Complaint for Patent Infringement
(Design Patent)

Summary

This template is for a design patent infringement complaint alleging direct infringement of a single design patent by a single defendant. This template includes practical guidance and drafting notes. Like other federal court complaints, a design patent infringement complaint must comply with the notice pleading standards established by the Supreme Court in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009). District courts applying the Iqbal-Twombly pleading standard may differ significantly on the level of detail that they require for patent infringement complaints. Therefore, be sure to research the district court case law on this issue. Also, conduct an adequate factual investigation and legal analysis before filing a complaint. The test for patent infringement is whether an ordinary observer familiar with the prior art would be deceived into thinking that the accused design is the same as the patented design. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008). An ordinary observer is a hypothetical person, presumed to be familiar with the prior art, giving to the product design only such attention as an ordinary purchaser gives and capable of factoring out purely functional elements of the respective designs when comparing them. Applying the ordinary observer test requires a side-by-side view of the design patent drawings and the accused products. Crocs, Inc. v. International Trade Commission, 598 F.3d 1294, 1304 (Fed. Cir. 2010). In making the visual comparison between the patented design and the accused design, the emphasis is on the overall effect of the two designs, not on individual elements of the designs, because concentration on small differences in isolation distracts from the overall impression of the claimed ornamental features. Crocs, 598 F.3d at 1303–04. In Hall v. Bed Bath & Beyond, Inc., 705 F.3d 1357, 1362–63 (Fed. Cir. 2013), the Federal Circuit found that a design patent infringement complaint complied with the Iqbal-Twombly pleading standard when the complaint: • Identified the patent • Showed the patented design • Described the patented design features present in the accused product – and– • Stated that the accused product was virtually identical to the plaintiff's product embodying the patented design. Reversing the district court's dismissal of a design patent infringement count on the pleadings, the Federal Circuit in Hall made it clear that the complaint does not have to include the plaintiff's claim construction, nor does it have to identify the new, original, and ornamental features of the patented design. Hall, 705 F.3d at 1362-63. It is important to include a visual comparison between the patented design and the accused product in the complaint. While comparing the accused product to the patent owner's commercial embodiment of the patent design may be acceptable (as in Hall), the correct comparison for determining infringement is between the accused product and the patent drawings unless it is shown that there is no significant distinction between the patented design and the patent owner's commercial embodiment. See Design Patents: Infringement Fundamentals and Strategies—The Ordinary Observer Test for Infringement. For example, in Gold Crest, LLC v. Project Light, LLC, 2021 U.S. Dist. LEXIS 44570, at *14 (N.D. Ohio March 10, 2021), the court found the pleading standard was met when the complaint included photographs of the accused products alongside views of the patented design. In contrast, in Sanho Corp. v. Intelliarmor, 2020 U.S. Dist. LEXIS 199299, at *9 (C.D. Cal. Sept. 25, 2020), the court found that the complaint failed to meet the pleading standard for design patent infringement when it contained no factual allegations that the design of the accused products was similar to the patented designs and failed to include drawings or photographs that would allow the court to infer a plausible claim of infringement. Be aware that the following documents typically have to be served with a complaint: a summons, a civil cover sheet, and a corporate disclosure statement. An ADR compliance or notification certificate and notice of related cases also may be required. Check the court's local rules and local patent rules for special requirements and see generally TWG Practice Guide: Fed. Civ. Proc. Before Trial § 17-XVI. For a detailed discussion of the principles of design patent infringement, see Design Patents: Infringement Fundamentals and Strategies. For an overview of design patent enforcement and how it differs from utility patent enforcement, see Design Patents: Enforcement Overview. For a full listing of design patent content, including resources on U.S. design patent prosecution and litigation, see Design Patent Resource Kit.