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.
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
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.
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
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