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Lawyers weigh in on design patent defeat in Apple/Samsung smartphone case

Posted on 09 December 2016

The U.S. Supreme Court has rejected the Federal Circuit's interpretation of the Patent Act for design patent infringement awards, leaving up in the air a $399 million jury verdict Apple won in a case against Samsung.

The U.S. Court of Appeals for the Federal Circuit should have recognized that design patent damages can be calculated from infringement of just one component of a multicomponent product, such as a smartphone, Justice Sonia Sotomayor wrote for a unanimous court.

Section 289 of the Patent Act, 35 U.S.C.A. § 289, allows design patent owners to collect total profits from an infringing "article of manufacturer," a term the Federal Circuit interpreted to mean only the end product sold to consumers, Justice Sotomayor wrote.

The high court sent the case back to the Federal Circuit to determine the relevant article of manufacture from which to calculate Apple's damages, opting not to give any further guidance on the issue.

Intellectual property lawyers who were not involved with the case, but who followed it, commented on the decision. Mark S. Raskin, a partner at Mishcon de Reya New York LLP said:  "This decision will ultimately necessitate a new trial on damages,"

"On a practical level, he added, a decision like this merely increases litigation costs.

"Litigants (and courts) are forced to stab blindly hoping to hit on an approach that might be approved by the Supreme Court some years and millions of dollars down the road," Raskin said.

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