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Junker v. Medical Components, Inc.

United States District Court, E.D. Pennsylvania

October 30, 2017

LARRY G. JUNKER Plaintiff,
v.
MEDICAL COMPONENTS, INC., et al. Defendants.

          MEMORANDUM OPINION

          GOLDBERG, J.

         This 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.

         I. FACTUAL & PROCEDURAL BACKGROUND

         The 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, 2016).

         Following 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.

         II. PROPRIETY OF DECIDING INDEFINITENESS AT THE CLAIM CONSTRUCTION STAGE

         As a 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 ¶¶ 101-106.)

         Plaintiff 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 claim construction.

         “Indefiniteness 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).

         “[A] 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. 1, 2016).

         Whether 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 Markman stage.”).[1]

         In 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.

         First, 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.[2]

         Second, 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).

         The 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.[3] 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.

         III. CLAIM CONSTRUCTION OF THE D'839 PATENT

         “Determining 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 claim.[4]

         A. Legal Standard: Claim Construction of ...


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