Reddy v. Lowe's Cos.

• Decision Date: 18 November 2014
• Docket Number: Civil Action No. 13–13016–JLT.
• Citation: 60 F.Supp.3d 249
• Court: U.S. District Court — District of Massachusetts
• Parties: Maureen REDDY, Plaintiff, v. LOWE'S COMPANIES, INC. and Evolution Lighting, LLC, Defendants.

60 F.Supp.3d 249

Maureen REDDY, Plaintiff

v.LOWE'S COMPANIES, INC. and Evolution Lighting, LLC, Defendants.

Civil Action No. 13–13016–JLT.

United States District Court, D. Massachusetts.

Signed Nov. 18, 2014.

Eve Brown, Suffolk University Intellectual Property Clinic, Boston, MA, for Plaintiff.

Michael C. Cesarano, Feldman Gale PA, Miami, FL, Amanda S. Adams, Leonard C. Suchyta, Michael A. Oakes, Ozzie A. Farres, Steven L. Wood, Hunton & Williams LLP, Washington, DC, for Defendants.

MEMORANDUM

YOUNG, District Judge.

I. INTRODUCTION

This Markman memorandum explains this Court's construction of design patent D677,423 (the “'423 patent”) which claims an “ornamental design for a bathroom vanity light shade.” U.S. Patent No. D677,423 (filed Mar. 8, 2012). Compl., Ex. A, ECF No. 1–2. On June 4, 2014, at a Markman hearing, this Court, acting on behalf of Judge Tauro to whom this case was originally drawn, orally construed the patent at bar. Pursuant to the Court's internal procedures, the case was subsequently transferred to Judge Talwani for all further proceedings. This memorandum details the Court's reasoning.

A. Procedural History

The plaintiff, Maureen Reddy (“Reddy”), brings suit against Lowe's Companies, Inc. and Evolution Lighting, LLC (collectively, the “Defendants”), accusing the Defendants of infringing her design patent. Compl. 6. The parties filed preliminary claim construction briefs on April 30, 2014. Defs.' Br. Claim Construction (“Defs.' Opening Br.”), ECF No. 29; Pl.'s Opening Claim Construction Br. (“Pl.'s Opening Br.”), ECF No. 31. The Defendants replied on May 16, 2014. Defs.' Reply Pl.'s Br. Claim Construction (“Defs.' Reply”), ECF No. 37. Reddy filed her reply brief on May 29, 2014. Pl.'s Reply Defs.' Br. Claim Construction (“Pl.'s Reply”), ECF No. 38.

This Court held a Markman hearing on June 4, 2014, at which time it adopted the claim construction discussed in this memorandum. See Elec. Clerk's Notes, June 4, 2014, ECF No. 42. The next day, June 5, 2014, this case was transferred to Judge Talwani's session of the Court. Elec. Notice, June 5, 2014, ECF No. 41. Following the Markman hearing and the reassignment, the parties continued to litigate the case in Judge Talwani's session and scheduled a trial for November 3, 2014. Set/Reset Scheduling Order Deadlines, ECF No. 64.

B. Patent Description

The '423 patent, entitled “Bathroom Vanity Light Shade,” claims an “ornamental design for a bathroom vanity light shade, as shown and described” in five attached figures. '423 Patent. The '423 patent contains brief descriptions of each of the five figures, which mainly serve to identify the perspective from which the figures are drawn (e.g., “FIG 1 is a front perspective view from below of a bathroom vanity light shade showing my new design”). Id. Below the descriptions of the individual figures is a general description of the invention, which reads as follows:

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 a top/back exposed mounting rod.

Id.

II. ANALYSIS

A. Defining Design Patents

Under United States patent laws, inventors may claim two different types of patents: utility patents, which cover “new and useful” inventions, 35 U.S.C. § 101, and design patents, which apply to “new, original and ornamental design[s] for an article of manufacture,” 35 U.S.C. § 171. See also, e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1238 (Fed.Cir.2009) (contrasting requirements for utility patents versus design patents). Befitting their different names, design patents “contemplate not so much utility as appearance,” Gorham Mfg. Co. v. White, 81 U.S. 511, 524, 14 Wall. 511, 20 L.Ed. 731 (1871), and as such, the patent's focus on aesthetic impression is somewhat akin to copyright protection for works of art. See Mazer v. Stein, 347 U.S. 201, 218, 74 S.Ct. 460, 98 L.Ed. 630 (1954).

Accordingly, the scope of a design patent varies from that of a utility patent: it is the form of the object that is claimed, not the object itself. “In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself.”

Manual of Patent Examining Procedure (“MPEP”) (9th ed. Rev. Mar. 2014) § 1502 (citing Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm'r Pat.1916) ). “The design for an article consists of the visual characteristics or aspect displayed by the article. It is the appearance presented by the article which creates an impression through the eye upon the mind of the observer.” Id. § 1502, ¶ 15.42. Only the ornamental aspects of the design are protected: any functional elements are beyond the scope of the patent. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293–94 (Fed.Cir.2010).

Design patents differ in scope from utility patents across several key distinctions.¹ First, the design patent's focus is on its figures, not its text, and “[n]o [written] description, other than a reference to the drawing, is ordinarily required.” 37 C.F.R. § 1.153(a) ; see also MPEP § 1503.01, ¶ 15.05(II) (“No description of the design in the specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description.” (citing In re Freeman, 23 App.D.C. 226 (App.D.C.1904) )). Thus, while the metes and bounds of a utility patent are established by the language of its claims, the metes and bounds for a design patent are established by its figures.See Rebecca Tushnet, The Eye Alone is the Judge: Images and Design Patents, 19 J. Intell. Prop. L. 409, 409–10 (2012) (“The law requires a ‘written description’ of patent claims, but the drawing is the written description for design patents.”). Second, unlike utility patents, design patents are limited to only a single claim. 37 C.F.R. § 1.153(a) (“More than one claim is neither required nor permitted.”). Finally, the design patent drawings themselves are subject to relatively stringent technical requirements. See 37 C.F.R. § 1.152 ; MPEP § 1503.02.

B. Design Patent Claim Construction

As with utility patents, design patents are subject to claim construction by the court pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed.Cir.2008) (en banc), the Federal Circuit established the principles a district court must employ when it so constructs. This decision controls the instant case and as such, the Court will consider in depth both it and its progeny.

1. The Egyptian Goddess Framework

The Federal Circuit starts with the premise that the district court has considerable discretion in constructing design patents, and as such, the Federal Circuit does not “prescribe[ ] any particular form that the claim construction must take,” but rather “recognize[s] that design patents typically are claimed as shown in drawings, and that that claim construction is adapted accordingly.” Id. at 679 (internal citations and quotation marks omitted). Accordingly, the district court is not required to “attempt to provide a detailed verbal description of the claimed design.” Id. Instead, “[g]iven the recognized difficulties entailed in trying to describe a design in words, 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 claimed design.” Id.

The Federal Circuit clarified its “preferable course” language, concluding that a verbal description could be attempted, but warning in relatively strong terms that such an endeavor is inadvisable:

[I]t is important to emphasize that a district court's decision regarding the level of detail to be used in describing the claimed design is a matter within the court's discretion, and absent a showing of prejudice, the court's decision to issue a relatively detailed claim construction will not be reversible error. At the same time, it should be clear that the court is not obligated to issue a detailed verbal description of the design if it does not regard verbal elaboration as necessary or helpful. In addition, in deciding whether to attempt a verbal description of the claimed design, the court should recognize the risks entailed in such a description, such as the risk of placing undue emphasis on particular features of the design and the risk that a finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole. In this case, for example, the district court came up with a detailed verbal description of the claimed design. We see no inaccuracy in the court's description, and neither party has pointed to any prejudice resulting from the court's interpretation. Yet it is not clear that the considerable effort needed to fashion the verbal description contributed enough to the process of analyzing the case to justify the effort.

Id. at 679–80.

Notwithstanding this warning, the trial court does not abdicate all interpretative responsibilities when faced with a design patent. Rather:

[A] trial court can usefully guide the finder of fact by addressing a number of other issues that bear on the scope of the claim. Those include such matters as describing the role of particular conventions in design patent drafting, such as the role of broken lines; assessing and describing the effect of any representations that may have been made in the course of the prosecution history; and distinguishing between those features of the claimed design that are ornamental and those that are purely functional.

Id. at 680 (internal citations omitted). The district court also could play a role in highlighting for the fact finder ...