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Snap-On Inc. v. Harbor Freight Tools USA, Inc.

United States District Court, E.D. Wisconsin

January 4, 2017



          LYNN ADELMAN District Judge

         Plaintiff Snap-on Incorporated alleges that defendant Harbor Freight Tools USA, Inc., has infringed U.S. Design Patent No. D730, 612 (the '612 patent). Before me now is Snap-on's motion for a preliminary injunction.

         I. BACKGROUND

         Snap-on designs, markets, and sells tools, garage accessories, and other equipment. It primarily sells its products to automotive repair technicians and automotive service-shop owners through independently owned and operated franchises. These franchisees purchase Snap-on's products from Snap-on and operate Snap-on branded trucks. The franchisees then drive around to the service shops on their routes and offer to sell the shop owners and technicians the Snap-on products in their trucks. In addition to selling its products through franchisees, Snap-on sells through distributors and the Internet.

         Snap-on's products include garage floor jacks, which are used to lift a portion of a vehicle from the ground so that the underneath of the vehicle can be accessed for service. These jacks typically use some type of hand-held mechanism, such as a lever, to operate a hydraulic pump that raises the vehicle using a lift arm. Before 2014, Snap- on sold three different types of garage floor jacks. In about 2012, Snap-on decided to create a new line of floor jacks, designed to be longer-lasting and of higher quality than the existing floor jacks on the market. In 2013, Snap-on engaged a third-party, VIS, LLC, to help it design the new jacks. The jacks that Snap-on eventually developed are known are the FJ200 2-ton jack and the FJ300 3-ton jack. On June 18, 2014, VIS, LLC filed an application for a patent on the design embodied in the FJ200 and the FJ300. On May 26, 2015, the '612 patent was granted to VIS, LLC, which later assigned the patent to Snap-on. Snap-on began selling the FJ200 in August 2014, and it began selling the FJ300 in March 2016. The retail price for the FJ200 is $550.50, and the retail price for the FJ300 is $651.25.

         Harbor Freight also sells tools, including floor jacks. It does so through retail stores and through its website. In approximately August 2016, Harbor Freight began selling a floor jack known as the Daytona 3 Ton Super Duty Floor Jack. The retail price for the Daytona is $199, and it has been on sale for as low as $179. Thus, the Daytona is significantly cheaper than Snap-on's jacks. However, Harbor Freight markets the Daytona as being able to perform as well as Snap-on's jacks.

         After Snap-on learned of the Daytona, its representatives purchased one and compared it to the FJ200, the FJ300, and the '612 patent. Snap-on concluded that the Daytona is substantially visually identical to the design protected by the '612 patent. It therefore commenced this suit and filed the present motion for a preliminary injunction.

         In an appendix to this decision and order, I reproduce three drawings from the '612 patent along with photographs of the Daytona taken from similar vantage points.[1]


         A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest. Winter v. Natural Res. Defense Council, Inc., 555 U.S. 7, 20 (2008). In a patent case, “[t]o prove a likelihood of success on the merits, a patentee must prove that success in establishing infringement is ‘more likely than not.'” Trebro Mfg., Inc. v. Firefly Equip., LLC, 748 F.3d 1159, 1166 (Fed. Cir. 2014).[2] In the present case, I conclude that Snap-on has not shown a likelihood of success under this standard. For this reason alone, Snap-on is not entitled to a preliminary injunction. I therefore do not address the remaining factors.

         A design patent may be granted for any “new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171. A 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).

         The test for infringement of a design patent is the “ordinary observer” test. See e.g., Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (en banc). To show infringement under this test, the patentee must show that an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design. Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d 1294, 1303 (Fed. Cir. 2010). However, if a design includes both functional and ornamental features, infringement occurs only if any perceived similarities in the patented and accused designs are based on the ornamental aspects of the designs, rather than on their functional aspects. Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, (Fed. Cir. 2006) (quoting Read Corp. v. Portec, Inc., 970 F.2d 816, 825 (Fed.Cir.1992)). In applying the ordinary-observer test, it is important to focus on whether the “overall designs” are similar and create deception, and to avoid looking for “similarities in ornamental features in isolation.” Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295 (Fed. Cir. 2010). Whether the ordinary observer would be deceived by the accused design is a question of fact, which a patentee must prove by a preponderance of the evidence. Id. at 1295.

         The infringement analysis of a design patent proceeds in a slightly different manner than the infringement analysis of a utility patent. In a case involving a utility patent, the court proceeds in two steps. In the first step, commonly referred to as claim construction, the court construes the patent claim to determine its meaning and scope. In the second step, the claim as properly construed is compared to the accused device to determine whether it infringes. See, e.g., Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995). The Federal Circuit has held that this same two-step process applies to a case involving a design patent. Elmer, 67 F.3d at 1577. However, with respect to a utility patent, claim construction will almost always require the court to give a “detailed verbal description” of the claim. See Egyptian Goddess, 543 F.3d at 679. In contrast, for a design patent, the Federal Circuit has recognized that because design patents “typically are claimed as shown in drawings, ” claim construction must be “adapted accordingly.” Id. (quoting Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1319 (Fed. Cir. 2007)). Because it is difficult to describe a design in words, the preferable course ordinarily will be for a district court not to attempt to “construe” a design patent claim by providing a detailed verbal description of the claim. Id. However, the district court has discretion to provide a verbal description of the claim if it thinks that it would be necessary or helpful. Id. at 679-80. Moreover, the district court can use claim construction to address other issues that bear on the scope of a claim, including “distinguishing between those features of the claimed design that are ornamental and those that are purely functional.” Id. at 680.

         In the present case, the claim consists of drawings, and I do not believe that a detailed verbal description of the claim is necessary or would be helpful. However, because many aspects of the design of a floor jack are functional, I will use claim construction to “factor out the functional aspects” of the design. Richardson, 597 F.3d at 1293; see also Oddz On Prods., Inc. v. Just toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) (“Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.”). On page nine of its brief in opposition to Snap-on's motion, Harbor Freight identifies the aspects of a floor-jack design that are functional. Moreover, the report of Harbor Freight's expert witness, Alan Ball, further identifies the aspects of the design that are functional. See Ball Decl., Ex. A at 7-12. From my review of Snapon's reply brief, I conclude that ...

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