IP Law Daily, PATENT—S.D. Cal.: Mad Catz did not infringe design patent for game controller, (Jun 30, 2016)

By Mark Engstrom, J.D.

A Mad Catz game controller did not infringe a Performance Designed Products (PDP) patent on an ornamental design for an "asymmetrical game controller," the federal district court San Diego has ruled. Because the accused controller was plainly dissimilar as a matter of law, a complaint by PDP was dismissed with prejudice (Performance Designed Products LLC v. Mad Catz, Inc., June 29, 2016, Curiel, G.).

Lawsuit. PDP sued Mad Catz for the infringement of U.S. Design Patent No. D624,078, titled "Asymmetrical Game Controller." PDP argued that, in view of the prior art and in the eyes of an ordinary observer, Mad Catz’s accused "Fight Pad Pro Controller" had an overall appearance that was confusingly similar to—and substantially the same as—its patented design.

Ordinary observer test. The court noted that the "ordinary observer" test involved two separate questions: (1) whether the claimed and accused designs were sufficiently similar without any review of the prior art, and if so, (2) whether the claimed and accused designs were sufficiently similar after a comparison with the prior art.

Comparison of claimed and accused designs. After conducting a side-by-side comparison of the accused controller and the patented design, the court concluded that the two designs were not substantially the same. According to the court, the accused design would not deceive an ordinary observer to such a degree that the observer would mistakenly believe that the accused product was the same as the patented design.

First, the curved features of the patented design and the angular and "boxy" look of the accused controller were notable difference. Second, the face, sides, bottom line, and handgrips of the two controllers were different. Because the court found numerous differences between the accused controller and the patented design when viewing the design as a whole, it concluded that an ordinary observer would clearly perceive the two designs as "plainly dissimilar." For that reason, the court ruled that patent infringement claim was facially implausible. Dismissal of the claim was therefore warranted.

Comparison of designs with prior art. Because the accused controller and patented design were plainly dissimilar, the court did not need to compare the two designs with the prior art. Nevertheless, consideration of the prior art showed that an ordinary observer would not mistakenly believe that the accused controller and the patented design were the same.

Propriety of dismissal on 12(b)(6) motion. PDP argued that dismissal would be improper because the ordinary observer test was a question of fact. It failed, however, to cite any case that indicated that the ordinary observer test was a factual inquiry. PDP did cite cases in which courts denied summary judgment based on the presence of factual issues, but those cases did not change the fact that, without more, PDP failed to prove that the two designs were substantially the same to an ordinary observer.

Because the court found that the accused controller and the patented design were "plainly dissimilar," the court could—and did—dismiss the case as a matter of law. Because an amendment would be futile, the dismissal was granted with prejudice.

The case is No. 16-cv-629 GPC (RBB).

Attorneys: Daniel N. Yannuzzi (Sheppard, Mullin, Richter & Hampton, LLP) for Performance Designed Products LLC. Tyson E. Marshall for Mad Catz, Inc.

Companies: Performance Designed Products LLC; Mad Catz, Inc.

Cases: Patent CaliforniaNews