SAN JOSE, Calif.—Decisions in the Apple v. Samsung patent infringement cases have swung widely to both sides, suggesting the courts are unable to make clear rulings for the fast-moving high tech sector. But two experts advise taking a broader perspective about historic shifts in intellectual property law, some of them probably still ahead.
The U.S. Supreme Court decided today (Mar. 21) to hear an appeal on design patents involved in the case. “Not a lot of design cases have percolated to the top…[but] we have seen the profile of design rights come out of the backwaters and into the limelight,” said Christopher V. Carani, a partner at McAndrews Held & Malloy Ltd. (Chicago) who specializes in design patents.
“Previously people didn’t know where to position design patents—as patents or trademarks—but now many companies are starting new departments just to deal with design patents, recognizing their importance in consumer purchases,” he said.
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The Supreme Court elected to hear one of two questions Samsung presented, the issue of damages for infringing a design patent: 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?
Currently under the Design Patent Act of 1887, a company is entitled as much as the entire profit of a product that infringes a design patent. Samsung argued the statute is unfair in the Apple case.
The 1887 law was in part a response to a court case that granted damages of just six cents to a company whose carpet design was infringed, a decision some in Congress at the time felt was a mockery. The Act aimed to protect the idea that visual appearance drives the sale of a consumer product.
In a 2012 case a jury found some of Samsung’s phones violated two Apple design patents, including one on the rounded rectangular edges of the iPhone. Samsung argued such design features represent just one relatively small part of the product’s value.
The High Court “cannot make a change to the law, but if they think something’s wrong they could make overt comments as a message to Congress something needs to be changed,” Carni said.
“Many scholars including myself would say the statute should be amended, and some say the Supreme Court could rewrite it to some extent to rationalize it with design being [just] one feature of product,” said Peter S. Menell, a professor of law and director of the Berkeley Center for Law & Technology at the University of California at Berkeley.
But that would be a big step for the Court, Mennel said, noting the novelty of the case. “Design patents have always been kind of a backwater, they’ve never garnered much attention,” he added.
The High Court opted not to take up Samsung’s other question regarding the scope of a design patent and the role of a judge setting the scope of a design patent in an infringement case. Had the Court, heard this question it might have struck down nearly $400 million in damages awarded Apple in the 2012 case.
In a 2012 jury trial, Samsung was charged with nearly $400 in damages for handsets found to violate the three Apple design patents above. Dotted lines show patented features. (Image: Apple)
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Many high tech companies are expected to file friend of the court briefs in support of one of the companies. Given the timing, it’s unclear if the Court will rule on the case before it breaks at the end of June.
At the petition stage of the appeal organizations and companies filing so-called amicus briefs included the Computer & Communications Industry Association, eBay, the Electronic Frontier Foundation, Dell, Facebook, Google, HP and Vizio.
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