## Facts

- OddzOn Products, Inc. owned U.S. Design Patent No. D 346,001 covering the ornamental design of a foam, football-shaped tossing ball with a tail and fin structure, sold as the “Vortex.”
- The inventor’s work on the patented design was influenced by two earlier ball designs that had been disclosed to him in confidence and were not publicly available.
- Just Toys, Inc. (with related entities) sold competing foam football-shaped tossing balls with tail-and-fin features, marketed in its “Ultra Pass” line.
- OddzOn sued Just Toys in the Northern District of California alleging (1) design patent infringement and (2) related claims based on product appearance and packaging (trade dress and state-law unfair competition).
- Just Toys denied infringement and argued the design patent was invalid as obvious, relying in part on the confidential designs as subject matter the patentee did not himself invent under 35 U.S.C. § 102(f).
- On cross-motions for summary judgment, the district court entered judgment for Just Toys on infringement and the related trade dress/unfair competition claims, and entered judgment for OddzOn rejecting Just Toys’ invalidity challenge.
- OddzOn appealed the noninfringement-related rulings; Just Toys cross-appealed the validity ruling.

## Issues

1. Whether a reasonable jury could find that Just Toys’ Ultra Pass balls infringed OddzOn’s D 346,001 design patent when the comparison focuses on protectable ornamental features rather than functional features.
2. Whether OddzOn showed a protectable (nonfunctional, source-identifying) trade dress in the product configuration and/or packaging and, if so, whether the record supported a likelihood of confusion.
3. Whether confidential designs attributable to another under § 102(f) may be considered in a § 103 obviousness analysis, and whether the D 346,001 design was shown invalid as obvious on the summary-judgment record.

## Decision

- Affirmed summary judgment of no design patent infringement because OddzOn did not show evidence from which a reasonable jury could find that the accused designs appropriated the patented design’s protectable ornamental appearance, as opposed to sharing functional tail-and-fin attributes.
- Affirmed summary judgment against OddzOn on trade dress and state-law unfair competition because OddzOn did not establish protectable trade dress and did not present evidence sufficient to support a likelihood of confusion tied to protectable, nonfunctional features.
- Affirmed summary judgment that the design patent was not proved invalid; the court agreed that § 102(f) subject matter (including confidential disclosures) may be used with other prior art in a § 103 obviousness analysis, but held that even with that material considered, the record did not support a finding of obviousness.

## Legal Principles

- A design patent protects ornamental design, not features dictated by function; functional aspects must be set aside when assessing infringement of a design patent.
- Design patent infringement is evaluated from the viewpoint of an ordinary observer, considering the claimed design as a whole and in light of prior art, but only as to protectable ornamental aspects.
- Trade dress protection for product design or packaging requires a showing that the asserted trade dress is nonfunctional and serves to identify source, along with proof of a likelihood of confusion.
- Evidence such as consumer surveys must connect any confusion to protectable trade dress features rather than to unprotectable similarities (including functional similarities).
- Subject matter showing the applicant did not originate the claimed design under 35 U.S.C. § 102(f)—even if obtained through confidential disclosures—may be considered in a 35 U.S.C. § 103 obviousness analysis when combined with other prior art.

## Conclusion

The Federal Circuit affirmed the district court’s summary-judgment rulings: OddzOn failed to raise a triable issue that Just Toys’ Ultra Pass balls or packaging infringed any protectable design-patent or trade-dress rights, and Just Toys failed to show the D 346,001 design patent was invalid—although the court held that confidential, derived subject matter within § 102(f) can be used in evaluating obviousness under § 103.


OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396 (1997)