Samsung Electronics Co. v. Apple Inc., No 15-___ (design patent scope and damages calculation)(New Petition)

by Dennis Crouch

Samsung Electronics Co. v. Apple Inc., No 15-___ (on petition for writ of certiorari) (Samsung Petition)

Samsung has now filed its petition for writ of certiorari challenging the $400 million that it has paid for infringing Apple’s design patents that cover the iconic curved corner iPhone and its basic display screen.[1]  Samsung writes, “[The Supreme Court] has not reviewed a design-patent case in more than 120 years.”[2] Here, Samsung raises two questions that go to the core of the power of design patent rights. In its petition, Samsung frames the issues as follows.

Design patents are limited to “any new, original and ornamental design for an article of manufacture.” 35 U.S.C. 171. A design-patent holder may elect infringer’s profits as a remedy under 35 U.S.C. 289, which provides that one who “applies the patented design … to any article of manufacture … shall be liable to the owner to the extent of his total profit, … but [the owner] shall not twice recover the profit made from the infringement.”

The Federal Circuit held that a district court need not exclude unprotected conceptual or functional features from a design patent’s protected ornamental scope. The court also held that a design-patent holder is entitled to an infringer’s entire profits from sales of any product found to contain a patented design, without any regard to the design’s contribution to that product’s value or sales. The combined effect of these two holdings is to reward design patents far beyond the value of any inventive contribution. The questions presented are:

1. Where a design patent includes unprotected non-ornamental features, should a district court be required to limit that patent to its protected ornamental scope?

2. 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?

Of course, Questions 1 and 2 are likely to impact utility patent rights as well.

The brief cites to Patently-O essays by Gary Griswold and Jason Rantanen (predicting an “explosion of design patent assertions and lawsuits”).

= = = = =

[1] U.S. Design Patent Nos. D618,677; D593,087; and D604,305.

[2] See Gorham Co. v. White, 81 U.S. 511 (1871);  Dobson v. Dornan, 118 U.S. 10 (1886); Smith v. Whitman Saddle Co., 148 U.S. 674 (1893); and Dunlap v. Schofield, 152 U.S. 244 (1894).


About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

58 thoughts on “Samsung Electronics Co. v. Apple Inc., No 15-___ (design patent scope and damages calculation)(New Petition)

  1. What is meant by “unprotected non-ornamental?” For example, does it include “not claimed,” or is it meant to or respond to “unpatentable because non-functional?” Also, recalling that features can be both functional and ornamental, what is meant by “non-ornamental?” The case law on tire tread designs aptly illustrates features that are both functional and ornamental. In order to be ornamental, the feature must not be the only or optimal design that can perform the function. So is “unprotected non-ornamental” meant to correspond to “claimed designs that are the only or optimal designs for performing the function?”

      1. Samsung is hanging its hat on the Richardson case that said during claim construction one must “factor out” functional (i.e., non-ornamental) features before determining infringement. The Federal Circuit has since clarified Richardson in meaning that design concepts cannot be protected by design patents, and that specific design features (all of which have de facto functions) are what counts in determining infringement.

  2. Court should take it as a due process case and proceed to avoid the due process issue by holding that “total profit” modifies “the patented design” and not “any article of manufacture” because the causation link would be too tenuous. This has the added benefit of automatically “solving” the first question.

  3. “The combined effect of these two holdings is to reward design patents far beyond the value of any inventive contribution.”

    Yet the petition separates the questions into two. How is the Supreme Court going to properly take this on cert unless it takes both questions?

    Also, just reading the opening and the first question, I don’t understand the issue being presented or why it is important. The second is self explanatory, but then we have the assertion in the opening that this question alone is not important.


    Can the Supreme Court rescue this petition by framing the two issues into a single question a bit better?

    1. Also, how is the Supreme Court going to judge a case based upon an asserted “value of the invention” when, as far as I know, that is only the opinion of Samsung and not a finding of fact by the District Court as to what the value of the invention was. Recall the Barbed Wire case, where the contribution of the inventor was small , but the value of the patent was enormous. Were the Supreme Court to get into the business of adjusting damages based upon its thinking about what the proper value of the invention is, is not patent law going to descend into chaos?

        1. No doubt, but how can damages be adjusted by anyone according to the alleged value of the invention? That is somewhat of a reasonable royalty concept anyway in terms of what a person in particular circumstance would be willing to pay for license to the invention. But, an award of profits is really a concept of unjust enrichment and a deterrent to infringement. Neither has very little to do with the value of the invention.

    2. Not familiar with SCOTUS procedures, but is there a procedure by which they can relist for clarification of the questions presented? I know they love their relisting.

  4. Samsung in its Petition again stokes fears about alleged design patent trolls. In support, it cites in footnote 24 an article that actually is about a utility patent infringement case brought by Intellectual Capital Consulting Ltd.

    So, I’m wondering, do the dear readers of this blog know of any instances of a troll filing a complaint asserting design patent infringement?

    1. Perry, good point.

      Methinks that the troll phenomena, were a patent covers broad aspects of currently used technology or products, is an aspect either of business method patents or broad and indefinite claims. I am not quite sure that the same phenomena is even possible with design patents.

      1. It is quite a stretch to think that someone could predict someone else’s specific design if it hasn’t been made public yet.

        I must add that I find it rather astonishing that Samsung cites a utility patent case to support its design patent troll argument.

        1. PS: It is quite a stretch to think that someone could predict someone else’s specific design if it hasn’t been made public yet.

          That depends on the design in question and the “interpretation” of whatever appears in the design patent.

          Also, predicting can be made quite a bit easier if you are allowed to make multiple predictions.

          It’s silly to try to minimize the likelihood of design patent tr0lling. Unless something major happens to fix the design patent system, design patent tr0lling is inevitable.

          1. It’s also silly to believe it will happen, when there’s no evidence it has or will.

            Try this exercise. Imagine you don’t know what an iPhone is (go back 10 years) and attempt to guess what it might look like. I can’t see anyone doing this and getting it right.

            1. Try this exercise. Imagine you don’t know what an iPhone is (go back 10 years) and attempt to guess what it might look like. I can’t see anyone doing this and getting it right.

              Consider the opposite – Do you really think that Samsung was intending to steal the ornamental design outside of a functional benefit? If the answer is no, do you think that there’s so many different ways of doing it and Samsung just happened to trip over Apple’s way?

              You don’t need to guess the shape of a phone, you just needed to recognize that at some point minaturization plus video playing functionality would dictate that all devices would be defined by a rectangular screen.

              1. Random, small size does not dictate a particular design.

                Defined by a screen?

                How many design with screens have their been that did not look like the Apple design? Perhaps All?

      2. Naturally, Ned jumps to the wrong conclusion about the so-called hypothetical and vastly overhyped scare mongering being in the end he desires…

        come to think of it, has anyone heard from the executive office as to the Remove the “Tr011” propaganda reply way way way way overdue ???

    2. So, I’m wondering, do the dear readers of this blog know of any instances of a troll filing a complaint asserting design patent infringement?

      If a $400m verdict is upheld for copying rounded rectangles, there will be.

      1. It’s already been upheld by the Federal Circuit, and in fact Samsung has paid Apple the $400 million. Where oh where are the design patent trolls? Lining up in someone’s imagination, that’s where.

    3. Perry, I was hoping you would chip in on this important design case. Please offer more observations. For example, did this cert petition at one point seem to erroneously suggest that the shape of a product is not design patentable?
      As to your specific question, I think from Samsung’s cert petition that Samsung’s argument [not that you need to agree] would be that before the Fed. Cir. decision below it was not legally clear that one could recover the entire profit on the sales of an entire complex multi-element machine with a design patent that is only on part of the shape or appearance of the external cover of the machine. Hence, that troll opportunities were not so clear or inviting before then, and thus that trolls were going around buying up design patents to sue on. [Of course this is only one of their public policy arguments for their proposed statutory interpretation.]

      P.S. In response to overreactions by some other commentators and media, this appeal is solely limited to the amount Apple is entitled to under the statute for Samsung’s design infringements [for older products]. This has nothing to do with “pinch and zoom” patents, contrary to some erroneous media reports. There is no requested reversal of these design patent infringement decisions or any challenge to the validity of the Apple design patents.
      P.S. Why Samsung did not file an inter partes reexamination or IPR against those Apple design patents back when they had that opportunity, instead of taking that issue solely to an Apple fans home town San Jose jury, is beyond me?

      1. Paul, the cert petition is so legally erroneous and emotionally laden that it’s hard to know where to begin. The functionality arguments are absurd – all design elements have functions, it is their appearance that is protectable regardless of their inherent functional attributes. Samsung is so desperate that their argument devolves into improper jury instructions. As for damages, it’s all fear-based logic (e.g., copying a cup holder would entitle the design patent owner to damages on the whole car). Check out the Nike case where the design patent covered only the upper (not the outsole) of its sneaker; damages were awarded on the entire sneaker. For all the arguments on damages, see my amicus brief before the Federal Circuit. This case presents some interesting facts that have never before been litigated, but if you want to change the statute, change the statute in Congress. My guess is that SCOTUS will punt to Congress, which according to the Founding Fathers (ha) is the place where laws are made.

        1. but if you want to change the statute, change the statute in Congress.

          I have heard of this thing called separation of powers…


  5. Not one but two precedential CAFC opinions published this morning that involve Apple.


    SightSound’s junk claims to methods of selling audio and video content over telecom signals were invalidated as obvious after CBM review by PTAB. The CAFC affirmed.

    Held: (1) CAFC lacks jurisdiction to review the PTO’s decision to consider issues not explicitly raised in the petitions (here the PTO considered the obviousness of the claims although 103 was not expressly mentioned in Apple’s petition)

    (2) CAFC has jurisdiction to review whether the patents qualify as CBM patents (a combination of known technologies does not satisfy the “technological invention” exception of the CBM statute).


    CAFC affirms summary judgment of non-infringement. In addition to the general junkiness of the claims, the problem for the patentee was that “computer modules” got smaller between the time the specification was filed and the time the suit was filed.

    The key findings are both in footnotes:

    fn 1 “[I]f the distinction between “microcontroller” and “computer module” is clear enough for the patentee to stipulate that the accused devices do not infringe because they employ the latter, as that term was construed by the district court, it is clear enough for this court to apply the respective terms without the need to remand for additional factual determinations.”

    fn 4 “[W]e see no reason to conclude that a specification’s repeated recitation of marketing deficiencies cannot give rise to a finding of claim scope disavowal. The fact that a combination product—one with both a microprocessor and a computer
    module—might work does not mean that the invention claimed encompassed such a product, particularly where that product would retain all the deficiencies of the prior art.”

    1. Same price? The defence costs nothing? The years of uncertainty cost nothing?

      Indeed, the rational response by “an infringer” would be, every time, to take a licence. Unless, that is, the “infringer” had a good faith basis to believe that none of their acts amounts to an infringement of a not-invalid claim. Do you think that, here, Samsung had no basis for an honest opinion that it ought to be held not to infringe?

      In a functional patent system, the only cases that should go to trial are the ones where both sides have a solid basis to believe that they ought to prevail. So, based on this case between two rational emotion-free actors, is the US design patent system functional, or dysfunctional?

      1. Indeed, the rational response by “an infringer” would be, every time, to take a licence.

        Actually, you could not be more wrong (go figure).

        The rational response would be to infringe and let them chase you.

        IF they chase you….
        IF they can afford to keep chasing you…
        IF they succeed…

        Only an “opportunity” for P.T. Barnum would pony up first for a license***

        Once again, MaxDrei, you are polly anna where you should not be.

        ***of course, your individual situation may vary.

  6. For me, the key sentence is:

    “Questions 1 and 2 are likely to impact utility patent rights as well”

    Is this an opportunity for the Supreme Court to distinguish design patents from utility patents (and in so doing, clarify how to understand the word “obvious”). As far as I know, of all the countries in the world, only the USA has design patents and so only the USA has to struggle with the question whether any particular design is “obvious”.

    Or will the mention of utility patents prompt the Supreme Court to shy away, not wishing to bite on more than it can chew?

    1. Our design patent law is clearly written poorly.

      That being said, let’s NOT invite the judicial branch to rewrite what is still expressly statutory law.

      The better path would be for the Supreme Court to make note of the fact that trying to shoe-horn design aspects into law written more directly for utilitarian concepts is not tenable, find the law inadequate on its face, and declare that law simply invalid, and thus invite Congress to write something that is in fact tenable.

      1. That being said, let’s NOT invite the judicial branch to rewrite what is still expressly statutory law.

        Statutory law exists in a constitutional framework. Why shouldn’t 289 be declared unconstitutional under due process for lack of a causal connection between the violation and the penalty?

        1. Random,

          While you are correct that a court could find an item written by Congress (properly within the ambit of the separation of powers) to be unconstitutional, your comment in reply to my comment simply goes off on a rather odd tangent.

          As for “causal connection” and penalties, well not sure how you jumped to a due process violation there…

    2. Max, you are not the only one to wonder why 103 was not pressed harder as a defense in this case, but it is too late now. U.S. design patents have the very same 103 statute as utility patents, but have not been consistently treated that way by the Fed. Cir. See, e.g., “Design Patents §103 – Obvious to Whom and As Compared to What?” Patently-O, Sept. 17, 2014.
      Plus, for cert, the interpretation of the unique old special damages statute for design patent infringement is a legal issue of general interest for all design patents, not a case specific and factually related issue.

        1. IF those groups can make the fundamental observation that the courts should not be engaged in writing statutory law (no matter how they might “feel” that law to be incomplete or not functionable), THEN I might join you.

          Otherwise – judicial muckery is the very LAST thing to add to the mess.

          Judge O”Malley penned an article on this – and of all people Ned Heller posted a link (behind a paywall).

      1. 103 was pressed incredibly hard by Samsung below. It lost. That issue is not part of their cert petition. Enough said.

        And let’s not cite Patently-O instead of case law. The fact is that the Federal Circuit has been steadily clarifying 103 for design patents, to the point where recent case law is a roadmap for both patentees and accused infringers alike. There is a string of recent, well-reasoned decisions, including Hunter (holding design patents obvious) and High Point.

        1. Perry, I wonder what the folks at Apple might think if it eventually loses its patent and its case if a patent examiner finds the patent obvious in a reexamination?

    3. All design systems have a form of obviousness as a defense. They may call it something else, and “obvious” is a poor choice of words for designs, but we’re stuck with 103.

  7. So, if Samsung has to pay the entire profit from the phone that infringed the design patent, and then another party accuses the same Samsung phone of infringing a separate design patent, will that new party have to recover from Apple? The entire profit has already been awarded to Apple, so there is nothing left to award to the new party.

  8. Samsung: Any individual smartphone may incorporate the vast majority of those 250,000 patented technologies. About six percent of all smartphone related patents are design patents.”

    It’ll be so much more awesome when that 6% is more like 25% and both Apple and Samsung are being sued regularly by design patent holding companies in Texas.


      1. Perry could explain this better, but design patent trolling is highly unlikely because design patents do not have broad functional claims to desired functional results irrespective of how those results are obtained. [Unlike the many troll suit claims on business method or software utility patents being shot down on 101 lately.] The claim of a design patent is supposed to be narrowly limited to its solid lines drawings. To put it another way, absent the rare case of a design patent to the only shape practically capable of achieving the function of a particular product line, there is no “preemption” and infringement should be avoidable.

          1. To elaborate just a tad, a good faith competitor can always made a design that looks different and performs substantially the same function as a patented design. So, it’s impossible for a “troll” to come up with a design that is the only form possible for performing that function. Forget design patent trolls, this is just scare tactics.

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