Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
Damages In Design Patent Infringement Cases
The successful plaintiff in a design patent infringement case is entitled to recover the greater of the defendant's profits or its own damages, regardless of how the jury desires to apportion the award. Moreover, a plaintiff is not required to apportion those profits to the portion of the infringing device that is attributable to the patented design. Thus, in Nordock, Inc. v. Systems Inc., No. 2014-1762, 2015 WL 5710400 (Fed. Cir. Sept. 29, 2015), the Federal Circuit ordered a new damages trial on the grounds that the amount of defendant's profits assessed by the jury was not supported by the evidence or in accordance with the law. The Nordock decision also contains a warning that post-verdict motions should be made with sufficient specificity.
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.
This premium content is locked for Entertainment Law & Finance subscribers only
ENJOY UNLIMITED ACCESS TO THE SINGLE SOURCE OF OBJECTIVE LEGAL ANALYSIS, PRACTICAL INSIGHTS, AND NEWS IN ENTERTAINMENT LAW.
- Stay current on the latest information, rulings, regulations, and trends
- Includes practical, must-have information on copyrights, royalties, AI, and more
- Tap into expert guidance from top entertainment lawyers and experts
Already a have an account? Sign In Now Log In Now
For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
Removing Restrictive Covenants In New York
In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?