## Facts

- Nordock and Systems are competitors that design, manufacture, and sell dock levelers.
- Nordock owned U.S. Design Patent No. D579,754 covering the ornamental design of a lip and hinge plate for a dock leveler.
- Nordock sued Systems in the Eastern District of Wisconsin, alleging infringement by Systems’ hydraulic dock levelers.
- A jury found infringement, found the patent not invalid, and awarded Nordock $46,825 as a reasonable royalty.
- Systems’ damages expert opined that $15 per unit was a reasonable royalty and that Systems’ profits attributable to the design, calculated as cost savings, were less than $15 per unit.
- The district court instructed that damages could be awarded as (1) reasonable royalty, (2) Nordock’s lost profits, or (3) Systems’ profits on infringing units based on the expert’s cost-savings calculation.
- Post-trial, Nordock sought a new trial or amended judgment on damages under Rule 59; Systems sought post-trial relief challenging infringement as to its 6½-foot dock levelers and also pursued JMOL on invalidity; the district court denied both parties’ motions.

## Issues

1. Whether the district court misapplied 35 U.S.C. § 289 by limiting design-patent profit recovery to a cost-savings theory, requiring a new trial on damages.
2. Whether substantial evidence supported the jury’s rejection of Systems’ invalidity challenge (denial of JMOL).
3. Whether substantial evidence supported the jury’s finding that Systems’ 6½-foot dock levelers infringed the design patent (denial of Rule 59(e) relief).

## Decision

- The Federal Circuit vacated the damages award and remanded for a new trial limited to design-patent damages.
- The court held that § 289 allows recovery of the infringer’s “total profit” on the relevant article of manufacture, and the district court erred by constraining the “profits” option to incremental cost savings.
- The court affirmed the denial of Systems’ JMOL on invalidity, holding substantial evidence supported the jury’s finding that the design patent was not invalid.
- The court affirmed the denial of Systems’ post-trial challenge to infringement by the 6½-foot dock levelers, holding substantial evidence supported the infringement verdict.

## Legal Principles

- Design-patent damages under 35 U.S.C. § 289 are distinct from utility-patent damages under § 284 and may include recovery of the infringer’s total profit on the relevant article of manufacture.
- “Total profit” under § 289 cannot be replaced by a narrower measure such as incremental profits or cost savings attributed to the design.
- Jury instructions and the evidentiary framework must permit the factfinder to apply the correct § 289 remedy when the patentee seeks infringer’s profits.
- On appeal from a jury verdict, JMOL and new-trial challenges fail where substantial evidence supports the jury’s findings on validity and infringement.

## Conclusion

The Federal Circuit required a new damages trial because the jury was improperly limited to a cost-savings conception of profits, contrary to § 289’s “total profit” remedy, while leaving intact the jury’s findings of validity and infringement, including as to Systems’ 6½-foot dock levelers.


Nordock, Inc. v. Sys., Inc., 803 F.3d 1344 (Fed. Cir. 2015)