Samsung v Apple: SCOTUS decision ‘only scratches the surface’

by – Samsung v Apple: SCOTUS decision ‘only scratches the surface’. After the US Supreme Court unanimously reversed a design patent decision that had gone against Samsung in its dispute with Apple, lawyers say that the ruling “only scratches the surface” of resolving the case.

The Supreme Court reversed the judgment of the US Court of Appeals for the Federal Circuit which had ordered Samsung to pay the US company $399 million in damages for design patent infringement.

These damages amount to the entire profit of the infringing smartphones.

Section 289 of the US Patent Code states that a party is liable for the total profit of a product that infringes another party’s design patent.

Samsung rejected the notion of applying damages based on total profits and filed a writ of certiorari.

Yesterday, Justice Sonia Sotomayor delivered the opinion of the court.

“The only question we resolve today is whether, in the case of a multicomponent product, the relevant ‘article of manufacture’ must always be the end product sold to the consumer or whether it can also be a component of that product,” she said.

She held that the term “article of manufacture” is broad enough to encompass “both a product sold to a consumer as well as a component of that product”.

WIPR spoke to patent lawyers in the US about the decision and what impact it could have on future design patent cases.

Elizabeth Ferrill, partner at law firm Finnegan, Henderson, Farabow, Garrett & Dunner, said: “The court’s decision only scratches the surface of resolving this case. And this decision has definitely added a layer of complexity to the determination of damages for design patent infringement.

“In addition to determining the total profits, now a jury must first determine what is the ‘article of manufacture’ covered by the design patent. Then, the jury must determine how much profit should be attributed to the identified article of manufacture.”

On whether this case will have an impact on future design patent cases, Ferrill said that she “doubts this case will have much impact on future patent cases at the Supreme Court. Until this case, the Supreme Court had not considered a design patent case in over 100 years”.

Paul J Sutton, founding partner at Sutton Magidoff, added that “there is no question that this decision will have an impact upon future design patent infringement litigation and the strategies employed by the parties and their counsel”.

Jeanne Gills, vice chair of the intellectual property department at Foley & Lardner, said: “The case may be particularly significant for companies in the consumer products space that have design patents that cover both components of a product as well as arguably the entire product.”

Richard LaBarge, partner at Marshall Gerstein, added that the Supreme Court “opened the door to a new type of apportionment by ruling that the portions of the smartphone that bear the claimed design can be construed as a separate ‘article’, for damages purposes”.

Source : World IP Review