13-09-26 Apple Response to Google Petition for Fed. Cir. Rehearing

7/28/2019 13-09-26 Apple Response to Google Petition for Fed. Cir. Rehearing

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No. 2012-1338

UNITED STATES COURT OFAPPEALS

FOR THE FEDERAL CIRCUIT

APPLE INC.,

Appellant,

v.

INTERNATIONAL TRADE COMMISSION,

Appellee,

and

MOTOROLAMOBILITY, INC.,

Intervenor.

_________________

ONAPPEAL FROM THE UNITED STATES INTERNATIONAL TRADE COMMISSION

IN INVESTIGATION NO. 337-TA-750

_________________

APPLE INC.S RESPONSE TO PETITION FOR PANEL

REHEARING AND REHEARING EN BANC

_________________

Mark G. DavisBrian E. Ferguson

Weil, Gotshal & Manges LLP

1300 Eye Street, NW

Washington, DC 20005

Matthew D. Powers

Tensegrity Law Group LLP

201 Redwood Shores Pkwy

Redwood Shores, CA 94065

E. Joshua RosenkranzAlyssa Caridis

Orrick, Herrington & Sutcliffe LLP

51 West 52nd Street

New York, NY 10019

(212) 506-5000

Mark S. Davies

Rachel M. McKenzie

T. Vann PearceAmisha R. Patel

Orrick, Herrington & Sutcliffe LLP

1152 15th Street, N.W.


Attorneys for Appellant Apple Inc.

Case: 12-1338 Document: 79 Page: 1 Filed: 09/26/2013


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CERTIFICATE OF INTEREST

Counsel for appellant certifies the following:

1. We represent Apple Inc.

2. That is the real name of the real party in interest.

3. Apple Inc. has no parent corporation. No publicly held

company owns 10 percent or more of Apple Inc.s stock.

4. The following law firms and partners or associates appeared for

Apple Inc. in the ITC or are expected to appear in this court:

ORRICK, HERRINGTON SUTCLIFFE LLP:

E. Joshua Rosenkranz

Mark S. Davies

Rachel M. McKenzie

T. Vann Pearce

Alyssa Caridis

Amisha R. Patel

WEIL GOTSHAL & MANGES LLP:

Carrie M. Anderson

Joshua A. Bachrach

Eva A. Belich

Jonathan Bloom

Carmen E. Bremer

Melissa Colon-BosoletCaitlyn M. Campbell

Anne M. Cappella

Brian C. Chang

Reed Collins

Justin L. Constant



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ii

WEIL GOTSHAL & MANGES LLP (continued):

Isaac S. Crum

Mark G. Davis

Timothy E. DeMasiDavid M. DesRosier

Michael Eisenberg

Brian E. Ferguson

Erick Flores

Jacqueline T. Harlow (no longer with firm)

Erin Jones (no longer with firm)

Edward S. Jou

Jason D. Kipnis

Kevin KudlacJason J. Lang

Kathy A. Le (no longer with firm)

Joseph H. Lee (no longer with firm)

Christopher T. Marando

Meghan A. McCaffrey

Arjun Mehra

Rodney R. Miller

Adrian C. Percer

Penny R. ReidDanielle Rosenthal (no longer with firm)

Stephen K. Shahida

Caroline K. Simons

Stefani Smith (no longer with firm)

Christin Sullivan

Rachelle H. Thompson

Robert T. Vlasis

Megan H. Wantland

Robert Watkins (no longer with firm)

Elizabeth S. Weiswasser

Timothy C. Welch

Jeff L. White

Melissa J. Whitney

Jenny C. Wu (no longer with firm)

Patricia Young (no longer with firm)



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iii

COVINGTON & BURLING LLP:

Christopher K. Eppich

Samuel F. Ernst

Robert D. FramJessica R. Gioia

Danielle L. Goldstein

Iris Y. Gonzalez

Leslie N. Harvey

Christine Saunders Haskett

Robert T. Haslam

Krista S. Jacobsen (no longer with firm)

R. Anthony Lopez

L.J. Chris MartiniakJeffrey T. Pearlman

Nathan Shafroth

Anupam Sharma

Ranganath Sudarshan

Winslow B. Taub

TENSEGRITY LAW GROUP LLP:

Steven S. CherenskyPaul T. Ehrlich

Monica Mucchetti Eno

Robert L. Gerrity

Azra Hadzimehmedovic

Matthew D. Powers

BRIDGES & MAVRAKAKIS LLP

Lawrence Lien

Christopherh Lubeck

Michael T. Pieja

James A. Shimota



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iv

Dated: September 26, 2013 Respectfully submitted,

/S/ E. Joshua Rosenkranz


Orrick, Herrington & Sutcliffe LLP51 West 52nd Street

New York, NY 10019

(212) 506-5000

Attorney for Appellant



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TABLE OF CONTENTS

Page

v

INTRODUCTION.....................................................................................1

BACKGROUND........................................................................................2

ARGUMENT.............................................................................................4

I. THE PANEL DID NOT OVERLOOK OR MISAPPREHEND

ANY POINT OF LAW OR FACT IN NOT ORDERING A

REMAND TO ADDRESS WHETHER CLAIM 10 IS

ANTICIPATED BY PERSKI 455 ...................................................4

II. THE PANEL DID NOT OVERLOOK OR MISAPPREHEND

ANY POINT OF LAW OR FACT IN NOT ORDERING AREMAND TO ADDRESS WHETHER THE IPHONE

PRACTICES CLAIM 10 OF THE 607 PATENT............................7

III. THE PANEL DID NOT OVERLOOK OR MISAPPREHEND

ANY POINT OF LAW OR FACT RELATED TO THE

NEXUS BETWEEN CLAIM 10 AND SECONDARY

CONSIDERATIONS OF NONOBVIOUSNESS.............................9

IV. THERE IS NO BASIS FOR EN BANCREVIEW.........................14

CONCLUSION .......................................................................................14



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TABLE OF AUTHORITIES

Page(s)

CASES

Anderson v. City of Boston,

375 F.3d 71 (1st Cir. 2004)....................................................................5

Bailey v. Dart Container Corp. of Michigan,

292 F.3d 1360 (Fed. Cir. 2002) ......................................................4-5, 8

Crocs, Inc. v. United States Intl Trade Commn,

598 F.3d 1294 (Fed. Cir. 2010) ...........................................................10

Crown Operations Intl, Ltd. v. Solutia Inc.,289 F.3d 1367 (Fed. Cir. 2002) .............................................................6

Demaco Corp. v. F. Von Langsdorff Licensing, Ltd.,

851 F.2d 1387 (Fed. Cir. 1988) ...........................................................10

Easley v. Reuss,

532 F.3d 592 (7th Cir. 2008) .................................................................1

KSR Intl Co. v. Teleflex, Inc.,

550 U.S. 398 (2007) .............................................................................12

Pentax Corp. v. Robison,

135 F.3d 760 (Fed. Cir. 1998) ...............................................................5

Rambus Inc. v. Rea,

No. 2012-1634, 2013 WL 5312505 (Fed. Cir. Sept. 24, 2013) ............13

Sage Prods., Inc. v. Devon Indus., Inc.,

126 F.3d 1420 (Fed. Cir. 1997) ...........................................................11

SmithKline Beecham Corp. v. Apotex Corp.,

439 F.3d 1312 (Fed. Cir. 2006) .............................................................5

In re Suitco Surface, Inc.,

603 F.3d 1255 (Fed. Cir. 2010) ...........................................................10



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vii

In re Watts,

354 F.3d 1362 (Fed. Cir. 2004) ...........................................................11

Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,

683 F.3d 1356 (Fed. Cir. 2012) ...........................................................12

RULES

Fed. R. App. P. 40 ......................................................................................1



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INTRODUCTION

The Court has ordered this matter remanded to the International

Trade Commission for resolution of specific questions arising from

Motorola Mobility, Inc.s ongoing infringement of two Apple Inc.

patents. Motorolas rehearing petition, however, asks the Court to

order the ITC to address a host of additional issues. Motorola did not

mention these additional issues in its briefing to the panel. Panel

rehearing, of course, is suitable only when the Court has overlooked or

misapprehended points of law or fact. Fed. R. App. P. 40. It goes

without saying that the panel cannot have overlooked or

misapprehended an issue that was not presented to it. Easley v. Reuss,

532 F.3d 592, 593 (7th Cir. 2008). The rehearing petition should be

denied.

Motorolas four page en banc request rests on a misreading of the

Courts opinion and raises no issues suitable for that extraordinary

proceeding.



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BACKGROUND

Apple filed a complaint with the ITC alleging, as relevant here,

that Motorola is infringing two Apple patents. The ITC denied Apple

any relief. Apple appealed.

As to U.S. Patent No. 7,812,828, the Court vacated the ITCs

decision that Motorola Mobility, Inc. does not infringe the 828 patent

claims and remand[ed] the case to allow the ITC to consider in the first

instance whether the accused products infringe under the correct

construction. Op. 20.1

As to U.S. Patent No. 7,663,607, the Court found two errors. The

ITC had ruled that all asserted claims were anticipated by a reference

known as Perski 455. In so holding, the ITC had found that the

provisional application to which Perski 455 claimed priority,

Perski 808, incorporated another reference, Morag 662, that disclosed

the pixilated image element of claim 10. The Court agreed with Apple

1 For the purposes of this response, the panels decision isabbreviated as Op., Motorolas Petition for Panel Rehearing and

Rehearing En Banc is abbreviated as Pet., Apples Opening Brief

before the panel is abbreviated as AOB, Motorolas Brief before the

panel is abbreviated as MB, and Apples Reply Brief before the panel

is abbreviated as ARB.



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that this was error: Perski 808 does not even refer to the particular

functionality in Morag that detects the presence of a stylus, let alone

the process that outputs touch event information to form a pixilated

image, as required by claim 10. Op. 9. Because Perski 808 does not

incorporate by reference the anticipatory subject matter from Morag,

the ITCs finding that Perski 455 anticipates claim 10 of the 607 patent

lacks substantial evidence. Id. The Court vacat[ed] the ITCs decision

that claim 10 of the 607 patent would have been obvious and

remand[ed] the case for further proceedings. Op. 17.

The Court also ruled that the ITC erred by ignoring objective

indications of nonobviousness. Op. 14-18. The ITC analyzed only the

disclosure of the prior art references and based solely on that evidence

determined the claims would have been obvious. Op. 15. The Court

noted that this error was not harmless because Apple presented

compelling secondary considerations evidence that may have rebutted

even a strong showing under the first three Graham factors, and the

ITC failed to grapple with it. Op. 16. This included evidence of

industry praise, copying and commercial success. Op. 16-17. The Court

remanded so the ITC can consider the scope and content of the prior



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art in conjunction with the evidence of secondary considerations and

determine in the first instance whether claim 10 would have been

obvious to one of skill in the art at the time of the invention. Op. 17-

18.

ARGUMENT

I. THE PANEL DID NOT OVERLOOK OR MISAPPREHEND


REMAND TO ADDRESS WHETHER CLAIM 10 IS

ANTICIPATED BY PERSKI 455

Motorola argues that the Court mistakenly failed to remand for

additional fact finding on the issue of whether the Perski 455 patent is

prior art to claim 10. Pet. 2. The Court could not have overlooked or

misapprehended this issue because Motorola never made this meritless

argument to the Court. No remand is warranted.

Motorolas appellate brief did not argue that Perski 455 alone

anticipates claim 10 of the 607 patent. Motorola argued at length (MB

45-48) that the Court should find that Perski 808 incorporated the

relevant parts of Morag 662. Motorola could also have argued to the

Court that even if Morag 662 was not incorporated into Perski 808 the

Perski 455 patent anticipates claim 10. See Bailey v. Dart Container

Corp. of Michigan, 292 F.3d 1360, 1362 (Fed. Cir. 2002) (an appellee



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can present in this court all arguments supported by the record and

advanced in the trial court in support of the judgment as an appellee,

even if those particular arguments were rejected or ignored by the trial

court). For whatever reasons, Motorola did not make this available

argument to the Court. After losing on the arguments it selected to

brief, Motorola cannot use the panel rehearing process to revive

abandoned arguments. Pentax Corp. v. Robison, 135 F.3d 760, 762

(Fed. Cir. 1998) (a party may not raise new and additional matters for

the first time in a petition for rehearing); SmithKline Beecham Corp. v.

Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (When a party

includes no developed argumentation on a point we treat the

argument as waived under our well established rule (quotingAnderson

v. City of Boston, 375 F.3d 71, 91 (1st Cir. 2004)).

Although panel rehearing turns on what the panel decided,

Motorola latches on to a statement in Apples reply brief. Pet. 5 (citing

ARB 17). Apples opening brief (at 64) explained that Apple conceived

of the 607 patents inventions and reduced them to practice in 2003.

On reply, Apple argued that if the Perski patent did not have an

earlier priority date based on the 808 provisional application, a



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remand would be appropriate to determine when Apple reduced its

invention to practice. ARB 17. Apples brief nowhere suggests that a

remand is necessary if the Court ruled (as it did) that no substantial

evidence supported the ITCs filing that Perski 455 anticipated claim

10.

Moreover, Motorolas late-breaking argument that Perski 455

alone can invalidate claim 10 is inconsistent with other, unchallenged,

holdings of the Court. The Court ruled: [b]ecause Perski 808 does

not incorporate by reference the anticipatory subject matter from

Morag, the ITCs finding that Perski 455 anticipates claim 10 of the

607 patent lacks substantial evidence. Op. 9 (emphasis added).

According to the Court, without Morag, Perski 455 cannot anticipate

claim 10. Because there are no relevant facts that additional remand

proceedings could identify, a remand is not warranted. See Crown

Operations Intl, Ltd. v. Solutia Inc., 289 F.3d 1367, 1375 (Fed. Cir.

2002).



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II. THE PANEL DID NOT OVERLOOK OR MISAPPREHEND


REMAND TO ADDRESS WHETHER THE IPHONE

PRACTICES CLAIM 10 OF THE 607 PATENT

Motorola contends that the panel should remand the issue of

whether secondary considerations have been established so that the

ITC can determine in the first instance if the iPhone practices claim

10. Pet. 9. By inviting this Court to revise its opinion to state that the

ITC must resolve whether the iPhone practices claim 10, Motorola is

again raising a meritless issue that it did not present to the panel. No

rehearing is warranted.

Motorolas appellate brief is devoid of any mention of the iPhone

failing to practice claim 10. Instead, Motorola told the panel that claim

10 is slightly different from claim 1 but has no additional limitations

relevant to the issues presented to this Court. MB 11. Motorola did

not raise claim 10 even though Apple singled out the ITCs errors

regarding claim 10. SeeAOB 66-67 (argument specific to claim 10).

Under the rules of this Court, Motorola was free to raise on appeal

the issue of whether the iPhone practices claim 10. At the ITC, Apple

presented evidence that the iPhone practices each limitation of each

asserted claim. SeeA238. The ALJ found it sufficient that Apple



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practiced claim 1 of the 607 patent and did not consider the other

claims, deeming such an analysis superfluous and immaterial. Id.

The ITC adopted this portion of the ALJs opinion. A498-500. Motorola

could have argued that the iPhones failure to practice claim 10 provides

an alternative basis for affirming the ITCs decision. See Bailey, 292

F.3d at 1362. It did not. This Court has no obligation to revise an

opinion to address an argument that Motorola could have raised but

elected to omit.

In any event, the panel has already vacat[e]d the ITCs decision

that claim 10 of the 607 patent would have been obvious and

remand[ed] for further proceedings, instructing the ITC to consider the

evidence regarding the scope and content of the prior art in

conjunction with the evidence of secondary considerations and

determine in the first instance whether claim 10 would have been

obvious to one of skill in the art at the time of the invention. Op. 17-

18. There is no dispute that Apples iPhone contains the limitations of

claim 10 that the Court found compelling for purposes of secondary

considerations, see Op. 16-17, e.g., a transparent touch panel ...

capable of recognizing multiple touch events that occur at different



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locations on the touch panel at the same time, A561. There is thus no

need for the panel to re-hear this issue.

III. THE PANEL DID NOT OVERLOOK OR MISAPPREHENDANY POINT OF LAW OR FACT RELATED TO THE NEXUS

BETWEEN CLAIM 10 AND SECONDARY

CONSIDERATIONS OF NONOBVIOUSNESS

Motorola argues that rehearing is required because [t]he panel

found that commercial success has been conclusively established, but

overlooked the required analysis to determine whether the features

of the multitouch screen that allegedly drive sales of the iPhone (and

that were the subject of alleged copying and industry praise) were

already present in the prior art. Pet. 10-11. Specifically, Motorola

faults the panel for not addressing any effect its finding that Perski 455

anticipates claim 1 might have on the question of nexus. Pet. 11.

Once again, Motorola faults the Court for overlooking an issue

that Motorola never brought to its attention. Apple presented evidence

of nexus between the sophisticated multipoint touch screen and the

secondary considerations in the context of all of the asserted claims of



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the 607 patent.2 Op. 16. At this point, Motorola could have come

forward with evidence that the commercial success and other secondary

considerations evidence was not due specifically to the invention set

forth in claim 10. See Demaco Corp. v. F. Von Langsdorff Licensing,

Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (there must of course be a

sufficient relationship between the commercial success and the

patented invention.). Motorola failed to do soinstead, it questioned

Apples evidence in a general fashion, never once mentioning claim 10

in its argument. See MB 57-60.

Having made the strategic decision to take an all or nothing

approach as to the secondary considerations evidence, Motorola cannot

now, in a petition for rehearing, argue that the Court should have

parsed the evidence on a claim-by-claim basis. In re Suitco Surface,

Inc., 603 F.3d 1255, 1261 (Fed. Cir. 2010) (finding that appellant

waived its right on appeal to present arguments on a claim-by-claim

basis when it failed to do so below).

2 See, e.g., AOB 53 (where, as here, a product is commercially

successful and practices a patent, these two facts, alone, establish a

prima facie case of nexus between the patent and the commercial

success, citing Crocs, Inc. v. United States Intl Trade Commn,

598 F.3d 1294, 1310-11 (Fed. Cir. 2010)).



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Relatedly, Motorola did not argue before either the panel or the

ITC that Perski 455 has any relevance to the obviousness inquiry. See

A4455-71 (relying only on SmartSkin and Rekimoto 033 as a basis for

finding the 607 patent obvious); MB 51-60 (same). Instead, Motorola

again made a strategic decision, both below and on appeal, to limit its

arguments concerning Perski 455 to the issue of anticipation. See

A4469-71 (limiting obviousness argument to the SmartSkin/Rekimoto

combination); and at A4443-55 (Perski 455 analysis limited to

anticipation). In the context of its obviousness analysis, the Court

therefore considered the scope and content of the prior art that

Motorola raised. Once again, it is too late for Motorola to revive

theories it abandoned at the trial level. In re Watts, 354 F.3d 1362,

1368 (Fed. Cir. 2004) ([w]e decline to consider the appellants new

argument regarding the scope of [the prior art] raised for the first time

on appeal); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1426

(Fed. Cir. 1997) (this court does not review that which was not

presented to the district court).

Nor did Motorola argue that there must be nexus between the

iPhone and what is both claimed and novel in the claim[s] of the 607



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patent. Pet. 10 (citation omitted). Rather, Motorola asserted only that

[f]or commercial success to be probative evidence of nonobviousness, a

nexus must be shown between the claimed invention and the evidence

of commercial success. MB 58 (citing Wm. Wrigley Jr. Co. v. Cadbury

Adams USA LLC, 683 F.3d 1356, 1363 (Fed. Cir. 2012)).

In any event, the Courts decision is not contrary to the principle

Motorola now advances for the first time, that the required nexus is

between the product and what is novel in the claims of the patent. The

panel stated that Apple presented compelling secondary considerations

evidence, Op. 16, and evidence showing a nexus between the

undisputed commercial success of the iPhone and the patented

multitouch functionality, Op. 17. That is a correct characterization of

the evidence, even with claim 1 deemed anticipated by Perski 455. The

mere fact that claim 1 has been invalidated does not mean, as Motorola

suggests, that those elements are irrelevant to the novelty of the

display arrangement set forth in claim 10. It is well established that a

patent composed of several elements is not proved obvious merely by

demonstrating that each of its elements was, independently, known in

the prior art. KSR Intl Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007);



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Rambus Inc. v. Rea, No. 2012-1634, 2013 WL 5312505, at *8 (Fed. Cir.

Sept. 24, 2013) (While objective evidence of nonobviousness lacks a

nexus if it exclusively relates to a feature that was known in the prior

art, the obviousness inquiry centers on whether the claimed invention

as a whole would have been obvious. (citations omitted)).

The elements of claim 10 fully support the Courts nexus finding.

Like claim 1, claim 10 requires a transparent touch panel that is

capable of recognizing multiple touch events that occur at different

locations on the touch panel at the same time. But claim 10 is even

more closely linked to the commercial success of the iPhone and the

other evidence of secondary considerations than claim 1. Claim 10 is

specifically directed to a display having a screen for displaying a

graphical user interface and also requires the formation of a pixelated

image by a host device (computer/processor) based on the touches.

These additional limitations not only undisputedly correspond to

features in the iPhone, but include the limitations the panel agreed

were not found in Perski 455. See Op. 9. Accordingly, the evidence

fully supports the finding of a nexus between claim 10 and the evidence

of secondary considerations.



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IV. THERE IS NO BASIS FOR EN BANCREVIEW

Apart from featuring case-specific quibbles that will never recur,

Motorolas cursory petition for en banc review is based on

mischaracterizations of the Courts opinion. The Court did not hold

that any party can establish commercial success without showing the

iPhone practices the relevant claim. See Pet. 11. As explained above,

the issue was not presented to the Court and if necessary the ITC will

resolve on remand the question of which claims the iPhone practices.

Nor did the Court alter the standard for establishing nexus between

sales of a product and the claimed invention. See Pet. 13. That issue

also was not presented to the Court. And, as also explained above,

there is no doubt that the success of the iPhone is connected to claim 10.

CONCLUSION

For the foregoing reasons, Motorolas Petition for Panel Rehearing

and Rehearing En Banc should be denied.



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Dated: September 26, 2013 Respectfully submitted,



Orrick, Herrington & Sutcliffe LLP51 West 52nd Street

New York, NY 10019

(212) 506-5000




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CERTIFICATE OF SERVICE

I hereby certify that on this 26th day of September 2013, Apple

Inc.s Response to Petition for Panel Rehearing and Rehearing En Banc

was electronically filed with the Clerk of the Court using CM/ECF

which will automatically serve the following counsel of record who are

registered for CM/ECF:

Megan Michele Valentine

International Trade Commission

Suite 707-K

500 E Street, S.W.


[email protected]

Andrea C. Casson

International Trade Commission

Office of the General Counsel

Suite 707-D

500 E Street, S.W.


[email protected]

Counsel for Appellee International

Trade Commission

Charles K. Verhoeven

Quinn Emanuel Urquhart & Sullivan, LLP

22nd Floor

50 California Street

San Francisco, CA [email protected]



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Edward J. DeFranco


Firm: 212-849-7000

51 Madison Avenue22nd Floor

New York, NY 10010-1601

[email protected]

David A. Nelson


500 West Madison Street

Chicago, IL 60661

[email protected]

Alexander Rudis


51 Madison Avenue

22nd Floor

New York, NY 10010-1601

[email protected]

Matthew A. TraupmanQuinn Emanuel Urquhart & Sullivan, LLP

51 Madison Avenue

22nd Floor

New York, NY 10010-1601

[email protected]

Counsel for Intervenor Motorola Mobility, Inc.




Documents

13-09-26 Apple Response to Google Petition for Fed. Cir. Rehearing