2017] SAMSUNG V. APPLE 69
These design patents became especially relevant on April 15, 2011 when
Apple sued its mobile phone market competitor Samsung Electronics Co.
Ltd., Samsung Electronics America, Inc., and Samsung
Telecommunications America, LLC (collectively “Samsung”) for
infringing on three of its iPhone design patents.
In recent history, design patents have increased in importance,
particularly because of the role they play in protecting aspects of
smartphones and tablets.
These design patents, though, only cover a small
portion of smartphones, “which include hundreds if not thousands of
electronic components, many of which are themselves protected by utility
patents and are arguably irrelevant to the external look and feel of the
device that the design patents protect.”
Now, because of Samsung
Electronics Co., Ltd. v. Apple Inc.,
design patents have taken center
stage.
The case is part of a long-running patent fight between Apple and
Samsung over the meaning of 35 U.S.C. § 289, which is an 1887 statute
that allows design patent owners to recover from the infringer’s “total
profit” from a useful “article of manufacture” that contains the infringing
design.
It is the technical term “article of manufacture” that causes
trouble for the courts, the parties involved in this case, patent attorneys,
and companies. The main question these courts face is whether the “article
of manufacture” as applied to a multi-component product (such as a
smartphone) is necessarily the phone itself or just the case and screen to
which the design patents relate.
This Note proceeds in four parts. Part II describes design patents and
the article of manufacture requirement. Part III details the procedural
See generally Complaint for Patent Infringement, Federal False Designation of Origin
and Unfair Competition, Federal Trademark Infringement, State Unfair Competition,
Common Law Trademark Infringement, and Unjust Enrichment, Apple, Inc., v. Samsung
Elecs. Co., Ltd., 909 F. Supp. 2d 1147 (N.D. Cal. 2012) (No. CV 11 1846) [hereinafter
Initial Complaint].
Peter Lee & Madhavi Sunder, Design Patents: Law Without Design, 17 STAN. TECH.
L. REV. 277, 284 (2013).
Ronald Mann, Opinion analysis: Justices tread narrow path in rejecting $400 million
award for Samsung’s infringement of Apple’s cellphone design patents, SCOTUSBLOG
(Dec. 6, 2016, 4:09 PM), http://www.scotusblog.com/2016/12/opinion-analysis-justices-
tread-narrow-path-in-rejecting-400-million-award-for-samsungs-infringement-of-apples-
cellphone-design-patents/ [hereinafter Mann, Opinion analysis].
Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016).
See generally Christopher V. Carani, Apple v. Samsung: Design Patents Take Center
Stage?, 5 LANDSLIDE, no. 3, Jan./ Feb. 2013, at 1, available at http://www.americanbar.or
g/content/dam/aba/administrative/litigation/materials/aba-annual-2013/written_materials/
2_1_apple_vs_samsung_FN.authcheckdam.pdf.
J. Michael Jakes, Design Patents Take Center Stage, 23 WESTLAW J. INTELL. PROP.,
no. 15, Nov. 16, 2016, at 1, available at http://www.finnegan.com/resources/articles/articl
esdetail.aspx?news=5620171a-cf8b-49f4-8b7a-8fb6a5278848.