And so the stage is set. For the first time in more than 100 years, the Supreme Court is stepping in on design patents—all thanks to Apple and Samsung’s grudge match.
Their case originally started in 2011, when Apple accused Samsung of infringing on three of Apple’s products. Since then there’s been ups, downs, updates, and plenty of internet satire. Today will bring arguments at the nation’s high court, and this may be Samsung’s final chance at a favorable verdict. It may also be a whole lot more.
This case began in 2011, but since then it’s spawned plenty of issues and analogous suits around the world. In a 35-page complaint filed in April of 2011, Apple alleged that several of Samsung’s phones and tablets infringed on Apple’s intellectual property, including three of their patents: The black rectangle shape with rounded corners, the raised frame, and the layout of the “16 colorful icons” on the homescreen. Samsung countersued, filing complaints in Seoul, Tokyo, Mannheim, and later on the UK, Italy, Delaware, and the ITC.
In their initial verdict, a jury found that Samsung had violated five out of six of Apple’s patents, and awarded the Cupertino giant a whopping $1.049 billion in damages, as well as denying Samsung any damages for their countersuit.
What followed was a handful of appeals, re-trials, and verdicts, but once the dust settled Samsung was left with a $399 million judgement being upheld by the Federal Circuit. In the meantime, Apple and Samsung have agreed to drop their international disputes and are focused in on this case. Which is good because—as the first Supreme Court decision in this area since 1894—Apple v. Samsung could bring a big change.
The argument now almost entirely rests on exactly what Samsung needs to pay in damages to get this ordeal over with. Last December, they filed a certiorariwith the Supreme Court that presented two fundamental questions for the court to address:
- Where a design patent includes unprotected non-ornamental features, should a district court be required to limit that patent to its protected ornamental scope?
- Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?
Apple (and the Federal Circuit) believes that because they used the statutory language of 35 U.S.C. § 289 “explicitly authorizes the award of total profit from the article of manufacture bearing the patented design.” To them, “total profit” fairly clearly means total profit, and though “article of manufacture” is a bit more gray,Samsung’s lawyers failed to appropriately make their case here, so the matter is settled. They argue that Congress specifically added the phrase “total profit” to ensure that copycats don’t get off too easily.
Samsung, meanwhile, argues that it’s crazy for one, arguably fairly miniscule design feature to account for the entire design and profits of a tool. Samsung is hoping its two questions can guide the justices to throw out the verdict altogether and return it to a new hearing based on the value of the design patents.
And that’s just the effect it will have on the two companies in question. According to Samsung, a ruling in Apple’s favor could “pose a real danger for companies everywhere.” As Aarti Shah and Matthew Karambelaswrite for Global IP Matters, there’s implications for a Samsung victory as well:
The potential implications of the Supreme Court’s decision on this issue—the first Supreme Court decision on design patents in more than 120 years—will be important to follow. Not only are there design patents on numerous other features of today’s smartphones, but also, a decision in favor of Samsung could add momentum to a similar wave in the law curtailing damages to utility patent owners, based on 35 U.S.C. § 284, for example in Commonwealth Sci. & Indus. Research Organisation v. Cisco Sys. (“Under § 284, damages awarded for [utility] patent infringement ‘must reflect the value attributable to the infringing features of the product, and no more.’” (citing Ericsson, Inc. v. D-Link Sys., Inc.)).
Each side has their supporters, and with a decision due in December or January, there’s no telling (at this point) which way it’ll go. For now we’re just following along from our smartphones—which have evolved far past the initial 16 colorful icons of days past.
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