United States District Court, Northern District of Illinois, Eastern Division
March 4, 1999
MOEN INCORPORATED, PLAINTIFF,
FOREMOST INTERNATIONAL TRADING, INC., DEFENDANT.
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).
A design patent protects only novel, non-functional features.
Id. The claim as described in the '466 patent is of the
ornamental design of a faucet body. However, Moen admits that the
spout and escutcheon (the base supporting the handles and spout)
in its design patent each
have a function. "Where a design contains both functional and
non-functional elements, the scope of the claim must be construed
in order to identify the nonfunctional aspects of the design as
shown in the patent." Oddzon Prods., Inc. v. Just Toys, Inc.,
122 F.3d 1396, 1405 (Fed. Cir. 1997). The scope is limited to the
overall ornamental visual impression. Id.
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 curves gently upward, and then slightly downward
at the end, with a higher upper edge protruding further than the
bottom edge. In addition, the point of novelty includes the way
the spout gradually slopes outward from the middle of the smooth
Like the design of the '466 patent, the Foremost escutcheon is
smooth, with no decorative ridges. The spout gradually slopes
outward from the middle of the escutcheon at the same angle as
the Moen spout. Most noticeably, the Foremost spout appropriates
the Moen spout's gentle slope upwards and rounded curvature at
the end, with a higher, upper edge protruding further than the
lower edge. Like the Moen spout, the Foremost spout has a longer
curve on top and a shorter, more pronounced yet smooth curve on
the bottom. The Foremost spout does not bend at a sharp angle or
have any other characteristics that would distinguish it from the
point of novelty of the Foremost spout.
Relying heavily on Read Corp. v. Portec, Inc., 970 F.2d 816
(Fed.Cir. 1992), Foremost argues that Moen must submit empirical
evidence showing that ordinary observers are deceived by the
Foremost faucet. The design at issue in Read included both
functional and non-functional features, and the jury found for
the patent holder. The Federal Circuit held that a verdict in
favor of a patent holder requires evidence that the similarity
between the designs is due to ornamental features. Id. at
825-26. In Braun Inc. v. Dynamics Corp. of America,
975 F.2d 815, 821 (Fed.Cir. 1992), the court noted that "[n]othing in
Gorham suggests that, in finding design patent infringement, a
trier of fact may not as a matter of law rely exclusively or
primarily on a visual comparison of the patented design, as well
as the device that embodies the design, and the accused device's
The comparison of the ornamental appearance by the trier of
fact has been incorporated into the Gorham test. Unidynamics,
157 F.3d at 1323. The desirability or necessity of empirical
evidence varies according to the circumstances of the particular
case. Braun, 975 F.2d at 821. The faucet designs in the case at
bar are not complicated. Foremost has not set forth any reason,
and I do not find any reason, why comparison under the Gorham
test and the point of novelty test is insufficient to determine
infringement in this case.
Nonetheless Foremost argues that it is entitled to summary
judgment, or that it raised a genuine issue of material fact,
based on its own consumer study and patent.*fn2 Moen argues, and
I agree, that
the study and accompanying expert report were not produced until
after the close of discovery and therefore are not properly
before the court. Even if the survey were considered, however, it
does not provide admissible evidence. Foremost's consumer study
asked fifty people at random to compare the Foremost faucet and
the Moen faucet. The survey participants were then asked whether
the faucets had "the same" design. Thirty-eight said that the
designs were not the same. Regardless of the form of the
question, the survey is fatally flawed. It asked the participants
to compare the whole faucet design rather than the overall
ornamental appearance. See Oddzon Products, 122 F.3d at 1407
(holding that surveys are flawed where "[t]hey fail to
distinguish between the ornamental features of the [devices] and
their functional" features).
Furthermore, the fact that Foremost obtained a patent on the
accused design, while relevant, is not dispositive.*fn3 In light
of the overwhelming, overall similarity in ornamental design as
well as the appropriation of the point of novelty, the patent in
and of itself does not create a genuine issue for trial.
For the reasons discussed above, Moen's motion for summary
judgment is granted and Foremost's cross-motion for summary
judgment is denied. Foremost is permanently enjoined from making,
using, selling, or importing its FC-1032 lavatory faucets or any
other faucet that infringes United States Patent No. D347,466.