Oakley drops utility patent claims and proceeds with design claim following Markman hearing; court declines to construe the design claim
Monday, March 12, 2012 at 10:40AM On March 5, 2012, Oakley entered into a Covenant Not to Sue either Predator Outdoor Products or Hunter Specialties under U.S. utility patent 5,387,949 (“the ‘949 patent”). The covenant not to sue was executed on the same day as the Markman hearing in the matter of Oakley v. Predator Outdoor Products et al. (case no. 8:2011-cv-00456, in the U.S. District Court for the Central District of California).
As we previously reported, Oakley originally alleged infringement of both the ‘949 patent and the U.S. design patent D523,461 (“the D461 patent”). However, as a result of the covenant not to sue under the utility patent, the D461 patent is currently the only remaining patent at issue in this case.
The D461 patent claims “the ornamental design for an eyeglass component, as shown and described,” below.
Figure 1 of the D461 patent
In his March 7, 2012, Claim Construction Order (hereinafter “Order”), District Judge James Selna provided detailed reasoning for his decision not to construe the D461 patent claim, separately addressing issues of ambiguity, sufficiency of the description, and functionality.
First, the court addressed the defendants’ argument that the D461 patent is invalid because it is indefinite. In particular, the defendants alleged that discrepancies in the number of control buttons on each ear stem rendered the D461 patent indefinite. Order, page 3. Relying on the Federal Circuit’s opinion in Antonious v. Spalding & Evenflo Co., No. 98-1478, 1999 WL 777450, at *8 (Fed. Cir. Aug. 31, 1999), the court concluded that “the inconsistencies in the drawings are minor,” and “[do] not rise to the level required to render the design indefinite.” Order, page 3.
Second, as to sufficiency of the description, the court recognized that the defendants’ proposed verbal construction of the D461 drawings were “thoughtful and accurate,” but concluded that “the depictions speak for themselves.” Order, page 4. The court relied on the Federal Circuit’s opinion in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc), in reasoning that “it has long been observed, and continues to be proven by examples such as the present one, that a design is better represented by an illustration than it could be by any description and a description would probably not be intelligible without the illustration.” Order, page 4 (internal quotes omitted).
Finally, the court provided a detailed discussion regarding the defendants’ arguments that certain features of the D461 patent were functional in nature and therefore not eligible for design patent protection. In particular, the defendants alleged that “the enlarged rectangular portions of the left and right earstems (that are meant to contain . . . electronics) and the nose bridge (which is required to hold the eyeglasses on the wearer’s face) are functional.” Order, page 4.
At the outset, the court stated that “[t]he conclusion that these features serve a defined utilitarian purpose is not dispositive as to whether the features are functional in the sense that they are not entitled to design patent protection.” Order, page 5. Instead, the court clarified that “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. Order, page 5 (quoting L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993)).
Interestingly, in dismissing the defendants’ functionality arguments, the court pointed to the defendants’ own utility patent applications to demonstrate “alternatives for accomplishing the functions of storing electronic components in eyewear and providing nose support for eyewear.” Order, page 5. Further, in concluding that no claim construction was necessary due to functionality, the court analogized the features in the D461 patent to those found not strictly functional in L.A. Gear and Rosco, Inc. v. Mirror Lite Co., 304 f.3d 1373, 1378-79 (Fed. Cir. 2002), and distinguished the facts of Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010), where the Federal Circuit concluded that design features were “purely functional elements.” Order, page 6.
