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Case No. 12-cv-2346-DMS (WMC)1

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John Karl Buche (SBN 239477)

Lindsay D. Molnar (SBN 275156)

BUCHE & ASSOCIATES, P.C.875 Prospect, Suite 305

La Jolla, California 92037

(858) 459-9111(858) 459-9120 Fax [email protected]

[email protected]

Attorneys for Defendants Hire Order, LTD and

Global One Sales and Distribution Sportsman Eyewear, LLC.

UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF CALIFORNIA

OAKLEY, INC., a Washington corporation,

Plaintiff,

v.

HIRE ORDER, LTD., d/b/a HANDS-

FREEVIDEO.COM, a Virginia corpora-

tion, and GLOBAL ONE SALES ANDDISTRIBUTION SPORTSMAN EYE-

WEAR, LLC, a Pennsylvania company,

Defendants.

Case No. 12-cv-2346-DMS (WMC)

NOTICE OF MOTION FOR PARTIAL

SUMMARY JUDGMENT FOR NON-

INFRINGEMENT

Judge: Hon. Dana M. Sabraw

Hearing Date: March 29, 2013Time: 1:30 p.m.

Courtroom: 13A – 13th

Floor

TO THE CLERK OF THE COURT AND COUNSEL OF RECORD:

PLEASE TAKE NOTICE THAT Defendants Hire Order, Ltd., d/b/a HandsFreeVideo.com

and Global One Sales and Distribution Sportsman Eyewear, LLC (collectively, “Defendants”) hereby

move for Partial Summary Judgment of Non-Infringement and that said motion will be heard by the

Honorable Dana M. Sabraw, United States District Court for the Southern District of California, Ed-

ward J. Schwartz U.S. Courthouse, 221 West Broadway, Courtroom 13A-13th

Floor, San Diego, Cali-

fornia 92101, on March 29, 2013, at 1:30 p.m.

Case 3:12-cv-02346-DMS-WMC Document 17 Filed 12/27/12 Page 1 of 2




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Plaintiff Oakley, Inc. (“Oakley”) accuses Defendants of infringement with respect to U.S. Pa-

tent No. D523,461 (the “„461 Patent”). Pur suant to Fed. R. Civ. P. 56, Defendants seek partial sum-

mary judgment of non-infringement as to the „461 Patent. Defendants do not make, use, offer to sell,

or sell any products accused of infringing the „461 Patent. Accordingly, there is no genuine issue of

material fact and Defendants are entitled to judgment of non-infringement as a matter of law.

Defendants rely on this Notice of Motion and Motion, the Memorandum of Points and Au-

thorities, the supporting Declaration of John K. Buche exhibits attached thereto, the records before

the Court in this matter; and any additional evidence or argument that may be presented to or at the

hearing.

Dated: December 27, 2012Respectfully Submitted,

/s/ John K. Buche

John K. Buche

BUCHE & ASSOCIATES, P.C.

Attorneys for Defendants Hire Order, LTD., d/b/a HandsFreeVideo.com and Global One Sales and Distribution Sportsman Eyewear, LLC

Case 3:12-cv-02346-DMS-WMC Document 17 Filed 12/27/12 Page 2 of 2




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John Karl Buche (SBN 239477)Lindsay D. Molnar (SBN 275156)BUCHE & ASSOCIATES, P.C.875 Prospect, Suite 305La Jolla, California 92037

(858) 459-9111(858) 459-9120 Fax [email protected]@buchelaw.com

Attorneys for Defendants Hire Order, Ltd. andGlobal One Sales and Distribution

UNITED STATES DISTRICT COURTFOR THE SOUTHERN DISTRICT OF CALIFORNIA

OAKLEY , INC., a Washington corporation,

Plaintiff,

v.

HIRE ORDER, LTD., d/b/aHANDSFREEVIDEO.COM, a Virginiacorporation, and GLOBAL ONE SALESAND DISTRIBUTION SPORTSMANEYEWEAR, LLC, a Pennsylvania com-pany,

Defendants.


DEFENDANTS HIRE ORDER, LTD

AND GLOBAL ONE SALES AND DI-STRI-BUTION SPORTSMAN EYE-WEAR, LLC’S MEMORANDUM OF

POINTS AND AUTHORITIES IN

SUPPORT OF MOTION FOR PAR- TIAL SUMMARY J UDGMENT ON

THE ISSUE OF NONINFRINGE-MENT

Judge: Hon. Dana M. SabrawHearing Date: March 29, 2013 Time: 1:30 p.m.Courtroom: 13A – 13th Floor

ORAL ARGUMENTSCHEDULED

Case 3:12-cv-02346-DMS-WMC Document 17-1 Filed 12/27/12 Page 1 of 28




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TABLE OF CONTENTS

I. INTRODUCTION ......................................................................................................................... 5

II. UNDISPUTED FACTS ................................................................................................................. 6

A. PLAINTIFF’S INFRINGEMENT CONTENTIONS .................................................................... 6

B. THE ‘461 PATENT & THE BLACK DRAWING LINES OF FIGURES 1-6 DEFINE WHATIS COVERED BY THE PATENT CLAIM................................................................................... 6

C. THE ACCUSED PRODUCTS .................................................................................................... 10

III. LEGAL ARGUMENT ................................................................................................................. 14

A. SUMMARY JUDGMENT SHOULD BE GRANTED WHERE, AS HERE, THERE ARE NOGENUINE ISSUES OF MATERIAL FACT AND THE MOVING PARTY IS ENTITLED TO

JUDGMENT AS A MATTER OF LAW .................................................................................... 14

i. The Standard for Summary Judgment of Non-Infringement in Design Patent Cases. ....... 14

B. THE ‘461 PATENT IS EXTREMELY LIMITED IN SCOPE AS A RESULT OF EXTENSIVEPRIOR ART AND THE OBVIOUSLY FUNCTIONAL ELEMENTS OF THE DESIGN. ...... 16

i. The Functional Elements of the ‘461 Patent Are Not Protectable. ..................................... 16

ii. Prior Art Limits the Scope of the ‘461 Patent Greatly and Must be Considered in Terms of Infringement and Claim Construction. ............................................................................... 17

C. ANY PURPORTED PROTECTABLE ELEMENTS OF THE ‘461 PATENT AND THEACCUSED PRODUCT ARE VASTLY DIFFERENT. .............................................................. 21

IV. CONCLUSION ............................................................................................................................ 28





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TABLE OF AUTHORITIES

CASES Abbott Labs. v. Mead Johnson & Co., 1996 WL 332449 (N.D.Ill. June 13, 1996) .............................. 22

Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365 (Fed. Cir. 2006). ........................ 15

Antonious v. Spalding & Evenflo Cos., Inc., 217 F.3d 849 (Fed.Cir.1999) .......................................... 22

Apple, Inc. v. Samsung Electronics Co., Ltd., 2012 WL 3071477 (N.D. Cal. 2012) ............................. 7

Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997 (N.D. Ill. 2010) ............................... 21, 26

Contessa Food Products, Inc. v. Conagra, Inc.,282 F.3d 1370 (Fed. Cir. 2002) .................................. 6

Door–Master Corp. v. Yorktowne, Inc., 256 F.3d 1308 (Fed.Cir.2001)................................................. 6

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F. 3d 665 (Fed. Cir. 2008) ......................................... passim

Elmer v. ICC Fabricating, Inc., 67 F. 3d 1571 (Fed. Cir. 1995). ......................................................... 14

Gen. Elec. Co. v. Nintendo Co., Ltd., 179 F.3d 1350 ........................................................................... 13

HR U.S. LLC v. Mizco Int'l, Inc., 2009 WL 890550 (E.D.N.Y. 2009) ........................................... 14, 22

In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967) ....................................................................... 6

In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988)............................................................................... 15

In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). ...................................................................... 6

Int'l Gamco, Inc. v. Multimedia Games Inc., 732 F. Supp. 2d 1082 (S.D. Cal. 2010) ......................... 13

Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982). ................................................................ 15

Minka Lighting, Inc. v. Maxim Lighting Int'l, Inc., 2009 WL 691594 (N.D. Tex. 2009) ..... 7, 15, 20, 22

Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007) ................................... 13

Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed.Cir.1997)..................................... 14, 15, 20

Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d 1182 (Fed. Cir. 1993) .............................. 13

Seirus Innovative Accessories, Inc. v. Cabela's Inc., 827 F. Supp. 2d 1150 (S.D. Cal. 2011) ............. 16





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T.W. Elec. Serv., Inc. v. Pacific Elec. Contractors Ass'n, 809 F.2d 626 (9th Cir.1987). ...................... 13

Tropicana Prods., Inc. v. Land O'Lakes, Inc., 286 F.Supp.2d 343 (D.Del.2003) ................................ 14

Unidynamics Corp. v. Automatic Products Intern., 157 F. 3d 1311 (Fed. Cir. 1998) .................... 14, 15

S TATUTES Fed. R. Civ. P. 56(a). ............................................................................................................................ 13





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MEMORANDUM OF POINTS AND AUTHORITIES

Defendants Hire Order, Ltd. and Global One Sales and Distribution Sportsman Eyewear, LLC

(collectively, “Defendants”) hereby submit this memorandum in support of their motion for partial

summary judgment on the issue of noninfringement of U.S. Patent No. D523,461 (the “‘461 Patent”).

I . INTRODUCTION

To establish liability under any theory of infringement, a patentee must first demonstrate in-

fringement; however, Plaintiff Oakley, Inc. (“Oakley”) has failed to do this and cannot do so as a

matter of law because the accused product simply does not possess any protectable elements that are

required by the ‘461 Patent. Defendants argue simply in this motion that no ordinary observer famili-

ar with the prior art could ever confuse the accused products with what is depicted in the ‘461 Patent.

The details provided in the drawings of the ‘461 Patent really matter. The figures of a patent are pro-

vided for a reason, namely, they provide the world notice of what is, or is not, the property of a patent

holder. If this were not the case, there would not be a series of figures in every design patent that de-

fines the specific ornamental appearance claimed from different angles. The design specifics of the

figures are even more important with a product line such as sunglasses, which have been around for

decades—and the small differences should be given great weight in a field so occupied with similar

prior art. An inescapable truth for this case is that all sunglasses look somewhat similar if you get far

enough away—they all generally have some lenses, ear rests, sit on the wearer’s nose, and they might

even wrap around the wearer’s face. So, the Court has to look at the individual drawings of the patent

in view of the prior art and the details that the drawings specify to (a) first construe the claims and

assess what is within the realm of protectable subject matter, and (b) to assess whether the accused

product reads on protectable elements, if any to the Plaintiff’s patent. Those general items that are

either (1) merely functional; or (2) in the prior art cannot be covered by the Plaintiff’s patent. Thus,





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the Court has a very important responsibility to assess the proper breadth of the single claim and to

avoid allowing the Plaintiff to use a narrow design patent to cover every pair of sunglasses simply

because sunglasses generally look and function like other sunglasses. The Defendants in this case are

small companies, and they do not have the resources of Oakley, but they are confident that the Plain-

tiff is overreaching with generalities to unfairly monopolize subject matter that should not be pro-

tected under the patent laws. Oakley obviously wants to control all sunglasses that have a wrap

around appearance, but they cannot claim those items that are not clearly set forth in their patent, or

which are commonplace to sunglasses in the prior art. Given that a design patent only offers protec-

tion confined to the ornamental appearance of an object actually shown, and the significant differenc-

es between the accused sunglasses and the ‘461 Patent Figures, the Court should enter judgment in

favor of Defendants on the issue of non-infringement. The scope of this partial motion for summary

judgment is specifically limited to the issue of infringement; however, Defendants reserve all rights to

challenge the ‘461 Patent by reason of validity inasmuch as further discovery is highly likely to result

in evidence that will have a bearing on validity. On the same note, Defendants reserve all rights to

challenge damages arguments on the issue of infringement inasmuch as discovery is likely to reveal

that Plaintiff’s damages are barred by reason of failure to mark under 35 U.S.C.§ 287.

I I. UNDISPUTED FACTS

A. Plaintiff’s Infringement Contentions

Plaintiff alleges that “Defendants manufacture, use, sell, offer for sale and/or import into the

United States eyewear the infringe Oakley’s intellectual property rights.” SeeDocket No. 1 at ¶ 10.

Plaintiff’s infringement contentions are further set forth in the Complaint in ¶11-21. Docket No. 1.

B. The ‘461 Patent & the Black Drawing Lines of Figures 1-6 Define What is Cov-ered by the Patent Claim.





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The ‘461 Patent contains six detailed figures which form the basis for the design patent, and

they are incorporated into the terms of the single claim which states: “The ornamental design for an

eyeglass component as shown and described.” Seethe Declaration of John K. Buche (“Buche Decl.”),

Ex. A at p. 1 (the “‘461 patent”). A review of the patent shows that each of the six figures feature

solid lines, which delineate the claimed design of the sunglasses—such solid lines indicate the design

in which Plaintiff claims protections. SeeBuche Decl., Ex., F at §15.49-15.50 (Manual of Patent Ex-

amination Procedure (“MPEP”) excerpts for line drawing interpretation). There are no broken lines

used in the figures of the patent. SeeBuche Decl., Ex., A, Figs. 1-6 (patent), so each of the broken

lines are crucial to identifying the Plaintiff’s claimed design.

The black lines of the patent drawings are important to defining the scope of the patent. See

Buche Decl., Ex., F at p. 2, §15.48 (MPEP). If lines are solid and in black, then they form a portion

of the design that is allowed, whereas only broken lines in drawings are not part of the claims. See

Buche Decl., Ex., F at pp. 3-5, § 1503.02 (III) (MPEP). Specifically, the Manual of Patent Examin-

ing Procedure states that:

The ornamental design which is being claimed must be shown in solidlines in the drawing. Dotted lines for the purpose of indicating unimpor-tant or immaterial features of the design are not permitted. There are noportions of a claimed design which are immaterial or unimportant. See Inre Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967) and In re Zahn, 617F.2d 261, 204 USPQ 988 (CCPA 1980).

See Buche Decl., Ex., F at p. 4, § 15.50 (III) (Emphasis added); see also Contessa Food Products,

Inc. v. Conagra, Inc., 282 F.3d 1370, 1378 (Fed. Cir. 2002)(abrogated on other grounds)(“If features

appearing in the figures are not desired to be claimed, the patentee is permitted to show the features in

broken lines to exclude those features from the claimed design, and the failure to do so signals inclu-

sion of the features in the claimed design.” [citing Door–Master Corp. v. Yorktowne, Inc., 256 F.3d

1308, 1313 (Fed.Cir.2001)]; Apple, Inc. v. Samsung Electronics Co., Ltd., 2012 WL 3071477 (N.D.





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Cal. 2012); Minka Lighting, Inc. v. Maxim Lighting Int'l, Inc., 2009 WL 691594, *2 (N.D. Tex. 2009)

(“A design patent is defined by the content of its drawing…”).

While sunglasses have obvious functional features, such as the arms of the glasses, the two

holes for the eyes and the nose bridge, Plaintiff’s ‘461 patent only depicts certain very specific details

of the sunglasses—presumably those aspect which differentiate it from the prior art (and which are

not found on the accused product of Defendant). First, when looking at the Accused Product and the

‘461 patent from the perspective of someone wearing the sunglasses, the ‘461 Patent has a distinct

design of the nose bridge, which is depicted in Figures 1-3of the patent:

Front of SunglassesAngled View

Excerpt fromFigure 1of the‘461 Patent

Front of SunglassesNo Angle


Back of SunglassesNo Angle


SeeBuche Decl., Ex. A, Figs. 1-3.

As shown above, very distinctive elements of the nose bridge include the exaggerated U-

shaped scoop on the top of the nose bridge which creates a horn-like design (hereinafter referred to as

the “horns”). This feature is also leveled into highly specific planes. This can be seen from all angles

of the sunglasses and is clearly an important part of the ‘461 Patent since Plaintiff has threeseparate

figures delineating the horns. In addition to the scoop/horns, Plaintiff has claimed the shape of the

nose bridge, such that it creates a protruding X-shape in the front of the sunglasses. SeeBuche Decl.,

Ex. A, Figs. 1-3, and 6.

Second, the ‘461 Patent has highly distinct button elements on the tops of the arms of the sun-





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glasses which were mandatory aspects of the ‘461 Patent, as depicted in Figures 1, and 3-5 of the

‘461 Patent. SeeBuche Decl., Ex. A, Figs.1, 3-5. Most obvious is the placement of and shape of the

buttons on each arm, which were specifically claimed. Looking at the sunglasses from the perspec-

tive of someone wearing the sunglasses, and as shown in Figure 1 of the ‘461 Patent, the right arm

has three buttons and the left arm has two buttons. SeeBuche Decl., Ex. A, Figs. 1, 4, and 5. Moreo-

ver, each of the buttons is situated on a specifically designed button podium(hereinafter “button po-

dium”) that elevates the buttons, and which feature stylized claw marks on their sides. See Buche

Decl., Ex. A, Figs. 1, 4.

In Figures 1and4, the ‘461 Patent goes to great lengths to use black solid lines to claim a de-

sign that forms an aggressive “M” like pattern on the side of the arms of the glasses, which rather

looks like claw marks (hereinafter referred to as “claw marks”) heading from top down, but which

stop short of the base of the arm. SeeBuche Decl., Ex. A, Figs. 1 and 4. Additionally, the arms and

buttons have a distinct rib-like textured pattern which is prominently depicted throughout the draw-

ings for the patent. SeeBuche Decl., Ex. A, Figs. 1 and 4. The style and number of buttons as well as

the rib-like textured pattern claimed in the ‘461 Patent are depicted below and referenced from the

prospective of someone wearing the sunglasses:

Back of SunglassesLeft Arm

Top of SunglassesLeft Arm

Side of SunglassesAngled View, Left Arm

Top of SunglassesAngled View

Right Arm – 3 buttons

Excerpt fromFigure 3

of the ‘461 Patent











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SeeBuche Decl., Ex. A, Figs. 1, 3, 4 and 5.

Plaintiff has also claimed the placement of its USB input on the left arm of the sunglasses, as

depicted below in an excerpt fromFigure 6 of the ‘461 Patent, which is the design of the bottom of

the sunglasses. SeeBuche Decl., Ex. A, Fig.6. The Plaintiff was very specific in claiming the USB

port, on one particular side of the glasses, as a feature of the ‘461 Patent. Had Plaintiff’s patent coun-

sel not wanted to include that feature in the design, the feature would have been depicted with broken

lines as required by the MPEP.

SeeBuche Decl., Ex. A, Fig.6.

Finally, the ‘461 Patent doesnotclaim a contour from the thicker part of the arms, which con-

tain the electrical equipment for the video recording system, to the end of the arms. SeeBuche Decl.,

Ex. A, Fig.6. This means that when the sunglasses are laid on a table, they lay flat and the end of the

arms touch the table as well (this would be opposed to the thicker part of the arm touching the table

and the end not). See Id. Such claim is depicted inFigure 6above.

C. The Accused Products

For purposes of providing background for the Court, Defendants’ Sportsman Eyewear® (the

“Accused Products”) comes in two models, the Mossy Oak® (see Buche Decl., Ex. B, Figs 10-16)

and Matte Black (seeBuche Decl., Ex. B, Figs 1-9)(photo images of accused products). Both models

have identical structures physically, although one features an attractive camouflage pattern.

USB Input





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First, the Accused Product has a different nose bridge from the ‘461 Patent and the horns and

X-pattern are entirely absent. See Buche Decl., Ex. A, Figs. 1, 2, 3, and 6Cf. Buche Decl., Ex. B,

Figs. 1, 3, 8-10 and 13. Instead of having an exaggerated U-shaped scoop on top with the horns, it

has a principally flat surface typical of prior art and other popular sunglasses. See Id. The front also

features holes for cameras not present in the ‘461 patent. The Accused Product features the same ba-

sic nose bridge that nearly any pair of sunglasses is required to have to accommodate a wearer’s nose.

There is also no X-shaped protrusion in the front of the nose bridge. Instead, the nose bridge is

smooth. The nose bridge of the Accused Products, when viewed from above also does not feature the

distinct planes of the ‘461 patent (seeBuche Decl., Ex. A, Fig.1, 5)(patent figures); compare toEx.B,

Figs. 2, 11 (Accused Product to views).

Front of the Accused ProductAngled View

Front of the Accused Product Back of the Accused Product

The Accused Product has arms which are recognizably different from the drawings of the

‘461 Patent. There is no rib-like pattern texture along the arms—instead they are smooth. SeeBuche

Decl., Ex. A, Figs. 1, 4 and 5 (patent); Cf. Buche Decl., Ex. B, Figs. 1, 3, 5, 6, 13 and 14 (accused

images).

The Accused Products do not feature any claw marks on their sides but are instead smooth.

SeeBuche Decl., Ex. A, Figs. 1, 4 and 5Cf. Buche Decl., Ex. B, Figs.5, 6, 13 and 14.

The Accused Products do not feature buttons on ornate button podiums, but instead has plain





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buttons. SeeBuche Decl., Ex. A, Figs. 1, 3, 4 and 5Cf. Buche Decl., Ex. B, Figs. 1, 6, 7, 9, and 13.

As for placement of, style and number of buttons on the arms of the Accused Product (when

viewed from the perspective of the wearer), there areno buttons on the right sideand two buttons on

the leftside. SeeBuche Decl., Ex. B, Figs. 1-2, 5-7, 9, 11-14. Moreover, the sides of the arms facing

outward have a textured grip consisting of a series of indented circles in the shape of a rectangle,

which the ‘461 Patent does not have. SeeBuche Decl., Ex. A, Figs. 1 and 4; Cf. Buche Decl., Ex. B,

Figs. 5, 6, 13 and 14. The foregoing differences are illustrated below and referenced from the pros-

pective of someone wearing the sunglasses:

Back of AccusedProduct - Left Arm Top of AccusedProduct - Left Arm Bottom AccusedProduct -Left Arm Side View of Accused ProductLeft Arm

Top of Accused ProductRight Arm – No Buttons

Top of Accused ProductLeft Arm – 2 Buttons





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SeeBuche Decl., Ex. B. Figs 1, 6-8.

Further, the Accused Product has a specified placement for the USB input as well as an addi-

tional input slot for a memory/Micro SD card. Both inputs are on the right arm of the Accused Prod-

uct.

SeeBuche Decl., Ex. B. Fig 8.

Finally, the Accused Product has a contour from the thicker part of the arms, which contain

the electrical equipment for the video recording system, to the end of the arms. SeeBuche Decl., Ex.

B, Figs. 5, 6, 13 and 14. This means that when the sunglasses are laid on a table, the thicker part of

the arm would touch the table but the ends would not. This is dissimilar to the ‘461 patent which has

a flat bottom surface according to the patent Fig.6. SeeBuche Decl., Ex. A, Figs. 6.

USB input

Micro-SD input

Contour





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III. LEGAL ARGUMENT

A. Summary J udgment Should Be Granted Where, As Here, There Are No GenuineIssues Of Material Fact And The Moving Party Is Entitled To J udgment As AMatter Of Law

Summary judgment should be granted when the record evidence “shows that there is no genuine dis-

pute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ.

P. 56(a). “A fact issue is genuine if the evidence is such that a reasonable jury could return a verdict

for the nonmoving party.” Guidroz-Brault v. Mo. Pac. R.R. Co., 254 F.3d 825, 829 (9th Cir. 2001)

(quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Material facts are genuinely in

dispute only “if a jury could decide the issue either way, and its verdict would survive a motion for

judgment as a matter of law.” Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376, 1380

(Fed. Cir. 2007) (quotingGen. Elec. Co. v. Nintendo Co., Ltd., 179 F.3d 1350, 1353 (Fed. Cir. 1999))

(affirming summary judgment of noninfringement). Thus, the inquiry at summary judgment is

“whether the evidence presents a sufficient disagreement to require submission to a jury or whether it

is so one-sided that one party must prevail as a matter of law.” Paragon Podiatry Lab., Inc. v. KLM

Labs., Inc., 984 F.2d 1182, 1184-85 (Fed. Cir. 1993) (quoting Anderson, 477 U.S. at 252). In patent

cases, the burden of proof falls on the party asserting infringement. Applied Med. Resources Corp. v.

U.S. Surgical Corp., 448 F.3d 1324, 1333 (Fed. Cir. 2006). “Disputes over irrelevant or unnecessary

facts will not preclude a grant of summary judgment.” Int'l Gamco, Inc. v. Multimedia Games Inc.,

732 F. Supp. 2d 1082, 1086 (S.D. Cal. 2010) quoting T.W. Elec. Serv., Inc. v. Pacific Elec. Contrac-

tors Ass'n, 809 F.2d 626, 630 (9th Cir.1987).

i. The Standard for Summary J udgment of Non-Infringement in Design Pa-tent Cases.

A determination of design patent infringement involves a two step analysis: first, the claim

must be properly construed to determine its meaning and scope and, second, the claim as properly





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construed must be compared to the accused design to determine whether there has been infringement.

Elmer v. ICC Fabricating, Inc., 67 F. 3d 1571, 1577 (Fed. Cir. 1995). In the first step, “the scope of

the claim must be construed in order to identify the non-functional [i.e., ornamental] aspects of the

design as shown in the patent” when the design contains both functional and non-functional elements.

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F. 3d 665, 608 (Fed. Cir. 2008)(quoting Oddzon Prods.,

Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed.Cir.1997)).

In the second step, the pertinent question is whether an ordinary observer would be deceived

into believing the accused product is the same as the patented product. Egyptian Goddess, 543 F. 3d

at 672. The ordinary observer “must be deceived by the features common to the claimed and accused

designs that are ornamental, not functional.” Unidynamics Corp. v. Automatic Products Intern., 157

F. 3d 1311, 1323 (Fed. Cir. 1998); Egyptian Goddess, Inc., 543 F.3d at 680. In addition, the ordinary

observer must “view the differences between the patented design and the accused product in the con-

text of the prior art” such that “the attention of the hypothetical ordinary observer will be drawn to

those aspects of the claimed design that differ from the prior art.” Egyptian Goddess, Inc., 543 F.3d

at 676 (emphasis added). Simply put, practicing the prior art is a defense to design patent infringe-

ment. Id. at 683. Moreover, “[i]n 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 its burden of prov-

ing the two designs would appear ‘substantially the same’ to the ordinary observer.”1 Egyptian God-

dess, Inc., 543 F.3d at 678; see also Minka Lighting, Inc. v. Maxim Lighting Int'l, Inc., 2009 WL

1 Although infringement is a question of fact, where appropriate, courts, in applying the ordinary observer test, both be-fore and afterEgyptian Goddess, have not hesitated to grant summary judgment for defendants based on a “mere visualcomparison of the patented design and the accused product.”HR U.S. LLC v. Mizco Int'l, Inc., 2009 WL 890550, *12(E.D.N.Y. 2009);see also Tropicana Prods., Inc. v. Land O'Lakes, Inc., 286 F.Supp.2d 343, 345 (D.Del.2003) (grantingsummary judgment where designs did not share “an overall visual similarity”).





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691594, *8 (N.D.Tex. 2009)(granting summary under Egyptian Goddesswhere designs were “plainly

dissimilar” and finding it unnecessary to reference the prior art).

B. The ‘461 Patent Is Extremely Limited In Scope As A Result of Extensive PriorArt and the Obviously Functional Elements of the Design.

i. The Functional Elements of the ‘461 Patent Are Not Protectable.

As stated above, and for the first step of the analysis, “the scope of the claim must be con-

strued in order to identify the non-functional [i.e., ornamental] aspects of the design as shown in the

patent” when the design contains both functional and non-functional elements. Egyptian Goddess,

Inc., 543 F.3d at 680 (quoting OddzOn Prods., Inc., 122 F.3d at 1405). For infringement to be feasi-

ble, the ordinary observer “must be deceived by the features common to the claimed and accused de-

signs that are ornamental, not functional.” Unidynamics Corp., 157 F.3d at 1323 (emphasis added);

Egyptian Goddess, Inc., 543 F.3d at 680.

An 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.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 (1982). It is

important to keep in mind that “[d]esign patents have almost no scope.” In re Mann, 861 F.2d 1581,

1582 (Fed. Cir. 1988). “It is the drawings in the patent, not just one feature of the claimed design, that

define the patented design.” Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1371

(Fed. Cir. 2006).

Here, obvious functional elements of the ‘461 Patent include the arms of the glasses, the nose

bridge and the two frames for the eyes. Eliminating the functional aspects is critical inasmuch as

there are numerous glasses that serve the purpose of blocking sun. Sunglasses have to block sun;

they have to have a place to sit on the bridge of the nose; many sunglasses generally wrap around the

head for a comfortable, sporty fit; and sunglasses will generally have arms that secure the glasses

above the ears. Buttons generally are functional. Buttons are functional because they are pushed to





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cause a response. Plaintiff cannot claim a patent right to a button. These are not elements that Plain-

tiff can monopolize, because Plaintiff simply does not have a patent that covers sunglasses general-

ly—or buttons. The fact that some sunglasses have cameras means that the sunglasses will have to

functionally have a recording device and thus must also allocate a place to put the video recording

equipment and buttons on the glasses (i.e., on the arms of the glasses). So, that leaves the design

elements—which is the core of what a design patent covers. For the sake of argument only, and if the

design elements were not already in the prior art, there might have been four potentially distinctive

elements of the ‘461 Patent, none of which bare any similarity to the Accused Products: (1) the

“horn”/U-shape design of the nose bridge, (2) the style, placement and number of buttons on the arms

of the glasses, (3) the “claw mark” designs of the arms of the glasses, and (4) maybe placement of the

USB input. Defendants have offered demonstrative Exhibit E to try and assist the court with a graph-

ic illustration of possiblepoints where anything unique may be found on the Plaintiff’s patent. See

Buche Decl., Ex. E. The foregoing elements appear to be what Plaintiff claims as part of its design

patent and, as described below, each element is limited even further in light of prior art. Unfortunate-

ly for Plaintiff, the Defendants Accused Products do not include these features, even if they were pro-

tectable and not already in the prior art.

ii. Prior Art L imits the Scope of the ‘461 Patent Greatly and Must be Consi-dered in Terms of I nfringement and Claim Construction.

The Federal Circuit noted that, “[w]hen the differences between the claimed and accused de-

sign are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be

drawn to those aspects of the claimed design that differ from the prior art.” Seirus Innovative Acces-

sories, Inc. v. Cabela's Inc., 827 F. Supp. 2d 1150, 1156-57 (S.D. Cal. 2011) (emphasis added) quot-

ingEgyptian Goddess, 543 F.3d at 676. Specifically, the Federal Circuit inEgyptian Goddessnoted:





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“[W]hen the claimed and accused designs are not plainly dissimilar, reso-lution of the question whether the ordinary observer would consider thetwo designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art . . . . Where there aremany examples of prior art designs . . . differences between the claimed

and accused designs that might not be noticeable in the abstract can be-come significant to the hypothetical ordinary observer who is conversantwith the prior art.

Some examples of prior art are below, which show designs that have already been taken in-

cluding (a) the wrap around shape2; (b) a nose bridge contoured to a nose3; (c) buttons arranged on the

top of ear rests; (d) arms, including rectangular/square-shaped arms4; (e) lenses of any particular

shape; (f) a flat brow member5. None of these items can be covered by the Plaintiff’s claim because

they are concepts that are in the public domain and the prior art. So what is left? Not much. The de-

sign patent in question is restricted to only the most ornate concepts.

For example, the most relevant prior art is set forth below:6

2 See, for example, Buche Decl, Ex. C, Patent Nos. 3,229,303 (issued Jan. 1966)(p.16), 4,856,086 (issued Aug. 1989)(p.17), 6,517,202 (issued Feb. 2003) (p.20) and 3,944,344 (issued March 1976) (p.17).3 See, for example, Buche Decl, Ex. C, Patent Nos. 2,856,466 (issued Oct. 1958) (p. 15), 2,765,373 (issued Oct. 1956)

(p.15), 6,517,202 (issued in February of 2003)(p.20), 7,278, 734 (issued Oct. 2007 and subsequently assigned to Oakley,Plaintiff herein) and D103, 297 (issued Feb. 1937).4 See, for example, Buche Decl, Ex. C, Patent Nos. 5,029,216 (issued July 1991) (p.18), 5,159,639 (issued Oct. 1992)(p.18), 5,606,743 (issued Feb. 1997) (p.19), 7,147,324 (issued Dec. 2006) (p. 21), 7,150,526 (issued Dec. 2006) (p. 21),7,216,973 (issued May 2007) (p. 21). Patent Nos. 7,278, 734 (issued Oct. 2007) (p. 22), D207,919 (issued Jun. 1967) (p.22).5 See, for example, Buche Decl, Ex. C, Patent Nos.5,606,743 (issued Feb. 1997) (p. 19), 6,857,739 (issued Feb. 2005)(p.21).6 Additional prior art is attached and summarized as Ex.C to the Buche Decl. and full printouts of the summarized patentsare attached as Ex. D to the Buche Decl.





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U.S. Patent Nos. 7,147,324, 7,150, 526

and 7, 216, 973 7

U.S. Patent No. 7,278,7348

U.S. Design Patent No. 207, 919

U.S. Patent No. 5,606,743

7 Plaintiff may claim ownership to each of the patents, but they are still facially prior art under 35 U.S.C.§102(e) becausethe cited prior art patents: (1) are the result of U.S. patent applications that were filed prior to the filing date of the ‘461patent (without more, the filing date of the application underlying the issued patent can be used as the date of invention(see Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965)) and that ultimately issued as patents; (2) andlist at least one inventor that is not common with the inventors listed in the ‘461 patent.8 Id.





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U.S. Patent No. 5,781,272 U.S. Patent No. 5,717,479

U.S. Patent No. 4,882,769U.S. Patent No. 5,029,216

Pat. No. D103,297 (issued Feb. 23, 1937)

Pat. No. D285,697 (issued Sep. 16, 1986)

Pat. No. D453,024 (issued Jan. 22, 2002)

The ordinary observer must “view the differences between the patented design and the ac-

cused product in the context of the prior art” such that “the attention of the hypothetical ordinary ob-

server will be drawn to those aspects of the claimed design that differ from the prior art.” Egyptian





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Goddess, Inc., 543 F.3d at 676 (emphasis added). An analysis of the above prior art, as well as the art

referenced inExhibits C andD to the Buche Decl., demonstrates that an ordinary observer would be

drawn only those aspects of the ‘461 Patent that are ornamental and different from everything that is

out in the marketplace, which is, as Plaintiff’s best argument, the nose bridge (which includes the

horns and contoured dip), the specific style of the buttons (including the podiums) and arrangement

thereof, and the claw marks on the arm. Moreover, it is important to keep in mind that “general de-

sign concepts alone are insufficient to show infringement, particularly when the prior art is replete

with similar designs.” See Minka Lighting, Inc., 2009 WL 691594 citingOddzOn Prods., 122 F.3d at

1405 (rejecting the notion that “the overall similarity of ... appearance is sufficient to show infringe-

ment”).

Accordingly, not only would an ordinary observer be able to distinguish the ‘461 Patent from

prior art, and the Accused Product, based on these differences alone, but this prior art significantly

narrows (a) the scope of the ‘461 Patent claim construction by the Court; and (b) the scope of in-

fringement inasmuch as the “ordinary observer” is one who is familiar with the prior art. The law is

clear that the patent claim cannot be construed to encompass the prior art and general elements of de-

sign that are clearly in the public domain. Defendants argue that Plaintiff cannot, therefore, claim

general designs that are already in any of the prior art—a general claim to functional buttons on top of

arms (already in the prior art); arms of sunglasses generally (already in the prior art);

squared/rectangular arms of sunglasses (already in the prior art); wrap around shape of frames (al-

ready in the prior art); basic nose bridge (already in the prior art); horns (already in the prior art).

C. Any Purported Protectable Elements of the ‘461 Patent and the Accused ProductAre Vastly Different.

When comparing the Accused Product and the drawings in the ‘461 Patent, they are incredibly

different. Overall differences in the appearance of the products, such as the claw marks on the arms





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of the sunglasses, lack or ornate button podiums, and features like U-shaped horns on the top of the

frame of the glasses, have been held to be key distinguishing features when examining overall ap-

pearance. See Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997, 1011 (N.D. Ill. 2010) aff'd,

412 F. App'x 304 (Fed. Cir. 2011)(“. . .scalloped edges in the patented design when compared with

the smooth edges of the accused design, and the hour-glass shape of the accused design when com-

pared with the block-rectangle shape of the patented design are important aspects that dominate the

overall visual appearance of the respective designs.”). In contrast, and similar to the product in the

Competitive Edge case, the Accused Product here has smooth arms, no horns, and no ornate button

podiums.

‘461 Patent with Purported Ornamental Aspect Highlighted (seeBuche Decl., Ex. E)

Accused Product (seeBuche Decl., Ex. B, Figs. 1 and 3)

While a comparison of the overall designs is required, “[s]ummary judgment, however, is ap-

propriate where specific ornamental features substantially impact the overall design of the accused

product and distinguish the overall design of the accused product from the patented design.” See HR





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U.S. LLC v. Mizco Int'l, Inc., 2009 WL 890550, *12 (E.D.N.Y. 2009); see also Minka Lighting, 2009

WL 691594, at *7 (granting summary under Egyptian Goddess where “distinct ornamental ‘hook’ “

in lamp support arm, which was “obvious at first glance,” made the accused product “readily distin-

guishable from” the patented design); Antonious v. Spalding & Evenflo Cos., Inc., 217 F.3d 849,

(Fed.Cir.1999)(unpublished table case) (affirming district court's grant of summary judgment, which

noted that a specific feature “unmistakably distinguished” the accused products, because “no reason-

able jury would conclude that the overall designs of the accused products and the patents are so sub-

stantially similar that an ordinary observer would be deceived ...”); Abbott Labs. v. Mead Johnson &

Co., 1996 WL 332449, at *10 (N.D.Ill. 1996) (granting summary judgment for non-infringement

where the “overall appearance” of the two devices made it clear that they “serve the same purpose,”

but two differences, which were substantial in the context of the “whole design,” ensured “that the

accused device will not be confused with, or mistaken for, the patented device”).

Examining the critical differences in detail, the ‘461 Patent has an exaggerated U-shape scoop

on top of the nose bridge with the horns, while the Accused Product has no such scoop/horns:

Back View Comparison(Buche Decl., Ex. A, Fig. 3; Buche Decl., Ex. B, Fig. 2)

Front Angled View Comparison(Buche Decl., Ex. A, Fig. 1; Buche Decl., Ex. B, Fig. 3)





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Moreover, the ‘461 Patent has a prominent X-shaped protrusion or horns on the nose bridge

while the Accused Product is smooth with no protrusions. The accused product actually has holes in

the front for a camera lens.

Front View Comparison(Buche Decl., Ex. A, Fig. 2; Buche Decl., Ex.B, Fig. 4)

Bottom Angled View Comparison(Buche Decl., Ex. A, Fig. 6; Buche Decl., Ex. B, Fig. 8)

Additionally, the arms of the glasses of the Accused Products are not a claw/rib-like pattern or

texture like the ‘461 Patent drawings claim, but are instead textured with hole/indentures

(square/rectangular shapes of arms are already in the prior art and public domain):

Side view of Left Arm Comparison(Buche Decl., Ex. A, Fig. 4; Buche Decl., Ex. B, Fig. 6)





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Back View Comparison(Buche Decl., Ex. A, Fig. 3; Buche Decl., Ex. B, Fig. 2)

Further, the Accused Product hasno buttons on the right armand two buttons on the left arm

while the ‘461 Patent has three buttons on the right arm and two on the left arm (as viewed from the

perspective of someone wearing the frames). More important, the buttons that the accused product

features are merely functional plain buttons. They are not situated on ornate button podiums des-

cending into claw mark designs as required by the ‘461 Patent. The Accused Product simply has (a)

either no buttons; or (b) plain old buttons serving the functional purpose of a button to acti-

vate/deactivate an electronic feature.

Right Arm View Comparison(Buche Decl., Ex. A, Fig. 1; Buche Decl., Ex. B, Fig. 3)

//

//





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Left Arm Side View Comparison(Buche Decl., Ex. A, Fig. 4; Buche Decl., Ex. B, Fig. 6)

The contour of the arms are also different, as the ‘461 Patent claims no contour of the arms

(with a flat bottom) while the Accused Product clearly has a contoured bottom:

‘461 Patent (Buche Decl., Ex. A, Fig. 6)

Accused Product (Buche Decl., Ex. B, Fig. 5)

Finally, the Accused Product and the ‘461 Patent have undeniably different placement for the

USB input – indeed, the Accused Product not only has it on an opposite arm of the sunglasses, but

has added an input for Micro-SD.

No contourclaimedmeaning bot-tom is flat

Contour





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Bottom of Right Arm of Accused Product and ‘461 Patent

Bottom and Left Arm of Accused Product and ‘461 Patent

SeeBuche Decl., Ex. A, Fig. 6; Buche Decl., Ex. B, Fig. 8.

Considering all of these asserted distinctions together in the context of the overall ornamental

design—and assuming a properly construed claim that avoids the prior art and functional features—

no reasonable trier of fact could find that an ordinary observer familiar with the prior art could be-

lieve the accused design to be the same as the patented design, or even a colorable imitation of the

patented design. The allegation borders on absurd and is not a subject on which two reasonably in-

formed minds could have a legitimate dispute. See Egyptian Goddess, 543 F.3d at 679 (“[T]he paten-

tee bears the ultimate burden of proof to demonstrate infringement by a preponderance of the evi-

dence.”); Competitive Edge, Inc., 763 F. Supp. 2d at 1011-12. As such, the Accused Product does not

infringe the ‘461 Patent and summary judgment should be granted in favor of Defendants on this is-

sue of noninfringement.

//

//

//





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IV. CONCLUSION

For the foregoing reasons, Defendants respectfully request that the Court grant Defendants’

motion for summary judgment and declare that the Accused Products do not infringe the ‘461 Patent.

Dated: December 27, 2012Respectfully submitted,

s/ John K. Buche

John Karl BucheBUCHE & ASSOCIATES, P.C.Attorneys for Defendants

Email : [email protected]





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John Karl Buche (SBN 239477)

Lindsay D. Molnar (SBN 275156)

BUCHE & ASSOCIATES, P.C.875 Prospect, Suite 305

La Jolla, California 92037

(858) 459-9111(858) 459-9120 Fax [email protected]

[email protected]

Attorneys for Defendants Hire Order, LTD and

Global One Sales and Distribution Sportsman Eyewear, LLC.

UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF CALIFORNIA

OAKLEY, INC., a Washington corporation,

Plaintiff,

v.

HIRE ORDER, LTD., d/b/a HANDS-

FREEVIDEO.COM, a Virginia corpora-

tion, and GLOBAL ONE SALES ANDDISTRIBUTION SPORTSMAN EYE-

WEAR, LLC, a Pennsylvania company,

Defendants.


DECLARATION OF JOHN K. BUCHE IN

SUPPORT OF DEFENDANTS’ MOTION

FOR PARTIAL SUMMARY JUDGMENT

FOR NON-INFRINGEMENT

Judge: Hon. Dana M. SabrawHearing Date: March 29, 2013

Time: 1:30 p.m.

Courtroom: 13A – 13th Floor

I, John K. Buche, do hereby declare under penalty of perjury under 18 U.S.C. §1001 that:

1. I am an attorney licensed to practice in the State of California and in the United States

District Court for the Southern District of California, and the principal of the firm Buche & Associ-

ates, P.C., counsel of record for Defendants Hire Order, Ltd., d/b/a HandsFreeVideo.com and Global

One Sales and Distribution Sportsman Eyewear, LLC (collectively, “Defendants”). This Declaration

is made of facts and matters within my own personal knowledge and if called as a witness, I could,

and would, competently testify thereto. I make this Declaration in support Defendants‟ Motion for





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Partial Summary Judgment for Non-Infringement of U.S. Patent No. D523,461 (the “„461 Patent”).

2. Attached hereto as Exhibit A is a true and correct copy of the „461 Patent retrieved

from the United States Patent & Trademark office‟s public records database, www.uspto.gov.

3. Attached hereto as Exhibit B is a true and correct copy of photographs taken by my

office that are of Defendants‟ Sportsman Eyewear®, the products that Plaintiff Oakley, Inc. (“Plain-

tiff”) has alleged infringe the „461 Patent (hereinafter the “Accused Products”).

4. Attached hereto as Exhibit C is a true and correct copy of a summary of patents in the

public record. Each excerpt is a true and correct rendition of the patented design. Such summary is

included pursuant to Fed. R. Evid. 1006 and is for the convenience for the court. True and correct full

copies of the patents referenced in the summary are attached hereto as Exhibit D.

5. Attached hereto as Exhibit E is a true and correct excerpt of Figure 1 from the „461

Patent wherein my office has color-coded the elements of the design that Defendants purport even

remotely, are arguably protectable (although Defendants contend that even some of these elements

are either functional are previously disclosed in the prior art). This exhibit is for demonstrative pur-

poses only.

6. Attached hereto as Exhibit F is a true and correct excerpt from the Manual of Patent

Examining Procedure (“MPEP”) §15.49-15.50, which the court may find useful because it discusses

the importance of solid lines in design patent drawings.

7. Attached hereto as Exhibit G is a true and correct copy of Antonious v. Spalding &

Evenflo Companies., Inc., 217 F.3d 849 (1999), an unpublished case cited in the Memorandum of

Points and Authorities.

///

///





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I declare under penalty of perjury under the laws of the United States of America and the State

of California that the foregoing is true and correct and that this declaration was executed on Decem-

ber 27, 2012, in La Jolla, California.

Dated: December 27, 2012

/s/ John K. Buche

John K. Buche




EXHIBITS TO THE DECLARATION OF JOHN K. BUCHE IN SUPPORT OF

DEFENDANTS’ MOTION FOR PARTIAL SUMMARY JUDGMENT

Exh. Description Page(s)

A A true and correct copy of U.S. Patent No. D523,461,

issued June 20, 2006.

1-6

B True and correct copy of photographs of Defendants‟

Sportsman Eyewear®.

7-14

C A true and correct copy of a summary of patents cited as

prior art in U.S. Patent No. D523,461.

15-24

D True and correct full copies of the patents referenced in the

Exhibit C summary.

25-595

E Demonstrative exhibit of Figure 1 of the „461 Patent. 596

F A true and correct copy of an excerpt from the Manual of Patent Examining Procedure (“MPEP”) §15.49-15.50.

597-604

G A true and correct copy of Antonious v. Spalding &

Evenflo Companies., Inc., 217 F.3d 849 (1999), anunpublished case.

605-611




EXHIBITA



http://slidepdf.com/reader/full/hire-order-msj 36/657EXHIBIT A Page 1



















EXHIBIT B




Matte Black Sportman® Eyewear

Figure 1

Figure 2

EXHIBIT B Page 7




Figure 3

Figure 4

EXHIBIT B Page 8




Figure 5

Figure 6

EXHIBIT B Page 9




Figure 7

Figure 8

EXHIBIT B Page 10




Figure 9

Mossy Oak Sportman® Eyewear

Figure 10

EXHIBIT B Page 11




Figure 11

Figure 12

EXHIBIT B Page 12




Figure 13

Figure 14

EXHIBIT B Page 13




Figure 15

Figure 16

EXHIBIT B Page 14




EXHIBIT C




PRIOR ART - U.S. PATENT DOCUMENTS

HEARING AID DEVICE by J.W. Cox

Pat. No. 2,207,705 (issued July 16, 1940)

DEAF AID APPARATUS by M.G. Thomas

Pat. No. 2,720,559 (issued Oct. 11, 1955)

HEARING AID, CONSTRUCTION AND SUPPORT

HTEREFORE by A. L. Smith

Pat. No. 2, 765,373 (issued Oct. 2, 1956)

HEARING AIDS by G.E. Gustofson et al

Pat. No. 2,856,466 (issued Oct. 14, 1958)

EXHIBIT C Page 15




PRIOR ART CONT’D - U.S. PATENT DOCUMENTS

ANTI_FOGGING EYEGLASSES by G. Aufricht

Pat. No. 3,160,735 (issued Dec. 8, 1964)

SPORTSMAN’S GOGGLE by S. Jonassen

Pat. No. 3,229,303 (issued Jan. 18, 1966)

EYESHIELD FITTED WITH EYELASHES OR THE

LIKE by P. Sacco

Pat. No. 3,626,514 (issued Dec. 14, 1971)

HEARING AID CONSTRUCTION UTILIZING A VENTED

TRANSDUCER COMPARETMENT FOR REDUCING

FEEDBACK by E.M. Weiss

Pat. No. 3,665,122* (issued May 23, 1972)

SPECTACLES HAVING BANDS THAT REDUCE

FACIAL WRINKLES by G.A. Brenn

Pat. No. 3,675,991 (issued Jul. 11, 1972)

SPECTACLE POSITIONING AND SECURING DEVICES by

S. Wortman

Pat. No. 3,741,635* (issued Jun. 26, 1973)


EXHIBIT C Page 16




SPECTACLE FRAME WITH TEMPLES ANGULARLY

ADJUSTABLE WHILE SPECTACLE FRAME IS

WORN ON HEAD by H. J. Lazarus

Pat. No. 3,874,775 (issued Apr. 1, 1975)

EYEGLASS FRAME WITH HEARING AID by A. Delorenzo

Pat. No. 3,883,701* (issued May 13, 1975)

SPECTACLE STRUCTURE by M. F. Wichers

Pat. No. 3,944,344 (issued Mar. 16, 1976)

SEQUENTIAL FLASHING DEVICE FOR PERSONAL

ORNAMENTATION by J. A. Cochran, Jr.

Pat. No. 4,254,451 (issued Mar. 3, 1981)

HEARING AID WITH LOCATING MICROPHONES

by E.Zwiker et al

Pat. No. 4,773,095* (issued Sep. 20, 1988)

RADIO GLASSES by G. McCullough

Pat. No. 4,856,086* (issued Aug. 8, 1989)


EXHIBIT C Page 17




AM/FM RADIO WITH SUNGLASS HOUSING by B.

A. Gallimore

Pat. No. 4,882769* (issued Nov. 21, 1989)

STEREO HEAD HEADPHONES BRACKET SYSTEM by L.

A. Karppala, Jr.

Pat. No. 4,888,805 (issued Dec. 19, 1989)

EYEGLASS FRAME WITH ELECTROACOUSTIC

DEVICE FOR THE ENHANCEMENT OF SOUND

INTELLIGIBILITY by R. Gorike

Pat. No. 4,904,078* (issued Feb. 27, 1990)

COMBINATION RADIO AND EYEGLASSES by Shannon

Pat. No. 5,020,150* (issued May 28, 1991)

VISUAL AID FOR THE HEARING IMPAIRED by M.

D. Jhabvala et al

Pat. No. 5,029,216* (issued Jul. 2, 1991)

ASSISTIVE LISTENING DEVICE by C. W. Shannon et al

Pat. No. 5,159,639* (issued Oct. 27, 1992)


EXHIBIT C Page 18




PORTABLE COMPUTER AND HEAD MOUNTED

DISPLAY by A. Schoolman

Pat. No. 5,281,957* (issued Jan. 25, 1994)

EARPHONE TYPE SPEAKER ASSEMBLY by J. Gluz

Pat. No. 5,336,285* (issued Aug. 2, 1994)

AUDIO-ADAPTER EYEGLASS RETAINER by J. P.de Silva

Pat. No. 5,367,345* (issued Nov. 22, 1994);

Pat. No. 5,608,808* (issued Mar. 4, 1997)

HEADPHONES by B. Ballein

Pat. No. 5,579,400* (issued Nov. 26, 1996)

RADIO EYEWEAR by P. A. Vogt et al

Pat. No. 5,606,743* (issued Feb. 25, 1997)

ACOUSTICALLY TRANSPARENT EARPHONES by J. H.

Boyden

Pat. No. 5,694,475* (issued Dec. 2, 1997); see also

Pat. No. 5,737,436* (issued Apr. 7, 1998)


EXHIBIT C Page 19




RADIO ATTACHABLE TO SPECTACLES by J. D.

Walker

Pat. NO. 5,715,323* (issued Feb. 3, 1998)

INDUSTRIAL SAFETY ASSEMBLY INCLUDING

DISPOABLE EAR PROTECTION AND EARPHONE by T.

Rickards

Pat. No. 5,717,479* (issued Feb. 10, 1998)

EYESIGHT PROTECTION APPARATUS WITH

ATTACHED EARPLUGS by A. L. Bright et al

Pat. No. 5,781,272* (issued Jul. 14, 1998)

“HEARSPEAK” TWO-WAY VOICE RADIO

COMMUNICATIONS EYEGLASSES by D. S. Jesiek

Pat. No. 6,010,216* (issued Jan. 4, 2000)

EYEWEAR HEART RATE MONITOR by H. Linden

Pat. No. 6,431,705 (issued Aug. 13, 2002)

EYEGLASSES WITH LENSES RAPIDLY CHANGEABLE by J.

H. Huang

Pat. No. 6,517,202 (issued Feb. 11, 2003)


EXHIBIT C Page 20




EYEGLASS FRAME by Dairymple et al

Pat. No. 6,648,471 (issued Nov. 18, 2003)

ILLUMINATED EYEWEAR AND A METHOD FOR

ILLUMINATING EYEWEAR by P. Watson

Pat. No. 6,857,739 (issued Feb. 22, 2005)

HALF-JACKET EYEWEAR WITH REMOVABLE

DUST SHIELD by K. Yi et al

Pat. No.6,926,403 (issued Aug. 9, 2005)

SPEAKER MOUNTS FOR EYEGLASS WITH MP3 PLAYER

by J. Jannard et al

Pat. No. 7,147,324 (issued Dec. 12, 2006); see also

Pat. No. 7,150,526 (issued Dec. 19, 2006),

Pat. No. 7,216,973 (issued May 15, 2007)

EXHIBIT C Page 21





WIRELESS INTERACTIVE HEADSET by J. Jannardet al

Pat. No. 7,278,734 (issued Oct. 9, 2007)

SPECTACLE FRAME OR SIMILAR ARTICLE by K. S.Barrett

Pat. No. D103,297 (issued Feb. 23, 1937)

SPECTACLE FRAME OR THE LIKE by L.L. Gagnon

Pat. No. D146,538*(isssued Apr. 1, 1947)

PAIR OF SPECTACLES FOR EYE MAKE-UP by C. Baratelli

Pat. No. D193252 (issued Jul. 17, 1962)

COMBINATION CAMERA AND PAIR OF

SPECTACLES OR SIMILAR ARTICLE by H.

Gleseking et al

Pat. No. D201,050 (issued May 4, 1965)

PAIR OF SUNGLASSES AND RADIO COMBINATION by

L. Fai

Pat. No. D207,919* (issued Jun. 13, 1967)

EXHIBIT C Page 22





EYEGLASSES by S. B. Fraser Et al.

Pat. No. D285,697 (issued Sep. 16, 1986)

COMBINED CAMERA AND EYEGLASSES by C. J.

Johnson

Pat. No. D287,021 (issued Dec. 2, 1986)

EYEGLASSES by J. H. Jannard

Pat. No. D.343,182 (issued Jan. 11, 1994)

EYEGLASS RADIO by P. S. Haney

Pat. No. D418,153* (issued Dec. 28, 1999)

EXHIBIT C Page 23





EYEWEAR by R.W. Green et al

Pat. No. D426,845* (issued Jun. 20, 2000); see

also Pat. No. D435,058;

SUNGLASSES by P. Bonnemere

Pat. No. D453,024 (issued Jan. 22, 2002)

EXHIBIT C Page 24




EXHIBITD

PART 1 OF 2




TABLE OF CONTENTS FOR EXHIBIT D - FULL COPIES OF PATENTS

REFERENCED AS PRIOR ART

Patent No. Page No.

2,207,705 25

2,720,559 282,765,373 30

2,856,466 36

3,160,735 41

3,229,303 48

3,626,514 51

3,665,122 54

3,675,991 58

3,741,635 63

3,874,775 68

3,883,701 80

3,944,344 854,254,451 94

4,773,095 106

4,856,086 112

4,882,769 116

4,888,805 121

4,904,078 125

5,020,150 133

5,029,216 139

5,159,639 152

5,281,957 161

5,335,285 172

5,367,345 178

5,579,400 186

5,606,743 192

5,608,808 218

5,694,475 228

5,715,323 238

5,717,479 246

5,737,436 254

5,781,272 263

6,010,216 2726,431,705 B1 282

6,517,202 B2 293

6,648,471 B1 299

6,857,739 B1 304

6,926,403 B2 309

**7,147,324 B2 325

**7,150,526 B2 374




**7,216,973 B2 423

**7,278,734 B2 471

D103,297 548

D146,538 550

D193,252 552

D210,050 554D207,919 556

D285,697 558

D287,021 561

D343,182 565

D418,153 569

D426,845 576

D453,024 592

**Delineates patents that have been assigned to Plaintiff herein.































































































































































































































































































































































































































































































































































































































































































































































EXHIBITD

PART 2 OF 2




TABLE OF CONTENTS FOR EXHIBIT D - FULL COPIES OF PATENTS

REFERENCED AS PRIOR ART

Patent No. Page No.

2,207,705 25

2,720,559 282,765,373 30

2,856,466 36

3,160,735 41

3,229,303 48

3,626,514 51

3,665,122 54

3,675,991 58

3,741,635 63

3,874,775 68

3,883,701 80

3,944,344 854,254,451 94

4,773,095 106

4,856,086 112

4,882,769 116

4,888,805 121

4,904,078 125

5,020,150 133

5,029,216 139

5,159,639 152

5,281,957 161

5,335,285 172

5,367,345 178

5,579,400 186

5,606,743 192

5,608,808 218

5,694,475 228

5,715,323 238

5,717,479 246

5,737,436 254

5,781,272 263

6,010,216 2726,431,705 B1 282

6,517,202 B2 293

6,648,471 B1 299

6,857,739 B1 304

6,926,403 B2 309

**7,147,324 B2 325

**7,150,526 B2 374




**7,216,973 B2 423

**7,278,734 B2 471

D103,297 548

D146,538 550

D193,252 552

D210,050 554D207,919 556

D285,697 558

D287,021 561

D343,182 565

D418,153 569

D426,845 576

D453,024 592

**Delineates patents that have been assigned to Plaintiff herein.



































































































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EXHIBIT E



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EXHIBIT F




1503.02 Drawing [R-5]

37 C.F.R. 1.152 Design drawings.

The design must be represented by a drawing that complies with the requirements of § 1.84 and mustcontain a sufficient number of views to constitute a complete disclosure of the appearance of the design.

Appropriate and adequate surface shading should be used to show the character or contour of the surfaces

represented. Solid black surface shading is not permitted except when used to represent the color black aswell as color contrast. Broken lines may be used to show visible environmental structure, but may not beused to show hidden planes and surfaces that cannot be seen through opaque materials. Alternatepositions of a design component, illustrated by full and broken lines in the same view are not permitted in adesign drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in oneapplication. Photographs submitted in lieu of ink drawings in design patent applications must not discloseenvironmental structure but must be limited to the design claimed for the article.

Every design patent application must include either a drawing or a photograph of the claimed design. As thedrawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance thatthe drawing or photograph be clear and complete, and that nothing regarding the design sought to bepatented is left to conjecture.

When inconsistencies are found among the views, the examiner should object to the drawings and requestthat the views be made consistent. Ex parte Asano , 201 USPQ 315, 317 (Bd. Pat. App. & Inter. 1978);Hadco Products, Inc. v. Lighting Corp. of America Inc., 312 F. Supp. 1173, 1182, 165 USPQ 496,503 (E.D. Pa. 1970), vacated on other grounds ,462 F.2d 1265, 174 USPQ 358 (3d Cir. 1972). When theinconsistencies are of such magnitude that the overall appearance of the design is unclear, the claim shouldbe rejected under 35 U.S.C. 112, first and second paragraphs, as nonenabling and indefinite. See MPEP §1504.04, subsection I.A.

¶ 15.05.03 Drawing/Photograph DisclosureObjected To

The drawing/photograph disclosure is objected to [1].

Examiner Note:

In bracket 1, insert statutory or regulatory basis for objection and an explanation.

** >

¶ 15.05.04 Replacement Drawing SheetsRequired

Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action toavoid abandonment of the application. Any amended replacement drawing sheet should include all of thefigures appearing on the immediate prior version of the sheet, even if only one figure is being amended.The figure or figure number of an amended drawing should not be labeled as amended. If a drawing figureis to be canceled, the appropriate figure must be removed from the replacement sheet, and wherenecessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be

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necessary to show the renumbering of the remaining figures. If all the figures on a drawing sheet arecanceled, a replacement sheet is not required. A marked-up copy of the drawing sheet (labeled as

“Annotated Sheet”) including an annotation showing that all the figures on that drawing sheet have beencanceled must be presented in the amendment or remarks section that explains the change to thedrawings. Each drawing sheet submitted after the filing date of an application must be labeled in the topmargin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d). If the changes arenot accepted by the examiner, the applicant will be notified and informed of any required corrective actionin the next Office action.

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¶ 15.05.05 Drawing Correction Required Priorto Appeal

Any appeal of the design claim must include the correction of the drawings approved by the examiner inaccordance with Ex parte Bevan , 142 USPQ 284 (Bd. App. 1964).

Examiner Note:

This form paragraph can be used in a FINAL rejection where an outstanding requirement for a drawingcorrection has not been satisfied.

¶ 15.07 Avoidance of New Matter

When preparing new drawings in compliance with the requirement therefor, care must be exercised to avoidintroduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and37 CFR 1.121.

Form paragraph 15.48 may be used to notify applicant of the necessity for good drawings.

¶ 15.48 Necessity for Good DrawingsThe necessity for good drawings in a design patent application cannot be overemphasized. As the drawingconstitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both asto clarity of showing and completeness, that nothing regarding the design sought to be patented is left toconjecture. An insufficient drawing may be fatal to validity (35 U.S.C. 112, first paragraph). Moreover, aninsufficient drawing may have a negative effect with respect to the effective filing date of a continuingapplication.

In addition to the criteria set forth in 37 CFR 1.81-1.88, design drawings must also comply with 37 CFR 1.152 as follows:

I. VIEWSThe drawings or photographs should contain a sufficient number of views to disclose the completeappearance of the design claimed, which may include the front, rear, top, bottom and sides. Perspectiveviews are suggested and may be submitted to clearly show the appearance of three dimensional designs. If a perspective view is submitted, the surfaces shown would normally not be required to be illustrated inother views if these surfaces are clearly understood and fully disclosed in the perspective.

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Views that are merely duplicative of other views of the design or that are flat and include no surfaceornamentation may be omitted from the drawing if the specification makes this explicitly clear. See MPEP§ 1503.01, subsection II. For example, if the left and right sides of a design are identical or a mirrorimage, a view should be provided of one side and a statement made in the drawing description that theother side is identical or a mirror image. If the design has a flat bottom, a view of the bottom may beomitted if the specification includes a statement that the bottom is flat and devoid of surfaceornamentation. The term “unornamented” should not be used to describe visible surfaces which includestructure that is clearly not flat. Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 (D. Del.1961).

Sectional views presented solely for the purpose of showing the internal construction or functional/mechanical features are unnecessary and may lead to confusion as to the scope of the claimed design. Ex parte Tucker , 1901 C.D. 140, 97 O.G. 187 (Comm’r Pat. 1901); Ex parte Kohler , 1905 C.D. 192, 116O.G. 1185 (Comm’r Pat. 1905). Such views should be objected to under 35 U.S.C. 112, second paragraph,and their cancellation should be required. However, where the exact contour or conf iguration of the exteriorsurface of a claimed design is not apparent from the views of the drawing, and no attempt is made toillustrate features of internal construction, a sectional view may be included to clarify the shape of said design. Ex parte Lohman , 1912 C.D. 336, 184 O.G. 287 (Comm’r Pat. 1912). When a sectional viewis added during prosecution, the examiner must determine whether there is antecedent basis in the originaldisclosure for the material shown in hatching in the sectional view (37 CFR 1.84(h)(3) and MPEP§ 608.02).

II. SURFACE SHADINGWhile surface shading is not required under 37 CFR 1.152, it may be necessary in particular cases to shadethe figures to show clearly the character and contour of all surfaces of any 3-dimensional aspects of thedesign. Surface shading is also necessary to distinguish between any open and solid areas of the article.However, surface shading should not be used on unclaimed subject matter, shown in broken lines, to avoidconfusion as to the scope of the claim.

Lack of appropriate surface shading in the drawing as filed may render the design nonenabling andindefinite under 35 U.S.C. 112, first and second paragraphs. Additionally, if the surface shape is notevident from the disclosure as filed, the addition of surface shading after filing may comprise new matter.Solid black surface shading is not permitted except when used to represent the color black as well as colorcontrast. Oblique line shading must be used to show transparent, translucent and highly polished or

reflective surfaces, such as a mirror. ** > Contrast in materials may be shown by using line shading in onearea and stippling in another. By using this technique, the claim will broadly cover contrasting surfacesunlimited by colors. The claim would not be limited to specific material either, as long as the appearance of the material does not patentably depart from the visual appearance illustrated in the drawing. <

Form paragraph 15.49 may be used to notify applicant that surface shading is necessary.

¶ 15.49 Surface Shading Necessary

The drawing figures should be appropriately and adequately shaded to show clearly the character and/orcontour of all surfaces represented. See 37 CFR 1.152. This is of particular importance in the showing of three (3) dimensional articles where it is necessary to delineate plane, concave, convex, raised, and/or

depressed surfaces of the subject matter, and to distinguish between open and closed areas. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast.

III. BROKEN LINES

The two most common uses of broken lines are to disclose the environment related to the claimed designand to define the bounds of the claim. Structure that is not part of the claimed design, but is considered

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necessary to show the environment in which the design is associated, may be represented in the drawingby broken lines. This includes any portion of an article in which the design is embodied or applied to that isnot considered part of the claimed design. In re Zahn , 617 F.2d 261, 204 USPQ 988 (CCPA 1980). ** >Unclaimed subject matter may be shown in broken lines for the purpose of illustrating the environment inwhich the article embodying the design is used. Unclaimed subject matter must be described as forming nopart of the claimed design or of a specified embodiment thereof. < A boundary line may be shown inbroken lines if it is not intended to form part of the claimed design. Applicant may choose to define thebounds of a claimed design with broken lines when the boundary does not exist in reality in the articleembodying the design. It would be understood that the claimed design extends to the boundary but does

not include the boundary. Where no boundary line is shown in a design application as originally filed, but itis clear from the design specification that the boundary of the claimed design is a straight broken lineconnecting the ends of existing full lines defining the claimed design, applicant may amend the drawing(s)to add a straight broken line connecting the ends of existing full lines defining the claimed subject matter.

Any broken line boundary other than a straight broken line may constitute new matter prohibited by35 U.S.C. 132 and 37 CFR 1.121(f).

However, broken lines are not permitted for the purpose of indicating that a portion of an article is of lessimportance in the design. In re Blum , 374 F.2d 904, 153 USPQ 177 (CCPA 1967). Broken lines may not beused to show hidden planes and surfaces which cannot be seen through opaque materials. The use of broken lines indicates that the environmental structure or the portion of the article depicted in broken linesforms no part of the design, and is not to indicate the relative importance of parts of a design.

In general, when broken lines are used, they should not intrude upon or cross the showing of the claimed

design and should not be of heavier weight than the lines used in depicting the claimed design. Whenbroken lines cross over the full line showing of the claimed design and are defined as showing environment,it is understood that the surface which lies beneath the broken lines is part of the claimed design. When thebroken lines crossing over the design are defined as boundaries, it is understood that the area within thebroken lines is not part of the claimed design. Therefore, when broken lines are used which cross over thefull line showing of the design, it is critical that the description of the broken lines in the specificationexplicitly identifies their purpose so that the scope of the claim is clear. As it is possible that broken lineswith different purposes may be included in a single application, the description must make a visualdistinction between the two purposes; such as --The broken lines immediately adjacent the shaded areasrepresent the bounds of the claimed design while all other broken lines are directed to environment and arefor illustrative purposes only; the broken lines form no part of the claimed design.-- Where a broken lineshowing of environmental structure must necessarily cross or intrude upon the representation of theclaimed design and obscures a clear understanding of the design, such an illustration should be included as

a separate figure in addition to the other figures which fully disclose the subject matter of the design.Further, surface shading should not be used on unclaimed subject matter shown in broken lines to avoidconfusion as to the scope of the claim.

The following form paragraphs may be used, where appropriate, to notify applicant regarding the use of broken lines in the drawings.

¶ 15.50 Design Claimed Shown in Full Lines

The ornamental design which is being claimed must be shown in solid lines in the drawing. Dotted lines forthe purpose of indicating unimportant or immaterial features of the design are not permitted. There are noportions of a claimed design which are immaterial or unimportant. See In re Blum , 374 F.2d 904, 153

USPQ 177 (CCPA 1967) and In re Zahn , 617 F.2d 261, 204 USPQ 988 (CCPA 1980).

¶ 15.50.01 Use of Broken Lines in Drawing

Environmental structure may be illustrated by broken lines in the drawing if clearly designated asenvironment in the specification. See 37 CFR 1.152 and MPEP § 1503.02, subsection III.

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** >

¶ 15.50.02 Description of Broken Lines

The following statement must be used to describe the broken lines on the drawing (MPEP § 1503.02,subsection III):

-- The broken line showing of [1] is for the purpose of illustrating [2] and forms no part of the claimeddesign. --

The above statement [3] inserted in the specification preceding the claim.

Examiner Note:

1. In bracket 1, insert name of structure.

2. In bracket 2, insert --portions of the “article”-- or --environmental structure--.

3. In bracket 3, insert --must be-- or --has been--.

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¶ 15.50.03 Objectionable Use of Broken LinesIn Drawings

Dotted lines or broken lines used for environmental structure should not cross or intrude upon therepresentation of the claimed design for which design protection is sought. Such dotted lines may obscurethe claimed design and render the disclosure indefinite (35 U.S.C. 112).

¶ 15.50.04 Proper Drawing Disclosure WithUse of Broken Lines

Where broken lines showing environmental structure obscure the full line disclosure of the claimed design, aseparate figure showing the broken lines must be included in the drawing in addition to the figures showingonly claimed subject matter, 35 U.S.C. 112, first paragraph.

¶ 15.50.05 Description of Broken Lines asBoundary of Design

The following statement must be used to describe the broken line boundary of a design (MPEP §1503.02, subsection III):

-- The broken line(s) which define the bounds of the claimed design form no part thereof.--

IV. SURFACE TREATMENT

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The ornamental appearance of a design for an article includes its shape and configuration as well as anyindicia, contrasting color or materials, graphic representations, or other ornamentation applied to the article(“surface treatment”). Surface treatment must be applied to or embodied in an article of manufacture.Surface treatment, per se (i.e., not applied to or embodied in a specific article of manufacture), is notproper subject matter for a design patent under 35 U.S.C. 171. Surface treatment may either be disclosedwith the article to which it is applied or in which it is embodied and must be shown in full lines or in brokenlines (if unclaimed) to meet the statutory requirement. See MPEP § 1504.01. The guidelines that apply fordisclosing computer-generated icons apply equally to all types of surface treatment. See MPEP§ 1504.01(a).

A disclosure of surface treatment in a design drawing or photograph will normally be considered as prima facie evidence that the inventor considered the surface treatment shown as an integral part of the claimeddesign. An amendment canceling two-dimensional surface treatment or reducing it to broken lines will bepermitted if it is clear from the application that applicant had possession of the underlying configuration of the basic design without the surface treatment at the time of filing of the application. See In re Daniels,144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998). Applicant may remove surface treatmentshown in a drawing or photograph of a design without such removal being treated as new matter, providedthat the surface treatment does not obscure or override the underlying design. The removal of three-dimensional surface treatment that is an integral part of the configuration of the claimed design, forexample, removal of beading, grooves, and ribs, will introduce prohibited new matter as the underlyingconfiguration revealed by this amendment would not be apparent in the application as originally filed. SeeMPEP § 1504.04, subsection II.

V. PHOTOGRAPHS AND COLOR DRAWINGS

Drawings are normally required to be submitted in black ink on white paper. See 37 CFR 1.84(a)(1).Photographs are acceptable only in applications in which the invention is not capable of being illustrated inan ink drawing or where the invention is shown more clearly in a photograph (e.g., photographs of ornamental eff ects are acceptable). See also 37 CFR 1.81(c) and 1.83(c), and MPEP § 608.02.

Photographs submitted in lieu of ink drawings must comply with 37 CFR 1.84(b). Only one set of black andwhite photographs is required. Color photographs and color drawings may be submitted in designapplications if filed with a petition under 37 CFR 1.84(a)(2). Petitions to accept color photographs or colordrawings will be considered by the Primary Examiners as delegated by the TC Director. A grantable petitionunder 37 CFR 1.84(a)(2) must explain that color drawings or color photographs are necessary becausecolor is an integral part of the claimed design. Any other explanation as to why color drawings or colorphotographs are necessary will normally not be acceptable. A grantable petition must also be accompaniedby: (1) the fee set forth in 37 CFR 1.17(h); (2) three sets of the color photographs or color drawings; and(3) an amendment to the specification inserting the following statement --The file of this patent contains atleast one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s)will be provided by the Office upon request and payment of the necessary fee.-- See 37 CFR 1.84(a)(2)( *> iii < ) and MPEP § 608.02. ** If the photographs are not of sufficient quality so that all details in thephotographs are reproducible, this will form the basis of subsequent objection to the quality of thephotographic disclosure. No application will be issued until objections directed to the quality of thephotographic disclosure have been resolved and acceptable photographs have been submitted andapproved by the examiner. If the details, appearance and shape of all the features and portions of thedesign are not clearly disclosed in the photographs, this would form the basis of a rejection of the claimunder 35 U.S.C. 112, first and second paragraphs, as nonenabling and indefinite.

Photographs and ink drawings must not be combined in a formal submission of the visual disclosure of theclaimed design in one application. The introduction of both photographs and ink drawings in a designapplication would result in a high probability of inconsistencies between corresponding elements on the ink drawings as compared with the photographs.

When filing informal photographs or informal drawings with the original application, a disclaimer included in

EXHIBIT F Page 602
































































































































the specification or on the photographs themselves may be used to disclaim any surface ornamentation,logos, written matter, etc. which form no part of the claimed design. See also MPEP § 1504.04, subsectionII.

Color photographs and color drawings may be submitted in design applications if filed with a petition under37 CFR 1.84(a)(2). Color may also be shown in pen and ink drawings by lining the surfaces of the designfor color in accordance with the symbols in MPEP § 608.02. If the formal drawing in an application islined for color, the following statement should be inserted in the specification for clarity and to avoidpossible confusion that the lining may be surface treatment --The drawing is lined for color.-- However,

lining a surface for color may interfere with a clear showing of the design as required by 35 U.S.C. 112,first paragraph, as surface shading cannot be used to define the contours of the design.

If color photographs or color drawings are filed with the original application, color will be considered anintegral part of the disclosed and claimed design. The omission of color in later filed formal photographs ordrawings will be permitted if it is clear from the application that applicant had possession of the underlyingconfiguration of the basic design without the color at the time of filing of the application. See In re Daniels , 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998) and MPEP 1504.04, subsectionII. Note also 37 CFR 1.152, which requires that the disclosure in formal photographs be limited to thedesign for the article claimed.

** >

¶ 15.05.041 Informal ColorDrawing(s)/Photograph(s) Submitted

Informal color photographs or drawings have been submitted for the purposes of obtaining a filing date.When f ormal drawings are submitted, any showing of color in a black and white drawing is limited to thesymbols used to line a surface to show color (MPEP § 608.02). Lining entire surfaces of a design to showcolor(s) may interfere with a clear showing of the design as required by 35 U.S.C. 112 because surfaceshading cannot be used simultaneously to define the contours of those surfaces. However, a surface maybe partially lined for color with a description that the color extends across the entire surface; this techniquewould allow for the use of shading on the rest of the surface showing the contours of the design (37 CFR 1.152). In the alternative, a separate view, properly shaded to show the contours of the design but

omitting the color(s), may be submitted if identified as shown only for clarity of illustration.

In any drawing lined for color, the following descriptive statement must be inserted in the specification (thespecific colors may be identified for clarity):

--The drawing is lined for color.--

However, some designs disclosed in informal color photographs/drawings cannot be depicted in black andwhite drawings lined for color. For example, a design may include multiple shades of a single color whichcannot be accurately represented by the single symbol for a specific color. Or, the color may be a shadeother than a true primary or secondary color as represented by the drafting symbols and lining the drawingwith one of the drafting symbols would not be an exact representation of the design as originally disclosed.In these situations, applicant may file a petition to accept formal color drawings or color photographs under37 CFR 1.84(a)(2).

<

¶ 15.45 Color Photographs/Drawings AsInformal Drawings

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For filing date purposes, in those design patent applications containing color photographs/drawings contraryto the requirement for ink drawings or black and white photographs, the Office of Initial Patent Examinationhas been authorized to construe the color photographs/drawings as informal drawings rather than to holdthe applications incomplete as filed. By so doing, the Patent and Trademark Office can accept theapplications without requiring applicants to file petitions to obtain the original deposit date as the filing date.However, color photographs or color drawings are not permitted in design applications in the absence of agrantable petition pursuant to 37 CFR 1.84(a)(2). Before the color photographs or color drawings in thisapplication can be treated as formal drawings, applicant must submit [1].

Examiner Note:

In bracket 1, insert --a petition--, --the fee--, --statement in the specification--, --explanation of why colordisclosure is necessary--, and -- three full sets of color photographs or color drawings--.

EXHIBIT F Page 604













EXHIBITG




Antonious v. Spalding & Evenf lo Companies., Inc., 217 F.3d 849 (1999)

©2012 Thomson Reuters. No claim to original U.S. Government Works. 1

Unpublished Disposition217 F.3d 849

NOTICE: THIS IS AN UNPUBLISHED OPINION.(The Court’s decision is referenced in a “Table of

Decisions Without Reported Opinions” appearing inthe Federal Reporter. Use FI CTAF Rule 47.6 for

rules regarding the citation of unpublishedopinions.)

United States Court of Appeals, Federal Circuit.

Anthony John ANTONIOUS, Plaintiff-Appellant, v.

SPALDING & EVENFLO COMPANIES., INC. andSpalding Sports Worldwide, Defendant-Appellees.

No. 98-1478. | Aug. 31, 1999.

Before MAYER, Chief Judge, RICH,* and SCHALL,Circuit Judges.

Opinion

DECISION

SCHALL, Circuit J udge.

*1 Anthony John Antonious appeals the decision of theUnited States District Court for the District of Marylandgranting summary judgment of noninfringement in favorof Spalding & Evenflo Companies, Inc. and SpaldingSports Worldwide (Spalding) with respect to Antonious’sU.S. Patent No. 5,328,184 (the ‘184 patent) and U.S.Design Patent Nos. 320,056 (the ‘056 patent) and327,308(the ‘308 patent), and holding the ‘056 and ‘308 patentsinvalid for violating 35 U.S.C. § 112, ¶ 1. See Antoniousv. Spalding & Evenflo Cos., Inc., 44 F.Supp.2d 732(D.Md.1998). We affirm the district court’snoninfringement summary judgment in favor of Spalding,but reverse its summary judgment decision that the design

patents are invalid.

DISCUSSION

I

This case concerns iron type golf club heads. The ‘184patent is directed to a club head design incorporating acavity back bar weight mass configuration that is

described as increasing golf club performance during agolf swing. The ‘056 and ‘308 patents are directed toornamental designs of iron type golf club heads.

Antonious sued Spalding, claiming that Spalding’s Top-Flite Tour (first through third generations) and TourEdition irons infringed independent claims 1, 18, and 24,as well as associated dependent claims. See Antonious v.Spalding & Evenflo Cos., Inc., 44 F.Supp.2d at 736.1 Claim 1 of the ‘184 patent, which the parties agree isrepresentative, reads as follows (emphasis of disputedlimitation added):

1. An iron type golf club head for hitting a ball alongan intended line of flight, said iron type golf clubhead comprising:

a hosel, a heel, a toe, a ball striking face, a rearwall opposite said ball striking face, an uppersurface including a top ridge, a lower surfaceincluding a sole, a center of gravity centrallylocated relative to said ball striking face, aperipheral mass located on said rear wall at anouter extremity of said club head, saidperipheral mass and said rear wall defining acentrally located cavity formed within said

peripheral mass; and

a single weight member formed on and attachedsolely to said rear wall within said cavity, saidweight member consisting essentially of asingle back bar mass extending between anedge of said peripheral mass located adjacentsaid lower surface and an edge of saidperipheral mass located adjacent said uppersurface, said back bar mass being sized toprovide a significant mass at its point of location to enhance the energy transfer of a golf ball being struck during the execution of a golf stroke, and said entire back bar mass beingoffset and completely spaced from the clubhead’s center of gravity.

’184 patent, col. 6 I. 46-col. 7 I. 2. The district courtinterpreted this limitation as follows:

The phrase “formed on and attached solely to saidrear wall within said cavity” is construed to meanthat the weight member must be attached solely(i.e., only) to the rear wall (back side of the

EXHIBIT G Page 605






striking surface) and not attached also to theperipheral mass within the cavity.

*2 Antonious, 44 F.Supp.2d at 736. Holding thatthere was no dispute of material fact that thecorresponding weight member in the accused deviceswas “integral with, and attached to, the peripheralmass of the club,” the court concluded that thedevices did not literally infringe the ‘184 patent. Id. at 737. The court also held that there was noinfringement under the doctrine of equivalents,stating that a finding of equivalence wouldimpermissibly remove the limitation that the weightmember be “formed on and attached solely to” therear wall of the cavity. See id. at 737-38.

Antonious also claimed that Spalding’s Top Flite Tourand Tour Editions infringed his ‘056 and ‘308 designpatents. The district court granted summary judgment of noninfringement in favor of Spalding, stating that “no

reasonable fact finder could find substantial similaritysuch that a purchaser would be deceived into thinking thatthe Spalding product was of the Antonious design.”Antonious v. Spalding & Evenflo Cos., Inc., 1998 U.S.Dist. Lexis 10731, at *7 (D.Md.1998). In addition, thecourt held both patents invalid for failure to meet therequirements of 35 U.S.C. § 112, ¶ 1, by reason of indefiniteness. See id. at 9-10.

Antonious appeals.

I I

Our review of a grant of summary judgment is plenary.SeeCole v. Kimberly-Clark Corp., 102 F.3d 524, 528, 41USPQ2d 1001, 1004 (Fed.Cir.1996). We must determinewhether “the pleadings, depositions, answers tointerrogatories, and admissions on file, together with theaffidavits, if any, show that there is no genuine issue as toany material fact and that the moving party is entitled to a

judgment as a matter of law.” Unidynamics Corp. v.Automatic Prod. Int’l, Ltd., 157 F.3d 1311, 1316, 48USPQ2d 1099, 1102 (Fed.Cir.1998) (quotingFed.R.Civ.P. 56(c)). When determining whether a

genuine issue of material fact exists, the evidence must beviewed in the light most favorable to the nonmovant andall reasonable inferences must be drawn in favor of thatparty. See id.

A. The’184 Utility Patent “An infringement analysis entails two steps. The first stepis determining the meaning and scope of the patent claimsasserted to be infringed. The second step is comparing the

properly construed claims to the device accused of infringing.” Markman v. Westview Instruments, Inc., 52F.3d 967, 976, 34 USPQ2d 1321, 1326 (Fed.Cir.1995) (enbanc). We review the first step de novo in a summary

judgment case, just as we would after a full trial. See id. at979, 34 USPQ2d at 1329. In the context of a districtcourt’s grant of summary judgment of noninfringement,our review of the second step consists, first, of ade novo determination as to whether any genuine issue of materialfact exists, and second, if there is no genuine issue of material fact, a de novo review as to whether the allegedinfringer was entitled to a judgment as a matter of law.See Cole, 102 F.3d at 528, 41 USPQ2d at 1004. In theabsence of a genuine issue of material fact, summary

judgment in favor of an alleged infringer is properlygranted (a) in the context of literal infringement if noreasonable jury could determine that the accused devicemeets every limitation of the properly construed claims,

see, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d1473, 1476, 45 USPQ2d 1498, 1500 (Fed.Cir.1998), and(b) under the doctrine of equivalents if the evidence issuch that no reasonable jury could determine that a claimlimitation is met in the accused device by an equivalent,see Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 20, 39 n. 8, 41 USPQ2d 1865, 1875 n. 8 (1997).

1. Claim Construction*3 Claim construction is a question of law, which wereview de novo. See Cybor Corp. v. FAS Techs., Inc., 138

F.3d 1448, 1456, 46 USPQ2d 1169, 1174 (Fed.Cir.1998) (en banc ). When construing a claim, a court should firstlook to the intrinsic evidence, i.e., the patent itself, itsclaims, written description, and, if in evidence, theprosecution history. See Vitronics Corp. v. Conceptronic,Inc., 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1576(Fed.Cir.1996). The court may receive extrinsic evidenceto educate itself about the invention and the relevanttechnology, but the court may not use extrinsic evidenceto arrive at a claim construction that is clearly at oddswith the construction mandated by the intrinsic evidence.See Key Pharms. v. Hercon Lab. Corp., 161 F.3d 709,716, 48 USPQ2d 1911, 1917 (Fed.Cir.1998). Dictionarydefinitions are considered to be intrinsic evidence. See Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d968, 971, 50 USPQ2d 1465, 1468 (Fed.Cir.1999).

Claim construction begins with the words of the claim.See Bell Communications Research, Inc. v. VitalinkCommunications Corp ., 55 F.3d 615, 619-20, 34USPQ2d 1816, 1819 (Fed.Cir.1995). In this case, theinfringement analysis centers on the construction of the “asingle weight member formed on and attached solely tosaid rear wall within said cavity” limitation in claim 1 of

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the ‘184 patent, and in particular, the phrase “attachedsolely to said rear wall.”

The critical terms are the words “attached,” “solely,” and“rear wall.” The relevant definition of “attach” is to“make fast or join,” Philip Babcock Gove et al., Webster’s Third New International Dictionary 140(1971), while “solely” is defined as “to the exclusion of alternate or competing things,” id. at 2168. Thus, the plainmeaning of “attached solely to said rear wall” is that theweight member cannot be fastened to any portion of thegolf club head except the rear wall.

We must also determine whether, as Antonious argues,the term “rear wall” is properly construed to comprise theperipheral mass. The district court held that the peripheralmass is not properly considered to be part of the rear wall.We agree. Claim 1 plainly defines the rear wall and

peripheral mass as separate elements.See ’184 patent, col.6, ll. 47-54 (“said [iron] comprising ... a rear wallopposite said ball striking face, ... [and] a peripheral masslocated on said rear wall at an outer extremity of saidclub head, said peripheral mass and said rear wall defining a centrally located cavity”) (emphasis added).

Therefore, because the peripheral mass is defined by theclaim as being separate from, albeit located on, the rearwall, the plain meaning of “a single weight memberformed on and attached solely to said rear wall” does notinclude a weight member fastened to the peripheral mass.

Antonious argues that the written description compels us

to interpret the rear wall term as including the peripheralmass. He asserts that all of the preferred embodimentsshown in the figures indicate that the weight bar isattached both to the rear wall and to the peripheral mass,and that a claim interpretation that does not include thoseembodiments must be incorrect. It is true that claims arenormally construed to cover preferred embodiments. See Vitronics, 90 F.3d at 1583, 39 USPQ2d at 1578 (construing claim language so as to include the onlyembodiment described in the written description, wherethe prosecution history was not in evidence). However,Antonious’s argument is unpersuasive in this case, wheremost of the preferred embodiments are not excluded

under the plain meaning of the claim language and thelimitation at issue was added during prosecution.

*4 We agree with the district court’s statement that“[f]airly and reasonably read, the patent disclosurecontains embodiments which can be viewed as ones inwhich the weight member is other than integral with theperipheral mass.” Spalding I at *7.2 Thus, Antonious isincorrect in asserting that all of the preferredembodiments would be excluded from coverage by claim

1 if the claim language is interpreted to mean that theweight member cannot be fastened to any portion of thegolf club head except the rear wall, and that the rear walldoes not include the peripheral mass. In addition, theexclusion of some preferred embodiments by the“attached solely to said rear wall” limitation is moreeasily understood given the fact that Antonious added thisclaim language during prosecution, i.e., after he hadsubmitted the written description, including the figuresshowing the preferred embodiments.

During prosecution, the examiner rejected claims in aparent application of the ‘184 patent pursuant to 35U.S.C. § 103, based on U.S. Patent No. 3,814,437(Winquist) in view of U.S. Patent Nos. 4,602,787(Sugioka)and4,511,145 (Schmidt). Winquist discloses aniron-type golf club head with a peripheral mass and asingle weight member (in the form of a symbol) attached

both to the rear wall and the peripheral mass. Sugiokadiscloses a hollow metal “wood”-type golf club head witha detachable sole plate. A weight chamber is mounted onthe upper surface of the sole plate and several reinforcingribs are attached to the weight chamber and the sole plateso that the ribs come into contact with the sides of theclub head when the sole plate is attached to the upperportion of the club head. In the rejection, the examinerstated that “it would have been obvious to modify theWinquist device ... so long as the bar connects the upperand lower surfaces of the rear cavity as shown byWinquist.”

As part of his office action response, Antonious added the“attached solely to said rear wall” language. Antoniousreferred to this limitation only in distinguishing Sugioka,and argues now that an interpretation of this language toexclude irons where the weight member is attached to therear wall and peripheral mass is therefore unjustified. Thisargument is not persuasive.

We do not disagree with Antonious’s suggestion that theaddition of this claim language may not have been neededin order to distinguish Sugioka. However, an applicant isfree to give up more claim scope than is necessary toovercome a reference. See Bai v. L & L Wings, Inc., 160

F.3d 1350, 1356, 48 USPQ2d 1674, 1678-79(Fed.Cir.1998); see also Lemelson v. General Mills, Inc., 968 F.2d 1202, 1206, 23 USPQ2d 1284, 1288(Fed.Cir.1992) (“The prosecution history gives insightinto what the applicant originally claimed as theinvention, and often what the applicant gave up in orderthe meet the Examiner’s objections.”); Standard Oil Co.v. American Cyanamid Co., 774 F.2d 448, 452, 227USPQ 293, 296 (Fed.Cir.1985) (the prosecution history“limits the interpretation of claims so as to exclude any

EXHIBIT G Page 607






interpretation that may have been disclaimed ordisavowed during prosecution in order to obtain claimallowance”). We are satisfied that, whether he needed toor not, Antonious gave up a claim scope that couldinclude a weight bar attached to the peripheral mass andthe rear wall when he added the “attached solely to saidrear wall” limitation.

*5 Antonious finally argues that the examiner’s rejectionpursuant to 35 U.S.C. § 102 based on U.S. Patent No.5,048,835 (Gorman) shows that the examiner must haveagreed with Antonious’s proffered interpretation of thedisputed claim language, because Gorman discloses aweight member attached to the peripheral mass. We arenot persuaded by this argument for two reasons. First, wewould not be persuaded to interpret claim 1 as includingthe peripheral mass as part of the rear wall even if theexaminer had expressly indicated that he thought this was

so, given the plain meaning of the claim language.Moreover, the examiner did not discuss the “attachedsolely to said rear wall” limitation with respect toGorman, which raises the possibility that the examinermay not have considered that claim language whenissuing that rejection.

Consequently, we construe the phrase “a single weightmember formed on and attached solely to said rear wall”to mean that the weight member cannot be fastened to anyportion of the golf club except the rear wall; we furtherconclude that the peripheral mass is not part of the rearwall.

2. Comparing the Construed Claim to the AccusedDevices

The second step of the infringement analysis consists of comparing the properly construed claims to the accuseddevices. See Cybor, 138 F.3d at 1467, 46 USPQ2d at1184. Antonious appeals both the district court’s grant of summary judgment of no literal infringement and noinfringement under the doctrine of equivalents. Weaddress the literal infringement issue first.

a. Literal Infringement“To prove literal infringement, the patentee must showthat the accused device contains every limitation in theasserted claims. If even one limitation is missing or notmet as claimed, there is no literal infringement.”Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206,1211, 48 USPQ2d 1010, 1014-15 (Fed.Cir.1998). In theabsence of a genuine issue of material fact, summary

judgment of no literal infringement is properly granted if

no reasonable jury could determine that the accuseddevice meets every limitation of the properly construedclaims. See Gentry Gallery, 134 F.3d at 1476, 45USPQ2d at 1500.

We have construed the “single weight member formed onand attached solely to said rear wall” limitation to meanthat the weight member cannot be fastened to any portionof the golf club except the rear wall, and that theperipheral mass is not part of the rear wall. There is nodispute that the weight member in each of the accusedclubs is attached to the peripheral mass. We thereforehold that no reasonable jury could determine that theaccused devices embody the properly construed “attachedsolely to said rear wall” limitation, and consequentlyaffirm the district court’s grant of summary judgment infavor of Spalding on the literal infringement issue.

b. Doctrine of EquivalentsIn the absence of a genuine issue of material fact,summary judgment of no infringement under the doctrineof equivalents is properly granted if the evidence is suchthat no reasonable jury could determine that a claimlimitation is met in the accused device by an equivalent.See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 20, 39 n. 8, 41 USPQ2d 1865, 1875 n. 8 (1997).

Two limits on the scope of the doctrine of equivalentsapply in this case. The first is prosecution historyestoppel, which prevents operation of the doctrine of

equivalents to expand the literal coverage of a claimlimitation to include subject matter surrendered duringprosecution of the patent. See Augustine Medical Inc. v..Gaymar Ind. Inc.,181 F.3d 1291, 50 USPQ2d 1900, 1905(Fed.Cir.1999) (noting that the scope of the estoppel isdetermined from the viewpoint of a competitor, i.e., whata competitor would reasonably conclude that the applicanthad surrendered during prosecution). The second relevantlimitation on the doctrine of equivalents is that applicationof the doctrine is not allowed such broad play as toeffectively eliminate an element in its entirety. See Warner-J enkinson at 29, 41 USPQ2d at 1871. We firstdiscuss the application of prosecution history estoppel.

*6 Antonious amended the asserted claims with the“attached solely to said rear wall” limitation duringprosecution in response to a substantive rejection. Thus,prosecution history estoppel applies to limit the scope of the asserted claims. We hold that a competitor wouldreasonably conclude that Antonious thereby surrenderedcoverage of any iron-type golf club head comprising aweight member attached both to the peripheral mass andthe rear wall of the club head. Because there is no disputethat each of the accused clubs has a weight member

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attached both to the peripheral mass and the rear wall, noreasonable jury could conclude that an equivalent of the“single weight member formed on and attached solely tosaid rear wall” limitation is embodied in the accuseddevices. This provides the first basis upon which weaffirm the district court’s grant of summary judgment of no infringement under the doctrine of equivalents.

Moreover, even if prosecution history estoppel did notapply in this case, we would affirm the district court’ssummary judgment of no infringement under the doctrineof equivalents based on the term of exclusion, “solely.”We have interpreted the literal scope of the claimlimitation “a single weight member formed on andattached solely to said rear wall” to mean that the weightmember cannot be connected to any structure other thanthe rear wall, and that the rear wall does not comprise theperipheral mass. Thus, application of the doctrine of

equivalents to expand the scope of the claim to include aniron-type golf club head with a weight member attachedto both the rear wall and the peripheral mass wouldimpermissibly eliminate that limitation. Cf. AthleticAlternatives Inc. v. Prince Manufacturing Inc., 73 F.3d1573, 1582, 37 USPQ2d 1365, 1373 (Fed.Cir.1996) (holding that the doctrine of equivalents could not expandthe scope of a limitation requiring that tennis racketstrings be splayed across the racket frame width in a rangethat “varies between” a minimum and maximum to covera tennis racket with strings splayed in two distinct offsetdistances, because a proper construction of the limitationrequired at least a minimum, maximum, and intermediate

offset distance, and there was no equivalent to theintermediate offset distance in the accused device).

Therefore, since the weight member in the accused clubsis attached to both the rear wall and the peripheral mass,no reasonable jury could determine that the “attachedsolely to said rear wall” limitation is met in the accusedclubs by an equivalent. This provides an independentground for affirming the district court’s grant of summary

judgment of no infringement under the doctrine of equivalents.

B. The ‘056 and ‘308 Design Patents The district court held on summary judgment that thedesign patents were invalid and not infringed by theaccused products. For the reasons discussed hereinbelow,we reverse the district court’s summary judgment holdingthe design patents invalid, but affirm the court’s summary

judgment holding the patents not infringed by the accusedproducts. We begin with the validity issue.

1. Validity*7 A patent is presumed to be valid and must be proveninvalid by clear and convincing evidence. See L.A. Gear,Inc. v. ThomMcAn Shoe Co., 988 F.2d 1117, 1123, 25USPQ2d 1913, 1917 (Fed.Cir.1993). Design patents mustcomply with the requirements of 35 U.S.C. § 112. See Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423,1440-41, 221 USPQ 97, 108 (Fed.Cir.1984) (citing 35U.S.C. § 171). Whether a claim is indefinite and thereforeinvalid for violating section 112, ¶ 1, is a question of law,which we review de novo. See Personalized MediaCommunications v. International Trade Comm’n, 161F.3d 696, 702, 48 USPQ2d 1880, 1886 (Fed.Cir.1998).

The district court held both patents invalid pursuant tosection 112, ¶ 1, on the ground that each showed twomaterially different designs:

In the ‘056 patent, Figures 2 and 3(assumed to be sufficiently similarto constitute a single design) differfrom [the Maruman prior artreference] only by virtue of atriangular top ridge and a bar whichis thicker at the bottom than thetop. Figure 4, however, discloses adesign having neither of the pointsof novelty presented in the Figure 2and 3 design....

The Court finds that no one skilled in the art coulddetermine from the ‘056 patent what is the allegedsingle ornamental design that is being disclosed andclaimed. One cannot know whether, in building a clubpursuant to the alleged design, the club should orshould not have a triangular top ridge, whether itshould or should not have a bar which tapers frombottom to top or is uniform, or whether it should orshould not have the markedly flat appearance of Figure4.

Accordingly, the Court holds that the ‘056 patent isinvalid for failure to meet the standards of 35 U.S.C. §

112. Similarly, in regard to the ‘308 patent, one wouldnot know whether the design called for the tapered barshown in Figures 2 and 3 or the uniform bar in a clubhead with a “squashed” appearance shown in Figure 4.Accordingly, on the same rationale as for the ‘056patent, the Court holds the ‘308 patent to be invalid.

Antonious,1998 U.S. Dist. Lexis 10731, at *9-10.

The ‘056 patent figures are shown as follows:

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TABULAR OR GRAPHIC MATERIAL SET AT THISPOINT IS NOT DISPLAYABLEPHOTO

The ‘308 patent figures are shown as follows:

TABULAR OR GRAPHIC MATERIAL SET AT THISPOINT IS NOT DISPLAYABLEPHOTOA design patent may disclose more than one embodimentof a design. See In re Rubinfield, 270 F.2d 391, 395, 123USPQ 210, 214 (CCPA 1959) (“[W]e are of the opinionthat it cannot be stated as an invariable rule that a designapplication cannot disclose more than one embodiment of the design. Whether such disclosure is improper mustdepend upon the particular circumstances of theindividual case involved.”); see also In re Klein, 987 F.2d1569, 1570 n. 1, 26 USPQ2d 1133, 1334 n. 1

(Fed.Cir.1993) (“[T]he drawings depict three slightvariations on a single basic design.... No objection hasbeen made to this not uncommon practice.”). The primaryvalidity issue here, then, is whether the ‘056 and ‘308patents each disclose one embodiment of one design,more than one embodiment of one design, or more thanone design. As we discuss below, we are satisfied that thefigures in each patent do not disclose more than onedesign. Therefore, the patents are not invalid for beingindefinite.

*8 The district court focused its analysis on apparentdifferences between Figure 4 and Figures 2 and 3 in each

patent. Specifically, the court observed that Figure 4showed neither of the two points of novelty that the courtfound in Figures 2 and 3 (i.e., a weight bar that wasthicker at the bottom than at the top, and, in Figure 2 of the ‘056 patent, a triangular top ridge), and that Figure 4showed a flat or “squashed” appearance compared to thecorresponding club heads shown in Figures 2 and 3.

We are satisfied, however, that the “squashed”appearance of Figure 4 compared to the correspondingFigures 2 and 3 in each patent is due to the perspectiveused in drawing the figure. That perspective also accountsfor the failure of Figure 4 of the ‘056 patent to indicatethe triangular top ridge shown in Figure 2 of that patent.We are therefore left with the apparent differences in thethickness profile of the weight bar shown in the figures asa potential source of a substantially different overallappearance which could justify holding the patents invalidfor attempting to claim more than one design. See Rubinfield, 270 F.2d at 393, 123 USPQ at 212 (“[T]hetotal substance of a design rests in its appearance as awhole.”).

We agree with the district court that Figure 4 of each

patent appears to show a constant-thickness weight bar.3 We cannot tell, though, whether this is due to a drawingerror, the perspective used in drawing the figures, or if Antonious intended to claim an embodiment of the golf club head design with a constant-thickness weight bar.However, Figures 2 and 3 plainly show a tapered weightbar. We conclude that a person of skill in the art wouldprimarily look to Figures 2 and 3 to determine the shapeof the weight bar, and any associated discrepancies inFigure 4 would not be sufficient to preclude such a personfrom gaining an overall understanding of the totalsubstance of the designs. Thus, we conclude that thefigures in each of the design patents disclose at mostdifferent embodiments of one design per patent.Consequently, we hold that Spalding could not haveshown by clear and convincing evidence that the ‘056 and‘308 patents were invalid for indefiniteness. We thereforereverse the district court’s decision holding the ‘056 and

‘308 design patents invalid.

2. Infringement The Supreme Court established the test for determininginfringement of a design patent in GorhamCo. v. White, 81 U.S. (14 Wall.) 511, 528 (1871):

[I]f, in the eye of an ordinaryobserver, giving such attention as apurchaser usually gives, twodesigns are substantially the same,

if the resemblance is such as todeceive such an observer, inducinghim to purchase one supposing it tobe the other, the first one patentedis infringed by the other.

“In addition to overall similarity of designs, the accuseddevice must appropriate the novelty in the patented devicewhich distinguishes it from the prior art. Absent thepresence of the novel features in the accused products, apatented design has not been appropriated.” Avia GroupInt’l Inc. v. L.A. Gear California, 853 F.2d 1557, 1565, 7USPQ2d 1548, 1554 (Fed.Cir.1988) (citations and

quotation omitted). The district court properly stated thesetests. See Antonious, 1998 U.S. Dist. Lexis 10731, at*5-6.

*9The accused Spalding club heads are shown below:

TABULAR OR GRAPHIC MATERIAL SET AT THISPOINT IS NOT DISPLAYABLEPHOTO

The district court relied on the Gorham substantial

EXHIBIT G Page 610






similarity test in granting summary judgment of noninfringement in favor of Spalding, stating that

[i]t is patently manifest, from acomparison of the accused productswith the Design Patents, that noreasonable fact finder could findsubstantial similarity such that thata purchaser would be deceived intothinking that the Spalding productwas of the Antonious design. Thebar in the accused products iscurved in a fashion whichunmistakably distinguishes it fromthe design of the patents at issue.”

Id. at *7. Antonious argues that this statement shows thatthe district court erred by failing to compare the overalldesigns of each patent to that of the accused clubs. Wedisagree. The second sentence in the above quotationmerely indicates that the district court noted that thecurved shape of the weight bars in the accused products

unmistakably distinguishes the overall design of Spalding’s accused clubs from the designs claimed in the‘056 and ‘308 patents.

After reviewing the evidence and considering all of Antonious’s arguments, we hold that no reasonable jurywould conclude that the overall designs of the accusedproducts and the patents are so substantially similar thatan ordinary observer would be deceived into purchasing aSpalding club, thinking that it was a club embodying oneof the patented designs. We therefore affirm the districtcourt’s grant of summary judgment in favor of Spaldingon the design patent infringement issue.

Each party shall bear its own costs.

Parallel Citations

1999 WL 777450 (C.A.Fed.)

FootnotesCircuit J udgeRich heard oral argument in this case, but died on June 9, 1999. The case was decided by the remaining judges inaccordance withFed. Cir. Rule 47.11.

1 There are two other opinions of the district court that set forth decisions that are relevant to this appeal. Antonious v. Spalding &Evenflo Cos., Inc., 1998 U.S. Dist. Lexis 10740 (D.Md.1998), concerned, inter alia, the construction of claim 1 of the ‘184 patent.Antonious v. Spalding & Evenflo Cos., Inc., 1998 U.S. Dist. Lexis 10731 (D.Md.1998), concerned the design patents.

2 The district court based this conclusion on the differences in the preferred embodiments shown in the figures of the ‘184 patent.

The court found that the preferred embodiments shown in figures 2, 3, 9 and 10 show the weight bar attached both to the rear walland the peripheral mass, as indicated by the absence of a joint line between the weight member and the lower portion of theperipheral mass. The court found that figures 4-8 and 11-20 show the weight bar not attached to the peripheral mass, based on thepresence of a line between the weight member and the lower portion of the peripheral mass.

3 We also note that the weight bar in Figure 3 appears to be thinner at the top than the weight bar in Figure 2.

End of Document ©2012 Thomson Reuters. No claim to original U.S. Government Works.


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