Apple Inc. v. Samsung Electronics Co., Ltd. , 786 F.3d 983 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC., a California corporation,
Plaintiff-Appellee
v.
SAMSUNG ELECTRONICS CO., LTD.,
a Korean corporation,
SAMSUNG ELECTRONICS AMERICA, INC.,
a New York corporation,
SAMSUNG TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,
Defendants-Appellants
______________________
2014-1335, 2015-1029
______________________
Appeals from the United States District Court for the
Northern District of California in No. 5:11-cv-01846,
Judge Lucy H. Koh.
______________________
Decided: May 18, 2015
______________________
WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, Boston, MA, argued for plaintiff-appellee. Also
represented by ANDREW J. DANFORD, MARK CHRISTOPHER
FLEMING, ERIC FLETCHER, LAUREN B. FLETCHER, SARAH R.
FRAZIER, KEVIN SCOTT PRUSSIA; JAMES QUARLES, III, MARK
D. SELWYN, THOMAS GREGORY SPRANKLING, Washington,
DC; RACHEL KREVANS, CHRISTOPHER ROBINSON,
2 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
NATHANIEL BRYAN SABRI, RUTH N. BORENSTEIN, Morrison
& Foerster LLP, San Francisco, CA.
KATHLEEN M. SULLIVAN, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, argued for defendants-
appellants. Also represented by WILLIAM ADAMS; ROBERT
JASON BECHER, SUSAN RACHEL ESTRICH, B. DYLAN
PROCTOR, MICHAEL THOMAS ZELLER, Los Angeles, CA;
VICTORIA FISHMAN MAROULIS, Redwood Shores, CA;
KEVIN ALEXANDER SMITH, San Francisco, CA.
ERIK SCOTT JAFFE, Erik S. Jaffe, P.C., Washington,
DC, for amicus curiae Hispanic Leadership Fund.
TIM DELANEY, Brinks Gilson & Lione, Chicago, IL, for
amicus curiae National Grange of the Order of the Pa-
trons of Husbandry. Also represented by LAURA A.
LYDIGSEN.
MARK A. LEMLEY, Durie Tangri LLP, San Francisco,
CA, for amici curiae David Abrams, Sarah Burstein,
Michael A. Carrier, Bernard Chao, Andrew Chin, Ralph
D. Clifford, Jorge Contreras, Thomas Cotter, Robin Feld-
man, William Gallagher, Jon M. Garon, Shubha Ghosh,
Amy Landers, Mark A. Lemley, Oskar Liivak, Brian J.
Love, Jonathan Masur, Stephen McJohn, Mark P.
McKenna, Tyler T. Ochoa, Michael Risch, Jason Michael
Schultz, Lea Shaver, Jessica Silbey, Katherine J. Strand-
burg, Rebecca Tushnet, Ryan Vacca.
JOSEPH CARL CECERE, JR., Cecere PC, Dallas, TX, for
amicus curiae The National Black Chamber of Commerce.
MATTHEW SCHRUERS, Computer & Communications
Industry Association, Washington, DC, for amicus curiae
Computer & Communications Industry Association.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 3
MARK DAVID JANIS, Indiana University Maurer School
of Law, Bloomington, IN, for amici curiae Jason J. Du
Mont, Mark David Janis.
PERRY J. SAIDMAN, Saidman DesignLaw Group, Silver
Spring, MD, for amici curiae Design Ideas, Ltd., Novo
Nordisk Inc., Lutron Electronics, Inc., Nuvasive, Inc.,
Method Products, PBC, Oakley, Inc., Deckers Outdoor
Corporation, Kohler Company.
JOEL SAYRES, Faegre Baker Daniels LLP, Denver, CO,
for amicus curiae Crocs, Inc.
BRIAN BUROKER, Gibson, Dunn & Crutcher LLP,
Washington, DC, for amici curiae Michael McCoy, Steven
Carl Visser, Lorraine Justice, Jim Agutter, Prasad
Boradkar, James G. Budd, Rama Chorpash, Gregory
Bryant Darby, Ed Dorsa, Tom Gattis, Allan Hastings,
James Kaufman, Brook Kennedy, Haig Khachatoorian,
Carol Joan Lasch, Thornton Lothrop, Tom Matano,
George L. McCain, Zhenyu Cheryl Qian, Lance G. Rake,
James Morley Read, Kevin Reeder, Jinseup Shin, aka Ted
Shin, Bruce M. Tharp, Gregory Thomas, Richard Wilfred
Yelle. Also represented by HOWARD S. HOGAN, MARK
ANDREW PERRY, SARAH SLADIC, LUCAS C. TOWNSEND;
THEODORE J. BOUTROUS, JR., Los Angeles, CA; HERVEY
MARK LYON, Palo Alto, CA.
MARK S. DAVIES, Orrick, Herrington & Sutcliffe LLP,
Washington, DC, for amici curiae Charles L. Mauro,
James Douglas Alsup, Jr., Charles Austen Angell, Daniel
W. Ashcraft, Joseph M. Ballay, Alex Bally, Michelle S.
Berryman, Eric Beyer, Robert Ian Blaich, Gordon Paul
Bruce, Robert Brunner, William Bullock, Bruce Claxton,
Del Coates, Robert J. Cohn, James Couch, George Russell
Daniels, Mark Dziersk, John Edson, Gerard Furbershaw,
Carroll Gantz, John Leavitt Gard, Michael Garten, Don-
ald M. Genaro, Betsy Goodrich, Stephen G. Hauser,
4 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
James J. Lesko, Scott David Mason, Patricia Moore, Louis
Nelson, Christopher J. Parke, Nancy Perkins, Gordon
Perry, Samuel B. Petre, Dale Raymond, Raymond W.
Riley, Brian Roderman, Bryce G. Rutter, Andrew Serb-
inski, Ritasue Siegel, Paul Specht, Budd Steinhilber, John
V. Stram, Kerstin Nelsen Strom, Mathieu Turpault, Gary
Van Deursen, Frank Von Holzhausen, Sohrab Vossoughi,
Arnold Wasserman, Allan E. Weaver, Edmund A. Weaver,
Robert Welsh, Stephen B. Wilcox, Angela Yeh. Also repre-
sented by KATHERINE M. KOPP; RACHEL WAINER APTER,
New York, NY; WILL MELEHANI, Irvine, CA.
______________________
Before PROST, Chief Judge, O’MALLEY and CHEN, Circuit
Judges.
PROST, Chief Judge.
Samsung Electronics Co., Ltd., Samsung Electronics
America, Inc., Samsung Telecommunications America,
LLC (collectively, “Samsung”) appeal from a final judg-
ment of the U.S. District Court for the Northern District
of California in favor of Apple Inc. (“Apple”).
A jury found that Samsung infringed Apple’s design
and utility patents and diluted Apple’s trade dresses. For
the reasons that follow, we affirm the jury’s verdict on the
design patent infringements, the validity of two utility
patent claims, and the damages awarded for the design
and utility patent infringements appealed by Samsung.
However, we reverse the jury’s findings that the asserted
trade dresses are protectable. We therefore vacate the
jury’s damages awards against the Samsung products
that were found liable for trade dress dilution and remand
for further proceedings consistent with this opinion.
BACKGROUND
Apple sued Samsung in April 2011. On August 24,
2012, the first jury reached a verdict that numerous
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 5
Samsung smartphones infringed and diluted Apple’s
patents and trade dresses in various combinations and
awarded over $1 billion in damages.
The infringed design patents are U.S. Design Patent
Nos. D618,677 (“D’677 patent”), D593,087 (“D’087 pa-
tent”), and D604,305 (“D’305 patent”), which claim certain
design elements embodied in Apple’s iPhone. The in-
fringed utility patents are U.S. Patent Nos. 7,469,381
(“’381 patent”), 7,844,915 (“’915 patent”), and 7,864,163
(“’163 patent”), which claim certain features in the iPh-
one’s user interface. The diluted trade dresses are
Trademark Registration No. 3,470,983 (“’983 trade dress”)
and an unregistered trade dress defined in terms of
certain elements in the configuration of the iPhone.
Following the first jury trial, the district court upheld
the jury’s infringement, dilution, and validity findings
over Samsung’s post-trial motion. The district court also
upheld $639,403,248 in damages, but ordered a partial
retrial on the remainder of the damages because they had
been awarded for a period when Samsung lacked notice of
some of the asserted patents. The jury in the partial
retrial on damages awarded Apple $290,456,793, which
the district court upheld over Samsung’s second post-trial
motion. On March 6, 2014, the district court entered a
final judgment in favor of Apple, and Samsung filed a
notice of appeal. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
We review the denial of Samsung’s post-trial motions
under the Ninth Circuit’s procedural standards. See
Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d
1358, 1370-71 (Fed. Cir. 2009). The Ninth Circuit reviews
de novo a denial of a motion for judgment as a matter of
law. Id. “The test is whether the evidence, construed in
the light most favorable to the nonmoving party, permits
only one reasonable conclusion, and that conclusion is
6 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
contrary to that of the jury.” Id. (citing Theme Promo-
tions, Inc. v. News Am. Mktg. FSI, 546 F.3d 991, 999 (9th
Cir. 2008)).
The Ninth Circuit reviews a denial of a motion for a
new trial for an abuse of discretion. Revolution Eyewear,
563 F.3d at 1372. “In evaluating jury instructions, preju-
dicial error results when, looking to the instructions as a
whole, the substance of the applicable law was [not] fairly
and correctly covered.” Gantt v. City of Los Angeles, 717
F.3d 702, 707 (9th Cir. 2013) (quoting Swinton v. Potomac
Corp., 270 F.3d 794, 802 (9th Cir. 2001)) (alteration in
original). The Ninth Circuit orders a new trial based on
jury instruction error only if the error was prejudicial. Id.
A motion for a new trial based on insufficiency of evidence
may be granted “only if the verdict is against the great
weight of the evidence, or it is quite clear that the jury
has reached a seriously erroneous result.” Incalza v.
Fendi N. Am., Inc., 479 F.3d 1005, 1013 (9th Cir. 2007)
(internal quotation marks omitted).
Samsung appeals numerous legal and evidentiary ba-
ses for the liability findings and damages awards in the
three categories of intellectual property asserted by
Apple: trade dresses, design patents, and utility patents.
We address each category in turn.
I. Trade Dresses
The jury found Samsung liable for the likely dilution
of Apple’s iPhone trade dresses under the Lanham Act.
When reviewing Lanham Act claims, we look to the law of
the regional circuit where the district court sits. ERBE
Elektromedizin GmbH v. Canady Tech. LLC, 629 F.3d
1278, 1287 (Fed. Cir. 2010). We therefore apply Ninth
Circuit law.
The Ninth Circuit has explained that “[t]rade dress is
the totality of elements in which a product or service is
packaged or presented.” Stephen W. Boney, Inc. v. Boney
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 7
Servs., Inc., 127 F.3d 821, 828 (9th Cir. 1997). The essen-
tial purpose of a trade dress is the same as that of a
trademarked word: to identify the source of the product. 1
McCarthy on Trademarks and Unfair Competition § 8:1
(4th ed.) (“[L]ike a word asserted to be a trademark, the
elements making up the alleged trade dress must have
been used in such a manner as to denote product
source.”). In this respect, “protection for trade dress
exists to promote competition.” TrafFix Devices, Inc. v.
Mktg. Displays, Inc., 532 U.S. 23, 28 (2001).
The protection for source identification, however,
must be balanced against “a fundamental right to compete
through imitation of a competitor’s product . . . .” Leath-
erman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d
1009, 1011-12 (9th Cir. 1999). This “right can only be
temporarily denied by the patent or copyright laws.” Id.
In contrast, trademark law allows for a perpetual monop-
oly and its use in the protection of “physical details and
design of a product” must be limited to those that are
“nonfunctional.” Id. at 1011-12; see also Qualitex Co. v.
Jacobson Prods. Co., 514 U.S. 159, 164-65 (1995) (“If a
product’s functional features could be used as trademarks,
however, a monopoly over such features could be obtained
without regard to whether they qualify as patents and
could be extended forever (because trademarks may be
renewed in perpetuity).”). Thus, it is necessary for us to
determine first whether Apple’s asserted trade dresses,
claiming elements from its iPhone product, are non-
functional and therefore protectable.
“In general terms, a product feature is functional if it
is essential to the use or purpose of the article or if it
affects the cost or quality of the article.” Inwood Labs.,
Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982). “A
product feature need only have some utilitarian ad-
vantage to be considered functional.” Disc Golf Ass’n v.
Champion Discs, Inc., 158 F.3d 1002, 1007 (9th Cir.
1998). A trade dress, taken as a whole, is functional if it
8 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
is “in its particular shape because it works better in this
shape.” Leatherman, 199 F.3d at 1013.
“[C]ourts have noted that it is, and should be, more
difficult to claim product configuration trade dress than
other forms of trade dress.” Id. at 1012-13 (discussing
cases). Accordingly, the Supreme Court and the Ninth
Circuit have repeatedly found product configuration trade
dresses functional and therefore non-protectable. See,
e.g., TrafFix, 532 U.S. at 26-27, 35 (reversing the Sixth
Circuit’s reversal of the district court’s grant of summary
judgment that a trade dress on a dual-spring design for
temporary road sign stands was functional); Secalt S.A. v.
Wuxi Shenxi Const. Mach. Co., 668 F.3d 677, 687 (9th Cir.
2012) (affirming summary judgment that a trade dress on
a hoist design was functional); Disc Golf, 158 F.3d at 1006
(affirming summary judgment that a trade dress on a disc
entrapment design was functional).
Moreover, federal trademark registrations have been
found insufficient to save product configuration trade
dresses from conclusions of functionality. See, e.g., Talk-
ing Rain Beverage Co. v. S. Beach Beverage, 349 F.3d 601,
602 (9th Cir. 2003) (affirming summary judgment that
registered trade dress covering a bottle design with a grip
handle was functional); Tie Tech, Inc. v. Kinedyne Corp.,
296 F.3d 778, 782-83 (9th Cir. 2002) (affirming summary
judgment that registered trade dress covering a handheld
cutter design was functional). The Ninth Circuit has even
reversed a jury verdict of non-functionality of a product
configuration trade dress. See Leatherman, 199 F.3d at
1013 (reversing jury verdict that a trade dress on the
overall appearance of a pocket tool was non-functional).
Apple conceded during oral argument that it had not cited
a single Ninth Circuit case that found a product configu-
ration trade dress to be non-functional. Oral Arg. 49:06-
30, available at http://www.cafc.uscourts.gov/oral-
argument-recordings/14-1335/all.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 9
The Ninth Circuit’s high bar for non-functionality
frames our review of the two iPhone trade dresses on
appeal. While the parties argue without distinguishing
the two trade dresses, the unregistered trade dress and
the registered ’983 trade dress claim different details and
are afforded different evidentiary presumptions under the
Lanham Act. We analyze the two trade dresses separate-
ly below.
A. Unregistered Trade Dress
Apple claims elements from its iPhone 3G and 3GS
products to define the asserted unregistered trade dress:
a rectangular product with four evenly rounded
corners;
a flat, clear surface covering the front of the prod-
uct;
a display screen under the clear surface;
substantial black borders above and below the
display screen and narrower black borders on ei-
ther side of the screen; and
when the device is on, a row of small dots on the
display screen, a matrix of colorful square icons
with evenly rounded corners within the display
screen, and an unchanging bottom dock of colorful
square icons with evenly rounded corners set off
from the display’s other icons.
Appellee’s Br. 10-11. As this trade dress is not registered
on the principal federal trademark register, Apple “has
the burden of proving that the claimed trade dress, taken
as a whole, is not functional . . . .” See 15 U.S.C.
§ 1125(c)(4)(A).
Apple argues that the unregistered trade dress is non-
functional under each of the Disc Golf factors that the
Ninth Circuit uses to analyze functionality: “(1) whether
10 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
the design yields a utilitarian advantage, (2) whether
alternative designs are available, (3) whether advertising
touts the utilitarian advantages of the design, and
(4) whether the particular design results from a compara-
tively simple or inexpensive method of manufacture.” See
Disc Golf, 158 F.3d at 1006. However, the Supreme Court
has more recently held that “a feature is also functional
. . . when it affects the cost or quality of the device.” See
TrafFix, 532 U.S. at 33. The Supreme Court’s holding
was recognized by the Ninth Circuit as “short circuiting
some of the Disc Golf factors.” Secalt, 668 F.3d at 686-87.
Nevertheless, we explore Apple’s contentions on each of
the Disc Golf factors and conclude that there was insuffi-
cient evidence to support a jury finding in favor of non-
functionality on any factor.
1. Utilitarian Advantage
Apple argues that “the iPhone’s physical design did
not ‘contribute unusually . . . to the usability’ of the de-
vice.” Appellee’s Br. 61 (quoting J.A. 41095:11-12) (alter-
ation in original). Apple further contends that the
unregistered trade dress was “developed . . . not for ‘supe-
rior performance.’” Id. at 62 n.18. Neither “unusual
usability” nor “superior performance,” however, is the
standard used by the Ninth Circuit to determine whether
there is any utilitarian advantage. The Ninth Circuit
“has never held, as [plaintiff] suggests, that the product
feature must provide superior utilitarian advantages. To
the contrary, [the Ninth Circuit] has suggested that in
order to establish nonfunctionality the party with the
burden must demonstrate that the product feature serves
no purpose other than identification.” Disc Golf, 158 F.3d
at 1007 (internal quotation marks omitted).
The requirement that the unregistered trade dress
“serves no purpose other than identification” cannot be
reasonably inferred from the evidence. Apple emphasizes
a single aspect of its design, beauty, to imply the lack of
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 11
other advantages. But the evidence showed that the
iPhone’s design pursued more than just beauty. Specifi-
cally, Apple’s executive testified that the theme for the
design of the iPhone was:
to create a new breakthrough design for a phone
that was beautiful and simple and easy to use and
created a beautiful, smooth surface that had a
touchscreen and went right to the rim with the
bezel around it and looking for a look that we
found was beautiful and easy to use and appeal-
ing.
J.A. 40722-23 (emphases added).
Moreover, Samsung cites extensive evidence in the
record that showed the usability function of every single
element in the unregistered trade dress. For example,
rounded corners improve “pocketability” and “durability”
and rectangular shape maximizes the display that can be
accommodated. J.A. 40869-70; J.A. 42612-13. A flat clear
surface on the front of the phone facilitates touch opera-
tion by fingers over a large display. J.A. 42616-17. The
bezel protects the glass from impact when the phone is
dropped. J.A. 40495. The borders around the display are
sized to accommodate other components while minimizing
the overall product dimensions. J.A. 40872. The row of
dots in the user interface indicates multiple pages of
application screens that are available. J.A. 41452-53.
The icons allow users to differentiate the applications
available to the users and the bottom dock of unchanging
icons allows for quick access to the most commonly used
applications. J.A. 42560-61; J.A. 40869-70. Apple rebuts
none of this evidence.
Apple conceded during oral argument that its trade
dress “improved the quality [of the iPhone] in some re-
spects.” Oral Arg. 56:09-17. It is thus clear that the
unregistered trade dress has a utilitarian advantage. See
Disc Golf, 158 F.3d at 1007.
12 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
2. Alternative Designs
The next factor requires that purported alternative
designs “offer exactly the same features” as the asserted
trade dress in order to show non-functionality. Tie Tech,
296 F.3d at 786 (quoting Leatherman, 199 F.3d at 1013-
14). A manufacturer “does not have rights under trade
dress law to compel its competitors to resort to alternative
designs which have a different set of advantages and
disadvantages.” Id.
Apple, while asserting that there were “numerous al-
ternative designs,” fails to show that any of these alterna-
tives offered exactly the same features as the asserted
trade dress. Appellee’s Br. 62. Apple simply catalogs the
mere existence of other design possibilities embodied in
rejected iPhone prototypes and other manufacturers’
smartphones. The “mere existence” of other designs,
however, does not prove that the unregistered trade dress
is non-functional. See Talking Rain, 349 F.3d at 604.
3. Advertising of Utilitarian Advantages
“If a seller advertises the utilitarian advantages of a
particular feature, this constitutes strong evidence of
functionality.” Disc Golf, 158 F.3d at 1009. An “infer-
ence” of a product feature’s utility in the plaintiff’s adver-
tisement is enough to weigh in favor of functionality of a
trade dress encompassing that feature. Id.
Apple argues that its advertising was “[f]ar from tout-
ing any utilitarian advantage of the iPhone design . . . .”
Appellee’s Br. 60. Apple relies on its executive’s testimo-
ny that an iPhone advertisement, portraying “the distinc-
tive design very clearly,” was based on Apple’s “product as
hero” approach. Id. (quoting J.A. 40641-42; 40644:22).
The “product as hero” approach refers to Apple’s stylistic
choice of making “the product the biggest, clearest, most
obvious thing in [its] advertisements, often at the expense
of anything else around it, to remove all the other ele-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 13
ments of communication so [the viewer] see[s] the product
most predominantly in the marketing.” J.A. 40641-42.
Apple’s arguments focusing on its stylistic choice,
however, fail to address the substance of its advertise-
ments. The substance of the iPhone advertisement relied
upon by Apple gave viewers “the ability to see a bit about
how it might work,” for example, “how flicking and scroll-
ing and tapping and all these multitouch ideas simply
[sic].” J.A. 40644:23-40645:2. Another advertisement
cited by Apple similarly displayed the message,
“[t]ouching is believing,” under a picture showing a user’s
hand interacting with the graphical user interface of an
iPhone. J.A. 24896. Apple fails to show that, on the
substance, these demonstrations of the user interface on
iPhone’s touch screen involved the elements claimed in
Apple’s unregistered trade dress and why they were not
touting the utilitarian advantage of the unregistered
trade dress.
4. Method of Manufacture
The fourth factor considers whether a functional bene-
fit in the asserted trade dress arises from “economies in
manufacture or use,” such as being “relatively simple or
inexpensive to manufacture.” Disc Golf, 158 F.3d at 1009.
Apple contends that “[t]he iPhone design did not re-
sult from a ‘comparatively simple or inexpensive method
of manufacture’” because Apple experienced manufactur-
ing challenges. Appellee’s Br. 61 (quoting Talking Rain,
349 F.3d at 603). Apple’s manufacturing challenges,
however, resulted from the durability considerations for
the iPhone and not from the design of the unregistered
trade dress. According to Apple’s witnesses, difficulties
resulted from its choices of materials in using “hardened
steel”; “very high, high grade of steel”; and, “glass that
was not breakable enough, scratch resistant enough.” Id.
(quoting J.A. 40495-96, 41097). These materials were
chosen, for example, for the iPhone to survive a drop:
14 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
If you drop this, you don't have to worry about the
ground hitting the glass. You have to worry about
the band of steel surrounding the glass hitting the
glass. . . . In order to, to make it work, we had to
use very high, high grade of steel because we
couldn’t have it sort of deflecting into the glass.
J.A. 40495-96. The durability advantages that resulted
from the manufacturing challenges, however, are outside
the scope of what Apple defines as its unregistered trade
dress. For the design elements that comprise Apple’s
unregistered trade dress, Apple points to no evidence in
the record to show they were not relatively simple or
inexpensive to manufacture. See Disc Golf, 158 F.3d at
1009 (“[Plaintiff], which has the burden of proof, offered
no evidence that the [asserted] design was not relatively
simple or inexpensive to manufacture.”).
In sum, Apple has failed to show that there was sub-
stantial evidence in the record to support a jury finding in
favor of non-functionality for the unregistered trade dress
on any of the Disc Golf factors. Apple fails to rebut the
evidence that the elements in the unregistered trade
dress serve the functional purpose of improving usability.
Rather, Apple focuses on the “beauty” of its design, even
though Apple pursued both “beauty” and functionality in
the design of the iPhone. We therefore reverse the dis-
trict court’s denial of Samsung’s motion for judgment as a
matter of law that the unregistered trade dress is func-
tional and therefore not protectable.
B. The Registered ’983 Trade Dress
In contrast to the unregistered trade dress, the ’983
trade dress is a federally registered trademark. The
federal trademark registration provides “prima facie
evidence” of non-functionality. Tie Tech, 296 F.3d at 782-
83. This presumption “shift[s] the burden of production to
the defendant . . . to provide evidence of functionality.”
Id. at 783. Once this presumption is overcome, the regis-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 15
tration loses its legal significance on the issue of function-
ality. Id. (“In the face of sufficient and undisputed facts
demonstrating functionality, . . . the registration loses its
evidentiary significance.”).
The ’983 trade dress claims the design details in each
of the sixteen icons on the iPhone’s home screen framed
by the iPhone’s rounded-rectangular shape with silver
edges and a black background:
The first icon depicts the letters “SMS” in green
inside a white speech bubble on a green back-
ground;
...
the seventh icon depicts a map with yellow and
orange roads, a pin with a red head, and a red-
and-blue road sign with the numeral “280” in
white;
...
the sixteenth icon depicts the distinctive configu-
ration of applicant’s media player device in white
over an orange background.
’983 trade dress (omitting thirteen other icon design
details for brevity).
It is clear that individual elements claimed by the
’983 trade dress are functional. For example, there is no
dispute that the claimed details such as “the seventh icon
depicts a map with yellow and orange roads, a pin with a
red head, and a red-and-blue road sign with the numeral
‘280’ in white” are functional. See id. Apple’s user inter-
face expert testified on how icon designs promote usabil-
ity. This expert agreed that “the whole point of an icon on
a smartphone is to communicate to the consumer using
that product, that if they hit that icon, certain functionali-
ty will occur on the phone.” J.A. 41458-59. The expert
further explained that icons are “[v]isual shorthand for
16 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
something” and that “rectangular containers” for icons
provide “more real estate” to accommodate the icon de-
sign. J.A. 41459, 41476. Apple rebuts none of this evi-
dence.
Apple contends instead that Samsung improperly dis-
aggregates the ’983 trade dress into individual elements
to argue functionality. But Apple fails to explain how the
total combination of the sixteen icon designs in the con-
text of iPhone’s screen-dominated rounded-rectangular
shape—all part of the iPhone’s “easy to use” design
theme—somehow negates the undisputed usability func-
tion of the individual elements. See J.A. 40722-23. Ap-
ple’s own brief even relies on its expert’s testimony about
the “instant recognizability due to highly intuitive icon
usage” on “the home screen of the iPhone.” J.A. 41484;
Appellee’s Br. 43, 70, 71 (quoting J.A. 41484). Apple’s
expert was discussing an analysis of the iPhone’s overall
combination of icon designs that allowed a user to recog-
nize quickly particular applications to use. J.A. 41484,
25487. The iPhone’s usability advantage from the com-
bination of its icon designs shows that the ’983 trade
dress viewed as a whole “is nothing other than the assem-
blage of functional parts . . . .” See Tie Tech, 296 F.3d at
786 (quoting Leatherman, 199 F.3d at 1013). There is no
“separate ‘overall appearance’ which is non-functional.”
Id. (quoting Leatherman, 199 F.3d at 1013). The undis-
puted facts thus demonstrate the functionality of the ’983
trade dress. “In the face of sufficient and undisputed facts
demonstrating functionality, as in our case, the registra-
tion loses its evidentiary significance.” See id. at 783.
The burden thus shifts back to Apple. See id. But
Apple offers no analysis of the icon designs claimed by the
’983 trade dress. Rather, Apple argues generically for its
two trade dresses without distinction under the Disc Golf
factors. Among Apple’s lengthy citations to the record, we
can find only two pieces of information that involve icon
designs. One is Apple’s user interface expert discussing
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 17
other possible icon designs. The other is a citation to a
print iPhone advertisement that included the icon designs
claimed in the ’983 trade dress. These two citations,
viewed in the most favorable light to Apple, would be
relevant to only two of the Disc Golf factors: “alternative
design” and “advertising.” But the cited evidence suffers
from the same defects as discussed in subsections I.A.2
and I.A.3. Specifically, the expert’s discussion of other
icon design possibilities does not show that the other
design possibilities “offer[ed] exactly the same features” as
the ’983 trade dress. See Tie Tech, 296 F.3d at 786 (quot-
ing Leatherman, 199 F.3d at 1013-14). The print iPhone
advertisement also fails to establish that, on the sub-
stance, it was not touting the utilitarian advantage of the
’983 trade dress. The evidence cited by Apple therefore
does not show the non-functionality of the ’983 trade
dress.
In sum, the undisputed evidence shows the function-
ality of the registered ’983 trade dress and shifts the
burden of proving non-functionality back to Apple. Apple,
however, has failed to show that there was substantial
evidence in the record to support a jury finding in favor of
non-functionality for the ’983 trade dress on any of the
Disc Golf factors. We therefore reverse the district court’s
denial of Samsung’s motion for judgment as a matter of
law that the ’983 trade dress is functional and therefore
not protectable.
Because we conclude that the jury’s findings of non-
functionality of the asserted trade dresses were not sup-
ported by substantial evidence, we do not reach Sam-
sung’s arguments on the fame and likely dilution of the
asserted trade dresses, the Patent Clause of the Constitu-
tion, or the dilution damages.
18 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
II. Design Patents
The design patents on appeal claim certain design el-
ements embodied in the iPhone. The D’677 patent focuses
on design elements on the front face of the iPhone:
The D’087 patent claims another set of design features
that extend to the bezel of the iPhone:
The D’305 patent claims “the ornamental design for a
graphical user interface for a display screen or portion
thereof” as shown in the following drawing:
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 19
Samsung contends that it should not have been found
liable for infringement of the asserted design patents
because any similarity was limited to the basic or func-
tional elements in the design patents. Moreover, accord-
ing to Samsung, there was no evidence of actual deception
of consumers and that the differences between the ac-
cused smartphones and the asserted design patents
should have been clear if prior art designs were properly
considered. Samsung raises these three issues—
functionality, actual deception, and comparison to prior
art—in the context of the jury instructions and the suffi-
ciency of evidence to support the infringement verdict.
Finally, Samsung argues that the district court legally
erred in allowing the jury to award as damages Sam-
sung’s entire profits on its infringing smartphones. We do
not find any of these challenges persuasive as discussed
below.
A. Infringement
1. Jury Instructions
a. Functional Aspects in the Asserted Design Patents
“Where a design contains both functional and non-
functional elements, the scope of the claim must be con-
20 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
strued in order to identify the non-functional aspects of
the design as shown in the patent.” OddzOn Prods., Inc.
v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997).
Samsung contends that the district court erred in failing
to exclude the functional aspects of the design patents
either in the claim construction or elsewhere in the in-
fringement jury instructions. Specifically, Samsung
contends that the district court should have excluded
elements that are “‘dictated by their functional purpose,’
or cover the ‘structural . . . aspects of the article.’” Appel-
lants’ Br. 23 (quoting Richardson v. Stanley Works, Inc.,
597 F.3d 1288, 1294 (Fed. Cir. 2010); Lee v. Dayton-
Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988))
(alteration in original) (citation omitted). Such elements,
according to Samsung, should be “ignored” in their entire-
ty from the design patent claim scope. Id. at 29. For
example, Samsung contends that rectangular form and
rounded corners are among such elements that should be
ignored in the infringement analysis. See, e.g., id.
Our case law does not support Samsung’s position. In
Richardson, the design patent at issue depicted a multi-
function tool with numerous components that were “dic-
tated by their functional purpose.” 597 F.3d at 1294. But
the claim construction in Richardson did not exclude
those components in their entirety. Rather, the claim
construction included the ornamental aspects of those
components: “the standard shape of the hammer-head,
the diamond-shaped flare of the crow-bar and the top of
the jaw, the rounded neck, the orientation of the crow-bar
relative to the head of the tool, and the plain, undecorated
handle.” Richardson v. Stanley Works, Inc., 610 F. Supp.
2d 1046, 1050 (D. Ariz. 2009). That construction was
affirmed on appeal. Richardson, 597 F.3d at 1294. As
such, the language “dictated by their functional purpose”
in Richardson was only a description of the facts there; it
did not establish a rule to eliminate entire elements from
the claim scope as Samsung argues.
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 21
Our case law likewise does not support Samsung’s
proposed rule of eliminating any “structural” aspect from
the claim scope. Samsung arrives at its proposed rule by
selecting a few words from the following statement in Lee:
“[d]esign patents do not and cannot include claims to the
structural or functional aspects of the article . . . .” 838
F.2d at 1188. But that statement addressed design
patent validity. See id. (quoting 37 C.F.R. § 1.153(a) on a
design patent application requirement). It did not specify
a rule, as Samsung represents, to eliminate elements
from the claim scope of a valid patent in analyzing in-
fringement.
More directly applicable to the claim scope issue at
hand, Lee stated elsewhere that “it is the non-functional,
design aspects that are pertinent to determinations of
infringement.” Id. (footnote omitted). That principle was
properly reflected in this case in the district court’s con-
struction of the design patents as claiming only “the
ornamental design” as shown in the patent figures. J.A.
01390-91. Samsung has not persuasively shown how the
district court’s claim constructions were legally erroneous
under Lee or Richardson. See Richardson, 597 F.3d at
1295 (noting that “discounting of functional elements
must not convert the overall infringement test to an
element-by-element comparison”).
Samsung asserted alternatively during oral argument
that the jury should have been instructed to compare the
accused Samsung smartphones to the “overall ornamental
appearance” of a patented design, instead of simply “the
overall appearance” as the district court provided. Oral
Arg. 4:06–4:25, 5:54–6:10. According to Samsung, “cru-
cially, what’s missing there is the word ‘ornamental.’” Id.
at 4:25–4:28. But jury instructions are reviewed “as a
whole” to determine whether “the substance of the appli-
cable law was [not] fairly and correctly covered” such that
the alleged error was prejudicial. See Gantt, 717 F.3d at
706 (quoting Swinton, 270 F.3d at 802) (alteration in
22 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
original). The jury instructions, as a whole, already
limited the scope of the asserted design patents to the
“ornamental” elements through the claim constructions as
discussed earlier: the design patents were each construed
as claiming “the ornamental design” as shown in the
patent figures. J.A. 01390-91. As such, Samsung has
failed to show prejudicial error in the jury instructions as
a whole that would warrant a new trial.
b. Actual Deception and Role of Prior Art
Samsung further contends that the infringement in-
struction was erroneous for stating that actual deception
was not required, and for providing guidelines in consid-
ering prior art. A design patent is infringed if an ordinary
observer would have been deceived: “if, in the eye of an
ordinary observer, giving such attention as a purchaser
usually gives, two designs are substantially the same, if
the resemblance is such as to deceive such an observer,
inducing him to purchase one supposing it to be the other,
the first one patented is infringed by the other.” Gorham
Co. v. White, 81 U.S. 511, 528 (1872). Moreover, an
infringement analysis must include a comparison of the
asserted design against the prior art: “[i]f the accused
design has copied a particular feature of the claimed
design that departs conspicuously from the prior art, the
accused design is naturally more likely to be regarded as
deceptively similar to the claimed design, and thus in-
fringing.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d
665, 678 (Fed. Cir. 2008) (en banc).
These holdings from Gorham and Egyptian Goddess
were reflected in the infringement instruction here, and
Samsung does not contend otherwise. Samsung argues
instead that the portions in the infringement instruction
highlighted below made the jury consider a lack of actual
deception irrelevant and led the jury to disregard the
prior art:
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 23
Two designs are substantially the same if, in the
eye of an ordinary observer, giving such attention
as a purchaser usually gives, the resemblance be-
tween the two designs is such as to deceive such
an observer, inducing him to purchase one suppos-
ing it to be the other. You do not need, however, to
find that any purchasers actually were deceived or
confused by the appearance of the accused Sam-
sung products. . . .
This determination of whether two designs are
substantially the same will benefit from compar-
ing the two designs with prior art. You must fa-
miliarize yourself with the prior art admitted at
trial in making your determination of whether
there has been direct infringement.
You may find the following guidelines helpful to
your analysis . . . .
J.A. 1394 (emphases added).
We conclude instead that the jury instruction simply
clarified that actual deception was not required, which is
an accurate reflection of the analysis in Gorham. See 81
U.S. at 530 (crediting expert opinions “that ordinary
purchasers would be likely to mistake the [accused]
designs for the [patented design]”).
We also conclude that the jury instruction expressly
required that each juror “must” consider the prior art
admitted at trial. J.A. 1394 (“You must familiarize your-
self with the prior art admitted at trial in making your
determination of whether there has been direct infringe-
ment.”). The jury instruction’s guidelines did not reduce
the entire prior art analysis to a mere option as Samsung
contends.
Samsung again has failed to show that “when, looking
to the instructions as a whole, the substance of the appli-
cable law was [not] fairly and correctly covered.” See
24 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
Gantt, 717 F.3d at 706 (quoting Swinton, 270 F.3d at 802)
(alteration in original).
2. Supporting Evidence
Samsung contends that the infringement verdict was
not supported by substantial evidence. Samsung’s con-
tentions, however, are premised on the same issues—
functionality, actual deception, and comparison to prior
art—it raises in the context of the jury instructions. See,
e.g., Appellants’ Br. 27 (“The uncontroverted evidence at
trial showed the claimed features in Apple’s design pa-
tents to be overwhelmingly not ornamental, but structur-
al or functional.”).
Having rejected the jury instruction challenges, we
likewise find Samsung’s parallel substantial evidence
complaints unpersuasive. Apple’s witnesses provided
sufficient testimonies to allow the jury to account for any
functional aspects in the asserted design patents. Addi-
tionally, the witnesses testified on the similar overall
visual impressions of the accused products to the asserted
design patents such that an ordinary observer would
likely be deceived. Apple’s experts also testified about the
differences between the asserted patents and both the
prior art and other competing designs. The jury could
have reasonably relied on the evidence in the record to
reach its infringement verdict.
3. Preclusion of Evidence
Samsung also appeals the district court’s preclusion of
testimony on Samsung’s independent development of its
F700 phone that pre-dated the iPhone to rebut an allega-
tion of copying. The evidence on the F700 was previously
excluded as a prior art reference under a Rule 37 sanction
due to Samsung’s failure to timely disclose the evidence
during discovery, which Samsung does not challenge.
The district court found that Samsung’s witness did
not design any of the accused devices and was unaware
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 25
that any of the accused devices was based on the F700.
The district court thus determined that the proffered
testimony of Samsung’s witness would have limited
probative value on the question of whether Samsung
copied any of Apple’s design patents because she lacked
first-hand knowledge relevant to the underlying issue. As
a result, the district court concluded that the limited
probative value of the testimony was outweighed by the
likelihood that it would be considered by the jury for the
prohibited purpose under the earlier Rule 37 sanction.
We find that the district court acted within its discretion
in precluding Samsung’s proffered testimony to rebut an
allegation of copying.
We conclude that there was no prejudicial legal error
in the infringement jury instructions on the three issues
that Samsung raises: functionality, actual deception, and
comparison to prior art. We further conclude that the
district court did not abuse its discretion in excluding
Samsung’s evidence of independent development and that
there was substantial evidence to support the jury’s
infringement findings. We therefore affirm the district
court’s denial of Samsung’s motion for judgment as a
matter of law on design patent infringement and Sam-
sung’s alternative motion for a new trial.
B. Damages
Finally, with regard to the design patents, Samsung
argues that the district court legally erred in allowing the
jury to award Samsung’s entire profits on its infringing
smartphones as damages. The damages, according to
Samsung, should have been limited to the profit attribut-
able to the infringement because of “basic causation
principles . . . .” Appellants’ Br. 36-37. Samsung con-
tends that “Apple failed to establish that infringement of
its limited design patents . . . caused any Samsung sales
or profits.” Id. at 40. Samsung further contends that
26 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
consumers chose Samsung based on a host of other fac-
tors. Id.
These “causation” arguments, however, advocate the
same “apportionment” requirement that Congress reject-
ed. See Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437,
1441 (Fed. Cir. 1998). “Apportionment . . . required [the
patentee] to show what portion of the infringer’s profit, or
of his own lost profit, was due to the design and what
portion was due to the article itself. . . . The Act of 1887,
specific to design patents, removed the apportionment
requirement . . . .” Id. The provisions in the Act of 1887
on design patent infringement damages were subsequent-
ly codified in Section 289 of Title 35. Id. at 1440-43
(containing a detailed and thorough discussion of the
legislative history that need not be repeated here).
Section 289 now provides:
Whoever during the term of a patent for a design,
without license of the owner, (1) applies the pa-
tented design, or any colorable imitation thereof,
to any article of manufacture for the purpose of
sale, or (2) sells or exposes for sale any article of
manufacture to which such design or colorable im-
itation has been applied shall be liable to the own-
er to the extent of his total profit, but not less than
$250, recoverable in any United States district
court having jurisdiction of the parties.
Nothing in this section shall prevent, lessen, or
impeach any other remedy which an owner of an
infringed patent has under the provisions of this
title, but he shall not twice recover the profit
made from the infringement.
35 U.S.C. § 289 (emphasis added). In reciting that an
infringer “shall be liable to the owner to the extent of [the
infringer’s] total profit,” Section 289 explicitly authorizes
the award of total profit from the article of manufacture
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 27
bearing the patented design. 1 Several other courts also
concluded that Section 289 authorizes such award of total
profit. See Schnadig Corp. v. Gaines Mfg. Co., 620 F.2d
1166, 1171 (6th Cir. 1980); Henry Hanger & Display
Fixture Corp. of Am. v. Sel-O-Rak Corp., 270 F.2d 635,
643-44 (5th Cir. 1959); Bergstrom v. Sears, Roebuck &
Co., 496 F. Supp. 476, 495 (D. Minn. 1980). The clear
statutory language prevents us from adopting a “causa-
tion” rule as Samsung urges.
Samsung continues its quest for apportionment by ar-
guing, alternatively, that the profits awarded should have
been limited to the infringing “article of manufacture,”
not the entire infringing product. Samsung argues for
limiting the profits awarded to “the portion of the product
as sold that incorporates or embodies the subject matter
of the patent.” Appellants’ Br. 38. Samsung contends
that the Second Circuit had “allowed an award of infring-
er’s profits from the patented design of a piano case but
not from the sale of the entire piano . . . .” Id. These
Second Circuit opinions, however, addressed a factual
situation where “[a] purchaser desiring a piano of a par-
ticular manufacturer may have the piano placed in any
one of several cases dealt in by the maker.” Bush & Lane
Piano Co. v. Becker Bros., 222 F. 902, 903 (2d Cir. 1915).
That factual situation occurred in the context of the
commercial practice in 1915 in which ordinary purchasers
regarded a piano and a piano case as distinct articles of
manufacture. The facts at hand are different. The in-
nards of Samsung’s smartphones were not sold separately
1 Amici 27 Law Professors argues that an award of
a defendant’s entire profits for design patent infringement
makes no sense in the modern world. Those are policy
arguments that should be directed to Congress. We are
bound by what the statute says, irrespective of policy
arguments that may be made against it.
28 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
from their shells as distinct articles of manufacture to
ordinary purchasers. We thus do not agree with Samsung
that these Second Circuit cases required the district court
to limit the damages for design patent infringement in
this case.
We agree with the district court that there was no le-
gal error in the jury instruction on the design patent
damages. Samsung does not argue a lack of substantial
evidence to support the damages awards under the dis-
trict court’s jury instruction. We therefore affirm the
damages awarded for design patent infringements.
III. Utility Patents
Finally, Samsung challenges the validity of claim 50
of the ’163 patent and claim 8 of the ’915 patent. Sam-
sung also challenges the damages awarded for utility
patent infringement.
A. Validity
1. Indefiniteness of Claim 50 of the ’163 Patent
Claim 50 of the ’163 patent relates to a user interface
feature in which a user’s double tapping on a portion of an
electronic document causes the portion to be enlarged and
“substantially centered” on the display. ’163 patent, claim
50. Samsung contends that claim 50 is indefinite because
the ’163 patent provides “no objective standard to meas-
ure the scope of the term ‘substantially centered.’” Appel-
lants’ Br. 66.
Samsung’s complaint about a lack of an “objective
standard [of] measure” is seeking a level of precision that
exceeds the definiteness required of valid patents. “The
definiteness requirement . . . mandates clarity, while
recognizing that absolute precision is unattainable.”
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2129 (2014). Given this recognition, “a patent is invalid
for indefiniteness if its claims, read in light of the specifi-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 29
cation delineating the patent, and the prosecution history,
fail to inform, with reasonable certainty, those skilled in
the art about the scope of the invention.” Id. at 2124.
Samsung, however, points to no evidence showing
that skilled artisans would find the element “substantial-
ly centered” as lacking reasonable certainty in its scope.
In contrast, Apple’s expert explained that the “padding”
allowed in the ’163 patent provides skilled artisans with
enough information to understand what “substantially
centered” means in the patent. J.A. 41907-09. Apple’s
expert cites a discussion in the specification of an embod-
iment referring to the figure reproduced below where the
enlarged portion of the document is essentially centered
except for “a predefined amount of padding along the
sides of the display.” See ’163 patent col. 17 ll. 26-30.
Apple thus presented evidence to show that skilled ar-
tisans would interpret “substantially centered” in the ’163
patent to mean essentially centered except for a marginal
spacing to accommodate ancillary graphical user interface
elements. We are not persuaded by Samsung’s attempt to
discredit this expert testimony. We therefore agree with
the district court that Samsung failed to carry its burden
30 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
in challenging the validity of claim 50 of the ’163 patent
for indefiniteness.
2. Anticipation of Claim 8 of the ’915 Patent
Claim 8 of the ’915 patent describes a computer-based
method for distinguishing between scrolling and gesture
(such as zooming) operations on a touch screen. ’915
patent, claim 8. The dispute centers on whether a prior
art reference, the Nomura patent application, taught the
“event object” element in claim 8. The claim recites
“event object” in the context such as: “creating an event
object in response to the user input; determining whether
the event object invokes a scroll or gesture operation . . . .”
Id. Samsung contends that the “movement history” in
Nomura inherently disclosed the “event object” in claim 8
based on the opinion of its expert. Appellants’ Br. 64-65.
Apple, however, rebuts with its own expert testimony.
Apple’s expert explained that “event objects” in claim 8
refers to a particular “programming construct[]” and that
there were many potential programming alternatives that
Nomura could have used to implement the “movement
history” it disclosed. J.A. 43636-37. According to the
explanation by Apple’s expert, Nomura did not inherently
disclose the claimed “event object.” We find that a rea-
sonable jury could have credited the testimony of Apple’s
expert over Samsung’s expert. Thus, we agree with the
district court that there was substantial evidence to
support the jury’s finding that claim 8 of the ’915 patent
was not anticipated.
B. Damages
Apple advanced at trial both lost profits and reasona-
ble royalty damages theories. The jury determined that
for certain Samsung phones found to infringe the ’915
patent, no reasonable non-infringing alternative was
available, and thus lost profits was an appropriate meas-
ure of damages. For the other Samsung phones found to
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 31
infringe Apple’s utility patents-in-suit, the jury deter-
mined that an award of lost profits was not supported,
and thus awarded Apple a reasonable royalty for Sam-
sung’s infringement.
1. Lost Profits for Infringement of the ’915 Patent
“To recover lost profits, the patent owner must show
causation in fact, establishing that but for the infringe-
ment, he would have made additional profits.” Grain
Processing Corp. v. Am. Maize-Prods., 185 F.3d 1341,
1349 (Fed. Cir. 1999). The patentee must “take[] into
account any alternatives available to the infringer.” Id. at
1351. “[M]arket sales of an acceptable noninfringing
substitute often suffice alone to defeat a case for lost
profits.” Id. at 1352.
Samsung argues that lost profits should not have
been awarded because the evidence showed the existence
of non-infringing substitutes. Specifically, Samsung
contends that two Samsung phones, found to have not
infringed the ’915 patent, should have been considered by
the jury as non-infringing substitutes. Samsung further
asserts that Apple failed to prove consumer preference of
the ’915 patent’s technology over a purportedly compara-
ble feature available in the two non-infringing Samsung
phones.
However, “the ‘[m]ere existence of a competing device
does not make that device an acceptable substitute.’”
Presidio Components, Inc. v. Am. Tech. Ceramics Corp.,
702 F.3d 1351, 1361 (Fed. Cir. 2012) (quoting TWM Mfg.
Co. v. Dura Corp., 789 F.2d 895, 901 (Fed. Cir. 1986))
(alteration in original). The mere existence of non-
infringing phones is all Samsung is relying on to attack
the jury’s verdict. For example, Samsung points to no
evidence to support its assertion that the two non-
infringing phones included a feature comparable to the
one claimed in the ’915 patent.
32 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
In contrast, there was substantial evidence to support
the jury’s refusal to consider the two phones asserted by
Samsung as non-infringing substitutes. Of these two
phones, one had significantly different features, such as a
slide-out physical keyboard in combination with a small,
low-resolution screen. See Kaufman Co. v. Lantech, Inc.,
926 F.2d 1136, 1142 (Fed. Cir. 1991) (“To be deemed
acceptable, the alleged acceptable noninfringing substi-
tute must not have a disparately higher price than or
possess characteristics significantly different from the
patented product.”). And the other phone was never sold
by a U.S. carrier. See Grain Processing, 185 F.3d at 1349
(“[T]o be an acceptable non-infringing substitute, the
product or process must have been available or on the
market at the time of infringement.”). The jury could
have reasonably found that these two Samsung phones
were not acceptable alternatives. Samsung’s unsupported
assertion to the contrary fails to show a lack of substan-
tial evidence supporting the awards of lost profits.
2. Reasonable Royalty
Samsung argues that Apple’s expert in the damages
retrial, Ms. Davis, offered only a cursory explanation of
how she arrived at the royalty rates she calculated based
on the Georgia-Pacific factors. Samsung complains specif-
ically about Ms. Davis’s testimony that the evidence of
demand from her lost profits analysis was “also relevant
to the determination of the amount of reasonable royal-
ties.” Appellants’ Br. 72.
Samsung does not dispute that Ms. Davis sufficiently
explained her analysis of demand in the lost profit con-
text. Samsung is only challenging that she did not repeat
the same information with all of the details in testifying
about her reasonable royalty calculation. However, Ms.
Davis expressly testified that the demand factor for lost
profits was also relevant to the determination of a rea-
sonable royalty. J.A. 50651-52 (“Q. Is this issue of de-
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 33
mand relevant to any category of damages other than lost
profits? A. Yes. It’s relevant to the determination of the
amount of reasonable royalties.”). A reasonable jury could
refer to Ms. Davis’s testimony from an earlier context and
appropriately weigh the evidence in considering Ms.
Davis’s calculation on the royalty rates. Moreover, Ms.
Davis’s testimony included additional substance on the
Georgia-Pacific factors. For example, Ms. Davis expressly
considered the cost to Samsung of being out of the market
long enough to design around the patents, the profits
attributable to Samsung’s use of the patented technology,
and the commercial relationship between the parties.
Taken as a whole, Ms. Davis’s testimony provided suffi-
cient evidence to support the jury’s reasonable royalty
awards in the damages retrial.
Finally, Samsung complained that Apple’s expert in
the first damages trial, Mr. Musika, failed to explain his
Georgia-Pacific analysis and identified no evidence sup-
porting his royalty rates. Upon Apple’s response, Sam-
sung acknowledges that Mr. Musika did in fact identify
and discuss specific Georgia-Pacific factors and that Mr.
Musika referred to an exhibit during his testimony.
Samsung now contends that the analysis was not mean-
ingful and the cited exhibit did not discuss the Georgia-
Pacific’s factors at all. Samsung’s fault-finding is merit-
less.
We therefore affirm the district court’s denial of Sam-
sung’s motion for judgment as a matter of law on the
invalidity of claim 50 of the ’163 patent and claim 8 of the
’915 patent, as well as the damages awarded for utility
patent infringement. We also affirm the district court’s
denial of Samsung’s motions for a new trial on these same
issues. We remand for immediate entry of final judgment
on all damages awards not predicated on Apple’s trade
dress claims and for any further proceedings necessitated
by our decision to vacate the jury’s verdicts on the unreg-
istered and registered trade dress claims.
34 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART and REMANDED
COSTS
Each party shall bear its own costs.