No. 15-777
`
`In the
`Supreme Court of the United States
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., SAMSUNG
`TELECOMMUNICATIONS AMERICA LLC,
`
`v.
`
`APPLE INC.,
`
`Petitioners,
`
`Respondent.
`
`On Writ Of CertiOrari tO the United StateS
`COUrt Of appealS fOr the federal CirCUit
`
`BRIEF OF AMICUS CURIAE AMERICAN
`INTELLECTUAL PROPERTY LAW
`ASSOCIATION IN SUPPORT
`OF RESPONDENT
`
`DenIse W. DeFranco
`President
`amerIcan Intellectual
` ProPerty laW assocIatIon
`241 18th Street South, Suite 700
`Arlington, VA 22202
`(703) 415-0780
`
`Jerry r. selInger
`Counsel of Record
`Patterson & sherIDan, llP
`1700 Pacific Avenue, Suite 2650
`Dallas, TX 75201
`(214) 272-0957
`jselinger@pattersonsheridan.com
`Attorneys for Amicus Curiae
`American Intellectual Property Law Association
`
`267209
`
`A
`
`(800) 274-3321 • (800) 359-6859
`
`
`
`In the
`Supreme Court of the United States
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., SAMSUNG
`TELECOMMUNICATIONS AMERICA LLC,
`
`v.
`
`APPLE INC.,
`
`Petitioners,
`
`Respondent.
`
`On Writ Of CertiOrari tO the United StateS
`COUrt Of appealS fOr the federal CirCUit
`
`BRIEF OF AMICUS CURIAE AMERICAN
`INTELLECTUAL PROPERTY LAW
`ASSOCIATION IN SUPPORT
`OF RESPONDENT
`
`DenIse W. DeFranco
`President
`amerIcan Intellectual
` ProPerty laW assocIatIon
`241 18th Street South, Suite 700
`Arlington, VA 22202
`(703) 415-0780
`
`Jerry r. selInger
`Counsel of Record
`Patterson & sherIDan, llP
`1700 Pacific Avenue, Suite 2650
`Dallas, TX 75201
`(214) 272-0957
`jselinger@pattersonsheridan.com
`Attorneys for Amicus Curiae
`American Intellectual Property Law Association
`
`267209
`
`A
`
`(800) 274-3321 • (800) 359-6859
`
`
`
`i
`
`TABLE OF CONTENTS. . . . . . . . . . . . . . . . . . . . . . . . . . i
`
`TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . iii
`
`STATEMENT OF INTEREST . . . . . . . . . . . . . . . . . . . .1
`
`SUMMARY OF ARGUMENT . . . . . . . . . . . . . . . . . . . . .2
`
`ARGUMENT. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3
`
`I. Overview of Design Patent Law . . . . . . . . . . . . . .3
`
`II. The Additional Relief to Design Patentees
`Afforded by 35 U.S.C. § 289 is Clear and
`Unambiguous . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5
`
`
`
`III. Legislative History Supports a Plain-
` Meaning Statutory Construction . . . . . . . . . . . . .7
`
`A. Patent Remedies Prior to 1842 . . . . . . . . . . .7
`
`B. Patent Remedies and the Carpet Cases. . . .8
`
`C. T h e A c t o f 1 8 8 7 El i m i n a t e d
`
`Apportionment. . . . . . . . . . . . . . . . . . . . . . . .11
`
`D. Section 289 Implements Congressional
`Intent to Award an Infringer’s Entire
`Profits . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .13
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`
`
`ii
`
`IV. Reliance on Explicit Language in Section 289
`Is Justified by Evidence in Trademark and
`Copyright Law That Congress Conditions
`Infringement Remedies with Express
`Language Where It Chooses to Do So. . . . . . . .15
`
`
`
`V. The Policy Implemented by Congress in
`
`1887 Remains Good Policy . . . . . . . . . . . . . . . . . .18
`
`CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .20
`
`Table of Contents
`
`Page
`
`
`
`iii
`
`CASES:
`
`Apple Inc. v. Samsung Elecs. Co.,
`
`786 F.3d 983 (Fed. Cir. 2015) . . . . . . . . . . . . . . . . . . . .6
`
`Aro Mfg. Co., Inc. v. Convertible Top
`Replacement Co., Inc.,
`377 U.S. 476 (1964) . . . . . . . . . . . . . . . . . . . . . . . . . . . .14
`
`
`
`Bonita Boats, Inc. v. Thunder Craft Boards, Inc.,
`
`489 U.S. 141 (1989) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3
`
`Burdell v. Denig,
`
`92 US. 716 (1876) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9
`
`Dobson v. Dornan,
`
`118 U.S. 10 (1886) . . . . . . . . . . . . . . . . . . . . . . . . .4, 6, 10
`
`Dobson v. Hartford Carpet Co.,
`
`114 U.S. 439 (1885) . . . . . . . . . . . . . . . . . . . . .4, 6, 10, 11
`
`Egyptian Goddess, Inc. v. Swisa, Inc.,
`
`543 F.3d 665 (Fed. Cir. 2008) . . . . . . . . . . . . . . . . . . . .4
`
`Feltner v. Columbia Pictures Television, Inc.,
`
`523 U.S. 340 (1998) . . . . . . . . . . . . . . . . . . . . . . . . . . .17
`
`F.W. Woolworth Co. v. Contemporary Arts, Inc.,
` U.S. 228 (1952) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .18
`
`Garretson v. Clark,
`
`111 U.S. 120 (1884) . . . . . . . . . . . . . . . . . . . . . . . . . . . .10
`
`TABLE OF CITED AUTHORITIES
`
`Page
`
`
`
`iv
`
`Garretson v. Clark,
`
`10 F. Cas. 40 (C.C.N.D.N.Y. 1878). . . . . . . . . . . . . . . . .9
`
`Gorham Co. v. White,
`
`81 U.S. (14 Wall.) 511, 20 L.Ed. 731 (1871) . . . . . . .4, 5
`
`Henry Hanger & Display Fixture Corp. of Am.
`v. Sel-O-Rak Corp.,
`270 F.2d 635 (5th Cir. 1959). . . . . . . . . . . . . . . . . . . . . .7
`
`
`
`Markman v. Westview Instruments, Inc.,
`
`517 U.S. 370 (1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4
`
`Petrella v. Metro-Goldwyn-Mayer, Inc.
`
`134 S. Ct. 1962 (2014) . . . . . . . . . . . . . . . . . . . . . . . . . .17
`
`Ratzlaf v. United States,
`
`510 U.S. 135 (1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6
`
`Schnadig Corp. v. Gaines Mfg. Co.,
`
`620 F.2d 1166 (6th Cir. 1980). . . . . . . . . . . . . . . . . . . 6-7
`
`Seymour v. McCormick,
`
`57 U.S. (16 How.) 480 (1853) . . . . . . . . . . . . . . . . . . . . .7
`
`Sheldon v. Metro-Goldwyn Pictures Corp.,
`
`309 U.S. 390 (1940). . . . . . . . . . . . . . . . . . . . . . . . . . . .17
`
`Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`
`135 S. Ct. 831 (2015). . . . . . . . . . . . . . . . . . . . . . . . . . . .4
`
`Cited Authorities
`
`Page
`
`
`
`v
`
`STATUTES:
`
`15 U.S.C. § 1114 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .15, 16
`
`15 U.S.C. § 1117 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .15
`
`17 U.S.C. § 504 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16, 17
`
`35 U.S.C. § 70 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .14
`
`35 U.S.C. § 171 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3, 19
`
`35 U.S.C. § 284. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5, 13
`
`35 U.S.C. § 289. . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim
`
`RULES:
`
`S. Ct. R. 37.3. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2
`
`S. Ct. R. 37.6. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1
`
`OTHER AUTHORITIES:
`
`U.S. Const., art. 1, § 8 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3
`
`Act of Feb. 21, 1922, ch. 58, § 8, 42 Stat. 389 . . . . . . . . .13
`
`Act of August 29, 1842, ch. 263, § 2, 5 Stat. 543 . . . . . . .8
`
`Cited Authorities
`
`Page
`
`
`
`vi
`
`Du Mont, Jason J. and Janis, Mark D., American
`Design Patent Law: A Legal History, Ch. 6 -
`Design Patent Remedies at 6/14 (May 26, 2016),
`Ch. 6 - Design Patent Remedies (Cambridge Univ.
`Press Forthcoming) Available at SSRN: http://
`ssrn.com/abstract=2784746 . . . . . . . . . . . . 5, 10, 11, 12
`
`
`
`Gilman, Todd J., Attorney Puts Foot Down
`About Sneaker Patents; Avia Takes Shoe
`P i rat es t o Cou r t t o P rot ect Desig n,
` Wash. Post, July 20, 1987 . . . . . . . . . . . . . . . . . . . . . .19
`
`H.R. 8323, reprinted at 18 Cong. Rec. 834
`
`(Jan 20, 1887) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .11
`
`H.R. Rep. 1923, 82nd Cong., 2d Sess. (1952) . . . . . . . . . .14
`
`H.R. Rep. No. 1587, 79th Cong., 2d Sess. (1946) . . . . . . .14
`
`H.R. Rep. No. 1966, as reprinted in 18 Cong.
` Rec. 834 (1887) . . . . . . . . . . . . . . . . . . . . . . . . . . . .11, 12
`
`1887 Act, ch. 105, 24 Stat. 387 . . . . . . . . . . . . . . . 10, 11, 12
`
`Act of August 1, 1946, c. 726, § 1, 60 Stat. 778 . . . . . . . .14
`
`Lanham T radema rk Act, Pub L.79 - 4 89,
`
`60 Stat 427 (1946) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .15
`
`Patent Act of 1790, ch. 7, § 4, 1 Stat. 111. . . . . . . . . . . . . .7
`
`Cited Authorities
`
`Page
`
`
`
`vii
`
`Patent Act of 1793, ch. 11, § 5, 1 Stat. 318. . . . . . . . . . . . .7
`
`Patent Act of 1800 ch. 25, § 3, 2 Stat. 37. . . . . . . . . . . . . .7
`
`Patent Act of 1819, ch. 19, § 1, 3 Stat. 481. . . . . . . . . . . . .8
`
`Patent Act of 1836, ch. 357, § 17, 5 Stat. 117. . . . . . . . . . .8
`
`Patent Act of 1870, ch. 230, §§ 55, 59, 15 Stat 198
`
`(1870) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9
`
`S. Rep. No. 104-177 (1995) . . . . . . . . . . . . . . . . . . . . . . . .19
`
`S. Rep. No. 1503, 79th Cong., 2 (1946) . . . . . . . . . . . . . . .14
`
`S. Rep. 206, 49th Cong., lst Sess. (Mar. 9, 1886) . . . . . . .12
`
`Cited Authorities
`
`Page
`
`
`
`1
`
`STATEMENT OF INTEREST
`
`The American Intellectual Property Law Association
`is a national bar association of approximately 14,000
`members who are primarily lawyers engaged in private
`and corporate practice, in government service, and in
`the academic community.1 The Association’s members
`represent a wide and diverse spectrum of individuals,
`companies, and institutions involved directly and
`indirectly in the practice of patent, trademark, copyright,
`trade secret, and unfair competition law as well as other
`fields of law affecting intellectual property. Our members
`represent both owners and users of intellectual property.
`Our mission includes helping establish and maintain fair
`and effective laws and policies that stimulate and reward
`invention while balancing the public’s interest in healthy
`competition, reasonable costs, and basic fairness.
`
`The Association has no stake in the parties to this
`litigation or in the result of this case, other than its
`
`1. In accordance with Supreme Court Rule 37.6, amicus
`curiae states that this brief was not authored, in whole or in part,
`by counsel to a party, and that no monetary contribution to the
`preparation or submission of this brief was made by any person
`or entity other than the amicus curiae and its counsel. Specifi-
`cally, after reasonable investigation, AIPLA believes that (i) no
`member of its Board or Amicus Committee who voted to file this
`brief, or any attorney in the law firm or corporation of such a
`member, represents a party to this litigation in this matter, (ii) no
`representative of any party to this litigation participated in the
`authorship of this brief, and (iii) no one other than AIPLA or its
`members who authored this brief and their law firms or employers
`made a monetary contribution to the preparation or submission
`of this brief.
`
`
`
`2
`
`interest in the correct and consistent interpretation of
`law affecting intellectual property.2
`
`SUMMARY OF ARGUMENT
`
`Congress has answered the question presented in
`this case. In enacting 35 U.S.C. § 289, it established that
`compensation for design patent infringement may include
`the infringer’s profit from the sale of the article bearing
`the claimed design. Section 289 expressly states that the
`infringer “shall be liable to the owner to the extent of his
`total profit” for the article manufactured to which the
`claimed design is applied.
`
`The legislative history of Section 289 supports the
`plain meaning of the statutory language and demonstrates
`the policy decision Congress made in providing this
`remedy to design patent owners. Congress over the
`years has made somewhat different decisions concerning
`recovery of an infringer’s profits with respect to utility
`patents (repealed in 1946), trademarks (granted in 1946,
`placing the apportionment burden on the infringer), and
`copyrights (granted in 1976, placing the apportionment
`burden on the infringer). Congress has not, however,
`moved away from its grant to design patent owners of
`the right to recover an infringer’s total, un-apportioned
`profits.
`
`2. In accordance with Supreme Court Rule 37.3(a), AIPLA
`has obtained the consent of the parties the file this amicus brief
`in support of Respondent. Petitioner Samsung has filed a blanket
`consent letter with the Court, and Respondent Apple delivered
`its consent to AIPLA by letter filed with this brief.
`
`
`
`3
`
`This remedy, moreover, remains an important weapon
`in the arsenal of design-patent holders in the fight against
`counterfeit articles of manufacture. That mundane,
`everyday battle should not be overshadowed by high-
`profile rhetoric.
`
`ARGUMENT
`
`I. Overview of Design Patent Law
`
`The development of design patent law parallels the
`history of technology in the United States and reflects
`policy decisions enacted by Congress concerning the role
`of design patents to “promote the progress of science and
`useful arts.” U.S. Const., art. 1, § 8. Of particular relevance
`here, Congress realized that the additional remedy of an
`infringer’s profits was necessary for adequate design
`patent protection.
`
`Since 1842, Congress has made protection available
`for “any new, original and ornamental design for an
`article of manufacture.” 35 U.S.C. § 171. To qualify for
`protection, a design must present an aesthetically pleasing
`appearance that is not dictated by function alone, and must
`satisfy the other criteria of patentability set forth in Title
`35 of the United States Code. See, e.g., Bonita Boats, Inc.
`v. Thunder Craft Boards, Inc., 489 U.S. 141, 148 (1989).
`
`Patent claims define the scope of protection afforded
`to the patent holder for both utility patents and design
`patents. A utility patent includes claims in the numbered
`sentences that appear at the end of a patent, whereas
`a design patent has only one claim directed to the
`ornamental design as shown by the drawings in the
`
`
`
`4
`
`patent.3 Construction of both claim forms is now an issue of
`law for the courts. Teva Pharms. USA, Inc. v. Sandoz, Inc.
`135 S. Ct. 831 (2015); Markman v. Westview Instruments,
`Inc., 517 U.S. 370 (1996). One practicality of construing
`a design patent claim, i.e., the drawing, is that a picture
`alone sometimes may be better than a thousand words.4
`
`The test for determining infringement of a design
`patent was established in Gorham Co. v. White, 81 U.S.
`(14 Wall.) 511, 20 L.Ed. 731 (1871):
`
`[I]f, in the eye of an ordinary observer, giving
`such attention as a purchaser usually gives,
`two designs are substantially the same, if
`the resemblance is such as to deceive such
`an observer, inducing him to purchase one
`supposing it to be the other, the first one
`patented is infringed by the other.
`
`3. See, e.g., Markman v. Westview Instruments, Inc., 517
`U.S. 370, 373 (1996)(utility patents); Dobson v. Hartford Carpet
`Co., 114 U.S. 439, 446 (1885)(design patents). Design patents are
`subject to the statutory claim requirement. 35 U.S.C. § 171 (“The
`provisions of this title relating to patents for inventions shall apply
`to patents for designs, except as otherwise provided.”).
`
`4. A claim to a design “substantially as shown,” without
`verbal description, is an accepted claim form. Dobson v. Dornan,
`118 U.S. 10, 14 (1886)(claimed design “is better represented by
`the photographic illustration than it could be by any description,
`and a description would probably not be intelligible without the
`illustration.”). See also Egyptian Goddess, Inc. v. Swisa, Inc., 543
`F.3d 665, 679-80 (Fed. Cir. 2008) (en banc).
`
`
`
`5
`
`Id. at 528.5 The need to prove substantial similarity that
`creates a potential for deception suggests the context in
`which Congress long ago provided design patent owners
`with the additional remedy now codified in 35 U.S.C. § 289.
`
`II. The Additional Relief to Design Patentees Afforded
`by 35 U.S.C. § 289 is Clear and Unambiguous
`
`In general, patent owners may recover “damages
`adequate to compensate for the infringement,” 35 U.S.C.
`§ 284, such as an award of their lost profits or a reasonable
`royalty for use of the claimed invention. In addition, design
`patent owners may elect those remedies as well as (with
`some limitations) the infringer’s profits under 35 U.S.C.
`§ 289:
`
`Whoever … applies the patented design … to
`any article of manufacture … shall be liable to
`the owner to the extent of his total profit, but
`not less than $250 .…
`
`Nothing in this section shall prevent, lessen or
`impeach any other remedy which an owner of
`an infringed patent has under the provisions
`of this title, but he shall not twice recover the
`profit made from the infringement.
`
`35 U.S.C. § 289 (emphasis added).
`
`5. This case was the outgrowth of a clash between solid silver
`manufacturers and silver-plating operations. See, e.g., Du Mont,
`Jason J. and Janis, Mark D., American Design Patent Law: A Le-
`gal History, Ch. 6 - Design Patent Remedies at 6/14 (May 26, 2016)
`(hereafter “Du Mont, Legal History”). American Design Patent
`Law: A Legal History, Ch. 6 - Design Patent Remedies (Cambridge
`Univ. Press Forthcoming) Available at SSRN: http://ssrn.com/ab-
`stract=2784746
`
`
`
`6
`
`As discussed below, this statutory language first was
`enacted in 1887 and has remained essentially unchanged.
`The genesis of the 1887 legislation can be found in
`decisions in 1885 and 1886 decisions of this Court that
`limited a design patent owner to recovery of “only nominal
`damages,” for want of evidence apportioning the value
`of the design and the value of the article of manufacture
`itself. Dobson v. Dornan, 118 U.S. 10 (1886); Dobson v.
`Hartford Carpet Co. 114 U.S. 439 (1885).
`
`The language of the statute is clear and unequivocal.
`One who applies a patented design to an article of
`manufacture shall be liable “to the extent of his total
`profits.” 35 U.S.C. § 289. See e.g., Ratzlaf v. United States,
`510 U.S. 135, 147-48 (1994) (“There are, we recognize,
`contrary indications in the statute’s legislative history. But
`we do not resort to legislative history to cloud a statutory
`text that is clear.”). It has been argued that the statutory
`term “article of manufacture” refers to the component to
`which the design is applied (here it would be the cell phone
`case) rather than the entire phone product sold. However,
`as pointed out by the Federal Circuit, the identification of
`the article of manufacture for purposes of Section 289 is an
`issue of fact to be decided on a case-by-case basis, focusing
`on how the product is sold. Apple Inc. v. Samsung Elecs.
`Co., 786 F.3d 983, 1002 (Fed. Cir. 2015); Brief of the United
`States as Amicus Curiae Supporting Neither Party, at 9.
`
`The statutory language constitutes a congressional
`rejection of a causation consideration, i.e., an apportionment
`requirement, and authorizes recovery of the infringer’s
`total profit from the article of manufacture bearing the
`patented design. See 786 F.3d at 1002-3 (citing Schnadig
`Corp. v. Gaines Mfg. Co., 620 F.2d 1166, 1171 (6th Cir.
`
`
`
`7
`
`1980); Henry Hanger & Display Fixture Corp. of Am.
`v. Sel-O-Rak Corp., 270 F.2d 635, 643-44 (5th Cir. 1959)).
`
`III. Legislative History Supports a Plain-Meaning
`Statutory Construction
`
`Section 289 is intertwined with the evolution of law/
`equity jurisprudence and with sea changes in technological
`advances.
`
`A. Patent Remedies Prior to 1842
`
`Section 4 of the Patent Act of 1790 allowed patentees
`to recover “such damages as assessed by a jury.”6 The
`Patent Act of 1793 changed the patentee’s recovery to
`“a sum, which shall be at least three times the price, for
`which the patentee has usually sold or licensed to other
`persons, for the use of the said invention.”7 Congress again
`changed the form of damages in the Patent Act of 1800,
`authorizing a patentee to recover “a sum equal to three
`times the actual damages sustained” by the patentee.8
`
`6. Patent Act of 1790, ch. 7, § 4, 1 Stat. 111 (1790).
`
`7. Patent Act of 1793, ch. 11, § 5, 1 Stat. 318 (Feb. 21, 1793).
`See also Seymour v. McCormick, 57 U.S. (16 How.) 480, 488 (1853)
`(while the price of a license became the measure of single dam-
`ages, “the value of a license could not be made a universal rule,
`as a measure of damages.”).
`
`8. Patent Act of 1800, ch. 25, § 3, 2 Stat. 37 (1800).
`
`
`
`8
`
`The Patent Act of 1819 ushered in federal equity’s
`involvement in patent litigation.9 Until then, a patentee
`had only the legal remedy of an action on the case, with
`relief limited to an award of damages. Under the 1819 Act,
`courts of equity could order equitable accountings of the
`infringer’s profits, but not the recovery of the patentee’s
`lost profits or royalty. The Patent Act of 1836 continued
`to give patentees the option of pursuing actions in law or
`equity. It empowered a jury in a court of law to assess
`“actual damages sustained” by the patentee, but repealed
`mandatory trebling.10 Instead, courts were vested with the
`discretionary power to award up to treble the amount of
`the actual damages as punitive damages.11 Federal equity
`jurisdiction was also continued into the 1836 Act.12 At least
`some judges sitting in equity awarded an accounting of
`infringer’s profits in patent cases.
`
`As noted above, Congress enacted provisions to
`address specific issues raised by patents on designs in
`1842.13
`
`B. Patent Remedies and the Carpet Cases
`
`In 1870, Congress expanded the power of federal
`equity to include where appropriate the award of the
`
`9. Patent Act of 1819, ch. 19, § 1, 3 Stat. 481-82 (1819).
`
`10. Patent Act of 1836, ch. 357, § 17, 5 Stat. 117 (1836).
`
`11. Id. at § 14.
`
`12. Id. at § 17.
`
`13. Act of August 29, 1842, ch. 263, § 2, 5 Stat. 543 (1842).
`
`
`
`9
`
`patentee’s damages as well as the infringer’s profits.14 An
`infringer’s profits remained the primary award for relief
`in a suit at equity while a patentee’s damages were the
`primary award in a suit in a court of law.15
`
`The doctrine of apportionment in utility patent cases
`was adopted in 1884 by this Court in Garretson v. Clark,16
`which involved an improvement patent on a mop head. The
`patentee sought an award of the infringer’s profits in a
`case in equity. The Master had recommended an award
`of only nominal damages because the patent was for an
`improvement, but the patentee’s proof on damages was for
`the mop as a whole. That recommendation was adopted,17
`and this Court affirmed, observing that the patent owner
`“produced no evidence to apportion the profits or damages
`between the improvement constituting the patented
`feature and the other features of the mop. His evidence
`went only to show the cost of the whole mop, and the price
`at which it was sold.”18
`
`This decision coincided with the culmination of clashes
`in the carpet industry between an old-line New England
`business and a then-new Philadelphia concern, the Dobson
`brothers. The American carpet industry experienced
`a dramatic transformation during the middle decades
`
`14. Patent Act of 1870, ch. 230, §§ 55, 59, 15 Stat. 198 (1870).
`
`15. See, e.g., Burdell v. Denig, 92 US. 716, 719-20 (1876).
`
`16. 111 U.S. 120 (1884).
`
`17. Garretson v. Clark, 10 F. Cas.40, 41 (C.C.N.D.N.Y. 1878).
`
`18. 111 U.S. at 121.
`
`
`
`10
`
`of the nineteenth century.19 Prior to then, the industry
`was composed primarily of individual weavers who used
`handlooms to produce ingrain carpets for local customers.
`Ingrain was a smooth-surfaced carpet in which the pattern
`was woven into the carpet. Erastus Bigelow invented and
`commercialized a series of power-driven looms in the late
`1830s. Notably, Mr. Bigelow obtained a utility patent on a
`power loom for producing ingrains, which he licensed to
`New England manufacturers. After his patent expired,
`the industry turned to design patent protection.20
`
`These facts provide context for the Court’s 1885 and
`1886 Dobson decisions, which were swiftly followed by
`congressional action in the form of the 1887 Act.21 The
`1885 decision consolidated three suits in equity for design
`patent infringement brought against John Dobson and
`James Dobson by the Hartford Carpet Co. and Bigelow
`Carpet Co. See Dobson, 114 U.S. 439.
`
`The appellate court had awarded the patent holders
`the profits which they would have made on the sale of
`the quantity of carpets sold by the Dobsons. The Court
`reversed, relying on the apportionment rule announced in
`Garretson. Dobson, 114 U.S. at 445-46 (“The [Garretson
`rule] is even more applicable to a patent for a design than to
`one for mechanism. A design or pattern in ornamentation
`or shape appeals only to the taste through the eye, and is
`often a matter of evanescent caprice.”). Accord Dobson
`v. Dornan, 118 U.S. 10, 17-18 (1886) (reversing award of
`
`19. Du Mont, Legal History at 6-11
`
`20. Id. at 6-12.
`
`21. Act of 1887, ch. 105, 24 Stat. 387 (1887).
`
`
`
`11
`
`lost profits to the patentee based on quantity of carpet
`sold by the defendant).
`
`C. The Act of 1887 Eliminated Apportionment
`
`Congress swiftly reacted to the application of the
`Dobson applications of the apportionment rule to design
`patents. The House Report accompanying H.R. 8323
`explicitly rejected the use of an apportionment rule as a
`limitation on an award of profits:
`
`It is expedient that the infringer’s entire
`profit on the article should be recoverable, as
`otherwise none of his profit can be recovered,
`for it is not apportionable; and it is just
`that the entire profit on the article should be
`recoverable and by the patentee, for it is the
`design that sells the article, and so that makes
`it possible to realize any profit at all ….”
`
`See H.R. Rep. No. 1966 at 2-3 (1886), reprinted in 18 Cong.
`Rec. 834 (1887) (emphasis added). Moreover, the House
`Report pointed directly to the 1885 Dobson decision as
`the reason for the need to change design patent law:
`
`It now appears that the design patent laws
`provide no effectual money recovery for
`infringement. This is the result of the statute,
`as applied to the peculiar character of property
`involved, in a test case decided April last by the
`Supreme Court of the United States. Since that
`decision the receipts of the Patent Office in the
`design department have fallen off upwards of 50
`percent, and the average weekly issue of design
`patents has also fallen off just on half.
`
`
`
`12
`
`H.R. Rep. No. 1966 at 1 (1886), reprinted in 18 Cong. Rec.
`834 (1887). The Senate Report accompanying S. 1813
`contained comparable language: “[T]he complainant must
`clearly prove what part of his own damage or what part
`of defendant’s whole profit on the article made and sold
`was directly due to the appearance of those articles ….”22
`Continuing, the Senate Report stated that it had been
`“abundantly shown to your committee … that the proof
`thus called for can never be furnished.”23
`
`The House Report compared the design patent
`right to a trademark right as a means of recovering an
`investment in goodwill: “the patentee is entitled to all the
`good will the design has in the market, and so, after the
`analogy of trade-mark law, is entitled to all the profit the
`infringer made on the goods marked.” Id.
`
`Those two bills were passed by Congress and became
`the Act of 1887. The language of the statute was consistent
`with the intent expressed in the House and Senate Reports
`to eliminate apportionment as a requirement. In pertinent
`part, § 1 provided that:
`
`Any person violating the provisions, or either
`of them, of this section, shall be liable in the
`amount of two hundred and fifty dollars; and
`
`22. S. Rep. 206, 49th Cong., 1st Sess (Mar. 9, 1886) at 1-2
`(emphasis in original), reprinted in Du Mont, Legal History, Ap-
`pendix A.
`
`23. Id. at 2. Isolated remarks made during the House floor
`debate, if taken out of context, might be raised to cloud the issue.
`See Du Mond, Legal History 6:39-6:41. Put in proper context, those
`isolated comments are inconsequential when compared against the
`clear language in both Senate and House reports.
`
`
`
`13
`
`in case the total profit made by him from the
`manufacture or sale, as aforesaid, of the article
`or articles to which the design, or colorable
`imitation thereof, has been applied, exceeds the
`sum of two hundred and fifty dollars, he shall
`be further liable for the excess of such profit
`over and above the sum of two hundred and
`fifty dollars….
`
`Section 2 explained that this grant of rights to recover
`statutory damages or “the total profits” of the infringer
`was complementary to the rights otherwise available to
`the owner of a design patent:
`
`[N]othing in this act contained shall prevent,
`lessen, impeach, or avoid any remedy at law or
`in equity which any owner of letters patent for
`a design, aggrieved by the infringement of the
`same, might have had if this act had not been
`passed ….
`
`Id.
`
`D. Section 289 Implements Congressional Intent
`to Award an Infringer’s Entire Profits
`
`Prior to 1946, the statutory precursor of the present
`§ 284 generally gave patent owners the right to recover
`both what the owner of the patent lost by infringement
`(i.e., damages) and what the infringer made (i.e., profits).24
`
`24. In 1922, Congress revised the general remedies provision
`for patent infringement to allow “a reasonable sum” rather than
`nominal damages as the floor for actual damages. Act of Feb. 21,
`1922, ch. 58, § 8, 42 Stat. 389, 392.
`
`
`
`14
`
`In 1946, Congress substantially altered the equitable
`relief provisions of the patent statute. Significantly,
`Congress eliminated the right to an accounting for an
`infringer’s profits in courts of equity and changed the
`equitable damages remedy to “general damages which
`shall be due compensation for making, using or selling the
`invention, not less than a reasonable royalty therefor ….”25
`The legislative history of the 1946 Act reveals Congress’
`concern with the difficulties that had plagued the courts
`in apportioning the infringer’s profits between that which
`was and that which was not attributable to the claimed
`invention.26
`
`In 1964, the Court explained that the purpose of the
`1946 change “was precisely to eliminate the recovery of
`profits as such and to allow recovery of damages only.” Aro
`Mfg. Co., Inc. v. Convertible Top Replacement Co., Inc.,
`377 U.S. 476, 505 (1964). By contrast, the Court explained
`that “[i]n the 1952 codification, §§67 and 70 of the 1946
`Act were consolidated in the present § 284. The stated
`purpose was merely ‘reorganization in language to clarify
`the statement of the statutes.’ H.R. Rep. No. 1923, 82d
`Cong., 2d Sess., at 10, 29.” Id., at 505 n.20. There is nothing
`to indicate any different purpose in the codification of
`current § 289, despite some minor differences in wording.
`Notably, neither the 1946 Act nor the 1952 Act amended
`
`25. See Act of August 1, 1946, c. 726, § 1, 60 Stat. 778; 35
`U.S.C. §70 (1946).
`
`26. “[I]t is absolutely impossible to apportion the profits due
`to the invention, those being the only profits to which the patentee
`is entitled…. The only sound principle is to have the plaintiff re-
`cover the damages he can prove.” H.R. Rep., No. 1587, 79th Cong.,
`1, at 3 (1946). See also, S.Rep. No. 1503, 79th Cong., 2 (1946).
`
`
`
`15
`
`or repealed the separate remedy for design patent owners
`created in 1887.
`
`IV. Reliance on Explicit Language in Section 289 Is
`Justified by Evidence in Trademark and Copyright
`Law That Congress Conditions Infringement
`Remedies with Express Language Where It
`Chooses to Do So.
`
`That Congress meant what it said in Section 289 –
`that infringers of design patents are liable for their “total
`profit” on the sold articles – is supported by the enactment
`of parallel remedies for federally-registered trademarks
`and copyrights. By providing trademark and copyright
`owners the remedy of an infringer’s profits with specific
`and sometimes distinguishable terms, Congress has
`indicated that it knows how to require apportionment or
`apply other conditions when it wishes to do so.
`
`In 1946, Congress repealed the remedy of infringer’s
`profits for utility patent owners, but in that same year
`it provided that very remedy for trademark owners in
`enacting the Lanham Act. Under Section 1117(a) of Title
`15, a trademark owner that proves a violation of its rights
`provided by Section 1114 can recover compensatory
`damages, costs, and the infringer’s profits subject to the
`principles of equity.
`
`The Lanham Act imposes other prescriptions and
`limitations on the remedy of a trademark infringer’s profits.
`Under Section 1117(a), these include the following: (1) once
`the trademark owner proves the infringer’s total sales, the
`infringer carries the burden to prove costs or deductions;
`(2) the court may adjust an inadequate or excessive profits
`
`
`
`16
`
`award to “enter judgment for such sum as the court shall
`find to be just, according to the circumstances of the case”;
`and (3) the award must constitute compensation and not
`a penalty. Congress has also distinguished the remedies
`for a Section 1114(1)(a) use in commerce of a mark that
`infringes a registered mark from the remedies for the
`Section 1114(1)(b) production of a mark that is intended to
`be used in commerce and that infringes a registered mark.
`Unlike Section 1114(1)(a) infringement, Section 1114(1)(b)
`infringement triggers remedies of the defendant’s profits
`and damages only where there is proof that the defendant
`knew the infringing mark was intended to cause confusion,
`mistake or deception. Section 1114(2) provides a variety
`of provisions limiting the trademark owner’s remedy to
`injunctive relief with respect to innocent infringement
`by a printer or by a newspaper or magazine publisher. In
`addition, Section 1114(2)(D) includes extensive safe-harbor
`provisions for domain name registration authorities.
`
`In the Copyright Act, Section 504 provides that a
`copyright owner may elect an infringement recovery
`of its actual damages and any additional profits of the
`infringer, or instead an award of statutory damages.
`Thus, in
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
