NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC., a California Corporation,
Plaintiff-Appellee
v.
SAMSUNG ELECTRONICS CO., LTD.,
a Korean corporation,
SAMSUNG ELECTRONICS AMERICA, INC.,
a New York corporation,
SAMSUNG TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,
Defendants-Appellants
______________________
2014-1335, 2015-1029
______________________
Appeals from the United States District Court for the
Northern District of California in No. 5:11-cv-01846-LHK,
Judge Lucy H. Koh.
______________________
Decided: February 7, 2017
______________________
WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, Boston, MA, for plaintiff-appellee. Also repre-
sented by ANDREW J. DANFORD, MARK CHRISTOPHER
FLEMING, ERIC FLETCHER, LAUREN B. FLETCHER, SARAH R.
FRAZIER, KEVIN SCOTT PRUSSIA; JAMES QUARLES, III,
2 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
THOMAS GREGORY SPRANKLING, SETH P. WAXMAN, Wash-
ington, DC; MARK D. SELWYN, Palo Alto, CA; RACHEL
KREVANS, RUTH N. BORENSTEIN, NATHANIEL BRYAN SABRI,
CHRISTOPHER ROBINSON, Morrison & Foerster LLP, San
Francisco, CA.
KATHLEEN M. SULLIVAN, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, for defendants-appellants.
Also represented by WILLIAM ADAMS; ROBERT JASON
BECHER, SUSAN RACHEL ESTRICH, MICHAEL THOMAS
ZELLER, B. DYLAN PROCTOR, Los Angeles, CA; VICTORIA
FISHMAN MAROULIS, Redwood Shores, CA; KEVIN
ALEXANDER SMITH, San Francisco, CA
______________________
Before PROST, Chief Judge, O’MALLEY, and CHEN, Circuit
Judges.
PER CURIAM.
This case returns to us on remand from the Supreme
Court of the United States. Samsung Elecs. Co. v. Apple
Inc., 137 S. Ct. 429 (2016). Samsung Electronics Co.,
Ltd., Samsung Electronics America, Inc., and Samsung
Telecommunications America, LLC (collectively, “Sam-
sung”) sought review of our prior decision in Apple Inc. v.
Samsung Electronics Co., 786 F.3d 983 (Fed. Cir. 2015),
arguing that we erred in our interpretation of design
patent damages pursuant to 35 U.S.C. § 289. The Su-
preme Court granted Samsung’s petition for a writ of
certiorari, reversed our prior judgment, and remanded the
case for further proceedings.
On remand, we recalled our mandate solely with re-
spect to design patent damages1 and reinstated the case.
1 Specifically, we recalled the mandate only to the
extent it related to the measure of damages awarded in
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 3
Both parties filed statements urging us to take different
actions. While Apple requests continued panel review,
Samsung requests that we remand to the district court for
a new trial on damages. For the reasons explained below,
we adopt neither suggested course of action. Instead, we
remand this case to the district court for further proceed-
ings, which may or may not include a new damages trial.
Section 289 provides, in relevant part, that whoever
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.” 35 U.S.C. § 289. The Supreme Court clari-
fied that a 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 manu-
facture.” Samsung, 137 S. Ct. at 434. The Court then
explained that the only question before it was narrow:
“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.” Id. 2
Looking to the statutory text, the Supreme Court con-
cluded that the term “article of manufacture,” as it is used
in § 289, “encompasses both a product sold to a consumer
and a component of that product.” Id. The Court de-
clined, however, to “set out a test for identifying the
connection with the district court’s partial final judgment
on Apple’s design patent claims.
2 Samsung also argued that § 289 “contains a cau-
sation requirement, which limits a § 289 damages award
to the total profit the infringer made because of the in-
fringement.” Samsung, 137 S. Ct. at 434 n.2. We rejected
that argument, and Samsung abandoned this theory
during oral argument to the Supreme Court. Id.
4 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD.
relevant article of manufacture at the first step of the
§ 289 damages inquiry.” Id. at 436. Instead, the Court
remanded the case for this court to “address any remain-
ing issues.” Id.
Apple argues that we can affirm the design patent
damages award without additional briefing or argument
because Samsung never asserted that the relevant article
of manufacture was anything other than Samsung’s
entire phones. According to Apple, Samsung failed to
proffer any evidence to the jury identifying any
smartphone component—as opposed to the entire phone—
as the relevant article of manufacture to which the pa-
tented design was applied. As such, Apple maintains that
the record permits only the conclusion that the relevant
articles of manufacture must be Samsung’s infringing
phones.
Samsung submits that we should remand to the dis-
trict court for a new trial on design patent damages.
According to Samsung, the district court’s § 289 instruc-
tion was erroneous in light of the Supreme Court’s deci-
sion. Samsung does not dispute that the trial court’s
recitation of the statutory language from § 289 was accu-
rate; it argues that the court should have said something
more to account for the fact that, in a multicomponent
product, there might be more than one article of manufac-
ture within the meaning of § 289. Samsung also argues
that remand is appropriate because it will enable the
district court to resolve any remaining issues.
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 these issues in the first instance.
On remand, the trial court should consider the par-
ties’ arguments in light of the trial record and determine
what additional proceedings, if any, are needed. If the
APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 5
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. Accordingly, we re-
mand this matter to the district court for further proceed-
ings.
REMANDED