The Federal Circuit has vacated a design patent infringement ruling after finding that the district court erred in construing the claim term “transparency” as equivalent with “translucent.”
The court found that a party had forfeited its challenge to the opposing party’s expert testimony on the perspective of ordinary observers, but noted that that principles on expert testimony submitted to show the perspective of persons of ordinary skill in the art from the utility patent context would likely apply to design patent cases also.
The case is Smartrend Manufacturing Group, Inc. v. Opti-Luxx Inc.
Smartrend Manufacturing Group (SMG), Inc. sued Opti-Luxx Inc. for alleged infringement of two patents: U.S. Design Patent No. D932,930 (the “D930 patent”) and U.S. Patent No. 11,348,491 (the “’491 patent”).
As the court explained,
This case involves two patents that are directed to an illuminated school bus sign. Opti-Luxx’s product (the “accused product”) is a single-piece illuminated school bus sign made up of a rigid plastic tub housing, an LED light board, and a yellow lens with black lettering. The plastic housing operates as the accused product’s frame and is not separable from the rest of the sign. According to OptiLuxx, the black lettering on the accused product is totally opaque and the yellow lens is translucent such that light can pass through, but the LED light board behind it is not clearly visible.
In the description, the D930 patent indicates that “oblique shading lines visible in the front and perspective views denote transparency.”
Over Opti-Luxx’s objection, the district court construed the D930 patent claim term “transparency” to mean both “transparent” and “translucent.”
At trial, in support of its infringement theory, Smartrend moved to recognize a Mr. York as an expert in “LED lighting and illuminated signage.”
When Mr. York was admitted as an expert witness, Opti-Luxx initially didn’t object. But when Mr. York began testifying as to the perspective of an ordinary observer with regard to the D930 patent, Opti-Luxx objected to his testimony based on his purported lack of qualifications.
As we explained in this blog from 2019,
Under the “ordinary observer” test, an accused product infringes a design patent if “in the eye of an ordinary observer . . . two designs are substantially the same,” such that “the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other . . . .”
The district court overruled this objection, and the jury subsequently found infringement of both patents.
The district court denied Opti-Luxx’s motion for judgment as a matter of law (“JMOL”) and issued a permanent injunction.
OptiLuxx appealed.
On appeal, the federal circuit noted that
There is no contention that the patent claims or specification here disclaim the plain and ordinary meaning of “transparency” or that the patentee acted as a lexicographer. Under these circumstances, the jury must apply the plain and ordinary meaning of the term. Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Extrinsic evidence may not be used to arrive at a construction that is contrary to the plain and ordinary meaning.
In this case, said the court,
“conclusory” testimony by experts unsupported by reliable extrinsic material—such as special-purpose dictionaries or other objective evidence—is insufficient.
The court also noted that
We have not yet had the occasion to decide what exactly qualifies an expert witness to testify as to the perspective of the ordinary observer. In the utility patent context, an expert witness may testify as to the perspective of a person of ordinary skill in the art (“POSA”) even if the expert possesses extraordinary skill.
The court concluded that
It seems logical that these same principles will apply in a design patent context—such that expert witnesses may possess knowledge beyond that of ordinary observers yet still testify as to the perspective of an ordinary observer, provided the expert can establish familiarity with that perspective.
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