SIIA Applauds Supreme Court Reversal of Federal Circuit on Design Patents

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SIIA Applauds Supreme Court Reversal of Federal Circuit on Design Patents

Washington, D.C. (December 7, 2016) – Yesterday, the Supreme Court unanimously reversed a decision of the Federal Circuit in the long-running iPhone litigation between Apple and Samsung.  The Federal Circuit held that when a design patent is infringed, the plaintiff is entitled to the total profits from the infringing product—even where the infringing product has many components.  The lower court had permitted Apple to recover all of the profits from the sale of infringing Samsung Galaxy phones, despite the fact that the allegedly infringed elements were minor ornamental components of the overall product. 

The Software and Information Industry Association (SIIA) had filed an amicus in because of the risk that the Federal Circuit’s interpretation of design patent damages could create a whole new—and potentially far more expensive—fight against non-practicing entities. 

“This is a welcome decision,” said Mark MacCarthy, Senior Vice President of Public Policy.  “The Court took an important first step in correcting the perverse incentives that could have led to a worsening of the patent troll problem.”  Importantly, the Court expressly refused to set out a test by which the relevant article of manufacture can be identified because the parties had not briefed that issue. 

Writing the 8-0 opinion, Justice Sotomayor looked at the statute’s plain language and the way that the phrase “article of manufacture” was used in the statute, the Court found that Congress did not intend to create windfalls.  Instead, the court held—as SIIA and others had urged—that “the term “article of manufacture” broad enough to encompass both a product sold to a consumer and a component of that product.”   The Court remanded the case back to the Federal Circuit to determine how to apply the phrase “article of manufacture” to Samsung’s infringement.

“It’s going to be critical that the Federal Circuit develop a test for identifying article of manufacture that does not create perverse incentives,” said Chris Mohr, SIIA’s Vice President for Intellectual Property and General Counsel.  “The Court used the test outlined in SIIA’s brief at oral argument, and it will be important for the technology industry to make its views known when the case goes back in front of the Federal Circuit.”


About SIIA
SIIA is an umbrella association representing 800+ technology, data and media companies globally. Industry leaders work through SIIA’s divisions to address issues and challenges that impact their industry segments with the goal of driving innovation and growth for the industry and each member company.  This is accomplished through in-person and online business development opportunities, peer networking, corporate education, intellectual property protection and government relations. For more information, visit