Design Patents Continue To Offer Powerful Protection Even After Supreme Court Decision Reining In Damages

The Supreme Court's decision in Samsung Elecs. Co. v. Apple Inc., No. 15-777 (U.S. Dec. 6, 2016) to reverse a $399 million damages award against Samsung for infringement of Apple design patents directed to the rectangular shape and rounded corners of a smartphone, has received significant attention in the IP community.  Lost in the discussion, however, is the substantial value that design patents continue to have, both domestically and abroad, in protecting an innovator's products against copying.

The Supreme Court's holding that design patent damages under 35 U.S.C. § 289 must be based in appropriate cases only on the components that infringe, rather than on the entire accused product, may preclude awards that improperly rely on features of the accused product having no relation to the patented designs.  On the other hand, substantial damages on components will still be available, and design patents may have even greater value in establishing the basis for an injunction.  Given the risk of such an injunction, customs seizure and the burden and uncertainty of both domestic and foreign litigation, design patents often will confer considerable value in negotiations with potential infringers, especially in view of their cost effectiveness and speed to issuance.  It is critical to engage with counsel that can identify and pursue patentable designs at the time of product development to leverage these strengths.