A Case Study in Patent Litigation: Apple v. Samsung Electronics, et. al

1. A Case Study in Patent Litigation:Apple v. Samsung Electronics, et. al • Why study the Apple litigation? • Syllabus • Fill in the gaps • The docket sheet • Filing confidential documents • Case chronology • The pleadings • Design patent and trade dress tutorial

2. Why Study the Apple Litigation? • Biggest patent case in history • Examine clash of business and legal titans • Learn design patent and trade dress basics • Use our skills • See that even the best lawyers make mistakes • Observe lawyer as storyteller • Study developing law on permanent injunctions • Master law on damages • Examine Samsung’s strategic use of reexaminations

3. Flow of the Course Follows Syllabus • Syllabus tracks litigation • Syllabus uses hyperlinks to documents • Access Dropbox for more pleadings

4. Gaps to Fill • When various IP asserted • Governs when damages begin to accrue • 4/15/11 Complaint • ‘381, ‘915, D’677, ‘983 • 6/16/11 Amended Complaint • ‘163, D’087, D’305, D’889 • Samsung’s claims • Patent infringement • What happened to Apple’s other claims? • Voluntary dismissal

5. Reading a Docket Sheet • Access through Bloomberg Law • Contains links to filed documents • Document #’s • What’s not on the docket • Difficult to follow as a result of requirements for filing documents under seal

6. Filing Confidential Documents • Governed by local rules • Start with Protective Order • File administrative motion to file under seal (Civ. Local Rule 79-5) • As modified by General Order 62 • Koh’s Standing Order, Rule 2, changes procedure • Now, when file administrative motion to file under seal, must also file proposed redacted version of documents they want to seal

7. Case Chronology

8. Pleadings • Complaint • Amended Complaint • Samsung’s Answer and Counterclaims • Apple’s Amended Answer and Counterclaims

9. Amended Complaint • Apple’s IP rights • Utility patents • Design patents • Trade dress • Federal trade dress rights • Trade dress applications • Federal trademark rights

10. Amended Complaint • Accused products • Identifies 28 devices (¶ 92) • Design patent infringement (¶ 94) • Trade dress infringement (¶ 95) • Federal trademark infringement (¶¶ 104-05) • In these paragraphs, no attempt to identify which of Apple’s IP rights each Samsung device violated

11. Amended Complaint • Apple’s claims • Trade dress infringement under 43(a) (¶¶ 110-22) • Federally registered trade dress infringement (¶¶ 123-37) • Trade dress dilution under 43(c) (¶¶ 150-60) • Federal trademark infringement (¶¶ 104-09, 138-49) • Common law trademark infringement (¶¶ 160-71) • State unfair business practices (¶¶ 172-82) • Unjust enrichment (¶¶ 183-84) • Patent infringement • Utility patents (¶¶ 185-232) • Design patents (¶¶ 233-74)

12. Amended Complaint • Observations • Apple’s Amended Complaint tells a story • Pluses and minuses • No specificity in allegations ofutility patent infringement • What about Iqbal and Twombley? • No specificity in other claims except 43(a) claims • Those only by example • Examples, however, based on thorough trade dress analysis • Emphasis on similarity of appearance, not similarity of operation

13. Samsung’s Answer and Counterclaims • Observations • No identification of defenses • Overuse of affirmative defenses • Affirmative defense = confession and avoidance • Most are defenses • Allege infringement of 12 Samsung patents • Counterclaims for declarations of non-infringement and invalidity of Apple patents and registrations • Also seek declarations that mirror all of Apple’s other claims

14. Apple’s Amended Answer and Counterclaims in Reply • Defenses • Patent exhaustion • Unenforceability because of standard setting misconduct • Entitled to FRAND license • Counterclaims • DJ for non-infringement and invalidity • Breach of contract • DJ that Apple license or right to license • Anti-trust violation

15. Design Patent Basics • Claim interpretation first • Design patent has single claim, but may include multiple embodiments • Scope of claim encompasses design’s visual appearance as a whole • Everything depicted with solid lines contributes to the overall appearance of the design • Dotted lines • Diagonal lines • Cross-hatching • Infringement • Validity

16. Infringement • If the overall appearance of the accused design is substantially the same as overall appearance of the patented design claimed • Substantially the same: if in the eye of the ordinary observer the resemblance between the two designs is such as to deceive such an observer, inducing her to purchase one supposing it to be the other • Actual confusion not required • Whether two designs are substantially the same benefits from comparing them with the prior art

17. Infringement Cont’d • Guidelines as to role of prior art in infringement analysis • When claimed design is close to prior art designs, small differences between accused and claimed designs may be important in analyzing whether the overall appearances of the accused and claimed designs are substantially the same • If accused design includes feature of claimed design that departs conspicuously from prior art, that feature may be important . . . • If the accused design is closer to the claimed design than it is to the closest prior art, that comparison may be important . . .

18. Infringement Cont’d • Comparisons • Must compare accused products to asserted design patents • If asserted product is substantially the same as an asserted design patent, and it has no significant distinctions with the design, it’s proper to compare the product directly to the accused products

19. Invalidity • Anticipation • If prior art is substantially similar in overall appearance • Obviousness • Addressed in Apple’s appeal from denial of preliminary injunction on D’087, D’677, and D’889 • Koh found D’889 obvious based on Fidler as modified by HP TC1000 • Fed. Cir. held Fidler did not constitute the required “primary” reference: “a single reference . . . the design characteristics of which are basically the same as the claimed design” • It further held that TC 1000 did not constitute a “secondary” reference, which must be “so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other” • Lack of ornamentality • Is overall appearance of patented design dictated by functionality?

20. Forms of Relief • Permanent injunction • Monetary relief • Disgorgement without apportionment, or compensatory damages • Lost profits • Reasonable royalty • Why might Apple have decided to bring so many design patent claims? • Why do you think Apple chose to sue in district court rather than in the ITC?

21. You Be the Jury • D’677 • What’s claimed? • Does the Samsung design create the same overall visual impression? • Vibrant • I9000 • Edge • Infuse 4G • D’087 • D’305

22. You Be the Jury Cont’d • D’889 • History • What’s claimed? • What’s the proper comparison? • Does the iPad fall within the scope of the D’889? • Does the Samsung design create the same overall visual impression as the claimed design? • Tab 10.1 LTE • Does the jury verdict of no infringement end the saga of whether Samsung tablets infringe?

23. Trade Dress Basics • Trade dress defined • Trade dress protectable if • Federally registered trade dress • Unregistered trade dress • Dilution • Infringement • Damages • You be the jury

24. Trade Dress Defined • Non-functional design of a product that identifies its source and distinguishes it from products of others • Trade dress is product’s overall appearance • Trade dress concerns the overall visual impression created in the consumer’s mind when viewing the non-functional aspects of the product

25. Trade Dress Protectable if Two Requirements Met: • It has acquired distinctiveness through secondary meaning • Trade dress acquires secondary meaning when its primary significance in the minds of prospective consumers is the identification of the product with a single source • Factors relevant to secondary meaning • Consumer perception, advertising, demonstrated success, extent of use, exclusivity, copying, actual confusion • Corollary • Pltf’s trade dress must have acquired secondary meaning before defendant first sold its accused product

26. Trade Dress Protectable if Two Requirements Met: Cont’d • It is non-functional • Trade dress is non-functional if, taken as a whole, the trade dress elements are not essential to the product’s use or purpose or do not affect the cost or quality of the product • Design as a whole is functional if the whole collection of elements making up the design are essential to the product’s use or purpose • Whether a product design is functional may be affected by the following factors • Design’s utilitarian advantage • Availability of alternate designs • Advertising utilitarian advantages of design • Design’s method of manufacture

27. Federally Registered Trade Dress • Presumed to be both distinctive and non-functional • Defendant has burden of proving trade dress either functional or not distinctive • Example: ‘983 federal registration

28. Unregistered Trade Dress • No presumption of distinctiveness or non-functionality • Plaintiff has burden of proving trade dress is both distinctive and non-functional • Examples: • iPhone 3G • iPhone/iPhone 3G/iPhone 4 • iPad/iPad 2

29. Trade Dress Dilution • Protectability of trade dress a predicate to showing dilution • Dilution refers to lessening of capacity of a famous trade dress to identify and distinguish its products from others • Dilution by blurring impairs distinctiveness of the trade dress • Factors relevant to dilution by blurring • Degree of similarity • Degree of acquired distinctiveness • Extent of exclusivity • Degree of recognition of pltf’s trade dress • Intent of defendant • Any actual association between defendant’s accused products and plaintiff’s trade dress

30. Trade Dress Dilution Cont’d • Claim requires proof • That asserted trade dress is famous based on factors: • Advertising and publicity • Sales of goods using trade dress • Extent trade dress actually recognized • Whether federal registration • That defendant began selling its accused products after the asserted trade dress became famous • That the accused products are likely to cause dilution of asserted trade dress

31. Trade Dress Infringement • Two elements • Is the trade dress protectable? • Is defendant’s use of plaintiff’s trade dress likely to cause confusion as to source in the mind of a reasonably prudent consumer? • Likelihood of confusion factors • Consumer recognition • Defendant’s use on same/related goods • Similarity of overall impression • Actual confusion • Defendant’s intent • Similarity of marketing/advertising channels • Purchaser’s degree of care

32. Trade Dress Damages • For unregistered trade dress, no notice required for damages to accrue • For registered trade dress, actual or constructive notice required to start the clock • Plaintiff can recover defendant’s profits, plus compensatory damages (lost profits or reasonable royalty)

33. You Be the Jury • Trade dress dilution • iPhone 3G • What’s the trade dress? • Infringement? • Vibrant • I9000 • Edge • Infuse 4G • Combination iPhone • . . . • Federal registration • . . . • iPad/iPad 2 • What’s the trade dress? • Infringement? • Tab 10.1 LTE

34. Pulling It All Together • Rank trade dress infringement/dilution, utility patent infringement, and design patent infringement in terms of potential damages award • If you were Apple, which claim would you expect to be easier to prove – trade dress infringement or dilution? • Which, if any, of Apple’s claims require proof of actual confusion? • Compare the elements of proof for design patent infringement and trade dress infringement/dilution – which is harder? • What would you expect to be the most difficult element of proof for Apple’s design patent infringement claims?