One of the most common defenses to patent infringement is that the asserted patent is invalid. The reasons for invalidity regularly range from lack of utility, to incorrect inventorship, and even to fraud (as I’ve recently written about). Often, the defendant asserts that the patent is invalid for lack of novelty or non-obviousness–pointing to some piece of evidence that the defendant says conclusively shows that the invention was already in the public domain before the plaintiff even applied for the patent. That evidence is called invalidating “prior art.”

Prior art can spell the unexpected demise of an otherwise valid patent, and it comes in many forms. For several decades, published prior art (not to be confused with prior art in the form of prior uses or sales) consisted of already-existing patents (and applications), trade journals, drawings, articles, websites, standards, whitepapers, etc. But Congress expanded the scope of published prior art dramatically in passing the America Invents Act in 2012. Whereas before prior art consisted merely of “printed publications,” post-AIA, prior art also encompasses things that are “otherwise available to the public.”

The larger–and more modern–universe of possible published prior art is easy to imagine. For example, prior art references are no longer limited to traditional publications and documentary evidence. Instead, additional forms of multimedia come into play–which is fitting in today’s multimedia-packed times. Videos, movies, broadcasts, and recordings all now qualify as prior art, so long as they are available to the public.

But despite this expansion, litigants have not yet fully taken advantage of the change. There have been a few recent uses of video as prior art, such as the iconic iPhone keynote speech made by the late Steve Jobs demonstrating a technology described in an Apple patent. Ironically, in commenting on the “bounce-back” effect that was the subject of the patent, Steve Jobs stated, “boy have we patented it.” But Apple failed to patent it fast enough after the speech.

Samsung used clips from Stanley Kubrick’s 2001: A Space Odyssey to argue that Apple’s design patent for the shape of a tablet was invalidating prior art.

Apple really seems to be taking the brunt of video prior art challenges.

Just one week ago, a Federal district judge in the Northern District of Florida addressed–apparently for the first time–whether a YouTube video could constitute prior art. The court, in HVLPO2, LLC v. Oxygen Frog, LLC, 4:16-CV-336 (MW/CAS) (Dkt. No. 133), held that a YouTube video can constitute prior art and that YouTube videos are “sufficiently accessible to the public interested in the art.” Not exactly a groundbreaking finding to someone of my generation, who grew up with YouTube and the internet. Indeed, the USPTO’s own training guides (slide 15) specifically state that YouTube videos are a perfectly acceptable form of prior art. The USPTO has stated that videos qualified prior to the AIA, but there is conflicting authority.

The plaintiff in HVLPO2 had argued that the particular YouTube video in question was uploaded on a random account, so no one interested in the art would have found it. The court pushed back in eccentric fashion, stating:

It appears that Plaintiff is unfamiliar with how YouTube works. A familiar user would know that you don’t need to search for a particular channel to watch the videos uploaded on it. For example, if you want to watch a video of a cat skateboarding, you can search “cat skateboarding”; you don’t need to know that it might have been “CatLady83” who uploaded the video you end up watching.

The court held that the YouTube video in question appeared within the first 20 videos when using appropriate search terms on the site. “Surely, the effort involved in composing a basic search query and scrolling down the page a few times does not exceed the ‘reasonable diligence’ that the law expects of a hypothetical prior art subject.” I couldn’t agree more, and I recommend this fun cat skateboarding video:

But even though most YouTube videos are generally accessible, not all are available to the public. For example, YouTube videos may be “private” or “unlisted,” potentially removing them from the “otherwise available to the public” category or at least undermining the argument for their accessibility. Thus, as even the court in HVLPO2 noted, the defendant still has to prove the existence of public access to the video prior to the applicable date. This can be accomplished by proffering screenshots of the video in the browser and evidence of that video’s publication date (which is disclosed on the YouTube website and many other video sharing platforms).

Besides the above, there are few other examples of videos (online or otherwise) being used as prior art. This is probably due in part to the current difficulty of searching the vast amount of video and audio–as opposed to text, for example–available on the internet. But as computer learning gets better and better, I expect audiovisual prior art will play a bigger role in both patent prosecution and litigation, so long as that prior art is “otherwise available to the public.”

For years, Samsung and Apple have battled over intellectual property rights associated with each party’s smart phones. Apple sued Samsung in 2011 and the jury found that Samsung had infringed Apple’s trade dress, design patents, and utility patents. On May 15, 2015, the Federal Circuit upheld the findings regarding infringement of design and utility patents, but found that Apple’s claimed trade dress was functional and vacated the damages award associated with the trade dress claims. Earlier this week, Samsung filed its request for Supreme Court review of the ruling. Although Samsung won an important battle for itself and all of Apple’s competitors, a recent filing by Samsung with the U.S. Patent and Trademark Office suggests that the smart phone trade dress battle may not be over.

On December 7, Samsung filed an application to register claimed trade dress for the product configuration of a smart phone. Samsung submitted the following drawing of the mark:

Samsung - Trade Dress DrawingThe drawing appears to show the Samsung Galaxy S6 Edge, shown below:

Samsung Phone

Samsung’s application contains a number of features that overlap with Apple’s claimed trade dress. So why file the application at all? Well, the latest rumors suggest that Apple may be introducing a curved display for its iPhone 7, similar to the Samsung Edge feature. Apple also recently received patent registration for technology that would enable its products to employ a curved screen. Assuming that the parties’ technology does not infringe the other’s patent rights, it could be possible for Samsung to prevent Apple from selling a curved display if Samsung can prove that it has protectible rights in a curved display trade dress.

Currently, Samsung’s application does not claim any rights in a curved display, but instead describes the mark as “a three-dimensional configuration of a smartphone.” However, an application for trade dress must specifically identify the aspects that are claimed as a feature of the mark and, just as importantly, the aspects that are not claimed as a feature of the mark. For example, when Apple sued Samsung for trade dress infringement, Apple claimed rights in the following configuration: (1) rectangular product with rounded corners; (2) flat clear surface display; (3) black borders around the surface display; and (4) when in use, an unchanging bottom dock of square icons, with a matrix of changing square icons above it. Likewise, Samsung will be required to specifically identify these features in its application.

However, this isn’t the only hurdle that Samsung will face. In order to be protectible, trade dress must be both distinctive and non-functional. Trademark rights can normally be established where the claimed mark is either inherently distinctive or has acquired distinctiveness. But the Supreme Court’s decision in Wal-Mart v. Samara Bros. Inc. clarified that product configuration marks can never be inherently distinctive. Instead, there must be proof that the claimed mark has acquired distinctiveness. Normally this is done through a claim of a period of use of five years or more. However, Samsung’s claimed first use date for this design is Feb. 3, 2015, about four and a half years short. Acquired distinctiveness can also be proven through significant sales, advertising, and publicity. However, with less than a year of use, Samsung may have difficulty proving that this particular design has acquired distinctiveness among consumers.

Samsung’s burden doesn’t get any easier with regard to proving that the claimed mark is non-functional, either. Samsung succeeded in proving that Apple’s trade dress (referenced above) was functional. Specifically, the Federal Circuit found that these features provide utilitarian advantages, making the product more usable, providing user friendly features, quick access to programs, greater pocketability, and better durability. Most of these features, if not all of them, appear to be present in Samsung’s current application.

Of course, the primary difference is the curved display. Although I don’t own a Galaxy S6 Edge, I presume the feature is popular because it increases the screen size, allows users to view notifications even if the phone is face down, and provides increased functionality for applications. Samsung also appears to be digging itself a pretty big hole with quotes like the following on its own website:

The device’s unique curved Edge screen provides quick access to frequently used apps, alerts and device functionality all with the swipe of a thumb, even when the cover is closed.

Right now, Samsung’s odds of obtaining a registration for the claimed trade dress seem low. Maybe Samsung plans to disclaim a number of these functional features, possibly increasing its odds; we’ll have a better idea once Samsung defines its claimed mark. However, in light of Samsung’s past statements (and success) in the Apple litigation and its promotion of the “edge” feature, this application may be dead on arrival, regardless of any future amendments.

Samsung appears to be the most recent brand to board the brandverbing bandwagon with its Galaxy Note 4 advertising campaign, asking the critical question: Do You Note?


Samsung has federally-registered in the U.S. the trademark GALAXY NOTE for smart phones, mobile phones, and tablet computers — note the absence of a disclaimer of NOTE, meaning that term is believed to be distinctive, not descriptive or generic for the goods (at least for now):

GalaxyNoteAnd, Samsung’s DO YOU NOTE? trademark application publishes for opposition tomorrow.

As you know, we have welcomed the challenge by marketing types to press the edges and not fall into the assumed knee-jerk legal trap when it comes to weighing the true risks of genericide based on the verbing of brands, but if you’re not Google, this recommended reading from our archives — on the subject of trademark verbing and the risk of genericide, is still highly useful:

Who will be the next to jump on the brandverbing bandwagon? How long will the ride last?

A picture is said to say a thousand words, and ironically that is almost literally and exactly true when it comes to Apple’s focus on non-verbal icon branding.

A week before the 4th of July, Apple filed these three non-verbal trademark applications:


Clicking on each will take you to the detailed USPTO information for each application, but for our purposes here and the ease of discussion, let’s call them, A, B, and C, moving from left to right.

Clearly, each of the three contains a number of elements to form each of the claimed composite marks.

And, when design elements form the claimed mark or portions of the claimed mark, the USPTO recognizes that words are needed — at least behind the scenes — to explain and describe the claimed mark, even if those words are not part of the drawing for the claimed mark.

So, each individual piece of the mosaic must be identified and described in relation to each other piece that forms the whole collection of pieces.

Given that, how many words do you suppose were used by Apple to describe the claimed marks A, B, and C?

Sparing you the suspense, here is the answer: A = 1,008; B = 984; and C = 52.

Obviously, the more elements, and the more detailed the elements are, the more words are needed to accurately and fairly describe the claimed mark. What might that say about the scope of rights associated with each? Have a little patience on that question, please.

In the meantime, another question that arises might be, why file for all three?

My answer: To obtain layers of broad and narrow protection, to maximize the overall scope of trademark rights, and thereby keep the most competitive distance with newcomers.

Back to the question of the implications of using extremely wordy mark descriptions, although I’m certain there is not a linear formula that can be extrapolated from the number of words used to describe a non-verbal mark, it stands to reason that the more easily and efficiently a non-verbal mark is described, the greater the potential for enjoying broader and stronger rights.

In general, the more elements included in a claimed composite mark, the narrower the scope of rights, and the easier it should be to obtain registration at the USPTO without getting hung up based on potentially conflicting third party rights.

Imagine all the room for argument about the absence of likely confusion when only a few minor elements of a claimed mark overlaps with prior rights of another’s mark. The same principle should apply when it comes to enforcing those rights. When a newcomer only adopts a few of the many elements claimed in another’s prior mark, this opens the door for a healthy dialogue about peaceful coexistence without likely confusion, provided the only claimed mark is the entire mosaic as opposed to each piece or element that forms the whole.

I suspect this helps explain why Apple has either registered separately or sought to register each individual app icon as a standalone mark, and here are just a few of them to help make the point:







With all that in mind, going back to the mosaics claimed as marks A, B, and C, shown at the top of this post, I’d consider A to be the claimed mark with the most narrow scope (because it contains the most elements). Although you’d never guess it by the almost identical word count between A and B, I’d consider B to be a fair a bit broader than A because B is not limited by what surrounds it within A.

Of the three, C appears the most valuable and ground-breaking, if allowed. In my mind, it is the claimed mark with the broadest scope of rights, as may be evident by the relatively brief description of claimed mark C (but, stay tuned on whether the USPTO requires more verbiage in the required Description of the Mark section of the application during examination):

“The mark consists of of the configuration of a rectangular handheld mobile digital electronic device with rounded edges and an arrangement of twenty-two icons consisting of squares with rounded edges arranged in six rows on the screen of the device. The matter shown in broken lines is not part of the mark.”

If this description survives examination at the USPTO, C will be a valuable registration for Apple as it will protect the layout of the icons without any limitations as to what the icons are, what they look like, or their various color schemes.

Curious readers might wonder why Apple didn’t provide close to the same 1,000 words for C, as it did for A and B — the answer lies in the fact that Apple used dotted lines for the internal detail of each of the twenty-two icons, so that detail is excluded from and not claimed as part of the overall composite mark shown in C.

Knowing that Apple’s efforts to obtain a federal trademark registration for the configuration of the iPhone have been opposed by Samsung and Microsoft, we’ll need to wait and see what happens with A, B, and C:

We’ll also have to wait and see whether any of them lead to any fireworks at the USPTO.

For other recent DuetsBlog coverage of Apple’s IP strategy, check out Martha’s posts, here and here.

By the way, given my word count for the day, I better wrap it up, at least for now.

Much of the success of Apple products can be traced to Apple’s emphasis on design as being equal or greater than the technical advancement of its products.  Talking with a product designer the other day, we both remarked on how often companies do the opposite of Apple – they care more about getting a new product to market than spending the time and resources on getting the design right.

The value that Apple places on design shows in its prolific filings of design patents, which they file not only for the shape of the product but also even the graphic icons. Apple was granted a patent (D671,558) in November 2012 for this graphic icon on a display screen:

Do you recognize it?

The broken lines around the figure indicate portions of a display screen and the lines form no part of the claimed design.

The standard of review for determining whether a design is patentable is whether the ornamental configuration is novel and nonobvious to one of ordinary skill in the art, namely a designer of similar products.

I know we have some talented designers among our readers, so based on that patentability standard should this later filed Samsung design be patentable?   Again, only the solid lines form the claimed design.  Is it novel and nonobvious?

And while we’re at it, let’s talk trademark significance. Without the names of the companies, do either of these images icons indicate source to you?  I’m not sure that either of these function as a trademark.

I would not be surprised if the icons and other design patents come into play as Apple and Samsung continue to battle over their patent portfolios and failed again to come to a resolution of their ongoing patent dispute.

Jeffrey Stone and Brett Klein, Patent Attorneys, Winthrop & Weinstine, P.A.

The design patent is perceived by many designers and patent attorneys as being a relatively weak and impotent patent protection mechanism as compared with the better-respected utility patent. It is typically thought that design patents are only useful in protecting against exact copies. The reasoning behind this attitude is one or more of the following very commonly held misconceptions:

1. Design patents are generally perceived as easy to get around. Why bother if small changes are all that is required to avoid my patent.

2. You generally get what you pay for, and design patents are cheap, so I’m probably not getting a lot.

3. In the end, design patents are just a fast (and don’t forget “cheap” and “probably ineffective unless the accused product is an exact copy”) way to gain the rights to mark a product with a patent number.

As a result of these misconceptions, the design patent is generally an under-appreciated, misunderstood and under-utilized tool in both protection and enforcement of patent rights. Until this summer, with the Apple-Samsung case that thrust it into the spotlight, the design patent has been generally quiet, humble, and meek. However, the design patent has always had some very potent elements built into its protection and enforcement mechanisms and more recently, some additional power has been gained through court decisions (See e.g., Egyptian Goddess, Inc. v. SWISA, Inc., 543 F.3d 665 (Fed. Cir. 2008) (doing away with the point of novelty test and not adopting the non-trivial advance test))  loosening the test for finding infringement of the design patent. Apple’s heavy reliance on its design patents serves as one example of this power and the magnitude of the damages award in the Apple-Samsung case moves the design patent into its rightful place in the spotlight.

For now, it is enough to refer design patent skeptics to the verdict and damages award in the Apple-Samsung case to understand, accept and implement the power of design patents. While the case itself has not rewritten any design patent laws, it is significant due to Apple’s heavy reliance on design patents to show Samsung’s infringement.

The relevant numbers at a glance:

• Apple’s damages claims were a total of approximately $2.5 billion, with about 80% or $2 billion owing to its design patents.

• The products at issue were also covered by more than 200 utility patents.

• The verdict resulted in $1.05 billion owed to Apple by Samsung, primarily due to design patent infringement. This is one of the largest damages awards ever issued in a patent infringement case.

Apple’s success with its design patent protection as both a stand-alone protective mechanism as well as a very effective supplemental protection to that provided by its utility patents should convince the skeptics that the design patent is, indeed, a highly powerful and effective protective and enforcement mechanism.

The Apple-Samsung case did not occur by chance. In fact, it appears that both parties had begun to recognize the value of design patents. In the years leading up to the case, the number of design patents issued to both parties from 2001 to 2011. Samsung’s numbers are greater than Apple’s numbers in this context largely because it has significantly more products to protect than Apple:

Perhaps significantly, Apple received design patent D650,133 on November 13, 2012, for the now-familiar page turning design implemented on various devices. This patent does not include the underlying technology required to implement the page turning device, but does cover the non-function aspects that are indicated in part below:

And, Apple and Samsung are not the only ones that have begun to appreciate the power of the design patent. The above data is an extreme example, but since 2001, applications for design patents have increased by 40%. The chart below illustrates the strong upslope in both filings and issuances design patents within the USPTO.

Data Source: U.S. Patent and Trademark Office Patent Technology Monitoring Team (PTMT)

This increase signals an enhanced recognition of, and reliance upon, the power of the design patent in IP protection strategies, which has been validated by the Apple-Samsung verdict and its resulting $1.05 billion damages award, based primarily on Apple’s design patent rights. In short, broad and robust design patents are powerful. Prudent companies should recognize the necessity of incorporating design patents into their patent protection and enforcement strategies.

It’s not too often that the media takes note of a patent dispute, but the Apple v. Samsung dispute has certainly gotten a lot of news attention.  Probably because almost 40% of American cell phone subscribers have a phone made by one or the other in their pockets.   After a tumultuous trial, on Friday, just two and a half days after closing arguments, the verdict came in from the California jury.  The jury found in favor of Apple and awarded the company over $1 billion in damages.

Many people think of their smartphones as just that – “smart,” technologically innovative gadgetry.  But what’s interesting about Apple v. Samsung is that 4 out of the 7 patents asserted by Apple covered design, not technological guts.   Figures from two of those design patents, D593087 and D618677  are shown below:

Apple has taken an aggressive approach  to protect their innovative design by filing  hundreds of patent applications on their iPad, iPhone, iPod and other products.

Here are some reasons why you may want to consider adding design patents to your arsenal of intellectual property protection:

  • A design patent application is cheaper to file and maintain compared to its utility counterpart.   For a large entity like Apple (>500 employees), the US government fees to file the application and maintain the issued patent are $1,520 for a design patent and $11,700 for a utility patent.
  • You’re likely to get some coverage.  About 80% of design patent applications result in an issued patent (often without a single rejection from the Patent Office) compared with about 40% of utility patent applications.  This also makes them cheaper than utility patents.
  • You get an issued patent quicker.  The average pendency for a design patent in the Patent Office is about 15 months versus 33.7 months for a utility patent.
  • To prove infringement, a company like Apple does not need to show a likelihood-of-confusion between its products and an alleged infringer’s product.  The patent right is a right to exclude others from doing something.  You need only show that the other party makes, uses, offers to sell, or sells a product that embodies your claimed inventive design.

Now recall that, in patent law, prior disclosures may present a bar to patentability – so it’s important to consider any patent filing strategy before disclosing your design to a third party or to the public.




On April 15, Apple launched a massive suit against Samsung alleging various counts of patent and trademark infringement arising from Samsung’s Galaxy line of products. (The Complaint is here.)

While the lawsuit involved claims of trade dress infringement and patent infringement, I was most interested in the trade dress aspects of the case.  Of particular interest to me is the alleged “trade dress” that Samsung is accused of infringing. Apple claims that Samsung has infringed its exclusive rights in:

  • a rectangular product shape with all for corners uniformly rounded
  • the front surface of the product dominated by a screen surface with black borders
  • substantial black borders above and below the screen having roughly equal width and narrower black borders on either side of the screen having roughly equal width
  • metallic surround framing the perimeter of the top surface
  • display grid of colorful square icons with uniformly rounded corners
  • a bottom row of icons set off from the other icons and that do not change as the other pages of the user interface are viewed

Hardware 2.0 provides some good color comparisons of the products in his article questioning whether Samsung is “paying homage” or “ripping off.” In my opinion, Samsung is doing neither. It would be odd if Samsung were paying homage to a direct competitor. However, the fact that Samsung isn’t paying homage doesn’t mean it’s ripping off. My take is that Samsung is merely using highly functional design elements that consumers want in their smart phones, regardless of whether those design elements come from Apple, Samsung, or any other source.

If you have been a long time reader of our blog, you may recall a post I did sometime back on the functionality doctrine in the context of round beach towels. Among other things, the functionality doctrine prevents protection through trademark law of features that give a producer a competitive advantage that is not related entirely to brand identification. Trademark (and trade dress) law are about protecting indicators of source. Simply stated, you typically can’t trademark a design where the purpose or effect of the design is for something other than indication of source.  

Apple makes what I believe is a serious gaffe in its complaint: it claims that the end result of its alleged protected trade dress is to create a product that is “more accessible, easier to use, and much less technically intimidating than previously available smart phones and PDAs.” That’s basically an admission of functionality.  Ignoring Apple’s admission, virtually every smart phone on the market is rectangular, dominated by a screen surface, and black with some sort of metallic trim. Does that mean everyone thinks their smart phone is an Apple? Of course not. People don’t want these features because they think it means they’re getting an Apple product.  They want these features because they’re aesthetically pleasing and make the product easier to use. That makes the features functional.  

–Dan Kelly, Attorney

Certain late-baby boomers and gen X’rs will know that 3 is “The Magic Number.”  Don’t believe me?  See here.

I raise this cultural referent principally because I once stumbled upon, quite by accident and for reasons that I cannot now recall, the following items in the U.S. Trademark database:

  • The English translation of “SAMSUNG” is “three stars.”
  • The English translation of “MITSUBISHI” is “three rhomboids.”
  • The English translation of “SANYO” is “three oceans.”

I was starting to wonder if I was on to something, like the blue oval phenomenon, thinking that there might be some Asian cultural affinity to the number three, but I was hard pressed to find other well-known (in the U.S.) brands from Asian companies that also had ties to the number three.  Alas, another great theory down the drain.  But I did find some telling design trademarks for these companies, some of them admittedly old:

And, of course, astute readers will know that Samsung’s current logo is…

Continue Reading The Magic Number

–Dan Kelly, Attorney

I think Steve once remarked something to the effect that the Internet is employment security for trademark attorneys.  Road tripping is too.  On one such recent occasion, my wife remarked on the similarity of Culver’s blue oval signage to Ford’s famous blue oval.

Obviously, there is no issue here from a trademark infringement standpoint.  Culver’s is clearly in the fast food business, and Ford is an automotive company.  No, the intrigue for me was how I started seeing blue ovals everywhere!  First was Carrier:

Then I noticed the Nasonex logo on a note on my desk from a promotional notepad:

Then the one that put me over the edge, the one that has now made me believe that there is a proverbial vast right-wing marketing conspiracy to toy subliminally with my latent positive associations with blue ovals:  Malt-o-Meal.

As if this were not enough, Brad, reading over my shoulder, suggested I take a look at American Idol:

Yikes!  What’s more, Brad pointed out that Ford is a major sponsor of American Idol!

Joking aside, isn’t it kind of interesting that of these examples, several use a light line to help outline the oval?  From a design standpoint, it seems to enhance the overall shape and clarity of the designs that use it.  I have a secret hope that there is some James Burke-esque “Connections” link in the depths of humanity’s art history that might explain the blue oval phenomenon.  I wonder how many marketing surveys exist that show positive associations with blue ovals?  Is this just a case of sensitivity on my part to the phenomenon, or could I find similar phenomena with, say, green triangles?

While you lose sleep (or not) over these questions, feel free to pass the time running Internet searches for the words “blue oval” to see which of these blue ovals might claim to be the blue oval.  (Hints here here here here here and here.)

UPDATE:  The hits keep coming: