butler v. balkamp - cert. petition

8/20/2019 Butler v. Balkamp - Cert. Petition

1/27

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


2/27

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


3/27

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?


4/27

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.


5/27

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


6/27

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


7/27

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


8/27

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


9/27

BL NK

P GE


10/27

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.


11/27

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.


12/27

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


13/27

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


14/27

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


15/27

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).


16/27

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


17/27

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


18/27

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.


19/27

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.


20/27

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.


21/27

12

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


22/27

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


23/27

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


24/27

15

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


25/27

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


26/27

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


27/27

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

[email protected]

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

butler v. balkamp - cert. petition

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