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Supreme Court Takes On Design Patent Damages

Apple v. Samsung

Apple applied for and received two design patents covering design elements on the front face of the Apple iPhone. Apple then successfully sued Samsung for infringement of these design patents. The jury awarded Apple damages in an amount equal to Samsung’s entire profits on its infringing smartphones. On appeal, the Court of Appeals for the Federal Circuit pointed to 35 U.S.C. 289, which states that the infringer shall be liable to the owner to the extent of his total profit.

The Supreme Court Steps In

Although the United Supreme Court has not ruled on a design patent case in over 120 years, the Supreme Court is taking up this one. The Supreme Court granted Samsung certiorari today, but just on the following issue:

“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?”

Apple obviously opposes the grant of certiorari in this case.

Article of Manufacture

35 U.S.C. 289 states that a design patent infringer shall be liable for the total profit an infringer makes in association with an “article of manufacture.” Since the Patent Act does not define the term “article of manufacture,” Samsung suggests looking to the first edition of Black’s Law Dictionary, which was published only four years after Congress enacted the relevant statutory text in 1887. At that time, Black’s Law Dictionary defined an “article” as “one of several things presented as connected or forming a whole.” Black’s Law Dictionary 92 (1st ed. 1891). From Samsung’s perspective, it is clear that Congress never intended an infringer disgorge profits unrelated to the invention embodied in the design patent.


Like Samsung, it appears the Supreme Court also has some concerns about how lower courts have been construing “article of manufacture,” in apportioning damages in the context of design patent infringement. Although no one can say for sure, it is not inconceivable that the Supreme Court will reign in the concept of “article of manufacture,” to something more commensurate with Congress’ understanding of what that term meant in a time where the Gramophone, rather than the iPhone, was cutting edge technology. From a legislative history standpoint, a logic standpoint, and an equitable standpoint, the Supreme Court seems poised to limit damages in design patent cases to just those profits attributable to the patented design itself.

Brett Trout

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