Figures & Functionality The Federal Circuit’s Recent Decisions on Claim Construction in Design Patent Cases

Article Date: Monday, February 28, 2011

Written By: Joseph A. Schouten & A. Jose Cortina

Introduction
Claim construction is a major event in almost all patent lawsuits. As attorneys we spend countless hours determining how to best “thread the needle” to obtain constructions that provide the best infringement and validity arguments if representing the patentee, or the best non-infringement and invalidity arguments if representing an accused infringer. A patent litigator’s experience with claim construction strategy calls is almost certainly driven by cases involving utility patents.

Although design patents are in some ways a different animal when compared to utility patents, claim construction is also done by the courts in design patent cases. In the last two years, the Federal Circuit has issued two major opinions dealing with claim construction in design patent cases: Egyptian Goddess, Inc. v. Swisa, Inc. and Richardson v. Stanley Works, Inc. These opinions both address challenges unique to determining the scope of coverage of claims in design patents. In doing so, Egyptian Goddess and Richardson may have created another unique challenge: harmonizing the approaches endorsed in each opinion.

In this article, we summarize and discuss both the Egyptian Goddess and Richardson opinions, and the standards they set for claim construction of design patents. We further provide several examples as to how district courts have responded in applying these different opinions.

Egyptian Goddess and Claim Construction
The Federal Circuit’s 2008 en banc decision in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) is perhaps best known for doing away with the “point of novelty” test and adopting the “ordinary observer” test for design patent infringement. However, Egyptian Goddess is also noteworthy for the direction it gave to district courts with respect to claim construction in design patent cases. Egyptian Goddess is important for its instruction that detailed verbal descriptions of a claimed design are not favored.

One of the questions the Federal Circuit sought to answer in its en banc opinion was “whether district courts should perform formal claim construction in design patent cases.” 543 F.3d at 670. The court began by outlining its precedent on claim construction in design patent cases, stating: “While this court has held that trial courts have a duty to conduct claim construction in design patent cases . . . the court has not prescribed any particular form that the claim construction must take.” Id. at 679 (citation omitted). The court further noted that “[t]o the contrary, the court has recognized that design patents ‘typically are claimed as shown in drawings,’ and that claim construction ‘is adapted accordingly.’” Id. (citation omitted).

Summing up the implication of the above precedent, the Federal Circuit explained that it has “not required that the trial court attempt to provide a detailed verbal description of the claimed design, as is typically done in the case of utility patents.” Id. In spite of the fact that there was no verbal description requirement, the district court in the Egyptian Goddess case had attempted a very detailed description of the claimed design – a nail buffer – in that case. The district court construed the claimed design as follows:

A hollow tubular frame of generally
square cross section, where the square has
sides of length S, the frame has a length of
approximately 3S and the frame has a
thickness of approximately T equals 0.1S;
the corners of the cross section are round-
ed, with the outer corner of the cross
section rounded on a 90 degree radius of
approximately 1.25T, and the inner
corner of the cross section rounded on a
90 degree radius of approximately 0.25T;
and with rectangular abrasive pads of
thickness T affixed to three of the sides of
the frame, covering the flat portion of the
sides while leaving the curved radius
uncovered, with the fourth side of the
frame bare.

Egyptian Goddess, Inc. v. Swisa, Inc., 2005 WL 6225310, *2 (N.D. Tex. March 4, 2005).
It is easy to understand why one would question whether this construction is of any help in explaining the claimed design of a rather simple nail buffer that was depicted in the patent. Although the Federal Circuit found that there was nothing inaccurate with this construction, it questioned whether “the considerable effort needed to fashion the verbal description contributed enough to the process of analyzing the case to justify the effort.” 543 F.3d at 680.

The Federal Circuit went a bit further as well and used its opinion as an opportunity to discourage district courts from issuing similar detailed verbal claim constructions in most design patent cases. The court instructed that, “[g]iven the recognized difficulties entailed in trying to describe a design in words, the preferable course ordinarily will be for a district court not to attempt to ‘construe’ a design patent claim by providing a detailed verbal description of the claimed design.” Id. at 679.

It is interesting to note that although the Federal Circuit stated that there was nothing inaccurate with the lower court’s constructions, it chose to instruct the lower courts using what is the “de novo” standard of review, to avoid verbal claim constructions. While this appears justified because claim construction is technically a question of law, perhaps the Federal Circuit would have been better off being silent on the issue. Given the fact that claim construction involves analysis of facts (although a question of law), perhaps the Federal Circuit should have applied a “clearly erroneous” standard on this issue in light of its statement that there was nothing inaccurate with the lower court’s construction.

Claim Construction Following Egyptian Goddess
As a general rule, subsequent to the Egyptian Goddess opinion, district courts have been taking the Federal Circuit’s cue and avoiding detailed verbal claim constructions in design patent cases. For a complete review of district court claim construction opinions following Egyptian Goddess, the authors of this article recommend the online seminar by Christopher V. Carani and Robert W. Payne called “Anatomy of Design Patent Litigation.” The seminar is available at the AIPLA website (www.aipla.org). A few examples are discussed briefly below.

In Shop*TV, Inc. v. Bed Bath & Beyond, Inc., 2009 U.S. Dist. LEXIS 71659 (D. Colo. June 15, 2009), the district court addressed claim construction of a design patent covering a carry on travel kit containing “multiple small empty bottles and jars in a clear one quart plastic zip top bag.” Id. at *2. Construing the patent, the court found “that a lengthy, detailed verbal description of the [] patent is unnecessary and it is appropriate to largely ‘rely upon the illustrations set out’ in the patent, ‘as they better represent the claimed design.”’ Id. at *7. Accordingly, the court construed the patent as “the design for a travel kit, used as a transparent, sealable receptacle for the included containers of specific configuration and volumetric capacity, as demonstrated in Figures 1 through 7.” Id. at *7 8.

The court in Unique Industries, Inc. v. 965207 Alberta Ltd., 722 F.Supp.2d 1 (D.D.C. 2009) construed a design patent covering the design of the patentee’s fireworks, specifically number- and star-shaped sparklers. The plaintiff in the case (it was a declaratory judgment action) argued that a detailed verbal claim construction was required in order to distinguish the prior art. Noting that the plaintiff had failed to identify any relevant prior art, the court rejected the request for a detailed verbal claim construction. In fact, one of the patents was construed simply as follows: “The ‘164 Patent is construed as the ornamental design of a star-shaped sparkler, as shown in Figures 1 4 of the patent.” Id. at 12 13. This construction is nothing more than a paraphrase of a typical claim in a design patent.

Finally, 180s, Inc. v. Gordini U.S.A., Inc., 699 F.Supp.2d 714 (D. Md. 2010) involved a design patent for ear warmers. In 180s the court simply construed the design patent as “the seven figures included in the patent.” Id. at 728-29. As will be described in more detail below, 180s is particularly noteworthy because the opinion was issued less than a month after the Federal Circuit issued the Richardson opinion (described in the next section) and represents one of the few examples of how district courts will apply Egyptian Goddess and Richardson together.

Richardson: A New Wrinkle for Construing Design Patents
With district courts for the most part faithfully adhering to Egyptian Goddess’ instructions regarding claim construction, the Federal Circuit made things a bit more complicated with its 2010 decision in Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010). In the Richardson case, the Federal Circuit approved of a district court “factoring out” the functional elements of a claimed design from the ornamental aspects as part of claim construction.

Richardson had obtained a design patent for a multi purpose tool that combined a hammer, a “stud climbing tool,” and a crowbar. Stanley sold similar tools for which it also had obtained a design patent. Richardson filed suit against Stanley claiming, among other things, that Stanley’s tools infringed Richardson’s patent.

As part of its claim construction, the district court “distinguished” the ornamental aspects of Richardson’s design from the functional aspects. The district court found that after “discounting the functional elements of Richardson’s design” there was no infringement of the patent under the ordinary observer standard. Id. at 1292-93.

The Federal Circuit affirmed the district court’s approach. Specifically, the court agreed with the district court that elements of Richardson’s design “such as the handle, the hammerhead, the jaw, and the crowbar are dictated by their functional purpose.” Id. at 1294. The Federal Circuit, therefore, agreed that it was proper to separate these elements out when construing the patent. These functional elements could then be ignored when performing the infringement analysis.

Putting aside the issue of whether Richardson is consistent with Egyptian Goddess’ articulation of the ordinary observer test (and reasons for rejecting the point of novelty test), there is a question as to whether Richardson conflicts with Egyptian Goddess’ instruction that overly detailed verbal claim constructions are not favored in design patent cases. The Richardson panel recognized this issue noting that although Egyptian Goddess does disfavor verbal claim constructions, the en banc panel did mention that courts could provide guidance to the fact finder by, among other things, distinguishing between ornamental and purely functional features. 597 F.3d at 1293, citing Egyptian Goddess, 543 F.3d at 679.

Notwithstanding cited statement from Egyptian Goddess, it certainly is reasonable to conclude that trying to factor out purely functional features as part of claim construction increases the risks that the court was attempting to avoid when it cautioned against detailed verbal constructions.

Claim Construction Following Richardson
One can easily understand that a district court reading Egyptian Goddess and Richardson might be a bit confused as it approaches claim construction. Should it avoid a verbal construction and refer only to the figures? Should it provide a detailed verbal construction as to which features are purely functional and are not to be considered? Should a verbal construction be provided only in cases where the design illustrates purely functional (in addition to ornamental) features? If it describes the claimed design feature-by-feature is it increasing the likelihood that the “finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole[?]” Egyptian Goddess, 543 F.3d at 680. Although not many published opinions have addressed these issues, discussed below are a couple of opinions that have.

As discussed above, the 180s opinion was issued a little less than a month after Richardson came out. In addition to refusing to engage in a detailed verbal claim construction, the court in 180s also “refrain[ed]” from distinguishing functional characteristics. 699 F. Supp. 2d at 729. The court acknowledged Richardson, but noted that district courts have significant discretion in dealing with claim construction. The court found that, unlike the situation present in Richardson, the case before it had not yet advanced to the stage where addressing functionality was appropriate. Id. at 729-30.
In Good Sportsman Marketing LLC v. Li & Fung Limited, 2010 WL 2640385 (E.D. Tex. June 29, 2010), the district court took a slightly different approach, with a very similar result – refusing to distinguish functional characteristics as part of claim construction. Like the court in 180s, the court declined to provide a detailed verbal description. Id. at *4 (construing patent as “the design for a clip light as shown in Figure 1 of the patent”).

With respect to functionality, the court found that Richardson does not require that any element serving a functional purpose be factored out. Rather, functional elements are not part of a design patent where the “overall design and configuration is dictated by the function.” Id. Under this interpretation, the court found that there was no evidence suggesting that the patent-in-suit had functional elements that needed to be factored out. Id.

Both Good Sportsman and 180s demonstrate that, although district courts may rely on Richardson to factor out purely functional elements of a design patent at the claim construction stage, they might be persuaded to refrain from doing so. In fact, courts may prefer to save functionality for a later stage in the litigation.

Conclusion
In Egyptian Goddess, the Federal Circuit seemingly made it easy on district courts construing design patents. Simply put, it is best to refer to the drawings in the patent and leave it at that. District courts, for the most part, found this approach logical and easy to follow. The Richardson opinion could have complicated things by adding a functionality consideration at the claim construction stage. However, it appears that district courts will, understandably, save consideration of functionality for later stages of the litigation if at all appropriate.

A. José Cortina and Joseph A. Schouten are attorneys at Ward and Smith, P.A. Ward and Smith serves clients locally, regionally, nationally, and internationally from offices in Asheville, Greenville, New Bern, Raleigh, and Wilmington. Cortina and Schouten practice in the Intellectual Property Practice Group. Comments or questions may be sent to ajc@wardandsmith.com or jas@wardandsmith.com. For more information about Ward and Smith, please visit www.wardand
smith.com.
 
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