A patent grants its holder the exclusive right to exclude others from making, using, importing, or selling the patented invention for a limited time. Authority for the U.S. patent system derives from Article I, Section 8, Clause 8 of the Constitution, which empowers Congress to secure for limited times to inventors the exclusive right to their discoveries. The Patent Act, 35 U.S.C.
Should the award resulting from the infringement of a design patent be calculated as the profits from the entire product or be limited to only the profits attributable to the particular infringed component?
The Supreme Court will decide whether the damages awarded in the case of design patent infringement should be calculated as the entire profits of the whole product or be limited to the profits attributable to the patent-protected component. The parties’ arguments center on divergent purposes of the controlling statute, 35 U.S.C. § 289, as well as the meaning of “article of manufacture” as it is used within § 289. Apple, pointing to the plain language, congressional intent, and policy implications, argues that the purpose of § 289 was to overturn judicial precedent and allow a design patent owner to recover damages when only a component of a device infringes the design patent. Samsung, however, argues that Apple’s reading is too broad and cuts against congressional intent because it will result in illogical outcomes and remove centuries-old judicial precedent. Depending on how the Supreme Court rules, this case will impact research and development funding and potentially create a new avenue of patent trolling.
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?
In April 2011, Apple sued Samsung for infringement of design and utility patents, trademarks, and trade dress. See Apple Inc. v. Samsung Elecs. Co. Ltd., No. CV 5:11-cv-01846, 4 (Fed. Cir. 2015).
