DCT
1:23-cv-08598
Shunock v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Michael Shunock (Ontario, Canada)
- Defendant: Apple, Inc. (California)
- Plaintiff’s Counsel: Selendy Gay Elsberg PLLC
- Case Identification: 1:23-cv-08598, S.D.N.Y., 09/29/2023
- Venue Allegations: Plaintiff alleges venue is proper because Apple has several established places of business in the Southern District of New York, transacts business in the district, and has committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that the "Activity Rings" graphical user interface on Defendant's Apple Watch and iPhone products infringes seven design patents that claim ornamental designs for displaying progress with concentric rings.
- Technical Context: The technology at issue falls within the domain of graphical user interfaces (GUIs) for wearable and mobile electronic devices, specifically for the visualization of personal activity and health-related data.
- Key Procedural History: The complaint alleges that Plaintiff presented his designs to Apple at a meeting in August 2013. The asserted patents, which issued in 2022, claim the benefit of a U.S. patent application filed on April 9, 2014. The complaint alleges this effective filing date predates Apple's earliest known design patent application for its "Activity Rings" feature. Plaintiff alleges providing Apple with notice of infringement in June 2023, approximately three months prior to filing suit.
Case Timeline
| Date | Event |
|---|---|
| 2012-07-05 | Plaintiff files international PCT Application |
| 2013-08-30 | Plaintiff allegedly meets with Apple and shows designs |
| 2014-04-09 | Plaintiff files U.S. National Stage Application |
| 2014-09-02 | Apple allegedly files its first design patent for Activity Rings |
| 2014-09-09 | Apple announces the Apple Watch product |
| 2015-04-24 | Apple commercially launches the first-generation Apple Watch |
| 2017-07-07 | Plaintiff sends Apple a trademark demand letter |
| 2022-07-05 | Seven asserted U.S. Design Patents issue to Plaintiff |
| 2022-09-16 | Apple's iOS 16 release makes Activity Rings available on iPhones |
| 2023-06-26 | Plaintiff sends Apple notice of patent infringement |
| 2023-09-29 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D956,802 - “Display Screen with Graphical User Interface,” issued July 5, 2022 (’D802 Patent)
The Invention Explained
- Problem Addressed: The complaint alleges that the underlying invention provides a visual method for displaying information related to qualitative measures, such as user ratings or the popularity of a product across different audiences (Compl. ¶18).
- The Patented Solution: The ’D802 Patent claims the specific ornamental design for a graphical user interface as depicted in its FIGURE ('D802 Patent, Claim; FIGURE). The design consists of a set of concentric, incomplete circular arcs intended to provide an at-a-glance representation of data, such as progress toward a goal (Compl. ¶3). The design is presented in the context of a "System and Method for Annotating Images" (Compl. ¶¶ 2, 16).
- Technical Importance: This type of visual representation allows for the intuitive display of multiple data sets simultaneously, which is particularly useful on the small screens of wearable devices (Compl. ¶5).
Key Claims at a Glance
- Design patents contain a single claim. The claim of the ’D802 Patent is for "The ornamental design for a display screen with graphical user interface, as shown and described." ('D802 Patent, Claim).
- The claimed design, shown in solid lines in the patent's FIGURE, consists of two concentric, incomplete arcs of uniform width with rounded ends, positioned around a central point.
- Portions of the FIGURE shown in broken lines, such as the display screen boundary and other graphical elements, are for illustrative purposes and form no part of the claimed design ('D802 Patent, Description).
U.S. Design Patent No. D956,803 - “Display Screen with Graphical User Interface,” issued July 5, 2022 (’D803 Patent)
The Invention Explained
- Problem Addressed: As with the ’D802 Patent, the design is presented as a visual method for displaying qualitative or quantitative data (Compl. ¶18).
- The Patented Solution: The ’D803 Patent claims a distinct ornamental design for a GUI ('D803 Patent, Claim). This design is a variation of the same visual theme, using concentric arcs to represent information (Compl. ¶73). The underlying utility concept is described as a system for annotating images with data (Compl. ¶16).
- Technical Importance: The design offers an alternative visual configuration for displaying multiple progress metrics in a compact and easily understood format on a small electronic screen (Compl. ¶5).
Key Claims at a Glance
- The single claim is for "The ornamental design for a display screen with graphical user interface, as shown and described." ('D803 Patent, Claim).
- The claimed design, shown in solid lines in the ’D803 Patent's FIGURE, consists of three concentric, incomplete arcs of uniform width with rounded ends.
- Broken lines in the FIGURE are disclaimed and not part of the protected design ('D803 Patent, Description).
Multi-Patent Capsule: U.S. Design Patent No. D956,804 (’D804 Patent)
- Technology Synopsis: This patent protects another ornamental design for a GUI within the same family. The design uses the same visual motif of concentric shapes to represent data or progress (Compl. ¶¶ 84-85).
- Asserted Claims: The patent's single claim covers the ornamental design as shown, which depicts one solid-line incomplete arc and one solid-line full circle ('D804 Patent, FIGURE).
- Accused Features: The complaint alleges that Apple's "Activity Rings" feature infringes the ’D804 Patent's design (Compl. ¶83).
Multi-Patent Capsule: U.S. Design Patent No. D956,805 (’D805 Patent)
- Technology Synopsis: This patent protects another ornamental GUI design using concentric arcs to visualize data (Compl. ¶¶ 95-96).
- Asserted Claims: The patent's single claim covers the ornamental design as shown, which depicts two concentric, solid-line incomplete arcs of different lengths ('D805 Patent, FIGURE).
- Accused Features: The complaint alleges that Apple's "Activity Rings" feature infringes the ’D805 Patent's design (Compl. ¶94).
Multi-Patent Capsule: U.S. Design Patent No. D956,806 (’D806 Patent)
- Technology Synopsis: This patent protects another ornamental GUI design based on the concentric arc motif for displaying progress information (Compl. ¶¶ 106-107).
- Asserted Claims: The patent's single claim covers the ornamental design as shown, which depicts two concentric, solid-line incomplete arcs ('D806 Patent, FIGURE).
- Accused Features: The complaint alleges that Apple's "Activity Rings" feature infringes the ’D806 Patent's design (Compl. ¶105).
Multi-Patent Capsule: U.S. Design Patent No. D956,807 (’D807 Patent)
- Technology Synopsis: This patent protects another ornamental GUI design using concentric shapes to represent data (Compl. ¶¶ 117-118).
- Asserted Claims: The patent's single claim covers the ornamental design as shown, which depicts two concentric, solid-line incomplete arcs and one smaller, solid-line full circle inside them ('D807 Patent, FIGURE).
- Accused Features: The complaint alleges that Apple's "Activity Rings" feature infringes the ’D807 Patent's design (Compl. ¶116).
Multi-Patent Capsule: U.S. Design Patent No. D956,808 (’D808 Patent)
- Technology Synopsis: This patent protects another ornamental GUI design from the same family, using the concentric arc visual metaphor (Compl. ¶¶ 128-129).
- Asserted Claims: The patent's single claim covers the ornamental design as shown, which depicts three concentric, solid-line incomplete arcs ('D808 Patent, FIGURE).
- Accused Features: The complaint alleges that Apple's "Activity Rings" feature infringes the ’D808 Patent's design (Compl. ¶127).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Apple's "Activity Rings" graphical user interface as featured on all generations of the Apple Watch and on iPhones (dating to the 8th generation) running iOS 16 or later (Compl. ¶¶ 51-53).
Functionality and Market Context
- The "Activity Rings" feature is a core component of the Apple Watch user experience, providing a visual representation of a user’s daily progress toward three distinct activity goals: moving, exercising, and standing (Compl. ¶¶ 5, 32). As a user makes progress, the corresponding colored ring "fills" and animates, with the goal being to "close" all three rings by the end of the day (Compl. ¶32). The complaint provides an image from Apple's promotional materials encouraging users to "Close Your Rings." (Compl. p. 12, ¶33).
- The complaint alleges the design is central to Apple's marketing for the Apple Watch and related services like Apple Fitness+ (Compl. ¶¶ 31, 35). A screenshot from the Apple Watch User Guide shows the Activity Rings integrated into a workout display on the Fitness+ service (Compl. p. 13, ¶35).
- The complaint asserts that Apple has generated over $161 billion in revenue from products that feature the "Activity Rings" design (Compl. ¶8).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether, in the eye of an ordinary observer, the accused design is substantially the same as the claimed design, such that the observer would be deceived into purchasing one supposing it to be the other.
’D802 Patent Infringement Allegations
The complaint provides a three-panel image comparing the original patent figure, an annotated version with non-claimed elements removed, and the accused Apple Activity Ring design (Compl. p. 22, ¶61).
| Claim Element (from the design "as shown") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A plurality of concentric arcs and circles | The accused Activity Rings feature is comprised of a plurality of concentric rings that function as arcs. | ¶62(a) | ’D802 Patent, FIGURE |
| Rounded ends | The ends of the incomplete rings in the accused design are rounded. | ¶62(b) | ’D802 Patent, FIGURE |
| Uniform width | The rings in the accused design are of a uniform width. | ¶62(c) | ’D802 Patent, FIGURE |
| Curving around a fixed, center circle | The rings in the accused design curve around a central point on the display. | ¶62(d) | ’D802 Patent, FIGURE |
| Varying in length to indicate progress towards a measurable goal | The rings in the accused design vary in length as they fill up, indicating the user's progress toward completing an activity goal. | ¶62(e) | ’D802 Patent, FIGURE |
- ’D803 Patent Infringement Allegations
| Claim Element (from the design "as shown") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A plurality of concentric arcs and circles | The accused Activity Rings feature is comprised of a plurality of concentric rings that function as arcs. | ¶73(a) | ’D803 Patent, FIGURE |
| Rounded ends | The ends of the incomplete rings in the accused design are rounded. | ¶73(b) | ’D803 Patent, FIGURE |
| Uniform width | The rings in the accused design are of a uniform width. | ¶73(c) | ’D803 Patent, FIGURE |
| Curving around a fixed, center circle | The rings in the accused design curve around a central point on the display. | ¶73(d) | ’D803 Patent, FIGURE |
| Varying in length to indicate progress towards a measurable goal | The rings in the accused design vary in length as they fill up, indicating the user's progress toward completing an activity goal. | ¶73(e) | ’D803 Patent, FIGURE |
- Identified Points of Contention:
- Scope Questions: A primary question is whether the accused three-ring design is "substantially the same" as patented designs claiming different numbers of rings (e.g., the two arcs of the ’D802 Patent). The analysis may turn on whether the "overall visual impression" is the same, despite this difference in the number of elements. The complaint argues any differences are "insignificant" (Compl. ¶63).
- Technical Questions: The analysis will raise questions about the visual effect of differences between the patent figures and the accused product. Do the dynamic and colorful nature of the accused Activity Rings create a different ornamental appearance from the static, black-and-white (or grayscale) line drawings in the patents? Further, does the fact that the accused rings can become complete circles upon goal completion differentiate them from the consistently incomplete arcs shown in most of the patent figures?
V. Key Claim Terms for Construction
In design patent litigation, formal claim construction is less common than in utility patent cases, as the claim is generally understood to be the design itself as depicted in the drawings. The analysis focuses on the overall visual appearance. However, a court may articulate a verbal description of the claimed design, making the interpretation of its scope a central issue.
- The Term: "The ornamental design ... as shown and described"
- Context and Importance: The interpretation of this phrase, and the visual elements it encompasses, will be determinative of infringement. Practitioners may focus on this "term" because the entire dispute hinges on the breadth of the visual scope it confers. The key question is whether the claim for each patent is limited to the precise number and static arrangement of arcs depicted in its figure, or if it covers the broader visual concept of concentric progress rings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the family of seven patents, all claiming variations on the same theme, demonstrates an intent to protect the general ornamental concept of using concentric arcs to show progress. The complaint's consistent five-point description of the design features across all seven infringement counts may be used to support the idea of a common, broader design concept (Compl. ¶¶ 62, 73, 84, 95, 106, 117, 128).
- Evidence for a Narrower Interpretation: A party could argue that each patent's claim is strictly limited to what is "as shown" in its specific FIGURE. The use of broken lines to disclaim the surrounding environment and other potential rings strongly implies that only the elements shown in solid lines are part of the protected design ('D802 Patent, Description). This would suggest, for example, that the ’D802 Patent protects a design with exactly two arcs, and not one or three.
VI. Other Allegations
- Indirect Infringement: The prayer for relief includes requests for findings of contributory and induced infringement (Compl. ¶138(b)). However, the body of the complaint does not plead specific facts to support these allegations, such as acts of providing a component with knowledge of its infringing use or specific intent to encourage infringement by others.
- Willful Infringement: The complaint alleges willfulness based on both pre- and post-suit knowledge. It alleges Apple had pre-suit knowledge of the designs from an August 2013 meeting with the inventor, years before the patents issued (Compl. ¶¶ 21, 65). It further alleges knowledge based on a formal notice letter sent to Apple on June 26, 2023, after the patents had issued (Compl. ¶¶ 54, 65).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual scope: Is the protection afforded by each design patent limited to the precise number and static configuration of arcs shown in its respective figure, or can the claims be interpreted to cover the more general ornamental concept of a multi-ring, concentric progress display?
- A central evidentiary question will be one of overall appearance: From the perspective of an ordinary observer, do the color, animation, and dynamic "closing" of the rings in the accused Apple product create a distinct visual impression from the static, uncolored line drawings of the patents-in-suit, or are these differences insufficient to avoid a finding of substantial similarity?
- A key question for willfulness and damages will be one of pre-patent notice: Can the plaintiff establish that Apple not only saw the designs in 2013 but that this viewing constitutes evidence of copying, given that the patents did not issue until nine years later and the accused product was launched seven years earlier?