WASHINGTON – The Department of Justice believes the U.S.
Supreme Court should turn a long-standing patent infringement battle waging
between Samsung Electronics Co. LTD and Apple Inc. back over to a trial court
for a ruling on whether a new trial should be held regarding the calculation of
The Department of Justice did not side with either party in the
amicus brief filed June 8.
However, the department said it was not clear from previous
court documents whether Samsung was able to successfully demonstrate that
damages should only be calculated for patents related to individual parts of
Apple’s iPhone products, namely the design of the phone’s front face, bezel and
icons grid, or whether the damages should instead be calculated for
infringement related to the design of the entire phone.
“The damages provision of the statute is relatively clear
and is more properly one for Congress,” Peter S. Menell, a Berkeley Law
professor and co-founder and director of the Berkeley Center for Law and
Technology, told the Northern California
In 2012, Apple was awarded $930 million in damages in its
case against Samsung. The latter’s subsequent attempt to reduce the amount it
owed resulted in a May 2015 ruling in which the appeals court cut Samsung’s
liability to $548 million. However, in the same ruling, the appeals court
agreed that Samsung had in fact infringed on Apple’s patents, particularly in
connection with the design of the individual components that were the discussed
in the department’s amicus brief.
Following the 2015 appeals court ruling, Samsung continued
its fight against what it deemed to be excessive damages, petitioning the
Supreme Court to hear its appeal of the part of the circuit court order dealing
with the design patents. The Supreme Court agreed in March to consider whether
a company found guilty of patent infringement should be ordered to compensate
for lost profits on a complete product in light of infringement of patents that
only make up part of the product in question.
Apple’s patent infringement claims against Samsung argue
that the damages awarded should take into account sales of the iPhone, not just
the amount lost in connection with the use of separate components of the phone’s
“Bottom line: The Supreme Court granted certiorari on the
wrong issue,” Menell said. “It should have reviewed the functionality defense.”
This defense, in essence, excludes functional features from the design patents
in favor of aesthetic or ornamental features that have no bearing on the
product’s ability to function.
In an official statement issued through a spokesman, Samsung
told the Northern California Record that
it has received “overwhelming support” from leading patent experts, concerned
companies and the U.S. government in its efforts to have the ruling in favor of
“If left uncorrected, the appeals court’s ruling could lead
to diminished innovation, pave the way for design troll patent litigation and
negatively impact the economy and consumers,” Samsung said.
In early June, Samsung also petitioned the Supreme Court to
review a February circuit court ruling related to separate litigation in which
Apple alleged infringement of five U.S. patents that it owns. In that case, Apple
was awarded $119.63 million in damages and royalties for infringement of three
of the patents. A jury found that Samsung had not infringed on the other two
The jury also found that Apple had infringed on one of two
patents at issue in a Samsung countersuit. Samsung was awarded $158,400 in
damages as a result of that infringement.