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Guest Post: Design Patents and Apple v. Samsung

Sarah Burstein, Associate Professor of Law at the University of Oklahoma College of Law, volunteered this guest post regarding the Apple v. Samsung verdict. She is the author of “Visual Invention,” discussing nonobviousness in the context of design patents, recently published in the Lewis & Clark Law Review.

She writes:

In his thought-provoking and very interesting post on the Apple v. Samsung verdict, Michael Risch asks how the Galaxy Tab “escape[d] design patent infringement,” despite the facts that: (1) the jury found the Epic 4G to be infringing; and (2) the Galaxy Tab was the only product that was preliminarily enjoined. I’d like to add a few quick responses to these points.

As to Michael’s first point, I agree that the Galaxy Tab looks more like an iPad than the Epic 4G looks like an iPhone. So I can see how it might seem inconsistent for the jury to find that the Epic 4G was infringing while the Galaxy Tab was not. But the patent that Apple asserted against the Galaxy Tab was significantly narrower than the patents that Apple asserted against the Epic 4G.

At trial, Apple argued that the Galaxy Tab infringed U.S. Des. Patent No. 504,889 (“the D’889 patent”) and that the Epic 4G infringed U.S. Des. Patent No. 618,677 (“the D’677 patent”) and U.S. Des. Patent No. 604,305 (“the D’305 patent”). The D’889 patent claims a complete design for a tablet computer, while the D’677 and D’035 patents claim only partial designs for smartphones. Specifically, the D’677 claims a flat, black face in a specific shape and the D’035 patent claims the specific designs and arrangement of certain user-interface icons. So the overall design of the Epic 4G didn’t have to look like the overall design of an iPhone to infringe. But the Galaxy Tab did have to look like the overall design shown in the D’889 patent drawings to infringe.

Of course, the difference in the scope of the claims doesn’t answer the question of whether U.S. law should allow the type of broad, partial claiming used by Apple in the D’677 and D’035 patents. And this case certainly raises the issue of whether there should be more KSR-style “common sense” in the application of § 103 to designs (as I’ve argued previously). But those are separate (and, in my opinion, much more interesting) issues.

As for Michael’s second point—the difference between the PI result and the verdict—I think there are at least two factors at play:

(1) At the PI stage, Judge Koh assumed that the iPad 2 was an embodiment of the D’889 patent–something that Samsung disputed. And her finding of likely infringement was based, at least in part, on comparisons between the iPad 2 and the Galaxy Tab. This is important because the Galaxy Tab looks a lot more like the iPad 2 than the patent drawings. By contrast, in the UK case, Judge Birss specifically noted that:
Neither the original iPad nor the iPad 2 are identical to the [claimed] design. Whether either of them is or is not within the scope of protection would be a matter of debate. To use either as an example of the Apple design would be to beg the question of the true scope of Apple’s rights.

Notably, the RCD at issue in the UK case contains—at least as far as I can tell—the exact same drawings as the D’889 patent. After comparing the Galaxy Tab to the drawings, Judge Birss, like the U.S. jury, found no infringement. It’s not clear whether the jury compared the Galaxy Tab to both the drawings and the alleged embodiment, like Judge Koh, or just the drawings, like Judge Birss. But if they took the latter route, that might be one reason for the different result.

(2) At the PI stage, Apple had to demonstrate that the alleged infringement was likely to cause irreparable harm. In order to establish a nexus between the alleged infringement and irreparable harm in a design patent case, it’s not enough to show that the accused product embodies the claimed invention. Instead, the patentee must show a specific nexus between the claimed design and the likely harm. In support of its motion for PI, Apple presented evidence that consumers care about the “design” of smartphones but—as Judge Koh correctly pointed out—Apple’s evidence did not clearly show that consumers cared about the specific design elements claimed by Apple. This evidentiary problem didn’t arise with the Galaxy Tab because, as discussed above, the D’889 patent claimed a full—not just a partial—design.

While these factors help explain the difference between the PI and trial results, I’ll be the first to admit that they don’t really address the larger normative issues Michael raises (or at least suggests) in his post. And I agree with Michael that there are parts of the design patent system that are currently broken—as well illustrated by Apple v. Samsung.

I’d also like to briefly note that the concerns that Michael (and other commentators) have about Apple v. Samsung could have implications in the broader debate about how, if, and to what extent the law should grant IP protection to product designs. For example, if you think it is bad that Apple can get a huge amount of damages (and possibly an injunction) just because certain Samsung smartphones have flat, black faces, you might be concerned by proposals that the U.S. adopt a European-style design protection system that would make such rights easier (and cheaper) to get. On the other hand, if you think that copying is the evil that the law should prevent (as the jury seemed to think in Apple v. Samsung), a European-style regime might be more appealing.

In any case, the Apple v. Samsung verdict stands as a dramatic illustration of the potential power of design rights. And, hopefully, it will spur greater interest in—and attention to—the subject of design protection.