Arminak and Associates v. Saint-Gobain Calmar

• Citation: 501 F.3d 1314
• Decision Date: 12 September 2007
• Docket Number: No. 2006-1561.,2006-1561.
• Parties: ARMINAK AND ASSOCIATES, INC. and Helga Arminak, Plaintiffs/Counterclaim Defendants-Appellees, and Armin Arminak, Counterclaim Defendant-Appellee, v. SAINT-GOBAIN CALMAR, INC. (now known as MeadWestvaco Calmar, Inc.), Defendant/Counterclaimant-Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

501 F.3d 1314

ARMINAK AND ASSOCIATES, INC. and Helga Arminak, Plaintiffs/Counterclaim Defendants-Appellees, and Armin Arminak, Counterclaim Defendant-Appellee, v. SAINT-GOBAIN CALMAR, INC. (now known as MeadWestvaco Calmar, Inc.), Defendant/Counterclaimant-Appellant.

No. 2006-1561.

United States Court of Appeals, Federal Circuit.

September 12, 2007.

Daniel C. DeCarlo, Lewis Brisbois Bisgaard & Smith, of Los Angeles, CA, argued for the plaintiffs/counterclaim defendants-appellees and counterclaim defendant-appellee. With him on the brief were William C. Steffin and Isamu H. Lee. Of counsel was David N. Makous.

Roger D. Taylor, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Atlanta, GA, argued for defendant/counterclaimant-appellant. With him on the brief were Michael J. McCabe, II and Robert C. Stanley. On the principal brief were M. Kelly Tillery, Charles S. Marion, and Keith Lee, Pepper Hamilton LLP, of Philadelphia, PA.

Before MICHEL, Chief Judge, GAJARSA, Circuit Judge, and HOLDERMAN,^* Chief District Judge.

HOLDERMAN, Chief District Judge.

Appellant Saint-Gobain Calmar, Inc. ("Calmar") appeals from the district court's order granting summary judgment in favor of Arminak & Associates, Inc. ("Arminak"), finding that the design of Arminak's "AA Trigger" shroud did not infringe Calmar's two design patents, U.S. Patents Nos. Des. 381,581 ("the '581 patent") and Des. 377,602 ("the '602 patent"). Arminak & Assoc., Inc. v. Saint-Gobain Calmar, Inc., 424 F.Supp.2d 1188 (C.D.Cal.2006). We affirm.

I. Background

Calmar and Arminak are both in the business of selling trigger sprayers to producers of liquid household products. A trigger sprayer is a device that is attached atop the cap of a bottle containing liquid, with a tube extending from the trigger sprayer device into the liquid. When the trigger of the sprayer device is manually pulled back, liquid is drawn up the tube into the sprayer device and is dispersed as a spray or mist out of the device's nozzle. The outside cover of the top portion of the sprayer device behind the nozzle and above the trigger mechanism is called the shroud, which is typically made of a molded plastic design.

In 1997, the U.S. Patent and Trademark Office ("PTO") granted Calmar two design patents—the '581 and '602 patents—on two trigger sprayer shroud designs. Calmar thereafter produced a commercial embodiment of the '581 patent called the "ERGO" shroud. No commercial embodiment of the shroud design set forth in the '602 patent has been produced.

In 2004, Arminak began selling its "AA Trigger" sprayer with the accused shroud design. In October 2004, Calmar informed one of Arminak's customers that Calmar believed the shroud design of Arminak's AA Trigger sprayer infringed Calmar's '581 and '602 design patents. On November 16, 2004, Arminak filed a declaratory judgment action against Calmar in the United States District Court for the Central District of California seeking a declaratory judgment of noninfringement. Calmar counterclaimed, alleging infringement of its '581 and '602 design patents. Arminak filed an amended complaint adding allegations of patent invalidity and certain state law claims against Calmar. After a period of pretrial discovery, Arminak moved for summary judgment on its declaratory judgment claim, asserting that Arminak's AA Trigger shroud's design does not infringe Calmar's patents. On March 20, 2006, the district court in a detailed opinion determined that the shroud of Arminak's AA Trigger does not infringe Calmar's '581 and '602 design patents. Arminak, 424 F.Supp.2d at 1189-90. On May 9, 2006, the district court dismissed Calmar's patent infringement counterclaims, stayed the litigation as to Arminak's patent invalidity and state law claims, and entered judgment in Arminak's favor pursuant to Federal Rule of Civil Procedure 54(b).

In granting Arminak's motion for summary judgment of noninfringement on Arminak's declaratory judgment claim and dismissing Calmar's counterclaims, the district court initially construed the claims of Calmar's '581 and '602 design patents. The district court then found that the ordinary observer of the trigger sprayer shroud designs in question was not the retail consumer or purchaser of retail products sold in containers with trigger sprayer devices, but the buyer of trigger sprayers for a contract filler or an industrial purchaser up the stream of commerce from the retail purchaser. The district court further found that the ordinary observer of trigger sprayers would not be deceived by the similarities between Arminak's AA Trigger shroud's design and Calmar's patented shroud designs. Additionally, the district court found that the similarities between Arminak's AA Trigger shroud and the design of Calmar's patented shrouds do not stem from Calmar's two asserted points of design novelty over the prior art in the sprayer shroud field.

II. Jurisdiction and Standard of Review

The district court's subject matter jurisdiction over Arminak's declaratory judgment action for patent noninfringement was granted by 28 U.S.C. § 1338(a). We have jurisdiction over Calmar's appeal of the district court's partial summary judgment pursuant to 28 U.S.C. § 1292(c)(2) and § 1295(a)(1).

We review a grant of summary judgment de novo, reviewing the record and drawing all reasonable inferences in the nonmovant's favor to determine whether there is a genuine issue as to any material fact. Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1353 (Fed.Cir.1998).

III. Calmar's Contentions of Error

Calmar asserts four primary bases for its appeal: (1) the district court erred by construing the claims of Calmar's patents too narrowly; (2) the district court erred in its identification of the industrial buyer, not the retail consumer, as the ordinary observer; (3) the district court erred in holding that no reasonable jury could find that the ordinary observer would be deceived by the similarities of the trigger sprayers' shroud designs in question; (4) the district court erred in holding that no reasonable jury could find the points of novelty of the patented designs to be present in Arminak's AA Trigger shroud's design. Each of Calmar's arguments supporting its contentions of error is discussed below, after a brief overview of the law governing design patents.

IV. Overview of Design Patent Law

"A design patent protects the nonfunctional aspects of an ornamental design as shown in the patent." Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed.Cir.1995) (citing KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed.Cir.1993)). The chief limitation on the patentability of designs is that they must be primarily ornamental in character. If the design is dictated by performance of the article, then it is judged to be functional and ineligible for design patent protection. Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563, 1566 (Fed.Cir.1996).

The elements of design patent infringement are set forth at 35 U.S.C. § 289:

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction over the parties.

35 U.S.C. § 289 (emphases added). Accordingly, a design patent is infringed by the "unauthorized manufacture, use, or sale of the article embodying the patented design or any colorable imitation thereof." Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1116-17 (Fed.Cir.1998).

Similar to the infringement analysis of a utility patent, infringement of a design patent is evaluated in a two-step process. First, the court must construe the claims of the design patent to determine their meaning and scope. OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404-05 (Fed.Cir.1997). Design patents typically are claimed as shown in drawings. Claim construction by a court is adapted accordingly. Goodyear, 162 F.3d at 1116. The scope of the claim of a patented design "encompasses `its visual appearance as a whole,' and in particular `the visual impression it creates.'" Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1376 (Fed.Cir.2002) (quoting Durling v. Spectrum Furniture Co., 101 F.3d 100, 104-05 (Fed.Cir.1996)).

Second, after construction of the patent's claims, the court is to compare the construed claims to the accused design. Elmer, 67 F.3d at 1577. Infringement of a design patent occurs if "the designs have the same general visual appearance, such that it is likely that the purchaser [(or the ordinary observer)] would be deceived into confusing the design of the accused article with the patented design." Goodyear, 162 F.3d at 1118. The patented and accused designs do not have to be identical in order for design patent infringement to be found. Contessa, 282 F.3d at 1376. In determining infringement of a design patent, the court "is not limited to the ornamental features of a subset of the drawings, but instead must encompass the claimed ornamental features of all figures of a design patent." Id. at 1379 (emphasis added).

The comparison of the patented and accused designs involves two separate tests, both of which must be satisfied to find infringement: the "ordinary observer" test and the "point of novelty" test. Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1383 (Fed.Cir. 2004). The "ordinary observer" test was first enunciated by the United States Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S.(14 Wall.) 511, 20 L.Ed. 731 (1871), which held that:

[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually...