A Balanced Test for the "Article of Manufacture" after Samsung v. Apple

35 U.S.C. 289 provides a "additional remedy" for infringement of a US design patent: the total profits from the sale of the infringing "article of manufacture." Last December, the Supreme Court overturned decades of caselaw in which courts had uniformly concluded the "article of manufacture" was always the entire infringing product, as sold by the infringer. However, the Supreme Court did not articulate a legal standard for determining the proper article of manufacture and provided very little guidance concerning the legal standard.

In order to fill the void left by the Supreme Court, I joined a group of seasoned design patent practitioners who developed a proposed legal standard for determining the "article of manufacture". The article linked below explains our proposed approach. This may be a little dry for some (i.e., good bedtime reading) --- but this is one of the most significant design patent issues to arise during the course of my career.

Comments are welcomed!