IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF WISCONSIN NORDOCK, INC. Plaintiff, v. SYSTEMS, INC.

Defendant. ) ) ) ) ) ) ) ) )

CIVIL ACTION: 11-CV-0118 District Judge Rudolph T. Randa

Magistrate Judge William E Callahan

PLAINTIFF'S MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT AS TO THE VALIDITY AND ENFORCEABILITY OF U.S. PATENT NO. D579,754

Plaintiff, Nordock, Inc. (Nordock) respectfully submits this Memorandum of Law setting forth the basis upon which summary judgment should be granted in its favor. I. NATURE AND STAGE OF PROCEEDING This is an action for patent infringement under 35 U.S.C. 271 (Count I), federal unfair competition under 15 U.S.C. 1125 (Count II), common law unfair competition (Count IV), and unfair methods of competition or unfair deceptive acts or practices under Wisconsin Statute 100.18 and 100.20 (Count IV) against Systems, Inc. (Systems). Fact and expert discovery are closed. This motion is brought by Nordock, Inc. (Nordock). Nordock asserts Systems has and continues to infringe U.S. Design Patent No. D579.754 (the 754 Patent) for its distinctive design for the front end of a dock leveler, specifically its lip, lug and header plate design. Pursuant to the Federal Rules of Civil Procedure, Nordock moves this Court to enter summary judgment in its favor and find that its 754 Patent is valid and enforceable because there is no genuine dispute regarding the relevant evidence (or lack thereof) on these issues. In particular, the allegations in Systems Answer, Affirmative Defenses and Counterclaim fail to

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identify any facts supporting that the industrial design covered by the 754 Patent lacks any ornamentation, is claimed by a related utility patent, or is anticipated or rendered obvious by the prior art. In particular, Systems fails to identify a primary prior art reference necessary to substantiate its assertion of invalidity under 35 U.S.C. 102 or 103. Moreover, even through the completion of fact and expert discovery in this case Systems has failed to identify any evidence to support a finding of invalidity or unenforceability. In particular, Systems has failed to establish that the 754 Patent is invalid or unenforceable because Systems has failed to establish: A) the design lacks ornamentation (is de jur functional) B) the design is claimed by a related utility patent, C) a primary reference needed to assert the patent is invalid under 102 or 103, D) the patent is invalid based on anticipation under 102, E) the patent is invalid based on obviousness under 103, F) the patent is invalid under 112, G) Nordock is barred from enforcing the patent by reason of laches or estoppel, or H) Nordock is barred from enforcing the patent under the doctrine of unclean hands. As such, judgment should be entered in favor of Nordock and against Systems regarding its assertions, affirmative defenses and counterclaim alleging the 754 patent is of invalidity and/or unenforceability. Systems respectfully moves for summary judgment because there is no genuine dispute as to any material fact regarding the validity and enforceability of the 754 Patent. The record is clear that the design covered by the 754 Patent includes ornamentation, is not claimed by a related utility patent, is valid under 102, 103 and 112, and Nordock is not barred from enforcing the patent by reason of laches, estoppel or unclean hands.

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II.

INTRODUCTI(ON Nordock was founded in 2001 and is a relative newcomer to the established dock leveler

industry an industry dominated by three manufacturers (i.e., Rite-Hite, 4Front and Systems). Although a variety manufacturers sold a variety of dock levelers throughout the U.S., Nordock developed a distinctive front end design with a lip, lug and header plate arrangement not previously sold in the U.S. Accordingly, many dock leveler consumers recognize Nordocks distinctive front end design, much like many automobile consumers recognize the distinctive front end of a particular automobile. Nordock obtained U.S. Patent No. D579,754 (the 754 Patent) for its distinctive dock leveler front end design. Although Nordocks 754 Patent issued November 4, 2008, this design patent receives the benefit of a December 23, 2002 filing date for Nordocks original U.S. patent application disclosing the distinctive front end design. This litigation arises from Systems unabashed adoption of Nordocks proprietary and patented front end design for a dock leveler. Although Systems had a 40 year history of making dock levelers without Nordocks proprietary and patented design, in about 2005, Systems started introducing dock levelers that included Nordocks front end design. According to Systems, it also obtained a copy of Nordocks original December 23, 2002 patent application in about 2005. After the 754 Patent issued and prior to filing this litigation, Nordock tried to persuade Systems to modify its accused dock levelers to avoid infringing its proprietary and patented design. Starting May 19, 2009, Nordock sent Systems a series of letters advising Systems of the 754 Patent, and addressing Systems assertions that the 754 Patent was invalid. These efforts went unheeded. To date, Systems has stalwartly refused to make any changes to its accused levelers, and maintains that the patent is invalid and unenforceable. No other loading dock manufacturer has followed Systems down this path.

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On May 11, 2011, Systems filed its Answer, Affirmative Defenses and Counterclaim asserting the invalidity and unenforceability of the 754 Patent. In this filing, Systems contends that the patent was not duly and legally issued by the U.S. Patent and Trademark Office (USPTO), and thus it is invalid and unenforceable. (19 and 47). Systems had over five (5) years from its 2005 review of Nordocks original patent application, and two (2) years from its receipt of Nordocks 2009 letters before it filed its Answer, Affirmative Defenses and Counterclaim. In spite of this substantial time to develop a meaningful basis for its invalidity and unenforceability assertions, Systems Answer, Affirmative Defenses and Counterclaim fail to provide a shred of evidence to support these allegations. Not one fact is provided to establish that the 754 Patent is invalid for lack of ornamentality, is anticipated or obvious under 102 or 103, or fails to satisfy 112. Similarly, Systems provides not one fact in support of its assertion that Nordock is barred from enforcing its 754 Patent due to laches, estoppel or unclean hands. Under U.S. law, Nordocks 754 Patent is presumed valid unless Systems proves otherwise by clear and convincing evidence. Yet, even through the close of fact and expert discovery, Systems has failed to establish a genuine issue of material fact that the 754 Patent is invalid or unenforceable. The wide variety of front end designs for dock levelers disclosed by both Systems and Nordock to date, demonstrates that the overall appearance of the front end design of the 754 Patent is ornamental, and not de jur functional. Systems has failed to identify a primary reference necessary to invalidate a U.S. design patent based under 102 or 103. No evidence proving that the 754 Patent fails to meet 112 has been produced. Systems has also failed to produce any evidence that Nordock is barred from enforcing its 754 Patent due to laches, estoppel or unclean hands. For these reasons, the Court should grant summary judgment in favor of Nordock regarding the validity and enforceability of the 754 Patent.

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III. A.

LEGAL ARGUEMENT STANDARD OF REVIEW The Court shall grant summary judgment if the movant shows that there is no genuine

dispute as to any material fact and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). A dispute as to a material fact is genuine if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A fact is material if it might affect the outcome of the suit under the governing law. Id. In determining whether there is a genuine dispute as to a material fact, the Court must consider the evidence in light of the substantive evidentiary burden. Id. at 254. This evidence should be viewed in the light that is most favorable to the nonmoving party. Id. at 255. Taken together, the inquiry the Court must resolves is whether the evidence presented is such that a jury applying that evidentiary standard could reasonably find for the non-moving party. Id. If the moving party has demonstrated that no reasonable jury could find for the non-moving party, summary judgment for the moving party is proper. The party moving for summary judgment bears the initial burden of informing the district court of the basis for its motion, and identifying those portions of the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, which it believes demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). A party opposing a properly supported motion for summary judgment may not rest upon the mere allegations or denials of his pleading, but must set forth specific facts showing that there is a genuine issue for trial. Anderson, 477 U.S. at 24849. The opposing party does not have the burden of showing that a factual issue will be

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conclusively resolved in its favor. Id. Rather, the opposing party must submit sufficient evidence to create a material factual dispute for the finder of fact to resolve at trial. Id. B. DESIGN PATENT The 754 Patent is presumed valid absent clear and convincing evidence presented by Systems to the contrary. See Aero Products Intl., Inc. v. Intex Recreation Corp., 466 F.3d 1000, 1015 (Fed. Cir. 2006). This presumption of validity under 35 U.S.C. 282 carries with it a presumption that the Examiner did his duty and knew what claims he was allowing. Al-Site Corp. v. VSI Intern., Inc., 174 F. 3d 1308, 1323 (Fed. Cir. 1999) (quoting Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1054 (Fed.Cir.1989)). The Federal Circuit further found that When no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job, which includes one or more examiners who are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents. American Hoist & Derrick Co. v. Sowa & Sons, 725 F. 2d 1350, 1359 (Fed. Cir. 1984). It is not Nordocks initial burden of going forward with proof of its case to submit evidence supporting validity. Avia Group Intern., Inc. v. LA Gear California, 853 F. 2d 1557, 1562 (Fed. Cir. 1988). Rather, the burden is first on Systems to introduce evidence which raises the issue of invalidity. Id. To raise the issues of invalidity, Systems must establish facts, by clear and convincing evidence, which persuasively lead to the conclusion of invalidity. Id. (citing PerkinElmer Corp. v. Computervision Corp., 732 F.2d 888, 894 (Fed.Cir.), cert. denied, 469 U.S. 857 (1984)). 1. Section 102 (Anticipation)

Systems has presented no evidence to support a genuine issue regarding the invalidity of the 754 Patent under Section 102. The Section 102 invalidity analysis for a design patent is the
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same as it is for a utility patent. Hupp, 122 F.3d at 1461. For a publication to invalidate a design patent under 171 or 102, it must show the same subject matter as that of the patent, and must be identical in all material respects. Id. Thus, to invalidate the 754 Patent under Section 102, Systems must show with clear and convincing evidence that a single publication exists that shows the same subject matter as the 754 Patent and is identical to it in all material respects. Systems pleadings and discovery responses produced no such publication and make no such showing. Systems has not identified a primary reference; let alone a primary reference with design characteristics that are basically the same as the 754 Patents claimed design. (Statement of Facts (SOF) 61-63). Systems asserted expert report (Brookman) does not challenge validity under 102 and does not identify a primary reference. (SOF 63). In fact, his report concedes validity under 102 by citing to a variety of asserted prior art references instead of a single, primary reference. Furthermore, Brookman concedes his reviews was limited to the prior art listed on the 754 Patent, Patent Examiners are persons of ordinary skill in the art, and these references were already considered by the USPTO. (SOF 40, 61, 63 and 64). His report does not assert and the record does not support that he is more qualified than the Examiner that reviewed and allowed the 754 Patent. Thus, Systems burden is even greater than clear and convincing evidence. See American Hoist, 725 F. 2d at 1359; Al-Site, 174 F. 3d at 1323. Instead of identifying a single, primary reference, Systems Answer to Interrogator No. 15 identifies Systems Inc. Production Documents Nos. SI100800-940, as well as all references cited on the face of the design patent in suit and in its file history. (SOF 61). This includes over 53 patents and 140 pages of unorganized documents (e.g. emails, unidentified miscellaneous photographs, etc.). Systems has never supplemented or corrected its Answer, and has never provided Nordock with a primary reference or a theory of invalidity. (SOF 62).

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Systems should not be allowed to identify a primary reference at this late date. The court in Apple v. Samsung recently found that although Samsung may have disclosed in discovery some of the references and documents upon which its experts relied, Samsung also failed to supplement its answers to contention interrogatories to disclose to Apple some of the bases of its invalidity, infringement, and lack of distinctiveness theories until after the close of discovery. (N.D. Calif., Case No. 11-cv-01846-LHK, Court Docket No. 1545 Aug. 2, 2012). The court held that Samsung could not introduce into evidence certain prior art references because it did not make clear that they were included its theories of anticipation, obviousness, and other grounds of invalidity. Id. The court held that this litigation tactic violated Rule 26(e), and sanctioned Samsung under Rule 37(c). Systems should be similarly prevented from introducing a primary reference at this late stage in support of any proposed theory for invalidity. 2. Section 103 (Non-Obviousness)

The Federal Circuit recently reiterated the required steps for a non-obviousness analysis of a design patent. The ultimate inquiry... is whether the claimed design would have been obvious to a designer of ordinary skill. Apple, Inc. v. Samsung Electronics Co. Ltd., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (quoting Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009)). In making this inquiry, the finder of fact must employ the following two step process: (1) one must find be a single, primary reference of something in existence, the design characteristics of which are basically the same as the claimed design; and (2) other secondary references may be used to modify the primary reference only if they are so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other. Id. (citing Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir. 1996)).

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a.

Primary and Secondary References

As noted above in the Section 102 (Anticipation) analysis, Systems does not identify a primary reference. (SOF 61-63). Absent a primary reference, secondary references are irrelevant. Id. Based on this alone, Systems has failed to raise a genuine issue of material fact regarding its asserted obviousness defense. Notwithstanding this, Systems further fails to meet its burden of establishing obviousness by clear and convincing evidence. b. Ordinary Observer Test

After constructing the hypothetical prior art by combining a primary reference with secondary references, the obviousness analysis requires the application of the ordinary observer test. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240-41(Fed. Cir. 2009). This test asks whether, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F. 3d 665, 670 (Fed. Cir. 2008) (citing Gorham Co. v. White, 81 U.S. 511, 528 (1871)). There is no hypothetical combination of prior art that would be substantially similar to the 754 Patent in the eye of an ordinary observer, giving such attention as a purchaser usually gives. The Patent Examiner reviewed and considered all of the 53 patents that Systems provides to Nordock as potential primary references. (SOF 40 and 61). The patent examiner found, by issuing the 754 Patent, that the design was not obvious, and this finding is afforded a presumption of validity that Systems must overcome with clear and convincing evidence. See Aero, 466 F.3d at 1015. Simply providing the 53 patents that the examiner already considered, as well as miscellaneous, unidentified pictures, does not demonstrate clear and convincing evidence that the Patent Examiner was wrong in finding non-obviousness. The examiner is presumed to have expertise in the area and to have done her job correctly. See American Hoist,

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725 F. 2d at 1359; Al-Site, 174 F. 3d at 1323. Systems expert even admits that he did not consider any prior art that was not already considered by the USPTO, and that Patent Examiners are persons of ordinary skill in the art. (SOF 63 and 64). Attempting to invalidate an issued patent by citing only the prior art that was considered by the examiner, as Systems expert attempts to do, requires the challenger to overcome the added burden of the deference that is due to a qualified government agency presumed to have properly done its job. See American Hoist, 725 F. 2d at 1359. Examiners consider obviousness when reviewing a design patent application. (SOF 38 and Ex. V, MPEP Section 1504.03). c. Systems Expert Report Does Not Raise A Genuine Issue Of Material Fact and, In Fact, Offers Only A Flawed Legal Opinion.

Systems asserted expert report (the Brookman Report) does not raise a genuine issue of material fact and misstates the law regarding design patents in a number of respects. First, the Brookman Report demonstrates a misunderstanding of an obviousness/non-obviousness analysis. The Brookman Report claims that obviousness can be found in the event that the design is a combination of several elements in the prior art. (Ex. AF, pg. 13). This is a misstatement of the law. As explained in detail above, the obviousness analysis must begin with a primary reference, and then elements from additional prior art references (i.e. secondary references) may be combined with the primary reference. The Brookman Report does not identify a primary reference. As noted above, a primary reference must be identical in all material respects to the 754 Patent. The Report is further flawed because it does not even attempt to argue that a single reference is identical in all material respects to the 754 Patent. Instead, the Brookman Report attempts to show that each element is in one of a variety of separate prior art references. Assuming, arguendo, that these prior art references do separately disclose the individual elements of the 754 Patent, the obviousness
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analysis still fails because the Brookman Report does not identify a primary reference as required by the courts. However, not one of these prior art references even shares two common features with the 754 Patent, and taken together they do not create a hypothetical prior art that would be substantially similar to the 754 Patent in the eye of an ordinary observer. Furthermore, the Brookman Report makes no attempt to explain how his analysis overcomes the strong presumption of validity afforded the 754 Patent, especially given that he cites nothing other than the prior art considered by the examiner. See American Hoist, 725 F. 2d at 1359. 3. a. Ornamentality Primarily Ornamental

The 754 Patents claimed design is primarily ornamental and is not dictated by function. There is no genuine issue of material fact to the contrary. The Federal Circuit applies the following standard for invalidating a design patent because of functionality: the design of a useful article is deemed functional where the appearance of a claimed design is dictated by the use or purpose of the article. Rosco, Inc. v. Mirror Lite Co., 304 F. 3d 1373, 1378 (Fed. Cir. 2002) (internal citations omitted). To determine whether a design is dictated by its use, the Court must ask whether the claimed design is the only possible form of the article that could perform its function. Id. If 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.; LA Gear, Inc. v. Thom McAn Shoe Co., 988 F. 2d 1117, 1123 (Fed. Cir. 1993) (citing Avia, 853 F.2d at 1563); Richardson v. Stanley Works, Inc., 610 F. Supp. 2d 1046, 1049 (D. Ariz. 2009) (Richardson I), affd 597 F.3d 1288, 1298 (Fed. Cir. 2010) (Richardson II). Put another way, if other designs

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could produce the same or similar functional capabilities, the design of the article in question is likely ornamental, not functional. Rosco, 304 F. 3d at 1378. The claimed design of the 754 Patent is clearly not dictated by function because it is not the only possible form of a dock leveler that could perform its function. (SOF 1-7 and 21-24). There are a variety of front-end designs for dock levelers. (SOF 2). Systems president, who developed its accused levelers, even admits this. (SOF 48). There are also a variety of ways to size, shape and arrange the various components forming the front end of the dock leveler. (SOF 3-7). If the 754 Patent were truly dictated by function, every dock leveler should look just like the 754 Patent. This is clearly not the case. As with shoes in Avia, there is no dispute that dock levelers are functional and that certain features of the 754 Patents design perform functions. See Avia, 853 F.2d at 1563. However, a distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article or features thereof that perform a function. Were that not true, it would not be possible to obtain a design patent on a utilitarian article of manufacture, or to obtain both design and utility patents on the same article. Id. (citing Pacific Furniture Mfg. Co. v. Preview Furniture Corp., 800 F.2d 1111 (Fed.Cir.1986) (design patent for chairs); Carman Indus., Inc. v. Wahl, 724 F.2d 932, 938-39 (Fed.Cir.1983); In re Dubois & Will, 262 F.2d 88, 90 (Fed. Cir. 1958). The Federal Circuit has similarly stated that the design of a particular article is related to the article's use may not defeat patentability. Hupp, 122 F.3d at1460. The ultimate question is whether functional considerations demand only this particular design or whether other designs could be used. Id. When this test is applied to the front end desins of a dock leveler, the answer is clearly that other designs could be used because other designs are used. (SOF 1-7 and 21-24).

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Systems has presented no genuine issue that the 754 Patents claimed design is dictated by function. Systems does not deny that there are numerous alternative designs. (SOF 2 and 48). Yet, Systems has provided no explanation for how the 754 Patent is dictated by function in light of all the alternative designs. Systems asserts that a dock leveler is almost entirely functional, but has provide no explanation for how this means they are dictated by function. Furthermore, the prior art that Systems expert believes is illustrative of the 754 Patents functionality was all considered by the patent examiner before she issued the 754 Patent. (SOF 40 and 61). Thus, the burden that must be overcome to demonstrate functionality based on these prior art references, if functionality can even be demonstrated at all, is even greater than clear and convincing evidence. See American Hoist, 725 F. 2d at 1359; Al-Site, 174 F. 3d at 1323. Examiners consider functionality when reviewing a design patent application. (SOF 38 and Ex. V, MPEP Section 1504.01(c)). b. Additional Considerations

The court in Richardson I went on to list the following additional considerations for analyzing whether a design is primarily ornamental: (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. Richardson I, 610 F. Supp. 2d at 1049-50. The other considerations from Richardson I support a finding of ornamentality. As conceded in the Brookman Report, it cannot be empirically stated which of the variety of dock leveler designs is the best, thus demonstrating the design as primarily ornamental. (Ex. AF,
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pg.22). Also, alternative designs would clearly not adversely affect the utility of a dock leveler because there are numerous alternative designs that tout the same specific utility. (SOF 1-7 and 43-44). Furthermore, although there is a concomitant utility patent, it was identified in the first sentence of the 137 Application (now the 754 Patent), and is even listed on the cover page of the 754 Patent. This is especially important given the 754 Patents presumption of validity. See Aero, 466 F.3d at 1015. As noted above, patent examiner is deemed to have considered each of the prior art references listed on the cover of the patent. Next, the advertising does not tout the specific utility of the claimed design features because there are alternative designs that achieve the same functional capabilities that are advertised. (SOF 1-7 and 43-44). Finally, there are many elements in the 754 Patents claimed design and its overall appearance that are clearly not dictated by function because of the number of alternatives. (SOF 3-7 and 42). c. Systems Expert Report

As state above, the Brookman Report does not raise a genuine issue of fact and misstates the law of design patents in a number of places. This is again demonstrated where the Brookman Report contradicts itself in stating the law of design patent ornamentality. The Brookman Report states that design may not be patented if it is functional. (Ex. AF, pg. 11). On the very next page, however, the Brookman Report states that [a]n article of manufacture necessarily serves a utilitarian purpose. (Ex. AF, pg. 12). 35 U.S.C. 171 provides that a design patent may be obtained for any new, original and ornamental design for an article of manufacture. Therefore, a design patent must necessarily be for something that is functional since it can only cover an article of manufacture and an article of manufacture necessarily serves a utilitarian purpose. Rather, a design may be patented unless it is dictated by function. Rosco, 304 F. 3d at 1378.

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The Brookman Report also fails to correctly apply the concept of dictated by function. The Brookman Report seems to assert that something is dictated by function if it serves a utilitarian value. (See Ex. AF, pg. 14-20). The Brookman Report even states that the 754 Patent is dictated by function because each of the various elements has a distinct functional purpose. (Ex. AF, pg. 20). As explained above, for a design to be dictated by function it must be the only possible design that can achieve the utilitarian purpose. If that were the case, it would mean that there is no other possible dock leveler design other than the one depicted in the 754 Patent. This is clearly not the case. (SOF 1-7 and 21-24). The fact that every dock leveler patent drawing included in the Brookman Report depicts a different dock leveler design further demonstrates the inaccuracy of stating the 754 Patent is dictated by function. (Ex. AF, pg. 16-19). Next, the Brookman Report fails to consider alternative designs. Many of the same cases that the Brookman Report cites clearly state that alternative designs suggest a design is primarily ornamental and not dictated by function. Rosco, 304 F. 3d at 1378; LA Gear, 988 F. 2d at 1123; Avia, 853 F.2d at 1563; Richardson I, 610 F. Supp. 2d at 1049, affd Richardson II, 597 F.3d 1288, 1298. In fact, the Brookman Report goes on to state in a different section that it is hard to say empirically whether the design claimed in the Design Patent truly represents the best design in view of the many competing dock levelers each touting its own characteristics. (Ex. AF, pg. 22) (emphasis added). The fact that the Brookman Report cannot empirically say that the 754 Patents design is the best design demonstrates the existence of alternatives that have at least equivalent functional capabilities. The fact that he did not consider this in his dictated by function analysis demonstrates a lack of understanding of design patent functionality. The test for functionality is neither that the patentee thought that its design was worthy of patent

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protection nor that a design does provide certain functional advantages, as the Brookman Report seems to imply. (Ex. AF, pg. 22). The Brookman Report contradicts itself again in stating that the substitution of any different configuration for any of the elements of the design would almost certainly result in a compromise in the overall functionality of the claimed design. (Ex. AF, pg 22). This is a direct contradiction with the statement in the previous paragraph that the best design cannot be empirically determined. Since it is impossible to say what the best design is, it is equally true that substitutions for alternative designs would not necessarily affect the overall functionality. If a substitution of any element would compromise the overall functionality, then the design would empirically be the best. As proven by the substantial number of alternative designs for equally functioning dock levelers, it is clearly possible to substitute certain elements of the design without adversely affecting the functionality or cost. (SOF 1-7). 4. Section 112

Systems presents no evidence to support genuine issue regarding the invalidity of the 754 Patent under Section 112. (SOF 59). To invalidate the 754 Patent under Section 112, Systems must show with clear and convincing evidence that the 754 Patent either does not: (1) contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention; or (2) conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 35 U.S.C. 112. Although Patent Examiners consider 112 when reviewing a design patent application (SOF 38 and Ex. V, MPEP Section 1504.04), Systems presents no facts to support

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either showing, much less facts sufficiently to defeat the 754 Patents presumption of validity. (SOF 41). 5. Prosecution History Estoppel

Systems presents no evidence to support a genuine issues regarding prosecution history estoppel for the 754. Systems asserts in its Answer and Counterclaim that plaintiff is estopped from construing the claims of these patents to encompass anything made, sold, offered for sale or used by Systems, Inc. by reason of the proceedings in the United States Patent and Trademark Office during the prosecution of the applications for the 754 Patent. (SOF 59, Court Docket No. 4, 41). Systems presents no evidence of which the Patent Examiner was not aware when she reviewed the 137 Application (now the 754 Patent). The USPTO and Examiner were most certainly aware of the specification and claims of Nordocks original and divisional applications. The first sentence of the 137 Application lists the application and patent numbers for the original and divisional applications. (SOF 37). Moreover, there are several ornamental aspects of the dock leveler front end design shown in the 754 Patent that are not claimed by its parent Patents and applications. (SOF 35). Once again, as Systems cites nothing that was not before the Examiner when issuing the 754 Patent, Systems burden is greater than clear and convincing evidence. See American Hoist, 725 F. 2d at 1359; Al-Site, 174 F. 3d at 1323. Systems has not met this burden. Systems presents no evidence to support a genuine issue of material fact that can overcome the 754 Patents strong presumption of validity. 6. Laches

Systems presents no evidence to support a genuine issue regarding its defense of laches. The Federal Circuit has held that laches may be defined as the neglect or delay in bringing suit to remedy an alleged wrong, which taken together with lapse of time and other circumstances,

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causes prejudice to the adverse party and operates as an equitable bar. AC Aukerman Co. v. RL Chaides Const. Co., 960 F. 2d 1020, 1029 (Fed. Cir. 1992). To succeed in a defense of laches, Systems must prove the following two factors: 1. the plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time the plaintiff knew or reasonably should have known of its claim against the defendant, and 2. the delay operated to the prejudice or injury of the defendant. Id. at 1032 (citing Costello v. United States, 365 U.S. 265, 282 (1961); Meyers v. Brooks Shoe Inc., 912 F.2d 1459, 1461 (Fed.Cir.1990); Hottel Corp. v. Seaman Corp., 833 F.2d 1570, 1572 (Fed.Cir. 1987). The period of delay does not begin prior to issuance of the patent. Id. Systems presents no facts in support of either factors. Nordock notified Systems within six months of being issued the 754 Patent, corresponded with Systems for several months, and filed suit about a year later. (SOF 54-58). Systems has made no showing that this was in fact a delay at all, much less that it was unreasonable and inexcusable in length. Moreover, Systems has made no attempt to show how it has been prejudiced or injured. Systems admits it was aware of Nordocks 409 Patent including Figures 10A-G showing Nordocks new header plate and lug style design in the Spring of 2005, and notwithstanding Nordocks May 19, 2009 correspondence and January 2011 filing of this litigation, has made no change to its levelers. (SOF 47, 54, and 57). Systems has clearly not met its burden of demonstrating by clear and convincing evidence the defense of laches. 7. Estoppel

Systems presents no evidence to support a genuine issue regarding equitable estoppel. (SOF 59). The Federal Circuit held that the defense of equitable estoppel requires the defendant to show:

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a. The patentee, through misleading conduct, leads the alleged infringer to reasonably infer that the patentee does not intend to enforce its patent against the alleged infringer. "Conduct" may include specific statements, action, inaction, or silence where there was an obligation to speak. b. The alleged infringer relies on that conduct. c. Due to its reliance, the alleged infringer will be materially prejudiced if the patentee is allowed to proceed with its claim. Id. at 1028. Systems presents no facts to support any of these three elements. 8. Unclean Hands

Systems presents no evidence to support a genuine issue regarding unclean hands. (SOF 59). The Federal Circuit has held that the defense of unclean hands requires the defendant to show with clear and convincing evidence that the patentee had the intent to deceive the USPTO, and that the deception was the but-for cause of the claims issuance. Therasense, Inc. v. Becton, Dickinson and Co., 649 F. 3d 1276, 1290-92 (Fed. Cir. 2011). Specifically, the court held that the accused infringer must prove that the patentee acted with the specific intent to deceive the PTO. Id. at 1290 (citing Star Scientific Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed.Cir.2008)). A showing of gross negligence or negligence under a should have known standard is not sufficient. Id. Rather, the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it. Id. The court went on to hold that, after proving said intent, the accused infringer must show that the PTO would not have allowed a claim had it been aware of the undisclosed prior art. Id. at 1291. Systems presents no evidence to support either showing.

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IV.

CONCLUSION For the foregoing reasons, the Plaintiff respectfully requests that its motion for summary

judgment as to the validity of U.S. Patent No. D579,754 be granted in its entirety.

Wherefore, moving plaintiff respectfully requests that this Court grant its motion and enter an Order in the form attached. Dated: this 20th day of September, 2012. Respectfully submitted, NORDOCK, INC.

s/Jeffrey S. Sokol Jeffrey S. Sokol

Sokol Law Office 828 North Broadway Milwaukee, WI 53202

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