The Apple v Samsung battle continues..

March 24, 2016 Published by

Naturally when Samsung was told it had to pay Apple $399 million in damages, being its entire profits no matter how little Apple’s patented design features contributed to the value of Samsung’s phone, it was outraged!

Consequently Samsung filed a Writ of Certiorari in an attempt to have the US Supreme Court overturn the US Federal Circuit Court and US District Court for the Northern District of California’s decisions.

Samsung presented two questions for the US Supreme Court to consider in its Writ of Certiorari:

  1. Where a design patent includes unprotected non-ornamental features, should a district court be required to limit that patent to its protected ornamental scope?
  2. Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?

The three Apple design patents at issue cover only the following parts of a smartphone’s design:

  • a particular black rectangular round-cornered front face;
  • a substantially similar rectangular round cornered front face plus the surrounding rim or “bezel”; and
  • a particular colourful grid of sixteen icons.

In support of Samsung’s first question for the US Supreme Court, it argued that each of these patents contains elements that are not protected e.g. generally no one may own rectangles, round corners, the colour black or the concept of a grid of icons.[i] Samsung argued that despite this undisputed fact, the District Court did not instruct the jury to disregard those unprotected elements when assessing the similarities between a patented design and as accused product.[ii] Instead the court allowed the jury to find infringement based merely on similarities in “overall appearance”.

In support of Samsung’s second question for the US Supreme Court, it argued that nowhere in Section 289 of the Patent Act does it define the “article of manufacture”, to which a patented design is applied, as the entire product.[iii] They further argued that nothing in Section 289 suggests that Congress exempted design patents from the background principles of causation and equity that inform all of patent law.[iv]

On 21 March 2016, the US Supreme Court agreed to grant the writ of certiorari. This means that the majority of the US Supreme Court have determined that the circumstances described by Samsung in its request for a Writ of Certiorari are sufficient to warrant review and accordingly the US Supreme Court will soon set a date to review the decisions of the lower courts.

As Samsung rightly noted, the decision of the lower courts is essentially an open invitation to litigation abuse as it “provide[s] a vehicle for design-patent holders to obtain unjustified windfalls far exceeding the conceivable value of any inventive contribution”[v]. Clearly all technology and design based companies will eagerly await the outcome of this review.

[i] Petition for a Writ of Certiorari, Supreme Court of the United States, December 14, 2015, 2.

[ii] Ibid.

[iii] Ibid.

[iv] Above n 1, 3.

[v] Ibid.

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