When a design patent is infringed, Section 289 of the Patent Act provides a remedy that does not exist for utility patent holders: the right to recover the infringer's total profit on the infringing product. For brand companies that have invested in design patent portfolios, that remedy is one of the most powerful enforcement tools available.
But a foundational question about how that remedy works in practice remains unsettled: does a jury decide the total profit amount, or does a judge? In the absence of explicit Federal Circuit guidance, district courts have been developing a working framework for answering that question. A January 2026 decision from the Central District of California — Kelly v. Fashion Nova — illustrates where that framework currently stands.
The Remedy Itself
Section 289 provides that a design patent infringer "shall be liable to the owner to the extent of his total profit, but not less than $250." The statute dates to 1887, enacted by Congress to overrule Supreme Court decisions that had awarded only nominal damages for design patent infringement. Its purpose was deliberate: to make copying a protected design genuinely costly.
The two-step framework for applying Section 289 was clarified by the Supreme Court in Samsung Electronics Co. v. Apple Inc., 580 U.S. 53 (2016). First, identify the relevant "article of manufacture" to which the infringed design was applied. Second, calculate the infringer's total profit on that article. In cases involving single-component products — a shoe, a handbag, a consumer accessory — that framework is relatively straightforward. The article of manufacture is the product, and the profit calculation proceeds from there.
The question of whether Section 289 profit disgorgement is legal or equitable determines whether a jury or a judge calculates the damages award. That distinction carries consequences since juries and judges may approach damages differently. A jury evaluating an infringer's profits may be influenced by factors that a judge applying a technical accounting analysis would not weigh the same way. Settlement posture changes depending on which decision-maker controls the outcome, as does trial structure, evidentiary presentation, and appellate strategy.
What District Courts Have Done
In the absence of explicit Federal Circuit guidance, district courts have tended to treat disgorgement as equitable and proceed to bench trial when it is the sole remaining remedy. When disgorgement is asserted alongside overlapping legal remedies, however, courts tend to permit jury involvement.
In Red Carpet Studios v. Midwest Trading Group Inc., 2021 WL 1172218 (S.D. Ohio Mar. 29, 2021), the court found no right to a jury trial for profit disgorgement under Section 289. The court acknowledged that no authority directly resolved the question but found support for treating the remedy as equitable, pointing to the Federal Circuit's implicit characterization in Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1442 (Fed. Cir. 1998). The court in Shure Incorporated v. ClearOne Inc., 2021 WL 4991083 (D. Del. Oct. 27, 2021), reached the same conclusion, relying in part on the Federal Circuit's analysis in Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., 895 F.3d 1304 (Fed. Cir. 2018), a trade secret case in which the Federal Circuit drew on patent law principles to find disgorgement equitable.
On the other hand, in Kitsch LLC v. Deejayzoo, LLC, 2023 WL 4291445, at *3 (C.D. Cal. May 8, 2023), the court found insufficient authority to support treating disgorgement under Section 289 as purely equitable and submitted the issue to the jury — but that case involved a partial damages claim alongside the disgorgement claim. Similarly, in J.R. Simplot Co. v. McCain Foods USA, Inc., 2024 WL 3796737, at *2 (D. Idaho Aug. 13, 2024), the court found that Federal Circuit authority — specifically Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1290 (Fed. Cir. 2002) — at least implicitly supported presenting the Section 289 question to a jury and proceeded accordingly. However, in Catalina Lighting, the jury also made a reasonable royalty determination.
More recently, the court in Kelly v. Fashion Nova, No. Cv33-02360 JAK (RAOx) (C.D. Cal. Jan. 20, 2026), concluded that disgorgement under Section 289 is an equitable remedy to be decided by the bench. But the court's holding rested on a specific and significant procedural fact: prior rulings in that case had eliminated all other damages theories, leaving disgorgement as the sole remaining remedy. The court distinguished Kitsch and Simplot on similar grounds — that those cases had involved overlapping legal damages theories in addition to disgorgement.
While the emerging pattern is generally coherent, it has yet to be explicitly endorsed by the Federal Circuit.
Why It Matters for Design Patent Holders
The procedural posture of a damages claim is not a trivial concern. For brand companies asserting design patents, the jury-or-judge question should be part of the strategic analysis from the outset of litigation.
Several practical considerations follow from the current state of the law.
Pleading and discovery strategies may impact the outcome. A plaintiff who asserts a reasonable royalty or lost profits claim in addition to Section 289 disgorgement creates an overlap that seems likely to support jury involvement. That is not an argument for pleading claims strategically to manipulate forum — it is an argument for understanding that pleading choices have procedural consequences that counsel should think through carefully.
But Kelly adds a harder lesson. The plaintiff's lost profits theory was eliminated not by a strategic choice but by an evidentiary failure — the plaintiff failed to develop sufficient discovery to support it. With lost profits gone, disgorgement stood alone, and the jury trial right went with it. Parties who want to preserve jury involvement on Section 289 damages need to treat their lost profits or reasonable royalty analysis as a genuine litigation priority — not a placeholder.
Seek early clarification. Given that the framework turns on how damages claims are structured in a particular case, defendants who see an opening would be well-served to seek an early ruling on who will decide the Section 289 damages question before trial preparation gets underway. Building a damages presentation for a jury and building one for a judge are different exercises. Waiting until the eve of trial to find out which it is — as the Kelly parties effectively did — wastes resources and may require restructuring a case on short notice.
Settlement posture depends on the answer. The leverage value of a Section 289 claim — and the risk profile for a defendant — is meaningfully different depending on whether a jury or a judge will decide the number. That should be factored into settlement negotiations and case valuation from the beginning of the matter.
The outcome affects appellate strategy. A jury verdict on damages is reviewed for sufficiency of the evidence. A bench determination is reviewed for clear error on factual findings and de novo on legal conclusions. Those are different standards with different implications for appeal and should inform how the damages case is built and preserved.
A Question That Deserves a Direct Answer
The district court framework that has emerged is sensible, but it deserves confirmation — or correction — from the Federal Circuit.
In-house counsel building or enforcing design patent portfolios should be aware of the current state of the law surrounding Section 289 damages and its uncertainty — and ensure their outside counsel are thinking about it both in advance of filing a complaint and throughout the life of any litigation.