For those following the Apple v. Samsung design patent wars, here's a good synopsis of the oral arguments that were held this morning at the United States Supreme Court.

If the link doesn't work, cut and paste this in your browser:
http://www.theverge.com/2016/10/11/13241446/samsung-vs-apple-supreme-court-design-patents

Update: Full Transcript of Arguments: https://www.supremecourt.gov/oral_arguments/argument_transcripts/2016/15-777_1b82.pdf.

May 18, 2015: Today the Federal Circuit decided the appeal in the first Apple v. Samsung case, upholding a majority of Apple's damages award, namely, damages attributable to patent infringement.  However, the court reversed the damages attributable to trade dress protection, ultimately finding that Apple's uregistered trade dress in its older iPhones was functional and therefore not protectable under trade dress law:

Apple has failed to show that there was substantial evidence in the record to support a jury finding in favor of non-functionality for the unregistered trade dress on any of the [required] factors. Apple fails to rebut the evidence that the elements in the unregistered trade dress serve the functional purpose of improving usability. Rather, Apple focuses on the “beauty” of its design, even though Apple pursued both “beauty” and functionality in the design of the iPhone. We therefore reverse the district court’s denial of Samsung’s motion for judgment as a matter of law that the unregistered trade dress is functional and therefore not protectable.

Case Update: May 2012


In September of 2011, iCloud Communications filed a motion for a voluntary dismissal with prejudice of its trademark infringement suit against Apple's iCloud.  iCloud Communications has since changed its name to PheonixSoft and may not bring suit against Apple again for the same subject matter.

Original Post:


On Thursday, June 9, just one week after iCloud’s debut at the Apple Worldwide Developers Conference (WWDC), Apple was sued for trademark infringement in the iCloud mark. iCloud Communications, an Arizona-based company, has been using the iCloud name since 2005 in conjunction with its own cloud-based service. The company focuses primarily on VoIP solutions for business and residential customers but also provides cloud computing services for customers and asserts that it has spent significant amounts of money building the infrastructure to do this, as well as “tens of thousands of dollars” annually in advertising its cloud computing services. In its complaint iCloud Communications alleges that Apple willfully infringed on its mark, that this action is representative of a pattern of willful trademark infringement by Apple, and that this infringement has led to consumer confusion as to the origin of its services.

iCloud Communications asserts that Apple was either aware, or was willfully blind to its rights in the iCloud trademark and that this reflects a pattern by Apple of “act first, worry about the [trademark] consequences later.” The complaint cites other examples like the use of iPhone (similar to Cisco's iPhone), the iPad (to which a trademark application has been filed by Fujitsu Frontech North America), iAds (a trademark owned by Innovative Media Group), and now iCloud as evidence that Apple regularly tramples on the marks of others.

In addition, iCloud Communications has put forward a reverse confusion argument that "due to the worldwide media coverage given to and generated by Apple's announcement of its 'iCloud' services and the ensuing saturation advertising campaign pursued by Apple, the media and the general public have quickly come to associate the mark 'iCloud' with Apple, rather than iCloud Communications," causing irreparable harm to iCloud Communications’ trademark. The VoIP company also cites instances of actual confusion where consumers have called in to inquire whether the company is associated with Apple now.

This case is reminiscent of Dreamwerks Production, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998.) There the 9th Circuit held that DreamWorks studios reverse infringed on the trademarks of the smaller Dreamwerks company. Despite the fact that DreamWorks was a movie production studio, and Dreamwerks organized sci-fi conventions, the 9th circuit held that both companies belonged to the entertainment industry and that the “reasonably prudent consumer” would likely be confused as to the source of the service provided. In the case of the iCloud, both companies engage directly in cloud-computing services, adding to the apparent strength of a reverse confusion argument.

The twist here is that, although it has used the iCloud name for six years, iCloud Communications never registered the term as a trademark. Apple actually owns the rights to the iCloud trademark through registration at the USPTO. According to Cnet and USPTO records, Apple recently spent $4.5 million to acquire the iCloud.com domain and corresponding Federal trademark registration no. 3,744,821 from the Swedish cloud computing company Xcerion, and filed for additional trademark rights to the iCloud name in May 2011, listing various classifications, including one for "electronic storage of data, text, images, audio, and video; storage services for archiving electronic data; information and consultation in connection therewith." This is all very reminiscent of the now infamous Burger King dispute between the Burger King fast-food chain and the mom-and-pop Burger King restaurant in Mattoon, Illinois.

We’ll continue to follow the case and bring you updates.

Seven developers of iPhone applications, including the developers of games like Labyrinth and Mega Poker Online Texas Holdem, were sued on May 31, 2011, by Lodsys, a Texas company that had licensed its patents to Apple. Lodsys claims that its agreement with Apple did not give third-party developers free rein to use the patented technology. Less than two weeks later, on June 9, 2011, Apple filed a motion to intervene in the suit in an effort to protect its third-party software developers …and the substantial stream of revenue they generate for the company.

The main patent in question is U.S. Patent No. 7222078, "Methods and systems for gathering information from units of a commodity across a network" (the ‘078 patent). Lodsys had previously sent letters to the developers informing them that their apps violated its exclusive right in the ‘078 patent, and asking them for a small but not insignificant licensing fee. Lodsys threatened suit for non-compliance. Apple itself responded with a stern letter asserting that it had already licensed these patents and this license extended to its customers and business partners.

Despite Apple’s response Lodsys proceeded to file suit against the developers, saying that “Unfortunately for developers, Apple’s claim of infallibility has no discernible basis in law or fact.” Given that these are small independent app developers, and that patent suits are expensive to fight, Apple’s motion to intervene is welcomed by the defendants. Apple argues in its motion that it has the right to intervene because it has a vested interest in the property at issue, because the suit has “fundamentally disrupted Apple’s relationships with … developers, and places in jeopardy the revenue that Apple derives from those relationships,” and because independent developers “lack the resources to fully and fairly litigate the issue of whether Lodsys’s claims are exhausted” under the doctrines of first sale and exhaustion.

Further complicating the issue is the fact that Lodsys itself is being sued in the Northern District of Illinois. ForeSee results, an online survey company, is asking the court for declaratory judgment that four Lodsys patents, including the ‘078 patent in question in the Apple suit, are invalid. In what could be argued as a forum shopping technique, Lodsys is incorporated in Eastern Texas, apparently for the benefit of filing patent infringement suits there, but its allegedly sole employee actually operates out of Illinois. If a declaratory judgment against Lodsys were entered in Illinois before a trial ended in Texas, Apple and the developers could move to dismiss the lawsuit.

For further coverage see Ars Technica