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Hafco Foundry and Machine Co., Inc. v. GMS Mine Repair and Maintenance, Inc.

United States District Court, S.D. West Virginia, Bluefield

June 13, 2018

HAFCO FOUNDRY AND MACHINE COMPANY, INCORPORATED, Plaintiff,
v.
GMS MINE REPAIR AND MAINTENANCE, INC., Defendant.

          MEMORANDUM OPINION

          David A. Faber Senior United States District Judge

         By Order entered on April 26, 2017, the court denied defendant's motion to construe the patent as invalid or, in the alternative, motion to adopt defendant's claim construction. (ECF No. 59). The reasons for that decision follow.

         I. Background

         Hafco filed the instant action for patent infringement on December 15, 2015. Hafco owns the patent for a Rock Dust Blower, U.S. Design Patent No. D681, 684S. See Complaint ¶ 9. Within the scope of the Rock Dust Blower Patent, “Hafco makes, offers for sale and sells a rock dust blower . . . within the Southern District of West Virginia and throughout the United States.” Id. at ¶ 12. In 2014, Hafco entered into an agreement with Pioneer Conveyor, alleged to be a GMS affiliate, by which Pioneer Conveyor was to distribute Hafco rock dust blowers to mining customers. See id. at ¶ 13. The distribution agreement between Hafco and Pioneer Conveyor was terminated in early May 2015. See id. According to Hafco, following termination of the aforementioned distribution agreement, GMS began selling infringing rock dust blowers within the Southern District of West Virginia. See id. at ¶ 14.

         II. Patent Validity

         Under 35 U.S.C. § 171, "[w]hoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor. . . ." The United States Patent and Trademark Office (“USPTO”) is charged with the task of examining patent applications and issuing a patent if it appears that the applicant has met the requirements for issuance of a patent. Microsoft Corp. v. i4i Ltd., 564 U.S. 91, 95-96 (2011). Once issued, a design patent is entitled to a presumption of validity. See 35 U.S.C. § 282 (“A patent shall be presumed valid.”). Therefore, “overcoming this presumption requires clear and convincing evidence." Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1188 (Fed. Cir. 2014); see also Microsoft Corp., 564 U.S. at 95 (“We consider whether § 282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.”); Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1354 (Fed. Cir. 2010) (en banc) (“A patent is presumed to be valid, and this presumption can only be overcome by clear and convincing evidence to the contrary.”) (internal citations and quotations omitted).

         The burden of establishing the invalidity of the patent rests on the party asserting invalidity. See 35 U.S.C. § 282(a); Microsoft Corp., 564 U.S. at 100 (“Thus, by its express terms, § 282 establishes a presumption of patent validity, and it provides that a challenger must overcome that presumption to prevail on an invalidity defense.”).

         “Design patents on [ ] primarily functional rather than ornamental designs are invalid.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1328 (Fed. Cir. 2015). GMS argues that the design patent at issue in this case is invalid because of functionality, i.e., that the design is dictated by function. The Federal Circuit “appl[ies] a stringent standard for invalidating a design patent on grounds of functionality: the design of a useful article is deemed functional where the appearance of the claimed design is dictated by the use or purpose of the article.” Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002) (internal citations and quotations omitted). In making this determination, the United States Court of Appeals for the Federal Circuit has offered some guidelines:

Articles of manufacture necessarily serve a utilitarian purpose, but design patents are directed to the ornamental designs of such articles. 35 U.S.C. § 171. If a particular design is essential to the use of an article, it cannot be the subject of a design patent. . . . We have found designs to be essential to the use of an article when the claimed design is dictated by the use or purpose of the article. . . .
In determining whether a claimed design is primarily functional, “[t]he function of the article itself must not be confused with `functionality' of the design of the article.” Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997). . . . We explained that a claimed design was not invalid as functional simply because the primary features of the design could perform functions. As with its analysis on other validity grounds, the district court used too high a level of abstraction in assessing the scope of the claimed design.
* * *
We have also instructed that the overall appearance of the article--the claimed design viewed in its entirety--is the basis of the relevant inquiry, not the functionality of elements of the claimed design viewed in isolation. . . . [W]e explained that the utility of each of the various elements that comprise the design is not the relevant inquiry with respect to a design patent because whether a design is primarily functional or primarily ornamental requires a viewing of the claimed design in its entirety. . . .
We have not mandated applying any particular test for determining whether a claimed design is dictated by its function and therefore impermissibly function. We have often focused, however, on the availability of alternative designs as an important--if not ...

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