Design Patent Infringement Remedies

In 2012, Apple went head on with Samsung in a design patent infringement case where a jury awarded Apple $1.05 billion.  Such a head turning verdict is reason to revisit design patents and the remedies available for infringement.

United States laws provide several remedies for design patent infringements, spanning from damages to a disgorgement of the infringer’s profits from the sale of the infringing product.  In 2008, the landmark en banc Egyptian Goddess v. Swisa decision broadened the protection afforded to design patents by eliminating the point of novelty test.  After Egyptian Goddess, the only test that is relevant in determining a design patent infringement is the ordinary observer test, which asks: “whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused product design was the same as the patented design.”  This new standard provides design patent owners with a less burdensome avenue to prove infringement.

In general, remedies are the same for infringements of design patents and utility patents.  These remedies arise under 35 U.S.C. sections 281 to 299 and include injunctions, damages, and attorney fees in some cases.  However, there is one exception, section 289, which only applies to design patents and allows a design patent owner to be entitled to the infringer’s total profits from the sale of the infringing products.  With that being said, a patent owner must choose between damages under section 284 and recovery of the infringer’s total profits under section 289.

Remedies under 35 U.S.C. § 284 and § 289

Section 284 states, that a court shall award damages adequate to compensate for the infringement, but no less than a reasonable royalty for the use made of the invention by the infringer.  Under this scheme, the patent plaintiff can try to recover: (1) profits that it would have made had the defendant not sold the infringing products; or (2) a “reasonable royalty” which is a an amount that an infringer should have paid for the privileged of taking a license to the patented design.  Moreover, the statute allows for treble damages, which is a tripling of the amount awarded in certain case of willful conduct.  This type of remedy may be more beneficial if a patent owner believes that its own lost profits will equal a greater award than the infringer’s total profits from sales of the infringing product.

 However, in some cases, a design patent owner might want to turn to section 289’s profit disgorgement mecahnism.  Section 289 provides an additional remedy that only applies for the infringement of a design patent and awards the owner of a design patent the infringer’s total profit from the sales of any article using the design.  This section can be extremely beneficial to some patent owners because the owner is entitled to the entire profit resulting from the sale of any product containing the infringing design.

At issue in Apple v. Samsung, among other things, were four design patents; three dealt with the ornamental appearance of smartphones and tablets and another covered the graphic design of the user interface.  The jury found that Samsung had infringed Apple’s design patents and that Samsung’s profits from the sales of the infringing products totaled $1.05 billion.  The enormous award reveals just one of the remedies a design patent owner possesses and the value that a design patent can hold.

© 2013, Buche & Associates, P.C.  Written by Byron Ma and John Buche.