Samsung Electronics v.
Apple brings to the court what might be the
century’s single most heated dispute over competing technology: Apple’s claim
that substantially all of the smartphones Samsung has sold this decade infringe
the design of Apple’s iPhone. The Federal Circuit affirmed a billion-dollar
verdict holding that Samsung’s copying of the distinctive front screen and
graphical user interface of the iPhone infringed design patents held by Apple.
Next week, the court will hear Samsung’s challenge to that verdict.
If the high-stakes dispute is not enough to whet your
interest, focus on the reference in the last paragraph to Apple’s “design
patents.” This case involves no copyright or trademark held by Apple, nor does
it involve a “utility patent” of the sort that reaches the court’s merits
docket multiple times each year. Rather, it involves a “design patent,” granted
for novel designs, under a statute that the court apparently has not directly
considered in more than half a century.
Distilled down to
the level of detail appropriate for a blog post, the case proceeds at two
distinct levels: a high-level, big-picture dispute about the appropriate
measure of damages, and a variety of low-level moves by both sides offering
analytical routes by which the court could decide the case without reaching the
“big” question.
That question,
presumably the reason the justices agreed to hear this case, involves 35 U.S.C.
§ 289, which provides, in phrasing redolent of its nineteenth century drafting,
that any person who applies a patented design “to any article of manufacture”
is “liable … to the extent of his total profit.” The question is whether the
relevant “total profit” is the profit from the entire device (the infringing
Samsung phones) or some fraction of that profit attributable to the patented
design elements. Samsung’s central argument on that point is one of policy:
Given the hundreds (if not thousands) of innovative elements that go into a
modern cellphone, it makes little sense to award all of Samsung’s profits because a few of
those elements infringe. Even granting the importance of the screen and
interface to the phones’ success, Samsung argues, surely they aren’t the source
of all the company’s profits from the phones.
Rather, Samsung maintains, the screen and interface are an article of
manufacture distinct from the phone, warranting a reduced calculation of
damages. Justice Anthony Kennedy in particular has noted the problems inherent
in awarding full relief against a product based on a patent that covers only a
single portion of the product.
On the other side, Apple
relies on the language and history of the statute. The relevant provision of
the law refers to a person who applies a patented design “to any article of
manufacture” – language that presupposes an “article of manufacture” of which a
patented design is only a part – and calls for an award of the “total profit,”
which, Apple maintains, is most easily read to mean the total profit on the
article of manufacture. Apple therefore argues that, as the Federal Circuit
concluded, the phone is the article of manufacture and Apple is entitled to all
of the profits from Samsung’s phones.
Apple also points to an
1886 Supreme Court decision (Dobson
v. Dornan)
interpreting the predecessor of Section 289 to award only the damages
attributable to the patented design element. All agree that Congress promptly
responded to Dobson by rewriting the statute to compel an
award of the “total” profit. Apple cites that history as a source of support
for its case.
Finally, Apple’s brief
reminds the court of the splash that came with the release of the original
iPhone. It is easy to forget, with so many competing phones that look so
similar, but the truth is that many of the phones we use now employ a design
that closely resembles in many relevant respects the patented design elements
from the original iPhone.
Separate from their
dispute about how the statute should work, the parties on both sides try to
persuade the court that the case really doesn’t present that question. Apple,
for its part, contends that Samsung essentially conceded below that the article
of manufacture is the phone, and that the lower courts had no choice but to
award the entire profits because Samsung failed to offer evidence to establish
any lower method of calculating damages. For its part, Samsung claims that the
Federal Circuit held as a matter of law that the article of manufacture is the
product that is marketed for sale, and that the appeals court’s decision must
be reversed because that court did not give Samsung an opportunity to offer
proof that the screen and interface should be treated as a separate article of
manufacture.
The briefs in this case
frame the main question as a balance between Samsung’s policy arguments and
Apple’s arguments about the text and history of the statute. But it is possible
that the court will sidestep that question and remand the case to the Federal
Circuit to reconsider (or clarify) whether the record supports a less inclusive
definition of an “article of manufacture.” We will know a lot more about that
after we hear the justices’ reactions next week.
I should add, in
explanation of the subdued tone of this post, that the blog has adopted a
relativelystrict policy limiting the
editorial content in cases in which Goldstein & Russell, P.C. participate.
Among other things, that policy limits the typical opinions I might offer in a
preview such as this about the relative weight or force of the various
arguments in the case.
[Disclosure: Goldstein & Russell, P.C., whose
attorneys contribute to this blog in various capacities, is among the counsel
to the petitioners in this case. The author of this post, however, is not
affiliated with the firm.]
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