If you haven't had time to listen to the Federal Circuit arguments in the Apple v. Samsung case last week, don't worry. The Ordinary Observer has you covered. We will be examining the arguments in two parts. Part I will take a look at the functionality discussion that dominated the hearing. Part II will examine the arguments relating to apportionment. Samsung began its presentation last Thursday by focusing on functionality, in the context of design patent infringement, and whether the district court was justified in providing the following jury instruction:
If you find by a preponderance of the evidence that the overall appearance of an accused Samsung design is substantially the same as the overall appearance of the claimed Apple design patent, and that the accused design was made, used, sold, offered for sale, or imported within the United States, you must find that the accused design infringed the claimed design.
Samsung complains that Judge Koh failed to "filter out" the allegedly functional elements of Apple's design patents for the jury and failed to offer a jury instruction directing the jury's attention to the "ornamental" aspects of the claim as opposed to the "overall appearance of the claimed Apple design patent":
Kathleen Sullivan (counsel for Samsung): ... As given, the infringement instruction ... instructs the jury to compare the overall appearance of the Samsung and Apple Designs. Your Honor, crucially, what's missing there is the word "ornamental." You're right that earlier in the invalidity instructions she refers to the term "ornamental." But the invalidity instructions can't cure the problem with the infringement innstruction. ... Your honor, we're not saying that there should have been exact, magic words. We gave her multiple choices, we said "please define the difference between functional and ornamental." We said "please district court, take out these few things that Apple has admitted are functional..." As Egyptian Goddess says, the district court has discretion how to distinguish functional from ornamental, but it does not have discretion whether to distinguish functional from ornamental...
The Court: What do we do about about the case law that says that your'e supposed to look at the overall design and you're not supposed to just take ornamental features in isolation?
Sullivan: Your Honor, what you do is say "overall ornamental appearance." The crucial problem here is that the jury was not instructed to, nor was there any claim construction limiting it to comparing the overall ornamental appearance.
The problem with Samsung's argument is that it urges the court to turn the question of functionality, for purposes of infringement (i.e. claim construction), over to the jury. Obviously, that approach would conflict with the Supreme Court's Markman decision, holding that claim construction is exclusively the province of the court and cannot be handed over to the jury.
As a reminder, functionality can come up in design patent litigation in two contexts: invalidity and infringement. In the invalidity context, the question for the jury is whether the design is functional as opposed to ornamental. If the design is dictated solely by function, as opposed to ornamentation, it is invalid for failing to meet the ornamental requirement of § 171. In the infringement context, courts sometimes seek to "filter out" functional aspects of the claim as a matter of claim construction. See, e.g., Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010). While some have questioned the wisdom of this approach as improperly dissecting the claim, it remains a contentious issue in design patent law.
Samsung argues that Judge Koh's instructions were improper because they failed to instruct the jury to consider only the ornamental aspects of the claim and failed to "define the difference between functional and ornamental" in the infringement context. But such an instruction would have been tantamount to charging the jury with claim construction - here, selecting which design elements were functional and filtering them out of the claim. In the utility patent context this would be like reading the Phillips case to a jury and then instructing them to evaluate infringement "applying the proper claim scope." That would be reversible error.
If there was any error in the jury charge, it would have been in Judge Koh's decision not to construe the functional limitations of the claim, at all. To the extent functionality was really at issue in the infringement context, it was Judge Koh's job to construe the patent, not he jury's.
The Federal Circuit has given conflicting guidance on a trial court's "discretion" in construing "functional and non-functional elements." In Egyptian Goddess, a case we have addressed several times, the court stated that "where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent." Yet, in the next paragraph, the court also said "[w]e therefore leave the question of verbal characterization of the claimed designs to the discretion of trial judges..." It is curious that Judge Koh would send the question of design patent functionality (in the validity context) to the jury but simultaneously decline to construe any functional elements of the claim. If there was a question of material fact as to whether any of the design patents were functional, as a whole, isn't there necessarily a question of fact as to whether individual design elements are functional?
The answer may come down to the extent of Judge Koh's discretion in construing the design patent (or not). Trial judges may have discretion to determine whether the functional limitations, if present, would improperly impact the jury's consideration of the overall ornamental design. For example, with utility patents, judges are not obliged to construe every conceivably disputed claim term and always have some level of discretion. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F. 3d 1554 (Fed. Cir. 1997) ("Claim construction is ... to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy."). Judge Koh likely used her discretion to decline to spell out what was ornamental vs. what was functional for the jury if she believed that the allegedly functional elements of the design would not meaningfully impact the jury's determination of infringement.
The Federal Circuit has an opportunity to clarify a district court's discretion in construing a design patent to "filter out" functional limitations. As with any claim construction issue, district courts ought to be allowed some independence in determining when design patent claim construction is "necessary" or would otherwise be more helpful than harmful for the trier of fact. This should include the discretion to decline to construe the design at all, even when functionality is at issue in the validity context.
If there was any error in the jury charge, it would have been in Judge Koh's decision not to construe the functional limitations of the claim, at all. To the extent functionality was really at issue in the infringement context, it was Judge Koh's job to construe the patent, not he jury's.
The Federal Circuit has given conflicting guidance on a trial court's "discretion" in construing "functional and non-functional elements." In Egyptian Goddess, a case we have addressed several times, the court stated that "where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent." Yet, in the next paragraph, the court also said "[w]e therefore leave the question of verbal characterization of the claimed designs to the discretion of trial judges..." It is curious that Judge Koh would send the question of design patent functionality (in the validity context) to the jury but simultaneously decline to construe any functional elements of the claim. If there was a question of material fact as to whether any of the design patents were functional, as a whole, isn't there necessarily a question of fact as to whether individual design elements are functional?
The answer may come down to the extent of Judge Koh's discretion in construing the design patent (or not). Trial judges may have discretion to determine whether the functional limitations, if present, would improperly impact the jury's consideration of the overall ornamental design. For example, with utility patents, judges are not obliged to construe every conceivably disputed claim term and always have some level of discretion. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F. 3d 1554 (Fed. Cir. 1997) ("Claim construction is ... to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy."). Judge Koh likely used her discretion to decline to spell out what was ornamental vs. what was functional for the jury if she believed that the allegedly functional elements of the design would not meaningfully impact the jury's determination of infringement.
The Federal Circuit has an opportunity to clarify a district court's discretion in construing a design patent to "filter out" functional limitations. As with any claim construction issue, district courts ought to be allowed some independence in determining when design patent claim construction is "necessary" or would otherwise be more helpful than harmful for the trier of fact. This should include the discretion to decline to construe the design at all, even when functionality is at issue in the validity context.
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