Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA498036
`ESTTA Tracking number:
`10/03/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91198009
`Defendant
`Apple Inc.
`GLENN A GUNDERSEN
`DECHERT LLP
`CIRA CENTRE, 2929 ARCH STREET
`PHILADELPHIA, PA 19104-2808
`UNITED STATES
`glenn.gundersen@dechert.com, christine.hernandez@dechert.com,
`trademarks@dechert.com
`Opposition/Response to Motion
`Glenn A. Gundersen
`trademarks@dechert.com, glenn.gundersen@dechert.com,
`christine.hernandez@dechert.com
`/Glenn A. Gundersen/
`10/03/2012
`Acer Opp to Motion to Compel Brief.pdf ( 10 pages )(131925 bytes )
`Acer Opp to Motion to Compel Exhibits.pdf ( 69 pages )(1129142 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re the matter of:
`Application Serial No: 85/025,647
`Mark:
`
`and
`
`Application Serial No: 85/040,770
`Mark:
`
`Published in the Official Gazette
`Published in the Official Gazette
`on November 16, 2010
`on November 23, 2010
`---------------------------------------------------------------
`ACER INCORPORATED
`
`::
`
`: Opposition No. 91198009 (parent)
`: Opposition No. 91198015
`:
`
`::
`
`: Opposition No. 91198990
`: Opposition No. 91199025
`:
`
`::
`
`: Opposition No. 91199013
`: Opposition No. 91199027
`:
`
`::
`
`: Opposition No. 91198992
`: Opposition No. 91199024
`:
`
`::
`
`: Opposition No. 91199026
`:
`:
`
`v.
`
`APPLE INC.
`---------------------------------------------------------------
`HTC CORPORATION
`
`v.
`
`APPLE INC.
`---------------------------------------------------------------
`SAMSUNG ELECTRONICS CO., LTD.
`
`v.
`
`APPLE INC.
`---------------------------------------------------------------
`DELL INC.
`
`v.
`
`APPLE INC.
`---------------------------------------------------------------
`NOKIA CORPORATION
`
`v.
`
`APPLE INC.
`---------------------------------------------------------------
`
`

`
`APPLICANT’S OPPOSITION TO OPPOSERS’ JOINT MOTION TO COMPEL
`
`Applicant Apple Inc. (“Apple”) respectfully submits this memorandum in opposition to
`
`Opposers’ Joint Motion to Compel Applicant’s Supplemental Responses to Opposers’ First
`
`Requests for Production of Documents and Interrogatories (the “Motion”).
`
`In its applications, Apple seeks to register stylized two-dimensional logotypes that Apple
`
`uses with accessories for its well-known iPad and iPhone devices. Apple licenses these marks to
`
`a large number of third-party accessory makers, who then display the icons on packaging and
`
`advertisements to signal the compatibility of their products with Apple’s devices. Apple’s
`
`asserted marks are decidedly not product configurations. Yet Opposers seek wide-ranging
`
`discovery into the three-dimensional designs used by Opposers and other third-party tablet and
`
`smartphone manufacturers, and whether confusion is likely with Opposers’ and third-party
`
`product configurations. Opposers fail
`
`to show how such discovery is relevant
`
`to the
`
`registrability of Apple’s two-dimensional
`
`logotypes for
`
`its accessory licensing program.
`
`Opposers’ effort to burden Apple with unwarranted discovery should be rejected, and Opposers’
`
`Motion should be denied in its entirety.
`
`BACKGROUND
`
`In its applications, Apple seeks to register the following two-dimensional representations
`
`of its iPhone and iPad devices.
`
`Ser. No. 85/040,770 (“the iPhone Logo”)
`
`Ser. No. 85/025,647 (“the iPad Logo”)
`
`- 2 -
`
`

`
`As shown in Exhibit A, Apple licenses these two-dimensional logotypes to producers of
`
`electronics accessories to demonstrate their products’ compatibility with the iPhone and iPad
`
`devices. Apple also uses the icons in connection with its “MFi” program. Through the MFi
`
`program, Apple licenses the word marks “Made for iPhone” and “Made for iPad” and
`
`accompanying iPhone and iPad Logos, as shown below, to producers of electronics accessories
`
`that have been tested and certified to connect specifically to the iPhone and iPad devices.
`
`Ser. No. 85/025,627
`
`Ser. No. 85/025,637
`
`As shown in the attached Exhibit B, Apple describes the program to potential licensees as
`
`follows:
`
`Get the hardware connectors and components that are required to manufacture iPod,
`iPhone, iPad, and AirPlay audio accessories. And access the iPod Accessory protocol
`specification, the communication protocol used to interact with iPod, iPhone, and iPad.
`
`Promote your electronic accessory with MFi logos. Made for iPod, Made for iPhone,
`Made for iPad, and AirPlay logos communicate to customers that an electronic accessory
`has been designed to connect specifically to iPod, iPhone, or iPad, and has been certified
`by the developer to meet Apple performance standards.
`
`Consistent with its use in the icon and MFi licensing programs, Apple’s iPhone Logo
`
`application does not seek to register the iPhone Logo in connection with the iPhone device itself.
`
`As recognized by the Board in its Order denying Samsung’s motion to stay this proceeding (Dkt.
`
`No. 22), Apple seeks to register the iPhone Logo for use only with various accessories for the
`
`iPhone, such as “electronic docking stations,” “stands specially designed for holding mobile
`
`phones and portable and handheld digital electronic devices,” “headphones and earphones” and
`
`- 3 -
`
`

`
`“protective cases.” Id. at 11. Similarly, Apple seeks to register the iPad Logo only in connection
`
`with various accessories for the iPad.
`
`ARGUMENT
`
`“[T]he right to discovery is not unlimited.” FMR Corp. v. Alliant Partners, 51 USPQ2d
`
`1759 (TTAB 1999). Particularly “[i]n view of the limited jurisdiction of the Board in deciding
`
`only issues of registrability,” a party must “‘make a good faith effort to seek only such discovery
`
`as is proper and relevant to the specific issues involved in the case.’” Pioneer Kabushiki Kaisha
`
`v. Hitachi High Techs. Am., Inc., 74 USPQ2d 1672 (TTAB 2005) (citation omitted). The Board
`
`may limit discovery where, as here, “the burden or expense of the proposed discovery outweighs
`
`its likely benefit, considering the needs of the case, the amount in controversy, the parties’
`
`resources, the importance of the issues at stake in the action, and the importance of the discovery
`
`in resolving the issues.” Fed. R. Civ. P. 26(b)(2)(C); TBMP § 402.02.
`
`I. Discovery Concerning Design Features of Mobile Electronic Devices Is Not
`Relevant.
`
`Interrogatory No. 10 demands that Apple identify all “Mobile Digital Electronic
`
`Communication Devices,” defined to encompass essentially every tablet computer, smartphone
`
`or other handheld electronic device, that incorporates “(1) a rectangular body with four evenly
`
`rounded corners; (2) a flat clear face covering the front of the product; (3) a large display screen
`
`under the clear surface; and/or (4) substantial black borders on all sides of the display screen
`
`under the clear surface.” Interrogatory No. 11 seeks information on those same enumerated
`
`design features with respect to every product ever manufactured or otherwise offered by each of
`
`the five Opposers, Samsung, Dell, Nokia, Acer, and HTC, while Request for Production (“RFP”)
`
`No. 7 seeks all documents related to any Mobile Digital Electronic Communication Device
`
`- 4 -
`
`

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`incorporating any one of those design features. See Motion Exs. A, B. Such discovery does not
`
`bear on the registrability of the two-dimensional logotypes at issue here and should be denied.
`
`Opposers’ justification for these requests primarily rests on their puzzling claim that the
`
`iPhone and iPad Logos each in fact display “(1) a rectangular body with four evenly rounded
`
`corners; (2) a flat clear face covering the front of the product; (3) a large display screen under the
`
`clear surface; and/or (4) substantial black borders on all sides of the display screen under the
`
`clear surface.” Motion at 6. But the iPhone and iPad Logos are simple line drawings; nothing in
`
`them embodies, for example, “a flat clear face” or “substantial black borders.”1 Opposers do not,
`
`and cannot, convincingly explain how discovery concerning the design of the exterior of
`
`smartphones and tablets bears on this proceeding.
`
`Opposers maintain that such discovery is relevant to their claims that the iPhone and iPad
`
`Logos are functional. But as is made clear in the applications, these are two-dimensional
`
`logotypes. Functionality is a basis for refusing registration to an application for trade dress. See
`
`TMEP § 1202.02. Opposers have not explained how a two-dimensional line drawing that does
`
`not claim a product configuration can nevertheless be functional.
`
`Opposers also claim that discovery of design features of three-dimensional products is
`
`relevant to their claim of descriptiveness. Here, too, Opposers fail to explain how third-party
`
`designs are relevant
`
`to the distinctiveness of graphic depictions.
`
`It
`
`is clear
`
`that
`
`the
`
`distinctiveness of a mark must be evaluated vis-à-vis the goods for which registration is sought.
`
`See TMEP § 1209.01(b) (“The determination of whether a mark is merely descriptive must be
`
`1 In fact, the four features described in these Interrogatories precisely copy Apple’s description
`of distinctive elements of the design of the iPhone, iPod touch and iPad devices that Apple
`alleged to be infringed by Samsung in the recently-decided federal court litigation. See, e.g., Ex.
`C (Am. Compl., Apple Inc. v. Samsung Electronics Co., Ltd., Case No. 11-cv-01846-LHK),
`¶¶ 32, 35, 37, 41, 44, 57, 59, 61, 63, 65, 67, 95-103. The Board has already determined that the
`issues of the federal litigation are not relevant to the present proceeding. See Dkt. No. 22.
`
`- 5 -
`
`

`
`
`
`made in relation to the goodsds or services for which registration is sought,ht, not in the abstract.”);
`
`
`
`
`
`TMEP § 1209.01(c)(i) (“Therhere is a two-part test used to determine whehether a designation is
`
`
`
`
`
`generic: (1) What is the genunus of goods or services at issue? and (2) DoDoes the relevant public
`
`
`
`
`
`understand the designation primprimarily to refer to that genus of goods or seservices?”). Numerous
`
`
`
`
`
`Board decisions confirm that at a graphic design that is merely suggestive of tof the relevant goods and
`
`
`
`
`
`services is distinctive and regregistrable. For example, in In re General EleElectric Co., 209 USPQ
`
`
`
`
`
`425 (TTAB 1980), the Boardrd found that a stylized depiction of an electrctrical plug and cord, as
`
`
`
`
`
`shown below, were at most sugsuggestive of rechargeable batteries.
`
`
`
`Similarly, in In re LRC Proroducts Ltd., 223 USPQ 1250 (TTAB 198484), the Board allowed
`
`
`
`
`
`registration of the symbol bebelow for gloves, finding that while the mmark might suggest or
`
`
`
`
`
`resemble gloves, it is not “a cocommon symbol or design used by the trade toto represent gloves.”
`
`
`
`
`
`As in General Electric and LRLRC, Apple’s stylized depictions of the iPhoneone and iPad devices are
`
`
`
`
`
`not descriptive of the speakeakers, remote controls, and other peripheral al accessories for which
`
`
`
`Apple seeks registration.
`
`relevant to that analysis.
`
`
`
`InfInformation concerning third-party three-dimenensional designs is not
`
`
`
`- 6 -
`
`

`
`Finally, Opposers’ requests are impermissibly broad.
`
`Interrogatory No. 10 seeks
`
`information on “all” such devices. Setting aside the impossibility that Apple would be aware of
`
`every tablet computer, smartphone or other handheld electronic device ever sold or even
`
`conceived of, Opposers’ request fails to set appropriate time limits on time period or geographic
`
`areas.
`
`Interrogatory No. 11 similarly requires Apple to have knowledge of every product ever
`
`“manufactured, distributed, advertised, offered for sale or sold” by each of the five Opposers,
`
`which undoubtedly encompasses hundreds, if not thousands, of devices. RFP No. 7 is even more
`
`sweeping, calling for every document that even “refer[s] or relate[s] to or comment[s] upon” any
`
`such device. Such discovery is clearly beyond the scope of this proceeding.
`
`II. Discovery Requiring Apple to Claim a Likelihood of Confusion with Third-
`Party Product Configurations Is Not Relevant.
`
`Interrogatory No. 20 demands that Apple identify “all
`
`third party Mobile Digital
`
`Electronic Communication Devices that Applicant believes look similar to and/or are likely to
`
`cause confusion” with the iPhone or iPad Logos. Interrogatory Nos. 12 and 13 similarly require
`
`Apple to identify every product ever “manufactured, distributed, advertised, offered for sale or
`
`sold” by each Opposer that is likely to cause confusion with the iPhone or iPad Logos. Finally,
`
`RFP No. 10 seeks production of all documents related to any such devices. See Motion Exs. A,
`
`B. This proceeding relates only to the registrability of Apple’s marks and will not address any
`
`claims of likelihood of confusion with respect to the parties’ trade dress or design of their
`
`respective products or other third-party product designs, and hypothetical claims of confusion are
`
`not relevant to this proceeding. As noted by Opposers, in an effort at compromise, Apple agreed
`
`to produce documents related to its policing of the iPhone and iPad Logos. Thus, Apple has
`
`already produced documents related to third-party marks that it believed infringed upon its rights
`
`in the Logos. Apple respectfully submits, however, that it should not be required to scour the
`
`- 7 -
`
`

`
`nearly limitless universe of electronic devices to imagine whether, under some unknown
`
`circumstances, they could possibly cause confusion with Apple’s iPhone and iPad Logos.
`
`In attempting to justify its rationale for such requests, Opposers do little more than assert
`
`that the requests “may lead to evidence that Apple’s marks are merely descriptive and/or
`
`functional.” Motion at 7. As explained above, design features of three-dimensional products do
`
`not bear on whether Apple’s logo marks are descriptive of peripheral accessories. Moreover,
`
`Opposers’ claim of functionality is inapplicable to a two-dimensional logotype. Opposers have
`
`thus failed to meet their burden to show any relevance for such discovery.
`
`Opposers’ discovery requests are also impermissibly broad, and should be denied for that
`
`reason alone. Every product “manufactured, distributed, advertised, offered for sale or sold” by
`
`all five Opposers (without any limitation on time period) is not reasonably within Apple’s
`
`knowledge, nor is the design of “all third party Mobile Digital Electronic Communication
`
`Devices.” Opposers’ related document request
`
`is again even more broad, seeking every
`
`document that “refer[s] or relate[s] to or comment[s] upon” such a device.
`
`III.Discovery Concerning Other Depictions of Mobile Electronic Devices Is Not
`Relevant.
`
`Interrogatory No. 6 requires Apple to identify “all persons that have used a mark
`
`consisting of a depiction or drawing of a Mobile Digital Electronic Communication Device for
`
`any or all of Applicant’s Goods or Mobile Digital Electronic Communication Devices,” while
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`RFP No. 9 calls for all documents related to such a depiction. See Motion Exs. A, B. Here
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`again, Opposers have offered little more to justify those requests than a boilerplate assertion that
`
`such discovery is relevant to their claim of descriptiveness. See Motion at 6-8. Their request
`
`should be denied.
`
`- 8 -
`
`

`
`Opposers do not explain how depictions or drawings of every tablet computer,
`
`smartphone and other handheld electronic device, without limitation, have any bearing on the
`
`distinctiveness and registrability of the marks at issue here. Moreover, Opposers’ requests are
`
`not limited to depictions sharing visual similarities with the iPhone and iPad Logos, or depictions
`
`used in connection with device peripherals. Rather, the requests call for information well outside
`
`of Apple’s knowledge, sweeping in photographs, cartoons and all other manner of visual
`
`representations of electronic devices, and require Apple to make an assessment as to whether
`
`such a representation is being used as a mark. Again, in compromise, Apple agreed in its
`
`response to Interrogatory No. 6 to identify documents showing depictions of electronic‘ devices
`
`to which Apple objected as infringing its rights in the Logos. Apple further identified, in its
`
`response to Interrogatory No. 18, peripheral manufacturers licensed to use the Logos through
`
`Apple’s MFi program. See Motion Ex. D. Information beyond that, however, is not relevant to
`
`this proceeding.
`
`CONCLUSION
`
`For the foregoing reasons, Applicant respectfully requests that the Motion be denied.
`
`Date: October3, 2012 By:
`
`Glenn A. Gundersen
`
`Attorneys for Applicant
`APPLE INC.
`
`Christine M. Hernandez
`
`Dechert LLP
`
`Cira Centre, 2929 Arch Street
`Philadelphia, PA 19104-2808
`Telephone: 215-994-2183
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on October 3, 2012 a true and correct copy of the foregoing
`App1icant’s Opposition to Opposers’ Joint Motion to Compel was served on Opposers’ counsel
`via electronic mail to the following addresses, as agreed among the parties:
`
`rws@pattisha11.com
`diane.mason@1ec1airryan.com
`ijb@pattisha11.com
`felicia.e11is@k1gates.com
`ke1ly_wa1ton@de1l.com
`rweisbein@fo1ey.com
`sme1een@pirkeybarber.com
`susan.hol1ander@k1gates.com
`
`britt.anderson@k1gates.com
`
`E &
`
`Christine M. Hernandez
`
`-10-
`
`

`
`EXHIBIT A
`EXHIBIT A
`
`

`
`iPod, iPhone, and iPad Icons - Software Licensing and Trademarks - Apple Developer
`
`Page 1 of 1
`
`Overview
`
`Audio Units
`
`Bonjour
`
`Final Cut Pro
`
`FireWire
`
`Image Units
`
`iMovie
`
`iPhoto
`
`iPod, iPhone, and iPad Icons
`
`iTunes
`
`Mac Logo
`
`Mini DisplayPort
`
`OpenCL
`
`QuickTime
`
`MFi Program
`
`Join the MFi Program to create
`electronic accessories that connect to
`iPod, iPhone, and iPad. Learn More
`
`Use Apple’s iPod, iPhone, and iPad icons to let customers know which
`iPod, iPhone, or iPad models and generations your product is compatible
`with.
`
`If you are already participating in the MFi program, iPod, iPhone, and iPad icons are
`provided as part of the MFi license agreement. The iPod, iPhone, and iPad icons can
`also be used in association with certain products, such as headphones or cases, that do
`not qualify as a Licensed Product, in accordance with the iPod, iPhone, and iPad Icons
`License Agreement described below.
`
`Here’s what you need to do to become an authorized licensee:
`
`Download the following:
`
`ﾐ
`
`ﾐ
`
`ﾐ
`
`kRqf."kRjqpg."cpf"kRcf"Keqpu"Nkegpug"Citggogpv"*RFH+
`
`kRqf."kRjqpg."cpf"kRcf"Keqpu"Wucig"Iwkfgnkpgu"*RFH+
`
`kRqf."kRjqpg."cpf"kRcf"Keqpu"Ctvyqtm"*¥KR+
`
`Complete and mail the iPod, iPhone, and iPad Icons License Agreement. For your convenience, the
`mailing address is included at the bottom of the license agreement.
`
`Thoroughly read and comply with the iPod, iPhone, and iPad Icons Usage Guidelines.
`
`4.
`
`Await confirmation of approval from Apple before using the icons.
`
`Finally, apply the iPod, iPhone, or iPad icons to your product packaging, advertising, websites, and other
`marketing communications in accordance with the iPod, iPhone, and iPad icons usage guidelines.
`
`Note: By downloading the artwork from the link above, you agree that you will use the icons only in conjunction and
`compliance with an iPod, iPhone, and iPad Icons License Agreement approved by Apple Inc.
`
`iPhoto
`
`iTunes
`
`https://developer.apple.com/softwarelicensing/agreements/icons.html
`
`10/3/2012
`
`

`
`EXHIBIT B
`EXHIBIT B
`
`

`
`MFi Program - Apple Developer
`
`Page 1 of 1
`
`Join the MFi licensing program and get the hardware components,
`
`tools, documentation, technical support, and certification logos
`
`needed to create AirPlay audio accessories and electronic accessories
`
`that connect to iPod, iPhone, and iPad.
`
`Get the hardware connectors and components that
`are required to manufacture iPod, iPhone, iPad, and
`AirPlay audio accessories. And access the iPod
`Accessory protocol specification, the communication
`protocol used to interact with iPod, iPhone, and iPad.
`
`Promote your electronic accessory with MFi logos.
`Made(cid:160)for(cid:160)iPod, Made(cid:160)for(cid:160)iPhone, Made(cid:160)for(cid:160)iPad, and
`AirPlay logos communicate to customers that an
`electronic accessory has been designed to connect
`specifically to iPod, iPhone, or iPad, and has been
`certified by the developer to meet Apple performance
`standards.
`
`Request support from our Developer Technical
`Support engineers and get one-on-one assistance
`with your specific technical issue.
`
`Hardware Connectors and Components
`
`Testing Tools
`
`Technical Information
`
`Technical Support
`
`Product Certification
`
`MFi and AirPlay Logos
`
`iPod, iPhone, and iPad Compatibility Icons
`
`Apply Now
`
`To learn more about the MFi Program or the
`enrollment process, see our FAQs
`
`Sign in to access program resources
`
`Join the iOS Developer Program and create
`iOS apps that communicate with electronic
`accessories.
`
`Download dimensional drawings and
`guidelines for designing carrying cases for
`iPod, iPhone, and iPad.
`
`https://developer.apple.com/programs/mfi/
`
`10/3/2012
`
`

`
`EXHIBIT C
`EXHIBIT C
`
`

`
`Case5:11-cv-01846-LHK Document75 Filed06/16/11 Page1 of 64
`
`
`
`KENNETH H. BRIDGES (CA SBN 243541)
`kbridges@bridgesmav.com
`MICHAEL T. PIEJA (CA SBN 250351)
`mpieja@bridgesmav.com
`BRIDGES & MAVRAKAKIS LLP
`3000 El Camino Real
`One Palo Alto Square, 2nd Floor
`Palo Alto, CA 94306
`Telephone: (650) 804-7800
`Facsimile: (650) 852-9224
`
`
`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
`ALISON M. TUCHER (CA SBN 171363)
`atucher@mofo.com
`RICHARD S.J. HUNG (CA SBN 197425)
`rhung@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.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`APPLE INC., a California corporation,
`
`Case No. 11-cv-01846-LHK
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD., a
`Korean corporation; SAMSUNG
`ELECTRONICS AMERICA, INC., a New
`York corporation; and SAMSUNG
`TELECOMMUNICATIONS AMERICA,
`LLC, a Delaware limited liability company,
`
`Defendants.
`
`
`
`JURY TRIAL DEMAND
`
`AMENDED COMPLAINT 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
`ENRICHMENT, AND PATENT
`INFRINGEMENT
`
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`APPLE INC.’S AMENDED COMPLAINT
`CASE NO. 11-CV-01846-LHK
`sf-3008927
`
`

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`Case5:11-cv-01846-LHK Document75 Filed06/16/11 Page2 of 64
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`Plaintiff Apple Inc. (“Apple”) complains and alleges as follows against Defendants
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`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung
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`Telecommunications America, LLC (collectively “Samsung”).
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`THE NATURE OF THE ACTION
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`1.
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`Apple revolutionized the telecommunications industry in 2007 when it introduced
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`the wildly popular iPhone, a product that dramatically changed the way people view mobile
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`phones. Reviewers, analysts and consumers immediately recognized the iPhone as a “game
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`changer.” Before the iPhone, cell phones were utilitarian devices with key pads for dialing and
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`small, passive display screens that did not allow for touch control. The iPhone was radically
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`different. In one small and lightweight handheld device, it offered sophisticated mobile phone
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`functions, a multi-touch screen allowing users to control the phone with their fingers, music
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`storage and playback, a mobile computing platform for handheld applications, and full access to
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`the Internet. These features were combined in an elegantly designed minimalist product with a
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`distinctive user interface, icons, and eye-catching displays that gave the iPhone an unmistakable
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`look.
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`2.
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`Those design features were carried over to the iPod touch, another product that
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`Apple introduced in 2007. The iPod touch has a product configuration and physical appearance
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`that is a further iteration of the iPhone product design. Moreover, the iPod touch utilizes the same
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`user interface icons and screen layout as the iPhone, displaying the unmistakable iPhone
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`appearance.
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`3.
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`Apple introduced another revolutionary product, the iPad, in 2010. The iPad is an
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`elegantly designed computer tablet with a color touch screen, a user interface reminiscent of the
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`iPhone’s user interface, and robust functionality that spans both mobile computing and media
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`storage and playback. Because of its innovative technology and distinctive design, the iPad
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`achieved instant success.
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`4.
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`Apple’s creative achievements have resulted in broad intellectual property
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`protection for Apple’s innovations, including utility and design patents, trademarks, and trade
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`dress protection. Nevertheless, Apple’s innovations have been the subject of emulation by its
`
`APPLE INC.’S AMENDED COMPLAINT
` Case No. 11-cv-01846-LHK
`sf-3008927
`
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`competitors, who have attempted to catch up with Apple’s innovative products. Samsung has
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`been even bolder, creating products that blatantly imitate the appearance of Apple’s products to
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`capitalize on Apple’s success. For example, Samsung recently introduced the Galaxy line of
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`mobile phones and computer tablets, all of which use the Google Android software platform, to
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`compete with the iPhone and iPad. Instead of pursuing independent product development,
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`Samsung has chosen to slavishly copy Apple’s innovative technology, distinctive user interfaces,
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`and elegant and distinctive product and packaging design, in violation of Apple’s valuable
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`intellectual property rights. As alleged below in detail, Samsung has made its Galaxy phones and
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`computer tablets work and look like Apple’s products through widespread patent, trademark, and
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`trade dress infringement. Samsung has even copied Apple’s distinctive product packaging.
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`5.
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`By this action, Apple seeks to put a stop to Samsung’s illegal conduct and obtain
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`compensation for the violations that have occurred thus far.
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`THE PARTIES
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`6.
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`Apple is a California corporation having its principal place of business at 1 Infinite
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`Loop, Cupertino, California 95014.
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`7.
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`Samsung Electronics Co., Ltd. (referred to individually herein as “SEC”) is a
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`Korean corporation with its principal offices at 250, 2-ga, Taepyong-ro, Jung-gu, Seoul, 100-742,
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`South Korea. On information and belief, SEC is South Korea’s largest company and one of
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`Asia’s largest electronics companies. SEC designs, manufactures, and provides to the U.S. and
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`world markets a wide range of products, including consumer electronics, computer components,
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`and myriad mobile and entertainment products.
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`8.
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`Samsung Electronics America, Inc. (referred to individually herein as “SEA”) is a
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`New York corporation with its principal place of business at 105 Challenger Road, Ridgefield
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`Park, New Jersey 07660. On information and belief, SEA was formed in 1977 as a subsidiary of
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`SEC and markets, sells, or offers for sale a variety of consumer electronics, including TVs,
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`VCRs, DVD and MP3 players, and video cameras, as well as memory chips and computer
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`accessories, such as printers, monitors, hard disk drives, and DVD/CD-ROM drives. On
`
`
`APPLE INC.’S AMENDED COMPLAINT
` Case No. 11-cv-01846-LHK
`sf-3008927
`
`2
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`information and belief, SEA also manages the North American operations of Samsung
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`Telecommunications America, Samsung Electronics Canada, and Samsung Electronics Mexico.
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`9.
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`Samsung Telecommunications America, LLC (referred to individually herein as
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`“STA”) is a Delaware limited liability company with its principal place of business at 1301 East
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`Lookout Drive, Richardson, Texas 75081. On information and belief, STA was founded in 1996
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`as a subsidiary of SEC and markets, sells, or offers for sale a variety of personal and business
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`communications devices in the United States, including cell phones.
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`JURISDICTION
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`10.
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`This Court has subject matter jurisdiction under 15 U.S.C. § 1121 (action arising
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`under the Lanham Act); 28 U.S.C. § 1331 (federal question); 28 U.S.C. § 1338(a) (any Act of
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`Congress relating to patents or trademarks); 28 U.S.C. § 1338(b) (action asserting claim of unfair
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`competition joined with a substantial and related claim under the trademark laws); and 28 U.S.C.
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`§ 1367 (supplemental jurisdiction).
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`11.
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`This Court has personal jurisdiction over SEC, SEA, and STA because each of
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`these Samsung entities has committed and continues to commit acts of infringement in violation
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`of 35 U.S.C. § 271 and 15 U.S.C. §§ 1114, 1125, and places infringing products into the stream
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`of commerce, with the knowledge or understanding that such products are sold in the State of
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`California, including in this District. The acts by SEC, SEA, and STA cause injury to Apple
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`within this District. Upon information and belief, SEC, SEA, and STA derive substantial revenue
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`from the sale of infringing products within this District, expect their actions to have consequences
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`within this District, and derive substantial revenue from interstate and international commerce.
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`VENUE AND INTRADISTRICT ASSIGNMENT
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`12.
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`Venue is proper within this District under 28 U.S.C. §§ 1391(b),(c) because
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`Samsung transacts business within this District and offers for sale in this District products that
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`infringe the Apple patents, trade dress, and trademarks. In addition, venue is proper because
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`Apple’s principal place of business is in this District and Apple suffered harm in this District.
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`Moreover, a substantial part of the events giving rise to the claim occurred in this District.
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`Pursuant to Local Rule 3-2(c), intellectual property actions are assigned on a district-wide basis.
`
`APPLE INC.’S AMENDED COMPLAINT
` Case No. 11-cv-01846-LHK
`sf-3008927
`
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`BACKGROUND
`APPLE’S INNOVATIONS
`
`13.
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`Apple is a leading designer and manufacturer of handheld mobile devices,
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`personal computers, and portable media players. As a result of its significant investment in
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`research and development, Apple has developed innovative technologies that have changed the
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`face of the computer and telecommunications industries. One such pioneering technology is
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`Apple’s Multi-Touch™ user interface, which allows users to navigate their iPhone, iPod touch,
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`and iPad devices by tapping and swiping their fingers on the screen.
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`14.
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`In 2007, Apple revolutionized the telecommunications industry when it introduced
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`the iPhone. The iPhone combined in one small and lightweight handheld device sophisticated
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`mobile phone functions, media storage and playback, the Multi-Touch user interface, mobile
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`computing power to run diverse pre-installed and downloadable applications, and functionality to
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`gain full access to the Internet. These features were combined in an elegant glass and metal case
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`with a distinctive user interface that gave the iPhone an immediately recognizable look.
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`15.
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`As a direct result of its innovative and distinctive design and its cutting edge
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`technological features, the iPhone was an instant success, and its appearance immediately became
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`uniquely associated with Apple as its source. Reviewers and analysts universally praised the
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`iPhone for its “game changing” features. Time magazine listed the iPhone number one on its List
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`of Top Ten Gadgets fo