Original (O) products is appealing the district court's grant of summary judgment in favor of
Happy Toys (H) on claims of design patent infringement, trade dress infringement, and state-law
We are considering a cross-appeal on the grant of summary judgment in
favor of O on the issue of patent invalidity.
The following is an analysis of each of these issues,
with both our and their potential arguments, and an opinion as to the likely outcome.
Design Patent Infringement
A design patent protects the aesthetic appearance of a product, rather than its functional
A design patent may be obtained for any new, original and ornamental design for an
article of manufacture.
Appearance is primarily important for design patents, rather than
These patents are issued for a 14 year term (instead of the normal 20).
design to be patentable the PTO requires that the design be novel, original, nonobvious,
ornamental, and not dictated by functional concerns.
The design must make a visual impact
upon the mind of the observer.
Test for Infringement
Infringement of a design patent is a two-pronged test.
To determine if we have infringed O's
design patent, we must first consider whether an "ordinary observer," using the reasonable care
expected of a purchaser, would find the two products to be substantially the same.
Also, if the resemblance is done to deceive the observer, in an attempt to induce the observer to
buy the infringing product, then it is infringement.
The "ordinary observer" in this case
should be someone who has reaosnable familiarity with the objects and can make a reasonable
Thus, the touchstone of infringement is similarity, not consumer confusion.
The second prong considers the point of novelty test.
Under this test, the similarity found by the
ordinary observer must come from those novel elements of the patented design that distinguish
it from the prior art.
So, if our Rotator footballs do not appropriate the novel features of the
Spinner footballs, there is no infringement.
If it is found that O only used non-protectable matter
for the Spinner football, without sufficient variation from the prior art, we have not infringed.
unclear if a design patent can be infringed by a non-competing or unrelated product, but the
Federal Circuit has not precluded infringement.
This indicates that some form of a quasi-
Doctrine of Equivalents may be available for design patents.
Did we infringe?
First, I believe it is necessary to separate out our line of foam Rotator footballs from those made
of other products.
In particular, it is necessary to analyze separately those meant to be thrown
from those meant as sculpture.
I first consider those footballs made of foam that are meant to be thrown.