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Dyson, Inc. v. Sharkninja Operating LLC

United States District Court, N.D. Illinois, Eastern Division

October 13, 2016

DYSON, INC. and DYSON TECHNOLOGY LIMITED, Plaintiffs,
v.
SHARKNINJA OPERATING LLC and SHARKNINJA SALES COMPANY, Defendants.

          MEMORANDUM OPINION AND ORDER

          JOHN W. DARRAH United States District Court Judge

         Plaintiffs Dyson, Inc. and Dyson Technology Limited (collectively, the “Plaintiffs”) filed a Second Amended Complaint against Defendants SharkNinja Operating LLC and SharkNinja Sales Company (collectively, the “Defendants”), alleging three counts of design infringement associated with United States Design Patents No. D577, 163 (the “‘163 Patent”), No. D668, 010 (the “‘010 Patent”), and No. D668, 823 (the “‘823 Patent”). On March 2, 2016, the Court held a claims-construction hearing, which included the argument of counsel for each party and the submissions of written briefs by each party. The Court also considered the PowerPoint presentations presented by the parties at the hearing.

         BACKGROUND

         Dyson, Inc. is an Illinois corporation with its principal place of business in Chicago, Illinois. Dyson Technology Limited is a private limited company organized and existing under the laws of England and Wales with its principal place of business in Malmesbury, United Kingdom. Plaintiffs sell a number of different hand held vacuum cleaner products in the United States. SharkNinja Operating LLC is a limited-liability company organized under the laws of Delaware with its principal place of business located in Newton, Massachusetts. SharkNinja Sales Company is also a limited-liability company organized under the laws of Delaware with its principal place of business located in Newton, Massachusetts. Defendants sell vacuum cleaners under the "Shark Rocket" brand.

         On May 12, 2014 Dyson filed an Amended Complaint, asserting three counts of infringement of the '163, '010, and '823 Patents. The '163 Patent, titled "Cleaning Appliance, " was filed on January 18, 2007, and issued on September 16, 2008, and claims the ornamental design for a cleaning appliance.

         (IMAGE OMITTED)

         (Amend. Compl. Ex. A.) The '010 Patent, titled "Vacuum Cleaner, " was filed on February 8, 2011, and issued on September 25, 2012, and claims the ornamental design for a vacuum cleaner.

         (IMAGE OMITTED)

         (Amend. Compl. Exh. B.) The '823 Patent, titled "Vacuum Cleaner, " was filed on February 4, 2011, and issued on October 9, 2012, and claims the ornamental design for a vacuum cleaner.

         (IMAGE OMITTED)

         (Amend. Compl. Exh. C.)

         Dyson accuses three Shark Rocket vacuum series of infringement: the HV300 series, the HV310 series, and the HV320 series. Products within those series share the same essential design features and differ only in accent colors or accessory packages.

         The parties proposed constructions are as follows:

Patent No.

Plaintiffs' Construction

Defendants' Construction

D577, 163

No construction necessary.

The claim is limited to the ornamental aspects of the design shown in the drawings and further limited by functional elements. Thus, the ' 163 patent should be construed as:

The ' 163 patent is for the ornamental aspects of the design of a cleaning appliance shown and described in the drawings. The claimed design mcoiporates three functional elements and an overall configuration that serve as a functional "skeleton" and are not protected by the "163 patent, including the pistol grip, point-and-shoot layout, the dumbbell layout, and the upright cylinder, as illustrated and combined below:

(IMAGE OMITTED)

The ' 163 patent does protect the ornamental "skin, " i.e., all of the particular ornamental aspects adorning these functional elements (if any), the most significant being the "crown" or array of conical secondary cyclones above the primary cyclone chamber, the straight pistol grip handle, the cylindrical motor housing, the flat rectangular batteiy pack, the "reshaped coupling in front of the pistol grip handle, the cylindrical primary cyclone chamber, the triangular coupling between the primary cyclone chamber and the suction nozzle, and the purely cylindrical suction nozzle.

D668, 010

The ornamental design for a vacuum cleaner, as shown and described hi the replacement drawings (Figures 1-7) located at J.A. 184-189

Uncorrected drawings: The drawings in the uncorrected "010 patent are mdefimte and cannot be conected by the Court under 35 U.S.C. §§ 254-255.

Corrected drawings: Alternatively, if the Court holds it can correct the patent drawings, the claim is limited to the ornamental aspects of the design shown in the drawings and further limited by functional elements. Thus, the '010 patent claim should be construed as:

The '010 patent is for the ornamental aspects of the design of a cleaning appliance shown and described in the drawings. The claimed design incorporates five functional elements and an overall handheld unit-tube-floor unit configiuation that serve as a functional "skeleton" and are not protected by the '010 patent, including the pistol grip, point-and-shoot layout, the dumbbell layout, the upright cylinder, the long cylindrical suction tube, and the low-profile floor unit, as illustrated and combined below:

(IMAGE OMITTED)

The '010 patent does protect the ornamental "skin, " i.e., all of the particular ornamental aspects adorning these functional elements (if any), the most significant being the "crown" or array of conical secondary cyclones above the primary cyclone chamber, the straight pislol grip handle, the cylindrical motor housing, the flat rectangular battery pack, the cylindrical primary cyclone chamber, the triangular coupling between the primary cyclone chamber and the suction nozzle, the purely cylindrical suction nozzle, as well as the cylindrical cuffs connecting the tube to the handheld vacuum cleaner and floor unit, the cylindrical coupling on the floor unit, and the ball-shaped wheel design.

D668, 823

No construction necessaiy.

The claimed design is limited to the ornamental aspects of the design shown in the drawings and further limited by functional elements. Thus, the '823 patent claim should be consfrued as:

The '823 patent is for the ornamental aspects of the design of a vacuum cleaner as shown and described in the drawings. The claimed design incorporates three functional elements and an overall handheld unit-tube-floor unit configuration that serve as a functional "skeleton" and are not protected by the '823 patent, including the pistol grip., point-and-shoot layout, the upright cylinder, and the long cylindrical suction tube, as illustrated and combined below:

(IMAGE OMITTED)

Underlying functional elements

The '823 patent does protect the ornamental "skin, " i.e., all of the particular ornamental aspects adorning these functional elements (if any), the most sigmficant bemg the straight pistol grip handle, the cylindrical motor housing, the cylindrical primary cyclone chamber, the triangular coupling between the primary cyclone chamber and the suction nozzle, the purely cylindrical suction nozzle, as well as the cylindrical cuff connecting the tube to the handheld vacuum cleaner.

         LEGAL STANDARD

         Claim construction is a question of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970 (Fed. Cir. 1995). Claim construction involves "determining the meaning and scope of the patent claims asserted to be infringed." Id. at 976. Design patents only cover the ornamental features of a design. OddzOnProd., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). “Where a design contains both functional and nonfunctional 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. In general, “a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10 (1982). Specifically, a design patent is invalid if its overall appearance is dictated by its function. Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1320 (Fed. Cir. 2016) (citing Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 668 (Fed. Cir. 2008). Even if certain elements have functional purposes, a design claim can be valid because a design patent's claim protects “an article of manufacture, which necessarily serves a utilitarian purpose.” Id. (citations and quotations omitted). Several factors should be considered when determining whether a design is dictated by function:

whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function.

Id. at 1322 (citing PHG Technologies, LLC v. St. John Cos., 469 F.3d 1361, 1366 (Fed. Cir. ...


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