Design patents, trade dress & Apple III

By Sarah Burstein, Associate Professor of Law at the University of Oklahoma College of Law

Apple, Inc. v. Samsung Electronics Co., Ltd. (Fed. Cir. Nov. 18, 2013) (Apple III) Download 2013-1129

Panel: Prost (author), Bryson, O’Malley

As Dennis reported yesterday, Apple has scored another win at the Federal Circuit. Specifically, the Federal Circuit has vacated and remanded Judge Koh’s denial of a permanent injunction with respect to Apple’s utility patents.

But it wasn’t a complete win. The Federal Circuit affirmed Judge Koh’s denial of a permanent injunction with respect to Apple’s design patents and product-design trade dress. This post will focus on the design-related portions of the Federal Circuit’s decision.

Design patents: Last summer, the jury found Samsung liable for infringing three design patents—U.S. Patent Nos. D618,677 (“the D’677 patent”), D593,087 (“the D’087 patent”) and D604,305 (“the D’305 patent”).

The D’677 and D’087 patents claim partial designs for smartphone configurations. Here are representative drawings from each of them:

The D’305 patent claims a design for a graphical user interface. Here is one of the claimed embodiments:

(Although the D’305 patent was published in black-and-white, one of the drawings was submitted in—and therefore claims—color. The image shown above is from one of Apple’s district court filings.)

Judge Koh denied Apple’s request for a permanent injunction with respect to these design patents. In her order, Judge Koh concluded that Apple “simply [had] not established a sufficient causal nexus between infringement of its design patents and irreparable harm.”

On appeal, Apple challenged that conclusion, pointing to: (1) evidence indicating “that design is important [to] consumer choice” in smartphones; and (2) “evidence of quotations from Samsung consumer surveys and from an industry review praising specific elements of both Apple’s and Samsung’s phone designs, including some elements of Apple’s patented designs.” According to Apple, this evidence was sufficient to establish a causal nexus.

The Federal Circuit did not exactly disagree. The court took some pains to point out that it “might not reverse the entry of an injunction based on [that] evidence.” But, emphasizing the deferential standard of review, the Federal Circuit decided that Judge Koh had not abused her discretion in denying an injunction.

According to the Federal Circuit, Judge Koh “correctly noted . . . that evidence showing the importance of a general feature of the type covered by a patent is typically insufficient to establish a causal nexus.” She “was also correct that isolated, anecdotal statements about single design elements do not establish that Apple’s broader patented designs are drivers of consumer demand.” Therefore, the Federal Circuit affirmed the denial of a permanent injunction with respect to the design patents.

Comment: This decision could make it more difficult for patent owners to get injunctions for partial designs—that is, when they assert design patents that claim portions (instead of all or most) of a product’s design. The Federal Circuit specifically distinguished this case from Apple I, which involved a design patent that claimed the entire configuration of a tablet computer.

Trade dress: The jury also found that Samsung infringed Apple’s unregistered iPhone 3G trade dress and registered iPhone trade dress (Reg. No. 3,470,983). Here is the illustration from the trade dress registration certificate:

Judge Koh denied Apple’s motion for injunctive relief on its trade dress claims, based on “Samsung’s cessation of its diluting conduct.”

On appeal, the Federal Circuit looked to the controlling regional circuit law—in this case, the law of the Ninth Circuit. The Federal Circuit noted that, under Ninth Circuit precedent, “ongoing diluting behavior is not necessary to obtain an injunction.” But, according to the Federal Circuit, that does not mean “that a court commits legal error if . . . it considers a defendant’s voluntary cessation of diluting behavior as a reason to deny injunctive relief.”

In this case, the undisputed evidence showed that Samsung stopped selling the offending products. And there was no evidence that it would sell them in the future. In light of that evidence, the Federal Circuit concluded that Judge Koh did not abuse her discretion in denying an injunction.

Comment: One particularly interesting issue raised by Judge Koh’s order remains unresolved. In ruling on Apple’s motion for a permanent injunction, Judge Koh concluded that Apple did not have to make a “showing of irreparable harm beyond the harm of dilution itself.” She based this conclusion on the text of 15 U.S.C. § 1125(c)(1). The Federal Circuit did not reach this issue in Apple III. But it might not be able to avoid it for long. Many plaintiffs assert trade dress claims along with their design patent claims. And, as readers of this blog no doubt are aware, those cases are within the Federal Circuit’s exclusive appellate jurisdiction. So the Federal Circuit will likely be confronted with this issue again—quite possibly before the regional circuits have a chance to weigh in.