[Pick the date] | Pop quiz cont | 2

Damaged! Design Patent Infringement Recovery

Contents

Design Patent Damages 1-3

Pop Quiz 3

Selected IP Precedent 3-4

On December 6, 2016, the US Supreme Court issued a

decision overturning a $399M damages award in the

incessant Samsung-Apple saga. Samsung Electronics Co., Ltd. et al. v. Apple, Case No.: 15-777. The damages relate to

Samsung’s wonton infringement of several of Apple’s design patents. Design patents cover the aesthetic or ornamental

qualities of a product, unlike utility patents that cover structure and function. See 35 USC §171 vs. §101. Apple’s

patented designs were embodied in multiple generations of

its bread-and-butter iPhones. So, this decision could prove to be a screen-shattering upset for the blue chip… and its

twenty-five supporting amici.

Apple’s design patents cover key user interface features:

US D618,677 – the front surface with rounded corners, oblong microphone orifice and rectangular screen inlay

January 2017

Page-1

US D593,087 – the beveled edge

encasing the front surface, with the circular selection key

US D604,305 – the grid pattern of app icons

These features are very familiar to smartphone

users as they dominate the user interface. In prior proceedings, the Federal Circuit

affirmed the Jury’s damage award for “total

profits” on Samsung’s sales of its electronic devices having the infringing designs. In doing

so, the court relied upon 35 USC §289 which reads,

Page-2

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, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250…

The lower court interpreted “article of

manufacture” to pertain to profits on the end product sold – i.e., the phone or tablet.

Particularly, the Federal Circuit found it trivial to parse sales revenues attributable to each

component from the device(s). Justice Sotomayor, writing for the

unanimous Supreme Court, interpreted §289

and its “article of manufacture” provision to broadly encompass either a component of a

product or the end product itself. The Court did so by referencing dictionaries and other

sections of the Code and its treatment of

“article of manufacture.” Namely, the Court referenced §171 as it pertains to design patent

eligibility for both components and end products. Also, §101, as to utility patent

eligibility, was referenced. (We know that both

components and end products can be patent eligible under that section of the Code as well).

The Court, however, left open the questions of: (1) what should be the test for

assessing whether “total profits” applies to a component or an end product; and (2)

whether Apple’s portfolio of user-directed

design patents is sufficient to warrant total

Design Patent Infringement Damages cont.

profits on the end-product sales in this instance? This is what the Federal Circuit is to decide (or instruct the lower court to

decide) on remand. As to metrics for determining the “article of

manufacture,” the DOJ in its amicus provides guidance arguing

that determining the relative “article” is a case-specific inquiry dependent upon the totality of the circumstances. Facts to

consider include: (1) the scope of the claims; (2) the prominence of the design; (3) whether the design is

conceptually distinct from the product as a whole; and (4) the

physical relationship between the design and product. It was petitioned that the defendant should bear the ultimate

burden of persuasion in establishing apportionment of damages and the trier of fact will make the determination of

“article.” Additionally, over 50 amici weighed in on this issue, including iconic fashion companies like Nike, Tiffany & Co. and

Adidas… even the nerds like Google, Facebook, AIPLA and IP

professors weighed in. Ergo, many IP stakeholders still feel that design patents and infringement damages are very

relevant to modern business. In this instance, Samsung infringed not one but several design patents, for very user-

driven features nonetheless. So, perhaps infringement

damages will not change significantly in this case. However, where fewer patents are infringed or where the designs relate

to less prominent features, awards could drastically be parsed under Samsung v. Apple and its progeny.

Pop Quiz

What are the top three

New Year’s resolutions in

this country and what is

the likelihood they will be

kept?

Answer to the last quiz:

The Declaration of Human

Rights was proclaimed by

the United Nations General

Assembly in Paris on

December 10, 1948, as a

common standard of

achievements for all

peoples and all nations.

Page-3

Design Patent Infringement Damages cont. cont.

In re: NuVasive, Inc., Case No.: 2015-1670 (Fed. Cir. Dec. 7, 2016)(the unpatentability findings of the Patent Trial and Appeal Board in an inter partes review (based upon §103) were reversed and vacated. As an initial matter the patentee waived its challenge to the “printed

Selected IP Precedent

Selected IP Precedent cont.

Authored by

Kristy J. Downing, Esq.

Send comments to kdowning@justintellectuals.com

Page-4

publication” qualification for some prior art because the issue was not raised in front of the PTAB. Secondly, because the Board did not adequately explain its §103 findings, namely, provide a motivation to combine, the determination was reversed and remanded for compliance with the same).

Asetek Danmark v. CMI USA, Inc. et al., Case Nos: 2016-

1026 & -1183 (Fed. Cir. Dec. 6, 2016)(the infringement findings of the lower court were affirmed including a denial of JMOL for non-infringement, inter alia; the record supported a reasonable jury finding of infringement given the plain and ordinary meaning of claim terms where no claim construction was given by the court and no objection was made by the accused infringer to the jury instructions given. Questions related to injunction breadth for a dismissed party were remanded to the lower court due to the fact specificity of the issues)(Chief J. Prost dissented as to the ability to enjoin non-parties in the suit or non-adjudicated infringers merely because those entities acted in concert or in participation with infringers).