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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.
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