Samsung Electronics Co., Et Al. v. Apple, Inc.

Whether a design patent holder is limited to damages of the protected non-ornamental component.

Respondent sued petitioner in district court in California for patent infringement regarding their smartphone design. The jury found that Petitioner had infringed Respondent’s patent rights both for design patent infringement of unprotected non-ornamental features and trade dress dilution and awarded Respondent over $1 billion, equal to the entirety of Petitioner’s profits from sale of the smartphones.

On appeal, the Federal Circuit court, applying Ninth Circuit law, reversed the award for trade dress dilution because the functional nature of the design of Petitioner’s smartphone made the similarities acceptable. The Federal Circuit court did not reverse the award for the unprotected design patent infringement on a functionality argument. Petitioner argues the same reason the trade dress dilution was reversed should also reverse damages for the unprotected non-ornamental design patent infringement. Petitioner also argues that because the design patent infringement was of unprotected features and not the entire smartphone, Respondent should have to prove damages and not be allowed to elect to take the full amount of Respondent’s profits.