Bernhardt L.L.C. (“Bernhardt”) appeals from a final judgment of the United States District Court for the Middle District of North Carolina (“district court”) in favor of Collezione Europa USA, Inc. (“Collez-ione”), that the six design patents-in-suit were not infringed and that four of the design patents-in-suit were invalid for pri- or public use under 35 U.S.C. § 102(b).
Bernhardt L.L.C. v. Collezione Europa USA Inc.,
I. BACKGROUND
A. The Parties
Bernhardt is the intellectual property licensing unit of Bernhardt Furniture Co., a furniture manufacturer. Id. at 487. Bernhardt owns the six design patents at issue in this case: D438,727 (“the ’727 patent”); D439,763 (“the ’763 patent”); D439,770 (“the ’770 patent”); D441,560 (“the ’560 patent”); D441,975 (“the ’975 patent”); D441,980 (“the ’980 patent”) (collectively, “the patents-in-suit”). Id. The validity of four of these patents, specifically the ’980, ’770, ’975, and ’560 patents (“the Pre-Market patents”), is disputed. Id. Bernhardt filed applications leading to the issuance of the design patents-in-suit between July and October 2000. Id. at 488. The following figures depict two representative furniture designs patented by Bernhardt:
*1374 [[Image here]]
’727 patent, Fig. 1 (buffet); ’975 patent, Fig. 1 (end chair). Bernhardt Furniture Co., as a licensee of the six patents-in-suit, sells furniture embodying the patented designs in its Coronado Collection.
Bernhardt,
Collezione is a New Jersey corporation which imports and sells furniture, generally at a lower price than many other firms in the furniture industry. Id. at 487.
B. Market and Pre-Market
Bernhardt participates in the International Home Furnishing Market (“Market”), held in October and April of each year in North Carolina. Id. at 488. A month before the Market event, Bernhardt organizes and conducts what it terms a “Pre-Market” exhibition (“Pre-Market”) at which it showcases its new designs to its key customers and to representatives from an industry newspaper. Id. Bernhardt uses its Pre-Market exhibition to demonstrate the concepts of the furniture collections under development, to gauge customer reaction, and to increase customer demand at Market. Id. at 489.
Each of Bernhardt’s furniture designs is assigned a six-digit “stock keeping unit” (“SKU”) number, which stays with a design from early in the design process through all subsequent re-designs. Id. In preparation for Pre-Market, Bernhardt generates a document listing the SKUs of the furniture it would like to exhibit at Pre-Market (“the Pre-Market Wish List”). Id. at 489-90.
Bernhardt also prepares and maintains an invitation list of the customers and other persons invited to Pre-Market. Id. at 488. To be admitted to Pre-Market, an attendee must show identification, which is checked in the lobby of the exhibition building. Id. at 489. The attendee is then escorted by security personnel to the entrance of the showroom, where identification is again checked. Id. Bernhardt sales representatives then meet the attendee and escort him or her around the showroom. Id. Attendees are not allowed to take pictures or to take anything into the showroom. Id. Attendees are not required to sign a confidentiality agreement restricting disclosure of the designs they see at Pre-Market. Id.
During Pre-Market, Bernhardt showcases its new designs in its showroom. The designs take the form of mock-ups, prototypes, drawings, or other furniture exemplars. Id. at 488. Comments from Pre-Market attendees concerning the dis *1375 played furniture designs are included in a summary document entitled the “Pre-Mar-ket Wrap-up.” Id. at 489. Only representative pieces from a given collection are displayed at Pre-Market. Id. at 488. The designs initially presented at Pre-Market may sometimes be different from the final designs ultimately introduced at Market. Id. at 488-89.
At the September 1999 Pre-Market, Bernhardt showcased a planned line of furniture. The designs, with some modifications, were later adopted in Bernhardt’s Coronado Collection introduced to the consuming public at Market. Aspects of the designs in this collection are the subject of the patents-in-suit.
C. Procedural History
On October 19, 2001, Bernhardt sued Collezione, alleging Collezione infringed Bernhardt’s patented designs by offering for sale poster beds, side and end dining chairs, dining tables, buffets, and cabinets in Collezione’s 2200 collection. Collezione answered, denying infringement of all of the patents-in-suit and bringing counterclaims for declaratory judgment of patent misuse, invalidity, unenforceability, and non-infringement. On July 3; 2002, the district court dismissed Collezione’s counterclaims for patent misuse and unenforce-ability. Collezione' moved for summary judgment that the four Pre-Market patents were invalid under 35 U.S.C. § 102(b) for prior public use. This motion was denied by the district court on February 25, 2003.
The district court conducted a
Mark-man
hearing and construed the patent claims.
Bernhardt L.L.C. v. Collezione Europa USA, Inc.,
No. 1:01CV00957,
A bench trial was conducted on June 30 and July 1, 2003. At trial, the parties disputed which designs were exhibited at the September 1999 Pre-Market exhibition and whether the exhibition, which admittedly took place more than one year prior to the October '2000 filing dates of Bernhardt’s Pre-Market patents (the ’980,-’770, ’975, and ’560 patents), was a public use under 35 U.S.C. § 102(b). Following the trial, the district court held that the designs covered by the four Pre-Market patents had been placed in prior public use by Bernhardt at its September 1999 Pre-Market exhibition, rendering the Pre-Mar-ket patents invalid under 35 U.S.C. § 102(b). The district court also held the six patents-in-suit not infringed.
Bernhardt L.L.C. v. Collezione Europa USA, Inc.,
Bernhardt appeals the invalidity and non-infringement judgment. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
II. ANALYSIS
A. Standard of Review
“Whether or not an invention was on sale or in public use within the meaning of section 102(b) is a question of law that this court reviews de novo; however, factual findings underlying the trial court’s conclusion are subject to the clearly erroneous standard of review.”
Manville Sales Corp. v. Paramount Sys., Inc.,
Claim construction is a question of law we review de novo.
Int'l Rectifier Corp. v. IXYS Corp.,
B. Invalidity
Bernhardt filed patent applications leading to the issuance of the four Pre-Market patents (the ’980, ’770, ’975, and ’560 patents) between October 10 and 13, 2000&emdash; more than one year after the September 1999 Pre-Market exhibition at issue.
See Bernhardt,
1. The Exhibited Designs
a. Collezione’s Evidentiary Showing
The parties agree that pieces of Bernhardt’s Coronado Collection were displayed at the 1999 Pre-Market exhibition, but the details and extent of the designs actually displayed are contested. Id. at 494. To prove invalidity, Collezione introduced evidence to show that four SKUs for furniture pieces argued to embody designs relating to the Pre-Market patents were listed on the Pre-Market Wish List. Id. Collezione also presented testimony that a SKU’s inclusion on the Pre-Market Wish List meant that the piece would be shown at Pre-Market. Id. To further establish that certain designs were actually exhibited, Collezione relied on the Pre-Market Wrap-Up document, which contained comments regarding three of the SKUs corresponding to the Pre-Market patents. Id.
After reviewing the evidence, the district court found that it was “highly probable that the furniture designs for the four SKUs corresponding to the Pre-Market patents were shown at the 1999 Pre-Mar-ket.” Id. at 495. The court also found that following Pre-Market, some changes were made to the furniture designs exhibited at Pre-Market. Id. at 490. Nonetheless, the district court concluded that the designs argued to have been shown at the 1999 Pre-Market were not substantially different from the patented designs depicted in the Pre-Market patents. Id. at 495. The district court found that none of the changes made to the exhibited designs following Pre-Market “significantly affected the aesthetics of the Pre-Market patents’ design.” Id.
Bernhardt argues that Collezione failed to adduce facts supported by clear and convincing evidence that furniture designs embodying the Pre-Market patents were actually exhibited or observed at Pre-Mar-ket. Bernhardt contends that the presence of SKUs on the Pre-Market Wish List document does not indicate that any of the corresponding furniture designs were actually displayed on the Pre-Market showroom floor. Moreover, Bernhardt ar *1377 gues that the mere presence of the SKUs noted in the Pre-Market Wrap-Up document does not indicate that furniture designs containing the Pre-Market patents’ points of novelty were displayed at Pre-Market. Bernhardt thus argues that the ■ district court clearly erred when it concluded that furniture items that were “the same or similar” to the Pre-Market patented designs were exhibited at Pre-Mar-ket. Bernhardt not only asserts a failure of Collezione’s proof on invalidity but a failure on the part of the district court to analyze Collezione’s proofs against both the “ordinary observer” and “points of novelty” tests. Bernhardt thus contends that Collezione failed to establish a prior public use of the patented designs and that Collezione’s evidence' only established preparations for a possible Pre-Market display of furniture pieces that might have resembled the patented designs.
Collezione responds that the district court correctly found that Collezione presented clear and convincing evidence that Bernhardt displayed its patented designs at the 1999 Pre-Market. Collezione argues that the district court, relied on Bernhardt’s own Pre-Market Wish List and Wrap-Up documents and on corroborating testimony by Bernhardt’s employees in concluding that furniture pieces embodying the patented designs were actually displayed at Pre-Market. Collez-ione contends that because Bernhardt has not established clear error in the district court’s factual findings that the patented designs were displayed at Pre-Market, these findings should not be reversed.
b. The Applicable Standard
Section 102(b) provides in relevant part: “A person shall be entitled to a patent unless ... the invention was ... in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States .... ” 35 U.S.C. § 102(b) (2000). Section 171 specifies in pertinent part that “the provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.” Id. § 171.
In
Litton Systems, Inc. v. Whirlpool Corp.,
The same principles apply to the assessment of prior public use under 35 U.S.C. § 102(b) of a design patent. In
Door-Master Corp. v. Yorktowne, Inc.,
c. Application of the Standard to the Evidence Presented
In this case, the district court was required to determine whether Collezione established facts supported by clear and convincing evidence that the furniture designs displayed at Pre-Market met both the ordinary observer and point of novelty tests. It is unclear from the district court’s opinion whether both of these tests were correctly applied. The district court found that the patented designs were in public use at Pre-Market because “SKUs which correspond to four of the patents were included” on the Pre-Market Wish List, and because comments on three of these four SKUs appeared on the Pre-Market Wrap-Up.
Bernhardt,
2. Pre-Market as a “Public Use”
a. Collezione’s Evidentiary Showing
Collezione also bore the burden of establishing by facts supported by clear and convincing evidence that Bernhardt’s 1999 Pre-Market was “public” within the meaning of 35 U.S.C. § 102(b).
See Manville Sales,
b. The Applicable Standard
“Public use under 35 U.S.C. § 102(b) includes any use of the claimed invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor.”
Minn. Mining,
This court has considered the effect of confidentiality agreements and ethical obligations in assessing the “public use” issue in a number of cases. In
Moleculon,
the question was whether a display of models to the inventor’s school colleagues was a public use;
Id.
at 1265. The district court found that the inventor “never used the [invention] or permitted it [to be] used in a place or at a time when he did not have a legitimate expectation of privacy and of confidentiality.”
Id.
at 1265. On appeal, this court agreed, stating that
*1380
the district court correctly found that the inventor “at all times retained control over the [inventionj’s use and the distribution of information concerning it.”
Id.
at 1266. In
Baxter,
this court concluded that an invalidating public use had been made, based on testimony by the inventor that he demonstrated the claimed invention to co-workers and visitors who were under no duty to maintain its confidentiality.
Baxter Int’l, Inc. v. Cobe Labs., Inc.,
c. The District Court’s Analysis
Citing
Beachcombers
and
Baxter,
the district court concluded that Bernhardt’s Pre-Market exhibition of its furniture designs constituted an invalidating public use under 35 U.S.C. § 102(b).
Bernhardt,
Collezione argues that the district court’s legal conclusion that the exhibition of these designs was “public” under § 102(b) should not be disturbed. Collez-ione contends that Bernhardt’s primary goal during the 1999 Pre-Market was to introduce new designs to its customers and media representatives, who were allowed to view the designs without signing confidentiality agreements. Furthermore, Col-lezione points out that because potential prices and availability of furniture pieces were discussed at Pre-Market, Bernhardt intended to commercially exploit its new furniture designs at that exhibition. Collez-ione states that the district court correctly found that Bernhardt failed to establish that the 1999 Pre-Market attendees were under any ethical obligation to keep confidential the designs they viewed. Collez-ione argues that the district court’s conclusion that the 1999 Pre-Market exhibition was a public use is consistent with the policies underlying the public use statutory bar.
The district court’s analysis of whether Collezione had presented facts supported by clear and convincing evidence that *1381 Bernhardt’s 1999 Pre-Market was a public use under 35 U.S.C. § 102(b) was misdirected. The district court rested its analysis on the conclusion that
Plaintiff has not provided sufficient evidence that these invitees were under any discernible duty or ethical obligation to maintain what they viewed as confidential. While it may be a dubious business decision, there was little stopping these invitees from passing on what information or details they gathered at Pre-Market to the public or for their financial advantage.
Bernhardt,
The presence or absence of a confidentiality agreement is not dispositive of the public use issue, but “is one factor to be considered in assessing all the evidence.”
Moleculon,
Because the district court did not examine whether Collezione established facts supported by clear and convincing evidence that Bernhardt’s displayed furniture designs at Pre-Market fell within the scope of Bernhardt’s patented designs, applying both the ordinary observer and point of novelty tests, and because the district court’s analysis of the “public” nature of the exhibition was incomplete, we vacate the district court’s finding of invalidity based on prior public use under § 102(b) and remand the validity issue to the district court for further proceedings consistent with this opinion.
*1382 C. Infringement
The parties principally dispute whether Bernhardt met its burden of establishing that Collezione’s accused designs appropriated the points of novelty of Bernhardt’s patented designs. At the outset of this case, the parties disagreed on when and how the district court should determine the points of novelty.
Bernhardt,
On appeal, Bernhardt argues that the district court erred in concluding that Bernhardt failed to prove its infringement case. Bernhardt argues that it submitted all of the evidence the trial court needed to determine the points of novelty of the patents-in-suit — namely, the patents, then-complete prosecution histories, and all of the references cited during prosecution— and filed proposed findings of fact and conclusions of law that specified its contentions as to the points of novelty. Bernhardt argues that in making the required comparison between the patented design and the prior art, the district court was free to regard Bernhardt’s proposed findings of fact as limiting stipulations, or even disregard them and make its own independent assessment. But Bernhardt contends that requiring expert testimony regarding design patents, which simply claim the designs as shown, would be unnecessary. Further, Bernhardt points out that having an expert merely repeat from the witness stand a party’s arguments about the points of novelty would not transmute those arguments into evidence or relieve the fact finder of its obligation to make its own comparisons of the claimed design to the prior art.
Collezione defends the district court’s judgment that Collezione did not infringe Bernhardt’s design patents, arguing that Bernhardt failed to meet its burden of establishing by preponderant evidence that Collezione appropriated the points of novelty of Bernhardt’s patented designs. Col-lezione argues that because Bernhardt *1383 represented to the district court that the points of novelty issue was a fact issue for trial, Bernhardt was required to do more than submit the patents, prosecution histories, and prior art. Collezione contends that Bernhardt did not provide even one witness or one document to explain which features of its patented designs were not shown in the prior art and represented the points of novelty. Collezione asserts that it is not enough merely to introduce the patents, prosecution histories, and cited prior art and to file proposed findings of fact and conclusions of law. Moreover, Collezione argues that many of Bernhardt’s proposed points of novelty are not ornamental, but functional, or are clearly shown in the prior art and thus could not be considered points of novelty in any event. It contends that because Bernhardt did not present evidence to show which novel features are ornamental, the district court could not have determined what features are entitled to protection under Bernhardt’s design patents. In response to the last point, Bernhardt argues that it was not required to identify which of its points of novelty were ornamental, because the trial court previously construed the design patent claims and identified as part of the claim construction what it deemed to be the ornamental features that comprise the patented design.
Both the parties and the district court have recognized that in determining infringement, “[t]he ‘point of novelty’ test is distinct from the ‘ordinary observer’ test and requires proof that the accused design appropriates the novelty which distinguishes the patented design from the prior art.”
Contessa,
Bernhardt’s appeal of its infringement case raises the question, “What evidence must be presented to prove infringement under the point of novelty test?” This court has remarked on proofs submitted in design patent infringement cases but has not unequivocally spoken to what minimum evidence a patentee must present to satisfy its burden under the point of novelty test. In
Goodyear,
this court upheld a trial court decision which relied on points of novelty drawn from the prosecution history in determining patent validity.
Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co.,
To establish the points of novelty in a design patent infringement action, we hold that the patentee must introduce into evidence, at a minimum, the design patent at issue, its prosecution history, and the relevant prior art references cited in the prosecution history; and must present, in some form, its contentions as to points of novelty. The contentions may be made in any appropriate way, such as in proposed findings of fact. The fact finder generally will be able to determine the points of novelty that distinguish the design patent from the prior art by comparing the design patent with the cited prior art references, aided by any written statements of the applicant and examiner in the prosecution history. This standard is consistent with this court’s previous decisions in Goodyear and Litton. A patentee may seek to present additional evidence, such as expert testimony, to assist the fact finder in understanding its contentions pertaining to the points of novelty, and in some cases presenting that evidence may be advisable. We hold only that when the points of novelty can be discerned from the patent, its prosecution history, the cited prior art, and the patentee’s contentions, any additional evidence, such as expert testimony, is not necessary to establish the points of novelty.
The determination of the points of novelty in a design patent infringement case does not place an undue burden on the court. A determination of the differences between the patented design and the prior art is not especially different from the factual determinations that district courts routinely undertake on other issues, such as obviousness.
See Litton,
Here, it is undisputed that Bernhardt introduced into evidence the design patents at issue and their prosecution histories, including cited prior art. Bernhardt, 280 F.Supp.2d at 499. Bernhardt’s contentions as to the points of novelty were contained in its proposed findings of fact and conclusions of law. See id. at 490-93 (reciting Bernhardt’s points of novelty for each patent except the ’560 patent). This was a sufficient, albeit minimal, evidentiary basis on which the district court could have determined the points of novelty. The court was wrong not to examine Bernhardt’s proofs on infringement and not to attempt such determination of the points of novelty as may have been evident therefrom.
The district court further found that Bernhardt failed to prove how Collezione appropriated its proposed points of novelty. Id. at 499. Bernhardt’s proposed findings of fact and conclusions of law not only enumerated its contentions pertaining to the points of novelty, but also detailed how each of Collezione’s accused furniture designs appropriated the enumerated *1385 points of novelty of each patent-in-suit. After expressing its disapproval that Bernhardt did not present an expert witness or other testimony addressing the points of novelty, the district court simply concluded without more that Bernhardt did not prove either the points of novelty or what points of novelty were appropriated by Collez-ione’s accused designs. Id.
It was legal error for the district court to conclude that Bernhardt failed in its burden of establishing that Collezione appropriated the points of novelty of its design. The court apparently did not consider the evidence actually introduced — the design patents, their prosecution histories, and the cited prior art — from which Bernhardt’s proposed points of novelty and contentions regarding how Collezione’s accused designs appropriated Bernhardt’s proposed points of novelty might have been discerned. Because the district court incorrectly required Bernhardt to explain its points of novelty through the testimony of a witness, and concluded, based on the absence of such testimony, that Bernhardt failed to prove that Collezione had appropriated the novel ornamental features of the patents-in-suit, we vacate the district court’s judgment of non-infringement, and remand the infringement issue to the district court for further proceedings consistent with this opinion.
VACATED AND REMANDED
III. COSTS
No costs.