January 30, 2018

Design Patent Damages — Four New Factors for Making the Determination

By Derek Richmond, Of Counsel

The Northern District of California has asked the parties in the everlasting Apple v. Samsung Electronics design patent litigation (No. 11-01846) to consider four new factors in arguing whether Apple’s approximately $400 million damages award was proper.  These four new factors were created to help determine whether an article of manufacture in which the patented design is embodied is an entire mobile phone (the 3G iPhone) or whether the article of manufacture is something less than the entire phone.  The four factors that will be used to consider this question are:

  1. The scope of the design claimed in the plaintiff’s patent, including the drawing and written description
  2. The relative prominence of the design within the product as a whole
  3. Whether the design is conceptually distinct from the product as a whole
  4. The physical relationship between the patented design and the rest of the product, including whether the design pertains to a component that a user or seller can physically separate from the product as a whole, and whether the design is embodied in a component that is manufactured separately from the rest of the product, or if the component can be sold separately.

Fortunately, we did not have to wait for the Apple case to be decided to see these four factors in action.

The jury in Columbia Sportswear v. Seirus Innovative Products, Nos. 3:17-cv-01781-HZ (S.D.Cal. Sept. 29, 2017), was instructed to consider the list of factors when determining whether an infringing “article of manufacture” was the (design) patented interior lining of a glove or whether the article of manufacture was the entire glove itself — exterior and interior.  The jury determined that, under the above factors, the article of manufacture was the entire glove.

Unfortunately, as a jury is a black box, we do not know what logic the jury followed in determining that the entire glove was the article of manufacture.  Do not be surprised to see Seirus file an appeal, however, as the award they are ordered to pay in damages topped more than $3 million — an amount based on Seirus’s entire glove even though the design patent was directed to much less than the entire glove.

It would be wise, in fact, to keep an eye on both Apple and Columbia Sportswear.