Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 1289

Statement Apple's Submission Regarding Proposed Design Patent Supplement to the Federal Judicial Center's Patent Video by Apple Inc.. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6)(Hung, Richard) (Filed on 7/23/2012)

Design Patent Addendum to “An Introduction to the Patent System”
Ladies and gentlemen of the jury, you just watched a video about the American patent
system. The video talked about “patents” in general. In fact, there are different kinds of patents,
and you will see two types in this case – utility patents and design patents. Everything you just
heard about “patents” in the video applies to utility patents. However, there are some different
rules and procedures that apply to design patents, which the video did not talk about. For that
reason, I want to explain to you briefly what those differences are.
As the video described, utility patents are issued for inventions, and to be patentable an
invention must be both new and useful. Design patents, on the other hand, do not cover
“inventions,” but rather, as their name suggests, they cover designs. To be patentable, a design
must meet a different test – it must be “a new, original and ornamental design.”
In general, a utility patent protects the way an article works, while a design patent
protects the way an article looks. Since a design is shown by its appearance, a design patent may
relate to the configuration or shape of an article, to the surface ornamentation applied to an
article, or to the combination of shape and surface ornamentation. So although you heard in the
video that a utility patent must describe a new and useful way of solving a problem, this
problem-solving requirement does not apply to design patents.
The video described a patent as representing a bargain made between the government and
the inventor of a utility patent. That was the idea that the inventor would add something new and
useful to the state of the art in return for the right to keep others from using the invention for a
period of time. The same kind of bargain is struck with a design patent inventor. In return for
adding a new, original and ornamental design to the public knowledge, the inventor can keep
others from using the claimed design as shown and set forth in the drawings of the design patent

1

for a set period of time. Utility patents normally last for 20 years, whereas design patents last 14
years.
You also heard that for a utility patent, conception of the invention occurs when it is
formulated in the mind of the inventor clearly enough that he or she can write it down and
explain it to someone. For a design patent, conception happens when the design is formulated
clearly enough in the mind of the inventor that he or she can draw the design.
The video described the application for a utility patent as a written document in which the
inventor describes the invention he or she is trying to protect. This is the same for design patents,
except that design patents rely on figures to describe the design and do not include lengthy
written descriptions. A design patent has similarities in format to the main parts of a utility
patent that the video just walked you through. I will use the sample design patent you have been
given to identify the basic parts of a design patent. Many are similar to utility patents, but again
there are some differences.
The first page of a design patent has much of the same material as the sample utility
patent you saw. It has the patent number assigned by the PTO in the upper right corner; and on
the left side, the title, the names of the inventors and sometimes the company they have assigned
the patent to; the filing date of the application; the numbers following the heading “field of
search,” which identify the categories of previously issued patents the examiner looked at or
searched; and the list of “references cited.”
One difference you can see, however, is that while in the utility patent the claims came at
the end, here the claim is on the first page (in some design patents the claim will be on a
following page). Another difference you will notice in looking at the sample patent is that a
design patent does not have a lengthy written description, which you heard is called the

2

specification in utility patents. And while in a utility patent the claims describe the patented
invention in words, the claim of a design patent is the design as shown in the figures, including
the description of the figures immediately below the section headed “Claim.” The claim and
description sections are then followed by figures that show the patented design as claimed. I will
instruct you later on how to understand the figures and the design that is legally claimed in each
of the design patent that is in this case. Unlike utility patents, a design patent can have only a
single claim, although there may be more than one embodiment of the claimed design as shown
in the figures. Where a design patent is eventually granted by the PTO, those drawings define
the boundaries of the patent’s protection and give notice to the public of the claimed design.
The video also discussed how the PTO processes patent applications. The process is
largely the same for design patents, in that an examiner who specializes in design patents will
review the application, including the figures, will search the prior art, and will then make a
decision about whether the design as claimed is patentable. Just like with utility patents, you
may also be asked to decide about validity, that is, whether the design patent should have been
allowed at all by the PTO. For example, the PTO may not have had available to it all the prior
art that will be presented to you. A person accused of infringing has the right to argue in federal
court that the patent or patents are invalid because they do not meet the requirements for
patentability. In the same way you heard about utility patents on the video, the Patent Office is
presumed to have done its job correctly in issuing design patents, so a party seeking to prove a
design patent invalid must meet the same higher standard of proof that applies to utility patents.
And finally, just as with utility patents, when an infringement case such as this one is
brought, it is up to you to the jury to decide the facts of the case based on the law that I will give
you at the conclusion of the trial.

3