McIntire v. Sunrise Specialty Co.

• Decision Date: 07 May 2013
• Docket Number: No. CIV. S–11–2495 LKK/CKD.,CIV. S–11–2495 LKK/CKD.
• Citation: 944 F.Supp.2d 933
• Parties: Bryan C. McINTIRE, an individual, Plaintiff, v. SUNRISE SPECIALTY COMPANY, a California corporation, Defendant.
• Court: U.S. District Court — Eastern District of California

944 F.Supp.2d 933

Bryan C. McINTIRE, an individual, Plaintiff,

v.SUNRISE SPECIALTY COMPANY, a California corporation, Defendant.

No. CIV. S–11–2495 LKK/CKD.

United States District Court, E.D. California.

May 7, 2013.

Edward Jerome Wright, Jr., Loren Leslie Lunsford, Martensen Wright PC, Sacramento, CA, for Plaintiff.

Kenton J. Klassen, Dowling Aaron Incorporated, Fresno, CA, Ralph M. Martin, PHV, Patent Law Offices Of Rick Martin, P.C., Longmont, CO, Ronnie Fischer, PHV, Fischer Law Firm, P.C., Denver, CO, for Defendant.

ORDER

LAWRENCE K. KARLTON, Senior District Judge.

Plaintiff Bryan C. McIntire alleges that defendant Sunrise Specialty Co. infringed his toilet bowl design patent.¹ Plaintiff now moves for summary judgment on the ground that no reasonable juror could fail to find that defendant's bowl infringes his design. Defendant cross-moves for summary judgment on the ground that no reasonable juror could find that its bowl infringes plaintiff's patented design.

For the reasons that follow, the court concludes that under the applicable infringement and summary judgment standards, no reasonable juror could find infringement here. Plaintiff limited the scope of his patent to the drawings of the patent, and defendant's bowl does not embody those drawings. Accordingly, defendant's motion for summary judgment will be granted, and plaintiff's will be denied.

I. BACKGROUNDA. Facts Leading to the Alleged Infringement.²

Plaintiff Bryan C. McIntire is the owner and operator of Mac the Antique Plumber, a wholesale and retail seller of antique plumbing fixtures, including toilet bowls. [Proposed] Statement of Uncontroverted Facts in Support of Plaintiff Bryan C. McIntire's Motion for Summary Judgment (“PSUF”) (ECF No. 50–2) ¶ 1. Plaintiff submitted a toilet bowl design to the U.S. Patent and Trademark Office, and on December 26, 2006, he was issued Design Patent No. D524,254 (the “'D254 Patent” or the “claimed design”). PSUF ¶ 5; See Complaint (ECF No. 1), Exh. A (Patent and Drawings).

Thereafter, plaintiff McIntire sold toilet bowls embodying the design of the ' D254 Patent to defendant Sunrise. PSUF ¶¶ 12 & 13. Defendant Sunrise then sold those bowls to its customers. PSUF ¶ 13. Plaintiff also sold to defendant, however, bowls that did not include the beads around the rim, but that otherwise were the same as those embodying the 'D254 Patent. PSUF ¶ 13.

Robert Weinstein is the President of defendant Sunrise. Defendant Sunrise Specialty Company's Statement OF Uncontroverted Facts (“DSUF”) (ECF No. 52) ¶ 1. In 2009, Weinstein showed plaintiff McIntire a toilet bowl that Weinstein said had been manufactured in China. Declaration of Plaintiff Bryan C. McIntire in Support of Motion for Summary Judgment (ECF No. 50–3) (“B. McIntire Decl.”) ¶ 11.³ Weinstein advised McIntire that he had sent one of plaintiff McIntire's bowls to a manufacturer in China to see if it could make a sample, and that the bowl Weinstein showed to McIntire was the result. B. McIntire Decl. ¶ 11. McIntire told defendant Weinstein that McIntire's design was protected by a patent, a fact that Weinstein acknowledged. B. McIntire Decl. ¶ 12.

Several months after these events, defendant stopped ordering bowls from plaintiff, with its last order being dated June 30, 2008. PSUF ¶¶ 20–21. The bowls from that last order were shipped to defendant on or about February 12, 2009.⁴ PSUF ¶ 21. However, in or around October 2010, a new Sunrise catalogue featured the same pictures of the bowls that had been used when McIntire was supplying the bowls to Sunrise between 2006 and 2009. PSUF ¶ 23.⁵

B. The 'D254 Patent.

This court has construed plaintiff's design patent as follows:

The ornamental design for a toilet bowl, as shown and described by U.S. Patent D534,254 S, and its seven (7) included drawings.

ECF No. 46 (claim construction). The patent drawings are attached to this Order as Exhibit A. The 'D254 Patent contains several design features which, in the court's determination, are integral to the overall design of the claimed patent, as discussed below. These features can be seen clearly from the patent drawings themselves.⁶

i. The beads.

The 'D254 Patent contains a prominent and distinctive row of beads that nearly encircles the bowl just beneath the rim, and ends just before the plumbing opening in the back. Complaint, Exh. A (ECF No. 1) (“'D254 Patent”); see DSUF ¶ 13. These beads, which sit atop and are highlighted by an underlining bar, are prominently displayed in six out of the seven patent drawings. See 'D254 Patent at 9–11 (Figs. 1–5, 7).⁷

ii. The stepped-down pedestal.

The claimed design includes a stepped-down, key-shaped pedestal, upon which the rest of the toilet bowl sits. 'D254 Patent; see DSUF ¶ 7. The stepped-down feature of the design is clearly depicted in five of the seven patent drawings. See 'D254 Patent at 9–10 (Figs.1–5).⁸

iii. The “Adam's Apple.”

The “throat” of the claimed design—the column that extends from the beads to the pedestal when the bowl is viewed head-on—contains an “Adam's Apple,” a bulge that protrudes prominently from the top of the throat. 'D254 Patent; DSUF ¶ 8. The Adam's Apple is so prominent that it is visible beyond the rim of the toilet in five of the seven drawings, even when the rim or the pedestal hides the rest of the throat (in the “top plan view” or the “bottom plan view”). See 'D254 Patent at 9–11 (Figs. 1–3, 6 & 7); ⁹ DSUF ¶ 8.

iv. The throat.

The 'D254's throat itself has vertical sides (excluding its rounded top), when viewed head-on. 'D254 Patent. That is, when it is viewed head-on, there is no visible bulge in the throat and the sides are not angled. See 'D254 at 10 (Fig. 4). The throat is prominently depicted in four of the seven drawings, although its vertical sides can only be identified from the head-on view. See 'D254 at 9–10 (Figs.1–4).

C. The Accused Toilet Bowl.

The accused bowl is called the “Sunrise Bowl.” DSUF ¶ 4. It is undisputed that Sunrise has sold these bowls to its customers, without plaintiff's consent. PSUF ¶ 22; Def. Resp. to PSUF ¶ 22. There are several undisputed design differences between the claimed design and the accused bowl. The accused bowl does not have beads on the rim on top of the bowl, as does the claimed design. DSUF ¶ 6. The accused bowl does not have a pedestal with a stepped descent, which the patented bowl does. DSUF ¶ 7. The Adam's Apple of the accused bowl's throat does not extend beyond the top circle of the bowl (when viewed from above), which the Adam's Apple of the patented bowl does. DSUF ¶ 8.¹⁰

II. STANDARDSA. Infringement.

A design patent is infringed if “the patented design, or any colorable imitation thereof,” is applied to “any article of manufacture for the purpose of sale.” 35 U.S.C. § 289. Thus, “a design patent is infringed by the ‘unauthorized manufacture, use, or sale of the article embodying the patented design or any colorable imitation thereof.’ ” Arminak and Associates, Inc. v. Saint–Gobain Calmar, Inc., 501 F.3d 1314, 1319 (Fed.Cir.2007), cert. denied,553 U.S. 1102, 128 S.Ct. 2906, 171 L.Ed.2d 858 (2008), quoting Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1116–17 (Fed.Cir.1998).¹¹ The statute's use of the term “colorable imitation” recognizes that “minor changes in a design are often readily made without changing its overall appearance.” Goodyear at 162 F.3d. at 1117.

Obviously, the claimed design does not cover the universe of designs that remotely resemble it. Rather, as an initial matter, a design patentee limits the scope of his patent by including features that give the overall design a distinctive ornamental appearance. See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed.Cir.1995) (patentee included in its drawings certain features that gave the design “a distinct ornamental appearance,” and “thus effectively limited the scope of its patent claim by including those features in it”). Thus, the initial step in any comparison of designs is a determination of whether the accused bowl is even within the limitation on scope that the patentee has imposed, through his patent drawings.

If the patentee's limitations on his patent do not plainly exclude the accused bowl, however, the infringement inquiry then requires the fact-finder to compare the whole of the claimed design “to the design of the accused device.” OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404 (Fed.Cir.1997). The comparison “requires the fact-finder to determine whether the patented design as a whole is substantially similar in appearance to the accused bowl.” Id., at 1405;Hall v. Bed Bath & Beyond, Inc., 705 F.3d 1357, 1363 (Fed.Cir.2013) (“infringement of a design patent is based on the design as a whole”).

In making this comparison, the fact-finder puts itself into the place of an “ordinary observer.” Hall, 705 F.3d at 1363. The “ordinary observer” is not an expert; he is an observer “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.” Gorham Mfg. Co. v. White, 81 U.S. 511, 528, 14 Wall. 511, 20 L.Ed. 731 (1871); Arminak, 501 F.3d at 1324 (the “ordinary observer” is the purchaser of the item displaying the claimed design). However, he must not be too ordinary; rather he must be “familiar with the prior art designs.” Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295 (Fed.Cir.2010).

The designs are “substantially similar” if, viewing the overall appearance of the designs, an “ordinary observer”

would be deceived by the similarity between the claimed and accused bowls, “inducing him to purchase one supposing it to be the other.”

Egyptian Goddess, 543 F.3d at 683,quoting Gorham, 81 U.S. at 528;¹²OddzOn Products, 122 F.3d at 1405 (“There can be no infringement based on the similarity of specific features if the overall appearance of the designs are dissimilar”); Richardson, 597 F.3d at 1295 (...