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Dahon North America, Inc v. Joshua Hon; Florence Hon; Mobility Holdings

December 14, 2012

DAHON NORTH AMERICA, INC., PLAINTIFF,
v.
JOSHUA HON; FLORENCE HON; MOBILITY HOLDINGS, LTD.; MOBILITY HOLDINGS, LTD. (TAIWAN BRANCH); STILE PRODUCTS, INC.; STEVE BOYD; DAHON & HON INDUSTRIAL LABS, LTD., DEFENDANTS. DAHON & HON INDUSTRIAL LABS, LTD.; STILE PRODUCTS, INC.; JOSHUA HON; FLORENCE HON; MOBILITY HOLDINGS, LTD.; MOBILITY HOLDINGS, LTD. (TAIWAN BRANCH), COUNTERCLAIMANTS,
v.
DR. DAVID HON; DAHON TECHNOLOGIES, LTD.; DAHON NORTH AMERICA, INC., COUNTERDEFENDANTS.



The opinion of the court was delivered by: Otis D. Wright, II United States District Judge

O

CLAIM CONSTRUCTION ORDER

I.INTRODUCTION

Since 1979, the Hon family has been designing, manufacturing, and selling folding bicycles. Joshua Hon and Florence Hon are the son and wife of Dr. David Hon and collaborated in the Dahon enterprise until 2009. The Hons have since parted ways. Today, Dr. Hon manages and controls Dahon North America, Inc. and Dahon Technologies, Ltd., while Joshua and Florence manage and control Dahon & Hon Industrial Labs, Ltd., Mobility Holdings, Ltd., and Mobility Holdings, Ltd. (Taiwan Branch). In this lawsuit, the two sides assert various claims against each other, including ones for IP infringement and unfair competition.

In addition to the parties mentioned above, Stile Products, Inc. is a U.S. bicycle company and is the exclusive licensee of the two remaining patents-in-suit, D622,638 and D632,615. Both the '638 patent and the '615 patent are currently assigned to Mobility Holdings, Ltd., and are design patents that claim an ornamental design for a folding bicycle frame.

'638 patent '615 patent

As a first step in determining patent infringement, the Court construes the essential terms of the patents. Even though the patents-in-suit are design patents-and are relatively simple-the Court must still construe the claims. After considering the parties' briefs outlining their competing constructions, the Court finds oral argument unnecessary and construes the asserted claims as set forth below. Fed. R. Civ. P. 78; L.R. 7--15.

II.LEGAL STANDARD

Even in design patent cases, the Court has a duty to conduct claim construction. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc). But because design patents are typically claimed in visual form, claim construction should be flexible and not necessarily comprise a detailed verbal description of the claimed design. Id.

In some instances, the claim construction should distinguish the ornamental features of the patented design from the functional aspects of the design. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010). Yet, the task of distinguishing the ornamental features from the functional ones must be tempered-a detailed verbal description of the claimed design may place an undue emphasis on particular features of the design; and may hinder examination of the design as a whole. Crocs, Inc. v. ITC, 598 F.3d 1294, 1302 (Fed. Cir. 2010). To properly construe the claims, the Court must consider intrinsic evidence (the patents' specification and prosecution history) and extrinsic evidence (e.g., expert testimony, references to contemporaneous dictionaries). Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005).

III.DISCUSSION

Here, the patents-in-suit-like all typical design patents-do not have detailed specifications. The specifications include only: a preamble; cross-references to related applications; descriptions of the drawing figures; and a single claim. See Manual of Patent and Examining Procedure ("MPEP") § 1503.01. More importantly, these two design patents do not disclaim any features by way of broken lines; so for each patent, the entirety of the design shown in the figures is the claimed design. Id. § 1503.02(III); In re Zahn, 617 F.2d 261, 269 (C.C.P.A. 1980). Further, the patents have very brief prosecution histories. The only issues discussed in the prosecution histories were the inadequate use of surface shading, which the applicant subsequently corrected. See MPEP § 1503.02(II). The parties submitted no extrinsic evidence to support their respective claim constructions.

Stile suggests that the claims in both patents should be construed as "a bicycle frame of a certain design as shown in Figures 1--8." (Reply 12.) Counterdefendants seek more detail and urge the Court to note certain ornamental and functional features in order to guide the ultimate finder of fact concerning the ornamental-functional dichotomy for infringement and invalidity analysis. (Opp'n 7.)

With respect to Counterdefendants' perspective, the Court agrees that in some instances, ornamental features should be distinguished from functional ones in claim construction. Richardson,597 F.3d at 1293. But this is not one such instance. The most important task is to facilitate examination of the design as a whole-ornamental and functional elements together. Crocs, 598 F.3d at 1302. Given the relative complexity of a bicycle frame design-as opposed to a pair of shoes or a nail buffer- it would be difficult to: 1) verbalize the bicycle frame design as shown in the figures; and 2) separate the ornamental features ...


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