The functionality issue, as it relates to design patent claim scope, mysteriously vanished from the district court’s application of design patent law between the December 2011 issuance of the Order denying preliminary injunction and the August 2012 issuance of the Final Jury Instructions. By failing to expressly identify non-ornamental (functional) features of Apple’s design patents and instruct the jury that such features were not to be considered in its infringement analysis, the district court materially, and perhaps fatally, prejudiced Samsung’s non-infringement defenses. The district court unleashed a “free range jury” that was unconstrained in its ability to forage for patentable subject matter that could be used to evaluate infringement among the functional features disclosed in Apple’s design patents.
The relative paucity of design patent jurisprudence regarding the legal remedy of damages and the equitable remedy of an accounting for the infringer’s profits, makes clear that while an award of damages for patent infringement may be enhanced under 35 U.S.C. § 284 for willful infringement, and award of profits under 35 U.S.C. § 289, may not be enhanced under Section 284. While this distinction may appear important to one who wishes to obtain an enhancement of the damages award for willful infringement, the jury verdict form in Apple v. Samsung leaves one clueless as to whether the monetary award for infringement of 18 Samsung devices was an award of damages, an award of profits, or some combination of the two.