Apple v. Samsung-Part II, A Design Patent BreakdownMay 21, 2015


The United States Court of Appeals for the Federal Circuit recently decided the appeal for Apple v. Samsung, involving allegations of trade dress dilution, design patent infringement, and utility patent infringement. The case relates to Samsung’s alleged copying of Apple’s popular iPhone smartphone. A jury previously found that Samsung infringed Apple’s design and utility patents and diluted Apple’s trade dresses.

Regarding the issues of Apple’s design patents on appeal, the Court of Appeals affirmed the jury’s verdict and award of damages.

The infringed design patents are U.S. Design Patent Nos. D618,677 (“D’677 patent”), D593,087 (“D’087 patent”), and D604,305 (“D’305 patent”), which claim certain design elements embodied in Apple’s iPhone, such as the front face, the bezel, and the graphical user interface.

The court first addressed Samsung’s appeal of infringement of the design patents. Samsung’s argument that functional aspects of the designs should be ignored in infringement analysis was denied. The court noted that functionality determines design patent validity, and not infringement, and therefore, this was the wrong forum for bringing the argument.

Next, Samsung argued that it was in error for the jury to be instructed, “You do not need, however, to find that any purchasers actually were deceived or confused by the appearance of the accused Samsung products…” The court held that this was a simple clarification of case law regarding design patent infringement, where it was held, “A design patent is infringed if an ordinary observer would have been deceived: “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” Gorham Co. v. White, 81 U.S. 511, 528 (1872). Therefore, the jury instructions were just clarifying the law, and not in error.

The court also addressed the issue of damages awarded for the design patent infringement. Samsung contended that district court erred in awarding damages amounting to the entire profits of the infringing devices (smartphones), and instead should have awarded damages amounting to only the infringing portions of the smartphones covered by the designs. This was also rejected.

The court of appeals noted that the argument of apportionment was explicitly deleted by Congress when writing the original design patent infringement damages in 1887 (see, e.g. 35 U.S.C. § 289). The Act clearly includes that an infringer of a design patent shall be liable to the owner to the extent of his total profit. It was held that § 289 explicitly authorizes the award of total profits from the article of manufacture bearing the patented design. Therefore, the court held that it is the profits obtained from sales of the infringing smartphones as a whole, which the district court correctly determined.

It is noted that many have argued that this is an archaic rule, including many professors who filed an amicus brief for the present case. For example, it is alleged that an automobile including a fender that is covered by a design patent could generate profits covering the sale of the entire vehicle including an infringing fender design, and nothing else of infringing nature. However, the court, in a footnote, explained that this is a policy argument for Congress, and not for the court to legislate. The decision included that the court was bound by what is included by the statute, which is total profits of an article including the infringing design.

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