Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA413964
`ESTTA Tracking number:
`06/10/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91199897
`Plaintiff
`Samsung Electronics, Ltd.
`MICHAEL T ZELLER
`QUINN EMANUEL URQUHART SULLIVAN LLP
`865 SOUTH FIGUEROA STREET, 10TH FLOOR
`LOS ANGELES, CA 90017-2543
`UNITED STATES
`michaelzeller@quinnemanuel.com, margretcaruso@quinnemanuel.com
`Motion to Suspend for Civil Action
`Michael T. Zeller
`michaelzeller@quinnemanuel.com, margretcaruso@quinnemanuel.com,
`joelleperry@quinnemanuel.com
`/s/Michael T. Zeller/jsp
`06/10/2011
`Motion to Stay.pdf ( 4 pages )(21574 bytes )
`Zeller Dec.PDF ( 2 pages )(36093 bytes )
`Exhibit A Zeller Declaration.PDF ( 39 pages )(3095513 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`Id.IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`In re Application Serial No.:
`
`
`85041463
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`
`
`
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`
`
`Filed:
`Date Published:
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`May 18, 2010
`April 19, 2011
`
`
`
` Opposition No. 91199897
`
`
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`OPPOSER'S MOTION TO STAY
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`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`
`Plaintiff,
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`
`
`
`
`
`APPLE INC. ,
`
`
`Defendant.
`
`
`
`
`03498.51845/4174695.1
`
`1
`
`

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`
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`Opposer, SAMSUNG ELECTRONICS CO., LTD. ("Opposer" or "Samsung"), by its
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`counsel, respectfully moves the Board to stay the instant proceedings pending the resolution of
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`issues raised by Applicant Apple Inc. ("Applicant" or "Apple") that are also currently before the
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`United States District Court for the Northern District of California.
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`In support of its Motion, Opposer states as follows. In these proceedings, Samsung
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`opposes the registration of a putative design mark that is depicted on the above caption page and
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`that Applicant describes as "a rectangle with rounded corners depicting a stylized musical note in
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`a white circle on a purple background" ("Applicant’s Claimed Mark"). Applicant seeks
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`registration for "[c]omputer software for use in searching, browsing, reviewing, sampling,
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`playing, purchasing, and downloading pre-recorded audio and video content."
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`Opposer and Applicant are parties to litigation in the United States District Court for the
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`Northern District of California. This includes a suit styled as Apple Inc. v. Samsung Electronics
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`Co., Ltd., et al., Case No. 11-1846, filed on April 15, 2011 (the "Civil Action").1 Because issues
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`raised by the Opposition are also the subject of the Civil Action between the parties, the Board
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`should stay the present opposition proceedings until their resolution by the Courts.
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`
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`More specifically, in the Civil Action Applicant asserts infringement of a purported mark
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`called "the Purple iTunes Store Trademark." That purported mark is precisely the same as the
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`Applicant's Claimed Mark that is at issue in these opposition proceedings. For example, in
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`paragraph 52 of the Complaint in the Civil Action, Applicant alleges:
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`
`1 A copy of the Complaint in the action is attached as Exhibit A to the Declaration of
`Michael T. Zeller ("Zeller Dec."), submitted herewith.
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`
`
`2
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`

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`To represent the iTunes application, Apple uses an icon that is purple in color
`with a white circular band and a silhouette of two eighth-notes superimposed on
`the white circular band:
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`Pending U.S. Application Serial No. 85/041,463 covers this icon (the "Purple
`iTunes Store Trademark"). Attached hereto as Exhibit 20 is a true and correct
`copy of the TARR status report for U.S. Application Serial No. 85/041,463.2
`
`Applicant's Complaint goes on to accuse Samsung of infringing this alleged mark3 and expressly
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`asks for injunctive relief based on the claimed "Purple iTunes Store Trademark."4
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`
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`Because the Applicant’s Claimed Mark in this proceeding and the purported mark in the
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`Civil Action are identical, the issues currently pending before the District Court may — and
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`almost certainly will — have an effect on issues raised in the Opposition. 5 The instant
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`proceedings therefore should be stayed pending resolution of the Civil Action. The Board’s
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`usual practice of staying its proceedings pending the outcome of a civil action that may have a
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`bearing on the issues before the Board, as is the situation here, is codified at 37 C.F.R. § 2.117(a):
`
`
`2 Zeller Dec., Exh. A at ¶ 52 (page 16).
`3 Id. at ¶¶ 66, 111-12, 115 & 117-19 (pages 22 & 30-31). In addition to asserting a
`federal trademark infringement claim, the Complaint alleges that Opposer has engaged in unfair
`competition under California and federal law for purportedly using "the Purple iTunes Store
`Trademark." Id. at ¶¶ 123 & 127-29 (pages 32-33).
`4 Id. at Prayer for Relief ¶ 5 (pages 36-37).
`5 The defenses in the Civil Action and the grounds raised in the Opposition here also
`will overlap. Opposer's Answer in the Civil Action is due on July 5, 2011 and therefore has not
`yet been filed. When it is filed, Opposer anticipates asserting all of the same grounds against the
`claimed "Purple iTunes Store Trademark" as those alleged in the Opposition. Zeller Dec. at ¶ 3.
`
`03498.51845/4174695.1
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`3
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`

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`
`
`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.
`
`See Trademark Trial and Appeal Board Manual of Procedure § 510.02(a) (“[o]rdinarily, the
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`Board will suspend proceedings in the case before it if the final determination of the other
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`proceeding will have a bearing on the issues before the Board.”). See also The Other Telephone
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`Co. v. Connecticut Nat’l Tel. Co., 181 U.S.P.Q. 779, 781-82 (Comm’r of Patents 1974), petition
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`denied, 181 U.S.P.Q. 779; Townley Clothes, Inc. v. Goldring, Inc., 100 U.S.P.Q. 57, 58
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`(Comm’r of Patents 1953) (“[I]t is deemed the sounder practice to suspend the [Trademark]
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`Office proceedings pending termination of the Court action.”).
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`
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`The most logical and efficient course is to suspend these proceedings until the Courts
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`resolve the issues that also are raised here. Samsung respectfully requests that its motion be
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`granted and that the opposition proceedings be suspended pending the completion of the relevant
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`proceedings before the District Court.
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`DATED: June 9, 2011.
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`Respectfully submitted,
`
` QUINN EMANUEL URQUHART &
` SULLIVAN, LLP
`
`By: /s/Michael T. Zeller
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`Michael T. Zeller
` michaelzeller@quinnemanuel.com
`865 South Figueroa Street, 10th Floor,
`Los Angeles, California 90017-2543
`Telephone: (213) 443-3000
`Facsimile: (213) 443-3100
`
`Attorneys for Opposer
`SAMSUNG ELECTRONICS CO., LTD.
`
`4
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`In re Application Serial No.:
`
`
`85041463
`
`
`
`
`
`
`
`
`Filed:
`Date Published:
`
`
`
`
`
`
`
`
`
`
`
`May 18, 2010
`April 19, 2011
`
`
`
` Opposition No. 91199897
`
`
`
`DECLARATION OF MICHAEL T.
`ZELLER IN SUPPORT OF OPPOSER'S
`MOTION TO STAY
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`
`Plaintiff,
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`
`
`
`
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`APPLE INC. ,
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`Defendant.
`
`
`
`
`
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`03498.51845/4190038.1
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`1
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`

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`I, 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
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`counsel for Samsung Electronics Co., Ltd. ("Samsung“) in these proceedings and in Apple Inc. v.
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`Samsung Electronics Co, Ltd, at al., Case No. 114846, filed on April 15, 2011 in the United
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`States District Court for the Northern District of California (the "Civil Action").
`
`I have personal
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`knowledge of the facts stated herein and, if sworn as a witness, could and would testify
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`competently thereto.
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`2.
`
`Attached hereto as Exhibit A is a true and correct copy of the Complaint in the
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`Civil Action.
`
`3.
`
`Samsung-,’s Answer in the Civil Action is due on July 5, 2011 and therefore has
`
`not yet been filed. When it is filed, Sarnstmg anticipates asserting in the Civil Action all of the
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`same grounds against the claimed "Purple iTunes Store Trademark" as those alleged in the
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`Opposition to Applicanfs application for the claimed mark in this proceeding.
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`I declare under penalty of perjury under the laws ofthe United States of America that the
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`foregoing is true and correct.
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`Executed this 9th day of June, 2011, at Los Angeles, California.
`
`u-"""
`
`lic
`
`e1T. Zeller
`
`

`
`O R ‘
`
`Case5:11-cv-01846-LHK Document1 Filed04/15/11 Page1 of 39
`Fi|ed04/15/T11
`‘ N l&aEe5:11-cv-01‘846-LHK Document1
`
`HAROLD J. MCELHINNY (CA SBN 66781)
`HMcElhinny@mofo.com
`MICHAEL A. JACOBS (CA SBN 111664)
`MJacobs@m0fo.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.
`
`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.
`
`Ni 1
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`JURY TRIAL DEMAND
`
`8 4 6
`
`COMPLAINT FOR PATENT
`
`INFRINGEMENT, FEDERAL FALSE
`DESIGNATION OF ORIGIN AND
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`UNFAIR COMPETITION, FEDERAL
`TRADEMARK INFRINGEMENT,
`STATE UNFAIR COMPETITION,
`COMMON LAW TRADEMARK
`
`INFRINGEMENT, AND UNJUST
`ENRICHMENT
`
`L
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`By Fax
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`APPLE INc.’s COMPLAINT
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`Case5:11-cv-01846-LHK Document1 Filed04/15/11 Page2 of 39
`Case5:11—cv-0'1846—LHK Documentt
`Fi|ed04/15‘/‘11 Page2 of 39
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`1
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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
`
`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
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`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
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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 that allows 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 product with a distinctive
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`user interface, icons, and eye-catching displays that gave the iPhone an unmistakable 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 Virtually identical to the iPhone. Moreover, the iPod touch utilizes the same user interface
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`icons and screen layout as the iPhone, displaying the unmistakable iPhone 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 subj ect of widespread
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`emulation by its competitors, who have attempted to capitalize on Apple’s success by imitating
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`Apple’s innovative technology, distinctive user interfaces, and elegant and distinctive product
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`APPLE INC. ’s COMPLAINT
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`Case5:11-cv-01846-LHK Document1 Filed04/15/11 Page3 of 39
`Case5:11—cv-0'1846—LHK Document1
`Fi|ed04/15/11 Pages of 39
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`design. One of the principal imitators is Samsung, which recently introduced the Galaxy line of
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`mobile phones and Galaxy Tab computer tablet, all of which use the Google Android operating
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`system, to compete with the iPhone and iPad. Instead of pursuing independent product
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`development, Samsung has chosen to slavishly copy Apple’s innovative technology, distinctive
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`user interfaces, and elegant and distinctive product and packaging design, in violation of Apple’s
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`valuable intellectual property rights. As alleged below in detail, Samsung has made its Galaxy
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`phones and computer tablet work and look like Apple’s products through widespread patent and
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`trade dress infringement. Samsung has even misappropriated Apple’s distinctive product
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`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.
`
`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.
`
`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
`
`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
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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.
`
`APPLE lNC.’S COMPLAINT
`sf-298 1926
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`2
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`la.)
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`Case5:11-cv-01846-LHK Document1 Filed04/15/11 Page4 of 39
`Case5:11—cv-01846—LHK Document1
`Fi|ed04/15/11 Page4 of 39
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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.
`
`JURISDICTION
`
`10.
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`This Court has subject matter jurisdiction under 15 U.S.C. § 1121 (action arising
`
`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 (supplementaljurisdiction).
`
`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 and 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
`
`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
`
`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. §§ l391(b) and (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 COMPLAINT
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`Case5:11-cv-01846-LHK Document1 Filed04/15/11 Page5 of 39
`Case5:11—cv-01846—LHK Document1
`Fi|ed04/15/11 Page5 of 39
`
`BACKGROUND
`
`APPLE ’S INNOVATIONS
`
`13.
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`Apple is a leading designer and manufacturer of mobile communication devices,
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`personal computers, and portable digital media players. As a result of its significant investment
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`in 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-TouchTM 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.
`
`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, a tactile user interface that allows users to
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`control the phone with their fingers, mobile computing power to run diverse pre-installed and
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`downloadable applications, and functionality to gain full access to the Internet. These features
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`were combined in an elegant glass and stainless steel case with a distinctive user interface that
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`gave the iPhone an immediately recognizable look.
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`15.
`
`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 it immediately became uniquely
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`associated with Apple as its source. Reviewers and analysts universally praised the iPhone for its
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`“game changing” features. Time Magazine listed the iPhone number one on its List of Top Ten
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`Gadgets for 2007, noting that “[t]he iPhone changed the way we think about how mobile media
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`devices should look, feel and perform.” The New York Times called it “revolutionary.” As of
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`March 2011, more than 108 million iPhones had been sold worldwide.
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`16.
`
`Also in 2007, Apple launched the iPod touch, a digital music player. The iPod
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`touch incorporated the distinct style of the iPhone and also became an immediate success. By
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`March 2011, Apple had sold over 60 million units.
`
`17.
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`After introducing the iPhone, Apple continued to innovate and achieve success
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`with a series of pioneering designs——more sophisticated, advanced versions of the iPhone, and
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`then, in 2010, the iPad. The iPad is a computer tablet with a color 9.7-inch touch screen that
`
`APPLE INc.’s COMPLAINT
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`Case5:11-cv-01846-LHK Document1 Filed04/15/11 Page6 of 39
`Fi|ed04/15/11
`Case5:11—cv-01846—LHK Documentt
`Page6 of 39
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`allows users to manipulate icons and data with their fingers in the same fashion as the iPhone and
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`iPod touch screens. Reviewers and analysts immediately recognized the iPad as a revolutionary
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`product, describing it as a “winner” and a “new category of device” that would “replace laptops
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`for many people.”
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`18.
`
`No computer product that preceded the iPad looked like the iPad, but its design did
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`resemble other Apple products—namely, the iPhone and the iPod touch, thereby extending the
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`unique and innovative Apple design and trade dress to a new product—tablet computers. In its
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`first 80 days on the market, Apple sold 3 million iPad units. By March 2011, Apple sold over 19
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`million iPads.
`
`19.
`
`Apple’s iPhone, iPad and iPod touch products have been extensively advertised
`
`throughout the United States in virtually every media outlet, including network and syndicated
`
`television, the Internet, billboards, magazines and newspapers—with the vast majority of the
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`advertisements featuring photographs of the distinctive design of these products. App1e’s
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`advertising expenditures for these products for fiscal years 2007-2010 were in excess of $2
`
`billion.
`
`20.
`
`In addition, Apple’s iPhone, iPod touch, and iPad products have received
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`unsolicited comment and attention in print and broadcast media throughout the world. Each new
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`generation of these Apple products is the subj ect of positive commentary and receives unsolicited
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`praise from independent media commentators. Frequently, these unsolicited commentaries are
`
`accompanied by images of the iPhone, iPad, and iPod touch products, including their unique
`
`packaging.
`
`21.
`
`The Apple iPhone, iPod touch, and iPad product design has come to represent and
`
`symbolize the superb quality of Apple’s products and enjoys substantial goodwill among
`
`consumers. The iPad, iPhone, and iPod touch have garnered Widespread acclaim for their unique
`
`product design and outstanding performance. Time Magazine named the iPad one of the 50 Best
`
`Inventions of the Year 2010, Popular Science heralded it as the Top Tablet in its Best of What’s
`
`New 2010 feature, and the popular technology blog Engadget selected the device as both the 2010
`
`Editors’ Choice Gadget of the Year and Tablet of the Year. In addition, the iPad received a 2010
`
`APPLE INC.’S COMPLAINT
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`Red Dot Award for Product Design and was nominated for the 2010 People’s Design Award.
`
`The iPhone has received several awards over the years, including a 2008 Design and Art
`
`Direction (D&AD) “Black Pencil” award, a 2008 International Forum (iF) Product Design
`
`Award, and the 2008 lntemational Design Excellence Award (IDEA) Best in Show. More
`
`recently, Engadget named the iPhone 4 the 2010 Editors’ Choice Phone of the Year, and the
`
`device received the Best Mobile Device award at the Mobile World Congress in February 2011.
`
`Engadget also included the iPhone in its feature on the 10 Gadgets That Defined the Decade. The
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`iPod touch won the 2008 D&AD “Yellow Pencil” award as well as the 2008 iF Product Design
`
`Award.
`
`APPLE ’s INTELLECTUAL PROPER TY RIGHTS
`
`Apple’s Utilig Patents
`
`22.
`
`Apple has protected its innovative designs and cutting-edge technologies through a
`
`broad range of intellectual property rights. Among those rights are the utility patents listed
`
`below. Apple’s utility patents cover many of the elements that the world has come to associate
`
`with Apple’s mobile devices. These include patents covering fundamental features of the Multi-
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`TouchTM user interface that enable App1e’s devices to understand user gestures and to respond by
`
`performing a wide variety of functions, such as selecting, scrolling, pinching, and zooming.
`
`23.
`
`In addition, Apple has patented many of the individual features that together add
`
`up to the high-quality experience that users have come to associate with Apple products. Apple’s
`
`innovations ranging from the arrangement of text messages on the screen, to the way images and
`
`documents appear to “bounce back” when the user scrolls too far, down to movement of the
`
`buttons have been recognized by the United States Patent and Trademark Office as patent-worthy
`
`contributions to the art.
`
`24.
`
`Among the patents that Apple has been awarded are the patents listed below,
`
`attached as Exhibits 1-7, to which Apple owns all rights, title, and interest.
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`APPLE INc.’s COMPLAINT
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`Case5:11-cv-01846-LHK Document1 Filed04/15/11 Page8 of 39
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`Patent Number
`
`Title
`
`7,812,828 (the “’828 patent”)
`
`Ellipse Fitting For Multi-Touch Surfaces
`
`7,669,134 (the “’ 134 patent”)
`
`Method and Apparatus For Displaying
`Information During An Instant Messaging
`Session
`
`6,493,002 (the “’002 patent”)
`
`7,469,381 (the “’381 patent”)
`
`Method and Apparatus for Displaying and
`Accessing Control and Status Information
`in a Computer System
`
`List Scrolling and Document Translation,
`Scaling and Rotation on a Touch-Screen
`Display
`
`7,844,915 (the “’9l5 patent”)
`
`Application Programming Interfaces for
`Scrolling Operations
`
`7,853,891 (the “’89l patent”)
`
`Method and Apparatus for Displaying a
`Window for a User Interface
`
`7,863,533 (the “’533 patent”)
`
`Cantilevered Push Button Having Multiple
`Contacts and Fulcrums
`
`Apple’s Design Patents
`
`25.
`
`Apple also has protected its innovative designs through design patents issued by
`
`the United States Patent and Trademark Office. The Apple design patents cover the many famous
`
`ornamental features of Apple’s devices, such as the flat black face, metallic bezel, and the
`
`distinctive matrix of application icons. Apple owns all right, title, and interest in and to each of
`
`the asserted design patents listed below, copies of which are attached as Exhibits 8-10.
`
`Patent Number
`
`Title
`
`D627,790 (the “’D790 patent”)
`
`Graphical User Interface For a Display
`Screen or Portion Thereof
`
`D602,0l6 (the “D016 patent”)
`
`D618,677 (the “’D677 patent”)
`
`Electronic Device
`
`Electronic Device
`
`APPLE INC.’s COMPLAINT
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`Apple’s Trade Dress
`
`26.
`
`Apple holds trade dress protection in the design and appearance of the iPhone, the
`
`iPod touch, and the iPad, together with their distinctive user interfaces and product packaging.
`
`iPhone Trade Dress
`
`27.
`
`The iPhone is radically different from the devices that preceded it. It has a
`
`distinctive shape and appearance—a flat rectangular shape with rounded corners, a metallic edge,
`
`a large display screen bordered at the top and bottom With substantial black segments, and a
`
`selection of colorful square icons with rounded corners that mirror the rounded corners of the
`
`iPhone itself, and which are the embodiment of Apple’s innovative iPhone user interface. As
`
`shown below, the end result is an elegant product that is more accessible, easier to use, and much
`
`less technically intimidating than previously available smart phones and PDAs. The iPhone
`
`product design immediately became closely associated with Apple.
`
`
`
`28.
`
`Each of these elements of the iPhone product configuration is distinctive and
`
`serves to identify Apple as the source of the iPhone products. Moreover, none of these elements
`
`is functional.
`
`29.
`
`Extending its innovative style to the packaging, Apple created an equally elegant
`
`and distinctive packaging for the iPhone products. The packaging features a compact black or
`
`black-and-white box with eye-catching metallic silver lettering on a matte black surface, with the
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`APPLE lNC.’S COMPLAINT
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`sides of the top of the box extending down to cover the bottom portion of the box completely.
`
`The outside of the box has a clean style——with minimal wording and a simple, prominent, nearly
`
`full-size photograph of the iPhone product itself. The style carries over within the box——with the
`
`iPhone cradled within a specially designed black display so that the iPhone, and nothing else, is
`
`immediately Visible when the box is opened. The accessories and instructional materials are
`
`hidden from View underneath the iPhone tray—emphasizing the accessible nature of the iPhone
`
`itself. The design entices purchasers to pick up the iPhone and try it out, without worrying that it
`
`is complicated.
`
`30.
`
`As with the product configuration itself, each of these elements of the iPhone
`
`packaging is distinctive and serves to identify Apple as the source of the iPhone products.
`
`26
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`Moreover, none of these elements is functional—and there are a plethora of alternative packaging
`
`options available to Apple’s competitors.
`
`iPod touch Trade Dress
`
`31.
`
`The iPod touch has a product configuration and physical appearance that is
`
`virtually identical to the iPhone. It has a flat rectangular shape with rounded corners, a silver
`
`edge, a large display screen bordered at the top and bottom with substantial black segments, and a
`
`selection of colorful square icons with rounded corners that mirror the rounded corners of the
`
`iPod touch (and the iPhone), and which are the embodiment of Apple’s innovative iPod touch
`
`user interface. As shown below, the end result is an elegant product that invites use. Like the
`
`iPhone, the iPod touch immediately became closely associated with Apple.
`
`32.
`
`Each of these elements of the iPod touch product configuration is distinctive and
`
`serves to identify Apple as the source of the iPod touch products. Moreover, none of these
`
`elements is functional.
`
`iPad Trade Dress
`
`33.
`
`Because it embodies the same trade dress elements as the iPhone, the iPad
`
`resembles a “grown-up iPhone.” It has a flat rectangular shape with rounded comers, a silver
`
`edge, a large display screen with a substantial black border, and a selection of Apple’s colorful
`
`APPLE INc.’s COMPLAINT
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`square icons——a1l with rounded corners that mirror the rounded corners of the iPad, iPhone and
`
`iPod touch.
`
`34.
`
`Each of these elements of the iPad product configuration is distinctive and serves
`
`to identify Apple as the source of the iPad products. Moreover, none of these elements is
`
`functional.
`
`35.
`
`The packaging for the iPad is similarly innovative and, like the iPhone, utilizes a
`
`box that, when opened, prominently displays the product so that it is immediately visible, with all
`
`other accessories and materials layered beneath it. Also similar to the iPhone, the outside of the
`
`iPad box has a clean style—with minimal silver metallic wording and a simple, prominent, nearly
`
`full-size photograph of the iPad product on a white background.
`
`APPLE lNC.’S COMPLAINT
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`
`
`36.
`
`Each of these elements of the iPad packaging is distinctive and serves to identify
`
`Apple as the source of the products. Moreover, none of these elements is functional.
`
`Trade Dress Registrations
`
`37.
`
`38.
`
`Apple owns three registrations for the design and configuration of the iPhone.
`
`U.S. Registration No. 3,470,983 is 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. Attached her