Designing an Enforcement Strategy in the Wake of Samsung v. Apple

Transcription

1 Designing an Enforcement Strategy in the Wake of Samsung v. Apple Scott McBride MCANDREWS HELD AND MALLOY George Raynal SAIDMAN DESIGNLAW GROUP

2 Designing an Enforcement Strategy in the Wake of Samsung v. Apple I. THE SUPREME COURT DECISION AND REMAND III. IN THE WAKE OF PACIFIC COAST MARINE IV. LITIGATION STRATEGY V. APPLICATION STRATEGY VI. TC HEARTLAND AND DESIGN PATENTS

3 I. THE SUPREME COURT DECISION AND REMAND SUPREME COURT DECISION SAMSUNG ELECTRONICS CO., LTD. v. APPLE INC. (15-777, Dec. 6, 2016) Under 289, 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. HELD: In the case of a multicomponent product, the relevant article of manufacture for arriving at a 289 damages award need not be the entire end product sold to the consumer but may be only a component of that product.

4 I. THE SUPREME COURT DECISION AND REMAND SUPREME COURT DECISION SAMSUNG ELECTRONICS CO., LTD. v. APPLE INC. (15-777, Dec. 6, 2016) Damages award under 289 involves two steps: (1) identify the article of manufacture to which the infringed design has been applied; and (2) calculate the infringer s total profit made on that article of manufacture. Remanded for further proceeding consistent with this order.

5 I. THE SUPREME COURT DECISION AND REMAND FEDERAL CIRCUIT DECISION APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. ( , Dec. 6, 2016) In short, the parties dispute what jury instructions the current trial record supports. Because the district court is better positioned to parse the record to evaluate the parties competing arguments, we remand for the district court to consider the parties arguments in light of the trial record and determine what additional proceedings, if any, are needed.

6 I. THE SUPREME COURT DECISION AND REMAND FEDERAL CIRCUIT DECISION APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. ( , Dec. 6, 2016) If the court determines that a new damages trial is necessary, it will have the opportunity to set forth a test for identifying the relevant article of manufacture for purposes of 289, and to apply that test to this case.

7 I. THE SUPREME COURT DECISION AND REMAND DISTRICT COURT APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. (5-11-cv-01846, N.D. Cal.) Hearing on Waiver Issue - June 29 Joint Case Management conference - July 12

8 I. THE SUPREME COURT DECISION AND REMAND Samsung: the test for determining an article of manufacture should look principally to two factors: (1) The scope of the designs claimed in the asserted patents, as depicted in the patent figures, excluding any non-ornamental features and all ornamental features disclaimed by the use of dotted lines, as well as any relevant patent prosecution history; and (2) The corresponding parts or portions of the accused products to which the patented designs are applied. Joint Case Management Conference Statement (4/3/17)

9 NORDOCK, INC. v. SYSTEMS, INC. (2-11-cv-00118, E.D. Wisc) LIP AND HINGE PLATE FOR A DOCK LEVELER D579,754 Accused Jury awarded Nordock $46,825 but no profit

10 1 ST FEDERAL CIRCUIT DECISION NORDOCK, INC. v. SYSTEMS, INC. (803 F.3d 1344, Fed. Cir. 2015) On appeal, Nordock argued the district court erred denying Nordics motion for a new trial on 289 damages Systems damages expert used cost savings method to opine that profits attributable to a small portion of the dock levelers were less than $15 per unit Jury awarded reasonable royalty damages (more than $15 per unit per System s expert)

11 SUPREME COURT DECISION SYSTEMS, INC. v. NORDOCK (15-978, Dec. 12, 2016) Judgment VACATED and case REMANDED for further consideration in light of Samsung Electronics Co. v. Apple Inc., 580 U. S. (2016).

12 2 ND FEDERAL CIRCUIT DECISION NORDOCK, INC. v. SYSTEMS, INC. (Fed. Cir.) Both the district court and the jury were confused with respect to the interplay between 35 U.S.C. 284 and 35 U.S.C. 289"

13 COLUMBIA SPORTSWEAR v. SEIRUS INNOV. ACCESS. (3:15-cv-00064, D. Or.) 8/10/16 - On MSJ, design patent found valid and infringed HEAT REFLECTIVE MATERIAL D657,093 Accused The striking visual similarity between Seirus s design and Columbia s patented design is likely to confuse an ordinary observer, and therefore, Columbia s motion is granted. 2/13/17 - Parties ordered to submit opening briefs on the issue of the legal standard for damages

14 COLUMBIA SPORTSWEAR v. SEIRUS INNOV. ACCESS. (3:15-cv-00064, D. Or.) D657,093

15 COLUMBIA SPORTSWEAR v. SEIRUS INNOV. ACCESS. (3:15-cv-00064, D. Or.) Columbia: 3 Step Test The infringing product bearing the patented design as sold to the consumer is the relevant article of manufacture if 1 of 3 conditions are met.

16 COLUMBIA SPORTSWEAR v. SEIRUS INNOV. ACCESS. (3:15-cv-00064, D. Or.) Columbia: 3 Step Test 1. The product is a multicomponent product and the patented design is applied to all or a material part of all of the components; or

17 COLUMBIA SPORTSWEAR v. SEIRUS INNOV. ACCESS. (3:15-cv-00064, D. Or.) Columbia: 3 Step Test 2. The product is a multicomponent product and the patented design is applied to all or a material part of all of the components; or

18 COLUMBIA SPORTSWEAR v. SEIRUS INNOV. ACCESS. (3:15-cv-00064, D. Or.) Columbia: 3 Step Test 3. The product is a multicomponent product and the component or components to which the patented design is applied creates the basis for the consumers demand for the product, or substantially creates the value of the other component parts of the product.

19 COLUMBIA SPORTSWEAR v. SEIRUS INNOV. ACCESS. (3:15-cv-00064, D. Or.) Columbia: 3 Step Test If one of the 3 conditions not met, the relevant article of manufacture for calculating disgorgement of profits is the portion of the product to which the design has been applied. Defendant bears the burden of producing evidence and proving that the relevant AoM is a portion of an entire product as sold

20 COLUMBIA SPORTSWEAR v. SEIRUS INNOV. ACCESS. (3:15-cv-00064, D. Or.) Seirus: DOJ Test Four objective considerations to help identify the article that most fairly may be said to embody the defendant s appropriation of the patented design without unnecessarily sweeping in aspects that are unrelated to that design

21 COLUMBIA SPORTSWEAR v. SEIRUS INNOV. ACCESS. (3:15-cv-00064, D. Or.) Seirus: DOJ Test 1. the scope of the patented design 2. the relative prominence of the design within the product as a whole 3. whether the design is conceptually distinct from the product as a whole; and 4. the physical relationship between the patented design and the rest of the product

22 DYSON v. SHARKNINJA (1:14-cv-00779, N.D. Ill.) D668,010 D668,823 D577,163

23 DYSON v. SHARKNINJA (1:14-cv-00779, N.D. Ill.) Dyson MPSJ Regarding Disgorgement Damages (5/16/17) - 35 U.S.C Administrative Expenses - Related to the infringement? - Vary with increases in production of infringing products - Infringer s Burden

24 DYSON v. SHARKNINJA (1:14-cv-00779, N.D. Ill.) Dyson Motion to Exclude Shark s Damages Expert - Expert identifies relevant article of manufacture by selecting items from the bill of materials that are visible to the eye - to account for the functional features

25 TOYO TIRE & RUBBER CO. LTD. v. ATTURO TIRE CORP cv N.D. Ill. NEXT? broken lines? Expert Reports due 7/12/17 Accused

26 broken lines? NST GLOBAL LLC v. EWER ENT. LLC 8-15-cv M.D. Fl. NEXT? Accused Expert Reports due 8/18/17

27 SONOS, INC. v. D&M HOLDINGS INC cv D. Del. NEXT? D559,197 Accused Only Claimed Portions

28 MMI, INC. v. COLEMAN POWER SPORTS 2-15-cv D. Az. shell NEXT? D591,203 Accused Defendant s MSJ invalidity for anticipation pending Bifurcation of discovery and damages denied

29 Issue regarding a test for the Relevant Article of Manufacture What is the claimed design? Is it a substantial amount of the product sold? Nexus to consumers? Sold separately? Integral? Prior art? Multiple asserted patents?

30 III. IN THE WAKE OF PACIFIC COAST MARINE PACIFIC COAST MARINE WINDSHIELDS v. MALIBU BOATS INC. 739 F.3d 694 (Fed. Cir. 2014) - Prosecution history applies to design patents 3 Questions: (1) whether there was a surrender (2) whether it was for reasons of patentability (3) Whether the accused design is within the scope of surrender

31 III. IN THE WAKE OF PACIFIC COAST MARINE PACIFIC COAST MARINE WINDSHIELDS v. MALIBU BOATS INC. 739 F.3d 694 (Fed. Cir. 2014) 29/258,753

32 III. IN THE WAKE OF PACIFIC COAST MARINE PACIFIC COAST MARINE WINDSHIELDS v. MALIBU BOATS INC. 739 F.3d 694 (Fed. Cir. 2014) Examiner s Grouping: opening count matters hatch matters shape does not matter no drawings with 3 side openings 29/258,753

33 III. IN THE WAKE OF PACIFIC COAST MARINE PACIFIC COAST MARINE WINDSHIELDS v. MALIBU BOATS INC. 739 F.3d 694 (Fed. Cir. 2014) D555,070 Accused No Divisional Filed

34 III. IN THE WAKE OF PACIFIC COAST MARINE ADVANTEK MARKETING v. SHANGHAI WALK-LONG TOOLS 16-cv-3061 (C.D. Cal.) restriction D715,060 Accused Order Granting D s Motion for Judgment on the Pleadings

35 IV. LITIGATION STRATEGY A. WHEN DOES 289 COME INTO PLAY? Initial Pleadings Expert Reports and Related Motions MSJ Jury Instructions Post Trial Motions

36 IV. LITIGATION STRATEGY B. FACTORS ISSUES Plaintiff s cautioned to look out for - adverse claim construction - functionality - dissection vs. overall appearance - prosecution history, including amendments, restriction and arguments - apportionment arguments

37 V. APPLICATION STRATEGY WHAT IS THE LIKELY ACCUSED PRODUCT TO WHICH THE PATENTED DESIGN WILL BE APPLIED? CONSIDER TITLE AND OTHER AoM SIGNALS Titles that span articles, e.g., Automobile and/or Toy Replica Thereof Disclose and/or Claim Product and Product GUI together? * Classification CONSIDER DRAWINGS TO INCLUDE Embodiments of different scope (broken lines) For partial designs, claim feature + overall Environment AVOID RESTRICTION; FILE ALL DIVISIONAL(S) IF RESTRICTED

38 V. APPLICATION STRATEGY Disclose and/or Claim Product and Product GUI together? * Protecting designs in the digital landscape - online marketplace enforcement - 3D model platforms - virtual / augmented reality briefcase display screen

39 IV. HEARTLAND AND DESIGN PATENTS TC HEARTLAND v. KRAFT FOODS GROUP BRANDS Defendant s Residence in 28 U.S.C. 1400(b) means only the state in which a company is incorporated, not wherever it is subject to personal jurisdiction. Patent lawsuits limited to district where defendant is incorporated or in districts where there has been an act of infringement and defendant has a regular established place of business.

40 IV. HEARTLAND AND DESIGN PATENTS TC HEARTLAND v. KRAFT FOODS GROUP BRANDS Were Design Patent Plaintiff s taking advantage of patent litigation friendly E.D. Texas? 28 complaints with design patents filed in E.D. Texas since % Plaintiffs - Texas businesses 14% Defendants - Incorporated in Texas 11 complaints with design patents filed in Delaware since 2014