PATRICIA A. SEITZ, District Judge.
THIS CAUSE comes before the Court on Defendants Woodard-CM, Inc. ("Woodard") and Scott Coogan's Motion for Partial Summary Judgment [DE 61] wherein they seek summary judgment on Plaintiffs design patent infringement claim ("Claiml").
Having carefully reviewed the motion, opposition [DE 79, 80, 81], reply [DE 90], and the record, summary judgment as to Claiml must be granted for Defendants. As to patents D520,767 S ("the '767 patent") and D521,263 S ("the '263 patent"), they are invalid because Pride variously described the designs in a printed publication, publically displayed the designs, and sold embodiments of the designs more than one year before the patent applications were made. With respect to the two remaining patents-in-suit in Claim 1, D522,778 S ("the '778 patent") and D519,293 S ("the '293 patent"), no reasonable juror could conclude that the accused devices infringe either patent.
The following discussion and the analysis treat the four patents-in-suit in two groups. Patents 1 and 2, the '767 and '263 patents, are collectively referred to as the "Invalid Patents." Patents 3 and 4, the '778 and '293 patents, are collectively referred to as the "Allegedly Infringed Patents."
The '767 and '263 patents are designs for patio chairs in a tropical motif. The designs of '767 and '263 patents are embodied by Pride's Coco Isle Sling Chair and the Coco Isle Cushion Chair respectively.
Pride published pictures of the Coco Isle collection, including the Sling and Cushion Chairs, in its 2004 product-line catalog. [DE 61-8, Ex. F, p 9]; [DE 61-8, Ex. F, p. 5]. The 2004 catalog was distributed to potential customers at the 2003 "pre-market" industry trade show in Chicago.
The Coco Isles collection was unveiled at the same 2003 Chicago pre-market. The 2003 pre-market was attended by hundreds of people; including buyers for retailers who were Pride's targeted audience. For the 2003 pre-market, as it has done for twenty-five years, Pride leased an 8000 square foot show room in the Merchandise Mart. Pride displayed the Coco Isles collection in the show room and showed it in "a very sellable way ... no different than a furniture store." (Deposition of Steven Lowsky, DE 61-5, 76:15-17). The collection, including the Sling and Cushion chairs, was in its final form at its unveiling. Pride's CEO Jamie Lowsky confirmed that Pride had its price lists for the collection "available" at the 2003 pre-market though these were not generally distributed. The unveiling of the Coco Isles collection was a resounding success. [DE 61-5, p. 82]. Pride made several sales in connection with the pre-market, including to Defendants Carl's Patio. Id. at p. 82-83.
The central dispute with regard to the validity of '767 and '263 patents is when in 2003 was the Coco Isle's collection first shown. Pride claims the collection was first exhibited in September [DE 79, p. 6], while Defendants claim Pride showed the collection in July.
In support of its July date for the collection's showing, Defendants cite the following record evidence: (1) three 2003 press releases from Pride's own website discussing the Coco Isle collection being displayed at the July 2003 pre-market,
On the other hand, to support its counter-argument that it unveiled the Coco Isles collection in September, Pride offers affidavits from Steven and Jamie Lowsky made after their depositions wherein each states he was unsure of the dates of the premarket when deposed. Pride also cites an affidavit from Joe Logan, the Executive Director of the International Casual Furnishings Association (ICFA), the organization that sponsors the Chicago pre-market. In the affidavit Logan states there was no organized preview until 2005. Woodard, however, filed a rebuttal declaration wherein Logan states that while official preview shows were not held until 2005, the ICFA's predecessor did in fact establish specific dates for an "unsponsored" pre-market event which occurred in July 2003. [DE 90-3].
The '778 patent is for a furniture leg ornamentation. The patent discloses an ornamental leaf structure with three rings at its base. The leaf and ring structure caps the chair's legs at the top where the leg joins the chair's arms. The leaf structure is joined to the chair arms with a decorative lashing that is applied in a distinctive pattern. Pride contends Woodard infringed the '778 patent by directly copying the lashing in Woodard's production of its Jumby Bay Sling Chair, Cushion Chair, and Lounge Chair. The patented design appears below:
The '293 patent is also for a chair in a tropical motif. The patent discloses a
Pride contends that Woodard's Jumby Bay Cushion Chair is "a direct copy of the patented Cabana Bay chair in every way." [DE 30, p. 3]. The record contains several photographs of the Jumby Bay Cushion Chair from multiple angles. [DE 64-2].
Summary judgment is appropriate when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Once the moving party demonstrates the absence of a genuine issue of material fact, the non-moving party must "come forward with `specific facts showing that there is a genuine issue for trial.'" Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (quoting Fed.
The Court has viewed the record in the light most favorable to the Plaintiff and as discussed in Section II, finds that the first and second patents are invalid under three separate bars imposed by the 35 U.S.C. § 102(b). As to patents three and four discussed in Section III, no juror applying the objective observer test could find that accused chairs infringe the '786 or '293 patent.
Pursuant to 35 U.S.C. § 102(b) a design is entitled to a patent unless it is has been (1) described in a printed publication; (2) in public use; or (3) on sale more than one year prior to the date of the application of the patent. Defendants allege that each of these bars is separately applicable to the '767 and '263 Patents. Every issued patent is entitled to a presumption of validity. Novo Nordisk A/S v. Caraco Pharm. Lab., Ltd. 719 F.3d 1346, 1352 (Fed.Cir.2013). However, a challenger may prove a patent claim to be invalid under 35 U.S.C. § 102(b) based on clear and convincing evidence. Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1325 (Fed.Cir.2009) (internal citation omitted). Here, Woodard has proven by clear and convincing record evidence that each of these bars apply. Accordingly, summary judgment as to the '767 and '263 patents' invalidity is warranted.
The only disputed factual issue as to validity is whether the Coco Isle Collection was shown at the 2003 Chicago pre-market in July 2003 or in September 2003. The effective date of the 35 U.S.C. § 102(b) one-year period was August 18, 2003, one year before the initial applications for the '767 and '263 patents. See Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed.Cir.1988). Thus, if as Pride suggests, the collection was unveiled in September 2003, the evidence of publication, public use, or sale would not entitle Defendants to summary judgment because such publication, public use, and/or sale would have occurred within the year safe-haven before the application was made. However, the record evidence overwhelmingly supports that the collection was shown in July such that no reasonable juror could find otherwise.
Defendants have produced three separate press releases from Plaintiff's own website which corroborate that the 2003 Chicago pre-market occurred between July 16 and July 20 and that Pride unveiled the Coco Isles Collections at the July pre-market. Additionally, a trade publication called HFN magazine dated August 4, 2003, reported that the 2003 Chicago pre-market occurred "last month" and that Pride had introduced the Coco Isle collection at the pre-market. Plaintiff has not produced any evidence to rebut either that the trade show took place in July 2003 or its display of Coco Isle Collection at the event.
The commercial embodiments of the '767 and '263 patents, the Coco Isles Sling and Cushion Chairs, were clearly pictured in Pride's 2004 catalog, which it distributed to customers at its Merchandise Mart showroom at the July 2003 pre-market in Chicago. Whether a document constitutes a printed publication under § 102 is a question of law based on the surrounding facts. Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1332-33 (Fed.Cir.2009). Here, to qualify as a printed publication, the 2004 Pride Catalog must have been disseminated or otherwise made accessible to persons interested and ordinarily skilled in the subject matter to which the advertisement relates prior to the critical date. See Kyocera Wireless Corp. v. Int'l Trade Comm'n, 545 F.3d 1340, 1350 (Fed.Cir.2008); In re Hall, 781 F.2d 897, 899 (Fed.Cir.1986) (explaining that public accessibility is the "touchstone in determining whether a reference constitutes a `printed publication' bar under 35 U.S.C. § 102(b)").
In his deposition Jamie Lowsky agreed that the catalog was distributed at the pre-market "in order to market, promote, and hopefully sell the furniture to retailers." The pre-market was attended by several hundred people, some of whom were representatives of retailers. Pride distributed the catalog to motivate industry participants, such as buyers for retailers, to purchase its furniture, including the embodiments of the patents at issue which were pictured. In so doing, Pride made its designs accessible to interested persons ordinarily skilled in the subject matter and because embodiments of the '767 and '263 patents were pictured a printed publication distributed in July 2003, more than one year before the August 18, 2004 application date, those patents must be found invalid on this basis as well.
Inventions already (1) in public use and (2) ready for patenting before the critical date are barred from being patented. 35 U.S.C. § 102(b); see also Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1379 (Fed.Cir.2005). Whether a patent
The analysis for the "on sale" bar proceeds much the same way as that of the "public use" bar. Pursuant to 35 U.S.C. § 102(b), the on sale bar applies when, prior to the critical date, (1) an invention is ready for patenting and (2) the claimed invention is the subject of a definite sale or a commercial offer for sale. Hamilton Beach Brands, Inc. v. Sunbeam Prods. Inc., 726 F.3d 1370, 1374 (Fed.Cir. 2013). As is discussed above, the '767 and '263 designs were already in practice and therefore meet Pfaff's "ready for patenting" requirement. Also as is described above, Woodard has demonstrated by clear and convincing record evidence that Pride sold the designs more than one year before the applications for their patents were filed. Evidence of a single sale is sufficient to trigger the "on sale" bar. In re Caveney, 761 F.2d 671, 676 (Fed.Cir.1985). As such, summary judgment as to the invalidity of the '767 and '263 patents based on the "on-sale" bar is also warranted.
"A design patent protects the nonfunctional aspects of an ornamental design as seen as a whole and as shown in the patent." Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1371 (Fed.Cir.2006). Design patent infringement is a question of fact which the patent holder must prove by a preponderance of the evidence. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed. Cir.1993). Determining whether a design patent is infringed is a two-step process. First, when appropriate, the design patent's claims are construed.
The '778 patent is for a furniture leg ornamentation. The patented design is composed of a relatively large cast leaf with three ring structures at its base. This leaf/ring structure is connected to a chair arm with lashings that are laid in a distinctive pattern. Plaintiff alleges that Defendants infringed the patent only in the Defendant's Jumby Bay chairs by copying the bamboo wrapping pattern disclosed in the patent. [DE 30, p. 3]. A valid claim of infringement cannot lie under these facts.
Infringement is assessed from the vantage of the ordinary observer. The ordinary observer is one familiar with the prior art. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295 (Fed.Cir.2010). Bamboo wrapping has been practiced elsewhere in the prior art of chairs in the tropical motif. See e.g., U.S. Patent D498,069 S [DE 65-2, p. 14]; U.S. Patent D495,512 S [DE 65-2, p. 38]; U.S. Patent D512,233 S [DE 65-2, p. 41]. No ordinary observer could conclude that the wrapping pattern of the design itself was such that a similar wrapping pattern would cause confusion between the patented design and the accused chair.
Moreover, a design patent protects "overall designs," not individual features of designs. Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239-41 (Fed.Cir.2009). Accordingly, when courts evaluate design infringement claims they look to similarities in overall design, "not similarities of ornamental features in isolation." Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1372 (Fed.Cir.2006). Any ordinary observer would regard the leaf and ring structure as the most distinctive aspect of the overall design. None of the accused chairs are alleged to contain the prominent leaf and ring structure. Given the complete absence of such a structure or one comparable to it, there is no evidentiary basis to find similarity or confusion between the patented design and the accused products. As such, summary judgment as to non-infringement of the '778 patent is required.
The design of the '293 patent is for a chair with four legs and two arms, done in the tropical motif. The accused device, the Jumby Bay Cushion Chair, is also a chair with four legs, two arms, in
In contrast to the linearity of the '293 design, the overall aesthetic of accused device is one of wide, arching curves. Two half circles joined by an upper and lower convex and concave segments make up the rear of the chair. The rounded, convex/concave motif is reiterated in the chair's underside. Two parabolic bows connect the chair's four legs and meet at their vertices. The only instance of straight lines on the accused device is at the chairs arms, which are slightly downwardly bent at their ends. By contrast, the arms of '293 design have a sudden upward curve at their ends. Further, on closer inspection, an observer would notice that the '293 design calls for casts of knots at the arms and legs meant to enhance the impression that the chair is made from bamboo. The accused device does not have these embellishments or anything similar. Given the marked dissimilarities in the overall designs of the '293 patent and the accused device, no reasonable juror properly applying the objective observer test could find that the Jumby Bay Cushion chair infringes on the '293 patent. As such, summary judgment is warranted.
The first two patents, '767 and '263, are invalid because each of three separate bars set forth in 35 U.S.C. § 102(b) applies. Based on the record before the Court, the undisputed evidence underscores that no reasonable ordinary observer having knowledge of the prior art could find that the accused chairs infringe the second two patents, '778 and '293. Accordingly, it is
ORDERED THAT
Defendant's Motion for Partial Summary Judgment [DE 61] is
