United States: U.S. Supreme Court Substantially Devalues Design Patent Damages On Multicomponent Products: What Design Patent Holders Need To Know

Last Updated: April 20 2017
Article by James D. Ryndak and Roger M. Masson

Brief Summary

The U.S. Supreme Court in a unanimous 8-0 opinion reversed and remanded to the U.S. Court of Appeals for the Federal Circuit an award to Apple, Inc. of $399 million of Samsung Electronics Co., Ltd.'s total profits on smartphones infringing certain Apple design patents. For purposes of determining the measure of damages on an article of manufacture for design patent infringement under 35 U.S.C. § 289, the Court held that in the case of a multicomponent product, the article of manufacture need not be the end product sold to the consumer, but may be only a mere component of that product.

However, the Court declined to define any test or rule of law for an infringing multicomponent article to determine either: (1) whether damages should be based on the profits for the entire multicomponent article; or (2) how to decide the measure of damages where damages are not based on the entire article. Consequently, design patent damages for multicomponent articles likely will be in a state of flux for years, which will in turn have immediate effects on the value of design patents. Holders of these patents should take note and consult their lawyers to discuss ways to address the effects of the Court's opinion.  

Complete Summary

Apple sued Samsung in 2011, alleging that certain Samsung smartphones that had an appearance resembling Apple's iPhones infringed Apple's design patents, utility patents and trade dress rights. The jury awarded Apple $1 billion in damages for the various infringements. The jury's verdict for design patent infringement damages was reduced to $399 million in total profits on infringing smartphones under 35 U.S.C. § 289 — the statutory damages provision for design patents — after a retrial. The Federal Circuit affirmed the judgment as being properly based on the total profits on the infringing smartphones and not limited to only infringing portions of the smartphone.

On appeal from the Federal Circuit, the Supreme Court reviewed the history of Section 289, including that the express provision for an award of total profits was enacted in 1887 to overrule the Court's decision in Dobson v. Hartford Carpet Co., 114 U.S. 439 (1885). The high court in Dobson had held that damages were limited to the infringer's profit due to the infringement rather than the total profit on the infringing product.

The Supreme Court also analyzed the text of Section 289, which reads in relevant part:

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any arti­cle of manufacture for the purpose of sale . . . shall be liable to the owner to the extent of his total profit, but not less than $250 . . . (emphasis added).

In the critical portion of its analysis, the Supreme Court relied on two dictionaries to define an "article of manufacture." Based on the dictionary definitions of "article" and "manufacture," it held that "article of manufacture" is "simply a thing made by hand or machine." It then found that this definition includes both a product sold by an infringer and a component of that product.

The Court found that this definition was supported by other sections of the patent statute. It reviewed 35 U.S.C. § 171, which permits a design patent for "an article of manufacture," noting that Section 171 for many years had been interpreted by the U.S. Patent and Trademark Office and courts as allowing a design patent on a portion of product. The Court also considered 35 U.S.C. § 101, which permits a utility patent on a "manufacture." Section 101 has been interpreted to permit a patent on a machine and parts of a machine. The Supreme Court concluded that its definition of "article of manufacture" was consistent with the patent statute at large.

Based on its definition of "article of manufacture," the Court found that the Federal Circuit's definition of the term as the product sold was too narrow. The Court's holding was simply that for a multicomponent product, the "article of manufacture" for purposes of damages under 35 U.S.C. § 289 need not always be the end product sold to the consumer but may be a component of that product. Reversing and remanding to the Federal Circuit, the high court declined to set forth any test or guidance on how to determine the measure of damages for a design patent infringement when the infringing article is a multicomponent article.

Significance of Opinion

The Supreme Court's opinion does not affect design patents on unitary products and the remedy of total profits on unitary products are not affected. Also, damages for design patent infringement can still be sought under the general patent damages statute, 35 U.S.C. 284, including a reasonable royalty and lost profits under appropriate circumstances.

But make no mistake, the Court's opinion will have significant business effects. Most obviously, the opinion devalues design patent damages under 35 U.S.C. § 289 on multicomponent products. The amount of devaluation under Section 289 will depend on the legal tests that remain to be established by the lower courts — a process that will take years — and likely will be significant. As a result, the value of these design patents and the holders' overall patent portfolios may decrease.

As mentioned above, the damages for infringement of design patents on multicomponent articles may still be recovered, but in many case at a lesser amount. Design patent holders should consult their lawyers to explore these and other ways to best address the effects of the Court's opinion and protect the value of their design patents.

Read the Supreme Court's full opinion: Samsung Electronics Co., Ltd v. Apple Inc., 580 U.S.  --- (2016)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Marshall, Gerstein & Borun LLP
Oblon, McClelland, Maier & Neustadt, L.L.P
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Marshall, Gerstein & Borun LLP
Oblon, McClelland, Maier & Neustadt, L.L.P
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions