Federal Circuit “Closes the Door” on Accused Infringer of Door Design Patent
July 10, 2001
Last Month at the Federal Circuit - August 2001
Judges: Rader (author), Gajarsa, and Linn
In Door-Master Corp. v. Yorktowne, Inc., No. 00- 1526 (Fed. Cir. July 10, 2001), the Federal Circuit affirmed a district court’s ruling that Yorktowne, Inc. (“Yorktowne”) willfully infringed U.S. Patent No. Des. 338,718 (“the ‘718 design patent”) and denied Yorktowne’s motion for JMOL. The Federal Circuit also affirmed the district court’s denial of attorney fees to Door-Master Corporation (“Door- Master”).
The ‘718 design patent claims the ornamental design of an integrated door and frame shown in four figures. Cabinet doors are generally mounted on frames by either overlay mounting or inset mounting. With overlay-mounted cabinet doors, the door covers some or all of the frame’s surface. Inset-mounted cabinet doors are more difficult to align with the door frame, but have a more desirable appearance. The claimed design appears as an inset door and frame combination, and has a desirable look of an inset-mounted door without the difficulty of inset mounting.
At trial, Yorktowne asserted that the CRP-10 door, sold by Yorktowne, anticipated the ‘718 design patent. Cabinet dealers had inset mounted the CRP-10 door within a cabinet frame, so that when closed, it looked very similar to the integrated door and frame claimed in the ‘718 design patent. However, unlike the claimed design, hinges were visible on the CRP-10 door and frame. Furthermore, the rear view of the CRP-10 cabinet door did not correspond to the rear view claimed in the ‘718 design patent. The jury found that the ‘718 patent was not anticipated by the CRP-10 door and was willfully infringed by Yorktowne’s sales of a similar door, known as the “Richland” door.
On appeal, Yorktowne urged the Federal Circuit to construe the claims of the ‘718 design patent so that the rear features of the cabinet doors, shown in two of the four figures, are not part of the protected design. The Court refused, noting that the patentee specifically included the rear features in the claimed design. The Court continued its anticipation and infringement analysis by applying the “ordinary observer” test, in which a court must decide whether the accused product and a product covered by the design patent are so similar that an ordinary observer, paying as much attention as a purchaser typically does, would mistakenly buy one product, thinking it was the other.
Noting the visible hinges and the different rear design of the CRP-10 door, the Court ruled the claimed design was not anticipated. The Court also held that the Richland door infringed the claimed design because neither had visible hinges and both had very similar front and rear designs.
Addressing the district court’s denial of attorney fees in view of the jury’s finding of willful infringement, the Court held that the district court had not abused its discretion. Yorktowne had made an effort to investigate the ‘718 design patent, and the district court’s findings on this issue were not clearly erroneous and did not conflict with the jury’s findings.