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                       NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit

                                      06-1096, -1129


                         AMINI INNOVATION CORPORATION,

                                                        Plaintiff-Appellant,

                                             v.


                              ANTHONY CALIFORNIA, INC.
                                 and JAMES CHANG,

                                                        Defendants-Cross Appellants.



        Daniel M. Cislo, Cislo & Thomas LLP, of Santa Monica, California, argued for
plaintiff-appellant. With him on the brief were Mark D. Nielsen, and Kelly W.
Cunningham.

      Ronald Mark St. Marie, Chan Law Group LLP, of Los Angeles, California, for
defendants-cross appellants. With him on the brief were Thomas T. Chan, and Lisa A.
Karczewski.


Appealed from: United States District Court for the Central District of California

Judge S. James Otero
                        NOTE: This disposition is nonprecedential.

 United States Court of Appeals for the Federal Circuit

                                       06-1096, -1129


                          AMINI INNOVATION CORPORATION,

                                                           Plaintiff-Appellant,

                                               v.


                               ANTHONY CALIFORNIA, INC.
                                  and JAMES CHANG,

                                                           Defendants-Cross Appellants.


                              __________________________

                              DECIDED: January 8, 2007
                              __________________________



Before LOURIE, RADER, and SCHALL, Circuit Judges.

SCHALL, Circuit Judge.


                                          DECISION

       Amini Innovation Corp. (“Amini”) sued Anthony California, Inc. and James Chang

(collectively, “Anthony”) in the United States District Court for the Central District of

California, alleging infringement of its United States Design Patent No. D488,936 (the

“’936 patent”). Anthony denied infringement and asserted the affirmative defenses of

(1) invalidity by reason of indefiniteness; (ii) invalidity for failure to name all of the joint

inventors; and (iii) unenforceability by reason of inequitable conduct before the United
States Patent and Trademark Office. The district court granted Anthony’s motion for

summary judgment of non-infringement and entered judgment accordingly.                Amini

Innovation Corp. v. Anthony Cal., Inc., No. CV 04-9369 (C.D. Cal. Oct. 13, 2005).

Anthony also moved for summary judgment on its affirmative defenses. The district

court denied the motion without entry of judgment, in part apparently because it

perceived disputed issues of material fact. Because we conclude that there are genuine

issues of material fact as to whether Anthony’s accused product infringes the ’936

patent, we reverse the grant of summary judgment and remand the case to the district

court for further proceedings.1

                                      DISCUSSION

                                             I.

       Amini’s patented design is a dresser with a center cupboard, a center drawer

over the cupboard, four drawers on each side of the center cupboard and drawer, and

an attached mirror. The design includes stylistic characteristics such as (1) a shaped

mirror frame, (2) scrollwork at the apex of the mirror and around the perimeter of the

mirror, (3) a shaped bottom portion of the dresser (“apron”) with scroll work along the

apron, (4) banded carvings underneath the top of the dresser, (5) shaped legs with

scrollwork along the length of each leg, ending at and including a knob-like structure, (6)

rear lion’s paw feet at the end of the rear legs, and (7) front five-toed lion’s paw feet at

the end of the front legs. A side profile of the dresser presents a simple rectangular



       1
              At oral argument, counsel for Amini acknowledged that Anthony’s
affirmative defenses had not been resolved on summary judgment and that, if we
reversed the district court’s grant of summary judgment of non-infringement, Anthony
would be able to assert those defenses on remand.



06-1096, -1129                               2
side panel and a bracketed scroll along the bottom side of the apron connecting the

front and back feet. The top of the dresser is shaped and has a corresponding shaped

marble insert. Anthony’s accused design is a dresser with a center cupboard, four

drawers on each side of the center cupboard and drawer, and an attached mirror. The

accused dresser includes stylistic characteristics similar to Amini’s patented design.

                                              II.

       “A design patent protects the non-functional aspects of an ornamental design as

seen as a whole and as shown in the patent.” Keystone Retaining Wall Sys., Inc. v.

Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993). In a recent suit between the

same parties, we explained that:

       An ordinary observer test governs design patent infringement: “[If] 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 an ordinary observer, inducing him to purchase one
       supposing it to be the other, the first one patented is infringed by the
       other.” Gorham Co. v. White, 14 Wall. 511, 81 U.S. 511, 528 (1871). In
       addition, the accused design must appropriate the novel ornamental
       features of the patented design that distinguish it from the prior art.
       Oakley, Inc. v. Int’l Tropic-Cal, Inc., 923 F.2d 167, 169 (Fed. Cir. 1991).

Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2006)

(alteration in original). With respect to the ’936 patent, the district court found that:

               Here, the patented design includes, but is not limited to, the
       following ornamental features: (1) a reverse curve of the bottom rail of the
       mirror in elevation that creates a void between the mirror and dresser; (2)
       a medial carved rail that divides the dresser doors (i.e., cupboard), which
       have a flat profile on the upper panels thereof, such that the doors have
       two separate, floating raised panels in each door with a reverse-curve
       foliate scrolls carved in the rail that separates the upper and lower panels
       in each door; and (3) a central drawer over the dresser cupboard.

Amini, slip op. at 6. In granting summary judgment of non-infringement, the district

court found it significant that the three noted elements are missing from Anthony’s



06-1096, -1129                                 3
accused design. It thus held that Anthony’s design could not be found to meet the

requirements of the ordinary observer test.        Id. The district court further found that

Amini had failed to offer sufficient evidence that the ordinary observer test would be met

because Amini had not “submit[ted] evidence showing that an ordinary observer would

buy the accused product believing it to be the patented piece.” Id. at 7. The district

court—relying on Amini’s expert’s statement that the dresser design was influenced by,

and incorporated, classic elements used in furniture design—also found that Amini

failed to “offer evidence that any of its ornamental designs are novel.” Id. Presumably,

in the view of the district court, this made it impossible for Anthony to “appropriate the

novel ornamental features of the patented design that distinguished it from the prior art,”

since there were no such novel ornamental features.

                                            III.

       Summary judgment is appropriate when there is no genuine issue as to any

material fact and the moving party is entitled to judgment as a matter of law. Fed. R.

Civ. P. 56(c); Celotex Corp. v. Cartrett, 477 U.S. 317, 322 (1986). This court reviews

the grant of summary judgment by the district court de novo. Contessa Food Prods.,

Inc. v. Conagra Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002). We agree with Amini that

the district court erred in granting summary judgment because under the correct

infringement analysis there are genuine issues of material fact.

       As noted, in applying the ordinary observer test, the district court focused on

three specific features of the patented design. According to the district court, because

these features were not present in the design of the accused Anthony product, the

Anthony product did not infringe the ’936 patent. In its approach, however, the district




06-1096, -1129                               4
court mistakenly analyzed each design element of the dresser individually instead of

analyzing the design as a whole from the perspective of an ordinary observer. See

Contessa, 282 F.3d at 1379 (explaining that the patented and accused designs do not

have to be identical in order for design patent infringement to be found and that what is

controlling is the appearance of the design as a whole in comparison to the accused

product). The district court’s analysis is akin to the “element-by-element comparison”

criticized in Amini, 439 F.3d at 1372.    Comparing the overall visual appearance of

Amini’s dresser with Anthony’s dresser, we are not prepared to say that a jury could not

reasonably conclude that Anthony’s accused design is similar enough in ornamental

appearance to Amini’s design that an ordinary observer would be likely to purchase one

dresser thinking it was the other.

       Additionally, we think that the district court erred in finding Amini’s evidence

insufficient to prove infringement. Amini provided the ’986 patent and photographs of

the accused dresser. This was sufficient to raise a genuine issue of material fact as to

whether an ordinary observer would be likely to purchase one dresser thinking it was

the other. See Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992)

(finding that substantial evidence supported jury’s finding of infringement when the only

evidence of record was the patent’s design and the patented and accused products

themselves).2



       2
             Amini also offered testimonial evidence of actual confusion between the
two pieces of furniture by an Amini sales representative. Evidence that an ordinary
observer has actually been deceived by an accused design is not necessary to a finding
of infringement because a panel of jurors is a panel of ordinary observers capable of
making factual determinations as to whether they would be deceived. See Braun, 975
F.2d at 821. However, the unrebutted testimony of actual confusion may be evidence



06-1096, -1129                             5
       Finally, we think that the district court also erred in finding on summary judgment

that Amini’s invention lacked novelty. In its opposition to summary judgment, Amini

provided the ’936 patent, its prosecution history, the cited prior art, and specific

contentions as to the asserted points of novelty of the ’936 patent and how the accused

dresser appropriated the novel features of the dresser design. This was sufficient to

raise a genuine issue of material fact as to novelty. See, e.g., Bernhardt, L.L.C. v.

Collezione Europa USA, 386 F.3d 1371, 1384 (Fed. Cir. 2004) (“[W]hen the points of

novelty can be discerned from the patent, its prosecution history, the cited prior art, and

the patentee’s contentions, any additional evidence, such as expert testimony, is not

necessary to establish the points of novelty.”).

       In finding that the patented design lacked novel features, the district court relied

on Amini’s expert’s statement that the dresser design was influenced by, and

incorporated, classic elements used in furniture design.         Amini, slip op. at 7–8.

However, a furniture design feature may be influenced by an existing style yet still be a

novel interpretation of that style. For example, Amini identified the five-toed lion’s paw

feet as a novel feature of the dresser. The district court stated that the five-toed lion’s

paw was not novel because “most cats have five toes on each forepaw, so the idea of a

five-towed paw is not original.” Id. at 7. The proper inquiry is not whether cats have five

toes, but rather whether lion’s paw feet on furniture typically have five forward facing

toes as in Amini’s patented design. Notably, the prior art pictures in the record show



(Cont’d. . . .)
from which a jury might reasonably conclude that an accused product meets the
ordinary observer test. The parties dispute whether a sales representative qualifies as
an “ordinary observer.” This issue is not decided on appeal.



06-1096, -1129                               6
lion’s-paw feet having four toes or less.3 In short, there is a genuine issue of material

fact regarding whether the patented design includes novel ornamental features that

were appropriated by Anthony’s accused design; the district court’s decision on

summary judgment that there were no novel features in the patented design was in

error.

                                           III.

         For the reasons set forth above, we reverse the grant of summary judgment of

noninfringement and remand the case to the district court for further proceedings. On

remand, Anthony will be able to assert its affirmative defenses, with respect to which its

motion for summary judgment was denied by the district court.

         No costs




         3
             We note that we recognized the novelty of the five-toed lion’s paw in
Amini. See 439 F.3d at 1370 (“[T]he protected design used a unique lion’s paw with five
toes; the accused design incorporates a near-copy of this whimsical device, including
the anatomically incorrect presentation of the toes.”).



06-1096, -1129                              7
