“Next Up In Apple/Samsung Smartphone Wars: Design Patent Remedies Following The SCOTUS Decision”

Panel at the National Press Club
RT: Huge debt to Sarah Burstein’s work, the best and most
scholarly work on the subject—says things that aren’t clearly on either “side”
of the present dispute, but I find persuasive.  Her conclusion based on the history and early
caselaw: article of manufacture is a concept distinct from “machines” or “compositions
of matter,” and the phrase “article of manufacture” should be interpreted to
refer to a tangible item made by humans that has a unitary structure and is
complete in itself for use or for sale, as long as it isn’t also a machine or
composition of matter. The relevant question is whether anyone manufactures, uses, or sells that kind of item separately.  For example, outer shells are typically the
articles of manufacture, not the entire car or other machine.  I strongly recommend her recent articles on
the article of manufacture in 1887
and today,
especially her description of the temptation to “aggregate different design patents
into a single Frankenclaim,” which may be at issue here.  She also suggests that the article of manufacture
at issue in any given case is primarily a legal question to be determined by a
judge in a way similar to a Markman hearing.
Howard Hogan, Gibson Dunn & Crutcher: Filed amicus brief
for Nike on neither side.  SCt decision
took a lot of legal community by surprise b/c of its narrowness.  Unanimous court, narrow holding rejecting
claim that design patent statute has a rule that the article of manufacture
must be the complete device as sold.  Now
to figure out the alternative: unlike the Lanham Act, which has an explicit
burden-shifting provision, the design patent damages statute says “total
profits on the article of manufacture … to which the infringing design has been
applied.”  Apple +at least two other
cases: courts are wrestling with burden and definition of article of
manufacture.
Carl Cecere, Counsel, Hispanic Leadership Fund and the
National Grange: amicus of coalition of rural/minority interest groups.  Clients recognized potential for weaponizing
design patent damages as threat to competition and innovation.  Clarity is important. Apple’s proposed test
is designed to ensure it gets the profits it got in the first trial, but the
factors are too squishy for predictability: proposes a test that includes
factors such as how the defendant sells the product and how it accounts for the
profits internally, as well as visual contribution of patent to design as a
whole.  [That’s the Frankenclaim aspect
in this case, given the different patents in suit and the findings of
infringement that differed per phone.] 
Designers will tell you that cupholders are part of the overall design
and flow into it/contribute to it—but Apple’s test would encourage the
cupholder patent holder to claim profits from the whole.  For the phone: no one would buy the phone if
it didn’t make phone calls etc; it can’t really be the whole thing.  Relatedly: the problem of partial claiming: a
curve, the bezel. The designer is in the driver’s seat.  If they claim less than the whole, they think
there’s functionally severable pieces; when you partially claim, you shouldn’t
get the entire product, just the attached article.  Apple’s proposed test adopted most of the gov’ts
proposed SCt test, but omitted the first factor: what is the design patent
claiming?   If they really want to claim
the entire design, they should do so, but if they do less than that, the risk
of multiple awards for the same thing—3 different patents covering the front
face of the phone.  Apple suggests that
an award of triple Samsung’s total profit would be appropriate (at least in
theory) and that makes no sense.
Charles Duan, Public Knowledge: Patents affect a lot of
people, not just tech/pharma. SCt has a tradition of rejecting Fed. Cir.’s
patentee-friendly rules; is there a systemic reason?  Seems unlikely it’s just b/c the Fed. Cir. keeps
making mistakes; Fed. Cir. thinks patent ought to be strict rules, while SCt
goes back to more foundational, flexible concepts.  History plays a role: SCt has gone back to
historical sources for patent law, e.g., Impressions v. Lexmark, TC Heartland.
Josh Landau, CCIA: design patent claim serves as notice to
public.  Apple says jury should decide
what the article is; how does that correspond to the notice function?   Balancing defendant’s intention & other
factors makes it harder to figure out what the article of manufacture is in
advance.
CC: yes, also confuses parts of the test—what role does this
part play in the entirety of the product?
RT: I want to emphasize that Apple’s premise has clear support
in the caselaw, that the article described or illustrated in the patent does
not limit the article to which an infringing defendant may apply the patented design (from that, Apple concludes
that you should not look at what the design patent claims to determine the
article of manufacture, a conclusion that is not logically entailed by the premise, especially where the parties
are competitors). Though it’s not vitally important to the outcome here because
the parties are in fact competitors, this is an interesting and important
argument for two reasons: (1) design patents are currently granted on known
designs applied to new objects: a rubber ducky USB.  If you get a design patent on a rubber ducky
USB, should that allow you to bring an infringement claim against a
manufacturer of ordinary, tub-time rubber duckies?  If the answer is no, then the
novelty/anticipation inquiries should probably be very different: you shouldn’t
get the design patent just for deciding to put a rubber ducky around a USB core.  (2) 2D designs, such as the icons on the
screen, can be fully reproduced by many forms of reporting, including
newspapers and online news sources. 
Unlike ©, patent has no fair use doctrine.  Did the NYT infringe when it printed a
newspaper showing the design patent Samsung was found to infringe?  If yes, we have a number of problems, not
least of them a free speech one; if no, we have to somehow adapt the claim
about the breadth of potentially infringing articles.
Hogan: The NYT wouldn’t infringe b/c it’s not a design
applied to an article of manufacture.
RT: According to what test for article of manufacture?  The paper is definitely sold to me.
Duan: That’s the problem with overlapping IP. This is
basically a © type issue.  Recently, © is
even more likely to apply to these types of things—Star Athletica—you have ©,
TM and patent overlapping.
CC: Samsung’s test could deal w/the NYT problems—look for a
severable component.  Apple’s patents don’t
cover any possible application of the 16 icons everywhere—just for a screen.  Profits attributable to NYT putting design
into the paper are also minimal. The squishier/more subjective the test, the
more troublesome it becomes.

Hogan: other tests protect the interests described here:
there’s examination and enforcement—requires novelty/lack of anticipation.  Pretty exacting test.  Test for infringement is identical to the
obviousness/anticipation test. Whether a reasonable observer would think they’re
buying the same item. [but partial claiming] 
There’s a difference b/t the point of novelty entitling one to the design
patent and the article at issue—appropriate to look at design patent to
determine the article: here a screen with a layout like Apple’s.  Might weigh against saying a newspaper can
infringe.  SCt wants courts to wrestle
with these issues.  Why design patents
exist: to encourage design—overlapping is ok, as in the rest of the
industrialized world. Most of the rest of the world has separate industrial
design.  Design patent is less protective
of investment/IP.  We haven’t seen the
parade of horribles from design; the current statute was in reaction to a SCt
case that limited damages recovery.

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