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No.

15-1553

IN THE UNITED STATES COURT OF APPEALS


FOR THE FEDERAL CIRCUIT

SPORT DIMENSION, INC., a California Corporation,


Plaintiff-Appellee,
v.
THE COLEMAN COMPANY, INC., a Delaware Corporation,
Defendant-Appellant.

Appeal From The United States District Court


Central District of California
Case No. 2:14-cv-00438-BRO-MRW
Honorable Beverly M. OConnell

CORRECTED - BRIEF OF DEFENDANT-APPELLANT


THE COLEMAN COMPANY, INC. NON-CONFIDENTIAL

Michael R. Annis
JoAnn T. Sandifer
Husch Blackwell LLP
190 Carondelet Plaza, Suite 600
St. Louis, MO 63105
314.480.1500 Phone; 314.480.1505 Fax
mike.annis@huschblackwell.com
joann.sandifer@huschblackwell.com
Counsel for Defendant-Appellant

OMA-381387-9

Dated: June 17, 2015

CERTIFICATE OF INTEREST
Counsel for Defendant-Appellant certifies the following:
1.

The full name of every party or amicus represented by us is:


The Coleman Company, Inc.

2.

The name of the real party in interest (if the party named in the caption is not

the real party in interest) represented by us is:


N/A
3.

All parent corporations and any publicly held companies that own 10 percent

or more of the stock of the party or amicus represented by us are:


The Coleman Company, Inc. is an indirect, wholly owned subsidiary
company of Jarden Corporation, a publicly traded company.
4.

The names of all law firms and the partners and associates that appeared for

the party or amicus now represented by us in the trial court or agency or are
expected to appear in this court are:
HUSCH BLACKWELL LLP: Michael R. Annis, JoAnn T. Sandifer,
Marnie A. Jensen, Andrew R. Gilfoil, Mark Falkowski
ARENT FOX LLP: Anne Marie Ellis, Gary Wolensky

OMA-381387-9

TABLE OF CONTENTS
CERTIFICATE OF INTEREST .................................................................................i
TABLE OF CONTENTS .......................................................................................... ii
TABLE OF AUTHORITIES .................................................................................. vii
STATEMENT OF RELATED CASES ..................................................................... 1
JURISDICTIONAL STATEMENT .......................................................................... 2
STATEMENT OF ISSUES ....................................................................................... 2
STATEMENT OF THE CASE .................................................................................. 4
I.

II.

FACTUAL BACKGROUND.......................................................................... 4
A.

Coleman and the D714 Patent.............................................................. 4

B.

Colemans Puddle Jumper Flotation Aid is Covered by the


D714 Patent: it is a Commercial Embodiment of the Design
Claimed in the D714 Patent ................................................................. 5

C.

Sport Dimensions Sale of the Body Glove 325 PFD ........................... 5

PROCEDURAL BACKGROUND ................................................................. 6


A.

Sport Dimension Files the Underlying Lawsuit .................................... 6

B.

The Parties Initial Proposed Claim Constructions ............................... 6

C.

The District Courts Initial Claim Construction Order ......................... 7

D.

The District Courts Supplemental Claim Construction Order............. 7


1.

The District Court Imported the Title of the Patent


and the USCGs Regulations of Personal Flotation
Devices Into its Construction of the Claim of the
D714 Patent ............................................................................... 8
ii

2.

As Part of its Claim Construction, the District Court


Factored Out the Elements it Determined Were
Functional ............................................................................... 9

E.

The District Court Strikes and Excludes the Entirety of the


Report and Testimony of Colemans Proffered Expert ........................ 9

F.

The District Court Enters Judgment of Non-Infringement


and Certification of that Judgment as Final and Coleman
Files its Notice of Appeal .................................................................... 11

SUMMARY OF THE ARGUMENT ...................................................................... 12


ARGUMENT .......................................................................................................... 16
I.

THE DISTRICT COURT ERRED AS A MATTER OF LAW


BECAUSE IT IMPROPERLY IMPORTED LIMITATIONS
INTO ITS CONSTRUCTION OF THE CLAIMED DESIGN ..................... 16
A.

Standard of Review for Claim Construction ....................................... 16

B.

General Principles of Design Patent Claim Construction ................... 17

C.

Rules of Construction To Address Contentions That An


Element Of The Claimed Design Is Functional .............................. 18

D.

Settled Law Prohibits a District Court From Considering the


Title of the Design Patent or Commercial Embodiments
When Construing Claim Scope ........................................................... 19

E.

The District Court Erred As a Matter of Law By Importing


the D714s Title and Standards Applicable Only to the
Commercial Embodiment into its Construction of the Claim
of the D714 Patent.............................................................................. 21
1.

Errors Relating to the Title of the D714 Patent ...................... 21

2.

Errors Relating to the District Courts Violation of


the Berry Sterling Standards..................................................... 23

iii

II.

III.

IV.

THE DISTRICT COURT ERRED AS A MATTER OF LAW


BECAUSE IT ELIMINATED ENTIRE ELEMENTS OF THE D714 PATENT ................................................................................................. 26
A.

This Circuits Clarification Regarding the Impropriety of


Excluding Elements of a Claimed Design From the Claim
Scope ................................................................................................... 26

B.

The District Court Erroneously Eliminated Entire Elements


of the D714 Patent.............................................................................. 27

THE DISTRICT COURT ERRED AS A MATTER OF LAW


BECAUSE IT FAILED TO RECOGNIZE THE DISTINCTION
BETWEEN FUNCTIONALITY FOR PURPOSES OF PATENT
VALIDITY AND FUNCTIONALITY FOR PURPOSES OF
CLAIM CONSTRUCTION .......................................................................... 29
A.

The Multifactor Functionality Test is Not Applicable to


Design Patent Claim Construction ...................................................... 29

B.

The District Courts Application of the Multifactor


Functionality Test was Clearly Erroneous .......................................... 32
1.

Standard of Review for Factual Determinations in


Claim Construction ................................................................... 32

2.

The District Court Erred in Determining that the


Alternative Designs in Evidence Support a
Conclusion that the D714 Patents Features Are the
Best Design and Therefore Purely Functional ......................... 34

3.

Colemans Concomitant Utility Patent Application


Shows There Were Alternative Designs for the
Challenged Elements that Would Not Impact the
Utility of the Design .................................................................. 35

4.

Coleman Did Not Tout Functional Aspects of its


Claimed Design ......................................................................... 36

THE DISTRICT COURT CLEARLY ERRED IN


DETERMINING THAT INDIVIDUAL ELEMENTS OF THE
D714 PATENT ARE FUNCTIONAL ..................................................... 37
iv

V.

A.

The District Courts Factual Findings Were Based On an


Error of Law and Therefore Constitute Error ..................................... 38

B.

The District Court Erred in Finding that Some of the


Individual Elements of the D714 Patent Are Purely
Functional ............................................................................................ 38
1.

The Armbands ........................................................................... 39

2.

The Armband Attachments ........................................................ 41

3.

The Shape and Tapering of the Armbands................................ 44

4.

The Tapered Side Torso ............................................................ 45

THE DISTRICT COURT ABUSED ITS DISCRETION BY


EXCLUDING TESTIMONY AND REPORTS BY PETER
BRESSLER, AN INDUSTRIAL DESIGN CONSULTANT
WITH OVER FOUR DECADES OF RELEVANT INDUSTRIAL
DESIGN EXPERIENCE ............................................................................... 46
A.

Applicable Legal Standards for Review of the Districts


Courts Order Striking Colemans Expert........................................... 47
1.

Standard of Review ................................................................... 48

2.

Fed. R. Evid. 702 is Broadly Phrased and Intended to


Embrace More Than a Narrow Definition of a
Qualified Expert ........................................................................ 48

B.

Bressler Possesses Extensive Relevant Product Design


Experience Qualifying Him to Testify on Topics Related to
Functionality, Infringement, and Obviousness ................................... 49

C.

The District Court Erred as a Matter of Law When it


Concluded Bressler Was Unqualified to Testify under
Federal Circuit Precedent .................................................................... 51
1.

Sundance Was a Utility Patent Case and Has Little


Relevance to this Design Patent Case ...................................... 52

2.

The District Court Characterized the Pertinent Art


Too Narrowly ............................................................................ 53

D.

Requiring Bressler to Have Experience Designing a


Wearable Buoyant Device Modified the Standard for Expert
Admissibility ....................................................................................... 54

CONCLUSION ........................................................................................................ 57
ADDENDUM ..............................................................................................................
CERTIFICATE OF SERVICE ....................................................................................
CERTIFICATE OF COMPLIANCE ...........................................................................

CONFIDENTIAL MATERIAL OMITTED


The following describes the general nature of the confidential material
omitted from this Non-Confidential Brief:
The material omitted on pages 24-25, 39-40, and 44-45 describes Colemans
commercial embodiment of the D714 Patent and Sport Dimensions expert
witnesss opinions regarding Colemans commercial embodiment including
her opinions regarding the UL file for that commercial embodiment.
The material omitted on page 36 describes the Colemans internal
advertising for the commercial embodiment of the D714 Patent.

vi

TABLE OF AUTHORITIES
Cases
Apple Inc. v. Motorola, Inc.,
757 F3d 1286 (Fed. Cir. 2014) .....................................................................47
Apple Inc. v. Samsung Electronics Co., Ltd.,
2012 WL 2571332 (Fed. Circuit 2012) ........................................................56
Apple, Inc. v. Samsung Electronics America, Inc.,
Nos. 2014-1335, 2015-1029,
2015 WL 2343543 (Fed. Cir. May 18, 2015) ........................................ 13, 26
Asetek Danmark A/S v. CMI USA, Inc.,
2014 WL 5590699 (N.D. Cal. 2014) ............................................................56
Avia Group Intern., Inc. v. L.A. Gear Cal., Inc.,
853 F.2d 1557 (Fed. Cir. 1988) ....................................................................30
Berry Sterling Corp. v. Pescor Plastics,
122 F.3d 1452 (Fed. Cir. 1997) .............................................................passim
Braun Inc. v. Dynamics Corp. of Am.,
975 F.2d 815 (Fed. Cir. 1992) ............................................................... 14, 18
Carman Indus., Inc. v. Wahl,
724 F.2d 932 (Fed. Cir. 1983) ......................................................................52

vii

City of Pomona v. SMQ N. Am. Corp.,


750 F.3d 1036 (9th Cir. 2014) ............................................................... 48, 57
Contessa Food Prods., Inc. v. Conagra, Inc.,
282 F.2d 1370 (Fed. Cir. 2002) ............................................................. 14, 17
Daubert v. Merrell Dow Pharms. Inc.,
509 U.S. 579 (1993) ........................................................................ 48, 49, 55
Dobson v. Dornan,
118 U.S. 10, 6 S.Ct. 946, 30 L.Ed 63 (1886) ...............................................17
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) ................................................... 17, 18, 28, 30
Elvis Presley Ents., Inc. v. Capece,
141 F.3d 188 (5th Cir. 1998) ........................................................................33
Farstone Tech., Inc. v. Apple, Inc.,
2015 WL 857706 (C.D. Cal. 2015) ..............................................................56
Flex-Rest, LLC v. Steelcase, Inc.,
455 F.3d 1351 (Fed. Cir. 2006) ....................................................................33
Hendler v. United States,
175 F.3d 1374 (Fed. Cir. 1999) ............................................................. 33, 36
High Point Design LLC v. Buyers Direct, Inc.,
730 F.3d 1301 (Fed. Cir. 2013) ....................................................... 30, 31, 32
viii

Hypotherm, Inc. v. Am. Torch Tip Co.,


No. 05-cv-373-JD,
2009 WL 530064 (D.N.H. Feb. 27, 2009).............................................. 51, 52
Intl Gamco, Inc. v. Multimedia Games Inc.,
732 F.Supp.2d 1082 (S.D. Cal. 2010) ................................................... 54, 55
L.A. Gear, Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117 (Fed. Cir. 1993) ............................................................. 18, 30
Nordock, Inc. v. Sys. Inc.,
927 F. Supp. 2d 577 (E.D.Wisc. 2013) ................................................. 54, 55
Ollier v. Sweetwater Union High School Dist.,
768 F.3d 843 (9th Cir. 2014) ........................................................................48
Panduit Corp. v. Dennison Mfg. Co.,
810 F.2d 1561 (Fed. Cir. 1987) ............................................................ passim
Pharmacia & Upjohn Co. v. Mylan Pharm., Inc.,
182 F.3d 1356 (Fed. Cir. 1999) ....................................................................16
PHG Techs., LLC v. St. John Cos.,
469 F.3d 1361 (Fed. Cir. 2006) ....................................................................31
Pom Wonderful LLC v. Hubbard,
775 F.3d 1118 (9th Cir. 2014) ......................................................... 48, 54, 57

ix

Primiano v. Cook,
598 F.3d 558 (9th Cir. 2010) ........................................................................49
Richardson v. Stanley Works, Inc.,
597 F.3d 1288 (Fed. Cir. 2010) ............................................................... 9, 27
Seiko Epson Corp. v. Nu-Kote Intl, Inc.,
190 F.3d 1360 (Fed. Cir. 1999) ....................................................... 18, 39, 44
Shire Dev. LLC v. Watson Pharm., Inc.,
No. 2013-1409,
2015 WL 3483245 (Fed. Cir. 2015) ................................................. 16, 32, 33
Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc.,
637 F.3d 1269 (Fed. Cir. 2011) ....................................................................47
Sundance, Inc. v. DeMonte Fabricating Ltd.,
550 F.3d 1356 (Fed. Cir. 2008) ............................................................ passim
Terlep v. Brinkmann Corp.,
418 F.3d 1379 (Fed. Cir. 2005) ....................................................................17
Thomas v. Newton Intern., Enters.,
42 F.3d 1266 (9th Cir. 1994) ................................................................ passim
United States v. Finley,
301 F.3d 1000 (9th Cir. 2002) ......................................................................47

United States v. Sandoval-Mendoza,


472 F.3d 645 (9th Cir. 2006) ........................................................................49
United States v. U.S. Gypsum Co.,
333 U.S. 364 (1948) .....................................................................................33
Wallace v. Ideavillage Prods. Corp.,
No. 06-cv-5673-JAD,
2014 WL4637216, at *2 (D.N.J. Sept. 15, 2014) ..........................................52
Statutory Authorities
28 U.S.C. 1295(a) ...................................................................................................2
28 U.S.C. 1331 ........................................................................................................2
28 U.S.C. 1338(a) ...................................................................................................2
28 U.S.C. 2201 ........................................................................................................2
28 U.S.C. 2202 ........................................................................................................2
35 U.S.C. 101 ........................................................................................................17
35 U.S.C. 171 ........................................................................................................17
Rules and Regulations
33 C.F.R. 175.13 ...................................................................................................22
46 C.F.R. 160 ................................................................................................... 9, 22
Fed. R. Civ. P. 54(b) ........................................................................................... 2, 11
Fed. R. Evid.702 .............................................................................................. passim
xi

MPEP 1503.01 ......................................................................................................20


MPEP 1503.01(I) ........................................................................................... 13, 19
MPEP 1503.02(I) ..................................................................................................45
MPEP 1504.04(I.A) ........................................................................... 20, 21, 22, 26

xii

STATEMENT OF RELATED CASES


Pursuant to Federal Circuit Rule 47.5, Appellant states that there have been
no previous appeals in this matter and that there are no other related cases that may
be affected by the disposition of this appeal.

OMA-381387-9

JURISDICTIONAL STATEMENT
Appellant The Coleman Company, Inc. (Coleman) appeals from the order
of the District Court entered on March 18, 2014, in which the District Court
granted Colemans motion for entry and certification of final judgment pursuant to
Federal Rule of Civil Procedure 54(b). Coleman timely filed its Notice of Appeal
on April 8, 2015. (A1390.) The District Court had jurisdiction over the underlying
action pursuant to 28 U.S.C. 1331 and 1338(a) and the Federal Declaratory
Judgment Act, 28 U.S.C. 2201 and 2202. This Court has exclusive jurisdiction
over this appeal pursuant to 28 U.S.C. 1295(a).
STATEMENT OF ISSUES
I.

Whether the District Court erred as a matter of law in importing limitations


based on the commercial embodiment of the D714 Patent into the claimed
design of the D714 Patent, including improperly importing standards
applicable only to the commercial embodiment into the D714 Patent.

II.

Whether the district court erred as a matter of law by completely eliminating


individual elements from the scope of the D714 Patent in its claim
construction after incorrectly determining those individual elements were
functional.

III.

Whether the district court erred as a matter of law by applying the


multifactor functionality test and erred in its application of that test for
purposes of its claim construction of the D714 design patent.

IV.

Whether the district court erred in determining that the armbands, the
armband attachments, the shape of the armbands, the tapering of the
armbands, and the tapering of the side torso, as individual elements, are all
elements that serve a functional role in the D714 Patent.

V.

Whether the District Court abused its discretion in striking the expert
testimony of Peter Bressler, including his testimony regarding the issues of
functionality, obviousness, and infringement.

STATEMENT OF THE CASE


I.

FACTUAL BACKGROUND
A.

Coleman and the D714 Patent.

Defendant-Appellant Coleman manufactures, sells and distributes outdoor


sporting equipment, including personal flotation devices. (A77.) Coleman owns
all rights, title, and interest in U.S. Patent No. D623714 (the D714 Patent),
which is titled personal flotation device. (A77.)
The D714 Patent includes eight figures and states that the broken lines on
these figures are for illustrative purposes only and form no part of the claimed
design. (A67-A69.) Nowhere does the D714 Patent limit its scope to devices for
children, place limits on the size of the design of article of manufacture claimed,
claim materials used for the article of manufacture, or incorporate any standards or
other regulations into its claimed design. (A67-A69.) Rather, the D714 Patents
single claim is as follows:
The ornamental design for a personal flotation device, as shown and
described.
(A67.)

B.

Colemans Puddle Jumper Flotation Aid is Covered by


the D714 Patent: it is a Commercial Embodiment of the
Design Claimed in the D714 Patent.

Coleman sells a flotation aid called the Puddle Jumper, which is covered
by the D714 Patent. (A77.) The Puddle Jumper device has been offered and
sold in the United States since 2007. (A192.) The Puddle Jumper, which is a
commercial embodiment of the D714 claimed design, is certified by the
Underwriters Laboratory (UL) as a personal flotation device and, as such, is
USCG approved. (A21; A35.)
C.

Sport Dimensions Sale of the Body Glove 325 PFD.

Plaintiff-Appellee Sport Dimension, Inc. (Sport Dimension) is a sports


apparel company that develops, manufactures, sells and distributes water-sportsrelated equipment, including life jackets and other flotation aids. (A71-A72.)
Sport Dimension sells many of its products under the Body Glove brand, including
the BODY GLOVE Model 325 (the Accused Device) (A72.)
On August 9, 2013, Coleman, through its in-house patent attorney counsel,
sent Sport Dimension a letter explaining that the Accused Device infringed
Colemans D714 Patent, and requesting that Sport Dimension cease all
manufacturing, importing, distributing, selling and/or offering for sale in the
United States of the infringing Accused Device. (A72.) Sport Dimension and

Coleman then exchanged numerous correspondence over a four-month period


regarding Sport Dimensions infringement of the D714 Patent. (A72.)
II.

PROCEDURAL BACKGROUND
A.

Sport Dimension Files the Underlying Lawsuit.

On January 21, 2014, Sport Dimension filed the underlying lawsuit against
Coleman. (A70.) As relief, Sport Dimension requested a declaration that (1) its
Accused Device does not infringe Colemans D714 Patent; and (2) the D714
Patent is invalid because it is primarily functional. (A73-A74.)
B.

The Parties Initial Proposed Claim Constructions.

On April 14, 2014, the district court entered its scheduling order, which
provided that it would construe the claim of the D714 Patent and scheduled a
Markman hearing for November 17, 2014. (A50-A51.) The parties submitted
their proposed constructions for the claim of the D714 Patent. (A95-A100.) Sport
Dimension argued that the district court, in its claim construction analysis, should
factor out from the D714 Patent certain elements Sport Dimension claimed were
functional. (A196-204.) Specifically, Sport Dimension contended that the
armbands, armband attachments, armband tapering, the tapering of the side torso,
are all functional and not ornamental. (A204.) Sport Dimension also argued that
Coleman made certain disclaimers during prosecution of the D714 Patent that
limited the patents scope. (A204-A208.)
6

Coleman, on the other hand, argued that no element of the claimed device
was purely functional and that no disclaimer or surrender was made during
prosecution of the D714 Patent. (A126; A129-131.) Coleman urged the Court to
construe the D714 Patent as follows:
The ornamental design for a personal flotation device as shown in
Figs. 1-8. The broken line showing is for illustrative purposes only
and forms no part of the claimed design.
(A122.)
C.

The District Courts Initial Claim Construction Order.

On December 2, 2014, the district court issued its initial claim construction
order and (1) found that Coleman had not made any prosecution disclaimers; and
(2) elected to defer a decision as to the functionality issue until later in the case,
after the parties had sufficient opportunity to do discovery on the issue. (A375;
A387-A388; A391.) The district court scheduled a supplemental Markman hearing
to occur on January 26, 2015 to determine which elements, if any, should be
factored out of the D714 patent as purely functional. (A391-A392.)
D.

The District Courts Supplemental Claim Construction Order.

On February 9, 2015, after a supplemental Markman hearing, the district


court issued its supplemental claim construction order. (A21.) The district court
adopted the following claim construction proffered by Sport Dimension.

The ornamental design for a personal flotation device, as shown and


described in Figures 1-8, except the left and right armband, and the
side torso tapering, which are functional and not ornamental.
(A43) (emphasis added.)
1.

The District Court Imported the Title of the Patent and the
USCGs Regulations of Personal Flotation Devices Into its
Construction of the Claim of the D714 Patent.

In its claim construction, the district court found it necessary for its
functionality analysis to determine the nature of the article of manufacture.
(A33-A34.) Based on the title of the D714 Patent, the district court concluded the
function of the article of manufacture was a personal flotation device. (A34.)
Then, relying exclusively on the written opinion of Sport Dimensions
proffered expert witness, Ms. Susan Balistreri, the district court concluded that the
title was a term in the patent that required construction. (A34-A35.) The district
court also determined that personal flotation device, as a claim term, had a
particular meaning in the [personal flotation device] industry that necessarily
requires that the device have been approved for use under the appropriate
regulations. (A34.) The district court specifically found Ms. Balistreris
testimony . . . sufficient, for purposes of this claim construction . . ., to demonstrate
that the term personal flotation device incorporates certain requirements imposed
by federal regulations, governed by the USCG. (A35.)

The district court reasoned that because the federal regulations must be
secured by applying to the Underwriters Laboratory (UL) for certification, the
D714 Patent must be certifiable by the UL in order to constitute a personal
flotation device. (A35.) Accordingly, the district court concluded any
alternative design to the D714 patent must comply with the requirements specified
in 46 C.F.R. part 160. (A35.)
2.

As Part of its Claim Construction, the District Court Factored


Out the Elements it Determined Were Functional.

The district court concluded that all of the elements that Sport Dimension
challengedthe armbands, the armband attachments, the shape and tapering of the
armbands, and the tapered side torsowere functional rather than ornamental
elements. (A36-A42.) Relying on and quoting this Courts opinion in
Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010), the
district court concluded that as part of its claim construction, it must factor[]
out the functional aspects of the D714 patent design. (A31.) Based on this
understanding, the district court completely eliminated the armbands and side torso
tapering from the scope of the claimed design. (A43.)
E.

The District Court Strikes and Excludes the Entirety of the


Reports and Testimony of Colemans Proffered Expert.

Separately from the claim construction, on January 12, 2015, Sport


Dimension filed a motion to strike and exclude the testimony and reports of Mr.
9

Peter Bressler (Bressler). (A55.) Bressler had been retained by Coleman to


opine on issues related to functionality of elements of the claimed design for
claim construction, to infringement, and to the alleged invalidity of the D714
Patent. (A934-A961; A1081-A1116.)
Bressler is an industrial design professional with over forty-four (44) years
of industrial design experience who has been involved in over three thousand
(3,000) product design projects. (A937-A938; A964-A975.) These have included
product designs in a variety of industries, including buoys and buoyant devices
within the marine industry. (A937.) Bressler is also an associate professor in the
Integrated Product Design Program at the University of Pennsylvania, and has
spoken worldwide on product design issues. (A936.)
On January 29, 2015, the district court granted Sport Dimensions motion to
strike and exclude Bresslers testimony and report regarding construction of the
D714 Patent claim and whether any element of the claimed design was purely
functional even though the district court found that Bressler had substantial
experience in the field of industrial design. (A9; A12; A20.) Reasoning it was
bound by this Courts decision in Sundance, Inc. v. DeMonte Fabricating Ltd., 550
F.3d 1356, 1363 (Fed. Cir. 2008), the district court concluded that Bressler was not
qualified to testify because he had never designed a personal flotation device and
did not have any work experience with wearable buoyant devices. (A17-A18 n. 7.)
10

Later, on February 13, 2015, the district court excluded Bresslers testimony
on the topics of obviousness and infringement. (A44-A45.) The district court
reasoned that its previous determination that Mr. Bressler is not qualified in the
pertinent art [of personal flotation devices] necessarily precludes him from
testifying on the issues of obviousness and infringement as well. (A45.)
F.

The District Court Enters Judgment of Non-Infringement


and Certification of that Judgment as Final and Coleman
Files its Notice of Appeal.

On February 23, 2015, Coleman filed a motion seeking entry of judgment of


non-infringement and certification of that judgment as final pursuant to Fed. R.
Civ. P. 54(b) so that Coleman could appeal the district courts supplemental claim
construction and, separately, the orders striking the testimony of Bressler,
Colemans industrial design expert. (A1355.) On March 18, 2015, over Sport
Dimensions objection, the district court granted Colemans Rule 54(b) Motion and
dismissed Sport Dimensions remaining claims regarding the validity of D714
Patent as moot. (A8.) The district court has never addressed any issues regarding
Sport Dimensions other proffered defenses to infringement or the merits of its
invalidity defense. (A8.) Coleman timely filed its Notice of Appeal on April 8,
2015. (A1390-A1391.)

11

SUMMARY OF THE ARGUMENT


Central to this appeal is the district courts claim construction of U.S. Patent
No. 623714 (the D714 Patent), and more particularly the district courts
supplemental claim construction order addressed to whether any element of the
design claimed in the D714 Patent is functional. Four fundamental principles
governing claim construction of design patents are paramount to this appeal, and
the district court below violated each of these principles. Any one of these errors
requires complete reversal and entry of the following construction:
The ornamental design for a personal flotation device as shown
in Figs. 1-8. The broken line showing is for illustrative purposes
only and forms no part of the claim design.
First, a district court may not import limitations or requirements into the
claim from external sources such as the commercial embodiment of the claimed
design or standards relating to that commercial embodiment. See Berry Sterling
Corp. v. Pescor Plastics, 122 F.3d 1452, 1453 (Fed. Cir. 1997). Put simply, in
construing the claim and determining whether any element of the claimed design is
purely functional, the district courts analysis cannot involve or otherwise depend
upon a commercial embodiment of the claimed design or incorporate outside
standards or requirements applicable to that commercial embodiment. In violation
of Berry Sterling, the district court erroneously focused her claim construction
analysis on Colemans Puddle Jumper flotation aid, United States Coast Guard
12

(USCG) regulations and standards, as well as the Underwriters Laboratory


(UL) certification file applicable to that commercial device. The court imported
limitations for those extrinsic sources into the scope of the D714 Patent, allowing
those restrictions to dictate its inquiry regarding the alleged functionality of the
challenged elements. For this reason alone, the district courts claim construction
is legally erroneous and must be reversed.
Second, the title of a design patent cannot impact its claim scope. Manual of
Patent Examining Procedures (MPEP) 1503(I). The district court, in her claim
construction analysis, foisted limitations onto the D714 Patents claim, and based
her analysis of whether any element of that design was functional on that title
personal flotation device. Again, the district courts analysis was driven by
USCG regulations and standards applicable to any commercially available flotation
device advertised as a personal flotation device. This legal error renders the
district courts claim construction fatally flawed.
Third, even if a district court identifies a functional element of a claimed
design, the court must not eliminate that element from the scope of the claim
entirely. See Apple, Inc. v. Samsung Electronics America, Inc., Nos. 2014-1335,
2015-1029, 2015 WL 2343543, *9-10 (Fed. Cir. May 18, 2015) (Apple). Indeed,
it is error as a matter of law to eliminate elements from the claim scope as it is the
ornamental aspects of the design that are to be captured by the district court in its
13

construction of the design patent claim at issue. Moreover, [i]n construing a


design patent claim, the scope of the claimed design encompasses its visual
appearance as a whole, and in particular the visual impression it creates.
Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.2d 1370, 1376 (Fed. Cir.
2002) (quoting Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir.
1992)). Here, the district court compounded the errors of its claim construction by
completely eliminating the armbands and tapered side torso from the scope of the
D714 Patent in violation of Apple.
Fourth, the district court failed to recognize the distinction between
functionality for purposes of challenging the validity of a design patent and
determining in claim construction whether any element of the claimed design is
purely functional. This led the district court to improperly lower the standard for
finding any element purely functional and to mistakenly apply a multifactor
functionality test that simply has no place in claim construction.
Even if the multifactor functionality test could properly be used in
evaluating whether any element of a claimed design is purely functional, the
district court erred when determining various elements of the claim were
functional and thus purportedly outside the scope of the D714 Patent. In relying
on evidence incompetent for claim construction, the district courts factual

14

findings that elements of the D714 Patents claim are functional are based on
an erroneous view of controlling law making them legally erroneous.
Further, the district court either ignored or otherwise discounted objective
evidence of alternative designs resulting in the clearly erroneous and unsupportable
findings that the armbands, armband attachments, shape and tapering of the
armbands, and the tapered side torso from the claimed design were all functional
rather than ornamental. The legally relevant evidence of record solely leads to
conclusion that none of these elements of the D714 patents design is purely
functional.
Finally the district court abused its discretion by striking and excluding the
testimony of Mr. Peter Bressler (Bressler), an industrial design consultant with
over four decades of relevant industrial design experience, on the issues of
functionality, infringement, and obviousness. The district court reasoned that
Bressler was unqualified to testify under this Circuits precedent because he did
not have experience designing personal flotation devices. The courts definition
of the relevant art for purposes of opining on whether any element of the claimed
design was purely functional was based solely on the title of the D714 Patent
personal flotation device. This was reversible error because it was based on a
misinterpretation of this Courts precedent and because Bressler was eminently

15

qualified to testify on the issues, having direct design experience with buoyant
devices and other products within the marine and soft goods industries.
ARGUMENT
I.

THE DISTRICT COURT ERRED AS A MATTER OF LAW


BECAUSE IT IMPROPERLY IMPORTED LIMITATIONS INTO ITS
CONSTRUCTION OF THE CLAIMED DESIGN.
The district court erred in its application of the settled principles of design

patent claim construction in its February 9, 2015 claim construction order. First, in
construing the claimed design of the D714 Patent, the district court improperly
imported extrinsic limitations from a commercial embodiment of the D714 Patent
to limit the scope of the claimed design. The district court further erred as a matter
of law by incorporating the title of the D714 patent and then relying on that title to
limit the claimed design. Each of these legal errors warrants reversal of the district
courts claim construction.
A.

Standard of Review for Claim Construction.

This Court reviews the district courts claim construction de novo. Shire
Dev. LLC v. Watson Pharm., Inc., No. 2013-1409, 2015 WL 3483245, at *4 (Fed.
Cir. 2015) (citing Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 839, 84142 (2015)). Whether the district court applied the proper legal standard when
construing a claim is also reviewed de novo. Pharmacia & Upjohn Co. v. Mylan
Pharm., Inc., 182 F.3d 1356, 1358-59 (Fed. Cir. 1999).
16

This standard of review also applies to Sections II and III(A) below.


B.

General Principles of Design Patent Claim Construction.

Design patents, unlike utility patents, do not include a detailed written


description or claims made up of words. Design patents, on the other hand, consist
of a single claim which is bound by its drawings or figures the patent does not
use words to define the scope of its claim. A design patent is typically claimed as
shown in the drawings. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665,
679 (Fed. Cir. 2008) (en banc).
Construing the written claims of a utility patent is a way to simplify what is
often technical, terse language in order to help a trier of fact understand the scope
of the patents claims. Terlep v. Brinkmann Corp., 418 F.3d 1379 (Fed. Cir. 2005).
However, design patents fundamentally differ from utility patents. A utility patent
protects the way an article is used and works (35 U.S.C. 101), while a design
patent protects the way an article looks (35 U.S.C. 171). As such, a design patent
is better represented by an illustration than it could be by any description.
Egyptian Goddess, 543 F.3d at 679, citing Dobson v. Dornan, 118 U.S. 10, 14, 6
S.Ct. 946, 30 L.Ed 63 (1886). In construing a design patent claim, the scope of
the claimed design encompasses its visual appearance as a whole, and in
particular the visual impression it creates. Contessa Food Products, Inc., 282

17

F.3d at 1376 (quoting Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820
(Fed. Cir. 1992).
C.

Rules of Construction To Address Contentions That An Element


Of The Claimed Design Is Functional.

When at issue, the district court will need to determine whether any feature
of the claimed design is ornamental or purely functional. Egyptian Goddess, 543
F.3d at 680. The test for determining whether any element of a claimed design is
purely functional is whether the design or look of that element is dictated by the
functionality of the item. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117,
1123 (Fed. Cir. 1993). That is, if other designs could produce the same or similar
functional capabilities, the design of the article in question is likely ornamental
and not purely functional. Id. (emphasis added). In short, to be governed solely
by function, it must be shown that the claimed design is the only possible form (or
look) of that article or its elements that could perform its function. Seiko Epson
Corp. v. Nu-Kote Intl, Inc., 190 F.3d 1360, 1368 (Fed. Cir. 1999).
Important here is this Courts requirement that the focus of claim
construction, even when determining whether any element of the claimed design is
purely functional, must be on the claim of the design patent itself. First, the district
court must not look to commercial embodiments of the claimed design. See Berry
Sterling, 122 F.3d at 1455. A construction relying upon an actual commercial
product as opposed to the patent itself is strictly forbidden. Id.
18

Second, the district court cannot improperly import limitations or


requirements into its construction of the subject claim, including design
requirements or regulations for the commercial embodiment of the subject design.
Id. Rather, the construction should address the article in the claimed design
which means, realistically, the article and its configuration as shown in the
drawings. Id.
Third, the title of a design patent does not define or limit its scope. MPEP
1503.01(I). Foisting limitations or requirements into a claimed design based
upon its title, particularly in evaluating whether any element of the design is purely
functional, would violate this basic tenant of design patent claim construction.
D.

Settled Law Prohibits a District Court From Considering the Title


of the Design Patent or Commercial Embodiments When
Construing Claim Scope.

The district court erred in its claim construction as a matter of law because it
improperly imported limitations from a commercial embodiment into the D714
Patents claimed design, in violation of this Circuits claim construction rules.
Berry Sterling, 122 F.3d at 1452. In doing so, the district court also improperly
imported certain regulations and standards applicable to that commercial
embodiment into the scope of the claimed design. Compounding this error, the
district court also relied on the title of the D714 Patent to further limit its scope.

19

Because the district court erroneously applied this Courts long-settled principles
of design patent claim construction, its construction must be reversed.
Of paramount importance for district courts in determining the scope of a
design patent is the requirement that the focus of claim construction must be on the
claim of the design patent itself. Berry Sterling, 122 F.3d at 1454. First, it is
axiomatic that the title of a design patent does not define the scope of the claim.
See MPEP 1504.04, subsection I.A (emphasis added). While a design patent
must have a title, the purpose of the title is solely to identify the article in which
the design is embodied by the name generally known and used by the public. Id.
Thus, in determining claim scope, a district court may not impose limitations based
on the design patents title.1
Second, a district court must not and cannot look to commercial
embodiments of the claimed design in determining claim scope. See Berry
Sterling, 122 F.3d at 1455. In claim construction, a district court relying upon an
actual commercial product, as opposed to the patent itself, is strictly forbidden.
Berry Sterling, 122 F.3d at 1455. A district court simply cannot incorporate
limitations such as manufacturing requirements for the commercial embodiment or
standards applicable to a commercial embodiment into its construction of the
subject claim. Id. at 1455.

The title is then required to be used in the patents claim. MPEP 1503.01.
20

E.

The District Court Erred As a Matter of Law By Importing the


D714s Title and Standards Applicable Only to the Commercial
Embodiment into its Construction of the Claim of the D714
Patent.

Although the district court stated that Coleman is correct to note that
external standards applicable to the commercial embodiment of a patent may not
impose limitations on the scope of that patent, it failed to follow these settled
principles of design patent claim construction. (A32-A43.) Rather, in straining to
import the title, along with characteristics of Colemans commercial embodiment
of the D714 Patent, into the scope of the claim, the district court improperly
determined that the D714 Patents title was a term to be construed and that the
title required that any device must be certifiable by the UL in order to comply
with the applicable federal [USCG] regulations. (A35.) Importing such
limitations is impermissible and directly contrary to established law. Berry
Sterling, 122 F.3d at 1452; MPEP 1504.04, subsection I.A.
1.

Errors Relating to the Title of the D714 Patent.

The sole support cited by the district court that the scope of the D714 Patent
requires certification by UL and must also be USCG approved is the testimony
of Sport Dimensions expert, Balistreri. (A35.) Balistreri opined that the design
claimed in the D714 Patent is limited and controlled by an obligation that the
design be USCG-approved because the title of the design is personal flotation
device. (A216.) Personal flotation device is, according to Balistreri, defined by
21

the US Coast Guard in 33 C.F.R. 175.13, as a commercial flotation device that


is approved by the Commandant under 46 C.F.R. part 160. (A35.)
Based on the title of the D714 Patent, and Balistreris explanation of that
title, the district court determined that for any device or drawing of a flotation aid
to provide an alternative look or configuration for any element of the D714
Patents claimed design, that device itself must also be a USCG-approved device.
(A35; A221-A223.) The district court reached this conclusion by confusing claim
construction in a utility patent context with claim construction in a design patent
context. (A34-35.) In sole reliance on utility patent jurisprudence, the district
court determined that the title of the D714 Patent was a term that needed to be
understood in the pertinent field. (A34.) The district courts reliance was
misplaced.
Again, it is settled law that the title of a design patent is not a term that
may limit the patents scope of the claimed design. MPEP 1504.04, subsection
I.A. Thus, it was legal error for the district to construe the title at all, let alone to
consider a term in the patent that could be used to limit the scope of the D714
Patent. The end result of this fundamental misapplication of law was a claim
construction based solely on the USCG regulations relating to commercial use of
the term personal flotation device and not on the D714 Patent itself. (A32A43.)
22

2.

Errors Relating to the District Courts Violation of the Berry


Sterling Standards.

Berry Sterling is dispositive here. In Berry Sterling, the plaintiff obtained a


design patent based on a design it created for an industry-wide design contest
solicited by Coca Cola. Berry Sterling, 122 F.3d at 1453. The contest was to
design a to-go cup that had to meet certain criteria and standards in order to be
considered in the contest; these criteria included having a 32-ounce capacity, a
spill-proof lid, and the ability to fit in car cup holders and under soda fountain
dispensers. Id. In its claim construction, the district court imported the design
contest requirement limitations into the patents claim. Id. at 1455. This Court
reversed, holding :
There are, inter alia, no height or volume limitations, no requirements
that the container fit in the majority of car cup holders, and no
stability limitations imposed by the claim. The features forming the
basis for the functionality analysis promulgated by the court are found
in the commercial embodiment of the underlying article of
manufacture. It should address the article in the claimed design,
which means, realistically, the article and its configuration as shown
in the drawings. Thus, we vacate and remand because the court
cannot use the limitations of the commercial embodiment of the
underlying article of manufacture to impose limitations on the scope
of the design patent.
Id. (emphasis added). In short, a district courts inquiry regarding purely
functional elements for purposes of claim construction cannot involve or
otherwise depend on a commercial embodiment of the claimed design. Id. Nor
may a district court incorporate outside standards or manufacturing requirements
23

relevant to a commercial embodiment into the claim scope. Id. The district court
here did exactly what is prohibited by Berry Sterling.
As set forth above, the district court cannot look to external sources such as
commercial embodiments or standards satisfied (or not) by a commercial
embodiment to import limitations or requirements into the claims scope, even for
determining whether any element of the claimed design is purely functional.
Berry Sterling, 122 F.3d at 1453. By requiring alternative design elements (or
their ultimate configurations) to be independently certifiable by UL to meet USCG
standards and approval, the district court has improperly limited the scope of the
D714 Patent claim to the Puddle Jumper commercial device and the UL
requirements for its manufacture. For this reason alone, the district court erred as a
matter of law in its construction.
The district courts construction was predicated solely on the testimony and
opinions of Balistreri, Sport Dimensions proffered expert on the issue of
functionality. Although Balistreri admits that the D714 Patent does not specify,
identify, or refer to UL standards for flotation devices, USCG-approval, device
size, material used, or other performance limitations, she nonetheless improperly
bases all of her opinions of no alternatives on these very extrinsic requirements.
(A473-474.)

24

As Balistreri
admits, the UL file she relies upon is unique to Coleman and guides the
manufacture of Colemans own Puddle Jumper device it is not a requirement or
limitation on the manufacture of any flotation device other than the Puddle
Jumper. (A482-A483.) The UL file is not related to, or referenced in, the
D714 Patent. (A67-69.) By accepting Balistreris opinions and importing the
UL file and other standards applicable only to commercial flotation aids into the
scope of the D714 Patent, the district court violated this Circuits well-worn rules
of claim construction.
While the district court stated that it agreed with Coleman that, as a matter of
law, the title of the patent cannot govern or impact the scope of the claim, the
district court nonetheless imported the title of the device, personal flotation
device, as a limitation to the scope of the patents claim. (A34-A35.) After
injecting the D714 Patents title into the construction of the claim, the district
court relied on this limitation to conclude that the design, as a personal flotation
device, must require USCG approval. (A35.) As set forth above, it is an error of
law to import such a limitation, particularly where, as here, the D714 Patent does
not require or even mention USCG approval, UL certification, or any other
regulatory approval or standard. (A67-A69.) Further, as set forth above, the law
of design patent claim construction is unequivocal that the title of a patent cannot
25

limit its scope. MPEP 1504.04, subsection I.A. For each of these reasons, the
district courts claim construction is wrong as a matter of law and it must be
reversed.
II.

THE DISTRICT COURT ERRED AS A MATTER OF LAW


BECAUSE IT ELIMINATED ENTIRE ELEMENTS OF THE D714
PATENT.
In addition to the above error of law, the district court committed reversible

legal error in claim construction by eliminating entire elements of the design


claimed in the D714 Patent. (A43.) As recently set forth by this Court, it is
incorrect as a matter of law to exclude entire elements from the claim scope of a
claimed design. See Apple, 2015 WL 2343543, at *9-10. Because it exclude[]
components in their entirety from the design patent claim scope, the district
courts construction is legally erroneous on its face in light of this Courts settled,
and now-clarified, construction rules. For this separate reason, the district courts
claim construction should be reversed.
A.

This Circuits Clarification Regarding the Impropriety of


Excluding Elements of a Claimed Design From the Claim Scope.

This Court recently reiterated its principles of claim construction and gave
unequivocal clarification of its precedent in relation to claim construction for
design patents. Apple, 2015 WL 2343543 at *9-10. There, the Appellant,
Samsung, argued that the district court erred in its claim construction of several
design patents because the district court should have excluded elements [of the
26

claimed designs] that are dictated by their functional purpose. Id. at *9.
According to Samsung, those elements of the subject design patents should be
ignored in their entirety from the design patent claim scope. Id. at 20.
Samsungs arguments depended in large part on this Courts language in
Richardson, 597 F.3d at 1293.
Samsungs arguments were rejected outright. This Court stated
unequivocally that case law does not support Samsungs position and reiterated
that a claim construction should include the ornamental aspects of a claimed
design. Id. The Court further held that Richardson did not establish a rule to
eliminate entire elements from the claim scope as Samsung argued. Id. Thus, it
is now clear that, while a district court may identify purely functional elements
of a design patent, for purposes of design patent claim construction, its charge is
not to eliminate those elements entirely from the claim construction. Apple, 2015
WL 2343543, at *9-10.
B.

The District Court Erroneously Eliminated Entire Elements of the


D714 Patent.

The district courts claim construction here is legally erroneous on its face
and is contrary to this Courts holding in Apple. As set forth below none of the
individual elements of the D714 Patent are purely functional. However, to the
extent the district court ultimately determined an element was purely functional,
the district court should have identified the ornamental aspects of the D714 Patent
27

in its claim construction. (A96.) Instead, the district court did exactly what
Samsung suggested and what the Apple Court rejectedits claim construction
completely eliminated elements of the D714 Patents design that it deemed
functional.2 (A43.) The district court even articulated the question before it
incorrectly, stating that the only issue presented was whether the Court should
filter out any functional elements of the D714 patent in its claim construction.
(A30, emphasis added.) After misstating, and then misapplying, the law, the
district courts final claim construction was:
The ornamental design for a personal flotation device, as shown and
described in Figures 1-8, except the left and right armband, and the
side torso tapering, which are functional and not ornamental.
(A43, emphasis added.) It is clear that the district court did not identify the
ornamental aspects of the design, as Apple instructs, but rather eliminated the
principal components of the claimed design that it deemed functional. The
district court committed an error of law in doing so and its claim construction order
must be reversed.

Coleman does not concede that any of these elements are, indeed, purely
functional. As required by Egyptian Goddess, the objective evidence before the
district court shows that none of the elements of the D714 Patent are purely
functional or that their design is dictated by function. As set forth fully above in
section I, and below in sections III and IV, the district court also erred not only as a
matter of law in relying on incompetent evidence as a matter of law, but committed
clear error in its factual determinations regarding functionality.
28

III.

THE DISTRICT COURT ERRED AS A MATTER OF LAW


BECAUSE IT FAILED TO RECOGNIZE THE DISTINCTION
BETWEEN FUNCTIONALITY FOR PURPOSES OF PATENT
VALIDITY AND FUNCTIONALITY FOR PURPOSES OF CLAIM
CONSTRUCTION.
The district court committed another separate error of law in utilizing a

multifactor functionality test, which this Court has only referred to when
discussing functionality for purposes of determining the validity of a patent, not in
the claim construction context. Because the district misapplied this Circuits
settled rules of design patent claim construction, as set forth fully in Section I
above, its claim construction should be reversed.
A.

The Multifactor Functionality Test Is Not Applicable to Design


Patent Claim Construction.

The claim construction below was fundamentally flawed because the district
court borrowed a multifactor functionality test from cases analyzing
functionality for purposes of an invalidity analysis. This was improper because
the functionality analyses for purposes of whether any element of the claimed
design is purely functional for claim construction and invalidity are distinct and
differ significantly in several key respects. See Apple, 2015 WL 2343543, at *9
(recognizing that a rule in the design patent validity context was not applicable to
claim construction).

29

In the invalidity context, functionality is an affirmative defense to a claim


of infringement. See L.A. Gear, Inc., 988 F.2d at 1123. To succeed in proving that
a patented design is invalid, the alleged infringer must prove by clear and
convincing evidence that the design at issue, as a whole, is primarily functional,
rather than primarily ornamental. High Point Design LLC v. Buyers Direct,
Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013). When performing this assessment, a
court should view the claimed design in its entirety, for the ultimate question is
not the functional or decorative aspect of each separate feature, but the overall
appearance of the article. Id. (quoting Avia Group Intern., Inc. v. L.A. Gear Cal.,
Inc., 853 F.2d 1557, 1564 (Fed. Cir. 1988).)
Unlike in the patent invalidity context, functionality for purposes of claim
construction is not an affirmative defense. More fundamentally, the
functionality considerations for purposes of claim construction are distinct from
those of patent validity. Instead of deciding whether the entirety of the design is
primarily functional, the court is deciding, as a matter of law, whether
challenged elements of the design are purely functional. Egyptian Goddess, 543
F.3d at 681 (emphasis added).

30

The district court failed to fully recognize the distinction between invalidity
and claim construction functionality, 3 which led it to apply an improper test.
Relying on PHG Techs., LLC v. St. John Cos., 469 F.3d 1361, 1366 (Fed. Cir.
2006), the district court applied the following list of considerations (the
multifactor functionality test) to determine whether the challenged elements
were functional:
(1) whether the protected design represents the best design; (2)
whether alternative designs would adversely affect the utility of the
specified article; (3) whether there are any concomitant utility patents;
(4) whether the advertising touts particular features of the design as
having specific utility; (5) whether there are any elements in the
design or an overall appearance clearly not dictated by function.
(A32.)
The district court failed to recognize, however, that this Courts discussion
of the multifactor functionality test in PHG occurred in the context of determining
whether a design patent is invalid. See PHG, 469 F.3d at 1361-62. Indeed, this
Court explained in PHG that the multifactor functionality test may help answer the
whether the patented design as a wholeits overall appearancewas dictated by

Relying on High Point Design LLC, 730 F.3d at 1315, the district court
minimized the significance of the purely functional language, stating the proper
standard was whether the claimed design was dictated by the utilitarian purpose of
the article. (A31, n.3.) The district courts reliance on High Point Design was
misplaced, however, because the discussion of the functionality standard in High
Point Design occurred in the context of determining the validity of the patent. See
id.
31

functional considerations. (quoting Berry Sterling, 122 F.3d at 1455 (internal


quotation marks omitted)); accord High Point Design, 730 F.3d at 1315-16.
Nowhere in PHG did this Court suggest the multifactor functionality test should be
used in claim construction to determine whether specific elements of a claimed
design are purely functional, and it was an error of law for the district court to
apply it in this case.
B.

The District Courts Application of the Multifactor Functionality


Test Was Clearly Erroneous.

Putting aside the legal error of using the multifactor functionality test in a
claim construction, the district courts application of the test was also flawed in
several respects. The district court expressly discussed only three of the five
functionality factors: (1) whether the protected design represents the best design;
(2) whether there are any concomitant utility patents; and (3) whether the
advertising touts particular features of the design as having specific utility. (A42A43.) As demonstrated below, none of these factors actually support a finding
that the challenged elements were purely functional.
1.

Standard of Review for Factual Determinations in Claim


Construction.

Subsidiary factual determinations upon which a claim construction relies are


generally reviewed for clear error. Shire Dev. LLC v. Watson Pharm., Inc., 2015
WL 348325, at *8. This Court does not, however, apply the clear error standard
32

or otherwise defer to the district court merely because the district court hears or
receives extrinsic evidence. Shire Dev. LLC v. Watson Pharm., Inc., 2015 WL
348325, at *8.
Moreover, [u]nder the clear error standard of review, a finding is clearly
erroneous, even though there is some supporting evidence in the record, when the
reviewing court, based on the entire record, is left with definite and firm
conviction that a mistake has been committed. Hendler v. United States, 175
F.3d 1374, 1378 (Fed. Cir. 1999) (citing United States v. U.S. Gypsum Co., 333
U.S. 364, 395 (1948)); accord Flex-Rest, LLC v. Steelcase, Inc., 455 F.3d 1351,
1357 (Fed. Cir. 2006).
This Court may set aside factual findings based on an erroneous view of the
law. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1569 n.12 (Fed. Cir.
1987). In fact, when a district court ignores relevant evidence or relies on legally
irrelevant evidence, and those errors permeate the district courts factual finding,
an appellate court may review the issue de novo based on the entirety of the record.
See Elvis Presley Ents., Inc. v. Capece, 141 F.3d 188, 200 (5th Cir. 1998)
(reviewing de novo a district courts factual finding regarding likelihood of
confusion for trademark infringement because, throughout its analysis, the
district court both ignored relevant evidence and relied on legally irrelevant
evidence).
33

2.

The District Court Erred in Determining that the Alternative


Designs in Evidence Support a Conclusion that the D714
Patents Features Are the Best Design and Therefore Purely
Functional.

The district court found that the alternative designs in evidence suggest that
the D714 Patents [tapered armbands and sides] represent the best design.
(A42.) Specifically, the district court reasoned that because some of the
proposed alternative designs included tapered armbands and tapered sides, the
inclusion of such features necessarily constitute the best representation of the
design. (A42.) The district court concluded this supported a finding that
elements were functional rather than ornamental. (A42.)
The premise underlying the district courts rationale is fundamentally
flawed. Indeed, the district courts finding regarding best design depended
entirely on the use of preferred material. (A42.) It is black letter law that the
internal construction, such as the material used in a commercial embodiment,
cannot define the scope of a design patent. MPEP 1503.02(I). Moreover, the
D714 Patent does not claim material used for the claimed design. (A67-69.) In
short, none of the evidence before the district court showed that any of the
elements were, in fact, the best design. This Court should give no deference to the
district courts conclusion regarding the best design factor because it was
dependent on a misapplication of the law. See Panduit Corp., 810 F.2d at 1569

34

n.12 (explaining that findings based on erroneous view of the law may be set
aside on that basis alone).
3.

Colemans Concomitant Utility Patent Application Shows


There Were Alternative Designs for the Challenged Elements
that Would Not Impact the Utility of the Design.

Regarding factor three (concomitant utility patents) of the article of


manufacture, the district court reasoned that Colemans application for a utility
patent claiming several of the features in question suggests that these features are
functional. (A42.) Even a cursory review of Colemans application for a utility
patent (Publication No. US2008/0160849 A1), however, shows that there were
alternative designs for the armbands, armband attachments, and side torso that
would accomplish the same functional purposes and not impact the utility of the
flotation device. The subject utility patent application expressly stated, for
example, that [i]t is understood that the torso flotation pad can utilize various
shapes and closure systems for more or less body coverage and that the
armband flotation assemblies can be construed with alternative materials and
shapes of buoyant materials. (A831, emphasis added.) Thus, the concomitant
utility patent factor actually shows that the shape and look of these elements could
be changed without changing the utility or usefulness of the flotation device in
question. Moreover, the district court did not identify any element of the D714
Patents design that was separately sought to be claimed in the subject application.
35

error in deciding the advertising factor supported a finding of functionality. See


Panduit Corp., 810 F.2d at 1569 n.12. On the whole, the district courts
application of the multifactor functionality test was legal error that this Court
should reverse.
IV.

THE DISTRICT COURT CLEARLY ERRED IN DETERMINING


THAT INDIVIDUAL ELEMENTS OF THE D714 PATENT ARE
FUNCTIONAL.
The district court committed additional error in its factual findings when

determining various elements of the claim were functional, and thus purportedly
outside the scope of the D714 Patent. Compounding the district courts errors was
its reliance on the standards applicable only to the commercial embodiment of the
D714 Patent.
Further, the district court either ignored altogether or otherwise discounted
objective evidence of alternative designs resulting in the clearly erroneous and
unsupportable findings that the armbands, armband attachments, shape and
tapering of the armbands, and the tapered side torso from the claimed design were
all functional rather than ornamental. (A37-42.) The legally relevant evidence
of record demonstrates that none of these elements of the D714 patents design is
purely functional. The district courts refusal to consider that evidence
constituted error. As stated in section III(B), while this Court reviews the district

37

courts fact findings for clear error, findings based on an erroneous view of the law
may be set aside on that basis alone. Panduit, 810 F.2d at 1659 n.12.
A.

The District Courts Factual Findings Were Based On an Error


of Law and Therefore Constitute Error.

The district court erred as a matter of law by misapplying settled precedent


regarding design patent claim construction to the evidence presented. As discussed
above, the district courts factual findings regarding the functionality of the
challenged elements were predicated on the faulty premise that it was permissible
to import limitations from the commercial embodiment and title of the D714
Patent. This was an error of law, see supra, Section I, because the court cannot use
the limitations of the commercial embodiment of the underlying article of
manufacture to impose limitations on the scope of the design patent. Berry
Sterling, 122 F.3d at 1455. As such, this Court owes no deference to the district
courts fact findings regarding functionality. Panduit Corp., 810 F.2d at 1569
n.12 ([F]indings based on erroneous view of the law may be set aside on that
basis alone.). The district courts claim construction order should be reversed for
this separate reason.
B.

The District Court Erred in Finding that Some of the Individual


Elements of the D714 Patent Are Purely Functional.

The district court erroneously determined that the armbands, the armband
attachments, the shape and tapering of the armbands, and the tapered side torso in

38

the D714 Patent were all functional. (A37-41.) The district courts
determinations rested almost entirely on Sport Dimensions proffered expert,
Balistreri. As a result, the district court improperly refused to consider any of the
alternative designs in evidence. As set forth above, those opinions were
themselves predicated on an error of law, the erroneous limitations from the
commercial embodimentthe Puddle Jumper device, its UL file, USCG
approval, and suggestions that the claimed design would not meet those standards.
(A37-41; A438.) Thus, the district courts reliance on those flawed opinions was
erroneous and the claim construction order must be reversed.
1.

The Armbands.

First, the district court failed to give effect to the settled principle that a
district court must not focus on an individual element, but on the look of the device
as a whole in order to determine whether the patented design contains the only
form that the element can take for the claimed device to still perform its intended
function. See Seiko Epson Corp., 190 F.3d at 1368. The district court committed
error in ignoring the evidence before it that the armbands elements may take on a
number of looks and configurations and still allow the device to accomplish its
intended use: to provide buoyancy to a wearer.
The district court based its entire opinion on a single statement by Balistreri,
that

, which would not


39

exist without the armbands. (A38; A487.) However, the district court ignored
Balistreris explanation of her use of the term

, which was solely

about stability. (A487.) Notably, where stability is not explicitly claimed in


the design and is instead related only to the commercial embodiment, it cannot be a
limitation on the scope of the design patent. Berry Sterling, 122 F.3d at 1455.
Again, this opinion, and the district courts adoption of it for its functionality
determination, rested entirely on the commercial embodiment of the D714 Patent,
in particular on the Puddle Jumper products UL file. (A438.)
The district courts consideration of the

, which is just

another name for stability, is misplaced, as these characteristics have nothing to


with the shape or look of the armband elements. Like buoyancy, shape or look
does not dictate stability, which is a function of the mere existence of the
armbands with buoyant material in them. There was simply no evidence before the
district court, aside from the commercial embodiment of the D714 Patent, that the
armband elements must look exactly as shown in the D714 Patent to provide
buoyancy or stability. As such, a claim construction based in any way on
stability, or outrigger effect is incorrect as a matter of law and should be
reversed.

40

2.

The Armband Attachments.

As with the armbands themselves, the district court also erred in determining
that the armband attachment elements claimed in the D714 Patent were
functional and must look as shown in the D714 Patent. (A38-40.) The district
court ignored the objective evidence of record which showed that multiple looks
and appearances are available to designers of flotation aids when creating armband
attachment elements. As such, these elements are not purely functional, as the
district court erroneously determined.
The district courts opinion again rests entirely on the commercial
embodiment and the fact that the commercial embodiment must comply[] with
USCG regulations. (A39.) In its first point of error, the district court ignored the
testimony from the inventor of the D714 Patent, who testified that there are
infinite ways in which the armbands could be attached to the torso pad. (A420.)
The district court exacerbated the effect of its error by then rejecting two of the
alternative looks for armband attachment elements because of allegations that the
two devices could not be USCG-approved. (A39-40.)
When the improper limitations of the commercial embodiment are excluded,
it is undisputed that there are multiple alternative looks for armband attachment
elements. (A36; A289-A298; A404-A407; A410-A411.) In the Kierner patent, the

41

armbands are shown integral with the torso, and in the Wessman patent, the
armbands are attached by strapping.

Kierner

Wessman

Regardless of Balistreris opinions, the district court also ignored the fact
that Sport Dimensions own expert on obviousness issues, Mr. Wayne Walters,
concluded that the ordinary designer would look to these very patents and their
constituent elements to design a flotation device. (A574-A575; A577-A578.)
Further compounding the error was the district courts failure to even
consider two additional alternativesthe Aqua Tot and the Tadpool devices
pictured belowbecause those devices did not exist at the time that the D714
Patent was invented. (A40.)

42

Aqua Tot

Tadpool

As the district courts order makes clear, there is no legal authority to


support this finding. (Id.) The only citation provided by the district court was an
unreported district court decision relating to an invalidity analysis. (A36). That
case is of no assistance on the issue, however, because whether prior art rendered a
design patent invalid has no bearing on a functionality analysis for purposes of
claim construction. Smith v. M&B Mfg, No. C 89 0293, 1990 WL 11112, *1-2.
The district courts refusal to consider these additional alternatives therefore also
constituted error as it was based entirely on the misapplication of the law regarding
invalidity of a patent, and not on the settled claim construction principles set forth
above. (A40.)
There was simply no competent evidence before the district court supporting
any suggestion that the armband attachment elements must be shown exactly as
43

claimed, as all of the evidence depended on the commercial embodiment. In fact,


the objective evidence set forth above shows that there are many alternative looks
available to a designer for armband attachment elements. The district courts
failure to consider any of the four alternatives presented by Coleman was error
because the district court failed to follow the law. Panduit Corp., 810 F.2d at 1569
n.12. For these reasons, the district courts claim construction, which eliminated
the armbands attachments entirely, should be reversed.
3.

The Shape and Tapering of the Armbands.

The district court also erred in its claim construction when it determined that
both the shape and tapering of the armbands are functional. (A41.) The rationale
for the finding that these elements are also functional rests entirely on the district
courts conclusion that the shape and tapering of the armbands

(A41.) As with the district courts other legal errors, the district court
based these determinations on improper groundsthe commercial embodiment of
the D714 Patent, Colemans Puddle Jumper, and the material that may be used
in the commercial embodiment. (Id.) As noted above, the D714 Patent does not
claim materials used for the article of manufacture. (A67-69.)
As with the other elements addressed by the district court, the armband
shape claimed in the D714 Patent could take on a multiplicity of looks and still
44

perform its intended function, and thus was not purely functional. See Seiko
Epson Corp., 190 F.3d at 1368. The district court gave no effect to the evidence
before it, that the

In that there are multiple shapes, sizes, materials, and looks a designer could use
for the armbands, these elements are not purely functional. Critically, the
internal construction, such as the material used in a commercial embodiment,
does not define the scope of a design patent. MPEP 1503.02(I). Thus any
reliance on the material used in the production of a commercial embodiment is
misplaced, as it cannot be considered in claim construction to limit the scope of the
claimed design. All of these errors taken as a whole show that the district courts
determination of functionality with regard to the armband shape is yet another
error and its claim construction must therefore be reversed.
4.

The Tapered Side Torso.

The district court also wrongly determined that the tapered side torso was
functional based on its improper dismissal of alternative designs that do not
include the tapering shown in the D714 Patent. The district court dismissed these
alternative designs without any meaningful explanation, stating in conclusory
fashion that they do not provide suitable alternatives. The district court also
stated that the Kelso Patent was inadequate because it required coverage on the
45

chest, shoulders and upper arms. (A41-42.) In reaching this conclusion, the district
court relied solely on the testimony of Balistreri, who again based all of her
opinions on the commercial embodiment of the D714 Patent and not the patent
itself. As set forth above, this was error and the portion of the claim construction
order finding that the tapered side torso is functional should be reversed.
The district courts findings relating to the functionality of individual
elements of the D714 Patent are all legally erroneous as they are based on the
commercial embodiment of the D714 Patent. To the extent the district court made
any factual findings based on that error of law, each and every finding constitutes
error, as the evidence before the district court overwhelmingly showed that no
individual element was purely functional. The district courts refusal to even
consider alternatives is equally erroneous. As such, the district courts claim
construction must be reversed and the Court should construe the claim as requested
by Coleman:
The ornamental design for a personal flotation device as shown in
Figs. 1-8. The broken line showing is for illustrative purposes only
and forms no part of the claimed design.

V.

THE DISTRICT COURT ABUSED ITS DISCRETION BY


EXCLUDING TESTIMONY AND REPORTS BY PETER BRESSLER,
AN INDUSTRIAL DESIGN CONSULTANT WITH OVER FOUR
DECADES OF RELEVANT INDUSTRIAL DESIGN EXPERIENCE.
The district court abused its discretion when it excluded the testimony and

reports of Peter W. Bressler, an industrial design consultant and professor with


46

over four decades of relevant industrial design experience. As the district court
recently reiterated, Bressler wielded undeniable expertise in the field of industrial
design, and was qualified in the pertinent arts of flotation devices in general.
(A27; A1462.)
The district court improperly believed that, based on this Courts decision in
Sundance, Bressler needed experience designing personal flotation devices in
order to qualify him to testify in this case. (A15; A17-A18.) This was reversible
error because it was based on a misinterpretation of this Courts decision in
Sundance, and because Bressler was eminently qualified to testify in this case on
issues related to functionality, infringement, and obviousness under Fed. R. Evid.
702. See United States v. Finley, 301 F.3d 1000, 1007 (9th Cir. 2002) (A court
abuses its discretion when it bases its decision on an erroneous view of the law or a
clearly erroneous view of the facts.)
A.

Applicable Legal Standards for Review of the Districts Courts


Order Striking Colemans Expert.

This Court applies the law of regional circuit in which the case was decided
when reviewing district courts decision to exclude expert testimony. See Apple
Inc. v. Motorola, Inc., 757 F3d 1286, 1315 (Fed. Cir. 2014) (Motorola)
(applying the law of the regional circuit both to the questions of admissibility and
the standard of review); Siemens Med. Solutions USA, Inc. v. Saint-Gobain
Ceramics & Plastics, Inc., 637 F.3d 1269, 1284 (Fed. Cir. 2011) (We review a
47

district courts decision to exclude evidence under the law of the regional circuit).
Ninth Circuit law therefore governs review of the district courts decision to strike
and exclude the testimony and reports of Bressler.
1.

Standard of Review.

This Court reviews the district courts decision to exclude expert testimony
for an abuse of discretion. See Ollier v. Sweetwater Union High School Dist., 768
F.3d 843, 859 (9th Cir. 2014). A district court abuses its discretion if it rests its
decision on an erroneous legal standard or bases its decision on a clearly erroneous
finding of fact. Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1123 (9th Cir.
2014). To determine whether a district court abuses its discretion by applying an
erroneous legal standard, this Court reviews the district courts legal conclusions
de novo. Id.
2.

Fed. R. Evid. 702 is Broadly Phrased and Intended to


Embrace More Than a Narrow Definition of a Qualified
Expert.

The issue of qualifications is governed by Federal Rule of Evidence 702


which contemplates a broad conception of expert qualifications. Thomas v.
Newton Intern., Enters., 42 F.3d 1266, 1269 (9th Cir. 1994). [A]n expert may be
qualified either by knowledge, skill experience, training or education. Id.
(quoting Fed. R. Evid. 702); accord City of Pomona v. SMQ N. Am. Corp., 750
F.3d 1036, 1043 (9th Cir. 2014) (explaining that under Daubert v. Merrell Dow
48

Pharms. Inc., 509 U.S. 579 (1993), expert testimony is reliable if the knowledge
underlying it has a reliable basis in the knowledge and experience of the relevant
discipline). Moreover, the advisory committee notes emphasize that Rule 702 is
broadly phrased and intended to embrace more than a narrow definition of
qualified expert. Thomas, 42 F.3d at 1269 (emphasis added.)
The Daubert inquiry is a flexible one, where expert evidence should
ordinarily be attacked by cross examination, contrary evidence, and attention to
the burden of proof rather than outright exclusion. Primiano v. Cook, 598 F.3d
558, 564 (9th Cir. 2010). Under Daubert, the district judge is a gatekeeper, not a
fact finder. When an expert meets the threshold established by Rule 702 as
explained in Daubert, the expert may testify and the jury decides how much weight
to give that testimony. Id. (quoting United States v. Sandoval-Mendoza, 472 F.3d
645, 654 (9th Cir. 2006)). There are no special rules that apply to the
admissibility of expert testimony in patent cases. Sundance, 550 F.3d at 1360.
B.

Bressler Possesses Extensive Relevant Product Design Experience


Qualifying Him to Testify on Topics Related to Functionality,
Infringement, and Obviousness.

As the district court recently reiterated, Bressler undisputedly has extensive


industrial product design experience in various fields, including in the marine and
soft good consumer product categories. (A1462.) More particularly, during his
over forty-four (44) years of industrial design, Bressler has developed expertise
49

relating to how ordinary consumers see, recognize, and understand the industrial
design of products. (A937-A938.) Bressler is a Fellow Member of the Industrial
Designers Society of America (IDSA) and has been awarded his professions
highest award, the IDSA Personal Recognition Award. (A936-A937.)
Bressler has been involved in over three thousand (3,000) product design
and development projects. (A937.) These have included product designs in a
variety of industries, importantly including projects designing buoys and buoyant
devices within the marine industry. (A937.)
Bressler has spoken worldwide on product design issues, and in 2012 spoke
before the United States Patent and Trademark Office by invitation on design
patent issues. (A968.) He is currently an industrial design consultant and adjunct
associate professor in the Integrated Product Design Program at the University
Pennsylvania. (A964-A965.) This vast experience and expertise easily qualifies
Bressler to opine on issues of functionality for purposes of claim construction, and
on issues of obviousness and infringement. See generally Thomas, 42 F.3d at 1269
(Rule 702 is . . . intended to embrace more than a narrow definition of qualified
expert.)

50

C.

The District Court Erred as a Matter of Law When it Concluded


Bressler Was Unqualified to Testify under Federal Circuit
Precedent.

In Sundance, this Court held that a district court abused its discretion when it
permitted a patent attorney to testify as an expert on the issues of noninfringement and invalidity of a utility patent, which involved a retractable
segmented covering system for almost any structure or container, such as truck
trailers, swimming pools, porches, and patios. Sundance, Inc., 550 F.3d at 1358,
1361-62. This Court reasoned the purported expert was unqualified to testify on
technical matters because he had no experience whatsoever in the field of tarps
or covers. Id. at 1358.
Believing it was bound by Sundance and Hypotherm, Inc. v. Am. Torch Tip
Co., No. 05-cv-373-JD, 2009 WL 530064 (D.N.H. Feb. 27, 2009), the district court
looked solely to the title of the D714 Patent, and characterized the pertinent art for
claim construction issues in this design patent case as the design of personal
flotation devices. (A15; A17 n.7.) The district court then ultimately determined
that Bressler was unqualified to testify as an expert in this case because, although
he had experience designing buoyant devices, he did not have experience
designing a wearable buoyant device. (A17-A19.) The district courts
interpretation of Sundance was fatally flawed because (1) Sundance was a utility
patent case that has little relevance to the design patent case-at-bar; and even if

51

Sundance is applicable, (2) the district court here defined the pertinent art more
restrictively than this Court did in Sundance.
1.

Sundance Was a Utility Patent Case and Has Little Relevance


to this Design Patent Case.

First, the district courts reliance on Sundance and Hypertherm is belied by


the fact that the patents at issue in those cases were utility patents. See Sundance,
550 F.3d at 1358; Hypotherm, 2009 WL 530064, at *1. The distinction is
important: [d]esign patents are fundamentally different from utility patents
because utility patents afford protection for the mechanical structure and function
of an invention whereas design patent protection concerns the ornamental or
aesthetic features of the design. Wallace v. Ideavillage Prods. Corp. No. 06-cv5673-JAD, 2014 WL4637216, at *2 (D.N.J. Sept. 15, 2014) (quoting Carman
Indus. v. Wahl, 724 F.2d 932, 939 n.13 (Fed. Cir. 1983)). In order to qualify to
testify on issues of infringement and validity in a utility patent case, the witness
must have some expertise or skill related to how the claim of the patent at issue
works, whether as an apparatus, a method, or system. Thus, the fact that courts in
Sundance and Hypotherm required the witnesses to have some experience related
to the field of the utility patent has little application to this design patent case,
where the primary focus is on the aesthetic features of the design.
An industrial designer such as Bressler is uniquely qualified to testify
regarding the issues that arise in construing a design patent, regardless of whether
52

he has designed a personal flotation device per se. His expertise is in how the
articles of manufacture look and alternatives for these looks to distinguish the
goods in question. (A937-A938.) His experience includes designing products that
must float and as such understands concepts of buoyancy and in-water stability.
(A937.) This is proven by Sport Dimensions own expert on functionality, who
admitted that buoyancy has nothing to do with the shape of elements of an article
of manufacture intended to float. (A480; A495.) As noted above, buoyancy is
solely contributed to and controlled by the materials used for the article of
manufacture. (A41; A480; A495.)
2.

The District Court Characterized the Pertinent Art Too


Narrowly.

Second, the district courts treatment of Sundance was also flawed in that
this Court characterized the pertinent art more broadly in Sundance than the
district court did in the case-at-bar. In Sundance, the utility patent at issue, U.S.
5,026,109, was entitled segmented cover system, and was directed to retractable
segmented covering systems. Sundance, 550 F.3d at 1358. Notably though, the
Court did not define the pertinent art as narrowly as the title of the patent or the
specific invention at issue, instead characterizing the pertinent art simply as the
field of tarps or covers. Id. at 1362. Thus, contrary to the district courts belief,
Sundance should be read not to require classifying the pertinent art as the specific

53

invention that is subject of the patent, but instead as the general field in which the
patent exists.
Applying Sundances treatment of the pertinent art to this case, an
appropriate characterization is simply flotation devices. This is an area in which
Bressler was undisputed[ly] . . . qualified, as the district court has recently noted.
(A1462.) By resting its decision to exclude Bresslers testimony and report on an
erroneous legal standard based on its misinterpretation of Sundance the district
court abused its discretion. See Pom Wonderful LLC, 775 F.3d at 1123.
D.

Requiring Bressler to Have Experience Designing a Wearable


Buoyant Device Modified the Standard for Expert Admissibility.

An experts education and background need only be sufficiently related to


the subject matter at issue to allow him or her to testify. See, e.g., Intl Gamco,
Inc. v. Multimedia Games Inc., 732 F.Supp.2d 1082, 1088 (S.D. Cal. 2010)
(rejecting on Daubert grounds an argument that the experts experience was only
tangentially related to the relevant field); Nordock, Inc. v. Sys. Inc., 927 F. Supp.
2d 577, 586-87 (E.D.Wisc. 2013) (rejecting an argument that a proffered witness
was unqualified to testify in a design patent case on the issue of functionality
because he had no special knowledge or experience as to the product design or
[the subject of the patent]). Indeed, Rule 702 is broadly phrased and intended to
embrace more than a narrow definition of qualified expert. Thomas, 42 F.3d at
1269.
54

The district court refused to properly apply this standard as demonstrated by


its casual dismissal of Bresslers experience of designing buoys and buoyant
devices within the marine industry, as well as softgoods design projects. (A18A19.) Despite Bresslers experience directly related to the design of flotation
devices in general, the district court determined Bressler was not qualified to
testify as an expert on functionality for purposes of claim construction of the
subject design patent merely because he had never designed a wearable buoyant
device.4 (A17-A19.) This approach was unwarranted and represents an error of
law because it inappropriately carv[ed] out a special rule to experts in patent
cases, Sundance, 550 F.3d at 1360, making admissibility of expert testimony in a
patent case more restrictive than in other types of cases.
Put simply, it is permissible and warranted under design patent law and Rule
702 and Daubert to admit testimony from experts possessing experience and
expertise in a field related to the patented design. See Nordock, 927 F. Supp. 2d
577. Even in utility patent cases, numerous courts have admitted expert testimony
where the expert did not have direct experience or knowledge with the specific
subject of the patent at issues and found the admission of such testimony consistent

The district courts analysis regarding wearable devices was only discussed in its
order striking and excluding Bresslers testimony regarding functionality for
claim construction. (A9-A20.) Later, however, the district court struck Bresslers
testimony regarding the issues of obviousness and infringement based on its
previous determination that Bressler is not qualified in the pertinent art and
without any meaningful analysis. (A44-A45.)
55

with Sundance. See Intl Gamco, Inc. 732 F.Supp.2d at 1088 (citing Sundance and
admitting testimony from expert testimony on the issues of infringement and
invalidity even though the expert did not have any expertise or experience in the
field of gaming or lottery systems); Asetek Danmark A/S v. CMI USA, Inc., 2014
WL 5590699, at *2 (N.D. Cal. 2014) (citing Sundance and admitting expert
testimony even though the expert purportedly did not have direct experience
specific to computer liquid cooling) Farstone Tech., Inc. v. Apple, Inc., 2015 WL
857706, at *3-4 (C.D. Cal. 2015) (citing Sundance and admitting expert testimony
even though the expert did not have direct experience in the design and
implementation backup recovery systems because he had related experience and
education in computer science compensate[d] for any purported lack of
experience); Apple Inc. v. Samsung Electronics Co., Ltd., 2012 WL 2571332, at *
2 (Fed. Circuit 2012) (citing Sundance and rejecting motion to exclude design
patent expert opining on obviousness).
As the above cited cases demonstrate, Sundance does not require a proffered
expert to have direct experience specific to the patent at hand (or more particularly
in the specific subject of its title) to make them more qualified to testify under Rule
702 and Daubert. To the contrary, where an expert has expertise or experience in
an area that is related to the pertinent art so that his testimony will be helpful to the
factfinder, such testimony must be admitted. See generally Thomas, 42 F.3d at
56

1269 (Rule 702 is . . . intended to embrace more than a narrow definition of


qualified expert.) As demonstrated above in, Bressler has an abundance of
experience in industrial design generally, and in designing products that must float
specifically. As such, Bressler was qualified and entitled to testify as an expert.
Because the district courts exclusion of Bresslers testimony relied on its
misinterpretation of the legal standard articulated in Sundance, it constituted an
abuse of discretion. See Pom Wonderful LLC, 775 F.3d at 1123. This Court should
reverse as an abuse of discretion the district courts orders striking and excluding
the testimony and reports of Bressler. See Thomas, 42 F.3d at 1269-70 (reversing
as an abuse of discretion a district courts decision to exclude a proffered experts
testimony on the basis of the experts qualifications); City of Pomona, 750 F.3d at
1048-49 (reversing as an abuse of discretion the district courts exclusion of expert
testimony).
CONCLUSION
Coleman respectfully requests this Court reverse the district courts orders
and remand with instructions to (1) permit and consider the testimony of Bressler
on the issues of functionality, infringement, and obviousness; and (2) construe the
claim as follows:
The ornamental design for a personal flotation device as shown in
Figs. 1-8. The broken line showing is for illustrative purposes only
and forms no part of the claimed design.
57

Respectfully submitted,
/s/ Michael R. Annis
Michael R. Annis
JoAnn T. Sandifer
Husch Blackwell LLP
190 Carondelet Plaza, Suite 600
St. Louis, MO 63105
314.480.1500 Phone; 314.480.1505 Fax
mike.annis@huschblackwell.com
joann.sandifer@huschblackwell.com
Counsel for Defendant-Appellant

58

No. 15-1553

IN THE UNITED STATES COURT OF APPEALS


FOR THE FEDERAL CIRCUIT

SPORT DIMENSION, INC., a California Corporation,


Plaintiff-Appellee,
v.
THE COLEMAN COMPANY, INC., a Delaware Corporation,
Defendant-Appellant.

Appeal From The United States District Court


Central District of California
Case No. 2:14-cv-00438-BRO-MRW
Honorable Beverly M. OConnell

APPELLANTS ADDENDUM

Michael R. Annis
JoAnn T. Sandifer
Husch Blackwell LLP
190 Carondelet Plaza, Suite 600
St. Louis, MO 63105
314.480.1500 Phone; 314.480.1505 Fax
mike.annis@huschblackwell.com
joann.sandifer@huschblackwell.com
Counsel for Defendant-Appellant

SLC-7588380-1

Dated: June 17, 2015

TABLE OF CONTENTS
Page
3/18/2015

Order Granting Motion for Entry of Judgment of NonInfringement and Designation as Final [110]............................... Add. 1

1/29/2015

Order Granting Motion to Strike Expert Opinion [66] ................ Add. 9

2/9/2015

Sealed Document - Supplemental Claim Construction Order ... Add. 21

2/13/2015

Order Granting Motion to Strike Expert [88] ............................ Add. 44

Undated

United States Patent No. D623714 .......................................... Add. 46

SLC-7588380-1

CERTIFICATE OF SERVICE
I hereby certify that on June 17, 2015, I caused this document to be
electronically filed with the Clerk of the Court for the United States Court of
Appeals for the Federal Circuit by using the CM/ECF system. Participants in the
case who are registered CM/ECF users will be served by the CM/ECF system. I
further certify that the document was scanned for viruses and is virus-free.

/s/ Michael R. Annis

Case 2:14-cv-00438-BRO-MRW Document 124 Filed 03/18/15 Page 1 of 8 Page ID #:3355


LI1\1K: JS-6
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Present: The Honorable

Date

March 18, 201 5

BEVERLY REID O ' CONNELL, United States Disnict Judge

Renee A. Fisher

N ot Present

N/A

Deputy Clerk

Court Repmter

Tape No.

Attorneys Present for Plaintiffs:

Attorneys Present for D efendan ts:

N ot Present

N ot Present

Proceedings:

(IN CHAMBERS)

ORDER GRANTING MOTION FOR ENTRY OF JUDGMENT OF NONINFRINGEMENT AND DESIGNATION AS FINAL [110]
I.

INTRODUCTION

Pending before the Court is Defendant The Coleman Company, Inc. 's ("Coleman")
motion for entry and certification of final judgment for non-infringement pursuant to
Federal Rule of Civil Procedure 54(b). (Dkt. No. 110.) After considering the papers
filed in support of and in opposition to the instant motion, the Court deems this matter
appropriate for resolution without oral argument of counsel. See Fed. R. Civ. P. 78; C.D.
Cal. L.R. 7-15 . For the following reasons, Defendant 's m otion is GRANTED.

II.

BACKGROUND

Plaintiff Sport Dimension, Inc. ("Sport Dimension") is a sports equipment and


apparel c01npany that has been operating in Southern California for sixteen years.
(Compl. if 6.) Sport Dimension develops, manufactures, sells, and distributes watersports-related equipment, including wet suits, personal floatation devices ("PFDs"), body
boards, sea scooters, masks, and fins. (CompL if 7.) Sport Din1ension sells many of its
products under the Body Glove brand. (Compl. if 7.)
Defendant Coleman is a Delaware corporation that sells and distributes outdoor
sporting equipment, including camping equipment and PFDs. (Answer irir 2, 8.)
Coleman is the owner of all rights, title, and interest in U.S . Patent No. D623 '7 14 (the
"D '714 patent"), entitled "Personal Flotation Device." (Answer if 9; Compl. Ex. A.)

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

March 18, 2015

Among other products, Coleman sells a child PFD called the "Puddle Jumper," which it
asserts is covered by the D '714 patent. (Answer ifif 10, 12.)
On August 9 2013, Coleman sent Sport Dimension a letter accusing one of Sport
Dimension's PFDs designed for children (the "Body Glove PFD") of infringing
Coleman' s D '714 patent and demanding that Sport Dimension cease and desist all
"manufacturing, importing, distributing, selling and/or offering for sale in the United
States" of the Body Glove PFD. (Compl. ifif 13, 14.) Sport Dimension and Coleman then
exchanged correspondence regarding Sport Dimension's alleged infringement between
August 2013 and December 2013. (Compl. if 16.)
l

On January 21 , 20 14, Sport Dimension filed this lawsuit against Coleman seeking
declaratory relief. (Compl.) Specifically, Sport Dimension requests declaratory
judgment establishing that (1) Sport Dimension is not infringing the D'714 patent, and
(2) the D '714 patent is invalid. (Compl. ifif 19-28.)
On October 10, 2015, the parties jointly requested a claim construction hearing
pursuant to Markman v. Westview Instruments, Inc. , 517 U .S. 370 (1996). (Dkt. No. 35.)
The sole subject of this hearing was how to construe the D'714 patent. In support of its
proposed construction, Sport Dimension argued both that the Court should filter out any
functional elements of the D ' 714 patent and that Coleman had made certain prosecution
disclaimers that linlited the scope of the D'714 patent. (See Dkt. No. 39.) Coleman
opposed both arguments and asserted that it was premature to consider the issue of
functionality because Coleman had not yet conducted adequate discovery on the issue.
(Dkt. No. 36.) After consideration of the briefs and the parties' oral argument on the
matter, the Court determined that Coleman had not made any prosecution disclaimers.
(Dkt. No. 59 at 17.) With regard to functionality, however, the Court deemed it
premature to consider the issue because discovery had not yet been completed. (Dkt. No.
59 at 13-14.) Consequently, the Court deferred ruling on the functionality of aspects of
the D'714 patent until after the parties had had the opportunity to conduct sufficient
discovery. (Dkt. No. 59 at 14.)
On January 12, 2015, both parties submitted their supplemental claim construction
briefs. (Dkt. Nos. 62, 64.) Sport Dimension also filed a motion to strike and exclude the
testimony of Coleman' s expert, Peter Bressler, whom Coleman retained to testify about
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

March 18, 2015

the functionality of certain aspects of the D'714 patent. (Dkt. No. 66.) The basis of
Sport Dimension's motion was that Mr. Bressler, an individual who wielded undeniable
expertise in the field of industrial design, nevertheless was unqualified to render an
opinion with regard to the patent at issue because he had no experience whatsoever in the
field of PFDs. (Dkt. No. 66.) On January 29, 2015, the Court granted this motion on the
ground that Mr. Bressler' s general expertise in industrial design was insufficient to
qualify him to testify regarding PFD design under the Federal Circuit's ruling in
Sundance, Inc. v. DeMonte Fabricating Ltd. , 550 F.3d 1356, 1363 (Fed. Cir. 2008).
(Dkt. No. 80.) The Court later excluded Mr. Bressler as an expert with regard to the
topics of obviousness and infringement as well on the same basis. (Dkt. No. 106.)
On February 9, 2015, the Court issued a supplemental claim construction order.
(Dkt. No. 92.) The Court found that the armbands, the armband attachments, the shape of
the annbands, the tapering of the armbands, and the tapering of the side torso were all
elements that serve a functional rather than ornamental purpose in the D '714 patent.
Accordingly, the Court adopted the following claim construction that was proffered by
Sport Dimension:
The ornamental design for a personal flotation device, as shown and
described in Figures 1-8, except the left and right armband, and the side
torso tapering, which are functional and not ornamental.
(Dkt. No. 92 at 23.) On February 23, 2015, Colen1an brought the instant motion under
Rule 54(b) to enter judgment in favor of Sport Dimension and certify it as final so that
Coleman tnay expeditiously appeal the Court's claim construction of the D' 714 Patent
and the Court's order striking Coleman's expert. (Dkt. No. 108.) Sport Dimension filed
its opposition on March 3, 2015, (Dkt. No. 114), and Coleman timely replied on March 9,
2015, (Dkt. No. 121).

Ill.

LEGALSTANDARD

"When an action presents more than one claim for relief . . . the court may direct
entry of a final judgment as to one or more, but fewer than all, claims or parties only if
the court expressly determines that there is no just reason for delay. " Fed. R. Civ. P.
54(b). A judgment is final "in the sense that it is a decision upon a cognizable claim for
relief, and it must be ' final' in the sense that it is ' an ultimate disposition of an individual
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

March 18, 2015

clai1n entered in the course of a multiple claims action. "' Curtiss-Wright Corp. v. Gen.
Elec. Co. , 446 U.S. 1, 7 (1 980) (quoting Sears, Roebuck & Co. v. Mackey, 35 1 U.S. 427,
436 (1 956)). Simply put, a final judgment "ends the litigation on the merits and leaves
nothing for the court to do but execute the judgment." Catlin v. United States, 324 U .S.
229, 233 (1945).
In determining whether there exist just reasons for delay, courts "consider such
factors as whether the claims under review [are] separable from the others remaining to
be adjudicated and whether the nature of the claims already determined [are] such that no
appellate court would have to decide the same issues more than once even if there were
subsequent appeals." W.L. Gore & Assocs., Inc. v. Int'! Med. Prosthetics Research
Assocs., Inc., 975 F.2d 858, 862 (Fed. Cir. 1992). This discretionary judginent is to be
exercised "in the interest of sound judicial administration." Mackey, 351 U.S. at 437. In
addition to judicial administration, the Court inust consider the equities involved.
Curtiss-Wright, 446 U.S. at 8. "The mere presence of[other] claims, however, does not
render a Rule 54 (b) certification inappropriate." Id. at 9.

IV.

DISCUSSION

Coleman brings the instant motion so that it may appeal the Court's orders striking
Coleman' s expert opinion and construing the claims of the patent-in-suit, which,
Coleman believes, now make it impossible for Coleman to prove that Sport Dimension
infringed upon the D '714 Patent. (Mot. at 1.) Coleman therefore asks the Court to enter
a declaratory judgment of non-infringement of the D '714 Patent against Coleman in favor
of Sport Dimension pursuant to Federal Rule of Civil Procedure 54(b), and to either
dismiss or stay the remaining invalidity claims as moot. (Mot. at 2, 4.) Sport Dimension
opposes Coleman's motion on the grounds that the equities weigh in favor of continuing
the instant action. (See Opp' n at 10-13.)
As discussed above, Rule 54(b) motions may be appropriate in an action involving
multiple claims for relief "in which 'one or more but less than all' of the multiple claims
have been finally decided and are found otherwise to be ready for appeal." Mackey, 351
U.S. at 435 (1 956) (quoting Fed. R. Civ. P. 54(b)). After establishing this to be the case,
the Court "must go on to determine whether there is any just reason for delay." CurtissWright, 446 U.S. at 8.
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

March 18, 2015

A. Final Judgment
The instant action brings two separate claims against Coleman. Specifically, Sport
Dimension requests declaratory judgment establishing that (1) Sport Dimension is not
infringing the D'714 patent, and (2) the D'714 patent is invalid. (Compl. ifif 19-28.) In
its motion, Coleman contends that the Court's construction of the D '7 14 Patent renders
Coleman's ability to prove infringement untenable. (Mot. at 1.) Consequently, Coleman
asks the Court to render a declaratory judgment against it, in favor of Sport Dimension,
on the issue of infringement. (Mot. at 1.) The issue of infringement in the instant action
is therefore no longer in dispute. As a result, Coleman's request effectively ends the
litigation on this issue and leaves nothing left for the Court to do on this cause of action
but execute the judginent. See Catlin, 324 U.S. at 233 (stating that a final judgment is
one that "ends the litigation on the merits and leaves nothing for the court to do but
execute the judgment"). Because the action involves two causes of action in which only
one has been rendered final, however, the Court must now consider whether there exist
any just reasons to delay appeal. See Curtiss-Wright, 446 U.S. at 8.

B. Just Reasons to Delay Appeal


District courts have discretion "to dismiss a counterclaim alleging that a patent is
invalid as moot where it finds no infringement." Phonometrics, Inc. v. N. Telecom Inc. ,
133 F.3d 1459, 1468 (Fed. Cir. 1998); accord Nystrom v. TRE.XCo. , 339 F.3d 1347, 1351
(Fed. Cir. 2003) (noting that a district court could have dismissed a counterclaim alleging
invalidity, either with or without a finding that the counterclaim was moot, following a
grant of summary judgment finding non-infringement). At least one district court has
found that the reasoning for dismissing a counterclaim under this principle also applies to
affinnative claims of invalidity brought in a declaratory judgment action. See Dolby
Labs., Inc. v. Lucent Techs. Inc. , No. C 01-20709 JF, 2005 U.S. Dist. LEXIS 33723, at *7
(N.D. Cal. Sept. 6, 2005). As the court in Dolby reasoned, there is "no reason that the
reasoning [from Phonometrics] should not apply to the scenario presented by the instant
case, in which [Sport Dimension] brought affirmative claims of invalidity as the plaintiff
in a declaratory judgment action." Id.
Following a final determination on the issue of infringement in favor of Sport
Dimension, Coleman argues that the issue of invalidity has now been rendered moot.
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

March 18, 2015

(Mot. at 1.) Coleman thus asks the Court to dismiss the remaining invalidity claims
without prejudice, or, in the alternative, to stay the matter until the Federal Circuit has
adjudicated Coleman' s appeal. (Dkt. No. 109at10.) In support of this assertion~
Coleman argues that "[i]mmediate certification and appeal is the most efficient use of the
Court's time and the parties' resources." (Mot. at 3.)
Sport Dimension opposes this 1notion on the bases that its invalidity claims would
not be mooted by a judgment of non-infringement, that certification would result in
piecemeal litigation, and that it will be prejudiced should the Court grant Coleman' s
motion and put a halt to the proceedings. (Opp'n at 5-6.) Sport Dimension argues that
the issue of invalidity is not moot because a ruling on the matter would provide guidance
for future actions involving the D '714 patent. (Opp'n at 9.) Sport Dimension further
argues that "this is a rare case where . .. a finding that the D ' 714 Patent is invalid is
inevitable and imminent." (Opp'n at 9.)
Coleman, however, urges the Court to exercise its discretion in dismissing the
remaining claims because invalidity "is not plainly evident." (Mot. at 4.) In fact,
Coleman notes that the issue of invalidity is in large part dependent upon the Court' s
constn1ction. That is, whether prior art invalidates the patent-in-suit depends on how the
D'714 Patent clain1 is construed. Coleman thus argues that it is in the interest of judicial
economy to dismiss Sport Dimension' s invalidity claim without prejudice because if the
Federal Circuit were ultimately to find that the Court erroneously construed the claims of
the D'714 patent, any subsequent finding on the issue of invalidity may have to be
relitigated. Indeed, Sport Dimension concedes that "the Court's findings of fact that
underlie the Claim Construction Order are directly tied to Sport Dimension's claim for
invalidity due to functionality." (Opp'n at 8.) Coleman argues that a more reasonable
and just solution would result in dismissing without prejudice or staying the instant action
until a determination is made by the Federal Circuit in order to avoid the prospect of
multiple appeals and possible relitigation of issues that are contingent upon the Court' s
construction. See ImageCube LLCv. The Boeing Co. , No. 04-CV-7587, 2010 WL
331723, at *4 (N.D. Ill. Jan. 22, 2010) ("[T]o the extent that the claims and counterclaims
are linked at least by a common claim construction, any views on claim construction that
the Federal Circuit expresses should it agree to hear Plaintiffs appeal immediately would
infonn the litigation of the counterclaims following the disposition of the appeal.");
Amgen, Inc. v. Ariad Pharm., Inc. , No. CIV.A. 06-259-MPT, 2008 WL 4487910, at *3
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

March 18, 2015

(D. Del. Oct. 3, 2008) ("If the court were to conduct a trial on Amgen' s claiins based on
the court's current claim construction, modification of that claim construction on
subsequent appeal could result in a second trial of the same issues based on that
nlodification."). As discussed above, one of the factors district courts consider in
deciding whether to exercise its discretion to certify an appeal is whether an "appellate
court would have to decide the same issues more than once even if there were subsequent
appeals." Curtiss-Wright, 446 U.S. at 8. Because the issue of validity is closely related
to the patent's claim construction, and as both parties agree that an appeal is inevitable,
the Court finds that the most efficient use of resources would be to allow for final
resolution on the claim constn1ction issue before the issue of invalidity is detennined.
Sport Dimension also argues that it will suffer prejudice if the instant action is not
continued. (Opp'n at 6.) This assertion is based upon resources already spent litigating
the issue of invalidity as well as upon letters that Coleman previously sent to Sport
Dimension's customers alerting them to Sport Dimension's potential infringement.
According to Sport Dimension, Coleman 1night continue to interfere with Sport
Dimension's ability to sell its products. If the Court were to grant certification pursuant
to Rule 54(b), however, a final judgment on the issue of infringement would effectively
refute any possible future claims of infringement. That is, Sport Dimension would be
free to sell its products and inform its customers that it received a judginent establishing
its non-infringement. Should the Federal Circuit subsequently overturn the Court's order,
Sport Dimension would be in no worse position than it would be if the Court were to
continue the instant action.
Finally, the Court notes that the issue of a patent's validity is one of great public
importance. See Sinclair & Carroll Co. v. Interchem. Corp., 325 U.S. 327, 330 (1945).
Issued patents are entitled a presumption of validity. 35 U.S.C. 282. Assertions of
invalidity therefore inust be proven with clear and convincing evidence. L.A. Gear v.
Thom McAn Shoe Co., 988F.2d1117, 1123 (Fed. Cir. 1993). The Supreme Court has
indicated that there are cases in which it is the "better practice" for a lower court deciding
an infringement suit to inquire into the validity question. Sinclair, 325 U.S. at 330. But
"[w]here, as here, non-infringement is clear and invalidity is not plainly evident, it is
appropriate to treat only the infringement issue." Nestier C01p. v. Menasha Corp.Lewisystems Div. , 739 F.2d 1576, 1581 (Fed. Cir. 1984) (citingLeesona Corp. v. United
States, 530 F.2d 896, 906 n.9 (Cl. Ct. 1976)). The Court finds that invalidity is not
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

March 18, 2015

"plainly evident." And because of the impact that the Court's claim construction will
have on making this determination, and in light of the absence of prejudice to Sport
Dimension, the Court finds no just reason to delay certifying the judgment as final.
Accordingly, the Court GRANTS Coleman's motion.

V.

CONCLUSION

For the reasons discussed above, the Court GRANTS Coleman's motion for
entry of final judgment pursuant to Federal Rule of Civil Procedure 54(b) on the
issue of infringement. The Court hereby DISMISSES without prejudice Sport
Dimension 's remaining claim for invalidity.

IT IS SO ORDERED.
Initials of Preparer

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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Present: The Honorable

Date

Janua1y 29, 2015

BEVERLY REID O 'CONNELL, United States Disnict Judge

Renee A. Fisher

Not Present

N/A

Deputy Clerk

Court Reporter

Tape No.

Attorneys Present for Plaintiffs:

Attorneys Present for Defendants:

Not Present

Not Present

Proceedings:

(IN CHAMBERS)

ORDER GRANTING MOTION TO STRIKE EXPERT OPINION (66]

I.

INTRODUCTION

Pending before the Court is Plaintiff Sport Dimension, Inc. ' s motion to strike and
exclude the opinions of Peter Bressler, the expert witness hired by Defendant The
Coleman Company, Inc. to opine on the issue of functionality. (Dkt. No. 66.) After
consideration of the papers filed in support of and in opposition to the instant motion, the
Court deems this matter appropriate for decision without oral argument of counsel. See
Fed. R. Civ. P. 78; C.D. Cal. L.R. 7-1 5. For the following reasons, Plaintiffs motion is
GRANTED.

II.

BACKGROUND

Plaintiff Sport Dimension, Inc. ("Sport Dimension") is a sports equipment and


apparel c01npany that has been operating in Southern California for sixteen years.
(Compl. iJ 6.) Sport Dimension develops, manufactures, sells, and distributes watersports-related equipment, including wet suits, personal floatation devices ("PFDs"), body
boards, sea scooters, masks, and fins. (Compl. if 7.) Sport Din1ension sells many of its
products under the Body Glove brand. (Compl. iJ 7.)
Defendant The Coleman Company, Inc. ("Coleman") is a Delaware corporation
that sells and distributes outdoor sporting equipment, including camping equipment and
PFDs. (Answer ifiJ 2, 8.) Coleman is the owner of all rights, title, and interest in the
D'714 patent, which is titled "Personal Flotation Device." (Answer if 9; Compl. Ex. A.)

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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Januaiy 29, 2015

Among other products, Coleman sells a child PFD called the "Puddle Jumper," which it
asserts is covered by the D'714 patent. (Answer ifif 10, 12.)
On August 9l 2013, Coleman sent Sport Dimension a letter accusing one of Sport
Dimension's PFDs designed for children (the "Body Glove PFD") of infringing
Coleman' s D'714 patent and demanding that Sport Dimension cease and desist all
"manufacturing, importing, distributing, selling and/or offering for sale in the United
States" of the Body Glove PFD. (Compl. 1113, 14.) Sport Dimension and Coleman then
exchanged correspondence regarding Sport Dimension's alleged infringement between
August 2013 and December 2013 . (Compl. if 16.)
On January 21, 2014, Sport Dimension filed this lawsuit against Coleman seeking
declaratory relief. (Compl.) Specifically, Sport Dimension requests declaratory
judgment establishing (1) that Sport Dimension is not infringing the D'714 patent, and
(2) that the D ' 714 patent is invalid. (Compl. ifif 19-28.) On October 10, 2014, the parties
jointly requested a claim construction hearing pursuant to Markman v. Westview
Instruments, Inc. , 517 U.S. 370 (1996). (Dkt. No. 35.) Following briefing on the matter
and a claim construction hearing, however, the Court found that it was premature to
construe the D'714 patent because discovery had not yet concluded on the issue of
functionality. (Dkt. No. 59 at 17-18.) In anticipation for the parties' supplemental claim
construction, which is currently set for hearing on February 3, 2015, (s-ee Dkt. No. 72 at
2), the parties conducted discovery on the issue of functionality, including the retention
of expert witnesses. On January 5, 2015, Sport Dimension deposed Coleman's expert
witness, Peter Bressler, and concluded based on his testimony that he was not qualified to
testify as an expert. (Mot. at 1.) Accordingly, Sport Din1ension filed this motion on
January 12, 2015 to strike Mr. Bressler's testimony. (Dkt. No. 66.) Pursuant to a
modified briefing schedule issued by the Court, Coleman opposed the motion on January
23, 2015, (Dkt. No. 74), and Sport Dimension replied on January 28, 2015, (Dkt. No. 78).

Ill. LEGALSTANDARD
The proponent of the expert testimony has the burden of proving that the proposed
expert testimony is admissible under Federal Rule of Evidence 702, Daubert, and its
progeny. Lust ex rel. Lust v. Merrell Dow Pharm., Inc., 89 F.3d 594, 598 (9th Cir. 1996).
The pertinent admissibility requirements must be met by a preponderance of the
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Januruy 29, 2015

evidence, pursuant to Federal Rule of Evidence 104(a). Bourjaily v. United States, 483
U.S. 171, 175 (1987). Federal Rule of Evidence Rule 702 provides,
A witness who is qualified as an expert by knowledge, skill, experience,
training, or education may testify in the form of an opinion or otherwise if:
(a) the expert's scientific, technical, or other specialized knowledge will help
the trier of fact to understand the evidence or determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and methods; and
(d) the expert has reliably applied the principles and methods to the facts of
the case.
Fed. R. Evid. 702. The Supreme Court in Daubert v. Merrell Dow Pharmaceuticals, Inc. ,
509 U.S. 579 (1993), announced that the key inquiry in evaluating expert scientific
testimony centers on reliability; trial judges are to act as gatekeepers in excluding
unreliable expert scientific testiinony. Six years later, in Kumho Tire Co. v. Carmichael,
526 U.S. 137 (1999), the Supreme Court extended this reliability analysis to all expert
testimony, rather than just scientific testimony.
The Supreme Court in Daubert sought to guide trial courts by offering several
nonexclusive, nondispositive factors that a trial court may consider in evaluating expert
testimony: (1) whether the expert's technique or theory can be or has been tested;
(2) whether the technique or theory has been subjected to peer review and publication;
(3) the technique or theory's rate of error; (4) the existence and maintenance of standards
and controls; and (5) the technique or theory's general acceptance. See Daubert, 509
U.S. at 593-94. Further, "[t]he inquiry envisioned by Rule 702 ... is a flexible one." Id.
at 594. In fact, the Supreme Court in Daubert emphasized that_,in making this inquiry
into reliability of expert testimony, trial judges are accorded significant discretion. Id.;
see also Gen. Elec. Co. v. Joiner, 522 U.S. 136, 141 (1997) (holding that the trial court's
decision in admitting or excluding expert testimony will be reviewed for abuse of
discretion). See generally Datalex (Ir.) Ltd. v. PSA, Inc., CV01-06482DDPVBKX, 2003
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Januaiy 29, 2015

WL 25667620 (C.D. Cal. Jan. 30, 2003) (denying a motion to exclude expert testimony
after applying the nondispositive factors from Daubert).
Technical experts routinely testify in patent cases. But the Federal Circuit "has
explained that only one of ordinary skill in the art who is qualified as a technical expert
under Rule 702 of the Federal Rules of Evidence may offer expert testimony on technical
matters." Byrne v. Wood, Herron & Evans, LLP, 450 F. App'x 956, 962-63 (Fed. Cir.
2011) (citing Sundance, Inc. v. DeMonte Fabricating Ltd. , 550 F.3d 1356, 1363 (Fed.
Cir. 2008)). Indeed, "it is an abuse of discretion to permit a witness to testify as an expert
on the issues of noninfringement or invalidity unless that witness is qualified as an expert
in the pertinent art." Sundance, 550 F.3d at 1363. As the Federal Circuit has explained,
"[a]dmitting testimony from a person ... with no skill in the pertinent art[] serves only to
cause mischief and confuse the factfinder." Id. at 1362.

IV.

DISCUSSION

In its motion, Sport Dimension argues that the Court should strike or exclude all
testimony of and argument relating to the opinions of Coleman' s expert, Peter Bressler,
on the basis that Mr. Bressler is not qualified. Sport Dimension does not dispute Mr.
Bressler's credentials, nor that he appears to possess substantial experience in the field of
industrial design, generally. Similarly, Coleman does not dispute-and Mr. Bressler's
deposition testimony makes it quite clear-that Mr. Bressler has no substantive
experience in the narrower field ofpersonal flotation device design. Yet Coleman argues
that such experience is not required to render Mr. Bressler qualified to opine on the
functionality of the design at issue because he has sufficient industrial design experience
in the related fields of marine and soft goods. 1

Mr. Bressler sUllllllarizes his experiences in these industries in his report. (See Bressler Repo1i if 7
("Though I have not specifically designed a personal flotation device (PFD), I do have many yearn of
related experience in various applicable materials and technologies and related markets. These include
projects in the marine industry such as boat des ign projects for Pahner Yachts and Trojan Yachts; scuba
equipment design for Biomarine Industries; and EPIRB (Emergency Position Indicating Radio Beacon)
buoys for the Clifton Precision Division of Litton Industries. In the 'softgoods ' industiy, a
categorization that is applicable to PFDs, I've been involved in tool accesso1y bag designs for DeWalt
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LINK:
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Januruy 29, 2015

A. The Pertinent Art


Because, as discussed above, Mr. Bressler cannot testify as an expert witness
unless he "is qualified as an expert in the pertinent art," Sundance, 550 F.3d at 1363
(emphasis added), the predominant issue becomes how to characterize "the pertinent
art," 2 see Ormco Corp. v. Align Tech., Inc. , No. SACV03 16CAS(ANX), 2009 WL
764670, at *l (C.D. Cal. Mar. 18, 2009) (rejecting the argument that the court should not
have determined what "the pertinent art" was on a motion to strike expert testimony
because resolution of the issue required the court "to address the issue of what the
'pertinent art' is"). If the pertinent art here is merely "industrial design," or industrial
design in the "marine and soft good industries," 3 then Mr. Bressler appears to be
undisputedly qualified, although Sport Dimension also argues that the opinions he has
provided in this case are unreliable for other reasons. If, however, the pertinent art is
more specifically the industrial design of personal flotation devices, then Mr. Bressler is
likely not qualified because he has no experience with such devices. 4
Sport Dimension' s argument for interpreting the pertinent art n1ore narrowly
hinges upon its interpretation of the Federal Circuit's opinion in Sundance, Inc. v.
DeMonte Fabricating Ltd. , 550 F.3d 1356 (Fed. Cir. 2008). In Sundance, the Federal
Circuit reviewed a district court decision under Federal Rule of Evidence 702 to pem1it a
and Black & Decker; bulletproof vest designs for Harvey Baskin, Inc., escape harness designs for
Research and Trading Company and infant slings for Graco, Inc.").)
2

Although the expert in Sundance sought to testify regarding noninfringement and invalidity, the court's
holding applies equally to other matters of expe1t testimony, such as the issue of functionality that is
currently disputed in the parties ' claim constrnction briefs. As the comt reasoned, "where an issue calls
for consideration of evidence from the perspective of one of ordina1y skill in the art, it is contrndicto1y
to Rule 702 to allow a witness to testify on the issue who is not qualified as a technical expe1t in that
art." Sundance, 550 F.3d at 1363; accord id. (''Nor may a witness not qualified in the peliinent ait
testify as an expe1t on obviousness, or any of the underlying technical questions, such as the nature of
the claimed invention, the scope and content of prior art, the differences between the claimed invention
and the prior art, or the motivation of one of ordinaiy skill in the rut to combine these references to
achieve the claimed invention." (footnote omitted)).
3

(Opp. at 1 & n .1.)

In fact, Mr. Bressler conceded during his deposition that he is "n ot an expe1t in personal flotation
devices." (Mikulka Deel. Ex. Bat 151 :14-15.)

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Januaiy 29, 2015

patent attorney to testify as an expert on issues of claim construction, infringement,


validity, and inequitable conduct, based on his experience in "patent law and procedure."
Id. at 1360. The Federal Circuit determined that, in so doing, the district court had
abused its discretion by allowing the witness to testify on issues of infringement and
validity. Since the patent attorney had no "relevant technical expertise" in the area of the
patent, the court found that he was "not 'qualified as an expert by knowledge, skill,
experience_,training, or education' in the pertinent art" and thus could not "see how he
could ' assist the trier of fact to understand the evidence or to determine a fact in issue."'
Id. at 1362 (quoting Fed. R. Evid. 702). Sport Dimension argues that here, as in
Sundance, Mr. Bressler has no relevant technical expertise in the art of personal flotation
device design, making him unqualified to testify as an expert in this matter.
In support of this position, Sport Dimension relies on the District of New
Hampshire's decision in Hypertherm, Inc. v. American Torch Tip Co. , No. 05-cv-373-JD,
2009 WL 530064 (D.N.H. Feb. 27, 2009). In Hypertherm, the court applied Sundance to
determine that an expert witness was not qualified to give opinions on infringement or
obviousness because his background in nlechanical engineering and in "designing air
springs, conveyor belting, racing tires, testing equipment, and 1nanufacturing machines"
was insufficient to render him qualified to testify on the pertinent art at hand, which it
defined as "plasma arc torch systems and processes." Id. at *2-4. The expert in
Hypertherm acknowledged that he had "no experience or training in plasma arc
technology." Id. at *2. Rather, he "based his opinions on patent infringement and
invalidity by gaining an understanding of the patents through reading and studying them,
which was informed by his background in basic mechanical engineering principles, such
as geometry, fluid flow, and heat transfer." Id.
In Hypertherm, as here, the issue of the expert's qualification centered upon the
court's determination of the "pertinent art" implicated by the patents at issue.
Specifically, the defendant argued that the pertinent art was "the consumable parts that
are the subject matter of the patents in suit and that the relevant technological field is
mechanical engineering as it relates to the design and manufacture of consumable parts,"
whereas the plaintiff contended that it should be defined more narrowly as "plasma arc
torch and consumable technology and plasma arc cutting technology." Id. at *4. In
adopting the plaintiffs much narrower characterization, the court reasoned:
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LINK:
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Januaiy 29, 2015

In Sundance, the Federal Circuit described the pertinent art as tarps or


covers and cover systems, based on the subject of the patent claims. In
[Centricut, LLCv. Esab Group, LLC, 390 F.3d 1361 (Fed. Cir. 2004), a case
involving infringement of a patent pertaining to a plasma arc torch
electrode], the pertinent art was the work function of electrode components,
as claimed in the patent. Here, the patents describe the field of the invention
generally, as "plasma arc torch systems and processes," "plasma arc cutting
torches," or "plasma arc torches." The patents also describe the pertinent art
more specifically as "liquid cooled electrodes and coolant tubes for use in a
plasma arc torch," "an improved electrode and insert cooling method for use
in low current, high definition torches," "an improved nozzle for use in
plasma arc torches," and ''plasma arc torches having a torch tip designed to
produce a substantially columnar shield flow that surrounds the plasma arc
without substantially interfering with the plasma arc."
Therefore, based on the patents themselves, the pertinent art is liquid
cooled electrodes used in plasma arc torches, an insert cooling method used
in low current, high definition plasma arc torches, nozzles for plasma arc
torches, and plasma arc torch tip design. More generally, the pertinent art is
plasma arc torch systems and processes.
Id. at *3 n.3, 4. As Sport Dimension argues, the Hypotherm court's interpretation of
Sundance provides persuasive reasoning that the pertinent art should be informed
primarily by the language in the patent. And here, the claim for the D'714 patent is titled
"Personal Flotation Device," and the patent is described in the patent claim as "[t]he
ornamental design for a personal flotation device, as shown and described." (Compl. Ex.
A.) Accordingly, following Sundance and Hypotherm would lead the Court to determine
that "the pertinent art" is the design of personal flotation devices. 5

See also Precision Fabrics G1p., Inc. v. Tietex Int '!, Ltd., No . 1:13CV645, 2015 WL 224942, at *3
(M.D.N.C. Jan. 15, 2015) ("The pertinent a1t, as disclosed by the patents in their 'Field of the Invention'
descriptions, is flame retardant fabrics."); Degelman Indus. Ltd. v. Pro-Tech We!d;ng & Fabrication,
Inc., No. 06-CV-6346T, 2011 WL 6752565, at *6 (W.D.N.Y. May 27, 2011) ("[B]ecause the proposed
experts lack experience in the field of the relevant art, they may n ot testify on the issue of
validity .... In the instant case, the record reveals that neither Godici or [sic] Douglas have [sic]
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LINK:
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Januru.y 29, 2015

Coleman attempts to distinguish Hypo therm by noting that the court emphasized
the "complex technology" at issue in that case. 6 (Opp. at 9.) Indeed, the court in
Hypotherm observed that:
The complexity of the technology of plasma arc torches and their
consumable parts is apparent from the patents themselves, from examination
of a cutaway view of a torch, and from the component parts provided by
ATTC and described by Sprague at the hearing. Given the complex
technology, ATTC has not shown that Sprague's general mechanical
engineering background qualifies him as one who is skilled in the pertinent
art of plasma arc torches and their consumable parts.
Hypertherm , 2009 WL 530064, at *4. At the outset, the Court notes that the apparent
greater complexity involved in Hypo therm alone is not enough to distinguish this case.
"Even where the technology is simple, ' it is an abuse of discretion to permit a witness to
testify as an expert on the issues of noninfringement or invalidity unless that witness is
qualified as an expert in the pertinent art. '" Synthes USA, LLC v. Spinal Kinetics, Inc.,
No. C-09-01201 RMW, 2011 WL 11709387, at *6 (N.D. Cal. Aug. 19, 2011) (quoting
Sundance, 550 F.3d at 1363).

Yet the final sentence from the above quote from Hypo therm nevertheless iinplies
a belief by the court that a general background in mechanical engineering could have
qualified the expert in the pertinent art, but that the challenged expert had merely failed to
demonstrate that he was so qualified. Such reasoning is in line with the court's holding
in Sundance. In coming to its conclusion, the court in Sundance noted that the patent
lawyer who sought to be an expert, a man named Mr. Bliss, had no technical expertise
related to tarp covers for trucks, which was the subject matter of the patent. 550 F.3d at
experience in the rui of material moving blades or snow moving apparatus, the subjects of the patents in
suit, and therefore, it is clear that neither can be considered experts qualified to render au opinion on
whether or not prior art renders any of the asse1iecl patents invalid.").
6

Coleman also makes much of the comt's observation inHypothenn that the expe1t demonstrated a
"lack offamiliruity with his own opinions." 2009 WL 530064, at *5. But a curso1y review of the
court's reasoning makes it cleal" that this was a seconda1y reason for finding the expert unqualified. The
court's analysis depended on whether the expe1i was actually qualified in the pe1ti11ent art. See id.
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Januru.y 29, 2015

1361. Consequently, the court reasoned that the proponent of the expert, DeMonte, had
"failed to explain how Mr. Bliss possesses the relevant expertise in the pertinent art. Mr.
Bliss has no experience whatsoever in ' the field of tarps or covers.' Nor does DeMonte
purport that Mr. Bliss 's experience with engines and the like is sufficiently related to
covers." Id. at 1362 (emphasis added). As inHypotherm, this final sentence indicates
that a more general background could be sufficient if the proponent of the expert
demonstrates how his background is sufficiently related to the pertinent art. 7 The Court
therefore concludes that an expert need not have an expertise in the specific pertinent art
to be qualified as an expert, but the expert must nevertheless demonstrate that his or her
technical background is sufficiently related to that pertinent art.

B. Mr. Bressler Is Not Sufficiently Qualified in the Pertinent Art


Applying this framework to the facts at hand, Coleman must demonstrate that Mr.
Bressler' s background in industrial design is sufficiently related to the pertinent art of
personal flotation device design. In support of this notion, Coleman argues that Mr.
Bressler's forty-four years of experience in industrial product design has endowed him
with "extensive expertise relating to how ordinary consumers see, recognize, and
understand the industrial design of products." (Opp. at 6.) Moreover, Coleman points
out that Mr. Bressler' s many product design and development projects have included
"related projects designing buoys and buoyant devices within the marine industry, as well
as 'softgoods' design projects, a category that is equally applicable to personal flotation
devices." (Opp. at 6.) Yet Mr. Bressler's deposition testimony makes it clear that while
he may have s01ne experience designing buoyant devices, he does not have "any work
7

In addition to distinguishing cases cited by Spo1i Dimension, Coleman relies principally on Nordock
Inc. v . Systems Inc. , 927 F. Supp. 2d 577, 584-87 (E.D. Wis . 2013), in which the comi found an expe1t
witness qualified to testify on the issue of fonctionality despite having "no special knowledge or
experience as to product design or dock levelers," the subjects of the patent. Yet the comi in Nordock
never discussed the holding from Sundance, which is binding on this Comt. See, e.g., Wr;ght Asphalt
Prods. Co., LLCv. Pelican Ref Co., LLC, No. CIV.A. H-09-1145 , 2012 WL 1936416, at *8 (S.D. Tex.
May 29, 2012) (observing that the Federal Circuit 's application of Federal Rule of Evidence 702 in
Sundance is binding on district comis). And the vast majority of the comt's analysis of the expe1i's
qualifications in Nordock was in the context of his opinion on functionality with regard to the plaintiff's
trade dress and unfair competition claims. The Comi finds more compelling the analysis from
Hypotherm, paiiicularly as it accords with this Comt's interpretation of Sundance.
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Januaty 29, 2015

experience in connection with wearable buoyant devices." (Mikulka Deel. Ex. B at


89:23-90:2 (emphasis added).) This is an important distinction. As discussed further
below, Mr. Bressler's ability to testify regarding the functionality of elements of a device
requires him to understand the overall function of the device, and the function of a
wearable buoyant device such as a personal flotation device is 1narkedly different than
the function of other buoyant devices. Indeed, Mr. Bressler' s own testimony
demonstrates that he has no better than a lay opinion as to the function of a wearable
buoyant device. 8
The application of alternative approaches counsels the same result. In Ormco
Corp. v. Align Technology, Inc., for example, the court employed a slightly different
approach to detennining the pertinent art under the Sundance analysis. No. SACV 03-16
CAS ANX, 2009 WL 9294893 (C.D. Cal. Feb. 23, 2009). After noting that "the relevant
'art' is the same in evaluating an expert witness and in determining the person of ordinary
skill for obviousness purposes," the court reasoned that "in determining 'the relevant art'
'the court must look to the nature of the problem confronting the inventor. ' " Id. at *5, 6
(quoting Bancorp Servs., L.L.C. v. Hartford Life Ins. Co. , 359 F.3d 1367, 1375 (Fed. Cir.
2004)).9 Applying this approach, the problem confronting the inventor of the D '714
patent was twofold: it involved both developing a buoyant device to keep the device
afloat and ensuring that the device could be safely worn by a person. As the court in
Ormco reasoned after similarly finding two fields related to the patent, "knowledge from
both ... fields ... are [sic] needed." Id. at *7.
Here, Mr. Bressler has sufficient knowledge regarding the first of these fields-the
development of buoyant devices-but not the second field-designing wearable devices.
Ordinarily, expertise in any relevant field would render Mr. Bressler qualified to testify
8

(See, e.g. , Mikulka Deel. Ex.Bat 97:22-98:2 ("Q: What is the purpose of a personal flotation device?
A: In my lay understanding, not legal understanding, the purpose is to provide flotation."), 99:10-12
("Q: Do you have any expe1i opinion on the intended use of a personal flotation device? A: No.").)
9

The corui also observed, however, that '"the law does not require an expe1t opining from the
perspective of "one of ordina1y skill in the ait" to have the same qual ifications as the inventor,' as long
as they are 'sufficiently qualified to constrne the patent and understand the design and components of
the claimed invention' and the relevant prior ati." Ormco, 2009 VlL 9294893, at *6 (quoting Neutrino
Dev. Cmp. v. Sonosite, Inc. , 410 F. Supp. 2d 529, 536 (S.D. Tex. 2006)).
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Januaiy 29, 2015

as an expert on that matter. 10 Yet Mr. Bressler has been retained to testify regarding the
functionality of the D '714 patent. That is, Mr. Bressler will testify as to "whether the
claimed design is dictated by the utilitarian purpose of the article." 11 L.A. Gear, Inc. v.
Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993). And as Mr. Bressler
acknowledges in his report, "[i]n dete1mining whether a design is primarily functional or
primarily ornamental the claimed design is viewed in its entirety, for the ultimate
question is not the functional or decorative aspect of each separate feature, but the overall
appearance of the article, in determining whether the claimed design is dictated by the
utilitarian purpose of the article." Id. With that analysis in mind, it is impossible for Mr.
Bressler to testify competently about the functionality of the design if he is not qualified
to testify about the design "in its entirety." 12 As he is qualified only to testify about the
design's functionality as a buoyant device, and not as a wearable device, he cannot
adequately testify about the design's functionality as a whole. Stated differently, Mr.
Bressler cannot testify about whether the design "is dictated by the utilitarian purpose of
the article" because the utilitarian purpose of the article is not just to keep the article
afloat but to keep it afloat while it is worn by a person. Id.
Based on Mr. Bressler's admitted lack of expertise in this field, the Court must
conclude, as the Federal Circuit did in Sundance, that Mr. Bressler's industrial design
10

See, e.g., B;rchwood Labs., Inc. v. Battenfe!d Techs., Inc. , No. CIV. 09-3555 MJD/JJK, 2012 WL
2045757, at *8 (D. Minn. May 21 , 2012) (" Sime is au expert in one pertinent aspect of the relevant field
of mi-printing. Because Sime is an expe1i in a pertinent aspect of the relevant aii, although not an
expert in the entire field ai1, which necessarily includes shooting targets, his testimony will be relevant
and useful."); Orozco, 2009 WL 764670, at *l ("'Pertinent' is defined as 'pertaining to the issue at hand;
relevant.' There is no genuine issue of material fact as to whether both orthodontics and computer
programming/biomedical engineering meet this low threshold, and the positions of both paities as to the
expert witnesses made that abundantly cleai-." (quoting Black's Law Dictionary 1165 (7th ed. 1999))).
11

(See Mikulka Deel. Ex. A at 5.)

12

This is not to say, of course, that the functionality analysis encompasses only a holistic approach to
detennining the utility of the patent. See ZProdux, Inc. v. Make-Up Art Cosmetics, Inc. , No. CV 1300734 DDP RZX, 2013 WL 5941049, at *4 (C.D. Cal. Nov. 5, 2013) ("Z Produx's argument is
unavailing because it mistakenly assumes that it is the ftmctionality of the device as a whole, rather than
the functionality of the elements at issue, that matters for the constmction of a design patent."). But an
expert must be able to testify competently about the "utilitaiian purpose of the ai1icle" in order to
detennine whether certain elements aie "dictated" by that purpose. L.A. Gear, 988 F .2d 111 7, 1123.
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Januaiy 29, 2015

experience with buoyant devices and the like is not sufficiently related to personal
flotation devices to render him qualified as an expert. 550 F.3d at 1362; see also SunMate Corp. v. Koolatron Corp., No. CV 10-4735-JST JCGX, 2011WL3322597, at *6
(C.D. Cal. Aug. 1, 2011) (finding an expert unqualified despite over thirty years of
experience in the "general[]" "relevant discipline [of] product design" because she lacked
any experience in the "more specific[]" subject of the patents, which was "design of the
prior art-1950s refrigerators and soda cans"). Accordingly, the Court finds that Mr.
Bressler is not qualified in the pertinent art of personal flotation device design, and that
his testilnony must therefore be stricken. See Ormco, 2009 WL 9294893, at *4 ("[I]f any
of the challenged witnesses fail to qualify as an expert in the pertinent art, the Court inust
strike his testimony.").

V.

CONCLUSION

For the reasons discussed above, Plaintiffs motion is GRANTED. The Court
hereby STRIKES the expert report and any testimony of Defendanf s expert witness,
Peter Bressler.
The hearing set for Febntary 2, 2015 is VACATED.

IT IS SO ORDERED.
Initials of Preparer

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LINK:

UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES -GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Present: The Honorable

Date

Febrnary 9, 2015

BEVERLY REID O 'CONNELL, United States Disnict Judge

Renee A. Fisher

Not Present

N/A

Deputy Clerk

Court Reporter

Tape No.

Attorneys Present for Plaintiffs:

Attorneys Present for Defendants:

Not Present

Not Present

Proceedings:

(IN CHAMBERS)

SUPPLEMENTAL CLAIM CONSTRUCTION ORDER


I.

INTRODUCTION

Pending before the Court are the parties' proposed supplemental Markman
constructions for the claim of U.S. Patent No. D623'7 14 (the "D '7 14 patent"). (See Dkt.
Nos. 62, 64.) After considering the parties' moving and opposing papers, as well as oral
argument fr01n the Court's February 3, 20 15 hearing, the Court construes the contested
patent claim as follows.

II.

BACKGROUND

Plaintiff Sport Dimension, Inc. ("Sport Dimension") is a sports equipment and


apparel company that has been operating in Southern California for sixteen years.
(Compl. if 6.) Sport Dimension develops, manufactures, sells, and distributes watersports-related equipment, including wet suits, personal floatation devices ("PFDs"), body
boards, sea scooters, masks, and fins. (Comp!. if 7.) Sport Dimension sells many of its
products under the Body Glove brand. (Compl. ~ 7.)
Defendant The Coleman Company, Inc. ("Coleman") is a Delaware corporation
that sells and distributes outdoor sporting equipment, including camping equipment and
PFDs. (Answer ~ii 2, 8.) Coleman is the owner of all rights, title, and interest in the
D '714 patent, which is titled "Personal Flotation Device." (Answer if 9; Compl. Ex. A.)
Among other products, Coleman sells a child PFD called the "Puddle Jumper," which it
asserts is covered by the D '7 14 patent. (Answer iii! 10, 12.)

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LINK:

UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febmary 9, 2015

On August 9, 2013, Coleman sent Sport Dimension a letter accusing one of Sport
Dimension's PFDs designed for children (the "Body Glove PFD") of infringing
Coleman's D'714 patent and demanding that Sport Dimension cease and desist all
"manufacturing, importing, distributing, selling and/or offering for sale in the United
States" of the Body Glove PFD. (Compl. ifif 13, 14.) Sport Dimension and Coleman then
exchanged correspondence regarding Sport Dimension's alleged infringement between
August 2013 and December 2013. (Compl. if 16.)
On January 21 , 2014, Sport Dimension filed this lawsuit against Coleman seeking
declaratory relief. (Compl.) Specifically, Sport Dimension requests declaratory
judgment establishing (1) that Sport Dimension is not infringing the D '714 patent, and
(2) that the D ' 714 patent is invalid. (Compl. ifif 19-28.)
On October 10, 2015, the parties jointly requested a claim construction hearing
pursuant to Markman v. Westview Instruments, Inc. , 517 U.S. 370 (1996). (Dkt. No. 35 .)
The sole subject of this hearing was how to construe the D '714 patent. The parties
briefed this issue and submitted the following proposed constructions:
Sport Dimension's Proposed Construction
1. Arm Band Attachment

Coleman's Proposed Construction

The aim bands aie attached vertically with a


triangular shaped material attached to the body
of the personal flotation device ("PFD").

2. Arm Band Edges


The aim bands are curved at the ends and do
not include hard edges.

3. Arm Bands Tapering

The omamental design for a personal


flotation device as shown in Figs. 1-8. The
broken line showing is for illustrative
pmposes only and fo1ms no pait of the
claimed design.

The aim bands gradually taper thinner and


symmetrically on both sides on the bottom
po1tion of the aim bands.
The tapering of the ann bands is functional
because it is necessaiy for ease of movement,
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febmary 9, 2015

manufacturing, comfort, secure fit, and it


naturally fonns that design.

4. ArmBands
The ann bands are functional and not
ornamental because they are designed to meet
the required buoyancy standards, for safety,
secure fit, comfort and to serve as a swim aid.
The rum band attachments are functional and
not ornamental because they prevent arm
bands from slipping off. The rum band
placement is functional and not ornamental
because it is required for perfo1mance,
comf01t, and fit.
5. No Vertical Edges
There is no gathering ofve1tical edges at the
point where the PFD torso and aim bands
attach.

6. Top Front Torso


The top of the upper torso of the PFD is
straight across, without a sloped edge or a
curve until the point just before where the top
of the torso meets the triangular-shaped
material connected to the ann bands.

7. Side Torso
The side torso slopes clown from the top to the
bottom where it meets the strap, declining in
height from the highest point. The downward
slope of the sides is functional and not
ornamental in that it is necessaiy to fit the PFD
underneath the user's anns and to promote
movement.
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febmary 9, 2015

8. Back View
The PFD provides for an open back design,
consisting of a buckle com1ected to the strap,
and a strap connected to the ends of the PFD
body and not overlapping the torso material.
The open back is functional and not
ornamental because it keeps the weruer cool
and provides for ventilatioIL

9. Arm Band Placement


The ann bands rest in an elevated fashion
above the side torso, with the rum band holes
fully visible from the side view.
10. Arm Band Placement
When the PFD is buckled, the rum bands are
elevated so that about 50% of the rum band
itself rests above the side torso.
11. Connection between the Front and
Side Torso
The top of the front torso angles down sha1ply
at the point it meets the side of the torso.

In addition, Sport Dimension 's Complaint provides the following eight figures that
accompany the D'714 patent and which are referenced in Coleman's proposed
constn1ction, (see Compl. Ex. A; Dkt. No. 35 at 2):

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNL.\
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

FIG. 8

Date

Febmaiy 9, 201 5

FIG. 1

FIG. 2

FIG. 3

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LINK:

UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

FIG. 4

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FIG. 5

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LINK:

UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febma1y 9, 2015

In support of its more-detailed proposed construction, Sport Dimension argued


both that the Court should filter out any functional elements of the D'714 patent and that
Coleman had made certain prosecution disclaimers that limited the scope of the D'714
patent. (See Dkt. No. 39.) Coleman opposed both arguments and asserted that it was
premature to consider the issue of functionality because Coleman had not yet conducted
adequate discovery on the issue. (Dkt. No. 36.) After consideration of the briefs and the
parties' oral argument on the inatter, the Court determined that Coleman had not made
any prosecution disclaimers. (Dkt. No. 59 at 17.) With regard to functionality, however,
the Court deemed it premature to consider the issue because discovery had not yet been
completed. (Dkt. No. 59 at 13-14.) Consequently, the Court deferred ruling on the
functionality of aspects of the D' 714 patent until after the parties had had the opportunity
to conduct sufficient discovery. (Dkt. No. 59 at 14.)
On January 12, both parties submitted their supplemental claim construction briefs.
(Dkt. Nos. 62, 64.) Sport Dimension also filed a motion to strike and exclude the
testimony of Coleman's expert, Peter Bressler, whom Coleman retained to testify about
the functionality of certain aspects of the D'714 patent. (Dkt. No. 66.) The basis of
Sport Dimension's motion was that Mr. Bressler, an individual who wielded undeniable
expertise in the field of industrial design, nevertheless was unqualified to render an
opinion with regard to the patent at issue because he had no experience whatsoever in the
field of PFDs. (Dkt. No. 66.) On January 29, 2015, the Court granted this motion on the
ground that Mr. Bressler' s general expertise in industrial design was insufficient to
qualify hitn to testify regarding PFD design under the Federal Circuit's ruling in
Sundance, Inc. v. DeMonte Fabricating Ltd. , 550 F.3d 1356, 1363 (Fed. Cir. 2008).
(Dkt. No. 80.) The Court then held oral argument on this matter on February 3, 2015.

Ill.

LEGALSTANDARD

Claim construction is a pure question of law, reserved for the courts, 1'1arkman,
517 U.S. at 372, although it may also require resolution of "subsidiary factual disputes,"
Teva Pharm. USA, Inc. v. Sandoz, Inc. , 135 S. Ct. 831, 838 (2015). The purpose of claim
construction is to determine the meaning and scope of the patent claims asserted to be
infringed. 02 Micro Int'l, Ltd. v. Beyond Innovation Tech. Co. , 521F.3d1351 , 1360
(Fed. Cir. 2008). "Ultimately, the interpretation to be given a term can only be
determined and confirmed with a full understanding of what the inventors actually
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febmary 9, 2015

invented and intended to envelop with the claim." Phillips v. AWH Corp. , 415 F.3d
1303, 1316 (Fed. Cir. 2005). Accordingly, a claim should be construed in a 1nanner that
stays true to the claim language and most naturally aligns with the patent's description
of the invention." Id. Yet while the specification may describe a preferred embodiment,
the claims are not necessarily limited only to that embodiment. Id. at 1323; see also
Prima TekIL L.L.C. v. Polypap, S.A.R.L. , 318F.3d1143, 1151 (Fed. Cir. 2003) ("The
general rule, of course, is that claims of a patent are not limited to the preferred
embodiment, unless by their own language.").
In construing disputed terms, a court looks first to the claims themselves, for "[i]t
is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to
which the patentee is entitled the right to exclude."' Phillips, 415 F .3d at 1312 (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc. , 381F.3d1111 , 1115 (Fed.
Cir. 2004)). Generally, the words of a claim should be given their "ordinary and
customary tneaning," which is "the meaning that the term[sJ would have to a person of
ordinary skill in the art in question at the time of the invention." Id. at 1312-13. In some
instances, the ordinary meaning to a person of skill in the art is clear, and claim
construction may involve "little more than the application of the widely accepted
meaning of commonly understood words." Id. at 1314.

In many cases, however, the meaning of a term to a person skilled in the art will
not be readily apparent, and a court must look to other sources to determine the term's
meaning. See id. Under these circumstances, a court should consider the context in
which the term is used in an asserted claim or in related claims, bearing in mind that "the
person of ordinary skill in the art is deemed to read the claim term not only in the context
of the particular claim in which the disputed term appears, but in the context of the entire
patent, including the specification." Id. at 1313. Indeed, the specification "'is always
highly relevant'" and '"[u]sually ... dispositive; it is the single best guide to the meaning
of a disputed term."' Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc. , 90 F .3d
1576, 1582 (Fed. Cir. 1996)). Where the specification reveals that the patentee has given
a special definition to a claim term that differs from the meaning it would ordinarily
possess, "the inventor' s lexicography governs." Id. at 1316. Likewise, where the
specification reveals an intentional disclaimer or disavowal of claim scope by the
inventor, the invention as revealed through the specification is dispositive. Id.
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febmary 9, 2015

A court may also consider the patent's prosecution history, which consists of the
complete record of proceedings before the United States Patent and Trademark Office
and includes the cited prior art references. Id. at 1317. A court may consider prosecution
history where it is in evidence, for the prosecution history "can often inform the meaning
of the claim language by demonstrating how the inventor understood the invention and
whether the inventor limited the invention in the course of prosecution, making the claim
scope narrower than it otherwise would be." Id.
"In some cases, .. . the district court will need to look beyond the patent's intrinsic
evidence and to consult extrinsic evidence in order to understand, for example, the
background science or the meaning of a tern1 in the relevant art during the relevant time
period." Teva Pharm. USA , 135 S. Ct. at 841. Expert testimony 1nay be particularly
useful in " [providing] background on technology at issue, ... explain[ing] how an
invention works, ... [and] establish[ing] that a particular tern1 in the patent or the prior
art has a particular meaning in the pertinent field." Phillips, 415 F.3d at 1318. Although
a court may consider evidence that is extrinsic to the patent and its prosecution history,
such evidence is considered "less significant than the intrinsic record" and "less reliable
than the patent and its prosecution history in determining how to read claim terms." Id. at
1317, 1318 (internal quotation marks and citations omitted). Thus, while extrinsic
evidence 1nay be useful in claim construction, ultimately "it is unlikely to result in a
reliable interpretation of patent claim scope unless considered in the context of the
intrinsic evidence." Id. at 1319. Any expert testimony "that is clearly at odds with the
claim construction mandated by the claims themselves, the written description, and the
prosecution history" will be significantly discounted. Id. at 1318 (internal quotation
marks and citation omitted).
A design patent in particular protects only "the novel, ornamental features of the
patented design," not the functional elements. OddzOn Prods. , Inc. v. Just Toys, Inc. ,
122 F.3d 1396, 1405 (Fed. Cir. 1997) (citation omitted). "Where a design contains both
functional and nonfunctional elements, the scope of the claim must be construed in order
to identify the nonfunctional aspects of the design as shown in the patent." Egyptian
Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008) (en bane) (quotation
omitted). If a certain design "configuration is made imperative by the elements which it
combines and by the utilitarian purpose of the device," then it is functional and does not
fall within the scope of a design patent. Lee v. Dayton-Hudson Corp. , 838 F .2d 1186,
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LINK:
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febma1y 9, 2015

1188 (Fed. Cir. 1988); Chengv. AIM Sports, Inc., No. CV 10-3814 PSG (PLAx), 2011
WL 1429647, at *3 (C.D. Cal. Apr. 14, 2011). " If, on the other hand, ' there are several
ways to achieve the function of an article of 1nanufacture, the design of the article is more
likely to serve a primarily ornamental purpose,"' and it may thus be protected by an
applicable design patent. Richardson v. Stanley Works, Inc., 610 F. Supp. 2d 1046, 1049
(D. Ariz. 2009) (quoting L.A. Gear, Inc. v. Thom McAn Shoe Co. , 988 F.2d 1117_, 1123
(Fed. Cir. 1993)), aff'd 597 F.3d 1288 (Fed. Cir. 2010).
"In construing a design patent claim, the scope of the claimed design encompasses
its visual appearance as a whole, and in particular the visual impression it creates."
Contessa Food Prods., Inc. v. Conagra, Inc. , 282 F.3d 1370, 1376 (Fed. Cir. 2002)
(internal quotation marks and citation omitted). Generally, courts construing design
patents should not "attempt to 'construe' a design patent claim by providing a detailed
verbal description of the claimed design." Egyptian Goddess, 543 F.3d at 677; accord
Croes, Inc. v. Int'! Trade Comm'n, 598F.3d1294, 1302 (Fed. Cir. 2010) ("This court has
cautioned, and continues to caution, trial courts about excessive reliance on a detailed
verbal description in a design infringement case."). Rather, design patent construction
must be governed by drawings or other illustrations "adapted to a pictorial setting."
Croes, 598 F.3d at 1302.

IV.

DISCUSSION

The only issue presented in the parties' briefing is whether the Court should filter
out any functional elements of the D'7 l 4 patent in its claim construction. Specifically,
Sport Dimension argues that the design's armbands, the armbands' attachment and
configuration, and the tapered configuration of the side torso are all functional elements
that cannot receive design patent protection. As discussed above, "[w]here a design
contains both functional and non-functional elements, the scope of the claim must be
construed in order to identify the non-functional aspects of the design as shown in the
patent," OddzOn P rods., 122 F.3d at 1405~ accord Z Produx, Inc. v. Make-Up Art
CosmeticsJ Inc., No. CV 13-00734 DDP RZX, 2013 WL 5941049, at *4 (C.D. Cal. Nov.
5, 2013) ("'A design patent protects only the novel, ornamental features of the patented
design,' not its functional elements." (quoting OddzOn Prods., 122 F.3d at 1405)), aff'd,

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LINK:

UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febma1y 9, 2015

568 F. App'x 897 (Fed. Cir. 2014). 1 Thus, as part of its claim construction, the Court
must 'factor[] out the functional aspects" of the D '714 patent design. Richardson v.
Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010).2
A design is deemed to be functional "when the appearance of the claimed design is
dictated by the use or purpose of the article." L.A. Gear, 988 F.2d at 1117 (citation and
quotation marks omitted). 3 Moreover, this determination "of whether the patented design
is dictated by the function of the article of manufacture must ultimately rest on an
analysis of its overall appearance." Berry Sterling C01p. v. Pescor Plastics, Inc., 122
F.3d 1452, 1455 (Fed. Cir. 1997). Nevertheless, in factoring out the functional aspects of
a design patent during claim construction, the Court must consider the "functionality of
the elements at issue." Z Produx, 2013 WL 5941049, at *4 (emphasis added).

See also Egyptian Goddess, 543 F.3d at 680 ("Apart from attempting to provide a verbal description of
the design, a trial court can usefully guide the finder of fact by addressing a number of other issues that
bear on the scope of the claim .... [including] distinguishing between those features of the claimed
design that are ornamental and those that are purely functional . .. ."); L.A. Gear, 988 F.2d at 1123
("The elements of the design may indeed serve a utilitarian pmpose, but it is the ornamental aspect that
is the basis of the design patent."); Lee v. Dayton-Hudson Corp. , 838F.2d1186, 1188-91 (Fed. Cir.
1988) ("[I]t is the non-functional, design aspects that are pertinent to determinations of
infringements . . . . A device that copies the utilitarian or functional features of a patented design is not
an infringement . . . . [While] infringement can be found for designs that are not identical to the
patented design, such designs must be equivalent in their ornamental, not functional, aspects.").
2

Coleman argued at oral argument that Sport Dimension must prove functionality by clear and
convincing evidence. (See, e.g. , Dkt. No. 83-1 at 3.) While it is true that "invalidity of a design patent
must be established by clear and convincing evidence," that standard applies only because an issued
patent is given a statuto1y presumption of validity. L.A. Gear, 988 F.2d at 1123 (citing 35 U.S.C.
282). There is no preslm1ption that a claim has any particular scope, nor could there be. Rather, as
discussed above, the scope of the claim is a matter of law for the Comt to decide. See Markman, 517
U.S. at372.
3

Although Coleman repeatedly quotes Egyptian Goddess for the proposition that elements are excluded
under this analysis only if they are deemed to be "purely functional," Egyptian Goddess, 543 F.3d at
680, the proper standard remains whether "the claimed design is 'dictated by' the utilitarian pmpose of
the article," High Point Design LLC v. Buy ers Direct, Inc. , 730F.3d1301, 1315 (Fed. Cir. 2013)
(quoting L.A. Gear, 988 F.2d at 1123).

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febma1y 9, 2015

The Federal Circuit has identified a "list of considerations" for determining


whether a design is functional. PHG Techs., LLC v. St. John Cos. , 469 F.3d 1361, 1366
(Fed. Cir. 2006) (internal modification omitted). These considerations include:
(1) "whether the protected design represents the best design"; (2) "whether alternative
designs would adversely affect the utility of the specified article"; (3) "whether there are
any concomitant utility patents"; (4) "whether the advertising touts particular features of
the design as having specific utility"; and (5) "whether there are any elements in the
design or an overall appearance clearly not dictated by function." Id. (emphasis omitted).
The court in PHG noted in particular that'"[c]onsideration of alternative designs, if
present, is a useful tool that may allow a court to conclude that a challenged design is not
invalid for functionality. ' 'When there are several ways to achieve the function of an
article of manufacture, the design of the article is more likely to serve a primarily
ornamental purpose.'" Id. at 1367 (internal modifications and citations omitted) (quoting
Berry Sterling, 122 F.3d at 1455; Rosco, Inc. v. J..1irror Lite Co., 304 F.3d 1373, 1378
(Fed. Cir. 2002)). With these precepts in mind, the parties each submitted various
arguments supported by expert witness testimony4 regarding the functionality of the
contested elements of the D '7 14 patent.

A. The Particular Meaning of the Term "Personal Flotation Device"


A principal dispute between the parties concerns an additional factor that Sport
Dimension attempts to shoehorn into this analysis. In its legal standard section for
determining functionality, Sport Dimension claims that "where federal regulations govern
the performance of the article of manufacture, the functionality of the design elements
must be considered in light of those standards." (PL 's Br. at 3.) In support of this
statement, Sport Dimension cites an order by the District of Colorado adopting in part
and rejecting in part a recommendation by a magistrate judge. Shop *TV, Inc. v. Bed Bath
& Beyond, Inc. , No. CIV. 09CV00057REBCBS, 2010 WL 489539, at *l (D. Colo. Feb.
3, 2010). Indeed, Sport Dimension discusses Shop*TVat length later in its brief for the
purpose of arguing that when a design's utility includes compliance with federal
4

The Court does not consider the testimony or report of Coleman's expe11, Peter Bressler. (See Dkt. No.
80.) Nor does the Com1 consider argument by Coleman that is based on Mr. Bressler' s conclusions.
Neve11heless, the Court still considers Coleman's many arguments regarding functionality, iiTespective
of whether Coleman also discussed these matters with Mr. Bressler.
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febmary 9, 2015

regulations, "proposed alternative designs that do not accomplish that function should not
be considered." (Pl.'s Br. at 8-9.) This order from Shop*TV, however, was later
withdrawn by the same court that issued it. See Shop*TV, Inc. v. Bed Bath & Beyond,
Inc. , No. 09-CV-00057-REB-CBS, 2010 WL 582165, at *l (D. Colo. Feb. 17, 2010).
Accordingly, Shop*TV does not provide sound authority on which Sport Dimension may
rely, and Sport Dimension does not cite any other authority in support of this additional
requirement for determining functionality.
Moreover, Coleman relies on established caselaw dictating that, in detennining
functionality, courts "should address the article in the claimed design, which means,
realistically, the article and its configuration as shown in the drawings," and "cannot use
the limitations of the commercial embodiment of the underlying article of manufacture to
impose limitations on the scope of the design patent." Berry Sterling, 122 F.3d at 1455. 5
Thus, Coleman is correct to note that external standards applicable to the commercial
embodiment of a patent may not impose limitations on the scope of that patent.
Nevertheless, Sport Ditnension argues that compliance with federal regulationshere, the regulations promulgated by the United States Coast Guard ("USCG")-is an
integral part of the fimction of the patent at issue and therefore must be considered in
determining the functionality of certain aspects of the patent. In support of this argument,
Sport Dimension first notes that the functionality analysis requires determination of
whether "there are several ways to achieve the function ofan article ofmanufacture."
Cheng, 2011 WL 1429647, at *3 (emphasis added). Sport Dimension then asserts that
5

Accord Unique Functional Prods., Inc. v. Mastercrafl Boat Co., Inc., 82 F . App'x 683, 689 (Fed. Cir.
2003) ("It is of no consequence that those extraneous features are present in [Plaintiff's] commercial
embodiment."); ACS Hosp. S:ys. Inc. v. Montefiore Hosp., 732 F.2d 1572, 1578 (Fed. Cir. 1984) (finding
enor by the district comi in comparing the accused device with the commercial embodiment of the
patent, rather than to the claims of the patent); Hutzler Mfg. Co. v. Bradshaw Int'/, Inc. , No. 11 CIV.
7211PGG,2012 WL 3031150, at *10 (S.D.N.Y. July25, 2012) ("Along line of cases counsels that, in
perfonning a side-by-side comparison, comis generally should compare the design set fo1th in the
patent-that is, the drawings-with the accused product, rather than compruing the embodiment of the
patented design and the accused product."); Dekalb Genetics Corp. v. Syngenta Seeds, Inc., No.
4:06CV01191ERW, 2007 WL 4564196, at *26 (E .D. Mo. Dec. 21 , 2007) ("[T]he Federal Circuit
cautions against trial judges making claim constmction dete1minations on the basis of the commercial
embodiment of the invention.").
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febmary 9, 2015

the "function of the article of manufacture" in this case is a PFD, noting that the patent is
titled "Personal Flotation Device" and the claim describes it as such. While Coleman
disputes this argun1ent on the basis that a patent' s scope is not limited by its title or claim,
Coleman offers no possible characterization of the patent other than "personal flotation
device." Sport Dimension then further argues that the term "personal flotation device"
has a "particular 1neaning" in the industry that incorporates within its definition a
requirement that it comply with USCG regulations. (PL 's Br. at 6.) Specifically, Sport
Dimension cites the report of its expert witness, Ms. Susan Balistreri, who states:
17. PFDs. PFD is a regulatory term used to identify devices designed
and approved for use by recreational boaters, sailors, canoeists, kayakers,
water skiers, wake boarders, personal watercraft operators and riders, and
participants in other tow-behind activities. The primary function of a PFD
of the type depicted in the D'714 patent is to (1) provide adequate buoyancy
to keep the user afloat, and (2) provide for secure and comfortable fit.
18. PFD Requirements. There are federal and state carriage and
wear requirements for PFDs.
(Mikulka Deel. Ex. FF ifif 17-18.) Expert testimony such as this is often useful in
"establish[ing] that a particular term in the patent or the prior art has a particular meaning
in the pertinent field." Phillips, 415 F.3d at 1318. Ms. Balistreri's testimony thus
provides persuasive evidence that the term "personal flotation device" has a particular
meaning in the PFD industry that necessarily requires that the device have been
"approved for use" under the appropriate regulations.
This is a distinct argument from that which Coleman primarily rebuts-i.e., that
any alternative design must comply with USCG regulations because the commercial
embodiment of the D '714 patent complies with those regulations. 6 Yet Coleman also
takes issue with Ms. Balistreri's characterization of the term. For exam le, Coleman
notes that Ms. Balistreri conceded during her deposition that
6

(See Def. 's Br. at 4 ("By requiring alternative design elements to be independently certifiable by UL,
Ms. Balistreri has effectively limited the scope of the D'714 Patent on the Puddle Jumper commercial
device and the UL requirements for its manufacture in violation of this well-established precedent.").)
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LINK:

UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febrnary 9, 2015

(Annis Deel. Ex.Cat 107:2-108:24.)


And a review of the D'7 14 patent reveals that it does not refer to any external standards
such as USCG regulations. (See Compl. Ex. A.) As discussed above, however, if the
term "personal flotation device" has a particular nleaning in the industry that mandates
compliance with these regulations in order to qualify for that term, then those standards
are incorporated into the term. Coleman also ar es that Ms. Balistreri bases some of her
o inions on her anal sis of the "UL file," which
(See
Annis Deel. Ex.Cat 126:20-23; Dkt. No. 46 at 6.) In fact, Sport Dimension admits that
Ms. Balistreri's analysis was based on the Puddle Jumper as the "commercial
embodiment" of the D '7 14 patent. (Pl.'s Br. at 7.) As previously explained, Sport
Din1ension 'ccannot use the limitations of the commercial embodiment of the underlying
article of manufacture to impose liinitations on the scope of the design patent." Berry
Sterling, 122 F.3d at 1455. That is, the scope of the patent will not be limited to the
specific utility features in the Puddle Jumper device.
Nevertheless, Ms. Balistreri's testimony is sufficient, for purposes of this claim
construction and in the absence of any rebuttal evidence, to demonstrate that the term
"personal flotation device" incorporates certain requirements imposed by federal
regulations. The USCG defines the term " [p]ersonal flotation device" as "a device that is
approved by the Commandant under 46 CFR part 160." 33 C .F .R. 175 .13. And 46
CFR part 160 imposes certain requirements on the types, models, sizes, and dimensions
of personal flotation devices, 46 C.F .R. 160. 064-2; their designs, constructions,
material, buoyancy, and workmanship, id. 160.064-3; their marking labels and
durability, id. 160.064-4; and the examination, testing, and inspections that they must
undergo, id. 160.064-6. The USCG regulations further state that USCG approval must
be secured by applying to the Underwriters Laborato "UL" for certification, id.
160.064-7, which is presumably why
So while the scope of the D '714 patent is not limited to the commercial
embodiment of the Puddle Jumper, it nevertheless must be certifiable by the UL in
order to comply with the applicable federal regulations and constitute a "personal
flotation device." Accordingly, the Court finds that any alternative design to the D'714
patent must comply with the requirements specified in 46 C.F.R. part 160.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febma1y 9, 2015

B. Alternative Designs
To demonstrate that the features of the D'714 patent are ornainental rather than
functional, Coleman has submitted several alternative designs that it contends would
provide the same utility. As discussed above, "' [w ]hen there are several ways to achieve
the function of an article of manufacture, the design of the article is more likely to serve a
primarily ornamental purpose."' PHG, 469 F.3d at 1367 (quoting Rosco, 304 F.3d at
1378). But the Court will not consider alternatives that "would adversely affect the
utility" of the design. Id. Moreover, these alternatives must have existed at the time of
the patent, as they must have presented alternative designs to the inventor of the patent.
See Smith v. M & B Sales & 1\1fg. , No. C 89 0293 MHP (WDB), 1990 WL 11112, at *2
(N.D. Cal. Jan. 31 , 1990) ("If the evidence is clear that the inventors could have
accomplished the purpose that a given feature accomplishes only in one way, so that they
had no alternatives, the court must conclude that that feature is functional (utilitarian) and
cannot help support the validity of the design patent." (emphasis added)); 1-23 Chisum
on Patents 23.03 n.4 (quoting Smith , 1990 WL 11112, at *2). With these principles in
mind, the Court will consider the alternatives presented by Coleman.
Coleman presents a number of alternative designs that it contends could achieve
the same utility as the D' 714 patent. For example, in its supplemental claim construction
brief, Coleman identifies the following seven alternative designs:

Kiemer

Wessman

The Aqua Tot


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The Tadpool
CIVIL ~fil\'UTES - GENERAL

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LINK:
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Kelso D '028 Patent

Date

DiForte, Jr.

Febrnaiy 9, 2015

"Water Ski Belt"

(See Def. 's Br. at 9, 10, 14.) Coleman cites these designs as alternatives to the D'714
patent to argue several points regarding the contested elements at issue. 7

1. The Armbands
First, Coleman argues that the armbands in the D '714 patent are not functional
because a PFD does not need to have armbands to provide the same buoyancy and
stability. Coleman also cites the testimon of S ort Dimension' s ex ert, Ms. Balistreri,
to su ort its contention that
. (Def.'s Br. at 7 (citing Annis Deel. Ex.Cat 116:16-25).) To
constitute a viable alternative, however, an alternative design must be able to produce the
same effect as the individual element that is contested. See Z Produx, 2013 WL 5941049,
at *4. In Z Produx, for example, the court addressed the functionality of a cos1netics
holder. Id. In rejecting the defendant's argument that there were plenty of alternative
designs for a cosmetic holder that did not include a clear top and empty compartment, the
court reasoned that the defendant had "mistakenly assume[d] that it [wa]s the

Coleman argues that any alternatives to the design need not have been in existence at the time of the
invention, noting that the caselaw cited by Sport Dimension on this point involves an invalidity analysis,
which is not at issue here. Yet caselaw is not necessaiy to make clear that the alternatives must have
existed at the time of the invention to provide evidence that alternatives were available to a particular
design. With constant advancements in technology, it defies logic to imp01i an alternative design
existing today back to the time at which a patent was invented as evidence that the inventor could have
used today's design. That the design here may not be as complex, or that the time differential between
its invention and the introduction of later alternative designs may not be substantial, is immate1ial. The
principle is the same ai1d founded in logic: to demonstrate that the inventor could have used alternative
designs, those designs must have existed at the time the inventor was selecting the design for the patent
in question.
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febma1y 9, 2015

functionality of the device as a whole, rather than the functionality of the elements at
issue, that matters for the construction of a design patent." Id.
Similarly, in OddzOn Products, Inc. v. Just Toys, Inc. , the Federal Circuit rejected
the notion that the arrow-like tail on a football was ornamental and not functional because
it was "not required for a tossing ball.'., In doing so, the court reasoned:
While OddzOn correctly states that there are many ways of designing
"tossing balls," it is undisputed that the ball in question is specifically
designed to be thrown like a football, yet travel farther than a traditional
foam football . It is the football shape combined with fins on a tail that give
the design these functional qualities. The tail and fins on OddzOn's design
add stability in the same manner as do the tail and fins found on darts or
rockets. They are no less functional simply because "tossing balls" can be
designed without them.
122 F.3d at 1406. Here, as in OddzOn, the armbands in the D'714 patent are no less
functional simply because PFDs can be designed without them. And in determining the
functionality of the armbands, the Court must consider what effect the armbands have.
That is, the fact that other PFDs may not have armbands yet still maintain buoyancy does
not render the armbands ornamental; the armbands may have an additional function akin
to making the ball travel farther in OddzOn or a clear top allowing a user to see through
the cosmetics compartment in Z Produx.
ort Dimension's ex ert, Ms. Balistreri, asserts that
Annis Deel. Ex. Cat 152:2-21.) Because Coleman has not
presented any evidence that the alternatives lacking armbands provide the same kind of
effect, the Court concludes that any design without armbands "would adversely affect the
utility" of the design. PHG, 469 F.3d at 1367 (quoting Rosco, 304 F.3d at 1378).
Accordingly, the Court finds that the armbands are functional aspects of the D'714 patent
and must be factored out of the Court's claim construction.

2. The Armband Attachments

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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febmary 9, 2015

Second, Coleman points to the Kierner, Wessman, Aqua Tot, and Tadpool designs
shown above to argue that there are multiple alternative designs available to create
armband attachments. (Def. ' s Br. at 8-11.) As Coleman notes, each of these devices
incorporates armbands but with different attachments than those depicted in the D '714
patent. For example, the Kien1er design features armbands that are integral with the
design; the armbands on the Wessman device are attached by strapping; the Aqua Tot
attaches its armbands with releasable buckles; and the Tadpool's armbands are attached
to the device' s torso pad with t-shirt sleeves. All of these designs differ from the D ' 714
patent in the way their armbands are attached.
Nevertheless, Sport Dimension argues that none of these alternatives advances the
same utility as the armbands in the D '714 patent-to provide armbands that do not slip
off and are not prone to damage-while also complying with USCG regulations. In
support of this argument, Sport Dimension presents Ms. Balistreri's expert report, in
which she opines that the alternatives submitted by Coleman are "not sufficient on their
own to meet the intended function of the D ' 714 Patent design." (Mikulka Deel. Ex. FF
if 48.) As Ms. Balistreri explains:
First, the Kierner patent German Patent No. DE3539528 Al (the "Kierner
Patent") discloses a device with tapered armbands like the D '714 Patent and
one without tapered armbands. Both are insufficient alternatives, however,
because as explained in the file history of the Steger utility patent
application, inflated armbands are problematic because they are prone to
damage and can slip off. Moreover, inflated armbands cannot meet USCG
approval for a device of this type. Therefore, Kierner discloses inflated
armbands and/or inflated armbands fails [sic] to meet the intended function
of a USCG approved device with armbands that fit securely and comfortably
under the arms. As for the Wessman Patent, U.S. Patent No. 4,692,125 (the
"Wessman Patent"), it discloses armbands that do not circle the arms and
instead lay on top of the shoulders, and is therefore inadequate on its own to
meet the intended purpose of the D'714 Patent, which is to provide, among
other things, a USCG-approved device with armbands that fit securely
around the arms.

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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febmary 9, 2015

(Mikulka Deel. Ex. FF if 48.)8 Coleman's only rebuttal to Ms. Balistreri's report is that
her conclusion conflicts with Sport Dimension's expert witness on the issue of
"obviousness," Mr. Wayne Walters, who concluded that the ordinary designer would
look to these patents and their constituent elements to design a flotation device. (Def. 's
Br. at 9 (citing Annis Deel. Ex. H ifif 12, 18).) But the impact that Ms. Balistreri's
opinion may have on any obviousness inquiry is not relevant at this stage, where the
Court is considering only the issue of functionality. Coleman may raise this issue again
should the Court consider the issue of obviousness. At this stage, however, Ms.
Balistreri' s report provides persuasive evidence that the Kierner and Wessman devices
are not suitable alternatives for the armband attachments. (See, e.g. , Mikulka Deel. Ex.
FF if 46 ("I am unaware of any viable alternative designs to the armbands .. . for a PFD
of this type."); Ex. GG ifif 17-26.)
As for the other two alternatives-the Aqua Tot and the Tadpool-Sport
Dimension argues that these designs were not in existence at the time that the D'714
patent was invented and thus cannot provide alternative designs for purposes of the
functionality analysis. See Smith, 1990 WL 11112, at *2; Chisum, supra. The Court
agrees. The Aqua Tot is claimed by Design Patent No. D679,355, which was not issued
until April 2013, (see Mikulka Deel. Ex. MM at SD003135), almost three years after the
patent was issued for the D'714 patent, Con1 l. Ex. A . Similar! , Ms. Balistreri, who
desi!rned the Tad ool, testified that
(See Mikulka Deel.
Ex. HH at41:19-42:1.) Accordingly, none of the designs offered by Coleman appears to
present a viable alternative to the armband attachments depicted in the D '714 patent. In
light of Ms. Balistreri's expert testimony that she is "unaware of any viable alternative
designs to the armbands ... for a PFD of this type," (Mikulka Deel. Ex. FF if 46), and in
the absence of any alternative before the Court that "would [not] adversely affect the
utility" of the design, PHG~ 469 F.3d at 1367, the Court finds that the armband
attachments are functional and must be factored out of the claim construction.

M oreover, the applicant of the D' 714 patent indicated that a device such as the Kiemer that "utilizes an
air-filled bladder" "is not a teaching that is the same as the present claimed invention." (MikuJka Deel.
Ex. TT at COLEMAN0000137.)
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LINK:

UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Cas-e No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febrnaiy 9, 2015

3. The Shape and Tapering of the Armbands


Next, Coleman argues that there were numerous alternative shapes and
configurations in which the armbands could have been crafted, making the shape and
tapering of the armbands in the D'714 patent ornamental rather than functional. In
support of this argument, Coleman cites the testimon of Ms. Balistreri, who conceded
~deposition that
(Annis Deel. Ex. Cat 120: 17-20.) As discussed above, however, that other
PFDs may have differently shaped armbands and still maintain the same buoyancy does
not render the shape ornan1ental. See Z Produx, 2013 WL 5941049, at *4. Moreover,
Coleman does not rebut Sport Dimension' s argument-supported by the testimony of the
inventor, Mr. Steger-that other shapes ma not have been manufacturable at the time,
Mikulka Deel. Ex. VV at 102:15-25
, and that the only material
he could use was polyethylene foam, which "naturally forms a tapered desi when
folded," Pl. 's Br. at 13; accord Mikulka Deel. Ex. HH at 227:21-228:6
Consequently, the evidence suggests that the choices of the shape and tapering of
the am1bands were driven by either what was manufacturable at the time or the choice of
material-polyethylene foam-which was the best (and perha s onl available material
for the device. See Mikulka Deel. Ex. VV at 63: 10-64:25
; PHG, 469 F.3d
at 1366 (stating that a design is likely functional when it "represents the best design");
Lee, 838 F.2d at 1188 (noting that a design is functional if the design "configuration is
made imperative by the elements which it combines and by the utilitarian purpose of the
device").) Accordingly, the Court finds that the shape and tapering of the armbands in
the D'714 patent are similarly fimctional rather than ornamental elements.

4. The Tapered Side Torso


Finally, Coleman argues that there were multiple alternative designs for the side
torso that do not include the tapering incorporated in the D ' 714 patent. As examples,
Coleman provides the Kelso D'028 Patent, the DiForte, Jr., and the "water ski belt,"
which are depicted above. (Def. 's Br. at 14.) Because neither the DiForte, Jr. nor the
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febmary 9, 2015

water ski belt has armbands, however, they do not provide suitable alternatives. See
supra Subsection IV .B .1. Similarly, Ms. Balistreri notes several reasons in her report
why the Kelso D ' 028 Patent is an inadequate alternative for the D '714 patent, including
because it requires coverage on the chest, shoulders, and upper arms. (Mikulka Deel. Ex.
GG 1 20.) The lack of viable alternatives to the tapered side torso thus counsels in favor
of finding that it is a functional element of the D '714 patent.

C. Other Factors of Functionality


In addition to the lack of viable alternatives presented, the Court finds that other
factors also weigh in favor of finding these elements functional rather than ornamental.
As explained by the Federal Circuit in PHG, other factors to consider include whether the
protected design represents the best design, whether there are any concomitant utility
patents, and whether the advertising touts particular features of the design as having
specific utility. 469 F.3d at 1366.

Similarly,
the majority of the designs provided by Coleman also have tapered sides, which indicates
that this feature is also the best representation of the design.
Second, Coleman's application for a utility patent claiming several of the features
in question suggests that these features are functional. See Z Produx, 2013 WL 5941049,
at *5 ("The existence of these prior utility patents covering the elements at issue further
indicate that the clear top and empty base elements are functional. "). In this case,
Coleman' s utility patent application claimed a PFD comprising "right and left armband
flotation pads each having a plurality of stacked, detached, planar flotation pads, that,
when folded to proximate a circle, form an armband flotation pad of tapering thickness."
(Mikulka Deel. Ex. LL at COLEMAN0000065-68 (11 l(d), lO(d), 20(f), 20(g), 25).) It
also described the tapering and configuration as "allow[ing] for enhanced freedom of
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LINK:
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Cas-e No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febma1y 9, 2015

movement of the child's arms as the thinner section is located under each arm." (Dkt.
No. 39-6 at 6.) These statements in the application history of the utility patent also
suggest that the elements discussed are functional, and not ornamental.
Finally, Coleman's advertising of the Puddle Jumper touts particular features of
the underlying design as having specific utility. For exam le, one of Coleman's
advertisements for the Puddle Jum er states that

(Mikulka Deel. Ex.


PP at COLEMAN0000610; accordMikulka Deel. Ex. QQ.) That Coleman chose to
emphasize these features of the product suggests that the elements of the product that
contribute to these features-such as the armbands-are functional. Accordingly, these
additional factors also weigh in favor of finding that the contested elements of the D'714
patent are functional rather than ornamental.

V.

CONCLUSION

For the reasons discussed above, the Court agrees with Sport Dimension that the
armbands, the armband attachments, the shape of the armbands, the tapering of the
armbands, and the tapering of the side torso are all elements that serve a functional rather
than on1amental role in the D'714 patent. Accordingly, the Court adopts the following
clai1n construction that was proffered by Sport Dimension:
The ornamental design for a personal flotation device, as shown and
described in Figures 1-8, except the left and right armband, and the side
torso tapering, which are functional and not ornamental.

IT IS SO ORDERED.
Initials of Preparer

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LINK:
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Present: The Honorable

Date

Febrna1y 13, 2015

BEVERLY REID O'CONNELL, United States Disnict Judge

Renee A. Fisher

Not Present

N/A

Deputy Clerk

Court Repmter

Tape No.

Attorneys Present for Plaintiffs:

Attorneys Present for Defendants:

Not Present

Not Present

Proceedings:

(IN CHAMBERS)

ORDER GRANTING MOTION TO STRIKE EXPERT [88]


Pending before the Court is Plaintiff Sport Dimension, Inc. 's ("Sport Dimension")
motion to strike and exclude the opinions of Peter Bressler, the expert witness hired by
Defendant The Coleman Company, Inc. ("Coleman") to opine on the issues of
functionality, obviousness, and infringement. (Dkt. No. 88.) Coleman opposed this
motion on February 11, 2015, (Dkt. No. 98), and Sport Dimension replied on February
13, 2015, (Dkt. No. 104). After consideration of the papers filed in support of and in
opposition to the instant motion, the Court deems this 1natter appropriate for decision
without oral argument of counsel. See Fed. R. Civ. P. 78; C.D. Cal. L.R. 7-15.
On January 29, 2015, the Court granted Sport Dimension's motion to strike Mr.
Bressler's testimony on the issue of functionality. (Dkt. No. 80.) In doing so, the Court
observed that "it is an abuse of discretion to pennit a witness to testify as an expert on the
issues of noninfringement or invalidity unless that witness is qualified as an expert in the
pertinent art." Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed.
Cir. 2008). Upon review of the parties' papers filed in support of and in opposition to
Sport Dimension's motion, the Court found that Mr. Bressler could not testify because he
was not qualified in the pertinent art of personal flotation devices. (Dkt. No. 80 at 9-12.)
Sport Dimension now seeks to exclude Mr. Bressler's testimony on the issues of
obviousness and infringement in addition to functionality. (Dkt. No. 88.) In Sundance,
the Federal Circuit held that "a witness not qualified in the pertinent art [may not] testify
as an expert on obviousness, or any of the underlying technical questions, such as the
nature of the claimed invention, the scope and content of prior art, the differences
between the claimed invention and the prior art, or the nlotivation of one of ordinary skill
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LINK:
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES-GENERAL
Case No.

CV 14-00438 BRO (MRWx)

Title

SPORT DIMENSION, INC. V. THE COLEMAN COMPANY, INC.

Date

Febma1y 13, 2015

in the art to combine these references to achieve the claimed invention." 550 F.3d at
1364 (footnote omitted): accord Hypertherm, Inc. v. Am. Torch Tip Co. , No. CIV. 05CV-373-JD, 2009 WL 530064, at *l (D.N.H. Feb. 27, 2009) ("To testify as a technical
expert on issues of patent infringement and invalidity, the witness must be 'qualified as
an expert in the pertinent art." ' (quoting Sundance, 550 F.3d at 1363)). As a result, the
Court's previous detennination that Mr. Bressler is not qualified in the pertinent art
necessarily precludes him from testifying on the issues of obviousness and infringement
as well. For this reason, and as explained more fully in the Court's January 29, 2015
order, (Dkt. No. 80), Sport Dimension's motion to strike is GRANTED.
The hearing set for February 17, 2015 is VACATED.
IT IS SO ORDERED.
Initials of Preparer

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Add. 46

Add. 47

Add. 48

CERTIFICATE OF SERVICE
I hereby certify that on June 17, 2015, I caused this document to be
electronically filed with the Clerk of the Court for the United States Court of
Appeals for the Federal Circuit by using the CM/ECF system. Participants in the
case who are registered CM/ECF users will be served by the CM/ECF system. I
further certify that the document was scanned for viruses and is virus-free.
Below counsel will also be served with the Corrected - Confidential Version
of this document via U.S. First Class Mail, postage prepaid at the following
address:
Yuri Mikulka
Manatt, Phelps & Phillips, LLP
Park Tower
695 Town Center Drive, 14th Floor
Costa Mesa, CA 92626
Attorneys for Plaintiff/Appellee
/s/ Michael R. Annis

59

CERTIFICATE OF COMPLIANCE
1.
This brief complies with the type-volume limitation of Fed. R. App. P.
32(a)(7)(B) because this brief contains 12,223 words, excluding the parts of the
brief exempted by Fed. R. App. P. 32(a)(7)(B)(iii) and Fed. Cir. R. 32(b).
2.
This brief complies with the typeface requirements of Fed. R. App. P.
32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because this
brief has been prepared in a proportionally spaced typeface using Microsoft Word
2010 in 14-point Times New Roman font.
3.
This brief complies with the requirements of Fed. Cir. R. 32(e)(3)
because this brief has been generated as a PDF from the original word processing
file, so that the text of the electronic version of the brief may be searched and
copied, and because this brief has been scanned for viruses that confirmed the brief
is virus-free.
HUSCH BLACKWELL LLP
/s/ Michael R. Annis

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