Sport Dimension v. The Coleman Company: CAFC speaks to design patents and expert witnesses

Coleman Company, Inc. appeals from a stipulated
judgment of noninfringement entered by the United
States District Court for the Central District of California.
Coleman challenges the district court’s claim construction
on which the stipulated judgment was based and its
exclusion of Coleman’s expert. For the reasons stated
below, we vacate the judgment, affirm the court’s exclusion
of Coleman’s expert, and remand for proceedings
consistent with this opinion.




A design patent is at issue:


Coleman owns United States Design Patent
No. D623,714 (“D’714 patent”). It claims “[t]he ornamental
design for a personal flotation device,”

(...)

Words cannot easily describe ornamental designs. See
Dobson v. Dornan, 118 U.S. 10, 14 (1886) (explaining that
a claim “is better represented by the photographic illustration
than it could be by any description, and a description
would probably not be intelligible without the
illustration”). A design patent’s claim is thus often better
represented by illustrations than a written claim construction.
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d
665, 679 (Fed. Cir. 2008) (en banc). Also, detailed verbal
claim constructions increase “the risk of placing undue
emphasis on particular features of the design and the risk
that a finder of fact will focus on each individual described
feature in the verbal description rather than on the
design as a whole.” Id. at 680.

Even so, a district court may use claim construction to
help guide the fact finder through issues that bear on
claim scope. Id. We have often blessed claim constructions,
for example, where the court helped the fact finder
“distinguish[] between those features of the claimed
design that are ornamental and those that are purely
functional.” Id. (citing OddzOn Prods., Inc. v. Just Toys,
Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997)). Of course, a
design patent cannot claim a purely functional design—a
design patent is invalid if its overall appearance is “dictated
by” its function. Id. at 668.



Of OddzOn:


In OddzOn, for example, we considered a design patent
on a rocket-shaped football and endorsed the district
court’s construction that distinguished between functional
and ornamental aspects of the design. The design patent
disclosed a football with a large tail fin that added stability
for the ball in flight. Id. at 1406. The fins also produced
an “overall ‘rocket-like’ appearance of the design.”
Id. at 1405. We agreed with the district court’s finding
that the fins were functional. Nevertheless, we approved
of the court’s construction that took the fins into account.
We praised the court for “carefully not[ing] the ornamental
features that produced the overall ‘rocket-like’ appearance
. . . [and] properly limit[ing] the scope of the patent
to its overall ornamental visual impression, rather than to
the broader general design concept of a rocket-like tossing
ball.” Id.

We followed a similar line of analysis in Richardson.
597 F.3d at 1293–94.



There is good news and bad news for Coleman:


Coleman disputes the court’s ultimate construction
and its finding that the armbands and tapered torso are
functional. While we agree with Coleman that the court’s
ultimate construction was improper under our law, we
disagree with Coleman’s assertion that the armbands and
side torso tapering do not serve a functional purpose. As
the district court correctly pointed out, Coleman’s armbands
and tapered side torso designs meet several of the
factors we announced in PHG Technologies, LLC v.
St. John Cos., for determining whether a design claim
was dictated by function, including:
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.

(...)

Nonetheless, even though we agree that certain elements
of Coleman’s design serve a useful purpose, we
reject the district court’s ultimate claim construction. The
district court eliminated the armbands and side torso
tapering from the claim entirely, so its construction runs
contrary to our law. Here, as in Ethicon, “the district
court’s construction of the Design Patents to have no
scope whatsoever fails to account for the particular ornamentation
of the claimed design and departs from our
established legal framework for interpreting design
patent claims.” Ethicon Endo-Surgery, 796 F.3d at 1334.
Moreover, design patents protect the overall ornamentation
of a design, not an aggregation of separable elements.
Richardson, 597 F.3d at 1295 (noting that “discounting of
functional elements must n



***Of the expert witness matter:


Coleman also challenges the district court’s exclusion
of its expert, Peter Bressler. We review a district court’s
exclusion of expert testimony under the law of the regional
circuit, here the Ninth Circuit. Proveris Sci. Corp. v.
Innovasystems, Inc., 536 F.3d 1256, 1267 (Fed. Cir. 2008).
The Ninth Circuit reviews a district court’s exclusion of
an expert for an abuse of discretion. Cabrera v. Cordis
Corp., 134 F.3d 1418, 1420 (9th Cir. 1998).
District court judges perform a gatekeeping role for
expert testimony. They must ensure that expert testimony
is reliable and that the testimony “relate[s] to scientific,
technical or other specialized knowledge, which does
not include unsubstantiated speculation and subjective
beliefs.” Diviero v. Uniroyal Goodrich Tire Co., 114 F.3d
851, 853 (9th Cir. 1997) (citing Daubert v. Merrell Dow
Pharm., Inc., 509 U.S. 579, 590 (1993)); see also
Fed. R. Evid. 702.

The district court here excluded Mr. Bressler, an industrial
design consultant with four decades of industry
experience, because he had “no experience whatsoever in
the field of [personal flotation devices].”



There are some messages for proper expert witness
presentation in this case:


Mr. Bressler,
when asked to evaluate Sport Dimension’s expert’s
testimony on one aspect of the device’s function, stated:
“I’m not an expert on personal flotation devices.” Appellee’s
Br. 45. His proposal for alternative armband designs,
by Mr. Bressler’s admission, was based on his
“imagination.” Id. at 45–46. And he further admitted
that he had no work experience with wearable buoyancy
devices before serving as an expert. Id. at 45–47. In light
of Mr. Bressler’s admitted inexperience and unfamiliarity
with the very subject on which Coleman sought to rely on
his testimony, the district court did not abuse its discretion
in excluding his testimony. See Cabrera, 134 F.3d at
1420.



link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1553.Opinion.4-15-2016.1.PDF