Super-Sparkly Safety Stuff, LLC loses design patent infringment appeal at CAFC concerning “Bling It On” pepper spray canisters

Some background: Super-Sparkly owns a design patent for bedazzled pepper spray canisters, U.S. Patent No. D731,172 (“the ’172 patent”). This patent claims a design for a pepper spray canister decorated with rhinestones, in which rhinestones cover the bottom and some portion of the vertical part of a pepper spray canister. Skyline sells a line of “Bling It On” pepper spray canisters that are decorated with rhinestones. Unlike the designs claimed in the ’172 patent, the bottom surface of Skyline’s canisters is not decorated with rhinestones. In February 2017, Super-Sparkly sent Skyline a ceaseand-desist letter in which it accused Skyline’s pepper spray canisters of infringing its design patent. Skyline responded in April 2017, explaining that the accused product did not infringe Super-Sparkly’s design patent because the bottom of the canister was not decorated with rhinestones. The issues before the CAFC: This appeal requires us to resolve two issues: first, whether summary judgment was properly certified as final, thereby conferring jurisdiction on the court; and second, whether summary judgment of noninfringement was warranted. As to FRCP 54(b): When a district court certifies a decision as final under Federal Rule of Civil Procedure 54(b), we must review the finality of the judgment de novo to ensure we have jurisdiction, even if the parties agree that jurisdiction is proper. Ultra-Precision Mfg. v. Ford Motor Co., 338 F.3d 1353, 1356 (Fed. Cir. 2003) (citing W.L. Gore & Assocs. v. Int’l Med. Prosthetics Rsch. Assocs., Inc., 975 F.2d 858, 862 (Fed. Cir. 1992)). For Rule 54(b) to apply, three prerequisites must be met: “(1) multiple claims for relief or multiple parties must be involved; (2) at least one claim or the rights and liabilities of at least one party must be finally decided; and (3) the district court must find that there is no just reason for delaying an appeal.” Alfred E. Mann Found. for Sci. Rsch. v. Cochlear Corp., 841 F.3d 1334, 1347 (Fed. Cir. 2016) (citing 10 Charles Alan Wright et al., Federal Practice and Procedure § 2656 (3d ed. 2016)). While we review finality de novo, we review the district court’s determination that there is no just reason for delay for abuse of discretion. W.L. Gore, 975 F.2d at 862. Here, all three prerequisites are met. First, the case involves multiple claims, as Skyline’s counterclaims are still pending before the district court. Second, SuperSparkly’s two patent infringement claims were finally decided by the district court’s entry of summary judgment of noninfringement. Third, the district court did not abuse its discretion in determining that there is no just reason for delay. Of the substantive issue: Super-Sparkly and Skyline agree that the difference between the ’172 patent and the accused design is that the former includes rhinestones on the bottom of the pepper spray canister, whereas the latter does not. The district court did not err in concluding that that this difference precludes a finding of infringement under the ordinary observer test. Under the ordinary observer test, the claimed and accused designs may be “sufficiently distinct” and “plainly dissimilar,” such that an ordinary observer clearly would not find the two designs “substantially the same.” Egyptian Goddess, 543 F.3d at 678. When the designs are not “plainly dissimilar,” the analysis will benefit from a comparison of the claimed and accused designs with the prior art . . . . Where there are many examples of similar prior art designs . . . differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art. Id. The ’172 patent claims a very simple design, in which rhinestones are applied to two surfaces of a canister: the vertical cylinder and the bottom. Removing the rhinestones from one of these surfaces—the bottom—is a significant departure from the claimed design. The ’172 patent and the accused design are thus plainly dissimilar; because the accused design lacks rhinestones on one of the two surfaces decorated in the claimed design, an ordinary observer would not find the two designs substantially the same.