Roman Shade Patents Have No Protectable Points of Novelty

Posted on | April 29, 2008 | No Comments

2008-1320 Park B. Smith v. CHF Indus.
SD/NY 06-cv-869

Plaintiff Smith appeals from Judge Lawrence McKenna’s grant of summary judgment finding defendant CHF’s roman shade products do not infringe D493,651 or D505,039.

First the court held that the overall similarity of CHF’s roman shade was sufficiently close to the patented design to defeat summary judgment as to the ordinary observer test.  However, the court found that plaintiff could not show that CHF appropriated the "point of novelty" of the claimed designs because there were no "legally cognizable points of novelty."

The alleged point of novelty shown in the patents was:

a combination of features, including: the continuous rod pocket along the top of the shade; uniform bottom folds with a tapered appearance and a cascading effect when stacked; the cascading, compact, and stacked presentation of folds viewed from the front and rear; and a repeat of the visual effect if the top pocket in the bottom folds.

The court analyzed in light of Lawman Armor (clarification) and here (original decision):

The Federal Circuit held in Lawman Armor that summary judgment of noninfringement is appropriate, notwithstanding the existence of factual issues under the ordinary observer test, if the claimed design has no legally cognizable points of novelty.  In reaching the holding, and in subsequent clarifying opinions, the Lawman Armor Court found that a combination of features, where each individual feature is found in the prior art, may not constitute a point of novelty where the combination of features constitutes the overall appearance of a design.

According to the court, Smith acknowledged that its asserted "point of novelty" combination of features constituted the "overall appearance" of the designs.  There was apparently no dispute that each of the features was found in the prior art.   Thus, the court concluded that under Lawman Armor  there was no legally recognized point of novelty and therefore no infringement.

The court did, however, reject defendant’s § 112 challenge to the patents based on an ornamental horizontal line that appears on some, but not all, of the drawings in the ‘651 patent.  The court acknowledged that this could result in indefiniteness, but found that the inconsistent drawings were "not of such magnitude that the overall appearance" of the design was unclear.

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