Furrion Property Holding Limited et al v. Way Interglobal Network LLC
Filing
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OPINION AND ORDER: The patent claim terms presently at issue shall be construed as outlined in Order. Signed by Judge Philip P Simon on 4/27/2021. (mrm)
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF INDIANA
SOUTH BEND DIVISION
FURRION PROPERTY HOLDING
LIMITED and FURRION LIMITED,
Plaintiffs,
vs.
WAY INTERGLOBAL NETWORK,
LLC,
Defendant.
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Cause No. 3:19-CV-566-PPS-MGG
OPINION AND ORDER
Plaintiffs Furrion Property Holding Limited and a related company sued Way
Interglobal alleging that Way infringed on their utility patent and multiple design
patents. The parties are competitors in the recreational vehicle appliance market and the
patents in dispute describe an oven or portions of an oven for use in RVs. I held a
claims construction hearing in January to help me discharge my duty to construe the
claims of the various patents at issue in this case.
As discussed further below, claims construction for utility patents is different
from claims construction for design patents. After setting out the governing standards,
I’ll start by addressing the claims in the one utility patent at issue in this case. [U.S.
Patent No. 10,527,292 (the ‘292 Patent)]. I will then turn my attention to the several
design patents at the center of this dispute. [U.S. Design Patent Nos. D839,038 (the
D’038 Patent); D851,978 (the D’978 Patent); D851,979 (the D’979 Patent); D851,990 (the
D’990 Patent), and D872,516 (the D’516 Patent)].
The Governing Legal Standards
The exclusivity right of a patentholder to prevent others from making, using, or
selling the patented invention is granted in exchange for the “full disclosure” of the
invention. Markman v. Westview Instruments Inc., 517 U.S. 370 (1996). This means that “a
patent must describe the exact scope of an invention and its manufacture to ‘secure to
[the patentee] all to which he is entitled, [and] to apprise the public of what is still open
to them.’” Id. at 373 (quoting McClain v. Ortmayer, 141 U.S. 419, 424 (1891)). These
requirements are met by the “specification” of the patent, which describes the invention
“in such full, clear, concise, and exact terms as to enable any person skilled in the art . . .
to make and use the same,” and by the patent’s “claims,” which “particularly poin[t]
out and distinctly clai[m] the subject matter which the applicant regards as his
invention.” 35 U.S.C. § 112.
Someone bringing an allegation of infringement must show that a patent’s claim
“‘covers the alleged infringer’s product or process,’ which in turn necessitates a
determination of ‘what the words in the claim mean.’” Markman, 517 U.S. at 374
(quoting H. Schwartz, Patent Law and Practice 1, 80 (2d ed. 1995)). The two steps of
infringement analysis are: (1) “determining the meaning and scope of the patent claims
asserted to be infringed,” and (2) “comparing the properly construed claims to the
device accused of infringing.” Markman v. Westview Instruments, 52 F.3d 967, 976 (Fed.
Cir. 1995); See also Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
1111, 1115 (Fed. Cir. 2004).
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For better or worse, step one—claims construction—is a matter for the court.
Markman, 517 U.S. at 390. What this means is that where the meaning of claim terms is
disputed, the court resolves the dispute to “clarify and explain what the claims cover.”
Baxter Int’l, Inc. v. CareFusion Corp., 2019 WL 1897063, at *1 (N.D. Ill. Apr. 29, 2019)
(citing Terlep v. Brinkmann Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005)); see also Markman,
517 U.S. at 373. “Claim construction seeks to ascribe the ‘ordinary and customary
meaning’ to claim terms as a person of ordinary skill in the art would have understood
them at the time of invention.” Sumitomo Dainippon Pharma Co., v. Emcure Pharm. Ltd.,
887 F.3d 1153, 1157 (Fed. Cir. 2018). “As a general rule, the ordinary and customary
meaning controls unless ‘a patentee sets out a definition and acts as his own
lexicographer, or . . . the patentee disavows the full scope of a claim term either in the
specification or during prosecution.’” Id. (quoting Thorner v. Sony Computer
Entertainment Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
As the Federal Circuit teaches in Sumitomo, “[t]he plain claim language marks the
starting point for our analysis.” Sumitomo, 887 F.3d at 1157. But applying the
understanding of a person of ordinary skill in the art requires consideration of the
disputed term “not only in the context of the particular claim in which the disputed
term appears, but in the context of the entire patent, including the specification.” Phillips
v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). “[T]he context in which a term is
used in the asserted claim can be highly instructive.” Id. at 1314. The specification is
“always highly relevant to the claim construction analysis,” and is usually dispositive
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as “it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582. (Fed. Cir. 1996); see also Phillips, 415 F.3d at 1315.
Discussion
As noted above, there are six different patents at issue in this case—one utility
patent and five design patents. I’ll start with the utility patents before turning to the
design patents.
1. Claims to be Construed in Furrion’s Utility Patent (the ’292 Patent)
The parties disagree as to the construction of two claim terms in Furrion’s ‘292
Patent, specifically the terms “hinge” and “vent.” Generally, Furrion argues that each
term needs no construction and should be construed according to its ordinary and plain
meaning, while Way argues that each term should be construed more narrowly. The
disputed language will be highlighted within the language of the patent.
1. A gas range comprising: an oven comprising: an oven cavity; and an oven
exhaust; a cooktop disposed above and connected to the oven, wherein the
oven exhaust extends from the oven cavity to the cooktop, the cooktop
comprising: a gas burner having a gas burner height; and a cooking grate
disposed above the gas burner, the cooking grate having a cooking grate
height; a gas oxidation height from about 10 mm to about 40 mm wherein
the gas oxidation height is the difference between the cooking grate height
and the gas burner height; a lid coupled to the cooktop, the lid having a
front section and rear section coupled to the front section, the lid configured
to cover the cooking grate in a closed position and to not cover the cooking
grate in the open position, a vent positioned in the cooktop and connected
to the oven exhaust, and a hinge coupling the rear section of the lid to the
cooktop, the hinge defining a pivot axis disposed below the vent.
13. A counter comprising: a gas range positioned within a counter, the gas
range comprising: an oven comprising: an oven cavity; and an oven
exhaust; a cooktop disposed above and connected to the oven, wherein the
oven exhaust extends from the oven cavity to the cooktop, the cooktop
comprising: a gas burner having a gas burner height; and a cooking grate
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disposed above the gas burner, the cooking grate having a cooking grate
height; a gas oxidation height from about 10 mm to about 40 mm wherein
the gas oxidation height is the difference between the cooking grate height
and the gas burner height; a lid coupled to the cooktop, the lid having a
front section and rear section coupled to the front section, the lid configured
to cover the cooking grate in a closed position and to not cover the cooking
grate in the open position, a vent positioned in the cooktop and connected
to the oven exhaust, and a hinge coupling the rear section of the lid to the
cooktop, the hinge defining a pivot axis disposed below the vent; and a
countertop forming a level top surface of the counter and positioned on at
least one side of the gas range, wherein the highest portion of the lid is
substantially even with the level top surface of the counter.
First, the challenged phrase described in Claims 1 and 13 is “a hinge coupling the
rear section of the lid to the cooktop, the hinge defining a pivot axis disposed below the
vent.” Furrion argues that the term “hinge,” as used here, needs no construction
because it is a commonly understood word in the English language and there is no
intrinsic evidence that the patent uses the term in any way other than its common
meaning. Way contends that the term “hinge” should be construed to mean “a hinge
coupling the rear section of the lid to the cooktop, where the hinge defines an axis about
which it rotates that is disposed below the vent.” [DE 80.] The main difference between
the parties’ two constructions lies around “pivot access” compared to “an axis about
which it rotates.”
Furrion also seeks the proposed claim construction of the “vent” to be its plain
and ordinary meaning whereas Way proposes the claim construction as “a group of
openings that allow oven exhaust to pass through.” [DE 80.] Furrion argues that “vent”
is a common term and is used here in its common usage, without any technical or
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specialized meaning. Specifically, a vent allows exhaust to flow through the opening as
a means to release the exhaust from the oven.
Mercifully, at the conclusion of the Markman hearing, the parties expressed to the
court a compromise where “vent” would be understood as its plain and ordinary
meaning and that “hinge” would be modified to Way’s interpretation. [DE 93 at 95-96.]
Having considered the parties’ briefs and arguments, I therefore adopt Way’s proposed
construction of “hinge” in Claims 1 and 13 of the ‘292 Patent to mean “a hinge coupling
the rear section of the lid to the cooktop, where the hinge defines an axis about which it
rotates that is disposed below the vent.” And I construe the term “vent” in Claims 1 and
13 of the ‘292 Patent as needing no further construction, and thus the term’s plain and
ordinary meaning will be adopted as contemplated by Furrion.
2. Claims to be Construed in the Design Patents
Unlike utility patents, courts have recognized that design patents “typically are
claimed as shown in drawings,” and that claim construction “is adapted accordingly.”
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008). This is because it is
often difficult to capture in our lexicon what is depicted in a drawing. In other words, a
picture is usually worth a thousand words. Nonetheless, the process is the same as
with utility patents: the analysis considers (1) “the meaning and scope of the patent
claims asserted to be infringed,” and (2) “comparing the properly construed claims to
the device accused of infringing.” Markman, 52 F.3d at 976.
As noted, the law is clear that a design is better represented by an illustration
“‘than it could be by any description and a description would probably not be
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intelligible without the illustration.’” Egyptian Goddess, 543 F.3d at 679 (citing Dobson v.
Dornan, 118 U.S. 10, 14 (1886)). “Given the recognized difficulties entailed in trying to
describe a design in words, the preferable course ordinarily will be for a district court
not to attempt to ‘construe’ a design patent claim by providing a detailed verbal
description of the claimed design.” Egyptian Goddess, 543 F.3d at 679. “[M]isplaced
reliance on a detailed verbal description of the claimed design risks undue emphasis on
particular features of the design rather than examination of the design as a whole . . .
Depictions of the claimed design in words can easily distract from the proper
infringement analysis of the ornamental patterns and drawings.” Crocs, Inc. v. Int’l Trade
Comm’n, 598 F.3d 1294, 1302 (Fed. Cir. 2010) (internal citation omitted). “[T]he
illustration in the drawing views is its own best description.” Id. at 1303 (citing Manual
of Patent Examining Procedure § 1503.01 (8th ed. 2006). However, “[t]he scope of a design
patent does not extend to any functional elements.” Shure Inc. v. Clearone, Inc., 2020 WL
6074233, at *1 (D. Del. Oct. 15, 2020) (citing Richardson v. Stanley Works, Inc., 597 F.3d
1288, 1293-94 (Fed. Cir. 2010)).
Furrion points to two cases that I find particularly helpful here: Carlini Enters.,
Inc. v. Paul Yaffe Design, Inc., 2014 WL 4060026 (C.D. Cal. Aug. 15, 2014) and Depaoli v.
Daisy Mfg. Co., Inc., 2009 WL 2145721 (D. Mass. July 14, 2009). In Carlini, the claim
construction at issue was for “motorcycle handlebars of a certain design as shown in
Figures 1 to 7 [of the first patent]” and “motorcycle handlebars of a certain design as
shown in Figures 1 to 8 of [the second patent].” Carlini, 2014 WL 4060026, at *1. The
patent in Carlini did not describe the entire motorcycle, but instead focused on one
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portion of the motorcycle: the handlebars. Id. The court construed the claim in the first
patent as “The ornamental design for motorcycle handlebars, as shown in Figures 1 to
7” and the second patent as “The ornamental design for motorcycle handlebars, as
shown in Figures 1 to 8.” Id. at *4. Similarly, the claim construction in Depaoli states
“[a]n ornamental design for an air gun sight, as shown and described in Figures 1 and 2
of the patent.” Depaoli, 2009 WL 2145721, at *1. The claim construction in Depaoli did not
refer to the entire air gun, but specifically focused on what was included in the patent:
the gun’s sight. Id. The court construed the claim in this case as “an ornamental design
for an air gun sight, as shown and described in Figures 1 and 2 of the patent.” Id. at *10.
Here, Furrion’s proposed construction for several of the design patents is for
what looks like an entire oven. The only reason the drawings show an entire oven is
because they make liberal use of broken lines. But the focus for claims construction
purposes must be on the solid lines only. This is because broken lines in a drawing for a
utility patent are not considered part of the claimed design. Often, they are included to
help provide perspective, but they are not part of what is being claimed. See 37 C.F.R. §
1.152 (“Broken lines may be used to show visible environmental structure but may not
be used to show hidden planes and surfaces that cannot be seen through opaque
materials.”); Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001)
(drawings showing drawer pulls in broken lines excludes the door pulls from the
claimed design). As the Federal Circuit has repeatedly stated: “If features appearing in
the figures are not desired to be claimed, the patentee is permitted to show the features
in broken lines to exclude those features from the claimed design, and the failure to do
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so signals inclusion of the features in the claimed design.” Contessa Food Products, Inc. v.
Conagra, Inc., 282 F.3d 1370, 1378 (Fed. Cir. 2002) (abrogated on other grounds by
Egyptian Goddess).
As mentioned, the design patents in this case are ladened with broken lines.
Helpfully, Furrion’s expert witness Paul Hatch added color to aid the viewer in
determining what is covered by the patent in his expert report. [DE 62-1.] The color
images are extremely helpful in understanding the scope of the patent and
distinguishing it from the broken lines.
Furrion’s Patent D’978 covers the front portion of the oven’s design, including its
reflective glass front window, the hinges for the top glass cover, and generally the
façade of the oven near the top. Furrion suggests D’978 should be construed as the
“ornamental design for an oven as shown in Figures 1-7.” But as can be seen below,
such a construction would be misleading because vast parts of the oven (the knobs, the
front arm or handle, etc.) are presented with broken lines, indicating those portions of
the product have not been claimed as part of the patent. Additionally, some of the areas
filled in color include broken lines, obscuring what is and is not covered by the patent.
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Furrion’s Patent D’979 is the bracket on the top rear of the oven. The bracket is
visible in the several of the Figures in other patents but covered by its own patent. The
bracket is used to secure the glass cover of the grate portion of the range displayed in
other illustrations contained in the D’038 Patent and the D’978 Patent. Most of the lines
in Furrion’s figures are solid.
Out of all of Furrion’s patents, D’978 and D’979 have the most solid lines.
By contrast, the illustrations in Furrion’s other patents are comprised mostly of
broken lines, which are difficult to decipher. The best example being the D’990 Patent.
Broken lines comprise most of the figures and it is difficult to determine what exactly is
depicted. The claimed portions include only small portions of the bracket, namely the
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rectangular portion which is visible on the front of the oven (in the top right portion of
the figure below), as well as portions of the bracket located in roughly the lower lefthand corner of the figure. In Figure 5, there is only a single solid line (near the top left).
The rest of this alignment bracket shown in this figure is represented by broken lines,
indicating it has not been claimed to be part of the patent. The claimed portion of the
flat rectangle is the only portion of the alignment part visible to a user of the oven. After
removing the broken lines, little remains.
Figure 1 (with color)
Figure 1 (solid lines only)
Figure 5 (with color)
Patents D’038 and D’516 similarly show few solid lines. Patent D’038 covers the
top portion of the oven’s design, including its cover, the hinge placement of the cover,
the front façade, and the design of the grate upon which pots rest when the range’s
burners are in use. The remainder of the oven (such as the knobs on the front) in the
figures is represented by broken lines, indicating it has not been claimed to be part of
the patent. Here are representative figures of the D’038 patent (claimed portions are
colored):
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Patent D’516 is also mostly comprised of broken lines and the claimed portions
include only portions of the glass lid and burners. After removing the broken lines, little
remains.
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Here, as with Furrion’s proposed construction of the D’978 patent, Furrion’s
proposed construction of the D’516 patent includes the entire oven, but directs the
viewer to look at the figures to determine what is covered: “The ornamental design for
an oven as shown and described in Figures 1-7.” [DE 67 at 2-4] (Patent ‘979 has Figures
1-9 and Patent ‘516 has Figures 1-8). Way argues that Furrion should not be allowed to
claim the broken lines or mislead a jury. [DE 63 at 6.] As I noted above, it is common
practice in the patent world to include broken lines to provide some perspective on
what is being claimed. See The Manual of Patent Examining Procedure § 1503.02 (8th ed.
2006) (“Unclaimed subject matter may be shown in broken lines for the purpose of
illustrating the environment in which the article embodying the design is used.”). And
indeed, Furrion does not claim that the broken lines are covered under its patent claim.
[DE 66 at 5.]
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Comparing Furrion’s patents to the patents in Carlini, which only display the
handlebars without the entire bicycle indicated in broken lines, the Carlini Figures are
quite clear about what is being protected by the patent. Carlini, 2014 WL 4060026, at *1
(“[T]he patents-in-suit do not disclaim any features by way of broken lines. Thus, the
designs shown in the figures make up the entirety of the claimed designs of the
patents.”). Having reviewed the design patents and their drawings, I find a number of
the drawings show an entire oven identified through broken lines with only small
portions indicated as covered by their respective patent. As shown above, this
confusion mostly dissipates when viewing the images prepared by Furrion’s expert
witness, which fill in the solid lines with different colors and are extremely helpful in
understanding the scope of the patent and distinguishing what is covered from what is
not. [DE 62-1.]
While I understand the necessity of the broken lines in these patents, I find it
necessary to indicate in the claim construction that the unclaimed features are
represented by broken lines, as other courts have done. See Shure, 2020 WL 6074233, at
*9 (construing the claim as “The ornamental design for an array microphone assembly,
as shown in the solid lines and associated claimed surfaces of Figures 1-6 and described
in the specification of the ‘723 patent. The broken lines in Figures 1-6 of the ‘723 patent
form no part of the claimed design. The square shape of the claimed design is
functional.”); Junker v. Med. Components, Inc., 2017 WL 4922291, at *7 (E.D. Pa. Oct. 31,
2017) (“The D’839 Patent claims the ornamental design of a handle for an introducer
sheath, as shown in Figures 1-9. The broken lines in the Figures of the D’839 Patent
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represent unclaimed subject matter.”); Deckers Outdoor Corp v. Romeo & Juliette, Inc., 2016
WL 7017219, at *6 (C.D. Cal. Dec. 1, 2016) (adopting the claim construction for four
ornamental patents as “The ornamental design for a portion of a footwear upper as
shown in the figures of the [relevant design] Patent (FIGS. 1 – [6, 7, 28]), excluding
portions shown in broken lines.”).
Therefore, I will construe each design patent as follows:
U.S. Patent No. D839,038 (the D’038 Patent): “The ornamental design for a
portion of an oven, as shown in Figures 1-7, excluding portions shown in
broken lines.”
U.S. Patent No. D851,978 (the D’978 Patent): “The ornamental design for a
portion of an oven, as shown in Figures 1-7, excluding portions shown in
broken lines.”
U.S. Patent No. D872,516 (the D’516 Patent): “The ornamental design for a
portion of an oven, as shown in Figures 1-8, excluding portions shown in
broken lines.”
U.S. Patent No. D851,979 (the D’979 Patent): “The ornamental design for a
portion of an oven, as shown in Figures 1-9, excluding portions shown in
broken lines.”
U.S. Patent D851,990 (the ’990 Patent): “The ornamental design for a
portion of an oven, as shown in Figures 1-7, excluding portions shown in
broken lines.”
3. Functionality and Indefiniteness
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On a final note, Way argues throughout the claim construction phase that
Furrion’s patents fail due to functionality or indefiniteness. [DE 63, 65.] Furrion
responds that the functionality and indefiniteness arguments regarding overall design
are not appropriately raised at the claim construction stage but may be raised in a
motion for summary judgment. [DE 64, 66.]
“A patent shall be presumed valid” and the burden of establishing invalidity,
which requires clear and convincing evidence, rests upon the party asserting such
invalidity. 35 U.S.C. § 282; TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151,
1157 (Fed. Cir. 2004). “[A] patent is invalid for indefiniteness if its claims, read in light
of the specification delineating the patent, and the prosecution history, fail to inform,
with reasonable certainty, those skilled in the art about the scope of the invention.”
Nautilus Inc. v. Biosig Instruments, Inc. 572 U.S. 898, 901 (2014). “Whether to decide the
issue of invalidity based on indefiniteness at the claim construction stage depends on
the particular circumstances and claims at issue in a given case, and is a matter within a
court’s discretion.” Junker, 2017 WL 4922291, at *2.
After considering the parties’ arguments and based on the circumstances of this
case, I find that deciding the arguments of functionality and indefiniteness now in a
vacuum would be problematic. Therefore, I exercise my discretion and decline to
consider issues of invalidity based on indefiniteness at the claim construction stage. The
parties may raise these issues at summary judgment.
ACCORDINGLY:
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The patent claim terms presently at issue shall be construed as explained above.
SO ORDERED on April 27, 2021.
/s/ Philip P. Simon
PHILIP P. SIMON, JUDGE
UNITED STATES DISTRICT COURT
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