HFA, Inc. v. Trinidad/Benham Corp.
MEMORANDUM OPINION AND ORDER - CLAIM CONSTRUCTION. Signed by Magistrate Judge John D. Love on 3/7/2018. (rlf)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
CIVIL ACTION NO. 6:17-CV-00343-RWS
MEMORANDUM OPINION AND ORDER
This claim construction opinion construes the disputed claim terms in U.S. Design
Patent No. D713,196 (“the ’196 Patent”). Plaintiff HFA, Inc. (“HFA”) alleges that Defendant
Trinidad/Benham Corp. (“Trinidad”) infringes the ’196 Patent. HFA filed an opening claim
construction brief (Doc. No. 41), to which Trinidad filed a responsive brief (Doc. No. 42), and
HFA filed a reply (Doc. No. 43). The parties agreed that no claim construction hearing was
necessary in this matter; therefore, the Court did not conduct such a hearing and instead agreed to
resolve the dispute from the briefing. (Doc. No. 39.) Upon consideration of the parties’
arguments, and for the reasons stated herein, the Court adopts the construction set forth below.
The ’196 Patent is a design patent entitled “Nested Pans.” The ’196 Patent claims “[t]he
ornamental design for a nested pans” and contains fourteen figures. By way of example, Figure 6
is shown below:
’196 Patent, Fig. 6.
A design patent is fundamentally different from a utility patent, but in some areas, the
law pertaining to each overlaps. For example, although the respective tests for infringement are
different, both types of patents require the district courts to conduct claim construction
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008)
(citing Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995) (design patents);
O2 Micro Int’l Ltd. v. Beyond Innovation Tech., 521 F.3d 1351 (Fed. Cir. 2008)) (utility patents).
A design patent protects the novel, non-functional aspects of a claimed ornamental
design. OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). The
figures in design patent not only comprise the bulk of the disclosure, but also set forth the limits
of the claim. See Hupp v. Siroflex of America, Inc., 122 F.3d 1456, 1464 (Fed. Cir. 1997) (“A
design patent contains no written description; the drawings are the claims to the patented subject
matter.”). Design patents are limited to what is depicted in the drawings and therefore have
almost no scope. In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988).
Although trial courts have had a duty to conduct claim construction in design patent
cases, no particular form has been prescribed. Egyptian Goddess, 543 F.3d at 679. Thus,
although trial courts in such cases have generally issued detailed verbal descriptions of the
claimed designs, the Federal Circuit has never required such constructions. Id. Noting the
difficulties involved in describing a design in words, the Federal Circuit held that 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,” and in deciding whether a verbal
description is appropriate, the Court noted that trial courts should recognize the “risk of placing
undue emphasis on particular features of the design and the risk that a finder of fact will focus on
each individual described feature in the verbal description rather than on the design as a whole.”
Id. at 679–80. Further, the Federal Circuit noted:
While it may be unwise to attempt a full description of the claimed
design, a court may find it helpful to point out . . . various features
of the claimed design as they relate to the accused design and the
prior art. . . . [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
Id. (internal citations and quotations omitted). Finally, the Court added that a trial court’s
“decision to issue a relatively detailed claim construction will not be reversible error” absent a
showing of prejudice because “the level of detail to be used in describing the claimed design is a
matter within the court’s discretion.” Id. at 679.
Therefore, when a trial court determines that a detailed verbal description of the claimed
design is appropriate, such a construction involves an “additional level of abstraction” that is not
required when construing the claims of a utility patent. Durling v. Spectrum Furniture Co.,
101 F.3d 100, 103 (Fed. Cir. 1996). This abstraction results from a lack of a written description
in design patents; the court is presented with only visual images of the claimed subject matter.
Id. In this regard, the “properly construed the scope of the claimed invention [should be the]
overall ornamental visual impression [of the design], rather than ... the broader general
design concept;” Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1377
(Fed. Cir. 2000) (quoting OddzOn Prods., Inc., 122 F.3d at 1405) (internal quotations omitted),
thus, evoking the “visual image of the design.” Durling, 101 F.3d at 103 n.2.
Ordinarily, functional aspects of a design cannot be claimed. OddzOn Prods., Inc.,
122 F.3d at 1405 (“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.”). Functional design elements can be claimed, however, when they serve
a primarily ornamental purpose, e.g., in circumstances where there are several ways to achieve
the underlying function. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed.
Cir. 1993). The determination of “[w]hether a patented design is functional or ornamental is a
question of fact.” PHG Techs., LLC v. St. John Cos., 469 F.3d 1361, 1365 (Fed. Cir. 2006).
The parties dispute the meaning of the design claim, set forth below:
“[t]he ornamental design for a nested pans, as shown and described” (’196 Patent)
design for a nested
pans, as shown and
No construction necessary
Alternatively: “the ornamental
design of nested pans, as shown
and described in Figures 1 to 14.”
“The ornamental design for nested
pans as shown in the Figures,
excluding the elements shown in
broken lines, wherein the pans have
smooth sides and end walls. Such
design does not include the
functional size, shape, and
configuration of the 1/3 size pans
nested within the full size pan.”
HFA argues that no construction is necessary because the standard design format claim
adequately describes the nature of the claimed invention. (Doc. No. 41, at 9.) HFA contends that
the ornamental design for the nested pans is readily manifested in Figures 1 to 14 as shown in the
solid black full lines of the drawings. Id. at 10. HFA argues that Trinidad’s proposal of “wherein
the pans have smooth sides and end walls” encompasses more than the solid lines depicted in the
’196 Patent figures. Id. HFA further contends that the focus on the verbal construction for the
sides and end walls ignores the ornamental appearances depicted in solid black lines of several
figures, including: (1) the nest of the three 1/3 pans in the full size pan; (2) the rectangular upper
outer ridge of the full size pan at its longitudinal sides; (3) the opposing short side end walls of
the full size pan; and (4) that the three nested pans have an interior continuous rectangular upper
edge atop the pans’ internal side and end wall surfaces. Id. at 11. HFA argues that the complexity
of Defendant’s description distracts in comparison to relying on a pictorial representation of the
same. Id. at 12. Further, HFA argues that no feature of the design claimed in the ’196 Patent need
be construed as functional, not ornamental. Id. at 13. Finally, HFA contends that the jury can be
sufficiently guided by jury instructions if necessary. Id. at 13–14.
Trinidad argues that the scope of the ’196 Patent is limited to its novel, non-functional
aspects and therefore excludes the 1/3 nested pans which are functional, not ornamental. (Doc.
No. 42, at 9–11.) Specifically, Trinidad argues that the HFA has a concomitant utility patent
application, Application No. 14/085,994 (“the ’994 Application”), that describes the 1/3 nested
pans in a functional manner to create stability and alleviate accidents by the consumer. Id. at 11–
12, citing ’994 Application at ¶ . Trinidad argues that this problem was described as
functional in the prior art because loaf pans placed in the bottom of a full-sized pan resulted in
wobbling that led to more spills and injuries. Id. at 12, citing ’994 Application at ¶ .
Trinidad further argues that HFA’s advertising for the pans demonstrates the nested steam pans
are functional because they are sold under the mark “TRU-FIT”. Id. at 13. For these reasons,
Trinidad argues that the Court must construe the ’196 Patent to exclude purely functional aspects
(shape, size, and configuration) of the nested pans. Id. at 14.
The parties’ primary dispute is whether the 1/3 nested pans shown in the Figures of the
’196 Patent are primarily functional or ornamental. “Where a design contains both functional and
non-functional elements, the scope of the claim must be construed in order to identify the nonfunctional aspects of the design as shown in the patent.” OddzOn Prods., Inc., 122 F.3d at 1405.
A patentee is “entitled to a design patent whose scope is limited to [ornamental] aspects alone
and does not extend to any functional elements of the claimed article.” Richardson v. Stanley
Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010). Thus, the question is what aspects of the
nested pans in the ’196 Patent are functional such that they should be addressed with respect to
the scope of the claim. See Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1320 (Fed.
Cir. 2016) (“We have often blessed claim constructions, for example, where the court helped the
fact finder ‘distinguish[ ] between those features of the claimed design that are ornamental and
those that are purely functional.’”) (quoting OddzOn Prods., Inc., 122 F.3d at 1396.)
determining whether a design claim is dictated by function, the court considers the following
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.
PHG Technologies, LLC, 469 F.3d at 1366.
The Federal Circuit has considered several cases where a design encompassed both
functional and ornamental features. In OddzOn, the Federal Circuit considered the district court’s
construction of rocket-shaped football wherein the fins provided stability to the football but also
gave it its “rocket-like” appearance. OddzOn Prods., Inc., 122 F.3d at 1405. The Federal Circuit
ultimately affirmed the district court’s construction which included the fins but limited them to
their overall ornamental appearance, rather than the broader design of a rocket-like ball. Id.
Similarly, in Richardson, the Federal Circuit affirmed the district court’s construction that
limited the design of a multi-function tool to its ornamental aspects of its utility features,
including, inter alia, the standard shape of the hammer-head, the diamond-shaped flare of the
crow-bar and the top of the jaw, the rounded neck, the orientation of the crowbar relative to the
head of the tool, and the plain, undecorated handle. Richardson, 597 F.3d at 1293–94. In Ethicon
Endo-Surgery, the Federal Circuit determined that the open trigger, torque knob, and activation
button of a surgical instrument were functional, but limited the scope to the ornamental aspects
of the design. Ethicon Endo–Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1334 (Fed. Cir.
Most recently, in Sport Dimension, the Federal Circuit noted that although it had
construed design patent claims in these cases to distinguish between functional and ornamental
features, in no case did the court “entirely eliminate a structural element from the claimed
ornamental design, even though that element also served a functional purpose.” Sport
Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1321 (Fed. Cir. 2016). The Federal Circuit
determined that the district court’s construction conflicted with the principles of design patents
because it entirely eliminated whole aspects of the claimed design. Id. In that case, the court
determined whether the armbands and side torso of a lifeguard floatation device were functional.
Id. The Federal Circuit found that applying the PHG factors the design of the armbands and
tapering side torso served a functional purpose, but disagreed that those features should be
entirely eliminated from the claim. Id. Ultimately, the Federal Circuit concluded that because the
armbands and side torso served a functional purpose, “the fact finder should not focus on the
particular designs of these elements when determining infringement, but rather focus on what
these elements contribute to the design’s overall ornamentation,” and determined the claim to be
narrow. Id. at 1323.
Indisputably, here, the nested pans are both functional and ornamental. Claim 1 claims
the nested pans as ornamental, reciting “[t]he ornamental design for a nested pans, as shown and
described.” ’196 Patent, Claim 1. The drawings of the ’196 Patent do not depict the function of
the pans, although certain drawings, such as figures 8–10, depict the shape and size of the pans to
show how they nest. ’196 Patent, Figs. 8, 9, 10. For example, Figure 8 shows:
Notably, HFA has a concomitant utility patent application that shows a similar figure:
’994 Application, Fig. 6.
The focus of the ’994 invention is on “properly nesting steam pans to help alleviate
accidents by the consumer.” ’994 Application at ¶ . The ’994 Application further explains
that the claimed invention is directed to a “new and novel third-pan” and provides the preferred
dimensions of those pans. Id. at ¶ . The invention describes these pans as an improvement
over prior art including loaf pans that would “wobble” and lead to more “spills and injuries,” as
well as industry standard half-pans. Id. at ¶ , . Based on these descriptions, the
shape and size of the nested pans are important to the function of avoiding spills and injuries
because they are described as having “an upwardly extending third-pan continuous sidewall”
surrounded by a rim that “terminates to a third-pan rolled bead,” all with preferred specified
specific dimensions. Id. at ¶ . The invention concedes that the factors that allow a thirdpan to achieve its stated goal include, the height of the sidewall, the inside angle of the pan, and
the dimensions of the short side of the pan. Id. at ¶ . The dimensions and angles of the
pans are further emphasized in the ’994 Application prosecution history where the patentee
argued that the second inside angle on the nested pan is approximately two degrees of the first
inside angle to overcome an obviousness rejection. (Doc. No. 42-3, at 7.) Claims 1 and 6 of the
’994 Application were ultimately amended to reflect this distinction. (Doc. No. 42-4, at 3–5.)
The importance of the size, shape, and dimensions is further reflected in that HFA’s commercial
embodiment is advertised with the mark “TRU-FIT.” (Doc. No. 42-5.) Thus, considering the
relevant PHG factors, the court finds the 1/3 nested pans serve a functional purpose. See Sport
Dimension, 820 F.3d at 1322 (concurring that the design patent’s armbands and torso served a
functional purpose where the concomitant utility patent touted the utility of these features and the
patentee promoted the utility of those features in its advertisements).
While the nested pans serve a functional purpose, that does not deem them excluded from
the claim, particularly whereas here they are also ornamental in nature. The problem with
Trinidad’s proposed construction is that it seeks to effectively eliminate the nested pans from the
claim by including the following language: “[s]uch design does not include the functional size,
shape, and configuration of the 1/3 size pans nested within the full size pan.” As the Federal
Circuit explained in Sport Dimension, such elimination would go against the principles set forth
in case law regarding the scope of design patents. Sport Dimension, 820 F.3d at 1321. The Court
finds that the 1/3 nested pans should be limited to their ornamental aspects as shown in the
figures of the ’196 Patent. That is, as drawn, the 1/3 pans are congruent within the full nested pan
with each having a shorter side and an elongated side with rounded rim ridges, having no overlap
of all upper edges. The pans are further oriented with the shorter side of the 1/3 nested pans
along the elongated side of the full pan, and the elongated side of the 1/3 nested pans along the
shorter side of the full pan. The ’196 Patent does not cover the entirety of nested steaming pans,
or even 1/3 nested pans. The scope is narrowly limited to the ornamental configuration as drawn
and does not include any functional aspects of the pans. The finder of fact can be instructed on
these limitations as set forth herein. Therefore, the Court construes “the ornamental design for a
nested pans, as shown and described” as “the ornamental design for a nested pans, as shown and
described in Figures 1 to 14, excluding the elements shown in broken lines.”1
For the foregoing reasons, the Court adopts the construction set forth above.
The parties are in agreement that the design patent does not include any features shown in broken lines. Further,
the Court rejects Trinidad’s addition of “wherein the pans have smooth sides and end walls” because this limitation
is not supported by the figures and encompasses more than the claim as those features are shown in part in broken
lines, which are agreed as outside the scope of the claim.
So ORDERED and SIGNED this 7th day of March, 2018.
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