The case will set the precedent on whether, where a design patent is applied to only a component of a product, an award of infringer’s profits should be limited to those profits attributable to the component.
Supreme Court justices, who took up the case in March, are considering whether the Federal Circuit for the Court of Appeals should have backed the original jury in awarding damages based on Samsung’s entire profits from the sale of smartphones found to contain just three patented designs, totalling $399 million.
Michael Sandonato, partner at Fitzpatrick, Cella, Harper & Scinto and chair of the firm’s electronic and computer technologies practice group, said: “Central to this case is a tension between policy arguments and the statute.”
“Many argue that a rule that awards the entirety of an infringer’s profits to a design patent owner makes no sense in our world of smartphones and other complex devices, and I think that argument at some level resonated with the Federal Circuit. But the court could not get past what it found to be ‘clear statutory language’ that says that is exactly what the design patent owner gets.”
“It will be interesting to see if the Supreme Court comes out the same way, or if it approaches the problem from a different point of view.”
Johnathan Moskin, partner at Foley & Lardner, has been following the case and added: “Given Samsung’s objections that the jury instructions directed jurors to focus on the overall design of the accused product (rather than only their ornamental, non-functional, features) one might infer that the court is not inclined to dissect the Apple design into its smallest patentable features for assessing damages.”
“Hence, one might expect the Court to agree with Apple that the literal wording of Section 289 (as distinct from Section 284) requires that profits be calculated on the entire article of manufacture.”