In a recent memorandum order, Judge Sue L. Robinson denied a defendant’s motion for reconsideration of an earlier denial of a motion for judgment on the pleadings. Poly-America, L.P. v. API Indus., Inc., Civ. No. 134-693-SLR (D. Del. Aug. 6, 2014). In its earlier motion for judgment on the pleadings, the defendant argued that its household product design was “plainly dissimilar” to the plaintiff’s design such that it could not, as a matter of law, infringe the plaintiff’s design patent. The Court disagreed in a decision discussed here. In its motion for reconsideration, the defendant argued that the “ordinary observer” to whom an accused design may appear “substantially the same” is not an observer of the finished product sold in a store, as the Court believed, but instead is “the industrial purchaser that uses that packaging component to assemble a finished retail product with content.”
The Court disagreed, relying on Supreme Court precedent from 1871 explaining that “ordinary observers of a patented design [are] ‘the principle purchasers of the articles to which designs have given novel appearances,’ i.e., ‘those who buy and use’ the article bearing the design in question.” Id. at 2 (quoting Gorham Mfg. Co. v. White, 81 U.S. 511 (1871)). The Court acknowledged that later cases in the Federal Circuit had not specifically addressed the factual scenario at issue here (where the design patent covers a box containing product that the consumer purchases based at least in part on the design of the retail presentation), but disagreed with the defendant that the previous ruling was erroneous as a matter of law. Id. at 5.