November 21, 2002

Design Patents

22 min

1. Title 35, Section 171

  • "Design"
  • "Article of Manufacture"
  • Claims

2. Validity

  • "Ornamental" v. Functional
  • Obviousness
  • Public Use and On Sale Bars

3. Infringement

  • Claim Construction
  • Substantial Similarity

4. Priority

5. Damages

  • Marking
  • Enhancement of Damages
  • Title 35, Section 171 Congress authorized statutory protection for design patents in order "to give encouragement to the decorative arts." See Gorham Mfg. Co. v. White, 81 U.S. (14 Wall.) 511, 524 (1871) (Strong, J.). Under the Patent Act of 1952 (still in force today), an inventor may obtain a patent on "any new, original and ornamental design for an article of manufacture." 35 U.S.C. &#sect; 171. The term of a design patent lasts for fourteen years. 35 U.S.C. &#sect; 173.
    • "Design" Within the meaning of &#sect; 171, a design may consist of surface ornamentation, configuration or a combination of both. See 1 Donald S. Chisum, Chisum on Patents &#sect; 1.04[2][a], quoting Gorham, 81 U.S. at 525 ("The appearance [of a design] may be the result of peculiarity of configuration, or of ornament alone, or of both conjointly . . . .").
    • "Article of Manufacture"
      • In order to satisfy patentability requirements, a design cannot be purely abstract, but must be embodied in an article of manufacture. See In re Zahn, 617 F.2d 261, 268 (C.C.P.A. 1980). "Article of manufacture" carries a broad meaning, encompassing "anything made 'by the hands of man' from raw materials, whether literally by hand or by machinery or by art." See Chisum, supra &#sect; 1.04[2][b], quoting In re Hruby, 373 F.2d 997, 1000-01 (C.C.P.A. 1967).
      • A &#sect; 171 patent can validly claim a design for just part of an article of manufacture. See Zahn, 617 F.2d at 267 (permitting patent for the design of a drill bit's shank, since "a design for an article of manufacture may be embodied in less than all of article of manufacture." ); Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563, 1566 n.2 (Fed. Cir. 1996) (Lourie, J.) (recognizing continuing validity of Zahn).

    • Claims

      A design patent consists of one written claim, namely that the design is claimed "as shown" or "as shown and described" by its drawings. See L.A. Gear, Inc. v. Thom McAnn Shoe Co., 988 F.2d 1117, 1122-23 (Fed. Cir. 1993) (Newman, J.) ("No description, other than a reference to the drawing is ordinarily required . . . More than one claim is neither required nor permitted."), quoting 37 C.F.R. &#sect; 1.153(a), cert. denied, 114 S. Ct. 291 (1993).
      • The drawings in a design patent application define the scope of the claimed patented subject matter. See Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1464 (Fed. Cir. 1997) (Newman, J.) ("A design patent contains no written description; the drawings are the claims to the patented subject matter."); Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993) (Lourie, J.); In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) (Rich, J.) ("Design patents have almost no scope. The claim . . . is limited to what is shown in the application drawings.").
      • A design patent application can include drawings of more than one embodiment of a single design, but it cannot contain more than one written claim. See In re Klein, 987 F.2d 1569, 1570 n.1 (Fed. Cir. 1993) (Rich, J.).

  • Validity

    The tests for determining the validity of a design patent issued under &#sect; 171 are identical to the tests for determining the validity of a utility patent under &#sect; 101. See Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1440 (Fed. Cir. 1984) (Nichols, J.). See also In re Klein, 987 F.2d 1569, 1570 (Fed. Cir. 1993) (Rich, J.) (citing Litton); Intex Recreation Corp. v. Hasbro, Inc., 1998 WL 181599, at *5 (C.D. Cal. Feb. 20, 1998).

    Since a patent is presumed valid under &#sect; 282, the burden is on the challenger to establish, by clear and convincing evidence, the invalidity of a design patent. See L.A. Gear, Inc. v. Thomas McAnn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993) (Newman, J.), cert. denied, 114 S. Ct. 291 (1993); Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1562 (Fed. Cir. 1988) (Nies, J.).
    • "Ornamental" v. Functional

      Under &#sect; 171, a patentable design must be "ornamental." The starting point for a definition of "ornamental" is the Supreme Court's decision in Bonita Boats, Inc. v. Thunder Craft Boats, Inc., 109 S. Ct. 971 (1989) (O'Connor, J.): "To qualify for protection, a design must present an aesthetically pleasing appearance that is not dictated by function alone, and must satisfy the other criteria of patentability." Id. at 976.

      A design "without ornamental or decorative aspect" is "entirely functional" and does not meet the statutory criteria for a design patent. Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1460 (Fed. Cir. 1997) (Newman, J.).
    • The configuration of an article of manufacture may be a patentable design. Since an article of manufacture necessarily serves a functional purpose, a design for that article is deemed to be functional when its appearance is "dictated by" the use or purpose of the article. See id.; L.A.Gear, 988 F.2d at 1123.

      If a patented design is "primarily functional" rather than primarily ornamental, the patent is invalid. Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1563 (Fed. Cir. 1988) (Nies, J.).

      In determining whether a design is primarily functional, the claimed design must be viewed in its entirety. See L.A. Gear, 988 F.2d at 1123. In L.A. Gear, the article of manufacture was a woman's athletic shoe. Id. at 1121. Although the Federal Circuit conceded that each element of the shoe (delta wing, shoelace eyelets, support mesh, etc.) had a functional purpose, the court held that "the ultimate question is not the functional . . . aspect of each separate feature, but the overall appearance of the article." Id. at 1123. Based on its overall appearance, the shoe's design was held to be ornamental. Id.

      When assessing the ornamental purpose of a patented design's overall appearance, a number of considerations might be appropriate, including:
      • whether the protected design represents the best design
      • whether alternative designs would adversely affect the utility of the specified article
      • whether there are any concomitant utility patents
      • whether the advertising touts particular features of the design as having specific utility
      • whether there are any elements in the design or an overall appearance clearly not dictated by function Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997) (Rich, J.).
    • An important factor in assessing the ornamental purpose of a design patent is the availability of alternative designs capable of performing the same function. When several alternatives exist, the choice between them is more likely to be governed by ornamental rather than functional considerations. See Hupp, 122 F.3d at 1460; L.A. Gear, 988 F.2d at 1123. Cf. Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996) (Lourie, J.). In Best Lock, the design patent in question was for a key blade, the part of a key which fits in the keyway of a lock. Id. at 1565. The district court found the blade design to be solely functional, since only one type of blade can fit each type of keyway. Id. at 1566. The patentee challenged the holding, asserting that an unlimited number of blade and corresponding keyway combinations were available. Id. The Federal Circuit rejected the argument since the patent in suit claimed just a key blade, not a blade and lock combination. Id.

      Cf. Berry Sterling, 122 F.3d at 1456 (in determining whether a design is ornamental, the presence of alternative designs is not dispositive, but rather is one of a series of appropriate considerations).
    • Generally, patents on designs that are hidden or obscured while in use lack ornamentality. However, a design for an article that is hidden in its final use may still be patentable if its appearance is a "matter of concern" at some point in its commercial life. See In re Webb, 916 F.2d 1553, 1555 (Fed. Cir. 1990) (Clevenger, J.) (holding that patented design of hip prosthesis, surgically joined to pelvic bone in its final use, did not lack ornamental purpose since device's features were displayed in professional journals and trade shows).

      See also Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1451 (Fed. Cir. 1993) (Lourie, J.) (the fact that features of patented wall block are hidden when the wall is assembled is immaterial, since patent is for block design, not wall design).

  • Obviousness

    Section 103 prohibits issuance of a patent when the "differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made." 35 U.S.C. &#sect; 103. Obviousness is a question of law and appellate review is de novo. See In re Klein, 987 F.2d 1569, 1570 (Fed. Cir. 1993) (Rich, J.); In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir. 1992) (Clevenger, J.) ("[T]his court reviews an obviousness determination . . . de novo, while reviewing the factual findings underlying the obviousness determination for clear error.") (citation omitted).

    Section 103 applies to utility and design patents with equal force. See 35 U.S.C. &#sect; 171 ("The provisions . . . relating to patents for inventions shall apply to patents for designs, except as otherwise provided.") See also Litton Sys., Inc. v. Whirlpool Corp. 728 F.2d 1423, 1441 (Fed. Cir. 1984)(Nichols, J.); In re Klein, 987 F.2d at 1570 (citing Litton approvingly); Intex Recreation Corp. v. Hasbro, Inc., 1998 WL 181599, at *5 (C.D. Cal. Feb. 20, 1998).
    • First, an obviousness inquiry must begin with a consideration of the scope and content of the prior art relevant to the design patent in question. See Litton, 728 F.2d at 1441; Intex, 1998 WL 181599, at *6.
    • Second, the differences between the prior art and the claimed design must be identified. Litton, 728 F.2d at 1443; Intex, 1998 WL 181599, at *6. Specifically, the focus should be on whether the prior art "create[s] the same overall visual appearance as the claimed design." Durling v. Spectrum Furniture Co., Inc., 101F.3d 100, 103 (Fed. Cir. 1996) (Clevenger, J.). See also In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996) (Bryson, J.).
      • In evaluating the status of the prior art, a trial court must first find a single primary reference, "the design characteristics of which are basically the same as the claimed design." In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982).

        See also Hupp v. Siroflex of Am. Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997) (Newman, J.) (citing Rosen); Durling, 101 F.3d at 103 ("Before one can begin to combine prior art designs, however, one must find a single reference . . . ."); In re Borden, 90 F.3d at 1574.
      • To create a design that has the same overall visual appearance as the claimed design, secondary references may be used to modify the primary reference, provided that the secondary references are "so related [to the primary] that the appearance of certain ornamental features in one would suggest the application of those features to the other." In re Borden, 90 F.3d at 1575. A finding of obviousness cannot be based on a piece-meal analysis, in which features from various prior art references are assembled to form an article similar in appearance to the claimed design. See id. at 1574; In re Harvey, 12 F.3d 1061, 1065 (Fed. Cir. 1993) (Michel, J.) ("Board erred in its determination of obviousness because it improperly compared the visual impressions of selected, separate features of the prior art designs . . . rather than the visual impression of the designs as a whole.").
      • In comparing the overall visual appearance of the patented design and the prior art reference, a trial court must translate visual descriptions into words. See Durling, 101 F.3d at 103. Unlike utility patents, design patents do not come with readily available verbal descriptions of the patented subject matter. Consequently, the trial judge's verbal translation will assist the parties and the appellate courts in identifying the internal reasoning behind the trial court's decision. Id. See also In re Harvey, 12 F.3d at 1064 (Obviousness analysis must focus on prior art reference's "specific design characteristics," not its "design concept").
    • Third, the level of skill in the art at the time the invention was made must be determined. For design patents, the benchmark is the level of skill possessed by "the designer of ordinary capability who designs articles of the type presented in the application." Litton, 728 F.2d at 1443, quoting In re Nalbandian, 661 F.2d 1214, 1216 (C.C.P.A. 1981). See also Hupp, 122 F.3d at 1462; Durling, 101 F.3d at 103; In re Borden, 90 F.3d at 1574.
    • Finally, relevant secondary considerations, such as commercial success may be considered. See L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed. Cir. 1993) (Newman, J.); Litton, 728 F.2d at 1443. To be effective in the design patent case, however, commercial success must be "attributable to the design, and not to some other factor, such as a better recognized brand name or improved function." Id.
    • In order to invalidate a patent on &#sect; 103 grounds, the prior art must render obvious the ornamental features of a patented design. See Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404 (Fed. Cir. 1997) (Lourie, J.). In Oddzon, the patent in question issued for the design of a foam football with a tail and fin structure. Id. at 1399. The Federal Circuit held that two confidential designs disclosed to the patentee but not to the public (subject matter relevant for &#sect; 102(f) purposes) constituted prior art references under &#sect; 103. Id. at 1401. However, since these references only disclosed the tailshaft and fins -- general functional features -- they did not render the design patent obvious under &#sect; 103. Id. at 1404.

  • Public Use and On Sale Bars Under &#sect; 102(b), a patent will not be valid if "the invention was . . . in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States." 35 U.S.C. &#sect; 102(b).
    • Generally, the experimental use exception to the public use bar does not apply to design patents. See In re Mann, 861 F.2d 1581 (Fed. Cir. 1988) (Rich, J.). In Mann, the patentee of a wrought iron table design displayed his table at a trade show more than one year before filing his application. Id. The Federal Circuit rejected an argument based on experimental use: "We see no way in which an ornamental design for an article of manufacture can be subject to the 'experimental use' exception . . . Obtaining the reactions of people to a design--whether or not they like it--is not 'experimentation' in that sense." Id. at 1582.

      But see Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 1198-99 9 Fed. Cir. 1994) (Schall, J.), cert. denied, 115 S. Ct. 1356 (1995). In Tone Bros., the Federal Circuit recognized that certain displays of a design "can be directed to functional features of a product also containing an ornamental design." Id. at 1200. Since the testing of a spice container involved these functional aspects, the public use bar was not triggered. Id.
    • However, experimentation directed at the functional aspects of an article of manufacture generally will not negate &#sect; 102(b)'s on sale bar. See Continental Plastic Containers v. Owens Brockway Plastic Prods., 141 F.3d 1073, 1078-79 (Fed. Cir. 1998) (Rich, J.). In Continental Plastic, the Federal Circuit expressly declined to extend the Tone Bros. public use analysis to the on-sale bar of design patents. Id. Unlike the public use bar's focus on detrimental public reliance, the primary policy underlying the on sale bar is the prohibition of the commercial exploitation of a design beyond its statutory period of legal monopoly. Id. at 1079. Since the sale agreement entered into by the inventor represented an "explicit commercial exploitation of the claimed design," the on sale bar defeated the validity of the design patent. Id. Moreover, the fact that the article of manufacture employing the claimed design was not functionally operable at the time of the sale was held irrelevant to the on-sale bar analysis. Id.

      But see id. at 1081-82 (Newman, J., dissenting) (the majority's decision fails to adequately consider the totality of the circumstances, specifically the idea that a design is not complete until the article of manufacture in which it is embodied is shown to be capable of its intended use).

      But see also Hupp, 122 F.3d at 1461 (refusing to invalidate design patent for concrete walkway mold since "[a]n inventor's quest for aid and advice in developing and patenting an invention is not an on-sale event as contemplated by 35 U.S.C. &#sect; 102(b).").
  • Infringement Determining whether an accused device has infringed a design patent requires a two-step analysis. First, the design claim is properly construed to determine its meaning and scope. Second, the construed claim is compared to the design of the accused device. See Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404-05 (Fed. Cir. 1997) (Lourie, J.); Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995) (Lourie, J.); Child Craft Indus., Inc. v. Simmons Juvenile Prods. Co., Inc., 990 F. Supp. 638, 640 (S.D. Ind. 1998). When performing the comparison, a fact finder follows the substantial similarity test articulated by the Supreme Court in Gorham Mfg. Co. v. White, 81 U.S. (14 Wall.) 511 (1872) (Strong, J.). See Oddzon, 122 F.3d at 1405; Child Craft, 990 F. Supp. at 640.

    Infringement of a design patent is a question of fact, which a patentee must prove by a preponderance of the evidence. See Oddzon, 122 F.3d at 1405; L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed. Cir. 1993) (Newman, J.); Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 819 (Fed. Cir. 1992) (Cohn, J.); Child Craft, 990 F. Supp. at 640.
  • Claim Construction

    In determining the scope of a design patent, one must look to the "overall ornamental visual appearance," not to the "design concept." Oddzon, 122 F.3d at 1405.

    See also Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 104 (Fed. Cir. 1996) (Clevenger, J.) ("The error in the district court's approach is that it construed [the patentee's] claimed design too broadly. The district court's verbal description of [patentee's] claimed design does not evoke a visual image consonant with the claimed design. Instead, the district court's description merely represents the general concept of a sectional sofa . . . .").

    See also supra Part I.C.
  • Substantial Similarity Under the Gorham test, an accused article infringes a patented design "if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other . . . ." 81 U.S. at 528. Subsequent decisions have followed and elaborated upon the substantial similarity standard.
    • In applying the Gorham test, the fact finder must determine whether the overall appearance of the accused and claimed designs is substantially similar. See Oddzon, 122 F.3d at 1405; Elmer, 67 F.3d at 1578 ("Under Gorham, the focus is on the overall ornamental appearance of the claimed design, not selected ornamental features."); L.A. Gear, 988 F.2d at 1125 ("[T]he patented design is viewed in its entirety, as it is claimed.").

      Gorham's substantial similarity test for design patent infringement should not be confused with the "likelihood of confusion" test for trademark infringement. See Unette Corp. v. Unit Pack Co., Inc., 785 F.2d 1026, 1029 (Fed. Cir. 1986) (Smith, J.). Unlike a trademark owner, a design patentee need not have progressed to manufacture and distribution of a purchasable product in order for its design patent to be infringed. Id.
    • Under Gorham, an accused design must be compared to the design as claimed, not as found in a commercial embodiment. See Payless Shoesource, Inc. v. Reebok Int'l Ltd., 988 F.2d 985 (Fed. Cir. 1993) (Lourie, J.). In Shoesource, the Federal Circuit held that the trial court improperly distinguished the accused design for footwear from the patented design on the basis of features (coloring, logo) found in the commercial embodiment, but not in the patent claim. Id. at 990.

      Cf. Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1189 (Fed. Cir. 1988) (Newman, J.) ("When no significant distinction in design has been shown between the patent drawing and its physical embodiment, it is not error for the court to view them both, and to compare the embodiment of the patented design with the accused devices."); Braun, 975 F.2d at 820 n.8.

      But see Sun Hill, 48 F.3d at 1193. In Sun Hill, the Federal Circuit distinguished Lee and held that trial court erred by comparing color, size and material of lawn bags, features found in the design's commercial embodiment but not in its patent claim. Id. at 1196-97. In Lee, the physical embodiment was not significantly distinct from the patent drawing; in Sun Hill, the commercial embodiment of the bag design contained more features than its drawing. Id. at 1197.
    • If a design patent contains both functional and ornamental elements, the patentee must prove similarity based solely on the ornamental features of the design. See Oddzon, 122 F.3d at 1405. In Oddzon, the Federal Circuit held that a consumer survey in which respondents reported similarity between the claimed and accused designs for a football demonstrated overall similarity, but failed to establish the requisite link between the reported similarity and the patented ornamental aspects of the design. Id. at 1406. The survey had not asked respondents to identify the source of the similarity. Id.

      See also Read Corp. v. Portec, Inc., 970 F.2d 816, 825 (Fed. Cir. 1992) (Nies, J.) ("Where . . . a design is composed of functional as well as ornamental features, to prove infringement a patent owner must establish that an ordinary person would be deceived by reason of the common features in the claimed and accused designs which are ornamental.").
    • In addition to the substantial similarity test, infringement analysis also requires a point of novelty inquiry as well. To infringe a design patent, the accused design must appropriate the novel ornamental features that distinguish the patented design from the prior art. See Sun Hill Indus., Inc. v. Easter Unlimited, Inc., 48 F.3d 1193 (Fed. Cir. 1995) (Rader, J.). In Sun Hill, the trial court found infringement, indicating that the "claimed overall design" of the patent was the point of novelty improperly appropriated by the accused design. Id. at 1197. The Federal Circuit reversed, holding that a patentee could not rely upon overall design as the point of novelty since this would collapse the point of novelty test into the substantial similarity test. Id.

      See also Elmer, 67 F.3d at 1577; L.A. Gear, 988 F.2d at 1125; Avia Group Int'l, Inc. v. L.A. Gear Calif., Inc., 853 F.2d 1557, 1565 (Fed. Cir.1988) (Nies, J.); Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984) (Nichols, J.); Child Craft, 990 F. Supp. at 640.
    • The doctrine of equivalents is employed in connection with design patents, although the way/function/result test for utility patents articulated in Graver Tank & Mfg. Co. v. Line Air Prods. Co., 339 U.S. 605 (1950) is not directly applicable. See Lee, 838 F.2d at 1190. Instead, the principle of equivalency has long been recognized under the Gorham test. Id. However, a patentee cannot employ the doctrine of equivalents to evade the point of novelty inquiry. Thus, if the accused device appropriates none of the novel ornamental features claimed in the design patent, the doctrine of equivalents will not apply. See Sun Hill, 48 F.3d at 1199; Intex, 1998 WL 181599, at *5.

      See also Litton Systems, 728 F.2d at 1444 ("Where . . . a field is crowded with many references relating to the design of the same type of appliance, we must construe the range of equivalents very narrowly.").
    • Empirical evidence is not always necessary to assist a fact finder in comparing the accused design to the claimed design; depending on the circumstances, a visual comparison of the designs in question may suffice. See Braun, 975 F.2d at 821 ("Nothing in Gorham suggests that, in finding design patent infringement, a trier of fact may not as a matter of law rely exclusively or primarily on a visual comparison . . . The desirability of or necessity for presentation of such evidence might vary depending on the circumstances of a particular case . . . ."). See also Child Craft, 990 F. Supp. at 644 ("The Court is not limited to considering evidence of actual consumer behavior presented by the parties when the designs themselves are before the Court to compare.").
  • Priority Under &#sect; 120, a patent application gains the benefit of the earlier filing date of a prior application if, inter alia, its subject matter is "disclosed in the manner provided by the first paragraph of section 112 . . . ." 35 U.S.C. &#sect; 120. Under &#sect; 171, the provisions of &#sect; 120 apply with equal force to design patents as to utility patents. See In re Daniels, 1998 WL 257309, at *2 (Fed. Cir. May 20, 1998)(Newman, J.).

    See also Racing Strollers, Inc. v. TRI Indus., Inc., 878 F.2d 1418, 1420 (Fed. Cir. 1989) (Rich, J.; answer to certified question) (overruling precedent and holding that design patent application can gain benefit of earlier filing date of utility patent, but noting that "each case will depend on its own fact situation); Kangaroos U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1574 (Fed. Cir. 1985) (Newman, J.) (holding that utility patent application may claim priority from an earlier filed design patent application).
  • Damages Section 284 provides that a patentee may recover "damages adequate to compensate for the infringement." 35 U.S.C. &#sect; 284. In addition, under &#sect; 289, design patentees may recover the total profit of anyone who sells or exposes for sale any article of manufacture containing a patented design or its imitation. 35 U.S.C. &#sect; 289. See also Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1440 (Fed. Cir. 1998) (Newman, J.) (describing history of the remedial provisions, including patentee's choice between recovery of damages or profit).

    However, a design patentee cannot recover both damages under &#sect; 284 and profits under &#sect; 289. See Braun, Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 824 n.16 (Fed. Cir. 1992) (Cohn, J.). See also 35 U.S.C. &#sect; 289 ("[A]n owner of an infringed patent . . . shall not twice recover the profit made from the infringement.").
  • Marking Under &#sect; 287(a), if a patentee fails to mark as patented the article of manufacture carrying his claimed design, "no damages shall be recovered by the patentee in any action for infringement." 35 U.S.C. &#sect; 287(a). The Federal Circuit extended the term "damages" to encompass both damages and profits, so that a failure to mark precludes recovery of an infringer's profits as well. See Nike, 138 F.3d at 1440.
  • Enhancement of Damages Section 284 provides that "the court may increase . . . damages up to three times the amount found or assessed." 35 U.S.C. &#sect; 284. An award of enhanced damages for infringement is committed to the trial court's discretion. See Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed Cir. 1992) (Nies, J.). Although no statutory standard dictates when a district court may enhance a damage award, courts have generally approved such awards where the infringement is willful. See id.

    See also L.A. Gear, Inc. v. Thom McAnn Shoe Co., 988 F.2d 1117, 1126 (Fed. Cir. 1993) (Newman, J.); Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1566 (Fed. Cir. 1988) (Nies, J.).

    The Federal Circuit refused to allow the award of profits under &#sect; 289 to be enhanced as well. See Braun, 975 F.2d at 824. While &#sect; 284 contains specific statutory language authorizing the trebling of damages, &#sect; 289 contains no comparable provision. Id. at 824 & n.16.
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