Opinion
No. 03-2889 (WHW).
October 6, 2004
Motion for Summary Judgment
Dear Counsel:
This matter is before the Court on the Defendants' Motion for Summary Judgment. The motion is decided without oral argument pursuant to Fed.R.Civ.P. 78.
FACTS AND PROCEDURAL BACKGROUND
When a party moves for summary judgment, Local Civil Rule 56.1 requires that each side submit a statement of the material facts disputed or undisputed. While the defendants have submitted a statement of undisputed facts, the plaintiff has not done so. As the plaintiff is a pro se litigant, the relevant facts recited here are drawn from the defendants' Statement of Undisputed Facts and supporting materials, and the Plaintiff's Complaint and the documents attached thereto.
The plaintiff, Tony Colida, is an inventor. On November 5, 1991, the United States Patent and Trademark Office issued two design patents to him, Design Patent No. 321,347 ('347) and Design Patent No. 321,349 ('349). Both of the patents are for the design of portable cellular handset telephones. The claim in the '347 patent is "[t]he ornamental design for a portable cellular handset telephone, as shown and described." (Pl.'s Ex. P-1.) The description of the '347 patent contains eight figures looking at the design of the product from various angles. (Defs.' Ex. 1.) The claim in the '349 patent is "[t]he ornamental design of a cellular portable handset telephone, as shown and described." (Pl.'s Ex. P-2.) The description of the '349 patent contains six figures also showing the design of the product from different views. (Defs.' Ex. 2.) The defendants are Sharp Electronics Corporation ("Sharp") and Audiovox Wireless Corporation ("Audiovox"), a subsidiary of Sharp. On or about April 2003, the plaintiff became aware of a portable cellular handset telephone known as CDM-7900 that was being manufactured and sold by Audiovox. The CDM-7900 product was designed by an employee of Sharp Corporation, the parent company of the defendant Sharp. On April 30, 2002, the United States Patent and Trademark Office issued Design Patent No. 456,378 ('378) for the design of the CDM-7900. (Defs.' Ex. 17). In his belief that CDM-7900 was infringing on his design patents, the plaintiff sent a letter dated April 25, 2003, to Audiovox informing it of his belief. In a letter dated May 19, 2003, Audiovox informed the plaintiff that the matter had been referred to Sharp.
The plaintiff filed the Complaint on June 16, 2003, alleging that the defendants had infringed on his '347 and '349 patents with their product CDM-7900, and seeking damages of $100 million. The defendants' filed this motion for summary judgment on February 13, 2004.
STANDARD FOR SUMMARY JUDGMENT
Summary judgment is appropriate where the moving party establishes that "there is no genuine issue as to any material fact and that [it] is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). A factual dispute between the parties will not defeat a motion for summary judgment unless it is both genuine and material. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). A factual dispute is genuine if a reasonable jury could return a verdict for the non-movant and it is material if, under the substantive law, it would affect the outcome of the suit. See id. at 248. The moving party must show that if the evidentiary material of record were reduced to admissible evidence in court, it would be insufficient to permit the non-moving party to carry its burden of proof. See Celotex v. Catrett, 477 U.S. 317, 318 (1986).
Once the moving party has carried its burden under Rule 56, "its opponent must do more than simply show that there is some metaphysical doubt as to the material facts in question."Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). The opposing party must set forth specific facts showing a genuine issue for trial and may not rest upon the mere allegations or denials of its pleadings. Shields v. Zuccarini, 254 F.3d 476, 481 (3d Cir. 2001). At the summary judgment stage the court's function is not to weigh the evidence and determine the truth of the matter, but rather to determine whether there is a genuine issue for trial. See Anderson, 477 U.S. at 249. In doing so, the court must construe the facts and inferences in the light most favorable to the non-moving party. Curley v. Klem, 298 F.3d 271, 277 (3d Cir. 2002).
In a patent infringement case, "[s]ince the ultimate burden of proving infringement rests with the patentee, an accused infringer seeking summary judgment of noninfringement may meet its initial responsibility either by providing evidence that would preclude a finding of infringement, or by showing that the evidence on file fails to establish a material issue of fact essential to the patentee's case." Novartis Corp. v. Ben Venue Laboratories, Inc., 271 F.3d 1043, 1046 (Fed. Cir. 2001) (citingVivid Tech., Inc. v. American Sci. Eng'g, Inc., 200 F.3d 795, 807 (Fed. Cir. 1999)). "Summary judgment may only be granted if, after viewing the alleged facts in the light most favorable to the nonmovant and drawing all justifiable inferences in the nonmovant's favor, there is no genuine issue whether the accused device is encompassed by the patent claims." Id.
When a party opposing summary judgment claims that he or she lacks the evidence necessary to support his or her claims because additional discovery is needed, a court can refuse or postpone a decision on summary judgment. Fed.R.Civ.P. 56(f). Rule 56(f) requires that the party opposing summary judgment submit an affidavit containing the reasons why such evidence is not yet available.
DISCUSSION
The facts here are undisputed, making summary judgment appropriate. The plaintiff has not come forward with any evidence to show that a genuine issue of material fact exists. In his opposition brief, the plaintiff contends that "[t]here are external facts to be discovered by the parties or determined by the Court that are relevant to this infringement and damage analysis." (Pl.'s Br.) The plaintiff does not, however, cite any reasons why additional discovery is needed, what facts remain to be discovered, or how such facts would be material to the issue of infringement.
Construction of Patents 347 and 349
"A design patent only protects the novel, ornamental features of the design patented." OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). "Determining whether a design patent is infringed requires (1) construction of the patent claim, and (2) comparison of the construed claim to the accused product." Contessa Food Products, Inc. v. Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002) (citing Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)). In construing a design patent claim, the scope of the claimed design encompasses "its visual appearance as a whole," and "the visual impression it creates." Id. (citing Durling v. Spectrum Furniture Co., 101 F.3d 100,104-05 (Fed. Cir. 1996)). Where a design contains both functional and ornamental features, "the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent."OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). A design patent claim is "limited to what is shown in the application drawings." Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001).
The only claim in the '347 patent is "[t]he ornamental design for a portable cellular handset telephone, as shown and described." (Pl.'s Ex. P-1.) The description of the '347 patent contains eight figures looking at the design of the product from various angles. (Defs.' Ex. 1.) Upon viewing these figures, the Court finds that the scope of the claimed design is for a portable cellular telephone handset that folds in half with the sides of each half being curved in wavy fashion such that the curves fit together when the phone is folded closed. The outside of the phone, the side showing when the phone is closed, appears to be slightly curved or rounded. When open, the top half reveals a recessed screen that is situated towards the bottom of the top half and takes up less than half of the top portion of the phone. Towards the top of the top half of the phone is what appears to be a speaker as it is an oval feature with some holes in it. In the middle of the phone at the point where it folds there is a round hinge. Also when open, the bottom half of the phone contains a keypad of uniformly shaped buttons that takes up almost the entire half. At the very bottom of the bottom half are three rectangular features that appear to be a microphone.
The claim in the '349 patent is "[t]he ornamental design of a cellular portable handset telephone, as shown and described." (Pl.'s Ex. P-2.) The description of the '349 patent contains six figures also showing the design of the product from different views. (Defs.' Ex. 2.) Upon viewing these figures, the Court finds that the scope of the claimed design is also for a portable cellular telephone handset having a top half that is clearly longer than the bottom half such that there is a slightly bent overhang when the phone is closed. When open, the top portion of the phone contains a keypad comprised of uniformly shaped buttons. This keypad takes up approximately two-thirds of the top half of the phone and is situated towards the bottom of the top half. Above the keypad is a small rectangular screen and above that is a small oval feature that is presumably a speaker. In between the top and bottom half of the phone is a large round hinge that curves slightly outward from the sides of the phone. When open, the bottom half of the phone reveals a larger and longer oval feature that appears to be a microphone. The outside of the phone, the side showing when the phone is closed, seems to be flat except at the middle where the hinge rounds and at the ends of the bottom and top half which are rounded.
Comparison of '347 and '349 to CDM-7900
The controlling factor in determining infringement is the appearance of the design as a whole in comparison to the accused product. OddzOn Prods., 122 F.3d at 1405. In comparing the accused product to the design patent, two tests must be satisfied in order to find infringement: (1) the "ordinary observer" test, and (2) the "point of novelty" test. Contessa Food Products, Inc., 282 F.3d at 1377 (citing Unidynamics Corp. v. Automatic Prods. Int'l, Ltd., 157 F.3d 1311, 1323 (Fed. Cir. 1998)). The ordinary observer test requires that the district court perform the inquiry set in Gorham Co. v. White:
if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.81 U.S. 511, 528 (1871). In applying the ordinary observer test, the patented design is viewed in its entirety as it is claimed.Contessa Food Products, Inc., 282 F.3d at 1378 (citing L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed. Cir. 1993)). Furthermore, in determining the overall similarity of design, "the ordinary observer must be deceived by the features common to the claimed and accused designs that are ornamental, not functional." Unidynamics Corp. v. Automatic Products Intern., Ltd., 157 F.3d 1311, 1323 (Fed. Cir. 1998) (citingRead Corp. v. Portec, Inc., 970 F.2d 816, 825 (Fed. Cir. 1992)). The points of novelty test requires proof that the accused product design "appropriates the novelty which distinguishes the patented design from the prior art." Id. at 1377.
The Court must determine if the design of the '347 patent is substantially similar to the design of CDM-7900 under the ordinary observer test. In making this comparison, the Court relies on the '347 patent, a description and picture of the CDM-7900 product attached to the Complaint by the plaintiff, and photographs of CDM-7900 submitted by the defendants in support of this motion.
There are several differences between the design claimed in the '347 patent and CDM-7900. First, and most noticeably, the sides of the CDM-7900 are not sinuously curved as is shown in the '347 patent. Second, the CDM-7900 has an antenna that sticks out from the top half of the phone whereas the designed claimed in the '347 patent does not. Third, the outside of the CDM-7900 appears to have some indented dot design on the casing as well as a separate feature with the name "Verizon" printed on it. The outside of the design claimed in the '347 patent appears to be relatively featureless. Fourth, the screen on the top half of the CDM-7900 phone is much larger than the screen shown in the '347 patent and it is not recessed like the screen shown in the '347 patent. Fifth, while part of the keypad on the CDM-7900 uses uniformly shaped buttons, the top portion of the keypad contains other buttons of different shapes, sizes and colors. The buttons on the keypad as shown in the '347 patent are all the same shape and size. Sixth, the speaker on the CDM-7900 is a scattering of holes above the screen whereas the speaker design in the '347 patent consists of an oval feature with one straight line of holes within it.
Based upon these differences, the Court finds that the design of the CDM-7900 is not substantially similar to the design in the '347 patent under the ordinary observer test. Since the ordinary observer test is not satisfied, there is no need to go further and apply the points of novelty test. The CDM-7900 does not infringe on the '347 patent.
The Court next must determine if the design of the '349 patent is substantially similar to the design of CDM-7900 under the ordinary observer test. In making this comparison, the Court relies on the '349 patent, a description and picture of the CDM-7900 product attached to the Complaint by the plaintiff, and photographs of CDM-7900 submitted by the defendants.
There are several differences between the design claimed in the '349 patent and CDM-7900. First, the two halves of the CDM-7900 are much more similar in length and do not exhibit the overhang that is depicted in the '349 patent. While the bottom half of the CDM-7900 does appear to be slightly longer than the top half, there is no bend creating an overhang to the extent of the one shown in the '349 patent. Second, the keypad on the CDM-7900 is located on the bottom half of the phone whereas the '349 patent shows the keypad on the top half of the phone. Third, the screen on the CDM-7900 takes up most of the top half of the phone whereas the screen in the '349 patent is small rectangular shape above the keypad on the top half of the phone. Fourth, the CDM-7900 has an antenna that sticks out from the top half of the phone whereas the designed claimed in the '349 patent does not. Fifth, the hinge on the CDM-7900 is much smaller and does not curve outwards such that it would be visible on the sides when looking at the phone from the front or the rear. The hinge shown in the '349 patent is visible in this way and is much larger than the hinge on the CDM-7900.
Based upon these differences, the Court finds that the design of the CDM-7900 is not substantially similar to the design in the '349 patent under the ordinary observer test. Since the ordinary observer test is not satisfied, there is no need to go further and apply the points of novelty test. The CDM-7900 does not infringe on the '349 patent.
CONCLUSION
It is on this 6th day of October, 2004,ORDERED that Defendants' Motion for Summary Judgment is GRANTED.