“Design is the Great Product Differentiator”
Here's the latest news on Samsung v Apple, the first US Supreme Court case in more than a century involving design patents. On Dec, 6, 2016, according to PatentlyO: "In a unanimous opinion authored by Justice (Sonia) Sotomayor, the Supreme Court has reversed the Federal Circuit in this important design patent damages case. Although the case offers hope for Samsung and others adjudged of infringing design patents, it offers no clarity as to the rule of law. The decision centers on the special statutory provision for damage awards in design patents – 35 U.S.C. § 289. Section 289 provides for the significant remedy of profit disgorgement based upon a defendant’s use of the patented 'article of manufacture.' The infringer 'shall be liable to the owner to the extent of his total profit.'" See what was issued by the high court and read the latest media coverage below.
Attorney Robert Katz, A/IDSA, of Banner & Witcoff, an IDSA Ambassador, led a free, live #IDSAWebinar on Dec. 14, 2016, taking a closer look at Samsung v Apple.
Samsung calls the Dec. 6 ruling a victory “for all those who promote creativity, innovation and fair competition in the marketplace.” Apple says it remains “optimistic that the lower courts will again send a powerful signal that stealing isn’t right.”
Oral arguments were heard Oct. 11, 2016. Read the transcript. "Some call it the design case of the century," wrote reporter Jeff Roberts for Fortune. "Samsung’s lawyer, Kathleen Sullivan of Quinn Emanuel, argued in favor a two-part process in which a court would first establish the patented 'article' in dispute, and then assess the damages based on expert witnesses or consumer survey evidence. Apple’s lawyer, Seth Waxman of Wilmer Hale, devoted much of his time to a technical argument, saying the Supreme Court shouldn’t consider the matter at on the grounds that Samsung had failed to say at trial that the design patents did not cover the entire iPhone."
"As we stand on the steps of the highest court of the United States, we are reminded of the spirit of innovation that this country was built upon," declared Samsung in a statement. "And it is this same spirit that has inspired us to fight for a fair interpretation of a law that will promote creativity and competition in the marketplace."
Samsung filed a request in December 2015 for the Supreme Court to hear the case, after the South Korea-based electronics giant was ordered to pay $548 million in damages to California-based Apple over three design patents involving the iPhone’s: round corners; bezel on surrounding rim; and colorful grid of 16 icons.
On Aug. 4, a new amicus brief was filed in the case on behalf of 113 “distinguished industrial design professionals and educators” convened by Charles Mauro, IDSA, chair of IDSA's Design Protection Special Interest Section and president and founder of Mauro New Media. The group also includes fashion designers, design museum directors and design research professionals who "share a strong professional interest in seeing that design patent law continues to protect investments in product design."
Apple filed its brief on July 29. "As with so many other Apple products, the iPhone’s success was directly tied to its innovative design, including its distinctive front face and colorful graphical touchscreen user interface, which Apple protected with US design patents," according to the Apple brief (see link to PDF below). "The innovation and beauty of Apple’s iPhone designs were hailed by consumers and the press and envied by Apple’s largest competitor, Samsung.... Samsung then made a deliberate decision to copy the iPhone’s look and many of its user interface features—a decision that revived Samsung’s sales."
Samsung filed its brief on June 1, calling Apple a "latecomer" to the mobile phone industry. "The three, narrow, Apple design patents at issue in this case claim only partial features of a smartphone’s design. While Apple often speaks as if the patents cover the 'iconic' 'look and feel' of the entire iPhone, the patents, in fact, claim neither something 'iconic' nor any kind of 'look and feel.'"
IDSA's brief was filed on June 8. It does not take a side in Samsung v. Apple; rather, the brief supports Section 289 of US law—and the protection it “provides to industrial designers, innovative companies and ultimately society as a whole.” IDSA Board of Directors Chair John Barratt and Executive Director Daniel Martinage, CAE—along with a review team of Mauro; Peter Bressler, FIDSA; Nancy Perkins, FIDSA; and Cooper Woodring, FIDSA—worked closely with attorney Robert Katz, A/IDSA, who served as counsel of record on the brief. The former United States Patent and Trademark Office (USPTO) examiner who is now a Banner and Witcoff attorney will speak August 18 on Apple v. Samsung: Past, Present, Future and its Impact on Designers at IDSA’s International Conference 2016 in Detroit.
The brief—a legal document filed with the high court by an individual or group who are not a party to the lawsuit but who believe the court’s decision may affect their interest—was one of the items on the agenda in April 2016, when IDSA, which has a Design Protection Special Interest Section, partnered with the University of Pennsylvania’s Law School and Integrated Product Design Program on a roundtable discussion on design patent law.
The brief opens, “IDSA has a strong interest in offering advice to the Court on the importance of the protections that Section 289 provides to industrial designers, innovative companies and ultimately society as a whole. IDSA respectfully submits this brief for the benefit of the Court and in specific support of neither party.”
It elaborates on why Industrial design is important to companies, consumers and society—declaring that industrial designers work on a wide range of products and “combine creativity, business and engineering talent with information on product use, marketing and materials of construction to create the best and most appealing designs, and to make the product competitive with others in the marketplace.”
The brief points out, “Creativity often begets innovation and invention,” and cites USPTO data showing about 40 percent of inventors named on design patents also were named on utility patents; while two percent of utility patent holders also were named on design patents. “Industrial designers not only drive aesthetic innovation, they also materially contribute to technological innovation. Given the economic significance of design, it is no wonder that there are more than 40,000 industrial designers practicing in the United States.”
IDSA agrees with David Kappos, former under secretary of commerce for intellectual property and director of the USPTO, who declared in a 2015 Wired article that “to promote great design, the law must afford meaningful protection for designers’ work…. To maintain America’s lead in this field, it is critical that we continue to incentivize investment in great design by ensuring that our design protection laws remain strong.”
- Aug. 4, 2016: Design Professionals brief
- July 29, 2016: Apple brief
- June 8, 2016: IDSA brief
- June 8, 2016: Department of Justice brief
- June 1, 2016: Samsung brief
- Feb. 4, 2016: Apple’s reaction
- July 2015: Brief filed with US Court of Appeals by Dell, eBay, Facebook, Google, HP, Vizio, etc.