App-portionment In the Supreme Court In <i>Apple v. Samsung</i>

Samsung's Argument

No matter how compelling Samsung's policy arguments, it is indeed less clear that the maker of the Galaxy and other popular phones has identified any actual ambiguity in the statute counseling reversal. Samsung relies heavily on the century-old insights (cited above) from Bush & Lane Piano. However, as the Federal Circuit noted (and as Apple emphasizes in opposing Samsung's certiorari petition), different piano housings could be selected by the consumer from among several options, thus making the piano cases salable articles separable from the actual piano mechanisms. By contrast, the housings and the “innards” of the parties' phones are only sold as a unit and cannot be selected separately. In this galaxy, the elements are all part of one unified gravitational field.

Moreover, Judge Prost's Federal Circuit decision rests not only on the literal text of Section 289, but also its history. Indeed, as the Federal Circuit noted, Section 289 was specifically amended 130 years ago to eliminate an apportionment requirement. Citing Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437 (Fed. Cir. 1998), Judge Prost explained: “'Apportionment ' required [the patentee] to show what portion of the infringer's profit, or of his own lost profit, was due to the design and what portion was due to the article itself. ' The Act of 1887, specific to design patents, removed the apportionment requirement '.' [138 F.3d at 1441]. The provisions in the Act of 1887 on design patent infringement damages were subsequently codified in Section 289 of Title 35.” Apple, 786 F.3d at 1001.

Regarding the actual design patents in issue, Samsung characterizes Apple's three design patents as narrowly drawn only to the face and beveled edge of the phones and the user interface. Yet, Apple's use of dotted lines to exclude many specific limiting features of the iPhone design instead permits the opposite inference that, regardless of the other features of the phones, Apple's patents broadly cover any phones having: 1) the flat rectangular face with rounded corners; 2) the same face together with a raised beveled edge separating the glass display from the rest of the device; or 3) the general features of the graphical user interface. As Samsung itself notes, In re Zahn, 617 F.2d 261 (C.C.P.A. 1980), confirmed that, by use of dotted lines, a patentee can claim only selected features of a product design. However, this does not limit the scope of the design patent; rather, the result is that, by paring away limiting details, design patent law is in harmony with Ludwig Mies van der Rohe's insight concerning modern design: “less is more.”

Samsung argues that “article of manufacture” (which is not defined in the statute), should be read to mean “one of several things presented as connected or forming a whole,” citing the definition of “article” in the first Black's Law Dictionary, published in 1891 (four years after enactment of the statute). However, as Apple observes, in passing the Design Patent Act of 1877, Congress noted that “[i]t is expedient that the infringer's entire profit ' should be recoverable, as otherwise none of his profit can be recovered, for it is not apportionable.” 18 Cong. Rec. 834 (1887). Put differently, even if the specific features Apple patented are separately “articulable” (in the sense of “article” urged by Samsung), it is not clear under the actual language of Section 289 how (for instance) the “flat rectangular face with rounded corners” or the general features of the graphical user interface are separate “articles of manufacture,” or why Samsung would not, nonetheless “be liable to the owner to the extent of his total profit '” on the entire phone, which (again applying the literal language of Section 289) is certainly an article of manufacture to which the accused design is applied. Bush & Lane Piano itself noted that “[t]he manifest purpose of Congress was to enlarge the remedy against infringers of design patents, and to declare that the measure of profits recoverable on account of the infringement should be the total net profits on the 'whole article.'” 234 F. at 81.

Design Patents

Unlike the open texture of trade dress protection for designs, or copyright (to the extent available for industrial designs), design patents have been said to have essentially no scope. Thus, to understand the reach of a design patent, one might consider a bear trap. Although one must actually step into its narrow jaws to be caught, the unlucky victim likely faces clear and unhappy consequences. Simply by adopting the few features claimed in Apple's patents, Samsung has found itself in just such a bear trap (regardless of any other novel or non-infringing features of its phones). If any inference can be drawn from the fact that there have been few if any compelling cases for apportionment in the 100 years between Bush & Lane Piano and Apple v. Samsung, it may simply be because the design of the smartphone is an outlier, not that the words of the statute have been made unclear by modern technology. Samsung may now be an unfortunate bear, but this may be the proverbial hard case that does not require rewriting the law (or that does require rewriting the law, albeit by Congress).

Laying aside the Supreme Court's recent history of reviewing Federal Circuit decisions with a somewhat jaundiced eye, in this instance, given that the Court also declined to review Samsung's objections that the jury instructions directed jurors to focus on the overall design of the accused product (rather than only their ornamental, non-functional, features), there are good grounds to infer that, in assessing damages, the Court is not inclined to dissect the Apple design into its smallest patentable features. Hence, one might expect the Court to agree with Apple that the literal wording of Section 289 (as distinct from Section 284) requires that profits be calculated on the entire article of manufacture ' at least where the article cannot coherently be broken into separate components (as in the example of a patented cupholder in an entire truck or the piano housings in Bush & Lane Piano).

App-portionment may have to await legislative action.

Jonathan Moskin is a partner in the New York office of Foley & Lardner LLP and a member of this newsletter's Board of Editors. ' Jonathan E. Moskin, 2016.