United States District Court, D. Colorado
PHILIP A. BRIMMER, District Judge.
This matter is before the Court on the Joint Claim Construction Statement Regarding U.S. Design Patent No. D644, 939 [Docket No. 55] filed by defendant The Kind Group, LLC ("Kind Group") and plaintiff OraLabs, Inc. ("OraLabs"); Plaintiff OraLabs, Inc.'s Responsive Claim Construction Brief [Docket No. 60]; and Kind Group's Reply Claim Construction Brief [Docket No. 62].
Kind Group owns United States Patent No. D644, 939 (the "939 Patent"), which covers the "ornamental design for the spherically-shaped lip balm." Docket No. 1-2 at 1-5. OraLabs filed this case on January 24, 2013, seeking a declaration that its product Chap-Ice Lip Revolution ("Revo") does not infringe the 939 Patent and a declaration that the 939 Patent is invalid. Docket No. 1 at 3-4. A claim construction hearing is currently set for Friday, May 30, 2014. Docket No. 58.
In the Joint Claim Construction Statement, Kind Group contends that the Court "should not attempt to construe the patented design because a detailed verbal description is not necessary or helpful to the jury, " which will be able to "easily understand the drawings of the 939 patent and compare those drawings to the accused products." Docket No. 55 at 3. Kind Group requests that the Court enter an order construing the patent "simply as shown in the figures contained therein, with no verbal construction." Docket No. 59 at 15.
OraLabs contends that claim construction is required to determine infringement and the validity of the 939 Patent. Docket No. 55 at 8. OraLabs argues that its proposed verbal construction (1) is necessary to resolve an ambiguity in the drawings (namely, why the "side view" in Figure 5 is missing the thumb divot included in the other drawings), Docket No. 60 at 7-8; (2) is necessary to identify the key details that distinguish the 939 Patent from the prior art, Docket No. 60 at 9-11; (3) is helpful and accurate, for example, because it clarifies that elements within dotted lines are not part of the claimed design. Docket No. 60 at 11-13.
Kind Group maintains that OraLabs' proposed construction "improperly focuses on individual design features" and is needlessly confusing. Docket No. 55 at 6. It further argues that the Court should not address obviousness and functionality at this time. Id. at 7.
In deciding how to construe the 939 Patent, the Court must consider OraLabs' arguments that a verbal construction is necessary to resolve ambiguities in the drawings, to distinguish the claimed design from prior art, and to facilitate a ruling on patent invalidity. The Court need not, however, evaluate the accuracy or utility of the particular construction that OraLabs proposes-such a discussion would properly follow a threshold determination that a verbal claim construction is required in the first place.
A. Legal Framework-Construing Design Patents
"[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.'" Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (quoting Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)). Egyptian Goddess held that courts should apply the "ordinary observer" test, as defined above, to design patent infringement claims. Id. at 678. In addition, Egyptian Goddess addressed the question of when a court should verbally construe a design patent:
As the Supreme Court has recognized, a design is better represented by an illustration "than it could be by any description and a description would probably not be intelligible without the illustration." Dobson v. Dornan, 118 U.S. 10, 14, 6 S.Ct. 946, 30 L.Ed. 63 (1886). The Patent and Trademark Office has made the same observation. Manual of Patent Examining Procedure § 1503.01 (8th ed. 2006) ("[A]s a rule the illustration in the drawing views is its own best description."). Given 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; see also In re Freeman, 23 App. D.C. 226, at *2 (D.C. Cir. 1904) ("Undoubtedly, in the matter of application for a patent for a design, a picture of the design serves to convey a greatly more adequate idea of the design than any verbal description could possibly do; and, in the presence of the picture, a superadded verbal description is generally useless and oftentimes confusing.").
The court in Egyptian Goddess noted that the decision to issue a detailed claim construction falls within the discretion of the district court, but cautioned against wasting time on unnecessary constructions. 543 F.3d at 680 ("In this case.... it is not clear that the considerable effort needed to fashion the verbal description contributed enough to the process of analyzing the case to justify the effort."). The court also cautioned against the more serious risk "entailed in such a description, such as the risk of placing undue emphasis on particular features of the design and the risk that a finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole." Id .; see Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d 1294, 1303 (Fed. Cir. 2010) ("This case shows the dangers of reliance on a detailed verbal claim construction. The claim construction focused on particular features of the 789 patent design and led the administrative judge and the Commission away from consideration of the design ...