No.

Before The
United States Supreme Court
ALLYSON WALLACE, Petitioner,

v.
IDEAVILLAGE PRODUCTS CORPORATION,
Respondent.
_______

On Petition for a Writ of Certiorari to the

United States Court of Appeals for the Federal Circuit in
No. 2015-1077.
________________________

PETITION FOR A WRIT OF CERTIORARI

________________________

PROF. CHARLES LEE THOMASON

55 W. 12th Ave.
Columbus, OH 43210
Tel. (502) 349-7227
C.LeeThomason[at]gmail.com
Counsel for Petitioner

QUESTION PRESENTED.
In this design patent infringement case, the
accused items were ruled non-infringing.
Petitioner Wallace respectfully requests that a
writ of certiorari be issued to answer the following
question:

1. Does the precedential force of this Courts

Gorham ordinary observer standard for proving
design patent infringement remain, or did the
Federal Circuits sufficiently distinct approach
extinguish Gorhams instruction that the sole
question, therefore, [is] one of fact. ...[a]re the
designs used by the defendant substantially the
same as that owned by the complainants?

PARTIES TO THE PROCEEDINGS

The following were parties to the proceedings in the
U.S. Court of Appeals for the Federal Circuit, and in
the U.S. District Court for the District of New Jersey:
Allyson Wallace, plaintiff below and petitioner here.
IdeaVillage Products Corporation, defendant below.

RULE 29.6 DISCLOSURE STATEMENT

Petitioner Allyson Wallace is a natural person and
an individual inventor.

ii

TABLE OF CONTENTS
Page
QUESTIONS PRESENTED

PARTIES TO THE PROCEEDINGS

. ii

RULE 29.6 DISCLOSURE STATEMENT

ii

TABLE OF CONTENTS

. iii

TABLE OF AUTHORITIES

. v

OPINIONS AND ORDERS BELOW

. 1

STATEMENT OF JURISDICTION

. 1

STATUTORY PROVISIONS INVOLVED

. 2

ARGUMENT
STATEMENT OF THE CASE .. 3
Introduction
.. 3
I. The Gorham, or the Goddess approach?
Fundamental change from
substantial overall similarity to
a sum of dissimilarities
being the proof standard . 6
II. The Procedural and Decisional Facts
Material to the Question Presented
. 9
III. Applying the Federal Circuits Differences-First
approach to the designs in Gorham
would provoke a different outcome
. 10
IV. Error not to follow Gorhams teachings about
. 13
overall identity and observed differences
V. The Federal Circuits Sufficiently Distinct
approach obtrudes the decisional rules
set in Gorham
. 20
Pre-2008 Adherence to Gorham . 20
iii

Page
VI. Post-2008: Federal Circuits adoption of
Sufficiently Distinct criterion as dispositive
of infringement effectively ended Petitioners
case and others
. 25
VII. The Sufficiently Distinct Approach of
Egyptian Goddess is Oppositional to
Gorhams Silver Standard of
Substantial Overall Sameness . 30
CONCLUSION

. 33

CONTENTS OF APPENDIX
APPENDIX A Orders and Opinion on Appeal
Page
Federal Circuit Order denying rehearing.

A2

Federal Circuit Panel Opinion.

A4

District Court Order on Summary Judgment.

A14

District Court Summary Judgment Opinion.

A15

iv

TABLE OF AUTHORITIES
CASES

Page

Amini Innovation Corp.

v. Anthony California, Inc.,

439 F.3d 1365 (Fed. Cir. 2006) . 23

Application of Rubinfield,

270 F.2d 391(C.C.P.A. 1959)

. 31

Arc'teryx Equip., Inc.

v. Westcomb Outerwear, Inc.,

2008 WL 4838141,
2008 U.S. Dist. LEXIS 90228
(D. Utah Nov. 4, 2008)
. 23

Arner v. Sharper Image Corp.,

1995 WL 873730,
1995 U.S. Dist. LEXIS 21156
(C.D. Cal. Oct. 5, 1995) . 23

Australia Vision Servs. Pty. Ltd.

v. Dioptics Med. Products, Inc.,

29 F. Supp. 2d 1152 (C.D. Cal. 1998)

. 24

Blumcraft of Pittsburgh v. United States,

372 F.2d 1014 (Ct. Cl. 1967)
. 20

Braun Inc. v. Dynamics Corp. of America,

975 F.2d 815 (Fed. Cir. 1992)

22, 31

Competitive Edge, Inc. v. Staples, Inc.,

763 F. Supp. 2d 997 (N.D. Ill. 2010),

aff'd, 412 F. App'x 304 (Fed. Cir. 2011) . 28

Decade Indus. v. Wood Tech., Inc.,

2001 WL 523396 later op.,

145 F. Supp. 2d 1075 (D. Minn. 2001) . 26

v

Page

Door-Master Corp. v. Yorktowne, Inc.,

256 F.3d 1308 (Fed. Cir. 2001) . 21

Durdin v. Kuryakyn Holdings, Inc.,

440 F. Supp. 2d 921 (W.D. Wis. 2006) . 23

Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008), en banc,
cert. den'd, 556 U.S. 1167 (2009) . 4, 6, 7, 9
Elmer v. ICC Fabricating, Inc.,

67 F.3d 1571 (Fed. Cir. 1995)

. 21

Gorham Mfg. Co. v. White,

81 U.S. (14 Wall.) 511,

20 L. Ed. 731 (1871)

4, passim

Gorham Mfg. Co. v. White, 10 F. Cas. 827

(C.C.S.D.N.Y. 1870)

. 30

Grant v. Raymond, 31 U.S. 218,

8 L. Ed. 376 (1832) . 8

Great Neck Saw Mfrs., Inc.

v. Star Asia U.S.A., LLC,

727 F. Supp. 2d 1038, (W.D. Wash. 2010),

aff'd, 432 F. App'x 963 (Fed. Cir. 2011) . 28

Halo Elecs., Inc. v. Pulse Elects., Inc.,

___U.S. ___, 118 USPQ2d 1761 (2016) ... 30-31

HR U.S. LLC v. Mizco Int'l, Inc.,

2009 WL 890550,
2009 U.S. Dist. LEXIS 27056
(E.D.N.Y. Mar. 31, 2009) . 27

Hupp v. Siroflex of Am., Inc.,

122 F.3d 1456 (Fed. Cir. 1997) . 21

In re Blum, 374 F.2d 904, 907 (CCPA 1967) . 23

Jennings v. Kibbe, (C.C.S.D.N.Y. 1882)

. 32
vi

Page

Keurig, Inc. v. JBR, Inc., 2013 WL 2304171,

2013 U.S. Dist. LEXIS 73845

(D. Mass. May 24, 2013),
aff'd, 558 F. App'x 1009 (Fed. Cir. 2014) 28

KeyStone Retaining Wall Sys., Inc.

v. Westrock, Inc.,

997 F.2d 1444 (Fed. Cir. 1993) . 20

Page
L.A. Gear, Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117 (Fed. Cir. 1993),
cert. den'd, 510 U.S. 908 (1993) . 21

Lund Indus., Inc. v. GO Indus., Inc.,

938 F.2d 1273 (Fed. Cir. 1991) . 21

Mercoid Corp. v. Mid-Continent Investment Co.,

320 U.S. 661,
64 S.Ct. 268, 88 L.Ed. 376 (1944)

. 22

Minka Lighting, Inc.

v. Maxim Lighting Int'l, Inc.,

2009 WL 691594,
2009 U.S. Dist. LEXIS 20948
(N.D. Tex. Mar. 16, 2009) . 27

Newspring Indus. Corp.

v. Sun Gem Plastics Enter. Co.,

66 F. App'x 863 (Fed. Cir. 2003) . 18

Northern Telecom, Inc. v. Datapoint Corp.,

908 F.2d 931 (Fed. Cir. 1990)

. 17

Octane Fitness LLC. V. Icon Fitness,

547 U.S. ___,

110 USPQ2d 1337 (2014) . 30

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

122 F.3d 1396 (Fed. Cir. 1997) . 3

vii

Page

OraLabs, Inc. v. Kind Grp. LLC,

2015 WL 4538444,
2015 U.S. Dist. LEXIS 98246
(D. Colo. July 28, 2015) . 26

Parker v. Kimberly-Clark Corp.,

2012 WL 74855,
2012 U.S. Dist. LEXIS 2565
(N.D. Ill. Jan. 10, 2012) . 28

Performance Designed Products LLC

v. Mad Catz, Inc.,
2016 WL 3552063
(S.D. Cal. June 29, 2016) . 29

Providence Rubber Co. v. Goodyear,

76 U.S. 788, 19 L. Ed. 566 (1869)

. 27

Read Corp. v. Portec, Inc.,

970 F.2d 816 (Fed. Cir.1992)
(overruled on other grounds),
Markman v. Westview Inst., Inc.,
52 F.3d 967 (Fed. Cir.1995)
. 33

Rockport Co. v. Deer Stags, Inc.,

65 F. Supp. 2d 189 (S.D.N.Y. 1999)

Shelcore, Inc. v. Durham Indus., Inc.,

745 F.2d 621 (Fed. Cir. 1984)

. 26

. 21

Sport Dimension, Inc. v. Coleman Co.,

820 F.3d 1316 (Fed. Cir. 2016) . 23

Teva Pharm. USA, Inc. v. Sandoz Inc.,

547 U.S. ___, 135 S.Ct. 831 (2015)

. 20

Voltstar Techs., Inc. v. Amazon.com, Inc.,

2014 WL 3725860,
2014 U.S. Dist. LEXIS 102306
(N.D. Ill. July 28, 2014),

viii

Page

aff'd, 599 F. App'x 385 (Fed. Cir. 2015) ... 28-29

Wing Shing Products (BVI) Co.
v. Sunbeam Products, Inc.,

665 F. Supp. 2d 357 (S.D.N.Y. 2009),

aff'd, 374 F. App'x 956 (Fed. Cir. 2010) . 28

STATUTES
35 U.S.C. 171

. 2, 30

35 U.S.C. 289

. 5, 34

OTHER AUTHORITIES
Desmet & Hekkert,
Framework of Product Experience,
1 Intl Journal of Industrial Design, 57 (2007) .. 7
Michael J. Mazzeo, et. al., Explaining the
"Unpredictable": An Empirical Analysis of U.S.
Patent Infringement Awards,
35 Int'l Rev. L. & Econ. 58 (2013)
. 13
Darin Snyder, Mark Davies, The Federal Circuit
and the Supreme Court (Circa 2009),
19 Fed. Circuit B.J. 1 (2009)
.. 22, 27

ix

OPINIONS AND ORDERS BELOW

The district courts opinion U.S. Design
Patent No. D485,990 is reported at Wallace v.
Ideavillage Products Corp., 2014 WL 4637216 and
2014 U.S. Dist. LEXIS 129020 (D.N.J. 2014).
Appendix at A15.
The opinion of the U.S. Court of Appeals for
the Federal Circuit is reported at Wallace v.
Ideavillage Products Corp., 2016 WL 850860 and
2016 U.S. App. LEXIS 3975 (Fed. Cir. 2016).
Appendix at A4.
STATEMENT OF JURISDICTION
The jurisdiction of this Court is invoked
under 28 U.S.C. 1254(1). The United States
Court of Appeals for the Federal Circuit entered its
ruling in this case on March 3, 2016.
The Combined Petition for Panel Rehearing
and Rehearing En Banc was denied on May 5,
2016, and the mandate issued on May 12, 2016.
Appendix at A2.

STATUTES AND REGULATIONS INVOLVED

Pertinent to this petition are provisions of
the Patent Act, 35 U.S.C. 101, et seq., and
specifically 35 U.S.C. 289 entitled Additional
Remedy for Infringement of Design Patent, which
is set forth at Appdx. A28. Also involved is the
text in 35 U.S.C. 171. It provides the provisions
of Title 35 relating to patents for inventions shall
apply to patents for designs, except as otherwise
provided. Appdx. A29.

STATEMENT OF THE CASE

INTRODUCTION
Petitioners design patent infringement
claim was the most recent, of a practically
unbroken series of cases where the claim was
rejected on a pretrial motion. These outcomes
result directly from the Federal Circuit changing
this Courts ordinary observer proof standard
from the Gorham spoon case to a contradictory
`differences-first approach.
Petitioners case is an ideal vehicle to revisit
and reaffirm the Gorham analysis. The record here
is not muddied with the form or function issue
that can blur the infringement analysis.1 The
lower courts ruling illustrates how the Federal
Circuit `differences-first approach is antithetical
with Gorhams substantial identity standards.
This Court, in the Gorham case, set the
design patent infringement standard as designs
that are substantially the same. As importantly,
it set a certain legal measure for substantiality,
that is, an overall resemblance that could deceive

Where a design contains both functional and nonfunctional elements, the scope of the claim must be
construed in order to identify the non-functional aspects
of the [patented] design. OddzOn Products, Inc. v. Just
Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997).

an ordinary observer and so, divert business from

the patented design to the infringing item.2
The Federal Circuit supplanted the primacy
of Gorhams well-stated standard and measure
with its own differences-first rule. The Federal
Circuit subordinated overall design effect to an
itemization of the distinct aspects of an accused
design.3
Lower courts now routinely bypass assessing
the substantiality of overall similarity in the eye of,
or measure deceit of an ordinary observer. As a
consequence, virtually every design patent case
now ends summarily, in favor of the accused
infringer, and based on that unbounded measure of
sufficiently distinct. Whether designs are so

Gorham Mfg. Co. v. White, 81 U.S. (14 Wall.) 511,

528, 20 L. Ed. 731 (1871). We hold, therefore, that 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.
3

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d

665, 678 (Fed. Cir. 2008). In some instances, the
claimed design and the accused design will be
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.

substantially the same as to divert business to

the infringing imitation no longer is asked.
Certiorari is sought to restore the rights that
design patentees lost due to the Federal Circuit
deciding an important federal question of design
patent infringement in a way that conflicts with the
precedent of this Court.
Petitioner seeks restoration of the Gorham
precedent that holds the sole question is, and
should be: are the designs used by the defendant
substantially the same as that protected by the
design patent; and thus, the fundamental inquiry
is: the sameness of appearance and sameness of
effect upon the eye 4 of an ordinary observer.5

Gorham Mfg., 81 U.S. at 526-27.

5

This Court's substantially resemblant standard

gave meaning to design patent infringement under the
colorable imitation aspect of the statute. 35 U.S.C.
289(1). Gorham Mfg., 81 U.S. at 530 (Q: is the accused
design a colorable evasion of the patented design).

I.

The Gorham, or the Goddess approach?

Fundamental Change from Substantial
Similarity to a Sum of Dissimilarities Being
the Proof Standard.
The eye of the ordinary observer, giving
such attention as a purchaser usually gives,6 is the
precedential starting point that Gorham set for
determining whether the effect of the whole design
is substantially the same7 as that of the accused,
infringing item.
This Court detailed an overall method of
analyzing design patent infringement claims, but
the Federal Circuit in Egyptian Goddess conflated
that analysis down to a one-shot inquiry that asks
if the designs are sufficiently distinct. As a
result, dozens of design patent infringement claims
now are rejected, early in the pretrial process.8
Substantial identity of design as a whole is
the Gorham proof standard,9 and its measure of
substantial identity is that degree of resemblance
likely to result in the ordinary observer being

Gorham Mfg., 81 U.S. at 528.

7

Gorham Mfg., 81 U.S. at 530.

8

Since 2008, a few of forty cases reached trial.

9

That sameness of effect upon the eye, is the main

test of substantial identity of design, id., at 527, which
posits the primary question: is the effect of the whole
design substantially the same? Id., at 530.

misled, and induced to purchase what is not the

article they supposed it to be.10
In contravention of Gorham, and its analysis
of substantial similarity, the Federal Circuit made
the dispositive inquiry to be sufficiently distinct
dissimilarities.11 The Federal Circuit approach
puts a close-up, critical examination of differences
first. It invites motions to sum the dissimilarities
into an argument that similar designs are
sufficiently distinct. Then, without more, the
case ends without reaching Gorhams inquiry into
whether ordinary purchasers might be misled.

Gorham acknowledged that some differences

between competing designs are ever-present, but it
sets out a decisional analysis that keeps the
primary emphasis on overall similarity and effect.
The premise for Gorhams precedential rule
is that the ordinary observer gives attention first
to the similar effect of the designs as a whole.12

10

Gorham Mfg., 81 U.S. at 528.

11

Egyptian Goddess, supra, the designs will be

sufficiently distinct that it will be clear without more
that judgment of non-infringement should be rendered.
12

What Gorham posits as the effect upon the eye

of an ordinary observer is, to product designers, a
function of the degree to which a perceptual system
manages to detect structure, order, or coherence and
assess a products novelty/familiarity [which] typically
determines the affect that is generated. Desmet &

The Federal Circuits approach extinguishes that

premise, and puts isolated differences and
variances ahead of proving substantial identity and
the effect of the whole design. Gorham instructed
that isolated dissimilarities, in the ordinary
observers eyes would be indistinguishable when
they give to the examination of the article that
degree of observation which [persons] of ordinary
intelligence give to the design.13
The Federal Circuits differences-first
approach is a test [that] would destroy all the
protection which the act of Congress intended to
give to design patentees.14
Petitioner seeks certiorari for this Court to
reaffirm that when the patented and accused
designs are substantially the same, to a degree
that the resemblance may deceive an ordinary
observer and induce them to purchase the accused
product, then the design patent is infringed.

Hekkert, FRAMEWORK OF PRODUCT EXPERIENCE, 1 Intl

Journal of Industrial Design, 57, 60 (2007)
13

Gorham Mfg., 81 U.S. at 528.

14

Id. To promote the progress of useful arts, is the

interest and policy of every enlightened government.
Grant v. Raymond, 31 U.S. 218, 8 L. Ed. 376 (1832)(The
laws which are passed to give effect to this purpose
ought, we think, to be construed in the spirit in which
they have been made). The acts of Congress which
authorize the grant of patents for designs were plainly
intended to give encouragement to the decorative arts.
Gorham Mfg., 81 U.S. at 524.

II.
THE PROCEDURAL AND DECISIONAL FACTS
MATERIAL TO THE QUESTION PRESENTED.
Here, the petitioner-inventor Wallaces
design patent infringement claim was rejected
without Gorhams threshold questions being
reached. Why? The Magistrate judge decided that
a sufficient quanta of distinct aspects (six) were
dispositive, based on the Federal Circuit
approach.15 The Gorham proof standard of
substantial overall identity of design, and Gorhams
measure of an ordinary observer being deceived,
were not applied.
The Federal Circuit approach shortcuts
Gorham to decide only if differences can be court
summed to a sufficiently distinct conclusion.
Using the Goddess approach and its distinct sum,
the lower court granted a judgment of noninfringement, which was affirmed on appeal.16

15

When the claimed design and the accused

design are sufficiently distinct, here having six
differences deemed sufficient, the Magistrate judge
ruled, Wallace cannot, as a matter of law, prove that the
designs appear substantially the same. District Court
opinion, Appendix at A19 and A24, citing, Egyptian
Goddess, Inc. v. Swisa, Inc., supra.
16

On appeal, the Federal Circuit panel affirmed

based on four differences (1) the curved shape of the
handle, (2) the angled connection between the handle

10

III.

APPLYING THE FEDERAL CIRCUITS

DIFFERENCES-FIRST APPROACH TO THE
DESIGNS IN GORHAM WOULD LEAD TO A
DIFFERENT OUTCOME.
This Court in Gorham, applying its ordinary
observer analysis in full, ruled that there was
substantial identity between Gorhams patented
design and the accused designs of White. It was
held that both White designs we think are proved
to be infringements of the Gorham design patent.17
Petitioner fairly can question whether
Gorham would have obtained that favorable
outcome if the Federal Circuits differences-first
approach had been used.
In place of inquiries about substantial
overall sameness and the effect of whole design, the
Federal Circuit approach would direct a lower court
to ask how many differences could be found as
between the competing designs of Gorham and
White.
Viewing the Gorham and White handles,
with the eyes of observers of ordinary acuteness,18

and brush, (3) the ovoid design of the head, and (4) the
surface details thereupon; see, Appendix at A10.
17

Gorham Mfg., 81 U.S. at 533.

18

Gorham Mfg., 81 U.S. at 528.

11

and ignoring the similarities, ask: how many

differences can be isolated and enumerated.

In the briefs submitted to this Court in Gorham,

the accused infringers expert swore positively
that the accused designs of White were
substantially different, and he pointed out fifteen
differences between the Gorham design and

12

White's, 1867 [design], and sixteen differences

between the Gorham design and that of White[s]
1868 design.19
Based on fifteen or sixteen differences, a
district court today, applying the Federal Circuits
approach, would adjudge summarily that Gorhams
patented design and the accused design were
sufficiently distinct. Gorhams claim of design
patent infringement would be summarily rejected,
because the Federal Circuits approach equates
fifteen or sixteen differences to sufficiently.
Without more, the evidence that purchasers might
be misled never would be evaluated.
Itemization of differences, here in
Petitioners case, some six differences, is the
antithesis of an overall identity and effect approach
that Gorham contemplated, and indeed, requires.

19

Gorham Mfg., 81 U.S. at 518. This Court

mentioned the most prominent differences, id., at 529,
including (1) greater concavity on the handles of the
White design, (2) a rounded bead along the edge is
interrupted at the lower and upper parts of the
Gorham design but is unbroken on White's designs, (3)
scrolls of Gorham turn outward at the upper part, and
inward on White, and (4) Gorham has an inner line,
making a second very thin bead, which feature is
wanting on the stem of the handle sold by White.

13

The Federal Circuit gave no guide to measure how

many differences sum to sufficiently distinct.20
The Federal Circuits approach urges the
district court to place a magnifying glass on the
accused and the patented design, to itemize and
enumerate isolated differences, then rule the sum
of those sufficiently distinct. The approach
relegates the substantial identity standard from
Gorham and its purchaser deceit measure for
proving design patent infringement into evidential
unimportance.
The Federal Circuits sufficiently distinct
approach is the opposite of Gorhams assessment of
substantial identity to the eyes of an ordinary
observer, and of the potential they may be misled
by their similarity to mistake one for another.21

IV.
ERROR NOT TO FOLLOW GORHAMS TEACHINGS
ABOUT OVERALL IDENTITY AND
OBSERVED DIFFERENCES.

20

Fundamentally, the incentives to innovate that

patents are intended to provide are predicated on a
patent holder's ability to predictably defend his or her
patent. If the rewards conferred by the patent system are
unpredictable, then their attendant incentives fail to
function and the system itself is suspect. Michael J.
Mazzeo, et. al., Explaining the "Unpredictable": An
Empirical Analysis of U.S. Patent Infringement Awards,
35 INT'L REV. L. & ECON. 58 (2013).
21

Gorham Mfg., 81 U.S. at 531.

14

Gorham dealt with substantial differences

and how those are evaluated against substantial
identity of the essential features of the designs.22
The antithesis of Gorham is the Federal Circuit
approach, employed here, that makes itemization of
differences dispositive, and leaves unasked the
sameness and effect of the whole design.23
Here, without mention of how Gorham treats
design differences, the lower courts dispensed with
Petitioners claim of overall similarity and proof of
design patent infringement. Using the Federal
Circuit approach, six differences were noted, which
the district court felt made the accused item
sufficiently distinct from Petitioners patented
design. Compare how those would be treated using
the full analysis set forth in Gorham.
One difference noted in Gorham was that the
White designs had a single depressed line forming
a bead running near the edge of the handle, but
the Gorham design patent had an inner line,

22

Gorham Mfg., 81 U.S. at 530. Although variances

in the ornament are discoverable, are the essential
features the same?
23

Rarely, if ever, will a case be reported where no

differences between the patented and accused designs
are asserted. Gorham Mfg., 81 U.S. at 527. There
never could be piracy of a patented design, for human
ingenuity has never yet produced a design, in all its
details, exactly like another.

15

making a second very thin bead.24 A unitary,

single bead differs from an additional line and a
second bead. Still, the appropriate inquiry was
whether the effect was substantially the same,25
and not if two beads and lines were sufficiently
distinct from one bead. Maintaining the viewpoint
of the ordinary observer, this Court concluded that
since White's single line is wider it presents much
the same appearance as it would present if divided
into two.26
Consider an example from Petitioners case.
The lower courts found that Petitioners claimed
design has a straight handle, which assertedly
was sufficiently distinct from the Ideavillage
product [that] has a bent or curved handle.
Appdx, pg. A6.
A contrary way to verbalize the view of an
ordinary observer is that both products here have a
straight handle (see below, images from Appdx,
pgs. A9 & A10), and on the IdeaVillage SpinSpa
product a bent neck joins the brush head to that
straight handle.

24

Gorham Mfg., 81 U.S. at 529.

25

Gorham Mfg., 81 U.S. at 530.

26

Gorham Mfg., 81 U.S. at 529.

16

The effect of the whole design having a straight

handle or straight plus a bent neck may be
substantially the same using the ordinary observer
analysis of Gorham even if those are distinct to
the Federal Circuit. The effect of that design
variance deserves to be determined, per Gorham,
based on the evidence before the jury.
Differences are examined appropriately, but
a sufficiently distinct measuring string never
should become the controlling consideration.

17

The Gorham decision does not say that in

determining whether two designs are substantially
the same, differences in the lines, the configuration,
or the modes by which the aspects they exhibit are
not to be considered; but we think the controlling
consideration is the resultant effect.27
Another example from Petitioners case is
how distinct importance was assigned to no
decoration on the back of the handle shown in the
design patent, while Ideavillage {sic} product has
an oval at the neck of the handle and an oval group
in the back of the handle. (Image above, and at
Appdx, pg. A7).28

27

Gorham Mfg., 81 U.S. at 527. In Petitioners case,

the variance between a straight or bent handle is
comparable with, and should be evaluated consistent
with how the external edge design on the Gorham handle
above the point where the broader part widens from the
stem was shaped differently from the edge on Whites
designs where the degree of concavity is greater. On
that point, this Court instructed that how much effect
this variance has must be determined by the evidence
presented to the trier of fact. Id., at 529.
28

Arguably, added decoration is immaterial to

patent infringement. The addition of features does not
avoid infringement, if all the elements of the patent
claims have been adopted. Northern Telecom, Inc. v.
Datapoint Corp., 908 F.2d 931, 945 (Fed. Cir. 1990); and,
the presence of an additional element in the accused
product would not avoid a finding of infringement if
[the] other elements of the asserted claim are

18

Gorham keeps the emphasis on the overall

similarity, and so here, any effect of the addition of
these ovals. Added decoration would pose a
question of variance, like the second bead on the
Gorham silverware handle, which the trier of fact
views consistent with the following:
A pattern for a carpet, or a print may be
made up of wreaths of flowers arranged
in a particular manner. Another carpet
may have similar wreaths, arranged in a
like manner, so that none but very acute
observers could detect a difference. Yet in
the wreaths upon one there may be fewer
flowers, and the wreaths may be placed at
wider distances from each other. Surely
in such a case the designs are alike.29
In every design patent case, including this
Petitioners case, there are differences between the
drawings in the patent and the accused infringers
commercial product.30 The differences in the lines

present. Newspring Indus. Corp. v. Sun Gem Plastics

Enter. Co., 66 F. App'x 863, 867 (Fed. Cir. 2003).
29

Gorham Mfg., 81 U.S. at 527.

30

All six differences admit of a restatement or a

reinterpretation more favorable to the Petitionerpatentee. Here however, the Magistrate judge took the
Federal Circuits option not to attempt to construe a
design patent claim [with] a detailed verbal description,
Egyptian Goddess, supra at 679; and Appdx at A20-21.
Actually the expressed basis for the lower courts
sufficiently distinct conclusion was its verbal
description that, e.g., the '990 patent has a straight

19

and configuration are considered; but the

controlling consideration is the resultant effect.31
The lower courts need direction from this
Court to abandon the Federal Circuits sufficiently
distinct approach, and thereby, to resume asking
the fundamental questions from Gorham that
whatever differences there may be between the
plaintiffs' design and those of the defendant in
details of ornament, [are] they still the same in
general appearance and effect, so much alike that
in the market and with purchasers they would pass
for the same thing so much alike that even
persons in the trade would be in danger of being
deceived.32
Quite simply, this Court can restore the full
meaning of Gorhams holding that the sole
question, therefore, [is] one of fact. ...[a]re the
designs used by the defendant substantially the
same as that owned by the complainants?33

handle, the '990 patent has a round head, a

protrusion at the back of the head, etc. The lower court
did verbalise claim scope, but conclusorily and without
following the rigors of how patent claims are interpreted,
and those determinations reviewed. Teva Pharm. USA,
Inc. v. Sandoz Inc., 547 U.S. ___, 135 S.Ct. 831 (2015).
31
Gorham Mfg., 81 U.S. at 527.
32

Gorham Mfg., 81 U.S. at 531.

33

Gorham Mfg., 81 U.S. at 513.

20

V.

THE FEDERAL CIRCUITS SUFFICIENTLY

DISTINCT APPROACH OBTRUDES THE
DECISIONAL RULES SET IN GORHAM.
Pre-2008 Adherence to Gorham.
Design patent infringement decisions from
the patent courts prior to 2008 track Gorhams
precedential approach. That approach went by the
wayside, and so, Petitioner faced a different rule.
The test for design patent infringement is
substantial identity of appearance. Blumcraft of
Pittsburgh v. United States, 372 F.2d 1014, 1016
(Ct. Cl. 1967). The Supreme Court set out the
proper test for design patent infringement in
Gorham ...the overall similarity of designs.34

34

Blumcraft patented its floating hand railing

design. The accused versions differed due to the
adaptation of the patented design to meet the conditions
of a particular installation. Id., at 1021. Would these
differences make the designs sufficiently distinct under
the current Federal Circuit approach? Consonant with
Gorham, the U.S. Court of Claims ruled that:
Necessarily the nature of the terminations, the
character of the slopes and changes of direction of the
hand rails, the number and spacing of the posts, and the
manner of mounting the lower ends of the posts, are
variable factors that are determined and controlled by
the environmental conditions which are encountered.
Such adaptation or conformation of a railing to a
particular structure need not destroy the identity or
change the distinctive features of a railing design. Id.

21

Lund Indus., Inc. v. GO Indus., Inc., 938 F.2d 1273,

1276 (Fed. Cir. 1991). The test for design patent
infringement begins with an examination of the
overall similarity of the patented and accused
designs. KeyStone Retaining Wall Sys., Inc. v.
Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir.
1993). The Federal Circuit Court recognized the
threshold inquiry was that the patented and
accused designs are compared for overall visual
similarity [citing Gorham]. Elmer v. ICC
Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir.
1995). The focus first was on the patented design
viewed in its entirety, L.A. Gear, Inc. v. Thom
McAn Shoe Co., 988 F.2d 1117, 1125 (Fed. Cir.
1993), then to comparision of the overall
appearance of the patented and accused designs.
Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1464
(Fed. Cir. 1997). Two designs are substantially
the same if their resemblance is deceptive to the
extent that it would induce an ordinary observer,
giving such attention as a purchaser usually gives,
to purchase an article having one design supposing
it to be the other. Door-Master Corp. v.
Yorktowne, Inc., 256 F.3d 1308, 1313 (Fed. Cir.
2001). 35

Those pre-2008 Federal Circuit decisions did

employ a point of novelty test, added to Gorham. E.g.,
Shelcore, Inc. v. Durham Indus., Inc., 745 F.2d 621, 628
n. 16 (Fed. Cir. 1984). Then. the design patentee must

35

22

The pre-2008 Federal Circuit rulings

emphasized overall effect and similarity, per the
Gorham standards, and discouraged dissecting the
design and enumerating the distinctions.36
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. Braun Inc. v. Dynamics Corp. of America,
975 F.2d 815, 820 (Fed. Cir. 1992).37 The Federal
Circuit noted error when the designs were dissected
in pursuit of differences, contrary to Gorham. The
trial court mistakenly analyzed each element

prove both substantial similarity and appropriation of

the point of novelty. That novelty prong for proving
infringement was rewritten in the 2008 Egyptian
Goddess decision. The Federal Circuit expressly
abandoned the Litton point of novelty test; but then
required the very same inquiry, i.e., whether the accused
device copied what was novel in the patented design.
Darin Snyder, Mark Davies, The Federal Circuit and the
Supreme Court (Circa 2009), 19 Fed. Circuit B.J. 1, 11
(2009).
36

Citing favorably to the English Chancery decision

in McCrea v. Holdsworth, this Court in Gorham observed
that "the important inquiry was whether there was any
difference in the effect of the designs, not whether there
were differences in the details of ornament." Gorham,
81 U.S. at 526 and fn. 8.
37

Consider, Mercoid Corp. v. Mid-Continent

Investment Co., 320 U.S. 661, 667-668, 64 S.Ct. 268, 88
L.Ed. 376 (1944) (the patented combination is the
invention and it is distinct from any of its elements).

23

separately instead of analyzing the design as a

whole from the perspective of an ordinary
observer. Amini Innovation Corp. v. Anthony
California, Inc., 439 F.3d 1365, 1372 (Fed. Cir.
2006).38 Overall identity of the designs should be
appraised as a unitary concept39; dissection of the
design elements yields variations and differences,
which distract from the essential inquiry set forth
in Gorham.
Prior to 2008 change in Egyptian Goddess,
the lower courts also adhered to Gorham, and
deferred from the early, summary rejection of
infringement claims based on a list enumerating
design differences from the overall design.40 Here,

38

The Federal Circuit recently reminded that for

infringement purposes, the appropriate inquiry is the
overall impression, not isolated or dissected elements.
Moreover, design patents protect the overall
ornamentation of a design, not an aggregation of
separable elements. Sport Dimension, Inc. v. Coleman
Co., 820 F.3d 1316, 1322 (Fed. Cir. 2016).
39

In re Blum, 374 F.2d 904, 907 (CCPA 1967) A

design is a unitary thing and all of its portions are
material in that they contribute to the appearance which
constitutes the design.
40

See, e..g., Arner v. Sharper Image Corp., 1995 WL

873730, at *13 (C.D. Cal. Oct. 5, 1995), finding that
Defendants' list of design differences is relevant, but
does not dispose of the substantial similarity issue.
Indeed, some of the differences cited may not greatly
alter the effect of the whole design; and consider,
Durdin v. Kuryakyn Holdings, Inc., 440 F. Supp. 2d 921,

24

the conflict is between the two Gorham inquiries

being posed to the trier of fact, or instead having
the Judge answer only the sufficiently district
question acceptable under the Federal Circuits
Goddess approach.
An example here of that conflict is that using
the Goddess approach, the lower courts decided
summarily that an ovoid shape was sufficiently
distinct from a round head.

933-34 (W.D. Wis. 2006) instructing that the patented

and accused designs are to be compared through the
eyes of an ordinary observer, not an lawyer who inspects
the designs critically to highlight each and every
perceivable difference between them.40 Citing Gorham,
a district court indicated that a list of design differences
is relevant but does not end the substantial similarity
inquiry. Australia Vision Servs. Pty. Ltd. v. Dioptics
Med. Products, Inc., 29 F. Supp. 2d 1152, 1156 (C.D. Cal.
1998).

25

It reached that dispositive conclusion

without ever inquiring whether Gorhams ordinary
observer, viewing whatever differences there may
be between the plaintiffs design and those of the
defendant, might conclude that an ovoid shape
and a round shape have the same general
appearance and effect, so much alike that that in
the market and with purchasers they would pass
for the same thing.41
VI.

POST-2008: FEDERAL CIRCUITS ADOPTION OF

SUFFICIENTLY DISTINCT CRITERION AS
DISPOSITIVE OF INFRINGEMENT EFFECTIVELY
ENDED PETITIONERS CASE AND MANY OTHERS.
The petitioners case here is only the latest
where the sufficient distinct approach was the
ground for judgment as a matter of law, without
more than itemized differences deemed sufficient.
In the court below, the Petitioners evidence
and expert opinion showed that that the
differences ... Defendant proffers are
inconsequential to the overall designs and that
there are striking similarities between the two
designs. Appx. A24. Instead of applying Gorham,
the lower court took the one-step path of the
Federal Circuits sufficiently distinct approach,

41

Gorham Mfg., 81 U.S. at 531.

26

and granted summary judgment based on six

differences.42
The lower court noted the trend, that
pursuant to the teaching of Egyptian Goddess,
District Courts have granted summary judgment
based solely on comparison between accused and
patented designs [citing cases].43 Since 2008,
when the Federal Circuit fashioned sufficiently

42

Six differences equated to sufficiently distinct in

the district court here, but the Federal Circuit panel
fixed on four differences (see fn. 14, supra and Appendix
at A10). In another 2015 decision, three differences were
too few for summary judgment. Although OraLabs
notes three differences between the designs, the Court
cannot conclude, based on those differences alone, that
no reasonable jury could find that the designs are not
substantially the same. OraLabs, Inc. v. Kind Grp.
LLC, 2015 WL 4538444, at *8 (D. Colo. July 28, 2015).
Two differences were not enough in Rockport Co. v. Deer
Stags, Inc., 65 F. Supp. 2d 189, 195 (S.D.N.Y. 1999).
The Court finds that the Destination Shoe differs
visually from the '594 patent in only two respects. One
difference was not decisive in Decade Indus. v. Wood
Tech., Inc., 2001 WL 523396, at *4 (D. Minn. May 15,
2001), where the district court did not believe that the
[one] change is significant enough to render the MS4.1 so
different from the Sanus design that it escapes the
protective scope of the D'988 patent[and the] summary
judgment motion of non-infringement is denied. Later
op., 145 F. Supp. 2d 1075 (D. Minn. 2001). It deserves
repeating that in Gorham, which found infringement, the
defense expert pointed out fifteen [or] sixteen
differences. Gorham Mfg., 81 U.S. at 518.
43

Appendix, at A23.

27

distinct into a preemptive defense to infringement,

the effect has benefitted copyists.44 The defendant
here rebuffs claims of design patent infringement
stating that since the Federal Circuit rewrote the
rules in Egyptian Goddess that in the thirty-one
cases that have gone to trial there has been one
verdict finding design patent infringement)(Dkt.
#61-8).45 That trend is apparent in post-2008
district court decisions, and it has been extended to
unpublished affirmances.46

44

There are always those who are ready to gather

where they have not sown. Providence Rubber Co. v.
Goodyear, 76 U.S. 788, 793, 19 L. Ed. 566 (1869).
45

Petitioner does not disagree with the outcome of

the Egyptian Goddess case, only how it created an
analysis of design differences precedent to the ordinary
observer inquires about substantial identity and overall
effect. The correct result in Egyptian Goddess was clear
... under any test... [and] required only a simple
application of Gorham to resolve the dispute ... and no
amount of fine doctrinal adjustments was going to change
the fact that the patent holder was going to lose. Darin
Snyder, The Federal Circuit and the Supreme Court
(Circa 2009), 19 Fed. Circuit B.J. 1, 11-12 (2009).
46

Arc'teryx Equip., Inc. v. Westcomb Outerwear,

Inc., 2008 WL 4838141, at *3-4 (D. Utah Nov. 4, 2008)
(based Egyptian Goddess and on the differences set
forth above, ...ORDERED that Defendant's Motion for
Summary Judgment (Docket No. 44) is GRANTED);
Minka Lighting, Inc. v. Maxim Lighting Int'l, Inc., 2009
WL 691594, at *3 (N.D. Tex. Mar. 16, 2009) (if the
claimed design and the accused design are sufficiently
distinct, no further comparison is necessary); HR U.S.

28

LLC v. Mizco Int'l, Inc., 2009 WL 890550, at *10

(E.D.N.Y. Mar. 31, 2009)(In Egyptian Goddess, the
Federal Circuit, sitting en banc, not only clarified claim
construction in design patent cases, but also established
a new standard for design patent infringement. ...[it]
explained that: In some instances, the claimed design
and the accused design will be sufficiently distinct);
Wing Shing Products (BVI) Co. v. Sunbeam Products,
Inc., 665 F. Supp. 2d 357 (S.D.N.Y. 2009), aff'd, 374 F.
App'x 956 (Fed. Cir. 2010) (Egyptian Goddess also
significantly changed the analytical framework for
comparing the claimed design to the accused design to
determine whether there has been infringement. Id., at ,
360-61); Competitive Edge, Inc. v. Staples, Inc., 763 F.
Supp. 2d 997, 1011 (N.D. Ill. 2010), aff'd, 412 F. App'x
304 (Fed. Cir. 2011)(In some cases, the patented design
will be sufficiently distinct from the accused design
...[citing] Egyptian Goddess, 543 F.3d at 678. This is the
case here); Great Neck Saw Mfrs., Inc. v. Star Asia
U.S.A., LLC, 727 F. Supp. 2d 1038, 1052 (W.D. Wash.
2010), aff'd, 432 F. App'x 963 (Fed. Cir. 2011)(the Court
turns to the threshold comparison of the claimed designs
with the accused device...[and] concludes that the TITAN
product is sufficiently distinct); Parker v. KimberlyClark Corp., 2012 WL 74855, at *2 (N.D. Ill. Jan. 10,
2012)(The Court concludes that a reasonable observer
would find the designs of the two products to be
sufficiently distinct); Keurig, Inc. v. JBR, Inc., 2013 WL
2304171, at *9 (D. Mass. May 24, 2013), aff'd, 558 F.
App'x 1009 (Fed. Cir. 2014)(the design of the 362 patent
and the accused JBR design are sufficiently distinct
...Therefore, JBR's motion for summary judgment on the
ground of non-infringement of the 362 patent will be
granted);Voltstar Techs., Inc. v. Amazon.com, Inc., 2014
WL 3725860, at *2 (N.D. Ill. July 28, 2014), aff'd, 599 F.
App'x 385 (Fed. Cir. 2015)(First, a plaintiff claiming
infringement must make a threshold showing that the

29

In any given case, it should not matter if

other cases have ended based on the sufficiently
distinct approach. The Gorham proof standard
focusing first on overall similarity is precedential
and should be followed.
The post-2008 trend of sufficiently distinct
dispositions has gone beyond summary judgment
practice. Now, district courts dismiss infringement
claims as implausibly pleaded. 47 Other district
courts shift onto the design patentee an initial
burden to dis-prove that the designs are not
sufficiently distinct, i.e., that the designs have no
differences.48

accused and patented designs are not 'sufficiently

distinct').
47

The trend has extended to sufficiently distinct

being the basis for dismissing a design patent cases for
failure to state a plausible claim per Rule 12(b)(6).
Performance Designed Products LLC v. Mad Catz, Inc.,
2016 WL 3552063, at *7 (S.D. Cal. June 29,
2016)(collecting cases, all post-2008), the Court notes
that other district courts have also granted motions to
dismiss based on non-infringement of a design patent.
48

See. Voltstar, id. First, a plaintiff claiming

infringement must make a threshold showing that the
accused and patented designs are not 'sufficiently
distinct'. Accord, HR U.S. LLC v. Mizco Int'l, supra,
2009 WL 890550, at *10. A design patent plaintiff
must, as a threshold matter, show that the claimed and
accused designs are not plainly dissimilar.

30

The standard and measure of Gorham is so

eroded by the Federal Circuits shortcut to
whatever is sufficiently distinct that the change
has invaded each procedural step from pleading, to
allocating the burden of proof, as well as summary
judgment.49
VII.

THE SUFFICIENTLY DISTINCT APPROACH OF

EGYPTIAN GODDESS IS OPPOSITIONAL TO
GORHAMS SILVER STANDARD OF SUBSTANTIAL
OVERALL SAMENESS.
The Federal Circuits approach provides no
legal measure for sufficiently distinct, or even one
in harmony with linguistics. A conclusion of

49

Gorham Mfg. Co. v. White, 10 F. Cas. 827, 830

(C.C.S.D.N.Y. 1870), rev'd, 81 U.S. 511 (1871) (The same
principles which govern in determining the question of
infringement in respect to a patent for an invention
connected with the operation of machinery, must govern
in determining the question of infringement in respect to
a patent for a design.). See too, 35 U.S.C. 171. As this
Court recently noted, patent infringement litigation has
always been governed by a preponderance of the
evidence standard. Halo Elecs., Inc. v. Pulse Elects.,
Inc., ___U.S. ___, 118 USPQ2d 1761, 1767 (2016), citing
Octane Fitness LLC. V. Icon Fitness, 547 U.S. ___, 110
USPQ2d 1337 (2014). In any utility patent case, the
patentee will claim the accused item is substantially the
same, and the defense will contend there are differences,
but there, to end the case on a criterion of sufficiently
distinct will be reversible error.

31

sufficiently is easily reached, variously proven

and imperfectly reviewable. How distinct are
designs that are sufficiently distinct?50
A line of decisions reaching back to Gorham
hold that differences do not defeat infringement.
How much effect [a] variance has must be
determined by the evidence,51 and cannot be that
cannot be trumped by the inexact criterion of
sufficiently distinct.52 It is well settled that a
design patent may be infringed by articles which
are specifically different from that shown in the
patent, [citing Gorham]. Application of Rubinfield,
270 F.2d 391, 393 (C.C.P.A. 1959); accord, Braun
Inc., supra, 975 F.2d at 820 ([P]atent infringement
can be found for a design that is not identical to the
patented design.).

Braun is instructive of the Federal Circuits

pre-2008 adherence to Gorham. There, that court
affirmed a jury determination that a design patent
was infringed. The affirmed verdict came despite
the readily noticeable difference that the Braun

50

The Oxford English Dictionary (2d Ed., Clarendon

Press, Oxford 1989) defines sufficiently as to an
extent calculated to satisfy the circumstances of the case
or adequate to a certain purpose or object; enough for the
purpose (express or implied).
51

Gorham Mfg., 81 U.S. at 529.

52

A courts judgment is to be guided by sound legal

principles. Halo, supra, 118 USPQ2d at 1765.

32

patent showed a handgrip indentation53 which

the accused item did not have, as well as other
dissimilarities.54 Had the post-2008 approach of
asking first about differences in the designs, and
using sufficiently distinct viewpoint, then the
noted dissimilarities may well have kept Braun
from succeeding on its claim of design patent
infringement.
It can be extrapolated that had Petitioners
claim gone to the jury, then their verdict would
have be reviewed based on the appropriate Gorham
inquiries.55 A properly-instructed trier of fact
would assess overall similarity, the identity of
design and effect of variances or differences.

53

Coincidentally, in Petitioners case one distinct

aspect highlighted as between the patented and
accused design was that '990 patent has a finger grip
with a hill and valley design, while the Ideavillage
product has no such finger grip. Appdx, A6.
54
Campbell, testified consumers typically purchase
hand held electric buyers on an impulse and as a result
they may not differentiate Waring and Braun's designs,
despite this and other dissimilarities. Braun Inc., 975
F.2d at 820.
55

See, e.g., Jennings v. Kibbe, 10 F. 669, 670-71

(C.C.S.D.N.Y. 1882). In Gorham, the "court compared, in
that case, the design of the patent with the designs on
the defendants' article, and arrived at the conclusion
from such comparison that the designs of the defendants
were, in their effect as a whole, notwithstanding
variances, substantially the same as the design of the
patent and infringements.

33

Instead, the Magistrate judge here cut to the close,

he viewed six differences in the patented and
accused designs, and declared those sufficiently
distinct.56 That approach is contrary to Gorham
and to a line of caselaw extending up to 2008.57
Since 2008, most every design patent infringement
claim is summarily dispatched on a pretrial motion
that makes the sufficiently distinct argument.
The petitioner, Wallace, respectfully requests
that a writ of certiorari issue to the Federal Circuit.

CONCLUSION
It was error, harmful to design patentees, to
replace Gorhams substantial identity and overall

56

Sufficiently distinct lacks distinct legal

boundaries and extends over a range of variants that are
misaligned with Gorham and a focus on substantial
identity and sameness. Are these designs:
Sufficiently distinct but with such resemblance that
might induce purchaser confusion;
Substantially the same, but with distinct variances;
Viewed having five distinct features and substantial
identity of six features;
Insufficiently distinct to be substantially similar; or
That to the ordinary observers eye, have the identical,
signature feature, and many minor differences.
57

To prove infringement a patent owner must

establish that an ordinary person would be deceived by
reason of the common features in the claimed and accused
designs which are ornamental. Read Corp. v. Portec, Inc.,
970 F.2d 816, 825 (Fed. Cir.1992)(overruled on other
grounds), Markman v. Westview Inst., Inc., 52 F.3d 967
(Fed. Cir.1995).

34

effect prongs to the lesser criterion of sufficiently

distinct. Substantial overall identity and
deceptive resemblance now are subordinate to how
many design differences equate to sufficiently
distinct.
The harm that a one sentence prescription
for dismissals has wrought needs to be rectified.
The precedential force of the Gorham analysis
should be reaffirmed as the standard and measure
for design patent infringement.
Petitioner prays that this Court will grant
certiorari and restore the primacy of substantial
identity from the viewpoint of an ordinary observer,
consistent with analysis in the Gorham decision
and 35 U.S.C. 289. Unless, therefore, the
[design] patent is to receive such a construction
that the act of Congress will afford no protection to
a designer against imitations of his invention,58
then this Court should renew the force of the
ordinary observer standard, and should negate the
harm the Federal Circuit has occasioned with its
sufficiently distinct approach.
Therefore, the petition for a writ of certiorari
should be granted to this individual inventor,
Petitioner Allyson Wallace.
Date: August 6, 2016

58

Gorham Mfg., 81 U.S. at 531.

35

Respectfully submitted,
Prof. Charles L. Thomason

Attorney for Petitioner

55 W. 12th Ave.
Columbus, OH 43210
Tel. (502) 349-7227

thomason@spatlaw[dot]com

A1

CONTENTS OF APPENDIX
APPENDIX A Orders and Opinion on Appeal
And Statutes Involved.
Page
Federal Circuit Order denying rehearing.

A2

Federal Circuit Panel Opinion.

A4

District Court Order on Summary Judgment.

A14

District Court Summary Judgment Opinion.

A15

Statutes Involved

A28

A2

APPENDIX A Orders and Opinion on Appeal

NOTE: This disposition is nonprecedential.

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT
ALLYSON WALLACE, Plaintiff-Appellant
v.
IDEAVILLAGE PRODUCTS CORPORATION,

Defendant-Appellee
2015-1077

Appeal from the United States District Court for the

District of New Jersey in No. 2:06-cv-05673-JAD,
Magistrate Judge Joseph A. Dickson.
ON PETITION FOR PANEL REHEARING AND
REHEARING EN BANC
Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,
MOORE, OMALLEY, REYNA, WALLACH, TARANTO,
CHEN, HUGHES, and STOLL, Circuit Judges.
PER CURIAM.
ORDER
Appellant Allyson Wallace filed a combined
petition for panel rehearing and rehearing en banc.
The petition was referred to the panel that heard the
appeal, and thereafter the petition for rehearing en
banc was referred to the circuit judges who are in
regular active service.

A3

Upon consideration thereof,

IT IS ORDERED THAT:
The petition for panel rehearing is denied.
The petition for rehearing en banc is denied.
The mandate of the court will issue on May
12, 2016.
FOR THE COURT
May 5, 2016

/s/ Peter R. Marksteiner

Peter R. Marksteiner
Clerk of Court

A4

NOTE: This disposition is nonprecedential.

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT
ALLYSON WALLACE, Plaintiff-Appellant
v.
IDEAVILLAGE PRODUCTS CORPORATION,

Defendant-Appellee
2015-1077

Appeal from the United States District Court for the

District of New Jersey in No. 2:06-cv-05673-JAD,
Magistrate Judge Joseph A. Dickson.
March 3, 2016, Decided
Before NEWMAN, DYK, and WALLACH, Circuit
Judges.
NEWMAN, Circuit Judge.
Ms. Allyson Wallace owns U.S. Design Patent
No. D485,990 (the D'990 patent ), for an
"ornamental design for a body washing brush, as
shown and described" in six drawings. Ms. Wallace,
proceeding pro se, sued Ideavillage Products
Corporation for patent infringement in the United
States District Court for the District of New Jersey,
based on the Ideavillage product called the "Spin
Spa." Ideavillage moved for summary judgment of
non-infringement. Ms. Wallace, acting through
appointed counsel, submitted a brief and expert
report in opposition. The district court, reviewing

A5

the record and receiving argument, granted

summary judgment to Ideavillage. For the reasons
set forth below, we affirm the district court's
judgment.
DISCUSSION
We review issues not unique to patent law
under the law of the regional circuit, here the Third
Circuit. Classen Immunotherapies, Inc. v. Elan
Pharms., Inc., 786 F.3d 892 , 896 (Fed. Cir. 2015).
Summary judgment may be granted only if
drawing all reasonable inferences in favor of the
nonmoving party, there is no genuine issue as to any
material fact and the moving party is entitled to
judgment as a matter of law Young v. Martin, 801
F.3d 172 , 177 (3d Cir. 2015) (internal citations and
modifications omitted). In the Third Circuit, the
court reviews the grant of summary judgment de
novo. See AlSharif v. U.S. Citizenship &
Immigration Servs., 734 F.3d 207, 210 n. 2 (3d Cir.
2013) (en banc).
We review issues unique to patent law under the
law of our circuit. The standard for design patent
infringement is summarized in Egyptian Goddess,
Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en
banc), applying the ordinary observer test of
Gorham Manufacturing Co. v. White, 81 U.S. 511 ,
20 L. Ed. 731 (1871):
[T]he ordinary observer test should be the
sole test for determining whether a design
patent has been infringed. Under that test, as
this court has sometimes described it,
infringement will not be found unless the
accused article embod[ies] the patented
design or any colorable imitation thereof.

A6

Egyptian Goddess, 543 F.3d at 678. The ordinary

observer test proceeds in two stages. In some

instances, the claimed design and the accused
design will be 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 . . .
. Id. In other instances, when the claimed and
accused designs are not plainly dissimilar,
resolution of the question 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 . . . . Id.
The district court applied both stages and
determined under both tests that an ordinary
observer would not consider Ms. Wallace's patented
design and the Ideavillage design to be substantially
the same.
A
With respect to the first stage, the district court
highlighted six differences between the Ideavillage
design and the claimed design:
(1) '990 patent has a straight handle, while
the Ideavillage product has a bent or curved
handle;
(2) '990 patent has a finger grip with a hill
and valley design, while the Ideavillage
product has no such finger grip;
(3) '990 patent has a flat threaded opening at
the base of the handle, while the Ideavillage
product has a closed pointed end with an
aperture where a rope can be attached;

A7

(4) '990 patent has a round head with a two

tiered brush, while the Ideavillage product
has an oblong head without a two tier brush;
(5) '990 patent has a protrusion at the back of
the head, while Ideavillage product has a
smooth back without any protrusion; and
finally,
(6) '990 patent has no decoration on the back
of the handle, while Ideavillage product has
an oval at the neck of the handle and an oval
group in the back of the handle.

Wallace v. Ideavillage Products Corp., No. 06-CV5673-JAD, 2014 WL 4637216, at *3 (D.N.J. Sept. 15,
2014) (Dist. Ct. Op.). In granting summary
judgment, the district court
acknowledge[d] manifest differences in the
overall appearance of the '990 patent and the
[Ideavillage] product. Indeed, a comparison
supports a finding that these two designs are
sufficiently distinct and Ms. Wallace cannot,
as a matter of law, prove that the designs
appear substantially the same. To the
ordinary observer, in other words, the two
designs do not look substantially the same.

Id. at *4.
We have compared the D990 patent 's
drawings to the photographs of the accused product
in Ms. Wallace's expert report and agree with the
district court that no reasonable fact-finder would
find them to be substantially the same under the
first stage of the ordinary observer test. The district
court compared the following designs:

A8

A9

A10

The district court properly found that the D'990

patents design and the accused product are plainly
dissimilar. Bath brushes with a generally rounded
head and roughly cylindrical handle were shown in
the prior art, and the curved shape of the handle,
the angled connection between the handle and
brush, the ovoid design of the head, and the surface
details are such that an ordinary observer viewing
both designs would not confuse one product for the
other.
B
In an effort to assure a fair and complete
decision on this record, the district court proceeded
to the second stage of the ordinary observer test.
Dist. Ct. Op. at *4. Comparing the claimed design
with figures from the prior art, U.S. Patent No.

A11

4,417,826 (the '826 Patent), reinforces the district

court's findings under the first stage of the test:

A12

Other prior art views also show the known

characteristics of the design.

The district court found that:

[P]laintiffs '990 patent displays significant
similarities with the design of the '826 patent
. Among other things, each design has a
rounded head and a straight handle with "hill
and valley" finger grip. Each design has a
round protrusion on the backside of the
rounded head.

Id. at *5. The district court properly concluded that

in light of the similarities between the '826 patent

A13

and the '990 patent , . . . no reasonable ordinary

observer, familiar with the prior art, would be
deceived into believing the [Ideavillage] [p]roduct is
the same as the design depicted in the '990 patent .
Id. at *10.
The district court correctly applied the law,
that differences between the claimed and accused
designs that might not be noticeable in the abstract
can become significant to the hypothetical ordinary
observer who is conversant with the prior art.
Egyptian Goddess, 543 F.3d at 678 .
The judgment of non-infringement is
affirmed. Each party shall bear its costs.
AFFIRMED

A14

NOT FOR PUBLICATION

United States District Court,
District of New Jersey.
Allison WALLACE, Plaintiff,
v.

Civil Action no.: No. 06CV5673JAD

IDEAVILLAGE PRODUCTS
CORPORATION, Defendant.

ORDER

DICKSON, U.S.M.J.
This matter comes before the Court upon
Defendant Ideavillage Products Corporation's
(Ideavillage) motion for summary judgment (D.E.
No. 61). The Court conducted a hearing on this
motion on July 15, 2014. Upon careful
consideration of the parties submissions and
arguments, and for the reasons set forth in the
accompanying Opinion, and for good cause shown:
IT IS on this 15th day of September, 2014.
ORDERED that Defendants motion for
summary judgment, (D.E. No. 61), is GRANTED;
and it is further
ORDERED that Plaintiffs Amended
Complaint is dismissed in its entirety and with
prejudice; and it is further
ORDERED that the Clerk of Court shall
close this case.

Joseph A. Dickson

Joseph A. Dickson, U.S.M.J.

A15

NOT FOR PUBLICATION

United States District Court,
District of New Jersey.
Allison WALLACE, Plaintiff,
v.

Civil Action no.: No. 06CV5673JAD

IDEAVILLAGE PRODUCTS
CORPORATION, Defendant.

OPINION

DICKSON, U.S.M.J.
This matter comes before the Court upon
Defendant Ideavillage Products Corporation's
(Ideavillage) motion for summary judgment (D.E.
No. 61).
The Court has reviewed the arguments
raised by the parties in their briefs and at its
hearing on this motion on July 15, 2014. Upon
careful consideration, and for the reasons set forth
below, Defendant's motion for summary judgment
is GRANTED.
I. BACKGROUND1
Plaintiff, Allison Wallace, is the named
inventor of United States Design Patent No.
D485,990 (the '990 patent) for the ornamental
design of a body washing brush. (Defendant's L.
Civ. R. 56.1 Statement of Material Facts (Def.'s
56.1), D.E, No. 612, 2). The '990 patent was

The facts in this section are drawn from the

Parties submissions pursuant to Local Civil Rule 56.1.
Unless otherwise indicated, the facts are not in dispute.

A16

filed on March 17, 2003 and was issued on

February 3, 2004.(Id.) Defendant is the assignee of
United States Design Patent No. D550, 914 (the
'914 patent) for the ornamental design of a hand
held cleaning unit.22 (Declaration of Jason M.
Drangel (Drangel Decl.), D.E. No. 161, 7;
Def.'s 56.1, D.E. No. 612, 3). The '914 patent
was filed on March 6, 2006 and was issued on
September 11, 2007. (Def.'s 56.1, D.E. No. 612,
3). The subject of this action is Defendant's Spin
Spa Product (the IV Product), which was covered
by the '914 patent. (See Def.'s 56.1, D.E. No. 612,
1, 3).
On November 27, 2006, Plaintiff, acting pro
se, initiated the instant action against Defendant
accusing Defendant's Spin Spa Product of
infringing her body washing brush design in the
'990 patent. (See Complaint (Compl.), D.E. No. 1).
II. LEGAL STANDARD
A. Summary Judgment
Summary judgment is appropriate 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). A
fact is material if it might affect the outcome of
the suit under the governing law. Anderson v.

2
Plaintiff alleges no knowledge of this [fact] and the
document speaks for itself. (Plaintiff's Response to
Defendant's R. 56.1 Statement of Material Facts and
Plaintiff's Supplemental Statement of Disputed Material
Facts (Pl.'s 56.1), D.E. No. 631, 3). The '914 patent
named Ideavillage as the patent assignee, (Ex. 2 to Def's
56.1, D.E. No. 615). Therefore, the Court found
Defendant to be the owner of the '914 patent.

A17

Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct.

2505, 91 L.Ed.2d 202 (1986). And a genuine issue

of material fact exists for trial if the evidence is
such that a reasonable jury could return a verdict
for the nonmoving party. Id. The movant bears the
initial burden of establishing that no genuine issue
of material fact exists. Celotex Corp. v. Catrett, 477
U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265
(1986). Where the non-moving party bears the
burden of proof at trial, the moving party may
discharge its burden by showing that there is an
absence of evidence to support the nonmoving
party's case. Id. at 325. If the movant meets this
burden, the non-movant must then set forth
specific facts that demonstrate the existence of a
genuine issue for trial. Id. at 324; see also Azur v.
Chase Bank, USA, Nat'l Ass'n, 601 F.3d 212, 216
(3d Cir.2010). Notably, the evidence of the nonmovant believed, and all justifiable inferences are
to be drawn in his favor. Anderson, 477 U.S. at
255. But the non-moving 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, 106
S.Ct. 1348, 89 L.Ed.2d 538 (1986); see Swain v.
City of Vineland, 457 F. App'x 107, 109 (3d
Cir.2012) (stating that the non-moving party must
support its claim by more than a mere scintilla of
evidence).
B. Design Patent
Inventors with a new, original and
ornamental design for an article of manufacture
may obtain a design patent. 35 U.S.C. 171(a)
(2012). Design patents are fundamentally different
from utility patents because [u]tility patents

A18

afford protection for the mechanical structure and

function of an invention whereas design patent
protection concerns the ornamental or aesthetic
features of a design. Carman Industries. Inc. v.
Wahl, 724 F.2d 932, 939 n. 13 (Fed.Cir.1983).
Pursuant to 35 U.S.C. 171(b), provisions relating
to utility patents shall apply to patents for
designs, unless otherwise provided. Thus, as with
utility patents, whoever without authority makes,
uses, offers to sell, or sells any patented invention,
within the United States or imports into the
United States any patented invention during the
term of the patent therefor, infringes the patent.
35 U.S.C. 271(c).
To determine if an accused object infringes a
design patent, courts apply the following analysis:
In some instances, the claimed design and the
accused design will be 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.... In other instances,
when the claimed and accused designs are not
plainly dissimilar, resolution of the question
whether the ordinary observer would consider
the two designs to be substantially the same
will benefit from a comparison of the claimed
and accused design with the prior art.

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d

665, 678 (Fed.Cir.2008). In other words, there are

two levels to the infringement analysis: a level-one
or threshold analysis to determine if comparison
to the prior art is even necessary, and a second
level analysis that accounts for prior art in less
obvious cases. Wing Shing Prods. (BVI) Co. v.

A19

Sunbeam Prods., Inc., 665 F.Supp.2d 357, 362

(S.D.N.Y.2009) aff'd, 374 F. App'x 956

(Fed.Cir.2010).

For the second-level analysis, the test is

whether an ordinary observer, familiar with the
prior art, would be deceived into thinking that the
accused design was the same as the patented
designnamely, the ordinary observer test.
Egyptian Goddess, 543 F.3d at 672. Since
differences between the claimed and accused
designs ... might not be noticeable in the abstract,
the background prior art provides ... a frame of
reference and highlight[s] the distinctions
between the claimed design and the accused
design. Id. at 677678. While examining the novel
features of the claimed design remained an
important component of the comparison in
analyzing infringement claims, the ordinary
observer test established in Egyptian Goddess does
not allow assigning exaggerated importance to
small differences between the claimed and accused
designs relating to an insignificant feature simply
because that feature can be characterized as a
point of novelty.3 Id. at 677. Instead, [a]n

Prior to Egyptian Goddess, the Federal Circuit

applied a separate point of novelty test from the
ordinary observer test and require[d] the patentee to
point out the point of novelty in the claimed design that
has been appropriated by the accused design. 543 F.3d
at 676. However, a point of novelty test imposes
problems when multiple points of novelty are identified
and the accused of design does not copy all of the points
of novely, even though it may copy most of them and even
though it may give the overall appearance of being
identical to the claimed design. Id. at 677. Moreover,

A20

ordinary observer, comparing the claimed and

accused designs in light of the prior art, will attach
importance to differences between the claimed
design and the prior art depending on the overall
effect of those differences on the design. Id.
Finally, the ordinary observer test is
designed solely as a test of infringement and is
not a test for determining validity. Id. at 678.
Therefore, the patentee bears the ultimate burden
of proof to demonstrate infringement by a
preponderance of evidence, whereas the accused
infringer bears the burden of production of ... prior
art on which the accused infringer elects to rely.
Id. at 67879.
III. DISCUSSION AND ANALYSIS
As a threshold matter, Plaintiff owns a
design patent, not a utility patent. U.S. Design
Patent No. D485,990 (filed Mar. 17, 2003).
Therefore, the scope of the protection offered by her
patent covers only the novel ornamental features of
the Body Washing Brush as depicted in the '990
patent. Plaintiff does not have any ownership right
to the functional nature of the Body Washing
Brush .
The Federal Circuit strongly discourages the
construction of a design patent through a detailed
verbal description of the claimed design, since a
design is better presented by an illustration than it
could be by any description and a description would

application of a point of novelty test may draw the

court's attention on nettlesome and ultimately
distracting issues as whether a new combination of old
design features could constitute one or more points of
novelty. Wing Shing Prods. Co., 665 F.Supp.2d. at 361.

A21

probably not be intelligible without the

illustration. Egyptian Goddess, 543 F.3d at 679
(internal citations and quotation marks omitted).
Although district courts may find it helpful to
point out ... various features of the claimed design
as they relate to the accused design and the prior
art, and courts may still exercise their discretion
regarding the level of detail in verbal description,
the general rule is that the illustration in the
drawing views is its own best description. See id.
at 679680. Following Egyptian Goddess, courts
have generally relied on patent drawings to
construe design claims. See, e.g., Richardson v.
Stanley Works, Inc., 597 F.3d 1288 (Fed.Cir.2010);
Blackberry Limited v. Typo Products LLC, No. 14
cv00023 (WHO), 2014 WL 1318689 (N.D.Cal. Mar.
28, 2014); Wing Shing Prods. Co., 666 F.Supp.2d
357. For the foregoing reasons, this Court will
conduct the analysis based on illustrations.
A. Level One: SidebySide Analysis
Defendant argues that the claimed design
and the accused design are plainly dissimilar
without consulting any prior art. (Defendant's Brief
in Support of Motion for Summary Judgment
(Def.'s Mot. Br.), D.E. No. 611, at 1314).
Plaintiff argues that the claimed design and the
accused product are not sufficiently distinct.
(Plaintiffs Brief in Opposition to Defendant's
Motion for Summary Judgment (Pl.'s Opp'n. Br.),
D.E. No. 63, at 5). The two designs are presented
below:

A22

Plaintiffs `990 Patent

IV Product

Defendant points out six differences between

the two designs;44 1) '990 patent has a straight
handle, while the IV Product has a bent or curved
handle; 2) '990 patent has a finger grip with a hill
and valley design, while IV Product has no such
finger grip; 3) '990 patent has a flat threaded
opening at the base of the handle, white IV Product
has a dosed pointed end with an aperture where a
rope can be attached; 4) '990 patent has a round
head with a two tiered brush, while IV product has

4
Defendant also argues that the claimed design is a
shower attachment with a hollow housing, where the
end or the handle is designed to receive a hose or a water
source. (Def.'s Mot Br., D.E. No. 611, at 14). In
contrast. the accused product is a battery operated, brush
with scaled housing and the end of the handle cannot be
attached to a base or water source. (Id.) The Court finds
that the difference, although plain and apparent,
concerns the function of the product, therefore; is not
within the scope of the design patent protection.

A23

an oblong head without a two tier brush; 5) '990

patent has a protrusion at the back of the head,
while IV Product has a smooth back without any
protrusion; and finally, 6) '990 patent has no
decoration at the back of the handle, while IV
product has an oval at the neck of the handle and
an oval grip in the back of the handle. (Id. at 15
20). In response, Plaintiff argues (hat the
differences ... Defendant profilers are
inconsequential to the overall designs and that
there are striking similarities between the two
designs. (Pl's Opp'n Br., D.E. No. 63, at 6.
Pursuant to the teaching of Egyptian
Goddess, District Courts have granted summary
judgment based solely on comparison between
accused and patented designs, without referring to
prior art. See, e.g., Voltstar Technologies, Inc. v.
Amazon.com, Inc., No. 13 C 5570, 2014 WL
3725860, at *24 (N.D.Ill. Jul.28, 2014); Softool
LLC v. Kmart Corp., No. S103333 (LKK), 2013
WL 2384331, at *1 (E.D.Cal. May 30, 2013); Minka
Lighting, Inc. v. Maxim Lighting Int'l, Inc., No. 06
cv995, 2009 WL 691594, at *7 (N.D.Tex. Mar.16,
2009); Rainworks Ltd. v. MillRose Co., 622
F.Supp.2d 630, 656 (N.D.Ohio 2009); HR U.S. LLC
v. Mizco Int'l, Inc., No. CV072394, 2009 WL
890550, at *13 (E.D.N.Y. Mar. 31, 2009). Here, the
Court acknowledges manifest differences in the
overall appearance of '990 patent and the IV
product. Indeed, a comparison supports a finding
that these two designs are sufficiently distinct and
Ms. Wallace cannot, as a matter of law, prove that
the designs appear substantially the same. To the
ordinary observer, in other words, the two designs
do not look substantially the same.

A24

B. Level Two: Prior Art Comparisons

In an effort to assure a fair and complete
decision on this record, the Court will take the
further step, also taught by Egyptian Goddess, of
comparing the accused and claimed design with the
prior art. See 543 F.3d. at 676. Ms. Wallace
initiated this matter without an attorney. For
various procedural reasons, the case was delayed.
In 2011, this Court concluded Ms. Wallace, a pro se
plaintiff, would be better served by the sua sponte
appointment of counsel. The parties have appeared
for several settlement conferences and counsel for
both parties have patiently and with appropriate
diligence, litigated this matter. Accordingly, I have
concluded that the second level of analysis is
appropriate and necessary to clarify and fully
explicate the Court's findings and conclusions.
Therefore, we move to the level-two analysis.
As pointed out by Defendant, the general
concept of a brush with a handle is covered in
numerous expired patents(Def.'s Mot. Br., D.E.
No. 611, at 2). The Court finds that, since the
marketplace for brushes with handles is rather
crowded, the spirit of Egyptian Goddess wilt be
better served by introducing prior art into the
analysis, See 543 F.3d & at 67677 ([i]t can be
difficult to answer the question whether one thing
is like another without, being given a frame of
reference,). This is especially true when a field is
crowded with many references relating to the
design ..., Id. at 676; cf. Wing Shing Prods, Co.,
665 F.Supp.2d at 363 ([l]n a cluttered world of the
drip-coffeemakers, it seems senseless to attempt to
determine whether the ordinary observer would
confuse two designs without looking to the prior art

A25

for a point of reference.); Fanimation, Inc. v. Dan's

Fan City, Inc., No. 08cv1071, 2010 WL 5285304,
at *3 (S.D.Ind. Dec.16, 2010) ([T]he need lo review
prior art is especially acute where, as here, the
prior art is fairly robust.).
Defendant set forth over 170 patents as
examples of prior art, and identified eight of then
in its brief in support of motion for summary
judgment (Transcript of July 15, 2014 Proceeding
(Jul. 15 Tr.), DE. No. 66. at 19. 2; Def.'s Mot.
Br., D.E. No. 611, at 2124, 31). The primary
prior art is a utility patientUnited States Patent
No. 4,417,826 (the '826 Patent), (Id. 2124). The
'826 Patent was issued in 1983 and was entitled
Liquid Driven Rotary Brush With Liquid Soap
Feeder. U.S. No. 4,417,826 (filed Dec. 24, 1981),
The '826 patent (the prior art), the '990 patent
(Plaintiff's patent) and the IV Product (the accused
design) are shown below:
`826 Patent

Plaintiffs `990 Patent IV Product

A26

Plaintiff's '990 Patent displays significant

similarities with the design of the '825 Patent.
Among other things, each design has a rounded
head and a straight handle with hill and valley
finger grip. Each design has a round protrusion on
the backside of the rounded head.

Egyptian Goddess abolished the element-byelement analysis. See 543 F.3d. at 671. Instead, the

new analysis examines the design as a whole by

requiring the fact-finders to attach importance to
differences between the claimed design and the
prior art depending on the overall effect of those
differences on the design. 543 F.3d. at 677
(emphasis added). The claimed design here is
strikingly similar to the prior art, specifically the
'826 patent And when the claimed design is close
to the prior an designs, small differences between
the accused design and the claimed design are
likely to be important lo the eye of the hypothetical
ordinary observer. Id. at 676. The similarities
between the '990 claimed patent and the '826 prior
an patent are remarkable, Those similarities
highlight the difference between the claimed
patent and defendant's '914 patent, or IV product.

In light of the similarities between the '826

patent and the 990 patent, the Court concludes
that no reasonable ordinary observer, familiar with
the prior art, would be deceived into believing the

A27

IV Product is the same as the design depicted in

the '990 patent.
IV. CONCLUSION
For the foregoing reasons, Idealvillage
Products Corporation's Motion for Summary
Judgment (D.E. No. 61) is GRANTED. An
appropriate form of Order accompanies this
opinion.

Joseph A. Dickson

Joseph A. Dickson, U.S.M.J.

A28

STATUTES INVOLVED
35 U.S.C. 289 is the section of the 1952
Patent Act5 that applies primarily to the questions
presented in this petition. In relevant part, 289
provides an Additional Remedy for Infringement of
Design Patent, for proof of the following:
35 U.S.C. 289. Additional remedy
for infringement.
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
It deserves mention that or any colorable
imitation was not in the Patent Act when this
Court decided Gorham Mfg. Co. v. White, 81 U.S. (14
Wall.) 511, 528, 20 L. Ed. 731 (1871). The Patent Act
of 18876 added that term (apparently based on
Gorham Mfg., 81 U.S. at 530), as follows:
1. Hereafter, during the term of letters
patent for a design, it shall be unlawful for
any person other than the owner of said letters

Act of July 19, 1952, ch. 950, 66 Stat. 805.

6
Act of Feb. 4, 1887, ch. 165, 24 Stat. 387, 388.

A29

patent, without the license of such owner, to

apply the design secured by such letters
patent, or any colorable imitation thereof, to
any article of manufacture for the purpose of
sale, or to sell or expose for sale any article of
manufacture to which such design or colorable
imitation shall, without the license of the
owner, have been applied, knowing that the
same has been so applied. Any person
violating the provisions, or either of them, of
this section, shall be liable in the amount of
two hundred and fifty dollars, he shall be
further liable for the excess of such profit over
and above [that sum, the full amount
recoverable] either by action at law or upon a
bill in equity for an injunction to restrain such
infringement.
Also pertinent to the questions presented here
is 35 U.S.C. 171, which conforms design patent
practice and protection to that for utility patent.
171 Patents for designs.
Whoever invents any new, original and
ornamental design for an article of
manufacture may obtain a patent therefor,
subject to the conditions and requirements of
this title.
The provisions of this title [Title 35]
relating to patents for inventions shall apply
to patents for designs, except as otherwise
provided.