For the first time in its history spanning over 120 years, the US Supreme Court is hearing a design patent case of Apple vs. Samsung. It is a well-known fact that Apple’s design patents have revolutionized the design patent industry and proved the impact and importance of “Solid” and “Broken” lines in the design patent of an article of manufacture. To understand this case best, let me walk you through the key features of design patents.
The lifespan of a design patent was earlier 14 years. However, all applications filed since May 13, 2015 are now eligible for a 15-year lifetime. The patents include the ornamental appearance of an article, including its shape/configuration or surface ornamentation, or both.
So what’s makes design patents popular? For one, obtaining a design patent grant is way easier than obtaining a grant for a utility patent application. Around 80% of design patents are never rejected during prosecution. Also, failed or rejected design patents remain undisclosed to public as these patents are published only after obtaining a grant. While this ensures that competitor applicants are unaware of rejections, there is also no public record of the law on which an examiner rejected a design patent application and what needs to be avoided when filing for future design patents.
However, the implementation of The Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs has led to some interesting developments. The Act suggests that design patent applicants can file a single design patent application in a single language either directly with the International Bureau of the World Intellectual Property Organization or indirectly through one of the 64 Contracting Parties (associated with the Act). As classic examples, Google’s home page and The Statue of Liberty has design patents shown below:
Again, the most popular Apple’s iPhone design patent is USD618677.
Narrow claims is the key
The motive in any patent application (utility or design) is to claim the invention as broad as possible in light of any existing prior art. However, in the case of design patent applications, applicants try to claim minimal set of design features for an article of manufacture. The Apple vs. Samsung patent battle has shown the validity of this approach for design patent applications.
If you look up at the patent image of the iPhone you can see a solid line on the image. This line corresponds to the claimed part of the design and determines the scope of invention. The dotted line indicates environment and unclaimed features.
Design patent infringement isn’t based on exact copying. Rather the test is if an “ordinary observer” will see “substantial similarity”.
The current design patent case being fought by Apple and Samsung is a battle between the rear segment of the Samsung Galaxy S 4G mobile handset and that of the Apple iPhone. While the rear design of Samsung’s phone is different, it has been alleged its bezel infringes the claimed design of the iPhone as marked by the solid lines.
Now, in addition to this infringement case, Apple, as a plaintiff, has shown the journey of Samsung Smartphones before and after the iPhone. Here are some shreds of evidence submitted by Apple:
Samsung, on the other hand, presented some evidences to counter Apple by leaking news of its design to the media. However, the jury excluded this evidence due to late submission.
Apple has already been awarded nearly $400 million for Samsung’s infringement of its design patents.
On 11 October 2016, the U.S. Supreme Court heard oral arguments by Apple and Samsung regarding the appropriateness of the damages awarded to Apple. The Supreme Court is considering a very interesting question: “Where a design patent is applied to only a component of a product, should an award of infringer’s profits is limited to those profits attributable to the component?” This consideration may be a turning point in this case.
The design patent law of U.S. states that: “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.” (Source: https://www.law.cornell.edu/uscode/text/35/289)
Samsung argues that an article of manufacture can be something less than the entirety of an infringed product as it has only infringed certain parts of the iPhone and therefore should only be liable for any damages corresponding to those parts.
Apple says that it has spent billions of dollars developing the iPhone and the success of the phone was directly related to its unique look.
The court used the analogy of Volkswagen Beetle in analyzing the Apple-Samsung case. Some justices were on the point that VW Beetle’s design is what makes that car different from all the others, while others remarked that some people don’t care what a car looks like but instead want good gas mileage or other features.
Now, if Samsung wins, the patentee’s ability to collect damages will be limited by only the claimed part of the invention (solid lines)/ the infringing part of the claimed invention. The Supreme Court will simply say ‘yes’ or ‘no’ on the question of whether the damages should amount to all the profits made or it is calculated proportional to the number of components infringed. If the final verdict comes in favor of Samsung, the Supreme Court will pass the matter back down to a federal court to finalize the exact compensation.
Regardless of whether the Court sides with Apple or Samsung, the decision will have a great impact on the determination of design patent infringement damages and strategic approaches when seeking design patent protection. It will entirely impact claim forming strategies for design patents. If future patent applicants claim the invention as broad, they might be in a situation to claim the compensation amount less depending upon the number of components infringed.
(Featured image source: https://www.pexels.com/photo/silver-iphone-5s-and-white-samsung-android-smartphone-85895/)