CAFC on “Apple vs. Samsung”: the on-going battle in the ICT market
Recently, the Court of Appeal of the Federal Circuit of the U.S., issued its first opinion on the long standing battle two giants and competitors on the information and communication Technology market, Apple and Samsung, are fighting in the field of patent designs.
Apple claims that Samsung has infringed several of its patents and design patents in certain components of the Galaxy s 4G and Infuse 4G smartphones, and Galaxy Tab 10.1 devices.
The District Court denied Apple preliminary injunctive relief on the basis that Apple failed to provide sufficient evidence regarding the “irreparable harm” that the alleged infringement had caused it. On appeal, the Federal Circuit upheld and supported the ruling asserting that “likelihood of irreparable harm cannot be shown if sales would be lost regardless of the infringing conduct”. The rationale followed by the Federal Circuit to reach this conclusion was that the patented feature has to be the driving motive for the demand of the product incorporating it. If the feature in question does not motivate the product sales, it cannot be sustained that the alleged infringement causes an “irreparable harm”.
Regarding Samsung´s alleged infringement of Apple´s patent design No. 504.889, in Samsung´s Galaxy Tab 10.1, the Federal Circuit did not share the District Court´s view that the “Fidler Tablet”, a 1994 tablet design, which in general looked pretty much like Apple´s newly patented design, was the correct starting point, despite its external appearance. In this regard, the Federal Circuit held that a “side-by-side comparison” between the patent designs at hand, that is, patent design No. 504.889 and the 1994 “Fidler Tablet” showed that there were “substantial differences” as to conclude that the confronted patent designs were not “basically the same” and therefore, patent design No. 504.889 was not likely obvious, as the district court had pointed out previously. That rationale, plus the fact the district court had not made any findings regarding the preliminary injunction factors involved, that is, the harm caused to Apple, and the public interest, caused Federal Circuit to remand this key point of the controversy for further proceedings.
Having said what precedes, in Salvador Ferrandis & Partners we believe that the Federal Court got it wrong when assessing the extent of “basically the same” design characteristics of the confronted patent designs. Making such a strict reading of the “basically the same appearance” requirement will make it harder for Courts to analyze the state of the art.
Also, and as the general opinion and practice have pointed out in several occasions, the reading of the “basically the same” requirement does not mean 100% likelihood in appearance between the confronted patent designs, but rather, a 75-80% of likelihood. Therefore, the 1994 Fidler Tablet would have perfectly qualified as a good primary reference or starting point, which does not necessarily mean that Apple´s design patent No. 504.889 was obvious. Such an assertion would derive from other facts.
And regarding the “design dilution” theory of irreparable harm openly considered in the present case by the Federal Circuit, it must be mentioned it can pose a problem, as it is a new topic, not yet clearly developed by Courts.