

I want to show you a little trick that will help you understand trial testimony. I'll use Apple's Trial Brief [PDF], which we have now as text, in the Apple v. Samsung litigation, just because it's current, but this works with any civil trial. Then I want to show you, again using Apple's trial brief, why Samsung may have felt it needed to stir things up a bit last week. You have probably seen articles in the media about the testimony of Phil Schiller and other recent Apple witnesses, where some seemed to wonder why the lawyer wasn't asking questions with more punch. Why go on and on about ad campaigns and how much money they spend on it? It may be interesting. But what does it prove? Why should the jury hear about that? Why does the lawyer ask about ad campaigns in a trial about patents, design patents, and trade dress? I'd like to show you.



The Verge, for example, live blogged Schiller's testimony, and it reported this: They're discussing iPhone marketing after the release. "Leading towards June we began to carefully turn on the marketing. First we held a TV ad during the Academy Awards... and then as we got closer to the launch in June we started to bring in additional ads." Was he just rambling? No. Wait and see. And then this: 9:28 AM - We're now looking at a summary of news articles from the iPhone launch. David Pogue and Walt Mossberg are both featured, touting the iPhone as a "breakthrough" product. Schiller calls Mossberg's piece "a great review that we were so happy to get" and "an over-the-top positive reaction." 9:29 AM - As each review is admitted into evidence, the jury is instructed that they're not to consider the reviewers' comments to be factual truths. All right. Reading from newspapers? Why? If not for establishing truth, then for what? I told you when we posted Samsung's trial brief as text that parties file their trial briefs just as the trial is about to begin, and it has the purpose of letting the judge know what each side plans to present, what it hopes to prove, and what the contested legal issues are likely to be. That helps the judge to prepare. But now it's going to help us too. Let's look at what the trial brief says about Phil Schiller, for example, and Chris Stringer, and match the testimony up with what Apple said in its brief it intended to prove. Here's what the brief says Apple had in mind to bring out via these witnesses: Apple will show likely confusion under the factors set forth in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), which include (1) strength of the trade dress; (2) similarity of the trade dress; (3) evidence of actual confusion; (4) marketing channels used; and (5) defendant's intent in selecting the trade dress. Likely confusion can occur before a purchase, at the moment of the purchase ("point of sale"), or "post-sale," such as when a consumer sees somebody using a Galaxy Tab 10.1 in a cafe and wrongly assumes that person is using an iPad. Apple relies on both point-of-sale and post-sale confusion. Apple will present overwhelming evidence of likely confusion under the Sleekcraft factors. This evidence will show that Apple's iPad trade dress is strong and closely associated with Apple. Philip Schiller, Apple's Senior Vice President of Worldwide Marketing, will testify regarding Apple's widespread advertising campaign for the iPad that specifically emphasizes its distinctive appearance; the extensive and highly favorable coverage by the media and industry analysts; the iPad's outstanding commercial success; and Apple's and Samsung's head-to-head competition. Apple will also present evidence of a survey conducted by Hal Poret, which confirmed that consumers associate the iPad trade dress with Apple. Russell Winer, a highly experienced marketing expert, will testify that Apple's trade dress is strong, and that Samsung's competing products are sold in similar marketing channels to Apple's. Apple will also present evidence that Samsung's accused tablets are very similar to the iPad trade dress, and have caused actual confusion. The similarity is clear from a direct comparison between Samsung's tablets and the iPad trade dress. It is also shown by widespread comments in the media and by others struck by the similarity. Apple will present evidence of actual confusion -- consumers who mistook Samsung's tablets for iPads -- even though such evidence is not required to prevail on a trade dress infringement claim. This evidence includes Samsung documents that show [retacted]. (PX59 at 19.) It also includes a survey conducted by Kent Van Liere, which concluded that consumers are likely to associate Samsung's Galaxy Tab 10.1 with Apple in a post-sale environment. Apple will also show that Samsung deliberately copied Apple's iPad trade dress, and even redesigned its Galaxy Tab 10.1 to make it look more similar to the iPad 2. This evidence includes Samsung's own documents and admissions. In addition to showing likely confusion, Apple will show that Apple's iPad trade dress is distinctive and non-functional, and thus protectable. Trade dress is distinctive when consumers identify the trade dress with a particular source. Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1261 (9th Cir. 2001). Factors relevant to distinctiveness include (1) the length and nature of Apple's use of the trade dress; (2) the nature and extent of Apple's advertising and promotion of its trade dress; (3) efforts made to promote a conscious connection between Apple's trade dress and Apple's products; (4) association of Apple's trade dress with Apple by purchasers of Apple products using the trade dress; (5) successful use of the trade dress to increase Apple's sales; (6) whether Apple authorized anyone else to use its trade dress; and (7) whether Samsung intentionally copied Apple's trade dress. Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 517 (9th Cir. 1989). The evidence from Mr. Schiller and others that shows Apple's trade dress is strong also establishes the requisite distinctiveness. As for functionality, a trade dress is not functional unless, taken as a whole, the trade dress is essential to the use or purpose of the device or the trade dress affects its cost or quality. Clicks Billiards, 251 F.3d at 1258. Factors relevant to the functionality of a trade dress include whether Apple's advertising touted the utilitarian advantage of its trade dress; whether the trade dress results from a simple or inexpensive method of manufacture; whether the trade dress yields a utilitarian advantage; and whether alternative designs are available. (Dkt. No. 1159 at 5.) Apple will show that its iPad trade dress is not functional under these factors, based on the testimony of Apple employees and experts, as well as documentary evidence, including the evidence that this Court cited in denying Samsung's motion for summary judgment. (Id. at 5-7.) Chris Stringer, a Senior Director of Industrial Design at Apple, will testify that aesthetic rather than functional considerations drove the design of the iPad and iPad 2. Design expert Peter Bressler will testify that the design of the iPad and iPad 2 is not essential to the use or purpose of these devices. See how clear it is, when you hold the trial brief in one hand while you listen to or read about the witness testimony? It's all carefully planned and mapped out, and the questions sync up with what needs to be proven. These claims in this case have certain elements, or factors, the plaintiff, Apple, has to prove by evidence, meaning testimony or something on paper or whatever. You see the numbered items up above. Those are the factors that are considered when you try to prove customer confusion, and you have to establish them by evidence, and witness testimony is direct evidence, as the judge here explained [PDF] to the jury, "Direct evidence is direct proof of a fact, such as testimony by a witness about what that witness personally saw or heard or did." There are two claims mentioned, trade dress infringement and trade dress dilution. To prove confusion regarding the first, you have to prove: strength of the trade dress, meaning what it looks like and whether the look is functional or purely decorative, the former being unprotectable;

similarity of the trade dress of the allegedly infringing product, in this case how much Samsung's products look like Apple's;

evidence of actual confusion, like customers buying one product thinking it's another

marketing channels used, meaning that the two are actually competing products, so if one copies the other and people buy it by mistake, the one copied is logically losing sales; and

defendant's intent in selecting the trade dress. Now notice what these witnesses are reported to have said on the stand. See the match up? I'm sure we'll notice an even closer match, once the court releases the transcripts in three months, but even now you can see what each witness was there to establish. Chris Stringer, for example, was there to give testimony that Apple made the choices that it did to make a beautiful product, not for function alone. Schiller was there to, as the brief puts it, "specifically emphasizes its distinctive appearance; the extensive and highly favorable coverage by the media and industry analysts; the iPad's outstanding commercial success; and Apple's and Samsung's head-to-head competition." And that's what he did, precisely. Update: It occurs to me I should explain why Apple wants it to be deemed beauty and not function. Here's an explanation of trade dress law, and what you need to have to be protected: There are two basic requirements that must be met for trade dress law protection. The first is that the protectable features must be capable of functioning as a source indicatoridentifying a particular product and its maker to consumers. In the United States, package design and building facades can be considered inherently distinctive. However, product design can never be inherently distinctive. Therefore, product design trade dress or other designs that cannot satisfy the inherent distinctiveness requirement may only become protectable by acquiring secondary meaning. Secondary meaning requires that the product design acquire an association in the public mind with the producer of the goods. Under the functionality doctrine, trade dress must also be nonfunctional in order to be protected. If the element is functional, protection should be sought under patent law. What is functional depends upon the particular product. To be nonfunctional, it cannot affect a products cost, quality, or a manufacturers ability to effectively compete in a non-reputational way. For example, color is functional in regard to clothing because that product is purchased substantially because of its color and appearance, but color is not functional on household insulation, which is purchased purely to be installed in a wall and is never seen. In fact, courts have found that the color of certain building insulation constituted protectable trade dress. Adoption of anothers businesss trade dress may be infringing if it confuses potential customers as to the origin of the goods. More details here. And here's Bitlaw on trademark infringement.] - End update.] Like I say, it's all planned out in advance. Here's the AMF v. Sleekcraft decision, by the way, in case you want to read it. Some cases set the tone for an entire type of issue, and this is one of them, Apple says. It was a trademark infringement case, where the issue was confusion. How do you establish, by law, whether customers are or are not confused? You sometimes can't. Maybe there's a new product out, and you think it's a problem and you'd rather not wait for customers to be confused. Or, sometimes you can prove customer confusion, and that would indicate that future confusion is also going to happen. And that's where the factors come in, and they are factors as to *likelihood* of confusion. The decision explains all 8 of the factors. Yes, there are 8, not 5, as Apple listed: In determining whether confusion between related goods is likely, the following factors are relevant: 1. strength of the mark;

2. proximity of the goods;

3. similarity of the marks;

4. evidence of actual confusion;

5. marketing channels used;

6. type of goods and the degree of care likely to be exercised by the purchaser;

7. defendant's intent in selecting the mark; and

8. likelihood of expansion of the product lines. See, e. g., Sleeper Lounge Co. v. Bell Manufacturing Co., 253 F.2d at 722; Restatement of Torts s 731 (1938). It was a case about boats, AMF's called Slickcraft and another company called its line of boats Sleekcraft. I know. Confusing. And both boats, both quality boats, and competing in the same marketing channels. Both had used their marks for over a decade. Neither wanted confusion. But the court found against Sleekcraft boat's owner, on the basis of the likelihood of confusion. But why is that so bad? Is it just lost business? No, it's also reputational. The decision explains: The high quality of defendant's boats is also relevant in another way. The hallmark of a trademark owner's interest in preventing use of his mark on related goods is the threat such use poses to the reputation of his own goods. ... When the alleged infringer's goods are of equal quality, there is little harm to the reputation earned by the trademarked goods. Yet this is no defense, for present quality is no assurance of continued quality.... The wrong inheres in involuntarily entrusting one's business reputation to another business; ... AMF, of course, cannot control the quality of Sleekcraft boats. In addition, what may be deemed a beneficial feature in a racing boat may be seen as a deficiency to a person seeking a craft for general-purpose recreation; the confused consumer may then decide, without even perusing one, that a Slickcraft boat will not suit his needs. Finally, equivalence in quality may actually contribute to the assumption of a common connection. But, you may say, how stupid would you have to be to buy a Samsung phone and not realize you didn't buy an Apple iPhone? The law doesn't care. Stupid buyers are not excluded, any more than they are in real life: In assessing the likelihood of confusion to the public, the standard used by the courts is the typical buyer exercising ordinary caution.... Although the wholly indifferent may be excluded ... the standard includes the ignorant and the credulous. Just like real life. And now you understand why you keep hearing witnesses talking about confusion. Intent matters. If the defendant, the case goes on, shows a good faith intent to avoid confusion, fashioning a remedy may be lighter on the defendant, even if confusion is proven. That's part of why Apple keeps painting Samsung as deliberately and "slavishly" copying. They want a lot of money in damages. And more than money, they want an injunction to block Samsung's products, so it can't compete with them in the US. Interestingly, the court of appeals did *not* order an injunction in the boats case. Instead this is what happened: Both parties have used their trademarks for over a decade. AMF has a substantial investment in the Slickcraft name, yet a complete prohibition against appellee's use of the Sleekcraft name is unnecessary to protect against encroachment of appellant's mark, See Miss Universe, Inc. v. Patricelli, 408 F.2d at 510, or to eliminate public confusion. Appellee has also expended much effort and money to build and preserve the goodwill of its mark. There is little doubt both parties honestly desire to avoid confusion of their products. Nescher adopted the Sleekcraft name in good faith and has subsequently taken steps to avoid confusion. Use of the Nescher logo in all facets of the business would ensure that confusion would not occur. The exhibits, particularly the yellow pages advertisements, convince us that this is not being done. Thus, in "balancing the conflicting interests both parties have in the unimpaired continuation of their trade-mark use," Durox Co. v. Duron Paint Manufacturing Co., 4 Cir., 320 F.2d 882 at 885, and the interest the public and the trade have in avoiding confusion, we conclude that a limited mandatory injunction is warranted. Upon remand the district court should consider the above interests in structuring appropriate relief. At minimum, the logo should appear in all advertisements, signs, and promotional materials prepared either by appellee or by his retail dealers, and on all appellee's business forms except those intended for strictly internal use. A specific disclaimer of any association with AMF or the Slickcraft line seems unnecessary, nor do we think it necessary to enjoin Nescher from expanding his product line. In its discretion the district judge may allow appellee sufficient time to consume supplies at hand and to add the logo to more permanent assets, such as business signs. That is how litigation can turn out when both sides act in good faith, and neither is just using the courts to kill off a competitor. Apple would have a fit if this litigation ended up like the boat case, don't you think? Why might that be, do you think? What's the X factor? Why is Apple fighting so hard? And Samsung too? Aside from what Samsung feels is the two judges making Samsung's lawyers fight with one hand tied behind their backs by excluding evidence over and over, look at what Apple is asking for in damages for its rectangle with rounded corners and other design patents, from its trial brief again: The law provides that anyone who sells "a colorable imitation" of a patented design "shall be liable to the [patent] owner to the extent of his total profit." 35 U.S.C. § 289 (2006). The Federal Circuit has held that "total profit" means exactly that -- all profits received by the infringer for sale of the product without reducing that profit to account for the alleged contribution of the patented design. Nike, Inc. v. Wal-Mart, 138 F.3d 1437, 1442 (Fed. Cir. 1998); see also Bergstrom v. Sears, Roebuck & Co., 496 F. Supp. 476, 495 (D. Minn. 1980). Similarly, 15 U.S.C. § 1117 requires Samsung's to disgorge the profits it obtained from sales that dilute or infringe Apple's trade dress. Yes, you read it right. It wants all of Samsung's profits from any product found to look too much like Apple's. 100%, without even subtracting for all the other features and technology that Samsung worked hard to invent, and paid R & D to think up, and put together. On top of that, Apple goes on to say, it wants damages for lost profits, in this case $500 million just for that, with interest and costs. And then it wants "similar remedies" for trade dress infringement and dilution as for patent infringement. Ka-ching. Sound fair to you? Or does it sound like a double or triple scoop, where the real goal is harm to a competitor, not find a solution but a punishment? It doesn't have to be like this. You saw that in the boat case. Notice from the ruling [PDF] by Judge Richard Posner in the separate but thematically related case of Apple v. Motorola, another Android vendor. He threw the case out, claims and counterclaims, and here's part of why he thought no injunction made sense either: A further objection to Motorolas claim for injunctive relief applies to Apples claim for such relief as well. The grant of an injunction is not an automatic or even a presumptive conse- quence of a finding of liability, either generally or in a patent casein fact the Supreme Court has held that the standard for deciding whether to grant such relief in patent cases is the nor- mal equity standard. eBay Inc. v. MercExchange, L.L.C., supra, 547 U.S. at 39192; see also Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 135152 (Fed. Cir. 2009). And that means, with immaterial ex- ceptions, that the alternative of monetary relief must be inade- quate. [T]he inadequacy of ones damages remedy is normally a prerequisite to injunctive relief. Hoard v. Reddy, 175 F.3d 531, 533 (7th Cir. 1999); see also Walgreen Co. v. Sara Creek Property Co., 966 F.2d 273, 274 (7th Cir. 1992). [A] plaintiff seeking an injunction is quite often successful precisely because he cannot calculate the damages he suffers. Pelletier v. Stuart-James Co., 863 F.2d 1550, 1558 n. 15 (11th Cir. 1989). A FRAND royalty would provide all the relief to which Motorola would be entitled if it proved infringement of the 898 patent, and thus it is not entitled to an injunction. In fact neither party is entitled to an injunction. Neither has shown that damages would not be an adequate remedy. True, neither has presented sufficient evidence of damages to with- stand summary judgmentbut that is not because damages are impossible to calculate with reasonable certainty and are there- fore an inadequate remedy; its because the parties have failed to present enough evidence to create a triable issue.... Also ignored are the harm that an injunction might cause to consumers who can no longer buy preferred products because their sales have been enjoined, and the cost to the judiciary as well as to the parties of administering an injunctionwhich un- der the rubric of public interest is another factor that eBay re- quires me to weigh in deciding whether to grant injunctive re- lief. 547 U.S. at 391. The danger that Apples goal in obtaining an injunction is harassment of its bitter rival, requiring particu- larly watchful supervision by the court should it issue the in- junction, is suggested by the fact that while a delayed injunction would in principle render no benefit to Apple besides harming its competitor by forcing it to waste time and money finding a new way of performing the functions now performed in an al- legedly infringing manner, an ongoing royalty would yield significant income to Appleyet which it wants to forgo in favor of imposing costs and litigation burdens on its adversary. Because of the potential costs to Motorola and the federal judiciary I could not responsibly order injunctive relief in favor of Apple without knowing whether the lower cost of a compulsory license at a reasonable royalty would produce a better balance of hardships. I note, amplifying earlier points, the absence of evidence that if Motorola is infringing the patent claims at issue, it is imposing a significant cost on Apple. Consider the 002, which Apple charges is infringed by Motorolas preventing partial obstruction of its smartphones notification windows. There is no evidence, and it seems more than unlikely, that occasional partial obstruction would appreciably reduce the value of Motorolas smartphones to consumersApple didnt even bother to install a notification window on its devices until last year. Consider next the 949, which Apple contends is infringed by Motorolas enabling customers who buy a Motorola smartphone with a Kindle reader pre-installed to turn pages by tapping on the screen rather than by swiping a finger across it (which actually is more like turning pages than tapping is). Consider the 263, the realtime patent, alleged to be infringed by Motorolas adopting a method for avoiding glitches in real time communications (such as movies) that has not been shown to provide a superior experience to consumers than al- ternative, noninfringing realtime software or hardware or oth- erwise drive consumer demand for the iPhone. And consider the 647 (structural linking and detection), which also provides unproved consumer benefits. The notion that these minor-seeming infringements have cost Apple market share and consumer goodwill is implausible, has virtually no support in the record, and so fails to indicate that the benefits to Apple from an injunction would exceed the costs to Motorola. An injunction that imposes greater costs on the defendant than it confers benefits on the plaintiff reduces net social welfare. That is the insight behind the balance of hardships component of the eBay standard for injunctive relief in patent cases. And I must not lose sight of the basic principle that injunctive relief is available only when the remedy at law is inadequatethat is, only when damages would not provide complete relief. As noted in Stickle v. Heublein, Inc., 716 F.2d 1550, 1563 (Fed. Cir. 1983)though the point is too obvious to require a citationa patentee cant obtain an injunction (and, by parity of reasoning, an ongoing royalty in lieu of an injunction) if either damages or an equitable substitute such as a running royalty would provide complete relief. Ordinarily a running royalty, combined with the damages remedy for past sales, should provide full compensation to the patentee, thus obviating injunctive relief. That was refreshing, wouldn't you say? So Apple's desire for everything, damages *and* an injunction, sounds like overreaching, wouldn't you say? I'd say. The judge in Apple v. Samsung might not see it that way. That's the trouble with litigation. There are a lot of variables, including the inclinations of a judge. But I believe Posner has it right. There should be a balancing of benefit and loss to both parties, even if there is infringement proven. Because when you put a competitor out of business, customers suffer. A lot of people *want* Android products from Samsung, and they do know they are not buying an Apple product. Some of them are perhaps even doing it on purpose, because they don't much care for Apple's slash-and-burn litigation jihad against Android. Some think they are better than Apple products. By the way, you should read the entire Posner ruling. It's like a cool drink of water on an August day. Here's another ruling [PDF] of his, where he sees through an Apple legal maneuver. Apple has been portraying Samsung like it's the bad guy, but trust me, both sides are fighting with real bullets, so to speak. This judge is worrying me, as is the magistrate. I am worrying they may be putting administrative rule-keeping decisions they issue way above making sure the jury gets all the relevant evidence. Is there some reason why expedited scheduling is more important than getting this right? As Samsung's lawyer asked the judge when she refused to allow evidence to be used, Why even have a trial? What's the point? I'll give you an example. Apple goes on and on about Samsung being late with evidence in discovery. They were. Three times that I've counted as I've been reading as many of the filings as I could over the weekend, trying to get up to speed. And as a result, the judges ruled in various rulings that they can't use certain evidence to defend themselves at trial. Do you know how late Samsung was in the three instances I found? Two days late on two occasions, and one month late on another. Or read this Order [PDF] in March by Judge Koh, denying Samsung the right to add five new examples of prior art. Samsung heard about the prior art, tried to investigate, had some difficulty finding computers to run the stuff on, negotiated with Apple to try to avoid motion practice -- you guessed it, after a while Apple said no -- and then Samsung gets smacked by the judge for taking too long to ask to amend. Read the dates for yourself. See how reasonable it seems, and then add on to it more and more such orders. Does it seem fair to you or a little schoolmarmy? With so much as stake, on both sides, shouldn't evidence in the jury's hands be more important than a party being two days late? That's what has Samsung worried. The judge keeps removing evidence from their side. Just over and over. Here's the latest denial. Now, being late matters, especially if it's planned. And newly discovered evidence can certainly be banned if it's too late and there is the likelihood that it was strategically held back or it would be prejudicial to the other side. That happened to SCO in the IBM case, if you recall. And I don't know all the specifics here, but if you look at all the separate pieces of evidence being tossed overboard in this case, there does seem to be pattern. I haven't followed the case closely enough from the beginning to know if Samsung has been delinquent, or if Apple has too (it's been sanctioned too, you know), or if the court is overly strict about sanctioning everyone right and left. But something feels wrong. It doesn't feel normal. Here's another example. Apple in its trial brief, after telling the court about the billions they want in various categories of damages, writes that Samsung claims the design patents cover features nobody buys a phone to get and in any case could be removed in less than a month of coding: Samsung in contrast claims that Apple's sole remedy should be an absurdly low royalty payment of $28,452. This number is based on Samsung's belief that it would take less than a month fully to design around all of Apple's intellectual property, and that it could do so without losing a single sale. Samsung's position is based on self-serving, hypothetical testimony from its own engineers, as translated by Samsung's in-house litigation attorneys. The testimony violates Judge Grewal's order regarding evidence of Samsung's alleged design-arounds with respect to the '381 and the '163 Patents. (Dkt. No. 1106 at 3-4.) Moreover, it is inherently incredible. If Samsung could have avoided this lawsuit and this trial at a cost of less than $30,000, it would have done so. If ordered to remove the features, it can quickly do so, and so any damages for future use should be a non-issue. Ditto an injunction. How useless would it be? Now, personally, I don't know yet how the experts are doing their calculations of damages, but would it amaze you if I pointed out that plaintiffs *always* ask for the moon and defendants find an extremely low figure to be fair? It won't be either figure. Not if we are looking at what normally happens. But my bigger point is this: Samsung, because it was late in discovery, can't present this evidence of how easily it can remove the features and how it wouldn't lose a sale doing so. See what I mean? But that's relevant to the issue of a permanent injunction, which Apple says it also intends to ask for. The judge has said that some evidence that can't be used with the jury can be used in the damages phase, if there is one, so it's not hopeless. But what I see is that Samsung is fighting with less and less to work with. At some point, the trial does become pointless. And there is more from Apple: Under Ninth Circuit law, it is Apple's burden only to establish Samsung's gross sales associated with the trade dress violation, and Apple then enjoys a presumption that this sum may be recovered as damages. Rolex Watch, U.S.A., Inc., v. Michel Co., 179 F.3d 704, 712 (9th Cir.1999) (plaintiff carries burden to show with "reasonable certainty" defendant's gross sales from infringing activity). Samsung bears the burden of establishing all deductions, whether for costs that are "actually attributable to sales of the infringing items," or for amounts that are "demonstrably not attributable" to the protected design. Nintendo of Am. v. Dragon Pac. Int'l, 40 F.3d 1007, 1012 (9th Cir. 1994); Kamar Int'l, Inc., 752 F.2d at 1329. Samsung adopted an excessively aggressive position on apportionment that it could not support, and as a result all of Samsung's evidence on apportionment has been excluded under Rule 702. (Dkt. No. 1157 at 9-10.) Samsung therefore cannot rebut the presumption that all of its infringing sales are attributable to infringement, and Apple will recover all of Samsung's profits on the infringing or diluting sales. Nintendo of Am. v. Dragon Pac. Int'l, 40 F.3d 1007, 1012 (9th Cir. 1994) ("where infringing and noninfringing elements of a work cannot be readily separated, all of a defendant's profits should be awarded to a plaintiff"). Get it? Samsung can't use that evidence either, according to this court's rulings, because it "adopted an excessively aggressive position on apportionment". Remember in the Oracle v. Google litigation, the judge gave Oracle three tries to get an expert's damages report right? Here it's off with their heads. At this rate, all Samsung will get to do at trial is stand there and listen to Apple tell the jury what awful things Samsung allegedly did and stand there with its head down. Like a trial in China. I'm sorry, but that's just not fair, even if Apple thinks it is, not even if the judge thinks it is, not for lateness or whatever the high crimes and tardiness misdemeanors were. Why is Apple being so extreme? Don't forget that on top of all the money it wants to make it "whole", it intends to ask for a permanent injunction. Why? Because of what Steve Jobs said, that he planned to go thermonuclear and destroy Android, I'd say. By the way, Samsung isn't allowed to tell the jury about that either. And as you'll see as you read through the trial brief, Apple says in a number of places that Samsung is estopped from saying this or that or should be. That means Apple's position is that there are even more things Samsung shouldn't be allowed to say to the jury. Here's just one example, from page 40: Samsung has failed to come forward with evidence sufficient to prove literal infringement or to satisfy the legal standard governing the doctrine of equivalents. Specifically, Samsung has utterly failed to provide the particularized testimony and linking argument that is required before Samsung can rely on the doctrine of equivalents. Therefore, the Court should not permit Samsung to rely on this theory in any way, including the presentation of any evidence to the jury in support of this assertion. See, e.g., Amgen, 580 F.3d at 1382 (doctrine of equivalents requires "particularized testimony and linking argument"). For example, Dr. Yang offers the conclusion in his report, unadorned by any supporting analysis, that "[u]se of swiping on iPhone 4S is insubstantially different from use of scroll keys," and "[u]nder the doctrine of equivalents, swiping meets this claim element."8 (See Yang Opening Report at Ex. 1A-1, step three (asserting "doctrine of equivalents" but omitting function/way/result or other particularized analysis).) This purely conclusory testimony without any linking argument falls far short of the applicable legal standard and is precisely the type of generalized and unsupported evidence that should be excluded from the trial. Further, Dr. Yang's expert report provides no argument regarding infringement of any other limitations of claim 1 under the doctrine of equivalents. Here's another on the next page, page 41: In any event, Samsung has failed to provide the particularized testimony and linking argument that is required before Samsung can rely on the doctrine of equivalents. Therefore, the Court should not permit Samsung to rely on this theory in any way, including the presentation of any evidence to the jury in support of this assertion. See, e.g., Amgen, 580 F.3d at 1382 (doctrine of equivalents requires "particularized testimony and linking argument"). It's not just one order by these judges; it is all of them together. I mean, here's another ruling [PDF] by the magistrate judge. It's a decision on motions by both parties, Apple and Samsung, each trying to exclude evidence in experts' reports. The judge says both parties have shown problems: Unfortunately, in either its conception or execution or both, expert trial testimony in patent cases is often far from perfect. This case is no exception. Most importantly for this order, many of the expert reports offer theories or rely on evidence never previously disclosed as required. Even if disclosed somewhere, the parties have forced each other to comb through the extraordinarily voluminous record to find them, rather than simply amending their contentions or interrogatory responses as they should. This is unacceptable. Patent litigation is challenging and expensive enough without putting one party or the other to the task of sifting through mountains of data and transcripts to glean what is at issue. At the same time, the line between permissible application of a disclosed theory to disclosed evidence and impermissible reliance on either a new theory or new evidence can blur. Under these circumstances, when asked to strike some or all of an expert report, the court must revert to a simple question: will striking the report result in not just a trial, but an overall litigation, that is more fair, or less? With this framework and these standards in mind, the court turns to the two motions to strike before it. By all means read it all, but after saying both parties had issues with their experts, here's how he ruled, expert by expert. Apple moved to strike portions of the following expert reports Samsung wants to use, so every time you read a GRANTED, it means something a Samsung expert wanted to testify about is not going to be permitted to be presented to the jury, whether about invalidity of a patent or prior art: Apple:

Robert Anders - GRANTED and GRANTED on both issues raised

Stephen Gray - GRANTED on 7 of 10 invalidity contentions. Denies on another issue and instead orders further deposition opportunity.

Nicholas Godici: GRANTED and GRANTED on both issues.

Jeffrey Johnson: DENIED.

Sam Lucente: GRANTED, GRANTED and GRANTED on three issues.

Itay Sherman: GRANTED, GRANTED and GRANTED.

Andries Van Dam: GRANTED.

Brian Von Herzen: GRANTED on one issue; DENIED on another, and GRANTED on a third and GRANTED on a fourth.

Michael Wagner: DENIED but orders deposition opportunity on two issues.

Tim Williams: GRANTED.

Woodward Yang: DENIED. Here's how Samsung fared: Samsung:

Ravin Alakrishnan: DENIED but orders further deposition opportunity.

Peter Bressler: GRANTED as to mentioning devices; denied as to reviews, comparisons and design elements.

Tony Givargis: DENIED and DENIED.

Susan Kare: GRANTED.

Michael Maharbiz: DENIED and GRANTED.

Terry Musika: DENIED.

Sanjay Sood: DENIED.

Russel Winer: DENIED If you are Samsung, looking at this list, what are you thinking? I'm thinking it too. The judge is quoted in InformationWeek by Charles Babcock as saying that the rulings have been even with regard to exclusions due to being late, this on the day she decided not to sanction Samsung: Koh, a young judge who's been on the bench for only two years, addressed the matter at the start of Friday's session. She said both sides had been dealt with the same way when it came to belated evidence. "Apple's untimely discoveries have also been barred," she said... It might be worth checking those stats. It does seem to be a deliberate Apple strategy, to just knock out as much of Samsung's ability to tell its story as it can, and in fact, that's what lawyers are supposed to do, if it's all true and fair. But forgive me if at least one eyewitness, me, concludes that this indicates that Apple is pretty sure it can't win *unless* it excludes a great deal of Samsung's evidence, both for its defense and for supporting its counterclaims. If I am right about that, it means it feels it can't win fair and square. I mean, that's where strategies like this come from. It's expensive to lawyer like this, and you don't normally bother if you know you can easily win with both sides putting all their evidence in front of the jury. So Apple is either worried, or it's a serious bully. That indicates to me that Samsung can't be the bad guy Apple is portraying it to be. There's more to this story, and they don't want the jury to hear about it. I don't know why there seems to be this tilt Apple's way on the part of the judges. Maybe a patent lawyer would understand it perfectly, and could explain it as normal, but it looks odd to me. And I gather it looks odd to Samsung too. What might that rest of the story be? Here's one example showing part of the story, from a ruling [PDF] on Samsung's motion for summary judgment on some of Apple's claims, from Judge Lucy Koh on May 12th, that I stumbled upon as I'm trying to get up to speed on this case, now that we're covering it, since we didn't do so from the beginning. It goes into Apple's FRAND claims. To understand this, you need to know that French law is binding on deciding the FRAND claims. Here's what she wrote about one of Apple's claims: Under French contract theory, an offer must be specific enough for the contract to be formed by a simple acceptance of the person to whom the offer is communicated. Libchaber Decl. ¶ 70. At the hearing, the parties disagreed primarily as to whether French law requires a price term in order to create an enforceable license. See also Molfessis Decl. ¶ 30 (Absence of the determination of the price does not void the contract. However, if the parties abuse their right to determine the price, it will only give rise to indemnities or to allow revocation.). Even assuming, without deciding, that Apple is correct that French law does not require a price term, taken as a whole, it is not plausible that Samsungs FRAND declarations constitute an offer to license. The FRAND declarations fail to specify not only the royalty rate, but also the duration of the license, as well as the geographic scope of the license. Reply at 10. Apple now argues that these terms can be implied: the geographic scope could be the geography covered by the patent, the duration can be the patent term, and the royalty rate can be supplied at a later date. However, there is no indication that the FRAND declarations in fact imply all of these terms. Instead, Samsungs FRAND declarations, merely state that Samsung was prepared to grant irrevocable licenses on fair, reasonable and non-discriminatory terms. ACR ¶ 63. Apple has also failed to establish acceptance by performance. Professor Molfessis opines that the idea of acceptance by way of performance of the offered contract is acknowledged as a general principle of French contract law. Molfessis Decl. ¶ 93. While offer and acceptance may proceed as described by Apple, this theory is inconsistent with the ETSI IPR Policy and the FRAND declarations, and the subsequent conduct of Apple itself. Samsung, as well as other ETSI members submitting FRAND declarations, state only that they are prepared to grant irrevocable licenses. These statements neither implicitly, nor explicitly establish that the offeree takes a license merely by adopting the standard and practicing the patented technology. Nor is it plausible that anyone who uses the technology has a preexisting license merely because an ETSI member submitted a FRAND declaration. If this were the case, manufacturers and producers could utilize patented technology in silence without ever expressing acceptance or paying royalties. That is, of course, precisely what Apple has been doing, using the Samsung patents without accepting Samsung's terms or paying any royalties. And if you believed Apple when it says that Samsung refused to offer it a license: Finally, additional allegations in the Amended Counterclaims belie Apples allegations that it already has a license to Samsungs Declared-Essential Patents. Apple alleges that it entered into negotiations with Samsung over a FRAND license and that Samsung finally offered Apple a license to its Declared-Essential Patents on July 25, 2011. ACR ¶ 77. If Apple believed that it already owned a license, it is unclear why Samsung would be obliged to offer Apple a license. Ultimately, it is not plausible that the parties consented to the arrangement that Apple claims is now in place. You don't have to be a legally trained judge to see that there is a logical problem in this picture. Apple claims that Samsung refused to offer a license to its standards-related patents. Then Apple says the royalty price Samsung is "demanding" for a license is too high. I mean. Duh. It's also not true that you can't get an injunction regarding your FRAND patents, as Apple declares. Here's a lawyer who writes the law on that is unclear, and it is. Apple wants it to be the law that Samsung can't get an injunction, but that's not the case yet. So, don't expect you have understood all there is to understand about this case in a quick sound bite. This story, on both sides, is deep and complex. I still don't know who should prevail, if you analyze it based on how patent law is, not how it should be. Mostly we've heard Apple's side of the story in the media up until recently, and Apple goes first in the trial, so all the stories are about Apple and its case, and that's natural. But there is another side to come. So just as lawyers tell juries to wait until you hear the whole story, I think we should do exactly that too. You know why I think Apple believed it might work to file a "recommendation" that the judge just hand a win to Apple as a sanction against Samsung for talking to the press (as if Apple hasn't been doing the same long before the jury was seated, meaning while they actually *could* be tainted by the media)? I suspect it's because this court has been chopping Samsung's case to bits to such an extent already, Apple thought it just might work. And if John Quinn had not made his protest known so audibly and so effectively, it just might have. If you were Samsung, and you saw this happening to your case, what would you want your lawyer to do? Say, "Oh, OK, Your Honor, whatever you think best"? Well, that's not real life in the world of litigators. They know for sure that judges can make mistakes too. And if they are talented, they don't have to just stand there and hope for the best on appeal. As one lawyer famously said, lawyers are not potted plants. They are supposed to speak, to zealously defend their clients, not just stand there. That's their job. Update 2: Howard Minz at Mercury News is continuing his daily live blogging, and he reports this sequence, in reverse chronological order, about some evidence Samsung has been trying to get before the jury for some time: Judge Koh lets Samsung put in its F700 phone for the limited purpose of showing alternative designs, could get raised during cross of Bressler...we'll see if Samsung can avoid "crossing the line," judge's warning.... by hmintz Samsung argues it has right to cross-examine Bressler, while Apple says any references to the prior phone should be barred because of Samsung's troubles with discovery rules.... by hmintz Samsung atty trying to get its F700 phone, a pre-iPhone design that had been excluded, into trial (been barred so far)...more material left on cutting room floor that Samsung hoping to get in front of the jury...Koh mulling it for limited purposes (not to prove Samsung's prior art argument).. Just sayin', y'all. And with all that, here's Apple's trial brief, as text: *************************** HAROLD J. MCELHINNY (CA SBN 66781)

[email]

MICHAEL A. JACOBS (CA SBN 111664)

[email]

RACHEL KREVANS (CA SBN 116421)

[email]

JENNIFER LEE TAYLOR (CA SBN 161368)

[email]

ALISON M. TUCHER (CA SBN 171363)

[email]

RICHARD S.J. HUNG (CA SBN 197425)

[email]

JASON R. BARTLETT (CA SBN 214530)

[email]

MORRISON & FOERSTER LLP

[address]

[phone]

[fax]

WILLIAM F. LEE

[email]

WILMER CUTLER PICKERING

HALE AND DORR LLP

[address]

[phone]

[fax]

MARK D. SELWYN (SBN 244180)

[email]

WILMER CUTLER PICKERING

HALE AND DORR LLP

[address]

[phone]

[fax]

Attorneys for Plaintiff and

Counterclaim-Defendant APPLE INC.

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

APPLE INC., a California corporation, Plaintiff, 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. Case No. 11-cv-01846-LHK (PSG) APPLE'S TRIAL BRIEF

Trial: July 30, 2012 Time: 9:00 a.m. Place: Courtroom 8, 4th Floor Judge: Hon. Lucy H. Koh PUBLIC REDACTED VERSION TABLE OF CONTENTS Page I. SAMSUNG HAS VIOLATED APPLE'S INTELLECTUAL PROPERTY

RIGHTS ........................................................... 3 A. Samsung Infringes Apple's Design Patents ........................................................... 3 1. Apple's Elements of Proof ......................................................................... 3 2. Design patent infringement depends on whether Samsung's product

designs appear substantially the same to an ordinary observer as

Apple's patented designs................................................. 4 3. A patented design is "functional" only if the design is "dictated by"

function ................................................ 6 4. Samsung must identify a primary obviousness reference that creates

"basically the same" overall visual impression as the patented

design .................................................... 7 5. Some of Samsung's defenses have already been rejected or

excluded ............................................ 8 B. Samsung Infringes Apple's User-Interface Software Patents ................................ 9 C. Samsung Has Infringed and Diluted Apple's iPad Trade Dress and Diluted

Apple's iPhone Trade Dress.................................... 10 1. Samsung is infringing Apple's iPad trade dress ...................................... 11 2. Samsung has diluted Apple's iPad Trade Dress ...................................... 13 3. Samsung has diluted Apple's iPhone Trade Dress .................................. 14 4. Samsung's trade dress defenses are based on legally incorrect

premises ............................................... 15 II. SAMSUNG'S TORTS RESULT FROM AN INTENTIONAL CORPORATE

STRATEGY TO COPY APPLE AND ITS PRODUCTS ........................... 16 A. Samsung's Own Documents Show that Samsung Copied Apple ........................ 16 B. Samsung's Copying Establishes the Intent Required for Willful

Infringement and for Inducement and Supports Apple's Trade Dress

Claims ..................................... 18 III. SAMSUNG'S VIOLATION OF APPLE'S INTELLECTUAL PROPERTY

RIGHTS GIVES RISE TO BILLIONS OF DOLLARS IN DAMAGES ........................ 20 A. Apple Is Entitled to Substantial Monetary Damages ........................................... 20 1. Samsung's Profits ........................................ 21 2. Apple's Lost Profits ..................................... 22 3. Reasonable Royalty........................................ 24 B. Special Considerations Apply to Calculating Trade Dress Damages .................. 25 1. Samsung Cannot Rebut the Presumption That All Profits Are

Attributable to Samsung's Infringing Activity ........................................ 25 2. Actual Notice Is Not Required to Recover Damages for Violation

of Unregistered Trade Dress Rights ......................................................... 26 i TABLE OF CONTENTS

(continued) Page IV. APPLE WILL BE ENTITLED TO A PERMANENT INJUNCTION............................ 26 V. SAMSUNG'S ASSERTED DECLARED-ESSENTIAL PATENTS ARE NOT

INFRINGED AND INVALID ..................................... 27 A. The '941 Patent ............................................ 28 1. Apple Does Not Infringe the '941 Patent ............................... 29 2. The '941 Patent Is Invalid ................................. 31 B. The '516 Patent ........................................... 31 1. Apple Does Not Infringe the '516 Patent ................................................. 32 2. The '516 Patent Is Invalid ................................................... 33 C. No Willful Infringement of the Declared-Essential Patents ................................ 33 VI. SAMSUNG'S RIGHTS IN THE ASSERTED DECLARED ESSENTIAL

PATENTS HAVE BEEN EXHAUSTED BY INTEL'S AUTHORIZED SALE OF

LICENSED BASEBAND CHIPS TO APPLE ............................................ 34 VII. SAMSUNG'S STANDARD-SETTING DECEIT RESULTS IN WAIVER OF ITS

RIGHTS TO ASSERT THE PATENTS AGAINST APPLE ............................... 36 VIII. SAMSUNG IS ESTOPPED FROM ASSERTING ITS PATENTS AGAINST

APPLE BECAUSE OF ITS STANDARD-SETTING DECEIT ..................................... 37 IX. SAMSUNG'S FEATURE PATENTS ARE NOT INFRINGED AND INVALID ......... 37 A. The '460 Patent .......................................................... 38 1. Apple Does Not Infringe The '460 Patent ............................................... 38 2. The '460 Patent Is Invalid .............................................. 41 B. The '893 Patent .............................................. 42 1. Apple Does Not Infringe The '893 Patent ............................................... 42 2. The '893 Patent Is Invalid ............................................... 43 C. The '711 Patent ........................................... 43 1. Apple Does Not Infringe The '711 Patent ............................................... 43 2. The '711 Patent Is Invalid ............................................. 44 D. No Willful Infringement of the Feature Patents....................................... 45 X. SAMSUNG'S STANDARD-SETTING DECEIT HAS RESULTED IN BREACH

OF CONTRACT AND VIOLATIONS OF THE ANTITRUST AND UNFAIR

COMPETITION LAWS ........................................ 45 A. Samsung Has Breached Two Contractual Obligations Critically Important

to the 3GPP Standard-Setting Process ..................................... 45 1. Samsung Repeatedly Breached Its Duty to Timely Disclose IPR ........... 46 2. Samsung Breached its Duty to Grant FRAND Licenses ......................... 47 B. Samsung Has Violated The Antitrust Laws By Its Standard-Setting

Misconduct .................................................... 49 ii TABLE OF CONTENTS

(continued) Page XI. SAMSUNG'S CLAIMED DAMAGES ARE EXCESSIVE AND

UNSUPPORTED........................................................... 50 A. To The Extent That Samsung Is Entitled To Any Remedy, its FRAND

Damages Cannot Exceed $0.0049 Per Unit for Each Infringed Patent................ 50 B. The Royalty Damages Sought by Samsung on The '460, '711, and '893

Patents Are The Product of Flawed Methodology and Are Overstated ............... 53 XII. APPLE'S SUMMARY EXHIBITS COMPLY WITH FEDERAL RULE OF

EVIDENCE 1006 ........................................... 54

iii TABLE OF AUTHORITIES Page(s) CASES A.C. Aukerman Co. v. R.L. Chaides Constr. Co.,

960 F.2d 1020 (Fed. Cir. 1992) ..................................................... 37 AMF, Inc. v. Sleekcraft Boats,

599 F.2d 341 (9th Cir. 1979)............................................. 11, 20 Amgen Inc. v. F. Hoffman-La Roche Ltd.,

580 F.3d 1340 (Fed. Cir. 2009) ......................................... 30, 40, 43, 44 Amini Innovation Corp. v. Anthony California, Inc.,

439 F.3d 1365 (Fed. Cir. 2006) .................................................. 7 Apple Inc., v. Samsung Elecs. Co.,

678 F.3d 1314 (Fed. Cir. 2012) .................................. passim Apple Inc. v. Motorola, Inc.,

No. 11-cv-08540,

2012 WL 1959560 (N.D. Ill. May 22, 2012) ........................................ 54 Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc.,

457 F.3d 1062 (9th Cir. 2006)...................................................... 15, 16 Bard Peripheral Vascular v. W.L. Gore & Assocs.,

No. 2010-1510,

2012 U.S. App. Lexis 13561 (Fed. Cir. Jun. 14, 2012) .............................................. 19 Bergstrom v. Sears, Roebuck & Co.,

496 F. Supp. 476 (D. Minn. 1980) ................................................ 21 Braun, Inc. v. Dynamics Corp.,

975 F.2d 815 (Fed. Cir. 1990) ..................................................... 6 Cel-Tech Communications v. LA Cellular,

973 P.2d 527 (Cal. 1999) ........................................... 49 Clamp Mfg. Co. v. Enco Mfg. Co.,

870 F.2d 512 (9th Cir. 1989).......................................... 12 Clicks Billiards, Inc. v. Sixshooters, Inc.,

251 F.3d 1252 (9th Cir. 2001).......................................... 12, 13 Cornell Univ. v. Hewlett-Packard Co.,

609 F. Supp. 2d. 279 (N.D.N.Y. 2009) .................................. 51

iv Crocs, Inc. v. International Trade Com'n,

598 F.3d 1294 (Fed. Cir. 2010) ...................................................... 4 Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,

567 F.3d 1314 (Fed. Cir. 2009) ..................................................... 24 Dwyer Instruments, Inc. v. Sensocon, Inc.,

No. 09-CV-10-TLS,

2012 U.S. Dist. LEXIS 78491 (N.D. Ind. June 5, 2012) ........................................................ 26 eBay Inc. v. MercExchange, L.L.C.,

547 U.S. 388 (2006) ................................... 27, 52, 53 Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008) .............................. 3 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,

304 F.3d 1289 (Fed. Cir. 2002) ................................... 30 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,

535 U.S. 722 (2002) ................................. 41, 43, 44 First Brands Corp. v. Fred Meyer, Inc.,

809 F.2d 1378 (9th Cir. 1983)............................................... passim Gales v. Winco Foods,

No. C 09-058913 CRB,

2011 U.S. Dist. LEXIS 96125 (N.D. Cal. Aug. 26, 2011) ...................................................... 55 Global-Tech Appliances, Inc., v. SEB S.A.,

131 S. Ct. 2060 (2011) ............................................. 20 Gorham Co. v. White,

81 U.S. 511 (1872) ................................................. 5, 6 In re Seagate Tech. LLC,

497 F.3d 1360 (Fed. Cir. 2007) ................................... 19, 33, 45 Intel Corp. v. Terabyte Int'l, Inc.,

6 F.3d 614 (9th Cir. 1993)........................................................... 22 Kamar Int'l, Inc. v. Russ Berrie & Co., Inc.,

752 F.2d 1326 (9th Cir. 1984)................................................... 21, 25 Keith v. Volpe,

618 F. Supp. 1132 (C.D. Cal. 1985)................................................ 55 L.A. Gear, Inc. v. Thom McAn Shoes Co.,

988 F.2d 1117 (Fed. Cir. 1993) ......................................... 5, 6

v Lindy Pen Co. v. Bic Pen Corp.,

982 F.2d 1400 (9th Cir. 1993)...................................................... 20 Loral Fairchild Corp. v. Sony Corp.,

181 F.3d 1313 (Fed. Cir. 1999) ................................................... 40 Lucent Techs., Inc. v. Gateway, Inc.,

580 F.3d 1301 (Fed. Cir. 2009) ................................................. 51 Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc.,

152 F.3d 1368 (Fed. Cir. 1998) ............................................... 40 Mattel, Inc. v. MCA Records, Inc.,

296 F.3d 894 (9th Cir. 2002)............................................ 13 Mehus v. Emporia State Univ.,

222 F.R.D. 455 (D. Kan. 2004) .......................................... 55 MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp.,

420 F.3d 1369 (Fed. Cir. 2005) ...................................................... 35 Micro Chem. v. Lextron, Inc.,

318 F.3d 1119 (Fed. Cir. 2003) ................................................... 22 Miracle Blade, LLC v. Ebrands Commerce Group, LLC,

207 F. Supp. 2d 1136 (D. Nev. 2002) ............................................... 55 Nike, Inc. v. Wal-Mart,

138 F.3d 1437 (Fed. Cir. 1998) ................................................... 21 Nintendo of Am. v. Dragon Pac. Int'l,

40 F.3d 1007 (9th Cir. 1994)........................................................... 25 North American Philips Corp. v. American Vending Sales, Inc.,

35 F.3d 1576 (Fed. Cir. 1994) ................................. 35 Phoenix v. Com/Systems, Inc.,

706 F.2d 1033 (9th Cir. 1983)......................................... 56 Qualcomm Inc. v. Broadcom Corp.,

548 F.3d 1004 (Fed. Cir. 2008) ................................. 36, 37 Quanta Computer, Inc. v. LG Electronics, Inc.,

553 U.S. 617 (2008) ............................................... 34 Read v. Portec,

970 F. 2d 816, 827 (Fed. Cir. 1992) .................... 19 Ring Plus, Inc. v. Cingular Wireless Corp.,

614 F.3d 1354 (Fed. Cir. 2010) ......................................................... 40

vi Rodan & Fields, LLC v. Estee Lauder Cos.,

No. 10-cv-02451-LHK,

2010 U.S. Dist. LEXIS 109573 (N.D. Cal. Oct. 5, 2010) ....................................................... 14 Rolex Watch, U.S.A., Inc., v. Michel Co.,

179 F.3d 704 (9th Cir. 1999).................................................... 25 Sands, Taylor & Wood v. The Quaker Oats Co.,

978 F.2d 947 (7th Cir. 1992)..................................................... 25 SEB S.A. v. Montgomery Ward & Co., Inc.,

594 F.3d 1360 (2010) ........................................ 19 Thorn EMI N.A. v. Hyundai Electronics Industries,

No. 94-332 RRM,

1996 U.S. Dist. LEXIS 21170 (D. Del. July 12, 1996)..................................................... 34, 35 Tulip Computers Int'l v. Dell,

262 F. Supp. 2d 358 (D. Del. 2003) ................................................ 35 United States v. Cuddy,

147 F.3d 1111 (9th Cir. 1998)...................................................... 8 United States v. Francis,

131 F.3d 1452 (11th Cir. 1997)...................................................... 55 United States v. Gardner,

611 F.2d 770 (9th Cir. 1980)............................................ 55 United States v. Morin,

627 F.3d 985 (5th Cir. 2010)..................................................... 55 United States v. Rizk,

660 F.3d 1125 (9th Cir. 2011)....................................... 55 United States v. Shirley,

884 F.2d 1130 (9th Cir. 1989)..................................................... 55 Warner-Jenkinson Co. v. Hilton-Davis Chem. Co.,

520 U.S. 17 (1997) ............................................................ 31 STATUTES

15 U.S.C. 1111 (2006) ............................................................... 26

vii 15 U.S.C. § 1115(a) ..................................................... 14

§§ 1115(a), 1125(a)(3) ................................................ 14

§ 1116 .................................................. 26

§ 1117 ............................................................. 21

§ 1117(a) (2006)................................................... 25

§ 1125(a)(1)(A)..................................................... 5, 11

§ 1125(c) ....................................................... 13

§ 1125(c)(2)........................................................ 13

§ 1125(c)(2)(B) .................................................... 13, 20 35 U.S.C. § 283 .............................................................. 26

§ 284 (2006) .................................................................... 22

§ 289 (2006) .................................................... 5, 21, 22 Cal. Bus. & Prof. Code § 17200 et seq. ................................................... 49

viii

INTRODUCTION Samsung is on trial because it made a deliberate decision to copy Apple's iPhone and iPad. Apple's innovations in product design and user interface technology resulted in strong intellectual property rights that Samsung has infringed. Try as it might, Samsung cannot deflect attention from its own copying by the patents it has asserted against Apple. To the contrary, the trial will expose how Samsung deceived the international body responsible for creating the UMTS wireless standards to slip its patents into the standard and illegally monopolize technology markets.

These pictures, by now familiar to the Court, remain the basic story of our case: Samsung Smartphones BEFORE iPhone Apple's iPhone (announced Jan. 2007) Samsung Smartphones AFTER iPhone

Samsung Touchscreen Tablet BEFORE iPad Apple's iPad 2 (announced March 2011) Samsung Touchscreen Tablet AFTER iPad 2 1 Samsung once sold a range of phones and a tablet of its own design. Now Samsung's mobile devices not only look like Apple's iPhone and iPad, they use Apple's patented software features to interact with the user. The intellectual property that Apple has asserted against Samsung goes to the heart of the extraordinary success of the iPhone and the iPad. Samsung's asserted patents, on the other hand, claim minor features, which are not practiced by the accused products and, in any event, were invented by others before Samsung. Furthermore, the two asserted declared-essential patents are unenforceable because Samsung unquestionably violated the Intellectual Property Rights (IPR) Policy of the European Telecommunications Standards Institute (ETSI) UMTS standard by failing timely to disclose that it had filed for patents on the very proposals that it was pushing ETSI to adopt. Samsung also exhausted its rights with respect to these patents when it licensed Intel to sell the chipsets that Samsung now accuses of infringement.

This will brief summarizes the elements of Apple's proof for its claims and counterclaims, and explains why Samsung's attempts to avoid the consequences of its decision to copy Apple must fail. It also explains why Apple does not infringe any of Samsung's asserted patents and the reasons they are invalid and, in the case of the declared-essential patents, unenforceable. Along 2 the way, we briefly address legal issues the Court may need to resolve, while pointing out how decisions this Court and the Federal Circuit have already made have simplified that task.



I. SAMSUNG HAS VIOLATED APPLE'S INTELLECTUAL PROPERTY RIGHTS Samsung has violated Apple's rights in (A) design patents that protect the iPhone's and iPad's industrial design and the iPhone's Graphical User Interface (GUI) design; (B) utility patents that protect software features that make the iPhone and iPad easy and fun to use; and (C) trade dress rights that protect the iPhone's and iPad's distinctive appearance, which consumers closely associate with Apple. A. Samsung Infringes Apple's Design Patents 1. Apple's Elements of Proof Samsung's products infringe Apple's D'677 and D'087 iPhone design patents; D'889 tablet design patent; and D'305 iPhone GUI design patent. Samsung's product designs appear substantially the same as Apple's designs to an ordinary observer familiar with the prior art, which is the test for design patent infringement. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670, 678 (Fed. Cir. 2008) (en banc). This Court previously found likely infringement of the D'677 and D'889 patents in its preliminary injunction ruling. (Dkt. No. 452 at 24-27.) At trial, Apple will present the testimony of Peter Bressler, a former President of the Industrial Designers Society of America (IDSA), who in 2010 received the profession's highest honor, an IDSA Personal Recognition Award. Mr. Bressler will compare Samsung's product designs to Apple's patented designs from the perspective of an ordinary observer and explain why he believes they infringe. Similarly, Susan Kare, a graphic designer with 30 years of experience designing user interface graphics and icons, will analyze Samsung's GUI designs. In addition to side-by-side comparisons, Apple will present evidence that many people -- industry observers, consumers, [redacted] -- considered Samsung's products to look very similar to Apple's products that embody the patented designs. 3 Samsung contests infringement and argues that Apple's patents are not valid. But Samsung builds its case around "experts" such as Robert Anders and Itay Sherman. Mr. Anders has made his living since the 1990s as a professional witness. Mr. Sherman has worked in the industry but candidly admits he is "not . . . an industrial design expert." (Dkt. No. 1059-1 at 1.) Apple's patents enjoy a presumption of validity, and Samsung will be unable to rebut that presumption. This Court and the Federal Circuit have already held that Samsung failed to present a substantial validity challenge to the D'677, D'087, and D'889 patents in opposing Apple's preliminary injunction. (Dkt No. 452 at 23-24; Apple Inc., v. Samsung Elecs. Co., 678 F.3d 1314, 1326-27, 1330-32 (Fed. Cir. 2012).) At trial, Mr. Bressler, Dr. Kare, and other witnesses will testify that Apple's patented designs differed significantly from the prior art and were not dictated by function. Apple itself considered numerous alternatives, and others in the industry (including Samsung) marketed a range of different designs. The initial skepticism that met Apple's announcement of the iPhone and of the iPad, followed by the extraordinary commercial success of these products, is evidence that the designs were not obvious. Indeed, such secondary considerations as the commercial success of a product embodying the patented design "can be the most probative evidence of nonobviousness in the record." Crocs, Inc. v. International Trade Com'n, 598 F.3d 1294, 1310 (Fed. Cir. 2010) (internal quotation omitted). This conclusion is strongly reinforced by Samsung's deliberate copying. Samsung cannot change the central fact that its products are strikingly similar to Apple's patented designs. Nor can it change the novelty and extraordinary success of Apple's designs. Samsung will instead attempt to confuse the issues with a hodgepodge of defenses based on incorrect legal standards. Samsung's defenses will fail. 2. Design patent infringement depends on whether Samsung's product

designs appear substantially the same to an ordinary observer as

Apple's patented designs. Samsung attempts to avoid infringement by importing a trademark-like concept of consumer "deception" into design patent law. Samsung contends Apple must show not only that Samsung's products "appear substantially the same" to an ordinary observer as the claimed design, but also that purchasers are "deceived" into buying Samsung's products thinking they are 4 Apple's. (Dkt. No. 1232 at 163.) This Court applied the correct test by finding likely infringement based on substantial similarity, without any evidence of deception. The jury should be instructed to apply the same test. Samsung's insistence on consumer "deception" as an essential element is contrary to the Patent Act and controlling precedent. Unlike the Lanham Act, the design patent provisions do not refer to "deception" or "confusion." Compare 15 U.S.C. § 1125(a)(1)(A) (Lanham Act) with 35 U.S.C. § 289 (liability for applying to a product "the patented design, or any colorable imitation thereof"). The Supreme Court in Gorham Co. v. White, 81 U.S. 511 (1872), referred to deception, but only after stating that the "true test of identity" is "sameness of appearance"; that "slight variance in configuration" does not destroy "substantial identity"; and that the key issue is whether, "in the eye of an ordinary observer," the accused design is "substantially the same" as the patented design. Id. at 526-28. Deception is a result that may follow if the two designs appear substantially the same, but the Court did not hold that designs are substantially the same only if "deception" is shown. This is confirmed by the Supreme Court's application of its rule, which relied on a detailed comparison between the patented design and the defendant's design to conclude there was "no substantial difference." Id. at 528-29. Consistent with this reading of Gorham, this Court found in its preliminary injunction order that Samsung is likely infringing the D'889 and D'677 patents based on a "side-by-side comparison" of the Samsung products with the patented designs, without any evidence of actual or likely deception. (Dkt. No. 452 at 25-27, 45-48.) On appeal, Samsung emphasized that "Apple has not identified a single example of customer confusion." (Apple Inc. v. Samsung Elecs. Co., Ltd., Federal Circuit No. 2012-1105, Brief of Defendants-Appellees, dated January 9, 2012, at 63.) The Federal Circuit nonetheless found that Apple was likely to prevail on the merits of the D'889 patent. Apple, 678 F.3d at 1328, 1333. Other Federal Circuit precedent confirms that design patent infringement does not require consumer deception. In L.A. Gear, Inc. v. Thom McAn Shoes Co., 988 F.2d 1117, 1120-21 (Fed. Cir. 1993), the district court found the defendant liable for both design patent infringement and unfair competition based on trade dress infringement. On appeal, the Federal Circuit reversed the 5 finding of unfair competition because it found that purchasers were unlikely to be deceived into buying the accused product thinking it was the plaintiff's product. Id. at 1134. The Federal Circuit nonetheless found design patent infringement, emphasizing that "[d]esign patent infringement relates solely to the patented design, and does not require proof of unfair competition in the marketplace." Id. at 1126. Similarly, in Braun, Inc. v. Dynamics Corp., 975 F.2d 815, 821 (Fed. Cir. 1990), the defendant argued that "a trier of fact may not as a matter of law find design patent infringement," unless there is empirical "evidence that the blender's design would deceive ordinary observers." The Federal Circuit held that the defendant waived this argument by failing to present it to the district court but went on to observe that "[n]othing in Gorham suggests that, in finding design patent infringement, a trier of fact may not as a matter of law rely exclusively or primarily on a visual comparison of the patented design, as well as the device that embodies the design, and the accused device's design." Id. 3. A patented design is "functional" only if the design is "dictated by"

function. Relying on Federal Circuit authority, this Court has held that a design is not "functional" merely because it has "a utilitarian purpose" or "enhance[s] the user experience;" rather, the design must be "dictated by function." (Dkt. No. 452 at 13, citing L.A. Gear, 988 F.2d at 1123.) This Court also held that the relevant inquiry for invalidity is not "'the utility of each of the various elements that comprise the design,'" but the functionality of the patented design "as a whole." (Id., quoting L.A. Gear, 988 F.2d at 1123.) Based on these standards, the Court rejected Samsung's arguments that the iPhone and tablet design patents are invalid as "functional," and that almost every element of Apple's designs should be ignored as "functional" in deciding whether Samsung's products appear substantially the same as Apple's designs. (Id. at 11-15, 39-40.) Samsung ignores these rulings. Samsung's proposed jury instructions do not even mention the "dictated by function" test. (Dkt. No. 1232 at 178, 204.) Instead, Samsung dissects Apple's patented designs into numerous elements and then contends that each element is 6 "functional" because it "affects the cost or quality of the article." (Dkt. No. 1189 at 21; Dkt. No. 1232 at 178.) Affecting "cost or quality" is a trademark concept that does not belong in design patent law. Samsung cites a Federal Circuit case that mentioned "cost or quality," but that case did not apply "cost or quality" in deciding design patent functionality, and cited a Supreme Court case that used this test in the context of trade dress functionality. Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2006), citing Inwood Labs., Inc.v. v. Ives Labs., Inc., 456 U.S. 844, 851 (1987). The Federal Circuit emphasized that "discounting of functional elements must not convert the overall infringement test to an element-by-element comparison," and reversed the district court's finding of no design patent infringement on that ground. Id. at 1372. 4. Samsung must identify a primary obviousness reference that creates

"basically the same" overall visual impression as the patented design This Court and the Federal Circuit have held that design patent obviousness requires Samsung to identify (1) a primary prior art reference whose overall visual impression is "basically the same" as the patented design; and (2) a secondary prior art reference whose overall appearance is so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features in the other. Apple, 678 F.3d at 1329-30. (See also Dkt. No. 1170 at 7-8.) Despite these rulings, Samsung has proposed a jury instruction on obviousness that does not even mention the controlling design patent test, and relies instead on rules that apply to utility patents. (Dkt. No. 1232 at 185.) Samsung has proposed an "alternative" instruction in case its primary instruction is rejected, but that instruction still deviates from the controlling test in several respects, including by referring to "deceptive similarity." (Id. at 187.) Samsung experts Itay Sherman and Sam Lucente have relied on numerous prior art references to support their obviousness opinions while not identifying any reference that they contend creates "basically the same" overall visual impression as the patented designs. At trial, Samsung's experts should not be allowed to opine that a design is obvious without applying the correct legal test. 7 5. Some of Samsung's defenses have already been rejected or excluded Prior rulings of the Federal Circuit, this Court, and Judge Grewal preclude Samsung from relying on several non-infringement and invalidity theories. As a result of the Federal Circuit's decision on Apple's motion for a preliminary injunction, Samsung should be barred from relying on Fidler as a primary obviousness reference, the Compaq TC1000 as a secondary reference to Fidler, and JP'638 for anticipation of the D'087 patent. The Federal Circuit held that Fidler cannot qualify as a primary reference because it does not create "basically the same" visual impression as the D'889 design. Apple, 678 F.3d at 1330-32. It also held that the Compaq TC1000 "is so different in visual appearance from the Fidler reference" that it cannot qualify as a "secondary reference" to "bridge the gap between Fidler and the D'889 design." Id. at 1331. It further held that the JP'638 cannot qualify as an anticipatory reference for the D'087 patent because, when the claimed side view is taken into account, "the differences between the arched, convex front of the '638 reference distinguish it from the perfectly flat front face of the D'087 patent." Id. The Federal Circuit based its rulings on the appearances of the patented designs and Samsung's references, which new evidence cannot change. Thus, these decisions bind Samsung at trial as law of the case. United States v. Cuddy, 147 F.3d 1111, 1114 (9th Cir. 1998)1 This Court has also properly narrowed Samsung's case by granting (except as to the LG Prada) Apple's Motions in Limine #2 and #3 to exclude references that are not prior art. (Dkt. No. 1267 at 3.) In addition, the Court held in its summary judgment order that Apple's January 2007 iPhone image is not prior art against Apple's GUI design patent because it has the same inventors and was not publicly displayed more than one year before the D'305 priority date. (Dkt. No. 1158 at 38-39.) And Judge Grewal has stricken prior art references and invalidity and non-infringement contentions that Samsung failed to disclose in timely responses to Apple's interrogatories. (Dkt. No. 1144 at 3-5.) Samsung's failure timely to disclose these contentions 8 bars Samsung from presenting them at trial in any manner, whether through experts or fact witnesses of either side. B. Samsung Infringes Apple's User-Interface Software Patents Apple will prove at trial that Samsung is infringing three patents directed to innovative features of its multi-touch user interface: the '381 "rubberbanding" [redacted] patent, the '163 "tap-to-zoom" patent, and the '915 "scroll vs. gesture" patent. Infringement is clear from using the Samsung products and reviewing the source code, as Apple's experts Ravin Balakrishnan and Karan Singh will explain. Apple will also present evidence that Samsung deliberately copied Apple's features. The Court's claim construction rulings leave Samsung with only a few scattered non-infringement arguments that plainly lack merit. Samsung's own expert conceded that Samsung infringes the '163 patent. Samsung's original non-infringement defense to the '915 patent cannot survive the Court's construction of "invokes" in rejecting Samsung' motion for summary judgment. (Dkt. No. 1158 at 18-20.) Samsung has an alternative argument that a few of its products do not infringe the '915 patent because they can be made to perform what Samsung's expert calls "two-finger scrolling" (i.e., a combination of translating and minimal or imperceptible zooming). But Samsung's argument fails because it adds a new limitation that is not part of the claim, namely that scrolling and scaling are mutually exclusive. As to the '381 patent, this Court has already found likely infringement, rejecting the claim constructions that were the basis for Samsung's non-infringement defenses. (Dkt. No. 452 at 52-56; Dkt. No. 1266.) Samsung apparently continues to argue that it does not infringe because "first direction" requires the human finger to move with single-pixel precision, even though the Court has rejected that argument. (See Dkt. No. 452 at 55 ("because the term 'first direction' does not require linear movement, Samsung's devices do infringe").) Samsung may also assert that some of its products do not infringe the '381 patent because they can be manipulated to avoid rubberbanding, by making slow and minimal finger movements. But the Accused Products do "rubberband" in normal operation and thus necessarily include the instructions for performing the claimed method, which is all that asserted claim 19 requires. 9 Lacking any plausible non-infringement argument, Samsung has no choice but to argue invalidity. Samsung cannot overcome the presumption of validity with clear and convincing evidence. Samsung's prior art references fail to disclose key limitations of Apple's inventions, as Apple's experts will explain. Samsung's deliberate copying and the iPhone's and iPad's commercial success reinforce the conclusion that Apple's inventions were far from obvious. Moreover, Judge Grewal struck prior art references to the '915 patent cited by Samsung's expert Stephen Gray, as well as references cited by Andries Van Dam (except as technical background to the '381 patent). (Dkt. No. 1144 at 3, 5.) Samsung cannot rely on these references as prior art. Finally, Judge Grewal's rulings preclude Samsung from presenting evidence of any efforts to design around Apple's software patents. On May 4, 2012, Judge Grewal ruled that as a sanction for Samsung's unjustified failure to produce "design-around" source code for Samsung's products until long after the Court-ordered deadline, Samsung "shall be precluded from offering any evidence of its design-around efforts for the '381 . . . and '163 patents. . . ." (Dkt. No. 898 at 9.) In response to Samsung's motion for "clarification," Judge Grewal confirmed that his order meant what it said: during the jury trial, Samsung could not offer "any evidence of its design-arounds," meaning "no source code evidence, no non-source code evidence, no evidence of any kind, whether for liability or any other purpose." (Dkt. No. 1106 at 3-4.) Samsung did not file a timely objection to Judge Grewal's June 19 Order. (Dkt. 1274-2, at 3.) C. Samsung Has Infringed and Diluted

Apple's iPad Trade Dress and Diluted Apple's iPhone Trade Dress Samsung has both infringed and diluted Apple's distinctive iPad trade dress and has diluted Apple's famous iPhone trade dress. Apple's trade dress is protected by trade dress Registration No. 3,470,983, Apple's unregistered iPhone 3G trade dress, its unregistered combination iPhone trade dress, and its unregistered iPad/iPad 2 trade dress. (See Exhibit A hereto.) Samsung's sale of products that are virtually indistinguishable from the iconic iPhone 26 and iPad violates Apple's trade dress rights. At trial, Samsung will be unable to overcome the presumption that Apple's registered trade dress is valid and protectable. Apple will prove that Apple's unregistered trade dress is 10 protectable (i.e., distinctive and non-functional), and that Samsung has diluted and infringed Apple's trade dress. 1. Samsung is infringing Apple's iPad trade dress There is no question that Samsung's sale of its accused tablets is likely to cause confusion about the source, sponsorship, or approval of those tablets, which is the Lanham Act test for infringement. 15 U.S.C. § 1125(a)(1)(A). Indeed, as the Court noted, Samsung's Galaxy Tab 10.1 is "virtually indistinguishable" from the iPad 2. (Dkt. No. 452 at 47.) Apple will show likely confusion under the factors set forth in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), which include (1) strength of the trade dress; (2) similarity of the trade dress; (3) evidence of actual confusion; (4) marketing channels used; and (5) defendant's intent in selecting the trade dress. Likely confusion can occur before a purchase, at the moment of the purchase ("point of sale"), or "post-sale," such as when a consumer sees somebody using a Galaxy Tab 10.1 in a cafe and wrongly assumes that person is using an iPad. Apple relies on both point-of-sale and post-sale confusion. Apple will present overwhelming evidence of likely confusion under the Sleekcraft factors. This evidence will show that Apple's iPad trade dress is strong and closely associated with Apple. Philip Schiller, Apple's Senior Vice President of Worldwide Marketing, will testify regarding Apple's widespread advertising campaign for the iPad that specifically emphasizes its distinctive appearance; the extensive and highly favorable coverage by the media and industry analysts; the iPad's outstanding commercial success; and Apple's and Samsung's head-to-head competition. Apple will also present evidence of a survey conducted by Hal Poret, which confirmed that consumers associate the iPad trade dress with Apple. Russell Winer, a highly experienced marketing expert, will testify that Apple's trade dress is strong, and that Samsung's competing products are sold in similar marketing channels to Apple's. Apple will also present evidence that Samsung's accused tablets are very similar to the iPad trade dress, and have caused actual confusion. The similarity is clear from a direct comparison between Samsung's tablets and the iPad trade dress. It is also shown by widespread comments in the media and by others struck by the similarity. Apple will present evidence of 11 actual confusion -- consumers who mistook Samsung's tablets for iPads -- even though such evidence is not required to prevail on a trade dress infringement claim. This evidence includes Samsung documents that show [retacted]. (PX59 at 19.) It also includes a survey conducted by Kent Van Liere, which concluded that consumers are likely to associate Samsung's Galaxy Tab 10.1 with Apple in a post-sale environment. Apple will also show that Samsung deliberately copied Apple's iPad trade dress, and even redesigned its Galaxy Tab 10.1 to make it look more similar to the iPad 2. This evidence includes Samsung's own documents and admissions. In addition to showing likely confusion, Apple will show that Apple's iPad trade dress is distinctive and non-functional, and thus protectable. Trade dress is distinctive when consumers identify the trade dress with a particular source. Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1261 (9th Cir. 2001). Factors relevant to distinctiveness include (1) the length and nature of Apple's use of the trade dress; (2) the nature and extent of Apple's advertising and promotion of its trade dress; (3) efforts made to promote a conscious connection between Apple's trade dress and Apple's products; (4) association of Apple's trade dress with Apple by purchasers of Apple products using the trade dress; (5) successful use of the trade dress to increase Apple's sales; (6) whether Apple authorized anyone else to use its trade dress; and (7) whether Samsung intentionally copied Apple's trade dress. Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 517 (9th Cir. 1989). The evidence from Mr. Schiller and others that shows Apple's trade dress is strong also establishes the requisite distinctiveness. As for functionality, a trade dress is not functional unless, taken as a whole, the trade dress is essential to the use or purpose of the device or the trade dress affects its cost or quality. Clicks Billiards, 251 F.3d at 1258. Factors relevant to the functionality of a trade dress include whether Apple's advertising touted the utilitarian advantage of its trade dress; whether the trade dress results from a simple or inexpensive method of manufacture; whether the trade dress yields a utilitarian advantage; and whether alternative designs are available. (Dkt. No. 1159 at 5.) Apple will show that its iPad trade dress is not functional under these factors, based on the testimony of 12 Apple employees and experts, as well as documentary evidence, including the evidence that this Court cited in denying Samsung's motion for summary judgment. (Id. at 5-7.) Chris Stringer, a Senior Director of Industrial Design at Apple, will testify that aesthetic rather than functional considerations drove the design of the iPad and iPad 2. Design expert Peter Bressler will testify that the design of the iPad and iPad 2 is not essential to the use or purpose of these devices. 2. Samsung has diluted Apple's iPad Trade Dress Unlike trade dress infringement, dilution does not require a showing of likely confusion; rather, "dilution" means a lessening of the capacity of a famous trade dress to identify and distinguish goods. (See Dkt. No. 1232 at 254, 256 (similar definitions in Apple's and Samsung's jury instructions).) Apple relies, in particular, on "dilution by blurring," meaning that the accused tablets have impaired the distinctiveness of Apple's famous iPad trade dress through an association arising from the similarity between the appearance of the two products. See 15 U.S.C. § 1125(c)(2)(B). Thus, evidence that Samsung's sale of similar-looking tablets makes the asserted iPad trade dresses seem less distinctive and less closely associated with Apple shows dilution by blurring, even if consumers understand that Samsung's tablets are made by Samsung. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 905 (9th Cir. 2002) ("Dilution . . . does not require a showing of consumer confusion"). Trade dress dilution requires a showing that the trade dress was famous when the defendant began offering the products accused of diluting the trade dress. See 15 U.S.C. § 1125(c) (defining the elements of a dilution claim)2 Apple must show that the iPad trade dress was "famous" by June 8, 2011, which is when Samsung first sold a product (the Galaxy Tab 10.1) accused of diluting the iPad trade dress.3 (See Dkt. No. 1232 at 264-65 (jury instructions of Apple and Samsung agreeing on this date).) Trade dress is famous if it is widely recognized by the general consuming public as identifying the source of the goods. 15 U.S.C. § 1125(c). Apple 13 will show fame through evidence of extensive advertising, industry praise, sales, and widespread recognition of the iPad trade dress. Apple will also present evidence that Samsung's sale of look-alike tablets has diluted the distinctiveness of Apple's iPad trade dress. The evidence largely overlaps with the evidence of trade dress infringement discussed above. For example, although evidence of likely and actual confusion between the Galaxy Tab 10.1 and the iPad is not required for trade dress dilution, it strongly supports this claim. Also, marketing expert Russell Winer will explain how Samsung's sales of look-alike products impairs the distinctiveness of Apple's trade dress. 3. Samsung has diluted Apple's iPhone Trade Dress Samsung has diluted Apple's registered and unregistered iPhone trade dress, which is valid, protectable, and famous. Registered trade dress is presumed to be valid and protectable, so Samsung has the burden of proving that Apple's registered iPhone trade dress lacks distinctiveness and is functional. 15 U.S.C. §§ 1115(a), 1125(a)(3); Rodan & Fields, LLC v. Estee Lauder Cos., No. 10-cv-02451-LHK, 2010 U.S. Dist. LEXIS 109573, at *15 (N.D. Cal. Oct. 5, 2010) (registration of trade dress entitles owner to presumption of protectable rights under 15 U.S.C. § 1115(a), but plaintiff must show inherent distinctiveness or secondary meaning when trade dress is not registered). Samsung will not be able to meet that burden. Indeed, the evidence of fame cited in the Court's summary judgment ruling shows that Apple's registered and unregistered iPhone trade dress is both famous and distinctive. (See Dkt. No. 1189 at 10-11.) Apple must show that the iPhone trade dress was famous by July 15, 2010, which is when Samsung released a product (the "Vibrant" version of the Galaxy S) that Apple has accused of diluting its iPhone trade dress.4 (See Joint Pretrial Statement, Dkt. No. 1189 at 2, 11.) Samsung's sale of numerous products that use the iPhone trade dress has unquestionably resulted in "dilution by blurring," by making the iPhone trade dress seem less distinctive and less 14 closely associated with Apple. Apple will show dilution by blurring by evidence that will include Hal Poret's survey showing that significant numbers of consumers associate the asserted iPhone trade dresses with Apple, as well as a survey by Kent Van Liere regarding consumers' association of the accused products with Apple. Apple will also present evidence that Samsung deliberately copied the iPhone trade dress. 4. Samsung's trade dress defenses are based on legally incorrect premises Lacking any valid defense, Samsung resorts, once again, to incorrect legal standards in an attempt to show that Apple's trade dress is not protectable because it is "functional." As this Court has held, Ninth Circuit precedent "requires that in evaluating functionality, the trade dress should be considered as a whole rather than as a collection of individual elements." (Dkt. No. 1158 at 5 (emphasis added), citing Clicks Billiards, 251 F.3d at 1259.) Despite this ruling, Samsung's proposed jury instructions misleadingly define functionality as meaning that "a claimed feature of the trade dress" is essential to the product's use or purpose or affects its cost or quality. (Dkt. No. 1232 at 262 (emphasis added).) Samsung's experts Itay Sherman and Sam Lucente have compounded this error by focusing on individual elements rather than the functionality of the trade dress as a whole. Indeed, as this Court noted, "Samsung does not offer any support for its assertion that the arrangement of features in the overall trade dress is strictly functional . . . ." (Dkt. No. 1158 at 5.) Samsung has also proposed an incorrect and extraordinarily broad definition of "aesthetic functionality" that would effectively obliterate trade dress rights. As this Court noted, aesthetic functionality is "a limited doctrine"; the Ninth Circuit has questioned whether it even exists independently from "utilitarian functionality." (Dkt. No. 1158 at 7-8, citing Clicks Billiards, 251 F.3d at 1259 and First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1382 n.3 (9th Cir. 1983).) Yet Samsung asserts that a patent is invalid for aesthetic functionality if "a claimed design feature of the trade dress improves the attractiveness and eye-appeal of the design." (Dkt. No. 1232 261-262.) Samsung cites a district court case that refers to Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1068 (9th Cir. 2006), but Au-Tomotive Gold does not support Samsung. The Ninth Circuit in Au-Tomotive-Gold "rejected the notion that 'any feature 15 of a product which contributes to the consumer appeal and saleability of the product is, as a matter of law, a functional element of the product.'" 457 F.3d at 1069, 1073 (quoting Vuitton et Fils S.A. v. J. Young Enterprises, Inc., 644 F. 2d 769, 773 (9th Cir. 1981).) Such an expansive view of aesthetic functionality would "provide[] a disincentive for development of imaginative and attractive design," because "[t]he more appealing the design, the less protection it would receive." Id. at 1073 (internal quotation and citation omitted). Indeed, such a view "would be the death knell for trademark protection," since "it would mean that simply because a consumer likes a trademark, or finds it aesthetically pleasing, a competitor could adopt and use the mark on its own products." Id. In sum, while Au-Tomotive Gold suggests the doctrine of aesthetic functionality might have "some limited vitality," it squarely rejects Samsung's overreaching interpretation. 457 F.3d at 1069-70, 1073. II. SAMSUNG'S TORTS RESULT FROM AN INTENTIONAL CORPORATE

STRATEGY TO COPY APPLE AND ITS PRODUCTS A. Samsung's Own Documents Show that Samsung Copied Apple Samsung's documents show that the similarity of Samsung's products is no accident or, as Samsung would have it, a "natural evolution." Rather, it results from Samsung's deliberate plan to free-ride on the iPhone's and iPad's extraordinary success by copying their iconic designs and intuitive user interface. Apple will rely on Samsung's own documents, which tell an unambiguous story. Samsung's documents show that Samsung developed an overall plan to copy Apple's innovative designs and features so that it could compete with Apple. In September 2007, Samsung concluded that [redacted] (Id. at 37.) In September 2008, Samsung's CEO commented that Samsung should probably [redacted] (PX9 at 1.) In December 2008, a Samsung-commissioned study concluded that 16 consumers [redacted]. (PX36 at 10, 20-22, 32). In February 2010 - five months before Samsung began selling its infringing Galaxy S smartphone in the U.S. - Samsung Mobile Division President JK Shin told Samsung's designers that the difference in user experience between the iPhone and Samsung's flagship smartphone, the "Omnia," is that of "Heaven and Earth," and that he hears comments that Samsung should "make something like the iPhone." (PX 40 at 2, 4.) With regard to Apple's design patent and trade dress claims, Samsung's documents show that Samsung developed and released products that look almost identical to Apple's, despite repeated warnings that Samsung's products were too similar. [redacted] (PX47 at 27.) Similarly, in February 2010, Google told Samsung the [redacted] (PX42, PX43 at 2.) In 2011, Samsung's own Product Design Group noted that [redacted] (PX53 at 2.) And a Samsung-commissioned analysis concluded that Samsung's smartphone container icons were [redacted] (PX 41 at 192, PX41 at 193.) This evidence involves the products that Apple has accused of infringing its design patents and violating its trade dress rights, including the Galaxy S phone (sold in the U.S. as the "Vibrant" and other names), the Galaxy Tab 10.1, and the icon containers that Samsung used on its smartphones. With regard to Apple's user-interface software patents, Samsung's documents show that Samsung deliberately copied numerous features of Apple's products because it recognized that consumers preferred those features. Samsung's copying was pervasive, was directed from the 17 highest levels of the company, and reached the patented features at issue in this litigation. For example, in May 2010, Samsung concluded from an extremely detailed side-by-side comparison of the iPhone and Samsung's [redacted] This is the feature claimed by Apple's '381 patent. Samsung concluded that it should implement [redacted] and it did. (PX46 at 66.) Similarly, in April 2011, Samsung concluded from a comparison of one of [redacted] (PX57 at 19, 57 at 73) Samsung copied the rubberbanding (or "bounce") feature in its tablets. Samsung's documents also show that Samsung copied the "tap-to-zoom" feature claimed by the '163 patent, because it concluded that [redacted] And in March 2010, Samsung concluded from an extremely detailed side-by-side comparison [redacted] (PX 44 at 33, 58, 65, and 131.) Once again, this evidence is lin