North Star Technology International Ltd. v. Latham Pool Products, Inc.

• Court: Court of Appeals for the Federal Circuit
• Decided: April 24, 2025
• Docket: 23-2138
• Status: Unpublished

Opinion

Case: 23-2138 Document: 84 Page: 1 Filed: 04/24/2025

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

NORTH STAR TECHNOLOGY INTERNATIONAL LTD., NORTH STAR TECHNOLOGY LTD., Plaintiffs-Appellants

v.

LATHAM POOL PRODUCTS, INC., Defendant-Appellee ______________________

2023-2138 ______________________

Appeal from the United States District Court for the Eastern District of Tennessee in No. 3:19-cv-00120-KAC- DCP, Judge Katherine A. Crytzer. ______________________

Decided: April 24, 2025 ______________________

MATTHEW JAMES DOWD, Dowd Scheffel PLLC, Wash- ington, DC, argued for plaintiffs-appellants. Also repre- sented by ROBERT JAMES SCHEFFEL; MICHAEL J. BRADFORD, WADE R. ORR, Luedeka Neely, P.C., Knoxville, TN; PERRY SAIDMAN, Perry Saidman, LLC, Miami Beach, FL.

RUSSELL KORN, Kilpatrick Townsend & Stockton LLP, Atlanta, GA, argued for defendant-appellee. Also Case: 23-2138 Document: 84 Page: 2 Filed: 04/24/2025

represented by MICHAEL A. BERTELSON, COURTNEY DABBIERE; MEGAN ELIZABETH BUSSEY, New York, NY. ______________________

Before LOURIE, CHEN, and HUGHES, Circuit Judges. HUGHES, Circuit Judge. North Star Technology International Limited and North Star Technology Limited (collectively, North Star) sued Latham Pool Products, Inc. in the U.S. District Court for the Eastern District of Tennessee for alleged infringe- ment of a design patent related to swimming pools. The district court granted Latham’s motion for summary judg- ment of non-infringement, reasoning that Latham’s pool is plainly dissimilar to North Star’s design patent. We find no reversible error in the district court’s determinations and affirm its grant of summary judgment of non-infringement. I North Star owns and manufactures products that prac- tice U.S. Design Patent No. D791,966 which claims the or- namental appearance of a swimming pool. The D’966 patent was filed on, and thus has a priority date, of Janu- ary 28, 2016. J.A. 21. Latham manufactures and sells a fi- berglass swimming pool it brands as the Corinthian 16. As seen in the depiction below, both the D’966 patent (on the left) and the accused Corinthian 16 design (on the right) relate to rectangular swimming pools with tanning ledges. Case: 23-2138 Document: 84 Page: 3 Filed: 04/24/2025

NORTH STAR TECHNOLOGY INTERNATIONAL LTD. v. 3 LATHAM POOL PRODUCTS, INC.

D’966 patent, Fig. 1 and Latham’s accused product, Fig. 7 the Corinthian 16

In April 2019, North Star filed a complaint against Lat- ham, alleging infringement of its D’966 Patent. J.A. 45–52. Latham filed a motion for summary judgment of non-in- fringement, arguing that the designs are plainly dissimilar and that “any similarities that do exist between the D’966 Patent and Corinthian 16 designs stem from their use of design elements that were commonly used in pool designs before the D’966 Patent.” J.A. 532. The district court agreed, explaining that the “prominent ornamental ele- ments of the two designs”—including the shape of the entry steps and deep end benches—“differ significantly, creating an overall ‘plainly dissimilar’ appearance.” J.A. 18 (inter- nal citation omitted). It added that a review of the prior art confirmed non-infringement because “[e]ach of the perti- nent design elements included in the D’966 Patent and Co- rinthian 16 . . . existed before [North Star] filed the D’966 Patent.” J.A. 19 (emphasis added). The district court cited to examples of pools with rectangular tanning ledges that Case: 23-2138 Document: 84 Page: 4 Filed: 04/24/2025

pre-date the D’966 Patent, see J.A. 5–9, as well as to Lat- ham’s own use of the same deep end benches used in the Corinthian 16 in its older pool models. The district court entered final judgment dismissing North Star’s claims on June 6, 2023. J.A. 1. North Star timely appealed, and we have jurisdiction under 28 U.S.C. § 1295(a)(1). II We follow regional circuit law when reviewing a dis- trict court’s grant of summary judgment. Adasa Inc. v. Avery Dennison Corp., 55 F.4th 900, 907 (Fed. Cir. 2022). The Sixth Circuit reviews a grant of summary judgment de novo. Loyd v. Saint Joseph Mercy Oakland, 766 F.3d 580, 588 (6th Cir. 2014). Summary judgment is appropriate when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a); Kalich v. AT & T Mobility, LLC, 679 F.3d 464, 469 (6th Cir. 2012). III A design patent is infringed “[i]f, in the eye of an ordi- nary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resem- blance [can] deceive such an observer, inducing him to pur- chase one supposing it to be the other.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (en banc) (quoting Gorham Co. v. White, 81 U.S. 511, 528 (1871)). Where the claimed and accused designs are “plainly dissimilar,” the patent owner does not meet its burden of proving infringement. Egyptian Goddess, 543 F.3d at 678. “Differences . . . must be evaluated in the context of the claimed design as a whole, and not in the context of separate elements in isolation.” Ethicon Endo- Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir. 2015). Case: 23-2138 Document: 84 Page: 5 Filed: 04/24/2025

NORTH STAR TECHNOLOGY INTERNATIONAL LTD. v. 5 LATHAM POOL PRODUCTS, INC.

As the district court correctly identified, the D’966 pa- tent’s ornamental features are characterized by straight edges and “geometric shapes”—producing an overall “an- gular . . . appearance”—while the Corinthian 16 is charac- terized by “rounded shapes” and a “curved” design. J.A. 15. For example, the entry step in the D’966 patent is a pool- width rectangle, while the Corinthian 16 has two separate curved entry steps shaped like quarters of a circle. J.A. 15–16. Because no ordinary observer, defined by the dis- trict court as a “homeowner considering purchasing a swimming pool for their home,” J.A. 18, would accidentally purchase one pool thinking it was the other, the designs are plainly dissimilar. Although the designs share structural similarities, de- sign patents only protect the original, “nonfunctional as- pects 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. 1993)). North Star cannot monopolize common ornamental pool features or functional pool features by registering a combi- nation of those features as a design patent. See Lee v. Day- ton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988) (explaining that “[d]esign patents do not and cannot in- clude claims to the structural or functional aspects of the article” and are limited to the “ornamental design” of the article); Egyptian Goddess, 543 F.3d at 674 (“[A] patented design that consists ‘only of bringing together old elements with slight modifications of form’ is not infringed by ‘an- other who uses the same elements with his own variations of form . . . if his design is distinguishable by the ordinary observer from the patented design.’”) (quoting Zidell v. Dex- ter, 262 F. 145 (9th Cir. 1920)). Both designs relate to rec- tangular swimming pools with steps, benches, and tanning ledges, but North Star’s patent only protects the ornamen- tal aspect—here, the angular shape—of those ubiquitous features. Case: 23-2138 Document: 84 Page: 6 Filed: 04/24/2025

We have considered North Star’s remaining arguments regarding the district court’s allegedly erroneous decisions to disregard or exclude certain evidence and find them un- persuasive. The district court did not abuse its discretion in declining to consider documents which were not relevant or authenticated, or by striking lay testimony which lacked foundation and amounted to expert testimony from a wit- ness who was not qualified as an expert. We thus affirm the district court’s grant of summary judgment on the issue of non-infringement. AFFIRMED