United States District Court, D. Delaware
For Poly-America L P, Plaintiff: Brian E. Farnan, LEAD ATTORNEY, Farnan LLP, Wilmington, DE; Erica W. Harris, PRO HAC VICE.
For API Industries Inc., Defendant: Carla E. Sereny, William Thomashower, PRO HAC VICE; Michael J. Flynn, Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE.
For API Industries Inc., Counter Claimant: Michael J. Flynn, Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE.
For Poly-America L P, Counter Defendant: Brian E. Farnan, LEAD ATTORNEY, Farnan LLP, Wilmington, DE.
Sue L. Robinson, United States District Judge.
At Wilmington this 10th day of April, 2014, having reviewed defendant's motion for judgment on the pleadings and the papers filed in connection therewith; the court resolves the motion consistent with the following reasoning:
1. Plaintiff Poly-America, L.P. (" Poly" ) and defendant API Industries, Inc. (" API" ) are competitors in the manufacture and sale of household plastic bags, sold in cardboard containers at retailers such as Home Depot, Inc. Poly instituted suit against API asserting infringement of U.S. Patent No. D569,719 S (" the '719 patent" ) titled " Product Container," which patent issued May 27, 2008. The '719 patent contains a single design claim  based on 10 drawings showing different views of a six-sided folding cardboard box with a front opening. API has moved for dismissal of the case based on its assertion that its cardboard box design is " not substantially similar" to the patented design.
Standard of Review.
2. " The purpose of judgment on the pleadings is to dispose of claims where the material facts are undisputed and judgment can be entered on the competing pleadings and exhibits thereto, and documents incorporated by reference." Venetec Int'l, Inc. v. Nexus Med. LLC, 541 F.Supp.2d 612, 617 (D. Del. 2008). In the context of this case, both parties agree that the legal standard for patent design infringement found in the Federal Circuit's opinion in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) ( en banc ), is controlling:
In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear " substantially the same" to the ordinary observer, as required by Gorham [ Co. v. White, 81 U.S. 511, 20 L.Ed. 731 (1871)]. In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art . . . .
543 F.3d at 678. In further illuminating the above standard, the Federal Circuit has held that: (a) " articles which are concealed or ...