Oral argument in the Apple v. Samsung appeal was held in the United States Courts of Appeals for the Federal Circuit on December 4, 2014.
Kathleen Sullivan argued for the Appellant Samsung. She spent about 1/3 of her time on design patent functionality, another 1/3 on design patent damages and the rest of her time on trade dress and other issues.
Her argument concerning functionality was on the infringement side, alleging that the jury was not properly instructed to “factor out” the functional features of the design patents during Markman claim construction, citing the Federal Circuit’s Richardson case. While conceding that the jury was instructed to compare the overall appearance of the claimed design to the accused designs, she argued that they were not instructed to compare overall “ornamental” appearances. Also, she argued that the court was under “an obligation” to factor out functional features from ornamental features before having the jury determine infringement.
The court queried her about the proper test for determining whether a feature was functional in order to factor it out, i.e., was it the same functionality test as that for validity – whether the design is dictated by function. Ms. Sullivan responded that no matter what the test was, you need to filter out functional features and that was not done in this case.
Regarding damages, she argued that the language in 35 U.S.C. 289, i.e., that the patentee shall be awarded “to the extent of [the infringer’s] total profit” merely puts a ceiling on what profits can be awarded, rather than mandating that all of the infringer’s profits be awarded. She also argued that it was “absurd” for a design patent owner of a cup holder for a car to be awarded the infringer’s total profits on the sale of the car. One judge asked “even if it’s absurd as you suggest, who gets to change it?”, implying that it was up to Congress to change the statute. Ms. Sullivan then argued that causation needs to be tied into 289, so that no profits are awarded unless the design patent owner can prove that it was the patented design that led to the profits.
Finally, she also argued that in cases where there were multiple design patents owned by different parties that covered only small features of an article of manufacture, it is “absurd” that each be awarded total profits on the entire article of manufacture.
Bill Lee argued for Apple, and regarding Ms. Sullivan’s hypothetical agreed that only the profits on the cup holder itself should be awarded analogizing it to the Young case where the court had said, in a case involving a design patent on a refrigerator latch, that no one seriously suggested that profits should be awarded on the entire refrigerator. In response to the multiple design patent issue, he said that it cannot be the law that the more IP there is, the worse off the design patents are.
In reply to Ms. Sullivan’s argument that a court was under an obligation to factor out functional features, he correctly pointed out that the Court in Egyptian Goddess said specifically that under Markman claim construction for a design patent there is no obligation to do anything beyond referring to the patent drawings as a representation of the scope of claimed design- distinguishing functional and ornamental features was one thing a court could do, but was not obligated to do.
In her 4-minute rebuttal, Ms. Sullivan among other things argued that you shouldn’t overprotect a design by not telling the jury to factor out functional features.
The audio version of the argument is available here.