Nos.

2014-1335, 2015-1029

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT
APPLE INC., a California corporation,
Plaintiff-Appellee,
v.
SAMSUNG ELECTRONICS CO., LTD., a Korean corporation,
SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation,
SAMSUNG TELECOMMUNICATIONS AMERICA LLC,
a Delaware limited liability company,
Defendants-Appellants.
Appeals from the United States District Court for the
Northern District of California in case no. 11-CV-1846, Judge Lucy H. Koh.
STATEMENT OF PLAINTIFF-APPELLEE APPLE INC.
IN SUPPORT OF CONTINUED PANEL REVIEW
RACHEL KREVANS
NATHAN B. SABRI
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, CA 94105
(415) 268-7000
MARK D. SELWYN
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, CA 94304
(650) 858-6000

December 27, 2016

WILLIAM F. LEE
MARK C. FLEMING
LAUREN B. FLETCHER
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000
SETH P. WAXMAN
WILMER CUTLER PICKERING
HALE AND DORR LLP
1875 Pennsylvania Avenue, N.W.
Washington, DC 20006
(202) 663-6000
Counsel for Plaintiff-Appellee Apple Inc.

CERTIFICATE OF INTEREST
Counsel for Plaintiff-Appellee Apple Inc. certifies the following:
1.

The full name of every party or amicus represented by us is:

Apple Inc.
2.

The name of the real party in interest represented by us is:

Not applicable.
3.
All parent corporations and any publicly held companies that own 10
percent or more of the stock of the party or amicus curiae represented by me are:
None.
4.
The names of all law firms and the partners or associates that
appeared for the party or amicus now represented by me in the trial court or agency
or are expected to appear in this court are:
MORRISON & FOERSTER LLP: Ruchika Agrawal (former), Deok Keun
Matthew Ahn (former), Charles S. Barquist, Jason R. Bartlett, Ruth N.
Borenstein, Brittany N. DePuy (former), Francis Chung-Hoi Ho (former),
Richard S.J. Hung, Michael A. Jacobs, Esther Kim, Grant L. Kim, Alexei
Klestoff (former), Rachel Krevans, Kenneth A. Kuwayti, Jack Williford
Londen, Harold J. McElhinny, Andrew E. Monach, Erik J. Olson, Marc J.
Pernick (former), Taryn Spelliscy Rawson, Christopher L. Robinson,
Nathaniel B. Sabri, Jennifer L. Taylor, Alison M. Tucher (former),
Christopher J. Wiener, Patrick J. Zhang (former)
WILMER CUTLER PICKERING HALE AND DORR LLP: David B. Bassett, James
C. Burling, Robert Donald Cultice, Andrew J. Danford, Michael A. Diener
(former), Christine E. Duh, Mark D. Flanagan, Mark C. Fleming, Eric
Fletcher, Lauren B. Fletcher, Sarah R. Frazier, Richard Goldenberg, Robert
J. Gunther, Jr., Liv Leila Herriot, Michael R. Heyison, Steven J. Horn, Peter
James Kolovos, Derek Lam (former), Gregory H. Lantier, Brian Larivee
(former), William F. Lee, Andrew L. Liao (former), Joseph J. Mueller,
Kevin Scott Prussia, James L. Quarles, III, Michael Saji (former), Brian
Seeve, Mark Daniel Selwyn, Ali H. Shah (former), Victor F. Souto, Thomas
G. Sprankling (former), Timothy Davis Syrett, Nina S. Tallon, Samuel
-i-

Calvin Walden, Seth P. Waxman, Emily R. Whelan, Jeremy S. Winer

(former)
COOLEY LLP: Benjamin George Damstedt, Jesse L. Dyer (former), Timothy
S. Teter
TAYLOR & COMPANY LAW OFFICES, LLP: Joshua Ryan Benson, Stephen
McGeorge Bundy, Stephen E. Taylor
MAVRAKAKIS LAW GROUP LLP: Kenneth H. Bridges (former), Michael T.
Pieja

Dated: December 27, 2016

/s/ William F. Lee

WILLIAM F. LEE
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000

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TABLE OF CONTENTS
Page
CERTIFICATE OF INTEREST .................................................................................i
TABLE OF AUTHORITIES ....................................................................................iv
STATEMENT OF RELATED CASES .................................................................. vii
INTRODUCTION .....................................................................................................1
BACKGROUND .......................................................................................................3
A.

District Court Proceedings .................................................................... 3

B.

Prior Proceedings Before This Court .................................................... 7

C.

Supreme Court Proceedings .................................................................. 8

ARGUMENT ...........................................................................................................11
I.

II.

THIS COURT SHOULD RETAIN THE CASE AND AFFIRM THE

JURYS DESIGN PATENT DAMAGES AWARD. ..................................................11
A.

It Was Undisputed During Discovery And At Trial That

The Relevant Articles Of Manufacture Were The
Infringing Smartphones In Their Entirety. ..........................................11

B.

Samsungs Arguments Regarding Jury Instructions Are

Wrong, And Have Already Been Decided Or Waived. ......................14
1.

This Court has already rejected Samsungs

argument regarding Proposed Instruction No. 42.1. ................. 14

2.

Samsung cannot raise new challenges to the jury

instructions. ...............................................................................17

THIS COURT MAY AFFIRM THE DAMAGES AWARD WITHOUT

ADDITIONAL BRIEFING OR ARGUMENT. .........................................................20

CONCLUSION ........................................................................................................20
ADDENDUM
CERTIFICATE OF SERVICE
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TABLE OF AUTHORITIES
CASES
Page(s)
Advanced Display Systems, Inc. v. Kent State University,
212 F.3d 1272 (Fed. Cir. 2000) ..........................................................................18
Apple Inc. v. Samsung Electronics Co.,
678 F.3d 1314 (Fed. Cir. 2012) ........................................................................ viii
Apple Inc. v. Samsung Electronics Co.,
727 F.3d 1214 (Fed. Cir. 2013) ........................................................................ viii
Apple Inc. v. Samsung Electronics Co.,
735 F.3d 1352 (Fed. Cir. 2013) ......................................................................... vii
Apple Inc. v. Samsung Electronics Co.,
786 F.3d 983 (Fed. Cir. 2015) .....................................................................passim
Apple Inc. v. Samsung Electronics Co.,
No. 15-1857 (Fed. Cir. June 1, 2016) (per curiam) ........................................... vii
Apple Inc. v. Samsung Electronics Co.,
No. 15-2088 (Fed. Cir. Oct. 13, 2015)............................................................... vii
Brett v. United States,
86 F.2d 305 (9th Cir. 1936) ................................................................................15
City of Springfield v. Kibbe,
480 U.S. 257 (1987) (per curiam) .......................................................................18
Flex-Rest LLC v. Steelcase, Inc.,
455 F.3d 1351 (Fed. Cir. 2006) ..........................................................................15
Hana Financial, Inc. v. Hana Bank,
135 S. Ct. 907 (2015) ..........................................................................................18
Miles v. Lavender,
10 F.2d 450 (9th Cir. 1926) ................................................................................15
Samsung Electronics Co. v. Apple Inc.,
136 S. Ct. 1453 (2016) ....................................................................................... vii
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Samsung Electronics Co. v. Apple Inc.,

137 S. Ct. 429 (2016) ...................................................................................passim
SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312 (Fed. Cir. 2006) ..........................................................................17
Sulzer Textil A.G. v. Picanol N.V.,
358 F.3d 1356 (Fed. Cir. 2004) ..........................................................................16
Transportation Line v. Hope,
95 U.S. 297 (1877) ..............................................................................................15
STATUTES
35 U.S.C. 289 .................................................................................................passim
OTHER AUTHORITIES
Fed. Cir. Internal Operating Procedure 15.3 .............................................................. 1
Miller, Arthur R., Federal Practice & Procedure (3d ed. 2016) ......................15, 18
DOCKETED CASES
Samsung Electronics Co. v. Apple Inc., No. 15-777 (U.S.):
Petition for Writ of Certiorari, 2015 WL 10013702 (Dec. 14, 2015) ............ 8, 18
Brief for Petitioner, 2016 WL 6599922 (June 1, 2016)..........................12, 14, 17
Brief for the United States as Amicus Curiae, 2016 WL 3194218
(June 8, 2016) ..............................................................................................8, 9
Brief for Respondent Apple Inc., 2016 WL 4073686 (July 29, 2016) .............1, 9
Transcript of Oral Argument (Oct. 11, 2016) ...........................................8, 10, 13
Apple Inc. v. Samsung Electronics Co., Nos. 14-1335, 15-1029 (Fed. Cir.):
Brief for Samsung Appellants (May 23, 2014), ECF No. 33 ...................7, 14, 18
Corrected Reply Brief for Samsung Appellants (Sept. 5, 2014),
ECF No. 129 ..................................................................................................18

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Order Denying Petition for Rehearing (Aug. 13, 2015), ECF No. 207......... vii, 7
Apple Inc. v. Samsung Electronics Co., No. 11-cv-1846 (N.D. Cal.):
Exhibit A to the Declaration of Terry L. Musika (May 31,
2012), ECF No. 991 .........................................................................................3
Order Granting-in-Part Motions to Exclude Expert Testimony
(June 30, 2012), ECF No. 1157 ...........................................................5, 12, 16
Joint Pretrial Statement (July 6, 2012), ECF No. 1189 ........................................ 5
Disputed Joint Proposed Jury Instructions (July 13, 2012),
ECF No. 1232 ................................................................................................18
Samsungs Trial Brief (July 24, 2012), ECF No. 1300 ..................................5, 13
Tentative Final Jury Instructions Part IV (Aug. 19, 2012),
ECF No. 1838 ..................................................................................................6
Revised Final Jury Instructions (Aug. 20, 2012), ECF No. 1883 ........................ 6
Transcript of Proceedings (Nov. 15, 2013), ECF No. 2842 ...........................6, 12
Corrected Expert Report of Michael J. Wagner (Sept. 24, 2014),
ECF No. 3198 ....................................................................................3, 4, 5, 12

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STATEMENT OF RELATED CASES

The prior panel opinion in this case is reported at Apple Inc. v. Samsung
Electronics Co., 786 F.3d 983 (Fed. Cir. 2015) (Prost, C.J., joined by OMalley &
Chen, JJ.). The en banc Court denied Samsungs petition for rehearing in an
unreported order. Order, Dkt. No. 207 (Aug. 13, 2015).
The Supreme Court granted Samsungs petition for a writ of certiorari, in
part, on March 21, 2016. 136 S. Ct. 1453. The Supreme Courts opinion (Op.),
which issued on December 6, 2016, is attached to this filing and is available at 137
S. Ct. 429. The Supreme Courts judgment remanding the case to this Court for
further proceedings is expected to issue on or after January 3, 2017.
This Court previously resolved five other appeals in this case: Apple Inc. v.
Samsung Electronics Co., No. 15-1857 (Fed. Cir. June 1, 2016) (per curiam), pet.
for rehg denied (Sept. 1, 2016) (Samsungs appeal from order finding that
Samsung waived privilege with respect to certain documents related to Samsungs
violation of the protective order); Apple Inc. v. Samsung Electronics Co., No. 152088 (Fed. Cir. Oct. 13, 2015) (Prost, C.J., joined by OMalley & Chen, JJ.), pet.
for rehg denied (Nov. 19, 2015) (Samsungs appeal from partial final judgment
following Federal Circuit mandate); Apple Inc. v. Samsung Electronics Co., No.
13-1129, 735 F.3d 1352 (Fed. Cir. 2013) (Prost, J., joined by Bryson & OMalley,
JJ.) (appeal from permanent injunction denial); Apple Inc. v. Samsung Electronics

- vii -

Co., Nos. 12-1600, -1606, 13-1146, 727 F.3d 1214 (Fed. Cir. 2013) (Prost, J.,
joined by Bryson & OMalley, JJ.) (appeal from denial of requests to seal
confidential materials); and Apple Inc. v. Samsung Electronics Co., No. 12-1105,
678 F.3d 1314 (Fed. Cir. 2012) (Bryson, J., joined by Prost, J.; opinion concurring
in part and dissenting in part by OMalley, J.), pet. for rehg denied (June 19,
2012) (appeal from preliminary injunction denial).

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INTRODUCTION
This case will shortly be remanded from the Supreme Court, at which point
the panel may require additional statements or briefs, remand the case to the trial
court, or take any other action consistent with the opinion of the Supreme Court.
Fed. Cir. IOP 15.3. Apple respectfully requests that the panel retain the case and
affirm the district courts judgment on the jury verdict awarding damages for
Samsungs infringement of Apples design patents.
The Supreme Court decided only a single, narrow question relating to the
damages available for design patent infringement: [W]hether, in the case of a
multi-component product, the relevant article of manufacture [under 35 U.S.C.
289] must always be the end product sold to the consumer or whether it can also
be a component of that product. Op. 5.1 The Supreme Court held that the term
article of manufacture is broad enough to encompass both a product sold to a
consumer as well as a component of that product. Id. at 6. All parties and the
United States as amicus curiae agreed with that principle and, in fact, Apples
position was that this Courts opinion was not to the contrary. 2 Because the

Section 289 provides that the infringer shall be liable to the extent of his
total profit on any article of manufacture to which [the patented] design has
been applied. 35 U.S.C. 289.
2

Apple argued to the Supreme Court that nothing in the Federal Circuits
decision suggested that the relevant article of manufacture must always be the
entire product as sold. Apple S. Ct. Br. 26.
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Supreme Court disagreed with Apples reading of this Courts opinion and instead
construed this Courts opinion as holding that the article of manufacture in 289
is invariably the entire end product sold to a consumer (Op. 8), the Supreme
Court reversed this Courts judgment and remanded the case for further
proceedings.

Notably, however, the Supreme Court made no determination

concerning the identity of the article of manufacture in this case. Nor did the
Supreme Court rule that Samsung had properly raised or supported a factual claim
that the article of manufacture in this litigation was anything other than Samsungs
entire phones or that the district court had erred in instructing the jury.
Apple respectfully submits that this Court may and should affirm the jurys
design patent damages award, and that no further trial court proceedings are
needed. The identity of the relevant article of manufacture was never disputed at
trial, and there was no basis on which the jury could have awarded infringers
profits on anything other than Samsungs entire phones. Samsung never identified
any smartphone component as the article of manufacture to the jury, and its expert
did not present any calculation of infringers profits on any smartphone
component. And as this Court has already held, Samsung did not challenge the
jurys damages verdict as unsupported by substantial evidence. See Apple Inc. v.
Samsung Elecs. Co., 786 F.3d 983, 1002 (Fed. Cir. 2015). Accordingly, there is no

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basis for disturbing the jurys damages award under 289, and it should be
affirmed.
BACKGROUND
A.

District Court Proceedings

Apple sued Samsung in 2011, after Samsung refused to stop selling a variety
of smartphones that copied Apples iconic iPhone. As relevant here, Apple alleged
that numerous Samsung phones infringed three design patents.
Pursuant to 289, Apple sought damages in the amount of Samsungs total
profit on its infringing articles of manufacture. From the outset and throughout
the litigation, Apple took the position that damages should be calculated based on
Samsungs entire infringing phones. During discovery, Apples damages expert
Terry Musika produced a report in which he calculated Samsungs profits on its
entire infringing phones. See Dist. Ct. Dkt. 991 138, 141-151.
During discovery and at trial, Samsung never contended that the article of
manufacture was anything other than its entire infringing smartphones.

In

response to Apples damages report, Samsung produced a report by its damages

expert Michael Wagner. In calculating design patent damages under 289, Mr.
Wagner sought to [d]etermin[e] the profits of [Samsungs] accused products.
Dist. Ct. Dkt. 3198 340. Neither Mr. Wagner nor Samsung asserted that the
relevant articles of manufacture for purposes of the 289 remedy were anything

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less than Samsungs entire phones.

Accordingly, Mr. Wagner calculated

Samsungs profits only on the entire phones; he did not calculate Samsungs
profits on any smartphone components. Id. 311-371. 3
Before the district court, Samsungs central theory of 289 damages was
that the infringers profits should be apportioned between the infringing designs
and non-infringing features.

In his expert report, Mr. Wagner therefore

performed an apportionment that determine[d] the maximum apportionment of

Samsungs profits on the accused products to the design-related intellectual
property at issue, purporting to leave out profit that he apportioned to the
products other features.

Dist. Ct. Dkt. 3198 312 (emphasis added).

In

performing this calculation, Mr. Wagner explained that [d]etermining the profits
of the accused products is the first step after which the profits should be
apportioned to the design-related IP at issue versus everything else that is
contributed by Samsung. Id. 340. 4 The district court ruled before trial, and this

In rebutting Apples experts calculation of infringers profits, Mr. Wagner

disputed only whether certain operating expenses (e.g., advertising costs,
depreciation, insurance, labor costs, office supplies) should be deducted from
Samsungs revenues. Dist. Ct. Dkt. 3198 312, 316-335. As with his own
calculation, Mr. Wagner never suggested that profits should be calculated on
anything other than the whole smartphone.
4

Based on surveys regarding consumers reasons for purchasing smartphones

generally, Mr. Wagner apportion[ed] 1% of Samsungs profits on the entire
smartphone to possible design elements allegedly taken from Apple. Dist. Ct.
Dkt. 3198 366. Mr. Wagner alternatively concluded that none of Samsungs
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Court agreed, that Samsungs apportionment argument was impermissible under

289. Dist. Ct. Dkt. 1157 at 9-10; Apple, 786 F.3d at 1001-1002.
Just before trial, the parties submitted a joint pretrial statement identifying
disputed issues of fact and law. Dist. Ct. Dkt. 1189. Samsung did not contend that
the court or jury should determine the identity of the infringing article of
manufacture to which the patented design was applied. See generally id. In a
subsequent trial brief, Samsung suggested that the court should determine the
article of manufacture as a legal issue, but only identified purported articles of
manufacture for two of the three design patents. Dist. Ct. Dkt. 1300 at 19-20. At
no time leading up to trial did Samsung suggest that the jury should determine
what the article of manufacture was, nor did Samsung disclose a damages theory
under 289 that calculated damages based on anything other than the entire
infringing phones.
At trial, both parties damages experts testified that their calculations of
profits on the entire infringing smartphones were the appropriate measure of
damages for the design patents. A42054-A42055; A43031-A43041. Specifically,
Samsungs expert Mr. Wagner presented the jury with his own calculation as to
what Samsungs total profits were on the [infringing] phones.

A43041

profits were attributable to Apples asserted design-related IP, such that Apples
remedy under 289 was zero. Id. 367.
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(emphasis added); see also Dist. Ct. Dkt. 2842 at 1017-1018.

Mr. Wagner

presented no testimony that would have allowed the jury to calculate profits on any
article of manufacture other than the entire phones, nor could he have since no
such opinion appeared in his report.
Toward the end of trial, Samsung proposed an additional final jury
instruction (Proposed Instruction No. 42.1), which would have told the jury that the
article of manufacture is solely the part or portion of the product as sold that
incorporates or embodies the subject matter of the patent. A6984. However, the
proposal also would have instructed the jury on Samsungs erroneous
apportionment theory, stating that an award of profits for design patent
infringement should not include profits earned from the technology by which the
devices operate or from any other functions of the devices. Id.
After the close of evidence, the district court declined to include Samsungs
additional proposed instruction. Dist. Ct. Dkt. 1838; Dist. Ct. Dkt. 1883; A1403.
The district courts final instructions informed the jury that [i]f you find
infringement by any Samsung defendant, Apple is entitled to all profit earned by
that defendant on sales of articles that infringe Apples design patents. A1403.
The jury found the three design patents at issue here valid and infringed and
awarded damages. A637-A640, A646-A647. After a partial retrial, the district

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court entered judgment in Apples favor including $399 million in damages for
Samsungs design patent infringement. See A1; Samsung Fed. Cir. Br. 35 n.3.
Samsungs post-trial motions argued that the jurys award under 289
should be set aside for failure to apportion Samsungs profits between the
patented designs and other non-patented elements of the devices. A8205 n.1; see
also A7633-A7634.

The district court again rejected that apportionment

argument. A100-A101; A131.

B.

Prior Proceedings Before This Court

Samsung appealed, and this Court unanimously affirmed the damages

awarded for Samsungs design patent infringement. The Court rejected Samsungs
apportionment (or causation) argument as contrary to 289. Apple, 786 F.3d
at 1001-1002. With respect to the article of manufacture, the Court rejected
Samsungs argument that the district court was required to limit the damages
for design patent infringement in this case to something less than Samsungs
smartphones. Id. at 1002. The Court also agree[d] with the district court that
there was no legal error in the jury instruction, and noted that Samsung [did] not
argue a lack of substantial evidence to support the damages awards under the
district courts jury instruction. Id. Samsung petitioned for rehearing en banc,
which was denied without dissent. Order, Dkt. No. 207 (Aug. 13, 2015).

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C.

Supreme Court Proceedings

The Supreme Court granted Samsungs petition for certiorari limited to the
following question: Where a design patent is applied to only a component of a
product, should an award of infringers profits be limited to those profits
attributable to the component. Samsung Pet. for Cert. i.
Although Samsung briefed its apportionment argument to the Supreme
Court, it abandoned the point at oral argument. Op. 5 n.2. Samsung shifted its
focus to the article of manufacture on which total profits should be awarded.
Samsung argued that this Court had erred as a matter of law by holding that the
entire product is necessarily the article of manufacture from which you measure
total profit (S. Ct. Tr. 8 (emphasis added)), and contended that the articles of
manufacture here are only components of the infringing smartphones (id. at 5-6).
The United States, participating as amicus curiae, agreed with this Courts
ruling that 289 does not permit apportionment (U.S. S. Ct. Br. 11-15), but
contended that this Court had erred by treating the article of manufacture as
invariably the entire product as sold. Id. at 8 (emphasis added); see also id. at 23
(The court thus appeared to adopt a categorical rule that the relevant article of
manufacture under Section 289 is always the finished product sold to end-users.).
The United States recognized, however, that [t]he task of identifying the relevant
article of manufacture is properly assigned to the finder of fact (id. at 29), and

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proposed factors that may be considered in determining what the article of

manufacture is generally (id. at 27-29). Notably, the United States expressed
uncertainty as to whether [Samsung] presented evidence at trial to support [its]
assertion that the relevant articles of manufacture were components of the phones
(id. at 32), and recommended that the Supreme Court remand the case for [t]he
lower courts to make that determination in the first instance (id. at 9).
Apple asked the Supreme Court to reject Samsungs apportionment
argument, as this Court had done. Apple S. Ct. Br. 31-35. On the article of
manufacture issue, Apple did not dispute thatgenerally speakingthe article of
manufacture in a multi-component product may be either the entire product as sold
or a component of that product. Id. at 35. Apple explained that, in its view, this
Court had not held otherwise. Id. at 41. Apple recognized that identifying the
article of manufacture is a question of fact (id. at 35-41), and argued that the jurys
damages award here should be affirmed because Samsung failed to offer evidence
supporting any outcome other than the jurys conclusion that Samsungs entire
smartphones are the infringing articles of manufacture to which the patented
designs were applied (id. at 42-44).
The Supreme Court agreed that 289 permits a design patent holder to
recover all of the profit made from the prohibited conduct, that is, from the
manufacture or sale of the article of manufacture to which [the patented] design or

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colorable imitation has been applied. Op. 5 (alteration in original). As urged by

Samsung and the United States, however, the Supreme Court construed this
Courts opinion as identif[ying] 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. Op. 1;
see also id. at 7-8. The Supreme Court disagreed with that proposition, because
[t]he term article of manufacture, as used in 289, encompasses both a product
sold to a consumer and a component of that product. Id. at 6. The Supreme Court
was clear that this was [t]he only question we resolve. Id. at 5. The Supreme
Court declined to set out a test for identifying the relevant article of manufacture,
noting that neither party had asked it to do so and that [d]oing so is not necessary
to resolve the question presented. Id. at 8. Nor did the Supreme Court address
whether Samsung had preserved the argument that the articles of manufacture in
this case are only components of the infringing smartphones. See id.5
In light of its holding, the Supreme Court reversed this Courts decision and
remanded for this Court to address any remaining issues. Op. 8-9.

At oral argument, Justice Sotomayor (who wrote the opinion of the Court)
expressed doubt as to whether Samsung had preserved this argument. S. Ct. Tr. 8
(Certainly your expert didnt tell me how to figure out the component part. I
dont know where in the record you would have enough to survive your
argument.); see also id. at 13.
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ARGUMENT
I.

THIS COURT SHOULD RETAIN THE CASE AND AFFIRM THE JURYS DESIGN
PATENT DAMAGES AWARD.
This Court should retain jurisdiction to resolve the remaining issue relating

to the jurys award of design patent damages. As explained below, the Court need
not set forth a test for identifying the relevant article of manufacture or remand
to the district court for further proceedings. Rather, this Court can and should
affirm the jurys design patent damages award based on the record in this case.
A.

It Was Undisputed During Discovery And At Trial That The

Relevant Articles Of Manufacture Were The Infringing
Smartphones In Their Entirety.

Throughout this case, Apple has sought damages under 289 based on
Samsungs profits from its infringing smartphones. Both before and during trial,
Apples damages expert calculated Samsungs total profit under 289 based on
the entire smartphone. See supra pp. 3, 5. Samsung was thus aware of Apples
contention that the entire phone was the relevant article of manufacture.
At no time during discovery or at trial did Samsung contend that the article
of manufacture was anything other than its entire infringing smartphones.
Samsungs damages expert Mr. Wagner did not dispute the relevant article of
manufacture. On the contrary, he calculated Samsungs profits using only the
entire phones, not any component of the phones, as the article of manufacture. See
supra pp. 3-6. In his expert report, Mr. Wagner soughtin a manner consistent
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with Samsungs now-abandoned apportionment argumentto apportion by

trying to separate the portion of profits supposedly attributable to the designrelated IP at issue from those attributable to other features, but not to any smaller
article of manufacture. Dist. Ct. Dkt. 3198 312, 340. After the district court
correctly excluded that theory before trial (Dist. Ct. Dkt. 1157 at 9), all that
remained was Mr. Wagners calculation of the total profits on Samsungs entire
phones (Dist. Ct. Dkt. 3198 336-339).
At trial, Samsung presented no witness to testify that the articles of
manufacture were limited to any particular smartphone components, and it made
no such argument to the jury. In fact, neither Samsungs counsel nor its witnesses
ever mentioned the phrase article of manufacture to the jury. And as Samsung
conceded before the Supreme Court, the record contains no proof of total profit
from the smartphone components that Samsung now claims are the relevant
articles of manufacture. Samsung S. Ct. Br. 54 (capitalization altered). That is
because Samsung calculated and presented damages evidence under 289 based
only on the entire smartphones. Mr. Wagner testified at trial as to total profits only
on the infringing products. A43041; see also Dist. Ct. Dkt. 2842 at 1017-1018.
Samsung did not call any design expert to identify the relevant articles of
manufacture for the jury. Nor did Samsung use any other witness to identify the
relevant articles of manufacture as something less than the complete phone. In

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short, Samsung offered the jury no basis on which it could calculate total profit
under 289 on any article of manufacture other than the whole smartphone.
Samsung was not precluded from offering a damages calculation in this case
based on the theory that the relevant articles of manufacture were something less
than the entire phones; it simply chose not to. For example, Mr. Wagner could
have provided such a calculation in his expert report or Samsungs counsel could
have cross-examined Apples experts on this point. Neither happened.
At oral argument before the Supreme Court, Samsungs counsel attempted to
identify six times when it propose[d] basing damages on profits from an article
less than the whole phone. S. Ct. Tr. 17-18. But the earliest of these six times
occurred just one week before trial, when Samsung contended in a trial brief that
the district court would need to determine the article of manufacture as a matter
of law if the jury found infringement (although Samsung did not propose how
289 damages would be calculated under such a theory). Dist. Ct. Dkt. 1300 at
19-22. By then, discovery had closed and Samsung had no basis from which the
jury could calculate profits on anything other than the entire infringing
smartphones. In any event, the district court did not issue any order precluding

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Samsung from presenting a damages theory that treated the article of

manufacture as only a component of the infringing phones.6
In light of the record and Samsungs failure to develop any evidence from
which the jury could have calculated infringers profits on anything other than its
entire phones, this Court can and should affirm the jurys award of $399 million in
design patent damages.
B.

Samsungs Arguments Regarding Jury Instructions Are Wrong,

And Have Already Been Decided Or Waived.
1.

This Court has already rejected Samsungs argument

regarding Proposed Instruction No. 42.1.

Samsung argued to this Court and the Supreme Court that the district court
should have given its Proposed Instruction No. 42.1, which included the statement
that profits are awarded on the part or portion of the product as sold that
incorporates or embodies the subject matter of the patent. Samsung Fed. Cir. Br.
38 (quoting A6984); see also Samsung S. Ct. Br. 59. This Court has already ruled,
however, that there was no legal error in the jury instruction on the design patent
damages. Apple, 786 F.3d at 1002. There is accordingly no reason to revisit the

The other instances identified by Samsungs counsel were even later and
included a jury instruction (discussed below) and Samsungs motions after the
close of evidence seeking judgment as a matter of law, even though Samsung
presented no evidence that would have allowed the jury to calculate Samsungs
profits on any component.
- 14 -

issue. As to the merits, the district court properly rejected Samsungs proposed
instruction for three reasons.
First, it would have been error to give the proposed instruction, as there was
no evidence from which the jury could have calculated infringers profits based on
anything less than the entire infringing phones. See 9C Miller, Fed. Prac. & Proc.
2556 (3d ed. 2016) (Of course, there need not be an instruction on an issue
neither presented by the pleadings nor effectively raised at the trial by the parties.
Nor should a charge be given on a matter, whether or not raised in the pleadings, if
it is not supported by the evidence. (footnotes omitted)); see also Flex-Rest LLC
v. Steelcase, Inc., 455 F.3d 1351, 1359-1360 (Fed. Cir. 2006) (finding evidence
was insufficient to support a jury instruction regarding suppression or
concealment); Brett v. United States, 86 F.2d 305, 308 (9th Cir. 1936) (It is not
error to refuse an instruction, where there is no pertinent testimony on which to
base it.).
Second, the district court properly rejected Samsungs proposed instruction
because it contained multiple misstatements of law. See Transportation Line v.
Hope, 95 U.S. 297, 301 (1877) (If a request to charge contains one unsound
proposition, it is not error to refuse to make the charge, although it contains many
sound propositions.); Miles v. Lavender, 10 F.2d 450, 455 (9th Cir. 1926) (finding
court justified in refusing entire proposed instruction where part of instruction

- 15 -

was clearly incorrect). Samsungs proposed instruction would have improperly

defined the article of manufacture as invariably less than the entire product as sold.
See A6964 (The article of manufacture to which the design has been applied is the
part or portion of the product as sold that incorporates or embodies the subject
matter of the patent. (emphasis added)). As the Supreme Court held, however,
the term article of manufacture is broad enough to encompass both a product
sold to a consumer as well as a component of that product. Op. 6 (emphases
added). Further, the proposed instruction also included Samsungs erroneous (and
now abandoned) apportionment theory.

A6984 ([A]n award of profits for

design patent infringement should not include profits earned from the technology
by which the devices operate or from any other functions of the device.). Such an
instruction would have impermissibly required the jury to apportion damages
between design and functional elements, which is inconsistent with 289, as both
the district court and this Court have held. Dist. Ct. Dkt. 1157 at 9; Apple, 786
F.3d at 1001-1002.
Third, even if the district court had erred in refusing to give Samsungs
proposed instruction (though it did not), Samsung cannot show any resulting
prejudice. Prejudicial error exists if the outcome of the case would have been
different had the correct instruction been given. Sulzer Textil A.G. v. Picanol
N.V., 358 F.3d 1356, 1367 (Fed. Cir. 2004). The district court rejected Samsungs

- 16 -

proposed instruction after the close of evidence when the court finalized the jury
instructions. By then, it was apparent that the proposed instruction was without
merit. Samsung never argued to the jury that anything other than its whole phones
were the articles of manufacture, and the only damages evidence presented to the
jury calculated total profits based on the entire infringing smartphones. See supra
pp. 11-13. Therefore, the jury could only award the total profit on Samsungs
smartphones.
2.

Samsung cannot raise new challenges to the jury

instructions.

Before the Supreme Court, Samsung sought to raise an additional challenge

to the jury instructions that it did not raise before this Court.

Specifically,

Samsung challenged the district courts instruction that [i]f you find infringement
by any Samsung defendant [and do not find Apples design patents are invalid],
you may award Apple that Samsung defendants total profit attributable to the
infringing products. Samsung S. Ct. Br. 21, 58 (quoting A1403). That new
argument is waived due to Samsungs failure to raise it in its opening brief on
appeal or at any other point before this Court. See SmithKline Beecham Corp. v.

- 17 -

Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006) (Our law is well established
that arguments not raised in the opening brief are waived.). 7
Samsungs prior failure to object to this sentence is unsurprising because
Samsung itself proposed an instruction stating that if you find infringement by
Samsung , you may award Apple Samsung[s] total profit on sales of
products alleged to infringe Apples design patents. Dist. Ct. Dkt. 1232 at 210
(emphasis added). Samsung can hardly criticize the instruction the [d]istrict
[c]ourt gave the jury, as it was essentially the instruction [Samsung] proposed.
Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907, 912 (2015); see also City of
Springfield v. Kibbe, 480 U.S. 257, 258-259 (1987) (per curiam) (refusing to
address petitioners challenge to jury instruction where petitioner did not object to
the jury instruction , and indeed proposed its own instruction to the same
effect); 9C Miller, Fed. Prac. & Proc. 2558 (3d ed. 2016) ([A] party who
requests a jury instruction cannot complain if the instruction, or one substantially
like it, is given by the trial judge.).
In any event, there was no error in the instruction, especially when the
particular sentence is read in the context of the jury instructions as a whole. See
Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir.
7

Neither Samsungs briefs to this Court nor its petition for certiorari asserted
this sentence as instructional error. See Samsung Fed. Cir. Br. 38; Samsung Fed.
Cir. Reply Br. 14-18; Samsung Pet. for Cert. 26-32.
- 18 -

2000) (When reviewing an instruction for legal error, this court reads the
instructions as a whole and considers them in light of the entire charge to the
jury.). The single sentence Samsung challenges simply recognized that the jury
may award total profits based on the entire phone, which was the damages award
Apple requested; the instruction did not require such a finding. A1403. To the
contrary, the rest of the instruction, which also closely tracks language Samsung
proposed, made clear that, if the jury found infringement by [Samsung], Apple is
entitled to all profit earned by that defendant on sales of articles that infringe
Apples design patents. Id. (emphasis added); see also id. (defining total profit
to mean[] the entire profit on the sale of the article to which the patented design is
applied, and not just the portion of profit attributable to the design or ornamental
aspects covered by the patent (emphasis added)); id. (instructing that profit is
calculated by deducting certain expenses from gross revenue, where [g]ross
revenue is all of the infringers receipts from the sale of articles using any design
found infringed. (emphasis added)).
Samsungs new-found objection also fails because Samsung cannot show
any prejudice in light of its failure to develop or present any evidence from which
the jury could have awarded total profits on anything less than Samsungs
infringing smartphones. See supra pp. 16-17.

- 19 -

II.

THIS COURT MAY AFFIRM THE DAMAGES AWARD WITHOUT ADDITIONAL

BRIEFING OR ARGUMENT.
More than four years have passed since the jurys original verdict. Apple

submits that this Court may affirm the design patent damages award without
additional briefing or argument, given that the record permits only the conclusion
that the articles of manufacture were Samsungs infringing smartphones. Should
the Court request further briefing, however, Apple proposes the following
schedule:

Apple files an opening brief within 21 days of the Courts order,

Samsung files a responsive brief within 21 days of Apples opening brief, and
Apple files a reply brief within 14 days of Samsungs brief. This schedule would
allow the Court to resolve the appeal quickly and efficiently.
CONCLUSION
For the foregoing reasons, this Court should retain the case on remand from
the Supreme Court and affirm the district courts judgment awarding design patent
damages.

- 20 -

Respectfully submitted,
/s/ William F. Lee
WILLIAM F. LEE
MARK C. FLEMING
LAUREN B. FLETCHER
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000

RACHEL KREVANS
NATHAN B. SABRI
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, CA 94105
(415) 268-7000
MARK D. SELWYN
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, CA 94304

SETH P. WAXMAN
WILMER CUTLER PICKERING
HALE AND DORR LLP
1875 Pennsylvania Avenue, NW
Washington, DC 20006
Counsel for Plaintiff-Appellee Apple
Inc.

December 27, 2016

- 21 -

ADDENDUM

(Slip Opinion)

OCTOBER TERM, 2016

Syllabus
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. 15777.

Argued October 11, 2016Decided 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 manufactured 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 damagesSamsungs entire profit
from the sale of its infringing smartphones. The Federal Circuit affirmed the damages award, rejecting Samsungs argument that damages 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 components of Samsungs smartphones were not sold separately to ordinary 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. 49.
(a) The statutory text resolves the issue here. An article of manufacture, which is simply a thing made by hand or machine, encompasses 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

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 Courts
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. 47.
(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 Circuits narrower reading cannot be squared with 289s text. Absent adequate
briefing by the parties, this Court declines to resolve whether the relevant 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 Circuit may address any remaining issues on remand. Pp. 78.

786 F. 3d 983, reversed and remanded.

SOTOMAYOR, J., delivered the opinion for a unanimous Court.

Cite as: 580 U. S. ____ (2016)

Opinion of the Court

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, Washington, 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. 15777
_________________

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 remedy 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 singlecomponent 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.

SAMSUNG ELECTRONICS CO. v. APPLE INC.

Opinion of the Court

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. 543544.
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 carpets. Id., at 444; see also Dobson v. Dornan, 118 U. S. 10,
17 (1886) (The plaintiff must show what profits or damages 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.,
12 (1886); H. R. Rep. No. 1966, 49th Cong., 1st Sess., 12
(1886). The new provision made it unlawful to manufac-

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 colorable 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 relevant 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 article 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 connectivity. 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 rectangular 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. 530578.
Samsung Electronics Co., Samsung Electronics America,
Inc., and Samsung Telecommunications America, LLC
(Samsung), also manufacture smartphones. After Apple

SAMSUNG ELECTRONICS CO. v. APPLE INC.

Opinion of the Court

released its iPhone, Samsung released a series of

smartphones that resembled the iPhone. Id., at 357358.
Apple sued Samsung in 2011, alleging, as relevant here,
that various Samsung smartphones infringed Apples
D593,087, D618,677, and D604,305 design patents. A jury
found that several Samsung smartphones did infringe
those patents. See id., at 273276. All told, Apple was
awarded $399 million in damages for Samsungs design
patent infringement, the entire profit Samsung made from
its sales of the infringing smartphones. See id., at 277
280, 348350.
The Federal Circuit affirmed the design patent infringement damages award.1 In doing so, it rejected Samsungs argument that the profits awarded should have
been limited to the infringing article of manufacture
for example, the screen or case of the smartphonenot
the entire infringing productthe smartphone. 786 F. 3d
983, 1002 (2015). It reasoned that limit[ing] the damages award was not required because the innards of
Samsungs 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.
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

1 Samsung raised a host of challenges on appeal related to other

claims in the litigation between Apple and Samsung. The Federal
Circuit affirmed in partwith respect to the design patent infringement finding, the validity of two utility patent claims, and the design
and utility patent infringement damages awardsand reversed and
remanded in partwith respect to trade dress dilution. Only the
design patent infringement award is at issue here.

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 unlicensed sale or exposure to sale of any article of manufacture 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 manufacture 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 infringers 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 question we resolve today is whether, in the case of a multicomponent 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 infringers total profit from the end product.
Under the latter interpretation, a patent holder will sometimes be entitled to the infringers total profit from a
component of the end product.2

2 In 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.

SAMSUNG ELECTRONICS CO. v. APPLE INC.

Opinion of the Court

A
The text resolves this case. The term article of manufacture, 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 individual 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 products, especially on a large scale or [a] product that is
manufactured). An article of manufacture, then, is simply 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 consumer as well as a component of that product. A component 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 consistent with 35 U. S. C. 171(a), which makes new, original and ornamental design[s] for an article of manufacture eligible for design patent protection.3 The Patent

3 As

originally enacted, the provision protected any new and original

design for a manufacture. 3, 5 Stat. 544. The provision listed examples, 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 streamlined version enacted in 1902 protected any new, original, and ornamental design for an article of manufacture. Ch. 783, 32 Stat. 193.
The Patent Act of 1952 retained that language. See 171, 66 Stat. 813.

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. 2312 to 2313 (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 Growers, Inc. v. Brogdex Co., 283 U. S. 1, 11 (1931)). The broad
term includes the parts of a machine considered separately from the machine itself. 1 W. Robinson, The Law
of Patents for Useful Inventions 183, p. 270 (1890).
B
The Federal Circuits narrower reading of article of
manufacture cannot be squared with the text of 289.
The Federal Circuit found that components of the infringing smartphones could not be the relevant article of manu-

SAMSUNG ELECTRONICS CO. v. APPLE INC.

Opinion of the Court

facture because consumers could not purchase those components 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 Samsungs
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 manufacture 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 manufacture in 289 to cover only an end product sold to a consumer 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 manufacture 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 2729, 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 absence 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

Cite as: 580 U. S. ____ (2016)

Opinion of the Court

remanded for further proceedings consistent with this

opinion.
It is so ordered.

CERTIFICATE OF SERVICE
I hereby certify that, on this 27th day of December, 2016 I filed the
foregoing Statement of Plaintiff-Appellee Apple Inc. in Support of Continued
Panel Review with the Clerk of the United States Court of Appeals for the Federal
Circuit via the CM/ECF system, which will send notice of such filing to all
registered CM/ECF users.

/s/ William F. Lee

WILLIAM F. LEE
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000