Contessa Food Products, Inc. v. Conagra, Inc.

• Decision Date: 13 March 2002
• Docket Number: No. 01-1157.,01-1157.
• Citation: 282 F.3d 1370
• Parties: CONTESSA FOOD PRODUCTS, INC. (formerly known as ZB Industries, Inc.), Plaintiff-Appellee, v. CONAGRA, INC. (doing business as Singleton Shrimp Company and as Meridian Products), Meridian Seafood Products, Inc., and Ocean Duke Corporation, Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

282 F.3d 1370

CONTESSA FOOD PRODUCTS, INC. (formerly known as ZB Industries, Inc.), Plaintiff-Appellee, v. CONAGRA, INC. (doing business as Singleton Shrimp Company and as Meridian Products), Meridian Seafood Products, Inc., and Ocean Duke Corporation, Defendants-Appellants.

No. 01-1157.

United States Court of Appeals, Federal Circuit.

DECIDED: March 13, 2002.

COPYRIGHT MATERIAL OMITTED

William J. O'Brien, O'Melveny & Myers LLP, of Los Angeles, CA, argued for plaintiff-appellee. With him on the brief was Jason D. Linder.

Martin J. Trupiano, Sanders & Dempsey, L.L.P., of Los Angeles, CA, argued for defendants-appellants. With him on the brief was Les J. Weinstein.

Before CLEVENGER, SCHALL, and LINN, Circuit Judges.

LINN, Circuit Judge.

Conagra, Inc., Meridian Seafood Products, Inc., and Ocean Duke Corporation (collectively, "Conagra") appeal the district court's decision granting Contessa Food Products, Inc. ("Contessa")'s motion for partial summary judgment of infringement of Contessa's design patent of a serving tray with shrimp. Because the district court improperly applied the "ordinary observer" test by limiting its analysis of infringement to the time of sale and not fully considering the underside of the tray illustrated in Figure 4 of the '612 patent, we vacate and remand for further proceedings.

BACKGROUND

Contessa (previously known as ZB Industries, Inc.) is the assignee of U.S. Design Patent No. 404,612 ("the '612 patent") entitled "Serving Tray with Shrimp." Contessa's original application for its design of a serving tray with shrimp was submitted on September 18, 1996. Following a restriction requirement, Contessa filed a divisional application that matured into the '612 patent, issued January 26, 1999. The single claim of the '612 patent recites, "I claim the ornamental design for a serving tray with shrimp, as shown and described."

Figures 1-3 of the '612 patent illustrate top, side, and perspective views of a circular serving tray with a circular receptacle in the center for cocktail sauce. On the tray are arranged two layers, or rows, of shrimp positioned so that each shrimp head is nearer the center, each tail is nearer the outer edge, the shrimp are lying "nested" on their sides, and the tails of the upper layer of shrimp overlap and rest upon the heads of the lower layer. The side view (Figure 3) shows that the profile of the arrangement of shrimp slopes upward toward the center of the tray, forming a "mound" of shrimp. Figures 1-3 are reproduced below.

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Figure 4 shows a bottom view of the design. No shrimp are visible from the bottom view. Figure 5 shows a cross-sectional view taken along line 5-5 of Figure 3, including a solid outline of the shrimp "mound" with cross-hatching depicting the placement of the shrimp on the partially inclined, partially stepped floor of the tray. Figures 4 and 5 are reproduced below.

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Conagra and Contessa are competing sellers of "shrimp party platters" of the type shown in the '612 patent. After Contessa's serving trays with shrimp went on sale, Conagra developed a line of serving trays with shrimp, and during development it examined Contessa products. The resulting serving trays with shrimp were sold by Conagra in the United States. Conagra obtained at least some of the accused products from Ocean Duke, which imported the serving trays with shrimp from Thailand. Photographs of some of the accused products, submitted as exhibits on summary judgment and admittedly of poor quality, are reproduced below.

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Contessa sued Conagra in the U.S. District Court for the Central District of California for infringement of the '612 patent. Following settlement discussions, the parties filed cross motions for summary judgment on the issue of infringement. The district court held a hearing on March 8, 2000, and issued its decision on April 20, 2000, granting Contessa's motion for summary judgment of infringement and denying Conagra's motion for summary judgment of noninfringement.

The district court construed the 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 design patent infringement, the court determined that an ordinary purchaser would find that the accused products were "substantially similar" to the '612 design and appropriated the "point of novelty" of the '612 patent including "the annularly arranged, overlapping shrimp, which form a mound that slopes downward from the central cup area toward the outer rim of the tray." In determining the point of novelty of the '612 patent, the district court examined several pieces of prior art and determined that the "overlapping to form a mound" feature was not found in the prior art.

The parties stipulated to entry of a Final Judgment on November 22, 2000. In the stipulation, Conagra waived any defense other than noninfringement. The stipulation also set damages at $400,000 (including attorney fees, costs and interest), but agreed to stay any award "until twenty (20) days after the earlier of (a) the issuance of mandate from an appellate court, (b) the dismissal of any appeal, or (c) the time at which no further appeal can be taken therefrom."

Conagra appeals pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

This court reviews the grant of summary judgment by the district court de novo. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994). Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). On summary judgment, the question is not the "weight" of the evidence, but instead the presence of a genuine issue of material fact concerning infringement. Avia Group Int'l, Inc. v. L.A. Gear Calif., Inc., 853 F.2d 1557, 1565, 7 USPQ2d 1548, 1555 (Fed.Cir.1988).

Determining whether a design patent is infringed requires (1) construction of the patent claim, and (2) comparison of the construed claim to the accused product. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577, 36 USPQ2d 1417, 1420 (Fed.Cir.1995). In construing a design patent claim, the scope of the claimed design encompasses "its visual appearance as a whole," and in particular "the visual impression it creates." See Durling v. Spectrum Furniture Co., 101 F.3d 100, 104-05, 40 USPQ2d 1788, 1791 (Fed.Cir.1996). In assessing infringement, the patented and accused designs do not have to be identical in order for design patent infringement to be found. Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820, 24 USPQ2d 1121, 1125 (Fed.Cir.1992). What is controlling is the appearance of the design as a whole in comparison to the accused product. OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405, 43 USPQ2d 1641, 1647 (Fed.Cir.1997).

Comparison to the accused product includes two distinct tests, both of which must be satisfied in order to find infringement: (a) the "ordinary observer" test, and (b) the "point of novelty" test. See Unidynamics Corp. v. Automatic Prods. Int'l, Ltd., 157 F.3d 1311, 1323, 48 USPQ2d 1099, 1107 (Fed.Cir.1998). The "ordinary observer" test requires that the district court perform the inquiry set forth in Gorham Co. v. White:

if, 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.

81 U.S. (14 Wall.) 511, 528, 20 L.Ed. 731 (1871). The "point of novelty" test is distinct from the "ordinary observer" test and requires proof that the accused design appropriates the novelty which distinguishes the patented design from the prior art. Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444, 221 USPQ 97, 109 (Fed. Cir.1984). Although application of the "ordinary observer" and "point of novelty" tests may sometimes lead to the same result, see Shelcore, Inc. v. Durham Indus., Inc., 745 F.2d 621, 628 n. 16, 223 USPQ 584, 590 n. 17 (Fed.Cir.1984), it is legal error to merge the two tests, for example by relying on the claimed overall design as the point of novelty. See Sun Hill Indus., Inc. v. Easter Unlimited, Inc., 48 F.3d 1193, 1197, 33 USPQ2d 1925, 1928 (Fed.Cir.1995); Winner Int'l Corp. v. Wolo Mfg. Corp., 905 F.2d 375, 376, 15 USPQ2d 1076, 1077 (Fed.Cir.1990) ("To consider the overall appearance of a design without regard to prior art would eviscerate the purpose of the `point of novelty' approach, which is to focus on those aspects of a design which render the design different from prior art designs.").

I. Claim Construction

The district court construed the sole claim of the '612 patent to mean "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." In its opinion, the district court considered and described each of the Figures in the '612 patent, and based its claim construction on the ornamental features illustrated by all of the Figures, including the arrangement of the shrimp depicted in Figures 1-3 and the shape and appearance of the tray depicted in Figures 4 and 5. In doing so, the district court properly construed the scope of the claimed invention to be its "overall ornamental visual impression, rather than ... the broader general design concept." OddzOn, 122 F.3d at 1405, 43 USPQ2d at 1647. We find no error in the district court's claim construction.

II. "Ordinary Observer" Test

Summarizing its application of the "ordinary observer" test, the district court held that "any reasonable fact finder would conclude that...