In addition to its heavy docket of utility patent cases, the
Federal Circuit also rendered several design patent decisions of
interest thus far in the 2014 term. Among them is in a recent
non-precedential opinion in Anderson v. Kimberly-Clark Corp., the
Federal Circuit affirmed the application of the "ordinary
observer" test at the pleading stage to find that five
undergarment products did not infringe a design patent.
This case originated in the Western District of Washington, where a
pro se plaintiff alleged that nine Kimberly-Clark products
infringed its U.S. Patent No. D401,328 (the "D '328
patent") directed to "an ornamental design for an
absorbent disposable undergarment." Kimberly-Clark moved for
judgment on the pleadings under Fed. R. Civ. P. 12(c), asserting
that it only manufactured five of the nine accused products, all
under the Depend® and GoodNites® brands, and that none of
those products infringed the D '328 patent. The district
court took judicial notice that four accused products were
not made by Kimberly-Clark and then compared the remaining five
accused products to the D '328 patent. It concluded there
was no infringement as a matter of law based on several factual
distinctions and dismissed the case outright before
discovery.
On appeal, the plaintiff argued that the district court erred in
considering the product's images because they were not attached
to the complaint (notably, plaintiff did not contest that the
designs were different). The Federal Circuit rejected this
argument because: (1) plaintiff did not dispute the accuracy or
authenticity of the images; and (2) the appearances of the patent
illustrations and accused products were integral to the
plaintiff's claims. It also adopted the lower court's
non-infringement analysis. Relying on the seminal decision in Egyptian Goddess, Inc. v. Swisa,
Inc., which holds that a design patent is infringed if
"an ordinary observer, familiar with the prior art designs,
would be deceived into believing that the accused product is
the same as the patented design," the Federal Circuit
agreed with the district court that "plain differences"
exist between the accused products and the design patent at issue
and affirmed the district court's dismissal.
With respect to invalidity, design patents did not fare well this
term. Of note, in early April, the Federal Circuit affirmed
summary judgment of obviousness for two design patents directed to
football and baseball jerseys for dogs. MRC Innovations, Inc. v. Hunter Mfg.
LLP.
The court first outlined that obviousness for design patents
involves a two-step inquiry: (1) does one reference basically have
the same design characteristics or visual impressions as the
claimed design; and (2) is there a secondary reference that is so
related to the main reference such that there would be a suggestion
to apply certain features from one reference to the other?
Although the district court did not expressly describe the claimed
design (as required by prior precedent), it did so implicitly by
outlining several design characteristics. The primary
reference was also suitable because it and the claimed design have
the same fabric, shape, and stitching – despite slight
differences. In an audible, the Federal Circuit noted that
"in practice" design infringement has focused on the
"overall visual appearance" (rather than on specific
features and even though design patents are supposed to be limited
to the images in the drawings), meaning infringement is permissible
despite differences in features.
The Federal Circuit turned to the secondary references finding they
were sufficient given their similarity to the primary reference.
And even though no reference disclosed the additional
stitching in the claimed design, the court noted this was a de
minimis change, which would be within the skill of an ordinary
designer of the art. The secondary considerations offered by
the patentee were insufficient as it presented no evidence that the
alleged commercial success and copying were related to the claimed
design. Finally, the court undertook a similar analysis to
find the other design patent obvious.
In one other design patent infringement case this term, on January
8, 2014, the Federal Circuit in Pacific Coast Marine Windshields Ltd. v.
Malibu Boats, LLC reversed the district court's
summary judgment decision of non-infringement. In doing so, the
court confirmed the viability of prosecution history estoppel to
design patents.
We previously reported on that decision here.
Design patents can be a significant part of a company's intellectual property portfolio, and one to which challengers must pay heed. The Federal Circuit's decisions thus far this term confirm their importance, but also present lessons for those seeking design patent protection.
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