Essay: The Supreme Court Reinstitutes Apportionment of Design Patent Infringers' Total Profits for Multicomponent Products

Abstract

Under pre-2016 Federal Circuit case law interpreting 35 U.S.C. §289, enforcement of design patents appeared potentially quite lucrative. A primary draw was the remedy of an infringer’s total profits on its sales of an entire product, even though only some but not all design features of the product infringed. This prospect held especially true for multicomponent products (e.g., a kitchen oven as compared to a dinner plate).

However, the Supreme Court in December 2016 announced that the remedy of recovering total profits computed on sales of an entire multicomponent product having only some infringing design features will not always be available. For the reasons examined herein, the Court held in Samsung Elecs. Co., Ltd. v. Apple, Inc. that the “article of manufacture” referred to in §289 refers to “both a product sold to a consumer and a component of that product.” In the view of this author, the Court’s reasoning is fundamentally flawed. This brief essay charts the progression of the relevant case law and legislative history.

Keywords: patent infringement, remedies, Apple v Samsung, designs, design patents, apportionment, article of manufacture, total profits

JEL Classification: K19, K29, K39, K41