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Supreme Court Decision will Impact Claim Strategy for Design Patent Applications

          Typically the goal in any patent application is to claim your invention as broadly as possible in light of any existing prior art. In design patent applications, this means that an applicant should try to claim a minimal set of design features for a product the applicant is trying to protect. This approach makes sense because it allows the applicant to exclude competitors that would try to make variations on the product design in order to get around a patent. As long as a competitor product has the claimed design features, the competitor product will be deemed to infringe. The Apple v. Samsung legal battle has demonstrated the validity of this approach for design patent applications.

          Apple has been awarded approximately $400 million for Samsung’s infringement of design patents related to Apple’s iPhone. However, the U.S. Supreme Court heard oral arguments by Apple and Samsung on October 11, 2016 regarding the issue of whether or not the damages awarded to Apple were appropriate. The Supreme Court is considering an interesting question: “Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?” Samsung’s position is that it only infringed design patents related to certain components of the iPhone and therefore should only be liable for any damages attributable to those components. U.S. patent law states that:

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

35 U.S.C. § 289. Emphasis added.

          Samsung has essentially argued that an “article of manufacture” can be something less than the entirety of an infringed product. If the Supreme Court agrees with Samsung, applicants for design patent applications will have to balance competing interests. With a broader claim, a patent owner will still have greater right to exclude competitors; however, the patent owner’s ability to collect damages may become limited to components of a product that are covered by claimed design features. To preserve an applicant’s exclusionary rights while maintaining a higher potential for collecting damages, it may become advantageous for applicants to file multiple design patent applications with varying claim breadth.

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