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HOSLEY INTERNATIONAL TRADING CORP. v. K MART CORP.

December 20, 2002

HOSLEY INTERNATIONAL TRADING CORP., AN ILLINOIS CORPORATION, PLAINTIFF
V.
K MART CORP., A MICHIGAN CORPORATION, AND DESIGNCO, AN INDIAN COMPANY, DEFENDANT.



The opinion of the court was delivered by: Robert W. Gettleman, United States District Judge

MEMORANDUM OPINION AND ORDER

Plaintiff Hosley International Trading Corporation ("Hosley") brought this design patent infringement action against defendants K Mart Corporation ("K Mart")*fn1 and Designco, seeking damages and injunctive relief. Before the court are plaintiff's motion [or summary judgment of infringement against Designco and Designco's cross-motion for summary judgment of non-infringement, pursuant to Fed.R.Civ.P. 56. For the reasons discussed herein, plaintiff's motion is denied and Designco's cross-motion is granted.

BACKGROUND

Plaintiff owns U.S. Design Patent No. 412,369 ("the '369 patent"), which relates to an ornamental design for a cauldron-shaped votive candle holder. Designco, an Indian company, has imported, and continues to import, cauldron-shaped votive candle holders that are sold in the United States. According to plaintiff, Designco's candle holder infringes the '369 patent.

Plaintiff has moved for summary judgment, arguing that no factual issues exist regarding Designco's alleged infringement of the '369 patent. In response, Designco argues that, (1) plaintiff is not entitled to summary judgment because material issues of fact exist with respect to whether the Designco candle holder is substantially similar to the '369 patent, and (2) it is entitled to a finding of summary judgment of non-infringement because its product does not include two novel, ornamental features of the '369 patent.

DISCUSSION

Summary judgment is appropriate in a patent infringement case. See Avia Group Int'l. Inc., v. L.A. Gear California, Inc., 853 F.2d 1557, 1561 (Fed. Cir. 1988) ("It is no longer debatable that the issues in a patent case are subject to summary judgment."); Moen Inc. v. Foremost Int'l Trading. Inc., 38 F. Supp.2d 680, 681 (N.D.Ill. 1999).

A movant is entitled to summary judgment under Fed.R.Civ.P. 56 when the moving papers and affidavits show there is no genuine issue of material fact and the movant is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Unterrciner v. Volkswagen of America, Inc., 8 F.3d 1206, 1209 (7th Cir. 1993). Once a moving patty has met its burden, the nonmoving party must go beyond the pleadings and set forth specific facts showing there is a genuine issue for trial. See Fed.R.Civ.P. 56(c); Becker v. Tenenhaum-Hill Assoc., Inc., 914 F.2d 107, 110 (7th Cir. 1990). The nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. Ltd. v. Zenith Radio Corp., 475 U.S 574, 586 (1986). "The mere existence of a scintilla of evidence in support of the [nonmoving party's] position will be insufficient; there must he evidence on which the jury could reasonably find for the [nonmoving party]." Anderson v. Liberty Lobby. Inc., 477 U.S. 242, 252 (1986).

A determination of whether a design patent is infringed requires, (I) construction of the patent claim, and (2) comparison of the construed claim to the accused product. Contessa Food Products. Inc. v. Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002) (citing Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)).

Construction of the '369 Patent

A design patent protects the novel, ornamental features of the patented design, rather than its functional features. See Oddzon Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). When a design contains both functional and non-functional elements, "the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent." Id.

If a particular design is essential to the use of the article of manufacture, then it is primarily functional and cannot be the subject of a design patent. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993). Conversely, if there are several ways to achieve the function of an article, the design of that article is more likely to serve a primarily ornamental purpose. Id. These principles regarding the functionality-ornamentality distinction were pronounced initially by the Federal Circuit in the context of challenges to design patent validity, but have been applied routinely by district courts in the context of claim construction as well. See. e.g., Trucook v. Bond/Helman, Inc., No. 00C4865, 2001 WL 826864, at *2 (N.D.Ill. July 18, 2001); Hsin Ten Enterprises USA, Inc. v. Clark Enterprises, 149 F. Supp.2d 60, 63 (S.D.N.Y. 2001).

The scope of a claimed design encompasses "its visual appearance as a whole, and in particular the visual impression it creates." Contessa, 282 F.3d at 1376. Accordingly, design patents are generally limited to what is shown in the patent application drawings. Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1116 (Fed. Cir. 1998); In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988). With these standards in mind, the court turns to the construction of the '369 claim.

The '369 patent claims "the ornamental design for a cauldron-shaped votive candle holder, as shown and described."*fn2 The pictures depict a cauldron with a smooth, hemisphere-shaped body, rounded opening at top, and flat, circular bottom.*fn3 A ring is attached around the outer edge of the cauldron, near the rounded opening. A curved handle in the shape of a semi-circle, with raised ornamentation on its outer surface, is attached near the opening, just above the ring. A cut-out design at a middle portion ...


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