“Samsung v. Apple”

• 1. Apple Inc. released its first-generation iPhone in 2007. … Apple secured many design patents in connection with the release. … After Apple released its iPhone, Samsung released a series of smartphones that resembled the iPhone. … Apple sued Samsung in 2011, alleging, as relevant here, that various Samsung smartphones infringed Apple’s … design patents. A jury found that several Samsung smartphones did infringe those patents. … Apple was awarded $399 million in damages for Samsung’s design patent infringement, the entire profit Samsung made from its sales of the infringing smartphones. The Federal Circuit affirmed the design patent infringement damages award.

• 2. 35 U.S.C. §289 allows a patent holder to recover the total profit an infringer makes from the infringement. It does so by first prohibiting the unlicensed “appli[cation]” of a “patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale” or the unlicensed sale or exposure to sale of “any article of manufacture to which [a patented] design or colorable imitation has been applied”. It then makes a person who violates that prohibition “liable to the owner to the extent of his total profit, but not less than $250”.

• 3. “Total”, of course, means all. … The “total profit” for which §289 makes an infringer liable is thus all of the profit made from the prohibited conduct, that is, from the manufacture or sale of the “article of manufacture to which [the patented] design or colorable imitation has been applied”. Arriving at a damages award under §289 thus involves two steps. First, identify the “article of manufacture” to which the infringed design has been applied. Second, calculate the infringer’s total profit made on that article of manufacture.

• 4. This case requires us to address a threshold matter: the scope of the term “article of manufacture”. The only question we resolve today is whether, in the case of a multicomponent product, the relevant “article of manufacture” must always be the end product sold to the consumer or whether it can also be a component of that product. Under the former interpretation, a patent holder will always be entitled to the infringer’s total profit from the end product. Under the latter interpretation, a patent holder will sometimes be entitled to the infringer’s total profit from a component of the end product.

• 5. The text resolves this case. The term “article of manufacture”, as used in §289, encompasses both a product sold to a consumer and a component of that product. … This reading of article of manufacture in §289 is consistent with 35 U.S.C. §171(a), which makes “new, original and ornamental design[s]␣for an article of manufacture” eligible for design patent protection. … The Patent Office and the courts have understood §171 to permit a design patent for a design extending to only a component of a multicomponent product.

• 6. The parties ask us to go further and resolve whether, for each of the design patents at issue here, the relevant article of manufacture is the smartphone, or a particular smartphone component. Doing so would require us to set out a test for identifying the relevant article of manufacture at the first step of the §289 damages inquiry and to parse the record to apply that test in this case. We decline to lay out a test for the first step of the §289 damages inquiry in the absence of adequate briefing by the parties.