hear argument first this morning in case fifteen seven seven seven samsung electronics versus apple incorporated solomon mr chief justice and may it please the court a smartphone is smart because it contains hundreds of thousands of the technologies that make it work but the federal circuit held that section two eighty nine of the patent act in titles the holder of a single design patent on a portion of the appearance of the phone to total profit on the entire phone that result makes no sense a single design patent on the portion of the appearance of a phone should not entitle the design patent holder to all the profit on the entire phone section two eighty nine does not require that result and as this case comes to the court on the briefing apple and the government now agree that section two eighty nine does not require that result we respectfully ask that the court hold that when a design patent claims a design that is applied to a component of a phone or a component of a product or to use the language of section two eighty nine when a design patent is applied to an article of manufacture within a multi article product we request that you hold that section two eighty nine in titles the patent holder to total profit on the article of manufacture to which the design patent is applied and not the profits on the total product the problem is that instruct the jury that both parties but the government both parties leave it up and there's a i'll give it to which the design affected the consumer and then the jury would have something to do that but that's apportionment which run headlong into the statute you can't really have a portion so it seems to me that if you leave us with no one choice  to just have a de minimus exception like the cup holder example that's in the car maybe the windshield which is a little more difficult and just follow that and just follow the words of the statute but it seems to me neither side give leaves it to the jury without guidance the instruction we proposed and that was rejected by the district court appears in the blue brief at page twenty one and what we would have told the jury is that the article of manufacture to which a design has been applied is the part or portion of the product as sold that incorporates or embodies the subject matter of the patent so justice kennedy era test is very simple we'll take a fine of the jurors just don't know what to do  phone in the jury room look at it just wouldn't your honor we respectfully suggest is that there are two parts to the test for what constitutes an article of manufacture and to be clear i am now stressing our article of manufacture argument not the causation argument we gave as an alternative as the case comes to the court all we ask is that you rule in favor of us on article of manufacture and justice kennedy the statute tells us what to look at but i really quickly make sure in her stand that that and other words you are saying we should only look to what an article a manufacturer is and not you are their argument that there should be apportionment as to any particular article of manufacture that is correct your honor we are  pressing here as all you need to resolve the case that a jury should be instructed that total profit must be profit derived from the article of manufacture to which the design has been applied and your honor the statute does support our test because the statute asks us to look at the article of manufacture to which the design has been applied and would be that in the in this case your honor in this case it is there are three patents the d six seven seven is on the front face of a phone the rectangular round cornered front face of a phone in the deo eight seven it's also the rectangular round cornered front face of the on with certain aspect ratio and corner radio in the d three o five it is the display screen on which the graphical user interface appears to dance or justice kennedy's question the jury should have been instructed either with aaron struction instruction forty two point one would have said to the jury i'm giving you guidance there is an article of manufacture here but it may be less than the entire phone the article manufacture may be a part or portion of the phone and you should look at two things your honor you should look at the patent and justice kennedy with respect you shouldn't just look at the at the phones in the jury room you want to look at the patent because justice ginsburg the patent is going to be the best guide to what the design is applied to in many many cases as in this case you seem to be arguing as when you opened that as a matter of law you were right and i don't see that as a matter of law i believe that your basic once in agreement that the test is an article of manufacture for purposes of sale but i unlike justice kennedy would choose how do we announce the right test for that because the phone could be seen by a public person seen consumer as being just a rounded slim outer sh that might be what drives this sale i don't know certainly your expert to tell me how to figure out the component port i don't know we're in the record you would have enough to suit your argument so your honor let me back up and restate the tast the burden and the evidence about the test and i want to agree with your honor to be clear we say that what the federal circuit held was wrong as a matter of law it is wrong as a matter of law to hold that the entire product is necessarily the article of manufacture from which you measure total profit that's wrong as a matter of law but we did not argue your honor that the test has to hold that we're right on the article as a matter of law it's an it's an it's an art it's a question of either fact or as you said in mark men among question of law in fact and why does it involve both because we know that district courts look at patents you assign them that task in marksman and they perform it daily and when they look at a patent for a claim construction we're asking for part of the test to be very similar the district court can look at the patent and say oh this is apple's front face patent this isn't one of the relevant manufacturer three ways your honor first through ordinary accounting that would look to the cost of goods sold in relation to revenues for the relevant component you could look if if a company buys component from a and original equipment manufacturer you would look to their profit margins and apply that if as sometimes happens within a company one division makes the glass front face and another division makes the innards of the phone you face then it's a ten to one ratio that's absolutely right your honor apple didn't so you have expert testimony on all of that yes your honor you would and you would but that's just one way if you had a case where it's a stroke of genius design in two days they fight the car then then it seems to me that that's quite unfair to say well we give three days profit but then it took a hundred thousand hours to develop the motor well your honor here's what we would do with it you know that's what that's it seems to me that that's what you would be arguing it's not your honor what we would get there to answer justice ginsburg's question there are three ways apple could have but did not even attempt to prove the total profit from the relevant article of manufacturers here the front face or the display screen one could have been accounting one could have been consumer demand evidence justice kennedy as you suggested apple could have said well people really like the front face disproportionately to all the other parts of the phone so they could have used consumer survey evidence to prove that but and so accounting evidence or indirect evidence through consumer survey but you're an ass to the beetle we can see that the total profit from the article of manufacture may sometimes be a substantial part of the total profit on the product let's take the beetle or let's take a cool shark shaped exterior body on a car like the corvette it may be that the article of manufacture to which the design patent is applied is just the exterior body of the car but it may be that nobody really wants to pay much for the innards of the corvette or the beetle they want to pay for the cool way it looks if that so it should be open to the patent holder to prove that the bulk of the profits come from the exteriors of the question is there any difference in practical terms between that and and your causation argument or apportionment yes justice alito that's the difference the difference is we can see it under article of manufacture that holder of the patent gets profit from the article even if the profit does not come entirely from the design let me give you an example with the phones front face consumers may value the front face because it's scratch resistant because it's water resistant because it's shatterproof we're going to give the patent holder under article of manufacture test all the profits for the front face even if it includes profit from those non design features of the front face whereas their pure apportionment test or pure causation test would limit the profits to the profits from the design parts rather than the functional parts so that a gram of that's a little bit over inclusive we're giving a little bit more with article of manufacture than we do with a pure causation test implanted should be happy for that but the reason we think it's consistent with congress's purpose your honor is that what congress was trying to do was provide a rule that gives design patent holders total profit from the article of manufacture that's a little bit over inclusive because if you get total profit on the rugs that were at issue in the dobson cases you'll get a little profit from the design and they'll be a little extra that you're getting perhaps from the fiber or the we've we think congress was entitle to exercise its fact finding power to say that it is appropriate as a matter of causation to say that design causes value in a single article product well right i look at this record and they were cleaning the profits on the whole if you read the federal circuit's decision they were saying people buy this product mostly this was their argument to the jury and it sold the federal circuit because of the look of this phone that all smartphones basically function the city people don't really put much value on the innards this is what they were arguing and they put on an expert that gave total profits if the jury created them could you and you were properly it was a properly instructed jury could you overturn that fin your honor let's go back to the proper instruction that the jury was not properly instructed here except that this had to answer is your honor if the article of manufacture was the entire ornamental appearance of the phone and apple does have an a patent on the entire outside of the phone why didn't they assert it here because the entire outside of a samsung phone does not look substantially similar to the entire outside of a samsung phone the reason why design patent is carve the product up into multiple partial design claims is so they can make a narrow infringement argument and find a little sliver of the phone which infringement can be found and it's inappropriate to give total profit when they do that so your honor if there had been a design patent on the entire case then yes absolutely apple could have tried to get total profit in the entire in your answering no to my question but you're saying a properly instructed jury on the evidence the legal error was in the jury instruction i said besides a properly instructed jury could they have found in favor of apple on the evidence presented they could not your honor because i know what besides the jury instruction because i'm assuming that a proper instruction was given what would have been the legal limit there there would have been no reasonable jury could have found on this record that the entire product was the article of manufacture to which the design has been applied to reasons one design patents cover or numb menthol appearance they cannot by definition cover the innards of the phone they so so the functional innards of the phone cannot be part of what is you going to be able to swear good by it's looks to me but your honor we're talking about design patents not trademark or copyright there's no requirement of consumer confusion here on the did i don't disagree with you but your honor let me answer your question as precisely as i can just because you can show that most of the profit comes from the beetle exterior does not mean the car is the article of manufacture there's two steps here in our test first determine what is the article of manufacture then second step determine the quantum of damages quantum of profits in this case from that article under my under your hypo what if apple got almost all its profits from the exteriors case people were indifferent to whether they could read their email navigate take photos or any other functions if you could prove that it's a counterfactual that couldn't happen but if you could prove that as in the corvette or the beetle hypo then the total profit from the article of manufacture could be a substantial every time at the in the jury instruction sorry at the before the trial began we submitted the legal brief it's docket thirteen twenty two we said very clearly article of manufacture is less than the total phone and profit should be petition appendix one sixty five a what happened is we went to the court we said please listen to us about article of manufacture you can only get the total profit on the article the district court said no i already said no  because i said no apportionment she shut us out of both theories the district court shut us out of article of manufacture as the basis for total profit and it shut us out of causation or portion which we don't press here so that's twice their legal brief o church conference and then again in our fifty a day and the key rulings and fifty a at the close of evidence we again said article is separate from from apportionment and the article here is less than the phone at one ninety seven we said it j one ninety seven we again said article is less than the phone and in the fifty be at the close of the first trial we again said article is less than the phone second trial happens on certain phones again in the fifty a and the fifty b the trial court says again i have ruled that there is no apportionment for design patents you cannot talk to me about article of manufacture we tried over and over and over again to get the article of manufacture theory embraced and we were rejected and why does that matter your honor because there was evidence in the case from which a reasonable properly instructed jury could have found that the components were the front face the front face and the display screen and the evidence came out of apple's own witnesses which were certainly entitled to rely on your honor apple's own witnesses again and again said what are you claiming and when the witnesses got on to talk about infringement they didn't say the whole phone the look and feel they said we're claiming a very specific front face and by the way ignore the home button we're claiming a very specific front face and surrounding bezel and by the way ignore everything that's outside the dotted lines and if i the claim is for the small portion of the extra all appearance of the phone that is inside the solid line apple disclaimed everything outside the solid line it disclaimed questions of the front face with dotted lines and your honor the question is for the jury was not did people think that the look and feel of an i phone was great the question for the jury was to the very small portion of a smart phone that samsung makes look substantially similar to the very small portion of the patent claim now that your honor there was no basis in this record for a conclusion that the entire product profit on the phone corresponds to the entire profit from those articles what apple should have done is done either of the two things we discussed earlier accounting evidence about revenues minus cost of goods sold on the components or should have done consumer survey evidence like eric sprott did th general has proposed a test with four factors to determine the article question do you agree with those are there others you would have your honor i'll answer briefly and then i'd like to reserve my time we think we we like the solicitor general's test we propose a brief or task that we think is more administered will we propose that you look to two factors the design in the patent and the accused product we think our test is more administer ball and it can often be done justice kennedy by judges as they do in markman who will then instruct the jury and give them guidance and i'll be happy to explain further on rebuttal thank you very much i'd like to reserve the best balance of my time mr justice thank you counsel fletcher thank you mr chief justice and may please the court this case presents two related questions about the scope of the remedy that's available for design patent infringement under section two eighty nine if i understood my friend miss solomon's presentation correctly the parties and i were in agreement about both of those questions just to summarize briefly first the court of appeals correctly held that section two eighty nine is provision for an award of total profits means that the patent holder can recover all of the profits from the sale of the infringing articles of manufacture and not just the portion of the profits that the patent holder can prove was caused by or attributable to the design as opposed to other features of the article but second we read the court of appeals opinion to have held that the relevant article of manufacture for which profits are owed is always the entire product that the infringer sells to its customers and we think that's a mistake and we understand all parties to agree with that now instead the relevant article of manufacture to which a panda design may be applied will sometimes be a part or component of a larger product in commerce and when that is the case all parties now agree that the patent holder is entitled only to the profits from that infringing article and not at all then when the when the component when the manufacturer i two factual questions in a case with acts disputed the first one would be what is the role of an article and there may be a dispute on that as there is in this case the second question once the fact finder identifies the relevant article is the question that you asked which is how much of the total profits from the device are attributable to the but we think that courts could sensibly look to the way that courts have handled other analogous questions and i point to two areas of walkway that's happened the first part is utility patent damages under the patent act before nine hundred forty six permitted in a ward of the infringers profits and in those cases very often up rob patent would apply to part of a larger product sold in commerce and the fact finder would say you're entitled to the profits that are attributable to the infringing part but not the whole justice ginsburg question  is that if your answer to her adequately summarize the test that you propose at page nine of your brief relevant considerations include so i think of it the test we propose that page nine goes to the first of the two questions that i was speaking to which is what's the article of manufacture to which the design has been applied once the fact finder makes that judgement that's the test that we proposed and that's i think i took to be just a sort of irish question i understood justice ginsburg to be asking once the fact finder decides that the relevant article is say the windshield on the boat or the cup holder on the car how do they separate out the part of the profits that are attributable to that component from the whole and as to that question we haven't reached it in a lot of detail but i was trying to explain to justice ginsburg that there are analogous problems that courts have confronted in other areas of law one was utility damages as i described another one is discussed at some length in this court's decision in the sheldon case under the copyright act that was a case where about copyright was on the script expert witnesses beca in order to show part one or part two i would think both i would think very often both and what would those expert witnesses who would they be with the so i think it will depend on the circumstances the case i think in this case in this case i think someone familiar with the history someone who had worked in the industry either at a manufacturer of a smart phone company or someone who is familiar with the market for smartphones and who could speak to on the first question how smartphones are put together how they're manufactured how they're used by the users the extent to which the components of a smartphone are separable and then on the second question the one that justice ginsburg was asking i think they would the experts would probably be speaking to all could be speaking to some of the issues that your honor raised in your question to miss sullivan which is things like consumer surveys to what extent do the various components of a smartphone drive consumer demand and contribute to the value of a phone one of the things that was mentioned was cost in terms of that i don't understand how that helps on this question it would seem to me the higher the less it contributed to profits so i think mr chief justice it'll depend on the case sometimes you might try to build up the the share of the profits from the bottom up by saying what's the toss to each of these components and then what share of the revenue is attributable to each of these components and then you say this component is ten percent of the cost and twenty percent of the revenue and we do a bottom up calculation and tried to do it that way courts have always done that sometimes that won't be feasible sometimes instead they've done a more impressionistic approximation and said the total profits on this product are ten million dollars and we think that that component issue here based on expert testimony is responsible for a quarter or twenty five don't use any based on expert testimony what what would they be talking about so i think that the sheldon case that cited on page twenty seven of our property from this court that was a copyright act case but that discussed these problems sort of generally discussed how you apportion the portion the profits from a movie that are attributable to the script as opposed to the actors or directors or other things and they had experts who were familiar with the industry and who said the script is important but really a lot of the value and particularly for a movie like this comes from other things and there were various expert testimonies that gave varying percentages and the cordoned up saying that the court below had awarded twenty percent of the total prop that's from the movie and this court affirmed that award and said that's a reasonable approximation we're never be able to get to certainty but on these sorts of prophets questions in these sorts of remedies questions a reasonable approximation is good enough and it's certainly better than awarding all or well that distinctive appearance that distinctive shape it's just it's still the article is only the body of the car and and you say no there's a real question as to whether it is being up the design i to the car itself so how would you go about thinking about that question or how is a fact finder supposed to and under what instructions so we think the basic question for the fact finders what's the article of manufacture to which the design has been applied we think the fact finder should bear in mind hundred seventy one first design patent case that what a design is is it's the thing that gives the distinctive appearance to an article of manufacture and the point we're making with the v w bug example is that in some cases that's going to be very easy if the patented design latch no one is going to think that the latch gives the distinctive appearance to the entire right but let's talk about the hard right so the hard cases like the bug where one could reasonably say that it's either the body or the car then we've given the court four factors and we think the fact finder or a jury if the jury is in fact fi ought to be instructed on those factors and so we say you should compare the scope of the pan to design as shown in the drawings in the patent how prominently that design features in the accused article whether there are other conceptually distinct innovations or components in the article that are not part of or associated with the patented design and finally the physical relationship between the patented design and the rest of the articles or if you were a juror how would you decide the legal case or what experts would you want to hear i would want to hear a as to the art of well what's the article of giving you that second i don't i do think it's a factual question i do think you would want to hear from experts who can speak to the question of how is the beatle put together and what other parts of the  beatle put together and it's put together like every other car i mean i don't see how that's going to tell you whether the shape of the body is distinctive or not well i think you'd also want to know this so i want to put it in terms of our four factors that of the clean design covers the whole article but not the interior of the car there are design features on the interior that the driver sees that aren't the body of the article as to the second factor how prominently does the design feature i think that's one that cuts in favor of finding that the design does cover the whole article then the third one is conceptually just ink innovations and i think that one cuts the other way there are going to be lots of other features of the car or innovations in the car the engine the steering system things like that that's an area where you might want to access the first part of the course the article of manufacture so not take the second part of the test and apply it to look so supposing that we've decided that the bug or the relevant article in the bug is just the body of the bug exam and i think the question is the best way to determine that at least that i can think of right now would be consumer surveys addressed to to what extent are people who buy bugs making their purchasing decisions based on the look of the car and to what extent are they instead valuing other things like so you think that that question is not relevant to the first question another would suppose i think that people who have a v w bugs buy them because of the look of the car yes but you think that that's only relevant at question two rather than at question one which is the question of whether it's the body or the whole car that the design is being applied to i do i think that's the statute the way the statute reads it says you get profits from the article of manufacture and so logically i think the way to approach it would be identify the article and then let the patent holder make the argument that even though the ways this hypothetical is not helpful to me because i can't get over the thought that nobody buys a car even a beetle just because they like the way it looks what if it you know it cost i think eight hundred dollars when it was first sold in the united states what if it cost eighteen thousand dollars what if it's what if it got two miles per gallon but what if it broke down every fifteen miles so if if that is a real question if it is a real question whether the article manufacture they are is the design or the entire car gives me pause about the test for determining what is the article of manufacture well i think the those things can be taken into account at the at the second step of the test if you decide that the relevant design there of an article of manufacture is the body of a car but for all of the reasons you just pointed out oh well what if you are saying it's an open question would be a difficult question you'd have to apply numerous factors to determine what is the article of manufacturing there and then i think if you're skeptical about that i think our test for article of manufacture also let some of those considerations play into that test because it gets to whether there are other conceptually distinct innovations or other components of the product unrelated to the design thank you  you mr chief justice and may it please the court before i address the court's many questions initiated by justice kennedy about what should the jury be instructed under what we in the government believe to be the question that is the factual test of whether the relevant article of manufacture is the article as sold or a distinct component of it i think it's very clear to address questions the questions that justice ginsburg and justice so sullivan's response to what actually happened in this case there is no whatever you determine the right instruction should be there is no basis to overturn the jury's damages verdict in this case there were two trials below in neither trial did samsung either in argument statement or witness testimony ever identify for the jury any article of manufacture other than the phones themselves in both trials samsung's expert witness mr wagner calculated total profits under two eighty nine only on the phones themselves and thus there is no no reasonable juror in these trials could possibly have awarded total profits on anything other than the phones unless limited them absolutely not what happened was we put in our initial papers saying there's a pretrial statement that the parties have to have to file saying these are the phones are the the phones were infringed the phones are the things that were infringed for purposes of sale and here is what our evidence is on total profits from the phone rights a disagreement on this point so why if we have a hard enough question  figure out what the standard is now why can't we just ask the lower courts to listen to your arguments and theirs and work up justice prior this is not a difficult that the record in this  fact they think it's easy on their side so if i go through and come to the conclusion at least that each side has a good argument under those circumstances why don't we focus on the question that is of great importance across industries and leave the haitian of that and whether it was properly raised to the lower courts of justice prior if this were difficult it would be entirely appropriate for this court simply to announce what the law is which i think there is a great need for this court to do and we're not suggesting that it wouldn't and it isn't necessary for the court to do it this is a case very much like global tech when found that the lower court had applied the wrong standard for intentional infringement and then found that the record was even up but under the correct higher standard the record admitted no other conclusion what's so easy about this case is that they never identified to the jury in either case any article of manufacture other than the phone and all of their evidence just as prior was calculated what they did is they went back into history they have a lot of different cases which they base is standard on and they come to the conclusion which is a little vague but that the design uses it where it's been applied to only part on page twenty three of a multi component product and does not drive demand for the entire product the article of manufacture is rightly considered to be only the component to which the design applies only profit attributable to th component may be awarded not really don't understand it you have to have examples but in any trust cases are hard to understand and rule of reason and people do use examples and so that kind of standard with perhaps examples to explain it to the jury you know wallpaper you get the whole thing rolls royce the thing on the phone the hood no no no that you don't get all the profit from a car just ok now why not ok i i understand your alas answer justice ginsburg first and then justice breyer justice ginsburg and not the only thing that samsung was precluded from doing and this happened in the dauber ruling with respect to their expert report mr wagner's report was they were he was not allowed to present evidence about that about the value of design to the total product as a whole that was apportionment judged coast said he wanted to he calculated total profits based on the phone and his report then said well but i believe that only one percent of the value of the phone is due to the design or the design of the iconic front face of the phone and that she wouldn't allow him to do because that was apportionment the question the only issue with respect to article of manufacture and that samsung ever made in either trial or in the court of appeals was that as a matter of law in a multi component product the article of manufacture must be the portion they never said that to the jury they did at they did propose a jury instruction forty two point one which directed the jury that that's what it was supposed to do it also directed the jury to a portion and the judge didn't approve it now it just so happens that they preserved no relevant objection to spending an awful lot of time on an issue about what was raised below what wasn't raised below what was waived wasn't wave maybe it's a good time to turn to justice briar's question i would be very happy to do that justice pryor the there is no question that in an appropriate case the jury can decide whether the article of manufacture to which the design is applied and to which it provides a distinctive and pleasing appearance could either be the article that's actually sold to consumers that's bought by consumers or it could be a component of it in the case of a wall hanging there's really not much dispute in the case of the cup holder there really isn't much dispute it is a question of fact for the jury we believe that the four factors that the solicitor general articulated would be appropriate factors to consider i think that a in a case in which what a juror what is the question affect here is article two to which the law applies what is the here is what i would say in a case in which the jury heard evidence as to competing articles of manufacture as to what total profits should be applied to the jury would be told if you find infringement total profits are all warded on the article of manufacture to which the patented design was applied for the purpose of sale and to which it gives the kewl your or distinctive appearance you may determine that the article of manufacture is the entire product or a distinct component of that product in making that determination you may consider and the get this would depend on the evidence in the case among other factors i would include the solicitor general's and there may be other things for example most importantly the identity of what it is that is typically consumed by purchase or whether the patented design is likely to cause consumers to purchase the infringing product thinking it to be the patent d s product i may be i'm not grasping the difficulties in the case it seems to me that the design is applied to the ext case of the phone it's not applied to all the chips and wires so that's right that's absolutely right and you know of course you can't get a design patent on something that the consumer can't see and yet congress so you should there shouldn't be a profits warning he sed on the entire price of the phone know that profits are awarded on the article of manufacture to which the design is applied  well part of it well maybe and maybe not i think the difficulty here is that it's important to understand that design is not a component and the patented design is not the article of manufacture the patented design is something that's applied to an article of manufacturing a one of these of these little the chips and all articles in manufacture right how is the design of the case applied to those chips the same way that i mean if you look at for example in the early days the when the pattern when the design when design patterns were first permitted by statute in eight hundred forty two the first hundred of the first hundred patents that were issued fifty five of them were first stows and furnace is in steam engines and things like that congress when congress said that you are entitled you know in response to the dobson cases that as an alternative remedy if there is infringement of a design which by the way does not happen innocently when there is infringement of a design the patentee may choose an alternative remedy which is essentially to have the jury put him or her in the shoes of the infringer that is to it to discords the profits from the article to which the design was applied there's a survey out of the decision engine had plenty of working components but a design is not a component a design is applied to a thing and the jury has to decide in the case of the v w beetle that you have either a cup holder or a patented hub cap or the i conic shape of the car i think that a jury food went very well conclude that because someone who sees the iconic shape of a v w beetle and buys it thinks that they are buying the beetle that is after all the reason why the infringer copied it the we know from samsung's own documents in this case for example that are recounted in our brief samsung realized that it faced what its executive called a crisis of design and the crisis of design was reflected the documents show in the telephone companies saying you have to create something like the i phone and a directive came out to create something like the i phone so we can stop use losing sales and in through the u i excellent can we go back to the government's test because it's so far your test has a lot of steps but i don't know what it's going towards ok they suggest t things article of manufacture is the article of manufacture they have a four part test you agree with that four part test with respect to identifying just the article of manufacture yes with the following cab only what the factors that the jury will be told will depend on the evidence that the parties a deuce least don't go to the record ok i'm not going to i'm just i'm sticking with the tests aren't that ok so let's assume because it makes logical sense to me it may not to anybody else ok that the folks wagon body not the in there's are the article of manufacture now the government would say go to the second test which takes in some of the things that you were talking about to figure out how much of the profits that  the w makes from the bug are attributable to the shape of the car now as justice alito said some people don't care whit about the shape of the car want just a small car they want the car that has a certain trunk because we all buy cars for a multitude of reasons experts would come in and say but it's ninety percent of the profits it may be that the body accounts for only ten percent of the cost of the car but ninety percent of the profits are attributable to the shape of the car what's wrong with that analysis that's what i understand the government's analysis to be but that's what a jury has to be told to do to decide how much value the design is to the product being sold that's the government's surfaced in a nutshell ok so this is a test that the government has articulated here at oral argument it has not been briefed by anybody the the issue of how you calculate total profits on something less than the whole article as sold was wrestled with i think best by the second circuit in the second piano case where the second piano case the court said ok well the first part of the test how do you determine what the article of manufacture is hasn't provided a lot of difficulty the real difficulty is in calculating one hundred percent of the profits from that article of manufacture the the few courts that have addressed this that i've seen it have done it in a way that i think probably makes the most sense and is the least difficult conceptually which is to say ok what were the costs of producing that article that particular subcomponent and what was the company's profit margin on the product as a whole applied to that little component now the difficulty with that i mean i think that's what courts have generally done and what it underscores and in appropriate cases it may be appropriate like the cup holder example but what it underscores is the very doorstep part of the government's tell us how we measure it you're saying hasn't been briefed adequately that the government saying the same thing but is conceptually is that right conceptually it is correct that under section two eighty nine the patentee is entitled to the total profits on the sale of the articles of manufacture to which the design has been applied that is relatively straightforward when in a contested case the jury concludes that the article of manufacture is the product that sold it is more complicated when the jury concludes that the relevant article of manufacture as was the case in the piano cases where customers could choose and a ray of cases in which to put the piano mechanism it is more difficult to figure out total profits from the manufacture and sale of the case but the decided cases that i have seen have looked at the question what was the manufacturer what were the direct costs associated with producing the relevant piano cases and what was the profit margin on the piano as applied to that and it may i just add one other point which i think is still on track the problem with that is that it runs headlong into the kind of thing that congress was concerned about in eight hundred eighty seven when it passed the design patent act because the concern was that counterfeiters and capias would simply if the only penalty if the only compensation was something that could be viewed as the cost of doing business that is ok you're going to get a ten percent margin on two dollars and fifty cents for what it cost to produce this little component there would be no deterrence to what congress deem to be an emergency it's just as kagan let's take a case and i think that the w example is a good example for this reason where that the thing that makes the product distinctive does not cost all that much there's not been a lot of input somebody just some engineer or some graphic artist or whatever woke up one day and said i just have this great idea for an appearance but that's the principle reason why the product has been successful i mean the car has to run and it has to do all the other things that cars do but the principle reason why the car has been successful has to do with this particular appearance the design as i understand the government that does not come into the first inquiry that does not come into the question of what is the article and only comes into the second inquiry which is how much of the profits are attributable to that article do you agree with that i don't think that that i don't agree with if that is the government's test as you've articulated it i wouldn't agree with that i think that the government's if you look at the government's factors you know one factor is the relative prominence of the design within the product as a whole and the government says that whether the design in other words whether the design is a significant attribute of the entire product affecting the if appearance of the product as a whole would suggest that the article should be the product another factor in the government's test is the physical relationship between the patented design and the rest of of the product in other words as the government's brief says can the use r or the seller physically separate it or is it manufactured separately another factor is whether the design is conceptually different from the product as a whole as for example a design on a book binding is different from the intellectual property reflected in the copyrighted material in the book those we agree with all those factors as relevant but i do think directly you know speaking to the question that you raised the the first factor that i mentioned the relative prominence of the design within the product of the whole is in essence asking and it is a relevant question in determining the article of manufacture whether the patented design is likely to cause the consumers to purchase the infringing product thinking it to be the patent these products so in the v w beetle example i can't bring myself to call it a bug in the v w beetle example nobody would look at the cup holder that was similar to what was in a v w beetle that was in a jeep or a porsche and say oh this must be a v w but somebody who looked at the exteriors of a jeep that copied the iconic side profile of the w beetle might very well say that and it is really gross that into account if the approach that you're discussing fairly described as a portland mint what is that a bad word that is a really bad word and if there's a i mean in some fern what other what what what word would you use to describe your approach what is the thing the article of manufacture to which the design is applied for purposes of sale in order to give it a distinctive and pleasing appearance apportionment is what their expert mr wagner tried to do in his report saying the total profits on the phone are x hundreds of millions of dollars but i find that only one percent of consumers buy phones because of the front face of the of the phone either off or on but once you the den of the relevant article then it seems to me necessarily what you're doing is apportioning profits i just don't see ok so this is a get away from that word in yes in this sense justice kennedy the vernacular sense of apportionment once you did if you'd if the jury answers the question at step one and says no no the article of manufacture is the refrigerator latch or the cup holder how do we determine total profits from the sale of that thing you do have to engage in a kind of an apportionment that looks to how much did it cost to make the cup holder and what is the you know what is the profit margin for the car or the refrigerator or something like that that it seems to me is the way that you would do it if you found it so you know in this case it's a little difficult to figure out what that alternative article of manufacture would be i mean in the trial court even before the trial judge they never even suggested what the article of manufacture could be for the three zero five patent the graphical user interface and listing factors is not helpful on last the jury or whoever the fact finder is know what the determination must went to terminations must be made the factors are helpful in making the determination now what you just said about the article of manufacture is it is the thing to which the design is applied is not is that basically what you said what i would tell the jury is quoting the statute and this court's decision in eight hundred seventy two decision in gorham is that the article manufacture is the thing to which the design is applied for purposes of sale and to which it gives distinctive and pleasing a attractive appearance that you also know you're trying to find out but in a physical sense that isn't that you can answer it easily and that's what the chief justice was talking about it's applied to the outside in the physical sense but you mean it in a different sense and i don't really understand what that what that means well when you get beyond the pure where's the design applied this is applied to the inside no it's applied to the outside of the design by definition applies to be outside has to apply to some ok so when you say what it's applied to you're not talking about it in terms of the physical world so what is what are you talking about the jury is being asked to decide was this if you find that this was a that this was a patentable design and you find under gorm that what it was infringed what is the thing to which that design was applied to give it a pleasing appearance obviously it's not a transistor or some circuit or the software it is applied to the phone now they could if they had if they had wanted to suggested to the jury no no no the relatives are being lied to the outside of the from well it's applied just as mr chief justice it's always applied to the outside of an article it has to be applied to the outside of an article i see my time thanks very much a missile in four minutes mr chief justice and may have please the court justice kennedy congress did not say that all apportionment is forbidden congress said yukon to portion the value of the design in relation to the article where conceding that here what congress did not say is that you can't segregate the proper article from the other articles that make up the product so we can say great game article from other articles within the product and in fact section two eighty nine requires us to do that because it allows total profit only from that article of manufacture to which the design has applied now the test that we asked the court to announce on remount as has been discussed it has two parts the first is the antecedent question is identify the relevant article of manufacture sometimes that will be very easy if you do it from two main factors what does the patent scope claim a front face or as the chief justice said the exteriors casing and in fact we asked mr chief justice for the instruction you allude to it too brief twenty one we actually asked the jury to be told that we're the architect article of manufacture is a case or external housing that's the article of manufacture the second question is quantum of profits and i think justice kagan put it exactly right in saying that a lot of the expert determinations about how much to the beetle exterior drive demand will come into play as the government said and we agree only at the second question what is the quantum of profits from the right article of manufacture but just as a leader you asked how how similar are we to the government's test and justice kennedy you asked if this will lead to a lot of inconsistency among juries we think at the answer to the first question can be made more consistent and uniform if we focus mainly on two factors what does the design in the patent claim front face exterior casing holding the front face and second what is the product to which it has been applied that will help judges to guide juries we think we should have had instructions forty two point one but in a proper case you might decide at summary judgment that the article of manufacture is the front face and that could be instructed to the jury problem of course congressmen hold wallpaper even though they only want to apply it to the front your honor and that's the problem in the case so i thought and that's why i pointed to the brief i did point too but history is matters here and we're talking here about a multi component  product that's right and if you don't tell the jury that there is that distinction i think you either disregard what congress meant in it statute or you create the kind of absurd result  of so that's what i'm looking for your honor that and that's why i looked at page twenty three and says that seems to do and we're fine with page twenty three of the tech companies brief and that points to why you must remain and in this case this case was tried under the improper rule of law we tried at every juncture to get the correct rule of law adopted and the district court said i i forbade abortion and we said no no we're not asking for apportionment rostering for article of manufacture and we were shot down over and over again on that so you must be man and tell the nation's economy that no one can claim a partial design patent on a portion of the front face of an electronic device and come in and get the entire profits on the phone should be instructed that the article manufacture either is of the beetle exterior or there might be justice breyer still today there might be cases of unitary articles just like the dobson rugs the gorham spoon might be a uni article patents on the handle but nobody really cares about the sipping cup of the spoon so we say that article of manufacture is the spoon and if you get the profits from the spoon that's all right  article i assume in a case like this and i will say it's the whole phone your apps justice ginsburg if i leave you with the most important disagreement we have with the government with apple the burden is on the plaintiff when the burden is on the plaintiff to show what the article of manufacture is why is that the burden is on the plaintiff to show damages and subsidiary questions have sumed in what the damages are also always the plaintiff's burden as the entire market value ru