A court document shows that one of Apple’s main arguments in its accusations that Samsung is infringing on Apple’s design patents is that there is more than one way to design a smartphone or tablet, and that Samsung simply failed to do so. An expert design patent witness testifying on behalf of Apple argued that Samsung is wrong in claiming that the forms used by Apple for the iPad and iPhone are a product of their function, and he went so far as to describe several ways that Samsung could have avoided infringing on said patents.
The witness is Cooper C. Woodring, an “independent industrial designer and inventor” who has testified as en expert witness in more than 60 design patent lawsuits. Expert witnesses are usually hired by the side for whom they are testifying, and there are a variety of established procedures and protocols for who can be admitted as an expert witness.
In Mr. Woodring’s case, his resumé includes a two year stint as President of the Industrial Designers Society of America (from 1985-1986), and he earned a Bachelor’s in Industrial Design from the University of Kansas and a Master’s in Design from Cranbrook Academy of Art.
His arguments are best wrapped up with his succinct introductory argument, where he said, “Apple’s iconic designs were not dictated by their function. There is more than one way to design a working smartphone or tablet computer. Therefore, Apple’s designs are protectable under the design patent laws.”
Of course, he had to back up that assertion with his own facts and arguments. The main thrust of his arguments was to position Samsung’s own arguments as essentially (and massively paraphrased) coming down to the idea that they had no choice but copy Apple’s designs because, well, duh, that’s the only way to do it.
At the center of these two points of view is the way design patents work. The point of a design patent is protect ornamental design. If an aspect of a design is necessary for its function—the example cited as court precedent in the testimony is the flat side of a hammer head—it can not be protected by a design patent.
According to Mr. Woodring (we haven’t seen Samsung’s expert witness testimony), Samsung is trying to argue that the black face surrounding the screen is a product of function, and not an ornamental design, and that rounded corners, slots for speakers, and the other design aspects that Apple has protested are all examples of the only way things can be.
To squash this viewpoint, Mr. Woodring testified as follows:
For the iPhone design, alternative smartphone designs include: front surfaces that are not black or clear; front surfaces that are not rectangular, not flat, and without rounded corners; display screens that are more square than rectangular or not rectangular at all; display screens that are not centered on the front surface of the phone and that have substantial lateral borders; speaker openings that are not horizontal slots with rounded ends and that are not centered above the display screen; front surfaces that contain substantial adornment; and phones without bezels at all or very different looking bezels that are not thin, uniform, and with an inwardly sloping profile
For the D’889 [design patent for the iPad owned by Apple] tablet design, alternate tablet computer designs include: overall shapes that are not rectangular with four flat sides or that do not have four rounded corners; front surfaces that are not completely flat or clear and that have substantial adornment; thick frames rather than a thin rim around the front surface; and profiles that are not thin relative to the D’889 or that have a cluttered appearance.
He added, “The availability of so many different design choices confirms my opinion that any alleged function assigned to the individual Apple design elements called out by Mr. Sherman is not essential to the use of a tablet computer or smartphone and could not have dictated the particular design of these elements of the Apple iPhone and D’889 tablet design.”
One of the most salient examples he used was for the black edge surrounding the display, as seen on the iPad. Mr. Woodring argued, “Mr. Sherman states that a black surface provides a number of functions, such as hiding the electronic components underneath. As indicated above, a number of white phones have been sold commercially, including by Samsung itself.”
The images below are of Apple’s iPad 2 (top), and Samsung’s Galaxy Tab 10.1 (bottom) and Galaxy Tab 10.1N. The 10.1N was a modified version of the Galaxy Tab introduced by Samsung in November (after this testimony was filed in the U.S.) for the German market as an effort to overcome an import ban Apple won, and it includes some of the very changes suggested by Mr. Woodring.
Note that the images we chose are not presented to scale.
Samsung Galaxy Tab 10.1N (top) and Samsung Galaxy Tab 10.1 (bottom)
The testimony was filed on October 13th, 2011, and were just recently released. Apple and Samsung have both worked hard to keep as much of the testimony and evidence as has been possible filed under seal and kept secret. Even this one document that was released includes substantial passages that have been redacted.