Design Patents Up, But Samsung Case Ruling Could Bring Down

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By Tony Dutra

April 19— The U.S. Supreme Court's upcoming decision on the smartphone patent wars may blunt the recent spike in interest in design patents, experts in the field said.

Under current law (35 U.S.C. §289), a jury can award all of Samsung's profits on an entire smartphone to Apple if Samsung is found to infringe the patented design of any piece of an iPhone. District and appeals court decisions in Samsung Elecs. Co. v. Apple Inc. have confirmed the relatively high value of design patents.

But if the high court reverses the law, design patent value will be “significantly weakened,” one stakeholder said at the Patent and Trademark Office's 10th annual Design Day conference held April 19 in Alexandria, Va.

Even Patent Titles May Be Important

If the high court modifies the law to tie damages to an infringing component—instead of an entire product—a design patent's title will become more important.

Section 289 compensates the patent owner based on the infringing “article of manufacture.” And the PTO's rule states, “The title of the design must designate the particular article.”

In Apple's case, two of the infringed patents are titled “electronic device” and another identifies a “display screen” design. Samsung could object to paying total profits on the smartphone if infringing the display screen design but would arguably have a tougher time if found to infringe the patent on the entire device.

If the Supreme Court changes the law, the case is likely to go back to the district court. There, Samsung could argue the actual patent drawings didn't claim the entire “electronic device,” Elizabeth D. Ferrill of Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Washington, told Bloomberg BNA. More broadly, those prosecuting future design patent applications would have to pay more attention to the title, she said.

Potential Result: ‘Significantly Weakened' Patents

James J. Aquilina of Design IP PC, Allentown, Pa., contended that Samsung's only chance of success is if the court defines an “article of manufacture” to allow apportionment of the total profits. If the high court makes that change, he said, unless the ruling is very narrow, “design patents in this country are going to be significantly weakened.”

Aquilina presented details underlying the court's grant of review in the case (Samsung Elecs. Co. v. Apple Inc., No. 15-777 (U.S., review granted March 21, 2016) (55 PTD, 3/22/16) but did not predict how it will rule.

Growth Evident

The conference highlighted growth in the design patent community.

There were over 400 people in attendance, about 25 percent more than a year ago, according to one organizer. About 60 more people watched from the PTO's four satellite offices.

Design patent application filings are up almost 50 percent compared to a decade ago. The PTO has added 80 new design examiners over the last three years to address the increase, bringing the total to 166 examiners.

Another 30 design examiners are slated to come on board before Oct. 1. And the PTO is for the first time putting design examiners in a satellite office; Silicon Valley is slated to get 15 design examiners in a move that could be viewed as recognition of the increased importance of design patent values in wake of the Samsung battle.

At the Federal Circuit, the issue has also become more prominent. The appellate court issued six decisions on design patent case appeals this year compared with two a year ago, said William Seymour of Lando & Anastasi LLP, Cambridge, Mass. There were also twice as many petitions challenging design patents at the Patent Trial and Appeal Board this year compared to last year, he said.

To contact the reporter on this story: Tony Dutra in Washington at

To contact the editor responsible for this story: Mike Wilczek in Washington at