The 'Article of Manufacture' Today

60 Pages Posted: 11 Sep 2017 Last revised: 15 Aug 2018

See all articles by Sarah (Fackrell) Burstein

Sarah (Fackrell) Burstein

Chicago-Kent College of Law - Illinois Institute of Technology

Date Written: May 1, 2018


In Samsung v. Apple, the U.S. Supreme Court ruled that the phrase “article of manufacture” in 35 U.S.C. § 289 of the Patent Act can refer either to the infringer’s end product or to a component thereof. But the Court refused to formulate a test for what constitutes the relevant “article” in a given case. Some have argued that courts should adopt the multi-factor, case-specific approach proposed by the U.S. Government in its Samsung amicus brief. However, that approach is based on a flawed legal premise, fails to reflect either the language of the statute or the original intent, and will increase costs and uncertainty in design patent litigation. This Article proposes a new solution. It argues that courts should adopt the historical meaning of the phrase “article of manufacture” in interpreting and applying 35 U.S.C. § 289. It also argues that the determination of which article a particular design is “applied” to should be informed by the original understanding of what constituted a protectable “design.” This Article then proposes a framework for applying these principles to Samsung step one, including an explanation of why this should be treated as an issue of law, not an issue of fact. This approach provides a workable solution that would be easier and cheaper to apply than the other tests that have been proposed. This approach would also minimize the in terrorem value of partial design patents and result in more defensible damages awards that would more accurately reflect the designer’s actual contribution without providing a windfall to most design patentees.

Keywords: Patents, Design Patents, Profits, Disgorgement, Apple, Samsung, Intellectual Property

Suggested Citation

Burstein, Sarah, The 'Article of Manufacture' Today (May 1, 2018). 31 Harvard Journal of Law & Technology 781 (2018), Available at SSRN: or

Sarah Burstein (Contact Author)

Chicago-Kent College of Law - Illinois Institute of Technology ( email )

565 W. Adams St.
Chicago, IL 60661-3691
United States

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