In a previous post I predicted that Apple would win its patent infringement lawsuit against Samsung. Not only was I right, but my reasoning was also correct. In general, I predicted that if Apple was able to convert a “boring” patent trial involving highly technical matters into an inquiry as to whether Samsung flagrantly copied the “look and feel” of the iPhone and iPad, Apple would win. From everything I’ve read about the trial, Apple was able to do just that. In contrast, Samsung was not able to convince the jury that there was a innocent explanation as to why its products and Apple’s were so similar. If you’re interested in learning more about my reasoning, here’s a video of my recent appearance on “This Week in Law.”
There are a number of important lessons that every company can and should learn from Apple about how to better protect it’s intellectual property even without having an unlimited budget to do so. Companies should review their intellectual property portfolio with an eye to whether increased protection can be obtained through the use of design patents and trade dress. This is especially true for manufacturing companies. Apple was able to utilize both of these types of IP with great success against Samsung.
There are two general categories of patents that can be obtained from the United States Patent and Trademark Office, utility patents and design patents. Utility patents are the most common type of patents and generally involve the way an invention is used and works and may be granted to anyone who invents a new and useful method, process, machine, device, or any new and useful improvement of the same. A utility patent may be awarded for a computer software invention. Apple asserted that Samsung infringed three Apple technical utility patents involving features of a multi-touch user interface.
Design patents have generally been regarded as the poor step-sister of utility patents and have been litigated far less frequently than utility patents. However, infringement of a design patent may be far easier for a jury to understand as it apparently was by the Apple jury. In general, a design patent protects only the ornamental appearance of an invention, not its utilitarian features. The general test for infringement for a design patent is relatively simple: whether the alleged infringer’s product designs appear substantially the same as the patentee’s designs? While a patentee can buttress its evidence of the similarity of designs through the testimony, for example, of industry observers, consumers, and business partners, a jury using their own eyes through a side by side comparison may be able to decide for themselves if the products are substantially the same. It certainly does not depend on understanding highly complex technical matters. Apple was able to convince the jurors that they only needed to use their own eyes to establish infringement. Companies should consider whether they manufacture or sell any products that can be protected by a design patent.
In addition, companies should also consider seeking trade dress protection for their protects. Trade dress refers to whether a consumer associates the non-functional features of a product with a particular manufacturer or source. Apple was able to introduce highly damaging evidence on its trade dress claims regarding the iPhones’ and iPads’ extensive and highly favorable coverage by the media and industry analysts. Trade dress protection, in general, can be obtained for any product so long as it has non-functional ornamental features.
By seeking protection of products through design patents and trade dress, companies can greatly increase their intellectual property portfolio. By doing it in a measured manner, this can be accomplished in a cost-efficiently.