Damages In Design Patent Infringement Cases

Successful patent plaintiffs are entitled to compensatory damages, but in no event less than a reasonable royalty. See, 35 U.S.C. '284. The Patent Act grants owners of design patents an additional alternative remedy: the infringer's total profit. See, 35 U.S.C. '289. The Federal Circuit has confirmed that it is inappropriate to apportion the infringer's profits between the patented design and the article bearing the design. See, Apple Inc. v. Samsung Elecs. Co., 786 F.3d 393, 1001-02 (Fed. Cir. 2005). In addition, the jury has no discretion; where plaintiff has sought a defendant's profits under '289, the jury may not elect to award the plaintiff its damages if those damages are less than the defendant's profits. Nordock, at 11.

In Nordock, the Federal Circuit reiterated that a prevailing design patentee may recover the greater of: “1) total profits from the infringer's sales under '289; or 2) damages in the form of the patentee's lost profits or a reasonable royalty under '284.” Nordock at 6 (emphasis added). This is not a matter for the jury's or judge's discretion. Therefore, after the jury verdict awarded damages and indicated that the amount of defendant's profits was $0, the Federal Circuit vacated the damages award and remanded the case for a new trial on damages.