The US Court of Appeals for the Federal Circuit recently affirmed a summary judgment of no design patent infringement in North Star Tech. Int’l Ltd. v. Latham Pool Products, Inc., ruling that the patented and accused pool designs were “plainly dissimilar” despite sharing structural similarities formed by geometric shapes and angular edges common in preexisting pool designs.

Background

In April 2019, North Star filed a complaint against Latham in the Eastern District of Tennessee alleging infringement of US Design Patent No. D791,966 (D’966), which claims the ornamental appearance of a fiberglass swimming pool. As shown below, both the patented North Star design and accused Latham design relate to rectangular pools with tanning ledges and built-in benches.

Latham moved for summary judgment of non-infringement, arguing that the designs are plainly dissimilar and that “any similarities that do exist between the D’966 Patent and the [accused] designs stem from their use of design elements that were commonly used in pool designs before the D’966 Patent.” Put differently, the accused design could not infringe the D’966 Patent because it did not incorporate any claimed design elements other than those in the prior art.

The district court agreed, explaining that the “prominent ornamental elements of the two designs” — viz., the shape of the entry steps and deep end benches — “differ significantly, creating an overall ‘plainly dissimilar’ appearance.” A review of the prior art further confirmed non-infringement because “[e]ach of the pertinent design elements included in the D’966 Patent and [the accused design] existed before North Star filed the D’966 Patent.” To be sure, the district court cited to examples of fiberglass pools with rectangular tanning ledges that pre-date the patented design, as well as to Latham’s own use of the same deep end benches in prior art pool designs. The district court therefore entered final judgment dismissing the design patent infringement claim, which North Star subsequently appealed.

Federal Circuit Decision

On appeal, the Federal Circuit affirmed the grant of summary judgement after concluding that the patented and accused designs were “plainly dissimilar” for two reasons.

First, applying the Egyptian Goddess test, the Federal Circuit held that the overall appearance of the patent and accused pool designs differed significantly to an ordinary observer, which is a “homeowner considering purchasing a swimming pool in their home.” Like the district court, the Federal Circuit found that the ornamental features of the patented design are characterized by “straight edges and geometric shapes” that collectively produce an “overall angular appearance,” while those of the accused design are characterized by “rounded shapes” and a “curved” design.

For example, the entry step is a pool-width rectangle in the patented design but two separate quarter circles in the accused design, as shown in the comparison chart below.

Second, the Federal Circuit disregarded the structural similarities between the patented and accused design because “North Star cannot monopolize common ornamental pool features or functional pool features by registering a combination of those features as a design patent.” So even though both designs relate to rectangular swimming pools with steps, benches, and tanning ledges, the Federal Circuit ruled that “North Star’s patent only protects the ornamental aspects ─ here, the angular shape ─ of those ubiquitous features.”

Looking Ahead

While nonprecedential, the North Star decision provides a roadmap for litigants to escape design patent infringement claims that cover common or well-known features. Patent applicants would do well to focus on the distinctive ornamental elements of their designs and avoid overreliance on combinations of preexisting design features.