{"id":5520,"date":"2018-03-04T14:19:00","date_gmt":"2018-03-04T18:19:00","guid":{"rendered":"http:\/\/ncjolt.org\/?p=5520"},"modified":"2020-06-04T20:52:33","modified_gmt":"2020-06-04T20:52:33","slug":"apples-small-pay-day-court-patent-dispute-samsung","status":"publish","type":"post","link":"https:\/\/journals.law.unc.edu\/ncjolt\/blogs\/apples-small-pay-day-court-patent-dispute-samsung\/","title":{"rendered":"Apple\u2019s Small Pay Day In Court Over Patent Dispute with Samsung"},"content":{"rendered":"

A California federal judge, Lucy H. Koh, granted\u00a0Apple\u00a0almost $6.5 million in ongoing royalties from Samsung in the companies\u2019 dispute over patented designs on Feb. 15, 2018 after scolding Samsun in a hearing last month for continuing to sell the infringing phones. The Federal Circuit has not squarely addressed the standard for evaluating claims for ongoing royalties on newly accused products. However, the Federal Circuit has articulated a test<\/a> in the context of \u201cevaluating whether an injunction against continued infringement has been violated by a newly accused product.\u201d
\nAccordingly, Judge Koh denied royalties to Apple for phones containing\u00a0certain design-arounds, finding that while that two design changes in the messenger and browser applications in Samsung\u2019s new phones were \u201cnot colorably different\u201d from the phones already found to infringe the D\u2019647<\/a> patent, neither change in the new phones infringed Apple Inc.\u2019s patent under the doctrine of equivalents<\/a>. Under the doctrine, a product that does not literally infringe on the \u201cexpress terms\u201d of a patent claim may still be found to infringe on the claim if there is an \u201cequivalence between the elements\u201d of the product and the patented invention, according to the decision.
\nThe dispute between the two smartphone titans began in 2011. Apple filed suit<\/a> in the U.S. District Court for the Northern District of California against Samsung Electronics Co. In its initial 38-page complaint, Apple claimed unfair competition<\/a>, trademark infringements<\/a>, and patent infringements<\/a>; whereby, Apple alleged Samsung\u2019s smartphones and Galaxy Tab 10.1 \u201cslavishly\u201d copied the iPhone and iPad designs.
\nSamsung responded to Apple\u2019s design patent and trade dress infringement claims by filing cross-claims. Samsung sought revocation of the patent claims and further alleged that the iPhone and iPad infringed on Samsung\u2019s technology patents (including wireless data communication technology). Additionally, Samsung filed suit in South Korean, Japanese, and German courts.
\nOn December 2, 2011, the district court denied Apple\u2019s motion for preliminary injunction for a selected list of devices. The federal circuit affirmed the court\u2019s order in part, but remanded for further proceeding with respect to the D\u2019889 Patent<\/a>.
\nThe damages statute, 35 U.S.C. \u00a7 289 says, \u201cwhoever 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\u00a0article of manufacture<\/strong>\u00a0for the purpose of sale . . . .\u201d A jury initially found in 2012 that Samsung infringed Apple\u2019s patents and\u00a0awarded more than $1 billion in damages<\/strong>,<\/strong> but a damages retrial<\/a> and a Federal Circuit decision reduced the award to $548 million.
\nSamsung only appealed the $400 million part of the award related to design patents to the Supreme Court. In its\u00a0petition<\/a> to the Supreme Court, Samsung argued\u00a0that the huge design-based\u00a0award, which amounts to 100 percent of its profits for several types of phones, is a \u201cridiculous\u201d result that will lead to a \u201cflood of extortionate patent litigation.\u201d
\nThere are clearly aesthetic design features to the smartphone, making a particular model visually appealing. But no one would buy a smartphone simply based on its appearance; people want smartphones that perform certain functions, like making phone calls, playing music, or surfing the Internet. However,<\/p>\n

\u201cthe damages statute for design patents was\u00a0written to protect products like rugs, where the design was essentially the entire thing being sold,\u201d<\/p><\/blockquote>\n

explained Matt Levy, patent counsel for the Computer and Communications Industry Association.
\nFor the first time in a century, the United State Supreme Court has decided on how much design patents are worth. The 8-0 opinion<\/a> rebuked the US Court of Appeals for the Federal Circuit, which held that \u201carticle of manufacture\u201d for calculating damages was the entire smartphone. That mean even though Apple\u2019s patents covered only certain design elements, it was entitled to $399 million in lost profit damages. In an opinion authored by Justice Sonia Sotomayor, the Supreme Court rejected that approach, finding that the statutory term\u00a0\u201carticle of manufacture\u201d could mean either a whole product or just one component of a product. \u201cReading \u2018article of manufacture\u2019\u00a0[] to cover only an end product sold to a consumer gives too narrow a meaning to the phrase,\u201d writes Sotomayor. This decision did not keep the tech titans away from the courts.
\nThe fight over ongoing royalties comes as the dispute heads to a jury trial for the third time. It is unlikely to be the last.<\/p>\n","protected":false},"excerpt":{"rendered":"

A California federal judge, Lucy H. Koh, granted\u00a0Apple\u00a0almost $6.5 million in ongoing royalties from Samsung in the companies\u2019 dispute over patented designs on Feb. 15, 2018 after scolding Samsun in a hearing last month for continuing to sell the infringing phones. The Federal Circuit has not squarely addressed the standard for evaluating claims for ongoing …<\/a><\/p>\n","protected":false},"author":1,"featured_media":5521,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":[],"categories":[51],"tags":[],"_links":{"self":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/5520"}],"collection":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/comments?post=5520"}],"version-history":[{"count":1,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/5520\/revisions"}],"predecessor-version":[{"id":6971,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/5520\/revisions\/6971"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/media\/5521"}],"wp:attachment":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/media?parent=5520"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/categories?post=5520"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/tags?post=5520"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}