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BPLA Files an Amicus Brief on 8/6/16

Thursday, August 11, 2016  
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Section 289 of the Patent Act 


Provides disgorgement of the infringer’s profits as a remedy for design patent infringement. At issue in this widely watched case is whether the Federal Circuit erred in upholding the lower court’s determination that Apple was entitled to all of Samsung’s profits on its sales of phones that were found to infringe Apple’s design patents, which cover the look of Apple’s iconic iPhone.Samsung and its amici argued that disgorgement of total profits overcompensates design patent owners for the relative contribution of their designs to the overall value of multi-component products like smartphones, and cautioned that upholding the Federal Circuit’s interpretation of section 289 would unleash an explosion of design patent NPEs.


The BPLA filed an amicus brief in support of Apple. It made two main arguments. First, the BPLA explained that the reason no explosion of design patent NPEs had taken place in the 130 years since Congress provided disgorgement of total profits as a remedy for design patent infringement—and was unlikely to take place in the future—is that there is no market for design patents comparable to that for utility patents. That is because design patents often protect what is at the core of a company’s brand identity, so companies are much more reluctant to license or to sell their design patents than they are to license or sell their utility patents.


Second, after observing that it is not for the Supreme Court to substitute its judgment for that of Congress regarding an appropriate remedy for design patent infringement, the BPLA argued that disgorgement of profits both provides the appropriate measure of compensation and the appropriate kind of deterrence. It provides the appropriate measure of compensation because, as Congress itself recognized, designs drive sales. Disgorgement also provides the appropriate kind of deterrence because of the special characteristics of design patents—they are nearly impossible to infringe innocently, but both very easy to infringe purposefully (by copying) and very easy to avoid infringing (by refraining from copying).

Section 289 of the Patent Act 



Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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