District Court Mulls Design Patent Damages – Apple v. Samsung on Remand

Editor's Note:  The following guest post was authored by Thomas P. McNulty, Counsel at Lando & Anastasi LLP.  

In last year’s Samsung v. Apple decision, the Supreme Court held that the “article of manufacture” for which total profits are awarded upon a finding of design patent infringement may be either “a product sold to a consumer [or] a component of that product.”  The Supreme Court declined to establish the test for identifying the article of manufacture, instead remanding for consideration by the court below.

Given that the Supreme Court substantially changed the interpretation of damages under 35 U.S.C. § 289, it would seem clear that a new damages trial would be required. Nothing in litigation, however, is so simple. Instead, upon remand, the district court considered the parties positions on whether a new trial is warranted.  In the meantime, we will examine the procedural questions addressed by the district court in connection with its order requesting further briefing.

Supreme Court Sides with Samsung on Design Patent Damages

On December 6, 2016, the Supreme Court issued a unanimous opinion authored by Justice Sotomayor in the Samsung Electronics Co., Ltd. v. Apple, Inc. case concerning apportionment of design patent damages under 35 U.S.C. § 289. Specifically, § 289 makes it unlawful to produce or sell an “article of manufacture” bearing a patented design and makes infringers liable to the patent holder “to the extent of [their] total profit.” The Supreme Court’s ruling rejects Apple’s argument and holds that the meaning of the phrase “article of manufacture” can refer to a single component within a multicomponent product sold to consumers. In support of its reasoning, the Court cites a similarly broad interpretation of the phrase as previously applied to 35 U.S.C. § 171. The § 171 statute defines subject-matter eligibility for design patents.

Eight Telling Quotes from Apple v. Samsung Oral Arguments

So it finally comes to this. After five years of litigation, a dozen appeals to the Federal Circuit, and close to 1 Million tweets, the Apple v. Samsung case goes before the Supreme Court today for oral arguments. The sole issue being decided on appeal is whether an infringer's profits should be apportioned under 35 U.S.C. § 289. Or, as Samsung poses the question - "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?"

We're lucky to be reporting live from the Supreme Court today as the Supreme Court hears its first design patent case in over 100 years.  For this initial post, we'll be focusing on some of the more telling questions (and answers) from the justices during the hearing.   Continue reading after the jump for some of the more noteworthy quotes and our reaction.

Apple v. Samsung - Preview of Upcoming Oral Arguments before the Supreme Court of the United States

After a brief hiatus, nothing helps to kickstart the Ordinary Observer blog like another episode in the Apple v. Samsung saga. This installment, of course, takes place at the Supreme Court with next week’s oral arguments on the all-important apportionment issue. For those who are casually following the case or just need a refresher, we summarize the party positions and key amicus briefs after the jump. We’ll also be reporting from the Court next week so stay tuned for a first-hand account of the arguments and predictions from the courthouse steps next Tuesday.

After Apple v. Samsung, What is left of Richardson v. Stanley Works?

At long last, the Federal Circuit has handed down its decision in Samsung's appeal from the district court's $930 Million judgment in favor of Apple in the Apple v. Samsung case.  While the decision focuses on both trade dress and design patent issues, this post will focus on the design patent aspects of the decision. With respect to design patents, the Federal Circuit addressed two very important questions: 1) whether Judge Koh improperly failed to instruct the jury to disregard functional aspects of Apple's design patents, and 2) whether Judge Koh erred by allowing the jury to award Apple, Samsung's "total profits" from the accused smart phones.  We summarize these two aspects of the decision, below.

I.  Whether Judge Koh Improperly Failed to Instruct the Jury to Disregard Functional Aspects of Apple's Design Patents

On appeal, Samsung argued that the district court either incorrectly construed the design patent or failed to properly instruct the jury.  Specifically, Samsung argued that in either the claim construction or the jury instructions, the district court should have informed the jury as to which design elements of Apple's phones were functional, and instruct the jury to disregard them.  Samsung pointed to the rounded corners and rectangular screen of the Iphone as being allegedly functional.  

Samsung based its argument on the Federal Circuit's prior decision in Richardson v. Stanley Works, where the Federal Circuit endorsed the idea of "filtering out" the functional limitations from a design patent through claim construction:

The district court here properly factored out the functional aspects of Richardson's design as part of its claim construction. By definition, the patented design is for a multi-function tool that has several functional components, and we have made clear that a design patent, unlike a utility patent, limits protection to the ornamental design of the article. ... If the patented design is primarily functional rather than ornamental, the patent is invalid. ... However, when the design also contains ornamental aspects, it is entitled to a design patent whose scope is limited to those aspects alone and does not extend to any functional elements of the claimed article. 

Richardson v. Stanley Works, Inc., 597 F. 3d 1288, 1293-94 (Fed. Cir. 2010) (citations omitted).

It seems like the Federal Circuit could have simply distinguished Apple's design patents as not including functional design elements.  But, instead, the Federal Circuit attempted to distinguish Richardson in a way that leaves one wondering when Richardson applies, if ever:

Our case law does not support Samsung’s position. In Richardson, the design patent at issue depicted a multifunction tool with numerous components that were “dictated by their functional purpose.” ... But the claim construction in Richardson did not exclude those components in their entirety. Rather, the claim construction included the ornamental aspects of those components: “the standard shape of the hammer-head, the diamond-shaped flare of the crow-bar and the top of the jaw, the rounded neck, the orientation of the crow-bar relative to the head of the tool, and the plain, undecorated handle.” ... As such, the language “dictated by their functional purpose” in Richardson was only a description of the facts there; it did not establish a rule to eliminate entire elements from the claim scope as Samsung argues.

Apple v. Samsung, Slip Op. at 20 (emphasis added).  Based on the Federal Circuit's decision, it is very unclear when, if ever, Richardson now applies.  If the words "factored out the functional aspects of Richardson's design" do not mean "exclude those components in their entirety," then what do they mean?  Furthermore, if the claim construction in Richardson was intended to allow the design patent claim to "include[] the ornamental aspects of those components," then what is the point of "factor[ing] out" functional limitations at all?  

This portion of the court's decision probably creates more questions than answers, and doesn't seem to be necessary, based on the nature of Apple's design patents.  Given the confusing nature of the court's decision, and the apparent conflict with Richardson, Samsung likely has strong grounds for an en banc appeal on this point. 

II.  Whether Judge Koh Erred by Allowing the Jury to Award Apple, Samsung's "Total Profits" from the Accused Smart Phones

Many commentators predicted that the Federal Circuit would take this opportunity to revise the law regarding apportionment of an infringer's profits.  Several law school professors even filed an amicus brief, arguing that § 289 of the Patent Act should be interpreted to require some form of apportionment.  However, the Federal Circuit's analysis on this point was short and sweet:

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.

Apple v. Samsung, Slip Op. at 26-27.  With regard to the law professors' amicus arguments, the court dismissed them in a footnote as "policy arguments that should be directed to Congress. We are bound by what the statute says, irrespective of policy arguments that may be made against it."  Id. n. 1.

Guest Post - In Apportionment Debate, Design Patents Should Be Distinct

Editor's Note:  The below guest post was authored by Brice Beckwith, a law student at Oklahoma University College of Law.  Brice presented at last month's ABA Design Committee meeting on the subject of apportionment and was kind enough to write up his presentation for the Ordinary Observer.  The ABA Design Committee holds monthly meetings (via conference call) where the members discuss current events in design law and noteworthy decisions.  So sign up and join the conversation!

When I began to look through the Apple v. Samsung briefs concerning disgorgement of total profits under § 289 a few weeks ago, it occurred to me that in many ways the briefs illustrate everything I have come to expect from this area of law. The arguments proceed despite a noticeable lack of recent or direct case law, there is admixture of copyright and trademark policy rationales throughout, and (my favorite) a dependence on late 19th century legislative history as applied to modern smartphones. In my view, the characteristics of these arguments lend credence to the belief that the state of design patent law loosely holds shape as some sort of intellectual property hodgepodge. Nowhere is this more apparent than when reading the arguments that make comparisons between design patent law and other intellectual property regimes. For example, many arguments against § 289’s disgorgement of total profits were similar to calls for a causation/nexus requirement between the infringer’s profit and the infringement. By looking at these arguments we can get some idea as to what makes this area so amorphous, and how that may cause a few pitfalls. 

In its Appellant Brief, Samsung argued for a causation requirement for § 289 based on two premises. First, Samsung, as best it could, stayed within the realm of patent law by arguing that patent infringement is essentially a tort, and that as a tort it requires a proof of causation. To make this claim, Samsung needed both a utility patent case, Carbice Corp. v. Am. Patents Dev. Corp., 283 U.S. 27, 33 (2002), and a copyright case, Mackie v. Rieser, 296 F.3d 909, 915 (9th Cir. 2002). Later, in its Reply Brief, Samsung clarified that this causation requirement would not violate the Congressional intent to abolish apportionment because the requirement would be separate from and precede any apportionment inquiry. See Samsung Reply Brief at 14.  Second, in its appellant brief, Samsung argued for an interpretation of § 289 that would treat an award of profits as a ceiling and emphasized that a causation requirement may already exist in § 289’s language, which states that a patent holder “shall not twice recover the profit made from the infringement.” Relying on another utility patent case, Samsung attempted to bolster this interpretation by tying a lack of causation requirement to constitutional concerns over inappropriately enlarging the patent monopoly raised in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 5-6, 86 (1966). 

In some contrast, Professor Mark Lemley’s arguments in “Brief Amici Curiae of 27 Law Professors In Support of Appellant Samsung,” took a different road to the same conclusion. Professor Lemely set up trademark law as a close analogue to design patent law in order to show the court a more familiar route it could take when resolving the disgorgement issue. Among several other trademark rules that were offered, was a trademark requirement that a court could award profits only on sales that were attributable to the infringement. See id. at 7. Although Professor Lemley made this point more in passing, it demonstrates a reality in design law that often advocates must reach beyond design patent law for answers.

In that same vein, in a post written on this blog back in August by William Seymour, we can see a similar argument for a causation/nexus requirement stemming from a third body of law. Whereas Samsung chose patent law, and Professor Lemley looked to trademark, Mr. Seymour provided a solution through Copyright law. From his perspective, the copyright disgorgement remedy found in 17 U.S.C. § 504b offers a better analogue to § 289. After comparing the history of the two statutes, Mr. Seymour came to the conclusion that the differences between the two statutes provides strong evidence that the court should not interpret § 289 to allow apportionment. Despite this, Mr. Seymour offered another out for Samsung by pointing to the judicially created nexus requirement for § 504. Under this nexus test the copyright owner must show a legally significant relationship between the infringer’s gross profits and the infringement. Furthermore, the nexus inquiry acts as a threshold requirement before the disgorgement of the infringer’s profits even comes into question. In many ways this solution mirrors what both Samsung and Professor Lemley offered in their respective briefs, and therefore is yet another example of how, in design patent law, the same destination can be reached by taking different paths. 

Taken as a whole, these arguments echo in practice what many commentators propose in design patent scholarship, which is to replace design patent law (either wholly or partly) with copyright, trademark, or some type of sui generis scheme. There is an argument that the very nature of industrial art dictates that the law governing design patents must exist in a space that blurs the lines between other intellectual property regimes. However, these blurred lines may just as likely not be caused by the nature of the thing being protected, but instead by the, long-standing and recently changing, unpopularity of the law. A risk in substituting legal tools from trademark and copyright law is that any independent purpose that design patents once had may be lost somewhere in the mix. Maybe we forget the very reason that design patents were created as a separate entity and, in that forgetting, the replacement of the design patents with other schemes becomes all that more preferable. 

These arguments may also reveal an implicit unease that exists in allowing design patents to be independent from other intellectual property regimes. When faced with rebutting the proposition of a causation requirement, Apple and its amici struggled to find policy rationales that solely belonged to design patents. For instance, in its Appellee brief, Apple rejected any call for a causation requirement on the premise that causation would violate Congressional intent because it essentially equated to apportionment. However, in doing so, Apple avoided making any policy arguments beyond Congressional intent to justify a remedy as severe as § 289. 

In his amicus brief, Perry Saidman made the very same argument that any question of causation equates to a question of apportionment; however, unlike Apple, Mr. Saidman did offer a justification for § 289. Mr. Saidman claimed that one reason design patents require § 289 is because when an infringer appropriates a design patent they are appropriating the “very face of the company.” Id. at 19. Mr. Saidman further noted that when a design patent is infringed the infringers often take more than just product design, rather the infringers in effect misappropriate the very brand of the patent holder. See id. This concern for the protection of brand demonstrates just how blurry the lines in design patent law can be. It is an argument that design patents are unique and therefore deserve a special tool in § 289, but what makes design patents unique in this case is a shared purpose with unfair competition law. In some ways this argument resembles that of Samsung, Mr. Lemley, and Mr. Seymour because it demonstrates the need to incorporate tools and policy from other intellectual property regimes when an immediate answer is not available. 

With these arguments the Federal Circuit has a chance, through its interpretation of § 289, to add some clarity to the amorphous subject of design law. Although the Court must make a skin deep choice regarding apportionment, the more interesting decision may be whether the Court decides to justify its holding uniquely from a design patent perspective or from some other intellectual property regime.

Pacific Coast v. Malibu Boats - The Nightmare Apportionment Scenario Realized

Last Friday we commented on Professor Lemley's amicus brief in the Apple v. Samsung case, which addresses the issue of apportionment in design patent law.   Apparently,  Judge John Antoon II of the Middle District of Florida was working on his own "post" on design patent apportionment at the same time.  Last Friday, Judge Antoon issued a decision denying Malibu's motions for summary judgment, including a motion to limit potential damages to the profits for the accused windshields in the case of Pacific Coast Marine Windshields, Ltd. v. Malibu Boats, LLC.  As a result of Judge Antoon's decision Malibu's total profits for the sale of its speedboats will be at risk if they are found to have infringed Pacific Coast's design patent on a boat windshield.  

Here's a graphic to help explain the decision:

You might recall this case from its previous trip to the Federal Circuit, where the court reversed Judge Antoon's decision to apply prosecution history estoppel to limit Pacific Coast's claims against Malibu. While the Federal Circuit held that prosecution history estoppel applies to design patent, the court reversed the district court’s summary judgment of non-infringement because it found that the accused design was not within the scope of the subject matter surrendered during prosecution.

It is unclear why Malibu Boats did not renew its motion for summary judgment on remand.  Although its prosecution history estoppel argument had been defeated, it still had strong non-infringement arguments as a result of the Federal Circuit's decision.  For example, if, as the Federal Circuit says, the accused windshield was not within the scope of the canceled figure,  then how could the accused windshield be within the scope of the remaining figures of the '070 Patent?  The accused design appears to be more similar to the cancelled figure than the asserted design, and that fact might have been enough for Judge Antoon to grant summary judgment. 

Malibu's decision not to renew its motion for summary judgment on non-infringement may cost them. Judge Antoon's decision on Friday was a simple matter of statutory interpretation.  The court found that its hands were tied in light of the statutory history of § 289:

Congress removed the apportionment requirement in 1887, with the enactment of what later became§ 289.  [See Nike. Inc. v. Wal-Mart Stores. Inc., 138 F.3d 1437, 1441 (Fed. Cir. 1998)]. Design patent owners are no longer required “to apportion the infringer's profits between the patented design and the article bearing the design.” Id. at 1442.  The intent of Congress to allow more expansive recovery for design patent owners is exhibited in the plain language of the statute, which allows recovery of "total profit" from anyone who sells “any article of manufacture to which such design or colorable imitation has been applied.” 35 U.S.C. § 289.  In this case, Malibu sells boats, to which patented windshields have been applied. The plain language and intent of the statute support a conclusion that Pacific is entitled to Malibu's profits from the sale of its boats with the windshield.

This reading of § 289 is further supported by Federal Circuit and district court decisions. In Nike, the Federal Circuit referred to the damages as profits from "the infringing shoes" when the patent involved only part of the shoe. 138 F .3d at 144 7. In Apple. Inc. v. Samsung Electronics Co., the plaintiff had several patents pertaining to smartphones and tablet computers that claimed a portion of the design of particular electronic devices but disclaimed other portions. 678 F.3d 1314, 1317 (Fed. Cir. 2012). With respect to damages based on the defendant's profits, the district court ruled that the plaintiff was not required to prove which portions of the profits were earned by the design feature. Apple. Inc. v. Samsung Elecs. Co., 926 F. Supp. 2d 1100, 1111 (N.D. Cal. 2013). "Congress specifically drafted the design patent remedy provisions to remove an apportionment requirement that the Supreme Court had imposed. Thus, there is simply no apportionment requirement for infringer's profits in design patent infringement under § 289." Id.

While Judge Antoon's legal analysis is correct, the case of Pacific Coast v. Malibu Boats is a striking example of the sometimes inequitable result of § 289 in the absence of any equitable discretion in the hands of the Court.  Malibu's boats sell for anywhere between $50,000 and nearly $100,000, while the accused windshields cannot possibly cost more than a few hundred dollars, standing alone.  This is precisely the type of inequitable scenario that Professor Lemley highlighted in his amicus brief and is the type of situation that the Federal Circuit must grapple with in the appeal from the Apple v. Samsung case. 

Design Patent Apportionment - The Answer Lies in Copyright Law

On Thanksgiving last year, we wrote about the apportionment problem in design patent cases by analogizing to a thanksgiving favorite, turducken.  The apportionment problem deals with how courts should award "total profits" for design patent infringement under 35 U.S.C. § 289 when the infringing design is only one of many profitable features in the infringing product.  For example, in the Apple v. Samsung case (now on appeal), Samsung maintains that its accused Galaxy devices were profitable, at least in part, because of their functionality and software, not just Apple’s patented designs which it was found to have infringed.

As promised, the issue of design patent apportionment has reared its ugly head in Samsung's appeal to the Federal Circuit in the Apple v. Samsung case.  I recently had an opportunity to read the "Brief Amici Curiae of 27 Law Professors In Support of Appellant Samsung," which is available on the AIPLA web page for the industrial design committee.  I found Professor Lemley's brief to be well reasoned and persuasive and I think the Federal Circuit will have some tough decisions to make when it comes to the apportionment issue.  Two things in the Amicus Brief jumped out at me and my take on the apportionment problem differs only slightly from Professor Lemley's.

First, as professor Lemley appears to concede, the statutory history relating to § 289 is not easily ignored.  Congress specifically removed the apportionment requirement from the disgorgement remedy in response to a Supreme Court case that applied apportionment in such a way that it basically declawed the disgorgement remedy.  In Dobson v. Carpet Co., 114 U.S. 439 (1885), the Supreme Court held that a design patent plaintiff must be required to establish the profits attributable to the infringing design and, because there was no evidence the patented designs at issue had contributed to the profits of the infringing carpets, the Supreme Court reversed and awarded only nominal damages. See id. Congress then passed the statute of 1887 in response to the Dobson decision. "The manifest purpose of congress was to enlarge the remedy against infringers of design patents, and to declare that the measure of profits recoverable on account of the infringement should be considered to be the total net profits upon the whole article."  Untermeyer v. Freund, 58 F. 205 (2d Cir. 1893) (emphasis added); see also Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1441 (Fed. Cir. 1998) (“The Act of 1887, specific to design patents, removed the apportionment requirement when recovery of the infringer’s profit was sought….”).  This clear statutory history and legislative intent will be difficult for Samsung to overcome and nearly impossible for the Federal Circuit to ignore.  

While I agree that "awarding a defendant’s entire profits makes no sense in the modern world," the same could be said of the minimum $250 remedy that is also available under § 289.  In the modern world, a design patent holder will spend more in a single billable hour of design patent litigation than it could ever hope to recoup under this provision.  Yet, federal courts are incompetent to update § 289 so as to increase this minimum monetary award to a more modern amount.  Courts are equally incompetent to read apportionment back into § 289 after Congress deliberately removed it. 

Second, the Amicus Brief notes that the "closest analogue" for the disgorgement remedy in § 289 is found in the remedies for trademark infringement.  On this point, I would disagree.  The disgorgement remedy in design patent cases is a close cousin of the disgorgement remedy under copyright law.  See Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. 390, 399 (1940) ("Prior to the Copyright Act of 1909..., there had been no statutory provision for the recovery of profits, but that recovery had been allowed in equity both in copyright and patent cases as appropriate equitable relief incident to a decree for an injunction."); Braun Inc. v. Dynamics Corp. of Am., 975 F. 2d 815, 824 (Fed. Cir. 1992) ("R]ecovery of an infringer's profits evolved in courts of equity").  Indeed, § 504 of the Copyright Act still uses language that is virtually identical to the disgorgement remedy in design patent law prior to Congress's decision to remove apportionment. See 17 U.S.C. § 504(b) ("The copyright owner is entitled to recover ... any profits of the infringer that are attributable to the infringement") (emphasis added).  Thus, Congress chose to require apportionment under copyright law in 1909, twelve years after deliberately removing the same language from the design patent statute.  This is strong evidence that § 289 and § 504 are intentionally different and the courts should not interpret these statutes as requiring the same things.  

However, copyright law may still provide the solution to the problem of apportionment in design patent cases.  The Copyright Act expressly provides for infringer's profits as a remedy for copyright infringement and expressly requires that such profits be apportioned.  However, courts have  uniformly interpreted § 504 as requiring a threshold showing by the plaintiff that there is a nexus between the infringer's gross profits and the infringement.  See, e.g. Polar Bear Productions, Inc. v. Timex Corp., 384 F.3d 700, 711 (9th Cir. 2004) (“Thus, a copyright owner is required to do more initially than toss up an undifferentiated gross revenue number; the revenue stream must bear a legally significant relationship to the infringement.”); Bouchat v. Baltimore Ravens Football Club, Inc., 346 F.3d 514, 522 (4th Cir. 2003) (“In sum, we conclude that the Defendants could properly be awarded summary judgment...if...there exists no conceivable connection between the infringement and those revenues....”); On Davis v. The Gap, 246 F.3d 152, 160 (2d Cir. 2001) (“[W]e think the term ‘gross revenue’ under the statute means gross revenue reasonably related to the infringement, not unrelated revenues.”); Taylor v. Meirick, 712 F.2d 1112, 1122 (7th Cir. 1983) (“It was not enough to show [Defendant]’s gross revenues from the sale of everything he sold....”).  Indeed, the Federal Circuit, itself, has already applied this rule of law in the copyright context.  See The University of Colorado Foundation, Inc. v. American Cyanamid Co., 196 F.3d 1366, 1375 (Fed. Cir. 1999) ("The University's argument presumes that the sales of reformulated Materna were due to Cyanamid's copyright infringement. The University had the burden to show this connection.").  

The nexus requirement in copyright law is a judicially created, threshold requirement before the infringer's profits become available at all.  It has nothing to do with the statutory apportionment required under § 504 if disgorgement is found to be an appropriate remedy.  See Andreas v. Volkswagen of Am., Inc., 336 F.3d 789, 796 (8th Cir. 2003) (“burden of establishing that profits are attributable to the infringed work often gets confused with the burden of apportioning profits between various factors contributing to the profits”) (emphasis added).  Under copyright law, where the gross profits do not bear "a legally significant relationship to the infringement," the disgorgement remedy is unavailable and apportionment is simply irrelevant. 

There is no good reason why § 289 should not be interpreted as requiring this same threshold showing that the total profits bear "a legally significant relationship to the infringement."  Such an interpretation of § 289 would not impinge on Congress' clear intent that profits not be apportioned under § 289 and would honor the equitable roots of the disgorgement remedy for both design patent infringement and copyright infringement.  Under § 289, upon a threshold showing of a "a legally significant relationship to the infringement," a design patent infringer would be liable to the extent of their total profits, whereas under § 504, the court would then be required to apportion the infringer's profits.  When "a legally significant relationship" between the design patent infringement and the profits cannot be proved, the patent would still be permitted to recover their damages pursuant to § 284.

This interpretation of § 289 would also address the inequitable scenarios cited by Professor Lemley in the Amicus Brief, without improperly re-interpreting § 289 to include the same apportionment requirement that Congress has already deleted.  See Amicus Brief at 12 ("If United Airlines uses a patented part in one of its planes, the patent owner cannot simply point to that infringement and say, “Now I am entitled to the entire profit from all aspects of United Airlines.”).  Under this scenario, the patentee would likely be unable to show "a legally significant relationship" between United Airline's gross profits and its infringement of a single patented part and disgorgement would not be available as a remedy at all.  Samsung's infringement of Apple's Iphone design patents, however, presents a somewhat closer question as to whether there is a threshold nexus between the infringing design and Samsung's gross profits. 

Interpreting § 289 to require a threshold showing of a nexus between the patented design and the infringer's profits would honor the equitable roots of the disgorgement remedy and bring the interpretation of § 289 in line with its equitable cousin, § 504 of the Copyright Act.  This proposed interpretation would also address the sometimes inequitable result of awarding "total profits," where those profits are not reasonably related to the infringing design.  While apportionment should not be permitted in design patent cases, in accordance with congressional intent, the Federal Circuit should use this opportunity to allow for this basic equitable consideration in design patent cases, as a threshold issue.