Cross-posted from Valpo Law Blog.

Maat, the ancient Egyptian goddess of law, via Wikimedia Commons

On September 3, the Southern District of Indiana granted summary judgment for the defendants in Butler v. Balkamp Inc., a patent case. Cars and car parts are a huge part of the Indiana economy, so it’s no surprise that this rare Hoosier patent case is automotive-related.

The patent in suit was D500,646, a design patent for a tool handle to be used with socket wrench sets. The accused product was the family of Spinning Impact Extensions from Indiana’s own Balkamp, which is a distributor in the NAPA Auto Parts System.

Design patents differ from the more familiar “utility patents” in that they protect only the ornamental aspects of a product. For the most part, design patents have been an obscure backwater of intellectual property law, though the recent case of Apple v. Samsung(which hinged on design patents for the iPhone)has given them a higher profile.

The Southern District of Indiana is part of the Seventh Circuit, but patent cases are appealable only to the Federal Circuit. The district court’s decision thus hinges on the Federal Circuit’s 2008 Egyptian Goddessruling, which overturned a century of precedent on design patents.

In Egyptian Goddess, the Federal Circuit replaced an old rule that required juries to decide whether an accused product infringed on the patent’s “point of novelty” with a new rule that only required that the accused product be similar enough (from the vantage point of an “ordinary observer” familiar with the prior art) that the observer might confuse the accused product with the patented design.

Many practitioners expected Egyptian Goddess to usher in a golden age of design patent enforcement, but it hasn’t lived up to the hype. In fact, since Egyptian Goddess, design patent infringement actions have overwhelmingly failed at the summary judgment stage. Because the factual inquiry is less complex, it seems, a court can more easily conclude that “there is no genuine dispute as to any material fact,” and throw the case out before it ever reaches a jury.

In this case, looking at the “overall visual impression” of the product, the Southern District found that “it was obvious that the accused product embodies an overall effect that was clearly dissimilar from that of the patented design and thus could not cause confusion in the marketplace.” The Court drew particular attention to the “boxier and sharper” look of the accused product, and to the straight edges and lack of knurling at each end of the cylindrical body, which “gives the visual effect of there being three distinct sections of the Spinning Impact Driver.”


Interestingly, the opinion entirely ignored a survey that the plaintiffs conducted, by which they attempted to show that the allegedly infringing design was actually perceived as confusingly similar when viewed by a sample of actual customers who had actually been exposed to the prior art.

You might think that the Court would at least have explained why it didn’t consider that evidence worthy of attention, but apparently the Court didn’t think such an explanation was necessary. Even when faced with empirical evidence of what ordinary observers think, the Court seemed to prefer to consider the “ordinary observer” as a mental construct, rather than an objective entity whose perceptions could be objectively measured.

What do you think? Are the designs shown above similar enough to confuse the average customer? And when a court conducts an “ordinary observer” test, should it have to take notice of the evidence of what ordinary observers really think, or can it freely substitute its own thinking?