Apple and Samsung meet, yet again, in a California Federal Court. This time to determine how much Samsung owes Apple for infringing three of Apple’s U.S. design patents.
This case began in 2011 when Apple filed multiple lawsuits around the world accusing Samsung of infringing various patents. By August of 2011, Apple and Samsung were litigating 19 ongoing cases in 9 different countries in a dispute commonly referred to as the smartphone “patent wars.”
One of the U.S. cases is still pending and currently underway in San Jose, California. While Samsung has already been found to infringe Apple’s patents, the remaining issue to decide is how to calculate the damages owed.
In 2012, a jury awarded Apple $1.05 billion (with a “b”) in damages, although that amount was ultimately reduced to $548 million in December 2015. A large portion of that amount — $399 million of it — was attributable to the total profits made by Samsung under the additional remedy avaialble for infringement of a U.S. design patent.
The following design patents are involved in this case:
- U.S. Design Patent No. D618,677
covering a black rectangular front face with rounded corners,
- U.S. Design Patent No. D593,087
covering a rectangular front face with rounded corners and a raised rim, and
- U.S. Design Patent No. D604,305
covering a grid of 16 colorful icons on a black screen.
The damages were initially calculated based on Samsung’s sales of the entire smartphone, even though only minor (in Samsung’s view) portions of the smartphone were found to infringe the design patents (i.e., the front face, raised rim, and colorful icons).
In October 2016, the Supreme Court decided that, in the case of a multi-component product, the relevant “article of manufacture” for purposes of damages calculation for infringement of a design patent under 35 U.S.C. 289, can, in some cases, be a component of the product, rather than the entire product. The case was then remanded for further proceedings consistent with this holding.
The question now presented in this case is whether the $399 million owed under the original calculation can be reduced to the value of the offending individual parts of the smartphone, rather than the entire smartphone.
Whatever the outcome, it will surely impact damages in future design patent infringement cases.