The CAFC upheld the District Court's refusal of relief on the iPhone designs (US design patents US D618,677 and D593,087) - but strengthened Apple's hand on validity in relation to the '087 patent. The effect of that leaves both iPhone designs looking probably valid and infringed at this stage of proceedings.
The more substantial issue arose in relation to validity of the iPad design US D504,889 (equivalent to RCD 181607-0001). This the District Court had held to be likely invalid over two references in combination (the "1994 Fidler Tablet" and the "Hewlett-Packard Compaq Tablet TC1000").
The CAFC held that they had wrongly assessed obviousness, and that the iPad design was likely valid over these citations. The majority referred the case back to the District Court to determine whether to grant an interlocutory injunction. O'Malley, dissenting on this point, would have granted an interlocutory injunction there and then, as there was a good case on validity, infringement and irreparable harm.
This appeal, like the successful Crocs appeal we reported last year, seems to indicate a new, more favourable approach to validity of designs following the Egyptian Goddess case. According to the Court, to assess obviousness of a design patent, there is a two stage enquiry:
- Firstly "one must find a single reference, 'a something in existence, the design characteristics of which are basically the same as the claimed design.'"
- Secondly, "other references may be used to modify [that single reference] to create a design that has the same overall visual appearance as the claimed design", but only "if they are 'so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other.'"
Finally, an interesting note concerning "design dilution" as irreparable damage suitable to found an interlocutory injunction. Apple complained that the District Court had rejected this out of hand, but the CAFC disagreed: "Contrary to Apple’s contention, however, that observation does not reflect a wholesale rejection of design dilution as a theory of irreparable harm, which we agree would have been improper. ... The district court’s opinion ... makes clear that it did not categorically reject Apple’s “design erosion” and “brand dilution” theories, but instead rejected those theories for lack of evidence at this stage of the proceedings." It therefore seems clear that design dilution could, with suitable evidence, be the basis of an interlocutory injunction even absent economic damage.