IN THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL …files.ctctcdn.com/a990d50b001/ff4ed949-4780-4790-9e3c-c7... · 2015-08-17 · 42. Budd Steinhilber, FIDSA Design Consultant

No. 2014-1335

IN THE

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

_______

APPLE INC., a California corporationPlaintiff-Appellee,

–– v. ––

SAMSUNG ELECTRONICS CO., LTD., a Korean corporation,SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation,

SAMSUNG TELECOMMUNICATIONS AMERICA LLC,a Delaware limited liability company

Defendants-Appellants,

_________________

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF CALIFORNIA, CASE NO. 11-CV-1846,JUDGE LUCY H. KOH

_________________

AMICI CURIAE BRIEF OF 54 DISTINGUISHEDINDUSTRIAL DESIGN PROFESSIONALS

IN SUPPORT OF AFFIRMANCE_________________

Rachel Wainer ApterWill MelehaniORRICK, HERRINGTON

& SUTCLIFFE LLP51 West 52nd StreetNew York, NY 10019(212) 506-5000

Mark S. DaviesKatherine M. KoppORRICK, HERRINGTON

& SUTCLIFFE LLP1152 15th Street, NWWashington, DC 20005(202) 339-8400

Case: 14-1335 CASE PARTICIPANTS ONLY Document: 105 Page: 1 Filed: 08/04/2014

i

CERTIFICATE OF INTEREST

Pursuant to Federal Circuit Rules 29(a) and 47.4, counsel for

Amici Curiae certifies that:

1. The full names of every party or amicus represented in the

case by me are:

54 Distinguished Industrial Design Professionals in Supportof Affirmance (See Attachment to Certificate of Interest).

2. The name of the real party in interest (if the party named in

the caption is not the real party in interest) represented by me is:

Not Applicable

3. All parent corporations and any publicly held companies

that own 10 percent or more of stock of any party or amicus curiae

represented by me are:

Not Applicable

4. The names of all law firms and the partners or associates

that appeared for a party or amicus now represented by me in the trial

court or are expected to appear in this Court are:


ii

ORRICK, HERRINGTON & SUTCLIFFE LLP:

Mark S. DaviesRachel Wainer ApterKatherine M. KoppWill Melehani

Date: August 4, 2014 By: /s/ Mark S. Davies

Mark S. DaviesOrrick, Herrington & Sutcliffe LLP1152 15th Street, NWWashington, DC 20005Telephone: (202) 339-8400Fax: (202) 339-8500Email: [email protected]

Attorney for Amici Curiae


iii

ATTACHMENT TO CERTIFICATE OF INTEREST

54 Distinguished Industrial Design Professionalsin Support of Affirmance* **

1. Charles L. Mauro CHFP, IDSA, HFESPresident & Founder, MauroNewMediaChairman, IDSA Design Protection Section

2. James Douglas Alsup, Jr. IDSAPresident/Principal, Alsup Watson Associates, Inc.

3. Charles Austen AngellCEO, Modern Edge

4. Daniel W. AshcraftChief Design Officer & CEO, Ashcraft Design

5. Joseph M. BallayPrincipal & CAO, MAYA Design, Inc.

6. Alex Bally, FIDSAPartner, Nexxspan Healthcare LLC

7. Michelle S. Berryman, FIDSADirector, Experience Design Servs., THINK InteractiveFormer President, IDSAChair Emeritus, IDSA

* Institutions are listed for affiliation purposes only. All signato-ries are participating in their individual capacity and not on behalf oftheir institutions.

** Emily Fisher (Design Research Associate) at MauroNewMediaalso contributed reference research to this brief.


iv

8. Eric Beyer, IDSAPartner, Copesetic Inc.Designer/Account Manager, Pulos Design Assocs.Former IDSA Board Member, Section VP

9. Dr. Robert Ian Blaich, FIDSAPresident, Blaich Assocs., Design Mgmt. ConsultantsFellow, Royal Society of Arts and Industry-U.K.Former President, Int’l Council Soc’y of Indus. DesignersFormer Vice President Corporate Design and Commc’ns, Herman

Miller Inc.Former Senior Managing Director of Design, Royal Philips Elecs.

10. Gordon Paul Bruce, IDSAIndus. Design Consultant, Gordon Bruce Design LLC

11. Robert BrunnerFounder/Partner, Ammunition LLC

12. William Bullock, FIDSAIndus. Designer

13. Bruce Claxton, FIDSAProfessor, Design Mgmt., Savannah College of Art and DesignRegional Advisor, ICSIDBoard of Directors, China Bridge Int’lFormer President, IDSA

14. Del CoatesProf. Emeritus of Indus. Design, San Jose State Univ.Former Chair of Indus. Design, College for Creative StudiesFormer Research Designer, Ford's Advanced Vehicle Concepts

Dept.Former Project Leader, Herman Miller Research Div.Former President, Michigan Chapter IDSACo-Founder,Texas Chapter IDSA

15. Robert J. Cohn, IDSAPresident, Product Solutions Inc.


v

16. James CouchVP Client Servs., Lextant

17. George Russell Daniels, L/IDSACEO, Daniels Development Grp., LLC

18. Mark DzierskManaging Director, LUNARFormer President, IDSA

19. John EdsonPresident, LUNAR

20. Gerard FurbershawCo-Founder & VP of Licensing and Investments, LUNAR

21. Carroll Gantz, FIDSAPresident, Carroll Gantz DesignFormer President, IDSAChairman Emeritus, IDSARecipient, IDSA Personal Recognition Award DesignFormer Director of Design, Black and Decker U.S. Inc.Former Manager, Design Dept., The Hoover Co.

22. John Leavitt Gard, L/IDSAProduct Design Director, Design Consultants

23. Michael Garten, IDSAProject Mgmt. Grp. Manager, Teague

24. Donald M. GenaroRetired Senior Partner, Henry Dreyfuss Assocs.

25. Betsy Goodrich, FIDSACo-Founder & VP Design, MANTA Product Development Inc.

26. Stephen G. Hauser FIDSAConsultant/Founder, Hauser, Inc.


vi

27. James J. Lesko, L/IDSAVP Design and Mfg., IKN

28. Scott David Mason, IDSAOwner, Scott Mason DesignMid-Atlantic Chapter Vice Chair, IDSA

29. Patricia Moore, Ph.DPresident, MooreDesign Assocs. LLC

30. Louis Nelson, IDSA, AIGA, SEGDPresident & Founder, The Office of Louis Nelson

31. Christopher J. Parke, IDSASr. Industrial Designer /Engineer

32. Nancy Perkins, FIDSACEO, Dallas Lighthouse for the Blind, Inc.

33. Gordon Perry, IDSAGordon Randall Perry Design

34. Samuel B. Petre, IDSASenior Indus. Designer, bb7

35. Dale Raymond, IDSA, HFESPrincipal, Design-Lift, LLC

36. Raymond W. Riley, IDSAExec. Creative Director, Device Design Grp., Microsoft Corp.

37. Brian Roderman, FIDSAPresident & Chief Innovation Officer, IN2 Innovation

38. Bryce G. Rutter, Ph.D.Founder & CEO, Metaphase Design Group, Inc.

39. Andrew Serbinski, IDSAPresident, Machineart Indus. Design


vii

40. RitaSue Siegel, IDSA, AIGA, DMIFounder & President, RitaSue Siegel Resources

41. Paul Specht, FIDSAPresident, PBS Design, Inc.

42. Budd Steinhilber, FIDSADesign Consultant

43. John V. Stram, L/IDSA

44. Kerstin Nelsen Strom, IDSADesign Director, Strom StudiosSection Chair, IDSA Ecodesign Section

45. Mathieu Turpault, IDSAPartner & Director of Design, Bresslergroup

46. Gary van Deursen L/IDSAConsultant/Founder, Van Deursen LLCFormer Corp. VP, The Stanley WorksFormer Corp. Sr. VP, ColemanFormer Corp. Global VP, Black & Decker

47. Frank von HolzhausenPresident, GROUP4

48. Sohrab VossoughiPresident, Ziba Design, Inc.

49. Arnold WassermanPartner, Collective InventionCo-Founder & Chairman, The Idea FactoryFormer Director of Design, Raymond Loewy Co.Former Director, Corporate Design & Human Factors, NCR Corp.Former Director, Corporate Design Strategy, Xerox CorpFormer Fellow for Design Strategy, IDEO

50. Allan E. WeaverIndustrial designer, retired


viii

51. Edmund A. Weaver, L/IDSARetired Assoc. Tech. Principal, Kraft Foods

52. Robert Welsh, IDSAVP Indus. Design & Brand Mktg., DEWALT Power Tools

53. Stephen B. Wilcox, Ph.D., FIDSAPrincipal, Design Science

54. Angela Yeh, IDSAPresident & CEO, Yeh IDeology


TABLE OF CONTENTS

Page

ix

TABLE OF AUTHORITIES..................................................................... x

INTERESTS OF AMICI CURIAE ........................................................... 1

ARGUMENT ............................................................................................ 5

I. THE VISUAL DESIGN OF A SOPHISTICATED ANDCOMPLEX TECHNOLOGICAL PRODUCT BECOMES THEPRODUCT ITSELF......................................................................... 5

A. The Founders of Industrial Design Discovered ThatVisual Design Drives Sales.................................................... 6

B. Visual Design Sells Because it Conveys the Function,Origin, and Overall Experience of Using a Product............ 15

1. The design of a product conveys the function ofthe product. ................................................................. 16

2. The design of a product conveys the origin of theproduct......................................................................... 17

3. The design of a product conveys the overallexperience of using the product. ................................. 19

C. Visual Design Sells Complex Consumer Technology .......... 22

II. ANYONE WHO COPIES A PATENTED DESIGN “SHALLBE LIABLE TO THE OWNER TO THE EXTENT OF HISTOTAL PROFIT”........................................................................... 27

CONCLUSION ....................................................................................... 35


x

TABLE OF AUTHORITIES

Page(s)

FEDERAL CASES

Catalina Lighting v. Lamps Plus,295 F.3d 1277 (Fed. Cir. 2002) ...........................................................35

Dobson v. Dornan,118 U.S. 10 (1886)...............................................................................32

Dobson v. Hartford Carpet Co.,114 U.S. 439 (1885).............................................................................32

Egyptian Goddess, Inc. v. Swisa, Inc.,543 F.3d 665 (Fed. Cir. 2008) (en banc) .............................................28

Gorham Co. v. White,81 U.S. 511 (1872)......................................................................... 28, 35

LaserDynamics, Inc. v. Quanta Computer, Inc.,694 F.3d 51 (Fed. Cir. 2013) ...............................................................33

Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co.,316 U.S. 203 (1942).............................................................................34

Nike, Inc. v. Wal-Mart Stores, Inc.,138 F.3d 1347 (Fed. Cir. 1998) ..................................................... 32, 33

Sheldon v. Metro-Goldwyn Picture Corp.,309 U.S. 390 (1940)....................................................................... 33, 34

Tamko Roofing Prods., Inc. v. Ideal Roofing Co., Ltd.,282 F.3d 23 (1st Cir. 2002) .................................................................34

FEDERAL STATUTES

17 U.S.C. §504(b).....................................................................................34

35 U.S.C. §171 ..................................................................................... 2, 28

35 U.S.C. §289 ..................................................................................... 2, 29


xi

Act of Feb. 4, 1887, Ch. 105, §1, 24 Stat. 387. ........................................32

Act of Aug. 1, 1946, Ch. 726, 60 Stat. 778 ..............................................33

LEGISLATIVE MATERIALS

H.R. Rep. No. 1966 (1886), reprinted in 18 Cong. Rec. 834(1887)......................................................................................... 4, 31, 32

OTHER AUTHORITIES

David A. Aaker, Building Strong Brands (1996) ............................. 18, 19

Peter H. Bloch, Seeking the Ideal Form: Product Design andConsumer Response, J. of Marketing, Jul. 1995 ................... 16, 17, 18

John R. Bryson, et al., Design Workshops of the World: TheProduction and Integration of Industrial Design Expertiseinto the Product Development and Manufacturing Processin Norway and the United Kingdom (Inst. for Research inEcon. and Bus. Admin. Working Paper No. 53, 2004),available at http://tinyurl.com/nofybck ................................................9

Daniela Büchler, How Different Is Different? VisualPerception of the Designed Object (2011)............................................17

Donald S. Chisum, Chisum On Patents: A Treatise On TheLaw Of Patentability, Validity And Infringement § 20.01(2009)...................................................................................................33

Del Coates, Watches Tell More than Time: Product Design,Information, and the Quest for Elegance (2003) ................................17

Thomas F. Cotter, Reining in Remedies in Patent Litigation:Three (Increasingly Immodest) Proposals, 30 Santa ClaraHigh Tech. L. J. 1 (2013) ....................................................................30

Nathan Crilly et al., Seeing Things: Consumer Response tothe Visual Domain in Product Design, 25 Design Studies547 (2004).................................................................................... passim


xii

Dave Evans, The Internet of Things: How the Next Evolutionof the Internet is Changing Everything (Cisco IBSG 2011),available at http://tinyurl.com/88uhsx3. ...................................... 25, 26

Mark Fischetti, Patent Crossroads: Countries andCompanies Scramble to Gain a Competitive Edge, Sci.Am., Jul. 2014 ............................................................................... 14, 15

David Gartman, Auto-Opium: A Social History of AmericanAutomobile Design (Routledge 1994)...................................... 10, 11, 12

Siegfried Giedion, Mechanization Takes Command: AContribution To Anonymous History (1948) ........................................6

Kathryn B. Hiesinger & George H. Marcus, Design Since1945 (1983)............................................................................................8

Mark A Lemley, A Rational System of Design PatentRemedies, 17 Stan. Tech. L. Rev. 219 (2013). ....................................30

Raymond Loewy, Industrial Design: Yesterday, To-Day andTomorrow? Address Before the Meeting of the Society andthe Faculty of Royal Designers for Industry (Oct. 9, 1980)in J. of the Royal Society of Arts, Mar. 1981, available athttp://tinyurl.com/k82286s....................................................................9

Ian MacKenzie et al., How Retailers Can Keep up withConsumers, McKinsey & Co. (Oct. 2013),http://tinyurl.com/q9qq4re..................................................................25

Charles L. Mauro, User-Centered Design in the New World ofComplex Design Problems, Innovations (Winter 2012),available at http://tinyurl.com/mj6ugdw...................................... 25, 26

Bonnie Nichols, National Endowment for the Arts ResearchReport No. 56, Valuing the Art of Industrial Design, AProfile of the Sector and Its Importance to Manufacturing,Technology and Innovation (Aug. 2013).............................................14

Donald A. Norman, Emotional Design: Why We Love (orHate) Everyday Things (2004) ............................................................19


xiii

Stephen E. Palmer, Vision Science, Photons toPhenomenology (1999) .................................................................. 15, 16

Arthur J. Pulos, American Design Ethic: A History ofIndustrial Design to 1940 (1983) ............................................ 5, 6, 7, 10

Quarterly Retail E-Commerce Sales 1st Quarter 2014, U.S.Census Bureau News, (May 15, 2014, 10:00 AM),http://tinyurl.com/nfcfkv8 ...................................................................25

Jeneanne Rae, What Is the Real Value of Design? 24 DesignManagement Review 30, Winter 2013 ......................................... 13, 14

Violina P. Rindova & Antoaneta P. Petkova, When Is a NewThing a Good Thing? Technological Change, ProductForm Design, and Perceptions of Value for ProductInnovations, 2006 Design Research Soc’y, Int’l Conferencein Lisbon (IADE), Paper 0311, available athttp://tinyurl.com/ljfepdv .............................................................. 20, 27

Shaun Smith & Joe Wheeler, Managing the CustomerExperience: Turning Customers into Advocates (spec. ed.,Pearson Custom Publ’g, 2002)................................................ 18, 19, 20

Rob Tannen, How to Protect UI with Design Patents,Accelerator (May 8, 2013), http://tinyurl.com/o8h9ppu .....................28

Ford. H. Tarantous, Big Improvement in Comfort of 1925Cars, N.Y. Times, Jan. 4, 1925...........................................................12

U.S. Patent and Trademark Office, U.S. Patent StatisticsChart, Calendar Years 1963-2013, http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm (last modified Jul.24, 2013). ............................................................................................ 28

Visualizations Make Big Data Meaningful: New TechniquesAre Designed to Translate Invisible Numbers Into VisibleImages, Comm. of the ACM, June 2014, available athttp://tinyurl.com/oz2y8un .................................................................14


xiv

Cooper C. Woodring, Foreword to Darius C. Gambino &William L. Bartow, Trade Dress, Evolution, Strategy andPractice (2013) .............................................................................. 12, 13


INTERESTS OF AMICI CURIAE

Amici curiae are distinguished industrial design professionals who

work in high-profile consulting firms and leading high-technology

corporations across the United States. We have many years of

experience providing product-design services to leading U.S. and

international corporations, nonprofit organizations, and government

entities including American Airlines, AT&T, Citibank, Coca-Cola, Ford,

General Electric, General Motors, Goldman Sachs, The Harvard

Endowment, Herman Miller, Hewlett Packard, IBM, Knoll, Kodak,

Lenovo, LG, Mobil Oil, Motorola, the New York Stock Exchange, NASA,

Nike, Pfizer, Polaroid, Porsche, the Salt Lake City Public Library,

Whirlpool, and Xerox.

Amici have served as President and Chairman of the Board of the

Industrial Designers Society of America. We have lectured at leading

graduate programs, including MIT Sloan School of Management,

Stanford University, Parsons School of Design, the University of

Pennsylvania, and at leading law conferences on design patents,

including the 2013 Stanford Law School Design Patent Conference.

Collectively, we have written and contributed to hundreds of leading


2

business and news publications, including Business Week, The New

York Times, and The Wall Street Journal.

We all share a strong professional interest in seeing that design

patent law continues to protect investments in product design.

Congress has provided that “[w]hoever invents any new, original and

ornamental design for an article of manufacture may obtain a patent

therefor.” 35 U.S.C. §171. And one who infringes a design patent “shall

be liable to the owner to the extent of his total profit.” 35 U.S.C. §289.

We have based our professional lives on the assumption that designs

are patentable and worth enforcing when infringed. Indeed,

collectively, we are named inventor on hundreds of U.S. design patents.

Amici have no personal interest in the outcome of this dispute

between Apple Inc. and Samsung Electronics. We have consulted for

both parties. Notably and appropriately, both of these leading

technology companies own numerous design patents. This case

happens to involve three of Apple’s design patents (see Apple Br. 7-9)1

covering the iPhone’s front face (U.S. Design Patent No. 618,677),

1 “Apple Br._” refers to the identified page(s) of Apple’s July 28,2014 principal brief.


3

distinctive appearance (U.S. Design Patent No. 593,087), and graphical

user interface (U.S. Design Patent No. 604,305). But Samsung also

owns design patents on various devices, such as SmartTVs or “media

display devices,” that, like the iPhone, are sophisticated and complex

technological products. See, e.g., U. S. Design Patent No. 658,612. The

fundamental principles of visual design set forth below are agnostic as

to who brings forth a new design to the world.2

The undersigned were prompted to submit this brief in significant

part to respond to an amicus brief submitted by a set of law professors

with unspecified design qualifications. The law professors’ brief takes

issue with the view that design “drives the sale of the product.” See

Law Professors’ Br. 7-11.3 The law professors suggest that what

matters more is the “function” of the product, id. at 10, and insist that

protecting design patents by requiring an infringer to disgorge all

profits “[m]akes [n]o [s]ense in the [m]odern [w]orld.” Id. at 7. We

2 No one other than the undersigned wrote or funded any portionof this brief. Both parties have consented to the filing of this brief.

3 “Law Professors’ Br._” refers to the Law Professors’ June 4, 2014Amici Curiae Brief.


4

submit this brief to provide the Court with the relevant historical and

scientific material that rebuts each proposition.

First, design drives sales of products. Since the emergence of the

field of modern Industrial Design in the 1920s and ’30s, product design

is the way to sell technological innovation and manufacturing know-

how. The visual design of a product comes to signify to the consumer

the underlying function, origin, and overall user experience associated

with that product.

Second, the most sensible policy in these circumstances remains

the one Congress adopted a long time ago: Infringement of a design

patent should result in award of the infringer’s total profits to the

designer. As Congress realized in 1887, “it is the design that sells the

article, and so that makes it possible to realize any profit at all.”

H.R. Rep. No. 1966 (1886), reprinted in 18 Cong. Rec. 834 (1887).

Design patents protect from misappropriation not only the overall

visual design of products, but the underlying attributes attached to the

design of the product and embodied in the mind of the consumer by the

product’s visual appearance. When an infringer copies the design of a

successful product, it captures the consumer’s understanding of what


5

the product does and what the product means. Correctly understood,

the total profit earned from the infringing product is therefore the

fitting remedy for design patent infringement: without the infringing

design, there would be no sales and no profits.

In this case, the jury found that Samsung unlawfully copied the

iPhone’s patented visual design. The undersigned take no position on

whether that jury finding was correct. But assuming so, the jury

properly awarded to Apple all of Samsung’s profits from selling the

infringing devices. Any other result would reflect a deep

misunderstanding of design.

ARGUMENT

I. THE VISUAL DESIGN OF A SOPHISTICATED ANDCOMPLEX TECHNOLOGICAL PRODUCT BECOMES THEPRODUCT ITSELF

Prior to the creation of the field of modern Industrial Design,

American manufacturers produced complex commercial and consumer

products without much regard to how the products looked. To the

extent visual design was considered at all, it was “relegated to legs,

support brackets, and hardware.” Arthur J. Pulos, American Design

Ethic: A History of Industrial Design to 1940 279 (1983). Most


6

consumers, in turn, made purchasing decisions based on price and

availability. The American public “was not concerned with such lofty

notions as the relationship of function to form or the inherent aesthetic

of manufactured objects—it was simply overwhelmed by the flood of

affordable machine-made products that promised to improve material

existence.” Id. at 161. Henry Ford, for example, was noted for his lack

of interest in design, yet his Model T automobile sold more than 15

million units. Id. at 256.

This neglect of visual design rested on a misunderstanding of

human behavior. In the 1920s and ’30s, manufacturers started to

recognize “that appearance does count,” and industrial designers

became integral to shaping mass-produced objects. Siegfried Giedion,

Mechanization Takes Command: A Contribution To Anonymous History

608-10 (1948). This belated attention to design led to massive profits, a

trend that has accelerated in the age of complex multifunctional

technological products.

A. The Founders of Industrial Design Discovered thatVisual Design Drives Sales

The three primary founders of Industrial Design were Raymond

Loewy, Walter Dorwin Teague, and Henry Dreyfuss. In different ways


7

and for different companies, these three created attractive and

compelling products that were pleasing to the eye and readily

identifiable in the marketplace. By focusing on how products looked,

they gave life and meaning to the underlying features and functions of

the machines.

Walter Dorwin Teague designed many of Kodak’s most famous

cameras. He was lauded for his ability to emphasize the beauty

in “a thing of primarily utilitarian character.” Pulos, supra, at

285 (internal quotation marks omitted).

Henry Dreyfuss’s iconic product designs included the Hoover

vacuum cleaner, Western Electric telephone, and John Deere

tractor. Dreyfuss was recognized as the “conscience of the

industrial design profession.” Id. at 289-91. He emphasized

utility and usability, a concern for the consumer, and a focus on

fitting products to people rather than vice versa. Id. at 289.

Raymond Loewy’s designs included Pennsylvania Railroad

locomotives and the Coca-Cola bottle. His work was so far

reaching that by the 1940s and ’50s, an estimated three-

quarters of Americans came into contact with one of Loewy’s


8

designs each day. Kathryn B. Hiesinger & George H. Marcus,

Design Since 1945 220 (1983).

A classic example of early industrial design was Loewy’s work on

the Gestetner duplicating machine. The original machine consisted of

exposed and chaotic-looking metals and gears sitting on four protruding

tubes:

Loewy was given three days to redesign it. “[D]etect[ing] the inherent

hazards of the four protruding legs in a busy office,” Loewy covered the

machine with Plasticine clay and encased it in a wooden cabinet to hide

the mechanisms:


9

John R. Bryson, et al., Design Workshops of the World: The Production

and Integration of Industrial Design Expertise into the Product

Development and Manufacturing Process in Norway and the United

Kingdom (Inst. for Research in Econ. and Bus. Admin. Working Paper

No. 53, 2004), available at http://tinyurl.com/nofybck.

Loewy’s aesthetic changes were a huge success: sales of the newly

attractive machine soared, Gestetner built three more factories to meet

the increased demand, and the company kept the same model for thirty

years. Raymond Loewy, Industrial Design: Yesterday, To-Day and

Tomorrow? Address Before the Meeting of the Society and the Faculty

of Royal Designers for Industry (Oct. 9, 1980) in J. of the Royal Society

of Arts, Mar. 1981, at 200, 203, available at http://tinyurl.com/k82286s.

Similarly, in 1934, Sears hired Loewy to redesign its refrigerator line.


Steve Simm

10

The resulting model, the Coldspot, saw its sales grow “from 15,000 to

275,000 units within five years,” making Sears a major supplier of

household appliances. Pulos, supra, at 358.

The competition between Ford and General Motors during the

1920s also illustrates the new focus on visual design. At the turn of the

twentieth century, “that the automobile worked at all and could be

operated with reasonable reliability was sufficient.” Id. at 242-43.

Descriptions of automobiles ranged from “generally untidy” to

“positively ugly.” David Gartman, Auto-Opium: A Social History of

American Automobile Design 23, 26 (Routledge 1994). The Model T was

typical:


11

Yet, Henry Ford initially saw no reason to enhance his design, satisfied

by the 3:1 sales gap between Ford and General Motors.

Then, in 1926, General Motors introduced a bold and colorful

Chevrolet:

Sales of the Chevrolet quickly surpassed sales of the black Model T.

Shortly thereafter, Ford released its first stylized car, the Model A.

Gartman, supra, at 77.

The recognition of the importance of visual design led to huge U.S.

economic growth. Without changing the underlying technology,

engineering or functionality, a single manufacturer could suddenly


12

create a vast number of different models simply by changing their

shape, style and appearance. General Motors, for example, maintained

five separate brands (Chevrolet, Pontiac, Oldsmobile, Buick, and

Cadillac), whose models shared not only mechanical parts, like

transmissions and brakes, but also the structural foundations of the

car’s body, called body shells. Id. at 76. Yet each model looked unique

due to the addition of aesthetic features (e.g., fenders, headlights,

taillights, and trim) and different colors. Id. at 76-81. Sales of these

different models to “people ever thirsty for something new,” propelled

GM sales past Ford. H. Tarantous, Big Improvement in Comfort of 1925

Cars, N.Y. Times, Jan. 4, 1925 at A2; Gartman, supra, at 92. Other

major manufacturers soon caught on, establishing their own versions of

General Motors’ “styling section.” Gartman, supra, at 92-93.

In short, thanks to the efforts and success of Loewy, Teague,

Dreyfuss and others, American manufacturers recognized that how a

product looked, in terms of its overall shape and style, mattered to

consumers. Good design became “no longer a luxury or a novelty” but a

“necessity … considered by most nations to be a competitive weapon

and a national resource.” Cooper C. Woodring, Foreword to Darius C.


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Gambino & William L. Bartow, Trade Dress, Evolution, Strategy and

Practice, at xvii, xix (2013). In 2010, the United States Postal Service

produced a set of collectable stamps commemorating the founders of

Industrial Design. These stamps, shown below, reflect seminal

products from the dawn of Industrial Design as a formal professional

discipline.

Today, “it is clear that giving design a seat at the table adds

significant value that helps differentiate and elevate companies beyond

the norm and helps to deliver tangible business results.” Jeneanne Rae,


14

What Is the Real Value of Design? 24 Design Management Review,

Winter 2013 at 30, 37. In fact, America’s top fifteen “design conscious

companies” outperform their peer group by 228% on a market asset

value basis. Id. at 33. Similarly, the role of the designer has been

elevated to a powerful position in modern companies. There are over

40,000 industrial designers in the United States, and “many Silicon

Valley startups [now] have three co-founders: a technologist, a business

person, and an artist.” See Bonnie Nichols, National Endowment for

the Arts Research Report No. 56, Valuing the Art of Industrial Design:

A Profile of the Sector and Its Importance to Manufacturing, Technology

and Innovation 8 (Aug. 2013); Visualizations Make Big Data

Meaningful: New Techniques Are Designed to Translate Invisible

Numbers Into Visible Images, Comm. of the ACM, June 2014, at 19, 21,

available at http://tinyurl.com/oz2y8un.

Moreover, “[t]he visual appearance of products is a critical

determinant of consumer response and product success.” Nathan Crilly

et al., Seeing Things: Consumer Response to the Visual Domain in

Product Design, 25 Design Studies 547, 547 (2004); see also Mark

Fischetti, Patent Crossroads: Countries and Companies Scramble to


15

Gain a Competitive Edge, Sci. Am., Jul. 2014 at 96, 96 (“the success of

any individual product may increasingly depend on its design.”).

B. Visual Design Sells Because it Conveys the Function,Origin, and Overall Experience of Using a Product

Visual design drives sales because vision has powerful effects on

the human mind. New visual designs for products not only give

products a new look or a competitive edge, but can actually become the

product in the mind of the consumer. This is because how a product

looks conveys how it operates, where it comes from, and what it means.

See, e.g., Crilly, supra, at 547 (“Judgments are often made on the

elegance, functionality and social significance of products based largely

on visual information.”).

Cognitive scientists explain how this phenomenon works.

Scientists have divided visual processing into four stages; of particular

relevance here is the fourth “category-based stage.”4 During the

4 The first three stages are: (1) the image-based stage (edges,lines, and line endings are processed); (2) the surface-based stage (prop-erties of surfaces in the external world are used to inform the image);and (3) the object-based stage (the processing system makes inferencesabout what might not be seen in the image, such as the hollow inside ofa box). Stephen E. Palmer, Vision Science, Photons to Phenomenology85-92 (1999).


16

“category-based stage,” the image conveys to a consumer the function,

origin, and overall experience of using a product.

1. The design of a product conveys the function ofthe product.

We begin to manipulate our external world by visually identifying

objects and then categorizing those objects based on how they look.

Palmer, supra, at 85-92. When we see a product, our eyes take in an

image that is projected onto an array of receptors in our retinas. Id. at

86. In the category-based stage of visual processing, the visual system

recovers “the functional properties of objects: what they afford the

organism, given its current beliefs, desires, goals, and motives.” Id. at

91. The visual image of a product is the first stimulus a consumer uses

to identify and build a mental model of the product’s functions; it elicits

“beliefs about product attributes and performance.” Peter H. Bloch,

Seeking the Ideal Form: Product Design and Consumer Response, J. of

Marketing, Jul. 1995, at 16, 20.

The human information processing system does not separate the

physical appearance of an object from the related functions of that

object. A consumer’s visual perception of an object is “constructed by

the knowledge [the consumer] has of [that object]. This visual


17

perception is therefore a filtered visual interpretation that is made up of

only the physical features that the knowledge filter has allowed to seep

through to the perceiver.” Daniela Büchler, How Different Is Different?

Visual Perception of the Designed Object 84-85 (2011) (emphasis added).

Thus, when a consumer encounters a known product, the

consumer identifies the look of the product with the underlying

functional features. “Design subsumes all the other factors by

determining the character and worth of each and every one of a

product’s attributes.” Del Coates, Watches Tell More than Time:

Product Design, Information, and the Quest for Elegance 15 (2003).

Design is the pathway to function.

2. The design of a product conveys the origin of theproduct.

During the fourth phase of visual processing, a product’s visual

appearance also comes to signify where the product comes from. This is

so because “we organize our understanding of the world in terms of …

relationships between distinct classes of objects.” Büchler, supra, at

108. Consumers attempt to understand products by placing them in

existing categories based on perceived similarities. Bloch, supra, at 20.

Industrial designers seek to capitalize on the human information


18

processing system’s desire to make connections between products by

using similar attributes across products to define an entire brand. This

categorization, or a consumer’s ability to understand differences among

products while still connecting them based on knowledge and

experience, is the essence of modern branding.

For example, “[p]roduct form may create or influence beliefs

pertaining to such characteristics as durability, dollar value, technical

sophistication, ease of use, sex role appropriateness, and prestige.

Designers often choose particular form elements to proactively

encourage the creation of desirable beliefs.” Bloch, supra, at 19. In

aggregate, these attributes are what create and define a brand. The

common cliché that “[p]roducts are built in factories, brands are built in

the mind” thus holds true. Shaun Smith & Joe Wheeler, Managing the

Customer Experience: Turning Customers into Advocates 7 (spec. ed.,

Pearson Custom Publ’g, 2002).

Once visual design and functional features create the brand, the

brand can then become “a vehicle for representing and cueing functional

benefits and brand attributes.” David A. Aaker, Building Strong

Brands 168 (1996). For example, a functional feature of a Harley-


19

Davidson motorcycle is that the motorcycle is powerful, but it is Harley-

Davidson’s “rugged, macho, freedom-seeking” brand personality that

gives a backbone to this product attribute and convinces the customer of

its value. Id.

3. The design of a product conveys the overallexperience of using the product.

Products can deliver a visual design that conveys to the consumer

attributes that go beyond the underlying functions and the brand.

Instead, the visual design of a product can convey higher level

attributes of the total user experience and the modern life-style benefits

of the product. The visual design of a product can thus come to

represent the consumer’s perception of the total user experience at the

time of viewing.

The total user experience “takes into account customers’ rational

and emotional expectations.” Smith, supra, at 56. This is important

because positive emotions sell. It is not surprising that “attractive

things make people feel good.” Donald A. Norman, Emotional Design:

Why We Love (or Hate) Everyday Things 19 (2004). But research

confirms that emotional connections to products and brands are “among

the biggest drivers of repeat business.” Smith, supra, at 56. Indeed,


20

“[c]onsumer preferences and motivation are far less influenced by the

functional attributes of products and services than the subconscious

sensory and emotional elements derived by the total experience.” Id.;

see also Crilly, supra, at §6.4, p. 565 (“[T]he symbolic meaning

associated with products often has the potential to dominate the

aesthetic and semantic aspects of cognitive response.”); Violina P.

Rindova & Antoaneta P. Petkova, When Is a New Thing a Good Thing?

Technological Change, Product Form Design, and Perceptions of Value

for Product Innovations, 2006 Design Research Soc’y, Int’l Conference in

Lisbon (IADE), Paper 0311, available at http://tinyurl.com/ljfepdv

(“[C]ustomers experiencing positive emotions may feel more predisposed

to try new things and may perceive them as having higher value… .”).

It is the design of a successful product that embodies the consumer’s

understanding of and desire to own and interact with that product.

* * *

Here is a diagram that illustrates the science explaining why

visual design sells products:


How visual design sells Cognitive processing of the visual desrgn

Retinal image

V

Image-based processing

V

Surface-based processing

Habituation / Experience

Product category-based processing

Object-based processing

Object Function

Object Origin

V

Overall

/11•11•1,

experience/

emotional connection

Copyright MauroNewMedia, inc. 2014

21

A consumer sees the product’s “image,” the image is then processed

through the various stages, and, at the category-based stage, the

consumer recognizes the function, origin, and emotion of using the

product.


22

C. Visual Design Sells Complex Consumer Technology

Just like Loewy’s Gestetner duplicating machine and GM’s Chevy,

the visual design of today’s smartphone uses the human processing of

visual images to convey to consumers the function, origin, and overall

experience of using the product. Modern smartphones include

thousands of features covering email, camera, browser, music player,

text messaging, contacts, calendar, databases, and options for millions

of customized applications. Each of these features contributes to the

overall functioning of the product and to the total user experience. But

no single feature defines the phone in the mind and eye of the

consumer.

Instead, in an increasingly complex marketplace where product

feature density is expanding exponentially, and where basic

functionality is assumed, the visual design of a product is the only way

to represent to the consumer the underlying technical innovations and

manufacturing know-how of the product itself. See Crilly, supra, at

§ 9.1, p. 574 (“In mature markets, where the functionality and

performance of products are often taken for granted, attention is

increasingly focused on the visual characteristics of products. In such


Modern srnartphone without

Modern srnartphone with

visual design applied


Copyright MaurioNeviryledia, Inc. 2014

23

markets, attention to a product’s appearance promises the

manufacturer one of the highest returns on investment.” (internal

quotation marks omitted)).

The following images illustrate the point:


Modern srnartphone without

Modern smartphone with



Copyright MauroNevAledia, Inc. 2014

24

The consumer deciding which smartphone to purchase would look at a

smartphone and instantly understand the device’s function, origin, and

user experience based on the visual design of the device.

That consumers purchase millions of complex, multi-component

products online each day, without ever touching the product or

accessing a single functional feature, confirms that visual design drives

sales. When all the consumer sees is an image of the product on the

computer screen, the design of the product is literally all that sells the

product. And e-commerce has grown by almost 18% per year for the


25

past ten years; it now accounts for $71.2 billion dollars in retail sales.

See Ian MacKenzie et al., How Retailers Can Keep up with Consumers,

McKinsey & Co. (Oct. 2013), http://tinyurl.com/q9qq4re; Quarterly

Retail E-Commerce Sales 1st Quarter 2014, U.S. Census Bureau News,

(May 15, 2014, 10:00 AM), http://tinyurl.com/nfcfkv8.

Looking to the future, the focus on visual design will continue as

complex and sophisticated technological products become ever more

present. This trend is referred to as “The Internet of Things” (IoT).

Dave Evans, The Internet of Things: How the Next Evolution of the

Internet is Changing Everything, 1-2 (Cisco IBSG 2011) available at

http://tinyurl.com/88uhsx3. In this era, products like the modern

smartphone become part of a vast interconnected network of devices

that interactively share features and functions in order to extend

technological control over our everyday lives. Charles L. Mauro, User-

Centered Design in the New World of Complex Design Problems,

Innovation 20, 21 (Winter 2012) available at

http://tinyurl.com/mj6ugdw. Already, a person can remotely manage

heating and air conditioning, lights, television, video camera, washer

and dryer, refrigerator, and door locks using any device with a


26

connection to the internet. It is estimated that fifty billion devices will

be connected to the IoT by 2020, leading many to call it the most

important technology trend of the last fifty years. Evans, supra, at 3.

In the world of the IoT, the visual design of whichever device a person

chooses to control his surroundings comes to represent not only the

features and functions of that device, but the features and functions of

all other devices connected to the IoT. Mauro, supra, at 22-23.

* * *

In sum, the visual design of a product comes to signify the

function of the product, the origin of the product, and the consumer’s

perception of the “total user experience.” To a consumer, the visual

design of a smartphone represents the sum total of all the underlying

features and the lifestyle benefits of the phone: essentially, what the

phone can do for the consumer. Product design is the way to create

value from technological innovations and manufacturing know-how.

The design is the product.


27

II. ANYONE WHO COPIES A PATENTED DESIGN “SHALL BELIABLE TO THE OWNER TO THE EXTENT OF HIS TOTALPROFIT”

When a company copies the visual design of a product, it takes

more than the overall shape, style, and appearance of the product. As

explained above, the copier also takes the key identifying element under

which functional features are understood, the brand is identified, and

the total user experience is associated. When two products look the

same, they are often subconsciously processed in the consumer’s mind

as being the same. See Crilly, supra, at §7.2, p. 567 (“[R]eference may

also be made to similar products within the same product category.

Products may be explicitly compared to competing products. This

informs purchase decisions because product form is often used to

differentiate products within the marketplace.”); Rindova, supra, at 8

(“Product form … is used to increase the apparent similarity of the

innovations to familiar products, in order to tap into existing

understandings”).

The established protection against such copying of a visual design

is the design patent: “[w]hoever invents any new, original and

ornamental design for an article of manufacture may obtain a patent


28

therefor… .” 35 U.S.C. §171. Design patents have become increasingly

popular in recent years: design patent applications rose from 18,292 in

2000 to 36,034 in 2013. U.S. Patent and Trademark Office, U.S. Patent

Statistics Chart, Calendar Years 1963-2013,

http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm (last

modified Jul. 24, 2013). Design patents covering GUIs have also

become increasingly important. Rob Tannen, How to Protect UI with

Design Patents, Accelerator (May 8, 2013), http://tinyurl.com/o8h9ppu.

A design patent is only infringed if “in the eye of an ordinary

observer, giving such attention as a purchaser usually gives, two

designs are substantially the same, if the resemblance is such as to

deceive such an observer, inducing him to purchase one supposing it to

be the other … . ” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665,

670 (Fed. Cir. 2008) (en banc) (emphasis added) (quoting Gorham Co. v.

White, 81 U.S. 511, 528 (1872). A finding of design patent infringement

thus requires the likelihood of a captured sale: there can be no

infringement unless the infringing product is so similar to the patented

design that an ordinary observer would be induced by the design to

purchase the infringing product.


29

The test for infringement―the requirement that an ordinary

observer would be induced by the infringing design to purchase the

infringing product―fits perfectly with Congress’s chosen remedy: the

infringer is liable for the total profit earned from the infringing sales.

See 35 U.S.C. § 289 (“Whoever during the term of a patent for a design,

without license of the owner, (1) applies the patented design … to any

article of manufacture for the purpose of sale … shall be liable to the

owner to the extent of his total profit, but not less than $250… .”).

Despite this explicit statutory directive, the amici law professors

argue that an award of total profits in cases of design patent

infringement “makes no sense.” Law Professors’ Br. 2. They therefore

“suggest” that this Court “interpret section 289, in accordance with wise

policy and the remainder of the patent statute, to limit the award of

profits in design patent cases to profits attributable to the act of

infringement.” Id. at 3. This Court should decline their invitation to

rewrite the statute.5

5 Although the law professors’ brief suggests that the plainlanguage of §289 “contains ambiguities that should arguably beresolved in favor of apportionment,” Law Professors’ Br. 12, its leadauthor, Professor Lemley, recently urged Congress to repeal § 289


30

The law professors lodge three main complaints against the plain

language of § 289: (1) it “drastically overcompensates the owners of

design patents, and correspondingly undervalues technical innovation

and manufacturing know-how”; (2) it is at odds with the normal rule for

utility patents and for copyrights and trademarks; and (3) it “leaves

troubling questions about what to do with all the other claimants to a

share of the defendant’s profits.” Law Professors’ Br. 2-3.6 We address

each in turn.

First, the law professors believe that an award of total profits in

cases of design patent infringement overcompensates the design patent

because “design patent law requires that infringers ... pay the plaintifftheir entire profit from the sale of the infringing product, even if thedesign was only a small feature of that product.” Mark A Lemley, ARational System of Design Patent Remedies, 17 Stan. Tech. L. Rev. 219,221, 235-37 (2013). So did another signatory of the professors’ brief.See Thomas F. Cotter, Reining in Remedies in Patent Litigation: Three(Increasingly Immodest) Proposals, 30 Santa Clara High Tech. L. J. 1,7-8 (2013) (“Unfortunately, the simple expedient of properlyapportioning the infringer’s profits does not appear to be permissibleunder [§ 289], absent some creative interpretation; a legislative fixtherefore would be desirable.”).

6 The law professors also suggest that awarding total profits“punishes even innocent infringers.” Law Professors’ Br. 2-3; 6. Thatconcern is irrelevant here because the jury found that Samsungintentionally copied Apple’s patented designs. See Apple Br. 72.


31

holder because not “all the value of a product come[s] from design

patents.” Id. at 10. Instead, “it is more plausible that a functional

feature in a utility patent drives demand than that a patented design

does.” Id.

But, as we explained in I.B and I.C above, the law professors have

it backwards. Congress’ finding that “the infringer’s entire profit on the

article should be recoverable … [because] it is the design that sells the

article, and so that makes it possible to realize any profit at all, …”

H.R. Rep. No. 1966 (1886), reprinted in 18 Cong. Rec. 834 (1887), is

even truer today. In the age of sophisticated and complex technological

products, the visual design of a product is more important, not less. See

Crilly, supra, at § 9.1, p. 574. This does not mean that the “250,000

[utility] patents that arguably cover various aspects of a smartphone,”

Law Professors’ Br. 10, are without value; it just means that no one

particular function or feature is driving the sale.

The law professors’ next objection to an award of total profits is

that it creates an inconsistency between the damages available for

infringing a design patent and the damages available for infringing a

utility patent, copyright or trademark. But the distinction between


32

utility and design patent damages was intended by Congress. The

design patent remedy was enacted in response to two Supreme Court

decisions that applied the utility-patent apportionment rule to design

patents as well. See Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437,

1441 (Fed. Cir. 1998).7 Congress responded by enacting “a new rule of

recovery for design patents” in 1887. H.R. Rep. No. 1966 (emphasis

added). Aimed at overruling the Supreme Court’s “virtual repeal of the

design patent laws,” id., the act made a design patent infringer “liable

for the excess of [his] profit over and above” $250. Act of Feb. 4, 1887,

ch. 105, §1, 24 Stat. 387. As this Court has previously held, the Act of

1887 “remove[d] ... the need to apportion the infringer’s profits between

7 In Dobson v. Dornan, 118 U.S. 10, 16-18 (1886), and Dobson v.Hartford Carpet Co., 114 U.S. 439, 443-46 (1885), the Supreme Courtheld that a design patent holder could recover only that portion of aninfringer’s profits that he could prove actually resulted from use of theinfringing design, and not from some other feature or function of theproduct. Because the design patent holder could not prove what portionof the infringer’s profits resulted from the carpet’s design, the SupremeCourt awarded nominal damages of six cents. 118 U.S. at 18; see alsoNike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1347, 1441 (Fed. Cir. 1998)(the Supreme Court’s holding that a patent holder could recover onlythat portion of the infringer’s profits that were proven to be attributableto the patented design “presented a difficult problem of proof” in designpatent cases).


33

the patented design and the article bearing the design,” by creating a

new, additional remedy that applied only in cases of design patent

infringement. Nike, 138 F.3d at 1442; see also id. at 1443 (“the

additional remedy created in 1887 for design patents was enacted to

overcome the allocation problem for designs…”).8

Moreover, Congress’s distinction between design patents and

utility patents makes good sense. Unlike design patent infringers,

utility patent infringers may be held liable for copying features that

contribute to only a portion of the demand for the product.

LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 67-68 (Fed.

Cir. 2013). In instances of utility patent infringement, separately

apportioning damages thus makes sense because a total award may

improperly credit the protected feature as a driving factor in sales. Id.

The same is true for copyrights. A plaintiff’s recovery for

copyright infringement may be apportioned to exclude profits derived

from the “drawing power” of non-copyrighted content. Sheldon v.

8 In 1946, Congress eliminated infringer’s profits as a remedy forutility patent infringement. Act of Aug. 1, 1946, Ch. 726, 60 Stat. 778;see also 7 Donald S. Chisum, Chisum On Patents: A Treatise On TheLaw Of Patentability, Validity And Infringement § 20.01 (2009). Yet itleft the total profit remedy for design patent infringement unchanged.


34

Metro-Goldwyn Picture Corp., 309 U.S. 390, 404, 407 (1940); see also

17 U.S.C. § 504(b).

Not so with trademark law, design patent law’s “closest analogue,”

Law Professors’ Br. 6. Like design patent infringements, trademark

infringements are also based on captured sales and routinely result in

disgorgement of the infringer’s profit. See, e.g. Tamko Roofing Prods.,

Inc. v. Ideal Roofing Co., Ltd., 282 F.3d 23 (1st Cir. 2002). In fact, there

is a strong presumption against apportionment of an infringer’s profits

in trademark infringement cases. See Mishawaka Rubber & Woolen

Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 207 (1942) (“In the absence of

his proving the contrary, it promotes honesty and comports with

experience to assume that the wrongdoer who makes profits from the

sales of goods bearing a mark belonging to another was enabled to do so

because he was drawing upon the good will generated by that mark.”).

Last, the law professors argue that “[i]t is not even remotely

plausible that the shape of the Apple iTunes icon is what causes people

to buy the iPhone,” and while the iPhone’s multiple design patents

“happen to be owned by the same company, there is no reason to think

that will always be true.” Law Professors’ Br. 8. But a design patent is


35

only infringed if the resemblance of two designs is enough to deceive an

ordinary observer into purchasing the infringing product to which the

design is attached “supposing it to be the other.” Gorham Co. v. White,

81 U.S. 511, 528 (1872). If the design patent that is claimed to be

infringed covers only a truly insignificant portion of the product, such

as one icon on a modern smartphone, it is not clear how this test could

ever be met. And any concern that one who holds multiple design

patents on the same article could recover an infringer’s profits more

than once is foreclosed by § 289, which prohibits “twice recover[ing]” an

infringer’s profits. See Catalina Lighting v. Lamps Plus, 295 F.3d 1277,

1291 (Fed. Cir. 2002). If the patents are held by separate entities, there

is no reason impleader could not be used. See Apple Br. 53.

CONCLUSION

The visual design of a product comes to represent the consumer’s

understanding of the product itself: its features and functions, its

reliability and brand position in the marketplace, and the subconscious

sensory and emotional elements derived from the total user experience.

Design patents thus protect from misappropriation not only the overall

visual design of products, but the underlying attributes attached to the


36

design of the product and embodied in the mind of the consumer by the

product’s visual appearance. The total profit earned from the infringing

product is thus the correct remedy for design patent infringement:

without the infringing design, there would be no sales and no profits.

Assuming that the jury correctly found that Samsung’s products

infringed Apple’s valid design patents, the district court’s judgment

should be affirmed.

Date: August 4, 2014 Respectfully submitted,

By: /s/ Mark S. Davies

Mark S. DaviesKatherine M. KoppOrrick, Herrington & Sutcliffe LLP1152 15th Street, NWWashington, DC 20005(202) 339-8400

Rachel Wainer ApterWill MelehaniOrrick, Herrington & Sutcliffe LLP51 West 52nd StreetNew York, NY 10019(212) 506-3353

Attorneys for Amici Curiae


CERTIFICATE OF SERVICE

I hereby certify that on this 4th day of August, 2014, the foregoingdocument was filed with the Clerk of the Court for the United StatesCourt of Appeals for the Federal Circuit by using the appellate CM/ECFsystem which will automatically send email notification of such filing toall registered users.

By: /s/ Mark S. DaviesMark S. DaviesORRICK, HERRINGTON &SUTCLIFFE LLP1152 15th Street, NWWashington, DC 20005Telephone: (202) 339-8400Fax: (202) 339-8500Email: [email protected]



CERTIFICATE OF COMPLIANCEUNDER FEDERAL RULE OF APPELLATE PROCEDURE

32(a)(7) AND FEDERAL CIRCUIT RULE 32

Counsel for Amici Curiae certifies that the brief contained herein

has a proportionally spaced 14-point typeface, and contains 6,037

words, based on the “Word Count” feature of Word 2010, including

footnotes and endnotes. Pursuant to Federal Rule of Appellate

Procedure 32(a)(7)(B)(iii) and Federal Circuit Rule 32(b), this word

count does not include the words contained in the Table of Contents or

Table of Authorities.

Date: August 4, 2014 By: /s/ Mark S. Davies

Mark S. DaviesOrrick, Herrington & Sutcliffe LLP1152 15th Street, NWWashington, DC 20005Telephone: (202) 339-8400Fax: (202) 339-8500Email: [email protected]



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