Decision Date: May 18, 2015 -

Court: U.S. Court of Appeals for the Federal Circuit -

Patents: D593,087; D604,305; D618,677 -

Holding: Judgment of trade dress dilution REVERSED; judgment of patent validity and infringement AFFIRMED

Opinion: Apple sued Samsung in April 2011 for trade dress dilution and patent infringement. Apple’s asserted trade dresses and patents cover various features of Apple’s iPhone. After the district court reached a final judgment in favor of Apple, Samsung appealed to the Federal Circuit.

I. Trade Dresses -

The court first determined whether Apple’s asserted trade dresses — an unregistered trade dress and Trademark Registration No. 3,470,983 — are non-functional and therefore protectable. The court noted that it is “more difficult to claim product configuration trade dress than other forms of trade dress,” which framed the review of the two trade dresses. Apple argued nonfunctionality under the Disc Golf factors used in the Ninth Circuit: “(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.” Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1006 (9th Cir. 1998). But the court disagreed with Apple on each factor....