Flawless Legs and a Shaved Head? An Ordinary Observer Can Tell the Difference | Quarles & Brady LLP

In a recent district court decision, a New Jersey federal judge granted summary judgment to an accused infringer of a patented design. Skull Shaver LLC. v. IdeaVillage Products Corp., No.18cv3836 (EP) (AME) (D.N.J. Dec. 28, 2022).  In its complaint, Skull Shaver claimed that Ideavillage’s leg shaver infringed its design patent on a head shaver.  The patent-in-suit is U.S. D693,060 (“the D’060 patent”) for an electric head shaver, and the accused product is a Flawless Legs Shaver, which is itself covered by U.S. D853,645 (“the D’645 patent”). 

After full briefing and a sufficiently complete evidentiary record, the court held that the Flawless Legs product is ornamentally dissimilar to, and therefore does not infringe, Skull Shaver’s design patent, and through claim construction identified at least four ornamental features within the scope of the patented design that, when considered together, contribute to the overall visual effect of the head shaver: (1) an egg-shaped handle with no corners (see FIG. 3 below); (2) an elongated neck separating the handle and the base (see FIGS. 5-7 below); (3) a collar beneath an elongated neck (see FIGS. 5-7 below); and (4) a flat base (see FIGS. 5-7 below).

The court applied the ordinary observer test to determine whether there was infringement and discussed each of the four ornamental features in connection with the D’060 patent and the Flawless Legs product. The ordinary observer test was originally set forth in Gorham Co v. White, and specifies that design patent infringement occurs “[i]f 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 such an observer, inducing him to purchase one supposing it to be the other.”  81 U.S. 511, 527 (1871).  The Court of Appeals for the Federal Circuit (“CAFC”) further refined the ordinary observer test in Egyptian Goddess, Inc. v. Swisa, Inc. holding that the appropriate analysis occurs through the eyes of an observer “familiar with the prior art.” 543 F.3d 665, 677 (Fed. Cir. 2008) (emphasis added).  As a result, the present-day ordinary observer test requires a three-way analysis between the claimed design, the allegedly infringing product, and the closest comparative prior art.

After claim construction, the ordinary observer test proceeds in two stages.  First, the claimed and accused designs are compared to determine if the two designs are “sufficiently distinct” and “plainly dissimilar.”  If the two designs are found to be “sufficiently distinct” and “plainly dissimilar,” then there is no infringement and the inquiry ends, which occurred above after claim construction and a comparison of the D’060 patent with the Flawless Legs product.  Under the second stage of the ordinary observer test, if the two designs are not plainly dissimilar then the claimed and accused designs are compared with the prior art in a three-way comparison (see related blog post here).

In the instant case, the court analyzed a side-by-side comparison of the accused product and the patented design, which is reproduced directly below.  Under this test, the comparison demonstrated that the accused product and the patented design are “substantially distinct” and “plainly dissimilar” such that a comparison of the accused and patented designs with prior art was not necessary.

While not determinative, it is noteworthy that during prosecution of the D’645 patent, which covers the Flawless Legs product, the examiner cited the D’060 patent as being relevant to the claimed design, but ultimately found that the D’645 patent was allowable over the prior art D’060 patent.  Skull Shaver, LLC has appealed this decision to the Federal Circuit, and the Appellant’s brief is due on April 04, 2023.

Quarles Law Clerk Rachel Ackerman is a contributing author.

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