1. Panel I: How much can you take without paying for it all: Monetary Remedies for Design Patent Infringement
#designlaw18

2. Panelists Moderator Robert Katz Nika Aldrich John Froemming
Banner & Witcoff
Nika Aldrich
Attorney
Schwabe
John Froemming
Partner
Jones Day
Charles Mauro
President
Mauro New Media
Chris Renk
Attorney
Banner & Witcoff

3. Remedies for Design Patent Infringement
§ 284
§ 289

4. Additional Remedy for Design Patents
Remedies for Design Patent Infringement
35 U.S.C. § 284
Damages
Compensate patentee for infringement
Not less than a reasonable royalty
Increase up to 3X for egregious conduct
35 U.S.C. § 289
Additional Remedy for Design Patents
Infringer’s total profit
Not less than $250
Shall not twice recover the profit
§ 284
§ 289

5. Remedies for Design Patent Infringement
35 U.S.C. § 284
Damages
Compensate patentee for infringement
Not less than a reasonable royalty
Increase up to 3X for egregious conduct
35 U.S.C. § 289
Additional Remedy for Design Patents
Infringer’s total profit
Not less than $250
Shall not twice recover the profit
§ 284
§ 289
Injunctive Relief
eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006)

6. Remedies for Design Patent Infringement
Monetary Relief
35 U.S.C. § 284 – Damages
“[A]dequate to compensate for the infringement, but in no event less than a reasonable royalty”
“court may increase the damages up to three times” for egregious conduct
35 U.S.C. § 289 – Additional Remedy – Design Patents
Infringer’s “total profit, but not less than $250, [and] shall not twice recover the profit”
Injunctive Relief
eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006)

7. 35 U.S. Code § 289 - Additional remedy for infringement of design patent
Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

8. 35 U.S. Code § 289 - Additional remedy for infringement of design patent
Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

9. Samsung Elects. Co., Ltd. v. Apple, Inc., 137 S. Ct. 429 (2017)
“In the case of a design for a single-component product, such as a dinner plate, the product is the ‘article of manufacture’ to which the design has been applied. In the case of a design for a multicomponent product, such as a kitchen oven, identifying the ‘article of manufacture’ to which the design has been applied is a more difficult task.”

10. Samsung Elects. Co., Ltd. v. Apple, Inc., 137 S. Ct. 429 (2017)
“In the case of a design for a single-component product, such as a dinner plate, the product is the ‘article of manufacture’ to which the design has been applied. In the case of a design for a multicomponent product, such as a kitchen oven, identifying the ‘article of manufacture’ to which the design has been applied is a more difficult task.”

11. Samsung Elects. Co., Ltd. v. Apple, Inc., 137 S. Ct. 429 (2017)
“In the case of a design for a single-component product, such as a dinner plate, the product is the ‘article of manufacture’ to which the design has been applied. In the case of a design for a multicomponent product, such as a kitchen oven, identifying the ‘article of manufacture’ to which the design has been applied is a more difficult task.”

12. Samsung Elects. Co., Ltd. v. Apple, Inc., 137 S. Ct. 429 (2017)
“[T]he term ‘article of manufacture’ is broad enough to encompass both a product sold to a consumer as well as a component of that product.”
The United States as amicus curiae suggested a test [for identifying the relevant article of manufacture at the first step of the § 289 damages inquiry]. . . We decline to lay out a test for the first step of the § 289 damages inquiry . . .”

13. US Patent D743,213 Fig. 1

14. The scope and design claimed in plaintiff’s patent
Department of Justice Proposed Four-Factor Test
The scope and design claimed in plaintiff’s patent
The relative prominence of the design within the product as a whole
Is the design conceptually distinct from the product as a whole
The physical relationship between the patented design and the rest of the product

15. Room for clarity in the DOJ 4-Factor AOM Test
Factor 2: “[T]he relative prominence of the design within the product as a whole. ... If the design is a minor component of the product, like a latch on a refrigerator, or if the product has many other components unaffected by the design, that fact suggests that the ‘article’ should be the component embodying the design.” But “if the design is a significant attribute of the entire product, affecting the appearance of the product as a whole, that fact might suggest that the ‘article’ should be the product.” DOJ Am. Br. at 28.
Factor 3: Whether the design is “conceptually distinct” from the product as a whole. For example, a book binding represents a “different concept” from the literary work it contains, such that “they are different articles. …. If the product contains other components that embody conceptually distinct innovations, it may be appropriate to conclude that a component is the relevant article.” Id. at 29. (Emphasis added)

16. DOJ Proposed Four-Factor Test
The scope and design claimed in plaintiff’s patent
The relative prominence of the design within the product as a whole
Is the design conceptually distinct from the product as a whole
The physical relationship between the patented design and the rest of the product

17. U.S. Amicus Brief The parties’ burdens:
Patentee bears ultimate burden of proving the infringement and the amount of infringer’s total profit.
Infringer bears burden of producing evidence that the relevant article of manufacture is some portion of the entire product as sold.
If AOM less than total product as sold, then figure out infringer’s profits on the smaller identified AOM

18. Single vs. Multi-Component

19. Single Component and Disclaimed Portions

20. Single Component and Disclaimed Portions
Infringing Product

21. Shell Scenario

22. GUIs

23. Even if you know the AoM, how do you calculate profits?

24. Additional Questions Reasonable royalty related issues Use of experts
Willfulness, choice of remedy
Use of experts
What type, when, and how
Influence of equities
Does/should the title matter

25. Panel I
Questions?
#designlaw18