is the Director of the John Marshall Law School’s Center for Intellectual Property, Information and Privacy Law, which ranked among the countries best Intellectual Property law programs according to the 2017 U.S. News & World Report’s “Best Graduate Schools” listing. Professor Lim lectures courses on intellectual property and antitrust at John Marshall Law School. Professor Lim received his law degrees from Stanford Law School and the National University of Singapore, and a degree in economics and management from the University of London (London School of Economics). His work was cited to the Supreme Court by opposing parties in a 2015 patent case.
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.