Design patents infringement cases tend to be particularly amenable to motions for judgment on the pleadings pursuant to Rule 12(c) of the Federal Rules of Civil Procedure. Where no material facts are disputed, there may be situations where a claimed design and accused design are sufficiently distinct that it would be clear from the complaint, answer and accompanying exhibits that the patentee would not be able to meet its burden of proving the two designs would be "substantially the same" to an ordinary observer. In those cases, judges are entitled to enter judgment as a matter of law disposing of the case without the burden or expense of discovery, experts or a jury trial. But the fact that judges are capable of rendering judgment on the pleadings early in the case does not imply that they frequently do so. Nor does it imply that motions for judgment on the pleadings in design patent cases are necessarily meritorious. It is worth examining recent cases in which Rule 12(c) motions have been raised to consider just how likely these motions are to be brought in clear cases and whether judges are willing to cut clear cases off at the knees.
Over roughly the past four years, we have identified design patent infringement cases that have reached a decision on motions for judgment on the pleadings. Two of the motions were granted, and two were denied. The decisions reveal an interesting spectrum in terms of both the motions and the decisions reached.
At one clear end of the spectrum is Anderson v. Kimberly-Clark Corporation, brought in 2012 in the Western District of Washington and dismissed on a judgment on the pleadings on September 25, 2013. Muffin Faye Anderson was the owner of a design patent directed to an absorbent disposable undergarment as shown above and to the left. She asserted her patent against a number of products produced by Kimberly-Clark, including the adult diapers shown above and to the right. The district court granted Kimberly-Clark's motion for judgment on the pleadings based on a side-by-side comparison of the products, which it concluded were plainly dissimilar. Indeed, the only similarity between the products identified by the Court was that they were both disposable barriers to protect the wearer from incontinence, which was a purely functional consideration with no weight in a design patent infringement analysis.
The remaining cases tend to present closer questions. In a 2014 decision in Poly-America, L.P. v. API Industries, Inc., Judge Robinson in the District of Delaware denied a motion for judgment on the pleadings upon a finding that the claimed design for a six-sided box, shown above to and to the left, was not plainly dissimilar to the accused product box shown above and to the right. API had attempted to highlight three differences between its product and the claimed design, including: (a) the accused design had an opening that extends beyond the front panel of the box to the side panel; (b) the accused design had no top flaps with no tabs and no slots; and (c) the accused design had bottom flaps rather than a solid bottom. API further supported its argument with evidence of prior art boxes having similar perforated openings, as proof that an ordinary observer with knowledge of the prior art would view the claimed and accused designs as plainly different. Judge Robinson found these arguments unavailing. Given the same general appearance of the claimed box and the accused product, the court could not find as a matter of law that the designs were plainly dissimilar.
Judge Bumb in the District of New Jersey reached a similar conclusion in the case of C&A Marketing, Inc. v. GoPro, Inc., in 2016. There, GoPro moved for judgment on the pleadings on the basis that its mountable camera, shown above and to the right, was plainly dissimilar to C&A's camera, shown above and to the left, marketed as the Polaroid Cube. GoPro called attention to a number of differences between the claimed and accused designs, highlighted in various colors, above. But the court held that “unless it is so obvious on the face of the pleadings that there is no infringement, this court should have the benefit of an evidentiary record which includes an actual inspection of the devices at issue.” The court also was cognizant of the fact that C&A had alleged actual confusion by consumers, who, of course, were ordinary observers.
Young v. Stone presents a more interesting decision. That action was filed in the U.S. District Court for the Northern District of Illinois in 2013, and was dismissed pursuant to Rule 12(c) on August 28, 2014. The case concerned Roger Young's patented design for a golf putting practice simulator, and the defendant's accused putting simulator, as shown above. The court performed an extensive claim construction that identified a number of functional elements, including the spaced upper and lower disks designed to trap a golf ball, but held that the flag pole was ornamental. The court keyed in on several relatively minor differences between the accused product and the patented product, such as the fact that claimed design used a raised washer to trap the ball, while the accused design relied on a sloped lower disk. These differences, among others were "so plainly dissimilar that [Stone was] entitled to judgment as a matter of law."
While the sample size is small, some trends from these cases tend to stand out. Young and Anderson, the two cases in which judgment on the pleadings was granted, involve individual rather than corporate patent owners. Indeed, Anderson was a pro se plaintiff. The outcomes of those cases, and at least in Anderson the question of whether the case should have been brought in the first place, may suggest the value of sophisticated design patent counsel. Also, while these cases tend to demonstrate an expected reticence from judges at the early stages of the case, Young is at least some evidence that it can be worthwhile for defendants to take a risk at getting a quick resolution. The right judge, and possibly even the right subject matter, may be all that is required to turn a close case into a clear victory.
Rule 12(c) motions remain a powerful, even if underused tool for design patent defendants. It will be interesting to see if, in view of recent shifts in that law that affect the damages recoverable by design patent plaintiffs, we will be more likely to see prompt decisions in these cases, or less.
This post was written by Keith F. Noe, a partner at Lando & Anastasi. Support was provided by Eric P. Carnevale
