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September 16, 2007

Ordinary Observer

Arminak and Calmar sell trigger sprayers to makers of liquid household products. Arminak sought declaratory judgment from two of Calmar's design patents for sprayer shrouds: 381,581 & 377,602. The district court found non-infringement in summary judgment. On an affirming appeal, the CAFC lays down case law on assessing design patent infringement, finding an "ordinary observer" to have a keen eye; akin to SCOTUS KSR in having "ordinary" be extraordinary. Overturning 136-year precedent, the virulent anti-patent KSR disease spreads to design patents.

Arminak v. Saint-Gobain Calmar (CAFC 2006-1561)

In the Supreme Court KSR ruling this past spring, the vast majority of utility patents became invalid by the court altering the definition of what is "obvious." To do so, the primary redefinition was what constituted "a person having ordinary skill in the art;" changing that from your average bear to an omnificent proficient inventor. Judicial concern for decades over impermissible hindsight creeping was cast aside: if it seemed obvious to an expert in the field in hindsight, it was.

Unlike a utility patent, which goes to functional invention, a design patent is for ornamental innovation.

"A design patent protects the nonfunctional aspects of an ornamental design as shown in the patent." Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995) (citing Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993)). The chief limitation on the patentability of designs is that they must be primarily ornamental in character. If the design is dictated by performance of the article, then it is judged to be functional and ineligible for design patent protection. Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563, 1566 (Fed. Cir. 1996).

Design patent infringement is covered in two sections of patent law: 35 U.S.C. § 271, which also covers utility patents, and § 289, specific to design patents.

The CAFC quoting § 289 and case law -

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

Accordingly, a design patent is infringed by the "unauthorized manufacture, use, or sale of the article embodying the patented design or any colorable imitation thereof." Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1116-17 (Fed. Cir. 1998).

Assessing design patent infringement is a two-step process: construe the claims, then compare the construed claims to the accused design. The comparison involves two separate tests: how it looks to an "ordinary observer" in light of the "point of novelty."

Similar to the infringement analysis of a utility patent, infringement of a design patent is evaluated in a two-step process. First, the court must construe the claims of the design patent to determine their meaning and scope. OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404-05 (Fed. Cir. 1997). Design patents typically are claimed as shown in drawings. Claim construction by a court is adapted accordingly. Goodyear, 162 F.3d at 1116. The scope of the claim of a patented design “encompasses ‘its visual appearance as a whole,’ and in particular ‘the visual impression it creates.’” Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002) (quoting Durling v. Spectrum Furniture Co., 101 F.3d 100, 104-05 (Fed. Cir. 1996)).

Second, after construction of the patent’s claims, the court is to compare the construed claims to the accused design. Elmer, 67 F.3d at 1577. Infringement of a design patent occurs if "the designs have the same general visual appearance, such that it is likely that the purchaser [(or the ordinary observer)] would be deceived into confusing the design of the accused article with the patented design." Goodyear, 162 F.3d at 1118. The patented and accused designs do not have to be identical in order for design patent infringement to be found. Contessa, 282 F.3d at 1376. In determining infringement of a design patent, the court "is not limited to the ornamental features of a subset of the drawings, but instead must encompass the claimed ornamental features of all figures of a design patent." Id. at 1379 (emphasis added).

The comparison of the patented and accused designs involves two separate tests, both of which must be satisfied to find infringement: the "ordinary observer" test and the "point of novelty" test. Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1383 (Fed. Cir. 2004). The "ordinary observer" test was first enunciated by the United States Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871), which held that:

[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, the first one patented is infringed by the other.

Id. at 528. In a separate and distinct inquiry, the "point of novelty" test requires proof that the accused design appropriated the novelty which distinguishes the patented design from the prior art. Egyptian Goddess, Inc. v. Swisa, Inc., No. 2006-152, 2007 WL 2439541, at *2 (Fed. Cir. Aug. 29, 2007) (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)). Both the ordinary observer test and point of novelty test are factual inquiries. Bernhardt, 386 F.3d at 1383.

Ordinary Observer

Just as the "ordinary skill" was the lynchpin definition for obviousness in utility patents, so defining "ordinary observer" determines how discerning differences are considered for design patents. The more expert, hence discerning, the "ordinary observer" is defined, the more closely an accused design must match; an eagle eye readily distinguishes.

A question that is central to this case, and every design patent case, is the identity of the "ordinary observer" of the design at issue, which in this case is the design of trigger sprayer shrouds. This test requires an objective evaluation of the question of whether a hypothetical person called the "ordinary observer" would find substantial similarities between the patented design and the accused design, so as to be deceived into purchasing the accused design believing it is the patented design. Gorham, 81 U.S. at 528.

The Supreme Court in 1871 set the bar for defining an "ordinary observer": not the expert observer, someone "accustomed to compare such designs," but an average person of  "ordinary acuteness," who may be misled by "colorable imitation."

The Supreme Court’s Gorham opinion, which dealt with an accused design’s infringement of a design patent on silverware handle designs, expressly excluded experts from the category of persons who are ordinary observers. Under the facts of Gorham, it was “the observation of a person versed in designs in the particular trade in question—of a person engaged in the manufacturer or sale of articles containing such designs—of a person accustomed to compare such designs one with another, who sees and examines the articles containing them side by side,” id. at 527, that was explicitly rejected by the Supreme Court.

The Supreme Court in Gorham contrasted this group of expert examiners, whose observations it rejected, with “ordinary observers,” who it described as people possessing “ordinary acuteness, bringing to the examination of the article upon which the design has been placed that degree of observation which men of ordinary intelligence give.” Id. at 528. The Court emphasized that “[i]t is persons of this latter class who are the principle purchasers of the articles to which designs have given novel appearances, and if they are misled, and induced to purchase what is not the article they supposed it to be . . . the patentees are injured, and that advantage of a market which the patent was granted to secure is destroyed.” Id. To be effective, design patent protection must focus upon observations “by ordinary observers, by those who buy and use” the article bearing the design in question. Id.

In the Arminak case, the CAFC shifts a 136-year precedent as part of creeping trend, attributing to an "ordinary observer" expertise: a commercial buyer, not a consumer. This parallels KSR: the more expert someone "ordinary" is, the harder it becomes to enforce a patent.

Calmar argues that the appropriate "ordinary observer" in this case is the retail consumer who purchases the retail product that incorporates the sprayer shroud, such as the retail purchaser of a bottle of liquid window cleaner with a trigger sprayer device attached to the bottle’s cap and a tube extending into the liquid to extract the liquid from the bottle as a spray during retail use. If the ordinary observer is found to be the retail consumer that purchases the shroud of the trigger sprayer device as it is incorporated into a retail product, then it is much more likely that the ordinary observer would find substantial similarities between the patented and accused designs sufficient to be deceived into thinking that Arminak’s AA Trigger shroud is one of the patented designs.

The district court disagreed with Calmar and found that the "ordinary observer" of trigger sprayer shrouds is not the retail consumer, but the purchaser of trigger sprayer mechanisms for assembly and incorporation into the product that is sold to retail consumers. The record clearly shows that Calmar never sold any of its patented shrouds directly to retail consumers. Arminak, 424 F. Supp. 2d at 1198. If the ordinary observer is the contract buyer or industrial purchaser of trigger sprayers, then the undisputed material facts in the record establish that such a purchaser would not find substantial similarity between the patented and accused shrouds, and therefore would not be deceived into thinking that Arminak’s AA Trigger shroud is one of the patented designs. Id. at 1201-02.

The unanswered question remaining after Gorham is whether these “ordinary observers” of which the Supreme Court spoke can be commercial or industrial buyers of designed items that are used as component parts assembled into a retail product. Although we have not squarely addressed that question until now, in the Goodyear case (which dealt with patented tire tread designs commercially embodied on Goodyear’s truck tires) we stated that the focus of the ordinary observer test is “on the actual product that is presented for purchase, and the ordinary purchaser of that product.” 162 F.3d at 1117 (emphasis added). There we found that the ordinary observer of the patented tread designs was a truck driver and a truck fleet operator because the products containing the patented and accused designs were tires used on trucks, even though the design patent at issue was not limited to truck tires.

In 1933, when the regional United States Courts of Appeals still had jurisdiction over patent law issues, the Sixth Circuit noted the substantial number of prior art design patents in the field of automobile electric cigar lighters and ashtrays. Adhering to the precedent of Gorham v. White, the court held:

The ordinary observer is not any observer, but one who, with less than the trained facilities of the expert, is “a purchaser of things of similar design,” or “one interested in the subject” . . . one who, though not an expert, has reasonable familiarity with such objects [as an automobile ash tray and cigar lighter], and is capable of forming a reasonable judgment when confronted with a design therefor as to whether it presents to his eye distinctiveness from or similarity with those which have preceded it.

Applied Arts Corp. v. Grand Rapids Metalcraft Corp., 67 F.2d 428, 430 (6th Cir. 1933).

More recently, two district court opinions found that institutional purchasers, not end-user consumers, were the appropriate persons to be considered ordinary observers when the design-patented item is a component of the product that is sold. E.g. Spotless Enters., Inc. v. A & E Prods. Group, L.P., 294 F. Supp. 2d 322, 347 (E.D.N.Y. 2003) (design patent for lingerie hangers; “ordinary observer” was not the general public, but the commercial buyer for garment manufacturers, who then resold garments on the hangers to retail stores); Puritan-Bennett Corp. v. Penox Techs., Inc., No. IP02-0762-C-M/S, 2004 W.L. 866618, at *26 (S.D. Ind. Mar. 2, 2004) (design patent for portable liquid oxygen tanks; “ordinary observer” “must include medical equipment distributors, at the least, and possibly, hospitals and physicians” who provide the tanks by prescription to patients), aff’d 121 F. App’x 397 (Fed. Cir. 2005).

In applying the ordinary observer test, a court is to compare the construed claims to the accused design to determine whether “the designs have the same general visual appearance, such that it is likely that the purchaser [(or the ordinary observer)] would be deceived into confusing the design of the accused article with the patented design.” Goodyear, 162 F.3d at 1118. Specifically, the question to be addressed in applying the ordinary observer test is whether the ordinary observer would be deceived by the accused design because it is substantially similar to the patented design. Gorham, 81 U.S. at 28. Under our case law, the ordinary observer test requires, as the district court recognized, the comparing of the accused and patented designs from all views included in the design patent, not simply those views a retail customer seeking to buy would likely see when viewing the product at the point of sale. Contessa, 282 F.3d at 1379.

Calmar's own expert testified that an expert observer could discern a difference between Arminak's trigger sprayer and Calmar's patented design. This dooms infringement.

The record establishes that the ordinary observer would not be deceived by the similarities between Arminak’s AA Trigger shroud and Calmar’s patented sprayer shroud designs. Indeed, Calmar’s own expert conceded that “[i]t would be a significant exception for a corporate buyer purchasing the Arminak trigger sprayer to confuse the Calmar ERGO Shroud and the Arminak AA shroud” and that “[t]here is essentially no question that a corporate buyer purchasing these trigger sprayers with these specific shrouds would be able to tell the difference easily.” Arminak, 424 F. Supp. 2d at 1201-02. A former Calmar customer service manager also testified that most of Calmar’s customers “wouldn’t be fooled for a second.” Id. at 1201. We agree with the district court that the undisputed material facts establish that the ordinary observer would not be deceived by the similarities between Arminak’s AA Trigger shroud and Calmar’s patented sprayer shroud designs.

Point of Novelty

The point of novelty test is the second test that must be satisfied for an accused design to infringe a design patent. In applying the point of novelty test, a court compares the construed claims to the accused design to determine whether the accused design has “appropriated” the points of novelty from the patented design. See Litton, 728 F.2d at 1444. Where the art in the field of a particular design is crowded, we must construe the range of equivalents narrowly. Id.

Calmar presented two points of novelty: 1) a horizontal line, and 2) a bulbous bottom. You, the less-than-ordinary observer, adjudge.


Posted by Patent Hawk at September 16, 2007 8:00 PM | Design Patents


Calmar was the accused infringer and succeeded in invalidating spray nozzle patents in the companion case to Graham v John Deere, 383 U.S. 1, 148 USPQ 459 (1967).

Posted by: David Boundy at September 18, 2007 1:31 PM

By way of update, on May 5, 2008, the Industrial Designers Society of America field an amicus brief in support of Calmar's Petitioner for Writ of Certiorari before the U.S. Supreme Court.

Posted by: Christopher Carani at May 12, 2008 11:56 AM