Determining the "Article of Manufacture" Under 35 U.S.C. 289

Authored by Elizabeth D. Ferrill, Perry Saidman, Damon Neagle, and Tracy Durkin

The Supreme Court handed down its decision in the design patent case of Samsung v. Apple in December, 2016. The case involved interpretation of 35 U.S.C. 289 that 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" of Section 289 may be an end product as sold, or a component of the end product. In its opinion, the Court left open the question of how to determine the relevant "article of manufacture". In this article, Finnegan attorney Elizabeth D. Ferrill collaborates with a small group of design patent specialists to propose a test for determining the relevant "article of manufacture" in any given case, and also propose considerations for determining the total profit once the relevant article of manufacture has been identified.

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