Part Two: Ramifications of the Federal Circuit's opinion: Going beyond Apple

At least in the electronics industry context, Apple demonstrates that the federal circuit might be stricter in requiring incredibly strong similarities between the primary reference and claimed design, while finding seemingly minor differences to be sufficient in precluding a reference from being a primary one. Part of the reason for this strict reading of the obviousness standard could be that the court perceives such “minor” differences as being indicative of the argument that the primary reference and design patent share the same design concept (instead of sharing basically the same visual appearance). Under this argument, the similarities between the primary reference and the design patent arise from the fact that they have the same design concept, but the differences prove that the similarities are limited to those inherent to any device sharing that same concept. Sharing the same concept is NOT the equivalent of sharing basically the same visual appearance, and the obviousness standard demands that the primary reference do the latter. This interpretation arises from a portion of the federal circuit’s opinion, in which the court declared, “the district court’s error was to view the various designs from too high a level of abstraction. Rather than looking to the ‘general concept’ of a tablet, the district court should have focused on the distinctive ‘visual appearances’ of the reference and claimed design.” 

Extrapolating from this quote, it appears that the federal circuit believes the similarities between the Fidler tablet and the D’889 tablet to be a consequence of the fact that both are tablet devices (tablet devices being a design concept). But the differences, deemed substantial ones by the federal circuit and minor ones by some industry bloggers, limit the Fidler table to only sharing the same design concept, not sharing basically the same visual concept.
If the district court had been viewing the designs in this matter from too high of a level of abstraction (thinking of the designs common to the product category in general, as opposed to designs of the two specific devices), then the federal circuit is viewing the designs from a very low (and very specific) level of abstraction. What does this mean? What does this signify for the electronics industry? Defendants who are seeking to defeat a preliminary injunction motion on grounds of anticipation/obviousness of a design patent face an uphill battle. It seems as though they will need a primary reference with virtually minimal differences from the design patent at issue. Similarities between the two will need to be more than the similarities that ANY device in the category would have. In general, it seems as though defeating an injunction on grounds of obviousness of a design patent will be very difficult to accomplish.  Defendants should strive to defeat the motion by presenting strong evidence of non-infringement, no likelihood of irreparable harm, balance of harms supports defendant and public interest favors not granting an injunction.
Please see the previous post: Part One: Ramifications of the Federal Circuit’s Opinion: Going Beyond Apple 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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