Damages for Design Patent Infringement

Damages for Design Patent Infringement

On December 6, 2016, the U.S. Supreme Court reversed a damages award that Apple, Inc. won over Samsung Electronics Co., Ltd. in their longstanding patent fight.  See a copy of the full decision here.  Apple’s design patents were directed to specific elements of Apple’s iPhone.  The Supreme Court remanded the case to the Federal Circuit for further proceedings without actually decided how much money Apple was entitled to from Samsung.  In doing so, the Supreme Court reasoned that “article of manufacture” could be limited to a particular component of a product, regardless of whether that component is sold separate from the product as a whole.

 

The Supreme Court argued that an award of “total profit” must be made from the manufacture or sale of the “article of manufacture to which the design or colorable imitation has been applied.”  The Supreme Court defined an “article of manufacture” as a “thing made by hand or machine.”  As such, the infringing component could either the smartphone, itself, or a particular component within the smartphone.  Moving forward, it appears as though the following elements will be important in design patent infringement cases: (1) the scope of the design claimed in the plaintiff’s patent; (2) the relevant prominence of the design within the product as a whole; and (3) whether the design is distinct from the product as a whole.

 

Feel free to contact a Traverse Legal patent attorney today at 866-936-7447 to discuss your patent (utility or design) needs.