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

By Jonathan Moskin
June 01, 2016

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.)

Samsung makes a compelling case that Section 289, enacted in the 19th century, does not adequately contemplate technically complex products with integrated designs. As it notes, under a narrow literal reading of the statute, a design patent for a cupholder integrated into an entire car or truck might permit recovery of damages on the entire vehicle. Samsung further notes that 100 years ago, the Second Circuit took note of the same dilemma with similar precision: “A patent for a 'book binding' cannot, either justly or logically, be so identified with the entire book as to give all of the profits on a work of literary genius to the patentee for the binding, although the binding was manufactured with and for that one book, and has no separate commercial existence. The binding and the printed record of thought respond to different concepts; they are different articles.” Bush & Lane Piano Co. v. Becker Bros., 234 F. 79 (2d Cir. 1916). There, an award for infringing a design patent on the housing for pianos was held not to encompass the value of the entire assembled instrument, only the housing (although, as noted below, additional facts of that case might not support Samsung's argument now).

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