Samsung Electronics v. Apple — Supreme Court Limits Design Patent Damages to Relevant Article of Manufacture

Background

Apple sued Samsung for infringing design patents covering the visual appearance of the iPhone — the rounded-rectangle front face, the surrounding bezel, and the arrangement of icons on the home screen. A jury found infringement and awarded Apple $399 million — calculated as Samsung’s total profits from selling smartphones incorporating the patented designs.

The award rested on 35 U.S.C. § 289, which entitles the patent holder to the “total profit” of an “article of manufacture” to which an infringing design has been applied. Samsung argued that because the design patents covered only components of the phone, profits should be limited to those components — not the entire smartphone. The Federal Circuit affirmed the full profit award, and the Supreme Court granted certiorari.

The Court’s Holding

A unanimous Supreme Court reversed the Federal Circuit. The Court held that the “article of manufacture” for purposes of § 289 need not be the end product sold to consumers. In a complex product with many components, the relevant “article” could be just the component to which the patented design was applied.

The Court did not decide how to identify the appropriate article of manufacture — it remanded for lower courts to develop a test. The decision thus opened the door to significantly lower damages in design patent cases involving complex multi-component products, without definitively resolving how much lower those damages might be.

Key Takeaways

• Design patent damages are not automatically equal to total profits from the entire product; the “article of manufacture” can be a component rather than the whole device.
• The Supreme Court declined to provide a specific test for identifying the relevant article, leaving that work to lower courts.
• The ruling has major implications for consumer electronics, automotive, and any industry where patented designs are applied to components of larger products.
• Design patent holders can no longer automatically claim all profits from a complex product simply because one design feature was copied.

Why It Matters

Before this ruling, design patents in products like smartphones were a nuclear weapon: prove infringement of a single visual design element and claim the infringer’s entire profits. Samsung’s $399 million award illustrated the stakes. The Supreme Court’s decision requires a more proportionate calculation tied to the component embodying the protected design.

For product designers and manufacturers, the case underscores both the power and complexity of design patent protection. Design patents remain valuable, but calculating infringement damages now requires nuanced analysis of what specific component the design covers and how much of the product’s value is attributable to that component.