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Apple and Samsung: What's behind the patent fight

At issue: Just how far a person or company can go to patent a design

October 5, 2011 01:34 PM ET

Computerworld - Samsung took a step toward finding a kind of "pax tabletica" with arch-foe Apple in an Australian court last week, offering to remove features from its Galaxy Tab to avoid a court ban on sales of the device in that country. But what's really interesting about the case isn't the technical litigation, but the underlying attempt to define how much of a product's design is actually protected under existing, fragmented international laws.

The fight began in April, when Apple sued Samsung for allegedly copying Apple's tablet and smartphone designs. Shortly thereafter, Samsung countersued, and the battle was on.

In some ways, the various legal cases now pending between the two companies -- just today Samsung went after planned sales the iPhone 4S in Italy and France -- seem likely to force courts worldwide to make decisive judgments on just how far a person can patent a design.

Defining design protection

"Apple's complaint is notable because it also cites the overall product design and onscreen interface," said Ilya Kazi, Chartered Patent Attorney and partner at leading intellectual property advisors Mathys & Squire in London. These are sometimes called 'trade dress' issues as well as involving aesthetic designs.

"The original suit claims that Samsung's products infringe Apple's technical ('utility') patents relating to user interaction, specifically pinching, zooming, scrolling, and selecting," Kazi said. "Apple also accuses Samsung of breaching design patents, most notably the flat black face of the iPhone and iPad."

Samsung's unusual response to Apple's original U.S. lawsuit included citing as 'prior art' -- information already public before Apple's patent was filed -- a video device depicted in the film 2001: A Space Odyssey.

Samsung refers to a scene in the 1968 Stanley Kubrick classic where actors watch a TV news broadcast from what appears to be a digital newspaper and describes the scene as astronauts "using personal tablet computers." This is an attempt to limit what Apple can claim is unique to the iPad and is part of a global search for antecedents, according to patent law experts.

"I think it's fair to say this is the most high-profile design case we've ever had and this is really testing the system in these different countries, forcing them to make decisions on difficult issues about design," said Chris Carani, chairman of the American Bar Association's Industrial Designs Committee for 2011-13. He is also a patent attorney at Chicago-based IP law firm McAndrews, Held & Malloy.

The 1871 precedent

In the U.S., Apple must only satisfy a single requirement to prove its claim. This dates back to an 1871 decision in the Gorham v. Company v. White case. To show U.S. courts that a design patent has been abused, Apple must show that:

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