35 U.S.C.S. § 289 provides a damages remedy specific to design patent infringement. A person who manufactures or sells any article of manufacture to which a patented design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit. 35 U.S.C.S. § 289. In the case of a design for a single-component product, such as a dinner plate, the product is the article of manufacture to which the design has been applied. In the case of a design for a multicomponent product, such as a kitchen oven, identifying the article of manufacture to which the design has been applied is a more difficult task.
Section 289 of the Patent Act made it unlawful to manufacture or sell an "article of manufacture" to which a patented design or a colorable imitation had been applied and made an infringer liable to the patent holder "to the extent of his total profit." As relevant in the instant case, a jury found that various smartphones manufactured by Samsung infringed design patents owned by Apple Inc. that covered a rectangular front face with rounded edges and a grid of colorful icons on a black screen. Apple was awarded $399 million in damages, the amount of Samsung's entire profit from the sale of its infringing smartphones. On appeal, the federal circuit affirmed the damages award, rejecting Samsung's argument that damages should be limited because the relevant articles of manufacture were the front face or screen rather than the entire smartphone. The court reasoned that such a limit was not required because the components of Samsung's smartphones were not sold separately to ordinary consumers and thus were not distinct articles of manufacture.
Did the lower court err in not limiting the award?
The Supreme Court of the United States held that the lower court's judgment affirming a design patent infringement damages award was erroneous because the term "article of manufacture," as used in 35 U.S.C.S. § 289, encompassed both a product sold to a consumer and a component of that product, and thus, the lower court's basis for not limiting the award, i.e., that the component parts of a manufacturer's smartphones were not sold separately from their shells, was in error.