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of manufacture” to which the patented
designs had been applied.
Samsung persuaded the Supreme
Court to review the CAFC ruling.
Solicitor General Weighs In
The U.S. government rarely files briefs
with Supreme Court cases or joins in
oral argument when disputes are be-
tween private litigants such as Apple
and Samsung. The Solicitor General
(SG) filed a brief in Samsung to chal-
lenge the CAFC’s ruling, saying it
would result in “grossly excessive and
essentially arbitrary awards” for design
patent infringement in cases in which
the patented design was applied to
one component of a multicomponent
product (such as a latch for a refrigera-
similar that an ordinary observer would
be deceived into buying the infringer’s
product thinking it was buying the pat-
entee’s product. (Embodying the design
in a different type of product generally
does not infringe because consumers
will not be deceived in this manner.)
When design patents have been infringed, courts may order defendants to
pay the patentee a reasonable royalty for
use of the patented design in infringing
products. Alternatively, design patentees can ask for a disgorgement of the
defendant’s profits as to the article of
manufacture to which that design has
been applied. (Courts have ruled that design patentees cannot get both disgorgement of profits and reasonable royalties,
as that would produce double recovery.)
Origins of the “Total Profits” Rule
In the late 19th century, in two cases
involving design patents for carpets,
the U.S. Supreme Court gave a narrow
interpretation to the disgorgement
of profits rule. The Court denied the
patentee an award of the infringers’
profits because he had not proven how
much of the infringers’ profits were
due to the patented design and how
much was other factors (such as the
quality of the wool).
In response to criticism of these
decisions, the U.S. Congress in 1887
amended the design patent statute so
that patentees could get the “total profits” that defendants derived from selling articles of manufacture embodying the patented designs. Congress
was aware that this new “total profits”
rule might overcompensate some patentees, but regarded this outcome as
better than a rule that undercompen-sated them. There is, however, no comparable “total profits” rule in any other
intellectual property law.
Apple’s Design Patents
and Total Profits Award
Three design patents on the external
configuration of smartphones were at
issue in Samsung. One was for a black
rectangular round-cornered front face
for the device. A second was for a rectangular round-cornered front face with
a surrounding rim or bezel. A third was
for a colorful grid of 16 icons to be displayed on a screen.
In the trial Apple brought against
Samsung for infringing these pat-
ents, the judge instructed the jury
that it could not assess how much of
Samsung’s profits from selling smart-
phones were attributable to the pat-
ented designs. If the jury found in-
fringement, it was obliged to award
Samsung’s total profits from sales of
infringing phones. The jury agreed
with Apple on the infringement claims
and awarded $399 million in total prof-
its. Samsung appealed to the CAFC.
The appellate court acknowledged
it was difficult to justify this award
for infringement of the three Apple
design patents as a matter of equity.
However, the CAFC decided the statute
required it to affirm the total profits
award because it regarded Samsung’s
smartphones as the relevant “article
viewpoints