1. The 2016 Supreme Court Term: Patent Cases & the Metaphysics of Cheerleading Uniforms
Mark C. Fleming

2. Pending Cases – Fall 2016 Term
Design patent damages
Samsung v. Apple* (15-777) – argument Oct. 11
Patent laches
SCA v. First Quality* (15-927) – argument Nov. 1
Foreign/supplier inducement, 271(f)(1)
Life Techs. v. Promega* ( ) – argument Dec. 6
Copyright protection for features of useful articles
Star Athletica v. Varsity Brands (15-866) – argument Oct. 31

3. Samsung v. Apple Question presented:
Whether, where a design patent is applied to only a component of a product, an award of infringer’s profits should be limited to those profits attributable to the component.
35 U.S.C. § 289:
Whoever during the term of a patent for a design … sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit

4. Samsung v. Apple – Federal Circuit decision
No legal error in the jury instructions
No appeal of substantial evidence supporting the jury instruction
BUT: The parties and SG disagree as to whether the Federal Circuit ruled that the “article of manufacture” may or must be the full product as sold

5. Samsung v. Apple – Samsung’s Position
An “article of manufacture” can be less than an entire product, thus limiting § 289’s total profit
Supported by the section’s text, history, purpose
Section 289 twice uses the term “article of manufacture” to mean that to which “the patented design” is or “has been applied”
Where a claimed design covers only a component of a product as sold, the relevant “article of manufacture” is the component and not the entire product
And therefore, the relevant “total profit” is that attributable to the component.
Identifying the “article of manufacture” is a question of law and fact
Previously argued that traditional principles of causation and equity warranted “apportionment” to the patented design
Abandoned at oral argument

6. Samsung v. Apple – Apple’s Position
Evidence:
Samsung introduced no evidence that a smartphone component was the relevant article of manufacture or the basis for its damages calculations.
Dobson:
Congress enacted § 289 because the Dobson decisions produced unjust results for design patentees where “the design sells the article.”
Question of fact:
Determining the relevant “article of manufacture” on which the infringer’s “total profit” should be awarded is—where disputed—a factual question for the jury.
Section 289 did not create any per se rule that infringement of a design patent covering only a portion of a device always entitles the plaintiff to an award of total profit on the entire device.
The defendant bears the burden of establishing that the infringing “article of manufacture” is anything less than the product as sold.

7. Samsung v. Apple – SG’s Position
Section 289 does not permit apportionment among product components in the traditional sense.
But § 289 damages are limited to the article of manufacture to which the design was applied.
Sometimes the article is a component of the product; then, the patentee only gets infringer’s total profit for the component, not the product.
Five considerations for identifying the article.
Remand is warranted to determine whether Samsung met its burden
Apple agrees with SG’s legal rule, but disagrees that remand is warranted

8. Samsung v. Apple – Oral Argument
Justice Kennedy: identifying the “article of manufacture” should be a matter for expert testimony
Samsung relies heavily on the article identified in the patent, which encourages broad claiming
SG/Apple say the burden of proving an article other than the whole product is on the infringer
Significant attention to how one would determine the profit attributable to an “article of manufacture” that was less than a full product – not briefed at all
Consumer surveys; accounting records; cost and profit margin

9. Pending Cases – Fall 2016 Term
Design patent damages
Samsung v. Apple* (15-777) – argument Oct. 11
Patent laches
SCA v. First Quality* (15-927) – argument Nov. 1
Foreign/supplier inducement, 271(f)(1)
Life Tech. v. Promega* ( ) – argument Dec. 6
Copyright protection for features of useful articles
Star Athletica v. Varsity Brands (15-866) – argument Oct. 31

10. SCA Hygiene v. First Quality
Question presented:
Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act’s six-year statutory limitations period, 35 U.S.C. § 286.
35 U.S.C. § 286:
Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

11. SCA Hygiene v. First Quality – Federal Circuit
§ 282 of the Patent Act codifies laches as a defense to the six-year statutory look-back period
History and judicial consensus before Patent Act reinforce Congress’s intent to preserve and codify laches
6-5 decision

12. SCA v. First Quality – SCA’s Position
The more specific provision (§ 286) prevails over the less specific (§ 282, referring to “unenforceability”).
Under Petrella, the time limitation on suit is inconsistent with application of laches

13. SCA v. First Quality – First Quality’s Position
The text, history, and purpose of the Patent Act distinguish it from the Copyright Act and this case from Petrella.
Section 282 preserves defenses of “unenforceability,” which includes laches, which was applied in patent infringement cases for decades before the 1952 Patent Act.
There are significant differences between patent and copyright protection: “the danger that patentees will delay suit until infringers with no knowledge of the patent are locked into using the patented technology.”
Court should retain the presumption that a delay of six years or more is unreasonable and prejudicial:
It predates the 1952 Act, is widely recognized by appellate courts, and provides a consistent and useful benchmark.
Properly places the burden on the patentee to explain long periods of pre-suit delay.

14. SCA v. First Quality – Oral Argument
Much discussion of the meaning of “unenforceability,” the weight of the subsequent view of draftsman P.J. Federico on the persistence of laches, and the uniformity of pre-1952 laches practice in patent cases
Anti-laches policy: Not needed to encourage patentees to sue promptly, and can lead to premature suits
Pro-laches policy: avoids “lying in wait” to the prejudice of honest market participants who invest in the field believing that they are safe
Breyer, J.: Copyright is different because you can deduct investment costs from damages; can’t be done in patent law, where damages are significant

15. Pending Cases – Fall 2016 Term
Design patent damages
Samsung v. Apple* (15-777) – argument Oct. 11
Patent laches
SCA v. First Quality* (15-927) – argument Nov. 1
Foreign/supplier inducement, 271(f)(1)
Life Tech. v. Promega* ( ) – argument Dec. 6
Copyright protection for features of useful articles
Star Athletica v. Varsity Brands (15-866) – argument Oct. 31

16. Life Techs. Corp. v. Promega Corp.
Question presented:
Whether the Federal Circuit correctly rejected petitioners’ desired per se rule that one component can never constitute “a substantial portion of the components of a patented invention” under § 271(f)(1).
35 U.S.C. § 271(f)(1):
Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

17. Life Techs. v. Promega – Federal Circuit Ruling
271(f)(1)’s requirement that a “substantial portion” be shipped abroad can be satisfied by shipment of a single component, if that component is qualitatively important to the invention
Here, Life’s own witnesses admitted the importance of the shipped component (Taq polymerase) to the claimed DNA testing kits that were manufactured abroad

18. Life Techs. v. Promega – Life Tech’s Position
Reversal of Federal Circuit opinion warranted because 271(f)(1) requires shipment of two or more components as a “substantial portion.”
CAFC’s qualitative interpretation was too broad: the patented genetic testing kit would not operate correctly if any one of its five components were removed.
Section 271(f)(2) covers supply of any component while 271(f)(1) only refers to plural components.
CAFC’s decision is contrary to Microsoft v. AT&T, which expressly noted that § 271(f)(1) and (f)(2) differ on the quantity of components that must be supplied from the United States for liability to attach.
Contrary to the presumption against extraterritoriality – CAFC once again intrudes on foreign markets.

19. Life Techs. v. Promega – SG’s Position
CAFC’s holding subjects domestic exporters to increased threat of liability for supplying a single staple article.
Text:
While “substantial” has both quantitative and qualitative meanings, § 271(f)(1) covers quantity: when used with a plural noun, “all” means “the whole of” or “the whole number of.”
Presumption against extraterritoriality:
Here, liability could be based on domestic conduct that plays a relatively minor role in the transaction, but hindering legitimate foreign interest in permitting their citizens to use imported staple articles to assemble and sell inventions that are not patented abroad.
Consistency:
A quantitative test that compares the number of components supplied to the total number of components of the patented invention is easier for courts to apply.

20. Life Techs. v. Promega – Respondent’s Position
District court’s JMOL decision created a rigid, unsupported rule, whereby the supply of a single component from the United States—no matter how important—could never give rise to liability under § 271(f)(1).
Substantiality is an issue of fact for the jury, necessitating case-specific analysis across multiple dimensions, including quantity and relative importance.
Here, Life admitted Taq was the main component to the kit.
Plain language does not mandate strictly quantitative interpretation, which would lead to absurd results.
Other inducement requirements limit risk of supplier liability.

21. Pending Cases – Fall 2016 Term
Design patent damages
Samsung v. Apple* (15-777) – argument Oct. 11
Patent laches
SCA v. First Quality* (15-927) – argument Nov. 1
Foreign/supplier inducement, 271(f)(1)
Life Tech. v. Promega* ( ) – argument Dec. 6
Copyright protection for features of useful articles
Star Athletica v. Varsity Brands (15-866) – argument Oct. 31

22. Star Athletica v. Varsity Brands
Question presented:
What is the appropriate test to determine when a feature of a useful article is protectable under section 101 of the Copyright Act.
17 U.S.C. § 101:
A “useful article” is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article”.
“Pictorial, graphic, and sculptural works” include two-dimensional and three-dimensional works of fine, graphic, and applied art…. [T]he design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

23. Star Athletica v. Varsity – Decisions Below
District Court
The utilitarian function of a cheerleading uniform is “to clothe the body in a way that evokes the concept of cheerleading.”
Varsity’s copyrighted ornamental elements (stripes, chevrons, zigzags etc.) were not separable from this cheerleading function, thus not copyrightable.
Sixth Circuit (2-1)
Even if not physically separable, copyrighted elements may be conceptually separable (and thus copyrightable).
Multiple tests for conceptual separability have been ventured.
Adopts complex, multi-factor analysis
Rules that function of cheerleading uniform is to cover the body, wick away moisture, and withstand athletic movements.
District court’s suggestion that decoration is a “utilitarian function” would render “nearly all artwork unprotectable.”

24. Star Athletica – Star’s Position
Suggests a four-part analytical test:
Is the work a design of a useful article?
Identify all of the article’s intrinsic functions.
Can the feature be identified separately from the article’s utilitarian aspects?
Could the artistic feature and useful article exist independently as fully-realized, separate works?
Physical separability
Design process
Marketability
In a close case, follow the analogous approach in trade-dress and decline protection.

25. Star Athletica – Varsity’s Position
Defends 6th Circuit’s test, which explicitly combined considerations from and was consistent with sibling circuits’ approaches.
2D artwork, applied to clothing, is routinely found to be copyrightable.
Star conflates 2D fabric designs with 3D dress designs, which are not necessarily copyrightable.
Varsity’s designs are 2D graphic designs that appear on clothing and are thus “pictorial, graphic, and sculptural works”

26. Star Athletica – SG’s Position
Government supports copyrightability of Varsity’s designs
Surface decoration is protectable, while the garment itself is not.
Artistic feature and useful article could exist side-by-side, and are thus separable.
Conveying that the wearer is a cheerleader is not utilitarian, but the kind of expressive conduct typically protected by copyright.

27. Star Athletica – Oral Argument
Concern that Star’s test means nothing is copyrightable, because every design can contribute to a function in some way (Ginsburg, J.)
Star responds that the design is copyrightable on most objects, just not on a uniform, where it actually does specific work: slimming, optical illusion, identification of wearer as cheerleader
But Varsity’s test tries to claim a monopoly on the very designs that make a cheerleading uniform a cheerleading uniform (Roberts, C.J.)
And would appear to allow a copyright of any garment design once it is represented in 2D (Breyer, J.)

28. Questions?