Kimber Cakeware v Bradshaw - Motion for Sanctions

8/13/2019 Kimber Cakeware v Bradshaw - Motion for Sanctions

1/95

6243892.1

IN THE UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF OHIO

EASTERN DIVISION____________________________________________

)

KIMBER CAKEWARE, LLC., ) ) Case No. 2:13-cv-0185)

Plaintiff, )) Judge Marbley

v. ))

BRADSHAW INTERNATIONAL, INC., ) Magistrate Judge King)

Defendant. )____________________________________________ )

DEFENDANT BRADSHAW INTERNATIONAL, INC.S MEMORANDUM INSUPPORT OF ITS MOTION FOR RULE 11 SANCTIONS

Pursuant to Federal Rule of Civil Procedure 11, Defendant Bradshaw International, Inc.

(Bradshaw) brings the present motion against Kimber Cakeware, LLC (Kimber) for

Kimbers failure to withdraw its Complaint against Bradshaw. Kimbers Complaint lacks

legitimate legal and factual foundation. Kimber has asserted that Bradshaw infringes its design

patent, but has produced no evidence that supports its assertion of infringement. Moreover,

Kimber has asserted, and still maintains, a claim construction that ignores clear Federal Circuit

precedent. Kimber has wrongly asserted protection for a functional, utilitarian article through its

design patent, which is the epitome of what cannot be claimed in a design patent.

Bradshaw brings the instant motion as a last resort, having made repeated attempts to

resolve this matter without resorting to filing a Rule 11 motion. Bradshaw has repeatedly sought

an explanation from Kimber as to why Kimber believes its patent is being infringed. The only

explanation that Kimber has every provided in response has been by its ipse dixit paraphrase of

the test for infringement under Egyptian Goddess , that the ordinary observer would be confused.

Case: 2:13-cv-00185-ALM-NMK Doc #: 24 Filed: 02/05/14 Page: 1 of 21 PAGEID #: 179


2/95

26243892.1

The only evidence Kimber has ever offered to support its conclusory assertion is that a single

retailer, upon inquiry by Kimber, stated that it was already selling Bradshaws product.

However, this fact actually demonstrates that the retailer lacked any confusion between the two

products, easily identifying the source. Consequently, the only evidence Kimber has in support

of its claim in fact rebuts Kimbers allegation of confusion.

Lacking any basis in fact or law, Kimbers true motives for bringing the instant suit can

be discerned: to shake down Bradshaw for a quick buck, regardless of the merits of its claims

or the law of design patents. Kimber has demanded a settlement amount far less than the costs

Bradshaw would need to defend the current litigation. The Federal Rules are designed to protectdefendants from this type of spurious allegation. The Court, upon full review of the facts and law

of this case, should reach the same conclusion Bradshaw hasthat Kimbers Complaint lacks

legitimate basis, Kimbers Complaint must be dismissed with prejudice, and Kimber and its

attorneys be appropriately sanctioned under Rule 11.

I. Background

Kimber filed the instant action on March 1, 2013, alleging that Bradshaw infringed a

single design patent, U.S. Patent No. D671,376 (the 376 Patent). The 376 Patent claims the

ornamental design for a batter separator, as depicted in four drawings of the 376 Patent. The

underlying utilitarian article of the claimed ornamental design, a batter separator, is designed to

fit inside a standard-sized muffin tin cup, to permit two different types of batters to be used in

creating a single muffin or cupcake (e.g., a half-vanilla, half-chocolate cupcake). The claimed

ornamental design for a batter separator is shown in Figure 1 of the 376 Patent, the front view,

while Figure 2 depicts a nearly identical rear view. Figures 3 and 4 depict the side view and

top view of the batter separator. Both Figures 3 and 4 are essentially drawings of rectangles.



3/95

36243892.1

Figure 1 Figure 3

As shown above, the claimed design is two-dimensional and minimalist. The distinctive

features of the claimed design include a lower trapezoidal cup-shaped portion, protrusions

extending over the edge of the cup area, a semi-circular bell at the top of the product, a

simple curved slope of the top edge of the product extending from the protrusions to the bell, and

seven small circles located under the bell portion.

The accused infringing Bradshaw product, the Sweet Creations by Good Cook cupcake

divider, takes a completely different aesthetic approach in its ornamental design for a cupcake-

shaped cupcake divider. The Bradshaw product has a distinctive circular swirl pattern

throughout the top half of the divider, with a two-tier top that, combined with the swirl, provides

the illusion of three-dimensional depth of the topping of the cupcake. The Bradshaw accused

product also provides the utilitarian function of fitting into standard-sized muffin cup tin.



4/95

46243892.1

Bradshaw Accused Product

Kimbers Complaint sought relief inter alia a preliminary injunction for the irreparable

harm Kimber was facing due to Bradshaws alleged infringement. [D.I. 1.] However, Kimber

has made no motion for a preliminary injunction, and does not appear to be making any attempt

to seek one. Instead, Kimber has demanded payment from Bradshaw for an amount of money

that falls way below the amount that Bradshaw would be required to expend to defend the

present litigation. In fact, after Kimber had been provided financial data from Bradshaw as part

of the settlement negotiations, which demonstrated that the possible value of the alleged

infringement was even less than Kimbers settlement demand, Kimber served broad, unfocused,

and burdensome discovery on Bradshaw in an apparent attempt to force Bradshaw to settle.

II. Legal Standard

A. The Law of Design Patents

Although design patents share features of the much more common utility patentsuch as

patentability requirements under Title 35, examination before the U.S. Patent and Trademark

Officedesign patents are permitted to protect only the ornamental or non-functional aspects of

an article of manufacture. See Intl Seaway Trading Corp. v. Walgreens Corp ., 589 F.3d 1233,

1238 (Fed. Cir. 2009).



5/95

56243892.1

A design patent protects the "non-functional aspects of anornamental design as shown in a patent." Keystone Retaining WallSystems v. Westrock, Inc. , 997 F.2d 1444, 1450 (Fed. Cir. 1993)(citing Lee v. Dayton-Hudson Corp. , 838 F.2d 1186, 1188-89 (Fed.Cir. 1988). A design may consist of "surface ornamentation,

configuration, or a combination of both." 1 Donald S. Chisum,Patents, 1.04 (1995). Because a design patent is by its naturelimited to ornamentation, design patents "cannot include claims tothe structural or functional aspects of the article[.]" Lee , 838 F.2dat 1188. Indeed, if a design patented article is primarily functional,the design patent is invalid . Avia Group International, Inc. v. L.A.Gear California , 853 F.2d 1557, 1563 (Fed. Cir. 1988).

Arner v. Sharper Image Corp. , No. 94-1713, 1995 U.S. Dist. LEXIS 21156, at *31 (C.D. Cal.

Oct. 5, 1995).

The drawings of the design patent define the scope of the claim. The first step in an

analysis of design patent infringement is to determine the scope of the claim. Determining

whether a design patent claim has been infringed requires, first, as with utility patents, that the

claim be properly construed to determine its meaning and scope. Elmer v. ICC Fabricating,

Inc., 57 F.3d 1571, 1577 (Fed. Cir. 1995). When construing the claim of a design patent, it is

important to consider that [a] patented design is defined by the drawings in the patent, not just

by one feature of the claimed design. Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997

F.2d 1444, 1450 (Fed. Cir. 1993). Design patents have almost no scope. The claim . . . in all

design cases, is limited to what is shown in the application drawing. In re Mann , 861 F.2d 1581,

1582 (Fed. Cir. 1988).

[W]e have made clear that a design patent, unlike a utility patent, limits protection to the

ornamental design of the article. If the patented design is primarily functional rather than

ornamental, the patent is invalid. However, when the design also contains ornamental aspects, it

is entitled to a design patent whose scope is limited to those aspects alone and does not extend to

any functional elements of the claimed article. David A. Richardson v. Stanley Works, Inc. , 597



6/95

66243892.1

F.3d 1288, 1293-94 (Fed. Cir. 2010) (internal citations omitted). The design of a useful article is

deemed functional where the appearance of the claimed design is dictated by' the use or

purpose of the article. Rosco, Inc. v. Mirror Lite Company , 304 F.3d 1373, 1378 (Fed. Cir.

2002). (internal citation omitted). In other words, where the design of the article (or portion

thereof) is dictated by the function of the article, the design (or portion thereof) is functional. See

Avia Group International, Inc. v. L.A. Gear California, Inc. , 853 F.2d 1557, 1563 (Fed. Cir.

1988).

When functional elements are present in a claimed design, these functional elements must

be verbally identified. Where a design contains both functional and non-functional elements, thescope of the claim must be construed in order to identify the non-functional aspects of the

design as shown in the patent. OddzOn Prods., Inc. v. Just Toys, Inc. , 122 F.3d 1396, 1405

(Fed. Cir. 1997) (quoted in Egyptian Goddess , 543 F.3d at 680) (emphasis added). The Court is

required to construe the 376 Patent to ensure the ornamental features of the design are sorted

from the functional features.

After the claim of the design patent is construed, the accused design is compared against

the patent in application of the ordinary observer test. The test originates from the Supreme

Court finding that

if, in the eye of an ordinary observer, giving such attention as apurchaser usually gives, two designs are substantially the same, ifthe resemblance is such as to deceive such an observer, inducinghim to purchase one supposing it to be the other, the first onepatented is infringed by the other.

Gorham Co. v. White , 81 U.S. 511, 528 (1871). The ordinary observer is generally the principal

purchaser of the article. The Goodyear Tire & Rubber Co. v. The Hercules Tire & Rubber Co.,



7/95

76243892.1

Inc. , 162 F.3d 1113, 1117 (Fed. Cir. 1998). However, this ordinary observer is imputed with the

knowledge of prior art designs.

When the differences between the claimed and accused designs are

viewed in light of the prior art, the attention of the hypotheticalordinary observer may be drawn to those aspects of the claimeddesign that differ from the prior art. If the claimed design is closeto the prior art designs, small differences between the accuseddesign and the claimed design assume more importance to the eyeof the hypothetical ordinary observer. The ordinary observer,however, will likely attach importance to those differencesdepending on the overall effect of those differences on the design.

Crocs, Inc. v. International Trade Commission , 598 F.3d 1294, 1303 (Fed. Cir. 2010).

Accordingly, the test has more recently been formulated by the Federal Circuit to inquirewhether an ordinary observer, familiar with the prior art designs , would be deceived into

believing that the accused product is the same as the patented design. Richardson , 597 F.3d at

1295 (citing Egyptian Goddess, Inc. v. Swisa, Inc. , 543 F.3d 665, 681 (Fed. Cir. 2008) (en banc))

(emphasis added). In other words, infringement of a design patent can only be found where, in a

side-by-side comparison of the construed design patent claim (accounting for functional features)

with the accused product, the overall designs are confusingly similar, but with particular

emphasis on smaller differences when the claimed design is similar to the prior art.

B. Rule 11 Sanctions

The Federal Circuit recently summarized the purpose and intent of Federal Rule of Civil

Procedure 11:

Rule 11 expressly requires that an attorney presenting a pleading,motion, or other paper before the court certify that he hasperformed "an inquiry reasonable under the circumstances" suchthat he can verify that (1) "it is not being presented for anyimproper purpose, such as to harass, cause unnecessary delay, orneedlessly increase the cost of litigation," (2) "the claims . . . arewarranted by existing law or by a nonfrivolous argument forextending, modifying, or reversing existing law;" (3) "the factual



8/95

86243892.1

contentions have evidentiary support or, . . . will likely haveevidentiary support after a reasonable opportunity for furtherinvestigation or discovery." Fed. R. Civ. P. 11(b)(1)-(3). As the1993 advisory committee note explains, this rule "requires litigantsto 'stop-and-think' before initially making legal or factual

contentions." Fed. R. Civ. P. 11 advisory committee note to 1993amendments. The notes explain that the changes to the rule"emphasize[] the duty of candor by subjecting litigants to potentialsanctions for insisting upon a position after it is no longer tenable."

Raylon v. Complus Data Innovations, Inc. , 700 F.3d 1361, 1366-1367 (Fed. Cir. 2012). In other

words, Rule 11 requires litigants to not only have a legitimate basis, in both fact and law, for

asserting a claim, but are required to withdraw its claim should their position shown to be no

longer tenable.The Federal Circuit applies the law of the regional circuit in reviewing Rule 11 sanctions.

Eon-Net LP v. Flagstar Bancorp , 653 F.3d 1314, 1328 (Fed. Cir. 2011). Under Sixth Circuit

precedent, attorneys are required to follow an objective standard for asserting claims: The test

for the imposition of Rule 11 sanctions is whether the individual attorney's conduct was

reasonable under the circumstances. Mann v. G & G Mfg., Inc. , 900 F.2d 953, 958 (6th Cir.

1990). The court elaborated that Plaintiffs counsel cannot insulate itself from Rule 11 sanctions

merely by showing that they acted in good faith, but instead must maintain a level of conduct

that meet[s] an objective standard of reasonableness under the circumstances. Id. Where a

litigants case is untenable, making conclusory allegations without factual support, and cannot be

sustained as a matter of law, Rule 11 is violated and sanctions against the litigant are warranted.

See Trans Rail Am., Inc. v. Hubbard Twp. , No. 4:08-02790, 2012 U.S. Dist. LEXIS 139113, at

*10-11 (N.D. Ohio Sept. 27, 2012) (citing Mann v. G & G Mfg .); Meier v. Green , 2007 U.S.

Dist. LEXIS 65766, No. 07-11410, at *7 (E.D. Mich. Sept. 6, 2007) (citing Mann v. G & G

Mfg .).



9/95

96243892.1

As demonstrated below, Kimber lacked any legitimate basis to assert infringement

against Bradshaw. Kimber has continued to assert its infringement claim against Bradshaw

despite lack of evidence, clear guidance from the Federal Circuit that refutes its contentions, and

an unambiguous demonstration by Bradshaw of these deficiencies.

III. Kimbers Allegations

In Kimbers Complaint, Kimber accused Bradshaws batter separator as infringing

Kimbers 376 Patent. Kimber alleged, without any factual support or analysis that [t]he design

of Bradshaws batter separator as marked and sold would cause an ordinary observer, familiar

with the prior art designs, to be deceived into believing that the design of Bradshaws batter

separator is the same as Kimbers patented design. [D.I. 1 31.] In essence, this is an

incomplete paraphrase from the holding in Egyptian Goddess . Kimber ignores the functionality

of its patented design, ignores any consideration of the prior art, and provides no explanation as

to why the ordinary observer would conclude that the accused Bradshaw product infringes the

376 Patent.

Accordingly, Bradshaw served an interrogatory on Kimber to provide all facts in support

of its assertion of infringement. In response, Kimber again provides an incomplete and wholly

deficient analysis on design patent claim construction and its infringement contentions, then

concludes: Applying the Egyptian Goddess standard to the Kimber matter and observing the

designs below, it is Kimbers position that an ordinary observer would conclude that the accused

products are similar enough to create market confusion. Ex. 1, Kimbers Answers to

Bradshaws First Set of Interrogatories, No. 16. The drawings below are reproduced here:



10/95

106243892.1

The only evidence that Kimber cites in support of its conclusory market confusion theory is

merely repeating the same allegation made in the Complaintthat a customer of Bradshaws

refused to carry Kimbers product because it was already carrying Bradshaws product. [D.I. 1

27.] In fact, as evidenced by the email chain annexed to Kimbers Complaint, the customer was

able to precisely identify the proper source of the batter separator from Bradshaw, including a

link to Bradshaws Good Cook website. [ Id. Ex. D.] Moreover, this single uncorroborated

hearsay statement fails to support the requirement that it must be the ornamental features that

create the confusion and makes no such distinction over the functional features. See OddzOn

Prods , 122 F.3d at 1406-07 (finding that where both functional and ornamental features are in a

patent design, survey evidence must demonstrate a link between the accused products and the

patented ornamental aspects of the design). Neither at the time of filing, nor more than nine

months into the litigation, has Kimber produced any scrap of evidence to support its assertion of

infringement.

At no point has Kimber acknowledged that its patented design is primarily functional,

which is not afforded design patent protection. Moreover, Kimber has also failed to acknowledge

that the established prior art of record completely abrogates any attempt by Kimber to stretch its

patent to accuse Bradshaw. These continued failures by Kimber to establish a basis in fact or law

to sustain this action are sanctionable under Rule 11.



11/95

116243892.1

IV. Kimbers Assertion of Bradshaws Infringement is Unsupported by the Lawand Bradshaw Does Not Infringe the 376 Patent as a Matter of Law

A. Kimbers Proposed Claim Construction Ignores Functional Elements, WhichAre Not Afforded Protection Under A Design Patent

Kimbers only attempt to provide any analysis on the scope of the 376 Patent was

provided through its Settlement Demand Letter of November 27, 2013. 1 (Ex. 2 at 4.) Kimbers

analysis on the construction of the 376 Patent is improper and contrary to the precedent

established in in Egyptian Goddess, 543 F.3d 665. Kimber makes the conclusory assertion that

the Court will construe Kimbers claim as an unambiguous and clearly illustrated design for a

cupcake batter separator. ( Id. ) But at no point does Kimber address that the bulk of the 376Patent claims functional elements that are not protectable under design patent law .

Functional elements have never been protectable under design patent law. In order to

prevent a design patentee from asserting utility patent protection through a design patent,

functional elements must be identified in the claim construction of the design patent. Where a

design contains both functional and non-functional elements, the scope of the claim must be

construed in order to identify the non-functional aspects of the design as shown in the patent.

OddzOn Prods. , 122 F.3d at 1405 (quoted in Egyptian Goddess , 543 F.3d at 680).

Kimbers letter and analysis completely ignores that the claimed batter separator has a

primarily utilitarian function of bisecting a cupcake/muffin cup. The claimed batter separator

1 Although Kimbers settlement demand letter (and subsequently Bradshaws responsive letter)are inadmissible for the purpose of establishing liability, the settlement letters demonstrateKimbers bad faith in asserting a position contrary to clear law, and thus admissible under Fed.R. Evid. 408(b). See, e.g., Seafarers Int'l Union of N. Am. v. Thomas, 42 F. Supp. 2d 547 (3d Cir.1999) (holding bad faith conduct during negotiations admissible); Ausherman v. Bank of Am.Corp. , 212 F. Supp. 2d 435 (D. Md. 2002) (Fed. R. Evid. 408 does not shelter [attorneys] whoattempt to shield from the Courts scrutiny deliberately untruthful statements.) However, anystatement concerning Bradshaws settlement offers remain inadmissible to prove liability underFed. R. Evid. 408(a).



12/95

126243892.1

shows in Figure 1 the front view while Figure 2 depicts a nearly identical rear view. These

two views together generally depict an upper top part of the separator, while the bottom

trapezoid conforms to the diameter of a standard size cupcake pan. (See 376 Patent, Ex. 3.) The

bottom cup-shaped part is depicted in the red box below:

The bottom part of the claimed design is unquestionably functional. The bottom part must

conform to the inverted, truncated cone shape of a muffin/cupcake cup. Any other shape would

not permit the batter poured into one half of the muffin cup to be separated from the other half of

the muffin cup. The bottom half must be trapezoid-shaped in the depicted proportion to properly

bisect the inverted, truncated cone shape of a muffin cup.

Figures 3 and 4 depict the side view and top view of the batter separator. Both figures are

essentially drawings of rectangles.



13/95

136243892.1

Unsurprisingly, Kimber has never provided an analysis on the construction of its 376 patent

utilizing Figures 3 and 4 as part of its analysis. This is a tacit admission that Kimber has no

protectable interest in their design being essentially flat. This is supported by the similar analysis

from above on the functionality of the claimed batter separator. A batter separator must be flat

and thin (as claimed) in order to bisect the inverted, truncated cone shape of a muffin cup. Any

other pattern or shape other than flat would interfere with the ability to create two halves of

a single cupcake. Any other arbitrary shape would fail to create a cupcake with two halves, and

thus is a functional element of the claimed batter separator.

There are other clear indicia of the functionality of the claimed batter separator. Berry

Sterling Corp. v. Prescor Plastics, Inc. , 122 F.3d 1452, 1456 (Fed. Cir. 1997) outlines additional

considerations, which are also present here:

Whether the protected design represents the best design . The trapezoid shape of thebottom part and the flatness of the claimed batter separate are the best design choices.Any other shape of these features would be poor choices in creating a batter divider thatevenly divided a muffin cup.

Whether alternative designs would adversely affect the utility of the specifiedarticle. A shape other than the trapezoid shape of the bottom part in the claimeddimensions would not prevent batter being poured into one half of the muffin cup fromleaking into the other side of the muffin cup. A batter divider that was not flat and thinwould not permit the creation of muffins/cupcakes with two halves.



14/95

146243892.1

Whether the advertising touts particular features of the design as having specificutility . Kimbers advertising touts its functional features. Right beneath the product nameon Kimbers packaging is the utilitarian feature of the claimed batter separatorthat itfits standard size cupcake pans and cups:

(See Ex. 2 at 1, Kimber Settlement Demand Letter of November 27, 2013.)

Kimber cannot ignore the functionality of its claimed batter separator during claim

construction. The Federal Circuit has already ruled it is improper to rely on just the

unambiguous and clearly illustrated design shown in the drawings where functional elements

must be considered. See Richardson , 597 F.3d at 1294. ([Patentee] fails to explain how a court

could effectively construe design claims, where necessary, in a way other than by describing the

features shown in the drawings. [Patentees] proposition that the claim construction should

comprise nothing more than the drawings is simply another way of arguing that the court erred

by identifying the functional elements of the patented article, and is therefore unavailing. We

find no error in the courts claim construction.). Moreover, if a design contains both functional

and ornamental features, the patentee must show that the perceived similarity is based on the

ornamental features of the design. OddzOn Prods. , 122 F.3d at 1405. As such, there is an

additional level of proof required from the patentee, and it cannot merely rely on the drawings

alone to construe the patent. 2

2 Bradshaw maintains there are additional functional features of the claimed batter separator,including at least the overhang on the top of the cupcake design that allow the product to reston the cupcake/muffin cup or paper cup, and the raised bumps for gripping the separator.However, Bradshaw does not believe it is necessary to proceed with further analysis on thesepoints at this time.



15/95

156243892.1

Kimbers proposed claim construction of the 376 patent is not merely a difference of

litigation positions, but an untenable position contrary to well-established law on design patents.

B. Kimbers Infringement Analysis Ignores Consideration Of The Prior Art As

Required Under Egyptian Goddess

In addition to Kimbers omission of clear precedent that prevents Kimber from claiming

design patent protection for the functionality of the claimed design, Kimbers cursory

infringement analysis relies on an improper selective reading of the operative case law. Kimber

omits key precedent from Egyptian Goddess that requires Kimber to consider the prior art in its

infringement analysis:

When the differences between the claimed and accused designare viewed in light of the prior art , the attention of thehypothetical ordinary observer will be drawn to those aspects ofthe claimed design that differ from the prior art. And when theclaimed design is close to the prior art designs, small differencesbetween the accused design and the claimed design are likely to beimportant to the eye of the hypothetical ordinary observer.

Egyptian Goddess , 543 F.3d at 675 (emphasis added). In other words, it must be the differences

between the claimed design and the prior art that cause the deception by the ordinary observer of

the similarities between the claimed design and the accused product. Comparison of the claimed

design against the prior art demonstrates exactly what feature the ordinary observer would be

drawn to in comparison with the accused product:

Fig. 1, 376 Patent Cupcake Cookie CutterDated Oct. 25, 2009 (Ex. 4)



16/95

166243892.1

The only articulable difference between the claimed design and the prior art cookie cutter

is the addition of the seven circles under the bell portion of top of the claimed design. Every

other feature of the claimed design is present in this single prior art reference. Comparing the

differences between the claimed and accused design viewed in light of the prior art (and

accounting for the functional elements of the claimed design) indisputably demonstrate how

distinct the Accused Product is from the claimed design:

Fig. 1, 376 Patent Cupcake Cookie Cutter Accused Product

Again, the ordinary observer would be drawn towards the distinctive seven circles under

the bell portion of top of the claimed design, which are not present in the Accused Product. Any

attempt to construe the 376 Patent more broadly to encompass the Accused Product will render

the patent invalid as anticipated, as all of the ornamental features would be encompassed by the

Cupcake Cooke Cutter prior art reference. See Upsher-Smith Labs., Inc. v. Pamlab, LLC , 412

F.3d 1319, 1322 (Fed. Cir. 2005) (A century-old axiom of patent law holds that a product

which would literally infringe if later in time anticipates if earlier.)



17/95

176243892.1

This same analysis can be performed with any number of prior art references that the

ordinary observer would be familiar with:

D671,376 D359,153 (Ex. 5.) D601,379 (Ex. 6.)

D633,654 (Ex. 7.) D616,260 (Ex. 8.) D649,905 (Ex. 9.)

D610,944 (Ex. 10.) D590,524 (Ex. 11.) Accused Product

Bradshaw can find no plausible argument whereby Kimber can assert infringement of the

376 Patent without simultaneously distinguishing over the prior art. 3

Even without the above analysis, the lack of any good faith claim of infringement can be

found in Kimbers Complaint. Kimbers repeated use of a three-way comparison between the

patent design, the accused product, and Kimbers product demonstrate how different Bradshaws

product is:

3 Alternatively and additionally, the 376 Patent is invalid as anticipated by the Cupcake CookieCutter prior art reference. All of the ornamental features of the two designs are the same, and theaddition of the functional gripping circles under the bell portion of the top of the design fails tomake a patentable distinction over the prior art. However, a full analysis is not necessary at thistime and Bradshaw reserves the right to revisit the invalidity of the 376 Patent later, ifwarranted.



18/95

186243892.1

The ordinary observer can easily distinguish which one of these three images is not like the

others. Nobody would confuse the Bradshaw product in the middle as the same as the other two

pictures, let alone an ordinary observer. Not only does Bradshaw not infringe the 376 Patent,

there is no plausible argument for Kimber to assert that Bradshaw is infringing the 376 Patent.

V. Kimbers Filing and Maintaining of the Present Lawsuit Without a Basis in Fact orLaw Warrant Rule 11 Sanctions

As Kimber continues insisting on advancing its baseless claim of infringement against

Bradshaw, Kimber is subject to liability for violating Federal Rule of Civil Procedure 11. Under

Sixth Circuit precedent, the test for the imposition of Rule 11 sanctions is the objective standard

of whether the individual's conduct was reasonable under the circumstances. Union Planters

Bank v. L & J Dev. Co. , 115 F.3d 378, 384 (6th Cir. 1997) (citation omitted). This objective

standard is violated when the patentee takes unsustainable positions during litigation. For

example, the Federal Circuit held that there is a threshold below which a claim construction is

so unreasonable that no reasonable litigant could believe it would succeed, and thus warrants

Rule 11 sanctions. Raylon v. Complus Data Innovations, Inc. , 700 F.3d 1361, 1368 (Fed. Cir.

2012)(quoting iLor, LLC v. Google, Inc. , 631 F.3d 1372, 1378 (Fed. Cir. 2011)).

As demonstrated above, Kimbers positions on claim construction and infringement are

so unreasonable that no reasonable litigant would believe it could maintain these contentions.

Kimber cannot ignore established precedent on the functionality of its claimed design or the prior



19/95

196243892.1

art that limits the scope of its design. Kimber cannot profess ignorance of the law, which also

provides no support for Kimbers assertion of infringement. As the Sixth Circuit measures

conduct against an objective standard, Kimber cannot insulate itself from failing to comply with

Rule 11 merely because it may have had a good faith belief in pursuing the present lawsuit.

Thus, Rule 11 sanctions are warranted against Kimber as it has maintained its accusation of

infringement against Bradshaw.

Even more egregious is that Kimber has had full knowledge of the facts and legal

statements contained herein since December 9, 2013, as Kimber was provided with Bradshaws

response to its settlement demand letter. (Ex. 12.) The Sixth Circuit has admonished parties thatRule 11s requirement of reasonableness is not a one-time obligation and parties are

impressed with a continuing responsibility to review and reevaluate his pleadings and where

appropriate modify them to conform to Rule 11." Runfola & Associates, Inc. v. Spectrum

Reporting II, Inc. , 88 F.3d 368, 374 (6th Cir. 1996).

In this case, Kimbers allegations and legal positions were not reasonable at Kimbers

initiation of the present lawsuit, and the continued discovery and correspondence exchanged

further demonstrate the lack of reasonableness. Where much of the factual record is publicly

available at the time of the complaint, Plaintiff must make a sound appraisal of the viability of

[its] claims. Bates v. Colony Park Ass'n , 393 F. Supp. 2d 578, 598 (E.D. Mich. 2005). Any

doubt Kimber had that it was attempting to protect non-ornamental features already present in

the prior art through its asserted design patent should have long been erased.



20/95

206243892.1

Instead, Kimbers malice in advancing the present action against Bradshaw can be seen

through its conduct. 4 Kimbers settlement demands were far below the costs required by

Bradshaw to defend the current suit. ( See Ex. 2 at 7, Kimber Settlement Demand Letter of

November 27, 2013.) Kimber apparently attempted to extract a nuisance value from Bradshaw,

in hopes that it would impose a high cost against Bradshaw to combat Kimbers meritless claim.

This type of conduct is one recent example of bad faith litigation. Eon-Net LP v. Flagstar

Bancorp , 653 F.3d 1314, 1324 (Fed. Cir. 2011).

VI. Conclusion

As explained above, at the outset of the present litigation, Kimbers complaint lackedbasis in fact or law to sustain its allegations of design patent infringement against Bradshaw.

Ultimately, there is no prospect that further discovery may make Kimbers infringement

allegations sustainable. The Court must find that Kimber has violated Rule 11, dismiss Kimbers

Complaint with prejudice, and award an appropriate sanction amount against Kimber and/or its

counsel at a minimum to make Bradshaw whole again and sufficient to deter repetition of the

conduct or comparable conduct by others pursuant to Fed. R. Civ. P. 11(c)(4).

Dated: February 5, 2014 Respectfully submitted,

/s/ Phillip G. EckenrodePhillip G. Eckenrode (# 0084187)HANH LOESER & PARKS, LLP65 East State Street, Suite 1400Columbus, Ohio 43215Phone: (614) 233-5147Fax: (614) 233-5194

[email protected]

4 Proof of malicious intent is not required to sustain sanctions under the objective Rule 11standard, but should be considered as part of the Courts analysis.



21/95

216243892.1

/s/ Michael B. MarionMichael B. Marion (admitted pro hac vice )Robert J. Kenney (admitted pro hac vice )BIRCH, STEWART, KOLASCH & BIRCH, LLP8110 Gatehouse Road, Suite 100 East

Falls Church, Virginia 22042Phone: (703) 205-8000Fax: (703) [email protected];[email protected]

ATTORNEYS FOR DEFENDANTBRADSHAW INTERNATIONAL, INC.

CERTIFICATE OF SERVICE

I hereby certify that on January 8, 2014 and February 5, 2014, I served via electronic

mail, a copy of the foregoing Defendant Bradshaw International, Inc.s Memorandum in Support

of its Rule 11 Motion for Sanctions upon:

Samuel N. Lillard, Esq.Courtney J. Miller, Esq.David M. Marcus, Esq.McNees Wallace & Nurick LLCFifth Third Center21 East State Street, Suite 1700Columbus, OH [email protected]@[email protected]

/s/ Michael B. MarionMichael B. Marion



22/95

EXHIBIT 1to Defendant Bradshaw's

Rule 11Motion

Case: 2:13-cv-00185-ALM-NMK Doc #: 24-1 Filed: 02/05/14 Page: 1 of 23 PAGEID #: 200


23/95


TN THE UNITED STATES DISTRJCT COURTSOUTHERN DISTRICT OF OHIO

EASTERN DIVI SION

Kimber Cakeware, LL CCase No. 2: 13-cv-0 185

Plainti ITJudge Marb ley

vs.Mag istrat e Judge King

8 rad shnw Intermttional , Inc .

Defendm1t

PLAINTIFF KJMBER CAKEW AR E , LL C S ANSWERS TO DEFENDANTBRADSHAW IN T E RNATIONAL, lN C . S FIRST SET OF JNTERROGA TORIES

Now comes the Plaintiff, Kimber Cakewa rc, LLC (here inaft er Plain ti f f or 'Kimbe r ),

through the unde rsigned counsel, pursuant to Rule 33 of the Federa l Rul es of Civ il Procedu re,

and hereby s ubmit s its responses to Defendan t Brads haw Internat iona l, ln c. s (here inafl er

Defendant'' or B rad shaw ) First Sel of Interroga tor ies under oa th and n writ ing.

PRELIMINARY STATEMENT

The responses se t forth be low are made so lely for the pw-pose of this actio n. By

respo nd ing to Defendant's First Set of Inter rogato l ics, Plaint iff hereb y sta tes that i t does not

waive its right t o make a ll appropriate objections, includ ing withou t limit ation, objection s

concerning relevancy, compe tency, material ity. propriety and admissibility , that would require

the exc lusion of any statement contained herei n or in any document refe rence d if any s uch

response or document were sought to be introduced into ev iden ce at any hea ring or tria l in this

actio n. Plaintiff exp ress ly reserves all such objection s.

Plaintiff has not yet comple ted its investigation of all the facts relating to this act ion and

has not yet co mpl ete d its preparation for tria l. The followin g respo nses are based upon


24/95


information and documents pres ently k nown to responding pa y and a re therefore made without

prejud ice to responding pru y s r igh t to produc e s ubsequently d iscovered ev id ence relating to the

proof of presently know n material fac ts and to produce a ll evidence, w henever d iscovered , in any

form, re lati n g to the proof of subsequent ly di scove red material fac ts.

Except for ex pl ici t facts adm itted here in, or in any documents referenced in connect ion

herewi th, no admission or any natme is intended, an d n one should be im pl ie d or in ferred .

Plai n tiff genera lly objec ts to each discovery reques t to the exte n t that it seeks information

protecte d by U e attorney-clien t and /o r at torney wo rk product priv ileges, inclu d ing witho u t

limitat ion , protected communicatio ns between responding pany and its co unsel and cou nsel s

lega l reaso ning , theori es, opi nions , researc h, impre ss ion s and/o r conclusions. Witho ut waiving

any objections, q ualificatio ns an d limitations , Pl aint iff respo nd s as fo llows:

INT R RROG A TORY N O :

Identify each Acc used Produc t in thi s action, se t fort h each el e me nt of the patent-in-suit

that Kimber alleges has been infr inged as a re sul t of the sale of the prod uct; wh e ther such

infringement i s direct or un d er t he doctrine of equiva lents; se t forth, on an e lement-by-e lement

ba sis, the corresponding structure in eac h p roduct which Kimber alleges satisfies each respective

cla im element or f u r ~ and identify each docu m ent re fen ing or re lating to any ana lys is o r

evaluat io n p er formed on any sa m p le of an Accu sed Product.

ANS \ VE R :

With respect to In te rr oga tory No. I, Kimber states tha t the Accuse d Product in th is ac tion

is Defenda nt s Sw ee t Creations by Goo d Cook cupcake divid e r' ' batte r se parato r . K im b er

further states that taking its non-obviou s ornamental de sign for a batter se pa rator marketed as

''Batter Babies (''pate nted design ) and compa ring it to the Accuse d Product , an o rdinary

2


25/95


observer would be li eve that the patented design and Accused Prod uct are s ub st anti a lly the same

in appearance as illu str aLed below:

Kimber's Pat ented Design Brad shaw Batter Se parator

Fu rther , pursuant to Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. C ir. 20 08), in

construing design patents , courts are to ge nera ll y forego ve rbal or narrative descr iption s of

design patents: ' 'Given the recognized difficulties entailed in trying to desc rib e a design in

words , the preferab le co u rse ord inarily will be for a district court not to attempt to co n strue' a

design patent claim y pr ovi din g a detailed verb al descripti on of the claimed des ign. , ld. at 679.

[D] esign patents 'typically are claim ed as s how n in drawings,' an d claim construction 'is adapted

accord in gly. ' Id . '[A ]s a ml e the illu stra ti on in the drawin g v iews is its own bes t description . '

Id. Acco rdin gly, cour ts have ge ne rall y relied on patent dr aw ings to co nstrue design claim s .

Wing Shing Produ cts Co. Lt d. v . Sw1beam Produ cts, In c. , 665 F.Supp.2d 357 , 360 (S. D .N.Y.

2009). T hus, Defe nd ant s requ est for an e lement-by-c lement com pari son oftbe Accused Produ ct

and patented design is a futile exercise tha t do es not comport with the prese nt state of the

re levan t law.

3


26/95


FinaUy wi th respect to Defendant s req uest H1at Kimber identify each document referring

or relating to any analys is or eva luation pe rformed on any samp le of an Accused Product ,

Kimber spec ili ca lly iden tifi es U.S. Design Patent No. 0 671,376.

INTERROGATORY NO 2 :

Identify all prior art to the paten t-in-suit , includin g the identification of a ll patentab ility .

va lid ity prior art , enforceabil ity or infringement evaluations, searc hes, or opin ions cond ucted by

or lor ((jmber (or any of the named inventor s of the patent-in-suit) re lating to the alleged

inventions desc ribed and claimed in the patent-in-suit, including for each such evaluation, search

or op inion, the identification of the date and scope of eac h such evalua tion, search or opinion; the

identification of each person involved in authorizing, condu cting, eva luating or rev iew ing the

resu lts of eac h such eva luation, sea rch or opiruon; and an iden tification of al l documents ,

including in patents and other publications, whic h wc rc revealed by each such evalua tion, sea rch

or opinion; and all other documents relating to eac h suc h evaluat ion, search , or opinion,

including but not limited to any such rcpotts.

ANSWER:

With respect to Interrogatory No . 2 Kimber states that it is not aware of any prior n

related to the patent-in-suit.

JNTERROGATORY NO :

Identify each disclos ure related to the subjec t matter 1or he patent-in-sui t made prior io

the filing of a paten t application, by any individual , including the invento rs of the patent-in-sui t,

to any third party , and ident ify each person(s) invo lved in and who received such disclosure .

4


27/95


28/95


sAles volume in the United States in unjts and associated dollar revenue on an annual basis from

the date of introduction ; identify the person or persons most knowledgeable with respect to each

of the relevant feature s of the product; and identi 'y the person or persons most knowledgeable

conce rning the facts and c ircumstances related to the original introduction or the product to the

market by or on behalf of Kimber (including the orig inal customer to whom the product was lirst

offered).

ANSWER:

With respect to lntenogatory No. 5. Kjmbcr states that it offered its ''Da tter Daddy'' a nd

Batter Babie s product line s for sale in the consumer market beginn ing in December 20 10.

Kimber further sta tes that Robert Reiser , original Member and current Pre sident of Kimber , is

the person most k now ledgeab le with respect to the relevant features of the patented de sign and

the facts and circumstances related to the origina l introduction of the Batter Babies to tbe market.

Co ncerning Defendant s request for sales and revenue information related to the Patented des ign,

given the se nsit ivity and proprietary nature of the infor mation reque sted, Kimber states that it

will produce such information upon the execution of a mutually agreeab le protected order, a

draft ofw hjch has 1Jrevious ly been provided to Bradshaw f or review and consideration.

I NTERROGATORY NO 6:

State the date that Kimber fir st became awa re of each Accused Product in this action , set

forth the circumstances under which Kimber became awa re of the product , identif y each person

having know ledge or the circumstances s urroundin g Kimber s injtial awareness o f the Accused

Product(s); and identify each documen t referring or relating to Kimber"s awareness o f the

Accused Product and or its featu res.

ANSWER


29/95


Kimber first became aware of the Accused Product in thi s action on or about Octobe r 22,

20 12 when Kimberly Reiser ( Mrs. Re iser ), Vice President an d Member of K imher, rece ived an

email tiom Kim Teres i ( Ms. Teresi ), Senior Buyer and Director of Advertising at a compa ny

called Chef CentraL Mr s Reiser had rea ched out to M s Tere s i to explore whether Chef Centra l

would be inte rested in car rying Batter Babies for sale. M s Teresi, apparently evidencing

confusion as to the source of Brad shaw' s bat te r separa lor , responded that Che f Centra l was

'already carrying thi s product through Brad sha w /Goo d Cook. Mrs. Reiser responded to i nquire

how long Bradshaw had been se lling its batter separator, to which Ms. Te resi responded th at

Bradshaw s batter se parator had b ee n introduced at the Internationa l Housewares Show in March

of 20 12 . On or about October 22 , 2012, Ms. Rei ser informed Mr. Reiser about the above email

cotTespondence from Ms. Teresi and forwarded him the relevan t chain of em a ils. A true and

accura te copy o f the em a il chain between Mr s . Reiser and Ms. Teresi is attached to Plaintiff's

Complaint as Exh ibit D .

In addition> Mr Reiser att ended a housewares show in 20 13 and witnessed a sa les

presentation y unknown repre senta tive s and /or agl;n ls of Bradshaw who explained how

Bradshaw supposed ly in ve nted tbe Accused Pr oduct .

INTERROGATORY NO 7:

Id entify each occurrence on which an Accused Product was eva lu ated by or on behalf of

Kimber, and ide nti ty each document referring or relating to any tes tin g , measurement , analysis

or observations re lated to the product and identify each person involved in the eva luation .

ANSWER


30/95


31/95


the duties and respons ibi liti es of each in connection with the prosec ution of and app lication for

the patent-in-suit.

ANS W E R :

Robert Reiser or iginal Member and current President of Kimber c rea ted t he initial

des ign for the patented design soug ht the appl ication for the patent-in-sui t obtained the paten t-

in-suit assigned his rights to the pate nt-in- suit to Kimber and observed the infiingemen t of the

pate nt-in-suit by Defendant.

IN TE RRO G ATORY NO 1 :

Identify each pe rson that Ki m be r may call as a witness to testify at any proceeding in thi s

matter. state the genera l subj ect matter to whic h the wit ness testimony i s expected to re late and

for any identified expe rt w itness: state the occupation or each expe rt identify the field of

expertise of each expert; provide a resume of qualit1cations of eac h expet1; state each opinion

which the expert may offe r on beha lf of Kimber; set forth the complete basis underlying each

respective op inion; and iden ti fy a ll documents and things supporting or otherwise referring o r

re lating to each such opi nion.

A NS W E R:

Kimber sta tes that it has not yet identified an expert wi t ness it may call to test ify at any

procee ding in this matter. Shou ld K imber identify an expett witness in the future i t wi ll

seasonably supplement the foregoing response in accordance with the Fe deral R ules of Civil

Procedure . As to lay witnesses Kimber has not determined w ho it may call to te st ify in this

matter ; however Kimber has prepared a p reliminary list of witnesses below . Kimber reserves 1he

right to seasonably supplemen t t his respo nse.

1 RobertS. Reiser Pres ident and Member3333 Scioto farms Dr.

9


32/95


Hill iard. Ohio 430266 14) 742-7929

Mr. Reiser has know ledge concerning the creation o the design protec ted by U.S. Design

PatentNo.

D671,376, develo pmen t o Kimber s prod ucts , the d iscovery o Defendant s

infringing product, comm tmications he has had evidenci ng market confus ion between

Kimber s des ign and Defen dant s product, damages relating to lost sa les, the business

activities o Kimbe r, and the d istributio n o the Defendant s i nfringing prod ucts.

2. Kimberly M. Reiser. Vice Preside nt and Membe r3333 Sc ioto Fanns D r.Iill iard, Ohio 43026

(614) 742-7929

Mrs. Re iser has knowledge concerning tl1e creat ion o f the design protected by U.S.

Des ign Patent No. D67 1.376, development o Kimber s prod ucts, the discovery o

Defendant s infringing product, communications she has had evidencing market

confusion between Kimber s des ign and Defendant s product , damages re lating to lost

sa les , the bus iness activit ies o Kimber, and the dist ribution o the Defendant s infringing

produc ts,

3. Rrad ley R. Gall, Mem ber9480 Santa C lara Ci rclePlain C ity, Ohio 43064(614) 395-0 167

Mr. Gal l has knowle dge concern ing the histo ry o Kimber and the effec ts o Defendant s

infringing act ivities on Kimber s business.

4. Robert D. Giesseman, Member5640 Barry TraceDublin , Ohio 43017(614) 4 19-0825

1


33/95


Mr. Giessman has knowledge concerning the history of Kimbe r and lhe eiTec ts of

Defendant s infringing activities on Kimber's bus iness .

5. Merrilee M. Martin, Member6 157 Jol i StreetGalloway, Ohio 431 196 14) 361-8677

Ms. Martin has knowledge concernjng the history of Kimber and the effects of

Defendant's infringing activit ies on Kimber s busine ss.

6. Ker i Anderson, employee of DefendantRa ncho Cucamonga, California 91730(800) 421-6290

Ms. Anderson has knowledge concerning the Defendant's purchase of products from

Kimber based on the design protected by U.S. Design Patent No. 0671,376. the

intentional copying by Defendant o f Kimber' s design, and the awareness of Oetendant of

the patent-pending status of the design upon which Kimber s products are based.

7. Kim Teresi, Senior Buyer and Di rector of Advertising a t Chef Central240 Route 17North Paramus, NJ 0765220 1) 576-0 I 78 ext. 12

Ms. Teresi has knowledge concerning actual co n fusio n between the design set forth in

U.S. Des ign Patent No. 0671 ,376 and the Defendants infringing product.

8. Jeff MegordenExecutive Vice Preside nt at Brad shaw9409 Buffalo AvenueRancho Cucamonga , Califorrua 9 1730(800) 421-6290

t is anticipated that Mr. Megorden wi ll testify about the facts and circumstances related

to Defendant's infringement on U .S . Design Patent No. 0671 ,3 76.

9. Thoma s Barbe r


34/95


9409 B uffa lo AvenueRancho Cuca monga, Califo rnia 91730800) 42 1-6290

t is ant icipate d tha t Mr. Barber will test i f y about the tacts and c ircums tances re lated to

Defendant s infringe ment on U.S. Design Pa tent No. 67 1,376.

I 0 Any witness identifie d by Defendant or called to testify by Defenda nt in this ma tter.

I N TEllliOGATORV N O :

Ide ntify and describe a ll documents retention an d d ocume nt destr uction policies of

Kimber that has been app licable or in force at any time s ince 2000 , incl uding any such po licy

concern ing information or documents stored in comp uter memory.

A NS W E R :

Kimber has no formal destruction or reten tion poJjcy for company documents .

INT E RRO GA TORY NO 2 :

Separately for each of Bradshaw s interrogatories and document req ues ts, iden tify each

person w ho was consul ted or who provided informatio n or doc uments in connec tion with the

preparation of your answe rs thereto.

ANS WER :

Kimber states that Robert Reiser provided Kimber s responses to the forego ing

interroga tories and requests for doc uments wi th the assistance of counsel.

INT E RROGATORY NO 3 :

State all facts that support your allega tions made in paragraphs 12-14 of Kimber s

Complaint.

2


35/95


NSW R

Kimber states that prior to the formation of Kimb e r, R obert Rei se r designed and began

marketing a full- s ized cake ba tter se parat or ca ll ed the Batter Daddy. n 2009, whi le the design

patent was pendin g on the Batter Dadd y, M r Reise r so ug ht to partner with appr ox imately two

dozen com pani es for the manuf ac tu r e a nd distribution o f the Batt e r Daddy. The spe c ific

com panie s th at Mr Re ise r can reca ll com muni cating with re lat e d to pa rtnering on the Batt e r

Dadd y inc luded:

Wilton Co rp .

Br ads haw /Good Cook Rub berm aid

Zak

Ca lphalon

CH EFS

Farberware

KitchenAid

Nor d icWare

l lu tzler

Nop ro

Oneida

A nchor Hocking

Fox Run B rand s

Prog ress ive In ti.

3


36/95


Nearly a ll the communication occurred via unsolicited co ld calls or unso licited written letters to

the particu lar company and Mr. Re iser does not remem ber the spec ific names o f any indiv iduals

he comm unicated wi th. Mr. Reiser does spec ifica ll y reca H that the representative he spoke wit h

from Bradshaw rejecte d partner ing wi th him on the Batter Daddy for the stated reason that

diffic ulties in the eco nomy had caused I3radshaw to s top develo ping any new p roducts for a

pe riod of time . Th ereafter, M r. Reiser soug ht professio nal device and conducted market

research , and determining tha t there was a m arket fo r the Batter Daddy , hegan to prepare and

manufacture and market the Batter Daddy on his own.

I N TERRO G ATORY NO :

State all facts that support your claims of infringement under 35 USC 271 (b), (c). and

(f).

A NS WER :

n 2011, Kimbe r s President and fo under , Rober t S. Reise r , app lied for a design patent

from the U.S. Patent Office for t he Ba tter B abies design . On November 27, 2012 , Kimbe r s

patent was approved and des ignated as U.S. Design Patent No. D67 1 3 76. Mr. R eiser

subseq uently assigne d the patent to Kimber. Since br ingi ng its Batter Babies line of produc ts to

the market, K imber has experienced growing success and received praise in t h e industry.

Defen dant Brads haw Internationa l, lnc. ( Bradshaw ) is a Delaware corporation wi th its

principa l place o f business in Rancho Cucamonga , California. I t ttlso se ll s baking produc ts,

including a line of prod ucts u nder t he name Sweet C reations by Good Cook.

4


37/95


On Friday , December 16 , 2011 , Brad shaw ' s Senior Product Manager, Keri Anderson

( Ms. Anderson ), ordered a set of Batter Babies f rom Kimbe r. K imbe r subsequen tl y comp leted

the order request and s hipp ed the package of Batter Bab ies to Ms. Anderson at Bradshaw's

facil ities. The package sent to Ms. Ande rson was clea rl y lab ele d with the notificat ion P ate nt

Pending. App roximately I 0 month s later , Kimbe r became aware that Bradshaw was selling a

com peting product to its Batter Babies with a des ign that was su bstantia lly th e same in vio lation

of its des ign patent:

Kimber ' s Patented Design Brads haw Batter Separator

Brads haw s co mp etin g pr oduct design was so si mil ar that Kimber began to e ncounter

market confus ion when marke ti ng its Batter Babies product. Specifically , whe n Kimber inquired

as to whether C hef Centra l, a company th at sells cookware, bakewa re a nd other asso rted

accessories , would be in terested in carry in g Batter Babies fo r sa le , a Chef Cent ra l representat ive

responded th at C hef was alrea dy carry ing Kimber ' s product through Brad shaw/Good Cook.

Because Bradshaw has appli ed a co lorable imitation of Kimber ' s patented design to its produc t

for the purpose of sa le, it is in clear violation of 5 U.S.C. 289 w hich prohibits des ign patent

infringement.

5


38/95


INTERROGATORY NO 5:

Sta te all facts that demonstrate the irrepa rable harm t hat Kimber is fac ing tlu ough the

alleged inlhn ge m ent of the p a t e n t i n~s ui by Bradshaw.

ANSWER:

With respect to T terrogatory No . 15 , Kimb er states that as a result of Defendan t s

ongo ing infringemen t of the patent-in- suit , Kimber has been un abl e to s uppl y its Pat ented de sign

to bakewa re re tail ers, suppliers and distributo rs al ready carry ing the Accused Pr oduct, resulting

in sign ifican t los t revenues an d profits to Kimber . De fend ant s sal e of the Accused Product ha s

t ~u s ed market confusion and like ly led ordinary purchase rs to buy the Acc used Produ ct

believ ing it to be Kim ber s pat ented de sign . As a resu lt , Kimber's marke t shar e for its patented

desig11 has been nega tively impacted and it has los t potential reven ue and profits.

I NTERROGATORY NO 1 6:

Sta te all facts tha t supp or t your all egatio n that ' [t]he des ign of Bradshaw s batter

separator as marke d and l would cause an ordinary obse r ver , fam ili ar w ith the prior art

desig ns, to be deceived into believing tha t the de sign of Brad shaw' s batter sepa rator is the same

as Kimber's paten ted design.

ANSWE R:

Pur suant to the Cowi s decision in the Egyptia n Goddess case , in determining wheth er a

desig n patent is infrin ged requires the tact-finder to co mpar e the patented and acc used designs

to determine whether t he accu sed design is su bstant ially s imil ar in appearance to th e paten ted

de sign. n making thi s determina tion , courts ut il ize the o rdinary obse rve r ' test: [l ]f, in the eye

o an or dinary observer, giving such atten tion as a pu r chaser usuall y g ives, two designs are

substantially the same, i he re se mb lance is suc h as to deceive su c h an observer, i nduc ing him to

16


39/95


purchase one suppos ing it to be t he other , the first one patented is infringed by the other.

Egyptian Goddess, 543 F.3d at 670 quoting Gorham Co. v. White, 81 U.S. 51 1, 528 ( 187 1)); see

lso L.A. Gear , 988 F .2d at 1124 ( Des ign patent infringement requires a s howing that the

accused design is substantia lly the same as the claimed design. The criterion is deception o the

ordinary observer , suc h that one design wou ld be confused w ith the other. ) ; Crocs, Inc. v.

International Trade Com m'n, 598 F.3d 1294, 1303 (Fed. Cir. 201 0) (infringement is

demonstrated where an ordinary observer ... wou ld be dece ived into believing that the accused

product is the same as the patented design ) iting Egyptian Goddess, 543 F.3d at 681.

Applying the Egyp tian Goddess standard to the Kimber matter and observing the designs

below , it is Kimber ' s position that an ord inary observer wou ld conc lud e that the accused

products are simi lar enough to create market confusion. And, in fact, Bradshaw has created such

confusio n as ev idenced by Chef Cent ral ' s response to Kimber ' s inquiry abou t cany ing its Batter

Babies line o products.

Kimber ' s Patented Design Bradshaw Batter Separator

17


40/95


I NTE RRO GATO R Y NO 17:

State w hethe r Kimb er has eve r purchased a product that competes with a Kimber product,

and if so, for each s uch purcha se, iden tifY which competitor s products was pu rchased , th e date

of purchase, the ass ociated Kimber produc t, the Kimber emp loyee th at purchased the

co mpetitor s product , and the purpo se for the purcha se of the competitor s product.

ANSWE R :

In 2012, K imb er s President , Robert R e iser, pu rchased t he Accused Prod uct in ord er to

compare it to its patented design and to determine whether Defendant infringed upon th e p t e n t ~

in suit. In 20 l3 , Kimber s Pre sident , Robert Rei se r, pmcha sed a Wi lton Two-Tone Cupcake Pan

Set, to compare th e qual ity of W ilton s product to Kimber s products .

I NTE RRO GAT O RY NO 1 :

For each Accused Product, ident ifY by either narrativ e or by drawing, the locat ion o f the

followin g features on the Accused Product, labeled A through I below:

ANSWE R:

8


41/95


42/95


The analysis reques ted by Defendant in the foregoing interrogatory has been rejected b y

the Court in Egyptian Godde ss and by numerous other Courts, including in Gorham v. White, 8 I

U.S. 14 (1871); Crocs, Inc. v. Internationa l Trade Comm 'n, 598 F .3d 1294 (Fed. Ci r. 2010);

Victor Stanley, lnc. v. Creative Pipe. Inc. , 201 1 U.S. Dist. LEXIS 11284 6 (D. Md. September 30.

201 1 ; Apple. Inc. v. Samsung Elecs. Co., 20 12 U.S. Dist. LEXIS 105125, 32-33 (N.D. Cal. July

27 012)

Respec tfully Submitt ed,

1N. I rd ( 0 40571) (Trial Attorney)ourt ney J. Miller ( 070450)

David M. Marcus ( 0087144)McNees Wa llace Nu rick LLC21 Eas l State Street , 1 FloorColumb us, Ohio 43215Telep hone : (6 14) 469-8000Fax: (614) 469-4653sli [email protected] r@ mwncmh .comdmarcu s@ mwncmh.com

ttorneys for Kimber Cakeware LLC

20


43/95


CERTIF I C TE OF SERV I CE

hereby certify that a copy o the foregoing Plaintiffs Responses to Defendant 's First Set

o blterrogatories was served upon the below-list ed counsel via regular U.S. Mail and e-mail on

this ~ yo December , 20 13:

Phillip G. EckenrodeHAHN LOESER PARKS, LLP65 East State Stree t, Suite 1400Co lumbu s Ohio 43215peckenrode @hahnlaw.com

R. Eric GaumHAHN LOESER PARKS , LLP200 Public Square , Suite 2800Cleveland, Ohio 44 114regaum @hah law.com

OF COUNSEL :

Robert J. Ke1meyBIRCH, STEWART , KOLASCH BIRCH , LLP81 10 Gate house Road , Suite 100EFalls Church , Virginia 22042rjk@bskb .commailroom @ bskb.com

Michael B. MarionBIRCH , STEWART , KOLASCH BlRCI-1 LLP8110 Gate house Road , Suite 1OOFalls Church , Virginia 22042mbm @bskb .commailroom @bskb.com

ATTORNEYS FOR D EFEN DAN TBRADSHAW TNTERNATTONAL, TNC.

2 1


44/95


VERIFIC TION

Now comes Robert S Reiser Presid ent and Member o Kimber Cakeware LLC and

deposes and states that heis

autho rizedto

answer the fo rego ing Jntenogatories and Requests for

Production o Documenr that he has read the answers and responses and furthe r that th e

answers contained herein are co mpl ete true and con-ect as he veri ly believe s.

2 . = >~ ~ t Z i ? ~

ROBERTS. RE ISE R


45/95


Rule 11Motion



46/95


c12) United States Design PatentReiser

54) BATTER SEPARATOR

76) Inventor: Robert S. Reiser, Hilliard, OH US)

**) Term: 14 Years

21) Appl. No.: 29/388,837

22) Filed: Apr. 1, 2011

51) LOC 9) Cl. .................................................. 07-0452) U.S. Cl. ........................................................ D7/66958) Field of Classification Search ................... D7/669,

D7/368, 409; 126/373.1; 426/523; 425/289;220/533; 249/117, 171,203, 128-132, DIG. 1;

99/422, 426, DIG. 15See applicati on file for complete search history.

56) References Cited

U.S. PATENT DOCUMENTS

2,081,078 A 5/1937 Watson 126/373.12,327,988 A 8/1943 Bassett ......................... 249/1314,040,539 A 8/1977 Patterson ...................... 220/5265,074,777 A 12/1991 Garner .......................... 425/289

USOOD6713 76S

10) Patent No.: US D671,376 SNov. 27, 201245) Date of Patent:

5,446,965 A6,287,619 B1D593,363 S7,654,195 B28,197,116 B2

* cited by examiner

9/1995 Makridi s ........... ............. . 30/3159/2001 Khan ............................ 426/5236/2009 Collinson ...................... D7 409212010 Morito eta . ................ 99/450.76/2012 Klein ............................ 220/533

Primary E x a m i n e r Terry Wallace74) Attorney Agent or i r m Ronald J Koch

57) CL IMThe ornamental design for a batter separator, as shown anddescribed.

DESCRIPTION

FIG. depicts a front view.FIG. 2 depicts a rear view.FIG. 3 depicts a side view with the front facing leftward; and,FIG. 4 depicts a top view wit h the front facing downward.

n essentially planar body member having a distinctive out-line.

1 Claim, 4 Drawing Sheets


47/95


U.S. atent Nov. 27 2012 Shee t 1 of 4 US D671 376 S

pI: 1 . . .


48/95


U.S. atent Nov. 27 2012 Shee t 2 o 4 US D671 376 S

F .I G 2 ... ..


49/95


U.S. atent Nov. 27 2012 Shee t 3 o 4 US D671 376 S

FI .G:,3 , : ..... : ...


50/95


U.S. atent Nov. 27, 2012 Shee t 4 of 4 US D671,376 S

............................................................~ :::r::=:::=w:r. .y:i

F.. I a.4. .

. . :: :

. .

. . :


51/95


52/95

colate Moulds - Inspired By Chocolate

//web.archive.org/.../20091025223149/http:/inspiredbychocolate.com.au/?articleID=showProducts&view=detail&categoryID=56&Product_ID=2340&sub_category=97[12/4/2013 12:24:50 PM]

Enquire about this product

Name: *

Email: *

Phone: *

Enquiry:

*

*=Required

New Items

Basketware & Containers

Bombonniere

Books

Bulk Buying

Cake Decorating Accessories

Cake Pans

Cake/Hamper Boxes

Chocolate Boxes

Chocolate Buttons

Chocolate Foils

Chocolate Kits

Chocolate Moulds

Christmas Lines

Clearance Corner

Colours & Flavours

Cookie Cutters

Embellishments

Florist Supplies

Gift Items

Hard Candy Moulds

Mother's Day Range

Organza Bags

Poly Sheets, Wraps & Foils

Posie Boxes

Ribbons

Soap Moulds

Sugar Images

Ties and Bags

Toys

Tulle Circles

ROLL YOUR MOUSE OVER TO STOP

You are here Cookie Cutters Other

Click Image to Enlarge

Cupcake Cookie Cutte

Cupcake Cookie Cutter

Cupcake Cookie Cutter

Dimensions: 3" x 3" We have a fantastic assortment of metal cookie cutters. There are many

different shapes and sizes for all occasions.

Take a look at our range of dusts, glitters, candy writers, and books onideas to make your cookies look sensational.

Tinplate cookie cutters should not be immersed in water orput into the dishwasher. Clean by wiping with a damp cloth. If

required to wash, dry immediately.

PLEASE NOTE:

Individual Metal Cookie Cutter sizes listed here areapproximated to the nearest inch. the measurements

are for the largest area and are included as a guidelineonly.

AUD $ 2.50 Including GST

New Item: Baby AsstCut Edge

Cut Edge BabyAssortment Ribbon9m per roll... more

AUD $ 6.60 Click to View

Home | About Us | Shipping & Policy | Links | My Cart | Bulk Buying | Gallery | Contact Us

SEP OCT NOV

252008 2009 2010

1 captures25 Oct 09 - 25 Oct 09

Close

Help

BRADSHAW000007


Send Enquiry

Search Go

Add to Cart

http://inspiredbychocolate.com.au/?articleID=showProducts&view=detail&categoryID=56&Product_ID=2340&sub_category=97 Go
http://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=showProducts&categoryID=56&sub_category=0http://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=showProducts&categoryID=56&sub_category=97http://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/http://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/http://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=abouthttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=informationhttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=linkshttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=showCarthttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=showCarthttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=wholesalehttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=galleryhttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=galleryhttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=contactUshttp://web.archive.org/web/20091025223149*/http://inspiredbychocolate.com.au/?articleID=showProducts&view=detail&categoryID=56&Product_ID=2340&sub_category=97http://faq.web.archive.org/http://faq.web.archive.org/http://web.archive.org/web/20091025223149*/http://inspiredbychocolate.com.au/?articleID=showProducts&view=detail&categoryID=56&Product_ID=2340&sub_category=97http://web.archive.org/web/http://faq.web.archive.org/http://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=contactUshttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=galleryhttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=wholesalehttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=showCarthttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=linkshttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=informationhttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=abouthttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/http://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/http://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/product_images/CCF0005/DSC01527.JPGhttp://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=showProducts&categoryID=56&sub_category=97http://web.archive.org/web/20091025223149/http://inspiredbychocolate.com.au/?articleID=showProducts&categoryID=56&sub_category=0


53/95

colate Moulds - Inspired By Chocolate

//web.archive.org/.../20091025223149/http:/inspiredbychocolate.com.au/?articleID=showProducts&view=detail&categoryID=56&Product_ID=2340&sub_category=97[12/4/2013 12:24:50 PM]

2009 Inspired By Chocolate All Rights Reserved

BRADSHAW000008

http://web.archive.org/web/20091025223149/http://www.ravenculture.com/


54/95

://inspiredbychocolate.com.au/product_images/CCF0005/DSC01527.JPG[12/4/2013 12:25:41 PM]

BRADSHAW000009



55/95


Rule 11Motion



56/95

BRADSHAW000025


United States Patent [191Viggiano

[54] MUFFIN TOP

[76] Inventor: Bernard J. Viggiano, 4494 DeerRidge Rd., Danville, Calif. 94541

[**] Term: 14 Years

[21] Appl. No.: 27,611

[22] Filed: Aug. 25, 1994[52] U.S. Cl ..................................................... D1/102[58] Field of Search ................ D1/102, 104, 125, 128,

D1 130, 199; 426/91, 104

[56 References Cited


D. 194,577 2/1963 Herman ........................... Dl/104 X1,593,858 7/1926 Venable ........................... Dl/102 X4,139,644 2/1979 Stephenson ..................... Dl/102 X

FOREIGN PATENT DOCUMENTS

638064 2/1928 France .................................. Dl/102

111111111111111111111111111111111111111111111111111111111111111111111111111USOOD359153S

[11] Patent Number: Des. 359,153[45] Date of Patent: Jun. 13, 1995

OTHER PUBLICATIONS

Joy of Cooking", 1975. P. 630. Muffins on top left ofpage.

Primary Examiner A. Hugo WordAssistant Examiner Pamela BurgessAttorney Agent or Firm-Michael A. Glenn

[57] CLAIM

The ornamental design for a muffin top, as shown anddescribed.

DESCRIPTION

FIG. 1 is a front elevational view of a muffin top show-ing my new design;FIG. 2 is a left side elevational view thereof;FIG. 3 is a bottom plan view thereof;FIG. 4 is a rear elevational view thereof;FIG. 5 is a right side elevational view thereof;FIG. 6 is a top plan view thereof; and,

FIG. 7 is a front perspective view thereof.

:


57/95

BRADSHAW000026


U.S. Patent

. : . .-..:;

VJj.

une 13 1995

~{

/I

Sheet 1 of 3

: : ......: . , : . / ~ :

Des. 359 153

_ ~ .


58/95

BRADSHAW000027


U.S. Patent une 13 1995 Sheet 2 of 3 Des. 359 153

::::.

tJJj.6

.........

. . . :: ::: ~ : . : : : : ::.::~ : : ~ ::::.: :: ~ ~:::::::. . : . ..... ,:-:::::=. . , , : = : = . : : . : . ; : . : : ~ ~ : : ~ ~ \ ; : . ~ . ; : : : : . : : . : : . : ; ~ : : : : ~ : : ; : : . : ( : { : ~ : / ; ~ : < ~ ~ } ) . : . : \ ~ \ ~

_. _:.:::.:.-... .:._


59/95

BRADSHAW000028


U.S. Patent une 13 1995

l

.

:

...

Sheet 3 of 3 Des. 359 153

_

: .: .

' .:~..:_;_..].:.. ~:_::~-:. : : : . : : . : : . . . : : . : : : : : : : .~. .; t ~ ? . . ;:,:::\

. . tf r / ~ ~ ~ j V. .: ~.: :

= ~ ~ : : : :

tJ i


60/95


Rule11Motion



61/95

BRADSHAW000059


I

(12) United States Design PatentDeLeo

(54) CUPCAKE HOLDER

(75) Inventor: Anthony M. De Leo, Comstock Park,MI (US)

(73) Assignee: Dart Industries Inc., Orlando, FL (US)

(**) Term: 14 Years

(21) Appl. No.: 29/312,606

(22) Filed: Nov. 3, 2008

(51) LOC 9) Cl .................................................. 07-02(52) U.S. Cl. ....................................................... D7/354(58) Field of Classification Search .......... Dl/101-105,

(56)

Dl/116-118, 122; D7/323, 354-361,400,D7/402, 511,515,523,531,554.1-554.2,

D7/565-566, 628, 667; D9/428-429, 617,D9/643; D23/367; D25/7; 220/671-673;

4261115See application file for complete search history.

References Cited


2.588.957 A 3/1952 BrownD174,352 S 3/1955 SchaefD200,806 s 4/1965 Pava3,292,840 A 12/1966 SchmidtD229.924 S 111974 Brown .. ........ ...... ...... .. .. D25/74,273,249 A 6/1981 FlorianD287,336 S 12/1986 Roehrig4,795,033 A 111989 DuffyD322,402 s 12/1991 Budzbanowski ............. D9/428D398,135 s 9/1998 BiniaJis ....................... Dl/101D404,535 S 111999 Biniaris ....................... Dl/1015,858,428 A 111999 Truscello eta . . ........... 426/115

USOOD601379S

(IO) Patent No.: US D601,379 SOct. 6, 200945) Date of Patent:

D420,440 S

D442,834 SD478,785 S6,896.140 B1D506,351 SD521.872 SD540.663 S

2004/0251162 A1

2 2000 El-Assir .................... D23/367

5 200 1 Perez .......................... D7/6288/2003 Rorke et al.5/2005 Perry6/2005 Scholze et a . ............... D7/3605/2006 Wu ............................. D9/6434/2007 Tanner

12/2004 McGinnis et al.

OTHER PUBLICATIONS

Cup-A-Cake LLC; Cup-A-Cake cupcake container; 2008 (twopages taken from www.cupacake.com website).

cited by examiner

Primary E x a m i n e r ~Joel Sincavagessistant x a m i n e r ~ R i c k YPham

(74) Attorney, Agent, or F i r m ~ J o l m A .Doninger

(57) CLAIM

The ornamental design for a cupcake holder, as shown anddescribed.

DESCRIPTIONFIG. 1 is a top, side and front perspective view o a cupcakeholder showing my new design;FIG. 2 is a front elevation view thereof;

FIG. 3 is a rear elevation view thereof;

FIG. 4 is a right side elevation view thereof;

FIG. 5 is a left side elevation view thereof;FIG. is a top plan view thereof;

FIG. 7 is a bottom plan view thereof; and,

FIG. 8 is a bottom, side and rear perspective view thereof.

1 Claim, 5 Drawing Sheets


62/95

BRADSHAW000060


U.S. atent Oct 6 2009 Sheet 1 of 5 US D601 379 S

1 /

f /1


63/95

BRADSHAW000061



~

~

FIG


64/95

BRADSHAW000062



FIG


65/95

BRADSHAW000063



FIG


66/95

BRADSHAW000064


U.S. atentOct 6 2009 Sheet 5 of 5

US D601 379 S

FIG


67/95

8/13/2019 Kimber Cakeware v Brads

Documents

Kimber Cakeware v Bradshaw - Motion for Sanctions