DC claim construction based on description of invention affirmed; anticipation reversed; trade dress invalidity affirmed

Mosaic Brands, Inc., et al. v. Ridge Wallet LLC

Docket No. 2022-1001-2 (https://cafc.uscourts.gov/opinions-orders/22-1001.OPINION.12-20-2022_2050643.pdf)


December 20, 2022

Brief Summary:   DC claim construction affirmed based on description of invention “as a whole” in specification.  Anticipation finding based on inventor testimony found corroborated but grant of SJ found premature.  Invalidity of trade dress affirmed based on 9th Circuit law.

Summary: Mosaic and Ridge make “similar money-clip wallets”.  Mosaic asserted Ridge infringes its US 7,334,616 as well as its trade dress.  Ridge asserted Mosaic infringed its US 10,791,808 (also alleged infringement by Mosaic’s third-party licensees which is not addressed here (see FN2)).  Following the DC’s claim construction of Mosaic’s ‘616 claims, the parties stipulated to non-infringement, but the DC denied its trade dress claim.  The DC also granted summary judgment (SJ) to Mosaic of invalidity of Ridge’s ‘808 patent for anticipation but denied inequitable conduct.

Regarding the ‘616 patent, the DC construed the claim term “lip” present in a “first panel” and a “second panel”, each being modified in a wherein clause as being “of varying thickness.”  The DC construed “‘lip’ as a ‘connector made of extrudable or injectable plastic material that defines the outer dimension of enclosure’ and explained that the first and second panels must have ‘separate and independent’ lips”.  The DC also “construed ‘of varying thickness” to mean ‘having a thickness, defining the outer dimensions of the holder, that causes the outer dimensions of the holder to be thicker in some parts and thinner in others.’”  The FC panel agreed with the DC because the use of “extrudable plastic materials” is “expressly state[d]” in the “written description of the ‘616 patent” (“describes them as benefits from the invention”).  “[H]ere”, the FC panel found, “in context, a person of ordinary skill in the art would have understood the ‘present invention’ statements as describing the claimed invention as a whole” (“not limited to a best mode or particular embodiments”; Verizon, FC 2007).  The FC panel also agreed with the DC’s construction of the “varying thickness” limitation as “it is the term’s plain and ordinary meaning”, and Mosaic “offer[ed] no intrinsic evidence for this position, only extrinsic dictionary definitions and attorney argument” (see also FN7).

The DC also found certain ‘808 claims invalid as anticipated by Mosaic’s wallet based on its inventor’s testimony and granted SJ on this point.  The FC panel found the DC correctly found corroborating evidence (TransWeb, FC 2016; Sandt, FC 2001; Medichem, FC 2006), but granted SJ too soon and reversed the DC on this point (e.g., “affirmative evidence is not always necessary in order to create a genuine dispute” (Zenith, FC 2008; Microsoft, US 2011 (“clear and convincing evidence”)).  The DC also found Mosaic’s inequitable conduct allegations moot given its invalidity findings and given the reversal the FC panel commented that Mosaic is still “free to continue to assert inequitable conduct as an affirmative defense to infringement.”  The DC also found “Mosaic’s putative trade dress…invalid as functional, lacking in secondary meaning, and abandoned.”  The FC panel affirmed on the functional grounds (Click Billiards, 9th Cir.; Creo Prods., FC 2002 (“overall visual impression”); High Point, FC 2013).

This entry was posted in Anticipation (35 USC 102), Claim Construction, Trade Dress, Written description. Bookmark the permalink.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

This site uses Akismet to reduce spam. Learn how your comment data is processed.