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Transcript of 13-09-26 Apple Response to Google Petition for Fed. Cir. Rehearing
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7/28/2019 13-09-26 Apple Response to Google Petition for Fed. Cir. Rehearing
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No. 2012-1338
UNITED STATES COURT OFAPPEALS
FOR THE FEDERAL CIRCUIT
APPLE INC.,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
and
MOTOROLAMOBILITY, INC.,
Intervenor.
_________________
ONAPPEAL FROM THE UNITED STATES INTERNATIONAL TRADE COMMISSION
IN INVESTIGATION NO. 337-TA-750
_________________
APPLE INC.S RESPONSE TO PETITION FOR PANEL
REHEARING AND REHEARING EN BANC
_________________
Mark G. DavisBrian E. Ferguson
Weil, Gotshal & Manges LLP
1300 Eye Street, NW
Washington, DC 20005
Matthew D. Powers
Tensegrity Law Group LLP
201 Redwood Shores Pkwy
Redwood Shores, CA 94065
E. Joshua RosenkranzAlyssa Caridis
Orrick, Herrington & Sutcliffe LLP
51 West 52nd Street
New York, NY 10019
(212) 506-5000
Mark S. Davies
Rachel M. McKenzie
T. Vann PearceAmisha R. Patel
Orrick, Herrington & Sutcliffe LLP
1152 15th Street, N.W.
Washington, DC 20005
Attorneys for Appellant Apple Inc.
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CERTIFICATE OF INTEREST
Counsel for appellant certifies the following:
1. We represent Apple Inc.
2. That is the real name of the real party in interest.
3. Apple Inc. has no parent corporation. No publicly held
company owns 10 percent or more of Apple Inc.s stock.
4. The following law firms and partners or associates appeared for
Apple Inc. in the ITC or are expected to appear in this court:
ORRICK, HERRINGTON SUTCLIFFE LLP:
E. Joshua Rosenkranz
Mark S. Davies
Rachel M. McKenzie
T. Vann Pearce
Alyssa Caridis
Amisha R. Patel
WEIL GOTSHAL & MANGES LLP:
Carrie M. Anderson
Joshua A. Bachrach
Eva A. Belich
Jonathan Bloom
Carmen E. Bremer
Melissa Colon-BosoletCaitlyn M. Campbell
Anne M. Cappella
Brian C. Chang
Reed Collins
Justin L. Constant
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WEIL GOTSHAL & MANGES LLP (continued):
Isaac S. Crum
Mark G. Davis
Timothy E. DeMasiDavid M. DesRosier
Michael Eisenberg
Brian E. Ferguson
Erick Flores
Jacqueline T. Harlow (no longer with firm)
Erin Jones (no longer with firm)
Edward S. Jou
Jason D. Kipnis
Kevin KudlacJason J. Lang
Kathy A. Le (no longer with firm)
Joseph H. Lee (no longer with firm)
Christopher T. Marando
Meghan A. McCaffrey
Arjun Mehra
Rodney R. Miller
Adrian C. Percer
Penny R. ReidDanielle Rosenthal (no longer with firm)
Stephen K. Shahida
Caroline K. Simons
Stefani Smith (no longer with firm)
Christin Sullivan
Rachelle H. Thompson
Robert T. Vlasis
Megan H. Wantland
Robert Watkins (no longer with firm)
Elizabeth S. Weiswasser
Timothy C. Welch
Jeff L. White
Melissa J. Whitney
Jenny C. Wu (no longer with firm)
Patricia Young (no longer with firm)
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COVINGTON & BURLING LLP:
Christopher K. Eppich
Samuel F. Ernst
Robert D. FramJessica R. Gioia
Danielle L. Goldstein
Iris Y. Gonzalez
Leslie N. Harvey
Christine Saunders Haskett
Robert T. Haslam
Krista S. Jacobsen (no longer with firm)
R. Anthony Lopez
L.J. Chris MartiniakJeffrey T. Pearlman
Nathan Shafroth
Anupam Sharma
Ranganath Sudarshan
Winslow B. Taub
TENSEGRITY LAW GROUP LLP:
Steven S. CherenskyPaul T. Ehrlich
Monica Mucchetti Eno
Robert L. Gerrity
Azra Hadzimehmedovic
Matthew D. Powers
BRIDGES & MAVRAKAKIS LLP
Lawrence Lien
Christopherh Lubeck
Michael T. Pieja
James A. Shimota
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Dated: September 26, 2013 Respectfully submitted,
/S/ E. Joshua Rosenkranz
E. Joshua Rosenkranz
Orrick, Herrington & Sutcliffe LLP51 West 52nd Street
New York, NY 10019
(212) 506-5000
Attorney for Appellant
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TABLE OF CONTENTS
Page
v
INTRODUCTION.....................................................................................1
BACKGROUND........................................................................................2
ARGUMENT.............................................................................................4
I. THE PANEL DID NOT OVERLOOK OR MISAPPREHEND
ANY POINT OF LAW OR FACT IN NOT ORDERING A
REMAND TO ADDRESS WHETHER CLAIM 10 IS
ANTICIPATED BY PERSKI 455 ...................................................4
II. THE PANEL DID NOT OVERLOOK OR MISAPPREHEND
ANY POINT OF LAW OR FACT IN NOT ORDERING AREMAND TO ADDRESS WHETHER THE IPHONE
PRACTICES CLAIM 10 OF THE 607 PATENT............................7
III. THE PANEL DID NOT OVERLOOK OR MISAPPREHEND
ANY POINT OF LAW OR FACT RELATED TO THE
NEXUS BETWEEN CLAIM 10 AND SECONDARY
CONSIDERATIONS OF NONOBVIOUSNESS.............................9
IV. THERE IS NO BASIS FOR EN BANCREVIEW.........................14
CONCLUSION .......................................................................................14
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TABLE OF AUTHORITIES
Page(s)
CASES
Anderson v. City of Boston,
375 F.3d 71 (1st Cir. 2004)....................................................................5
Bailey v. Dart Container Corp. of Michigan,
292 F.3d 1360 (Fed. Cir. 2002) ......................................................4-5, 8
Crocs, Inc. v. United States Intl Trade Commn,
598 F.3d 1294 (Fed. Cir. 2010) ...........................................................10
Crown Operations Intl, Ltd. v. Solutia Inc.,289 F.3d 1367 (Fed. Cir. 2002) .............................................................6
Demaco Corp. v. F. Von Langsdorff Licensing, Ltd.,
851 F.2d 1387 (Fed. Cir. 1988) ...........................................................10
Easley v. Reuss,
532 F.3d 592 (7th Cir. 2008) .................................................................1
KSR Intl Co. v. Teleflex, Inc.,
550 U.S. 398 (2007) .............................................................................12
Pentax Corp. v. Robison,
135 F.3d 760 (Fed. Cir. 1998) ...............................................................5
Rambus Inc. v. Rea,
No. 2012-1634, 2013 WL 5312505 (Fed. Cir. Sept. 24, 2013) ............13
Sage Prods., Inc. v. Devon Indus., Inc.,
126 F.3d 1420 (Fed. Cir. 1997) ...........................................................11
SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312 (Fed. Cir. 2006) .............................................................5
In re Suitco Surface, Inc.,
603 F.3d 1255 (Fed. Cir. 2010) ...........................................................10
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In re Watts,
354 F.3d 1362 (Fed. Cir. 2004) ...........................................................11
Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,
683 F.3d 1356 (Fed. Cir. 2012) ...........................................................12
RULES
Fed. R. App. P. 40 ......................................................................................1
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INTRODUCTION
The Court has ordered this matter remanded to the International
Trade Commission for resolution of specific questions arising from
Motorola Mobility, Inc.s ongoing infringement of two Apple Inc.
patents. Motorolas rehearing petition, however, asks the Court to
order the ITC to address a host of additional issues. Motorola did not
mention these additional issues in its briefing to the panel. Panel
rehearing, of course, is suitable only when the Court has overlooked or
misapprehended points of law or fact. Fed. R. App. P. 40. It goes
without saying that the panel cannot have overlooked or
misapprehended an issue that was not presented to it. Easley v. Reuss,
532 F.3d 592, 593 (7th Cir. 2008). The rehearing petition should be
denied.
Motorolas four page en banc request rests on a misreading of the
Courts opinion and raises no issues suitable for that extraordinary
proceeding.
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BACKGROUND
Apple filed a complaint with the ITC alleging, as relevant here,
that Motorola is infringing two Apple patents. The ITC denied Apple
any relief. Apple appealed.
As to U.S. Patent No. 7,812,828, the Court vacated the ITCs
decision that Motorola Mobility, Inc. does not infringe the 828 patent
claims and remand[ed] the case to allow the ITC to consider in the first
instance whether the accused products infringe under the correct
construction. Op. 20.1
As to U.S. Patent No. 7,663,607, the Court found two errors. The
ITC had ruled that all asserted claims were anticipated by a reference
known as Perski 455. In so holding, the ITC had found that the
provisional application to which Perski 455 claimed priority,
Perski 808, incorporated another reference, Morag 662, that disclosed
the pixilated image element of claim 10. The Court agreed with Apple
1 For the purposes of this response, the panels decision isabbreviated as Op., Motorolas Petition for Panel Rehearing and
Rehearing En Banc is abbreviated as Pet., Apples Opening Brief
before the panel is abbreviated as AOB, Motorolas Brief before the
panel is abbreviated as MB, and Apples Reply Brief before the panel
is abbreviated as ARB.
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that this was error: Perski 808 does not even refer to the particular
functionality in Morag that detects the presence of a stylus, let alone
the process that outputs touch event information to form a pixilated
image, as required by claim 10. Op. 9. Because Perski 808 does not
incorporate by reference the anticipatory subject matter from Morag,
the ITCs finding that Perski 455 anticipates claim 10 of the 607 patent
lacks substantial evidence. Id. The Court vacat[ed] the ITCs decision
that claim 10 of the 607 patent would have been obvious and
remand[ed] the case for further proceedings. Op. 17.
The Court also ruled that the ITC erred by ignoring objective
indications of nonobviousness. Op. 14-18. The ITC analyzed only the
disclosure of the prior art references and based solely on that evidence
determined the claims would have been obvious. Op. 15. The Court
noted that this error was not harmless because Apple presented
compelling secondary considerations evidence that may have rebutted
even a strong showing under the first three Graham factors, and the
ITC failed to grapple with it. Op. 16. This included evidence of
industry praise, copying and commercial success. Op. 16-17. The Court
remanded so the ITC can consider the scope and content of the prior
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art in conjunction with the evidence of secondary considerations and
determine in the first instance whether claim 10 would have been
obvious to one of skill in the art at the time of the invention. Op. 17-
18.
ARGUMENT
I. THE PANEL DID NOT OVERLOOK OR MISAPPREHEND
ANY POINT OF LAW OR FACT IN NOT ORDERING A
REMAND TO ADDRESS WHETHER CLAIM 10 IS
ANTICIPATED BY PERSKI 455
Motorola argues that the Court mistakenly failed to remand for
additional fact finding on the issue of whether the Perski 455 patent is
prior art to claim 10. Pet. 2. The Court could not have overlooked or
misapprehended this issue because Motorola never made this meritless
argument to the Court. No remand is warranted.
Motorolas appellate brief did not argue that Perski 455 alone
anticipates claim 10 of the 607 patent. Motorola argued at length (MB
45-48) that the Court should find that Perski 808 incorporated the
relevant parts of Morag 662. Motorola could also have argued to the
Court that even if Morag 662 was not incorporated into Perski 808 the
Perski 455 patent anticipates claim 10. See Bailey v. Dart Container
Corp. of Michigan, 292 F.3d 1360, 1362 (Fed. Cir. 2002) (an appellee
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can present in this court all arguments supported by the record and
advanced in the trial court in support of the judgment as an appellee,
even if those particular arguments were rejected or ignored by the trial
court). For whatever reasons, Motorola did not make this available
argument to the Court. After losing on the arguments it selected to
brief, Motorola cannot use the panel rehearing process to revive
abandoned arguments. Pentax Corp. v. Robison, 135 F.3d 760, 762
(Fed. Cir. 1998) (a party may not raise new and additional matters for
the first time in a petition for rehearing); SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (When a party
includes no developed argumentation on a point we treat the
argument as waived under our well established rule (quotingAnderson
v. City of Boston, 375 F.3d 71, 91 (1st Cir. 2004)).
Although panel rehearing turns on what the panel decided,
Motorola latches on to a statement in Apples reply brief. Pet. 5 (citing
ARB 17). Apples opening brief (at 64) explained that Apple conceived
of the 607 patents inventions and reduced them to practice in 2003.
On reply, Apple argued that if the Perski patent did not have an
earlier priority date based on the 808 provisional application, a
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remand would be appropriate to determine when Apple reduced its
invention to practice. ARB 17. Apples brief nowhere suggests that a
remand is necessary if the Court ruled (as it did) that no substantial
evidence supported the ITCs filing that Perski 455 anticipated claim
10.
Moreover, Motorolas late-breaking argument that Perski 455
alone can invalidate claim 10 is inconsistent with other, unchallenged,
holdings of the Court. The Court ruled: [b]ecause Perski 808 does
not incorporate by reference the anticipatory subject matter from
Morag, the ITCs finding that Perski 455 anticipates claim 10 of the
607 patent lacks substantial evidence. Op. 9 (emphasis added).
According to the Court, without Morag, Perski 455 cannot anticipate
claim 10. Because there are no relevant facts that additional remand
proceedings could identify, a remand is not warranted. See Crown
Operations Intl, Ltd. v. Solutia Inc., 289 F.3d 1367, 1375 (Fed. Cir.
2002).
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II. THE PANEL DID NOT OVERLOOK OR MISAPPREHEND
ANY POINT OF LAW OR FACT IN NOT ORDERING A
REMAND TO ADDRESS WHETHER THE IPHONE
PRACTICES CLAIM 10 OF THE 607 PATENT
Motorola contends that the panel should remand the issue of
whether secondary considerations have been established so that the
ITC can determine in the first instance if the iPhone practices claim
10. Pet. 9. By inviting this Court to revise its opinion to state that the
ITC must resolve whether the iPhone practices claim 10, Motorola is
again raising a meritless issue that it did not present to the panel. No
rehearing is warranted.
Motorolas appellate brief is devoid of any mention of the iPhone
failing to practice claim 10. Instead, Motorola told the panel that claim
10 is slightly different from claim 1 but has no additional limitations
relevant to the issues presented to this Court. MB 11. Motorola did
not raise claim 10 even though Apple singled out the ITCs errors
regarding claim 10. SeeAOB 66-67 (argument specific to claim 10).
Under the rules of this Court, Motorola was free to raise on appeal
the issue of whether the iPhone practices claim 10. At the ITC, Apple
presented evidence that the iPhone practices each limitation of each
asserted claim. SeeA238. The ALJ found it sufficient that Apple
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practiced claim 1 of the 607 patent and did not consider the other
claims, deeming such an analysis superfluous and immaterial. Id.
The ITC adopted this portion of the ALJs opinion. A498-500. Motorola
could have argued that the iPhones failure to practice claim 10 provides
an alternative basis for affirming the ITCs decision. See Bailey, 292
F.3d at 1362. It did not. This Court has no obligation to revise an
opinion to address an argument that Motorola could have raised but
elected to omit.
In any event, the panel has already vacat[e]d the ITCs decision
that claim 10 of the 607 patent would have been obvious and
remand[ed] for further proceedings, instructing the ITC to consider the
evidence regarding the scope and content of the prior art in
conjunction with the evidence of secondary considerations and
determine in the first instance whether claim 10 would have been
obvious to one of skill in the art at the time of the invention. Op. 17-
18. There is no dispute that Apples iPhone contains the limitations of
claim 10 that the Court found compelling for purposes of secondary
considerations, see Op. 16-17, e.g., a transparent touch panel ...
capable of recognizing multiple touch events that occur at different
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locations on the touch panel at the same time, A561. There is thus no
need for the panel to re-hear this issue.
III. THE PANEL DID NOT OVERLOOK OR MISAPPREHENDANY POINT OF LAW OR FACT RELATED TO THE NEXUS
BETWEEN CLAIM 10 AND SECONDARY
CONSIDERATIONS OF NONOBVIOUSNESS
Motorola argues that rehearing is required because [t]he panel
found that commercial success has been conclusively established, but
overlooked the required analysis to determine whether the features
of the multitouch screen that allegedly drive sales of the iPhone (and
that were the subject of alleged copying and industry praise) were
already present in the prior art. Pet. 10-11. Specifically, Motorola
faults the panel for not addressing any effect its finding that Perski 455
anticipates claim 1 might have on the question of nexus. Pet. 11.
Once again, Motorola faults the Court for overlooking an issue
that Motorola never brought to its attention. Apple presented evidence
of nexus between the sophisticated multipoint touch screen and the
secondary considerations in the context of all of the asserted claims of
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the 607 patent.2 Op. 16. At this point, Motorola could have come
forward with evidence that the commercial success and other secondary
considerations evidence was not due specifically to the invention set
forth in claim 10. See Demaco Corp. v. F. Von Langsdorff Licensing,
Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (there must of course be a
sufficient relationship between the commercial success and the
patented invention.). Motorola failed to do soinstead, it questioned
Apples evidence in a general fashion, never once mentioning claim 10
in its argument. See MB 57-60.
Having made the strategic decision to take an all or nothing
approach as to the secondary considerations evidence, Motorola cannot
now, in a petition for rehearing, argue that the Court should have
parsed the evidence on a claim-by-claim basis. In re Suitco Surface,
Inc., 603 F.3d 1255, 1261 (Fed. Cir. 2010) (finding that appellant
waived its right on appeal to present arguments on a claim-by-claim
basis when it failed to do so below).
2 See, e.g., AOB 53 (where, as here, a product is commercially
successful and practices a patent, these two facts, alone, establish a
prima facie case of nexus between the patent and the commercial
success, citing Crocs, Inc. v. United States Intl Trade Commn,
598 F.3d 1294, 1310-11 (Fed. Cir. 2010)).
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Relatedly, Motorola did not argue before either the panel or the
ITC that Perski 455 has any relevance to the obviousness inquiry. See
A4455-71 (relying only on SmartSkin and Rekimoto 033 as a basis for
finding the 607 patent obvious); MB 51-60 (same). Instead, Motorola
again made a strategic decision, both below and on appeal, to limit its
arguments concerning Perski 455 to the issue of anticipation. See
A4469-71 (limiting obviousness argument to the SmartSkin/Rekimoto
combination); and at A4443-55 (Perski 455 analysis limited to
anticipation). In the context of its obviousness analysis, the Court
therefore considered the scope and content of the prior art that
Motorola raised. Once again, it is too late for Motorola to revive
theories it abandoned at the trial level. In re Watts, 354 F.3d 1362,
1368 (Fed. Cir. 2004) ([w]e decline to consider the appellants new
argument regarding the scope of [the prior art] raised for the first time
on appeal); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1426
(Fed. Cir. 1997) (this court does not review that which was not
presented to the district court).
Nor did Motorola argue that there must be nexus between the
iPhone and what is both claimed and novel in the claim[s] of the 607
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patent. Pet. 10 (citation omitted). Rather, Motorola asserted only that
[f]or commercial success to be probative evidence of nonobviousness, a
nexus must be shown between the claimed invention and the evidence
of commercial success. MB 58 (citing Wm. Wrigley Jr. Co. v. Cadbury
Adams USA LLC, 683 F.3d 1356, 1363 (Fed. Cir. 2012)).
In any event, the Courts decision is not contrary to the principle
Motorola now advances for the first time, that the required nexus is
between the product and what is novel in the claims of the patent. The
panel stated that Apple presented compelling secondary considerations
evidence, Op. 16, and evidence showing a nexus between the
undisputed commercial success of the iPhone and the patented
multitouch functionality, Op. 17. That is a correct characterization of
the evidence, even with claim 1 deemed anticipated by Perski 455. The
mere fact that claim 1 has been invalidated does not mean, as Motorola
suggests, that those elements are irrelevant to the novelty of the
display arrangement set forth in claim 10. It is well established that a
patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in
the prior art. KSR Intl Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007);
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Rambus Inc. v. Rea, No. 2012-1634, 2013 WL 5312505, at *8 (Fed. Cir.
Sept. 24, 2013) (While objective evidence of nonobviousness lacks a
nexus if it exclusively relates to a feature that was known in the prior
art, the obviousness inquiry centers on whether the claimed invention
as a whole would have been obvious. (citations omitted)).
The elements of claim 10 fully support the Courts nexus finding.
Like claim 1, claim 10 requires a transparent touch panel that is
capable of recognizing multiple touch events that occur at different
locations on the touch panel at the same time. But claim 10 is even
more closely linked to the commercial success of the iPhone and the
other evidence of secondary considerations than claim 1. Claim 10 is
specifically directed to a display having a screen for displaying a
graphical user interface and also requires the formation of a pixelated
image by a host device (computer/processor) based on the touches.
These additional limitations not only undisputedly correspond to
features in the iPhone, but include the limitations the panel agreed
were not found in Perski 455. See Op. 9. Accordingly, the evidence
fully supports the finding of a nexus between claim 10 and the evidence
of secondary considerations.
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IV. THERE IS NO BASIS FOR EN BANCREVIEW
Apart from featuring case-specific quibbles that will never recur,
Motorolas cursory petition for en banc review is based on
mischaracterizations of the Courts opinion. The Court did not hold
that any party can establish commercial success without showing the
iPhone practices the relevant claim. See Pet. 11. As explained above,
the issue was not presented to the Court and if necessary the ITC will
resolve on remand the question of which claims the iPhone practices.
Nor did the Court alter the standard for establishing nexus between
sales of a product and the claimed invention. See Pet. 13. That issue
also was not presented to the Court. And, as also explained above,
there is no doubt that the success of the iPhone is connected to claim 10.
CONCLUSION
For the foregoing reasons, Motorolas Petition for Panel Rehearing
and Rehearing En Banc should be denied.
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Dated: September 26, 2013 Respectfully submitted,
/S/ E. Joshua Rosenkranz
E. Joshua Rosenkranz
Orrick, Herrington & Sutcliffe LLP51 West 52nd Street
New York, NY 10019
(212) 506-5000
Attorney for Appellant
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CERTIFICATE OF SERVICE
I hereby certify that on this 26th day of September 2013, Apple
Inc.s Response to Petition for Panel Rehearing and Rehearing En Banc
was electronically filed with the Clerk of the Court using CM/ECF
which will automatically serve the following counsel of record who are
registered for CM/ECF:
Megan Michele Valentine
International Trade Commission
Suite 707-K
500 E Street, S.W.
Washington, DC 20436
Andrea C. Casson
International Trade Commission
Office of the General Counsel
Suite 707-D
500 E Street, S.W.
Washington, DC 20436
Counsel for Appellee International
Trade Commission
Charles K. Verhoeven
Quinn Emanuel Urquhart & Sullivan, LLP
22nd Floor
50 California Street
San Francisco, CA [email protected]
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Edward J. DeFranco
Quinn Emanuel Urquhart & Sullivan, LLP
Firm: 212-849-7000
51 Madison Avenue22nd Floor
New York, NY 10010-1601
David A. Nelson
Quinn Emanuel Urquhart & Sullivan, LLP
500 West Madison Street
Chicago, IL 60661
Alexander Rudis
Quinn Emanuel Urquhart & Sullivan, LLP
51 Madison Avenue
22nd Floor
New York, NY 10010-1601
Matthew A. TraupmanQuinn Emanuel Urquhart & Sullivan, LLP
51 Madison Avenue
22nd Floor
New York, NY 10010-1601
Counsel for Intervenor Motorola Mobility, Inc.
/S/ E. Joshua Rosenkranz
Attorney for Appellant
Case: 12-1338 Document: 79 Page: 25 Filed: 09/26/2013