Design Patent Infringement – Dissenting Opinion

INTRODUCTION:

I recently discussed the usefulness of pursuing design patents.  The Federal Circuit just ruled on a case of design patent infringement.  Lanard Toys Ltd., v. Dolgen Corp LLC, 19-1781 (Fed. Cir. 2020).  An image copy of the object subject of the design patent is compared below to the claimed infringing product.  Note that the Federal Circuit decision makes frequent reference to the Egyptian Goddess decision cited in my earlier design patent summary.  The Federal Circuit closes its eyes to clear design patent infringement.

This is my dissenting opinion to the Federal Circuit decision.  SPOILER ALERT:  In my humble opinion, the competing item clearly infringed the design patent.

DISCUSSION:

First, it was undisputed in the trial and the appeal courts that the competitor (Ja-Ru) was inspired by the patent owner’s (Lanard) patented design.  The facts get even worse against the claimed infringer.

The patented object was a toy chalk holder that was shaped like a pencil.  Lanard (the patent holder and manufacturer) sold the chalk holder to Dolgen, a distributor of the toy product to stores such as Toys-R-Us.  After a period of time, a company Ja-Ru began making the chalk holders shown below for the benefit of Dolgen.  Lanard lost Dolgen as a major customer.  

As shown below, the Ja-Ru product is a clone of Lanard’s toy chalk holder.  Note that Lanard had, prior to Ja-Ru’s clone, obtained both design patent and copyright protection for its chalk holder.  

The Court speaks of the prior art.  However, the components of chalk holder prior art are not identified by the Court.  Indeed, it appears that much of the prior art cited pertained to pencils.  Note the toy chalk holder mimicked the appearance of pencils.  However, it was not a pencil.  The Lanard design patent explicitly states it is “The ornamental design for a chalk holder, as shown and described” (in the 5 accompanying drawing of the design patent).

The image below displays the Lanard manufactured chalk holder (labeled “Lanard Chalk Pencil”) on the left.  The middle image is a drawing from the Lanard design patent.  The right-hand image is from the Lanard copyright registration.  

A picture containing indoor, table, sitting, different

Description automatically generated

Below is the claimed infringing chalk holder manufactured by Ja-Ru.

To my eye, the Ja-Ru product is identical to the Lanard product.

COURT REASONING:

The Court correctly states that the standard for determining whether there is infringement of a patented design is the “ordinary observer” test, i.e., “infringement is found if in the eye of the 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 Court cites Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008).

However, the Court got off track in first listing some of the ornamental aspects of functional elements, e.g., the smooth sides of the holder component, but ignored the holder components such as the cross section was hexagonal shaped.  This was copied by Ja-Ru product.  In general, the Court appears to ignore the uniqueness of the patent design applied to functional elements of a chalk holder.  A functioning chalk holder is not required to have a hexagonal shape; a smooth cylinder would be equally functional.  (Contrast this to the recent, differing and correct decision that the pattern of screw holes of a wall bracket could not be a design element when the pattern of the holes was dictated by the pattern of a functional and complementary component.)  

Notwithstanding the statement by the Court that “design patent infringement requires the fact finder to ‘compare similarities in overall designs, not similarities of ornamental features in isolation’” (citing Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312,1335 (Fed. Cir. 2015)), the Court then ignores the blatant copying of Ja-Ru of the Lanard toy chalk holder.

In my opinion, the Court is off base.  The Court explicitly acknowledge the copying, stating the trial court placed “the patented design side-by-side with the Ja-Ru product and noting that they ‘share a broad design concept-they are both chalk holders designed to look like a No. 2 pencil.’”  But the Court then dismissed the copied elements in stating the ornamental elements were related to functional components.  BUT WAIT, THE FUNCTION OF THE COMPONENTS DID NOT DICTATE THE LANARD PATENTED DESIGN SHAPE!!  The Court ignored Lanard’s creativity in design a mundane chalk holder.

CONCLUSION:

The Court is wrong.  Its decision is incorrect under prior law.  It is an outlier and should not be followed.  The problem is that a decision such as this will be cited as a reason for inventors and entrepreneurs not to pursue design patent.

It takes but a moment to see the fallacy of this recent decision of the Federal Circuit.  The iPhone frame obviously has a functional purpose.  But its unique shape was the basis of the trial court awarding $1 Billion damages against Samsung for a similar shaped frame.  Similarly the unique shape of the Lanard chalk holder deserves design patent protection from an intentional “Knock-Off”.

Copyright David McEwing, 2020