Addressing the standard for pleading infringement of a design patent, the U.S. Court of Appeals for the Federal Circuit rejected a lower court’s finding that a complaint for design patent infringement must identify the new, original and ornamental aspects of the claimed invention.  Hall v. Bed, Bath & Beyond, Case Nos. 11-1165, -1235 (Fed. Cir., Jan 25, 2013) (Newman, J.) (Lourie, J., dissenting in part).

Roger J. Hall filed for a design patent for a “Tote Towel” and immediately marked it “patent pending.”  While the application was pending, Hall contacted Bed Bath & Beyond (BB&B) to discuss whether BB&B would provide retail sales of the product.  Hall left behind some samples after their business meeting, where both the package and the towel were marked “patent pending.”  BB&B copied the design and had it manufactured in Pakistan, for retail sale by BB&B.  After the patent issued, Hall sued for patent infringement, unfair competition under the Lanham Act, and for misappropriation under the New York statutory and common law.  The district court dismissed Hall’s claims on the pleadings, finding that the complaint did not specifically identify the “new, original, and ornamental” aspects of the design. 

The Federal Circuit rejected the district court’s finding that Hall failed to state a claim of infringement of a design patent and had not met the criteria for a claim of unfair competition.  The Federal Circuit stated that a design patent infringement allegation in a complaint required five elements: (i) allege ownership of the patent, (ii) name each defendant, (iii) cite the patent that is allegedly infringed, (iv) state the means by which the defendant allegedly infringes, and (v) point to the sections of the patent law invoked.

The Federal Circuit stated that claim construction is not an essential part of a patent infringement complaint.  The Federal Circuit further found that the district court erred in requiring that the complaint identify the “new, original, and ornamental” aspects of the claimed design, pointing out that in Egyptian Goddess, the Federal Circuit negated the “point of novelty” requirement for design patents.

The Federal Circuit stated that the standard for determining design patent infringement is “if, in the eye of the ordinary observer, giving such attention as a purchaser 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.”

Practice Note:  The decision is important to design patents in that it affirms that infringement is based on the more lenient “ordinary observer” test, not on any “points of novelty.”