Judge Sue L. Robinson recently denied defendant’s motion for judgment on the pleadings based on the argument that defendant’s “cardboard box design is ‘not substantially similar’ to the patented design.” Poly-Am., L.P. v. API Indus., Inc., C.A. No. 13-693 (D. Del. Apr. 10, 2014). Judge Robinson compared the accused and patented designs to conclude that they are not “plainly dissimilar.” Id. at 3. To reach this conclusion, Judge Robinson applied the standard from Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008). In particular, a patentee cannot meet its burden of proving that the two designs “would appear ‘substantially the same’ to the ordinary observer” if the claimed and accused designs are sufficiently distinct.” Id. at 2. However, if the claimed and accused designs are not “plainly dissimilar, resolution of the question whether the ordnary 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. Further, if a design contains both ornamental and functional features, the court may “‘separate the function and ornamental aspects’ because the scope fo the design claim ‘must be construed in order to identify the non-functional aspects of the design as shown in the patent.'” Id. (quoting Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010).
Judge Robinson disagreed with defendant that certain features of the accused design were different than the patented design. In particular, defendant argued that the accused design had bottom flaps rather than a solid bottom. Id. at 3. Judge Robinson held that “[t]he solid bottom cannot be a design difference that renders the accused product substantially dissimilar because it is not an ornamental design feature.” Id. (citing Egyptian Goddess, 543 F.3d at 680). Judge Robinson also rejected defendant’s argument that “the accused design has no top flaps with no tabs and no slots.” Id. Judge Robinson noted that “an ordinary observer does not watch the box being formed in the manufacturing facility but, instead, sees the box when it is merchandised in the store. The ordinary observer, therefore, would not observe the tabs and slots, as the box top remains closed during the normal use of the container.” Id. Judge Robinson also found that there remained issues of fact whether certain features of the accused design, such as the perforated opening of the accused design is a relevant difference, such that “an ordinary observer would acutally open the accused box to its full extent if not necessary to reach the product.” Id. at 4. Judge Robinson also declined to find as a matter of law that the “overall visual differences between the accused design and patented design are greater than the differences between the patented design and the prior art.” Id. at 6. (citing Egyptian Goddess, 543 F.3d at 678).