Summary
holding a design patent invalid at the claim construction stage based on indefiniteness, and noting that while "[c]laim construction generally resolves disputes over the meaning of the patent, . . . in some cases, the patent is so lacking in clarity as to be invalid as indefinite."
Summary of this case from Jenny Yoo Collection, Inc. v. Essense of Australia, Inc.Opinion
Case No. 6:13-CV-02181-AA
03-02-2015
ECLECTIC PRODUCTS, INC., an Oregon domestic business corporation, Plaintiff, v. PAINTERS PRODUCTS, INC., a California domestic business corporation, Defendant.
Dennis W. Percell, Erin E. Gould, Arnold Gallagher, P.C. 800 Willamette Street, Suite 800 Eugene, Oregon 97401 Alex C. Johnson, Jr. Kelly R. Lusk Marger Johnson & McCollom, P.C. 210 SW Morrison Street, Suite 400 Portland, Oregon 97204 Attorneys for plaintiff James C. Chaney The Chaney Firm LLC 777 High Street, Suite 280 Eugene, Oregon 97401 Attorney for defendant
OPINION AND ORDER Dennis W. Percell,
Erin E. Gould,
Arnold Gallagher, P.C.
800 Willamette Street, Suite 800
Eugene, Oregon 97401
Alex C. Johnson, Jr.
Kelly R. Lusk
Marger Johnson & McCollom, P.C.
210 SW Morrison Street, Suite 400
Portland, Oregon 97204
Attorneys for plaintiff James C. Chaney
The Chaney Firm LLC
777 High Street, Suite 280
Eugene, Oregon 97401
Attorney for defendant AIKEN, Chief Judge:
The Court is called upon to construe a design patent for an applicator cap on a tube dispenser used for spackling paste, U.S. Design Patent D482,962 ("the 962 Patent"). Plaintiff Eclectic Products, Inc. ("Eclectic") brought this action against defendant Painters Products, Inc. ("Painters"), seeking a declaratory judgment as to whether defendant's 962 Patent is valid and enforceable, and whether plaintiff has infringed on it under 35 U.S.C. § 271. In response, Painters asserts its patent is valid and that Eclectic infringed on it. Def.'s Cl. Construction Br. 1. On February 22, 2014, the Court held a claim construction hearing. Based on the parties' briefs, other filings, and oral arguments, the Court holds the design patent invalid for indefiniteness.
STANDARD
In a patent case, a court first must construe the patent claim before the trier of fact can decide issues of infringement. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970, 977-79 (Fed. Cir. 1995) (en banc). "The construction of claims is simply a way of elaborating the normally terse claim language in order to understand and explain, but not to change, the scope of the claims." Embrex, Inc. v. Service Engineering Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000) (citation and internal quotation marks omitted). Claim construction is a matter of law, and rules of construction differ depending on whether the case concerns a utility or a design patent. Markman, 52 F.3d at 979; Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008). Under U.S. patent laws, utility patents cover "new and useful" inventions while design patents protect only the appearance of inventions, specifically, "new, - original and ornamental design[s]" for articles of manufacture. 35 U.S.C. §§ 101, 171; see International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1238 (Fed. Cir. 2009) (contrasting utility patents with design patents). In design patents, inventors define their claims with illustrations. 37 C.F.R. § 1.152. Although courts typically must provide detailed verbal construction of utility patents, courts are encouraged to forgo that for design patents and rely on patent illustrations as much as possible. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008). Both the Supreme Court and the Patent and Trademark Office have recognized that 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 (1886); Manual of Patent Examining Procedure § 1503.01 (8th ed. 2006)("as a rule the illustration in the drawing views is its own best description"). Nonetheless, a court has discretion to provide verbal elaboration if "necessary or helpful." Egyptian Goddess, 543 F.3d at 680.
Courts may also determine whether patents are invalid for indefiniteness as part of their "duty as the construer of patent claims." Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1376 (Fed. Cir. 2001) abrogated on other grounds by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 "(2014); ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012) ("indefiniteness is a question of law and in effect part of claim construction"). Claim construction generally resolves disputes over the meaning of the patent, but, in some cases, the patent is "so lacking in clarity as to be invalid as indefinite." Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 705 (Fed. Cir. 1998). Because patents are presumed to be valid, the challenger bears "the evidentiary burden to show facts supporting a conclusion of invalidity" by "clear and convincing evidence." Young v. Lumenis, 492 F.3d 1336, 1344 (Fed. Cir. 2007).
BACKGROUND
In 1994, Kurtis Koptis received a design patent for a tube dispenser with a sponge applicator tip and clear plastic cap, U.S. Design Patent D351,338 ("the 338 Patent"), and two years later, he obtained a utility patent for the same invention, U.S. Utility Patent 5, 577, 851 ("the 851 Patent"). Pl.'s Cl. Construction Br. Ex. #4, at 2 and Ex. #7, at 2; Def.'s Cl. Construction Br. Ex. #1, at 3-5. Koptis assigned patent rights to his company, Painters Products, and in 1996, Painters entered into an agreement that gave Eclectic Products "the exclusive license to manufacture, distribute, market and sell a nail hole filler spackling compound using the Dispenser" design and technology and the Painters label. Compl. 3; Def.'s Cl. Construction Br. Ex. #1, at 3-5. In exchange, Eclectic agreed to pay royalties to Painters until at least the end of the 338 Design Patent's 14-year term. Id.
The complete 338 Patent is attached hereto as Appendix 1.
The complete 851 Patent is attached hereto as Appendix 2.
In his declaration, Koptis explains the invention's purpose as allowing a user to apply spackling paste directly from the tube. Def.'s Cl. Construction Br. Ex. #1, at 4. When a user squeezes the tube, "paste is extruded through the hole in the center of the angled sponge" on the applicator tip. Id. "[T]he flat surface of the sponge allows the paste to be pushed into a nail hole or other gap in a surface then leveled and smoothed without the need for any other tools." Id.
The parties supply conflicting information about the term of the licensing agreement. Compl. 5; Def.'s Cl. Construction Br. Ex., #1, at 5; Def.'s Cl. Construction Br. 2. Thus far, neither party has provided the licensing agreement to clarify the precise expiration date.
Pursuant to the agreement, Eclectic began manufacturing a "Painters Nail Hole Filler" product that used the patented tube dispenser design. Def.'s Cl. Construction Br. 2; Pl.'s Cl. Construction Br. Ex. #5. However, Eclectic experienced problems with the dispenser's clear plastic snap-on cap, which often fell off during shipping, retailing, and storage. Def.'s Cl. Construction Br. Ex. #1, at 5; Def.'s Cl. Construction Br. 2; Compl. 3. The parties each claim credit for solving the problem by replacing the product's snap-on cap with a screw-on cap that attached via threading on the neck of the applicator tip. Compl. 3; Def.'s Cl. Construction Br. 2; Def.'s Cl. Construction Br. Ex. #1, at 5-6. In 2002, Koptis applied for another design patent reflecting the change to the dispenser, and Patent 962 issued on Dec. 2, 2003. Def.'s Cl. Construction Br. Ex. #1, at 5-6; Compl. 4. Around 2012, after the initial 338 Design Patent had expired, disputes arose between the parties. Def.'s Cl. Construction Br. 2; Compl. 5. Eclectic notified Painters that the licensing agreement ended with the expiration of the 338 Patent, ceased making royalty payments, and began manufacturing another product, "GOOP Nail Hole Filler." Compl. 5; Def.'s Cl. Construction Br. 3; Def.'s Cl. Construction Br. Ex. #1, at 13. Painters claimed the licensing agreement extended until the expiration of the new 962 Design Patent, and not the earlier design patent. Def.'s Cl. Construction Br. 3. On Sept. 5, 2013, Painters initiated an arbitration proceeding in Riverside County, California, claiming infringement, breach of contract, misappropriation, fraud, and other wrongdoing by Eclectic. Compl. 5, 17.
The complete 962 Patent is attached hereto as Appendix 3.
In its claim construction brief, Painters stated that the arbitration was dismissed on procedural grounds in May 2014 and that Painters was seeking to have the dismissal set aside. Def.'s Cl. Construction Br. 1. It is unclear whether Painters succeeded.
On Dec. 11, 2013, Eclectic filed the present complaint, seeking a declaratory judgment as to whether Painters' 962 Design Patent is valid and enforceable, and whether Eclectic has infringed under 35 U.S.C. § 271. Compl. 8-9. On Nov. 21, 2014, Eclectic filed its claim construction brief which asks the Court to hold the 962 Patent invalid on the "grounds of either indefiniteness or-functionality. Pl.'s Cl. Construction Br. 19. Alternatively, Eclectic requests that the Court to construe the patent to cover only the top portion of the pictured tube dispenser. Id. In its brief, Painters argues the patent is valid and urges the Court to interpret the patent as issued and without limitations. Def.'s Cl. Construction 4-7.
DISCUSSION
The Court first addresses whether the patent is invalid for indefiniteness. In order to be valid, a patent must include "one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention." 35 U.S.C. §§ 112(b), 171(c). Recently, the Supreme Court enunciated a new and stricter standard for patent validity, holding that a patent does not satisfy the definiteness requirement merely because "a court can ascribe some meaning to a patent's claims." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 (2014). A patent must "inform, with reasonable certainty, those skilled in the [relevant] art about the scope of the invention." Id. at 2124. Otherwise, the patent is invalid. This standard provides "for a modicum of uncertainty" in patent claims to incentivize inventors to innovate, but requires "clear notice of what is claimed, thereby appris[ing] the public of what is still open to them." Id. at 2128, 2129; Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). Courts must evaluate definiteness from the perspective of someone skilled in the relevant field and in light of the patent's specification and prosecution history. Nautilus, 134 S. Ct. At 2128.
The Section 112 standard for definiteness applies to utility and design patents alike. 35 U.S.C. § 171(c). Apple, Inc. v. Samsung Electronics Co., 932 F. Supp. 2d 1076, 1084-85 (N.D. Cal. 2013); Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1440 (Fed. Cir.1984), overruled on other grounds by Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008).
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The 962 Patent provides a brief verbal description of its claim: "The ornamental design for an applicator cap, as shown and described." The patent then supplies the following Figures 1-6, showing a front elevational, left side, rear, right, top, and bottom views of the design:
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In assessing a patent's definiteness, a court considers first and foremost intrinsic evidence, which includes the claim language, the specifications, and any prosecution history of the patent in evidence. Young, 492 F.3d at 1346. Courts may also consider extrinsic evidence, "evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises," but it has less evidentiary value. Philips v. AWH Corp., 415 F.3d 1303, 1313, 1315 (Fed. Cir. 2005) (en banc). Here, intrinsic evidence establishes the 962 Patent as fatally indefinite. The words of the patent lay claim to "an applicator cap, as shown," but the drawings depict an entire tube dispenser with a threaded neck and a sponge tip but, notably, no cap that fits over the tube. This conflict between the patent's verbal and visual descriptions creates uncertainty about the claim's meaning. The patent, on its face, fails to provide notice of what is claimed.
Moreover, a closer examination of the verbal portion of the claim does not resolve the ambiguity. In construing words such as "applicator cap," courts generally give them "their ordinary and customary meaning," defined as "how a person of ordinary skill in the art understands a claim term." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Eclectic argues that the ordinary and customary meaning is: "a protective covering fitted over and/or attached to the top of the applicator." Pl.'s Resp. Cl. Construction Br. 9. Painters, on the other hand, does not provide any interpretation of the term "applicator cap," and nothing in the intrinsic record indicates a different meaning. In fact, the defendants, who presumably possess "ordinary skill" in this field, appear to share Eclectic's interpretation of the term "applicator cap." Painters' claim construction brief repeatedly uses the term "cap" to describe the removable clear plastic covering protecting the dispenser's applicator tip. See, e.g., Def.'s Cl. Construction Br. 2 (mentioning "the clear plastic protective cap which covered the [dispenser's] applicator" and "the screw-on protective cap which engaged threading to be molded into the neck of the product tube"). In an attached declaration, Koptis refers to "the original clear cap which fitted over the applicator end of the product" and states that he added "threading in the neck of the tube to keep the clear protective cap firmly in place." Def.'s Cl. Construction Br. Ex. #1, at 5. The Court concludes that an individual of ordinary skill in the relevant field would interpret "applicator cap" to refer to a protective covering for an applicator. Yet, the patent drawings do not depict anything of the sort. A skilled artisan examining the 962 Patent is left to conjecture what exactly the inventor intended to claim. As such, the Court holds the 962 Patent invalid for indefiniteness. The Court need not reach the issue of functionality or perform further claim construction.
CONCLUSION
For above reasons, the Court holds the 962 Patent invalid for indefiniteness under 35 U.S.C. § 112(b). Accordingly, the Court ORDERS that the 962 patent be declared invalid and unenforceable and that this action be DISMISSED with prejudice. The clerk is directed to provide copies of this order to all counsel of record and to enter judgment in plaintiff's favor pursuant to Fed. R. Civ. P. 58.
IT IS SO ORDERED.
Dated this 2ND of March 2015.
/s/_________
Ann Aiken
United States District Judge
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