Sofpool, LLC v. KMart Corporation et al

Filing 63

ORDER signed by Judge Lawrence K. Karlton on 5/15/2012 ORDERING the hearing on motions, currently scheduled for 5/21/2012 is hereby VACATED 48 , 54 ; plaintiff shall submit a supplemental memorandum no later than 6/4/2012; defendant shall, no later than 6/18/2012, either: file a statement that it has no objection to the claim construction offered by plaintiff and requesting this motion to be restored to the calendar, or notice a claim construction ("Markman") hearing in accordance with the court's local rules governing noticed motions. (Reader, L)

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UNITED STATES DISTRICT COURT
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FOR THE EASTERN DISTRICT OF CALIFORNIA
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10 SOFPOOL LLC, a Limited
Liability Company,
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NO. CIV. S-10-3333 LKK/JFM

Plaintiff,
v.

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14 KMART CORPORATION, a
Michigan Corporation, and
15 BIG LOTS, INC., an Ohio
Corporation,
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O R D E R

Defendants.

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/

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For the reasons stated below, the hearing in this matter,

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20 currently scheduled for May 21, 2012, will be vacated.
21 I.

BACKGROUND

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In

its

First

Amended

Complaint,

plaintiff

Sofpool,

LLC,

23 alleges that defendants Kmart Corp. and Big Lot Stores, Inc.,
24 infringed its design patent1 for an oval, above-ground swimming
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“Design” patents are granted pursuant to 35 U.S.C. § 171:
“Whoever invents any new, original and ornamental design for an
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1 pool, U.S. Patent No. D480,817 S (the ‘817 claimed patent).2
2 Specifically, plaintiff alleges that the “Summer Escapes” pool,
3 sold by defendants, infringes the patent.

In its Answer and

4 Counterclaim, Kmart denies that it infringed the ‘817 claimed
5 patent.

It also asserts that the ‘817 claimed patent is invalid

6 under 35 U.S.C. §§ 102 (“novelty”), 103 (“non-obvious subject
7 matter”),3 and 112 (“specification”).
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Plaintiff has now moved for summary judgment that defendants

9 have infringed its patent, and that the patent itself is “non10 obvious.”

Defendants have cross-moved for summary judgment that

11 they have not infringed the patent, and that the patent itself is
12 invalid because it was “obvious” in light of the prior art.
13 II.

THE ‘817 DESIGN PATENT

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Plaintiff’s Claim for the ‘817 claimed patent is as follows,

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article of manufacture may obtain a patent therefor, subject to the
conditions and requirements of this title. [¶] The provisions of
this title relating to patents for inventions shall apply to
patents for designs, except as otherwise provided.” In contrast,
“utility” patents are granted pursuant to 35 U.S.C. § 101 (“Whoever
invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title”).
See Int’l Seaway
Trading Corp. V. Walgreens Corp., 589 F.3d 1233, 1238 (Fed. Cir.
2009) (comparing requirements for design versus utility patents).
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Infringement of design patents is prohibited by 35 U.S.C.
§§ 271 (“infringement of patent”) and 289 (“additional remedy for
infringement of design patent”).
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“A patent may not be obtained ... if the differences between
the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”
35 U.S.C. §
103(a).
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1 in its entirety: “The design for an above-ground swimming pool, as
2 shown and described,” followed by eleven (11) drawings which depict
3 three “embodiments” of the patent.

Complaint (Dkt. No 1) Exh. A.4

4 III. ANALYSIS
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The court is aware that “design patents are typically claimed

6 according to their drawings.”

Richardson v. Stanley Works, Inc.,

7 597 F.3d 1288, 1294 (Fed. Cir. 2010).

However, it is also the case

8 that “trial courts have a duty to conduct claim construction in
9 design

patent

cases,

as

in

utility

patent

cases.”

Egyptian

10 Goddess, Inc. v. Swisa, Inc. , 543 F.3d 665, 679 (Fed. Cir. 2008)
11 (en banc).

In a design patent case, the “claim construction must

12 be adapted to a pictorial setting.”
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Richardson, 597 F.3d at 1294.

It is the court’s understanding that the design patent covers

14 only the ornamental aspects of the design, not the functional
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See Richardson, 597 F.3d at 1294 (“we have made clear

16 that a design patent, unlike a utility patent, limits protection to
17 the ornamental design of the article”). Accordingly, in construing
18 the ‘817 claimed patent, this court is required to factor out the
19 “functional aspects” of the design.

See Richardson, 597 F.3d at

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The patent does not expressly limit the claim to the
“ornamental” design.
However, by law, the design patent only
covers the ornamental aspects of the design, so its omission of
that language would appear to make no difference. See Richardson
v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010) (“The
district court here properly factored out the functional aspects
of Richardson's design as part of its claim construction. By
definition, the patented design is for a multi-function tool that
has several functional components, and we have made clear that a
design patent, unlike a utility patent, limits protection to the
ornamental design of the article”).
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1 1293 (“The district court here properly factored out the functional
2 aspects of Richardson's design as part of its claim construction”).
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However, neither side in this case has offered a construction

4 of the ‘817 claimed patent to assist the court in determining how
5 to construe the patent.

Such assistance would help the court

6 understand which aspects of the ‘817 claimed patent are ornamental,
7 and which are functional.

In this regard, the ornamental versus

8 functional issues that come immediately to mind are the oval shape,
9 the struts along the sides, the bulges along the sides, the
10 sidewall angles, the tubular top, and the segmented appearance of
11 the claimed design.

This assistance would also help the court

12 understand what appear to be technical aspects of the drawings,
13 such as the meaning, if any, of the lines or hatch-marks that ring
14 the inside and outside of the design (as well as whether they
15 depict functional or ornamental aspects of the design).

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As it

16 stands, the parties have, in essence, invited the court to guess at
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a trial court can usefully guide the finder of fact by
addressing a number of other issues that bear on the
scope of the claim.
Those include such matters as
describing the role of particular conventions in design
patent drafting, such as the role of broken lines;
assessing
and
describing
the
effect
of
any
representations that may have been made in the course of
the prosecution history; and distinguishing between
those features of the claimed design that are ornamental
and those that are purely functional.

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Egyptian Goddess provided some guidance on this:

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir.
2008).
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1 these matters, but the court declines the invitation.
2 IV.

CONCLUSION

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For the foregoing reasons:

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1.

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The hearing on these motions, currently scheduled for May
21, 2012, is hereby VACATED.

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Plaintiff shall, no later than June 4, 2012, submit a

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supplemental memorandum “highlight[ing] the ornamental

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aspects” of the ‘817 claimed patent and identifying which

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aspects of the design patent drawings depict functional

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aspects of the design.6

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lengthy or detailed opus, but simply a guide which the

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court can use in interpreting the drawings in the ‘817

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claimed patent.

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3.

The court is not requesting a

Defendant shall, no later than June 18, 2012, either (1)

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file a statement that it has no objection to the claim

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construction offered by plaintiff and requesting this

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motion to be restored to the calendar, or (2) notice a

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claim construction (“Markman”)7 hearing in accordance

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with the court’s local rules governing noticed motions.

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IT IS SO ORDERED.

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DATED:

May 15, 2012.

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Richardson, 597 F.3d at 1294 (“the purpose of the [district
court’s] claim construction was simply to highlight the ornamental
aspects of Richardson's design”).
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See Markman v. Westview Instruments, 517 U.S. 370 (1996).
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