If your company owns design patents — or is defending against one — there’s a damages rule you need to understand. It’s called Section 289, and it works differently from how patent damages for so-called utility patents work.
The basic rule: total profit, not lost sales
Most patent damages are calculated as a reasonable royalty or lost profits — meaning you get compensated for what the infringement cost you. Section 289 is different. It allows the owner of a design patent to recover the infringer’s total profit from selling the infringing product.
Not a slice of the profit. Not a royalty. The total profit.
That’s a significant number if the infringing product sells well — and it’s why design patents have become a serious enforcement tool for brand owners, not just a box to check in an IP portfolio.
What counts as the “article of manufacture”?
The biggest practical question under Section 289 is what product the damages are measured against. If someone copies the design of your sneaker sole and puts it on a shoe that sells for $200, is the damages base the profit on the sole component — or the entire shoe?
The Supreme Court addressed this in Samsung v. Apple and held that damages don’t automatically attach to the entire end-product. Courts look at the relevant “article of manufacture” — which might be a component rather than the whole thing. But identifying that component in practice is complicated.
The answer matters enormously to the damages number on both sides of a case.
Who decides how much you owe — a jury or a judge?
Here’s another issue you should be aware of: the law is somewhat muddled about whether the amount of Section 289 damages should be decided by a jury or by the judge. That question affects litigation strategy, settlement leverage, and trial risk in ways that aren’t obvious until you’re already in a case.
Different courts have approached this differently, and the Federal Circuit — the appellate court that handles patent cases — hasn’t issued a definitive ruling. That uncertainty is real and it cuts both ways depending on whether you’re the plaintiff or the defendant.
What this means if you’re a brand owner
If you own design patents, Section 289 is one of the most powerful damages tools available to you. The threat of total-profit disgorgement changes settlement dynamics significantly — infringers aren’t just looking at a royalty, they’re looking at giving back everything they made.
If you’re on the receiving end of a Section 289 claim, understanding how courts are likely to define the article of manufacture — and who will decide the damages amount — is critical to evaluating your exposure early.
Either way, these are questions worth getting in front of before litigation is underway, not after.
If you have questions about design patent enforcement or exposure, contact Nowak IP Group to discuss your situation.