On May 18, 2015, the Federal Circuit issued its long-awaited decision on Samsung’s appeal of Apple’s nearly $930 million 2014 judgment for infringement of Apple’s design patents and utility patents covering various smart phones and tablets, and for dilution of its trade dresses. See Federal Circuit Appeal Nos. 2014-1335, 2015-1029. See also our previous discussions regarding the Apple-Samsung dispute here and here.
In its Appeal, Samsung asked that $399 million in damages derived from infringement of Apple’s design patents be reversed, that $382 million in damages associated with Apple’s trade dresses be reversed, and that $149 million in damages associated with Apple’s utility patents be reversed. See Samsung’s Opening Brief before the Federal Circuit at 3. The issues of greatest interest to many observers concerned the design patents and trade dresses. The damages flowing from the design patents were affirmed. However, Samsung scored a significant victory in erasing $382 million in damages attributable to infringement of Apple’s trade dresses. The design and trade dress aspects of the Federal Circuit’s opinion are discussed below.
- Design patents
Apple’s Design Patents
All of the design patents at issue relate to the iPhone® and were summarized by the Court as follows (slip op. at 18-19):
The D’677 patent focuses on design elements on the front face of the iPhone:
Click here to view image.
The D’087 patent claims another set of design features that extend to the bezel of the iPhone:
Click here to view image.
The D’305 patent claims “the ornamental design for a graphical user interface for a display screen or portion thereof” as shown in the following drawing:
Click here to view image.
Design Patent Damages Statute 35 USC § 289 Withstands Challenge
The most widely anticipated question was whether the Court would accept the arguments by Samsung and amici, including 27 law professors, attacking the design patent damages statute, 35 U.S.C. § 289. Section 289 allows a design patent owner to claim as damages an infringer’s entire profits on an infringing article. Samsung argued that damages for design patent infringement should have been apportioned to reflect that portion of the damages attributable to the design patent infringement. The Federal Circuit dispatched these arguments, stating that “[t]hose are policy arguments that should be directed to Congress. We are bound by what the statute says, irrespective of policy arguments that may be made against it.” Slip op. at 27, fn.1. Since the language of the statute was clear, the Federal Circuit affirmed the damages award for infringement of Apple’s design patents, the damages amount being calculated based on Samsung’s total profits on the accused devices. See Slip op. at 27.
Whether a debate over the merits of Section 289 will continue in Congress remains to be seen.
Design Patent Functionality
Before summarizing the Court’s discussion, it is useful to recognize that functionality arises in two contexts in design patent law. See, e.g., Carani, “Design Patent Functionality: A Sensible Solution,”Landslide, V.7, No. 2 (Carani). The first issue is statutory functionality, namely, whether a design patent is invalid as “dictated solely by” function in which case it would not satisfy the ornamental requirement of 35 U.S.C. § 171. The second issue arises in the claim construction context where some courts have attempted to factor out functional elements of a design patent. The Apple decision addressed functionality in the claim construction context.
Samsung challenged the lower court’s claim construction and jury instructions for failing to exclude functional aspects of Apple’s design patents. Citing Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010), Samsung argued that any elements “dictated by their functional purpose” in the Apple designs should be ignored in their entirety. Slip op. at 20. For this reason, Samsung argued that features such as the rectangular form and rounded corners in the Apple design patents should be completely ignored.
The Richardson case had caused concern among many in the design patent community. For example, ignoring “functional” elements in a design could conceivably lead to absurd results such as a claim construction that eliminated every element of a design leaving nothing to compare to the prior art or an accused product. See, e.g., Carani at 26. Importantly, the Court clarified that Richardson “did not establish a rule to eliminate entire elements from the claim scope.” Slip op. at 20. Similarly, referring toLee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988), the Court stated that Lee “did not specify a rule … to eliminate elements from the claim scope of a valid patent in analyzing infringement.” Slip op. at 21.
Although the Court’s opinion also included several statements that may benefit from further clarification, it appeared to confirm the general understanding that it is the “overall ornamental appearance” of the patented design that must be considered in an infringement analysis. Slip op. at 21-22.
- Trade Dress
Apple’s Trade Dress
Apple’s registered and unregistered trade dresses were at issue in the appeal. The unregistered trade dresses related to the iPhone® 3G and 3GS and were asserted as (slip op. at 9):
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 display’s other icons.
The registered trade dress was described as relating to each of the 16 icons on the iPhone®’s home screen as follows (slip op. at 15):
The first icon depicts the letters “SMS” in green inside a white speech bubble on a green background;
. . .
the seventh icon depicts a map with yellow and orange roads, a pin with a red head, and a red and- blue road sign with the numeral “280” in white;
. . .
the sixteenth icon depicts the distinctive configuration of applicant’s media player device in white over an orange background.
Functionality Sinks Apple’s Trade Dresses
The Federal Circuit began its discussion by pointing out that the Ninth Circuit sets a high bar for finding a product configuration trade dress nonfunctional. See Slip op. at 6-9. The Court pointed to the four factor test in Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1007 (9th Cir. 1998) of (1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture. See Slip op. at 10.
In analyzing utilitarian advantage, the Court repeated the demanding Ninth Circuit test that the unregistered trade dress “serves no purpose other than identification.” Slip op. at 10, citing Disc Golf, 158 F.3d at 1007. The Court found that features in Apple’s unregistered trade dress made the product easy to use, improved pocketability, durability, and had other functional benefits. See Slip op. at 11. Consequently, the Court found Apple’s unregistered trade dress had utilitarian advantage.
The Court next stated an alternative design must have “exactly the same” features as the asserted design to be nonfunctional. It found no evidence of any products with exactly the same features. See Slip op. at 12. The Court further found that Apple’ s advertising touted benefits of the user interface (see Slip op. at 13) and that Apple offered no evidence that its design was not relatively simple or inexpensive to manufacture. See Slip Op. at 14. For all of these reasons, the Court found no substantial evidence in the record to support Apple’s assertion that its trade dress was not functional and therefore Apple’s trade dress was not protectable.
In addressing the registered trade dresses, the Court again found all of the icons in the trade dress to be functional and not protectable. See Slip op. at 17.