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CONCEPT INNOVATION v. CFM CORPORATION

December 6, 2004.

CONCEPT INNOVATION, et al., Plaintiffs and Counter-Defendants,
v.
CFM CORPORATION, et al., Defendants, Counter-Plaintiffs and Third-Party Plaintiffs, v. LUCAS PAI and ACTIVE GENE, INC., Third Party Defendants, ACTIVE GENE, INC. Third-Party Counterclaimant, v. CFM CORPORATION and CFM U.S. CORPORATION, Third-Party Counterclaim Defendants.



The opinion of the court was delivered by: SUZANNE CONLON, District Judge

MEMORANDUM OPINION AND ORDER

Concept Innovation Inc. ("Concept") and Lucas Innovation Inc. (collectively "plaintiffs") sue CFM Corporation, CFM U.S. Corporation a/k/a and d/b/a The Vermont Castings Majestic Products Company, (collectively "CFM"), and CFM Home Products a/k/a and d/b/a The Great Outdoors Grill Company*fn1 for patent infringement pursuant to 35 U.S.C. § 271 et seq. CFM counterclaims against plaintiffs and asserts various third-party claims against Lucas Pai and Active Gene, Inc., including claims for patent invalidity and correction of inventorship under 35 U.S.C. § 256. Concept and CFM move for construction of the claimed designs of United States Design Patent Nos. D470,012 ("the '012 patent"), D479, 430 ("the '430 patent"), D486,033 ("the '033 patent") and D488,026 ("the '026 patent").

BACKGROUND

  The '012 patent entitled "Body of a Barbeque Grill" issued on February 11, 2003. The sole claim of the '012 patent is to "the ornamental design for a body of a barbeque grill, as shown." Generally, the '012 patent drawings illustrate a grill body with a clam shell shape. The '430 patent entitled "Barbeque Grill" issued on September 9, 2003. The sole claim of the '430 patent is to "the ornamental design for a barbeque grill, as shown." Generally, the '430 patent drawings illustrate the clam shell grill body, as depicted in the '012 patent, on a rectangular frame stand. The '033 patent entitled "Barbeque Grill" issued on February 2, 2004. The sole claim of the '033 patent is to "the ornamental design for a barbeque grill, as shown." Generally, the '033 patent drawings illustrate a grill body on a X-shaped stand. The '026 patent entitled "Barbeque Grill Stand" issued on April 6, 2004. The sole claim of the '026 patent is to "the ornamental design for a barbeque grill stand as shown." Generally, the '026 patent drawings illustrate the X-shaped stand reflected in the '033 patent. DISCUSSION

  I. Legal Standard

  Determining whether a design patent is infringed requires a two-step analysis. First, the district court must construe the patent claims. Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002). Then, the construed claim is compared to the accused product. Id. Comparison to the accused product requires application of both the "ordinary observer" and "point of novelty" tests. Id. at 1377. Unlike utility patents, design patents do not describe claimed designs in words: "[n]o description, other than a reference to the drawing, is ordinarily required . . . more than one claim is neither required nor permitted." 37 C.F.R. § 1.153(a); Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., Inc., 162 F.3d 1113, 1116 (Fed. Cir. 1998). Accordingly, design patents have almost no scope; they are limited to what is shown in the application drawings. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995); In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988); Schnadig Corp. v. Collezione Europa U.S.A., No. 01 C 1697, 2002 U.S. Dist. LEXIS 19083, *24 (N.D. Ill. Oct. 2, 2002). "In construing a design patent claim, the scope of the claimed design encompasses its visual appearance as a whole, and in particular the visual impression it creates." Contessa, 282 F.3d at 1376 (citations omitted). The district court should take note of the ornamental features that produce the overall appearance of the design. OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). The court may consider the claims, specification, prosecution history and expert testimony that does not contradict the intrinsic evidence. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979-80 (Fed. Cir. 1995). However, in construing design patent claims, a district court need not consider what one of ordinary skill in the art would have understood the claim terms to mean at the time of invention. Instead, a district court properly construes design patent claims through its own eyes and by "translating visual descriptions into words" that "evoke the visual image of the design." Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 and n. 2 (Fed. Cir. 1996).

  II. Points of Novelty

  A design patent protects the novel, ornamental features of the design patent. Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993). The parties contend that in addition to providing a visual description, the court must identify the claimed designs' points of novelty at the claim construction phase. The point of novelty test, however, is one of two required tests applied when the court compares the previously construed claim to the accused product in order to determine infringement. Contessa, 282 F.3d at 1376-77. "Both the ordinary observer and point of novelty tests are factual inquiries that are undertaken by the fact finder during the infringement stage of proceedings, after the claim has been construed by the court." Bernhardt, L.L.C., v. Collezione Europe USA, Inc., 386 F.3d 1371, 2004 U.S. App. LEXIS 22592, *31 (Fed. Cir. Oct. 20, 2004). In Bernhardt, the parties disagreed as to when the points of novelty should be determined. After declining to determine points of novelty at the claim construction stage, the district court held plaintiff had failed to establish at trial that defendant appropriated the patent's points of novelty. See id. at *27-28. The Federal Circuit indicated the point of novelty test is a factual inquiry to be considered during the infringement stage of proceedings and considered the evidence necessary to prove infringement under the point of novelty test. Id. at *31-34. Here, the parties have submitted evidence, as delineated in Bernhardt, needed to establish points of novelty with their claim construction motions. Id. at *33-34. However, application of both the ordinary observer and point of novelty tests must be reserved for trial on the issue of infringement. Id. at *31. III. Designs Claimed

  A. The '012 Patent

  1. Concept's Proposed Construction

  Concept submits that the overall visual impression of the '012 patent should be construed as:
A grill body with a clam shell design. The body has separate top (lid) and bottom portions having a matching clam shell shape. The lid has a raised section formed by a number of faceted planar surfaces with adjacent surfaces connected to each other and to any adjacent perimeter by interconnecting lines with soft radii. The top surface and the side walls of the lid are connected by sculptured facets extending from back to front. The bottom portion of the grill body is formed of generally vertical walls and an inverted dome-shaped portion.
Concept Mot. at 8; Concept Resp. at 9.

  2. CFM's Proposed Construction

  CFM submits the '012 patent should be construed to include:
A specific clam shell shape having a rear portion of the lid whose width is substantially smaller than a forward portion of the lid, the rear portion of the side walls have a very specific concave shape, thereby providing a scalloped look (see Fig. 6); in addition, the side walls of the lid include a transition point at which the side walls transition from a concave shape (along the rear portion of the side wall) to a convex shape (along the front portion of the side wall); and a specific configuration of character lines and surfaces there between that form specific shapes, such shapes including shoulders that are defined between the horizontal top surface and each side wall extending above the lip of the lid, each shoulder having a concave surface; additionally, the area below the shoulder is oriented at an acute angle (relative to a vertical); a trapezoid-like shape is formed on the top front surface of the lid (see Fig. 2); the trapezoid-like shape has a distinctive slope that is defined by an acute angle relative to a vertical plane.
CFM Mot. at 4-6; CFM Resp. at 12. 3. Findings

  In construing the '012 patent's claim, the court considers the patent's ornamental features and visual pictures as a whole to translate the patent's visual descriptions into words that evoke the visual image. Contessa, 282 F.3d at 1376; OddzOn Prods., 122 F.3d at 1405; Durling, 101 F.3d at 103 and n. 2. The parties rely on expert witness testimony to support their respective claim constructions. Because the '012 patent claim, specification, and prosecution history provide little guidance for claim construction, the court finds the expert testimony and the parties' submissions helpful. Therefore, to the extent ...


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