1. Effect of Notice of Intent to Issue a Reexamination Certificate on Non-Infringement Decision.
Be careful of the effect a reexamination may have on a later infringement action. Here, the District Court incorporates the rationale and conclusions in the Notice of Intent to Issue Ex Parte Reexamination Certificate (Reexamination) into its reasoning for finding non-infringement. In particular, the District Court notes the focus in the Reexamination on the presence of the electric voltage generator and its specific orientation, position, shape, and size. The District Court also emphasizes the absence of the electric voltage generator in the accused design.
Practice Point: When filing a Petition for Supplemental Examination or a Petition for Reexamination (or responding to examiner’s comments), consider anticipating the potential effect of the reexamination on future infringement arguments. Although positions taken during reexamination may help preserve patent validity, they also may strengthen non-infringement arguments. Accordingly, consider challenging or commenting on examiner’s conclusions not necessary to patentability.
For example, the examiner’s conclusion in the Reexamination is questionable that some of the cited prior art is basically the same as the patented design and can serve as a primary reference. No single prior art reference contains the major design elements of two bent ends and a fin. The focus for patentability during reexamination could have been on the lack of a primary reference due to the lack of a fin rather than on the presence and position of an electric voltage generator, which likely would have changed the infringement analysis.
Finally, note that it appears to be unclear whether the District Court’reasoning equates the test for patentability with the test for infringement or whether the reasoning is more in the form of prosecution history estoppel that may limit the scope of the claim.
2. Ordinary Observer Test focus on Entire Design versus Design Element
The district court focuses its infringement analysis on the patented design having an electric voltage generator and the accused design having a second fin instead of an electric voltage generator. The Court considers this focus on a single design element proper under the principle of Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc) that “[w]hen the differences between the claimed and accused design are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art.” Id. at 676. Since the focus during reexamination was on how the generator design element differed from the prior art, this is the Court’s focus during the infringement analysis.
Although this prior art principle from Egyptian Goddess is correct, it also is important to simultaneously apply and explain the principle from Egyptian Goddess that infringement of a design patent is based on the design as a whole and that differences must be “evaluated in the context of the claimed design as a whole, and not in the context of separate elements in isolation.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir. 2015) (citing Richardson, 597 F.3d at 1295).
This requirement can present a challenge in many cases. Since designs necessarily are made up of individual design elements and design differences are more easily observed and explained on an element-by-element basis (as in utility patents), it can be challenging to transform a comparison done element-by-element into a comparison done as a whole. Courts use different techniques in an effort to meet this challenge.
As an initial matter, it is procedural error not to make any effort to compare the designs as a whole. For example, it is error to simply use a checklist to compare individual design elements without considering the effect of the individual design elements on the designs as a whole.
Some courts make a minimal effort to satisfy the “as a whole” analytical requirement by simply stating and concluding, for example, that “these individual design differences, when considered collectively, make the patented and accused designs, when considered as a whole, not substantially the same (or plainly dissimilar).”
Other courts provide a more substantive analysis that translates individual design differences into an “as a whole” comparison by pointing out the similarities and differences in overall visual themes. For example, in High Point Design, the Court observed “[t]he Fuzzy Babba design appears soft and formless, whereas the claimed design appears structured and formed” and “[t]hese differences are reflected in the ornamental aspects of each of the designs.” In Richardson, the Court stated “[e]ach of the Fubar tools has a streamlined visual theme that runs throughout the design including elements such as a tapered hammer-head, a streamlined crow-bar, a triangular neck with rounded surfaces, and a smoothly contoured handled” and “[i]n a side-by-side comparison with the ‘167 patent design, the overall effect of this streamlined theme makes the Fubar tools significantly different from Richardson’s design.” In Crocs, the Court stated “[a]nother overall effect of the design is a visual theme of rounded curves and ellipses throughout the design, including the strap forming a sort of continuation of the sidewall of the base to create a visually continuous ring encircling the entire shoe,” “[o]ther examples of rounded curves or ellipses in the design are the ellipses formed by the strap and the foot opening in the base,” and “[b]oth the claimed design and the accused designs have these overall effects.”
Although the thematic approach is an effective way of satisfying the “as a whole” requirement, some design comparisons do not lend themselves easily to the thematic approach. For example, differences may exist between various elements in designs where it is difficult to perceive any similar or different visual themes in the overall designs. In cases such as this, courts tend to use comparative words of degree to describe design elements that, at least impliedly, suggest that the effect of individual elements on the whole design is being considered. For example, courts use such terms as major, minor, greater significance, readily apparent, most striking differences, markedly apparent, and jumps out. These words and phrases attempt to explain why a particular design feature or set of features is a visual focal point when an ordinary observer views and compares the designs as a whole. The focal point may exist due to the prior art, the nature of the design itself, or a combination of the two. For example, in Crocs, the court states “[m]ultiple major design lines and curves converge at that point creating a focal point attracting the eye of the ordinary observer when viewing the overall effect of the design.”
The simplicity of a design also can be a factor in creating a visual focal point that draws the attention of the ordinary observer. When the design is simple, just one significant difference can substantially alter the overall visual impressions of the two designs. For example, in the instant case, Pro-Troll, the Court observes that “the difference between the appearance of the electric voltage generator in the ‘663 Patent and the accused designs here is not minor—it jumps out at the observer, when the designs are compared side-by-side….” and “[h]ere, the design is fairly simple, and including a second fin, and not the electric voltage generator, is a significant departure.” Also mentioned by the Pro-Troll court is Super-Sparkly Safety Stuff v. Skyline USA where the “court also noted the ‘patent claims a very simple design,’ and consequently removing one of the elements of that simple design, as the accused design did, ‘is a significant departure from the claimed design.’”
3. Plainly Dissimilar
An important ambition of design patent law is to create a framework of principles that can help make an inherently subjective analysis more objective and predictable. The principles can be complex with subtleties and nuances. For that reason, it is important that terminology used by the courts to describe various principles remain consistent. In this case, use of the term “plainly dissimilar,” while not incorrect under the analysis, appears to be different than the way the term is used in Egyptian Goddess, where the Court stated:
“In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear “substantially the same” to the ordinary observer, as required by Gorham. In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art, as in many of the cases discussed above and in the case at bar. Where there are many examples of similar prior art designs, as in a case such as Whitman Saddle, differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.” (emphasis added). 543 F.3d at 678.
Egyptian Goddess therefore appears to use the term “plainly dissimilar” to describe two designs sufficiently distinct that it is clear without reference to the prior art that an ordinary observer would not consider the overall designs to be substantially the same. When two designs are not plainly dissimilar, then Egyptian Goddess counsels that it may be helpful to do the comparison in light of the prior art. In Pro-Troll, the court states “[c]omparing the ‘663 Patent’s design to the accused designs, the ordinary observer, with that prior art context, would observe that while the claimed and accused designs are broadly similar—sharing an overall shape, eyelets on each end, and, on one end, a fin shaped like a narrow box angling diagonally relative to the sides of the lure—the claimed design has the electric voltage generator, with its particular orientation, position, shape, and size.” The Court’s conclusion that “[t]he claimed and accused designs are plainly dissimilar” is made only after the Court has compared the designs in light of the prior art, which has drawn the attention of the ordinary observer to the difference in the electric volt generator in the claimed design and the second fin in the accused design. The use of “plainly dissimilar” in Pro-Troll therefore is different than how the term is used in Egyptian Goddess.
The Court states that its analysis is similar to the conclusion reached in Super-Sparkly, but a careful reading of that case indicates that the analysis is different and more in line with Egyptian Goddess. In Super-Sparkly, the Court observed that the ‘172 patent “claims a very simple design, in which rhinestones are applied to two surfaces of a canister: the vertical cylinder and the bottom. Removing the rhinestones from one of these surfaces—the bottom—is a significant departure from the claimed design. The ‘172 Patent and the accused design are thus plainly dissimilar; because the accused design lacks rhinestones on one of the two surfaces decorated in the claimed design, an ordinary observer would not find the two designs substantially the same.” 836 F. App’x at 898 (emphasis added). The Court therefore made the plainly dissimilar conclusion without considering the prior art as in Egyptian Goddess.
The Super-Sparkly Court then stated “[e]ven assuming that the two designs are not ‘plainly dissimilar,’ a comparison with the prior art makes clear that the accused design does not infringe the ‘172 Patent.” Id. The Court noted that the prior art included pepper spray canisters with rhinestones around the canister but not on the bottom and stated “[p]er Egyptian Goddess, then, the Pepperface design highlights that the key difference between the ‘172 Patent and the accused design is that the bottom of the cylinder is decorated with rhinestones. As such, the attention of a hypothetical ordinary observer conversant with bedazzled pepper spray canisters would be drawn to the presence or absence of rhinestones on the bottom of the cylinder.” Id. The Court concluded that “[t]he hypothetical ordinary observer would therefore find significant the lack of rhinestones on the bottom of the accused design and would not confuse the accused design with the ‘172 patent,” and “[t]he district court correctly concluded that the ordinary observer test necessitates a finding of non-infringement.” Id. at 898-899. The Court did not further state that the prior art analysis made the designs plainly dissimilar, which follows the conventional analysis set forth in Egyptian Goddess.
Practice Point: To help maintain consistency and to avoid confusion in design patent law, consider not referring to designs as plainly dissimilar after a prior art analysis when the designs were considered not plainly dissimilar before the prior art analysis was performed.
4. Side-by-Side Comparison
The Court compares the patented and accused designs side-by-side (“the difference between the appearance of the electric voltage generator in the ‘663 Patent and the accused designs here is not minor—it jumps out at the observer, when the designs are compared side-by-side, that the piece next to the first fin is different in each.”) (emphasis added). Comparing the patented and accused designs side-by-side in the infringement analysis has been the express position of the Federal Circuit since at least 2007 when the Court stated in Arminak & Assocs. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007) that there was “no authority” supporting the argument that it is improper for a “district court to do a detailed side-by-side comparison between the patented design and the accused design.” Id. at 1327.
The position of the Federal Circuit is questionable. The authority cited in the case does not support it, the position is inconsistent with prior federal case authority, and it is arguably inconsistent with Supreme Court authority. Regarding the authority cited in the case, the Federal Circuit states “[t]o establish infringement in a design patent case, the district court is required to compare the patented design with the accused design,” citing Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). However, there are different ways to compare designs (including not side-by-side), and Elmer does not state that the comparison should be done side-by-side. No other authority is cited in Arminak for the side-by-side comparison.
In Gorham v. White, 811 U.S. 511 (1872), the Supreme Court indicates it is improper for an expert who examines the articles containing the patented and accused designs side-by-side to make the comparison. Although the Supreme Court never expressly states whether it is proper or improper for a non-expert to compare the designs side-by-side (see also on this point Dyson, Inc. v. Sharkninja Operating LLC & Sharkninja Sales Co., No. 14-cv-779, 2018 U.S. Dist. LEXIS 234546, at *27 n.4 (N.D. Ill. Mar. 29, 2018)), the expert testimony relied upon by the Court suggests that comparisons by the non-expert purchasers referred to were not done side-by-side. One expert testified that an ordinary observer would be deceived after seeing the patented design at one end of a table and the accused design at the other end. Another testified “[t]he patterns are substantially different, but ordinary purchasers, seeing them apart, would mistake one for the other.” (emphasis added). Gorham specifically cites expert testimony that “seven out of ten customers who buy silverware would consider them the same.” This excerpt comes from the testimony of Martin Smith, merchant jeweler dealing in silver spoons and forks for ten years, that “[i]n my judgment, if the White pattern were placed in a store different from that in which they had before seen the cottage pattern, seven out of ten customers who buy silverware, would consider it the same pattern.” (emphasis added).
Case law following Gorham also indicates that a side-by-side comparison is improper. In Ashley v. Weeks-Numan Co., 220 F. 899 (2nd Cir. 1915), the Court stated “[i]t is not a proper test to place the two inkstands side by side, to determine whether or not there are certain differences. On the contrary, the correct test is whether the ordinary observer, giving such attention as a purchaser usually gives, would purchase the defendant’s inkstand, believing it to be that of complainant’s….” Id. at 902. In Try-Me Beverage & Compound Co. v. Metropole, 25 F.2d 138, 141 (D.S.C. 1928), the Court quoted Coco-Cola Co. v. Whistle Co., 20 F.(2d) 955, (D. Del.) that “[i]t may also be assumed, without deciding, that it is infringement to imitate the characteristic feature of the patented article or design, even though there are other differences; that side by side comparison in court is not a proper test (Friedberger-Aaron Mfg. Co. v. Chapin [C.C.A.] 151 F. 264); and that the true criterion is whether defendant’s bottle so resembles the design of the patent in suit that thereby ordinary observers or would-be purchasers would be misled (Borgfeldt & Co. v. Weiss [C.C.A.] 265 F. 268).” (emphasis added). In Inflexible Co. v. Megibow, 251 F. 924 (D.N.J. 1918), the Court, finding infringement, states “[d]oes the defendant’s design infringe? While there are marked differences between the laces here drawn into question, readily perceived when placed side by side, they are unnoticed when the laces are viewed separate and apart from each other.” Id. at 924. (citing Gorham, supra, Smith v. Whitman Saddle Co., 148 U.S. 674 (1893), and Ashley, supra).
In his treatise Patents for Designs (1929), attorney William D. Shoemaker states “[t]he test for substantial identity is to be made by ‘giving such attention as a purchaser usually gives,’ and not by making a minute side by side comparison.” (citing Gorham, Smith, Inflexible, Ashley, Try-Me Beverage, and Friedberger-Aaron).
In Hutzler Mfg. Co. v. Bradshaw Int’l, Inc., 2012 U.S. Dist. LEXIS 103864, *28 (S.D.N.Y. July 24, 2012), the District Court recognized that “[t]he case law is not entirely consistent as to whether side-by-side comparison of the patented and allegedly infringing products is appropriate.” (citing various authorities including Sanson Hosiery Mills, Inc. v. S.H. Kress & Co., 109 F. Supp. 383, 384 (D.N.C. 1952) (“Actual comparison for minute inspection is not a fair test. The imitation may be on display when the patented article is not present…. A design patent protects the general design, the pictured effect on the mind from a general view, rather than details revealed by a minute test. Therefore, testimony of a comparison test is not exclusive nor conclusive.”); also citing Arminak, Richardson, Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010)). It appears the Court did not use a side-by-side comparison approach when analyzing infringement. (“[A] consumer who has seen Hutzler’s design in a store, and later sees Bradshaw’s products, is likely to purchase the latter believing it to be the former. Accordingly, Hutzler has established a likelihood of success on the merits of its patent infringement claim.”). Id. at *45-46. (emphasis added).
One District Court appears to have considered what typically happens in real life regarding the ordinary observer purchaser. In Amerock Corp. v. Unican Sec. Systems Corp., 1981 U.S. Dist. LEXIS 17467 (E.D.N.C. 1981), the designs involved kitchen cabinet hardware. Testimony at trial established that the ordinary observer was the ultimate consumer and that hardware consumers generally did not have the opportunity to view different designs of hardware simultaneously. The Court stated “[t]herefore, differences between the patented and the accused design that are apparent in a side-by-side comparison will not necessarily dictate a finding of non-infringement.” Id. at *6.
District Courts have split on their willingness to accept design patent infringement survey evidence based on comparisons not done side-by-side. In Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997 (N.D. Ill. 2010), survey participants were shown calculators on one day. Then two days later, the participants were shown other calculators and asked if they thought they had seen the same calculators more than once. The Court criticized the procedure and stated there was no evidence “that a 48-hour delay has any bearing on the conditions under which purchasers of the products, whom Plaintiffs admit to be sophisticated consumers of advertising and promotional specialties, make their buying decisions.” Id. at 1009. The Court then engaged in its own analysis of the differences between the patented and accused designs without explaining whether its own comparative process had any bearing on the conditions under which purchasers made their buying decisions.
In Delta T, LLC v. Dan’s Fan City, Inc., No. 8:19-cv-1731-VMC-SPF, 2021 U.S. Dist. LEXIS 24422 (M.D. Fla. Feb. 9, 2021), the District Court approved of a survey where three hundred respondents first completed a series of comparative tests involving the patent design, accused design, and the prior art. The respondents then completed a deception task, where they (1) were shown the patented fan design and told to give it as much attention as if they had decided to purchase it, (2) then shown an unrelated two-minute video to minimize short-term memory recall, and (3) were provided with a number of photos of fans. “The patented fan shown prior to the video was omitted from the photos, and the respondents were asked to select that first fan from the list, with the following option included: ‘[T]he ceiling fan design I imagined purchasing is not in the list.’ The results of these tasks were then put through a number of statistical analyses.” The Court held that any flaws in the survey went to weight and not admissibility.
Practice Point: The Federal Circuit’s adoption of a side-by-side comparison approach arguably is inconsistent with the Gorham ordinary observer test, as explained above. The Federal Circuit likely favors a side-by-side approach because it is simple, easy to apply, inexpensive for the litigants, and is similar to the side-by-side, element-by-element claim chart approach used in utility patent infringement cases. Most of these are good reasons for using a side-by-side comparative approach as the default method. However, for litigants who believe that a comparative approach not done side-by-side will make a difference in their cases and who are willing to spend the time, money, and effort on relevant, credible, and reliable alternative approaches, district courts should be receptive to considering such alternative approaches in light of a careful reading of Gorham and the way some courts have interpreted the ordinary observer test in a way that differs from the Federal Circuit.
Please note this post is for general informational purposes only. It is not legal advice and does not create an attorney client relationship.
