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Judge Moses Recommends Awarding to Plaintiff Defendant's Profits Under 35 U.S.C. § 289 for Infringement of a Design Patent

On April 21, 2020, Magistrate Judge Barbara Moses (S.D.N.Y.) issued a recommendation that Plaintiff Evriholder Products LLC (“Evriholder”) be awarded: (1) damages under 35 U.S.C. § 289 for infringement of U.S. Patent No. D524,612 ("the '612 patent") by Defendant Simply LBS Ltd. Co. (“Simply LBS”); (2) prejudgment interest; (3) costs; and (4) a permanent injunction forbidding infringement against a default judgment defendant.

Evriholder is the exclusive licensee of the '612 patent. Evriholder alleged that Simply LBS infringed the '612 patent by selling the Chef Remi Jar Opener. Judge Abrams had earlier entered a default judgment against Simply LBS.  While a patentee can recover his own lost profits against an infringer, Evriholder instead elected to seek an award of Simply LBS' total profit under 35 U.S.C. § 289 for infringement of a design patent.

The Court found that Evriholder satisfied the first prong of Section 289 by establishing that Simply LBS arranged for the manufacture of and sold the Chef Remi Jar Opener. Therefore, the only question for the Court to resolve was the measure of Simply LBS' "total profit" under Section 289. Simply LBS had admitted during pre-suit correspondence that it sold, made available for sale, or ordered for sale 58,360 infringing units. However, to account for Simply LBS' "total profit," the Court recommended calculating damages using, out of the total units, only the 27,416 units that were actually sold, at a gross price per unit of $11.86. Accordingly, the Court recommended awarding a total of $325,153.76 in compensatory damages under Section 289.

The Court also recommended a ruling that the case is not "exceptional" given the lack of evidence that Simply LBS continued any infringing activity after Evriholder sent a notice of its infringement claim to Simply LBS and the fact that Simply LBS did not maintain any frivolous or unreasonable litigation position. The Court additionally recommended awarding the requested prejudgment interest and $202.87 in costs. Finally, the Court recommended entry of a permanent injunction forbidding infringement until the expiration of the patent.

Case:  Evriholder Products, LLC. v. Simply LBS Ltd. Co., No. 17-cv-4329, Dkt. No. 52 (S.D.N.Y. Apr. 21, 2020).