## Facts

- Apple sued Samsung in the Northern District of California (2011), alleging infringement of iPhone/iPad utility patents, design patents, and related trade dress by Samsung’s Galaxy smartphones and tablets.
- A 2012 jury found infringement of multiple Apple design patents and certain other violations, awarding damages exceeding $1 billion, later reduced after post-trial proceedings and a partial new trial on damages.
- A discrete portion of the award—$399 million—represented design-patent damages under 35 U.S.C. § 289, calculated as Samsung’s “total profit” from sales of infringing smartphones.
- The Federal Circuit (2015) largely affirmed liability and affirmed awarding Samsung’s entire profits on the smartphones as the “article of manufacture” under § 289.
- The Supreme Court (2016) reversed the Federal Circuit’s categorical approach to § 289, holding that the relevant “article of manufacture” in a multicomponent product can be a component, and remanded for further proceedings.
- Following the Supreme Court’s remand, the Federal Circuit vacated its prior judgment as to the § 289 design-patent damages and returned the case to the district court for determination of the proper “article of manufacture” and recalculation of damages.

## Issues

1. After the Supreme Court’s interpretation of 35 U.S.C. § 289, what further proceedings were required regarding the “article of manufacture” and the measure of “total profit” for design-patent infringement involving multicomponent smartphones?
2. Whether the prior affirmance of “entire smartphone” profits as § 289 damages could stand after the Supreme Court’s decision.

## Decision

- The Federal Circuit vacated the portion of its earlier judgment concerning § 289 design-patent damages.
- The Federal Circuit remanded to the district court to determine the relevant “article of manufacture” for each asserted design patent under § 289 and to recalculate any “total profit” award consistent with that determination.
- Other aspects of the litigation were not resolved by the Supreme Court’s § 289 ruling and proceeded separately in the district court.

## Legal Principles

- Under 35 U.S.C. § 289, the “article of manufacture” for calculating “total profit” in a multicomponent product need not be the end product sold to consumers; it may be a component.
- § 289 does not impose a requirement that the “article of manufacture” be sold separately to consumers.
- When an appellate court’s damages analysis rests on an incorrect legal interpretation of § 289, the proper remedy is vacatur and remand for factfinding and recalculation under the corrected standard.

## Conclusion

The Federal Circuit, following the Supreme Court’s construction of § 289, set aside the prior “entire smartphone profits” approach and sent the case back to the district court to identify the relevant “article of manufacture” and to recompute design-patent “total profit” damages on that basis.


Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034 (Fed. Cir. 2016)