DESIGN PATENT OWNER GETS SCREWED

In Simpson Strong-Tie Company v. Oz-Post International (dba OZCO Building Products), (2019 WL 6036705, N.D. Cal., November 14, 2019), the district court found that Simpson’s accused design did not infringe OZCO’s U.S. Pat. No. D798,701. Shown below are two figures from the ‘701 patent next to two views of the alleged infringing design (the court’s figures shown below erroneously identify OZCO’s patent as the ‘901 patent).

091 Fig. 5 and accused product FIG.png
091 Fig. 1 and accused product FIG.png

In analyzing infringement, the judge found that “No reasonable juror could find that a consumer might be deceived into purchasing the Accused Products believing them to be the patented design.”  It was conceded by the patentee OZCO that its patented design did not include the screw shaft.  There were other relatively minor differences between the patented design and the accused products. 

OZCO argued that the screw shaft is a purely functional feature and should be disregarded in determining infringement. The court said that “courts ignore functional features not of accused products but instead of the patented design”, curiously citing the Federal Circuit’s Coleman v. Sport Dimension decision which actually said just the opposite, i.e., that functional features should be considered insofar as they contribute to the design’s overall ornamentation. 

The court then said that the screw distinguished the accused product from the patented design, saying “It would be impossible for an ordinary observer to miss the presence of the screw…”  Remarkably, it then stated that Simpson’s screw was sold separately from the hex head washer – a fact that should have ended the discussion about whether the screw was a distinguishing feature.

The major error of the court was its finding that the presence of the screw in the accused products mattered in infringement analysis.  Federal Circuit precedent holds otherwise.  For example, in Advantek v. Orion, a 2018 decision, the patentee asserted its design patent D715,006 for a Gazebo against the defendant’s Pet Companion Product.  The two designs are shown side-by-side below.

Advantek Pg 7 Fig.jpg

Although the major issue in Advantek was prosecution history estoppel, the argument was raised by the defendant that their product was sold with a cover, whereas the patented design did not include a cover.  This is directly analogous to the situation in Simpson v. OZCO.   The Federal Circuit, in a precedential decision, said:

Advantek elected to patent the ornamental design for a kennel with a particular skeletal structure. A competitor who sells a kennel embodying Advantek’s patented structural design infringes the D’006 patent, regardless of extra features, such as a cover, that the competitor might add to its kennel.

If infringers could escape liability by simply hanging an extra element onto the accused product, design patents would become irretrievably useless.