IP Law Daily, PATENT—E.D. Tenn.: Accused pool’s curved design features did not infringe design patents, (Jun 7, 2023)

By Robert Margolis, J.D.

Under the “ordinary observer” test, the designs were “sufficiently distinct” and “plainly dissimilar.”

Finding that the overall ornamental appearance of Latham Pool Products, Inc.’s swimming pool is “sufficiently distinct” from and “plainly dissimilar” to North Star Technology International Limited’s patented design, the federal district court in Knoxville has granted Latham’s motion for summary judgment of non-infringement, dismissing all of North Star’s infringement claims against it (North Star Technology International Limited v. Lathan Pool Products, Inc., June 6, 2023, Crytzer, K.).

Parties’ pool designs. North Star and its affiliate are an intellectual property holding company for entities commercially known as “Leisure Pools,” the second largest manufacturer of fiberglass pools in the United States. Leisure Pools sells fiberglass pool shells covered by U.S. Design Patent No. D791,966 (the “D’966 patent”), issued on July 11, 2017, and covering the ornamental design for a swimming pool. The D’966 patent covers a rectangular pool with angular design features, having a rectangular entry step that extends the full width of the pool and leads to a rectangular tanning ledge. The design also has full-width steps of differing lengths leading from the tanning ledge into the main body of the pool. A rectangular bench is located in each corner of the deep end of the pool, with rectangular steps stacked on each bench. Finally, a safety ledge extends around the pool’s perimeter, at the same level as the top surface of the tanning ledge and deep edge benches.

Latham is the largest U.S. manufacturer of fiberglass pools, and it sells a model it calls the “Corinthian 16.” It is a rectangular pool with curved edges, and with two curved corner entry steps not extending the full width of the pool, but which lead to a tanning ledge. From the tanning ledge, the full-width steps leading into the pool are equal in length. Each corner of the deep end of the pool has a curved bench, but no steps are featured on the benches. A safety ledge extends around the pool at the midway point of the deep end benches, terminating at the pool floor at the bottom of the full-width steps leading into the pool.

Prior art. At the time that North Star applied for the D’966 patent, there was prior art depicting various swimming pool designs, including rectangular pools with rectangular tanning edges. For example, a pool designed by Brian Van Bower in 2007 has similarities to the D’966 patent, and a YouTube video published by “Master Pools Guild” in August 2013 shows a rectangular pool with a rectangular tanning ledge. Rectangular swimming pools with rectangular swimming ledge and rectangular steps were publicly available before North Star filed its patent application. In fact, some of North Star’s own pools prior to that time featured rectangular shapes, tanning ledges, steps, and deep end benches.

Infringement claims. North Star filed its infringement lawsuit against Latham in April 2019, asserting two infringement claims, one related to the D’966 patent, another related to a different design patent. North Star dismissed the second claim, such that only the D’966 patent remained at issue at the time of Latham’s summary judgment motion. In its motion, Latham asserted (1) the Corinthian 16’s appearance is “plainly dissimilar” from the D’966 patent design, especially considering prior art, and (2) any similarities stem from the use of design elements that were commonly used prior to the D’966 patent.

“Ordinary observer” test. In determining whether an accused design infringes a design patent, courts apply the “ordinary observer” test. This test asks whether “in the eye of the ordinary observer” and giving the level of attention that the ordinary observer would give, the two designs are substantially the same such that the ordinary observer would be deceived into purchasing one in the belief it is the other. Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871). This test applies to the design in its entirety, including overall ornamental visual impression, and does not involve parsing individual features to find similarities in isolation. It is proper to set side-by-side drawings of the accused products and the design patent and compare the overall impressions. If in doing so, the two are “sufficiently distinct” and “plainly dissimilar,” no infringement is found. Where a court finds the requisite similarity, a defendant may interpose a defense based on a comparison with prior art, to provide a frame of reference for any such similarities.

Applying the ordinary observer test, the court granted summary judgment of non-infringement to Latham, finding that an ordinary observer would find the Corinthian 16’s overall appearance to be “sufficiently distinct” from and “plainly dissimilar” to the D’966 patent. The court noted differences in the overall appearance of the two, including that the D’966 patent is angular while the Corinthian 16 is curved, using rounded rather than rectangular shapes. The similarities that North Star cited—roughly rectangular pools with tanning ledges, full-width stairs, and deep end benches—are “high level similarities” not sufficient to support an infringement claim, according to the court. The Corinthian 16’s curvatures give it a distinct overall appearance from that of the D’966 patent, the court held.

The court also pointed to differences in the entry steps (the D’966 patent has a single, full-width entry step while the Corinthian 16 has two curved entry steps in the pool’s corners), the different widths of steps into the two pools, the different shapes of the deep end benches (rectangular vs. curved), and the differences in the safety ledges. All of these impacted the overall appearances of the two parties’ pools creating distinct overall impressions, the court held.

Prior art confirmed the court’s findings. Each of the pertinent design elements the parties discussed existed before North Star filed the D’966 patent. Where the designs closely resemble prior art, small differences become more important in the eyes of the ordinary observer, the court noted.

The case is No. 3:19-cv-00120-KAC-DCP.

Attorneys: Wade Orr (Luedeka, Neely Group PC) for North Star Technology International Ltd. Courtney S. Dabbiere (Kilpatrick Townsend & Stockton, LLP) for Latham Pool Products, Inc.

Companies: North Star Technology International Ltd.; North Star Technology Ltd.; Latham Pool Products Inc.

Cases: Patent TennesseeNews GCNNews