Boost Oxygen, LLC v. Oxygen Plus, Inc.

Background

Boost Oxygen owns U.S. Design Patent D610,250, which covers an ornamental design for an oxygen-canister mask. Boost sued Oxygen Plus, alleging that Oxygen Plus’s original O+ Biggi mask infringed the design patent and Boost’s trade dress—the overall appearance of a product that may include features such as shape, size, color, and other visual characteristics.

The parties resolved the earlier lawsuit through a settlement agreement and consent judgment. Oxygen Plus agreed that its original mask infringed Boost’s design patent and trade dress, agreed to redesign the mask, and agreed not to infringe the patent or use a product design confusingly similar to Boost’s trade dress. The consent judgment included a rough sketch of the planned redesign and stated that Boost agreed the redesigned mask would not infringe the patent or trade dress.

Oxygen Plus made the sides of the mask more rounded and made other minor changes. Boost then alleged that the redesigned mask still infringed the patent and trade dress and moved to hold Oxygen Plus in contempt of court.

Design-patent contempt claim

For contempt based on continued patent infringement, Boost had to prove by clear and convincing evidence both that the redesigned product was not more than colorably different from the product previously found to infringe and that the redesigned product actually infringed the patent. The parties agreed that the redesigned mask was not more than colorably different from Oxygen Plus’s original mask.

The court rejected Boost’s argument that Oxygen Plus was barred from disputing infringement of the redesigned mask. The consent judgment resolved whether the original mask infringed, but the redesigned mask did not exist during the earlier litigation, so its infringement was not the same issue and was not actually litigated. The court also noted that the consent judgment expressly contemplated a redesign and that Boost had agreed the redesigned mask would not infringe.

The court further rejected Boost’s proposed method of comparing only the redesigned features with corresponding features of the patented design. Because this was a design patent, the court said infringement must be evaluated under the “ordinary observer” test: whether an ordinary purchaser would find the accused and patented designs substantially the same when viewed as a whole.

Applying that test, the court found the designs plainly dissimilar. Boost’s patented design had a draping shoulder, a slanted mouth opening, and an angular neck portion. The redesigned O+ Biggi mask had none of those features; instead, it had a narrow ring, a flat mouth opening, and a hemispherical neck portion. The court therefore concluded that the redesigned mask did not infringe the design patent and would not support contempt.

Trade-dress contempt claim

The consent judgment also barred Oxygen Plus from using Boost’s trade dress or another product design confusingly similar to it. Although Oxygen Plus argued that Boost had not established that its trade dress was legally protectable, the court held that the consent judgment had resolved that issue for purposes of the contempt proceeding. The remaining question was whether the redesigned mask was confusingly similar to Boost’s trade dress.

The court compared the redesigned mask with Boost’s mask, rather than with Oxygen Plus’s original mask. It found that the redesigned mask was not confusingly similar because the two masks had substantially different designs, including differences in the shoulder, mouth opening, and neck portion. The court therefore declined to hold Oxygen Plus in contempt for trade-dress infringement.

The court also stated that contempt requires a court order to be clear and unambiguous. It found the trade-dress provisions of the consent judgment insufficiently specific because they did not identify which features of Boost’s mask constituted protected trade dress, did not explain why the original Oxygen Plus mask was confusingly similar, and generally ordered Oxygen Plus to avoid conduct that the law already prohibited. The court said this language left Oxygen Plus uncertain about what it had to do to avoid contempt.

Disposition

The court ordered that Boost Oxygen’s motion for contempt of court, ECF No. 72, was denied.