How should the article of manufacture be determined when applying the patent exhaustion and repair doctrines in design patent cases?

QUESTION PRESENTED Design patents are limited to “any new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171(a). Under the patent exhaustion doctrine, a patentee’s decision to sell a product exhausts all of its patent rights in that item. The unrestricted sale creates an implied license to use, which includes the right to repair. Analysis of whether a right to repair exists requires identification of the correct article of manufacture. The Federal Circuit held that repair rights and identification of the article of manufacture should be determined solely by what is claimed in the patent. This holding allows a patentee to greatly diminish or eliminate the right to repair and allows improper broadening of design patent protection over unclaimed portions of a design. The question presented is: How should the article of manufacture be determined when applying the patent exhaustion and repair doctrines in design patent cases? (i)