The Power of Portfolio: Strong Design Patents III

Editor’s note:  This is the third in a four part series on Strong Design Patents. 

In this series, we are looking at Apple’s design patents and their strategies for using them to protect the iPhone from being copied.  In the first two articles, we looked at The Power of The Broken Line, and The Power of Color.  In this article we are looking at the The Power of Portfolio.  In the patent industry, a “portfolio” is a grouping of patents that each protect different aspects of the same invention.   Patents are like shingles on a roof, there needs to be some overlap between them to provide complete protection.

On January 9, 2007, Steve Jobs introduced the iPhone to the world.  It was an historic event.  He was immensely proud of what Apple had accomplished and he made it clear he was going to defend it.  Steve was passionate about both style and technology, so when he said “Boy have we patented it” he meant both design and utility patents.  We are focusing on design.

Four days before Steve Jobs introduced the iPhone, Apple[i] filed a suite of four design patents, each covering a defining aspect of the design.  This was the beginning of their portfolio.  D558,757 covered the basic shape (flat box with rounded edges);  D558,756 covered the features (screen, connectors, buttons…); D580,387 covered the surface finish (glass-like); and D558,758 covered the color (black, silver…)  The timing of these filings was critical.  They had to be filed before the phone was shown to the pubic but not so early that the design would change.  What was unusual about Apple’s filings was that while most companies would file design patents one to two months prior to an initial public showing, Apple’s decision to file a mere four days before the product was introduced, showed that they were willing to take risks on missing their deadline in order to make sure their design patents matched as closely as possible what they were going to show.

Another notable point is that Apple didn’t stop building their portfolio with the initial suite of filings – called “parent” applications.  Within months they began to refile their cases (“child” applications) with more generic images seeking broader coverage.  This further strengthened their total portfolio.

As we discussed in The Power of the Broken Line, Apple’s refiled cases broadened the coverage of their original filings by converting solid lines in the images to broken lines.  The broken line elements then became optional, and a competitor would only have to match the solid lines to have infringement.  The parent patent in the figure above, D580,387, has a flat face, rounded bezel and rounded back, all shown as solid lines.  To infringe that patent, a competitive phone must match all of the solid lines.  However the child patent, D593,087, is broader in that only the flat face and rounded bezel are shown as solid lines.  The rounded back is a dotted line and a competitor would not need to match it for infringement.  The grandchild patent, D618,678, is even broader since both the back and bezel are dotted lines.  Only the front face would need to match a competitive device for there to be infringement[ii].

Another fascinating element of this case is that the patent examiner was initially reluctant to allow Apple to broaden its child applications with broken lines in the child application since the original parent filings only showed these features as solid lines.  Apple refiled the case again and the examiner relented and allowed the new dotted lines.  It’s not exactly clear why.  This situation demonstrates that Apple may be smart and aggressive, but they are not perfect.  It would have been better if their original filing had all of the different combinations of solid and broken lines that they wanted to protect.

Broadening coverage by refiling cases has been a very effective strategy for Apple.  The child patent, D593,087, was one of the patents they successfully enforced against Samsung at trial.  The grandchild patent, D618,678, is currently being asserted against Samsung at the US International Trade Commission.   To add to the complexity of this case, an unknown third party has filed a request for reexamination at the USPTO for D618,678 [iii]asserting that this  design would have been obvious in light of several similar Japanese phone designs that had not been considered before.  If the patent survives the reexamination challenge, then the reexamination could actually strengthen Apple’s portfolio since this patent will have been more severely tested.  On the other hand if this patent has difficulty getting allowed again, then the portfolio will be weakened in the eyes of the public while Apple pursues its appeals.  An ultimate final determination of invalidity could take years given the numerous levels of appeal Apple has available.

As impressive as Apple’s portfolio is for the shape of the iPhone, it pales in comparison to their extensive and growing portfolio design patents for the iPhone graphical user interfaces and icons.  The iPhone was first sold to the public in June of 2007, five months after Steve Jobs’s announcement.  Six days before the sales began, however, Apple filed a massive color design patent with 193 screen shots of various iPhone graphical user interfaces and icons.  These are shown in the figure above.  All of these images received the June 23 filing date, but only one[iv] could be used for the patent that would issue from this original filing.  This requirement to select a single image or closely related family of images from an initial filing of multiple images is called a “restriction requirement”.  The advantage of filing multiple images in one patent application is that you only pay one filing fee and you can string out the patents on the rest of the images for several years.  Apple picked the home-screen image circled in the figure above for this first design patent, D604,305.  The rest of the images are being refiled as additional child, grandchild, great-grandchild, etc. patents.  Each patent will be valid for 14 years from the date it issues but get the original June 23, 2007 filing date.  About 50 patents have issued so far, and about 10 are currently pending.  Patents on the rest of the images may or may not be filed in the future.  Apple can keep refiling new cases as long as at least one of the earlier child cases is still pending and as long as they don’t introduce “undue delay” in the process.  With each generation taking 1 to 2 years in the patent office, this process could literally continue for another 100 years. [v]  Meanwhile Apple has asserted the initial D604,305 patent against Samsung and received a $725 million jury verdict for patent infringement.

Because they can afford to spend tens or hundreds of millions of dollars on worldwide policing of their patents, Apple is pushing the edge of the envelope in terms of creating an extensive design patent portfolio by aggressively claiming every aspect of their designs, and litigiously enforcing their patent rights.  However, the small to medium sized enterprise (SME) needs to be more careful about how to spend money.  In our next article “The Power of Policing” we will turn our attention to the SMEs.  We will present the case of Olloclip, makers of a 3-in-1 iPhone photo lens that was launched on the crowdfunding site Kickstarter two years ago.  Olloclip’s sales grew fast, but counterfeits showed up within a month of their launch, and they have had to scramble ever since to enforce their rights.  Olloclip’s story is illuminating for any SME bringing a design based product to market.