Until recently, design patents have been a relatively obscure category of U.S. intellectual property (IP) rights. Design patent law was originally intended to encourage investments in novel and inventive ornamental designs for articles of manufacture, such as carpets and lamps. However, many design patents have been granted in recent years to makers of advanced information technologies, such as smartphones. Often these are for component parts of their technologies, such as product configurations and virtual designs embedded in software.
This column reviews the Apple v. Samsung design patent infringement case. It considers the two key issues Samsung brought to the Supreme Court for review. One set concerns the scope of design patents and the test that should be used to judge infringement. A second concerns whether the infringer of a design patent must disgorge all of its profits from the sale of a product in which the design is embodied, or only those profits that are attributable to the infringement. The Supreme Court has decided to address the second issue, but not the first.