Case 3:06-cv-00995-K Document 115 Filed 03/16/09 Page 1 of 19 PageID 3435
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
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`CIVIL ACTION NO.
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`3:06-CV-995-K
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`§
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`§
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`MINKA LIGHTING, INC.,
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`Plaintiff,
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`v.
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`MAXIM LIGHTING
`INTERNATIONAL, INC., et al.,
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`Defendants.
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`MEMORANDUM OPINION AND ORDER
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`Before the Court are Plaintiff Minka Lighting, Inc.’s Motion for Partial Summary
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`Judgment and Motion to Strike Defendants’ Incompetent Summary Judgment Evidence
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`(Doc. Nos. 76 and 81) and Defendants Maxim Lighting International, Inc., Maxim
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`Lighting, Inc., and Maxim Group Companies’ Motion for Partial Summary Judgment
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`and Motion to Strike Plaintiff’s Supplemental Summary Judgment Evidence (Doc. Nos.
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`73 and 105).
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`The Court GRANTS Defendants’ motion for partial summary judgment.
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`Consequently, Plaintiff’s motion for partial summary judgment is DENIED. Because
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`the allegedly incompetent summary judgment evidence concerns only points of novelty
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`and are not considered pursuant to this opinion, Plaintiff’s motion to strike is DENIED
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`as moot. Because the Court would rule for Defendants even if the supplemental
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`affidavit and illustrations to which they object are considered, Defendants’ motion to
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`strike is DENIED.
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
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`CIVIL ACTION NO.
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`3:06-CV-995-K
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`§§
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`§
`§
`§
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`§
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`§§
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`§
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`MINKA LIGHTING, INC.,
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`Plaintiff,
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`v.
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`MAXIM LIGHTING
`INTERNATIONAL, INC., et al.,
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`Defendants.
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`MEMORANDUM OPINION AND ORDER
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`Before the Court are Plaintiff Minka Lighting, Inc.’s Motion for Partial Summary
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`Judgment and Motion to Strike Defendants’ Incompetent Summary Judgment Evidence
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`(Doc. Nos. 76 and 81) and Defendants Maxim Lighting International, Inc., Maxim
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`Lighting, Inc., and Maxim Group Companies’ Motion for Partial Summary Judgment
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`and Motion to Strike Plaintiff’s Supplemental Summary Judgment Evidence (Doc. Nos.
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`73 and 105).
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`The Court GRANTS Defendants’ motion for partial summary judgment.
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`Consequently, Plaintiff’s motion for partial summary judgment is DENIED. Because
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`the allegedly incompetent summary judgment evidence concerns only points of novelty
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`and are not considered pursuant to this opinion, Plaintiff’s motion to strike is DENIED
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`as moot. Because the Court would rule for Defendants even if the supplemental
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`affidavit and illustrations to which they object are considered, Defendants’ motion to
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`strike is DENIED.
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`Case 3:06-cv-00995-K Document 115 Filed 03/16/09 Page 2 of 19 PageID 3436
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`I.
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`Factual and Procedural Background
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`Plaintiff Minka Lighting, Inc. (“Minka”) produces interior and exterior lighting
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`fixtures. Plaintiff’s lighting fixtures are distributed through authorized distributors and
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`retail outlets like Home Depot and specialty showrooms. Defendants Maxim Lighting
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`International, Inc., Maxim Lighting, Inc., and Maxim Group Companies (collectively
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`“Maxim”) produce competing light fixtures. Both companies display their wares at the
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`Dallas Market Hall, located within this judicial district, and receive a significant portion
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`of their business through orders placed at this marketplace.
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`Minka filed this action against Maxim alleging, among other things, that
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`Defendants infringed Plaintiff’s design patents relating to various lighting fixtures.
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`Specifically, Plaintiff asserts three design patents against Defendants: U.S. Patent Nos.
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`D455,515 (“‘515 patent”), D461,591 (“‘591 patent”), and D535,052 (“‘052 patent”).
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`A fourth claim by Plaintiff, concerning U.S. Patent No. D461,766, was dismissed by
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`order of this Court on July 28, 2008 (Doc. No. 99). The three remaining patents in suit
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`involve an exterior lamp housing, a lamp support arm, and an interior light globe.
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`Plaintiff and Defendant each moved for summary judgment on the three
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`remaining patent infringement claims. Defendant seeks judgment that its accused
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`products do not infringe the patents in suit, but it has not raised an invalidity argument
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`at this summary judgment stage. Plaintiff’s additional claims for copyright infringement
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`and breach of contract are not the subject of the instant motions for summary judgment.
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`Case 3:06-cv-00995-K Document 115 Filed 03/16/09 Page 3 of 19 PageID 3437
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`Likewise, Maxim’s counterclaims on the copyright claims are not at issue here.
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` After conducting a hearing, considering oral argument, and reviewing the parties’
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`briefs and related filings, this Court previously construed the disputed claims according
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`to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995). The Court now
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`turns to the parties’ motions for summary judgment.
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`II.
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`Legal Standard
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`Summary judgment is appropriate when the pleadings, affidavits, and other
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`summary judgment evidence show that no genuine issue of material fact exists and the
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`moving party is entitled to judgment as a matter of law. FED. R. CIV. P. 56(c); Celotex
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`Corp. v. Catrett, 477 U.S. 317, 322 (1986); U.S. Philips Corp. v. Iwasaki Elec. Co., 505
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`F.3d 1371, 1374 (Fed. Cir. 2007). The moving party bears the burden of identifying
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`those portions of the record it believes demonstrate the absence of a genuine issue of
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`material fact. Celotex, 477 U.S. at 322–25. Once a movant makes a properly supported
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`motion, the burden shifts to the nonmovant to show that summary judgment should not
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`be granted; the nonmovant may not rest upon the allegations in the pleadings, but must
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`support the response to the motion with summary judgment evidence showing the
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`existence of a genuine fact issue for trial. Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
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`255–57 (1986).
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`In considering whether genuine issues of material fact exist, the court must
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`determine whether a reasonable jury could return a verdict for the nonmoving party in
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`Case 3:06-cv-00995-K Document 115 Filed 03/16/09 Page 4 of 19 PageID 3438
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`the face of all evidence presented. Id. at 249. All evidence and reasonable inferences
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`must be viewed in the light most favorable to the nonmovant. United States v. Diebold,
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`Inc., 369 U.S. 654, 655 (1962).
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`III. Analysis
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`A design patent requires a new, original, and ornamental design. 35 U.S.C. § 171.
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`A design patent is defined by the content of its drawing; the proper construction of a
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`design patent focuses on the overall visual impression of its ornamental, novel features.
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`See OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997); Durling
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`v. Spectrum Furniture Co., 101 F.3d 100, 104 (Fed. Cir. 1996). A design patent protects
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`the nonfunctional aspects of an ornamental design as shown in the patent. Elmer v. ICC
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`Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995); KeyStone Retaining Wall Sys. v.
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`Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993).
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`Infringement of a design patent is the unauthorized manufacture, use, or sale of
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`the article embodying the patented design or any colorable imitation thereof. 35 U.S.C.
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`§ 289. The patented and accused designs do not have to be identical for design patent
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`infringement to be found. OddzOn Prods., 122 F.3d at 1405. In infringement analysis,
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`an accused design is compared to the patent drawings to determine whether the accused
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`design infringes the patent, Elmer, 67 F.3d at 1577, yet the patentee bears the burden
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`of proof on infringement. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed.
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`Cir. 2008) (en banc), petition for cert. filed, (U.S. Feb. 2, 2009) (No. 08-1031).
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`Case 3:06-cv-00995-K Document 115 Filed 03/16/09 Page 5 of 19 PageID 3439
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`The Federal Circuit, in Egyptian Goddess, clarified the appropriate legal standard
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`to assess claims of design patent infringement. Prior to this decision, design patent cases
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`required courts to apply both the “point of novelty” and “ordinary observer” tests. See,
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`e.g., Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir. 2002); Sun Hill
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`Indus., Inc. v. Easter Unlimited, Inc., 48 F.3d 1193 (Fed. Cir. 1995) (mandating both point
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`of novelty and ordinary observer analysis).
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`The Egyptian Goddess opinion eliminated the point of novelty test. Instead, the
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`“‘ordinary observer’ test should be the sole test for determining whether a design patent
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`has been infringed.” Egyptian Goddess, 543 F.3d at 678. Indeed, a district court decision
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`granting summary judgment based on the point of novelty test will be vacated and
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`remanded for reconsideration in light of the Egyptian Goddess opinion. E.g., Park B. Smith,
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`Inc. v. CHF Industries, Inc., 2009 WL 279051 (Fed. Cir. Feb. 6, 2009) (stating “the point
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`of novelty test . . . was eliminated by Egyptian Goddess. . . .”).
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`Thus, the ordinary observer test is the only test upon which this Court may rely
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`in assessing design patent cases. The ordinary observer test is:
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`if, 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.
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`Gorham Co. v. White, 81 U.S. 511, 528 (1871). “The criterion is deception of the
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`ordinary observer.” L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed.
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`Cir. 1993). The question, then, “is whether the ordinary observer would be deceived by
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`the accused design because it is substantially similar to the patented design.” Goodyear
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`Tire & Rubber Co. v. Hercules Tire & Rubber Co., Inc., 162 F.3d 1113, 1118 (Fed. Cir.
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`1998). In applying the ordinary observer test, “[c]ourts should take into account
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`similarities and differences” between the patented and accused designs. FMC Corp. v.
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`Hennessy Indus., Inc., 836 F.2d 521, 527 (Fed. Cir. 1987). Under the ordinary observer
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`test, “infringement will not be found unless the accused article ‘embod[ies] the patented
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`design or any colorable imitation thereof.’” Egyptian Goddess, 543 F.3d at 678 (quoting
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`Goodyear Tire & Rubber Co., 162 F.3d at 1116–17).
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`The Federal Circuit has effectively divided cases into two categories. “In some
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`instances, the claimed design and the accused design will be sufficiently distinct that it will
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`be clear without more that the patentee has not met its burden of proving the two
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`designs would appear ‘substantially the same’ to the ordinary observer, as required by
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`Gorham.” Egyptian Goddess, 543 F.3d at 678 (emphasis added). “In other instances,
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`when the claimed and accused designs are not plainly dissimilar, resolution of the question
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`whether the ordinary observer would consider the two designs to be substantially the
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`same will benefit from a comparison of the claimed and accused designs with the prior
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`art.” Id. (emphasis added). “Where there are many examples of prior art designs . . .
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`differences between the claimed and accused designs that might not be noticeable in the
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`abstract can become significant to the hypothetical ordinary observer who is conversant
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`with the prior art.” Id. Thus, if the claimed design and the accused design are
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`sufficiently distinct, no comparison with the prior art is necessary. If they are not readily
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`distinguishable, the ordinary observer analysis should be informed by the prior art. See
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`Smith v. Whitman Saddle Co., 148 U.S. 674, 679–82 (1893) (comparing the patented and
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`accused designs in the context of similar designs found in the prior art).
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`“The ordinary observer is not any observer, but one who, with less than the
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`trained faculties of the expert, is ‘a purchaser of things of similar design,’ or ‘one
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`interested in the subject.’” Applied Arts Corp. v. Grand Rapids Metalcraft Corp., 67 F.2d
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`428, 430 (6th Cir. 1933). Because the accused fixtures are sold primarily to the general
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`public, the parties appear to agree that the ordinary observer in this case is a retail
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`consumer who is familiar with the prior art. The ordinary observer is therefore a member
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`of the public who is currently shopping for or has recently purchased lighting
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`fixtures—indeed a “purchaser of things of similar design.” Id.
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`In utilizing the ordinary observer test, a court “is not obligated to issue a detailed
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`verbal description of the design if it does not regard verbal elaboration as necessary or
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`helpful.” Egyptian Goddess, 543 F.3d at 679. Here, however, the Court has previously
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`made a detailed verbal description of the patents in suit. See Minka Lighting, Inc. v. Maxim
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`Lighting Int’l, Inc., No. 3:06-CV-0995-K, 2008 WL 763160 (N.D. Tex. Mar. 18, 2008)
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`(Doc. No. 68) (hereinafter “Markman Order”). In accordance with Egyptian Goddess, the
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`Court finds that the claimed designs are best represented by the illustrations contained
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`Case 3:06-cv-00995-K Document 115 Filed 03/16/09 Page 8 of 19 PageID 3442
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`in each patent. But because the Court has already made such a description, it would be
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`incongruent to completely ignore this previous effort to adequately reduce the patents
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`to words. Although the Court recognizes that its detailed analysis in the Markman Order
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`likely exceeds the level of detail noticed by an ordinary observer, the prior analysis helps
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`in comparing some of the similarities and differences an ordinary observer would notice.
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`Therefore, although the Court relies on the drawings in the patents themselves, the
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`Court will include this description to inform its analysis of the figures embodied in the
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`patents. See Egyptian Goddess, 543 F.3d at 680 (“We therefore leave the question of
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`verbal characterization of the claimed designs to the discretion of trial judges . . . .”).
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`Defendant has offered to produce “actual, physical models of the commercial
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`embodiments” of the patents in suit. Such production is unnecessary based on the
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`Court’s thorough review of the patents and the accused designs.
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`Although the parties’ motions for summary judgment were filed prior to the
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`Egyptian Goddess decision, the Court subsequently asked for and received additional
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`briefing in light of that opinion. Accordingly, the Court considers these additional
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`arguments and considers the claim of each design patent in turn.
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`A.
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`‘515 Patent
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`The ‘515 patent concerns “[t]he ornamental design for the lamp housing, as
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`shown and described.” As previously construed by this Court:
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`the design of the lamp housing in the ‘515 patent is a combination of a top
`finial, a body, and a lower medallion. The top finial has two sections with
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`a substantially bell-shaped upper section covered in a plurality of evenly
`spaced ornamental leaves and a lower flared section tapering from top to
`bottom. The lower tapered section of the top finial abuts an upper most
`ring of the design’s body. The body has a cap that is substantially bell
`shaped with three circular rings at its top section. Below the body cap is
`a band having a horizontal ridge that fits into the bell-shaped cap; below
`the horizontal ridge is a tapered convex ridge that flows into a second
`horizontal ridge. Below the second horizontal ridge is a tapered concave
`ridge that encloses the upper portion of the caged body. The caged body
`portion includes a vase-shaped globe with four vertical bars having vertical
`ridges extending from the circular band of the body cap to the lower
`medallion and curved to outline the shape of the glass globe. The lower
`medallion has concave sides with a wider diameter at a top end and
`tapering to a smaller diameter at a lower end.
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`Markman Order, 2008 WL 763160, at *1. Juxtaposed below are a design patent
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`drawing of Plaintiff’s ‘515 patent on the left and a photograph of Defendants’ accused
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`Morrow Bay design on the right:
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`The ‘515 Patent
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`Defendants’ Morrow Bay design
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`Case 3:06-cv-00995-K Document 115 Filed 03/16/09 Page 10 of 19 PageID 3444
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`Plaintiff contends that Defendants’ Morrow Bay fixtures infringe the ‘515 patent
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`based upon substantial similarities that would deceive an ordinary observer. It contends
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`that Defendants’ fixtures have a substantially similar silhouette and produce the same
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`overall visual impression as the ‘515 patent, which is embodied commercially in Minka’s
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`Ardmore lantern. A district court properly limits its interpretation of “the scope of the
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`patent to its overall ornamental visual impression, rather than to the broader general
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`design concept. . . .” OddzOn Prods., 122 F.3d at 1405; see also Durling, 101 F.3d at 104
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`(“A proper interpretation of [the patentee’s] claimed design focuses on the visual
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`impression it creates.”). Defendants assert that Plaintiff’s infringement claims
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`“constitute a thinly veiled attempt to claim proprietary rights in general design
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`concepts.” Def.’s Resp. at 8.
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`The Court finds that an ordinary observer of Defendants’ accused designs would
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`be left with the impression that it is substantially different from the ‘515 patent.
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`Comparing the figures of the ‘515 patent with the accused designs, the Court determines
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`that the overall visual impressions are distinct, and it is readily apparent that an ordinary
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`observer would not be confused. There are several differences that would be readily
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`apparent to an ordinary observer.
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`First, the very silhouette of which Plaintiff complains is readily distinguishable.
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`The glass globe of Plaintiff’s ‘515 design has a vase shape that curves noticeably toward
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`the lower end. Defendants’ accused design has a globe that bows convexly from its upper
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`Case 3:06-cv-00995-K Document 115 Filed 03/16/09 Page 11 of 19 PageID 3445
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`end to the lower end. The result is that Plaintiff’s ‘515 design appears to carry its weight
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`more evenly than does Defendants’ design, which appears more top-heavy.
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`Second, the top finial of Defendants’ Morrow Bay fixtures has three sections. As
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`noted, the finial of the ‘515 patent has two sections. The ‘515 patents’ top finial is
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`further “covered in a plurality of evenly spaced ornamental leaves,” whereas the top finial
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`of Defendants’ design lacks any obvious ornamental design elements.
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`Third, the Morrow Bay fixtures have noticeably more ornamentation than the
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`‘515 patent. Specifically, Defendants fixtures have a series of petal- or frond-shaped
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`ornamental ridges along the fixture’s cap. The ‘515 design lacks this ornamentation.
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`Instead, it includes a square crossed with an “x” in roughly the equivalent location. The
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`result is that Plaintiff’s ‘515 design appears more geometric, whereas Defendants’ design
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`is more organic.
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`Fourth, the lower medallions of the two designs are readily distinguishable.
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`Defendants’ lower medallion is adorned with petal-shaped ridges. The ‘515 patent has
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`no discernible ornamental elements on the lower medallion. Further, Defendants’
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`Morrow Bay fixtures have two distinct sections on the lower medallion, whereas the ‘515
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`patent has one. The result is that Defendants’ fixtures appear to “sit” much higher than
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`the ‘515 design—again contributing to an overall dissimilar impression.
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`This is not an exhaustive list of differences, but the Court believes it accurately
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`represents distinguishing features that would be readily apparent to an ordinary observer.
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`The aggregation of these differences create a distinct overall visual impression and
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`overwhelm the similarities between the designs.
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`Although the Court is satisfied that the ‘515 patent and Defendants’ accused
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`designs are readily distinguishable to an ordinary observer, a full analysis may include
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`“a comparison of the claimed and accused designs with the prior art.” Egyptian Goddess,
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`543 F.3d at 678. Similar silhouettes or comparable contours between a patented and
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`accused design can make them “not plainly dissimilar,” thus counseling comparison with
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`the prior art. Yet such general design concepts alone are insufficient to show
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`infringement, particularly when the prior art is replete with similar designs. See OddzOn
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`Prods., 122 F.3d at 1405 (rejecting the notion that “the overall similarity of . . .
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`appearance is sufficient to show infringement”).
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`Plaintiff includes twenty-nine prior art references, including five it deems “most
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`relevant.” Pl.’s Brief at 16. Defendant cites several prior art examples, including U.S.
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`Patent Nos. D420,760, D394,325, D77,410, and D63,205, as well as the “Oakhurst”
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`fixture by Environmental Lighting For Architecture, Inc. (“ELA”), and various fixtures
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`by Corbett Lighting. All were available to the public more than one year before the ‘515
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`patent’s application date of May 10, 2001, as required by 35 U.S.C. §102(b). Indeed,
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`the prior art history is lengthy: the ‘205 patent issued in 1923.
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`The prior art citations reveal the lamp housing in both Plaintiff’s ‘515 patent and
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`Defendants’ accused designs employ design features well-known in the prior art. For
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`instance, the ‘205 patent incorporates squares crossed with an “x” along the fixture’s cap.
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`The ‘410 patent, issued in 1929, incorporates vertical bars along the body with leaf
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`designs along the cap. The prior art designs include a top finial, body, and lower
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`medallion, as Defendants note, and further incorporate a similar general silhouette. The
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`particular design features of the ‘515 patent include the same basic design elements, as
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`do Defendants’ Morrow Bay fixtures.
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`Under the ordinary observer standard, a patented design that consists “only of
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`bringing together old elements with slight modifications of form” is not infringed by
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`“another who uses the same elements with his own variations of form . . . if his design
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`is distinguishable by the ordinary observer from the patented design.” Zidell v. Dexter,
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`262 F. 145, 146 (9th Cir. 1920). As the Egyptian Goddess opinion noted, the Zidell court
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`“emphasized that the defendant’s product would appear different from the plaintiff’s
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`protected design to an ordinary observer aware of the great number of closely similar
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`prior art designs.” Egyptian Goddess, 543 F.3d at 676.
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`Here, Defendants’ product would appear different from the Plaintiff’s ‘515 patent
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`to any ordinary observer aware of the great number of similar prior art designs. It is thus
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`apparent that an ordinary observer familiar with the prior art would not be deceived into
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`purchasing Defendants’ Morrow Bay fixture thinking it to be Plaintiff’s patented design.
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`Thus, the Court concludes that no jury could reasonably find that Defendants’ Morrow
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`Bay fixtures infringe Plaintiff’s ‘515 patent. Summary judgment is appropriate for
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`Defendants on this claim.
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`B.
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`‘591 Patent
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`The claim of the ‘591 patent is [t]he ornamental design for the lamp support arm,
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`as shown and described.” As previously construed by this court:
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`The design of the lamp support arm in the ‘591 patent is a candy cane-
`shaped scroll having a visible square cross section along its length. The
`upper end is substantially closed and has an ornamental extension that
`provides a decorative cap extending downwardly from the closed upper
`end. The center portion is substantially straight. The lower end is
`substantially open. Each end is approximately ball shaped, and has a
`decorative petal or leaf feature located near each end that flares outwardly
`from the scroll.
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`Markman Order, 2008 WL 763160, at *2. Juxtaposed below are a design patent
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`drawing of Plaintiff’s ‘591 patent on the left and a photograph of Defendants’ accused
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`Cambria design on the right:
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`The D’591 Patent
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`Defendants’ Cambria design
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`Case 3:06-cv-00995-K Document 115 Filed 03/16/09 Page 15 of 19 PageID 3449
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`Plaintiff contends Defendants’ Cambria fixtures are substantially similar in overall
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`visual appearance to the ‘591 patent, which is embodied commercially in Minka’s
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`Harrison fixture. Plaintiff cites the “silhouette or contour” when Defendants’ accused
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`design for the lamp support arm is viewed from the side.
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`The similarities between the patented and accused designs include their
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`incorporation of a lamp support arm and a “scroll” design. The similarities mostly end
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`there. Most notably, Defendants’ fixtures include a distinct ornamental “hook” in the
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`center portion of the lamp support arm. Although both the ‘591 patent and the Cambria
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`fixtures incorporate a scroll design, the upwardly curved hook extending from the center
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`portion of the Cambria fixture makes it readily distinguishable from the ‘591 patent.
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`The difference is obvious at first glance. This hook makes Defendants’ Cambria fixture
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`appear to have three appendages, whereas the ‘591 patent appears to have just two. The
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`designs do not share a similar silhouette and convey different overall ornamental visual
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`impressions.
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`In addition, either end of the ‘591 patent’s scroll is wound tightly, whereas the
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`Cambria’s scroll appears much more loosely bound at the ends. The center portion of
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`the ‘591 patent’s scroll is substantially straight, whereas the Cambria support arm is
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`substantially curved. The ‘591 patent also incorporates a decorative leaf or petal that
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`appears to flare outward and upward near either end. Defendants’ fixtures do have a
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`flare near the end, but it extends slightly outward and down. These differences would
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`be seized upon by an ordinary observer, who would not be deceived into purchasing
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`Defendants’ products thinking they were Plaintiff’s patented design. Even accepting the
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`contention of Plaintiff’s proffered expert Pat Wilson that the average retail consumer
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`would spend about fifteen minutes deciding on fixtures, it is apparent to the Court that
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`an ordinary observer would perceive the differences in less than fifteen seconds.
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`Were the Court to find infringement by Defendants’ dissimilar product, it would
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`effectively broaden the scope of Plaintiff’s patent to cover all lamp support arms that
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`incorporate a scroll design. See In re Mann, 861 F.2d 1581, 1582, (Fed. Cir. 1988)
`
`(“Design patents have almost no scope.”). Thus, because the two designs are plainly
`
`dissimilar and Plaintiff has not met its burden, the analysis requires no reference to the
`
`prior art. See Egyptian Goddess, 543 F.3d at 678 (stating that if the designs are
`
`“sufficiently distinct” it is “clear without more” that patentee has not met its burden).
`
`Consequently, the Court grants summary judgment for Defendants, finding no
`
`infringement of the ‘591 patent.
`
`C.
`
`‘052 Patent
`
`The claim of the ‘052 patent is [t]he ornamental design for a light globe, as shown
`
`and described.” As previously construed by this Court:
`
`The design of the light globe in the ‘052 patent is a combination of an
`upper portion, a central body, and a base. The upper portion’s rim is open
`and flares outwardly. The outer surface of the upper portion contains a
`plurality of vertical, rounded rectangular ridges separated evenly by spaced
`recesses around its circumference. The upper portion has a rounded ridge
`at its lower edge that abuts the central body. The central body is tulip
`
`-16-
`
`
`
`Case 3:06-cv-00995-K Document 115 Filed 03/16/09 Page 17 of 19 PageID 3451
`
`shaped; its surface is covered by an evenly spaced, repeated, leaf-like
`design. The leaf-like design is comprised of a vertical leaf-like design and
`an immediately adjacent, inverted leaf-like design. The leaves of the leaf
`like design are connected to each other via a vine design. The base portion
`includes a ring below which is a cup-shaped bottom portion, with a cross-
`hatched surface appearance. The base portion is substantially smaller than
`the upper portion and the central body.
`
`Markman Order, 2008 WL 763160, at *2. Juxtaposed below are a design patent
`
`drawing of Plaintiff’s ‘052 patent on the left and a photograph of Defendants’ accused
`
`Tuscan Estate design on the right:
`
`The ‘052 Patent
`
`Defendants’ Tuscan Estate
`design
`The light globe of the Defendants’ Tuscan Estate Collection fixtures is at issue
`
`here. Plaintiff contends that Defendants’ accused globe is substantially similar to its
`
`‘052 patent, embodied commercially in Minka’s Treville fixture.
`
`Defendants’ accused Tuscan Estate Collection fixtures, like Plaintiff’s patented
`
`design, feature a translucent light globe adorned with a leaf and vine design. Yet the two
`
`-17-
`
`
`
`Case 3:06-cv-00995-K Document 115 Filed 03/16/09 Page 18 of 19 PageID 3452
`
`designs have distinctive overall impressions.
`
`The central body of the Tuscan Estate globe is noticeably wider and shorter than
`
`the body in the ‘052 patent. If the ‘052 patent has a “tulip” shape, Defendants’ fixture
`
`is shaped more like a fully bloomed rose. Defendants’ fixture appears stouter than
`
`Plaintiff’s more delicately shaped design. The silhouettes and contours of the designs are
`
`markedly distinct, leaving an overall dissimilar impression.
`
`Although the Court is satisfied that the ‘052 patent and Defendants’ accused
`
`design are readily distinguishable, references to the prior art may help to inform a full
`
`analysis. Plaintiff cites thirteen prior art patents considered by the U.S. Patent Office
`
`in considering the ‘052 patent. Defendants cite prior art contained in a “Renaissance
`
`Guild” catalog produced by Savoy House. All were available to the public more than one
`
`year before the ‘052 patent’s application date of Jan. 4, 2006.
`
`The prior art of the designs reveals the designs effectively “bring[ ] together old
`
`elements with slight modifications of form.” Zidell, 262 F. at 146. For instance, U.S.
`
`Patent No. D430,951 reveals a virtually identical tulip-shaped silhouette to Plaintiff’s
`
`‘052 patent. Ornamentation of leaves and vines appears on U.S. Patent Nos. D395,096
`
`and D430,341 as well as the Renaissance Guild design. The ridged or “scalloped” upper
`
`portion of both companies’ light globes appeared in the ‘341 patent and in U.S. Patent
`
`No. D464,767. The Defendants’ accused design thus would appear sufficiently different
`
`from the Plaintiff’s ‘052 patent to any ordinary observer aware of the great number of
`
`-18-
`
`
`
`Case 3:06-cv-00995-K Document 115 Filed 03/16/09 Page 19 of 19 PageID 3453
`
`similar prior art designs. Any similarity between Defendants’ accused design and the
`
`‘052 patent is no greater than the similarities between the designs of the ‘052 patent and
`
`the prior art.
`
`Under an ordinary observer test, no jury could reasonably find that an ordinary
`
`observer would be deceived into confusing Defendants’ design with Plaintiff’s ‘052
`
`patent. Consequently, Defendant Maxim is entitled to summary judgment of
`
`noninfringement on this claim and on all the patents-in-suit.
`
`IV. Conclusion
`
`For these reasons, Defendants’ motion for summary judgment is GRANTED.
`
`The Court holds that Defendants’ accused designs do not infringe the ‘515, ‘052, and
`
`‘562 patents respectively. Plaintiff’s motion for summary judgment is DENIED.
`
`The copyright infringement claims remain set for trial on the Court’s three-week
`
`docket beginning April 6, 2009. The parties are hereby ORDERED to meet and confer
`
`and provide a status report to the Court within seven (7) days of the date of this order.
`
`All other pretrial deadlines remain unchanged.
`
`SO ORDERED.
`
`Signed March 16, 2009.
`
`_____________________________
`Ed Kinkeade
`United States District Judge
`
`-19-
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