Apple v. Samsung: A New Day for Design Patents

On May 18, 2015, the Federal Circuit ruled in Apple v. Samsung, finding that Samsung infringed Apple’s design patents and utility patents and awarded Apple approximately $1 billion. Despite ruling in Apple’s favor on the design and utility patents, the court ruled that Apple’s registered and unregistered trade dresses were not protectable. Managing Intellectual Property reached to Finnegan attorneys Douglas A. Rettew and Elizabeth D. Ferrill for their thoughts on the case.

The court found that Apple’s registered and unregistered trade dress were not protectable because the claimed features were functional rather than for the sole purpose of identification. This stood out to Rettew who believed the Federal Circuit used an extraordinarily high standard for functionality in comparison to other courts. The decision also provided guidance for claim construction of design patents, specifically how to treat the functional parts of a claim. Citing the Richardson v. Stanley Works, Inc. case, Samsung argued that the functional elements of the claim should be ignored when considering the scope of the design patent. In Apple v. Samsung, the Federal Circuit clarified Richardson, which actually states that the claim construction should not be ignored and in fact should include the ornamental aspects of functional components. Ferrill noted that this application of Richardson is heard regularly but often misunderstood, and she believes the clarification that the Federal Circuit provided is needed.