Friday, November 21, 2014

Reddy v. Lowe’s Companies, Inc. – “As Shown and Described” means “As Shown”

In December, 2013, the Ordinary Observer initially reported on Reddy v. Lowe's Companies, Inc., (1:13-cv-13016), a case filed in the District of Massachusetts on November 25, 2013, concerning U.S. Design Patent No D677,423.  This week, Judge Young issued a memorandum in that case construing the claim of the D'423 Patent.  Judge Young's construction raises some questions as to the court's treatment of narrative elements of the claimed design which warrant further discussion.

The D'423 Patent is entitled "bathroom vanity light shade."  The left-hand image below shows two figures excerpted from the patent, Figures 1 and 2, which are fairly representative.  The right-hand image is a screen shot of what may be an accused device produced by the Defendants.

The claim of this patent is directed to "[t]he ornamental design for a bathroom vanity light shade, as shown and described."  The Court's present memorandum has little to say about what is shown.  It principally concerns what is described.

The specification of the D'423 Patent includes a brief narrative:
The bathroom vanity light shade is an ornamental fixture consisting of a rectangular, metal rod skeleton, wrapped in fabric on three sides (front side, left side, right side), with a stationary acrylic diffuser bottom. The bathroom vanity light shade mounts on the wall with top/back exposed mounting rod.
Virtually nothing recited in the narrative can be visually seen in the patent figures.  The shading applied to four of the sides indicates those surfaces are intended to be transparent, but there is no visible evidence of the so-called rod skeleton, or specific imagery distinguishing fabric and acrylic sides.

This sort of narrative description is unusual but generally not impermissible.  Patent & Trademark Office regulations state, "No description, other than a reference to the drawing, is ordinarily required."  (37 C.F.R. § 1.153(a)).  "However, while not required, such a description is not prohibited and may be incorporated, at applicant’s option, into the specification or may be provided in a separate paper." (M.P.E.P. § 1503.01).   An examiner can object to the inclusion of descriptive statements which are unclear or inaccurate, but absent a proper objection, the PTO will generally permit an applicant to incorporate descriptive statements into the claim by adding the words "and described" after "shown" in the traditional claim language, “The ornamental design for (the article which embodies the design or to which it is applied) as shown.”  (Id.).  The patent in this case claims "[t]he ornamental design for a bathroom vanity light shade, as shown and described."

Judge Young's approach represents a substantial diversion from PTO practices.  He concludes that design patents operate under a "figure-only" framework, where:
any written description that goes beyond the scope of the figures would be unprotected by the patent, and thus ought not be part of the construed claim.  Thus, the references to "wrapped in fabric" and an "acrylic diffuser bottom," since they are not shown in the figures, would stretch beyond the patent.
Judge Young proposes that regulations allow only "written descriptions that clarify features on an existing drawn figure" and not "written descriptions that add new features not present on the figure."  Because "fabric side" and "acrylic diffuser bottom" may be viewed as added features, Judge Young contends these statements are best viewed as a "preferred embodiment," though he admits, "they probably ought not have been included when the patent was issued."

The defendants also argued that the patentee was estopped from arguing the acrylic diffuser and fabric sides were not limitations on the claims based on statements made by the patentee during the prosecution of the patent.  Judge Young rejected this argument, finding the prosecution history subject to multiple interpretations and therefore not a clear disavowal of claim scope.

Judge Young's construction in this case is difficult to square with PTO regulations allowing descriptive  statements in the specification of design patents to "supplement the drawing disclosure to define the scope of protection sought by the claim."  (M.P.E.P. § 1504.04).  While the Judge correctly places a strong emphasis on the figures as the best description of the claimed invention, effectively ignoring narrative statements in the written description of a design patent is relatively unprecedented.  The court draws a distinction between narrative statements that clarify, such as those that disclaim broken lines appearing in the drawings, and those that add new features, but the line between the two is muddy.  If a patentee may use words to disclaim broken lines, why then, can a patentee not use descriptive statements to disclaim materials which do not form part of the claimed invention (i.e., materials except acrylic and fabric)? 

This is not likely a case where claim construction is effectively determinant.  Judge Young's construction is expressly without prejudice to future jury instructions or other grounds of invalidity and non-enforceability.  Furthermore, while the patentee has obtained a construction which likely help their arguments in favor of infringement, for the purpose of invalidity, the plaintiff faces the prospect of defending as novel and non-obvious a light shade in the shape of a rectangular box having four sides and two open sides.

We will be on the look out for future developments in this case.

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