CAFC: Design Patent Infringement Opinion Need Not Mention Every Detail of a Patented Design

Brooks Furniture v. Dutailier Int’l. (Fed. Cir. 2005) (03-1379) [pdf].

By Jennifer Swartz

Brooks Furniture brought a declaratory judgment action in Tennessee District Court after receiving a cease and desist letter from Dutailier International, the assignee of the design patent for “Rocking Chair Trim.”  Although the cease and desist letter sent to Brooks Furniture was based upon opinions of counsel, officers, and outside experts, the district court found that the letter had been sent in bad faith by Dutailier because the opinions Dutailier relied upon did not discuss the chair back’s specific feature of a “trailing edge descending in a gentle ‘s’ curve.” Accordingly, the lower court deemed the case exceptional and awarded attorney fees. 

The Federal Circuit vacated the award, rejecting the lower court’s narrow view of the opinion’s reasonableness:

The fact that an infringement opinion may not have mentioned every detail of the patented or the accused design does not necessarily render the opinion wrong or unreliable.

As the test for a design patent’s infringement is “substantial identity,” not every aspect of the design need be identical, and thus an opinion need not consider every aspect of a design to be reasonable. 

Jennifer Swartz is an associate at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago.  Ms. Swartz has experience in various aspects of intellectual property litigation including patent and trademark infringement, and trade secret violations.  [Brief Bio]

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.