Bernhardt L.L.C. v. Collezione Europa Usa, Inc., CIV. 101CV00957.
| Decision Date | 09 September 2003 |
| Docket Number | No. CIV. 101CV00957.,CIV. 101CV00957. |
| Citation | 280 F.Supp.2d 485 |
| Court | U.S. District Court — Middle District of North Carolina |
| Parties | BERNHARDT L.L.C., Plaintiff, v. COLLEZIONE EUROPA USA, INC., Defendant. |
H. Stephen Robinson, Norwood Robinson, Robinson & Lawing, Winston-Salem, NC, for plaintiffs/counter-defendants.
Teresa Raquel Robinson, Peter Joseph Juran, Blanco Tackabery Combs & Matamoros, P.A., Winston-Salem, NC, Nicholas Mesiti, Brett M. Hutton, Heslin Rothenberg Farley & Mesiti, P.C., Albany, NY, for defendants/counter-claimants.
This matter comes before the court following a bench trial which concluded on July 1, 2003. This is an action for design patent infringement between Plaintiff Bernhardt, L.L.C. ("Plaintiff") and Defendant Collezione Europa, USA, Inc. ("Collezione"). At trial the parties presented both witnesses and exhibits, as well as deposition testimony, for the court's consideration. After careful review of the exhibits and depositions, and after evaluating the testimony of witnesses by considering the witnesses' interest, if any, in the outcome of the case, the witnesses' demeanor, and the witnesses' opportunity to acquire knowledge of the facts about which they testified, and the extent to which the witnesses had been supported or contradicted by other credible evidence, the court makes the following findings of fact and conclusions of law pursuant to Rule 52(a), Federal Rules of Civil Procedure. Based on these findings and conclusions, the court will enter judgment for Defendant.
1. Plaintiff Bernhardt, L.L.C., is a limited liability company that owns the intellectual property rights used by other business units in the Bernhardt family of companies. Plaintiff licenses the patents in this action to Bernhardt Furniture Company ("Bernhardt"). Plaintiff and Bernhardt, a corporation, are commonly owned businesses created under the laws of the State of North Carolina with their headquarters and principal place of business in Lenoir, North Carolina.
2. Defendant Collezione is a New Jersey corporation with its principal place of business in Englewood, New Jersey. Collezione also has a factory and showroom located in High Point, North Carolina. Collezione is in the business of importing and selling furniture generally at a lower price than many others in the industry.
3. Plaintiff brought this action on October 19, 2001, alleging that Defendant Collezione infringed upon six of its patents which claim ornamental designs for individual pieces of furniture, namely United States Design Patent Nos. 441,980 ("the '980 patent"); 439,770 ("the '770 patent"); 441,975 ("the '975 patent"); 441,560 ("the '560 patent"); 438,727 ("the '727 patent"); and 439,763 ("the '763 patent") (collectively referred to as "the Patents in Suit").
4. Accused of infringing in this action are the Collezione B2200-500, -600, -660 poster beds; the D2200-100 side and end dining chairs; the D2200-2101B buffet; the D2200-2105 cabinet; and the D2200-4686 dining table. Collezione also showed and offered for sale a metal bed as part of the 2200 collection, but this piece was not subsequently put into production. Collezione denies that the pieces in its 2200 line of furniture infringe on the Patents in Suit.
5. Collezione first introduced its 2200 line of furniture that Plaintiff accuses of infringing the Patents in Suit during the April 2000 International Home Furnishings Market in High Point, North Carolina. At that time, none of the Patents in Suit had been issued by the Patent and Trademark Office ("PTO").
6. Collezione contends that the '980 patent, the '770 patent, the '975 patent, and the '560 patent are invalid because of the "public use" of these designs at Bernhardt's September 1999 "Pre-Market," showing more than one year before the filing dates of these patents.
7. A Markman hearing was held on April 22, 2003. Following this hearing, the court construed each patent's claim in an opinion filed on May 30, 2003.
8. The '980 patent was issued on May 15, 2001, from an application filed October 13, 2000. The patent names D. Scott Coley and Thomas M. McDaniel ("Coley and McDaniel") as inventors and Plaintiff as assignee. The '980 patent protects the ornamental design for a poster bed.
9. The '770 patent was issued on April 3, 2001, from an application filed October 10, 2000, and names Coley and McDaniel as inventors and Plaintiff as assignee. The '770 patent protects the ornamental design for a dining table.
10. The '975 patent was issued on May 15, 2001, from an application filed October 12, 2000, and names Coley and McDaniel as inventors and Plaintiff as assignee. The '975 patent protects the ornamental design for a dining chair.
11. The '727 patent was issued on March 13, 2001, from an application filed August 11, 2000, and names Coley and McDaniel as inventors and Plaintiff as assignee. The '727 patent protects the ornamental design for a buffet.
12. The '763 patent was issued on April 3, 2001, from an application filed July 13, 2000, and names Coley and McDaniel as inventors and Plaintiff as assignee. The '763 patent protects the ornamental design for a cabinet.
13. The '560 patent was issued on May 8, 2001, from an application filed October 13, 2000, and names Coley and McDaniel as inventors and Plaintiff as assignee. The '560 patent protects the ornamental design for a metal bed.
14. The furniture designs claimed by the Patents in Suit were created by Coley and McDaniel. In designing furniture, Coley and McDaniel research past furniture designs for inspiration. In introducing designs to Bernhardt, Coley and McDaniel prepare initial design sketches, seek the approval of these designs from Bernhardt, prepare color renderings of the sketches, and participate in the review of mock-ups and prototypes.
15. After the furniture designs are approved by Bernhardt, engineering drawings and mock-ups or samples of the furniture are made. On the engineering drawings, changes made to the furniture designs are listed in a title block.
16. Bernhardt participates in the International Home Furnishing Market ("Market") held in High Point, North Carolina, in April and October of each year.
17. A month before Market, Bernhardt showcases its new designs to its key customers and representatives from the newspaper Furniture Today during what it calls a "Pre-Market." Pre-Market is held at the same showroom where Market is held. Shortly before and during Pre-Market, Bernhardt prepares and maintains an invitation list of the customers and other people invited to Pre-Market.
18. In preparation for Pre-Market, Bernhardt also creates a document listing the furniture it wants to show at Pre-Market.
19. During Pre-Market, Bernhardt showcases its new designs, either in the form of mock-ups, prototypes, drawings, or other exemplars of furniture, in its High Point showroom to its customers. Only representative pieces, not the entire collection, are shown at Pre-Market and those that are shown may sometimes be different from the final designs ultimately introduced at Market.
20. Also during Pre-Market, Bernhardt collects comments from its customers concerning the furniture shown. These comments are included in a document prepared by Bernhardt's Senior Case-goods Designer, Linda McLean, entitled "Pre-Market Wrap-up."
21. Pre-Market is used by Bernhardt to demonstrate the concepts of the groups they are working on and to get an indication of how favorably its customers view the concept of the group shown. Bernhardt also uses Pre-Market to "bait the hook" for its customers in order to increase demand at Market.
22. Although the customers invited to Pre-Market can discuss general prices for the furniture shown with the sales representatives of Bernhardt in the showroom, firm prices are generally not known at that time.
23. To get into Pre-Market, a person must first present identification or be checked against a list of invitees while in the lobby of the building. He or she is then escorted through the building to the showroom by security. At the entrance to the showroom, the person's information is again checked. Then the person is met by a sale representative of Bernhardt and is escorted around the showroom. Customers are not allowed to take anything into the showroom or to take pictures.
24. Customers or newspaper representatives who attend Pre-Market are not required to sign a confidentiality agreement restricting disclosure of what they witnessed or learned at Pre-Market.
25. Bernhardt, as licensee of the Patents in Suit from Plaintiff, sells furniture embodying the designs of the Patents in Suit in its "Coronado Collection" of furniture.
26. Bernhardt assigns a "stock keeping unit" ("SKU") number to each of these designs. The first three digits of a SKU identify the group or collection (e.g., 355 for the Coronado Collection) and the last three digits identify the type of piece (e.g., a poster bed or an end chair). A SKU number is assigned to the designer's initial sketch of a piece early in the design process and it follows the design through all subsequent re-designs as long as it continues to be the same piece.
27. The bed design corresponding to the '980 patent was assigned SKUs 355-457, -458, -459. The table design corresponding to the '770 patent was originally assigned SKU 355-224 and later assigned SKUs 355-223(top) and -224 (base). The dining room chairs corresponding to the '975 patent were assigned SKUs 355-542 (side chair) and -541 (arm chair). The bed design corresponding to the '560 patent was assigned SKUs 355-467 and -469.
28. The Coronado Collection was shown by Bernhardt at the 1999 Market held in High Point, North Carolina, in October 1999.
29. The Coronado Collection was...
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Bernhardt, L.L.C. v. Collezione Europa Usa, Inc., 04-1024.
...that four of the design patents-in-suit were invalid for prior public use under 35 U.S.C. § 102(b) . Bernhardt L.L.C. v. Collezione Europa USA, Inc., 280 F.Supp.2d 485 (M.D.N.C.2003). Because the district court did not fully apply the proper tests for invalidity and infringement, we vacate......