There's yet another trial in the works for Apple Inc. and Samsung Electronics Co. The 2011 “trial of the century” is headed for a retrial in 2018 on design patent damages. A jury in U.S. District Judge Lucy Koh's courtroom awarded $399 million the first time around, but the U.S. Supreme Court ruled last fall that maybe Apple wasn't entitled to all of Samsung's profits on its infringing smartphones and tablets. Instead, it's due profits only on “the article of infringement.” The high court, as is its wont, left it to the lower courts to decide what that means in practice.

In a ruling Sunday, Koh took a first crack at some ground rules. Here are five takeaways from her opinion:

1) It's good news for Samsung. Apple had made a colorable argument that Samsung waived the “article of manufacture” argument at trial, and only brought it up on appeal. Koh did note in her opinion that the issue had never come up in discovery and that Samsung raised it with her only “days before trial.” But that was good enough to preserve it, Koh concluded.

2) Watch what you say at the Supreme Court! Apple counsel Seth Waxman and Samsung attorney Kathleen Sullivan both spoke positively—though one could call it damning with faint praise—about the solicitor general's four-factor test for determining whether design is the “article of manufacture” or just one component of it. The test includes the “relative prominence of the design within the product as a whole”—e.g. the cupholder in an automobile would be a component—and “whether the design is conceptually distinct from the product as a whole.” In their briefs on remand, both sides tried to propose new factors, but it was too late. Koh pointed out that Waxman, of Wilmer Cutler Pickering Hale and Dorr, had told the high court Apple “could live with” the SG's test, and Sullivan, of Quinn Emanuel Urquhart & Sullivan, said it “has a lot of merit.”

Wrote Koh: “Particularly where, as here, both parties agree that the United States' test is acceptable, there is little reason to adopt a different test in this case.”

3) One little word can make all the difference. One of the disputes before Koh was whether design is always a portion of a multicomponent product. Samsung argued that the “article of manufacture” cannot include “any part, portion or component of a product” that isn't part of the design patent. Apple argued this was a backdoor attempt to apportion design on any multicomponent product, no matter how integral the design.

Koh agreed, noting the Supreme Court's opinion says a patent holder “will sometimes be entitled to the infringer's total profit from a component of the end product.” If that's the case, then “the patent holder is also sometimes entitled to the infringer's total profit on the entire end product,” Koh wrote. “Samsung's test is not consistent with the U.S. Supreme Court's decision.”

4) Welcome to the Federal Supplement, professor Sarah Burstein. Oklahoma University's Burstein has drafted two forthcoming law review articles on design patents, and Koh cited both in Sunday's decision. In particular, she cited Burstein in holding that that the burden of persuasion should fall on the patent owner to identify the article of manufacturer. Koh also noted Burstein's critique of the government's four-factor test, though ultimately she did not agree there.

Burstein said on Twitter it was the first time a court had cited her work. “Even though Judge Koh didn't agree with me on everything, I'm delighted that she read my articles and found them helpful in any way,” Burstein added via email.

5) So what does it all mean for Apple and Samsung? Santa Clara University law professor Brian Love said the fourth factor of the government's test, which asks whether a seller can “physically separate” the design from the product, will cut against Apple. “I would expect the damages award to drop substantially,” Love said.

Burstein said it might come down more to juror preference. “That test just throws a bunch of factors at the jury without any real guidance on what to do with them or how to weigh them,” she said. “So I suspect that, in the end, the jurors will just pick an amount they think seems fair.”

On his Foss Patents blog, Florian Mueller is thinking the impossible: settlement. He thinks there's now a 30 percent chance. “They've both shown to the world”—including their common enemy Qualcomm Inc.—that they're prepared to see this kind of litigation through over the course of many years,” he writes, “and they have bigger issues (again, Qualcomm) to focus on.”

There's yet another trial in the works for Apple Inc. and Samsung Electronics Co. The 2011 “trial of the century” is headed for a retrial in 2018 on design patent damages. A jury in U.S. District Judge Lucy Koh's courtroom awarded $399 million the first time around, but the U.S. Supreme Court ruled last fall that maybe Apple wasn't entitled to all of Samsung's profits on its infringing smartphones and tablets. Instead, it's due profits only on “the article of infringement.” The high court, as is its wont, left it to the lower courts to decide what that means in practice.

In a ruling Sunday, Koh took a first crack at some ground rules. Here are five takeaways from her opinion:

1) It's good news for Samsung. Apple had made a colorable argument that Samsung waived the “article of manufacture” argument at trial, and only brought it up on appeal. Koh did note in her opinion that the issue had never come up in discovery and that Samsung raised it with her only “days before trial.” But that was good enough to preserve it, Koh concluded.

2) Watch what you say at the Supreme Court! Apple counsel Seth Waxman and Samsung attorney Kathleen Sullivan both spoke positively—though one could call it damning with faint praise—about the solicitor general's four-factor test for determining whether design is the “article of manufacture” or just one component of it. The test includes the “relative prominence of the design within the product as a whole”—e.g. the cupholder in an automobile would be a component—and “whether the design is conceptually distinct from the product as a whole.” In their briefs on remand, both sides tried to propose new factors, but it was too late. Koh pointed out that Waxman, of Wilmer Cutler Pickering Hale and Dorr, had told the high court Apple “could live with” the SG's test, and Sullivan, of Quinn Emanuel Urquhart & Sullivan, said it “has a lot of merit.”

Wrote Koh: “Particularly where, as here, both parties agree that the United States' test is acceptable, there is little reason to adopt a different test in this case.”

3) One little word can make all the difference. One of the disputes before Koh was whether design is always a portion of a multicomponent product. Samsung argued that the “article of manufacture” cannot include “any part, portion or component of a product” that isn't part of the design patent. Apple argued this was a backdoor attempt to apportion design on any multicomponent product, no matter how integral the design.

Koh agreed, noting the Supreme Court's opinion says a patent holder “will sometimes be entitled to the infringer's total profit from a component of the end product.” If that's the case, then “the patent holder is also sometimes entitled to the infringer's total profit on the entire end product,” Koh wrote. “Samsung's test is not consistent with the U.S. Supreme Court's decision.”

4) Welcome to the Federal Supplement, professor Sarah Burstein. Oklahoma University's Burstein has drafted two forthcoming law review articles on design patents, and Koh cited both in Sunday's decision. In particular, she cited Burstein in holding that that the burden of persuasion should fall on the patent owner to identify the article of manufacturer. Koh also noted Burstein's critique of the government's four-factor test, though ultimately she did not agree there.

Burstein said on Twitter it was the first time a court had cited her work. “Even though Judge Koh didn't agree with me on everything, I'm delighted that she read my articles and found them helpful in any way,” Burstein added via email.

5) So what does it all mean for Apple and Samsung? Santa Clara University law professor Brian Love said the fourth factor of the government's test, which asks whether a seller can “physically separate” the design from the product, will cut against Apple. “I would expect the damages award to drop substantially,” Love said.

Burstein said it might come down more to juror preference. “That test just throws a bunch of factors at the jury without any real guidance on what to do with them or how to weigh them,” she said. “So I suspect that, in the end, the jurors will just pick an amount they think seems fair.”

On his Foss Patents blog, Florian Mueller is thinking the impossible: settlement. He thinks there's now a 30 percent chance. “They've both shown to the world”—including their common enemy Qualcomm Inc.—that they're prepared to see this kind of litigation through over the course of many years,” he writes, “and they have bigger issues (again, Qualcomm) to focus on.”