Design Patent Damages After Samsung v. Apple

Ronald J. Mann

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The Supreme Court said just about as little as possible in its opinion in Samsung Electronics Co. v. Apple Inc., in which it rejected the $400 million verdict Apple had won based on allegations that Samsung’s cellphones infringed design patents covering the original iPhones. In essence, the Court reversed the decision of the U.S. Court of Appeals for the Federal Circuit to uphold a jury verdict and sent the case back to let the Federal Circuit define the appropriate legal standard.

All eight justices joined Justice Sonia Sotomayor’s cautious opinion ruling in Samsung’s favor. The opinion starts by summarizing the statute and the Federal Circuit’s categorical conclusion that “article of manufacture” always refers to the end product sold to consumers. The opinion then offers a sparse three pages rejecting that conclusion. Importantly, the opinion says almost nothing about the purposes or goals of the design-patent statute. Rather, it takes the position that the text of the statute compels rejection of the Federal Circuit’s end-product rule.

Given the discussion at the oral argument, none of this should be surprising, because several justices expressed the view that the Federal Circuit was better situated to work out the details of such a test in the first instance. Still, it might come as a surprise to Apple and Samsung that their briefs weren’t “adequate” to shed more light on the correct answer to their dispute. At bottom, this might best be seen as just another of the minimalist decisions that have issued so frequently from the still-diminished eight-member Court.

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Cite as

Ronald J. Mann, Design Patent Damages After Samsung v. Apple, 1 Criterion J. on Innovation 197 (2016).

Ronald Mann is the Albert E. Cinelli Enterprise Professor of Law and the co-director of The Charles Evans Gerber Transactional Studies Center at Columbia Law School. He received a B.A. in history from Rice University and a J.D. from the University of Texas at Austin, where he graduated first in his class and was the Managing Editor of the Texas Law Review. He served as a law clerk to Judge Joseph T. Sneed in the U.S. Court of Appeals for the Ninth Circuit and to Justice Lewis F. Powell, Jr. in the Supreme Court of the United States before becoming a professor of law at the Washington University School of Law, the University of Michigan Law School, and the University of Texas School of Law. Professor Mann is a nationally renowned scholar in the areas of secured credit, payment systems, and intellectual property. His forthcoming book, Bankruptcy and the U.S. Supreme Court, will be published by Cambridge University Press in 2017. His casebooks on commercial finance, payment systems, and electronic commerce include Payment Systems and Other Financial Transactions (Wolters Kluwer 6th ed. 2016), Commercial Transactions: A Systems Approach (Wolters Kluwer 6th ed. 2016), and Electronic Commerce (Wolters Kluwer 4th ed. 2011). Professor Mann has authored dozens of articles in leading law reviews including the Harvard Law Review, the Columbia Law Review, the Cornell Law Review, the N.Y.U. Law Review, and many others.