Published by LawTechie - August 31, 2011 - LawTechie

intellectual property lawyers nyLast week Samsung filed a sealed motion to have Apple’s iPad design patent declared invalid on the basis of “prior art” existing in the form classic sci-fi movies including “2001: A Space Odyssey” and “The Tomorrow People” which showcased allegedly similar devices over four decades ago. Samsung’s motion is a defensive tactic in a case of patent infringement brought by Apple against Samsung’s allegedly similar tablet product:

The Korean electronics giant is in a patent war with Apple, which among other things has accused Samsung of infringing a patent on the basic design of the iPad. One of the ways defendants respond to such charges is by trying to get a judge to declare a patent invalid, often by citing earlier inventions to make a case the patent should never have been granted.

In the patent context, the existence of prior art (e.g., pre-existing similar or identical invention) precludes the validity of a patent since, if it existed beforehand, the patent should not have been issued due to a lack of novelty.

As an exclusively “soft IP” litigator, I was curious why Apple did not bring a trade dress claim against Samsung, seeing as how prior art does not factor into a trademark infringement analysis. In other words, even if a movie showed an identical design 40 years ago, the first company to market the product in commerce — in this case Apple — still has rights to the design. So I asked our resident expert, Tony Handal, who has litigated both patent and soft IP cases for over three decades. His response:

In the context of a design patent, the question is whether a consumer might be mistaken into thinking he is looking at the patented design, when in fact, he is looking at the copy. This theoretical consumer is presumed to be familiar with all prior art designs. So, if there are a lot of designs out there, courts, viewing the designs as a whole, may be influenced by uncommon features in the new design and whether or not they are in the alleged design. The controlling case is [Egyption Goddess, Inc. v. Swisa, Inc. (Egyptian Goddess III), 543 F.3d 665 (Fed. Cir. 2008)].

Trade dress might be better, whether registered or not. I say this because if the competing designs have not been seen for years, then the consumer is not likely to associate them with a “generic” source, such as a movie.

[In the end,] I would say, why not just add the trade dress claim. I don’t think it would confuse the jury. I think they would just assume it was the worst thing that the defendant did, because he “broke two laws and certainly should have known better.” I know that’s not lawyer talk, but it is jury talk!

LawTechie is a blog focusing on trends in tech and digital media. Areas covered include intellectual property, cyberlaw, venture capital, transactions and litigation as they relate to the emerging sectors. The blog is edited by the firm's partner Tim Bukher with contributions from the firm's experts in their respective areas of law.

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