Is Copyright’s Muddled “Conceptual Separability” Doctrine Coming to Patent Law?

In Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429 (2016), the Supreme Court held that damages for infringement of a design patent could properly be awarded even even where the patent covered only an individual component of the product as sold to to consumers rather than the design of the product as a whole. Most products aren’t sold to consumers in separate pieces, however, but only as a completed whole. When only some of the components of a finished product are covered by a patent, how should a court assess the damages for infringement of that patent? The Court’s decision naturally raised, but did not answer, the question how to apportion damages where a particular component of a product as sold to end-users infringes a patent but the remaining components (and the product as a whole) do not.

In at least two post-Samsung cases, courts have adopted a four-factor framework to help analyze the apportionment question. Drawn from a test originally proposed to the Supreme Court by the Solicitor General, these courts have described the relevant considerations as:

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”; and
4. “[T]he physical relationship between the patented design and the rest of the product,” including whether “the design pertains to a component that a user or seller can physically separate from the product as a whole,” and whether “the design is embodied in a component that is manufactured separately from the rest of the product, or if the component can be sold separately.”

See, e.g., Apple Inc. v. Samsung Elecs. Co. Ltd. (N.D. Cal. Oct. 22, 2017); Nordock, Inc. v. Systems, Inc. (E.D. Wis. Nov. 21, 2017).

The third, and to some extent the fourth, factors in the courts’ framework look a very similar to a question that comes up frequently in copyright cases concerning the design of manufactured goods: whether the appearance of a useful article is “conceptually separable” from the utilitarian aspects of the good. “Conceptual separability” is shorthand for language in the Copyright Act that declares that “the design of a useful article … shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101 (emphasis added).

But “conceptual separability” doctrine in copyright is a bit of a mess right now, and it’s not clear whether it contains any useful points of analogy for courts in patent cases. In its decision in Varsity Brands, Inc. v. Star Athletica LLC, 799 F.3d 468, 484-85 (6th Cir. 2015), the Court of Appeals identified nine different tests the courts had developed to ascertain whether the design of a useful article contained any “conceptually separable” copyrightable elements. Rather than trim down the number of competing approaches, the Court of Appeals proceeded to broaden it by developing its own novel five-step approach to assessing conceptual separability, id. at 487-89. And last year the Supreme Court, affirming, enunciated an unhelpful two-part test that it claimed was drawn directly from the above-quoted statutory language—the same language that generations of prior case law had found inadequate to explain which features of a useful article’s design could be protected under copyright.

It’s not clear to me that the courts who are now insisting on an assessment of “whether the design [of a patented article] is conceptually distinct from the product as a whole” recognize that they are treading adjacent to a doctrinal minefield. Given the courts’ great difficulties answering copyright’s “conceptual separability” question, what reason is there to expect clearer or more satisfying answers in patent cases?