BULKY DOCUMENTS
`
`Filed:
`
`7[O8[2011
`
`Title: OPPOSER’S MOTION TO STAY.
`
`Part
`
`lof 1
`
` 91198009
`
`

`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application Serial Nos.:
`
`85040770
`
`&
`
`85025647
`
`Filed:
`Date Published:
`
`May 17, 2010
`November 3, 2010
`
`April 28, 2010
`November 16, 2010
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`Opposer,
`
`Opposition No. 91198009 (consolidated with
`Opposition Nos. 91198015, 91198990,
`91198992, 91199013, 91199024, 91199025,
`91199026 and 91199027)
`
`APPLE INC_. ,
`
`Applicant.
`
`
`OPPOSER'S MOTION TO STAY
`
`99999.76l5l/4l73340.7
`
`I
`
`1
`
`,,,L 4‘
`
`‘T
`
`Hllllllllllllllf"Illllllllllllllllllllllllllllll
`07-08-201 1
`
`11'.‘
`2
`
`.
`='-ate-11.: . -
`1
`MLI9. TH Nail Rm mg
`
`#75-
`
`

`
`Opposer SAMSUNG ELECTRONICS CO., LTD. ("Opposer" or "Samsung"), by its
`
`counsel, respectfully moves the Board to stay the instant opposition proceedings pending the
`
`resolution of issues raised by Applicant Apple Inc. ("Applicant" or ''Apple'') that are also
`
`currently before the United States District Court for the Northern District of California (the
`
`“District Court”).
`
`In support of its Motion, Opposer states as follows. As codified at 37 C.F.R. § 2.117(a),
`
`it is the Board’s usual practice to stay its proceedings pending the outcome of a civil action that
`
`may have a bearing on the issues before the Board:
`
`Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a
`
`party or parties to_ a pending case are engaged in a civil action or another Board
`
`proceeding which may have a bearing on the case, proceedings before the Board may be
`
`suspended until termination of the civil action or other Board proceeding.
`
`E Trademark Trial and Appeal Board Manual of Procedure § 510.02(a) (“[o]rdinarily, the
`
`Board will suspend proceedings in the case before it if the final determination of the other
`
`proceeding will have a bearing on the issues before the Board.”).
`_S_@ a_l§c_> The Other Telephone
`Co. v. Connecticut Nat’l Telephone Co., 181 U.S.P.Q. 779, 781-82 (Comm’r of Patents 1974);
`
`Townley Clothes, Inc. v. Goldring, Inc., 100 U.S.P.Q. 57, 58 (Comm’r of Patents 1953) (“it is
`
`deemed the sounder practice to suspend the [Trademark] Office proceedings pending termination
`
`of the Court action.”).
`
`In these proceedings before the Board, Samsung opposes the registration of the two
`
`putative design marks that are depicted on the above caption page and that bear S/N 85040770
`
`(the ‘"770 Application") and S/N 85025647 (the "'647 Application"). Because, as shown below,
`
`the issues pending before the District Court may have a bearing on issues raised in the
`
`9999976151/41 73340.7
`
`2
`
`

`
`Opposition, the instant opposition proceedings should be stayed pending their resolution by the
`
`federal courts.
`
`Specifically, on April 15, 2011, Applicant filed in the District Court an action entitled
`
`Apple, Inc. v. Samsung Electronics Co., Ltd., et al, Case No.
`
`ll-cv-01846 LHK (the "Civil
`
`Action").1 Subsequently, on June 16, 2011, Apple filed an Amended Complaint in the Civil
`
`Action.2 As set forth in the Amended Complaint, Apple asserts in the Civil Action claims for
`
`federal false designation of origin and unfair competition, federal
`
`trademark infringement,
`
`federal trade dress dilution, state unfair business practices, common law trademark infringement,
`
`unjust infringement and patent infringement.3 Apple thus alleges it "holds trade dress protection
`
`in the design, appearance, and distinctive user interfaces of the iPhone, the iPod touch, and the
`
`iPad products released to date."4 Apple further asserts that it owns three registrations for the
`
`design and configuration of the iPhone. These include:
`
`(1)
`
`U.S. Registration No. 3,470,983 (the "'983 Registration"), which Apple describes
`
`as "for the overall design of the product, including the rectangular shape, the rounded corners,
`
`the silver edges, the black face, and the display of sixteen colorful icons;"5
`
`(2)
`
`U.S. Registration No. 3,457,218 (the "'218 Registration"), which Apple describes
`
`as "for the configuration of a rectangular handheld mobile digital electronic device with rounded
`
`comers;"6 and
`
`1 A copy of the Complaint (without exhibits) in the action is attached as Exhibit 1 to the
`Declaration of Michael T. Zeller ("Zeller Decl."), submitted herewith.
`
`2 Amended Complaint (without exhibits), dated June 16, 2011, Zeller Decl. Exh. 2.
`
`3 Amended Complaint at 111] 110-274, Zeller Decl. Exh. 2.
`4 Amended Complaint at 11 30, Zeller Decl. Exh..2.
`
`5 Amended Complaint at 1] 49, Zeller Decl. Exh. 2 & Exhibit 16 to the Amended
`Complaint, Zeller Decl. Exh. 7.
`
`99999.76l5l/4l73340.7
`
`3
`
`

`
`(3)
`
`U.S. Registration No. 3,475,327 (the ‘"327 Registration"), which Apple describes
`
`as "for a rectangular handheld mobile digital electronic device with a gray rectangular portion in
`
`the center, a black band above and below the gray rectangle and on the curved comers, and a
`
`silver outer border and side."7
`
`In its First and Fourth Claims for Relief in the Amended Complaint, Apple asserts that
`
`Samsung's Galaxy line of products have misappropriated the Apple product ‘configuration trade
`
`dress as embodied in the Apple iPhone,
`
`iPod touch and iPad products by "mimicking a
`
`combination of several elements of [its] trade dress."8 Apple alleges that Samsung has copied,
`
`among other purported elements, the
`
`rectangular product with four evenly rounded corners, a flat clear face covering the
`
`front of the product, a large display screen under the clear surface, substantial black
`
`borders above and below the display screen and narrower black borders on either side of
`
`the screen under the clear surface, the appearance of a metallic bezel around the flat clear
`
`surface, and on the display when the device is turned on, a row of small dots, a matrix of
`
`colorful square icons with evenly rounded corners, and a bottom dock of colorful square
`
`icons with evenly rounded corners set off from the other icons.9
`
`6 Amended Complaint at 1] 50, Zeller Decl. Exh. 2 & Exhibit 17 to the Amended
`Complaint, Zeller Decl. Exh. 8.
`
`7 Amended Complaint at 1] 51, Zeller Decl. Exh. 2 & Exhibit 18 to the Amended
`- Complaint, Zeller Decl. Exh. 9.
`
`8 Amended Complaint at 11 114 & 153, Zeller Decl. Exh. 2.
`
`9 S_ee Amended Complaint at 111] 81 & 96-102, Zeller Decl. Exh. 2 (emphasis added).
`its Original Complaint, Apple alleged Samsung mimics the "rectangular shape with rounded
`corners, silver edging, a flat surface face with substantial top and bottom black borders, gently
`curving edges on the back, and a display of colorful square icons with rounded comers."
`Complaint at 1111 56 & 62, Zeller Decl. Exh. 1 (emphasis added).
`
`In
`
`99999.76] 51/41733407
`
`4
`
`

`
`In its Second Claim for Relief, Apple alleges, among other things, that Samsung's Galaxy
`
`line of products infringe the '983 Registration, the '218 Registration and the '327 Registration.”
`
`These registrations are the same three "prior registration(s)" that are listed in Apple's '770
`
`Application” and two of the three "prior registration(s)" in Apple's '647 Application” that are at
`
`issue in these opposition proceedings.
`
`The issues in the Civil Action therefore may — and almost certainly will — have a bearing
`
`on issues raised by the Opposition. A visual comparison of the trade dress claimed in the Civil
`
`Action with that of the claimed marks in the Applications at issue in these proceedings reveals at
`
`a minimum that the marks asserted overlap in material respects. The image to the below left is
`
`the iPhone as depicted in and claimed as the iPhone trade dress in Applicants‘ Amended
`
`Complaint in the Civil Action.” The image to the below right is the mark that Applicant seeks
`
`to register and that Samsung opposes in this proceeding.
`
`10 Amended Complaint at 1] 125-128, Zeller Decl. Exh. 2.
`
`'1 Sic Trademark/Service Mark Application for Serial No. 85040770, dated May 17,
`2010, Zeller Decl. Exh. 3.
`
`'2 See Trademark/Service Mark Application for Serial No. 85025647, dated April 28,
`2010, Zeller Decl. Exh. 4.
`
`13 Amended Complaint, 1] 35 at page 10, Zeller Decl. Exh. 2.
`
`99999.76l5l/41733407
`
`5
`
`

`
`iPhone Trade Dress Alle ed Mark Asserted In ' 770 Application
`
`In Civil Action
`
`Likewise, the image to the below left is the iPad as depicted in and claimed as the iPad
`
`trade dress in Applicants‘ Amended Complaint in the Civil Action.” The image to the below
`
`right is the mark that Applicant seeks to register and that Samsung opposes in this proceeding
`
`before the Board.
`
`14 Amended Complaint, 1] 44 at pages 14-15, Zeller Decl. Exh. 2.
`
`99999.76l5l/41733407
`
`6
`
`

`
`iPad Trade Dress Alleged
`In Civil Action
`
`Mark Asserted In '647 Application
`
`In addition to the obvious overlap shown by these images, the ‘770 and '647 Applications
`
`reveal that they overlap with, and duplicate, issues pending before the District Court in other
`
`ways. For instance, Apple's original ‘770 Application stated that "[t]he mark consists of a
`
`rectangle below an oval and above a circle, all inside of a rectangle with rounded corners."15 In
`
`the Civil Action, Apple similarly seeks trade dress protection for the "rectangular product with
`
`four evenly rounded corners.
`
`An Examiner's Amendment to the Applications added the
`
`n16
`
`15 Trademark/Service Mark Application for Serial No. 85040770, dated May 17, 2010,
`Zeller Decl., Exh. 3 (emphasis added).
`
`'6 ‘ §_@ Amended Complaint at 111] 81 & 96-98, Zeller Decl. Exh. 2 (emphasis added). In
`its Original Complaint, Apple alleged Samsung mimics, among other things, the "rectangular
`shape with rounded corners." E Complaint at W 56 & 62, Zeller Decl. Exh. 1 (emphasis
`added).
`
`99999.76] 51/41733407
`
`7
`
`

`
`following description of the mark for each application at
`
`issue:
`
`"The mark consists of a
`
`simplified drawing of a mobile digital electronic communication device."]7 Apple's trade dress
`
`registrations sued upon in the Civil Action -- and which are explicitly referenced in the
`
`Applications at issue in these proceedings as "prior registrations" -- have similar descriptions as
`
`the marks at
`
`issue in these proceedings.
`
`For instance:
`
`(1) the mark at
`
`issue in the '982
`
`Registration "consists of the configuration of a rectangular handheld mobile digital electronic
`
`device with rounded silver edges, a black face, and an array of 16 square icons with rounded
`
`"l8
`
`edges;
`
`(2) the mark at issue in the '218 Registration "consists of the configuration of a
`
`rectangular handheld mobile digital electronic device with rounded corners;"'9 and (3) the mark
`
`at issue in the '327 Registration "consists of the configuration of a handheld mobile digital
`
`electronic device."2° Apple's trade dress applications asserted in the Civil Action also have
`
`similar descriptions as the marks at issue in these proceedings. For instance, the mark at issue in
`
`U.S. Application Serial No. 85/299,118 "is for the configuration of a rectangular handheld
`
`mobile digital electronic device with evenly rounded corners —— the iPhone 4."21 As a result,
`
`17 Examiner's Amendment/Priority Action for Serial No. 85040770, dated August 4,
`2010 at 4, Zeller Decl. Exh. 5 (emphasis added); Examiner's Amendment/Priority Action for
`Serial No. 85025647, dated August 4, 2010 at 4, Zeller Decl. Exh. 6 (emphasis added). Apple's
`original Application for Serial Number 85025647 states that "[t]he mark consists of a stylized
`depiction of Applicant's device." _S_e_e Trademark/Service Mark Application for Serial No.
`85025647, dated April 28, 2010, Zeller Decl. Exh. 4. Though Apple does not say which device,
`a visual comparison (see above) makes it apparent it is referring to Apple's iPad — which is at
`issue in the Civil Action.
`
`'8 ’ U.S. Registration No. 3,470,983, Zeller Decl. Exh. 7 (emphasis added).
`
`19 U.S. Registration No. 3,457,218, Zeller Decl. Exh. 8 (emphasis added).
`
`20 U.S. Registration No. 3,475,327, Zeller Decl. Exh. 9 (emphasis added).
`
`21 Amended Complaint at 1] 56, Zeller Decl. Exh. 2 (emphasis added). _S_e_e a_l_sg
`Amended Complaint at 1] 53, Zeller Decl. Exh. 2 ("U.S. Application Serial No. 77/921,838 is for
`the configuration of a digital electronic device with a screen on the front of the device, and a
`circle at the bottom center of the front — the iPad.") and Amended Complaint at 1] 54, Zeller Decl.
`Exh. 2 ("U.S. Application Serial No. 77/921,829 is for a configuration of a digital electronic
`
`99999.76l5l/41733407
`
`8
`
`

`
`Apple has put at issue in the Civil Action, in largely identical language, matters asserted in the
`
`'770 Application and the '647 Application at issue in these proceedings.
`
`The grounds raised in the Opposition here and the defenses raised in the Civil Action also
`
`will overlap.
`
`In the Civil Action and in these proceedings, Apple asserts that its claimed trade
`
`dress as embodied in the Apple iPhone and iPad products "enjoys secondary meaning among
`
`consumers, identifying Apple as the source of its products"22 and is "not merely functional."23
`
`Samsung disputes those assertions in these proceedings“ as well as in the Civil Action.”
`
`Specifically, Samsung alleges that Apple's marks are functional and are not distinctive, including
`
`because they are substantially common designs in use by many other manufacturers and sellers
`
`of mobile phones and mobile digital electronic communication devices.26 ‘In its Answer and
`
`Counterclaims filed in the Civil Action on June 30, 2011, Samsung also raises numerous
`
`affirmative defenses which will overlap with the issues in these proceedings, including ~ trade
`
`dress invalidity, functionality, lack of secondary meaning and/or distinctiveness and third-party
`
`
`
`device, with a gray screen, a black border around the screen, a black concave circle at the bottom
`of the border, and silver sides ~ also the iPad.")
`
`22 See e.g., Amended Complaint at 11 112, Zeller Decl., Exh. 2.
`23
`
`See e.g., Amended Complaint at 11 111, Zeller Decl., Exh. 2; Applicant's Answer Re
`Opposition No. 91199013, at 11 7, Zeller Decl., Exh. 10; Applicant's Answer Re Opposition No.
`91199027, at 1] 7, Zeller Decl., Exh. 11.
`
`24 Samsung's Notice of Opposition Re Application Serial No. 85040770 at 1111 4-9, Zeller
`Decl., Exh. 12; Samsung's Notice of Opposition Re Application Serial No. 85025647 at 1111 4-9,
`Zeller Decl., Exh. 13.
`
`25 Samsung Entities’ Answer, Affirmative Defenses, and Counterclaims to Apple Inc.'s
`Amended Complaint, dated June 30, 2011 at 1111 30-51, 57-68, 110-137, 150-160, 279-281, 292 &
`Counterclaims at 1111 123-156, Zeller Decl., Exh. 14.
`
`26 Samsung's Notice of Opposition Re Application Serial No. 85040770 at 111] 4-9, Zeller
`Decl., Exh. 12; Samsung's Notice of Opposition Re Application Serial No. 85025647 at 1111 4-9,
`Zeller Decl., Exh. 13.
`
`9999976151/4l73340.7
`
`'
`
`9
`
`

`
`use.27 Furthermore, Samsung alleges a number of overlapping affirmative counterclaims. These
`
`include claims (1) for declaratory relief for non-infringement of Apple's alleged trade dress in the
`
`iPhone and iPad products and Apple's related registrations for those products — the '983, '21 8 and
`
`'327 Registrations;28 (2) for declaratory relief for non-dilution of Apple's trade dress in the
`
`iPhone and iPad products,” (3) for declaratory relief for invalidity of the '983,
`
`'218 and '327
`
`Registrations;3° and (4) for cancelation of the '983, '218 and "327 Registrations.“ As noted, the
`
`'983, '218 and '327 Registrations are the same three "prior registration(s)" listed in Apple's '770
`
`Application” and two of the three "prior registration(s)" in Apple's '647 Application” at issue in
`
`these proceedings.
`
`Because the issues raised in the Civil Action may have a bearing on issues in the instant
`
`opposition proceedings, the most logical and efficient course of action here is to suspend these
`
`proceedings until the District Court resolves the issues. Samsung respectfully requests that its
`
`motion be granted and that this opposition proceedings be suspended pending the completion of
`
`the Civil Action.
`
`27 Samsung Entities’ Answer, Affinnative Defenses, and Counterclaims to Apple Inc.'s
`Amended Complaint, dated June 30, 2011 at 111] 279-281, 292, Zeller Decl., Exh. 14.
`
`28 Samsung Entities’ Answer, Affinnative Defenses, and Counterclaims to Apple Inc.'s
`Amended Complaint, dated June 30, 2011, Counterclaims at M 129-135, Zeller Decl., Exh. 14.
`
`29 Samsung Entities’ Answer, Affirrnative Defenses, and Counterclaims to Apple Inc.'s
`Amended Complaint, dated June 30, 2011, Counterclaims at 111] 136-142, Zeller Decl., Exh. 14.
`
`30 Samsung Entities’ Answer, Affinnative Defenses, and Counterclaims to Apple Inc.'s
`Amended Complaint, dated June 30, 2011, Counterclaims at 111] 143-146, Zeller Decl., Exh. 14.
`
`3 ' Samsung Entities’ Answer, Affirrnative Defenses, and Counterclaims to Apple Inc.'s
`Amended Complaint, dated June 30, 2011, Counterclaims at 111] 147-150, ZellervDecl., Exh. 14.
`32 ’§e_e Trademark/Service Mark Application for Serial No. 85040770, dated May 17,
`2010, Zeller Decl. Exh. 3.
`
`_S_e§ Trademark/Service Mark Application for Serial No. 85025647, dated April 28,
`33
`2010, Zeller Decl. Exh. 4.
`'
`
`9999976151/4173340.7
`
`10
`
`

`
`Dated: July 6, 2011
`
`Respectfully submitted,
`
`By:
`
`/['1
`
`A L
`
`DIANE J. MASON
`
`9999976151/4173340.7
`
`1 1
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that pursuant to CRF §2.101(b), on July 8, 2011, a true and
`
`correct copy of the foregoing OPPOSER’S MOTION TO STAY was served via email on
`
`the following
`
`GLENN A. GUNDERSEN
`
`Dechert LLP
`
`Cira Centre, 2929 Arch Street
`Philadelphia, PA 19104-2808
`Email: glenn.gundersen@dechert.com
`cc:
`Christine.Hemandez@dechert.com
`
`KELLY DIANE WALTON
`
`Dell Law Department
`One Dell Way RR1-33
`Round Rock, TX 78682
`Email: kel1y_walton@de1l.com
`
`STEVE MELEEN
`
`Pirkey Barber LLP
`600Congress Avenue, Suite 2120
`Austin, TX 78701
`Email: smeleen@pirkeybarber.com
`
`ROBERT S. WEISBEIN
`
`Foley & Lardner LLP
`90 Park Avenue
`
`New York, NY 10016
`Email: rweisbein@foley.com
`michael.je.smith@nokia.com
`
`cc:
`
`SUSAN HOLLANDER
`
`K&L Gates LLP
`
`630 Hansen Way
`Palo Alto, CA 94604
`Email: susan.ho11ander@klgates.com
`cc:
`felicia.el1is@klgates.com
`
`

`
`ROBERT W. SACOFF
`
`Pattishall, McAuli-ffe, Newbury, Hilliard & Geraldson LLP
`311 S. Wacker Drive, Suite 5000
`Chicago, IL 60606
`Email: rsacoff@pattisha11.corn
`cc:
`dmb@pattisha11.com
`
`DATED:
`
`July 8, 2011
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application Serial Nos.:
`
`85040770
`
`&
`
`85025647
`
`Filed:
`Date Published:
`
`-
`
`May 17, 2010
`November 3, 2010
`
`'
`
`April 28, 2010
`November 16, 2010
`
`SAMSUNG ELECTRONICS C0,, LTD.,
`
`Opposer,
`
`Opposition No. 91198009 (consolidated with
`Opposition Nos. 91198015, 91198990,
`91198992, 91199013, 91199024, 91199025,
`91199026 and 91199027)
`
`APPLE INC. ,
`
`Applicant.
`
`MOTION TO STAY
`
`DECLARATION OF MICHAEL T.
`ZELLER IN SUPPORT OF OPPOSER'S
`
`02] 98.51855/4221 826.2
`
`I
`
`

`
`1, Michael T. Zeller, do hereby declare and state as follows:
`
`1.
`
`I am a member of the State Bars of California, New York and Illinois and am
`
`counsel for Sarnsung Electronics Co., Ltd. ("Samsung") in these proceedings and in Apple Inc. v.
`Samsung Electronics Co., Ltd., et al., Case No. 11-1846, filed on April 15, 2011 in the United
`
`States District Court for the Northern District of California (the "Civil Action").
`
`I have personal
`
`knowledge of the facts stated herein and, if sworn as a witness, could and would testify
`
`competently thereto.
`
`2.
`
`Attached hereto as Exhibit
`
`1
`
`is a true and correct copy of the body of the
`
`Complaint in the Civil Action. Exhibit
`
`1 hereto does not attach the exhibits filed with the ‘
`
`Complaint in the Civil Action because of their volume and because several exhibits are copies of
`
`utility patents not currently at issue in the instant proceedings, but relevant exhibits to the
`
`Complaint are included with this Declaration as specified below.
`
`3.
`
`Attached hereto as Exhibit 2 is a true and correct copy of the body of the
`
`Amended Complaint in the Civil Action. Exhibit 2 hereto does not attach the exhibits filed with
`
`the Amended Complaint in the Civil Action because of their volume and because several exhibits
`
`are copies of utility patents not currently at issue in the instant proceedings, but relevant exhibits
`
`to the Amended Complaint are included with this Declaration as specified below.
`
`4.
`
`Attached hereto as Exhibit 3 is a true and correct copy of Apple Inc.'s
`
`Trademark/Service Mark Application for Serial No. 85040770, dated May 17, 2010.
`
`5.
`
`Attached hereto as Exhibit 4 is a true and correct copy of Apple Inc.'s
`
`Trademark/Service Mark Application for Serial No. 85025647, dated April 28, 2010.
`
`6.
`
`Attached hereto as Exhibit 5 is a true and correct copy of the Examiner's
`
`Amendment/Priority Action for Serial No. 85040770, dated August 4, 2010.
`
`

`
`7.
`
`Attached hereto as Exhibit 6 is a true and correct copy of the Examiner's
`
`Amendment/Priority Action for Serial No. 85025647, dated August 4, 2010.
`
`8.
`
`Attached hereto as Exhibit 7 is a true and correct copy of U.S. Registration No.
`
`3,470,983, which Apple has attached as Exhibit 16 to the Amended Complaint.
`
`9.
`
`Attached hereto as Exhibit 8 is a true and correct copy of U.S. Registration No.
`
`3,457,218, which Apple has attached as Exhibit 17 to the Amended Complaint.
`
`5
`
`10.
`
`Attached hereto as Exhibit 9 is a true and correct copy of U.S. Registration No.
`
`3,475,327, which Apple has attached as Exhibit 18 to the Amended Complaint.
`
`11.
`
`Attached hereto as Exhibit 10 is a true and correct copy of Applicant Apple Inc.'s
`
`Answer Re Opposition No. 91199013, dated April 25, 2011.
`
`12.
`
`Attached hereto as Exhibit 11 is a true and correct copy of Applicant Apple Inc.'s
`
`Answer Re Opposition No. 91199027, dated April 25, 2011.
`
`13.
`
`Attached hereto as Exhibit 12 is a true and correct copy of Samsung's Notice of
`
`Opposition Re Application Serial No. 85040770.
`
`14.
`
`Attached hereto as Exhibit 13 is a true and correct copy of Samsung's Notice of
`
`Opposition Re Application Serial No. 85025647.
`
`15.
`
`Attached hereto as Exhibit 14 is a true and correct copy of the body of the
`
`Samsung Entities’ Answer, Affirmative Defenses, and Counterclaims to Apple Inc.'s Amended
`
`Complaint, dated June 30, 2011.
`
`The exhibits to Samsung Entities’ Answer, Afiirmative
`
`Defenses, and Counterclaims consist of copies of utility patents that the Samsung Entities are
`
`suing upon and are not being included because of their volume and because they are not
`
`currently material to these proceedings.
`
`02198.51855/42218262
`
`3
`
`

`
`I declare under penalty of perjury under the laws of the United States of America that the
`
`foregoing is true and correct.
`
`Executed this 5th day of July, 2011, at Los Angeles, California.
`
`" flu»
`
`if
`.
`
`M hael T. Zeller
`
`

`
`EXHIBIT 1
`
`

`
`ORIINAL
`
`W
`
`
`
`;
`
`HAROLD J. MCELHINNY (CA SBN 66781)
`HMcElhinny@mofo.com
`MICHAEL A. JACOBS (CA SBN 111664)
`MJacobs@mofo.com
`JENNIFER LEE TAYLOR (CA SBN 161368)
`JTaylor@mofo.com
`JASON R. BARTLETT (CA SBN 214530)
`JasonBartlett@mofo.com
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105-2482
`Telephone: 415.268.7000
`Facsimile: 415.268.7522
`
`Attorneys for Plaintiff
`APPLE INC.
`
`l\)
`
`\OOO\lO\U1-ht»)
`
`409’
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`APPLE INC., a California corporation,
`
`Plaintiff,
`
`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.
`
`
`
`8
`
`rfiga
`1
`JURY TRIAL DEMAND
`COMPLAINT FOR PATENT
`INFRINGEMENT, FEDERAL FALSE
`DESIGNATION OF ORIGIN AND
`UNFAIR COMPETITION, FEDERAL
`TRADEMARK INFRINGEMENT,
`STATE UNFAIR COMPETITION,
`COMMON LAW TRADEMARK
`INFRINGEMENT, AND UNJUST v
`ENRICHMENT
`
`APPLE INC.'S COMPLAINT
`sf-2981926
`
`

`
`Q
`
`as
`
`._n
`
`’6\OOO\lO\UI-#b-Dis)
`
`|—|
`
`p—A
`
`0-0 I\)
`
`>--- U)
`
`u--- -P
`
`—- LII
`
`n—- O\
`
`n—- \l
`
`>— 00
`
`9-4 V0
`
`I06
`
`B) r—-
`
`IQIO
`
`N’.Lo)
`
`IO43
`
`|\)U]
`
`I\)O\
`
`Ix) \l
`
`28
`
`Plaintiff Apple Inc. (“Apple”) complains and alleges as follows against Defendants
`
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung
`
`Telecommunications America, LLC (collectively “Samsung”).
`
`THE NATURE OF THE ACTION
`
`1.
`
`Apple revolutionized the telecommunications industry in 2007 when it introduced
`
`the wildly popular iPhone, a product that dramatically changed the way people view mobile
`
`phones. Reviewers, analysts and consumers immediately recognized the iPhone as a “game
`
`changer.” Before the iPhone, cell phones were utilitarian devices with key pads for dialing and
`
`small, passive display screens that did not allow for touch control. The iPhone was radically
`
`different. In one small and lightweight handheld device, it offered sophisticated mobile phone
`
`fimctions, a multi-touch screen that allows users to control the phone with their fingers, music
`
`storage and playback, a mobile computing platform for handheld applications, and full access to
`
`the Internet. These features were combined in an elegantly designed product with a distinctive
`user interface, icons, and eye-catching displays that gave the iPhone an unmistakable look.
`
`2.
`
`Those design features were carried over to the iPod touch, another product that
`
`Apple introduced in 2007. The iPod touch has a product configuration and physical appearance
`
`that is virtually identical to the iPhone. Moreover, the iPod touch utilizes the same user interface
`
`icons and screen layout as the iPhone, displaying the unmistakable iPhone appearance.
`
`3.
`
`Apple introduced another revolutionary product, the iPad, in 2010. The iPad is an
`
`elegantly designed computer tablet with a color touch screen, a user interface reminiscent of the
`
`iPhone’s user interface, and robust fimctionality that spans both mobile computing and media
`
`storage and playback. Because of its innovative technology and distinctive design, the iPad
`
`achieved instant success.
`
`4.
`
`Apple’s creative achievements have resulted in broad intellectual property
`
`protection for Apple’s innovations, including utility and design patents, trademarks, and trade
`
`dress protection. Nevertheless, Apple’s innovations have been the subject of widespread
`
`emulation by its competitors, who have attempted to capitalize on Apple’s success by imitating
`
`Apple’s innovative technology, distinctive user interfaces, and elegant and distinctive product
`APPLE lNc.’s COMPLAINT
`sf-2981926
`
`

`
`W
`
`W
`
`._n
`
`8\O0O\lO\UI-PU’|\3
`
`p_a
`
`p..-
`
`n— l\)
`
`9-—n DJ
`
`>—- -§
`
`D—4 U!
`
`n—- O\
`
`be \I
`
`r—I %
`
`3-- VO
`
`K)G
`
`K) —A
`
`IQIN)
`
`I\)U)
`
`I\)A
`
`N)VJI
`
`I0Ox
`
`I0\I
`
`I000
`
`design. One of the principal imitators is Samsung, which recently introduced the Galaxy line of
`
`mobile phones and Galaxy Tab computer tablet, all of which use the Google Android operating
`
`system, to compete with the iPhone and iPad. Instead of pursuing independent product
`
`development, Samsung has chosen to slavishly copy Apple’s innovative technology, distinctive
`
`user interfaces, and elegant and distinctive product and packaging design, in violation of Apple’s
`
`valuable intellectual property rights. As alleged below in detail, Samsung has made its Galaxy
`
`phones and computer tablet work and look like Apple’s products through widespread patent and
`
`trade dress infringement. Samsung has even misappropriated Apple’s distinctive product
`
`packaging.
`
`5.
`
`By this action, Apple seeks to put a stop to Sarnsung’s illegal conduct and obtain
`
`compensation for the violations that have occurred thus far.
`
`THE PARTIES
`
`6.
`
`Apple is a California corporation having its principal place of business at l Infinite
`
`Loop, Cupertino, California 95014.
`
`7.
`
`Samsung Electronics Co., Ltd. (referred to individually herein as “SEC”) is a
`
`Korean corporation with its principal offices at 250, 2-ga, Taepyong-ro, Jung-gu, Seoul, 100-742,
`
`South Korea. On information and belief, SEC is South Korea’s largest company and one of
`
`Asia’s largest electronics companies. SEC designs, manufactures, and provides to the U.S. and
`
`world markets a wide range of products, including consumer electronics, computer components
`
`and myriad mobile and entertaimnent products.
`
`8.
`
`Samsung Electronics America, Inc. (referred to individually herein as “SEA”) is a
`
`New York corporation with its principal place of business at 105 Challenger Road, Ridgefield
`
`Park, New Jersey 07660. On information and belief, SEA was formed in 1977 as a subsidiary of
`
`SEC, and markets, sells, or offers for sale a variety of consumer electronics, including TVs,
`
`VCRs, DVD and MP3 players, and video cameras, as well as memory chips and computer
`
`accessories, such as printers, monitors, hard disk drives, and DVD/CD-ROM drives. On
`
`information and belief, SEA also manages the North American operations of Samsung
`
`Telecommunications America, Samsung Electronics Canada, and Samsung Electronics Mexico.
`
`APPLE INc.’s COMPLAINT
`sf-298 1 926
`
`2
`
`

`
`p_A
`
`n—-n—-
`
`P-'©\O00\lO\UI-PU3I\J
`[\)r—->—-o—Ap—-r—-n—-nr—In—-ONO00\lO’\U:-9-U-D_t\)
`
`N) r-—-
`
`I0I0
`
`[0U)
`
`l\)-5
`
`|\JLII
`
`[OO\
`
`Ix)\l
`
`NJ00
`
`9.
`
`Samsung Telecommunications America, LLC (referred to individually herein as
`
`“STA”) is a Delaware limited liability company with its principal place of business at 1301 East
`
`Lookout Drive, Richardson, Texas 75081. On information and belief, STA was founded in 1996
`
`as a subsidiary of SEC, and markets, sells, or offers for sale a variety of personal and business
`
`communications devices in the United States, including cell phones.
`
`JURISDICTION
`
`10.
`
`This Court has subject matter jurisdiction under 15 U.S.C. § 1121 (action arising
`
`under the Lanharn Act); 28 U.S.C. § 1331 (federal question); 28 U.S.C. § l338(a) (any Act of
`
`Congress relating to patents or trademarks); 28 U.S.C. § 1338(b) (action asserting claim of unfair
`
`competition joined with a substantial and related claim under the trademark laws); and 28 U.S.C.
`
`§ 1367 (supplemental jurisdiction).
`
`11.
`
`This Court has personal jurisdiction over SEC, SBA and STA because each of
`
`these Samsung entities has committed and continues to commit acts of infringement in violation
`
`of 35 U.S.C. § 271 and 15 U.S.C. § 1114 and 1125, "and places infringing products into the stream
`
`of commerce, with the knowledge or understanding that such products are sold in the State of
`
`California, including in this District. The acts by SEC, SEA and STA cause injury to Apple
`
`within this District. Upon information and belief, SEC, SBA and STA derive substantial revenue
`
`from the sale of infringing products within this District, expect their actions to have consequences
`
`within this District, and derive substantial revenue from interstate and international commerce.
`
`VENUE AND INTRADISTRICT ASSIGNMENT
`
`12.
`
`Venue is proper within this District under 28 U.S.C. §§ 1391(b) and (c) because
`
`Samsung transacts business within this district and offers for sale in this district products that
`
`infringe the Apple patents, trade dress, and trademarks. In addition, venue is proper because
`
`App_le’s principal place of business is in this district and Apple suffered harm in this district.
`
`Moreover, a substantial part of the events giving rise to the claim occurred in this district.
`
`Pursuant to Local Rule 3-2(c), Intellectual Property Actions are assigned on a district-wide basis.
`
`APPLE INc.’s COMPLAINT
`sf—298 1926
`
`3
`
`

`
`3-A
`
`;\OOO\lO\LIu-hbblxi
`
`p—|
`
`p.—4
`
`r—I l\)
`
`7-- DJ
`
`7- -¥>
`
`rd fill
`
`r—- O\
`
`I-I \I
`
`n—- 00
`
`—I \O
`
`IOCD
`
`IN) :-I
`
`B)I\)
`
`IN) U)
`
`Ix)-P
`
`I0LII
`
`|\)O\
`
`[Q\I
`
`I000
`
`BACKGROUND
`
`APPLE ’S INNOVATIONS
`
`13.
`
`Apple is a leading designer and manufacturer of mobile communication devices,
`
`personal computers, and portable digital media players. As a result of its significant investment
`
`in research and development, Apple has developed innovative technologies that have changed the
`
`face of the computer and telecommunications industries. One such pioneering technology is
`
`Apple’s Multi-Touch” user interface, which allows users to navigate their iPhone, iPod touch,
`
`and iPad devices by tapping and swiping their fingers on the screen.
`
`14.
`
`In 2007, Apple revolutionized the telecommunications industry when it introduced
`
`the iPhone. - The iPhone combined in one small and lightweight handheld device sophisticated
`
`mobile phone functions, media storage and playback, a tactile user interface that allows users to
`
`control the phone with their fingers, mobile computing power to run diverse pre-installed and
`
`downloadable applications, and functionality to gain full access to the Internet. These features
`
`were combined in an elegant glass and stainless steel case with a distinctive user interface that
`
`gave the iPhone an immediately recognizable look.‘
`
`15.
`
`As a direct result of its innovative and distinctive design and its cutting edge
`
`technological features, the iPhone wa