Back in August, we reported on a decision from Judge Robinson on the issue of how to define the "ordinary observer," in the case of Poly America, L.P. v. API Indus., Inc.. This case concerns a design for a box for holding and dispensing household trash bags. As part of that decision on API's unsuccessful motion for judgment on the pleadings, Judge Robinson also addressed whether the internal flaps of the accused cardboard box could be a distinguishing feature of the accused design. Judge Robinson concluded that the internal flaps could not be a distinguishing feature of the accused design because they would not be visible during the normal, intended use of the accused product.
As I interpret the above in the context of this case, I come to several conclusions. In the first instance, the "normal use" of the product at issue- a box containing plastic trash bags - extends well beyond the stage of manufacturing (where API would place the hypothetical purchaser) and retail sale to the homes of the retail consumers who open the boxes to use the bags. In this regard, the flaps depicted in figures 8-10 of the '719 patent are not visible at any time during the normal use of the product. Rather than support API's position, then, I conclude that the analysis in Contessa confirms my initial analysis.
Order Denying Motion for Judgment on the Pleadings at 6-7, available here (emphasis added). Judge Robinson's August decision left little doubt that the internal flaps of the design patent at issue had been construed as immaterial to the question of infringement, as a matter of law. While some questioned the correctness of that decision (see comment section of our original post), it became the law of the case back in August.
As a reminder, below are the figures from the design patent-in-suit and the accused box:
Poly-America was no doubt surprised, therefore, when Judge Robinson granted summary judgement of no-infringement to API last Tuesday, citing the differences in this same exact feature of the accused product. Only three months after holding that the internal flaps of the cardboard box were irrelevant to the infringement question, Judge Robinson held on summary judgment that the differences in this aspect of the box, alone, precluded a finding of infringement. Essentially, the Court held that it had overlooked recycling as part of the normal, intended use of the product:
In this regard, API presented expert testimony that, regardless of what an ordinary observer would see at the time of purchase, an ordinary observer would view the even top flaps, tabs and slots of the patented design "upon opening the box from the top or flattening it for recycling." ... Although Poly questioned the frequency with which an ordinary observer would view these features, it was unable to point to any evidence that would contradict APl's contention that the flaps, tabs and slots are visible at the point of disassembly, or that recycling was part of a box's "normal use." ... Because Poly failed to identify a genuine issue of material fact with respect to the "normal use" of the box at issue, the court considers the flaps, tabs and slots as part of the overall design for purposes of its infringement analysis.
Order Granting Summary Judgment at 15, available here (emphasis added).
While Judge Robinson's reversal may seem unfair to Poly America, it is probably the correct conclusion in this case. API's arguments at the pleadings stage appears to have focused on the visible aspects of the accused design during the manufacturing process, not the normal, intended use of the ultimate consumer. Had API made its "recycling" argument a bit sooner, API may have been able to resolve this case back in August based on the same argument.
Poly America is a reminder that it is important for design patent litigants to take a broad view of the normal, intended uses for a given article. The normal, intended use of a product may encompass any aspect of the products' everyday use, including recycling, washing, drying, wearing, cleaning, opening, closing, or any other customary situation for the product during its life. Issues of infringement and validity can only be properly decided with a broad perspective on how the design will be encountered in the "real world," and not just within the figures of a design patent.
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