Solar Sun Rings, Inc. v. Wal-Mart Stores, Inc. – Motion for Summary Judgment of No Infringement Denied

Last week, the Central District of California rendered a decision on Wal-Mart’s Motion for Summary Judgment of No Infringement in Solar Sun Rings, Inc. v. Wal-Mart Stores, Inc., No. 11-cv-6990, 2012 WL 5379144 (C.D. Cal. October 31, 2012).  The case involves Solar Sun Ring’s (“SSR”) U.S. Design Patent No. 579,570, which is drawn to a “Floating Spa Cover” used to heat the water in a swimming pool.  Below is a comparison of the figures of the ’570 Patent and the accused product, Wal-Mart’s “Solar Pad”:

Judge Gutierez began his decision by construing the ‘570 Patent to cover “the illustrations that are contained in the ‘570 Patent.”  Id. at *3 (citing  Egyptian Goddess, 543 F.3d at 679).  As stated in our previous posts, this is the majority approach to claim construction where there is no immediate issue of functionality within the design. 

With regard to infringement, the Court addressed the level of examination required in design patent infringement analysis.  Wal-Mart made three distinctions between the ‘570 Patent and the Solar Pad.  First, the Solar Pad does not have 57 square quilted “pillows.”  Second, the ‘570 Patent lacks the gusset found in the Solar Pad.  Third, the ‘570 Patent has a differently proportioned ring than the ‘570 Patent.  Id.  at *4.  SSR countered that “comparisons of ‘similarities in the overall design, not of similarities in ornamental features considered in isolation ... should determine whether there has been infringement.’”  (quoting Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2006))

Judge Gutierez agreed with SSR, and stated that “it is important to recognize that the inquiry is not whether the Accused Product and design have ‘slight variances in configuration.’  Rather, the question is whether the two designs look substantially the same to the observer's eye.   Furthermore, ‘minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement.’” Id. (citations omitted).  Based on this standard, the Court denied Wal-Mart’s motion.

SSR v. Wal-Mart, is a reminder that the standards for infringement and anticipation for design patents, although theoretically identical, are applied differently by the Patent Office and Federal Court.  As other commentators have noted, the PTO typically does not apply a rigorous anticipation and non-obviousness analysis to design patent applications.  Design patents with only minor distinctions from prior art sometimes have a good chance of being allowed.  However, as in SSR v. Wal-Mart, Courts appear willing to give design patents a somewhat broader scope during an infringement analysis.

Although these divergent standards can result in unfairness to unsuspecting defendants, it could be made to work to their advantage as well.  By consistently seeking design patents for their new products, Defendants can develop a record regarding the novelty of their products, and potentially create a viable counterclaim in any future design patent lawsuits.  Thus, a good design patent portfolio should be thought of as a potential shield as well as a sword.