It’s been 120 years since the US Supreme Court last heard a case regarding design patents. Now it has the opportunity to do so again, and it should, because technology has advanced yet the interpretation of laws protecting innovations has become ill fitting and out of date.

Samsung recently agreed to pay $548 million in damages to Apple following several appeals regarding claims that Samsung infringed on some of Apple’s design patents. Samsung has petitioned the U.S. Supreme Court to review the case and address the issues it raises that extend well beyond smartphones. 

This legal clash of tech titans over whether Samsung infringed Apple’s design patents spawned extended debate over what is protected by a design patent and may lead – if the dispute is reviewed and precedent set – to a more solid framework for design patent protections and dispute resolution clarity in future cases. 

For more than five years, these companies slugged it out concerning the limitations of design patents, how to determine whether patented designs were infringed, and the proper remedies.  The case is notable, not just because of the size and importance of these companies, but also because of the precedents that this case sets for our digital age when hardware and software are merging together in novel and unforeseen ways. 

Rarely are cases so well teed up for the Supreme Court to offer crucial guidance in an area of law that has become so muddled.  Given the extensive motions, trials, remands and appeals between Apple and Samsung this case seems primed for Supreme Court review because the legal issues have been highly refined allowing the Court to issue narrow decisions on legal grounds that nevertheless have broad impact.

Important matters are at stake, such as the dividing lines legally between the functional and the ornamental. The Supreme Court has the opportunity to resolve two essential questions. First, what is the proper scope of a design patent? Second, how should a court determine damages from infringement of a design patent, particularly when the product at issue contains many design and functional elements – in other words, the whole product doesn’t infringe on the individual patented design, and vice-versa, the design frequently does not cover the entire product? 

I’ve written before about the mangled and tortured jurisprudence around design patents. Convoluted does not adequately describe the state of design patent policies and interpretations. All industries should applaud if the US Supreme Court grants cert to review the case, if only to be closer to establishing bright line rules established around this still murky area of the law. 

Despite their infringement claims, even Apple may benefit from legal clarity that only a decision by the Supreme Court can offer.  Given their hefty investment in branding, Apple has a lot at stake and should support more precision and uniformity of the legal protections for design patents and their adjudication in disputes.

As I’ve written previously, the law concerning design patents needs clarification to better protect the technology economy. Should colossal awards for singular design patent infringement continue, these cases will advertise the opportunity for patent trolls to create further chaos for any manufacturer.

With utility patents, awards are typically tied to the value of the technology the patent covers rather than the combined value of all the patents within a product. Enormous damage awards, like those awarded in this case, provide an incentive for patent trolls and other abusers to wield design patents and threaten businesses with the hope of receiving financial awards for the total profit of a given product. Small businesses are at particular risk for design patent trolling, because “total profit” awards are even more harmful for businesses offering a few or a singular product. While Apple is no patent troll and indeed has fought off numerous trolls itself in the past, the consequences from letting stand earlier decisions in this case will offer trolls new opportunities to harass businesses.

Our design patent policies were enacted at a time when design patents frequently covered an entire product. Today there are often thousands of individual patents within one product, and even more as the Internet of Things allows users to connect a wide array of our devices.

Unless the Supreme Court steps in now to grant cert and take this opportunity to straighten out the law, confusion will reign. This cert petition requesting that the US Supreme Court review the case presents an important opportunity to provide clarity in policies and judicial procedures surrounding design patents. It is an opportunity that the court should not dismiss given the central role of technology in the modern economy.


Tim Sparapani is a data privacy law and policy expert and Senior Policy Fellow at CALinnovates.