiver U10. To the extent Mr. Sherman implies that the U10 should be considered 27 a primary reference against the D’677 patent, I disagree. Because the U10 design includes 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 59
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page19 of 33
1 163. In particular, the U10 design includes wide borders to the left and right of the 2 screen that create a very different visual impression from the appearance of the D’677 design, 3 which gives the overall visual impression of very narrow lateral borders. Also, the U10 is 4 entirely missing one of the elements of the D’677 design—a lozenge-shaped speaker slot centered 5 in the border region above the display. In terms of form factor, the U10 is also noticeably wider 6 and more square-shaped than the D’677 design. 7 164. Accordingly, it is my opinion that the U10 design would not appear basically the 8 same to the designer of ordinary skill in the art. Any attempt to narrow the U10’s lateral borders, 9 change the proportion of the U10’s overall shape, and add a speaker slot would constitute major 10 modifications to the U10’s front surface. 11 165. Even if the U10 design were considered a primary reference, for the reasons 12 discussed above, the U10 design would not appear substantially the same as the D’677 design to 13 an ordinary observer and therefore would not render the D’677 patent obvious on its own. 14 166. The only modification Mr. Sherman proposes for the U10 design is the addition of 15 an “earpiece slot.” But the only rationale that Mr. Sherman provides for adding such a feature is 16 directed to function, i.e., “add an earpiece slot to modify the design for mobile telephone use,” 17 and not visual appearances. Moreover, because Mr. Sherman fails to identify any secondary 18 reference that he proposes to use to modify the U10 design to add this feature, I am unable to 19 opine on whether the two designs of the alleged combination would be so related as to suggest a 20 modification of the U10 design. I am also unable to opine on the exact appearance of the design 21 that would result from this modification. 22 167. Even if a hypothetical modification to the U10 design were made to add a speaker 23 slot exactly like the D’677 design, it is my opinion that the resulting design would not be viewed 24 by the ordinary observer as substantially the same as the D’677 design. In particular, key 25 differences in the square form factor and distinctly wider lateral borders would remain to render 26 the visual appearance of the modified U10 design significantly different in the eyes of the 27 ordinary observer. 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 61
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page20 of 33
1 168. Additional References. Mr. Sherman cites several more references under the 2 heading “Additional References That Reinforce The Obviousness of D’677.” (Sherman Report at 3 57-65.) Many of these references are not prior art based on Apple’s January 5, 2007 patent filing 4 date or its April 20, 2006 invention date, facts that Mr. Sherman do not dispute. 5 (APLNDC00014230-31; APLNDC00014237-44.) The remaining references in this section in 6 fact underscore the non-obviousness of Apple’s designs. 7 169. F700, Korean design patent KR30-0452985, and D560,192. The application for 8 the KR’985 Patent was not published until August 27, 2007. The D’192 patent was not filed until 9 December 22, 2006. Accordingly, neither reference is prior art to the D’677 patent. Regardless, 10 neither reference discloses a continuous, transparent, and black-colored front surface. 11 Mr. Sherman does not allege a public release date for the supposed embodiment of the KR’986 12 patent—the Samsung F700—but I have been informed that this phone was not announced until 13 February 2007.10 Accordingly, the F700 is also not prior art to Apple’s D’677 patent.11 14 170. Korean design patent KR30-0418547. The KR’547 Patent was first published in 15 July 2006 and thus is not prior art to the D’677 patent. It is therefore inappropriate to factor this 16 patent into an obviousness analysis. But regardless, the KR’547 patent presents a drastically 17 different visual impression than the D’677 patent, with its much squarer form factor, much 18 smaller display area, and wider lateral borders. There is also no black color designation in the 19 KR’547 patent. 20 171. JP D1241383. To the extent Mr. Sherman implies that the JP’383 Patent could be
21 considered a primary reference against the D’677 patent, I disagree. As discussed earlier, the 22 JP’383 patent includes a number of confusing and inconsistent drawings purportedly disclosing 23 an electronic device inside a transparent case. Due to the overlapping lines introduced by this 24 design, and apparent contradictions within different figures, a single design cannot be ascertained
25 10 http://www.phonearena.com/news/Samsung-announces-iPhone-rival---F700-is-5-megapixel- 26 beast_id1768 (APLNDC-Y0000238813-18). 11 Mr. Sherman also cites to Samsung internal documents (SAMNDCA00321457-656) in his 27 report. (Sherman Report at 39-40). These documents are not prior art (allegedly dated July - September 2006) and were not public (marked “Highly Confidential – Attorneys’ Eyes Only”). 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 62
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page21 of 33
1 174. Even if the JP’383 Patent were considered a primary reference, for the reasons 2 discussed above, the JP’383 design would not appear substantially the same as the D’677 design 3 to an ordinary observer and therefore would not render the D’677 patent obvious on its own. 4 175. The only modification Mr. Sherman proposes for the JP’383 design is the addition 5 of an “earpiece slot.” But Mr. Sherman fails to provide any rationale for why the ordinary 6 designer would modify the JP’383 reference in this manner. Moreover, because Mr. Sherman 7 fails to identify any secondary reference that he proposes to use to modify the JP’383 design to 8 add this feature, I am unable to opine on whether the two designs of the alleged combination 9 would be so related as to suggest a modification of the JP’383 design. I am also unable to opine 10 on the exact appearance of the design that would result from this modification. 11 176. Even if this hypothetical modification to the JP’383 design were made to add a 12 speaker slot exactly like the D’677 design, it is my opinion that the resulting design would not be 13 viewed by the ordinary observer as substantially the same as the D’677 design. In particular, the 14 lack of an edge-to-edge transparent and black-colored front surface would render the visual 15 appearance of the modified design not substantially the same as the D’677 design in the eyes of 16 the ordinary observer. 17 177. European Union design rights registration 000569157-0005 & LG Prada (EU 18 Registration 000569157-0005). I am informed that EU Registration 000569157-0005 is not prior 19 art to the D’677 patent. EU Registration 000569157-0005 was not submitted until September 20 2006, five months after the invention date of the design claimed in the D’677 patent. Although
21 Mr. Sherman does not allege a public disclosure date for the LG Prada, I have been informed that 22 the LG Prada was not made public until after Apple’s invention date. 23 178. Regardless, the Prada design presents a very different visual appearance than the 24 D’677 patent. In particular, the Prada’s side borders are wider and contrast with the “big screen” 25 impression given by the D’677 patent. Also, the Prada includes a complicated button 26 arrangement along its bottom that is raised from the front surface and runs the full extent of the 27 bottom border. In contrast, the D’677 patent presents a simple, flat appearance along its bottom 28 border. Moreover, the Prada’s black borders are made of an opaque plastic material that presents
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 65
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page22 of 33
1 a different visual appearance than the transparent surface claimed by the D’677 patent. 2 Accordingly, it is my opinion that the Prada reference would not appear substantially the same to 3 the ordinary observer or basically the same to the designer of ordinary skill in the art. 4 179. These same visual differences apply to the design of the European Registration, 5 which also lacks a transparent and black-colored front surface. Accordingly, it is my opinion that 6 the design of the European Registration would not appear substantially the same to the ordinary 7 observer or basically the same to the designer of ordinary skill in the art. Mr. Sherman does not 8 suggest any modifications to EU Registration 000569157-0005 or the Prada designs or identify 9 any secondary references for combination with the EU Registration 000569157-0005 or the Prada 10 designs so I cannot further rebut his opinion that the EU Registration 000569157-0005 or the 11 Prada designs renders the D’677 patent obvious. 12 180. United States Design Patent D534,516 (the D’516 Patent) & LG Chocolate. 13 Mr. Sherman does not assert that the D’516 Patent or its apparent embodiment, the LG Chocolate, 14 meets the stringent requirements of a primary reference. To the extent Mr. Sherman implies that 15 the D’516 Patent or the LG Chocolate could be considered a primary reference against the D’677 16 patent, I disagree. Neither the D’516 design nor the LG Chocolate creates basically the same 17 visual impression as the D’677 design. The D’516 Patent and the LG Chocolate do not have a 18 centered display screen with balanced borders above and below the screen. Rather, the display 19 screen is aligned closer to the top of the design than to the center. Furthermore, the display 20 screen in the LG designs is proportionally much smaller than the display screen in the D’677
21 design. The side borders to the right and left of the screen in the LG designs are also wider than 22 the D’677 design. Moreover, the top and bottom ends of the Chocolate design are not straight. 23 And the D’516 design lacks black color. There is also substantial ornamentation in the form of a 24 large button in the LG designs. In the Chocolate, this button is metal with a metallic-appearing 25 rim and red marking, and it is surrounded by a number of smaller red buttons on the front surface 26 below the display screen. 27 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 66
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page23 of 33
1 LG Chocolate D’677 patent 2 3 4 5 6 7
8 9 181. Accordingly, it is my opinion that neither of the LG designs would appear 10 basically the same in overall visual impression as the D’677 design to the ordinary designer. 11 Major modifications would be required to make the D’516 design or the LG Chocolate design 12 look like the D’677 patent. Even if the D’516 Patent or the LG Chocolate were considered a 13 primary reference, for the reasons discussed above, neither design would appear substantially the 14 same as the D’677 design to an ordinary observer. 15 182. K3 MP3 Player (the K3). Although Mr. Sherman states that the K3 “became 16 public in 2006” (Sherman Report at 44 ), it appears that the K3 was in fact debuted at the 17 Consumer Electronics Show in January 200712 and publicly released in March 2007.13 18 Accordingly, I am informed that the K3 may not be prior art to the D’677 patent. Even if it were 19 considered, the K3’s lack of a flat front surface, very small display screen located in the upper 20 half of the front face, wide lateral borders around the display, and lack of a speaker slot render the 21 K3 drastically different than the D’677 design. 22 183. JPD1280315 & JPD1295003. JPD1280315 was not publicly available until 23 September 2006, and JPD1295003 was not publicly available until February 2007. Thus, I have
24 12 25 Samsung YP-K3: The K5’s Little Brother, Sans Speaker, Gadgetsportable Media, http://gizmodo.com/218232/samsung-ypk3-the-k5s-little-brother-sans-speaker?tag=gadgetsportablemedia 26 (last visited Apr. 2, 2012). 13 Samsung Media Alerts (Jan. 8, 2007), 27 http://www.samsung.com/us/news/newsRead.do?news_group=productnews&news_type=consumerproduc t&news_ctgry=mp3&news_seq=3483. 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 68
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page24 of 33
1 been informed that these references are not prior art in light of the invention date of the D’677 2 patent and should not be considered. 3 184. Regardless, neither of these references can serve as primary references for the 4 D’677 design. Neither JP reference discloses a continuous and transparent front surface. The 5 JP’315 design includes a non-rectangular shape, a screen that is off-center and lacks a lozenge- 6 shaped speaker element. The JP’003 design includes a number of physical buttons arrayed across 7 the bottom portion, a speaker slot that is shifted all the way to the top of the front face, and an 8 extraneous rounded square feature. The JP’003 design also includes a series of concentric rings 9 on the outer bound of its front face. 10 185. Accordingly, these additional references merely confirm the novelty and 11 nonobviousness of Apple’s D’677 iPhone design. 12 186. Unapplied References. Mr. Sherman lists a number of alleged prior art 13 references in his report that he does not assert as anticipatory references or references that render 14 the D’677 patent obvious. In particular, Mr. Sherman describes the alleged designs for KR30- 15 0394921, Olympus MR500i,14 D500,037, D497,364, and U.S. Patent No. 6,919,678. I disagree 16 with a number of Mr. Sherman’s assertions regarding the visual appearance disclosed by these 17 references. But as Mr. Sherman has not provided any specific opinions as to how these 18 references invalidate the D’677 patent, I am unable to rebut them. I reserve the right, however, to 19 offer such rebuttals if Mr. Sherman later provides specific opinions on how these references 20 invalidate the D’677 patent. 21 22
23 14 As mentioned, Mr. Sherman does not provide any specific opinions that the Olympus MR500i invalidates the D’677 patent. Regardless, I have reviewed photographs and diagrams obtained from 24 Olympus’ web site that show that the MR500i has a wide raised frame around its display screen. Accordingly, the MR500i does not have a flat, continuous, front surface that is transparent from edge-to- 25 edge. See http://www.olympusamerica.com/cpg_section/cpg_archived_product_details.asp?fl=&id=1146; http://www.olympusamerica.com/files/oima_cckb/MR-500i_Basic_Manual_EN_FR_ES.pdf. Thus Mr. 26 Sherman incorrectly asserts that the MR500i has a “transparent flat front face.” (Sherman Report at 36.) Because the MR500i design includes distinct visual differences from the D’677 patent, it fails to create 27 basically the same visual impression as the D’677 design, does not anticipate the D’677 patent, and cannot be used as a primary reference. 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 69
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page25 of 33
1 193. Moreover, Mr. Sherman’s analysis fails to account for the difference in appearance 2 between the thin, continuous, uniform bezel of the D’087 patent, which also has an inwardly 3 sloping profile, and the thicker, significantly tapered appearance of the JP’638 design’s enclosure 4 part. None of the three references suggested by Mr. Sherman contains a bezel element like that of 5 the D’087 patent. 6 194. Furthermore, KR30-0418547 was first published in July 2006, JPD1280315 was 7 not publicly available until September 2006, and JPD1295003 was not publicly available until 8 February 2007. Thus, I have been informed that these references are not prior art in light of the 9 invention date of the D’087 patent and should not be considered in any event. 10 195. Accordingly, even if the JP’638 design were found to be a primary reference, it is 11 my opinion that it would not have been obvious to the ordinary designer to modify the JP’638 12 patent to arrive at the D’087 design, or a design that is substantially the same to the ordinary 13 observer. 14 196. JP D1241383. Due to the inconsistencies set forth in my foregoing analysis of the 15 JP’383 design, it is my opinion that the ordinary designer would not be able to ascertain a single 16 consistent design from that reference. As such, it is an incomplete disclosure that is unsuitable for 17 use as a primary reference. 18 197. JP D1295003. To the extent Mr. Sherman alleges the JP’003 patent as a primary 19 reference, I disagree. The difference in overall visual impression between the JP’003 design and 20 the D’087 patent leads to my opinion that the ordinary designer would not find them to be
21 basically the same.
22 JP’003 Patent D’087 Patent (Selected Embodiments) 23 24 25 26 27 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 71
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page26 of 33
1 JP’003 Patent D’087 Patent (Selected Embodiments) 2 3 4
5 6 7 198. In particular, the JP’003 design shows a front surface that is set significantly below 8 its bezel, unlike the D’087 design, where the bezel and front surface are shown to be flush. The 9 JP’003 design’s bezel is not uniform in appearance. Rather, it appears thinner near the top and 10 bottom of the device. Moreover, a number of concentric rings or steps appear on the inside face 11 of the bezel where it meets the front surface. A prominent row of physical buttons appear across 12 the bottom border of the JP’003 design where the D’087 design is unadorned. The JP’003 design 13 also includes a rounded-square element near the top right of its front face, and its speaker element 14 is located higher up on the front face—immediately under the bezel. For all of these reasons, the 15 JP’003 design presents a very different overall visual impression than the D’087 patent. And 16 major modifications would be required to make the JP’003 design look like the D’087 design. 17 199. Even if the JP’003 design were considered a primary reference, it is my opinion 18 that an ordinary observer would not perceive the JP’003 design to be substantially the same as the 19 D’087 design. Accordingly, the unmodified JP’003 design would not render the D’087 design 20 obvious. 21 200. Mr. Sherman suggests that the JP’003 design can be modified with the Nokia 22 Fingerprint phone design to produce the D’087 design. But Mr. Sherman does not specifically 23 describe what portions of the Fingerprint design he proposes to add to the JP’003 design and what 24 portions of the Fingerprint design he proposes to replace in the JP’003 design. Moreover, 25 Mr. Sherman does not provide any rationale for why the ordinary designer would seek to modify 26 the JP’003 design with the Fingerprint phone design. 27 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 73
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page27 of 33
1 KR’307 Patent D’087 Patent (Selected Embodiments) 2 3 4 5 6 7
8 9 10 11 12 13
14
15 16 17 18
19
20 204. In particular, the front face of the KR’307 patent presents a very different 21 impression than the D’087 design. The KR’307 design has a much smaller screen as a 22 percentage of its front surface, creating top and bottom borders and lateral borders that are 23 significantly wider than the D’087 design. The KR’307 design also has a row of four pronounced 24 physical buttons arrayed along its bottom border. The KR’307 speaker slot is also significantly 25 larger and more complex than its D’087 counterpart. Mr. Sherman further admits that the sunken 26 screen (or raised border) of the KR’307 design is a difference. (Sherman Report at 71.) 27 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 75
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page28 of 33
1 Accordingly, it is my opinion that the designer of ordinary skill would not find the KR’307 2 design basically the same as the D’087 design. 3 205. Even if the KR’307 design were considered a primary reference, it is my opinion 4 that due to the aforementioned differences the ordinary observer would not find the unmodified 5 KR’307 design to be substantially similar to the D’087 design. Moreover, Mr. Sherman does not 6 identify any references that he proposes to combine with the KR’307 design to arrive at the 7 D’087 design, nor does he identify any rationale for why the ordinary designer would modify the 8 KR’307 design to be more like the D’087 design. Accordingly, it is my opinion that it would not 9 have been obvious for the ordinary designer to modify the KR’307 design to arrive at the D’087 10 design. 11 206. Korean design patent KR30-0452985. The application for the KR’985 Patent 12 was not published until August 27, 2007. Accordingly, the KR’985 Patent is not prior art to the 13 D’677 patent and it is improper to consider the KR’985 Patent in determining whether the D’677 14 design is obvious. Regardless, the KR’985 design’s narrow form factor, asymmetrical bezel and 15 off-center screen contribute to an overall impression that is distinctly unlike the D’087 patent. 16 207. Korean design patent KR30-0418547. The KR’547 Patent was first published in 17 July 2006 and thus is not prior art to the D’677 patent. Regardless, the KR’547 patent presents a 18 very different visual impression than the D’087 patent, with its complex, stepped bezel design, 19 concentric rings around the front surface where it meets the bezel, much smaller display area, and 20 much wider borders around the display. Accordingly, it is my opinion that the ordinary designer
21 would not find the KR’547 patent to be basically the same in overall visual appearance as the 22 D’087 patent. 23 208. Even if the KR’547 patent were considered a primary reference, the ordinary 24 observer would not find the unmodified KR’547 design substantially the same as the D’087 25 patent. Therefore, it would not render obvious the D’087 patent by itself. Mr. Sherman does not 26 identify any references that he proposes to combine with the KR’547 design to produce the D’087 27 design, nor does not he provide any rationale for why the ordinary designer would modify the 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 76
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page29 of 33
1 LG Prada D’270 Patent 2 3 4 5 6 7 8
9 10 232. Starting with the front face, the Prada has a prominent row of raised, complex 11 buttons running across the entire bottom of the design. The Prada is entirely missing the angled 12 bezel that surrounds the front surface of the D’270 design. In profile, the Prada has a large 13 metallic band that runs down the middle of its body, and has a thicker, boxier form factor, unlike 14 the thin and smoothly rounded profile of the D’270 patent. Based on the contrasting visual 15 impressions, it is my opinion that the Prada would not appear basically the same in overall 16 impression as the D’270 patent to the ordinary designer. 17 233. Even if the Prada were considered a primary reference, for the reasons discussed 18 above, the unmodified Prada design would not appear substantially the same as the D’270 design 19 to an ordinary observer. Mr. Sherman does not suggest any modifications for the Prada or any 20 secondary references for combination with the Prada to arrive at the D’270 patent. 21 234. JP 1142127. To the extent Mr. Sherman asserts the JP’127 design as a primary 22 reference against the D’270 patent, I disagree. 23 24 25 26 27 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 90
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page30 of 33
1 evidence to show that elements of the exterior design contributed to the commercial success of 2 the iPad, iPhone, and iPod touch. 3 247. As described in my initial Expert Report, the D’889 patent claims an electronic 4 device and the D’889 design is embodied by the iPad 2. Both the D’889 and the iPad 2 have an 5 uninterrupted transparent surface that extends all the way to the perimeter and that is substantially 6 free of added adornment, a uniform mask surrounding the active area of the display behind the 7 transparent front surface, evenly curved corners, a substantially flat back that curves upwards at 8 the side to meet the front plane at an edge, and the appearance of a metallic rim surrounding the 9 front surface. 10 248. Also, as explained in my initial Expert Report, the iPhone design prominently 11 features the front face and bezel. The D’677 patent claims the design for the front face of an 12 electronic device, and that design is embodied in the Apple iPhone (original), iPhone 3G, iPhone 13 3GS, iPhone 4, and iPhone 4S. In particular, the front face of the iPhone (original), iPhone 3G, 14 iPhone 3GS, iPhone 4, and iPhone 4S each have the same overall shape and proportion as the 15 D’677 design. Additionally, each iPhone has a flat, black, transparent, rectangular front surface 16 that runs to the perimeter of the face of the phone. This flat, black, transparent, rectangular front 17 surface is claimed in the D’677 patent. Furthermore, the curved corners on the face of each 18 iPhone have the same proportion as the curved corners depicted in the D’677 patent. The front 19 surfaces of the each iPhone and the claimed D’677 design are substantially free of ornamentation. 20 Moreover, the front face of each iPhone has a rectangular display screen centered on the front 21 surface with very narrow borders on either side of the display screen and substantial borders 22 above and below the display screen. This centered display screen with narrow lateral borders and 23 wider borders above and below is also claimed in the D’677 patent. Each of the iPhones and the 24 patented D’677 design also have a horizontal lozenge-shaped speaker slot horizontally centered 25 on the front surface above the display screen. 26 249. As described in my initial Expert Report, the D’087 patent claims the front face 27 and bezel of an electronic device, and the D’087 design is embodied by the iPhone (original), 28 iPhone 3G, and iPhone 3GS. In particular, the design of the iPhone (original), iPhone 3G, and
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 98
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page31 of 33
1 iPhone 3GS contains a flat rectangular front face substantially free of added adornment, evenly 2 curved corners, and a thin continuous bezel curving in a rounded fashion from the upper extent of 3 the side surface toward the front surface. Moreover, the front face of the iPhone (original), 4 iPhone 3G, and iPhone 3GS has a rectangular display screen centered on the front surface with 5 very narrow borders on either side of the display screen and substantial borders above and below 6 the display screen. This centered display screen with narrow lateral borders and wider borders 7 above and below is also claimed in the D’087 patent. The iPhone (original), iPhone 3G, and 8 iPhone 3GS and the patented D’087 design also has a horizontal lozenge-shaped speaker slot 9 horizontally centered on the front surface above the display screen. 10 250. As described in my initial Expert Report, the D’270 patent claims the design of an 11 electronic device, and the D’270 design is embodied by the iPod touch. In particular, both the 12 D’270 patent and the iPod touch have the same overall shape and proportion in the front, back, 13 and profile views. Just like the D’270 patent, the iPod touch has a flat, clear, rectangular front 14 surface with curved corners. In both the D’270 patent and the iPod touch, the clear surface 15 extends across the front surface to the perimeter, which is also substantially free of added 16 adornment. Both the patented D’270 design and the iPod touch have a rectangular display screen 17 centered on the front surface that leaves very narrow borders on either side of the display screen 18 and wide, balanced borders above and below the display screen. Moreover, both the D’270 19 design and the iPod touch have an angled bezel surrounding the front surface that is continuous 20 and substantially uniform in appearance.
21 b. Industry Praise 22 251. iPad 2. The design of Apple’s iPad line of products has received widespread 23 acclaim. Among other forms of recognition, the iPad received the Red Dot award for Product 24 Design and Best of the Best in 2010,17 a 2011 International Forum (iF) Product Design Award,18 25
26 17 Red Dot, iPad, http://en.red- 27 dot.org/2783.html?cHash=005c9238f0aa9615b2c1026db05140fc&detail=7562. 18 iF, Online Exhibition, http://exhibition.ifdesign.de/entry_search_de.html?search=ipad. 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 99
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page32 of 33
1 d. Tablets Need Not Have a Flat Clear Surface Without Ornamentation 2 319. Mr. Sherman’s argument that tablets need to have a flat and clear surface without 3 ornamentation is also unsupported by the many alternative designs that are commercially 4 available, including Samsung’s own tablet computer that was available before Apple’s iPad. 5 320. Samsung’s Q1 tablet had a recessed screen surrounded by a raised frame, rather 6 than a flat surface. Moreover, the Q1 tablet had an opaque frame with buttons surrounding the 7 display screen instead of a completely clear front surface as in the D’889 design. The Q1 was 8 praised for its “beautiful, featherweight design” with a “sleek case” and that the “[b]uttons around 9 the screen also help [the user] navigate.”75 Many users prefer physical buttons as they provide 10 tactile feedback. 11 321. Furthermore, many other third-party tablet devices have an opaque frame 12 surrounding the display and thus do not have a completely front surface. For instance, the Nook 13 tablet has a gray opaque frame that has a “textured finish” that makes it “feel a little better in your 14 hand.”76 Likewise, the Coby Kyros has an opaque plastic housing that makes the device 15 “sturdy.”77 The Acer Iconia A500 also has a distinctive opaque aluminum casing that wraps 16 around to the front surface. 17 322. Mr. Sherman also argues that the “border around the screen shown in the D’889 18 is functional.” He argues that this border accommodates and hides components and wiring. This 19 argument is incorrect. To the extent the border is used to hide components and wiring, this is an 20 aesthetic – not a functional – consideration. Second, Mr. Sherman’s argument that the border 21 accommodates components and wiring does not explain why the border needs to be uniform as in 22 23
24 75 CNET, “Samsung Q1 Ultramobile PC,” http://reviews.cnet.com/laptops/samsung-q1- ultramobile-pc/4505-3121_7-31781057.html#reviewPage1. 25 76 CNET, “Barnes & Noble Nook Tablet,” http://reviews.cnet.com/tablets/barnes-noble-nook- 26 tablet/4505-3126_7-35059751.html#reviewPage1 77 William Harrel, “Coby Kyros Internet 8” Touch Screen Tablet Review & Ratings,” Computer 27 Shopper, http://computershopper.com/tablets/reviews/coby-kyros-internet-8-touchscreen-tablet- mid8024/%28page%29/. 28
REBUTTAL EXPERT REPORT OF PETER W. BRESSLER, FIDSA Case No. 11 cv-01846-LHK 126
Case5:11-cv-01846-LHK Document1356-2 Filed07/26/12 Page33 of 33 Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page1 of 17
EXHIBIT 15 FILED UNDER SEAL
Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page2 of 17
Page 695 BEFORE THE
UNITED STATES INTERNATIONAL TRADE COMMISSION
______
In the Matter of: ) Investigation No.
CERTAIN ELECTRONIC DIGITAL ) 337-TA-796
MEDIA DEVICES AND )
COMPONENTS THEREOF )
______
Main Hearing Room
United States
International Trade Commission
500 E Street, Southwest
Washington, D.C.
Friday, June 1, 2012
Volume 2
The parties met, pursuant to the notice of the
Judge, at 8:44 a.m.
BEFORE: THE HONORABLE THOMAS B. PENDER Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page3 of 17
Page 696 1 APPEARANCES:
2
3 For Complainant Apple, Inc.:
4 HAROLD J. McELHINNY, ESQ.
5 MICHAEL A. JACOBS, ESQ.
6 RACHEL KREVANS, ESQ.
7 Morrison & Foerster LLP
8 425 Market Street
9 San Francisco, CA 94105
10
11 ALEXANDER J. HADJIS, ESQ.
12 KRISTIN L. YOHANNAN, ESQ.
13 Morrison & Foerster LLP
14 2000 Pennsylvania Avenue, N.W.
15 Washington, D.C. 20006
16
17 CHARLES S. BARQUIST, ESQ.
18 Morrison & Foerster LLP.
19 555 West Fifth Street
20 Los Angeles, CA 90013
21
22
23
24
25 Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page4 of 17
Page 697 1 APPEARANCES (Continued):
2
3 For Respondents Samsung Electronics Co.,
4 Ltd., Samsung Electronics America, Inc., and
5 Samsung Telecommunications America, LLC:
6 CHARLES K. VERHOEVEN, ESQ.
7 Quinn Emanuel Urquhart & Sullivan LLP
8 50 California Street, 22nd Floor
9 San Francisco, CA 94111
10
11 KEVIN P.B. JOHNSON, ESQ.
12 Quinn Emanuel Urquhart & Sullivan LLP
13 555 Twin Dolphin Drive, 5th Floor
14 Redwood Shores, CA 94065
15
16 RYAN S. GOLDSTEIN, ESQ.
17 MICHAEL T. ZELLER, ESQ.
18 Quinn Emanuel Urquhart & Sullivan LLP
19 865 South Figueroa St., 10th Floor.
20 Los Angeles, CA 90017
21
22 ERIC HUANG, ESQ.
23 Quinn Emanuel Urquhart & Sullivan LLP
24 51 Madison Avenue, 22nd Floor
25 New York, New York 10010 Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page5 of 17
Page 698 1 APPEARANCES (Continued):
2
3 For Respondents Samsung Electronics Co.,
4 Ltd., Samsung Electronics America, Inc., and
5 Samsung Telecommunications America, LLC:
6 S. ALEX LASHER, ESQ.
7 PAUL BRINKMAN, ESQ.
8 Quinn Emanuel Urquhart & Sullivan LLP
9 1101 Pennsylvania Avenue
10 Washington, D.C. 20004
11
12 MARC K. WEINSTEIN, ESQ.
13 Quinn Emanuel Urquhart & Sullivan LLP
14 NBF Higiya Building, 25F, 1-1-7
15 Uchisaiwai-cho, Chiyoda-ku,
16 Tokyo, 100-0011, Japan
17
18 For ITC Staff:
19 REGINALD LUCAS, ESQ.
20 Investigative Attorney
21 DAVID LLOYD, ESQ.
22 Supervisory Attorney
23 U.S. International Trade Commission
24 500 E Street, S.W.
25 Washington, D.C. 20436 Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page6 of 17
Page 699 1 APPEARANCES (Continued):
2
3 Attorney-Advisor:
4 GREGORY MOLDAFSKY, ESQ.
5 Attorney-Advisor
6 Office of Administrative Law Judges
7 U.S. International Trade Commission
8 500 E Street, S.W.
9 Washington, D.C. 20436
10
11
12 *** Index appears at end of transcript ***
13
14
15
16
17
18
19
20
21
22
23
24
25 Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page7 of 17
Page 750 1 description, yes. Closer to the end meaning
2 the outsides.
3 JUDGE PENDER: Correct.
4 THE WITNESS: Yes.
5 BY MR. VERHOEVEN:
6 Q. And when you look at D '015, the front
7 surface, do you see oblique line shading?
8 A. I do.
9 Q. And that's to indicate that the front
10 surface is transparent or translucent or highly
11 polished or reflective or something like that?
12 A. I --
13 MR. BARQUIST: Objection, compound,
14 Your Honor.
15 JUDGE PENDER: You know, there's no
16 real objection to compound if you're arguing
17 it's an improper question. We'll see if the
18 witness can answer it or not, you know.
19 THE WITNESS: I believe it fits the
20 description of what those diagonal lines are
21 supposed to represent.
22 BY MR. VERHOEVEN:
23 Q. Thank you, sir.
24 A. Three of those.
25 Q. Thank you, sir. And the D '757 patent Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page8 of 17
Page 751 1 actually does not claim a transparent,
2 translucent or highly polished reflective
3 surface on the front?
4 A. Of the '757?
5 Q. Yes.
6 A. It does not, correct. It does
7 describe a flat surface.
8 Q. Can we go to RDX-49C-12, please.
9 In conducting your analysis of the
10 scope of the '757, you didn't happen to review
11 the Manual of Patent Examining Procedure Rule
12 1503.02, did you?
13 A. No, but I remember seeing the lines
14 you've highlighted.
15 Q. Oh, so you do remember seeing these
16 lines? And I'll read those highlighted lines
17 into the record, Your Honor. "Oblique line
18 shading must be used to show transparent,
19 translucent and highly polished or reflective
20 surfaces such as a mirror."
21 So you were aware of that?
22 A. Yes.
23 Q. Now, can we go back to the slide that
24 was just on, Ryan? So here in '757, it's not
25 claiming that, so that -- it can't be included Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page9 of 17
Page 752 1 in '757, right?
2 MR. BARQUIST: Objection, Your Honor.
3 I mean, I don't know what that question means.
4 Can't be included. But I think it's a
5 misstatement of the law if it's an attempt to
6 state the law.
7 MR. VERHOEVEN: I'll withdraw the
8 question.
9 BY MR. VERHOEVEN:
10 Q. In any event, there is no oblique line
11 shading in '757, right?
12 A. That's correct.
13 Q. But there is on '015, right?
14 A. There appears to be, yes. As I said,
15 I haven't studied the patent in depth in all
16 the views.
17 Q. And if we move on, and you compare
18 both on the left-hand side, both the initial
19 iPhone and D '757, you see a continuous rounded
20 surface or curved surface that goes from the
21 flat front surface to the flat back, do you see
22 that?
23 A. On which one, sir?
24 Q. '757?
25 A. Yes. Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page10 of 17
Page 781 1 some of them required more complicated or less
2 complicated processes. But I didn't analyze
3 them specifically or create documentation that
4 would show substantial analyzation of the
5 engineering.
6 Q. For these phones that you put in your
7 report as alternative designs, you did not do
8 anything specific on each of those phones to
9 determine a comparable manufacturing cost
10 between the different phones, did you, sir?
11 A. No, I did not.
12 Q. And you didn't acquire any data on
13 whether the performance of any of your
14 purported alternatives was degraded by the
15 alternative designs, did you?
16 A. I think that depends on what you mean
17 by performance. If you mean operability, I did
18 check that, and reviewed the phones. If you
19 mean performance in terms of speed or other
20 technical terms, no, I did not analyze that.
21 Q. And you don't have any information for
22 these alternative phones as to whether any
23 product feature affected the quality of the
24 article, correct?
25 A. I have no specific data in that Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page11 of 17
Page 782 1 regard, no.
2 Q. And you also don't have any data on
3 whether your alternative design phones make the
4 device more complicated for the user to use,
5 correct?
6 A. I did review them briefly to get a
7 sense of what the level of operability was, and
8 found them generally comparable, though I
9 didn't get into the detail.
10 Q. And you have no data and didn't review
11 any data on whether your alternative designs
12 make the device more complicated, other than
13 looking at them and thinking about it, right?
14 A. That's correct. I was dealing with
15 the design. With the aesthetic design.
16 Q. Now, in terms of the functionality
17 issue, using the standard that you used in your
18 report, isn't it true that it's your opinion to
19 His Honor that having a transparent cover over
20 the display on a smartphone is not functional?
21 A. No, that is not my opinion. That
22 was -- when it was presented earlier yesterday,
23 it was taken out of context. What -- I believe
24 it is, of course, critically important to have
25 a clear display directly over the -- a clear Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page12 of 17
Page 783 1 portion directly over the display. The size of
2 the display and the location of the display and
3 having it clear all the way out to the edges is
4 certainly not a functional requirement.
5 Q. I'd like to play from your deposition
6 dated April 24th, 2012, an excerpt from page
7 209, lines 9 through 21.
8 (VIDEOTAPE PLAYED AS FOLLOWS:)
9 "QUESTION: Using your definition of
10 functional in your analysis, is the use of a
11 cover that is transparent over a display
12 functional?
13 "ANSWER: I believe it is not
14 exclusively functional.
15 "QUESTION: And therefore, by your
16 definition, it is not functional, correct?
17 "ANSWER: Correct."
18 "Objection.
19 "ANSWER: It is not functional as
20 we've defined it relative to a design patent.
21 (END OF VIDEOTAPED PORTION PLAYED.)
22 BY MR. VERHOEVEN:
23 Q. And you also, using your definition,
24 do not believe that a relatively large display
25 screen is a functional part of a smartphone Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page13 of 17
Page 784 1 design, correct?
2 A. I believe we were talking in the
3 context of the patents that I was analyzing.
4 And there was nothing in the patents that said
5 they were smartphones. So in that context, I
6 think I spoke correctly.
7 Q. Let's play from your April 24th
8 deposition, page 212, lines 7 through 10.
9 (VIDEOTAPE PLAYED AS FOLLOWS:)
10 "QUESTION: In your view, is having a
11 relatively large screen for a smartphone
12 functional, as you've used that term?
13 "ANSWER: As it's defined in my
14 report, no."
15 (END OF VIDEOTAPED PORTION PLAYED.)
16 BY MR. VERHOEVEN:
17 Q. Using your definition of functional,
18 it's your opinion to His Honor that the
19 incorporation of a display element into a
20 smartphone is nonfunctional, correct?
21 A. If you are asking me about a
22 smartphone specifically, having a display is
23 functional. If we're talking about analysis of
24 the '678 patent, which is what I believe we
25 were discussing, there is nothing there that Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page14 of 17
Page 785 1 indicates it's specifically a display, there's
2 nothing claimed that it's specifically a
3 display.
4 Q. So it's your position and opinion that
5 a display element and the use of a display
6 element where related to the '678 patent is a
7 nonfunctional component and consideration,
8 right?
9 JUDGE PENDER: You know, I'm going
10 to -- I anticipate the objection there, and I'm
11 not going to allow the question. First of all,
12 I'm going to say it's asked and answered, and I
13 thought it was answered in quite good
14 precision, Mr. Verhoeven. I don't think you
15 need to go any further.
16 MR. VERHOEVEN: Okay.
17 BY MR. VERHOEVEN:
18 Q. It's your opinion to His Honor that
19 locating a receiver or opening in the upper
20 portion of the front face of a smartphone is
21 not a functional consideration, correct?
22 A. As I was defining the use of
23 functionality, analyzing those patents
24 in -- that's correct. In the general context
25 of, is it a good place for a speaker? It Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page15 of 17
Page 786 1 absolutely is functional.
2 Q. But in your opinion, as you used the
3 term functional?
4 A. Correct.
5 Q. It's your opinion to His Honor that
6 locating a speaker in the upper portion of the
7 front face is not a functional consideration,
8 correct?
9 A. I do not believe its aesthetic
10 location is a functional consideration.
11 MR. VERHOEVEN: Your Honor, if I could
12 have one minute to review my notes.
13 JUDGE PENDER: Please, sir.
14 BY MR. VERHOEVEN:
15 Q. In your view, the location of the
16 speaker or the receiver aperture in the upper
17 portion of the front face of a smartphone is
18 not functional, as you have used that term in
19 your expert report?
20 A. As I have understood the use of that
21 term in analyzing a design patent, I did not
22 believe that its aesthetic location is
23 functional.
24 MR. LUCAS: Your Honor, is it okay if
25 we go back on the confidential record -- I'm Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page16 of 17
Page 787 1 sorry, the public record?
2 MR. VERHOEVEN: Actually, I was just
3 going to say -- thank you, I was just going to
4 say at this time, I pass the witness, Your
5 Honor.
6 JUDGE PENDER: Well, anyway, it's a
7 beautiful time to take a break. We're about 10
8 minutes over, and I've noticed that clock up
9 there is a few minutes fast. So when that
10 clock says 20 of 11, we will return. Thank
11 you.
12 (Whereupon, a short recess was taken.)
13 MR. BARQUIST: Your Honor, you may
14 want to inquire, but Mr. Lucas has told me he
15 doesn't have questions for the witness, so if I
16 may begin redirect.
17 JUDGE PENDER: I'm sorry, I'm not
18 hearing.
19 MR. BARQUIST: You may -- if you want,
20 I can inquire of Mr. Lucas, but he's told me
21 that he does not have cross-examination, so I
22 was prepared to start.
23 JUDGE PENDER: I'll take you at your
24 word, sir.
25 // Case5:11-cv-01846-LHK Document1356-3 Filed07/26/12 Page17 of 17
Page 1047 1 or Wednesday morning and be unhappy about that,
2 okay?
3 MR. JOHNSON: Understood.
4 JUDGE PENDER: Thank you.
5 MR. McELHINNY: Thank you, Your Honor.
6 (Whereupon, at 4:50 p.m., the hearing
7 recessed, to reconvene at 8:45 a.m. on Monday,
8 June 4, 2012.)
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page1 of 17
EXHIBIT 17 FILED UNDER SEAL
Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page2 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 1 1 UNITED STATES DISTRICT COURT 2 NORTHERN DISTRICT OF CALIFORNIA 3 SAN JOSE DIVISION 4 APPLE INC., a California corporation, 5 6 Plaintiff, 7 vs. Case No. 11-CV-01846-LHK 8 SAMSUNG ELECTRONICS CO., LTD., a Korean business entity; 9 SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation; 10 SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, a Delaware 11 limited liability company, 12 Defendants. ------/ 13 14 15 16 17 CONFIDENTIAL ATTORNEYS' EYES ONLY 18 19 VIDEOTAPED DEPOSITION OF DANIELE De IULIIS Redwood Shores, California 20 Friday, October 21, 2011 21 22 Reported by: LORRIE L. MARCHANT, CSR No. 10523, RPR, CRR, CCRR,CLR 23 JOB NO. 43000 24 25
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page3 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 2 1 Friday, October 21, 2011 2 10:13 a.m. 3 4 Videotaped Deposition of DANIELE De 5 IULIIS, held at the offices of Quinn 6 Emanuel Urqhart & Sullivan, LLP, 555 7 Twin Dolphin Drive, Suite 560, Redwood 8 Shores, California, before Lorrie L. 9 Marchant, a Certified Shorthand 10 Reporter, Registered Professional 11 Reporter, Certified Realtime Reporter, 12 California Certified Realtime Reporter 13 and Certified LiveNote Reporter. 14 15 16 17 18 19 20 21 22 23 24 25
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page4 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 3 1 A P P E A R A N C E S: 2 FOR THE PLAINTIFF APPLE INC.: 3 MORRISON & FOERSTER BY: ANDREW E. MONACH, ESQ. 4 425 Market Street San Francisco, California 94105 5 Phone: (415) 268-7588 Fax: (415) 268-7522 6 e-mail: [email protected] 7 FOR THE DEFENDANTS SAMSUNG: 8 QUINN EMANUEL URQUHART & SULLIVAN BY: MARGRET CARUSO, ESQ. 9 SCOTT HALL, ESQ. 555 Twin Dolphin Drive 10 Redwood Shores, California 94065 Phone: (650) 801-5000 11 Fax: (650) 801-5100 e-mail: [email protected] 12 [email protected] 13 ALSO PRESENT: 14 Lisa Olle, Apple Senior Corporate Counsel, Litigation 15 Jason Kocol, Videographer 16 ---oOo--- 17 18 19 20 21 22 23 24 25
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page5 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 4 1 THE VIDEOGRAPHER: This is the start of 2 tape labeled No. 1 of the videotaped deposition of 3 Daniele de Iuliis in the matter Apple, Incorporated 4 versus Samsung Electronics Company, Limited, in the 5 United States District Court, Northern District of 6 California, San Jose Division. Case No. 7 11-CV-01846-LHK. 8 This deposition is being held at 555 Twin 9 Dolphin Drive, Redwood Shores, California, on 10 October 21st, 2011, at approximately 10:13 a.m. My 11 name is Jason Kocol. I'm the legal video specialist 12 from TSG Reporting, Incorporated, headquartered at 13 747 Third Avenue, New York, New York. 14 The court reporter is Lorrie Marchant in 15 association with TSG Reporting. 16 Will counsel please introduce yourselves 17 for the record. 18 MS. CARUSO: Margret Caruso from Quinn, 19 Emanuel, Urquhart, Sullivan for defendant Samsung. 20 MR. MONACH: Andrew Monach, Morrison & 21 Foerster, representing Apple and the witness. 22 THE VIDEOGRAPHER: Will the court reporter 23 please swear in the witness. 24 THE REPORTER: Do you solemnly swear or 25 affirm under the penalties of perjury that the
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page6 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 5 1 testimony you are about to offer will be the truth, 2 the whole truth and nothing but the truth? 3 THE WITNESS: I do. 4 EXAMINATION BY MS. CARUSO 5 BY MS. CARUSO: 6 Q. Good morning. 7 A. Good morning. 8 Q. Have you ever been deposed before? 9 A. I have not. 10 Q. Okay. If at any point during the 11 deposition you would like some more water or would 12 like to take a break, just let me know. We can 13 accommodate that. 14 A. Okay. 15 Q. I just ask that you finish answering 16 whatever question I asked at the time. 17 A. Thank you. 18 Q. Let's just step back a little bit. There's 19 going to be a lot of memory lane for you. If you 20 could tell me a little bit about your education 21 since graduating from high school. 22 A. I graduated from Central School of Art and 23 Design in London in 1983 with a BA in industrial 24 design engineering. I've been a professional since 25 then.
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page7 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 184 1 THE WITNESS: This, I believe, is the power 2 button. 3 BY MS. CARUSO: 4 Q. Is the power button on the iPod touch a 5 continuous form at its top? 6 MR. MONACH: Objection. Vague. 7 THE WITNESS: Help me understand that 8 question. 9 BY MS. CARUSO: 10 Q. So in Figure 7, the figure that is shown in 11 C -- 12 A. Yes. 13 Q. -- has a broken lozenge shape. Do you see 14 that? 15 MR. MONACH: Object to the form of the 16 question. 17 THE WITNESS: I see a lozenge, and it's 18 badly photocopied and -- or what appears to be a 19 lozenge, and that is broken in a couple of places. 20 BY MS. CARUSO: 21 Q. Do you have any understanding of why it's 22 broken in a couple of places? 23 A. I don't understand why it would be broken 24 in a couple of places. 25 Q. You're not aware of any feature of the iPod
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page8 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 185 1 touch that would require depicting this button in 2 this fashion? 3 MR. MONACH: Objection to the extent it 4 lacks foundation. Calls for speculation or calls 5 for a legal conclusion. 6 THE WITNESS: These drawings are drawings 7 made by a patent attorney. I don't know the reasons 8 why they would be drawn in this manner. 9 BY MS. CARUSO: 10 Q. I'm going to hand you something that I 11 think that you've seen before. If you could hold it 12 up for the camera so there's an image of it 13 recorded. 14 Do you have an understanding of what this 15 is? 16 A. This is what I believe to be an early 17 prototype of a tablet we were developing. 18 Q. When you say "we," do you mean the 19 industrial design group of Apple? 20 A. I mean Apple. 21 Q. When was Apple working on developing this 22 tablet? 23 A. To the best of my knowledge -- it was 24 definitely before the iPhone development, and to the 25 best of my knowledge, around 2003.
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page9 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 186 1 Q. Did you work on the design of this tablet? 2 A. I worked alongside my colleagues in the 3 industrial design department as a collective and as 4 a team on this. 5 Q. Approximately how many months did you spend 6 working on this design? 7 A. We spent -- I really don't recall. It's 8 going back a long time. 9 Q. More than three months? 10 A. Yes. I'm guessing. My best guess would be 11 yes, more than three months. 12 Q. Did you create any sketches relating to the 13 development of this tablet design? 14 A. I may have. 15 Q. Is it common that you work on a design for 16 more than three months and don't create a single 17 sketch related to it? 18 MR. MONACH: Objection. Vague. 19 THE WITNESS: I believe I mentioned to you 20 earlier that we tend to go into three dimensions 21 very, very quickly. That's generally how we work. 22 BY MS. CARUSO: 23 Q. Is it common that you work on a design for 24 more than three months and don't create a single 25 sketch related to it?
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page10 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 187 1 MR. MONACH: Objection. Vague. 2 THE WITNESS: It's possible. 3 BY MS. CARUSO: 4 Q. Is it your understanding that you didn't 5 create any sketches relating to tablet design? 6 A. I don't remember. 7 Q. Have you gone back to look through your 8 sketchbooks from the 2003 time period to see if 9 there were any sketches relating to the tablet 10 design? 11 A. I don't remember the dates that were asked 12 for us to look at. So I don't remember the dates. 13 Q. You referred to this -- did you call it an 14 early prototype of the tablet design? 15 A. I don't remember if I called it an early 16 prototype or a prototype. 17 Q. Do you agree that it's an early prototype? 18 A. I agree that it's a prototype. I guess a 19 prototype by definition is -- anyway. I'm sorry. 20 Q. You've been handed what has been marked as 21 Exhibit 8, Lutton Exhibit 8. Do you have that in 22 front of you? 23 A. Yes. 24 Q. Do you -- and that is US Design Patent 25 504889 --
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page11 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 188 1 A. Yes. 2 Q. -- correct? 3 You're named as an inventor of this design; 4 is that correct? 5 A. Yes. 6 Q. Did you participate in the team that 7 created this design? 8 A. I did. 9 Q. Does this D889 reflect the design of the 10 prototype that's in front of you? 11 MR. MONACH: Objection. Lack of 12 foundation. Vague. Objection, calls for a legal 13 conclusion. 14 THE WITNESS: I believe so. 15 BY MS. CARUSO: 16 Q. Do you see Figure 6 of the D889 patent? 17 A. I do. 18 Q. There's a circular element on that. Do you 19 see it? 20 A. I do. 21 Q. Do you also see that on the prototype that 22 you're holding? 23 A. I do. 24 Q. In Figure 1 of the D889 patent, there's 25 a -- a line that's thicker than the other lines. Do
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page12 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 189 1 you see that? 2 MR. MONACH: Objection. Vague. Objection 3 to the extent it may not accurately reflect the 4 drawing. 5 THE WITNESS: I see a bad photocopy. 6 BY MS. CARUSO: 7 Q. Starting at the left, do you see three 8 parallel lines on the left-hand side of the top 9 drawing? 10 A. I do. 11 Q. Do you see the middle line of those three? 12 A. I do. 13 Q. Does it appear to you to be thicker than 14 the other two? 15 A. Yes. 16 Q. Do you have an understanding of why it's 17 thicker? 18 MR. MONACH: Objection. Lack of 19 foundation. Objection to the extent it calls for a 20 legal conclusion. 21 THE WITNESS: I don't. 22 BY MS. CARUSO: 23 Q. Do you have any understanding of what that 24 middle line represents? 25 MR. MONACH: Same objection.
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page13 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 191 1 MR. MONACH: Objection. Vague. 2 THE WITNESS: I don't understand if I 3 understand your definition. 4 BY MS. CARUSO: 5 Q. Did the gap -- why was there a gap? I'll 6 ask that question. 7 A. I really don't remember. 8 Q. If you'd look at this -- 9 A. Thank you. 10 Q. -- and if you could just hold that up again 11 for the camera. 12 THE VIDEOGRAPHER: I didn't get a shot of 13 the front. You have to hold it longer for me. 14 Thank you. Great. 15 BY MS. CARUSO: 16 Q. Does that prototype also have a gap? 17 A. It does. 18 Q. And is there anything sort of in the 19 interior of that gap that you can see? 20 MR. MONACH: Objection. Vague. 21 THE WITNESS: I see a detail within what 22 you're calling the gap. 23 BY MS. CARUSO: 24 Q. Is that detail found in the first prototype 25 you were looking at, as well?
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page14 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 192 1 A. They appear to be similar. 2 Q. Do you recall any discussions about that 3 detail? 4 A. Having seen it now for the first time in 5 many years, I remember working as a team on this 6 detail. 7 Q. Do you remember any discussion about the 8 detail? 9 A. I don't. 10 Q. Do you remember any reason why it added 11 esthetically to the product? 12 MR. MONACH: Objection. Vague. 13 THE WITNESS: Probably had a very good 14 reason at the time. 15 BY MS. CARUSO: 16 Q. But you can't recall right now what that 17 was? 18 A. I can't recall. 19 Q. And I asked you about any esthetic reason 20 for putting it there. Do you remember any other 21 reason for having that detail? 22 A. I don't recall. 23 Q. Is it your understanding that Figure 1 24 reflects that detail? 25 MR. MONACH: Object to the form of the
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page15 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 193 1 question to the extent it calls for a legal 2 conclusion. 3 But you can review that figure and give 4 your understanding. 5 THE WITNESS: I believe that line reflects 6 the gap that's shown here. 7 BY MS. CARUSO: 8 Q. I take it that as with the other design 9 patents we discussed, you can't call out any 10 particular contribution made by any member of the 11 design team with respect to the design of the D889 12 patent; is that correct? 13 A. That's correct. 14 Q. Would you describe the surface of this 15 prototype as contiguous from end to end? 16 MR. MONACH: Object to the form of the 17 question as vague. 18 THE WITNESS: I would describe the piece of 19 glass here as being contiguous. 20 BY MS. CARUSO: 21 Q. Would you describe the glass surface as 22 extending to the outside of the product? 23 MR. MONACH: Objection. Vague. 24 THE WITNESS: I don't know if I'd say -- if 25 I would categorize it that way.
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page16 of 17 CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 194 1 BY MS. CARUSO: 2 Q. Why not? 3 A. Well, you said to the outside of the 4 product. 5 Q. M-hm. 6 A. And the glass stops. It doesn't go to the 7 outside of the product. 8 Q. Would you describe the surface of the 9 iPhone as extending to the outside of the product? 10 MR. MONACH: Objection. Vague. 11 BY MS. CARUSO: 12 Q. I'll reask the question. 13 Would you describe the glass surface of the 14 iPhone as extending to the outside of the product? 15 A. I would describe the glass surface 16 extending to the bezel. 17 MS. CARUSO: We need to take a short break 18 to change the tape. 19 THE VIDEOGRAPHER: This marks the end of 20 Tape No. 3 in today's deposition of Daniele de 21 Iuliis. The time is 5:29 p.m. We are off the 22 record. 23 (Recess taken, from 5:29 to 5:38.) 24 THE VIDEOGRAPHER: This marks the beginning 25 of Tape No. 4 in today's deposition of Daniele de
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-4 Filed07/26/12 Page17 of 17
CONFTDENTTAL ATTORNEYS' EYES ONLY
Page 196 l_ MS. CARUSO: No further questions'
2 MR. MONACH: I have no questions' Thank
3 your sir.
4 MS. CARUSO: Thank You.
5 THE VIDEOGRAPHER: This marks the end of
6 Tape No. 4 of 4 and concludes t,oday's deposition of '7 Daniele de Iulíis, The time is 5:41 p'm' We are I off the record.
9 (Time Noted: 5:41 P.m.)
10 ---oOo--- t1
T2
13 DANIELE DC IULIIS L4
1_5 Subscribed and shrorn to beforer me this tL.l. ¿"v L6 or Nal? ytttùlzot f.i L7 ) 18
19
20
2L
22 23
24
25
TSG Reporting 87'7 -'l02-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page1 of 18
EXHIBIT 18 FILED UNDER SEAL
Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page2 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 1 1 UNITED STATES DISTRICT COURT 2 NORTHERN DISTRICT OF CALIFORNIA 3 SAN JOSE DIVISION 4 5 APPLE INC., a California corporation, 6 Plaintiff, 7 vs. CASE NO. 11-cv-01846-LHK 8 SAMSUNG ELECTRONICS CO., 9 LTD., a Korean business entity; SAMSUNG ELECTRONICS 10 AMERICA,INC., a New York corporation; SAMSUNG 11 TELECOMMUNICATIONS AMERICA, LLC, a Delaware limited 12 liability company, 13 Defendants. ______/ 14 15 16 H I G H L Y C O N F I D E N T I A L 17 O U T S I D E C O U N S E L O N L Y 18 19 VIDEOTAPED DEPOSITION OF CHRISTOPHER STRINGER 20 REDWOOD SHORES, CALIFORNIA 21 FRIDAY, NOVEMBER 4, 2011 22 23 BY: ANDREA M. IGNACIO HOWARD, CSR, RPR, CCRR, CLR 24 CSR LICENSE NO. 9830 25 TSG JOB NO. 43706
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page3 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 2 1 FRIDAY, NOVEMBER 4, 2011 2 9:56 a.m.
3
4
5
6 VIDEOTAPED DEPOSITION OF CHRISTOPHER 7 STRINGER, taken at QUINN EMANUEL URQUHART & 8 SULLIVAN, LLP, 555 Twin Dolphin Drive, 9 Suite 560, Redwood Shores, California, 10 Pursuant to Notice, before me, 11 ANDREA M. IGNACIO HOWARD, CLR, CCRR, RPR, 12 CSR License No. 9830.
13
14
15
16
17
18
19
20
21
22
23
24
25
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page4 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 3 1 A P P E A R A N C E S: 2
3 FOR APPLE INC.: 4 MORRISON & FOERSTER 5 By: MICHAEL A. JACOBS, Esq. 6 425 Market Street 7 San Francisco, California 94105 8
9
10
11
12 FOR SAMSUNG ELECTRONICS CO. LTD: 13 QUINN EMANUEL URQUHART & SULLIVAN 14 By: MICHAEL T. ZELLER, Esq. 15 865 South Figueroa Street, 10th Floor 16 Los Angeles, California 90017 17
18
19
20 ALSO PRESENT: Benjamin Gerald, Videographer 21 Cyndi Wheeler, Apple, Inc. 22
---oOo--- 23
24
25
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page5 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 4 1 REDWOOD SHORES, CALIFORNIA 2 FRIDAY, NOVEMBER 4, 2011 3 9:56 a.m.
4
5
6
7 THE VIDEOGRAPHER: Good morning. This marks 8 the beginning of the disc labeled No. 1 of the 9 videotaped deposition of Chris Stinger -- 10 MR. JACOBS: Stringer. 11 THE VIDEOGRAPHER: -- Stringer. In the 12 matter Apple, Incorporated versus Samsung Electronics 13 Company Limited, et al. 14 Held in the United States District Court for 15 the Northern District of California, San Jose 16 Division. Case number is 11-cv-01846-LHK. 17 This deposition is being held at 555 Twin 18 Dolphin Drive, in the city of Redwood Shores, 19 California. Taken on November 4th, 2011, at 20 approximately 9:56 a.m. 21 My name is Benjamin Gerald from TSG 22 Reporting, Incorporated, and I am the legal video 23 specialist. The court reporter is Andrea Ignacio, in 24 association with TSG Reporting. 25 At this time, will counsel please identify
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page6 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 94 1 A Yes. 2 Q -- that you see there, had you seen tablet 3 computer models there at Apple back in the 2004 time 4 period that had that kind of broader gap in that 5 general location? 6 A I do not recall seeing such gaps on models 7 for tablet projects. 8 Q Do you have any understanding or information 9 as to why there is what we're calling that broader 10 gap? 11 A I do not have a recollection of this design, 12 so I do not know the purpose of that broader gap. 13 Q And you'll see, if you look in the opening of 14 the larger gap -- and you'll have to look at it at 15 various angles, but you can see that there appears to 16 be some kind of detail on the interior there? 17 A I see that. 18 Q Do you know what that is? 19 A It's a very tight-ribbed component -- or are 20 they holes? I can't tell. 21 Q Do you know if that -- that ribbed component 22 or those holes were intended -- because obviously, 23 we're talking about a nonworking model -- to -- to be 24 vent holes or whether they were purely ornamental or 25 something else?
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page7 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 95 1 A I don't know. 2 Q Direct your attention back to the '889 design 3 patent. 4 A Yes. 5 Q Do you have any knowledge or information as 6 to whether or not photographs of that physical mockup 7 that you have in front of you, the 035 mockup, were 8 submitted to the patent office as part of the 9 application and prosecution process for the 10 '889 design patent? 11 A In my preparations for today, we looked at 12 copies of photographs of this object that I understand 13 are attached to this patent. 14 Q And so if I understand you correctly, it's 15 your understanding that the photographs that were 16 submitted to the patent office as part of the 17 '889 design patent depict the three-dimensional mockup 18 that you have in front of you that we call the 035? 19 A It is my understanding, and my recollection 20 of yesterday's discussion, that the photographs that I 21 saw related to this model and this patent. 22 Q Right. 23 And I guess I'm trying to now figure out 24 what -- what photographs we're talking about so that 25 we're on the same page. So let me -- let me provide
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page8 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 96 1 some, and maybe that will help. 2 What's the next number? 3 THE REPORTER: 1171. 4 MR. ZELLER: 1171? 5 THE REPORTER: Yes. 6 MR. ZELLER: Please mark as Exhibit 1171 7 excerpts from the prosecution history of the 8 504,889 design patent. 9 (Document marked Exhibit 1171 10 for identification.) 11 THE WITNESS: Thank you. 12 MR. ZELLER: So you have both sets in front 13 of you at the same time, let's also please mark as 14 Exhibit 1172 -- I'm sorry. Actually, we marked this 15 before. What's this exhibit number? I think it's 16 841. 17 MR. JACOBS: He has the better photos. He 18 has the better photos. 19 MR. ZELLER: Don't worry. I gave you the 20 other set, too. I'm not trying to be totally unfair 21 here. 22 So I'm going to show you what I am fairly 23 confident was previously marked as Exhibit 841. We'll 24 in the interim confirm that that is the exhibit 25 number, but I believe I have it memorized now.
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page9 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 97 1 MR. JACOBS: Just put the Bates range into 2 the record. 3 MR. ZELLER: Yeah. And this, for the record, 4 is APLPROS000018778 through '18798. 5 MR. JACOBS: Mr. Stringer, as you're 6 discussing the meeting we had yesterday, if you can 7 describe what you did, as opposed to any particular 8 communications that you and I had on the subject, that 9 would avoid the need for me to instruct you each time 10 Mr. Zeller asks you a question. 11 THE WITNESS: Sorry. Say that again, please. 12 MR. JACOBS: If you can describe what you did 13 at the meeting by way of comparison, rather than what 14 I -- what -- what your and my discussion was on the 15 topic. 16 THE WITNESS: What I did yesterday? 17 MR. JACOBS: Yes. 18 THE WITNESS: In comparing these -- 19 MR. JACOBS: As Mr. Zeller is asking you 20 questions -- 21 THE WITNESS: Okay. Oh. 22 MR. JACOBS: If you can describe what you did 23 rather than our discussion -- 24 THE WITNESS: Got it. 25 MR. JACOBS: -- then I don't have to engage
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page10 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 98 1 in privilege discussions each time. 2 THE WITNESS: Right. 3 MR. ZELLER: Just generally speaking, avoid 4 disclosing the substance of the communications you had 5 with your counsel. 6 THE WITNESS: Got it. 7 MR. ZELLER: I put in front of you two 8 exhibits. One is Exhibit 1171, and another one is 9 Exhibit 841. 10 Q Are -- are either of these photographs -- 11 A Oh, 841. Okay. 12 Q Yes. 13 Or do they include photographs that you're 14 referring to? 15 A So document 1171 is of no material value, on 16 account of it appearing to be largely blank, with the 17 exception of some very poor-quality shadowy images. 18 So I would prefer to not refer to that in any way or 19 form. 20 Document 841 for the most part resembles 21 photographs that I reviewed yesterday, but there 22 appear differences that may be immaterial to the 23 questioning. 24 Q Focusing on the photographs that are marked 25 here as Exhibit 841, is the three-dimensional mockup
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page11 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 99 1 that's depicted in the photographs that we marked as 2 Exhibit 841, where the -- where the mockup is shown, 3 the same physical mockup that you have in front of you 4 that we call the 035 mockup? 5 A I believe you're asking me, are these 6 photographs of the subject? And it is my belief that 7 these are photographs of the object. 8 Q And so the record is clear, when you say -- 9 A Oh. 10 Q -- "the photographs," you're referring to the 11 photographs that are depicted in 841, and then the 12 object that you're pointing to and referring to is 13 what we call the 035 model? 14 A Yes. 15 MR. JACOBS: If we could just ask you, 16 Mr. Zeller, is this -- these -- this writing on this, 17 is this in the '841 that you -- that is in the record? 18 I'm looking at '18792. 19 MR. ZELLER: This is exactly how it was 20 produced to us. 21 MR. JACOBS: Oh, with these lines on it? 22 MR. ZELLER: Right. 23 THE WITNESS: I recall those lines yesterday. 24 MR. JACOBS: Okay. 25 MR. ZELLER: All right.
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page12 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 100 1 Q And setting aside the various lines and 2 drawings that appear to be on these photographs, you 3 understood I was asking you about the object that's 4 depicted in the actual photographs; is that correct? 5 A Yes. 6 Q And without disclosing the substance of what 7 you discussed with your counsel, did -- did you 8 satisfy yourself that the 035 mockup is, in fact, 9 what's in the -- the photographs that we've marked as 10 Exhibit 841? 11 A I am convinced from studying both the object 12 035 and the Document 841 that these are one and the 13 same object. 14 Q And that comparison that you did led you to 15 be satisfied that they're one and the same? 16 A Yes. I studied the photographs. I studied 17 the object. I believe that these are photographs of 18 model Apple Proto 035. 19 Q And directing your attention, then, to the 20 page ending '18787, which is part of Exhibit 841. 21 A Yes. 22 Q And working with the images such as we have 23 them -- 24 A Yes. 25 Q -- is that ribbing that you see there that
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page13 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 101 1 runs along what we can generally say is the perimeter 2 of the -- the front surface, at least in terms of the 3 corner that appears closest to the -- to the -- 4 A Yes, ribbing or holes. I need to pick the 5 model apart to be sure, but it looks more like some 6 form of rib. 7 Q And that's one of the comparisons that you 8 see between the photographs and the three-dimensional 9 model, the 035 model, that satisfied you that they're 10 one and the same? 11 A That is one of the details that satisfied me 12 that it was one and the same. 13 Q Directing your attention to '18790. 14 A Yes. 15 Q You'll see that, at least as shown in this 16 image here, there appears to be a somewhat thicker, 17 darker line that runs at least part of the perimeter 18 of the front of the device that can be seen there on 19 the front; do you see that? 20 A There are a number of parallel lines, one of 21 which is darker and broader than others. 22 Q And does that line, in your view, correspond 23 to the -- the broader gap that's discernible there on 24 the 035 model? 25 A It appears to be either the edge of the cover
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page14 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 102 1 glass or a shadow beneath it, or a combination of 2 both. 3 Q Well, let me -- let me try it with another 4 image, and maybe we'll come back to this in a minute. 5 If you'd take a look at the next page, which is 6 '18791. 7 A Yes. 8 Q And maybe this is a better image to try and 9 work from, but you'll see that there is a -- a darker 10 line that runs in between the lighter-colored housing 11 and then the so-called glass, but is really plastic 12 flat surface; do you see that darker line? 13 A Yes. 14 Q Does that darker line, in your view, 15 correspond to the broader gap that you talked about 16 earlier with respect to the 035 model? 17 A It looks to me to be some combination of -- 18 and of the edge of what we call the glass -- cover 19 glass and shadow beneath it. And my guess is it's -- 20 the lines show -- what we see is shadow. 21 Q Is the broader gap depicted in this photo, 22 the broader gap that you talked about earlier that 23 is -- 24 A This is a dreadful quality reproduction of a 25 photograph. Yes, the broader gap is depicted very
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page15 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 103 1 badly, but I can tell where it is on the picture. 2 Q Okay. Well, terrific. 3 If I could perhaps hand you a pen, and if you 4 could label where you see that -- that broader gap 5 that you had described and testified earlier with 6 respect to the 035 model. 7 A There. 8 Q And maybe the most convenient way of doing 9 this, if you could maybe hold it up for the -- the 10 camera, and then just kind of show where it runs on 11 the -- on the page. 12 A Well, the narrower gap is depicted by this -- 13 THE VIDEOGRAPHER: Sir, can you show -- 14 THE WITNESS: Okay. The narrow gap is 15 depicted by this gray fuzzy line here. The broader 16 gap is in some part depicted by the dark shadow and 17 the light area next to it. 18 MR. ZELLER: And it runs along -- 19 THE WITNESS: It runs around the full, with 20 less and less clarity, edge of the photograph. I have 21 to say it's -- it's too poor an image to discern much 22 of anything above the line. 23 MR. JACOBS: Should we mark this as a new 24 depo exhibit? 25 MR. ZELLER: Yes, I think so.
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page16 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 104 1 So let's, for the record, please mark as the 2 version of 841 that now has Mr. Stringer's marking on 3 it on page '18791 as Exhibit 841A. 4 (Document marked Exhibit 841A 5 for identification.) 6 MR. ZELLER: If we can go back to 7 Exhibit 1170. And by the way, did you want to send 8 those mockups back? 9 MR. JACOBS: That would be great. 10 MR. ZELLER: Okay. So let's go off the 11 record. 12 THE VIDEOGRAPHER: The time is 2:42 p.m., and 13 we are off the record. 14 (Recess taken.) 15 THE VIDEOGRAPHER: The time is 2:55 p.m., and 16 we are back on the record. 17 MR. ZELLER: Direct your attention to the 18 '889 design patent, which was previously marked as 19 Exhibit 8. 20 MR. JACOBS: I'll just hand you my copy. 21 THE WITNESS: All right. Thank you. 22 MR. ZELLER: Q. Please take a look at 23 Figure 1. 24 A Yes. 25 Q You'll see on Figure 1 that at least as part
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page17 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 105 1 of the -- at least along part of the -- generally what 2 we'll call the perimeter area of the front, there's a 3 darker, thicker line? 4 A Which figure are you looking at? 5 Q This is Figure 1. 6 A Figure 1. 7 Q Do you see where at least on part of the 8 perimeter, there is a line that is darker and thicker? 9 A Which would be the second line from the left 10 on the left side of the figure. 11 Q Right, on the left side. 12 And then on the bottom portion of Figure 1, 13 it appears to run -- to be the line that is -- that 14 the -- is the edge, at least from that perspective? 15 A It looks like the edge, yes. 16 Q Do you know what that thicker line depicts? 17 A It's -- on the lower edge, it's the -- it 18 looks like the edge of the housing. 19 Q Well, what about on the left side? 20 A It's the edge of the housing. 21 Q So on both the left side and the bottom side, 22 you construe that darker, thicker line to be where the 23 edge of the housing is? 24 A I do construe that. And it's -- my 25 assumption is confirmed by looking at Figure 3 that
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-5 Filed07/26/12 Page18 of 18 Highly Confidential - Outside Counsel's Eyes Only
Page 123 1 J U R A T
2
3
4 I, CHRISTOPHER STRINGER, do hereby certify 5 under penalty of perjury that I have read the 6 foregoing transcript of my deposition taken 7 on November 4, 2011; that I have made such 8 corrections as appear noted herein in ink, 9 initialed by me; that my testimony as 10 contained herein, as corrected, is true and 11 correct.
12
13
14 DATED this ____ day of ______, 2011, 15 at ______, California.
16
17
18
19 ______20 SIGNATURE OF WITNESS
21
22
23
24
25
TSG Reporting - Worldwide (877) 702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page1 of 23
EXHIBIT 20 FILED UNDER SEAL
Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page2 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 1 1 UNITED STATES DISTRICT COURT 2 NORTHERN DISTRICT OF CALIFORNIA 3 SAN JOSE DIVISION 4 APPLE INC., a California ) corporation, ) 5 ) Plaintiff, ) 6 ) vs. ) No: 11-CV-01846-LHK 7 ) SAMSUNG ELECTRONICS CO., LTD, ) 8 a Korean business entity; ) SAMSUNG ELECTRONICS AMERICA, ) 9 INC., a New York corporation; ) SAMSUNG TELECOMMUNICATIONS ) 10 AMERICA, LLC, a Delaware ) limited liability company ) 11 ) Defendants. ) 12 ______) 13 14 **HIGHLY CONFIDENTIAL - ATTORNEYS' EYES ONLY** 15 16 DEPOSITION OF QUIN HOELLWARTH 17 Redwood Shores, California 18 Tuesday, October 25, 2011 19 20 21 22 23 Reported By: 24 LINDA VACCAREZZA, RPR, CLR, CRP, CSR. NO. 10201 25 JOB NO. 42859
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page3 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 2 1 2 3 4 Tuesday, October 25, 2011 5 9:32 a.m. 6 7 8 Videotaped deposition of QUIN 9 HOELLWARTH, held at Quinn Emanuel 10 Urquhart & Sullivan, LLP, 555 Twin 11 Dolphin Drive, Redwood Shores, 12 California, pursuant to 13 Subpoena before Linda Vaccarezza, a 14 Certified Shorthand Reporter of the 15 State of California. 16 17 18 19 20 21 22 23 24 25
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page4 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 3 1 A P P E A R A N C E S: 2 QUINN EMANUEL URQUHART & SULLIVAN 3 Attorneys for Defendants 4 865 South Figueroa Street 5 Los Angeles, California 90017 6 BY: MICHAEL T. ZELLER, ESQ. 7 ANNA NEILL, ESQ 8 [email protected] 9 [email protected] 10 11 MORRISON & FOERSTER 12 Attorneys for Plaintiff 13 755 Page Mill Road 14 Palo Alto, California 94304 15 BY: ERIK J. OLSON, ESQ. 16 [email protected] 17 18 19 20 also present: Wendy Anna Herby, Apple in-house Counsel 21 22 23 24 25 Videographer: Jason Kocol
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page5 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 4 1 THE VIDEOGRAPHER: This is the 2 start of tape labeled Number 1 of the 3 videotaped deposition of Quin Hoellwarth 4 in the matter Apple Incorporated versus 5 Samsung Electronics Company, Limited, in 6 the United States District Court, 7 Northern District of California, San Jose 8 division. Case number 11-CV-01846-LHK. 9 This deposition is being held at 555 Twin 10 Dolphin Drive, Redwood Shores, 11 California, on October 25th, 2011. It is 12 approximately 9:32 a.m. 13 My name is Jason Kocol and I'm 14 a legal video specialist from TSG 15 Reporting, Incorporated, headquartered at 16 747 Third Avenue, New York, New York. 17 The court reporter is Linda Vaccarezza in 18 association with TSG Reporting. 19 Will counsel please introduce 20 yourselves for the record. 21 MR. ZELLER: Mike Zeller for 22 Samsung. 23 MS. NEILL: Anna Neill for Samsung. 24 MR. OLSON: Erik Olson of Morrison 25 & Foerster on behalf of Apple and the
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page6 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 5 1 witness. 2 THE VIDEOGRAPHER: Will the court 3 reporter please swear in the witness. 4 QUIN HOELLWARTH, 5 having been duly 6 sworn, by the Certified Shorthand 7 Reporter, was examined and testified as 8 follows: 9 EXAMINATION 10 BY MR. ZELLER: 11 Q. Good morning. 12 A. Good morning. 13 Q. Please tell us and spell your full 14 name for the record. 15 A. Quin Hoellwarth. Q-U-I-N, C as a 16 middle initial, Hoellwarth, H-O-E-L-L-W-A-R-T-H. 17 Q. Have you ever been known as or 18 gone by any other name? 19 A. I have not. 20 Q. And are you currently employed? 21 A. I am. 22 Q. By whom? 23 A. Apple. 24 Q. How long have you worked for 25 Apple?
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page7 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 101 1 whether a design is new and original as compared 2 to the prior art prior to the time that a design 3 application is made? 4 MR. OLSON: Objection. Asked and 5 answered, but you can answer this "yes," 6 "no," "I don't know," I don't remember," 7 or to the extent that the only 8 information is privileged, you should so 9 state. 10 THE WITNESS: I don't know. 11 Q. Has it ever had such guidelines, 12 to your knowledge? 13 A. I don't know. 14 Q. Show you what's previously marked 15 as Exhibit 8, which is a copy of United States 16 design patent 504889. Please let me know when 17 you've had a chance to review the 889 design 18 patent. 19 MR. OLSON: Do you have a darker 20 copy? 21 MR. ZELLER: We can get one. Why 22 don't we go off the record for a moment. 23 THE VIDEOGRAPHER: The time is 24 12:11 p.m. and we are off the record. 25 (Recess taken from 12:11 p.m. to
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page8 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 102 1 12:13 p.m.) 2 THE VIDEOGRAPHER: The time is 3 12:13 p.m. We are on the record. 4 BY MR. ZELLER: 5 Q. You've an opportunity to review 6 the 889 design patent? 7 A. I have. 8 Q. Do you recognize this as an issued 9 patent that you worked on the application for? 10 A. Yes. 11 Q. And you did this back when you 12 were with Beyer Weaver & Thomas? 13 A. Yes. 14 Q. Was your involvement complete 15 prior to the time that you went and began working 16 as an Apple employee or did your work on this 17 design patent application continue on? 18 MR. OLSON: Did he work on, you 19 mean the prosecution? 20 MR. ZELLER: Yes. 21 THE WITNESS: I started at Apple 22 in 2007. This issued in 2005. 23 Q. So the answer is that it was 24 completed before you left? 25 A. Yes.
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page9 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 103 1 Q. Before you left Beyer Weaver & 2 Thomas? 3 A. Yes. 4 Q. And generally speaking, what did 5 you do in connection with the application that 6 resulted in the 889 design patent? 7 A. What do you mean, generally do? 8 Can you be more specific? 9 Q. Well, please tell me what the 10 nature of your tasks and responsibilities were in 11 connection with the 889 design patent in the 12 prosecution? 13 A. I prepared the patent application 14 and filed it. Is that what you mean? 15 Q. When you say that you prepared the 16 application, were you responsible for the 17 generation of the figures that are shown here in 18 the 889 design patent? 19 A. Yes. 20 Q. I take it you didn't draw them 21 yourself? 22 A. Are you asking me if I did or -- 23 Q. Right. 24 A. I did. 25 Q. You drew these?
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page10 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 104 1 A. I did. 2 Q. Did you draw all nine of the 3 figures? 4 A. I believe so. 5 Q. Generally speaking, in connection 6 with those design patent applications that you 7 worked on when you were with Beyer Weaver & 8 Thomas, did you actually draw the figures? 9 A. I did. 10 Q. Since you've been working as an 11 employee for Apple, with respect to those design 12 patent applications that you've worked on, do you 13 typically actually draw the figures? 14 A. No. 15 Q. So that practice changed at some 16 point? 17 A. Yes, when I started at Apple. 18 Q. Since the time period you began 19 working for Apple, who has prepared the figures 20 for the design patent applications? And I'm 21 talking about actually physically drew them. 22 A. In some circumstances, the outside 23 counsel. Actually, an outside counsel prepares 24 the final drawings. It's probably a better 25 answer.
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page11 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 105 1 Q. My question is, is more pedestrian 2 and mundane. I'm trying to find out in those 3 instances where you were involved with design 4 patent applications after starting with Apple, 5 who was the person who actually physically does 6 the drawing? 7 A. Well, in what time frame, because 8 it's an organic process. 9 Q. Well, I've been focusing on the 10 time period since you began working for Apple. 11 But if the person who actually does the drawings 12 changed over time, please tell me that. 13 A. Well, let's just say it varies or 14 it depends. 15 Q. In general, are the figures of the 16 Apple design patent applications prepared by 17 Apple employees? 18 A. The drawings for the patent 19 applications? 20 Q. Right. 21 A. No. 22 Q. Typically, in those instances 23 where you've been involved with the applications, 24 are they done by outside vendors? 25 A. Since being at Apple?
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page12 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 116 1 as compared to the prior art? 2 MR. OLSON: I'll instruct him not 3 to answer on the basis of privilege and 4 attorney work product. 5 (Testimony marked as requested.) 6 Q. Did Apple or its counsel do 7 anything to determine that the design that's 8 shown here in the 889 design patent was new and 9 original as compared to the prior art? 10 MR. OLSON: So if I may make a 11 suggestion as to how you may reframe that 12 in which I would allow the question. 13 MR. ZELLER: Okay. 14 MR. OLSON: Is he obviously was 15 personally involved in the participation 16 of the filing of this application in 17 2004. So I would permit you to ask the 18 question whether he recalls doing 19 anything at that time. 20 MR. ZELLER: Yeah. That was the 21 context in which I was asking is back in 22 the prosecution of this application. So 23 let me be more definitive, then, on the 24 time period of what I'm talking about. 25 Q. Prior to the time that this design
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page13 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 117 1 patent issued on May 10, 2005, did Apple or its 2 counsel do anything to determine that the design 3 shown in the 889 design patent was new and 4 original as compared to the prior art? 5 MR. OLSON: Objection. Vague on 6 "Apple or its counsel." Obviously, I'll 7 allow him to answer as to what he did. 8 THE WITNESS: I don't recall. 9 Q. Do you have any knowledge or 10 information in that regard? 11 A. Not that I can remember. 12 Q. You'll see that there are a number 13 of named inventors listed in the first column on 14 the first page of the 889 design patent. Do you 15 see that? 16 A. Yes. 17 Q. Was anything done prior to the 18 time that this patent issued to determine that 19 these individuals were, in fact, the appropriate 20 inventors? 21 A. I don't recall. 22 Q. Do you have any knowledge or 23 information in that regard? 24 A. Not that I can remember. 25 Q. Now, you mentioned that you
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page14 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 118 1 prepared the figures that are shown in the 889 2 design patent? 3 A. Yeah. 4 Q. Did you base those drawings on 5 some information that you received from Apple? 6 A. Yes. 7 Q. And one of the sources of 8 information that you used to prepare the figures 9 were photographs? 10 A. Yes. 11 Q. I'm going to show you what was 12 previously marked as Exhibit 841, which is a 13 multi-page document bearing Bates numbers APLPROS 14 00000 18778 through 18798. And please let me 15 know when you've had an opportunity to review 16 Exhibit 841. 17 A. (Document review.) 18 Q. Do you recognize what's been 19 marked as Exhibit 841? 20 A. I do. 21 Q. What are these? 22 A. These are copies of a product, 23 copies of a picture of some product. 24 Q. And what is the product that is 25 represented in these copies, these materials?
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page15 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 119 1 A. It's an electronic device of some 2 sort. 3 Q. Is this electronic device that's 4 shown here in Exhibit 841 the same electronic 5 device that was used as the basis for the 6 drawings in the 889 design patent? 7 A. Just to clarify where these -- I 8 know that you presented this as evidence, but 9 where are they from? 10 Q. Well, I'm going to get to that in 11 a minute. But I'm just trying to first figure 12 out something is, do these photographs and other 13 images in Exhibit 841 have some relationship to 14 the drawing and drawings that are depicted here 15 in the 889 design patent 16 MR. OLSON: And Mr. Zeller, I 17 think what we're saying is if he knew the source 18 of them, it would help him to answer that 19 question. I may be -- 20 THE WITNESS: Yeah, I mean, as far 21 as I don't know -- I mean, until I know 22 where this is from, I don't -- I can't 23 answer your question, right. I mean... 24 Q. Well, I mean, I'm just an outside 25 lawyer; I don't know facts. I'm trying to find
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page16 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 120 1 out the facts from you. What I can say is is 2 that, that these -- and I'm talking about exactly 3 in this form is how it was produced by an Apple 4 prosecuting firm, the Stern firm, as I understand 5 it. That's my best understanding. 6 A. This is from the file wrapper. 7 Q. I believe that there are photos 8 that are in the file wrapper that I'm going to 9 ask you about next that I believe correspond to 10 these. But again, I'm just an outside lawyer. 11 I'm trying to see how these things are related. 12 And that's my -- that's the point of my 13 questioning. So it's a little hard for me to 14 make representations to you about any of this 15 because that's part of what I'm trying to find 16 out. 17 MR. OLSON: Did we provide source 18 information for these? 19 MR. ZELLER: I don't think so. My 20 last understanding -- we have asked for 21 the native files of these, these images. 22 MR. OLSON: And I'm happy to 23 address that as well, but go ahead. 24 MR. ZELLER: And any original 25 photographs so that we would have clear
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page17 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 121 1 images of it and the like. But, you 2 know, the information we have is pretty 3 limited. It was, as I understand it, 4 produced by Stern, which I believe took 5 over the prosecution, but -- and that's 6 probably why it's in possession of them. 7 But it doesn't -- we don't know what the 8 ultimate source of this was. 9 It was presumably transferred 10 from Beyer Weaver & Thomas at some point 11 would be my assumption, but again, that's 12 part of what I'm trying to find out. So 13 maybe if we step back for a minute and 14 try some kind of foundational things and 15 see if this helps -- 16 A. Okay. 17 Q. -- jog your memory on any of 18 this. And let's first focus on the '889 design 19 patent for a moment. 20 A. Yes. 21 Q. At some point, did you actually 22 have a three-dimensional model that you were 23 shown or had access to that helped you form the 24 basis of the drawings that you made on the '889 25 design patent?
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page18 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 122 1 A. Yes. 2 Q. And if you could direct your 3 attention to the page of Exhibit 841 that bears 4 Bates number APLPROS 0000018789. 5 A. 18789? 6 Q. Yes. And you'll see this is a 7 photograph of an individual. Is this you? 8 A. Yes. 9 Q. And this photograph shows you 10 holding a three-dimensional tablet mock-up? 11 A. Yes. 12 Q. And does this depict the three- 13 dimensional mock-up that you had available to you 14 as a resource to create the '889 design patent 15 figures? 16 A. Yes. 17 Q. And in the course of that, was 18 there one model that you had to do that? 19 MR. OLSON: As opposed to? 20 MR. ZELLER: As opposed to more 21 than one. 22 THE WITNESS: I don't recall. 23 Q. Directing your attention to the 24 last page of Exhibit 841. 25 A. (Witness complies.)
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page19 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 123 1 Q. You'll see that this is a 2 cornucopia of you? 3 A. Yes. 4 Q. Do you know who created these? 5 A. I mean, I don't know but I think 6 it was me. 7 Q. And then directing your attention 8 to the other photographs that are part of Exhibit 9 841 which show various perspectives of the mock- 10 up, did you take these photos? 11 A. It's likely. 12 Q. Do you recall where you did this? 13 In other words, were you at the Beyer law firm's 14 offices? Did you go to Apple to do this? Do you 15 remember? 16 A. Yes, I remember. 17 Q. And where was it? 18 A. Apple. 19 Q. And I take it that's the occasion 20 in which you were provided the mock-up that's 21 depicted in these photographs and other images 22 that we have marked as Exhibit 841? 23 A. I believe so. 24 Q. Do you know where the photographs 25 are?
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page20 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 236 1 the inventors? 2 MR. OLSON: You can testify as to 3 any steps you may have taken, meetings 4 you may have had, et cetera, without 5 disclosing the content of such 6 communication, to the extent that you 7 have a recollection. 8 THE WITNESS: I can't speak to 9 Apple. For myself, I don't recall. 10 Q. Was anything done to determine 11 whether any of the named inventors on the '889 12 design patent application, in fact, made a 13 contribution to the claimed invention? 14 MR. OLSON: You can identify any 15 steps you took or meetings you had or things that 16 you did with respect to that question. 17 THE WITNESS: Just generally? 18 MR. OLSON: Without -- I think the 19 question is specific to the '889 patent. 20 But you can give steps you took or 21 actions you took or things you can 22 remember yourself doing without 23 disclosing the content of any 24 communication that you may have received 25 from someone.
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page21 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 237 1 THE WITNESS: I don't recall. 2 Q. Generally speaking, you're aware 3 that a design patent can only have a single 4 claim, right? 5 A. Yes. 6 Q. And what's your understanding of 7 what defines a claim in a design patent, just 8 generally speaking? 9 MR. OLSON: I'll let that answer. 10 THE WITNESS: The drawings. 11 Q. You're generally aware that you 12 can't get more than one design patent for what is 13 substantially or essentially the same design, 14 right? 15 MR. OLSON: Objection. Vague. 16 THE WITNESS: Generally, yes. 17 Q. And generally speaking, you 18 understand that when Apple seeks and obtains a 19 design patent, that Apple is necessarily 20 representing or stating to the patent office that 21 the overall appearance of the patent design is 22 not substantially the same as another patented 23 design, right? 24 MR. OLSON: Wait a second. Calls 25 for a legal opinion and instruct him not
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page22 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 238 1 to answer on the ground of attorney- 2 client privilege and work product. 3 (Testimony marked as requested.) 4 THE WITNESS: Can we take a 5 break? Is it possible? 6 MR. ZELLER: Okay. 7 THE VIDEOGRAPHER: The time is 8 5:06 p.m. We are off the record. 9 (Recess taken from 5:06 p.m. to 5:19 p.m.) 10 THE VIDEOGRAPHER: The time is 11 5:19 p.m. We are on the record. 12 BY MR. ZELLER: 13 Q. Does Apple -- 14 MR. OLSON: Do you mind, while we 15 are doing stuff, can we just clean up the 16 figures? 17 MR. ZELLER: Sure. 18 Q. Does Apple have any processes or 19 procedures in place to ensure that it is not 20 double patenting? 21 A. At this time? Is that what your 22 question, is at this time? 23 Q. Yes. I'm talking about currently. 24 A. I don't know. 25 Q. Has it ever?
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-6 Filed07/26/12 Page23 of 23 HIGHLY CONFIDENTIAL ATTORNEYS' EYES ONLY
Page 350 1 THE VIDEOGRAPHER: This marks the 2 end of the addendum to Tape Number 5 of 3 today's deposition of Quin Hoellwarth, 4 and concludes today's deposition. 5 The time is 8:47 p.m. We are 6 off the record. 7 8 (Time noted: 8:47 p.m.) 9 10 11 12 13 ______14 QUIN HOELLWARTH 15 16 17 Subscribed and sworn to before me 18 This day of , 2011. 19 20 ______21 22 23 24 25
TSG Reporting 877-702-9580 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page1 of 57
EXHIBIT 63 FILED UNDER SEAL
Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page2 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
______) APPLE, INC., a California corporation ) ) Plaintiff, ) Case No. 11-cv-01846-LHK ) v. ) ) SAMSUNG ELECTRONICS CO., LTD., a ) Korean corporation; SAMSUNG ) ELECTRONICS AMERICA, INC., a New ) York corporation; and SAMSUNG ) TELECOMMUNICATIONS AMERICA, ) LLC, a Delaware limited liability company, ) ) Defendants. ) ______)
EXPERT REPORT OF SAM LUCENTE
1 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page3 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
AIGA / U.S. Department of Transportation Symbols
The first set of 34 symbols was published in 1974, and received one of the first Presidential Design Awards, then 16 more symbols were added in 1979. ―These copyright-free symbols have become the standard for off-the-shelf symbols in the catalogues of U.S. sign companies..‖37
Even Apple‘s former CEO, in directing his designers and programmers, noted the pervasiveness of the rounded rectangle as a proven, universal communication symbol saying, ―Well, circles and ovals are good, but how about drawing rectangles with rounded corners?‖ ―Rectangles with rounded corners are everywhere!... Just look around this room… And look outside, there‘s even more, practically everywhere you look!‖ ―Within three blocks, we found seventeen examples . . . I started pointing them out everywhere until he was completely convinced.‖ Eventually his software engineer conceded and implemented this direction: ―When he finally got to a No Parking sign, I said, ‗Okay, you‘re right, I give up. We need to have a rounded-corner rectangle as a primitive!‖38 The rounded rectangular icon was implemented on early Apple desktop applications following the Xerox efforts.
The current Apple iOS Human Interface Guidelines also emphasize the functionality of the icons themselves. Apple expressly adopted a consistent rounded rectangular design as a functional design element as noted in their detailed specifications. Using current tools not
37 http://www.aiga.org/symbol-signs/ 38 Steve Jobs, Walter Isaacson (page 130).
12 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page4 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION available to the Xerox designers, the conversion from a square icon to a consistent, rounded square icon with added visual effects is programmed into the guidelines.
―When iOS displays your application icon on the Home screen of a device, it automatically adds the following visual effects:
Rounded corners
Drop shadow
Reflective shine (unless you prevent the shine effect)
For example, a simple 57 x 57 pixel iPhone application icon might look like this:
When it‘s displayed on an iPhone Home screen, iOS adds rounded corners, a drop shadow, and a reflected shine. So the same application icon would look like this:‖39
Emphasizing the functional aspect of the icons, the Apple iOS Human Interface Guidelines note that, ―Beautiful, compelling icons and images are a fundamental part of the iOS user experience. Far from being merely decorative, the icons and images in your app play an essential role in communicating with users.‖ They continue, saying, ―Embrace simplicity. In particular, avoid cramming lots of different images into your icon. Try to use a single object that expresses the essence of your app. Start with a basic shape and add details cautiously. If an icon‘s content or shape is overly complex, the details can become confusing and may appear muddy at smaller sizes.‖40
Apple‘s Guidelines also acknowledge the need for universal imagery and metaphors in icons that convey their function to the user easily. Initially, Apple instructs that designers must ―[u]se universal imagery that people will easily recognize. Avoid focusing on a secondary or obscure aspect of an element.‖ ―Try to balance eye appeal and clarity of meaning in your icon so that it‘s rich and beautiful and clearly conveys the essence of your application‘s purpose. Also,
39 Apple iOS Human Interface Guidelines, https://developer.apple.com/library/IOs/#documentation/UserExperience/Conceptual/MobileHIG /IconsImages/IconsImages.html#//apple_ref/doc/uid/TP40006556-CH14-SW1 40 Apple iOS Human Interface Guidelines, https://developer.apple.com/library/IOs/#documentation/UserExperience/Conceptual/MobileHIG /IconsImages/IconsImages.html#//apple_ref/doc/uid/TP40006556-CH14-SW1
13 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page5 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION it‘s a good idea to investigate how your choice of image and color might be interpreted by people from different cultures.‖
Icons in the shape of rounded rectangles as a functional element on a touch interface were used on the first smartphone, the IBM Simon, which was launched in 1993.41 The Simon included a calendar, address book, world clock, calculator, note pad, e-mail, and games. The Simon used a touchscreen and optional stylus to dial phone numbers, send faxes and write memos. Text could be entered with either an on-screen ―predictive‖ keyboard or QWERTY keyboard. The IBM Human Factors Group spent two years conducting studies and providing usability guidance, again focusing on the functional aspects of the graphical user interface.
Views of IBM Simon Smartphone and Graphical User Interface (1993)
The Simon‘s icons are positioned in an icon grid much like the Xerox Star. When touched, the icons launch applications, such as the phone shown here.42 Rounded rectangles are used consistently throughout the Simon design.
The Simon included another functional element by adding descriptive labels under the icons to provide a redundant means of communicating the function to the user in addition to the graphical image. More importantly, however, the small size of the touchscreen led to the introduction of an ―icon dock,‖ containing the most frequently used icons located at the bottom of the rectangular screen. The dock concept was another functional element in the evolution of
41 http://www.business2community.com/mobile-apps/a-look-back-in-time-at-the-first- smartphone-ever-040906 42 http://research.microsoft.com/en- us/um/people/bibuxton/buxtoncollection/detail.aspx?id=40
14 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page6 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Another Apple interface designer, Freddy Anzures, testified to the number of icons on the similar D‘305 Patent discussed below, stating that, ―based on a design perspective, there were a certain number of applications that we were looking at for the phone, they happen to round out to a particular number, and so we determined this grid based on the number of applications that we had. Deposition of Freddy Anzures (Anzures Dep.) at 141:14-19. This is a functional requirement determined by the manufacturer.
The spacing, proportions, shape and number of the icons on a graphical interface are fundamental components of human-computer interaction. Thus, the rounded square elements of the D‘790 ―design‖ are merely functional and not decorative in the context of a ―Graphical User Interface for a Display Screen or Portion Thereof.‖
Accordingly, it is my opinion that the claimed elements of the D‘790 design are all functional, and not decorative, whether taken as individual elements or the design as a whole.
Design Patent D 604,305
The D‘305 patent application was filed on June 23, 2007, and the patent issued on November 17, 2009. The D‘305, entitled ―Graphical User Interface for a Display Screen or Portion Thereof,‖ shows two variations of the same ―design,‖ with one in color and one in black and white. The overall rectangular outline of the D‘305 figures matches exactly the rectangular outline that is centered within the larger rounded rectangular shapes in the D‘790 Patent.
19 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page7 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Figs. 1 and 2 of D604,305
Functionality of a Rectangular Display, Icon Grid, Icon Dock, and the Size, Shape and Number of Icons
Given that this patent has the same title as D‘790, I once again assume for the sake of this report that the upper 12 squares with rounded corners and the lower 4 squares with rounded corners depict selectable icons on a display screen. The D‘790 Patent and the D‘305 Patent depict the same basic functional elements. Accordingly, for all the reasons set forth above regarding the D‘790, it is my opinion that the rectangular shape, grid of rounded squares, separate lower grouping of rounded squares, and the size, shape and number of the 16 rounded squares are all functional elements in the D‘305 Patent.
Several aspects of the functionality of these elements are further reinforced in D‘305. For example, use of the gray background for icon dock area uses shading to functionally group like items. The use of a color or shading to functionally group the icons on the dock is a functional necessity, but the exact details regarding color or texture could be an ornamental choice. Thus, it is my opinion that these elements of the D‘305 ―design‖ are merely functional and not decorative, as set forth more fully above.
Functionality of Status Indicators
I will assume for the sake of this report that the symbols and nomenclature at the top of the large rectangular area are status indicators on a display screen. The status indicators in the upper area are functional because they are located at the top to provide quick readability. Moreover, the status indicators use established conventions for cellular or wireless connectivity: name of the carrier, type and strength of cellular connection, time and battery level to communicate status.
The International Standards Organization49 defines status indicators as ―a graphic symbol that represents a state within the system. It is noted that status indicators assist a mobile device user to confirm some system-setting state without accessing the system settings. They are dynamically updated only when the state changes in real-time. Users are not able to use the status indicator to control the change. For example, a status indicator is used to show that vibration is set in a cellular phone instead of sounds to indicate ringing or alert. Or as a second example, a status indicator is used to show the remaining battery charge of a personal data assistant (PDA).‖
The status indicators on a graphical user interface are a fundamental, functional element for human-computer interaction. Thus, the top line elements of the D‘305 ―design‖ are merely functional elements, and not decorative.
49 International Standards Organization document ISO/IEC 24755:2007(E) 4.5.
20 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page8 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
The Functionality of Icons
Icons themselves are functional because they are metaphors for the function the user wishes to access. In other words, icons are descriptive of the applications and/or features that they activate, and thus they are functional. The International Organization for Standardization (ISO) provides a relevant definition of icons:
―Icons are used on Information and Communications Technology (ICT) products to facilitate interaction with their users. Icons can provide a language-independent means of communicating information to the user. They can facilitate the user‘s ability to learn, understand, and remember functional elements of the system, and aid in the manipulation of these elements. They are especially suitable for elements that are frequently used and where the meaning of the icon can be easily understood.
Typically, icons draw on a user‘s environment to provide a metaphorical representation of the user‘s tasks, objects, actions, and attributes. A metaphor provides an analogy to concepts already familiar to the user, from which the user can deduce the system‘s use and behaviour. Icons can express the metaphor directly, as graphical representations of the metaphorical objects. They may also directly represent a physical object.
Icons are distinguished from other user interface symbols by the fact that they represent underlying system functions. Icons represent the objects, pointers, controls and tools making up the domain of an application that users manipulate in doing their jobs. They can also represent status indicators used by the computer system to give information to the user and to mediate user interactions with software applications..‖50
Technical authors, Mullet and Sarno provide clear direction to designers of icons stating:
A crucial aspect of visual imagery is the speed and directness of recognition and identification. Selecting the correct approach for a particular communication task is more a discipline than a technique:
1. Use an icon if the concept to be communicated is a familiar object or an externally obvious state.
50 ISO/IEC TR 11581-1:2011(E) ) © ISO (the International Organization for Standardization) is a worldwide federation of national standards bodies (ISO member bodies). The work of preparing International Standards is normally carried out through ISO technical committees. Each member body interested in a subject for which a technical committee has been established has the right to be represented on that committee. International organizations, governmental and non-governmental, in liaison with ISO, also take part in the work. ISO collaborates closely with the International Electrotechnical Commission (IEC) on all matters of electrotechnical standardization.
21 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page9 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Analysis of Prior Art Regarding Design Patents D'790, D'305, and D'334
The following section considers a number of prior art references for the D'790, D'305, and D'334 patents. I base my analysis of the patents and the prior art on the testimony of the inventors named on the patents, Imran Chaudhri and Freddy Anzures, who testified about their own understanding of what these patented designs claim. I have made no judgments as to whether they have accurately described these patents, nor have I offered my own alternative claim interpretation.
According to Imran Chaudrhi, the D'790 patent appeared to be the homescreen of the iPhone. Chaudhri Dep. at 133:11-12. The square elements in the patents were called "icons". Id. at 133:18. And these icons are laid out in "two sections". Id. The first section included the upper rows of icons, and the second section included the bottom row of icons below a blank area. Id. at 133:18-24. Chaudhri testified that this arrangement included "rows and columns that are orderly — laid out in an orderly fashion." Id. at 135:11-14. He also called the layout "clean," "regular," and "predictable." Id. at 135:17-24. Regarding the space above the bottom row of icons, Chaudhri stated that this was a place where additional icons could go, so there was " really no difference between it and the three by four above it." Id. at 139:24-25. He also stated that he did not know if the blank row was a part of his invention, but that it was "more a result of how many icons are on the screen." Id. at 143:16-144:12. If more icons were added to the D'790 layout, they would go in the empty row, he said. Id. Chaudhri also stated that the D'790 design would be substantially the same if one, two, three, or four icons were added to the empty row. Id. at 188:4-17. Also, according to Chaudhri, the spacing between the rows of icons in the upper section included "an appreciable amount of room to accommodate a label that would indicate what the icon is.‖ Id. at 159:25 and 160:1-2. He also stated that in comparison to the D'334 patent, the D'790 patent was lacking in details and was minimalistic. Id. at 207:9-23.
Freddy Anzures noted that the D'790 patent included "round rects," or rectangles, that he assumed were icons. Anzures Dep. at 159:24-160:18. Anzures also stated that the D'790 included a specific spacing and scale for the icons "with respect to the aspect ratio of the screen." Id. at 160:21-161:3. He also testified about the D'790 patent that "the visual proportion creates a hierarchy when you look at the device," and that the "four at the bottom" and the "cluster above it" communicates "a certain hierarchy of use, of what's important." Id. at 160:23-161:3.
Imran Chaudhri stated that the D'334 design included "icons" and a "dock". Id. at 192:6- 7. He did not know whether the words "AT&T" or "YouTube" were a part of the claimed design. Id. at 194:25-195:25. He identified a number of icons, including a "Phone" icon that had a telephone receiver or handset in it, id. at 170:4-25; a "Text" icon that had a "speech bubble" or "chat bubble" in it, id. at 172:14-9; a "Notes" icon with a picture of a memo pad, id at 173:11-15; an "iTunes" icon with "music notes" in it, id. at 173:21-174:8; a "settings" icon that included gears, id. at 176:13-177:3; a "photos" icon that depicted a flower, id. at 179:13-20, and an icon above the words "YouTube" that depicted an old-style television, id. at 184:12-20.
31 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page10 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Regarding the D'305 patent, Chaudhri indicated that it was substantially the same as the design in the D'334 patent. Chaudhri Dep. at 203:8-13. He noted as differences that the D'334 design had "page dots" and a "pause button or icon," which the D'305 design did not, and that these were the differences that made the D'334 design a "new and different design when compared to the '305 patent." Id. at 204:3-205:12. Regarding the D'305 patent, Anzures stated that it was the "visual execution" of the D'790 layout. Anzures Dep. at 162:20-21. He also stated that it had a "bottom dock". Id. at 50:11-12. Anzures also indicated that he thought "the idea of having applications on a phone and presented in rounded rectangles or rounded squares for icons . . . had not been done before." Id. at 53:6-11. Chaudhri stated that the D'305 design was "substantially the same as the layout that is shown in the D'790 design patent." Chaudhri Dep. at 198:2-6.
Anticipatory Reference for D'790, D'305, and D'334
1. January 9, 2007 Public Announcement of the iPhone by Apple
32 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page11 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
On January 9, 2007, several months before the alleged conception date for D'790 and D'305, and over a year before the alleged conception of D'334, Steve Jobs publicly announced the iPhone and Apple released images showing a display screen that is substantially the same as the D'790, D'305 and D'334 designs. The only difference between the images released by Apple in January 2007 and the D'305 patent appears to be that the D'305 patent shows a different number on the icon above the word Calendar, it has the addition of an icon featuring an old-style television, and the icons labeled Calculator, Notes, Clock and Settings have moved in their relative positions. An ordinary observer would find these designs to be substantially the same. And although there are a few extra differences between the January 9th image and the D'334 patent, these would be considered minor and obvious to someone skilled in the art. The addition of an extra icon in the case of the D'790 patent, or four extra icons for the D'334 patent, would be obvious to a designer skilled in the art, especially in light of the testimony by Imran Chaudhri that adding icons in the blank row would still yield substantially the same design.
Comparison between D'305, the Jan. 9, 2007 image, D'334, and D'790
Primary Obviousness References for D'790, D'305, and D'334
1. BellSouth/IBM Simon Personal Communicator — (1993)
The Simon Personal Communicator was developed as a joint venture between BellSouth and IBM in the early 1990s and was first shown publicly at a trade show in 1992. The phone was released in 1993 and utilized a touchscreen interface. The interface had a dock of four icons at the bottom of the screen. The phone also ran applications, and the icons for these applications were arrayed in rows and columns, and included a calendar, world clock, calculator, note pad, mail, and address book. The grid pattern provided enough room to accommodate text below the icons. And as can be seen in the middle image below, the background displayed behind the four bottom row or "dock" icons is different than that behind the icons displayed above, helping it to
33 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page12 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION stand out in a visual hierarachy. The dock is also static though the remainder of the screen changes, just as the dock in the GUI design patents remains static while pages of icons are scrolled through, according to Mr. Chaudhri. Chaudhri Dep. at 134:4-10.
The Simon phone shows that from the inception of the "smartphone" era, the obvious and intuitive way to create a touch user interface was through icons and rounded rectangular elements depicting common, everyday metaphors and arranged in a grid pattern of rows and columns. Using the Simon interface as a primary reference in combination with the collection of icons in the chart at the end of the section, a designer of ordinary skill in the art could arrive at a design that is substantially the same as the D'790, D'305, and D'334 patents. I believe this because as telephone and touchscreen technology has improved, phones have decreased in size from what they were in the early 1990s and display screens have become much more high resolution. Designers can visually communicate more in a smaller area than was possible with lower resolutions and larger pixel dimensions in older devices. Reducing the size of the Simon to account for these changes would yield a display screen with dimensions more similar to the three design patents. Maintaining the dock already present in the Simon, a designer would find it obvious to arrange icons and text labels above that dock in rows and columns. A configuration of 4 columns would be obvious in light of the 4 icons in the dock, and as seen in the secondary references below, 4 or 5 rows of icons would be an obvious design choice if the display screen could accommodate it.
34 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page13 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
35 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page14 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
2. Samsung Mobile UX Group — Intelligent Screen Interaction Studies The following image was included in a report and presentation created within Samsung in mid-2006 by the Mobile UX Group. I understand that the report was designed to investigate touchscreen interfaces and to develop and recommend an appropriate interface for a touchscreen mobile phone.
The above side-by-side comparison shows that the Samsung Mobile UX Group report already included a design that was substantially the same as the one shown in the D'790 patent. Both designs include squares with rounded corners. These rounded squares are arranged in a grid pattern in both designs. The squares in both designs also have no ornamentation in them and the display area is rectangular in both designs. There is no status bar at the top of the UX report, but I understand that the elements at the top of the D'790 patent are purportedly not part of the claimed design, so that is not a consequential difference. Also, the colors used in the UX report do not affect my opinion as I understand that the D'790 patent makes no claim as to any specific colors. The only differences between the designs are that the Mobile UX Group report design shows a grid pattern of 3x5, while the D'790 includes a 4x4 pattern with the appearance of a missing row. I believe that a designer skilled in the art would have found it to be an obvious choice to modify the Mobile UX Group design to have an extra column and to remove the fourth row if that were a desirable configuration for the aspect ratio of the touchscreen display. Indeed, the following image from the report shows that the Mobile UX Group considered a pattern of 4 columns, but chose 3 columns in order to optimize the size of the squares for use in a touchscreen device with the specific aspect ratio presented.
36 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page15 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
3. LG KE850 ("LG Prada")
The LG Prada was announced in December 2006, and images of the phone were already public by that time because it had won a design contest in September of 2006. The display screen of the device is rectangular and of similar proportion to the designs shown in the asserted GUI patents. The images below show several alternate graphical user interface displays produced by the LG Prada.
37 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page16 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
The first image contains a row of four squares or icons at the bottom of the display screen, as do the D'790, D'305, and D'334. The second image of the Prada contains rounded rectangles arranged in a grid pattern. Although the grid pattern is 3x5 in the LG Prada and 4x4 with an apparently missing row in D'790, it would be obvious to a designer skilled in the art to alter the number of rectangles in the rows and columns to match what is displayed in D'790 if the designer had a reason to make this change. This is especially true because the image on the left already has four icons in a row, so it was apparent to the designers of the LG Prada that a row of four was feasible if desired. And as seen in the image on the bottom right, the LG Prada displayed icons with text below them, arranged in a grid pattern. For these reasons, I believe the user interface of the LG Prada is a primary obviousness reference for the asserted GUI patents. In combination with secondary references, the LG Prada user interface renders as obvious the designs in the D'790, D'305, and D'334 patents, as they are claimed by Apple's designers. For example, the four icon dock at the bottom of the screen could be used in combination with a device such as the BlackBerry 7130e to create a 4x4 grid of colorful icons with a missing row above the fourth row, like D'305, or a 4x5 grid with a missing icon in the fourth row, like the D'334. And as with many of the other prior art devices in this report, the LG Prada displays icons using common everyday metaphors. For example, there is an icon featuring the receiver of an analog phone, a gear wheel, an envelope, and an address book. These features further render obvious the individual icons in the D'305 and D'334 patents.
4. Finnish Design Application 20030256 Design application 20030256 from Finland was published on April 29, 2004. It depicts an organization of icons in 4x5 grid pattern. The icons are rounded rectangles and are evenly spaced. The icons also contain images that are used in graphical user interfaces as common metaphors. For example, the following images are present: an analog phone receiver, musical eighth notes, a note pad, a calendar, a clock, and a spiral bound address book.
38 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page17 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Comparison views of D'305, Finnish Design Registration 20030256, and D'334
The above side-by-side comparison shows that the Finnish design is very similar to the designs in the D'305 and D'334 patents. For example, the Finnish design does not include text below the icons and there is no status bar or region at the top of the display. The D'305 and D'334 patents each have empty or blank spaces above the dock, while the Finnish design has a full grid. I believe it would have been obvious to a designer skilled in the art to remove some of the differences between the Finnish design and either D'305 or D'334. For example, a slight re- scaling of the Finnish design so that it displays squares instead of rectangles makes the grid pattern, icon size, and icon spacing virtually identical to that in the D'305 and D'334 patents:
Comparison views of D'305, re-scaled Finnish Design Registration 20030256, and D'334
39 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page18 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Also, as explained below, adding text to label icons was a common and obvious design choice at the time the D'305 and D'334 were allegedly conceived. Status bars were another commonplace design choice for user interface displays in mobile devices in 2007. Thus, any modifications or secondary reference combinations needed to make the Finnish design substantially the same as the D'305 and D'334 designs would have been obvious to a designer skilled in the art of creating a graphical user interface for a mobile device in 2007.
5. Japanese Design Patent D1279226 (Issued Aug. 21, 2006)
The Japanese design patent below shows that several design elements said to be claimed in the asserted GUI patents were obvious prior to their alleged conception. Most notably, the use of rounded squares for icons or icon containers. Also, the arrangement of those rounded squares in two sections. Just as Mr. Chaudhri and Mr. Anzures testified regarding the D'790 patent, the Japanese reference below has a row of icons at the bottom of the display that are part of a different visual hierarchy from the icons above, which can help in denoting their importance.
40 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page19 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
6. Sharp Zaurus SL-6000L The Sharp Zaurus SL-6000L was released in 2004 and includes a user interface with colorful square icons arranged in a grid pattern.
Comparison views of D'305, Sharp Zaurus SL-6000L, and D'334.
The above side-by-side comparison shows the three designs to be similar to one another. For example, the user interface display in the Sharp Zaurus SL-6000L contains an array of colorful icons arranged in a grid pattern. The icons are square in all three displays. There are also text labels below each icon for all three. The Sharp Zaurus SL-6000L display also includes a status bar that shows information such as the time and battery strength, although it is located at the bottom of the screen, not the top. The Sharp Zaurus also includes a number of icons with the same or similar text and metaphor as the D'305 and D'334 patents. For example, all three have an icon with the word "calendar" below a calendar page with a day and number on it; all three have an icon above the word "clock" with an image of a clock on it; all three include an icon labeled "calculator" with the addition, subtraction, multiplication, and division symbols arranged in a 2x2 grid on it; and all three have an icon labeled "mail" or "Email" with a picture of an envelope on it. Also, both the Sharp Zaurus SL-6000L and the D'334 patent have an icon
41 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page20 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION featuring musical eighth notes and a circular element. Each of these two designs also has 5 rows of icons. There are a few differences between the Sharp Zaurus SL-6000L design and the two Apple designs. For example, the Sharp Zaurus SL-6000L design has 3 columns while the D'305 and D'334 patents have 4 columns.
7. Midinux The Midinux was released on April 18, 2007 and includes a user interface with colorful rounded square icons with labels beneath that are arranged in a grid pattern, and a dock of icons at the bottom of the screen.
42 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page21 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Early Development of Computer Graphical User Interfaces
1. Xerox Star display – (1981)
The Xerox Star, released in 1981, featured a functional icon layout with icons arrayed in a grid pattern. Frequently used icons were placed at the bottom of the screen and were given text labels. Many icons were square with rounded corners. This reference was the basis for the contemporary development of iconography. The display also contained a status bar at the top of the display.
43 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page22 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
The following image shows a Xerox design study that was done in 1980. The image shows a graphical user interface design using square icons with rounded corners. The icons are displayed in an evenly spaced grid pattern. Combining this reference with the icons collected below would be enough to create designs that are substantially the same as the D'305 and D'334 designs. Removing the content of the icons to leave only the outlines of rounded squares would yield the D'790 patent.
(http://www.digibarn.com/collections/screenshots/xerox-star-8010/index.html)
2. Arthur — Acorn Computers (1987)
In 1987, Acorn Computers released an operating system known as Arthur that utilized icons and a taskbar (or icon bar) at the bottom of the display. The system used common metaphors such as a clock, a calculator, a calendar, and a notepad for the icons. This reference helps render those metaphors as obvious for use in an operating system, as well as placing commonly used icons in a dock or taskbar at the bottom of the display screen.
44 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page23 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
3. NeXTSTEP — (1989)
The NeXTSTEP user interface was released in 1989 and featured a dock where icons were gathered. The icons were squares with colorful images on them displaying the various metaphors that represented the underlying applications. This reference renders obvious the square shape of the icons in the GUI patents as well as the dock.
45 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page24 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
4. Windows 95 — (1995)
In 1995, Microsoft released the Windows 95 graphical user interface-based operating system. The system featured icons, arranged in a grid pattern, included text labels below the icons, and a dock of applications in use.
5. Mac OS X 10.4 — Tiger (2005)
The Tiger operating system, released in 2005, included a user interface application called the Dashboard. The Dashboard displayed a dock at the bottom of the screen where square icons with rounded corners were located. These icons also had text labels beneath them and the dock featured a background distinct from the background used for the main screen. Among the icons in Dashboard were those for calculator, calendar, and stocks applications or "widgets". Several icons, such as the calculator, calendar, and stocks icons look substantially the same as they do in the D'305 and D'334 patents.
46 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page25 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Development of PDAs and Phones with Graphical User Interface Systems
8. BellSouth/IBM Simon Personal Communicator — (1993)
As mentioned above, the IBM Simon was the first "smartphone" and contained a number of features that Apple's inventors claimed were new and unique to the Apple GUI design patents.
9. MessagePad — Apple Newton — (1993)
The MessagePad was developed by Apple in the early 1990s and featured a touchscreen user interface. Various models of the MessagePad are shown below, all of which feature a user interface with icons arrayed in a grid pattern, with common applications represented in a dock, usually at the bottom of the screen.
47 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page26 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
48 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page27 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
10. Tandy Zoomer — (1992)
In 1992, the Tandy company released the Tandy Zoomer, which was a personal digital assistant ("PDA"). The Zoomer was a touchscreen device and the graphical user interface utilized icons arrayed at the bottom of the screen in a dock region. The icons included a calendar page, an analog phone receiver, a calculator, a writing pad, and a world clock.
49 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page28 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
11. Handspring Visor — (1999)
Like its predecessors, the Handspring Visor user interface displayed icons arranged in a grid pattern with text labels beneath. A dock of four icons for commonly used tasks surrounded a stylus input matrix in a 2x2 grid. The Visor had icons for common applications such as calculator, date book, mail, addresses, and world clock. The Visor also had a status bar at the top of the display showing information such as the time and battery strength. A location indicator on the side of the display indicated the portion of the icon catalog being displayed on the screen. Although the user interface included a 3x4 grid pattern, it would be an obvious choice to a designer with skill in the art to create a 4x4 grid if the screen permitted. Using this device as a primary reference, adjusting the dock to look like the one in the Simon Personal Communicator, and adding square icons from the collection below, the display of the Visor could be easily altered to look substantially the same as the GUI patents.
50 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page29 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
12. Palm a. Palm i705
The Palm i705 is an example of an early PDA device made by Palm. The i705 device was released in January 2002 and the display maintained the same general appearance as the predecessor Handspring device.
51 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page30 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
b. Palm Treo
The Palm Treo is a line of PDAs beginning in 2002. Building off of the earlier Handspring and Palm devices, the Treo display featured colorful icons arranged in a grid pattern. The display also had a status bar at the top including information such as time, network, battery power, and signal strength. The devices also had icons for various applications such as messages, calendar, picture/video, calculator, memos, and contacts, and each icon had a text label beneath.
52 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page31 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
13. BlackBerry Devices
Beginning in the late 1990s, the company Research in Motion (RIM) developed and produced BlackBerry devices that operated as smartphones and PDAs. Representative pictures of the displays of various models are shown below. In general, the displays for the BlackBerry devices share many of the same features: Colorful array of icons Icons in matrix pattern Status bar or region at top of display screen, including information such as time, network, battery power, and signal strength. Icons for various applications such as messages, telephone calling, tasks, settings, notes, calculator, clock, volume, calendar, address book.
i) BlackBerry 6710 (released Oct. 2002))
ii) RIM BlackBerry 7100V (released around Oct. 2004)
53 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page32 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
iii) BlackBerry 7290 (released early 2005)
iv) BlackBerry 7130e (released Nov. 2005)
54 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page33 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
v) BlackBerry 8700C (released Nov. 2005)
55 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page34 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
vi) BlackBerry 8700g (released April 17, 2006)
56 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page35 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
14. Nokia N73 — (August 2006)
The Nokia N73 was announced in April 2006 and released in August 2006. As with many of the references above, the rectangular display on the device contained a matrix of colorful icons in a grid pattern. The icons used common metaphors such as eighth notes for the music player function, an envelope for messages, and a wirebound page displaying the day of the month the calendar function. One and two word text labels were used below each icon. All of these features were further rendered obvious to designers with skill in the art by the Nokia N73.
57 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page36 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
15. Samsung F700
The Samsung F700 was announced in February 2007, and like the LG Prada above, it contains a number of features later included in the D'305 and D'334 patents. The phone has a rectangular display screen presenting a grid of icons. There is a row of four icons at the bottom of the display screen, and the display includes icons using common metaphors such as the receiver of an analog phone, an envelope, musical eighth notes, a globe, the silhouette of a person, a camera, a wirebound calendar page that includes the day of the month, and a clock. These features, which are shared by a number of other prior art devices, had become common by the time they were used in the Samsung F700.
58 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page37 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Various Design Elements Already Known Prior to the Alleged Conception Dates for D'790, D'305 and D'334
1. Dot Indicators
The Samsung F300 was announced in December 2006 and contained a dual face construction, one side being a phone and the other an MP3 player. The user interface for the MP3 player included a row of icons at the bottom of the display, including a common musical eighth note icon for the music player. Above each icon was a small filled circle, or dot, that increased in brightness when the user scrolled to that icon at the icon menu screen.
Like many of the previously discussed devices, the F300 also had a status bar or region at the top of the screen that displayed useful information such as the battery's strength.
2. Square Icons and Containers with Rounded Corners
The following references in this section all display square icons or containers with rounded corners. All of these pieces of prior art serve as secondary references of obviousness for the rounded square design feature, as well as other features, such as the use of a status bar and arrangement of icons in a grid pattern. Many of the individual icons shown in the designs below can also serve as secondary references for the obviousness of the individual icons in the D'305 and D'334 patents. Many of those icons have been collected in the chart at the end of this section.
59 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page38 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
a. Korean Patent 30-20060005195 (Issued February 11, 2006)
b. Nokia 7710 – (Released Nov. 2004)
c. European Community Design Registration No. 000505532-0001 (Published May 23, 2006)
60 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page39 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
c. Korean Design Patent 30-0403504 (Published Jan. 10, 2006)
d. Japanese Design Patent D1189312 (Issued Nov. 5, 2003)
e. United States Patent Application Publication 2007/0067738 (Published Mar. 22, 2007)
61 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page40 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
3. Status Bar or Region at Top of Display Screen
The following is a sampling of devices and designs that present a status bar or region at the top of the display, including images that symbolize battery strength, signal strength, the name of a carrier and/or network, and the time. In almost every case, the signal strength and battery strength are indicated using parallel bars. In the case of signal strength, the bars increase in height from left to right, as with the D'305 and D'334 patents. And battery strength is often depicted using equal parallel bars inside the outline of a battery, as in the D'305 and D'334 patents. Time is also displayed in a number of the status bars below, and is usually depicted using numerals and the abbreviations "AM" or "PM".
Korean Patent 30-20060005195 (February 11, 2006)
US 2005/0183026 A1 (Aug. 18, 2005)
Community Design Reg. 000584529-0001 (Nov. 14, 2006)
62 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page41 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Windows Mobile 5.0 (2005)
Windows Mobile 6.0 (Feb. 2007)
Palm i705 (Jan. 2002)
Palm Treo (Nov. 2006)
RIM BlackBerry 7100V Oct. 2004)
BlackBerry 8700C (Nov. 2005)
BlackBerry 7130g (Sept. 2006)
BlackBerry 6710 (Oct. 2002)
United States Patent Application Publication 2007/0067738 (Mar. 22, 2007) LG KE850 ("LG Prada") (Dec. 2006)
4. Common Metaphors for Icons
The following is a collection of prior art icons using the same metaphors that appear to have been used by Apple in the D'305 and D'334 patents.
Icon Features Icon Images 1. Phone Icons An icon featuring the receiver of an analog phone. Receiver depicted at a near Samsung M4300 (2005)
63 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page42 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images 45 degree angle. Green color often used either for the phone Windows Mobile 5.0 (2005) receiver or the phone.
(08.2007 – KU990Viewty)
(09.2007 - LG KS20)
(05.2007 - LG U960)
(Samsung SGH 800 (1999))
(Samsung SCH-X800 (2003))
Nokia 6310i (March 2002)
Skype (2005-2006)
Finnish Design Registration 20030256 (April 2004)
BlackBerry 6710 (released Oct. 2002)
BlackBerry 7290 (released early 2005)
BlackBerry 7130e (Released Nov. 2005)
Nokia 7710 – (Nov. 2004) 2. Settings Icons An icon featuring gear wheel(s).
2002 Samsung (CDMA2000)
64 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page43 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images
2004 Samsung (Mega2 model)
2005 design registration
Windows Mobile 5.0 (2005)
중남미향 (2002)
의장등록 (2004)
(2006 – Samsung SCH-U420)
(2004 Sony Ericsson Q4 T290)
(Dec. 2006 – LG ke850 prada)
GNOME 2.0 (2002 – ―Applications‖)
Windows 95 (1995 – ―Settings‖)
65 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page44 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images
Windows 98 (1998 – ―Settings‖)
GNOME 2.0 (2002 – ―Run‖)
Slicer – 2006 Windows Icons Design Contest Winner
Slicer – 2006 Windows Icons Design Contest Winner
BlackBerry 8700c (Nov. 2005)
Windows Mobile 6 (Feb. 2007)
Korean Patent 30-20060005195 (Issued February 11, 2006)
European Community Design Registration No. 000505532-0001 (Published May 23, 2006)
European Community Design Registration No. 000778741-0001 (Published April 9, 2007)
Korean Design Patent 30-0403504 (Published Jan. 10, 2006)
3. Notes Icons An icon featuring paper bound at one edge
66 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page45 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images
GEOS (1986)
GeoWorks 1990-2002
Mac OS 1995-1999
OS/2 (1992)
OS/2 (1994)
OS/2 (1996)
US 2005/0183026 A1 (Aug. 18, 2005)
BlackBerry 7290 (2005)
Finnish Design Registration 20030256 (April 2004)
BlackBerry 7130e (Nov. 2005)
67 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page46 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images
BlackBerry 8700g (April 2006)
BlackBerry 7130g (Sept. 2006)
Korean Design Patent 30-0441582 (Feb. 27, 2007)
BellSouth/IBM Simon Personal Communicator — (1993)
4. Contacts Icons Colorful icons that include the silhouette of a person‘s head and shoulders on or next to a bound address book or information card. Palm Treo 700p (Q2 2006)
Gigabyte GSmart q60 (May 2007)
Windows Mobile 5.0 (2005)
Windows Mobile 6.0 (Feb. 2007)
Vodafone v1240 (HTC Tornado Noble) (Jan. 2006)
Sony Clie PEG-NX73VE (Sept. 2003)
Blackberry 8703e (Verizon 2006)
68 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page47 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images
BlackBerry 8700c (Nov. 2005)
Sharp Zaurus SL-5600 (2003)
United States Patent Application Publication 2007/0067738 (Mar. 22, 2007)
Samsung F700 (Feb. 2007)
5. Music Icons Colorful icons that include eighth notes Icons that include a CD Icons that include eighth notes and a CD GNOME 2.0 (2002 – ―Media Player‖)
GNOME 2.0 (2002 – ―CD Player‖)
OS/2 Warp 3 (1994 – ―CD Player‖)
Window NT 3.1 (1993 – ―CD Player‖)
BeOS Operating System – (1995)
Samsung SCH-X650 (Aug. 2002)
SonyEricsson K800 (June 2006)
69 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page48 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images
2007 SAMSUNG SGH-F700
Nokia N77 (Feb. 2007)
Slicer – 2006 Windows Icons Design Contest Winner
BlackBerry 8700c (Nov. 2005)
Sharp Zaurus SL-5600 (2003)
Finnish Design Registration 20030256 (April 2004)
BlackBerry 6710 (released Oct. 2002)
Korean Patent 30-20060005195 (Issued February 11, 2006)
European Community Design Registration No. 000584529-0001 (Published Nov. 14, 2006)
European Community Design Registration No. 000778741-0001 (Published April 9, 2007)
European Community Design Registration No. 000778741-0001 (Published April 9, 2007)
70 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page49 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images
Nokia 7710 – (Nov. 2004)
Nokia N73 (August 2006)
Samsung F300 (Dec. 2006) 6. Photos Icons Colorful icons or images depicting an orange or yellow flower.
01.2007 Windows Vista
Photoshop 2006
7. Text Messaging Icons Colorful icons featuring cartoon text balloons of various shapes including Samsung SGH-Z130 (Jan. 2005) rounded rectangles. Text balloons including several letters or a small picture. 2005 AOL Icon
2003 ICQ
Blackberry 8830 (Q2 2007)
Colorful icons that include 8. Calendar Icons a calendar page, often
71 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page50 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images including the day number. United States Patent D445,428 (Issued July 24, 2001)
Sharp Zaurus SL-5600 (2003)
Windows Mobile 5.0 – (2005)
Finnish Design Registration 20030256 (April 2004)
BlackBerry 7130g (Sept. 2006)
Windows Mobile 6 – (Feb. 2007)
BlackBerry 6710 (released Oct. 2002)
BlackBerry 7290 (released early 2005)
BlackBerry 8700C (released Nov. 2005)
BlackBerry 7130e (Released Nov. 2005)
RIM BlackBerry 7100V (released Oct. 2004)
Palm Treo (released Nov. 2006)
Palm i705 (released ~ Jan. 2002)
European Community Design Registration No. 000584529-0001 (Published Nov. 14, 2006)
72 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page51 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images
European Community Design Registration No. 000778741-0001 (Published April 9, 2007)
Korean Design Patent 30-0441582 (Published Feb. 27, 2007)
BellSouth/IBM Simon Personal Communicator — (publicly announced 1993)
Nokia 7710 – (Nov. 2004)
Nokia N73 (August 2006)
Apple Newton MessagePad 2000 (1995) Samsung F700 – (Announced Feb. 2007)
Mac OS X 10.4 Tiger (2005)
Sony Ericsson T610i (2003)
Colorful icons that include 9. Calculator Icons mathematical symbols in a 2x2 grid pattern. Colorful icons that include images of a calculator. Palm i705 (released ~ Jan. 2002)
US 2005/0183026 A1 (Published Aug. 18, 2005)
Sharp Zaurus SL-5600 (2003)
Palm Treo (released Nov. 2006)
73 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page52 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images
Mac OS X 10.4 Tiger (2005)
BlackBerry 7130g (Sept. 2006)
BlackBerry 7290 (released early 2005)
BlackBerry 7130e (Released Nov. 2005)
United States Patent D445,428 (Issued July 24, 2001)
BellSouth/IBM Simon Personal Communicator — (publicly announced 1993)
Colorful icons that include 10. Mail Icons an envelope.
Sharp Zaurus SL-5600 (2003)
LG Prada (Dec. 2006)
BlackBerry 7130g (Sept. 2006)
Windows Mobile 5.0 – (2005)
Windows Mobile 6.0 – (Feb. 2007)
BlackBerry 6710 (released Oct. 2002)
74 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page53 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images
BlackBerry 7290 (released early 2005)
Korean Patent 30-20060005195 (Issued February 11, 2006) Motorola Razr (late 2004)
BlackBerry 8700c (Nov. 2005)
BlackBerry 7130e (Released Nov. 2005)
RIM BlackBerry 7100V (released Oct. 2004)
Palm Treo (released Nov. 2006)
Palm i705 (released ~ Jan. 2002)
European Community Design Registration No. 000584529-0001 (Published Nov. 14, 2006)
European Community Design Registration No. 000505532-0001 (Published May 23, 2006)
United States Patent D445,428 (Issued July 24, 2001)
BellSouth/IBM Simon Personal Communicator — (publicly announced 1993)
Nokia 7710 – (Nov. 2004)
Nokia N73 (August 2006) Samsung F700 – (Announced Feb. 2007)
75 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page54 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images Sony Ericsson T610i (2003) Colorful icons that include 11. Clock Icons a clock.
United States Patent D445,428 (Issued July 24, 2001)
Sharp Zaurus SL-5600 (2003)
Finnish Design Registration 20030256 (April 2004)
BlackBerry 7130g (Sept. 2006)
BlackBerry 6710 (released Oct. 2002)
Palm i705 (released ~ Jan. 2002)
European Community Design Registration No. 000584529-0001 (Published Nov. 14, 2006)
BlackBerry 7130e (Released Nov. 2005)
Korean Design Patent 30-0441582 (Published Feb. 27, 2007)
BellSouth/IBM Simon Personal Communicator — (publicly announced 1993)
Samsung F700 – (Announced Feb. 2007) Colorful icons that include 12. Web Browser Icons a globe, a portion of a globe, or a web browser program symbol. Korean Design Patent 30-0441582 (Published Feb. 27, 2007)
76 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page55 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images
Nokia 7710 – (Nov. 2004)
European Community Design Registration No. 000584529-0001 (Published Nov. 14, 2006)
BlackBerry 7130e (Released Nov. 2005)
BlackBerry 8700C (released Nov. 2005)
Samsung F700 – (Announced Feb. 2007)
BlackBerry 8700g (Released April 17, 2006)
BlackBerry 7290 (released early 2005)
BlackBerry 6710 (released Oct. 2002)
BlackBerry 7130g (Released Sept. 2006)
Windows Mobile 5.0 – (2005)
Windows Mobile 6.0 – (Feb. 2007)
Colorful icons that include 13. Camera Icons a camera.
Palm Treo (released Nov. 2006)
European Community Design Registration No. 000584529-0001 (Published Nov. 14, 2006)
Korean Design Patent 30-0403504 (Published Jan. 10, 2006)
77 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page56 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
Icon Features Icon Images
Korean Design Patent 30-0441582 (Published Feb. 27, 2007)
Nokia 7710 – (Nov. 2004)
Samsung F700 – (Announced Feb. 2007)
Samsung F300 (Dec. 2006)
Sony Ericsson T610i (2003)
United States Patent Application Publication 2007/0067738 (Mar. 22, 2007) Icon that includes a line 14. Stocks Icon graph.
Mac OS X 10.4 Tiger (2005)
Additional Obviousness References for D'790
1. United States Patent 6,983,424 US patent 6,983,424 ("'424") was filed on June 23, 2000 and issued on January 3, 2006. The patent is directed at a method of automatically scaling icons to fit a display area. Figure 8b of the '424 patent shows empty squares evenly arranged in a 4x3 grid pattern.
78 Case5:11-cv-01846-LHK Document1356-7 Filed07/26/12 Page57 of 57 SUBJECT TO PROTECTIVE ORDER CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS‘ EYES ONLY INFORMATION
I understand Apple contends that its iTunes icons are distinctive. To the contrary, as the images below illustrate, icons bearing an eighth note and/or a record are frequently used by companies other than Apple to represent music functions in connection with consumer electronics sold on the market today:
Apple SONY VITA NOKIA Smart Music
In sum, none of the graphical user interface elements identified by Apple as being trademarks and/or trade dress are distinctive in the marketplace. A matrix of colorful icons, an icon ―dock‖ as well as all of the individual icons are all widely used by competing manufactures of consumer electronics and are not unique to Apple.
VII. SUMMARY
In conclusion, it is my opinion that the Asserted Design Patents, trade dress and trademarks are functional because they enhance utility of the subject devices. In addition, it is my opinion that the asserted trademarks and trade dress are not distinctive because similar trademarks and trade dress are regularly used on consumer electronics by manufactures other than Apple. If Apple were to ―own‖ any of these features, other manufacturers would be placed at a significant competitive disadvantage from an industrial design perspective in that they could not employ many of the most useful and efficient designs and configurations, and the quality of the resulting devices would suffer.
Signature executed on March 22, 2012
______
Samuel Lucente
89 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page1 of 24
EXHIBIT 64 FILED UNDER SEAL
Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page2 of 24 Confidential Attorneys' Eyes Only
Page 1 1 UNITED STATES DISTRICT COURT 2 NORTHERN DISTRICT OF CALIFORNIA 3 SAN JOSE DIVISION 4 APPLE INC., a California corporation, 5 6 Plaintiff, 7 vs. Case No. 11-CV-01846-LHK 8 SAMSUNG ELECTRONICS CO., LTD., a Korean business entity; 9 SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation; 10 SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, a Delaware 11 limited liability company, 12 Defendants. ------/ 13 14 15 16 CONFIDENTIAL 17 ATTORNEYS' EYES ONLY 18 OUTSIDE COUNSEL 19 VIDEOTAPED DEPOSITION OF IMRAN CHAUDHRI Redwood Shores, California 20 Friday, October 14, 2011 21 22 23 Reported by: LORRIE L. MARCHANT, CSR No. 10523, RPR, CRR, CCRR, CLR 24 JOB NO. 42879 25
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page3 of 24 Confidential Attorneys' Eyes Only
Page 2 1 October 14, 2011 2 9:35 a.m.
3
4 Videotaped Deposition of IMRAN 5 CHAUDHRI, held at the offices of Quinn 6 Emanuel Urquhart & Sullivan, LLP, 555 7 Twin Dolphin Drive, 5th Floor, Redwood 8 Shores, California, before Lorrie L. 9 Marchant, a Certified Shorthand 10 Reporter, Registered Professional 11 Reporter, Certified Realtime Reporter, 12 California Certified Realtime Reporter 13 and Certified LiveNote Reporter.
14
15
16
17
18
19
20
21
22
23
24
25
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page4 of 24 Confidential Attorneys' Eyes Only
Page 3 1 A P P E A R A N C E S: 2 3 FOR THE PLAINTIFF APPLE INC.: 4 MORRISON & FOERSTER BY: MATTHEW KREEGER, ESQ. 5 425 Market Street San Francisco, California 94105 6 7 8 FOR THE DEFENDANTS SAMSUNG: 9 QUINN EMANUEL URQUHART & SULLIVAN BY: ALAN WHITEHURST, ESQ. 10 1101 Pennsylvania Avenue NW Washington, D.C. 20004 11 12 and 13 BY: ALEX BAXTER, ESQ MARGRET CARUSO, ESQ. 14 BRETT ARNOLD, ESQ. 555 Twin Dolphin Drive 15 Redwood Shores, California 94065 16 17 and 18 BY: MICHAEL ZELLER, ESQ. 19 865 South Figueroa Street Los Angeles, California 90017 20 21 22 ALSO PRESENT: 23 Cyndi Wheeler, Apple IP Litigation Counsel 24 Alan Dias, Videographer 25 ---oOo---
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page5 of 24 Confidential Attorneys' Eyes Only
Page 4 1 (Marked for identification purposes, 2 Exhibit 570 through 572.) 3 THE VIDEOGRAPHER: We are on the video 4 record at 9:34 a.m. In the matter of Apple Inc., 5 versus Samsung, in the United States District Court, 6 Northern District of California. Case No. 7 11-CV-01846-LHK. 8 We are located today at 555 Twin Dolphin 9 Drive, in the City of Redwood Shores, California. 10 Today is October 14, 2011, and the time is 9:35 a.m. 11 My name is Alan Dias from TSG Reporting. 12 Counsel, would you please identify yourself 13 for the record. 14 MR. WHITEHURST: Good morning. My name 15 Alan Whitehurst. And with me today is my colleague, 16 Alex Baxter. We are with the law firm Quinn 17 Emanuel, and we represent Samsung. 18 MR. KREEGER: Matthew Kreeger, Morrison & 19 Foerster, representing Apple. With me is 20 Cyndi Wheeler from Apple. 21 THE VIDEOGRAPHER: Will the court reporter 22 please swear in the witness. 23 THE REPORTER: Do you solemnly swear or 24 affirm under the penalties of perjury that the 25 testimony you are about to offer will be the truth,
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page6 of 24 Confidential Attorneys' Eyes Only
Page 5 1 the whole truth and nothing but the truth? 2 THE WITNESS: I do. 3 THE VIDEOGRAPHER: You may proceed. 4 EXAMINATION BY MR. WHITEHURST 5 BY MR. WHITEHURST: 6 Q. Good morning, Mr. Chaudhri. 7 A. Good morning. 8 Q. My name is Alan Whitehurst, and I will be 9 taking your deposition today. 10 Could you please state your full name and 11 address for the record. 12 A. My name is Imran Chaudhri. My address is 13 57 Beaumont, San Francisco, California 94118. 14 Q. And before the deposition, I marked as 15 Exhibit 570 a copy of your Deposition Notice. 16 Have you testified in a deposition before? 17 A. I have. 18 Q. How many times? 19 A. Once. 20 Q. And what case was that for? 21 A. It was a -- a case involving Motorola. 22 Q. Was that for a litigation between Motorola 23 and Apple? 24 A. I believe so. 25 Q. And when was that deposition?
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page7 of 24 Confidential Attorneys' Eyes Only
Page 132 1 this very broadly, then, I take it you don't have 2 any knowledge or information about the specific 3 mockup that's in front of you right now? 4 A. That's correct. 5 MR. ZELLER: So I think that -- 6 MR. KREEGER: Can we take a quick break, 7 please? 8 MR. ZELLER: Sure. 9 THE VIDEOGRAPHER: This is the end of Disk 10 No. 3, Volume I. We are off the record at 2:45 p.m. 11 (Recess taken, from 2:45 to 2:56.) 12 THE VIDEOGRAPHER: This is the beginning of 13 Disk No. 4, Volume I. We are back on the record at 14 2:56 p.m. You may proceed. 15 BY MR. ZELLER: Let's please mark as 16 Exhibit 576 a multipage document, which is a copy of 17 the United States Design Patent 627,790. 18 (Marked for identification purposes, 19 Exhibit 576.) 20 BY MR. ZELLER: 21 Q. Please let me know when you've had a chance 22 to review Exhibit 576. 23 A. Okay. 24 Q. Do you recognize this as the '790 design 25 patent that you're named as the inventor on?
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page8 of 24 Confidential Attorneys' Eyes Only
Page 133 1 A. I do. 2 Q. And I take it you've seen this before 3 today? 4 A. I have. 5 Q. Can you please tell me, upon reviewing 6 the -- the figure which is on the last page of 7 Exhibit 790 [sic], what is it that you invented 8 that's reflected here? 9 MR. KREEGER: Objection. 10 You can answer. 11 THE WITNESS: It looks like it's the home 12 screen for the iPhone. 13 BY MR. ZELLER: 14 Q. And in terms of what's depicted here of the 15 home screen of the iPhone that's shown in this 16 figure, what is it that you -- you came up with 17 yourself? 18 A. I came up with the shape of the icons and 19 the way they're laid out. And the two sections. 20 Q. And when you say "the two sections," the 21 fact that there's two rows on top and then this 22 missing or blank area and then a bottom row? 23 A. Yeah. The -- mainly that the bottom row is 24 different from the rest of the icons. 25 Q. And what do you mean by that? How are they
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page9 of 24 Confidential Attorneys' Eyes Only
Page 134 1 different from the rest of the icons? 2 A. They -- they give the customer a quicker 3 access to them. 4 Q. Oh, I see. 5 The bottom row, because it remains static, 6 as opposed to moving when -- when pages are scrolled 7 through on the device, gives the user quicker access 8 to those -- those bottom -- that bottom row of 9 icons? 10 A. For example, yeah. 11 Q. What else does it do? What other ways does 12 it give -- does this layout give the customer 13 quicker access? 14 A. It also gives them a closer proximity to 15 where their finger was previously. 16 Q. And perhaps if you could explain that for 17 me. I'm not -- I'm not entirely following that 18 part. 19 A. So the customer would press the home 20 button, which would bring them to this home screen. 21 And generally their -- their finger would be towards 22 the bottom of the screen anyway. And it means that 23 their -- that their finger wouldn't have to travel 24 as far. 25 Q. And by that, it means that having that --
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page10 of 24 Confidential Attorneys' Eyes Only
Page 135 1 that bottom row placed where it is, in the manner 2 you have it placed, is -- is that it's easier and 3 faster for the -- the customer or the user to use? 4 A. That's correct. 5 Q. So are there other -- other ways in which 6 the layout that's depicted here on this figure of 7 the '790 design patent is -- is easier for users to 8 use? 9 A. In that it's a regular layout. 10 Q. What do you mean by "a regular layout"? 11 A. That there is a -- an evenness to the 12 amount of -- to the rhythm of the spacing, that 13 there's rows and columns that are orderly -- laid 14 out in an orderly fashion. 15 Q. And how is it that that makes the layout 16 easier to use for the customer? 17 A. Well, it makes it predictable. 18 Q. Maybe I should try it this way: You 19 mentioned that having it -- the -- the layout of the 20 icons as depicted here in the figure of the '790 21 design patent means that it's an orderly layout. 22 What do you mean by "orderly"? 23 A. By "orderly" I mean that they're very clean 24 in terms of how they are placed. They're regular. 25 Q. And in your view does that make it easier
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page11 of 24 Confidential Attorneys' Eyes Only
Page 136 1 for users to actually use the device? 2 A. I believe so. 3 Q. And -- and how is that? 4 A. It reduces clutter. 5 Q. And that's one way in which it makes it -- 6 the layout, and ultimately the device, then, easier 7 and faster to use? 8 A. Yes. 9 Q. And is that what you were attempting to 10 accomplish by -- by this layout that's depicted here 11 in the figure of the '790 design patent? 12 A. That was one of the things. 13 Q. Ultimately making it faster and easier for 14 consumers to use? 15 A. And simpler. 16 Q. And how does that -- maybe I should ask 17 this: Sometimes I hear designers use the term "the 18 human factor" as part of the design process. 19 Is that a term that you typically use or -- 20 or one that you are familiar with? 21 A. No. 22 Q. Is there something similar that you would 23 call it? 24 (Unidentified man enters room.)
25
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page12 of 24 Confidential Attorneys' Eyes Only
Page 137 1 BY MR. ZELLER: 2 Q. Or those kind of considerations? 3 A. Intuitive. 4 Q. So another one of the reasons why you -- 5 you did the layout as you did, that's shown here in 6 the figure to the '790 design patent, was -- was to 7 make it intuitive for the user? 8 A. That was another reason. 9 Q. And is that the same thing in your view 10 as -- as simplicity, or is that something different? 11 A. I think there's a relationship to that. 12 Q. So you -- you would, at least as a 13 designer, consider them to be somewhat different, 14 but related? 15 A. Simplicity and intuitive? 16 Q. M-hm. 17 A. Yeah. 18 Q. And maybe if you could just tell me a 19 little bit about how you view them as being 20 different and how you view them as overlapping. 21 Just by your terminology. I'm just trying to make 22 sure I'm understanding. 23 A. Sure. Okay. 24 By "simplicity" I mean that it's really 25 easy to find things. By "intuitive" I mean the fact
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page13 of 24 Confidential Attorneys' Eyes Only
Page 138 1 that it's easy to find things the more natural it 2 feels. 3 Q. So what -- what other -- what other goals 4 were you trying to reach, then, with respect to the 5 layout of the icons that's shown here in the figure 6 of the '790 design patent other than the -- the 7 simplicity, the orderly layout, the intuitive manner 8 and the like that you've already discussed? 9 A. I wanted to make it easier for people to 10 know where to go for something. 11 Q. And that's -- is that the same as -- as 12 trying to make it easy to -- to find functions on 13 the phone? 14 A. Kind of. 15 Q. And -- and how is it different, then? 16 A. It's different in that if you wanted to go 17 to a particular aspect of the phone, you would see a 18 flat layout. And ideally every one of those objects 19 would be unique to that -- that aspect that you were 20 looking for. 21 Q. Then other than what you've -- you've 22 described in your answers earlier, is there anything 23 else that you were trying to accomplish by -- by way 24 of the layout that's depicted here, the icons in the 25 '790 design patent, or have you given me your
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page14 of 24 Confidential Attorneys' Eyes Only
Page 139 1 complete testimony on that? 2 A. I'm sure there's other details, but those 3 are the high-level ideas. 4 Q. And so what you've described, in your view, 5 is a -- describes the main purposes you intended to 6 achieve through the -- the layout that's depicted 7 here in Exhibit 790? In other words, these are the 8 primary goals you were looking to achieve? 9 A. That's right. 10 Q. In terms of -- you'll notice that the 11 figure here has this blank area. And just so the 12 record is clear on this, the top there are three 13 rows and then a blank area and then a bottom row of 14 another four icons. 15 Do you see that? 16 A. I do. 17 Q. In your view, was there -- was there 18 something different about having that blank area as 19 compared to what other people had done as of the 20 time that you -- you created this? 21 (Unidentified man leaves room.) 22 THE WITNESS: Well, I'm not sure about what 23 other people had done. But as far as the blank 24 area, there's really no difference between it and 25 the three by four above it.
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page15 of 24 Confidential Attorneys' Eyes Only
Page 151 1 Q. You'll see on the -- the front page that 2 there is a law firm mentioned. It's in the second 3 column, about halfway down. And it says Sterne, 4 Kessler, Goldstein & Fox. 5 A. I see that. 6 Q. Did you have any communications with them 7 with respect to the '790 design patent? 8 A. I did not. 9 Q. Do you recall ever having any 10 communications with that law firm? 11 A. I don't. 12 Q. Do you have any knowledge or information as 13 to how it was determined that you would be the sole 14 named inventor on this design patent? 15 A. I don't. 16 Q. Do you know where the figure came from? 17 A. I don't, actually. 18 Q. Did you yourself draw it? 19 A. I did not. 20 Q. If you wanted to find out from someone 21 there in the company who -- who actually did the 22 drawing or at least the first draft of this drawing 23 of the figure, is there someone at the company you 24 can think of you'd go ask? 25 A. I would probably start with Quinn.
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page16 of 24 Confidential Attorneys' Eyes Only
Page 152 1 Q. He's the in-house person you mentioned 2 before? 3 A. M-hm. 4 Q. So just focusing, then, on the fact that 5 the icons are laid out here in kind of -- in rows 6 and columns, were there other alternatives that you 7 considered other than having the layout done as rows 8 and columns? 9 A. I don't remember. 10 Q. Have you ever seen alternatives that you 11 thought were as effective in terms of the icon 12 layout, where it was in some layout or organization 13 other than generally as rows and columns? 14 MR. KREEGER: Objection. Vague. 15 You can answer. 16 THE WITNESS: I don't believe so. 17 BY MR. ZELLER: 18 Q. Would you consider the -- the layout of 19 icons in rows and columns to be the common default 20 organization for icons? 21 A. On a phone? 22 Q. Well, on -- on electronic devices 23 generally. 24 A. No. 25 Q. What would you consider to be the most
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page17 of 24 Confidential Attorneys' Eyes Only
Page 153 1 common layout? 2 A. A list. 3 Q. I'm sorry? 4 A. A list. 5 Q. A list? 6 A. (No audible response.) 7 Q. And what do you mean by "a list"? 8 A. A list of icons and their names next to 9 them and dates and -- kind of like what you would 10 find in a file browser. That I think is the most 11 common. 12 Q. Maybe I need to put more context on this. 13 You're talking about machines generally, 14 including, like, desktops and the like? 15 A. Right. 16 Q. I'm -- I'm asking something a little bit 17 more specific. 18 A. Okay. 19 Q. I take it you've seen other smartphones 20 that are out there in the market? 21 A. I have. 22 Q. And in terms of just, again, very 23 generally -- and I'm not even talking about the 24 exact arrangement here of the '790 design patent, 25 I'm just talking generally in terms of having rows
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page18 of 24 Confidential Attorneys' Eyes Only
Page 155 1 this and -- and just tell me, generally speaking, 2 first whether you recognize this document or recall, 3 I should say, ever seeing this before? 4 MR. KREEGER: And I will just caution the 5 witness not to, in answering that question, reveal 6 any attorney-client communication, including any 7 documents that were shown to you in preparation for 8 your deposition. 9 THE WITNESS: So I don't recall seeing this 10 document. 11 BY MR. ZELLER: 12 Q. I'd like to direct your attention to Figure 13 4. And that says at the top, Sheet 3 of 19. 14 Do you have that? 15 A. This one (indicating)? 16 Q. Yes. That's it. 17 And -- and directing your attention to the 18 top left-hand portion of this page, underneath the 19 heading of "Figure 4," you'll see that there's a 20 reference here to reduced icon. 21 Do you see that? 22 A. Yes. 23 Q. And you'll see that there are squares laid 24 out, and generally we can call it a pattern of rows 25 and columns.
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page19 of 24 Confidential Attorneys' Eyes Only
Page 156 1 Do you see that? 2 A. I do. 3 Q. And by the way, is there -- is there some 4 name you would typically give to this kind of 5 arrangement in rows and columns? Would you call it 6 a grid or a matrix? 7 A. A grid. 8 Q. And you would consider the -- the layout 9 that's shown here in the '790 design patent figure 10 also to be a grid layout? 11 A. Yes. 12 Q. So then going back for a moment to the Wada 13 patent, and specifically Figure 4, you'll see, as we 14 were talking about, that this is -- this is laid out 15 in columns and rows for the icons? 16 A. I see that. 17 Q. And -- and you'll see, by the way, that on 18 the first page, that this was filed -- this patent 19 application was filed on January 4, 2005. 20 A. Okay. 21 Q. Do you have any reason to -- to doubt that 22 the layout that's depicted here in Figure 4, this -- 23 this grid layout, was, in fact, conceived of or put 24 into fixed form by the inventor here by January 4, 25 2005?
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page20 of 24 Confidential Attorneys' Eyes Only
Page 157 1 A. I wouldn't know. 2 Q. I take it you don't know the -- the name 3 of -- excuse me, you don't know the inventor who is 4 named here? 5 A. I do not. 6 Q. Do you have any reason to doubt that this 7 inventor, Wada, had come up with a grid layout of 8 icons, namely, having columns and rows as the 9 organization, by January 4 of 2005? 10 A. I wouldn't know. 11 Q. Seeing this, you'll -- you'll agree with me 12 that -- that by that time, if -- if this patent is 13 accurate, that there was -- there was someone else 14 who had already come up with a -- a grid pattern for 15 icons, namely, columns and rows, as we were 16 discussing; right? 17 A. If you're just looking at the grids and -- 18 yes. 19 Q. And then just focusing on that -- that grid 20 layout that's depicted here in Figure 4 of the Wada 21 patent, do you consider it to be substantially the 22 same just in terms of the layout as what is shown 23 here in the '790 design patent? 24 MR. KREEGER: Objection. 25 You can answer.
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page21 of 24 Confidential Attorneys' Eyes Only
Page 158 1 THE WITNESS: I see differences. 2 BY MR. ZELLER: 3 Q. And with respect to the differences, do you 4 think it makes it a completely new and different 5 design that's shown here in Exhibit 790? 6 A. In some ways, yes. 7 Q. And -- and what are those differences? 8 A. Well, for one, the objects are rounded -- 9 rounded recs. 10 (Reporter clarification.) 11 THE WITNESS: Recs. 12 BY MR. ZELLER: 13 Q. By that you mean rectangles? 14 A. Right. 15 Q. Okay. Just so we have a clear record. 16 A. Sorry. That the radius is rounded. 17 Q. Anything else that you think -- in terms of 18 just comparing what's shown here in that portion of 19 Figure 4 that we're talking about, the Wada patent, 20 and the figure in the '790 design patent, do you 21 think gives it a -- a different overall impression 22 other than what you mentioned? 23 A. Yeah. I don't see how the Wada patent 24 accommodates the text as well as this one does, so I 25 see that as a difference.
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page22 of 24 Confidential Attorneys' Eyes Only
Page 159 1 Q. Any others? 2 A. I think the spacing of the grid is -- is 3 different. 4 Q. Any others? 5 A. Those are the things that pop out to me as 6 being different. 7 Q. Just focusing on that blank space that 8 we've talked about with respect to the '790 design 9 patent, do you think that the design that's shown 10 here on the '790 design patent, by virtue of having 11 that blank space, makes it substantially different 12 from the layout that's shown in Figure 4 of Wada 13 that we're talking about, or do you consider that to 14 be a minor or trivial difference? 15 A. It's not a significant difference. I think 16 the significant differences are -- are what I 17 mentioned. 18 Q. One of the differences that you mentioned 19 was that the icon layout that is depicted here in 20 the '790 design patent that you're the named 21 inventor on has -- it better accommodates text, I 22 think is -- is how you put it. 23 A. M-hm. 24 Q. Please tell me what you mean by that. 25 A. If you look at the grid here between the
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page23 of 24 Confidential Attorneys' Eyes Only
Page 160 1 rows there's a -- an appreciable amount of room to 2 accommodate a label that would indicate what the 3 icon is. And that's what I mean by that. 4 Q. So the words that actually go with the icon 5 to, say, for example, settings or phone or -- 6 A. That's right. 7 Q. Let me show you what was previously marked 8 as Exhibit 421, which is United States Design Patent 9 617,334. 10 A. Thank you. 11 Q. And if you'd please take a look at this 12 document and let me know when you've had a chance to 13 review it. 14 A. Okay. 15 Q. Do you recognize what we marked as 16 Exhibit 421? 17 A. I do. 18 Q. And this is a -- another design patent that 19 you're -- well, I'm sorry. Let me rephrase this. 20 This is the '334 design patent that you are 21 a named inventor on? 22 A. Right. 23 Q. And I -- I take it you've seen this 24 document before today? 25 A. I have.
TSG Reporting - Worldwide (877)-702-9580 Case5:11-cv-01846-LHK Document1356-8 Filed07/26/12 Page24 of 24 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page1 of 15
EXHIBIT 65 FILED UNDER SEAL
Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page2 of 15 Highly Confidential Attorneys' Eyes Only
Page 1 1 UNITED STATES DISTRICT COURT 2 NORTHERN DISTRICT OF CALIFORNIA 3 SAN JOSE DIVISION 4 APPLE INC., a California ) corporation, ) 5 ) Plaintiff, ) 6 ) vs. ) No: 11-CV-01846-LHK 7 ) SAMSUNG ELECTRONICS CO., LTD, ) 8 a Korean business entity; ) SAMSUNG ELECTRONICS AMERICA, ) 9 INC., a New York corporation; ) SAMSUNG TELECOMMUNICATIONS ) 10 AMERICA, LLC, a Delaware ) limited liability company ) 11 ) Defendants. ) 12 ______) 13 14 **HIGHLY CONFIDENTIAL - ATTORNEYS' EYES ONLY** 15 16 DEPOSITION OF FREDDY ANZURES 17 Redwood Shores, California 18 Tuesday, October 18, 2011 19 20 21 22 23 Reported By: 24 LINDA VACCAREZZA, RPR, CLR, CRP, CSR. NO. 10201 25 JOB NO. 42857
TSG Reporting - Worldwide 877-702-9580 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page3 of 15 Highly Confidential Attorneys' Eyes Only
Page 2 1
2
3
4 October 18, 2011 5 10:11 a.m.
6
7
8 Videotaped deposition of FREDDY 9 ANZURES, held at Quinn Emanuel Urquhart 10 & Sullivan, LLP, 555 Twin Dolphin 11 Drive, Suite 500, Redwood Shores, 12 California, pursuant to Subpoena before 13 Linda Vaccarezza, a Certified Shorthand 14 Reporter of the State of California.
15
16
17
18
19
20
21
22
23
24
25
TSG Reporting - Worldwide 877-702-9580 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page4 of 15 Highly Confidential Attorneys' Eyes Only
Page 3 1 A P P E A R A N C E S: 2 QUINN EMANUEL URQUHART & SULLIVAN 3 Attorneys for Defendants 4 865 South Figueroa Street 5 Los Angeles, California 90017 6 BY: MICHAEL T. ZELLER, ESQ. 7 BRETT ARNOLD, ESQ.
8
9
10
11 MORRISON & FOERSTER 12 Attorneys for Plaintiff 13 425 Market Street 14 San Francisco, California 94105 15 BY: ANDREW E. MONACH, ESQ.
16
17
18
19
20
21
22
23 Videographer: Jason Kocol
24
25
TSG Reporting - Worldwide 877-702-9580 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page5 of 15 Highly Confidential Attorneys' Eyes Only
Page 4 1 THE VIDEOGRAPHER: This is the 2 start of tape labeled Number 1 of the 3 videotaped deposition of Freddy Anzures 4 in the matter of Apple, Incorporated 5 versus Samsung Electronics Company, 6 Limited, in the United States District 7 Court, Northern District of California, 8 San Jose Division. Case number 11-CV- 9 01846-LHK. 10 This deposition is being held 11 at 555 Twin Dolphin Drive, Redwood 12 Shores, California on October 18th, 2011 13 at approximately 10:11 a.m. 14 My name is Jason Kocol. I'm 15 the legal video specialist from TSG 16 Reporting Incorporated, headquartered at 17 747 Third Avenue, New York, New York. 18 The court reporter is Linda 19 Vaccarezza in association with TSG 20 Reporting. 21 Will counsel please introduce 22 yourselves for the record. 23 MR. ZELLER: Mike Zeller for 24 Samsung. 25 MR. MONACH: Andrew Monach for
TSG Reporting - Worldwide 877-702-9580 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page6 of 15 Highly Confidential Attorneys' Eyes Only
Page 5 1 Apple and the witness. 2 THE VIDEOGRAPHER: Will the court 3 reporter please swear in the witness.
4
5 F R E D D Y A N Z U R E S, 6 called as a witness, having been duly 7 sworn by the Certified Shorthand 8 Reporter, was examined and testified as 9 follows: 10 EXAMINATION BY: 11 MR. ZELLER: 12 Q. Good morning. 13 A. Good morning. 14 Q. If you could please tell us your 15 full name for the record. 16 A. Freddy Anzures. 17 Q. Have you ever gone by any other 18 name? 19 A. No. 20 Q. Where do you currently reside? 21 A. San Francisco. 22 Q. And how long have you lived there? 23 A. Since 1999. 24 Q. Are you currently employed? 25 A. Yes.
TSG Reporting - Worldwide 877-702-9580 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page7 of 15 Highly Confidential Attorneys' Eyes Only
Page 64 1 And with that understanding, to 2 create things for the products to kind of marry 3 that familiarity in what they see in the real 4 world into something that's on the product. 5 Q. And your reference to the "real 6 world," what you're referring to is is that 7 you're -- in designing icons, one of your goals, 8 your intention in that regard is to use a 9 familiar or obvious kind of real-world object 10 that you can then represent in the icon, that 11 people will instantly recognize what function is 12 going to be launched by pressing on that icon? 13 MR. MONACH: Object to the form of 14 the question. 15 THE WITNESS: Repeat your question 16 again. 17 Q. Sure. Maybe I can break it down a 18 little bit, too. 19 In part of your answer -- I'll 20 just try it this way. 21 In part of your answer you 22 referred to the "real world." What do you mean 23 by the "real world"? How does that relate to the 24 icon design? 25 A. Physical world.
TSG Reporting - Worldwide 877-702-9580 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page8 of 15 Highly Confidential Attorneys' Eyes Only
Page 65 1 Q. Is what you mean that as part of 2 the icon design -- and we are talking about icons 3 that are used for these mobile devices -- that 4 one source of the graphics or the pictures that 5 are used, are the real world or physical analogs? 6 A. Yes. 7 Q. So in other words, as depicted in 8 Figure 1, there's a telephone receiver that's 9 used as the picture or the graphic for the 10 telephone icon, right? 11 A. Yes. 12 Q. And is that an example of what 13 you're referring to? 14 A. This is an example of, you know, 15 understanding a symbol in the physical world, and 16 this being a representation of it on the phone, 17 yes. 18 Q. And then let's use the phone icon 19 as an example. What is it that the design of the 20 phone icon was intended to communicate to the 21 user? 22 A. The phone functionality of the 23 device. 24 Q. And when you say "the phone 25 functionality," do you mean that it was -- that
TSG Reporting - Worldwide 877-702-9580 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page9 of 15 Highly Confidential Attorneys' Eyes Only
Page 66 1 the icon communicates to the user that the result 2 of pressing on the phone icon, that's 3 communicated by that picture or image, is -- that 4 the phone function will activate? 5 A. Yes. 6 Q. And did you believe, when you were 7 designing the phone icon, that using a picture or 8 graphic of a telephone receiver communicated that 9 information to the user in an effective way? 10 MR. MONACH: Object to the form of 11 the question. 12 THE WITNESS: You mean this is a 13 telephone receiver -- we could have used 14 a number of different types of telephone 15 receivers for this application, but we 16 chose this one. 17 Q. What I'm asking is: Why did you 18 use a telephone receiver to communicate that 19 information? 20 A. Because as designers, this is the 21 symbol that -- when we most think of phones, this 22 is the most simple visual to communicate that 23 functionality. 24 Q. Is it true that in designing the 25 other icons, that are shown here in the '305
TSG Reporting - Worldwide 877-702-9580 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page10 of 15 Highly Confidential Attorneys' Eyes Only
Page 67 1 design patent, that you were attempting to 2 communicate to the users the particular 3 functionality that would be activated by pressing 4 on that icon? 5 A. Yes. 6 Q. And that's why you chose the 7 particular graphics or pictures that you chose 8 for those icons? 9 A. Yes. 10 Q. And I take it that you chose the 11 particular pictures or images that end up being 12 used for the icons, that are shown here on the 13 '305 design patent, because you thought that they 14 were effective in communicating that information 15 to users, right? 16 MR. MONACH: Objection. Compound, 17 incomplete hypothetical. 18 THE WITNESS: Certainly in our 19 opinion, yes, we think this is the most 20 effective visual to communicate the 21 functions on the phone. 22 Q. Directing your attention to Figure 23 1 and Figure 2. Well, actually, let me narrow it 24 down already. 25 Directing your attention to Figure
TSG Reporting - Worldwide 877-702-9580 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page11 of 15 Highly Confidential Attorneys' Eyes Only
Page 68 1 1 of the '305 design patent, you'll see in the 2 upper left-hand corner there are the words 3 "AT&T"? 4 A. Yes. 5 Q. Is that part of the claim design 6 here? 7 MR. MONACH: Objection. Calls for 8 a legal conclusion, lacks foundation. 9 Q. By your understanding? 10 A. I'm not a patent -- not familiar 11 with patents, so I can't say. 12 Q. I understand that. I'm asking for 13 your understanding, though, as an inventor on 14 this patent. 15 So let me try it this way. 16 By your understanding, does the 17 '305 design patent claim as part of the design 18 the words "AT&T," as they appear here on Figure 19 1? 20 MR. MONACH: Objection. Calls for 21 a legal conclusion. Objection. Lack of 22 foundation in light of the prior 23 testimony. 24 THE WITNESS: I don't know. 25 Q. Did Apple get AT&T's permission to
TSG Reporting - Worldwide 877-702-9580 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page12 of 15 Highly Confidential Attorneys' Eyes Only
Page 135 1 MR. MONACH: Objection. Vague, 2 assumes facts not in evidence. 3 THE WITNESS: Some keypads sure. 4 Not all keypads. 5 Q. Many keypads that you've seen over 6 the years, right? 7 A. Many keypads. 8 Q. And so my question is: Do you, 9 from your own experience, find something familiar 10 or efficient to have the layout be done in this 11 grid-and-column form? 12 MR. MONACH: Objection. Vague. 13 THE WITNESS: Grid-and-column form 14 is one way to present things from a 15 visual design point of view. 16 Q. You said "digital design"? 17 A. Visual. 18 Q. And do you have an understanding 19 as to what the reasons are for that? 20 MR. MONACH: Objection. Asked and 21 answered, vague. 22 Q. I'm moving beyond now just 23 keypads. I'm now asking in response to your last 24 question about grid-and-column patterns. 25 MR. MONACH: Now I'll object.
TSG Reporting - Worldwide 877-702-9580 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page13 of 15 Highly Confidential Attorneys' Eyes Only
Page 136 1 It's even more abstract and vague. 2 THE WITNESS: From my designer's 3 perspective, a grid-and-column pattern is 4 one of a number of ways to present 5 information. 6 Q. Well, are there advantages to it 7 from a visual design perspective? 8 MR. MONACH: Objection. Vague as 9 to the application and other 10 circumstances. 11 THE WITNESS: Based on my 12 knowledge, the advantages are to -- it's 13 an organizing principle. 14 Q. Would you agree that having a 15 grid-and-column pattern, in addition to having 16 the advantage of being -- of creating 17 organization, also has advantages to users 18 because it's a familiar pattern to them? 19 MR. MONACH: Objection. Vague, 20 incomplete hypothetical. 21 THE WITNESS: I can't say what's a 22 familiar pattern to users; all I know is 23 the design team made its best effort to 24 use paradigms like that, people are 25 familiar with.
TSG Reporting - Worldwide 877-702-9580 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page14 of 15 Highly Confidential Attorneys' Eyes Only
Page 137 1 We can't -- there's no real -- 2 we can't really understand what people 3 find -- people's own opinions of what 4 they see. 5 Q. I'm not asking about individual 6 people's opinions, but as a designer, which 7 you're attempting to accomplish through the 8 designs that you work on for mobile devices there 9 at Apple, is that you are endeavoring to 10 communicate in the most efficient and 11 commonsensical and conventional way to the most 12 users possible, right? 13 MR. MONACH: Object to the form of 14 the question. It's vague and ambiguous. 15 Q. Doesn't mean every single person 16 understands it, but you're trying to get 17 the largest group of people to understand 18 it, right? 19 MR. MONACH: Same objection. 20 THE WITNESS: We just design the 21 stuff, we don't -- we make our best guess 22 as to what that is. We don't know what 23 that is. 24 Q. Well, whether you know what it is 25 or not, it's your intention that by using the
TSG Reporting - Worldwide 877-702-9580 Case5:11-cv-01846-LHK Document1356-9 Filed07/26/12 Page15 of 15
Highly Corrfidcntial Attomoye' Eyæ Only
Page 207 I have. llhankg . 2 TEE VIDEOGRAPEER: ThiS MATKg ThE 3 end of Tape Nu¡nber 4 of 4 and concludes 4 today' s deposLtion of freddy AnzllrêEi. 5 [he tlme is 5¡1.4 P.rI. We are off the 6 record.
7 (Tíme noted: 5 ¡ 14 P.m. ) I
9
10 tr1 FREDDY ANUURES t2
13
1{ Subsc'ribed and Eworn to before me 15 rhig T day or | 201L. 16
L7
18
19
20 2t
22
23
24
25
TSG Reporting - lñrorldwide 8n:7UL9580 Case5:11-cv-01846-LHK Document1356-10 Filed07/26/12 Page1 of 9
EXHIBIT 66 FILED UNDER SEAL
Case5:11-cv-01846-LHK Document1356-10 Filed07/26/12 Page2 of 9
1
2 3
4 5 6 7 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 SAN JOSE DIVISION 11
12 APPLE INC., a California corporation, Case No. 11-cv-01846-LHK 13 Plaintiff, EXPERT REPORT OF SUSAN KARE 14 v.
15 SAMSUNG ELECTRONICS CO., LTD., A Korean business entity; SAMSUNG 16 ELECTRONICS AMERICA, INC., a New York corporation; SAMSUNG 17 TELECOMMUNICATIONS AMERICA, LLC, a Delaware limited liability company, 18 Defendants. 19
20 21 **CONFIDENTIAL – CONTAINS MATERIAL DESIGNATED AS HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY PURSUANT TO A PROTECTIVE 22 ORDER** 23 24 25 26 27 28
EXPERT REPORT OF SUSAN KARE Case No. 11 cv-01846-LHK
Case5:11-cv-01846-LHK Document1356-10 Filed07/26/12 Page3 of 9
1 TABLE OF CONTENTS
2 Page 3 I. INTRODUCTION ...... 1 4 II. QUALIFICATIONS ...... 1 5 III. MATERIALS CONSIDERED...... 5 IV. FUNDAMENTALS OF ICON DESIGN ...... 6 6 V. OPINIONS REGARDING SIMILARITIES BETWEEN APPLE AND 7 SAMSUNG ICONS AND USER INTERFACE GRAPHICS ...... 8 A. Characteristics of Apple Icons and User Interface Graphics ...... 8 8 B. Similarity Between Apple Designs and Samsung Icons and User 9 Interface Graphics ...... 29 C. The Similarities Between the Samsung Phones and the iPhone 10 Devices Support the Possibility that Samsung Used the iPhone Devices as a Guide in Designing Icons and User Interface Graphics 11 for the Samsung Phones...... 44 12 VI. CONCLUSION...... 51 VII. SUPPLEMENTATION ...... 51 13 VIII. EXHIBITS TO BE USED...... 52 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
EXPERT REPORT OF SUSAN KARE Case No. 11 cv-01846-LHK i
Case5:11-cv-01846-LHK Document1356-10 Filed07/26/12 Page4 of 9
1 will consider additional facts and material produced through discovery to determine whether such
2 additional material has an impact on my opinions. I may amend or supplement this report as 3 necessary based on such additional information. 4 IV. FUNDAMENTALS OF ICON DESIGN 5 25. The icon design process is one of creative problem-solving and involves 6 7 conceptual and visual components. It often involves the marriage of metaphor and aesthetics. 8 26. An icon is a visual representation that creates a shortcut for a user in a device
9 interface. A group of icons can represent a set of ideas with images that are differentiated from 10 each other so they can be recognized at a glance. 11 27. Sometimes an icon is a graphical illustration of a user interface element that 12 functions as something in particular (e.g., a clock). Icons may instead be designed as symbols, 13 either because they represent abstract concepts or verbs (e.g., “copy” or “undo”) or portray a 14 15 generic concrete noun (e.g., document).
16 28. The first step in icon design is to identify the concept (e.g., a specific category or
17 function) for which an icon is required and consider what visual metaphors might be used to 18 represent that concept or to make it easy to remember. This is the “design problem” that the 19 designer must solve: How can a particular concept or function be represented by an image? 20 Sometimes, the design problem might extend to developing a set of related icons. 21 22 29. Icon design may also need to take into account any marketing or design 23 considerations typically found in a creative brief. These considerations might include the nature
24 of the product itself; the target audience; the desired appearance for the user interface graphics;
25 and the competitive landscape (e.g., the goal of being differentiated from competitors in some 26 way). All of these factors can influence the development of an icon beyond the need for the clear 27 and memorable communication of an idea. 28
EXPERT REPORT OF SUSAN KARE Case No. 11 cv-01846-LHK 6
Case5:11-cv-01846-LHK Document1356-10 Filed07/26/12 Page5 of 9
1 30. Because icon design is not an exact science, there is always a great range of visual
2 alternatives for an icon image even when a designer opts for a conventional approach, such as 3 using images associated with traditional postal service mail (e.g., an envelope, stamp, or mail 4 slot) to represent an electronic mail application. An icon of an envelope, for example, still 5 requires many aesthetic choices—including those involving color, style, viewpoint, rendering 6 7 techniques, etc.—as it is designed. The envelope icon could be a photograph, an illustration, or a 8 simple diagram; either side of the envelope can be shown; details such as a stamp and/or print can
9 be indicated; and the envelope can be rotated or shown in perspective. An icon can also appear to 10 be a flat, two-dimensional image or have the appearance of a three-dimensional image with depth. 11 Beyond the appearance of an individual icon, the designer also takes into consideration how the 12 image will appear along with other icons and graphic elements on a screen. 13 31. Various factors influence the development of an icon’s final visual appearance. 14 15 Aesthetics are a prime consideration, but issues mandated by a mobile phone environment might
16 include limited screen real estate, touch screen “hit” area space requirements, the relationship of
17 the industrial design to the user interface, and creative issues or goals provided by a client’s 18 marketing organization. Moreover, the designer must be aware of any technical requirements or 19 constraints, such as pixel dimensions, bit depth, specific color palette, or touch screen issues. An 20 additional consideration might be optimizing for a user’s perception of ease of use, which may 21 22 affect the desired number and density of icons within a space. 23 32. Various alternative design approaches are available for the overall layout of a
24 group of icons, such as presenting icon images as “badges” or “buttons” with a uniform
25 background shape (e.g., a circle or rounded rectangle); presenting icons with border shapes that 26 are irregular regions (different border shapes than a single, fixed border shape); or presenting 27 icons within a visible grid or other delineated framework. Color palette might be determined by 28
EXPERT REPORT OF SUSAN KARE Case No. 11 cv-01846-LHK 7
Case5:11-cv-01846-LHK Document1356-10 Filed07/26/12 Page6 of 9
1 branding considerations or used to indicate categories of applications or features. Overall visual
2 style (e.g., a two-dimensional or three-dimensional look, hand drawn effect, primary colors, etc.) 3 might be driven by marketing issues such as target audience or price point. Icon design is 4 typically an iterative process, with design alternatives presented and a final icon set chosen in 5 tandem with a client decision maker. 6 7 V. OPINIONS REGARDING SIMILARITIES BETWEEN APPLE AND SAMSUNG ICONS AND USER INTERFACE GRAPHICS 8
9 A. Characteristics of Apple Icons and User Interface Graphics
10 1. The Design Patents 11 12 13 14 15 16 17 18 19 20 21 22 23 Figure 1 24 D’790 Patent 25 33. The D’790 depicts an overall appearance for the layout and shape of icons in a
26 graphical user interface for a display screen. (See Figure 1, above.) A 4 x 3 array (4 columns, 3 27 28
EXPERT REPORT OF SUSAN KARE Case No. 11 cv-01846-LHK 8
Case5:11-cv-01846-LHK Document1356-10 Filed07/26/12 Page7 of 9
1 rows) of rounded rectangular2 shapes, which appear to be squares with rounded corners, is shown
2 in the top portion of a display screen.3 (APLNDC00032009-012.) A separate row of rounded 3 rectangular shapes is shown along the bottom of the display screen. In both the 4 x 3 array and 4 the row along the bottom of the display screen, the shapes are evenly spaced horizontally. Within 5 the 4 x 3 array, the shapes are evenly spaced vertically, with slightly more space vertically than 6 7 horizontally. The width:height ratio of the display screen is approximately 1:1.5. 8 34. In the D’305 patent, icons are displayed on a display screen. (APLNDC00030421-
9 425.) The width:height ratio of the display screen is approximately 1:1.5. There is a 4 x 3 array 10 (4 columns, 3 rows) on a black background, with an additional row of icons in a gray gradient 11 area at the bottom of the screen. (See Figure 2, below.) Approximately the top 80% appears as a 12 solid black background containing the 4 x 3 array. Against the black background, the 12 icons in 13 the top portion provide a bright contrast and appear virtually illuminated against the black. The 14 15 lower approximately 20% of the screen has a gray gradient-patterned background containing the
16 additional row of icons—the main effect being that the top part and lower part of the screen
17 appear as separate, bounded areas, setting off the icons in the lower part as a separate group. The 18 icons in the D’305 patent have the shape of squares with rounded corners. Under each icon there 19 is gray text that describes the application represented by the icon. There is a band across the top 20 of the screen displaying information: signal strength, carrier name, time, and battery charge 21 22 status. 23 24
25 2 I use the term “rounded rectangle,” the name of the shape drawn by a tool in Adobe Photoshop and Adobe 26 Illustrator, to refer to the shapes appearing in the D’790 patent as well as the shape of icons in the D’305 patent, the D’334 patent, the iPhone Devices, and the Samsung Phones. Because the icons appear to have equal height and 27 width dimensions, I also refer to their shape as “square with rounded corners.” 3 In dotted lines, the D’790 patent shows elements besides the display screen and the rounded rectangles. I have not 28 been asked to offer any commentary on anything shown in dotted lines.
EXPERT REPORT OF SUSAN KARE Case No. 11 cv-01846-LHK 9
Case5:11-cv-01846-LHK Document1356-10 Filed07/26/12 Page8 of 9
1 2 3 4 5 6 7 8 9 10 11 12
13 Figure 2 D’305 Patent Fig. 14 14 35. The D’334 patent shows a display screen with two additional features. 15 16 (APLNDC00030409-4220.) First, there are additional icons placed in a fourth row in the top
17 portion of the screen. Second, there is a row of dots between the top portion and the bottom
18 portion of the screen. The width:height ratio of the display screen is approximately 1:1.5. 19 20 21 22 23 24 25
26 4 Although the D’305 patent was published in black-and-white, I have been informed that this color image submitted 27 during prosecution of the patent is available from the USPTO. This drawing corresponds to Figure 1 in the issued patent. I have been informed that this drawing has been produced to Samsung in this case. (See APLNDC- 28 Y0000232557 at 232558.)
EXPERT REPORT OF SUSAN KARE Case No. 11 cv-01846-LHK 10
Case5:11-cv-01846-LHK Document1356-10 Filed07/26/12 Page9 of 9
1 VIII. EXHIBITS TO BE USED
2 93. I anticipate using as exhibits during trial certain documents and things referenced 3 or cited in this report or accompanying this report. I also anticipate using other demonstrative 4 exhibits or things at trial. 5
6
7 Dated: March 22, 2012 8 SUSAN KARE 9
10
11 sf-3098252 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
EXPERT REPORT OF SUSAN KARE Case No. 11 cv-01846-LHK 52
Apple Inc. v. Samsung Electronics Co. Ltd. et al, Docket No. 5:11-cv-01846 (N.D. Cal. Apr 15, 2011), Court Docket
General Information
Case Name Apple Inc. v. Samsung Electronics Co. Ltd. et al
Docket Number 5:11-cv-01846
Court United States District Court for the Northern District of California
Primary Date 2011-04-15 00:00:00
Nature of Suit Property Rights: Patent
Related Opinion(s) 876 F. Supp. 2d 1141 2012 BL 178771 2012 BL 205637 2012 BL 263360 2012 BL 280780 2012 BL 330890 2013 BL 25223 2013 BL 25225 2012 BL 56912 282 F.R.D. 259 2012 BL 92184 2012 BL 100476 2012 BL 112507 2012 BL 119408 103 U.S.P.Q.2d 1401 2012 BL 162535 2012 BL 173112 2012 BL 173061 881 F. Supp. 2d 1132 2012 BL 209113 2012 BL 265144 2012 BL 266278 2012 BL 273568 2012 BL 281306 2012 BL 258464 2013 BL 25314 2013 BL 63524 2011 BL 304343 2012 BL 238801
© Bloomberg Finance L.P. All rights reserved. For terms of service see bloomberglaw.com // PAGE 1 Document Link: http://www.bloomberglaw.com/ms/document/X1Q6LJBLEO82?documentName=1372.xml