McIntire v. Sunrise Specialty Company

Filing 46

ORDER signed by Judge Lawrence K. Karlton on 10/15/2012 ORDERING that the court issues the following CLAIM CONSTRUCTION: The ornamental design for a toilet bowl, as shown and described by US Patent D534,254 S, and its seven (7) included drawings. (Zignago, K.)

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UNITED STATES DISTRICT COURT
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FOR THE EASTERN DISTRICT OF CALIFORNIA
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10 BRYAN C. McINTIRE, an
individual,
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Plaintiff,
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v.
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SUNRISE SPECIALTY COMPANY,
14 a California corporation,

NO. CIV. S-11-2495 LKK/CKD

O R D E R

Defendant.

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/

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The above-referenced matter came on for an early Markman

18 “claim construction” hearing on October 15, 2012.1
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“[T]rial courts have a duty to conduct claim construction in

20 design

patent

cases,

as

in

utility

patent

cases.”

Egyptian

21 Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008)
22 (en banc), cert. denied, 556 U.S. ___, 129 S. Ct. 1917 (2009).

The

23 point of any claim construction is to assist the district court –
24 and

ultimately

the

jury

–

in

determining

what,

exactly,

is

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See Markman v. Westview Instruments, 517 U.S. 370 (1996).
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1 “claimed” in the patent.

Where, as here, a design patent is

2 involved, a principal goal of claim construction is to “‘factor out
3 the functional aspects’” of the patented design.
4 Stanley

Works,

Inc.,

597

F.3d

1288,

1295

(Fed.

Richardson v.
Cir.

2010);2

5 Egyptian Goddess, 543 F.3d at 2008.3
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However, at oral argument, both sides confirmed that there is

7 no need in this case to factor out any functional aspects of the
8 claimed design patent.

With no such need, the court will rely on

9 the established principle that “‘the illustration in the drawing
10 views is its own best description.’”
11 at 1303, quoting

Crocs, Inc. v. ITC, 598 F.3d

Manual of Patent Examining Procedure § 1503.01

12 (8th ed.2006); Egyptian Goddess, 543 F.3d at 679.4
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Accordingly,

the

court

issues

the

following

CLAIM

14 CONSTRUCTION:
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Quoting Amini Innovation Corp. V. Anthony Cal., Inc., 439
F.3d 1365, 1372 (Fed. Cir. 2006).
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Citing OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d
1396, 1404-05 (Fed. Cir. 1997) (“Where a design contains both
functional and non-functional elements, the scope of the claim must
be construed in order to identify the non-functional aspects of the
design as shown in the patent”) (citations omitted).
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Another reason for engaging in a claim construction for a
design patent is that “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.” Egyptian Goddess, 543 F.3d at 680. Also, the court “can
usefully guide the finder of fact” by, for example, “describing the
role of particular conventions in design patent drafting.” Id.
After reviewing the patent drawings, the court does not believe a
more detailed claim construction than appears in the patent itself
is required.
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The ornamental design for a toilet bowl, as shown and
described by US Patent D534,254 S, and its seven (7)
included drawings.

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IT IS SO ORDERED.

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DATED:

October 15, 2012.

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