The U.S. International Trade Commission (ITC) handed down an Initial Determination that a certain line of sofas – the Amelio line manufactured by the Respondent Krug, Inc. – did not infringe U.S. Pat. No. D716,576 (the ‘576 patent) owned by the Complainant Sauder Manufacturing Company.  See In the Matter of Certain Convertible Sofas and Components Thereof, Inv. No. 337-TA-1122 (USITC, July 12, 2019).

Following are FIGS. 3 and 8 of the ‘576 design patent that illustrates a sofa with two upholstered seating areas, each bordered with a vertical armrest, and separated by a flat table member.





And following is a photo of an exemplary accused product:


In its extensive analysis, the ITC got one or two things right.  For example, in analyzing infringement, it cited the Federal Circuit’s Ethicon case, 796 F.3d 1312, 1327 (2015), for the proposition that “functional elements cannot be entirely factored out of a patented design when performing an infringement analysis”, noting that the “fact finder cannot ignore the depicted ornamental aspects of functional elements appearing in the design claim”.

However, it also micro-examined similarities and differences between the patented and accused designs.  It spent 7 full pages noting just about every single difference between the claimed design and the accused design, such as the seat cushion of the ‘576 design wraps in front of the arm, whereas in the accused design the arm extends to the front face of the seat.   

After its exhaustive micro-examination of just about every element of the sofas, it concluded that “the two designs at issue here are plainly dissimilar”. 

But, it did not consider any prior art.  At all.

I have often noted that a conclusion that two designs are “plainly dissimilar” robs the finder of fact from the possibility of concluding that they are substantially the same in view of the prior art.  The ITC ignored its own earlier pronouncement where it quoted the seminal Egyptian Goddess case:  “For purposes of design patents, an ‘ordinary observer’ is one who is familiar with the prior art.  Egyptian Goddess, 543 F.3d at 677.”

This is in spite of the fact that the Respondent Krug in its Verified Response to the Complaint alleged that the ‘576 design was anticipated or made obvious by DE Pat. No. 1790544U (DE ‘544).   The DE ‘544 patent was the only prior art asserted in Krug’s Response that showed a retractable table between two seating surfaces that can also be used for a sleeping surface. Clearly, Krug believed that the DE ‘544 patent was quite close to the ‘576 design. 

What if the ITC had actually considered the prior art DE ‘544 patent in determining infringement, as mandated by Egyptian Goddess?

Shown below are representative figures comparing the ‘576 patented design, the accused Krug design, and the DE ‘544 patent.


’576 Patented Design


Accused Krug Design


Prior Art DE ‘544

Clearly, and without any doubt, the appearance of the ‘576 patented design and the accused design are closer to each other – much closer – than either is to the DE ‘544 patent.  Under normal circumstances, a reasonable finder of fact could easily conclude that the accused design was substantially the same in overall appearance as the patented design. 

One must keep in mind that in an infringement determination the comparison of the patented and accused design is made by “an ordinary observer”.  This is because, as noted by the seminal 1871 Supreme Court case of Gorham v. White, if the comparison was made by an expert, no design patent would ever be infringed, since experts will see many more details than an ordinary observer.  Apparently, the ITC put itself in the role of an expert, noting every jot and tittle in its comparison of the patented and accused designs.  This was directly contrary to Gorham v. White and Egyptian Goddess.

Maybe the fault lies with the Respondent.  The pleadings in this case are mostly confidential, and not accessible.  Thus, it’s not clear whether Respondent failed to raise this issue, or this was simply an error by the Commission.

It’s too bad that after all these years, the prior art can be ignored in analyzing design patent infringement.