The CAFC affirms MD FL in design patent case

The outcome:


Lanard Toys Limited (“Lanard”) appeals from the decision of the United States District Court for the Middle District of Florida granting summary judgment in favor of
Dolgencorp LLC, Ja-Ru, Inc., and Toys “R” Us–Delaware,
Inc. (collectively, “Appellees”) with respect to Lanard’s
claims for design patent infringement, copyright infringement, trade dress infringement, and statutory and common
law unfair competition. Lanard Toys Ltd. v. Toys “R” UsDelaware, Inc., No. 3:15-cv-849-J-34PDB, 2019 WL
1304290 (M.D. Fla. Mar. 21, 2019) (“Decision”). For the
reasons described below, we affirm



The law


We begin, as the district court did, with Lanard’s claim
for design patent infringement. Determining whether a design patent has been infringed is a two-part test: (1) the
court first construes the claim to determine its meaning
and scope; (2) the fact finder then compares the properly
construed claim to the accused design. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). In comparing the patented and accused design, the “ordinary
observer” test is applied—i.e., infringement is found “[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.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d
665, 670 (Fed. Cir. 2008) (en banc) (quoting Gorham Mfg.
Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871)). The infringement analysis must compare the accused product to
the patented design, not to a commercial embodiment. See
Payless Shoesource, Inc. v. Reebok Int’l, Ltd., 998 F.2d 985,
990 (Fed. Cir. 1993); see also High Point Design LLC v.
Buyer’s Direct, Inc., 621 F. App’x 632, 642 (Fed. Cir. 2015)
(“We have long-cautioned that it is generally improper to
determine infringement by comparing an accused product
with the patentee’s purported commercial embodiment.”
(citing Sun Hill Indus., Inc. v. Easter Unlimited, Inc., 48
F.3d 1193, 1196 (Fed. Cir. 1995), abrogated on other
grounds by Egyptian Goddess, 543 F.3d at 672–79)).

(...)

To be clear, the “ordinary observer” test for design patent infringement requires the fact finder to “compar[e]
similarities in overall designs, not similarities of ornamental features in isolation.” Ethicon Endo-Surgery, Inc. v.
Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir. 2015) (citing
Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295
(Fed. Cir. 2010); Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d
1294, 1303–04 (Fed. Cir. 2010)). But, while the “ordinary
observer” test is not an element-by-element comparison, it
also does not ignore the reality that designs can, and often
do, have both functional and ornamental aspects. See
Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d
1365, 1372 (Fed. Cir. 2006) (“The trial court is correct to
factor out the functional aspects of various design
elements, but that discounting of functional elements must
not convert the overall infringement test to an element-byelement comparison.”). Under the “ordinary observer” test,
a court must consider the ornamental features and analyze
how they impact the overall design. See Richardson, 597
F.3d at 1295 (“We looked to ornamental elements . . . [and
w]e concluded that both the claimed design and the accused
designs contained those overall ornamental effects, thereby
allowing for market confusion.” (citing Crocs, 598 F.3d at
1303–07)). That is what the district court did in this case.