Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

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

By Jonathan Moskin

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).

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Bankruptcy Sales: Finding a Diamond In the Rough Image

There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.

Judge Rules Shaquille O'Neal Will Face Securities Lawsuit for Promotion, Sale of NFTs Image

A federal district court in Miami, FL, has ruled that former National Basketball Association star Shaquille O'Neal will have to face a lawsuit over his promotion of unregistered securities in the form of cryptocurrency tokens and that he was a "seller" of these unregistered securities.

Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It Image

Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?

Blockchain Domains: New Developments for Brand Owners Image

Blockchain domain names offer decentralized alternatives to traditional DNS-based domain names, promising enhanced security, privacy and censorship resistance. However, these benefits come with significant challenges, particularly for brand owners seeking to protect their trademarks in these new digital spaces.

Coverage Issues Stemming from Dry Cleaner Contamination Suits Image

In recent years, there has been a growing number of dry cleaners claiming to be "organic," "green," or "eco-friendly." While that may be true with respect to some, many dry cleaners continue to use a cleaning method involving the use of a solvent called perchloroethylene, commonly known as perc. And, there seems to be an increasing number of lawsuits stemming from environmental problems associated with historic dry cleaning operations utilizing this chemical.