Patent Federal Circuit Update

May 2002

KAYE SCHOLER

FEDERAL CIRCUIT REVIEW

Infringement of a Patented Design Must Be Based On the Substantial Similarity Between the Patented Features and Those of the Accused Product During the Entire Normal Use Lifetime of the Product

In Contessa Food Products, Inc. v. Conagra, Inc., No. 01-1157 (March 13, 2002), the Federal Circuit Court of Appeals held in a design patent infringement case that the "ordinary observer" test, in which a court determines whether an accused product is "substantially similar" to a patent-ed design, (1) must encompass the features of all of the figures of the design patent, and (2) must consider features visible at any time in the "normal use" lifetime of the accused product.

Contessa owns Design Patent No. 404,612, entitled "Serving Tray with Shrimp." The patent includes five figures showing the top, side, perspective, bottom, and cross-sectional views of a shrimp serving tray. Conagra sells prepackaged shrimp on a serving tray, generally wrapped in plastic. After view-ing photographs of the accused products in which the undersides of the trays were admittedly not actually visible because the undersides were covered by plastic wrapping and an opaque label displaying thawing instructions, ingredients, and nutritional information, and admitting that the photographs did not clearly convey the appearance of the accused products, the district court granted Contessa summary judgment of infringement because the accused products were substantially similar to the patented design and appropriated the point of novelty of the design.

In reviewing the district court's application of the "ordinary observer" test, the Federal Circuit noted that the district court did not examine the undersides of the accused products because they were covered by plastic wrapping and an opaque label. The district court apparently had not considered the figure in the patent showing the underside and had limited its analysis to those features visible at the point of sale, rather than those features visible during the entire "normal use" lifetime of the accused product.

Reviewing the lower court, the Federal Circuit held that because a patented design is defined by all of the figures in the patent, the "ordinary observer" test "is not limited to the ornamental features of a subset of the drawings, but instead must encompass the claimed ornamental features of all figures of a design patent." Consequently, the district court had erred by not considering the patent figure showing the underside of the shrimp tray.

The Federal Circuit also held that because the "ordinary observer" analysis must be applied during "normal use" of the product, and that "normal use" extends over the article's entire life, the infringement analysis "is not limited to those features visible at the point of sale, but instead must encompass all ornamental features visible at any time during normal use of the product." The district court therefore also had erred by not considering the similarity of the accused tray to the patented design after the wrapping is taken off during normal use so that the tray's underside is visible to the ordinary purchaser.

Federal Circuit Upholds Patentability of Claim Reciting a Measured Physical Property Which Distinguished Claim Over the Prior Art

In In re Glaug, 00-1571 (March 15, 2002), the Federal Circuit Court of Appeals reversed the decision of the Board of Patent Appeals and Interferences (the "Board") rejecting as obvious all of Glaug's claims for a method of making disposable baby training pants. Glaug's improvement over the prior art consisted of: 1) placing the adhe-sive that holds the waist-elastic of the training pants at selected spaced-apart zones, 2) forming a waist-elastic system having an average maximum magnitude of decay significantly less than in other commercial training pants; and 3) folding the edge of the pants fabric over the elastic.

The Board had upheld the examiner's rejection of all of the Glaug application claims as prima facie obvious over two U.S. patents relating to disposable baby pants, Nomura (U.S. Pat. No. 5,147,487) and Magid (U.S. Pat. No. 3,225,765). The Board found that Nomura suggested "intermittent" spacing of the adhesive for the waist-elastic, and that the magnitude of decay of Glaug's claim 1 is inherent in the structure and not patentable. Additionally, the Board found that Magid taught a fold or hem of fabric over the elastic at the waist and legs of the baby pants and concluded that it would have been obvious to place the Magid hem over the Nomura elastic. Finally, the Board found that Glaug's evidence of superior results was inadequate to rebut the prima facie case of obviousness.

Adhesive Zones

The prior art Nomura reference states that "the adhesive zones may be applied with adhesive continuously extending overall on these zones, or in a plurality of dots, intermittent lines, or helical lines." The Board noted that both Nomura and Glaug use the word "intermittent" in describing adhesive, and thus, Glaug's placement of adhesive zones is taught by or would have been obvious from the Nomura reference.

The Federal Circuit, finding that Nomura described a different structure from that claimed by Glaug, held that Nomura did not present a prima facie case of obviousness of the placement of the adhesive in Glaug's invention. Noting that a "general term must be understood in the context in which the inventor presents it," and that the "word 'intermittent' is susceptible of various meanings, and the inventor's lexicography must prevail," the Federal Circuit found that the term "intermittent" was used differently in the Glaug and Nomura specifications. Specifically, the Federal Circuit held that Nomura's "usage of 'intermittent' does not suggest the presence of zones entirely free of adhesive." The Federal Circuit explained that Nomura's specification "makes clear that his process requires broad contact between the elastic and the adhesive, with illustrations of continuous zones of adhesive that fix the fabric to the stretch...