Recently, in a non-precedential decision, the United States Court of Appeals for the Federal Circuit remanded Apple, Inc. v. Samsung Electronics Co. back to Judge Lucy Koh (shown left) of the United States Federal District Court for the Northern District of California. In December 2016, the Supreme Court overturned a $400 million damages award for design patent infringement. In its ruling, the Supreme Court explained that damages may be limited to revenues attributable to a component of an article of manufacture and not the entire article itself. See Samsung Electronics Co. v. Apple, Inc.
Apple requested that the Federal Circuit keep the case and the panel review the decision in light of the Supreme Court’s ruling, while Samsung requested that the Federal Circuit remand the matter to the district court for a new trial on damages. The Federal Circuit adopted neither suggestion. Instead, the Federal Circuit chose to remand the case for further proceedings, which the panel explained may or may not include a new trial on damages. Judge Koh will decide whether a new trial on damages is necessary.
On Monday, March 21, 2016, the United States Supreme Court agreed to hear the matter of Samsung Electronics v. Apple, Inc., a dispute between two giant technology companies that at its core relates to how much Samsung owes Apple for infringing certain design patents.
So far, these two technology giants have shown little interest in playing nice. A jury found that Samsung infringed Apple design patents, Apple utility patents and also diluted Apple’s trade dresses. The infringed design patents are U.S. Design Patent Nos. D618,677 (“D’677 patent”), D593,087 (“D’087 patent”), and D604,305 (“D’305 patent”), which claim certain design elements embodied in Apple’s iPhone. The infringed utility patents are U.S. Patent Nos. 7,469,381 (“’381 patent”), 7,844,915 (“’915 patent”), and 7,864,163 (“’163 patent”), which claim certain features in the iPhone’s user interface. The diluted trade dresses are Trademark Registration No. 3,470,983 (“’983 trade dress”) and an unregistered trade dress defined in terms of certain elements in the configuration of the iPhone.
The Department of Commerce recently had a ceremony at Langdon Education Campus in Washington, DC, commemorating the issuance of the 700,000th design patent (see main image to the left). The design patent, titled Hand-held learning apparatus, was issued to LeapFrog Enterprises, Inc. (NYSE: LF) on February 25, 2014, but the celebration ceremony was not held until March 26, 2014.
“Protecting and promoting our idea-driven economy is essential to keeping America open for business,” said U.S. Secretary of Commerce Penny Pritzker. “The USPTO plays a major role in serving our nation’s innovators by granting them the intellectual property rights they need to secure investment capital, build companies and bring their products and services to the global marketplace.”
The ceremony also included the launch of a new Intellectual Property (IP) Patch developed as a joint project between the USPTO, the Girl Scout Council of the Nation’s Capital, and the Intellectual Property Owners (IPO) Education Foundation.
Once upon a time, one of the ways you could separate the unsavory underbelly of the patent industry from the legitimate operators was to look at who was directing clients to get design patents. Design patents have always been easy to obtain…indeed, far easier to obtain than a utility patent. But design patent rights are exceptionally weak. Nevertheless, over the past decade, design patents have continued to grow in numbers, and have proved to be an effective part of patent strategy, in some cases. If you have not considered advising clients to seek design patents, you really should consider the benefits.
Like industrial design registrations and design patents in many countries, U.S.design patents can serve as an effective tool to prevent competitors, counterfeiters, and other parties from copying your company’s proprietary designs. While the process for obtaining a U.S. design patent is fairly straightforward, there are several aspects to design patents that are unique to the United States. Many of these features provide applicants and patent holders with valuable benefits not available elsewhere, while others place particular burdens on inventors and attorneys. These issues need to be recognized when maneuvering through the process of obtaining a design patent. The following discussion focuses on a few of the aspects unique to the U.S. design patent system.
- The 12-month grace period. A U.S. design patent application may be filed up to 12 months after the design is first described in a printed publication, is in public use in the United States, or is offered for sale in the United States. This provides companies with the opportunity to determine whether a product will be sufficiently successful to warrant the investment in a U.S.design patent. (more…)