Last week, the Intellectual Property Law Society hosted Sarah Burstein, an associate professor at the University of Oklahoma College of Law. Professor Burstein spoke on rights and remedies in design patent law. Design patents, as Professor Burstein explained, grant exclusive rights to ornamental designs. They are often contrasted with utility patents, which grant rights to new and useful technologies. 

In most patent infringement cases, plaintiffs can receive damages that will compensate them for the infringement, or at the least, receive what would have been a reasonable royalty. However, in design patent cases, plaintiffs are entitled to receive an additional remedy: the infringer's total profit for the article of manufacture. In Apple v. Samsung, the Federal Circuit applied this rule to require Samsung to pay Apple its total profits from the sale of the phones containing the infringing design. The Supreme Court subsequently granted Samsung's petition for certiorari and heard argument in mid-October.

At the heart of Samsung v. Apple is the basic question: what constitutes an article of manufacture? An “article of manufacture” could be understood to mean anything from the entire product to just what is claimed in the patent. Professor Burstein first discussed the evolution of how courts have come to interpret “article of manufacture” in the context of obtaining a patent: in other words, what types of subject matter are patentable. In early cases, "article of manufacture" in this context was understood to refer to a design that was a self-contained unit, such as a 2-dimensional pattern on a rug or the decorative base of a crib. During the 1960's and 70's, however, "article of manufacture" came to be understood—for patenting purposes—in a much broader sense: to be any item made by human labor. Today, almost anything is patentable in a design patent, from the pattern of water falling from a fountain to two tiny holes on a disposable razor cartridge. 

But, Professor Burstein explained, this same progression has not occurred when interpreting "article of manufacture" for purposes of the special remedies provision for design patents.  There, “article of manufacture” is the entire product that is sold. So what does that mean for determining remedies?

When a defendant is found to be infringing a design patent, they must pay the plaintiff the total profits for the entire article of manufacture, which is the entire product sold. This means, for example, that if a defendant infringed a patent for, say, a piece of a machine, they would be required to pay the profits they gained from the entire machine. This poses obvious issues when only a small portion of a defendant’s “article of manufacture” infringes on another’s patent. Professor Burstein’s proposed solution is that the “article of manufacture” should be limited to what the patentee claimed in the patent. This proposal would rebalance the rights of the patent holder with the remedies they can obtain if their patent is infringed.

Antonio Martinez, an international student who attended the event, found the talk enlightening. Martinez observed that the rights a design patent grants and the remedies an aggrieved party can receive, “depends on the scope of the patent,” drawing a connection between the issue presented by Professor Burstein and an article by Professors Mark Lemley and Mark McKenna that he recently read in his Trademarks and Unfair Competition class.