October 14, 2015 | Posted in:Patents

The Standard Infringement in a Design Patent Case

… what every lawyer should know

The Patent Guys, Arthur Peslak and Richard Malagiere wrote The Standard for Infringement in a Design patent Case for the Bergen County Bar Association Intellectual Property Committee


Design patents are directed to the outward appearance of an item. As explained in the Manual of Patent Examining Procedure, the design for an article consists of the visual characteristics or aspect displayed by the article. It is the appearance presented by the article which creates an impression through the eye upon the mind of the observer. Design patents are typically claimed as shown in drawings, and claim construction must be adapted to a pictorial setting. Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed Cir. 2002).

Of course, the authority for the grant of design patents comes from the Article 35 of United States Code – specifically, sections 101 and 171. Section 101 creates the threshold of patentability, “[w]hoever invents or discovers any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title. Section 171 specifically allows for ‘Design Patents, “[w]hoever invents any new, original and ornamental design for an article.

In a typical scenario, a design patent holder (“patentee”) alleges that a device owned and used by another (“alleged infringer”) infringes upon the property right conveyed to the patentee (the right to exclude others from making or using) by the design patent. In this setting, the standard employed to determine if the alleged infringing device in fact infringes the design patent is that of the “ordinary observer.” Specifically, an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented designs. Under the “ordinary observer” test, infringement will not be found unless the accused article embodies the patented design or any colorable limitation thereof. [citations omitted] Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed Cir. 2006).

In some instances, the claimed design and the accused design will be sufficiently distinct that a comparison of the two will be all that is necessary to meet the burden of proving that the two designs would appear “substantially the same” to the ordinary observer. When the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed 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 be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art. Id.

When the differences between the claimed and accused designs are viewed in light of the prior art, the attention of the hypothetical ordinary observer may be drawn to those aspects of the claimed design that differ from the prior art. If the claimed design is close to the prior art designs, small differences between the accused design and the claimed design assume more importance to the hypothetical observer. The ordinary observer, however, will likely attach importance to those differences depending on the overall effect of the differences on the design. Even if the claimed design simply combines old features in the prior art, it may still create an overall appearance deceptively similar to the accused design. In that case, the court will uphold a finding of infringement. In other words, the deception that arises is a result of the similarities in the overall design, not of similarities in ornamental features in isolation. [citations omitted] Crocs, Inc. v. ITC, 598 F.3d 1294 (Fed Cir. 2008).

So, the patentee has the burden to establish infringement by a preponderance of evidence. The burden to produce comparison “prior art” is on the alleged infringing defendant. The accused infringer is the party with the motivation to point out close prior art, and in particular to call the court’s attention to prior art that an ordinary observer is most likely to regard as highlighting the differences between the claimed and accused designs. The question for the jury to resolve is whether an ordinary observer familiar with the prior art designs would be deceived into believing the accused design is the same as the claimed design.

Please contact us with questions or comments…the Patent Guys

Arthur M. Peslak, Esq. Registered Patent Attorney
Richard Malagiere, Esq. Registered Patent Attorney

The Patent Guys are attorneys in the Intellectual Property Practice Group of the law firm of Gertner Mandel LLC providing legal support for legal, technical & business issues.