Case 8:19-cv-01118-DOC-DFM Document 427 Filed 08/12/22 Page 1 of 32 Page ID

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1 JOSEPH N. AKROTIRIANAKIS (SBN 197971)

2 jakro@kslaw.com
KING & SPALDING LLP
3 633 West Fifth Street Suite 1600
4 Los Angeles, CA 90071
Telephone: (213) 443-4355
5 Facsimile: (213) 443-4310
6
CHRISTOPHER C. CAMPBELL (pro hac vice)
7 ccampbell@kslaw.com
8 KING & SPALDING LLP
1700 Pennsylvania Ave. NW
9 Suite 200
10 Washington, DC 20006
Telephone: (202) 626-5578
11 Facsimile: (202) 626-3737
12 Attorneys for Defendants GETAC TECHNOLOGY
CORPORATION AND GETAC, INC.
13
14 UNITED STATES DISTRICT COURT
15 FOR THE CENTRAL DISTRICT OF CALIFORNIA
16
PANASONIC CORPORATION, Case No. 8:19-CV-01118-DOC-DFM
17 (The Honorable David O. Carter)
18 Plaintiff,
DEFENDANTS’ NOTICE OF MOTION
19 AND RENEWED MOTION FOR
v. JUDGMENT AS A MATTER OF LAW
20 OR, IN THE ALTERNATIVE, FOR A
GETAC TECHNOLOGY NEW TRIAL
21 CORPORATION and GETAC,
22 INC. Date: October 4, 2022
Time: 7:30
23 Defendants. Ctrm: 10A
24 Complaint Filed: June 5, 2019
25 Trial Date: May 31, 2022

26
27
28

DEFENDANTS’ RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW

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1 TO THE COURT AND PLAINTIFFS AND THEIR ATTORNEYS:

2 PLEASE TAKE NOTICE that on October 4, 2022, at 7:30 a.m., or as soon
3 thereafter as counsel may be heard in the above-entitled court, Defendants Getac
4 Technology Corporation and Getac Inc. (“Getac”) will and hereby do move this Court
5 for an order granting Getac judgment as a matter of law or, in the alternative, a new
6 trial.
7 Plaintiff’s Motion is based on this Notice of Motion and Motion, the
8 Memorandum of Points and Authorities, and Declaration of Britton F. Davis, all filed
9 herewith; the pleadings and records on file in this case; and other such pleadings and
10 oral argument as may be presented to the Court at any hearing on this motion.
11 Defendants notified Plaintiff of this motion on July 26, 2022, and the parties
12 jointly stipulated to a briefing schedule. (Dkt. 424.) This motion is made pursuant to a
13 conference of counsel by email pursuant to Local Rule 7-3, which took place on August
14 5, 2022.
15
16 Dated: Aug. 12, 2022 KING & SPALDING LLP
17
By: /s/Christopher C. Campbell
18 CHRISTOPHER C. CAMPBELL
19 JOSEPH N. AKROTIRIANAKIS

20 Attorneys for Defendants GETAC

21 TECHNOLOGY CORPORATION AND
GETAC, INC.
22
23
24
25
26
27
28

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1 TABLE OF CONTENTS
2 Introduction .......................................................................................................... 1
3 Legal Standards .................................................................................................... 1
4 Argument .............................................................................................................. 2
5 A. The Infringement Verdict Is Unsupported By Substantial Evidence. ....... 2
6 B. The “ordinary observer” test governs. ....................................................... 2
C. Stage 1: The claimed and accused designs are “plainly dissimilar.” ......... 5
7
1. The D’232 Patent is not infringed. .................................................. 5
8
2. The D’634 Patent is not infringed. .................................................. 8
9
3. The D’998 Patent is not infringed. .................................................. 8
10
D. Stage 2: Prior art narrows the design. ...................................................... 10
11 E. Exclusion of functional elements narrows the design. ............................ 11
12 4. Most design elements are dictated by the docking
13 requirement. ................................................................................... 11
14 5. Some design elements are dictated by functions other
than the docking requirement. ....................................................... 14
15
6. The remaining ornamental features are insufficient to
16 support the verdict of infringement. .............................................. 15
17 The Asserted Patents Are Invalid as Primarily Functional. ............................... 16
18 Substantial Evidence Does Not Support the Damages Award Because
the “Article of Manufacture” Is Not the Entire Computer. ................................ 18
19
Substantial Evidence Does Not Support the Finding Of Willful
20 Infringement. ...................................................................................................... 22
21 In the Alternative, the Court Should Grant a New Trial. ................................... 25
22 Conclusion .......................................................................................................... 25
23
24
25
26
27
28

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1 TABLE OF AUTHORITIES
2
Page(s)
3
Cases
4
Air-Sea Forwarders, Inc. v. Air Asia Co., Ltd.,
5
880 F.2d 176 (9th Cir. 1989) ................................................................................ 2
6
Ansell Healthcare Prods. LLC v. Reckitt Benckiser LLC,
7 No. 15-cv-915, 2018 WL 620968 (D. Del. Jan. 30, 2018) ........................... 23, 24
8
Apple Inc. v. Samsung Elecs. Co.,
9 No. 11-cv-01846, 2017 WL 4776443 (N.D. Cal. Oct. 22, 2017)................. 18, 19
10 Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc.,
11 501 F.3d 1314 (Fed. Cir. 2007) ............................................................................ 5
12 Bentley v. Sunset House Distrib. Corp.,
359 F.2d 140 (9th Cir. 1966) .............................................................................. 18
13
14 Berry Sterling Corp. v. Pescor Plastics, Inc.,
122 F.3d 1452 (Fed. Cir. 1997) .......................................................................... 17
15
16 Best Lock Corp. v. Ilco Unican Corp.,
94 F.3d 1563 (Fed. Cir. 1996) ...................................................................... 12, 16
17
Boiling Point Grp., Inc. v. Fong Ware Co.,
18 No. 2:16-cv-01672, 2017 WL 2930838 (C.D. Cal. Apr. 27, 2017) ..................... 3
19
Columbia Sportswear N.A., Inc. v. Seirus Innovative Accessories, Inc.,
20 942 F.3d 1119 (Fed. Cir. 2019) ............................................................................ 8
21 Degelman Indus., Ltd. v. Pro-Tech Welding & Fabrication, Inc.,
22 No. 06-cv-6346, 2011 WL 6754040 (W.D.N.Y. May 27, 2011) ......................... 3
23 Dyson, Inc. v. SharkNinja Operating LLC,
24 No. 14-cv-779, 2018 WL 1906105 (N.D. Ill. Mar. 29, 2018) .............................. 3

25 Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008) (en banc) ................................................ 2, 3, 4, 11
26
27 Elmer v. ICC Fabricating, Inc.,
67 F.3d 1571 (Fed. Cir. 1995) .............................................................................. 9
28

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1 Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,

2 796 F.3d 1312 (Fed. Cir. 2015) .............................................................. 3, 4, 5, 10

3 Experience Hendrix LLC v. Hendrixlicensing.com Ltd.,

762 F.3d 829 (9th Cir. 2014) ................................................................................ 1
4
5 Golden Eye Media USA, Inc. v. Evo Lifestyle Prods. Ltd.,
No. 2021-2096, 2022 WL 2232517 (Fed. Cir. June 22, 2022) .......................... 17
6
Gorham Mf’g Co. v. White,
7
81 U.S. 511 (1871)........................................................................................ 2, 5, 6
8
Great Neck Saw Mfrs., Inc. v. Star Asia U.S.A., LLC,
9 727 F. Supp. 2d 1038 (W.D. Wash. 2010) ............................................. 3, 4, 5, 11
10
Gustafson, Inc. v. Intersys. Indus. Prods., Inc.,
11 897 F.2d 508 (Fed. Cir. 1990) ...................................................................... 22, 23
12 Hagen v. City of Eugene,
13 736 F.3d 1251 (9th Cir. 2013) .............................................................................. 1
14 Halo Elecs., Inc. v. Pulse Elecs., Inc.,
579 U.S. 93 (2016).............................................................................................. 22
15
16 Hanson v. Shell Oil Co.,
541 F.2d 1352 (9th Cir. 1976) ........................................................................ 2, 25
17
18 Hartco Eng’g, Inc. v. Wang’s Int’l, Inc.,
142 F. App’x 455 (Fed. Cir. 2005) ..................................................................... 10
19
High Point Design LLC v. Buyers Direct, Inc.,
20 730 F.3d 1301 (Fed. Cir. 2013) .......................................................................... 16
21
Hooker Furniture Corp. v. GTR Leather, Inc.,
22 No. 1:20-cv-451, 2022 WL 508544 (M.D.N.C. Feb. 18, 2022)........................... 5
23 King Instrument Corp. v. Otari Corp.,
24 767 F.2d 853 (Fed. Cir. 1985) ............................................................................ 24
25 L.A. Gear, Inc. v. Thom McAn Shoe Co.,
26 988 F.2d 1117 (Fed. Cir. 1993) .......................................................................... 16

27 L.A. Mem’l Coliseum Comm’n v. Nat’l Football League,

791 F.2d 1356 (9th Cir. 1986) .............................................................................. 1
28

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1 Nat’l Presto Indus., Inc. v. W. Bend Co.,

2 76 F.3d 1185 (Fed. Cir. 1996) ............................................................................ 24

3 OddzOn Prods., Inc. v. Just Toys, Inc.,

122 F.3d 1396 (Fed. Cir. 1997) .......................................................................... 11
4
5 Performance Designed Prods. LLC v. Mad Catz, Inc.,
No. 16-cv-629, 2016 WL 3552063 (S.D. Cal. June 29, 2016) ......................... 3, 4
6
PHG Techs., LLC v. St. John Cos.,
7
469 F.3d 1361 (Fed. Cir. 2006) .............................................................. 16, 17, 18
8
Power Controls Corp. v. Hybrinetics, Inc.,
9 806 F.2d 234 (Fed. Cir. 1986) ...................................................................... 16, 17
10
Precor Inc. v. Life Fitness,
11 13 F. App’x 913 (Fed. Cir. 2001) ....................................................................... 16
12 Rattray v. City of National City,
13 51 F.3d 793 (9th Cir. 1994) ................................................................................ 25
14 Reeves v. Sanderson Plumbing Prods., Inc.,
530 U.S. 133 (2000).............................................................................................. 1
15
16 Richardson v. Stanley Works, Inc.,
597 F.3d 1288 (Fed. Cir. 2010) ............................................................................ 4
17
18 Samsung Elecs. Co. v. Apple Inc.,
137 S. Ct. 429 (2016)...................................................................................passim
19
SRI Int’l, Inc. v. Cisco Sys., Inc. (“SRI I”),
20 930 F.3d 1295 (Fed. Cir. 2019) .......................................................................... 23
21
SRI Int’l, Inc. v. Cisco Sys., Inc. (“SRI II”),
22 14 F.4th 1323 (Fed. Cir. 2021) ........................................................................... 22
23 Virco Mfg. Corp. v. Hertz Furniture Sys., LLC,
24 No. 13-cv-02205, 2014 WL 12591481 (C.D. Cal. Jan. 3, 2014) ......................... 3
25 Voltstar Techs., Inc. v. Amazon.com, Inc.,
26 No. 13-cv-5570, 2014 WL 3725860 (N.D. Ill. July 28, 2014), aff’d,
599 F. App’x 385 (Fed. Cir. 2015) ................................................................... 3, 5
27
28

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1 Wallace v. Ideavillage Prods. Corp.,

2 640 F. App’x 970 (Fed. Cir. 2016) ................................................................... 2, 3

3 WesternGeco L.L.C. v. ION Geophysical Corp.,

837 F.3d 1358 (Fed. Cir. 2016), rev’d on other grounds, 138 S. Ct.
4
2129 (2018) ......................................................................................................... 22
5
Wing Shing Prods. (BVI) Co. Ltd. v. Sunbeam Prods., Inc.,
6 665 F. Supp. 2d 357 (S.D.N.Y. 2009), aff’d, 374 F. App’x 956 (Fed.
7 Cir. 2010) .......................................................................................................... 3, 4
8 Statutes
9 35 U.S.C. § 289 ........................................................................................................ 18
10
Other Authorities
11
Fed. R. Civ. P. 50(b) .................................................................................................. 1
12
Patent Act ................................................................................................................. 18
13
14 Sarah Burstein, The Patented Design, 83 TENN. L. REV. 161, 175 (2015) ............... 4
15
16
17
18
19
20
21
22
23
24
25
26
27
28

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1 INTRODUCTION
2 The jury’s verdict should be set aside with respect to infringement, validity,
3 damages, and willfulness. First, the evidence does not support infringement because the
4 accused designs are plainly dissimilar, especially when functional elements are
5 excluded. Second, the patents are invalid because the claimed designs are primarily
6 functional. Third, the jury’s damages calculation incorrectly relies on using the entire
7 computer as the “article of manufacture” rather than the conceptually distinct and
8 physically separable cradles and tablet edges. Finally, the willful infringement verdict
9 is unsupported because the evidence shows that Getac did not know about the asserted
10 patents pre-suit, and that Getac’s defenses were reasonable.
11 The Court should grant Getac JMOL on these issues because the jury’s
12 conclusions are not supported by substantial evidence. Alternatively, the Court should
13 reweigh the evidence and order a new trial on these issues because the verdict is against
14 the clear weight of the evidence.
15 LEGAL STANDARDS
16 A motion for JMOL under Fed. R. Civ. P. 50(b) should be granted when the
17 evidence “permits only one reasonable conclusion, and that conclusion is contrary to
18 the jury’s verdict.” Hagen v. City of Eugene, 736 F.3d 1251, 1256 (9th Cir. 2013)
19 (cleaned up). Though the court draws all reasonable inferences in favor of the
20 nonmoving party, it “considers all of the evidence in the record.” Experience Hendrix
21 LLC v. Hendrixlicensing.com Ltd., 762 F.3d 829, 842 (9th Cir. 2014). It must also give
22 credence to “evidence supporting the moving party that is uncontradicted and
23 unimpeached.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000)
24 (cleaned up). If, based on this review, “substantial evidence” does not “support the
25 jury’s verdict,” the verdict must be set aside. L.A. Mem’l Coliseum Comm’n v. Nat’l
26 Football League, 791 F.2d 1356, 1360 (9th Cir. 1986).
27 Alternatively, if the verdict is supported by substantial evidence, the Court may
28 still grant a new trial if the verdict is “contrary to the clear weight of the evidence.”

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1 Hanson v. Shell Oil Co., 541 F.2d 1352, 1359 (9th Cir. 1976). A new trial is also proper
2 if the “amount of compensation awarded is excessive.” Id. In this posture, the Court
3 “need not view the evidence from the perspective most favorable to the prevailing
4 party.” Air-Sea Forwarders, Inc. v. Air Asia Co., Ltd., 880 F.2d 176, 190 (9th Cir. 1989).
5 Instead, it “can weigh the evidence and assess the credibility of witnesses” anew. Id.
6 ARGUMENT
7 The Court should grant Getac JMOL on the issues of infringement, invalidity,
8 damages, and willfulness because the jury’s verdict on those issues is unsupported by
9 substantial evidence. Alternatively, the Court should grant a new trial on these issues
10 because the jury’s verdict is against the clear weight of the evidence.
11 A. The Infringement Verdict Is Unsupported By Substantial Evidence.
12 Getac is entitled to JMOL of non-infringement because an “ordinary observer”
13 can easily see that design of the accused products is “plainly dissimilar” from the
14 patented design. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir.
15 2008) (en banc). That is particularly so when the functional aspects of Panasonic’s
16 designs are disregarded, as they must be. Because the Supreme Court’s “ordinary
17 observer” test requires no more than a “plainly dissimilar” design, the Court can grant
18 JMOL of non-infringement without considering any prior art designs.
19 B. The “ordinary observer” test governs.
20 The “ordinary observer test” is the “sole test for determining whether a design
21 patent has been infringed.” Egyptian Goddess, 543 F.3d at 678. Under that test,
22 infringement exists only where, “in the eye of an ordinary observer, giving such
23 attention as a purchaser usually gives, two designs are substantially the same.” Gorham
24 Mf’g Co. v. White, 81 U.S. 511, 528 (1871). An “ordinary observer” is “the principal
25 purchaser[] of the articles,” and the “two designs are substantially the same” if “the
26 resemblance is such as to deceive such an observer, inducing him to purchase one
27 supposing it to be the other.” Id.
28 “The ordinary observer test proceeds in two stages.” Wallace v. Ideavillage

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1 Prods. Corp., 640 F. App’x 970, 972 (Fed. Cir. 2016); accord Performance Designed
2 Prods. LLC v. Mad Catz, Inc., No. 16-cv-629, 2016 WL 3552063, at *2 (S.D. Cal. June
3 29, 2016) (“The ‘ordinary observer’ test involves a two tiered approach.”); Wing Shing
4 Prods. (BVI) Co. Ltd. v. Sunbeam Prods., Inc., 665 F. Supp. 2d 357, 362 (S.D.N.Y.
5 2009) (“there are two levels to the infringement analysis”), aff’d, 374 F. App’x 956
6 (Fed. Cir. 2010).
7 At the first stage, the factfinder simply “conducts a side-by-side visual
8 comparison” between the plaintiff’s design and the defendant’s product. Mad Catz,
9 2016 WL 3552063, at *2. If “the claimed and accused designs are ‘sufficiently distinct’
10 and ‘plainly dissimilar,’ the patentee fails to meet its burden of proving infringement as
11 a matter of law.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1335
12 (Fed. Cir. 2015); see Egyptian Goddess, 543 F.3d at 678 (holding when “the claimed
13 design and the accused design [are] sufficiently distinct,” it “will be clear without more
14 that the patentee has not met its burden”).
15 Courts “consistently” find non-infringement at stage one, “based solely on
16 differences between the accused and patented designs.” Voltstar Techs., Inc. v.
17 Amazon.com, Inc., No. 13-cv-5570, 2014 WL 3725860, at *2 (N.D. Ill. July 28, 2014),
18 aff’d, 599 F. App’x 385 (Fed. Cir. 2015); see, e.g., Wallace, 640 F. App’x at 972-75;
19 Ethicon, 796 F.3d at 1335-37; Boiling Point Grp., Inc. v. Fong Ware Co., No. 2:16-cv-
20 01672, 2017 WL 2930838, at *5-6 (C.D. Cal. Apr. 27, 2017); Virco Mfg. Corp. v. Hertz
21 Furniture Sys., LLC, No. 13-cv-02205, 2014 WL 12591481, at *3-4 (C.D. Cal. Jan. 3,
22 2014); Mad Catz, 2016 WL 3552063, at *3-6; Dyson, Inc. v. SharkNinja Operating
23 LLC, No. 14-cv-779, 2018 WL 1906105, at *10-19 (N.D. Ill. Mar. 29, 2018); Degelman
24 Indus., Ltd. v. Pro-Tech Welding & Fabrication, Inc., No. 06-cv-6346, 2011 WL
25 6754040, at *9-10, 13 (W.D.N.Y. May 27, 2011), r&r adopted, 2011 WL 6752565
26 (W.D.N.Y. Dec. 23, 2011); Great Neck Saw Mfrs., Inc. v. Star Asia U.S.A., LLC, 727
27 F. Supp. 2d 1038, 1052-53 (W.D. Wash. 2010).
28 At stage one, courts should not consult prior art to decide whether the plaintiff’s

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1 design and defendant’s product are “sufficiently distinct” or “plainly dissimilar.”

2 Ethicon, 796 F.3d at 1335. That is because “comparing the claimed and accused designs
3 with the prior art is beneficial only when the claimed and accused designs are not
4 plainly dissimilar.” Id. at 1337 (emphasis added).
5 A court moves to stage two of the ordinary observer test only if the designs
6 “appear ‘substantially the same’” at stage one. Egyptian Goddess, 543 F.3d at 678. At
7 stage two, the Court considers the prior art to determine whether a design that appears
8 substantially similar to the patented design is nevertheless non-infringing.
9 In a crowded design field, “small differences between the accused design and the
10 claimed design are likely to be important to the eye of the hypothetical ordinary
11 observer.” Egyptian Goddess, 543 F.3d at 676. Accordingly, when “a field is crowded
12 with many references,” the “scope of protection of the patent [i]s limited to a narrow
13 range.” Egyptian Goddess, 543 F.3d at 676 (internal quotation marks omitted); accord
14 Wing Shing, 665 F. Supp. 2d at 365 (quoting Egyptian Goddess); Great Neck, 727 F.
15 Supp. 2d at 1053 (“When a field is crowded with many designs for the same type of
16 appliance, the Court must construe the range of equivalents very narrowly”). In other
17 words, prior art serves only to “narrow a design patent’s scope.” Sarah Burstein, The
18 Patented Design, 83 TENN. L. REV. 161, 175 (2015) (emphasis added). “[T]he prior art
19 may not be used to broaden the claim.” Id. (emphasis added).
20 Courts have rejected Panasonic’s argument that Egyptian Goddess created a
21 “three-way” comparison test where an accused design infringes if it is more similar to
22 the patented design than to the prior art. (Ex. C (Dkt. 394), Day 3 Trial Tr., Vol. 1, at
23 62:10-14.) The Federal Circuit has not required such “a three-way comparison between
24 the prior art, the patented design, and the accused products.” Richardson v. Stanley
25 Works, Inc., 597 F.3d 1288, 1295 (Fed. Cir. 2010). Thus, “whether the accused device
26 is ‘closer’ to the patented design than to the prior art is not the controlling inquiry.”
27 Wing Shing, 665 F. Supp. 2d at 368; see also Mad Catz, 2016 WL 3552063, at *6
28 (rejecting “arguments that summary judgment cannot be granted because the accused

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1 product is ‘closer to the patented design than the prior art’”); Hooker Furniture Corp. v.
2 GTR Leather, Inc., No. 1:20-cv-451, 2022 WL 508544, at *10 (M.D.N.C. Feb. 18,
3 2022) (rejecting “argument that the [defendant’s design] is ‘closer to the patented design
4 than to the prior art’”); Voltstar, 2014 WL 3725860, at *3 (“[W]hether the accused and
5 patented devices are more similar to each other than they are to the prior art is not the
6 dispositive test.”). Panasonic’s contrary argument is “inconsistent with the teachings of
7 the Federal Circuit and entirely unhelpful.” Great Neck, 727 F. Supp. 2d at 1057.
8 C. Stage 1: The claimed and accused designs are “plainly dissimilar.”
9 The trial record lacks substantial evidence from which a jury could have found
10 infringement because, under stage one of the “ordinary observer” test, the parties’
11 designs are “plainly dissimilar.” Ethicon, 796 F.3d at 1335. The Court can reach that
12 conclusion and grant JMOL without analyzing the prior art.
13 It is undisputed here that the “ordinary observer” is “not just some Joe Shmoe on
14 the corner,” but is instead “sophisticated and educated users and purchasers and
15 decision-makers who all contribute to the information that a company like Panasonic
16 uses to provide information for designing their products.” (Ex. B (Dkt. 393), Day 2 Trial
17 Tr., Vol. 3, at 67:4–16.) The ordinary observer is a sophisticated “industrial purchaser
18 or contract buyer” of industrial products. Arminak & Assocs., Inc. v. Saint-Gobain
19 Calmar, Inc., 501 F.3d 1314, 1323 (Fed. Cir. 2007).
20 The relevant question is therefore whether such a sophisticated purchaser would
21 find the parties’ designs so similar “as to deceive such an observer, inducing him to
22 purchase one supposing it to be the other.” Gorham, 81 U.S. at 528. The answer is
23 plainly no. Even to the layman’s eye, a comparison of the designs shows they are so
24 plainly dissimilar that no reasonable person could confuse the two. Compare Exs. 85,
25 1342-1343 (D’232, D’634, and D’998 SCORE Drawings) with Exs. 180-182 (K120
26 photos) and with Ex. 183-185 (UX10 photos); see also Appendix 1 (indicating
27 exemplary patent figures and product photos).
28 1. The D’232 Patent is not infringed.

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1 The D’232 patent claims a design for the cradle into which a detachable tablet
2 computer is inserted. The jury found that the K120 and UX10 products infringe. But a
3 simple side-by-side comparison of the designs shows that the accused cradles are
4 “plainly dissimilar” from that in the patented design. For example, compare the interiors
5 of the patented cradle with that of the accused cradle:
6
7
8
9
10
11
12
13
14
15 Compare Ex. 85, Fig. 20 (cropped, annotated1) with Ex. 183 at 23 and Ex. 180 at 25.2
16 A sophisticated purchasing agent who sets out to purchase the patented cradle
17 would obviously not accidentally purchase the Getac cradle, “supposing it to be the
18 other.” Gorham, 81 U.S. at 528. A tablet that fits into the patented cradle would not fit
19 into the K120, which has two connectors instead of one and three additional prongs.
20 Nor would it fit into the UX10, at least because the UX10 has two additional prongs.
21 No reasonable jury could conclude that the sophisticated purchaser would be deceived
22 into confusing Getac’s cradles with the patented design.
23 The differences continue when the purchaser considers the outside of the cradles.
24 As shown below, the patented design includes a large “center switch” while the two
25 1
Unless otherwise noted, all exhibits are attached to the Declaration of Britton Davis.
26 Yellow highlighting and colored annotations on product and patent figures has been
27 added. Figures have been cropped to focus on claimed design portions only.
2
All numbered exhibits have been numbered according to the trial exhibit number to
28 which they correspond.

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1 accused designs place the switch on the right. (See Dkt. 385 at 28 (jury instructions that
2 the claimed design includes a “center switch”).) A sophisticated purchasing agent would
3 not purchase the Getac products thinking them to be the patented design.
4
5
6
7
8
9
10 Compare Ex. 85, Fig. 3 with Ex. 183 at 5 and Ex. 180 at 6.
11 If any doubt remained, the purchasing agent could compare the bottom of the
12 cradles. The patent design calls for a clean, unbroken bottom piece, while both K120
13 and UX10 both feature numerous openings:
14
15
16
17
18
19
20 Compare Ex. 85, Fig. 13 with Ex. 183 at 17 and Ex. 180 at 19. And if all that were not
21 enough, Getac’s design is literally labelled “Getac” in oversized lettering:
22
23
24
25
26
27
28

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1 Comparing Ex. 85 (D’232 SCORE) and Ex. 183 (UX10), 20; see Columbia Sportswear
2 N.A., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119, 1131 (Fed. Cir. 2019)
3 (court should “consider[] an ornamental logo, its placement, and its appearance as one
4 among other potential differences”).
5 In light of all these differences, it is simply implausible that a sophisticated
6 purchasing agent would mistake Getac’s products for Panasonic’s designs.
7 2. The D’634 Patent is not infringed.
8 The design claimed in the D’634 patent is also plainly dissimilar to Getac’s
9 designs. The D’634 patent claims a design for the cradle’s interior. For many of the
10 same reasons cited above, a sophisticated purchasing agent would confuse Getac’s
11 interiors with the claimed interiors. Again, merely compare the claimed design to the
12 interior of the Getac products:
13
14
15
16
17
18
19
20
Compare Ex. 1343, Fig. 6 with Ex. 181, 4 and Ex. 184, 5. The claimed design uses a
21
single, centered electrical connector and no prongs. In contrast, the K120 has two, offset
22
electrical connectors and three prongs. There is simply no confusing the two.
23
3. The D’998 Patent is not infringed.
24
The design claimed in the D’998 is also plainly dissimilar to Getac’s designs. The
25
D’998 claims the edge of the tablet that mates with the cradle. Because the patented and
26
accused designs are dictated by the need to mate with completely different cradles, there
27
can be no confusing those designs. Again, this is plain from a simple visual inspection:
28

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1
2
3
4
5
6
Compare Ex. 1342, Fig. 8 with Ex. 182, 7 and Ex. 185, 7. The patented design utilizes
7
a single, centered electrical connector, rectangular elements towards the edges, and no
8
prong holes. In contrast, the K120 design uses two, offset electrical connectors and three
9
circular prong holes (to accept the cradle’s prongs). The UX10 utilizes similar prong
10
holes that are missing from the claimed design, and it lacks the rectangular elements on
11
the ends. Given these plain visual differences, a sophisticated purchasing agent looking
12
for the patented interface would not accidentally purchase either of Getac’s products.
13
* * *
14
Given the clear differences between the patented and accused designs and the
15
sophistication of the ordinary observer here, it was unreasonable for the jury to conclude
16
that an ordinary observer would have been deceived into purchasing the accused
17
products, thinking they were the patented designs. Indeed, that conclusion contradicts
18
the determination made by the USPTO when it granted Getac its own design patents for
19
the accused products. (Ex. H (Dkt. 396) Day 5 Trial Tr. Vol. II, at 22:18-26:18, 27:13-
20
28:13.) And the conclusion is unsupported by Panasonic’s evidence, which fails to
21
identify even a single customer who was actually deceived such that they purchased the
22
Getac products thinking them to the be patented designs.
23
Because the accused designs are plainly dissimilar from the patented designs, the
24
Court should grant JMOL of non-infringement at the first stage of the ordinary observer
25
test. See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1575-78 (Fed. Cir. 1995)
26
(reversing denial of judgment as a matter of law because visual comparison of designs
27
showed “no reasonable jury could have concluded that the overall visual appearance of
28

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1 the claimed design is substantially similar to the accused design”); Hartco Eng’g, Inc.
2 v. Wang’s Int’l, Inc., 142 F. App’x 455, 459 (Fed. Cir. 2005) (reversing denial of
3 judgment as a matter of law because, “[c]omparing the two designs … no reasonable
4 jury could have concluded that the overall visual appearance of the claimed design is
5 substantially similar to the accused design”).
6 D. Stage 2: Prior art narrows the design.
7 Because the accused products and patented designs are plainly dissimilar, the
8 Court need not consider the prior art. Ethicon, 796 F.3d at 1337. But if the Court finds
9 that the designs are no plainly dissimilar, it may consider the prior art to confirm that
10 Getac’s products do not infringe.
11 Getac submitted five prior-art patents (Lin, Hsiao, Zhao, Hsu, and Itano)
12 describing designs of tablet cradles mounted on hinges, as in the D’232 Patent:
13
14
15
16
17
18
19
20
21
22 Ex. 540 (“Lin”); Ex. 2308 (Hsiao); Ex. 2318 (“Zhao”); Ex. 2156 (“Hsu”); Ex. 2342

23 (“Itano”). As shown above, the Hsiao, Hsu, and Lin cradles all had raised ends, like

24 Panasonic’s. Lin’s utilized a 45-degree slope and central latch mechanism, like

25 Panasonic’s. Itano used the same (1) hinge placement, (2) rounded lower corners, and

26 (3) beveled edges of the lower corners. In sum, nearly everything in the D’232 patent

27 was already present in the prior art.

28 The story is similar for the D’998 patent, whose rounded corners, beveled edges,

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1 paired latch receptacles, and central electrical connector were all in prior art. Ex. 2307,
2 Fig. 5; Ex. 2338, Figs. 1-8; Ex. 2346, Fig. 3; Ex. 2347, Figs. 1-3; and Ex. 2160 at 5. The
3 only novelty in the D’998’s design is apparently the two rectangular elements near the
4 tablet edge. Compare D’998, Fig. 3 with Ex. 2333, Fig. 1; Ex. 2170; Ex. 2160 at 5.
5 In light of this “crowded” field of prior art, “the Court must construe the range of
6 equivalents very narrowly.” Great Neck, 727 F. Supp. 2d at 1053 (citing Egyptian
7 Goddess, 543 F.3d at 676). And because the patented designs are “close to the prior art
8 designs, small differences between the accused design and the claimed design are likely
9 to be important.” Egyptian, 543 F.3d at 676. The differences between Getac’s products
10 and the patented design are more than sufficient, as a matter of law, to show “no
11 reasonable fact-finder could find…an ordinary observer, taking into account the prior
12 art, would believe the accused design to be the same as the patented design.” Id. at 682.
13 E. Exclusion of functional elements narrows the design.
14 Whatever few similarities do exist between the accused and patented designs,
15 only the non-functional subset of those elements may even be considered for
16 infringement. That is because “[w]here a design contains both functional and non-
17 functional elements, the scope of the claim must be construed in order to identify the
18 non-functional aspects of the design as shown in the patent.” OddzOn Prods., Inc. v.
19 Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997).
20 Here, nearly all elements of the patented designs are functional because they were
21 dictated by the requirement that the tablet edge dock with the cradle. And even if each
22 design were considered alone, the trial evidence established that several of the designs’
23 elements are still dictated by function, including the 45-degree raised ends, their
24 radiused corners, and the cradle’s closed ends. When all the functional elements are
25 excluded from the infringement analysis, the infringement verdict cannot stand.
26 4. Most design elements are dictated by the docking
requirement.
27
Many of the claimed design elements should be ignored as functional because
28

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1 they are dictated by the requirement that the tablet edge dock into the cradle. Coupling
2 components that “must be designed as shown in order to … fit into [their]
3 corresponding” components are per se functional. Best Lock Corp. v. Ilco Unican Corp.,
4 94 F.3d 1563, 1566 (Fed. Cir. 1996). Thus, in Best Lock, the Federal Circuit held that a
5 design for a key blade was functional because “no alternative blank key blade would fit
6 the corresponding lock.” Id.
7 Here, the trial evidence is clear that Panasonic’s claimed cradle and tablet edge
8 designs were chosen specifically for their ability to fit together. Their inventor, Mr.
9 Kitade, testified that, because the tablet edge and cradle “have to fit very securely,” they
10 “were designed to fit together snugly—like a puzzle piece.” Ex. A, Day 2 Trial Tr. Vol.
11 1, at 53:16-54:17. He testified that, “if you were to change one or the other,” “[y]ou
12 would have to change the portion of that fitment.” Id. That testimony was echoed by
13 Panasonic’s marketing witness, Mr. Rowley, who testified that the tablet and cradle
14 were “designed to integrate seamlessly.” Id. at 31:19-32.
15 Consequently, under Best Lock, the design elements necessary to facilitate that
16 integration are necessarily functional, and they therefore may not serve as the basis for
17 infringement. Those functional elements include nearly the entire claimed design.
18 Form and location of all connectors. There was no dispute that the form and
19 location of the cradle’s electrical and mechanical connectors were dictated by the
20 functional requirement of interfacing with the tablet edge’s corresponding connectors
21 and vice versa—not by any ornamental considerations. Panasonic’s expert, Mr.
22 Bressler, admitted that “if you change the electronic connector” on the cradle, “[y]ou
23 would probably have to change the corresponding connector on the tablet.” (Ex. C (Dkt.
24 394), Day 3 Trial Tr., Vol. 1, at 52:13-16.) He further admitted that “[i]f you change the
25 location of the mechanical connectors” on the cradle (i.e., the latches), you “would []
26 have to change the corresponding latch recesses … on the tablet.” (Id. at 52:17-20.)
27 Panasonic presented no evidence that either an alternative location or alternative form
28 was possible for any of these connectors.

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1 Accordingly, no evidence suggests that either the location or form of the

2 electronic or mechanical connectors on either the cradle or tablet edge is ornamental.
3 Those connectors therefore cannot support the verdict that the accused designs were
4 similar to the patented designs.
5 Length, width, and cross-section. Because the cradle and tablet edge “were
6 designed to fit together snugly—like a puzzle piece,” they must have the same length,
7 width, and cross sections. For example, for the tablet edge to fit “snugly” into the cradle,
8 it needs a concave cross-section mirroring the cradle’s concave cross-section, as below.
9
10
11
12
13
14
15
16
17
18 Ex. 1342 (D’998 SCORE), Fig. 8 (tablet edge annotated); Ex. 85 (D’232 SCORE), Fig.
19 5 (cradle annotated). As one of the inventors testified, “[y]ou would have to change the
20 portion of that fitment” on the tablet or cradle if the other changed. Ex. A, Day 2 Trial
21 Tr., Vol. 1, at 53:25–54:3. The curved tablet edge and cradle bottom therefore cannot
22 be considered for purposes of infringement.
23 Cradle’s canoe shape. The cradle’s canoe-shaped profile is also largely dictated
24 by functional considerations.
25
26
27
28 Ex. 85, Fig. 3.

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1 The cradle’s lowered central section is dictated by the requirement that the cradle
2 not cover the tablet edge’s bottom buttons. The location where the 45-degree raised
3 ends begins and the choice of that angle are also dictated by function—specifically, the
4 need to match the corresponding ridges on the tablet edge. Accordingly, the overall
5 canoe shape of the cradle was chosen largely for the functional purpose of fitting with
6 the tablet edge, and vice versa. The particular contours of the shape therefore cannot be
7 considered as a basis for infringement.
8 5. Some design elements are dictated by functions other than
the docking requirement.
9
Even setting aside the functional requirement that the cradle and tablet edge must
10
“fit together snugly—like a puzzle piece” (Ex. A, Day 2 Trial Tr., Vol. 1, at 53:16-
11
54:17), there was significant evidence at trial that many design elements of the cradle
12
were dictated by functional considerations irrespective of tablet edge, and vice versa.
13
45-Degree Angles. Regarding the 45-degree rise at the edge of the cradle, Mr.
14
Chang testified that “the reason for that [45-degree angle] is” functional—specifically,
15
“with 45 degrees, the force or stress are the most evenly distributed.” Ex. F, Day 4 Trial
16
Tr., Vol. 2, at 89:25-90:3 (emphasis added). Getac’s Alex Lee confirmed that the “45-
17
degree angle was selected [by Getac] entirely due to functional consideration.” (Ex. B
18
(Dkt. 393), Day 2 Trial Tr., Vol. 3, at 28:10-12 (emphasis added).) And Joel Jiang
19
explained that 45-degree raised ends of the K120 were used to help guide the tablet into
20
the cradle “to be correctly and reliably positioned.” Ex. F, Day 4 Trial Tr., Vol. 2, at
21
82:19-83:8. Mr. Bressler testified that the ends of the cradle “could go up at a different
22
angle” (Ex. E (Dkt. 395), Day 4 Trial Tr., Vol. 1, at 82:5-83:17), but Panasonic
23
introduced no evidence that a different angle would have worked as well to distribute
24
the force or stress as evenly. Consequently, it is unrebutted that the choice of 45 degrees
25
is dictated by function.
26
Radiused Corners. Mr. Bressler admitted that the radiused corners of the 45-
27
degree raised ends is a function of manufacturing considerations “because it relieves
28

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1 the stress of the material cooling and enables better flow in the mold.” (Ex. C (Dkt.
2 394), Day 3 Trial Tr., Vol. 1, at 15:1-20; see also id. at 60:12-24 (explaining the need
3 for radiused corners in manufacturing).)
4 Sides. Mr. Bressler opined that an alternative cradle design was available in
5 which the docking cradle has “no sides at all” because, hypothetically, one might be
6 able to design such strong electronic and mechanical connectors that the design would
7 not need cradle sides to prevent the tablet from “wobbl[ing].” (Ex. E (Dkt. 395), Day 4
8 Trial Tr., Vol. 1, at 83:13-17.) This testimony is self-defeating because it admits that
9 the very purpose of having sides on the cradle is functional—to prevent “wobble”—and
10 that removing those sides would create functional complications requiring redesign of
11 the mechanical and electrical connectors on both the cradle and mating tablet edge. The
12 cradle’s sides are therefore primarily functional, not ornamental.
13 6. The remaining ornamental features are insufficient to
support the verdict of infringement.
14
When all of the functional design elements described above are excluded from
15
the scope of Panasonic’s patents, any remaining ornamental features are insufficient as
16
a matter of law to support the infringement verdict.
17
• D’634. The major features of the D’634 patent (which claims the interior of the
18
cradle) are the electrical connectors, mechanical connectors, and shape of the
19
cradle. But as shown above, these elements are all dictated by the functional
20
requirement that the cradle correspond exactly to the tablet edge.
21
• D’998. That tablet edge is claimed in the D’998 patent, but when the functional
22
elements described above are factored out there is almost no similarity at all
23
between the claimed and accused tablet edges.
24
• D’232. The D’232 patent (which claims the exterior of the cradle) does include
25
some minor ornamentation beyond the functional elements described above,
26
specifically (1) the prominent center latch, (2) the same-sized contours of the
27
radiused corners, (3) a contiguous bottom without holes, and (4) an internal cradle
28

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1 without prongs. Getac’s products, however, use almost none of that ornamentation.
2 In sum, any ornamental elements in the patented designs are insufficient to
3 support the verdict. See Precor Inc. v. Life Fitness, 13 F. App’x 913, 919-20 (Fed. Cir.
4 2001) (reversing denial of JMOL because evidence did not show similarities between
5 designs “due to the ornamental features claimed by the design patent”).
6 THE ASSERTED PATENTS ARE INVALID AS PRIMARILY
7 FUNCTIONAL.
8 As explained above, the design elements claimed in Panasonic’s patents are
9 primarily functional. These functional elements not only limit the scope of Panasonic’s
10 claims, but they are so preponderant that they render the patents invalid as “primarily
11 functional.” High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed.
12 Cir. 2013) (cleaned up).
13 “If [a] patented design is primarily functional rather than ornamental, the patent
14 is invalid.” Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238 (Fed. Cir.
15 1986). To decide whether a design is “primarily functional” the factfinder must consider
16 the design “in its entirety” and inquire into “various factors”: (1) “whether the protected
17 design represents the best design”; (2) “whether alternative designs would adversely
18 affect the utility of the specified article”; (3) “whether there are any concomitant utility
19 patents”; (4) “whether the advertising touts particular features of the design as having
20 specific utility”; and (5) “whether there are any elements in the design or an overall
21 appearance clearly not dictated by function.” High Point Design, 730 F.3d at 1315
22 (cleaned up); accord PHG Techs., LLC v. St. John Cos., 469 F.3d 1361, 1366-67 (Fed.
23 Cir. 2006).
24 A design is “primarily functional” at least “when the appearance of the design is
25 ‘dictated by’ the use or purpose of the article.” L.A. Gear, Inc. v. Thom McAn Shoe Co.,
26 988 F.2d 1117, 1123 (Fed. Cir. 1993). For example, in Best Lock, the Federal Circuit
27 held that a design for a key blade was “primarily functional” because “no alternative
28 blank key blade would fit the corresponding lock.” 94 F.3d at 1566.

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1 Neither the law nor common sense dictate that a design is “primarily ornamental”
2 simply because other designs are possible. The Federal Circuit has been explicit that
3 “[t]he presence of alternative designs” is merely one factor among others that “may or
4 may not assist in determining whether the challenged design can overcome a
5 functionality challenge.” Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452,
6 1456 (Fed. Cir. 1997) (emphasis added); PHG, 469 F.3d at 1367 (same). Indeed, other
7 factors the Federal Circuit considers presume the availability of alternative designs. For
8 example, if the availability of alternative designs alone could render a design primarily
9 ornamental, it would make no sense to ask whether those “alternative designs would
10 adversely affect the utility of the specified article” or whether individual “elements in
11 the design” are “clearly not dictated by function.” Id. The dispositive question is
12 whether a design is “primarily” functional or ornamental, not whether it is entirely so.
13 See Power Controls, 806 F.2d at 240 (showing that a “design is composed mainly of
14 functional elements” raises a substantial question about whether the design was
15 “primarily functional”); Golden Eye Media USA, Inc. v. Evo Lifestyle Prods. Ltd., No.
16 2021-2096, 2022 WL 2232517 (Fed. Cir. June 22, 2022) (holding that the availability
17 of alternative designs for a grocery bag did not show that the design was primarily
18 ornamental because those designs were less functional than the claimed design).
19 Under this test, the trial evidence proved that, as a matter of law, Panasonic’s
20 patents are “primarily functional” and therefore invalid. Though the Court held at
21 summary judgment that the record contained sufficient evidence for a reasonable jury
22 to conclude that the patents were primarily ornamental, the evidence actually presented
23 to the jury supported only the opposite conclusion.
24 “In determining whether a design is primarily functional, the purposes of the
25 particular elements of the design necessarily must be considered.” see Power Controls,
26 806 F.2d at 240. And here, as shown above (see supra § I.D), the trial evidence showed
27 that nearly all of the patents’ design elements are dictated by function, including at least
28 (1) all of the electrical and mechanical connectors, (2) the length, width, and cross

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1 section of the cradle and tablet edge, and (3) the cradle’s general canoe shape, including
2 the cradle’s 45-degree raised ends, the radiused corners of those raised ends, and the
3 cradle’s closed ends. When those design elements are discarded, almost nothing is left.
4 Consequently, the “overall arrangement of the designs as a whole” is primarily
5 functional. PHG, 469 F.3d at 1368 & n.2.
6 Because the patented designs are “primarily functional,” the jury’s validity
7 verdict is improper or at least against the clear weight of the evidence. See Bentley v.
8 Sunset House Distrib. Corp., 359 F.2d 140, 145-46 (9th Cir. 1966) (affirming grant of
9 JMOL to defendant because plaintiff’s design patent was primarily functional).
10 SUBSTANTIAL EVIDENCE DOES NOT SUPPORT THE DAMAGES
11 AWARD BECAUSE THE “ARTICLE OF MANUFACTURE” IS NOT
12 THE ENTIRE COMPUTER.
13 If the Court does not grant Getac JMOL respecting infringement, it should at least
14 grant JMOL respecting damages. The jury granted Panasonic the full amount of its
15 claimed damages, which required finding that the “articles of manufacture” were
16 Getac’s entire computers—not only the claimed cradle and tablet edges. That finding is
17 not supported by substantial evidence.
18 The Patent Act provides for recovery of an infringer’s profits when the infringer
19 has applied the patented design to “any article of manufacture for the purpose of sale.”
20 35 U.S.C. § 289. The statute provides that whoever “sells or exposes for sale any article
21 of manufacture to which such design or colorable imitation has been applied shall be
22 liable to the owner to the extent of his total profit.” Id. The calculation of damages thus
23 requires the factfinder to “identify the ‘article of manufacture’ to which the infringed
24 design has been applied,” then “calculate the infringer’s total profit made on that article
25 of manufacture.” Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429, 434 (2016).
26 Since Samsung, courts have used a four-factor test to determine the “article of
27 manufacture.” E.g., Apple Inc. v. Samsung Elecs. Co., No. 11-cv-01846, 2017 WL
28 4776443, at *11 (N.D. Cal. Oct. 22, 2017). They consider (1) the “scope of the design

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1 claimed in the plaintiff’s patent,” (2) the “relative prominence of the design within the
2 product as a whole,” (3) “[w]hether the design is conceptually distinct from the product
3 as a whole,” and (4) the “physical relationship between the patented design and the rest
4 of the product, including whether the design pertains to a component that a user or seller
5 can physically separate from the product as a whole, and whether the design is embodied
6 in a component that is manufactured separately from the rest of the product, or if the
7 component can be sold separately.” Id. at 11 (cleaned up). The “over-arching objective”
8 of this test is to “identify the article that most fairly embodies the defendant’s
9 appropriation of the plaintiff’s innovation.” Br. for the United States as Amicus Curiae
10 at 26, Samsung, 137 S. Ct. 429 (2016), 2016 WL 3194218 (Samsung Amicus Br.).
11 The jury awarded all of Getac’s profits on the K120 and UX10 products, meaning
12 it necessarily accepted that the “article of manufacture” was Getac’s entire computers.
13 That included the tablets and keyboards not covered by Panasonic’s patents. No
14 reasonable jury could have reached that conclusion by applying the four-factor test to
15 the trial evidence. The Court should grant Getac judgment as a matter of law on
16 damages and hold that the articles of manufacture are limited to the cradle and tablet
17 edge claimed in Panasonic’s patents.
18 Factor 1: The Scope of the Design Claimed. “[T]he scope of the design claimed
19 in the plaintiff's patent, including the drawing[s] and written description, provides
20 insights into which portions of the underlying product the design is intended to cover,
21 and how the design relates to the product as a whole.” Samsung Amicus Br. at 27.
22 Here, the patents claim the design of only the cradle (D’232 and D’634) and only
23 the tablet edge (D’998), not the entire computer. The jury was instructed that the solid
24 lines (not broken lines) in those patents define the claims. (Ex. B (Dkt. 393), Day 2 Trial
25 Tr., Vol. 3, at 72:1-5 (D’232), 80:8-11 (D’998), 86:16-23 (D’634); Ex. I, Day 6 Trial
26 Tr., Vol. 1, at 44:3-6 (D’232), 44:24-45:2 (D’634), 45:14-19 (D’998); Ex. G, Day 5
27 Trial Tr., Vol. 1, at 15:9-21).) The SCORE drawings Panasonic relied on and entered
28 into evidence as Exhibits 85, 1342, and 1343 depict the solid and broken lines and show

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1 the designs claimed are limited to specific, ornamental aspects of the docking cradle
2 (D’232, D’634) and tablet docking edge (D’998) that connect to and detach from one
3 another. Therefore, the patents “indicate that the design is intended to be applied to a
4 component of the product,” and not the product as a whole. Samsung Amicus Br. at 28.
5 The testimony at trial confirms this conclusion. Panasonic’s expert, Mr. Bressler,
6 testified that the patents claim only a small portion of a computer:
7 • D’232. “If you look closely, you can see that … the lines around the cradle for the
8 tablet are in solid lines, as are the legs attached to the computer. But you’ll also
9 notice that the rest of the computer is in dotted lines, and that’s because the only
10 portion of this design that is being claimed for a patent coverage is this inner
11 connection design.” (Ex. B (Dkt. 393), Day 2 Trial Tr., Vol. 3, at 73:10-16.)
12 • D’998. “And you see the solid lines as opposed to the dotted lines are illustrating
13 the channel that plugs into the canoe. Okay. So this whole area is what plugs into
14 the canoe. The rest of it is not really being claimed.” (Ex. B (Dkt. 393), Day 2 Trial
15 Tr., Vol. 3, at 80:8-11.)
16 • D’634. “The inside of the cradle that supports the tablet is being claimed because
17 that’s all that’s in solid … . So this is not a computer. This is a connection terminal
18 for a computer connected to a keyboard.” (Ex. B (Dkt. 393), Day 2 Trial Tr., Vol.
19 3, at 84:16-85:5.)
20 Getac’s expert, Mr. Delman, agreed:
21 • D’232. “So this is the D’232 patent. And what I’ve done here is to highlight the
22 claimed part of this design, the claimed design, which is only the cradle and its
23 hinges. That’s all that the patent shows in solid lines.” (Ex. G, Day 5 Trial Tr., Vol.
24 1, at 16:13-16.)
25 • D’998. “And as you can see here, it includes the edge. And that edge features the
26 connection points which would meet with the connectors that we saw on the inside
27 of the cradle in the prior two patents.” (Ex. G, Day 5 Trial Tr., Vol. 1, at 19:18-
28 21.)

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1 • D’634. “So the ’634 patent has some overlap with the ’232 patent we just looked
2 at. But rather than claiming the entire cradle, it just claims what’s inside the
3 cradle.” (Ex. G, Day 5 Trial Tr., Vol. 1, at 18:10-13.)
4 Factor 2: The Relative Prominence of the Design. The relative prominence of
5 the design also shows that the articles of manufacture are the cradle (D’232 and D’634)
6 and tablet edge (D’998) of the computers, not the computers themselves. “[I]f the design
7 is a minor component of the product, like a latch on a refrigerator, or if the product has
8 many other components unaffected by the design, that fact suggests that the ‘article’
9 should be the component,” not the entire product. Samsung Amicus Br. at 28. That is
10 the case here. Panasonic’s patents claim only small portions of a computer, and the
11 patented portions of the D’998 and D’634 designs are not even visible when the tablet
12 and keyboard are connected as a single product. E.g., Ex. 85, Fig. 1.
13 Factor 3: Conceptual Distinctness. The patented designs are also conceptually
14 distinct from Getac’s computers as a whole, as demonstrated by the evidence regarding
15 the importance of the technical specifications of rugged portable computers. For
16 example, Mr. Hwang testified that customer-specific features and functional technical
17 capabilities are important factors in developing its products. Ex. F, Day 4 Trial Tr., Vol.
18 2, at 37:21-38:8. Similarly, Ms. Wang testified that functionality, such as hot-swappable
19 batteries, is the customer’s primary concern. Ex. F, Day 4 Trial Tr., Vol. 2, at 99:20-25,
20 101:4-102:10, 104:8-17. Mr. Lee also testified that the priority in selecting the design
21 for the K120 was always functionality. (Ex. E (Dkt. 395), Day 4 Trial Tr., Vol. 1, at
22 120:7-24.) Mr. Jarosz—while acknowledging that 2-in-1 versatility is one feature of the
23 product—emphasized that it is distinct from other features such as CPU, memory,
24 storage, and display size. Id. at 42:19-43:9. The ornamental designs of the tablet edge
25 and cradle are conceptually distinct from the computer as a whole, because they are
26 irrelevant to the hardware that makes the tablet a computer.
27 Factor 4: Physical Relationship. This factor shows that the cradle (D’232 and
28 D’634) and tablet edge (D’998) are physically distinct from the computer. “If the design

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1 pertains to a component that a user or seller can physically separate from the product as
2 a whole, that fact suggests that the design has been applied to the component alone
3 rather than to the complete product.” Samsung Amicus Br. at 29. Here, the cradle and
4 tablet edge can be—are, in fact, designed to be—separable from each other and from
5 the assembled computer.
6 “The same is true if the design is embodied in a component that … can be sold
7 separately (for instance, for replacement purposes).” Samsung Amicus Br. at 29. The
8 evidence here—included sales records and the testimony of Panasonic’s expert Mr.
9 Persechini—showed that the K120 computer’s tablet and keyboard can be sold
10 separately and that the UX10 computer’s tablet and keyboard are always sold
11 separately. (Ex. E (Dkt. 395), Day 4 Trial Tr., Vol. 1, at 15:11-17:7; Ex. 90.)
12 For these reasons, the evidence at trial is overwhelming that the articles of
13 manufacture are the cradle and tablet edge claimed in Panasonic’s patents. Substantial
14 evidence does not support the jury’s finding that the articles of manufacture were
15 Getac’s entire computers.
16 SUBSTANTIAL EVIDENCE DOES NOT SUPPORT THE FINDING OF
17 WILLFUL INFRINGEMENT.
18 Finally, the Court should grant JMOL of no willful infringement because no
19 reasonable jury could conclude that Getac willfully infringed Panasonic’s patents.
20 Willful infringement refers to “deliberate or intentional infringement.” SRI Int’l,
21 Inc. v. Cisco Sys., Inc. (“SRI II”), 14 F.4th 1323, 1330 (Fed. Cir. 2021) (citing Eko
22 Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367, 1378 (Fed. Cir.
23 2020). It requires “proof that the defendant acted despite a risk of infringement that was
24 ‘either known or so obvious that it should have been known to the accused infringer.’”
25 WesternGeco L.L.C. v. ION Geophysical Corp., 837 F.3d 1358, 1362 (Fed. Cir. 2016),
26 rev’d on other grounds, 138 S. Ct. 2129 (2018). Because “culpability is generally
27 measured against the knowledge of the actor at the time of the challenged conduct,”
28 Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 94 (2016), “a party cannot be found

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1 to have ‘willfully’ infringed a patent of which the party had no knowledge,” Gustafson,
2 Inc. v. Intersys. Indus. Prods., Inc., 897 F.2d 508, 511 (Fed. Cir. 1990).
3 Here, the trial record contains no evidence that Getac knew of Panasonic’s
4 patents before this lawsuit. To the contrary, Getac’s witnesses testified that they were
5 not aware of the patents before the suit. For example, Alex Lee (Getac product manager
6 overseeing development of the K120) testified that he was unaware of Panasonic’s
7 patents during development of the K120. (Ex. B (Dkt. 393), Day 2 Trial Tr., Vol. 3, at
8 38:18-39:3; Ex. E (Dkt. 395), Day 4 Trial Tr., Vol. 1, at 127:3-10.) He further testified
9 that Getac’s design team was provided with only relevant utility patents and no design
10 patents. (Ex. E (Dkt. 395), Day 4 Trial Tr., Vol. 1, at 145:16-23, 146:21-25.) Joel Jiang
11 (the designer of the K120), confirmed that he was unaware of Panasonic’s patents until
12 Getac’s legal department informed him of the lawsuit. (Ex. F, Day 4 Trial Tr., Vol. 2,
13 at 84:2-7.) Consequently, no jury could have concluded from this record that Getac
14 infringed willfully before this suit. Gustafson, 897 F.2d at 511; see SRI Int’l, Inc. v.
15 Cisco Sys., Inc. (“SRI I”), 930 F.3d 1295, 1312 (Fed. Cir. 2019) (holding that verdict
16 of willful infringement before a certain date was not supported by substantial evidence
17 because defendant did not know of plaintiff’s patents until after that date).
18 Knowledge of the patents alone is also insufficient to prove willful infringement.
19 Ansell Healthcare Prods. LLC v. Reckitt Benckiser LLC, No. 15-cv-915, 2018 WL
20 620968, at *6 (D. Del. Jan. 30, 2018) (granting summary judgment of no willful
21 infringement because “a party’s pre-suit knowledge of the patent is not by itself
22 sufficient”). “Rather, the patentee must identify evidence beyond pre-suit knowledge of
23 the patent to show that the accused infringer’s infringement is ‘egregious,’ ‘deliberate,’
24 or ‘wanton.’” Id.
25 The record here contains no such evidence. After the lawsuit was filed, Getac
26 reasonably believed that it did not infringe and that the asserted patents were invalid.
27 To start, Getac’s belief that it did not infringe was and is reasonable for all the
28 reasons discussed above in Section I. The accused designs are nothing like the patented

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1 ones and there is no likelihood of any confusion by an ordinary observer. Getac even
2 obtained its own design patents on the accused products. See Exs. 2029 (D’771 patent);
3 2030 (D’714 patent); 2352 (D’825 patent). The USPTO had considered Panasonic’s
4 patents as prior art and concluded that Getac’s designs were patentably distinct. (Ex. H
5 (Dkt. 396), Day 5 Trial Tr., Vol. 2, at 20:12-21:22, 22:18-26:18, 27:13-28:13.) In other
6 words, the USPTO thought that Getac’s designs did not infringe, and it was reasonable
7 for Getac to believe the same. “[B]y relying on the issuance of its patent, which even
8 cited the [asserted] patent[s] as prior art, [Getac] might reasonably have believed that
9 its actions were protected as within its own patentably distinct claims.” King Instrument
10 Corp. v. Otari Corp., 767 F.2d 853, 867 (Fed. Cir. 1985); see also Nat’l Presto Indus.,
11 Inc. v. W. Bend Co., 76 F.3d 1185, 1192 (Fed. Cir. 1996) (“The fact of separate
12 patentability is relevant, and is entitled to due weight.”). That Getac reasonably believed
13 its designs did not infringe hardly renders this a case of “egregious” infringement.
14 Ansell Healthcare, 2018 WL 620968, at *6.
15 Though Panasonic had the burden to do so, it introduced no evidence relevant to
16 willfulness at trial. The evidence it did introduce does not relate to the asserted patents.
17 First, Panasonic introduced evidence that Getac allegedly “benchmarked” its
18 products against Panasonic’s. But, as Mr. Lee testified, that has nothing to do with
19 exterior design or even the asserted patents. (Ex. B (Dkt. 393), Day 2 Trial Tr., Vol. 3,
20 at 39:4-19.) “Benchmarking” is a standard industry practice comparing the performance
21 of one product to another. See Ex. A, Day 2 Trial Tr., Vol. 1, at 12:13-13:14 (Mr. Koide
22 testifying that Panasonic has researched and disassembled Getac’s K120).
23 Second, Panasonic introduced testimony from Mr. Scott Shainman (former
24 employee of Getac’s U.S. sales arm) that Getac copied Panasonic’s products. But Mr.
25 Shainman confirmed that, when he made statements related to copying, he had never
26 before seen Panasonic’s patents and was not providing any opinion with respect to those
27 patents. Ex. D, Day 3 Trial Tr., Vol. 2, at 8:20-10:10. His testimony thus cannot support
28 a finding that Getac willfully infringed patents that he knew nothing about.

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1 Third, Panasonic introduced emails from Mr. Collins (a Getac salesperson)

2 describing the K120 as a “copy” of Panasonic’s CF-20. Exs. 448, 450. But Mr. Collins
3 testified that, in the first of these emails, he was referring specifically to the computer’s
4 handle design and CPU architecture—neither of which are aspects of the patented
5 design. Ex. 4000, Collins Depo at 143:20-144:24; Ex. 448 at GETAC0082070. And Mr.
6 Collins clarified explicitly that his emails were not meant to communicate that Getac
7 copied the CF-20 or CF-33 design. Ex. 4000, Collins Depo at 139:11-141:1; Ex. 450.
8 Accordingly, the evidence at trial does not support the jury’s finding that Getac
9 willfully infringed Panasonic’s patents.
10 IN THE ALTERNATIVE, THE COURT SHOULD GRANT A NEW
11 TRIAL.
12 As explained above, the evidence of infringement, invalidity, damages, and
13 willfulness was so weak that no reasonable jury could have reached a verdict for
14 Panasonic on them. But even if the evidence were barely sufficient, a new trial would
15 still be appropriate on these issues because the verdict was at least “contrary to the clear
16 weight of the evidence.” Hanson, 541 F.2d at 1359 (finding verdict to be “against the
17 weight of the evidence” because plaintiff’s “evidence was weak”); Rattray v. City of
18 National City, 51 F.3d 793, 800 (9th Cir. 1994) (evidence “was very weak”).
19 CONCLUSION
20 The Court should grant Getac judgment as a matter of law or a new trial.
21 Dated: Aug. 12, 2022 KING & SPALDING LLP
22
By: /s/Christopher C. Campbell
23 CHRISTOPHER C. CAMPBELL
24 JOSEPH N. AKROTIRIANAKIS

25 Attorneys for Defendants GETAC

26 TECHNOLOGY CORPORATION AND
GETAC, INC.
27
28

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