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Apple Verdict Against Samsung Mostly Upheld by Fed. Cir.

Back in 2012, a federal jury awarded Apple a staggering one billion dollars after finding that rival smartphone maker Samsung infringed Apple's design and utility patents, as well as Apple's trade dress.

Samsung appealed to the Federal Circuit, which yesterday handed Samsung a mixed bag. Everything but the trade dress claims could stand, the court said, setting the stage for an appeal to the U.S. Supreme Court.

A Little Bit Functional

"Trade dress," of course, refers to nonfunctional elements of a product that are so distinctive to a particular company that consumers immediately recognize those elements as representing that company. Think about the look of a pair of Converse All-Stars, or the Burberry plaid.

The limit of trade dress, though, is that it can't apply to "functional" components. The Federal Circuit applied the substantive law of the Ninth Circuit as to trade dress, which is a "high bar" in that circuit. The test in the Ninth requires only that a design element be a little bit functional to qualify.

Apple thought this was protectable unregistered trade dress:

  • a rectangular product with four evenly rounded corners;
  • a flat, clear surface covering the front of the product;
  • a display screen under the clear surface;
  • substantial black borders above and below the display screen and narrower black borders on either side of the screen;
  • and 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.

The problem is that none of these elements serves "no purpose other than identification." Apple itself acknowledged that some of these design elements, beyond just being pretty, made the iPhone easier to use than other cell phones. That's enough to qualify as a "purpose other than identification" under the Ninth Circuit standard.

The Federal Circuit also reversed on the issue of the registered trade dress, which consisted of the design of the icons on the iPhone's home screen. Again, Apple shot itself in the foot by introducing testimony from experts who claimed that the design of icons contributes to their usability. For example, the court said, an icon depicting a map and road signs that represents "Maps" is clearly functional in that it promotes usability by informing the user that the icon leads to the "Maps" application.

That's Still a Lot of Money

Samsung lost on the rest of its challenges, though. The court upheld a jury verdict on infringement of the design patents and its utility patents. In all other respects, the court also upheld the trial court's damage award on everything except the trade dress claims, which still amounts to about $548 million.

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