butler v. balkamp - cert. petition
TRANSCRIPT
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Supreme Court, U.S.
FILED
15 273
AUG
3 2 15
No.
OFFICE OF THE CLERK
Jn
tbe
~ u p r e m e
QCourt
of tbe niteb ~ t t e s
KENNETH BUTLER SR.
Petitioner
v.
BALKAMP INC. et al.
Respondents.
On Petition for Writ
of
Certiorari to the
United States Court
of
ppeals for the Federal Circuit
PETITION FOR WRIT OF CERTIOR RI
JOSEPH J.
ZITO
Counsel ofRecord
DNL
ZITO
1250
Connecticut
Ave NW
Suite
200
Washington DC 20036
202-466-3500
j
zi to@dnlzi to. com
PATRICK R DELANEY
DITTHAVONG STEINER P.C.
44 Canal Center
Plaza Suite
322
Alexandria
V 22314
703-822-7140
pdelaney@dcpatent. com
Counsel for Petitioner
Becker Gallagher · Cincinnati OH · Washington D.C. · 800.890.5001
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QU STION PRESENTE
Is
summary
judgement proper in a
District
Court
when a factual
dispute
exists in a Design Patent
action
and the
District
Court substitutes its
own opinion
for
that of the ordinary observer?
Factual Disputes:
In Anderson
v
Liberty Lobby Inc. 477 U.S. 242
(1986),
this
court articulated the standard that a
District
Court
must
consider evidence presented by
the
non-moving party:
the evidence
of
the
non-movant
is
to
be
believed, and all
justifiable
inferences are to
be
drawn in
his
favor. Since,
Anderson and
without
further
guidance
from this Court, lower courts have
reformulated the standard to allow summary judgment
when there is a
genuine
issue as to material fact.
The
specific questions presented in this case:
1
Was
the
District Court in
error
in
granting
summary judgment of
non-infringement when the
record
included competent
and
unrefuted evidence
that
ordinary
observers
considered
the patented
and
accused designs to
be substantially th e same?
2. Was
the
District
Court's decision to ignore
the
evidence
presented
by Plaintiff,
the
non-movant,
in
direct
conflict
with the standard articulated by this
Court in
Anderson
4 77 U.S. 242?
Design Patents:
Infringement
of
a design
patent is
a
question of fact
not a question
of
law. (cite) The standard for
determining
design patent
infringement
was
established
by this
Court in
Gorham
Co v
White 81
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U.S. 511, (1871). In
Gorham this court created
a
test
that expressly favored
the
ordinary observer s
viewpoint when considering the overall similarity of
a
patented design
to
an accused design.
Since,
Gorham
and without
further
guidance
from
this
Court,
lower
courts have reformulated
the test
by
substituting the
opinion of
the
District Court
for
that of
the ordinary
observers.
The question
presented in this case is:
3.
Can
a
District Court
substitute
its own
observations
on
substantial
similarity
for
the
observations
of ordinary observers and thus change
the facts, without
impermissibly
altering
the
Gorham s ordinary
observers
test for design patent
infringement?
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P RTIES T THE PROCEEDINGS
1 Kenneth
Butler
Sr. Petitioner.
2.
Balkamp
Inc.
Respondents.
3. National Auto Parts Association Respondents.
4.
Genuine
Parts Company
Corporation Respondents.
5. Tien-I Industrial Corporation Limited Respondents.
6.
Yuh
Yeou Industry Co. Ltd.
Respondents.
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IV
T BLE
O
CONTENTS
QUESTION PRESENTED . . . . . . . . . . . . . . . . . . . . 1
PARTIES TO THE PROCEEDINGS
TABLE OF AUTHORITIES . . . . . . . . . . . . . . . . . .
v
PETITION FOR A WRIT OF CERTIORARI . . . . . . 1
OPINIONS BELOW . . . . . . . . . . . . . . . . . . . . . . . . . 1
JURISDICTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
CONSTITUTIONAL PROVISIONS INVOLVED . . 1
STATUTES AND REGULATIONS INVOLVED 2
STATEMENT OF THE CASE 2
I. THE PATENTS IN SUIT 3
II.
FACTUAL BACKGROUND AND TH
INFRINGEMENT 4
III. THE DECISION OF THE DISTRICT
COURT 6
IV THE DECISION OF THE FEDERAL
CIRCUIT 10
REASONS FOR GRANTING THE PETITION 11
I
THE DECISION ABUSED
PROP R
SUMMARY JUDGMENT STANDARDS 11
II. ORDINARY
OBSERVERS TEST THE
SOLE STANDARD FOR DESIGN PATENT
INFRINGEMENT 13
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v
III. A
JUDGE
IS NOT AN ORDINARY
OBSERVER . . . . . . . . . . . . . . . . . . . . . . . . . 15
IV. DESIGN PATENT INFRINGEMENT: A
F A C T U A L
D E T E R M I N T IO N
APPROPRIATE
FOR
A JURY . . . . . . . . . . . 16
CONCLUSION 18
APPENDIX
Appendix A Judgment in
the
United
States
Court
of Appeals for
the
Federal Circuit
June
5, 2015 App.
Appendix B Order on
Pending
Motions
in
the
United
States
District Court,
Southern
District
of
Indiana,
Indianapolis Division
September 3, 2014 App. 3
Appendix C U.S. Patent D 500,646 App. 20
Appendix D Ordinary Observer Test Undertaken
by
the Petitioner
[Fold Out
xhibit] App. 26
Appendix E 35 U.S.C.
§
7 App. 27
35 U.S.C.
§
271 App. 27
35 U.S.C.
§
289 App. 35
Fed.R.Civ.P.56 App.36
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VI
T BLE OF UTHORITIES
C SES
Anderson
v Liberty
Lobby Inc.
477 U.S. 242 1986) passim
Braun Inc.
v
Dynamics Corp.
of
America,
975 F 2d 821 Fed. Cir. 1992) 15, 16
Celotex
v
Catrett
4 77 U.S. 317 1986) 3, 10, 11
Crocs Inc.
v Int l
Trade Comm n,
598 F 3d 1294 Fed. Cir. 2010) 9
Egyptian Goddess Inc.
v
Swisa,
Inc.
543
F 3d
665 Fed. Cir. 2008) 6, 9, 10
Fanimation,
Inc.
v Dan s Fan
City Inc.
Case
No. 1:08-cv-1071-TWP-WGH, 2010 U.S.
Dist . LEXIS 134526 S.D.
Ind
Dec. 16, 2010) 7
Goodyear Tire
Rubber Co v Hercules Tire
Rubber
Co.
162 F 3d 1113 Fed. Cir. 1998) 15, 16
Gorham Co v
White
81 U.S. 511 1871) passim
Kustom Signals Inc.
u Applied
Concepts Inc.
264
F 3d 1326 Fed. Cir. 2001) 9, 11
LA
Gear Inc.
v Thom MeAn Shoe
Co.
988 F 2d 1117 Fed. Cir. 1993) 17
Richardson
v
Stanley Works Inc.
597 F 3d
1288 Fed. Cir. 2010) 8, 11
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Vll
Robert W ee
v
Dayton-Hudson
838 F 2d 1186 Fed. Cir. 1988) 16
CONSTITUTION
U.S. Const.
amend
VII 1, 17, 18
ST TUTES
ND RULES
28 U.S.C. § 1254 1) 1
35 U.S.C. § 171 2
35 U.S.C. § 271 2
35
U.S.C. § 289 16
Fed. Cir.
R
36 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
Fed.
R
Civ. P. 56 2
Fed. R Civ. P. 56 c) 17
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BL NK
P GE
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PETITION
FOR
WRIT OF CERTIOR RI
Petitioner,
Kenneth Butler
Sr., an individual and
U.S. citizen
residing
in the
State
of Connecticut,
respectfully
petition this court
for a
writ
of certiorari
to
review
the
judgment of
the United States Court
of
Appeals
for the Federal
Circuit in
this case.
OPINIONS BELOW
The non-precedential
opinion
of the United States
Court of Appeals
for the Federal
Circuit
is not officially
reported,
but
is
available
at 2015
WL 3528264, and
reproduced
in the
Appendix
hereto ( App. ) at App. 1-2.
The
opinion of
the
District Court for the Southern
District of Indiana is not officially
reported, but
is
available
at 2014
WL 4370691,
and
reproduced
atApp.
3-19.
JURISDI TION
The
judgment
ofthe Federal
Circuit
was entered
on
June 5, 2015. App.
1
The
jurisdiction of
this court
is
invoked
under
28 U.S.C. § 1254(1).
CONSTITUTION L PROVISIONS INVOLVED
The Seventh Amendment of the United States
Constitution
provides:
In Suits at common law, where the value in
controversy shall exceed twenty dollars, the
right
of trial by
jury shall be
preserved,
and no
fact tried
by
a jury, shall be
otherwise
reexamined in any Court of
the
United
States,
than according to the rules of the common law.
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2
ST TUTES ND REGUL TIONS INVOLVED
This case involves
provisions of
the Patent Act, 35
U.S.C. § 171 entitled
Patents
for
Designs
is set forth
at
App. 27. 35 U.S.C.
§
271
entitled Infringement of
Patents is set
forth at
App. 27-35. This case also
involves provisions
of
the Federal Rules of Civil
Procedure: Rule 56 entitled Summary Judgment is
set
forth
at
App. 36-39.
ST TEMENT OF
THE C SE
This
case
raises questions concerning the ability of
patent owners to fairly protect
their novel
designs.
Plaintiff/Petitioner,
Mr. Butler filed suit with a
jury
demand, exercising his
right for
the factual issue of
infringement
to be
heard
by
a
jury
as the
trier
of
fact.
This Court in
Gorham
81 U.S. at 511 established
the ordinary
observer test
for the determination
of
substantial similarity between the
patented
and
accused designs.
if,
in the
eye
of the 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
observer,
inducing
him
to purchase one supposing
it
to be the
other, the first one patented
is
infringed
by
the other.
Gorham
at
528.
Plain
iffprovided
unrefuted evidence
from ordinary
observers at
App.
26
which
was
ignored
by the District
Court. The
Respondents
did not provide any
factual
evidence at the District
Court, only opinion.
The
District Court
substituted its
own observations
for
those of
the relevant
and admissible
evidence
of the
ordinary
observer
which demonstrated substantial
similarities between the
patented and
accused designs.
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3
The approach of the District Court contravenes with
this Court's
express precedent
in
Gorham
and abuses
the summary judgment standards established in
Anderson 4 77 U.S.
at
242, Celotex u Catrett 4 77 U.S.
317 (1986), and their
progeny.
Only this Court can
correct this clear
departure
from
its
binding precedent.
I THE PATENTS IN SUIT
This is a patent infringement action
in
which
Kenneth Butler Sr. ( Petitioner ),
seeks
to enforce U.S.
Design Patent No. 500,646
(the
646 Patent ) entitled
Tool Handle. App. 20-25.
This
patent claims a design
for a tool
handle
that
is used with
socket wrench sets.
The
'646
Patent
had a
single
claim: [T]he Ornamental
design
for a tool
handle, as shown and
described.
The
'646 Patent also includes seven figures that
illustrate
the
claimed design:
Fig l
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4
II FACTUAL BACKGROUND ND THE
INFRINGEMENT
Petitioner manufactures and
sells tools
though
his
company
KB tools, Inc.
In
2003,
Petitioner invented
a
new
design for a tool
handle used with socket
wrench
sets,
and applied
for a
design patent. The
'646
Patent
at was issued
on
January
11, 2005,
with Petitioner
being
the
exclusive licensee. App. 20-25.
Respondents,
Balkamp
Inc. ( Balkamp ) and
National Auto Parts Association ( NAPA )
are
subsidiaries
of
Genuine Parts
Company Corporation
( Genuine Parts ). Respondents Tein-I
Industrial and
Yuh Yeou
Industry manufactured the
accused product.
Balkamp
imports
and
distributes
automotive
aftermarket
products to NAPA. Genuine Parts
imported
the accused
product
through its subsidiary
Balkamp and distributed
the
accused product
through
its
subsidiary NAPA.
Petitioner
personally
observed
the
accused
Spinning
Impact
Extension ( accused product )
on
sale
at
NAPA's retail store, and immediately
recognized
it
as substantially similar to
the
'646
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5
Patent.
App. 26. Before filing
suit,
Petitioner
contacted
Respondents
and conducted a
survey of
purchasers
at
a NAPA
store and found
that
the purchasers
were also
confused by the
similarity of
design.
App. 26. Petitioner
filed
suit in
2012,
requesting
a
trial by
jury.
Petitioner alleges the accused product applies the
design
of
the
'646
patent
or
is
a colorable
imitation
thereof.
The accused product comes in
three sizes
shown
below:
front
I ell
VX riw
7 Length l
Pan 'i61-
1 07
1
.(I)
l/2 Drive- H ' Length
(Part 461-5XOI'il
In 2012, Petitioner filed
suit
for infringement of the
646 patent against
Respondents
in the United States
District Court for
the Southern
District of Indiana. On
December 3, 2013, the parties filed a joint claim
construction
statement and,
on December
31,2013,
the
Parties
filed
their initial
arkman
claim construction
briefs and
Respondents filed their motion for
summary
judgment
of non-infringement.
In
support of its
opposition to Respondent s motion for
summary
judgment, Petitioner submitted unchallenged survey
evidence (App. 26)
demonstrating substantial
similarity between
the
accused
product and the
patented
design
sufficient
to establish a genuine issue
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6
of
material
fact that should
have
precluded
summary
judgment ofnon-infringement.
III. THE
DE ISION
OF THE DISTRI T OURT
The District
Court factored out functional
aspects of
the '646 Patent during
claim
construction, and
adopted
The ornamental design
of
a tool
handle,
as
shown
and
described,
excluding the functional front and rear
square
drive ends.
In rendering its determination
on infringement,
the
District Court
identified what
it observed
as differences
in
the appearance of the
patented
design and the
accused product.
These were
differences noticed
by
the
Court,
not
by an
ordinary
observer
and by the Court
looking at
photographs of the accused product,
not
an
ordinary
observer
looking
at the actual physical
product.
Plaintiffs
evidence
was gathered
at
the
point
of sale
NAPA
stores of Respondents, from ordinary
purchasers
in the
setting
of an ordinary purchase.
1
Where
a design
contains
both functional
and
non-functional
elements,
the
scope of
the
claim must
be construed
in order to
identify
the
non-functional aspects of
the
design as
shown in the
patent. See Egyptian Goddess Inc. v Swisa Inc.
543
F.3d
665,
680 Fed. Cir. 2008).
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7
The
Court s personal observations included
that
'646
patent
is knurled along its entire length while the
accused product had
unknurled
portions
at
each
end
of
the
cylindrical
body
and that
the back end
of the
accused product extends farther than the patented
design. App. 15. These minor differences were also
observable by
the
ordinary observers, but
apparently
not considered to be distinguishing factors giving such
attention
as
a purchaser usually gives to ordinary
observers. t
is
important
to
note
that in the context of
a tool handle, a
purchaser may
give
less
attention to
the
aesthetics than a
purchaser
of a ceiling fan with
unique
blades
that looks like palm leaves.
Fanimation
Inc. v Dan s
Fan
City, Inc.,
Case
No. 1:08-cv-1071-
TWP-WGH,
2010 U.S.
Dist. LEXIS 134526
(S.D.
Ind.
Dec. 16, 2010)
at
p. 11. The
District
Court
while
identifying
the
design distinctions noticed by
the Court
in substituting
its
observations
for
those of
an ordinary
observer
failed to
comprehend different
levels of
attention
given
by
ordinary
observers
based
on product
types.
0
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8
Element
Descri gtion
1 Front male) square
drive
or Front
adapter
2 Cylindrical
extension
shaft or
Cylindrical front
end
portion
3
Tapered
front
end
4 Unknurled,
reduced
diameter
front
end
or
Untapered
front
end
5
Knurled
handle
or Knurled portion of
the
handle
6
Beveled or
tapered
back end
7
Rear
female) square
drive
or Square
back adaptor
The District Court s approach
in
considering
functional features while determining
design
infringement is incorrect. Rather than
considering
the
design
as a whole, the District Court
should have
considered the ornamental
features ofthe
design
as a
whole. ichardson
v
Stanley Works Inc. 597 F.3d
1288, 1293-1294 Fed. Cir. 2010).
The
District
Court
did
not consider, or
discuss, the
survey evidence demonstrating actual confusion
amongst twenty eight
of
the twenty eight ordinary
observers
regarding the
accused design
and the
patented design. Instead, the
District
Court
deemed it
proper to make its
own
independent
observations
not
within the
context
of
an
ordinary
observer
and decide
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itself
whether or
not the
designs were
substantially
similar.
A Summary
Judgment
of non-infringement was
entered in this
matter
on
September
3, 2014,
with the
District Court recognizing
that:
The
sole
test
for
determining whether
design
patent
has been infringed
is
the
ordinary observer test Egyptian Goddess
543 F.3d at
678. Under this
test,
a
product is
infringed if
an ordinary observer,
familiar
with
the prior art and giving such attention
as a
purchaser
would
usually give, would
be
deceived
into
believing
that
the accused
product
is
the
same as the
patented
design.
Crocs Inc.
598 F.3d at 1303 (citing id. at 681). Although
patent infringement is a question of fact,
summary
judgment may be appropriate when
there is no genuine issue of material fact
or
when,
drawing
all factual inferences in favor of
the nonmoving
party,
no reasonable
jury
could
return a verdict for the
nonmoving
party.
Kustom Signals Inc. v Applied concepts Inc.
264 F.3d 1326, 1332 (Fed. Cir. 2001). App. 12.
The District Court concluded that the patented and
accused
designs
are not
substantially similar
based
solely on its own visual
observation
and
comparison
of
photos ofthe
accused product
and the patented design.
In doing so, the District Court completely disregarded
Petitioner's survey evidence wherein
every
single
ordinary
observer
found the
designs
to be substantially
the same. In fact,
the
District Court did not
even
mention
the
survey evidence in its written opinion.
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10
The
District
Court
erroneously
applied the ordinary
observer s test
by
a) substituting its
own observations
and
opinion
as
a
non-ordinary consumer
for
that
of the
ordinary consumer in finding
non-infringement,
and
ignored
the rules of
evidence
in
b)
disregarding
the
survey
evidence App. 26)
of ordinary observer which
created
a
genuine issue of
material
fact
which should
have precluded summary judgement.
IV THE DECISION OF THE FEDER L
CIRCUIT
On
appeal,
the
Federal Circuit affirmed
the
District
Court s
grant
of summary
judgment per
curiam,
without opinion,
under
Rule 36.
By
affirming the
summary
judgment,
the
Federal Circuit supported
the
methodology wherein District Courts
are not
required
to consider competent evidence that
demonstrates
substantial
similarity between
the
infringing design
and
the patented
design. The Federal Circuit
has
given
District Courts
the
authority to ignore
the
evidence of
ordinary
observers
test,
and decide the
issue of design
patent infringement based on
their
personal
evaluation. This decision
of
the
Federal Circuit
impermissibly
alters Gorham
and
Egyptian Goddess as
it
allows
District Courts to replace ordinary observers
from
the
ordinary observers test,
and
impermissibly
alters Anderson
and
Celotex
v
Catrett
and their
progeny in
the
established standard
for
summary
determinations The Federal
Circuit s
judgment
warrants
review and correction by this
Court.
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11
RE SONS FOR GR NTING THE PETITION
I THE
DECISION
BUSED
PROPER
SUMM RY JUDGMENT ST ND RDS
Summary judgment
is
improper
when
there exists
a
genuine dispute on
an
issue of
material fact. Kustom
Signals Inc.
v
Applied Concepts Inc. 264 F.3d 1326,
1332
(Fed. Cir. 2001). When the non-moving party
bears the burden
of proof
at
trial,
summary judgment
is only
proper
if the non-movant fails to make
an
evidentiary showing sufficient to establish the
existence
of an
element essential to
that
party's case.
Celotex Corp.
4 77 U.S.
at
322.
The
Petitioner
produced
survey
evidence
during discovery, (discovery had
not
yet
closed
at
the time of
the entry
of
summary
judgement)
that
demonstrated
substantial similarity
between
the
designs
resulting
in
a likelihood
of
confusion amongst
ordinary observers.
2
In addition,
when
the non-moving
party
bears
the burden
of proof
at trial, the moving party must
prove
that there is
an
absence of
evidence to support
the non-moving
party's
case.
Celotex Corp.
477 U.S. at 317.
The Respondents
failed to meet
its
burden
of proving absence o f
evidence
of
infringement.
Design patent
infringement focuses only
on
ornamental aspects of the patented designs.
Richardson
597 F. 3d at 1293. The survey participants
were
tool users
and understood that
the
functionality
of
the
infringing product
was different from its design.
2
Plaintiff,
to survive
defendant's summary judgment
motion,
need
only
present
evidence
from which
a
jury might return
a
verdict in his
favor.
See Anderson
477 U.S. at 257.
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These ordinary observers knew that
the
function
could
be accomplished
with
different
ornamentation
and only
considered
the ornamental
features during their
observation. The survey evidence established that the
participants
were
deceived
into
believing
that
the
accused
product
was the same as
the patented
design.
The District Court
is
not
free to disregard this
competent evidence
offered
by
the Petitioner
because
the
evidence
of
the
non-movant
is to
be
believed,
and
all justifiable inferences
are to
be
drawn
in
his favor.
Anderson 477 U.S. at 255.
Nevertheless,
the
District
Court
did
not
consider Petitioner's survey evidence
during determination of
a
summary
judgment for
non
infringement, and did
not
even mention
nor
refer
to
this
evidence
in its written
decision.
The
District
Court agreed that there were certain
similarities between
the two products:
t is true
that there
are certain
similarities
between
the two
products,
including the
cylindrical body of both
tool
handles
with
extensions
protruding from
the
front end
of
the
main body. In
short, it
is true as
Plaintiff
argues
that
the
patented design and
the
accused
product
share certain
general similarities,
to
wit,
they are both
tool
handles with unprotected
functional front
and back
ends that
have
cylindrical
main bodies with knurling
located
somewhere on
the
handle.
[App. 14].
But ignored the impact such
similarities
would have
on
ordinary
observers.
The uniquely
visually
appealing,
balanced and unified
impression
presents a common
visual appearance to
the
ordinary
observer. This
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3
similarity
is a matter
of fact to be determined by
a
presentation of
evidence to
the trier
of
fact,
in this
instance
a
jury, and not
to
be
decided
on
summary
judgment, even before the close
of
discovery.
The District Court abused
the
established
summary
judgment
standard
by
entering
summary judgement
without finding that there was
no
genuine issue of
material
fact such that
no
reasonable
jury
could
return
a
verdict
for
the non-moving party. In determining
summary judgment
of non-infringement,
the
District
Court should have inquired
whether
or not
a
reasonable jury
could conclude
that ordinary
purchasers would
find the
designs
to
be
substantially
the same.
The proper way
to make this inquiry
was
to
consider
the
evidence
already
before
the Court
(App.
26),
deny
summary judgement, allow discovery to be
completed and
have the factual determination tried
before the jury.
The Federal Circuit by affirming
the
District
Court s
decision
maintained that District
Courts
are
not required to consider, even at
the summary
judgment
stage, competent evidence that validates
confusion
amongst ordinary purchasers regarding
the
patented and accused
designs.
II. ORDINARY OBSERVERS
TEST
THE
SOLE STANDARD
FOR DESIGN P TENT
INFRINGEMENT
This
Court
addressed
the
proper
test for design
patent infringement in
Gorham
81 U.S. at 526.
We are
now prepared
to
inquire
what is the
true test of identity of
design.
Plainly, it
must be
sameness of appearance, and mere
difference
of
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14
lines in the drawing or sketch,
a
greater or
smaller
number
of
lines, or slight variances
in
configuration,
if
insufficient
to
change the
effect
upon the
eye, will
not destroy
substantial
identity.
This
Court further articulated in
Gorham
81 U.S.
at 528:
We hold,
therefore, that
if,
in the eye of
the
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
observer,
inducing
him to purchase
one supposing it
to
be
the
other,
the
first one
patented is
infringed by
the other.
To determine
infringement of
a
design patent,
this
Court in Gorham
81 U.S.
at
528,
created
a test
that
does not
rely upon
expert viewpoints but instead favors
unsophisticated and general ordinary
observers
when
considering the overall
similarity
of a patented
design
to an
accused
design. The
standard set forth
in Gorham
rejects the detailed analysis that might find slight
variances in configuration and instead relies
upon
the
effect
upon the
eye
of the
ordinary
observer.
The ordinary observers
test
is
best
conducted
by
a
survey of ordinary purchasers
who can
be, and were,
found at the place of business of
Respondent,
NAPA.
(App. 26) Determining
whether
purchasers and/or user
of
products would be
deceived
into
buying
one product
while
thinking
they are
buying
another is
based upon
perceived
substantial
similarities in the designs,
by
the
ordinary observer.
To
the ordinary observer, the design
of the '646 Patent and the
design
of the
Accused
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Product
appear
visually
similar.
The
Plaintiffprovided
twenty
eight instances of ordinary
observers
confused
or
deceived
by
observation
into
thinking
that
the
accused
device
was depicted in
the
design
patent
drawings. The Respondents did
not
refute
this
evidence.
The Respondents did not
present any
survey
or other
evidence
from
any
ordinary observers. The
District Court did not address this evidence
in its
decision.
III A
JUDGE
IS NOT N ORDINARY
OBSERVER
This
Court established in
Gorham 81
U.S. at
528,
that the viewpoint
of
an
ordinary
observer, is the
relevant
test
m
determining
design
patent
infringement.
The Federal Circuit in affirming
the
District Court's
holding
allowed
the observations
of
the
Court
to
substitute
for
those of
the
ordinary observer. This
directly contravenes with
the
Supreme
Court's
express
admonition
against
reliance on
non-ordinary
observer's
viewpoints. A
judge
is a
non-ordinary observer by
virtue of education,
training
and
skill.
In raun
Inc.
u
Dynamics Corp.
of
America 975
F.2d
821 (Fed. Cir.
1992), the
court expressly
recognized
that
the
jury
represented
a
sampling of ordinary observers.
A
jury
of ordinary observers would have been appropriate in
this
case, instead
of entering
summary judgment
based
upon
a
District
Court's
personal
view.
The
Federal Circuit in Goodyear Tire & Rubber
Co
v Hercules Tire Rubber Co. 162
F.3d
1113, 1117
(Fed. Cir. 1998),
found
the
proper ordinary observers
to
be
truck
drivers
and fleet
operators who were
the
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16
purchasers
and users of
the
tires that
incorporated the
patented
design. In Braun the
Federal Circuit
held
the
ordinary
observer
to
be
a
member of
the
general
public
or an ordinary juror. In departing
from the
standards
set
forth in
Gorham
and
applied in
Goodyear
and
Braun the Federal Circuit,
in
affirming
the decision
of
the
District Court here,
has
shifted
the
infringement
inquiry away
from the
ordinary observers.
The
methodology wherein a
District
Court can
conduct
design
patent
infringement analysis from
their
own personal points of
view,
and
not through the eyes
of ordinary
observers, as Gorham mandates, IS
substantively and procedurally
flawed.
IV DESIGN PATENT INFRINGEMENT: A
F C T U L D E T E R M I N T I O N
APPROPRIATE
FOR
A JURY
In
35 U.S.C.
§ 289 infringement
is
defined as
unauthorized manufacture
or
sale of
the
patented
design, or any colorable
imitation thereof. App. 35.
Design
patent
infringement requires
a
showing that
the accused design is
substantially the
same as the
claimed design. Gorham 81 U.S. at 528; Robert
W
Lee
v
Dayton-Hudson
838 F.2d
1186,
1187
(Fed. Cir.
1988). In
conducting such analysis
the patented
design
is
viewed
in its entirety, as
it
is claimed. A
dispute
is
genuine
if the
evidence
is
such that
a
reasonable jury
could
return a
verdict
for the
nonmoving party.
Anderson 4 77 U.S.
at
248. There could
be
no doubt
that
there were genuine disputes
of
material facts in
this case, as
the
survey
evidence submitted
by
the
Petitioner
clearly established infringement of
the '646
patent.
The weighing of
the
evidence and
the
drawing
of
legitimate
inferences from
the
facts
are
jury
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17
functions, not
those
of a
judge. Anderson
4 77 U.S. at
242,255.
Under Rule 56 c
of
the Federal
Rules
of Civil
Procedure,
the
judge's
function
at
the summary
judgment
stage
is
not himself
to
weigh
the
evidence
and
determine the
truth of
the
matter,
but to
determine w hether
there
is a
genuine issue
for
trial.
Instead
the District
Court,
acting
as a
fact
finder,
wrongly made
its own finding of non-infringement.
The
District
Court should not have decided the issue as a
fact finder.
Design
patent infringement
is a
question of
fact,
which a
patentee
must prove by a preponderance of the
evidence.
LA
Gear Inc.
v
Thom MeAn Shoe
Co.
988
F.2d 1117 1224 Fed. Cir. 1993). The Anderson
standard
should
apply equally to Petitioner because the
Petitioner presented survey
evidence
that
demonstrated disputes with regard to material facts.
The disputed
material
facts are genuine and
must be
heard by a jury to determine
the
verdict
of
infringement. Petitioners right to
secure
a jury trial for
an issue which
belongs to
the jury was denied by
the
improper entry of summary determination. The
Federal
Circuit's affirmance is
a
denial of Petitioner's
constitutional right to a jury trial.
This Court
should
grant
certiorari
to decide
whether
in a
design patent
infringement action, where a jury is
timely demanded,
the Seventh Amendment permits
judges
to
resolve,
as
a
matter oflaw,
a
genuine factual
dispute regarding
design
patent
infringement. In
affirming
the District
Court's
finding
of
no
infringement,
the Federal Circuit
ignored
the
precedent of
this Court, its own
binding
precedent and
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18
more importantly the right
to a
jury
trial provided
by
the
Seventh
Amendment.
ON LUSION
For
the foregoing reasons Petitioner
respectfully
requests
that the Court grant this Petition
for A
Writ
of Certiorari and reverse the judgment
of
the Court of
Appeals
for
the
Federal Circuit.
Respectfully submitted
JOSEPH J.
ZITO
ounsel o Record
DNL
ZITO
1250
Connecticut
Ave, NW, Suite 200
Washington
DC 20036
202-466-3500
jzi
PATRICK R DELANEY
DITTHA
VONG
STEINER
P.C.
44 Canal
Center
Plaza Suite 322
Alexandria
VA 22314
703-822-7140
pdelaney@dcpa en .com
ounsel for Petitioner