Amini Innovation Corp. v. Anthony California, Inc. , 211 F. App'x 938 ( 2007 )

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NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
06-1096, -1129
AMINI INNOVATION CORPORATION,
Plaintiff-Appellant,
v.
ANTHONY CALIFORNIA, INC.
and JAMES CHANG,
Defendants-Cross Appellants.
Daniel M. Cislo, Cislo & Thomas LLP, of Santa Monica, California, argued for
plaintiff-appellant. With him on the brief were Mark D. Nielsen, and Kelly W.
Cunningham.
Ronald Mark St. Marie, Chan Law Group LLP, of Los Angeles, California, for
defendants-cross appellants. With him on the brief were Thomas T. Chan, and Lisa A.
Karczewski.
Appealed from: United States District Court for the Central District of California
Judge S. James Otero
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
06-1096, -1129
AMINI INNOVATION CORPORATION,
Plaintiff-Appellant,
v.
ANTHONY CALIFORNIA, INC.
and JAMES CHANG,
Defendants-Cross Appellants.
__________________________
DECIDED: January 8, 2007
__________________________
Before LOURIE, RADER, and SCHALL, Circuit Judges.
SCHALL, Circuit Judge.
DECISION
Amini Innovation Corp. (“Amini”) sued Anthony California, Inc. and James Chang
(collectively, “Anthony”) in the United States District Court for the Central District of
California, alleging infringement of its United States Design Patent No. D488,936 (the
“’936 patent”). Anthony denied infringement and asserted the affirmative defenses of
(1) invalidity by reason of indefiniteness; (ii) invalidity for failure to name all of the joint
inventors; and (iii) unenforceability by reason of inequitable conduct before the United
States Patent and Trademark Office. The district court granted Anthony’s motion for
summary judgment of non-infringement and entered judgment accordingly. Amini
Innovation Corp. v. Anthony Cal., Inc., No. CV 04-9369 (C.D. Cal. Oct. 13, 2005).
Anthony also moved for summary judgment on its affirmative defenses. The district
court denied the motion without entry of judgment, in part apparently because it
perceived disputed issues of material fact. Because we conclude that there are genuine
issues of material fact as to whether Anthony’s accused product infringes the ’936
patent, we reverse the grant of summary judgment and remand the case to the district
court for further proceedings.1
DISCUSSION
I.
Amini’s patented design is a dresser with a center cupboard, a center drawer
over the cupboard, four drawers on each side of the center cupboard and drawer, and
an attached mirror. The design includes stylistic characteristics such as (1) a shaped
mirror frame, (2) scrollwork at the apex of the mirror and around the perimeter of the
mirror, (3) a shaped bottom portion of the dresser (“apron”) with scroll work along the
apron, (4) banded carvings underneath the top of the dresser, (5) shaped legs with
scrollwork along the length of each leg, ending at and including a knob-like structure, (6)
rear lion’s paw feet at the end of the rear legs, and (7) front five-toed lion’s paw feet at
the end of the front legs. A side profile of the dresser presents a simple rectangular
1
At oral argument, counsel for Amini acknowledged that Anthony’s
affirmative defenses had not been resolved on summary judgment and that, if we
reversed the district court’s grant of summary judgment of non-infringement, Anthony
would be able to assert those defenses on remand.
06-1096, -1129 2
side panel and a bracketed scroll along the bottom side of the apron connecting the
front and back feet. The top of the dresser is shaped and has a corresponding shaped
marble insert. Anthony’s accused design is a dresser with a center cupboard, four
drawers on each side of the center cupboard and drawer, and an attached mirror. The
accused dresser includes stylistic characteristics similar to Amini’s patented design.
II.
“A design patent protects the non-functional aspects of an ornamental design as
seen as a whole and as shown in the patent.” Keystone Retaining Wall Sys., Inc. v.
Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993). In a recent suit between the
same parties, we explained that:
An ordinary observer test governs design patent infringement: “[If] in the
eye of an ordinary observer, giving such attention as a purchaser usually
gives, two designs are substantially the same, if the resemblance is such
as to deceive an ordinary observer, inducing him to purchase one
supposing it to be the other, the first one patented is infringed by the
other.” Gorham Co. v. White, 14 Wall. 511, 81 U.S. 511, 528 (1871). In
addition, the accused design must appropriate the novel ornamental
features of the patented design that distinguish it from the prior art.
Oakley, Inc. v. Int’l Tropic-Cal, Inc., 923 F.2d 167, 169 (Fed. Cir. 1991).
Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2006)
(alteration in original). With respect to the ’936 patent, the district court found that:
Here, the patented design includes, but is not limited to, the
following ornamental features: (1) a reverse curve of the bottom rail of the
mirror in elevation that creates a void between the mirror and dresser; (2)
a medial carved rail that divides the dresser doors (i.e., cupboard), which
have a flat profile on the upper panels thereof, such that the doors have
two separate, floating raised panels in each door with a reverse-curve
foliate scrolls carved in the rail that separates the upper and lower panels
in each door; and (3) a central drawer over the dresser cupboard.
Amini, slip op. at 6. In granting summary judgment of non-infringement, the district
court found it significant that the three noted elements are missing from Anthony’s
06-1096, -1129 3
accused design. It thus held that Anthony’s design could not be found to meet the
requirements of the ordinary observer test. Id. The district court further found that
Amini had failed to offer sufficient evidence that the ordinary observer test would be met
because Amini had not “submit[ted] evidence showing that an ordinary observer would
buy the accused product believing it to be the patented piece.” Id. at 7. The district
court—relying on Amini’s expert’s statement that the dresser design was influenced by,
and incorporated, classic elements used in furniture design—also found that Amini
failed to “offer evidence that any of its ornamental designs are novel.” Id. Presumably,
in the view of the district court, this made it impossible for Anthony to “appropriate the
novel ornamental features of the patented design that distinguished it from the prior art,”
since there were no such novel ornamental features.
III.
Summary judgment is appropriate when there is no genuine issue as to any
material fact and the moving party is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56(c); Celotex Corp. v. Cartrett, 477 U.S. 317, 322 (1986). This court reviews
the grant of summary judgment by the district court de novo. Contessa Food Prods.,
Inc. v. Conagra Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002). We agree with Amini that
the district court erred in granting summary judgment because under the correct
infringement analysis there are genuine issues of material fact.
As noted, in applying the ordinary observer test, the district court focused on
three specific features of the patented design. According to the district court, because
these features were not present in the design of the accused Anthony product, the
Anthony product did not infringe the ’936 patent. In its approach, however, the district
06-1096, -1129 4
court mistakenly analyzed each design element of the dresser individually instead of
analyzing the design as a whole from the perspective of an ordinary observer. See
Contessa, 282 F.3d at 1379 (explaining that the patented and accused designs do not
have to be identical in order for design patent infringement to be found and that what is
controlling is the appearance of the design as a whole in comparison to the accused
product). The district court’s analysis is akin to the “element-by-element comparison”
criticized in Amini, 439 F.3d at 1372. Comparing the overall visual appearance of
Amini’s dresser with Anthony’s dresser, we are not prepared to say that a jury could not
reasonably conclude that Anthony’s accused design is similar enough in ornamental
appearance to Amini’s design that an ordinary observer would be likely to purchase one
dresser thinking it was the other.
Additionally, we think that the district court erred in finding Amini’s evidence
insufficient to prove infringement. Amini provided the ’986 patent and photographs of
the accused dresser. This was sufficient to raise a genuine issue of material fact as to
whether an ordinary observer would be likely to purchase one dresser thinking it was
the other. See Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992)
(finding that substantial evidence supported jury’s finding of infringement when the only
evidence of record was the patent’s design and the patented and accused products
themselves).2
2
Amini also offered testimonial evidence of actual confusion between the
two pieces of furniture by an Amini sales representative. Evidence that an ordinary
observer has actually been deceived by an accused design is not necessary to a finding
of infringement because a panel of jurors is a panel of ordinary observers capable of
making factual determinations as to whether they would be deceived. See Braun, 975
F.2d at 821. However, the unrebutted testimony of actual confusion may be evidence
06-1096, -1129 5
Finally, we think that the district court also erred in finding on summary judgment
that Amini’s invention lacked novelty. In its opposition to summary judgment, Amini
provided the ’936 patent, its prosecution history, the cited prior art, and specific
contentions as to the asserted points of novelty of the ’936 patent and how the accused
dresser appropriated the novel features of the dresser design. This was sufficient to
raise a genuine issue of material fact as to novelty. See, e.g., Bernhardt, L.L.C. v.
Collezione Europa USA, 386 F.3d 1371, 1384 (Fed. Cir. 2004) (“[W]hen the points of
novelty can be discerned from the patent, its prosecution history, the cited prior art, and
the patentee’s contentions, any additional evidence, such as expert testimony, is not
necessary to establish the points of novelty.”).
In finding that the patented design lacked novel features, the district court relied
on Amini’s expert’s statement that the dresser design was influenced by, and
incorporated, classic elements used in furniture design. Amini, slip op. at 7–8.
However, a furniture design feature may be influenced by an existing style yet still be a
novel interpretation of that style. For example, Amini identified the five-toed lion’s paw
feet as a novel feature of the dresser. The district court stated that the five-toed lion’s
paw was not novel because “most cats have five toes on each forepaw, so the idea of a
five-towed paw is not original.” Id. at 7. The proper inquiry is not whether cats have five
toes, but rather whether lion’s paw feet on furniture typically have five forward facing
toes as in Amini’s patented design. Notably, the prior art pictures in the record show
(Cont’d. . . .)
from which a jury might reasonably conclude that an accused product meets the
ordinary observer test. The parties dispute whether a sales representative qualifies as
an “ordinary observer.” This issue is not decided on appeal.
06-1096, -1129 6
lion’s-paw feet having four toes or less.3 In short, there is a genuine issue of material
fact regarding whether the patented design includes novel ornamental features that
were appropriated by Anthony’s accused design; the district court’s decision on
summary judgment that there were no novel features in the patented design was in
error.
III.
For the reasons set forth above, we reverse the grant of summary judgment of
noninfringement and remand the case to the district court for further proceedings. On
remand, Anthony will be able to assert its affirmative defenses, with respect to which its
motion for summary judgment was denied by the district court.
No costs
3
We note that we recognized the novelty of the five-toed lion’s paw in
Amini. See 439 F.3d at 1370 (“[T]he protected design used a unique lion’s paw with five
toes; the accused design incorporates a near-copy of this whimsical device, including
the anatomically incorrect presentation of the toes.”).
06-1096, -1129 7