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

Bylined Articles


Perry Saidman, Saidman Design Law Group; Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Damon Neagle, Design IP; and Tracy Durkin, Sterne, Kessler, Goldstein & Fox P.L.L.C.


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". This article, 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.