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

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).

Before ultimately rejecting Samsung's argument, the Federal Circuit in Apple v. Samsung certainly acknowledged Samsung's policy argument (as framed in one of the amicus briefs supporting Samsung), “that an award of a defendant's entire profits for design patent infringement makes no sense in the modern world.” However, the appellate court deflected this plea, noting that “[t]hose are policy arguments that should be directed to Congress. We are bound by what the statute says, irrespective of policy arguments that may be made against it.” Apple, 786 F.3d at 1002 fn. 1.