The overall similarity between patented and accused designs, a court ruled, is enough to let a jury decide whether design patent infringement occurred.
On August 14, 2012, the U.S. District Court for the Northern District of Georgia, Chief Judge Julie E. Carnes presiding, issued an order denying the defendant's motion for summary judgment, thus refusing to dispose of a lawsuit over speaker designs before it can be tried to a jury.
The order indicates that the plaintiff, Rapha Products Group, LLC ("Rapha"), based in Acworth, Georgia, owns U.S. Patent No. D555,636
("the '636 Patent"), which issued in 2007, and "which encompasses the ornamental design for a tubular speaker as depicted in the six figures that are attached to the patent application." As stated by the USPTO
, a design patent "may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture." The term of a design patent is 14 years from the date of issuance; this differs from regular ("utility") patents, which carry a term of 20 years from the earliest effective filing date of the patent application.
Rapha contends that the Park City, Utah-based defendant Skullcandy, Inc. ("Skullcandy") infringed the '636 Patent with its "Pipe" and "Super Pipe" models of tubular speakers, depicted below next to Figure 3 of the patent. These images are excerpts from Rapha's Infringement Contentions.
Fig. 3 of '636 Patent vs. accused "Pipe" speaker
Fig. 3 of '636 Patent vs. accused "Super Pipe" speaker
Skullcandy denies any infringement and filed counterclaims seeking declaratory judgments of invalidity, as well as of noninfringement, of the '636 Patent. Skullcandy also responded to Rapha's Infringement Contentions and filed Invalidity Contentions, asserting several prior art references, three of which are shown below as mere examples. Each of the illustrated prior art references were among those cited in Skullcandy's motion for summary judgment of noninfringement.
|Excerpt from asserted prior art U.S. Pat. No. 5,191,177|
|Excerpt from asserted prior art U.S. Pat. No. D551,656|
|Excerpt from asserted prior art U.S. Pat. No. D384,350|
The court began its infringement analysis by reciting the two-part test for infringement in design patent cases: "First, the patent claim is construed to determine its scope and meaning. Second, the properly construed claim is compared to the accused design for overall similarity."
In step 1, the court quoted precedent stating that "the illustration in the drawing . . . is its own best description." It therefore construed the '636 Patent claim as "the tubular speaker design depicted in the six figures that are attached to the '636 patent application."
Step 2 of the infringement analysis invokes the "ordinary observer test," in which the finder of fact decides "whether, an ordinary observer, familiar with the prior art, would be deceived into believing that the accused design is substantially the same as the patented design." In this step, the factfinder compares the patented and accused designs side-by-side. In cases where the accused design is not "plainly dissimilar" to the patented design, the prior art can be useful in "highlighting differences between the patented and the accused designs that might not be noticeable in the abstract."
The court recognized that one may obtain a summary judgment of noninfringement of a design patent "if the patented and the accused designs are 'plainly dissimilar,'" or "if in light of the prior art, a jury could not reasonably conclude that the patented and the accused designs are 'substantially the same.'” However, it found that Skullcandy's showing did not rise to those standards.
A side-by-side comparison of the '636 Patent design with Skullcandy's accused designs, in the eyes of the court, "demonstrates sufficient similarity to support a claim for infringement." Citing similarities in the respective locations of power switches, "line in" jacks, and a shallow rectangular cavity, the court found that the patented and accused designs combined features "in such a way as to create a similar overall appearance and visual effect."
The court credited Skullcandy's argument that its designs differed from the '636 Patent in terms of: "(1) protruding control buttons on the face of the device, (2) a pedestal stand, and (3) transparent end caps." However, the court stressed that it must focus on the designs as a whole, and that it would be impermissible to exalt the importance of those differences over that of the designs in their entireties. The ultimate significance to be accorded to the differences, the court reasoned, was a matter for the jury:
Applying the above principles and properly focusing on the designs as a whole, the Court finds that the 636 patent and the Pipe and Super Pipe products are not “plainly dissimilar.” [Citation omitted.] The cited differences are relevant to the analysis, and a jury might ultimately find them to be determinative of the infringement issue. However, the differences do not render the patented and the accused designs “sufficiently distinct that it [is] clear without more” that there is no infringement.” [Citation omitted.]
Finally, the court assessed the impact of Skullcandy's cited prior art upon the infringement issue, deeming that prior art "relevant but not determinative." It acknowledged that the prior art "shows that cylindrically shaped speakers were fairly common," but it also observed that in every other respect, the prior art differs from both the '636 Patent and Skullcandy designs. In fact, the court surmised that the prior art may actually highlight similarities between the patented and accused designs, rather than the differences.
Consequently, as it found that the differences between the '636 Patent and Skullcandy designs "are not so glaring as to dictate only one reasonable outcome," the court denied Skullcandy's motion for summary judgment of noninfringement.
The case is Rapha Products Group, LLC v. Skullcandy, Inc., No. 1:10-cv-3388-JEC, U.S. District Court for the Northern District of Georgia, Atlanta Division.
Labels: Chief Judge Carnes, design patent, Northern District of Georgia