The Patent Trial of The Century?

Apple v. Samsung: The Rise of Design IP Christopher V. Carani, Esq. Chicago USA Global IP & Innovation Summit Shanghai, China September 4, 2013 The Patent Trial of The Century? 2 1

Largest Patent Infringement Jury Verdict Verdict: $1,049,343,540.00 3 U.S. Intellectual Property 1. Patents Utility Patents Design Patents** 2. Trademarks Trade Dress 3. Copyrights 4 2

Utility Patent vs. Design Patents Utility Patent The way it WORKS. Design Patent The way it LOOKS. U.S. Patent No. 7,070,349 U.S. Patent No. D559,842 5 Set the way back machine January 7, 2007 3

2007 MacWorld Expo Moscone Convention Center San Francisco, California Today, Apple is going to reinvent the phone, and here it is. We are calling it iphone. Now, we re going to start with a revolutionary user interface.and boy, have we patented it. 7 Apple s Design Patent Offensive (Filings) 140 120 100 80 60 40 20 0 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 Apple's U.S. Design Patent Application Filings 8 4

Samsung s Meteoric Rise 9 Apple, Inc. v. Samsung Elecs. Co., 11-cv-1846 (N.D. Cal 2011) 10 5

Apple, Inc. v. Samsung Elecs. Co., 11-cv-1846 (N.D. Cal 2012) Apple Design Patents-in-Suit Device Designs GUI Design 11 Apple s Argument in a Nutshell (Smart Phones) 12 6

Road Map TODAY S DISCUSSION 1) U.S. Design Patent Enforcement 2) U.S. Design Patent Protection 3) GUI, Icons and Animations 13 Design Patent Infringement 14 7

Gorham v. White, 81 U.S. 511 (1871) 15 Gorham v. White, 81 U.S. 511 (1871) If in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. 8

Gorham v. White, 81 U.S. 511 (1871) 17 Gorham v. White, 81 U.S. 511 (1871) Hypothetical Prior Art NON - INFRINGEMENT 18 9

Gorham v. White, 81 U.S. 511 (1871) 19 Gorham v. White, 81 U.S. 511 (1871) INFRINGEMENT 20 10

Design Patent Prosecution 21 U.S. Design Patents: Hard Facts Only one claim per design patent Duration: 14 years* from issuance No maintenance fees Filing to issuance 9-12 month avg. Continuation practice available (essential) 22 11

5 Ways To Increase Scope/Value Of U.S. Design Patents 1. Dotted Lines 2. Indeterminate Break Lines 3. Multiple Embodiments 4. Multiple Applications 5. Continuation Practice 23 1. Broken Lines ( Dotted Lines ) 24 12

FUNDAMENTAL RULE Solid lines are part of claim Dotted lines are NOT part of claim. Adding Scope, Adding Value Dotted Line Practice DISCLAIM HARDWARE Microsoft Webcam, US Patent D647,937 26 13

Adding Scope, Adding Value Dotted Line Practice Disclaim design of legs 27 2. INDETERMINATE BREAK LINES 28 14

Adding Scope, Adding Value Indeterminate Break Lines broken away lines Relative Width of Structure 29 3. MULTIPLE EMBODIMENTS 30 15

D674,382 Multiple Embodiments (form-based) First Embodiment Third Embodiment Fifth Embodiment Second Embodiment Fourth Embodiment Sixth Embodiment 31 Apple Inc. v. Samsung Electronics 11-cv-01846 (C.D. Cal) US D593,087 Apple D 087 Embodiment 1 Apple D 087 Embodiment 2 Apple D 087 Embodiment 3 Apple D 087 Embodiment 4 Apple D 087 Embodiment 5 Apple D 087 Embodiment 6 Embodiment Speaker Screen Border Home Button 1 Unclaimed Unclaimed Claimed 2 Unclaimed Claimed Unclaimed 3 Claimed Unclaimed Unclaimed 4 Unclaimed Claimed Claimed 5 Claimed Unclaimed Claimed 6 Claimed Claimed Unclaimed 32 16

Prevalence of Multiple Embodiments Last 5 years 596 issued U.S. design patents to Apple 161 of which have at least two or more embodiments 27% of issued U.S. design patents have at least two or more embodiments Last 5 years 1083 issued U.S. design patents to P&G 271 of which have at least two or more embodiments 25% of its issued U.S. design patents have at least two or more embodiments 33 4. MULTIPLE APPLICATIONS 34 17

Multiple Applications Maximize Coverage Des. D647,946 SUPPORT FOR ELECTRONIC CAMERA Des. D647,933 ELECTRONIC CAMERA 35 5. Continuation Practice 36 18

Daisy Chain Applications Forever Young Filing 3/22/07 Issuance D573,606 Filing 2/13/09 Issuance D650,355 Etc. Filing 8/24/05 Issuance D548,744 Filing 05/08/07 Abandoned Filing 08/10/11 Issuance D656,159 37 Prevalence of Continuations and Divisionals Last 5 years 596 issued U.S. design patents to Apple 289 of which are either divisional, continuation or continuation-in-part 48% of its issued U.S. design patents during period are either divisional, continuation or continuation-in-part Last 5 years 1083 issued U.S. design patents to P&G 329 of which are either divisional, continuation or continuation-in-part 30% of its issued U.S. design patents during period are either divisional, continuation or continuation-in-part 38 19

GUI s, Icons and Animations The New Frontier 39 Side-by-side, 305 and Samsung Smart Phones US D604,305 Samsung GUI 40 20

Apple s Design Patents-in-Suit Graphic User Interfaces D613,334 D627,790 D604,305 Samsung GUI 41 D658,646 Graphical User Interface Static, Black & White 42 21

D665,416 Graphical User Interface Static, Color 43 D617,803 Icons Static, Color CLAIM The ornamental design for a color icon for a display screen or packaging with surface ornamentation, as shown and described. FIGURE DESCRIPTION The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee. The FIGURE is a front view of a color icon for a display screen or packaging with surface ornamentation showing my new design. The broken line showing of the display screen or packaging forms no part of the claimed design. 44 22

Animated GUI s and Icons 45 D660,864 Graphical User Interface Static, Black & White, Multiple Embodiments 23

D621,849 Graphical User Interface Dynamic, Black & White The appearance of the image transitions sequentially between the images shown in Figs. 1-2. The process or period in which a image transitions to another forms no part of the claimed design 24

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Thank You. Christopher V. Carani, Esq. Shareholder McANDREWS HELD & MALLOY LTD. 500 West Madison St., Suite 3400 Chicago Illinois 60661 U.S.A. (Tel) 312 775 8000 (Fax) 312 775 8100 www.mcandrews-ip.com Christopher V. Carani, Esq. is a partner and shareholder at the intellectual property law firm of McAndrews, Held & Malloy, Ltd. based in Chicago, Illinois. He is a leading authority in the field of design law, counseling clients on a wide range of strategic design protection and enforcement issues; he is often called upon to render infringement, validity and design-around opinions and serve as a legal consultant/expert in design law cases. Chris has worked extensively with clients to secure a wide array of design rights both in the U.S and outside of the U.S. He has published and lectured extensively on the topic and is a frequent contributor to CNN on intellectual property law issues. He is also often called upon to provide comment to other media outlets, including New York Times, Wall Street Journal, NPR, PBS TV, CNBC TV, BBC, Bloomberg TV, Reuters, InformationWeek, Fast Company, ComputerWorld, PCWorld, Washington Post, L.A. Times, Chicago Tribune, Forbes, Fortune, and FoxBusiness TV. Mr. Carani currently chairs the American Bar Association s Design Rights Committee, and is the past chair of the American Intellectual Property Law Association (AIPLA) Committee on Industrial Designs. In the landmark design patent case Egyptian Goddess v. Swisa, he authored amicus briefs on behalf of the AIPLA at both the petition and en banc stages. In 2009, 2011-12, and 2013 he was an invited speaker at the United States Patent & Trademark Office s ( USPTO ) Design Day. Prior to joining McAndrews, Mr. Carani served as a law clerk to the Honorable Rebecca R. Pallmeyer at the U.S. District Court for the Northern District of Illinois. Mr. Carani was conferred his Juris Doctorate from The Law School at The University of Chicago. He also holds a Bachelor of Science in Engineering from Marquette University. He is currently licensed to practice before the U.S. Supreme Court, the U.S. Federal Circuit Court of Appeals and other U.S. District Courts. He is a registered patent attorney licensed to practice before the USPTO. 35