Season 2, Episode 2: Spark of Genius, 15 U.S.C. 1052(a) & FUCT

Topic: Whether the “Scandalous Marks” provision of the Lanham Act can survive the First Amendment constitutional challenge presented by the owner of the clothing line, “FUCT”

Host: Alex Devilliers

Music written and supplied by Dr. Robert L. Eoff, Associate Professor in the Department of Biochemistry and Molecular Biology at The University of Arkansas for Medical Sciences.

Design Patent Damages: A Critique of the Government’s Proposed 4-Factor Test for Determining the “Article of Manufacture”

by Perry J. Saidman, Saidman DesignLaw Group, LLC

from Volume 8 (2018-2019)

Download this Article in PDF format from The Jerome Hall Law Library’s Digital Repository.

The Supreme Court in Samsung Electronics Co. v. Apple, Inc. wrestled with the question of determining the meaning of “article of manufacture” in 35 U.S.C. § 289 when it comes to calculating the total profit of the infringer that is awarded to the patentee.

In its Petition for Certiorari, Samsung raised the novel theory that the article of manufacture could be less than the entire product sold by the infringer. The Supreme Court agreed to hear the following issue, as framed in Samsung’s Petition:

Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?

Samsung argued that for a multi-component product, such as a smartphone, the article of manufacture needs to be defined in terms of only portions or components of the smartphone. Since Apple’s design patents were drawn to portions of the iPhone, rather than the entire iPhone, Samsung sought to limit its liability to its total profit on those portions. This would have greatly reduced the jury award of $399 million, which had been based on the total profit derived from Samsung’s sales of their entire smartphones to which the patented designs had been applied.

The Supreme Court said that the only question before it was narrow: “[W]hether, in the case of a multicomponent product, the relevant ‘article of manufacture’ must always be the end product sold to the consumer or whether it can also be a component of that product.”

Looking to the statutory text, the Supreme Court concluded that the term “article of manufacture,” as it is used in § 289, “encompasses both a product sold to a consumer and a component of that product.” The Court further indicated that the term “article of manufacture” is “broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not.” The Court declined, however, to “set out a test for identifying the relevant article of manufacture at the first step of the § 289 damages inquiry.”

Thus, the narrow question left unanswered from Samsung is how to determine the relevant article of manufacture for a multi-component product, such as a kitchen oven (the example given by Justice Sotomayor). If the product is a single component product, such as a dinner plate (again, Justice Sotomayor’s example), there is no issue, because, as she put it, “the product [sold to a consumer] is the ‘article of manufacture’ to which the design has been applied.”

The meaning of “total profit” was not at issue; as the Court stated: “‘[t]otal,’ of course, means all.” Thus, the Court left undisturbed the long-standing design patent rule against apportionment of the infringer’s total profit, as well as its sister rule prohibiting an inquiry into causation.

As noted above, the Court left formulation of a test for determining the article of manufacture to the lower courts in future litigation.

Volume 8

This volume includes scholarship from Nicole E. Pottinger and Brian L. Frye, who explore the implications of copyright registration and discuss the recent Supreme Court case Fourth Estate v.; scholarship from Daniel Kazhdan and Sanjiv P. Laud addressing the Supreme Court’s recent decision in TC Heartland and how the change in venue law has impacted courts; scholarship from Perry J. Saidman covering the recent Supreme Court case Samsung Electronics Co. v. Apple, Inc., including the discussed 4-factor test for determining an article of manufacture for design patent damages; and scholarship by Scott D. Locke discussing The Invention Secrecy Act and the role of the USPTO as a gatekeeper of national security.


Derek Ventling

Editorial Team

Publishing Editor: Sarah Eddy
Managing Editor: Nick Palmieri
Articles Editor: Ty Edwards
Content Editor: Kenneth Guerra
Audio Editor: Nick Wheeler

Articles Editors: Alex Devilliers, Tachina Smith, LaShaila Spivey, Carolyn Griffith, Francesca Campione, Weichih Hsu, Phil Koranteng, Joseph Leonard, Sachin Patel

Faculty Advisor and Primary Contact: Professor Michael Mattioli
Faculty Advisor: Professor Mark Janis


Volume 1

Issue 1

Winter, 2010

Reflections from the Trademark Scholars Roundtable

In this volume are published works reflecting the conversations from the Fourth Trademark Scholars Roundtable at DePaul University in 2012. The Trademark Scholars Roundtable participants discussed a wide range of approaches to understanding and limiting the ever-increasing sprawl of trademark rights.

Issue 2

Spring, 2011

Reflections on the Patent Scope Revisited Conference

This issue focuses on vehicles external to the patent system and the impact that they may have on determining scope of rights for patents. Included in this issue are conversations about the perceived formalistic behavior of the Federal Circuit and argument for courts to consider extrinsic evidence for interpretation of claim construction, giving way to policy considerations of productive directions for patent scope.

Volume 2

Issue 1

Winter, 2012

In this volume, we are pleased to publish scholarship from Christopher Holman on the impact of gene patents on whole genome sequencing.

Issue 2

Winter, 2012

This volume includes scholarship from across the globe. From the United States, we present the work of Professor Jamie Lund, Saint Mary’s University School of Law; Professor Jonathan Stroud, American University Washington College of Law; and Professor Elizabeth Hayes, Texas Wesleyan School of Law. We are also proud to present scholarship from Professor Carl Mair from the University of Leiden (the Netherlands) and Professor Nicola Searle from the University of Abertay Dundee (Scotland, UK).

Volume 3

Issue 1

Fall, 2012

In this issue, a variety of scholarship and insight is presented by both academic scholars and practitioners from across the world. Horacio Gutiérrez of Microsoft discusses the evolution of industrial design protection in consideration of virtual and technological advancements in an essay. Blake Hartz of Woodard, Emhardt, Moriarty, McNett & Henry LLP presents an examination of the dissenting opinions penned by Judge Newman of the Federal Circuit. Andrew T. Langford, Maurer School of Law Class of 2013, describes parallels between contract interpretation and claim construction in the Federal Circuit. Xinbo Li, University of Illinois Urbana-Champaign Law School Class of 2011, LLM, presents a discussion on protection of fashion design in the intellectual property realm. Ling Jin and Yihong Ying of Rouse’s China Technology Group discuss the limitations of graphic user interface protection in China.

Issue 2

Spring, 2013

In this issue, scholars and practitioners from across the world present on a variety of issues, including trademark law, design protection, and open-source licensing. Dr. Vikrant Vasudeva discusses open-source software licensing and intellectual property rights. Irina Pak of the BPP Law School in the U.K. presents an essay on the evolution of European trademark rights. Professor Estelle Derclaye of the University of Nottingham, U.K., discusses design rights decisions and the future of design rights in the U.K. Professor Alexandra Roberts of the University of New Hampshire in Concord examines the effect of trademark law on the name change of educational institutions. Professor Sarah Burstein of the University of Oklahoma College of Law examines copyright protection of designs. Professor Jason Rantanen of the University of Iowa College of Law presents a discussion on inequitable conduct in patent suits. Camilla Hrdy of Berkeley Law considers in discussion state patent regimes as an alternative for inventors who disagree with the current patent system in the United States. Dean Timothy Holbrook of Emory University School of Law examines the interest of the Supreme Court in patent law.

Volume 7

This volume includes scholarship from Arpan Banerjee, who explores recent deveopments and policy considerations regarding India’s antitrust and patent law, particularly in the context of Standard Essential Patents (SEPs) in the ICT sector; scholarship from Jacob S. Sherkow and Jorge L. Contreras, who explore the world of surrogate licensing; scholarship from Stephen Yelderman on the geographic scope of patent damages; and scholarship from Greg Reilly about the relative stability of our patent system since the 19th Century despite recent changes brought about by the America Invents Act of 2011.


Jessica Falender

Editorial Team
Senior Online Content and Podcast Editor: Alyssa Deckard
Senior Managing Editor: Jeff Soller
Senior Articles Editor: Ryan McDonnell
Editors: Trevor Jenkins, Ty Edwards, Derek Ventling, Sarah Eddy, Nick Palmieri, Nick Wheeler, Ken Guerra
Faculty Advisor and Primary Contact: Professor Michael Mattioli
Faculty Advisor: Professor Mark Janis


Volume 6

Spring, 2016

This volume includes scholarship from Professor Jason Rantanen on the malleability of patent rights.


Brett Bostrom

Editorial Team
Senior Managing Editor: Sarah Goodman
Senior Articles Editor: Sarah Rounsifer
Online Content Editor: Chris Cassella
Articles Editors: Alyssa Deckard, Jessica Falender, Ryan McDonnell, Jeffrey Soller
Faculty Advisor and Primary Contact: Professor Michael Mattioli
Faculty Advisor: Professor Mark Janis
Faculty Advisor: Professor Arpan Banerjee (Jindal Global Law School)


Volume 5

Spring, 2015

Academic Scholarship from 2014 Leveraging Creativity Conference

In this volume, we are pleased to publish scholarship from the academic speakers who presented at the 2014 Leveraging Creativity: Artists, Entrepreneurship, and Intellectual Property Law produced by the Indiana Arts Commission and the Center for Intellectual Property Research at the Indiana University Maurer School of Law. Additional support was provided by Indiana University’s New Frontiers in the Arts & Humanities Program, the Indiana University Jacobs School of Music, the National Endowment for the Arts and Meitus Gelbert Rose LLP.


Emily Storm-Smith

Editorial Team
Deepa Balavijayan (Emory School of Law)
Rian C. Dawson
Chelsey McCory
Benjamin R. Holt
Peter M. Nacsa
Freddie D. Ordonez (Emory School of Law)
Scott A. Skiles
Utena C. Yang (Emory School of Law)


Volume 4

Summer, 2014

In this volume, we are pleased to feature works on a range of intellectual property issues from Innovation in the biomedical industry to copyright liabilitiy.  Professor Lisa Larrimore of Stanford Law School explains the Cultural Cognition of Patents, Professor Kylie Pappalardo from the Queensland University of Technology provides an Australian perspective on the Duty and Control of Intermediary Copyright Liability, and Professor W. Nicholson Price II from the University of New Hampshire School of Law writes about Innovation and Quality in Drug Manufacturing.


Francesca Cardillo (Indiana)

Editorial Team
Deepa Balavijayan (Emory)
Jim Crook (Emory)
Kevin Domanico (Indiana)
EJ Henricks (Indiana)
Karen Jhurani (Emory)
Kassandra Officer (Indiana)
Emily Storm-Smith (Indiana)
Tammy Tanner (Emory)
Anna Wortham (Indiana)
Rian Dawson (Indiana)



  • Cultural Cognition of Patents By Lisa Larrimore Ouellette, Stanford Law School from Volume 4, Issue 1 (Summer, 2014) Download this Article in PDF format from The Jerome Hall Law Library’s Digital Repository. Abstract: Simply making empirical progress is not always enough to influence policy, as demonstrated by the polarized public discourse over issues ranging from climate change to gun control. The current discourse ...
  • Duty and Control in Intermediary Copyright Liability: An Australian Perspective By Kylie Pappalardo, Queensland University of Technology from Volume 4, Issue 1 (Summer, 2014) Download this Article in PDF format from The Jerome Hall Law Library’s Digital Repository. Abstract: In the internet age, copyright owners are increasingly looking to online intermediaries to take steps to prevent copyright infringement. Sometimes these intermediaries are closely tied to the acts of infringement; ...
  • Generic Entry Jujitsu: Innovation and Quality in Drug Manufacturing By W. Nicholson Price II, University of New Hampshire School of Law from Volume 4, Issue 1 (Summer, 2014) Download this Article in PDF format from The Jerome Hall Law Library’s Digital Repository. Abstract: The manufacturing side of the pharmaceutical industry has been neglected in innovation theory and policy, with the unfortunate result of stagnant manufacturing techniques ...