The Analysis for Design Patent Infringement Post-Egyptian Goddess

by McDonnell Boehnen Hulbert & Berghoff LLP
Contact

In the seminal decision of Egyptian Goddess, Inc. v. Swisa, Inc.,[1] the Federal Circuit struck down one of the two tests commonly used for determining design patent infringement, the “point of novelty” test.[2] Despite rejecting this test, the court incorporated the consideration of prior art into a slightly revised version of the "ordinary observer" test, the hypothetical "ordinary observer" now having familiarity with the prior art. This article will examine the application of this revised version of the "ordinary observer" test, and specifically the consideration of the “plainly dissimilar” analysis set forth by Egyptian Goddess.

Egyptian Goddess, Inc. v. Swisa, Inc.

Prior to Egyptian Goddess, courts routinely applied two tests for establishing design patent infringement, the "ordinary observer" test and the "point of novelty" test. First, courts would consider the patented design and the accused product “in the eye[s] of an ordinary observer, giving such attention as a purchaser usually gives” and then determine whether or not, through those eyes, the “two designs [were] substantially the same.”[3] Second, courts then typically employed the “point of novelty” test in which consideration was given as to whether or not the accused design actually “appropriate[d] the novelty in the patented device which distinguishe[d] [the patented device] from the prior art.”[4]

The court in Egyptian Goddess noted that a court tasked with applying both of these tests independently might focus on “whether the accused design ha[d] appropriated a single specified feature of the claimed design,” rather than looking to “whether the accused design ha[d] appropriated the claimed design as a whole” (the appropriate infringement inquiry).[5] The Federal Circuit then rejected the application of the “point of novelty” test, and made clear that the appropriate analysis would be an “ordinary observer test through the eyes of an observer familiar with the prior art.”[6] The court clarified, however, that consideration of the prior art was not required in every case, only those in which the patented design and the accused design are "substantially the same."[7] The Federal Circuit further explained that in cases where the two designs are not “plainly dissimilar,” the infringement analysis “will benefit from a comparison of the claimed and accused designs with the prior art.”[8] Some courts subsequent to the Egyptian Goddess decision have interpreted this language as establishing “two levels to the infringement analysis: a level-one or ‘threshold’ analysis to determine if comparison to the prior art is even necessary, and a second level analysis that accounts for prior art in less obvious cases.”[9] Such examples include Wing Shing Prods. (BVI) Co. v. Sunbeam Prods.,[10] Minka Lighting, Inc., v. Maxim Lighting International, Inc., and Keurig, Inc. v. JBR, Inc.[11]

Wing Shing Prods (BVI) Co. v. Sunbeam Prods.

Wing Shing v. Sunbeam is illustrative as to the determination of whether a patented design and an accused product are “plainly dissimilar,” as discussed by Egyptian Goddess. The district court in Wing Shing performed an in-depth analysis to decide whether Sunbeam’s coffee maker was “plainly dissimilar” to Wing Shing’s patented coffee maker design. The patented design and accused product are depicted below:

 

The court first focused on two major differences in the designs – differently shaped bases and “dramatically different tops.”[12] Considering whether these differences would be enough to render the designs “plainly dissimilar,” the court concluded that in the “cluttered world of the drip-coffeemakers, it seems senseless to attempt to determine whether the ordinary observer would confuse two designs without looking to the prior art for a point of reference.”[13] Although the court recognized "manifest differences in the overall appearance" of the patented design and the accused design, it looked "to the prior art for context."[14] Further, the court determined that it was “unlikely” that an ordinary observer would be deceived by similarities of the devices, but admitted that “resolution of the inquiry would benefit from a concrete guidepost.”[15] After reviewing and comparing a number of prior art references to both the accused design and the patented design, the Court found "on the whole the claimed design when compared to the prior art bespeaks 'a field . . . crowded with many references relating to the design of the same type of appliance.'"[16] The court concluded that an ordinary observer familiar with the prior art "would not believe the AR 10/12 [the accused design] to be the 'same as' the '585 patent" and thus found no infringement.[17]

Minka Lighting Inc., v. Maxim Lighting International, Inc.[18]

Another example of a post-Egyptian Goddess infringement analysis, which included a consideration of whether patented and accused lighting designs were “plainly dissimilar,” is Minka v. Maxim from the Northern District of Texas. In this case, the court reviewed three different asserted design patents directed to light fixtures and compared them to the respective accused products, two of which are shown below:[19]

In analyzing each of these designs, the court first looked to the overall visual impressions of the light fixtures, which it determined were distinctive, and then went on to analyze differences in a few specific features, such as differences between the silhouette, the finial, the ornamentation of the finials, and the design of the lower medallion of the ‘515 patent compared with the accused Morrow Bay design,[20] and the central body, silhouette, and contours of the ‘052 patent compared with the accused Tuscan Estate design.[21] The court concluded that, based on these differences, the patented design and the accused product in each instance were plainly dissimilar.[22] Although the court was satisfied that two of the asserted patents and accused designs were readily distinguishable to an ordinary observer, the court proceeded with a full analysis comparing the claimed and accused designs with the prior art.[23] In both instances, the court found that the “Defendants' product would appear [] different from the Plaintiff's [] patent to any ordinary observer aware of the great number of similar prior art designs."[24] Thus, summary judgment of non-infringement was entered on all three asserted patents.[25]

 Keurig, Inc. v. JBR, Inc. [26]

The court's decision in Keurig v. JBR provides yet another example of a post-Egyptian Goddess infringement analysis, including a discussion of whether patented and accused coffee filter designs were “plainly dissimilar.”[27] In attempting to discern the differences between two “disposable beverage filter cartridges,” the District Court of Massachusetts provided an in-depth analysis of the similarity of the patented design to the accused product to determine whether a consideration of prior art was necessary for the infringement determination.[28] The court first compared the initial visual impressions of the two designs, as seen below:

Although the two cartridges may seem fairly dissimilar to an ordinary observer, the court still took the time to discuss prior case law and instances when patented and accused designs have been found to be “plainly dissimilar”[29] and an instance when they have not.[30] The court then decided that a determination of whether or not the accused product and the claimed design were “plainly dissimilar” required “a more careful analysis of the side-by-side comparison and the similarities (and differences) exposed thereby,” and went on to interpret and designate each and every similarity and difference of the two designs as being ornamental or functional.[31] After its lengthy analysis, the court decided that the two designs were “sufficiently distinct that it [was] clear without more that the patentee ha[d] not met its burden of proving the two designs would appear ‘substantially the same’ to the ordinary observer.”[32] Here the court could have easily looked to the prior art, as did the courts in Wing Shing and Minka, but chose not to do so since it found that the two designs were “plainly dissimilar.”[33] In the end, JBR’s motion for summary judgment of non-infringement was granted.[34]

Observations

Although the point of novelty test was nominally eliminated by the Federal Circuit, there are certain instances in which courts may consider prior art during the infringement determination under the revised "ordinary observer" test and the "plainly dissimilar" analysis set forth in Egyptian Goddess. Generally speaking, whether or not prior art is considered in an infringement analysis appears to be a function of the level of similarity between the patented design and the accused product, the crowded or uncrowded nature of the pertinent art, and frankly the conscientious nature of a particular court. What remains to be seen is whether the redefined role of prior art in the infringement analysis leads to more thorough, consistent, and well-reasoned decisions.


[1] 543 F.3d 665 (Fed. Cir. 2008).

[2] The point of novelty test required that the accused design contain “substantially the same points of novelty that distinguished the patented design from the prior art.” Id. at 668.

[3] Gorham Co. v. White, 81 U.S. 511, 528 (1871).

[4] Egyptian Goddess, 543 F.3d at 670 (quoting Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984).

[5] Id. at 677.

[6] Id. (emphasis added).

[7] Id. at 678.

[8] Id.

[9] See, e.g., Wing Shing Prods. (BVI) Co. v. Sunbeam Prods., 665 F. Supp. 2d 357, 362 (S.D.N.Y. 2009).

[10] Id.

[11] No. 3:06–CV–995–K., 2009 WL 691594 (N.D. Tex. Mar. 16, 2009).

[12] Wing Shing Prods., 665 F. Supp. 2d at 362.

[13] Id. at 363 (citations omitted).

[14] Id.

[15] Id. (citation omitted).

[16] Id. at 364–65.

[17] Id. at 368.

[18] No. 3:06–CV–995–K., 2009 WL 691594 (N.D. Tex. Mar. 16, 2009).

[19] The court determined that the third patent design (‘591) and the accused design were plainly dissimilar and chose not to consider the prior art in that instance. Id. at *8.

[20] Id. at *5.

[21] Id. at *8.

[22] Id. at *6, *8.

[23] Id.

[24] Id. at *7 and *9.

[25] Id. at *9.

[26] No. 11–11941–FDS, 2013 WL 2304171 (D. Mass. May 24, 2013).

[27] Additional “plainly dissimilar” analyses can be found in the following cases: HR U.S. LLC v. Mizco Int’l, Inc., No. CV-07-2394 (DGT)(JO), 2009 WL 890550 (E.D.N.Y. Mar. 31, 2009); Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997 (N.D. Ill. 2010); Spencer v. Taco Bell Corp., No. 8:12–cv–387–T–23TGW, 2013 WL 5499609 (M.D. Fla. Oct. 2, 2013); Poly-America, L.P. v. API Industries, Inc., No. 13–693–SLR, 2014 WL 1391063 (D. Del. Apr. 10, 2014); Fanimation, Inc. v. Dan’s Fan City, Inc., No. 1:08–cv–1071–TWP–WGH, 2010 WL 5285304 (S.D. Ind. Dec. 16, 2010).

[28] Keurig, 2013 WL 2304171 at *5 (correctly applying the standards articulated in Egyptian Goddess).

[29] Id. (citing Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997 (N.D. Ill. 2010); Great Neck Saw Mfrs., Inc. v. Star Asia U.S.A., LLC, 727 F. Supp. 2d 1038 (W.D. Wash. 2010)).

[30] Keurig, 2013 WL 2304171 at *6 (citing Crocs, Inc. v. ITC, 598 F.3d 1294 (Fed. Cir. 2010)).

[31] Id. at *6–8.

[32] Id. at *9.

[33] See id. at *9 (quoting Egyptian Goddess, 543 F.3d at 678).

[34] Id. at *16.

 

George T. Lyons III is a 2014 summer associate with MBHB.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP
Contact
more
less

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
Feedback? Tell us what you think of the new jdsupra.com!