D. Mass Judge Considers Scope of Design Patent Markman Hearing Post-Egyptian Goddess

Design patent fans will find interesting a recent Markman order issued by Judge Douglas P. Woodlock of our federal district court here in Boston. Judge Woodlock construed the claim of U.S. Design Patent No. D-469,840, entitled "Air Gun Sight," keeping in mind the CAFC's recent decision in Egyptian Goddess, Inc. v. Swisa, Inc., 88 USPQ2d 1658 (TTAB 2008) that cautioned against "the dangers of detailed verbal constructions." DePaoli v. Daisy Mfg. Co., Civil Action No. 07-cv-11778-DPW (July 14, 2009).


The single claim of the '840 design patent, as usual, simply read: "The ornamental design for [an] air gun sight, as shown and described." The patent includes two figures or drawings.

Plaintiff DePaoli offered a minimalist claim construction: "an ornamental design for [an] air gun sight, as shown and described in Figures 1 and 2 of the patent." Defendant Daisy, not surprisingly, proposed a much more complicated construction:

The ornamental design for [an] air gun sight as shown, which includes an elevation control housing and LED housing at the rear end of a tube holder and a ramp extending the distance between the sighting tube and the LED housing. The elevation control housing and the LED housing step up from the sides of the tube holder. The ramp is not flat, drops below the sides of the tube holder, and the stand that mounts the sighting tube onto the tube holder is not part of the ramp. Controlling elevation through the use of an elevation control screw is a functional feature that is not covered by the design.

The court first dealt with a "threshold question": "whether claim construction is the appropriate stage for the court to resolve the limiting effect of prosecution history and functionality on the scope of a design patent's claims."

The court reviewed the handful of district court decisions that addressed the issue of the proper approach to claim construction post-Egyptian Goddess, and concluded that functionality and prosecution history estoppel should not be included in the claim construction analysis:

To provide the jury with a verbalized construction of the ‘840 design patent’s claims which directs their attention to the two illustrations in the patent and then describes only those elements that are implicated by prosecution history and functionality would place undue emphasis on those few elements. This is precisely the danger against which the Egyptian Goddess court cautioned.

The court therefore adopted Plaintiff DePaoli's simple claim construction, ruling that the court would address the functionality and estoppel issues "if and when they are raised at some later stage of the proceedings, such as resolution of motions for summary judgment or as part of the jury instructions."

TTABlog note: My previous discussion of Egyptian Goddess here.

Text Copyright John L. Welch 2009.