Kyocera Wireless Company v. President Electronics, Ltd , 179 F. App'x 53 ( 2006 )

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
06-1131
KYOCERA WIRELESS COMPANY,
Plaintiff-Appellee,
v.
PRESIDENT ELECTRONICS, LTD.,
Defendant,
and
TONY COLIDA,
Defendant- Appellant.
___________________________
DECIDED: May 2, 2006
___________________________
Before MAYER, BRYSON, and DYK, Circuit Judges.
PER CURIAM.
DECISION
Tony Colida appeals from an order of the United States District Court for the
Southern District of California, in which the court granted summary judgment to Kyocera
Wireless Company (“Kyocera”) that it did not infringe Mr. Colida’s patent, U.S. Design
Patent No. 321,347 (“the ’347 patent”). Kyocera Wireless Corp. v. President Elecs.,
Ltd., No. 05-CV-797 H (JMA) (S.D. Cal. Sept. 23, 2005). We affirm.
BACKGROUND
Mr. Colida is the president of President Electronics, Ltd., and owns the ’347
patent, which is a design patent for a “portable cellular handset telephone.” The patent
displays a telephone that roughly resembles a clam shell when closed and has an S-
shaped curve along its edge.
On April 6, 2005, Mr. Colida sent a letter to Kyocera, asserting that Kyocera was
infringing the ’347 patent through its sale, use, and marketing of the Model KX9C
telephone. The letter offered Kyocera a nonexclusive license for a lump-sum payment
of $1,000,000 US, and advised that if Mr. Colida did not receive a response from
Kyocera within ten days he would be “forced to initiate a patent infringement lawsuit
without any further notice.”
Nine days later, Kyocera initiated the case from which this appeal comes by filing
a complaint in the Southern District of California seeking a declaratory judgment that its
KX9C phone did not infringe the ’347 patent. Mr. Colida counterclaimed, asserting
infringement. Kyocera filed a motion for summary judgment on its declaratory judgment
claim, which the district court granted on September 23, 2005. Kyocera then filed a
motion for summary judgment on Mr. Colida’s infringement counterclaim, which the
district court granted on November 16, 2005. Mr. Colida now appeals.
DISCUSSION
1. On appeal, Mr. Colida first asserts that in ruling on the issue of infringement
the district court “failed to apply the appropriate test regarding novelty, ornamental
features, and the role of an expert in making a determination.” We have held that there
are two tests for infringement of a design patent, both of which must be satisfied to find
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infringement: the “ordinary observer” test and the “point of novelty” test. See Contessa
Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002). Under the
“ordinary observer” test, the question is whether, “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.” Gorham Co. v. White, 81 U.S. 511, 528
(1871). Under the “point of novelty” test, the question is whether the accused device
“appropriates the novelty which distinguishes the patented design from the prior art.”
Contessa, 282 F.3d at 1377. The district court’s summary judgment orders show that it
carefully compared the accused device with the patented design in the manner dictated
by our precedents and found that Kyocera’s device did not infringe. Mr. Colida does not
point to any particular error in the district court’s analysis, and we discern none.
2. To the extent that Mr. Colida argues that summary judgment was improper
without expert testimony, that argument is without merit. The record does not reflect
that any of the parties sought to introduce expert evidence, and expert evidence is not
always necessary to resolve questions of patent infringement. See, e.g., Union Carbide
Corp. v. Am. Can Co., 724 F.2d 1567, 1573 (Fed. Cir. 1984). While expert evidence
may be necessary in cases involving complex technology, see Centricut, LLC v. Esab
Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004), this is not such a case, and Mr.
Colida does not explain how expert evidence would have been helpful. Because we
find no error in the district court’s disposition of this case, we affirm the judgment below.
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