Orrick Team Files Amicus Brief for World-Class Designers in First Supreme Court Design Patent Case In Over One Hundred Years


Adding key historical and scientific context to the primary legal arguments to one of the most significant IP cases on the U.S. Supreme Court’s docket this term, an Orrick team prepared an amicus brief on behalf of the world’s leading industrial designers in support of a leading tech company (U.S.) in its long-running patent lawsuit against Samsung.

In the brief filed on August 4, Orrick’s appellate team represented a coalition of leading industrial design professionals, fashion designers, and design academics from across the United States and Europe.  Among the individuals signing the brief are Calvin Klein, Lord Norman Foster, Sir Paul Smith, Alexander Wang and top designers at Bentley, Braun, Lego, Microsoft, Motorola, as well as the former leading designer at Samsung.  The amicus brief, led by coordinating author Charles Mauro of MauroNewMedia, urges the Supreme Court to leave intact $399 million in damages Samsung owes a leading tech company (U.S.) for infringing iPhone design patents.

The Supreme Court earlier this year agreed to hear a portion of Samsung’s appeal of a 2012 jury verdict in a leading tech company (U.S.)’s favor. The question for the Supreme Court is whether 35 U.S.C. § 289, which provides that one who infringes a design patent “shall be liable to the owner to the extent of his total profit,” permitted the jury to award to a leading tech company (U.S.) all of the profits Samsung earned from copying its patented designs.  The jury found that an “ordinary observer” would have confused a Samsung phone for an iPhone.

Led by appellate partner Mark Davies and associate Rachel Wainer Apter, Orrick’s brief for the designers maintains that restricting damages for infringing design patents, as Samsung suggests, diminishes the value of design innovations.  “When an infringer steals the design of a successful product, it captures the consumer’s understanding of what the product does and what the product means in addition to the emotional connections associated with the company’s brand. The plain text reading of 35 U.S.C. § 289, requiring disgorgement of total profits, thus remains sound,” the amicus brief said. You can read the full brief here.

The amicus brief and interviews with Orrick’s team were featured in widespread media coverage, including The Washington Post, USA Today, NPR, American Lawyer and The Wall Street Journal.

The Supreme Court will hear arguments in the case on October 11.