The Federal Circuit Perpetuates the Illogic of Samsung v. Apple

In Advantek Mktg., Inc. v. Shanghai Walk-Long Tools Co., 898 F.3d 1210 (Fed. Cir. 2018), the U.S. Court of Appeals for the Federal Circuit reinforced portions of the Supreme Court’s decision in Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429 (2016), portions that were quite unnecessary to resolve the issue in Advantek. In sum, the court perpetuated the Supreme Court’s failure in Samsung to distinguish between the term “article of manufacture” as used in 35 U.S.C. Sections 171 and 289.

The facts in Advantek are straightforward. The patented design was for a kennel, and the infringer made and sold a kennel with a cover.

After some awkward analysis, the court finally applied standard patent law, correctly concluding that:

“A competitor who sells a kennel embodying Advantek’s patented structural design infringes the [kennel design] patent, regardless of extra features, such as a cover, that the competitor might add to its kennel.” Advantek Mktg., Inc., 898 F.3d at 1216-17.

In spite of the fact that the Advantek case had nothing to do with damages (Sec. 289) the court quoted Samsung for the proposition that “a design patent may be for a component of a product”, citing the Supreme Court’s conclusion that “[T]he term “article of manufacture” is broad enough to encompass both a product sold to a consumer as well as a component of a product.” The problem is that the first quote referred to Sec. 171 and the latter quote referred to Sec. 289.

In my recent article, I pointed out the Supreme Court’s illogic, which contributed to its conclusion that the “article of manufacture” in Sec 289 “encompasses both a product sold to a consumer and a component of that product.”  In other words, the Court had bootstrapped the meaning of “article of manufacture” as used in Sec. 171 (that defines statutory subject matter for design patents) to support its interpretation of that phrase in Sec. 289 (that defines the product for which total profit is to be paid by the infringer). In so doing, it did not take into account that “article of manufacture” in Sec. 171 refers to the patentee’s product, and that phrase in Sec. 289 refers to the infringer’s product. These are fundamentally different, and any definition of the former should not have been used to define that phrase in the latter. 

In order to obtain a design patent, Sec. 171 says that the design must be for an article of manufacture. That necessarily refers to the patentee’s product, i.e., the patentee’s product must be for an article of manufacture (which the USPTO requires be named in the title and claim of the design patent).

In order to determine the total profit due from an infringer, Sec. 289 defines the liable entity as “[w]hoever….applies the patented design… to any article of manufacture… Quite clearly, the article of manufacture in Sec. 289 is the one belonging to the infringer, and since “any” means any, the infringer’s article may very well have no relationship to the article of the patentee. 
In other words, just because the term as used in Sec. 171 can be a component of a multicomponent product does not inexorably lead to the conclusion that the term as used in Sec. 289 can be a component of a multicomponent product.

Thus, the Federal Circuit in Advantek inappropriately conflated the two meanings, as did the Supreme Court.
The Federal Circuit in Advantek went further out on a limb, citing the venerated Gorham v. White case as one that stood for the proposition that “the patent was infringed based on the design of the components alone.” The patented design was shown on the handle of a fork. It is hard to imagine a factual finding that the design on an integrally formed fork is a component of a multicomponent product, a finding that would have appropriately brought Samsung into play. Moreover, the question of damages was not an issue in Gorham.

At least Gorham was an infringement decision, as was Samsung. Adding to the confusion, the Federal Circuit also relied on the seminal in re Zahn case, a patentability decision, that found that a design patent claim to a portion of a drill bit met the definition of “article of manufacture” in Sec. 171.
Advantek was an infringement case, not a patentability case. So, the Federal Circuit’s reliance on Zahn as support for its infringement analysis in Advantek was questionable, at best.

This confusion has unfortunately spilled over to USPTO design patent prosecution, where examiners are using Advantek to support Sec. 102 rejections, applying prior art references in which only a component of the prior art design is similar to the claimed design. This runs counter to black letter law that requires the purportedly anticipatory prior art to be “identical in all material respects” to the claimed design, Hupp v. Siroflex, 122 F.3d 1456 (Fed. Cir. 1997).

The logic used in Advantek also perpetuates the Federal Circuit’s ill-thought out decision in Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009), which this author has roundly criticized in an earlier article. It will likely take an en banc case for the Federal Circuit to overrule or modify its Seaway precedent. 

Hopefully, an appropriate case is in the pipeline that will resolve the Seaway mess once and for all. And perhaps some court somewhere will recognize the distinction between the “article of manufacture” as used in Sec. 171, and as used in Sec. 289.


Perry J. Saidman