COURT FOCUSES ON THE “PREDOMINATING VISUAL ELEMENT” OF THE CLAIMED DESIGN

In a well-reasoned opinion, Larry G. Junker v. Medical Components, Inc. et al. (No. 13-4606) (January 14, 2021), Judge Goldberg of the United States District Court for the Eastern District of Pennsylvania decided after a bench trial that Plaintiff’s U.S. Pat. No. D450,839 for a “Handle for Introducer Sheath” is valid and infringed.

Although the opinion covered a number of issues (inventorship, anticipation, obviousness), I found it most notable for the Court’s infringement analysis that concluded that certain portions of the claimed design “predominate” over other portions in the eye of an ordinary observer. Also of interest was the Court’s application of the 4-factor test for determining “total profit” damages under 35 U.S.C. 289.

Representative Figures 1 and 7 illustrate perspective and bottom views of the patented design:

Regarding infringement, the Plaintiff argued that “the primary ornamental feature” is the “enlarged rounded ears” which are present in all of the accused products. Plaintiff also argued that the enlarged, rounded, upswept ears stand out as a “total departure” from the prior art, and that the accused products are much closer to the claimed design than the prior art.

Defendants countered that the ordinary observer would not be induced to purchase the accused products by the design of the handle but would likely notice differences in designs no matter how small. Among other things, the Defendants pointed to the following differences:

*the ‘839 patent claims a conical tapered cone that blends with a fillet into the tabs on the sides of the handles, while the Defendants’ products utilize “two cylinders of different diameters stacked upon each other” rather than a tapered cone.

*Fig. 6 illustrates a swept-back, curved wing not present in the accused products.

*the ‘839 patent contains different numbers of ribs on the wings

The Court gave great weight to Plaintiff’s expert, Peter Bressler, who said that the ears or tabs of the accused products would receive an ordinary observer’s “primary level of attention” when viewing the whole product. Although Bressler also said that the ribs and shape of the hub would also receive attention from the ordinary observer, the Court found that “the ears predominate as the primary visual element”.

The Court also found that the substantial similarity between the accused products and the claimed design “highlighted by the design’s visual departure from the prior art”, saying:

“The predominating visual element of the claimed design’s overall visual impression, the upswept “Mickey Mouse” ear-shaped tabs, differ significantly from the flat, mostly rectangular handles depicted in the prior art…. The accused products have each copied this ear shape…”

The analysis that resulted in finding a “predominating visual element” was significant in that it seemed to be based on an ordinary observer “giving such attention as a purchaser usually gives” from the seminal Gorham v. White case:

“[I]f in the eye of an ordinary observer, 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 v. White, 81 U.S. 511, 529 (1871) (emphasis added).”

To support its finding of infringement, the Court noted that Defendants’ element-by-element comparison of the claimed design and the accused products has been expressly rejected by the Federal Circuit in the Ethicon case:

“Rather than focus on the overall visual impression of the designs, Defendants compare the minute differences in each element of the accused products in isolation, which, they assert, add up to plainly dissimilar or sufficiently distinct designs.”

The Court also noted that Defendants were arguing that functional aspects distinguished the accused products from the claimed design, to which the Court responded: “Because the scope of the ‘839 patent is limited to the ornamental features of the claimed design for purposes of infringement … these functional differences are not part of their overall visual impression”, again citing Ethicon in support.

After finding the ‘839 design was neither anticipated nor obvious in light of the prior art, was not “functional” as a matter of law, and dismissing an inequitable conduct claim, the Court dived into the issue of total profit damages.

It noted that on remand from the Supreme Court, the district court in Apple, Inc. v. Samsung identified the following 4 factors relevant to the article of manufacture determination under 35 U.S.C. 289:

1. The scope of the design claimed in the plaintiff’s patent, including the drawings and written description;

2. The relative prominence of the design within the product as a whole;

3. Whether the design is conceptually distinct from the product as a whole; and

4. The physical relationship between the patented design and the rest of the product, including whether the design pertains to a component that a user or seller can physically separate from the product as a whole, and whether the design is embodied in a component that is manufactured separately from the rest of the product, or if the component can be sold separately.

Significantly, and in contrast to Samsung v. Apple, the Court in Junker first determined that the “article of manufacture” for patentability purposes under 35 U.S.C. 171 was not the same “article of manufacture” for purposes of calculating damages under 35 U.S.C. 289, and therefore the former was not dispositive of the latter (although it did note that another court had a different interpretation, Luxembourg v. Home Expressions, Inc., 2018 WL 340036, at *7 (D.N.J. Jan. 8, 2018)).

The Plaintiff, of course, wanted the article of manufacture to be the end product as sold, and not merely the claimed (partial) design.

Here’s how the Court in Junker analyzed the four factors:

Factor 1: The Court said, rather simply, that the claimed design was “the ornamental design of a handle”, consistent with its claim construction, excluding the sheath shown in broken lines.

Factor 2: The Court found that the “predominating elements of the design were, first and foremost, the “Mickey Mouse” ear shaped tabs, followed by the ribs on the tabs, and the shape of the hub.”, concluding that this factor favored Plaintiff.

Factor 3: Regarding the “conceptually distinct” factor, the Court said that “the ‘839 patent claims only the design of an introducer sheath’s handle, that can vary in size and shape, while the sheath and dilator are relatively consistent in structure”, concluding that this logic means that this factor favors Defendants.

Factor 4: The Court said that “the handle of the accused products was mechanically bonded with the sheath at manufacturing and was not intended to be physically separated from the product as a whole…. And that “the sheath was manufactured separately from the handle”. And that one of the Defendants bought the sheath from a third party, inserted it into the handle mold, and then melted plastic to make the handle around the sheath, bonding the two parts together. Despite the sheath being manufactured separately, the Court said, the handle was not made separately from the sheath…. The handle never existed separately from the sheath, and was not sold separately. Thus, this factor favored Plaintiff.

The Court concluded that:

“[T]he relevant article of manufacture for 289 damages is the entire introducer sheath product as sold by Defendants because the handle is the predominant feature of the product as a whole, the user cannot physically separate the handle from the sheath, the handle is not manufactured separately from the sheath, and the handle is not sold separately by Defendants.”

There was also an interesting discussion about the calculation of total profit damages. Apparently, the claimed design was sold as part of a kit, and Plaintiff initially proposed that he was entitled to the total profit on the kit. The Court rejected that, noting that the patented design was only one of 4 pieces in the kit, and that Plaintiff had the burden of proving how much profit was attributable to the introducer sheath component. The Court concluded as follows:

“Defendants’ expert, Trexler, who has considerable experience in testifying as a damages expert offered a reliable methodology for attributing profit to the introducer sheaths sold in Defendants’ kits. Trexler calculated Defendants’ total profits from the Accused Products by first removing incremental costs. As stated above, Defendants’ gross profits, on which Plaintiff relied and as identified in Defendants’ sales spreadsheets were calculated by deducting material, labor, and overhead costs from Defendants’ net sales. Trexler also testified that there were other costs that had to be deducted from this gross profit figure, such as sales commissions. Once all reasonable expenses were deducted, Trexler apportioned profit from each of the Accused Products sold in Defendants’ kits by identifying the average profit on each of the Accused Products when sold individually, and attributing that profit to every kit in which that Accused Product was sold.”

Based on the foregoing, the Court awarded Junker $1,247,910 in total profit damages under 35 U.S.C. 289.