35 U.S.C. 289

35 U.S.C. 289

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement.

 

21 thoughts on “35 U.S.C. 289

  1. Paul, I assume you are not accusing Apple of being hypocritical here.

    No doubt, Apple has to defend against accusations of infringement by others perhaps with patents that have over-broad and indefinite claims, which they have a right to complain about.

    But the contest here between Apple and Samsung is a contest I think goes to the heart of the patent system and whether in fact it works. If Apple cannot protect its products with patents against deliberate pirates such as Samsung, then we should all hand in our licenses to practice patent patent law and go seek some other profession because what we are doing is a waste of time.

    1. If Apple cannot protect its products with patents against deliberate pirates such as Samsung, then we should all hand in our licenses to practice patent patent law and go seek some other profession because what we are doing is a waste of time.

      Well let’s not pretend that Apple *deserves* protection for everything it has protection on as well. I agree with your general sentiment but this isn’t the case to be dying on that hill for.

      Apple’s design is suggested by the video playing functionality of the phone. If Apple was the first to allow a phone to play video (they werent) then their utility patent should protect them with respect to that functionality. Barring that, you can’t capture all video-player-related-functionality in a phone by creating a design suggested by a display shape commonly associated with video playback.

      1. “If Apple was the first to allow a phone to play video (they werent) then their utility patent should protect them with respect to that functionality.”

        So then there is a prior art device that anticipates this design?

        In not, then why not; if as you say the design is suggested by the function…?

        1. So then there is a prior art device that anticipates this design?

          There is prior art that anticipates the utility function. The form of shaping it like a tv screen/monitor follows the function.

          In not, then why not; if as you say the design is suggested by the function…?

          Well first if you read the brief you’ll see that Samsung had a square display-dominated phone before Apple did, but that is also irrelevant because its not a question of who is first but rather if what the Applicant is trying to do is achieve a utility patent via design features.

          If I use a device to display video and miniaturization and economies of scale suddenly make it possible to fit all of the circuitry behind the display, you’re going to get something that is all display. It was done with the television before the phone, it was done with the tablet concurrent with the phone and now it’s being done with the desktop computer after the phone (amazon for “all in one desktop computer”).

          If I put something in my pocket and the technology is small enough to allow for rounded edges, you’ll get rounded edges, because they have a functional storage advantage too.

          The reasoning for having a display-dominated rectangular device with rounded edges is entirely for functional reasons, and if you subjected those features to their proper utility requirements they would be obvious.

          1. “Samsung had a square display-dominated phone before Apple did”

            Did this Samsung device have rounded corners?

            I’m guessing not, else the trial wouldn’t have gone on so long.

            Rounded corners must not have been all that obvious then …

            Square screen? Not rectangular with the claimed height to width ratio? Hmmmm, guess that was a design choice then…

            1. Did this Samsung device have rounded corners?

              Again this is missing the point. You don’t need to worry about anticipation until you show it’s proper subject matter – before asking if there were rounded corners, you have to ask if the rounding of corners is a functional or an ornamental act. Apple’s own expert said it was functional to round the corners of things that are placed in one’s pocket.

              Let me give you a practical reason – The design patent issued following a search in a database of ornamental things. If everyone knows that something is functional, of course it would not appear in a database of ornamental things. It’s like saying that someone must not be a convict because you can’t find their mugshot in a database of convicted felon fingerprints. Maybe you would want to look in the mugshot database to match your mugshot, not that fingerprint database.

              1. Maybe Random you are missing the point that this is a discussion of US design patent law (the odd view you have of attempting to completely eliminate function is, well, odd)

          2. Samsung asserted all of this prior art at trial, and lost. They did not argue its 103 invalidity defenses in its cert petition. Enough said.

            1. All very true Perry, as I had said in a comment on the below blog on this Samsung cert petition. [Some folks on these blogs just like to continue “beating dead horses.”]
              But this case does leaves one with a question that is relevant to many OTHER, future, design patent lawsuits, as to the choice of forum for invalidity challenges. Specifically, as I had asked, why did Samsung 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 CA jury?

              1. Either because (a) they thought very highly of their trial lawyer, (b) Judge Koh would not have stayed the trial, (c) they didn’t think of it, and/or (d) all or none of the above.

                Note that the rejection in the pending IPR on the black front screen is based primarily on 112 written description and related priority claims, pretty sophisticated stuff even for Samsung, and totally unforeseeable since the PTO only developed their theory within the last couple of years. It’s only a theory since no court has ever discussed those issues; Samsung didn’t assert them at trial or on appeal.

                1. Perry, I would not make an assumption that all patent suit defendants are being properly and fully counseled as to the huge cost and odds of success differences in invalidity trials between IPRs and lay juries, especially from those with a huge inherent self-interest in going to trial.

                2. Paul, what makes you think there is a right to a jury trial for validity? Did not the Federal Circuit just rule the patent rights were public rights?

                3. Paul, as to the “odds of success” difference between a validity trial and what goes on in the patent office, I think you make it clear exactly why IPRs is so popular.

                  Because some circuits were not holding patents valid, we created the Federal Circuit to shore up the patent system. It is remarkable that you and your kind have undone that good work and have, it appears, permanently shot an arrow into the heart of the patent system.

            2. Samsung asserted all of this prior art at trial, and lost. They did not argue its 103 invalidity defenses in its cert petition. Enough said.

              An analogy of what happened would be to say that Apple asserted a book with particular writing in it. Samsung proved anticipation of a book, and then argued that the particular writing is not a valid means of distinguishing from the book. Samsung still asserts that argument to the Supreme Court.

    2. You know, I have never confused a Samsung and an Apple phone. It would be interesting to go through this case in more detail, to see which Samsung products allegedly infringe these patents.

  2. Since the Samsung cert petition discusses in great depth this statute, its history, their view of its proper interpretation, and prior case law which seems contrary to the Fed. Cir. decision below, it will be interesting to see to who [other than the respondent Apple] is going to effectively rebut those Samsung arguments with amicus briefs?
    [The situation here even seems a bit ironic, since Apple itself is not a company normally accused of favoring great expansions in patent power, as here. Rather, it has a reputation for aggressively litigating against patents of others.]

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