September 8th, 2016Apple v. Samsung – the IP fight goes on


written by James Klobucar, Esq., patent attorney at Gearhart Law

A long time ago in a galaxy far, far away…there was no such thing as the “smart phone wars.”

The Court of Appeals for the Federal Circuit (CAFC) recently handed down their most recent decision in the highly publicized clashing between the two tech titans. Samsung had appealed the district court’s approximately $930 million judgment in favor of Apple. The appeal before the CAFC focused on three mains areas of intellectual property law: trade dress, design patents, and utility patents. 

Trade Dress

Trade dress protects characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers. Trade dress must have secondary meaning as well as be non-functional. Here, the appeal before the CAFC dealt with both federally registered trade dress, as well as unregistered trade dress as it relates to Apple’s products.

Unregistered Trade Dress

Apple claims certain elements of its iPhone 3G and 3GS to define an unregistered trade dress: 1) a rectangular product with four evenly rounded corners 2) a flat, clear surface covering the front of the product 3) a display screen under the clear surface 4)substantial black borders above and below the display screen and narrower black borders on either side of the screen 5) when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the display’s other icons.

Apple’s main argument was that this trade dress was non-functional whereas Samsung alleged the functionality of the trade dress. The court, in making its determination looks to four factors: 1) whether the design yields a utilitarian advantage 2) whether alternative designs are available 3) whether advertising touts the advantages of the design 4) whether the design results from a simple or expensive method of manufacture

When examining these factors, the court found that Apple failed to show evidence favoring non-functionality stating that Apple pursued both “beauty” and “functionality” in its design of the iPhone. The court then reversed the district court’s finding on this matter in ruling against Apple.

Registered Trade Dress

In contrast to the unregistered trade dress described above, the registered trade dress is also subject to a federally registered trademark. This comes with a presumption of validity that Samsung must rebuff rather than putting the burden on Apple as with the unregistered trade dress issue. The trade dress here was drawn to “the design details in each of the sixteen icons on the iPhone’s home screen framed by the iPhone’s rounded-rectangular shape with silver edges and a black background.”

However, Samsung was able to put forth such evidence, which Apple again failed to refute. Thus, the court found that the trade dress was functional and thereby not protectable. The court then reversed the district court with regard to his matter in ruling against Apple.

Design Patents

Design patents generally cover an ornamental appearance of an object. Here, Samsung focused less on the patents themselves, but rather technical arguments concerning jury instructions and monetary damages to be paid to Apple.

Samsung put forth two main arguments concerning design patents before the court: 1) Did the court fail to instruct the jury to disregard the functional aspects of Apple’s design patents? 2) Was the award of “total profits” given to Apple improper?

Jury Instructions

With regard to the alleged functionality of Apple’s design patents, Samsung argued in either the claim construction or jury instruction “functional” aspects should have been filtered out in the infringement analysis. This argument hinged on a previous CAFC case, Richardson v. Stanley Works. However, the justices noted that the case does not support Samsung’s position. Notably that, the language of focus “dictated by their functional purpose” was only a description of facts and in no way established a rule to eliminate entire elements from the claim scope as so alleged by Samsung. Thus, the district court was affirmed on this matter and the CAFC ruled in Apple’s favor.

Total Profits

With regard to the total profits, the provision governing damages (35 U.S.C. §289) states that: “Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.”;With that, the justices note that the statute explicitly provides for such damages and affirmed the total profits awarded to Apple.

Utility Patents

Utility patents protect a process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. Here, Samsung challenged the validity of Apple’s patents as well as monetary damages to be paid to Apple.


Finally, Samsung challenged the validity of one claim in each of two separate patents, as well as the damages awarded to Apple for utility patent infringement. Samsung argued that in one claim the term “substantially centered” was not defined and therefore indefinite, and argued the other claim was previously described by a patent application to Nomura and therefore not patentable.

The court after listening to highly technical arguments ruled with the district court in that Apple’s claims were valid as written.


Apple previously brought forth both damages for lost profits and reasonable royalties. To recover lost profits the patent owner must show causation in fact, that but for the infringement, he would have made additional profits. Market sales of a non-infringing substitute is often enough to defeat a case for lost profits. Samsung attempted to show that it indeed had non-infringing substitutes. However, the one of the phones asserted by Samsung to have not infringed was deemed to be too dissimilar to the iPhone. Further, one of the other asserted phone models was not even sold in the U.S. Thus, the court upheld the lost profits ruling and ruled against Samsung.

With respect to reasonable royalties, Samsung argued that Apple’s expert offered only a cursory explanation of how she arrived at the royalty rates she calculated. Samsung also argued that a previous expert for Apple had similar flaws in their argument and did not present the analysis for reasonable royalty in light of the proper precedential test. The court chastised Samsung saying that they “complained” about the expert in question and found Samsung’s fault-finding “merit-less.” Thus, the court upheld the damages and ruled in favor of Apple.

The End? Not likely….

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