Nordock Inc. v. Systems Inc.
927 F. Supp. 2d 577
E.D. Wis.2013Background
- Nordock held a design patent D579,754 for a lip, lug and header plate on dock levelers and alleged Systems’ products infringed design patent and engaged in unfair competition.
- Nordock asserted Count I design patent infringement under 35 U.S.C. § 271 and Counts II–IV related to unfair competition and deception; Systems sought declaratory judgments of non-infringement and validity.
- The court addressed payment of expert fees, motions to strike Brookman as expert (trade dress, unfair competition, and patent validity), and partial summary judgment on validity and enforcement.
- Nordock sought to strike Brookman on trade dress and unfair competition grounds; the court allowed portions of Brookman’s rebuttal while striking non-rebuttal sections.
- Claim construction held the ’754 patent covers: 'The ornamental design of a lip and hinge plate for a dock leveler, as shown and described,' with figures 1–7 and related description.
- Judicial findings identified overlapping issues: ornamentation vs functionality, prosecution history estoppel, laches, equitable estoppel, and unclean hands, leading to partial grant/denial of summary judgments.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Anticipation validity of the '754 patent | Nordock argues Crawford reference anticipates. | Systems argues Crawford constitutes prior art; but date uncertain. | Nordock granted summary judgment on anticipation. |
| Obviousness of the '754 design | Nordock contends combinations with prior art render it non-obvious. | Systems cites Crawford, '303, '338, '479 patents as primary references. | Nordock granted summary judgment that the patent is not obvious. |
| Functionality vs ornamentation (design patent scope) | Nordock asserts ornamental features constitute the protected design. | Systems argues design largely dictated by function. | Question of functionality reserved for trial; some non-functional elements identified; summary judgment partial. |
| Prosecution estoppel | Nordock argued the elements functionally dictate the design during prosecution. | Systems claims estoppel bars patent grounds based on prosecution history. | Nordock granted summary judgment on prosecution estoppel. |
| Trade dress infringement and likelihood of confusion | Nordock argues strong secondary meaning and source-identifying appearance; likelihood of confusion with Systems’ designs. | Systems questions secondary meaning and consumer confusion evidence; asserts functional elements. | Issues to be resolved at trial; court denies summary dismissal of trade dress claims. |
Key Cases Cited
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (design patent claim construction guidance; avoid verbal description of designs)
- Apple, Inc. v. Samsung Elec. Co., Ltd., 678 F.3d 1314 (Fed. Cir. 2012) (two-step test for design patent obviousness and references)
- In re Nalbandian, 661 F.2d 1214 (C.C.P.A. 1981) (design patent art considerations)
- PHG Techs., LLC v. St. John Cos., 469 F.3d 1361 (Fed. Cir. 2006) (functionality analysis for design patents; filter functional aspects)
- Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir. 1998) (secondary meaning factors for trade dress)