A Pencil Copying A Pencil Copying A Pencil: Patented Design Intentionally Resembling A No. 2 Pencil Not Infringed by Copycat
| June 3, 2020
Lanard Toys Limited v. Dolgencorp LLC
May 14, 2020
Before Lourie, Mayer, and Wallach (Opinion by Lourie)
Summary
Where a design patent claims an ornamental design that intentionally resembles a common object having a well-known appearance and well-known functional features, such as a No. 2 pencil, the smaller differences in the design take on greater significance in determining not only the scope, but also infringement, of the design patent. The theory of infringement of a design patent cannot be based solely on design elements that are already known in the prior art or that are functional.
Details
Lanard Toys Limited (“Lanard”) is perhaps better known for its long-lasting, massively produced lines of The Corps! action figures, which were marketed as the more affordable alternatives to the G.I. Joe action figures.
But (unfortunately) these action figures are not the toy at issue in Lanard’s dispute with Ja-Ru, Inc. (“Ja-Ru”), a fellow toymaker; Dolgencorp LLC, a distributor; and Toy “R” Us-Delaware, Inc., a toy retailer.
Rather, the toy at issue is a chalk holder in the shape of an oversized, No. 2 pencil that can hold pieces of colored chalk for children to draw on sidewalks.
From 2011 to 2014, Dolgencorp distributed, and Toys “R” Us sold, Lanard’s “chalk pencils”. Then, in 2013, Ja-Ru began marketing its own chalk holder. Ja-Ru admitted during litigation that they had used Lanard’s chalk pencil as a reference for designing and developing their product. Beginning with the 2014 toy season, Dolgencorp and Toys “R” Us stopped ordering Lanard’s chalk pencils, and began offering Ja-Ru’s product instead.
Lanard owns U.S. Design Patent No. D671,167 (“D167 patent”), titled “chalk holder” and claims the “ornamental design for a chalk holder”.
Reproduced below (from left to right) are representative Figure 1 from the D167 patent, Lanard’s chalk pencil, and Ja-Ru’s chalk pencil:
Lanard sued Ja-Ru, Dolgencorp, and Toys “R” Us for design patent infringement.[1] When the parties cross-moved for summary judgment on the question of infringement, the district court sided with Ja-Ru, granting summary judgment that Ja-Ru’s product did not infringe Lanard’s D167 patent. Lanard appealed.
On appeal, Lanard challenges the district court’s claim construction, asserting that the district court erroneously eliminated design elements from the scope of the D167 patent. Second, Lanard challenged the district court’s infringement analysis as failing to comport with the “ordinary observer” test.
The Federal Circuit rejected both of Lanard’s challenges, and adopted the district court’s determinations basically without modification on every one of Lanard’s contentions
Claim construction
Design patents “typically are claimed as shown in drawings”.[2] Functional characteristics in a design may limit the scope of protection, as “the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.”[3]
Further, the construction of a design patent involves identifying “various features of the claimed design as they relate to the accused design and the prior art.”[4] Prior art may be especially important in revealing the functionally necessary design elements, where “[e]very piece of prior art identified by the parties that incorporates similar elements configures them in the exact same way.”[5] Those elements represent the “broader general design concepts” that are excluded from design patent protection.
Here, Lanard argues that the district court improperly eliminated elements of the claimed designed based on functionality or lack of novelty.
The Federal Circuit, to the contrary, finds no fault with the district court’s claim construction, going so far as to note approvingly that the district court “followed our claim construction directives to a tee.”
The Federal Circuit appreciates that the district court meticulously factored out the functional “general design concepts” in Lanard’s claimed design:
- the conical tapered piece for holding the chalk in place during use;
- the wide and elongated body for storing the chalk and for the user to grasp;
- the ferrule attaching the eraser to the body of the chalk holder; and
- the eraser.
The Federal Circuit agrees with the district court that the elements listed above are common to No. 2 pencils, and are indeed utilitarian concepts that are found in every piece of writing utensil-related prior art cited during prosecution.
The Federal Circuit also agrees with the district court’s identification of the protectable ornamental elements in the D167 patent:
- the size and angle of taper of the conical piece;
- the hexagonal shape of the body
- the specific grooves on the ferrule;
- the columnar shape of the eraser; and
- the precise proportions of the various design elements relative to each other.
Before the district court, Lanard argued that the prior art does not combine the elements of a pencil with a chalk holder. The district court found Lanard’s argument to be unavailing, and the Federal Circuit agrees wholeheartedly.
Lanard’s argument is analogous to arguing that the intended use of an invention in a utility patent distinguishes the invention over the prior art. Such an argument can be difficult to make for a utility patent, and even more so in the context of a design patent. And the district court concluded as much.
Lanard’s patented design, as shown in the drawings, deliberately mimics a No. 2 pencil. The drawings do not differentiate between a toy and an actual pencil. Further, Lanard’s argument contains an implicit admission that elements of the D167 patent were taken from well-known designs for pencils. If, as Lanard asserted, the intended function was the only difference between Lanard’s design and the prior art, then Lanard’s design would not be patentable. The district court based its infringement analysis on the assumption that the D167 patent was valid.
On a side note, I believe this case is distinguishable from the Federal Circuit’s recent decision in Curver Luxembourg, SARL v. Home Expressions Inc. (Fed. Cir. 2019) (case reviewed presented by Sung-Hoon Kim). In Curver,the Federal Circuit limited the scope of the claimed design (i.e., a pattern for a surface ornamentation) to the article of manufacture recited in the claim (i.e., a chair). However, the Federal Circuitalso noted that they were confronted with an atypical situation in Curver, because in most design patents, the drawings themselves depict a particular article of manufacture. Because the drawings in D167 patent identify the article of manufacture, Curver unlikely would have helped Lanard’s claim construction argument.
Infringement
The “ordinary observer” test for design patent infringement requires a comparison of the similarities in overall designs, not similarities of ornamental features in isolation. Under the “ordinary observer” test, courts may discount functional elements, but the analysis must focus on “how [the ornamental features] impact the overall design.”[6]
As in claim construction, the infringement analysis cannot ignore the prior art:
[T]he ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art. When the differences between the claimed and accused design are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that different from the prior art. And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.[7]
In this case, the district court determined that as compared to Lanard’s claimed design, Ja-Ru’s chalk pencil had:
- a more rotund and more stunted body;
- a shorter, more gradually sloping, and ridged conical piece; and
- a ferrule with a different pattern.
The district court concluded that, based on those distinctions, an ordinary observer would not consider Ja-Ru’s chalk pencil to have the same design as claimed in the D167 patent.
On appeal, Lanard argues that the district court’s infringement analysis compared the designs on an element-by-element basis, rather than comparing their overall appearances. Lanard also argues that the district court focused on features that distinguished the claimed design over the prior art, so that the district court was in effect reverting to the now-defunct “point of novelty” test. The “point of novelty” test would have asked whether Ja-Ru had stolen the novel aspects of Lanard’s patented design that distinguished it from the prior art.
The Federal Circuit rejects both of Lanard’s arguments.
As the district court noted, and which the Federal Circuit agrees, the problem for Lanard is that the asserted design similarities between the claimed design and Ja-Ru’s product stem from aspects of the design that are either functional or well-established in the prior art.
Lanard wants the district court and the Federal Circuit to find infringement on the basis that Ja-Ru’s product and the claimed design share the overall appearance of a No. 2 pencil. But this is precisely the argument that Lanard should not make.
Any aspect of Lanard’s claimed design that relates to the function of a No. 2 pencil or the conventional, well-known appearance of a No. 2 pencil are not patentable, and as such, are excluded from the scope of the design patent during claim construction and cannot be the basis for establishing infringement.
Lanard’s argument is made weaker by the ubiquity of No. 2 pencils. The Federal Circuit agrees with the district court’s finding that, because of the crowdedness of the field of pencils or writing utensils in general, the ornamental features in Lanard’s claimed design which are not dictated by function and which are not in the prior art take on greater significance. Far from being inconsequential and minor, those ornamental distinctions would dominate an ordinary observer’s attention when evaluating the overall appearances of Ja-Ru’s product and Lanard’s claimed design. The Federal Circuit agrees with the district court that those ornamental distinctions are sufficient to preclude a finding of infringement.
What troubles the district court and the Federal Circuit especially is what they perceive to be an attempt by Lanard to monopolize the basic design concepts underlying a pencil. They believe that Lanard’s arguments, if accepted, would “exclude any chalk holder in the shape of a pencil and thus extend the scope of the D167 patent far beyond the statutorily protected ‘new, original and ornamental design’.”
Takeaway
- In a crowded art, the devil and God are in the detail. The nuances in a design can take on greater significance where the article of manufacture embodying the design (or the article of manufacture that the design is intended to resemble) has a well-known appearance.
- While the scope of a design patent is limited to the drawings, courts during litigation have often relied on “verbal descriptions” of the claimed design to construe the claim. Be strategic about those verbal descriptions. For example, a quick review of the prior art cited during prosecution suggests that Lanard’s claimed design and the design of Ja-Ru’s chalk pencil may be closer to each other than to the cited prior art—in that case, Lanard might have offered a verbal description of the D167 patent drawings that downplayed the differences between those drawings and Ja-Ru’s chalk pencil, and still distinguished over the prior art.
- Drawings in a design patent application should reflect the intended function of the claimed design. A potential weakness in Lanard’s design patent may be that the drawings look too much like the article of manufacture (i.e., No. 2 pencil) that the claimed design is intended to resemble. If Lanard’s intention was to claim an oversized, toyish rendition of the No. 2 pencil, perhaps the patent drawings could have better emphasized the exaggerated proportions of the various chalk holder parts relative to each other.
[1] Lanard also alleged copyright and trade dress infringement, but this review will focus only on the design patent issues.
[2] Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008).
[3] Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1320 (Fed. Cir. 2016).
[4] Egyptian Goddess, 543 F.3d at 680.
[5] Richardson v. Stanley Works, Inc., 610 F.Supp.2d 1046, 1049 (D. Ariz. 2009), aff’d 597 F.3d 1288 (Fed. Cir. 2010).
[6] Richardson, 597 F.3d at 1295.
[7] Egyptian Goddess, 543 F.3d at 671.
