Term: 2016
Docket: 15-777
Samsung Electronics v. Apple
- Pro
15-777 SAMSUNG ELECTRONICS CO. V. APPLE INC. DECISION BELOW: 786 F.3d 983 LIMITED TO QUESTION 2 PRESENTED BY THE PETITION. CERT. GRANTED 3/21/2016 QUESTION PRESENTED: Design patents are limited to "any new, original and ornamental design for an article of manufacture." 35 U.S.C. 171. A design-patent holder may elect infringer's profits as a remedy under 35 U.S.C. 289, which provides that one who "applies the patented design ... to any article of manufacture ... shall be liable to the owner to the extent of his total profit, ... but [the owner] shall not twice recover the profit made from the infringement." The Federal Circuit held that a district court need not exclude unprotected conceptual or functional features from a design patent's protected ornamental scope. The court also held that a design-patent holder is entitled to an infringer's entire profits from sales of any product found to contain a patented design, without any regard to the design's contribution to that product's value or sales. The combined effect of these two holdings is to reward design patents far beyond the value of any inventive contribution. The questions presented are: 1. Where a design patent includes unprotected non-ornamental features, should a district court be required to limit that patent to its protected ornamental scope? 2. 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? LOWER COURT CASE NUMBER: 2014-1335, 2015-1029
In the case of Samsung Electronics v. Apple in 2016, the U.S Supreme Court ruled in favor of Samsung. The dispute began when Apple sued Samsung for patent infringement, claiming that several models of Samsung's smartphones copied design elements from Apple's iPhone - specifically, a rectangular front face with rounded edges and a grid of colorful icons on a black screen. Initially, lower courts awarded damages to Apple based on Samsung’s entire profit from the sale of infringing smartphones ($399 million). However, this decision was challenged by Samsung at the Supreme Court level arguing that they should only be liable for profits attributable to components directly infringing upon patents rather than total device profits. The justices unanimously agreed with this argument stating that an award for damages could indeed be limited only to specific components found guilty of infringement rather than whole product sales if those parts can reasonably be considered separate or distinct from the overall product.
In the Samsung Electronics v. Apple case, there was no formal dissenting opinion issued by any of the justices of the Supreme Court. The court unanimously ruled in favor of Samsung, overturning a $399 million judgment against them for infringing on parts of Apple's iPhone design. The court held that an award for design patent infringement does not necessarily need to cover all profits from sales but can be limited to only those profits attributable to the infringed component(s). This ruling rejected Apple's argument that they were entitled to all profits made from phones with designs similar to their patented ones and sent back the case for further proceedings consistent with this decision.
