Samsung Appeals to the Supreme Court! ... (but probably won't get there)

It's not every day that the New York Times reports on design patent news.  But when it does, it usually has something to do with smartphones.  

The big news in design patent law today is Samsung's inevitable appeal to the Supreme Court from its August loss (mostly) at the Federal Circuit.  Just last week, Apple and Samsung appeared to finally be putting this lawsuit behind them, when it was announced that Samsung had agreed to pay Apple $548,176,477 to satisfy the judgment entered by Judge Koh and affirmed by the Federal Circuit.  However, in the agreement, Samsung had reserved its right to "reimbursement" if the judgment is reversed.  

In its petition for writ of certiorari, Samsung points out two alleged errors by the Federal Circuit - 1) whether the Federal Circuit should have "factored out" the allegedly functional aspects of Apple's design patents, and 2) whether the Federal Circuit erred by not apportioning Samsung's profits between the profits attributable to the infringing design and the profits resulting from other aspects of the infringing products. 

Of course, Samsung worded the questions presented somewhat differently:

The questions presented are:

1. Where a design patent includes unprotected non-ornamental features, should a district court be required to limit that patent to its protected ornamental scope?

2. Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?

Regardless of how Samsung chooses to articulate the issues, however, a Supreme Court hearing seems unlikely, in the opinion of this author.  

With respect to the first issue, the Federal Circuit did an excellent job of clarifying its own, somewhat confusing precedent from cases like Richardson v. Stanley Works.  In Apple v. Samsung, the court explained that that the functional aspect of a claim may be conceptually factored out as part of claim construction without literally "exclud[ing] those components in their entirety."  See our earlier post on this topic here.  This pronouncement of the law will help simplify design patent claim construction, while emphasizing to juries and judges that designs do not protect functional concepts, only the appearance of an article of manufacture. 

With respect to the third issue, it is highly unlikely that the Supreme Court would attempt to blatantly overrule the clear, expressed wishes of Congress.  Samsung seems to argue that § 289 is just "really old."  But it's unclear why the Supreme Court's analysis of this argument would be any different from the Federal Circuit's:

In reciting that an infringer “shall be liable to the owner to the extent of [the infringer’s] total profit,” Section 289 explicitly authorizes the award of total profit from the article of manufacture bearing the patented design. Several other courts also concluded that Section 289 authorizes such award of total profit. ... The clear statutory language prevents us from adopting a “causation” rule as Samsung urges.

So while its exciting to see design patents in the news, don't hold your breath for the first Supreme Court design patent case in 100+ years.  Of course, we could be wrong and, if we are, we will be the first to celebrate.