Apple v Samsung What you need to know

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

Finnegan, Henderson, Farabow, Garrett & Dunner LLP ELIZABETH D. FERRILL www. americanbar. org | www. abacle. org

The Ongoing Saga Federal Circuit Panel Decision Stay of Mandate Denied & Mandate issues May 18 Deadline to File Cert Petition November 12 August 25 201 5 May Jun Ju l Au g Sep Oct September 18 Case Mgt Conference (N. D. Ca. ) August 5 PTO Issues Non-Final Rejection of ’ 677 Patent Nov Dec 2016 201 6 December 5 Apple Response in Reexam of ’ 677 August 13 Petition for En Banc Denied www. americanbar. org | www. abacle. org

Apple’s Design Patents D 618, 677 D 593, 087 D 604, 305 www. americanbar. org | www. abacle. org

Samsung’s Arguments www. americanbar. org | www. abacle. org

Samsung’s Arguments www. americanbar. org | www. abacle. org

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 www. americanbar. org | www. abacle. org

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…. ” www. americanbar. org | www. abacle. org

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 www. americanbar. org | www. abacle. org

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 whethere has been direct infringement. ” Prior Art Presented to Jury www. americanbar. org | www. abacle. org

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 www. americanbar. org | www. abacle. org

“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 www. americanbar. org | www. abacle. org

Samsung’s 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 www. americanbar. org | www. abacle. org

“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. 3 d 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 infringer’s] total profit” www. americanbar. org | www. abacle. org

Samsung’s “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 (2 d Cir. 1915) • Federal Circuit: • Facts are different • Samsung’s phone shells are not sold separately from innards • No legal error www. americanbar. org | www. abacle. org

Policy Arguments on Damages • Rise of design patent trolls • Defendant’s 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 www. americanbar. org | www. abacle. org

Amici’s Policy Arguments on Damages • Rise of design patent trolls • Defendant’s 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 www. americanbar. org | www. abacle. org

Samsung’s 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 infringer’s entire profits exceeds the scope of Section 289 where a patented design is only a minor feature of an infringing product. www. americanbar. org | www. abacle. org

Samsung’s Issues for Cert Petition • “To the extent of” infringer’s 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 (6 th Cir. 1920) • Untermeyer v. Freund, 58 F. 205 (2 d Cir. 1893) www. americanbar. org | www. abacle. org

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 www. americanbar. org | www. abacle. org

Priority Claim Not Supported Disclosure of “Grandparent” application D 618, 677 www. americanbar. org | www. abacle. org

But Anticipation Under 102(e) D 618, 204 D 618, 677 www. americanbar. org | www. abacle. org

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 www. americanbar. org | www. abacle. org

Stay Tuned www. americanbar. org | www. abacle. org

Lando & Anastasi, LLP WILLIAM J. SEYMOUR www. americanbar. org | www. abacle. org

Apple v. Samsung at the District Court D 593, 087 D 618, 677 D 604, 305 26 www. americanbar. org | www. abacle. org

Apple v. Samsung at the District Court: Claim Construction Samsung Sought to Exclude Allegedly Functional Design Elements Through Claim Construction: 1. “a size that can be handheld, ” 2. “a screen that encompasses a large portion of the front face of the smartphone, ” and 3. “a speaker on the upper portion of D 593, 087 the front face of the product” D 618, 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) (Samsung’s opening design patent claim construction brief). www. americanbar. org | www. abacle. org

Apple v. Samsung at the District Court: Claim Construction Samsung Sought to Exclude Allegedly Functional Design Elements Through Claim Construction: 1. “the use of icons as metaphors for applications, features, and commands; ” 2. “the layout of those icons in a grid pattern (i. e. , columns and rows)” 3. “a ‘dock’ of icons at the bottom of the screen; ” and 4. “a status bar” D 604, 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) (Samsung’s opening design patent claim construction brief). www. americanbar. org | www. abacle. org

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). www. americanbar. org | www. abacle. org

Apple v. Samsung at the District Court: Claim Construction Judge Koh denies Samsung’s request to identify allegedly functional aspects of the design patents D. I. 1425 at 13 -14 (amended order construing design patents). www. americanbar. org | www. abacle. org

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). www. americanbar. org | www. abacle. org

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). www. americanbar. org | www. abacle. org

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). www. americanbar. org | www. abacle. org

Apple v. Samsung at the District Court: Samsung Infringes – Apple awarded over $1 billion in damages www. americanbar. org | www. abacle. org

Apple v. Samsung at the District Court: Samsung Infringes – Apple awarded over $1 billion in damages www. americanbar. org | www. abacle. org

Design Patent Functionality: The Statute The Patent Act requires design patents to meet four requirements: 1. 2. 3. 4. New Original ***Ornamental*** For an article of manufacture www. americanbar. org | www. abacle. org

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 Int’l, Inc. , 190 F. 3 d 1360, 1368 (Fed. Cir. 1999). www. americanbar. org | www. abacle. org

Design Patent Functionality: “Ornamentally” vs. “Functionality” 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. Blisscraft of Hollywood v. United Plastics Co. , 294 F. 2 d 694, 696 (2 d Cir. 1961). www. americanbar. org | www. abacle. org

Design Patent Functionality: Functionality = “Dictated Solely by Function” Best Lock Corp. v. Ilco Unican Corp. , 94 F. 3 d 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. ” www. americanbar. org | www. abacle. org

Design Patent Functionality: Functionality = “Dictated Solely by Function” Reprinted with permission of Chris Carani, of Mc. Andrews, Held & Malloy, Ltd. www. americanbar. org | www. abacle. org

Design Patent Functionality: Functionality = “Dictated Solely by Function” Available design alternatives is relevant to ornamentally/functionality: ‘ 087 ‘ 677 ‘ 305 The Apple v. Samsung jury was not charged with determining if Apple’s design patents were invalid for being functional, and that issue was not raised on appeal. www. americanbar. org | www. abacle. org

Design Patent Functionality and Infringement: Identifying Unprotected Functions During Claim Construction Oddz. On Prods. , Inc. v. Just Toys, Inc. , 122 F. 3 d 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. ” “Ultra Pass” • “In construing the claim of Oddz. On'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. ” www. americanbar. org | www. abacle. org

Design Patent Functionality and Infringement: “Factoring Out Functional Aspects” During Claim Construction Richardson v. Stanley Works, Inc. , 597 F. 3 d 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 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. ” www. americanbar. org | www. abacle. org

Design Patent Functionality and Infringement: “Factoring Out Functional Aspects” During Claim Construction Richardson v. Stanley Works, Inc. , 597 F. 3 d 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. ” www. americanbar. org | www. abacle. org

Design Patent Functionality and Infringement: “Factoring Out Functional Aspects” During Claim Construction Richardson v. Stanley Works, Inc. , 597 F. 3 d 1288 (Fed. Cir. 2010) www. americanbar. org | www. abacle. org

Design Patent Functionality and Infringement: Richardson vs. Oddz. On Was Samsung “factoring out” functional design elements or were they attempting to “identify” the functional aspects of the design? 1. “the use of icons as metaphors for applications, features, and commands; ” (Identifying a Function/Concept) 2. “the layout of those icons in a grid pattern (i. e. , columns and rows)” (Factoring Out) 3. “a ‘dock’ of icons at the bottom of the screen; ” and (Factoring Out) 4. “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) (Samsung’s opening design patent claim construction brief). www. americanbar. org | www. abacle. org

Design Patent Functionality and Infringement: Richardson vs. Oddz. On Was Samsung “factoring out” functional design elements or were they attempting to “identify” the functional aspects of the design? 1. “a size that can be handheld, ” (Identify a Function/Concept) 2. “a screen that encompasses a large portion of the front face of the smartphone, ” and (Factor out) 3. “a speaker on the upper portion of the front face of the product” (Factor out) D 593, 087 D 618, 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) (Samsung’s opening design patent claim construction brief). www. americanbar. org | www. abacle. org

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). www. americanbar. org | www. abacle. org

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. ”) www. americanbar. org | www. abacle. org

Apple v. Samsung at the District Court: Motion for Judgment as a Matter of Law Judge Koh Holds that the Allegedly Functional Elements Aren’t 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). www. americanbar. org | www. abacle. org

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. www. americanbar. org | www. abacle. org

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 Oddz. On? Slip Op. at 20. www. americanbar. org | www. abacle. org

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 Covidien’s 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. www. americanbar. org | www. abacle. org

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 Ethicon’s 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. www. americanbar. org | www. abacle. org

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 Oddz. On, we limited the scope of a design claim to ornamental features of a football-shaped ball with a tail and fin structure, rejecting the patentee’s argument that its design claim covered the broad general concept of a ball with a ‘rocket-like’ appearance. ” See Slip Op. at 20. www. americanbar. org | www. abacle. org

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 court’s 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. www. americanbar. org | www. abacle. org

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. www. americanbar. org | www. abacle. org

Conclusions 1. Design patent invalidity for functionality is an exacting standard that requires that the design, as a whole, is “solely dictated by function. ” 2. The presence of alternative designs is usually determinative of nonfunctionality 3. Design patent defendants, such as Samsung, often argue to “factor out” allegedly functional features of the asserted design under the Federal Circuit’s decision in Richardson v. Stanley Works. 4. 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. 5. Samsung sought en banc review of the panel decision, which was denied on August 13. www. americanbar. org | www. abacle. org

New England Law PROFESSOR PETER J. KAROL www. americanbar. org | www. abacle. org

Registered Trade Dress www. americanbar. org | www. abacle. org

Unregistered Trade Dress Apple claims elements from its i. Phone 3 G and 3 GS 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 display’s other icons. (citing Appellee’s Br. 10 -11). www. americanbar. org | www. abacle. org

Apple v. Samsung (Fed. May Cir. 2015) • Panel: Prost (author), O’Malley, Chen • The CAFC reversed the jury’s finding that Apple’s trade dresses were protectable, but affirmed the jury’s verdict on design patent infringement. • In other words, design patents won and trade dress lost – But why? www. americanbar. org | www. abacle. org

Functionality • The CAFC found the claimed trade dress to be functional despite the jury’s finding to the contrary. • The CAFC found the jury instructions on design patent functionality to be error-free. • Notably, the CAFC applied 9 th 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. www. americanbar. org | www. abacle. org

D’ 677 Patent • Apple Design Patent Related Trade Dress i. Phone 3 G and 3 GS (Unregistered) “a rectangular product with four evenly rounded corners” D 618, 677* i. Phone 3 G black screen “a flat, clear surface covering the front of the product; ” “substantial black borders above and below the display screen…” www. americanbar. org | www. abacle. org

D’ 087 Patent • Design Patent D 593, 087 i. Phone 3 G rounded bezel and/or screen, microphone, action button www. americanbar. org | www. abacle. org

D’ 087 Patent • Apple Design Patent Related Trade Dress i. Phone 3 G and 3 GS (Unregistered) “a rectangular product with four evenly rounded corners” D 593, 087 i. Phone 3 G rounded bezel and/or screen, microphone, action button Copyright 2015 © Darius C. “a flat, clear surface covering the front of the product” www. americanbar. org | www. abacle. org Aug. 26, 2015 66

D’ 305 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… D 604, 305 i. Phone 3 G Copyright 2015 © Darius C. TM Reg. 3, 470, 983 i. Phone 3 G www. americanbar. org | www. abacle. org Aug. 26, 2015 67

D’ 305 Patent • Apple Design Patent Related Trade Dress i. Phone 3 G and 3 GS (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 display’s other icons. ” D 604, 305 i. Phone 3 G Copyright 2015 © Darius C. www. americanbar. org | www. abacle. org Aug. 26, 2015 68

The Federal Circuit reads 9 th Circuit Law • CAFC: “[T]he Supreme Court and the Ninth Circuit have repeatedly found product configuration trade dresses functional and therefore non-protectable. See [Traf. Fix, Secalt, Disc Golf]. ” • They have? There are several District Court cases from the 9 th Circuit where product configuration trade dress was found non-functional (Fiji Water, Mixed Chicks, d. light Design, Cybergun, Dogloo). www. americanbar. org | www. abacle. org

The Federal Circuit reads 9 th Circuit Law • CAFC: Registration can’t save a functional trade dress. See [Talking Rain (bottle design), Tie Tech (cutting tool), Leatherman (Swiss Army knife)]. • It can’t? Again, there are multiple District Court cases from the 9 th Circuit that uphold registered trade dress and putting the burden on the alleged infringer to prove functionality (Fiji Water, Dogloo). www. americanbar. org | www. abacle. org

The Federal Circuit reads 9 th 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 9 th 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). www. americanbar. org | www. abacle. org

The Federal Circuit reads 9 th Circuit Law • The shape of a Coke bottle makes it easier to hold, but that doesn’t 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). www. americanbar. org | www. abacle. org

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 …. ” – Doesn’t the ’ 677 Patent show a flat clear surface? – Doesn’t the ’ 087 Patent show rounded corners and rectangular shape? www. americanbar. org | www. abacle. org

Functionality: Design Patent v. Trade Dress • CAFC on Registered Trade Dress: Apple’s GUI “icon designs promote usability” by “‘communicat[ing] to the consumer … that if they hit that icon, certain functionality will occur on the phone. ’” – Doesn’t the ‘ 305 Patent show the same icon designs and arrangement? – So are the functionality tests different? www. americanbar. org | www. abacle. org

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 nonfunctional. ” – 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. ), aff’d, Dkt. No. 12 -17640 (9 th 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) www. americanbar. org | www. abacle. org

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. www. americanbar. org | www. abacle. org 76

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. www. americanbar. org | www. abacle. org

d. Light Design (NDCA 2013) • 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. www. americanbar. org | www. abacle. org

Cybergun (D. Nev. 2012/9 th 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 9 th 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 i. Phone did not identify Apple on sight. www. americanbar. org | www. abacle. org

Dogloo (CDCA 1995) • 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, 630 at left. • Evidence of Function: Utility patent on same design, touted function in advertising, superior thermal qualities, easier to stack and ship. www. americanbar. org | www. abacle. org 80

Moving Forward • Is Apple binding on anyone other than Apple and Samsung? – Not really - It is the CAFC interpreting 9 th Circuit trade dress law, the 9 th Circuit doesn’t have to follow it, and neither does any other Circuit. • The CAFC got 9 th 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. www. americanbar. org | www. abacle. org

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 can’t 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). www. americanbar. org | www. abacle. org 82

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 doesn’t 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”) www. americanbar. org | www. abacle. org 83

Now, it’s your turn… ANY QUESTIONS? www. americanbar. org | www. abacle. org