Two More District Court Decisions Applying the Four-Factor "Article of Manufacture" Test

As readers may recall, 35 U.S.C. § 289 permits the owner of an infringed design patent to recover the infringer's "total profit."  Interpreting this provision, the United States Supreme Court in Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429 (2016), held that the determination of an award under § 289 “involves two steps.  First, identify the ‘article of manufacture’ to which the infringed design has been applied.  Second, calculate the infringer's total profit made on that article of manufacture.”  The Court didn't specify how to go about identifying the relevant article of manufacture, but in the cases decided immediately after Samsung courts were instructing juries to consider four factors initially proposed in an amicus brief the United States filed in Samsung.  See Sarah Burstein, The Article of Manufacture Today, 31 Harv. J. L. & Tech. 781, 783 & n.9  (2018) (citing Jury Instructions at No. 10, Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, No. 3:17-cv-01781-HZ (S.D. Cal. Sept. 29, 2017), ECF No. 378; Order Requiring New Trial on Design Patent Damages, Apple Inc. v. Samsung Elecs. Co., No. 5:11-cv-01846, 124 U.S.P.Q.2d 1917, 2017 WL 4776443 (N.D. Cal. Oct. 22, 2017), ECF No. 3530; Decision and Order, Nordock Inc. v. Sys. Inc., No. 2:11-cv-00118, 2017 WL 5633114 (E.D. Wis. Nov. 21, 2017), ECF No. 270).  The factors are (1) “the scope of the design claimed in the plaintiff's patent”; (2) “the relative prominence of the design within the product as a whole”; (3) “whether the design is conceptually distinct from the product as a whole”; and (4) “the physical relationship between the patented design and the rest of the product.”  Brief for the United States as Amicus Curiae Supporting Neither Party, Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016), (No. 15-777), 2016 WL 3194218.  

Recently I asked my research assistant Riley Ji to see if there are any more recent cases applying the four-factor test, or some other test, and she alerted me to two decided this year.  The first is Junker v. Med. Components, Inc.,  2021 WL 131340 (E.D. Pa. Jan. 14, 2021), in which the court applied the four-factor test to conclude that the relevant article of manufacture was "the entire introducer sheath product as sold by" the defendants.  The court then accepted the defendant's expert's methodology for determining the profit attributable to that article (since the product was usually sold as part of a kit) and awarded $1,247,910.  The other case is Red Carpet Studios v. Midwest Trading Grp., Inc., 2021 WL 1172218 (S.D. Ohio Mar. 29, 2021).  This court too applied the four-factor test and concluded that the relevant article was the entire "Solar Spinner" product sold by the defendants.  The court awarded profits totaling, altogether, $521,802.

Red Carpet Studios is also notable in concluding that there is no right to a jury trial on the issue of disgorgement of profits under § 289, because this is an equitable remedy.  This is consistent with the view I have previously expressed, see, e.g., here, but this is the first design patent case I've seen that actually addresses the matter.  

If readers are aware of any other cases we may have missed, please let me know.  So far, though, it appears that, for better or worse, the four-factor test is winning out.