2. Overview Apple/Samsung result Utility/Design Patents – Proving design patent infringement Design patents/trademarks/copyrights Why Apple Won! Expanded prior use defense (EPUD) on trade secrets 2Weisbrod, Matteis & Copley PLLC

3. Result Apple patents found infringed by Samsung – Utility Patents: 7,469,381 ( relating to the screen bounce- back feature); 7,844,915 (relating to pinch-to-zoom) – Design Patents: D593,087 (design of iPhone back); D604,305 (iPhone home screen design); D618,677 (design of iPhone front) – None of Apple’s patents are invalid – Apple did not infringe any Samsung patents Apple awarded $1,051,855,000 (could be trebled) – Appeals must be exhausted first. No way of knowing what type of patent was more important 3Weisbrod, Matteis & Copley PLLC

4. Utility v. Design Patents Utility Patents - may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Able to prevent others from making, using, selling or importing into the U.S. any product that infringes any of the claims of the patent. 4Weisbrod, Matteis & Copley PLLC

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8. Design Patents “Design patents are a joke” Rarely enforced Protects the ornamental appearance of an article Not its structure or utilitarian features Ornamental and utilitarian are only protected by a utility patent Design used for a product that makes it work better or costs less to manufacture not protected 14 year term 8Weisbrod, Matteis & Copley PLLC

9. Design Patents Process – simpler than a utility patent – Specification is short – Only one claim is permitted – Drawings similar to a utility patent – Less expensive filing fees than utility patent – Much short (6-8 mos v. 3-5 yrs) – Better than no patent at all – Creation of overlapping protection – Strength in numbers – 2011: Only 30,000 applications filed – Use of “patent pending,” “patent issued” 9Weisbrod, Matteis & Copley PLLC

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11. Proving Design Patent Infringement Prior law – Both (1) that the accused device is “substantially similar” to the claim design under what is referred to as the “ordinary observer” test and (2) that the accused device contains “substantially the same points of novelty that distinguished the patented design from the prior art.” Considers both the perspective of the ordinary observer and the particular novelty in the claimed design. 11Weisbrod, Matteis & Copley PLLC

12. Design Patent Infringement Egyptian Goddess Inc. v. Swisa, Inc. (543 F.3d 665 (Fed. Cir. 2008)). New test - Determine whether the accused product would appear “substantially the same” as the patented design from the point of view of an ordinary observer. Focus is on whether the accused design has appropriated the claimed design as a whole. Easier to establish Avoid problems with point of novelty test. 12Weisbrod, Matteis & Copley PLLC

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15. Design Patents and Copyrights Both cover aesthetic features Copyright is generally used for non-utilitarian articles Copyright protects the aesthetic features of the article to the extent that it can exist independently of the article (sculpture used as a base of a lamp) 15Weisbrod, Matteis & Copley PLLC

16. Design Patents and Copyrights Design patents protect the novel ornamental features of a utilitarian object Can protect the ornamental features of a utilitarian object where they cannot be separated from the object E.g., design patent can protect the look of a computer CPU case 16Weisbrod, Matteis & Copley PLLC

17. Trademarks Brand name includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services. Federal registration of a mark is not mandatory, it has several advantages: – Notice to the public of the registrant's claim of ownership – Legal presumption of ownership nationwide – Exclusive right to use the mark on or in connection with the goods/services listed in the registration – Use of ® 17Weisbrod, Matteis & Copley PLLC

18. Design Patents and Trade Dress Trade Dress – Design of an object serving as a source indicator Object may be protected by a design patent and trade dress Tests for infringement differ – Trade dress – infringing product must cause confusion, mistake, or deception 18Weisbrod, Matteis & Copley PLLC

19. Apple’s Trade Dress Claims Jury found that Samsung infringed the registered and unregistered trade dress of the iPhone. Did not find unregistered iPad/iPad2 trade dress protectable. 19Weisbrod, Matteis & Copley PLLC

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21. Why Apple Won! Apple “Told” The Better Story A boring highly technical patent trial became an event Evidence established that Samsung copied Apple Used design patents, trademarks, trade dress to establish copying 21Weisbrod, Matteis & Copley PLLC

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23. “The evidence was overwhelming” Jury foreman: 67 year old engineer with 1 patent Jury found the evidence “overwhelming,” “spoke for itself” “any jury of our peers could have reached the decision” Jury was never so confused that we felt we were going in the wrong direction” http://www.bloomberg.com/video/jury-foreman- in-apple-case-we-relied-on-e-mails- 0zEBXwlgSJiN4h_2pYoKeQ.html 23Weisbrod, Matteis & Copley PLLC

24. 24 “The Apple-Samsung trial is expected to take a month. Both sides are expected to offer evidence supporting their claims and defenses from a variety of sources. Much of the evidence will be highly technical, and despite the best efforts of the attorneys on both sides to make the technical details comprehensible to a jury, the outcome may come down to simply whether the jury believes with its own eyes that Samsung copied the appearance of the iPhone and iPad.” GUEST POST – Peter Toren Apple-Samsung jury may just eyeball the devices to reach a verdict VB VentureBeat, August 6, 2012 “Most patent trials can be tedious and boring affairs involving complex technologies and the construction of difficult to understand utility patents... by protecting its well-known products using all types of intellectual property, including design patents, Apple has been able to turn what could have been a month-long patent litigation trial involving a number of highly technical patents into what it hopes is a simple referendum on whether Samsung copied the appearance and graphic user interface of the iPhone and iPad. Considering the similarity of Apple and Samsung products, Samsung may have a difficult time convincing the jury that there is more than meets the eye and that Samsung should not be held liable for infringement.”

25. AIA: Expanded Prior Use Defense (EPUD) on Trade Secrets Applies to any U.S. patent issued on or after Sept. 16, 2011 Defense: Prior commercial use of the patented subject matter in the U.S. – Previously only available for business methods – “[U]sed in manufacturing or other commercial process Internal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commercial use” Express statutory recognition: Protect invention as a trade secret or seek patent protection – Provides protection for early commercial use when challenged by the later filing of patent applications by other entities 25Weisbrod, Matteis & Copley PLLC

26. EPUD Limitations – Not a general defense under all claims of the patent at issue – Defense must be proven by clear and convincing evidence – Commercial use in good faith – Commercial use must have “occurred at least 1 year before the earlier of either – (A) the effective filing date of the claimed invention; or (B) the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art under [35 U.S.C.] section 102(b)” 26Weisbrod, Matteis & Copley PLLC

27. EPUD Limitations – – The defense “may be asserted only by the person who performed or directed the performance of a commercial use” – Defense has a limited transferability – Defense is site-restricted – Defense is inapplicable where the subject matter “was derived from the patentee or persons in privity with the patentee” – Defense is inapplicable if the patented invention is owned by a university or its technology transfer entity 27Weisbrod, Matteis & Copley PLLC

28. AIA: EPUD on Trade Secrets The ability to continue to use the trade secret Avoid a complete loss of (1) investments in research, development, experimentation, engineering and infrastructure, and (2) returns on those investments 28Weisbrod, Matteis & Copley PLLC

29. About the Speaker Former Sidley Austin partner Former federal prosecutor – one of the first attorneys with the Computer Crime & Intellectual Property Section (CCIPs) Specializes in patent, trademark, copyright, and trade secret cases - involve diverse technologies from computer software and hardware to light emitting diodes, bio- technology to semiconductor manufacturing and fabrication, optics and medical devices to business methods Author of numerous articles Winner 2010 Burton Award for Excellence in Legal Writing Frequent contributor to the press and has recently appeared in The Wall Street Journal, New York Times, Forbes, CNN, Bloomberg TV, and the Guardian. 29Weisbrod, Matteis & Copley PLLC

30. About Speaker Intellectual Property & Computer Crimes, (Law Journal Press) Coverage includes detailed analysis of the Economic Espionage Act based on the latest cases; how to calculate damages and the meaning of unauthorized access under the Computer Fraud and Abuse Act; recent prosecutions under the Trademark Counterfeiting Act; state prosecutions for computer hacking and theft of trade secrets; and civil cases brought under the DMCA. In addition to analysis of laws aimed specifically at intellectual property violations, you'll find discussion of how general criminal laws are used to prosecute intellectual property crimes. 30Weisbrod, Matteis & Copley PLLC

31. Thank You! Questions????? 202-499-7900 ptoren@wmclaw.com 31Weisbrod, Matteis & Copley PLLC