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Technology
13 min read
Areas of Expertise :
Patent, Product Design, Consumer Survey, Damages, Smartphone
Published Date:
Last Modified Date:
Jurisdiction:
Federal. Federal Circuit
Court:
Apple Inc. filed suit against Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC over smartphones and tablets that Apple alleged copied protected elements of the iPhone and iPad. Apple’s original and amended complaints asserted design patents covering smartphone front-face designs and a graphical icon arrangement, as well as utility patents involving touchscreen functions such as bounce-back, gesture input, and double-tap enlargement. The pleadings also included trade-dress, trademark, unfair competition, and related claims.
The U.S. action began on April 15, 2011, and continued through a jury trial, post-trial rulings, a partial damages retrial, appellate review, a unanimous U.S. Supreme Court decision, and another damages trial. The later proceedings addressed whether Samsung’s profits under 35 U.S.C. § 289 should be calculated from complete smartphones or from particular components to which Apple’s patented designs had been applied.
On May 24, 2018, a jury awarded Apple $533,316,606 for infringement of three design patents and $5,325,050 for infringement of two utility patents. The combined verdict was $538,641,656. Apple and Samsung settled the remaining claims and counterclaims in June 2018 under terms that were not disclosed in the public filing.
Apple filed its original complaint in the U.S. District Court for the Northern District of California. The defendants were Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC. Apple alleged infringement of patent, trade-dress, trademark, and other intellectual property rights involving Samsung smartphones and tablets.
Apple later amended its complaint to add patents and accused products. The added rights included the D’087 smartphone design patent and the D’889 tablet design patent. Apple and Samsung also pursued related intellectual property proceedings in other countries.
After a 13-day trial, a federal jury found that several Samsung products infringed Apple’s design and utility patents. The jury also found dilution of certain Apple trade dress and rejected Samsung’s counterclaims for damages.
Apple called Susan Kare to address graphical user-interface design, John Hauser to discuss consumer survey results, and Terry Musika to present damages calculations. Samsung relied on Itay Sherman and Sam Lucente for design-related opinions and Michael Wagner for damages analysis. The district court’s pretrial evidentiary order describes the proposed subjects and limits of testimony from these and other witnesses.
The jury awarded Apple $1,049,343,540. Later proceedings reconsidered the recoverable damages periods and the amounts assigned to particular Samsung products.
The district court ordered a partial damages retrial after finding that the 2012 jury had used legally impermissible starting dates for damages on certain products. For those products, the original calculations included periods before Samsung had received sufficient notice of particular Apple patent rights under the applicable patent-marking and notice rules.
Terry Musika died before the retrial. Julie L. Davis then presented Apple’s damages analysis, while Michael Wagner testified for Samsung. Their testimony addressed product-level sales and profits, recoverable periods, deductible expenses, lost profits, and reasonable royalties within the limits established by the court.
After six days of trial and two days of deliberations, the jury awarded Apple $290,456,793 for the products included in the retrial.
Following the partial retrial and further post-trial proceedings, the district court entered judgment for Apple in the amount of $929,780,039. The judgment included damages tied to Apple’s design patents, utility patents, and trade-dress claims.
Samsung appealed several portions of the judgment. Its arguments included a challenge to the design patent profits award. Samsung maintained that Apple should not recover Samsung’s total profits from complete smartphones when the patented designs were applied only to particular portions of those products.
The U.S. Court of Appeals for the Federal Circuit affirmed the design patent infringement findings, the validity of the two utility patent claims challenged on appeal, and the appealed damages for design and utility patent infringement. It rejected Samsung’s argument that the design patent award should be apportioned according to the value attributable to the patented designs.
The Federal Circuit reached a different result on Apple’s trade-dress claims. It held that the asserted registered and unregistered trade dresses were functional and therefore not protectable as trade dress. The court reversed the trade-dress liability findings and vacated the damages assigned to trade-dress dilution.
Samsung continued to argue that the relevant article of manufacture should not automatically be the complete smartphone. Samsung contended that the patented designs were applied to components such as the front face, exterior casing, or graphical display rather than every part of the finished phone.
In Samsung Electronics Co. v. Apple Inc., the Supreme Court unanimously reversed the Federal Circuit’s interpretation of the design patent damages provision in 35 U.S.C. § 289. The Court held that an “article of manufacture” may be an entire product sold to a consumer or a component of a multicomponent product. A complete smartphone was therefore not the only legally permissible article for calculating an infringer’s total profit.
The Supreme Court did not disturb the underlying infringement findings. It also declined to decide whether the relevant article for each Apple design patent was a complete Samsung smartphone or a particular smartphone component.
The Court did not adopt a final test for identifying an article of manufacture. It returned the case for further proceedings so the lower courts could address the remaining questions using the trial record and additional proceedings where necessary.
After the Supreme Court’s decision, the Federal Circuit remanded the case to the district court. It stated that a § 289 damages analysis involves two steps. The factfinder must first identify the article of manufacture to which the infringed design was applied and must then calculate the infringer’s total profit on that article.
The Federal Circuit did not decide whether another trial was required. It directed the district court to review the existing record, consider the parties’ arguments, and determine what additional proceedings were needed.
The district court concluded that a new trial was required to determine design patent damages under the Supreme Court’s interpretation of § 289. The new proceeding would address the articles of manufacture associated with Apple’s three design patents and Samsung’s total profits on the articles identified by the jury.
The court adopted a four-factor framework for the article-of-manufacture inquiry. The factors concerned the scope of the claimed design, the design’s prominence within the product, whether the proposed component was conceptually distinct from the product as a whole, and the physical relationship between the patented design and the remainder of the product.
During the 2018 trial, Apple argued that the complete smartphones were the relevant articles of manufacture. Samsung proposed component articles, including portions of the phones’ exterior and graphical displays.
Apple called Alan D. Ball, Susan Kare, and Julie L. Davis. Ball and Kare addressed the articles associated with Apple’s physical and graphical design patents. Davis calculated damages using Apple’s proposed articles and the financial evidence admitted at trial.
Samsung relied on Sam Lucente for its component-based article analysis and Michael Wagner for calculations involving Samsung’s profits, deductible expenses, and alternative damages amounts. The docket records identify the parties’ trial disclosures and evidentiary motions involving these witnesses.
The jury awarded Apple $533,316,606 for infringement of the D’677, D’087, and D’305 design patents. It also awarded $5,325,050 for infringement of the ’381 and ’163 utility patents, resulting in a combined verdict of $538,641,656. The article-of-manufacture inquiry applied to the design patent award, not the utility patent damages.
Apple and Samsung filed a joint notice stating that they had agreed to settle and dismiss their remaining claims and counterclaims. The parties requested dismissal with prejudice, with each side bearing its own attorneys’ fees and costs.
The filing did not disclose a settlement payment or other substantive agreement terms. The settlement ended the remaining proceedings without another trial or further adjudication of the May 2018 award.
United States District Court for the Northern District of California
Case Name:
Apple Inc. v. Samsung Electronics Co., Ltd.
Patent Infringement
Patent Dispute
Patent Claim Mapping
Trade Dress
Trademark Infringement
User Interface
Consumer Electronics
Damages Calculations
Technology Valuation
Apple Inc. filed suit against Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC over smartphones and tablets that Apple alleged copied protected elements of the iPhone and iPad. Apple’s original and amended complaints asserted design patents covering smartphone front-face designs and a graphical icon arrangement, as well as utility patents involving touchscreen functions such as bounce-back, gesture input, and double-tap enlargement. The pleadings also included trade-dress, trademark, unfair competition, and related claims.
The U.S. action began on April 15, 2011, and continued through a jury trial, post-trial rulings, a partial damages retrial, appellate review, a unanimous U.S. Supreme Court decision, and another damages trial. The later proceedings addressed whether Samsung’s profits under 35 U.S.C. § 289 should be calculated from complete smartphones or from particular components to which Apple’s patented designs had been applied.
On May 24, 2018, a jury awarded Apple $533,316,606 for infringement of three design patents and $5,325,050 for infringement of two utility patents. The combined verdict was $538,641,656. Apple and Samsung settled the remaining claims and counterclaims in June 2018 under terms that were not disclosed in the public filing.
Apple filed its original complaint in the U.S. District Court for the Northern District of California. The defendants were Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC. Apple alleged infringement of patent, trade-dress, trademark, and other intellectual property rights involving Samsung smartphones and tablets.
Apple later amended its complaint to add patents and accused products. The added rights included the D’087 smartphone design patent and the D’889 tablet design patent. Apple and Samsung also pursued related intellectual property proceedings in other countries.
After a 13-day trial, a federal jury found that several Samsung products infringed Apple’s design and utility patents. The jury also found dilution of certain Apple trade dress and rejected Samsung’s counterclaims for damages.
Apple called Susan Kare to address graphical user-interface design, John Hauser to discuss consumer survey results, and Terry Musika to present damages calculations. Samsung relied on Itay Sherman and Sam Lucente for design-related opinions and Michael Wagner for damages analysis. The district court’s pretrial evidentiary order describes the proposed subjects and limits of testimony from these and other witnesses.
The jury awarded Apple $1,049,343,540. Later proceedings reconsidered the recoverable damages periods and the amounts assigned to particular Samsung products.
The district court ordered a partial damages retrial after finding that the 2012 jury had used legally impermissible starting dates for damages on certain products. For those products, the original calculations included periods before Samsung had received sufficient notice of particular Apple patent rights under the applicable patent-marking and notice rules.
Terry Musika died before the retrial. Julie L. Davis then presented Apple’s damages analysis, while Michael Wagner testified for Samsung. Their testimony addressed product-level sales and profits, recoverable periods, deductible expenses, lost profits, and reasonable royalties within the limits established by the court.
After six days of trial and two days of deliberations, the jury awarded Apple $290,456,793 for the products included in the retrial.
Following the partial retrial and further post-trial proceedings, the district court entered judgment for Apple in the amount of $929,780,039. The judgment included damages tied to Apple’s design patents, utility patents, and trade-dress claims.
Samsung appealed several portions of the judgment. Its arguments included a challenge to the design patent profits award. Samsung maintained that Apple should not recover Samsung’s total profits from complete smartphones when the patented designs were applied only to particular portions of those products.
The U.S. Court of Appeals for the Federal Circuit affirmed the design patent infringement findings, the validity of the two utility patent claims challenged on appeal, and the appealed damages for design and utility patent infringement. It rejected Samsung’s argument that the design patent award should be apportioned according to the value attributable to the patented designs.
The Federal Circuit reached a different result on Apple’s trade-dress claims. It held that the asserted registered and unregistered trade dresses were functional and therefore not protectable as trade dress. The court reversed the trade-dress liability findings and vacated the damages assigned to trade-dress dilution.
Samsung continued to argue that the relevant article of manufacture should not automatically be the complete smartphone. Samsung contended that the patented designs were applied to components such as the front face, exterior casing, or graphical display rather than every part of the finished phone.
In Samsung Electronics Co. v. Apple Inc., the Supreme Court unanimously reversed the Federal Circuit’s interpretation of the design patent damages provision in 35 U.S.C. § 289. The Court held that an “article of manufacture” may be an entire product sold to a consumer or a component of a multicomponent product. A complete smartphone was therefore not the only legally permissible article for calculating an infringer’s total profit.
The Supreme Court did not disturb the underlying infringement findings. It also declined to decide whether the relevant article for each Apple design patent was a complete Samsung smartphone or a particular smartphone component.
The Court did not adopt a final test for identifying an article of manufacture. It returned the case for further proceedings so the lower courts could address the remaining questions using the trial record and additional proceedings where necessary.
After the Supreme Court’s decision, the Federal Circuit remanded the case to the district court. It stated that a § 289 damages analysis involves two steps. The factfinder must first identify the article of manufacture to which the infringed design was applied and must then calculate the infringer’s total profit on that article.
The Federal Circuit did not decide whether another trial was required. It directed the district court to review the existing record, consider the parties’ arguments, and determine what additional proceedings were needed.
The district court concluded that a new trial was required to determine design patent damages under the Supreme Court’s interpretation of § 289. The new proceeding would address the articles of manufacture associated with Apple’s three design patents and Samsung’s total profits on the articles identified by the jury.
The court adopted a four-factor framework for the article-of-manufacture inquiry. The factors concerned the scope of the claimed design, the design’s prominence within the product, whether the proposed component was conceptually distinct from the product as a whole, and the physical relationship between the patented design and the remainder of the product.
During the 2018 trial, Apple argued that the complete smartphones were the relevant articles of manufacture. Samsung proposed component articles, including portions of the phones’ exterior and graphical displays.
Apple called Alan D. Ball, Susan Kare, and Julie L. Davis. Ball and Kare addressed the articles associated with Apple’s physical and graphical design patents. Davis calculated damages using Apple’s proposed articles and the financial evidence admitted at trial.
Samsung relied on Sam Lucente for its component-based article analysis and Michael Wagner for calculations involving Samsung’s profits, deductible expenses, and alternative damages amounts. The docket records identify the parties’ trial disclosures and evidentiary motions involving these witnesses.
The jury awarded Apple $533,316,606 for infringement of the D’677, D’087, and D’305 design patents. It also awarded $5,325,050 for infringement of the ’381 and ’163 utility patents, resulting in a combined verdict of $538,641,656. The article-of-manufacture inquiry applied to the design patent award, not the utility patent damages.
Apple and Samsung filed a joint notice stating that they had agreed to settle and dismiss their remaining claims and counterclaims. The parties requested dismissal with prejudice, with each side bearing its own attorneys’ fees and costs.
The filing did not disclose a settlement payment or other substantive agreement terms. The settlement ended the remaining proceedings without another trial or further adjudication of the May 2018 award.
Susan Kare - Apple Graphical User-Interface Design Expert Witness
Susan Kare participated in the 2012 and 2018 trials. In the first trial, she compared Apple’s graphical user-interface designs with the accused Samsung interfaces and addressed Apple’s D’305 icon-grid patent. Her analysis drew on her experience in icon and interface design and included review of the visual similarities between the parties’ graphical displays.
Kare returned for the 2018 damages trial to address the article of manufacture associated with the D’305 screen design. Her assignment examined whether the relevant article was the complete smartphone or a graphical component displayed through the screen.
John Hauser - Apple Consumer Survey Expert Witness
John Hauser designed and conducted two web-based conjoint surveys for Apple during the 2012 trial. One survey concerned smartphones, and the other concerned tablets. The surveys examined the price premiums that surveyed Samsung consumers were willing to pay for features associated with Apple’s asserted patents.
Samsung challenged Hauser’s survey population, feature descriptions, and retention of underlying materials. The district court concluded that those objections did not require exclusion and allowed the testimony to be presented to the jury.
Terry Musika - Apple Damages Expert Witness in the 2012 Trial
Terry Musika calculated Apple’s claimed damages during the 2012 trial. His work included lost-profit calculations, reasonable-royalty opinions, and an analysis of Samsung’s profits from accused products.
The district court allowed substantial portions of his testimony but excluded or limited particular opinions. The excluded subjects included reliance on a licensing program that the court found was not comparable to the asserted intellectual property and testimony that would have stated Samsung’s legal burden for proving deductible costs.
Julie L. Davis - Apple Damages Expert Witness in the 2013 and 2018 Trials
After Musika’s death, Julie L. Davis became Apple’s damages witness for the partial retrial. She calculated damages for the products and periods that the court permitted the 2013 jury to reconsider.
Davis also testified in 2018. Her later analysis addressed Samsung’s revenues, profits, deductible expenses, and the damages associated with Apple’s proposed articles of manufacture. Her calculations separated the design patent recovery from the damages remaining for the ’381 and ’163 utility patents.
Alan D. Ball - Apple Article-of-Manufacture Expert Witness
Alan D. Ball testified for Apple during the 2018 damages trial. His work addressed the articles of manufacture associated with the D’677 and D’087 physical design patents.
Ball evaluated whether the patented designs were applied to complete smartphones or to smaller physical components. His assignment included an expert report, deposition testimony, and trial testimony concerning the article-of-manufacture inquiry.
Itay Sherman - Samsung Patent Expert Witness
Itay Sherman presented design patent opinions for Samsung during the 2012 trial. His proposed testimony covered functionality, prior designs, patent validity, and comparisons between Apple’s patented designs and the accused Samsung products.
Apple sought to exclude portions of Sherman’s testimony. The district court allowed him to address functional design elements in connection with Samsung’s defenses concerning design patent and trade-dress functionality.
Sam Lucente - Samsung Design Expert Witness
Sam Lucente testified for Samsung during the 2012 and 2018 proceedings. His 2012 opinions addressed design patent obviousness, design and trade-dress functionality, trade-dress distinctiveness, prior designs, and the perspective of an ordinary observer.
In 2018, Lucente analyzed Samsung’s proposed component articles of manufacture. His testimony addressed whether the patented physical and graphical designs could be associated with components rather than with the complete smartphones.
Michael Wagner - Samsung Damages Expert Witness
Michael Wagner served as Samsung’s damages witness during the 2012, 2013, and 2018 trials. His work addressed product profits, reasonable royalties, business expenses, deductions, and alternative damages calculations.
The district court limited some of Wagner’s 2012 opinions, including proposed apportionment calculations that conflicted with the court’s interpretation of § 289 at that stage of the case. By the 2018 trial, the Supreme Court had established that the relevant article could be a component. Wagner then calculated profits and damages using the component articles proposed by Samsung.
Patent Infringement Expert Witness
A patent infringement expert witness may compare the asserted patent claims with the accused product’s design, features, or operation. The expert may also address claim limitations, technical similarities and differences, prior designs or technologies, and whether the accused product contains each required element of the asserted patent claim.
Design Patent Claims
Apple’s design patent claims concerned the ornamental appearance of smartphone front faces and graphical user interfaces. The D’677 patent covered a black rectangular front face with rounded corners, the D’087 patent covered a rounded rectangular front face with a raised rim or bezel, and the D’305 patent covered a grid of colorful icons on a black screen. Apple also asserted the D’889 tablet design patent, but the 2012 jury did not find infringement of that patent.
Utility Patent Claims
The ’381 patent concerned the bounce-back response displayed when a user scrolled beyond the edge of on-screen content. The ’915 patent addressed distinguishing scrolling from gesture operations, while the ’163 patent involved double-tap enlargement and substantial centering of displayed content. The May 2018 utility patent award involved only the ’381 and ’163 patents.
Article of Manufacture Under 35 U.S.C. § 289
Section 289 permits a design patent owner to recover an infringer’s total profit on the article of manufacture to which the patented design was applied. For a multicomponent product, the article may be the complete product or a component incorporated into it. The Supreme Court did not identify the articles applicable to Samsung’s smartphones or adopt a final test for selecting them.
The Parties’ Competing Article Theories
Apple argued that the complete smartphones were the relevant articles of manufacture and sought Samsung’s total profits from those products. Samsung proposed smaller physical and graphical components, including portions of the exterior casing, front-face assembly, screen, or user interface. The jury was asked to identify the relevant article and calculate Samsung’s total profit on it.
Product-Specific Damages Calculations
The damages assigned to Samsung products depended on the patents each product infringed, the applicable notice dates, the recoverable sales periods, and the available damages method. The 2013 retrial recalculated damages for products affected by notice-period errors, while the 2018 trial addressed design patent profits under the Supreme Court’s article-of-manufacture ruling. The utility patent amounts in the 2018 verdict were calculated separately from the design patent award.
The May 2018 trial followed the Supreme Court’s ruling that a component of a multicomponent product may qualify as the article of manufacture under 35 U.S.C. § 289. Apple maintained that its patented designs were applied to the complete Samsung smartphones, while Samsung proposed separate physical and graphical components. The jury awarded Apple $533,316,606 for three design patents and $5,325,050 for two utility patents, producing a total verdict of $538,641,656.
Apple and Samsung filed their settlement notice on June 27, 2018. They agreed to dismiss the remaining claims and counterclaims with prejudice, and the public filing did not state a payment amount or other settlement terms. No further damages trial occurred in the action.
Which patents did Apple assert against Samsung?
Apple asserted design patents involving smartphone front faces, a graphical icon arrangement, and a tablet design. It also asserted utility patents involving bounce-back, scrolling and gesture operations, and double-tap enlargement. The patents and accused products changed as Apple amended its pleadings and the court resolved particular claims.
Why did the district court order a partial damages retrial in 2013?
The district court found that the 2012 jury had used legally impermissible damages periods for certain Samsung products. Some calculations included sales made before Samsung had received sufficient notice of the relevant Apple patent rights. The 2013 jury recalculated damages for the affected products and awarded Apple $290,456,793.
What did the Federal Circuit decide in May 2015?
The Federal Circuit affirmed the design patent infringement findings, the validity of the two utility patent claims challenged on appeal, and the appealed design and utility patent damages. It reversed the trade-dress liability findings because the asserted trade dresses were functional and vacated the damages based on trade-dress dilution.
What did the Supreme Court decide about design patent damages?
The Supreme Court held that the article of manufacture used to calculate an infringer’s total profit may be a complete multicomponent product or one of its components. The Court did not identify the articles applicable to Samsung’s smartphones and did not adopt a final test for selecting them.
Is article-of-manufacture analysis the same as profit apportionment?
No. The first inquiry identifies the product or component to which the patented design was applied. The second calculates the infringer’s total profit on that article. The analysis does not assign a percentage of the finished product’s profit according to the amount of consumer demand attributed to the design.
Susan Kare - Apple Graphical User-Interface Design Expert Witness
Susan Kare participated in the 2012 and 2018 trials. In the first trial, she compared Apple’s graphical user-interface designs with the accused Samsung interfaces and addressed Apple’s D’305 icon-grid patent. Her analysis drew on her experience in icon and interface design and included review of the visual similarities between the parties’ graphical displays.
Kare returned for the 2018 damages trial to address the article of manufacture associated with the D’305 screen design. Her assignment examined whether the relevant article was the complete smartphone or a graphical component displayed through the screen.
John Hauser - Apple Consumer Survey Expert Witness
John Hauser designed and conducted two web-based conjoint surveys for Apple during the 2012 trial. One survey concerned smartphones, and the other concerned tablets. The surveys examined the price premiums that surveyed Samsung consumers were willing to pay for features associated with Apple’s asserted patents.
Samsung challenged Hauser’s survey population, feature descriptions, and retention of underlying materials. The district court concluded that those objections did not require exclusion and allowed the testimony to be presented to the jury.
Terry Musika - Apple Damages Expert Witness in the 2012 Trial
Terry Musika calculated Apple’s claimed damages during the 2012 trial. His work included lost-profit calculations, reasonable-royalty opinions, and an analysis of Samsung’s profits from accused products.
The district court allowed substantial portions of his testimony but excluded or limited particular opinions. The excluded subjects included reliance on a licensing program that the court found was not comparable to the asserted intellectual property and testimony that would have stated Samsung’s legal burden for proving deductible costs.
Julie L. Davis - Apple Damages Expert Witness in the 2013 and 2018 Trials
After Musika’s death, Julie L. Davis became Apple’s damages witness for the partial retrial. She calculated damages for the products and periods that the court permitted the 2013 jury to reconsider.
Davis also testified in 2018. Her later analysis addressed Samsung’s revenues, profits, deductible expenses, and the damages associated with Apple’s proposed articles of manufacture. Her calculations separated the design patent recovery from the damages remaining for the ’381 and ’163 utility patents.
Alan D. Ball - Apple Article-of-Manufacture Expert Witness
Alan D. Ball testified for Apple during the 2018 damages trial. His work addressed the articles of manufacture associated with the D’677 and D’087 physical design patents.
Ball evaluated whether the patented designs were applied to complete smartphones or to smaller physical components. His assignment included an expert report, deposition testimony, and trial testimony concerning the article-of-manufacture inquiry.
Itay Sherman - Samsung Patent Expert Witness
Itay Sherman presented design patent opinions for Samsung during the 2012 trial. His proposed testimony covered functionality, prior designs, patent validity, and comparisons between Apple’s patented designs and the accused Samsung products.
Apple sought to exclude portions of Sherman’s testimony. The district court allowed him to address functional design elements in connection with Samsung’s defenses concerning design patent and trade-dress functionality.
Sam Lucente - Samsung Design Expert Witness
Sam Lucente testified for Samsung during the 2012 and 2018 proceedings. His 2012 opinions addressed design patent obviousness, design and trade-dress functionality, trade-dress distinctiveness, prior designs, and the perspective of an ordinary observer.
In 2018, Lucente analyzed Samsung’s proposed component articles of manufacture. His testimony addressed whether the patented physical and graphical designs could be associated with components rather than with the complete smartphones.
Michael Wagner - Samsung Damages Expert Witness
Michael Wagner served as Samsung’s damages witness during the 2012, 2013, and 2018 trials. His work addressed product profits, reasonable royalties, business expenses, deductions, and alternative damages calculations.
The district court limited some of Wagner’s 2012 opinions, including proposed apportionment calculations that conflicted with the court’s interpretation of § 289 at that stage of the case. By the 2018 trial, the Supreme Court had established that the relevant article could be a component. Wagner then calculated profits and damages using the component articles proposed by Samsung.
Patent Infringement Expert Witness
A patent infringement expert witness may compare the asserted patent claims with the accused product’s design, features, or operation. The expert may also address claim limitations, technical similarities and differences, prior designs or technologies, and whether the accused product contains each required element of the asserted patent claim.
Design Patent Claims
Apple’s design patent claims concerned the ornamental appearance of smartphone front faces and graphical user interfaces. The D’677 patent covered a black rectangular front face with rounded corners, the D’087 patent covered a rounded rectangular front face with a raised rim or bezel, and the D’305 patent covered a grid of colorful icons on a black screen. Apple also asserted the D’889 tablet design patent, but the 2012 jury did not find infringement of that patent.
Utility Patent Claims
The ’381 patent concerned the bounce-back response displayed when a user scrolled beyond the edge of on-screen content. The ’915 patent addressed distinguishing scrolling from gesture operations, while the ’163 patent involved double-tap enlargement and substantial centering of displayed content. The May 2018 utility patent award involved only the ’381 and ’163 patents.
Article of Manufacture Under 35 U.S.C. § 289
Section 289 permits a design patent owner to recover an infringer’s total profit on the article of manufacture to which the patented design was applied. For a multicomponent product, the article may be the complete product or a component incorporated into it. The Supreme Court did not identify the articles applicable to Samsung’s smartphones or adopt a final test for selecting them.
The Parties’ Competing Article Theories
Apple argued that the complete smartphones were the relevant articles of manufacture and sought Samsung’s total profits from those products. Samsung proposed smaller physical and graphical components, including portions of the exterior casing, front-face assembly, screen, or user interface. The jury was asked to identify the relevant article and calculate Samsung’s total profit on it.
Product-Specific Damages Calculations
The damages assigned to Samsung products depended on the patents each product infringed, the applicable notice dates, the recoverable sales periods, and the available damages method. The 2013 retrial recalculated damages for products affected by notice-period errors, while the 2018 trial addressed design patent profits under the Supreme Court’s article-of-manufacture ruling. The utility patent amounts in the 2018 verdict were calculated separately from the design patent award.
The May 2018 trial followed the Supreme Court’s ruling that a component of a multicomponent product may qualify as the article of manufacture under 35 U.S.C. § 289. Apple maintained that its patented designs were applied to the complete Samsung smartphones, while Samsung proposed separate physical and graphical components. The jury awarded Apple $533,316,606 for three design patents and $5,325,050 for two utility patents, producing a total verdict of $538,641,656.
Apple and Samsung filed their settlement notice on June 27, 2018. They agreed to dismiss the remaining claims and counterclaims with prejudice, and the public filing did not state a payment amount or other settlement terms. No further damages trial occurred in the action.
Which patents did Apple assert against Samsung?
Apple asserted design patents involving smartphone front faces, a graphical icon arrangement, and a tablet design. It also asserted utility patents involving bounce-back, scrolling and gesture operations, and double-tap enlargement. The patents and accused products changed as Apple amended its pleadings and the court resolved particular claims.
Why did the district court order a partial damages retrial in 2013?
The district court found that the 2012 jury had used legally impermissible damages periods for certain Samsung products. Some calculations included sales made before Samsung had received sufficient notice of the relevant Apple patent rights. The 2013 jury recalculated damages for the affected products and awarded Apple $290,456,793.
What did the Federal Circuit decide in May 2015?
The Federal Circuit affirmed the design patent infringement findings, the validity of the two utility patent claims challenged on appeal, and the appealed design and utility patent damages. It reversed the trade-dress liability findings because the asserted trade dresses were functional and vacated the damages based on trade-dress dilution.
What did the Supreme Court decide about design patent damages?
The Supreme Court held that the article of manufacture used to calculate an infringer’s total profit may be a complete multicomponent product or one of its components. The Court did not identify the articles applicable to Samsung’s smartphones and did not adopt a final test for selecting them.
Is article-of-manufacture analysis the same as profit apportionment?
No. The first inquiry identifies the product or component to which the patented design was applied. The second calculates the infringer’s total profit on that article. The analysis does not assign a percentage of the finished product’s profit according to the amount of consumer demand attributed to the design.
Patent Infringement
Patent Dispute
Patent Claim Mapping
Trade Dress
Trademark Infringement
User Interface
Consumer Electronics
Damages Calculations
Technology Valuation
Technology
Patent, +4
Technology
Artificial Intelligence, +4
Technology