It has been just over a year since the U.S. Supreme Court issued its unanimous decision in Samsung v. Apple. And in taking stock of the ways in which the law regarding design patent remedies has developed since then, it seems safe to say there is still work to be done, with vitally important consequences for innovators of all sizes.

Samsung sought to restore logic to the most consequential of the Patent Act's unique protections for design patent holders: Section 289's “total profits” remedy, which grants the right to seize all of the profits stemming from an “article of manufacture” to which a patented design has been unlawfully applied. Lower courts had determined that the relevant “article of manufacture” was necessarily the entire product as sold by the alleged infringer.

That interpretation of Section 289 proved nonsensical, especially for today's high-tech products, because it meant a patent on some insignificant product feature—like the shape of a screen or case—could yield a recovery of all the profits earned on the whole end product. Thus, some design patents for high-tech products may offer monopolies over the entire device—often supplanting the rights of an array of other patent holders. That would give design-patent owners undue leverage in the marketplace that they can use to extract excessive royalties and discourage competitors, even for design patents covering small, minor, ornamental features.

In December 2016, the Supreme Court staved off this problem, and brought design patent law in line with modern technology, by holding that “[i]n the case of a multicomponent product, the relevant 'article of manufacture'” under Section 289 might be something less than the whole product.

Merely introducing the possibility that the relevant article might be less than the whole product was a momentous change. But uncertainty remains, because the court provided no guidance for determining the relevant “article” for a multicomponent product, or how lower courts should go about deciding that issue.

These questions matter to anyone who invents, produces, sells—or, indeed buys—any complex, multicomponent product. And the debate is percolating through the lower courts, most notably in the Samsung v. Apple case where it all started.

On remand from the Supreme Court's decision, U.S. District Judge Lucy Koh of the Northern District of California called for a new trial to determine the relevant articles of manufacture to which the infringed designs were applied and the portions of Samsung's profits properly attributable to those articles. In her pretrial rulings, Koh indicated that she plans to apply the following test for determining the applicable “article of manufacture”:

1. [T]he scope of the design claimed in the plaintiff's patent, including the drawing and written description.
2. [T]he relative prominence of the design within the product as a whole.
3. [W]hether the design is conceptually distinct from the product as a whole.
4. [T]he physical relationship between the patented design and the rest of the product.

This test was first proposed by the U.S. solicitor general in a brief submitted during the Supreme Court proceedings, but the court did not embrace that test in its December 2016 decision. Despite this, it has already been applied in several other cases, including in a dispute between Columbia Sportswear Co. and Seirus Innovative Accessories over Seirus' incorporation of Columbia's patented “wavy-line” design into the lining of one of its jackets, which yielded a total profit award.

The SG test threatens design patent holders and their competitors alike. It leaves the determination of the relevant article, and the risk of a total profit award, almost entirely to lay jurors, without any instruction on the proper weight to be given to each factor, or how they ought to be applied. And it frames the inquiry in disturbingly vague, eye-of-the-beholder terms, such as the design's “relative prominence,” its “conceptua[l] distinct[ness],” and its “physical relationship” to the rest of the product.

The result, according to University of Oklahoma College of Law professor Sarah Burstein, a leading expert on design patents, is a test that is highly unpredictable, “unfocused,” and “indeterminate,” with no clear overriding goal other than what juries “decide is fair.” That makes it a conceptual “black box,” giving product creators no way to assess in advance whether they might be subject to a total profit award, a risk that will prove especially debilitating for many small businesses and startups, which have no way to absorb such an award.

While it will ultimately be up to appellate courts, perhaps on appeal from Columbia's verdict, to determine whether the SG's test is proper, there are still opportunities—in crafting the jury charge and evaluating the sufficiency of the evidence offered to meet it—for Koh to interpret the SG test to minimize those risks and protect the progress the Supreme Court achieved. Should Koh further embrace the SG's test, it will increase uncertainty for both patent holders and innovators, rolling back years of progress aimed at modernizing our laws and increasing clarity.

To date, the case has led to a great deal of progress for design patents that will help an array of industries and innovators. But work remains to ensure that progress is not lost. And much of that work is in the hands of the court in the new trial scheduled to start May 14.

Carl Cecere is owner of Cecere PC, where he practices U.S. Supreme Court and appellate advocacy. Cecere served as counsel for the National Grange and the Hispanic Leadership Fund in the Samsung v. Apple case, filing a brief on their behalf.