The Evolution of 'Article of Manufacture' in Patent Cases

Opinion of the Court: II-A

The text resolves this case. The term “article of manufacture,” as used in §289, encompasses both a product sold to a consumer and a component of that product.

“Article of manufacture” has a broad meaning. An “article” is just “a particular thing.” J. Stormonth, A Dictionary of the English Language 53 (1885) (Stormonth); see also American Heritage Dictionary, at 101 (“[a]n individual thing or element of a class; a particular object or item”). And “manufacture” means “the conversion of raw materials by the hand, or by machinery, into articles suitable for the use of man” and “the articles so made.” Stormonth 589; see also American Heritage Dictionary, at 1070 (“[t]he act, craft, or process of manufacturing products, especially on a large scale” or “[a] product that is manufactured”). An article of manufacture, then, is simply a thing made by hand or machine.

So understood, the term “article of manufacture” is broad enough to encompass both a product sold to a consumer as well as a component of that product. A component of a product, no less than the product itself, is a thing made by hand or machine. That a component may be integrated into a larger product, in other words, does not put it outside the category of articles of manufacture.

This reading of article of manufacture in §289 is consistent with 35 U. S. C. §171(a), which makes “new, original and ornamental design[s] for an article of manufacture” eligible for design patent protection.[3] The Patent Office and the courts have understood §171 to permit a design patent for a design extending to only a component of a multicomponent product. See, e.g., Ex parte Adams, 84 Off. Gaz. Pat. Office 311 (1898) (“The several articles of manufacture of peculiar shape which when combined produce a machine or structure having movable parts may each separately be patented as a design . . . ”); Application of Zahn, 617 F. 2d 261, 268 (CCPA 1980) (“Section 171 authorizes patents on ornamental designs for articles of manufacture. While the design must be embodied in some articles, the statute is not limited to designs for complete articles, or ‘discrete’ articles, and certainly not to articles separately sold . . . ”).

This reading is also consistent with 35 U. S. C. §101, which makes “any new and useful . . . manufacture . . . or any new and useful improvement thereof ” eligible for utility patent protection. Cf. 8 D. Chisum, Patents §23.03[2], pp. 23–12 to 23–13 (2014) (noting that “article of manufacture” in §171 includes “what would be considered a ‘manufacture’ within the meaning of Section 101”). “[T]his Court has read the term ‘manufacture’ in §101 . . . to mean ‘the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.’” Diamond v. Chakrabarty, 447 U. S. 303, 308 (1980) (quoting American Fruit Growers, Inc. v. Brogdex Co., 283 U. S. 1, 11 (1931)). The broad term includes “the parts of a machine considered separately from the machine itself.” 1 W. Robinson, The Law of Patents for Useful Inventions §183, p. 270 (1890).

[3] As originally enacted, the provision protected “any new and original design for a manufacture.” §3, 5 Stat. 544. The provision listed examples, including a design “worked into or worked on, or printed or painted or cast or otherwise fixed on, any article of manufacture” and a “shape or configuration of any article of manufacture.” Ibid. A streamlined version enacted in 1902 protected “any new, original, and ornamental design for an article of manufacture.” Ch. 783, 32 Stat. 193. The Patent Act of 1952 retained that language. See §171, 66 Stat. 813.