Johnsonville Sausage v. Klement Sausage - Def SJ Brief

UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF WISCONSIN

MILWAUKEE DIVISION
______________________________________________________________________________
JOHNSONVILLE SAUSAGE, LLC,

Case No.: 16-cv-938
Plaintiff,
v.
KLEMENT SAUSAGE CO., INC.,
Defendant.
DEFENDANT'S BRIEF IN SUPPORT OF MOTION FOR

PARTIAL SUMMARY JUDGMENT
Jane C. Schlicht
State Bar No. 1000012
Attorneys for Defendant KLEMENT
SAUSAGE CO., INC.
HINSHAW & CULBERTSON LLP
100 E. Wisconsin Avenue
Suite 2600
Milwaukee, WI 53202
Phone No. 414-276-6464
Fax No. 414-276-9220
E-mail Address(es):
jschlicht@hinshawlaw.com
and
Michael J. Femal
MUCH SHELIST, P.C.
191 N. Wacker Dr., Suite 1800
Chicago, IL 60606-1615
Phone No. 312-521-2000
Fax No. 312-521-2100
mfemal@muchshelist.com

SAUSAGE CO., INC.
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Case 2:16-cv-00938-LA Filed 05/06/19 Page 1 of 37 Document 84
TABLE OF CONTENTS
I. SUMMARY JUDGMENT STANDARD........................................................................... 1
II. ARGUMENT ...................................................................................................................... 1
A. The Accused Tray Does Not Infringe the ‘754 Patent ............................................ 1
1. The Concave/Convex End Walls Are Functional and Cannot Be

the Basis of An Infringement Action. ......................................................... 1
2. Johnsonville Cannot Prove the Ordinary Observer Would Be

Confused by the Accused Tray. .................................................................. 2
a. The Accused Tray is "Plainly Dissimilar" from the Sausage

Tray in the '754 Patent .................................................................... 5
b. The Arcuate End Walls in the ‘754 Patent Are Disclosed in
the Prior Art .................................................................................. 12
B. The ‘754 Patent is Invalid As the Claimed Feature Is Not Visible ....................... 18
C. The '754 Patent is Unenforceable Due to Inequitable Conduct ............................ 21
1. The '717 Utility Application Is "But For" Material. ................................. 22
a. The Claimed Design of the ‘754 Design Patent............................ 23
b. The Claimed Design is Primarily Functional................................ 23
2. Johnsonville Intended to Deceive the Patent Office. ................................ 23
a. The Patentee Knew of the Reference ............................................ 23
b. The Patentee Knew the Reference was Material .......................... 24
c. The Patentee Made a Deliberate Decision To Not Disclose

the Reference ................................................................................ 25
D. The "Article of Manufacture" is the Curved Sausage Tray Without

Sausage ................................................................................................................. 28
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TABLE OF AUTHORITIES
Page(s)
Cases
A&H Mfg. Co. v. Contempo Card Co., Inc.,

576 F.Supp. 894 (D.R.I. 1983).................................................................................................19
Advantek Mktg., Inc. v. Shanghai Walk-Long Tools Co., Ltd.,

898 F. 3d 1210 (Fed. Cir. 2018)...............................................................................................29
Amini Innovation Corp. v. Anthony California, Inc.,

439 F.3d 1365 (Fed. Cir. 2006)..................................................................................................2
Anderson v. Liberty Lobby, Inc.,

477 U.S. 242 (1986) ...................................................................................................................1
Apple Inc. v. Samsung Elecs. Co., Ltd.,

678 Fed. Appx. 1012 (Fed. Cir. 2017) .....................................................................................29
Application of Stevens, 173 F. 2d 1015, 1016 (C.C.P.A. 1949) ....................................................18
Applied Arts Corp. v. Grand Rapids Metalcraft Corp.,

67 F.2d 428 (6th Cir. 1933) .......................................................................................................2
Arc'teryx Equip., Inc. v. Westcomb Outerwear, Inc., WL 4838141 (D. Utah Nov.
4, 2008) ....................................................................................................................................16
Bush & Lane Piano Co. v. Becker Bros.,

222 F. 902 (2d Cir. 1915) ........................................................................................................29
C&M Fiberglass Septic Tanks, Inc. v. T&N Fiberglass Mfg. Co.,

78-488, 1981 WL 48173 (D. S.C. June 5, 1981) .....................................................................19
Celotex Corp. v. Catrett,

477 U.S. 317 (1986) ...................................................................................................................1
Competitive Edge Inc. v. Staples, Inc.,

763 F. Supp. 2d 997 (N.D. Ill. 2010) .......................................................................................10
Contessa Food Products, Inc. v. Conagra Inc.,

282 F.3d 1370 (Fed. Cir. 2002)................................................................................................18
Crocs, Inc. v. Int’l Trade Comm’n,

598 F.3d 1294 (Fed. Cir. 2010)..................................................................................................2
Dorman Prods., v. PACCAR, Inc.,

201 F.Supp 3d 663, 693 (E.D. Pa. 2016) .................................................................................22
ii
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Egyptian Goddess v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008)......................................................................................1, 2, 3, 18
Elmer v. ICC Fabricating, Inc.,

67 F.3d 1571 (Fed. Cir. 1995)....................................................................................................3
Ethicon Endo-Surgery, Inc, v. Covidien, Inc.,

796 F.3d 1312 (Fed. Cir. 2015)..................................................................................................9
Fanimation, Inc. v. Dan’s Fan City, Inc.,

No.1:08-CV-1071-TWP-WGH, 2010 WL 5288304 (S.D. Ind. Dec. 16, 2010)
aff'd. 444 Fed. Appx. 449 (Fed. Cir. 2011) ........................................................................16, 17
Gorham Mfg. Co. v. White,

81 U.S. 511 (1871) ...................................................................................................................28
Great Neck Saw Mfrs., Inc. v. Star Asia U.S.A., LLC,

727 F. Supp. 2d 1038 (W.D. Wash. 2010) ...............................................................................11
HR US LLC v. Mizco Int'l, Inc.,

CV-07-2394, 2009 WL 890550 (E.D.N.Y. Mar. 31, 2009) .....................................................11
Keurig, Inc. v. JBR, Inc.,

CIV. A. 11-11941-FDS, 2013 WL 2304171 (D. Mass. May 24, 2013) aff'd.
558 Fed. Appx. 1009 (Fed. Cir. 2014) .................................................................................3, 10
L.A. Gear, Inc. v. Thom McAn Shoe Co.,

988 F.2d 1117 (Fed. Cir. 1993)..................................................................................................1
Larson v. Classic Corp.,

683 F. Supp. 1202 (N.D. Ill. 1988) ....................................................................................19, 20
Lawman Armor Corp. v. Master Lock Co.,

CIV. A. 02-6605 2004 WL 440177 (E.D. Pa. March 11, 2004) ................................................9
Markman v. Westview Instruments, Inc.,

52 F.3d 967 (Fed. Cir. 1995)......................................................................................................3
Minka Lighting, Inc., v. Maxim Lighting Int'l, Inc.,

No. 3:06–CV–995–K, 2009 WL 691594 (N.D. Tex. Mar. 16, 2009)................................3, 4, 5
Norco Products, Inc. v. Mecca Development, Inc.,

617 F.Supp. 1079 (D. Conn. 1985) ..........................................................................................19
Nordock Inc.v. Systems Inc.,

No. 11-CV-118, 2017 WL 5633114 (E.D. Wis. Nov. 21, 2017) .............................................30
OddzOn Prods., Inc. v. Just Toys, Inc.,

122 F.3d 1396 (Fed. Cir. 1997)..................................................................................................7
iii
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Ohio Willow Wood Co. v. Alps, S.,
LLC, 735 F.3d 1333 (Fed. Cir. 2013) ................................................................................22, 23
PHG Techs, LLC v. St. John Cos., Inc.,

469 F.3d 1361 (Fed. Cir. 2006)................................................................................................22
Richardson v. Stanley Works, Inc.,

597 F.3d 1288 (Fed. Cir. 2010)..............................................................................................2, 3
Samsung Elecs. Co., Ltd. v. Apple, Inc.,

137 S.Ct. 429, 196 L. Ed. 2d 363 (2016) ...........................................................................28, 29
Schnadig Corp. v. Collezione Europa U.S.A.,

OIC 1697, 2002 WL 31253750 (N.D. Ill. Oct. 4, 2002) ............................................................9
Spencer v. Taco Bell Corp.,

8:12-CV-387, 2013 WL 5499609 (M.D. Fla. Oct. 2, 2013) aff'd. 560 Fed.
Appx. 997 (Fed. Cir. 2014) ......................................................................................................18
Static Control Components, Inc. v. Lexmark Int'l, Inc.,

697 F.3d 387 (6th Cir. 2012) ...................................................................................................19
Therasense, Inc. v. Becton, Dickinson & Co.,

649 F.3d 1276 (Fed. Cir. 2011)................................................................................................23
U.S. Water Servs., Inc. v. Novozymes A/S,

843 F.3d 1345 (Fed. Cir. 2016)................................................................................................21
In re Webb,
916 F.2d 1553 (Fed. Cir. 1990)................................................................................................18
Wing Shing Prods. (BVI) Co. v. Sunbeam Prods., Inc.,

665 F. Supp. 2d 357 (S.D.N.Y. 2009)............................................................................3, 15, 16
Young v. Stone,
13 C 4920, 2014 WL 4271624 (N.D. Ill. Aug. 28, 2014) ........................................................17
Z Produx, Inc. v. Make-Up Art Cosmetics, Inc.,

No. CV 13-00734 DDP RZX 2013 WL541049 (C.D. Cal. Nov. 5, 2013) aff'd.
568 Fed. Appx. 897 (Fed. Cir. 2014) .........................................................................................2
Statutes
35 U.S.C. § 171 ........................................................................................................................21, 22
35 U.S.C. § 289 ..........................................................................................................................1, 28
Other Authorities
37 C.F.R. § 1.14 .............................................................................................................................26
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37 C.F.R. § 1.78 (d)(5)...................................................................................................................26
37 CFR § 1. 56 ...............................................................................................................................28
Fed. R. Civ. P. 56 .............................................................................................................................1
Local Rule 56(b)(1)..........................................................................................................................6
MPEP 1.56 .....................................................................................................................................27
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INTRODUCTION
Defendant moves for an Order determining as a matter of law that: (1) the Accused Tray
does not infringe the ‘754 Patent; (2) the ‘754 Patent is invalid because the claimed design is
concealed during normal use; (3) the ‘754 Patent is unenforceable due to Inequitable Conduct;
and (4) the “article of manufacture” is the tray without sausage.
I. SUMMARY JUDGMENT STANDARD
The Court must grant summary judgment if Defendant can demonstrate there is no
genuine issue of material fact and Defendant is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56; Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). When a rational jury looking at
the record as a whole cannot find for the non-moving party, no genuine issue of material fact
exists and summary judgment is proper. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 254
(1986).
II. ARGUMENT
A. The Accused Tray Does Not Infringe the ‘754 Patent
Infringement of a design patent is the unauthorized manufacture, use, or sale of the article
embodying the patented design or any colorable imitation thereof. 35 U.S.C. § 289.
Infringement of a design patent case is a question of fact that the patentee must prove by a
preponderance of the evidence. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124
(Fed. Cir. 1993). However, where no reasonable fact-finder could conclude that the patentee has
met this burden, summary judgment is appropriate. See Egyptian Goddess v. Swisa, Inc., 543
F.3d 665, 679 (Fed. Cir. 2008)(enbanc).
1. The Concave/Convex End Walls Are Functional and Cannot Be the

Basis of An Infringement Action.
A device that copies the utilitarian or functional features of a patented design is not an
infringement. L.A. Gear, 988 F. 2d at 1123. As established in Defendant’s Claim Construction
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Brief (pp. 2-8), the claim of the '754 Patent is limited to the interior and exterior concave and
convex end walls. These concave/convex end walls are functional, are not protected under the
'754 Patent and cannot form the basis for an infringement action. (pp. 9-15) See Z Produx, Inc. v.
Make-Up Art Cosmetics, Inc., No. CV 13-00734 DDP RZX 2013 WL541049 (C.D. Cal. Nov. 5,
2013) aff'd. 568 Fed. Appx. 897 (Fed. Cir. 2014). Since Johnsonville claims the Accused Tray
infringes the '754 Design Patent based on the curved insert in the rectangular tray and the alleged
similarity of the curved insert to the functional convex/concave end walls, there is no
infringement as a matter of law and Klement is entitled to summary judgment dismissing the
infringement claim. Id. at *21–22.
2. Johnsonville Cannot Prove the Ordinary Observer Would Be

Confused by the Accused Tray.
The test for design patent infringement is the “ordinary observer” test. Egyptian Goddess,
543 F.3d at 670. The patentee must show an ordinary observer, familiar with the prior art
designs, would be deceived into believing that the accused product is the same as the patented
design. Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir. 2010). The “ordinary
observer” is one who, with less than the trained faculties of the expert, is a purchaser of things of
similar design. Applied Arts Corp. v. Grand Rapids Metalcraft Corp., 67 F.2d 428, 430 (6th Cir.
1933).
If a design includes both functional and ornamental features, infringement occurs only if
any perceived similarities in the patented and accused designs are based on the ornamental
aspects of the designs, rather than on their functional aspects. Amini Innovation Corp. v. Anthony
California, Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2006). In applying the ordinary-observer test,
one focuses on whether the “overall designs” are similar and create deception, and avoids
looking for “similarities in ornamental features in isolation.” Richardson v. Stanley Works, Inc.,
597 F.3d 1288, 1295 (Fed. Cir. 2010). Whether the ordinary observer would be deceived by the
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accused design is a question of fact, which a patentee must prove by a preponderance of the
evidence. Id.
After the court construes the patent claim to determine its meaning and scope, the claim
as properly construed is compared to the accused device to determine whether it infringes. See,
e.g., Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995). Elmer v. ICC
Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). The Federal Circuit has effectively
divided cases into two categories: (1) those where the claimed design and the accused design are
sufficiently distinct, it is clear without more the patentee cannot prove the two designs appear
“substantially the same” to the ordinary observer; and (2) where the claimed and accused designs
are not plainly dissimilar, resolution of whether the ordinary observer would consider the two
designs substantially the same benefits from a comparison of the two designs with the prior art.
Egyptian Goddess, 543 F.3d at 678. See, also, Wing Shing Prods. (BVI) Co. v. Sunbeam Prods.,
Inc., 665 F. Supp. 2d 357, 362 (S.D.N.Y. 2009); Minka Lighting, Inc., v. Maxim Lighting Int'l,
Inc., No. 3:06–CV–995–K, 2009 WL 691594 (N.D. Tex. Mar. 16, 2009), and Keurig, Inc. v.
JBR, Inc. CIV. A. 11-11941-FDS, 2013 WL 2304171 (D. Mass. May 24, 2013) aff'd. 558 Fed.
Appx. 1009 (Fed. Cir. 2014).
In Minka v. Maxim, the court reviewed three different asserted design patents directed to
light fixtures and compared them to the respective accused products, two of which are shown
below:
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The court determined that the below third patent design (‘591) and the accused design were
plainly dissimilar and chose not to consider the prior art in that instance. Minka at *18-21.
The court first looked to the overall visual impressions of the light fixtures, which it
determined were distinctive, and then went on to analyze differences in a few specific features,
such as differences between the silhouette, the finial, the ornamentation of the finials, and the
design of the lower medallion of the ‘515 patent compared with the accused Morrow Bay design,
and the central body, silhouette, and contours of the ‘052 patent compared with the accused
Tuscan Estate design. Based on these differences, the patented design and the accused product
in each instance were plainly dissimilar. Id. at *15, *21, *24. Although the court was satisfied
that two of the asserted patents and accused designs were readily distinguishable to an ordinary
observer, the court proceeded with a full analysis comparing the claimed and accused designs
with the prior art. Id. at *15. In both instances, the court found that the “Defendants' product
would appear different from the Plaintiff's [] patent to any ordinary observer aware of the great
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number of similar prior art designs." Minka at *7. Summary judgment of non-infringement was
entered on all three asserted patents. Id. at *9.
a. The Accused Tray is "Plainly Dissimilar" from the Sausage

Tray in the '754 Patent
There is no infringement of the ‘754 Design patent as a matter of law because the
Sausage Tray in the ‘754 Design patent and the Klement Accused tray are “plainly dissimilar.”
'754 Patent
Klement Accused Tray
The differences between the '754 patent curved sausage tray and the Klement sausage
tray are apparent and vast. The exterior and interior end walls of the '754 patent sausage tray are
opposing convex and concave parallel end walls of approximately the same length while the
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Klement tray includes convex and concave parallel end walls inserted within a rectangular outer
perimeter that has a distinctive outer raised edge of material that forms the rectangular outer
perimeter. The overall impression of the Klement sausage tray is that it forms a rectangular
package but with concave and convex inserts at opposite ends of the rectangular sausage tray to
conform to the natural curvature of the sausages packaged in the sausage tray for proper nesting
of the sausages within the tray. The Klement tray uses more plastic material that extends beyond
the inserted convex and concave curves of its tray to form a raised rectangular border above the
interior convex and concave end walls which extend beyond the exterior concave and convex
end walls within its rectangular shape and which strengthen the tray's structure against fracturing
when loaded with sausages and picked up by a consumer. (Undisp. Stmt.¶¶ 47-49). 1
To prove infringement, Johnsonville must prove the ordinary consumer of fresh dinner
sausage (the “ordinary observer” for purposes of the ‘754 Design Patent) seeing a package of
fresh dinner sausages in the Klement Accused Tray would be confused and believe it to be a
package of Johnsonville’s fresh dinner sausage. Dean Benson and David Nicholson (the
inventors on the Design Patent and Utility application, respectively) both testified their families
purchase fresh dinner sausage and their families would not be confused and purchase a Klement
package of fresh dinner sausage thinking it is a Johnsonville package of fresh dinner sausage.
(Undisp. Stmt. ¶ 51). James Muraff, a consumer of fresh dinner sausage, testified he went to a
grocery store to view the different packages of fresh dinner sausage and from a distance,
Johnsonville’s tray looks curved and Klement’s does not. (Undisp. Stmt. ¶ 52)
While Johnsonville argues the concave and convex shapes inside the rectangular Klement
Tray create the possibility of confusion, the issue for purposes of demonstrating if the two
1
Defendant’s Local Rule 56(b)(1) Statement of Undisputed Facts in Support of its Motion for Claim Construction
and Partial Summary Judgment (hereinafter “Undisp. Stmt.”).
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designs are plainly dissimilar is the overall appearance of the tray. There can be no infringement
based on similarity of specific features if the overall appearance of the designs is dissimilar.
OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997).
Packaging Forensics Associates, Inc., in conjunction with the Sensory Analysis Labs at
Michigan State University Department of Food Science, completed a survey of 100 panelist who
were screened as consumers of fresh dinner sausage. (Undisp. Stmt. ¶ 54). The survey is
entitled “Consumer Perception Towards Packaged Fresh Sausage.” Id. at 54. The 100
participants saw a package of Johnsonville sausage in its patented tray design, a package of
Klement sausage in the Accused Tray and a package of Kroger sausages. (Undisp. Stmt. ¶ 55).
The images of the packages viewed by the participants are reproduced below:
Kroger Tray
Klement Accused Tray
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Johnsonville Curved Tray
(Undisp. Stmt. ¶ 56).
85 out of 100 said that the Johnsonville tray is curved; 68 out of 100 said the Klement is
rectangular; and 93 out of 100 said that the Kroger tray is rectangular. (Undisp. Stmt. ¶ 58). 98
of those 100 surveyed responded that the Product was more important to their purchasing
decision for fresh sausage than the packaging (Undisp. Stmt. ¶ 57). When asked how they
identify a brand of fresh sausage: 43 responded – “Label”; 33 responded “Name on the
package”; 9 responded “Color” and 3 responded “Signage”. (Undisp. Stmt. ¶ 59).
These survey results further confirm the ‘754 Design Patent and the Accused tray are
“plainly dissimilar” as most viewed the Johnsonville tray as curved while most viewed the
Klement tray as rectangular (Undisp. Stmt. ¶ 60). Further, the high percentage of participants
who responded that they identify brands of fresh sausage by “Label” and “Name on the package”
(79 out of 100) – further reenforces that the ordinary observer would not confuse a Klement
package for a package of Johnsonville sausage, as the labels and names on the package clearly
identify “Klement” or “Johnsonville.” (Undisp. Stmt. ¶ 61).
In contrast, Johnsonville has offered only the opinion of Dr. Sand, who concludes the
ordinary observer would be confused between the two trays. (Undisp. Stmt. ¶ 62). Her opinions
fail to establish plain dissimilarity for several reasons. First her opinions are purely conclusory
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and unsupported. (Undisp. Stmt. ¶ 62). As a matter of law, conclusory opinions from experts are
insufficient to establish confusion. See Schnadig Corp. v. Collezione Europa U.S.A., OIC 1697,
2002 WL 31253750 at * 11 (N.D. Ill. Oct. 4, 2002) (granting summary judgment for non-
infringement based on ordinary observer test and refusing to rely on expert testimony from both
parties concerning whether the ordinary observer test was satisfied). Second she bases her
opinion on what she believes the ordinary consumer would think when viewing empty sausage
trays, which is a fundamental flaw. (Undisp. Stmt. ¶ 62). The ordinary observer does not view
empty trays at a retailer, but rather sees fresh dinner sausage in the trays.
Further, when a visual comparison alone is sufficient to determine non-infringement
under the ordinary observer test, expert testimony from the patent holder’s expert cannot create a
material question of fact when the visual comparison reveals the alleged infringing product is not
substantially similar to the patented design. Lawman Armor Corp. v. Master Lock Co., CIV. A.
02-6605 2004 WL 440177, at * 8 (E.D. Pa. March 11, 2004)(finding plaintiff’s expert report did
not create material question of fact where court’s own visual comparison showed that the
allegedly infringing designs were not substantially similar to the patented design). Accordingly
summary judgment in favor of Klement on the issue of infringement of the Design patent is
warranted.
Other courts have granted summary judgment based on a visual determination that the
designs at issue are “plainly dissimilar.” Ethicon Endo-Surgery, Inc, v. Covidien, Inc., 796 F.3d
1312, 1338 (Fed. Cir. 2015), involved design patents directed to ultrasonic devices having a “U”-
shaped trigger, a rounded activation buttons and a rounded fluted torque knob. Comparing the
claimed and accused designs, the court concluded the ordinary observer would not be deceived
and affirmed the district court’s grant of summary judgment of non-infringement. Id. at 1337-38.
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Keurig, Inc. v. JBR, Inc., CIV. A. No. 11-11941-FDS, 2013 WL 2304171 (D. Mass. May
24, 2013) aff'd 558 Fed. Appx. 1009 (Fed. Cir. 2014), involved “disposable beverage filter
cartridges.” To discern the differences, the court compared the patented design to the accused
product to determine whether a consideration of prior art was necessary. Keurig at *5. The court
first compared the initial visual impressions of the two designs and decided a side-by-side
comparison of the similarities (and differences) was sufficient. Id. at *6–8. The court concluded
the two designs were “sufficiently distinct that it [was] clear without more that the patentee ha[d]
not met its burden of proving the two designs would appear ‘substantially the same’ to the
ordinary observer.” Id. at *9 (quoting Egyptian Goddess, 543 F.3d at 678). Finding the two
designs “plainly dissimilar,” JBR’s motion for summary judgment of non-infringement was
granted. See Id. at *9, *16.
Competitive Edge Inc. v. Staples, Inc., 763 F. Supp. 2d 997 (N.D. Ill. 2010), involved a
design patent for a calculator. The court found the two designs “plainly dissimilar to the
ordinary observer,” given the scalloped edged in the patent versus the smooth edges in the
accused design, and the hourglass shape of the accused design and the block rectangular of the
patented design. Id. at 1011.
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Staples' Pillow Top Calculator '734 Patent
See also HR US LLC v. Mizco Int'l, Inc., CV-07-2394, 2009 WL 890550 *12 (E.D.N.Y.
Mar. 31, 2009) (visual comparison of design for palm pilot holder with accused product renders
the accused product design “plainly dissimilar” from the patented design).
Great Neck Saw Mfrs., Inc. v. Star Asia U.S.A., LLC, 727 F. Supp. 2d 1038 (W.D. Wash.
2010) involved a folding knife. The court found the accused knife plainly dissimilar from four
of the patent designs and granted summary judgment of non-infringement. The court noted the
accused knife did not have a segmented u-shaped clip and the scalloping of the knife handle and
shape of the blade holder. Id. at 1052-53.
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b. The Arcuate End Walls in the ‘754 Patent Are Disclosed in the
Prior Art
Even if the court concludes the two designs are not plainly dissimilar, the copied feature
(the concave/convex end walls) are prominently displayed in the prior art. The prior art discloses
many food packages with convex and concave end walls. (Undisp. Stmt. ¶ 64). Reifers et al. U.S.
Design Patent D198, 544 (“the ‘544 Patent”) is directed to solving a similar problem as the ‘754
Patent; namely, the packaging constraints of a curved food product – bananas. (Undisp. Stmt.
¶ 65). The ‘544 Patent has a corresponding utility application for the banana tray - U.S. Patent
No. 3,139,348 (the ‘348 Patent). (Undisp. Stmt. ¶ 65). The ‘348 Patent states the objective of
the disclosed banana tray of the ‘544 design patent is to “provide a novel package of bananas
formed by a novel banana tray which lends itself to improved techniques of displaying and
merchandising of bananas . . . and providing a unique packaging for fruit having the unusual
curve and configuration that bananas naturally have.” (Undisp. Stmt. ¶ 66).
FIGS. 1-2 of the ‘544 Patent are reproduced below. (Undisp. Stmt. ¶ 67).
The banana tray of the ‘544 Patent clearly discloses convex and concave end walls that
effectively provide the same visual impression as the claimed design. From a top (and bottom)
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view (Figs. 1 and 2 above), the end walls of the banana tray of the ‘544 Patent are arcuate
(convex and concave) conforming to the general curvature of a curved food product (i.e.,
bananas). Among its features, the banana tray of the ‘544 Patent has an interior surface and
exterior surface of a concave end wall and an interior surface and exterior surface of a convex
end wall. From a top view, these features in the ‘544 Patent are exactly the same as in the ‘754
Design Patent. (Undisp. Stmt. ¶ 68).
Other Prior Art for food packaging with concave/convex arcuate end walls are shown
below:
000093505-0004 Packaging for Food Stuffs
001166557-00001 Packaging for Food Stuffs
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DM/071-107 Tray for Packing Foods
US 5,395,632A Packaging of Thinly Sliced Meats
US D541,591 S1 Food Pan
US 20090065391 A1 Food or Drink Tray
(Undisp. Stmt. ¶ 69).
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Comparing Figure 8 of the ‘754 Patent to the Prior Art and the Accused Tray illustrates
that the concave and convex curved end walls are featured prominently in the prior art. (Undisp.
Stmt. ¶ 70). The presence of convex/concave end walls in the prior art further distinguishes the
‘754 Patent from the Accused Tray. (Undisp. Stmt. ¶ 70). Specially, these comparisons highlight
the rectangular shape of the Accused Tray and the ridge or bridge that surrounds the top of much
of the Accused Tray. (Undisp. Stmt. ¶ 70).
Courts have found non-infringement as a matter of law after comparing the two designs
at issue with the prior art. The court in Wing Shing v. Sunbeam Prods. analyzed whether
Sunbeam’s coffee maker was “plainly dissimilar” to Wing Shing’s patented coffee maker design:
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The court identified two major differences in the designs – differently shaped bases and
“dramatically different tops.” 665 F.Supp. 2d at 363. While recognizing "manifest differences in
the overall appearance" of the two designs, the court looked "to the prior art for context." Id.
After reviewing and comparing several prior art references to both the accused patented designs,
the Court found "on the whole the claimed design when compared to the prior art bespeaks 'a
field . . . crowded with many references relating to the design of the same type of appliance.'" Id.
at 364-65 quoting Egyptian Goddess, 543 F. 3d at 676. The court concluded an ordinary observer
familiar with the prior art would not believe the accused design was the same as the '585 patent
and thus found no infringement. Id. at 368.
Arc'teryx Equip., Inc. v. Westcomb Outerwear, Inc., WL 4838141 (D. Utah Nov. 4,
2008), involved a design patent for a curvilinear zipper. After identifying the differences
between the two zippers, including the number of sections, placement and length and comparing
them to the prior art, the court concluded the ordinary observer would not be confused and
granted summary judgment for non-infringement. Id. at * 3-4.
Fanimation, Inc. v. Dan’s Fan City, Inc., No.1:08-CV-1071-TWP-WGH, 2010 WL
5288304 (S.D. Ind. Dec. 16, 2010) aff'd. 444 Fed. Appx. 449 (Fed. Cir. 2011), involved electric
ceiling fans. After comparing the patented design to the accused design and the prior art, the
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court concluded the ordinary observer familiar with the prior art would not be deceived into
believing the accused product is the same as the patented design. Id. at *11.
Young v. Stone, 13 C 4920, 2014 WL 4271624 (N.D. Ill. Aug. 28, 2014) involved putting
golf practice targets. The court found the spaced disks of the patented design and the pole that
separates the disks were functional, but noted "the differences in the mechanisms that trap the
golf ball to be part of the ornamental design "because they contribute to the overall impression of
the product." Id. at *2. The court found the extended flagpole and base element as ornamental
and noted all the prior art references featured a pole of some length extending from the top disk.
Id.
The court concluded the two products are “so plainly dissimilar that defendant is entitled to
judgment as a matter of law.” Id. at *3.
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See also Spencer v. Taco Bell Corp., 8:12-CV-387, 2013 WL 5499609 (M.D. Fla. Oct. 2,
2013) aff'd. 560 Fed. Appx. 997 (Fed. Cir. 2014) (no reasonable jury could find that an ordinary
observer, familiar with the prior art, could not distinguish the patented design for a canister from
the accused canister).
B. The ‘754 Patent is Invalid As the Claimed Feature Is Not Visible
Articles which are concealed or obscured during normal use are not proper subjects for
design patents since their appearance cannot be a matter of concern. Contessa Food Products,
Inc. v. Conagra Inc., 282 F.3d 1370, 1379 (Fed. Cir. 2002), abrogated on other grounds by
Egyptian Goddess, 543 F.3d at 679; Application of Stevens, 173 F. 2d 1015, 1016 (C.C.P.A.
1949)(design for vacuum cleaner brush rejected as unpatentable as it is hidden during normal
use). “Normal use” in the design patent context extends over “a period in the article’s life,
beginning after completion of manufacture or assembly and ending with the ultimate destruction,
loss or disappearance of the article.” Contessa at 1379. In re Webb, 916 F.2d 1553, 1557-58
(Fed. Cir. 1990). Visibility during an article's "normal use" is a guideline used to determine
whether the claimed feature is "ornamental." If the claimed feature is not visible "during normal
use," the claimed feature is not ornamental as it is not designed for the purpose of enhancing the
product’s appearance, and the patent is not valid.
The fact the design may be visible at some limited times is not enough to justify the grant
of a design patent. As the Court noted in Stevens, the vacuum cleaner brush is or may be visible
at some times and under some circumstances, but almost every article is visible when it is made
and while it is being applied to the position in which it is to be used. 173 F. 2d at 1016. Those
special circumstances do not justify granting a design patent on an article which is concealed in
its normal and intended use. Id. The ornamental appearance of such an article is a matter of such
little concern that it cannot be said to possess patentability as a design. Id
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Design patents directed to features concealed during normal use have been declared
invalid. See Norco Products, Inc. v. Mecca Development, Inc., 617 F.Supp. 1079 (D. Conn.
1985) (invaliding design patent for fluid filter; although patented feature could be seen at time of
sale or repair, it was totally hidden during period of normal use). A&H Mfg. Co. v. Contempo
Card Co., Inc., 576 F.Supp. 894 (D.R.I. 1983)(invalidating design patent for foam pouch because
not intended to be seen in normal use). Static Control Components, Inc. v. Lexmark Int'l, Inc.,
697 F.3d 387 (6th Cir. 2012) (design patent for toner cartridge invalid as toner cartridges are
hidden inside the printer and the design is dictated solely by the printer); C&M Fiberglass Septic
Tanks, Inc. v. T&N Fiberglass Mfg. Co., 78-488, 1981 WL 48173 (D. S.C. June 5, 1981)
(summary judgment holding design patent on septic tank void as tank is concealed during normal
use and is incapable of possessing "ornamentality"). To have a patent declared invalid, the
challenger must prove the appearance of the patented feature is of no consequence to the
purchasing public. Larson v. Classic Corp., 683 F. Supp. 1202 (N.D. Ill. 1988).
The ‘754 Design patent is invalid as the concave/convex end walls, the only claimed
feature, are not visible when packaged with fresh dinner sausage. (Undisp. Stmt. ¶ 72).
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“Normal use” of a sausage tray is observing the package of sausage at the retailer,
purchasing the package of fresh sausage, and transporting the package to the consumer’s home
or other location where the sausage will be cooked and consumed. At the retailer, the consumer
cannot see the claimed concave or convex end walls, as they are covered by the sausage.
(Undisp. Stmt. ¶¶ 71-73). Likewise as long as the fresh sausage remains in the package, the
convex/concave end walls cannot be viewed by the consumer. Id.
Dr. Sand asserts there may be spacing between portions of the sausages which expose the
bottom of the tray. (Undisp. Stmt. ¶ 74). However, the bottom of the tray is not claimed in the
‘754 Patent. (Undisp. Stmt. ¶ 75). Dr. Sand also asserts when the sausages are removed from the
tray to be cooked, the consumer can see the convex/concave end walls. (Undisp. Stmt. ¶ 76).
However, Dr. Sand cites no empirical evidence that supports the assertion that the consumer
examines the end walls of the empty sausage tray after removing the sausage. The more usual
behavior is to simply discard the tray without examining it.
Further, the concave/convex end walls are of no consequence to the consuming public. It
is abundantly clear that consumers of fresh dinner sausages do not care about the
convex/concave end walls of the Johnsonville sausage tray. (Undisp. Stmt. ¶¶ 78, 81). The
survey, entitled “Consumer Perception Towards Packaged Fresh Sausage,” demonstrates the
claimed design of the ‘754 Patent is of no consequence to consumers of fresh dinner sausage.
(Undisp. Stmt. ¶ 79). 98 of those 100 surveyed responded that the Product was more important to
their purchasing decision for fresh sausage than the packaging. (Undisp. Stmt. ¶ 79). When
asked how they identify a brand of fresh sausage the results were: 43 said “Label”; 33 said
“Name on the package”; 9 said “Color” and 3 said “Signage”. (Undisp. Stmt. ¶ 80).
Johnsonville’s own witnesses admit consumers buy Johnsonville’s sausage because of the
taste and quality of the sausage (Undisp. Stmt. ¶ 82); the packaging plays no role in purchasing
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decisions (Undisp. Stmt. ¶ 82); or that they simply do not know why consumers buy Johnsonville
sausage. (Undisp. Stmt. ¶ 82). Since consumers do not care about the concave/convex end walls
when making a fresh sausage purchase, the “754 Patent should be declared invalid.
C. The '754 Patent is Unenforceable Due to Inequitable Conduct
A patentee commits inequitable conduct when the patentee withholds or misrepresents
information that is material to patentability with the specific intent to mislead or deceive the
United State Patent and Trademark Office (USPTO). U.S. Water Servs., Inc. v. Novozymes A/S,
843 F.3d 1345, 1352 (Fed. Cir. 2016). Johnsonville withheld at least one reference that was
material to patentability when it failed to cite U.S. Utility Patent Application No. 12/685,717
(“’717 Utility Application”) during the prosecution of the ‘754 Design Patent with intent to
deceive the USPTO.
A review of the High Point Design Factors for functionality demonstrates the ‘754
Design Patent would not have issued because the claimed design, in light of representations
made by the patentee within the ‘717 Utility Application, is primarily functional. (See pp. 9-15,
Claim Construction Brief). The ‘717 Utility Application, which the Design examiner was not
made aware of, is “but for” material in the context of the inequitable conduct analysis. The
evidence shows the patentee was: (1) aware of the co-pending ‘717 Utility Application; (2)
aware of its materiality in view of statements made in the specification and during prosecution;
and (3) the single most reasonable inference is that patentee made a deliberate decision not to
disclose the ‘717 Utility Application to the Design examiner. Had the Design examiner been
aware of the ‘717 Utility Application, she would have finally and permanently rejected the
design application for lack of ornamentality. 35 U.S.C. § 171.
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1. The '717 Utility Application Is "But For" Material.
Information is material if it would have a prevented a patent claim from issuing. Ohio
Willow Wood Co. v. Alps, S., LLC, 735 F.3d 1333, 1345 (Fed. Cir. 2013). A party claiming
inequitable conduct must show materiality by a preponderance of the evidence. Id. Information is
material to patentability when (a) it establishes, by itself or in combination with other
information, a prima facie case of unpatentability of a claim or (b) it refutes, or is inconsistent
with, a position the patentee takes in opposing an argument of unpatentability relied on by the
USPTO or asserting an argument of patentability. Id.
A design patent is “created for the purpose of ornamenting” and cannot be the result of or
“merely a by-product” of functional or mechanical considerations. MPEP 1504.01(c) (9th Ed.
2018); 35 U.S.C. § 171. Design patents lacking ornamentality should be rejected under 35 U.S.C.
§ 171 when the claimed feature(s) of the design application are primarily functional. Id. The
examiner may use the specification of an analogous utility patent or the specification of a related
utility patent to establish a prima facie case that the claimed feature(s) is/are primarily functional.
Id.
The Federal Circuit established several factors to determine if a claimed feature(s) of a
design patent is/are functional. The third is whether there exists a concomitant utility application
and the fourth is whether advertising touts particular features of the design as having a specific
utility. PHG Techs, LLC v. St. John Cos., Inc., 469 F.3d 1361, 1366 (Fed. Cir. 2006); Sometimes
less than all of the factors or even one of the factors is dispositive. Dorman Prods., v. PACCAR,
Inc., 201 F.Supp 3d 663, 693 (E.D. Pa. 2016) (citing Best Lock Corp. v. Ilco Unican Corp., 94
F.3d 1563, 1566 (Fed. Cir. 1996)).
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a. The Claimed Design of the ‘754 Design Patent
To determine whether the claimed design in the ‘754 Design Patent is primarily
functional, one first identifies what is being claimed. As explained in Defendant’s Claim
Construction Brief (pp. 2-8), the claimed design of the ‘754 Design Patent as a whole is directed
to the interior and exterior convex and concave end walls of the sausage tray.
b. The Claimed Design is Primarily Functional
The High Point Design Factor analysis at pages 9 to 15 of Defendant’s Claim
Construction Brief demonstrates the claimed design of the '754 Patent is primarily functional.
2. Johnsonville Intended to Deceive the Patent Office.
Inequitable conduct also requires specific intent to deceive the USPTO. Ohio Willow
Wood Co., 735 F.3d at 1351. The patentee may have specific intent by omission when the
patentee (i) knew of the reference, (ii) knew that it was material, and (iii) made a deliberate
decision to withhold or not disclose it. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d
1276, 1290 (Fed. Cir. 2011). The specific intent to commit inequitable conduct may be inferred
from indirect and circumstantial evidence. Ohio Willow Wood Co., 735 F.3d at 1351. However,
deceptive intent must be "the single most reasonable inference drawn from the evidence." Id.
a. The Patentee Knew of the Reference
The patentee clearly knew of the ‘717 Utility Application when the ‘754 Design Patent
was filed and prosecuted. Both applications were prepared by, reviewed by, filed by, and/or
signed and prosecuted by attorneys Daniel Radler and Luke Kohtala. (Undisp. Stmt. ¶¶ 93-94).
Radler oversaw and reviewed both applications, while Kohtala assisted in the preparation and
prosecution of both applications. (Undisp. Stmt. ¶ 95) Both were filed on January 12, 2010 and
were directed to the same sausage tray embodiments. (Undisp. Stmt. ¶ 96). Clearly both patent
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attorneys, despite their claim of ignorance, were fully aware of the undisclosed ‘717 Utility
Application and its substantive contents during the prosecution of the ‘754 Patent.
b. The Patentee Knew the Reference was Material
Attorneys Radler and Kohtala were clearly aware of the materiality of the ‘717 Utility
Application to the ‘754 Design Patent because they claimed the same features, namely the
convex and concave end walls. (Undisp. Stmt. ¶ 98).
First, both made many assertions about the functional nature of the convex and concave
ends walls. They identified functional problems of the shifting sausage links within the
packaging causing the sausage links to look undesirable, and the sausage links not covering the
entire bottom of the tray, resulting in wasted or unneeded material. (Undisp. Stmt. ¶¶ 99-100).
The Utility Application stated: “Advantageously, the arcuate end walls secure nested sausages
on the tray from shifting and eliminates empty space on the tray.” (Undisp. Stmt. ¶ 101).
These attorneys claimed the convex and concave end walls of the sausage tray
embodiments in at least claims 1, 3, and 6 of the ‘717 Utility Application. (Undisp. Stmt. ¶¶ 101-
102) These patent claim features are all directed to, or claim the utility of the convex and
concave end walls in the Design Patent. In a Response to the April 6, 2011 Non-Final Office
Action to overcome prior art rejections of these claims in the Utility Application, they argued:
Several advantages exist for having a sausage tray that includes an arcuate end on each of
the arcuate end walls. The arcuate nature of the end walls of the sausage tray reduces
the amount of raw materials used for forming the sausage tray. The reduction in raw
materials provides for savings in manufacturing the sausage tray. In addition, the
arcuate nature of the ends of the end walls provide the benefit of enhancing the curved
shape of the sausages, or other product, within the tray.
(Undisp. Stmt. ¶ 103). This demonstrates they knew these functional benefits of the convex and
concave end walls in the ‘717 Utility Application. (Undisp. Stmt. ¶ 104).
Second, both attorneys were aware of the clear overlap between the functional assertions
of the convex and concave end walls in the specification and claims of the ‘717 Utility
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Application and the convex and concave end walls claimed in the ‘754 Design Patent. They
knew they were claiming the portions of the drawings of the ‘754 Design Patent that are in solid
lines. (Undisp. Stmt. ¶ 105). Both acknowledged only the portions of design patent drawings
that are in solid lines are what is being “claimed” as the invention. (Undisp. Stmt. ¶ 106).
Both attorneys prepared, reviewed, and filed the 12 figures that make up the claimed
design in the '754 Patent. (Undisp. Stmt. ¶¶ 107-109). The two embodiments in the ‘717
Application are effectively the same claimed design. The end walls in the ‘754 Design Patent fit
the curvature of and assist in “nesting” sausages in the sausage tray, as set forth in at least
paragraphs [0005] and [0022] of the ‘717 Utility Application. (Undisp. Stmt. ¶ 110). Radler and
Kohtala defined the claimed interior surface of the end walls of the sausage tray in figures 1, 2, 7
and 8 of the '754 Design Patent; and in figures 3-6 and 9-12, they defined the exterior surface of
the end walls of the sausage tray. (Undisp. Stmt. ¶¶ 112-114). Other than the claimed interior
surface and exterior surface of the end walls, there are no other claimed features of the ‘754
Design Patent. (Undisp. Stmt. ¶ 115). Thus, they were clearly aware that the ‘754 Design Patent
claims were directed to the convex and concave end walls of the sausage tray and were also
aware of the materiality of the ‘717 Utility Application to prosecution of the ‘754 Design Patent.
(Undisp. Stmt. ¶¶ 116).
c. The Patentee Made a Deliberate Decision To Not Disclose the

Reference
Based on the actions/inactions of attorneys Radler and Kohtala, the single most
reasonable inference is that they individually and/or together, made a deliberate decision to not
disclose and to prevent the Design examiner from becoming aware of the ‘717 Utility
Application. (Undisp. Stmt. ¶ 118).
First, both applications were filed on January 12, 2010. (Undisp. Stmt. ¶ 119). When a
patent attorney files utility and design applications on the same day, both directed to the same
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product(s), the patent attorney should cross-reference the other application(s) in each filed
application(s). (Undisp. Stmt. ¶ 119) Cross-referencing other related patent applications is an
easy and effective way to notify the examiner and the public of the relatedness of the subject
matter of the other applications.2 (Undisp. Stmt. ¶¶ 120-121). For design patent applications,
cross-referencing any concomitant utility patent application(s) allows the examiner to check for
lack of ornamentality and functionality. (See 37 C.F.R. § 1.78 (d)(5) “[c]ross-references to other
related applications may be made when appropriate (see § 1.14) . . .”)). (Undisp. Stmt. ¶ 122).
Deciding to not cross-reference other applications directed to the same product(s) is
evidence a deliberate decision was made to withhold the existence of a concomitant utility
application from the design patent examiner. (Undisp. Stmt. ¶ 123) Where both applications
were prepared and filed by the same patent attorneys on the very same day, where both attorneys
were aware of the ‘717 Utility Application and its contents, and where both were also aware of
the materiality of the contents of the ‘717 Utility Application to the prosecution of the ‘754
Design Patent, there is no other reasonable reason except the attorneys made a deliberate
decision to not disclose the ‘717 Utility Application to the design examiner. This is the single
most reasonable inference that can be drawn from these facts. (Undisp. Stmt. ¶ 125).
Second, Kohtala and Radler filed an Information Disclosure Statement (IDS) for the ‘717
Utility Application on August 5, 2010 and an IDS for the ‘754 Design Patent application on
August 6, 2010. (Undisp. Stmt. ¶ 126). When utility and design applications are filed, both
directed to the same product(s), the patent attorney should cite the other application(s) in each
filed IDS if not already done so within the “Cross Reference To Related Applications” section of
each patent application. (Undisp. Stmt. ¶ 127). The attorney should also cite the same prior art in
both IDS filings. (Undisp. Stmt. ¶ 127). When both IDS filings are performed the same day or
2
Newholm, Johnsonville’s expert, acknowledged the examiners do not speak to each other. (Undisp. Stmt. ¶ 124).
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very close in time (i.e., one day apart), in multiple applications directed to the same product, it is
highly likely the attorney was well aware of the relatedness of both applications and made a
deliberate decision to withhold citing the other application. (Undisp. Stmt. ¶ 128). Citing the
other related patent application(s) in an IDS is an easy and effective way to notify the examiner
and the public of the relatedness of the subject matter of the other applications. (Undisp. Stmt.
¶ 129). In the case of design patent applications, citing any concomitant utility patent
application(s) in an IDS allows the design examiner to know during the prosecution of the design
patent application that one or more exists for at least the purpose of checking for lack of
ornamentality and functionality as a part of the examination process. (Undisp. Stmt. ¶ 130).
Deciding to not cite in an IDS other applications that are directed to the same product(s)
is evidence that a deliberate decision was made to withhold the existence of a concomitant utility
application from the design patent examiner. This is the single most reasonable inference that
can be drawn from these facts. (Undisp. Stmt. ¶ 131).
Lastly, both attorneys were deposed to determine their intent and if they had any
reasonable reason for not advising the design examiner of the ‘717 Utility Application.3 No
reason whatsoever was provided. These attorneys stated they took their duty of candor under
Rule 1.56 very seriously. (Undisp. Stmt. ¶ 132). Kohtala stated when information that may be
material to the patentability of an invention comes to their attention, they properly review it to
determine whether it is material, and not duplicative of information already of record, in order to
make an informed decision on whether to advise the examiner of such information. (Undisp.
Stmt. ¶ 133-135). Not only was no reason provided in their depositions for not advising the
design examiner of the ‘717 Utility Application, both attorneys were evasive and tried to not
3
Johnsonville does not know why the ‘717 Utility Application was not disclosed to the design examiner. (Undisp.
Stmt. ¶ 137).
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answer or avoid answering any and all questions related to this topic and/or why they decided to
not advise the examiner of the ‘717 Utility Application. (Undisp. Stmt. ¶ 136). Plaintiff's expert,
Timothy Newholm, purports to offer explanations, but they are nothing but speculation;
especially since Mr. Newholm never talked to either of them. (Undisp. Stmt. ¶¶ 140-141).
Since no reasonable reason was given for not advising the design examiner of the Utility
application, the single most reasonable inference is that Radler and Kohtala made a deliberate
decision to not advise the design examiner. (Undisp. Stmt. ¶ 138). Therefore, Mr. Radler and Mr.
Kohtala, and Johnsonville, knowingly committed inequitable conduct pursuant to 37 CFR § 1.
56, despite their claim to follow this rule. (Undisp. Stmt. ¶ 139).
D. The "Article of Manufacture" is the Curved Sausage Tray Without Sausage
Design-patent holders have the ability to recover an infringer’s total profits on sales of
the “article of manufacture” embodying the patented design. 35 U.S.C. §289. Until recently,
however, it was unsettled whether the relevant “article of manufacture” used to calculate the
infringer’s total profits could be anything less than the end-product sold to consumers.
The U.S. Supreme Court recently addressed the scope of the term “article of
manufacture” for purposes of awarding a design patent infringer’s “total profit” from sales of
“article[s] of manufacture” to which a patented design had been applied. Samsung Elecs. Co.,
Ltd. v. Apple, Inc., 137 S.Ct. 429, 196 L. Ed. 2d 363 (2016). The Court reaffirmed that a design
patent may be on a component of a product and cited the classical statement of design patent law
in Gorham Mfg. Co. v. White, 81 U.S. 511 (1871) where the Court considered a new design for
handles for spoons and forks and held the handles alone were infringed.
The Samsung Court did not identify the “article of manufacture” at issue, but remanded
it, noting that the United States as amicus curiae suggested a test for making this determination:
(1) the scope of the design claimed in the plaintiff’s patent; (2) the relative prominence of the
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design within the product as a whole; (3) whether the design is conceptually distinct from the
product as a whole; and (4) the physical relationship between the patented design and the rest of
the product, including whether the design pertains to a component that a user/seller can
physically separate from the product as a whole, the component that is manufactured separately
from the rest of the product, and/or the component can be sold separately. Id. at 436. On remand,
the court largely adopted the United States’ proposed four-factor test. Apple Inc. v. Samsung
Elecs. Co., Ltd., 678 Fed. Appx. 1012 (Fed. Cir. 2017).
The “article of manufacture” of the ‘754 Design patent is a “sausage tray.” This
conclusion is supported by the express language of the ‘754 Patent, which claims “a sausage
tray.” (Undisp. Stmt. ¶ 142); not “a sausage tray with sausage” or “a sausage tray and sausage”.
The descriptions for Figures 1 and 7 identify the “article of manufacture” as “a sausage tray.”
(Undisp. Stmt. ¶ 143). Timothy Newholm, Johnsonville’s patent expert, agrees the “article of
manufacture” is the sausage tray. (Undisp. Stmt. ¶ 144). Therefore, any claim for damages can
only be based on the value of the tray, not the tray with sausage. See Advantek Mktg., Inc. v.
Shanghai Walk-Long Tools Co., Ltd., 898 F. 3d 1210, 1217 n. 2 (Fed. Cir. 2018) (if the skeletal
structure for a portable dog kennel is the only component of a multi-component product,
Advantek can only seek damages based on the value of the component, not the product as a
whole); Bush & Lane Piano Co. v. Becker Bros., 222 F. 902, 905 (2d Cir. 1915) (Lane invented a
piano case, not a piano and any damages are limited to the piano case; to hold otherwise would
shock the conscience).
Applying the Samsung factors, the same result is reached. First, the scope of the design
is limited to the interior and exterior concave/convex end walls of a sausage tray. In other
words, the two curved end walls. (Undisp. Stmt. ¶ 145). Second, the curved end walls have little
prominence in the appearance of the product – a package of fresh dinner sausage – as the
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sausages cover the end walls and dominate the visual appearance of the product and the
prominent labeling further diminishes the appearance of the curved tray. (Undisp. Stmt. ¶ 146).
Third, the curved end walls are distinct from a package of fresh dinner sausage. (Undisp. Stmt. ¶
147). The court in Nordock Inc.v. Systems Inc., No. 11-CV-118, 2017 WL 5633114 (E.D. Wis.
Nov. 21, 2017), found welded components (the lip and hinge plate of a dock lever) to be
completely distinct as they are conceptually distinct from the overall dock leveler. (Id. at *7).
Finally, the sausage tray is merely one component of a package of fresh dinner sausage that is
easily and regularly separated from the sausage. The tray is manufactured by Cascade, shipped
to Johnsonville where fresh sausage is placed in the tray, the entire package is plastic wrapped
and a label is placed on the front of the package. The tray (along with the plastic wrap and label)
is easily separated from the sausage and in fact that is how consumers use the finished product.
(Undisp. Stmt ¶ 148).
CONCLUSION
Defendant asks that its Motion for partial Summary Judgment be granted.
Dated this 6th day of May, 2019.
/s/ Jane C. Schlicht

Jane C. Schlicht
SAUSAGE CO., INC.
Suite 2600
Milwaukee, WI 53202
Phone No. 414-276-6464
Fax No. 414-276-9220
E-mail Address(es):
and
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Michael J. Femal
MUCH SHELIST, P.C.
Phone No. 312-521-2000
Fax No. 312-521-2100

SAUSAGE CO., INC.
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UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF WISCONSIN
MILWAUKEE DIVISION
______________________________________________________________________________
JOHNSONVILLE SAUSAGE, LLC.,

Case No.: 2:16-CV-938
Plaintiff,
v.
KLEMENT SAUSAGE CO., INC.,
Defendant.
APPENDIX OF UNPUBLISHED CASES
Pursuant to Local Rule 7(j)(2), Defendant Klement Sausage Co, Inc., hereby submits the
below unpublished authority in support of Motion for Partial Summary Judgment.
Apple Inc. v. Samsung Elecs. Co., Ltd.,

678 Fed. Appx. 1012 (Fed. Cir. 2017).
Arc'teryx Equip., Inc. v. Westcomb Outerwear, Inc.,

WL 4838141 (D. Utah Nov. 4, 2008).
C&M Fiberglass Septic Tanks, Inc. v. T&N Fiberglass Mfg. Co.,

78-488, 1981 WL 48173 (D. S.C. June 5, 1981).
Fanimation, Inc. v. Dan’s Fan City, Inc.,

No.1:08-CV-1071-TWP-WGH, 2010 WL 5288304 (S.D. Ind. Dec. 16, 2010).
HR US LLC v. Mizco Int'l, Inc.,

CV-07-2394, 2009 WL 890550 *12 (E.D.N.Y. Mar. 31, 2009).
Keurig, Inc. v. JBR, Inc.,

CIV. A. 11-11941-FDS, 2013 WL 2304171 (D. Mass. May 24, 2013).
Lawman Armor Corp. v. Master Lock Co.,

CIV. A. 02-6605 2004 WL 440177, at * 8 (E.D. Pa. March 11, 2004).
Minka Lighting, Inc., v. Maxim Lighting Int'l, Inc.,

No. 3:06–CV–995–K, 2009 WL 691594 (N.D. Tex. Mar. 16, 2009).
303638645v1 0989247
Case 2:16-cv-00938-LA Filed 05/06/19 Page 1 of 112 Document 84-1
Nordock Inc.v. Systems Inc.,
No. 11-CV-118, 2017 WL 5633114 (E.D. Wis. Nov. 21, 2017).
Schnadig Corp. v. Collezione Europa U.S.A.,

OIC 1697, 2002 WL 31253750 at * 11 (N.D. Ill. Oct. 4, 2002).
Spencer v. Taco Bell Corp.,

8:12-CV-387, 2013 WL 5499609 (M.D. Fla. Oct. 2, 2013).
Young v. Stone,
13 C 4920, 2014 WL 4271624 (N.D. Ill. Aug. 28, 2014).
Z Produx, Inc. v. Make-Up Art Cosmetics, Inc.,

No. CV 13-00734 DDP RZX 2013 WL541049 (C.D. Cal. Nov. 5, 2013).
Dated this 6th day of May, 2019.
/s/ Jane C. Schlicht

Jane C. Schlicht
SAUSAGE CO., INC.
Suite 2600
Milwaukee, WI 53202
Phone No. 414-276-6464
Fax No. 414-276-9220
E-mail Address(es):
and
Michael J. Femal
MUCH SHELIST, P.C.
Phone No. 312-521-2000
Fax No. 312-521-2100

SAUSAGE CO., INC.
2
303638645v1 0989247
Neutral
As of: May 4, 2019 3:30 PM Z
Apple Inc. v. Samsung Elecs. Co.

United States Court of Appeals for the Federal Circuit
February 7, 2017, Decided
2014-1335, 2015-1029
Reporter
678 Fed. Appx. 1012 *; 2017 U.S. App. LEXIS 2140 **; 121 U.S.P.Q.2D (BNA) 1584 ***; 2017 WL 490419
SCOTT PRUSSIA; JAMES QUARLES, III, THOMAS
APPLE INC., a California Corporation, Plaintiff-Appellee
GREGORY SPRANKLING, SETH P. WAXMAN,
v. SAMSUNG ELECTRONICS CO., LTD., a Korean
Washington, DC; MARK D. SELWYN, Palo Alto, CA;
corporation, SAMSUNG ELECTRONICS AMERICA,
RACHEL KREVANS, RUTH N. BORENSTEIN,
INC., a New York corporation, SAMSUNG
NATHANIEL BRYAN SABRI, CHRISTOPHER
TELECOMMUNICATIONS AMERICA, LLC, a Delaware
ROBINSON, Morrison & Foerster LLP, San Francisco,
limited liability company, Defendants-Appellants
CA.
Notice: THIS DECISION WAS ISSUED AS KATHLEEN M. SULLIVAN, Quinn Emanuel Urquhart &
UNPUBLISHED OR NONPRECEDENTIAL AND MAY Sullivan, LLP, New York, NY, for defendants-appellants.
NOT BE CITED AS PRECEDENT. PLEASE REFER TO Also represented by WILLIAM ADAMS; ROBERT
FEDERAL RULES OF APPELLATE PROCEDURE JASON BECHER, SUSAN RACHEL ESTRICH,
RULE 32.1 GOVERNING THE CITATION TO MICHAEL THOMAS ZELLER, B. DYLAN PROCTOR,
UNPUBLISHED OPINIONS. Los Angeles, CA; VICTORIA FISHMAN MAROULIS,
Redwood Shores, CA; KEVIN ALEXANDER SMITH,
Subsequent History: On remand at Apple Inc. v. San Francisco, CA.
Samsung Elecs. Co., Ltd., 2017 U.S. Dist. LEXIS
119149 (N.D. Cal., July 28, 2017) Judges: Before PROST, Chief Judge, O'MALLEY, and
CHEN, Circuit Judges.
Prior History: [**1] Appeals from the United States
District Court for the Northern District of California in No. Opinion
5:11-cv-01846-LHK, Judge Lucy H. Koh.
Apple, Inc. v. Samsung Elecs. Co., 2014 U.S. Dist. [*1013] [***1585] PER CURIAM.
LEXIS 29721 (N.D. Cal., Mar. 6, 2014)
This case returns to us on remand from the Supreme
Disposition: REMANDED. Court of the United States. Samsung Elecs. Co. v.
Apple Inc., 137 S. Ct. 429, 196 L. Ed. 2d 363 (2016).
Samsung Electronics Co., Ltd., Samsung Electronics
Core Terms America, Inc., and Samsung Telecommunications
America, LLC (collectively, [**2] "Sam-sung") sought
article of manufacture, damages, district court, patent,
review of our prior decision in Apple Inc. v. Samsung
infringed, parties, further proceedings, awarding
Electronics Co., 786 F.3d 983 (Fed. Cir. 2015), arguing
damages, total profit, argues, phones, remaining issue,
that we erred in our interpretation of design patent
new trial, multicomponent, manufacture, consumer,
damages pursuant to 35 U.S.C. § 289. The Supreme
recalled, requests
Court granted Samsung's petition for a writ of certiorari,
reversed our prior judgment, and remanded the case for
Counsel: WILLIAM F. LEE, Wilmer Cutler Pickering
further proceedings.
Hale and Dorr LLP, Boston, MA, for plaintiff-appellee.
Also represented by ANDREW J. DANFORD, MARK On remand, we recalled our mandate solely with respect
CHRISTOPHER FLEMING, ERIC FLETCHER,
LAUREN B. FLETCHER, SARAH R. FRAZIER, KEVIN

Page 2 of 2
678 Fed. Appx. 1012, *1013; 2017 U.S. App. LEXIS 2140, **2; 121 U.S.P.Q.2D (BNA) 1584, ***1585
to design patent damages1 and reinstated the case. failed to proffer any [*1014] evidence to the jury
Both parties filed statements urging us to take different identifying any smartphone component—as opposed to
actions. While Apple requests continued panel review, the entire phone—as the relevant article of manufacture
Samsung requests that we remand to the district court to which [**4] the patented design was applied. As
for a new trial on damages. For the reasons explained such, Apple maintains that the record permits only the
below, we adopt neither suggested course of action. conclusion that the relevant articles of manufacture
Instead, we remand this case to the district court for must be Samsung's infringing phones.
further proceedings, which may or may not include a
new damages trial. Samsung submits that we should remand to the district
court for a new trial on design patent damages.
Section 289 provides, in relevant part, that whoever According to Samsung, the district court's § 289
manufactures or sells "any article of manufacture to instruction was erroneous in light of the Supreme
which [a patented] design or colorable imitation has Court's decision. Samsung does not dispute that the trial
been applied shall be liable to the owner to the extent of court's recitation of the statutory language from § 289
his total profit." 35 U.S.C. § 289. The Supreme Court was accurate; it argues that the court should have said
clarified that a damages award under § 289 involves something more to account for the fact that, in a
[***1586] two steps: (1) "identify the 'article of multicomponent product, there might be more than one
manufacture' to which the infringed design has been article of manufacture within the meaning of § 289.
applied;" and (2) "calculate the [**3] infringer's total Samsung also argues that remand is appropriate
profit made on that article of manufacture." Samsung, because it will enable the district court to resolve any
137 S. Ct. at 434. The Court then explained that the remaining issues.
only question before it was narrow: "whether, in the
case of a multicomponent product, the relevant 'article In short, the parties dispute what jury instructions the
of manufacture' must always be the end product sold to current trial record supports. Because the district court
the consumer or whether it can also be a component of is better positioned to parse the record to evaluate the
that product." Id.2 parties' competing arguments, we remand for the district
court to consider these issues in the first instance.
Looking to the statutory text, the Supreme Court
concluded that the term "article of manufacture," as it is On remand, the trial court should consider the parties'
used in § 289, "encompasses both a product sold to a arguments in light of the trial record and determine [**5]
consumer and a component of that product." Id. The what additional proceedings, if any, are needed. If the
Court declined, however, to "set out a test for identifying court determines that a new damages trial is necessary,
the relevant article of manufacture at the first step of the it will have the opportunity to set forth a test for
§ 289 damages inquiry." Id. at 436. Instead, the Court identifying the relevant article of manufacture for
remanded the case for this court to "address any purposes of § 289, and to apply that test to this case.
remaining issues." Id. Accordingly, we remand this matter to the district court
for further proceedings.
Apple argues that we can affirm the design patent
damages award without additional briefing or argument REMANDED
because Samsung never asserted that the relevant
article of manufacture was anything other than
Samsung's entire phones. According to Apple, Samsung End of Document
1 Specifically, we recalled the mandate only to the extent it

related to the measure of damages awarded in connection
with the district court's partial final judgment on Apple's design
patent claims.
2 Samsung also argued that § 289 "contains a causation

requirement, which limits a § 289 damages award to the total
profit the infringer made because of the infringement."
Samsung, 137 S. Ct. at 434 n.2. We rejected that argument,
and Samsung abandoned this theory during oral argument to
the Supreme Court. Id.

Caution
As of: May 4, 2019 3:04 PM Z
Arc'Teryx Equip., Inc. v. Westcomb Outerwear, Inc.

United States District Court for the District of Utah, Central Division
November 3, 2008, Decided; November 4, 2008, Filed
Case No. 2:07-CV-59 TS
Reporter
2008 U.S. Dist. LEXIS 90228 *; 89 U.S.P.Q.2D (BNA) 1894 **
prior art, would be deceived into confusing the design of
ARC'TERYX EQUIPMENT, INC., a British Columbia
the company's jacket with the zipper described in the
corporation, Plaintiff, vs. WESTCOMB OUTERWEAR,
patent.
INC., a British Columbia corporation, Defendant.
Outcome
Core Terms The company's motion for summary judgment was
granted.
Patent, straight, ordinary observer, diagonal, Jacket,
zipper, infringe, designs, collar, summary judgment,
prior art, sections, extends, curves, discloses, chest
LexisNexis® Headnotes
Case Summary
Procedural Posture Civil Procedure > Judgments > Summary

Judgment > Evidentiary Considerations
Defendant outwear company sought judgment that its
products did not infringe plaintiff assignee's patent. It Evidence > Inferences & Presumptions > Inferences
moved for summary judgment pursuant to Fed. R. Civ.
P. 56(c). Civil Procedure > ... > Summary
Judgment > Entitlement as Matter of Law > General
Overview Overview
The assignee brought suit against the outerwear
company, alleging that the company's jacket infringed HN1[ ] Summary Judgment, Evidentiary
upon its patent. The patent covered an ornamental Considerations
design for a curvilinear zipper. The ordinary observer
test was the appropriate standard for determining Summary judgment is proper if the moving party can
whether a design patent had been infringed. Further, the demonstrate that there is no genuine issue of material
design was better represented by an illustration than it fact and it is entitled to judgment as a matter of law.
could be by any description. Therefore, the federal Fed. R. Civ. P. 56(c). In considering whether genuine
district court declined to engage in claim construction issues of material fact exist, a federal district court
and relied instead upon the illustrations of the zipper determines whether a reasonable jury could return a
that were set out in the patent. The company's motion verdict for the nonmoving party in the face of all the
was granted. The ordinary observer was an outdoor evidence presented. The district court is required to
clothing customer who was more discerning than an construe all facts and reasonable inferences in the light
average retail shopper. And such an observer would be most favorable to the nonmoving party.
left with the impression that there were several
differences between the patented zipper and that of the
company. The number, length, and placement of the
straight and diagonal sections differentiated each of the Business & Corporate Compliance > ... > Patent
items. Based on those differences, no reasonable jury Law > Infringement Actions > Design Patents
could find that an ordinary observer, familiar with the

Page 2 of 5
2008 U.S. Dist. LEXIS 90228, *90228; 89 U.S.P.Q.2D (BNA) 1894, **1894
Patent Law > Anticipation & Novelty > Elements conversant with the prior art.
HN2[ ] Infringement Actions, Design Patents

Business & Corporate Compliance > ... > Patent
The U.S. Court of Appeals for the Federal Circuit
Law > Infringement Actions > Design Patents
recently clarified the appropriate legal standard to be
used in assessing claims of design patent infringement.
Patent Law > Infringement Actions > Claim
The federal court of appeals held that the point of
Interpretation > General Overview
novelty test should no longer be used in the analysis of
a claim of design patent infringement. Rather, the
ordinary observer test should be the sole test for
determining whether a design patent has been infringed. The U.S. Court of Appeals for the Federal Circuit, in
Under the ordinary observer test, if, in the eye of an considering whether trial courts should conduct claim
ordinary observer, giving such attention as a purchaser construction in design patent cases, has noted that a
usually gives, two designs are substantially the same, if design is better represented by an illustration than it
the resemblance is such as to deceive such an could be by any description, and a description will
observer, inducing him to purchase one supposing it to probably not be intelligible without the illustration.
be the other, the first one patented is infringed by the Therefore, the preferable course ordinarily will be for a
other. district court not to attempt to construe a design patent
claim by providing a detailed verbal description of the
claimed design.
Law > Infringement Actions > Design Patents Counsel: [*1] For Arcteryx, a British Columbia
corporation, Plaintiff: Bradley T. Fox, LEAD
Patent Law > Infringement Actions > Burdens of ATTORNEY, FOX LAW FIRM, CRESTED BUTTE, CO;
Proof John P. Ashton, LEAD ATTORNEY, Stephen K.
Christiansen, VAN COTT BAGLEY CORNWALL &
HN3[ ] Infringement Actions, Design Patents MCCARTHY (SLC), SALT LAKE CITY, UT.
For Westcomb Outerwear, a British Columbia
In applying the ordinary observer test, a federal district
corporation, Defendant: Patricia W. Christensen,
court is to compare the patented design to the accused
Timothy B. Smith, LEAD ATTORNEYS, PARR BROWN
design to determine whether the designs have the same
GEE & LOVELESS, SALT LAKE CITY, UT.
general visual appearance, such that it is likely that the
purchaser (or the ordinary observer) would be deceived For Westcomb Outerwear, a British Columbia
into confusing the design of the accused article with the corporation, Counter Claimant: Patricia W. Christensen,
patented design. Specifically, the question to be Timothy B. Smith, LEAD ATTORNEYS, PARR BROWN
addressed in applying the ordinary observer test is GEE & LOVELESS, SALT LAKE CITY, UT.
whether the ordinary observer would be deceived by the
For Arcteryx, a British Columbia corporation, Counter
accused design because it is substantially similar to the
Defendant: John P. Ashton, LEAD ATTORNEY,
patented design. In some instances, the claimed design
Stephen K. Christiansen, VAN COTT BAGLEY
and the accused design will be sufficiently distinct that it
CORNWALL & MCCARTHY (SLC), SALT LAKE CITY,
will be clear without more that the patentee has not met
UT.
its burden of proving the two designs would appear
substantially the same to the ordinary observer. In other
Judges: TED STEWART, United States District Judge.
instances, when the claimed and accused designs are
not plainly dissimilar, resolution of the question whether Opinion by: TED STEWART
the ordinary observer would consider the two designs to
be substantially the same will benefit from a comparison
of the claimed and accused designs with the prior art.
Opinion
Where there are many examples of prior art designs
differences between the claimed and accused designs
that might not be noticeable in the abstract can become [**1894] MEMORANDUM DECISION AND ORDER
significant to the hypothetical ordinary observer who is GRANTING DEFENDANT'S MOTION FOR SUMMARY

Page 3 of 5
JUDGMENT HN2[ ] The Federal Circuit, in Egyptian Goddess, Inc.

v. Swisa, Inc., 4 recently clarified "the appropriate legal
This matter comes before the Court on Defendant's standard to be used in assessing claims of design
Motion for Summary Judgment. Defendant seeks patent infringement." 5 The court held "that the 'point of
judgment that its products do not infringe United States novelty' test should no longer be used in the analysis of
Design Patent No. 513,715 (the "715 Patent"). For the a claim of design patent infringement." 6 The court held
reasons set out below, the Court will grant the Motion.
"that the 'ordinary observer' test should be the sole test
I. BACKGROUND for determining whether a design patent has been
infringed." 7 Under the ordinary observer test,
On January 24, 2006, the [*2] United States Patent and
Trademark Office issued the Patent No. 513,715 (the if, in the eye of an ordinary observer, giving such
"715 Patent") to inventors Thomas Walker Clarke Fayle attention as a purchaser usually gives, two designs
and Thomas Routh. The inventors subsequently are substantially the same, if the resemblance is
assigned the Patent No. 513,715 (the "715 Patent") to such as to deceive such an observer, inducing him
Plaintiff. The Patent No. 513,715 (the "715 Patent") is a to purchase one supposing it to be the other, the
design patent which covers an ornamental design for a first one patented is infringed by the other. 8
curvilinear zipper. Plaintiff brought suit against
Defendant alleging that Defendant's Mirage Jacket HN3[ ] "In applying the ordinary observer test, a court
infringes on the Patent No. 513,715 (the "715 Patent"). is to compare the [patented design] to the accused
Defendant answered, arguing that its Mirage Jacket design to determine whether 'the designs have the
does not infringe and that the Patent No. 513,715 (the same general visual appearance, such that it is likely
"715 Patent") is invalid or unenforceable. Defendant that the purchaser [(or the ordinary observer)] would be
also brought a counterclaim against Plaintiff for deceived into confusing the design of the accused
intentional interference with economic relations. article with the patented design.'" 9 "Specifically, the
Defendant now seeks summary judgment that its Mirage question to be addressed in applying the ordinary
Jacket does not infringe on the Patent No. 513,715 (the observer test is whether the ordinary observer would be
"715 Patent"). deceived by the accused design because it is
substantially similar to the patented design." 10
II. SUMMARY JUDGMENT STANDARD
In some instances, the claimed design and the
HN1[ ] Summary judgment is proper if the moving
accused design will be sufficiently distinct that it will
party can demonstrate that there is no genuine issue of
be clear without more that the patentee has not met
material fact and it is entitled to judgment as a matter of
its burden of proving the two designs would appear
law. 1 In considering whether genuine issues of material
"substantially the same" to the ordinary observer . .
fact exist, the Court determines whether a reasonable
. . In other instances, when the claimed and
jury could return a verdict for the nonmoving [**1895]
party in the face of all the evidence presented. 2 The
Court is required to construe all facts and reasonable 4 543 F.3d 665, 2008 WL 4290856 (Fed. Cir. 2008) (en
inferences in the light most [*3] favorable to the [*4] banc).
nonmoving party. 3
5 543 F.3d 665, Id. at *1.
III. DESIGN PATENT INFRINGEMENT STANDARD
6 543 F.3d 665, Id. at *12.
7 Id.
1 Fed. R. Civ. P. 56(c).
8 Gorham Co. v. White, 81 U.S. 511, 528, 20 L. Ed. 731
2 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S. (1871).
Ct. 2505, 91 L. Ed. 2d 202 (1986); Clifton v. Craig, 924 F.2d
182, 183 (10th Cir. 1991). 9 Arminak& Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501
F.3d 1314, 1324 (Fed. Cir. 2007) (quoting Goodyear Tire &
3 MatsushitaElec. Indus. Co. v. Zenith Radio Corp., 475 U.S. Rubber Co. v. Hercules Tire & Rubber Co., Inc., 162 F.3d
574, 587, 106 S. Ct. 1348, 89 L. Ed. 2d 538 (1986); Wright v. 1113, 1118 (Fed. Cir. 1998)).
Southwestern Bell Tel. Co., 925 F.2d 1288, 1292 (10th Cir.
1991). 10 Id.

Page 4 of 5
accused designs are not plainly dissimilar, that its Mirage Jacket does not infringe the Patent No.
resolution of the question whether the ordinary 513,715 (the "715 Patent") under the ordinary observer
observer would consider the two designs to be test. The parties agree that the "ordinary observer" in
substantially the same will benefit from a this situation is an outdoor clothing customer who is
comparison of the claimed and accused designs more discerning that an average retail shopper.
with the prior art [*5] . . . . Where there are many
examples of prior art designs . . . differences An ordinary observer of the Patent No. 513,715 (the
between the claimed and accused designs that "715 Patent") would be left with the impression that the
might not be noticeable in the abstract can become zipper contains two sections: a straight section which
significant to the hypothetical ordinary observer extends from the bottom of the zipper to the chest area
who is conversant with the prior art. 11 and a diagonal section extending from [*7] the chest
area to the collar. While it is true that the Patent No.
HN4[ ] The Federal Circuit went on to consider 513,715 (the "715 Patent") contains a second straight
whether trial courts should conduct claim construction in section which begins and ends in the collar area, that
design patent cases. The court noted that "a design is second straight section is not immediately apparent to
better represented by an illustration 'than it could be by an ordinary observer. An ordinary observer of
any description and a description would probably not be Defendant's product would be left with the impression
intelligible without the illustration.'" 12 Therefore, "the that Defendant's zipper consists of three sections: a
preferable course ordinarily will be for a district court not straight section which extends from the bottom of the
to attempt to 'construe' a design patent claim by zipper to the stomach area, a short diagonal section in
providing a detailed verbal description of the claimed the stomach area, and a second straight section
design." 13 With these standards in mind, the Court extending from the stomach area to the top of the collar.
turns to the analysis of Defendant's Motion.
Within this general description of the two zippers, there
IV. DISCUSSION a several differences worth noting. First, an ordinary
observer would be left with the impression that the
As noted above, the Patent No. 513,715 (the "715 Patent No. 513,715 (the "715 Patent") contains only two
Patent") is a design patent which [*6] covers an sections--a straight section and a diagonal section. An
ornamental design for a curvilinear zipper. Plaintiff's ordinary observer of Defendant's Mirage Jacket, on the
original opposition to Defendant's Motion for Summary other hand, would be left with the impression that the
Judgment was based, at least in part, on the fact that jacket contains three sections--a straight section, a
the Court had yet to construe the Patent No. 513,715 diagonal section, and a second straight section.
(the "715 Patent"). In light of the Federal Circuit's
decision in Egyptian Goddess, it is unnecessary to Second, there are differences in the placement of the
construe the Patent No. 513,715 (the "715 Patent") by diagonal sections of the zipper. The Patent No. 513,715
providing a detailed verbal description of the claimed (the "715 Patent") discloses a diagonal section which
design. Rather, the Court will rely upon the illustrations begins in the chest area of [*8] the jacket and extends
set out in the Patent No. 513,715 (the "715 Patent"), as to the collar. Defendant's design places the diagonal
they better represent the claimed design. section in the stomach area of the jacket. The diagonal
section of Defendant's design is not in the chest area of
Plaintiff also argued that the Court should wait for the the jacket and does not extend to the collar area, but
Federal Circuit's ruling in Egyptian Goddess before rather curves back into a straight section which then
ruling on the Motion. This argument is now extends to the collar.
moot. [**1896]
Third, there are differences in the length of the diagonal
The Court, therefore, will turn to Defendant's argument sections of each design. The Patent No. 513,715 (the
"715 Patent") discloses a design where the diagonal
section makes up approximately one-third of the zipper
11 Egyptian
length. The diagonal section of Defendant's Mirage
Goddess, Inc., 543 F.3d 665, 2008 WL 4290856,
Jacket, on the other hand, is limited to a relatively small
at * 12.
section.
12 543 F.3d 665, Id. at * 13.
Finally, there are differences in the lengths of the
13 Id. straight sections. The Patent No. 513,715 (the "715

Page 5 of 5
Patent") discloses a straight section which makes up United States District Judge
approximately two-thirds of the zipper length.
Defendant's Mirage Jacket, however, discloses two
straight sections, which, when combined, make up End of Document
nearly all of the zipper length.
These difference become important when considering

the prior art. The parties agree that the prior art in this
case consists of German patent DE 40 18 356 (DE 356
Patent) and Lowe Alpine's Black Ice Jacket. The DE 356
Patent discloses a long straight section [*9] which
begins in the middle of a jumpsuit and continues to the
upper chest area before it curves into a short diagonal
section. The diagonal section curves back into a straight
section to the end of the zipper. The Lowe Alpine Black
Ice Jacket has a long straight section which makes up
most of the jacket before it curves into a short diagonal
section which begins at the bottom of the collar and
ends at the top of the collar.
In reviewing the prior art and comparing it to the Patent

No. 513,715 (the "715 Patent"), it is the number, length,
and placement of the straight and diagonal sections
which differentiate each of the items. The Patent No.
513,715 (the "715 Patent") is much closer to the Lowe
Alpine Black Ice Jacket in that they both contain one
straight and one diagonal section. Defendant's Mirage
Jacket, on the other hand, is similar to the DE 356
Patent in that both designs contain a straight section,
curving into a diagonal section, which curves into a
second straight section.
The Court finds, based on the differences set forth

above, that no reasonable jury could find that an
ordinary observer, familiar with the prior art, would be
deceived into confusing the design of Defendant's
Mirage Jacket with the Patent No. 513,715 (the "715
Patent"). As a result of [*10] this ruling, the Court need
not address Defendant's arguments on the validity of the
Patent No. 513,715 (the "715 Patent").
V. CONCLUSION
It is therefore
ORDERED that Defendant's Motion for Summary

Judgment (Docket No. 44) is GRANTED.
DATED November 3, 2008.
BY THE COURT:
/s/ Ted Stewart
TED STEWART

Cited
As of: May 4, 2019 3:58 PM Z
C & M Fiberglass Septic Tanks, Inc. v. T & N Fiberglass Mfg. Co.

United States District Court for the District of South Carolina, Columbia Division
June 5, 1981
No. 78-488
Reporter
1981 U.S. Dist. LEXIS 17638 *; 214 U.S.P.Q. (BNA) 159
C & M Fiberglass Septic Tanks, Inc. v. T & N Fiberglass

Mfg. Co. et al. LexisNexis® Headnotes
Core Terms
patent, ornamental, septic tank, defendants', concealed,
article of manufacture, intended use, manufacture,
Patent Law > Subject Matter > Design
appearance, possessing, incapable, articles
Patents > General Overview
Case Summary HN1[ ] Subject Matter, Design Patents
See 35 U.S.C.S. § 171.

Procedural Posture
Defendants moved for summary judgment in patent

infringement action, alleging the design patent in Patent Law > Subject Matter > Design
question was invalid for lack of ornamentality within the Patents > Functionality
meaning of 35 U.S.C.S. § 171.
Overview Patents > General Overview
Plaintiff brought patent infringement action regarding its HN2[ ] Design Patents, Functionality
septic tank design. Defendants moved for summary
judgment arguing that the septic tank design patent in The statutory grant of a design patent is for appearance,
question was invalid for lack of ornamentality within the not for function or utility.
meaning of 35 U.S.C.S. § 171 because it was buried
underground. The court granted defendants' motion
because plaintiff's septic tank design, an item which was Patent Law > ... > Design Patents > Ornamentality
admittedly concealed in its normal and intended use, Requirement > Hidden Features
was incapable of possessing ornamentality within the
meaning of 35 U.S.C.S. § 171 because the statutory Patent Law > Subject Matter > Design
grant of a design patent was for appearance, not for Patents > Ornamentality Requirement
function or utility.
HN3[ ] Ornamentality Requirement, Hidden
Outcome Features
Defendants' motion for summary judgment was granted,
and plaintiff's septic tank design patent was held void An item which is admittedly concealed in its normal and
and of no effect because it was admittedly concealed in intended use, is incapable of possessing ornamentality
its normal and intended use and was incapable of within the meaning of 35 U.S.C.S. § 171.
possessing ornamentality.
Counsel: [*1] Philip Wittenberg, and Levi &

Page 2 of 2
1981 U.S. Dist. LEXIS 17638, *1
Wittenberg, both of Sumter, S.C., and Francis D. because their appearance or beauty can never be of
Thomas, Jr., and Bacon & Thomas, both of Arlington, consequence to anyone; and, in particular, articles of
Va., for plaintiff. manufacture which are concealed or obscured in normal
use have been held not proper for design patent
Howard P. King, and Bryan, Bahnmuller, King, Goldman
protection.
& McEleven, both of Sumter, S.C., and Cort Flint, and
Bailey, Dority & Flint, both of Greenville, S.C., for
This court is of the view that plaintiff's septic tank
defendants.
design, for HN3[ ] an item which is admittedly
concealed in its normal and intended use, is incapable
Opinion by: SIMONS
of possessing "ornamentality" [*3] within the meaning
of 35 U.S.C. § 171. See In re Stevens, 173 F.2d 1015,
Opinion 81 USPQ 362 (CCPA 1949), and cases cited therein;
Etter v. Watson, 147 F.Supp. 511, 112 USPQ 246
(D.D.C. 1957).
Simons, District Judge.
For the reasons set out above, defendants' Motion for
This matter comes before the court on defendants' Summary Judgment is granted, and United States
Motion for Summary Judgment, which urges that the Patent No. Des. 226,192 is hereby held void and of no
design patent in question, United States Patent No. effect.
Des. 226,192, is invalid for lack of ornamentality within
the meaning of 35 U.S.C. § 171. Section 171 reads as And It Is So Ordered.
follows:
Patents for designs End of Document
HN1[ ] Whoever invents any new, original, and

ornamental design for an article of manufacture may
obtain a patent therefor,…
The issue before the court is whether the septic tank

design which is subject of the instant patent constitutes
an "ornamental design for an article of manufacture"
and, thus, is proper subject matter for a design patent
under 35 U.S.C. § 171. Defendants and plaintiff have
filed briefs and defendants rely on admissions made by
plaintiff in response to defendants' requests. In addition,
the court has [*2] carefully considered the arguments of
counsel at a hearing held in Columbia, South Carolina
on January 29, 1981.
Plaintiffs have admitted in the pleadings, and there is no

genuine issue of fact, that plaintiff's septic tank design,
subject of the patent in suit, is buried underground and
concealed in its normal and intended use. Defendants
contend that since plaintiff's septic tank cannot be seen
during its use, it cannot be ornamental within the
meaning of the design statute.
It has long been recognized that HN2[ ] the statutory

grant of a design patent is for appearance, not for
function or utility. See Gorham Co. v. White, 81 U.S.
511 (1871). Based on this rationale, courts have held
that there are some articles of manufacture incapable of
possessing the requisite "ornamentality" of design

Positive
As of: May 4, 2019 3:15 PM Z
Fanimation, Inc. v. Dan's Fan City, Inc.

United States District Court for the Southern District of Indiana, Indianapolis Division
December 16, 2010, Filed
Case No. 1:08-cv-1071-TWP-WGH
Reporter
2010 U.S. Dist. LEXIS 134526 *; 2010 WL 5285304
allegations that Fan City is infringing two of its design
FANIMATION, INC., Plaintiff, vs. DAN'S FAN CITY,
patents: (1) U.S. Design Patent No. D475,450 (the "'450
INC., Defendant.
patent"); and (2) U.S. Design Patent No. D517,683 (the
"'683 patent") (collectively, "patents-in-suit"). Fan City
Subsequent History: Affirmed without opinion by
has filed a Motion for Summary Judgment contending
Fanimation, Inc. v. Dan's Fan City, Inc., 2011 U.S.
that its products do not infringe the patents-in-suit and,
App. LEXIS 21308 (Fed. Cir., Oct. 20, 2011)
alternatively, the patents-in-suit are invalid. For the
reasons set forth below, Fan City's Motion for Summary
Core Terms Judgment [Dkt. 30] is GRANTED in its entirety.
patent, fan, blades, prior art, ordinary observer, infringe,

designs, summary judgment, hypothetical, overlap,
I. BACKGROUND
ceiling, patents-in-suit, noticeable, ornamental, leaf,
invalidity, features, products, viewing, argues, Palm, Plaintiff Fanimation is [*2] a designer, manufacturer,
allegations, believing, nonmovant, genuine, reasons, and distributor of electric ceiling fans for residential and
angle, law law law, similarities, Comparisons commercial uses. Fanimation acquired the '450 patent
from NICOR Lighting & Fans of Albuquerque, New
Counsel: [*1] For FANIMATION, INC., an Indiana Mexico on November 1, 2003. The '450 patent claims
Corporation, Plaintiff: Harold C. Moore, James Douglas the ornamental design for a ceiling fan. Despite holding
Wood, Paul J. Maginot, MAGINOT MOORE & BECK, the design patent, Fanimation has never offered a
Indianapolis, IN. product embodying the design disclosed in the '450
For DAN'S FAN CITY, INC., a Florida Corporation, patent. Since June 3, 2003, Fanimation has also owned
Defendant: Dwight D. Lueck, BARNES & the '683 patent, which claims the ornamental design for
THORNBURG, Indianapolis, IN; Michael R. Brunelle, a ceiling fan's blade.
BARNES & THORNBURG LLP, Indianapolis, IN.
Like Plaintiff, Defendant Fan City is in the business of
Judges: Hon. Tanya Walton Pratt, United States District making, using, and selling ceiling fans and ceiling fan
Judge. blades. In June 2006, Fan City began selling the 42"
Bombay fan (the "Bombay fan"). Fanimation alleges that
Opinion by: Tanya Walton Pratt the Bombay fan infringes the '450 patent. Fanimation
further alleges that Fan City's woven fan blades infringe
the '683 patent. Fan City now seeks summary judgment
Opinion
that its accused products do not infringe the patents-in-
suit. Fan City has also raised invalidity arguments as to
the patents-in-suit. Additional facts are added below as
ENTRY ON DEFENDANT'S MOTION FOR SUMMARY needed.
JUDGMENT
This patent dispute is before the Court on Defendant II. LEGAL STANDARD
Dan's Fan City, Inc.'s ("Fan City" or "Defendant") Motion
for Summary Judgment. The instant lawsuit stems from Summary judgment is appropriate when the pleadings,
Plaintiff Fanimation, Inc.'s ("Fanimation" or "Plaintiff") affidavits, and other summary judgment [*3] evidence

Page 2 of 9
2010 U.S. Dist. LEXIS 134526, *3
show that no genuine issue of material fact exists and Federal Circuit clarified the test for determining whether
the moving party is entitled to judgment as a matter of a design patent has been infringed. In Egyptian
law. Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 Goddess, the Court established that the operative
U.S. 317, 322, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). question "is whether an ordinary observer, familiar
The moving party bears the burden of identifying those [*5] with the prior art . . . would be deceived into
portions of the record it believes demonstrate the believing [that the accused design] is the same as the
absence of a genuine issue of material fact. Celotex, patented [design]." 543 F.3d at 681 (emphasis added);
477 U.S. at 322-25. Once a movant makes a properly see also Wing Shing Products (BVI) Co. Ltd. v.
supported motion, the burden shifts to the nonmovant to Sunbeam Products, Inc., 665 F. Supp. 2d 357, 361
show that summary judgment should not be granted; the (S.D.N.Y. 2009) ("the law now endows its hypothetical
nonmovant may not rest upon the allegations in the ordinary observer with the knowledge and competence
pleadings, but must support the response to the motion to distinguish between the patented object and its
with summary judgment evidence showing the existence predecessors.").
of a genuine fact issue for trial. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 256-57, 106 S. Ct. 2505, 91 In some cases, where the claimed design and the
L. Ed. 2d 202 (1986). accused design are plainly dissimilar, a comparison to
the prior art may not be necessary. In less obvious
In considering whether genuine issues of material fact cases, however, prior art plays an integral role in an
exist, a court must determine whether a reasonable jury infringement analysis, accentuating the similarities and
could return a verdict for the nonmoving party in the differences between the accused design and the
face of all evidence presented. Id. at 249. All evidence patented design. If, for instance, the patented design is
and reasonable inferences must be viewed in the light close to the prior art, small differences between the
most favorable to the nonmovant. United States v. accused design and the claimed design may become
Diebold, Inc., 369 U.S. 654, 655, 82 S. Ct. 993, 8 L. Ed. more noticeable, given the hypothetical ordinary
2d 176 (1962). observer's familiarity with the prior art. See Wing Shing,
665 F. Supp. 2d at 361 ("if the patent and the prior art
are particularly close, the scale of comparison between
III. DISCUSSION the accused and patented designs shrinks."). Similarly,
a robust array of similar [*6] prior art may magnify
A design patent requires a new, original, and ostensibly small differences between designs. Egyptian
[*4] ornamental design. 35 U.S.C. § 171. Significantly, Goddess, 543 F.3d at 678 ("Where there are many
"a design patent is defined by the content of its drawing; examples of similar prior art designs . . . differences
the proper construction of a design patent focuses on between the claimed and accused designs that might
the overall visual impression of its ornamental, novel not be noticeable in the abstract can become significant
features." Minka Lighting, Inc. v. Maxim Lighting Int'l, to the hypothetical ordinary observer who is conversant
Inc., 2009 U.S. Dist. LEXIS 20948, 2009 WL 691594, at with the prior art."). Simply stated, prior art can serve as
*2 (N.D. Tex. Mar. 16, 2009) (citing OddzOn Prods., Inc. a guiding reference point, informing the hypothetical
v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. ordinary observer's analysis. With these principles in
1997)). For this reason, a court need not issue a mind, the Court turns to its infringement analysis of the
detailed verbal description of the claimed designs, accused designs and the patents-in-suit.
unless it is necessary or helpful. Egyptian Goddess, Inc.
v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008).
1. The '450 patent
A. Infringement Analysis Fan City argues the it does not infringe the '450 patent
by selling its 42" Bombay fan. Describing the elements
Infringement of a design patent is the unauthorized of a design with words alone is an exercise in futility.
manufacture, use, or sale of the article embodying the Therefore, the Court will compare the relevant designs
patented design or any colorable imitation thereof. 35 using illustrations.
U.S.C. § 289. To infringe, the accused product need not
be identical to the patented design. Minka Lighting, Comparisons between the claimed design and the
2009 U.S. Dist. LEXIS 20948, 2009 WL 691594 at *2 accused design are set out below. The patented design
(citing OddzOn Prods., 122 F.3d at 1405). Recently, the is on the left and the accused product is on the right.

Page 3 of 9
2010 U.S. Dist. LEXIS 134526, *6
The '450 patent
The accused product
Comparison from below:
Comparison of the blade:
Comparison from the side:

Page 4 of 9
2010 U.S. Dist. LEXIS 134526, *6
contested. Fan City deems the differences significant;

Fanimation disagrees, deeming them trivial. It would be
senseless for the Court to attempt to [*8] divine the
significance of these differences without viewing the
prior art. Moreover, the need to review prior art is
especially acute where, as here, the prior art is fairly
robust. Indeed, the marketplace for fans that resemble
foliage is surprisingly crowded.
The relevant prior art consists of:
(1) Fanimation's Islander product: Fanimation has

offered the Islander since 1978. It is pictured below (on
the left) next to an illustration of the '450 patent (middle),
and the accused product (right):
These comparisons establish both similarities and

differences between [*7] the accused product and the
'450 patent. Indeed, both designs include five fan
blades, blades with a rounded base portion, sides that
converge to a rounded point, and blades with palm leaf
designs on one side, and a smooth side on the other.
The designs are not mere duplicates, however. The
differences between the designs include:
(1) The shape of the fan blades: The fan blades are
shaped differently. The '450 patent is a wide oval,
whereas the accused product is narrower. In
common parlance, the '450 patent is more heart-
shaped. The accused product, by contrast, is more
like a teardrop.
(2) The overlap of the fan blades The fan blades of

the '450 patent overlap, creating a seamless star
shape. The fan blades of the accused product do
not overlap; thus, the overall shape is less like a
star.
(3) The pattern on the fan blades: The lines on the

fan blade of the '450 patent radiate from a circular
focal point. By contrast, the lines on the accused
product radiate from a center line.
Predictably, the significance of these differences is hotly

Page 5 of 9
2010 U.S. Dist. LEXIS 134526, *8
(2) Fan City's Palm Bay fan: Fan City has offered the
Palm Bay fan since June 2000. It is pictured below (left),
next to the '450 patent (middle), and the accused
product (right).
(3) Paul Lutz's leaf design fan: By 2000, Paul Lutz

created a fan blade design featuring a leaf on the front
of the fan blade with a flat back of the blade. A depiction
of the Mr. Lutz's leaf blade is pictured below (left), next
to the '450 patent (middle), and the accused product
(right).

Page 6 of 9
2010 U.S. Dist. LEXIS 134526, *8
Obviously, there are differences among the prior art, the

accused design, and the '450 patent. Unlike the '450
patent and the accused product, the Islander does not
contain a smooth side on the top. Unlike the '450 patent
and the accused [*9] product, the Palm Bay fan has
four blades and no smooth side. Finally, unlike the '450
patent and the accused product, Paul Lutz's leaf fan
uses a leaf design in lieu of a palm design. Nonetheless,
in light of the relatively cluttered prior art, the Court
deems the differences between the accused product
and '450 patent even more pronounced.
Fanimation maintains that the accused design and the

'450 patent are "virtually identical," despite their
differences. In making this argument, Fanimation
attempts to downplay the differences, arguing that the
ordinary observer would not discern such subtleties.
First, Fanimation concedes that the accused product's
blade appears to be slightly narrower than the design of
the '450 patent, but, in a somewhat conclusory fashion,
argues that "such a difference would not be noticeable
to the ordinary observer." Second, Fanimation argues
that the differences evident from viewing the designs
from below — namely, the shape of the blade and
whether the blades overlap — should be discounted
because this is not the typical vantage point of the
ordinary observer, as it would require the observer "to
stand directly below the fan, and bend his or her neck
almost [*10] 90 degrees upward." Indeed, when

Page 7 of 9
2010 U.S. Dist. LEXIS 134526, *10
viewing the fans at an angle, which is the most common the patented design.
manner of viewing fans, the ordinary observer will not
see this difference in overlap: "In particular, when Second, Fanimation's argument about angles and most
viewed at virtually any angle of inclination, both the common vantage points is also unavailing, given that
Bombay Fan and the '450Patented design would include the hypothetical ordinary observer must consider all
at least some blades that appear to overlap, and some features of the patented design. Viewing the designs in
blades that do not." Third, in attempt to minimize the their entirety, the ordinary observer would readily
differences between the shape and pattern of the fan discern a difference in blade overlap between the
blades, Fanimation emphasizes that the '450 patent accused product and the '450 patent. Moreover,
covers a fan design, not a fan blade design. Thus, the Fanimation's argument is especially curious because it
ordinary observer would compare the fans as a whole, included the view from directly below in its '450 patent.
and would not compare the blades of dismembered fans See Minka Lighting, Inc., 2009 U.S. Dist. LEXIS 20948,
sitting next to each other. When this perspective is 2009 WL 691594, at *2 ("a design patent is defined by
accounted for, Fanimation argues, the ordinary observer the content of its drawing"). The inclusion of this view in
would not notice a difference. the '450 patent reinforces that this is a significant
difference. Finally, the Court's position is further fortified
While these arguments are well-taken, the Court is not by reviewing the prior art Islander's overlapping fan
persuaded. As a general matter, the hypothetical blades.
ordinary observer, while perhaps not persnickety, is
more discerning than Fanimation portrays. This ordinary Third, the Court is not convinced [*13] by Fanimation's
observer is conversant in the prior art and examines all argument that the hypothetical ordinary observer would
features of the product. Int'l Seaway Trading Corp. v. not notice the difference in the pattern of the fan blades.
Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009) Obviously, fans with unique blades are purchased by
("Our [*11] precedent makes clear that all of the "ordinary observers" who have a desire for fans with
ornamental features illustrated in the figures must be unique blades. Thus, it is difficult to imagine that these
considered in evaluating design patent infringement.") individuals would not pay reasonably close attention to
(emphasis added). Moreover, the operative time frame the patterns on those fan blades. After all, the blade
for evaluating infringement is the product's normal use presumably piqued their interest in the first place. The
lifetime — from at least point the point of sale to the Court's position is reinforced by reviewing the prior art
product's destruction. Id. ("The sale of a [product] Islander, which appears to employ a blade pattern more
occurs after it has been manufactured and before it is similar to the '450 patent than the accused product.
ultimately destroyed. Thus, the point of sale for a Accordingly, the Court finds that the differences in
[product] clearly occurs during its normal use lifetime."). pattern on the fan blades is also significant.
Finally, the scope of a design patent is exceedingly
For these reasons, the Court is persuaded that as a
limited. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571,
matter of law, the ordinary observer familiar with the
1577 (Fed. Cir. 1995) ("Design patents have almost no
prior art would not be deceived into believing that the
scope. The claim at bar, as in all design cases, is limited
accused product is the same as the patented design.
to what is shown in the application drawings.").
Therefore, the Court GRANTS Fan City's Motion for
With these principles in mind and against the backdrop Summary Judgment as to the non-infringement of the
of the prior art, the Court once again turns to the '450 patent.
differences between the accused product and the '450
patent. First, the different blade shapes are significant
because they give off a very different visual impression. 2. The '683 patent'
Thus, the hypothetical ordinary observer would not
Fan City next argues that its woven fan blades do not
believe that the accused product is the same as the
infringe Fanimation's '683 design patent, which claims
patented design. In [*12] fact, the prior art Islander
the ornamental design [*14] for a ceiling fan's blade.
appears to employ a blade shape far more similar to the
Comparisons between the claimed design and the
'450 patent than the accused product. Moreover,
accused product are set out below. The patented design
Fanimation's argument that the individual blades need
is on the left and the accused product is on the right.
not be considered because the design patent is for a
ceiling fan — not its blades — falls flat. A quick review
of the '450 patent reveals that the blades are the crux of

Page 8 of 9
2010 U.S. Dist. LEXIS 134526, *14
especially at the bottom of the product. Second, unlike

the '683 patent, the accused blade does not contain a
vertical rod extending from the bottom of the blade to
the top. Finally, the accused blade does not contain
angled strips crossing the vertical rod, whereas the '683
patent contains five such strips.
Without further analysis, the Court can find that the

hypothetical ordinary observer would not be deceived
into believing that the accused product is the same as
the patented design. This position is further reinforced
by the fact that hexagonal-patterned weaving is an old
technique. For [*15] instance, Fan City directs the
Court to an example of a Chinese basket embodying
this design in Plaiting Step-By-Step, first published in
1976. Another example is shown in a Malaysian hat in
The Nature of Basketry, published in 1986. The
hypothetical ordinary observer would be conversant in
this prior art. Below is an example of hexagonal plaiting:
In light of the detailed examination standard set out in

Egyptian Goddess, Minka Lighting, Inc., supra., for the
Court to find the hexagonal plaiting of the dissimilar
products to be sufficient evidence of infringement would
effectively broaden the scop of Plaintiff's patent to cover
all fan blades using the traditional prior art of hexagonal-
pattern weaving.
The images reveal similarities between the accused For these reasons, the Court GRANTS Fan City's
product and the '683 patent. Specifically, both employ a Motion for Summary Judgment as to the non-
hexagonal weaving pattern and incorporate a distinctive infringement of the '683 patent.
edge design, including multi-layered strips with a
decorative zig-zag patterned binding. However, the
images also expose differences between the blades. B. Invalidity Analysis
First, they have a different shape and curvature; the
accused blade is noticeably wider and rounder, Fan City's invalidity argument presents more difficult

Page 9 of 9
2010 U.S. Dist. LEXIS 134526, *15
questions. However, in light of this ruling, the Court, in

its discretion, need not address Fan City's invalidity
argument because it is effectively moot. See Liquid
Dynamics Corp. v. Vaughan Co., Inc, 355 F.3d 1361,
1370-71 (Fed. Cir. 2004).
IV. CONCLUSION
For the reasons set forth above, Fan [*16] City's Motion
for Summary Judgment [Dkt. 30] is GRANTED in its
entirety. A separate judgment shall accompany this
entry.
SO ORDERED:
/s/ Tanya Walton Pratt
Hon. Tanya Walton Pratt, Judge
United States District Court
Southern District of Indiana
End of Document

Caution
As of: May 4, 2019 2:57 PM Z
HR US LLC v. Mizco Int'l, Inc.

United States District Court for the Eastern District of New York
March 31, 2009, Decided; March 31, 2009, Filed
Civil Action No. CV-07-2394 (DGT)(JO)
Reporter
2009 U.S. Dist. LEXIS 27056 *; 2009 WL 890550
that Mizco International, Inc., and Albert Mizrahi
HR US LLC, Plaintiff, v. MIZCO INTERNATIONAL,
(collectively "defendants") offer and sell products that
INC.; AND ALBERT MIZRAHI, Defendants.
infringe the '250 patent. The parties have filed a number
of motions, which are addressed below.
Subsequent History: Appeal dismissed by HR US LLC
v. Mizco Int'l, Inc., 2009 U.S. App. LEXIS 21024 (Fed.
Cir., July 24, 2009)
Background
Core Terms The '250 patent, which was designed by Herbert Richter
of Germany, was filed on November 22, 1999 and was
patent, holder, drawings, sidearm, invalid, granted on September 26, 2000. The '250 patent claims
inconsistencies, indefiniteness, designs, infringement, "[t]he ornamental design for a palm pilot holder as
ordinary observer, defendants', open position, Figures, shown and described" in the patent. Included in the '250
summary judgment, alternate, parties, views, patent are six figures (the "'250 drawings"), which show
appearance, dissimilar, plainly, summary judgment different views of a palm pilot holder (the "claimed
motion, visual, prior art, Embodiment, adjustable, holder"). The written descriptions in the '250 patent
skilled, expert testimony, closed position, non- simply [*2] explain what views the various figures
infringement, positions embody.
Counsel: [*1] For HR US LLC, Plaintiff: Carl E. Person, Although plaintiff alleges that defendants sell three
LEAD ATTORNEY, Carl E. Person, New York, NY; Fran infringing products, the parties' papers only discuss the
M. Jacobs, LEAD ATTORNEY, Duane Morris, new york particular mount product produced by defendants that
city, NY; Francine Nicole Nisim, LEAD ATTORNEY, was made part of the record.
Stern Tannenbaum & Bell, New York, NY.
At the outset, it is necessary to explain a difference
For Mizco International, Inc., Albert Mizrahi, Defendants: between the '250 patent and the alleged infringing
Ezra Sutton, LEAD ATTORNEY, EZRA SUTTON P.A., product (the "Mizco holder") that is discussed in a
Woodbridge, NJ.
number of the claims at issue. 1 The Mizco holder and
the commercial embodiment of the '250 patent
Judges: David G. Trager, United States District Judge.
("Commercial Embodiment") both include adjustable
side arms that extend out from the base of the holder.
Opinion by: David G. Trager
This feature allows the side arms to securely "clamp"
electronics products of different sizes to the holder.
Opinion Harald Richter Decl. P 11; Dixon Decl. P 12; Amsel
Decl. P 16; Anders Decl. P 28. In Mizco Holder Pictures
# 2 and # 5, the side arms appear to be fully extended
(the "open position"). When in the open position, the
MEMORANDUM AND ORDER
side arms of both the Mizco holder and the Commercial
Trager, J:
1 The '250 drawings and pictures of the Mizco holder ("Mizco
Plaintiff HR US LLC ("plaintiff") holds U.S. Design
Holder Pictures"), Def.'s 56.1 Statement, Ex. 4, are included in
Patent No. D431,250 (the "'250 patent"). Plaintiff alleges the Appendix of this opinion.

Page 2 of 11
2009 U.S. Dist. LEXIS 27056, *2
Embodiment are connected to the base of the holder by render the '250 patent invalid for indefiniteness and
side arm extensions. When the side arms of the Mizco nonenablement under 35 U.S.C. § 112.
holder and the Commercial Embodiment are not
extended to any degree (the "closed position"), the side 35 U.S.C. § 112, which applies to both utility and design
arm extensions [*3] slide into the base and are no patents, 35 U.S.C. § 171, states:
longer visible. See Mizco Holder Pictures # 1, 3-4, 6. In
Figure 1 of the '250 patent, and in all of the other '250 The specification shall contain a written description
drawings, the side arms of the holder are shown in the of the invention, and of the manner and process of
closed position. Because none of the '250 drawings making and using it, in such full, clear, concise, and
show the holder in the open position, the '250 drawings exact terms as to enable any person skilled in the
do not show any side arm extensions. The '250 patent art to which it [*5] pertains, or with which it is most
does not, on its face, indicate whether the side arms nearly connected, to make and use the same, and
shown in the '250 drawings are adjustable or fixed. shall set forth the best mode contemplated by the
inventor of carrying out his invention.
After a proposed joint pre-trial order was submitted, the The specification shall conclude with one or more
parties filed a number of motions. Plaintiff filed a partial claims particularly pointing out and distinctly
summary judgment motion on three of defendants' claiming the subject matter which the applicant
affirmative defenses. Defendants' opposition brief regards as his invention. . . .
opposed plaintiff's motion and also sought summary
judgment on the same grounds. Defendants also filed a In addressing claims that design patents are indefinite
motion for summary judgment on the issues of validity based on inconsistent drawings, courts have not clearly
and infringement. In addition, defendants have filed a distinguished between questions of law and questions of
motion to strike a deposition errata sheet submitted by fact. See Antonious v. Spalding & Evenflo Cos., Inc.,
plaintiff and to declare the '250 patent unenforceable 217 F.3d 849, 1999 WL 777450, at **7 (Fed. Cir. 1999)
based on inequitable conduct. Finally, [*4] defendants (unpublished table case) (reversing summary judgment
filed a motion in limine to prevent two of plaintiff's invalidating patents because defendant "could not have
witnesses, Harald Richter and Steven Dixon, from shown by clear and convincing evidence that [the
testifying as experts. patents] were invalid for indefiniteness" and stating both
that a patent "must be proven invalid by clear and
convincing evidence" and that "[w]hether a claim is
Discussion indefinite and therefore invalid for violating section 112,
P 1, is a question of law"). Similarly, district courts
(1) analyzing indefiniteness challenges to design patents
have not squarely addressed this issue. See Park B.
Smith, Inc. v. CHF Indus., Inc., No. 06-cv-869, 2008
Validity U.S. Dist. LEXIS 19800, 2008 WL 650339, at *6
(S.D.N.Y. Mar. 6, 2008) [*6] (stating that presumption
The first defense raised in the Joint Pre-Trial Order of validity "may only be overcome by clear and
states: convincing evidence" and denying, in dicta, validity
challenge on summary judgment, but not addressing
The '250 Design patent is invalid under 35 U.S.C. § whether question was one of fact or law), vacated on
112 since the patent drawings are inconsistent and other grounds, No. 2008-1320, 309 Fed. Appx. 411,
incomplete and do not sufficiently disclose the 2009 U.S. App. LEXIS 2335, 2009 WL 279051 (Fed.
invention. There is no showing in the patent of the Cir. Feb. 6, 2009); Seed Lighting Design Co., Ltd. v.
design in the open position. It is also invalid based Home Depot, No. 04-cv-2291, 2005 U.S. Dist. LEXIS
on prior art patents under 35 U.S.C. §§ 102 and 44741, 2005 WL 1868152, at *8 (N.D. Cal. Aug. 3,
103. 2005) (stating that invalidity must be proven by clear
and convincing evidence and granting summary
Both parties have moved for summary judgment on the judgment invalidating patent where defendant offered
question of whether the '250 patent is invalid for failing expert testimony and admissions by inventor regarding
to show the claimed holder in the open position. inconsistencies and plaintiff failed to come forward with
Defendants also move for summary judgment on the "any evidence, facts, or expert testimony . . . to
ground that certain inconsistencies in the '250 drawings demonstrate the existence of genuine factual issues

Page 3 of 11
2009 U.S. Dist. LEXIS 27056, *6
sufficient to preclude summary judgment"), appeal 319 F.3d at 1367 (stating, in a utility patent case, that
dismissed, 163 Fed. App'x. 862 (Fed. Cir. 2005); see "[w]hen an analysis of intrinsic evidence resolves any
also Australia Vision Servs. Pty. Ltd. v. Dioptics Med. ambiguity in a disputed claim term, it is improper to rely
Prods, Inc., 29 F. Supp. 2d 1152, 1159 (C.D. Cal. 1998) [*9] on extrinsic evidence to contradict the meaning so
(denying defendant's summary judgment motion for ascertained"); Enzo Life Scis., Inc. v. Digene Corp., 305
invalidity based on similar claim of indefiniteness F. Supp. 2d 406, 408 (D. Del. 2004) (explaining, in a
because defendant "did not include any evidence or utility patent case, that issue of indefiniteness could be
declarations [*7] by experts in the field to attest to the decided as a matter of law where "[t]he claims at issue
indefiniteness of the [the design patent]," and do not have technical or relational terms that may be
concluding that "there is a factual dispute whether the understood differently by one of ordinary skill in the art"
drawings can enable a person skilled in the art to and defendant's "arguments of indefiniteness involve
replicate the patented design"). allegations of internal contradiction based upon the
wording of the claims"). Defendants' second argument
The parties here are also unclear on this issue. that the '250 patent is invalid because it fails to show the
Defendants, citing to decisions that do not involve claimed holder in the open position can also be decided
indefiniteness challenges, state that: (1) a defendant as a matter of law. This argument primarily involves
must establish facts, by clear and convincing evidence, interpreting the relevant statute and regulations. 2
that lead to the conclusion of invalidity; and (2) that Defendants' argument regarding the lack of an open
validity is a question of law. Defs.' Mem. of Law in Supp. position view in the '250 patent will be addressed first.
of Summ. J. Mot. for Invalidity and Non-Infringement
("Defs.' Summ. J. Mot.") at 5-6 (citations omitted). a. Failure Of The '250 patent To [*10] Show The
Plaintiff agrees with defendants' statement of the law, Claimed Holder In The Open Position
but, nonetheless, argues that factual issues exist
precluding a grant of summary judgment in favor of In addition to the general standards set out in 35 U.S.C.
defendants on the issue of inconsistent drawings. Pl.'s § 112, two regulations set out the various requirements
Mem, of Law in Opp'n to Def.'s Mot. for Summ. J. at 3-6. that design patent drawings must meet. 37 C.F.R. §
Neither party offers any explanation as to what issues 1.84 (addressing design and utility patents); 37 C.F.R. §
are questions of law and what issues are questions of 1.152 (specifically addressing design patents). Those
fact. regulations "have the force and effect of law to the
extent they are not inconsistent with the express
In the utility patent context, the Federal Circuit has provisions of the Patent Statute." Hadco Prods., Inc. v.
stated that "'[a] determination of claim indefiniteness is a Lighting Corp. of Am., 312 F. Supp. 1173, 1181 (E.D.
legal conclusion that is drawn from the [*8] court's Pa. 1970), vacated on other grounds, Hadco v. Walter
performance of its duty as the construer of patent Kidde & Co., 462 F.2d 1265 (3d Cir. 1972). 37 C.F.R. §
claims.'" Tech. Licensing Corp., v. Videotek, Inc.., 545 1.152 provides, in relevant part, that:
F.3d 1316, 1338 (Fed. Cir. 2008) (quoting Personalized
Media Commc'ns, L.L.C. v. Int'l Trade Comm'n, 161 The design must be represented by a drawing that
F.3d 696, 705 (Fed. Cir. 1998)). The Federal Circuit, complies with the requirements of [37 C.F.R. §
however, has also noted that fact finding may 1.84] and must contain a sufficient number of views
sometimes be appropriate in determining indefiniteness. to constitute a complete disclosure of the
Id. at 1338 ("To the extent there are any factual findings appearance of the design. . . . Alternate positions of
upon which a trial court's indefiniteness conclusion a design component, illustrated by full and broken
depends, they must be proven by the challenger by lines in the same view are not permitted in a design
clear and convincing evidence" (citing Intel Corp. v. VIA drawing.
Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003))).
37 C.F.R. § 1.84(h), echoes a similar requirement,
In the instant case, defendants' invalidity arguments stating that "[t]he drawing must contain as many views
primarily involve questions of law. Defendants'
challenge based on the inconsistent drawings is strictly
2 There is one potential factual issue, to wit, whether
a question of law because a simple visual inspection of
the '250 drawings both reveals the inconsistencies in the adjustable side arms are a technological necessity in palm
pilot holders. However, even as to this issue, there are no
drawings and resolves the question of whether the
disputed facts, and therefore the issue can be decided as a
inconsistencies render the patent indefinite. Cf. Intel,
matter of law.

Page 4 of 11
2009 U.S. Dist. LEXIS 27056, *10
as necessary to show the invention." In a section categorical rule requiring the inclusion of alternate
entitled [*11] "Alternate position," 37 C.F.R. § 1.84(h)(4) positions, drawings showing alternate positions may,
states that "[a] moved position may be shown by a depending on the circumstances, be necessary to meet
broken line superimposed upon a suitable view if this the "complete disclosure" requirements of the statute
can be done without crowding; otherwise, a separate and regulations. That contention, however, merely begs
view must be used for this purpose." the question of what is required for complete disclosure.
Neither the parties' papers nor further research reveal
The parties do not dispute that the '250 patent includes any analogous cases where a design with an alternate
a sufficient number of views of the claimed holder in the position was challenged as invalid because the patent
closed position. The dispute centers over the '250 drawings failed to show the alternate position.
patent's failure to include any views of the claimed
holder in the open position. Defendants' argument rests primarily on Philco Corp. v.
Admiral Corp., 199 F. Supp. 797 (D. Del. 1961). In
Defendants argue that where a design has an alternate Philco, the court, after a trial, invalidated a patent for a
position, a patent for that design is per se invalid if the portable television receiver that consisted of a single
patent drawings fail to disclose the alternate position. front perspective drawing and included a written
However, neither 35 U.S.C. § 112 nor the relevant description suggesting that the back of the receiver was
regulations require that alternate positions be shown. plain and flat. Because television technology at the time
Although 37 C.F.R. § 1.152 and 37 C.F.R. § 1.84(h)(4) did not permit a flat back, and the potential backs for the
address alternate positions, those regulations simply receiver could have taken several different forms,
limit the ability of a patentee to show alternate positions [*14] the court concluded that, without knowing which
in the same view. type of back would be used, it was impossible to
determine the design's overall aesthetic effect. Id. at
This conclusion is not altered by defendants' citation to 805. By not portraying "an integral part" of the design,
the Patent and Trademark Office's "A Guide to Filing a the patent failed to "enable those skilled in the art to
Design Patent" ("Guide"), which states that "[t]he learn and practice the invention" and prevented the
[*12] alternate positions of a design, or an element of court from applying the legal standard for infringement.
the design, must be shown in separate views." Def's Id.
56.1 Statement PP 23-26, Ex. 5. The Guide appears to
simply be an informal resource for parties prosecuting Relying on Philco, defendants argue that because
patents before the Patent and Trademark Office adjustable side arms are "an integral and substantial
("PTO"). Neither the Guide itself nor any authority raised part of Plaintiff's device," the '250 patent was required to
by defendants suggest that the Guide is entitled to the show the holder in the open position. Defs.' Summ. J.
force of law or even to any level of deference. 3 Mot. at 16-17. According to defendants, adjustable side
Moreover, although the quotation cited by defendants arms are an integral part of the design in the '250 patent
could, standing alone, be read to mean that alternate ("'250 design") because adjustable side arms are a
positions of a design must always be shown, in the "technological necessity." Id. at 17. Even assuming that
context of the language of 37 C.F.R. § 1.152, the most Philco embodies a correct interpretation of the law,
reasonable interpretation of the Guide's statement is defendants' argument necessarily fails, on its own
that if alternate positions are shown, they must be terms, because a palm pilot holder is not required to
shown in separate views. have adjustable side arms. Although the Mizco holder
and the Commercial Embodiment both include
Defendants argue that even if there is no explicit adjustable side arms, plaintiff's experts both attest that
electronics mount products can have either fixed or
adjustable arms. [*15] 4 Harald Richter Decl. P 11;
3 Even the Manual of Patent Examining Procedure ("MPEP"),
which is a more formal PTO publication, "does not have the
force of law or the force of the rules in Title 37 of Code of 4 Defendants have filed motions in limine to preclude those
Federal Regulations." Foreword to United States Patent and witnesses from testifying as experts regarding invalidity,
Trademark Office, MPEP (8th ed., rev. 2, May 2004); see also infringement and damages because they failed, in their
Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1439 (Fed. depositions, to refer to certain legal standards governing those
Cir. 1984) ("The MPEP has no binding force . . ., but is entitled issues. For purposes of determining the motions at issue in
to [judicial] [*13] notice so far as it is an official interpretation this opinion, it is assumed that those witnesses may testify as
of statutes or regulations with which it is not in conflict."). experts. The question of whether the trial testimony of those

Page 5 of 11
2009 U.S. Dist. LEXIS 27056, *15
Dixon Decl. P 12. Defendants, who must prove any Thus, in order for a design patent to be invalidated for
facts critical to invalidity by clear and convincing indefiniteness, errors and inconsistencies in the patent
evidence, offer no evidence that adjustable side arms drawings must be material and of such magnitude that
are a "technological necessity." 5 As such, the '250 the overall appearance of the design is unclear. See
drawings are sufficient under the test laid out in Philco. Park B. Smith, 2008 U.S. Dist. LEXIS 19800, 2008 WL
Because defendants have failed to prove that the '250 650339, at *6 (citing MPEP § 1503.02 and rejecting, in
patent is invalid for not including a drawing showing the dicta, invalidity challenge); Hadco Prods., Inc. v.
holder in the open position, defendants' motion for Lighting Corp. of Am., 312 F. Supp. 1173, 1181 (E.D.
summary judgment on this issue is denied, and plaintiff's Pa. 1970) (finding, after trial, patent not invalid for
motion for summary judgment on this issue is granted. indefiniteness where "errors and inconsistencies in the
drawings as issued are inconsequential"), vacated on
b. Inconsistences In The '250 Drawings other grounds, Hadco v. Walter Kidde & Co., 462 F.2d
1265 (3d Cir. 1972); Ex Parte Asano, 201 U.S.P.Q. 315,
Defendants claim that various inconsistencies in the 317 (Bd. Pat. App. & Inter. 1978) (reversing rejection of
'250 drawings render the '250 patent invalid for patent application with numerous minor inconsistencies
nonenablement and indefiniteness under 35 U.S.C. § and explaining that "[m]echanical drawing errors
112, which states, in relevant part: [*18] and inconsistencies between the figures of the
drawing, which do not preclude the overall
The specification shall contain a written description
understanding of the drawing as a whole are an
of the invention, and of the manner and process of
insufficient basis for holding the design both indefinite
making and using it, in such full, clear, concise, and
and insufficiently disclosed under 35 USC 112.").
exact terms as to enable any person skilled in the
art to which it pertains . . . to make and use the At least in the context of design patents, the concepts of
same . . . . nonenablement and indefiniteness serve a similar
function and have been applied somewhat
The specification shall conclude with one or more
interchangeably. See Seed Lighting, 2005 U.S. Dist.
claims particularly pointing out and distinctly
LEXIS 44741, 2005 WL 1868152, at *8-9; see also
claiming the subject matter which the applicant
Australia Vision, 29 F. Supp. 2d at 1159 (using terms
regards as his invention.
nonenablement and indefiniteness interchangeably in
(Emphasis added).
analyzing argument that sunglasses design patent was
The MPEP states that "it is of utmost importance that invalid under 35 U.S.C. § 112 because drawings failed
the drawing . . . be clear and complete, and that nothing to disclose sufficient shape and contour); Ex Parte
regarding the design sought to be patented is left to Asano, 201 U.S.P.Q. at 317 (explaining, in the context
conjecture." MPEP § 1503.02 (8th [*17] ed., rev. 7, July of dispute over inconsistent drawings, that issues
2008). Although the MPEP generally advises patent related to enablement were "generally the same as"
examiners to object to inconsistences so that the views issues concerning definiteness).
may be made consistent, patent examiners are
Defendants point to four inconsistencies in the '250
instructed to reject an application as "nonenabling and
drawings. Before analyzing these inconsistencies, a
indefinite" where "the inconsistences are of such
number of preliminary arguments raised by plaintiff
magnitude that the overall appearance of the design is
should be addressed.
unclear." MPEP §§ 1503.02, 1504.04.
First, plaintiff points to the fact that after it filed suits
against other defendants for infringement of [*19] the
witnesses should, in any way, be limited is rendered moot by '250 patent, none of those defendants raised the alleged
the fact that defendants' summary judgment motion for non-
inconsistency of the drawings during settlement
infringement is being granted.
negotiations. This fact is irrelevant in determining
5 At his deposition, Herbert Richter stated that "universal validity of the '250 patent in this case.
[*16] type" holders have "movable side arms in 99 percent of
cases." Herbert Richter Dep. 61:64-62:14. That evidence was Second, plaintiff argues that the '250 drawings
not cited by defendants in arguing this issue and is, in any necessarily meet the statute's enablement and
event, insufficient to invalidate the '250 patent under Philco as definiteness requirements because plaintiff used the
that statement allows that some holders do not have movable '250 drawings to create a commercial embodiment of
side arms. Id.

Page 6 of 11
2009 U.S. Dist. LEXIS 27056, *19
the design in the '250 patent. This argument, which Although plaintiff's various arguments are unpersuasive,
would allow patentees to defeat definiteness and a visual inspection of the '250 drawings alone compels a
enablement challenges any time that the patentee denial of defendants' motion for summary judgment on
produced a commercial embodiment of the design, must invalidity as the '250 drawings themselves resolve all
also be rejected as it would make the statutory the inconsistencies raised by defendants.
requirements meaningless whenever a commercial
embodiment is produced. The first inconsistency raised by defendants focuses on
the fact that Figure 1, which, unlike Figures 2, 3, and 4,
Third, plaintiff argues that summary judgment is not is a perspective view, does not show the side arms
warranted because the patent examiner never identified overlapping the base, whereas in Figures 2, 3 and 4 the
any of the alleged inconsistencies. However, "the fact side arms do overlap the base. Because Figures 2, 3
that the patent examiner failed to see material and 4 are consistent with each other, the inconsistency
inconsistencies in the patent should not be taken as in Figure 1 is inconsequential and does not render the
conclusive proof that the patent is valid . . . ." Park B. overall appearance [*22] of the design unclear. See
Smith, 2008 U.S. Dist. LEXIS 19800, 2008 WL 650339, Antonious v. Spalding & Evenflo Cos., Inc., 217 F.3d
at *6. Although one district court has suggested, in the 849, 1999 WL 777450, at **8 (Fed. Cir. 1999)
context of a similar challenge to allegedly inconsistent (unpublished table case) (reversing summary judgment
drawings, that "some [*20] deference [is owed] to the that had invalidated design patents and explaining that
decision of the patent examiner," DCNL Inc. v. Almar where Figures 2 and 3 "plainly showed" a feature that
Sales Co., No. 97-cv-3738, 1997 U.S. Dist. LEXIS was allegedly shown inconsistently in Figure 4, "a
22931, 1997 WL 913941, at *2 (N.D. Cal. Dec. 22, person of skill in the art would primarily look to Figures 2
1997) (finding patent valid in context of denying motion and 3 to determine the shape of the [disputed feature],
for preliminary injunction), aff'd, 178 F.3d 1308 (Fed. and any associated discrepancies in Figure 4 would not
Cir. 1998) (unpublished table case), it is unnecessary to be sufficient to preclude a person from gaining an
determine whether any such deference is appropriate in overall understanding of the total substance of the
this instance, cf. Iron Grip Barbell Co., Inc. v. USA designs"); cf. Datamize, LLC v. Plumtree Software, Inc.,
Sports, Inc., 392 F.3d 1317, 1323 (Fed. Cir. 2005) 417 F.3d 1342, 1347 (Fed. Cir. 2005) (stating, in utility
(explaining, in context of validity challenge, that "[o]n the patent case, that "[o]nly claims 'not amenable to
legal issue of obviousness (as opposed to the construction' or 'insolubly ambiguous' are indefinite"
underlying factual issues) the grant of a patent does not (citations omitted)). It should be noted that although
create a presumption of validity beyond the requirement defendants' three experts each point out that Figure 1 is
that the party seeking to invalidate a patent must prove inconsistent, none of these experts explain why a
invalidity by clear and convincing evidence"). Even person of skill in the art would not look primarily to
without giving any special deference to the patent Figures 2, 3 and 4 in determining whether the side arms
examiner's decision, as explained below, the overlap the base, given that those figures show a
inconsistencies in the drawings do not warrant consistent design. 6
invalidating the '250 patent.
Finally, plaintiff argues that the '250 drawings are not 6 Some district courts [*23] have found expert testimony, or
inconsistent, relying on the declarations of plaintiff's two
the lack thereof, relevant to the question of indefiniteness. See
expert witnesses, who both conclude that "the drawings
Seed Lighting, 2005 U.S. Dist. LEXIS 44741, 2005 WL
of the '250 patent are consistent" and that [*21] a 1868152, at *8-9 (invalidating patent where, inter alia,
person skilled in the art of designing electronics mount defendant offered expert testimony regarding inconsistencies
products would be able to make and use the drawings and plaintiff failed to come forward with "any evidence, facts,
of the '250 patent to design a holder "without or expert testimony"); Hadco, 312 F. Supp. at 1181-82
conjecture." Harald Richter Decl. P 10; Dixon Decl. P (finding, after trial, that patent was not invalid for indefiniteness
12. These conclusory opinions do not aid the court's where plaintiff offered credible expert at trial and defendant
determination of invalidity. Despite the fact that some failed to produce a witness "skilled in the art of designing [the
inconsistencies in the '250 drawings are, as discussed disputed product]"); see also Australia Vision, 29 F. Supp. 2d
below, plainly apparent, plaintiff's experts refuse to at 1159 (denying, in context of similar challenge, defendant's
summary judgment motion for invalidity where defendant "did
acknowledge any inconsistencies and fail to address
not include any evidence or declarations by experts in the field
any of the specific inconsistencies alleged by
to attest to the indefiniteness of the [the design patent]").
defendants.
Although expert testimony may be critical in some

Page 7 of 11
2009 U.S. Dist. LEXIS 27056, *23
Two of the other inconsistences cited by defendants [*26] not be determined from the inconsistent drawings.
also involve the situation where multiple [*24] views are Although admissions by an inventor are, of course, not
consistent and only a single view is inconsistent. required for an indefiniteness finding, those admissions
Although Figure 1 shows the top of the base as straight, appear to have been critical to the court's decision in
the top of the base is curved in Figures 4 and 5. 7 Seed Lighting 2005 U.S. Dist. LEXIS 44741, [WL] at *9.
Similarly, despite the fact that Figure 5 appears to place More importantly, the court in Seed Lighting stressed
the side arms toward the top of the base, Figures 1, 4, the fact that the plaintiff failed to submit "any evidence,
and 6 all show the side arms toward the bottom of the facts, or expert testimony." Id. In the instant case,
base. Again, defendants' experts do not explain why a however, the '250 drawings themselves, rather than the
person of skill in the art would not look to the multiple declarations of the parties' experts, are the only
views that are consistent. evidence needed to resolve the issue of indefiniteness.
The final inconsistency pointed to by defendants (2)

involves the shape of the side arms. Figure 6 clearly
shows trapezoidal side arms whereas the perspective
view in Figure 1, which is somewhat unclear as to this Infringement
feature, appears to show rectangular, rather than
trapezoidal, side arms. Although there are no additional Determining design patent infringement involves two
views showing the shape of the side arms, invalidation steps. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571,
of the patent is not warranted based on this minor 1577 (Fed. Cir. 1995). First, the patent claim must be
potential inconsistency because Figure 6 plainly shows properly construed to determine its meaning and scope.
the side arms to be trapezoidal in shape. Id. Second, the claim as properly construed must be
compared to the accused design. Id. Although claim
Seed Lighting Design Co., Ltd. v. Home Depot, No. 04- construction is a question of law, Bernhardt, L.L.C. v.
cv-2291, 2005 U.S. Dist. LEXIS 44741, 2005 WL Collezione Europa USA, Inc., 386 F.3d 1371, 1375
1868152 (N.D. Cal. Aug. 3, 2005), upon which (Fed. Cir. 2004), the ultimate determination of design
defendants rely, is distinguishable and is, in any event, patent infringement is a question of fact that plaintiff
merely persuasive authority. In Seed Lighting, the must prove by a preponderance of the evidence, L.A.
district court, on summary judgment, invalidated a Gear v. Thom McAn Shoe Co., 988 F.2d 1117, 1125
design patent for a lamp where there were mistakes and (Fed. Cir. 1993).
ambiguities in the drawings of three of the lamp's six
major components. The court relied on the defendant's a. [*27] Claim Construction
expert report as well as admissions by the inventor that
one of the drawings of the lamp's shade was simply "A design patent's claim is limited to what is shown in
incorrect and that the shape of the lamp's base could the application drawings." Rockport Co. v. Deer Stags,
Inc., 65 F. Supp. 2d 189, 192 (S.D.N.Y. 1999) (citing In
circumstances, such testimony is not needed in the instant re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1998); Elmer,
case to either point out the inconsistencies in the drawings or 67 F.3d at 1577; In re Harvey, 12 F.3d 1061, 1064 (Fed.
to determine whether the inconsistencies render the patent Cir. 1993)). "Given the recognized difficulties entailed in
indefinite. trying to describe a design in words," the Federal Circuit
recently explained that, in design patent cases, "the
7 Inaddition to the arguments that were previously addressed, preferable course ordinarily will be for a district court not
plaintiff also contends that the patent is valid because the
to attempt to 'construe' a design patent claim by
inventor denied, at his deposition, that the '250 drawings
providing a detailed verbal description of the claimed
contained any "mistakes." Herbert Richter Dep. 50:17-21.
design." Egyptian Goddess v. Swisa, Inc., 543 F.3d 665,
When asked specifically about the inconsistency related to the
curvature of the top of the base, the inventor suggested that 679 (Fed. Cir. 2008) (en banc), petition for cert. filed,
Figure 1 was not inconsistent because Figure 1 is a (U.S. Feb. 2, 2009) (No. 08-1031). That said, trial
perspective view. Herbert Richter Dep. 35:9-19. The straight courts, may still find it useful to: (1) describe "various
top of the base in Figure 1 cannot be explained away by the features of the claimed design as they relate to the
fact that Figure 1 is a perspective view. In Figures 4 and 5, the accused design and the prior art"; (2) "describe the role
bottom of the base is shown to have the same curvature as of particular conventions in design patent drafting, such
the top of the base. In Figure 1, however, the bottom of the as the role of broken lines"; (3) describe "the effect of
base [*25] retains this curvature whereas the top of the base any representations that may have been made in the
in Figure 1 is shown as straight.

Page 8 of 11
2009 U.S. Dist. LEXIS 27056, *27
course of the prosecution history"; and (4) "distinguish[] test in which the "ordinary observer is deemed to view
between [*28] those features of the claimed design that the differences between the patented design and the
are ornamental and those that are purely functional." Id. accused product in the context of the prior art." Id. at
at 680 676. The Federal Circuit, however, explained that:
In the instant case, a detailed verbal description of the In some instances, the claimed design and the
'250 patent is unnecessary; it is appropriate to "rely accused design will be sufficiently distinct that it will
upon the illustrations set out in the [the patent], as they be clear without more that the patentee has not met
better represent the claimed design," Arc'teryx Equip., its burden of proving the two designs would appear
Inc. v. Westcomb Outerwear, Inc., No. 07-cv-59, 2008 "substantially the same" to the ordinary observer,
U.S. Dist. LEXIS 90228, 2008 WL 4838141, at *2 (D. as required by Gorham. In other instances, when
Utah Nov. 4, 2008). It should, however, be noted that the claimed and accused designs are not plainly
the various inconsistencies in the '250 drawings, which dissimilar, resolution of the question whether the
were previously addressed in the context of defendants' ordinary observer would consider the two designs
indefiniteness challenge, warrant a brief description. to be substantially the same will benefit from a
Those inconsistencies should be construed as follows: comparison of the claimed and accused designs
(1) the side arms overlap the base as shown in Figures with the prior art . . . .
2, 3 and 4; (2) the top of the base is curved as shown in
Figures 4 and 5; (3) the side arms are located towards Id. at 678.
the bottom of the base as shown in Figures 1, 4 and 6;
Thus, although Egyptian Goddess established a new
and (4) the side arms have a trapezoidal shape as
standard for analyzing the impact of prior art in
shown in Figure 6. Finally, neither party argues that any
determining infringement, a plaintiff must, as a threshold
features visible in the '250 drawings should be excluded
matter, show that the claimed and accused designs are
based on functionality.
not "plainly dissimilar." A comparison of the two designs
b. Federal Circuit's Recent Egyptian Goddess with the prior art is only required under the modified
Decision Gorham test [*31] set out in Egyptian Goddess if this
threshold showing is met. 8 See Minka Lighting, Inc. v.
In Egyptian Goddess, the Federal Circuit, sitting en Maxim Lighting Int'l, Inc., No. 06-cv-995, 2009 U.S. Dist.
[*29] banc, not only clarified claim construction in LEXIS 20948, 2009 WL 691594, at *8 (N.D. Tex. Mar.
design patent cases, but also established a new 16, 2009) (granting summary under Egyptian Goddess
standard for design patent infringement. Prior to where designs were "plainly dissimilar" and finding it
Egyptian Goddess, in order to show infringement, unnecessary to reference the prior art).
plaintiffs were required to meet both the "ordinary
observer" test and the "point of novelty" test. Id. at 670- c. Ordinary Observer Test
71. Under the ordinary observer test, which was
As noted above, under the ordinary observer test, "if, in
established by the Supreme Court in Gorham Co. v.
the eye of an ordinary observer, giving such attention as
White, 14 Wall. 511, 81 U.S. 511, 20 L.Ed. 731 (1871),
a purchaser usually gives, two designs are substantially
"if, in the eye of an ordinary observer, giving such
the same, if the resemblance is such as to deceive such
attention as a purchaser usually gives, two designs are
an observer, inducing him to purchase one supposing it
substantially the same, if the resemblance is such as to
to be the other, the first one patented is infringed by the
deceive such an observer, inducing him to purchase
[*32] other." Gorham, 81 U.S. at 528; see also
one supposing it to be the other, the first one patented is
infringed by the other." Id. at 528. Under the point of
novelty test, which can be traced to Litton Sys., Inc. v.
Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984), a 8 Because Egyptian Goddess had not yet been decided when
plaintiff was required to show that the accused design the parties filed their briefs in August 2008, those papers
appropriated the specific points of novelty found in the analyze the issue of infringement under the prior framework.
claimed design. Egyptian Goddess, 543 F.3d at 670-71. Neither party has submitted any supplemental briefing to
In Egyptian Goddess, the Federal Circuit rejected the address Egyptian Goddess. Normally, additional briefing
point of novelty test as a "second and free-standing would have been requested of the parties. However, any
additional briefing would not have been helpful in light of the
requirement" and subsumed consideration [*30] of the
fact that the two designs are plainly dissimilar, and therefore
prior art into a modified version of the ordinary observer
no analysis of the prior art is required.

Page 9 of 11
2009 U.S. Dist. LEXIS 27056, *32
Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber arms, in conjunction with the placement of the side arms
Co., Inc., 162 F.3d 1113, 1118 (Fed. Cir. 1998) within the border of the base, give the Mizco holder a
("Infringement of a design patent requires that the different look than the less obstructed base of the '250
designs have the same general visual appearance, such design and contribute to the overall dissimilarity
that it is likely that the purchaser would be deceived into between the two designs. As such, in the closed
confusing the design of the accused article with the position, the Mizco holder conveys an overall visual
patented design."). "There can be no infringement impression that is "sufficiently distinct" from the '250
based on the similarity of specific features if the overall design.
appearance of the designs are dissimilar." OddzOn
Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 Furthermore, when the Mizco holder is in the open
(Fed. Cir. 1997). The patented and accused designs, position, the two designs are even more dissimilar. 9
however, need not be identical in order for design patent When the side arms of the Mizco holder are extended,
infringement to be found. See Egyptian Goddess, 543 the two side arm extensions, which have a staggered
F.3d at 678 (explaining that under the ordinary observer design, become visible. Since the side arm extensions
test, "infringement will not be found unless the accused do not cover the entire area previously occupied by the
article 'embod[ies] the patented design or any colorable side arms, when the side arms are extended, the two
imitation thereof.'") (citations omitted). notches that are cut into the base are also revealed.
The notches, which are more noticeable in the open
The '250 patent, which has generally clean lines and a position, significantly affect [*35] the contours and
simple look, consists of a generally rectangular base overall look of the holder. In the open position, the
with two side arms attached to the lower portion of the notches give the Mizco holder a look that sharply
base. The side arms of the '250 design only slightly contrasts with the '250 design. It is clear that no ordinary
overlap the base. The front of the [*33] base is flat and observer viewing the Mizco holder in the open position
unornamented, except for a small lip at the bottom of could possibly be deceived into confusing the design of
the base. the Mizco holder with the '250 design. 10
When the Mizco holder is in the closed position, the '250 It is improper to focus on specific features that differ
design and the Mizco holder are plainly dissimilar. between two designs if such a focus ignores the critical
Although, in the closed position, the base and side arms issue of whether the overall designs, as a whole, are
of the Mizco holder have the same general shape and substantially similar. Amini Innovation Corp. v. Anthony
configuration as the '250 design, the Mizco holder California, Inc., 439 F.3d 1365, 1372 (Fed. Cir. 2006)
significantly differs from the '250 design in critical (stressing that trial court must "analyz[e] the design as a
respects. Most notably, in contrast to the '250 design, whole from the perspective of an [*36] ordinary
the side arms of the Mizco holder do not extend beyond observer" and must avoid relying simply on an "element-
the edge of the base, giving the Mizco holder a by-element comparison" of the patented design and
silhouette that is clearly distinct from the '250 design. alleged infringing device). Summary judgment, however,
See Minka Lighting, 2009 U.S. Dist. LEXIS 20948, 2009 is appropriate where specific ornamental features
WL 691594, at *6 ("Similar silhouettes or comparable substantially impact the overall design of the accused
contours between a patented and accused design can product and distinguish the overall design of the
make them 'not plainly dissimilar,' thus counseling accused product from the patented design. See Minka
comparison with the prior art."). The two silhouettes are Lighting, 2009 U.S. Dist. LEXIS 20948, 2009 WL
strikingly different when the backs of the two designs 691594, at *7 (granting summary under Egyptian
are examined. In '250 patent Figure 5, the side arms are Goddess where "distinct ornamental 'hook'" in lamp
visible; however, in Mizco Holder Picture # 3, no side support arm, which was "obvious at first glance," made
arms are visible. The fact that the Mizco holder's side
arms are set completely within the border of the base
9 Plaintiff
never argues that it is inappropriate to compare the
also differentiates the appearance of the Mizco holder
'250 design with the Mizco holder in the open position. Even if
from the [*34] '250 design when viewed from other
such a comparison were improper, the Mizco holder in the
angles. Compare '250 patent Figures 3-4 with Mizco
closed position is plainly dissimilar to the '250 design.
Holder Pictures # 1, 4. In addition, the side arms of the
10 Inplaintiff's response to defendants' 56.1 statement, plaintiff,
Mizco holder are wider than the side arms in the '250
design and are also larger relative to the length of the at one point, generally concedes that a palm pilot holder in the
open position has a different design than when it is in the
sides of the base. The size of the Mizco holder's side
closed position. Pl's Resp. to Defs.' 56.1 Statement P 18.

Page 10 of 11
2009 U.S. Dist. LEXIS 27056, *36
the accused product "readily distinguishable from" the 691594, at *7-8 (granting summary judgment post-
patented design); see also Antonious v. Spalding & Egyptian Goddess); Lawman Armor Corp. v. Master
Evenflo Cos., Inc., 217 F.3d 849, 1999 WL 777450, at Lock Co., No. 02-civ-6605, 2004 U.S. Dist. LEXIS 3705,
**8-9 (Fed. Cir. 1999) (unpublished table case) 2004 WL 440177, at *5-8 (E.D. Pa. Mar. 11, 2004)
(affirming district court's grant of summary judgment, (relying on visual comparison and granting summary
which noted that a specific feature "unmistakably judgment where there were such "[s]ubstantial
distinguished" the accused products, because "no differences" between the patented designs and the
reasonable jury would conclude that the overall designs accused designs that the accused designs did not
of the accused products and the patents are so "create the same visual impression as the [patented
substantially similar that an ordinary observer would be design]"), aff'd, 112 Fed. App'x. 55 (Fed. Cir. 2004).
deceived . . ."); Abbott Labs. v. Mead Johnson & Co.,
No. 93-C-6596, 1996 U.S. Dist. LEXIS 8299, 1996 WL Second, plaintiff argues that summary judgment is not
332449, at *10 (N.D. Ill. June 13, 1996) (granting warranted because plaintiff's experts opine in their
summary [*37] judgment for non-infringement where declarations [*39] that an ordinary observer would
the "overall appearance" of the two devices made it purchase a Mizco holder believing it to be the same as
clear that they "serve the same purpose," but two the '250 design. Plaintiff's experts, who are both part
differences, which were substantial in the context of the owners of plaintiff, have experience visiting retail
"whole design," ensured "that the accused device will locations selling electronic mount products and have
not be confused with, or mistaken for, the patented observed purchasers of those products. Harald Richter
device") . 11 When the Mizco holder is in the closed Decl. P 5; Dixon Decl. P 6. Based on that experience,
position, the size of the side arms and, more they both conclude that an ordinary observer would find
importantly, their placement within the border of the the Mizco holder to be "substantially the same" as the
base are prominent features that substantially affect the '250 design. Harald Richter Decl. P 7; Dixon Decl. P 8.
overall design of the Mizco holder. Similarly, when the
Mizco holder is in the open position, the notches and Since a visual comparison alone is sufficient to
side arm extensions have a significant impact on the determine non-infringement under the ordinary observer
overall appearance of the holder. These features render test, expert testimony submitted by a plaintiff cannot
the overall design of the Mizco holder plainly dissimilar create a material issue of fact where the visual
from the '250 design. comparison reveals that the alleged infringing product is
not substantially similar to the patented design. See
d. Plaintiff's Arguments Lawman Armor, 2004 U.S. Dist. LEXIS 3705, 2004 WL
440177, at *8 (finding that plaintiff's expert report did not
Plaintiff puts forth only two arguments regarding the create a material issue of fact where the court's own
ordinary observer test. First, plaintiff argues that a visual comparison showed that the allegedly infringing
finding of overall similarity [*38] is a question of fact. designs were not substantially similar to the patented
Although plaintiff is correct that infringement is a design); Schnadig Corp. v. Collezione Europa U.S.A.,
question of fact, where appropriate, courts, in applying No. 01-C-1697, 2002 U.S. Dist. LEXIS 19083, 2002 WL
the ordinary observer test, both before and after 31253750, at *11 (N.D. Ill. Oct. 4, 2002) [*40] (granting
Egyptian Goddess, have not hesitated to grant summary summary judgment for non-infringement based on
judgment for defendants based on a "mere visual ordinary observer test and refusing to rely on expert
comparison of the patented design and the accused testimony from both parties concerning whether the
product." Tropicana Prods., Inc. v. Land O'Lakes, Inc., ordinary observer test was satisfied); cf. Bush Indus,
286 F. Supp. 2d 343, 345 (D. Del. 2003) (granting Inc. v. O'Sullivan Indus., Inc., 772 F. Supp. 1442, 1450
summary judgment where designs did not share "an (D. Del. 1991) (finding that parties' experts failed to
overall visual similarity"), appeal dismissed, 110 Fed. present the viewpoint of an ordinary observer and noting
App'x. 125 (Fed. Cir. 2004); see also, e.g., Minka that "[e]xpert testimony is unnecessary under the
Lighting, 2009 U.S. Dist. LEXIS 20948, 2009 WL ordinary observer prong of the infringement test"). The
summary conclusions of plaintiff's experts are
insufficient to preclude a finding of non-infringement as
a matter of law.
11 Pre-Egyptian Goddess decisions granting summary
judgment under the ordinary observer test can still provide As such, defendants' motion for summary judgment on
some guidance in analyzing infringement under the threshold non-infringement is granted.
"plainly dissimilar" standard set out in Egyptian Goddess.

Page 11 of 11
2009 U.S. Dist. LEXIS 27056, *40
(3)
Other Defenses
In the Joint Pre-Trial Order, defendants also claim that

the patentee engaged in inequitable conduct (third and
ninth defenses) and that plaintiff waived its patent rights
(fourth defense). Because defendants' motion for
summary judgment on non-infringement is being
granted, it is unnecessary to address those defenses.
Conclusion
For the reasons stated above, defendants' motion for

summary judgment is denied on the issue of invalidity
and is granted on the issue of non-infringement.
Plaintiff's [*41] motion for partial summary judgment is
granted in part and denied in part as moot. Defendants'
motion for summary judgment on the same grounds
raised in plaintiff's motion is denied in part on the merits
and in part as moot. Defendants' motion to strike
plaintiff's errata sheet and to declare plaintiff's patent
unenforceable is denied as moot. Defendants' motions
in limine are denied as moot. The Clerk of the Court is
directed to close the case.
Dated: Brooklyn, New York
March 31, 2009
SO ORDERED:
/s/
David G. Trager
United States District Judge
GET DRAWING SHEET 1 OF 2
GET DRAWING SHEET 2 OF 2
End of Document

Caution
As of: May 4, 2019 2:56 PM Z
Keurig, Inc. v. JBR, Inc.

United States District Court for the District of Massachusetts
May 24, 2013, Decided; May 24, 2013, Filed
Civil Action No. 11-11941-FDS
Reporter
2013 U.S. Dist. LEXIS 73845 *; 2013 WL 2304171
KEURIG, INC., Plaintiff, v. JBR, INC. d/b/a ROGERS

FAMILY COMPANY, Defendant.
MEMORANDUM AND ORDER ON SUMMARY
JUDGMENT
Subsequent History: Judgment entered by, Decision
reached on appeal by Keurig, Inc. v. JBR, Inc., 2014 SAYLOR, J.
U.S. App. LEXIS 5096 (Fed. Cir., Mar. 12, 2014)
This is a patent dispute involving inventions that allow a
Prior History: Keurig, Inc. v. JBR, Inc., 2013 U.S. Dist. consumer to brew a single cup of coffee. 1 Plaintiff
LEXIS 40341 (D. Mass., Mar. 22, 2013) Keurig, Inc., manufactures brewers and individual
cartridges containing ground coffee. Keurig seeks a
Core Terms judgment that cartridges manufactured and sold by
defendant JBR, Inc., infringe upon its patents. JBR has
patent, infringement, cartridge, beverage, exhaustion, asserted, among other things, non-infringement and
brewer, filter, embodiment, designs, manufactures, invalidity of Keurig's patents.
apparatus, ordinary observer, receptacle, lid, user,
patent holder, products, coffee, dissimilar, plainly, sells, Specifically, Keurig claims that JBR's cartridges infringe
contends, summary judgment, purchaser, features, upon the design patent Keurig holds for its beverage
ornamental, chipsets, circular, licensed, tapered cartridges, U.S. Patent No. D502,362 (the "'362
patent"). Keurig also claims that the manufacture and
Counsel: [*1] For Keurig, Incorporated, Plaintiff: sale of JBR's cartridges indirectly infringes upon
Michael A. Albert, LEAD ATTORNEY, Chelsea A. apparatus and method claims in the patents Keurig
Loughran, Christopher W. Henry, Gerald B Hrycyszyn, holds for its brewers, U.S. Patent No. 7,347,138 (the
PRO HAC VICE, Wolf, Greenfield & Sacks, PC, Boston, "'138 patent") and U.S. Patent No. 7,165,488 (the "'488
MA. patent"). JBR has moved for summary judgment on all
of those claims on the basis of non-infringement. For the
For JBR, Inc., doing business as Rogers Family
reasons set forth below, the Court will grant JBR's
Company, Defendant: Brett Alan Lovejoy, Ph.D, Daniel
motion for summary judgment as to infringement of the
Johnson, Jr., LEAD ATTORNEYS, PRO HAC VICE,
'362, '138, and '488 patents.
Rachel M. Walsh, PRO HAC VICE, Morgan, Lewis &
Bockius LLP, San Francisco, CA; Jason E. Gettleman,
LEAD ATTORNEY, PRO HAC VICE, Morgan, Lewis &
I. Background
Bockius LLP, Palo Alto, CA; Todd S. Holbrook, Morgan
Lewis & Bockius LLP, Boston, MA. Keurig filed the application that ultimately produced the
'488 patent on December 12, 2003. The '488 patent was
Judges: F. Dennis Saylor IV, United States District issued on January 23, 2007. Keurig filed the application
Judge. for the '138 patent on August 24, 2004. The '138 patent
Opinion by: F. Dennis Saylor IV

1 The cartridges for the brewer at issue can also be used for
Opinion tea, hot chocolate, or other hot beverages. For the sake
[*2] of simplicity, the Court will generally use the term
"coffee."

Page 2 of 13
2013 U.S. Dist. LEXIS 73845, *2
was issued on March 25, 2008. Keurig filed the receptacle movable relative to the housing between
application for the '362 patent on December 3, 2003. a vertical position and an inclined position in which
The '362 patent was issued on March 1, 2005. the receptacle is accessible to insert or remove a
beverage cartridge; a lid that covers at least part of
the receptacle when the receptacle is in the vertical
A. '362 Patent position; a handle that is movable between open
and closed positions to cause the receptacle to
The '362 patent is a design patent directed to a move between the vertical and inclined positions;
"disposable beverage filter [*3] cartridge." It contains no and at least one resilient element arranged to
descriptive textual claims; the patent claims encompass resiliently hold the handle in the closed position,
seven drawings of the design from different [*4] wherein the at least one resilient element
perspectives. Those drawings are as follows: remains deflected when the handle is in the closed
position.
18. The apparatus of claim 1, further comprising a
beverage cartridge that includes a beverage
medium and a filter element.
Claims 22 and 29 of the '488 patent collectively read as

follows:
22. A method for forming a beverage, comprising:

providing a beverage forming device having a
housing with a receptacle accessible to a user, the
receptacle having an opening to receive a beverage
cartridge, and the receptacle opening having a
center axis extending from a center of the opening;
moving the receptacle from a vertical position, in
which the center axis extends vertically and
intersects a lid in a closed position, to a forwardly
inclined position in which the opening of the
receptacle to receive a cartridge faces away from
the lid, and the center axis does not intersect the lid
in an open position; moving the lid to the open
position; providing a beverage cartridge in the
receptacle while the receptacle is in the forwardly
inclined position; moving the receptacle to the
vertical position; to moving the lid to the closed
position in which the lid cooperates with the
B. '138 and '488 Patents receptacle to at least [*5] partially enclose the
beverage cartridge; and providing a liquid into the
The '138 and '488 patents are directed to an apparatus beverage cartridge to produce a beverage.
and method for brewing a single cup of coffee using a 29. The method of claim 22, further comprising
removable "beverage cartridge." The specific claims of piercing the beverage cartridge with an inlet probe
the '138 patent at issue are independent claim 1 and when the lid is moved to the closed position.
dependent claim 18. The claims of the '488 patent at
issue are independent claim 22 and dependent claim Keurig manufactures and licenses commercially
29. available brewers and beverage cartridges (branded as
"K-Cups") that embody the claimed apparatus and allow
Claims 1 and 18 of the '138 patent collectively read: users to accomplish the claimed methods. JBR
manufactures beverage cartridges (branded as
1. An apparatus for forming a beverage, "OneCups") that can be used with Keurig brewers to
comprising: a housing adapted to support brew a single cup of coffee. Whether using a Keurig or
components of a beverage forming device; a JBR cartridge, a user operates a Keurig brewer in

Page 3 of 13
2013 U.S. Dist. LEXIS 73845, *5
substantially the same manner. Once the machine has

been turned on and filled with water, the user places a II. Standard of Review
coffee cup in position under the brewing chamber where
the coffee will be dispensed. The user then moves a Summary judgment is appropriate when the pleadings,
"handle" to put the machine in an "open position;" this the discovery and disclosure materials on file, and any
causes a receptacle in the brewing chamber to move affidavits show that "there is no genuine dispute as to
into an "inclined position." The user then inserts a any material fact and the movant is entitled to judgment
cartridge filled with coffee grounds (either Keurig or as a matter of law." Fed. R. Civ. P. 56(a). "Essentially,
JBR) into that receptacle. The user then lowers the Rule 56[] mandates the entry of summary judgment
handle, which puts the machine in the "closed position" 'against a party who fails to make a showing sufficient to
(and [*6] causes the receptacle to move back to the establish the existence of an element essential to that
"vertical position"). The moving of the handle into the party's case, and on which that party [*8] will bear the
"closed position" causes the machine to "pierce" the burden of proof at trial.'" Coll v. PB Diagnostic Sys., 50
cartridge, permitting hot water to pass into the cartridge. F.3d 1115, 1121 (1st Cir. 1995) (quoting Celotex Corp.
The user presses the brewing button. In a few moments v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 91 L. Ed.
the hot coffee is dispensed into the awaiting cup. 2d 265 (1986)). In making that determination, the Court
views "the record in the light most favorable to the
nonmovant, drawing reasonable inferences in his favor."
C. Procedural Background Noonan v. Staples, Inc., 556 F.3d 20, 25 (1st Cir. 2009).
On November 2, 2011, Keurig filed suit under 35 U.S.C.

§100 et seq. against JBR for infringement of the '362, III. Analysis
'138, and '488 patents. Specifically, Keurig contends
that JBR has infringed on the entirety of the '362 patent,
claims 1 and 18 of the '138 patent, and claims 22 and A. '362 Patent
29 of the '488 patent.
Keurig contends that JBR's beverage cartridges, which
The Court conducted a Markman hearing on the it manufactures and sells for use in Keurig brewers,
construction of the relevant terms used in the '138 and directly infringe upon the claims of '362 design patent in
'488 patents on January 29, 2013, and issued a violation of 35 U.S.C. § 271(a). Section 271(a) provides
memorandum and order construing those terms on that "[e]xcept as otherwise provided in this title, whoever
March 22, 2013. The Court declined to construe the without authority makes, uses, offers to sell, or sells any
claims of the '362 patent with descriptive language, patented invention, within the United States or imports
instead relying on the visual depictions in the patent into the United States any patented invention during the
itself. 2 term of the patent therefor, infringes the patent."
Infringement under this section is known as "direct
The Court will now take up JBR's pending motions for infringement" because the alleged infringer is the entity
summary judgment on the issue of infringement of the that practiced the patented invention. Here, Keurig
entirety of the '362 patent; and the specific claims of the alleges that by manufacturing and offering for sale
'138 and '488 patents. beverage cartridges that are covered by the '362 design
patent, JBR has directly [*9] infringed that patent. 3
2 As the Federal Circuit has made clear with respect to claim

construction in the design patent context, "the court is not 3 The briefs of both parties devoted substantial attention to the
obligated to issue a detailed verbal description of the design if Delaware district court's summary judgment ruling in favor of
it does not [*7] regard verbal elaboration as necessary or another alleged infringer in a similar case brought by Keurig
helpful. In addition, in deciding whether to attempt a verbal Keurig, Inc. v. Sturm Foods, Inc., 2012 U.S. Dist. LEXIS
description of the claimed design, the court should recognize 130762 (D. Del. Sept. 13, 2012). Notably, that case did not
the risks entailed in such a description, such as the risk of involve a claim of infringement of the '362 design patent for
placing undue emphasis on particular features of the design beverage cartridges. Indeed, a footnote in the district court's
and the risk that a finder of fact will focus on each individual opinion noted, "[k]eep in mind that it is the brewer and the use
described feature in the verbal description rather than on the of the brewer that are claimed, not the cartridge itself." Id. at
design as a whole." Egyptian Goddess, Inc. v. Swisa, Inc., 543 16-17 n. 2. Here, the brewer, the use of the brewer, and the
F.3d 665, 679-680 (Fed. Cir. 2008). design of the beverage cartridge are claimed.

Page 4 of 13
2013 U.S. Dist. LEXIS 73845, *9
describes a cartridge of a separate and distinct type that

A. Ordinary Observer Test would in fact be visible to the "ordinary observer" during
normal use.
It is well-established, and neither party disputes, that the
"ordinary observer" test applies to claims of infringement It is of no consequence that neither Keurig, nor any
of a design patent. That test, as articulated by the license holder, currently manufactures or sells a product
Supreme Court in Gorham v. White, holds that "if, in the that embodies the design claimed in the '362 patent.
eye of an ordinary observer, giving such attention as a The Federal Circuit has counseled [*12] against using
purchaser usually gives, two designs are substantially commercial embodiments of a design patent, rather
the same, if the resemblance is such as to deceive such than the patent drawings standing alone, for comparison
an observer, inducing him to purchase one supposing it to the allegedly infringing product when performing an
to be the other, the first one [*10] patented is infringed "ordinary observer" analysis. See, e.g., Sun Hill Indus. v.
by the other." 81 U.S. 511, 528, 20 L. Ed. 731 (1872). Easter Unlimited, 48 F.3d 1193, 1196 (Fed. Cir. 1995)
For the purposes of applying that test, an "ordinary ("The test for infringement is not whether the accused
observer" is "not any observer, but one who, with less product is substantially similar to the patentee's
than the trained faculties of the expert, is 'a purchaser of commercial embodiment of the claimed design. Such a
things of similar design,' or 'one interested in the test risks relying on unclaimed and therefore irrelevant
subject.'" Applied Arts Corp. v. Grand Rapids Metalcraft features as grounds for similarity or difference."); Hutzler
Corp., 67 F.2d 428, 430 (6th Cir. 1933) (interpreting Mfg. Co. v. Bradshaw Int'l, Inc., 2012 U.S. Dist. LEXIS
Gorham, 81 U.S. 511, 20 L. Ed. 731). 4 103864 (S.D.N.Y. July 24, 2012) ("A long line of cases
counsels that, in performing a side-by-side comparison,
The [*11] Federal Circuit has held that the "ordinary courts generally should compare the design set forth in
observer" test is "not limited to those features visible at the patent—that is, the drawings—with the accused
the point of sale, but instead must encompass all product, rather than comparing the embodiment of the
ornamental features visible at any time during normal patented design and the accused product.") (collecting
use of the product." Contessa Food Prods. v. Conagra, cases); see also L.A. Gear v. Thorn McAn Shoe Co.,
282 F.3d 1370, 1381 (Fed. Cir. 2002). The Federal 988 F.2d 1117, 1125 (Fed. Cir. 1993) ("Design patent
Circuit recently defined "normal use" in this context as infringement relates solely to the patented design, and
including the period "extending from the completion of does not require proof of unfair competition in the
manufacture or assembly until the ultimate destruction, marketplace."). Accordingly, the proper application
loss, or disappearance of the article." Int'l Seaway [*13] of the "ordinary observer" test here requires the
Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1241 comparison of the actual JBR cartridge with the
(Fed. Cir. 2009). drawings of the '362 patent.
Despite its potentially confusing title—which refers to The Federal Circuit recently explained in greater detail
the design as one for a "disposable beverage filter how the "ordinary observer" test functions when applied
cartridge"—the '362 patent does not describe an internal in the pre-trial motion context. In Egyptian Goddess, Inc.
component of the cartridge commonly licensed and sold v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), the court
by Keurig under the brand name "K-Cup." Instead, it affirmed the district court's granting of summary
judgment on non-infringement grounds, remarking that
4 On
[i]n some instances, the claimed design and the
this subject, the Gorham court remarked that "[e]xperts,
accused design will be sufficiently distinct that it will
therefore, are not the persons to be deceived. Much less than
be clear without more that the patentee has not met
that which would be substantial identity in their eyes would be
undistinguishable in the eyes of men generally, of observers of its burden of proving the two designs would appear
ordinary acuteness, bringing to the examination of the article 'substantially the same' to the ordinary observer, as
upon which the design has been placed that degree of required by Gorham. In other instances, when the
observation which men of ordinary intelligence give. It is claimed and accused designs are not plainly
persons of the latter class who are the principal purchasers of dissimilar, resolution of the question whether the
the articles to which designs have given novel appearances, ordinary observer would consider the two designs
and if they are misled, and induced to purchase what is not the to be substantially the same will benefit from a
article they supposed it to be . . . the patentees are injured, comparison of the claimed and accused designs
and that advantage of a market which the patent was granted with the prior art, as in many of the cases discussed
to secure is destroyed." 81 U.S. at 528.

Page 5 of 13
2013 U.S. Dist. LEXIS 73845, *13
above and in the case at bar.
Egyptian Goddess, 543 F.3d at 678. Courts have

interpreted this language as establishing "two levels to
the infringement [*14] analysis: a level-one or
'threshold' analysis to determine if comparison to the
prior art is even necessary, and a second level analysis
that accounts for prior art in less obvious cases." Wing
Shing Prods. (BVI) Co. v. Sunbeam Prods., 665 F.
Supp. 2d 357, 362 (S.D.N.Y. 2009); see also Great
Neck Saw Mfrs., Inc. v. Star Asia U.S.A., LLC, 727 F.
Supp. 2d 1038, 1052 (W.D. Wash. 2010) (employing the Id. at 1003-1005. The court found that "the two designs,
same approach). Although at both levels the inquiry taken as a whole, create overall visual impressions that
must focus on the similarity in "overall appearance" of would appear plainly dissimilar to the ordinary
the allegedly infringing product and the patented design, observer." Id. at 1011. In the court's view, "the scalloped
the Federal Circuit has recognized that "in determining edges in the patented design when compared with the
whether apparently minor differences between specific smooth edges of the accused design, and the hour-
features would be recognized as distinguishing the glass shape of the accused design when compared with
designs, it is often helpful to refer to any prior art with the block-rectangle shape of [*16] the patented design
which the ordinary observer would reasonably be [were] important aspects that dominate[d] the overall
familiar." Revision Military, Inc. v. Balboa Mfg. Co., 700 visual appearance of the respective designs." Id.
F.3d 524, 527 (Fed. Cir. 2012).
In Great Neck Saw Mfrs., Inc. v. Star Asia U.S.A., LLC,
Accordingly, the Court here will first determine whether 727 F. Supp. 2d 1038 (W.D. Wash. 2010), another
the designs of the JBR cartridge and the '362 patent are district court compared an allegedly infringing folding
"plainly dissimilar" before engaging in any comparison knife to a number of patented designs. The court found
to prior art. that the allegedly infringing product was plainly
dissimilar from at least four of the patented designs, and
therefore granted summary judgment as to infringement
1. Plainly Dissimilar of those patents without any comparison to the prior art.
See id. at 1052. In making that determination, the court
In determining whether, to the ordinary observer, an focused on the absence on the allegedly infringing knife
allegedly infringing [*15] product is "plainly dissimilar" of "any element resembling a segmented u-shaped
from a patented design, "[t]he proper comparison clip," as well as differences in the scalloping of the knife
requires a side-by-side view of the drawings of the [] handle and the shape of the blade holder. Id.
patent design and the accused product[]." Crocs, Inc. v.
ITC, 598 F.3d 1294, 1304 (Fed. Cir. 2010). On summary In contrast to those cases, in Crocs, 598 F.3d 1294, the
judgment, the question for the Court is whether Federal Circuit reversed an International Trade
reasonable jurors viewing such a comparison could Commission decision that the allegedly infringing shoes
differ as to conclusion that the designs are "plainly did not infringe on Croc's patented design. To reach that
dissimilar." This inquiry is highly fact-dependent, and conclusion, the Federal Circuit utilized side-by-by-side
thus not particularly well-suited to decision on summary comparisons, such as the following:
judgment. Nonetheless, there exist some helpful
examples of designs found "plainly dissimilar" as a
matter of law.
In Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp.

2d 997 (N.D. Ill. 2010), the district court compared the
following product and patented design for a calculator:

Page 6 of 13
2013 U.S. Dist. LEXIS 73845, *16
As this comparison demonstrates, the similarities

between the design of the JBR cartridge and the design
of the '362 patent do not rise to the level of the "nearly
identical" designs in Crocs. 598 F.3d at 1306. However,
that does not necessarily decide the issue of whether
the designs at issue would be "plainly dissimilar" to the
ordinary observer as a matter of law. Such a
determination requires a more careful analysis of the
side-by-side comparison and the similarities (and
differences) exposed thereby.
JBR urges the Court to ignore many of the similarities

between the designs (including the circular shape of the
lid, the overall tapered shape of the filter, and the
depending skirt) because, it contends, these features
Id. at 1306. According to the court, "[i]n one comparison are all functional. [*18] It is certainly true that "a design
after [*17] another, the shoes appear[ed] nearly patent, unlike a utility patent, limits protection to the
identical." Id. The court further remarked that "[i]f the ornamental design of the article." Richardson v. Stanley
claimed design and the accused designs were arrayed Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010)
in matching colors and mixed up randomly, [it was] not (affirming a district court's decision to "factor out" the
confident that an ordinary observer could properly functional aspects of the patented design in claim
restore them to their original order without very careful construction before application of the ordinary observer
and prolonged effort." Id. test).
A similar side-by-side comparison of the allegedly Ordinarily, the task of "distinguishing between those
infringing JBR cartridge and the design of the '362 features of the claimed design that are ornamental and
patent is as follows: those that are purely functional" is one that is
undertaken in claim construction. Egyptian Goddess,
543 F.3d at 680. Here, however, neither party argued
the issue in its claim construction briefing or in oral
argument at the Markman hearing. The Court thus did
not have occasion to construe the claims of the '362
patent using descriptive language, instead relying on the
visual depictions in the patent itself. Now, the parties
would have the Court distinguish between the functional
and ornamental elements of the design on summary
judgment. The Court will rely on the numerous affidavits
filed in support of summary judgment briefing to decide
which elements of the '362 design, if any, are functional.
See Colgate-Palmolive Co. v. Ranir, L.L.C., 2007 U.S.
Dist. LEXIS 55258, 2007 WL 2225888, 2 (D. Del. 2007)
[*19] (concluding that claim construction of design
patents involves "considerations that this court views as
inherently factual and not likely to be evident from the
intrinsic record, but rather, the type of factors on which
trial courts routinely hear experts opine.").
In Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d

1365 (Fed. Cir. 2006), the Federal Circuit defined
functionality in the context of design patent
interpretation. The court held that "[a]n aspect is
functional 'if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article.'" Id.

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2013 U.S. Dist. LEXIS 73845, *19
at 1371 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., responds that it was known in the industry that tapered
456 U.S. 844, 850 n. 10, 102 S. Ct. 2182, 72 L. Ed. 2d filters more effectively brewed coffee, citing the website
606 (1982)). Although the Court may consider a wide of a large corporation in the industry that manufactures
range of factors in making that determination, the coffee filters (Melita) and Keurig's own utility patent
parties focus primarily on two—the existence of a filings. (See Johnson Reply Decl. at Ex. 1; Johnson
concomitant utility patent application and the existence Decl. at Ex. 6). The Melita document unequivocally
of alternative designs. See Berry Sterling Corp. v. asserts that as between the filter shapes "[c]one (round
Prescor Plastics, Inc., 122 F.3d 1452, 1455-56 (Fed. top gradually tapering down to the bottom) and Basket
Cir. 1997). (circular holder/filter with a flat bottom) . . . cone shaped
holders with cone shaped filters are recommended as
Keurig's expert offers the opinion that the three main [*22] the design ensures optimal coffee saturation and
features of the design (the circular shape of the lid, the extraction versus basket shaped holders/filters." (See
overall tapered shape of the filter, [*20] and the Johnson Reply Decl. at Ex. 1). Admittedly, there is no
depending skirt) are all ornamental, rather than evidence that the public statements of Melita are
functional, because obvious alternative design choices supported by expert analysis; however, the company
existed. (See Slocum Decl. at ¶ 17). does manufacture both "cone" and "basket" shape
filters, suggesting that it has no incentive to prefer one
As to the shape of the lid, Keurig's expert opines that, over the other. On the other hand, Keurig's expert is a
instead of a circular design, one of any number of mechanical engineer who, though well-qualified,
polygonal shapes (such as a hexagon, octagon, or appears to have no direct experience designing coffee
decagon) could have been chosen without brewing systems and offers no opinion on the
compromising the fit of the cartridge with the circular relationship between the shape of a filter and the quality
brewer receptacle. (See id. at ¶¶ 26-27). JBR responds of the resultant brewed coffee. Considering this record,
that because the brewer receptacle is circular, the the Court finds that general tapered shape of the filter
choice of a circular lid for a beverage cartridge meant to does "[a]ffect the quality of the [beverage cartridge],"
fit into it was preferable and obvious. JBR points to and therefore is a functional aspect of the patented
Keurig's own utility patent filing, which discloses the design that cannot be considered in the comparison.
preferred embodiment of a "Disposable Beverage Filter Amini Innovation Corp., 439 F.3d at 1371 (internal
Package" as having a "circular" top opening. (See U.S. quotation omitted). However, the specific shape of the
App. No. 11/037,501 at ¶ 15). However, that utility tapered filer remains a relevant point of comparison.
patent application also discloses "various changes and
modifications [that] may be made to the embodiment As to the depending skirt, Keurig's expert opines in
herein chosen for purposes of disclosure without substance that it is an unnecessary ornamental feature.
departing from the scope of the claims appended hereto (See Slocum Decl. at ¶ 31). In his opinion, the filter
. . . includ[ing] the use of differently shaped filter could have been attached directly to the lid without the
pouches and lids." (Id. at ¶ 25). JBR has offered no depending skirt providing support. (Id.). In response,
evidence as to how changes to the lid shape, JBR contends that the depending skirt is necessary
[*21] provided that they still permit the cartridge to fit in because it accommodates heat sealing. (Rogers Decl.
the brewer receptacle, would compromise the quality of at ¶ 5). Keurig's expert makes no mention of "heat
the cartridge's performance. Accordingly, the Court will sealing" per se, but does opine that the cartridge would
treat the circular shape of the lid as an ornamental function equally well with direct attachment of the filter
aspect of the patented design that may be considered in to the lid. (See Slocum Decl. at ¶ 31). On this limited
the comparison. Amini Innovation Corp., 439 F.3d at evidence, the Court cannot conclude that the depending
1371 (internal quotation omitted).
As to the tapered shape of the filter, Keurig's expert alternative design is significantly different from JBR's design in
opines that there are at least two alternative shapes that terms of [*23] overall shape. Indeed, the images of this
could have been used for the filter design. (See id. at ¶¶ proposed design provided by Keurig's expert appear very
35, 37). In his opinion, the filter could have been either similar to JBR's design. If Keurig's position is that a
cylindrical or symmetrically conical. (Id.). 5 JBR symmetrically conical filter shape should be considered plainly
dissimilar from the shape of the filter in the design of the '362
patent, it is hard to imagine how the tapered hemispherical
shape of the filter in the JBR cartridge should not also be
5 It is unclear to the Court how the "symmetrically conical" considered plainly dissimilar.

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2013 U.S. Dist. LEXIS 73845, *23
skirt is "essential to the use or purpose of the article or . at 528. In contrast to Crocs, the Court is confident that
. . [that] it affects the cost or quality of the [*24] article," "[i]f the claimed design and the accused designs were
and therefore the Court will treat it as an ornamental [scrubbed of all identifying logos] and mixed up
aspect of the patented design that may be considered in randomly . . . an ordinary observer could [in fact]
the comparison. Amini Innovation Corp., 439 F.3d at properly restore them to their original order without very
1371 (internal quotation omitted). careful and prolonged effort." 598 F.3d at 1306.
Constrained by the above findings as to the functional Accordingly, the design of the '362 patent and the
and ornamental aspects of the patented design, the accused JBR design are "sufficiently distinct that it [is]
Court must apply the "ordinary observer" test to clear without more that the patentee has not met its
determine if an ordinary purchaser of beverage burden of proving the two designs would appear
cartridges would be deceived by the similarity of the 'substantially the same' to the ordinary observer."
JBR cartridge and the patented design. However, in Egyptian Goddess, 543 F.3d at 678. Therefore, JBR's
doing so, the relevant potential deception is "deception motion for summary judgment on the ground of non-
that arises [as] a result of similarities in the overall infringement of the '362 patent will be granted.
design, not of similarities in ornamental features
considered in isolation." Amini Innovation Corp., 439
F.3d at 1371. 2. Comparison to the Prior Art
Viewing the JBR cartridge and the '362 patent drawings Because the Court concludes that the JBR cartridge and
side-by-side, and discounting the fact that the filter must the design of the'362 patent are plainly dissimilar, it
generally be tapered for functional reasons, the Court need not undertake any comparison to the prior art.
notes a few similarities and differences. First, as Egyptian Goddess, 543 F.3d at 678.
implicitly recognized by the above discussion, both
designs feature circular lids with depending skirts. The
skirt on the JBR cartridge, however, does appear to be B. Claims of the '138 and '488 Patents
somewhat longer than the skirt in the '362 patent
drawings. Next, although [*25] both employ generally Keurig further contends that JBR indirectly infringed
tapered filters, the JBR filter is more or less upon the' 138 and '488 patents by manufacturing and
hemispherical while the filter in the '362 patent drawings offering for sale beverage [*27] cartridges that can be
is shaped like a triangular prism; as a result, the JBR combined with Keurig brewers to form an apparatus
filter is not as long and is generally wider. Indeed, even claimed in the '138 patent and practice a method
Keurig appears to acknowledge these differences while claimed in the '488 patent. The relevant statutory
maintaining that overall the designs are not "plainly provisions, 35 U.S.C. §§ 271(b) - (c), describe the two
dissimilar." (See Kressy Decl. at ¶ 28). The Court general types of indirect infringement, both of which are
disagrees. asserted here—inducement to infringe and contributory
infringement. Pursuant to § 271(b), "whoever actively
When comparing the overall appearance of the JBR induces infringement of a patent shall be liable as an
cartridge with the patented design, the largest and most infringer." Pursuant to § 271(c), "[w]hoever offers to sell
prominent feature of both designs is the filter. The effect or sells within the United States or imports into the
of the differences in this feature are similar to the United States a component of a patented machine,
differences between the "scalloped" and "smooth" manufacture, combination or composition, or a material
edges and the "hour-glass" and "block" shapes that the or apparatus for use in practicing a patented process,
court found "dominate[d] the overall visual appearance constituting a material part of the invention, knowing the
of the respective designs" in Staples. 763 F. Supp. 2d at same to be especially made or especially adapted for
1011. As in that case, an ordinary observer here would use in an infringement of such patent, and not a staple
conclude that the allegedly infringing product and the article or commodity of commerce suitable for
patented design serve the same function, but would not substantial noninfringing use, shall be liable as a
be deceived that they are one and the same. This is not contributory infringer." Infringement under these
a situation where the difference in appearance is sections is known as "indirect infringement," because
caused by only "minor differences of detail . . . the alleged infringers are not the entities that actually
observable by experts, but not [*26] noticed by ordinary practiced the patented invention, but rather are
observers, by those who buy and use." Gorham, 81 U.S. [*28] separate entities that facilitated the practice of the

Page 9 of 13
2013 U.S. Dist. LEXIS 73845, *28
patent. See Dynacore Holdings Corp. v. U.S. Philips In other words, a patent holder's monopoly on the
Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004) ("Indirect manufacture, use, or sale of a patented item terminates
infringement, whether inducement to infringe or when he sells that item and receives compensation for
contributory infringement, can only arise in the presence it. United States v. Univis Lens Co., 316 U.S. 241, 252,
of direct infringement."); Linear Tech. Corp. v. Impala 62 S. Ct. 1088, 86 L. Ed. 1408, 1942 Dec. Comm'r Pat.
Linear Corp., 379 F.3d 1311, 1326 (Fed. Cir. 2004) 789 (1942) ("The first vending [*30] of any article
("There can be no inducement or contributory manufactured under a patent puts the article beyond the
infringement without an underlying act of direct reach of the monopoly which that patent confers."). The
infringement."). compensation in such an exchange represents not only
the cost of producing and distributing the item, but also
For that reason, Keurig must prove that there is the value of the inventive aspects of that item, which are
underlying direct infringement in order to prove indirect the subject of the patent. Without the doctrine of patent
infringement. Aro Mfg. Co. v. Convertible Top exhaustion, a patent holder could effectively obtain
Replacement Co., 365 U.S. 336, 341, 81 S. Ct. 599, 5 L. windfall compensation from the ultimate user of a
Ed. 2d 592, 1961 Dec. Comm'r Pat. 635 (1961) ("It is patented item by restricting the ways in which the item
settled that if there is no direct infringement of a patent could permissibly be used.
there can be no contributory infringement."); Akamai
Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, Traditionally, the doctrine of patent exhaustion has been
1316 (Fed. Cir. 2012) ("this court on numerous applied to apparatus claims, barring a patent holder
occasions recited the familiar and uncontroversial from controlling the use of a claimed apparatus after its
proposition that one of the elements of induced sale. Patent exhaustion also unquestionably applies to
infringement is proof that there has been direct the situation where a patent holder sells, or licenses
infringement"). another to sell, a combination of products that together
form the apparatus claimed in the patent. See Sage
Accordingly, Keurig must prove that the ultimate users Prods. v. Devon Indus., 45 F.3d 1575, 1579 (Fed. Cir.
of the Keurig brewers infringed the claims of the '138 1995).
and '488 patents when [*29] they used JBR beverage
cartridges in them. The claims of the '138 patent at issue are apparatus
claims. Claims 1 and 18 of the '138 patent collectively
JBR contends that Keurig cannot assert infringement of claim an apparatus for forming a beverage (in other
the '138 and '488 patents because its rights under those words, a brewer) that utilizes a beverage cartridge
patents have been exhausted. They further contend that [*31] with a beverage medium and a filter element.
the users of Keurig brewers do not directly infringe the Because these are apparatus claims, the doctrine of
claims of the '138 and '488 patents by using JBR patent exhaustion applies to them in its traditional
beverage cartridges because the doctrine of permissible formulation. It is undisputed that Keurig sold, or licensed
repair allows them to replace spent cartridges with any others to sell, both the brewer and filtered beverage
brand of cartridge they choose. cartridges to consumers. Upon sale or license of these
items, Keurig's rights under claims 1 and 18 of the '138
patent were exhausted. Therefore, Keurig cannot assert
1. Patent Exhaustion direct infringement of those claims by consumers and,
as a result, cannot assert indirect infringement of those
claims by JBR.
a. Claims of the '138 Patent
Accordingly, JBR's motion for summary judgment on the
"The longstanding doctrine of patent exhaustion issue of infringement of the '138 patent will be granted.
provides that the initial authorized sale of a patented
item terminates all patent rights to that item." Quanta
Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 625, b. Claims of the '488 Patent
128 S. Ct. 2109, 170 L. Ed. 2d 996 (2008). The doctrine
embodies the principle that a patent holder receives full Unlike the claims of the '138 patent at issue, the claims
compensation for his patent rights when he sells a of the '488 patent are method claims. Claims 22 and 29
patented item; it would be unfair to permit the patent of the '488 patent collectively claim a method for forming
holder to control the purchaser's further use of that item. a beverage that involves using a beverage-forming

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2013 U.S. Dist. LEXIS 73845, *31
device (in other words, a brewer) that, among other unlike the lens blanks in Univis, are sold in a
things, pierces a beverage cartridge with an inlet probe. completed form in accordance with the patents.
There is no need to determine the extent to which
In Quanta, the Supreme Court reaffirmed that the patent the brewers embody the patent when the brewers
exhaustion doctrine applies to method claims as well as [*34] are sold in a completed form. For this reason,
apparatus claims. 553 U.S. at 628-629 ("Nothing in this the court agrees with defendant that the two-prong
Court's [*32] approach to patent exhaustion supports test is inapplicable; instead, the 'long-standing
[the] argument that method patents cannot be doctrine' that an 'initial authorized sale of a
exhausted. . . . Our precedents do not differentiate patented item terminates all patent rights to that
transactions involving embodiments of patented item' is applicable. . . .
methods or processes from those involving patented
apparatuses or materials. To the contrary, this Court Further . . . the Quanta Court has warned about the
has repeatedly held that method patents were dangers of parties attempting an 'end-run' around
exhausted by the sale of an item that embodied the the exhaustion doctrine via the use of method
method."). Indeed, even Keurig acknowledges that claims. The purpose of the patent exhaustion
patent exhaustion is a potential bar to its action for doctrine is to ensure that a patentee surrenders its
infringement here. statutory monopoly after it has received
compensation for an article sold that embodies its
However, Keurig contends that Quanta changed the patent. Were the court to find that the method
landscape of patent exhaustion with respect to method claims were not exhausted because different types
patents. Specifically, Keurig contends that the two-part of cartridges—one time use versus reusable—could
"substantial embodiment" test derived from Quanta must be utilized in a brewer, plaintiff would profit from
always be used when analyzing the issue of whether brewer sales without forfeiting the right to sue those
method claims are exhausted by the sale of a product. individuals who purchased plaintiff's products. In
That test requires the alleged infringer to show that the other words, depending on the type of cartridge
product sold, or licensed for sale, by the patent holder utilized by a Keurig brewer owner, plaintiff could
(1) included all the "inventive aspects" of the patent sue a purchaser of its product. That outcome is
claims and (2) had no "reasonable non-infringing uses." contrary to the spirit of the doctrine and
Quanta, 553 U.S. at 638. JBR contends that the inappropriate on the given facts. As explained by
"substantial embodiment" test does not apply to the court in Static Control Components, Inc. v.
"completed products," even when there are method Lexmark Int'l, Inc., 615 F. Supp. 2d 575, 582 (E.D.
claims [*33] at issue. JBR contends that the initial Ky. 2009), [*35] a review of Supreme Court
authorized sale of a "completed product" terminates the precedent on the law of patent exhaustion reveals
patent-holder's rights to patented methods of using that that the Court has consistently held that patent
product. holders may not invoke patent law to enforce
restrictions on the postsale use of their patented
Whether patent exhaustion applies to method claims
products. After the first authorized sale to a
only if the "substantial embodiment" test is satisfied is a
purchaser who buys for use in the ordinary pursuits
recent, but not entirely novel, inquiry. In fact, the district
of life, a patent holder's patent rights have been
court in Delaware recently addressed the question in a
exhausted.' Here, plaintiff is attempting to institute a
similar case between Keurig and another producer of
postsale restriction that prevents non-Keurig
beverage cartridges. The Delaware court ultimately
cartridges from being used in Keurig brewers.
ruled against Keurig, and held that the "substantial
Supreme Court precedent prevents plaintiff from
embodiment" test was inapplicable because the brewers
undertaking such an end run.
are "completed products," not "incomplete" items. For
the reasons set forth in greater detail below, this Court
Keurig, Inc. v. Sturm Foods, Inc., 2012 U.S. Dist. LEXIS
agrees in substance with the Delaware court's holding.
130762, 14-16 (D. Del. Sept. 13, 2012).
The Delaware court reasoned as follows: Keurig insists that the Delaware court erred and that the
"substantial embodiment" test applies to all method
Univis and Quanta dealt with patent exhaustion and
claims, regardless of whether the product that practices
the sale of 'incomplete' items. Unlike those cases,
the patent is "complete" when sold by the patent holder.
[Keurig] sells a product that completely practices
Keurig argues that not only is the distinction between
the patent. There is no dispute that the brewers,

Page 11 of 13
2013 U.S. Dist. LEXIS 73845, *35
"complete" and "incomplete" products not part of the that once the chipsets [*38] were sold, or licensed for
caselaw, it is also unworkable as a judicial standard. sale, the patent holder's rights were exhausted, and,
This Court disagrees as to both points. therefore, a purchaser did not infringe upon the patent
by combining the chipsets with computer system
The two foundational cases where the patent components from other manufacturers. The Court held
exhaustion doctrine was applied to method [*36] claims that "the traditional bar on patent restrictions following
are Univis, 316 U.S. 241, 62 S. Ct. 1088, 86 L. Ed. the sale of an item applies when the item sufficiently
1408, 1942 Dec. Comm'r Pat. 789, and Quanta, 553 embodies the patent—even if it does not completely
U.S. 617, 128 S. Ct. 2109, 170 L. Ed. 2d 996. In Univis, practice the patent—such that its only and intended use
the Supreme Court determined that patent claims to is to be finished under the terms of the patent." 553 U.S.
methods for manufacturing eyeglass lenses, and to the at 628.
finished lenses themselves, were exhausted when the
patent holder sold lens blanks (unpolished blocks of Contrary to Keurig's assertions, the Supreme Court did,
glass) to a manufacturer and distributor that polished in fact, emphasize the incomplete nature of the products
and shaped the blanks into finished lenses by practicing sold by the patent holders in both Univis and Quanta.
the patented methods. See 316 U.S. at 250-51. The This is evident in the court's discussion in Univis, where
patent holder had tried to dictate the retail price of the it found that exhaustion applied both to situations where
finished lenses in part by asserting its patent rights. See "the licensee sells the patented article in its completed
id. The Supreme Court found that the method claims at form" and where he "sells it before completion for the
issue were exhausted, holding that "where one has sold purpose of enabling the buyer to finish and sell it."
an uncompleted article which, because it embodies Univis, 316 U.S. at 242. The Quanta court addressed
essential features of his patented invention, is within the the question of whether, "although sales of an
protection of his patent, and has destined the article to incomplete article do not necessarily exhaust the patent
be finished by the purchaser in conformity to the patent, in that article, the sale of the [particular incomplete
he has sold his invention so far as it is or may be articles at issue [*39] nonetheless] exhausted LGE's
embodied in that particular article." Univis, 316 U.S. at patents . . . ." Quanta, 553 U.S. at 630 (emphasis
250-251. The Court went on to explain that "whether the added). That framing of the issue implies that sales of a
licensee sells the patented article in its completed form "complete" article do necessarily exhaust the patent in
or sells it before completion for the purpose of enabling that article. That line of reasoning depends on a legally
the buyer to finish and [*37] sell it, he has equally operative distinction between "complete" and
parted with the article, and made it the vehicle for "incomplete" products.
transferring to the buyer ownership of the invention with
The "substantial embodiment" test was created to
respect to that article." Id. at 252.
provide a framework for determining whether the sale of
In Quanta, the Supreme Court determined that patent a component product, which by itself is not a complete
claims to methods for computer memory and data product and cannot practice the patented method, is still
usage were exhausted when the patent holder licensed sufficient to exhaust a patentee's right to sue purchasers
a manufacturer to produce and sell chipsets that could who then practice the claimed methods using that
practice the patented methods when combined with component as part of a system or larger apparatus. That
memory and buses in a computer system. See 553 U.S. is evident from the two prongs of the Quanta test (a
at 621. The patent holder had tried to dictate the product (1) including all the "inventive aspects" of the
computer system components that could be combined patent claims and (2) having no "reasonable non-
with the chipsets to practice the patented methods by infringing uses."). First, if a component product does not
asserting its patent rights after the chipsets were sold. embody all the inventive aspects of a method patent, a
See id. The Court compared the chipsets to the lens patentee has, at the very least, clearly not forfeited his
blanks in Univis, reasoning that "exhaustion was rights to those inventive aspects that are not embodied
triggered by the sale of the lens blanks because their by the product. Second, if the component product has
only reasonable and intended use was to practice the many reasonable uses, only some of which infringe
patent and because they 'embodie[d] essential features upon the [*40] method patent, not all purchasers would
of [the] patented invention.' Each of those attributes is be willing to pay a price for that product that reflected
shared by the microprocessors and chipsets Intel sold to the value of the method patent rights. Neither of these
Quanta under the License Agreement." Quanta, 553 concerns are present when the product at issue is not a
U.S. at 631 (internal citations omitted). The Court found component, but rather a complete apparatus intended to

Page 12 of 13
2013 U.S. Dist. LEXIS 73845, *40
be used to practice the patented method. Accordingly, Indeed, the Delaware court found that "plaintiff sells a
the Court finds that the "substantial embodiment" test is product that completely practices the patent," and went
inapplicable to "complete" products that are intended to on to distinguish the brewers at issue here from the lens
practice a patented method. blanks at issue in Univis by remarking that "unlike the
lens blanks in Univis, [the brewers] are sold in a
The more difficult question that has not been squarely completed form in accordance with the patents." Keurig,
addressed by the Supreme Court or the Federal Circuit Inc. v. Sturm Foods, Inc., 2012 U.S. Dist. LEXIS 130762
is at what point a product becomes "complete." (D. Del. Sept. 13, 2012). By the definition articulated
Although the Supreme Court did not fully expound on above, this Court likewise finds that the Keurig brewers
the distinction in either Univis or Quanta, both opinions at issue are in fact "complete" [*44] products because
do provide some guidance. The Quanta and Univis line they are intended for sale to the consumer for his or her
of cases attempted to deal with products that were not use without the application of other manufacturing
"completed" in the sense that they were not ready for processes or the addition of component parts.
sale to the ultimate consumer or user. As discussed Therefore, Keurig cannot assert direct infringement of
above, Univis distinguished between the sale of a the method claims by consumers and, as a result,
product in its "completed form" and the sale of a product cannot assert indirect infringement of those claims by
"before completion for the purpose of enabling the buyer JBR.
to finish and sell it." Univis, 316 U.S. at 242. Notably, the
Court did not refer to enabling [*41] the buyer to "finish To rule otherwise would allow Keurig an end-run around
and use" the product. This is in accord with the Court's the exhaustion doctrine by claiming methods as well as
determination in Quanta that "the incomplete article the apparatus that practices them, which is a tactic that
substantially embodies the patent because the only step the Supreme Court has explicitly admonished. See
necessary to practice the patent is the application of Quanta, 553 U.S. at 630 ("This case illustrates the
common processes or the addition of standard parts." danger of allowing such an end-run around
Quanta, 553 U.S. at 633. Based on that line of exhaustion."). As the Delaware court pointed out, "a
reasoning, the definition of a "complete" product is an review of Supreme Court precedent on the law of patent
article that is ready for consumer sale and use without exhaustion 'reveals that the Court has consistently held
the application of other manufacturing processes or the that patent holders may not invoke patent law to enforce
addition of component parts. This description of what restrictions on the postsale use of their patented
constitutes a "complete" product is not unworkable (and
quite sensible in light of the caselaw).
traditional bar on patent restrictions following the sale of an
It is undisputed that to practice the claims of the method item applies when the itemsufficiently embodies the patent—
patents at issue, a Keurig brewer must be combined even if it does not completely practice the patent . . ."). Under
with a beverage cartridge. However, that is a step that is that formulation, the Keurig brewers "completely practice" the
intended to be accomplished by the ultimate user after claims of the '488 patent. Keurig argues that because the
the sale of the brewer. Such a step is more akin to brewers require the insertion of a beverage cartridge to
supplying the apparatus with required resources (such practice the claimed methods, the apparatus itself cannot be
found to "completely practice" the patent. The Court
as water or electrical power) than it is to applying a
disagrees. On Keurig's reasoning, it is likely that no apparatus
manufacturing process or adding a component part
could ever be found to "completely practice" a patented
necessary for the apparatus to be complete. Notably,
method because almost all apparatuses require resources,
the apparatus also functions without the insertion of such as raw materials, fuel, or even manpower, [*43] to
[*42] a beverage cartridge; it can simply produce hot function. For example, a patented method for forming concrete
water. In contrast, the chipsets in Quanta did not using a particular mixer apparatus is certainly "completely
function at all without being combined with memory and practiced" by the mixer apparatus even if it is not sold with the
buses in a computer system. 6 dry concrete, water, and fuel necessary to operate it; Keurig's
reasoning would suggest otherwise. In contrast, the chipsets
in Quanta required more than the provision of resources to
practice the claimed methods; they required further assembly
6 Another formulation of the operative distinction in Quanta is and combination with other complex computer components.
between products that "completely practice the patent" and The Keurig brewers at issue here are more like the cement
those that only "sufficiently embod[y] the patent," with only the mixer than the computer chipset, and the Court accordingly
latter requiring the application of the "substantial embodiment" finds that they indeed "completely practice" the patented
test. 553 U.S. at 628 (explaining Univis to hold that "the methods.

Page 13 of 13
2013 U.S. Dist. LEXIS 73845, *43
products. . . .'" Sturm Foods, 2012 U.S. Dist. LEXIS exhaustion doctrine."). However, for the reasons set
130762 at 16 (quoting Static Control Components, Inc. forth above, the Court finds that the patent claims at
v. Lexmark Int'l, Inc., 615 F. Supp. 2d 575, 582 (E.D. Ky. issue have all been exhausted. Accordingly, [*47] the
2009)). On Keurig's theory, although a consumer may doctrine of permissible repair allows users to replace
purchase a Keurig brewer, he or she could nonetheless spent cartridges with whatever parts they choose
be liable [*45] for patent infringement if he or she did without infringing upon Keurig's patents. Therefore,
not use Keurig beverage cartridges when operating the Keurig cannot assert direct infringement of its patents by
brewer. 7 Such a result would violate the longstanding users and, as a result, cannot assert indirect
principle that, when a product is "once lawfully made infringement of its patents by JBR.
and sold, there is no restriction on [its] use to be implied
for the benefit of the patentee." Quanta, 553 U.S. at 630 Accordingly, JBR's motion for summary judgment on the
(quoting Adams, 17 Wall., at 457, 21 L. Ed. 700, 1885 issue of infringement of the '138 and '488 patents will be
Dec. Comm'r Pat. 438). granted.
Accordingly, JBR's motion for summary judgment on the

issue of infringement of the '488 patent will be granted. IV. Conclusion
For the foregoing reasons, JBR's motions for summary

2. Permissible Repair judgment as to the infringement of U.S. Patent No.
D502, 362; U.S. Patent No. 7,165,488; and U.S. Patent
It is well-established that "[t]he right of 'repair' follows No. 7,347,138 are GRANTED.
from the exhaustion of a patentee's right to control the
So Ordered.
disposition of a patented article after it has been sold.
The owner may use, repair, and modify the device as /s/ F. Dennis Saylor
long as there is not 'reconstruction [*46] of the entity as
to 'in fact make a new article.'" Surfco Haw. v. Fin F. Dennis Saylor IV
Control Sys. Pty., 264 F.3d 1062, 1066 (Fed. Cir. 2001)
(citing Aro Manufacturing, 365 U.S. at 346). JBR United States District Judge
contends that the doctrine of permissible repair allows
users of Keurig brewers to replace spent beverage Dated: May 24, 2013
cartridges with cartridges manufactured and sold by
entities other than Keurig. Keurig does not contend that
End of Document
replacing a spent beverage cartridge with a new one
amounts to impermissible reconstruction of the patented
product. Instead, Keurig contends that patent
exhaustion is a necessary prerequisite to the operation
of the doctrine of permissible repair, and that its rights to
the patent claims at issue have not been exhausted.
The Court agrees that "[t]he affirmative defense of repair

only applies to products whose patent rights have been
exhausted . . ." Fuji Photo Film Co. v. ITC, 474 F.3d
1281, 1293 (Fed. Cir. 2007); see also Fuji Photo Film
Co. v. Jazz Photo Corp., 394 F.3d 1368, 1372 (Fed. Cir.
2005) ("the repair affirmative defense is based upon the
7 Also telling is the fact that the alleged non-infringing use

asserted by Keurig (the use of a reusable beverage cartridge)
is only non-infringing in that it does not practice the "piercing"
step of dependent claim 29, but it does practice all of
independent claim 22. Therefore, the user would still
theoretically be liable for infringement if the patent were not
exhausted upon the sale of the brewer.

Positive
As of: May 4, 2019 2:36 PM Z
Lawman Armor Corp. v. Master Lock Co.

United States District Court for the Eastern District of Pennsylvania
March 11, 2004, Decided ; March 11, 2004, Filed
CIVIL ACTION No. 02-6605
Reporter
2004 U.S. Dist. LEXIS 3705 *; 2004 WL 440177
observer or point of novelty test necessary for a finding
LAWMAN ARMOR CORPORATION, Plaintiff, v.
of design patent infringement. After reviewing
MASTER LOCK COMPANY, Defendant.
defendant's products at issue and the '621 patent, the
district court found that the figures in the '621 patent did
Subsequent History: Affirmed by Lawman Armor Corp.
not delineate any broken lines, which signaled that the
v. Master Lock Co., 2004 U.S. App. LEXIS 23935 (Fed.
patentee intended to protect the entire design as
Cir., Nov. 3, 2004)
pictured, not just a portion thereof. The district court
Prior History: Lawman Armor Corp. v. Master Lock added that the designs were not substantially similar
Co., 2004 U.S. Dist. LEXIS 2905 (E.D. Pa., Feb. 27, under the ordinary observer test as the shaft, hooks and
2004) the intersection in defendant's products were different
so as to not make them substantially similar to the '621
Disposition: Defendant's Motion for Summary patent. Further, the district court held that defendant's
Judgment of Non-Infringement granted. products did not satisfy the point of novelty test
necessary for a finding infringement as plaintiff's nine
points of novelty were not novel since they were all
Core Terms
contained within prior art and was not otherwise
appropriated within defendant's products.
patent, Lock's, products, hooks, infringement, novelty,
shaft, ordinary observer, visual, substantially similar,
Outcome
ornamental, connective, summary judgment, features,
Defendant's motion for summary judgment of non-
segment, wheel, appearance, impression, notches,
infringement was granted.
argues, intersection, depicts, Non-Infringement, Figures,
matter of law, prior art, non-functional, purported,
resemble, district court LexisNexis® Headnotes
Case Summary
Procedural Posture
Civil Procedure > ... > Summary
Plaintiff filed suit against defendant alleging that
Judgment > Entitlement as Matter of Law > Genuine
defendant's two-hook automobile wheel lock products
Disputes
infringed on design patent number 357,621 ('621 patent)
and that plaintiff was the exclusive licensee of the '621
patent. Defendant filed a motion for summary judgment
Judgment > Entitlement as Matter of
of non-infringement.
Law > Materiality of Facts
Overview
The district court observed that while plaintiff had a
design patent for its two-hook automobile wheel locks,
Overview
defendant also had a design patent for the shape of the
hooks on its products. However, defendant argued that
HN1[ ] Genuine Disputes
its two-hook wheel locks did not satisfy the ordinary

Page 2 of 13
2004 U.S. Dist. LEXIS 3705, *3705
Summary judgment is appropriate when, after HN5[ ] Summary judgment must be granted against a
considering the evidence in the light most favorable to party who fails to make a showing sufficient to establish
the nonmoving party, no genuine issue of material fact the existence of an element essential to that party's
remains in dispute and the moving party is entitled to case, and on which that party will bear the burden of
judgment as a matter of law. proof at trial.
Civil Procedure > ... > Summary Civil Procedure > ... > Summary
Judgment > Entitlement as Matter of Law > General Judgment > Burdens of Proof > General Overview
Overview
Patent Law > Jurisdiction & Review > Standards of
HN2[ ] The inquiry upon a motion for summary Review > General Overview
judgment is whether the evidence presents a sufficient
disagreement to require submission to the jury or HN6[ ] Summary judgment is as appropriate in a
whether it is so one-sided that one party must prevail as patent case as it is in any other case.
a matter of law.

Civil Procedure > ... > Summary Judgment > Burdens of Proof > General Overview
Judgment > Burdens of Proof > General Overview
Civil Procedure > ... > Summary Judgment > Entitlement as Matter of
Judgment > Entitlement as Matter of Law > Genuine Law > Materiality of Facts
Disputes
HN7[ ] A fact is "material" upon a motion for summary
HN3[ ] The party moving for summary judgment judgment if it could affect the outcome of the suit after
carries the initial burden of demonstrating the absence applying the substantive law. Further, a dispute over a
of any genuine issues of material fact. material fact must be "genuine," i.e., the evidence must
be such that a reasonable jury could return a verdict in
favor of the non-moving party.
Civil Procedure > Judgments > Summary
Civil Procedure > ... > Summary Law > Infringement Actions > Design Patents
Civil Procedure > ... > Summary Interpretation > Scope of Claim
Disputes Patent Law > Infringement Actions > Infringing
Acts > General Overview
HN4[ ] Evidentiary Considerations
HN8[ ] Design Patents
Once the moving party has produced evidence in
support of summary judgment, the non-moving party Determining whether a product infringes upon a design
must go beyond the allegations set forth in its pleadings patent is a two-step process. First, the court must give
and counter with evidence that demonstrates that there its claim construction of the design patent. Second, the
is a genuine issue of fact for trial. properly construed claim must satisfy two tests. Initially,
the properly construed claim must be compared to the
allegedly infringing devices under the ordinary observer
test.

Page 3 of 13
2004 U.S. Dist. LEXIS 3705, *3705

Patent Law > Anticipation & Novelty > Elements Law > Infringement Actions > Design Patents
Business & Corporate Patent Law > Infringement Actions > Claim
Compliance > ... > Infringement Actions > Infringing Interpretation > General Overview
Acts > Indirect Infringement
HN9[ ] Design Patents Patents > Ornamentality Requirement
The standard for determining whether a design patent HN12[ ] Design Patents
has been infringed under the ordinary observer test is
as follows: If in the eye of the ordinary observer, giving A claim construction must properly limit the scope of a
such attention as a purchaser usually gives, two designs design patent to its overall ornamental visual
are substantially the same, if the resemblance is such impression, rather than to the broader general design
as to deceive such an observer, inducing him to concept.
purchase one supposing it to be the other, the first one
patented is infringed by the other. Moreover, the
allegedly infringing devices must satisfy the point of
Patent Law > Jurisdiction & Review > Subject
novelty test. The point of novelty test asks whether the
Matter Jurisdiction > Appeals
accused design appropriates the points of novelty that
distinguish the patent design from the prior art. If either Patent Law > Infringement Actions > Claim
the ordinary observer or the point of novelty test is not Interpretation > General Overview
satisfied, there can be no infringement.
Patent Law > US Patent & Trademark Office
Proceedings > Filing Requirements > Drawings
Interpretation > General Overview Business & Corporate Compliance > ... > Patent
Patents > Ornamentality Requirement HN13[ ] Appeals
HN10[ ] The United States Court of Appeals for the The United States Court of Appeals for the Federal
Federal Circuit has emphasized that claim construction Circuit has held that design patents have a narrow
is strictly within the purview of the court to decide. scope, limited to what is shown in the drawings
accompanying the patent application.

Law > Infringement Actions > Design Patents Business & Corporate Compliance > ... > Patent
Interpretation > General Overview Patent Law > Subject Matter > Design
Patents > Functionality
Typically, in the design patent context, courts arrive at a Patents > Ornamentality Requirement
written claim construction that evokes a visual image
consistent with the claimed design. Such a written HN14[ ] Design Patents
description must evoke a visual image constant with the
claimed design rather than merely represent the general A design patent protects the non-functional aspects of
design concept. an ornamental design as shown in the patent.
Page 4 of 13
2004 U.S. Dist. LEXIS 3705, *3705
particular feature is ornamental if the functional aspect

or purpose could be accomplished in many other ways.
Patent Law > Jurisdiction & Review > Subject
Matter Jurisdiction > Appeals
Patent Law > Infringement Actions > Infringing
Patents > Ornamentality Requirement
The ordinary observer test for infringement of a design
patent requires the fact-finder to compare the two
HN15[ ] Appeals
designs and determine whether the patented design as
a whole is substantially the same in appearance as the
In determining whether something is to be considered
accused design.
ornamental or functional in interpreting a design patent,
the United States Court of Appeals for the Federal
Circuit has stated that when there are several ways to
achieve the function of an article of manufacture, the Business & Corporate Compliance > ... > Patent
design of the article is more likely to serve a primarily Law > Infringement Actions > Design Patents
ornamental purpose that is protected under U.S. patent
laws. Patent Law > Infringement Actions > Infringing

A court can as a matter of law declare that a product or
Where features in a design patent are not desired to be
device does not infringe on a design patent upon a
claimed, the patentee is entitled to show the features in
visual comparison.
broken lines to exclude those features from the claim.
Where a patentee fails to show such features in broken
lines, this signals inclusion of the features in the claimed
design. Business & Corporate Compliance > ... > Patent

Law > Infringement Actions > Design Patents Design patents have almost no scope.

Patent Law > Subject Matter > Design Law > Infringement Actions > Design Patents
Copyright Law > ... > Substantial
HN17[ ] Design Patents Similarity > Intrinsic Tests > Ordinary Observer Test
If a design contains both functional and non-functional Patent Law > US Patent & Trademark Office
elements, the court must identify the non-functional Proceedings > Filing Requirements > Drawings
aspects to construe the scope of the design patent. A

Page 5 of 13
2004 U.S. Dist. LEXIS 3705, *3705
Patent Law > Infringement Actions > Infringing Patent Law > Anticipation & Novelty > Elements
HN21[ ] Design Patents Acts > General Overview
Under the ordinary observer test for determining the HN24[ ] Design Patents
infringement of a design patent, the court need not look
beyond the drawings of the design patent and the The novelty test for determining the infringement of a
designs of the allegedly infringing products. design patent, requires proof that the accused design
appropriates the novelty which distinguishes the
patented design from the prior art.
Patent Law > Anticipation & Novelty > General
Copyright Law > ... > Substantial Overview
Similarity > Intrinsic Tests > Ordinary Observer Test
HN25[ ] See 35 U.S.C.S. 102(b).
Patent Law > ... > Defenses > Inequitable
Conduct > General Overview
Patent Law > ... > Defenses > Patent
Invalidity > Presumption of Validity
Invalidity > General Overview
Nothing more is required under the ordinary observer
HN26[ ] Presumption of Validity
analysis for determining infringement of a design patent
than conducting a visual comparison of the patented
Patents maintain a presumption of validity under 35
design and the allegedly infringing products.
U.S.C.S. § 282.
Counsel: [*1] For LAWMAN ARMOR

Business & Corporate Compliance > ... > Patent CORPORATION, Plaintiff: COREY FIELD, LYNN E.
Law > Infringement Actions > Design Patents RZONCA, ROBERT JACOBS-MEADWAY, BALLARD
SPAHR ANDREWS & INGERSOLL, LLP,
Civil Procedure > Judicial PHILADELPHIA, PA. SCOTT J. FIELDS, NATIONAL IP
Officers > Masters > General Overview RIGHTS CENTER, LLP, BLUE BELL, PA.
For MASTER LOCK COMPANY, Defendant: DAVID J.
Evidence > Admissibility > Expert Witnesses
WOLFSOHN, SHANON LEVIN LEHMAN, HANGLEY
ARONCHICK SEGAL & PUDLIN, PHILADELPHIA, PA.
JONATHAN H. MARGOLIES, KATHERINE W. SCHILL,
MILWAUKEE, WI.
Judges: ROBERT F. KELLY, J.
Expert testimony is unnecessary under the ordinary
Opinion by: ROBERT F. KELLY
observer prong of the infringement test for determining
infringement of a design patent.
Opinion

Law > Infringement Actions > Design Patents MEMORANDUM
ROBERT F. KELLY, Sr. J.

Page 6 of 13
2004 U.S. Dist. LEXIS 3705, *1
861 patent is Roy Alden Thompson and Master Lock is

MARCH 11, 2004 listed as the patent's assignee. The only claim for the
861 patent is "the ornamental design for a quad-hook for
I. INTRODUCTION
a steering wheel lock, as shown and described." The
On August 5, 2002, the Plaintiff, Lawman Armor Patent Office had the opportunity, while reviewing the
Corporation ("Lawman") filed suit against the Defendant, application for the 861 patent, to analyze whether the
Master Lock Company ("Master Lock"), alleging that 861 application was patentably distinct from the 621
Master Lock's two-hook automobile wheel locks infringe patent. 2
on design patent number 357,621 (the "621 patent").
On August 6, 2003, Master Lock filed its Motion for
Lawman is the exclusive licensee of the 621 patent.
Summary Judgment of Non-Infringement. Master Lock
Presently before this Court is Master Lock's Motion for
sets forth its proposed claim construction of the 621
Summary Judgment of Non-Infringement. For the
patent within its Brief. In addition, Master Lock argues
following reasons, Master Lock's Motion will be granted.
that its two-hook wheel locks do not satisfy the ordinary
II. FACTUAL BACKGROUND observer or point of novelty [*4] test necessary for a
finding of infringement. However, Lawman argues that
Automobile wheel locks act as anti-theft devices. Master Lock's claim construction is flawed. Lawman first
Lawman became the exclusive licensee of the 621 argues that Master Lock's proposed claim construction
patent in July of 2002. Approximately one month [*2] of the 621 patent is incorrect and counters with its own
after Lawman became the exclusive licensee of the 621 proposed claim construction. Lawman additionally
patent, it filed this patent infringement suit against argues that material issues of fact still exist with respect
Master Lock. In its Complaint, Lawman initially alleged to the ordinary observer and point of novelty tests so as
that Master Lock's wheel lock model 252, as well as to preclude summary judgment.
other unnamed models, infringe on the 621 patent.
Lawman now states that Master Lock's wheel lock III. STANDARD
models 238, 248, 249, 260 and 263, in addition to model
252, infringe on the 621 patent. To assist us in HN1[ ] "Summary judgment is appropriate when, after
evaluating this Motion for Summary Judgment of Non- considering the evidence in the light most favorable to
Infringement, Master Lock provided samples of the the nonmoving party, no genuine issue of material fact
products Lawman alleges infringe on the 621 patent. 1 remains in dispute and 'the moving party is entitled to
judgment as a matter of law.'" Hines v. Conrail, 926 F.2d
[*3] While Lawman has a design patent for its two- 262, 267 (3d Cir. 1991)(citations omitted). HN2[ ] The
hook automobile wheel locks, Master Lock also has a inquiry is "whether the evidence presents a sufficient
design patent for the shape of the hooks on its products. disagreement to require submission to the jury or
In April 2001, the Patent Office granted design patent whether it is so one-sided that one party must prevail as
number 440,861 (the "861 patent"). The inventor of the a matter of law." Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 251-52, 91 L. Ed. 2d 202, 106 S. Ct. 2505
(1986). HN3[ ] The moving party carries the initial
burden of demonstrating the absence of any genuine
1 Master Lock also submitted Lawman's commercial issues of material [*5] fact. 3 Big Apple BMW, Inc. v.
embodiment of the 621 patent. However, we have not BMW of N. Am. Inc., 974 F.2d 1358, 1362 (3d Cir.
considered Lawman's commercial embodiment in conducting 1992). HN4[ ] Once the moving party has produced
our infringement analysis. Rather, we have properly analyzed evidence in support of summary judgment, the non-
the 621 patent claims against the alleged infringing products.
See Zenith Lab. v. Bristol-Myers Squibb Co., 19 F.3d 1418,
1423 (Fed. Cir. 1994)(citing Martin v. Barber, 755 F.2d 1564, 2 The 621 patent is listed as a cited reference in the 861
1567 (Fed. Cir. 1985))(stating "it is error for a court to compare patent.
in its infringement analysis the accused product or process
with the patentee's commercial embodiment or other version 3 HN7[ ] "A fact is material if it could affect the outcome of
of the product or process; the only proper comparison is with the suit after applying the substantive law. Further, a dispute
the claims of the patent"). Master Lock was unable to locate over a material fact must be 'genuine,' i.e., the evidence must
model number 260 due to the fact that model 260 was be such 'that a reasonable jury could return a verdict in favor
discontinued. However, Master Lock did provide pictures of of the non-moving party.'" Compton v. Nat'l League of Prof'l
model 260. Master Lock additionally states that the Baseball Clubs, 995 F. Supp. 554, 561 n.14 (E.D. Pa. 1998),
configuration of the 260 model is the same as the 252 model. aff'd, 172 F.3d 40 (3d Cir. 1998)(citations omitted).

Page 7 of 13
2004 U.S. Dist. LEXIS 3705, *5
moving party must go beyond the allegations set forth in appropriates the points of novelty that distinguish the
its pleadings and counter with evidence that patent design from the prior art." See Catalina Lighting,
demonstrates that there is a genuine issue of fact for Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1286-87 (Fed.
trial. See id. at 1362-63. HN5[ ] Summary judgment Cir. 2002)(citing Contessa Food Prods. Inc. v. Conagra,
must be granted "against a party who fails to make a Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002)). If either the
showing sufficient to establish the existence of an ordinary observer or the point of novelty test is not
element essential to that party's case, and on which that satisfied, there can be no infringement. See Contessa
party will bear the burden of proof at trial." Celotex Corp. Food Prods., 282 F.3d at 1377 (citing Unidynamics
v. Catrett, 477 U.S. 317, 322, 91 L. Ed. 2d 265, 106 S. Corp. v. Automatic Prods. Int'l, Ltd., 157 F.3d 1311,
Ct. 2548 (1986). Finally, HN6[ ] "'summary judgment is 1323 (Fed. Cir. 1998)). The Court will now turn its
as appropriate in a patent case as it is in any other attention to the issue of claim construction before it
case.'" See Desper Prods. v. Qsound Lab., 157 F.3d moves onto the ordinary observer and point of novelty
1325, 1332 (Fed. Cir. 1998)(quoting C.R. Bard, Inc. v. tests.
Advanced Cardiovascular, Inc., 911 F.2d 670, 672 (Fed.
A. CLAIM CONSTRUCTION
Cir. 1990)).
1. Relevant Case Law
[*6] IV. DISCUSSION HN10[ ] The United States Court of Appeals for the
Federal Circuit ("Federal Circuit") [*8] has emphasized
HN8[ ] Determining whether a product infringes upon a
that claim construction is strictly within the purview of
design patent is a two-step process. First, the Court
the Court to decide. See Markman, 52 F.3d 967 at 983
must give its claim construction of the design patent.
at 983-84. The 621 patent is a design patent and reads
See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577
as follows, "the ornamental design for a sliding hook
(Fed. Cir. 1995)(citing Markman v. Westview
portion of a vehicle steering wheel lock." HN11[ ]
Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)(en
Typically, courts arrive at a written claim construction
banc), aff'd, 517 U.S. 370, 134 L. Ed. 2d 577, 116 S. Ct.
that evokes a visual image consistent with the claimed
1384 (1996))(stating "determining whether a design
design. Such a written description must evoke a visual
patent claim has been infringed requires, first, as with
image constant with the claimed design rather than
utility patents, that the claim be properly construed to
merely represent the general design concept. See
determine its meaning and scope"). Second, the
Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100,
properly construed claim must satisfy two tests. Initially,
104 (Fed. Cir. 1996)(stating district court erred when its
the properly construed claim must be compared to the
verbal description did not evoke a visual image
allegedly infringing devices under the ordinary observer
consonant with the claimed design but rather merely
test. See Elmer, 67 F.3d at 1577. HN9[ ] The standard
represented the general design concept); see also,
under the ordinary observer test was set forth over a
OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396,
century ago by the United States Supreme Court:
1405 (Fed. Cir. 1997)(agreeing with district court's claim
construction that construes design patent to its overall
ornamental visual impression rather than to the broader
If in the eye of the ordinary observer, giving such general design concept).
attention as a purchaser usually gives, two designs
In Durling, the Federal Circuit rejected the District
are substantially the same, if the resemblance is
Court's description of a [*9] design patent because it
such as to deceive such an observer, inducing him
did not evoke a visual image of the claimed design. 4
to [*7] purchase one supposing it to be the other,
the first one patented is infringed by the other. See Durling, 101 F.3d at 104. In that case, the District
Court gave the following description of the design
patent: "the look that the patent-in-suit presented is a
Gorham v. White, 81 U.S. (14 Wall.) 511, 528, 20 L. Ed. 4 While Durling involved a determination of patent invalidity, it
731 (1871). Moreover, the allegedly infringing devices has applicability in construing a design patent claim in an
must satisfy the point of novelty test. The point of infringement case. SeeMinka Lighting, Inc. v. Craftmade Int'l,
novelty test asks "whether the accused design Inc.,2001 U.S. Dist. LEXIS 14199, No. 00-0888, 2001 WL
1012685, at *20 (N.D. Tex. Aug. 20, 2001).

Page 8 of 13
2004 U.S. Dist. LEXIS 3705, *9
sectional sofa with double rolls of upholstery under the construction that limits the scope of the 621 patent to its
seating area which curve accurately upward under the overall visual impression rather than its broader design
end tables. The end tables have the appearance of little concept so as to be in line with Durling andOddzOn
vertical support." Id. In rejecting the District Court's Products.
description, the Federal Circuit set forth the following
description as the proper claim construction: HN13[ ] "The Federal Circuit has held that design
[A] contiguous three-piece sectional sofa group patents have a narrow scope, limited to what is shown
containing two sofa sections at approximately right in the drawings accompanying the patent application."
angles to each other with a triangular corner table Nat'l Diamond Syndicate, Inc. v. Flanders Diamond
at their juncture. On the sides away from the corner USA, Inc., 264 F. Supp. 2d 631, 639 (N.D. Ill.
table, each sofa section has rounded corners and 2003) [*12] (citations omitted). HN14[ ] "A design
includes a bolster pillow as an armrest. In addition, patent protects the non-functional aspects of an
each sofa section at the end adjacent to the corner ornamental design as shown in the patent." Minka
table, follows along the bottom of the sofa towards Lighting, Inc. v. Craftmade Int'l, Inc., 2002 U.S. Dist.
the other end, and curves upwardly (i.e., sweeps LEXIS 10760, No. 00-0888, 2002 WL 1331883, at *2
upward) through a 90 degrees angle to truncate at (N.D. Tex. June 14, 2002)(citing Elmer, 67 F.3d at 1577;
a horizontal plane upon which the end table rests. KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc.,
997 F.2d 1444, 1450 (Fed. Cir. 1993)). HN15[ ] In
Id. In rejecting [*10] the District Court's construction in determining whether something is to be considered
favor of its own, the Federal Circuit stated that the ornamental or functional, the Federal Circuit has stated
District Court erred by focusing on the design concept of that "when there are several ways to achieve the
the patent, rather than its overall visual appearance. function of an article of manufacture, the design of the
See id. article is more likely to serve a primarily ornamental
purpose." L.A. Gear, Inc. v. Thom McAn Shoe Co., 988
The Federal Circuit also had the opportunity to review a F.2d 1117, 1123 (Fed. Cir. 1993). For example, the
District Court's claim construction of a design patent in Federal Circuit recently decided whether a design
OddzOn Products. In that case, the District Court gave patent for an inset door and frame combination was
the following claim construction: being infringed by its competitors. See Door-Master
Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1310 (Fed. Cir.
[A] ball shaped like a football, with a slender,
2001). In Door- Master, the issue was raised as to
straight tailshaft projecting from the rear of the
whether a portion of the design, namely the rear
football. In addition, the '001 Patent design has
features of the door, should be considered as part of the
three fins symmetrically arranged around the
protected design. [*13] See id. at 1313. The Federal
tailshaft, each of which has a gentle curve up and
Circuit determined that the rear features were not
outward which creates a fin with a larger surface
functional, and that they, therefore, were proper bases
area [*11] at the end furthest from the ball. The fins
for design protection because "many different
flare outwardly along the entire length of the
configurations of those features (oval, triangular, etc.)
tailshaft, with the front end of the fin extending
could perform the same functions of an integrated door
slightly up along the side of the football so that the
and frame." Id.
fins seemingly protrude from the inside of the
football.
HN16[ ] Where features in a design patent are not
desired to be claimed, the patentee is entitled to show
the features in broken lines to exclude those features
from the claim. See Contessa Food Prods., 282 F.3d
1370, 1378 (Fed. Cir. 2002)(citation omitted). Where a
OddzOn Prods., 122 F.3d at 1400 (detailing District
patentee fails to show such features in broken lines, this
Court's claim construction). The Federal Circuit agreed
"signals inclusion of the features in the claimed design."
with the District Court's claim construction, noting that its
Id. (citing Door-Master, 256 F.3d at 1313). The figures in
HN12[ ] claim construction "properly limits the scope of
the 621 patent do not delineate any broken lines. This
the patent to its overall ornamental visual impression,
signals that the patentee intended to protect the entire
rather than to the broader general design concept of a
design as pictured, not just a portion thereof.
rocket-like tossing ball." Id. at 1405 (citing Durling, 101
F.3d at 104). In construing the 621 claim, I will create a 2. 621 Patent's Claim Construction

Page 9 of 13
2004 U.S. Dist. LEXIS 3705, *13
Both parties have submitted their proposed claim (stating "[a] design patent protects [*16] the non-
construction. After reviewing the proposed claim functional aspects of an ornamental design as shown in
constructions, along with the 621 patent itself, I make the patent"); see also, Hsin Ten Enter. USA, Inc. v.
the following claim construction: [*14] Clark Enters., 149 F. Supp. 2d 60, 63 (S.D.N.Y.
The 621 patent is directed to the sliding hook 2001)(stating HN17[ ] "if a design contains both
portion of a vehicle steering wheel lock assembly. functional and non-functional elements, the court must
The patent depicts two hooks, a shaft and the identify the non-functional aspects to construe the scope
intersection between the shaft and the hooks. The of the design patent. A particular feature is ornamental if
shaft has four different sections. The shaft section the functional aspect or purpose could be accomplished
furthest from the hooks is cylindrical and smooth. in many other ways")(internal quotation and citations
The next shaft section contains notches or grooves omitted). We will now analyze Master Lock's products
in a particular pattern and dimensions as shown, under the ordinary observer and point of novelty tests,
which completely encircle the shaft. Figures 6 and 7 keeping in mind that both tests need to be met for a
show that the notches or grooves are what would finding of infringement.
generally be considered a trapezoidal shape. The
B. ORDINARY OBSERVER TEST
third shaft section is again cylindrical and smooth
and roughly the same diameter as the first shaft HN18[ ] "The ordinary observer test requires the fact-
section. The fourth and final shaft section is finder to compare the two designs and determine
cylindrical and smooth but has a larger diameter whether the patented design as a whole is substantially
than the first and third shaft sections. the same in appearance as the accused design."
Tropicana Prods., Inc. v. Land O'Lakes, Inc., 286 F.
The 621 patent also depicts two hooks. The hooks
Supp. 2d 343, 345 (D. Del. 2003)(citing Braun Inc. v.
hang from the shaft and face outward away from
Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir.
the shaft. The hooks have the same profile as
1992)). To compare the designs, we need not look
shown in Figures 4 and 5 which resembles a C-
beyond the 621 patent and Master [*17] Lock's
shape. The ends of the hooks are not parallel to
products. See id.; see also Hosley Int'l Trading Corp. v.
each other as shown in Figures 6 and 7. There is a
K Mart Corp., 237 F. Supp. 2d 907, 911 (N.D. Ill.
connective segment between the two hooks that is
2002)(citing Braun, 975 F.2d at 821)(stating "Gorham
semi-circular, appearing to resemble a U as shown
does not prohibit trier of fact from relying exclusively or
in Figure 6. The [*15] overall ornamental
primarily on a visual comparison of the patented design
appearance of the hooks portion, from the
and the accused device's design in finding design patent
perspective in Figure 6 is like an M with a curved
infringement"). In this case, after reviewing the products
middle section.
at issue and the 621 patent, we find that the designs are
The intersection of the hooks and the shaft is a
not substantially similar.
circle on top of and centered on a relatively straight
portion when viewed in Figures 2 and 3. When When Master Lock moved for summary judgment in
viewed in Figures 6 and 7, the shaft intersects the August 2003, the only model it cited to in its non-
connective hooks segment at its center. The shaft infringement analysis was model 252. Master Lock
extends past the connective hook segment as states that up until that point in the litigation, Lawman
shown in Figures 6 and 7. had only alleged that model 252 infringed on the 621
patent. However, much of the discovery in this case
I find that such construction properly "limits the scope of
occurred after August, 2003. Thus, in its Reply Brief
the patent to its overall ornamental visual impression
filed in November 2003, Master Lock indicated that it
rather than to the broader general design concept."
had learned that Lawman was now alleging that models
OddzOn Prods., 122 F.3d at 1405; see Lee v. Dayton-
238, 248, 249, 260, 263 as well as model 252 infringed.
Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir.
Master Lock states that this Court's analysis should
1988)(stating district court properly viewed proportions,
remain the same since the configuration of all of its
carving, as well as the polished finish and appearance
models is the same. Lawman argues that [*18] these
to determine infringement of design patent).
other models differ from the model 252 and that this
Additionally, I find that my claim construction properly
difference raises a triable issue of fact. I disagree. As
states the ornamental rather than the functional aspects
noted previously, HN19[ ] a court can as a matter of
of the 621 patent. See Keystone Retaining Wall Sys.,
law declare that a product or device does not infringe on
997 F.2d at 1450 (citing Lee, 838 F.2d at 1188-89
a design patent upon a visual comparison. See

Page 10 of 13
2004 U.S. Dist. LEXIS 3705, *18
Tropicana Prods., 286 F. Supp. 2d at 345; see also, of a combined ceiling fan and light fixture. See 2002
Bush Indus., Inc. v. O'Sullivan Indus., Inc., 772 F. Supp. U.S. Dist. LEXIS 10760 at *1. In that case, the court
1442, 1450 (D. Del. 1991)(stating upon reviewing found as a matter of law that the patented design and
pictures of commercial pieces, ordinary observer would the alleged infringing products were not substantially
not be confused). I have had the opportunity to view similar. See 2002 U.S. Dist. LEXIS 10760 at *4. The
models and/or pictures of Master Lock's products. court reviewed the bracket arms and blades of the
Lawman has provided no evidence to show that the patent, as well as those of the allegedly infringing
design of Master Lock's other products differs from the products, and found that the allegedly infringing
252 model despite its assertions. Indeed, Lawman's products' bracket arms did not create the same visual
own expert supports this point. For example, Lawman's impression as did the design patent. See id.
expert recently had the ability to examine model number
249, yet he found the differences between model 249 Both of these cases illustrate the narrowness of design
and 252 to be too small and insignificant to alter his patents. For example, in Minka Lighting, the court found
infringement analysis. Lawman had the ability to set that the allegedly infringing products did not create the
forth the design differences between Master Lock's same curved impression as the patent's fan blades.
products, yet it has failed to come forward with any 2002 U.S. Dist. LEXIS 10760, 2002 WL 1331883, at *4.
difference among these products. As stated previously, Similarly, in Tropicana Products, the [*21] court found
[*19] I have viewed samples and/or pictures of Master that since the top portion of the bottle resembled a
Lock's products and find that my infringement analysis sphere as opposed to a flaring bell and because the
applies to all of the allegedly infringing Master Lock bottom portion was a straight cylinder as opposed to
products. another flaring bell in Land O'Lakes' patent, they were
not substantially similar. 286 F. Supp. 2d at 345. The
1. Relevant Case Law analysis in both of these cases illustrates the narrow
scope of design patents, particularly with reference to
As mentioned earlier, HN20[ ] design patents have the ordinary observer test.
almost no scope. See In re Mann, 861 F.2d 1581, 1582.
Recently, the District Court of Delaware had the 2. Comparison of the 621 Patent with Master Lock's
opportunity to decide a design patent case in Tropicana Products
Products., Inc. v. Land O'Lakes, Inc., 286 F. Supp. 2d
343. In that case, Tropicana sought a declaration that its I will now analyze whether Master Lock's products are
bottle did not infringe on Land O'Lakes design patent. substantially similar to the 621 patent so as to confuse
See id. at 344. That court stated that Tropicana's bottle the ordinary observer. I find that the differences
did not infringe on Land O'Lakes' patent because it did between Master Lock's products and the 621 patent
not meet the ordinary observer test. See id. at 345. The indicate that the designs at issue do not qualify as being
court specifically found that: substantially similar. HN21[ ] Under the ordinary
observer test, one need not look beyond the drawings of
The general appearance of the '813 patent [Land the 621 patent and the designs of Master Lock's
O'Lakes' patent] design is that of a flaring bell atop products. See Tropicana Prods., 286 F. Supp. 2d at 345
a taller, narrower flaring bell (or an hourglass). In (citing Braun, Inc. v. Dynamics Corp. of America, 975
contrast, the Tropicana bottle looks like a sphere F.2d 815, 820).
atop a straight cylinder (or an orange suspended
above a juice glass). Because of these differences, Initially, I note the differences in the shaft. While the
I conclude as a matter of law that the shaft itself might not be observable at the point of sale
Tropicana [*20] bottle does not infringe under the based on Master Lock's packaging, the Federal [*22]
ordinary observer test. Circuit has stated that "the 'ordinary observer' analysis
is not limited to those features visable at the point of
Id. sale, but instead must encompass all ornamental
features visible at any time during the normal use of the
Other design patent cases have similarly found that the
product." Contessa Food Prods., 282 F.3d at 1381.
accused devices do not infringe on the design patent
Since the shaft would be visible during normal use, I find
because of a failure to satisfy the ordinary observer test.
it appropriate to consider it in our ordinary observer
See Minka Lighting, 2002 U.S. Dist. LEXIS 10760, 2002
analysis. First, the shaft section on Master Lock's
WL 1331883, at *5-6. In Minka Lighting, the plaintiff was
products is not cylindrical as compared to the 621
the holder of a design patent for the ornamental design

Page 11 of 13
2004 U.S. Dist. LEXIS 3705, *22
patent. Indeed, the shaft on Master Lock's products has 621 patent appear to sprout from either side of the
a flat side whereas the 621 patent depicts a cylindrical connective segment rather than the shaft itself. Thus,
shaft. Second, whereas the trapezoidal notches in the the intersection on Master Lock's products does not
621 patent completely encircle the shaft, the notches on create the same visual impression as does the 621
Master Lock's products do not encircle the shaft since patent.
the flat side has no notches. Third, I find that the
notches on the 621 patent and Master Lock's products These substantial differences lead to the ultimate
are not substantially similar. 5 Thus, the shaft section on conclusion that Master Lock's products do not create the
Master Lock's products do not create the same visual same visual impression as the '621 patent. Thus, the
impression as does the 621 patent. ordinary observer, when viewing Master Lock's products
as a whole, would not conclude that they are
[*23] Next, I will examine the hooks. While the 621 substantially similar to the patent. The shaft, hooks and
patent has a U-shaped connective segment between the intersection in Master Lock's products are different
the hooks, such a connective segment is absent on so as to not make Master Lock's products
Master Lock's products. Indeed, the two hooks on substantially [*25] similar to the 621 patent.
Master Lock's products have no connective segment.
Additionally, while the hooks on the 621 patent 3. Lawman's Expert Report
resemble a C-shape, the hooks on Master Lock's
products are much more rigid and not as smooth or Lawman submitted an expert report to support its
argument that Master Lock's products are substantially
flowing as depicted in the 621 patent. 6 Thus, the design
similar to the 621 patent. Lawman argues that because
of the hooks on Master Lock's products does not create
its expert concluded that Master Lock's products were
the same impression as does the 621 patent whose
substantially similar to the 621 patent, a material issue
hooks connect via a U-shaped connective segment and
of fact exists related to the ordinary observer test.
whose hooks resemble a C-shape.
Initially, we note that HN22[ ] nothing more is required
Finally, I will examine the intersection between the under the ordinary observer analysis than conducting a
hooks and the shaft. The 621 patent depicts a circle on visual comparison of the patented design and the
top of a relatively straight [*24] portion as shown in allegedly infringing products. See Braun, 975 F.2d at
Figures 2 and 3 of the 621 patent. The appearance of 821. We have already compared the patent to Master
the intersection on Master Lock's products is quite Lock's products and found that they are not substantially
different. Since Master Lock's hooks do not have a similar. No further analysis is necessary, however, we
connective segment, the intersection looks like a circle will briefly touch upon Lawman's expert report.
on top of two other circles when viewed from a front side
elevational view. Additionally, when viewed from a top Lawman's expert report, which states that Master Lock's
or bottom view, the intersection on Master Lock's products are substantially similar to the 621 patent,
products looks as if the hooks sprout from the shaft itself does not create a material issue of fact. As one court
whereas, because of the connective U-shaped has noted, HN23[ ] "expert testimony is unnecessary
connective segment in the 621 patent, the hooks on the under the ordinary observer prong of the infringement
test." Bush Indus., 772 F. Supp. at 1450. Also,
Lawman's expert admitted in his deposition that
5 Master Lock notes that the notches on all of its products are his [*26] analysis focused not only on the ornamental
substantially the same except for model number 238. While aspects of the 621 patent, but also on its functional
the notches on the 238 model more closely resemble the aspects of the 621 patent. 7 However, the Federal
trapezoidal notches on the 621 patent, the remaining
differences between the 238 model and the 621 patent are
enough to not make the 238 model and the 621 patent 7 Specifically, Lawman's expert stated the following in his
substantially similar. Additionally, I note that as with the other
deposition:
Master Lock products, the notches on model 238 do not
completely encircle the shaft as they do on the 621 patent. Q: Would you agree that only non-functional design
6 Even
aspects are pertinent to design patent infringement?
if the ordinary observer would not necessarily note this
difference in the shape of the hooks, the other differences A: No, I wouldn't agree with that.
between Master Lock's products and the 621 patent are
Q: Why not?
enough to find as a matter of law that they are not
substantially similar. A: Because in a design patent, it is the overall visual

Page 12 of 13
2004 U.S. Dist. LEXIS 3705, *26
Circuit has made clear that "it is the non-functional, novelty are:
design aspects that are pertinent to determinations of
infringement." Lee, 838 F.2d at 1188. Finally, Lawman's
expert does not affect this Court's analysis because I 1) the double hooks;
have decided after a visual comparison that Master 2) the symmetrical relationship of the hooks to
Lock's products are not substantially similar to the 621 themselves;
patent. 3) the symmetrical relationship of the hooks to the
shaft;
4) the attachment of the hooks close to the end of
[*27] C. POINT OF NOVELTY TEST the shaft;
5) the facing of the openings of the hooks outward
As stated previously, both the ordinary observer and in relation to the end of the shaft;
point of novelty tests must be satisfied in order to find 6) the attachment areas that are on the outside
infringement. See Contessa Food Prods., 282 F.3d at surfaces of both the hooks and the shaft (as
1377. Sometimes, courts elect to forego the point of opposed to on the ends of the shaft or hooks with
novelty test upon concluding as a matter of law that the either cutting into the others);
accused devices are not substantially similar under the 7) the increased diameter of the shaft where the
ordinary observer test. See Kellman v. Coca-Cola Co., hooks are attached;
280 F. Supp. 2d 670, 679 (E.D. Mich. 2003)(stating it 8) the diameter of the hooks that is similar to the
will not address point of novelty test because plaintiffs increased diameter of the shaft at the hook end;
have not satisfied ordinary observer test); Minka and
Lighting, 2002 U.S. Dist. LEXIS 10760, 2002 WL 9) the proportional relationship between the size of
1331883, at *6 (stating it will not address point of the hooks and the length of the shaft.
novelty test since no reasonable jury could find
substantial similarity); Child Craft Indus., Inc. v. (Pl.'s Opp'n to Def.'s Mot. for Summ. J. of Non-
Simmons Juvenile Prods. Co., Inc., 990 F. Supp. 638, Infringement, 20). Lawman argues that Master [*29]
644 (S.D. Ind. 1998). In the interest of completeness, I Lock has incorporated these points of novelty into its
have chosen to examine the point of novelty test products.
because I also find that Lawman has not satisfied this
test. In response to Lawman's purported points of novelty,
Master Lock responds by citing to U.S. Utility Patent
1. Lawman's Purported Nine Points of Novelty Number 5,197,308 (the "308 patent"). The 308 patent
was issued over a year before an application was made
HN24[ ] The point of novelty test "requires proof that to the Patent Office for the 621 patent. Therefore, the
the accused design appropriates the novelty which 308 patent can properly be considered as prior art. See
distinguishes [*28] the patented design from the prior 35 U.S.C. 102(b). 8 Master Lock argues that the 308
art." Contessa Food Prods., 282 F.3d at 1377 (citing patent contains all of the features that Lawman alleges
Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 are novel within the 621 patent.
(Fed. Cir. 1984)). Lawman argues, through its expert,
that the 621 patent has nine points of novelty. Lawman attempts to negate the impact of the 308
Specifically, Lawman argues the 621 patent's points of patent by arguing that it has no relevance to the [*30]
point of novelty test because it depicts a three-prong
wheel lock device. However, throughout the 308 patent,
aesthetic appearance of the thing. And in design patents
these are functional objects, so almost all of it has some
function. 8 This section states:
Q: So you would not screen out functional and non-
HN25[ ] A person shall be entitled to a patent unless -
functional, you would look at the overall?
(b) the invention was patented or described in a printed
A: Yes.
publication in this or a foreign country or in public use or
Q: Is that what you did here? on sale in this country, more than a year prior to the date
of the application for patent in the United States.
A: Yes.
(Skalski dep. at 87). 35 U.S.C. 102(b).

Page 13 of 13
2004 U.S. Dist. LEXIS 3705, *30
the description consistently refers to the device as a the Patent Office deemed that the shape of Master
"double-fork" which negates Lawman's three-prong Lock's hooks was patentably distinct from the prior art,
argument. Thus, the 308 patent is very relevant as prior most notably the shape of the hooks in the 621 patent.
art and illustrates that the double hook in the 621 patent We find that Master Lock's hooks do not appropriate the
is not a point of novelty. Additionally, we find that purportedly novel shape of the hooks as depicted in the
Lawman's other purported points of novelty are also 621 patent.
contained within the 308 patent (as detailed in Master
Lock's Reply Brief) and, therefore, shall not be Second, we find that Master Lock's products do not
considered points of novelty. Indeed, Master Lock set appropriate Figure 3 of the 621 patent nor do we find
forth a picture and diagram of the 308 patent which that its products appropriate a circular tube on top of the
clearly illustrated how all nine points are within the prior midpoint of a single piece hook. Specifically, because
art of the 308 patent. Master Lock's products do not have a connective U-
shaped connective segment between its hooks, we find
2. Additional Purported Points of Novelty that its products do not appropriate these purported
points of novelty.
To the extent that there might be points of novelty
beyond the purported nine listed by Lawman's expert, For all of these reasons, Master Lock's products do not
we find that Master Lock does not appropriate them into satisfy the point of novelty test necessary for a finding
the design of its products. 9 For example, during infringement. Lawman's nine points of novelty are not
discovery, Lawman argued that other points of novelty novel since they are all contained within prior art. In
were present in the 621 patent. The following is a list addition, the three purportedly [*33] points of novelty
that Lawman admitted were points of novelty during admitted by Lawman during discovery are not
discovery: appropriated in Master Lock's products.
1) the shape of the hook; V. CONCLUSION
2) [*31] the visual appearance of a circular tube atop In conclusion, Master Lock's products do not infringe on
the midpoint of a single piece hook; and the 621 patent. First, the 621 patent was construed.
Next, I found that the properly construed claim was not
3) the configuration shown in Figure 3 of the 621 patent. substantially similar to Master Lock's products under the
ordinary observer test. Finally, Lawman's purported
(Def.'s Br. in Supp. of its Mot. for Summ. J. of Non- points of novelty were either not novel or were not
Infringement, Ex. E). Even if we were to find that these appropriated by Master Lock's products. As such,
three are points of novelty depicted in the 621 patent, it summary judgment is appropriate in this case, and we
is clear is that they are not appropriated in Master grant Master Lock's Motion for Summary Judgement of
Lock's products. Non-Infringement.
First, and perhaps most importantly, Master Lock's An appropriate Order follows.
products do not appropriate the purportedly novel shape
of the hooks depicted in the 621 patent. This is best ORDER
illustrated by the fact that Master Lock obtained its own
AND NOW, this 11th day of March, 2004, upon
design patent for the shape of its wheel lock hooks (the
consideration of Defendant's Motion for Summary
861 patent). HN26[ ] Patents maintain a presumption
Judgment of Non-Infringement (Doc. No. 14), together
of validity and Lawman has not come forward with any
with the Response, Reply, Memoranda and Exhibits
evidence or argument as [*32] to why we should
attached thereto, it is hereby ORDERED that said
declare the 861 patent invalid. See Dana Corp. v. Am.
Motion is GRANTED.
Axle & Mfg., Inc., 279 F.3d 1372, 1375 (Fed. Cir.
2002)(citing 25 U.S.C. § 282)(stating patent is BY THE COURT:
presumed to be valid). Upon reviewing the 621 patent,
Robert F. Kelly, Sr. J.
9 Itis important to note that Lawman does not assert that the
following list are points of novelty within its Brief. However, in End of Document
order to perform a complete analysis, we will briefly examine
them as if they are points of novelty.

Caution
As of: May 4, 2019 2:30 PM Z
Minka Lighting, Inc. v. Maxim Lighting Int'l, Inc.

United States District Court for the Northern District of Texas, Dallas Division
March 16, 2009, Decided; March 16, 2009, Filed
CIVIL ACTION NO. 3:06-CV-995-K
Reporter
2009 U.S. Dist. LEXIS 20948 *; 2009 WL 691594
prior art designs. It was thus apparent that an ordinary
MINKA LIGHTING, INC., Plaintiff, v. MAXIM LIGHTING
observer familiar with the prior art would not have been
INTERNATIONAL, INC., et al., Defendants.
deceived into purchasing defendants' fixture thinking it
to be plaintiff's patented design. Thus, no jury could
Prior History: Minka Lighting, Inc. v. Maxim Lighting
reasonably have found that defendants' fixtures
Int'l, Inc., 2008 U.S. Dist. LEXIS 21514 (N.D. Tex., Mar.
infringed plaintiff's patent.
18, 2008)
Outcome
Core Terms Defendants' motion for summary judgment was granted.
Plaintiff's motion for summary judgment was denied.
patent, designs, ordinary observer, fixtures, prior art,
infringement, summary judgment, ornamental, globe,
ridge, impression, Lighting, appears, lamp, top,
similarities, silhouette, medallion, finial, scroll, visual,
arm, cap, readily distinguishable, upper portion,
dissimilar, noticeably, deceived, embodied, drawing
Case Summary Civil Procedure > ... > Summary

Overview
Procedural Posture
Plaintiff filed a motion for partial summary judgment and Civil Procedure > ... > Summary
defendants filed a motion for partial summary judgment Judgment > Supporting Materials > General
in plaintiff's patent infringement action. Overview
Overview HN1[ ] Summary Judgment, Entitlement as Matter

Defendants' accused designs did not infringe the design of Law
patents. As to the first patent, the ordinary observer was
a member of the public who was currently shopping for Summary judgment is appropriate when the pleadings,
or had recently purchased lighting fixtures. An ordinary affidavits, and other summary judgment evidence show
observer of defendants' accused designs would have that no genuine issue of material fact exists and the
been left with the impression that it was substantially moving party is entitled to judgment as a matter of law.
different from the patent. Comparing the figures of the Fed. R. Civ. P. 56(c).
patent with the accused designs, the court determined
that the overall visual impressions were distinct, and it
was readily apparent that an ordinary observer would
not have been confused. Inter alia, the very silhouette of Civil Procedure > ... > Summary
which plaintiff complained was readily distinguishable, Judgment > Opposing Materials > Accompanying
and defendants' fixtures had noticeably more Documentation
ornamentation than the patent. Defendants' product
would have appeared different from the patent to any Civil Procedure > ... > Summary
ordinary observer aware of the great number of similar Judgment > Burdens of Proof > Movant Persuasion

Page 2 of 10
2009 U.S. Dist. LEXIS 20948, *20948
& Proof Business & Corporate Compliance > ... > Patent
Judgment > Burdens of Proof > Nonmovant HN4[ ] Infringement Actions, Design Patents
Persuasion & Proof
A design patent requires a new, original, and
Civil Procedure > ... > Summary ornamental design. 35 U.S.C.S. § 171. A design patent
Judgment > Entitlement as Matter of Law > Genuine is defined by the content of its drawing; the proper
Disputes construction of a design patent focuses on the overall
visual impression of its ornamental, novel features. A
Civil Procedure > ... > Summary design patent protects the nonfunctional aspects of an
Judgment > Entitlement as Matter of ornamental design as shown in the patent.
HN2[ ] Opposing Materials, Accompanying

Documentation
A party moving for summary judgment bears the burden
of identifying those portions of the record it believes
demonstrate the absence of a genuine issue of material
Infringement of a design patent is the unauthorized
fact. Once a movant makes a properly supported
manufacture, use, or sale of the article embodying the
motion, the burden shifts to the nonmovant to show that
patented design or any colorable imitation thereof. 35
summary judgment should not be granted; the
U.S.C.S. § 289. The patented and accused designs do
nonmovant may not rest upon the allegations in the
not have to be identical for design patent infringement to
pleadings, but must support the response to the motion
be found. In infringement analysis, an accused design is
with summary judgment evidence showing the existence
compared to the patent drawings to determine whether
of a genuine fact issue for trial.
the accused design infringes the patent, yet the
patentee bears the burden of proof on infringement.

Disputes
The "ordinary observer" test should be the sole test for
determining whether a design patent has been infringed.
Indeed, a district court decision granting summary
judgment based on the point of novelty test will be
vacated and remanded for reconsideration in light of the
HN3[ ] Summary Judgment, Evidentiary
Egyptian Goddess opinion.
Considerations
In the summary judgment context, in considering

whether genuine issues of material fact exist, a court Business & Corporate Compliance > ... > Patent
must determine whether a reasonable jury could return Law > Infringement Actions > Design Patents
a verdict for the nonmoving party in the face of all
evidence presented. All evidence and reasonable HN7[ ] Infringement Actions, Design Patents
inferences must be viewed in the light most favorable to
the nonmovant. The ordinary observer test is: if, in the eye of an
ordinary observer, giving such attention as a purchaser
usually gives, two designs are substantially the same, if
the resemblance is such as to deceive such an

Page 3 of 10
2009 U.S. Dist. LEXIS 20948, *20948
observer, inducing him to purchase one supposing it to HN10[ ] Infringement Actions, Design Patents
be the other, the first one patented is infringed by the
other. The criterion is deception of the ordinary In the design patent context, the ordinary observer is not
observer. The question, then, is whether the ordinary any observer, but one who, with less than the trained
observer would be deceived by the accused design faculties of the expert, is a purchaser of things of similar
because it is substantially similar to the patented design. design, or one interested in the subject.
Business & Corporate Compliance > ... > Patent Business & Corporate Compliance > ... > Patent
Law > Infringement Actions > Design Patents Law > Infringement Actions > Design Patents
HN8[ ] Infringement Actions, Design Patents HN11[ ] Infringement Actions, Design Patents
In applying the ordinary observer test, courts should In utilizing the ordinary observer test, a court is not
take into account similarities and differences between obligated to issue a detailed verbal description of the
the patented and accused designs. Under the ordinary design if it does not regard verbal elaboration as
observer test, infringement will not be found unless the necessary or helpful.
accused article embodies the patented design or any
colorable imitation thereof.
Law > Infringement Actions > Design Patents HN12[ ] Infringement Actions, Design Patents
HN9[ ] Infringement Actions, Design Patents A district court properly limits its interpretation of the
scope of a design patent to its overall ornamental visual
The United States Court of Appeals for the Federal impression, rather than to the broader general design
Circuit has effectively divided design patent cases into concept.
two categories. In some instances, the claimed design
and the accused design will be sufficiently distinct that it
will be clear without more that the patentee has not met Business & Corporate Compliance > ... > Patent
its burden of proving the two designs would appear Law > Infringement Actions > Design Patents
"substantially the same" to the ordinary observer. In
other instances, when the claimed and accused designs HN13[ ] Infringement Actions, Design Patents
are not plainly dissimilar, resolution of the question
whether the ordinary observer would consider the two In the design patent context, a full analysis may include
designs to be substantially the same will benefit from a a comparison of the claimed and accused designs with
comparison of the claimed and accused designs with the prior art. Similar silhouettes or comparable contours
the prior art. Where there are many examples of prior between a patented and accused design can make
art designs differences between the claimed and them "not plainly dissimilar," thus counseling
accused designs that might not be noticeable in the comparison with the prior art. Yet such general design
abstract can become significant to the hypothetical concepts alone are insufficient to show infringement,
ordinary observer who is conversant with the prior art. particularly when the prior art is replete with similar
Thus, if the claimed design and the accused design are designs.
sufficiently distinct, no comparison with the prior art is
necessary. If they are not readily distinguishable, the
ordinary observer analysis should be informed by the
prior art. Business & Corporate Compliance > ... > Patent


Page 4 of 10
2009 U.S. Dist. LEXIS 20948, *20948
Under the ordinary observer standard, a patented Summary Judgment and Motion to Strike Plaintiff's
design that consists only of bringing together old Supplemental Summary Judgment Evidence (Doc. Nos.
elements with slight modifications of form is not 73 and 105).
infringed by another who uses the same elements with
his own variations of form if his design is distinguishable The Court GRANTS Defendants' motion for partial
by the ordinary observer from the patented design. summary judgment. Consequently, Plaintiff's motion for
partial summary judgment is DENIED. Because the
allegedly incompetent summary judgment evidence
concerns only points of novelty and are not considered
Business & Corporate Compliance > ... > Patent pursuant to this opinion, Plaintiff's motion to strike is
Law > Infringement Actions > Design Patents DENIED as moot. Because the Court would rule for
Defendants even if the supplemental affidavit and
illustrations to which they object are considered,
Defendants' motion to strike is DENIED.
Design patents have almost no scope.
Counsel: [*1] For Minka Lighting Inc, Plaintiff: Lisa H

I. Factual and Procedural Background
Meyerhoff, LEAD ATTORNEY, Baker & McKenzie,
Dallas, TX; Myall S Hawkins, Todd Young Brandt, Plaintiff Minka Lighting, Inc. ("Minka") produces interior
Valerie Kay Friedrich, Baker & McKenzie, Houston, TX; and exterior lighting fixtures. Plaintiff's lighting fixtures
Tan Pham, Baker & McKenzie LLP, Houston, TX. are distributed through authorized distributors and retail
For Maxim Lighting International Inc, Defendant: outlets like Home Depot and specialty showrooms.
Michael D Pegues, LEAD ATTORNEY, Jason A Defendants Maxim Lighting International, Inc., Maxim
Wietjes, Bracewell & Giuliani LLP, Dallas, TX; Jonathan Lighting, Inc., and Maxim Group Companies (collectively
Barry Sexton, PRO HAC VICE, Paul R Roper PC, "Maxim") produce competing light fixtures. Both
Orange, CA. companies display their wares at the Dallas Market Hall,
located within this judicial district, and receive a
For Maxim Lighting Inc, Maxim Group Companies, significant portion of their business through [*3] orders
Defendants: Michael D Pegues, LEAD ATTORNEY, placed at this marketplace.
Jason A Wietjes, Bracewell & Giuliani LLP, Dallas, TX.
For ADR Provider, Mediator: Charles M Hosch, Minka filed this action against Maxim alleging, among
Strasburger & Price, Dallas, TX. other things, that Defendants infringed Plaintiff's design
patents relating to various lighting fixtures. Specifically,
For Maxim Lighting International Inc, Maxim Lighting Plaintiff asserts three design patents against
Inc, Maxim Group Companies, Counter Claimants: Defendants: U.S. Patent Nos. D455,515 ("'515 patent"),
Jason A Wietjes, Michael D Pegues, Bracewell & D461,591 ("'591 patent"), and D535,052 ("'052 patent").
Giuliani LLP, Dallas, TX. A fourth claim by Plaintiff, concerning U.S. Patent No.
D461,766, was dismissed by order of this Court on July
Judges: Ed Kinkeade, United States District Judge. 28, 2008 (Doc. No. 99). The three remaining patents in
suit involve an exterior lamp housing, a lamp support
Opinion by: Ed Kinkeade arm, and an interior light globe.
Opinion Plaintiff and Defendant each moved for summary

judgment on the three remaining patent infringement
claims. Defendant seeks judgment that its accused
products do not infringe the patents in suit, but it has not
MEMORANDUM OPINION AND ORDER raised an invalidity argument at this summary judgment
stage. Plaintiff's additional claims for copyright
Before the Court are Plaintiff Minka Lighting, Inc.'s infringement and breach of contract are not the subject
Motion for Partial Summary Judgment and Motion to of the instant motions for summary judgment. Likewise,
Strike Defendants' Incompetent Summary Judgment Maxim's counterclaims on the copyright claims are not
Evidence (Doc. Nos. 76 and 81) and Defendants Maxim at issue here.
Lighting International, Inc., Maxim Lighting, Inc., and
Maxim Group Companies' Motion [*2] for Partial After conducting a hearing, considering oral argument,

Page 5 of 10
2009 U.S. Dist. LEXIS 20948, *3
and reviewing the parties' briefs [*4] and related filings, KeyStone Retaining Wall Sys. v. Westrock, Inc., 997
this Court previously construed the disputed claims F.2d 1444, 1450 (Fed. Cir. 1993).
according to Markman v. Westview Instruments, Inc., 52
F.3d 967 (Fed. Cir. 1995). The Court now turns to the HN5[ ] Infringement of a design patent is the
parties' motions for summary judgment. unauthorized manufacture, use, or sale of the article
embodying the patented design or any colorable
imitation thereof. 35 U.S.C. § 289. The [*6] patented
II. Legal Standard and accused designs do not have to be identical for
design patent infringement to be found. OddzOn Prods.,
HN1[ ] Summary judgment is appropriate when the 122 F.3d at 1405. In infringement analysis, an accused
pleadings, affidavits, and other summary judgment design is compared to the patent drawings to determine
evidence show that no genuine issue of material fact whether the accused design infringes the patent, Elmer,
exists and the moving party is entitled to judgment as a 67 F.3d at 1577, yet the patentee bears the burden of
matter of law. FED. R. CIV. P. 56(c); Celotex Corp. v. proof on infringement. Egyptian Goddess, Inc. v. Swisa,
Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 91 L. Ed. Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc),
2d 265 (1986); U.S. Philips Corp. v. Iwasaki Elec. Co., petition for cert. filed, (U.S. Feb. 2, 2009) (No. 08-1031).
505 F.3d 1371, 1374 (Fed. Cir. 2007). HN2[ ] The
moving party bears the burden of identifying those The Federal Circuit, in Egyptian Goddess, clarified the
portions of the record it believes demonstrate the appropriate legal standard to assess claims of design
absence of a genuine issue of material fact. Celotex, patent infringement. Prior to this decision, design patent
477 U.S. at 322-25. Once a movant makes a properly cases required courts to apply both the "point of novelty"
supported motion, the burden shifts to the nonmovant to and "ordinary observer" tests. See, e.g., Contessa Food
show that summary judgment should not be granted; the Prods., Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir.
nonmovant may not rest upon the allegations in the 2002); Sun Hill Indus., Inc. v. Easter Unlimited, Inc., 48
pleadings, but must support the response to the motion F.3d 1193 (Fed. Cir. 1995) (mandating both point of
with summary judgment evidence showing the existence novelty and ordinary observer analysis).
of a genuine fact issue for trial. Anderson v. Liberty
The Egyptian Goddess opinion eliminated the point of
Lobby, Inc., 477 U.S. 242, 255-57, 106 S. Ct. 2505, 91
novelty test. Instead, HN6[ ] the "'ordinary observer'
L. Ed. 2d 202 (1986).
test should be the sole test for determining whether a
HN3[ ] In considering whether [*5] genuine issues of design patent has been infringed." Egyptian Goddess,
material fact exist, the court must determine whether a 543 F.3d at 678. [*7] Indeed, a district court decision
reasonable jury could return a verdict for the nonmoving granting summary judgment based on the point of
party in the face of all evidence presented. Id. at 249. All novelty test will be vacated and remanded for
evidence and reasonable inferences must be viewed in reconsideration in light of the Egyptian Goddess
the light most favorable to the nonmovant. United States opinion. E.g., Park B. Smith, Inc. v. CHF Industries, Inc.,
v. Diebold, Inc., 369 U.S. 654, 655, 82 S. Ct. 993, 8 L. 309 Fed. Appx. 411, 2009 U.S. App. LEXIS 2335, 2009
Ed. 2d 176 (1962). WL 279051 (Fed. Cir. Feb. 6, 2009) (stating "the point of
novelty test . . . was eliminated by Egyptian Goddess. . .
.").
III. Analysis
Thus, the ordinary observer test is the only test upon
which this Court may rely in assessing design patent
HN4[ ] A design patent requires a new, original, and
cases. HN7[ ] The ordinary observer test is:
ornamental design. 35 U.S.C. § 171. A design patent is
defined by the content of its drawing; the proper if, in the eye of an ordinary observer, giving such
construction of a design patent focuses on the overall attention as a purchaser usually gives, two designs
visual impression of its ornamental, novel features. See are substantially the same, if the resemblance is
OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, such as to deceive such an observer, inducing him
1405 (Fed. Cir. 1997); Durling v. Spectrum Furniture to purchase one supposing it to be the other, the
Co., 101 F.3d 100, 104 (Fed. Cir. 1996). A design first one patented is infringed by the other.
patent protects the nonfunctional aspects of an
ornamental design as shown in the patent. Elmer v. ICC Gorham Co. v. White, 81 U.S. 511, 528, 20 L. Ed. 731
Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995); (1871). "The criterion is deception of the ordinary

Page 6 of 10
2009 U.S. Dist. LEXIS 20948, *7
observer." L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 consumer who is familiar with the prior art. The ordinary
F.2d 1117, 1124 (Fed. Cir. 1993). The question, then, observer is therefore a member of the public who is
"is whether the ordinary observer would be deceived by currently shopping [*10] for or has recently purchased
the accused design because it is substantially similar to lighting fixtures--indeed a "purchaser of things of similar
the patented design." Goodyear Tire & Rubber Co. v. design." Id.
Hercules Tire & Rubber Co., Inc., 162 F.3d 1113, 1118
(Fed. Cir. 1998). [*8] HN8[ ] In applying the ordinary HN11[ ] In utilizing the ordinary observer test, a court
observer test, "[c]ourts should take into account "is not obligated to issue a detailed verbal description of
similarities and differences" between the patented and the design if it does not regard verbal elaboration as
accused designs. FMC Corp. v. Hennessy Indus., Inc., necessary or helpful." Egyptian Goddess, 543 F.3d at
836 F.2d 521, 527 (Fed. Cir. 1987). Under the ordinary 679. Here, however, the Court has previously made a
observer test, "infringement will not be found unless the detailed verbal description of the patents in suit. See
accused article 'embod[ies] the patented design or any Minka Lighting, Inc. v. Maxim Lighting Int'l, Inc., No.
colorable imitation thereof.'" Egyptian Goddess, 543 3:06-CV-0995-K, 2008 U.S. Dist. LEXIS 21514, 2008
F.3d at 678 (quoting Goodyear Tire & Rubber Co., 162 WL 763160 (N.D. Tex. Mar. 18, 2008) (Doc. No. 68)
F.3d at 1116-17). (hereinafter "Markman Order"). In accordance with
Egyptian Goddess, the Court finds that the claimed
HN9[ ] The Federal Circuit has effectively divided designs are best represented by the illustrations
cases into two categories. "In some instances, the contained in each patent. But because the Court has
claimed design and the accused design will be already made such a description, it would be
sufficiently distinct that it will be clear without more that incongruent to completely ignore this previous effort to
the patentee has not met its burden of proving the two adequately reduce the patents to words. Although the
designs would appear 'substantially the same' to the Court recognizes that its detailed analysis in the
ordinary observer, as required by Gorham." Egyptian Markman Order likely exceeds the level of detail noticed
Goddess, 543 F.3d at 678 (emphasis added). "In other by an ordinary observer, the prior analysis helps in
instances, when the claimed and accused designs are comparing some of the similarities and differences an
not plainly dissimilar, resolution of the question whether ordinary observer would notice. Therefore, although the
the ordinary observer would consider the two designs to Court relies on the [*11] drawings in the patents
be substantially the same will benefit from a comparison themselves, the Court will include this description to
of the claimed and accused designs with the prior art." inform its analysis of the figures embodied in the
Id. (emphasis added). "Where there [*9] are many patents. See Egyptian Goddess, 543 F.3d at 680 ("We
examples of prior art designs . . . differences between therefore leave the question of verbal characterization of
the claimed and accused designs that might not be the claimed designs to the discretion of trial judges . . .
noticeable in the abstract can become significant to the ."). Defendant has offered to produce "actual, physical
hypothetical ordinary observer who is conversant with models of the commercial embodiments" of the patents
the prior art." Id. Thus, if the claimed design and the in suit. Such production is unnecessary based on the
accused design are sufficiently distinct, no comparison Court's thorough review of the patents and the accused
with the prior art is necessary. If they are not readily designs.
distinguishable, the ordinary observer analysis should
be informed by the prior art. See Smith v. Whitman Although the parties' motions for summary judgment
Saddle Co., 148 U.S. 674, 679-82, 13 S. Ct. 768, 37 L. were filed prior to the Egyptian Goddess decision, the
Ed. 606, 1893 Dec. Comm'r Pat. 324 (1893) (comparing Court subsequently asked for and received additional
the patented and accused designs in the context of briefing in light of that opinion. Accordingly, the Court
similar designs found in the prior art). considers these additional arguments and considers the
claim of each design patent in turn.
HN10[ ] "The ordinary observer is not any observer,
but one who, with less than the trained faculties of the
expert, is 'a purchaser of things of similar design,' or A. '515 Patent
'one interested in the subject.'" Applied Arts Corp. v.
Grand Rapids Metalcraft Corp., 67 F.2d 428, 430 (6th The '515 patent concerns "[t]he ornamental design for
Cir. 1933). Because the accused fixtures are sold the lamp housing, as shown and described." As
primarily to the general public, the parties appear to previously construed by this Court:
agree that the ordinary observer in this case is a retail

Page 7 of 10
2009 U.S. Dist. LEXIS 20948, *11
the design of the lamp housing in the '515 patent is district court properly limits its interpretation of "the
a combination of a top finial, a body, and a lower scope of the patent to its overall ornamental visual
medallion. The top finial has two sections with The impression, rather than to the broader general design
'515 Patent Defendants' Morrow Bay design a concept. . . ." OddzOn Prods., 122 F.3d at 1405; see
substantially bell-shaped [*12] upper section also Durling, 101 F.3d at 104 ("A proper interpretation of
covered in a plurality of evenly spaced ornamental [the patentee's] claimed design focuses on the visual
leaves and a lower flared section tapering from top impression it creates."). Defendants assert that
to bottom. The lower tapered section of the top Plaintiff's infringement claims "constitute a thinly veiled
finial abuts an upper most ring of the design's body. attempt to claim proprietary rights in general design
The body has a cap that is substantially bell shaped concepts." Def.'s Resp. at 8.
with three circular rings at its top section. Below the
body cap is a band having a horizontal ridge that The Court finds that an ordinary observer of Defendants'
fits into the bell-shaped cap; below the horizontal accused designs would be left with the impression that it
ridge is a tapered convex ridge that flows into a is substantially different from the '515 patent. Comparing
second horizontal ridge. Below the second the figures of the '515 patent with the accused designs,
horizontal ridge is a tapered concave ridge that the Court determines that the overall visual impressions
encloses the upper portion of the caged body. The [*14] are distinct, and it is readily apparent that an
caged body portion includes a vase-shaped globe ordinary observer would not be confused. There are
with four vertical bars having vertical ridges several differences that would be readily apparent to an
extending from the circular band of the body cap to ordinary observer.
the lower medallion and curved to outline the shape
First, the very silhouette of which Plaintiff complains is
of the glass globe. The lower medallion has
readily distinguishable. The glass globe of Plaintiff's '515
concave sides with a wider diameter at a top end
design has a vase shape that curves noticeably toward
and tapering to a smaller diameter at a lower end.
the lower end. Defendants' accused design has a globe
that bows convexly from its upper end to the lower end.
Markman Order, 2008 U.S. Dist. LEXIS 21514, 2008
The result is that Plaintiff's '515 design appears to carry
WL 763160, at *1. Juxtaposed below are a design
its weight more evenly than does Defendants' design,
patent drawing of Plaintiff's '515 patent on the left and a
which appears more top-heavy.
photograph of Defendants' accused Morrow Bay design
on the right:
Second, the top finial of Defendants' Morrow Bay
fixtures has three sections. As noted, the finial of the
[*13]
'515 patent has two sections. The '515 patents' top finial
is further "covered in a plurality of evenly spaced
ornamental leaves," whereas the top finial of
Defendants' design lacks any obvious ornamental
design elements.
Third, the Morrow Bay fixtures have noticeably more

ornamentation than the '515 patent. Specifically,
Defendants fixtures have a series of petal- or frond-
shaped ornamental ridges along the fixture's cap. The
'515 design lacks this ornamentation. Instead, it includes
a square [*15] crossed with an "x" in roughly the
. equivalent location. The result is that Plaintiff's '515
design appears more geometric, whereas Defendants'
Plaintiff contends that Defendants' Morrow Bay fixtures design is more organic.
infringe the '515 patent based upon substantial
similarities that would deceive an ordinary observer. It Fourth, the lower medallions of the two designs are
contends that Defendants' fixtures have a substantially readily distinguishable. Defendants' lower medallion is
similar silhouette and produce the same overall visual adorned with petal-shaped ridges. The '515 patent has
impression as the '515 patent, which is embodied no discernible ornamental elements on the lower
commercially in Minka's Ardmore lantern. HN12[ ] A medallion. Further, Defendants' Morrow Bay fixtures
have two distinct sections on the lower medallion,

Page 8 of 10
2009 U.S. Dist. LEXIS 20948, *15
whereas the '515 patent has one. The result is that patented design that consists "only of bringing together
Defendants' fixtures appear to "sit" much higher than the old elements with slight modifications of form" is not
'515 design--again contributing to an overall dissimilar infringed by "another who uses the same elements with
impression. his own variations of form . . . if his design is
distinguishable by the ordinary observer from the
This is not an exhaustive list of differences, but the patented design." Zidell v. Dexter, 262 F. 145, 146 (9th
Court believes it accurately represents distinguishing Cir. 1920). As the Egyptian Goddess opinion noted, the
features that would be readily apparent to an ordinary Zidell court "emphasized that the defendant's product
observer. The aggregation of these differences create a would appear different from the plaintiff's protected
distinct overall visual impression and overwhelm the design to an ordinary observer aware of the great
similarities between the designs. number of closely similar prior art designs." Egyptian
Goddess, 543 F.3d at 676.
Although the Court is satisfied that the '515 patent and
Defendants' accused designs are readily distinguishable Here, Defendants' product would appear different from
to an ordinary observer, HN13[ ] a full analysis may the Plaintiff's '515 patent [*18] to any ordinary observer
include "a comparison of the claimed and accused aware of the great number of similar prior art designs. It
designs with the prior art." Egyptian Goddess, 543 F.3d is thus apparent that an ordinary observer familiar with
at 678. [*16] Similar silhouettes or comparable contours the prior art would not be deceived into purchasing
between a patented and accused design can make Defendants' Morrow Bay fixture thinking it to be
them "not plainly dissimilar," thus counseling Plaintiff's patented design. Thus, the Court concludes
comparison with the prior art. Yet such general design that no jury could reasonably find that Defendants'
concepts alone are insufficient to show infringement, Morrow Bay fixtures infringe Plaintiff's '515 patent.
particularly when the prior art is replete with similar Summary judgment is appropriate for Defendants on
designs. See OddzOn Prods., 122 F.3d at 1405 this claim.
(rejecting the notion that "the overall similarity of . . .
appearance is sufficient to show infringement").
B. '591 Patent
Plaintiff includes twenty-nine prior art references,
including five it deems "most relevant." Pl.'s Brief at 16. The claim of the '591 patent is [t]he ornamental design
Defendant cites several prior art examples, including for the lamp support arm, as shown and described." As
U.S. Patent Nos. D420,760, D394,325, D77,410, and previously construed by this court:
D63,205, as well as the "Oakhurst" fixture by The design of the lamp support arm in the '591
Environmental Lighting For Architecture, Inc. ("ELA"), patent is a candy cane-shaped scroll having a
and various fixtures by Corbett Lighting. All were visible square cross section along its length. The
available to the public more than one year before the upper end is substantially closed and has an
'515 patent's application date of May 10, 2001, as ornamental extension that provides a decorative
required by 35 U.S.C. §102(b). Indeed, the prior art cap extending downwardly from the closed upper
history is lengthy: the '205 patent issued in 1923. end. The center portion is substantially straight. The
lower end is substantially open. Each end is
The prior art citations reveal the lamp housing in both approximately ball shaped, and has a decorative
Plaintiff's '515 patent and Defendants' accused designs petal or leaf feature located near each end that
employ design features well-known in the prior art. For flares outwardly from the scroll.
[*17] instance, the '205 patent incorporates squares
crossed with an "x" along the fixture's cap. The '410 Markman Order, 2008 U.S. Dist. LEXIS 21514, 2008
patent, issued in 1929, incorporates vertical bars along WL 763160, at *2. Juxtaposed below are a design
the body with leaf designs along the cap. The prior art [*19] patent drawing of Plaintiff's '591 patent on the left
designs include a top finial, body, and lower medallion, and a photograph of Defendants' accused Cambria
as Defendants note, and further incorporate a similar design on the right:
general silhouette. The particular design features of the
'515 patent include the same basic design elements, as
do Defendants' Morrow Bay fixtures.
HN14[ ] Under the ordinary observer standard, a

Page 9 of 10
2009 U.S. Dist. LEXIS 20948, *19
Were the Court to find infringement by Defendants'

dissimilar product, it would effectively broaden the
scope of Plaintiff's patent to cover all lamp support arms
that incorporate [*21] a scroll design. See In re Mann,
861 F.2d 1581, 1582, (Fed. Cir. 1988) HN15[ ]
("Design patents have almost no scope."). Thus,
because the two designs are plainly dissimilar and
Plaintiff has not met its burden, the analysis requires no
reference to the prior art. See Egyptian Goddess, 543
F.3d at 678 (stating that if the designs are "sufficiently
distinct" it is "clear without more" that patentee has not
met its burden). Consequently, the Court grants
summary judgment for Defendants, finding no
Plaintiff contends Defendants' Cambria fixtures are
infringement of the '591 patent.
substantially similar in overall visual appearance to the
'591 patent, which is embodied commercially in Minka's
Harrison fixture. Plaintiff cites the "silhouette or contour"
C. '052 Patent
when Defendants' accused design for the lamp support
arm is viewed from the side. The claim of the '052 patent is [t]he ornamental design
for a light globe, as shown and described." As
The similarities between the patented and accused
previously construed by this Court:
designs include their incorporation of a lamp support
arm and a "scroll" design. The similarities mostly end The design of the light globe in the '052 patent is a
there. Most notably, Defendants' fixtures include a combination of an upper portion, a central body,
distinct ornamental "hook" in the center portion of the and a base. The upper portion's rim is open and
lamp support arm. Although both the '591 patent and the flares outwardly. The outer surface of the upper
Cambria fixtures incorporate a scroll design, the portion contains a plurality of vertical, rounded
upwardly curved hook extending from the center portion rectangular ridges separated evenly by spaced
of the Cambria fixture makes it readily distinguishable recesses around its circumference. The upper
from the '591 patent. The difference is obvious at first portion has a rounded ridge at its lower edge that
glance. This hook makes Defendants' Cambria fixture abuts the central body. The central body is tulip
appear to have three appendages, whereas the '591 shaped; its surface is covered by an evenly spaced,
patent appears to have just two. The designs do not repeated, leaf-like design. The [*22] leaf-like
[*20] share a similar silhouette and convey different design is comprised of a vertical leaf-like design
overall ornamental visual impressions. and an immediately adjacent, inverted leaf-like
design. The leaves of the leaf like design are
In addition, either end of the '591 patent's scroll is
connected to each other via a vine design. The
wound tightly, whereas the Cambria's scroll appears
base portion includes a ring below which is a cup-
much more loosely bound at the ends. The center
shaped bottom portion, with a crosshatched surface
portion of the '591 patent's scroll is substantially straight,
appearance. The base portion is substantially
whereas the Cambria support arm is substantially
smaller than the upper portion and the central body.
curved. The '591 patent also incorporates a decorative
leaf or petal that appears to flare outward and upward
Markman Order, 2008 U.S. Dist. LEXIS 215142008 WL
near either end. Defendants' fixtures do have a flare
763160, at *2. Juxtaposed below are a design patent
near the end, but it extends slightly outward and down.
drawing of Plaintiff's '052 patent on the left and a
These differences would be seized upon by an ordinary
photograph of Defendants' accused Tuscan Estate
observer, who would not be deceived into purchasing
design on the right:
Defendants' products thinking they were Plaintiff's
patented design. Even accepting the contention of
Plaintiff's proffered expert Pat Wilson that the average
retail consumer would spend about fifteen minutes
deciding on fixtures, it is apparent to the Court that an
ordinary observer would perceive the differences in less
than fifteen seconds.

Page 10 of 10
2009 U.S. Dist. LEXIS 20948, *22
'052 patent to any ordinary observer aware of the great

number of similar prior art designs. Any similarity
between Defendants' accused design and the '052
patent is no greater than the similarities between the
designs of the '052 patent and the prior art.
Under an ordinary observer test, no jury could

reasonably find that an ordinary observer would be
deceived into confusing Defendants' design with
Plaintiff's '052 patent. Consequently, Defendant Maxim
is entitled to summary judgment of noninfringement on
this claim and on all the patents-in-suit.
The light globe of the Defendants' Tuscan Estate
Collection fixtures is at issue here. Plaintiff contends
that Defendants' accused globe is substantially similar IV. Conclusion
to its '052 patent, embodied commercially in Minka's
For these reasons, Defendants' motion for summary
Treville fixture.
judgment is GRANTED. The Court holds that
Defendants' accused Tuscan Estate Collection fixtures, Defendants' accused designs do not infringe the '515,
like Plaintiff's patented design, feature a translucent light '052, and '562 patents respectively. Plaintiff's motion for
globe adorned with a leaf and vine design. Yet the two summary judgment is DENIED.
designs have distinctive overall impressions.
The copyright infringement claims remain set for trial on
The central body of the Tuscan Estate globe is the Court's three-week docket beginning April 6, 2009.
noticeably wider and shorter than [*23] the body in the The parties are hereby ORDERED to meet and confer
'052 patent. If the '052 patent has a "tulip" shape, and [*25] provide a status report to the Court within
Defendants' fixture is shaped more like a fully bloomed seven (7) days of the date of this order. All other pretrial
rose. Defendants' fixture appears stouter than Plaintiff's deadlines remain unchanged.
more delicately shaped design. The silhouettes and
SO ORDERED.
contours of the designs are markedly distinct, leaving an
overall dissimilar impression. Signed March 16, 2009.
Although the Court is satisfied that the '052 patent and /s/ Ed Kinkeade
Defendants' accused design are readily distinguishable,
references to the prior art may help to inform a full Ed Kinkeade
analysis. Plaintiff cites thirteen prior art patents
considered by the U.S. Patent Office in considering the United States District Judge
'052 patent. Defendants cite prior art contained in a
"Renaissance Guild" catalog produced by Savoy House.
All were available to the public more than one year End of Document
before the '052 patent's application date of Jan. 4, 2006.
The prior art of the designs reveals the designs

effectively "bring[] together old elements with slight
modifications of form." Zidell, 262 F. at 146. For
instance, U.S. Patent No. D430,951 reveals a virtually
identical tulip-shaped silhouette to Plaintiff's '052 patent.
Ornamentation of leaves and vines appears on U.S.
Patent Nos. D395,096 and D430,341 as well as the
Renaissance Guild [*24] design. The ridged or
"scalloped" upper portion of both companies' light
globes appeared in the '341 patent and in U.S. Patent
No. D464,767. The Defendants' accused design thus
would appear sufficiently different from the Plaintiff's

Neutral
As of: May 4, 2019 3:26 PM Z
Nordock, Inc. v. Systems, Inc.

United States District Court for the Eastern District of Wisconsin
Case No. 11-CV-118
Reporter
2017 U.S. Dist. LEXIS 192413 *; 125 U.S.P.Q.2D (BNA) 1011 **; 2017 WL 5633114
[**1012] DECISION AND ORDER
NORDOCK, INC., Plaintiff, v. SYSTEMS, INC.,
Defendant.
I. Facts and Procedural History
Subsequent History: Motion denied by Nordock, Inc. v.
Sys., Inc., 2018 U.S. Dist. LEXIS 32405 (E.D. Wis., Feb. Nordock, Inc. holds a design patent regarding a "lip and
28, 2018) hinge plate for a dock leveler." U.S. Patent No.
D579,754 (the 'D754 Patent). When a semi-trailer is
Prior History: Nordock, Inc. v. Sys., Inc., 681 Fed.
backed into a loading dock, a dock leveler bridges the
Appx. 965, 2017 U.S. App. LEXIS 4732 (Fed. Cir., Mar.
gap between the floor of a loading dock and the bed of a
17, 2017)
semi-trailer. (ECF Nos. 258-1, ¶ 5; 221 at 17.) A dock
leveler allows people and equipment such as forklifts to
Core Terms easily pass between the building and the trailer when
loading or unloading cargo onto or from the trailer. (Id.)
article of manufacture, patent, dock, lip, hinge plate,
manufactured, infringing, profits, components, Amicus, The lip and hinge plate is the portion of the dock leveler
factors, total profit, damages, parties, summary that actually spans any gap between the building and
judgment, depicted, burden of production, smartphones, the trailer and makes contact with the trailer [*2] bed.
separately, Piano, bears, proposed findings of fact, (See ECF Nos. 164 at 12, 13, 22-23, 64; 221 at 15.)
patent holder, hinge, sales When not in use, the lip normally hangs down
perpendicular to the deck of the dock leveler; when in
Counsel: [*1] For Nordock Inc, Plaintiff: Jeffrey S use, it comes up to be generally parallel with the deck.
Sokol, LEAD ATTORNEY, Sokol Law Office, (ECF No. 164 at 23.)
Milwaukee, WI; Gregory W Lyons, O'Neil Cannon
Hollman DeJong & Laing SC, Milwaukee, WI. Nordock filed this action alleging that Systems, Inc. was
selling products that infringed the 'D754 Patent. On
For Systems Inc, doing business as PoweRamp, doing
March 26, 2013, the jury returned a verdict in favor of
business as DLM Inc, doing business as McGuire,
Nordock. (ECF No. 172.) Concluding that Systems had
Defendant: Philip P Mann, LEAD ATTORNEY, Mann
no profit on the sales of its infringing dock levelers, the
Law Group, Seattle, WA; David A Affeldt, Affeldt Law
jury awarded Nordock $46,825 as a reasonable royalty.
Offices, West Allis, WI; John Whitaker, Whitaker Law
(ECF No. 172 at 3.)
Group, Seattle, WA.
Both sides appealed. The Court of Appeals for the
Judges: WILLIAM E. DUFFIN, United States Magistrate
Federal Circuit concluded that there was no evidence to
Judge.
support the jury's conclusion that Systems did not have
any profit on the sales of its infringing dock levelers,
Opinion by: WILLIAM E. DUFFIN
Nordock, Inc. v. Sys., Inc., 803 F.3d 1344, 1356 (Fed.
Cir. 2015), and remanded the matter for a new trial on
Opinion damages. Id. The Federal Circuit stated that at that new
trial damages under 35 U.S.C. § 289 must be based on
the profit from the sale of the entire dock leveler and not
just the profit attributable to the lip and hinge plate.

Page 2 of 8
Nordock, 803 F.3d at 1355. this court to decide how the article of manufacture
should be determined. The issue comes before the
The United States Supreme Court granted Systems's court on the parties' cross motions for partial summary
request for review, summarily reversed, and remanded judgment.
the case to the Federal Circuit in [*3] light of its recent
decision in Samsung Elecs. Co. v. Apple Inc., 137 S. Ct.
429, 196 L.Ed.2d 363 (2016). Sys., Inc. v. Nordock, Inc., II. Summary Judgment Standard
137 S. Ct. 589, 196 L.Ed.2d 471 (2016).
"The court shall grant summary judgment if the movant
In Samsung Apple alleged that Samsung infringed its shows that there is no genuine dispute as to any
design patents for mobile phones. The design patents material fact and the movant is entitled to judgment as a
covered "a rectangular front face with rounded edges matter of law." Fed. R. Civ. P. 56(a). "Factual disputes
and a grid of colorful icons on a black screen." Id. at are 'material' only when they 'might affect the outcome
431. A jury found that several Samsung smartphones of the suit under the governing law'" and "'genuine' only
infringed Apple's design patents and awarded Apple 'if the evidence is such that a reasonable jury could [*5]
nearly $400 million in damages--the entire profit return a verdict for the [nonmovant].'" Oest v. Ill. Dep't of
Samsung made from its sales of the infringing Corr., 240 F.3d 605, 610 (7th Cir. 2001) (quoting
smartphones. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106
S. Ct. 2505, 91 L. Ed. 2d 202 (1986)). "The burden on
On appeal Samsung argued "that the profits awarded
the moving party may be discharged by demonstrating
should have been limited to the infringing 'article of
'that there is an absence of evidence to support the
manufacture'" (for example, the case of the Samsung
nonmoving party's case.'" Id. (quoting Celotex Corp. v.
smartphone) and not the entire smartphone. Apple Inc.
Catrett, 477 U.S. 317, 325, 106 S. Ct. 2548, 91 L. Ed.
v. Samsung Elecs.Co., 786 F.3d 983, 1002 (2015). The
2d 265 (1986)). "The controlling question is whether a
Federal Circuit rejected that argument, reasoning that
reasonable trier of fact could find in favor of the non-
limiting the damages award in this manner was not
moving party on the evidence submitted in support of
appropriate because the "innards of Samsung's
and [in] opposition to the motion for summary
smartphones were not sold separately from [**1013]
judgment." White v. City of Chi., 829 F.3d 837, 841 (7th
their shells as distinct articles of manufacture to ordinary
Cir. 2016).
purchasers." Id.
In support of its motion for summary judgment Nordock
The Supreme Court disagreed with the Federal Circuit's submitted 75 proposed findings of fact (ECF No. 258-1)
conclusion that the article of manufacture must always supported by voluminous documentation (ECF Nos.
be the product sold to consumers. It concluded that the 258-3 - 261-15; 268-1 - 268-9; 266-1 - 266-3). Systems
term "article of manufacture" as used in § 289 requested "that it be relieved from responding to each of
"encompasses both a product sold to a consumer and a Nordock's proposed statements of fact at this time and
component of [*4] that product." Samsung, 137 S. Ct. that, if the Court believes Nordock's statements are
at 434. However, the Supreme Court did not articulate material or otherwise potentially dispositive, it be given a
how a court is to identify the "article of manufacture." meaningful opportunity to depose these witnesses
before responding specifically and individually to each of
Following the Supreme Court's decision remanding these statements under Local Rule 56(b)(2)(B)." (ECF
Nordock to the Federal Circuit, Systems, 137 S. Ct. 589, No. 269 at 11.) Given the posture of this case and the
196 L. Ed. 2d 471, the Federal Circuit in a brief per context of the present dispute, where the foremost issue
curiam opinion remanded the case to this court for a is determining the test that should apply for identifying
new trial on damages. Nordock, Inc. v. Sys., Inc., 681 F. the article of manufacture, the court [*6] grants this
App'x 965 (Fed. Cir. 2017). The Federal Circuit stated, unusual request. Many of Nordock's proposed findings
"The trial court will also have the opportunity to consider of fact are not material. Others are not properly
the parties' arguments with respect to the relevant proposed findings of fact but rather represent legal
'article of manufacture' in the first instance." Id. at 966. conclusions. And others are not properly supported by
appropriate citations. Of those material proposed
Following the death of the prior presiding judge, the
findings of fact that are properly presented, the court
case was randomly assigned to this court. All parties
does not find that any is reasonably subject to dispute.
consented to this court's jurisdiction. Thus, it is now for
Therefore, as referenced below, the court will consider

Page 3 of 8
certain of the relevant proposed findings of fact for Henry Hanger & Display Fixture Corp. of Am. v. Sel-O-
purposes of this motion. Rak Corp., 270 F.2d 635, 643 (5th Cir. 1959); Rocket
Jewelry Box, Inc. v. Quality Int'l Packaging, Ltd., 250 F.
Supp. 2d 333, 341 (S.D.N.Y. 2003) vacated in part on
III. Analysis other grounds, 90 F. App'x 543 (Fed. Cir. 2004)
(unpublished); Bergstrom v. Sears, Roebuck & Co., 496
F. Supp. 476, 497 (D. Minn. 1980).
a. Burden
Although § 289 does not explicitly impose any burden
Systems argues that, in the absence of clarification from on the defendant, this shift in the burden [*8] of
the Supreme Court or the Federal Circuit as to which production is consistent with the disgorgement of profits
party bears the burden of proof on what constitutes the in other contexts. See SEC v. First City Fin. Corp., 281
article of manufacture, "the ordinary rule that a plaintiff U.S. App. D.C. 410, 890 F.2d 1215, 1232 (1989); SEC
bears the initial burden of proof on all issues, including v. Teo, 746 F.3d 90, 112 (3d Cir. 2014) ("When the SEC
the issue of damages, should not be disturbed." (ECF comes forward with a reasonable approximation of
No. 262 at 9.) Nordock argues that it should be tainted profits, the burden of production then shifts to
presumed that the article of manufacture is the product the defendant to produce evidence showing that all or
that is sold, and the burden should be placed on the some part of the sum in question should not be subject
alleged infringer to prove that the article of manufacture to disgorgement."). Similar burden shifting is
is something less than the entire product. (ECF No. 258 countenanced with respect to lost profits under § 284.
at 18.) See Apple, 2017 U.S. Dist. LEXIS 177199, at *95
(discussing Micro Chem., Inc. v. Lextron, Inc., 318 F.3d
The parties refer to the "burden of proof," [*7] but that 1119, 1122 (Fed. Cir. 2003)).
term can encompass both the burden of persuasion and
the burden of production. Cf. Director v. Greenwich Moreover, this shift in the burden of production is
Collieries, 512 U.S. 267, 272, [**1014] 114 S. Ct. appropriate because, as the United States noted when
2251, 129 L. Ed. 2d 221 (1994). For the sake of clarity, endorsing this approach as amicus curiae in Samsung:
the court will refer to these concepts separately.
The defendant, as the manufacturer or seller of the
The plaintiff normally bears the burden of persuasion on accused product, has superior knowledge of the
all issues, including damages. See Schaffer v. Weast, identity of the product's components, as well as of
546 U.S. 49, 56, 126 S. Ct. 528, 163 L. Ed. 2d 387 some of the factors relevant to the "article"
(2005); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d determination, including the physical relationship
1301, 1324 (Fed. Cir. 2009); Smithkline Diagnostics, between the design and the product; the manner in
Inc. v. Helena Labs. Corp., 926 F.2d 1161, 1164 (Fed. which the product is manufactured; and the extent
Cir. 1991). The identification of the article of to which the product reflects the innovations of
manufacture is part and parcel to damages under § 289. parties other than the plaintiff. See Alaska Dep't of
Thus, the court concludes that the plaintiff bears the Envtl. Conservation v. EPA, 540 U.S. 461, 494
burden of persuasion with respect to identifying the n.17, 124 S. Ct. 983, 157 L. Ed. 2d 967 (2004)
article of manufacture and proving the defendant's total (placement of burden of production may turn on
profit from that article of manufacture. Apple, 2017 U.S. which party has "peculiar means of knowledge" of
Dist. LEXIS 177199, at *90. the facts in question) (citation omitted); accord
Medtronic, Inc. v. Mirowski Family Ventures, LLC,
However, once the plaintiff meets its initial burden of 134 S. Ct. 843, 851, 187 L. Ed. 2d 703 (2014).
production with respect to the article of manufacture and
the defendant's total profit on that article, if the Samsung Electronics Co., Ltd. v. Apple Inc., Brief for the
defendant contends that the article of manufacture is United States as Amicus Curiae Supporting Neither
something else, the defendant has the burden to Party, 2016 WL 3194218, 30-31, 2016 U.S. S. Ct. Briefs
produce evidence as to this alternative article of LEXIS 2322, 50-51 (hereafter, Amicus).
manufacture. The defendant also has the burden to
produce evidence as to any deductions it believes are In sum, [*9] the court finds that the approach taken by
appropriate from the total profit identified by the plaintiff. the district court on remand in Samsung is correct.
Apple, 2017 U.S. Dist. LEXIS 177199, at *96-97 (citing

Page 4 of 8
The plaintiff bears the burden of persuasion in overall product; whether the design patent referred to
proving the relevant article of manufacture and in other patents [*11] for the overall product; whether the
proving the amount of defendant's total profit under design patent is a continuation of a utility patent
§ 289. The plaintiff also bears an initial burden of claiming the entire overall product; whether a designer
production on both of these issues. However, once would need to consider the overall product to apply the
the plaintiff satisfies its initial burden of production, design element; whether the infringer was aware of the
the burden of production shifts to the defendant to design patent before it began selling the infringing
come forward with evidence to support any product; whether it is possible to accurately identify the
alternative article of manufacture and to prove any infringer's profits from the overall product; and whether it
deductible expenses. is possible to accurately identify the infringer's profits
from the portion of the overall product to which the
Apple, 2017 U.S. Dist. LEXIS 177199, at *98-99. design element applied. (ECF No. 258 at 26-30.)
Nordock's position rests in part on a misreading of §

b. Method for Identifying the Article of Manufacture 289. Section 289 states:
Whoever during the term of a patent for a design,
In Samsung the United States as amicus curiae without license of the owner, (1) applies the
proposed a four factor test for purposes [**1015] of patented design, or any colorable imitation thereof,
determining the article of manufacture: (1) the scope of to any article of manufacture for the purpose of
the design claimed in the patent, including the drawing sale, or (2) sells or exposes for sale any article of
and written description; (2) the relative prominence of manufacture to which such design or colorable
the design within the product as a whole; (3) whether imitation has been applied shall be liable to the
the design is conceptually distinct from the product as a owner to the extent of his total profit, but not less
whole; and (4) the physical relationship between the than $250, recoverable in any United States district
patented design and the rest of the product. Amicus at court having jurisdiction of the parties.
27-29; 2016 U.S. S. Ct. Briefs LEXIS 2322 at 46-48.
Systems argues that the court should apply this test. 35 U.S.C. § 289. Nordock contends that the phrase "for
(ECF No. 262 at 6.) the purpose of [*12] sale" describes the "article of
manufacture," suggesting that the article of manufacture
Nordock contends that the "totality of the circumstances" is whatever is sold. (ECF No. 258 at 16.) Aside from the
test crafted by the United [*10] States is ineffective fact that this is essentially the conclusion rejected by the
when applied to products that, unlike mobile phones, do Supreme Court in Samsung, the phrase "for the purpose
not perform a broad range of functions. (ECF No. 258 at of sale" does not modify "article of manufacture" but
21.) It argues that the analysis should begin with a rather modifies the entire phrase, "applies the patented
presumption that the article of manufacture is the entire design...to any article of manufacture[.]" Thus, it
product sold by the infringer; a totality of the describes what a person must do to violate § 289. A
circumstances test should be applied only if certain person who, without license, "applies the patented
threshold questions indicate that it is appropriate. (ECF design ... to any article of manufacture" but does not do
No. 258 at 20-25.) so "for the purpose of sale" does not violate § 289.
If a totality of the circumstances test is appropriate, Nor does § 289's reference to the infringer's "total profit"
Nordock proposes considering a far broader list of suggest that the article of manufacture must be the
factors: whether the design patent identified the finished entire product as sold to a consumer. (Cf. ECF No. 258
product to which it applied; whether the design element at 16.) The only reasonable reading of § 289 is that
was sold as part of a larger, complete product; whether "total profit" refers to all of the profit from the sale of the
the design is seen together with other components article of manufacture, irrespective of whether the article
when offered for sale; whether the infringer prominently of manufacture is the entire product or only a
displayed the design element in its sales materials; component of it. If only a component is the article of
whether the portion to which the design element applied manufacture, profit from that component is not
was necessary to perform the intended purpose of the somehow less than the "total profit" referenced in the
overall product; whether the overall product performed a statute simply because it does not [*13] also include
broad range of functions; whether the portion to which profit from other components.
the design element applied was sold separately from the

Page 5 of 8
Identifying the article of manufacture as a component reasonable [*15] royalty. See, e.g., Catalina Lighting v.
that is never sold separately from the entire product Lamps Plus, 295 F.3d 1277, 1290 (Fed. Cir. 2002);
admittedly raises certain of the practical evidentiary Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 824
problems that spurred Congress's reaction to Dobson v. n.16 (Fed. Cir. 1992); Sel-O-Rak Corp. v. Henry Hanger
Hartford Carpet Co., 114 U.S. 439, 445, 5 S. Ct. 945, 29 & Display Fixture Corp., 159 F. Supp. 769, 776 (S.D.
L. Ed. 177, 1885 Dec. Comm'r Pat. 266 (1885), and led Fla. 1958). Damages under § 284 (but not § 289) may
to the enactment of § 289. But Samsung does not then be tripled by the court. Braun Inc. v. Dynamics
represent a resurrection of Dobson and a return to the Corp. of Am., 975 F.2d 815, 824 (Fed. Cir. 1992).
apportionment scheme Congress rejected.
The court finds that the four-factor test proposed by the
[**1016] Courts have long recognized that patent United States as amicus in Samsung is appropriate,
holders may have a difficult time identifying the profits consistent with the relevant statutory law, and supported
subject to disgorgement when the design is applied to by the case law. The factors identified by Nordock are
an article of manufacture that is not independently often inconsistent with Samsung or are not helpful in
offered for sale. See Bush & Lane Piano Co. v. Becker identifying the article of manufacture. Nordock is largely
Bros., 234 F. 79, 83 (2d Cir. 1916) (discussing method arguing that the Supreme Court's holding in Samsung is
for assessing profits related to a component); see also limited to products that perform a broad range of
id. at 85 (Ward, J., dissenting) (referring to method for functions. Although smartphones were at issue in
determining profits "purely arbitrary" and concluding Samsung, and the Supreme Court acknowledged the
that, because plaintiff cannot prove the infringer's broad range of functions they perform, nothing in the
profits, plaintiff should receive only the $250 statutory Court's decision suggests that its holding was limited to
award); Young v. Grand Rapids Refrigerator Co., 268 F. such multi-functional products. This error affected many
966, 974 (6th Cir. 1920) (concluding that, despite an of the arguments Nordock offered as to the propriety of
inability to prove profits associated with the handle to its proposed factors.
which the patented design element was applied, the
patent holder was not entitled to recover all profits However, although the court rejects the factors
earned by defendant as a result of sales of refrigerators proposed by Nordock, the court does not believe that
to which the infringing handles [*14] were attached). the four factors proposed by the United States and by
Systems will always be the only factors relevant to
But the court rejects the notion that difficulties a patent determining the article of manufacture. As the Court of
holder might have in identifying profits from something the Appeals for the Second Circuit recognized when
less than the entire product, by itself, supports the confronting this [*16] issue over 100 years ago, each
conclusion that the entire product is the article of case presents its own problems and it might not be
manufacture. It is true that some of the factors that are possible to articulate factors that will apply in every
relevant in determining what is the article of instance. Bush & Lane Piano Co., 234 F. at 81. Rather,
manufacture might be the same as those that lead to each design patent must be considered in context and
difficulties in identifying the profits from a component. "considered from all viewpoints, technical, mechanical,
But if the obstacle is so great as to generally deny popular, and commercial." Id.
patent holders the relief that Congress intended in
enacting § 289, it is up to Congress to amend the law, In identifying an "article of manufacture," it would seem
just as it did in response to Dobson. Or Congress could obvious that a significant factor would be how the
conclude the scheme is unworkable and eliminate product is manufactured. The United States repeatedly
disgorgement of an infringer's profits as a remedy, as it noted the significance of this factor and perhaps
did in 1946 with respect to utility patents, see 1-23 intended it to be encompassed within its fourth factor
Chisum on Patents §§ 20.02[4], 23.05[1][d][vi] (2017). regarding the physical relationship between the portion
But these issues have been noted by courts for decades of the product to which the design applies and the whole
and Congress has not yet intervened. product. See Amicus at 29, 2016 U.S. S. Ct. Briefs
LEXIS 2322 at 48 (discussing the fourth factor and
Importantly, the holder of a design patent is not limited stating that a relevant consideration is whether "the
to § 289 for relief. Thus, evidentiary hurdles in proving design is embodied in a component that is
profit from a component do not foreclose relief. A patent manufactured separately from the rest of the product").
holder may alternatively seek relief under § 284—for In its "summary of argument" the United States explicitly
example, in the form of its lost profits or a stated that one of the considerations relevant to

Page 6 of 8
determining the article [**1017] of manufacture is "the A rod runs through the elements, allowing rotation along
manner in which the components were manufactured." an axis. (See also ECF No. 258-5 at 23, 8:14-52
Amicus at 9, 2016 U.S. S. Ct. Briefs LEXIS 2322 at 18; (description of dock leveler contained in U.S. Patent No.
see also Amicus at 31, 2016 U.S. S. Ct. Briefs LEXIS 6,834,409.)
2322 at 51 (noting that defendant should have the
burden of producing evidence as to the relevant article
of manufacture [*17] in part because it has superior
knowledge of "the manner in which the product is
manufactured"); Amicus at 32-33, 2016 U.S. S. Ct.
Briefs LEXIS 2322 at 53 (arguing remand is appropriate
in part because petitioner had not "identified record
evidence or argument concerning other factors, such as
... the manner in which the components were
manufactured").
A finished product might appear to be a unitary

structure, but if considered in light of how it was
manufactured it might be recognizable as a collection of
components. Or vice versa. Facts relating to the The 'D754 Patent clearly states that the claimed lip and
manufacturing process might be otherwise relevant in a hinge plate is "for a dock leveler." The patent partially
myriad of ways to identifying the article of manufacture. depicts the dock leveler. There is no evidence that
Therefore, the court concludes that how a product is Systems ever sold an infringing dock leveler without a
manufactured merits explicit consideration as a factor lip and hinge plate. (See ECF No. 258-1, ¶¶ 49-50.)
when attempting to determine what is the relevant Conversely, "there [is] no evidence [*19] that Systems
article of manufacture. sold a 'lip and hinge plate' separate from the leveler as a
complete unit." Nordock, 803 F.3d at 1355. A dock
leveler is generally unable to perform its intended
c. Identifying the Article of Manufacture function without a lip. (ECF No. 258-1, ¶¶ 17, 51; ECF
No. 164 at 64.) And because it is welded to the dock
Identifying the article of manufacture is generally for the leveler, repair or replacement of only the lip and hinge
jury. See Amicus at 9, 16, 25-28, 2016 U.S. S. Ct. Briefs plate would be difficult or impractical. (ECF No. 258-1, ¶
LEXIS 2322 at 18, 28-29, 43-44, 46-48. But, as with 52.)
other jury questions, summary judgment may be
appropriate if there is no genuine dispute of material fact Nonetheless, in light of the Supreme Court's
or if there is only one conclusion that a reasonable jury conclusions in Samsung, even accepting these facts as
could reach. Upon reviewing the record as a whole, true does not necessarily mean that the entire dock
paying particular attention to the parties' present leveler is the article of manufacture. Much more
submissions, the court concludes it is unable to [*18] important in light of Samsung is the fact that the
identify the article of manufacture. The question must be patented design element relates to only a portion of the
decided by the finder of fact. overall product. Depicted here is a complete dock
leveler. The lip and hinge plate constitutes only the
The 'D754 Patent claims "[t]he ornamental design of a uppermost segment.
lip and hinge plate for a dock leveler ...." Other dock
levelers may have a lip and hinge plate but use a simple [**1018]
tubular or piano hinge. (ECF Nos. 164 at 91; 230 at 25.)
The 'D754 Patent claims a lip and hinge plate that uses
what is often referred to as a lug hinge (see ECF Nos.
164 at 31; 222 at 11). According to Nordock's CEO,
combining the open lug hinge with the header plate
made Nordock's design unique. (ECF No. 230 at 60.) As
depicted in Figure 1 of the 'D754 Patent, shown below,
each lug hinge is comprised of a pair of elements, one
attached to the lip and one attached to the hinge plate.

Page 7 of 8
show the claim in a condition of use and form no part of

the claimed design." 'D754 Patent.
As to how the object is manufactured, the court has not

located in the record evidence as to Systems's
manufacturing methods. There is, however, evidence
that Nordock welds and paints each component
separately before it assembles the complete dock
leveler. (ECF No. 230 at 15; see also ECF No. 230 at
77-78 (description of Nordock's manufacturing
process).) And there is some reason to suspect that a
(ECF No. 264, ¶ 8 (depicting Systems's infringing dock Systems dock leveler is manufactured in a similar
leveler).) manner. (Cf. ECF No. 230 at 79 (Nordock CEO's
testimony that the two prior deck leveler manufacturers
Although not readily physically severable because the
he worked for used a similar manufacturing process).)
components are welded together, Nordock, 803 F.3d at
But the court finds it inappropriate at this stage to rely
1355, there is evidence in the record that the lip and
upon an assumption that Systems's manufacturing
hinge plate is conceptually distinct from the overall dock
methods are the same as Nordock's.
leveler. For example, Nordock's CEO testified that there
are three main components to a dock leveler — the Without knowing what the evidence [*22] might be, it is
lower portion, called the [*20] frame; the "deck or the difficult to speculate how this factor might impact
platform"; and the "front top section" or "the lip identifying what the article of manufacture is. Obviously,
assembly." (ECF No. 230 at 15 (trial testimony of if the lip and hinge plate is manufactured as a single unit
Nordock CEO); see also ECF No. 230 at 34 (same).) All wholly distinct from any other portion of the dock leveler,
components of the dock leveler must function together such evidence would tend to support a conclusion that
for it to perform its intended purpose. (See ECF No. 164 the lip and hinge plate is the article of manufacture. On
at 64 (testimony of Nordock CEO stating that a dock the other hand, if Systems manufactures the lip and
leveler would not work if any component were hinge plate in a process where there is no ready
removed).) But that does not mean that it is not a distinction from the other aspects of the dock leveler,
system of conceptually distinct components in much the that would tend to support a finding that the entire dock
same way the components of an automobile are distinct leveler is the article of manufacture. Or a consideration
but must work together to achieve the object's intended of Systems's manufacturing processes might support a
function. finding that neither Nordock nor Systems is correct and
that something other than the entire dock leveler or
The design element is relevant only to the lip and hinge merely the lip and hinge plate is the article of
plate; it has no relevance to any other component of the manufacture.
dock leveler. Nordock may have intended its hinge
design to give the overall dock leveler a distinct look. In light of this evidentiary gap, as well as the general
(See ECF Nos. 164 at 65, 74; 230 at 15-16, 59-60.) But notion that determining the article of manufacture is a
that does not make the entire dock leveler the article of question for the jury rather than the court, the court must
manufacture, just as the distinct design of a piano case deny both of the pending motions for summary
did not make the entire piano the article of manufacture, judgment.
Bush & Lane Piano Co. v. Becker Bros, 222 F. 902, 904
(2d Cir. 1915). IT IS THEREFORE ORDERED that the motion of
Nordock, Inc., as to the article of manufacture (ECF No.
The distinction between the lip and hinge plate and the 257), is denied.
rest of the dock leveler is evident in that the design
patent depicted only the lip [*21] and hinge plate (it IT [*23] IS FURTHER ORDERED that the motion of
depicted a fragment of the dock leveler in the form of Systems, Inc. as to the article of manufacture (ECF No.
broken lines only to show context of the lip and hinge 263), is denied.
plate, see U.S. Patent and Trademark Office, Manual of
Patent Examining Procedure, § 1503.02). The patent IT IS FURTHER ORDERED that the Clerk shall set this
expressly states that the portions depicted by broken matter for a telephonic scheduling [**1019] conference
lines "represent environmental structure in order to to discuss further scheduling in this matter.

Page 8 of 8
Dated at Milwaukee, Wisconsin this 21st day of

November, 2017.
/s/ William E. Duffin
WILLIAM E. DUFFIN
U.S. Magistrate Judge
End of Document

Neutral
As of: May 4, 2019 2:34 PM Z
Schnadig Corp. v. Collezione Europa U.S.A.

United States District Court for the Northern District of Illinois, Eastern Division
October 2, 2002, Decided ; October 4, 2002, Docketed
No. 01 C 1697
Reporter
2002 U.S. Dist. LEXIS 19083 *
issues of material fact existed whether the non-
SCHNADIG CORPORATION, Plaintiff, v. COLLEZIONE
disclosure of the two other related patents owned by
EUROPA U.S.A., Defendant.
plaintiff were material. As for infringement of the '811
Patent, the court construed this patent and compared it
Disposition: [*1] Defendant's Motion for Summary
to the accused table of defendant and found that the
Judgment of Unenforceability denied. Defendant's
accused table did not meet the ordinary observer test
Motion for Summary Judgment of Noninfringement
and thus did not infringe the '811 Patent under the
granted in part and denied in part. Defendant's Motion
doctrine of equivalents. As for the infringement of the
for Summary Judgment of Noninfringement of the '811
'839 Patent, summary judgment regarding defendant's
Patent granted. Defendant's Motion for Summary
01 table was proper as plaintiff could not prevail under
Judgment of Noninfringement of '839 Patent granted as
the doctrine of equivalents because plaintiff failed to
to 01 table and denied as to 01X table.
satisfy the ordinary observer test. However, summary
judgment as to defendant's 01X table was not proper.
Core Terms
Outcome
Patent, legs, ornamental, surface, top, stretchers, Defendant's motion for summary judgment of
furniture, curved, carvings, infringement, drawings, unenforceability was denied. Defendant's motion for
novelty, twist, rope, bottom, summary judgment, apron, summary judgment of noninfringement of the '811
feet, symbols, tables, patent application, ordinary patent was granted. Defendant's motion for summary
observer, scroll, prior art, inventor, inwardly, upwardly,
judgment of noninfringement of the '839 patent was
steps, extends, argues granted as to the 01 table and denied as to the 01X
table.
Case Summary
Procedural Posture
Plaintiff and defendant were manufacturers of table
furniture. Plaintiff alleged that defendant infringed the
'811 and '839 patents. Defendant moved for summary
judgment, claiming unenforceability and non-
infringement.
Law > Appropriateness
Overview
Defendant argued that the plaintiff engaged in
inequitable conduct as to the '811 Patent by failing to
disclose its own prior art rope twist furniture. The court
found the rope twist furniture was material information Civil Procedure > ... > Summary
required to be disclosed. However, summary judgment Judgment > Entitlement as Matter of Law > General
as to the unenforceability of the '811 Patent had to be Overview
denied because issues of material fact existed as to
whether plaintiff intended to deceive the Patent Office. Civil Procedure > ... > Summary
As to the unenforceability of the '839 Patent, genuine

Page 2 of 14
2002 U.S. Dist. LEXIS 19083, *1
Judgment > Entitlement as Matter of Law > Genuine whether the patent applicant's conduct is so culpable to
Disputes render the patent unenforceable.

Patent Law > ... > Inequitable Conduct > Effect,
Materiality & Scienter > General Overview
HN3[ ] Inequitable Conduct, Effect, Materiality &
Judgment > Supporting Materials > General
Scienter
Overview
Information is "material" if there is a substantial
likelihood that a reasonable examiner would have
Judgment > Supporting Materials > Discovery
considered the information important in deciding
Materials
whether to allow the application to issue as a patent.
The standard of materiality is not whether the particular
HN1[ ] Entitlement as Matter of Law,
examiner of the application at issue considered the
Appropriateness
information to be important; instead, it is that of a
Summary judgment is proper if the pleadings, reasonable examiner. Materiality is not limited to prior
depositions, answers to interrogatories, and admissions art but instead embraces any information that a
on file, together with affidavits, if any, show that there is reasonable examiner would be substantially likely to
no genuine issue as to any material fact. Fed. R. Civ. P. consider important in deciding whether to allow an
56(c). All the evidence and the reasonable inferences application to issue as a patent. It is incumbent on the
that may be drawn from the evidence are viewed in the applicant to disclose potential priority conflicts to the
light most favorable to the nonmovant. Summary examiner and not to unilaterally make a determination
judgment may be granted when no reasonable jury that materials are not prior art.
could return a verdict for the nonmoving part.
Patent Law > ... > Inequitable Conduct > Effect,

Patent Law > ... > Defenses > Inequitable Materiality & Scienter > General Overview
Conduct > Burdens of Proof
HN4[ ] Inequitable Conduct, Effect, Materiality &
Patent Law > ... > Inequitable Conduct > Effect, Scienter
Materiality & Scienter > General Overview
The fact that a reference individually lacks one or more
Patent Law > ... > Defenses > Inequitable elements that are present in the patent at issue is not
Conduct > Elements dispositive on the issue of materiality. Primary reference
needed in obviousness determination.
HN2[ ] Inequitable Conduct, Burdens of Proof
Failure to prosecute a patent application with candor, Patent Law > ... > Inequitable Conduct > Effect,
good faith, and honesty constitutes inequitable conduct. Materiality & Scienter > General Overview
The court undertakes a two-step analysis in determining
whether inequitable conduct occurred. First, the court HN5[ ] Inequitable Conduct, Effect, Materiality &
determines whether there has been an affirmative Scienter
misrepresentation of material fact -- a failure to disclose
material information or a submission of false material Intent is generally inferred from the circumstances and
information, coupled with an intent to deceive. The party facts surrounding the patent applicant's conduct. Direct
asserting the defense must demonstrate by clear and evidence is usually not available to demonstrate intent;
convincing evidence that the information was both instead, it is generally demonstrated by a showing of
material and that the conduct was intended to deceive. acts, the natural consequences of which are presumably
Second, the court weighs the materiality and intent to intended by the actor.
deceive in light of all the circumstances to determine

Page 3 of 14
2002 U.S. Dist. LEXIS 19083, *1
such symbols are not likely to be confused with existing

conventional symbols and if they are readily identifiable.
Patent Law > Infringement Actions > Claim 37 C.F.R. § 1.84(n).
Interpretation > Scope of Claim

HN6[ ] Claim Interpretation, Scope of Claim
Copyright Law > ... > Substantial
Similarity > Intrinsic Tests > Ordinary Observer Test
A patent infringement analysis consists of two steps. In
the first step, the meaning and scope of the patent
Patent Law > Anticipation & Novelty > Elements
claims asserted to be infringed are determined. This is
commonly referred to as claim construction. The second
step entails proving the infringement by comparing the
properly construed claims to the device accused of
infringing. Business & Corporate
Compliance > ... > Infringement Actions > Infringing
Acts > Indirect Infringement
Interpretation > General Overview Patent Law > Subject Matter > Design
HN7[ ] Infringement Actions, Claim Interpretation
The court considers three sources to ascertain the
meaning of claims: the claims, the specification, and the The second inquiry when determining whether a design
prosecution history. Extrinsic evidence, such as expert patent is infringed is a comparison of the construed
and inventor testimony, may be relied upon to interpret claim to the accused device. This comparison includes
the claims, if necessary, so long as it does not two distinct tests: (1) the "ordinary observer test" and (2)
contradict the intrinsic evidence. the "point of novelty" test. Each of these tests must be
met in order to find infringement. The "ordinary
observer" test is as follows: if, in the eye of an ordinary
observer, giving such attention as a purchaser usually
Patent Law > US Patent & Trademark Office
gives, two designs are substantially the same, if the
Proceedings > Filing Requirements > Drawings
resemblance is such as to deceive such an observer,
inducing him to purchase one supposing it to be the
other, the first one patented is infringed by the other.
Under this analysis, it is the appearance of the design
as a whole which is controlling, and all of the
HN8[ ] Filing Requirements, Drawings
ornamental features must be considered in evaluating
When construing a design patent claim, the scope of the whether the design patent is infringed. However, the
claimed design encompasses "its visual appearance as accused and the patented designs do not have to be
a whole" and in particular the visual impression it identical in order to find patent infringement. Similarities,
creates. Design patents are limited to what is shown in as well as differences in the design, are relevant in
the application drawings. Graphical drawing symbols in determining whether an ordinary observer would be
design may be used for conventional elements. The deceived. The "point of novelty" test requires proof that
elements for which such symbols must be adequately the accused design appropriates the novelty which
identified in the specification. 37 C.F.R. § 1.84(n). distinguishes the patented design from the prior art.
Known devices should be illustrated by symbols which
have universally recognized conventional meaning and
are generally accepted in the art. Other symbols may be Business & Corporate Compliance > ... > Patent
used, subject to the approval of the Patent Office, if Law > Infringement Actions > Design Patents

Page 4 of 14
2002 U.S. Dist. LEXIS 19083, *1
Copyright Law > ... > Substantial & McDevitt, Evanston, IL. Nicholas Mesiti, Brett M
Similarity > Intrinsic Tests > Ordinary Observer Test Hutton, Heslin, Rothenberg Farley & Mesiti PC, Albany,
NY.
For COLLEZIONE EUROPA U.S.A., counter-claimant:
Susan Somers Neal, Lisa Ann Iverson, Kevin J.
McDevitt, Neal & McDevitt, Evanston, IL. Nicholas
Patent Law > Infringement Actions > Doctrine of
Mesiti, Brett M Hutton, Heslin, Rothenberg Farley &
Equivalents > General Overview
Mesiti PC, Albany, NY.
Patent Law > Subject Matter > Design For SCHNADIG CORPORATION, counter-defendant:
Patents > Functionality John W. Chestnut, Steven P. Fallon, Brittany Cathleen
MacDonald Greer, Burns & Crain, Ltd., Chicago, IL.
Judges: JOHN W. DARRAH, United States District
As with other patents, the doctrine of equivalents is also Judge.
applicable to design patents, and infringement can be
found on such a theory absent literal infringement. Opinion by: JOHN W. DARRAH
Under the doctrine of equivalents, as applied to design
patents, infringement can be found for designs that are Opinion
not identical. However, such designs must be equivalent
in their ornamental, not functional, aspects. Accordingly,
the accused device must meet the Gorham ordinary
observer test of similarity or ornamental appearance MEMORANDUM [*2] OPINION AND ORDER
such that an ordinary observer would be likely to
Plaintiff, Schnadig Corporation ("Schnadig"), filed a
purchase one thinking it was the other.
complaint against Defendant, Collezione Europa
("Collezione"), alleging patent infringement of United
States Design Patent Nos. 422,811 (" '811 Patent") and
Patent Law > Infringement Actions > Infringing 424,839 (" '839 Patent"). Before the Court are two
Acts > General Overview motions: (1) Defendant's Motion for Summary Judgment
of Unenforceability and (2) Defendant's Motion for
HN11[ ] Infringement Actions, Infringing Acts Summary Judgment of Non-Infringement.
Under the ordinary observer test, whether the two

designs are substantially the same is to be determined BACKGROUND
from the viewpoint of the eyes of men generally; the
required comparison counsels against measuring the The '811 Patent was filed on June 7, 1999, issued on
similarity of designs from the viewpoint of experts. April 18, 2000, and lists Timothy O'Hare ("O'Hare") as
the only inventor and Plaintiff as the assignee. (Def.'s
56.1(a)(3) Statement A8) 1. The table design of the '811
Patent is part of Plaintiff's Regency line of furniture. (Id.,
Patent Law > Nonobviousness > Elements &
at PA9). The '811 Patent contains 1 claim and 3 drawing
Tests > General Overview
sheets. The claim is for "the ornamental design for a
table, as shown and described." The drawing sheets are
HN12[ ] Nonobviousness, Elements & Tests
attached as Figures 1-3.
Primary references are required for the defense of
obviousness, not the determination of infringement.
1 Statements of fact from Defendant's Statement of Material
Counsel: For SCHNADIG CORPORATION, plaintiff: Facts Under Local Rule 56.1 in Support of Defendant's Motion
John W. Chestnut, Steven P. Fallon, Brittany Cathleen for Summary Judgment of Unenforceability are designated by
MacDonald, Greer, Burns & Crain, Ltd., Chicago, IL. the prefix "A"; statements of fact from Defendant's Statement
For COLLEZIONE EUROPA U.S.A., defendant: Susan of Material Facts Under Local Rule 56.1 in Support of
Defendant's Motion for Summary Judgment of Non-
Somers Neal, Lisa Ann Iverson, Kevin J. McDevitt, Neal
Infringement are designated by the prefix "B".

Page 5 of 14
2002 U.S. Dist. LEXIS 19083, *2
[*3] Plaintiff is accusing Defendant's T5450 table of to the bottom of the leg;
infringing the '811 Patent. (Def.'s 56.1(a)(3) Statement # 5 an elongated ornamental part which extends
PB7). The long sides of the T5450 table curve outwardly upwardly from the juncture of the four bars at the
in the middle. (Id., at PB8). The legs of the T5450 table center of the table. (Def.'s 56.1(a)(3) Statement
have an upper scroll portion, a semicircular middle PA11).
portion and a tapered bottom portion. The width of the Later in discovery, Plaintiff revised the points of novelty
upper scroll portion is the same as the width of the of the '811 Patent to be:
semicircular portion. (Id., at PB9) The T5450 table also # 1 The smoothly curved long and short sides of the
contains an ornament under the top of the table. (Id., at table and the decorative rope twist ornamental
PB21). design along the side;
# 2 the scrolled upper ends of the table legs;
The use of a decorative ornament motif beneath the # 3 the shape and orientation of the four bars which
table is not new in the furniture field. (Def.'s 56.1(a)(3) extend inwardly from each of the legs toward the
Statement PB10). Certain prior art tables have included center of the table, each bar curved upwardly and
some kind of object which was connected to bars which then downwardly and then upwardly and meeting at
extended horizontally from table legs under the top the center of the table;
portion of the table. (Id., at PB11). Other ornaments # 4 legs which have a width which tapers inwardly
underneath the table are shown in United States Design from the top of the leg to the bottom of the
Patents Nos. 37,341; 78,510; 78,457; 214,672; 246,881; semicircular portion and then tapers outwardly to
351,077; 402,487; and 404,596. (Id., at PB12). The the bottom of the leg;
ornament under the T5450 table is positioned lower # 5 an elongated ornamental part which extends
than the ornament under the table of the '811 Patent. upwardly from the juncture of the four bars at the
(Id., at PB21). center of the table. (Id., at PA12).
During the prosecution of the '811 Patent, Plaintiff Plaintiff's Florentine and Florentine Light tables have a
submitted two Information Disclosure [*4] Statements rope twist design on the side of the tables, and certain
dated September 30, 1999 and October 22, 1999, of its Corona Collection have rope twist ornamental
disclosing an undated photograph of a table design ("the features. (Def.'s 56.1(a)(3) Statement PA13). [*6]
undated table"). (Def.'s 56.1(a)(3) Statement PB14). During the prosecution of the '811 Patent, Plaintiff did
The undated table is prior art to the '811 Patent. (Id., at not disclose to the Patent Office that Plaintiff's
PB15). The top portion of the undated table has short Florentine, Florentine Light, and certain of its Corona
sides that curve outward and long sides with an Collection have a rope twist ornamental feature. (Id., at
indentation in the middle of the sides. (Id., at PB16). The PA 14).
legs of the undated table have an upper scrolled end, a
semicircular middle portion, and bottom tapered ends. The Kreiss' Monterey Coffee table is prior art to the '811
(Id., at B17). The curvature of the undated table is Patent. (Def.'s 56.1(a)(3) Statement PB18). The top
closer to the design of the '811 Patent table than to the portion of the Kreiss' Monterey Coffee Table has short
T5450 table. (Id., at PB22). sides that curve outward and long sides with an
indentation in the middle of the sides. (Id., at PB19).
Plaintiff initially alleged that the points of novelty of the
'811 Patent were: The '839 Patent was filed on June 7, 1999, issued on
# 1 The smoothly curved long and short side of the May 16, 2000, and lists O'Hare as the only inventor and
table; Plaintiff as the assignee. (Def.'s 56.1(a)(3) Statement
# 2 the scrolled upper ends of the table legs; PA19). The table design of the '839 Patent is part of
# 3 the shape and orientation of the four bars which Plaintiff's Empire line of furniture, which is considered
extend; inwardly from each of the legs toward the part of Plaintiff's Timeless Elegance Collection of
center of the table, each bar curving upwardly and furniture. (Id., at PPA 20-21). The '839 Patent contains 1
then downwardly and then upwardly and meeting at claim and 3 drawing sheets. The single claim is for "the
the center of the table; ornamental design for a table, as shown and described".
The drawing sheets are attached as Figures 4-6.
# 4 legs which have a width which tapers inwardly
from the top of the leg to the bottom of the Plaintiff is accusing Defendant's T5993-01X ("the 01X
semicircular portion and then tapers outwardly [*5] table"), T5993-01, T5594-01, and Benchcraft Model No.

Page 6 of 14
2002 U.S. Dist. LEXIS 19083, *6
1148590 ("Benchcraft Model") tables of infringing [*7] upper rectangular base which supports the top of
the '839 Patent. (Def.'s 56.1(a)(3) Statement PB28). the table;
Defendant's T5993-01, T5594, and Benchcraft Model
refer to the same table (collectively referred to as the # 2 [*9] the reversely curved legs, the scroll on the
"01 table"). (Id., at PB29). The feet of the 01 and 01X bottom of each leg, the scroll design at the top of
tables have convex side surfaces. (Id., at PB45). each leg, and the ornamental design on the outside
surface of each leg;
The base portion of the '839 Patent table contains a # 3 the shape of the four-sided rectangular lower
series of surface lines. (Def.'s 56.1(a)(3) Statement base which supports the four legs, the base
PB31). The lines on the surface of the table shown in including four inwardly curved arms;
the '839 Patent are intended to illustrate the appearance # 4 the ornamental design on the outside surface of
of the surface of the table. (Id., at PB32). O'Hare, the each of the arms of the lower base;
inventor of the '839 Patent, contends that the lines on # 5 the steps on the outside and inside of each of
the surface of the base portion of the table design in the the curved arms of the lower base;
'839 Patent look like wood grain. (Id., at PB33). The # 6 the generally circular feet which support the
draftsman who prepared the drawings for the '839 lower base and the convex side surfaces with the
Patent, Mr. Donald Shutters ("Shutters"), also contends generally vertical grooves on the feet. (Id., at
that the lines on the surface of the base portion of the PA23).
table design in the '839 Patent indicates wood grain.
(Id., at PB34). Donald Belgrad ("Belgrad") was the individual at
Schnadig responsible for patent-related matters. (Def.'s
Section 608.02 of the Manual of Patent Examining 56.1(a)(3) Statement P A30). Belgrad was aware of the
Procedure ("MPEP"), under the heading "Drawing applications for the '839 Patent as well as United States
Symbols", lists symbols which "should be used to Patent Nos. 425,725 (" '725 Patent"); 423,255 (" '255
indicate various materials where the material is an Patent"); 425,733 (" '733 Patent") that existed on the
important feature of the invention." (Def.'s 56.1(a)(3) Empire line of furniture. (Id., at P A31). An
Statement [*8] PB35). The MPEP symbol for wood, advertisement dated October 11, 1999, by Plaintiff in
when shown on a surface or in a cross sections, is Furniture Today during the co-pendency of the
shown in Figure 7. (Id., at PB36). Neither of these applications for the '725, '255, and '733 Patents shows
symbols listed in the MPEP are used in the drawings of that Plaintiff was aware of the co-pendency [*10] of
the '839 Patent. (Id., at PB37). these patent applications. (Id., at P A32). The
applications for the '725, '255, and '733 Patents were
Plaintiff initially alleged that the points of novelty of the not disclosed to the Patent Office during the prosecution
'839 Patent were: of the '839 Patent. (Id., at P A33). The patent examiner
# 1 The ornamental design on the sides of the that reviewed the '839 Patent also reviewed the '255
upper rectangular base which supports the top of and '733 Patent applications during the same time
the table; frame. (Plaint.'s Response to Def.'s 56.1(a)(3)
# 2 the reversely curved legs, the scroll on the Statement P A33).
bottom of each leg, the scroll design at the top of
each leg, and the ornamental design on the outside The '725 Patent was filed on April 14, 1999, issued on
surface of each leg; August 1, 2000, and lists Chun Suh Lee ("Lee") as the
# 3 the shape of the four-sided rectangular lower only inventor and Plaintiff as the assignee. (Def.'s
base which supports the four legs, the base 56.1(a)(3) Statement P A34). The serial number for the
including four inwardly curved arms; '725 Patent is 29/103,395. This number falls in between
# 4 the ornamental design on the outside surface of the serial numbers of the applications listed in the
each of the arms of the lower base; "Related Applications" section of the original
# 5 the generally circular feet which support the specification for the '839 Patent. (Id., at P A35).
lower base and the convex side surfaces with the
generally vertical grooves of the feet. (Def.'s The '725 Patent application was filed and prosecuted by
56.1(a)(3) Statement PA22). the same law firm and patent attorneys as the '839
Later in discovery, Plaintiff revised the points of novelty Patent. (Def.'s 56.1(a)(3) Statement P A37). The sofa
of the '839 Patent as: design of the '725 Patent is considered by Plaintiff as
# 1 The ornamental design on the sides of the part of its Empire line of furniture. (Id., at P A38). The

Page 7 of 14
2002 U.S. Dist. LEXIS 19083, *10
features of the '725 Patent design and the '839 Patent During the prosecution of the '733 Patent, the Patent
design were intended to match or coordinate. (Id., Office rejected the '733 Patent claim based on
at [*11] P A39; O'Hare Dep. Tr. 111). The carving along obviousness-type double patenting of the '255 Patent
the front bottom portion, the front legs and the front feet claim in an Office Action dated December 16, 1999. In
of the sofa design in the '725 Patent are similar to the response to this rejection, Plaintiff filed a terminal
carvings, table legs and table feet of the table design. disclaimer on January 5, 2000, during the prosecution of
(Def.'s 56.1(a)(3) Statement P A40; O'Hare Dep. Tr. the '733 Patent to overcome this rejection. (Def.'s
110-111). However, because of the size of the sofa leg 56.1(a)(3) Statement P A63). The '733 Patent
of the '725 Patent, the design and the carvings of the application was rejected on grounds of obviousness-
sofa leg are different. (Lee's Dep. Tr. 15-17). Lee used a type double patenting because, while the conflicting
detailed drawing of the table of the '839 Patent designed claims were not identical, they were "not patently distinct
by O'Hare when he designed the sofa of the '725 from each other because the difference of the square
Patent. (Def.'s 56.1(a)(3) Statement P A42). The '725 versus circular table is insufficient as a basis for
Patent application was not disclosed to the Patent Office patentability." (Plaint.'s Ex. C, p. 11496).
during the prosecution of the '839 Patent. (Id., at P A43).
The '733 Patent application, the obviousness-type
The '255 Patent was filed on June 7, 1999, issued on double patenting rejection and terminal disclaimer filed
April 25, 2000, and lists O'Hare as the only inventor and in response to this rejection were never disclosed to the
Plaintiff as the assignee. (Def.'s 56.1(a)(3) Statement P Patent Office by the inventor, Plaintiff or their patent
A48). The '255 Patent was filed and prosecuted by the attorney during the prosecution of the '839 Patent.
same law firm and patent attorneys as the '725 and '839 (Def.'s 56.1(a)(3) Statement P A64). However, the '733
Patents. (Id., at P A49). The table design of the '255 Patent application was [*14] examined simultaneously
Patent is considered by Plaintiff as part of its Empire line with the '839 Patent application by the same examiner.
of furniture. (Id., at P A50). The double patenting rejection of the '733 Patent
application was made the same day that the '839 Patent
The '255 Patent and the '839 Patent share some application was allowed. (Plaint.'s Response to Def.'s
identical [*12] features and points of novelty." (Def.'s 56.1(a)(3) Statement P A64).
56.1(a)(3) P A51). The carvings, legs, and feet of the
table design in the '255 Patent are identical to the
carvings, legs, and feet of the '839 Patent. (Id., at P ANALYSIS
A52). The application for the '255 Patent and the
issuance of the '255 Patent were not disclosed to the HN1[ ] Summary judgment is proper if "the pleadings,
Patent Office during the prosecution of the '839 Patent. depositions, answers to interrogatories, and admissions
(Id., at P A53). However, the '255 Patent application on file, together with affidavits, if any, show that there is
was examined simultaneously with the '839 application no genuine issue as to any material fact." Fed. R. Civ.
by the same examiner. Both applications were allowed P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S.
by the same examiner on the same day. (Plaint.'s 317, 322-23, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986).
Response to Def.'s 56.1(a)(3) Statement A53). All the evidence and the reasonable inferences that may
be drawn from the evidence are viewed in the light most
The '733 Patent was filed on June 7, 1999, issued on favorable to the nonmovant. Miller v. American Family
May 30, 2000, and lists O'Hare as the only inventor and Mutual Ins. Co., 203 F.3d 997, 1003 (7th Cir. 2000).
Plaintiff as the assignee. (Def.'s 56.1(a)(3) Statement P Summary judgment may be granted when no
A58). The '733 Patent was filed and prosecuted by the "reasonable jury could return a verdict for the
same law firm and patent attorneys as the '839 Patent. nonmoving part". Anderson v. Liberty Lobby, Inc., 477
(Id., at P A59). The table design of the '733 Patent is U.S. 242, 248, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986).
considered by Plaintiff as part of its Empire line of
furniture. (Id., at P A60). Some features and points of I. Motion for Summary Judgment of Unenforceability
novelty of the '733 Patent are identical to those of the
'839 Patent. (Id., at P A61). Some of the carvings, the HN2[ ] Failure to prosecute a patent application with
legs, and the feet of [*13] the '733 Patent are identical candor, good [*15] faith, and honesty constitutes
to some of the carvings, the legs, and the feet of the inequitable conduct. See Molins PLC v. Textron, Inc.,
'839 Patent. (Id., at P A62). 48 F.3d 1172, 1178 (Fed. Cir. 1995) (Molins). The court
undertakes a two-step analysis in determining whether

Page 8 of 14
2002 U.S. Dist. LEXIS 19083, *15
inequitable conduct occurred. GFI, Inc. v. Franklin the '811 Patent. Furthermore, the '811 Patent does not
Corp., 265 F.3d 1268, 1273 (Fed. Cir. 2001) (GFI). First, show that the table is made of only metal-like material.
the court determines whether there has been an Therefore, contrary to Plaintiff's assertion, the fact that
affirmative misrepresentation of material fact--a failure the rope twist furniture is made of wood does not alter
to disclose material information or a submission of false the potential importance of the existing furniture to the
material information, coupled with an intent to deceive. patent examiner.
See Semiconductor Energy Lab. Co. v. Samsung Elect.
Co., 204 F.3d 1368, 1373 (Fed. Cir. 2000) (Samsung). Plaintiff also argues that the rope twist design is not
The party asserting the defense must demonstrate by material because Defendant has not identified a
clear and convincing evidence that the information was "primary reference". Contrary to Plaintiff's argument,
both material and that the conduct was intended to HN4[ ] the fact that a reference individually lacks one
deceive. See Samsung, 204 F.3d at 1373. Second, the or more elements that are present in the patent at issue
court weighs the materiality and intent to deceive in light is not dispositive on the issue of materiality. See GFI,
of all the circumstances to determine whether the patent Inc. v. Franklin Corp., 88 F. Supp. 2d 619, 631 (N.D.
applicant's conduct is so culpable to render the patent Miss. 2000), [*18] aff'd GFI, 265 F.3d at 1268; cf.
unenforceable. See GFI, 265 F.3d at 1273. Durling v. Spectrum Furniture Co., 101 F.3d 100, 103
(Fed. Cir. 1996) (primary reference needed in
The '811 Patent obviousness determination).
Defendant argues that the [*16] Plaintiff engaged in Based on the above, the rope twist furniture is material
inequitable conduct as to the '811 Patent by failing to because there is a substantial likelihood that a
disclose its own Florentine and Florentine Light tables reasonable examiner would have considered the
and its Corona Collection prior art furniture (collectively, information important in deciding whether to allow the
the "rope twist furniture") because each has a rope twist application to issue as a patent. See Molins, 48 F.3d at
design. 1179.
HN3[ ] Information is "material" if "there is a HN5[ ] Intent is generally inferred from the
substantial likelihood that a reasonable examiner would circumstances and facts surrounding the patent
have considered the information important in deciding applicant's conduct. Samsung, 204 F.3d at 1375. Direct
whether to allow the application to issue as a patent. evidence is usually not available to demonstrate intent;
Molins, 48 F.3d at 1179. The standard of materiality is instead, it is generally demonstrated "by a showing of
not whether the particular examiner of the application at acts, the natural consequences of which are presumably
issue considered the information to be important; intended by the actor." Molins, 48 F.3d at 1180.
instead, "it is that of a 'reasonable examiner'". Molins,
48 F.3d at 1179. "Materiality is not limited to prior art but Here, it is undisputed that some furniture, including
instead embraces any information that a reasonable tables, that were part of Plaintiff's furniture line
examiner would be substantially likely to consider contained a rope twist design. Belgrad testified at his
important in deciding whether to allow an application to deposition that he knew that Plaintiff had used a rope
issue as a patent." GFI, Inc. v. Franklin Corp., 265 F.3d twist design in furniture, including tables, prior to the
1268, 1274 (Fed. Cir. 2001) (GFI). It is incumbent on the submission of the '811 Patent. However, he did
applicant to disclose potential priority conflicts to the not [*19] cite to any previous furniture because the rope
examiner and not to unilaterally make a determination twist was on the apron and he believed the '811 Patent
that [*17] materials are not prior art. GFI, 265 F.3d at table was "unique". (Belgrad's Dep. p. 38-40). Belgrad
1274. also avers that he did not think of the Florentine and
Florentine Light tables when the '811 Patent was
Plaintiff argues that the rope twist is not material pending. (Belgrad's Dec. p. 14).
because the previous furniture that contained a rope
twist is all of a totally different style than the table of the Based on the above, issues of material fact exist as to
'811 Patent. Plaintiff's argument is without merit whether the Plaintiff intended to deceive the Patent
because it is undisputed that the previous rope twist Office. Accordingly, summary judgment as to the
furniture and the '811 Patent table contained a rope unenforceability of the '811 Patent must be denied.
twist design on the base of the tables. Plaintiff also
identifies the rope twist design as a point of interest of The '839 Patent

Page 9 of 14
2002 U.S. Dist. LEXIS 19083, *19
As to unenforceability of the '839 Patent, Defendant examiner about the '255 and '733 Patents because she
argues that the Plaintiff engaged in inequitable conduct already knew about them.
by failing to disclose other similar co-pending patent
applications. In support of its argument that the examiner must have
already known about the '255 and '733 Patent, Plaintiff
It is undisputed that at the time of the '839 Patent, relies upon the fact that all three patents were filed on
Plaintiff had other patent applications pending, including the same day, all three were reviewed by the same
the '725, '255, and '733 Patents, and that Plaintiff was examiner, the first Office Action for each patent
aware that these other patents were pending. contained the same date, the examiner conducted her
searches on the same date, and the examiner allowed
The '725 Patent was for a sofa that was part of the the '255 and '839 Patents and rejected [*22] the '733
same line of furniture as the '839 Patent, and it was Patent on the same day. These facts fairly support an
designed to match or coordinate with the '839 Patent inference that the examiner was aware of the three
table. The carvings along the front bottom portion, the patents. However, the prosecution history
front legs and the front feet of the sofa are similar to the
documentation also demonstrates that the examiner
table [*20] legs and table feet of the table design. While conducted work on different days for the different
the '725 Patent was filed prior to the '839 Patent, the patents. For example, the examiner dated the section
'725 Patent was designed after the '839 Patent as the titled "examiner", "06/25/99" for the '839 Patent. The
'839 Patent was used to design the '725 Patent. examiner did not date the same section for the '255
Patent and dated the '733 Patent, "6/22/99". Thus, the
The '725 Patent does not constitute prior art because it
examiner did not necessarily work on the three patents
is undisputed that it was invented after the '839 Patent.
at the same time, and it cannot be concluded that she
See 35 U.S.C. § 102(e); In re Costello, 717 F.2d 1346,
was aware of each patent and appreciated their
1348-49 (Fed Cir. 1983). Contrary to Defendant's
relationship to each other. See Armour & Co. v. Swift &
argument, the disclosure of the '725 Patent would not
Co., 466 F.2d 767, 779 (Fed. Cir. 1972) ("Examiner, no
have been material to the prosecution of the '839 Patent
matter how diligent and well informed he may be, [it
because it could not have been used to reject the '839
cannot be] assumed that he retains details in every
Patent on the grounds of unpatenability or improper
pending file in his mind when he is reviewing a particular
inventorship as it is not prior art. Accordingly, Plaintiff
application.").
need not have disclosed the '725 Patent.
The '839 Patent and the '255 and '733 Patents
The '255 and '733 Patents are for tables that are part of
contained identical features and points of novelty. Thus,
the same line of furniture as the '839 Patent. The '255
it would appear that the patents were material to the
and '733 Patents share some identical features and
prosecution of the '839 Patent. However, the above
points of novelty as the '839 Patent. Some of the
facts pertaining to the information before the
carvings, legs, and feet of the table design in the '255
examiner [*23] demonstrate that an issue of genuine
and '733 Patents are identical to the carvings, legs, and
fact exists whether the '255 and '733 Patents were
feet of the '839 Patent. The application and the issuance
material. Based on Plaintiff's argument and supporting
of the '255 Patent were not disclosed to the [*21]
facts, an inference can be made that the '255 and '733
Patent Office. The '733 Patent was rejected by the
are not material because they were reviewed by the
Patent Office based on obviousness-type double
same examiner at the same time as the '839 Patent and
patenting of the '255 Patent claim. The latter filed
they did not affect the approval of the '839 Patent. See
terminal disclaimer filed by the Plaintiff to overcome the
Pacific Furniture Manuf. Co. v. Preview Furniture Corp.,
objection was also subsequently rejected by the Patent
626 F. Supp. 667, 674-75 (M.D. N.C. 1985) aff'd 800
Office. The '733 Patent application, the obviousness-
F.2d 1111, 1114 (Fed. Cir. 1986) (fact that same
type double patenting rejection and terminal disclaimer
examiner reviewed both patents and both patents were
filed in response to the rejection were never disclosed to
issued on the same day places doubt of the importance
the Patent Office.
which could have reasonably been attributed to any
In opposition to Defendant's motion, Plaintiff argues that further disclosure). Accordingly, genuine issues of
it did not need to inform the examiner of these patents material fact exist whether the non-disclosure of the '255
because the same examiner examined the '255 and and '733 Patents were material. Thus, summary
'733 Patents simultaneously with the '839 Patent. judgment of the unenforceability of the '839 Patent must
Therefore, there was no obligation to inform the be denied.

Page 10 of 14
2002 U.S. Dist. LEXIS 19083, *23
The '811 Patent is a rectangular table with a glass top

II. Motion for Summary Judgment of Noninfringment supported by an apron consisting of four curved sides
which meet at squared corners. The long sides of the
HN6[ ] A patent infringement analysis consists of two apron curve inwardly at the midpoint, making the table
steps. In the first step, the meaning and scope of the more narrow at this point. The short sides curve
patent claims asserted to be infringed are determined. outwardly at about midpoint. A rope twist design is
This is commonly referred to as claim construction. positioned in the middle of [*26] the apron. The rope
[*24] The second step entails proving the infringement twist design follows the serpentine contours of the apron
by comparing the properly construed claims to the and extends around the squared corners. The apron is
device accused of infringing. supported by four legs which have scrolled upper ends,
C-shaped middle portions, and hoof-like bottom ends.
(). Four stretchers extend inwardly from the middle of the
C-shaped portions of the legs and meet below the
center of the table. Each stretcher curves upwardly and
then downwardly where the stretchers meet. An
elongated finial ornament with vertical grooves extends
HN7[ ] The court considers three sources to ascertain
upwardly from the juncture of the four stretchers at the
the meaning of claims: the claims, the specification, and
center of the table.
the prosecution history. .
Extrinsic evidence, such as expert and inventor The '839 Patent
testimony, may be relied upon to interpret the claims, if
necessary, so long as it does not contradict the intrinsic The '839 Patent includes four drawings, which show
evidence. ; various perspectives of a rectangular table. All of the
drawings show a solid top containing surface lines,
. which the parties agree depicts a marble top. The top is
supported by a solid apron, which also contains surface
HN8[ ] When construing a design patent claim, the line drawings. The top of the apron is carved and is
scope of the claimed design encompasses "its visual supported by four legs, which also contain surface line
appearance as a whole" and in particular "the visual drawings. The legs of the base have a scroll design on
impression it creates". the top and bottom of each leg and a carved leaf design
on the outer surface of each leg. The four legs sit upon
(). Design patents are "limited to what is shown stretchers, which contain surface line drawings.
in the application drawings". The [*27] stretchers also contain the same carving as
. the apron in the middle of the stretcher. Four reeded
bun feet support the stretchers.
Graphical drawing [*25] symbols in design may be
used for conventional elements. The elements for which The main dispute between the parties as to the proper
such symbols must be adequately identified in the construction of the '839 Patent is whether the drawings
specification. . Known devices depict a base made of wood or marble. Plaintiff argues
should be illustrated by symbols which have universally that the surface line drawings depict wood. In support of
recognized conventional meaning and are generally its argument, Plaintiff provides testimony from the
accepted in the art. Other symbols may be used, subject inventor that the surface line drawings on the top of the
to the approval of the Patent Office, if such symbols are table were drawn to represent marble, and the rest of
not likely to be confused with existing conventional the table was drawn to represent wood. In addition, the
symbols and if they are readily identifiable. inventor has used similar surface line drawings in other
. The Manual of Patent Examing Procedure patents that have not been objected to by the Patent
("MPEP") identifies two possible symbols for wood. Office.
Figure 7 attached hereto.
Defendant argues that the surface line drawings of the
The '811 Patent base represent marble or a marble-like finish. Defendant
first points out that the inventor did not use either of the
The parties do not dispute the construction of the '811 symbols for wood found in the MPEP. Plaintiff conceded
Patent. The '811 Patent is construed from the three at the hearing that the inventor did not use
figures included in the patent.
Page 11 of 14
2002 U.S. Dist. LEXIS 19083, *27
either of the symbols for wood found in the MPEP. attention as a purchaser usually gives, two designs
Plaintiff also failed to identify the line surface drawings are substantially the same, if the resemblance is
as a symbol for wood within the patent. Nothing in the such as to deceive such an observer, inducing him
patent or the prosecution history indicate that the to purchase one supposing it to be the other, the
line [*28] surface drawings represent wood. Lastly, the first one patented is infringed by the other.
Defendant presents expert testimony that the line .
surface drawings do not show wood and that the line
surface drawings of the '839 Patent are not universally [*30]
recognized and generally accepted in the art as showing
wood. Under this analysis, it is the appearance of the design
as a whole which is controlling, and all of the
As to the material of the base of the '839 Patent, the ornamental features must be considered in evaluating
drawings of the base contain surface line drawings that whether the design patent is infringed.
are almost identical to the line surface drawings of the . However, the accused and the
top of the table, which both parties do not dispute shows patented designs do not have to be identical in order to
marble. Plaintiff failed to use either of the symbols find patent infringement.
identified in the MPEP and has failed to present credible .
evidence that the line surface drawings that were used Similarities, as well as differences in the design, are
are universally recognized and generally accepted in the relevant in determining whether an ordinary observer
art as showing wood. The only testimony provided is would be deceived.
from the inventor, who has an obvious interest in the
outcome of the existing suit. Defendant has produced .
independent expert testimony that the line surface
drawings are not universally recognized and generally The "point of novelty" test requires proof that the
accepted in the art as showing wood. accused design appropriates the novelty which
distinguishes the patented design from the prior art.
Based on the drawings within the patent and the above .
evidence, the correct construction of the '839 Patent
includes a marble or marble-like finish base. The parties HN10[ ] As with other patents, the doctrine of
also dispute the [*29] number of steps on the inside of equivalents is also applicable to design patents, and
the stretchers. Plaintiff argues that the '839 Patent infringement can be found on such a theory absent
contains two steps; Defendant argues that it contains literal infringement.
five steps. The drawings included in the '839 Patent (). Under
indicate that the inside of the stretchers contain five the doctrine of equivalents, [*31] as applied to design
steps, and the claim must be so construed. patents, infringement can be found for designs that are
not identical. However, "such designs must be
equivalent in their ornamental, not functional, aspects."
. Accordingly, "the accused device
must meet the [ordinary observer] test of
similarity or ornamental appearance such that an
HN9[ ] The second inquiry when determining whether ordinary observer would be likely to purchase one
a design patent is infringed is a comparison of the thinking it was the other." .
construed claim to the accused device.
. This comparison includes two distinct The '811 Patent
tests: (1) the "ordinary observer test" and (2) the "point
of novelty" test. Each of these tests must be met in Plaintiff accuses Defendant's T5450 table as infringing
order to find infringement. its '811 Patent table. Both parties provide "expert"
. testimony supporting their respective positions as to
whether the ordinary observer test is satisfied. However,
The "ordinary observer" test was set forth in HN11[ ] under the ordinary observer test, whether the
: two designs are substantially the same is to be
determined "from the viewpoint of the eyes of men
if, in the eye of an ordinary observer, giving such generally"; the required comparison "counsels against
Page 12 of 14
2002 U.S. Dist. LEXIS 19083, *31
measuring the similarity of designs from the viewpoint of not elongated and is of a different shape than the '811
experts…." See Conagra, 282 F.3d at 1381-82. Patent table. If Plaintiff desired to [*34] have the patent
include any ornament, it could have shown the
Defendant's T5450 table has several features that are ornament in broken lines to exclude the specific
similar to the '811 Patent table. Like the '811 Patent ornament from the claimed design as set forth in the
table, the T5450 table has a glass top supported MPEP 1503.02.
by [*32] a base consisting of four curved sides which
meet at squared corners. The short sides of the apron In addition, the fourth point of novelty is not met. The
curve outwardly at about midpoint. A rope twist design is '811 Patent does not depict table legs having a width
positioned in the middle of the apron. The rope twist which tapers inwardly from the top of the leg to the
design follows the serpentine contours of the apron and bottom of the semicircular portion and then tapers
extends around the squared corners. The top of the outwardly to the bottom of the leg. Instead, the width of
base is supported by four legs which have scrolled the scrolled upper end and the semicircular portion
upper ends, C-shaped middle portions, and hoof-like appears the same.
bottom ends. Four stretchers extend inwardly from the
middle of the C-shaped portions of the legs and meet at As to the alleged remaining points of novelty, the rope
below the center of the table. Each stretcher curves twist design, the scrolled upper ends of the legs, and the
upwardly and then downwardly where the stretchers shape and orientation of the four bars of the stretcher
meet. A finial ornament extends upwardly from the extending inwardly from each of the legs toward the
juncture of the four stretchers at the center of the table. center of the table are found in prior art and are,
therefore, not points of novelty. 2
Differences in the T5450 table include that the long
sides of the apron curve outwardly at the midpoint, [*35] Lastly, as stated above, the accused table does
making the table more wide--the long sides of the apron not meet the ordinary observer test. Accordingly,
of the '811 Patent table curve inwardly at the midpoint, Defendant's T5450 table does not infringe the '811
making the table more narrow at this point. While the Patent under the doctrine of equivalents. See Lee, 838
accused table's stretchers curve upwardly and then F.2d at 1190.
downwardly where the stretchers meet, the curvature is
less pronounced than the '811 Patent table. Lastly, the The '839 Patent
finial ornament which [*33] extends upward from the
Plaintiff accuses Defendant's 01 and 01X tables as
juncture of the four stretchers at the center of the table
infringing its '839 Patent.
is of a different design and is smaller than the finial
ornament of the '811 Patent table. Being of a different Like the '839 Patent table, the 01 and 01X tables have a
design and smaller, the distance between the finial solid top of marble. The top of the apron is carved and is
ornament and the underside of the glass top is supported by four legs. The legs of the base have a
appreciably greater in the T5450 table than the '811 scroll design on the top and bottom of each leg. The
Patent table. four legs sit upon stretchers, which contain the same
carving as the apron in the middle of the stretcher. Four
The above-cited differences in the T5450 table are
reeded bun feet support the stretchers. In addition, the
clearly observable to the ordinary purchaser and make
01X table contains a carved leaf design on the outer
the appearance of the T5450 table design as a whole
surface of each leg.
distinguishable from the '811 Patent table. As such, an
ordinary observer would not be deceived to purchase
the T5450 table supposing it to be the '811 Patent table.
2 Plaintiff
again argues that a the prior art is not material to the
Assuming argumendo, that Plaintiff had satisfied the
novelty test because Defendant has not identified a "primary
ordinary observer test, Defendant's T5450 table does
reference". However, Defendant submitted the prior art to
not satisfy the point of novelty test. Specifically,
demonstrate that the alleged points of novelty are not actually
Plaintiff's fifth point of novelty is "an elongated points of novelty for disposition of whether infringement took
ornamental part which extends upwardly from the place. HN12[ ] Primary references are required for the
juncture of the four bars at the center of the table." defense of obviousness, not the determination of infringement.
Defendant's T5450, while containing an ornament that See Durling v. Spectrum Furniture Co., 101 F.3d 100, 103
extends upward from the juncture of the stretchers, is (Fed. Cir. 1996) (primary reference needed in obviousness
determination).

Page 13 of 14
2002 U.S. Dist. LEXIS 19083, *35
Differences in the 01 and 01X tables include that the does not have a carved leaf design on the top of each
finish on the apron and stretchers is painted. The inside leg. Instead, it contains a flower-like design.
of the stretchers contain two steps while the '839 table Furthermore, the bottom of each leg contains a carved
contains five steps. The legs of the 01 table also differ leaf design. The '839 Patent table does not contain a
from the '839 Patent table because they do not contain leaf carving [*38] at the bottom of the leg. The leaf
a leaf design on the outer surface of each leg; they carving at the bottom of the 01 table is also of a different
contain a carved leaf design at the bottom of each leg, design than the leaf carving found at the top of the '839
and they [*36] contain a flower design on the sides of Patent table. In addition, the 01 table contains a circular
each leg. flower-like carved design on the sides of each leg; the
'839 Patent table does not contain similar carvings.
As to the 01X table, the primary difference between it
and the '839 Patent table is the base finish and the The above cited differences are clearly observable to
number of steps on the inside of the stretchers. While the ordinary purchaser and make the appearance of the
the finish is different, the photographs of the 01X table 01 table design as a whole distinguishable from the '839
indicate that the base appears to have a marble-like Patent table. As such, an ordinary observer would not
finish. In addition, the distinction in the number of steps be deceived to purchase the 01 table supposing it to be
of the base is not readily observable. Lastly, the legs of the '839 Patent table.
the 01X table are not reversely curved; instead, they are
perpendicular. However, the reverse curve of the legs of Furthermore, based on the above finding that Plaintiff
the '839 Patent is very slight. has not satisfied the ordinary observer test, Plaintiff also
cannot prevail under the doctrine of equivalents. See
As explained above, the differences between the Lee, 838 F.2d at 1190. Accordingly, summary judgment
accused device and the '839 Patent table are slight of noninfringement of the '839 Patent by the 01 table is
based on the materials provided in conjunction with the proper.
motion for summary judgment. Because the differences
between the two tables is slight, the Court is unable to
determine whether an ordinary observer would be CONCLUSION
deceived in such a manner to induce him to purchase
the 01X table believing that it is the '839 Patent table. For the foregoing reasons, Defendant's Motion for
Summary Judgment of Unenforceability is denied.
As to the points of novelty test for the 01X table, the 01X Defendant's Motion for Summary Judgment of
table does not contain the second point of novelty of the Noninfringement is granted in part and denied in part.
'839 Patent. The second point of novelty requires a Defendant's Motion for Summary Judgment of
reversely curved [*37] leg; it is undisputed that the 01X Noninfringement [*39] of the '811 Patent is granted.
table does not contain a reversely curved leg. Defendant's Motion for Summary Judgment of
Accordingly, the second part of the literal infringement Noninfringement of the '839 Patent is granted as to the
test is not satisfied, and Defendant's 01X table does not 01 table and denied as to the 01X table.
literally infringe the '839 Patent.
Dated: October 2, 2002
However, the Court having found that a material issue of
fact exists regarding the ordinary observer test, the JOHN W. DARRAH
Plaintiff, therefore, may be able to establish infringement
United States District Judge
under the doctrine of equivalents. See Lee, 838 F.2d at
1190. Accordingly, summary judgment of FIGURE 1
noninfringement is not appropriate as to the 01X table
and the '839 Patent.
As to Defendant's 01 table, several differences exist

between its ornamental design and the '839 Patent. The
01 table has a painted base, and the base does not
appear to have a marble or marble-like finish. The 01
table has only two steps on the inside of the stretchers.
Importantly, the carvings of the legs of the 01 table are
distinctively different than the '839 Patent. The 01 table

Page 14 of 14
2002 U.S. Dist. LEXIS 19083, *39
FIGURE 6
FIGURE 2
FIGURE 7
FIGURE 3 MANUAL OF PATENT EXAMINING PROCEDURE
608.02
The following symbols should be used to indicate

various materials where the material is an important
feature of the invention. The use of conventional
features is very helpful in making prior art searches.
FIGURE 4
End of Document
FIGURE 5

Neutral
As of: May 4, 2019 3:22 PM Z
Spencer v. Taco Bell Corp.

United States District Court for the Middle District of Florida, Tampa Division
October 2, 2013, Decided; October 2, 2013, Filed
CASE NO.: 8:12-cv-387-T-23TGW
Reporter
2013 U.S. Dist. LEXIS 142619 *; 2013 WL 5499609
plaintiffs' second amended claim as moot.
WAYNE SPENCER and MACH 5 LEASING, INC.,
Plaintiffs, v. TACO BELL CORP., et al., Defendants.
Prior History: Spencer v. Taco Bell Corp., 2012 U.S.
Dist. LEXIS 189432 (M.D. Fla., Oct. 22, 2012)
Core Terms
Patent Law > Statutory Bars > On Sale
canister, patent, drawings, lid, pedals, specification,
Bar > General Overview
filing date, pads, written description, chamber, prior art,
infringement, application's, bottom, ordinary observer,
HN1[ ] Statutory Bars, On Sale Bar
subject matter, plaintiffs', patentee, depict, pedestal,
stool, coin, base plate, features, locking, squared, top,
If described in a printed publication in this or a foreign
patent application, public use, similarities
country or in public use or on sale in this country, more
than one year prior to the date of the application for
Case Summary patent in the United States, a patent is invalid under the
on-sale bar. 35 U.S.C.S. § 102(b). If a patent
application's filing date otherwise invalidates the patent
Overview under § 102(b), the filing date of a parent application
becomes conditionally available.
HOLDINGS: [1]-Design patent was not entitled to use
the filing date of parent application to save it from the
on-sale bar in 35 U.S.C.S. § 102(b), as the six
differences between the drawings of the parent Patent Law > Infringement Actions > Summary
application and the design patent were sufficient to Judgment > General Overview
defeat plaintiffs’ attempt to claim the benefit of the
parent application’s filing date; [2]-Even if the design Patent Law > ... > Specifications > Description
patent was valid, plaintiffs did not prove that the Requirement > Standards & Tests
accused device infringed the patent, as no reasonable
jury could find that the seven distinctions identified by Patent Law > Invention Date & Priority > General
defendants would pass unnoticed by an ordinary Overview
observer; [3]-The differences between the accused
device and plaintiffs' design would become even more HN2[ ] Infringement Actions, Summary Judgment
apparent to an ordinary observer who considered the
Entitlement to a parent application's filing date presents
prior art; [4]-As no reasonable jury could find for
a question of law. To use a parent's effective filing date,
plaintiffs, infringement was resolvable and subject to
a patent's parent application must include a description
determination on summary judgment.
of the subject matter of the patent, and that written
Outcome description must comply with 35 U.S.C.S. § 112.
The court granted defendants' motion for summary Compliance with the written description requirement is a
judgment and denied defendants' motion to dismiss question of fact but is amenable to summary judgment

Page 2 of 13
2013 U.S. Dist. LEXIS 142619, *142619
in cases where no reasonable fact finder could return a application.

verdict for the non-moving party. The written description
element of a valid patent requires that the disclosure of
the application relied upon reasonably convey to those
skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.
Patent Law > ... > Specifications > Description
Requirement > Standards & Tests
Law > Infringement Actions > Design Patents HN5[ ] Infringement Actions, Design Patents
Patent Law > Invention Date & Priority > General A design patent contains no written description; the
Overview drawings are the claims to the patented subject matter.
In design applications, an amendment to the drawing is
Patent Law > ... > Specifications > Description an amendment to the claim.
Requirement > Standards & Tests

For a design patent, the sole disclosure method is a
drawing. Thus, the written description requirement for a
Patent Law > Invention Date & Priority > General
design patent is applied against a drawing. Similarly, if a
Overview
design patentee relies on a parent application to
achieve an earlier effective filing date, the written Patent Law > ... > Specifications > Description
description requirement is applied by looking to the Requirement > Standards & Tests
parent's drawings (and the text describing the
drawings), even if the parent application is for a utility HN6[ ] Infringement Actions, Design Patents
patent. As the Federal Circuit has explained a design
can be described only by illustrations showing what it The text of a parent application may describe, but
looks like (though some added description in words may neither expand nor contradict, the drawings in a design
be useful to explain the illustrations). As a practical patent application. A design can be described only by
matter, meeting the remaining requirements of illustrations showing what it looks like (although some
is, in the case of an ornamental design, added description in words may be useful to explain the
simply a question of whether the earlier application illustrations).
contains illustrations, whatever form they may take,
depicting the ornamental design illustrated in the later
application and claimed therein by the prescribed formal
claim. Patent Law > Infringement Actions > Burdens of
Proof

Business & Corporate Compliance > ... > Patent Overview
Patent Law > US Patent & Trademark Office Invalidity > Presumption of Validity
Proceedings > Continuation Applications > Priority
HN7[ ] Infringement Actions, Burdens of Proof
Ordinarily, a patent is presumed valid. But in the
When an issue of priority arises under absence of an interference or rejection which would
in the context of a design patent prosecution, one require an examiner to make a determination of priority,
looks to the drawings of the earlier application for the burden shifts to the patentee to show the patent is
disclosure of the subject matter claimed in the later entitled to the earlier date.
Page 3 of 13
2013 U.S. Dist. LEXIS 142619, *142619
genuine issue of material fact or when, drawing all

factual inferences in favor of the nonmoving party, no
Patent Law > ... > Specifications > Description reasonable jury could return a verdict for the nonmoving
Requirement > Standards & Tests party.
HN8[ ] Description Requirement, Standards &

Tests
The written description requirement ensures that an
inventor possessed the claimed subject matter, not that
the inventor had not excluded the subject matter. Thus,
the lack of a conflicting limitation is not sufficient to
To prove infringement in a design patent case, a
satisfy the written description requirement.
patentee must show that an ordinary observer, familiar
with the prior art, would be deceived into thinking that
the accused design was the same as the patented
Business & Corporate Compliance > ... > Patent design.

Overview
Not just any change in a design defeats a priority claim
When the differences between the claimed and accused
as a matter of law.
designs are viewed in light of the prior art, the attention
of the hypothetical ordinary observer may be drawn to
those aspects of the claimed design that differ from the
Patent Law > Infringement Actions > Burdens of prior art. If the claimed design is close to the prior art
Proof designs, small differences between the accused design
and the claimed design assume more importance to the
HN10[ ] Infringement Actions, Burdens of Proof eye of the hypothetical ordinary observer.
Patent infringement, a question of fact, requires proof by

a preponderance of evidence.
Civil Procedure > ... > Summary HN14[ ] Infringement Actions, Design Patents
Disputes Where there are many examples of similar prior art
designs, differences between the claimed and accused
Civil Procedure > ... > Summary designs that might not be noticeable in the abstract can
Judgment > Entitlement as Matter of Law > Legal become significant to the hypothetical ordinary observer
Entitlement who is conversant with the prior art.

Law > Materiality of Facts Patent Law > Infringement Actions > Summary
Judgment > General Overview
HN11[ ] Entitlement as Matter of Law, Genuine
Disputes HN15[ ] Infringement Actions, Summary Judgment
Summary judgment is commanded when there is no If no reasonable jury could find for the plaintiffs,
Page 4 of 13
2013 U.S. Dist. LEXIS 142619, *142619
infringement is resolvable and subject to determination achieve a controlled transfer of the coin to a lower-level
on summary judgment. pedal and, thence, to the winning of a prize.
Counsel: [*1] For Wayne Spencer, Mach 5 Leasing, The prosecution history of the '474 patent involves
Inc., Plaintiffs: Edward P. Dutkiewicz, LEAD several patents and applications:
ATTORNEY, Law Office of Edward P. Dutkiewicz, Dade • The '474 patent issued on August 16, 2011, from
City, FL. U.S. Design Patent Application 29/373,021.
• Spencer filed the '021 application on February 18,
For Taco Bell, Corp., a California corporation, Taco Bell 2011, as a continuation-in-part of U.S. Patent
Foundation, Inc., a California corporation, Defendants: Application 12/316,419.
Jeffrey K. Joyner, Jeffrey F Yee, LEAD ATTORNEYS, • Spencer filed the '419 application on December
PRO HAC VICE, Greenberg Traurig, LLP, Los Angeles,
12, 2008, as a continuation-in-part of U.S. Patent
CA; Adam B. Landa, Greenberg Traurig, LLP, Orlando,
Application 10/746,414.
FL.
• Spencer filed the '414 application on December
For Jay M. Cohen, Mediator: Jay M. Cohen, LEAD 24, 2003.
ATTORNEY,Jay M. Cohen, PA, Winter Park, FL.
Before prosecuting the '414 application, Spencer filed a
Judges: STEVEN D. MERRYDAY, UNITED STATES patent application for a similar coin game on
DISTRICT JUDGE. [*3] October 10, 2000. A patent, U.S. Patent 6,367,801,
issued for the game on April 9, 2002.
Opinion by: STEVEN D. MERRYDAY
Starting in 2006, Spencer placed on sale and in public
use a coin game under the name "Mach 5" or "Mach 5
Opinion Canister." The Mach 5 is the canister patented in the
'474 patent, issued on August 16, 2011.
The '414 application and the '474 patent are somewhat

AMENDED ORDER1 similar, but no drawing from the '414 application
appears in the '474 patent. The '414 application
Wayne Spencer and Mach 5 Leasing, Inc., sue (Doc. 7)
drawings are below 3:
Taco Bell Corporation (TBC) and Taco Bell Foundation,
Inc. (TBF), and allege infringement of U.S. Patent No.
D643,474, a patent issued on August 16, 2011. TBC
and TBF now move (Doc. 69) for summary judgment.
BACKGROUND
The '474 patent, entitled "Coin Drop Game," covers the

design features of a one-player game. To play the
game, a user drops a coin into the top of a chamber
shaped like a hexagonal prism. The chamber sits on a
pedestal shaped like a hexagonal prism. Controlled by a
central, vertical shaft, [*2] ten pie-shaped "pedals" 2 are
inside the chamber. The design permits the user, as the
coin falls, to turn the shaft in an attempt to catch the
coin on a higher-level pedal and manipulate the pedal to
1 This amended order changes the instructions to the clerk.

2 The parties occasionally label the "pedals" as "paddles"; the
patents and applications label the "pedals" as "coin-receiving
surfaces." Although the parties might have chosen "pedals" 3 The '414 application includes two figures that illustrate a sign
mistakenly, actually meaning floral "petals," which the "pedals" designed for placement on the canister and that are not
resemble, to avoid further confusion, this order uses "pedals." displayed in this order.

Page 5 of 13
2013 U.S. Dist. LEXIS 142619, *3
The '474-patent drawings are below:

Page 6 of 13
2013 U.S. Dist. LEXIS 142619, *3
from the top of each canister show a difference in the

layout and the width of the pedals. The drawing in the
'474 patent shows that the pedals are wide enough, and
properly arranged, to occupy, if viewed from above,
nearly 360 degrees. However, the '414 application
shows pedals that are thinner and arranged differently.
The result is (1) that the pedals of the '414-application
canister, if viewed from above, occupy substantially less
than 360 degrees 4 and (2) that the top and middle
pedal-levels of the '414-application canister have
parallel axes, but the corresponding axes in the '474
patent are skewed. 5 [*5] Fifth, the '414 application
depicts a "base support plate" at the bottom of the
chamber with "six outwardly extending fingers." The
'474-patent drawings depict the base plate poorly, but
the drawings include enough detail for a viewer to see
that the base plate has no fingers. Sixth, the pedestal of
the '414-application canister has squared edges, but the
pedestal in the '474 patent has rounded edges.
On February 23, 2012, the plaintiffs sued TBC and TBF

for infringement of the '474 patent and for enhanced
damages for willful infringement. The plaintiffs argue
that TBC and TBF have infringed the '474 patent
through the use of a similar canister. TBC and TBF
argue (1) that the '474 patent [*6] is invalid under the
on-sale bar, (2) that the '474 patent is invalid because
the canister's ornamental design is dictated by function,
(3) that the accused canister does not infringe the '474
patent, and (4) that the plaintiffs cannot prove willful
infringement.
The canisters depicted in the '414 application and the

'474 patent have six distinguishing features. First, the lid DISCUSSION
drawn in the '414 application has a flat surface, but the
lid drawn in the '474 patent has six raised triangles.
Second, the lid in the '414 application has a single slot 1. On-Sale Bar
on the side for use with a padlock. The '474-patent lid
has no slot on the side; instead, the lid has three lock HN1[ ] If "described in a printed publication in this or a
wells. Third, the bottom of the '474-patent canister, foreign country or in public use or on sale in this
which is drawn separately, has a circular pad placed country, more than one year prior to the date of the
near each of the six vertices of the pedestal. The application for patent in the United States," a patent is
[*4] '414 application includes no drawing of the bottom
of the canister. The '414 application includes a
perpendicular view from the side, and two pads on the 4 In other words, a viewer looking directly down on the '414-
bottom of the canister are visible in the drawing. But
application canister can easily see the bottom of the canister
each pad has an unidentifiable shape and is not through the five layers of pedals. However, a viewer looking
necessarily placed at the vertices of the pedestal. Also, directly down on the '474-patent canister has the viewer's
if the bottom of the '414-application canister had six vision almost entirely obstructed by the pedals.
pads arranged as the pads are arranged on the '474-
5 The axes of the '414-application canister and the '474-patent
patent canister, the perpendicular side view would show
canister are dissimilar in other specifics, but a comparison of
four pads. But the '414 application's perpendicular side-
the top- and middle-level axes of each canister shows the
view drawing shows only two pads. Fourth, the views most representative and visible difference.

Page 7 of 13
2013 U.S. Dist. LEXIS 142619, *6
invalid under the on-sale bar. 35 U.S.C. § 102(b). If a in the context of a design patent prosecution, one looks
patent application's filing date otherwise invalidates the to the drawings of the earlier application for disclosure
patent under Section 102(b), the filing date of a parent of the subject matter claimed in the later application.);
application becomes conditionally available. SunTiger, Daniels, 144 F.3d at 1456 ("Thus[,] when an issue of
Inc. v. Scientific Research Funding Grp., 189 F.3d 1327, priority arises under § 120, one looks to the drawings of
1334 (Fed. Cir. 1999). the earlier application for disclosure of the subject
matter claimed in the later [design patent] application.").
HN2[ ] Entitlement to a parent application's filing date
presents a question of law. In re Owens, 710 F.3d 1362, The plaintiffs argue that, in addition to consideration of
1366 (Fed. Cir. 2013). To use a parent's effective filing the drawings of the parent application, the written
date, a patent's parent application must include a description test includes consideration [*9] of the claims
description of the subject matter of the patent, and that of a parent utility application. For support, the plaintiffs
written description must comply with Section 112. In re identify an uncited portion of a report and
Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998). recommendation for E-Z Bowz, LLC v. Professional
"Compliance [*7] with the written description Product Research Company, 2003 U.S. Dist. LEXIS
requirement is a question of fact but is amenable to 15364, 2003 WL 22068473 (S.D.N.Y. Sept. 5, 2003),
summary judgment in cases where no reasonable fact report and recommendation adopted, 2005 U.S. Dist.
finder could return a verdict for the non-moving party." LEXIS 3453, 2005 WL 535065 (S.D.N.Y. Mar. 8, 2005).
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, However, to the extent E-Z Bowz purports to authorize
1307 (Fed. Cir. 2008). The written description element consideration of the claims of a parent utility patent to
of a valid patent requires that "the disclosure of the expand a later design patent, E-Z Bowz stands athwart
application relied upon reasonably convey[] to those binding Federal Circuit authority. See Owens, 710 F.3d
skilled in the art that the inventor had possession of the at 1366; Daniels, 144 F.3d at 1456; Racing Strollers,
claimed subject matter as of the filing date." Owens, 710 Inc., 878 F.2d at 1420.
F.3d at 1366 (quoting Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). Arguing that application of the written description test
includes consideration of the specification of the parent
HN3[ ] For a design patent, the sole disclosure method utility application, the plaintiffs quote Utter v. Hiraga,
is a drawing. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, which says, "A specification may, within the meaning of
1564 (Fed. Cir. 1991). Thus, the written description 35 U.S.C. § 112 ¶ 1, contain a written description of a
requirement for a design patent is applied against a broadly claimed invention without describing all species
drawing. Daniels, 144 F.3d at 1456. Similarly, if a design that claim encompasses." 845 F.2d 993, 998 (Fed. Cir.
patentee relies on a parent application to achieve an 1988). However, the plaintiffs apply the precedent out of
earlier effective filing date, the written description context; Utter involved a utility patent, not a design
requirement is applied by looking to the parent's patent. Because of the difference between a design
drawings (and the text describing the drawings), even if patent and a utility patent, [*10] the principle is
the parent application is for a utility patent. As the inapplicable in this design-patent context. 6 In re Mann,
Federal Circuit, explains:
[A] [*8] design . . . can be described only by 6 Although not cited by the plaintiffs, some support for
illustrations showing what it looks like (though some
considering the text of a parent application exists in In re
added description in words may be useful to explain
Salmon, 705 F.2d 1579 (Fed. Cir. 1983), which decided
the illustrations). As a practical matter, meeting the whether a parent application for a square-seated stool
remaining requirements of § 112 is, in the case of sufficiently described a design for a circle-seated stool in a
an ornamental design, simply a question of whether subsequent application. The Federal Circuit said
the earlier application contains illustrations,
whatever form they may take, depicting the The parent application disclosed [*11] only a stool with a
ornamental design illustrated in the later application square seat, not one with a round seat. The parent
and claimed therein by the prescribed formal claim. application claimed "an original design for a Stool as
shown." The stool as shown in the drawings was depicted
in three-dimensional sketches that showed a square seat.
Racing Strollers, Inc. v. TRI Indus., Inc., 878 F.2d 1418,
Similarly, the specification in the application described
1420 (Fed. Cir. 1989); accord Owens, 710 F.3d at 1366
figure 1 in the drawings as "a general perspective view of
(HN4[ ] "[W]hen an issue of priority arises under § 120
the front of a stool embodying our new design."

Page 8 of 13
2013 U.S. Dist. LEXIS 142619, *11
861 F.2d 1581, 1582 (Fed. Cir. 1988) ("Design patents The differences between the drawings of the '414
have almost no scope. The claim at bar, as in all design application and the '474 patent are fatal. HN7[ ]
cases, is limited to what is shown in the application Ordinarily, a patent is presumed valid. PowerOasis, Inc.
drawings."); see also Hupp v. Siroflex of Am., Inc., 122 v. T-Mobile USA, Inc., 522 F.3d 1299, 1303 (Fed. Cir.
F.3d 1456, 1464 (Fed. Cir. 1997) (HN5[ ] "A design 2008). But "[i]n the absence of an interference [*13] or
patent contains no written description; the drawings are rejection which would require the [examiner] to make a
the claims to the patented subject matter." (emphasis determination of priority," the burden shifts to the
added)); Racing Strollers, Inc. v. TRI Indus., Inc., 878 patentee to show the patent is entitled to the earlier
F.2d 1418, 1420 (Fed. Cir. 1989) (explaining that the date. PowerOasis, Inc., 522 F.3d at 1305.
"best mode" requirement, which no longer exists, could
not apply to design patents because a design has only Not knowing of the Mach 5 during prosecution, the
one mode); Ex Parte Hanback, 231 USPQ 739, 741 patent examiner had no occasion to consider whether
(Bd. Pat. App. & Int'f 1986) ("[I]n design applications, an the '474 patent could benefit from the earlier filing date
amendment to the drawing is an amendment to the of the '414 application. Thus, the plaintiffs have the
claim."). burden of demonstrating the right to the filing date of the
'414 application. The drawings of the '414 application
TBC and TBF argue, and the plaintiffs have not and the drawings of the '474 patent depict a different
disputed, that Spencer placed the design of the '474 canister, and the plaintiffs have not argued otherwise.
patent into public use, as the Mach 5, more than a year Instead, the plaintiffs argue that the claims and the
before Spencer filed the '021 application. 7 In response, specification of the '414 application "teach" each
the plaintiffs argue that the '474 patent is entitled to the difference (or are, at least, not in conflict with any
filing date of the '414 application, a parent application of difference). Each of the plaintiffs' arguments fails.
the '474 patent. TBC and TBF agree that the '414-
application filing date would save the '474 patent from In addressing the six pads on the base of the '474-
the on-sale bar, but TBC and TBF argue (1) that the patent canister, the plaintiffs note that the '414
plaintiffs have the burden of proving the '474 patent's application specifies that "pads are secured to the lower
entitlement to the earlier filing date and (2) that the '474 face of the lower base as shown on the bottom of Figure
patent is not entitled to the filing date of the '414 2." (Doc. 74-1 at 11) The plaintiffs' argument is
application. misguided; the written description requirement looks to
the drawings and [*14] consults the specification only to
describe the drawing. The specification in the '414
application cannot save the drawings because the
drawings are inconsistent with the six-pad arrangement
Nothing in the text of the application or the attached found in the '474 patent 8: the perpendicular side-view
drawings even intimated that the square shape of the drawing in the '414 application shows only two pads, but
seat was not an integral element of "our new design" for
a similar view of the '474-patent canister would show
a stool. Nothing in the application indicated that the
four pads. 9 Even if the specification could add to, or
design for which a patent was sought was anything less
than the stool "as shown." Neither the text of the detract from, the drawings, the language in the '414
application nor the drawings even suggested that the application - which says that pads are secured to the
design consisted of only the tubular portion of the stool base "as shown" in the drawings - contributes nothing to
and not the seat. the drawings.
Salmon, 705 F.2d at 1581 (emphasis added). In light of the

last sentence of the first quoted paragraph and other Federal
Circuit precedent, the better interpretation of Salmon is that 8 Also, the shape of the pads on the bottom of the '414-
HN6[ ] the text of the parent application may describe, but application canister is not drawn, but the '474 patent depicts
neither expand nor contradict, the drawings in the application. circular pads.
See, e.g., Racing Strollers, Inc. v. TRI Indus., Inc., 878 F.2d 9 Figures 1 and 2 of the '474 patent are perpendicular side
1418, 1420 (Fed. Cir. 1989) [*12] ("[A] design . . . can be
views of the canister. The drawings have five pads, not four.
described only by illustrations showing what it looks like
Given the layout of the pads in Figure 6, which is more
(though some added description in words may be useful to
detailed, the artist most likely carelessly drew too many pads
explain the illustrations).").:
in Figures 1 and 2. However, even if the five-pad drawings are
7 Spencer put the Mach 5 into public use as early as 2006, and correct, the perpendicular side-view drawings of the '474
he filed the '021 application in 2011. patent show more than two pads.

Page 9 of 13
2013 U.S. Dist. LEXIS 142619, *14
The plaintiffs acknowledge that the lid of the '474 patent different locking mechanism - three locking wells that
has six raised triangles that [*15] are absent from the extend into the lid.
drawings of the '414-application lid. To reconcile the two
lids, the plaintiffs look to the claims and the specification The plaintiffs have not disputed the differences between
of the '414 application. Unable to find language that the pedals of the '414 application and the pedals of the
describes (or even allows for) a different lid, the plaintiffs '474 patent, i.e., the differently sized and differently
argue that the '414 application has "no limitations as to aligned pedals. Instead, the plaintiffs say that TBC and
the smoothness or raised areas on the upper surface of TBF are mistaken in "rel[ying] entirely on the drawings
the lid." (Doc. 74 at 7) Again, the plaintiffs' argument of the '474 patent application." (Doc. 74 at 8) "Nowhere
fails for looking to the text of the application for more in the specification [or] the claims," the plaintiffs say, "is
than a description of the drawings. But even accepting there a limitation of a specific degree between the
the plaintiffs' approach, the text of the application cannot [pedals], or a specific alignment required." (Doc. 74 at 8)
save the drawings. After searching through the Again, the plaintiffs' argument fails for relying on the text
specification and claims, the plaintiffs find no text of the '414 application for more than a description of the
discussing six raised triangles. Instead, the plaintiffs drawings. But even considering the specification and
argue that the top surface of the lid is not described in claims separately, the plaintiffs' argument fails for the
the specification. But the written description element same reason identified when considering the six raised
requires more than a specification that is compatible triangles: the pedals in the '474 patent [*18] are not
with the claimed subject matter; the application must described in the specification of the '414 application. 11
describe the subject matter. HN8[ ] The written The plaintiffs argue that the alignment of the pedals is
description requirement ensures that the inventor not described in the specification of the '414 application.
possessed the claimed subject matter, not that the But the written description element requires more than a
inventor had not excluded the subject matter. 10 In re specification that is merely compatible with the claimed
Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013). subject matter; the application must describe, that is,
[*16] Thus, the lack of a conflicting limitation is not disclose, the subject matter.
sufficient to satisfy the written description requirement.
The plaintiffs have not addressed the remaining two
The plaintiffs admit that the lid drawn in the '414 differences between the '414-application canister and
application is a "different variation" from the lid drawn in the '474-patent canister because TBC and TBF failed to
the '474 patent. (Doc. 74 at 6) But the plaintiffs look to identify those differences. The '414 application depicts a
the specification for words that describe the '474-patent "base support plate" with "six outwardly extending
lid. The '474-patent specification explains, "Next fingers"; the '474-patent drawings depict no fingers. The
provided are security in [sic] components between the pedestal of the '414-application canister has squared
lid and the exterior housing. The security components edges; the pedestal of the '474-patent canister has
include adjacent holes in the lid and the exterior housing rounded edges. These two additional features of the
and a padlock for selectively locking and unlocking the canisters further distinguish the drawings.
lid onto the exterior housing to secure coins within the
In short, the drawings in the '414 application and the
housings." (Doc. 74-1 at 6) Unlike other words from the
drawings in the '474 patent differ in six ways, and the
specification that the plaintiffs have provided, these
plaintiffs' silence effectively concedes the differences.
words help to describe the drawings in the '414
[*19] The plaintiffs look beyond the drawings of the '414
application. But the drawings of the '414-application lid
application to the vague claims and the vague
(even if viewed in light of the [*17] descriptive language
specification of the application and argue that the text
in the specification) and the '474-patent lid remain
"teaches" (or is, at least, compatible with) each
distinguishable. The lip of the '414-application lid has a
distinction. The plaintiffs are mistaken to look to the
slot, and the side of the chamber wall has a
claims and specification for more than a description of
corresponding hole; the two fit together for use with a
the drawings. But even accepting the plaintiffs'
padlock. However, the lid of the '474 patent uses a
approach, the written description remains insufficient:
for each difference, the text of the '414 application either
10 The plaintiffs' view of the written description requirement
would destroy the purpose of the requirement; the plaintiffs'
view, if adopted, would reward vague patent applications — 11 As discussed above, when viewed from the top of the
the more vague the language is, the less likely the language canister, the pedals of the '474 patent occupy nearly 360
will conflict with the claimed invention. degrees.

Page 10 of 13
2013 U.S. Dist. LEXIS 142619, *19
adds nothing to the drawings or further clarifies that the Review of Daniels, Owens, and other cases, 13
'414-application drawings are incompatible with the demonstrates that the four differences identified by TBC
'474-patent drawings. and TBF (as well as the two additional differences
identified in this order) are sufficient to defeat the
While HN9[ ] not just "any change in the design plaintiffs attempt to claim the benefit of the '414
defeats a priority claim as a matter of law," Daniels, 144 application's filing date. The drawings of the '474-patent
F.3d at 1457, TBC and TBF need not identify significant canister depict a distinct canister: (1) no drawing is
differences between the '414-application canister and shared between the '414 application and the '474
the '474-patent canister. patent; (2) the '474 patent has new features not found in
the '414 application (e.g., raised triangles, additional
Daniels — one of the few decisions in which a design pads, and lock wells); and (3) the '474 patent has
patentee acquired a parent application's filing date — removed old features that are not distinguished [*22] in
finds a sufficient written description in the parent the '414 application (e.g., a padlock locking mechanism
application, despite only one minor difference in the and a six-fingered base plate).
drawings. In the parent application, the patentee filed
drawings of a "leecher," which is a trap used to catch Because the '474 patent is not entitled to the filing date
leeches. The leecher had [*20] a design of a leaf of the '414 application, the remaining analysis of the on-
printed on the side. In a later application, the patentee sale bar is not difficult. TBC and TBF argue, and the
filed a design patent for a leecher and used the same plaintiffs have not disputed, that Spencer put the Mach 5
drawings found in the parent application, except the new canister, which practices the design of the '474 patent,
leecher had no leaf design. 12 The Federal Circuit found into public use more than a year before the application
for the patentee and noted, "[T]he later claimed subject for the '474 patent. 14 Lacking entitlement to an earlier
matter is contained in the earlier application. The leaf filing date, 15 the '474 patent is invalid under the on-sale
ornamentation in the parent application, superimposed bar.
upon the design of the leecher itself, does not obscure
that design, which is fully shown in the parent
application drawings." Daniels, 144 F.3d at 1457. 2. Infringement
In Owens, the patentee submitted an application for, Even assuming the '474 patent is valid, the plaintiff must
and obtained, a design patent on a bottle. 710 F.3d [*23] prove that the TBC and TBF's canister infringes
1362, 1363 (Fed. Cir. 2013). Later, the patentee the '474 patent. HN10[ ] Patent infringement, a
submitted another design application for a portion of the question of fact, requires proof by a preponderance of
same bottle and sought the benefit of the parent evidence. Braun, Inc. v. Dynamics Corp. of America,
application's filing date. Claiming the design of the top 975 F.2d 815, 819 (Fed. Cir. 1992). Kustom Signals,
portion of the same bottle found in the parent Inc. v. Applied Concepts, Inc., commands HN11[ ]
application, the patentee merely drew a line through the summary judgment "when there is no genuine issue of
[*21] parent application's bottle drawing to distinguish material fact or when, drawing all factual inferences in
and to identify only part of the bottle. The Federal Circuit favor of the nonmoving party, no reasonable jury could
explained that the patentee based his argument on a return a verdict for the nonmoving party." 264 F.3d
misunderstanding of Daniels. Even though the patentee 1326, 1332 (Fed. Cir. 2001) (quotation marks omitted).
in Owens claimed the top portion of the same bottle —
exactly as depicted in the parent application — and
even though the parent application clearly depicted that 13 E.g.,In re Salmon, 705 F.2d 1579 (Fed. Cir. 1983) (finding
portion of the bottle, Owens denied the availability of the that a patent for a stool with a round seat could not use the
parent application's filing date because the parent filing date of a parent application for the same stool with a
application failed to distinguish and identify the later- squared seat).
claimed portion. 14 Spencer put the Mach 5 canister on sale and in public use
as early as 2006, and the critical date for the '474 patent is
February 18, 2010.
12 The Federal Circuit provided three pictures from each of the 15 The earliest application filed after the '414 application is the
two applications. Daniels, 144 F.3d at 1454-55. Figures 5 and '419 application. Beginning in 2006, the public use and sale of
6 of the applications are identical, and Figure 1 is the same the Mach 5 began more than a year before the December 12,
except for the leaf design. 2008, filing date of the '419 application.

Page 11 of 13
2013 U.S. Dist. LEXIS 142619, *23
HN12[ ] To prove infringement in a design patent Federal Circuit explained:

case, a patentee must show that "an ordinary observer,
familiar with the prior art, would be deceived into HN13[ ] When the differences between the
thinking that the accused design was the same as the claimed and accused designs are viewed in light of
patented design." Egyptian Goddess, Inc. v. Swisa, Inc., the prior art, the attention of the hypothetical
543 F.3d 665, 672 (Fed. Cir. 2008). ordinary observer may be drawn to those aspects
of the claimed design that differ [*25] from the prior
Pictures of the accused device are below: art. If the claimed design is close to the prior art
designs, small differences between the accused
design and the claimed design assume more
importance to the eye of the hypothetical ordinary
observer.
Crocs, Inc. v. ITC, 598 F.3d 1294, 1303 (Fed. Cir. 2010)
(citations omitted); accord Egyptian Goddess, Inc. v.
Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (HN14[
] "Where there are many examples of similar prior art
designs . . . , differences between the claimed and
accused designs that might not be noticeable in the
abstract can become significant to the hypothetical
ordinary observer who is conversant with the prior art.").
The defendants correctly identify seven distinctions
The '801-patent canister, patented in 2000, manifests
between the '474-patent canister and the accused
many similarities to the '474-patent canister and to the
canister:
accused canister. Drawings of the '801-patent canister
1. The bottom of the chamber of the accused
are below:
canister is flat, but the '474-patent canister has a
dome-shaped base plate at the bottom of the
chamber.
2. The accused canister has a flat lid, not a lid

[*24] with six raised triangles.
3. The accused canister's lid has no lock wells, but
the lid on the '474-patent canister has three lock
wells.
4. The accused canister's lid rests inside the walls
of the chamber, but the lid on the '474-patent
canister fits over and around the walls of the
chamber.
5. The accused canister includes a pedestal that is
wider than the chamber; the pedestal of the '474
patent is thinner than the chamber.
6. The accused canister is supported by two
opposing support rods, but the '474-patent canister
has no support rods.
7. The accused canister has squared edges, but
the '474-patent canister has rounded edges.
No reasonable jury could find that the seven distinctions

identified by the defendants pass unnoticed by an
ordinary observer. Also, the defendants correctly note
that the differences between the accused canister and
the '474-patent canister become even more apparent to
an ordinary observer who considers the prior art. As the

Page 12 of 13
2013 U.S. Dist. LEXIS 142619, *25
that an ordinary observer, familiar with the '801 patent,

could not distinguish the '474-patent canister from the
accused canister. 18
CONCLUSION
The '474 patent is invalid under the on-sale bar of

Section 102(b). Even if the '474 patent is valid, the
accused canister does not infringe the '474 patent.
Because the accused canister does not infringe the '474
patent, the plaintiffs' willful-infringement claim and
induced-infringement claim require no further
disposition. The defendants' motion (Doc. 69) for
summary judgment is GRANTED. The clerk is directed
Like the '474-patent canister and the accused canister, to enter judgment in favor of the defendants and against
the '801-patent canister (1) is a hexagonal prism, (2) sits the plaintiffs. The defendants' motion (Doc. 44) to
on a hexagonal-prism pedestal, (3) has transparent
chamber walls, (4) has a lid with three slots for the user In response, Spencer argued that his invention differed from
to insert coins into the chamber, (5) has ten pie-shaped the prior art, and Spencer identified as a distinguishing feature
pedals, (6) has five levels of pedals, and (7) has a the "base support plate . . . [that has] 'an upper surface
vertical shaft that controls the [*26] pedals. Along with tapering downwardly from the central aperture.'" (Doc. 68-21
the accused canister, but not the '474-patent canister, at 7) (In other words, Spencer identified a dome-shaped base
the '801-patent canister (1) has squared edges, (2) has plate at the bottom of the '414-application chamber and
a lid that fits inside the walls of the canister, (3) has no argued that the plate distinguished the '414-application
canister from other canisters.) Spencer went on to explain the
locking wells on the lid, (4) has no dome-shaped base
importance of the dome-shaped base plate and said, "This
plate at the bottom of the canister, and (5) has a flat lid.
configuration makes the coins more visible and the system
more effective in attracting users." (Doc. 68-21 at 7). Like the
The '801-patent canister shows that the most
'801-patent [*28] canister but unlike the '474-patent canister,
immediately apparent similarities between the '474-
the accused canister has no dome-shaped base plate at the
patent canister and the accused canister (e.g., the bottom of the chamber.
hexagonal-prism-shaped chamber and pedestal and the
18 The differences identified by TBC and TBF are not disputed
ten pie-shaped pedals) would not draw the eye of the
ordinary observer with knowledge of the prior art; these by the plaintiffs. Instead, the plaintiffs argue (1) that the '801-
patent canister is easily distinguished because the chamber is
similarities exist in the prior art, as well. 16 Instead, the
designed to hold water and (2) that infringement is a question
features of the '474-patent canister that would catch the
of fact.
eye of the ordinary observer, familiar with the prior art,
are the features that distinguish the '474-patent canister The distinctions between the '801-patent canister and the
from the prior art. Those features are the same features accused canister that are identified by the plaintiffs are
minimally probative. The point of considering the '801 patent is
that distinguish the '474-patent canister from the
not to say that the '801-patent canister and the accused
accused canister. 17 Thus, no reasonable jury could find
canister are indistinguishable. The point of considering the
'801-patent is that the two canisters share many design
similarities and that those design similarities aid the ordinary
16 The '474 patent lists eleven other prior art [*27] references. observer in understanding that a third canister that shares
(Doc. 68-2 at 2) These eleven references further aid the those characteristics may still be a different design, despite
ordinary observer in distinguishing the '474-patent canister the similarities.
and the accused canister.
HN15[ ] If no reasonable jury could find for the plaintiffs,
17 Some of the identified distinctions are particularly noticeable, infringement is resolvable and subject to determination on
as even Spencer has admitted. For example, consider the summary judgment. Kustom Signals, Inc. v. Applied Concepts,
dome-shaped base plate found in the '474-patent canister but Inc., 264 F.3d 1326, 1332 (Fed. Cir. 2001). No reasonable jury
not in the accused canister. While prosecuting the '414 could find that [*29] an ordinary observer, especially an
application, the examiner told Spencer that the canister in the observer familiar with the prior art, could fail to distinguish the
'414 application shared too many similarities with the prior art. '474-patent canister from the accused canister.

Page 13 of 13
2013 U.S. Dist. LEXIS 142619, *29
dismiss the plaintiffs' second amended complaint is

DENIED AS MOOT.
ORDERED in Tampa, Florida, on October 2, 2013.
/s/ Steven D. Merryday
STEVEN D. MERRYDAY
UNITED STATES DISTRICT JUDGE
End of Document

No Shepard’s Signal™
As of: May 4, 2019 3:20 PM Z
Young v. Stone
United States District Court for the Northern District of Illinois, Eastern Division
August 28, 2014, Decided; August 28, 2014, Filed
No. 13 C 4920
Reporter
2014 U.S. Dist. LEXIS 120683 *
and in 2001, he obtained a United States Design Patent
ROGER YOUNG, Plaintiff, v. ANNE STONE,
No. D442,661 ("the '661 patent") for his "Golf Putting
Defendant.
Practice Hole Simulator." Since the development of
plaintiff's product, defendant began to manufacture and
Core Terms sell a golf putting practice target entitled the "Putt-A-
Round." Plaintiff claims that defendant's product
patent, products, infringement, ornamental, disks, embodies the same ornamental design as plaintiff's [*2]
ordinary observer, prior art, features, flagpole, product and therefore infringes on the '661 patent.
appearance, dissimilar, golf ball, golf, pole, top Plaintiff seeks to enjoin defendant from further
infringement, and seeks to collect damages and fees for
Counsel: [*1] For Roger Young, Plaintiff: Doug J
willful infringement. Defendant has moved for judgment
Winnard, Alan Littmann, Goldman Ismail Tomaselli
on the pleadings, arguing that plaintiff's claim for design
Brennan & Baum LLP, Chicago, IL.
patent infringement fails as a matter of law based on the
For Anne Stone, Inc., Defendant: Charles A. Laff, LEAD facts stated in the pleadings.
ATTORNEY, Michael Best & Fredrich LLC, Chicago, IL;
Gilberto Eduardo Espinoza, Michael Best & Friedrich
LLP, Chicago, IL. DISCUSSION
Judges: Robert W. Gettleman, United States District A motion for judgment on the pleadings pursuant to
Judge. Rule 12(c) is subject to the same standard as a motion
to dismiss pursuant to Fed. R. Civ. P. 12(b)(6). See
Opinion by: Robert W. Gettleman Northern Indiana Gun & Outdoor Shows, Inc. v. City of
South Bend, 163 F.3d 449, 452 (7th Cir.1998). In
Opinion considering a Rule 12(c) motion, the court accepts all
well-pled allegations in the complaint as true and draws
all reasonable inferences in the plaintiff's favor. Forseth
v. Village of Sussex, 199 F.3d 363, 368 (7th Cir. 2000).
MEMORANDUM OPINION AND ORDER To avoid dismissal, a plaintiff must plead sufficient facts
to state a claim of relief that is plausible on its face. See
Plaintiff Roger Young filed a single count complaint for Ashcroft v. Iqbal, 556 U.S. 662, 678-79, 129 S. Ct.
patent infringement against defendant Anne Stone, Inc. 1937, 173 L. Ed. 2d 868 (2009); Bell Atlantic v.
("Anne Stone"). Plaintiff claims that Anne Stone's "Putt- Twombly, 550 U.S. 544, 555, 127 S. Ct. 1955, 167 L.
A-Round" practice target infringes on plaintiff's "Golf Ed. 2d 929 (2007).
Putting Practice Hole Simulator." Defendant has moved
for judgment on the pleadings, pursuant to Fed. R. Civ. The court engages in a two-step process to determine
P. 12(c). For the reasons described below, defendant's whether defendant has infringed on the '661 patent.
motion is granted. OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396,
1404-05 (Fed.Cir. 1997). First, the court construes the
design patent. Then, the patented design is compared
BACKGROUND to alleged infringing product. The test for infringement
on a design patent is "whether an ordinary observer,
In 1999, plaintiff developed a golf putting practice target, familiar with the prior art, would be deceived into

Page 2 of 4
2014 U.S. Dist. LEXIS 120683, *2
thinking that the accused design was the same as the

patented design." Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665, 672 (Fed.Cir. 2008); see also Competitive
Edge, Inc. v. Staples, Inc., 763 F.Supp.2d 997, 1011
(N.D.Ill. 2010). The [*3] court should not "focus[] on
whether the accused design has appropriated a single
specified feature of the claimed design," but rather
should evaluate "whether the accused design has
appropriated the claimed design as a whole." Egyptian
Goddess, 543 F.3d at 677. A design infringes if "the
accused article embodies the patented design or any
colorable imitation thereof." Id. at 678.
The Federal Circuit has further explained that "articles

which are concealed or obscure[d] in normal use are not
proper subjects for design patents, since their
appearance cannot be a matter of concern," Contessa
Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1379
(Fed.Cir. 2002) (overruled on other grounds by Egyptian The second figure is "a right side view of the invention,
Goddess, 543 F.3d at 678), and where a design the left side view, front view and rear view being a mirror
contains both ornamental and functional features, it is image thereof."
proper to separate the functional and ornamental
aspects, because the scope of the design claim "must
be construed in order to identify the non-functional
aspects of the design as shown in the patent,"
Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293
(Fed.Cir. 2010).
The claim for the '661 patent states that it is an

"ornamental design for a golf putting practice hole
simulator, as shown and described." Four figures
accompany this claim. The first figure is described as a
"perspective view of the invention with a flag pole
portion cut out to illustrate that it is longer than as
shown. Omitted potions of the pole are configured [*4]
the same as portions shown." The description further
notes that the dotted lines on the first figure represent a
potential flag configuration and an outline of how golf
balls are trapped by the simulator.
The third figure is "a top plan view of the invention."

Page 3 of 4
2014 U.S. Dist. LEXIS 120683, *4
reposition it. Under Contessa and Int'l Seaway Trading

Corp. v. Walgreens Corp., 589 F.3d 1233, 1241-42
(Fed. Cir. 2009), the court will consider the ornamental
design of the base.
Having distinguished the functional and ornamental

features of the products, the court considers the
relevant prior art. A number of the examples of prior art
submitted by the parties feature spaced disks with
different functional features to trap golf balls. In one
design, U.S. Patent No. 1,297,055 ("Austin"), a flexible
trapping disk is positioned just below the upper disk to
capture the golf ball. In another design, U.S. Patent No.
2,899,207 ("Billinghurst"), both disks are tapered to
capture the golf balls. The prior art all feature a pole of
The final figure is a "bottom plan view of the invention."
some length extending from the top disk.
To determine whether an ordinary observer familiar with

the prior art would confuse the products, the court
analyzes "whether [*6] the accused design has
appropriated the claimed design as a whole," Egyptian
Goddess, 543 F.3d at 677, and therefore focuses on the
overall impression created by the two designs (pictured
below).
In construing the patent, the court must distinguish

between the functional elements and those that are
ornamental. The spaced upper and lower disks of the
patented design are functional, but the court notes that
the differences in the mechanisms that trap the golf ball
may be evaluated as part of the ornamental design
because they contribute to the overall impression of the
product. The pole that separates the disks is functional,
and the remaining feature, the extended flagpole, is One of the most obvious differences between the
ornamental. products is that top of the lower disk on defendant's
product is noticeably inclined, directing the ball upward
The parties debate whether the base of the product may
to the center where it is held in place. Plaintiff's design
be considered an ornamental element. Defendant
features a flat lower base with what appears to be a
argues that the base of its product is ornamental and
washer around the center column that holds the ball.
features a prominent bolt to secure the flagpole, as well
This difference is readily apparent upon even a casual
as three feet. In contrast, defendant [*5] points to the
view of the two products.1 Although the spaced disks
smooth base of the patented product. Plaintiff rejects
this argument, stating that where a feature is concealed
or obscured in the normal use of the device, it is not "a 1 Plaintiffargues that the ordinary observer will pay less
matter of concern" in the design patent context. attention when evaluating the product because it is
Contessa, 282 F.3d at 1379. However, as defendant inexpensive, citing Braun, Inc. v. Dynamics Corp. of Am., 975
points out, the underside of the device is visible during F2d 815 (Fed. Cir. 1992). The court notes that the ordinary
the normal use of the product, particularly at the point of observer standard articulated in Egyptian Goddess
sale and whenever a purchaser moves the device to controls, [*7] but that even if a consumer gave the products a
less in-depth review, the overall appearances of the products

Page 4 of 4
2014 U.S. Dist. LEXIS 120683, *7
are functional, the basic similarity of the functional Robert W. Gettleman

features of these devices, the "spaced disks," may not
serve as the basis for a determination that its product United States District Judge
infringes on the patented design. The court notes that all
of the prior art shares this feature, and it is, in part, the
End of Document
unique mechanisms among the products that contribute
to the overall differences in appearance.
Defendant argues that the rounded cap on plaintiff's

flagpole is substantially different from the tapered insert
on defendant's flagpole. The flag of the alleged
infringer's product also covers the top of the flagpole,
while the suggested flag on the patented product (which
is not a part of the patented design) appears to attach to
the pole well below the cap in question, leaving the top
of the flagpole visible. When the products are viewed as
a whole, this difference adds to the impression that the
two products are plainly dissimilar.
In addition, the underside of the base of the alleged

infringer's product is substantially different from the
patented design. While the patented design features a
smooth surface, there are multiple elements on
defendant's product that stand out. There is a prominent
central bolt that secures the flagpole, as well as three
small, round feet. These designs are plainly dissimilar to
the ordinary observer.
Under the ordinary observer test, the court concludes

that the two products [*8] are so plainly dissimilar that
defendant is entitled to judgment as a matter of law. An
ordinary observer is unlikely to believe that the patented
design and the accused design are the same. Even
disregarding the marked difference in the functional
elements of the products, the appearances of the
products are dissimilar enough to conclude that an
observer familiar with the prior art would not confuse the
products.
CONCLUSION
For these reasons, the court finds that the two devices
are so obviously dissimilar as to warrant a finding of
non-infringement as a matter of law, and awards
judgment for defendant Anne Stone and against plaintiff
Roger Young.
ENTER: August 28, 2014
/s/ Robert W. Gettleman
are sufficiently dissimilar to obviate any confusion between the

products.

Caution
As of: May 4, 2019 2:24 PM Z
Z Produx, Inc. v. Make-Up Art Cosmetics, Inc.

United States District Court for the Central District of California
Case No. CV 13-00734 DDP (RZx)
Reporter
2013 U.S. Dist. LEXIS 159256 *; 2013 WL 5941049
("MAC") Motion for Summary Judgment. The motion is
Z PRODUX, INC., Plaintiff, v. MAKE-UP ART
fully briefed. 1 Having considered the parties'
COSMETICS, INC., Defendant.
submissions and heard oral argument, the court now
Subsequent History: Affirmed without opinion by Z adopts the follow order.
Produx v. Make-Up Art Cosmetics, 2014 U.S. App.
LEXIS 18043 (Fed. Cir., Aug. 13, 2014)
I. Background
Core Terms Z Produx, Inc. ("Z Produx") and MAC are competitors in
the arena of cosmetics accessories. This case centers
patent, Palette, cosmetic, empty, infringement, on MAC's alleged infringement of a design patent held
ornamental, features, window, holder, tail, top, football, by Z Produx for a makeup palette.
makeup, invalid, summary judgment, functionality,
containers, photograph, products, purposes, asserts, Zena Shteysel, the president of Z Produx, is the named
designs, compartment, depicted, argues, edges, frame, inventor of U.S. Patent No. 642,743 ("the '743 patent"),
metal, rim, utility patent a design patent for a cosmetics holder. (See Declaration
of Thomas Mahlum [*2] in Support of Motion, Ex. A.)
Counsel: [*1] For Z Produx Inc, Plaintiff: Robert David Shteysel applied for the design patent on April 14, 2010
Katz, LEAD ATTORNEY, PRO HAC VICE, Katz PLLC, and it was issued August 2, 2011. (Id.) Shteysel
Dallas, TX; Jeffrey A Koncius, Kiesel and Larson LLP, subsequently assigned the patent to Z Produx on May
Beverly Hills, CA. 17, 2012. (Id., Ex. B.) The patent includes a single claim
For Make-Up Art Cosmetics Inc, Defendant: David for "[t]he ornamental design for the cosmetic holder, as
Martinez, LEAD ATTORNEY, Robins Kaplan Miller and shown and described." (Id., Ex. A at 6.) The patent
Ciresi LLP, Los Angeles, CA; Jan M Conlin, Larina A includes 14 figures depicting, from various perspectives,
Alton, Thomas C Mahlum, PRO HAC VICE, Robins a cosmetic holder with a clear top and an empty base.
Kaplan Miller and Ciresi LLP, Minneapolis, MN. (Id. at 6-12) As discussed further below, the design
depicted has a "book-like" appearance, with a flat spine
Judges: DEAN D. PREGERSON, United States District and sides that extend slightly beyond the middle part of
Judge. the device. (Id.) It has a relatively wide rim framing the
window to the compartment. (Id.)
Opinion by: DEAN D. PREGERSON
Z Produx markets the "Z Palette," a cosmetics palette
that resembles the '743 design patent and includes the
Opinion text "Pat. D642,743" on the bottom of the device. (See
Id., Ex. 10, 73; Ex. Z.) The products sold by Z Produx
consist only of the Z Palette and two types of related
accessories (metal pans and metal stickers). (Id., Ex. C
ORDER GRANTING DEFENDANT'S MOTION FOR
(Deposition of Zena Shteysel at 8:17-10:23).)
SUMMARY JUDGMENT
On April 14, 2010, the same day on which Shteysel
[DKT No. 35]
Before the court is Make-Up Art Cosmetic, Inc.'s 1 The court allowed Z Produx, Inc. to file a surreply.

Page 2 of 6
2013 U.S. Dist. LEXIS 159256, *2
applied for the design patent, Shteysel also applied judgment if it can demonstrate that "there is an absence
[*3] for a utility patent for a cosmetics holder. (Id., Ex. of evidence to support the nonmoving party's case."
K. at 180, Patent Application No. 12-760029.) The Celotex, 477 U.S. at 323.
application claimed, among other things, a cosmetics
holder including a metal base made of magnetized Once [*5] the moving party meets its burden, the
metal, a recess for receiving metal makeup containers, burden shifts to the nonmoving party opposing the
and a top frame "defin[ing] a window for viewing the motion, who must "set forth specific facts showing that
makeup containers that are supported on the magnetic there is a genuine issue for trial." Anderson, 477 U.S. at
base, when the cover assembly is closed." (Id. at 188.) 256. Summary judgment is warranted if a party "fails to
Each of the application's five claims were rejected by make a showing sufficient to establish the existence of
the U.S. Patent and Trademark Office as anticipated by an element essential to that party's case, and on which
existing patents. (Id. at 222-226.) The claim asserting a that party will bear the burden of proof at trial." Celotex,
framed window for viewing makeup containers while the 477 U.S. at 322. A genuine issue exists if "the evidence
cover assembly is closed was rejected as obvious in is such that a reasonable jury could return a verdict for
view of the Liden patent, U.S. Patent No. D597256, the nonmoving party," and material facts are those "that
which has been assigned to Defendant MAC. (Id. at might affect the outcome of the suit under the governing
224; MSJ at 8.) law." Anderson, 477 U.S. at 248. There is no genuine
issue of fact "[w]here the record taken as a whole could
MAC markets, among other products, a cosmetic palette not lead a rational trier of fact to find for the nonmoving
called the MAC Pro Palette Large/Single ("MAC party." Matsushita Elec. Indus. Co. v. Zenith Radio
Palette"). (Complaint, DKT. No. 1 ¶ 11.) Like the Z Corp., 475 U.S. 574, 587, 106 S. Ct. 1348, 89 L. Ed. 2d
Palette, the MAC Palette consists of an empty base 538 (1986).
container with clear window top. (See Mahlum Decl. Ex.
AA.) However, as discussed below, unlike the Z Palette, It is not the court's task "to scour the record in search of
the MAC Palette has edges that are flush with one a genuine issue of triable fact." Keenan v. Allan, 91 F.3d
another, a triangle-shaped [*4] hinge, and a relatively 1275, 1278 (9th Cir.1996). Counsel has an obligation to
narrow rim framing the window. (See Id., Exs. M, N, and lay out their support clearly. Carmen v. San Francisco
AA.) Sch. Dist., 237 F.3d 1026, 1031 (9th Cir.2001). The
court [*6] "need not examine the entire file for evidence
Z Produx alleges that MAC's sale of the MAC Palette establishing a genuine issue of fact, where the evidence
infringes its '743 design patent in violation of 35 U.S.C. is not set forth in the opposition papers with adequate
§ 271(a). references so that it could conveniently be found." Id.
II. Legal Standard III. Discussion and Analysis
Summary judgment is appropriate where the pleadings,

depositions, answers to interrogatories, and admissions A. Validity of Patent
on file, together with the affidavits, if any, show "that
there is no genuine dispute as to any material fact and "A patent is presumed to be valid, and this presumption
the movant is entitled to judgment as a matter of law." can only be overcome by clear and convincing evidence
Fed. R. Civ. P. 56(a). A party seeking summary to the contrary." Bristol-Myers Squibb Co. v. Ben Venue
judgment bears the initial burden of informing the court Labs., Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001)
of the basis for its motion and of identifying those (citations omitted). One basis on which a patent may be
portions of the pleadings and discovery responses that proved invalid is evidence that the invention was "in
demonstrate the absence of a genuine issue of material public use" more than one year prior to the date of filing
fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, an application. 35 U.S.C. 102(b)(2010). Prior public use
106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). All reasonable may serve to invalidate a design patent. In re Mann, 861
inferences from the evidence must be drawn in favor of F.2d 1581, 1581-82 (Fed. Cir. 1988).
the nonmoving party. See Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 242, 106 S. Ct. 2505, 91 L. Ed. 2d MAC argues that the '743 patent is invalid because the
202 (1986). If the moving party does not bear the Z Palette design was in public use more than a year
burden of proof at trial, it is entitled to summary before the '743 patent application was filed. (MSJ at 24.)

Page 3 of 6
2013 U.S. Dist. LEXIS 159256, *6
MAC alleges that the '743 design was depicted in a

photograph of the Z Palette that was included in a B. Patent Infringement
trademark application filed by Z Produx on February 12,
2009, more than a year before Shteysel filed an
application for the '743 design [*7] patent on April 14, i. Claim Construction
2010. (Id.; Mahlum Decl., Ex A.) MAC alleges that the
photograph was posted on the United States Patent and To [*9] determine whether a design patent is infringed,
Trademark Office website on February 12, 2009 and the court must first construe the claim to the design,
was made available to the public upon request in print where appropriate, and then compare it to the design of
form. (MSJ at 24, citing Mahlum Decl., Ex G.) MAC the accused device. OddzOn Products, Inc. v. Just
asserts that these alleged facts demonstrate that the Toys, Inc., 122 F.3d 1396, 1404-05 (Fed. Cir. 1997)
patent is invalid. (citing Elmer v. ICC Fabricating, Inc., 67 F.3d 1571,
1577 (Fed. Cir. 1995)).
Having considered the evidence before it, the court finds
that there is no basis for finding the '743 patent invalid. "A design patent protects only the novel, ornamental
Even assuming the photograph was publicly available features of the patented design," not its functional
on the date MAC asserts, a contention Z Produx elements. Id; see also Lee v. Dayton-Hudson Corp., 838
disputes, (Z Produx's Surreply at 1-3), the disclosure F.2d 1186, 1188-90 (Fed. Cir. 1988) ("[I]t is the non-
was not sufficient to anticipate and thereby invalidate functional, design aspects that are pertinent to
the '743 patent. determinations of infringements. ... A device that copies
the utilitarian or functional features of a patented design
For a prior art disclosure to be anticipatory, it must be is not an infringement. ... [While] infringement can be
"'enabling' - i.e., it must be sufficient to permit a person found for designs that are not identical to the patented
having ordinary skill in the art to practice the invention." design, such designs must be equivalent in their
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d ornamental, not functional, aspects."); L.A. Gear, Inc. v.
1331, 1342 (Fed. Cir. 2005). "Pictures and drawings Thom McAn Shoe Co., 988 F.2d 1117, 1123
may be sufficiently enabling to put the public in the (Fed.Cir.1993) ("The elements of the design may indeed
possession of the article pictured. Therefore, such an serve a utilitarian purpose, but it is the ornamental
enabling picture may be used to reject claims to the aspect that is the basis of the design patent.") Where a
article. However, the picture must show all the claimed design is found to include both functional and
[*8] structural features and how they are put together.' ornamental [*10] features, the court must "factor[] out"
U.S. Patent and Trademark Office, Manual of Patent the functional aspects of the design for the purposes of
Examining Procedure, § 2102.04 (citing Jockmus v. claim construction. Richardson v. Stanley Works, Inc.,
Leviton, 28 F.2d 812 (2d Cir. 1928)). 597 F.3d 1288, 1293 (Fed. Cir. 2010).
The Z Produx trademark application included one Critical to the instant case is whether two aspects of the
picture of the Z Palette photographed from above. (See palette depicted in the '743 patent—the clear top and
Mahlum Decl., Ex G.) The device's sides, edges, and empty compartment—are ornamental and therefore
contours are not visible. (Id.) The photograph does not protected or, instead, functional and therefore
reveal numerous elements of the design which were unprotected. (See MJS at 20-24; Opp. at 8-11.) As
later reflected in the figures included in the '743 design discussed further below, it is these elements that are the
patent. Indeed, with the exception of the width of the subject of Z Produx's infringement action. A design is
palette's rims, none of the elements included in the deemed to be functional "when the appearance of the
construction of the '743 patent proposed by MAC are claimed design is dictated by the use or purpose of the
apparent in the photograph. (See Reply at 3, citing MSJ, article." L.A. Gear, 988 F.2d at 1117 (internal citation
Ex. A; Mahlum Decl., Ex. Y.) These elements include a and question marks omitted).
"lip" extending past the edged of the cosmetic holder
and the flat spine along the back of the case. (Id.) MAC asserts that the clear top and empty base are
(MAC's proposed construction is discussed further in the analogous to design elements found functional in
following subsection.) Because the photograph does not OddzOn. There, the Federal Circuit construed a design
contain sufficient detail to constitute invalidating prior art patent covering a foam football with a tail and fin
for the '743 design patent, the court must reject MAC's structure. 122 F.3d at 1405. The court found that the tail
contention that the patent is invalid. and fin structure was functional rather than ornamental,

Page 4 of 6
2013 U.S. Dist. LEXIS 159256, *10
and therefore unprotected, because those features Indeed, Z Produx has itself emphasized [*13] the
served the purpose of enabling the football to be thrown functionality of the features at issue. In explaining why
further than a traditional [*11] foam football. Id. MAC consumers like the Z Palette, Shteysel pointed to the
argues that, like the tail and fin structure, the clear top functionality of the clear cover and empty base, stating:
and empty compartment depicted in the '743 patent are "[Customers] like the window and that you can see
designed to serve specific purposes, namely allowing a through it. They like that you can customize it anyway
user to see the contents of her palette without opening it you want so you can fit any size product, any brand, all
and to customize the palette's contents. (MSJ at 23.) in one palette, interchangeable." (Deposition of Zena
The court agrees that the analogy to OddzOn is apt. Shteysel in Support of Opposition at 94.) 2 (See also
Shteysel Dep. at 103, 105, 109, 110.)
Z Produx argues that the clear top and empty
compartment are not dictated by design on the grounds Moreover, the clear cover and empty base appear to be
that MAC "had plenty of options when it came to essential for the functionality [*14] that these elements
alternative designs." (Opp. at 9.) It argues that the offer. As MAC points out, there appears to be no other
palette merely "serves the purpose of holding way to enable a user to view the contents of her palette
cosmetics" and points to various other cosmetic palettes without opening it but to make the cover see-through or
that also hold cosmetics but do not include the same to enable the customization of the palette's contents
clear window and empty base features. (Id. at 9-10.) without leaving the compartment empty. (Reply at 10.)
These considerations support a finding that the clear top
Z Produx's argument is unavailing because it mistakenly
and empty base are "dictated by the use or purpose of
assumes that it is the functionality of the device as a
the article," 988 F.2d at 1117, and are therefore
whole, rather than the functionality of the elements at
functional rather than ornamental.
issue, that matters for the construction of a design
patent. Indeed, in the course of finding that the tail and The finding that the clear window and empty base are
fin structure on the foam football in OddzOn were functional rather than ornamental is further supported by
functional, the Federal Circuit specifically rejected the the fact these features appear to be protected by
approach Z Produx now asks the court to adopt: existing utility patents. As discussed above, at the time
that Shteysel applied for what became the '743 design
OddzOn [*12] argues that the shape of a football
patent, she filed an unsuccessful application for a utility
with an arrow-like tail is an ornamental feature
patent. The application claimed a cosmetic holder with,
because "it is not required for a tossing ball." While
among other elements, a "frame in order to define a
OddzOn correctly states that there are many ways
window for viewing the makeup containers." (Mahlum
of designing "tossing balls," it is undisputed that the
Decl., Ex. K at 188.) The patent office rejected the
ball in question is specifically designed to be thrown
window claim as obvious in view of the Liden utility
like a football, yet travel farther than a traditional
patent (Patent No. D597256), which claimed a top frame
foam football. It is the football shape combined with
with "a window for viewing the makeup containers when
fins on a tail that give the design these functional
the [*15] cover is in a closed position." (Id. at 224-25.)
qualities. The tail and fins on OddzOn's design add
As noted, the Liden utility patent, which looks very
stability in the same manner as do the tail and fins
similar to the '743 design patent, has been assigned to
found on darts or rockets. They are no less
MAC. (MSJ at 8.) The patent office likewise rejected the
functional simply because "tossing balls" can be
other four claims in Shteysel's utility patent application,
designed without them.
122 F.3d 1406. The court went on to explain that the

2 The court gives little weight to subsequent assertions, made
functional characteristics limit the scope of the protected
by Ms. Shteysel in a declaration without assertions of factual
subject matter. Id. The reasoning in OddzOn is
support, that the clear cover and empty compartment serve
controlling for the instant case. Just as a tail and fins are
aesthetic functions of making the palette look "more visually
not necessary to design a "tossing ball," a clear cover appealing" and "uncluttered." (DKT No. 38, Ex. 12, at ¶¶ 9-10.
and empty base are not necessary to design a "A conclusory, self-serving affidavit, lacking detailed facts and
cosmetics pallette. Yet in both cases the additional any supporting evidence, is insufficient to create a genuine
elements bring added functionality to the product, issue of material fact." Fed. Trade Comm'n v. Publ'g
rendering them functional, rather than ornamental, Clearing House, Inc., 104 F.3d 1168, 1171 (9th Cir. 1997)
features. (citing Fed. Trade Comm'n v. Publ'g Clearing House, Inc.,
104 F.3d 1168, 1171 (9th Cir. 1997)).

Page 5 of 6
2013 U.S. Dist. LEXIS 159256, *15
which described a cosmetic holder with a magnetic base court finds it necessary to provide a brief verbal
with a recess for receiving metal makeup containers, in description of the relevant claimed ornamental elements
light of the Jimbo patent (Patent No. 5005697). (Id. at of the '743 design. It further finds, based on its own
222-24.) The existence of these prior utility patents careful review of the '743 patent, that MAC's proposed
covering the elements at issue further indicate that the characterization of the design is fair and accurate. It
clear top and empty base elements are functional. therefore adopts that description for the purposes of its
infringement analysis.
In sum, the facts in evidence clearly demonstrate that
the clear cover and empty base are functional, not
ornamental, and thus are not protected under the '743 ii. Infringement
design patent and may not form the basis for an
infringement action. Having reached this conclusion, the Having construed the scope and relevant meaning of
court must "factor out" the clear window and empty base the '743 claim, the court must now compare the claim to
elements for the purposes of claim construction. See the accused design to determine whether there has
Richardson, 597 F.3d at 1293. been any infringement. See Elmer v. ICC Fabricating,
67 F.3d 1571, 1577 (Fed. Cir. 1995). A design patent is
The court next must examine what remaining relevant infringed if the patented design, or any colorable
design features are ornamental and construe the imitation thereof, is applied without authorization to any
claimed design accordingly. MAC proposes the article of manufacture for the purposes of sale. 35
following construction of the '743 patent design for U.S.C. § 289; Goodyear Tire & Rubber Co. v. Hercules
[*16] the purposes of its motion: Tire & Rubber Co., 162 F.3d 1113, 1116-17 (Fed. Cir.
The '743 claims the ornamental features of a 1998). [*18] To determine if an infringement has
cosmetic holder design that includes a "lip" occurred, the court applies the "ordinary observer test,"
extending past the edge of the cosmetic holder, whereby the court must determine "whether an ordinary
with a flat or flushed spine or hinge along the back observer, familiar with the prior art and designs, would
of the case, and with the overall proportions be deceived into believing that the accused product is
depicted in its drawings. the same as the patented design." Crocs, 598 F.3d
(Reply at 3, citing MSJ, Ex. A; Mahlum Decl., Ex Y.) 1303. The focus of the analysis is the "overall
impression of the claimed ornamental features" rather
Z Produx urges the court to refrain from providing any than "small differences in isolation." Id. at 1303-04.
description of the elements of the claimed design.
Borrowing language from the '743 design patent (which In the present case, the court finds that there is no
contains no verbal description of the patented design), it triable question as to whether the MAC Palette infringes
asks the court to adopt the construction: "an ornamental the claimable ornamental elements of the '743 design. Z
design for a cosmetics palette as shown in Figure 1." Produx has pointed to only two elements of the '743
(Opp. at 8.) In advancing this position, Z Produx relies design which it alleges are infringed by the MAC
on Federal Circuit authority cautioning trial courts to Palette: (1) the clear cover and (2) the empty base. See,
avoid excessive reliance on a detailed verbal description e.g. (Mahlum Decl., Ex. S at Interrog. Resp. No. 10
of a patent infringement. Id. (citing Egyptian Goddess, (describing the claimed ornamental features in MAC
Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008)). accused products as "contain[ing] a clear window and
However, neither Egyptian Goddess nor any other case also featur[ing] an open empty base design, just like the
of which this court is aware has articulated the position Z Palette") and Nos. 3 and 4 (describing ornamental
that courts must refrain from any verbal description of design elements of the '743 patent as "a clear window,
the elements whatsoever. Indeed, the Federal Circuit empty base, and ... rectangular and square designs");
specifically rejected this [*17] position in Richardson, Shteysel Decl. (testifying that that [*19] MAC Palette
raising the question of "how a court could effectively "looks like mine, and it has the same features, clear
construe design claims, where necessary, in a way window, empty base"). However, as discussed in the
other than by describing the features showing the preceding section, because these features are
drawings." 597 F.3d at 1293. functional, they are not entitled to protection under the
'743 design patent and must be factored out for the
As discussed further below, the court takes the figures purposes of infringement analysis. Thus, Z Produx has
included in the '743 design patent as its touchstones for failed to point to any claimable design aspects of '743
its infringement analysis. With that in mind, however, the that are infringed by the MAC Palette.

Page 6 of 6
2013 U.S. Dist. LEXIS 159256, *19
Moreover, a comparison of the '743 design with the "point of novelty" test, but instead refers to these
MAC Palette reveals that, once the clear cover and elements solely in the course of explaining that—once
empty base elements are factored out, the designs bear unclaimable features are factored out—an ordinary
little resemblance. MAC has pointed to several areas observer could not confuse the two products.
which the court agrees bear consideration.
Z Produx has submitted quotations from online
First, the MAC Palette has an overall slimmer look than discussion forums which it asserts show that consumers
the '743 patent and its Z Palette embodiment, owing to are confused by the similarity between the Z Palette and
the designs' differing proportions. MAC notes, and Z the MAC Palette. (See Opposition at 17-18; Declaration
Produx does not contest, that the window pane in the of Robert Katz in Support of Opposition, Exs. 7, 6, 7, 8,
'743 design makes up 67% of the square inches of the 9.) However, leaving aside the question of whether the
lid, with the opaque rim making up the remaining 33%. evidence is admissible, the evidence does not create a
(Oct. 7, 2013 Mahlum Decl. ¶ 3.) Similarly, the window triable issue because none of the materials presented
pane of the Z Palette makes up 61% of the square tend to show that consumers perceived the MAC Palette
inches of the lid, with 39% made up by the opaque rim. [*22] as similar to the Z Pallette because of shared
(Mahlum Decl. ¶ 4.) By contrast, the window [*20] pane ornamental features that are protected by the '743
of the MAC Palette makes up a substantially greater design patent, rather than because of the shared clear
84% of the lid, as compared to 16.2% made up by the cover and empty base, which are not protected by the
rim. (Id. ¶ 5.) The differing proportions make the patent. See OddzOn at 1406 ("Because the accused
products clearly distinguishable upon first glance. products are clearly similar to OddzOn's design in terms
of their football shape and their tail and fins, it was
Second, the '743 patent claims a cosmetic holder with a incumbent on OddzOn to submit evidence establishing
lip that extends beyond the edge of the cosmetic holder, that the ornamental aspects of their football-with-tail-
giving the design a book-like appearance. (See id., Ex.
and-fin combination accounted for the similarity
A, Figs. 1, 4, 7, 8, 11.) The lip is also present in the Z
perceived by the survey participants.")
Palette. (See id., Ex. 9.) By contrast, the MAC Palette
has edges that are flush. In sum, the evidence before the court does not create a
triable question as to whether MAC infringed Z Produx's
Third, the '743 patent claims a design with two seams or '743 design patent through its sale of the MAC Palette.
ridges along each side, in addition to the one where the
case separates, contributing further to the design's
book-like appearance. (See id., Ex. A, Figs. 1, 4, 7, 8, IV. Conclusion
11.) The MAC Pallete, contrastingly, has no additional
seams. For the reasons set forth above, the court GRANTS
Defendant Make-up Art Cosmetics, Inc.'s motion for
Fourth, the '743 design has a hinge that is flush with the summary judgment.
cosmetic case, resembling the binder of a book. (See
id., Ex. A, Figs. 4, 5.) By contrast, the MAC Palette has IT IS SO ORDERED.
a distinctive triangular raised hinge. (Mahlum Decl., Ex.
M.) Dated: November 5, 2013
Z Produx urges that the court not consider such features /s/ Dean D. Pregerson
as the "individual corners, lips, seams, spine, and
DEAN D. PREGERSON
attributes" of the products. (Opp. at 12.) Z Produx
argues [*21] that consideration of such elements is United States District Judge
impermissible in light of the Federal Circuit's
abandonment of the "point of novelty" test. (Opp. at 12.)
Under this now discarded test, in order to find End of Document
infringement, after comparing the items through the
eyes of an ordinary observer whereby, the court was
required to attribute the similarity to novelty that
distinguishes the patented device from prior art. See
Egyptian Goddess at 543 F.3d at 676-77. However, the
court does not consider such design elements under the

Johnsonville Sausage v. Klement Sausage - Def SJ Brief

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Johnsonville Sausage v. Klement Sausage - Def SJ Brief

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UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF WISCONSIN

JOHNSONVILLE SAUSAGE, LLC,

KLEMENT SAUSAGE CO., INC.,

DEFENDANT'S BRIEF IN SUPPORT OF MOTION FOR

Attorneys for Defendant KLEMENT

I. SUMMARY JUDGMENT STANDARD........................................................................... 1

II. ARGUMENT ...................................................................................................................... 1

1. The Concave/Convex End Walls Are Functional and Cannot Be

2. Johnsonville Cannot Prove the Ordinary Observer Would Be

a. The Accused Tray is "Plainly Dissimilar" from the Sausage

a. The Claimed Design of the ‘754 Design Patent............................ 23

b. The Claimed Design is Primarily Functional................................ 23

2. Johnsonville Intended to Deceive the Patent Office. ................................ 23

a. The Patentee Knew of the Reference ............................................ 23

c. The Patentee Made a Deliberate Decision To Not Disclose

D. The "Article of Manufacture" is the Curved Sausage Tray Without

A&H Mfg. Co. v. Contempo Card Co., Inc.,

Advantek Mktg., Inc. v. Shanghai Walk-Long Tools Co., Ltd.,

Amini Innovation Corp. v. Anthony California, Inc.,

Anderson v. Liberty Lobby, Inc.,

Apple Inc. v. Samsung Elecs. Co., Ltd.,

Application of Stevens, 173 F. 2d 1015, 1016 (C.C.P.A. 1949) ....................................................18

Applied Arts Corp. v. Grand Rapids Metalcraft Corp.,

Bush & Lane Piano Co. v. Becker Bros.,

C&M Fiberglass Septic Tanks, Inc. v. T&N Fiberglass Mfg. Co.,

Celotex Corp. v. Catrett,

Competitive Edge Inc. v. Staples, Inc.,

Contessa Food Products, Inc. v. Conagra Inc.,

Crocs, Inc. v. Int’l Trade Comm’n,

Dorman Prods., v. PACCAR, Inc.,

Elmer v. ICC Fabricating, Inc.,

Ethicon Endo-Surgery, Inc, v. Covidien, Inc.,

Fanimation, Inc. v. Dan’s Fan City, Inc.,

Gorham Mfg. Co. v. White,

Great Neck Saw Mfrs., Inc. v. Star Asia U.S.A., LLC,

HR US LLC v. Mizco Int'l, Inc.,

Keurig, Inc. v. JBR, Inc.,

L.A. Gear, Inc. v. Thom McAn Shoe Co.,

Larson v. Classic Corp.,

Lawman Armor Corp. v. Master Lock Co.,

Markman v. Westview Instruments, Inc.,

Minka Lighting, Inc., v. Maxim Lighting Int'l, Inc.,

Norco Products, Inc. v. Mecca Development, Inc.,

Nordock Inc.v. Systems Inc.,

OddzOn Prods., Inc. v. Just Toys, Inc.,

PHG Techs, LLC v. St. John Cos., Inc.,

Richardson v. Stanley Works, Inc.,

Samsung Elecs. Co., Ltd. v. Apple, Inc.,

Schnadig Corp. v. Collezione Europa U.S.A.,

Spencer v. Taco Bell Corp.,

Static Control Components, Inc. v. Lexmark Int'l, Inc.,

Therasense, Inc. v. Becton, Dickinson & Co.,

U.S. Water Servs., Inc. v. Novozymes A/S,

Wing Shing Prods. (BVI) Co. v. Sunbeam Prods., Inc.,

Z Produx, Inc. v. Make-Up Art Cosmetics, Inc.,

35 U.S.C. § 171 ........................................................................................................................21, 22

35 U.S.C. § 289 ..........................................................................................................................1, 28

37 C.F.R. § 1.14 .............................................................................................................................26

Fed. R. Civ. P. 56 .............................................................................................................................1

Local Rule 56(b)(1)..........................................................................................................................6

MPEP 1.56 .....................................................................................................................................27

and (4) the “article of manufacture” is the tray without sausage.

I. SUMMARY JUDGMENT STANDARD

granted. See Id. at 9, 16.