Determining The “Article of Manufacture” Under 35 U.S.C. § 289

Determining The “Article of Manufacture” Under 35 U.S.C. § 289

Perry Saidman, Elizabeth Ferrill, Damon, Neagle, and Tracy Durkin

For the first time in more than 100 years, on December 6, 2016, the Supreme Court decided a case involving a design patent. The case, Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429 (2016), involved the interpretation of 35 U.S.C. § 289, which says that an infringer is liable to the design patent owner to the extent of his total profit for sales of any article of manufacture to which the patented design has been applied. The Supreme Court decided that an article of manufacture under Section 289 may be the end product as sold by the infringer, or it may be a component of the end product. This decision left open the question of how to decide what the article of manufacture is in any given case, including the one at bar. Our article, being a collaborative effort among a small group of design patent specialists, proposes a test for determining the relevant article of manufacture in any given case, and also proposes considerations for determining the total profit once the relevant article of manufacture has been identified.

99 J. Pat. & Trademark Off. Soc’y 349(2017)

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