Apple v. Samsung:

Supreme Court to consider

phone design patents


The US Supreme Court has agreed to rule on the long-standing design patent dispute between Apple and Samsung.

According to the New York Times, the Supreme Court hasn’t heard a design patent case in more than 120 years.

Samsung, which was hit with a $399 million judgment for allegedly infringing Apple’s designs, has argued that the design patents are invalid.

The design patents at issue are D618,677 (a black rectangle with rounded corners), D593,087 (bezel on surrounding rim), and D604,305 (colorful grid of 16 icons.)

In its petition to the high court last December, Samsung argued:

If the current legal precedent stands, it could diminish innovation, stifle competition, pave the way for design patent troll litigation, and negatively impact the economy and consumers.

Samsung claimed that it was “ridiculous” that it was ordered to pay 100% of its profits for several of its phones found to be infringing even though the infringing elements were only a small part of those phones.

Section 289 of the Patent Act states:

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250…

Various high tech companies including eBay, Facebook, and Google, have filed briefs in support of Samsung, as has the Electronic Frontier Foundation.

In their amicus brief to the Supreme Court, the tech companies argued that section 289, which was originally drafted in the 19th century, wasn’t in step with the modern world:

That bill was premised on the assumption that “it is the design that sells the article,” and that the design, as the primary feature of the article, is the only thing that “makes it possible to realize any profit at all.” The 1886 Congress did not have complex, multicomponent products in mind—much less products incorporating modern technologies.

Design patents have gotten relatively little attention over the years, compared to utility patents. In 2015, about 15 utility patents were filed for every design patent.

Design patents offer more limited protection than utility patents, but they have a number of advantages:

  • They’re often are granted within six to eight months, versus three years or more for utility patents.
  • Preparing and filing design patent applications is less expensive — about 1/10 the cost of a utility patent.
  • No maintenance fees are required.
  • 90% of design patents are allowed by the patent office, versus 70% for utility patents.

As the Apple vs. Samsung litigation shows, design patents can also be significant profit centers and should be considered as part of any patent strategy.