ent too? Would a second award of total profits be fair, or would the first
patentee’s windfall have exhausted
the available damages?
More concretely, consider this hypothetical. Apple owns a design patent
on the musical note icon for smartphones. Samsung is not charged with
infringing that patent. But suppose
the only design claim against Samsung
pertained to that patent.
An IP professors amicus brief in
support of Samsung’s petition (
written by Stanford’s Mark Lemley and
joined by yours truly) pointed out that
it would not be reasonable to award the
same $399 million in total profits for
infringement of that one patent.
Demand for iPhones is driven by
many factors. But the music icon is
a very small part of the value of any
smartphone that might embody it. Proportionality should apply in all awards
for monetary compensation for infringing IP rights.
Several amicus briefs filed in
support of Samsung’s petition for
Supreme Court review warned that
if the Court failed to overturn the
“total profits” award ruling in this
case, this would set off a new round
of patent troll litigations. This would
be harmful to innovation and competition in high-tech industries, especially given the low quality of some
issued design patents.
The Supreme Court has decided to
review the total profits recovery question raised by Samsung. On that point,
Samsung seems likely to prevail. Differentiating between “ornamental”
and “functional” elements of designs
for articles of manufacture is a trickier
matter, but surely the test for infringement of a design patent should focus
on that design rather than products
as a whole. Unfortunately, the Court
decided not to review this important
question. The Apple v. Samsung case is
a very important one. Resolved well,
it will mitigate design patent wars in
high-tech industries. Resolved badly,
it will surely spark such wars.
Pamela Samuelson ( email@example.com) is the
Richard M. Sherman Distinguished Professor of Law and
Information at the University of California, Berkeley.
Copyright held by author.
as a whole. Although Samsung’s arguments have some merit, the Supreme
Court has decided not to review either
the functionality issue or the proper
test for infringement in the Apple v.
Total Profits As Windfall
An even more urgent concern driving
Samsung’s plea for Supreme Court review arises from the CAFC’s approval
of an award of all of its profits from
selling the smartphones that infringed
those three design patents.
The CAFC acknowledged that a total
profits award for infringement of the
design patents in this case was difficult
to justify as a matter of equity. However, it held that the statute required approval of a total profits award.
It relied on this part of the relevant
statute, 35 U.S.C. § 289: “Whoever dur-
ing the term of a patent for a design,
without license of the owner … applies
the patented design … to any article of
manufacture … shall be liable to the
owner to the extent of his total profit,
but not less than $250.”
The statute plainly speaks about
“total profit” as a suitable award for
infringement of a design patent. But
what is the relevant “article of manu-
The CAFC decided the relevant ar-
ticle of manufacture in Apple v. Sam-
sung was the smartphone itself, not
just the subparts covered by the de-
sign patents. After all, no one would
buy only the design-patented screen
with icons or round-shaped rim with
a bezel. People buy a whole smart-
phone. This explains why the CAFC
thought the smartphone was the ar-
ticle of manufacture whose total prof-
its courts must award when design
patents are infringed.
This interpretation of design patent awards is inconsistent with principles that guide damage awards in
other types of IP cases. Had Samsung
infringed a utility patent, a copyright,
or protectable trade dress, an award
of monetary damages would be based
on the harm that was attributable to
the infringement. A total profits award
for utility patent infringement, for instance, would only be available if there
was evidence the patented feature was
responsible for the market demand for
the product embodying it.
The general rule is that IP owners are entitled to compensation for
harm caused by infringement. They
are not entitled to windfall awards
when some or virtually all of the value
of a product is due to aspects not covered by an IP right. The CAFC’s ruling is inconsistent with conventional
rules of IP law and with sound principles of equity.
Samsung’s and amicus briefs filed
in support of its petition for Supreme
Court review have pointed to earlier
appellate court decisions that apportioned damages for infringement of
One case involved a design patent
on a piano case. The court approved
an award of the infringer’s profits
from use of the patented design in a
piano case, but disapproved the argu-
ment that the infringer should have
to disgorge its profits from sale of pia-
nos containing the patented design.
“[R]ecovery should be confined to the
subject of the patent.”
The CAFC’s interpretation of § 289
is also arguably inconsistent with an-
other part the CAFC did not seem to
heed. It states that the patentee “shall
not twice recover the profit made from
the infringement.” This is a limiting
principle that links the award of dam-
ages to the infringement.
There is also a question of fairness.
How could it be fair, Samsung asked,
for a court or jury to award 100% of a
firm’s profits for infringement of one
design patent if the patented feature
accounted for only 1% of the value
of the product? And what if a second
design patent owner came along and
a jury found infringement of that pat-
of design patent
principles that guide
in other types
of IP cases.