June 01, 2016

iWitness: The Rise of Design Patents

In patent infringement cases, design patents that cover the ornamental design of an article can be more valuable than utility patents covering functional innovations to it.

Yuri Mikulka

 

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Design or utility patents: Which one trumps in the world of patent infringement litigation?

You may be surprised that in patent infringement cases, design patents that cover the ornamental design of an article can be more valuable than utility patents covering functional innovations to it. This is because potential damages are much, much greater.

Based on the Federal Circuit’s current reading of the Patent Act, a patentee is entitled to the infringer’s total profits in cases of design patent infringement, without apportionment or proving causation or intentional infringement. That was what happened in Apple Inc. v. Samsung Electronics Co., in which Apple was awarded all of Samsung’s total profit for design patent infringement.

Notably, Apple’s damages award didn’t take into account that the patented design covered only certain design elements of the accused devices—“a rectangular round-cornered front face curved edges” of a smartphone. It also overlooked the facts that the accused devices included Samsung’s investment in thousands of other more complex patents and technological innovations, and that Samsung spent millions in marketing to generate sales. No such remedy exists for other types of intellectual property.

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