Poly-America L P v. API Industries Inc.

Filing 78

MEMORANDUM. Signed by Judge Sue L. Robinson on 4/10/2014. (nmfn)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

POLY-AMERICA, L.P.,
Plaintiff,
v.
API INDUSTRIES, INC.,
Defendant.

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) Civ. No. 13-693-SLR
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MEMORANDUM
At Wilmington this 10th day of April, 2014, having reviewed defendant’s motion
for judgment on the pleadings and the papers filed in connection therewith; the court
resolves the motion consistent with the following reasoning:
1. Introduction. Plaintiff Poly-America, L.P. (“Poly”) and defendant API
Industries, Inc. (“API”) are competitors in the manufacture and sale of household plastic
bags, sold in cardboard containers at retailers such as Home Depot, Inc. Poly instituted
suit against API asserting infringement of U.S. Patent No. D569,719 S (“the ‘719
patent”) titled “Product Container,” which patent issued May 27, 2008. The ‘719 patent
contains a single design claim1 based on 10 drawings showing different views of a sixsided folding cardboard box with a front opening. API has moved for dismissal of the
case based on its assertion that its cardboard box design is “not substantially similar” to
the patented design.
2. Standard of Review. “The purpose of judgment on the pleadings is to
1

“The ornamental design for a product container, as shown and described.” (D.I.
1, ex. A)

dispose of claims where the material facts are undisputed and judgment can be entered
on the competing pleadings and exhibits thereto, and documents incorporated by
reference.” Venetic Int’l, Inc. v. Mexus Mad. LLC, 541 F. Supp. 2d 612, 617 (D. Del.
2008). In the context of this case, both parties agree that the legal standard for patent
design infringement found in the Federal Circuit’s opinion in Egyptian Goddess, Inc. v.
Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), is controlling:
In some instances, the claimed design and the accused design will be
sufficiently distinct that it will be clear without more that the patentee
has not met its burden of proving the two designs would appear
“substantially the same” to the ordinary observer, as required by Gorham
[Mfg. Co. v. White, 81 U.S. 511 (1871)]. In other instances, when the
claimed and accused designs are not plainly dissimilar, resolution of the
question whether the ordinary observer would consider the two designs
to be substantially the same will benefit from a comparison of the claimed
and accused designs with the prior art . . . .
543 F.3d at 678. In further illuminating the above standard, the Federal Circuit has held
that: (a) “articles which are concealed or obscure[d] in normal use[2] are not proper
subjects for design patents, since their appearance cannot be a matter of concern,”
Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1379 (Fed. Cir. 2002)
(citations omitted); and (b) where a design contains both ornamental and functional
features, it is proper “to separate the functional and ornamental aspects” because the
scope of the design claim “must be construed in order to identify the non-functional
aspects of the design as shown in the patent,” Richardson v. Stanley Works, Inc., 597
F.3d 1288, 1293 (Fed. Cir. 2010). “[C]ourts have dismissed claims of design
2

“Normal use” in the design patent context has been defined by the Federal
Circuit to be the “period in the article’s life, beginning after completion of manufacture or
assembly and ending with the ultimate destruction, loss, or disappearance of the
article.” In re Webb, 916 F.2d 1553, 1557-58 (Fed. Cir. 1990).
2

infringement on Rule 12(b)(6) motions where, as a matter of law, the court finds that no
reasonable fact-finder could find infringement.” MSA Products Inc. v. Nifty Home
Products, Inc., 883 F. Supp. 2d 535, 540 (D. N.J. 2012) (collecting cases).
3. Analysis. Comparing the accused and patented design, I conclude that they
are not plainly dissimilar. API identifies three features of the accused design that it
contends are different from the patent design: (a) the accused design has an opening
that extends beyond the front panel of the box to the side panel;3 (b) the accused design
has no top flaps with no tabs and no slots;4 and (c) the accused design has bottom flaps
rather than a solid bottom.5 (D.I. 12 at 13)
4. The solid bottom cannot be a design difference that renders the accused
product substantially dissimilar because it is not an ornamental design feature.
Egyptian Goddess, 543 F.3d at 680. With respect to the second feature, an ordinary
observer does not watch the box being formed in the manufacturing facility but, instead,
sees the box when it is merchandised in the store. The ordinary observer, therefore,
would not observe the tabs and slots,6 as the box top remains closed during the normal
use of the container.7 Finally, to the extent the second and third features identified
above are considered functional, they should not be considered design elements that

3

Compare figure 1 of the ‘719 patent.

4

Compare figures 8-10 of the ‘719 patent.

5

Compare figure 14 of the ‘719 patent.

6

Or the foldable versus solid bottom.

7

API admits that a box “has to be formed and closed for packaging.” (D.I. 12 at
19, n.9)
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would be observed by the ordinary observer.
5. With respect to the remaining feature, certainly the accused and patented
designs are not “plainly dissimilar” when the boxes are merchandised, as the only
difference between the two is that the perforations that mark the opening in the accused
design extends beyond the front of the box, as depicted below:

(D.I. 15 at 8) It also remains an issue of fact whether the perforated extension of the
accused design is actually a relevant difference, i.e., whether an ordinary observer
would actually open the accused box to its full extent if not necessary to reach the
product.
6. I decline to pronounce, as a matter of law, that the perforated opening in the
accused design would be observed by an ordinary observer as “plainly dissimilar” to
that depicted in the ‘719 patent, especially in light of the Federal Circuit’s guidance in
Egyptian Goddess:
“[I]f, in the eye of an ordinary observer, giving such attention as a purchaser
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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, the first one patented is infringed by the other.” [Gorham,]
81 U.S. at 528. In the case before it, the Court concluded that “whatever
differences there may be between the plaintiffs’ design and those of the
defendant in details of ornament, they are still the same in general appearance
and effect, so much alike that in the market and with purchasers they would
pass for the same thing - so much alike that even persons in the trade would
be in danger of being deceived.” Id. at 531.
543 F.3d at 670.
7. The final prong of the analysis is whether, as a matter of law, an ordinary
observer would find the two designs substantially similar in light of the prior art. Id. at
678. In this regard, API has identified seven pieces of prior art that were cited in the
‘719 patent, depicted below:

5

(D.I. 14, ex. 4; D.I. 15 at 11)
8. Once again, I decline to pronounce, as a matter of law, that the overall visual
differences between the accused design and patented design are greater than the
differences between the patented design and the prior art. Egyptian Goddess, 543
F.3d at 678. As noted, the accused design and the patented design appear the same
in general appearance and effect, that is, rectangular boxes "with a perforated opening
on the front in a trapezoidal shape with a foldable extension that is elliptically shaped
and vertically oriented.8 (D.I. 15 at 12) None of the prior art references appear to
combine these attributes, leaving the matter as an issue offact.
9. Conclusion. Based on the above analysis, APl 's motion for judgment on the
pleadings (D.1. 11 ) is denied. An order shall issue.

Unlted States

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