Tuesday, August 18, 2015

Some of the buzz on the re-exam of Apple's design patent 618,677 is wrong

There's some buzz about a non-final Office Action in an ex parte re-exam on Apple's D'677.
For example USPTO Invalidates One of Apple's iPhone Design Patents in Apple vs. Samsung Lawsuit

The headline at MacRumors is simply wrong. First, a non-final Office Action does not invalidate anything. Second, the design patent is still valid; an issued patent goes into a re-exam valid and remains so until a final decision is reached. That has not happened.

See also Slashgear's USPTO invalidates Apple design patent used against Samsung

See also Billboard's Patent Office Invalidates iPhone Design Used in Samsung Case

MacRumors cites FossPatents:

FOSS Patents reported tonight that the Central Reexamination Division of the United States Patent and Trademark Office has reexamined one of the key iPhone design patents in the Apple vs. Samsung lawsuit. The validity of one of the patents (618,677) has received a non-final rejection:
The problem the D'677 patent faces here is that the USPTO has determined (for now) that this patent "is not entitled to benefit of the filing date" of two previous Apple design patent applications because the design at issue was not disclosed in those earlier applications. As a result, certain prior art is eligible now, and against the background of that additional prior art, the USPTO believes the patent shouldn't have been granted.
Apple was originally awarded over $1 billion from the original lawsuit, but that amount has been reduced substantially to about $548 million in damages. Aside from this particular design patent, Apple still has other claims that have not been reduced or invalidated from the previous decision.

For a discussion of some earlier court battles related to D'677, see an article by Christopher V. Carani, Apple v. Samsung: Design Patents Take Center Stage --

While only the front face of the device is claimed, the
D’677 patent does include perspective and side elevation
views, which are important because they disclose the (lack
of) contour on the front face. (A simple top plan view often
does not provide enough information so that the contour of
the surface can be discerned. By way of example, a single
top plan view showing two concentric circles does not provide
sufficient information to discern whether the inner circle
is coplanar with the outer circle.) Here, the perspective view
shows that that the front face is flat, and not angled, convex,
concave, or otherwise contoured.the home button is depicted in dotted lines. Thus, while multiple
embodiments are most often used to depict variations
in shape and form, here Apple used multiple embodiments
to claim variations in claim scope. It should be remembered
that while multiple embodiments may be included in the figures,
design patents are permitted to have only a single claim.
While only one embodiment need be infringed for there to
be infringement, similarly, if one embodiment is found to be
invalid, all embodiments fail.

Here, Apple’s strategic use of multiple embodiments
and dotted lines was used to increase the scope of the single
claimed design, providing it with much flexibility when
it came to enforcement. It was ultimately Embodiment 6,
which disclaimed the circular home button, that ensnared
Samsung. Samsung’s accused smartphones do not incorporate
a circular home button.

Samsung argued at trial, and again argues on JMOL, that all
of the asserted Apple design patents are “invalid” because
each claimed element of the designs is “functional,” and
not “ornamental.” For example, Samsung’s counsel argued:
“We’re going to say that all of the elements are functional, so
when you add them all up, you get a functional totality of the
circumstance. But let’s go through them one by one.”


In 2008, the en banc Federal Circuit in Egyptian Goddess,
Inc. v. Swisa, Inc., affirmed that the ordinary observer was the
“sole test” for determining design patent infringement, but added
the twist that it should be conducted “in light of the prior art.”

Note the opinion by Judge Bryson in 678 F.3d 1314 (Fed. Cir. 2012):

The court then addressed the D’677 patent. The court again looked to the ‘638 patent as a
primary reference but concluded that the ‘638 design was sufficiently different from the D’677
patent that it would not have been obvious to a designer to adopt a “flat, black, translucent front
screen.” The court therefore concluded that Samsung had not raised a substantial question
regarding the validity of the D’677 patent.
As to infringement, the court found that both the
Galaxy S 4G and the Infuse 4G phones had an overall design that an ordinary observer would
likely find substantially the same as the claimed D’677 design and that those phones were likely
to infringe.

Despite those findings, the district court denied Apple’s request for a preliminary
injunction based on its conclusion that Apple had failed to show that it was likely to suffer
irreparable harm from the importation and sale of Samsung’s infringing smartphones while the
case was pending in the district court. Apple made two arguments in support of its claim of
irreparable harm. First, it argued that Samsung’s sales eroded Apple’s design and brand
distinctiveness, resulting in a loss of goodwill. Second, it argued that Samsung’s sales took sales
away from Apple and resulted in Apple’s losing market share. Apple argued that those losses
would be difficult to quantify and that monetary damages thus would not be adequate to
compensate it for the injuries caused by Samsung’s infringement. The district court rejected both

***Additionally, as to the "staying power" of non-final rejections in re-exams, recall the
famous Eolas case, discussed on IPBiz ten years ago:

Eolas' US 5,838,906 to survive re-examination

On Sept. 27, 2005, the USPTO sent out a "notice of intent to issue a re-examination certificate," indicating that US 5,838,906, in this case with unamended claims, will survive re-examination.

In the re-exam (90/006,831; filed 30 Oct 2003), there was a non-final rejection on August 16, 2004, and a response received by the USPTO on October 12, 2004. [In passing, one notes that the re-exam process took about two years in this case.]


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