Thanks to a Comparative Patent Remedies blog post by Professor Thomas Cotter, I have just become aware of an amicus curiae brief (full text available here) filed with the Federal Circui by 27 law professors in support of Samsung with respect to the design patents-related bulk of Apple's $929 million damages award in the first California Apple v. Samsung litigation. On Thursday I had shared some observations on Samsung's opening appellate brief in that case and its post-trial JMOL motion in the second California case.
14 months ago, three of the 27 signatories of that amicus brief -- Professors Cotter, Ghosh and Strandburg -- submitted, jointly with a fourth colleague of theirs, an amicus brief with the same appeals court but in support of Apple, with respect to FRAND, in the "Posner" Apple v. Motorola case. I don't have a patent on applying consistent standards to Apple's offensive claims against others as I did and do to other companies' offensive claims against Apple.
Several other amicus briefs that apparently (based on the timing of their filings and, in part, positions they have previously taken on related issues) support Samsung's appeal were filed on Friday, but I haven't been able to access them. Amici curiae include the Computer & Communications Industry Association (with which I strongly disagree on Oracle v. Google), the Hispanic Leadership Fund, The National Grange of the Order of Patrons of Husbandry, and The National Black Chamber of Commerce. I believe those organizations are concerned about competition in the U.S. smartphone market and the effect Apple's litigation campaign against Android could have on consumer choice and price levels. I understand where they are coming from, but Apple's patent assertions against Android devices have been too unsuccessful to have competitive impact (though Apple's objectives are a different thing).
The group of 27 law professors was led by Stanford's Mark Lemley (with whom I disagree on Oracle v. Google and on "baseball arbitration"). Apple requested his disclosure of a relationship (through a law firm) with Google. I'm in favor of transparency -- but within reason. Design patents are an Apple v. Samsung issue that is, at best, indirectly an Android issue. Again, three of the signatories supported Apple last year in the FRAND context, which shows to me that this here is about issues, not affiliation.
The second signatory on the list is Sarah Burstein (University of Oklahoma). As her web profile says, "Professor Burstein's scholarship focuses on design law, with a particular focus on design patents". I have been in contact with her via Twitter on a few occasions and noted that she studied Art & Design before she became a law professor. She's definitely a person whose opinion on reasonableness in design patent remedies should bear considerable weight with the Federal Circuit. There are various other well-known signatories. I can't discuss them all here, but the list is impressive, though impressive lists don't always guarantee spot-on amicus briefs, as Oracle v. Google showed.
The law professor's amicus brief is all about how to interpret and apply 35 U.S.C. §289, which provides an "additional remedy" for design patent infringement: a disgorgement of infringer's profits. At the 2012 trial and the 2013 limited damages retrial, Judge Koh allowed Apple to seek a disgorgement of the totality of infringer's profits -- as opposed to an apportionment that would take into account that any profits Samsung generated in the U.S. market with certain smartphones years ago was attributable to a number of technical characteristics and not just some patented designs.
The amicus brief argues that the notion that an infringer's entire profit (on an infringing article) should be recoverable goes back to the 19th century, when only knowing infringement resulted in liability, while "even independent designers are [under today's strict liability regime] on the hook for patent infringement in modern design patent law". Moreover, U.S. lawmakers back in 1887 (when Congress decided to provide the disgorgement remedy for design patent infringement) had products such as carpets in mind, where "it is the design that sells the article". The brief shows that Apple itself holds various design patents related to the iPhone -- casing-related ones, icon-related ones, screen layout-related ones. It's obviously impossible that each of a plurality of design patents could on its own be the sole driver for demand.
A 19th-century approach may also be the wrong one to 21th-century technologies, the law professors argue:
"The world is more complex than it was in 1887, and so are products. The likelihood that a product has more than one patented design is much greater than it was in 1887. Virtual designs on things like icons are particularly likely to overlap, and there are more and more of them. [...] And if there is more than one patented design in a product, the syllogism that the design patent drives the sale of the product falls apart.
Nor does all the value of a product come from design patents. People don't buy iPhones simply because they look cool; they buy them because they function. Those functions are both of intrinsic value and are subject to many utility patents. [...]"
This is what they'd like the Federal Circuit to do:
"This Court should require proof of some connection between the patented design and the defendant's profits, and order the district court to remit the award of profits to the extent it exceeds those profits attributable to the patented designs."
I'm much more focused on software patents than design patents, so I don't have a firm opinion. Until I read this amicus brief, I was under the assumption that there was nothing Samsung would be able to do about Apple's pursuit of a disgorgement of Samsung's entire profit with any products found to infringe valid Apple design patents. I'm no longer sure. I definitely agree with the law professors that it doesn't make sense to assume that a single design patent represents the whole commercial value of a complex technology product. Maybe Congress should change the statute. Maybe the professors are right and the Federal Circuit would be in a position to give the statute an interpretation reflective of modern-day realities. I can't offer a prediction as to what will happen, except that I guess Chief Judge Prost (who will likely be on the bench, not just because of the high profile of this case but because of her involvement with previous Apple-Samsung matters) will probably be fairly receptive to the law professors' argument (which doesn't necessarily mean she'll adopt it -- it just means that she'll likely be receptive to the idea of greater reasonableness in design patent remedies, and then it depends on how much wiggle room she'll conclude the courts have based on what Congress did back in 1887).
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