Infringement of Design Patent Must Consider Claimed Ornamental Features of All Figures
March 13, 2002
Last Month at the Federal Circuit - April 2002
Judges: Linn (author), Clevenger, and Schall
In Contessa Food Products, Inc. v. Conagra, Inc., No. 01-1157 (Fed. Cir. Mar. 13, 2002), the Federal Circuit vacated and remanded a district court’s grant of Contessa Food Products, Inc.’s (“Contessa”) motion for partial SJ of infringement of Contessa’s design patent for a serving tray with shrimp.
Contessa is the assignee of U.S. Design Patent No. 404,612 (“the ‘612 patent”) entitled “Serving Tray with Shrimp.” The ‘612 patent contains five figures that depict the tray with an arrangement of shrimp, although no shrimp are visible in Figure 4, which shows a bottom view of the tray. The tray is circular with a circular receptacle in the center for cocktail sauce. Two layers of shrimp are arranged such that the head of each shrimp is nearer the center of the tray and the tail of each shrimp is nearer the outer edge. The tails of the shrimp in the layer of shrimp nearer the center of the tray lie upon the heads of the shrimp in the outer layer of shrimp.
Contessa sued Conagra, Inc. (“Conagra”) for infringement of the ‘612 patent and moved for SJ. The district court construed the single claim of the ‘612 patent to include “a tray of a certain design, as shown in Figures 4-5, containing shrimp arranged in a particular fashion, as shown in Figures 1-3.” Applying the two-part test for infringement of a design patent, the district court found that an ordinary purchaser would find the accused products “substantially similar” to the claimed design in the ‘612 patent and that the accused products appropriated the “point of novelty” of the ‘612 patent design.
The Federal Circuit observed that this appeal involved two distinct questions relevant to the “ordinary observer” analysis: (1) whether the district court was required to consider the ornamental features illustrated in all of the drawings of the design patent, and (2) whether the district court properly limited its analysis to those features visible at the point of sale, rather than those features visible at any time in the “normal use” lifetime of the accused product.
First, the Federal Circuit determined that the district court was required to consider the ornamental features illustrated in all of the drawings of the design patent. The Court held that all of the ornamental features illustrated in the figures must be considered in evaluating design-patent infringement because a patented design is defined by the drawings in the patent, not just by one feature of the claimed design. Here, the Federal Circuit found that the district court did not consider the features illustrated in Figure 4, which shows a bottom view of the tray. The omission of any consideration of the features illustrated in Figure 4 was held to be erroneous.
Second, the Federal Circuit determined that the district court had improperly limited its analysis to those features visible at the point of sale. The Federal Circuit emphasized that a design-patent article’s life, beginning after completion of manufacture or assembly and ending with the ultimate destruction, loss, or disappearance of the article. The Federal Circuit determined that the district court had failed to consider ornamental features of the bottom of the tray, which are not normally visible at the point of purchase but which are fully revealed when the packaging is removed and are thereafter visible to the consumer during use of the accused product.
Thus, the district court’s failure to properly consider the ornamental features shown in all of the figures, and the ornamental features of the accused product visible during normal use of the product, provided the basis for the Federal Circuit to vacate the district court’s SJ of infringement.