Design Patent Damages: Impact of Samsung v. Apple on Patent Prosecution, Litigation and Valuation
Recording of a 90-minute CLE webinar with Q&A
Conducted on Thursday, March 23, 2017
Recorded event now available
This CLE webinar will examine the U.S. Supreme Court’s Samsung v. Apple decision and its impact on design patent damages. The panel will also discuss the impact on patent prosecution and strategies that can be employed during design patent prosecution to increase chances that, if infringed, the relevant article of manufacture under 35 U.S.C. 289 will be deemed the entire end product, as opposed to some portion thereof.
On Dec. 6, 2016, the Supreme Court rejected Apple’s nearly $400 million damages awarded against Samsung stemming from smartphone design patents. The Court unanimously held the damages award under 289 need not always be calculated using the total profits from the commercialized end product to which the design was applied. Instead, the Court held that the relevant article of manufacture for determining total profits could be, in some circumstances, a component of the commercialized end product. The Court addressed the scope of the term “article of manufacture” and concluded “article of manufacture” is broad enough to encompass both the end product sold to a consumer and its components.
The impact of the Court’s decision is unclear. The Court left it to the Federal Circuit to determine the test and apply the test in this case. Depending on the test that is adopted, the Court’s decision could result in a lower value for certain kinds of design patents, particularly those directed to only part or parts of an end product as opposed to those directed to an entire end product. In view of this decision and the state of uncertainty in the law, prosecution counsel to design patent applicants must develop best practices to increase the likelihood that the relevant article of manufacture would be considered the entire end product as opposed to just a portion thereof. How “article of manufacture” is interpreted will be a critical factor in determining valuation of a design patent.
Listen as our authoritative panel of patent attorneys examines the Supreme Court’s decision in Samsung v. Apple and the implications for damages calculations and assigning valuation to a design patent. The panel will also discuss what the decision means for patent applicants and the impact on how they draft applications to protect a commercial product.
- Supreme Court’s decision in Samsung v. Apple
- Article of manufacture
- Future course of this case on remand
- Implications for damages calculations
- Implications for valuation
- What the decision means for patent applicants
- Impact on how applications are drafted to maximize recovery of profits
The panel will address these and other key issues:
- What does the Supreme Court’s decision mean for calculation of damages in design patent cases?
- What is the anticipated impact of the decision for patent prosecution?
- What changes will counsel need to make to patent applications in light of the decision?
- What best practices should counsel employ to protect design inventions?
Christopher V. Carani, Shareholder
McAndrews Held & Malloy,
Mr. Carani is nationally recognized in the field of design law, regarding the protection and enforcement of product design through the use of design patents, trade dress and copyrights. A registered attorney before the USPTO, Mr. Carani’s secures the full panoply of Design IP rights for some of the world’s most design-centric companies and designers, securing over 2000 design rights, both in the U.S and in over 70 countries around the world. Mr. Carani has successfully litigated numerous disputes regarding design rights and has also served as a consultant and expert witness in numerous design law cases. He represented the AIPLA in the landmark design patent case Egyptian Goddess v. Swisa, where the positions set forth in his amicus briefs were ultimately adopted by the Federal Circuit thereby reshaping the law on design patents.
Elizabeth D. Ferrill, Partner
Finnegan Henderson Farabow Garrett & Dunner,
Ms. Ferrill focuses her practice on all aspects of design patents, including prosecution, counseling, and litigation. She also has extensive experience in utility patent litigation in the areas of software- and hardware-related technologies. She counsels clients who hold design patents as well as those accused of infringement. She has experience with consumer and industrial products, graphical user interfaces and icons. She has prosecuted families of design patents before the USPTO, directed prosecution in foreign countries, and argued appeals before the PTAB.
Robert S. Katz, Esq.
Banner & Witcoff,
In his practice, Mr. Katz has helped procure over 6,000 design patents in the U.S. and over 18,000 design patents/registrations outside the U.S., and has helped to successfully enforce over 100 design patents. Mr. Katz has also provided advice and prepared opinions regarding the patentability of inventions, patent infringement, patent validity, and trade secret protection to help clients properly assess the advantages and disadvantages of certain intellectual property and business decisions. He is a frequent speaker on industrial design-related topics and is a professor at George Washington University Law School teaching Design Law and at Georgetown University Law School teaching IP Pretrial Litigation Skills. Mr. Katz currently serves as Treasurer of FICPI's U.S. Section and as Vice Chair of INTA's Design Rights Committee.
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CLE Credits By State
I liked the practical insights, particularly when tied to cases the presenters had worked on.
Strafford provided an enthusiastic presentation that focused on patent practice, not theory.
David H. Vance
Vance Intellectual Property
I appreciated that the program was directly on point and did not deviate from the subject matter.
McDonald Carano Wilson
The seminar was very informative and the speakers provided great handouts that will be a great reference tool in the future.
Garvey Schubert Barer
Strafford's seminar was excellent and I found the Q&A session especially helpful.
Fulbright & Jaworski
Patent Law Advisory Board
Fulbright & Jaworski
Winston & Strawn
Stroock & Stroock & Lavan
Feinberg Day Alberti & Thompson
Senior IP Counsel
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