Providing an affirmation of the current standard for determining design patent infringement, the U.S. Court of Appeals for the Federal Circuit, in the non-precedential opinion Wallace v. Ideavillage Products Corp., No. 15-1077 (Fed. Cir. March 3, 2016) upheld the district court's grant of summary judgment of non-infringement to Ideavillage.
Allyson Wallace sued Ideavillage based on its "Spin Spa" product, which Ms. Wallace alleged infringed U.S. Design Patent No. D485,990 (the "D'990 patent") for an "ornamental design for a body washing brush." See Wallace at 2. Using the standard summarized in Egyptian Goddess, Inc. v. Swisa, Inc.1, the court utilized the "ordinary observer test [modified] through the eyes of an observer familiar with the prior art"2, and applied a two-stage test in its analysis. Id. Specifically, the court noted that in the first stage of the test, the patentee carries the burden of proving that the claimed design and the accused design would appear substantially the same to the ordinary observer. See id. at 3. In instances where the patentee was able to prove that "'the claimed and accused designs [were] not plainly dissimilar'," the court further noted that the second stage of the test is applied, which involves "a comparison of the claimed and accused designs with the prior art." Id.
To determine whether the patentee proved the first stage, the court looked at the several differences between the design of the D'990 patent and the design of the Ideavillage product, which were pointed out by the district court. Seeid. at 3-7. For example, the district court found that the D'990 patent included a straight handle with a hill and valley design finger grip, while the Ideavillage product included a curved handle with no finger grip:
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Further, the district court found that the D'990 patent included a flat threaded opening at the base of the handle and a rounded head with a two tiered brush, whereas the Ideavillage product included a closed pointed end and an oblong head without a two tier brush. Moreover, the district court found that the D'990 patent included a protrusion at the backside of the head and lacked decoration on the backside of the handle, whereas the Ideavillage product had no protrusions on the backside of the head and included decorations in the form of ovals in the neck of the handle and the backside of the handle:
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After reviewing the design of the D'990 patent and the design of the Ideavillage product, the Federal Circuit stated that "no reasonable fact-finder would find [the two designs] to be substantially the same under the first stage of the ordinary observer test." Id. at 4.
Despite the patentee's failure to prove the first stage of the test, the court continued to consider the second stage of the test, reflecting on the district court's finding that the claimed design of the D'990 patent displayed significant similarities to the design of U.S. Patent No. 4,417,826 (the "'826 patent"). Specifically, the court looked to the finding that the D'990 patent and the '826 patent both had designs that included a finger grip having hills and valleys, as well as a rounded protrusion on the backside of the head. Id. at 10. Analyzing the similarities between the D'990 patent and the '826 patent, the Federal Circuit agreed that an ordinary observer, who was familiar with the prior art, would not confuse the Ideavillage product with the design of the D'990 patent. Id. at 11.
The Wallace decision is yet another reason for patentees to carefully consider the exact subject matter being claimed in a design patent. As noted by the Federal Circuit in its quote from Egyptian Goddess, "'differences . . . that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.'" Id. at 11. With this unremarkable holding providing confirmation, the prudent practitioner, should consider filing multiple design patent applications of differing scope for the product. Each application can include the same fundamental drawings except with different aspects of the drawings being claimed by virtue of select features being presented in dashed lines. Here the case might have been much closer had the patent included dashed lines for the finger grip, the protrusion, and the second tier of bristles. Given the relatively low cost of design patents, to forego extending protection to the extent possible, is truly being penny wise and pound foolish.