The opinion of the court was delivered by: Honorable Barry Ted Moskowitz United States District Judge
ORDER RE: CLAIM CONSTRUCTION
Plaintiffs Carl Edward Hoffman ("Hoffman") and Rebecca Elise Hoffman (collectively "Plaintiffs") have sued Defendant Impact Confections, Inc., for infringement of their design patent, US D556,052 ("Design Patent '052" or "Patent"). On January 4, 2010, the Court held a claim construction hearing. The Court's rulings regarding the claim construction are set forth below.
Design Patent '052 covers the "ornamental design for a container." (Def.'s Evidence in Support of Claim Construction, Ex. A.) The design generally consists of a lidded container with a design on the lid that depicts a wheel. The Patent includes 4 figures which show (1) a top view of the container; (2) another top view of the container; (3) a side view of the container with the lid closed; and (4) another side view of the container with the lid closed.
When construing design patents, trial courts are not required to attempt to provide a detailed verbal description of the claimed design as design patents "typically are claimed as shown in drawing." Id. at 679 (quoting Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1319 (Fed. Cir. 2007)). A district court's decision regarding the level of detail to be used in describing the claimed design is a matter within the court's discretion. Id. at 679. "While it may be unwise to attempt a full description of the claimed design, a court may find it helpful to point out, either for a jury or in the case of a bench trial by way of describing the court's own analysis, various features of the claimed design as they relate to the accused design and the prior art." Id. at 680.
Defendant argues that the horizontal lines on Figures1 and 2 are "broken lines" that exclude the designated areas from the design. According to Defendant, due to the use of the "broken lines," Plaintiffs' patent is limited to the central horizontal section of the Figures as shown on Page 10 of Defendant's brief. The Court is not persuaded by this argument.
37 C.F.R. § 1.152 explains, "The use of broken lines indicates that the environmental structure or the portion of the article depicted in broken lines forms no part of the design, and is not to indicate the relative importance of parts of a design." The Manual of Patent Examining Procedure ("Manual") also discusses the use of broken lines to indicate that the environmental structure or the portion of the article depicted in broken lines forms no part of the design. (Def.'s Response Brief, Ex. A at 6.)
However, it is apparent to the Court that the horizontal lines are not "broken lines" used to identify portions of the article that are not part of the design, but, rather, are "surface shading." The Manual explains that surface shading may be necessary "to show clearly the character and contour of all surfaces of any 3-dimensional aspects of the design" or "to distinguish between any open and solid areas of the article." (Def.'s Response Brief, Ex. A at 5.) As confirmed by Plaintiffs at the hearing, the horizontal lines show that the surface of the container is flat, as opposed to graduated in depth. Without the surface shading, there would be confusion as to whether certain parts of the design are lower or higher than others.
The surface shading looks nothing like the "broken lines" that are used in patent drawings to show the context or environment of the claimed device or design. See, e.g., In re Zahn, 617 F.2d 261, 262 (Cust. & Pat. App. 1980) (drill bit drawn in broken lines to show environment for claimed design of the drill shank); Atlanta Motoring Accessories, Inc., v. Saratoga Tech., Inc., 33 F.3d 1362, 1365 (Fed. Cir. 1994) (automobile hardtop outlined in broken lines to show environment of rack device); Goodyear Tire & Rubber Co., v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1114 (Fed. Cir. 1998) (broken lines used to show tire sidewall, which formed no part of the design claimed); Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1310-11 (Fed. Cir. 2001) (broken lines used to show a door pull which formed no part of the claimed design for an integrated door and frame). The lines used in Plaintiffs' drawings are more like the surface shading used on the cabinet doors in Door-Master, 256 F.3d at 1311, to show that the surfaces are solid and flat.
That the horizontal lines in Plaintiffs' drawings are "surface shading" is supported by prior art submitted by Defendant. This prior includes drawings of containers that use similar surface shading to indicate a flat solid surface. (Def.'s Evidence in Support of Claim Construction, Ex. F at 2-6, 8, 14-15, 17-20, 62-65.) The surface shading on the ornamental design for a cooler, US D448,250 S (Ex. F at 2), closely resembles the horizontal lines in Plaintiffs' drawings.
The horizontal lines are not "broken lines" as suggested by Defendant.*fn1 The horizontal lines are surface shading and do not exclude any portion ...