Samsung filed a Petition for Rehearing en banc filed June 17, 2015 in the U.S. Court of Appeals for the Federal Circuit. This Petition requests a rehearing by the full court of its original decision of May 18, 2015 in Apple v. Samsung (see our previous newsletter). In the original decision the Court rejected all of Samsung’s arguments regarding design patents.
Samsung argued two grounds in its Petition:
- The original decision conflicts with precedents precluding a finding of design patent infringement based on functional elements; and
- The original decision regarding design patent damages conflicts with the text, history and purpose of 35 USC 289 and with decisions of predecessor courts.
Regarding issue #1, Samsung argued that the original decision ignored the Federal Circuit’s own precedent in OddzOn and Richardson requiring a court to distinguish between functional and non-functional elements during its Markman claim construction, and that its precedent precluded a finding of infringement “based on functional elements”.
Regarding issue #2, the Court had considered all of Samsung’s arguments in its original decision, and upheld the 100+ years of precedent finding that the design patent statute indeed says what it says: a design patent owner is entitled to the infringer’s total profits on sales of the product to which the infringing design has been applied.
Samsung’s arguments regarding whether the statutory provision regarding total profits ought to be interpreted otherwise as a matter of policy were properly sidestepped by the Federal Circuit as being more appropriate for Congressional consideration.
SDLG Comment: Samsung in its claim construction argument glides over an important distinction regarding use of the term “functional”. A product of industrial design always contains functional elements; otherwise it would not qualify for design patent protection as not being “an article of manufacture” as required by 35 USC 171. But having functional elements does not mean that those elements cannot also be ornamental, i.e., possess a shape that is not solely dictated by function. In other words, functional and ornamental are not mutually exclusive characteristics of a product. When one analyzes the precedential cases cited by Samsung – Read, Lee, OddzOn, and Richardson – in that light, Samsung’s arguments fall of their own weight.
Given the decisive tone of the Federal Circuit’s May 18, 2015 decision, it seems unlikely that the Court will grant Samsung’s request for rehearing, and it should not – the Court’s reasoning was sound. If the Court does grant Samsung’s request, design patent stakeholders should unite and help put the non-issue of “functionality” to bed. If Samsung is not successful, a Petition for certiorari to the U.S. Supreme Court may well follow, along with continuing pressure on Congress, in which case design patent stakeholders should be concerned with the ongoing assault on design patents and take action, lest their rights be whittled away.