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Design Patent Infringement Standards


Charles E Bruzga & Debolina Kowshik
© 2009 Bruzga & Associates

On September 22, 2008, the United States Court of Appeals for the Federal Circuit issued an opinion that considerably revises the standard for design patent infringement in the United States. The opinion reported at Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008), was an en banc decision, i.e., decided by all (13) members of the court. As such, it is binding as the law of the United States unless its decision is changed by the U.S. Supreme Court.
This memo sets forth three key points about design patent infringement, relating to:

  1. The ordinary observer test for infringement and thus the inappropriateness of side-by-side comparisons by experts;
  2. The need to ignore design features to the extent they are dictated solely by function; and
  3. The role of prior art in assessing infringement of a design patent.

The first point is based on the seminal U.S. Supreme Court case of Gorham Co. v. White, 81 U.S. 511 (1871), decided over a century ago. The second point is based on well-established caselaw. The third point is based on the above-noted Egyptian Goddess case, decided in September of 2008.

1. Ordinary Purchaser Test for Infringement

In the 1871 U.S. Supreme Court Gorham case mentioned above, the Supreme Court determined that the test for whether the middle design (“White [itself patented in] 1867”) and the right design (“White [itself patented in] 1868]”) infringed the left (“Gorham Co.”) patented design. Witnesses for White testified as to the many differences between the Gorham and the White designs. One witness testified that: “in the Gorham design the stem of the handle, between the shoulders and the bowl, has a second thread upon it, which is parallel with and inside of the boundary thread. No such second thread is found in White’s.” Gorham, 81 U.S. at 518. In fact, the witness proceeded to point out “fifteen differences of this mechanical kind between the Gorham design and White’s, patented 1867, and sixteen differences between the Gorham design and that of White patented in 1868. Id. However, the Supreme Court rejected what was obviously a careful side-by-side comparison by someone with a highly trained eye and found infringement. Gorham, 81 U.S. at 530.

In finding infringement, the Supreme Court reasoned: “We do not say that in determining whether two designs are substantially the same, differences in the lines, the configuration, or the modes by which the aspects they exhibit are to be considered; but we think the controlling consideration is the resultant effect.” Gorham, 81 U.S. at 526. In a similar vein, the Supreme Court reasoned that:

We are now prepared to inquire what is the true identify of design. Plainly, it must be the sameness of appearance, and mere difference of lines in the drawing or sketch, a greater of smaller number of lines, or slight variances in configuration, if sufficient to change the effect upon the eye, will not destroy substantial identity. An engraving which has many lines may present to the eye the same picture, and to the mind the same idea or conception as another with much fewer lines. The design, however, would be the same.
Gorham, 81 U.S. at 526-527.

The Court then turned its attention to the questions of “whether it is essential that the appearance should be the same to the eye of an expert.” Gorham, 81 U.S. at 527. In resolving this question, the Supreme Court mentioned, but disapproved of, the lower court’s view that “there could be no infringement unless there was ‘substantial identity’ ‘in view of the observation of a person versed in design in the particular trade in question—of a person engaged in the manufacture or sale of articles containing such design—of a person accustomed to compare such designs with one another, and who sees and examines the articles containing them side by side.’” Id. In rejecting this view of expert, side-by-side comparison, the Court stated:

We hold, therefore, that if, in the eye of the ordinary purchaser, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.
Gorham, 81 U.S. at 528.

2. Need to Ignore Design Features if Dictated by Function

To the extent that a design feature is dictated solely by function, it must be ignored; only the remaining “ornamental”—i.e., non-functional aspects can be considered. The Court of Appeals for the Federal Circuit has repeatedly ruled on this issue.

For instance, in OddzOn Products Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997), the Court of Appeals for the Federal Circuit developed a test to determine design patent infringement comparing when a design features include both functional and ornamental aspects. OddzOn Products, Inc., owner of U.S. Design Patent D346,001 for the “Vortex” tossing ball, a foam smooth-surfaced, football-shaped ball with a slender tailshaft and three fin structure, accused Just Toys of design patent infringement for their similar “Ultra Pass” balls which were comprised of a ridge-surfaced football-shaped ball with a tail and fin structure in a different shape.

OddzOn “Vortex” tossing ball Just Toys “Ultra Pass” balls

The Court of Appeals for the Federal Circuit held that there was no design patent infringement in the OddzOn case and developed the following test to guide the assessment of infringement when a design feature has functional attributes. The first step is to “constru[e] the claim to the design, when appropriate.” The second step is to “compar[e] it to the design of the accused device.” When comparing the two designs, it must be determined “whether the patented design as a whole is substantially similar in appearance to the accused design. The patented and accused designs do not have to be identical in order for design patent infringement to be found.” OddzOn, 122 F.3d at 1405 (emphasis added).

When a design patent “contains both functional and ornamental features, [1] the patentee must show that the perceived similarity is based on the ornamental features of the design [rather than functional features] * * * [2] the patentee must establish that an ordinary person would be deceived by reason of the common features in the claimed and accused design which are ornamental.” OddzOn, 122 F.3d at 1405.

When comparing an element of the design with an element of the accused device which has a shared functional attribute, the court goes through the following three-step process, so as to exclude from that comparison, a shape that is dictated solely by function:

  • Identify the functional shape. First, the court identifies a general shape dictated solely by function (“functional shape”). In the OddzOn case, the court found that the general football shape with a tail and fins is dictated by function alone. The court stated that the “football shape combined with fins on a tail * * * give the design these functional qualities. The tails and fins * * * add stability in the same manner as do the tail and fins found on darts and rockets. They are no less functional simply because ‘tossing balls can be designed without them.” OddzOn, 122 F.3d at 1405.
  • Ignore the functional shape to assess similarity. For purposes of assessing similarity between the design and the accused device, the court ignores the functional shape. Thus, the court does not take into account the functional shape, which in OddzOn was a general football shape with a tail and fins, when comparing the design and the accused device.
  • Compare the protectable ornamental features. After ignoring the shape dictated by function of a design feature, the court then compares what is left in the specific manifestation of the design element in the patented design—i.e., the protectable ornamental features—in assessing similarity between the design feature of the design patent and the corresponding feature of the accused device. In OddzOn, this meant ignoring the football shape, for instance, of the patented design and accused device. The football portion of the OddzOn patented design had a fairly smooth surface (as can be seen above) while the accused device has a ridged surface with an eye-shaped ridge on the frontal end. Regarding the fins, whose general shape was found to be dictated by function, the patented design has a fin with a gentle curve up and outward, creating larger surface area at the end farthest from the ball; on the other hand, the fin of the accused device varies between a wavy and angled fin. Ignoring the general shape of fins that are dictated solely by function, the OddzOn found that the remaining protectable—i.e., ornamental—features are different in the patented design and accused device. The foregoing differences relating to the football and fin portions of the patented design and accused device precluded infringement.

In short, to the extent that a design feature is dictated solely by function, it must be ignored; only the remaining “ornamental”—i.e., non-functional aspects can be considered.

3. The Role of Prior Art in Assessing Infringement

In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008), the Court of Appeals for the Federal Circuit issued a clarification of the test for design patent infringement. The Egyptian Goddess decision was an en banc decision; this means that all 13 judges of the court participated in the decision rather than the usual number of 3 judges, whereby the decision presently constitutes a definitive statement of law.

The Egyptian Goddess Court clarified the role of prior art in determining infringement of a design, holding that “the ordinary observer test [must be applied] with reference to prior art designs.” Egyptian Goddess, 543 F.3d at 677. In reviewing the legal precedents on design patent infringement, the Egyptian Goddess Court reasoned that: “Particularly in close cases, it can be difficult to answer the question whether one thing is like another without being given a frame of reference. The context in which the claimed and accused designs are compared, i.e., the background prior art, provides such a frame of reference and is therefore often useful in the process of comparison.” Egyptian Goddess, 543 F.3d at 676-77.

  • Features departing from prior art. The Egyptian Goddess Court further noted that: “When the differences between the claimed and accused designs are reviewed 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.” Egyptian Goddess, 543 F.3d at 676. Further, in this regard, the Egyptian Goddess Court noted that: “If the accused design has copied a particular feature of the claimed design that departs conspicuously from the prior art, the accused design is naturally more likely to be regarded as deceptively similar to the claimed design, and thus infringing.” Egyptian Goddess, 543 F.3d at 677.
  • Design as a whole must be considered. Although comparison of individual features may be useful in assessing infringement of a design patent, it should be kept in mind that the ultimate question is whether the designs as a whole are substantially the same. E.g., Gorham Co. v. White, 81 U.S. 511, 530 (1871) (noting “though variances in the ornament are discoverable, the question remains, is the effect of the whole design substantially the same”); Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 677 (Fed. Cir. 2008) (noting that the proper inquiry is not “whether the accused design has appropriated a single specified feature of the claimed design,” but rather is “whether the accused design has appropriated the claimed design as a whole”).
  • Features shown by prior art. On the other hand, the Egyptian Goddess Court noted that: “[w]hen the claimed design is close to prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.” Egyptian Goddess, 543 F.3d at 676.
  • Scope of prior art. According to the Court of Appeals for the Federal Circuit, the scope of the prior art for design patents includes, not only the exact type of article covered by the design patent, but also “analogous” art that an ordinary designer would consider. E.g., In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004) (finding the toothbrush art to be analogous to the hairbrush art for design patent applications); Sash Controls, Inc. v. Talon, L.L.C., 185 F.3d 882 (Fed Cir. 1999) (unpublished). In Sash Controls, the court considered the scope of prior art for a design for a patio door handle, which required a pulling action. The court found as analogous prior art a swing door handle that requires a twisting action. This decision rested in part on the common feature of an escutcheon plate for the two different handles, which escutcheon plate contained a prominent design feature. Id.
  • Summary and Conclusion

    In summary, three key points about design patent infringement have been brought out in the foregoing analysis. First, the current test for design patent infringement, in accordance with the century-old decision in Gorham, evaluates similarity in designs through the eyes of an ordinary purchaser instead of an expert conducting a meticulous side-by-side comparison. Gorham, 81 U.S. at 528. Thus, whether or not an expert can discern differences between patented and accused designs that would escape the attention of an ordinary purchaser who might see the accused design weeks after seeing the patented design is irrelevant. Id. Rather, if the ordinary purchaser gives the level of attention typical for a purchaser and finds the two designs to be similar enough to deceive and induce him into buying one while thinking it was the other, then infringement occurs. Id. Second, caselaw holds that the court will consider protectable ornamental features and exclude all design features to the extent they are dictated solely by function in their assessment. In order to determine which design features are protectable, one must first identify the shape dictated solely by function, then ignore it, and finally compare the remaining nonfunctional or protectable ornamental features. OddzOn, 122 F.3d at 1405. The third point addresses the modification of the ordinary observer test insofar as it assumes that the hypothetical ordinary observer is aware of the closest prior art designs. What does this rather terse statement mean? Bearing in mind that the ultimate question is whether the accused and patented designs as a whole are substantially the same, the Egyptian Goddess court opined that an accused design is more likely to infringe when it copies a novel feature in the patented design—i.e., a feature that does not exist in the prior art designs. Egyptian Goddess, 542 F.3d at 677. As can be seen, the assessment of design patent infringement has many subtleties.