District Court's Finding re Validity of D'677 Patent - Part II

 

This post is centered on Samsung’s argument about the D’677 patent’s invalidity. After having the ‘638 as a primary reference, Samsung argued that the other differences between the ‘638 patent and the D’677 patent would have been obvious. One of the main differences between them was the fact that the D’677 had a front face that was transparent, glass-like and black with an inset screen. A Samsung expert declared that using this black transparent screen on the front face would have been obvious because black screens were the only displays screens that were available for commercial purposes. Accordingly, using black for the unified front surface was not only an obvious choice, it was the natural default.

This same expert also provided some reasons as to why a person of ordinary skill in the art would have found it obvious to change the primary reference so the new device would have this transparent, glass-like black front surface. However, these reasons were not actually identified in the court’s opinion. But, the court did find them to be unsatisfactory in demonstrating obviousness.

 

Apple vs. Samsung: Court's Finding on Validity of D'667 Patent - Part I

The D’677 patent discloses that the front face surface of the iPhone has a black screen and is transparent and glass like. Arguing invalidity, Samsung attacked the D’677 patent as being obvious in light of the prior art. At the center of this argument was one particular patent: Japanese Patent No. 1241638 (‘638 patent). Per Samsung’s argument, the ‘638 patent worked in combination with other prior art to make D’677 obvious.  Due to the length of this discussion, we have split this entry into three parts.

You might recall that a challenge on obviousness grounds requires that there be a primary reference. As a refresher, a primary reference is one prior art reference that has basically the same overall visual appearance as the D’677 patent.

The district court found that the ‘638 patent could act as a primary reference in the obviousness inquiry. Though the ‘638 patent did not disclose, “A black transparent and glass-like front surface,” it nonetheless “created basically the same visual impression” as the D’677 patent did (Court Order Denying Motion for Preliminary Injunction, 21-2). The court was unclear in explaining its rationale for finding the ‘638 patent to be a primary reference. It’s logic seemed to be: the D’087 and D’677 patent both had similar overall visual impressions and that the ‘638 patent worked as a primary reference for the D’087 patent. Because of the substantial similarities between D’087 and D’677, it was assumed that a reference that worked as a primary reference for D’087 should also work as a primary reference for D’087. 

For example, the court stated, “Given the similarities between the D’677 and D’087 patents, and the substantial similarities between the ‘638 patent and the D’087 patent, it is appropriate for the ‘638 patent to serve as a primary reference for the D’677 patent” (Court Order Denying Motion for Preliminary Injunction, 22).

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Apple's Argument re Validity of D'677 Patent

Apple argued that Samsung’s invalidity challenges would not likely succeed at trial (Court Order Denying Motion for Preliminary Injunction, 9). As mentioned in a previous post, Apple’s argument section on the validity of D’677 is rather sparse. However, we have outlined the main points here.

According to Apple, none of Samsung’s previously identified prior art posed a danger to the validity of the D’677s patent. Moreover, during the prosecution of the design patent, the PTO had granted the patent after considering a substantial volume of prior art references. Apple then proceeded to point to the ‘overwhelming public and media reaction to the revolutionary and distinctive look of the iPhone as support for its argument about the novelty of Apple’s D’667 patent (Apple’s Motion for a Preliminary Injunction, 17).

The cited New York Times review of the iPhone analogized Apple to Cinderella’s fairy godmother, stating that Apple had effected a “transformation of a homely and utilitarian object, like a pumpkin or a mouse, into something glamorous and amazing, like a carriage or fully accessorized coachman.” Per Apple’s view, this review and the general media and public reaction constituted secondary considerations that demonstrated the non-obviousness of its D’677 patent. Secondary considerations include things like: commercial success; long felt industry need; failure of others; skepticism in industry; praise of others; copying of invention by others.  Secondary considerations can prove that an invention was non-obvious, and Apple used the news review and general media/public reaction to do just that.