After the U.S. Supreme Court reversed the $400 million damages award in favor of Apple for Samsung’s infringement of Apple design patents, the case was remanded to the Federal Circuit for further proceedings. Our prior blog post on the case, with additional details, is located here.
On remand, the Federal Circuit received statements from both Apple and Samsung on how to proceed. However, the parties proposed very different paths. Apple argued the Federal Circuit should continue reviewing the case and
affirm the design patent damages award without additional briefing or argument because Samsung never asserted that the relevant article of manufacture was anything other than Samsung’s entire phones. According to Apple, Samsung failed to proffer any evidence to the jury identifying any smartphone component—as opposed to the entire phone—as the relevant article of manufacture to which the patented design was applied. As such, Apple maintains that the record permits only the conclusion that the relevant articles of manufacture must be Samsung’s infringing phones.
Meanwhile, Samsung urged the Federal Circuit to
remand to the district court for a new trial on design patent damages. According to Samsung, the district court’s § 289 instruction was erroneous in light of the Supreme Court’s decision. Samsung does not dispute that the trial court’s recitation of the statutory language from § 289 was accurate; it argues that the court should have said something more to account for the fact that, in a multicomponent product, there might be more than one article of manufacture within the meaning of § 289.
The Federal Circuit did neither.
In short, the parties dispute what jury instructions the current trial record supports. Because the district court is better positioned to parse the record to evaluate the parties’ competing arguments, we remand for the district court to consider these issues in the first instance.
The Federal Circuit’s remand to the district court continues the theme of the courts avoidance of the ultimate issue: What test for damages should be applied when a design patent covers one component of a larger product?
If the court determines that a new damages trial is necessary, it will have the opportunity to set forth a test for identifying the relevant article of manufacture for purposes of § 289, and to apply that test to this case.
So now it’s back to Judge Koh in the Northern District of California to tackle the question both the Federal Circuit and the Supreme Court declined to answer. Stay tuned!
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