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

(Slip Opinion) OCTOBER TERM, 2016 1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
SAMSUNG ELECTRONICS CO., LTD., ET AL. v.
APPLE INC.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
No. 15–777. Argued October 11, 2016—Decided December 6, 2016
Section 289 of the Patent Act makes it unlawful to manufacture or sell
an “article of manufacture” to which a patented design or a colorable
imitation thereof has been applied and makes an infringer liable to
the patent holder “to the extent of his total profit.” 35 U. S. C. §289.
As relevant here, a jury found that various smartphones manufac-
tured by petitioners (collectively, Samsung) infringed design patents
owned by respondent Apple Inc. that covered a rectangular front face
with rounded edges and a grid of colorful icons on a black screen.
Apple was awarded $399 million in damages—Samsung’s entire profit
from the sale of its infringing smartphones. The Federal Circuit af-
firmed the damages award, rejecting Samsung’s argument that dam-
ages should be limited because the relevant articles of manufacture
were the front face or screen rather than the entire smartphone. The
court reasoned that such a limit was not required because the com-
ponents of Samsung’s smartphones were not sold separately to ordi-
nary consumers and thus were not distinct articles of manufacture.
Held: In the case of a multicomponent product, the relevant “article of
manufacture” for arriving at a §289 damages award need not be the
end product sold to the consumer but may be only a component of
that product. Pp. 4–9.
(a) The statutory text resolves the issue here. An “article of manu-
facture,” which is simply a thing made by hand or machine, encom-
passes both a product sold to a consumer and a component of that
product. This reading is consistent with §171(a) of the Patent Act,
which makes certain “design[s] for an article of manufacture” eligible
for design patent protection, and which has been understood by the
Patent Office and the courts to permit a design patent that extends to
2 SAMSUNG ELECTRONICS CO. v. APPLE INC.
Syllabus
only a component of a multicomponent product, see, e.g., Ex parte
Adams, 84 Off. Gaz. Pat. Office 311; Application of Zahn, 617 F. 2d
261, 268 (CCPA). This reading is also consistent with the Court’s
reading of the term “manufacture” in §101, which makes “any new
and useful . . . manufacture” eligible for utility patent protection. See
Diamond v. Chakrabarty, 447 U. S. 303, 308. Pp. 4–7.
(b) Because the term “article of manufacture” is broad enough to
embrace both a product sold to a consumer and a component of that
product, whether sold separately or not, the Federal Circuit’s nar-
rower reading cannot be squared with §289’s text. Absent adequate
briefing by the parties, this Court declines to resolve whether the rel-
evant article of manufacture for each design patent at issue here is
the smartphone or a particular smartphone component. Doing so is
not necessary to resolve the question presented, and the Federal Cir-
cuit may address any remaining issues on remand. Pp. 7–8.
786 F. 3d 983, reversed and remanded.
SOTOMAYOR, J., delivered the opinion for a unanimous Court.
Cite as: 580 U. S. ____ (2016) 1
Opinion of the Court
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SUPREME COURT OF THE UNITED STATES
_________________
No. 15–777
_________________
SAMSUNG ELECTRONICS CO., LTD., ET AL.,
PETITIONERS v. APPLE INC.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[December 6, 2016]
JUSTICE SOTOMAYOR delivered the opinion of the Court.
Section 289 of the Patent Act provides a damages rem-
edy specific to design patent infringement. A person who
manufactures or sells “any article of manufacture to which
[a patented] design or colorable imitation has been applied
shall be liable to the owner to the extent of his total
profit.” 35 U. S. C. §289. In the case of a design for a single-
component product, such as a dinner plate, the product is
the “article of manufacture” to which the design has been
applied. In the case of a design for a multicomponent
product, such as a kitchen oven, identifying the “article of
manufacture” to which the design has been applied is a
more difficult task.
This case involves the infringement of designs for
smartphones. The United States Court of Appeals for the
Federal Circuit identified the entire smartphone as the
only permissible “article of manufacture” for the purpose
of calculating §289 damages because consumers could not
separately purchase components of the smartphones. The
question before us is whether that reading is consistent
with §289. We hold that it is not.
2 SAMSUNG ELECTRONICS CO. v. APPLE INC.
Opinion of the Court
I
A
The federal patent laws have long permitted those who
invent designs for manufactured articles to patent their
designs. See Patent Act of 1842, §3, 5 Stat. 543–544.
Patent protection is available for a “new, original and
ornamental design for an article of manufacture.” 35
U. S. C. §171(a). A patentable design “gives a peculiar or
distinctive appearance to the manufacture, or article to
which it may be applied, or to which it gives form.”
Gorham Co. v. White, 14 Wall. 511, 525 (1872). This Court
has explained that a design patent is infringed “if, in the
eye of an ordinary observer, giving such attention as a
purchaser usually gives, two designs are substantially the
same.” Id., at 528.
In 1885, this Court limited the damages available for
design patent infringement. The statute in effect at the
time allowed a holder of a design patent to recover “the
actual damages sustained” from infringement. Rev. Stat.
§4919. In Dobson v. Hartford Carpet Co., 114 U. S. 439(1885), the lower courts had awarded the holders of design
patents on carpets damages in the amount of “the entire
profit to the [patent holders], per yard, in the manufacture
and sale of carpets of the patented designs, and not merely
the value which the designs contributed to the carpets.”
Id., at 443. This Court reversed the damages award and
construed the statute to require proof that the profits were
“due to” the design rather than other aspects of the car-
pets. Id., at 444; see also Dobson v. Dornan, 118 U. S. 10,
17 (1886) (“The plaintiff must show what profits or dam-
ages are attributable to the use of the infringing design”).
In 1887, in response to the Dobson cases, Congress
enacted a specific damages remedy for design patent
infringement. See S. Rep. No. 206, 49th Cong., 1st Sess.,
1–2 (1886); H. R. Rep. No. 1966, 49th Cong., 1st Sess., 1–2
(1886). The new provision made it unlawful to manufac-
Cite as: 580 U. S. ____ (2016) 3
Opinion of the Court
ture or sell an article of manufacture to which a patented
design or a colorable imitation thereof had been applied.
An act to amend the law relating to patents, trademarks,
and copyright, §1, 24 Stat. 387. It went on to make a
design patent infringer “liable in the amount of ” $250 or
“the total profit made by him from the manufacture or sale
. . . of the article or articles to which the design, or color-
able imitation thereof, has been applied.” Ibid.The Patent Act of 1952 codified this provision in §289.
66 Stat. 813. That codified language now reads, in rele-
vant part:
“Whoever during the term of a patent for a design,
without license of the owner, (1) applies the patented
design, or any colorable imitation thereof, to any arti-
cle of manufacture for the purpose of sale, or (2) sells
or exposes for sale any article of manufacture to which
such design or colorable imitation has been applied
shall be liable to the owner to the extent of his total
profit, but not less than $250 . . . .” 35 U. S. C. §289.
B
Apple Inc. released its first-generation iPhone in 2007.
The iPhone is a smartphone, a “cell phone with a broad
range of other functions based on advanced computing
capability, large storage capacity, and Internet connectiv-
ity.” Riley v. California, 573 U. S. ___, ___ (2014) (slip op.,
at 2). Apple secured many design patents in connection
with the release. Among those patents were the D618,677
patent, covering a black rectangular front face with
rounded corners, the D593,087 patent, covering a rectan-
gular front face with rounded corners and a raised rim,
and the D604,305 patent, covering a grid of 16 colorful
icons on a black screen. App. 530–578.
Samsung Electronics Co., Samsung Electronics America,
Inc., and Samsung Telecommunications America, LLC
(Samsung), also manufacture smartphones. After Apple
4 SAMSUNG ELECTRONICS CO. v. APPLE INC.
Opinion of the Court
released its iPhone, Samsung released a series of
smartphones that resembled the iPhone. Id., at 357–358.
Apple sued Samsung in 2011, alleging, as relevant here,
that various Samsung smartphones infringed Apple’s
D593,087, D618,677, and D604,305 design patents. A jury
found that several Samsung smartphones did infringe
those patents. See id., at 273–276. All told, Apple was
awarded $399 million in damages for Samsung’s design
patent infringement, the entire profit Samsung made from
its sales of the infringing smartphones. See id., at 277–
280, 348–350.
The Federal Circuit affirmed the design patent in-
fringement damages award.1 In doing so, it rejected Sam-
sung’s argument “that the profits awarded should have
been limited to the infringing ‘article of manufacture’ ”—
for example, the screen or case of the smartphone—“not
the entire infringing product”—the smartphone. 786 F. 3d
983, 1002 (2015). It reasoned that “limit[ing] the dam-
ages” award was not required because the “innards of
Samsung’s smartphones were not sold separately from
their shells as distinct articles of manufacture to ordinary
purchasers.” Ibid.We granted certiorari, 577 U. S. ___ (2016), and now
reverse and remand.
II
Section 289 allows a patent holder to recover the total
profit an infringer makes from the infringement. It does
so by first prohibiting the unlicensed “appli[cation]” of a
——————
1 Samsung raised a host of challenges on appeal related to other
claims in the litigation between Apple and Samsung. The Federal
Circuit affirmed in part—with respect to the design patent infringe-
ment finding, the validity of two utility patent claims, and the design
and utility patent infringement damages awards—and reversed and
remanded in part—with respect to trade dress dilution. Only the
design patent infringement award is at issue here.
Cite as: 580 U. S. ____ (2016) 5
Opinion of the Court
“patented design, or any colorable imitation thereof, to any
article of manufacture for the purpose of sale” or the unli-
censed sale or exposure to sale of “any article of manufac-
ture to which [a patented] design or colorable imitation
has been applied.” 35 U. S. C. §289. It then makes a
person who violates that prohibition “liable to the owner to
the extent of his total profit, but not less than $250.” Ibid.“Total,” of course, means all. See American Heritage
Dictionary 1836 (5th ed. 2011) (“[t]he whole amount of
something; the entirety”). The “total profit” for which
§289 makes an infringer liable is thus all of the profit
made from the prohibited conduct, that is, from the manu-
facture or sale of the “article of manufacture to which [the
patented] design or colorable imitation has been applied.”
Arriving at a damages award under §289 thus involves
two steps. First, identify the “article of manufacture” to
which the infringed design has been applied. Second,
calculate the infringer’s total profit made on that article of
manufacture.
This case requires us to address a threshold matter: the
scope of the term “article of manufacture.” The only ques-
tion we resolve today is whether, in the case of a multi-
component product, the relevant “article of manufacture”
must always be the end product sold to the consumer or
whether it can also be a component of that product. Under
the former interpretation, a patent holder will always be
entitled to the infringer’s total profit from the end product.
Under the latter interpretation, a patent holder will some-
times be entitled to the infringer’s total profit from a
component of the end product.2
——————
2 In its petition for certiorari and in its briefing, Samsung challenged
the decision below on a second ground. It argued that 35 U. S. C. §289contains a causation requirement, which limits a §289 damages award
to the total profit the infringer made because of the infringement.
Samsung abandoned this theory at argument, and so we do not address
it. See Tr. of Oral Arg. 6.
6 SAMSUNG ELECTRONICS CO. v. APPLE INC.
Opinion of the Court
A
The text resolves this case. The term “article of manu-
facture,” as used in §289, encompasses both a product sold
to a consumer and a component of that product.
“Article of manufacture” has a broad meaning. An
“article” is just “a particular thing.” J. Stormonth, A
Dictionary of the English Language 53 (1885) (Stormonth);
see also American Heritage Dictionary, at 101 (“[a]n indi-
vidual thing or element of a class; a particular object or
item”). And “manufacture” means “the conversion of raw
materials by the hand, or by machinery, into articles
suitable for the use of man” and “the articles so made.”
Stormonth 589; see also American Heritage Dictionary, at
1070 (“[t]he act, craft, or process of manufacturing prod-
ucts, especially on a large scale” or “[a] product that is
manufactured”). An article of manufacture, then, is sim-
ply a thing made by hand or machine.
So understood, the term “article of manufacture” is
broad enough to encompass both a product sold to a con-
sumer as well as a component of that product. A compo-
nent of a product, no less than the product itself, is a thing
made by hand or machine. That a component may be
integrated into a larger product, in other words, does not
put it outside the category of articles of manufacture.
This reading of article of manufacture in §289 is con-
sistent with 35 U. S. C. §171(a), which makes “new, origi-
nal and ornamental design[s] for an article of manufac-
ture” eligible for design patent protection.3 The Patent
——————
3 As
originally enacted, the provision protected “any new and original
design for a manufacture.” §3, 5 Stat. 544. The provision listed exam-
ples, including a design “worked into or worked on, or printed or
painted or cast or otherwise fixed on, any article of manufacture” and a
“shape or configuration of any article of manufacture.” Ibid. A stream-
lined version enacted in 1902 protected “any new, original, and orna-
mental design for an article of manufacture.” Ch. 783, 32 Stat. 193.
The Patent Act of 1952 retained that language. See §171, 66 Stat. 813.
Cite as: 580 U. S. ____ (2016) 7
Opinion of the Court
Office and the courts have understood §171 to permit a
design patent for a design extending to only a component
of a multicomponent product. See, e.g., Ex parte Adams,
84 Off. Gaz. Pat. Office 311 (1898) (“The several articles of
manufacture of peculiar shape which when combined
produce a machine or structure having movable parts may
each separately be patented as a design . . . ”); Application
of Zahn, 617 F. 2d 261, 268 (CCPA 1980) (“Section 171
authorizes patents on ornamental designs for articles of
manufacture. While the design must be embodied in some
articles, the statute is not limited to designs for complete
articles, or ‘discrete’ articles, and certainly not to articles
separately sold . . . ”).
This reading is also consistent with 35 U. S. C. §101,
which makes “any new and useful . . . manufacture . . . or
any new and useful improvement thereof ” eligible for
utility patent protection. Cf. 8 D. Chisum, Patents
§23.03[2], pp. 23–12 to 23–13 (2014) (noting that “article of
manufacture” in §171 includes “what would be considered
a ‘manufacture’ within the meaning of Section 101”).
“[T]his Court has read the term ‘manufacture’ in §101 . . .
to mean ‘the production of articles for use from raw or
prepared materials by giving to these materials new
forms, qualities, properties, or combinations, whether by
hand-labor or by machinery.’ ” Diamond v. Chakrabarty,
447 U. S. 303, 308 (1980) (quoting American Fruit Grow-
ers, Inc. v. Brogdex Co., 283 U. S. 1, 11 (1931)). The broad
term includes “the parts of a machine considered sepa-
rately from the machine itself.” 1 W. Robinson, The Law
of Patents for Useful Inventions §183, p. 270 (1890).
B
The Federal Circuit’s narrower reading of “article of
manufacture” cannot be squared with the text of §289.
The Federal Circuit found that components of the infring-
ing smartphones could not be the relevant article of manu-
8 SAMSUNG ELECTRONICS CO. v. APPLE INC.
Opinion of the Court
facture because consumers could not purchase those com-
ponents separately from the smartphones. See 786 F. 3d,
at 1002 (declining to limit a §289 award to a component of
the smartphone because “[t]he innards of Samsung’s
smartphones were not sold separately from their shells as
distinct articles of manufacture to ordinary purchasers”);
see also Nordock, Inc. v. Systems Inc., 803 F. 3d 1344,
1355 (CA Fed. 2015) (declining to limit a §289 award to a
design for a “ ‘lip and hinge plate’ ” because it was “welded
together” with a leveler and “there was no evidence” it was
sold “separate[ly] from the leveler as a complete unit”).
But, for the reasons given above, the term “article of man-
ufacture” is broad enough to embrace both a product sold
to a consumer and a component of that product, whether
sold separately or not. Thus, reading “article of manufac-
ture” in §289 to cover only an end product sold to a con-
sumer gives too narrow a meaning to the phrase.
The parties ask us to go further and resolve whether, for
each of the design patents at issue here, the relevant
article of manufacture is the smartphone, or a particular
smartphone component. Doing so would require us to set
out a test for identifying the relevant article of manufac-
ture at the first step of the §289 damages inquiry and to
parse the record to apply that test in this case. The United
States as amicus curiae suggested a test, see Brief for
United States as Amicus Curiae 27–29, but Samsung and
Apple did not brief the issue. We decline to lay out a test
for the first step of the §289 damages inquiry in the ab-
sence of adequate briefing by the parties. Doing so is not
necessary to resolve the question presented in this case,
and the Federal Circuit may address any remaining issues
on remand.
III
The judgment of the United States Court of Appeals for
the Federal Circuit is therefore reversed, and the case is
Cite as: 580 U. S. ____ (2016) 9
Opinion of the Court
remanded for further proceedings consistent with this
opinion.
It is so ordered.