The claim of D488,936 is: "The ornamental design for the article dresser with mirror, as shown and described."

The accused dresser includes stylistic characteristics similar to Amini’s patented design.

As with utility patents, the claim as a whole must be considered. Atomization of features without regard to overall appearance is not appropriate claim construction for a design patent.

“A design patent protects the non-functional aspects of an ornamental design as seen as a whole and as shown in the patent.” Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993). In a recent suit between the same parties, we explained that:

An ordinary observer test governs design patent infringement: “[If] 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 an ordinary observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” Gorham Co. v. White, 14 Wall. 511, 81 U.S. 511, 528 (1871). In addition, the accused design must appropriate the novel ornamental features of the patented design that distinguish it from the prior art. Oakley, Inc. v. Int’l Tropic-Cal, Inc., 923 F.2d 167, 169 (Fed. Cir. 1991).

Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2006) (alteration in original).

The district court found: (1) three missing design elements, thus non-infringement; (2) that Amini hadn't provided enough evidence of infringement; and (3) that Amini had failed to prove its patent valid.

In granting summary judgment of non-infringement, the district court found it significant that the three noted elements are missing from Anthony’s accused design. It thus held that Anthony’s design could not be found to meet the requirements of the ordinary observer test. Id. The district court further found that Amini had failed to offer sufficient evidence that the ordinary observer test would be met because Amini had not “submit[ted] evidence showing that an ordinary observer would buy the accused product believing it to be the patented piece.” Id. at 7. The district court—relying on Amini’s expert’s statement that the dresser design was influenced by, and incorporated, classic elements used in furniture design—also found that Amini failed to “offer evidence that any of its ornamental designs are novel.” Id. Presumably, in the view of the district court, this made it impossible for Anthony to “appropriate the novel ornamental features of the patented design that distinguished it from the prior art,” since there were no such novel ornamental features.

(1) The district court had not looked at the claim as a whole, had not considered how an ordinary observer would have viewed it.

In its approach, however, the district court mistakenly analyzed each design element of the dresser individually instead of analyzing the design as a whole from the perspective of an ordinary observer. See Contessa, 282 F.3d at 1379 (explaining that the patented and accused designs do not have to be identical in order for design patent infringement to be found and that what is controlling is the appearance of the design as a whole in comparison to the accused product). The district court’s analysis is akin to the “element-by-element comparison” criticized in Amini, 439 F.3d at 1372. Comparing the overall visual appearance of Amini’s dresser with Anthony’s dresser, we are not prepared to say that a jury could not reasonably conclude that Anthony’s accused design is similar enough in ornamental appearance to Amini’s design that an ordinary observer would be likely to purchase one dresser thinking it was the other.

(2) When it comes to design patents, a picture is worth a thousand words in assessing infringement.

Additionally, we think that the district court erred in finding Amini’s evidence insufficient to prove infringement. Amini provided the ’986 patent and photographs of the accused dresser. This was sufficient to raise a genuine issue of material fact as to whether an ordinary observer would be likely to purchase one dresser thinking it was the other. See Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992) (finding that substantial evidence supported jury’s finding of infringement when the only evidence of record was the patent’s design and the patented and accused products themselves).2

(3) As to presumption of validity: "[W]hen the points of novelty can be discerned from the patent, its prosecution history, the cited prior art, and the patentee’s contentions, any additional evidence, such as expert testimony, is not necessary to establish the points of novelty."

Finally, we think that the district court also erred in finding on summary judgment that Amini’s invention lacked novelty. In its opposition to summary judgment, Amini provided the ’936 patent, its prosecution history, the cited prior art, and specific contentions as to the asserted points of novelty of the ’936 patent and how the accused dresser appropriated the novel features of the dresser design. This was sufficient to raise a genuine issue of material fact as to novelty. See, e.g., Bernhardt, L.L.C. v. Collezione Europa USA, 386 F.3d 1371, 1384 (Fed. Cir. 2004) (“[W]hen the points of novelty can be discerned from the patent, its prosecution history, the cited prior art, and the patentee’s contentions, any additional evidence, such as expert testimony, is not necessary to establish the points of novelty.”).

In finding that the patented design lacked novel features, the district court relied on Amini’s expert’s statement that the dresser design was influenced by, and incorporated, classic elements used in furniture design. Amini, slip op. at 7–8. However, a furniture design feature may be influenced by an existing style yet still be a novel interpretation of that style. For example, Amini identified the five-toed lion’s paw feet as a novel feature of the dresser.

Reversed and remanded in a non-precedential opinion.