Part One: Ramifications of the Federal Circuit's Opinion: Going Beyond Apple

According to Ryan Alley’s blog, the federal circuit’s strict interpretation of the non-obvious standard has important ramifications for the electronics industry (and most likely, for the holders of design patents more generally). This blog focuses on the impact of the federal circuit’s opinion on the primary reference standard.

Alley specifically draws the point that the designs of issue in Apple are most certainly applicable in other electronics design cases (i.e. where the products involve screens, surfaces, bezels, frames, tablet shapes, etc.). The federal circuit’s holding indicates that courts will examine the appearance of electronic devices closely; perhaps allowing even seemingly minor differences between the appearance of the prior art references and the appearance of the claimed electronic device design to bar prior art from serving as a primary reference. Of course, to the federal circuit the differences between the Fidler tablet and the design patent were far from being minor. In fact, the federal circuit identified the differences as being “substantial differences”. Yet, it appears that many patent litigation bloggers find this to be puzzling, as the design differences seems “somewhat minor” to them. One blogger goes even further, writing, “I personally think these [referring to the Fidler tablet and D’889] create almost identical visual impressions.”
At a glance, based on online pictures, the Fidler tablet and the claimed design of the D’889 patent do in fact seem very alike in appearance. Enough so that it is perturbing that the Fidler tablet doesn’t satisfy the “basically the same visual appearance” requirement. Certainly, according to Blog Authoress Sarah Burstein, the federal circuit decision to reject the Fidler tablet as a primary reference was unexpected. Under the obviousness standards from a few years ago, Fidler would have been categorized as a primary reference.  Burstein expresses some reluctance to declare this decision (as well as another) to reflect a current trend that tightens the obviousness standards. However, Alley expresses no such hesitation in expressing his viewpoint that the Apple decision imposes a narrow (strict) obviousness standard (at least in the context of design patents that cover electronics). As he concisely terms it, “[t]his is a tough set of hoops for any…defendant to successfully jump through.” 
Please see the previous post: The Ramifications of the Federal Circuit’s Decision on the Secondary References Standard 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.
Apple, Inc. v. Samsung Elec. Co., Ltd., U.S. Court of Federal Appeals, May 14, 2012
Ryan Alley, “Apple v. Samsung- Design Prosecution Lessons,” Intellectual Property Law: Building Assets from Ideas, 2012-05-21,
Sarah Burstein, “Apple v. Samsung,” PatentlyO: The Nation’s Leading Patent Blog, 2012-05-18,
Rebecca Tushnet, “Brand Dilution as a Design Patent Theory of Harm,” Rebecca Tushnet’s 43(B)log, 2912-05-16,
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