Pepper Spray Manufacturer’s Successful Self-Defense Reinforces Best Practices for Design Patents
Protecting the Product 01/25/21 Michael Piery
The Federal Circuit’s recent decision in Super-Sparkly Safety Stuff, LLC v. Skyline USA, Inc. reinforces best practices for design patent enforcement and procurement. An important takeaway from this decision is that when enforcing design patents in litigation, patent owners should develop record evidence from fact and expert witnesses to assist the court in the ordinary observer analysis to ensure that motions for summary judgment of non-infringement are decided with a sufficient record. Another important consideration for design patent holders is that when protecting designs, rights holders should consider robust filing strategies to protect iterative and varying aspects of important designs. These strategies may help companies avoid early judgment of non-infringement when they enforce their design patents by limiting the options of a defendant during the early stages of litigation.
Super-Sparkly sued Skyline in the Northern District of Texas for infringement of U.S. Patent No. D731,172, entitled “Rhinestone Covered Container For Pepper Spray Canister.” Super-Sparkly accused Skyline of infringing the ’172 Patent through sale of its “Bling It On” line of rhinestone-decorated pepper spray canisters. Below are perspective and bottom views from the ’172 Patent juxtaposed with images of the accused Skyline products. The claimed design includes rhinestones on the sides and bottom, while the accused design includes rhinestones on the sides of the canister but not the bottom.
This case arrived at the Federal Circuit in an unusual procedural posture. In the district court proceeding, Skyline moved for partial summary judgment of non-infringement. Instead of filing a substantive response, Super-Sparkly moved to extend the time to respond and asked the court to defer ruling on the motion pursuant to Rule 56(d). Under Rule 56(d), a court may deny or defer considering a motion for summary judgment if a nonmovant can show that “it cannot present facts essential to justify its opposition.” Fed. R. Civ. P. 56(d).
The district court granted Skyline’s motion for summary judgment, and in rejecting Super-Sparkly’s procedural arguments, the court found that Super-Sparkly did not explain how further discovery would raise material facts relevant to the issue of non-infringement. On the merits, and in light of Super-Sparkly’s non-response, the court found no genuine issue of material fact related to non-infringement. The court found that the lack of rhinestones on the bottom of the accused product was a “significant” difference from the claimed design “particularly given the relatively simple and limited elements of the product designs, and would be obvious to an ordinary observer.”
The Federal Circuit affirmed on appeal. The Federal Circuit agreed with the district court that Super-Sparkly failed to identify how any of the additional discovery it sought was relevant to non-infringement. On the merits, the Federal Circuit, reviewing de novo, affirmed summary judgment of non-infringement for two reasons.
First, the Federal Circuit found that that claimed design and accused design were plainly dissimilar. Under the ordinary observer test for infringement, an accused design does not infringe if the claimed and accused designs are “sufficiently distinct” and “plainly dissimilar,” such that an ordinary observer clearly would not find the two designs “substantially the same” based on the standard set forth in Egyptian Goddess, Inc. v. Swisa, Inc. The Federal Circuit found that the ’172 Patent claims a “very simple design, in which rhinestones are applied to the vertical cylinder and the bottom surface of a canister.” In the Court's view, removing the rhinestones from one of these surfaces—the bottom—was such a “significant departure from the claimed design” that an ordinary observer would not find the two designs substantially the same.
Second, the Federal Circuit found that a comparison with the prior art—although unnecessary when “plain dissimilarity” under the Egyptian Goddess test is found—further established that the accused design did not infringe. When designs are not plainly dissimilar, the ordinary observer analysis compares the claimed and accused designs with the prior art because “differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.” The prior art designs, depicted below, included rhinestones around the majority of the canister but not on the top or bottom. “As such, the attention of a hypothetical ordinary observer conversant with bedazzled pepper spray canisters would be drawn to the presence or absence of rhinestones on the bottom of the cylinder.” The Federal Circuit concluded that the ordinary observer would find significant the lack of rhinestones on the bottom of the accused design, and would not confuse the accused design with the claimed design.
Read broadly, this decision may lower the bar for establishing non-infringement on summary judgment. The Federal Circuit described the claimed design as a “very simple design, in which rhinestones are applied to two surfaces of a canister.” Removing rhinestones from one surface was found to render the designs plainly dissimilar, and moreover was found to create a significant visual difference in light of the prior art. In failing to describe other ornamental aspects of the design—such as the size, shape, and pattern of the rhinestones, the relative proportions of the container cover, or that that rhinestones extend to the bottom of the container—this decision suggests that the absence of a major design element from a surface of an accused product may alone be sufficient to establish non-infringement as a matter of law.
On the other hand, when read in light of the procedural posture, this decision may encourage patent owners to develop evidence sufficient to survive summary judgment, before such a motion is brought. Not only did Super-Sparkly fail to submit evidence in opposition to Skyline’s motion, it did not file a substantive response. On appeal, Super-Sparkly was forced to rely solely on its attorney’s argument since the record lacked additional evidence.
In other cases, patent owners have survived summary judgment by submitting expert testimony, inventor testimony, and fact witness testimony relevant to the ordinary observer analysis. Helpful testimony that has successfully buttressed against a summary judgment challenge has related to the significance of certain design aspects in the overall impression of the design, the differences between the claimed design and prior art, and similarities between the claimed design and accused design. Because this evidence was lacking from the record in Super-Sparkly, the court could not rely on it as creating genuine issues of fact to deny summary judgment.
Under either read, this decision reinforces the importance of obtaining thorough coverage for designs. Companies looking to protect their product designs should consider a robust filing strategy that includes protecting not only the overall product design, but also visually-striking or important portions thereof. Employing such a protection strategy may make it difficult for competitors to design around a design patent portfolio by simply omitting design elements from a surface or portion of their product.
 Super-Sparkly Safety Stuff, LLC v. Skyline USA, Inc., No. 3:18-CV-0587-N, 2019 WL 5740908, at *2 (N.D. Tex. Nov. 4, 2019)
 Super-Sparkly Safety Stuff, LLC v. Skyline USA, Inc., No. 2020-1490, 2020 WL 7294637, at *4 (Fed. Cir. Dec. 11, 2020)
 Id. at *3
 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc)
 Super-Sparkly, 2020 WL 7294637, at *3
 Egyptian Goddess, 543 F.3d at 678
 Super-Sparkly, 2020 WL 7294637, at *3.
 See, e.g., Virco Mfg. Corp. v. Hertz Furniture Sys., LLC, No. CV 13-02205 JAK, 2014 WL 12591481, at *5 (C.D. Cal. Jan. 3, 2014); Nordock Inc. v. Sys. Inc., 927 F. Supp. 2d 577, 598–99 (E.D. Wis. 2013); Mondo Polymers Techs., Inc. v. Monroeville Indus. Moldings, Inc., No. 2:07-CV-1054, 2009 WL 3698432, at *4 (S.D. Ohio Nov. 3, 2009); see also Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 1000 (Fed. Cir. 2015) (holding witness testimony supported jury verdict of infringement), rev’d on other grounds, 137 S. Ct. 429, 196 L. Ed. 2d 363 (2016).