Yesterday, after almost four days of deliberation, the Apple v. Samsung jury decided Samsung owed Apple over $500 million of Samsung’s profits.  

Faced with an artificial and unsound test, the jurors struggled to understand just what they were supposed to do.

Ultimately, the jurors awarded Apple profits on the entire Samsung device for Apple’s icon grid patent.  One juror is reported to have explained that the article of manufacture for the icon grid patent “was the whole phone because you need the phone to see it.”  If Microsoft Solitaire (with cards originally designed by Apple’s own expert witness) had an infringing design, all of a sudden the entire computer is at risk—without a processor, display, memory, and hard drive, there’s no way to display the cards.  That logic creates real risks for the computing industry and for new industries like smart home and IoT products.  

Samsung will almost certainly appeal this verdict.  But unless the Federal Circuit decides that the flawed government test selected by Judge Koh isn’t the right test, the disincentive to investment created by this decision will remain.  It’s time to consider whether design patents still need an additional remedy and whether § 289 has outlived its useful lifespan.

Frederick Fish might as well have been talking about design patents when he wrote “[t]he only solution of the difficulty is to eliminate the recovery of profits which as [sic] been allowed purely because of a series of historical accidents.”