Patent Act—Design Patent Damages

Samsung Electronics Co. v. Apple Inc., No. 15-777

The Patent Act provides that, when a design patent is infringed, the patentee may recover the infringer’s “total profit” as to the relevant “article of manufacture.” In the context of a multi-component good, the Federal Circuit had adopted a blanket rule that only a finished good sold to consumers qualifies as an “article of manufacture.” In this case, the design patent related to the exterior design of smart phones; the Federal Circuit therefore held that the “article of manufacture” is the entire phone.

Today, in a unanimous decision authored by Justice Sotomayor, the Supreme Court reversed the lower court’s statutory interpretation. The Court held that the plain meaning of “article of manufacture” encompasses both the “end product sold to the consumer” as well as “a component of that product.” But, noting that the parties had not briefed the issue, the Court did not “set out a test for identifying the relevant article of manufacture.” It left that critically important task for remand. The parties—likely supported by amici—will now contest the standards that should govern this inquiry before the Federal Circuit.