What makes a smart phone a successful product? Is it the intensely complex guts, the fashionable shell that holds it all together, or are the two inseparable? In the latest installment of the patent battle between tech giants Apple and Samsung, the U.S. Supreme Court faced this very question.
The issue concerned an award of $399 mil. against Samsung for its copying of Apple’s patented designs relating to the aesthetics of Apple smartphones (but not the internal components or functionality). To remedy infringement of a design patent, the law allows recovery of the infringer’s total profits from sale of the “article of manufacture.” 35 U.S.C. § 289.
In times past and with simple devices, defining the article of manufacture is easy, and is, quite simply, the infringing item as a whole. And, in this case, the trial court concluded (and the appellate court agreed) that the article of manufacture must mean the entirety of the Samsung phones—electronics, case and all— because “the innards of Samsung’s smartphones were not sold separately … to ordinary purchasers.” Samsung Electronics Co. v. Apple Inc., No. 15–777, slip op. (2016).
However, in a unanimous opinion, the Supreme Court overruled the award, stating that the lower courts read § 289 too narrowly. Instead, the Supreme Court said, the article of manufacture can sometimes be the end product, but it can also be the components of that product, regardless of whether the components are sold separately to ordinary purchasers. The Supreme Court left to the lower courts the ultimate determination of what portion of Samsung’s infringing products is the article of manufacture.
The full text of the decision can be found here: Samsung Electronics Co. v. Apple Inc., No. 15–777, slip op. (2016).