In a design patent infringement case, 35 U.S.C. §289 authorizes the award of total profit from the article of manufacture bearing the patented design

Kumiko Ide | May 27, 2015

Apple Inc. v. Samsung Electronics Co., Ltd. et al.

May 18, 2015

Before: Prost, O’Malley and Chen.  Opinion by Prost.

Summary

The CAFC affirmed the jury’s verdict on the design patent infringements and the validity of utility patent claims, and the damages awarded for these infringements appealed by Samsung.  However, CAFC reversed the jury’s findings that the asserted trade dresses are protectable.  Regarding the design patent infringement issue, Samsung proposed that functional aspects of the design patents should be “ignored” in their entirety in a design patent infringement analysis, the CAFC disagreed.  Moreover, the CAFC found that the district court did not err by allowing jury to award damages based on Samsung’s entire profits on its infringing smartphones.

サムスン社は、控訴審において、意匠特許の機能的部分は意匠特許侵害の分析において無視されるべきであると主張した。CAFCは、機能的部分の装飾的な特徴は意匠特許によりカバーされるため、意匠特許侵害の分析において機能的部分を無視すべきというサムスン社の主張には同意しなかった。また、サムスン社は、意匠特許侵害の損害賠償は、侵害商品の全体としての利益(entire profit)に基づいて計算されるべきでないと主張したものの、特許法第289条は、意匠特許侵害の損害賠償を侵害商品の全体としての利益(entire profit)に基づいて計算することを可能としているため、CAFCはこの主張にも同意しなかった。

Details

This is an appeal from a final judgment of the U.S. District court for the Northern District of California in favor of Apple.  Samsung appealed the determination of the district court with regards to trade dress, design patent, and utility patent infringement, and the damage awards for each.

This case discussion focuses on the CAFC’s opinion on the design patent infringement.

Regarding the appeal on design patent infringement, Samsung raised the following issues in the context of the jury instructions and the sufficiency of evidence: functionality, actual deception, and comparison to prior art.  Samsung also argued that the damages should not have been awarded based on Samsung’s entire profits on its infringing products.

1. Functionality

Samsung argued that the district court erred in failing to exclude the functional aspects of the design patents, contending the district court should have excluded elements that are “dictated by their functional purpose” or cover the “structural aspects of the article.”  Samsung argued that such elements should be “ignored” in their entirety in a design patent infringement analysis.  The CAFC disagreed, finding that no case law supports Samsung’s proposed rule of eliminating functional or structural aspects from the claim scope of a design patent in an infringement analysis.

Samsung argued in the alternative that the jury should have been instructed to compare the Samsung smartphones to the “overall ornamental appearance” of a patented design, instead of simply the “overall appearance” as instructed by the district court.  The CAFC disagreed, and found the jury instructions already limited the scope of the asserted design patents to the ornamental design shown in the patent figures.

2. Actual Deception and Role of Prior Art

Samsung also argued that the infringement instruction was erroneous for stating that actual deception was not required, and for providing guidelines in considering prior art. The CAFC disagreed.  With regards to the actual deception issue, the CAFC found that the jury instruction merely clarified that actual deception was not required, which is an accurate reflection of the analysis in GorhamGorham Co. v. White, 81 U.S. 511 (1872).  The jury instruction also expressly required that each juror “must” consider the prior art admitted at trial, and thus, the CAFC found the jury instructions fairly and correctly covered the substance of the applicable law.

3. Supporting Evidence

The CAFC also found Samsung’s argument that the infringement verdict was not supported by substantial evidence unpersuasive, holding that the jury could have reasonably relied on the evidence in the record to reach its infringement verdict.

4. Damages

Finally, with regards to damages for the design patent infringement, Samsung argued that the district court erred by allowing jury to award damages based on Samsung’s entire profits on its infringing smartphones.  Samsung argued that the damages should have been limited to the profit attributable to the infringement.  Samsung also contended that Apple failed to establish that Samsung sales or profits were caused by infringement of Apple’s design patents, and also that consumers chose Samsung products based on other factors.  The CAFC, however, rejected these “causation” arguments, stating that this line of argument is the same as the “apportionment” requirement that Congress rejected.  The provisions in the Act of 1887 on design patent infringement damages, codified in Section 289 of Title 35 recites, an infringer “shall be liable to the owner to the extent of [the infringer’s] total profit.”  35 U.S.C. §289.  Therefore, Section 289 explicitly authorizes the award of total profit from the article of manufacture bearing the patented design.  For the foregoing reasons, the CAFC found that there was no legal error in the jury instruction on the design patent damages, and affirmed the damages awarded for design patent infringements.

Take Away

  • Functional and structural aspects are not to be “ignored” in their entirety from the claim scope in a design patent infringement analysis.
  • Under 35 U.S.C. §289, damage awards can be based on the total profit from the sales of a product embodying the patented design.

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