Sarah Burstein on ‘Design’ & Design Patents

sarah_edited.jpgThis fall, the U.S. Supreme Court will hear oral arguments in Samsung v. Apple. The Court hasn’t considered a substantive issue of design patent law for over 100 years, so naturally the case has attracted a great deal of interest from the design community. But the “design patent case of the century” isn’t actually about “design”—at least, not in the sense that the word “design” is used by design professionals.

Today, the word “design” is currently used by design professionals to describe a wide range of activities and things. The subject matter of design patents is quite different.

The U.S. design patent regime was created in 1842 to encourage certain types of design innovations by giving the designers of certain visual designs a short period of exclusive use. According to the current Patent Act, anyone who invents “any new, original and ornamental design for an article of manufacture” can get a design patent. The phrase “design for an article of manufacture” has been long been interpreted to cover three different types of protectable “designs”: (1) designs for the “configuration” of an article of manufacture; (2) designs for “surface ornamentation” applied to an article of manufacture; and (3) designs consisting of both.

Obviously, these aren’t the only types of “designs.” So many types of design innovation fall outside of the scope of design patents. That doesn’t mean the other designers are out of luck; they just have to look to different intellectual property (IP) regimes. For example, many aspects of service design and the functional aspects of user interface design can be protected by utility patents. Utility patents (often referred to as just “patents”) protect “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Designers can—and frequently do—get utility patents for their useful innovations. Other regimes, such as copyright and trademark, can also be used to protect various aspects of design.

The subject matter of design patents differs from the design world’s conception of “design” in another important way. As a group of design educators told the appellate court, “[m]odern approaches to design train students to create successful articles that are not simply a hodgepodge of discrete elements, but a cohesive and integrated whole that connects all of the product’s parts in a meaningful way.” But a design patent applicant does not have to claim the “integrated whole.” The applicant can claim, as a separate “design,” any portion (or portions) of that whole. There is no requirement that a separately-claimed portion be an important, salient, independent, or in any way material part of the whole design.

This type of partial claiming is used to broaden the scope of protection. Under the current Egyptian Goddess test, design patent infringement occurs when an ordinary observer would think the accused design looks “substantially the same” as the claimed design. Design patents are claimed using drawings, so this requires the jury to compare the patent drawings to the accused product. Notably, copying plays no role in this analysis; copying is neither necessary nor sufficient to support a finding of design patent infringement.

When a design patent claims only part of a design, the jury must compare the drawings to the corresponding part of the accused product—not the accused product as a whole. So, for example, if a design patent claims a design for the sole of a shoe, the jury must compare the claimed sole design to the sole of the accused shoe. Even if the accused shoe looks very different as a whole, it doesn’t matter. The jury must find infringement if the soles match.

Also, a single product can be covered by multiple design patents. For example, Apple obtained a design patent that covers the entire configuration of the original iPhone. Apple also obtained numerous design patents for various portions of that configuration as well as for various portions of the iPhone user interface.

At trial, Apple accused a number of Samsung phones of infringing one or more of three different design patents. The first asserted design patent, U.S. Patent No. D618,677 (“the D’677 patent”), claims a flat, black front face of the iPhone, excluding the home button. Here is a representative view:


The second, U.S. Patent No. D593,087 (“the D’087 patent”), claims the front, flat portion of the iPhone, including the bezel and the home button:


The third, U.S. Patent No. D604,305 (“the D’305 patent”), claims this design for one view of the user interface:


In the Supreme Court, Samsung is not arguing that these design patents are invalid or questioning the jury’s findings of infringement. Instead, the issue before the Court is a very narrow one—specifically, how to interpret a provision of the Patent Act that provides for a special “total profits” remedy for certain acts of design patent infringement.

Apple is arguing that the asserted design patents, when considered together, cover “the iconic look and feel of Apple’s iPhone.” Therefore, according to Apple, it was fair for the jury to award the “total profits” from all of the infringing phones.

Here’s the problem. Apple accused a number of Samsung phones of infringing one or more of these three design patents—but it didn’t accuse all of them of infringing all three design patents. And the jury didn’t find that all of the infringing phones infringed all three design patents. So this total “look and feel” argument doesn’t match the facts of the case.

Even when considered in the aggregate, these three patents don’t cover a lot of aspects that contribute to “the iconic look . . . of Apple’s iPhone,” such as the phone’s slim profile. Additionally, they don’t cover (because design patents can’t cover) many other elements of the overall design of the iPhone, such as the slide-to-unlock user interface. So, regardless of how this case comes out, it will say very little about the value of “design.” Instead, the Court will merely decide how much value should be attributed to the things that get claimed in design patents.

❔ Whois

Sarah Burstein is an Associate Professor of Law at the University of Oklahoma College of Law. Before going to law school, she got a degree in Art & Design. Her research focuses on design law, with a particular emphasis on U.S. design patents.


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