Friday, May 21, 2010

Amici Curiea or Amici Intentio Paternus? Apple and the AIPLA weigh in on Stanley

Two of the loudest voices in the cacophony of criticism that greeted the decision in Richardson v. Stanley (analyzed here) are the American Intellectual Property Law Association (AIPLA) and Apple, Inc. Both filed amicus briefs in support of the petition for rehearing of the case en banc in front of the CAFC. Each brief provides ample justification to grant the petition.

Both amici train their initial arguments on the notion that design patents protect the claimed overall appearance of an article of manufacture, regardless of which elements are functional and which are not. For example, Apple succinctly fashions a rule from weighty precedent (including Bonito Boats) that removes direct consideration of the functionality of individual elements from both infringement and validity analysis. The AIPLA, on the other hand, backs into the notion that design patents protect the overall appearance of a design by citing other, less weighty precedent, while calling attention to the tension raised between Egyptian Goddess (analyzed here) and the panel decision in this case.

However, Apple and the AIPLA take different approaches to further augment their positions. Apple devotes the bulk of its analysis to an assault on what it terms a false “ornamental/functional” dichotomy. In essence, Apple attempts to establish that functional features are also ornamental because the functional features contribute to the overall appearance of an article. Apple also asserts that functional features have been considered to also be ornamental by the CAFC in previous cases, such as Elmer v. ICC Fabricating, Inc. Therefore, Apple argues, they should not be excluded from protection during claim construction.

The AIPLA takes a more conventional approach first by asserting that the panel decision in this case ignores CAFC precedent (such as Elmer) and second by arguing that the panel decision in this case is simply bad policy. In particular, the AIPLA argues that factoring out functional elements during claim construction unwisely weakens design patent validity and enforceability by effectively vitiating the presumption of validity and by reducing the basis of enforcement to only a subset of the elements claimed.

The amici also differ in the part that functionality should play in design patent jurisprudence. Apple espouses the use of functionality to challenge the validity of design patents and proposes a rule that a design patent is valid unless “there are no alternative designs that perform substantially the same general function as the overall claimed design.” The AIPLA solution, in contrast, would allow the fact-finder to “identify and discount the functional nature and purpose of elements when comparing the patented and accused designs.”

Filtering functionality out of the basis for enforcement is certainly not new to intellectual property law (see, e.g. the Abstraction-Filtration-Comparison test used to find substantial similarity of software under copyright law). But, as well articulated in the briefs discussed above, such an approach is awkward to apply when dealing with designs of articles that inherently embody functional characteristics. Hopefully, the CAFC will take the opportunity presented by this petition to provide precise and coherent guidance as to the role functionality should play within design patent law. The CAFC has yet to address the petition for rehearing of the panel decision en banc.

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