District Court's Finding Regarding Infringement of Apple's D'677 Patent

 The District Court agreed with Apple, finding that Samsung’s accused Infuse 4G and Galaxy S 4G phones would likely infringe Apple’s D’677 patent. The court looked at the side-by-side, pictorial comparisons in reaching this finding. According to the court, Samsung’s accused cell phones “would likely appear substantially the same [as the D’677 patent] to the ordinary observer” (Court Order Denying Motion for Preliminary Injunction at 26).

Substantial similarities that contributed to overall similarity of appearance between the Galaxy S 4G and D’677 included: Galaxy S 4G’s “similar shape, size and glass-like black front face as the D’677 patent”; the location of the speaker on the Samsung Galaxy S 4G was in almost the same place as the speaker on the D’677 patent; the screens on the Galaxy S 4G and D’677 were similarly sized. Substantial similarities between the Infuse 4G included: the Infuse 4G’s similar “large, flat, transparent black front screen, a slot-shaped speaker and a streamlined, simplistic design”.

On the whole, these similarities gave the Samsung accused cell phones the same overall appearance as the D’677 patent. Because of these findings, the court held that Apple would be likely to succeed at proving infringement at trial.

However, while this is the case, the court did disagree on the significance of the differences between Samsung’s accused cell phones and Apple’s D’677. Some of the identified differences between the Galaxy S4G and D’677 included: Samsung’s camera lens at the top of its Galaxy S 4G’s front faces; Samsung’s logo, as well as the service carrier’s logo on the front face of the Galaxy S 4G and four buttons at the bottom of Samsung’s Galaxy S 4G phones. Some of the identified differences between the Infuse 4G and D’677 included: the larger and broader size of the Infuse 4G; writing on Infuse 4G (no writing on D’677) and the buttons on Infuse 4G (not present in D’677).

Though the court defined these as minor differences, they also assumed greater significance for two reasons. The first was the general simplicity and minimalism of the design of both Apple’s D’677 and Samsung’s cell phones. The second was that the iPhone (embodiment of D’677) and Samsung’s cell phones were all expensive products, and consumers were likely to note and consider the differences while making their purchasing decisions. Additionally, the court also disagreed with Apple’s argument that its D’677 patent was conspicuously different from the prior art. Citing to another case, the court noted, “‘if the claimed design is close to the prior art designs, small differences between the accused design and the claimed design assume more importance”.Then, the court went on to state that the prior art for the D’677 patent “may make minor differences… take on greater significance”.

Nevertheless, the existence of these differences was not enough to detract from the overall substantial similarities in appearance between Samsung’s accused cell phones and the D’677 patent. The Federal Circuit did not address the issue of likely infringement of D’677 in its appellate opinion. This indicates that it did not disagree with the district court’s finding.

The next business litigation blog post will discuss Apple’s argument about the likely validity of the D’677 patent. 

Apple's Motion for a Preliminary Injunction, Court's Denial, and Federal Circuit Appellate Opinion: Reasonable Likelihood of Success

Apple’s Argument re Infringement of D’677 Patent:

The D’677 patent is the design of the ‘front face’ of the Apple iPhone. Apple argued that Samsung’s Galaxy S 4G and Infuse 4G infringed upon their design patent. Apple motioned for a preliminary injunction declaring that an ordinary observer would find the appearance of the front of Samsung phones to be substantially similar to the design of a front in the D’677 patent. Apple used pictorial, side-by-side comparisons to demonstrate these similarities in appearance between the accused Samsung phones and the Apple D’677. For additional evidence in support of the substantial similarities in appearance, Apple compared the D’677 design and Samsung’s accused phones to the prior art. Apple argued that Apple’s design was fairly different from the prior art, enough so that it “departs conspicuously from the prior art” and that the Samsung accused devices “copied the conspicuously different features” that were in Apple’s D’677. 

Apple acknowledged that there were some minor differences in the design of D’677 and Samsung’s accused phones. However, Apple termed these as ‘minor variations’, which did not detract from the substantial similarities in their overall appearances. These differences were even more insignificant in Apple’s view because of Samsung’s “concerted effort to mimic Apple’s distinctive design while rejecting a bevy of other design options".

The next blog will address the District Court’s finding on infringement of the D’677 patent.

District Court's Denial of Apple's Motion for Preliminary Injunction and Appeal to Federal Circuit

 The Northern District of California court denied Apple’s motion for preliminary injunctive relief.   This blog will only discuss on the reasonable likelihood of success and irreparable harm prongs, since these two prongs formed the basis for the district court’s ultimate denial of an injunction against all four devices.

A refresher: Apple sought to enjoin: Infuse 4G cell phone (alleged infringement of D’677, D’087, and US ‘381 patents); Galaxy S 4G cell phone (alleged infringement of D’677, D’087, and US ‘381 patents; Droid Charge cell phone (alleged infringement of US ‘381 patent); and the Galaxy Tab 10.1 Tablet (alleged infringement of D’889 and US ‘381 patents).

Here is an overview of the court’s rulings and reasoning:

D'677 Patent Allegedly Infringed Upon: Infuse 4G and Galaxy S 4G.  Likely to be valid, likely to be found to have been infringed.  But, no irreparable harm if deny injunction. So, court denied motion for injunction. 
D'087 Patent Allegedly Infringed Upon: Infuse 4G and Galaxy S 4G.  District court found that Samsung raised substantial questions re validity of this patient, so court denied any requests for injunctions based upon infringement of D'087.
D'889 Patent Allegedly Infringed Upon: Tab 10.1.  District court found that Samsung raised substantial questions re validity of this patient, so the court denied any requests for injunctions based upon infringement of D'889.
US'381 Patent Allegedly Infringed Upon: Infuse 4G, Galaxy S 4G, Droid Charge, and Tab 10.1. Likely to be valid, likely to be found to have been infringed.  But, no irreparable harm if deny injunction. So, court denied motion for injunction. 

The district court’s ruling did not put an end to Apple’s quest, however.  Far be it for something as minor as a pesky court order to stop Apple from pursing a goal it seeks to accomplish.  Taking full advantage of every litigation tactic in its arsenal, Apple appealed the denial of its motion for a preliminary injunction to the Federal Circuit.  Apple’s strategizing paid off.  The Federal Circuit reversed the district court’s decision on the likely invalidity of the D’889 patent and remanded back to the district court for further findings on the last two factors (balance of harms, public interest) as to the Galaxy Tab 10.1.  The Federal Circuit did affirm the denial of injunctive relief as to the other three devices. 

Prefacing Note on Intellectual Property Tests and Standards (Part 4 of 4)

                The anticipation and obviousness inquiries are different for design patents, as compared to utility patents.  Given that three of the patents at issue are designs, a clear understanding of both anticipation and obviousness is necessary to understand Samsung’s invalidity arguments.  As discussed earlier, we are focusing on anticipation and obviousness as grounds for invalidating a patent.

                As mentioned in the last post, patent law theory essentially posits the same tests for anticipation and obviousness.  The anticipation inquiry requires only one single reference.  If an ordinary observer would think that one single prior art reference is “substantially the same” as the design patent, then that reference is anticipatory and invalidates the design patent.  A prior art reference is substantially the same as the design patent if “‘the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.’” As the district court emphatically stated, “the focus should likewise be on ‘the overall design’ of the patent as compared” to the anticipatory reference. Court Order Denying the Motion for Preliminary Injunction at 10-11, 18.

The inquiry for obviousness is more complicated.  If a designer “of ordinary skill [in the design of the articles involved] would have combined teachings of the prior art to create the same overall visual appearance as the claimed design,” then the design patent is obvious and invalid. Richardson at 3.  Determining if the combined prior art creates the same overall visual appearance as the design patent falls under the ordinary observer test: would an ordinary observer think the appearance of the design created by combined prior art is substantially similar to the appearance of the design patent?  If yes, then the combined prior art renders the patent obvious. Wharton, Blog Entry.  In sum, the obviousness analysis centers on the overall appearance of the claimed design, not on the design concept. Richardson at 3, Manual of Patent Examining Procedure (“MPEP”) at 1504.03.

The combination must contain one “primary [prior art] reference” and at least one other “secondary [prior art] reference.” Tambolas, Blog Entry.  This primary reference must be one prior art reference with “design characteristics [that] are basically the same as the claimed design.” Richardson at 3. The “design characteristics” term is defined to mean “overall visual appearance.” MPEP at 1504.03. So, the primary reference must have the “basically the same overall visual appearance” as the design patent. This standard is an incredibly stringent test.

If the defendant doesn’t find a primary reference that has basically the same appearance as the design patent, then he cannot argue that the design patent is invalid due to obviousness. Id.  This prior art reference must be “something in existence, and not something brought into existence by selecting and combining features from prior art references.” Id.  Differences between the primary reference and design patent are permissible where such differences are minor or don’t concern the overall appearance of the design.  Where there such permissible differences, then secondary references can be utilized to bridge the gap between the two.  However, the defendant must prove that these differences would have been obvious to a person of ordinary skill in the art. Id.

After finding a primary reference, secondary sources can be used to modify the primary reference.  However, in order to qualify as a secondary reference, the reference must be “‘so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.’” Richardson at 3.  Essentially, a designer of ordinary skill in the art must see some sort of suggestion in one of the references to combine it with the other. Id.at 3-4.  Secondary references can be used to modify the primary reference by: adding new features from the secondary references to the primary reference; interchanging features of both references with the other; or, deleting features from the primary reference due to something in the secondary reference. However, the secondary references can only be combined if such a combination would have been obvious to a designer of ordinary skill in the art.

References

Court Order Denying Motion for Preliminary Injunction, Docket No. 450, 2011-12-02.

Manual of Patent Examining Procedure, 8th Ed. 2011-08, Section 1504.03 Nonobviousness [R-5] – 1500 Design Patents, http://www.uspto.gov/web/offices/pac/mpep/documents/1500_1504_03.htm.

Julie Richardson, “Design Patents: Alternative Protection for Articles of Manufacture”, available at: http://www.myersbigel.com/library/articles/DesignPatents.pdf.

Teresa Tambolas, “Chicago Design Patent Attorney Explains How An Obviousness Challenge Can Trump a Motion for Preliminary Injunction in a Design Patent Case, Pattishall IP Blog, http://blog.pattishall.com/2009/08/06/chicago-design-patent-attorney-explains-how-an-obviousness-challenge-can-trump-a-motion-for-preliminary-injunction-in-a-design-patent-case/.

Jake Wharton, “Federal Circuit Updates Design Patent Invalidity Standard,” Furniture Law Blog, 2010-01-23, http://womblefurniturelaw.blogspot.com/2010/01/federal-circuit-updates-design-patent.html

Prefacing Note on Intellectual Property Tests and Standards (Part 3 of 4)

Since the standards and tests for anticipation and obviousness are different for design patents and utility patents, we have devoted this post to discussion of anticipation and obviousness of utility patents.  The next blog will focus on the standards for anticipation and obviousness of design patents.

To prove anticipation of a utility patent (like the ‘381), a defendant must demonstrate that one single prior art reference discloses every element of at least one claim; if one single prior art reference discloses every element of a claim, then that claim is invalid because it has been anticipated by the prior art and is not novel.   If this test seems familiar to you, then you are right.  Under patent law, the tests for anticipation and infringement are the same.  The only difference is that an anticipatory reference has an earlier date of invention than the patent, whereas infringement involves an accused device that has a later date of invention than the patent.  In the anticipation analysis, courts compare the anticipatory reference to the patent claim.  For infringement, courts compare the patent claim with the accused device. See, Court Order Denying Motion for Preliminary Injunction at 18.

A challenge on the grounds of obviousness is arguing that a person of ordinary skill in the art would find the patent claim to be obvious in light of the entire prior art.  In determining if a claim is obvious, courts look to four factors: a) scope and content of the prior art; b) the level of ordinary skill in the art; c) differences between the claimed invention and the prior art; and d) any secondary considerations (i.e. commercial success of invention; industry skepticism about success or viability of invention, failure of others, etc).  The statutory standard states that a claim is obvious if a person of ordinary skill in the art would think that “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole” were obvious.  35 U.S.C. 103, “Conditions for Patentability, Non-Obvious Subject Matter (2004).

Combining prior art references is permissible to demonstrate obviousness.  One way to prove obviousness is when the combination of prior references discloses every element of a claim.  If a combination of prior art references discloses every element of a patented claim, then that claim is invalid for being obvious.  However, another way to prove obviousness does not require disclosure of every element of the patented claim in a reference.  For example, if the difference between the prior art and the patented claim is a matter of general knowledge to people of ordinary skill in the art, then that general knowledge functions to fill the gap between the prior art and the claim, making the claim obvious even if one element of the claim had not been explicitly disclosed in a prior art reference.

Obviousness can be a tricky determination, because prior art references may only be combined under certain circumstances.  Some circumstances where certain prior art references can be combined are: where something in one reference suggests, teaches, or motivates (TSM test) a person of ordinary skill in the art to combine that reference with another one; where a person of ordinary skill in the art would think the combination was obvious to try; where common sense would motivate a person of ordinary skill in the art to combine references.

 [NOTE: with utility patents, invalidating one or more claims does not necessarily invalidate the whole patent. Just because one patent claim (even if it is an independent claim) is invalidated, this does not mean that the other claims have been invalidated as well.  It just means that the patentee cannot claim infringement of his patent based upon that particular claim.]