A leading design patent expert predicts that Apple (NSDQ: AAPL) will be unable to stop Samsung from selling its Galaxy tablet in the United States in the near future, and says the press has misunderstood a dramatic moment in the patent trial taking place between the tech giants. Court filings unsealed this week in California suggest he is right.
Recall that, in October, U.S. District Judge Lucy Koh waved two tablets in the air and asked Samsung’s attorney if he could tell which was the Galaxy and which was the iPad. The attorney replied “not at this distance, your Honor.” News agencies soon suggested the episode meant Apple had gained the upper hand in its global tablet fight with Samsung which it has accused of “slavishly copying” its designs.
It turns out the tablet-waving episode may not matter after all. According to Christopher V. Carani, who is chair of the American Bar Association’s Design Rights committee, the crucial moment at the hearing came later when Judge Koh referred to a Knight-Ridder tablet from 1994 and remarked “I think that invalidates” the Apple patent. He set out his thoughts in an article (embedded below) that is circulating widely among intellectual property lawyers:
One major story line that was unreported in the aftermath of the preliminary injunction hearing was Koh’s statement regarding the validity of the iPad design patent. In short, and without parsing words, Koh stated that she thinks that the iPad design patent is invalid. When Samsung’s counsel was raising a prior art reference, specifically the ”1994 Knight-Ridder” tablet prototype, Koh interjected, ”I think that invalidates the ’889 . . .”
This is significant not only because it is a blow to Apple but because it reflects Samsung’s defense strategy. According to Carani, Samsung does not plan on persuading the court that it didn’t infringe the iPad design but is instead focusing on knocking down Apple’s patents altogether on the grounds they are obvious. In other words, even if Samsung did “slavishly copy” the look of the iPad, it doesn’t matter because Apple can’t have a patent right to that design.
A court filing unsealed on Tuesday shows that Samsung’s primary argument is indeed based on showing that the iPad design is obvious. According to Samsung:
In 1994, the publisher Knight-Ridder produced and distributed a video that showed such a device with many of the elements embodied in Apple’s later D’889 patent application, including an overall rectangular shape with four evenly rounded corners, a flat clear surface on the front of the device, a rim surrounding the front surface, a substantially flat back panel that rounds up near the edges to form the rim around the front surface, and a thin form factor. Apple failed to disclose this device to the PTO during the D’889 patent’s prosecution, even though Apple
knew of its existence directly from Dr. Fidler, with whom Apple worked.
The Knight-Ridder tablet can be seen in this video (executives at the former newspaper chain must be kicking themselves..)
To succeed at the preliminary injunction stage — which is where the case is now — Apple will have to show there is a likelihood it will ultimately succeed on the question of whether the iPad design is obvious when set beside the Knight-Ridder tablet and other existing designs. If Apple fails to do so, it could still win at the trial stage. At law, a patent is invalid if the invention it describes is not new or if it would be considered obvious at the time the patent was filed.
The Apple-Samsung litigation has been charging around the globe as Apple fights to preserve its current dominance in the tablet market. Yesterday, an Australian court lifted an earlier injunction on the sale of Galaxy products. (UPDATE: Reuters (NYSE: TRI) reported late Thursday that the Aussie ban has been reimposed until at least next week).