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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 totalprofit.” 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.
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, 5Stat. 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 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., 1–2
(1886); H. R. Rep. No. 1966, 49th Cong., 1st Sess., 1–2 (1886). The
new provision made it unlawful to manufacture 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, 24Stat. 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. 66Stat. 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 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 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. 530–578.
Samsung Electronics Co., Samsung Electronics
America, Inc., and Samsung Telecommunications America, LLC
(Samsung), also manufacture smartphones. After Apple released its
iPhone, Samsung released a series of 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
infringement damages award.[
1]
In doing so, it rejected Samsung’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.
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
“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
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
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
infringer’s total profit from the end product. Under the latter
interpretation, a patent holder will sometimes be entitled to the
infringer’s total profit from a component of the end
product.[
2]
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 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 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 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 Growers,
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 infringing
smartphones could not be the relevant article of manufacture
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 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 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 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 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 remanded for further proceedings consistent with this
opinion.
It is so ordered.
