DocketNumber: No. 10 Civ. 9492
Citation Numbers: 898 F. Supp. 2d 650
Judges: Scheindlin
Filed Date: 7/31/2012
Status: Precedential
Modified Date: 11/26/2022
OPINION AND ORDER
I. INTRODUCTION
Luv n’ Care, Ltd. and Admar International, Inc. (collectively, “LNC”) bring this infringement action against Regent Baby Products Corp. d/b/a Baby King (“Regent”). In April, a jury trial was held before Judge Louis Stanton. The jury determined that two of LNC’s design patents, D617,465 (“the '465 patent”) and D634,439 (“the '439 patent”), were not primarily dictated by function.
II. BACKGROUND
LNC designs and sells baby products internationally.
The verdict form presented the jury with one question for each design patent— is the appearance of the design claimed in the patent “primarily dictated by its function?”
III. LEGAL STANDARD
A. Motion for Judgment as a Matter of Law Under Rule 50 and Motion for a New Trial Under Rule 59
A court may render judgment as a matter of law when “a party has been fully heard on an issue during a jury trial and the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.”
consider the evidence in the light most favorable to the party against whom the motion was made and to give that party the benefit of all reasonable inferences that the jury might have drawn in his favor from the evidence. The court cannot assess the weight of conflicting evidence, pass on the credibility of the witnesses, or substitute its judgment for that of the jury.18
A jury verdict should not be set aside lightly. A court may not grant judgment as a matter of law unless: (1) there is such
A “court may, on motion, grant a new trial on all or some of the issues ... after a jury trial, for any reason for which a new trial has heretofore been granted in an action at law in federal court.”
Under Federal Rule of Civil Procedure 50(b),
[n]o later than 28 days after the entry of judgment ... the movant may file a renewed judgment as a matter of law and may include an alternative or joint request for a new trial under Rule 59 ... [ — i]n ruling on the renewed motion, the court may:' (1) allow judgment on the verdict, if the jury returned a verdict; (2) order a new trial; or (3) direct entry of judgment as a matter of law.
IV. APPLICABLE LAW
A. Functionality
“‘A design patent protects the non-functional aspects of an ornamental design as seen as a whole and as shown in the patent.’ ”
“In determining whether a design is primarily functional or primarily ornamental the claimed design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article, in determining whether the claimed design is dictated by the utilitarian purpose of the article.”
When determining functionality in the context of a design patent, the court may consider
“whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function.”32
V. DISCUSSION
A. The Jury Verdict Was Not Clearly Erroneous and Was Supported by Sufficient Evidence
I will not address Regent’s claim construction arguments because they are premature. Claim construction can occur at any point before an infringement determination, and it may take into account ,a jury’s findings of fact.
The parties presented the following evidence regarding functionality at trial.
1.The '225 Utility Patent
Regent proffered LNC’s 6,994,225 (“the '225 patent”) as a utility patent that discloses the utilitarian advantages of the design.
2.Advertising
Regent offered various examples of LNC advertising that touts the functional qualities of individual elements of LNC cups.
3.Alternative Designs
LNC put forth many examples of alternative designs that were available to Regent.
4. Best Design
Regent restates its utility patent evidence to satisfy this factor
5. Individual Elements or Overall Design Not Dictated by Functionality
Hakim testified that he designed the cup to be attractive.
Given the evidence that was offered by LNC to demonstrate that its design patent was not primarily dictated by function, I cannot conclude that there was either insufficient evidence to support the verdict or overwhelming evidence in favor of Regent. Thus, I cannot conclude that the verdict was clearly erroneous.
Regent argues that it was prejudiced by LNC’s statements of the law and LNC’s false accusation of discovery violations. LNC argues that because Regent did not object to LNC’s statements, they have waived their right to challenge the verdict on that basis. I find that Regent did not waive its objections,
VI. CONCLUSION
Based on the foregoing, Regent’s motion is denied. The Clerk of the Court is directed to close this motion (Docket No.
SO ORDERED.
. See 4/26/12 10 Civ. 9492 Verdict Sheet (“Verdict Sheet”), Ex. E to 5/24/12 Declaration of David T. Yaegashi, defendant’s counsel (“Yaegashi Decl.”), at 1.
. See Complaint ¶ 8.
. See id. ¶ 7.
. See Plaintiffs’ Memorandum of Law in Opposition to Motion for Judgment as a Matter of Law or a New Trial ("Pl. Mem.”), at 4 n. 1.
. See 7/29/11 Letter from Regent to Judge Stanton, Ex. A to Yaegashi Decl., at 2.
. See id. at 4.
. See id. at 2.
. See id. at 4.
. See id. at 2.
. See Defendant's Memorandum of Law in Support of Judgment as a Matter of Law or a New Trial ("Def. Mem.”), at 1.
. Verdict Sheet, at 1.
.See Def. Mem. at 1-2.
. See id. at 2, 20.
. See PL Mem. at 9-19.
. See id. at 4-6.
. Fed.R.Civ.P. 50(a)(1).
. See Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000) (quotation marks and citations omitted); Zellner v. Summerlin, 494 F.3d 344, 371 (2d Cir.2007).
. Tolbert v. Queens Coll., 242 F.3d 58, 70 (2d Cir.2001) (quotation marks and citation omitted). Accord Caceres v. Port Authority of N.Y. and N.J., 631 F.3d 620, 622 (2d Cir.2011).
. Altria Grp., Inc. v. U.S., 658 F.3d 276, 290 (2d Cir.2011) (quoting Kosmynka v. Polaris Indus., Inc., 462 F.3d 74, 79 (2d Cir.2006)).
. Fed.R.Civ.P. 59(a)(1)(A).
. Caruolo v. John Crane, Inc., 226 F.3d 46, 54 (2d Cir.2000) (quotation marks and citation omitted).
. Townsend v. Benjamin Enters., Inc., 679 F.3d 41, 51 (2d Cir.2012) (quoting Medforms, Inc. v. Healthcare Mgmt. Solutions, Inc., 290 F.3d 98, 106 (2d Cir.2002)).
. Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1370 (Fed.Cir.2006) (quoting KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed.Cir.1993)).
. Id. at 1371 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982)).
. PHG Techs., LLC v. St. John Cos., 469 F.3d 1361, 1366 (Fed.Cir.2006) (quoting L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed.Cir.1993)).
. Id. at 1365.
. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed.Cir.2010) (quoting OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed.Cir.1997)).
. Id. (citing Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679-80 (Fed.Cir.2008)).
. L.A. Gear, 988 F.2d at 1123 (citing Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1189 (Fed.Cir.1988)).
. Richardson, 597 F.3d at 1293-94 (citing Lee, 838 F.2d at 1188).
. Id. at 1294 (quoting L.A. Gear, 988 F.2d at 1123).
. PHG Techs., 469 F.3d at 1366 (quoting Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed.Cir.1997)).
. See Depaoli v. Daisy Mfg. Co., No. 07ocv-11778-DPW, 2009 WL 2145721, at *5 (D.Mass. July 14, 2009) ("To the extent the scope of the claim must be limited by prosecution history or functionality, I will address those issues definitively if and when they are raised at some later stage in these proceedings, such as resolution of motions for summary judgment or as part of the jury instructions at trial.”). See also Colgate-Palmolive Co. v. Ranir, L.L.C., No. 06-417, 2007 WL 2225888, at *3 (D.Del. July 31, 2007) ("Cognizant of the court’s role as the construer of patent claims and the need for claim construction to be complete before a jury deliberates on infringement, the court may further limit the current construction at trial by factual determinations regarding functionality and ornamentality of the included features.”); ADC Telecomm., Inc. v. Panduit Corp., 200 F.Supp.2d 1022, 1033 (D.Minn.2002) (finding that because fact issues permeated the parties' arguments concerning functionality, functionality was best left to the fact-finder).
.Judge Stanton concluded that, while a jury may not construe the claims, it may make an overall determination of invalidity due to functionality. See Def. Mem. at 4. See Luv N’ Care, Ltd. v. Walgreen Co., 695 F.Supp.2d 125, 135 (S.D.N.Y.2010) (discussing the potential for a jury trial on the issue of functionality); Dexas Int’l, Ltd. v. Office Max Inc., No. 6:07cv396, 2009 WL 252164, at *7 n. 4
. See Def. Mem. at 10.
. See L.A. Gear, 988 F.2d at 1123 ("[T]he utility of each of the various elements that comprise the design is not the relevant inquiry with respect to a design patent. In determining whether a design is primarily functional or primarily ornamental the claimed design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article, in determining whether the claimed design is dictated by the utilitarian purpose of the article.”) (citing Lee, 838 F.2d at 1189).
. See LNC bottle advertisements ("LNC ads”), Exs. I, J, K, L to Yaegashi Decl.
. See LNC ads, Ex. J to Yaegashi Decl., at 1.
. See Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 240 (Fed.Cir.1986) ("In determining whether a design is primarily functional, the purposes of the particular elements of the design necessarily must be considered.”). However, " '[T]he determination of whether the patented design is dictated by the function of the article of manufacture must ultimately rest on an analysis of its overall appearance.’ ” PHG Techs., 469 F.3d at 1366 (quoting Berry Sterling, 122 F.3d at 1455). Regent also cites case law holding that the functionality inquiry heavily concerns the overall design — not the individual elements. See Rip-It Holdings, LLC v. Wilson Hunt Int’l, Ltd., No. 6:11-cv-1733-Orl-28GJK, 2012 WL 113529, at *4 (M.D.Fla. Jan. 13, 2012) ("The mere fact that each element of a design serves some functional purpose does not necessarily mean that the overall design is dictated by function.”) (citing L.A. Gear, 988 F.2d at 1123). “[B]ut when the function of each element cannot be separated from the overall design, it indicates that the entire design is dictated by function.” Id. (citing PHG Techs., 469 F.3d at 1368).
. See PL Mem. at 12.
. See Def. Mem. at 15. PHG Techs., 469 F.3d at 1367 (finding that a "full inquiry with respect to alleged alternative designs includes a determination as to whether the alleged 'alternative designs would adversely affect the utility of the specified article’ ” — not the cost or quality of the article) (quoting Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed.
. See Plaintiffs’ Alternative Designs, Ex. 4 to 6/11/12 Declaration of Benjamin H. Graf, plaintiffs’ counsel (“Graf. Dec!.”), at 1-15. See also Rosco, 304 F.3d at 1378 (" ‘[T]he design must not be governed solely by function, i.e., ... this is not the only possible form of the article that could perform its function.' ”) (quoting Seiko Epson Corp. v. Nu-Kote Int’l, Inc., 190 F.3d 1360, 1368 (Fed.Cir.1999)). “ ‘When there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.’ ’’ Id. (quoting L.A. Gear, 988 F.2d at 1123).
. See PHG Techs., 469 F.3d at 1367 (“ ‘[T]he presence of alternative designs may or may not assist in determining whether the challenged design can overcome a functionality challenge. Consideration of alternative designs, if present, is a useful tool that may allow a court to conclude that a challenged design is not invalid for functionality.’ ”) (quoting Berry Sterling, 122 F.3d at 1455).
. See Holley Cross, Ex. 14 to Graf. Decl., at 420. See also R.F.M.A.S., Inc. v. Mimi So, 619 F.Supp.2d 39, 81 n. 21 (S.D.N.Y.2009) (“ '[Fjunctionality is a question of fact. The record contains competing expert opinions on the issue of functionality, either of which the jury could credit.’ ”) (quoting Keystone Mfg. Co., Inc. v. Jaccard Corp., 394 F.Supp.2d 543, 562 (W.D.N.Y.2005)).
. See Def. Mem. at 16.
. See Cooper Direct, Ex. 11 to Graf. Deck, at 270.
. See Hakim Direct, Ex. 14 to Graf. Deck, at 435.
. See Hakim Redirect, Ex. 10 to Graf. Deck, at 240.
. See Hakim Direct, Ex. 8 to Graf. Deck, at 57.
. See Def. Mem. at 18.
. Johnson & Johnson Vision Care, Inc. v. CIBA Vision Corp., 634 F.Supp.2d 1293, 1304 (M.D.Fla.2008) (“Because of the presumption
. See Henry v. Wyeth Pharm., Inc., 616 F.3d 134, 152 (2d Cir.2010) (finding that a failure to properly object during trial subjects the trial court’s actions to a plain error standard).
. See Marcic v. Reinauer Transp. Cos., 397 F.3d 120, 127 (2d Cir.2005) (finding that disparaging comments about a party, his witnesses, and the case did not amount to prejudicial conduct, as " '[n]ot every improper or poorly supported remark made in summation irreparably taints the proceedings; only if counsel’s conduct created undue prejudice or passion which played upon the sympathy of the jury, should a new trial be granted.’ ”) (quoting Matthews v. CTI Container Transp. Int’l, Inc., 871 F.2d 270, 278 (2d Cir.1989)). See also Patterson v. Balsamico, 440 F.3d 104, 119 (2d Cir.2006) ("[Bjecause attorneys are given ‘wide latitude in formulating their arguments' to the jury, '[rjarely will an attorney’s conduct so infect a trial with undue prejudice or passion as to require reversal.’ ”) (quoting Reilly v. Natwest Mkts. Grp. Inc., 181 F.3d 253, 271 (2d Cir.1999)).
. See AIG Global Secs. Lending Corp. v. Banc of Am. Secs., LLC, 386 Fed.Appx. 5, 8 (2d Cir.2010) (finding that counsel’s potentially invalid legal theories did not warrant a new trial for the adversary, particularly when, “in any event,” the judge instructs the jury on the law). See also Frometa v. Diaz-Diaz, 348 Fed.Appx. 621 (2d Cir.2009) (finding misstatements of the law and improper comments insufficient to trigger a new trial when there was sufficient evidence to support the jury's verdict).
. LNC provided evidence that Regent withheld the physical embodiment of one of its cited designs. See PI. Mem. at 24.
. See Air China, Ltd. v. Kopf, 473 Fed.Appx. 45, 51 (2d Cir.2012) ("'[E]xtreme[ly] inflammatory remarks’ by counsel during the closing to the jury, such as '[Tjhis man is a disgrace ...,’ a ‘schmuck,’ a 'scam artist' and 'con man' who had a ‘fundamental dishonesty’ ” did not demand a new trial because they were isolated comments in an otherwise appropriate closing). See also Marcic, 397 F.3d at 126 ("[Ajlmost all of the statements [defendant] relies on were statements suggesting that [defendant] or his witnesses lied or that their testimony was unbelievable. Such statements were not statements of the evidence at all, but were rather argument calling on the jury to draw inferences from the evidence.”).