Samsung Electronics Co. v. Apple Inc.
137 S. Ct. 429
| SCOTUS | 2016Background
- Section 289 permits total profits damages for design patent infringement and may apply to a multicomponent article of manufacture.
- Apple sued Samsung for infringing design patents on iPhone-related designs; Apple was awarded $399 million—the full profits on infringing smartphones.
- Federal Circuit held the damages could be limited to a component of the product, not necessarily the entire smartphone.
- Court granted certiorari to consider whether the relevant article of manufacture in multicomponent products must be the end product.
- Court reverses Federal Circuit and holds the article of manufacture can be a component of the multicomponent product; remand for proceedings consistent with opinion.
- Statutory history shows design patent damages have long treated articles of manufacture and design patents, with §289 codifying the liability to total profit from the article to which the design is applied.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether article of manufacture under §289 can be a component of a multicomponent product. | Apple contends the article of manufacture may be the end product or a component. | Samsung argues the article must be the end product (the smartphone) only. | Yes; article may be a component, not necessarily the entire smartphone. |
| Whether the Court should set a test to identify the article of manufacture for each design patent on remand. | Not explicitly stated due to briefing gaps. | Not explicitly stated due to briefing gaps. | Court declines to adopt a test and remands for further proceedings. |
Key Cases Cited
- Gorham Co. v. White, 84 U.S. (17 Wall.) 511 (1872) (design patent scope and manufacture concepts foundational to article of manufacture)
- Dobson v. Hartford Carpet Co., 114 U.S. 439 (1885) (requirement that profits be attributable to the design)
- Dobson v. Dornan, 118 U.S. 10 (1886) (profits attributable to design, related to Dobson lineage)
- Application of Zahn, 617 F.2d 261 (CCPA 1980) (designs for articles of manufacture not limited to complete articles)
- Diamond v. Chakrabarty, 447 U.S. 303 (1980) (broad understanding of manufacture and related concepts)