How Should Damages be Calculated for Design Patent Infringement?

• Published in: The Review of litigation Vol. 37; no. 3; pp. 241 - 285
• Main Author: Janis, Mark D
• Format: Journal Article
• Language: English
• Published: Austin University of Texas, Austin, School of Law Publications, Inc 01-01-2018
• Subjects: Consumers; Copyright; Counterfeiting; Fees & charges; Infringement; Knowledge; Patent law; Profits; State court decisions; Supreme Court decisions; Trademarks; United States > US
• ISSN: 0734-4015

"7 Courts have ruled that Section 284 damages are available to design patent owners as an alternative to a Section 289 award.8 In Samsung, the Court ruled that the "article of manufacture" in the Section 289 profits analysis as applied in any given case could refer to the end product sold to a consumer or to a component of that product, rejecting the Federal Circuit's interpretation that the article always must be the infringer's entire product.9 But the Court declined to adopt a test for identifying the operative article of manufacture. [...]because the Court was addressing only a Section 289 profits award, it did not speak to the extension of Section 284 theories to design patents or to the $250 statutory damages element of Section 289. [...]the Samsung decision indirectly exerts pressure on the design patent damages inquiry writ large, prompting questions about which combination of remedies is best suited to provide adequate compensation to design patent owners while still minimizing the risk of windfall recoveries. Part II concludes that Section 284 lost profits damages may be difficult to establish in many design patent cases, and that the reasonable royalty theory is a poor fit for design patents. [...]the critiques aimed at both theories in the utility patent context are equally significant for design patents. [...]calculate the infringer's total profit made on that article of manufacture.