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March 11, 2004.


The opinion of the court was delivered by: ROBERT KELLY, Senior District Judge



On August 5, 2002, the Plaintiff, Lawman Armor Corporation ("Lawman") filed suit against the Defendant, Master Lock Company ("Master Lock"), alleging that Master Lock's two-hook automobile wheel locks infringe on design patent number 357,621 (the "621 patent"). Lawman is the exclusive licensee of the 621 patent. Presently before this Court is Master Lock's Motion for Summary Judgment of Non-Infringement. For the following reasons, Master Lock's Motion will be granted.


  Automobile wheel locks act as anti-theft devices. Lawman became the exclusive licensee of the 621 patent in July of 2002. Approximately one month after Lawman became the exclusive licensee of the 621 patent, it filed this patent infringement suit against Master Lock. In its Complaint, Lawman initially alleged that Master Lock's wheel lock model 252, as well as other unnamed models, infringe on the 621 patent. Lawman now states that Master Lock's wheel lock Page 2 models 238, 248, 249, 260 and 263, in addition to model 252, infringe on the 621 patent. To assist us in evaluating this Motion for Summary Judgment of Non-Infringement, Master Lock provided samples of the products Lawman alleges infringe on the 621 patent.*fn1

  While Lawman has a design patent for its two-hook automobile wheel locks, Master Lock also has a design patent for the shape of the hooks on its products. In April 2001, the Patent Office granted design patent number 440,861 (the "861 patent"). The inventor of the 861 patent is Roy Alden Thompson and Master Lock is listed as the patent's assignee. The only claim for the 861 patent is "[t]he ornamental design for a quad-hook for a steering wheel lock, as shown and described." The Patent Office had the opportunity, while reviewing the application for the 861 patent, to analyze Page 3 whether the 861 application was patentably distinct from the 621 patent.*fn2

  On August 6, 2003, Master Lock filed its Motion for Summary Judgment of Non-Infringement. Master Lock sets forth its proposed claim construction of the 621 patent within its Brief. In addition, Master Lock argues that its two-hook wheel locks do not satisfy the ordinary observer or point of novelty test necessary for a finding of infringement. However, Lawman argues that Master Lock's claim construction is flawed. Lawman first argues that Master Lock's proposed claim construction of the 621 patent is incorrect and counters with its own proposed claim construction. Lawman additionally argues that material issues of fact still exist with respect to the ordinary observer and point of novelty tests so as to preclude summary judgment.


  "Summary judgment is appropriate when, after considering the evidence in the light most favorable to the nonmoving party, no genuine issue of material fact remains in dispute and `the moving party is entitled to judgment as a matter of law.'" Hines v. Consol. Rail Corp., 926 F.2d 262, 267 (3d Cir. 1991)(citations omitted). The inquiry is "whether the evidence presents a sufficient disagreement to require submission to the jury or whether it is so one-sided that one party must prevail as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986). The moving party carries the initial burden of demonstrating the absence of any genuine issues of material fact.*fn3 Big Apple BMW, Inc. v. BMW of N. Am. Inc., 974 F.2d 1358, 1362 (3d Cir. 1992). Once the moving party has produced evidence in support of summary judgment, the non-moving party must go beyond the allegations set forth in its pleadings and counter with evidence that demonstrates that there is a genuine issue of fact for trial. See id. at 1362-63. Summary judgment must be granted "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). Finally, "`summary judgment is as appropriate in a patent case as it is in any other case.'" See Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1332 (Fed. Cir. 1998)(quoting C.R. Bard, Inc. v. Advanced Cardiovascular, Inc., 911 F.2d 670, 672 (Fed. Cir. 1990)). Page 5


  Determining whether a product infringes upon a design patent is a two-step process. First, the Court must give its claim construction of the design patent. See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)(citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)(en banc), aff'd, 517 U.S. 370 (1996))(stating "[d]etermining whether a design patent claim has been infringed requires, first, as with utility patents, that the claim be properly construed to determine its meaning and scope"). Second, the properly construed claim must satisfy two tests. Initially, the properly construed claim must be compared to the allegedly infringing devices under the ordinary observer test. See Elmer, 67 F.3d at 1577. The standard under the ordinary observer test was set forth over a century ago by the United States Supreme Court:
[I]f in the eye of the 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.
Gorham v. White, 81 U.S. (14 Wall.) 511, 528 (1871). Moreover, the allegedly infringing devices must satisfy the point of novelty test. The point of novelty test asks "whether the accused design appropriates the points of novelty that distinguish the patent design from the prior art." See Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1286-87 (Fed. Cir. 2002)(citing Contessa Food Prods. Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002)). If either the ordinary observer or the point of novelty test is not satisfied, there can be no infringement. See Contessa Food Prods., 282 F.3d at 1377 (citing Unidynamics Corp. v. Automatic Prods. Int'l, Ltd., 157 F.3d 1311, 1323 (Fed. Cir. 1998)). The Court will now turn its attention to the issue of claim construction before it Page 6 moves onto the ordinary observer and point of novelty tests.


  1. Relevant Case Law

  The United States Court of Appeals for the Federal Circuit ("Federal Circuit") has emphasized that claim construction is strictly within the purview of the Court to decide. See Markman, 52 F.3d 983-84. The 621 patent is a design patent and reads as follows, "[t]he ornamental design for a sliding hook portion of a vehicle steering wheel lock." Typically, courts arrive at a written claim construction that evokes a visual image consistent with the claimed design. Such a written description must evoke a visual image constant with the claimed design rather than merely represent the general design concept. See Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 104 (Fed. Cir. 1996)(stating district court erred when its verbal description did not evoke a visual image consonant with the claimed design but rather merely represented the general design concept); see also, OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997)(agreeing with district court's claim construction that construes design patent to its overall ornamental visual impression rather than to the broader general design concept).

  In Durling, the Federal Circuit rejected the District Court's description of a design patent because it did not evoke a visual image of the claimed design.*fn4 See Durling, 101 F.3d at 104. In that case, the District Court gave the following description of the design patent: "[t]he look that the Page 7 patent-in-suit presented is a sectional sofa with double rolls of upholstery under the seating area which curve accurately upward under the end tables. The end tables have the appearance of little vertical support." Id. In rejecting the District Court's description, the Federal Circuit set forth the following description as the proper claim construction:
[A] contiguous three-piece sectional sofa group containing two sofa sections at approximately right angles to each other with a triangular corner table at their juncture. On the sides away from the corner table, each sofa section has rounded corners and includes a bolster pillow as an armrest. In addition, each sofa section at the end adjacent to the corner table, follows along the bottom of the sofa towards the other end, and curves upwardly (i.e., sweeps upward) through a 90° angle to truncate at a horizontal plane upon which the end table rests.
Id. In rejecting the District Court's construction in favor of its own, the Federal Circuit stated that the District Court erred by focusing on the design concept of the patent, rather than its overall visual appearance. See id.
  The Federal Circuit also had the opportunity to review a District Court's claim construction of a design patent in OddzOn Products. In that case, the District Court gave the following claim construction:
[A] ball shaped like a football, with a slender, straight tailshaft projecting from the rear of the football. In addition, the `001 Patent design has three fins symmetrically arranged around the tailshaft, each of which has a gentle curve up and outward which creates a fin with a larger surface area at the end furthest from the ball. The fins flare outwardly along the entire length of the tailshaft, with the front end of the fin extending slightly up along the side of the football so that the fins seemingly protrude from the inside of the football.
OddzOn Prods., 122 F.3d at 1400 (detailing District Court's claim construction). The Federal Circuit agreed with the District Court's claim construction, noting that its claim construction "properly limits the Page 8 scope of the patent to its overall ornamental visual impression, rather than to the broader general design concept of a ...

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