Voltstar Techs., Inc. v. Amazon.Com, Inc.
| Decision Date | 28 July 2014 |
| Docket Number | No. 13 C 5570,13 C 5570 |
| Court | U.S. District Court — Northern District of Illinois |
| Parties | VOLTSTAR TECHNOLOGIES, INC. f/k/a HORIZON TECHNOLOGIES, INC., Plaintiff, v. AMAZON.COM, INC., Defendant. |
MEMORANDUM OPINION AND ORDER
Plaintiff Voltstar Technologies, Inc., formerly known as Horizon Technologies, Inc., ("Voltstar") sued Amazon.com, Inc. ("Amazon") for patent infringement of United States Design Patent No. D587,192, entitled "Electrical Charger." The parties have filed cross-motions for summary judgment pursuant to Fed. R. Civ. P. 56. For the reasons set forth herein, the Court denies Plaintiff's motion and grants Defendant's motion.
Unless otherwise noted, the following facts are undisputed. Voltstar is an Illinois corporation that manufactures wall plug accessory products used to charge devices made by other manufacturers, including the Mini Charger, which is sold on Amazon.com and can be used to charge Amazon products. Def.'s LR 56.1(a)(3) Stmt. ¶¶ 1-4. Amazon is a Delaware corporation with a principal place of business in Seattle, Washington. Id. ¶ 7. Amazon is known for its e-readers, sold under the Kindle brand, and also sells a charging accessory that can be used with its e-readers. Id. ¶¶ 8-9.
Voltstar filed for a design patent for the Mini Charger on November 27, 2007, which was issued on February 24, 2009. Id. ¶ 11. The patent claims a single embodiment shown in the following figures:
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The accused charger was designed by Amazon in spring of 2008 and released to the public in March 2009. It is subject to its own design patent, U.S. Design Patent No. D611,409. Id. ¶¶ 17-18. The patent claims a single embodiment shown in the following figures:
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Dkt. 27, Ex. B.
Both the Voltstar and the Amazon patent are presented as computer-aided design ("CAD") drawings. Pl. LR 56(b)(3) Stmt. ¶¶ 27, 33. In the design community, CAD is thought to be the most accurate way of communicating a design. Id. ¶ 39. A CAD line represents a change in the surface being drawn, but does not represent a break in that surface. Id. ¶ 31. Additionally, design patents do not have noted dimensions, allowing them to be enlarged or reduced in most manners so long as the proportional relationships do not change. Id. ¶ 36. All features depicted in the design patent drawings are ornamental in nature, except for the two blades used to power the chargers by plugging them into a power source and the USB port used to charge an electronic device located on the other side. Id. ¶ 22. The USB ports themselves are functional; however, their location is ornamental so long as the product can be used as intended. Id. ¶ 23.
Though there are thirty-six references cited between Voltstar's and Amazon's patents, the parties agree that, for purposes of summary judgment, the closest prior art is U.S. Design Patent No. D583,316, as pictured in the figures below. Id. ¶ 44.
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"The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The Court gives "the non-moving party the benefit of conflicts in the evidence and reasonable inferences that could be drawn from it." Grochocinski v. Mayer Brown Rowe & Maw, LLP, 719 F.3d 785, 794 (7th Cir. 2013). In order to survive summary judgment, the nonmoving party must "do more than simply show that there is some metaphysical doubt as to the material facts," Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986), and "must establish some genuine issue for trial such that a reasonable jury could return a verdict in her favor." Gordon v. FedEx Freight, Inc., 674 F.3d 769, 772-73 (7th Cir. 2012). However, the Court will "limit its analysis of the facts on summary judgment to evidence that is properly identified and supported in the parties' [Local Rule 56.1] statements." Bordelon v. Chi. Sch. Reform Bd. of Trs., 233 F.3d 524, 529 (7th Cir. 2000). If a proposed statement of fact is properly supported by the record and not adequately rebutted, the Court will accept the statement as true for the purposes of summary judgment. See Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997, 1006 (N.D. Ill. 2010). An adequate rebuttal must include a citation to specific support in the record. Id.
A design patent protects all ornamental features of a product, excluding those that are functional in nature. See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). Patent infringement occurs when there is an application of "the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale . . . ." 35 U.S.C. § 289. Indeciding whether there has been an infringement, the Court must inquire "whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design." Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008). This inquiry necessitates a three-way visual analysis between the patented design, the accused design, and the prior art. Id. While verbal claim construction may sometimes be helpful in certain circumstances, "[g]iven the recognized difficulties entailed in trying to describe a design in words, the preferable course ordinarily will be for a district court not to attempt to 'construe' a design patent claim by providing a detailed verbal description of the claimed design." Id. at 679. The designs should be compared visually to each other using the patent drawings, not their commercial embodiments. See Payless Shoesource, Inc. v. Reebok Int'l Ltd., 998 F.2d 985, 990 (Fed. Cir. 1993). During this analysis, infringement can be found even if the accused and patented designs are not identical. See OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997).
Courts have treated the test for design patent infringement as a two-step process. First, a plaintiff claiming infringement must make a threshold showing that the accused and patented designs are not "sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear 'substantially the same' to the ordinary observer." Egyptian Goddess, 543 F.3d at 678; see Competitive Edge, 763 F. Supp. 2d at 1012 (). Second, "when the claimed and accused designs are not plainly dissimilar, resolution of the question of whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art." Egyptian Goddess, 543 F.3d at 678; see Wing Shing Prods. (BVI) Co.Ltd. v. Sunbeam Prods., Inc., 665 F. Supp. 2d 357, 362 (S.D.N.Y. 2009) ().
A side-by-side analysis of the patents must focus on the "overall ornamental visual impression" of the accused and patented designs. See OddzOn Prods., 122 F.3d at 1405; see also Durling v. Spectrum Furniture Co., 101 F.3d 100, 104 (Fed. Cir. 1996) ().
To the ordinary observer, a side-by-side comparison would yield the conclusion that the two products create a substantially different visual impression. Voltstar's patent depicts a product that has two flat sides joined together by shallow arcs at points that have the appearance of rounded corners. This creates the impression of a squat product that is approximately twice as wide as it is tall. Amazon's product, on the other hand, is much more oval in its overall shape. It does not have rounded corners, the arcs connecting the top and bottom have much deeper curves, and it is only approximately one and a half times wider than it is tall.
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Additionally, the tapers leading to the USB connector differ significantly. Voltstar's patent depicts an abrupt taper leading to an almost circular plateau that has an opening for a USB cord. The plateau on which the USB opening rests does not mimic the overall shape of the device when looking at the front, and instead it is more circular. Amazon's charger has a more gradual taper that leads to a lip that creates an enclosure for the USB port. Looking from the front, the lip and enclosure it provides almost exactly traces the body shape of the product.
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Finally, Voltstar's product has a distinct clamshell appearance due to the horizontal seam separating its top and bottom halves. This design element is especially prominent when examining Figures 5 and 6 of the Voltstar patent, which show a carefully crafted groove. Amazon's design lacks this seam and maintains a smooth aesthetic throughout the product. Instead, it has a vertical seam (as seen in Figures 5-8 of the Amazon patent) that denotes the beginning of its taper at the USB end.
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Cumulatively, these differences create a significantly different overall ornamental visual impression for each product to the ordinary observer.
In fact, these differences are more than sufficient to grant summary judgment without examining the prior art in the eyes of many district courts. Courts consistently grant summary judgment based solely on differences between the accused and...
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