It is pretty well known that icons can be protected with design patents, however we continue to adhere to the fiction that it is not the icon we are protecting, but the substrate decorated with the icon that we are protection.  U.S. Patent No. D697,530 illustrates one technique for protecting an icon that could appear on both a computer display and a printed display:



The icon on the computer screen is simply shown with a dashed border separating the icon from the rest of the screen, which is not depicted.  The icon on the printed matter is shown within its own border, and with a slightly different dashed border separating the icon form the rest of the printed material on which it is depicted.

If the Slipper Fits . . .

In High Point Design LLC v. Meijer, Inc., [2014-1464], the Federal Circuit in a non-precedential, but still instructive decision, reversed summary judgment of anticipation but affirmed summary judgment of non-infringement of U.S. Patent No. D598183 on a Slipper.

In reversing the district court’s finding of anticipation, the Federal Circuit said that “Design patent anticipation requires a showing that a single prior art reference is ‘identical in all material respects’ to the claimed design.”  View the evidence in the light most favorable to the patent owner, the Federal Circuit found that a reasonable jury could have found that there was not clear and convincing evidence of anticipation.

The Federal Circuit criticized the distraction court for not performing a side-by-side comparison, but instead concluding that the claimed design and the prior art share the same characteristics.  The Federal Circuit noted that the district court’s analysis was “on too high a level of abstraction,” failing to focus on the distinctive visual appearance of the prior art and the claimed design.  The detail of the analysis that the Federal Circuit undertook was instructive:


The Federal Circuit also pointed to differences in the soles of the slippers, resurrecting the infamous Contessa Food Prods., Inc. v. Conagra, Inc., shrimp platter case.


While the Federal Circuit reversed the district court’s summary judgment of anticipation, it affirmed the district court’s judgment of non-infringement with a similarly detailed comparison between the accused product and the patent.

The district court conducted a side-by-side comparison between the claimed design and the accused slippers, and concluded that the accused slipper “evokes a soft, gentle image” while the patented design “appears robust and durable.”  The Federal Circuit agreed, finding that “the patented and accused designs bring to mind different impressions.”  The Federal Circuit characterized the accused design as “soft and formless” while the patent design appeared “structured and formed.”


Differences in the soles of the designs also factored into the determination.

The Federal Circuit recognized that both designs essentially consist of a slipper with a fuzzy portion extending upward out of the foot opening, but said that such high-level similarities, are not sufficient to demonstrate infringement.

Although not precedential, the opinion is instructive on how to compare designs for purpose of anticipation and for purposes of infringement.

No Mulligan for Plaintiff; Design Patent Case Decided on the Pleadings

In Young v. Ann Stone, Inc., 1:13-cv-04920 (N.D. Ill. 2014) the district court granted judgment on the pleadings that defendant’s design for a golf practice target:


does not infringe U.S. Patent No. D442,661:


“because the two devices are so obviously dissimilar as to warrant a finding of non-infringement as a matter of law”.

In the words of the court, “[o]ne of the most obvious differences between the products is that top of the lower disk on defendant’s product is noticeably inclined, directing the ball upward to the center where it is held in place. Plaintiff’s design features a flat lower base with what appears to be a washer around the center column that holds the ball. This difference is readily apparent upon even a casual view of the two products.”  The court said that the spaced discs were functional and could not serve as the basis for a determination that its product infringes on the patented design, noting that “all of the prior art shares this feature” and finding that it is “the unique mechanisms among the products that contribute to the overall differences in appearance”.  In the context of the prior art such as U.S. Patent Nos. 1,297,055 and 2,899,207 , the district court’s decision makes even more sense:


Of note to design practitioners, is that the defendant’s arguments about the cap on the flag pole and the placement of the flag contributed to court’s finding that the designs were different:

Defendant argues that the rounded cap on plaintiff’s flagpole is substantially different from the tapered insert on defendant’s flagpole. The flag of the alleged infringer’s product also covers the top of the flagpole, while the suggested flag on the patented product (which is not a part of the patented design) appears to attach to the pole well below the cap in question, leaving the top of the flagpole visible. When the products are viewed as a whole, this difference adds to the impression that the two products are plainly dissimilar.

Most of the art of design patent drafting is deciding what to show and what not to show, and of what is shown, what is in solid and what is in dashed lines.  The court’s discussion of such details is a reminder to the careful prosecutor to pay attention.