By Sarah Burstein, Associate Professor of Law at the University of Oklahoma College of Law
Samsung Electronics Co., Ltd. v. Apple Inc. (on petition for a writ of certiorari)
In its recently-filed cert petition, Samsung makes some particularly interesting arguments about design patent claim construction. Specifically, Samsung argues “that district courts have a duty to construe [design] patent claims and eliminate unprotected features” under Markman and that the Federal Circuit has erred in “allow[ing] district courts . . . to decline to provide any meaningful claim construction.” To put these arguments in context, a bit of background is in order.
Twenty years ago, the Federal Circuit held that Markman applies to design patents. Since then, it has struggled to decide and describe how, exactly, it applies in the design context. This difficulty isn’t particularly surprising. Markman (and later Supreme Court cases about claim construction) only dealt with utility patent claims. And utility patent claims are fundamentally different from design patent claims. Unlike utility patents, design patents can contain only one claim. The verbal portion of this claim must (in general) read as follows: “The ornamental design for [the article which embodies the design or to which it is applied] as shown.” The phrase “as shown” refers to the drawings or photographs submitted by the applicant. Therefore, design patent claims consist mainly of images, not words.
The Federal revisited the issue of Markman and design patents in 2007. When it granted en banc review in Egyptian Goddess, the court asked for briefing on the issue of whether claim construction should apply to design patents and, if so, what role that construction should play in the infringement analysis. The court received numerous amicus briefs on this issue, expressing a wide range of opinions. When the court issued its decision in 2008, it ruled that district courts do not have to—and ordinarily, should not—construe a design patent claim by providing a detailed verbal description of the design. It suggested that district courts could, nonetheless, “usefully guide the finder of fact by addressing a number of other issues that bear on the scope of the claim” by, for example, describing any relevant drawing conventions, describing the effect of any relevant matters in the prosecution history, and “distinguishing between those features of the claimed design that are ornamental and those that are purely functional.”
Then, in its 2010 decision in Richardson, the Federal Circuit indicated that district courts should “factor out” functional elements in construing design patent claims. This “factoring out” approach proved to be both unworkable and unnecessary, as Chris Carani explained in this recent LANDSLIDE article. (I think of this whole line of cases as the “FUBAR cases,” in reference to the product at issue in that case.)
When Apple v. Samsung was before the Federal Circuit, Samsung argued the district court erred in “fail[ing] to instruct the jury to ‘factor out’ the unprotectable structural and functional elements of Apple’s designs,” relying on Richardson and related cases. The Federal Circuit disagreed. In its May 2015 decision in Apple v. Samsung, the court ruled that its case law did not support Samsung’s “structural” argument. It also seemed to back away from Richardson, insisting that case “did not establish a rule to eliminate entire elements from the claim scope.” A few months later, the Federal Circuit backed even further away from Richardson in Ethicon.
In its cert petition, Samsung does not rely on—or even mention—Richardson. Instead, Samsung advocates a new approach to design patent claim construction.
Samsung’s approach is based in requirement that a patentable design be “ornamental.” Samsung argues that certain features (or aspects) of a design cannot be “ornamental” as a matter of law and that district courts must “eliminate” these “unprotected features” during claim construction.
So what are the “unprotected features” that Samsung wants courts to “eliminate”? Samsung argues that an ornamental design “cannot include ‘functional’ features, for those are the proper domain of utility patent law,” citing Bonito Boats. In this respect, Samsung’s approach sounds similar to one taken in the FUBAR cases. But Samsung would apparently go further, arguing that an ornamental design “cannot include concepts, shapes or colors,” likening them to “abstract ideas” or “physical phenomenon” under Bilski.
Samsung argues that “[a] district court can easily . . . identify to a jury a design patent’s conceptual, functional and ornamental aspects, and instruct a jury not to find infringement based on conceptual or functional similarities.” Whether or not this would actually be easy may be a matter of some debate, especially in light of past experience with the FUBAR cases. It’s also not clear what would qualify as a “conceptual” aspect (or feature) of a design.
And as a larger policy issue, it’s questionable whether verbal claim dissection is either desirable or appropriate in the context of design patents. The better approach may be, as Chris Carani argued in the LANDSLIDE article mentioned above, to simply instruct juries “that design patents only protect the appearance of the overall design depicted in the drawings, and not any functional attributes, purposes or characteristics embodied in the claimed design.”
It’s also worth noting that under Egyptian Goddess, the prior art may be used to narrow the scope of a claimed design—not through formal claim construction but as part of the infringement analysis. But in Apple v. Samsung, prior art that could have been used to narrow the scope of the claimed designs was not admitted at trial. So, if anything, this case represents a failure to make full use of the Egyptian Goddess framework, not a failure of the framework itself.