NOTE: This disposition is nonprecedential.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 TELECOMMUNICATIONS AMERICA, 

LLC, a Delaware limited liability company,

Defendants-Appellants

______________________ 

2014-1335, 2015-1029

______________________ 

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

______________________ 

WILLIAM F. LEE, Wilmer Cutler Pickering Hale and 

Dorr LLP, Boston, MA, for plaintiff-appellee. Also represented by ANDREW J. DANFORD, MARK CHRISTOPHER

FLEMING, ERIC FLETCHER, LAUREN B. FLETCHER, SARAH R.

FRAZIER, KEVIN SCOTT PRUSSIA; JAMES QUARLES, III, 
2 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

THOMAS GREGORY SPRANKLING, SETH P. WAXMAN, Washington, DC; MARK D. SELWYN, Palo Alto, CA; RACHEL 

KREVANS, RUTH N. BORENSTEIN, NATHANIEL BRYAN SABRI, 

CHRISTOPHER ROBINSON, Morrison & Foerster LLP, San 

Francisco, CA. 

KATHLEEN M. SULLIVAN, Quinn Emanuel Urquhart & 

Sullivan, LLP, New York, NY, for defendants-appellants. 

Also represented by WILLIAM ADAMS; ROBERT JASON 

BECHER, SUSAN RACHEL ESTRICH, MICHAEL THOMAS

ZELLER, B. DYLAN PROCTOR, Los Angeles, CA; VICTORIA 

FISHMAN MAROULIS, Redwood Shores, CA; KEVIN 

ALEXANDER SMITH, San Francisco, CA

______________________ 

Before PROST, Chief Judge, O’MALLEY, and CHEN, Circuit 

Judges.

PER CURIAM. 

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, “Samsung”) sought review of our prior decision in Apple Inc. v. 

Samsung Electronics Co., 786 F.3d 983 (Fed. Cir. 2015), 

arguing that we erred in our interpretation of design 

patent damages pursuant to 35 U.S.C. § 289. The Supreme 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 respect to design patent damages1 and reinstated the case. 

 

1 Specifically, we recalled the mandate only to the 

extent it related to the measure of damages awarded in 
APPLE 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 for 

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 proceedings, 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 clarified 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 manufacture.” Samsung, 137 S. Ct. 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 

component of that product.” Id.2 

Looking to the statutory text, the Supreme Court concluded 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 declined, 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 causation requirement, which limits a § 289 damages award 

to the total profit the infringer made because of the infringement.” 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. 
4 APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. 

relevant article of manufacture at the first step of the 

§ 289 damages inquiry.” Id. at 436. Instead, the Court 

remanded the case for this court to “address any remaining issues.” Id. 

Apple argues that we can affirm the design patent 

damages award without additional briefing or argument 

because Samsung never asserted that the relevant article

of manufacture was anything other than Samsung’s 

entire phones. According to Apple, Samsung failed to 

proffer any evidence to the jury identifying any 

smartphone component—as opposed to the entire phone—

as the relevant article of manufacture to which the patented design was applied. As such, Apple maintains that 

the record permits only the conclusion that the relevant 

articles of manufacture must be Samsung’s infringing 

phones. 

Samsung submits that we should remand to the district court for a new trial on design patent damages. 

According to Samsung, the district court’s § 289 instruction was erroneous in light of the Supreme Court’s decision. Samsung does not dispute that the trial court’s 

recitation of the statutory language from § 289 was accurate; it argues that the court should have said something 

more to account for the fact that, in a multicomponent 

product, there might be more than one article of manufacture 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 instructions 

the current trial record supports. Because the district 

court is better positioned to parse the record to evaluate 

the parties’ competing arguments, we remand for the 

district court to consider these issues in the first instance. 

On remand, the trial court should consider the parties’ arguments in light of the trial record and determine 

what additional proceedings, if any, are needed. If the 
APPLE 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 remand this matter to the district court for further proceedings. 

REMANDED