by Dennis Crouch
Six amici briefs have now been filed in support of Samsung’s petition for writ of certiorari in its design patent defense against Apple.
Law Professor Brief: [SamsungLemley] In a petition primarily drafted by Professors Mark Lemley and Mark McKenna, and filed by Lemley, a group of 37 law professors strongly support Samsung’s position that design patent rights should be severely limited. The brief first looks at design patent scope and argues that design patent rights should only be permitted to cover non-functional and ornamental aspects of a product. “Crucially, design patents protect only ornamentation. They may not cover the functional aspects of a product.” As I and others have written, the functionality limitation in design patents is much weaker than that of trademark and copyright law. The brief argues, however, that those regimes should be squared so that utility patent remain the sole domain of for the protection of functional design elements. “Giving a design patent owner control over utilitarian features undermines the policy goals of the [trademark] functionality doctrine.”
Regarding damages, the brief argues that entire-profit-disgorgement for design patent infringement “makes no sense in the modern world”, leads to “absurd results”, is “draconian”, and is not required by the statute. Remember, the idea here is that Apple is collecting all of Samsung’s profits on its infringing Galaxy phones even though only some of the components of the devices infringe.
Public Knowledge and the Electronic Frontier Foundation: [SamsungPKEFF] PK and the EFF argue that we are likely to move into a world of design-patent-trolls filled with “abusive [design] patent litigation.” PK also suggest a constitutional crisis – that these high damage awards for design patent infringement may violate the Fifth and Fourteenth Amendments (due process). For part of their argument, the groups quote my 2010 design patent article where I wrote that “design patent prosecution is a relatively quick, inexpensive, and assured process without substantive examination as compared with either utility patent prosecution or trade
dress registration.” From my analysis, they reached the conclusion that “the low-quality patent concerns common with abusive utility patent litigation are even more so present with design patents.”
CCIA: [SamsungCCIA] Although less-so than PK and EFF, the CCIA is fairly consistent in arguing for narrower patent rights. Here, the organization makes the argument that entire-profit-disgorgement raises constitutional questions by going beyond the “exclusive Right to their respective … Discoveries.”
Systems, Inc: [SamsungSystems] Longtime patent litigator Philip Mann filed a brief on behalf of Systems who is litigating design patent damages issues. The brief outlines several examples of how the profit disgorgement rule is having a “very real and accelerating” negative impact on the business community. The brief cites its own case of Nordock v. Systems as well as Pacific Coast Marine Windshields v. Malibu Boats and Microsoft v. Corel.
Tech Companies: [SamsungTech] A group of oft-patent-defendants, including eBay, Dell, Facebook, Google, HP, and NewEgg joined together in a brief arguing for a narrowed interpretation of ‘article of manufacture’ from Section 289 rather than focusing on the entire retail product.
Marginalized Americans: [SamsungHLF] A set of groups that self-identify as “communities that are marginalized in American society” have filed a brief arguing that these strong design patent rights threaten to raise retail prices and limit access to affordable new technology, including smartphones and internet access.