Seeing Clearly: An Ordinary Observer Must Look Through Lens of the Prior Art

| Brian C. BarnesJeremiah S. Helm, Ph.D.


Before Dyk, Taranto, and Stoll. Appeal from the United States District Court for the Northern District of Illinois.

Summary: Time’s up! The hourglass shape that is the dominant feature in both the asserted design patents and accused hoverboard products does not support a preliminary injunction because it was in the prior art.

Hangzhou Chic Intelligent Technology Co., Ltd. and Unicorn Global, Inc. (“plaintiffs”) sued several sellers of Gyroor-branded hoverboards (“defendants”) for infringement of four design patents and moved for a preliminary injunction. Plaintiffs asserted that the accused hoverboards infringed the patented designs because they all had an integrated “hourglass” body shape. Defendants argued that plaintiffs’ infringement analysis failed to account for a prior art reference that included an hourglass shape for a hoverboard. The district court granted the preliminary injunction, finding that plaintiffs had shown a likelihood of success on the merits because a trial would likely be required to resolve the infringement dispute and the accused products were not “sufficiently dissimilar” or “plainly dissimilar” from the patented design.

The Federal Circuit reversed, holding that the district court erred in finding a likelihood of success on the merits for four independent reasons. First, the Federal Circuit held the court applied the wrong legal standard, and that an injunction cannot be granted merely because a trial is required to establish dissimilarity. Second, the Federal Circuit held the court erred by not conducting the ordinary observer analysis through the lens of the prior art. Applying Egyptian Goddess, the Federal Circuit held that where a dominant feature of the patent design and the accused products—here an hourglass shape—appears in the prior art, the infringement analysis should be based on other features of the design. Third, the Federal Circuit held the court erred because the products all differed, and the court did not carry out a product-by-product analysis. Fourth, the Federal Circuit held the preliminary injunction was overbroad because it generally enjoined any future product and not just the products found likely to infringe or those colorably different.

Editor: Paul Stewart