Federal Circuit's Appellate Opinion re D'889 Validity

When the federal circuit issued its decision, it took the opposite stance from the district court concerning the D’889 validity issue, holding that the district court had erred in its obviousness analysis. The federal circuit found that the district court had erroneously categorized the Fidler tablet as a primary reference. When the federal circuit engaged in a side-by-side visual comparison of the Fidler tablet and D’889, it reached the opposite conclusion that the district court had found. The district court had found that the Fidler tablet had basically the same overall appearance with only some minor differences. The federal circuit disagreed and found that the two had substantial differences, and that these substantial differences, in turn, prevented the court from viewing the Fidler tablet as having basically the same visual appearance as D’889. The appellate court referred to differences the devices’ respective frames and the D’889’s glass surface. These differences led both devices to create different visual impressions than the other.
 
Furthermore, the federal circuit was of the opinion that the district court had been comparing Fidler and the D’889 on too abstract of a level. As in, “Fidler does not qualify as a primary reference simply by disclosing a rectangular tablet with four evenly rounded corners and a flat back”(Federal Circuit Opinion at 31). It seems that the federal circuit finds that such similarities arise from the nature of the product (a tablet device) and should not count as similarities that give both devices the same appearance. Without the Fidler tablet as a primary reference, courts could not reach a finding of obviousness, since the obviousness standard for design patents requires that the prior art include one primary reference.
 
Even if the federal circuit presumed that the Fidler tablet was a primary reference, the federal circuit concluded that it would still be unable to find obviousness because the secondary reference “could not bridge the gap between Fidler at the D’889 design.” The district court had relied on a secondary reference that when used in conjunction with the Fidler tablet led to a conclusion of obviousness. For one, the federal circuit’s view was that the district court’s secondary reference did not actually qualify as one. Recall that secondary references are always combined with primary ones. However, in order to combine a primary reference with a secondary reference, the secondary reference must be so similar to the primary reference “that the appearance of certain ornamental features in one [design] would suggest the application of those features to the other” (Id. at 30). According to the appellate court, the secondary reference here was “so different in visual appearance from the Fidler reference that it d[id] not qualify as a comparison reference under that standard” (Id). The reason here was that the secondary reference had a gray frame that surrounded its glass screen. This led the secondary reference to seem too different from the Fidler tablet for it to properly qualify as a secondary reference. As will be discussed in a later blog, the federal circuit took a very strict view of secondary references.
 
After soundly rejecting Samsung’s Fidler and secondary reference obviousness argument, the federal circuit found that Samsung had not raised substantial questions about obviousness or the invalidity of the patent at issue, which left Apple with having demonstrated likelihood of success on the merits after all.
 
The next blog will begin our discussion on the irreparable harm prong for the D’889 analysis.
Please see the previous post: Apple’s Argument and the District Court’s Finding re D’889 Validity for more on this topic. For more on emergency business litigation, click here or call 312-223-1699 to speak with one of our Chicago law firm attorneys.
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