Design Patent Infringement Not Precluded by Small Differences Between Accused and Patented Designs

After finding no error in the jury instructions, the Federal Circuit affirmed the jury’s finding of infringement in Hafco Foundry and Machine Co., Inc. v. GMS Mine Repair and Maintenance, Inc., No. 2018-1904 (Fed. Cir. Mar. 16, 2020).

Hafco sued GMS alleging design patent infringement. At trial, the jury was instructed that a design patent is infringed if the overall appearance of the challenged article is substantially the same as that of the patented design. The jury found that GMS had willfully infringed and awarded damages of $123,650. However, the court found that the damages award exceeded Hafco’s lost profits, remitted the award to zero, and offered a new trial on damages.

On appeal, GMS argued that the jury instructions were erroneous and that a new trial is warranted. First, GMS argued that the jury should have been instructed that small differences between the accused and the patented design will preclude infringement. The Court rejected this argument explaining that the jury was correctly instructed because the patented and accused designs do not have to be identical for a finding of patent infringement. Second, GMS contended the jury should have been instructed to familiarize itself with prior art. The Federal again rejected GMS’s argument, noting that GMS did not present any prior art to the jury at trial nor did it propose this jury instruction. Because Hafco did not appeal the remittitur of damages, the Court did not address the issue. 

Judge Newman concurred in the court’s decision but wrote separately regarding the damages issue. In Judge Newman’s opinion, a remittitur to $110,000—Hafco’s lost profits—was more appropriate than a remittitur to zero, because it more reasonably implements the jury’s intent.