Wednesday, October 17, 2012

Design Patent Claim Construction – A Picture Is Worth 1,000 Words

Since the Federal Circuit’s 2008 decision in Egyptian Goddess, one of the most difficult issues in design patent law surrounds the question of claim construction. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc). In Egyptian Goddess, the Federal Circuit famously did away with the old “point of novelty” test, returning the ordinary observer test to its rightful place as the sole test for design patent infringement (prior analysis here). However, in a less noted portion of the Egyptian Goddess decision, the Federal Circuit opined on the issue of claim construction, stating 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 claim language.” Id.  The court reasoned that “a design is better represented by an illustration ‘than it could be by any description and a description would probably not be intelligible without the illustration.’”  Id. (quoting Dobson v. Dorman, 118 U.S. 10, 14 (1886)). 

The Federal Circuit lists three scenarios when a design patent claim construction might be helpful to a jury: 1) describing the role of particular conventions in design patent drafting, such as the role of broken lines; 2) assessing and describing the effect of any representations made in the course of the prosecution history; and 3) distinguishing between those features of the claimed design that are ornamental and those that are purely functional. Id. at 680 (citing OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed.Cir.1997) (“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”)). 

However, the majority of district courts have avoided a detailed verbal claim construction after Egyptian Goddess, opting instead to clarify design patent law through jury instructions instead.  See e.g. 180s, Inc. v. Gordini U.S.A., Inc., 699 F.Supp.2d 714 (D. Md. 2010) (construing design patent claims as “the figures included in the patent”); Dexas Int’l., Ltd. v. Office Max Inc., No. 6:07-cv-396, 2009 WL 252164, at *5 n.2 (E.D. Tex. Jan.30, 2009) (claim construction “would entail a significant risk that the jury would place undue emphasis on particular features of the claimed designs or otherwise focus on distinct features rather than on the designs as a whole”); DePaoli v. Daisy Manufacturing. Co., Inc., No. 07-cv-11778, 2009 WL 2145721, at *2 (D. Mass. July 14, 2009) (claim construction unduly risked overemphasizing specific design elements).  But see also Mag Inst., Inc. v. JS Prods., Inc., 595 F.Supp.2d 1102, 1108 (C.D. Cal. 2008) ("the Court, in the usual course of issuing a claim construction order, will construe the challenged claims to ‘identify the non-functional aspects of the design as shown in the patent.’”).

Recently, the District of Colorado joined the majority of district courts rejecting detailed verbal claim construction in design patent cases. In Yao-Hung Huang v. Marklyn Group, Inc., Huang accuses Marklyn of infringing U.S. Design Pat. No. 614,780 for a flexible attachment strip for attaching LEDs to the front grill or side mirrors of an automobile. See Yao-Hung Huang v. Marklyn Group, Inc., No. 11-cv-01765, 2012 WL 4856720 (D. Colo. Oct. 11, 2012). Marklyn proposed a detailed claim construction, including dimensions and ratios for the design. However, the court determined that a detailed verbal description would not be helpful to the jury, and therefore construed the claims as “[t]he ornamental design for a flexible attachment strip having a plurality of forward facing LEDs, as shown ad described.” Id. at *2. Notably, Judge Blackburn found that a detailed construction was not required to distinguish the ’780 patent from the prior art or to limit its scope to its non-functional elements. Instead, the court reserved those questions for a later date.

Naturally, defendants in design patent cases will prefer a detailed claim construction in order to focus discovery and position the case for summary judgment. But, defendants should be cautious not to seek more verbiage than would be helpful to a jury. Instead, defendants should narrowly tailor their proposed claim constructions to target one or two perceived weaknesses in the plaintiff’s case. Otherwise, federal judges are likely to opt out of claim construction altogether and reserve issues of functionality and prior art for summary judgment. 

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