TO CONSIDER THE PRIOR ART, OR NOT CONSIDER THE PRIOR ART: THAT IS THE QUESTION

In two recent decisions, district courts in New York and Pennsylvania had diametrically opposed approaches for evaluating design patent infringement.  In both cases, the court granted the defendants’ motions to dismiss.  Keep in mind that the standard for granting a motion to dismiss is whether the complaint states a claim for relief that is “plausible” on its face.  This does not mean that the patent holder has to prove infringement by a preponderance of evidence (the standard for prevailing at trial), but simply must have pled its case plausibly, so that the case could go forward beyond the complaint and answer. Frequently, however, motions to dismiss are becoming effectively like summary judgment motions because in both the court evaluates the dispositive issue of infringement.

In Kohler Co. v. Signature Plumbing Specialties LLC, the court evaluated infringement of two patented faucet designs by simply comparing the patented designs to the accused designs, without reference to the prior art.  But in Homy Casa Limited v. Jili Creation Technology Co., Ltd., the court evaluated infringement by not only comparing the patented designs to the accused designs, but at least purported to do so in light of the prior art.  I say “purported” because the analysis of specific prior art in the Homy Casa opinion was sparse.

Two design patents on faucets were at issue in Kohler, identified only as the ‘988 patent and the ‘824 patent.  In the ‘988 patent there were two portions claimed in solid lines:  a portion of the handle and the baseplate (see Kohler’s Fig. 1 next to the Signature accused design):

Regarding the baseplate, the court noticed that the Kohler’s baseplate was “arched or domed” (Figs. 1 and 4)  while Signature’s was flat:

The court said: “This isn’t a question of whether Signature’s baseplate is arched or domed enough to be substantially the same as the claimed design.  It’s just a different design.”

Well, of course it’s different.  Competitors change design elements – sometimes ever so slightly - to try and avoid infringement. 

Regarding the handle portion, the court said: “[T]he handle in [Signature’s] faucet is of a greater width than the vertical portion of the faucet, while the opposite is true in the claimed design”, referring to the following figures:

Here the court was taking a measuring stick to the designs, as if they were blueprints, measuring their width and height.  There is no requirement that design patent drawings show actual dimensions of the claimed design.

The court concluded: [T]he [patented] design is plainly dissimilar from the accused faucet.  Indeed, if this were not the case, many faucets with differing designs, but which contain a handle and baseplate, would be arguably infringing.  Kohler’s patent isn’t a license to corner the market on water faucets…”   

Where do we start? 

First, and quite obviously, design patents never “corner” markets, they simply protect the design shown in solid lines in the drawings.

Second, the court never compared the overall claimed design (the baseplate + the handle features) to the accused design.  So the ultimate analysis – whether the overall appearance of the accused design was substantially the same as the overall appearance of the claimed design – was never performed.

Third, and most egregiously, there was no comparison to the prior art.  The seminal Egyptian Goddess v. Swisa case from the Federal Circuit in 2008 virtually screams out that a patented and accused design must be compared “in the context of the prior art”.  Instead, the Kohler court simply compared individual components, and noticed some differences, which is relatively easy to do.  Simply identifying differences should not be the test, since infringers almost never copy a design exactly.  As clearly stated in Egyptian, considering the two designs in light of the prior art provides a framework for determining whether an ordinary observer would consider them to be substantially the same.  The Federal Circuit in Egyptian said:

“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.”

In other words, using the prior art as a frame of reference provides some objectivity to the infringement analysis.  If the prior art is not considered, the conclusion of infringement is purely subjective, leaving the conclusion of infringement or non-infringement to the whim of the court.

The court in Kohler used the term “plainly dissimilar” in comparing the patented and accused designs, a term which is used by courts interchangeably with the term “sufficiently distinct”.  This is sanctioned by one sentence in Egyptian that seems to permit the fact-finder to ignore the prior art:

“In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear "substantially the same" to the ordinary observer, as required by Gorham (emphasis added).”

Once again, a finding that two designs are “sufficiently distinct” is a purely subjective conclusion, depriving the litigants of any objective guideposts with which to evaluate the case.  After all, how can any self-respecting design lawyer tell his/her client whether or not its patented design is sufficiently distinct from an accused design?  It’s virtually impossible.

As I have posited in my recent article (available on SSRN) “Sufficiently Distinct is Insufficient to Determine Design Patent Infringement”, the term “plainly dissimilar” or its sister term “sufficiently distinct” should be used very sparingly, only in situations where the two designs are, on first glance, manifestly different in appearance, such as a flip phone compared to an iPhone. Such a standard would greatly reduce the tendency of lower courts to dispose of cases in which the designs are actually close enough to present a fact question for the jury.  This would still permit a court to quickly dispose of those cases that on their face are not meritorious, i.e., do not present a plausible claim of infringement.  In my research covering cases decided post-Egyptian, almost all of them would have benefitted from a 3-way analysis between the patented design, the accused design, and the prior art.  In fact, even before Egyptian, courts routinely made such a 3-way comparison.  Examples of both pre- and post-Egyptian cases are illustrated in my paper.

Turning to the Homy Casa case, which analyzed four design patents on chairs, the court at least purported to take into account the prior art.  It included 18 such pieces of prior art in Appendix I to its opinion:

In considering the design patented in D808,669, after the standard exercise in enumerating the differences between the patented and accused designs, the court said: “While these differences might seem minor at first blush, they are significant in light of the prior art.”  The court noted that the parties were entering into “a crowded field of midcentury modern dining room side chairs”, noting that “Plaintiff, Defendant and many others have designed and sold side chairs that are generally similar to the chair designed by  Charles Eames”, referring to Appendix I which showed an illustration of an Eames chair from USPN 2,893,469.   

The court then said: “The design in the ‘669 patent is distinguished from the prior art by its seat shape and interior offset.  It is these same differences that distinguish the ‘669 patent from Defendant’s product.”  While this logic is facially plausible, the court did not directly compare the patented and accused designs to the Eames prior art, or any other prior art.  It performed a similar analysis with respect to D920,703 and D936,991 but without specifically identifying any particular piece of prior art from Appendix I.  For the last patent at issue, D936,992, the court did specifically mention the Chavarria prior art from Appendix I (D811,790), but again did not specifically compare its features or overall appearance with those of the patented and accused designs.

In sum, the Homy court referred to the correct standard in requiring a comparison to the prior art, but it did not do much of a comparison.  This is evidenced by the inclusion in Appendix I of 16 prior art patents, while referencing only two of them in its opinion.  And the court’s main analysis consisted of calling out differences between the patented and accused designs, which again is a subjective analysis, easy to do.  As evidence, the court appended photos comparing the patented and accused designs in its Appendix II:

Similarly Appendix V showed the ‘992 patent next to similar views of its accused design.

Appendices III and IV visually compared the other two design patents to the corresponding two products of the defendant.

It would have been far better if Appendices II-V contained 3 columns: the patented design, the accused design, and the closest prior art. This would have provided some objectivity to the infringement analysis, essentially asking the fact-finder: are the patented and accused designs closer to each other than either is to the closest prior art? (in which case a finding of infringement would be justified); or are either the patented or accused designs closer to the prior art than they are to each other? (in which case a finding of non-infringement would be justified).

It is not my purpose here to perform such an analysis, i.e., to say whether the Kohler and Homy courts’ conclusions about infringement were correct, but simply to point out that the Homy court went slightly further than the Kohler court in at least acknowledging that the prior art should play a significant role in analyzing design patent infringement, as is clear from Egyptian. 

The next step would be, of course, for a court to actually perform such a 3-way analysis.