In Hydrojug, Inc. v. Five Below, Inc., plaintiff moved for a preliminary injunction over design patent D887,202 (Container Top). The Court granted the preliminary injunction, finding the accused product was identical to the patented product. The Court also found irreparable harm was established based on multiple examples of customers either mistakenly complaining to Hydrojug’s customer service department, impugning the Hydrojug bottle on social media as being of poor quality when the customers had actually purchased a lower priced Aquajug from Five Below, or accusing Hydrojug of being an untrustworthy brand because its bottle was available at Five Below for a lower price.
The Court also conducted its own visual examination and found that although the Aquajug flip cap was indistinguishable from Hydrojug’s, it was not the same quality. The Court concluded the potential for loss of customer goodwill was significant given the difference in quality.
Caution: The Court states the infringement test is whether the accused product is substantially the same as the patented product. The correct test is whether the accused product is substantially the same as the patented design. See Lanard Toys, Ltd. v. Dolgencorp LLC, 958 F.3d 1337, 1341 (Fed. Cir. 2020) (“The infringement analysis must compare the accused product to the patented design, not to a commercial embodiment.”). Comparing an accused product to a commercial embodiment “risks relying on unclaimed and therefore irrelevant features as grounds for similarity or difference.” Sun Hill Indus. v. Easter Unlimited, Inc., 48 F.3d 1193, 1196 (Fed. Cir. 1995). It is error to base an infringement finding on features of the commercial embodiment not claimed in the patent. See Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 990 (Fed. Cir. 1993). The accused product only can be compared against a commercial embodiment that is substantially the same as the claimed design. See L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1126-27 (Fed. Cir. 1993).
In this case, it appears the plaintiff’s commercial embodiment was substantial the same as (if not identical to) the claimed design, so the comparison was proper. To avoid confusion, a better practice may be to state the correct rule of law (accused product to claimed design comparison) and then expressly state that the commercial embodiment is substantially the same as (or identical to) the claimed design.
Please note this post is for general informational purposes only. It is not legal advice and does not create an attorney client relationship.
