I M A G E B Y A N D R I J B O R Y S A S S O C I A T E S / S H U T T E R S T O C K

more complex and have many more component parts than the manufactured products Congress envisioned as suitable for design patent protection back in 1842 when the design patent law was first enacted.

It is one thing to ask a jury to consider whether their overall impression of a design of an article of manufacture, such as a competing carpet, infringed a design patent. The patented design would presumably cover the feature that created most of the value in the patentee’s carpet.

However, high-tech products such
as smartphones have a staggering
number of functional and design fea-
tures and component parts. As of 2012,
more than 250,000 patents had been
issued for smartphone-related inven-
tions. Samsung argued that a test for
design patent infringement should
focus on the similarities in the over-
all impression of the feature covered
by the design patent, not the product
Samsung asked the Supreme Court to
review the design patent ruling and the
monetary damage award. It raised two
questions for the Court’s consideration:

˲ Where a design patent includes unprotected non-ornamental features, should a district court be required to limit that patent to its protected ornamental scope?

˲ Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?

Ornamentality and Filtration

Samsung challenged the Apple design patent infringement claims because some aspects of the patented designs are too conceptual or functional to be within the valid scope of the patents. Geometric shapes, for instance, are concepts in the public domain.

Samsung’s brief emphasized that virtually the same design features that the CAFC held were too functional to be eligible for trade dress protection were also the basis for the design patent claims. The finding of functionality that vitiated Apple’s trade dress claim should, Samsung argued, have defeated the design patent claim as well. Functional designs should be protected, if at all, by utility patents, not by design patents.

The CAFC, however, regards a design to be too functional to qualify for a patent only if that design is solely dictated by functionality, such that no other design options exist. Samsung argued that is too stringent a test for functionality on the design patent side. After all, a design is supposed to be ornamental to qualify for design patent protection. Ornamental designs, almost by definition, will not be dictated by function.

Samsung’s second challenge to the infringement ruling concerned the overbroad test for infringement the lower court had used and the CAFC endorsed. That test focused on whether an ordinary observer would find similarities between the designs to be so substantial that they would induce customers to buy the alleged infringer’s product instead of the patentee’s product. As applied in the Apple case, Samsung argued that this test failed to filter out of consideration elements of smartphone design not covered by Apple’s design patents.

Samsung complained this test failed to filter out the conceptual and functional elements of the patented designs. The court also directed the jury to make a judgment based on their overall impressions of the appearance of the Apple and Samsung smartphones. Under this approach, the jury could have decided that the overall similarities between the Apple and Samsung smartphones justified the infringement finding, even though the design patents only covered a small number of features.

A coalition of high-technology companies, including Dell, eBay, Facebook, and Google, filed a brief in support of Samsung’s petition for Supreme Court review. That amicus curiae (friend of the court) brief criticized the CAFC for failing to grasp the com-plexities of today’s highly componen-tized technologies.

That brief pointed out that today’s information technologies are much