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
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
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).
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
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
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 ...