Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., Inc.

• Citation: 48 USPQ2d 1767,162 F.3d 1113
• Decision Date: 10 November 1998
• Docket Number: Nos. 97-1199,97-1223,s. 97-1199
• Parties: The GOODYEAR TIRE & RUBBER COMPANY, Plaintiff-Appellant, v. The HERCULES TIRE & RUBBER COMPANY, INC., Defendant Cross-Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1113

162 F.3d 1113

The GOODYEAR TIRE & RUBBER COMPANY, Plaintiff-Appellant, v. The HERCULES TIRE & RUBBER COMPANY, INC., Defendant Cross-Appellant.

Nos. 97-1199, 97-1223.

United States Court of Appeals, Federal Circuit.

Nov. 10, 1998.

Charles B. Park, III, Bell, Seltzer, Park, & Gibson, Charlotte, North Carolina, argued for plaintiff-appellant. With him on the brief were Dickson M. Lupo and Bruce J. Rose.

Marshall A. Bennett, Jr., Marshall & Melhorn, Toledo, Ohio, argued for defendant cross-appellant. With him on the brief was Donald A. Schurr. Also on the brief was Richard M. Kerger, Kerger & Kerger, Toledo, Ohio. Of counsel was Steven J. Funk, Marshall & Melhorn.

Before NEWMAN, PLAGER, and SCHALL, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

The Goodyear Tire & Rubber Company appeals the decision of the United States District Court for the Northern District of Ohio, holding that the "Power Trac" retread design of the Hercules Tire & Rubber Company does not infringe Goodyear's United States Design Patent No. 349,080 (the '080 patent). ¹ Hercules cross appeals the district

court's determination that the '080 patent is not unenforceable for inequitable conduct. We affirm the decisions of the district court.

BACKGROUND

Goodyear's '080 patent, inventor Robert P. Loser, is for a design of a tire tread, as illustrated in Fig. 4 of the '080 patent:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Hercules makes a tire retread that it calls the Power Trac, of the following design:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Upon Goodyear's suit for patent infringement, Hercules raised the defenses of noninfringement, invalidity, and unenforceability. The district court determined that Goodyear had not proven infringement, either literal or under the doctrine of equivalents, and that Hercules had not proven that the '080 patent was invalid or unenforceable. Only the issues of noninfringement and enforceability are appealed.

Goodyear states that the district court erred in its claim construction and its infringement

analysis. Goodyear refers to the five years of design work, testing, and development that led to this highly successful new tire, having the model designation G362. Goodyear complains that Hercules, by making what Goodyear describes as minor changes in insubstantial aspects of the design, could reap the benefits of that work and rapidly enter this market without development cost. Hercules' witnesses readily conceded that their purpose was to emulate the basic appearance of the Goodyear G362 tire, albeit while avoiding infringement.

I CLAIM CONSTRUCTION

Goodyear states that the district court failed to "pronounce the meaning of the claim" of the '080 patent, citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 981, 34 USPQ2d 1321, 1331 (Fed.Cir.1995) (in banc) ("When, after considering the extrinsic evidence, the court finally arrives at an understanding of the language as used in the patent and prosecution history, the court must then pronounce as a matter of law the meaning of that language."), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461 (1996), and this court's ruling in Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577, 36 USPQ2d 1417, 1420 (Fed.Cir.1995) that Markman applies to design patents as well as utility patents.

The requirement that the court construe disputed claim language, as applied to design patents, must be adapted to the practice that a patented design is claimed as shown in its drawing. There is usually no description of the design in words:

37 C.F.R. § 1.153(a). The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.

The formal claim of the '080 patent is as follows:

The ornamental design for a tire tread, as shown and described. The drawing of the patent is depicted in six Figures, which show perspective, elevation, and fragmentary views of the two embodiments of the tread design. During prosecution, at the examiner's suggestion, text was added to the '080 patent to state that the "tread pattern is understood to be repeated uniformly throughout the circumference of both embodiments of the tire tread, and the broken line showing of the tire sidewall in all views of the drawing is for illustrative purposes only and forms no part of the design claimed." No other words describe the design.

The error in claim construction that Goodyear ascribes to the district court concerns the word "tire." Goodyear states that the district court erroneously construed "tire" as meaning truck tire. Goodyear states that "tire" is correctly construed as meaning any kind of tire, for the '080 patent makes no mention of any particular kind of tire or otherwise limits the use of the tire tread design. Goodyear states that by construing the word "tire" as meaning truck tire, the court erroneously selected a purchaser of truck tires as the "ordinary observer" from whose viewpoint infringement is determined. Goodyear argues that a purchaser of tires in general is a less discriminating and thus more ordinary observer than a purchaser of truck tires, and that the district court was led, by this error in claim construction, into the erroneous finding of non-infringement.

We agree that the '080 patent is not limited to truck tires, for there is no such limitation on the face of the patent, or arising from the prosecution history. However, it is not a matter of claim construction to determine the qualifications of the observer through whose eyes infringement is determined. As we shall discuss, deception concerning the patented design is determined from the viewpoint of the person who is the ordinary purchaser of the article charged to be an infringement.

II INFRINGEMENT

Infringement of a design patent is the unauthorized manufacture, use, or sale of 35 U.S.C. § 289. Additional remedy for infringement.

the article embodying the patented design or any colorable imitation thereof:

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner....

In providing for infringement by "colorable imitation," the statute recognizes that minor changes in a design are often readily made without changing its overall appearance. The measure of infringement of a design patent is deception of the ordinary observer, when such person gives the design the attention usually given by a purchaser of the item bearing the design:

We hold, therefore, that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.

Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528, 20 L.Ed. 731 (1871). Differences in the design are relevant, as well as similarities, in determining whether such person would be deceived. FMC Corp. v. Hennessy Industries, Inc., 836 F.2d 521, 527-28, 5 USPQ2d 1272, 1277 (Fed.Cir.1987).

The district court found that the ordinary observer of the accused tire tread was a prospective purchaser of truck tires, that is, a trucker or fleet operator. Goodyear argues that it was incorrect to select a purchaser of truck tires as the ordinary observer, when the patent is not limited to truck tires. Goodyear states that this error occurred because the court used Goodyear's commercial embodiment as the basis for defining the ordinary observer, and that the patent is not limited to any particular commercial embodiment.

Indeed, the district court did give weight to the fact that both the accused tire and Goodyear's commercial embodiment are truck tires. The court explained that if the '080 design were used more broadly than on truck tires, the court would have considered a broader definition of the ordinary purchaser. We discern no clear error in the district court's reasoning, for it would have sufficed to have considered only the actual use of the accused infringing tread as the field of purchase by the ordinary observer. Gorham counsels against measuring the similarity of designs from the viewpoint of experts in design ("Experts, therefore, are not the persons to be deceived."). 81 U.S. (14 Wall.) at 528. Rather, Gorham states, the similarity of designs should be measured through

the eyes of men generally, of observers of ordinary acuteness, bringing to the examination of the article upon which the design has been placed that degree of observation which men of ordinary intelligence give. It is persons of the latter class who are the principal purchasers of the articles to which designs have given novel appearances, and if they are misled, and induced to purchase what is not the article they supposed it to be, ... that advantage of a market which the patent was granted to secure is destroyed.

Id. The standard is whether such a purchaser would be misled, by the design similarity imparted to the article by the copier, to think that it is the patentee's design that is being purchased. Thus the focus is on the actual product that is presented for purchase, and the ordinary purchaser of that product. The accused tire, the Hercules Power Trac, is a truck tire. The district court correctly invoked the ordinary trucker or fleet operator who purchases truck tires, as the person from whose viewpoint deceptive similarity to the '080 design is determined.

The...