Federal Circuit Addresses Pleading Standard for Design Patents

In Hall v. Bed Bath & Beyond, Inc., et al., the United States Court of Appeals for the Federal Circuit ("CAFC") addressed the standard for pleading infringement of a design patent. Case No. 2011-1165, 2011-1235 (Jan. 25, 2013). In Hall, the district court dismissed plaintiff/patentee's infringement claim for failure to state a claim. The Federal Circuit reversed that decision and remanded.

Hall invented a large tote towel with bindings, zippered pockets, and a cloth loop. He provided samples of the product to Bed Bath & Beyond ("BB&B") marked as "patent pending." Hall contends that BB&B copied the towel design and manufactured and sold copies. Hall sued BB&B, one of its executives in his personal capacity, and a BB&B supplier for design patent infringement once his application issued as U.S. Design Patent No. D596,439. The defendants raised various defenses and counterclaims. The district court dismissed all of Hall's claims on defendants' motion under Rule 12(b)(6) for failure to state a claim.

The district court stated that Hall's patent infringement complaint did not contain "any allegations to show what aspects of the Tote Towel merit design patent protection, or how each Defendant has infringed the protected patent claim." The CAFC outlined five elements of a patent infringement pleading:

1. allege ownership of the patent
2. name each defendant
3. cite the patent that is allegedly infringed
4. state the means by which the defendant allegedly infringes
5. point to the section of the patent law invoked

The district court required more, however, including for Hall to answer the question "[w]hat is it about Plaintiff's towel that he claims is 'new, original and ornamental,' meriting the protection of a design patent?" The CAFC held that neither the Federal Rules of Civil Procedure, Twombly, or Iqbal require a design patent plaintiff to set forth such specific information in the complaint. The CAFC also noted that the district court erred as Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665 (Fed. Cir. 2008) only requires infringement of a design patent "as a whole," and not on any "points of novelty." The CAFC held the district court erred by requiring the complaint to identify "new, original, and ornamental" aspects of the design. However, the CAFC affirmed the dismissal of the claims against the executives in their personal capacity as the alleged acts taken the by executive occurred before the patent issued. The CAFC noted that the district court did not address the executive's personal liability for inducing infringement under 35 U.S.C. §271(b).