Supreme Court Vacates $399M Design Patent Damage Award, Finding an Article of Manufacture for Damage Purposes is Not Necessarily the Entire Product Sold

In Samsung Electronics Co., Ltd. v. Apple Inc., 580 U.S. ____ (2016), the Supreme Court reversed the award of $399,000,000 for infringement of Apple’s design patents  covering the iPhone (U.S. Patent Nos. D618677, D593087, and D604305).

35 USC §289 sets for a special damage remedy for design patents:

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

The Court of Appeals for the Federal Circuit identified the entire Samsung phone as the “article of manufacture” for purposes of calculating §289 damages because consumers could not separately purchase components of the smart phone.  The Supreme Court, after looking up article of manufacture in the dictionary, concluded that an article of manufacture is broad enough to encompass both a product sold to a consumer, as well as  a component of that product.

Finding that the Federal Circuit’s narrower reading of article of manufacture cannot be squared with the text of §289, the Supreme Court reversed the award, and remanded for determination of whether the relevant article of manufacture is the smartphone, or a particular component of the smartphone.

On remand, it is entirely possible that $399 million damage award could be affirmed, if it is determined that the article of manufacture covered is the Samsung smart phone, and not simply some part of the smart phone.  U.S. Patent Nos. D618677 and D593087 disclose and claim an “electronic device” — which presumably covers at least some of the “innards” of the phone,

d593087d618677

and U.S. Patent No. D604305 discloses and claims a “graphical user interface for a display screen or portion thereof” — which likewise would include at least some of the “innards” of the phone for generating the images on the display:

d604305

 

How these patents are treated on remand will be instructive on how design patents should be drafted going forward.  There may be an advantage in drafting the application so that the “article of manufacture” is a comprehensive (and profitable) as possible.

It is Error to Ignore Functional Structures Entirely in a Design Patent Construction

In Sport Dimension, Inc. v. The Coleman Company, [2015-1553] (April 19. 2016) the Federal Circuit vacated the stipulated judgment of non-infringement of U.S. Patent  No. D623,714 on a personal flotation device, and remanded for further proceedings consistent with the correct claim construction.

The district court adopted Sport Dimension’s proposed claim construction:

The ornamental design for a personal flotation device, as shown and described in Figures 1–8, except the left and right armband, and the side torso tapering, which are functional and not ornamental.

This construction eliminates several features of Coleman’s claimed design, specifically the armbands and the side torso tapering.  The Federal Circuit observed that “[w]ords cannot easily describe ornamental designs.” The Federal Circuit said that a design patent’s claim is thus often better represented by illustrations than a written claim construction, and that a detailed verbal claim constructions increases “the risk of placing undue emphasis on particular features of the design and the risk that a finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole.

However the Federal Circuit has often “blessed “claim constructions that helped the fact finder distinguish between those features of the claimed design that are ornamental and those that are purely functional, because where a design contains both functional and nonfunctional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.

In OddzOn, Richardson, and Ethicon, the Federal Circuit construed design patent claims so as to assist a finder of fact in distinguishing between functional and ornamental features, but in no case did it entirely eliminate a structural element from the claimed ornamental design, even though that element also served a functional purpose.  Even though the Federal Circuit agreed that certain elements of the design serve a useful purpose, it rejected the district court’s ultimate claim construction because it eliminated the functions structures from the claim entirely.

The Federal Circuit said that because of the design’s many functional elements and its minimal ornamentation, the overall claim scope of the claim is accordingly narrow.  However the Federal Circuit offered no further guidance on the proper construction.

 

 

An Animated Review of Design Patents

Design patents protect the appearance of articles of manufacture, and this includes articles of manufacture whose appearance changes over time.  In particular, animated displays on computers and other electronic devices can be protected with a design patent.  The drawings of are a series of still images of the animated design, showing the progression, somewhat like a “flip book.”  Thus, U.S. Patent No. D698,363 protects a spinning design by showing for sequential images:

Animation1

 

The patent explains:

Animation2

 

 

 

 

U.S. Patent No. D706,806 shows another on-screen animation in two figures:

Animation5

 

 

 

 

The patent explains:

Animation6

U.S. Patent No. D612,861 shows an animated screen transition over seven images, four of which are shown below:

Animation3

 

 

 

 

 

 

 

 

 

 

The patent describes the figures:

Animation4

 

Iconography

It is pretty well known that icons can be protected with design patents, however we continue to adhere to the fiction that it is not the icon we are protecting, but the substrate decorated with the icon that we are protection.  U.S. Patent No. D697,530 illustrates one technique for protecting an icon that could appear on both a computer display and a printed display:

icon

 

The icon on the computer screen is simply shown with a dashed border separating the icon from the rest of the screen, which is not depicted.  The icon on the printed matter is shown within its own border, and with a slightly different dashed border separating the icon form the rest of the printed material on which it is depicted.

If the Slipper Fits . . .

In High Point Design LLC v. Meijer, Inc., [2014-1464], the Federal Circuit in a non-precedential, but still instructive decision, reversed summary judgment of anticipation but affirmed summary judgment of non-infringement of U.S. Patent No. D598183 on a Slipper.

In reversing the district court’s finding of anticipation, the Federal Circuit said that “Design patent anticipation requires a showing that a single prior art reference is ‘identical in all material respects’ to the claimed design.”  View the evidence in the light most favorable to the patent owner, the Federal Circuit found that a reasonable jury could have found that there was not clear and convincing evidence of anticipation.

The Federal Circuit criticized the distraction court for not performing a side-by-side comparison, but instead concluding that the claimed design and the prior art share the same characteristics.  The Federal Circuit noted that the district court’s analysis was “on too high a level of abstraction,” failing to focus on the distinctive visual appearance of the prior art and the claimed design.  The detail of the analysis that the Federal Circuit undertook was instructive:

High_Point_1

The Federal Circuit also pointed to differences in the soles of the slippers, resurrecting the infamous Contessa Food Prods., Inc. v. Conagra, Inc., shrimp platter case.

High_Point_2

While the Federal Circuit reversed the district court’s summary judgment of anticipation, it affirmed the district court’s judgment of non-infringement with a similarly detailed comparison between the accused product and the patent.

The district court conducted a side-by-side comparison between the claimed design and the accused slippers, and concluded that the accused slipper “evokes a soft, gentle image” while the patented design “appears robust and durable.”  The Federal Circuit agreed, finding that “the patented and accused designs bring to mind different impressions.”  The Federal Circuit characterized the accused design as “soft and formless” while the patent design appeared “structured and formed.”

High_Point_3

Differences in the soles of the designs also factored into the determination.

The Federal Circuit recognized that both designs essentially consist of a slipper with a fuzzy portion extending upward out of the foot opening, but said that such high-level similarities, are not sufficient to demonstrate infringement.

Although not precedential, the opinion is instructive on how to compare designs for purpose of anticipation and for purposes of infringement.

No Mulligan for Plaintiff; Design Patent Case Decided on the Pleadings

In Young v. Ann Stone, Inc., 1:13-cv-04920 (N.D. Ill. 2014) the district court granted judgment on the pleadings that defendant’s design for a golf practice target:

DP1

does not infringe U.S. Patent No. D442,661:

DP2

“because the two devices are so obviously dissimilar as to warrant a finding of non-infringement as a matter of law”.

In the words of the court, “[o]ne of the most obvious differences between the products is that top of the lower disk on defendant’s product is noticeably inclined, directing the ball upward to the center where it is held in place. Plaintiff’s design features a flat lower base with what appears to be a washer around the center column that holds the ball. This difference is readily apparent upon even a casual view of the two products.”  The court said that the spaced discs were functional and could not serve as the basis for a determination that its product infringes on the patented design, noting that “all of the prior art shares this feature” and finding that it is “the unique mechanisms among the products that contribute to the overall differences in appearance”.  In the context of the prior art such as U.S. Patent Nos. 1,297,055 and 2,899,207 , the district court’s decision makes even more sense:

DP3DP4

Of note to design practitioners, is that the defendant’s arguments about the cap on the flag pole and the placement of the flag contributed to court’s finding that the designs were different:

Defendant argues that the rounded cap on plaintiff’s flagpole is substantially different from the tapered insert on defendant’s flagpole. The flag of the alleged infringer’s product also covers the top of the flagpole, while the suggested flag on the patented product (which is not a part of the patented design) appears to attach to the pole well below the cap in question, leaving the top of the flagpole visible. When the products are viewed as a whole, this difference adds to the impression that the two products are plainly dissimilar.

Most of the art of design patent drafting is deciding what to show and what not to show, and of what is shown, what is in solid and what is in dashed lines.  The court’s discussion of such details is a reminder to the careful prosecutor to pay attention.