how much of the profits from the overall product should be attributable to
the component in which the infringing
design had been embodied.
Not all cases would be difficult, however. Total profits on products such as
wallpaper and carpets should be easy
insofar as the patented designs drove
consumer demand for the product.
Also relatively easy would be cases in
which the patents were for small components of complex multicomponent
products (for example, designs for car
cup holders, windshields for boats, or
hood ornaments for cars).
The Justices did not discuss Apple’s
patents at all or the allocation of profits
to the smartphones at issue. But they
speculated about what juries might do
in allocating profits for infringement
of a hypothetical design patent covering the overall shape of a car such as
the Volkswagen Beetle. Some Justices
seemed to think that consumer demand for cars embodying this design
would be near the total profits for the
car as a whole, while other Justices
thought that much of the value of such
a car would lie in the mechanical and
other functional design elements not
covered by that design patent.
Although the Supreme Court oral argument in Samsung largely focused on
non-technology design patent examples, the Justices were very aware of the
concerns raised by many technology
companies and industry associations
about the deleterious effects of excessive awards in design patent litigation
posed by the CAFC’s total-profits-on-products ruling.
The Court provided very little guidance in its Samsung decision about how
fact-finders should assess the relevant
article of manufacture to which patented designs have been applied and
the profits attributable to that article in
its Samsung ruling. We can all breathe a
sigh of relief that the worst outcome of
the case has been averted by the Court’s
willingness to correct yet another erroneous ruling by the CAFC.
Pamela Samuelson ( firstname.lastname@example.org) is the
Richard M. Sherman Distinguished Professor of Law and
Information at the University of California, Berkeley, and a
member of the ACM Council.
Copyright held by author.
tor door). The SG also participated in
the oral argument to represent the government’s interest in sound interpretations of U.S. design patent law.
The SG argued that the proper inquiry in cases involving multicomponent products was, first, to identify the
relevant “article of manufacture” to
which the patented design(s) had been
applied, and second, to assess what
portion of the defendant’s profits were
attributable to the infringing article. In
respect of multicomponent products,
the relevant article of manufacture
may be one component, rather than
the product as a whole, even though
there may be no separate market for
The SG’s brief identified several
factors that juries should take into account in deciding what the relevant
article of manufacture was: the scope
of the patented design; the extent to
which the patented design was responsible for the appeal of the product; the
existence of other conceptually distinct and unrelated components of the
product; and how various components
of the product were manufactured.
The SG recognized that it would
sometimes be difficult for the jury to
determine what “total profits” were
attributable to the infringing components, but regarded the design patent
statute as requiring this determination. The SG also recognized that when
components embodying patented
designs were not sold separately, the
total profits inquiry would be “
functionally similar” to the conventional
analysis used in other types of IP cases.
However, the SG stated that “a significant conceptual and practical difference [exists] between the profit attributable to the infringing article and the
profit attributable to the infringement”
(emphasis in the original).
Profits attributable to the infring-
ing article will generally be higher than
profits attributable to infringement,
especially when the relevant article of
manufacture is valuable for more than
the design. (Samsung’s lawyer suggest-
ed, for instance, that the design-pat-
ented rectangular round-edge design
for smartphones might be valuable to
consumers because it makes the face
less likely to fracture in addition to
making the phone look “cool.”) Total
profits on the round-edge component
may overcompensate Apple, but this
must be what Congress intended when
it amended the law in 1887.
The SG recommended sending the
Samsung case back to the lower courts
to determine the relevant article of
manufacture and profits attributable
to that article under this standard.
The Supreme Court Argument
Before the Court, nobody defended the
CAFC’s ruling that juries must award
total profits on the sale of products embodying patented designs. Samsung
pointed to hundreds of thousands
of component parts in smartphones
and argued that the three patented
designs were only small components
of the smartphones at issue. In a new
trial on damages, Samsung argued
that the jury should first study the patent to examine the design and the article to which the design was applied.
The jury should then make a judgment
about the profits attributable to the
components embodying the infringing
designs. Consumer surveys and expert
witnesses might help the jury to decide
Although not defending the CAFC
ruling, Apple asked the Supreme Court
to affirm the total profits award against
Samsung. It argued that its patented
designs made its smartphones “
peculiar and distinctive in appearance,”
as patented designs often do. (Judges
sometimes decide that lower courts
erred in their interpretation of a legal
rule, but find the error to be too insubstantial to justify a new trial.)
Most of the Justices’ questions focused on the difficulties that juries
would have in deciding what the relevant article of manufacture was and
The Justices did
not discuss Apple’s
patents at all or
of profits to the
smartphones at issue.