To understand how I reached that decision, beyond what I mentioned above, it is important to start with case law dating back to 1893, specifically Smith v. Whitman Saddle Co., 148 U.S. 674, respectively.
The Whitman Saddle case involved a patent on a design for a saddle. During its ruling, the court emphasized the importance of “invention” to the patentability of a design; it stated, “Mere mechanical skill is insufficient. There must be something akin to genius, an effort of the brain as well as the hand. The adaptation of old devices or forms to new purposes, however convenient, useful, or beautiful they may be in their new role, is not invention.” (148 U.S. at 679) The Court then explained (id.):
"The exercise of the inventive or originative faculty is required, and a person cannot be permitted to select an existing form, and simply put it to a new use, any more than he can be permitted to take a patent for the mere double use of a machine. If, however, the selection and adaptation of an existing form is more than the exercise of the imitative faculty, and the result is in effect a new creation, the design may be patentable."
In the case before it, the court characterized the patented saddle design as a combination of elements from two saddle designs that were well known in the art. The court explained that the patented design consisted of a combination of the front half of the so-called Granger saddle and the back end of the so-called Jenifer saddle. The design differed from a simple combination of the two known saddles, according to the court, only in that the front end of the design had “a nearly perpendicular drop of some inches at the rear of the pommel,” unlike in the Granger saddle. (Id. at 680)
Although the trial court, sitting in equity, concluded that the design was patentable, the Supreme Court disagreed. The court wrote, “Nothing more was done in this instance (except as hereafter noted) than to put the two halves of these saddles together in the exercise of the ordinary skill of workmen of the trade, and in the way and manner ordinarily done.” (148 U.S. at 681) The court noted that there was a difference between the pommel of the designed saddle and the pommel of the Granger saddle, and it added that the “shape of the front end being old, the sharp drop of the pommel at the rear seems to constitute what was new and to be material.” Id. at 682. That feature, however, was not present in the defendants’ saddle. The court then concluded with the following remarks (id.):
"If, therefore, this drop were material to the design, and rendered it patentable as a complete and integral whole, there was no infringement. As before said, the design of the patent had two features of difference as compared with the Granger saddle, one the cantle, the other the drop; and unless there was infringement as to the latter there was none at all, since the saddle design of the patent does not otherwise differ from the old saddle with the old cantle added, an addition frequently made. Moreover, that difference was so marked that in our judgment the defendant’s saddle could not be mistaken for the saddle of the complainant."
Since Whitman Saddle was an action in equity, the court did not distinguish sharply between its analysis of patentability and its discussion of infringement. Within the same passage, it moved from stating that it could not agree with the trial court that the design in issue was patentable to the conclusion that if the design were patentable because of the drop at the rear of the pommel, there was no infringement. The point the court was making was that, viewed in light of the similarities between the prior art and the patented design, the accused design did not contain the single feature that would have made it appear distinctively similar to the patented design rather than like the numerous prior art designs. For that reason, it held, the accused design did not infringe.
Subsequent cases applied that principle, interpreting the ordinary observer test of Gorham Co. v. White, 81 U.S. 511 (1871), to require that the perspective of the ordinary observer be informed by a comparison of the patented design and the accused design in light of the prior art, so as to enable the fact-finder to determine whether the accused design had appropriated the inventiveness of the patented design. For example, two cases decided in the wake of Whitman Saddle shed light on the Supreme Court’s analysis in Whitman Saddle and illustrate the application of the ordinary observer test in light of the prior art.
In the first of those cases, Bevin Brothers Manufacturing Co. v. Starr Brothers Bell Co., 114 F. 362 (C.C.D. Conn. 1902), the patent drawing showed an oblate spheroid and neck, and the claim covered “a bell as herein shown and described.” Sitting in equity, the court addressed both validity and infringement, noting that the test of identity on both issues “is the eye of the ordinary observer.” Id. at 363. After noting that the patented form was commonly found in a variety of prior art structures, the court held that the “defense of want of patentable novelty is sustained.” Id. As for infringement, the court again consulted particular objects in the prior art having a similar shape, including a door knob, and concluded that “[t]he shape of the defendant’s bell differs from plaintiff’s more widely than plaintiff’s differs from the door knob, and therefore defendants’ construction does not infringe the patent.” Id. Thus, the court’s approach, like that of the Supreme Court in Whitman Saddle, did not employ a point of novelty test, but invoked the ordinary observer test in which the observer was comparing the patented and accused designs in the context of similar designs found in the prior art.
The second case, Zidell v. Dexter, 262 F. 145 (9th Cir. 1920), cited Whitman Saddle for the proposition that under the ordinary observer standard, a patented design that consists “only of bringing together old elements with slight modifications of form” is not infringed by “another who uses the same elements with his own variations of form . . . if his design is distinguishable by the ordinary observer from the patented design.” Id. at 146. The court emphasized the importance of similar prior art designs to the determination of infringement under the ordinary observer test:
"The evidence shows that at and prior to the conception of this design there were in use and on sale very many similar garments, with variations in design so slight as to leave to the ordinary observer the impression of a very general resemblance, and we must assume that to womankind, who are the purchasers in the main of this class of garment, these various coincident forms of garments were known, and whether such purchasers would be deceived into taking the garments which are alleged to infringe for a garment of the patented design would necessarily depend largely upon that general knowledge."
(Id. at 147)
Some years later, the Sixth Circuit addressed a similar issue in a case involving a design patent on a combination ash tray and electric lighter. Applied Arts Corp. v. Grand Rapids Metalcraft Corp., 67 F.2d 428 (6th Cir. 1933). The district court found infringement by two of the defendant’s designs upon finding that the resemblance between the patented design and the accused design was such as to deceive the ordinary observer. In analyzing the case, the court addressed the question whether the ordinary observer test of Gorham was in conflict with the principle that “similitude of appearance is to be judged by the scope of the patent in relation to the prior art.” (Id. at 429) The court explained that the ordinary observer of the Gorham test was not one “who has never seen an ash tray or a cigar lighter, but one who, though not an expert, has reasonable familiarity with such objects,” and is capable of assessing the similarity of the patented and accused designs in light of the similar objects in the prior art. (67 F.2d at 430) Viewing the ordinary observer test in that manner, the court stated:
"[W]hile there is some similarity between the patented and alleged infringing designs, which without consideration of the prior art might seem important, yet such similarity as is due to common external configuration is no greater, if as great, between the patented and challenged designs as between the former and the designs of the prior art."
(Id.) After noting the similarities between the patented design and the prior art designs, the court concluded that the differences between the two “are no greater than those that exist between the patented design and the alleged infringing designs.” Accordingly, the court concluded, assuming the patent to be valid “it is quite clear it is entitled to a very limited interpretation and that so limited the defendant’s designs do not infringe.” Id. The court ruled that while it was aware that similarity “is not to be determined by making too close an analysis of detail,” nonetheless, “where in a crowded art the composite of differences presents a different impression to the eye of the average observer (as above defined), infringement will not be found.” (Id.)
That precedent was followed by the Eighth Circuit in Sears, Roebuck & Co. v. Talge, 140 F.2d 395 (8th Cir. 1944). The district court in that case held that the defendant’s home fruit juicer infringed the plaintiff’s patents on fruit juicer designs. The court stated that the test for design patent infringement involves two elements: (1) “the identity of appearance, or sameness of effect as a whole upon the eye of an ordinary purchaser must be such as to deceive him, inducing him to purchase one, supposing it to be the other” and (2) “the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art.” (Id. at 395-96) To make the latter determination, the court explained, “requires a comparison of the features of the patented designs with the prior art and with the accused design.” (Id. at 396) By examining the prior art fruit juicers, the court was able to identify the “novel elements embodied in the [patented] design.” The court then determined that there was no identity of appearance with respect to those elements between the claimed designs and the accused products. (Id.)
To summarize, in Bevin Brothers and Zidell, the courts emphasized that the defendant’s product would appear different from the plaintiff’s protected design to an ordinary observer aware of the great number of closely similar prior art designs. In Applied Arts, the accused ash tray would not appear to be the same as the claimed ash tray as long as “similitude of appearance is [...] judged by the scope of the patent in relation to the prior art.” (67 F.2d at 429) And in Sears, Roebuck, the court concluded that the accused fruit juicer would not appear similar to the claimed design if the fact-finder performed the required “comparison of the features of the patented designs with the prior art and with the accused design.” (140 F.2d at 396)
Now, based upon all of this information, I reached the following conclusions:
- In close cases, it can be difficult to answer the question whether one thing is like another without being given a frame of reference. Nevertheless, the context in which the claimed and accused designs are compared, i.e., the background prior art, provides such a frame of reference and is therefore often useful in the process of comparison; further, those designs highlight the distinctions between the claimed design and the accused design as viewed by the ordinary observer.
- Since Apple's design patents do not outline articles that strongly resemble those before patented it, along with the intricacies they contain, I found, as I noted above, and possibly the courts will too, that they are unique enough (even though they describe incredibly "simplistic" packages/layouts) to deserve a patent and will likely pass the "ordinary observer" test.