Summary Judgment Satisfies Justice

by Dennis Crouch

Super-Sparkly Safety Stuff v. Skyline (Fed. Cir. 2020)

Apart from the Plaintiff’s fabulous name, this case involves the defendant’s catch-phrase “bling-it-on!”; photos of celebrity models; personal weapons (pepper spray); AND a design patent!

Both of these companies take the approach that a can of pepper-spray should be a fashion-accessory.  Skyline’s catch-phrase is “Bling it On!” while Super-Sparkly Safety Stuff doesn’t need more than its company name. The Patent at issue here is Super-Sparkly’s Design Patent No. D731,172 titled “rhinestone covered container for pepper spray canister.”  In the images below, you can compare the patented design (left) with Skyline’s accused product (right).  I have also included an image of a prior art rhinestone cover that was given-out at the Oscars a few years ago.

One thing to note here is that the patented design requires rhinestones on the bottom of the cannister.  Neither the accused product nor the prior art include those bottom-rhinestones.  Based upon that distinction, the district court awarded partial summary judgment of non-infringement. On appeal, the Federal Circuit has affirmed:

The district court did not err in concluding that that this difference precludes a finding of infringement under the ordinary observer test. . . .

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—is a significant departure from the claimed design. The ’172 patent and the accused design are thus plainly dissimilar. . . . Even assuming that the two designs are not “plainly dissimilar,” a comparison with the prior art makes clear that the accused design does not infringe the ’172 patent. Although there do not appear to be “many examples of similar prior art designs,” the prior art “Pepperface” reference, dating from 2006, was widely marketed and endorsed by various celebrities. Its design has rhinestones around the majority of the canister, but not on the top (near the spray nozzle) or bottom of the cylinder. Per Egyptian Goddess, then, the Pepperface design highlights that the key difference between the ’172 patent and the accused design is that the bottom of the cylinder is decorated with rhinestones.

Summary Judgment of Non-Infringement Affirmed.

Civil Procedure moment: Here, the non-infringement was only partial summary judgment because other claims remained pending in the case–namely, Skyline filed unfair competition counterclaims. Under R. 54(b), partial summary judgment is not immediately appealable because it is not a “final judgment.”  However, the rule allows the district court to sever-off that portion of the case and enter final judgment “if the court expressly determines that there is no just reason to delay.”  This is effectively an alternate mechanism for certifying an interlocutory question for appeal.  The district court took those steps here, and the Federal Circuit agreed that “the case was properly certified” and so heard the appeal.

Before the district court, the plaintiff had asked the court to delay the summary judgment ruling and instead permit more discovery under R. 56(d).  The district court denied that request and the Federal Circuit found no abuse of discretion.  In particular, the appellate panel found that none of the additional discovery sought by the patentee “has any bearing on the ordinary observer test for design patent infringement.”

12 thoughts on “Summary Judgment Satisfies Justice

  1. 2

    Nice to see a case in which the plaintiff was not allowed to bleed the defendant into a settlement with unrestricted discovery costs. Also in which the Fed. Cir. decisions on the narrowness of design patent scope are enforced up front with a summary judgement of non-infringement. Especially since it is so hard to get SJ under 103, even for something like this – just covering something old with rhinestones. Would any art unit in the PTO other than for design patents issue patents like this?

    1. 2.1

      I would hope not, seeing as it FOR a design patent…

      (All kidding aside, design patent law as always been an ill-conceived fit with WHY we have the form of Intellectual Property protection known as patents)

      1. 2.1.1

        I would also hope not (but which art unit deals with AI? 😉

        Paul, you must have some inside information. What happened during discovery of this case that causes you conclude that the patentee was trying to “bleed the defendant into a settlement”? And you must represent knock-off companies who like to characterize all design patents as narrow, right?


          Perry, my first remark was a general personal observation of many years of seeing what happens in many patent suits to the defendant, who generally cannot get a prompt summary judgment, unlike the defendant this case, and thus feel forced to settle to avoid litigation costs, especially uncontrolled discovery, irrespective of case merits. Re your last sentence, my comments are entirely pro bono, with no personal financial incentive or interest in any position, unlike many other blog commentators. I am certainly not the only one with a critical view of the entire design patent system. Starting with the study proof by Dennis that the PTO almost never applies 103 rejections to design applications. Compounded by their abnormal 103 and claim interpretation and infringement tests in court, contrary to the tests required for utility patents.


            with no personal financial incentive or interest in any position, unlike many other blog commentators

            And pray tell just who you would include in this ‘observation’ of yours, Paul….?


            Oh, those poor defendants. In the design patent space, defendants are those who copy plaintiffs’ designs. I have never seen a case where that’s not true. This is what design patents are best suited for, stopping knockoffs, companies who wait for another’s product to become successful and then copy it, making as few changes as possible, to try and avoid infringement. And there are an increasing number of design patent owners – many of them small companies whose designs have been ripped off – who bring motions for summary judgment of infringement, hoping to get a decision before aggressive infringers – mostly large, big box retailers (you know who they are) bleed them dry during discovery, irrespective of case merits. I have seen this first hand during my practice many times.

            Your comments about your last sentence… if I am one of those “other blog commentators”, I think it has always been clear that I’m an unabashed protectionist, and yes I make my living representing, by and large, design patent owners. And I will be the first to admit that the design patent system is not working all that well. One reason: the statutory provisions (35 U.S.C.) for US design patents has not been amended once since passage of the 1952 Patent Act; all the attention has gone to to utility patent law improvements. There are many, many legislative improvements that could be made to the design patent laws, but the design patent bar, such that it is (very small), has been slow to organize. And the main advocate (read: lobbyists) for patent law amendments over the years has been the IPO who are focused on – you guessed it – utility patent law. Meantime, the body of case law on design patents has developed its own rules for 103, functionality, Markman determinations, and infringement. Why? Gosh, need I point this out? Design patents are very, very different from utility patents and due to the nature of their subject matter had to develop its own case law. As one example, KSM – despite being a Supreme Court case – has never been applied to design patents, not by the lower courts, not by the USPTO, and not even by private practitioners (except unsuccessfully in isolated cases). And why not? Because it makes absolutely no sense to do so, considering the difference between aesthetic features and utilitarian features.

            I’ll end with a note about “obvious” designs. The reason for a low rate of obviousness holdings is not because the 103 design patent test is “abnormal”, but rather because most designs are, in fact, not obvious. When a designer sits down to design an original product, one that distinguishes his/her client’s products from those of competitors, they strive to make it look different, distinctive from those of others. The result in most cases? There’s hardly any prior art that’s even close, which results in a low rate of obviousness holdings. Dennis has actually written (I think) that design patents behave more like trademarks in that respect, as market differentiators.


              Yes, refusal to consider or grant S.J., and allowing long and abusive discovery, can also work in favor of some defendants.
              But as for 103, “because most designs are, in fact, not obvious” is a matter of opinion with which I strongly disagree, the subject case being a good example of why. The proven fact that design applications are not 103 examined by the PTO is definitely not supportive of that opinion. Nor do I see any reason why the Fed. Cir. is free to not even consider KSR, the controlling Sup. Ct. decision on 103. If none of the KSR 103 decision [among others] is inapplicable to design patents the Fed. Cir. should have clearly said so, and they have not.
              It it is really true that almost all design patent suits are against “knock-offs”, i.e. copyists, would that not strongly support copyright protection rather than the agreed deficiencies in force-fitting ornamental designs into patent law?
              Thank you for this discussion opportunity.


                Are you saying that for 103 cases — the facts of which are disassociated from design patents — the Courts should be ADDING (what could only be dicta) Design Patent law ‘observations’….?

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