New Article on Determining the “Article of Manufacture” under 35 U.S.C. 289

Perry Saidman has written a new article that analyzes the Government’s proposed 4-factor test for determining the “article of manufacture” when calculating the infringer’s total profit due to the design patentee under 35 U.S.C. 289.

The article critiques the 4-factor test, concluding that one of the factors is useless, another is very subjective and difficult to apply, and aspects of another factor are redundant and duplicitive. Only one of the factors makes sense, together with one aspect of another factor. The article sets forth two alternative factors worthy of consideration.

The 4-factor test was originally part of an amicus curiae brief filed by the Government in the Samsung v. Apple case at the Supreme Court. The Court in its decision did not adopt the 4-factor test, saying that the parties had not had a chance to brief or argue it. But since then, it has been adopted by every district court to consider the issue.

The first of those cases, Columbia Sportswear v. Seirus, is now before the U.S. Court of Appeals for the Federal Circuit. The case has been fully briefed, and is awaiting oral argument. The Government’s proposed 4-factor test was argued extensively by both the Appellant and Appellee. (attached are the Appellant’s opening and reply briefs, and Appellee’s opening and reply briefs).

The outcome of the Federal Circuit’s consideration of the 4-factor test is of critical importance to the design patent system.