United States District Court, E.D. Pennsylvania
LARRY G. JUNKER Plaintiff,
MEDICAL COMPONENTS, INC., et al. Defendants.
case involves a design patent infringement dispute.
Plaintiff, Larry Junker, is the owner of U.S. Design Patent
No. D450, 839, entitled “Handle for Introducer
Sheath” (the “D'839 Patent”). He has
filed a one-count complaint for design patent infringement
against Defendants, Medical Components, Inc. and Martech
Medical Products, Inc. (collectively, “MedComp”)
alleging that Defendants have violated 35 U.S.C. § 271,
et seq. by selling medical devices embodying
Plaintiff's patented design. Defendants responded with
counterclaims for invalidity and non-infringement. Presently
before me are the parties' briefs on claim construction
of the D'839 Patent's single claim.
FACTUAL & PROCEDURAL BACKGROUND
facts of this case were previously detailed in my December
16, 2016, Memorandum Opinion granting in part and denying in
part Plaintiff's motion to dismiss various portions of
Defendants' third amended answer. See Junker v. Med.
Components, Inc., 2016 WL 7427767 (E.D. Pa. Dec. 21,
my ruling on Plaintiff's motion to dismiss, I set a
briefing schedule for the parties to submit their proposed
claim constructions of the D'839 Patent. Defendants spend
the majority of their briefs arguing that the D'839
Patent is invalid because it is indefinite, and insist that
this issue should be decided at the claim construction stage.
Defendants have also filed a Daubert motion seeking
to exclude one of Plaintiff's expert declarations that
was attached to Plaintiff's claim construction brief. On
May 9, 2017, I held a hearing and heard argument on the
parties' proposed claim constructions.
PROPRIETY OF DECIDING INDEFINITENESS AT THE CLAIM
threshold issue, Defendants-relying on the expert report of
one of their experts, Richard Meyst-first argue that the
D'839 Patent is invalid because it is indefinite under 35
U.S.C. § 112(b). They insist that this issue is
appropriate to decide at the claim construction stage, and
highlight several purported inconsistencies in the figures
included within the D'839 Patent. Specifically,
Defendants aver that one skilled in the art would be unable
to ascertain with reasonable certainty: how many
“ribs” are supposed to be on the top of the
“Mickey-Mouse-ear-shaped” handles (5 or 6); the
degree to which the Mickey-Mouse-ear-shaped handles are to be
“upswept” in appearance (62 degrees versus 38
degrees); whether one or two “steps” are to be
included at the base of the hub of the design; and, whether
the Mickey-Mouse-ear-shaped handles are to include a
“scallop” on their top surface (or, whether they
are not to have such a feature). Defendants contend that
these inconsistencies render the single claim of the
D'839 Patent indefinite, and thus invalid as a matter of
law. (Defs.' Br. 6-12; Doc. No. 184-2, Exhibit 1
responds that these purported discrepancies are not germane
to the overall ornamental design of the patent, and that
“[e]ven if minor discrepancies exist among the figures
[of the D'839 Patent], this is not a valid basis for
ruling the claim indefinite.” (Pl.'s Reply 7-8.) In
any event, Plaintiff asserts that Defendants' argument
regarding the degree to which the handle ears are to be
upswept in appearance (38 versus 62 degrees) lacks merit
because the figures identified by Defendants in support of
this argument are viewed from different perspectives of the
claimed design. Plaintiff further maintains that the alleged
“scallop” feature identified by Defendants is a
“feature of their own imagination, ” and not one
that is actually present in the claimed design. (Id.
at 7.) At a minimum, Plaintiff asks that the indefiniteness
issue be decided at the summary judgment stage, given that
Defendants have not formally moved for an invalidity ruling,
and because my Scheduling Order directed the parties to brief
is a question of law.” CSB-Sys. Int'l Inc. v.
SAP Am., Inc., 2011 WL 3240838, at *16 (E.D. Pa. July
28, 2011). “[A] patent claim is presumed valid . . .
and therefore, indefiniteness must be shown by clear and
convincing evidence.” Sandvik Intellectual Prop. AB
v. Kennametal, Inc., 2012 WL 3027983, at *9 (W.D. Pa.
Feb. 16, 2012).
patent is invalid for indefiniteness if its claims, read in
light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the
invention.” Tinnus Enterprises, LLC v. Telebrands
Corp., 846 F.3d 1190, 1205 (Fed. Cir. 2017) (quoting
Nautilus, Inc. v. Biosig Instruments, Inc., 134
S.Ct. 2120, 2124 (2014)). Following the Supreme Court's
decision in Nautilus, very few district courts have
attempted to address the issue of invalidity based on
indefiniteness in the design patent context. But one court
that did explained that “a design patent is invalid for
indefiniteness if the errors and inconsistencies in the
patent drawings are of such magnitude that the drawings,
taken as a whole, fail to inform, with reasonable certainty,
those skilled in the art about the overall appearance of the
design.” Deckers Outdoor Corp. v. Romeo &
Juliette, Inc., 2016 WL 7017219, at *4 (C.D. Cal. Dec.
to decide the issue of invalidity based on indefiniteness at
the claim construction stage depends on the particular
circumstances and claims at issue in a given case, and is a
matter within a court's discretion. But district courts
throughout the country have generally been reluctant to
consider whether a patent is indefinite at the claim
construction phase, rather than at the summary judgment
phase. See e.g., Indus. Tech. Research Inst. v.
LG Elecs. Inc., 2014 WL 6907449, at *2 (S.D. Cal. Dec.
8, 2014) (deferring “determination of indefiniteness to
a later stage of the proceedings so the parties may
thoroughly brief the Court on the matter.”);
CSB-Sys. Int'l Inc., 2011 WL 3240838, at *17
(“Several well-settled principles [including the
dispositive nature of an indefiniteness finding] . . . tend
to discourage rulings on indefiniteness at the
reviewing the parties' arguments, and based on the
particular circumstances of this case, I will defer ruling on
indefiniteness until the summary judgment stage. Multiple
reasons support this decision.
Plaintiff has-in accordance with my January 30, 2017,
Scheduling Order- focused his arguments on construction of
the D'839 Patent's single claim. Given the
potentially dispositive nature of an invalidity ruling, that
decision is better left for when Plaintiff has had a full
opportunity to thoroughly brief and argue this issue. See
Indus. Tech. Research Inst., 2014 WL 6907449, at *2;
CSB-Sys. Int'l Inc., 2011 WL 3240838, at *17.
Moreover, as Plaintiff correctly points out, Defendants have
not formally moved for an invalidity ruling.
Defendants' indefiniteness arguments rest on a collection
of purported inconsistencies in the figures of the D'839
Patent-some of which Plaintiff disputes the very existence
of. At least one court-when faced with an argument at the
claim construction phase that a patent was indefinite due to
alleged inconsistencies in the patent figures-has held that
such alleged inconsistencies do not meet a patent
challenger's burden of proving indefiniteness by clear
and convincing evidence. See Deckers Outdoor Corp.,
2016 WL 7017219, at *4 (“[T]he Court is not
‘clearly' convinced that these discrepancies are of
such magnitude that a boot designer and manufacturer could
not determine with reasonable certainty the overall
appearance of the boot.”) (citations omitted). The
Deckers Outdoor case is consistent with other
decisions, including one by the Federal Circuit, which have
held that inconsistencies in patent figures do not
necessarily render a patent indefinite. See Antonious v.
Spalding & Evenflo Cos., Inc., 217 F.3d 849 (Fed.
Cir. 1999) (unpublished) (“We conclude that a person of
skill in the art would primarily look to Figures 2 and 3 to
determine the shape of the weight bar, and any associated
discrepancies in Figure 4 would not be sufficient to preclude
such a person from gaining an overall understanding of the
total substance of the designs. . . . Consequently, we hold
that [the defendant] could not have shown by clear and
convincing evidence that the ‘056 and ‘308
patents were invalid for indefiniteness.”);
Chih-Wen Chung v. Bed Bath & Beyond, Inc., 2011
WL 6967991, at *5 n.50 (W.D. Tex. Dec. 20, 2011) (collecting
cases on the impact of discrepancies and “obvious
clerical error[s]” in patent figures, and noting that
courts have often declined to give effect to the erroneous
aspect(s) of patent figures).
above precedent further cuts against a ruling on invalidity
at the claim construction stage where, as here, the patent
challenger's argument for invalidity is based on alleged
inconsistencies in the patent figures. Accordingly, I
will decline, at this time, to determine whether the
D'839 Patent is invalid for indefiniteness and will
proceed with construing the D'839 Patent's single
CLAIM CONSTRUCTION OF THE D'839 PATENT
whether a design patent is infringed is a two-step process.
First, the court must construe the design patent's
claim.” Saverglass, Inc. v. Vitro Packaging,
LLC, 130 F.Supp.3d 747, 751 (E.D.N.Y. 2015). The second
step requires a fact finder to compare the patented and
accused designs to determine whether the accused design is
substantially similar in appearance to the patented design.
Id. at 751. At issue in this opinion is the first
step-construction of the D'839 Patent's single
Legal Standard: Claim Construction of ...