Luv N' Care, Ltd. et al v. Regent Baby Products Corp.

Filing 72

OPINION AND ORDER re: 65 MOTION for Judgment as a Matter of Law filed by Regent Baby Products Corp. Regents motion is denied. The Clerk of the Court is directed to close this motion (Docket No. 65). A conference is scheduled for August 23, 2012, at 4:30 p.m. in Courtroom 15C. (Signed by Judge Shira A. Scheindlin on 7/31/2012) (jar)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

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~

LUV N' CARE, LTD. and ADMAR
INTERNATIONAL, INC.,
OPINION AND ORDER

Plaintiffs,

10 Civ. 9492

- againstREGENT BABY PRODUCTS CORP.
d/b/a/ BABY KING,
Defendant.

_--------------------------------------------------

.

)(

SHIRA A. SCHEINDLIN, U.S.D.J.:
I.

INTRODUCTION
Luv n' Care, Ltd. and Admar International, Inc. (collectively, "LNC")

bring this infringcrnent action against Regent Baby Products Corp. d/b/a Baby
King ("Regent"). In April, ajury trial was held before Judge Louis Stanton. The
jury determined that two ofLNC's design patents, D617,465 (''the '465 patent")
and D634,439 (''the '439 patent"), were not primarily dictated by function. I
Regent now moves this Court for judgment as a matter of law on the patents'

See 4/26112 10 Qv. 9492 Verdict Sheet ("Verdict Sheet"), Ex. E to
5/24112 Declaration of David T. Yaegashi, defendant's counsel ("Yaegashi Decl."),
at 1.
1

functionality, or in the alternative, a new trial. For the reasons set forth below,
Regent’s motion is denied.
II.

BACKGROUND
LNC designs and sells baby products internationally.2 Regent is a

nationwide distributor of baby products.3 This action concerns two of LNC’s
design patents, the ‘465 and ‘439 patents.4 The ‘465 patent discloses the entirety
of a child’s drinking cup5 and includes five drawing sheets.6 The ‘439 patent
discloses a cup top7 and includes six drawing sheets.8 The two patents are in the
same patent family.9 Regent argues that the ‘465 and ‘439 patents are invalid
because they are purely functional.10
2

See Complaint ¶ 8.

3

See id. ¶ 7.

4

See Plaintiffs’ Memorandum of Law in Opposition to Motion for
Judgment as a Matter of Law or a New Trial (“Pl. Mem.”), at 4 n.1.
5

See 7/29/11 Letter from Regent to Judge Stanton, Ex. A to Yaegashi

Decl., at 2.
6

See id. at 4.

7

See id. at 2.

8

See id. at 4.

9

See id. at 2.

10

See Defendant’s Memorandum of Law in Support of Judgment as a
Matter of Law or a New Trial (“Def. Mem.”), at 1.
2

The verdict form presented the jury with one question for each design
patent — is the appearance of the design claimed in the patent “primarily dictated
by its function?”11 Regent argues that this question involved claim construction —
a matter for the court, not the jury — and requests that I engage in claim
construction at this time.12 Regent further argues that the verdict was not supported
by the evidence and that Regent was unfairly prejudiced by LNC’s comments
during the trial.13 LNC argues that the jury verdict was supported by sufficient
evidence,14 and that Regent waived its argument that the jury was impermissibly
tasked with claim construction by failing to either object to the jury instructions or
preserve the issue in its Rule 50(a) motion.15
IV.

LEGAL STANDARD
A.

Motion for Judgment as a Matter of Law Under Rule 50 and
Motion for a New Trial Under Rule 59
A court may render judgment as a matter of law when “a party has

been fully heard on an issue during a jury trial and the court finds that a reasonable

11

Verdict Sheet, at 1.

12

See Def. Mem. at 1–2.

13

See id. at 2, 20.

14

See Pl. Mem. at 9–19.

15

See id. at 4–6.
3

jury would not have a legally sufficient evidentiary basis to find for the party on
that issue.”16 The standard for granting judgment as a matter of law “mirrors” the
standard for granting summary judgment.17 Accordingly, in ruling on such a
motion, the trial court is required to
consider the evidence in the light most favorable to the party
against whom the motion was made and to give that party the
benefit of all reasonable inferences that the jury might have drawn
in his favor from the evidence. The court cannot assess the weight
of conflicting evidence, pass on the credibility of the witnesses, or
substitute its judgment for that of the jury.18
A jury verdict should not be set aside lightly. A court may not grant judgment as a
matter of law unless: (1) there is such a “‘complete absence of evidence
supporting the verdict that the jury’s findings could only have been the result of
sheer surmise and conjecture’” or (2) there is “‘such an overwhelming amount of
evidence in favor of the movant that reasonable and fair minded [persons] could

16

Fed. R. Civ. P. 50(a)(1).

17

See Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150
(2000) (quotation marks and citations omitted); Zellner v. Summerlin, 494 F.3d
344, 371 (2d Cir. 2007).
18

Tolbert v. Queens Coll., 242 F.3d 58, 70 (2d Cir. 2001) (quotation
marks and citation omitted). Accord Caceres v. Port Authority of N.Y. and N.J.,
631 F.3d 620, 622 (2d Cir. 2011).
4

not arrive at a verdict against [it].’”19
A “court may, on motion, grant a new trial on all or some of the issues
. . . after a jury trial, for any reason for which a new trial has heretofore been
granted in an action at law in federal court.”20 The legal test for granting a new
trial is less stringent than for granting judgment as a matter of law. “Unlike a
motion for judgment as a matter of law, a motion for a new trial may be granted
even if there is substantial evidence to support the jury’s verdict.”21 Nevertheless,
in practice, courts do not grant new trials as freely as the language suggests. “‘A
motion for a new trial ordinarily should not be granted unless the trial court is
convinced that the jury has reached a seriously erroneous result or that the verdict
is a miscarriage of justice.’”22
Under Federal Rule of Civil Procedure 50(b),
[n]o later than 28 days after the entry of judgment . . . the movant
may file a renewed judgment as a matter of law and may include

19

Altria Grp., Inc. v. U.S., 658 F.3d 276, 290 (2d Cir. 2011) (quoting
Kosmynka v. Polaris Indus., Inc., 462 F.3d 74, 79 (2d Cir. 2006)).
20

Fed. R. Civ. P. 59(a)(1)(A).

21

Caruolo v. John Crane, Inc., 226 F.3d 46, 54 (2d Cir. 2000)
(quotation marks and citation omitted).
22

Townsend v. Benjamin Enters., Inc., 679 F.3d 41, 51 (2d Cir. 2012)
(quoting Medforms, Inc. v. Healthcare Mgmt. Solutions, Inc., 290 F.3d 98, 106 (2d
Cir. 2002)).
5

an alternative or joint request for a new trial under Rule 59 . . . [—
i]n ruling on the renewed motion, the court may: (1) allow
judgment on the verdict, if the jury returned a verdict; (2) order a
new trial; or (3) direct entry of judgment as a matter of law.
V.

APPLICABLE LAW
A.

Functionality
“‘A design patent protects the non-functional aspects of an ornamental

design as seen as a whole and as shown in the patent.’”23 “An aspect is functional
‘if it is essential to the use or purpose of the article or if it affects the cost or quality
of the article.’”24 “The design of a useful article is deemed to be functional when
‘the appearance of the claimed design is ‘dictated by’ the use or purpose of the
article.’”25 “Whether a patented design is functional or ornamental is a question of
fact.”26 The Federal Circuit has held that “‘[w]here a design contains both
functional and non-functional elements, the scope of the claim must be construed

23

Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1370
(Fed. Cir. 2006) (quoting KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997
F.2d 1444, 1450 (Fed. Cir. 1993)).
24

Id. at 1371 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S.
844, 851 (1982)).
25

PHG Techs., LLC v. St. John Cos., 469 F.3d 1361, 1366 (Fed. Cir.
2006) (quoting L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed.
Cir. 1993)).
26

Id. at 1365.
6

in order to identify the non-functional aspects of the design as shown in the
patent.’”27 “[T]he preferable course ordinarily will be for a district court not to
attempt to construe a design patent claim”; however, “the distinction between the
functional and ornamental aspects of a design” is an issue on which “a court’s
guidance would be useful to the fact finder.”28
“In determining whether a design is primarily functional or primarily
ornamental the claimed design is viewed in its entirety, for the ultimate question is
not the functional or decorative aspect of each separate feature, but the overall
appearance of the article, in determining whether the claimed design is dictated by
the utilitarian purpose of the article.”29 “If the patented design is primarily
functional rather than ornamental, the patent is invalid.”30 “‘The elements of the
design may indeed serve a utilitarian purpose, but it is the ornamental aspect that is
the basis of the design patent.’”31
27

Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir.
2010) (quoting OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed.
Cir. 1997)).
28

Id. (citing Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665,
679–80 (Fed. Cir. 2008)).
29

L.A. Gear, 988 F.2d at 1123 (citing Lee v. Dayton-Hudson Corp., 838
F.2d 1186, 1189 (Fed. Cir. 1988)).
30

Richardson, 597 F.3d at 1293–94 (citing Lee, 838 F.2d at 1188).

31

Id. at 1294 (quoting L.A. Gear, 988 F.2d at 1123).
7

When determining functionality in the context of a design patent, the
court may consider
“whether the protected design represents the best design; whether
alternative designs would adversely affect the utility of the
specified article; whether there are any concomitant utility patents;
whether the advertising touts particular features of the design as
having specific utility; and whether there are any elements in the
design or an overall appearance clearly not dictated by function.”32
VI.

DISCUSSION
A.

The Jury Verdict Was Not Clearly Erroneous and Was Supported
by Sufficient Evidence
I will not address Regent’s claim construction arguments because they

are premature. Claim construction can occur at any point before an infringement
determination, and it may take into account a jury’s findings of fact.33 The jury did
32

PHG Techs., 469 F.3d at 1366 (quoting Berry Sterling Corp. v. Pescor
Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997)).
33

See Depaoli v. Daisy Mfg. Co., No. 07ocv–11778–DPW, 2009 WL
2145721, at *5 (D. Mass. July 14, 2009) (“To the extent the scope of the claim
must be limited by prosecution history or functionality, I will address those issues
definitively if and when they are raised at some later stage in these proceedings,
such as resolution of motions for summary judgment or as part of the jury
instructions at trial.”). See also Colgate-Palmolive Co. v. Ranir, L.L.C., No.
06–417, 2007 WL 2225888, at *3 (D. Del. July 31, 2007) (“Cognizant of the
court’s role as the construer of patent claims and the need for claim construction to
be complete before a jury deliberates on infringement, the court may further limit
the current construction at trial by factual determinations regarding functionality
and ornamentality of the included features.”); ADC Telecomm., Inc. v. Panduit
Corp., 200 F. Supp. 2d 1022, 1033 (D. Minn. 2002) (finding that because fact
issues permeated the parties’ arguments concerning functionality, functionality was
8

not construe the claim, nor does its finding preclude claim construction at a later
date.34 Thus, there is one issue before the Court: whether the jury verdict on
functionality was clearly erroneous because it was not sufficiently supported by the
evidence.
The parties presented the following evidence regarding functionality
at trial.
1.

The ‘225 Utility Patent

Regent proffered LNC’s 6,994,225 (“the ‘225 patent”) as a utility
patent that discloses the utilitarian advantages of the design.35 Indeed this factor
weighs against LNC, as the ‘225 patent describes the functionality of individual
elements. However, the functionality inquiry asks whether the overall design is

best left to the fact-finder).
34

Judge Stanton concluded that, while a jury may not construe the
claims, it may make an overall determination of invalidity due to functionality.
See Def. Mem. at 4. See Luv N’ Care, Ltd. v. Walgreen Co., 695 F. Supp. 2d 125,
135 (S.D.N.Y. 2010) (discussing the potential for a jury trial on the issue of
functionality); Dexas Int’l, Ltd. v. Office Max Inc., No. 6:07cv396, 2009 WL
252164, at *7 n.4 (E.D. Tex. Jan. 30, 2009) (adopting a brief verbal claim
construction to “appropriately guide the jury[’s]” infringement determination, yet
“express[ing] no opinion as to whether the patented design incorporates functional
elements”).
35

See Def. Mem. at 10.
9

dictated by utility.36
2.

Advertising

Regent offered various examples of LNC advertising that touts the
functional qualities of individual elements of LNC cups.37 These advertisements
highlight individual attributes such as the silicone spout — for example, one
advertisement states that the spout is “designed to prevent drips and spills.”38 Yet,
these advertisements do not demonstrate that the overall design is dictated by
function. Even where individual elements are dictated by function, the overall
design may still be ornamental.39

36

See L.A. Gear, 988 F.2d at 1123 (“[T]he utility of each of the various
elements that comprise the design is not the relevant inquiry with respect to a
design patent. In determining whether a design is primarily functional or primarily
ornamental the claimed design is viewed in its entirety, for the ultimate question is
not the functional or decorative aspect of each separate feature, but the overall
appearance of the article, in determining whether the claimed design is dictated by
the utilitarian purpose of the article.”) (citing Lee, 838 F.2d at 1189).
37

See LNC bottle advertisements (“LNC ads”), Exs. I, J, K, L to
Yaegashi Decl.
38

See LNC ads, Ex. J to Yaegashi Decl., at 1.

39

See Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 240
(Fed. Cir. 1986) (“In determining whether a design is primarily functional, the
purposes of the particular elements of the design necessarily must be considered.”).
However, ‘“[T]he determination of whether the patented design is dictated by the
function of the article of manufacture must ultimately rest on an analysis of its
overall appearance.” PHG Techs., 469 F.3d at 1366 (quoting Berry Sterling, 122
F.3d at 1455). Regent also cites case law holding that the functionality inquiry
10

3.

Alternative Designs

LNC put forth many examples of alternative designs that were
available to Regent.40 Regent argues that LNC’s alternative designs were legally
insufficient because they could not be manufactured without additional cost or loss
of quality.41 LNC correctly argues that their alternatives — differently-shaped
cups that performed the same function as effectively as the LNC design — were
appropriate.42 The jury was entitled to weigh the alternative designs more heavily

concerns the overall design — not the individual elements. See Rip-It Holdings,
LLC v. Wilson Hunt Int’l, Ltd., No. 6:11–cv–1733–Orl–28GJK, 2012 WL 113529,
at *4 (M.D. Fla. Jan. 13, 2012) (“The mere fact that each element of a design
serves some functional purpose does not necessarily mean that the overall design is
dictated by function.”) (citing L.A. Gear, 988 F.2d at 1123). “[B]ut when the
function of each element cannot be separated from the overall design, it indicates
that the entire design is dictated by function.” Id. (citing PHG Techs., 469 F.3d at
1368).
40

See Pl. Mem. at 12.

41

See Def. Mem. at 15. PHG Techs., 469 F.3d at 1367 (finding that a
“full inquiry with respect to alleged alternative designs includes a determination as
to whether the alleged ‘alternative designs would adversely affect the utility of the
specified article’” — not the cost or quality of the article) (quoting Rosco, Inc. v.
Mirror Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002)). Cf. Valu Eng’g, Inc. v.
Rexnord Corp., 278 F.3d 1268, 1276 n.5 (Fed. Cir. 2002) (finding, in the
trademark context, that a feature may be functional if it affects the cost or quality
of the article).
42

See Plaintiffs’ Alternative Designs, Ex. 4 to 6/11/12 Declaration of
Benjamin H. Graf, plaintiffs’ counsel (“Graf. Decl.”), at 1–15. See also Rosco, 304
F.3d at 1378 (“‘[T]he design must not be governed solely by function, i.e., . . . this
is not the only possible form of the article that could perform its function.’”)
11

than the other facts,43 and credit the alternative design testimony of Nouri E.
Hakim, the inventor of the LNC designs — testimony which was corroborated by
Regent’s witness, Jim Holley, to the extent that Holley testified that one of the cups
was an alternative design.44
4.

Best Design

Regent restates its utility patent evidence to satisfy this factor.45
Plaintiffs’ expert, Cooper Woodring testified that the embodiments of the patentsin-suit were constantly being improved.46 Hakim testified that a later design

(quoting Seiko Epson Corp. v. Nu–Kote Int’l, Inc., 190 F.3d 1360, 1368 (Fed. Cir.
1999)). “‘When there are several ways to achieve the function of an article of
manufacture, the design of the article is more likely to serve a primarily ornamental
purpose.’” Id. (quoting L.A. Gear, 988 F.2d at 1123).
43

See PHG Techs., 469 F.3d at 1367 (“‘[T]he presence of alternative
designs may or may not assist in determining whether the challenged design can
overcome a functionality challenge. Consideration of alternative designs, if
present, is a useful tool that may allow a court to conclude that a challenged design
is not invalid for functionality.’”) (quoting Berry Sterling, 122 F.3d at 1455).
44

See Holley Cross, Ex. 14 to Graf. Decl., at 420. See also R.F.M.A.S.,
Inc. v. Mimi So, 619 F. Supp. 2d 39, 81 n.21 (S.D.N.Y. 2009) (“‘[F]unctionality is
a question of fact. The record contains competing expert opinions on the issue of
functionality, either of which the jury could credit.’”) (quoting Keystone Mfg. Co.,
Inc. v. Jaccard Corp., 394 F. Supp. 2d 543, 562 (W.D.N.Y. 2005)).
45

See Def. Mem. at 16.

46

See Cooper Direct, Ex. 11 to Graf. Decl., at 270.
12

embodiment was manufactured more cheaply, with no loss of function.47
5.

Individual Elements or Overall Design Not Dictated by
Functionality

Hakim testified that he designed the cup to be attractive.48 Most
significantly, he also testified that he had designed the cup prior to designing the
valve that went inside it.49 Regent rebuts this evidence by arguing that the time gap
between the filing of the ‘225 patent and the design patents indicates that the ‘225
patent dictated the design.50
Given the evidence that was offered by LNC to demonstrate that its
design patent was not primarily dictated by function, I cannot conclude that there
was either insufficient evidence to support the verdict or overwhelming evidence in
favor of Regent. Thus, I cannot conclude that the verdict was clearly erroneous.51
47

See Hakim Direct, Ex. 14 to Graf. Decl., at 435.

48

See Hakim Redirect, Ex. 10 to Graf. Decl., at 240.

49

See Hakim Direct, Ex. 8 to Graf Decl., at 57.

50

See Def. Mem. at 18.

51

Johnson & Johnson Vision Care, Inc. v. CIBA Vision Corp., 634 F.
Supp. 2d 1293, 1304 (M.D. Fla. 2008) (“Because of the presumption of validity, a
patentee responding to a challenge to the patent’s validity need only submit
sufficient evidence to rebut any proof of invalidity offered by the challenger, and,
where the challenger fails to identify any persuasive evidence of invalidity, the
very existence of the patent satisfies the patentee’s burden on the validity issue.”)
(citing Canon Computer Sys., Inc. v. Nu-Kote Int’l, Inc., 134 F.3d 1085, 1088 (Fed.
Cir. 1998)). The patents-in-suit were recently reexamined by the Patent Office,
13

B.

Prejudice Does Not Warrant Judgement as a Matter of Law or a
New Trial
Regent argues that it was prejudiced by LNC’s statements of the law

and LNC’s false accusation of discovery violations. LNC argues that because
Regent did not object to LNC’s statements, they have waived their right to
challenge the verdict on that basis. I find that Regent did not waive its
objections,52 but the cited statements amount — at most — to harmless error.53
Any potentially harmful effect of statements made by LNC regarding the

which found the functionality arguments of two different defendants, Toys R’ Us
and Munchkin, without merit, although the examiner primarily focused on
obviousness. See 7/25/12 Plaintiffs’ letter to the Court at 2; 7/26/12 Defendant’s
Letter to the Court at 1.
52

See Henry v. Wyeth Pharm., Inc., 616 F.3d 134, 152 (2d Cir. 2010)
(finding that a failure to properly object during trial subjects the trial court’s
actions to a plain error standard).
53

See Marcic v. Reinauer Transp. Cos., 397 F.3d 120, 127 (2d Cir.
2005) (finding that disparaging comments about a party, his witnesses, and the
case did not amount to prejudicial conduct, as “‘[n]ot every improper or poorly
supported remark made in summation irreparably taints the proceedings; only if
counsel’s conduct created undue prejudice or passion which played upon the
sympathy of the jury, should a new trial be granted.’”) (quoting Matthews v. CTI
Container Transp. Int’l, Inc., 871 F.2d 270, 278 (2d Cir. 1989)). See also
Patterson v. Balsamico, 440 F.3d 104, 119 (2d Cir. 2006) (“[B]ecause attorneys
are given ‘wide latitude in formulating their arguments’ to the jury, ‘[r]arely will
an attorney’s conduct so infect a trial with undue prejudice or passion as to require
reversal.’”) (quoting Reilly v. Natwest Mkts. Grp. Inc., 181 F.3d 253, 271 (2d Cir.
1999)).
14

applicable law was negated by Judge Stanton’s instructions.54 An accusation of
discovery violations, which indeed may have occurred,55 is also insufficient to
require a new trial or judgment as a matter of law.56
V.

CONCLUSION
Based on the foregoing, Regent’s motion is denied. The Clerk of the

Court is directed to close this motion (Docket No. 65). A conference is scheduled
for August 23, 2012, at 4:30 p.m. in Courtroom 15C.

54

See AIG Global Secs. Lending Corp. v. Banc of Am. Secs., LLC,
386 Fed. App’x 5, 8 (2d Cir. 2010) (finding that counsel’s potentially invalid legal
theories did not warrant a new trial for the adversary, particularly when, “in any
event,” the judge instructs the jury on the law). See also Frometa v. Diaz-Diaz,
348 Fed. App’x 621 (2d Cir. 2009) (finding misstatements of the law and improper
comments insufficient to trigger a new trial when there was sufficient evidence to
support the jury’s verdict).
55

LNC provided evidence that Regent withheld the physical
embodiment of one of its cited designs. See Pl. Mem. at 24.
56

See Air China, Ltd. v. Kopf, Nos. 10–3289–cv(L), 10–3571–cv(XAP),
10–3577–cv(XAP), 10–3730–cv(XAP), 10–4128–cv(XAP), 10–4166–cv(XAP),
10–4226–cv(XAP), 2012 WL 1109372, *4 (2d Cir. Apr. 4, 2012) (“‘[E]xtreme[ly]
inflammatory remarks’ by counsel during the closing to the jury, such as ‘[T]his
man is a disgrace . . . ,’ a ‘schmuck,’ a ‘scam artist’ and ‘con man’ who had a
‘fundamental dishonesty’” did not demand a new trial because they were isolated
comments in an otherwise appropriate closing). See also Marcic, 397 F.3d at 126
(“[A]lmost all of the statements [defendant] relies on were statements suggesting
that [defendant] or his witnesses lied or that their testimony was unbelievable.
Such statements were not statements of the evidence at all, but were rather
argument calling on the jury to draw inferences from the evidence.”).
15

Dated:

New York, New York
Ju1y31,2012

16

-AppearancesFor Plaintiffs:
Lee A. Goldberg, Esq.
Morris E. Cohen, Esq.
Goldberg Cohen, LLP
1350 Avenue of the Americas, Suite 425
New York, New York 10019
[phone]
For Defendant:
James J. Foster, Esq.
Wolf, Greenfield & Sacks, P.C.
600 Atlantic Avenue
Boston, Massachusetts 02210
[phone]
John T. Johnson, Esq.
Fish & Richardson P.C.
153 East 53rd Street
New York, New York 10022-4611
[phone]
David Tadahiko Yaegashi, Esq.
John Stephen Goetz, Esq.
Kristen A. McCallion, Esq.
Fish & Richardson P.C. (NYC)
601 Lexington Ave, 52nd floor
New York, New York 10022
[phone]
[phone]/ 2261

17