Samsung/Apple Case Provides Rare Design Patent Controversy for Supreme Court

November 14, 2016

File photo of the U.S. Supreme Court is seen in WashingtonThis term, the United States Supreme Court has a rare opportunity to update concepts associated with design patents.  In a dispute between Samsung and Apple involving patents for smartphone design, the Court is asked to clarify how damages for design patent infringement should be calculated.  Its ruling will likely have important long-term impact on commercial valuations for novel product designs.

Unlike utility patents associated with inventions, design patents do not protect the operation of a product, but instead protect its distinctive appearance.  The novelty associated with design patents involves the distinctiveness of the product’s appearance.  In some ways, design patents parallel the concept of “trade dress” which is an aspect of traditional trademark law.

Matsuura Blakeley BannerThe design patent issue now under review by the Supreme Court is part of a major patent case involving Samsung and Apple.  Lower courts awarded Apple an overall judgment of approximately $1 billion for a variety of patent infringement claims the company had against Samsung.  All of the patents involved were associated with smartphone technology.

Among those patents was a design patent obtained by Apple for the distinctive appearance associated with its “iPhone” smartphone products.  That patent included such elements as the distinctive rounded corners incorporated into the device.  Apple successfully argued in the lower courts that smartphone products manufactured and sold by Samsung infringed on the distinctive design patented by Apple and associated with its iPhone products.

The award issued by the lower court for the design patent infringement portion of the overall case was approximately $400 million.  Samsung appealed that ruling to the Supreme Court, claiming that the award was not properly calculated.  The Supreme Court is now considering how such an award for design patent infringement should be calculated.

Apple argues that the law requires that an infringer should be required to pay the “total profit” associated with the infringement of the design patent.  It contends that the total profit figure should be equal to all of the profit received by the infringer from commercial sales of the infringing product.

Samsung claims that the commercial value of a product is substantially greater than the portion of that value associated with the product’s design.  Accordingly, the company argues that the lower court should have considered evidence as to what portion of the total profit associated with sale of a product should reasonably be attributed to the value of its design.  Samsung argues further that only the portion of the total profits reasonably associated with the distinctiveness of the product design should be considered for the purpose of calculating the damages associated with design patent infringement.

This case presents the Supreme Court with a rare opportunity.  The Court’s decision will contribute substantially to future efforts to assess the commercial value of product designs.  The results of this case could excite substantially greater future interest and investment in design patents by commercial enterprises.