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This case presents two issues that justify this Court’s review.

First, the Federal Circuit upheld a finding of design patent infringement based on the very same Apple designs that it found functional under trade dress law. Such a counterintuitive outcome is possible because the Federal Circuit has constructed a highly constrained definition of functionality in design patent law, which is at odds with this Court’s precedent in both utility patent and trade dress cases. Coupled with its recent re-interpretation of the design patent infringement standard, the Federal Circuit’s approach to functionality makes it quite likely that defendants will be held liable for doing nothing more than implementing functional features that could not be protected with utility patents. This Court should grant review to address the relationship of functionality to design patent infringement.

Second, despite Samsung’s own patents, its engineering and design work, and the fact that technologies developed by Google and countless other inventors are incorporated in Samsung’s phones, the Federal Circuit affirmed the jury’s damages award of Samsung’s entire profit from phones that were held to infringe Apple’s design patents. Under the Federal Circuit’s reading of 35 U.S.C. §289, design patent infringers, unlike infringers of copyrights, trademarks, or utility patents on technical inventions, are liable for their entire profits from an infringing product, even if the patented design is only a minor feature of that product


Table of Authorities includes:

Mark P. McKenna & Katherine J. Strandburg, Progress and Competition in Design, 17 STAN. TECH. L. REV. 1 (2014).

Mark A. Lemley & Mark P. McKenna, Scope, ___ Wm. & Mary L. Rev. ___ (forthcoming 2016). [57 Wm. & Mary L. Rev. 2197 (2016)]