throbber
(Slip Opinion)
`
`
`
` OCTOBER TERM, 2016
`
`
`Syllabus
`
`1
`
` NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
`
`
`
` being done in connection with this case, at the time the opinion is issued.
`
`
`
` The syllabus constitutes no part of the opinion of the Court but has been
`
` prepared by the Reporter of Decisions for the convenience of the reader.
`
` See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.
`
`
`SUPREME COURT OF THE UNITED STATES
`
`
`
` Syllabus
`
`
`
` SAMSUNG ELECTRONICS CO., LTD., ET AL. v.
`
`APPLE INC.
`
`CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
`
`THE FEDERAL CIRCUIT
` No. 15–777. Argued October 11, 2016—Decided December 6, 2016
`
`Section 289 of the Patent Act makes it unlawful to manufacture or sell
`an “article of manufacture” to which a patented design or a colorable
`imitation thereof has been applied and makes an infringer liable to
`
` the patent holder “to the extent of his total profit.” 35 U. S. C. §289.
`As relevant here, a jury found that various smartphones manufac-
`tured by petitioners (collectively, Samsung) infringed design patents
`
` owned by respondent Apple Inc. that covered a rectangular front face
`with rounded edges and a grid of colorful icons on a black screen.
`Apple was awarded $399 million in damages—Samsung’s entire profit
`from the sale of its infringing smartphones. The Federal Circuit af-
`firmed the damages award, rejecting Samsung’s argument that dam-
`ages should be limited because the relevant articles of manufacture
`were the front face or screen rather than the entire smartphone. The
`
`
` court reasoned that such a limit was not required because the com-
`ponents of Samsung’s smartphones were not sold separately to ordi-
`
` nary consumers and thus were not distinct articles of manufacture.
`Held: In the case of a multicomponent product, the relevant “article of
`manufacture” for arriving at a §289 damages award need not be the
`end product sold to the consumer but may be only a component of
`that product. Pp. 4–9.
`
`(a) The statutory text resolves the issue here. An “article of manu-
`facture,” which is simply a thing made by hand or machine, encom-
`passes both a product sold to a consumer and a component of that
`
`product. This reading is consistent with §171(a) of the Patent Act,
`which makes certain “design[s] for an article of manufacture” eligible
`for design patent protection, and which has been understood by the
`
`
`Patent Office and the courts to permit a design patent that extends to
`
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`

`
`2
`
`
`SAMSUNG ELECTRONICS CO. v. APPLE INC.
`
`
`Syllabus
`only a component of a multicomponent product, see, e.g., Ex parte
`Adams, 84 Off. Gaz. Pat. Office 311; Application of Zahn, 617 F. 2d
`261, 268 (CCPA). This reading is also consistent with the Court’s
`reading of the term “manufacture” in §101, which makes “any new
`and useful . . . manufacture” eligible for utility patent protection. See
`
`Diamond v. Chakrabarty, 447 U. S. 303, 308. Pp. 4–7.
`
`(b) Because the term “article of manufacture” is broad enough to
`embrace both a product sold to a consumer and a component of that
`product, whether sold separately or not, the Federal Circuit’s nar-
`
`
`rower reading cannot be squared with §289’s text. Absent adequate
`
`briefing by the parties, this Court declines to resolve whether the rel-
`evant article of manufacture for each design patent at issue here is
`the smartphone or a particular smartphone component. Doing so is
`not necessary to resolve the question presented, and the Federal Cir-
`
`cuit may address any remaining issues on remand. Pp. 7–8.
`786 F. 3d 983, reversed and remanded.
`
` SOTOMAYOR, J., delivered the opinion for a unanimous Court.
`
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`

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`
`
`
`
` Cite as: 580 U. S. ____ (2016)
`
`Opinion of the Court
`
`1
`
`
` NOTICE: This opinion is subject to formal revision before publication in the
`
`
`
` preliminary print of the United States Reports. Readers are requested to
`
` notify the Reporter of Decisions, Supreme Court of the United States, Wash-
`
` ington, D. C. 20543, of any typographical or other formal errors, in order
`
`
` that corrections may be made before the preliminary print goes to press.
`
`
`
`
`SUPREME COURT OF THE UNITED STATES
`
`_________________
`
` No. 15–777
`_________________
` SAMSUNG ELECTRONICS CO., LTD., ET AL.,
`
`
` PETITIONERS v. APPLE INC.
`
`ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
`
`
`APPEALS FOR THE FEDERAL CIRCUIT
`
`[December 6, 2016]
`
` JUSTICE SOTOMAYOR delivered the opinion of the Court.
`Section 289 of the Patent Act provides a damages rem-
`
`edy specific to design patent infringement. A person who
`
`manufactures or sells “any article of manufacture to which
`[a patented] design or colorable imitation has been applied
`shall be liable to the owner to the extent of his total
`
`profit.” 35 U. S. C. §289. In the case of a design for a single-
`component product, such as a dinner plate, the product is
`the “article of manufacture” to which the design has been
`applied. In the case of a design for a multicomponent
`product, such as a kitchen oven, identifying the “article of
`manufacture” to which the design has been applied is a
`more difficult task.
`
`This case involves the infringement of designs for
`
`smartphones. The United States Court of Appeals for the
`Federal Circuit identified the entire smartphone as the
`only permissible “article of manufacture” for the purpose
`of calculating §289 damages because consumers could not
`separately purchase components of the smartphones. The
`question before us is whether that reading is consistent
`with §289. We hold that it is not.
`
`
`
`
`
`
`
`
`
`

`
`2
`
`
`
`
`SAMSUNG ELECTRONICS CO. v. APPLE INC.
`
`Opinion of the Court
`I
`
`A
`
`The federal patent laws have long permitted those who
`
`invent designs for manufactured articles to patent their
`designs. See Patent Act of 1842, §3, 5 Stat. 543–544.
`
`Patent protection is available for a “new, original and
`ornamental design for an article of manufacture.” 35
`U. S. C. §171(a). A patentable design “gives a peculiar or
`distinctive appearance to the manufacture, or article to
`which it may be applied, or to which it gives form.”
`Gorham Co. v. White, 14 Wall. 511, 525 (1872). This Court
`has explained that a design patent is infringed “if, in the
`eye of an ordinary observer, giving such attention as a
`purchaser usually gives, two designs are substantially the
`same.” Id., at 528.
`In 1885, this Court limited the damages available for
`
`design patent infringement. The statute in effect at the
`time allowed a holder of a design patent to recover “the
`actual damages sustained” from infringement. Rev. Stat.
`§4919. In Dobson v. Hartford Carpet Co., 114 U. S. 439
`(1885), the lower courts had awarded the holders of design
`patents on carpets damages in the amount of “the entire
`profit to the [patent holders], per yard, in the manufacture
`and sale of carpets of the patented designs, and not merely
`the value which the designs contributed to the carpets.”
`
`Id., at 443. This Court reversed the damages award and
`construed the statute to require proof that the profits were
`“due to” the design rather than other aspects of the car-
`pets. Id., at 444; see also Dobson v. Dornan, 118 U. S. 10,
`17 (1886) (“The plaintiff must show what profits or dam-
`ages are attributable to the use of the infringing design”).
`
`In 1887, in response to the Dobson cases, Congress
`
`enacted a specific damages remedy for design patent
`infringement. See S. Rep. No. 206, 49th Cong., 1st Sess.,
`1–2 (1886); H. R. Rep. No. 1966, 49th Cong., 1st Sess., 1–2
`(1886). The new provision made it unlawful to manufac-
`
`
`
`
`
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`
`
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`
`
`
`

`
`
`
` Cite as: 580 U. S. ____ (2016)
`
`Opinion of the Court
`ture or sell an article of manufacture to which a patented
`
`design or a colorable imitation thereof had been applied.
`An act to amend the law relating to patents, trademarks,
`and copyright, §1, 24 Stat. 387. It went on to make a
`design patent infringer “liable in the amount of ” $250 or
`“the total profit made by him from the manufacture or sale
`. . . of the article or articles to which the design, or color-
`
`able imitation thereof, has been applied.” Ibid.
`
`The Patent Act of 1952 codified this provision in §289.
`66 Stat. 813. That codified language now reads, in rele-
`
`vant part:
`“Whoever during the term of a patent for a design,
`without license of the owner, (1) applies the patented
`design, or any colorable imitation thereof, to any arti-
`cle of manufacture for the purpose of sale, or (2) sells
`or exposes for sale any article of manufacture to which
`such design or colorable imitation has been applied
`shall be liable to the owner to the extent of his total
`
`profit, but not less than $250 . . . .” 35 U. S. C. §289.
`B
`
`Apple Inc. released its first-generation iPhone in 2007.
`The iPhone is a smartphone, a “cell phone with a broad
`range of other functions based on advanced computing
`capability, large storage capacity, and Internet connectiv-
`ity.” Riley v. California, 573 U. S. ___, ___ (2014) (slip op.,
`at 2). Apple secured many design patents in connection
`with the release. Among those patents were the D618,677
`patent, covering a black rectangular front face with
`rounded corners, the D593,087 patent, covering a rectan-
`gular front face with rounded corners and a raised rim,
`and the D604,305 patent, covering a grid of 16 colorful
`icons on a black screen. App. 530–578.
`
`
`Samsung Electronics Co., Samsung Electronics America,
`Inc., and Samsung Telecommunications America, LLC
`(Samsung), also manufacture smartphones. After Apple
`
`
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`
`3
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`
`
`

`
`SAMSUNG ELECTRONICS CO. v. APPLE INC.
`
`Opinion of the Court
`iPhone, Samsung released a series of
`its
`released
`smartphones that resembled the iPhone. Id., at 357–358.
`
`Apple sued Samsung in 2011, alleging, as relevant here,
`that various Samsung smartphones infringed Apple’s
`D593,087, D618,677, and D604,305 design patents. A jury
`found that several Samsung smartphones did infringe
`those patents. See id., at 273–276. All told, Apple was
`awarded $399 million in damages for Samsung’s design
`patent infringement, the entire profit Samsung made from
`its sales of the infringing smartphones. See id., at 277–
`280, 348–350.
`
`The Federal Circuit affirmed the design patent in-
`fringement damages award.1 In doing so, it rejected Sam-
`sung’s argument “that the profits awarded should have
`been limited to the infringing ‘article of manufacture’”—
`for example, the screen or case of the smartphone—“not
`the entire infringing product”—the smartphone. 786 F. 3d
`983, 1002 (2015). It reasoned that “limit[ing] the dam-
`ages” award was not required because the “innards of
`Samsung’s smartphones were not sold separately from
`their shells as distinct articles of manufacture to ordinary
`
`purchasers.” Ibid.
`
`We granted certiorari, 577 U. S. ___ (2016), and now
`reverse and remand.
`
`
`
`4
`
`
`
`
`
`II
`
`Section 289 allows a patent holder to recover the total
`profit an infringer makes from the infringement. It does
`so by first prohibiting the unlicensed “appli[cation]” of a
`——————
`1Samsung raised a host of challenges on appeal related to other
`claims in the litigation between Apple and Samsung. The Federal
`Circuit affirmed in part—with respect to the design patent infringe-
`ment finding, the validity of two utility patent claims, and the design
`and utility patent infringement damages awards—and reversed and
`remanded in part—with respect to trade dress dilution. Only the
`design patent infringement award is at issue here.
`
`
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`
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`

`
`
`
`
`
`
`
`
`Cite as: 580 U. S. ____ (2016)
`
`Opinion of the Court
`“patented design, or any colorable imitation thereof, to any
`article of manufacture for the purpose of sale” or the unli-
`censed sale or exposure to sale of “any article of manufac-
`ture to which [a patented] design or colorable imitation
`has been applied.” 35 U. S. C. §289. It then makes a
`
`person who violates that prohibition “liable to the owner to
`
`the extent of his total profit, but not less than $250.” Ibid.
`
`“Total,” of course, means all. See American Heritage
`Dictionary 1836 (5th ed. 2011) (“[t]he whole amount of
`something; the entirety”). The “total profit” for which
`§289 makes an infringer liable is thus all of the profit
`made from the prohibited conduct, that is, from the manu-
`facture or sale of the “article of manufacture to which [the
`patented] design or colorable imitation has been applied.”
`
`Arriving at a damages award under §289 thus involves
`two steps. First, identify the “article of manufacture” to
`which the infringed design has been applied. Second,
`calculate the infringer’s total profit made on that article of
`manufacture.
`
`This case requires us to address a threshold matter: the
`scope of the term “article of manufacture.” The only ques-
`tion we resolve today is whether, in the case of a multi-
`component product, the relevant “article of manufacture”
`must always be the end product sold to the consumer or
`whether it can also be a component of that product. Under
`the former interpretation, a patent holder will always be
`entitled to the infringer’s total profit from the end product.
`Under the latter interpretation, a patent holder will some-
`times be entitled to the infringer’s total profit from a
`
`component of the end product.2
`——————
`2In its petition for certiorari and in its briefing, Samsung challenged
`the decision below on a second ground. It argued that 35 U. S. C. §289
`contains a causation requirement, which limits a §289 damages award
`to the total profit the infringer made because of the infringement.
`
`Samsung abandoned this theory at argument, and so we do not address
`
`
` it. See Tr. of Oral Arg. 6.
`
`
`
`5
`
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`
`
`
`
`
`
`
`

`
`6
`
`
`SAMSUNG ELECTRONICS CO. v. APPLE INC.
`
`Opinion of the Court
`A
`
`The text resolves this case. The term “article of manu-
`
`facture,” as used in §289, encompasses both a product sold
`to a consumer and a component of that product.
`
`“Article of manufacture” has a broad meaning. An
`“article” is just “a particular thing.” J. Stormonth, A
`Dictionary of the English Language 53 (1885) (Stormonth);
`see also American Heritage Dictionary, at 101 (“[a]n indi-
`vidual thing or element of a class; a particular object or
`item”). And “manufacture” means “the conversion of raw
`materials by the hand, or by machinery, into articles
`suitable for the use of man” and “the articles so made.”
`Stormonth 589; see also American Heritage Dictionary, at
`
`1070 (“[t]he act, craft, or process of manufacturing prod-
`
`ucts, especially on a large scale” or “[a] product that is
`manufactured”). An article of manufacture, then, is sim-
`ply a thing made by hand or machine.
`
`
`So understood, the term “article of manufacture” is
`broad enough to encompass both a product sold to a con-
`sumer as well as a component of that product. A compo-
`nent of a product, no less than the product itself, is a thing
`made by hand or machine. That a component may be
`integrated into a larger product, in other words, does not
`
`put it outside the category of articles of manufacture.
`
`This reading of article of manufacture in §289 is con-
`sistent with 35 U. S. C. §171(a), which makes “new, origi-
`nal and ornamental design[s] for an article of manufac-
`ture” eligible for design patent protection.3 The Patent
`——————
`3As originally enacted, the provision protected “any new and original
`design for a manufacture.” §3, 5 Stat. 544. The provision listed exam-
`ples, including a design “worked into or worked on, or printed or
`
`
` painted or cast or otherwise fixed on, any article of manufacture” and a
` “shape or configuration of any article of manufacture.” Ibid. A stream-
`
`
` lined version enacted in 1902 protected “any new, original, and orna-
`
` mental design for an article of manufacture.” Ch. 783, 32 Stat. 193.
`
` The Patent Act of 1952 retained that language. See §171, 66 Stat. 813.
`
`
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`
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`

`
`7
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`
` Cite as: 580 U. S. ____ (2016)
`
`Opinion of the Court
`Office and the courts have understood §171 to permit a
`design patent for a design extending to only a component
`
` of a multicomponent product. See, e.g., Ex parte Adams,
`84 Off. Gaz. Pat. Office 311 (1898) (“The several articles of
`manufacture of peculiar shape which when combined
`produce a machine or structure having movable parts may
`each separately be patented as a design . . . ”); Application
`of Zahn, 617 F. 2d 261, 268 (CCPA 1980) (“Section 171
`authorizes patents on ornamental designs for articles of
`manufacture. While the design must be embodied in some
`articles, the statute is not limited to designs for complete
`
`articles, or ‘discrete’ articles, and certainly not to articles
`separately sold . . . ”).
`This reading is also consistent with 35 U. S. C. §101,
`
`which makes “any new and useful . . . manufacture . . . or
`any new and useful improvement thereof ” eligible for
`utility patent protection. Cf. 8 D. Chisum, Patents
`§23.03[2], pp. 23–12 to 23–13 (2014) (noting that “article of
`manufacture” in §171 includes “what would be considered
`a ‘manufacture’ within the meaning of Section 101”).
`“[T]his Court has read the term ‘manufacture’ in §101 . . .
`to mean ‘the production of articles for use from raw or
`prepared materials by giving to these materials new
`forms, qualities, properties, or combinations, whether by
`hand-labor or by machinery.’” Diamond v. Chakrabarty,
`447 U. S. 303, 308 (1980) (quoting American Fruit Grow-
`ers, Inc. v. Brogdex Co., 283 U. S. 1, 11 (1931)). The broad
`
`term includes “the parts of a machine considered sepa-
`rately from the machine itself.” 1 W. Robinson, The Law
`of Patents for Useful Inventions §183, p. 270 (1890).
`B
`
`The Federal Circuit’s narrower reading of “article of
`manufacture” cannot be squared with the text of §289.
`The Federal Circuit found that components of the infring-
`ing smartphones could not be the relevant article of manu-
`
`
`
`
`
`
`
`

`
`8
`
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`
`
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`SAMSUNG ELECTRONICS CO. v. APPLE INC.
`
`Opinion of the Court
`facture because consumers could not purchase those com-
`ponents separately from the smartphones. See 786 F. 3d,
`at 1002 (declining to limit a §289 award to a component of
`the smartphone because “[t]he innards of Samsung’s
`smartphones were not sold separately from their shells as
`distinct articles of manufacture to ordinary purchasers”);
`
`see also Nordock, Inc. v. Systems Inc., 803 F. 3d 1344,
`
`1355 (CA Fed. 2015) (declining to limit a §289 award to a
`design for a “‘lip and hinge plate’” because it was “welded
`together” with a leveler and “there was no evidence” it was
`sold “separate[ly] from the leveler as a complete unit”).
`But, for the reasons given above, the term “article of man-
`ufacture” is broad enough to embrace both a product sold
`to a consumer and a component of that product, whether
`sold separately or not. Thus, reading “article of manufac-
`ture” in §289 to cover only an end product sold to a con-
`sumer gives too narrow a meaning to the phrase.
`
`The parties ask us to go further and resolve whether, for
`each of the design patents at issue here, the relevant
`article of manufacture is the smartphone, or a particular
`smartphone component. Doing so would require us to set
`out a test for identifying the relevant article of manufac-
`ture at the first step of the §289 damages inquiry and to
`
`
`
`
`parse the record to apply that test in this case. The United
`States as amicus curiae suggested a test, see Brief for
`United States as Amicus Curiae 27–29, but Samsung and
`
`Apple did not brief the issue. We decline to lay out a test
`for the first step of the §289 damages inquiry in the ab-
`sence of adequate briefing by the parties. Doing so is not
`
`necessary to resolve the question presented in this case,
`and the Federal Circuit may address any remaining issues
`on remand.
`
`
`
`
`
`
`
`
`
`
`III
`
`The judgment of the United States Court of Appeals for
`the Federal Circuit is therefore reversed, and the case is
`
`
`
`

`
`9
`
`
`It is so ordered.
`
`
`
` Cite as: 580 U. S. ____ (2016)
`
`Opinion of the Court
`remanded for further proceedings consistent with this
`
`opinion.

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