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Apple v. Samsung: What you need to know now Thursday, September 24,
Apple v. Samsung: What you need to know now Thursday, September 24,
Elizabeth D. Ferrill
Elizabeth D. Ferrill
The Ongoing Saga
The Ongoing Saga
Apples Design Patents
Apples Design Patents
Samsungs Arguments
Samsungs Arguments
Samsungs Arguments
Samsungs Arguments
Infringement of a Design Patent
Infringement of a Design Patent
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
Additional Design Patent Remedy
Additional Design Patent Remedy
Samsungs Damages Arguments
Samsungs Damages Arguments
Causation = Apportionment
Causation = Apportionment
Samsungs Quest for Apportionment
Samsungs Quest for Apportionment
Policy Arguments on Damages
Policy Arguments on Damages
Amicis Policy Arguments on Damages
Amicis Policy Arguments on Damages
Samsungs Issues for Cert Petition
Samsungs Issues for Cert Petition
Samsungs Issues for Cert Petition
Samsungs Issues for Cert Petition
Meanwhile at the USPTO
Meanwhile at the USPTO
Priority Claim Not Supported
Priority Claim Not Supported
But Anticipation Under 102(e)
But Anticipation Under 102(e)
Meanwhile Back in California
Meanwhile Back in California
Stay Tuned
Stay Tuned
William J. Seymour
William J. Seymour
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: 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: 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: 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: 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
Design Patent Functionality and Infringement: Richardson vs
Design Patent Functionality and Infringement: Richardson vs
Design Patent Functionality and Infringement: Richardson vs
Design Patent Functionality and Infringement: Richardson vs
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
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
Ethicon Endo-Surgery, Inc
Ethicon Endo-Surgery, Inc
Conclusions
Conclusions
Professor Peter J. Karol
Professor Peter J. Karol
Registered Trade Dress
Registered Trade Dress
Unregistered Trade Dress
Unregistered Trade Dress
Apple v. Samsung (Fed
Apple v. Samsung (Fed
Functionality
Functionality
D677 Patent
D677 Patent
D087 Patent
D087 Patent
D087 Patent
D087 Patent
D305 Patent
D305 Patent
D305 Patent
D305 Patent
The Federal Circuit reads 9th Circuit Law
The Federal Circuit reads 9th Circuit Law
The Federal Circuit reads 9th Circuit Law
The Federal Circuit reads 9th Circuit Law
The Federal Circuit reads 9th Circuit Law
The Federal Circuit reads 9th Circuit Law
The Federal Circuit reads 9th Circuit Law
The Federal Circuit reads 9th Circuit Law
Functionality: Design Patent v. Trade Dress
Functionality: Design Patent v. Trade Dress
Functionality: Design Patent v. Trade Dress
Functionality: Design Patent v. Trade Dress
Ninth Circuit v. District Courts
Ninth Circuit v. District Courts
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
Cybergun (D
Cybergun (D
What about Dogloo
What about Dogloo
Moving Forward
Moving Forward
Moving Forward
Moving Forward
Moving Forward
Moving Forward
Any questions
Any questions

: 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
1 Apple v. Samsung: What you need to know now Thursday, September 24,

Apple v. Samsung: What you need to know now Thursday, September 24,

2015| 1:00 PM Eastern Sponsored by the ABA IP Law Section

2 Elizabeth D. Ferrill

Elizabeth D. Ferrill

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

3 The Ongoing Saga

The Ongoing Saga

Federal Circuit Panel Decision

Stay of Mandate Denied & Mandate issues

Deadline to File Cert Petition

Case Mgt Conference (N.D. Ca.)

Apple Response in Reexam of 677

PTO Issues Non-Final Rejection of 677 Patent

Petition for En Banc Denied

2015

2016

May 18

November 12

August 25

September 18

December 5

August 5

August 13

May

Jun

Jul

Aug

Sep

Oct

Nov

Dec

2016

4 Apples Design Patents

Apples Design Patents

D604,305

D618,677

D593,087

5 Samsungs Arguments

Samsungs Arguments

Actual Deception

Jury Instructions

Comparison with Prior Art

Sufficiency of the Evidence

Functionality

Damages

6 Samsungs Arguments

Samsungs Arguments

Actual Deception

Jury Instructions

Comparison with Prior Art

Sufficiency of the Evidence

Functionality

Damages

7 Infringement of a Design Patent

Infringement of a Design Patent

If in the eye of an ordinary observer, giving such attention as purchaser usually gives, two designs are substantially the same if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it be other, the first one patented is infringed by the other. Gorham v. White, 81 U.S. 511, 528 (1872)

7

8 Is Actual Deception Required

Is Actual Deception Required

Samsung: Jury instruction made the jury consider a lack of actual deception irrelevant Jury instruction: You do not need, however, to find that any purchasers actually were deceived or confused by the appearance of the accused Samsung products.

9 Is Actual Deception Required

Is Actual Deception Required

Federal Circuit: No. Jury instruction clarified (correctly) that actual deception was not required Gorham v. White says ordinary purchasers would be likely to mistake the accused designs for the patented design (Slip op. at 23) Sufficient testimony on this point

10 What Is the Role of Prior Art

What Is the Role of Prior Art

Samsung: Jury instruction made the jury disregard prior art Jury Instruction: This determination of whether two designs are substantially the same will benefit from comparing the two designs with the prior art. You must familiarize yourself with the prior art admitted at trial in making your determination of whether there has been direct infringement.

Prior Art Presented to Jury

11 What Is the Role of Prior Art

What Is the Role of Prior Art

Federal Circuit: Jury instruction expressly required that each juror must consider the prior art admitted at trial Not a mere option as Samsung contends Sufficient evidence on prior art and differences for jury to reasonably rely on for its verdict

Prior Art Presented to Jury

12 Additional Design Patent Remedy

Additional Design Patent Remedy

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties. 35 U.S.C. 289

13 Samsungs Damages Arguments

Samsungs Damages Arguments

Argument No. 1: Damages should be limited to the profit attributable to the infringement because of basic causation principles Argument No. 2: Profit awards should have been limited to the infringing article of manufacture not the entire infringing product

14 Causation = Apportionment

Causation = Apportionment

Samsung: Apple failed to establish that infringement of its design patents caused any Samsung sales or profits Samsung customers chose their products based on a host of other factors Federal Circuit: Nike v. Walmart, 138 F.3d 1437 (Fed. Cir. 1998) Congress removed apportionment requirement in 1887 Section 489 explicitly authorizes the award of total profit: an infringer shall be liable to the owner to the extent of [the infringers] total profit

15 Samsungs Quest for Apportionment

Samsungs Quest for Apportionment

Samsung: Profit award should be limited to infringing article of manufacture to the portion of a product as sold that incorporates the subject matter of the patent Says analogous to the piano case case, Bush & Lane Piano Co. v. Becker Bros, 222 F. 902 (2d Cir. 1915) Federal Circuit: Facts are different Samsungs phone shells are not sold separately from innards No legal error

16 Policy Arguments on Damages

Policy Arguments on Damages

Rise of design patent trolls Defendants entire profits makes no sense in the modern world due to multiple patents Should infringement of a single icon for a smart TV mean disgorgement of all profits on the TV But does total profits regime recognize: The expense in developing & commercializing good design The contribution that design makes to customer demand for the product Strong penalty to deter copycats

17 Amicis Policy Arguments on Damages

Amicis Policy Arguments on Damages

Rise of design patent trolls Defendants entire profits makes no sense in the modern world due to multiple patents Should infringement of a single icon for a smart TV mean disgorgement of all profits on the TV But does total profits regime recognize: The expense in developing & commercializing good design The contribution that design makes to customer demand for the product Strong penalty to deter copycats

18 Samsungs Issues for Cert Petition

Samsungs Issues for Cert Petition

Issue No. 1: Whether a district court must ensure through proper claim construction and jury instructions, that a finding of design-patent infringement does not rest on unprotected functional elements of the design. Issue No. 2: Whether an award of an infringers entire profits exceeds the scope of Section 289 where a patented design is only a minor feature of an infringing product.

19 Samsungs Issues for Cert Petition

Samsungs Issues for Cert Petition

To the extent of infringers profits ceiling, not a floor Should not jettison ordinary principles of causation Profits should be limited to portion of the product to which the patented design is applied Otherwise outsized windfall damages Conflict among the circuits: Young v. Grand Rapids Refrigerator Co., 268 F. 966 (6th Cir. 1920) Untermeyer v. Freund, 58 F. 205 (2d Cir. 1893)

20 Meanwhile at the USPTO

Meanwhile at the USPTO

On August 5, PTO issued a non-final office action 677 not entitled to claim priority to grandparent patent Anticipated/obvious over intervening prior art Response from Apple due in early Dec

21 Priority Claim Not Supported

Priority Claim Not Supported

D618,677

Disclosure of Grandparent application

22 But Anticipation Under 102(e)

But Anticipation Under 102(e)

D618,204

D618,677

23 Meanwhile Back in California

Meanwhile Back in California

Apple moved for proposed partial final judgment Samsung asked for JMOL Scheduling Conference in mid-Sept Fourth trial set before Judge Koh, March or April 2016 Damages retrial only Determine amount of damages for the infringement of 5 Apple patents by 5 Samsung products

24 Stay Tuned

Stay Tuned

25 William J. Seymour

William J. Seymour

Lando & Anastasi, LLP

26 Apple v. Samsung at the District Court

Apple v. Samsung at the District Court

D618,677

D593,087

D604,305

26

27 Apple v. Samsung at the District Court: Claim Construction

Apple v. Samsung at the District Court: Claim Construction

Samsung Sought to Exclude Allegedly Functional Design Elements Through Claim Construction:

a size that can be handheld, a screen that encompasses a large portion of the front face of the smartphone, and a speaker on the upper portion of the front face of the product

D593,087

D618,677

Apple, Inc. v. Samsung Electronics, Co., Ltd., No. 5:11-cv-01846, D.I. 1090 at 11-12 (N.D. Cal. July 27, 2012) (Samsungs opening design patent claim construction brief).

28 Apple v. Samsung at the District Court: Claim Construction

Apple v. Samsung at the District Court: Claim Construction

Samsung Sought to Exclude Allegedly Functional Design Elements Through Claim Construction:

the use of icons as metaphors for applications, features, and commands; the layout of those icons in a grid pattern (i.e., columns and rows) a dock of icons at the bottom of the screen; and a status bar

D604,305

Apple, Inc. v. Samsung Electronics, Co., Ltd., No. 5:11-cv-01846, D.I. 1090 at 14-15 (N.D. Cal. July 27, 2012) (Samsungs opening design patent claim construction brief).

29 Apple v. Samsung at the District Court: Claim Construction

Apple v. Samsung at the District Court: Claim Construction

Apple, Inc. v. Samsung Electronics, Co., Ltd., No. 5:11-cv-01846, D.I. 1425 at 5 (N.D. Cal. July 27, 2012) (preliminary order construing design patents).

30 Apple v. Samsung at the District Court: Claim Construction

Apple v. Samsung at the District Court: Claim Construction

Judge Koh denies Samsungs request to identify allegedly functional aspects of the design patents

D.I. 1425 at 13-14 (amended order construing design patents).

31 Apple v. Samsung at the District Court: Claim Construction

Apple v. Samsung at the District Court: Claim Construction

Judge Koh postponed determining any functional aspects of the design:

D.I. 1425 at 13-14 (amended order construing design patents).

32 Apple v. Samsung at the District Court: Jury Instructions

Apple v. Samsung at the District Court: Jury Instructions

Samsung also requested a jury instruction explaining how functionality affects the infringement question:

D.I. 1232 at 168-169 (disputed jury instructions).

33 Apple v. Samsung at the District Court: Jury Instructions

Apple v. Samsung at the District Court: Jury Instructions

Judge Koh declines to instruct the jury on functionality in the context of infringement:

D.I. 1903 at 63 (final jury instructions).

34 Apple v. Samsung at the District Court: Samsung Infringes  Apple

Apple v. Samsung at the District Court: Samsung Infringes Apple

awarded over $1 billion in damages

35 Apple v. Samsung at the District Court: Samsung Infringes  Apple

Apple v. Samsung at the District Court: Samsung Infringes Apple

awarded over $1 billion in damages

36 The Patent Act requires design patents to meet four requirements: New

The Patent Act requires design patents to meet four requirements: New

Original ***Ornamental*** For an article of manufacture

Design Patent Functionality: The Statute

37 Design Patent Functionality: Ornamentally vs

Design Patent Functionality: Ornamentally vs

Functionality

The words functional or non-functional do not appear in the patent act in connection with design patents. Functionality considerations relate to the statutory requirement of ornamentally. Courts once construed ornamental to mean that a design must present an aesthetically pleasing appearance. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989). Over the years courts gravitated away from evaluating the aesthetically pleasing standard because it proved impossible to apply fairly and yielded inconsistent results. In 1999 the Federal Circuit put an end to the aesthetically pleasing standard, and held that the ornamental requirement means that the design must not be governed solely by function.... Seiko Epson Corp. v. Nu-Kote Intl, Inc., 190 F.3d 1360, 1368 (Fed. Cir. 1999).

38 Design Patent Functionality: Ornamentally vs

Design Patent Functionality: Ornamentally vs

Functionality

Blisscraft of Hollywood v. United Plastics Co., 294 F. 2d 694, 696 (2d Cir. 1961).

Plaintiff's patent was invalid for another reason. To be patentable, a design, in addition to being new and inventive, must be ornamental. This means that it must be the product of aesthetic skill and artistic conception. Plaintiff's pitcher has no particularly aesthetic appeal in line, form, color, or otherwise. It contained no dominant artistic motif either in detail or in its overall conception. Its lid, body, handle and base retain merely their individual characteristics when used in conjunction with each other without producing any combined artistic effect. The reaction which the pitcher inspires is simply that of the usual, useful and not unattractive piece of kitchenware. The design fails to meet the ornamental prerequisite of the statute.

39 Design Patent Functionality: Functionality = Dictated Solely by

Design Patent Functionality: Functionality = Dictated Solely by

Function

Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996)

[A]lthough a particular key and its corresponding lock must mate to operate the lock, an unlimited number of key blade and corresponding keyway designs are available. Choice of any particular design is arbitrary. Best Lock admitted that no other shaped key blade would fit into the corresponding keyway, and it presented no evidence to the contrary. Therefore, the claimed key blade design was dictated solely by the key blade's function. Any aesthetic appeal of the key blade design shown in the '636 patent is the inevitable result of having a shape that is dictated solely by functional concerns.

40 Design Patent Functionality: Functionality = Dictated Solely by

Design Patent Functionality: Functionality = Dictated Solely by

Function

Reprinted with permission of Chris Carani, of McAndrews, Held & Malloy, Ltd.

41 Available design alternatives is relevant to

Available design alternatives is relevant to

ornamentally/functionality:

Design Patent Functionality: Functionality = Dictated Solely by Function

The Apple v. Samsung jury was not charged with determining if Apples design patents were invalid for being functional, and that issue was not raised on appeal.

087

677

305

42 Design Patent Functionality and Infringement: Identifying Unprotected

Design Patent Functionality and Infringement: Identifying Unprotected

Functions During Claim Construction

OddzOn Prods., Inc. v. Just Toys, Inc.,122 F.3d 1396 (Fed. Cir. 1997)

Whether a design patent is infringed is determined by first construing the claim to the design, when appropriate, and then comparing it to the design of the accused device. Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent. In construing the claim of OddzOn's patent, the district court carefully noted the ornamental features that produced the overall rocket-like appearance of the design. We agree with the district court's claim construction, which properly limits the scope of the patent to its overall ornamental visual impression, rather than to the broader general design concept of a rocket-like tossing ball.

Ultra Pass

43 Design Patent Functionality and Infringement: Factoring Out

Design Patent Functionality and Infringement: Factoring Out

Functional Aspects During Claim Construction

Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010)

In Egyptian Goddess, [a]lthough we proposed that the preferable course ordinarily will be for a district court not to attempt to construe a design patent claim, we also emphasized that there are a number of claim scope issues on which a court's guidance would be useful to the fact finder. Among them, we specifically noted, is the distinction between the functional and ornamental aspects of a design. The district court here properly factored out the functional aspects of Richardson's design as part of its claim construction. By definition, the patented design is for a multi-function tool that has several functional components, and we have made clear that a design patent, unlike a utility patent, limits protection to the ornamental design of the article.

44 Design Patent Functionality and Infringement: Factoring Out

Design Patent Functionality and Infringement: Factoring Out

Functional Aspects During Claim Construction

Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010)

As the district court noted, elements such as the handle, the hammerhead, the jaw, and the crowbar are dictated by their functional purpose. The jaw, for example, has to be located on the opposite end of the hammer head such that the tool can be used as a step. The crowbar, by definition, needs to be on the end of the longer handle such that it can reach into narrow spaces. The handle has to be the longest arm of the tool to allow for maximum leverage. The hammer-head has to be flat on its end to effectively deliver force to the object being struck.

45 Design Patent Functionality and Infringement: Factoring Out

Design Patent Functionality and Infringement: Factoring Out

Functional Aspects During Claim Construction

Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010)

46 Design Patent Functionality and Infringement: Richardson vs

Design Patent Functionality and Infringement: Richardson vs

OddzOn

Was Samsung factoring out functional design elements or were they attempting to identify the functional aspects of the design?

the use of icons as metaphors for applications, features, and commands; (Identifying a Function/Concept) the layout of those icons in a grid pattern (i.e., columns and rows) (Factoring Out) a dock of icons at the bottom of the screen; and (Factoring Out) a status bar (Factoring Out)

Apple, Inc. v. Samsung Electronics, Co., Ltd., No. 5:11-cv-01846, D.I. 1090 at 14-15 (N.D. Cal. July 27, 2012) (Samsungs opening design patent claim construction brief).

47 Design Patent Functionality and Infringement: Richardson vs

Design Patent Functionality and Infringement: Richardson vs

OddzOn

Was Samsung factoring out functional design elements or were they attempting to identify the functional aspects of the design?

a size that can be handheld, (Identify a Function/Concept) a screen that encompasses a large portion of the front face of the smartphone, and (Factor out) a speaker on the upper portion of the front face of the product (Factor out)

D593,087

D618,677

Apple, Inc. v. Samsung Electronics, Co., Ltd., No. 5:11-cv-01846, D.I. 1090 at 11-12 (N.D. Cal. July 27, 2012) (Samsungs opening design patent claim construction brief).

48 Apple v. Samsung at the District Court: Motion for Judgment as a

Apple v. Samsung at the District Court: Motion for Judgment as a

Matter of Law

Judge Koh Determines that Factoring Out Functional Elements is Discretionary

Apple, Inc. v. Samsung Electronics, Co., Ltd., No. 5:11-cv-01846, D.I. 2220 at 3 (N.D. Cal. Jan. 29, 2013) (order granting/denying JMOL).

49 Apple v. Samsung at the District Court: Motion for Judgment as a

Apple v. Samsung at the District Court: Motion for Judgment as a

Matter of Law

Judge Koh Determines that Factoring Out is Claim Construction for the Court and Inappropriate for Jury Instructions

See also Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) (We hold that the construction of a patent is exclusively within the province of the court.)

50 Apple v. Samsung at the District Court: Motion for Judgment as a

Apple v. Samsung at the District Court: Motion for Judgment as a

Matter of Law

Judge Koh Holds that the Allegedly Functional Elements Arent Functional Anyways

Apple, Inc. v. Samsung Electronics, Co., Ltd., No. 5:11-cv-01846, D.I. 2220 at 4 (N.D. Cal. Jan. 29, 2013) (order granting/denying JMOL).

51 Apple v. Samsung at the Federal Circuit

Apple v. Samsung at the Federal Circuit

On Appeal, the Federal Circuit Appears to Re-Characterize Richardson, Potentially Backing Away from Factoring Out:

Slip Op. at 20.

52 Apple v. Samsung at the Federal Circuit

Apple v. Samsung at the Federal Circuit

The Apple v. Samsung Decision Raises More Questions than Answers:

What constitutes an ornamental aspect of a component that is dictated by their functional purpose? Under Best Lock a functional design element should have no ornamentality, by definition. What happened to factoring out functional aspects? Should we simply identify functions, as in OddzOn?

Slip Op. at 20.

53 Ethicon Endo-Surgery, Inc

Ethicon Endo-Surgery, Inc

v. Covidien, Inc. (Fed. Cir. Aug. 7, 2015)

The district court determined that claimed designs were dictated by function, and therefore invalid. In the alternative, the district court found that because the trigger and torque knob must be factored out under Richardson the Design Patents had no scope, and therefore Covidiens accused design could not infringe the Design Patents.

See Ethicon Endo Surgery, Inc. v. Covidien, Inc., (Fed. Cir. Aug. 7, 2015), Slip Op. at 20.

54 Ethicon Endo-Surgery, Inc

Ethicon Endo-Surgery, Inc

v. Covidien, Inc. (Fed. Cir. Aug. 7, 2015)

Invalidity Reversed [A] claimed design [is] not invalid as functional simply because the primary features of the design could perform functions. The analysis of whether Ethicons patented designs are invalid as dictated by function must also be performed at a level of particularity commensurate with the scope of the claims. For functionality purposes, it is relevant whether other designs could be used, such that the choice of design is made for primarily aesthetic, non-functional purposes.

Slip Op. at 32.

55 Ethicon Endo-Surgery, Inc

Ethicon Endo-Surgery, Inc

v. Covidien, Inc. (Fed. Cir. Aug. 7, 2015)

Infringement Affirmed (But Modified) In Richardson the design claim did not broadly protect a multi-function tool with a hammer, crowbar, handle, and claw, but only the specific ornamental aspects of that tool in the depicted configuration. [I]n OddzOn, we limited the scope of a design claim to ornamental features of a football-shaped ball with a tail and fin structure, rejecting the patentees argument that its design claim covered the broad general concept of a ball with a rocket-like appearance.

See Slip Op. at 20.

56 Ethicon Endo-Surgery, Inc

Ethicon Endo-Surgery, Inc

v. Covidien, Inc. (Fed. Cir. Aug. 7, 2015)

Infringement Affirmed (But Modified) We agree that the trigger, torque knob, and activation button elements of the underlying article have functional aspects. But the district courts construction of the Design Patents to have no scope whatsoever fails to account for the particular ornamentation of the claimed design there is no evidence in the record, that any of the ornamental designs adorning those underlying articles are essential to the use of the article.

See Slip Op. at 33.

57 Ethicon Endo-Surgery, Inc

Ethicon Endo-Surgery, Inc

v. Covidien, Inc. (Fed. Cir. Aug. 7, 2015)

Infringement Affirmed (But Modified)

[B]ecause each of these components has a functional aspect, the underlying elements must be excluded from the scope of the design claims at this general conceptual level. [W]hen the remaining ornamental features of those components are compared, as a whole, the dissimilarities between the designs are plain.

See Slip Op. at 40.

58 Conclusions

Conclusions

Design patent invalidity for functionality is an exacting standard that requires that the design, as a whole, is solely dictated by function. The presence of alternative designs is usually determinative of non-functionality Design patent defendants, such as Samsung, often argue to factor out allegedly functional features of the asserted design under the Federal Circuits decision in Richardson v. Stanley Works. In Apple. v. Samsung and Ethicon v. Covidien, the Federal Circuit held that only the functional aspect of a design should be factored out at a general conceptual level, as in Oddzon Products v. Just Toys. Samsung sought en banc review of the panel decision, which was denied on August 13.

59 Professor Peter J. Karol

Professor Peter J. Karol

New England Law

60 Registered Trade Dress

Registered Trade Dress

61 Unregistered Trade Dress

Unregistered Trade Dress

Apple claims elements from its iPhone 3G and 3GS products to define the asserted unregistered trade dress: a rectangular product with four evenly rounded corners; a flat, clear surface covering the front of the product; a display screen under the clear surface; substantial black borders above and below the display screen and narrower black borders on either side of the screen; and when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the displays other icons. (citing Appellees Br. 10-11).

62 Apple v. Samsung (Fed

Apple v. Samsung (Fed

May Cir. 2015)

Panel: Prost (author), OMalley, Chen The CAFC reversed the jurys finding that Apples trade dresses were protectable, but affirmed the jurys verdict on design patent infringement. In other words, design patents won and trade dress lost But why?

63 Functionality

Functionality

The CAFC found the claimed trade dress to be functional despite the jurys finding to the contrary. The CAFC found the jury instructions on design patent functionality to be error-free. Notably, the CAFC applied 9th Circuit law to trade dress functionality, and Federal Circuit law to design patent functionality. The CAFC denied rehearing en banc on August 13, 2015, and refused to stay judgment pending a cert. petition by Samsung.

64 D677 Patent

D677 Patent

Apple Design Patent Related Trade Dress

iPhone 3G and 3GS (Unregistered) a rectangular product with four evenly rounded corners a flat, clear surface covering the front of the product; substantial black borders above and below the display screen

D618,677* iPhone 3G black screen

65 D087 Patent

D087 Patent

Design Patent

D593,087 iPhone 3G rounded bezel and/or screen, microphone, action button

66 D087 Patent

D087 Patent

Apple Design Patent Related Trade Dress

iPhone 3G and 3GS (Unregistered) a rectangular product with four evenly rounded corners a flat, clear surface covering the front of the product

D593,087 iPhone 3G rounded bezel and/or screen, microphone, action button

Copyright 2015 Darius C. Gambino All Rights Reserved.

Aug. 26, 2015

66

67 D305 Patent

D305 Patent

Design Patent Related Trade Dress

The mark consists of the configuration of a rectangular handheld mobile digital electronic device with rounded silver edges, a black face, and an array of 16 square icons with rounded edges

TM Reg. 3,470,983 iPhone 3G

D604,305 iPhone 3G

Copyright 2015 Darius C. Gambino All Rights Reserved.

Aug. 26, 2015

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68 D305 Patent

D305 Patent

Apple Design Patent Related Trade Dress

iPhone 3G and 3GS (Unregistered) a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the displays other icons.

D604,305 iPhone 3G

Copyright 2015 Darius C. Gambino All Rights Reserved.

Aug. 26, 2015

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69 The Federal Circuit reads 9th Circuit Law

The Federal Circuit reads 9th Circuit Law

CAFC: [T]he Supreme Court and the Ninth Circuit have repeatedly found product configuration trade dresses functional and therefore non-protectable. See [TrafFix, Secalt, Disc Golf]. They have? There are several District Court cases from the 9th Circuit where product configuration trade dress was found non-functional (Fiji Water, Mixed Chicks, d.light Design, Cybergun, Dogloo).

70 The Federal Circuit reads 9th Circuit Law

The Federal Circuit reads 9th Circuit Law

CAFC: Registration cant save a functional trade dress. See [Talking Rain (bottle design), Tie Tech (cutting tool), Leatherman (Swiss Army knife)]. It cant? Again, there are multiple District Court cases from the 9th Circuit that uphold registered trade dress and putting the burden on the alleged infringer to prove functionality (Fiji Water, Dogloo).

71 The Federal Circuit reads 9th Circuit Law

The Federal Circuit reads 9th Circuit Law

CAFC: A product feature is non-functional only if serves no purpose other than identification (citing Disc Golf) Virtually impossible standard to meet This is not the law of the 9th Circuit. At least as interpreted by District Courts therein. Every product feature has some function outside of source identification (de jure vs. de facto functionality).

72 The Federal Circuit reads 9th Circuit Law

The Federal Circuit reads 9th Circuit Law

The shape of a Coke bottle makes it easier to hold, but that doesnt make its impression on the consumer as a source identifier any less significant. Subsequent District Courts applying the Disc Golf factors have found non-functionality for product shapes, even where those shapes arguably had functional benefits: Fiji Water (square water bottle), Cybergun (firearms), Dogloo (igloo-shaped doghouse).

73 Functionality: Design Patent v. Trade Dress

Functionality: Design Patent v. Trade Dress

CAFC on Unregistered Trade Dress: rounded corners improve pocketability and durability, rectangular shape maximizes the display that can be accommodated, and [a] flat clear surface on the front of the phone facilitates touch operation . Doesnt the 677 Patent show a flat clear surface? Doesnt the 087 Patent show rounded corners and rectangular shape?

74 Functionality: Design Patent v. Trade Dress

Functionality: Design Patent v. Trade Dress

CAFC on Registered Trade Dress: Apples GUI icon designs promote usability by communicat[ing] to the consumer that if they hit that icon, certain functionality will occur on the phone. Doesnt the 305 Patent show the same icon designs and arrangement? So are the functionality tests different?

75 Ninth Circuit v. District Courts

Ninth Circuit v. District Courts

CAFC: Apple conceded during oral argument that it had not cited a single Ninth Circuit case that found a product configuration trade dress to be non-functional. Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 2010 WL 3835673 (C.D.Cal.) (water bottle) Mixed Chicks, LLV v. Sally Beauty Supply, LLC, 11-CV-00452 (C.D.Cal. 2011), Doc. 256 (Sp. Verdict Form) (hair care products) Cybergun, S.A. v. JAG Precision, 2012 WL 4868104 (D.Nev.), affd, Dkt. No.12-17640 (9th Cir. Jul. 19, 2013) (firearms) d.light Design, Inc. v. Boxin Solar Co., Ltd., 13-5988 (N.D.Cal. 2013), Doc. 60 (Order) (solar lamps) Dogloo, Inc. v. Doskocil Mfg. Co., Inc., 893 F.Supp. 911 (C.D.Cal 1995) (igloo-shaped dog house)

76 Fiji Water (CDCA 2010)

Fiji Water (CDCA 2010)

What about Fiji Water? Fiji Water v. Fiji Mineral Water (C.D. Cal. 2010) injunction for infringement of trade dress in bottle shape and appearance. See U.S. Regs. 2,911,918 and 2,937,191 at left. Evidence of Function: Square shape made bottles easier to package.

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77 Mixed Chicks (CDCA 2011)

Mixed Chicks (CDCA 2011)

What about Mixed Chicks? Mixed Chicks v. Sally Beauty (C.D. Cal. 2011) $8.1 million jury award and injunction for infringement of trade dress in bottle shape and appearance. Evidence of Function: Translucent bottles and pumps allow the purchaser to see what is inside.

78 What about d.light Design

What about d.light Design

d.light Design v. Boxin Solar (N.D. Cal. 2013) Temporary Restraining Order (TRO) and preliminary injunction granted for infringement of plaintiff's trade dress and design patents. Evidence of Function: None raised by defendants, but shapes may have been easier to carry, more effective at gathering sunlight, etc.

d.Light Design (NDCA 2013)

79 Cybergun (D

Cybergun (D

Nev. 2012/9th Cir. 2013)

What about Cybergun? Cybergun, S.A. v. JAG Precision (D.Nev. 2012) preliminary injunction based on claimed trade dress in firearms granted; affirmed by 9th Circuit. Evidence of Function: None raised but certain features might make the firearm easier to hold, easier to fire, etc. Court distinguished Secalt and Leatherman as cases where the products did not identify upon sight the [manufacturer] in question but Apple court relied on these cases in holding that iPhone did not identify Apple on sight.

80 What about Dogloo

What about Dogloo

Dogloo, Inc. v. Doskocil Mfg. (C.D.Cal. 1995) - preliminary injunction based on claimed trade dress in igloo-shaped dog house granted. See U.S. Reg. 1,631,630 at left. Evidence of Function: Utility patent on same design, touted function in advertising, superior thermal qualities, easier to stack and ship.

Dogloo (CDCA 1995)

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81 Moving Forward

Moving Forward

Is Apple binding on anyone other than Apple and Samsung? Not really - It is the CAFC interpreting 9th Circuit trade dress law, the 9th Circuit doesnt have to follow it, and neither does any other Circuit. The CAFC got 9th Circuit trade dress law wrong. Is trade dress dead after Apple? No. Should you still include trade dress counts in your complaint? Yes. Should you still seek trade dress registrations? Yes.

82 Moving Forward

Moving Forward

Trade Dress Prosecution Practice Tips: file for design patent protection first, then after a few years file a trade dress application; if you cant wait 5 years, go on the Supplemental Register; many litigants have prevailed with only registrations on the Supplemental Register (T-Mobile magenta, Kind Group lip balm).

82

83 Moving Forward

Moving Forward

Trade Dress Litigation Practice Tips: using existing case decisions to underscore your arguments; argue de jure vs. de facto difference; just because a product feature or shape has a function doesnt meant that it is functional if that were the case, then the Disc Golf test would be collapsed down to a single factor (Factor 1: whether the design yields a utilitarian advantage)

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84 Any questions

Any questions

Now, its your turn

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