Vviewpoints

Legally Speaking
Supreme Court on
Design Patent Damages
in Samsung v. Apple
Considering influences leading to the recent U.S Supreme Court decision in a
years-long case that Apple filed against Samsung over iPhone design infringement.

design patent protection in the U.S. since 1842. Their inventors must apply to the Patent and Trademark Office (PTO), satisfy novelty and nonobvious-ness standards, and claim the design through drawings and descriptions of the article of manufacture to which the design will be applied. (Most other countries provide legal protection original designs of article of manufacture, although not through the patent system.) Design patent protections may now last for up to 15 years.

Design patents in the 19th and early 20th centuries conventionally covered simple articles of manufacture, such as carpets and wallpaper, which were attractive to consumers because of the patented design. Design patents today are more likely to be sought for designs applied to specific components of complex products.

Infringement of a design patent occurs when an unlicensed person em-bodies that design in an article of manufacture and the accused product is so

SHOULD SAMSUNG HAVE to pay Apple $399 million—its total profits on sales of cer- tain smartphones—for in- fringement of three Apple design patents when the value of the Samsung phones may be attributable to many other desirable features and not just to the designs infringed? An anomalous rule in U.S. design patent law seems to suggest the answer is yes, when it should be no.

The U.S. Supreme Court heard oral
arguments to determine the answer to
this question last October: the Court
decided the case in early December
2016, when it threw out the nearly $400
million in damages Samsung had been
ordered to pay Apple by a ruling of the
Court of Appeals for the Federal Cir-
cuit (CAFC) affirming an award of all
of Samsung’s profits from selling the
infringing phones. The exact amount
of damages, to be determined by the
U.S. Court of Appeals for the Federal
Circuit or a trial court on remand, will
likely be much less than the hundreds
of millions of dollars Samsung might
have paid.

Several technology companies ( including Facebook, eBay, and Google) and technology industry associations filed amicus curiae (friend of the court) briefs. They warned that upholding the total profits award against Samsung would lead to a deluge of litigation and result in unjustified windfalls when design patents are infringed as to only one or a small number of components of complex multicomponent products. The Court’s decision will have huge implications for the technology industry.

After providing some background on design patents, this column dis-cusses the arguments that the litigants and the U.S. government took on the “total profits” issue and the way the Justices reacted to those arguments.

 

Origins of the “Total Profits” Rule Ornamental designs for articles of manufacture have been eligible for

DOI: 10.1145/3041043