N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ APPLE INC., a California Corporation , Plaintiff

- Appellee

v.

SAMSUNG ELECTRONICS CO., LTD., a Korean corporation, SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation, SAMSUNG TELECOMMUNIC ATIONS AMERICA, LLC, a Delaware limited liability company, Defendants

- Appellants

______________________

2014

- 1335, 201 5- 1029

______________________ Appeals from the United States District Court for the Northern District of California in No. 5:11

- cv

- 01846

- LHK, Judge Lucy H. Koh.

______________________

Decided: February 7, 2017

______________________

W ILLIAM F. L EE , Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA , for plaintiff

- appellee. Also repr esented by A NDREW J. D ANFORD , M ARK C HRISTOPHER F LEMING , E RIC F LETCHER , L AUREN B. F LETCHER , S ARAH R. F RAZIER , K EVIN S COTT P RUSSIA ; J AMES Q UARLES , III

,APPLE INC

. v. SAMSUNG ELECTRONICS CO ., LTD

. 2

T HOMAS G REGORY S PRANKLING , S ETH P. W AXMAN , Wa s hington, DC ; M ARK D. S ELWYN , Palo Alto, C A; R ACHEL K REVANS , R UTH N. B ORENSTEIN , N ATHANIEL B RYAN S ABRI , C HRISTOPHER R OBINSON , Morrison & Foerster LLP, San Francisco, CA

.

K

ATHLEEN M. S ULLIVAN , Quinn Emanuel Urquhart & Sulliv an, LLP, Ne w York, NY, for defendants

- appellants. Also represented by W ILLIAM A DAMS ; R OBERT J ASON B ECHER , S USAN R ACHEL E STRICH , M ICHAEL T HOMAS Z ELLER , B. D YLAN P ROCTOR , Los Angeles, CA; V ICTORIA F ISHMAN M AROULIS , Redwood Shores, CA; K EVIN A LEXANDER S MITH , San Francisco, CA

______________________
Before P ROST , Chief Judge, O’M ALLEY , and C HEN , Circuit Judges.

P ER C URIAM

. This case returns to us on remand from the Supreme Court of the United States. Samsung Elecs. Co. v. Apple Inc ., 137 S. Ct. 429 (2016). Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, “Sa msung”) sought review of our prior decision in Apple Inc. v. Samsung Ele ctronics Co ., 786 F.3d 983 (Fed. Cir. 2015), arguing tha t we erred in our interpretation of design patent damages pursuant to 35 U.S.C. § 289. The S upreme Court granted Samsung’s petition for a writ of certiorari, reversed our prior judgment

, and remanded the case for further proceedings.
On remand, we recalled our mandate solely with r espect to design patent damages 1 and reinstated the case.

1 Specifically, we recalled the mandate only to the extent it related to the measure of damages awarded inAPPLE INC

. v. SAMSUNG ELECTRONICS CO ., LTD

. 3

Both parties filed statements urging us to take different actions. While Apple requests continued panel review, Samsung requests that we remand to the district court f or a new trial on damages

. For the reasons explained below,

we adopt neither suggested course of action. Instead, we remand this case to the district court for further procee dings , which may or may not include a new damages trial

. Section 289 provides

, in relevant part, that whoever manufactures or sells “any article of manufacture to which [a patented] design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit.” 35 U.S.C. § 289. The Supreme Court cla r ified that a damages award under § 289 involves two steps: (1) “identify the ‘article of manufacture’ to which the infringed design has been applied;” and (2) “calculate the infringer’s total profit made on that article of man ufacture.” Samsung , 137 S. C t. at 434. The Court then explained that the only question before it was narrow: “whether, in the case of a multicomponent product, the relevant ‘article of manufacture’ must always be the end product sold to the consumer or whether it can also be a

compo nent of that product.” Id

. 2 Looking to the statutory text, the Supreme Court co ncluded that the term “article of manufacture,” as it is used in § 289, “encompasses both a product sold to a consumer and a component of that product.” Id

. The Court d ecli ned , however, to “set out a test for identifying the

connection with the district court’s partial final judgment on Apple’s design patent claims.

2 Samsung also argued that § 289 “contains a ca usation requirement, w hich limits a § 289 damages award to the total profit the infringer made because of the i nfringement.” Samsung , 137 S. Ct. at 434 n.2. We rejected that argument, and Samsung abandoned this theory during oral argument to the Supreme Court. Id

.APPLE INC

. v. SAMSUNG ELECTRONICS CO ., LTD

. 4

relevant article of manufacture at the first step of the § 289 dam ages inquiry. ” Id . at 436. Instead, the Court remanded the case for this court to “address any remai ning issues.” Id

. Apple argues t hat we can affirm the design patent damages award without additional briefing or argument because Samsung never asserted that the relevant arti cle of manufacture w as anything other than Samsung’s entire phones. According to Apple, Samsung failed to

p roffer any evidence to the jury identifying any smartphone component

— as opposed to the entire phone

— as the relevant article of manufacture to which the p atented design was applied . As such, Apple maintains that the record permits only the conclusion that the relevant articles of manufacture must be Samsung’s infring ing phones. Samsung submits that we should remand to the di strict court for a new trial on design patent damages. According to Samsung, the district court’s § 289 instru ction was erroneous in light of the Supreme Court’s dec ision. Samsung does not dispute that the trial court’s recitation of the statutory language from § 289 was acc urate; it argues that the court should have said something more to account for the fact that, in a multicomponen t product, there might be more than one article of manufa cture within the meaning of § 289. Samsung also argues that remand is appropriate because it will enable the district court to resolve any remaining issues.

In short, the parties dispute what jury instruction s the current trial record supports. Because the district court is better positioned to parse the record to evaluate the parties’ competing argument s, we remand for the district court to consider these issues in the first instance

. On remand , t he trial court should consider the pa rties’ arguments in light of the trial record and determine what additional proceedings, if any, are ne eded. If theAPPLE INC

. v. SAMSUNG ELECTRONICS CO ., LTD

. 5

court determines that a new damages trial is necessary , it will have the opportunity to set forth a test for identifying the relevant article of manufacture for purposes of § 289, and to apply that test to this case. Accordingly , we r emand th is matter to the district court for further procee dings.

REMANDED