In Apple Inc. v. Samsung Electronics Co., Appeal Nos. 2014-1335, 2015-1029, the Federal Circuit affirmed the district court’s findings of infringement, validity, and damages for Apple’s design and utility patents because sufficient evidence supported the jury’s findings, but reversed the district court’s finding of protectable trade dress and vacated its damages award for trade dress dilution.
Apple sued Samsung, claiming Samsung’s smartphones infringed various Apple design and utility patents and diluted Apple’s trade dresses. Two jury trials resulted in findings that Samsung’s smartphones infringed Apple’s design and utility patents and diluted Apple’s trade dresses, awarding $930 million in damages. Samsung filed two post-trial motions challenging those findings on various grounds. The district court upheld those findings and Samsung appealed.
Regarding Apple’s trade dress claims, the Federal Circuit reversed and determined both the unregistered and registered trade dresses are functional and therefore unprotectable. The Federal Circuit panel pointed out Apple did not rebut evidence that the elements in the unregistered trade dress, such as the iPhone’s rounded corners, serve the functional purpose of improving usability. The panel also concluded the elements claimed by the registered trade dress, which related to the icons on the iPhone’s home screen, are functional. The panel cited testimony of Apple’s own expert that those icons promote usability and are meant to communicate that functionality will occur when the icons are touched.
Regarding infringement of Apple’s design patents, the Federal Circuit affirmed. First, the panel rejected Samsung’s challenges to the jury instructions, stating that functional aspects of design patents need not be entirely excluded from the claim scope. It further noted the instructions correctly stated actual deception was not required to prove infringement and correctly directed the jury to consider the prior art. Second, the panel concluded the district court did not abuse its discretion in excluding minimally probative testimony regarding independent development and held substantial evidence supported the jury’s infringement findings.
Regarding validity and damages for Apple’s utility patents, the Federal Circuit affirmed. The panel agreed a claim directed to “substantially centering” document portions on a display was not indefinite. It reasoned there was sufficient evidence that skilled artisans would interpret “substantially centered” to mean essentially centered except for a marginal spacing to accommodate ancillary graphical user interface elements. The panel also held there was sufficient evidence that a claim directed to distinguishing between scrolling and gesturing operations was not anticipated because Apple’s expert testified the asserted reference did not disclose a claim element. Further, the panel upheld the application of the entire market value rule because one of Samsung’s asserted non-infringing substitutes had significantly different features and the other was not available at the time of infringement.