Daryl Lim is Professor of Law and the Director of the Center for Intellectual Property (IP), Information & Privacy Law at the University of Illinois Chicago School of Law. The IP Center is a founding IP institution in the United States and is consistently ranked as offering one of the premier IP programs in the country.
Professor Lim is an award-winning author, observer, and commentator of global trends in IP and competition policy and how they influence and are influenced by law, technology, economics, and politics. Thomson Reuters (West) selected two of his articles as the best IP articles of the year, in 2018 and 2021. He has also contributed to practitioner-focused publications for the American Bar Association, Law360, IPWatchdog, IP Watch, and IP Magazine. In addition, legal publications, specialty blogs such as Patently-O, and mainstream media sources such as Forbes, Slate, The Daily Journal, RealClearPolicy, and USA Today featured his views on current IP developments.
Today, Judge Newman is the Federal Circuit’s most prolific dissenter, and her dissents are important. Former Chief Judge Paul Michel noted that “Judge Newman may hold the record for the most dissents. But her dissents have great force and often persuade other colleagues over time.” Judge Kimberly Moore concurred, saying “[w]hat people may not realize is that many of her dissents have later gone on to become the law—either the en banc law from our court or spoken on high from the Supremes.” She noted that “Merck v. Integra comes to mind. It’s a case where she wrote a very strong dissent. The Supreme Court took it and not only changed the state of the law to reflect what she had written, but they cited her outright in the opinion.”
The Supreme Court need not wait for Congress to act. This is a case of first impression in interpreting the provision. Guided by its own law on design patent infringement and legislative history, the Court can reach the common sense result provided by the provision’s wording. Design owners should be made whole, but not unjustly enriched. Awarding the infringer’s total profits regardless of the contribution of the design to the end product’s value subverts patent law’s mandate to promote technological progress.