Of Ransoms and Rounded Rectangles, part 1

One of the most difficult disputes playing out right now is the Samsung-Apple showdown.  It's interesting not so much for what it is as for the absolute entrenchment of people discussing it. While the merits are certainly worth looking at in this series, what I'm going to start with are some conceptual errors demonstrated by online advocates of both sides.

Apple tried to patent "rounded rectangles", which were invented thousands of years ago, so it's not valid and they've got nothing.

False.  The '677 patent most people reference in that dispute makes no such claim.  The patent in question is a design patent, which is an industrial design right.  Although it's called a patent, it has virtually nothing to do with utility patents.  In fact, in the majority of countries around the world, it's not even called a patent.  However, in the United States, design rights don't exist as an integrated concept, but instead are shoehorned into existing frameworks (the concepts of moral rights, droit d'auteur, and personal use--what some mistakenly lump into the US "Fair Use" exemption--are similar in that regard).    Protections for industrial designs therefore are sprinkled throughout our IP framework: copyrights protect the work of the design process and the marketing of the design, trademarks protect the branding (e.g., the Apple logo and iPhone name), trade dress protects the appearance of the product and packaging, and utility patents protect the functional inventions needed to make the design possible (e.g.,  welding or cutting technologies, integrating antennae into the body).


So what's a design patent?
Utility patents protect useful inventions that are of a patentable subject matter, novel, and non-obvious.  (35 USC 101-103.) They do not, however, protect the way an invention looks.  Conversely, a design patent's subject matter is the design applied to or embodied in an article of manufacture, but not the article itself. (Ex parte Cady, 1916 C.D. 62; 35 USC 171).  It can be difficult to separate design from function, particularly because good design is functional.  Even minimalist design, though, involves a series of deliberate choices. Ultimately, “[i]n determining whether a design is primarily functional or primarily ornamental the claimed design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article, in determining whether the claimed design is dictated by the utilitarian purpose of the article.” (LA Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123.)

How is that different from trade dress?
Both design patents and trade dress refer to the appearance and design of a product.  Both are restricted to the non-functional elements of the design.  Both take holistic approaches on the overall design and do not require literal infringement.

However, trade dress protects confusion as to the source of goods. (15 USC 1125(a).)   Trade dress protection requires that you establish inherent distinctiveness (product design is never inherently distinctive per Wal-mart Stores v. Samara Bros., 529 U.S. 205 (2000)) or secondary meaning (that the totality of design elements reflects a product that the public identifies with a specific source) and that an infringing product creates a "substantial likelihood of confusion".  Trade dress protection is also indefinite, whereas design patents expire after 14 years.  Trade dress protection is also automatic under the law; you can optionally register your design with the USPTO for a small fee and gain some additional rights, e.g., access to federal courts, eligibility for international filing, the ability to block imported infringing goods.  Design patents must be applied for and the process is slower and more expensive (though not as slow and expensive as a utility patent).

There are also differences in the calculation of damages between trade dress and design patents (check out sections 34-35 of the Lanham Act and 35 USC 283-289 if you're a remedies nerd).

What makes a design patent particularly valuable is that there is no requirement that the infringing product create any confusion as to the source of the product, making it a much more effective legal mechanism.  Once you establish validity and infringement, the only question is how much you'll win.  With trade dress, there's a third step, which means that a product can be "substantially similar" to your trade dress, but that if the public was unlikely to be deceived about who made it, you lose your case.  In effect, that raises the standards for substantial similarity.


I looked at Apple's patent. It's just a picture of a slate with rounded corners.
Unlike utility patents, which are usually lengthy documents with multiple claims and extremely detailed (if humanly indecipherable) specifications, design patents always have just one claim: the product.  (37 CFR 1.153.) Because a design patent can't be an abstract design (that would be a copyrighted work) and must be the embodiment of an actual thing, it's the thing itself that provides all the needed specifications. Every ornamental aspect of the product that isn't a "chance result" of assembling the product is protected, but it is protected in its totality.  No single attribute can establish infringement.  It's not enough for Apple to say, "you can't do rounded rectangles! That's our thing!"

An infringing product is one that is "substantially similar" to the totality of those elements.  That's why it's critical to explore all facets of the design--not just that the corners are rounded, but the radius of the curve, the profile of the device, the colors and materials used, the placement of controls, the proportions of the device, and all other deliberate design decisions.  It is not a univariate analysis.  It's not the silver and black color scheme, or the rounded corners, or the proportions.  It's all of those things.  Further, unlike utility patents, where infringement is a literal determination, design patents are infringed with "substantial similarity".  In other words, shuffling a few things around does not cure absolve infringement.  At the end of the day, if you make something that looks suspiciously like another existing product, and the market has a wide selection of other products that don't look that way, you're in hot water.  When the new design is a significant departure from the majority of your own previous designs, doubly so.