Design Patent Drafting Strategies in View of Apple v. Samsung
Intellectual Property Alert 05/31/18 Nicholas P. Schmidbauer, Justin D. DeAngelis, Justin E. Doop
In a historic judgment, a jury in the Northern District of California awarded Apple, Inc. (Apple) $533,316,606 USD for infringement of three Apple design patents by Samsung Electronics Co. Ltd. (Samsung), and $5.3 million USD for infringement of two Apple utility patents. This verdict is the most recent decision in a patent infringement case that has lasted the better part of a decade and has made its way to, and has been remanded from, the U.S. Supreme Court. In the Supreme Court’s opinion, which was handed down on December 6, 2016, the Court held 8-0 to reverse an award of $399 million USD to Apple for the infringement of the Apple design patents and returned the case to the Court of Appeals for the Federal Circuit (CAFC) to newly assess Samsung’s damages through a less rigid test to identify the applicable “article of manufacture.”
The question of how to define an “article of manufacture” has been an issue that courts have been grappling with throughout the protracted Apple v. Samsung litigation. The statute at issue, 35 U.S.C. § 289, provides that whoever, without license, applies a patented design to “any article of manufacture . . . shall be liable to the owner to the extent of his total profit.” Apple proffered that the article of manufacture at issue was the smartphone in its entirety, while Samsung argued that the article of manufacture is something much less, such as discrete, separable sub-components that may be analyzed independently from the smartphone as a whole.
While District Courts across the United States had been juggling with varying tests to define an article of manufacture in design patent damage analyses since the Supreme Court’s holding in 2016, many courts have applied the “article of manufacture” test put forward by the U.S. Solicitor General in an amicus brief to the Court. The Solicitor General’s test succinctly considers the scope of the design, the prominence of the design within the infringing product, conceptual distinctness of the design from the infringing product, and the physical relationship between the patented design and the infringing product.
In the remanded Apple v. Samsung case, U.S. District Court Judge Lucy Koh adopted the test proposed by the Solicitor General, which includes the four aforementioned factors that may be used to determine the relevant article of manufacture. While the Solicitor General’s “article of manufacture” test has not been formally endorsed by either the CAFC or the Supreme Court, it certainly appears that this test has been adopted by lower courts and, moving forward, will be the test by which design patent damages under § 289 will be calculated. In view of such, design patent holders stand to make significant gains against infringers with respect to awardable profits in a damages analysis after a finding of infringement, barring an act of Congress or a determination by one of the reviewing courts that the Solicitor General’s test is not the proper test.
Therefore, design patent filers must take steps to understand and consider these factors when drafting design applications to properly protect and effectively enforce a patented design. Further, although a clear set of rules for determining the relevant article of manufacture of a multi-component design is not set in stone, it is important that design applications be drafted with forethought regarding the intended claiming strategy. For instance, while it may seem advantageous to acquire a design patent with the broadest possible claim coverage for a design, doing so may effectively limit the patented design to a narrow sub-component of the article of manufacture and limit the total amount of damages a design patent holder may be able to obtain. On the other hand, drafting design applications with a narrow claim encompassing all aspects of the article of manufacture may be too narrow for practical enforcement.
Understanding these risks should be assessed at the outset of the preparation of any design application. One strategy that may be used to provide broad claim coverage for a design, while still allowing a future design holder to fully enforce their rights against infringers of the patented design, is to create and file a design application with multiple embodiments. We have effectively employed this strategy by crafting multiple embodiment applications in such a way that reduces the likelihood of a restriction requirement, but adds breadth and variability to the scope of the design. Further, when dealing with multiple-component designs, utilization of advanced dis-claiming strategies and the inclusion of indeterminate boundaries may provide significant breadth, while fully encompassing the entire article of manufacture for purposes of any damages assessment. Such applications can provide a patent holder with varying claim scope so that a design patent holder can robustly enforce and protect their design.
All in all, the message is clear: recoverable damages attributable to the infringement of a U.S. design patent can be substantial. Significantly, the additional $133 million awarded to Apple between intervening jury trials on damages indicates that this newly adopted, four-factor article of manufacture test allows design patent holders to use their rights offensively in a meaningful way in order to collect significant damage awards when design rights are infringed.