Infringement Analysis for Design Patents Requires Consideration of the Overall Design, Not Ornamental Features Alone
March 03, 2006
Judges: Mayer, Rader (author), Dyk
In Amini Innovation Corp. v. Anthony California, Inc., No. 05-1159 (Fed. Cir. Mar. 3, 2006), the Federal Circuit reversed the district court’s grant of SJ of noninfringement of copyrights and a design patent. Amini Innovation Corporation (“Amini”) began selling two collections of bedroom furniture in 2000 and 2001. Amini holds copyright registrations for the “carved ornamental woodwork” in various pieces in these collections, and owns a design patent for one of its bed frames. Amini’s competitor, Anthony California, Inc. (“Anthony”) sells two collections of bedroom furniture as well. In August 2003, after Anthony’s furniture went on sale, Amini informed Anthony of its belief that Anthony was infringing Amini’s copyrights and patent, and demanded that Anthony stop selling the accused products. Anthony disagreed.
Amini sued Anthony and its president James Chang for six counts of copyright infringement and one count of design patent infringement. The district court granted SJ of noninfringement on all counts. Amini appealed.
On appeal, the Federal Circuit reversed and remanded on all counts. Regarding the copyright infringement, the Court, applying Ninth Circuit law, held that the district court did not correctly apply the test for copying. Amini sought to prove copying by showing Anthony had access to the protected work before making its accused products, coupled with substantial similarity of the protected and accused designs. The Court held that the record was inconclusive as to whether Anthony had access to the protected designs. Therefore, a strong showing of substantial similarity was required to prove infringement. The Ninth Circuit test for substantial similarity involves two steps. First, for the “extrinsic test,” the elements of the protected and accused designs are compared. Second, for the “intrinsic test,” the fact-finder subjectively compares the overall concept and feel of the designs. The Court held that the district court erred in expanding the “extrinsic” part of the test by evaluating the overall concept and feel of the works. Moreover, the fact intensive question of the total concept and feel was improper on SJ. Noting a few of the unique features shared by the protected and accused designs, the Court held that a reasonable jury could conclude that some of the designs satisfy the required heightened showing of substantial similarity and, therefore, vacated SJ.
Regarding infringement of the design patent, the Federal Circuit again held that the district court did not correctly apply the test for infringement. First, the Court construed the claim to extend to the overall design of the bed frame, including both ornamental and functional features. The Court explained that infringement of a design patent occurs if the claimed and accused product designs are so similar as to deceive the ordinary observer, causing the observer to mistake one product for the other. This deception results from the similarity of the overall designs, not from the similarities in ornamental features alone. The Court held that the district court applied the ordinary observer test too narrowly by comparing each element in isolation, rather than looking at the similarity of the designs as a whole. The Court held that it cannot agree that no reasonable jury could find substantial similarity and, therefore, vacated SJ.
In addition, the Federal Circuit noted that Amini had not yet shown which features of its designs were novel. Therefore, the Courtinstructed Amini to introduce additional evidence on remand, such as the prosecution history and the relevant prior art references, to show points of novelty.