Apple v. Samsung: Trade Dress Functionality and Total Profits without Apportionment

by Wilson Elser

The highly publicized Apple v. Samsung litigation saga began in April 2011 when Samsung alleged various infringements of patents and trade dress related to Apple’s iPhone. A jury awarded more than $1 billion in damages. In a May 18, 2015, opinion, a three-judge panel of the Federal Circuit reversed on trade dress, decreasing some damages, but affirmed on design and utility patent infringement and damages. The sometimes forgotten design patents were the highlight of the opinion. The Court upheld an award of total profits from Samsung’s phones for infringement of Apple’s design patents, rejecting an apportionment or causality analysis that would relate the profits to only the infringing article. Based on the potential for total profits and the finding of functionality for trade dress, undoubtedly this decision will prompt businesses to closely evaluate the value of filing more design patent applications and enforcing existing design patents.

Trade Dress
Trade dress is often referred to as the “look and feel” of the characteristics of visual appearance of a product or its packaging. For the iPhone, Apple asserted unregistered trade dress claims based on elements such as a “rectangular product with four evenly rounded corners” and a registered trade dress for the “design details in each of the sixteen icons on the iPhone’s home screen.” However, the “rounded corners” of the iPhone improved “pocketability” and “durability,” and in the Court’s view, the combination of icon designs showed nothing other than an assembly of functional parts.

Because trade dress protects only nonfunctional aspects of a product’s physical detail or design and functional aspects fall within the purview of patent law, Apple’s asserted trade dress claims had some utilitarian functionality and were not protectable under the Lanham Act.The Federal Circuit applied the Ninth Circuit’s Disc Golf factors (i.e., utilitarian advantage, alternative designs, advertising of advantages, and method of manufacture) to analyze functionality. It recognized, however, the Supreme Court’s more recent and seemingly broader rule on functionality in TrafFix, “a feature is also functional … when it affects the cost or quality of the device.” Even under the Disc Golf factors, there was no question that the trade dress had some functionality and therefore were not protectable. The Federal Circuit referenced the “ease of use” claims by Apple to demonstrate utilitarian functionality, while Apple focused on the “beauty” of the design. Although the Court stated Apple pursued both functionality and beauty, aesthetic functionality, another potential bar to protection, was never at issue in the opinion.

In light of the Federal Circuit’s emphasis on non-functionality as a prerequisite to warrant trade dress protection, the case may inspire companies to evaluate their reliance on trade dress, design patents or an overlap of both.

Design Patents
The Federal Circuit rejected Samsung’s arguments challenging Samsung’s liability for infringement of Apple’s three design patents. First, Samsung contended that the district court erred by not excluding the functional elements from the claim scope and construction in the jury instructions. The Federal Circuit disagreed, finding that no rule exists that entire elements dictating functional purpose or structural aspects be eliminated from the claim scope.

Second, Samsung argued the district court erred by misleading the jury with the instruction that actual deception was not required and for providing guidelines in considering prior art. The Federal Circuit determined the jury instructions were clear and the jury must compare the asserted design against the prior art.

Third, and perhaps of most significance, the Federal Circuit upheld the ruling to allow the jury to award Samsung’s total profits on its infringing phones as damages. Samsung argued that an apportionment or causation analysis that limits profits to the infringement or infringing article of manufacture should be applied. The Federal Circuit quoted the entirety of section 289 of Title 35, which addresses design patent infringement damages. It emphasized that section 289 states, in pertinent part, an infringer of a design patent “shall be liable to the owner to the extent of his total profit….” Distinguishing Samsung’s phones as a single article of manufacture not sold separately, referencing a piano case and an entire piano in a 1915 case where the Second Circuit allowed an award of profits for only the piano case, the Federal Circuit held that the plain language of the statute and prior precedent required an award of total profits without apportionment. As discussed in a footnote in the opinion, an award of entire profits may make no sense in the modern world, but in the Court’s view the issue is a matter of policy and for Congress to decide.

Utility Patents
Nothing in the decision as to utility patents was surprising. For Samsung’s “indefiniteness” argument directed to the claim term “substantially centered,” the Court held that Samsung is seeking a level of precision that exceeds the definiteness required of valid patents. Samsung also argued claims were anticipated by a prior art reference; however, the Court found that the jury reasonably credited Apple’s expert who testified that the technology was not anticipated and taught by the prior art reference. The Federal Circuit affirmed the lost profits and reasonable royalty damages awarded.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Wilson Elser | Attorney Advertising

Written by:

Wilson Elser

Wilson Elser on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.