In a recently issued decision, Samsung Electronics Co v Apple, the US Supreme Court (the Court) reversed a judgment by the US Court of Appeals for the Federal Circuit (the Federal Circuit), finding that a damages award for design patent infringement may be limited to revenues attributable to a component of an “article of manufacture” and not the entire article itself.
Samsung appealed the Federal Circuit decision awarding nearly $400 million in damages under 35 USC § 289 to Apple for the infringement by Samsung of three Apple design patents. Apple’s design patents at issue cover a rectangular front face with rounded edges and a grid of colourful icons on a black screen.
Section 289 gives a plaintiff the right to a defendant’s total profits on an “article of manufacture” found to infringe design patents held by the plaintiff. The Court rejected the Federal Circuit’s categorical conclusion that “article of manufacture” always refers to the end product sold to consumers. In the Court’s opinion, the term “article of manufacture” is broad enough to encompass a “product sold to a consumer” as well as “a component of that product”, at least in some cases such as designs for multicomponent products.
However, the Court declined to lay out a test for the first stage of the §289 damages inquiry due to the absence of adequate briefing by the parties and remanded the case back to the Federal Circuit to resolve the remaining issues.