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.


  1. Supreme Court’s decision in Samsung v. Apple
    1. Article of manufacture
    2. Future course of this case on remand
  2. Implications for damages calculations
  3. Implications for valuation
  4. What the decision means for patent applicants
    1. 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, Chicago

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, Washington, D.C.

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, Washington, D.C.

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.


CLE On-Demand - Streaming Video

Includes recorded streaming video of full program plus PDF handouts.

On-demand is the only recorded format recognized for CLE credits in DE, IN, KS, LA, MS, NC, OH, OK, SC, TN, VA, WI.

AK, AZ, CA, CO, CT, DE, FL, GA, HI, IA, ID, IL, IN*, KS, KY, LA, ME, MN, MO, MT, NC, ND, NH**, NJ, NM, NV, NY, OH*, OK, OR, PA, SC, TN, TX, UT, VA, VT, WA, WI, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

*Only available for attorneys admitted for more than two years. For OH CLE credits, only programs recorded within the current calendar year are eligible - contact the CLE department for verification.

**NH attendees must self-determine if a program is eligible for credit and self-report their attendance.

CLE On-Demand Video $297.00

How does this work?

Recorded Event

Includes full event recording plus handouts.

Strafford is an approved provider and self-study CLE credit is available in most states.

AK, AZ, CA, CO, CT, FL, GA, HI, IA, ID, IL, KY, ME, MN, MO, MT, ND, NJ, NM, NY, OR, PA, TN, TX, UT, VT, WA, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

Strafford will process CLE credit for one person on each recording.

Additional copies of a recording can be purchased at a discount. Please call Strafford Customer Service toll-free at 1-800-926-7926 ext 10 or email to place your order.

Recorded Webinar Download $297.00

How does this work?

Recorded Audio Download (MP3) $297.00

How does this work?


Strafford webinars offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program).  Please note that our webinars do not feature videos of the presenters.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

or call 1-800-926-7926

CLE Credits

Many states grant CLE credits for on-demand streaming audio programs and recorded events. Our programs are pre-approved in many states. Refer to our state CLE map for state-specific information.

or call 1-800-926-7926

Customer Reviews

I liked the practical insights, particularly when tied to cases the presenters had worked on.

Michael Gray


Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

David H. Vance

Vance Intellectual Property

Strafford's on-line session was easy to attend and the topic was timely.

Jessica Lermond

Chartis Claims

Better than I expected. Well done on both subject matter and production quality.

Jeff Simpson

Gordon, Fournaris & Mammarella

I thought it was great to hear from some experts on this topic.

Debbi Cicerello

MSC Industrial Direct Co.

or call 1-800-926-7926

Patent Law Advisory Board

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Irah H. Donner



Ian N. Feinberg


Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick


Duane Morris

David Segal

Senior IP Counsel


Astrid R. Spain


Jones Day

Mark P. Wine



or call 1-800-926-7926

Our Guarantee

Strafford webinars are backed by our 100% Unconditional Money-Back Guarantee: if you are not satisfied with any of our products, simply let us know and get a full refund. For more information regarding complaints and refunds, please contact us at 1-800-926-7926 ext 10. Complaints regarding this program can be submitted via the course evaluation found in the “Thank you” e-mail at the end of the course.