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Jenny Yoo Collection, Inc. v. Essense of Australia, Inc.

United States District Court, D. Kansas

January 15, 2019

JENNY YOO COLLECTION, INC., Plaintiff,
v.
ESSENSE OF AUSTRALIA, INC., Defendant

          MEMORANDUM AND ORDER

          GWYNNE E. BIRZER UNITED STATES MAGISTRATE JUDGE

         On December 12, 2018, the Court convened an in-person motion hearing to address Defendant's Motion for Entry of Protective Order (Motion) (ECF No. 43).[1] Plaintiff appeared through counsel, Laura-Michelle Horgan, William H. Meyer, and Maurice N. Ross.[2] Defendant appeared through counsel, James J. Kernell and Kyle D. Donnelly. After review of Defendant's Motion and Memorandum in Support (ECF No. 44), Plaintiff's Memorandum of Law in Opposition to Defendant's Motion for a Protective Order (ECF No. 48), all attached exhibits, and hearing arguments of counsel, the Court GRANTED the Motion at the hearing, and held that the proposed depositions shall not proceed as noticed at this time, but will permit Plaintiff to proceed with limited discovery as explained more fully below.

         I. Nature of the Case

         Plaintiff and Defendant both design and sell wedding gowns and bridesmaid dresses. The subject matter of this lawsuit is Plaintiff's “Aidan” and “Annabelle” bridesmaid dress designs, and whether Defendant infringed upon those designs.[3]Specifically, Plaintiff asserts claims against Defendant for (1) federal trade dress infringement; (2) common law trade dress infringement and unfair competition; (3) infringement of two of Plaintiff's design patents; (4) unfair business practices; and (5) unjust enrichment.[4] Defendant's Motion for Entry of Protective Order (Motion) deals with the two design patent infringement claims. In particular, it regards claim construction, which is the first step in any patent infringement analysis.

         Further background information regarding these cases can be found in the Court's August 7, 2018 Memorandum and Order[5] and December 20, 2018 Memorandum and Order, [6] and need not be repeated here. Instead, the Court will (1) provide an overview of claim construction as it is central to the dispute between the parties; (2) set forth facts relevant to Defendant's Motion; and (3) analyze the merits of the Motion.

         II. Overview of Claim Construction

         In a patent, the “claims” define, in technical terms, the scope of protection conferred by the patent.[7] In other words, the claims of the patent define the patentee's invention.[8]There are two main types of patents: utility and design. In utility patents, the “claims” are mostly described by words, usually comprised of technical terms.[9] However, in design patents, which is the type of patent at issue here, the “claims” are described by drawings, not words.[10]

         Determining whether a design patent claim has been infringed upon requires, first, as with utility patents, that the claim be properly construed to determine its meaning and scope.[11] This is referred to as claim construction, [12] and is a question of law for the court to decide.[13] Then the claim, as properly construed, is compared to the accused design to determine whether there has been infringement.[14] This determination is left to the fact finder.[15] In this second step, the patented and accused designs are compared for visual similarity under the “ordinary observer” test, which asks whether an ordinary observer would find substantial similarities between the patented design and the accused design, so as to be deceived into purchasing the accused design believing it is the patented design.[16]

         At issue here is the legal standard for the first step of the infringement analysis described above, i.e., claim construction. In utility patents, claim construction involves determining what the technical words in the claim mean.[17] Construction of design patent claims differ because drawings, not words, must be construed.[18] However, an understanding of claim construction in utility patents, as described below, is important because the Federal Circuit has stated “because design patents ‘typically are claimed as shown in drawings,' claim construction [as used in utility patents] should be ‘adapted accordingly.'”[19] However, the Federal Circuit does caution trial courts against providing a detailed verbal description of a claimed design, as is typically required for claim terms in utility patents.[20]

         When constructing claim terms in utility patents, courts generally should give terms their ordinary and customary meaning.[21] That is, the meaning the term would have to a hypothetical person of ordinary skill in the art in question at the time of the invention.[22] In doing so, courts first consider intrinsic evidence, which consists of the claims themselves, the patent specification, and the patent's prosecution history.[23]

         A court may also rely on extrinsic evidence, [24] which is particularly important to the instant Motion, and so will be discussed in detail. Extrinsic evidence includes “all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.”[25] Dictionaries and treatises can help a court determine the meaning of a term to those skilled in the art in question.[26] Expert testimony can be useful for a variety of purposes, such as to “ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field.”[27]

         But the Federal Circuit, for several reasons, has cautioned extrinsic evidence in general is less reliable than the intrinsic evidence in interpreting claims:

First, extrinsic evidence by definition is not part of the patent and does not have the specification's virtue of being created at the time of patent prosecution for the purpose of explaining the patent's scope and meaning. . . . [Next], extrinsic evidence consisting of expert reports and testimony is generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence. . . . [Additionally], there is a virtually unbounded universe of potential extrinsic evidence of some marginal relevance that could be brought to bear on any claim construction question. In the course of litigation, each party will naturally choose the pieces of extrinsic evidence most favorable to its cause, leaving the court with the considerable task of filtering the useful extrinsic evidence from the fluff. Finally, undue reliance on extrinsic evidence poses the risk that it will be used to change the meaning of claims in derogation of the “indisputable public records consisting of the claims, the specification and the prosecution history, ” thereby undermining the public notice function of patents.
In sum, extrinsic evidence may be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence. Nonetheless, because extrinsic evidence can help educate the court . . . it is permissible for the district court in its sound discretion to admit and use such evidence. In exercising that discretion, and in weighing all the evidence bearing on claim construction, the court should keep in mind the flaws inherent in each type of evidence and assess that evidence accordingly.[28]

         To summarize, in construing design patent claims, courts adopt the above principles for utility patent claim construction and adjust as necessary to account for the fact that design patent claims are described by drawings, and not words.[29]

         III. Facts Relevant to Defendant's Motion for Entry of Protective Order

         On August 21, 2018, pursuant to this District's Patent Local Rules, [30] a phased scheduling order allowing for early claim construction was entered.[31] Per that Initial Patent Scheduling Order, claim construction discovery was to be completed by November 30, 2018, and claim construction briefing was to be completed by February 8, 2019.[32] The Court, at its discretion, was to then set a date to hear and decide the parties' claim construction issues.[33] After the Court enters its claim construction order, a scheduling order for the remainder of discovery and other pretrial matters would be set.[34]

         On October 5, 2018, the Court conducted a conference with the parties to discuss Plaintiff's request to modify the Initial Patent Scheduling Order to have claim construction proceedings occur at the summary judgment phase after the completion of all fact and expert discovery, and not after the completion of claim construction discovery as currently scheduled.[35] After hearing arguments from counsel, the Court found Plaintiff did not present good cause to deviate from the Patent Local Rules, and declined Plaintiff's request. The Court did, however, grant Plaintiff more time to complete claim construction discovery. Accordingly, a Revised Initial Patent Scheduling Order was entered extending the claim construction discovery deadline to January 16, 2019.[36]

         During discussion on extending the claim construction discovery deadlines, a dispute arose regarding whether Plaintiff could take depositions of Defendant's designers. Plaintiff argued such discovery was necessary for claim construction, while Defendant argued it was not. After hearing argument of counsel, the Court ordered discovery during this time period must be limited to claim construction only. The Court made clear to Plaintiff's counsel the purpose of extending deadlines was to conduct claim construction discovery, and not infringement and invalidity discovery.

         On October 9, 2018, Plaintiff served Defendant with four deposition notices.[37] In them, Plaintiff sought to depose Defendant's 30(b)(6) representative, Defendant designers of the six dresses that are the bases of Plaintiff's infringement claims, Defendant's President, and Defendant's Chief Creative Officer.[38] On November 5, 2018, Plaintiff's counsel informed the undersigned's chambers Defendant was refusing to produce the witnesses for their depositions and requested a conference to discuss the same. The Court set a status conference for November 9, 2018. However, on November 7, 2018, Defendant filed the instant Motion for Entry of a Protective Order asking the Court to forbid the depositions as noticed or, in the alternative, to allow Plaintiff one 30(b)(6) deposition regarding claim construction only.[39] In light of Defendant filing a formal written motion, the Court cancelled the November 9, 2018 conference, and set an in-person motion hearing for December 12, 2018.[40]

         IV. Plaintiff's Motion for Entry of Protective Order

         A. Duty to Confer

         Pursuant to D. Kan. Rule 37.2, this Court “will not entertain any motion to resolve a discovery dispute” unless counsel “has conferred or has made reasonable effort to confer with opposing counsel” before filing a motion. Several pages of Plaintiff's Memorandum in Opposition to Defendant's Motion are dedicated to defense counsel's alleged lack of conferral before filing the Motion.[41] But, during the December 12, 2018 hearing, the Court inquired about the parties' conferral efforts and was satisfied counsel adequately conferred for purposes of deciding the instant Motion. And, as stated during the December 12, 2018 hearing, the Court again stresses the importance of proper conferral as litigation progresses. This case needs to proceed past claim construction discovery, and the Court expects counsel, especially the experienced patent lawyers present here, to meaningfully confer as necessary and by telephone as issues, discovery or otherwise, arise.

         B. Legal Standard for Issuing a Protective Order

         Fed. R. Civ. P. 26(c)(1) provides the “court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense.” The party seeking the protective order has the burden of demonstrating good cause for it.[42] To prove good cause, the moving party must offer “a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements.”[43]Whether to enter a protective order lies within the court's discretion.[44]

         C. Discussion

         As previously stated, Plaintiff served Defendant with four deposition notices on October 9, 2018.[45] Plaintiff sought to depose: (1) Defendant's 30(b)(6) representative; (2) Defendant's employees who designed the six dresses Plaintiff identified as infringing products in its Amended Complaint; (3) Defendant's President, Wayne Harris; and (4) Defendant's Chief Creative Officer, Martine Harris.[46] Plaintiff attached the same “Schedule A” to each deposition notice listing the same fourteen “Topics for Examination.”[47] On November 7, 2018, Plaintiff filed the instant Motion to forbid the depositions from proceeding as noticed or, in the alternative and in the spirit of cooperation, to allow Plaintiff one 30(b)(6) deposition regarding claim construction only. In support, Defendant argues Plaintiff is circumventing the Court's previous order limiting current discovery to claim construction by issuing overreaching, costly and unduly burdensome depositions inquiring into infringement and invalidity.

         1. Relevancy and Undue Burden of the Proposed Depositions to Claim Construction Discovery

         The parties fundamentally disagree regarding the standard for claim construction, which is driving much of their dispute regarding the propriety of the proposed depositions during the current stage of discovery. Defendant argues claims are construed from the viewpoint of the “ordinary observer.” As such, of the fourteen deposition topics listed, Defendant argues only Topic 8, which asks about the “meaning of [Plaintiff's] patent claims . . . from the point of view of the ordinary observer, ”[48] is relevant to claim construction. Defendant also argues because extrinsic evidence is given little weight in claim construction, a protective order is necessary to protect it from undue burden and expense, i.e., the burden of duplicative and costly depositions outweigh any possible relevancy to claim construction.

         Plaintiff, on the other hand, insists claims are construed from the viewpoint of a person skilled in the art, which in this instance would be an “ordinary designer.” Based on this and the fact that parties are allowed to present extrinsic evidence during claim construction, Plaintiff argues it can present evidence from Defendant's designers because they are presumably skilled in the art and most likely interpreted the patent drawings in designing the alleged infringing dresses. Plaintiff further states all deposition topics seek evidence specifically related to how an ordinary designer would understand the patent drawings, and thus are narrowly tailored to claim construction.

         After reviewing the authorities cited by the parties and conducting its own research, the Court finds neither party, in this instance, is entirely correct regarding the claim construction standard. While the “ordinary observer” test is used for determining actual infringement (i.e., the second part of the infringement analysis), it does not appear to necessarily factor into claim construction.[49] And, while courts may interpret claims from the viewpoint of one skilled in the art, [50] courts do so in light of the intrinsic evidence, as opposed to extrinsic evidence, which should only be used as an aid in understanding the intrinsic evidence, not to change the meaning of the claims.[51] Also, the case law regarding design patent claim construction clearly cautions against verbally describing the drawings, as would be done with utility patents claims, meaning extrinsic evidence may be even less valuable here.[52]

         However, even if courts may interpret claims from the viewpoint of one skilled in the art, in looking at Plaintiff's proposed deposition topics, the Court finds most of them clearly reach beyond inquiring how an ordinary designer would interpret the patent drawings.

         Topics 1 through 4, 5 and 12 appear to be aimed at discovering how Defendant designed around the patent drawings in coming up with their dresses. Those Topics inquire as follows:

1. The manner in which the Alleged Infringing Products were created, including, but limited to, any drawings, figures, sketches or other visual depictions used in the creation of the Alleged Infringing products or that reflect the Alleged Infringing Products.
2. Any drawings, figures or visual depictions that reflect or constitute the design of the Alleged Infringing Products.
3. Figures, drawings and depictions contained in [Plaintiff's] patents and the applications for such patents, including but not limited to any analysis or study concerning such figures, drawings, and visual pictures.
4. Any comparison made by Defendant or others concerning drawings, figures or visual depictions that reflect or constitute the design of the Alleged Infringing Products and the drawings, figures or visual depictions contained in [Plaintiff's] patents and the applications for such patents.
5. How drawings, figures or visual depictions that reflect or constitute the design of the Alleged Infringing products compare with the drawings, figures and visual depictions contained in [Plaintiff's] patents and the application for such patents.
12. Attempts and actions taken by Defendant to design around the claims in [Plaintiff's] patents.[53]

         Claim construction is a legal statement of the scope of Plaintiff's patent, not Defendant's dress designs or drawings.[54] Additionally, claim construction is an issue of law for the court to decide.[55] Therefore, such factual information about how Defendant designed its dresses would not be relevant to claim construction of ...


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