The United States Court of Appeals for the Federal Circuit issued its long-awaited opinion in Apple v. Samsung.

Apple v. Samsung, May 18, 2015

The case, known as Apple I, is the Apple v. Samsung case that yielded the $1.05 billion jury verdict in August 2012.  The amount was later reduced to $930m on partial retrial.  In short, trade dress rights were the big loser in the opinion, and design patent rights were the big winner.  


Registered trade dress – Reversed (finding that the asserted registered trade dress of the home screen (with detailed description of icons) plus the shape of the phone was “functional” and therefore not protectable via trade dress)

  • Unregistered trade dress – Reversed (finding that the asserted trade dress of the home screen plus the shape of the phone was “functional” and therefore not protectable via trade dress)
  • Design Patents (D618,677, D593,087, D604,305) – Affirmed (infringement, claim construction, ornamentality, anticipation, obviousness, indefiniteness, and damages)
  • Utility patents (‘163 and ‘915) – Affirmed (validity, damages)

1)      Trade dress rights took a big hit.  Albeit applying 9th Circuit law (which is notoriously tough on trade dress rights), the Federal Circuit employed an approach which will make it very difficult to establish protectable trade dress rights for anything that is remotely useful (at when applying 9th Cir. law).  Specifically, the court concluded that the asserted trade dress directed at the industrial design of the phone coupled with the graphical user interface design for the home screen was “functional” and thus not protectable under the Lanham Act, which governs trade dress rights. 

2)      Design patents were the BIG winner.  The Federal Circuit ruled in favor of design patents on 7 of 7 issues.  Here are the 3 highlights, all which strike at fundamentals of U.S. design patent jurisprudence:

  1. Claim Construction – As a matter of statutory subject matter eligibility, design patent claims must be “ornamental.” 35 U.S.C. § 171.  (See 35 U.S.C. § 101 for utility patents.)  The courts have largely adopted the multiplicity of forms theory in this regard. (i.e. so long as the design is not solely dictated by function i.e. there are alternative designs, the design will be deemed “ornamental”).
  2. Infringement – The court ruled that “deception” is not required for design patent infringement.  To show infringement, design patentees need only establish that the accused design is “substantially the same” as the patented design in view of the eyes of the ordinary observer, who is familiar with the prior art.  There is no need to incur the burden/cost of securing survey evidence to show deception. This decision resists the urge to complicate the process for establishing U.S. design patent infringement.
  3. Damages – Design patents have an additional remedy under 35 U.S.C. §289, which provides for the disgorgement of ALL of the infringer’s profits.

3)      Utility patents – There was nothing too remarkable here.  The Federal Circuit found that there was substantial evidence to support the jury’s finding that the claims were neither anticipated nor indefinite.


Article Published May 22nd, 2015