Catalyst Lifestyle Limited v. Elago Co., Ltd

[7] 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA [10] 11 CATALYST LIFESTYLE LIMITED, Case No.: 22cv536-LL-MMP 12 Plaintiff, CLAIM CONSTRUCTION ORDER 13 v. 14 ELAGO CO., LTD and ELYEL CORPORATION, [15] Defendants. [17] ELAGO CO., LTD and ELYEL 18 CORPORATION, 19 Counter Claimants, 20 v. 21 CATALYST LIFESTYLE LIMITED, Counter Defendant. [24] In the present action, Plaintiff Catalyst Lifestyle Limited (“Plaintiff”) asserts, among [25] other claims, a claim for infringement of United States Design Patent No. D794,617 (“the [26] ’617 Patent”) against Defendants Elago Co., Ltd and Elyel Corporation (collectively [27] “Defendants”). See ECF No. 1, Complaint (“Compl.”) ¶¶ 14–17, 74–78. On March 7, 2023, [28] 1 the parties filed their joint claim construction hearing statement, chart, and worksheet 2 pursuant to Patent Local Rule 4.2. ECF No. 36. On April 4, 2023, the parties filed their 3 opening claim construction briefs. ECF Nos. 40, 41. On May 2, 2023, the parties filed their 4 responsive claim construction briefs. ECF Nos. 48, 49. 5 On September 8, 2023, the Court issued a tentative claim construction order. On 6 September 13, 2023, the parties submitted on the tentative claim construction. Accordingly, 7 the Court vacated the claim construction hearing that was scheduled for September 21, 8 2023. ECF No. 63. 9 Having been informed by the parties that they submit on the Court’s tentative ruling, 10 the Court adopts its tentative claim construction order, as set forth below, as its final ruling 11 on the claim construction. 12 I. BACKGROUND 13 Plaintiff is a designer, manufacturer, and seller of products that protect a user’s 14 mobile electronic devices, including waterproof cases for AirPods®. See Compl. ¶¶ 8–10, 15 24–25. Plaintiff is the assignee and owner of the ’617 Patent. United States Design Patent 16 No. D794,617, at [73] (issued Aug. 15, 2017). Plaintiff alleges that Defendants infringe the 17 ’617 Patent by making, using, importing, offering for sale, and/or selling competing 18 waterproof headphone case products. See Compl. ¶¶ 40–70, 74–78. 19 The ’617 Patent is a design patent entitled “Sleeve for Electronic Device” and was 20 issued on August 15, 2017. ’617 Patent at [45], [54]. The ’617 Patent contains a single 21 claim reciting: “The ornamental design for a sleeve for electronic device, as shown and 22 described.” Id. at [57]. 23 The ten figures in the ’617 Patent are set forth below: 24 / / / 25 / / / 26 / / / 27 / / / 28 / / / [1] Rees 4 i a. SS / i / Sen. Sis, xl | / \\ / Vaca ee 5 si / =r. 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Se a "Eas Ay) 21 : ei iM Pas By Ags yA i \ | i Se 22 i \ j SST \ \ 4 \/ eee 23 Be NO Mtn wl, t oe □ 24 Are i ey & i 2 heal ¢ ms spa ease gail A LE PN | } LE apne ger" □ ~ fii ms f 6 eer’ | ao Sy 27 ee } SO WE F REED 1 On April 18, 2022, Plaintiff filed a Complaint against Defendants, alleging claims 2 for: (1) patent infringement; (2) infringement of registered trade dress under Section 32 of 3 the Lanham Act, 15 U.S.C. § 1114 (a); (3) false designation of origin in violation of Section 4 43(a) of the Lanham Act, 15 U.S.C. § 1125 (a); (4) unfair competition in violation of 5 California Business and Professions Code §§ 17200 et seq.; (5) common law trademark 6 infringement and unfair competition; (6) unjust enrichment; and (7) civil conspiracy. 7 Compl. ¶¶ 74–124. On August 29, 2022, Defendants filed an answer and counterclaim to 8 Plaintiff’s Complaint. ECF No. 11. 9 On March 7, 2023, the parties filed a joint hearing statement, chart, and worksheet 10 and claim construction briefing disputing the proper construction of the sole claim in the 11 ’617 Patent. See ECF No. 36 at 2, 8–10. The parties filed their respective opening claim 12 construction briefs and responsive claim construction briefs. ECF Nos. 40, 41, 48, 49. 13 II. LEGAL STANDARD 14 Claim construction is an issue of law for the court to decide. Teva Pharm. USA, Inc. 15 v. Sandoz, Inc., 574 U.S. 318 , 326 (2015); Markman v. Westview Instruments, Inc., 517 16 U.S. 370 , 372 (1996). A district court’s duty at the claim construction stage is to resolve 17 disputes about a claim’s scope that have been raised by the parties. Eon Corp. IP Holdings 18 v. Silver Spring Networks, 815 F.3d 1314, 1319 (Fed. Cir. 2016) (citing O2 Micro Int’l Ltd. 19 v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008)). 20 A patent may be obtained for the “new, original and ornamental design [of] an article 21 of manufacture.” 35 U.S.C. § 171 (a); see Richardson v. Stanley Works, Inc., 597 F.3d 1288 , 22 1293 (Fed. Cir. 2010) (“[A] design patent, unlike a utility patent, limits protection to the 23 ornamental design of the article.”). “[D]esign patents protect the overall ornamentation of 24 a design, not an aggregation of separable elements.” Sport Dimension, Inc. v. Coleman Co., [25] 820 F.3d 1316, 1322 (Fed. Cir. 2016). With respect to claim construction for design 26 patents, the Federal Circuit has “instructed trial courts that design patents ‘typically are 27 claimed as shown in drawings.’” Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 , 28 1342 (Fed. Cir. 2020) (quoting Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 , 679– 1 80 (Fed. Cir. 2008) (en banc)). “Words cannot easily describe ornamental designs.” Sport 2 Dimension, 820 F.3d at 1320 . Thus, a design patent’s claim is “often better represented by 3 illustrations than a written claim construction.” Id. (citing Egyptian Goddess, 543 F.3d at 4 679). 5 Nevertheless, there are “a number of claim scope issues” that can arise with respect 6 to design patents “which may benefit from verbal or written guidance.” Ethicon Endo7 Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333 (Fed. Cir. 2015). The Federal Circuit 8 has explained: 9 [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 [10] describing the role of particular conventions in design patent drafting, such as 11 the role of broken lines; assessing and describing the effect of any representations that may have been made in the course of the prosecution [12] history; and distinguishing between those features of the claimed design that 13 are ornamental and those that are purely functional. 14 Egyptian Goddess, 543 F.3d at 680 (citations omitted). “[I]n deciding whether to attempt 15 a verbal description of the claimed design, [a district] court should recognize the risks 16 entailed in such a description, such as the risk of placing undue emphasis on particular 17 features of the design and the risk that a finder of fact will focus on each individual 18 described feature in the verbal description rather than on the design as a whole.” Egyptian 19 Goddess, 543 F.3d at 679–80. “[A] district court’s decision regarding the level of detail to 20 be used in describing the claimed design is a matter within the court’s discretion.” Id. at 21 679. 22 III. ANALYSIS 23 The sole claim in the ’617 Patent recites: “The ornamental design for a sleeve for 24 electronic device, as shown and described.” ’617 Patent at [57]. Plaintiff proposes that this 25 claim be construed as: “The overall visual impression of the ornamental design of a sleeve 26 for electronic device, as shown and described in FIGs 1–10 of United States Design Patent 27 D704,617.” ECF No. 36 at 2, 8–10. Defendants propose that this claim be construed as: 28 “The two-piece, ornamental design for a sleeve for an electronic device, as identified by 1 the solid lines in each and every one of Figures 1-10 of the Design Patent taken 2 collectively.” Id. 3 In presenting these competing proposed constructions, the parties agree that the 4 Court’s construction for the claim should include the phrase “ornamental design for a 5 sleeve for an electronic device.” ECF No. 36 at 2–3. Accordingly, the Court will include 6 that phrase in its construction of the claim. 7 Further, the parties agree that all figures in the ’617 Patent must be considered 8 collectively. See ECF No. 41 at 8 (“all figures must necessarily be considered as part of the 9 overall design as a whole” (emphasis in original)); ECF No. 48 at 3 (“the design is defined 10 collectively by Figures 1 through 10”); see also Contessa Food Prod., Inc. v. Conagra, 11 Inc., 282 F.3d 1370 , 1379 (Fed. Cir. 2002), abrogated on other grounds by Egyptian 12 Goddess, 543 F.3d 665 (“[T]he ‘ordinary observer’ analysis is not limited to the ornamental 13 features of a subset of the drawings, but instead must encompass the claimed ornamental 14 features of all figures of a design patent.”). Accordingly, the Court will include that 15 clarification in its construction of the claim. 16 Next, the Court turns to the disputed portions of the parties’ proposed constructions. 17 In presenting their competing proposals, the parties present two disagreements regarding 18 the proper construction of the ’617 Patent’s claim. First, the parties disagree as to whether 19 the Court’s construction should specifically describe the claimed design as being a “two20 piece” design. See ECF No. 36 at 2–3. Second, the parties disagree as to whether the 21 Court’s construction should specifically explain that the claimed design is “identified by 22 solid lines.” See id. The Court addresses these two issues in turn. 23 Defendants request that the Court’s claim construction specifically describe the 24 claimed ornamental design as a “two-piece” design. See ECF No. 36 at 2–3; ECF No. 40 25 at 3–4; ECF No. 48 at 5–6. Plaintiff argues that Defendants’ proposal is improper because 26 it inaccurately characterizes the overall claimed design based on one small aspect shown 27 in just two of the ’617 Patent’s ten figures. See ECF No. 36 at 2–3; ECF No. 41 at 4–5; 28 ECF No. 49 at 2–4. 1 Figures 9 and 10 of the ’617 Patent depict an “exploded” view of the claimed 2 ornamental design, and the Court acknowledges that the two figures show the claimed 3 sleeve design as a two-piece design, where the design includes a removable charging port 4 cover. See ’617 Patent figs. 9, 10. Nevertheless, the Federal Circuit has cautioned courts 5 during claim construction of a design patent to recognize “the risk of placing undue 6 emphasis on particular features of the design and the risk that a finder of fact will focus on 7 each individual described feature in the verbal description rather than on the design as a 8 whole.” Egyptian Goddess, 543 F.3d at 680 ; see also Lanard, 958 F.3d at 1343 (“To be 9 clear, the ‘ordinary observer’ test for design patent infringement requires the fact finder to 10 ‘compar[e] similarities in overall designs, not similarities of ornamental features in 11 isolation.’” (quoting Ethicon, 796 F.3d at 1335 )). Here, Defendants’ “two-piece” proposal 12 is improper because it places “undue emphasis” on one particular feature of the claimed 13 design, creating a risk that the finder of fact might improperly focus on that specific feature 14 in isolation instead of on the design as a whole. See Egyptian Goddess, 543 F.3d at 680 . 15 Accordingly, the Court declines to include Defendants’ proposed “two-piece” language in 16 its construction of the claim. 17 Further, Defendants request that the Court’s claim construction specifically explain 18 that the claimed design is identified by the “solid lines” in Figures 1-10. See ECF No. 36 19 at 2–3; ECF No. 40 at 3–4; ECF No. 48 at 3–5. In response, Plaintiff concedes that the 20 figures in the design patent have solid lines that define the design and broken lines that do 21 not. See ECF No. 49 at 2–3. Nevertheless, Plaintiff asserts that it would be an error to 22 include an explanation regarding the role of broken lines in the Court’s claim construction. 23 See id. at 3. 24 The Federal Circuit has explained that it is appropriate to construe a design patent 25 claim to describe “the role of broken lines” in design patent drafting. Egyptian Goddess, [26] 543 F.3d at 680 (citing 37 C.F.R. § 1.152 ). Under the regulations governing design patent 27 drafting, if certain features appearing in the figures of a design patent are not desired to be 28 claimed, a patentee “is permitted to show the features in broken lines to exclude those 1 features from the claimed design.” Contessa, 282 F.3d at 1379; see, e.g., Campbell Soup 2 Co. v. Gamon Plus, Inc., 10 F.4th 1268 , 1271 (Fed. Cir. 2021) (“Many features in the above 3 figure are drawn using broken lines, which, consistent with 37 C.F.R. § 1.152 , means they 4 ‘represent the article in which the claimed design is embodied, but . . . form[] no part of 5 the claimed design.’”). Conversely, a patentee’s failure to use broken lines in the design 6 patent’s figures to depict a particular ornamental shape or feature signals that a particular 7 shape or feature is included in the claimed design. See, e.g., Unique Indus., Inc. v. 965207 8 Alberta Ltd., 722 F. Supp. 2d 1, 10 (D.D.C. 2009) (“[T]he defendant’s failure to depict the 9 ‘?’-shaped sparkler in broken lines signals the inclusion of that shape in the claimed 10 design.”); Junker v. Med. Components, Inc., 2017 WL 4922291 , at *5 (E.D. Pa. Oct. 31, 11 2017) (“[A]ll of the figures within the D’839 Patent clearly depict the hub feature in solid 12 lines. Accordingly, this feature must be considered part of the overall ornamental design 13 unless it is purely functional.” (emphasis in original)). 14 Consistent with these principles, the “Description” of the ’617 Patent explains with 15 respect to the patent’s figures: “The broken lines indicate environment and form[] no part 16 of the claimed design.” ’617 Patent at Description. As such, it is proper to include an 17 explanation that the claimed design encompasses everything depicted by the solid lines in 18 Figures 1-10 and that the broken lines in those figures form no part of the claimed design 19 in the Court’s construction of the ’617 Patent’s claim. See Furrion Prop. Holding Ltd. v. 20 Way Interglobal Network, LLC, 2021 WL 1625148 , at *4 (N.D. Ind. Apr. 27, 2021) (“[T]he 21 focus for claims construction purposes must be on the solid lines only. This is because 22 broken lines in a drawing for a utility patent are not considered part of the claimed 23 design.”); see, e.g., Shure Inc. v. Clearone, Inc., 2020 WL 6074233 , at *9 (D. Del. Oct. 15, 24 2020) (construing a design patent claim as “The ornamental design for an array microphone 25 assembly, as shown in the solid lines and associated claimed surfaces of Figures 1-6 and 26 described in the specification of the ’723 patent. The broken lines in Figures 1-6 of the 27 ’723 patent form no part of the claimed design.”); Junker, 2017 WL 4922291 , at *7 28 (construing a design patent claim as “The D’839 Patent claims the ornamental design of a 1 handle for an introducer sheath, as shown in Figures 1—9. The broken lines in the Figures 2 || of the D'839 Patent represent unclaimed subject matter.”’). 3 In sum, the Court adopts a modified version of Defendants’ proposed construction. 4 ||The Court construes the °617 Patent’s claim “[t]he ornamental design for a sleeve for 5 || electronic device, as shown and described” as: “The ornamental design for a sleeve for an 6 electronic device, as identified by the solid lines in each and every one of Figures 1-10 of 7 ||the ’617 Patent taken collectively. The broken lines in Figures 1-10 form no part of the 8 claimed design.” 9 ||IV. CONCLUSION 10 For the above reasons, the Court CONSTRUES the °617 Patent’s claim as set forth 11 || above.! 12 IT IS SO ORDERED. 13 Dated: September 21, 2023 KO 14 CF | 15 Honorable Linda Lopez 16 United States District Judge [21] 23 In Defendants’ responsive claim construction brief, Defendants assert that □□□□□□□□□□□ 24 ||references to prior art in its opening claim construction brief are improper and should be 95 stricken. See ECF No. 48 at 6-8. In Plaintiff's responsive claim construction brief, Plaintiff asserts that if Defendants attempt to raise any functionality or prior art issues in their 26 || responsive claim construction brief, the Court should strike and exclude those arguments. 77 See ECF No. 49 at 4-7. Here, the claim construction order does not cite to or rely on any of the parties’ arguments regarding the prior art or functional features of the design. As 28 such, both parties’ competing requests to strike are MOOT.