Reddy v. Lowe's Companies, Inc.
1:13-cv-13016
D. Mass.Nov 18, 2014Background
- Plaintiff Maureen Reddy sued Lowe's and Evolution Lighting alleging infringement of U.S. Design Patent D677,423 (bathroom vanity light shade) that includes five figures and a brief written description noting a rectangular metal rod skeleton wrapped in fabric on three sides and a stationary acrylic diffuser bottom.
- Parties submitted claim-construction briefs and the court held a Markman hearing; on June 4, 2014 the court adopted its construction and later the case was reassigned for further proceedings and trial scheduling.
- The patent is a design patent; its scope turns primarily on the drawings rather than textual description, and it claims only ornamental (not functional) features.
- Defendants proposed a detailed, element-by-element verbal construction (listing flat fabric-covered planes, acrylic bottom, open top/back, metal rod, right-angle corners, straight edges). Reddy proposed the simpler construction: the ornamental design "as shown and described in Figures 1–5."
- Defendants argued the written description (fabric sides; acrylic diffuser) and prosecution history should be incorporated to limit the claim; Reddy argued figures control and these written elements should not be read into the claim.
- Court resolved tensions under Egyptian Goddess and USPTO practice, declining to incorporate written-only material limitations or to perform detailed verbal construction at claim-construction stage; left functionality, prosecution-history, and prior-art questions for later phases (e.g., summary judgment or jury instructions).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper claim construction of design patent | Adopt simple construction: "ornamental design... as shown and described in Figures 1–5" | Adopt detailed element-by-element verbal construction including fabric covering, acrylic diffuser, metal rod skeleton, right-angle corners, straight vertical/horizontal edges | Court adopted Reddy's construction: limited to the ornamental design as shown/described in Figures 1–5, rejecting the defendants' detailed verbal construction |
| Effect of written description (fabric, acrylic) not shown in drawings | Do not incorporate written-only features; figures control scope | Written description language in patent should be incorporated to give meaning to "as shown and described" and to supply essential ornamental features | Court held design-patent scope is governed by drawings; will not incorporate written-only features (fabric, acrylic) into the claim at construction stage |
| Surface-treatment/materials issue (are fabric/acrylic protectable surface treatments?) | If not shown in figures, should not be read in | Material references are surface treatments and thus protected/claim-limiting | Court rejected defendants' surface-treatment argument: MPEP treats materials as visual surface treatment when shown; here fabric/acrylic are not depicted or identified in figures, so they are not incorporated |
| Use of prosecution history and prior art at construction stage | Reserve prosecution-history and prior-art issues for later (jury instructions/summary judgment) | Consider prosecution history and cited prior art now to limit claim scope | Court declined to rely on prosecution history or prior art at claim-construction stage; left these for later proceedings to avoid undue emphasis on particular features |
Key Cases Cited
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (district courts have discretion in design-patent claim construction and should avoid detailed verbal descriptions that overemphasize features)
- Gorham Mfg. Co. v. White, 81 U.S. 511 (U.S. 1871) (design patents protect appearance/ornamentation rather than utility)
- Mazer v. Stein, 347 U.S. 201 (U.S. 1954) (design protection relates to aesthetic aspects)
- Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010) (design patents protect ornamentation; functional elements are excluded)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (prosecution history often ambiguous and less useful for claim construction)
- In re Daniels, 144 F.3d 1452 (Fed. Cir. 1998) (design patent scope is provided by drawings rather than verbal description)