Background
The Apple v. Samsung patent wars were the most watched technology IP litigation of the early 2010s. At stake were the design of the iPhone — its rounded rectangular face, home button placement, colorful grid of icons — as well as several utility patents covering features like tap-to-zoom and the rubber-banding bounce animation when a list is scrolled past its end. Apple sued Samsung in the Northern District of California in 2011, alleging that Samsung’s Galaxy smartphones slavishly copied Apple’s iPhone design and infringed its utility patents.
A jury awarded Apple roughly $1 billion in 2012 — later reduced through post-trial proceedings and a partial retrial on damages. The Federal Circuit reviewed the resulting damages award of approximately $930 million. The central legal question for design patents involved 35 U.S.C. § 289, which allows a design patent holder to recover the infringer’s total profits from the sale of an “article of manufacture” that incorporates the protected design. Samsung argued that the “article of manufacture” should be a component of the phone (like the screen or case), not the entire smartphone — and that profits should be apportioned accordingly. Apple argued for total profits on the whole phone.
The Court’s Holding
The Federal Circuit affirmed Apple’s design patent damages, holding that § 289’s total profits remedy applied to Samsung’s entire smartphone profits without apportionment. The court reasoned that because Samsung did not sell the screen or phone shell separately from the complete smartphone — they were sold as an integrated unit to consumers — the entire product was the relevant “article of manufacture.” There was therefore no basis to apportion design patent damages to a component part.
The court also upheld the jury’s infringement findings on Apple’s utility patents (covering tap-to-zoom and the autocorrect feature) and affirmed that two of Samsung’s phones infringed Apple’s design patents protecting the phone’s face and graphical user interface. Trade dress dilution claims were rejected on standing grounds for some products.
Key Takeaways
- Under § 289, design patent damages are measured by total profits on the article of manufacture — and the Federal Circuit held that for smartphones sold as integrated units, that article is the entire phone, not a component.
- No apportionment is required for design patent damages under § 289, in contrast to utility patent damages which require apportionment to the patented feature’s contribution.
- The Supreme Court reversed this design patent damages ruling in Samsung Electronics v. Apple (2016), holding that the “article of manufacture” can be a component of a product, not necessarily the entire product, and remanding to develop a test for identifying the relevant article.
- The case illustrates the enormous leverage that design patents can provide in consumer electronics litigation — entire product profits, rather than feature-specific royalties.
Why It Matters
Apple v. Samsung is the defining design patent case of the smartphone era. The Federal Circuit’s 2015 ruling affirming total-product-profits damages for design patents sent a powerful message about the stakes of design patent infringement in consumer electronics. A competitor that incorporates a protected design into its flagship product could face liability for every dollar of profit on every unit sold — a potentially existential financial exposure.
The Supreme Court’s subsequent reversal (2016) and remand did not end the saga. On remand, the Federal Circuit and district court grappled with how to identify the relevant “article of manufacture” — a question that remains partially unresolved and that has significant implications for design patent damages in any multi-component product industry. The Apple-Samsung litigation thus gave the IP world both its most dramatic design patent verdict and its most important unresolved question in design patent damages law.