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HFA, Inc. v. Trinidad/Benham Corp.

United States District Court, E.D. Texas, Tyler Division

March 7, 2018

HFA, INC., Plaintiff,
v.
TRINIDAD/BENHAM CORP., Defendant.

          MEMORANDUM OPINION AND ORDER

          JOHN D LOVE UNITED STATES MAGISTRATE JUDGE.

         This 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.

         BACKGROUND

         The '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:

         (Image Omitted.)

         '196 Patent, Fig. 6.

         LEGAL STANDARD

         A 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)) (utility patents).

         A 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. 1988).

         Although 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.

         Therefore, 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.

         Ordinarily, 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 ...


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