United States Court of Appeals for the Federal Circuit 

2006-1561 

ARMINAK AND ASSOCIATES, INC. and HELGA ARMINAK, 

Plaintiffs/Counterclaim 

Defendants-Appellees, 

and 

ARMIN ARMINAK, 

Counterclaim DefendantAppellee, 

v. 

SAINT-GOBAIN CALMAR, INC. 

(now known as MeadWestvaco Calmar, Inc.), 

Defendant/CounterclaimantAppellant. 

Daniel C. DeCarlo, Lewis Brisbois Bisgaard & Smith, of Los Angeles, California, 

argued for the plaintiffs/counterclaim defendants-appellees and counterclaim defendantappellee. With him on the brief were William C. Steffin and Isamu H. Lee. Of counsel 

was David N. Makous. 

Roger D. Taylor, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of 

Atlanta, Georgia, argued for defendant/counterclaimant-appellant. With him on the brief 

were Michael J. McCabe, II and Robert C. Stanley. On the principal brief were M. Kelly 

Tillery, Charles S. Marion, and Keith Lee, Pepper Hamilton LLP, of Philadelphia, 

Pennsylvania. 

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

Judge Cormac J. Carney 
United States Court of Appeals for the Federal Circuit 

2006-1561 

ARMINAK AND ASSOCIATES, INC. and HELGA ARMINAK, 

Plaintiffs/Counterclaim 

Defendants-Appellees, 

and 

ARMIN ARMINAK, 

Counterclaim DefendantAppellee, 

v. 

SAINT-GOBAIN CALMAR, INC. 

(now known as MeadWestvaco Calmar, Inc.), 

Defendant/CounterclaimantAppellant. 

__________________________ 

DECIDED: September 12, 2007 

__________________________ 

Before MICHEL, Chief Judge, GAJARSA, Circuit Judge, and HOLDERMAN,* Chief 

District Judge. 

HOLDERMAN, Chief District Judge. 

 * Honorable James F. Holderman, Chief Judge, United States District Court for 

the Northern District of Illinois, sitting by designation. 

Appellant Saint-Gobain Calmar, Inc. (ACalmar@) appeals from the district court=s 

order granting summary judgment in favor of Arminak & Associates, Inc. (AArminak@), 

finding that the design of Arminak=s AAA Trigger@ shroud did not infringe Calmar=s two 

design patents, U.S. Patents Nos. Des. 381,581 (“the ’581 patent@) and Des. 377,602 (“the 
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2006-1561 

’602 patent@). Arminak & Assoc., Inc. v. Saint-Gobain Calmar, Inc., 424 F. Supp. 2d 1188 

(C.D. Cal. 2006). We affirm. 

I. Background

Calmar and Arminak are both in the business of selling trigger sprayers to producers 

of liquid household products. A trigger sprayer is a device that is attached atop the cap of a 

bottle containing liquid, with a tube extending from the trigger sprayer device into the liquid. 

 When the trigger of the sprayer device is manually pulled back, liquid is drawn up the tube 

into the sprayer device and is dispersed as a spray or mist out of the device=s nozzle. The 

outside cover of the top portion of the sprayer device behind the nozzle and above the 

trigger mechanism is called the shroud, which is typically made of a molded plastic design. 

In 1997, the U.S. Patent and Trademark Office (APTO@) granted Calmar two design 

patents—the ’581 and ’602 patents—on two trigger sprayer shroud designs. Calmar 

thereafter produced a commercial embodiment of the ’581 patent called the AERGO@

shroud. No commercial embodiment of the shroud design set forth in the ’602 patent has 

been produced. 

In 2004, Arminak began selling its “AA Trigger” sprayer with the accused shroud 

design. In October 2004, Calmar informed one of Arminak=s customers that Calmar 

believed the shroud design of Arminak=s AA Trigger sprayer infringed Calmar=s ’581 and 

’602 design patents. On November 16, 2004, Arminak filed a declaratory judgment action 

against Calmar in the United States District Court for the Central District of California 

seeking a declaratory judgment of noninfringement. Calmar counterclaimed, alleging 

infringement of its ’581 and ’602 design patents. Arminak filed an amended complaint 

adding allegations of patent invalidity and certain state law claims against Calmar. After a 
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2006-1561 

period of pretrial discovery, Arminak moved for summary judgment on its declaratory 

judgment claim, asserting that Arminak’s AA Trigger shroud’s design does not infringe 

Calmar=s patents. On March 20, 2006, the district court in a detailed opinion determined 

that the shroud of Arminak=s AA Trigger does not infringe Calmar=s ’581 and ’602 design 

patents. Arminak, 424 F. Supp. 2d at 1189-90. On May 9, 2006, the district court 

dismissed Calmar=s patent infringement counterclaims, stayed the litigation as to Arminak=s 

patent invalidity and state law claims, and entered judgment in Arminak=s favor pursuant to 

Federal Rule of Civil Procedure 54(b). 

In granting Arminak’s motion for summary judgment of noninfringement on 

Arminak=s declaratory judgment claim and dismissing Calmar=s counterclaims, the district 

court initially construed the claims of Calmar=s ’581 and ’602 design patents. The district 

court then found that the ordinary observer of the trigger sprayer shroud designs in 

question was not the retail consumer or purchaser of retail products sold in containers with 

trigger sprayer devices, but the buyer of trigger sprayers for a contract filler or an industrial 

purchaser up the stream of commerce from the retail purchaser. The district court further 

found that the ordinary observer of trigger sprayers would not be deceived by the 

similarities between Arminak’s AA Trigger shroud’s design and Calmar=s patented shroud 

designs. Additionally, the district court found that the similarities between Arminak’s AA 

Trigger shroud and the design of Calmar=s patented shrouds do not stem from Calmar=s 

two asserted points of design novelty over the prior art in the sprayer shroud field. 
 4

2006-1561 

II. Jurisdiction and Standard of Review

The district court=s subject matter jurisdiction over Arminak=s declaratory judgment 

action for patent noninfringement was granted by 28 U.S.C. ' 1338(a). We have 

jurisdiction over Calmar=s appeal of the district court=s partial summary judgment pursuant 

to 28 U.S.C. ' 1292(c)(2) and ' 1295(a)(1). 

We review a grant of summary judgment de novo, reviewing the record and drawing 

all reasonable inferences in the nonmovant=s favor to determine whether there is a genuine 

issue as to any material fact. Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1353 

(Fed. Cir. 1998). 

III. Calmar=s Contentions of Error

Calmar asserts four primary bases for its appeal: (1) the district court erred by 

construing the claims of Calmar=s patents too narrowly; (2) the district court erred in its 

identification of the industrial buyer, not the retail consumer, as the ordinary observer; (3) 

the district court erred in holding that no reasonable jury could find that the ordinary 

observer would be deceived by the similarities of the trigger sprayers’ shroud designs in 

question; (4) the district court erred in holding that no reasonable jury could find the points 

of novelty of the patented designs to be present in Arminak’s AA Trigger shroud=s design. 

Each of Calmar=s arguments supporting its contentions of error is discussed below, after a 

brief overview of the law governing design patents. 

IV. Overview of Design Patent Law

AA design patent protects the nonfunctional aspects of an ornamental design as 

shown in the patent.@ Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995) 

(citing Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 
 5

2006-1561 

1993)). The chief limitation on the patentability of designs is that they must be primarily 

ornamental in character. If the design is dictated by performance of the article, then it is 

judged to be functional and ineligible for design patent protection. Best Lock Corp. v. Ilco 

Unican Corp., 94 F.3d 1563, 1566 (Fed. Cir. 1996). 

The elements of design patent infringement are set forth at 35 U.S.C. ' 289: 

Whoever during the term of a patent for a design, without license of the 

owner, (1) applies the patented design, or any colorable imitation thereof, to 

any article of manufacture for the purpose of sale, or (2) sells or exposes for 

sale any article of manufacture to which such design or colorable imitation

has been applied shall be liable to the owner to the extent of his total profit, 

but not less than $250, recoverable in any United States district court having 

jurisdiction over the parties. 

35 U.S.C. ' 289 (emphases added). Accordingly, a design patent is infringed by the 

Aunauthorized manufacture, use, or sale of the article embodying the patented design or 

any colorable imitation thereof.@ Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber 

Co., 162 F.3d 1113, 1116-17 (Fed. Cir. 1998). 

Similar to the infringement analysis of a utility patent, infringement of a design patent 

is evaluated in a two-step process. First, the court must construe the claims of the design 

patent to determine their meaning and scope. OddzOn Prods., Inc. v. Just Toys, Inc., 122 

F.3d 1396, 1404-05 (Fed. Cir. 1997). Design patents typically are claimed as shown in 

drawings. Claim construction by a court is adapted accordingly. Goodyear, 162 F.3d at 

1116. The scope of the claim of a patented design “encompasses ‘its visual appearance as 

a whole,’ and in particular ‘the visual impression it creates.’” Contessa Food Prods., Inc. v. 

Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002) (quoting Durling v. Spectrum Furniture 

Co., 101 F.3d 100, 104-05 (Fed. Cir. 1996)). 
 6

2006-1561 

Second, after construction of the patent’s claims, the court is to compare the 

construed claims to the accused design. Elmer, 67 F.3d at 1577. Infringement of a design 

patent occurs if Athe designs have the same general visual appearance, such that it is likely 

that the purchaser [(or the ordinary observer)] would be deceived into confusing the design 

of the accused article with the patented design.@ Goodyear, 162 F.3d at 1118. The 

patented and accused designs do not have to be identical in order for design patent 

infringement to be found. Contessa, 282 F.3d at 1376. In determining infringement of a 

design patent, the court Ais not limited to the ornamental features of a subset of the 

drawings, but instead must encompass the claimed ornamental features of all figures of a 

design patent.@ Id. at 1379 (emphasis added). 

The comparison of the patented and accused designs involves two separate tests, 

both of which must be satisfied to find infringement: the Aordinary observer@ test and the 

Apoint of novelty@ test. Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 

1383 (Fed. Cir. 2004). The Aordinary observer@ test was first enunciated by the United 

States Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871), which 

held that: 

[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. 

Id. at 528. In a separate and distinct inquiry, the Apoint of novelty@ test requires proof that 

the accused design appropriated the novelty which distinguishes the patented design from 

the prior art. Egyptian Goddess, Inc. v. Swisa, Inc., No. 2006-152, 2007 WL 2439541, at *2 

(Fed. Cir. Aug. 29, 2007) (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 
 7

2006-1561 

(Fed. Cir. 1984)). Both the ordinary observer test and point of novelty test are factual 

inquiries. Bernhardt, 386 F.3d at 1383. 

V. Discussion of Calmar=s Arguments

A. The District Court=s Detailed Claim Construction

Calmar argues that the district court erred by construing the claims of the patents-insuit too narrowly, improperly focusing on and describing in minute detail the ornamental 

features of Calmar=s patent rather than simply describing in words what is shown in their 

drawings. Based on the allegedly Atoo narrow@ claim construction, the district court, 

according to Calmar, then improperly engaged in a Aside-by-side, element-by-element 

comparison of the minute details of and differences between the patented designs and the 

AA Shroud.@ Appellant=s Br. at 67. 

The district court in this case performed the requisite task of claim construction by 

describing each of the drawings of Figures 1 through 5 in each of the two Calmar patentsin-suit. In doing so, the district court was careful to point out that the patented design did 

not include the nozzle, trigger, or closure cap. The district court also carefully noted that, to 

overcome the PTO’s earlier rejection of the ’581 patent application as not patentably 

distinct from the preceding Calmar ’602 patent and to obtain the PTO’s issuance of the ’581 

patent on July 29, 1997, Calmar filed a terminal disclaimer under 37 C.F.R. § 1.321(b). 

Calmar=s disagreement with the district court’s claim construction is essentially that it was 

too detailed. Our case law does not prohibit detailed claim construction of design patent 

drawings. It merely disapproves claim construction that goes beyond the novel, 

nonfunctional ornamental features visually represented by the claimed drawings, Elmer, 67 

F.3d at 1577, or that fails to encompass the claimed ornamental features of the design as a 
 8

2006-1561 

whole. Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1371 (Fed. Cir. 

2006). The district court’s meticulous and accurate description of Figures 1 through 5 of 

each of Calmar’s patents-in-suit did not constitute error. The district court’s claim analysis 

demonstrated the proper consideration of the claimed designs as a whole. 

B. The District Court=s Identification of the Ordinary Observer

A question that is central to this case, and every design patent case, is the identity of 

the Aordinary observer@ of the design at issue, which in this case is the design of trigger 

sprayer shrouds. This test requires an objective evaluation of the question of whether a 

hypothetical person called the Aordinary observer@ would find substantial similarities 

between the patented design and the accused design, so as to be deceived into purchasing 

the accused design believing it is the patented design. Gorham, 81 U.S. at 528. 

Calmar argues that the appropriate Aordinary observer@ in this case is the retail 

consumer who purchases the retail product that incorporates the sprayer shroud, such as 

the retail purchaser of a bottle of liquid window cleaner with a trigger sprayer device 

attached to the bottle’s cap and a tube extending into the liquid to extract the liquid from the 

bottle as a spray during retail use. If the ordinary observer is found to be the retail 

consumer that purchases the shroud of the trigger sprayer device as it is incorporated into 

a retail product, then it is much more likely that the ordinary observer would find substantial 

similarities between the patented and accused designs sufficient to be deceived into 

thinking that Arminak’s AA Trigger shroud is one of the patented designs. 

The district court disagreed with Calmar and found that the Aordinary observer@ of 

trigger sprayer shrouds is not the retail consumer, but the purchaser of trigger sprayer 

mechanisms for assembly and incorporation into the product that is sold to retail 
 9

2006-1561 

consumers. The record clearly shows that Calmar never sold any of its patented shrouds 

directly to retail consumers. Arminak, 424 F. Supp. 2d at 1198. If the ordinary observer is 

the contract buyer or industrial purchaser of trigger sprayers, then the undisputed material 

facts in the record establish that such a purchaser would not find substantial similarity 

between the patented and accused shrouds, and therefore would not be deceived into 

thinking that Arminak’s AA Trigger shroud is one of the patented designs. Id. at 1201-02. 

 The Supreme Court’s Gorham opinion, which dealt with an accused design’s 

infringement of a design patent on silverware handle designs, expressly excluded experts 

from the category of persons who are ordinary observers. Under the facts of Gorham, it 

was “the observation of a person versed in designs in the particular trade in question—of a 

person engaged in the manufacturer or sale of articles containing such designs—of a 

person accustomed to compare such designs one with another, who sees and examines 

the articles containing them side by side,” id. at 527, that was explicitly rejected by the 

Supreme Court. 

 The Supreme Court in Gorham contrasted this group of expert examiners, whose 

observations it rejected, with “ordinary observers,” who it described as people possessing 

“ordinary acuteness, bringing to the examination of the article upon which the design has 

been placed that degree of observation which men of ordinary intelligence give.” Id. at 528. 

 The Court emphasized that “[i]t is persons of this latter class who are the principle 

purchasers of the articles to which designs have given novel appearances, and if they are 

misled, and induced to purchase what is not the article they supposed it to be . . . the 

patentees are injured, and that advantage of a market which the patent was granted to 

secure is destroyed.” Id. To be effective, design patent protection must focus upon 
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2006-1561 

observations “by ordinary observers, by those who buy and use” the article bearing the 

design in question. Id. 

 The unanswered question remaining after Gorham is whether these “ordinary 

observers” of which the Supreme Court spoke can be commercial or industrial buyers of 

designed items that are used as component parts assembled into a retail product. 

Although we have not squarely addressed that question until now, in the Goodyear case 

(which dealt with patented tire tread designs commercially embodied on Goodyear’s truck 

tires) we stated that the focus of the ordinary observer test is “on the actual product that is 

presented for purchase, and the ordinary purchaser of that product.” 162 F.3d at 1117 

(emphasis added). There we found that the ordinary observer of the patented tread 

designs was a truck driver and a truck fleet operator because the products containing the 

patented and accused designs were tires used on trucks, even though the design patent at 

issue was not limited to truck tires. 

 In Keystone, we found that the ordinary observers of patented wall blocks were 

“visitors to trade shows.” 997 F.2d at 1451. We made that finding even though the 

accused wall blocks, when stacked to form a wall, were substantially similar to a wall of 

patented wall blocks. We held that the visual observation of the ordinary observer should 

focus only on the unassembled “patented design” of the individual block, not the blocks that 

were stacked together as “an assembled wall.” Id. at 1451. Accordingly, we concluded in 

Keystone that “the ‘ordinary purchaser’ for the purpose of the block design patent is a 

purchaser of the patented block,” not a purchaser of an assembled wall. Id.
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2006-1561 

In 1933, when the regional United States Courts of Appeals still had jurisdiction over 

patent law issues, the Sixth Circuit noted the substantial number of prior art design patents 

in the field of automobile electric cigar lighters and ashtrays. Adhering to the precedent of 

Gorham v. White, the court held: 

The ordinary observer is not any observer, but one who, with less than the 

trained facilities of the expert, is “a purchaser of things of similar design,” or 

“one interested in the subject” . . . one who, though not an expert, has 

reasonable familiarity with such objects [as an automobile ash tray and cigar 

lighter], and is capable of forming a reasonable judgment when confronted 

with a design therefor as to whether it presents to his eye distinctiveness 

from or similarity with those which have preceded it. 

Applied Arts Corp. v. Grand Rapids Metalcraft Corp., 67 F.2d 428, 430 (6th Cir. 1933). 

 More recently, two district court opinions found that institutional purchasers, not enduser consumers, were the appropriate persons to be considered ordinary observers when 

the design-patented item is a component of the product that is sold. E.g. Spotless Enters., 

Inc. v. A & E Prods. Group, L.P., 294 F. Supp. 2d 322, 347 (E.D.N.Y. 2003) (design patent 

for lingerie hangers; “ordinary observer” was not the general public, but the commercial 

buyer for garment manufacturers, who then resold garments on the hangers to retail 

stores); Puritan-Bennett Corp. v. Penox Techs., Inc., No. IP02-0762-C-M/S, 2004 W.L. 

866618, at *26 (S.D. Ind. Mar. 2, 2004) (design patent for portable liquid oxygen tanks; 

“ordinary observer” “must include medical equipment distributors, at the least, and possibly, 

hospitals and physicians” who provide the tanks by prescription to patients), aff’d 121 F. 

App’x 397 (Fed. Cir. 2005). 

Calmar cites to our Contessa opinion in support of its contention that in this case the 

ordinary observer must be the retail consumer. In Contessa, we stated: 
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2006-1561 

for purposes of design patent infringement, the “ordinary observer” analysis 

is not limited to those features visible during only one phase or portion of the 

normal use lifetime of an accused product. Instead, the comparison must 

extend to all ornamental features visible during normal use of the product, 

i.e., “beginning after completion of manufacture or assembly and ending with 

the ultimate destruction, loss, or disappearance of the article.” 

282 F.3d at 1380 (citations omitted) (emphases added). We disagree with Calmar that the 

quoted language from Contessa supports Calmar’s contention that the retail consumer 

must be the ordinary observer of trigger sprayer shrouds. This quoted language does not 

describe who the ordinary observer is. Rather, it explains what “features” of the patented 

design must be included as “observed” in the ordinary observer test—or in other words, 

what features of the patented design the ordinary observer is to examine in determining if 

there is substantial similarity with an accused design. 

Calmar also argues that the purchasers of the shrouds themselves (who Calmar 

repeatedly refers to as “the sophisticated purchaser who is well-versed in the trade”) do not 

“use” the shrouds and therefore cannot be the ordinary observer. Appellant’s Br. at 30-31. 

Again, we disagree with Calmar. The industrial purchaser of the trigger sprayer shrouds for 

manufacturing assembly does indeed “use” the shrouds—to cover trigger sprayer 

mechanisms that are assembled with the bottle, the bottle’s cap, the liquid contained in the 

bottle, and the label on the bottle, all of which assembled together create the retail product. 

 Consequently, the purchaser of the patented and accused designs in this case is the 

purchaser of one of a retail product’s component parts that is thereafter assembled with 

other parts to make the retail product. To hold that such a purchaser is the appropriate 

hypothetical ordinary observer fits squarely with our precedent that the ordinary observer is 

a person who is either a purchaser of, or sufficiently interested in, the item that displays the 

patented designs and who has the capability of making a reasonably discerning decision 
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2006-1561 

when observing the accused item’s design whether the accused item is substantially the 

same as the item claimed in the design patent. 

We agree, therefore, with the district court that the ordinary observer of the sprayer 

shroud designs at issue in this case is the industrial purchaser or contract buyer of sprayer 

shrouds for businesses that assemble the retail product from the component parts of the 

retail product bottle, the cap, the sprayer tube, the liquid, the label, and the trigger sprayer 

device atop the cap, so as to create a single product sold to the retail consumer. Here, the 

patented design is only the shroud of the sprayer device. The three physical exhibits 

submitted for examination on appeal are trigger sprayer devices attached to bottle caps 

with plastic tubes for insertion into contained liquid, not the bottles, not the liquid into which 

the sprayer tube is inserted during normal use, and not the label of the retail product. 

Accordingly, we hold that the ordinary observer of the trigger sprayer shrouds in this case 

is, as the district court found, the contract or industrial buyer for companies that purchase 

the stand-alone trigger sprayer devices, not the retail purchasers of the finished product. 

C. The District Court’s Application of the Ordinary Observer Test 

 In applying the ordinary observer test, a court is to compare the construed claims to 

the accused design to determine whether “the designs have the same general visual 

appearance, such that it is likely that the purchaser [(or the ordinary observer)] would be 

deceived into confusing the design of the accused article with the patented design.” 

Goodyear, 162 F.3d at 1118. Specifically, the question to be addressed in applying the 

ordinary observer test is whether the ordinary observer would be deceived by the accused 

design because it is substantially similar to the patented design. Gorham, 81 U.S. at 28. 

Under our case law, the ordinary observer test requires, as the district court recognized, the 
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2006-1561 

comparing of the accused and patented designs from all views included in the design 

patent, not simply those views a retail customer seeking to buy would likely see when 

viewing the product at the point of sale. Contessa, 282 F.3d at 1379. 

The record establishes that the ordinary observer would not be deceived by the 

similarities between Arminak’s AA Trigger shroud and Calmar’s patented sprayer shroud 

designs. Indeed, Calmar’s own expert conceded that “[i]t would be a significant exception 

for a corporate buyer purchasing the Arminak trigger sprayer to confuse the Calmar ERGO 

Shroud and the Arminak AA shroud” and that “[t]here is essentially no question that a 

corporate buyer purchasing these trigger sprayers with these specific shrouds would be 

able to tell the difference easily.” Arminak, 424 F. Supp. 2d at 1201-02. A former Calmar 

customer service manager also testified that most of Calmar’s customers “wouldn’t be 

fooled for a second.” Id. at 1201. We agree with the district court that the undisputed 

material facts establish that the ordinary observer would not be deceived by the similarities 

between Arminak’s AA Trigger shroud and Calmar’s patented sprayer shroud designs. 

D. The District Court’s Application of the Point of Novelty Test

The point of novelty test is the second test that must be satisfied for an accused 

design to infringe a design patent. In applying the point of novelty test, a court compares 

the construed claims to the accused design to determine whether the accused design has 

“appropriated” the points of novelty from the patented design. See Litton, 728 F.2d at 

1444. Where the art in the field of a particular design is crowded, we must construe the 

range of equivalents narrowly. Id. 

The record in this case includes a number of prior art examples of trigger sprayer 

shrouds’ patented designs. 
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2006-1561 

Des. 327,222 

filed 1990 

issued 6/23/92 

Des. 326,707 

filed 1990 

Des. 357,408 

filed 1993 

Des. 358,198 

filed 1994 

issued 6/2/92 issued 4/18/95 issued 5/9/95 

Calmar’s ’581 Patent

filed 1995 

issued 7/29/97 

Des. 366,692 

filed 1994 

Calmar’s ’602 Patent

filed 1995 

issued 1/30/96 issued 1/28/97 

 Calmar presented two points of novelty to the district court that Calmar asserted 

distinguished its patented designs from the prior art. The district court “concur[ed] with 

Calmar’s characterization of the [two] points of novelty in the ’581 and ’602 Patents”: 

1. There is a prominent horizontal line extending along each side [of the 

shroud], parallel to the top surface of the shroud, all the way to the 

sloped rear surface; and 

2. The sides of the shroud first go straight downwardly, and then, as 

viewed from the rear, at the horizontal lines on each side, bulge 

outwardly in a bulbous fashion, to the bottom rear of the shroud. 

Arminak, 424 F. Supp. 2d at 1204. We examine each in turn. 
1. AA Prominent Horizontal Line@

With respect to Calmar=s assertion as to the first point of novelty, Aa prominent 

horizontal line@ extending along the shroud’s sides appears in both patented designs. 

Prominent

horizontal 

line Calmar’s 

’602 patent 

Calmar’s 

’581 patent 

The district court found that the prominent horizontal line of Calmar’s patented 

designs was not appropriated by Arminak’s AA Trigger shroud because “the [horizontal] line 

on the AA Trigger is intersected by a slanted line defining a raised surface,” id. at 1204-05, 

beneath the horizontal line and above the trigger mechanism. 

Slanted 

 line

Raised 

surface 

Arminak’s 

AA Trigger Shroud 

We agree with the district court. Although the top edge of Arminak’s AA Trigger 

shroud’s raised surface is beneath a horizontal line that extends along the shroud’s side to 

the back of the shroud, the rear edge of the raised surface is defined by a downwardly 

slanted line that intersects Arminak’s AA Trigger shroud’s horizontal line near the middle of 

the shroud’s side. The raised surface and intersecting slanted line below Arminak’s AA 

Trigger shroud’s horizontal line results in a different overall design appearance than 

Calmar’s asserted first point of novelty of its patented designs. 

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2006-1561 
2. “Bulge Outwardly in a Bulbous Fashion” 

 With respect to Calmar’s asserted second point of novelty, the sides of the shroud 

that “bulge outwardly in a bulbous fashion, to the rear of the shroud,” the district court found 

that Arminak’s AA Trigger shroud did not appropriate this point of novelty because, similar 

to several prior art patents, Arminak’s AA Trigger shroud’s sides “instead flare out in 

straight lines before converging slightly inward toward the bottom of the shroud.” Id. at 

1204. The district court cited to the ’222 patent’s drawings in support of its finding 

that the AA Trigger does not contain the “bulbous sides” point of novelty 

Calmar claims. The AA Trigger’s flared appearance, when viewed from the 

back, is similar to the back view disclosed in the ’222 Patent. . . . Indeed, any 

similarity that might appear between the back portion of the AA Trigger and 

the back drawings of the patented designs is no greater than the similarity 

between the back views claimed in the patented designs and the back view 

shown in the ’222 Patent. 

Id. at 1204 n.14. 

 The similarities and differences between the back of the patented designs, the prior 

art, and Arminak’s AA Trigger shroud are illustrated below: 

’198 Patent

filed 1994 

issued 5/9/95 

Arminak’s

AA Trigger 

shroud

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2006-1561 

Calmar’s ’581 Patent 

 filed 1995 

issued 7/29/97 

Calmar’s ’602 Patent

filed 1995 

issued 1/28/97

’222 Patent

filed 1990 

issued 6/23/92

Arguably, the “bulbous” “bulge” of the sides of the patented designs are “novel” when 

compared to the prior art. We agree with the district court that based on the “bulbous” 

sides as depicted in the back views of Calmar’s patents’ drawings, no reasonable jury could 
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2006-1561 

find that the back of Arminak’s AA Trigger shroud, which is almost identical to the ’198 and 

’222 prior art patents, appropriates Calmar’s second point of novelty. 

 Our conclusion is that Arminak’s AA Trigger shroud does not appropriate the two 

points of novelty from the prior art as Calmar contends. We agree with the district court 

that no reasonable jury could find that Calmar’s points of novelty exist in Arminak’s AA 

Trigger shroud. 

 Calmar contends that the district court in its analysis improperly merged the point of 

novelty test with the ordinary observer test, which we have held is “legal error.” Contessa, 

282 F.3d at 1377. We disagree with Calmar’s contention. The district court’s opinion is 

clear that its point of novelty analysis was confined to determining Calmar’s points of 

novelty and whether Arminak’s AA Trigger shroud appropriated Calmar’s points of novelty. 

Calmar implies that the district court should have limited its discussion of the points of 

novelty comparison to only the exact words Calmar used to describe its two points of 

novelty and that the district court should not have looked at Calmar’s patents’ Figures. The 

relevant inquiry is not to analyze the words used by the patent owner to describe a 

particular design feature after the issuance of the patent, but whether the design feature, as 

it appears in the Figures of the patent as issued, is found in the accused design. 

 Calmar also implies that it was improper for the district court to do a detailed side-byside comparison between the patented design and the accused design. Calmar cites no 

authority for this contention because there is none. To establish infringement in a design 

patent case, the district court is required to compare the patented design with the accused 

design. See Elmer, 67 F.3d at 1577. Without comparing the patented design with the 

accused design, there was no way for the district court to determine whether an ordinary 
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observer would find the accused design deceptively similar and whether the accused 

design appropriated points of novelty. Therefore, based on our de novo review, we find 

that the district court applied both judicially articulated design patent infringement tests in 

the proper manner. Neither test is satisfied in this case. 

VI. Conclusion

 For the foregoing reasons, the district court’s judgment is affirmed. 

AFFIRMED. 

 No costs.