## Facts

- Apple held design patents covering portions of the iPhone’s appearance, including aspects of the front face and graphical display.
- Apple sued Samsung in 2011 alleging that certain Samsung smartphones infringed Apple’s design patents.
- A jury found infringement and awarded Apple $399 million in design-patent damages under 35 U.S.C. § 289, calculated as Samsung’s total profit on the infringing phones.
- The Federal Circuit affirmed, reasoning that the relevant “article of manufacture” for § 289 was the entire smartphone sold to consumers, not particular components that were not sold separately.
- The Supreme Court granted certiorari limited to the § 289 damages question concerning the meaning of “article of manufacture.”

## Issues

1. Under 35 U.S.C. § 289, when a design patent is applied to a multicomponent product, must the “article of manufacture” for total-profit disgorgement always be the end product sold to consumers, or can it be a component of that product?

## Decision

- The Supreme Court unanimously reversed the Federal Circuit and remanded.
- The Court held that, for a multicomponent product, the relevant “article of manufacture” under § 289 may be a component of the product and need not be the entire consumer product.
- The Court declined to decide which specific article of manufacture applied to the asserted patents (entire phone versus components) and did not set a test for identifying the relevant article; those matters were left for proceedings on remand.

## Legal Principles

- The term “article of manufacture” in § 289 includes both a product sold to a consumer and a component of that product, whether or not the component is sold separately.
- Section 289’s total-profit remedy applies to the profit from the relevant “article of manufacture” to which the patented design (or a colorable imitation) is applied; identifying that article is a required step in calculating damages for multicomponent products.
- Interpreting “article of manufacture” in § 289 consistently with the same term in 35 U.S.C. § 171(a) supports recognizing components as qualifying articles of manufacture for design-patent purposes.

## Conclusion

The Court held that § 289 does not require design-patent total-profit awards to be based on the entire end product in multicomponent-product cases; the relevant article of manufacture can be a component, and the case was remanded to determine the proper article and resulting damages.


Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429 (2016)