(CN) – A federal appeals court upheld Apple’s patent victory against Samsung on iPhone design elements, but overturned the controversial ruling on trade dress, ruling that a “rectangular product with rounded corners” cannot be protected.
“Apple focuses on the ‘beauty’ of its design, even though Apple pursued both ‘beauty’ and functionality in the design of the iPhone,” Judge Sharon Prost said, writing for the Federal Circuit’s three-judge panel. “We therefore reverse the district court’s denial of Samsung’s motion for judgment as a matter of law that the unregistered trade dress is functional and therefore not protectable.”
Last year, U.S. District Judge Lucy Koh ruled against Samsung in its massive patent face-off with Apple over various smartphone-related patents. Koh ordered Samsung to pay Apple $119 million, but ordered Apple to pay Samsung only a negligible $158,000.
The orders effectively ended Koh’s nearly four-year involvement in the tech giants’ fracas, which began in 2011 when Apple first claimed that Samsung “slavishly copied” its iPhone and iPad technology to produce the Galaxy line of smartphones and tablets.
That case ended with a $1 billion jury award for Apple, which Koh tossed over goofs by the jury. A retrial gave Apple just $290 million.
Samsung immediately appealed both cases to the Federal Circuit, which gave Samsung only partial relief from the adverse judgments Monday.
In particular, the federal appeals court ruled that Apple’s iPhone trade dress is not protectable.
Apple claimed that the trade dresses of the iPhone include “a rectangular product with four evenly rounded corners,” “a flat clear surface coving the front of the product,” “a display screen under the clear surface,” and “substantial black borders above and below the display screen.”
But a trade dress is only protectable if it is non-functional, and “serves no purpose other than identification” of the product’s maker, the court said.
“Apple emphasizes a single aspect of its design, beauty, to imply the lack of other advantages,” Prost said. “But the evidence showed the iPhone’s design pursued more than just beauty.”
Samsung cited extensive evidence of the functionality of Apple’s design, including that the rounded corners of the iPhone improve “pocketability” while its rectangular shape maximizes display area, according to the judgment.
“Apple conceded during oral argument that its trade dress ‘improved the quality [of the iPhone] in some respects.’ It is thus clear that the unregistered trade dress has a utilitarian advantage,” Prost said.
The panel also overturned the jury’s finding that Samsung infringed on Apple’s registered trademark covering design details in each of the sixteen icons on the iPhone’s home screen.
“There is no dispute that the claimed details such as ‘the seventh icon depicts a map with yellow and orange roads, a pin with a red head, and a red-and-blue road sign with the numeral ‘280’ in white’ are functional,” the court said.
Rather, the icons are specifically designed to be “visual shorthand” indicating the functionality of that icon.
However, the court upheld the ruling for Apple on the bulk of its claims concerning design patents, including patents for the design of the front and back face of the iPhone, and the organization of the phone’s home page.
“Samsung contends that the district court erred in failing to exclude the functional aspects of the design patents either in the claim construction or elsewhere in the infringement jury instructions. Specifically, Samsung contends that the district court should have excluded elements that are ”dictated by their functional purpose,’ or cover the ‘structural . . . aspects of the article,” Prost said, adding “Our case law does not support Samsung’s position.”
Samsung also sought relief from the scope of the damages judgment, which ordered the company to pay total profit that it made from the infringement to Apple.
Twenty-seven law professors filed an amicus brief on Samsung’s behalf, arguing that an award of entire profits for design patent infringement “makes no sense in the modern world,” according to the judgment.
But the court said that this concern was a matter of policy best directed to Congress, and it is bound by the test of the statute no matter the policy arguments against it.
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