OddzOn Products, Inc. v. Just Toys, Inc.

• Decision Date: 08 August 1997
• Docket Number: Nos. 96-1550,96-1551,s. 96-1550
• Citation: 122 F.3d 1396,43 USPQ2d 1641
• Parties: ODDZON PRODUCTS, INC., Plaintiff-Appellant, v. JUST TOYS, INC., Lisco, Inc. and Spalding & Evenflo Companies, Inc., Defendants/Cross-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1396

122 F.3d 1396

43 U.S.P.Q.2d 1641

ODDZON PRODUCTS, INC., Plaintiff-Appellant, v. JUST TOYS, INC., Lisco, Inc. and Spalding & Evenflo Companies, Inc., Defendants/Cross-Appellants.

Nos. 96-1550, 96-1551.

United States Court of Appeals Federal Circuit.

Aug. 8, 1997.

David A. Fanning, Kolisch, Hartwell, Dickinson, McCormack & Heuser, Portland, OR, argued for plaintiff-appellant. With him on the brief was Pierre C. Van Rysselberghe.

Peter P. Chen, Wilson, Sonsini, Goodrich & Rosati, P.C., Palo Alto, CA, argued for defendants/cross-appellants. With him on the brief were James C. Otteson and Colleen Bal.

Before MICHEL, LOURIE, and RADER, Circuit Judges.

LOURIE, Circuit Judge.

OddzOn Products, Inc. appeals from the decision of the United States District Court for the Northern District of California granting summary judgment in favor of defendants Just Toys, Inc., Lisco, Inc., and Spalding & Evenflo Companies, Inc. (collectively "Just Toys") on OddzOn's claims of design patent infringement, trade dress infringement, and state-law unfair competition. Just Toys cross-appeals from the decision granting summary judgment in favor of the patentee OddzOn on Just Toys' claim of patent invalidity. OddzOn Prods., Inc. v. Just Toys, Inc., No. 95-CV-1077 (N.D.Cal. July 29, 1996). Because OddzOn has failed to demonstrate that a reasonable jury could find that Just Toys' tossing balls infringe OddzOn's design patent or protectable trade dress, and, derivatively, that there was unfair competition, we affirm the district court's judgment in favor of the defendant Just Toys. Because no reasonable jury could conclude other than that the patented design is ornamental, novel, and nonobvious, we affirm the district court's judgment that the patent was not proved invalid.

BACKGROUND

OddzOn is a toy and sporting goods company that sells the popular "Vortex" tossing ball, a foam football-shaped ball with a tail and fin structure. The Vortex ball is OddzOn's commercial embodiment of its design patent, U.S. Patent D 346,001, which issued on April 12, 1994. Figure 1 of the patent is shown below:

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Fig. 1

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Just Toys, Inc., another toy and sporting goods company, sells a competing line of "Ultra Pass" balls. Two versions of the allegedly infringing Ultra Pass balls are shown below:

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OddzOn sued Just Toys for design patent infringement, trade dress infringement, and state-law unfair competition, asserting that the Ultra Pass line of tossing balls was likely to be confused with OddzOn's Vortex ball, and that the Ultra Pass packaging was likely to be confused with the Vortex packaging. Just Toys denied infringement and asserted that the patent was invalid. On cross-motions for summary judgment, the district court held that the patent was not shown to be invalid and was not infringed. The court also held that Just Toys did not infringe OddzOn's trade dress.

The district court determined that two confidential designs ^* that had been disclosed to the inventor qualified as subject matter encompassed within the meaning of 35 U.S.C. § 102(f) (1994) and concluded that these designs could be combined with other prior art designs for purposes of a challenge to the validity of the patent under 35 U.S.C. § 103 (1994). Nonetheless, the district court held that the patented design would not have been obvious in light of the prior art, including the two confidential designs. The court construed the single claim of the patent as being directed to the design for:

a ball shaped like a football, with a slender, straight tailshaft projecting from the rear of the football. In addition, the '001 Patent design has three fins symmetrically arranged around the tailshaft, each of which has a gentle curve up and outward which creates a fin with a larger surface area at the end furthest from the ball. The fins flare outwardly along the entire length of the tailshaft, with the front end of the fin extending slightly up along the side of the football so that the fins seemingly protrude from the inside of the football.

After construing the claim, the court held that the patented design was not dictated solely by function and thus that it was not invalid on that ground. It also held that OddzOn failed to present sufficient evidence to allow a reasonable jury to find infringement. The district court considered OddzOn's proffered consumer survey evidence of similarity, but held that it was not probative on the question whether the accused balls were substantially similar to the patented design in terms of its protectable features, i.e., its ornamental features. The district court concluded that the survey evidence demonstrated nothing more than that any ball with a tail and fins, regardless of its ornamental features, would appear to be similar to the patented design.

The court found that OddzOn's proffered testimony from an expert was also not probative of any similarity between the ornamental features of the accused balls and the patented design. It noted that the bases for the expert's conclusion of similarity were unclear and that the legal standards applied to reach that conclusion were not apparent. The court excluded evidence of "actual confusion," stating that there was no basis to determine that the mistaken return of twenty-one of the accused balls to OddzOn would not have been typical in the industry absent "confusion." Furthermore, it stated that there was no way of determining whether the ornamental features caused the "confusion."

The district court also held that the accused balls and their packaging did not violate OddzOn's protectable trade dress rights. Holding that OddzOn's evidence was not probative of consumer confusion regarding the source of the accused balls, the court granted Just Toys' motion for summary judgment. Because the court found no likelihood of confusion, it did not reach the issues of inherent distinctiveness or secondary meaning. Finally, determining that California's unfair competition law is "substantially congruent" to trademark infringement law, the question being whether there is a likelihood of confusion with regard to source, the court ruled that OddzOn's state-law claim must fall with its federal trade dress claims. OddzOn appeals and Just Toys cross-appeals the grant of the respective summary judgment motions.

DISCUSSION

We review a district court's grant of summary judgment 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). Thus, summary judgment may be granted when no "reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). In determining whether there is a genuine issue of material fact, the evidence must be viewed in a light most favorable to the party opposing the motion, with doubts resolved in favor of the opponent. Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274, 35 USPQ2d 1035, 1038 (Fed.Cir.1995).

A. The Prior Art Status of § 102(f) Subject Matter

The district court ruled that two confidential ball designs (the "disclosures") which "inspired" the inventor of the OddzOn design were prior art for purposes of determining obviousness under § 103. The district court noted that this court had recently declined to rule definitively on the relationship between § 102(f) and § 103, see Lamb-Weston, Inc. v. McCain Foods, Ltd., 78 F.3d 540, 544, 37 USPQ2d 1856, 1858-59 (Fed.Cir.1996), but relied on the fact that the United States Patent and Trademark Office (PTO) interprets prior art under § 103 as including disclosures encompassed within § 102(f). OddzOn challenges the court's determination that subject matter encompassed within § 102(f) is prior art for purposes of an obviousness inquiry under § 103. OddzOn asserts that because these disclosures are not known to the public, they do not possess the usual hallmark of prior art, which is that they provide actual or constructive public knowledge. OddzOn argues that while the two disclosures constitute patent-defeating subject matter under 35 U.S.C. § 102(f), they cannot be combined with "real" prior art to defeat patentability under a combination of § 102(f) and § 103.

The prior art status under § 103 of subject matter derived by an applicant for patent within the meaning of § 102(f) has never expressly been decided by this court. We now take the opportunity to settle the persistent question whether § 102(f) is a prior art provision for purposes of § 103. As will be discussed, although there is a basis to suggest that § 102(f) should not be considered as a prior art provision, we hold that a fair reading of § 103, as amended in 1984, leads to the conclusion that § 102(f) is a prior art provision for purposes of § 103.

Section 102(f) provides that a person shall be entitled to a patent unless "he did not himself invent the subject matter sought to be patented." This is a derivation provision, which provides that one may not obtain a patent on that which is obtained from someone else whose possession of the subject matter is inherently "prior." It does not pertain only to public knowledge, but also applies to private communications between the inventor and another which may never become public. Subsections (a), (b), (e), and (g), on the other hand, are clearly prior art provisions. They relate to knowledge manifested by acts that are essentially public. Subsections (a) and (b) relate to public knowledge or use, or prior patents and printed publications; subsection (e) relates to prior filed applications for patents of others which have become public by grant; and subsection (g)...