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

On March 21, 2016, the Supreme Court granted Samsung's request, in Apple, Inc. v. Samsung Elecs. Co., 786 F.3d 983 (Fed. Cir. 2015), for certiorari to consider whether Section 289 of the Patent Act, governing monetary relief for design patent infringement, requires an apportionment of profits for only the infringing feature(s) of the accused product, or instead contemplates profits for the entire product. 35 U.S.C. '289 provides that “[w]hoever during the term of a patent for a design, without license of the owner ' applies the patented design to any article of manufacture ' shall be liable to the owner to the extent of his total profit ' .” By contrast, 35 U.S.C. '284, applicable to utility patents , specifies that damages (not profits) shall be “adequate to compensate for the infringement.” Whether the term “article of manufacture” can be read somehow to mean something less than the entire accused product or whether, by other means, a defense of apportionment can be read into Section 289 are the key issues before the Court. (The Supreme Court declined to grant certiorari on an additional question presented by Samsung, namely, whether, where a design patent includes non-ornamental features, the fact-finder should be required to filter out those features in assessing infringement.)