Pro-Troll Inc. v. Proking Spoon LLC

Background

Pro-Troll Inc. owns U.S. Design Patent No. D516,663 for the ornamental design of a fishing lure. The patent issued in 2006, was reexamined by the United States Patent and Trademark Office, and expired on March 7, 2020. Pro-Troll alleged that Proking Spoon LLC and KMDA, Inc. infringed the patent through specified fishing-lure products. It also alleged that the defendants tortiously interfered with Pro-Troll’s prospective economic relationships by manufacturing, supplying, and selling the accused products and continuing those activities after receiving cease-and-desist letters.

Proking Spoon failed to plead or otherwise defend, and the clerk entered default against it. Pro-Troll had not moved for default judgment, so no judgment had been entered against Proking Spoon. KMDA answered and asserted counterclaims, but its motion addressed only Pro-Troll’s claims.

Patent-infringement analysis

The court applied Rule 56’s summary-judgment standard, under which judgment is appropriate when there is no genuine dispute over a material fact and the moving party is entitled to judgment as a matter of law. For a design patent, the court first determines the meaning and scope of the claimed design and then compares that design with the accused design under the ordinary-observer test. That test asks whether an ordinary observer, giving the attention usually given by a purchaser, would consider the designs substantially the same and be deceived into purchasing one believing it was the other.

The court construed the patent claim as “The ornamental design for a fishing lure, as shown and described.” It concluded that a detailed verbal construction was neither necessary nor helpful. The patented lure had a rounded rectangular form with opposing bent ends, eyelets, a diagonal fin, and an electric voltage generator with a particular placement, orientation, shape, and size.

The reexamination decision identified the placement, orientation, and proportion of the electric voltage generator in combination with double-ring eyelets as distinguishing features over the prior art. The court found that the prior art already contained several other aspects of the design, including the rounded rectangular form, opposing bent ends, eyelets, and diagonal fin. That context directed the ordinary observer’s attention to the electric voltage generator.

The accused designs shared the general shape, eyelets, and first fin, but did not contain the electric voltage generator. Instead, they contained a second fin next to and parallel to the first fin. The court found that the second fin differed from the generator in orientation, position, shape, and size, and that the difference was not minor. It held that no reasonable jury could find that an ordinary observer would be deceived into believing that the accused designs were the patented design. The court therefore granted summary judgment to KMDA on the infringement claim.

Tortious-interference claim

KMDA argued that Pro-Troll’s claim for tortious interference with prospective economic relationships was based only on the alleged patent infringement. Pro-Troll’s briefing likewise described the claim as based on the defendants’ alleged continued infringement. The court held that the claim was preempted by federal patent law because the complaint alleged no marketplace conduct related to Pro-Troll beyond manufacturing, marketing, and selling products that allegedly infringed the patent.

The court further stated that, apart from preemption, the interference claim would fail on the merits because it was based only on the alleged infringement, and the court had granted KMDA summary judgment on infringement.

Order

The court granted Defendant KMDA, Inc.’s Motion for Summary Judgment. It dismissed Plaintiff Pro-Troll Inc.’s claims with prejudice. Under an earlier order staying litigation, the parties were also required to meet and confer and submit a joint proposed amended schedule or plan for resolution of the lawsuit within fourteen days of the order.