640 F. App'x 970
Fed. Cir.2016Background
- Plaintiff Allyson Wallace is the owner of U.S. Design Patent No. D485,990 covering an ornamental design for a body-washing brush (D’990).
- Wallace sued Ideavillage Products Corp. alleging that its “Spin Spa” product infringed the D’990 design patent; Ideavillage moved for summary judgment of noninfringement.
- The district court, after briefing, expert report submissions, and oral argument, granted summary judgment for Ideavillage, finding the accused product and the patented design not substantially the same.
- The district court applied the two-stage “ordinary observer” test from Egyptian Goddess: (1) compare claimed and accused designs for plain dissimilarity; (2) if not plainly dissimilar, compare both to prior art to inform the ordinary observer analysis.
- The district court identified six specific differences in shape and surface detail (handle curvature, finger grip, handle base, head shape and tiers, rear protrusion, and decorative ovals) and concluded the designs are plainly dissimilar.
- The court also compared the D’990 and the accused product to prior art (U.S. Patent No. 4,417,826) and concluded that an ordinary observer familiar with the prior art would not be deceived into thinking the designs are the same.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Ideavillage’s product infringes the D’990 design patent under the ordinary observer test | Wallace contended the accused product embodies the patented ornamental design and appears substantially the same to an ordinary observer | Ideavillage argued the accused product is plainly dissimilar in overall appearance and details, so no infringement as a matter of law | Court held no infringement: designs are plainly dissimilar under stage one, and prior art comparison in stage two reinforces noninfringement |
| Whether summary judgment was appropriate on noninfringement | Wallace argued factual disputes (expert report) precluded summary judgment | Ideavillage argued no reasonable factfinder could find substantial similarity given the differences and prior art context | Court applied Third Circuit summary judgment standard and affirmed summary judgment for Ideavillage |
Key Cases Cited
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) (adopts the ordinary observer test as governing design patent infringement)
- Gorham Mfg. Co. v. White, 81 U.S. 511 (1871) (original articulation of the ordinary observer test)
- Classen Immunotherapies, Inc. v. Elan Pharm., Inc., 786 F.3d 892 (Fed. Cir. 2015) (procedural guidance on reviewing non-patent issues under regional circuit law)
- Young v. Martin, 801 F.3d 172 (3d Cir. 2015) (summary judgment standard under Third Circuit)
- Al–Sharif v. U.S. Citizenship & Immigration Servs., 734 F.3d 207 (3d Cir. 2013) (de novo review of summary judgment in the Third Circuit)