uct and service features or attributes.
By asking many people to express a
preference between a few dozen pairs
of designs that differ on features and
attributes, product marketers can use
clever mathematical techniques to estimate the importance of each feature
in isolation. This technique has been
used in some patent infringement cases, and would seem well suited for resolution of cases such as Apple v. Samsung
in which design patents may cover only
one or a small number of components
of multicomponent products.
Alternatively, a profits disgorgement assessment might be built on a
counterfactual scenario. As applied in
Apple v. Samsung, one might consider
how much total profit Samsung would
have made from sales of smartphones
if it had not infringed Apple’s design
patents and compare this estimate to
the total profit Samsung actually made
on infringing smartphones. The difference between the two profit scenarios
would be the amount that Samsung
should have to pay Apple under this
model of the disgorgement remedy.
This approach contrasts with a more
compensatory approach that would
focus on how much total profit Apple
made from sales of its smartphones
and how much profit it would have
made if Samsung had not infringed.
Economic experts could create models
for undertaking these assessments.
Samsung won an important victory
for itself and for other high technology companies in challenging the total
profits award in the Apple case. However, uncertainty exists about how courts
or juries should go about determining
the relevant embodiment of a patented
design to serve as the “article” on which
the infringer’s “total profits” should be
disgorged. Because high-tech companies are utilizing design patents much
more now than in the past, they have
reason to worry about the legal quagmire hovering over disgorgement of
profits awards in design patent cases
involving multicomponent products.
Pamela Samuelson ( email@example.com) 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.
would appear in the article. The patent
may also have a textual description of
the intended article. In addition, one
should examine the patentee’s and alleged infringer’s products to discern
how the patented design was embodied in the litigants’ products. These
types of evidence may sometimes suffice to identify the relevant article as to
which disgorgement should occur.
In her argument before the Supreme Court, Samsung’s lawyer recommended these steps for the relevant
article inquiry. She also suggested that
market studies might be useful to understand what consumers perceive the
article embodying the design to be.
Another indicator might be the costs
incurred in developing the component
embodying the design.
The Solicitor General of the United
States, in a brief supporting Samsung’s
appeal and during oral argument, proposed consideration of four factors in
making the relevant article determination: first, the scope of the patented design; second, the prominence of the design in the challenged product; third,
whether the design is conceptually
distinct from the product as a whole;
and fourth, the physical relationship
between the patented design and the
rest of the product. The Supreme Court
did not endorse use of these factors.
In support of its claim that the
smartphone as a whole should still be
considered the relevant article, Apple
can be expected to argue that the patented designs are inseparable from the
products embodying them, and that
consumer demand for Apple products
is due to its well-integrated designs.
Would Samsung have sold so many
millions of smartphones if it had not
misappropriated the cool look of Apple
designs? Apple thinks not.
Samsung will argue that the flat face
of the smartphone and the flat face with
bezel are two minor components of the
exterior design of its smartphones.
The colorful 16-icon design is similarly one small component of the screen
displays of which smartphones are capable. These should be the three “
articles” to which the Apple designs have
been applied. Samsung will point to
the very large number of components
in smartphones to put the infringing
components into proper perspective.
Samsung could also point to consum-
er reports about Apple smartphones,
which typically discuss features that
consumers find most desirable.
What Profits to Disgorge?
Once the relevant article inquiry is resolved, the next question is what “total
profits” did the infringer make from
sale of that article. With a multicomponent product whose components are
sold only as a package, “total profits”
on one or more component-article(s)
will almost certainly be some percentage of the profits made from sales of
the infringing products. In Apple v.
Samsung, $399 million was determined
as the total profit Samsung made selling the infringing smartphones. So if
the relevant article is not the smartphone as a whole, how should one decide what portion of those profits are
attributable to the components held to
be the relevant article(s)?
Expert witnesses are likely to play
a significant role in assessing a total-profits-attributable-to-the-relevant-article award in design patent cases.
Experts hired by the patentee and by
the alleged infringer are, of course, unlikely to agree on the bottom line. However, their assessments, as set forth in
reports and testimony, will generally
set the bounds within which the trier
of fact, whether a judge or a jury, will
make the award. Juries, in particular,
are likely to consider the relative culpability of the infringer in making such
awards. It is consistent with principles
of unjust enrichment for them to do so.
Conjoint analysis may be a useful
economic technique to contribute to
a design patent profits disgorgement
analysis. It is often used to analyze how
consumers conceive, integrate, value,
and trade off different clusters of prod-
One might consider
how much total profit
Samsung would have
made from sales
if it had not infringed