The Infringement Judgment of American Design Patent

(1) Judgment subject-ordinary observer

In the Gorham Co. v. White case, the U.S. Supreme Court rejected the need for side-by-side comparisons to be made through the highly trained eyes of experts in design infringement judgments. "If, from the perspective of an ordinary observer, when the buyer's usual attention is applied, the two designs are substantially the same, and they are so similar that they will mislead the ordinary observer and cause them to treat one of the designs as another Design to purchase, then the authorized design is infringed by the other design.".

In Egyptian Goddess v. Swisa, the court found that "the 'ordinary observer' test is the only test for determining whether a design patent has been infringed ...... We believe that the preferred way to achieve this goal is to consider existing designs, rely on the ordinary observer test, and make a direct comparison.". However, this "normal observer" is someone who is "familiar" with the existing design.

As to whether the average observer must be the end user, the federal appeals court in Aramink v Saint-Gobain Calmar affirmed the district court's decision that the "average observer" was the industrial purchaser of spray bottle pump formation, not the end consumer. And witness testimony shows that industrial buyers will not be deceived by the products being sued.

(2) Interpretation of claims

According to Nanjing Huaxun, in Elmer v. ICC Fabricating, the Federal Court of Appeal stated that "in determining whether a design patent claim has been infringed, first of all, like an invention patent, the claim needs to be correctly interpreted to determine its meaning and scope. See Markman, 52 F.3d, p. 986. Secondly, the correctly interpreted claim must be compared with the alleged design to determine whether there is an infringement. Ibid. In this second step, compare the overall visual similarity of the patented design and the accused design." After the Elmer case, the judges of the Federal District Court will interpret the claim characteristics of the patented design when hearing the design patent infringement case. On this basis, the design infringement judgment based on the principle of comprehensive coverage (All Elements Rule) makes it more difficult for the design patentee to claim patent infringement.

In Goddess Egyptian v. Swisa, the Federal Court of Appeals eliminated the requirement that the district court must provide detailed text of the claim interpretation (claim construction) in design patent cases. The court pointed out that the Supreme Court has recognized that "for a design, it is better to use a view to express it, rather than any description, and the description without a view is not easy to understand '." Thus, "the generally preferred approach is for the District Court not to attempt to 'interpret' the claims of the design patent by providing a detailed textual description of the design for which protection is sought." Of course, in subsequent design patent cases, courts exist that provide and do not provide detailed descriptions of design patent claims.

(3) Overall observation principle

In Gorham Co. v. White, the Court noted that while it may be useful to compare each feature, the ultimate question is whether the design as a whole is substantially the same. "Although various changes in decoration can be found, the question remains whether the effect of the entire design is the same."

"We believe that the decisive consideration is the effect produced". "If the similarity is of such a degree as to deceive such an ordinary observer and induce him to believe that one design is another design and purchase it, the authorized design is infringed by another design."

In Amini Inovation Corp. v Anthony California, Patent Infringement of Furniture Designs, the Federal Court of Appeals stated that "the trial erroneously analyzed each design element individually without analyzing the design as a whole from the perspective of an ordinary observer."

"The correct inquiry is not 'whether the alleged design misappropriates a particular feature of the claimed design, 'but 'whether the alleged design misappropriates the claimed design as a whole'". whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design."

"If possible, the goal of the law must be effective; but, to put it bluntly, the goal of the law cannot be effective if the general appearance of the design is protected, but for those who express the appearance in a way that experts can observe and ordinary observers cannot notice. If the difference in the minute details is sufficient to exempt the imitation design from infringement charges."

In the Crocs v. ITC case, involving partial designs, the court found that "minor differences between the authorized design and the design of the product under complaint cannot and should not prevent the infringement from being established." Despite the differences in details, such as the shape and layout of the hole and the shape of the toe portion, the Federal Act finds that "a side-by-side comparison of the 789 'patented design and the product under complaint indicates that an ordinary observer familiar with the existing design would be deceived into believing that the product under complaint is the same as the patented design."

(4) "novelty point test" and the impact of existing technology

In the judgment of design infringement, the influence of existing design is very important. The United States Supreme Court in Smith v Whitman considered the difference between a patented design and an existing design and held that the saddle being sued did not possess the new features of the patented design and therefore belonged to the saddle of the existing design and thus did not infringe the design patent. This is the "point of novelty" test cited in Litton Systems v Whirlpool.

In Litton Systems v Whirlpool, which involved a design patent for a microwave oven, the Federal Court of Appeals, in response to whether there was a design infringement, held that "the device in question must have appropriated the novelty of the patented device that distinguishes it from the existing design. (references omitted). That is, even if a court compares two items through the eyes of an ordinary observer, in order to determine infringement, it must attribute the similarity of the items to the novelty that distinguishes the patented device from an existing design. (This 'novelty point' test only applies to infringement determinations...)" Because the alleged device does not have the characteristics of the Litton patent design to be different from the existing design, the court found that it is not infringing.

And in the subsequent Lawman Armor v. Winner International, the Federal Court held that novelty under the "novelty point test" could not be an overall appearance based on a collection of non-novelty features. Many friends of the court in the case expressed concern about this, because all designs are combinations of previous design elements.

However, in the Egyptian Goddess, Inc. v. Swisa case, the Tribunal rejected the "novelty point test" in a full bench opinion ". To establish infringement, the patentee must show that the alleged infringing design appears to an ordinary observer to be "substantially similar" to the patented design ". The court also noted the impact of existing designs on tort judgments: "When the design for which protection is sought is close to the existing design, minor differences between the design for which protection is sought and the design for which protection is sought may also be important in the eyes of the ordinary observer of the fiction."

In the previous case of Sash Controls, Inc. v. Talon, the court held that the scope of the existing design of a design patent included not only the product covered by the design patent, but also "similar" areas that designers in the field would consider. In this case, the court held that the scope of the existing design of the open well door handle (required to be pulled) included a similar rotating door handle (required to be twisted).

Nanjing Huaxun Ideavillage Products according to the latest Wallace v. Corp. The Federal Circuit Court of Appeals agreed with the district court that the two-step "ordinary observer" test should be applied. That is, the ordinary observer test is performed in two stages. "In some cases, the claimed design and the alleged design are sufficiently different (sufficiently distinct), so that it is clear that the patentee has not completed its proof that the two designs appear to an 'ordinary observer'. In other cases, when the claimed design and the alleged design are not manifestly dissimilar, resolving the question of whether an ordinary observer would consider the two designs to be substantially similar would benefit from a comparison of the claimed design, the alleged design, and the existing design."

(5) Functional features

When a design patent "incorporates both functional and decorative features,[1] the patentee must prove that the perceived similarity is based on the decorative features of the design [and not the functional features]…[2] the patentee must prove that the average person would be deceived by the common features of both the claimed design and the decorative features of the alleged design".

In Apple v. Samsung, Samsung argued that the District Court should exclude elements that "are determined by their functional use", "or cover structural factors of the article. Samsung believes that these elements should be "ignored" as a whole in the scope of protection of design patents. For example, Samsung believes that the rectangular shape and rounded corners of the design patent are such elements and should be ignored in the infringement analysis. The court found that existing jurisprudence did not support Samsung's claims. For example, Richardson v. Stanley Works, Inc. The case does not establish the rule that the entire design element is excluded from the scope of protection of a design patent, and Lee v. Dayton-Hudson Corp. The case also points out that "only non-functional design factors are relevant to the infringement determination."

The "decorative" requirement of the design law means that the design cannot be determined by function alone, that is, it cannot be the only possible form to achieve its function... The uniqueness or consumer recognition of the design may be attributed to the design, but the lack of artistic value does not mean that the design is purely functional.