IP Law Daily, PATENT—Fed. Cir.: Noninfringement finding for bedazzled pepper spray canisters affirmed, (Dec 11, 2020)

By Brian Craig, J.D.

Under the ordinary observer test, the district court properly found that the two designs are not substantially the same because the accused product lacks rhinestones on the bottom of the pepper spray cannister.

Concluding that an ordinary observer would not find the design patent for a bedazzled pepper spray canister substantially the same as a similar product that lacks rhinestones on the bottom of the canister, the U.S. Court of Appeals for the Federal Circuit has affirmed a finding of noninfringement entered by the federal district court in Dallas, Texas. In affirming summary of judgment in favor of defendant Skyline USA, Inc. in the patent infringement suit brought by Super-Sparkly Safety Stuff, LLC, the Federal Circuit held that under theordinary observer test, the designs for the patent and the accused product are not substantially the same.The Federal Circuit also concluded that the district court properly denied a request for additional discovery because the information sought was irrelevant to the issue of infringement(Super-Sparkly Safety Stuff LLC v. Skyline USA Inc., December 11, 2020, Dyk, T.).

Super-Sparkly owns a design patent for bedazzled pepper spray canisters, U.S. Patent No. D731,172 ("the ’172 patent"). The patent claims a design for a pepper spray canister decorated with rhinestones, in which rhinestones cover the bottom and some portion of the vertical part of a pepper spray canister. Super-Sparkly brought an action against Skyline alleging infringement of the ’172 patent. Skyline filed a motion for partial summary judgment of noninfringement. Super-Sparkly requested an extension of time for additional discovery. The federal district court in Dallas, Texas denied Super-Sparkly’s motion for an extension of time for additional discovery and granted summary judgment of noninfringement in favor of Skyline, concluding that Skyline did not infringe Super-Sparkly’s design patent. Super-Sparkly appealed, arguing that the district court erred in granting summary judgment of noninfringement and denying the request for additional discovery.

Ordinary observer test. The Federal Circuit first concluded that underthe ordinary observer test, the accused product does not infringe the ’172 patent. Under the ordinary observer test, the claimed and accused designs may be sufficiently distinct and plainly dissimilar, such that an ordinary observer clearly would not find the two designs substantially the same.

The Federal Circuit found that the ’172 patent claims a very simple design, in which rhinestones are applied to two surfaces of a canister: the vertical cylinder and the bottom. Removing the rhinestones from one of these surfaces—the bottom—was a significant departure from the claimed design. The ’172 patent and the accused design are thus plainly dissimilar. Because the accused design lacks rhinestones on one of the two surfaces decorated in the claimed design, an ordinary observer would not find the two designs substantially the same.An ordinary observer would find significant the lack of rhinestones on the bottom of the accused design and would not confuse the accused design with the ’172 patent. Therefore, the district court properly granted summary judgment of noninfringement.

Additional discovery. The Federal Circuit also concluded that the district court did not err in denying the motion for additional discovery because the information sought was irrelevant to the issue of infringement. The Fifth Circuit recognizes that requests for additional discovery on a summary judgment motion are broadly favored and should be liberally granted because the rule is designed to safeguard nonmoving parties from summary judgment motions that they cannot adequately oppose. A request must explain how specified facts, if adduced, will influence the outcome of the pending summary judgment motion. In the Fifth Circuit, if it appears that further discovery will not provide evidence creating a genuine issue of material fact, the district court may grant summary judgment.

Super-Sparkly sought certain information in its request for additional discovery. The facts related to Skyline’s knowledge and opinion of the ’172 patent and the accused design, the creation and sale of the accused product, and Skyline’s discovery conduct. The Federal Circuit concluded, however, that none of this information had any bearing on the ordinary observer test for design patent infringement. Because the information sought in further discovery was irrelevant to the issue of infringement, Super-Sparkly failed to explain how the specified facts could influence the outcome of the motion. Accordingly, the district court did not err in denying the request for additional discovery.

This case is No. 20-1490.

Attorneys: Chris Stewart (Chris Stewart, PLLC) for Super-Sparkly Safety Stuff, LLC. Robert Glenn (Oake Law Office, PLLC) for Skyline USA, Inc.

Companies: Super-Sparkly Safety Stuff, LLC; Skyline USA, Inc.

Cases: Patent GCNNews FedCirNews