Supreme Court Rocks Patent World

Recently pending before the U.S. Supreme Court was a decision on whether Samsung would owe Apple nearly $400 million in damages. The court’s ruling on that case will alter how much Samsung owes for patent infringement, and change patent law going forward. The ruling clarifies the meaning of “article of manufacture” under section 289 of the Patent Act. The ruling will also shrink the damages available in similar cases in the future.

That section of the Patent Act, 289, prohibits one from manufacturing or selling an article of manufacture with the same patent or protected design. The question before the court was whether something like a smartphone could be patented in total, or if only the parts making up the total could be protected.  he court ruled that an end product made up of many products does not need to be the article of manufacture, but could be.

Ruling this way will send the case back to the lower courts to resolve how much Samsung will owe Apple. It is likely that we have not seen the last of this case, and future rulings will continue to shape patent and intellectual property law.

Sum of Parts, or Total?

Apple revolutionized the world with a small, electrically powered, rectangular smartphone. The iPhone came on the scene in a world dominated by personal computer devices, Blackberry phones, and other gizmos. The iPhone took all of those different electronic devices, added a laptop, and desktop, and fit them in everybody’s pocket. It was not unlike trading in the horse and buggy for an automobile.

Once other phone companies realized which way cellular phone technology was headed, they were not going to be left behind. Almost immediately after the invention and popularization of the iPhone, other companies like Samsung came up with their own smartphones to compete. But Apple saw that as an infringement on their inventions and patent, so they sued.

In suing Samsung, Apple was contesting their right to create, market, and sell a phone that looked and performed like an iPhone. They won their case at trial and through the appellate process, collecting a judgment of $399 million dollars. But the Supreme Court overturned the judgment and remanded it to the lower courts to decide which patents were infringed upon, and how much Apple was damaged by any infringement.

The takeaway from this case is how companies should be viewing articles of manufacture going forward. The court’s ruling indicates that a patent infringement case cannot necessarily rely on the finished product as the infringed upon article, but must determine at trial whether the finished product was the patented article, or the parts used to make it.

Complexities of Patent and Intellectual Property Law

This ruling illustrates how patent and intellectual property law continues to become more and more complicated. A company’s future well being will often rely on interpreting and applying these laws properly. As you contemplate what your legal needs are related to IP law, contact us. At the Royse Law Firm  our team of patent and intellectual property professionals are ready to advise and counsel you based on the most recent changes in the law.

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Roger Royse

Roger Royse, the founder of the Royse Law Firm, works with companies ranging from newly formed tech startups to publicly traded multinationals in a variety of industries. Roger regularly advises on complex tax structuring, high stakes business negotiations and large international financial transactions. Practicing business and tax law since 1984, Roger’s background includes work with prominent San Francisco Bay area law firms, as well as Milbank, Tweed, Hadley and McCloy in New York City.
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