Decision Date: October 20, 2014

Court: Northern District of Illinois

Patents: D564,834 and D609,045

Holding: Defendants’ proposed claim construction is REJECTED


Plaintiff Weber-Stephen Products LLC sued defendants Sears Holding Corporation and  Sears, Roebuck and Co. for infringement of U.S. Design Patent No. D564,834 (“the ’834  patent”), entitled “Shroud for a Barbecue Grill,” and U.S. Design Patent No. D609,045  (“the ’045 patent), entitled “Grill.” Weber also alleged trade dress infringement and  infringement of a utility patent. After the parties briefed the issue of claim construction,  the court held an oral hearing and construed the claims. Sears sought to exclude  fasteners from the scope of the claimed design in both patents and also sought  to exclude a horizontal bar from the scope of the claimed design in the ’045 patent.

Both the ’834 patent and the ’045 patent include fasteners on a riveted band along the outer  edges of the grill shroud. Sears asked the court to construe the claims as excluding this feature  from the claimed design, arguing that the fasteners were primarily functional. But Weber  maintained that the fasteners were ornamental. In support of its proposed exclusion, Sears  relied on Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010) as standing for the  proposition that functional elements must be excluded from claim scope in a design patent  during claim construction. Sears also submitted extrinsic evidence to show the functionality  of fasteners. Neither the legal nor the evidentiary support, however, persuaded the court. 

The court gave two reasons why Sears’s reading of Richardson was too narrow. First,  because Richardson involved a bench trial, the district court was able to combine  the claim construction and the merits into one proceeding. This allowed the district  court to consider both claim construction and functionality together even though  they “pose entirely distinct questions that will generally be answered by different  evidence at different stages in the litigation.” Second, the court explained that  Richardson mandates only that the trial court must filter out functional elements from  the claimed design. But “it does not mandate when that separation” must occur. 

Sears’s evidentiary support was likewise deficient. The functional aspect of fasteners,  such as threaded screws, is not shown in the ’834 or ’045 patents. In fact, the  court suggested that based on the figures alone a person of ordinary skill in the art  Design Patent Case Digest Weber-Stephen Products LLC v. Sears Holding  Corporation may even conclude that the fasteners are fake and therefore purely ornamental.  Accordingly, the court used its discretion to decline to exclude the fasteners from the  claimed design at this stage of the litigation. But the court left open the possibility of  excluding this feature later in the case if Sears succeeded in proving its functionality.

Sears further sought to exclude a horizontal bar from the scope of the claimed  design of the ’045 patent. The horizontal bar at issue borders the lower, side edges  of the grill cart in Figures 4 and 5 of the ’045 patent. Sears argued that the horizontal  bar does not appear in Figure 1 and the figures are therefore inconsistent and  also that the horizontal bar was rejected as new matter during prosecution and  Weber therefore surrendered this element through prosecution history estoppel. 

With respect to the internal inconsistency, the court acknowledged that Figure 1  was inconsistent with Figures 4 and 5. But it concluded that this inconsistency was not  a matter of claim construction, but rather invalidity. Therefore, the court explained,  Sears may raise this issue as an invalidity contention in a later substantive motion.

During prosecution, the Examiner rejected original Figure 1, which included a horizontal  bar, because the horizontal bar was not visible in Figure 1A from the parent application.  The replacement Figure 1 had a different perspective and did not include the horizontal  bar. Sears argued that this amounted to prosecution history estoppel because Weber had  surrendered this element to obtain the ’045 patent. But the court rejected Sears’s argument  regarding prosecution history estoppel for two reasons. First, the image of Figure 1A was of  poor quality causing the Examiner’s rejection to be ambiguous. Second, the horizontal bar  is still visible in Figures 4 and 5. Thus, there was insufficient evidence to establish prosecution  history estoppel and the court did not exclude the horizontal bar from the claimed design. 

Accordingly, the court refused to exclude any features from the scope of the claimed  design of the ’834 and ’045 patents at this stage of the litigation and rejected Sears’s  proposed claim construction.

Steve A. Merrill