Braun Inc. v. Dynamics Corp. of America

• Decision Date: 08 September 1992
• Docket Number: 91-1363,Nos. 91-1329,s. 91-1329
• Citation: 975 F.2d 815,24 USPQ2d 1121
• Parties: , 24 U.S.P.Q.2d 1121 BRAUN INC. and Braun Aktiengesellschaft, Plaintiffs/Cross-Appellants, v. DYNAMICS CORPORATION OF AMERICA, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 815

975 F.2d 815

61 USLW 2204, 24 U.S.P.Q.2d 1121

BRAUN INC. and Braun Aktiengesellschaft, Plaintiffs/Cross-Appellants, v. DYNAMICS CORPORATION OF AMERICA, Defendant-Appellant.

Nos. 91-1329, 91-1363.

United States Court of Appeals, Federal Circuit.

Sept. 8, 1992.

Suggestion for Rehearing

In Banc Declined Oct. 7, 1992.

Steven E. Lipman, Fish & Richardson, Washington, D.C., argued for plaintiffs/cross-appellants. With him on the brief was Heidi E. Harvey, Fish & Richardson, of Boston, Mass.

Harry C. Marcus, Morgan & Finnegan, New York City, argued for defendant-appellant. With him on the brief were Thomas P. Dowling and Mark J. Abate, of counsel.

Before: RICH and PLAGER, Circuit Judges, and COHN, District Judge. ^*

COHN, District Judge.

I. Introduction

This is, among other things, a design patent infringement case. Plaintiffs/cross-appellants, Braun, Inc., and Braun Aktiengesellschaft (Braun), are the owners of U.S. design patent No. 271,176, which relates to a hand held electric blender. Defendant-appellant, Dynamics Corporation of America's Waring Products Division (Waring), manufactures a competing hand held electric blender. On February 1, 1988, Braun sued Waring in the United States District Court for the District of Connecticut, alleging: (1) design patent infringement, 35 U.S.C. § 271, (2) false designation of origin, including trade dress infringement, pursuant to section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and (3) unfair competition and passing off under Connecticut common law and statutory law.

In December 1990, the case was tried before a jury. At the close of evidence the district court directed a verdict against Waring's defense that Braun committed inequitable conduct before the United States Patent and Trademark Office (PTO). The district court reasoned there was insufficient evidence of intent to deceive the PTO to go to the jury. On December 19, 1990, the jury found that: (1) Braun's design patent was valid, (2) Waring willfully infringed Braun's design patent, ¹ (3) Waring infringed Braun's trade dress in the design of its blender, and (4) Waring infringed Braun's trade dress in the packaging of its blender, (5) Waring "passed off" its blender as Braun's blender, and (6) Waring's total profit from the sale of its blender was $737,948. ²

On April 26, 1991, the district court: (1) denied Waring's motions for judgment notwithstanding the verdict (JNOV) or for a new trial, Fed.R.Civ.P. 50(b), ³ (2) awarded Braun three times Waring's total profit on the grounds that Waring willfully infringed Braun's design patent, pursuant to 35 U.S.C. § 284, and (3) denied Braun's motion for attorney fees and costs.

Now Waring and Braun appeal. Waring says: (1) the jury's verdict as to design patent infringement must be reversed as it is unsupported by substantial evidence, (2) the jury's verdict as to the willfulness of Waring's infringement must be reversed as it is unsupported by substantial evidence, (3) the district court erred in trebling Waring's profits, (4) the district court erred by directing a verdict as to Waring's affirmative defense of inequitable conduct, (5) the jury's verdict that Waring infringed Braun's trade dress in the design of its blender must be reversed as it is unsupported by substantial evidence, (6) the jury's verdict that Waring infringed Braun's trade dress in the packaging of its blender must be reversed as it is unsupported by substantial evidence, and (7) the jury's verdict that Waring passed off its blender as Braun's blender must be reversed as it is unsupported by substantial evidence. In its appeal, Braun says the district court erred in denying it attorney fees.

For the reasons which follow, we AFFIRM in part and REVERSE in part the judgment of the district court. In particular, we: (1) AFFIRM the jury's verdict as to design patent infringement, (2) REVERSE the jury's verdict as to the willfulness of Waring's design patent infringement, (3) REVERSE the district court's trebling of Waring's total profits, (4) AFFIRM the district court's directed verdict as to Braun's alleged inequitable conduct, (5) REVERSE the jury's verdict as to both trade dress infringement of blender design and packaging and REMAND as to blender design, (6) REVERSE and REMAND in part the jury's verdict as to passing off, and (7) AFFIRM the district court's denial of attorney fees. ⁴ In so holding, we have looked to essentially three separate sources of law. In deciding the question of design patent infringement, and all related issues, we have applied case law of the Court of Appeals for the Federal Circuit, which has exclusive jurisdiction over patent appeals. 28 U.S.C. § 1295. In deciding the claims involving trade mark and trade dress infringement brought under section 43(a) of the Lanham Act, we have looked to the case law of the Court of Appeals for the Second Circuit, which is where this case was tried. See Bandag, Inc. v. Al Bolser's Tire Stores, 750 F.2d 903, 909 (Fed.Cir.1984) (in reviewing pendent trademark claims, the Federal Circuit applies the law of the circuit in which the case was tried). ⁵ Lastly, because this case was tried in Connecticut and Waring's principal place of business is in Connecticut, we have applied Connecticut law in deciding Braun's state law claims of "passing off."

II. Design Patent Infringement

A.

The issue of patent infringement is one of fact to be proven by a preponderance of the evidence. Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 1282 (Fed.Cir.1986). "[W]e review the sufficiency of the evidence underlying a jury verdict on an issue of fact to determine whether the jury's decision was supported by substantial evidence." Jurgens v. McKasy, 927 F.2d 1552, 1557 (Fed.Cir.1991) (citing Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 (Fed.Cir.1989)). Thus, the jury's finding of infringement must be upheld if it is supported by substantial evidence. ⁶

B.

In determining questions of infringement, the district court must instruct the jury to follow the standard articulated in Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528, 20 L.Ed. 731 (1872):

[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. ⁷

Lund Industries, Inc. v. Go Industries, Inc., 938 F.2d 1273, 1276 (Fed.Cir.1991). In evaluating a claim of design patent infringement, a trier of fact must consider the ornamental aspects of the design as a whole and not merely isolated portions of the patented design. In re Salmon, 705 F.2d 1579, 1582 (Fed.Cir.1983) (a "design is a unitary thing and all its portions are material"). Also, patent infringement can be found for a design that is not identical to the patented design. Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1190 (Fed.Cir.1988). Design patent infringement does not concern itself with the broad issue of consumer behavior in the marketplace. See Unette Corp. v. Unit Pack Co. Inc., 785 F.2d 1026, 1029 (Fed.Cir.1986) (likelihood of purchasers' confusion as to the source of goods is not a necessary factor for determining design patent infringement; the holder of a valid design patent need not have progressed to the manufacture and distribution of a "purchasable" product).

C.

Applying these standards, there is clearly substantial evidence to support the jury's finding of infringement. In arguing that the jury erroneously determined that it infringed Braun's design patent, Waring relies on certain differences between its design and Braun's design. However, examination of Braun's and Waring's respective designs, in addition to the blenders themselves, tells us a jury could reasonably find they are, when viewed as a whole and compared to pre-existing hand held blenders, similar. ⁸ For instance, in contrast to pre-existing hand held blenders, which had a utilitarian, mechanical appearance, both Waring's blender and Braun's blender share a fluid, ornamental, aerodynamic overall design. The shafts of both blenders are encased in a housing that gradually tapers away from the motor housing. The top portion of each blender, when viewed from the front, is tapered at the top to integrate the handle into the motor housing. The shaft housing of each blender gradually expands to form a blade housing, which is punctured by four elongated, essentially rectangular ports.

The jury could also reasonably find that the only readily noticeable difference between Braun's blender and Waring's blender is that the former has a handgrip indentation while the latter does not. However, at trial, Braun's former product manager, Alex Campbell, testified consumers typically purchase hand held electric buyers on an "impulse" ⁹ and as a result they may not differentiate Waring and Braun's designs, despite this and other dissimilarities. Thus, Waring has not convinced us that the jury's finding of infringement was not supported by substantial evidence. In light of evidence of record, the jury could have reasonably concluded that Waring's blender meets the Gorham test of similarity in ornamental appearance such that an ordinary observer would be likely to purchase one blender thinking it was the other. Thus, under these circumstances, where no exception was taken to the jury instructions as to the issue of design patent infringement ¹⁰ and there was substantial evidence offered to permit a finding of infringement, we must defer to the jury's verdict that Waring infringed Braun's design patent. Sanders v. Parker Drilling Co., 911 F.2d 191, 194 (9th Cir.1990) (jury's verdict must stand, when there is sufficient evidence before the jury on particular issue, and if instructions of law were correct); United States v. White, 932 F.2d 588, 590 (6th Cir.1991) (a "verdict rendered by a...