Unanimous Supreme Court Sides with Samsung and Reshapes Design Patent Infringement Damages

December 6, 2016 – In Samsung Electronics Co. Ltd. et al. v. Apple Inc., No. 15-777 (U.S. December 6, 2016), the Supreme Court interpreted 35 U.S.C. §289, which governs damages for design patent infringement.  Section 289 states that a person who applies a patented design to any “article of manufacture” is liable for infringement and “shall be liable to the owner to the extent of his total profit.”  In this context, “article of manufacture” has historically been understood to mean the entire product covered by the design patent.  However, in today’s unanimous decision, the Supreme Court overturned a Federal Circuit decision applying that historical understanding to Samsung’s infringement of Apple’s smartphone design patents and held that “the term ‘article of manufacture’ is broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not.”  As a result, the Supreme Court remanded the case back to the Federal Circuit to (i) reassess which part(s) of Samsung’s smartphone constitute(s) the “article of manufacture” and (ii) recalculate damages accordingly.

Oliff PLC will issue a Special Report addressing this decision and its potential impact in greater detail.