simplehuman, LLC v. iTouchless Housewares and Products, Inc.

Background

simplehuman, LLC manufactures and sells stylistic trash cans. iTouchless Housewares and Products, Inc. sells several trash cans, including the Dual-Deodorizer Oval Open-Top trash can and the Dual-Compartment Open Top Trash and Recycle Can. simplehuman alleged that iTouchless infringed two design patents: U.S. Design Patent No. D644,807 C1, titled “Slim Open Trash Can,” and U.S. Design Patent No. D729,485 S, titled “Dual Recycler.” simplehuman also alleged infringement of a utility patent, but iTouchless’s motion addressed only the two design-patent claims.

Legal standard

The court applied Federal Rule of Civil Procedure 12(b)(6), which asks whether a complaint contains enough factual material to make a claim plausible. On such a motion, the court generally accepts the complaint’s factual allegations as true, draws reasonable inferences for the plaintiff, and may consider patents attached to the complaint and undisputedly authentic photographs of the accused products.

A design patent protects the ornamental appearance of an article, rather than its functionality. Under the “ordinary observer” test, infringement may be shown if an ordinary observer familiar with prior designs could be deceived into believing that the accused product is the patented design. The comparison must consider the design as a whole, not each feature separately. Dismissal at the pleading stage is appropriate only when the patented design and accused product are so plainly dissimilar that confusion by an ordinary observer is implausible.

Discussion

Views shown in the complaint. iTouchless argued that simplehuman had to show front, rear, left, right, top, and bottom views of each accused product. The court rejected that argument. The asserted patents did not include separate rear and left views because they identified those views as mirror images of the front and right views. Because simplehuman compared every view found in the patents, the court held that the complaint included enough views to plausibly allege overall design similarity. The court also rejected iTouchless’s argument that the complaint had to identify every design difference through an element-by-element comparison.

D807 Patent. iTouchless identified differences between the D807 Patent and the Dual-Deodorizer Oval Open-Top trash can, including the shape of the opening and body, the presence or absence of seam lines, the width and flaring of bands, handle cutouts, whether the bands were flush with the body, and the accused product’s asymmetry caused by a handle on one side.

The court concluded that these differences did not make the designs plainly dissimilar as a matter of law. It was not convinced at this stage that the accused product’s slightly squared elongated opening was not oval. The complaint alleged that iTouchless advertised the product as having an “oval open-top” and a “flat oval and lid-free design,” which supported a plausible inference that an ordinary observer could view the openings as oval and mistake the accused product for the patented design. The court also found that disputes about whether certain features were claimed or disclaimed, and whether certain lines were seams or contour lines, were better addressed during claim construction rather than on a motion to dismiss. It therefore denied iTouchless’s motion to dismiss the D807 Patent claim on this ground.

D485 Patent. iTouchless identified differences between the D485 Patent and the Dual-Compartment Open Top Trash and Recycle Can, including the shapes and slopes of the openings, the shape and position of the center divider, seams, a lower band, and sloped sides. The court found that several alleged differences were disputed and therefore drew inferences in simplehuman’s favor. The remaining differences did not make simplehuman’s allegation of substantial similarity implausible. The court therefore denied iTouchless’s motion to dismiss the D485 Patent claim on this ground.

Disposition

The court denied iTouchless’s motion to dismiss the design-patent claims in simplehuman’s first amended complaint. The court also set an initial case-management conference for December 3, 2019, at 2:00 p.m. Judge Haywood S. Gilliam, Jr. signed the order on November 13, 2019.