Last Thursday, an interesting decision came down in the
design patent case of Oakley, Inc. v.
Hire Order, Ltd, et al., No.
3:12-cv-02346 (S.D. Ca.). This
case concerns Oakley’s U.S. Design Patent No. 523,461, titled “Eyeglass
Component.” Oakley accuses defendants
Hire Order, Ltd., Global One Sales, and Distribution Sportsman Eyewear, LLC
(“Hire”) of infringing the ‘461 Patent by selling their “Sportsman Eyewear” brand. Below is a figure from the ‘461 Patent
alongside an image of Hire’s Sportsman Eyewear glasses.
Both Oakley’s patented glasses and
the Sportsman’s Eyewear glasses are designed to allow the wearer to capture
video of whatever he or she views.
Oakley filed its complaint against Hire on September 26,
2012. Hire Answered on December 11, 2012
and then quickly filed a motion for summary judgment of no infringement, which
was the subject of the Court’s March 28 order.
While motions for summary judgment are usually filed long after the
pleadings stage has ended in utility cases, an early motion for summary
judgment can be an effective tool in design patent cases. Although the ordinary observer test is a
fact-intensive analysis, there are typically only two relevant facts for
consideration – the appearance of the accused product and the figures of the
design patent at issue. Where the
designs are not arguably deceptive, summary judgment of non-infringement may be
appropriate on these two facts alone. Furthermore,
if an image of the accused product is attached to the complaint, defendants may
even move to dismiss the complaint with prejudice. In the context of design patents, there are
few cases that would be ripe for summary judgment of no-infringement but would
at the same time clear the “plausibility” hurdle of the Supreme Court’s
decisions in Iqbal and Twombley.
In ruling on Hire’s motion, Judge Sabraw began with the
familiar adage that non-infringement, “requires a two-step analysis. ‘First,
the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must
be compared to the accused device or process.’” citing Terlep v. Brinkmann Corp., 418 F.3d 1379, 1381 (Fed. Cir.
2005). However, as is the modern trend
with design patents, the Court resisted entering a verbal claim construction,
stating that “the preferable course ordinarily will be for a district court not
to attempt to ‘construe’ a design patent claim by providing a detailed verbal
description of the claimed design.” quoting Egyptian
Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008). “Instead, the Court agree[d] with Plaintiff
that ‘the D461 Patent should be construed as the ornamental design for an
eyeglass component, as shown and described in Figures 1 through 6 of the
patent.”
With regard to non-infringement, Hire pointed to differences
the overall shape of the arms and nose bridge of the ‘461 Patent versus the
Sportsman glasses. Hire also asserted
that the Sportsman glasses have smooth arms while the arms on the ‘461 Patent
are ribbed. Hire also pointed to the
fact that the buttons on its glasses have a different shape and less
numerous.
Oakley acknowledged these differences between the ‘461
Patent and the Sportsman glasses, but argued that “when the products are viewed
as a whole, there is an ‘overwhelming similarity,” between it and the claimed
design, or at a minimum, a question of fact.”
The court agreed with Oakley’s assessment, citing Egyptian Goddess, and reasoning that “‘mere difference of lines in
the drawing or sketch ... or slight variances in configuration ... will not
destroy the substantial identity.’” Egyptian Goddess, 543 F.3d at 670
(quoting Gorham, 81 U.S. at 526-27).
Judge Sabraw’s decision stands as a reminder of the breadth of modern design patents. The Federal Circuit’s decision in Egyptian Goddess, jettisoning the point of novelty test, and warning against detailed verbal claim construction, has allowed design patent cases to proceed further in litigations than previously possible. Early dismissal and/or summary judgment remains an important tool in a defendant’s arsenal, but judges now seem less and less willing to dispose of design patent cases unless it is a clear case of non-infringement.
