Opinion
No. 85 C 4973
January 14, 1988, Decided
MEMORANDUM AND ORDER
JAMES B. MORAN, Judge, United States District Court
In FMC Corp. v. Hennessey Industries, Inc., 650 F.Supp. 688, 702 (N.D. Ill. 1986), affirmed in relevant part, F.2d (Fed. Cir. Dec. 30, 1987), this court set forth its understanding of the relevant standards in determining infringement of a design patent:
A determination of the infringement issue is somewhat of an existential exercise. It is not enough to say that no one would confuse the two designs because one is red and the other is green and both have prominently displayed logos. The test is not palming off; color and designations are not part of the patented design and must be ignored. On the other hand, it is not enough to say that to the casual observer the two devices look rather similar. In the first place, the hypothetical observer is neither a casual passerby nor an expert, but rather is an ordinary purchaser. Gorham v. White, 81 U.S. (14 Wall) 511, 20 L.Ed. 731 (1871). Further, what that ordinary purchaser is observing is a design in which detail dictated solely by function is ignored, and in which similarity to the accused design arises from the novelty which distinguishes the patented device from the prior art. Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed.Cir. 1984). That hypothetical observer, therefore, ignores color, designation and design aspects solely dictated by function and, viewing the design from the perspective of its novelty, determines whether the accused design is substantially the same so that he might purchase it supposing it to be the patented design. There is, thus, a consideration of deception in the standard, although not in the same sense as palming off.
We are asked to engage in the same exercise in this action, although here the issue arises through a motion for summary judgment by the assignee of four design patents. That motion is denied.
Plaintiff manufactures and sells a unit, largely used in hospitals, which is a combination of a defibrillator for emergency use upon cardiac arrest and a monitor/recorder. It has obtained design patents upon a defibrillator unit, Des. 253,608, upon a monitor/recorder unit, Des. 253,609, and the combination, Des. 253,610, as well as a design patent upon electrode paddles, Des. 244,153. Defendant manufactures and sells a combination known as the Porta Pak/90, and it is that device which is charged with infringing all four of the design patents. The defendant insists that the patents are invalid, that they are not infringed, and that they are unenforceable because of inequitable conduct in the Patent Office. Defendant also suggests that it is entitled to summary judgment, although it has not filed such a motion. The only issue presently before the court is, assuming for the moment that the patent is valid and enforceable, whether plaintiff is entitled as a matter of law to a judgment that the accused device infringes one or more of the design patents.
After the summary judgment motion was filed, this court held a proceeding in which the parties had an opportunity to explain their respective positions, relying upon actual devices, the design patents and various photographs. Defendant at that time was complaining that it had not had sufficient opportunity to present prior art and, following this court's suggestion, both parties subsequently filed additional memoranda, presented blowups of the patented designs and of the accused device illustrations, and photographs of various prior art devices. Both parties have effectively presented their respective positions.
If this court were to rely solely upon the blowups of the design patent illustrations and an illustrator's rendition of the accused device from the same perspectives, it would be inclined to grant the motion for summary judgment. If this court relied solely upon the prior art submissions by defendant, particularly those contained in Exh. 5 to its post-hearing memorandum, this court would be comfortable in not only denying the motion for summary judgment but indicating that a cross-motion would likely prevail. When one views the accused device and the photographs of what prior art devices have been available to be photographed, however, the drawings both of the accused device and the prior art appear to be somewhat idealized. Further, there is a material dispute as to whether one particular device, the Porta Pak/80, was in use or on sale prior to the critical date. We turn then to the considerations which are of primary concern to this court.
There appears to be no dispute that the ordinary purchaser of these devices is a sophisticated purchaser. The units are expensive, they are for use in emergency situations, and they are purchased for the purpose of accomplishing a result in the safest and most effective manner possible. Sales are primarily effected after demonstrations to technologically competent people in cardiology who must make a decision as to which device to purchase from among several available. Design is a marginal factor. That is, one can anticipate that a poor design appearance may create doubts about the level of technical skill and attention devoted to the engineering and design of the device itself. The purchaser is not, however, purchasing a unit because of a pleasant package, but because of a judgment about the effectiveness of that unit. Further, we are concerned not with ornamentation in the conventional sense, but with industrial design. One of plaintiff's witnesses characterized the patented designs as "clean and crisp". While defendant argues that the design is primarily functional, very little of it is dictated solely by function. On the other hand, the design options are clearly inhibited by function. The design must enhance the effectiveness of the device and at the same time present a pleasing appearance.
The accused device is similar in appearance in many respects to the patented designs. Both are stack units that can be carried as a single unit. Depth-to-width ratios are similar. Both have channels in the top of the defibrillator unit through the length of that unit through which the panel cords run. Both have shelf portions extending from the main portion of the defibrillator with a recess on the right side for the paddles. In both the control panel is to the left of the paddles. The cords extend into the channel. There is a handle on the shelf portion across most of the front. The bases of the paddles are similar in shape, being rectangular with rounded corners. The paddle recess matches the paddle shape. The shelf slopes down. In the monitor/recorder unit there are rounded side top junctions in both units and the front panels have approximately the same relevant thickness and overlie the forward edge of the side and top panels, thus hiding the forward edge. Both have a handle like a rigid strap, running upwardly along the sides and across the top, with about the same spacing from the top. Both have a screen on the right front panel and a paper recorder on the left, with somewhat similar spacing between the two. Both have front panels angling with relation to the top panel, at an angle exceeding 90 degrees, with similar height/depth ratios. The paddle handles run the length of the paddle, tapered front-to-back, and the paddles have upper and lower surfaces separated by a vertical gap of approximately the same relative size. The contact surface of the paddles in both is oval.
There are, however, some substantial differences. Most notable is the design of the paddles. While plaintiff claims infringement of its paddle design patent, there are substantial dissimilarities. The patented paddle design does not have a rear strut on the handle (although the paddle in the unit design does), while the accused paddles do have such a strut. The front portion of the handle in the design patent is rectangular and is considerably smaller than the width of the paddle base, whereas the accused paddles have a rounded configuration in front and extend over most of the width of the paddle base. Most importantly, the discharge button in the patented design is on the forward wall of the handle, whereas it is on the top of the handle in the accused device. That is of considerable significance, since one can anticipate that a purchaser of emergency equipment would pay particular attention to the means of operation. The defibrillator unit in the design patent has a somewhat wedge-shaped base, whereas the accused device has a flat bottom. The design patent defibrillator is somewhat higher in relation to length than is the accused device. The rear portion of the accused device is considerably different from the rear portion of the design patent defibrillator and the contact between the paddle cord and the unit is dissimilar in the two units, although both those features are not ones which one would anticipate that an ordinary purchaser would view with any great care. The accused device has two small recessed windows on the left side (which are marked "selected" and "delivered"), whereas the design patent in the same place shows a smooth surface. Certain of the controls in the accused device in the left recess are not specified in the design. The accused monitor/recorder has a recess extending across the entire bottom of the unit, whereas the patented design has a recess only to the left, the screen occupying a larger portion of the front portion of the unit. The design has a recessed unit between the recorder and the screen; the accused device does not. There is a shallow label recess beneath the recorder in the accused device which is not present in the design. The accused device has a number of controls in the recess which are not specified in the design. The accused device also has certain tabs for providing access to the recording paper and the like, which are not specified in the design. The accused device has a battery access and release mechanism on the left side (facing the unit), which is not present in the patented design. The face of the combined units in the accused device has a more pronounced slope than the face of the accused design. The rigid handle in the accused device is set somewhat further forward than the handle in the patented design. The back of the monitor/recorder of the accused device is dissimilar in various respects from the back of the patented design.
Whether or not there is infringement cannot, however, be answered by comparing similarities and dissimilarities. The judgment depends upon a consideration of the unit (in this situation two units, separately and in combination) as a whole. If we had to make a judgment solely on the basis of the accused device and the design patents, without any reference to prior art, we would be inclined to conclude that indeed, as a matter of law, there was infringement because an ordinary purchaser would, in looking at the totality of the design, come away with the impression that the design of the accused device was substantially similar to that of the design patents (not, however, the paddle design patent).
Our ordinary purchaser, however, views the design only with respect to the points of novelty, and here the matter becomes muddy indeed. Defendant's drawings and its exhibits indicate that virtually every one of the design features in the patented designs is found one place or another in prior art. One exception is a recess for rectangular paddle bases, although that feature, which is common to both designs, is in conjunction with the most dissimilar feature of both units, namely the paddle handles. The degree to which those similarities are present in prior art designs is not wholly clear, since the photographs indicate that the drawings overly accentuate similarities. There is as well an unresolved issue of the date of sale of the Porta Pak/80.
Further, the presence of design elements in earlier devices does not necessarily invalidate the patents if the patentee has combined a number of design elements into a new and novel design, and, for the purposes of this motion, we conclude by virtue of the statutory presumption that he has. The issue here, moreover, is not invalidity but infringement. The presence of similar design features in earlier devices does, however, have an impact upon an ordinary purchaser. An ordinary purchaser clearly is familiar with stacked units and units with not wholly dissimilar configurations. He has seen units with shelves in front, with handles across the front, and with cords that go into a channel beneath the monitor/recorder. All such units have two paddles, with cords. Many have screens and recorders displayed in the front of the unit in the monitor/recorder. Having the paddles rest upon a shelf to the right, with a control panel to the left, is not uncommon. Positioning the recorder and the screen on opposite sides of the monitor/recording unit, with a space in between, is both not uncommon and, indeed, appears to be dictated by function with respect to spacing. Plaintiff is not the first to strive for a clean and crisp appearance. When our ordinary purchaser is making judgments about appearance in a somewhat crowded field, the dissimilarities take on added importance. We are unsure how the plaintiff would characterize what it considers the points of novelty (we understand that the defendant contends that there are none). Moreover, we are unsure, on the basis of the prior art which has been presented and the manner in which it has been presented, of the context in which our ordinary purchaser makes his decision about similarity or dissimilarity of design. We cannot, therefore, conclude that as a matter of law he would judge the design of the accused device to be substantially similar to that of the patented designs. The motion is therefore denied.