Static Media LLC v. Leader Assocs. LLC
| Decision Date | 30 August 2019 |
| Docket Number | 18-cv-330-wmc |
| Citation | 395 F.Supp.3d 982 |
| Parties | STATIC MEDIA LLC, Plaintiff, v. LEADER ASSOCIATES LLC, Defendant. |
| Court | U.S. District Court — Western District of Wisconsin |
Elijah Byrnes Van Camp, Harry E. Van Camp, DeWitt LLP, Madison, WI, Vincent Bushnell, FisherBroyles, LLP, Atlanta, GA, for Plaintiff.
Jen-Feng Lee, LT Pacific Law Group LLP, Industry, CA, Michael J. Modl, Axley Brynelson, LLP, Madison, WI, Rodney W. Kimes, Bolgrien, Koepke & Kimes, S.C., Beloit, WI, for Defendant.
Plaintiff Static Media LLC, the owner of a design patent for a stadium seat, accuses defendant Leader Associates LLC of patent infringement. Before the court is defendant's motion for summary judgment, seeking judgment in its favor on grounds of indefiniteness or noninfringement. (Dkt. #28.) For the reasons that follow, the court will deny defendant's motion as to invalidity based on indefiniteness, but will grant the motion as to defendant's infringement challenge.1
Plaintiff Static Media LLC is the owner of the patent in suit. Anthony DoVale is its managing member. DoVale is an attorney specializing in intellectual properly law, including the prosecution of patents. Defendant Leader Associates LLC is based in Beloit, Wisconsin, and advertised, distributed, offered for sale and sold the accused product, sold as the "Leaser Accessories Wide Padded Folding Stadium Chair."
On November 5, 2016, the United States Patent and Trademark Office issued U.S. Patent No. D771,400 (the " 'D400 patent") to DoVale. DoVale is the sole inventor named on the patent, and claims to have personally invented, designed and conceived of the stadium chair disclosed in the patent. The patent claims "[t]he ornamental design for the stadium seat, as shown and described below." (Compl., Ex. 1 (dkt. #1-1) 2.) The patent contains eight figures of the stadium seat from various perspectives, which are displayed below, and perhaps most distinguished by its clean lines and simple design. Figures 1 and 2 show the seat from left and right perspectives :
Figure 3 shows the chair from the front view and Figure 5 from the rear view :
Figures 4 and 7 show the left and right side elevational view :
Figure 6 displays the top view and Figure 8 displays the bottom view :
C. Assignment and License
DoVale assigned all rights, title and interest in the 'D400 patent to Static Media on September 10, 2017. With DoVale's consent and authorization, Static Media entered into a license agreement with Belnick, Inc., granting Belnick an exclusive license to make, use and sell any product incorporating or embodying the 'D400 patent. Belnick manufactured stadium chairs incorporating the design disclosure in the 'D400 patent, and it has sold thousands of such chairs, including through websites such as Amazon.com.
D. Accused Infringing Product
Via its expert, defendant submits photographs of the accused infringing product, taken from similar perspectives as in the figures in the 'D400 patent:
(Kemnitzer Non-Infringement Rept. (dkt. #34) ¶¶ 51-74.)
E. Prior Art References
In his report, defendant's expert also identified a wide assortment of prior design patents for stadium seats, including references cited by the examiner in the 'D400 application, which are marked with an asterisk:
(Kemnitzer Non-Infringement Rept. (dkt. #34) ¶¶ 32.)
OPINION"The federal patent laws have long permitted those who invent designs for manufactured articles to patent their designs." Samsung Elecs. Co. v. Apple Inc. , ––– U.S. ––––, 137 S. Ct. 429, 432, 196 L.Ed.2d 363 (2016) (citing Patent Act of 1842, § 3, 5 Stat. 543–544). Under 35 U.S.C. § 171(a), patent protection is available for a "new, original and ornamental design for an article of manufacture." To be "ornamental," and thus qualify for protection, "a design must present an aesthetically pleasing appearance that is not dictated by function alone, and must satisfy the other criteria of patentability." Bonito Boats, Inc. v. Thunder Craft Boats, Inc. , 489 U.S. 141, 148, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989).
While the patent at issue is one of design rather than utility, that does not begin to excuse the nature of the parties' submissions to this court. For starters, defendant's briefing reads like an outline or suggestion of possible arguments, with little discussion of the law and only minimal analysis.3 While plaintiff's brief is heavy on the law, it, too, is devoid of analysis, making almost no effort to apply that law to the design patent and alleged infringing product at issue. Moreover, neither party sought any construction as to the essential, ornamental components of the patent's design, nor did plaintiff secure expert testimony. Even accounting for the fact that the role of claims construction in design patent cases is more limited, the parties could at minimum have sought construction of the functional aspects versus ornamental elements of the patent. See Egyptian Goddess, Inc. v. Swisa, Inc. , 543 F.3d 665, 680 (Fed. Cir. 2008) ().
While it is ultimately plaintiff's burden to demonstrate infringement and, as part of that, to identify the ornamental aspects of the design warranting patent infringement, in moving for summary judgment, the defendant might at minimum have sharpened the areas of dispute with regard to invalidity on which it bears a higher burden of proof.4 With those initial comments aside, the court turns to defendant's purported bases for an award of summary judgment in its favor: (1) invalidity due to indefiniteness; and (2) non-infringement.
Rather than challenging the design patent on novelty or obviousness grounds, defendant raises a challenge based on indefiniteness, pointing to alleged discrepancies between the drawings (or the patent licensee's description of the drawings) and the description provide by the inventor himself. Defendant argues that the drawings show a "segmented" line, directing the court to a drawing in its expert's report for support:
(Kemnitzer Invalidity Rept. (dkt. #33) ¶ 43.) Defendant also points to testimony of the patent licensee that the seat back in Figure 3 is not a straight line. In contrast, the inventor Anthony DoVale testified at his deposition that the line is straight. ( [. ).)
Putting aside whether the drawings actually show a straight line or not, defendant's argument undermines a finding of indefiniteness. In its brief, defendant contends that "[t]he disclosures in the '400 Patent show the bottom of the seat back portion to be a segmented line, as can be plainly seen in ALL the figures in '400 Patent that show this attribute: Figs. 1, 2, 3, and 5." (Def.'s Opening Br. (dkt. #29) 12.) For a design patent to be invalid for indefiniteness, however, there must be "internally inconsistent drawings" that "preclude the overall understanding of the drawing as a whole." In re Maatita , 900 F.3d 1369, 1375 (Fed. Cir. 2018) (emphasis added).
Here, defendant actually contends that there are no inconsistencies between the drawings, but rather an inconsistency between the design drawing and the inventor's later deposition testimony. As such, the public is on notice of the scope of the disclosure, and the patent does not fall within a "zone of uncertainty," at least based on this argument. Nautilus v. Biosig , 572 U.S. 898, 909-10, 134 S.Ct. 2120, 189 L.Ed.2d 37 (2014). Said another way, to the extent defendant contends that DoVale's deposition testimony creates uncertainty, the argument fails because "the testimony of an inventor cannot be relied on to change the meaning of the claims." Howmedica Osteonics Corp. v. Wright Med. Tech., Inc. , 540 F.3d 1337, 1346 (Fed. Cir. 2008) (citations omitted). Indeed, defendant could hardly be further from proving invalidity, much less proving it "by clear evidence." Accordingly, the court will deny defendant's motion for summary judgment on this basis.5
Defendant alternatively seeks summary judgment on the basis that it does not infringe the 'D400 patent. On this issue, plaintiff has the burden of proving infringement by a preponderance of the evidence. See Ethicon Endo-Surgery , 796 F.3d at 1335. The Federal Circuit set forth the standard for determining infringement of a design patent in Egyptian Goddess, Inc. v. Swisa, Inc. , 543 F.3d 665 (Fed. Cir. 2008) (en banc ). That case involved a design for a "nail buffer, consisting of a rectangular, hollow tube having a generally square cross-section and featuring buffer surfaces on three of its four sides." Id. at 668. The en banc court in Egyptian Goddess expressly rejected a "point of novelty" test as part of its infringement analysis; instead, it held that the "ordinary observer" test should be the sole test to determine infringement in the design patent context. Id. at 678.
In so holding, the en banc court adopted a two-part test. The first part involves comparing the patented design and the accused design:
In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear "substantially the same" to the ordinary observer, as required by Gorham [Co. v. White , 81 U.S. 511, 14 Wall. 511, 20 L.Ed. 731 (1871) ].
Id. at 678. The court further explained that this test should be applied "through the eyes of an observer familiar with the prior art." Id. at 677.
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