The Patentability of Separability: Designing a Test for “Article of Manufacture” Identification in Section 289 of the Patent Act

Authors

Wald, Samantha M.

Abstract

The U.S. Supreme Court’s decision in Samsung Electronics v. Apple Inc. regarding the meaning of the term “article of manufacture” in Section 289 of the Patent Act neglects to resolve foundational distinctions in the protected scope of multi-component devices. Cloaked in ambiguity, the Court’s brief and ostensibly limited opinion critically fails to demonstrate when the relevant “article of manufacture” should be treated as the whole commercial product or as some smaller unit; nor does it explain how to identify the relevant “article of manufacture” if it is less than the product as a whole. Instead, the Supreme Court’s dictionary-based definition of the term “article of manufacture” has unearthed more questions than answers, the most salient being how to identify the relevant “article of manufacture” and appropriate remedy for infringement of multifaceted products.

This Article attempts to do what the United States Supreme Court would not: it sets out a test for identifying the relevant “article of manufacture” at step one of the Section 289 damages inquiry. Finding inspiration in the copyright doctrine of separability, it advances a statutory framework, judiciously delineating a more standardized approach to “article of manufacture” identification in multi-component devices. Specifically, through the development of a “separability” test, this Article imposes a constructive foundation of statutory guidance that does not broadly capture or exclude all components of the claimed design. Instead, it proposes a workable standard that explicitly determines when the component of an invention, rather than the invention itself, should constitute the relevant “article of manufacture.” If implemented, this test would foster consistency in the practice of design patent law by establishing predictability through the furtherance of more precise guidelines.

Recommended Citation

Wald, Samantha M., The Patentability of Separability: Designing a Test for “Article of Manufacture” Identification in Section 289 of the Patent Act, 62 Santa Clara L. Rev. 597 (2022).
Available at: https://digitalcommons.law.scu.edu/lawreview/vol62/iss3/3