United States District Court, E.D. Texas, Tyler Division
MEMORANDUM OPINION AND ORDER
LOVE UNITED STATES MAGISTRATE JUDGE.
claim construction opinion construes the disputed claim terms
in U.S. Design Patent No. D713, 196 (“the '196
Patent”). Plaintiff HFA, Inc. (“HFA”)
alleges that Defendant Trinidad/Benham Corp.
(“Trinidad”) infringes the '196 Patent. HFA
filed an opening claim construction brief (Doc. No. 41), to
which Trinidad filed a responsive brief (Doc. No. 42), and
HFA filed a reply (Doc. No. 43). The parties agreed that no
claim construction hearing was necessary in this matter;
therefore, the Court did not conduct such a hearing and
instead agreed to resolve the dispute from the briefing.
(Doc. No. 39.) Upon consideration of the parties'
arguments, and for the reasons stated herein, the Court
adopts the construction set forth below.
'196 Patent is a design patent entitled “Nested
Pans.” The '196 Patent claims “[t]he
ornamental design for a nested pans” and contains
fourteen figures. By way of example, Figure 6 is shown below:
Patent, Fig. 6.
design patent is fundamentally different from a utility
patent, but in some areas, the law pertaining to each
overlaps. For example, although the respective tests for
infringement are different, both types of patents require the
district courts to conduct claim construction proceedings.
Egyptian Goddess, Inc. v. Swisa, Inc., 543
F.3d 665, 679 (Fed. Cir. 2008) (citing Elmer v. ICC
Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)
(design patents); O2 Micro Int'l Ltd. v. Beyond
Innovation Tech., 521 F.3d 1351 (Fed. Cir. 2008))
design patent protects the novel, non-functional aspects of a
claimed ornamental design. OddzOn Prods., Inc. v. Just
Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). The
figures in design patent not only comprise the bulk of the
disclosure, but also set forth the limits of the claim.
See Hupp v. Siroflex of America, Inc., 122 F.3d
1456, 1464 (Fed. Cir. 1997) (“A design patent contains
no written description; the drawings are the claims to the
patented subject matter.”). Design patents are limited
to what is depicted in the drawings and therefore have almost
no scope. In re Mann, 861 F.2d 1581, 1582 (Fed. Cir.
trial courts have had a duty to conduct claim construction in
design patent cases, no particular form has been prescribed.
Egyptian Goddess, 543 F.3d at 679. Thus, although
trial courts in such cases have generally issued detailed
verbal descriptions of the claimed designs, the Federal
Circuit has never required such constructions. Id.
Noting the difficulties involved in describing a design in
words, the Federal Circuit held that 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 claimed design, ”
and in deciding whether a verbal description is appropriate,
the Court noted that trial courts should recognize the
“risk of placing undue emphasis on particular features
of the design and the risk that a finder of fact will focus
on each individual described feature in the verbal
description rather than on the design as a whole.”
Id. at 679-80. Further, the Federal Circuit noted:
While it may be unwise to attempt a full description of the
claimed design, a court may find it helpful to point out . .
. various features of the claimed design as they relate to
the accused design and the prior art. . . . [A] trial court
can usefully guide the finder of fact by addressing a number
of other issues that bear on the scope of the claim. Those
include such matters as describing the role of particular
conventions in design patent drafting, such as the role of
broken lines; assessing and describing the effect of any
representations that may have been made in the course of the
prosecution history; and distinguishing between those
features of the claimed design that are ornamental and those
that are purely functional.
Id. (internal citations and quotations omitted).
Finally, the Court added that a trial court's
“decision to issue a relatively detailed claim
construction will not be reversible error” absent a
showing of prejudice because “the level of detail to be
used in describing the claimed design is a matter within the
court's discretion.” Id. at 679.
when a trial court determines that a detailed verbal
description of the claimed design is appropriate, such a
construction involves an “additional level of
abstraction” that is not required when construing the
claims of a utility patent. Durling v. Spectrum Furniture
Co., 101 F.3d 100, 103 (Fed. Cir. 1996). This
abstraction results from a lack of a written description in
design patents; the court is presented with only visual
images of the claimed subject matter. Id. In this
regard, the “properly construed the scope of the
claimed invention [should be the] overall ornamental visual
impression [of the design], rather than ... the broader
general design concept;” Contessa Food Prods., Inc.
v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2000)
(quoting OddzOn Prods., Inc., 122 F.3d at 1405)
(internal quotations omitted), thus, evoking the
“visual image of the design.” Durling,
101 F.3d at 103 n.2.
functional aspects of a design cannot be claimed. OddzOn
Prods., Inc., 122 F.3d at 1405 (“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.”). Functional design elements can be claimed,
however, when they serve a primarily ornamental purpose,
e.g., in circumstances where there are several ways
to achieve the underlying function. L.A. Gear, Inc. v.
Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir.
1993). The determination of ...