By Nelson T. Rivera
Apple and Samsung’s patent infringement battle is not over, and in the latest ruling, neither side received exactly what it wanted. On May 18, 2015, the U.S. Court of Appeals for the Federal Circuit reaffirmed that Samsung had infringed specific design and utility patents for the iPhone. However, the appeals court also ruled that Samsung was not infringing on Apple’s overall trade dress — the design, shape and configuration of its phones. This means that, while the damages Apple was granted for patent infringement will stand, the company’s overall $930 million award will have to be reconsidered, specifically the jury’s $382 million award for Samsung’s dilution of Apple’s trade dress.
Trade dress refers to distinguishing features of a product or its packaging, and is intended to protect consumers from packaging or product configurations that are designed to imitate other products and to prevent consumers from buying one product under the belief that it comes from the same source as another product. However, the appearance of a product is only valid as trade dress if it is serves no functional purpose.
A product’s appearance can also be the subject of design patents. Design patents protect novel ornamental features of an article of manufacture (unlike utility patents which protect utilitarian features), and the drawings define the metes and bounds of the ornamental invention. Like trade dress, design patents cannot be directed to functional aspects of a design, but the dual “functionality” standards play out in very different ways. Whereas trade dress claims cannot be based on characteristics that in any way affect the quality or cost of the goods, design patents are only invalid if the overall appearance of the claimed design is dictated by the article’s function.
In its trade dress dilution claims, Apple accused Samsung of diluting its brand by copying the aesthetic features of its iPhones. The appeals court did not agree and ruled that Apple’s trade dress was functional. Specifically, the appeals court found the iPhone’s rectangular body, with its four evenly rounded corners, improves how easy it is for people to slip the phone in and out of their pockets. The shape also improves the durability of the device. Finding that protection under trade dress law for the overall look and shape of its smartphone would have granted Apple a perpetual monopoly over making smartphones work better, the three judge panel decided not to go this route.
On the other hand, the appeals court did not agree with Samsung’s assertion that functional elements of Apple’s design patents should have precluded the jury’s infringement verdict, even though these claims concerned similar subject matter, such as the iPhone’s rectangular shape and rounded corners. Although the jury instructions did not specifically identify any functional elements of the Apple patents or state specifically that these elements should be ignored in assessing infringement, the appeals court pointed out that the jury was instructed to limit the scope of the asserted design patent claims to the ornamental elements as shown in the patent figures. Thus, for example, the jury was assumed to have properly based its evaluations of the phones designs’ similarity only on the ornamental aspects of their rounded corners and not on the functional aspects of their rounded corners.
The apparent discrepancy between the court’s holdings on Apple’s trade dress and design patent claims is partly due to the different ways in which functionality affects the respective standards for infringement. A product’s functional components by definition cannot be part of its trade dress or a basis for trade dress infringement. In contrast, even when a component of a patented design is dictated by function, that component may still have ornamental aspects that can be considered when comparing the design’s overall appearance to an allegedly infringing article. Or perhaps the appeals court was simply more comfortable upholding the jury’s patent design-infringement verdict because design patents are valid for only 14 years from the date of issue, unlike trade dress which lasts as long as the design continues to be in actual use in commerce.
In either case, the most significant effect of this ruling may be to make design patents a more attractive legal weapon. Whereas the Federal Circuit has imposed a functionality standard that makes trade dress protection nearly impossible to invoke as a means to protect product configurations, a design patent will only be invalidated if the design’s overall appearance is dictated by the function of the article of manufacture, leaving juries free to consider ornamental similarities even of largely functional features, such as the iPhone’s rectangular shape and rounded corners