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
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
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