Tag: SCOTUS

New Damages Trial for Apple and Samsung, Questions Still Left Unanswered

Picture1By Alex Hagel

Apple and Samsung are back! A new chapter in the Apple v. Samsung saga is set to begin in May.

A federal judge in California has scheduled a third trial since Apple’s initial suit in 2011. The suit alleges Samsung illegally copied several Apple design patents when designing its own phone. The new trial for the two tech giants follows the Supreme Court’s decision last year, which resulted in a (narrow) victory for Samsung.

This round of Apple v. Samsung involves three Apple design patents related to the front cover of its iPhones. Patent D618,577 covers “a black rectangular front face with rounded corners;” patent D593,087 covers “a rectangular front face with rounded corners and a raised rim;” and patent D604,305 covers “a grid of 16 colorful icons on a black screen.” WJLTA previously wrote about the peculiarities of design patents, and its distinction from the far more common utility patents.

Apple received a $1 billion verdict in 2012 after a jury found Samsung illegally used Apple’s design patents, and awarded Apple the entirety of Samsung’s profits from the sale of the infringing phones. Subsequent appeals affirmed the district court’s decision to award the full value of the phones, but that value was later recalculated to about $399 million.

On appeal to the Supreme Court, Samsung argued Apple was only entitled to the value of the relevant “article of manufacture,” rather than the value of the entire phone. During oral arguments, the parties struggled to articulate how and when an “article of manufacture” should be distinct from the entire product. The United States, as amicus, argued four factors should be considered:

  • the scope of the design claimed in the plaintiff’s patent, including the drawing and written description;
  • the relative prominence of the design within the product as a whole;
  • whether the design is conceptually distinct from the product as a whole; and
  • the physical relationship between the patented design and the rest of the product.

The unanimous opinion refused to adopt a specific test for determining what constitutes an article of manufacture, instead ruling “the term ‘article of manufacture’ is broad enough to encompass both a product sold to a consumer [i.e. an iPhone] as well as a component of that product [i.e. the front casing of an iPhone].”

Which brings us back to the new trial. In her order granting a new trial, the district court judge directed the parties to argue using the above factors articulated by the United States. Samsung will likely argue the front casing is an article of manufacture and thus distinct from the iPhone as a product, because (1) the design claimed in the plaintiff’s patent is limited to the front casing, rather than the entire phone, (2) the prominence of the front design is overshadowed by the capabilities of the iPhone as a “smartphone” (3) the product [a smartphone] is conceptually distinct from the patented “black rectangular front face with rounded corners” and (4) the front cover is separable from the rest of the phone.

This new trial will not likely be the end of the story. If the court accepts Samsung’s argument that the front casing is a distinct “article of manufacture,” any damages the court awards will likely only produce more litigation because there is no clear standard on how to value that “article of manufacture.”

Although valuing an article of manufacture was discussed during oral arguments at the Supreme Court, the justices did not decide the issue, and the district court judge has not offered guidance. The likely candidate, embraced by the government and Samsung at oral arguments, requires companies to use consumer surveys and data to deduce “to what extent people who bought the product did so because of the particular article of manufacture.” In the alternative, the court might adopt a test looking at the relative cost of developing a part and awarding damages in proportion. The court was hesitant to embrace this approach because of the potential for a “eureka!” moment, where an important component of the product is produced in a flash of genius, rather than through extensive research and development. This approach would necessarily value that important component much lower because of the low cost of production.

With this open question hanging over the court, this well-known saga is unlikely to end anytime soon.

Supreme Court Hears Oral Arguments for Lee v. Tam

lee-v-tam-picBy Kiran Jassal

The Supreme Court of the United States recently heard oral arguments for Lee v. Tam to decide whether the disparagement provision of the Lanham Act is facially invalid under the First Amendment. The disparagement provision resides in Section 2(a) of the Lanham Act and states that a trademark which “[c]onsists of…matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…” may not be registered.

In 2011, Simon Shiao Tam filed a trademark application for his band name, “The Slants.”

Continue reading “Supreme Court Hears Oral Arguments for Lee v. Tam”

Pirates v. Trolls: Justices Trying to Play a Balancing Act on the Standard for Patent Law Treble Damages

troll-pirateBy Don Wang

As my buddy Vijay reported last November, the Supreme Court granted certiorari for Halo Elecs, Inc. v. Pulse Elects., Inc.., which was consolidated with Stryker Corp. v. Zimmer, Inc., to address whether it should change the current standard for awarding treble damages in patent suits. On February 23, 2016, the high court conducted the oral argument, and the transcript is available here. Continue reading “Pirates v. Trolls: Justices Trying to Play a Balancing Act on the Standard for Patent Law Treble Damages”

SCOTUS Will Determine Fate of Legal Falsity Under the FCA

k9263134By Miriam Swedlow

A core purpose of the Federal Claims Act (FCA) is to discourage and prevent the submission of fraudulent claims to the government. The statute imposes treble damages, civil penalties, and attorneys fees for “knowingly” submitting a “false . . . claim for payment or approval.” The Act further discourages violation by permitting private relators a portion of the damages awarded in a successful action.

The Supreme Court may halt the expanding scope of FCA liability as it considers what counts as “false” under the FCA. The Court granted Certiorari for one of two petitions asking to settle a circuit split over whether an implied certification of compliance is actionable under the FCA, 31 U.S.C. §3729. A wide range of industries will likely watch the Court’s decision because it impacts any person or corporation that contracts with the federal government. This includes defense industry contractors, banks, telecommunication companies, health-care providers, and hospitals. Continue reading “SCOTUS Will Determine Fate of Legal Falsity Under the FCA”

SCOTUS Dodges Privacy Issue … For Now

imrs (1)By Andrew H. Fuller

Last Monday (Nov. 9), the Supreme Court of the United States declined cert to petition Davis, Quartavius v. United States. The case focused on whether the police must obtain a warrant in order to access and review cellphone location data held by carriers. In brief, Davis was convicted of several counts of robbery based on evidence that was largely constructed from cellphone location data the state obtained from Davis’s mobile carrier, MetroPCS, without a warrant. Of particular concern to both Davis and privacy advocates was the data regarding the cell tower locations that Davis’s phone connected to at certain dates and times. The Eleventh Circuit held that Davis did not have a privacy interest in the historical cell site location data and therefore no warrant was necessary. Continue reading “SCOTUS Dodges Privacy Issue … For Now”