By Philippe Signore, Ph.D.
| May 25, 2018
Almost 16 years ago, we wrote an article in Managing Intellectual Property (Nov. 2002, Issue 124) entitled U.S. DESIGN PATENTS: AN UNDERDOG THAT BITES. The article explained that companies had previously overlooked design patents, focusing instead on trade dress protection and utility patents. Yet, design patents provide their owners with the additional option of demanding the infringer's total profits under 35 USC 289. “This option may be advantageous, for example, when the infringer's total profits are substantially greater than any reasonable royalty.” “Companies are starting to appreciate the value of design patent protection and systematically consider whether their inventions deserve such protection.” Apple was such a company.

In 2002, Apple obtained a mere 20 design patents. In 2012, the company obtained about 150 new design patents. Last year, it received an additional 340. Yesterday, the smart phone maker became a step closer to receiving a valuable return on its investment.

A California jury awarded Apple $533 million to be paid by Samsung under 35 USC 289 for infringing three design patents. Of note, the verdict came after the 2016 Supreme Court decision holding that damages for design patent infringement under 35 USC 289 could be based on a component of a product, not necessarily the full product. This holding placed into question the amount of damages that Apple could obtain based on its design patents that only claimed a portion of the smart phones (e.g., a front face). The jury likely did not base its calculation on Samsung’s profits for its whole phones, but likely performed some kind of apportionment of the profit based on the claimed parts. While the amount is less than the requested $1B, the award is significantly greater than the damages calculated for the infringement by Samsung of Apple’s utility patents ($5 million).

Regardless of the ultimate fate of this jury verdict following the likely appeals, the ultimate winner from this protracted litigation is the U.S. design patent. Companies should not only obtain design patents, but should also confidently enforce them when their products are being copied. The U.S. design patent has now become a top dog.

Top Dog