Monday, January 2, 2017

Experts to discuss design patent damages (Apple v. Samsung remand) on Wednesday: media briefing conference call

Happy New Year!

Tomorrow the Supreme Court wil formally issue its mandate to the United States Court of Appeals for the Federal Circuit based on last month's landmark decision in Apple v. Samsung. A day later, a panel of experts will discuss the Supreme Court opinion and the next steps in this process, and I'd like to share the invitation below with you here. Below the invitation, you'll also find my high-level take on what may or may not happen next.


Samsung v. Apple Post-Supreme Court Decision Expert Discussion

Legal Experts to Discuss Implications, Next Steps as Case Heads Back to Federal Circuit Court

WASHINGTON, DC – On Wednesday, January 4 2017 at 11:00am ET, a panel of distinguished intellectual-property and Supreme Court experts will hold a media briefing conference call on the U.S. Supreme Court's December 6 landmark unanimous decision in the Samsung v. Apple design patent case.

The case has been remanded to the Federal Circuit, which will officially receive the Supreme Court's decision on January 3. Once received, it is anticipated that the Federal Circuit will address the remaining outstanding issues and implications for innovation, consumers, and businesses of all sizes within a wide array of industries.

The panelist participants will discuss the Supreme Court's decision and its broader implications, as well as provide insight into the Court's anticipated next steps; the Federal Circuit's process; the impact on startups, small businesses, consumers, and innovation; and, finally, how the Federal Circuit will formulate a plan and what that plan should entail.


  • Carl Cecere (moderator), served as counsel for the National Grange, the Hispanic Leadership Fund, and the National Black Chamber of Commerce, in filing an amicus brief on their behalf in the case before the Supreme Court. Mr. Cecere operates his own law firm, where he focuses on Supreme Court and Appellate advocacy. He began his career in the Supreme Court and Appellate practice at Akin Gump Strauss Hauer & Feld LLP.

  • Sarah Burstein (panelist), American Bar Association (ABA) Intellectual Property Law Design Committee Chair and Associate Professor of Law, The University of Oklahoma

  • Derek F. Dahlgren (panelist), Partner, Rothwell, Figg, Ernst & Manbeck, P.C

  • Evan Engstrom (panelist), Executive Director, Engine Advocacy

  • Joshua D. Wolson (panelist), Partner, Dilworth Paxson LLC

WHAT: Media Briefing Conference Call

WHEN: Wednesday, January 4, 2017 | 11:00am ET

Participant Dial In Number: 888-632-3384

Conference ID: REMAND

RSVP to Carl Cecere:


You'll learn a lot more from those experts than from me, but my perspective may be complementary. So here's how I view the current situation:

The first question is going to be whether the remand proceedings will become (primarily) a rule-setting effort or a record-digging exercise. Apple already tried to turn the Supreme Court hearing into the latter, which was legitimate: it's this old story of "if the facts are not on your side, argue the law; if the law is not on your side, argue policy", and here, if neither policy nor the law nor the facts are on your side, you (Apple) might still prevail on a procedural basis by harping on the record. There's no reason to assume Apple is not going to try this again before the Federal Circuit. The remainder of this post is based on the assumption that, as I hope, the Federal Circuit is not going to waste a first-rate rule-making opportunity.

Is the Federal Circuit likely to come up with a good rule here? It will be hard, not because it's the Federal Circuit (I actually think this panel, even though the Supreme Court just slapped it for the position it had taken the first time around, is not as unbalanced as some other panels might be and really has the potential to do a great job) but because only lawmakers could really fix the problem. The only fair solution would be apportionment, but as the Supreme Court already noted at the hearing, apportionment per se is not allowed by the statute. So instead of a smooth curve in a seamless spectrum, the current situation (absent a legislative amendment) is a step function. There's only a limited number of choices here. If a patent covers the outer shape of a smartphone, there's little more choice than either deeming the entire end product or the casing the relevant article of manufacture. If it's the casing, Apple's designs get undervalued without a doubt--but that's the far lesser evil than overcompensation of an absolutely devastating kind.

I wish the Supreme Court had made it explicitly clear that undercompensation is a lesser concern here than nuclear overcompensation. What will help Samsung here psychologically is that the Supreme Court opinion does point downwards for what should be the ultimate outcome.

Some advocates of overcompensation tried to troll me on Twitter after I noted that no design patent covers the inner workings of a multifunctional device such as a smartphone. They tried to interpret this as me arguing in favor of apportionment. Obviously, that's not what I meant. What I did mean is that the scope of those design patents should not make it too hard for Samsung and other defendants in the future to persuade courts and, to the extent necessary, juries of which approach (to the relevant article of manufacture) makes more sense and is better for innovation and competition.

The three design patents in the case raise different article-of-manufacture issues. Two of them are about the casing but what is the AoM for a screen layout patent? Should there by any AoM for that? As an app developer I'm obviously going to be even more interested in that question than in the physical stuff, though both issues are of great interest to me as a smartphone patent litigation watcher.

We'll definitely see some very interesting amicus briefs from the usual suspects if the Federal Circuit invites further briefing, which it presumably will. After all, the Supreme Court said it just hadn't received enough input from the parties on what the right rule should be, which is true but one can't blame either party: Apple's path to victory was affirmance and Samsung's only chance was reversal/vacatur. If Apple or Samsung had placed more emphasis on rule-making before the Supreme Court, they might have lost the wider battle simply as a result of poor prioritization. Now, there will be enough space and time for Apple, Samsung, the DoJ, designers, the tech industry, low-tech and non-tech companies, advocacy groups and whoever else to come up with suggestions.

If you're professionally interested in this case as a journalist, I recommend that you join the conference call on Wednesday.

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