Apple v. Samsung – PART I - Judge Koh Weighs in on Definiteness in Design Patent Cases

This week provided two new design patent decisions in the Apple v. Samsung saga and a notice of review the ITC decision made in October of 2012.  The two decisions, by Judge Lucy Koh (S.D.C.A.),touch on important areas of design patent law, so we will be presenting our analysis in a two-part series. Today’s post discusses Judge Koh’s decision on Samsung’s Motion for invalidity of Apple’s design patents based on indefiniteness.

On Tuesday, Judge Koh rendered her decision on Samsung’s Motion regarding its non-jury claims in the ongoing patent war between industry giants Apple and Samsung.  In her decision, Judge Koh offers guidance on how courts might address issues of definiteness in design cases and how to distinguish between unique drafting conventions and truly indefinite designs.  At issue were all four of the design patents that Samsung was found to be infringing in last year’s trial – Design Patent Nos. 618,677 (“the ’677 Patent”); No. 593,087 (“the ’087 Patent”); No. 604,305 (“the ’305 Patent”); and No. 504,889 (“the ’889 Patent”).

With regard to the ‘677 Patent, Samsung argued that the drawings do not make clear whether the lozenge-shaped speaker slot and rectangular shape are beneath the surface, a break in the surface, or resting on top of the surface:

With regard to the ‘087 Patent, Samsung argued that the lack of shading on the drawings make it impossible to see that there is actually a display area below a transparent surface.

With regard to the ‘889 Patent, Samsung argued, among other things, that the claim was indefinite because the patent depicted the design in multiple orientations, making it impossible to know which way the design is supposed to be oriented, or where the features actually appear:

Finally, with regard to the ‘305 Patent, Samsung argued that the claim was indefinite because the figures showed both a color and black and white design, making it impossible to tell whether color is necessary for the claim:

Judge Koh began her analysis with a discussion of indefiniteness in design patent law, generally noting that “[t]here is little clear precedent on the question of how [the indefiniteness] standard is to be applied to design patents.”  Analyzing cases that have addressed the issue, the court determined that, as with utility patents, the analysis is related to claim construction and turns on “whether ‘a person of skill in the art’ would get ‘an overall understanding of the total substance of the designs.’” (citing Antonious v. Spalding & Evenflo Companies, Inc., 217 F.3d 849 (Fed. Cir. 1999) (unpublished); see also Seed Lighting Design Co., Ltd. v. Home Depot, No. 04-cv-2291, 2005 WL 1868152 (N.D. Cal., Aug. 3, 2005) (considering whether a person skilled in the art would understand the bounds of a design patent claim from inconsistent drawings); HR U.S. LLC v. Mizco Int'l, Inc., No. 07-cv-2394, 2009 WL 890550 (E.D.N.Y., Mar. 31, 2009) (design patent would be indefinite where “the overall appearance of the design is unclear”).  The court also stressed that, after Egyptian Goddess, the question depends on whether the design, as a whole, would be understood, not whether a particular feature is understood.  (emphasis added) (citing Egyptian Goddess, 543 F.3d at 665 (noting the risk that a verbal description will lead a jury to “plac[e] undue emphasis on particular features of the design and . . . focus on each individual described feature in the verbal description rather than on the design as a whole”)).  Judge Koh placed a heavy emphasis the Federal Circuit’s admonition to avoid a detailed verbal claim construction. 

Applying current indefiniteness rules, Judge Koh found that each of the Apple’s design patents were definite.  Notably, each of the design patents-in-suit were construed by the district court and the Federal Circuit on appeal.  According to the court, that fact, alone, strongly favored a finding of definiteness. Were Apple's design patent indefinite, the Court presumably would have been unable to construe them.

Furthermore, according to the Court, each of the supposed defects complained of by Samsung were merely drafting conventions.  The court reasoned that “the Federal Circuit has explicitly recognized that it is appropriate for district courts to issue interpretations of drafting conventions, see Egyptian Goddess, 543 F.3d at 680.  If the use of drafting conventions had to be facially obvious for the patent to be valid, no such interpretations would ever be necessary. Further, the law is clear that the fact that claim construction is necessary does not render the patent indefinite.” (citing Exxon Research and Engineering Co. v. U.S., 265 F.3d 1371, 1375 (Fed. Cir. 2001) (patent is not indefinite even if claim construction is quite difficult).  

Although Judge Koh’s analysis appears to be correct in this instance, it is difficult to understand how indefiniteness in design patent cases could relate to claim construction if a verbal claim construction is disfavored in design patent cases.  In the author’s opinion, courts should worry less about harmonizing the indefiniteness doctrine between design patents and utility patents.  In some instances, it will be necessary to analyze specific features to determine whether a designer of ordinary skill would be able to determine if such features are claimed by the design or not.  This is particularly true where a specific and potentially distinguishing feature would likely have an important effect on the ordinary observer.  Despite the correctness of Judge Koh's decision, it seems like the indefiniteness doctrine in design patent cases post-Egyptian Goddess, could benefit from additional guidance from the Federal Circuit. 

Monday’s analysis will focus on Judge Koh’s willfulness determination.