Daryl Lim is the H. Laddie Montague Jr. Chair in Law at Penn State Dickinson Law and co-hire at the Institute of Computational and Data Sciences at Penn State University. He also serves as associate dean for research and innovation and founding director of the Intellectual Property (IP) and Innovative Initiative.
Professor Lim is an award-winning author, observer, and commentator of national and global trends in IP and competition policy and how they influence and are influenced by law, technology, economics, and politics. He helps policy makers, attorneys, corporate counsel, scholars, and the public make sense of the world around them. He is a founding member of the Global IP Alliance and its local chapters in Pennsylvania and Illinois. In addition, he serves as Co-Chair of the University Education Committee in the US IP Alliance. He consults internationally on various IP and antitrust issues.
His publications feature in leading flagship and specialty law reviews. In addition, he serves as a peer reviewer for the Yale Law Journal, Journal of Empirical Legal Studies, Journal of Antitrust Enforcement (Oxford University Press), the National Academy of Inventors, Cambridge University Press, John Wiley & Sons, Carolina Academic Press, and the International Review of Intellectual Property and Competition Law.
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.