Unlike holders of utility patents, owners of design patents have the option of choosing between two different statutes with respect to the recovery of damages for design patent infringement– 35 U.S.C. §§ 284 and 289. Under § 284, design and utility patent holders alike can seek a reasonable royalty or the patent holder’s lost profits resulting from the alleged infringement. However, unlike a utility patentee, the owner of a design patent possesses an additional remedy under 35 U.S.C. § 289 – the infringer’s total net profits from the sale of the article containing the infringing design, and in no event less than $250. A design patentee cannot however recover both damages under § 284 and the profits of the infringer under § 289.

There are tactical reasons for choosing to pursue one or the other method of recovery. For instance, treble damages are only available under § 284. And in some cases, a patentee’s lost profits under § 284 may be more than the infringer’s net profits under § 289.

On the other hand, under § 289, in establishing the infringer’s net profits, a patent holder is not required to demonstrate that the profits are attributable to the ornamental qualities of the item in the design patent. Rather, a patent holder is entitled to the entire profit obtained by the infringer resulting from the sale of an item containing the infringing design (and in no event less than $250).

Section 289 therefore creates an advantage for design patentees, especially in light of recent Federal Circuit precedent. The Federal Circuit has of late held that in determining a reasonable royalty under § 284, the trial court must carefully tie proof of damages to the claimed invention’s footprint in the marketplace. In addition, under certain circumstances, where a patent covers only one feature of an accused product, a patentee who wishes to present evidence of the entire product’s profitability must show that the patented feature drives consumer demand for the product or components. The Federal Circuit has not placed these evidentiary constraints on a design patentee seeking damages under § 289.