Opinion
Civil Action No. 99-2117 (JBS).
April 4, 2000
Robert W. Smith, Esq., McCarter English, LLP, Newark, New Jersey, Attorney for Plaintiff.
Richard I. Samuel, Esq., Friedman Siegelbaum LLP, Roseland, New Jersey, Attorney for Defendant.
OPINION
In this case, plaintiff J.H. Smith Co., Inc. ("J.H. Smith") alleges that defendant MSR Imports, Inc. ("MSR") is infringing a design patent assigned to J.H. Smith for the ornamental design of a bed riser. MSR denies that its bed riser infringes upon J.H. Smith's patent, contending that 1) J.H. Smith's patent is indefinite and thus invalid; 2) most of the features of J.H. Smith's design are functional, not ornamental, and are not novel, thus excluding them from consideration as to the scope of the claim; and 3) the truly novel ornamental aspects of J.H. Smith's bed riser (a lack of a lip at the bottom of the riser and a line near the top of the sides of the riser) are not found in MSR's bed riser. Currently before the Court are the parties' cross-motions for summary judgment. For the reasons herein stated, this Court finds, as a matter of law, that the presumption of the patent's validity has not been eviscerated and that MSR's bed riser does infringe upon J.H. Smith's design patent. Therefore, this Court will deny defendant's motion for summary judgment and grant plaintiff's motion for summary judgment, as to liability for design patent infringement. The issue of appropriate relief remains in the case.
The purpose of bed riser supports is to raise the bed up about six inches and provide additional storage space beneath the bed or ease of access into and out of bed. In use, four bed riser supports are placed on the floor, and the four legs of the bed are each inserted into a depression on top of the bed risers.
I. BACKGROUND
The undisputed facts are as follows. J.H. Smith designs and sells items to catalog retailers. J.H. Smith's president, Wayne Sittig ("Sittig"), invented an ornamental design for a bed riser support which was awarded a United States design patent. Sittig filed the application on October 1, 1997, claiming "[t]he ornamental design of a bed riser support, as shown and described." (Mitchell Decl. Ex. A.) The United States Patent and Trademark Office allowed the patent without objection, issuing United States Design Patent No. 404,992 ("the '992 patent"). (The '992 patent is reproduced as Appendix A to this Opinion.) J.H. is the owner by assignment of all right, title, and interest in the '992 patent. Mitchell Decl. at Exs. B (Assignment) and C (Notice of Recordation).) The design of the '992 patent includes a tapered cylinder having a rounded top edge, a flat peripheral portion at the top, a generally concave depression in the top of the riser having a straight sloping wall, leading to circular substantially flat area at the bottom of the depression. (Id. at Ex. A.) The drawings of the design also depict a line circumventing the top of the bed riser. (Id.) At one time, J.H. Smith sold a bed riser support embodying the design in the '992 patent.
In early January of 1998, Sittig came upon an advertisement and picture in a catalog offering for sale bed risers. (Sittig Decl. ¶ 2.) He ordered the bed risers, and upon receipt of them discovered the label, which read "MSR Imports, Inc." (Id. at ¶ 4.) He again saw the MSR Imports bed risers for sale in that catalog in May of 1999. (Id. at ¶ 5.)
Counsel for J.H. Smith forwarded a letter to MSR on February 17, 1999, requesting, among other things, that MSR immediately cease and desist from selling the "MSR Product." (Id. at ¶ 6 and Ex. 4.) On March 3, 1999, counsel for MSR wrote to J.H. Smith's counsel, indicating that MSR's bed risers do not infringe the claim of the '992 patent, for several reasons. First, MSR contended, functional aspects of a design patent are not protected, and thus the indentation on the top of the bed riser, allegedly necessary for the stabilization of the bed, is not protected and may be freely copied by others. Second, MSR contended, comparing the '992 patent to prior art in the field, including the nine patents cited by the Patent Examiner as references, the only novel aspects of the '992 patent are the line around the top outside of the bed riser and the lack of a lip on the bottom of the riser. (Id.) Because MSR's bed riser does not have a line around the top and does have a bottom lip, MSR did not copy the novel aspects of the '992 patent, and thus MSR has not infringed the claim of the '992 patent. (Id.)
On March 12, 1999, plaintiff filed the instant lawsuit, alleging patent infringement pursuant to 35 U.S.C. § 271, and seeking declaratory judgment, permanent injunctive relief against defendant, damages and increased damages for willful infringement, and attorneys fees. On May 7, 1999, the case was transferred to this Court from the District of Massachusetts. Now before the Court are the parties' cross-motions for summary judgment.
II. DISCUSSION
A. Summary Judgment Standard
The standard for granting summary judgment is a stringent one. A court may grant summary judgment only when the materials of record "show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). In deciding whether there is a disputed issue of material fact the court must view the evidence in favor of the non-moving party by extending any reasonable favorable inference to that party. See Aman v. Cort Furniture Rental Corp., 85 F.3d 1074, 1080-81 (3d Cir. 1996). The threshold inquiry is whether there are "any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). Summary judgment is appropriate in patent cases. Avia Group Int'l v. L.A. Gear California, 853 F.2d 1557, 1561 (Fed. Cir. 1988);Townsend Eng. Co. v. HiTec Co., 829 F.2d 1086, 1089 (Fed. Cir. 1987);Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 840 (Fed. Cir. 1984).
B. Design Patent Validity — Adequacy of Disclosure
Defendant contends that plaintiff's design patent is invalid under 35 U.S.C. § 112, first paragraph, due to inadequate disclosure and therefore cannot have been infringed. 35 U.S.C. § 171 allows the U.S. Patent and Trademark Office to issue patents for the design of an item: "Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title." The patent is not over the function of the invention, but rather over the elements of the invention not required for the invention to function, which give the item its distinctive appearance, Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1872), so long as the appearance of that design is novel and nonobvious. See 35 U.S.C. § 101-103; Contico International v. Rubbermaid Commercial Products, 665 F.2d 820, 823 (9th Cir. 1982); Moore v. Stewart, 600 F. Supp. 655 (W.D.Ark. 1985).
Once a patent is granted, it enjoys a statutory presumption of validity. 35 U.S.C. § 282; Avia, 853 F.2d at 1562. A challenger to the validity of the patent must "establish facts, by clear and convincing evidence, which persuasively lead to the conclusion of invalidity."Avia, 853 F.2d at 1562. Validity is a question of law. See id. (citingGraham v. John Deere Co., 383 U.S. 1, 17 (1966)). Here, MSR contends that J.H. Smith's design patent is invalid because the patent claim neither presents all of the side views of the bed riser nor contains a written statement that the bed riser is symmetrical with identical sides. In order for this Court to grant defendant summary judgment on this ground, defendant must provide clear and convincing evidence which, even viewed in a light most favorable to the plaintiff, establishes that the patent is invalid.
35 U.S.C. § 112 provides that the specification of a patent application "shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention." Id. The regulations interpreting §§ 112 and 171 are found in 37 C.F.R. § 1.152, 1.153 (Design Drawings), and guidelines for interpreting the regulations are provided in the Manual of Patent Examining Procedure ("MPEP") § 1503.02, ¶ 15.48 (Necessity for Good Drawings), which elaborates on what it means to describe the invention such that a person skilled in the art could make and use it. For the purposes of a design patent, it is important to note that ordinarily a written description of the design is unnecessary so long as drawings or photographs adequately show the design. 37 C.F.R. § 1.153. The drawings must therefore contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Id. at § 1.152(a). Indeed, the PTO has given guidance that "an insufficient drawing may be fatal to validity ( 35 U.S.C. § 112, first paragraph)." See MPEP § 1503.02, ¶ 15.48.
The '992 patent assigned to J.H. Smith contains five views of the design: a perspective view of the first, second, and third embodiments of the invention, a front elevation view of the first, second, and third embodiments of the invention, a bottom view of the first embodiment of the invention, a bottom view of the second embodiment of the invention, and a bottom view of the third embodiment of the invention. (See Appendix A to this Opinion.) Essentially, the design patented looks the same from the top and sides in all three embodiments, but it comes with three different bottoms. Defendant contends that because the patent only depicts the top, bottom, and front of the design, and not the back of the design, the design is invalid. Defendant argues that plaintiff is not entitled to the assumption that the design is symmetrical or identical in the back without a written statement that the back is identical. In support of this argument, defendant cites MPEP § 1503.02, ¶ 15.48:
The drawings or photographs should contain a sufficient number of views to disclose the complete appearance of the design claimed, including the front, rear, top, bottom and sides. Perspective views are suggested and may be submitted to clearly show the appearance of three dimensional designs. If a perspective view is submitted, the surfaces shown would normally not be required to be illustrated in other views if these surfaces are clearly understood and fully disclosed in the perspective.
Views that are merely duplicative of other views of the design or that are merely flat and include no ornamentality may be omitted from the drawing if the specification makes this explicitly clear. . . . For example, if the left and right sides of a design are identical or symmetrical, a view should be provided of one side and a statement made in the drawing description that the other side is identical/symmetrical.Id. The '992 patent does have a perspective view, does not specifically show the back of the design, and does not contain a statement of symmetry. Based on this, defendant contends that plaintiff's patent is invalid. In further support of their argument, defendant presents the Declaration of Jerome Luzzi, a mechanical engineer who explains that he "must use conjecture to try to understand what the design is on the rear side of the bed riser support." (Luzzi Decl. ¶ 6.) Luzzi states that he would assume that the sides are not symmetrical and that the rear side of the bed riser support may include a round protrusion, a square protrusion, a hole, or a dimple. (Id. at ¶¶ 7-11.)
Against this background, this Court finds that plaintiff has made more than adequate disclosure of its protected design and that the patent's presumption of validity is intact, for several reasons. The main question is not whether all possible views have been shown, but whether enough has been disclosed so that someone making the item would know what to include. The drawings of the '992 patent are sufficient to comply with the requirement of 37 C.F.R. § 1.152(a) to constitute a complete disclosure of the appearance of the design. It is conceivable that the backside of the bed riser might contain a dimple, but that is not part of the patent specification and it would, thus, not be something over which plaintiff is entitled to protection. See In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) (design patent limited in scope to what is shown in the drawings). Plaintiff would be entitled to protection for a bed riser the rear side of which is identical to the sides that are elucidated in the perspective drawing and other drawings.
The drawings in the patent, especially the perspective drawings, clearly show that this is a cylindrical figure having uniformly sloping sides from the bottom (of larger diameter) to the top (of lesser diameter). Such a configuration has no "front" and "rear," and no "right" or "left," because it is in fact uniform in these aspects. The larger circular cross-section of the bottom rests on the floor and the tapered sides rise to the smaller circular cross-section on the top, which is designed to receive the leg of the bed. No reasonable person examining the '992 patent's drawings could believe that this object is not symmetrical from "front" to "back" or from "left" to "right." The asymmetry is only from top to bottom, the top being smaller as noted, which is depicted in multiple views in the '992 patent. In these circumstances, no reasonable factfinder could assume that the rear side is different than the rest of the product, notwithstanding Mr. Luzzi's comment that he would personally assume that it was not identical merely because he could imagine asymmetries that are nowhere claimed or hinted at in the '992 patent. The absence of a rear perspective is immaterial to the design for which protection is claimed, because the article is wholly symmetrical when viewed from any angle on a horizontal plane, and the drawings disclose this symmetry.
This Court's conclusion in this regard is supported by Moore v. Stewart, 600 F. Supp. 655 (W.D.Ark. 1985). In Moore, the defendant argued that plaintiff's patent for four-tone wooden whistle was invalid because of incomplete disclosure: the patent did not fully illustrate all four sides of the whistle and did not contain a written statement indicating the item's symmetry. Id. at 659. The court rejected defendant's argument. First, the court noted, the worst that one could "say of the drawings. . .is that they failed to disclose the appearance of two sides of the whistle which were identical to the two sides which were shown," and the two sides that were shown rendered the appearance of the "dominant feature" of the design. Id. at 660. Second, the court held, it was not necessary to disclose the four-sided symmetry of the whistle because, taking the three views of the patent together, "one could reasonably have deduced that the whistle's appearance was the same on each of its four sides." Id. The court in that case cited as support Ex parte Salsbury, 38 U.S.P.Q. 149 (1938), where the Patent Office Board of Appeals held that a single drawing in perspective view constituted complete disclosure. The Board noted that "articles of a symmetrical nature are often sufficiently illustrated by a single well-executed perspective view, since it can be deduced with certainty from that one view how the article would appear from the other side." Id. at 151,quoted in Moore, 600 F. Supp. at 660 n. 5.
Similarly here, the two perspective views of the '992 patent (one from the top and one from the bottom), together with the side views of the bed riser given in the specification, give enough detail that one must reasonably deduce that the so-called missing view is identical to the others. The absence of a sixth drawing or a statement that the back view would be the same as the front view is immaterial for fully and fairly describing the patented design of this symmetrical article. The five drawings of the specification together serve that function. Since no reasonable factfinder could conclude by clear and convincing evidence that the '992 patent is invalid for insufficient disclosure, defendant cannot prevail upon its claim of invalidity. Therefore, this Court holds that the patent is not invalid for incomplete disclosure.
C. Design Patent Infringement
"In 35 U.S.C. § 289 infringement is defined as unauthorized manufacture or sale of `the patented design, or any colorable imitation thereof.'" L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed. Cir.), cert. denied, 114 S.Ct. 291 (1993).
The test for design patent infringement was set forth by the Supreme Court in Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1872), and though that case was decided in 1872, it is still applicable today:
[I]f, 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.Id. at 528. A product is "substantially the same" as a patented design if it is the same in general appearance and has the same effect on the eye.Id. at 527.
This analysis requires a comparison of the accused design with the patented design. Unette Corp. v. Unit Pack Co., 785 F.2d 1026, 1028 (Fed. Cir. 1986). The ultimate question is whether "the effect of the whole design [is] substantially the same," as viewed by an ordinary observer.Gorham, 81 U.S. (14 Wall.) at 529. "[M]inor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement." Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984), overruled in part on other grounds in Two Pesos Inc. v. Taco Cabana, 505 U.S. 763 (1992).
There are thus two steps to the analysis. First, the designs must be similar overall, despite minor differences between them. Second, the "accused device must appropriate the novelty in the patented device which distinguishes it from the prior art." Avia, 853 F.2d at 1565. The novelty of the patented art can be found by comparing it to prior art. Litton, 728 F.2d at 1444.
1. Construction of '992 Patent Claims
In resolving the question of whether the accused device infringes on a patented design, the court must at the outset determine the interpretation of what the design means as a matter of law. Markman v. Westview Instruments, Inc., 517 U.S. 370, 390-91 (1996). As defendant has pointed out, where a design contains both functional and nonfunctional elements, the scope of the claim must be construed in order to identify the nonfunctional aspects of the design as shown in the patent. Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988). It is only the nonfunctional, ornamental aspects of the design which are patented. Id.;Franklin Lamp Mfg. Co., Inc. v. Albe Lamp Shade Co., 26 F. Supp. 960, 960-61 (E.D.Pa. 1939). "When function dictates a design, protection would not promote the decorative arts, a purpose of the design patent statute . . . .[A] distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article or features thereof that perform a function. Were that not true, it would not be possible to obtain a design patent on a utilitarian article of manufacture." Avia, 853 F.2d at 1563. When interpreting the claims as a matter of law, this Court must determine the point of novelty which allowed the '992 patent to issue and consider the population of the field of the '992 patent. Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984).
Here, defendant essentially concedes that its bed riser looks fairly similar to that shown in the '992 patent, but contends that the aspects of the bed riser which look similar — the depression at the top, the round top, and the tapered sides — are functional and thus not protected. (Def.'s Br. Opp'n Summ. J. at 12.) Defendant asserts that the only nonfunctional aspects of the '992 patent, which also happen to be the only aspects of that patent which distinguish it from prior art, are that the '992 bed riser has a lipless smooth tapered side with an ornamental line proximate to the top. Defendant argues that because defendant's bed riser has a lip on the bottom and does not have an ornamental line proximate to the top, it does not look similar overall and it does not copy the novel aspects of the '992 patent.
Contrary to defendant's suggestion, however, a comparison of the '992 patent to the prior art cited by plaintiff in its prosecution or raised by the Patent Office indicates that none of aspects of the '992 patent which defendant would characterize as functional are actually functionally required. As the Federal Circuit Court of Appeals pointed out in Avia, a case which involved comparison of sneakers, though particular designs could also have functional results, the main question is whether a different design could also serve the same function. 853 F.2d at 1563. Quoting the district court in the Avia case, the Federal Circuit said "every function which [LAG] says is achieved by one of the component aspects of the sole in this case could be and has been achieved by different components. And that is a very persuasive rationale for the holding that the design overall is not primarily functional." Id. at 1563 (internal citation omitted).
Applying this principle to the instant case, it is clear that the particular designs of the depression on the top of the '992 bed riser, the round top, and the tapered sides are not primarily functional because the functions they served could have been achieved in other ways, and indeed have been achieved in numerous other designs.
The depression at the top is necessary to support the bed leg that is inserted in it, defendant contends, noting that the drawings of prior art included as exhibits to the Samuel Declaration also all include a depression at the top into which a bed leg is inserted. (See Samuel Decl. Exs. B (Hurst patent), C (Petersen patent), D (Webb patent), E (McGinley patent), F (Christensen patent), G (Saperstein patent), and H (Williams patent).) The rounded edges of the top of the bed riser support, defendant argues, are functional to prevent the leg of the bed from being damaged when inserted and retained in the bed riser support, noting that one piece of prior art, the Williams patent (Id. at Ex. H) also has a rounded top. Defendant also contends that the slightly tapered sides are functional, providing stability and support. Defendant does not provide other support, by way of engineer's affidavit or otherwise, that these aspects of the '992 patent are required by function, relying instead only on attorney argument.
That argument is unpersuasive for several reasons. First, no evidence, other than attorney argument, has been provided in support of the notion that there must be a rounded top in order to protect the furniture leg. That there must be other ways in which furniture can be protected is evidenced by the fact that only one of the seven other patent designs defendant has attached has a rounded top (namely, the Williams patent,supra).
Second, no evidence, other than attorney argument, has been provided to support the notion that there must be tapered sides in order to provide stability and support. The tapered sides might serve that function, and this Court assumes that they do, but that function can also be accomplished in other ways, as established by the fact that of the seven other patents attached by defendants as exhibits, only one (the Hurst patent, at the Samuel Decl. Ex. B) is for a furniture riser that has slightly tapered sides; all the others are configured differently.
Third, while there clearly must be some sort of concave depression or curbing edge on the top of a furniture support in order to support the furniture leg in place by hindering any sideways movement, there are numerous ways in which that feature may be accomplished. The leg-receiving recess might be, as shown in figures 1, 2, and 7 of the Hurst patent (id. at Ex. B), almost as large as the entire top, around which there is a narrow rim. The depression might be, as shown in Figure 1 of the Petersen patent (id. at Ex. C), stepped. It might be shallow, as in the Webb patent. (Id. at Ex. D.) There might be deep, straight sides rather than angled, sloping walls in the recess, as in the McGinley, Christensen, and Saperstein patents. (Id. at Exs. E, F, and G.) The depression wall could also be substantially vertical, as in the Williams patent. (Id. at Ex. H.) Therefore, while it is necessary to have some sort of depression or curbing edge on the top of the furniture support in which the furniture leg can fit, it is not functionally necessary for the depression to be configured as the depression in the '992 patent is: with angled, straight sloping walls to a smaller essentially flat circle bottom. (Id. at Ex. A.) Because the function of supporting the furniture leg could be done in ways that look very different, the design of the depression in the '992 patent is ornamental and aesthetic, rather than functional.
The Court construes plaintiff's '992 patent as protecting the design of a bed riser which is cylindrical, having tapered sides to the top, where the depression into which the bed leg is placed has rounded edges and a straight sloping inner wall which leads to a smaller, circular, substantially flat area at the bottom of the depression. Therefore, these aspects of the design of the '992 patent, while they each could serve a function, are ornamental rather than functional because the functions could be accomplished in other ways. Defendant's bed riser looks substantially similar to the '992 patented bed riser to the ordinary observer. The MSR bed riser, like the design claimed in the '992 patent, is a tapered cylinder with a rounded top edge, a flat peripheral portion at the top, and a generally concave depression in the top of the riser having a straight sloping wall, leading to circular, substantially flat area at the bottom of the depression. There are only two differences between the '992 patented design and the MSR device: the '992 design contains a line around the outside of the cylinder near the top, while the MSR bed riser does not, and the MSR bed riser has a lip at the bottom, which the '992 patented design does not.
These minor differences, however, do not change the fact that the designs are substantially similar. See Litton, 728 F.2d at 1444. See also Payless ShoesSource, Inc. v. Reebok Int'l Ltd., 998 F.2d 985, 991 (Fed. Cir. 1993). In Avia, 853 F.2d at 1565, for example, the manufacturers of the accused shoe excluded from the sole several features of the patented shoe and modified other features, but the court nonetheless found that the general appearance of the two shoes were the same. Likewise, in L.A. Gear, 988 F.2d at 1126, there were noticeable differences between the accused shoe uppers and the patented shoe uppers, but the placement of all of the major design elements was the same, giving the shoes the same distinctive overall appearance. Here, though one bed riser has a lip and the other does not, and one has a line around the top and the other does not, the bed risers, overall, look substantially similar to the ordinary observer. Both have the tapered sides, and, more importantly, both have the same shape of depression into which the bed leg is placed: rounded edges and straight sloping inner walls which lead to a smaller, circular, substantially flat area at the bottom of the depression. The line and the lip are only minor differences. In accordance with this Court's duty to "consider the ornamental aspects of the design as a whole and not merely isolated portions of the patented design," Payless, 998 F.2d at 991 (citing Braun, Inc. v. Dynamics Corp. of America, 975 F.2d 815, 820 (Fed. Cir. 1992)), this Court finds that the MSR bed riser looks substantially similar to the design patented in '992 as a whole.
2. Appropriation of the Novelty
Moreover, though the '992 patent and defendant's bed riser are not 100% identical — defendant's contains a lip and no ornamental line — defendant's bed riser does appropriate plaintiff's novelty. Under the Litton test, the accused device infringes if it appropriates the novelty of the claimed design. 728 F.2d at 1444. Here, the tapered sides of the cylinder, contained in both the '992 patent and defendant's bed riser, while ornamental instead of merely functional, are not novel. They are clearly contained in the Hurst patent. (Mitchell Decl. Ex. B.) The top of the bed riser in the '992 patent, on the other hand, which can be described as having a rounded top edge, with a flat peripheral portion at the top, and a generally concave depression in the top having a straight sloping inner wall to a circular substantially flat area at the bottom of the depression, is novel. Defendant contends that this top is not novel both because the rounded top can be found in the Williams Patent (id. at Ex. H) and because the straight sloping walls and flat circular bottom to the depression can be found in the Hurst patent (id. at Ex. B.) Both of these contentions fail.
First, the question is not whether one feature is novel, but rather whether combination of elements in the overall design is novel. The furniture support in the Williams patent does have rounded top edges, but its overall design is very different; the rounded edge leads to a vertical wall in the depression, and the outside views of the Williams patent reveal a bulbous shape, rather than a tapered cylinder. (Id. at Ex. H.)
Second, the straight sloping walls leading to a circular bottom are not found in the Hurst patent. (Id. at Ex. B.) It is not at all clear from the drawings in the Hurst patent that it has a flat peripheral top edge leading to sloped walls to a flat circular bottom. Rather, Figure 6 in that patent depicts a tapered cylinder that leads to a straight top edge, with vertical walls forming an outer edge of a flat circular bottom to the depression that is just slightly smaller than the rest of the cylinder. The Hurst patent does not have straight sloping sides in the depression, as defendant contends. Additionally, the top of the bed elevator in the Hurst patent looks very different from the top of the bed riser in the '992 patent: rather than have the vertical walls that surround the depression follow completely around the circular top, approximately one-fourth of the depression is unsurrounded by a wall, such that a bed leg need not be lifted down into, but rather could be slid onto, the depression.
In short, with the exception of minor differences, the MSR bed riser looks substantially similar to the design claimed in J.H. Smith's '992 patent, and the MSR bed riser incorporates the novel design of the depressed area of the riser into which the bed leg fits contained in the '992 patent. Therefore, this Court finds that defendant has infringed the '992 patent in violation of 35 U.S.C. § 271.
III. CONCLUSION
For the above stated reasons, this Court finds that the '992 patent is not invalid for incomplete disclosure. Further, this Court will grant summary judgment for plaintiff and against defendant as to liability for infringement of plaintiff's '992 patent in violation of 35 U.S.C. § 289. The parties' motions, however, did not address at all the relief sought in the complaint: declaratory and injunctive relief as well as damages, punitive damages for willful infringement, and attorneys' fees. Therefore, this Court will leave open the issue of relief.
The accompanying Order is entered.
ORDER
This matter comes before the court upon the parties' cross-motions for summary judgment; and the court having considered the parties' submissions; and for reasons expressed in an Opinion of today's date;
IT IS this ___ day of April, 2000 hereby
ORDERED that plaintiff's motion for summary judgment be, and hereby is, GRANTED as to liability only and it is ADJUDGED that defendant has infringed plaintiff's U.S. Design Patent No. 404,992, and that this patent is not invalid for incomplete disclosure; and it is
ORDERED that defendant's motion for summary judgment be, and hereby is, DENIED, and that defendant's counterclaim for invalidity be, and it is hereby is, DISMISSED; and it is
ORDERED that counsel appear for a discovery/status conference before U.S. Magistrate Judge Joel B. Rosen on Wednesday, April 26, 2000 at 11:00 A.M.
APPENDIX A
Figure
Graphic file number 0 named 00000001.tif with height 104 p and width 137 p Left aligned
[ The five drawings of the '992 patent .]