The Mysterious
Disappearance Of Functionality Considerations From The
Apple v. Samsung Design Patent Claim Construction
And Its Prejudicial Impact
Copyright 2012 by Richard T. Redano1
On December 2, 2011
the district court in the Apple v. Samsung patent litigation
issued a 65 page ruling2
denying Apple’s motion to preliminarily enjoin the U.S. sales of
several Samsung products,3
based upon such products’ alleged infringement of three design
patents4
and one utility patent,5
owned by Apple.
In this ruling, the district court:
(a)
recognized that “certain aspects of the design patent that are
dictated by function” may limit the scope of such patent;6
(b)
listed elements contained in Apple’s design patents that are
“dictated by function;”7
(c)
explained that it should “consider only the remaining aspects of
the design in the infringement and anticipation analysis of the
design patent”8
(citing Richardson v. Stanley Works, Inc.9
and OddzOn Prods., Inc. v. Just Toys, Inc.10);
(d) identified
functional features in Apple’s design patents;11
and
(e)
performed an infringement analysis of these design patents “in
light of” its claim construction.12
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 PI Motion, the same
district court issued its Final Jury Instructions.13 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 PI Motion and the August
2012 issuance of the Final Jury Instructions. This paper explores
the basis for, and prejudicial impact of, this vanishing claim
interpretation issue on the Samsung defendants (hereinafter
“Samsung”).14
On May 14, 2012, the
Federal Circuit affirmed the district court’s Order Denying PI
Motion with respect to the D’087, D’677 and ‘381 Patents, and
vacated and remanded this Order with respect to the D’889 Patent.15
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.16
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.”17
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
1
use of oblique line shading in Apple’s design patents.18
On August 18, 2012, the district court issued Tentative Design
Patent Jury Instructions.19
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, 2012.20
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.21
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.22
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.”23
Yet, by July 2012, the
district court merely recognized the existence of “potential
functional limitations to the scope of the design patents-in-suit.”24
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.25:
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.26
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.”27
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.” . . .
2
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.28
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.29
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.30
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.”
3
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).31
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.
________________
1
Richard T. Redano is an adjunct professor of law at the University
of Tennessee College of Law where he teaches patent litigation, and
he is the president of Richard T. Redano, P.C.
(rredano@redanoipcounsel.com)
2
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”)
3
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)
4
These design patents are D618,677 (“the D’677 Patent”),
D593,087 (“the ‘D’087 Patent”), and D504,889 (“the D’889
Patent”).
5
U.S. Patent No. 7,469,381 (“the ‘381 Patent”).
6
Order Denying PI Motion, p. 14, ll. 24-25; p. 39, ll. 23-24.
7
Id.
at p. 15, ll. 6-16; p. 39, l. 26 – p. 40, l. 3.
8
Id.
at p. 14, l. 28 – p. 15, l. 2; p. 39, ll. 24-26.
9
597 F.3d 1288, 1293 (Fed. Cir. 2010).
10
122 F.3d 1396, 1404-05 (Fed. Cir. 1997).
11
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
12
Order Denying PI Motion, p. 26, ll. 9-10; p. 45, ll. 24-25.
13 Apple v. Samsung,
Doc. No. 1893 (hereinafter “Final Jury Instructions”)
14
Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
Samsung Telecommunications America, LLC.
15 Apple,
Inc. v. Samsung
Electronics Co., Ltd.,
678 F.3d 1314 (Fed. Cir. 2012).
17
(emphasis added); Apple
v. Samsung, Doc. No.
1425 at p. 2, ll. 10-11.
18 Apple. v. Samsung,
Doc. No. 1447 at pp. 1-2.
19 Apple v. Samsung,
Doc. No. 1827.
20
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.
22
Order Denying PI Motion, p. 14, l. 28 – p. 15, l. 2.
25
988 F.2d 1117, 1123 (Fed. Cir. 1993).
26
Order Denying PI Motion, p. 12, ll. 1-5.
27
(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).
28
(emphasis added); Final Jury Instructions at p. 70.
29 (emphasis added); Final Jury
Instructions at p. 63.
31 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.
4
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