Background
The Apple v. Samsung design patent litigation had already produced one of the largest patent verdicts in history. A jury found that Samsung had infringed Apple’s design patents covering the iPhone’s distinctive rounded-rectangle front face, the bezel surrounding the screen, and the colorful grid of icons on the home screen. Under 35 U.S.C. § 289, the patent statute provides that whoever applies a patented design to an article of manufacture for sale is liable for the infringer’s “total profit” from the sale of that article. The jury applied this “total profit” measure to Samsung’s entire smartphone — awarding Apple approximately $399 million representing Samsung’s total profit on all infringing phones.
The Federal Circuit affirmed the design patent damages award in 2015, holding that the relevant “article of manufacture” was the entire phone rather than any component part. The Supreme Court granted certiorari in Samsung Electronics Co. v. Apple Inc. (No. 15-777) and in December 2016, in a unanimous 8-0 opinion by Justice Sotomayor, reversed the Federal Circuit. The Supreme Court held that the relevant article of manufacture for § 289 purposes can be a component of a product sold to consumers, not necessarily the entire end product. The Court remanded the case to the Federal Circuit to determine how to identify the appropriate article of manufacture when the design is applied to a multi-component product.
The Court’s Holding
Rather than formulating a legal test for identifying the relevant article of manufacture — which the Supreme Court had explicitly declined to do — the Federal Circuit in its February 2017 order took a similarly cautious approach and simply remanded the case to the district court for further proceedings. The Federal Circuit did not adopt or articulate a test for determining whether the applicable article of manufacture is the entire product or a component, finding it more appropriate for the district court to address the question in the first instance with a full evidentiary record.
This meant that neither the Supreme Court nor the Federal Circuit had provided the marketplace with a definitive legal standard for the most commercially consequential question in design patent law: how do you calculate “total profit” damages when a patented design covers only part of a complex product? The case ultimately settled in June 2018 before the district court ruled, leaving the article-of-manufacture test unresolved by a final binding decision on the merits.
Key Takeaways
- Under § 289, the “article of manufacture” whose total profits constitute design patent damages may be a component of the finished product rather than the entire product — the Supreme Court established this in December 2016.
- Neither the Supreme Court nor the Federal Circuit articulated a specific test for identifying the relevant component, leaving open a major question for all multi-component product design patent cases.
- The Federal Circuit’s 2017 remand order sent the matter to the district court, reflecting judicial preference to develop the factual and legal record at the trial level before defining a binding rule.
- The settlement before district court decision means the article-of-manufacture question remained largely unsettled law — subsequent cases, including Columbia Sportswear v. Seirus, have continued to develop the standard, but Apple v. Samsung never produced a definitive merits ruling on damages.
Why It Matters
The Apple v. Samsung design patent litigation — spanning years of trials, appeals, and Supreme Court review — highlighted a fundamental tension in U.S. design patent law. Section 289’s “total profit” remedy was enacted in 1887, when manufactured goods were typically simple objects where a design covered the entire article (like a carpet pattern or a textile design). Applying it to 21st-century smartphones with hundreds of distinct components created potential for enormous damages awards that bear little relationship to the economic value of the specific design element at issue.
The Supreme Court’s 2016 ruling correcting that interpretation was a major victory for technology companies that sell complex products. But the lack of a clear test for identifying the relevant component leaves design patent damages calculations in significant uncertainty. For product designers and patent strategists, the case underscores why design patents for complex consumer products can be both powerful (potentially covering highly profitable articles) and unpredictable in their damages exposure. The ongoing development of article-of-manufacture doctrine will continue to shape how companies value, assert, and defend design patent portfolios.