Design Patent Revival
- Design patents have gained attention due to Apple v. Samsung ($399 million damages awarded for infringement of three Apple design patents).
- The patents involved:
- US Design Pat. No. 593,087
- US Design Pat. No. 604,305
- US Design Pat. No. 618,677
Damages Under 35 U.S.C. § 289
- Design patent damages: infringer liable for total profit from sale of the product embodying the design.
- Utility patent damages: typically limited to a reasonable royalty, which is a percentage of the infringer’s profit.
- Potential damages for design patents can be greater than utility patents due to disgorgement of profits for the entire product.
Supreme Court Petition
- Samsung requested Supreme Court review of Federal Circuit’s decision upholding the $399 million award.
- Samsung argues damages should be limited to profits attributable to the infringing component, not the whole product.
- Samsung contends “article of manufacture” refers to a component, aligning design patent damages with utility patent damages.
- Amicus briefs in support of Samsung:
- Electronic Frontier Foundation
- Dell
- eBay
- HP
- Intellectual property professors
- Computer & Communications Industry Association
Post-Apple Federal Circuit Cases
- Nordock, Inc. v. Systems Inc.: damages should include entire dock leveler profits, not just the front-end component.
- Pacific Coast Marine Windshields v. Malibu Boats: awarded all profits from entire boat for a windshield design patent.
- Microsoft v. Corel: potential disgorgement of entire profits from Corel Write for use of a design element (zoom bar).
- To date, no formal support exists for Apple’s counter-argument limiting damages.
Counter-Argument Against Samsung
- Limiting damages to the infringing component would counteract Congress’ intent in 35 U.S.C. § 289.
- Historical context: prior to 1887, design patent holders had to apportion profits attributable to the design.
- In 1887, Congress removed apportionment requirement, specifying infringer liable for total profit.
Industry and Legal Implications
- Industry generally supports Samsung’s approach to limit damages to the component.
- Supreme Court could favor Apple, maintaining total profit disgorgement, and may recommend Congress to amend § 289.
- The case was scheduled for discussion at the Supreme Court conference on March 4, 2016.
- Justice Scalia’s passing unlikely to affect outcome.
Design Patents and Market Value
- Despite media attention, design patent filing rates remain steady, following long-term growth trends.
- Once considered less valuable due to narrow protection, design patents are now seen as important assets.
- Design patents protect user experience and can block competitors from copying product design.
- Steve Jobs: “Design is the fundamental soul of a human-made creation…”
- A design patent is a powerful tool to safeguard product aesthetics and user experience.
Theo Faber is a seasoned blogger with a passion for sharing knowledge and expertise on Social Media, Technology, Business, Digital Marketing and many other fields. With years of experience under his belt, he has established himself as a respected voice and influencer in the online community.