Before Bryson, Circuit Judge, Skelton, Senior Circuit Judge, and
Gajarsa, Circuit Judge.
The opinion of the court was delivered by: Per Curiam.
Randall S. Ross, doing business as Off the Wall Storage Systems (Ross), is the owner of U.S. Design Patent No. 327,381 (the '381 patent), titled Storage Shelving Unit. Ross brought suit in the United States District Court for the District of Massachusetts alleging that Sonax Furniture Manufacturing, Ltd., and Time Warner, Inc. (collectively, Sonax), had infringed the '381 design patent as well as a utility patent that he owned. The trial court granted Sonax's motion for summary judgment of noninfringement as to both the design patent and the utility patent. It then dismissed as moot both parties' summary judgment motions as to the validity of the '381 design patent. Ross appeals the trial court's order granting Sonax's motion for summary judgment as to the '381 patent. Sonax conditionally cross-appeals the trial court's dismissal of its summary judgment motion of invalidity of the '381 patent as moot, requesting that if this court were to reverse the finding of noninfringement, we should direct the trial court to consider the motion. Because we affirm the district court's judgment as to noninfringement, we do not address Sonax's conditional cross-appeal.
The '381 design patent owned by Ross claims "the ornamental design of a storage shelving unit as shown and described," with four figures defining the scope of the design. The figures define a stand-alone, swivel-based shelving unit, in which four square-shaped nonadjustable shelves are supported by four "L"-shaped posts, leaving the interior of the unit open. The four shelves are spaced equally apart, and the facing of each of the "L"-shaped posts extends approximately one-third the width of each shelf. The edges of the shelves are flush with the sides of the unit, and the base and top of the unit have the same dimensions as the remainder of the unit.
Sonax manufactures the MS800, a stand-alone, swivel-based shelving unit. The unit is made in Canada and sold in the United States by Time. The MS800 differs from the design of the '381 patent in several respects; unlike the '381 design, the MS800 has pegging to support the shelves, which allows shelves to be added or removed and allows the distance between the shelves to be adjusted; the shelf face of the MS800 is recessed from the outer face of the unit, while in the '381 design the shelf face is flush with the outer face; the dimensions of the base are smaller than those of the unit itself, while in the '381 design the footprint of the base is the same as that of the rest of the unit; and the backs of the shelves of the MS800 are closed off so that one cannot see through the interior of the unit, while in the '381 design, the backs of the shelves are largely open so that an observer can look directly through the unit from any direction.
In determining whether a design patent is infringed, a court must apply a two-part test. See Unidynamics Corp. v. Automatic Prods. Int'l, Ltd., 157 F.3d 1311, 1323 (Fed. Cir. 1998). The first part of the test, known as the "ordinary observer" test, is drawn from the Supreme Court's decision in Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871). The Court stated (id. at 528):
[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.
The second part of the test, the so-called "point of novelty" test, requires that the accused device "appropriate the novelty in the patented device which distinguishes it from the prior art." Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984) (citation omitted).
Ross contends that the design of Sonax's MS800 is substantially similar to the design of the '381 patent, or, at the very least, there is a genuine dispute as to this fact so as to preclude summary judgment. Notwithstanding the conclusory assertions of infringement by Ross's expert, however, we agree with the district court that no reasonable jury could have found that the accused unit was substantially similar to Ross's patented design. Among other differences, the design protected by the '381 patent has an open interior, and the interior of the accused infringing product is closed. As the district court concluded, the ordinary observer "could [not] fail to observe that one can see through the open interior of the '381 unit while the interior of the MS800 presents an impervious core."
Ross contends that the open space cannot be considered in the "ordinary observer" part of the analysis, because Sonax's advertising material depicts a unit in which the shelves are nearly filled, making it difficult to determine whether or not the interior of the MS800 unit is open. In determining whether a product design infringes a patented design, however, the product is compared to the design, and it is immaterial how the product may look when it is actually in use. See, e.g., Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993) (noting that the patented design of a block used in building retaining walls is defined by the block as a whole, and not only those features that are visible when the block is in use). Thus, the fact that Sonax's advertising depicts the MS800 mostly filled is irrelevant to the infringement analysis.
Even if Ross were correct in his assertion that the designs are substantially similar (and thus satisfy the "ordinary observer" test), his argument would fail because the MS800 does not appropriate the point of novelty of the '381 patent. The trial court determined the point of novelty of the '381 patent to be "the independent positioning of the vertical support posts at each corner of the unit to give its interior an aesthetically pleasing open `look.'" We agree that that the independent placement of the vertical support posts, which results in an open look, distinguishes the design of the '381 patent over the prior art.
The closest prior art is Design Patent No. 294,441 (the '441 patent). The swivel-based book display rack of the '441 patent has a base and a top cover that are of the same dimensions as the rest of the unit, and the facing of the support posts takes up approximately one-third of each shelf. The design of the '441 patent differs from the design of the '381 patent, however, in that the swivel base comprises about one-third of the height of the unit, and the vertical support posts are joined in the middle, resulting in a closed interior. The prior art also includes a display rack that has an open interior and has free-standing support posts, see Des. Pat. No. 306,380, as well as a display rack in which the base comprises a small portion of the height of the unit, see Des. Pat. No. 316,643. The only design feature of the '381 patent that is not depicted in the prior art is the free standing "L"-shaped vertical support posts, whose use results in an "aesthetically pleasing" open look. Thus, the trial court was correct in designating that feature as the point of novelty.
Ross asserts that the open space in the center of the unit cannot be considered a point of novelty, for two reasons. First, he contends that the open space is functional because it allows the unit to accommodate deeper items, and a design patent protects only the ornamental features of the patented design. This argument is unconvincing because there are many different ways in which shelving could be designed to achieve the same function. Moreover, in the district court Ross asserted that the only functional feature of the '381 design is the use of shelving to store items, and even then Ross argued that the shelving may take many different forms. Thus, the open space depicted in the '381 patent is part of the ornamental design and is not solely dictated by function. Second, Ross maintains that the open space cannot be a point of novelty, because four of the five references cited by the examiner also contain an open interior. It is not the open space per se that constitutes the point of novelty of the '381 patent, however. Instead, the point of novelty consists of the use of free-standing "L"-shaped vertical support ...