An 1871 Supreme Court decision’s role in the epic Apple v. Samsung lawsuit

The epic court battle between Apple and Samsung over patent rights for computer tablets and phones is likely heading to an appeal, partially based on a Supreme Court precedent involving silverware.

Gorham silver

Apple won a big victory over Samsung on Friday night, as a jury awarded Apple more than $1 billion in damages in a U.S. district court in San Jose. The decision could stop sales of Samsung’s Galaxy line of tablets and smartphones.

In an old-school twist, the foundation for a key part of the decision was an 1871 Supreme Court ruling on pattern designs in Gorham silverware.

Apple wanted $2.5 billion (yes, that is billion with a “B”) from Samsung for allegedly swiping the design patents for its iPad and iPhone devices as the basis for the Samsung Galaxy line of tablets and phones.

In a key finding, the jury said Samsung infringed on Apple’s pattern design used in its iPhones and iPads. The long-established test for design patent claims is the Court’s 1871 ruling in Gorham Co. v. White.

Samsung said immediately it would appeal the verdict.

“It is unfortunate that patent law can be manipulated to give one company a monopoly over rectangles with rounded corners, or technology that is being improved every day by Samsung and other companies,” the company said in a statement.

In the end, the U.S. Supreme Court is the arbitrator of all patent battles, and although it infrequently rules on such cases, its decisions can have a big economic and social impact.

In this case, the global market for smartphones and tablets is valued at about $220 billion.

The court’s ruling in 1853 of a case involving Samuel Morse’s patent for the telegraph established the tone for these wide-reaching decisions.

In the case of O’Reilly v. Morse, the Supreme Court ruled that abstract ideas weren’t subject to patents, in an opinion from Chief Justice Roger Taney.

In March 2012, the modern Supreme Court cited the 1853 decision in another patent case. In Mayo Collaborative Services v. Prometheus Laboratories, the Supreme Court rejected a patent claim for medical tests.

Former Wall Street Journal publisher Gordon Crovitz put the Mayo Collaborative Services case in perspective in an opinion piece called “Could Morse Have Patented the Web?

“Under today’s looser standards, Morse should own the Web. Companies now seek patents for the slimmest of ideas,” writes Crovitz. “The patent explosion began in the mid-1990s, when the U.S. Court of Appeals for the Federal Circuit ended the requirement that patents specifically define inventions. Now, business processes and algorithms are routinely patented, making it hard to innovate with products like mobile devices without running the risk of violating numerous patents.”

The legacy of Steve Jobs

In Mayo Collaborative Services, Justice Stephen Breyer wrote that Einstein and Archimedes couldn’t have patented their ideas under our legal system.

But in the case of Apple and Samsung, the person in question is Steve Jobs.

Jobs is listed as the co-inventor of the design patent for the iPhone and the iPad. Apple famously lost a court case against Microsoft over copyright infringement involving Windows (this was during Jobs’ time away from Apple).

Apple’s appeal in the Windows case wasn’t heard by the U.S. Supreme Court.

The important distinction between the cases involving Samuel Morse and Steve Jobs is that Morse has a utility patent for the telegraph, while Jobs had a design patent for his iPhone and iPad.

Evidence in the current case included a five-page design document drawn up by Jobs and others that shows the layout of the iPad. It includes a crucial sentence that alludes to a pair of Supreme Court cases: “We claim the ornamental design for an electronic device, substantially as shown.”

In 1871, the Supreme Court ruled on a design patent case about designs on silverware in Gorham Co. v. White. And in 1886, the Court issued a ruling about fines in such cases in Dobson v. Dornan, in a decision about ornamental designs on carpets.

A key component of Apple’s case against Samsung is the “ordinary observer” test that dates back to the 1871 Supreme Court Gorham decision.

That test still holds true today, and it states that if the designs of two products look “substantially the same” to an “ordinary observer,” then there has been a design patent infringement.

The other key test is if the design elements in question are primarily ornamental, and not driven by function.

The case will now proceed through the appeals process, unless the two sides can agreement on a settlement.

That seems very unlikely, given the animosity in court.

Jobs publicly swore to destroy any company he believed infringed on Apple’s patents. (The judge in the current case wouldn’t allow Jobs’ published comments to be read in court.)

The U. S. Court of Appeals for the Federal Circuit is usually the final arbitrator in patent design cases. The U.S. Supreme Court hasn’t heard a patent design case since the 1871 Gorham decision.

In September 2008, all 13 judges met in the Federal Circuit court to rule on a case involving a design patent dispute involving a fingernail buffer. The judges’ high-profile decision made it easier for claimants to prove patent violations.

The Supreme Court heard three patents cases in its last term about utility patents.

But if the Apple vs. Samsung case eventually gets sent to the high court for consideration, its decision on granting a review could either confirm the Federal Circuit as the final decider for all design patent cases, or open the door for new precedents.

Scott Bomboy is the editor-in-chief of the National Constitution Center.

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