The Supreme Court order simply stated: “The petition for a writ of certiorari is granted limited to Question 2 presented by the petition.”
The first question presented, which was not taken by the Supreme Court, related to whether design patent protection can extend to non-ornamental features.
The second question presented by Samsung in the petition for certiorari was: “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?”
Thumbnail Sketch of the Dispute
This case relates to the ongoing patent war between two technology giants who thus far have shown little interest in playing nice, presumably learning very little from the patent war fought between Kodak and Polaroid back in the 1980s and into the early 1990s.
A jury found that Samsung infringed Apple design patents, Apple utility patents and also diluted Apple’s trade dresses. The infringed design patents are U.S. Design Patent Nos. D618,677 (“D’677 patent”), D593,087 (“D’087 patent”), and D604,305 (“D’305 patent”), which claim certain design elements embodied in Apple’s iPhone. The infringed utility patents are U.S. Patent Nos. 7,469,381 (“’381 patent”), 7,844,915 (“’915 patent”), and 7,864,163 (“’163 patent”), which claim certain features in the iPhone’s user interface. The diluted trade dresses are Trademark Registration No. 3,470,983 (“’983 trade dress”) and an unregistered trade dress defined in terms of certain elements in the configuration of the iPhone.
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Following the first jury trial, the district court upheld the jury’s infringement, dilution, and validity findings over Samsung’s post-trial motion. The district court also upheld $639,403,248 in damages, but ordered a partial retrial on the remainder of the damages because they had been awarded for a period when Samsung lacked notice of some of the asserted patents. The jury in the partial retrial on damages awarded Apple $290,456,793, which the district court upheld over Samsung’s second post-trial motion. On March 6, 2014, the district court entered a final judgment in favor of Apple, and Samsung filed a notice of appeal.
On appeal, the Federal Circuit ultimately affirmed the jury’s verdict on the design patent infringements, the validity of two utility patent claims, and the damages awarded for the design and utility patent infringements appealed by Samsung. The Federal Circuit also reversed the jury’s findings that the asserted trade dresses are protectable. We therefore vacate the jury’s damages awards against the Samsung products that were found liable for trade dress dilution and remand for further proceedings. See Apple v. Samsung (Fed. Cir. May 18, 2015).
Damages and § 289
The question about design patent damages accepted will require the Supreme Court to interpret 35 U.S.C. § 289, titled Additional remedy for infringement of design patent. § 289 says:
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, recoverable in any United States district court having jurisdiction of the parties.
Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement.
In its petition for certiorari Samsung argued that the Federal Circuit’s construction of § 289 disregarded the natural reading of the phrases “article of manufacture” and “made from the infringement.” According to Samsung, the Federal Circuit first erred in deeming the relevant “article of manufacture” to be the entire product sold separately to customers.
Second, Samsung argued that the phrase “shall not twice recover the profit made from the infringement” incorporates a causation requirement into § 289. The argument goes on to say that when § 289 is read as a whole, the “total profit” recoverable under its first paragraph of § 289 is limited to the “profit made from the infringement” as set forth in the second paragraph. That reading of § 289 seems a bit tortured to me, but rarely does the Supreme Court take a patent case to simply affirm the Federal Circuit.