Bottom Line:

The Supreme Court’s decision sets the bar higher for design patent holders to recover for infringement and opens the door to apportionment of damages. Parties looking to file for design patents will likely consider claiming their patents more broadly, in order to avoid the specter of reduced damages in the event the design patent is infringed. They may also consider alternative forms of protection, such as trade dress and copyright if appropriate. In addition, how damages should be apportioned will now be an important part of both side’s litigation strategy.

As the Court refused to delineate a test for determining the infringing article of manufacture, address whether there must be a causal link between the total profit made and the infringing article of manufacture, or explain how to apportion “total profits” by component, further Federal Circuit decisions on these issues are likely to follow.

In its first design patent case in over a century, the U.S. Supreme Court has redefined the meaning of an infringing “article of manufacture.” In the process, it has raised the bar for obtaining damages in design patent infringement cases.

In connection with the Apple v. Samsung suit over Apple’s design patents in its iPhones, the Supreme Court rejected the U.S. Court of Appeals for the Federal Circuit’s theory that the article of manufacture must be the end product sold to the consumer. Instead, for complicated, multi-component products, the Court noted that article of manufacture could also mean a component of the entire end product.

Read more: http://www.ilnipinsider.com/2017/02/u-s-supreme-court-sets-the-bar-higher-for-obtaining-damages-for-design-patent-infringement/