With Samsung and Apple's California trial scheduled for Monday, more and more information is being unearthed about the parties' respective claims. Yesterday, though, AllThingsD parsed out a few pieces of evidence from an unedited version of Apple's filing (not publicly available) that look quite bad for Samsung. I'll just quote them as they appear, because they really don't need much context:

  • In February 2010, Google told Samsung that Samsung’s “P1” and “P3” tablets (Galaxy Tab and Galaxy Tab 10.1) were “too similar” to the iPad and demanded “distinguishable design vis-à-vis the iPad for the P3.”
  • In 2011, Samsung’s own Product Design Group noted that it is “regrettable” that the Galaxy S “looks similar” to older iPhone models.
  • As part of a formal, Samsung-sponsored evaluation, famous designers warned Samsung that the Galaxy S “looked like it copied the iPhone too much,” and that “innovation is needed.” The designers explained that the appearance of the Galaxy S “[c]losely resembles the iPhone shape so as to have no distinguishable elements,” and “[a]ll you have to do is cover up the Samsung logo and it’s difficult to find anything different from the iPhone.”

These quotes, in particular, are important because the bulk of Apple's demand for damages (in the form of unjust enrichment by Samsung) come from design patent and trade dress claims, totaling $2.5 billion. Worse yet, these statements would indicate that Samsung may be guilty of willful infringement, meaning a jury can choose to award Apple treble damages (triple the amount) - up to $7.5 billion. Even for Samsung, that's a lot of money. Apple is also seeking a permanent injunction against Samsung products deemed to infringe any of Apple's patents, though that remedy will be decided by the presiding judge post-trial.

Google's comments on the pre-release Tab 10.1 design hit even harder with the fact that the 10.1 has previously been banned in a number of countries (with notable exceptions) for design patent (or related design IP) infringement, most recently in the US. Samsung has fought vigorously on an international scale to keep the Tab 10.1 on store shelves, and a particularly boisterous judge in the UK has even demanded Apple take out newspaper advertising and declare on its UK homepage that the Tab 10.1 does not infringe Apple's design rights (UK and US law in this area differ substantially).

The Tab 10.1 And Other Tablets

Based on my reading of the briefs, the Tab 10.1 seems like Apple's strongest claim against Samsung for alleged design copying. Apple's contention has already stood the test of a federal circuit court review (via the preliminary injunction), and in a patent case, it's extremely rare for a preliminary injunction to later fail against a jury verdict. This verdict, if the jury reaches it, will almost certainly include a finding of willful infringement, as Apple's quotes from Google, damning as they are, are likely just the crown jewel of a larger pile of evidence it has of such internally-described similarities. This image, Apple's counsel says, is the incarnation of the "story" Apple will tell regarding the iPad and Tab 10.1 (and other tablets):


The amount of damages stemming specifically from the Tab 10.1 is another matter, though. Apple's "conservative" contention is that 10.5% of all infringing tablet sales made by Samsung would have otherwise been iPads based on production capacity and market demand. However, because Apple is entitled to the entirety of Samsung's profits from all infringing tablet sales, this number is likely small in comparison to the latter. Smaller yet are both numbers in comparison to the lost profits and unjust enrichment resulting from smartphone sales in the US, which very likely make up the large bulk of Apple's $2.5 billion damages demand.

Given that the Tab 10.1 was long ago outdated, and never hugely popular, a victory here would be mostly symbolic for Apple. Samsung's more recent tablet designs have veered from the look of the iPad to an extent, but it's entirely possible the upcoming Note 10.1 could get wrangled into Apple's demand for injunctive relief post-trial. It has yet to be decided here in the US if Samsung's addition of front-facing speakers and a wider vertical border are sufficiently different from Apple's patented design and / or trade dress.

As far as the underlying legal principles of design patents go, Apple makes a convincing case not only for the validity of its own design, but for the similarity of Samsung's. Especially since the Federal Circuit Court decided there was no reasonable challenge presented by Samsung to the validity of the '889 iPad design patent, resulting in the upholding of the preliminary injunction against the Tab 10.1. In terms of trade dress (packaging, presentation, and/or ornamental elements, basically), this (cropped) photo, having made the internet rounds some time ago, will probably be reincarnated in some form by Apple's counsel at trial:


This makes a rather compelling case for a trade dress infringement claim on packaging (though this is the box for the original Galaxy Tab, not the 10.1), and though that's not within the scope of Apple's claims as far I'm aware, it definitely helps tell the "story" Apple wants to feed the jury. Samsung was careful to avoid the more conspicuous copying the box design of the iPad with later tablets, but Apple is alleging trade dress infringement on the design of the iPad itself, not its packaging. Apple plans to introduce evidence showing consumers confusing the Tab 10.1 for the iPad at trial, as well (this isn't actually necessary, just very useful). Some of the evidence Apple hopes to produce (Samsung wants it suppressed) include internal Samsung documents showing Best Buy customers actually bought Galaxy Tab 10.1's and returned them, mistaking them for iPads. Yikes.

Trade dress infringement and / or dilution (which I'll explain in a moment) also allow the recovery of lost profits or unjust enrichment. Apple clearly has a lot of ammunition on the tablet side of this case, and it's the one part of this thing that I feel Samsung just isn't very likely to win on.

iPhone vs. Samsung Phones

Apple's "story" for Samsung's copying of the iPhone is a visual summary similar to the tablet one above:


Samsung's visual response to that "story" is one of their own:


The immediate problem with Samsung's "story" that Apple will latch onto is that before the iPhone, the vast majority of smartphone products Samsung actually decided to make (not merely design) were not similar to the iPhone. It wasn't until the iPhone was successful that Samsung's smartphone strategy underwent a paradigmatic shift focusing heavily on full-touch devices. And remember, when we're talking about patents, prior art must have been public at the time of the purported invention in order to be considered prior art. The F700 everyone likes to point to wasn't made public until after the announcement of the iPhone (it was pretty crappy at the time, too), and Apple is going to absolutely hammer on this point.

Trade Dress Dilution

This a decidedly murkier part of the litigation, and one of the parts with the most money at stake, as well as consequences generally. It's also the biggest point of contention for the two companies, and has become something of an international slap-fight for the media and tech-savvy consumers to gawk at. Apple's most potentially powerful weapon in attacking Samsung's Android smartphones comes in the form of the issue we just discussed - trade dress dilution.

Apple never bothered to register the trade dress for some of its iPhone devices, meaning it has a slightly larger initial hurdle to get over in the first place. Apple must show the jury that the some of the iPhone's trade dress is not only protectable, but famous. Granted, these hurdles probably won't be too difficult to overcome. Samsung will attempt to prove that the iPhone's trade dress is predominantly functional (eg, its form is only a result of its function), but reading both sides' arguments, I'm much more convinced by Apple's position. Apple's registered trade dress is also presumed valid, which means even more work for Samsung to get around it. However, this has nothing to do with the actual proving of trade dress dilution, a legal concept whose very existence is a precarious little niche in trademark system that some might call a technicality.

Dilution means a brand's image has been tarnished by a competitor attempting to profit off its trademark, or in this case, trade dress. Apple wants to show the jury that Samsung's phones have made the iPhone look less distinct, and that it has "blurred" the line between the distinctiveness of the two company's products. It has nothing to do with consumers confusing one product for another (though evidence of this is quite useful, as I said earlier), just a showing of consumers associating the two. So, what does Apple claim the trade dress of the iPhone is compromised of? Their brief tells us exactly (includes iPhone, iPhone 3G/S, iPhone 4):


Trade dress is looked at on a holistic basis, and based on the wording of Apple's trade dress here, the Galaxy S and S II are both very possibly in this description (they do not have to meet every element). The thing is, though, Apple isn't actually accusing Samsung of infringing the trade dress, merely of diluting it. Why not accuse them of infringement? Infringement requires a showing of likelihood of confusion, something that would be very difficult to accomplish here. Since the iPhone is such an iconic device, it would be almost impossible for Apple to prove people are actually confused when presented with a Galaxy phone and an iPhone as to which is the real McCoy.

Trade dress dilution, on the other hand, is more like trying to show someone is "leeching" off the famousness of your product. Apple is asserting "dilution by blurring," which essentially means that it is accusing Samsung of weakening consumers' association between the iconic (famous) trade dress of the iPhone and Apple as a company, because Samsung's products are visually similar to Apple's. Apple's contention is that, in the mind of consumers, an iPhone and a Galaxy phone look similar enough that the iPhone starts to lose some of its distinctiveness, and consumers start thinking one is a substitute for the other.

Galaxy_s (2) samsung-Galaxy-s-2_16b703

For Android fans, this sounds absurd. There are myriad difference between the two, functionally and visually (eg, widgets, as in above photos). The thing is, though, it's easy to forget just how "lay" members of a lay jury are - and that's exactly how the law wants them to be. There is little doubt in my mind, personally, that Samsung has successfully marketed its smartphones in the past to less savvy consumers (maybe less so now, especially with the Galaxy S III) by standing on the trade dress "shoulders" of the iPhone. This may well be the strongest part of Apple's case, unless Samsung has some evidentiary secret weapon we've yet to see - disproving the distinctiveness of Apple's trade dress is probably their only option (sort of like prior art for trade dress, but not really), and the original LG Prada is about the best bet they have (though it lacks two key elements of that trade dress):


The problem here is that the distinctiveness requirement focuses heavily on secondary meaning - the meaning consumers come to attach to a particular trade dress. No one remembers the Prada phone, and everyone associates the shape of the iPhone with Apple, so Samsung's attempts to disprove distinctiveness may not gain much traction.

Even if Apple wins on this point, though, it's hard to say how the concept of trade dress dilution will stand up on appeal - the 9th Circuit is fairly unpredictable, though it does have a track record favoring rights-holders over alleged infringers, so it may be keen to latch onto the concept. Don't expect a quick answer on this one.

Design Patents

Design patents are the other big part of Apple's case against Samsung's smartphones. Apple alleges two hardware design patents for the iPhone, and one software GUI design patent for the iPhone as well. The software GUI patent, in my opinion, is the least likely of the three to withstand the jury's scrutiny:


Samsung will likely immediately go to the two stock press shots I placed in the previous section - "See? We have widgets." And I think this could be a solid defense, Apple's patent on the GUI design certainly bears some similarity to Samsung's when you have the app drawer open, but that isn't a part of the interface where users idle in Android. If they do win on this across the board, I'll be a little surprised. Design patents, like trade dress, are looked at on a holistic basis, and I just don't see the overall similarities between the two being great enough for Apple to eek this one out. Maybe if it was for the bottom row of icons alone, but not the entire home GUI. Then again, Apple can easily claim that it is possible, out of the box, to make Samsung's smartphones appear more like this by removing the widgets and substituting them for icons. Whether or not this argument will at all be convincing is an unknown - Samsung has marketed photos of the original Galaxy S with the app drawer open (and marketed other phones with more icons than widgets on the homescreen), and that's definitely a valid piece of evidence.

Where Apple likely has a stronger case is its hardware design patents, particularly D'677, which claims the front fascia (minus border) of the iPhone:


Put side by side with a Galaxy S or Galaxy S II, this patent could be disastrous for Samsung. It really is quite broad, and my gut instinct tells me Apple's argument will be that Samsung's square home button and / or use of capacitive buttons are inconsequential differences in the larger evaluation of the design. The "test" here for the jury is whether or not, based on the patented design, the two designs are substantially similar to an "an ordinary observer." The definition of "substantially similar" is something of a gray area - not to the point where the two design have no perceptible differences necessarily, but enough that you feel confident the alleged infringing design taken as a whole copies the patented one. This really comes down to the advocacy skills of the respective attorneys and the jury itself.

As for prior art, Samsung will likely look to the LG Prada (imaged in the previous section), to show that the patent is invalid. This actually worked in a case in the Netherlands. However, the D'677 patent has already withstood a preliminary invalidity analysis from Judge Koh, which isn't exactly a good sign. Another hardware patent, the D'087 design patent, has successfully had its validity called into question by Samsung - though that patent focuses more on the shape of the entire iPhone device, not merely the front.

The LG Prada is definitely Samsung's strongest defense against the D'677 patent (in an attempt to prove invalidity), and my personal opinion is that it definitely constitutes prior art. As for the jury, we'll see what they have to say on the matter.

Design patents and trade dress both allow for the recovery of lost profits and unjust enrichment, and you can bet that the claims against the Samsung phones in this case make up the bulk of that $2.5 billion estimate (it's worth noting that doesn't even include the Galaxy S III, should Apple decide to go after it on trade dress or design patents [unlikely, in my opinion]).

The Sony Phone Defense

One of Samsung's much-publicized defenses to these design claims is that Apple "took the idea for the iPhone from Sony." And most people have read this to mean that Apple looked at the picture below, and out came the iPhone a year later.


Looks something like an iPhone, right? And I'd agree with you - it does (though really much more like the iPhone 4). But guess who drew up that design? No, not Sony. Apple did. An Apple designer was told to draw up a design for a "Sony-like" phone after an internal email was circulated that contained a link to a Newsweek interview with a Sony designer who made comments about coming up with a music player that was sleek, square, and lacked excessive ornamentation and many buttons. This isn't prior art - it's Apple's own design, and it was never made public.

Samsung's real argument is that the interview which was circulated containing photos of Sony's new Walkman is what constitutes a sort of prior art, because the Apple mockup took from the Sony design philosophy which then led to the iPhone. This is, to put it nicely, a stretch. Sorry, Samsung - you're better off pushing the Prada phone.

Apple has also asserted a number of software patents against Samsung, but these add up to a comparatively inconsequential $55 million or so in damages, and for the sake of brevity, I'm going to leave them out of this overview. They could also result in the issuance of injunctions, but these are at least injunctions Samsung could avoid with software changes (such as removing universal search).

Samsung's Claims Against Apple

Let me be frank: Samsung's counterclaims against Apple all kind of... suck. Samsung is doing the only thing it really can here, throwing out SEPs (standards essential patents) and a few other random patents of questionable value and hoping something sticks. The problem is that none of the SEPs can be asserted in a way where they're actually worth all that much money - SEPs have to be licensed on a "RAND" basis (reasonable and non-discriminatory), usually meaning a low royalty, and that means they also can't be used in a truly valuable way in litigation. Even if Apple is found to infringe, none of these patents are likely to result in injunctions. Samsung can claim royalties and past royalties.

Apple claims some of these SEPs are invalid because of certain standards-setting committee bylaws that it says Samsung violated, but I find Samsung's response to these allegations convincing - Apple is just confusing the issue. Apple likely violates at least some of these patents. The greater question is how much Samsung can charge for them, and the most likely answer here seems to be "not enough to make it worth Apple's while to settle." Apple has offered half a cent on each (which isn't to say this number is right, or even close to it). Samsung has asserted 3 non-SEP patents, as well. The problem is that none of them seem to be any good.

The '406 Patent

Here's the first one, the '406 patent. Why yes, that is a flip phone. Samsung is attempting to assert that this dumbphone method for taking and then sending photos through email is infringed by basically all of Apple's products, in essence claiming that Samsung owns the idea of taking a photo on a portable electronic device and sending it in an email over the internet. Yes, really. Samsung even refers to it in its own brief as a "camera phone patent." Samsung itself has had difficulty trying to figure out exactly how this patent is infringed, and this was their initial suggestion:

Samsung initially asserted that Apple infringes when a user employs the following series of steps: enter the Mail app and start a first email; return to the Home screen; enter the Photos app and start a second email including an image; return to the Home screen; enter the Camera app and display photos through the use of left and right arrows; return to the Mail app and send the first email; and return to the Photos app and send the second email.

Right. Samsung later clarified how the iPhone infringes it, but not after basically destroying its credibility with this ridiculous claim.

The '893 Patent

The next patent is over something so ridiculous that I almost feel bad for Samsung that its lawyers decided to drag it out. The '893 patent, as you can see, is a patent for digital cameras (as evidence by Figure 1). Once again, Samsung's patent relies on technology that operates in firmware-based "modes," rather than software (eg, apps), and this is the point Apple hammers on. Fact aside that this patent is being transposed onto a piece of technology it probably shouldn't cover in the first place (smartphones and tablets), the function it covers is so absurdly narrow I can't actually believe Samsung bothered to patent it.

The purpose of the patent (drumroll, please)... is to allow you to go back to the most recently viewed photo in a gallery or "reproduction mode" after coming back from the camera mode irrespective of the duration between switching modes. The biggest problem? Apple's products don't actually do that - they go to the most recently taken photo if the gallery apps gets pushed out of memory, meaning it is not irrespective of duration. Whoops. Even if the jury found this patent to apply to Apple's products (it's a big stretch), this is clearly just Samsung's attorneys not doing their homework on this one.

The '711 Patent

Samsung's final non-SEP patent is the '711 patent, which relates to background MP3 playback. The basic idea being patented is that a user can play back an MP3 file in an MP3 "mode" (again, that word appears to Samsung's detriment), and multitask while the MP3 continues playing. You'd think Samsung would have licensed this to literally everybody by now.

The issue is that the primary claim of Samsung's patent relies on one extremely narrow detail: ".... wherein the music background play object includes an application module including at least one applet." I'm not a programmer or a software engineer, but as I understand it (from Apple's developer library), iOS and Android don't use "applets." The app just keeps running, in the background - there's no "sub-app." Someone feel free to enlighten me on this one.

Apple asserts that Samsung has never actually identified any source code to support this claim, either, which isn't exactly encouraging.

Damages Issues

One of the most telling parts of Samsung's brief is the portion spent on disputing Apple's $2 billion unjust enrichment claim. 4 of the 22 pages of the brief are devoted to Samsung's argument against Apple's methodology for calculating unjust enrichment as to the design patents at issue. Specifically, Apple wants to claim the entire profit in each product deemed infringing of trade dress and or design patent rights. So, if a Samsung Galaxy S II yielded Samsung, on average, $200 of profit (minus cost of production, distribution, R&D), Apple wants all of that $200.

Samsung claims that the "design for a case" for a product like the iPhone or iPad is separable from the product itself - like the binding is separable from the contents of a book. That is, if Samsung infringes, it should only be required to disgorge the profits from the enclosures of its infringing products, not the "stuff" inside. This idea has some precedent in the 2nd Circuit (precedent of the worst kind - non-binding), but it seems previous hearings have indicated Judge Koh already decided she won't go for this argument, and a Samsung damages expert relying on this methodology has already had his testimony excluded as unreliable for that exact reason. There are clear reasons for such a position - no one (well, almost no one) would buy a Mercedes S-Class if it looked like a Kia Rio.

Appearance is extremely relevant and often inseparable from iconic products, and to say you could get around paying a hefty damages judgment by designing something that looked exactly like an iPhone but shared none of its internal elements just feels wrong, and we all know it.


There are definitely some strong defenses available to Samsung in this case. Unfortunately, their own arsenal of claims against Apple falls decidedly short. I would again refer everyone to the LG Prada (here's a super high-reso version of it) as one of Samsung's strongest contenders for invalidating Apple's iPhone design patents. The trade dress arguments, however, are much less clear. Apple makes a potentially compelling case for dilution, but even if the jury buys it, it's a big unknown how such a concept will stand up on appeal to the circuit court.

The most obvious loser for Samsung is probably the iPad trade dress and design patent claims. The prior art Samsung has dug up just isn't very convincing (the Fidler tablet is as close as they get, and even that has substantial differences). The saving grace is that the products accused of infringing on the iPad are at the end of their life cycles, so the impact (aside from damages) wouldn't be too large.

There's also the possibility all of my predictions will turn out wrong and Samsung will be cleared of any wrongdoing - we just don't know. Juries are total black boxes. As we watch the biggest and most important "Android vs. Apple" trial unfold over the coming weeks, some surprise evidence may yet come out, and we'll be sure to keep you in the loop if it does.