The opinion of the court was delivered by: Bucklo, District Judge.
MEMORANDUM OPINION AND ORDER
Plaintiff Moen Incorporated ["Moen"] brought this action
against Foremost International Trading, Inc. ["Foremost"]
alleging patent infringement, unfair competition, false
advertising, trade dress infringement, trademark infringement,
consumer fraud and deceptive trade practices, and trademark
dilution involving Moen's "Monticello" brand 2 handle, 4 inch
center set lavatory faucet [the "Moen faucet"]. After a hearing,
Foremost was preliminarily enjoined from making, using, selling,
or importing its FC-1032 series lavatory faucet [the "Foremost
faucet"], based on design patent infringement. Moen now moves for
summary judgment on the issue of design patent infringement. In
response, Foremost has filed a cross-motion for summary judgment
against Moen. For the following reasons, Moen's motion for
summary judgment is granted, and Foremost's cross-motion for
summary judgment is denied.
Moen is the owner of United States Patent No. D347,466 ["'466"]
for the design of a faucet body, which is incorporated into the
Moen faucet. The Moen faucet is the number one selling retail
faucet for Moen. Subsequent to issuing Moen its design patent,
the United States Patent and Trademark Office ["PTO"] found that
Foremost also had a patentable faucet design.
Moen argues that the Foremost faucet infringes its design
patent '466. Moen requests that Foremost be permanently enjoined
from making, using, selling, or importing its FC-1032 lavatory
faucets or any other faucet that infringes the '466 patent. In
response, Foremost argues that Moen has submitted inadequate
evidence of infringement and that its own evidence shows that the
Foremost faucet is not substantially similar to the Moen faucet.
Summary judgment is appropriate in a patent infringement case.
Avia Group Int'l, Inc. v. L.A. Gear California, Inc.,
853 F.2d 1557, 1561 (Fed.Cir. 1988). Infringement of a design patent is
determined by construing the claim of the design patent, and then
comparing the properly construed claim to the design of the
accused device. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571,
1577 (Fed.Cir. 1995).
The drawings depicting Moen's '466 design patent show an
escutcheon and spout of a faucet. The escutcheon is smooth and
rounded on the shorter sides with relatively flat and longer
front and back edges. Round holes for faucet handles take up most
of the space on either side of the spout, and the sides of the
escutcheon curve around them in half-circles. The spout of the
faucet sits in the center of the escutcheon, sloping back through
the middle of the escutcheon. A small, circular hole for a drain
plug sits on the back end of the spout. The spout is smooth and
curves gently upward, and then slightly downward towards the end.
At the end of the spout, the upper edge is higher than the bottom
edge, and the upper edge protrudes further than the bottom edge.
As a result, the curve of the spout is longer on the top than the
bottom, and the bottom curve is slightly sharper toward the end
of the spout than the top curve. Looking at the design from a
bottom angle, the spout is fairly flat and smooth. The spout is
wide where it attaches to the escutcheon, and gradually becomes
narrower toward the portion of the faucet that curves downward.
It widens again slightly at the end of the spout.
To determine whether a product design infringes a design
patent, two distinct tests must be applied. The first test is the
ordinary observer test, which was set forth in Gorham Mfg. Co.
v. White, 14 Wall. 511, 81 U.S. 511, 20 L.Ed. 731 (1871). Under
the Gorham test, the fact finder must determine,
if, in the eye of an 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. Gorham, 81
U.S. at 528, 14 Wall. 511.
In Gorham, the design at issue was purely ornamental, being
limited to scrollwork on the handle portion of flatware. Where,
as here, the design includes both functional and ornamental
features, "[i]n determining this overall similarity of design,
the ordinary observer must be deceived by the features common to
the claimed and accused designs that are ornamental, not
functional." Unidynamics v. Automatic Prods. Int'l,
157 F.3d 1311, 1323 (Fed.Cir. 1998).
Both parties agree that the purchase of a faucet is not an
impulse purchase. Assuming that the ordinary purchaser carefully
inspects the designs of faucets, the question is whether that
purchaser would find the overall ornamental appearance of the
faucets substantially the same. "Under Gorham, the focus is on
the overall ornamental appearance of the claimed design, not
selected ornamental features." Elmer, 67 F.3d at 1578. After a
careful inspection, the overall ornamental appearance of Moen's
design and the Foremost faucet is substantially similar. Although
there are slight variations between the two designs such as the
exact placement of the drain plug, minor differences do not
prevent a finding of infringement where the overall effect of the
designs is substantially the same. Payless Shoesource, Inc. v.
Reebok Int'l Ltd., 998 F.2d 985, 991 (Fed.Cir. 1993). Viewed as
a whole, the ornamental features of the Moen faucet as described
above are substantially similar to the ornamental appearance of
the escutcheon and spout of the Foremost faucet.
The second test, or point of novelty test, requires that the
accused device "`appropriate the novelty in the patented device
which distinguishes it from the prior
art.'" Unidynamics, 157 F.3d at 1323 (citations omitted). Moen
describes the point of novelty as the shape, contour, proportion
and relationship between the spout and the escutcheon. Except for
United States Patent No. D203,324 [`324], the escutcheons
depicted in the prior art submitted by Foremost have decorative
layering.*fn1 The spouts stick straight out of the escutcheon.
The end of the spouts turn in a sharper angle than Moen's spout,
and have a decorative ring. The design closest in appearance to
the Moen faucet is the design of patent `324. While smooth, the
escutcheon in `324 has a ridge in the back from which the spout
protrudes. The spout rises higher than the Moen spout, and turns
sharply downward at the end. Therefore, the point of novelty of
the Moen faucet is the shape of the spout: the manner in which
the smooth spout ...