As I mentioned just before the holidays, on Thursday January 12, 2017, at 2 p.m. Eastern Time I'll be one of three panelists for an IP Chat Channel webinar titled Future of Design Patent Damages After Apple v. Samsung. Here is a link to the website, if you'd like to register, and here is a description of the event:
In its recent opinion, the U.S. Supreme Court answered this question posed by Samsung: "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?" The reply of the unanimous court, in an opinion written by Judge Sotomayor: "The term 'article of manufacture' is broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not." That answer rejects the Federal Circuit's longstanding interpretation of Section 289.
However, experts say the Supreme Court's opinion raises many more questions. The Federal Circuit must now create a test that will allow a jury to determine whether the "article of manufacture" covered by a design patent is the entire product or a component, and what that component is. For now, it is not clear whether the patent owner or the defendant bears the burden of proof. Then it will be up to a judge to apportion to the component some part of the infringer's entire profits on the product. Our panel -- a design patent litigator, a damages expert, and a law professor specializing in patent damages -- will discuss how the law of design patent damages might evolve, and see what the options might mean applied to cases currently being litigated such as Apple v. Samsung and Nordock v. Systems.
The other two panelists will be Dawn Hall, Senior Managing Director at FTI Consulting, and Richard Stockton of Banner & Witcoff, Ltd.