Utility patents protect what things are, how they work, or ways of doing things.  An example is the guillotine mousetrap that works by, well, the name says it all.  Design patents protect the ornamental design of a product, for example this mousetrap that looks like a demented cat. 

The topic this month is design patents.

Let’s say that you have developed a mousetrap that looks a lot like, but not exactly like, the demented cat design.  Does your not-quite-demented-cat mousetrap infringe the design patent?*

The way that judges determine whether a product (the ‘accused product’) infringes a design patent is called the ‘ordinary observer’ test.  If the accused product and a product according to the patented design are in front of a hypothetical customer (the ‘ordinary observer’) and the products are so similar that the customer purchases the accused product believing the customer is purchasing the product of the patented design, then the accused product infringes the design patent. Designs that are entirely new, for example, the first button-free iPhone , give broader patent protection than designs for products in a field where there are lots of other products; for example, ball point pens.  All of this is quite subjective, of course, and requires visualization and imagination on the part of the judge.

Which brings us to Super-Sparkly Safety Stuff v Skyline.  Super-Sparkly holds design patents for rhinestone encrusted pepper-spray covers.  Skyline is a competitor of Super-Sparkly and sells a line of rhinestone encrusted pepper spray covers under the brand ‘Bling It On’ through Amazon and Dollar General.  

Super-Sparkly’s patented design includes rhinestones on the vertical sides of the pepper-spray canister and on the bottom of the canister.  Skyline’s product had rhinestones on the sides of the canister, but not on the bottom. A prior product (which predated Super-Sparkly’s patent) included rhinestones on the sides of a pepper-spray canister, but not on the bottom.  The Federal Circuit had no trouble concluding that the Skyline ‘Bling It On’ product did not infringe the Super-Sparkly design patent under the ordinary observer test.  The court determined that the rhinestones on the bottom of Super-Sparkly’s design is what set the design apart from the prior art and the absence of rhinestones on the bottom was an important design difference between Skyline’s accused product and Super-Sparkly’s patented design. 

The takeaway is that design patents are inherently narrow in protection and the difference between the patented design and the prior art may be dispositive, as it was for Super-Sparkly.  Note that Super-Sparkly directly approached Amazon and Dollar General, which stopped purchasing from Skyline.  Super-Sparkly now faces claims from Skyline in Federal Court for unfair competition and interference with Skyline’s business.

*This particular demented cat mousetrap design expired years ago, so not to worry.

— Robert Yarbrough, Esq.