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Elizabeth D. Ferrill
Elizabeth D. Ferrill
Apples Design Patents
Apples Design Patents
Apples Design Patents
Apples Design Patents
Apples Design Patents
Apples Design Patents
Apples Design Patents
Apples Design Patents
Apples Design Patents
Apples Design Patents
Is Actual Deception Required
Is Actual Deception Required
Is Actual Deception Required
Is Actual Deception Required
What Is the Role of Prior Art
What Is the Role of Prior Art
What Is the Role of Prior Art
What Is the Role of Prior Art
What Is the Role of Prior Art
What Is the Role of Prior Art
Amicis Policy Arguments on Damages
Amicis Policy Arguments on Damages
Priority Claim Not Supported
Priority Claim Not Supported
Priority Claim Not Supported
Priority Claim Not Supported
Priority Claim Not Supported
Priority Claim Not Supported
Priority Claim Not Supported
Priority Claim Not Supported
Priority Claim Not Supported
Priority Claim Not Supported
But Anticipation Under 102(e)
But Anticipation Under 102(e)
But Anticipation Under 102(e)
But Anticipation Under 102(e)
But Anticipation Under 102(e)
But Anticipation Under 102(e)
Stay Tuned
Stay Tuned
Apple v. Samsung at the District Court
Apple v. Samsung at the District Court
Apple v. Samsung at the District Court
Apple v. Samsung at the District Court
Apple v. Samsung at the District Court
Apple v. Samsung at the District Court
Apple v. Samsung at the District Court
Apple v. Samsung at the District Court
Apple v. Samsung at the District Court: Claim Construction
Apple v. Samsung at the District Court: Claim Construction
Apple v. Samsung at the District Court: Claim Construction
Apple v. Samsung at the District Court: Claim Construction
Apple v. Samsung at the District Court: Claim Construction
Apple v. Samsung at the District Court: Claim Construction
Apple v. Samsung at the District Court: Jury Instructions
Apple v. Samsung at the District Court: Jury Instructions
Apple v. Samsung at the District Court: Jury Instructions
Apple v. Samsung at the District Court: Jury Instructions
Apple v. Samsung at the District Court: Jury Instructions
Apple v. Samsung at the District Court: Jury Instructions
Apple v. Samsung at the District Court: Samsung Infringes  Apple
Apple v. Samsung at the District Court: Samsung Infringes Apple
Apple v. Samsung at the District Court: Samsung Infringes  Apple
Apple v. Samsung at the District Court: Samsung Infringes Apple
The Patent Act requires design patents to meet four requirements: New
The Patent Act requires design patents to meet four requirements: New
Design Patent Functionality: Ornamentally vs
Design Patent Functionality: Ornamentally vs
Design Patent Functionality: Functionality = Dictated Solely by
Design Patent Functionality: Functionality = Dictated Solely by
Design Patent Functionality: Functionality = Dictated Solely by
Design Patent Functionality: Functionality = Dictated Solely by
Available design alternatives is relevant to
Available design alternatives is relevant to
Design Patent Functionality and Infringement: Identifying Unprotected
Design Patent Functionality and Infringement: Identifying Unprotected
Design Patent Functionality and Infringement: Identifying Unprotected
Design Patent Functionality and Infringement: Identifying Unprotected
Design Patent Functionality and Infringement: Factoring Out
Design Patent Functionality and Infringement: Factoring Out
Design Patent Functionality and Infringement: Factoring Out
Design Patent Functionality and Infringement: Factoring Out
Design Patent Functionality and Infringement: Factoring Out
Design Patent Functionality and Infringement: Factoring Out
Apple v. Samsung at the District Court: Motion for Judgment as a
Apple v. Samsung at the District Court: Motion for Judgment as a
Apple v. Samsung at the District Court: Motion for Judgment as a
Apple v. Samsung at the District Court: Motion for Judgment as a
Apple v. Samsung at the District Court: Motion for Judgment as a
Apple v. Samsung at the District Court: Motion for Judgment as a
Apple v. Samsung at the Federal Circuit
Apple v. Samsung at the Federal Circuit
Ethicon Endo-Surgery, Inc
Ethicon Endo-Surgery, Inc
Ethicon Endo-Surgery, Inc
Ethicon Endo-Surgery, Inc
Ethicon Endo-Surgery, Inc
Ethicon Endo-Surgery, Inc
Ethicon Endo-Surgery, Inc
Ethicon Endo-Surgery, Inc
Registered Trade Dress
Registered Trade Dress
Registered Trade Dress
Registered Trade Dress
D677 Patent
D677 Patent
D087 Patent
D087 Patent
D087 Patent
D087 Patent
D087 Patent
D087 Patent
D087 Patent
D087 Patent
D087 Patent
D087 Patent
D087 Patent
D087 Patent
D305 Patent
D305 Patent
D305 Patent
D305 Patent
Fiji Water (CDCA 2010)
Fiji Water (CDCA 2010)
Fiji Water (CDCA 2010)
Fiji Water (CDCA 2010)
Fiji Water (CDCA 2010)
Fiji Water (CDCA 2010)
Mixed Chicks (CDCA 2011)
Mixed Chicks (CDCA 2011)
What about d.light Design
What about d.light Design
What about d.light Design
What about d.light Design
Cybergun (D
Cybergun (D
Cybergun (D
Cybergun (D
What about Dogloo
What about Dogloo
Apple v. Samsung: What you need to know now Thursday, September 24, 2015 1:00 PM Eastern Sponsored by the ABA IP Law Section

: ChapmanKrystle. , . , Apple v. Samsung: What you need to know now Thursday, September 24, 2015 1:00 PM Eastern Sponsored by the ABA IP Law Section.ppt zip- 7247 .

Apple v. Samsung: What you need to know now Thursday, September 24, 2015 1:00 PM Eastern Sponsored by the ABA IP Law Section

Apple v. Samsung: What you need to know now Thursday, September 24, 2015 1:00 PM Eastern Sponsored by the ABA IP Law Section.ppt
1Apple v. Samsung: What you need to 46Infringement: Richardson vs. OddzOn. Was
know now Thursday, September 24, 2015| Samsung factoring out functional design
1:00 PM Eastern Sponsored by the ABA IP elements or were they attempting to
Law Section. identify the functional aspects of the
2Elizabeth D. Ferrill. Finnegan, design? the use of icons as metaphors for
Henderson, Farabow, Garrett & Dunner applications, features, and commands;
LLP. (Identifying a Function/Concept) the
3The Ongoing Saga. Federal Circuit layout of those icons in a grid pattern
Panel Decision. Stay of Mandate Denied (i.e., columns and rows) (Factoring Out)
& Mandate issues. Deadline to File a dock of icons at the bottom of the
Cert Petition. Case Mgt Conference (N.D. screen; and (Factoring Out) a status
Ca.). Apple Response in Reexam of 677. bar (Factoring Out). Apple, Inc. v.
PTO Issues Non-Final Rejection of 677 Samsung Electronics, Co., Ltd., No.
Patent. Petition for En Banc Denied. 2015. 5:11-cv-01846, D.I. 1090 at 14-15 (N.D.
2016. May 18. November 12. August 25. Cal. July 27, 2012) (Samsungs opening
September 18. December 5. August 5. August design patent claim construction brief).
13. May. Jun. Jul. Aug. Sep. Oct. Nov. 47Design Patent Functionality and
Dec. 2016. Infringement: Richardson vs. OddzOn. Was
4Apples Design Patents. D604,305. Samsung factoring out functional design
D618,677. D593,087. elements or were they attempting to
5Samsungs Arguments. Actual Deception. identify the functional aspects of the
Jury Instructions. Comparison with Prior design? a size that can be handheld,
Art. Sufficiency of the Evidence. (Identify a Function/Concept) a screen
Functionality. Damages. that encompasses a large portion of the
6Samsungs Arguments. Actual Deception. front face of the smartphone, and (Factor
Jury Instructions. Comparison with Prior out) a speaker on the upper portion of
Art. Sufficiency of the Evidence. the front face of the product (Factor
Functionality. Damages. out). D593,087. D618,677. Apple, Inc. v.
7Infringement of a Design Patent. If in Samsung Electronics, Co., Ltd., No.
the eye of an ordinary observer, giving 5:11-cv-01846, D.I. 1090 at 11-12 (N.D.
such attention as purchaser usually gives, Cal. July 27, 2012) (Samsungs opening
two designs are substantially the same if design patent claim construction brief).
the resemblance is such as to deceive such 48Apple v. Samsung at the District
an observer, inducing him to purchase one Court: Motion for Judgment as a Matter of
supposing it be other, the first one Law. Judge Koh Determines that Factoring
patented is infringed by the other. Gorham Out Functional Elements is Discretionary.
v. White, 81 U.S. 511, 528 (1872). 7. Apple, Inc. v. Samsung Electronics, Co.,
8Is Actual Deception Required? Ltd., No. 5:11-cv-01846, D.I. 2220 at 3
Samsung: Jury instruction made the jury (N.D. Cal. Jan. 29, 2013) (order
consider a lack of actual deception granting/denying JMOL).
irrelevant Jury instruction: You do not 49Apple v. Samsung at the District
need, however, to find that any purchasers Court: Motion for Judgment as a Matter of
actually were deceived or confused by the Law. Judge Koh Determines that Factoring
appearance of the accused Samsung Out is Claim Construction for the Court
products.. and Inappropriate for Jury Instructions.
9Is Actual Deception Required? See also Markman v. Westview Instruments,
Federal Circuit: No. Jury instruction Inc., 517 U.S. 370, 372 (1996) (We hold
clarified (correctly) that actual that the construction of a patent is
deception was not required Gorham v. White exclusively within the province of the
says ordinary purchasers would be likely court.).
to mistake the accused designs for the 50Apple v. Samsung at the District
patented design (Slip op. at 23) Court: Motion for Judgment as a Matter of
Sufficient testimony on this point. Law. Judge Koh Holds that the Allegedly
10What Is the Role of Prior Art? Functional Elements Arent Functional
Samsung: Jury instruction made the jury Anyways. Apple, Inc. v. Samsung
disregard prior art Jury Instruction: Electronics, Co., Ltd., No. 5:11-cv-01846,
This determination of whether two designs D.I. 2220 at 4 (N.D. Cal. Jan. 29, 2013)
are substantially the same will benefit (order granting/denying JMOL).
from comparing the two designs with the 51Apple v. Samsung at the Federal
prior art. You must familiarize yourself Circuit. On Appeal, the Federal Circuit
with the prior art admitted at trial in Appears to Re-Characterize Richardson,
making your determination of whether there Potentially Backing Away from Factoring
has been direct infringement.. Prior Art Out:. Slip Op. at 20.
Presented to Jury. 52Apple v. Samsung at the Federal
11What Is the Role of Prior Art? Federal Circuit. The Apple v. Samsung Decision
Circuit: Jury instruction expressly Raises More Questions than Answers: What
required that each juror must consider constitutes an ornamental aspect of a
the prior art admitted at trial Not a component that is dictated by their
mere option as Samsung contends functional purpose? Under Best Lock a
Sufficient evidence on prior art and functional design element should have no
differences for jury to reasonably rely on ornamentality, by definition. What
for its verdict. Prior Art Presented to happened to factoring out functional
Jury. aspects? Should we simply identify
12Additional Design Patent Remedy. functions, as in OddzOn? Slip Op. at 20.
Whoever during the term of a patent for a 53Ethicon Endo-Surgery, Inc. v.
design, without license of the owner, (1) Covidien, Inc. (Fed. Cir. Aug. 7, 2015).
applies the patented design, or any The district court determined that claimed
colorable imitation thereof, to any designs were dictated by function, and
article of manufacture for the purpose of therefore invalid. In the alternative, the
sale, or (2) sells or exposes for sale any district court found that because the
article of manufacture to which such trigger and torque knob must be factored
design or colorable imitation has been out under Richardson the Design Patents
applied shall be liable to the owner to had no scope, and therefore Covidiens
the extent of his total profit, but not accused design could not infringe the
less than $250, recoverable in any United Design Patents. See Ethicon Endo Surgery,
States district court having jurisdiction Inc. v. Covidien, Inc., (Fed. Cir. Aug. 7,
of the parties. 35 U.S.C. 289. 2015), Slip Op. at 20.
13Samsungs Damages Arguments. Argument 54Ethicon Endo-Surgery, Inc. v.
No. 1: Damages should be limited to the Covidien, Inc. (Fed. Cir. Aug. 7, 2015).
profit attributable to the infringement Invalidity Reversed [A] claimed design
because of basic causation principles [is] not invalid as functional simply
Argument No. 2: Profit awards should have because the primary features of the
been limited to the infringing article of design could perform functions. The
manufacture not the entire infringing analysis of whether Ethicons patented
product. designs are invalid as dictated by
14Causation = Apportionment. Samsung: function must also be performed at a level
Apple failed to establish that of particularity commensurate with the
infringement of its design patents caused scope of the claims. For functionality
any Samsung sales or profits Samsung purposes, it is relevant whether other
customers chose their products based on a designs could be used, such that the
host of other factors Federal Circuit: choice of design is made for primarily
Nike v. Walmart, 138 F.3d 1437 (Fed. Cir. aesthetic, non-functional purposes.. Slip
1998) Congress removed apportionment Op. at 32.
requirement in 1887 Section 489 explicitly 55Ethicon Endo-Surgery, Inc. v.
authorizes the award of total profit: an Covidien, Inc. (Fed. Cir. Aug. 7, 2015).
infringer shall be liable to the owner to Infringement Affirmed (But Modified) In
the extent of [the infringers] total Richardson the design claim did not
profit. broadly protect a multi-function tool with
15Samsungs Quest for Apportionment. a hammer, crowbar, handle, and claw, but
Samsung: Profit award should be limited to only the specific ornamental aspects of
infringing article of manufacture to the that tool in the depicted configuration.
portion of a product as sold that [I]n OddzOn, we limited the scope of a
incorporates the subject matter of the design claim to ornamental features of a
patent Says analogous to the piano case football-shaped ball with a tail and fin
case, Bush & Lane Piano Co. v. Becker structure, rejecting the patentees
Bros, 222 F. 902 (2d Cir. 1915) Federal argument that its design claim covered the
Circuit: Facts are different Samsungs broad general concept of a ball with a
phone shells are not sold separately from rocket-like appearance. . See Slip Op.
innards No legal error. at 20.
16Policy Arguments on Damages. Rise of 56Ethicon Endo-Surgery, Inc. v.
design patent trolls Defendants entire Covidien, Inc. (Fed. Cir. Aug. 7, 2015).
profits makes no sense in the modern world Infringement Affirmed (But Modified) We
due to multiple patents Should agree that the trigger, torque knob, and
infringement of a single icon for a smart activation button elements of the
TV mean disgorgement of all profits on the underlying article have functional
TV But does total profits regime aspects. But the district courts
recognize: The expense in developing & construction of the Design Patents to have
commercializing good design The no scope whatsoever fails to account for
contribution that design makes to customer the particular ornamentation of the
demand for the product Strong penalty to claimed design there is no evidence in
deter copycats. the record, that any of the ornamental
17Amicis Policy Arguments on Damages. designs adorning those underlying articles
Rise of design patent trolls Defendants are essential to the use of the article..
entire profits makes no sense in the See Slip Op. at 33.
modern world due to multiple patents 57Ethicon Endo-Surgery, Inc. v.
Should infringement of a single icon for a Covidien, Inc. (Fed. Cir. Aug. 7, 2015).
smart TV mean disgorgement of all profits Infringement Affirmed (But Modified).
on the TV But does total profits regime [B]ecause each of these components has a
recognize: The expense in developing & functional aspect, the underlying elements
commercializing good design The must be excluded from the scope of the
contribution that design makes to customer design claims at this general conceptual
demand for the product Strong penalty to level. [W]hen the remaining ornamental
deter copycats. features of those components are compared,
18Samsungs Issues for Cert Petition. as a whole, the dissimilarities between
Issue No. 1: Whether a district court must the designs are plain.. See Slip Op. at
ensure through proper claim construction 40.
and jury instructions, that a finding of 58Conclusions. Design patent invalidity
design-patent infringement does not rest for functionality is an exacting standard
on unprotected functional elements of the that requires that the design, as a whole,
design. Issue No. 2: Whether an award of is solely dictated by function. The
an infringers entire profits exceeds the presence of alternative designs is usually
scope of Section 289 where a patented determinative of non-functionality Design
design is only a minor feature of an patent defendants, such as Samsung, often
infringing product. argue to factor out allegedly functional
19Samsungs Issues for Cert Petition. features of the asserted design under the
To the extent of infringers profits Federal Circuits decision in Richardson
ceiling, not a floor Should not jettison v. Stanley Works. In Apple. v. Samsung and
ordinary principles of causation Profits Ethicon v. Covidien, the Federal Circuit
should be limited to portion of the held that only the functional aspect of
product to which the patented design is a design should be factored out at a
applied Otherwise outsized windfall general conceptual level, as in Oddzon
damages Conflict among the circuits: Young Products v. Just Toys. Samsung sought en
v. Grand Rapids Refrigerator Co., 268 F. banc review of the panel decision, which
966 (6th Cir. 1920) Untermeyer v. Freund, was denied on August 13.
58 F. 205 (2d Cir. 1893). 59Professor Peter J. Karol. New England
20Meanwhile at the USPTO. On August 5, Law.
PTO issued a non-final office action 677 60Registered Trade Dress.
not entitled to claim priority to 61Unregistered Trade Dress. Apple claims
grandparent patent Anticipated/obvious elements from its iPhone 3G and 3GS
over intervening prior art Response from products to define the asserted
Apple due in early Dec. unregistered trade dress: a rectangular
21Priority Claim Not Supported. product with four evenly rounded corners;
D618,677. Disclosure of Grandparent a flat, clear surface covering the front
application. of the product; a display screen under the
22But Anticipation Under 102(e). clear surface; substantial black borders
D618,204. D618,677. above and below the display screen and
23Meanwhile Back in California. Apple narrower black borders on either side of
moved for proposed partial final judgment the screen; and when the device is on, a
Samsung asked for JMOL Scheduling row of small dots on the display screen, a
Conference in mid-Sept Fourth trial set matrix of colorful square icons with
before Judge Koh, March or April 2016 evenly rounded corners within the display
Damages retrial only Determine amount of screen, and an unchanging bottom dock of
damages for the infringement of 5 Apple colorful square icons with evenly rounded
patents by 5 Samsung products. corners set off from the displays other
24Stay Tuned. icons. (citing Appellees Br. 10-11).
25William J. Seymour. Lando & 62Apple v. Samsung (Fed. May Cir. 2015).
Anastasi, LLP. Panel: Prost (author), OMalley, Chen The
26Apple v. Samsung at the District CAFC reversed the jurys finding that
Court. D618,677. D593,087. D604,305. 26. Apples trade dresses were protectable,
27Apple v. Samsung at the District but affirmed the jurys verdict on design
Court: Claim Construction. Samsung Sought patent infringement. In other words,
to Exclude Allegedly Functional Design design patents won and trade dress lost
Elements Through Claim Construction: a But why?
size that can be handheld, a screen that 63Functionality. The CAFC found the
encompasses a large portion of the front claimed trade dress to be functional
face of the smartphone, and a speaker on despite the jurys finding to the
the upper portion of the front face of the contrary. The CAFC found the jury
product. D593,087. D618,677. Apple, Inc. instructions on design patent
v. Samsung Electronics, Co., Ltd., No. functionality to be error-free. Notably,
5:11-cv-01846, D.I. 1090 at 11-12 (N.D. the CAFC applied 9th Circuit law to trade
Cal. July 27, 2012) (Samsungs opening dress functionality, and Federal Circuit
design patent claim construction brief). law to design patent functionality. The
28Apple v. Samsung at the District CAFC denied rehearing en banc on August
Court: Claim Construction. Samsung Sought 13, 2015, and refused to stay judgment
to Exclude Allegedly Functional Design pending a cert. petition by Samsung.
Elements Through Claim Construction: the 64D677 Patent. Apple Design Patent
use of icons as metaphors for Related Trade Dress. iPhone 3G and 3GS
applications, features, and commands; (Unregistered) a rectangular product with
the layout of those icons in a grid four evenly rounded corners a flat,
pattern (i.e., columns and rows) a clear surface covering the front of the
dock of icons at the bottom of the product; substantial black borders above
screen; and a status bar. D604,305. and below the display screen. D618,677*
Apple, Inc. v. Samsung Electronics, Co., iPhone 3G black screen.
Ltd., No. 5:11-cv-01846, D.I. 1090 at 65D087 Patent. Design Patent. D593,087
14-15 (N.D. Cal. July 27, 2012) (Samsungs iPhone 3G rounded bezel and/or screen,
opening design patent claim construction microphone, action button.
brief). 66D087 Patent. Apple Design Patent
29Apple v. Samsung at the District Related Trade Dress. iPhone 3G and 3GS
Court: Claim Construction. Apple, Inc. v. (Unregistered) a rectangular product with
Samsung Electronics, Co., Ltd., No. four evenly rounded corners a flat,
5:11-cv-01846, D.I. 1425 at 5 (N.D. Cal. clear surface covering the front of the
July 27, 2012) (preliminary order product. D593,087 iPhone 3G rounded bezel
construing design patents). and/or screen, microphone, action button.
30Apple v. Samsung at the District Copyright 2015 Darius C. Gambino All
Court: Claim Construction. Judge Koh Rights Reserved. Aug. 26, 2015. 66.
denies Samsungs request to identify 67D305 Patent. Design Patent Related
allegedly functional aspects of the design Trade Dress. The mark consists of the
patents. D.I. 1425 at 13-14 (amended order configuration of a rectangular handheld
construing design patents). mobile digital electronic device with
31Apple v. Samsung at the District rounded silver edges, a black face, and an
Court: Claim Construction. Judge Koh array of 16 square icons with rounded
postponed determining any functional edges TM Reg. 3,470,983 iPhone 3G.
aspects of the design: D.I. 1425 at 13-14 D604,305 iPhone 3G. Copyright 2015
(amended order construing design patents). Darius C. Gambino All Rights Reserved.
32Apple v. Samsung at the District Aug. 26, 2015. 67.
Court: Jury Instructions. Samsung also 68D305 Patent. Apple Design Patent
requested a jury instruction explaining Related Trade Dress. iPhone 3G and 3GS
how functionality affects the (Unregistered) a matrix of colorful
infringement question: D.I. 1232 at square icons with evenly rounded corners
168-169 (disputed jury instructions). within the display screen, and an
33Apple v. Samsung at the District unchanging bottom dock of colorful square
Court: Jury Instructions. Judge Koh icons with evenly rounded corners set off
declines to instruct the jury on from the displays other icons.. D604,305
functionality in the context of iPhone 3G. Copyright 2015 Darius C.
infringement: D.I. 1903 at 63 (final jury Gambino All Rights Reserved. Aug. 26,
instructions). 2015. 68.
34Apple v. Samsung at the District 69The Federal Circuit reads 9th Circuit
Court: Samsung Infringes Apple awarded Law. CAFC: [T]he Supreme Court and the
over $1 billion in damages. Ninth Circuit have repeatedly found
35Apple v. Samsung at the District product configuration trade dresses
Court: Samsung Infringes Apple awarded functional and therefore non-protectable.
over $1 billion in damages. See [TrafFix, Secalt, Disc Golf]. They
36The Patent Act requires design patents have? There are several District Court
to meet four requirements: New Original cases from the 9th Circuit where product
***Ornamental*** For an article of configuration trade dress was found
manufacture. Design Patent Functionality: non-functional (Fiji Water, Mixed Chicks,
The Statute. d.light Design, Cybergun, Dogloo).
37Design Patent Functionality: 70The Federal Circuit reads 9th Circuit
Ornamentally vs. Functionality. The Law. CAFC: Registration cant save a
words functional or non-functional do functional trade dress. See [Talking Rain
not appear in the patent act in connection (bottle design), Tie Tech (cutting tool),
with design patents. Functionality Leatherman (Swiss Army knife)]. It cant?
considerations relate to the statutory Again, there are multiple District Court
requirement of ornamentally. Courts once cases from the 9th Circuit that uphold
construed ornamental to mean that a registered trade dress and putting the
design must present an aesthetically burden on the alleged infringer to prove
pleasing appearance. Bonito Boats, Inc. functionality (Fiji Water, Dogloo).
v. Thunder Craft Boats, Inc., 489 U.S. 141 71The Federal Circuit reads 9th Circuit
(1989). Over the years courts gravitated Law. CAFC: A product feature is
away from evaluating the aesthetically non-functional only if serves no purpose
pleasing standard because it proved other than identification (citing Disc
impossible to apply fairly and yielded Golf) Virtually impossible standard to
inconsistent results. In 1999 the Federal meet This is not the law of the 9th
Circuit put an end to the aesthetically Circuit. At least as interpreted by
pleasing standard, and held that the District Courts therein. Every product
ornamental requirement means that the feature has some function outside of
design must not be governed solely by source identification (de jure vs. de
function.... Seiko Epson Corp. v. Nu-Kote facto functionality).
Intl, Inc., 190 F.3d 1360, 1368 (Fed. 72The Federal Circuit reads 9th Circuit
Cir. 1999). Law. The shape of a Coke bottle makes it
38Design Patent Functionality: easier to hold, but that doesnt make its
Ornamentally vs. Functionality. impression on the consumer as a source
Blisscraft of Hollywood v. United Plastics identifier any less significant.
Co., 294 F. 2d 694, 696 (2d Cir. 1961). Subsequent District Courts applying the
Plaintiff's patent was invalid for another Disc Golf factors have found
reason. To be patentable, a design, in non-functionality for product shapes, even
addition to being new and inventive, must where those shapes arguably had functional
be ornamental. This means that it must be benefits: Fiji Water (square water
the product of aesthetic skill and bottle), Cybergun (firearms), Dogloo
artistic conception. Plaintiff's pitcher (igloo-shaped doghouse).
has no particularly aesthetic appeal in 73Functionality: Design Patent v. Trade
line, form, color, or otherwise. It Dress. CAFC on Unregistered Trade Dress:
contained no dominant artistic motif rounded corners improve pocketability
either in detail or in its overall and durability, rectangular shape
conception. Its lid, body, handle and base maximizes the display that can be
retain merely their individual accommodated, and [a] flat clear surface
characteristics when used in conjunction on the front of the phone facilitates
with each other without producing any touch operation . Doesnt the 677
combined artistic effect. The reaction Patent show a flat clear surface? Doesnt
which the pitcher inspires is simply that the 087 Patent show rounded corners and
of the usual, useful and not unattractive rectangular shape?
piece of kitchenware. The design fails to 74Functionality: Design Patent v. Trade
meet the ornamental prerequisite of the Dress. CAFC on Registered Trade Dress:
statute. Apples GUI icon designs promote
39Design Patent Functionality: usability by communicat[ing] to the
Functionality = Dictated Solely by consumer that if they hit that icon,
Function. Best Lock Corp. v. Ilco Unican certain functionality will occur on the
Corp., 94 F.3d 1563 (Fed. Cir. 1996). phone. Doesnt the 305 Patent show the
[A]lthough a particular key and its same icon designs and arrangement? So are
corresponding lock must mate to operate the functionality tests different?
the lock, an unlimited number of key blade 75Ninth Circuit v. District Courts.
and corresponding keyway designs are CAFC: Apple conceded during oral argument
available. Choice of any particular design that it had not cited a single Ninth
is arbitrary. Best Lock admitted that no Circuit case that found a product
other shaped key blade would fit into the configuration trade dress to be
corresponding keyway, and it presented no non-functional. Fiji Water Co., LLC v.
evidence to the contrary. Therefore, the Fiji Mineral Water USA, LLC, 2010 WL
claimed key blade design was dictated 3835673 (C.D.Cal.) (water bottle) Mixed
solely by the key blade's function. Any Chicks, LLV v. Sally Beauty Supply, LLC,
aesthetic appeal of the key blade design 11-CV-00452 (C.D.Cal. 2011), Doc. 256 (Sp.
shown in the '636 patent is the inevitable Verdict Form) (hair care products)
result of having a shape that is dictated Cybergun, S.A. v. JAG Precision, 2012 WL
solely by functional concerns.. 4868104 (D.Nev.), affd, Dkt. No.12-17640
40Design Patent Functionality: (9th Cir. Jul. 19, 2013) (firearms)
Functionality = Dictated Solely by d.light Design, Inc. v. Boxin Solar Co.,
Function. Reprinted with permission of Ltd., 13-5988 (N.D.Cal. 2013), Doc. 60
Chris Carani, of McAndrews, Held & (Order) (solar lamps) Dogloo, Inc. v.
Malloy, Ltd. Doskocil Mfg. Co., Inc., 893 F.Supp. 911
41Available design alternatives is (C.D.Cal 1995) (igloo-shaped dog house).
relevant to ornamentally/functionality: 76Fiji Water (CDCA 2010). What about
Design Patent Functionality: Functionality Fiji Water? Fiji Water v. Fiji Mineral
= Dictated Solely by Function. The Apple Water (C.D. Cal. 2010) injunction for
v. Samsung jury was not charged with infringement of trade dress in bottle
determining if Apples design patents were shape and appearance. See U.S. Regs.
invalid for being functional, and that 2,911,918 and 2,937,191 at left. Evidence
issue was not raised on appeal. 087. of Function: Square shape made bottles
677. 305. easier to package. 76.
42Design Patent Functionality and 77Mixed Chicks (CDCA 2011). What about
Infringement: Identifying Unprotected Mixed Chicks? Mixed Chicks v. Sally Beauty
Functions During Claim Construction. (C.D. Cal. 2011) $8.1 million jury award
OddzOn Prods., Inc. v. Just Toys, Inc.,122 and injunction for infringement of trade
F.3d 1396 (Fed. Cir. 1997). Whether a dress in bottle shape and appearance.
design patent is infringed is determined Evidence of Function: Translucent bottles
by first construing the claim to the and pumps allow the purchaser to see what
design, when appropriate, and then is inside.
comparing it to the design of the accused 78What about d.light Design? d.light
device. Where a design contains both Design v. Boxin Solar (N.D. Cal. 2013)
functional and non-functional elements, Temporary Restraining Order (TRO) and
the scope of the claim must be construed preliminary injunction granted for
in order to identify the non-functional infringement of plaintiff's trade dress
aspects of the design as shown in the and design patents. Evidence of Function:
patent. In construing the claim of None raised by defendants, but shapes may
OddzOn's patent, the district court have been easier to carry, more effective
carefully noted the ornamental features at gathering sunlight, etc. d.Light Design
that produced the overall rocket-like (NDCA 2013).
appearance of the design. We agree with 79Cybergun (D.Nev. 2012/9th Cir. 2013).
the district court's claim construction, What about Cybergun? Cybergun, S.A. v. JAG
which properly limits the scope of the Precision (D.Nev. 2012) preliminary
patent to its overall ornamental visual injunction based on claimed trade dress in
impression, rather than to the broader firearms granted; affirmed by 9th Circuit.
general design concept of a rocket-like Evidence of Function: None raised but
tossing ball.. Ultra Pass. certain features might make the firearm
43Design Patent Functionality and easier to hold, easier to fire, etc. Court
Infringement: Factoring Out Functional distinguished Secalt and Leatherman as
Aspects During Claim Construction. cases where the products did not identify
Richardson v. Stanley Works, Inc., 597 upon sight the [manufacturer] in
F.3d 1288 (Fed. Cir. 2010). In Egyptian question but Apple court relied on these
Goddess, [a]lthough we proposed that the cases in holding that iPhone did not
preferable course ordinarily will be for a identify Apple on sight.
district court not to attempt to construe 80What about Dogloo? Dogloo, Inc. v.
a design patent claim, we also emphasized Doskocil Mfg. (C.D.Cal. 1995) -
that there are a number of claim scope preliminary injunction based on claimed
issues on which a court's guidance would trade dress in igloo-shaped dog house
be useful to the fact finder. Among them, granted. See U.S. Reg. 1,631,630 at left.
we specifically noted, is the distinction Evidence of Function: Utility patent on
between the functional and ornamental same design, touted function in
aspects of a design. The district court advertising, superior thermal qualities,
here properly factored out the functional easier to stack and ship. Dogloo (CDCA
aspects of Richardson's design as part of 1995). 80.
its claim construction. By definition, the 81Moving Forward. Is Apple binding on
patented design is for a multi-function anyone other than Apple and Samsung? Not
tool that has several functional really - It is the CAFC interpreting 9th
components, and we have made clear that a Circuit trade dress law, the 9th Circuit
design patent, unlike a utility patent, doesnt have to follow it, and neither
limits protection to the ornamental design does any other Circuit. The CAFC got 9th
of the article.. Circuit trade dress law wrong. Is trade
44Design Patent Functionality and dress dead after Apple? No. Should you
Infringement: Factoring Out Functional still include trade dress counts in your
Aspects During Claim Construction. complaint? Yes. Should you still seek
Richardson v. Stanley Works, Inc., 597 trade dress registrations? Yes.
F.3d 1288 (Fed. Cir. 2010). As the 82Moving Forward. Trade Dress
district court noted, elements such as the Prosecution Practice Tips: file for design
handle, the hammerhead, the jaw, and the patent protection first, then after a few
crowbar are dictated by their functional years file a trade dress application; if
purpose. The jaw, for example, has to be you cant wait 5 years, go on the
located on the opposite end of the hammer Supplemental Register; many litigants have
head such that the tool can be used as a prevailed with only registrations on the
step. The crowbar, by definition, needs to Supplemental Register (T-Mobile magenta,
be on the end of the longer handle such Kind Group lip balm). 82.
that it can reach into narrow spaces. The 83Moving Forward. Trade Dress Litigation
handle has to be the longest arm of the Practice Tips: using existing case
tool to allow for maximum leverage. The decisions to underscore your arguments;
hammer-head has to be flat on its end to argue de jure vs. de facto difference;
effectively deliver force to the object just because a product feature or shape
being struck.. has a function doesnt meant that it is
45Design Patent Functionality and functional if that were the case, then
Infringement: Factoring Out Functional the Disc Golf test would be collapsed down
Aspects During Claim Construction. to a single factor (Factor 1: whether the
Richardson v. Stanley Works, Inc., 597 design yields a utilitarian advantage).
F.3d 1288 (Fed. Cir. 2010). 83.
46Design Patent Functionality and 84Any questions? Now, its your turn
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Apple v. Samsung: What you need to know now Thursday, September 24, 2015 1:00 PM Eastern Sponsored by the ABA IP Law Section

Apple v. Samsung: What you need to know now Thursday, September 24, 2015 1:00 PM Eastern Sponsored by the ABA IP Law Section

Apple - Source Datamonitor (Bus Source Premier) Oct 2011. Their was a demo shown as a concept in 1992. Innovation Management (U09084). NB: 600 exceeded 6 weeks later after iPad announcement. This is a big deal, because Apple often creates closed offerings. Apple design. Remember the personal computer wasnt even on sale then!

English for you - . . ENGLISH FOR YOU. ( ). . . . :

The english-speaking countries - Scotland. Disneyland. The English-speaking countries. Australia. Great Britain. USA.

The animals - WHALE. The animals which live in the polar regions. TIGER. GIRAFFE. The animals which live in the forest. BEAR. SEA-HORSE. The animals which live in Australia. The animals which live in a SAVANNA. ELEPHANT. SCORPIO. BOBCAT. GORILLA. The animals which live in the desert. SEAL. BISON. KOALA. POLAR BEAR.

Apple - . : . Apple II. . . Apple II.

the woman - . Un homme- . A man - . , . Chickens mind- . . . A womans tongue wags like a lambs tail. As great a pity to see a woman cry as a goose go barefoot.

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