Apple v. Samsung Electronics is headed back to where it all began: district court in San Jose, California.
A federal appeals court on Tuesday ordered that the long-running patent dispute be sent back to a lower court. That lower court, where the trials originally took place, will decide whether to hold another damages retrial or what other recourse to take.
Apple and Samsung didn’t immediately respond to requests for comment.
Apple and Samsung have been battling over patents since 2012, and a question about how much money could be owed for infringing design patents made it all the way to the Supreme Court in late 2016. In December, the Supreme Court said in a unanimous opinion that damages for design patent infringement can be based only on the part of the device that infringed the patents, not necessarily on the entire product.
That ruling reshapes the value of designs, and how much one company has to pay for copying the look of a competitor’s product. Before the ruling, the law said an award could be collected on the entire profits of an infringing device. In this case, that’s the $399 million Samsung paid Apple late last year.
The Supreme Court didn’t give guidance on how damages should be decided, though, and now an appeals court isn’t weighing in, either. With Tuesday’s ruling, the US court of appeals for the federal circuit has punted the case back to district court for the Northern District of California.
“Trial courts are well suited for this type of analysis, so it makes sense that the Federal Circuit — rather than create a procedure from whole-cloth — would like to see how the trial court approaches the problem,” said Case Collard, a partner at law firm Dorsey & Whitney.
Apple had asked for the appeals court to uphold the earlier damages ruling because Samsung never showed an “article of manufacture” to be anything other than an entire phone. Samsung, meanwhile, wanted the case sent back to district court for a new damages trial. Instead, the federal circuit said it will be up to the district court to decide if a new trial is needed.
“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,” it said. “If the 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 [Section 289 of the Patent Act of 1952] and to apply that test to this case.”
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