Design Patents: Claim Construction Rules Lead to Summary Judgment of Non-Infringement

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One question to be answered in the upcoming Egyptian Goddess en banc rehearing is whether Markman style claim construction should apply to design patent cases.  George Raynal, an associate at the Saidman firm, took a look at the practical impact of such claim construction: summary judgment.



by George Raynal

The effect of applying Markman to design patent claim construction prior to determining infringement has resulted in an overwhelming likelihood that an accused infringer will bring a successful motion for summary judgment of non-infringement. 

In a survey, 63 design patent infringement cases have been identified since Markman was first applied to a design patent claim in Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995).  Of these, the accused infringer moved for summary judgment of non-infringement in 43 cases.  The movant was successful in 31 (72%)[1] of those 43 cases, whereas the motion for summary judgment of non-infringement was denied only 12[2] times.  Of the successful 31, ten[3] were appealed and only one[4] of those ten was reversed because the court could not agree that no reasonable jury could find infringement based on the record. 

Additionally, summary judgment of infringement has been granted in only four design patent infringement cases since Elmer.[5]  A motion for summary judgment of infringement has been denied once.[6]




[1] Arminak and Associates, Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007); Egyptian Goddess, Inc. v. Swisa, Inc. 498 F.3d 1354 (Fed. Cir. 2007); Amini Innovation Corp. v. Anthony California, Inc. 439 F.3d 1365 (Fed. Cir. 2006); C olida v. Sharp Electronics Corp. 125 Fed.Appx. 993 (Fed. Cir. 2005); Brooks Furniture Mfg., Inc. v. Dutailier Intern., Inc., 393 F.3d 1378 (Fed. Cir. 2005); Anheuser-Busch Companies, Inc. v. Crown Cork & Seal Technologies, 121 Fed.Appx. 388 (Fed. Cir. 2004); Colida v. Ericsson, Inc., 93 Fed.Appx. 220 (Fed. Cir. 2004); Minka Lighting, Inc. v. Craftmade Intern., Inc., 93 Fed. Appx. 214 (Fed. Cir. 2004); Antonious v. Spalding & Evenflo Co’s., Inc., 217 F.3d 849 (Table – unpub. Fed. Cir. 1999);OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997); Sada v. Jack In The Box, Inc., 2006 WL 1149159 (W.D.Tex. 2006); Sharper Image Corp. v. Target Corp., 425 F.Supp.2d 1056 (N.D.Cal. 2006); Igbinadolor v. Sony Corp. of Amer., 2005 WL 1719964 (E.D.N.Y. 2005); Lawman Armor Corp. v. Winner Intern., L.L.C., 2005 WL 354103 (E.D.Pa. 2005); Colida v. Sony Corp. of Amer., 2005 WL 267231 (S.D.N.Y. 2005); Colida v. NEC USA, Inc., 2005 WL 267417 (S.D.N.Y. 2005); Lawman Armor Corp. v. Master Lock Co., 2004 WL 440177 (E.D.Pa. 2004); Puritan-Bennett Corp. v. Penox Technologies, Inc., 2004 WL 866618 (S.D.Ind. 2004); Tecumseh Products Co. v. Briggs & Stratton Corp., 295 F.Supp.2d 902 (E.D.Wis. 2003); Spotless Enterprises, Inc. v. A & E Products Group L.P., 294 F.Supp.2d 322 (E.D.N.Y. 2003); Cinna, S.A. v. Futura S.R.L., 2003 WL 22671466 (S.D.N.Y. 2003); Rehrig Pacific Co. v. Norseman Plastics Ltd. Inc., 2003 WL 25667625 (C.D.Cal. 2003); Street Flyers LLC. v. Gen-X Sports, Inc., 2003 WL 21998960 (S.D.N.Y. 2003); Mann Design Ltd. v. Farnam Companies, Inc., 2003 WL 1572008 (D.Minn. 2003); Fanimation Design & Mnfg., Inc. v. Emerson Elec. Co., 2003 WL 1906093 (S.D.Ind. 2003); Hosley Intern. Trading Corp. v. K Mart Corp., 237 F.Supp.2d 907 (N.D.Ill.,2002); Schnadig Corp. v. Collezione Europa U.S.A., 2002 WL 31253750 (N.D.Ill. 2002); Boone Supply Co. v. Cambria County Ass’n for the Blind, 2002 WL 1796970 (S.D.W.Va. 2002); Metrokane, Inc. v. Wine Enthusiast, 185 F.Supp.2d 321 (S.D.N.Y. 2002); Golan v. Pingel, 1999 WL 33633104 (C.D.Cal. 1999); Abbott Laboratories v. Mead Johnson & Company, 1996 WL 332449 (N.D.Ill. 1996).

[2] Nichia Corp. v. Seoul Semiconductor Co., Ltd., 2007 WL 2428040 (N.D.Cal. 2007); National Diamond Syndicate, Inc. v. Flanders Diamond USA, Inc., 264 F.Supp.2d 631 (N.D.Ill. 2003); ADC Telecommunications, Inc. v. Panduit Corp., 200 F.Supp.2d 1022 (D.Minn.,2002); Lentek Intern. Inc. v. Sharper Image Corp., 164 F.Supp.2d 1302 (N.D.Fla. 2001); Lakewood Engineering and Mfg. Co. v. Lasko Metal Products Inc., 2001 WL 1012573 (N.D.Ill. 2001); Keystone Retaining Wall Systems, Inc. v. Rockwood Retaining Walls, 2001 WL 951582 (D.Minn. 2001); New L&N and Marketing, Inc. v. Mattel, Inc., 2000 WL 730350 (E.D.Pa. 2000); Superior Merchandise Co., Inc. v. M.G.I. Wholesale, Inc., 2000 WL 322779 (E.D.La. 2000); Five Star Mfg., Inc. v. Ramp Lite Mfg., Inc., 44 F.Supp.2d 1149 (D.Kan. 1999); Black & Decker Inc. v. Cedarberg Industries, Inc., 1998 WL 526534 (N.D.Ill. 1998); Superior Merchandise Co., Inc. v. M.G.I. Wholesale, Inc., 1999 WL 977365 (E.D.La. 1999); Moen Inc. v. Foremost Intern. Trading, Inc., 38 F.Supp.2d 680 (N.D.Ill. 1999).

[3] Arminak and Associates, Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007); Egyptian Goddess, Inc. v. Swisa, Inc. 498 F.3d 1354 (Fed. Cir. 2007); Amini Innovation Corp. v. Anthony California, Inc. 439 F.3d 1365 (Fed. Cir. 2006); C olida v. Sharp Electronics Corp. 125 Fed.Appx. 993 (Fed. Cir. 2005); Brooks Furniture Mfg., Inc. v. Dutailier Intern., Inc., 393 F.3d 1378 (Fed. Cir. 2005); Anheuser-Busch Companies, Inc. v. Crown Cork & Seal Technologies, 121 Fed.Appx. 388 (Fed. Cir. 2004); Colida v. Ericsson, Inc., 93 Fed.Appx. 220 (Fed. Cir. 2004); Minka Lighting, Inc. v. Craftmade Intern., Inc., 93 Fed. Appx. 214 (Fed. Cir. 2004); Antonious v. Spalding & Evenflo Co’s., Inc., 217 F.3d 849 (Table – unpub. Fed. Cir. 1999);OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997)

 

[4] Amini Innovation Corp. v. Anthony California, Inc. 439 F.3d 1365 (Fed. Cir. 2006); C olida v. Sharp Electronics Corp. 125 Fed.Appx. 993 (Fed. Cir. 2005).

[5] Superior Merchandise Co., Inc. v. M.G.I. Wholesale, Inc., 1999 WL 977365 (E.D.La. 1999); Moen Inc. v. Foremost Intern. Trading, Inc., 38 F.Supp.2d 680 (N.D.Ill. 1999); Contessa Food Products, Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir. 2002); Unidynamics Corp. v. Automatic Products Intern., Ltd., 157 F.3d 1311 (Fed. Cir. 1998).

 

[6] New L&N Sales and Marketing, Inc. v. Big M, Inc., 2001 WL 111613 (E.D.Pa. 2001).

17 thoughts on “Design Patents: Claim Construction Rules Lead to Summary Judgment of Non-Infringement

  1. >>So if you throw out a markman-style analysis, will there ever be summary judgment of non-infringement? Will a design patentee be guaranteed a trial and thus able to negotiate a larger settlement based less on the merits and more on the cost of litigation?<<

    Fret not, even without a verbalized claim constructino, Rule 56 summary judgment motion practice will apply in the same manner it applies in every other case. To be sure, a court could still enter summary judgment of non-infringment, infringement, invalidity, etc. Using the basic standard for summary judgment (i.e. taking all inferences in favor of the non-moving party), the court would decide whether there is an absence of a genuine issue of material fact. A factual issue is genuine if the evidence is such that a reasonable jury could return s verdict for the nonmoving party. On infringement, for example, the court would be called upon to decide the ultimate issue of “substantial similarity.” If the claimed design (using the drawings not a verbalization) and the accused design looked nothing like each other, such that there was no genuine issue of material fact, summary judgement would be appropriate.

    Bottom line: A design patentee will not be guaranteed a trial. However, by prohibiting verbalizations, a design patentee will be guaranteed a determination in accordance with the mandate of the Supreme court in Gorham v. White (1871).

    -Chris

  2. >>So if you throw out a markman-style analysis, will there ever be summary judgment of non-infringement? Will a design patentee be guaranteed a trial and thus able to negotiate a larger settlement based less on the merits and more on the cost of litigation?<<

    If the court dispatches utility-style claim drafting as part of design patent claim construction, one would expect closer to a 50-50 split on infringement/noninfringement holdings on summary judgment in design patent litigations, rather than the 8 to 1 ratio in favor of non-infringement that currently obtains.

  3. There are far better and scientifically valid ways to evaluate visual design than by verbal description. Using Markman-type methods is totally out of date with respect to the science human perception.

  4. I don’t litigate, so I’m curious: do courts in trade dress cases limit themselves to literary descriptions of the dress that’s allegedly being knocked off, or do they simply visually compare the products? Do they even bother with a Markman-type hearing?

  5. Mr. Saidman is exactly on point. Simply put, design patents are claimed using drawings not words. Why? Words are ill-equipped to capture the appearance (appearance is the operative word) of a design. Think about the Mona Lisa. Could words ever capture the overall appearance of the design? Of course not…..the Mona Lisa itself is the best description of the Mona Lisa.

    Here are ten reasons why courts should not verbilize design patent claims:

    1) The Supreme Court in Gorham v. White mandated that the test for design patent infringement is a visual test. (i.e. image to image)(..”through the eye of the ordinary observer”). Because the test is a visual test, a verbalization is irrelevant to the visual infringement comparison.
    2) A verbalization will only serve to obfuscate the fact-finder’s analysis. The ordinary observer (th efact-finder) is to compare images, not words. If you give a jury a verbilized claim construction what are they to do with it?
    3) Translation takes the “observation” away from the ordinary observer. The visual comparison between the claimed design and the accused design rests with the eyes of the beholder. The ordinary oberserver is to observe the accused design AND the claimed design.
    4) Every solid line in the drawing is part of the design. A verbalized claim construction cannot account for every solid line of the claim and the spatial relationship of such lines with each other.
    5) The USPTO grants design patents using DRAWINGS, not words. (MPEP states clearly that as a rule drawings are a design’s best description. See MPEP 1503.01)
    6) Verbalizations are a waste of judicial resources. (“A picture is worth a thousand words.”) (See Minka Lighting, approx. 500 words to describe a ceiling fan.)
    7) Translating a design into words is beyond the expertise of judges. (Markman was founded on judges being experts with the written word, not designs.)
    8) Try describing your telephone in words vs. drawings. (This is why design patents use drawings, not words.)
    9) Verbalizations can create lists of features but they are ill-equipped to convey the appearance of such features and the relationship of such features to one another.
    10) Drawings are simply the best mode to communicate a design.

    That said, a court can provide guidance to the fact-finder as to the meaning of phantom lines, drafting conventions, multiple embodiments, indeterminate break lines, etc., to better assist the fact-finder in understanding the appearance of the drawings, stopping short, however, of verbalizing what’s in the drawings themselves.

    Also, of course, a court can use words to explain its findings in an opinion. (i.e. SJ Opinions, bench trials, etc.). And of course, Examiners, too, can use words to explain their arguments. (We aren’t cave people!). The point is that for purposes of CLAIM CONSTRUCTION verbilization should not be used.

    -Chris

  6. “Heretofore, left-brain leading utility patent attorneys have thought that everything, including designs, can be objectified. They can’t.”

    If designs can not be objectively described, then there is no legal basis for design patents.

    Thanks for playing.

  7. So if you throw out a markman-style analysis, will there ever be summary judgment of non-infringement? Will a design patentee be guaranteed a trial and thus able to negotiate a larger settlement based less on the merits and more on the cost of litigation?

  8. Frances is absolutely correct. What better description of a design can there possibly be other than what it looks like? Heretofore, left-brain leading utility patent attorneys have thought that everything, including designs, can be objectified. They can’t.
    If you are still not convinced, I will send you a sample of one court’s verbalized design patent claim, and ask 10 of you to draw the design based only on the words. I would bet a lot of money that no two will be even remotely similar. So, of what possible use can those words be to a jury?
    And Mr. Boundy, this is not to say that the examiner and design patent applicant should not use words to express the logic, or lack thereof, in a rejection. Although most design examiners use form paragraphs 95% of the time, that does leave 5% for a discussion of the specifics. And the specifics, however slight, are always there; if not, just look at the designs and say what you think. Regarding the point of novelty test, there is nothing in Gorham to support it.

  9. As an expert designer, distinguishing between varying artistic elements, such as between two slightly different curves, is almost impossible to do in words. This is the realm of industrial design, which is taught with pencils and foamcore, not words and books.
    Part of the test is if the accused design is substantially similar to the patented design. Since the claim of the design is a picture, a picture of the accused design is the only proper way to determine substantial similarity. Here’s a test for non-designers: can you visualize a twisted plane of 10 degrees versus 20 degrees? It probably would be easier if you saw a picture of them for comparison, no?
    I’m still in law school, but my mission afterwards as a professor is to get lawyers (and judges) to understand visualization and design, because their misunderstanding is destroying design patents.

  10. Request for comment –

    It seems to me that a Markman articulation of the scope of the design is crucial, especially during prosecution. Without a Durling/Markman statement of scope, design office actions are just “similar and obvious because I think so.” In my naivitee, it seems that articulation of a design by the examiner is crucial for getting the examiner to state something that you can disagree with and show the error, so you can get something allowed. It’s also important, it would seem, to get the applicant to state something on the record for future claim construction.

    I think the problem in recent Federal Circuit design patent law is the “point of novelty” component. Does that have any basis in Gorham v White?

    I’m only an occasional dabbler in design patents, so I would appreciate comment and education from an expert.

  11. Is Goodyear relevant here too, regarding problems with claim construction? Where the district court in its claim construction narrowed the design patent to apply only to its current commercial embodiment? When the patent could have covered car tires in addition to truck tires?

    While researching a paper on Calmar, I was struck by how reluctant judges are to let these design patent cases get to a jury.

  12. The reason district courts have been forced to tortuously construe pictures into words into design patent cases is Durling v. Spectrum Furniture, 101 F.3d 100 (Fed. Cir. 1996), which was really a design patent obviousness case, but required claim construction. Durling is cited in most subsequent Markman claim verbalization decisions. The Feds said in Durling: “Unlike the readily available verbal description of the invention and of the prior art that exists in a utility patent cased, a design patent case presents the judge only with visual descriptions. Given the lack of visual language, the trial court must first translate these visual descriptions into words – i.e., into a common medium of communication. (fn2: When properly done, this verbal description should evoke the visual image of the design). From this translation, the parties and appellate courts can discern the internal reasoning employed by the trial court to reach its decision as to whether or not a prior art design is basically the same as the claimed design.”

    “Basically the same” is the requirement for a valid “Rosen reference” in a 103 rejection of a claimed design.

    So, if the evil in Markman claim construction for design patents is verbalization of everything shown in the patent drawings (as I believe it to be), what is the answer to the Durling edict?

    My answer? The false premise of Durling is that there is, in fact, no “lack of visual language”. Unless the trier of fact is blind, they can just look at the drawings – the drawings speak volumes. A picture, as they say, is worth a thousand words.

  13. Pam, great comment, and I would like to read the Alan Tracy case. No access to West Law db, and GW and Emory dbs do not have case – must have been decided prior to August 1995. Can you post a link to the Alan Tracy Case.

  14. After a Markman verbalization of a design patent claim, there were 8 times as many cases in which summary judgment of non-infringement was granted compared to cases in which summary judgment of infringement was granted. Since one might normally expect around a 50-50 split in contested cases, that’s an overwhelming number of cases in which non-infringement was found on summary judgment. This also suggests that the patentee’s right under the 7th Amendment to a trial by the jury on the factual issue of infringement (are the two designs substantially the same?) has been severely threatened, if not abrogated, by Markman verbalization of design patent claims.

  15. “an overwhelming likelihood that an accused infringer will bring a successful motion for summary judgment of non-infringement.”

    What am I missing? There were 63 analogous cases in the past and the movants were successful in 31 of them. How does under 50% become “an overwhelming likelihood”?

  16. Elmer was not the first design patent case where Markman was applied; there was an unreported case, Alan Tracy, Inc. v. Trans Globe Imports, Inc., 60 F.3d 840 (Table), 1995 WL 331109 (Fed. Cir. 1995) before Elmer. This case is (in my opinion) the missing link, explaining why district courts have been forced to torturously construe pictures into words, then decide whether the visual appearance of an article of manufacture infringes the words. In Alan Tracy there was a valid claim construction question for a design patent, i.e., whether a patent drawing that had broken lines to show indeterminate length covered a U-shaped accused device, when the U-shaped would have been in the portion of the article not shown in the patent.

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