The Apple v. Samsung Retrial: Breaking Down Apple’s Design Patent Claims

This evening I am delighted to publish a guest post by Professor Sarah Burstein on the Apple v. Samsung design patent damages retrial, which began this week.

Professor Burstein: In August 2012, a jury awarded Apple over a billion dollars in its case against Samsung. That award was based on Samsung’s infringement of three design patents, three utility patents, and various registered and unregistered trade dress rights. Now, on remand from the U.S. Supreme Court, Apple is arguing it is entitled to a billion dollars for the design patent infringement alone.

Under 35 U.S.C. § 289, the owner of a design patent can recover the “total profits” earned from certain acts of infringement. According to the Supreme Court, 

Arriving at a damages award under § 289 . . . involves two steps. First, identify the “article of manufacture” to which the infringed design has been applied. Second, calculate the infringer’s total profit made on that article of manufacture.

The Court refused, however, to “to set out a test for identifying the relevant article of manufacture at the first step of the § 289 damages inquiry.” (For prior coverage of the Supreme Court’s decision on this blog, see here.)

When the case came back to her, Judge Koh decided to adopt the multi-factor balancing test proposed by the United States Government as amicus curiae in Samsung v. Apple. That test requires the jury to consider:

(1) “[T]he scope of the design claimed in the plaintiff’s patent,”

(2) “[T]he relative prominence of the design within the product as a whole,”

(3) “[W]hether the design is conceptually distinct from the product as a whole,” and

(4) “[T]he physical relationship between the patented design and the rest of the product.”

So the jury will have to decide if the relevant articles are the entire Samsung phones, as Apple argues, or just components thereof, as Samsung argues. The test chosen by Judge Koh doesn’t provide them much guidance in applying or weighing these factors. Therefore, the verdict will likely come down to what the jury thinks is fair. (For more on the problems with the Government’s test, see here.)

Based on media reports, it appears that Apple spent most of its opening argument focusing on the importance—and value—of the design of the iPhone as a whole. But none of the design patents at issue actually claim the design of the iPhone as a whole. To clarify the issues in this case, it may be helpful to review what the first jury did—and did not decide—on Apple’s design patent claims.

In the first trial, Apple accused 19 Samsung phones of infringing three of its design patents. The jury found that 18 of them infringed at least one design patent. Of those 18, the jury found that 11 infringed one design patent, four of them infringed two design patents, and three of them infringed all three design patents:

Specifically, the jury found that a third (6/18) of the infringing phones infringed only the D’305 patent, which claims this screenshot of the iPhone graphical user interface (GUI):

The jury also found that almost another third (5/18) infringed only the D’677 patent, which claims a flat, black phone face with rounded corners:

Only 3/18 of the infringing phones were found to infringe all three design patents. Coincidentally, these three were also the only ones found to infringe the D'087 patent, which claims the flat front face and bezel:

 

 

Apple has argued that these three design patents cover “the overall look-and-feel of the iPhone.” Even if that were true, that reasoning would only apply to 3/18 of the infringing phones. Here is a more detailed breakdown of the claims by product:

Product	D'305	D'677	D'087
Captivate	Infringed	Not accused	Not accused
Continuum	Infringed	Not accused	Not accused
Droid Charge	Infringed	Not accused	Not accused
Epic 4G	Infringed	Not accused	Not accused
Fascinate	Infringed	Infringed	Not accused
Galaxy S 4G	Infringed	Infringed	Infringed
Galaxy S (i9000)	Infringed	Infringed	Infringed
Galaxy S (i9100)	Not accused	Infringed	Not infringed
Galaxy S II (AT&T)	Not accused	Infringed	Not infringed
Galaxy S II (Epic 4G Touch)	Not accused	Infringed	Not infringed
Galaxy S II (Skyrocket)	Not accused	Infringed	Not infringed
Galaxy S II (T-Mobile)	Not accused	Infringed	Not accused
Galaxy S Showcase (i500)	Infringed	Infringed	Not accused
Gem	Infringed	Not accused	Not accused
Indulge	Infringed	Not accused	Not accused
Infuse 4G	Infringed	Infringed	Not infringed
Mesmerize	Infringed	Infringed	Not accused
Vibrant	Infringed	Infringed	Infringed

If Apple’s theory of the case is correct, then it effectively got three bites at the apple for each accused product. Under Apple’s theory, it wouldn’t matter whether a particular Samsung phone infringed one patent, two patents, or all three of them—Apple would be entitled to the same amount of damages either way. That seems like a strange result. (And no, it isn’t one dictated by the original intent of Congress.)

Of course, some may believe that Samsung’s suggested amount of applicable “total profits”—$28 million—is also disproportionately high, in light of any actual harm suffered.

But whichever way the jury goes, its verdict will pave the way for the seemingly inevitable appeal. If the Federal Circuit hasn’t done so by then, it will have to pick an “article of manufacture” test. (There is another case currently on appeal that may or may not raise that issue.) And even if the Federal Circuit adopts the Government’s test—which I, for one, hope it doesn’t—that would still leave a number of open questions about what the factors mean and what kinds of evidence can be used for each of them. So regardless of what happens this week, the “article of manufacture” issue is still far from being resolved.