On December 2, 2011 the district court in the Apple v. Samsung patent litigation issued a 65 page ruling [ii] denying Apple’s motion to preliminarily enjoin the U.S. sales of several Samsung products, [iii] based upon such products’ alleged infringement of three design patents [iv] and one utility patent, [v] owned by Apple.
In this ruling, the district court:
(1) recognized that “certain aspects of the design patent that are dictated by function” may limit the scope of such patent; [vi]
(2) listed elements contained in Apple’s design patents that are “dictated by function;” [vii]
(3) explained that it should “consider only the remaining aspects of the design in the infringement and anticipation analysis of the design patent” [viii] (citing Richardson v. Stanley Works, Inc. [ix] and OddzOn Prods., Inc. v. Just Toys, Inc. [x]);
(4) identified functional features in Apple’s design patents; [xi] and
(5) performed an infringement analysis of these design patents “in light of” its claim construction. [xii]
The above described claim construction and infringement analysis appear balanced and consistent with Federal Circuit authority cited by the district court.
On August 21, 2012, less than nine months after issuing its Order denying the preliminary injunction, the same district court issued its Final Jury Instructions. [xiii] These Final Jury Instructions contain no claim construction addressing the issue of functionality. The functionality issue, as it relates to design patent claim scope, mysteriously vanished from the district court’s application of design patent law between the December 2011 issuance of the Order denying preliminary injunction and the August 2012 issuance of the Final Jury Instructions. This article explores the basis for, and prejudicial impact of, this vanishing claim interpretation issue on the Samsung defendants (hereinafter “Samsung”). [xiv]
On May 14, 2012, the Federal Circuit affirmed the district court’s Order denying the preliminary injunction with respect to the D’087, D’677 and ‘381 Patents, and vacated and remanded this Order with respect to the D’889 Patent. [xv] The Federal Circuit held that “the district court erred in finding that” a prior art reference “created the same visual impression as the D’889 patent” and ordered the district court to consider the balance of hardships and whether the public interest favored an injunction with respect to the D’889 Patent on remand. [xvi] The Federal Circuit’s decision did not address the claim interpretation issue of functionality. Thus, as of May 14, 2012, the district court’s December 2011 ruling limiting the scope of Apple’s design patents to exclude identified functional features had survived an appeal to the Federal Circuit.
On July 27, 2012, shortly before the start of trial, the district court issued an Order Regarding Design Patent Claim Construction (“Initial Claim Construction Order”), stating that it would “provide a supplemental claim construction at the close of evidence addressing any potential functional limitations to the scope of the design patents-in-suit.” [xvii] On July 29, 2012, the district court issued an Order Amending Design Patent Claim Construction (“Amended Claim Construction Order”) to correct two typographical errors and to clarify the meaning of the use of oblique line shading in Apple’s design patents. [xviii] On August 18, 2012, the district court issued Tentative Design Patent Jury Instructions. [xix] The Initial Claim Construction Order and the Amended Claim Construction Order, as well as the Tentative Design Patent Jury Instructions, failed to limit the scope of any design patent based upon non-ornamental or functional features.
An extremely significant, yet inexplicable, shift in the district court’s view of “functional limitations” in the design patents-in-suit apparently occurred between December 2, 2011 and July 27, 2012. [xx] As explained above, the district court’s December 2011 Order Denying PI Motion identified a multiplicity of non-ornamental features in the design patents-in-suit. [xxi] With respect to the claim interpretation issue of functionality, the district court explained:
Richardson instructs the district court to identify the aspects of the design that are “dictated by” function and to consider only the remaining aspects of the design in the infringement and anticipation analysis of the design patent. [xxii]
The district court’s use of the verb “instructs” in describing the Federal Circuit’s holding in Richardson is accurate and noteworthy. It is clear that in December 2011, the district court acknowledged the existence of binding Federal Circuit authority requiring the district court to (a) identify functional aspects or elements of the design, and (b) filter those functional elements from the infringement and anticipation analysis. Additionally, in its Order Denying PI Motion, the district court cited Richardson’s guidance that “there are a number of claim scope issues on which a court’s guidance would be useful to the fact finder,” including “the distinction between functional and ornamental aspects of a design.” [xxiii]
Yet, by July 2012, the district court merely recognized the existence of “potential functional limitations to the scope of the design patents-in-suit.” [xxiv] Apparently, these “potential functional limitations” failed to materialize by the time of the Court’s August 21, 2012 Jury Instructions, which contained no instructions limiting the scope of any design patent-in-suit due the presence of non-ornamental features. Unfortunately, the fact finder in the Apple v. Samsung patent litigation received no useful guidance from the district court on the claim scope issue of functionality.
In design patent litigation, the issue of functionality arises in the contexts of both invalidity and claim interpretation. With respect to the invalidity defense of functionality, the district court cited the following language from L.A. Gear, Inc. v. Thom McAn Shoe Co. [xxv]:
An article of manufacture necessarily serves a utilitarian purpose, and the design of a useful article is deemed to be functional when the appearance of the claimed design is ‘dictated by’ the use of purpose of the article. If the particular design is essential to the use of the article, it cannot be the subject of a design patent. [xxvi]
The district court further held that the “determination of whether the patented design is dictated by the function of the article of manufacture must ultimately rest on its overall appearance.” [xxvii]
Final Jury Instruction 52 entitled “Design Patents—Invalidity—Lack of Ornamentality” substantially applied the functionality principles quoted above, stating:
If Samsung proves by clear and convincing evidence that the overall appearance of an Apple patented design is dictated by how the article claimed in the patent works, the patent is invalid because the design is not “ornamental.” . . .
When deciding this, you should keep in mind that design patents must be for articles of manufacture, which by definition have inherent functional characteristics. It is normal that claimed designs perform some function – that does not disqualify them from patent protection. [xxviii]
An important aspect of the functionality analysis in the invalidity context is that it applies to “the overall appearance” of the patented design, as opposed to functional elements of the patented design. Thus, it is possible that a design patent directed to a design consisting of eight functional elements and two ornamental elements might be found by the trier of fact to have an “overall appearance” that is not functional. Thus, the Federal Circuit’s “overall appearance” standard for the invalidity defense of functionality favors the patentee.
By failing to expressly identify non-ornamental (functional) features of Apple’s design patents and instruct the jury that such features were not to be considered in its infringement analysis, the district court materially, and perhaps fatally, prejudiced Samsung’s non-infringement defenses. The district court unleashed a “free range jury” that was unconstrained in its ability to forage for patentable subject matter that could be used to evaluate infringement among the functional features disclosed in Apple’s design patents.
This free range jury was instructed to evaluate infringement of Apple’s design patents-in-suit as follows:
To determine direct infringement of a design patent, you must compare the overall appearance of the accused design and the claimed design.
If you find by a preponderance of the evidence that the overall appearance of an accused Samsung design is substantially the same as the overall appearance of the claimed Apple design patent, and that the accused design was made, used, sold, offered for sale, or imported within the United States, you must find that the accused design infringed the claimed design. [xxix]
Assuming that the jury followed the above instructions, then the overall appearance based comparison made by the jury would have included the screens “that encompasses a large portion of the front face” of the accused Samsung smartphones and the smartphone disclosed in Apple’s D’087 and D’677 Patents—a feature held to be non-ornamental by the district court and excluded from the district’s court’s December 2011 infringement analysis. [xxx] The presence of this common non-ornamental feature in the accused devices and the design patents-in-suit would have weighed in favor of finding a substantial similarity between the overall appearances of the accused Samsung devices and Apple’s design patents-in-suit. This example illustrates the prejudice that Samsung likely suffered as a result of the district court’s legally erroneous failure to exclude non-ornamental features from the claim scope of Apple’s design patents that was provided to the jury.
This prejudice was amplified by the proper jury instructions on the invalidity defense of functionality which permit a jury to dilute the significance of individual functional elements in the “overall appearance” analysis. The only context provided by the jury instructions for any trial testimony on the issue of functionality was that it went to the invalidity defense of lack of ornamentality (functionality) — a defense which does not focus on individual functional features. Jury Instruction 52 correctly instructed the jury that “design patents must be for articles of manufacture, which by definition have inherent functional characteristics.”
To paraphrase the title of a popular song recorded by Jerry Reed, Apple Got The Goldmine And Samsung Got The Shaft, with respect to design patent claim scope. This brings us to the final issue of what is the appropriate remedy for the district court’s erroneous and harmful claim interpretation. The answer to that question may be found in Apple’s Motion For Judgment As A Matter of Law (“Apple’s JMOL Motion”), wherein Apple states:
Where, as here, “an incorrect claim construction…removes from the jury a basis on which the jury could reasonably have reached a different verdict, the verdict should not stand.” Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 381 F.3d 1371, 1383 (Fed. Cir. 2004). [xxxi]
While appeals based upon a legally erroneous claim interpretation are not uncommon in the Federal Circuit, this case offers the added twist of a district court that applied a proper claim interpretation at the preliminary injunction stage and then abandoned that claim interpretation in issuing its Final Jury Instructions, without explanation. Hopefully, this issue will be raised on appeal and addressed by the Federal Circuit.
Copyright 2012 by Richard T. Redano
[ii] Apple, Inc. v. Samsung Electronics Co., Ltd. et al., U.S.D.C. for the N.D. of Calif., Case No.: 11-CV-01846-LHK (“Apple v. Samsung”), Doc. No. 452 (hereinafter “Order Denying PI Motion”)
[iii] These Samsung products are the Galaxy S 4G and Infuse 4G phones, and Galaxy Tab 10.1 tablet computer (see Order Denying PI Motion, p. 1, l. 23)
[iv] These design patents are D618,677 (“the D’677 Patent”), D593,087 (“the ‘D’087 Patent”), and D504,889 (“the D’889 Patent”).
[v] U.S. Patent No. 7,469,381 (“the ‘381 Patent”).
[vi] Order Denying PI Motion, p. 14, ll. 24-25; p. 39, ll. 23-24.
[vii] Id. at p. 15, ll. 6-16; p. 39, l. 26 – p. 40, l. 3.
[viii] Id. at p. 14, l. 28 – p. 15, l. 2; p. 39, ll. 24-26.
[ix] 597 F.3d 1288, 1293 (Fed. Cir. 2010).
[x] 122 F.3d 1396, 1404-05 (Fed. Cir. 1997).
[xi] With respect to the D’087 and D’677 Patents, the “Court therefore finds that a size that can be handheld, a screen that encompasses a large portion of the front face of the smartphone, and a speaker on the upper portion of the front face of the products are non-ornamental.” Order Denying PI Motion, p. 15, ll. 14-16. “The Court finds that several aspects of the D’889 Patent are dictated by function. Specifically, the tablet computer must be a size that allows portability. [citations omitted] Additionally, because the tablet functions by the user touching the screen, the tablet must have a relatively large screen in order to perform the function of the tablet. Because the size must allow portability, the screen necessarily must encompass a large portion of the front face of the product.” Id. at p. 39, l. 23 – p. 40, l. 3
[xii] Order Denying PI Motion, p. 26, ll. 9-10; p. 45, ll. 24-25.
[xiii] Apple v. Samsung, Doc. No. 1893 (hereinafter “Final Jury Instructions”)
[xiv] Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America, LLC.
[xv] Apple, Inc. v. Samsung Electronics Co., Ltd., 678 F.3d 1314 (Fed. Cir. 2012).
[xvi] Id. at 1332-33.
[xvii] (emphasis added); Apple v. Samsung, Doc. No. 1425 at p. 2, ll. 10-11.
[xviii] Apple. v. Samsung, , Doc. No. 1447 at pp. 1-2.
[xix] Apple v. Samsung, Doc. No. 1827.
[xx] An August 20, 2012 Order entering the Final Jury Instruction indicates that the design patent claim scope instruction was “disputed.” Apple v. Samsung, Doc. No. 1883 at p. 53.
[xxi] see note 10.
[xxii] Order Denying PI Motion, p. 14, l. 28 – p. 15, l. 2.
[xxiii] Id. at p. 15, n. 9.
[xxiv] see note 16.
[xxv] 988 F.2d 1117, 1123 (Fed. Cir. 1993).
[xxvi] Order Denying PI Motion, p. 12, ll. 1-5.
[xxvii] (emphasis added); Id. at p. 12, ll. 6-7, citing PHG Techs., LLC v. St. John Cos., Inc., 469 F.3d 1361, 1366 (Fed. Cir. 2006).
[xxviii] (emphasis added); Final Jury Instructions at p. 70.
[xxix] (emphasis added); Final Jury Instructions at p. 63.
[xxx] see note 11.
[xxxi] Apple v. Samsung, Doc. No. 1989 at p. 12, ll. 4-7. In its JMOL Motion, Apple contests aspects of the district court’s claim interpretation, other than functionality.