August 18, 2016

Brief of Amicus Curiae American Intellectual Property Law Association in Support of Respondent, Apple, Inc. v. Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America LLC, No. 15-777, United States Supreme Court

Patterson + Sheridan Partner Jerry Selinger filed a brief at the United States Supreme Court on behalf of the American Intellectual Property Law Association in Apple v. Samsung on August 4, 2016.


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has made somewhat different decisions concerning recovery of an infringer’s profits with respect to utility patents (repealed in 1946), trademarks (granted in 1946, placing the apportionment burden on the infringer), and copyrights (granted in 1976, placing the apportionment burden on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.

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.

To read the full brief, download a PDF of this publication.

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Jerry R. Selinger