Apple and Samsung head for yet another patent damages trial

Judge Lucy Koh also details how to determine what "article of manufacture" actually did the infringing.

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Shara Tibken was a managing editor at CNET News, overseeing a team covering tech policy, EU tech, mobile and the digital divide. She previously covered mobile as a senior reporter at CNET and also wrote for Dow Jones Newswires and The Wall Street Journal. Shara is a native Midwesterner who still prefers "pop" over "soda."
Shara Tibken
3 min read

Apple and Samsung will be heading back to court for another damages retrial. 

Watch this: New trial may recalculate what Samsung owes Apple for copying iPhone

Get ready for Apple versus Samsung , round number -- oh, forget it, we don't remember, either. 

The two tech giants will head back to district court for yet another trial looking into design patent infringement. Judge Lucy Koh, in an order signed Sunday, has told the companies to meet again in a courtroom to determine how much Samsung owes Apple for infringing three patents. 

The decision follows a Supreme Court ruling a year ago that said damages could be determined differently than they typically had been in the past.  Damages for design patent infringement, the justices said, can be based only on the part of the device that infringed the patents, not necessarily on the entire product.

"The Court finds that the jury instructions given at trial did not accurately reflect the law and that the instructions prejudiced Samsung by precluding the jury from considering whether the relevant article of manufacture ... was something other than the entire phone," Koh wrote in the order, handing Samsung a victory in its quest for a retrial. 

Samsung said in a statement that it welcomes the new trial. "This is a historic opportunity to determine how the US Supreme Court's guidance on design patent damages will be implemented in our case and future cases," the company said.

Apple didn't respond to a request for comment. 

The companies have been battling over patents since 2012, and a question about how much money could be owed for infringing design patents made it all the way to the Supreme Court in late 2016. In December, the highest court in the land, in a unanimous opinion, issued its ruling on the scope of the infringing "article of manufacture."

That ruling reshapes the value of designs and how much one company may have to pay for copying the look of a competitor's product. Before that time, the law said an award could be collected on the entire profits of an infringing device. In this case, that's the $399 million Samsung paid Apple last last year. 

But the Supreme Court didn't give guidance on how damages should be decided, and in February, an appeals court punted the case back to district court for the Northern District of California.

Apple had asked for the appeals court to uphold the earlier damages ruling because Samsung never showed an "article of manufacture" to be anything other than an entire phone. Samsung, meanwhile, wanted the case sent back to district court for a new damages trial. 

Koh, in her order on Sunday, detailed how to define an "article of manufacture" at question in a case. Previously, Apple had argued that the article of manufacture was an entire phone. Koh said the test for determining what item has been infringed will be based on four factors:

  • "The scope of the design claimed in the plaintiff's patent, including the drawing and written description;
  • The relative prominence of the design within the product as a whole;  
  • Whether the design is conceptually distinct from the product as a whole; and 
  • The physical relationship between the patented design and the rest of the product, including whether the design pertains to a component that a user or seller can physically separate from the product as a whole, and whether the design is embodied in a component that is manufactured separately from the rest of the product, or if the component can be sold separately."

Koh said the plaintiff "shall bear the burden of persuasion on identifying the relevant article of manufacture and proving the amount of total profit on the sale of that article." 

In a separate ruling, Koh said that a case management meeting set for Oct. 25 will still be held and that both Apple and Samsung must file plans "advancing the case schedule and trial date" by that point. 

Update on October 23 at 10 a.m. PT with Samsung comment.

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