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Samsung v. Apple: Taking a Bite Out of the Design
Patent “Article of Manufacture” Controversy
Elizabeth M. Gil
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67
Samsung v. Apple: Taking a Bite Out of the
Design Patent “Article of Manufacture”
Controversy
Elizabeth M. Gil
*
Smartphones have become a universal item. A smartphone is
comprised of hundreds of thousands of patented inventions, many
of which are design patents.
1
It is these design patents that are at
the center of the highly-contested case of Samsung Electronics
Co., Ltd. v. Apple Inc., which involves three of the design patents
within Apple’s iPhone. Beginning in 2011, Apple and Samsung
have been in a seemingly never-ending litigious battle over these
design patents with the case commencing in the district court,
climbing up to the Supreme Court of the United States, and
returning to the district court. It is this case that brought design
patents back into the limelight after more than one-hundred years.
It shed light on 35 U.S.C. § 289, an 1887 statute involving design
patent infringement remedies, which allows design patent owners
to recover from the infringer’s “total profit” from a useful
“article of manufacture” that contains the infringing design. But
how is a court to define “article of manufacture” when the
patented design is a smartphone—an item that contains multiple
components? This Note analyzes the scope of the term “article of
manufacture” as applied to a multi-component product and
proposes a test for the first step of the § 289 damages inquiry.
*
Juris Doctor Candidate 2017, University of Miami School of Law; Editor-in-Chief,
Volume 25, University of Miami Business Law Review. Bachelor of Arts in Political
Science and Psychology, minor in Business Law, University of Miami. I would like to
thank the Volume 25 Executive and Editorial Boards of the University of Miami Business
Law Review for their hard work during the editorial process. I extend my personal gratitude
to my Faculty Advisor, Professor Andres Sawicki, for his patience, vision, and
encouragement throughout the research and writing process. This Note is dedicated to my
family, friends, and the Miami Law class of 2017 (especially Section B).
1
Evan Engstrom, So How Many Patents Are In A Smartphone?, ENGINE (Jan. 19,
2017), http://www.engine.is/news/category/so-how-many-patents-are-in-a-smartphone.
68 UNIVERSITY OF MIAMI BUSINESS LAW REVIEW [Vol. 25:67
I. INTRODUCTION ........................................................................... 68
II. DESIGN PATENTS ........................................................................ 70
A. Obtaining Protection ................................................................. 70
B. The Article of Manufacture ........................................................ 71
i. The Fixation Requirement ................................................... 71
ii. The Article of Manufacture Requirement ............................ 72
C. Enforcement ............................................................................... 73
i. Infringement ......................................................................... 73
ii. Remedies .............................................................................. 74
III. SAMSUNG V. APPLE: A CASE ANALYSIS ...................................... 75
A. District Court ............................................................................. 76
B. Court of Appeals ........................................................................ 80
C. Supreme Court ........................................................................... 81
D. Court of Appeals ........................................................................ 83
IV. A TEST FOR THE FIRST STEP OF THE § 289 DAMAGES
INQUIRY ........................................................................................ 83
A. The Problem ............................................................................... 83
B. The Proposed Test ..................................................................... 84
C. Benefits of the Test ..................................................................... 86
V. CONCLUSION ............................................................................... 87
I. INTRODUCTION
For most people nowadays, it is hard to remember a time when
smartphones
2
did not exist. Ten years ago, smartphones were still a
relatively new concept. That all changed in 2007 when Apple, Inc.
(“Apple”) released its first iPhone and launched smartphones into the
mainstream, thanks to the device’s attractive design and intuitive user
interface.
3
To protect its intellectual property, Apple filed design patent
applications just six days before iPhones were first sold in June 2007.
4
2
Riley v. California, 134 S. Ct. 2473, 2480 (2014) (defining “smartphones” as “cell
phone[s] with a broad range of other functions based on advanced computing capability,
large storage capacity, and Internet connectivity.”).
3
Apple Reinvents the Phone with iPhone, APPLE (Jan. 9, 2007),
http://www.apple.com/pr/library/2007/01/09Apple-Reinvents-the-Phone-with-
iPhone.html; see also 20 years of the smartphone: an evolution in pictures, THE
TELEGRAPH, http://www.telegraph.co.uk/technology/mobile-phones/11037225/20-years-
of-the-smartphone-an-evolution-in-pictures.html?frame=3007865 (last visited Apr. 2017).
4
Abby J. Queale, Transcript of Presentation—The Design Patent: A Sleeping Giant?,
16 FLA. COASTAL L. REV. 139, 143 (2014).
2017] SAMSUNG V. APPLE 69
These design patents became especially relevant on April 15, 2011 when
Apple sued its mobile phone market competitor Samsung Electronics Co.
Ltd., Samsung Electronics America, Inc., and Samsung
Telecommunications America, LLC (collectively “Samsung”) for
infringing on three of its iPhone design patents.
5
In recent history, design patents have increased in importance,
particularly because of the role they play in protecting aspects of
smartphones and tablets.
6
These design patents, though, only cover a small
portion of smartphones, “which include hundreds if not thousands of
electronic components, many of which are themselves protected by utility
patents and are arguably irrelevant to the external look and feel of the
device that the design patents protect.”
7
Now, because of Samsung
Electronics Co., Ltd. v. Apple Inc.,
8
design patents have taken center
stage.
9
The case is part of a long-running patent fight between Apple and
Samsung over the meaning of 35 U.S.C. § 289, which is an 1887 statute
that allows design patent owners to recover from the infringer’s “total
profit” from a useful “article of manufacture” that contains the infringing
design.
10
It is the technical term “article of manufacture” that causes
trouble for the courts, the parties involved in this case, patent attorneys,
and companies. The main question these courts face is whether the “article
of manufacture” as applied to a multi-component product (such as a
smartphone) is necessarily the phone itself or just the case and screen to
which the design patents relate.
This Note proceeds in four parts. Part II describes design patents and
the article of manufacture requirement. Part III details the procedural
5
See generally Complaint for Patent Infringement, Federal False Designation of Origin
and Unfair Competition, Federal Trademark Infringement, State Unfair Competition,
Common Law Trademark Infringement, and Unjust Enrichment, Apple, Inc., v. Samsung
Elecs. Co., Ltd., 909 F. Supp. 2d 1147 (N.D. Cal. 2012) (No. CV 11 1846) [hereinafter
Initial Complaint].
6
Peter Lee & Madhavi Sunder, Design Patents: Law Without Design, 17 STAN. TECH.
L. REV. 277, 284 (2013).
7
Ronald Mann, Opinion analysis: Justices tread narrow path in rejecting $400 million
award for Samsung’s infringement of Apple’s cellphone design patents, SCOTUSBLOG
(Dec. 6, 2016, 4:09 PM), http://www.scotusblog.com/2016/12/opinion-analysis-justices-
tread-narrow-path-in-rejecting-400-million-award-for-samsungs-infringement-of-apples-
cellphone-design-patents/ [hereinafter Mann, Opinion analysis].
8
Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016).
9
See generally Christopher V. Carani, Apple v. Samsung: Design Patents Take Center
Stage?, 5 LANDSLIDE, no. 3, Jan./ Feb. 2013, at 1, available at http://www.americanbar.or
g/content/dam/aba/administrative/litigation/materials/aba-annual-2013/written_materials/
2_1_apple_vs_samsung_FN.authcheckdam.pdf.
10
J. Michael Jakes, Design Patents Take Center Stage, 23 WESTLAW J. INTELL. PROP.,
no. 15, Nov. 16, 2016, at 1, available at http://www.finnegan.com/resources/articles/articl
esdetail.aspx?news=5620171a-cf8b-49f4-8b7a-8fb6a5278848.
70 UNIVERSITY OF MIAMI BUSINESS LAW REVIEW [Vol. 25:67
history of how the design patent case came “full-circle” from its inception
in the district court, up to the Supreme Court of the United States, and back
down to the district court once again. Part IV proposes a test for the first
step of the § 289 damages inquiry to define what is the proper “article of
manufacture” and explains why that is the best solution. Part V offers a
final reflection.
II. DESIGN PATENTS
A. Obtaining Protection
A patent for an invention is an intellectual property right granted to
the patentee by the United States Patent and Trademark Office
(“USPTO”).
11
This right is granted to “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof . . . .”
12
Once this right has
been granted, the patentee can “exclude others from making, using,
offering for sale, or selling the invention throughout the United States or
importing the invention into the United States.”
13
The purpose of the patent
system is to “promote the Progress of Science and useful Arts.”
14
There are three types of patents: utility patents, plant patents, and
design patents.
15
Design patents are centered entirely on the visual, which
contrasts with copyright,
16
trademark,
17
trade secret,
18
utility patent,
19
or
other various protections that have been enacted for specific types of
11
General information concerning patents, UNITED STATES PATENT AND TRADEMARK
OFFICE (Oct. 2015), https://www.uspto.gov/patents-getting-started/general-information-
concerning-patents#heading-2 [hereinafter Information].
12
35 U.S.C. § 101.
13
35 U.S.C. § 154(a)(1).
14
U.S. Const. art. I, § 8, cl. 8; see also Information, supra note 11.
15
Information, supra note 11.
16
Gregory N. Mandel, The Public Perception of Intellectual Property, 66 FLA. L. REV.
261, 266 (2014) (“Copyright law protects original works of authorship, including literary,
dramatic, musical, and artistic work.”).
17
Xuan-Thao Nguyen & Jeffrey A. Maine, Equity and Efficiency in Intellectual
Property Taxation, 76 BROOK. L. REV. 1, 12 (2010) (“[T]rademark laws prevent
competitors from copying source-identifying marks and minimizing the likelihood of
consumer confusion.”).
18
Id. at 45 (“[T]rade secret law was designed to foster innovation and promote
responsible business conduct. To that end, trade secrets are treated as property, and courts
have thus held that regulations forcing trade secret disclosure amount to a governmental
taking of property for which the trade secret owner must be justly compensated.”).
19
Queale, supra note 4, at 139 (“Utilitarian features are protected by a utility patent.”).
2017] SAMSUNG V. APPLE 71
innovation.
20
In 1842, Congress enacted the first design patent statute
based on a perceived lack of protection for ornamental designs.
21
When
Congress introduced this statute, design patents were the only form of
intellectual property protection available for designs.
22
A design patent is granted to “[w]hoever invents any new, original and
ornamental design for an article of manufacture.”
23
Section 171 of the
Patent Act has been interpreted as requiring that a claimed design must be
(1) “new [and] original,”
24
(2) “ornamental,”
25
and (3) “for an article of
manufacture.”
26
The scope of protection of a design patent is defined by a
single claim, which is often expressed as a short phrase and one or more
drawings.
27
A design patent issued prior to May 13, 2015 has a term of
fourteen years from grant.
28
Those design patents issued after May 13,
2015 are for a term of fifteen years from the date of patent grant.
29
B. The Article of Manufacture
i. The Fixation Requirement
The design patent “article of manufacture” requirement has existed in
design patent law from the very beginning.
30
Although the phrase “article
of manufacture” is not statutorily defined, it has been explained through
case law.
31
The Supreme Court defined “article of manufacture” as “the
production of articles for use from raw or prepared materials by giving to
these materials new forms, qualities, properties, or combinations, whether
20
Rebecca Tushnet, The Eye Alone Is the Judge: Images and Design Patents, 19 J.
INTELL. PROP. L. 409 (2012).
21
Lee & Sunder, supra note 6, at 280.
22
Id.
23
35 U.S.C. § 171(a) (emphasis added).
24
William J. Seymour & Andrew W. Torrance, (R)evolution in Design Patentable
Subject Matter: The Shifting Meaning of “Article of Manufacture,” 17 STAN. TECH. L. REV
183, 186–87 (2013) (“The statutory provisions ‘new’ and ‘original’ have not generally been
interpreted as requirements endemic to design patent law. Instead, they have usually been
construed as corresponding to the newness, novelty, and nonobviousness requirements
found in 35 U.S.C. §§ 101, 102, and 103, respectively.”).
25
Gorham Co. v. White, 81 U.S. 511, 524 (1871) (finding design protection
encompasses “not so much utility as appearance”).
26
35 U.S.C. § 171(a) (emphasis added); see also Seymour & Torrance, supra note 24,
at 186. See discussion infra Part II (B).
27
Lee & Sunder, supra note 6, at 281.
28
Information, supra note 11 (emphasis added).
29
Id. (emphasis added).
30
Seymour & Torrance, supra note 24, at 190.
31
Andrew Beckerman-Rodau, Design Patent Evolution: From Obscurity to Center
Stage, 32 SANTA CLARA HIGH TECH. L. J. 53, 58 (2015).
72 UNIVERSITY OF MIAMI BUSINESS LAW REVIEW [Vol. 25:67
by hand-labor or by machinery.”
32
Almost any tangible object or article
satisfies this requirement.
33
When Congress enacted the first design patent statute in 1842, it
provided protection for designs and configurations for articles of
manufacture generally.
34
It also outlined specific categories of protected
articles of manufacture, including textiles, statues, and ornaments, as well
as patterns, prints, and pictures “worked into or worked on, or printed or
painted or cast or otherwise fixed on, any article of manufacture.”
35
Since
its inception, the design patent statute expressly provided that design
patents were only intended to cover designs that either comprised the
article of manufacture itself, or designs that formed a permanent part of
the underlying article of manufacture (i.e., fixed within or worked into its
overall physical structure).
36
Subsequent amendments to the design patent
statute consistently preserved the article of manufacture requirement.
37
Under every amended version of the design patent statute, a fixation
requirement has been strictly enforced.
38
All versions of the design patent
statute have maintained that mere proximity of a design to an article of
manufacture is insufficient.
39
Although Congress omitted an express
fixation requirement in the Patent Act of 1902, courts nevertheless have
interpreted it to still require that a claimed design, in order to be patentable,
must either comprise the article of manufacture itself or be physically
worked into its structure.
40
ii. The Article of Manufacture Requirement
In addition to the fixation requirement, the subject of the design patent
must qualify as an article of manufacture.
41
In the early days of design
patent law, there was little doubt as to what constituted an article of
manufacture because manufactured goods at the time consisted almost
exclusively of hand-made, tangible items.
42
Courts have analyzed this
32
Id.; see also Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980) (quoting Am. Fruit
Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931)).
33
Id. at 58–59.
34
Seymour & Torrance, supra note 24, at 190.
35
Id.; see also Patent Act of 1842, ch. 263, § 3, 5 Stat. 543.
36
Id. at 190–91.
37
Id. at 191.
38
Id.
39
Id.
40
Id. at 193; see e.g., Pioneer Photo Albums, Inc. v. Holson Co., 654 F. Supp. 87, 88
(C.D. Cal. 1987) (holding invalid a design patent for a greeting card which contained two
internal flaps for holding personal photographs because the surface ornamentation was
merely placed on the card and was not integral to the card).
41
Seymour & Torrance, supra note 24, at 194.
42
Id.
2017] SAMSUNG V. APPLE 73
requirement and set forth a few general principles. First, it is “well settled
that the term ‘an article of manufacture’ does not include every article of
manufacture . . . [A]rticles which are more or less hidden from view when
in use are not the proper subject-matter for design patents.”
43
Also, design
patent protection is unavailable for articles of manufacture, which “owing
to their nature, could be a matter of concern to no one.”
44
A design patent
applicant may only claim a design for a portion of an article of
manufacture.
45
Last, a design may be applicable to more than one article
of manufacture.
46
Apart from these general limitations, the article of manufacture
requirement has been construed broadly.
47
As the Supreme Court noted in
Tide-Water Oil Co. v. United States:
The primary meaning of the word “manufacture” is
something made by hand, as distinguished from a natural
growth; but, as machinery has largely supplanted this
primitive method, the word is now ordinarily used to
denote an article upon the material of which labor has
been expended to make the finished product.
48
As technology has advanced and as innovation moves further away from
traditional, human-made, tangible objects, the definition of what
constitutes an article of manufacture becomes more challenging.
49
C. Enforcement
i. Infringement
A patent is infringed when someone, without authority, “makes, uses,
offers to sell or sells” a product containing a design that is substantially
similar to the patented design.
50
Specifically, a design patent is infringed
when any person without authority “(1) applies the patented design, or any
43
Id.
44
Id.
45
Id.
46
Id.
47
Id.; see, e.g., In re Hadden, 20 F.2d 275 (D.C. Cir. 1927).
48
Id. at 195 (quoting Tide-Water Oil Co. v. United States, 171 U.S. 210, 216 (1898));
see also Am. Patents Dev. Corp. v. Carbice Corp. of Am., 38 F.2d 62, 64 (2d Cir. 1930)
(“In thinking of an article of manufacture, one naturally thinks of a permanent contrivance,
which does not operate upon a subject that is part of itself.”).
49
Id. at 196.
50
Jakes, supra note 10, at 2; see 35 U.S.C. §§ 171(b); see also Gorham Co. v. White, 81
U.S. 511, 524 (1871); Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 667–78 (Fed.
Cir. 2008) (en banc).
74 UNIVERSITY OF MIAMI BUSINESS LAW REVIEW [Vol. 25:67
colorable imitation thereof, to any article of manufacture for the purpose
of sale, or (2) sells or exposes for sale any article of manufacture to which
such design or colorable imitation has been applied . . . .”
51
In 1871, the
Supreme Court interpreted the standard of infringement in Gorham Co. v.
White stating,
[I]f, in the eye of an ordinary observer, giving such
attention as a purchaser usually gives, two designs are
substantially the same, if the resemblance is such as to
deceive such an observer, inducing him to purchase one
supposing it to be the other, the first one patented is
infringed by the other.
52
“An owner of a valid design patent can bring an action when he or she
believes that the patent has been infringed.”
53
ii. Remedies
If a patent owner proves infringement in a design patent case, he or
she has a choice of remedies.
54
Damages for design patents can be obtained
under 35 U.S.C. § 284 or § 289.
55
Under § 284, which applies to both
utility and design patents, the patent owner can collect “damages adequate
to compensate for infringement, but in no event less than a reasonable
royalty” for the use of the invention or design.
56
The damages are analyzed
under “but for” causation.
57
Design patent owners also have an alternative remedy that is
unavailable for utility patents.
58
Under § 289, the damages are more of a
property rule, whereby the defendant’s total profits without apportionment
to the article of manufacture to which the design is applied is awarded.
59
Section 289 states,
51
35 U.S.C. § 289 (emphasis added).
52
Gorham, 81 U.S. at 528.
53
Michelle L. Evans, Establishing Infringement of a Design Patent, 105 AM. JUR. 3D
Proof of Facts § 4 (2009).
54
Jakes, supra note 10, at 2.
55
Dennis M. White, Inefficiencies in Overcompensating Design Patent Damages Under
35 U.S.C. § 289 in Complex Technologies, 95 J. PAT. & TRADEMARK OFF. SOC’Y 444, 445
(2013).
56
35 U.S.C. § 284; see also Jakes, supra note 10, at 2.
57
White, supra note 55, at 445; see also 35 U.S.C. § 284; Aro Mfg. Co. v. Convertible
Top Replacement Co., 377 U.S. 476, 507 (1964) (citing Livesay Window Co. v. Livesay
Indus., Inc., 251 F.2d 469, 471 (5th Cir. 1958)) (“The question to be asked in determining
damages is . . . had the Infringer not infringed, what would Patent Holder-Licensee have
made?”).
58
Jakes, supra note 10, at 2.
59
White, supra note 55, at 445 (emphasis added).
2017] SAMSUNG V. APPLE 75
Whoever during the term of a patent for a design, without
license of the owner, (1) applies the patented design, or
any colorable imitation thereof, to any article of
manufacture for the purpose of sale, or (2) sells or exposes
for sale any article of manufacture to which such design
or colorable imitation has been applied shall be liable to
the owner to the extent of his total profit, but not less than
$250, recoverable in any United States district court
having jurisdiction of the parties.
Nothing in this section shall prevent, lessen, or impeach
any other remedy which an owner of an infringed patent
has under the provisions of this title, but he shall not twice
recover the profit made from the infringement.
60
This disgorgement of total profits takes on attributes of a property rule
when the alleged infringing product is a complex, multi-component
product and the ornamental design is only a small feature incorporated in
the entire product.
61
In 1887, Congress added § 289 to U.S. patent law in
response to Supreme Court decisions that severely limited recovery in a
design patent case.
62
Before the Design Patent Act of 1887, a design patent
owner could only recover the proportionate amount of profits that were
proven to be attributable to the patented feature.
63
It is § 289 and its
implications on multi-component articles of manufacture that is at issue in
the Samsung v. Apple case.
III. SAMSUNG V. APPLE: A CASE ANALYSIS
Beginning in 2011, Apple has faced Samsung in a series of legal
battles that spanned ten countries and four continents.
64
Within the United
States alone, these conflicts have transpired in three main jurisdictions: the
Federal Courts, the International Trade Commission (“ITC”), and the
USPTO.
65
Specifically in the Federal Court system, this case has had an
extensive journey—traveling all the way up to the Supreme Court of the
United States and back down to the District Court. The following
paragraphs explain in detail the journey at each stage.
60
35 U.S.C. § 289 (emphasis added).
61
White, supra note 55, at 445.
62
Jakes, supra note 10, at 2.
63
See id. at 2.
64
Britten D. Sessions & Wei Y. Lu, Goliath v. Goliath Fallout: Repercussions of Apple
v. Samsung, 40/41 LINCOLN L. REV. 1, 2 (2014).
65
Id. This Note will focus solely on the litigation in the Federal Courts.
76 UNIVERSITY OF MIAMI BUSINESS LAW REVIEW [Vol. 25:67
A. District Court
On April 15, 2011, Apple sued Samsung asserting, among other
claims, that Samsung’s smartphones infringed upon several of Apple’s
design patents embodied in its 2007 iPhone.
66
On June 16, 2011, Apple
amended its original complaint to include the three design patents in
question.
67
Apple accused Samsung of infringing three of its design
patents including U.S. Design Patent Nos. D618,677 (“D’677 patent”),
D593,087 (“D’087 patent”), and D604,305 (“D’305 patent”).
68
These
design patents protect: (1) the minimalistic face of an iPhone, the front
speaker slot, and edge-to-edge glass of the front display; (2) the
minimalistic face of an iPhone, home button, and rounded corners; and (3)
the layout of Apple’s graphical user interface, including a grid of sixteen
home screen icons on a black screen with a band of “permanent” apps at
the bottom.
69
Representative images of the three asserted design patents
are set forth below.
66
See generally Initial Complaint, supra note 5; see also Brief for the United States as
Amicus Curiae Supporting Neither Party at 5, Samsung Elecs. Co., Ltd. v. Apple Inc., 137
S. Ct. 429 (2016) (No. 15-777), 2016 WL 3194218, at *5 [hereinafter Amicus Brief].
67
See Amended Complaint for Federal False Designation of Origin and Unfair
Competition, Federal Trademark Infringement, Federal Trade Dress Dilution, State Unfair
Business Practices, Common Law Trademark Infringement, Unjust Enrichment, and Patent
Infringement, Apple, Inc., v. Samsung Elecs. Co., Ltd., 909 F. Supp. 2d 1147 (N.D. Cal.
Dec. 17, 2012) (No. CV 11 1846) [hereinafter Amended Complaint].
68
Apple Inc. v. Samsung Elecs. Co., Ltd., 786 F.3d 983, 989 (Fed. Cir. 2015).
69
Lee & Sunder, supra note 6, at 284; see also Amicus Brief, supra note 66, at 5.
2017] SAMSUNG V. APPLE 77
The first patent, the D’677 patent, discloses a single embodiment
directed to the appearance of a front face of a device.
70
70
Carani, supra note 9, at 26; see also U.S. Patent No. D618,677 fig. 3-8 (filed Nov. 18,
2008).
78 UNIVERSITY OF MIAMI BUSINESS LAW REVIEW [Vol. 25:67
The second patent, the D’087 patent, discloses six different
embodiments all directed at a front face with an outer bezel for an
electronic device.
71
71
Carani, supra note 9, at 26; see also U.S. Patent No. D593,087 fig. 3-8 (filed Jul. 30,
2007).
2017] SAMSUNG V. APPLE 79
The last patent, the D’305 patent, is directed to the appearance of a
graphic user interface (“GUI”).
72
Invoking § 289, Apple sought an award of Samsung’s “total profits”
from the sale of the infringing phones.
73
Samsung asserted two objections
to the measure of relief.
74
First, Samsung argued that, under “basic
causation principles,” they should be liable only for profits attributable to
the infringing design, as opposed to other attributes of the phones.
75
Second, Samsung argued that “profits disgorgement [must] be limited to
the ‘article of manufacture’ to which a patented design is applied,” and
72
Carani, supra note 9, at 27; see also U.S. Patent No. D604,305 fig. 1 (filed Jun. 23,
2007).
73
See Amicus Brief, supra note 66, at 5.
74
Id. at 5–6.
75
Id. at 6.
80 UNIVERSITY OF MIAMI BUSINESS LAW REVIEW [Vol. 25:67
that the relevant “article[s] of manufacture” in the case at hand were
components of the phones, instead of the phones themselves.
76
The United States District Court for the Northern District of California
rejected Samsung’s proposed jury instructions embodying those principles
on the grounds that there is no apportionment for profits in design patents
cases.
77
On August 24, 2012, the first jury reached a verdict that a number
of Samsung products infringed Apple’s aforementioned design patents.
78
The jury awarded Apple all the profits that Samsung had received on sales
of the infringing phones.
79
After a partial retrial on damages, the district
court entered final judgment awarding Apple nearly $1 billion in damages
for, among other things, design patent infringement.
80
In 2013, the judge
that presided over the first case found that the damages Samsung had to
pay were calculated incorrectly.
81
Around $450 million of the $1 billion
was invalidated and a retrial commenced later that year.
82
In the retrial,
Apple earned an additional $290 million in damages, bringing the grand
total Samsung owed Apple to $929 million, a total just shy of the original
$1 billion.
83
Subsequently, Samsung filed a notice of appeal.
84
B. Court of Appeals
On March 18, 2015, the United States Court of Appeals for the Federal
Circuit affirmed the jury’s finding of design patent infringement and the
award of Samsung’s total profit on the infringing phones.
85
In reaching
this decision, the court rejected Samsung’s argument that the award under
§ 289 should have been limited to profits attributable to the infringement,
holding that “[t]he clear statutory language [of § 289] prevents us from
adopting a ‘causation’ rule as Samsung urges.”
86
The court also rejected
Samsung’s argument that, for purposes of calculating the appropriate
award under § 289, the infringing “article[s] of manufacture” were the
phones’ exterior cases and the array of icons displayed on the phones’
76
Id.
77
Id.
78
Timothy Coughlin, Apple, Inc. v. Samsung Electronics Co.: Economics of Design
Patent Trolling, 35 CARDOZO ARTS & ENT. L. J. 209, 225 (2016).
79
Amicus Brief, supra note 66, at 6.
80
Id.; see also Coughlin, supra note 78, at 225.
81
Julian Chokkattu, U.S. Court of Appeals Officially Reopens the Apple vs. Samsung
Patent Case, DIGITALTRENDS (Jan. 13, 2017, 2:09 PM), http://www.digitaltrends.com/mo
bile/apple-vs-samsung-supreme-court/.
82
Id.
83
Id.
84
Coughlin, supra note 78, at 225.
85
Apple Inc. v. Samsung Elecs. Co., Ltd., 786 F.3d 983, 1002 (Fed. Cir. 2015).
86
Id.
2017] SAMSUNG V. APPLE 81
screens rather than the phones as sold to the public.
87
The court concluded
that “the entire smartphone [was] the only permissible “article of
manufacture” for the purpose of calculating § 289 damages because
consumers could not separately purchase components of the
smartphones.”
88
As a result, the court affirmed the district court and held
that Apple was entitled to Samsung’s total profits from the infringing
phones.
89
On December 14, 2015, Samsung petitioned for a writ of
certiorari, which was granted on March 21, 2016.
90
C. Supreme Court
On October 11, 2016, the Supreme Court of the United States heard
oral argument from counsel for Apple, Samsung, and the United States as
a “friend of the court.”
91
The question before the Court was whether the
“article of manufacture” to which the infringing design feature has been
applied is the cellphone itself, as the court of appeals found, or a particular
smartphone component.
92
All parties agreed that Apple was entitled to all
profits from the “article of manufacture”—whatever that might be.
93
The
oral arguments also confirmed that all parties agreed to two points.
94
First,
the court of appeals erred in adopting a blanket rule that the “article of
manufacture” is the object sold to consumers. Second, the issue is
ultimately a question of fact.
95
That left open the problem of defining the
“article” to which the design is applied if it is something less than the
article that is sold to consumers.
96
87
See id. (rejecting Samsung’s argument for limiting the profits awarded to “the portion
of the product as sold that incorporates or embodies the subject matter of the patent.”).
88
Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429, 432 (2016) (emphasis added);
see also Apple Inc., 786 F.3d at 1002 (“The innards of Samsung’s smartphones were not
sold separately from their shells as distinct articles of manufacture to ordinary
purchasers.”).
89
Apple Inc., 786 F.3d at 1002.
90
See generally Petition for Writ of Certiorari, Samsung Elecs. Co., Ltd. v. Apple Inc.,
137 S. Ct. 429 (2016) (No. 15-777), 2015 WL 10013702.
91
See Ronald Mann, Argument analysis: Justices cautious about resolving Samsung-
Apple dispute over design of cell phones, SCOTUSBLOG (Oct. 13, 2016, 11:17 AM),
http://www.scotusblog.com/2016/10/argument-analysis-justices-cautious-about-resolving
-samsung-apple-dispute-over-design-of-cell-phones/ [hereinafter Mann, Argument
analysis].
92
Id.; see also Petition for Writ of Certiorari, supra note 90, at (i) (“Where a design
patent is applied to only a component of a product, should an award of infringer’s profits
be limited to those profits attributable to the component?”).
93
Mann, Argument analysis, supra note 91.
94
Id.
95
Id.
96
Id.
82 UNIVERSITY OF MIAMI BUSINESS LAW REVIEW [Vol. 25:67
On December 6, 2016, in a unanimous decision, the Supreme Court of
the United States declined to solve the problem of defining what is an
“article of manufacture.”
97
The Court did, however, reject the $400 million
verdict Apple had won.
98
In essence, the Court reversed the United States
Court of Appeals for the Federal Circuit’s decision to uphold a jury verdict
and sent the case back to the Federal Circuit to define the appropriate legal
standard for what is an “article of manufacture.”
99
The Court barely
discussed the purposes or goals of the design-patent statute.
100
Instead, it
took the position that the text of the statute compels rejection of the Federal
Circuit’s end-product rule.
101
The Court relied heavily on the idea that, according to its dictionary
definition, an “article of manufacture” is “simply a thing made by hand or
machine.”
102
In connection to that definition, the Court found that an
article of manufacture is “broad enough to encompass both a product sold
to a consumer as well as a component of that product.”
103
According to
Justice Sotomayor, “[t]hat a component may be integrated into a larger
product . . . does not put it outside the category of articles of
manufacture.”
104
The narrow holding offers no guidance on how to distinguish the
“article of manufacture” of relevance from the actual cellphones at
issue.
105
The opinion also failed to instruct the Federal Circuit definitively
to reject the entire cellphone as the article of manufacture.
106
What the
Federal Circuit was explicitly instructed to do is to define a test under
which it would be possible that components of a smartphone could be
treated as articles of manufacture.
107
As a result, the Supreme Court left
the problem of defining and applying the appropriate standard for the
Federal Circuit to resolve.
108
97
Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429, 436 (2016) (“We decline to
lay out a test for the first step of the § 289 damages inquiry in the absence of adequate
briefing by the parties.”).
98
See id.
99
Mann, Opinion analysis, supra note 7.
100
Id.
101
Id.
102
Id.; see also Samsung Elecs. Co., Ltd., 137 S. Ct. at 435.
103
Id. at 435.
104
Id.
105
Mann, Opinion analysis, supra note 7.
106
Id.
107
Id.
108
Id.
2017] SAMSUNG V. APPLE 83
D. Court of Appeals
About a month later, the United States Court of Appeals for the
Federal Circuit reopened the patent fight between Apple and Samsung.
109
On February 7, 2017, the court in a non-precedential decision, also refused
to decide the issue but instead remanded the case back to the district court
for reconsideration, “which may or may not include a new damages
trial.”
110
The court commented that “[t]he Supreme Court clarified that a
damages award under § 289 involves two steps: (1) ‘identify the ‘article
of manufacture’ to which the infringed design has been applied;’ and (2)
‘calculate the infringer’s total profit made on that article of
manufacture.’”
111
On remand, the district court will have to consider the
parties’ arguments in light of the trial court record and determine whether
a new damages trial is necessary based upon more detailed jury
instructions.
112
IV. A TEST FOR THE FIRST STEP OF THE § 289
DAMAGES INQUIRY
A. The Problem
The legal dispute between Samsung and Apple has come full circle—
commencing in the district court, rising all the way up to the highest court
in the land, and back down to the district court where it all began. The
Supreme Court concluded that the “article of manufacture” for purposes
of design patent damages could be something less than the end-product
consumers buy.
113
So what is wrong with the Supreme Court “passing the
apple” on the task of defining article of manufacture? The problem is that
the Court did not say anything about how a court is supposed to figure out
what the “article of manufacture” is; instead it sent the case back to the
Federal Circuit to devise a test. The Federal Circuit followed suit and
avoided devising a test.
114
Instead, it instructed the district court to address
109
Apple Inc. v. Samsung Elects. Co., Ltd., 2017 WL 490419, at *1 (Fed. Cir. 2017); see
also Matthew Bultman, Fed. Cir. Reopens Apple-Samsung Patent Damages Row, LAW360
(Jan. 12, 2017, 6:59 PM), https://www.law360.com/articles/880239/fed-circ-reopens-appl
e-samsung-patent-damages-row.
110
Apple Inc., 2017 WL 490419, at *1; see also Dennis Crouch, Apple Samsung: Federal
Circuit Remands Design Patent Damages Decision to District Court, PATENTLYO (Feb. 7,
2017), https://patentlyo.com/patent/2017/02/remands-decision-district.html.
111
Id. (citing Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429, 434 (2016)).
112
Id. at *2.
113
Samsung Elecs. Co., Ltd., 137 S. Ct. at 436.
114
See Apple Inc., 2017 WL 490419, at *1.
84 UNIVERSITY OF MIAMI BUSINESS LAW REVIEW [Vol. 25:67
the problem.
115
As a result, despite this lengthy and continuous litigation,
the issue of defining the terms “article of manufacture” and “applied” in
35 U.S.C. § 289 remains unresolved.
116
There is little guidance as to where the “article of manufacture” starts
or ends, especially when it involves smartphones.
117
Defining the article
of manufacture for single-part products is not a difficult task. However, as
products become more complex with multiple parts, the patented design
may be attributable to other patented or non-patented features and may be
more difficult to define.
118
Design patents cover only a small part of the
smartphones, which include hundreds if not thousands of electronic
components, many of which are themselves protected by utility patents
and are arguably irrelevant to the external look and feel of the device that
the design patents protect.
119
B. The Proposed Test
Prior to the Supreme Court hearing oral argument, the Department of
Justice, as represented by the Solicitor General on behalf of the federal
government of the United States, weighed in as amicus curiae.
120
In its
brief, the United States put forth a test to aid the factfinder in identifying
the “article of manufacture” to which the infringing design has been
applied.
121
The United States agreed with Samsung that “the relevant
‘article of manufacture’ need not always be the finished product as sold to
end-users.”
122
It reasoned that nothing in § 289’s text or history suggests
that the relevant “article of manufacture” must invariably be the product
as sold.
123
Instead, the term “article of manufacture” literally incorporates
all manufactured objects—both complete products and components—and
it has historically been understood to include both.
124
“When the plaintiff’s
patented design is applied to a component of a multi-component product,
the award will turn substantially on the scope and profitability of other
components as to which no infringement occurred.”
125
Section 289’s “total profit” standard, which prohibits any inquiry into
what portion of the profits on a particular “article of manufacture” are
115
Id.
116
White, supra note 55, at 449.
117
Id. at 451.
118
Id. at 455.
119
Mann, Opinion analysis, supra note 7.
120
Jakes, supra note 10, at 3; see also Amicus Brief, supra note 66.
121
See generally id.
122
Id. at 10.
123
Id. at 16.
124
Id.
125
Id. at 8.
2017] SAMSUNG V. APPLE 85
attributable to the infringing design, “may sometimes produce awards that
exceed the commercial benefit that the infringer derived by appropriating
the patented design.”
126
By adopting an overbroad reading of the term
“article of manufacture,” the court would only exacerbate those effects,
which inevitably follow from the unambiguous statutory text.
127
A broad
definition of “article of manufacture” would also provide the patentee with
rights beyond the scope of the invented idea.
128
However, it is unlikely that
the article of manufacture would be interpreted too narrowly given that the
ornamental design is depicted in solid lines that at least incorporates a
portion of the smartphone being sold.
129
When the relevant “article of
manufacture” is a component or portion of a multi-component product, the
infringer’s “total profit” for that “article” may be less than its profit for the
finished item of sale.
130
According to the United States, identifying the relevant “article of
manufacture” involves a case-by-case specific analysis of “the relationship
among the design, the product and any components.”
131
The factfinder
should identify the article in which the design is prominently featured, and
that most fairly may be said to embody the defendant’s appropriation of
the plaintiff’s patented innovation.
132
“When the product whose sale gives
rise to infringement liability is made up of multiple components, the
factfinder must determine whether the ‘article of manufacture’ to which
the defendant has applied the patented design is the entire product as sold,
or a component of that product.”
133
The United States’ brief also identified a four-factor test for
determining what is the relevant “article of manufacture.”
134
First, the
scope of the design patent claimed in the plaintiff’s patent, including the
drawing and written description, provides insight into which portions of
the underlying product the design is intended to cover as well as how the
design relates to the product as a whole.
135
Second, the factfinder should
examine the relative prominence of the design within the product as a
whole.
136
Third, the factfinder should consider whether the design is
conceptually distinct from the product as a whole.
137
Fourth, the physical
126
Id.
127
Id.
128
White, supra note 55, at 449.
129
Id.
130
Amicus Brief, supra note 66, at 10.
131
Id. at 9.
132
Id.
133
Id. at 16.
134
Id. at 27–29.
135
Id.
136
Id. at 28.
137
Id. at 28–29.
86 UNIVERSITY OF MIAMI BUSINESS LAW REVIEW [Vol. 25:67
relationship between the patented design and the rest of the product may
reveal that the design adheres only to a component of the product.
138
The undertaking of identifying the relevant article of manufacture is
properly assigned to the factfinder because context-specific judgments
about the relationship of the design to the article as a whole—the design’s
effect on the product’s appearance, the component’s physical separability,
and how the components are manufactured—are essentially factual in
nature.
139
Moreover, treating the identification of the relevant “article of
manufacture” as a jury question is consistent with the jury’s function in
determining design-patent infringement.
140
The plaintiff bears the ultimate
burden of establishing the infringer’s total profit.
141
However, the
defendant, as the manufacturer or seller of the product in question, should
bear the burden of identifying any component that it views as the relevant
article of manufacture.
142
An essential part of the United States’ approach is giving the jury the
appropriate jury instructions so that they, as the factfinders, can determine
what is the article of manufacture.
143
As the United States explained in its
brief, the district court’s jury instruction below was erroneous because it
equated the relevant “article of manufacture” with the accused phones as
a whole, rather than permitting the jury to determine whether the phone
itself or a portion of the phone was the “article of manufacture” to which
the patented design had been applied.
144
Instead, the jury should be given
instructions that make it clear that the article of manufacture can be
something less than the entire smartphone.
C. Benefits of the Test
The author of this Note proposes that the suggested test of the United
States as amicus curiae would be the best solution for the first step of the
§ 289 damages inquiry. This test would be beneficial because currently,
without the factors, there is no clear, workable way to decide what is the
article of manufacture in a design patent.
145
Judges, patent lawyers, and
clients like clear rules.
146
Therefore, a list of factors, as suggested by the
United States as amicus curiae, would assist legal professionals in their
138
Id. at 29.
139
Id.
140
Id. at 30.
141
Id.
142
Id. at 30.
143
Id. at 31–32.
144
Id. at 31–32.
145
See Jakes, supra note 10, at 4.
146
See id.
2017] SAMSUNG V. APPLE 87
task of determining the appropriate legal remedy for design patent
infringement.
147
Moreover, the test proposes a case-by-case analysis of the relationship
among the design, the product, and any components.
148
This approach
would anchor the inquiry in § 289’s purpose, which is to provide the
patentee with a remedy and to prevent the infringer from profiting from
the unlawful appropriation of the patented design.
149
It would also
encourage the factfinder to keep in mind the scope of the plaintiff’s
innovation by identifying the article in which the patented design
prominently features, without unnecessarily including aspects of the
product that are unrelated to the protected design.
150
As a result, the
chances of the plaintiff being overly compensated for the article of
manufacture that was not infringed is greatly diminished.
V. CONCLUSION
Apple and Samsung are both giants in the high-tech industry that have
created smartphone devices that are essentially ubiquitous.
151
Both have
made billions of dollars in profits from their individual ventures and
account for over 35% of the global smartphone market share combined.
152
Each company is determined to take down the other.
153
Given these
circumstances, it is no wonder why these companies have fought to
fiercely protect their intellectual property, especially their coveted design
patents.
It is this fierce fight over design patents that brought the case of
Samsung v. Apple to the limelight and all the way up to the highest court
in the land. And by doing so, these technology titans have shined a
spotlight on design patents by making it clear that this form of intellectual
property occupies a prominent role in protecting commercial products,
including sophisticated ones like smartphones.
154
However, this case also
brought attention to another puzzling issue in the design patent world:
remedies for design patent infringement.
147
Id.
148
Amicus Brief, supra note 66, at 27.
149
Id. at 26.
150
Id.
151
Sessions & Lu, supra note 64, at 1.
152
Id.; Anita Balakrishnan, Apple is back on top in the smartphone wars with a razor-
thin lead, CNBC (Feb. 15, 2017, 1:06 P.M.) http://www.cnbc.com/2017/02/15/gartner-ap
ple-beats-samsung-global-smartphone-shipments-q4-2016.html (“Apple has 17.9 percent
of the global smartphone market share, narrowly above Samsung’s 17.8 percent.”).
153
Sessions & Lu, supra note 64, at 2.
154
See Jakes, supra note 10, at 4.
88 UNIVERSITY OF MIAMI BUSINESS LAW REVIEW [Vol. 25:67
The Samsung v. Apple case has been a part of a long-running fight
between Apple and Samsung over the meaning of 35 U.S.C. § 289.
155
Particularly, the companies have debated the meaning over the technical
term “article of manufacture” and how that term should be applied as to
multi-component products when determining remedies for design patent
infringement. However, on appeal, the Supreme Court of the United States
only answered a very narrow question: whether the term “article of
manufacture” constitutes the entire product or only a component.
156
It did
not give guidance on how a court is supposed to figure out what the “article
of manufacture” is.
157
Indeed, the Supreme Court struggled to devise a test for determining
what is the “article of manufacture.”
158
As Justice Anthony M. Kennedy
said to Samsung’s counsel during oral argument: “[t]he problem is, is how
to instruct the jury on that point. Both parties, not the government, both
parties kind of leave it up and say, oh, give it to the juror. If I were the
juror, I simply wouldn’t know what to do under your . . . test.”
159
As a
result, the Supreme Court did not provide a test for determining the first
step of the § 289 inquiry.
160
Instead, it left that problem for the lower court
to solve.
161
The United States as amicus curiae did, however, attempt to solve the
problem by submitting factors that courts should consider when
determining what is the article of manufacture of a design patent.
162
Courts
should adopt these factors because it would provide clear guidance going
forward for patent attorneys, their clients, jurors, and judges. In the
meantime, it remains to be seen whether courts will take a bite out of the
design patent “article of manufacture” controversy by adopting such a test.
155
Jakes, supra note 10, at 1.
156
See Gene Quinn & Steve Brachmann, Supreme Court overturns $400 million Apple
verdict against Samsung in smartphone design patent infringement case, IPWATCHDOG
(Dec. 6, 2016), http://www.ipwatchdog.com/2016/12/06/supreme-court-apple-samsung-is
martphone-design-patent/id=75434/.
157
Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429, 436 (2016).
158
Id.
159
Transcript of Oral Argument at 4, Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct.
429 (2016) (No. 15-777).
160
Samsung Elecs. Co., Ltd., 137 S. Ct. at 436.
161
Id.
162
See generally Amicus Brief, supra note 66.
