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

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

Designing Around a Patent Injunction: Developing a Comprehensive Framework for Determining When Contempt Proceedings Are Appropriate

Spurred by TiVo Inc. v. Dish Network Corp., this Comment proposes a factor-based framework for determining when contempt proceedings are appropriate in a patent infringement case. Once a court determines that an accused device infringes a patent and issues an injunction, the infringing party will often try to design around the injunction by creating a modified device. Patentees can then respond to potential continued infringement by instituting a new infringement suit or by making a motion for contempt. Previously, under the contempt framework established by KSM Fastening Systems, Inc. v. H.A. Jones Co., the district court was required to undertake a substantial analysis into the propriety of contempt proceedings. Unfortunately, TiVo, which overruled KSM, eliminated the threshold inquiry into the propriety of contempt proceedings and produced a contempt standard that creates a lack of notice, certainty, and consistency that will adversely affect all of the parties involved. A comprehensive contempt framework should provide the district courts with the means of creating a reasoned distinction between modified devices that merit contempt proceedings and those that merit a separate infringement suit. This Comment argues that the Federal Circuit should reinstate the threshold inquiry and proposes a factor-based analysis to strengthen the KSM standard. The result is a comprehensive framework for determining whether contempt proceedings are appropriate that would cure the deficiencies of the TiVo contempt analysis

Molecular phylogeny and diversification history of Prosopis (Fabaceae: Mimosoideae)

The genus Prosopis is an important member of arid and semiarid environments around the world. To study Prosopis diversification and evolution, a combined approach including molecular phylogeny, molecular dating, and character optimization analysis was applied. Phylogenetic relationships were inferred from five different molecular markers (matK-trnK, trnL-trnF, trnS-psbC, G3pdh, NIA). Taxon sampling involved a total of 30 Prosopis species that represented all Sections and Series and the complete geographical range of the genus. The results suggest that Prosopis is not a natural group. Molecular dating analysis indicates that the divergence between Section Strombocarpa and Section Algarobia plus Section Monilicarpa occurred in the Oligocene, contrasting with a much recent diversification (Late Miocene) within each of these groups. The diversification of the group formed by species of Series Chilenses, Pallidae, and Ruscifoliae is inferred to have started in the Pliocene, showing a high diversification rate. The moment of diversification within the major lineages of American species of Prosopis is coincident with the spreading of arid areas in the Americas, suggesting a climatic control for diversification of the group. Optimization of habitat parameters suggests an ancient occupation of arid environments by Prosopis species.Fil: Catalano, Santiago Andres. Consejo Nacional de Investigaciones Científicas y Técnicas. Centro Científico Tecnológico - Tucumán. Unidad Ejecutora Lillo; ArgentinaFil: Vilardi, Juan Cesar. Consejo Nacional de Investigaciones Científicas y Técnicas. Oficina de Coordinación Administrativa Ciudad Universitaria. Instituto de Ecología, Genética y Evolución de Buenos Aires. Universidad de Buenos Aires. Facultad de Ciencias Exactas y Naturales. Instituto de Ecología, Genética y Evolución de Buenos Aires; ArgentinaFil: Tosto, Daniela Sandra. Consejo Nacional de Investigaciones Científicas y Técnicas; Argentina. Instituto Nacional de Tecnología Agropecuaria. Centro de Investigación en Ciencias Veterinarias y Agronómicas; ArgentinaFil: Saidman, Beatriz Ofelia. Consejo Nacional de Investigaciones Científicas y Técnicas. Oficina de Coordinación Administrativa Ciudad Universitaria. Instituto de Ecología, Genética y Evolución de Buenos Aires. Universidad de Buenos Aires. Facultad de Ciencias Exactas y Naturales. Instituto de Ecología, Genética y Evolución de Buenos Aires; Argentin

Electrosynthesis of hollow polypyrrole microtubes with a rectangular cross-section

We present results on the electrosynthesis of hollow rectangular microtubes of polypyrrole from neutral and alkaline solutions of salicylate. The electroactive films were prepared by electropolymerization of pyrrole on stainless steel substrate at a constant potential. The growth process of microtubes was studied by scanning electron microscopy (SEM). Deposition parameters such as salicylate concentration, monomer concentration, solution pH and electrode rotation have significant effects on the morphology of deposits. A plausible explanation for the occurrence of rectangular-sectioned microtubes is given.Fil: González, Belén. Consejo Nacional de Investigaciones Científicas y Técnicas. Centro Científico Tecnológico Conicet - Bahía Blanca; Argentina. Universidad Nacional del Sur. Departamento de Ingeniería Química. Instituto de Ingeniería Electroquímica y Corrosión; ArgentinaFil: Saidman, Silvana Beatriz. Consejo Nacional de Investigaciones Científicas y Técnicas. Centro Científico Tecnológico Conicet - Bahía Blanca; Argentina. Universidad Nacional del Sur. Departamento de Ingeniería Química. Instituto de Ingeniería Electroquímica y Corrosión; Argentin

Esterase variation among Argentine populations of Trimerotropis pallidipennis (Orthoptera)

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