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Design Patent Infringement Damages May be Based on Infringer's Profits from Individual Product Components: Supreme Court
Practical Law Legal Update w-004-8643 (Approx. 3 pages)
Design Patent Infringement Damages May be Based on Infringer's Profits from Individual Product Components: Supreme Court
by Practical Law Intellectual Property & Technology
| Published on 06 Dec 2016 • USA (National/Federal) |
In Samsung Electronics Co., Ltd. v. Apple Inc., the US Supreme Court held that under 35 U.S.C. § 289, an article of manufacture includes individual components of a multi-component product consumers purchase, reversing the US Court of Appeals for the Federal Circuit's $399 million damage award to Apple, Inc.
On December 6, 2016, the US Supreme Court issued its decision in Samsung Electronics Co., Ltd. v. Apple Inc.:
- Reversing and remanding the US Court of Appeals for the Federal Circuit's $399 million damage award for design patent infringement. For more information concerning the Federal Circuit's decision, see Legal Update, Entire Profits of Infringing Products Proper Measure of Damages for Design Patent Infringement: Federal Circuit.
- Holding that under 35 U.S.C. § 289, an article of manufacture includes individual components of a multi-component product consumers purchase.
The Supreme Court first noted that a damages award under Section 289 of the Patent Act requires the court to:
- Identify the article of manufacture to which the infringed design has been applied.
- Calculate the infringer's total profit made on that article of manufacture.
Continuing, the Supreme Court decided only one issue, specifically, that for a multi-component product, the relevant article of manufacture can be the end product sold to the consumer or a component of that product. This conclusion was based on the court's determination that, as used in the statute, an article of manufacture is merely a thing made by hand or machine. It did not set out a test to identify the relevant article of manufacture because the parties did not adequately brief the issue.