As a follow-up to yesterday's post, here is a link to Samsung's Supreme Court brief addressing the question of whether section 289 of the Patent Act requires the disgorgement of the defendant's total profit from sales of design patent infringing products, or only the profit attributable to the infringing component. As expected, it makes the points I mentioned in yesterday's post. It also discusses the legislative history of, and some possible background assumptions that Congress might have had in enacting, the predecessor statute to section 289--though how much that legislative history will influence the Court's interpretation of the text remains to be seen. (The brief notes that one member of Congress, when asked "'[t]o what particular kinds of designs' the bill applied," mentioned "that '[i]t applies to designs for carpets, oil-cloth, wallpaper, &c." (p.41), but of course the statute on its face isn't limited to such designs. Whether the legislative history read in its entirety, to the extent it is relevant at all, supports Samsung's argument or not will I imagine be a contested issue between the parties.) In any event, Samsung makes a powerful case in its introduction (pp. 2-3), as well as later in the brief, as to why the disgorgement rule as applied here is absurd as a matter of policy:
The Federal Circuit’s automatic entire-profits rule would have disastrous practical consequences that Congress surely did not intend. The rule would create extreme asymmetry between design patents and utility patents, which are governed by ordinary rules of causation and proportionality. By making the most trivial design patent worth exponentially more than the most innovative utility patent, the rule would distort the patent system and harm innovation and competition. The rule would encourage companies to divert research and development from useful technologies to ornamental designs. It would encourage design-patent holders to litigate even weak infringement claims in a quest for outsized awards. And it would encourage non-practicing entities to use design patents as the next big thing for extracting holdup value from targeted businesses, with such extortionate demands posing especially grave threats to small businesses for whom a single design misstep could be an existential threat. Congress could not have intended any of these results.If for whatever reason the Court doesn't see fit to interpret the statute in an economically rational way this time around, let's hope that some future Congress will see fit to amend the statute.