Revision Military v. Balboa - Appellee Brief

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20 ll-1628UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

REVISION MILITARY, INC.,jlk/a REVISION EYEWEAR, INC., andREVISION MILITARY, LTD.,jlkla REVISION EYEWEAR, LTD.,

Plaintiffs-Appellantsv.

BALBOA MANUFACTURING COMPANY d/b/a BOBSTER EYEWEARDefendant-Appellee

APPEAL FROM THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF VERMONT IN 5:11-CV-149,

CHIEF JUDGE CHRISTINA C. REISS

CORRECTED

OPPOSITION/RESPONSE BRIEF OF DEFENDANT-APPELLEEBALBOA MANUFACTURING COMPANY d/b/a BOBSTER EYEWEAR

Steele N. Gillaspey, Esq.GILLASPEY & GILLASPEYThe NBC Tower225 Broadway, Suite 2220San Diego, CA 921 0 I(619) 234-3700

Attorney for Defendant-Appellee


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2011-1628UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

REVISION MILITARY, INC.,ftk/a REVISION EYEWEAR, INC., andREVISION MILITARY, LTD.,ftk/a REVISION EYEWEAR, LTD.,

Plaintiffs-Appellantsv.

BALBOA MANUFACTURING COMPANY d/b/a BOBSTER EYEWEARDefendant-Appellee

APPEAL FROM THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF VERMONT IN 5:11-CV-149,

CHIEF JUDGE CHRISTINA C. REISS

CORRECTED

OPPOSITION/RESPONSE BRIEF OF DEFENDANT-APPELLEE. BALBOA MANUFACTURING COMPANY d/b/a BOBSTER EYEWEAR

SteeleN. Gillaspey, Esq.GILLASPEY & GILLASPEYThe NBC Tower225 Broadway, Suite 2220San Diego, CA 9210 1(619) 234-3700Attorneyfor Defendant-AppelleeFebruary 24, 2012


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!I''iI!iI'lI!ii

Form 9FORM 9. Certificate of Interest

UNITED STATES COURT OF' APPEALS FOR THE I


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TABLE OF CONTENTSTABLE OF CONTENTS ................................................................................ .TABLE OF AUTHORITIES........................................................................... 111STATEMENT OF RELATED CASES ......................................................... . v.STATEMENT OF THE CASE ....................................................................... .STATEMENT OF THE FACTS ...................................................................... .

Relevant Balboa Company History ..................................................... .Facts Relevant to Asserted Infringement..... ......... ......... ......... .......... .... 3The Court Hearing and Ruling ............ ........................ ... ..... .. ........ ..... .. 4

SUMMARYOF BALBOA ARGUMENT....................................................... 5As to Injunction Standard .................................................................... . 5Function vs. Design............................................................................... 5Observer Scrutiny ................................................................................ . 6Revision Failure to meet Burden........................................................... 6Revision Not Even Close....................................................................... 7

BALBOA ARGUMENT ................................................................................. . 8I.

II

Standard of Review ............................................................................. .

District Court Did Not ERR. Court Found That Revision Did NotMeet the Burden of Proof for Likelihood ofSuccess, The Call Wasn'tEven A Close Call on the Evidence ...................................................... .

8

9Judge Reiss' Yeoman's Work and Care.................................... 9It's Design Patents- Not Rocket Science ................................ . 11

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The Ordinary Observer Test...................................................... 11Deception/Confusion Is the Test... ........................................... . 13

Revision Provided no Evidence ofActualDeception/Confusion................................................................. 14Balboa Evidence in Opposition .............................................. . 14The Products Do Not Look the Same/Similar.......................... 15Judge Reiss' Factual DeterminationsEntitled To Great Weight............................................................... 17

II I CONCLUSION................................................................................................. 18

Rule 32A Certificate ofCompliance follows Conclusion

- II -


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TABLE OF AUTHORITIES

CASESAmazon. com v. BarnesandNoble.com, Inc.329 F.3d 1343 (Fed.Cir. 1998) ................................................................................. . 8Applied Arts Corporation v. Grand Rapids Meta/craft Corporation67 F.2d 428 (6'h Cir. 1933) ....................................................................................... 12,13,15Contessa Food Products v. Conagra, Inc.282 F.3d 1370 (Fed.Cir. 2009).................................................................................. 10,17Crocs, Inc. v. Int 'I Trade Com 'n598 F.3d 1294 (Fed.Cir. 2010) ................................................................................. . 10,17Egyptian Goddess, Inc. v. SWISA, Inc.543 F.3d 665 (Fed.Cir. 2008) ................................................................ 7,9,10,11,12,13,15,16Embrex, Inc. v. Serv. Eng 'g Corp216 F 3d 1343 (Fed.Cir.2000) .................................................................................. . 17Gorham Mfg. Co. v. White81 U.S. 511 (1871) ................................................................................................. 10,12,15,16Glaxo Group, Ltd. v. Ranbaxy Pharmaceuticals, Inc.263 F.3d 1333 (Fed.Cir.2001)................................................................................... 17Guttman, Inc. v. Kopycake Enters., Inc.302 F.3d 1352 (Fed.Cir.2002) ................................................................................. . 8Hybritech, Inc. v. Abbott Labs.849 F.2d 1446 (Fed.Cir.1998)................................................................................... 8

Intel Corp. v. ULSI Sys Tech, Inc .995 F.2d 1566 (Fed.Cir.1993) ................................................................................. . 8

- I l l -


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Keystone Retaining Wall Systems, Inc. v. Westrock, Inc.997 F.2d 1444 (Fed.Cir. 1993) ................................................................................. . 10L.A. Gear, Inc. v. Thorn McCan Shoe Co.988 F.2d 1117 (Fed.Cir. 1993) ................................................................................ 7,10, 11,13Mikohn Gaming Corp. v. Acres Gaming, Inc.165 F.3d 891 (Fed.Cir. 1998).................................................................................... 5Minka Lighting, Inc. v. Maxim Lighting Intern., Inc .No. 3:06-CV-995-K 2009 WL 691594 at 7* (N.D. Tex Mar. 16,2009) ................. . 12Nat 'I Steel Car, Ltd. v. Canadian Pac. Ry, Ltd.357 F.3d 1319 (Fed.Cir. 2004).................................................................................. 8Novo Nordisk v. Genentech, Inc.77 F.3d 1364 (Fed.Cir.1996) ................................................................................... . 8Oakley, Inc. v. Sung/ass Hut, lnt 'I316 F.3d 1331 (Fed.Cir. 2003) ................................................................................. 8OddzOn Prods., Inc. v. Just Toys, Inc.122 F 3d 1396 (Fed.Cir. 1997) ................................................................................. 11Purdue Phara, LLP v. Boehringer lngelheim GMBM237 F.3d 1359 (Fed.Cir. 2001) ................................................................................. 6,7,10Reebok Int '!, Ltd. v. J Baker, Inc.32 F.3d 1552 (Fed.Cir. 1994) .................................................................................. . 8,9,10Richardson v. Stanley Works, IncNo. 2009-1354 (Fed.Cir. March 9, 2010) ................................................................ . I IWing Shing Products v. Sunbeam Products, Inc.665 F. Supp.2d 357 (SONY 2009) ............................................................................ 12,13,15

-IV-


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CORRECTED BRIEF

STATEMENT OF RELATED CASES

Appellee Balboa Manufacturing Company dba Bobster Eyewear, in accordancewith FED ClR.R., Rule 47.5, hereby and herewith certifies:

[l] That no other Appeal in or from the same civil action or proceedingin the lower court or body was before this or any other Appellate Court,and,[2] That Appellee is not aware of any case pending before thisHonorable Court, or any other Appellate Court, that will directly affect orbe directly affected by this Honorable Court's decision in this pendingappeal.

DATED: February 24, 2012 at San Diego, CA.

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Stpl16(/Na,The NBC Tower225 Broadway, Suite 2220San Diego, California 9210 ITelephone: 619 234 3 700


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STATEMENT OF THE CASEBalboa Manufacturing Company, LLC dba Bobster Eyewear ("Balboa") respectfully

disagrees with Revision Military, Ltd.'s and Revision Military, Inc.'s (jointly "Revision")Statement of the Case in the Opening Brief as to one matter - Balboa does not infringe theasserted desif,'11 patents as claimed by Revision.

The remainder of the Revision statement is factual procedural review which is correctas shown on the record.

STATEMENT OF THE FACTSBalboa respectfully disagrees with Revision's statement of the facts, inclusive of

disagreeing with Revision placing argument into the statement of facts. Balboa submits thatthe record below establishes the facts as follows (references will be made to the record,inclusive of the Declarations of Jennifer Stmebing, Patrick Hussey, and Donn Hanns, whichwere admitted by the Court at the time of the hearing. Balboa Appx., Ex 1:2 Opinion &Orderof he Honorable Christina Reiss, 0813//11, ("Trans.") Pg 2, Findings ofFact):

Relevant Balboa Company HistoryBalboa began as a niche manufacturing and sales company in motorcycle clothing

accessories. In 1997, in response to its market, Balboa expanded into the manufacture andsale of eyewear, namely sunglasses and goggles, primarily protective (protective meaningimpact resistant/shatterproof- providing protection to motorcycle riders' eyes against flying/high speed debris, but not "ballistic")


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Commencing in 1999, as a result ofBalboa's sales to the motorcycle market (inclusiveof to individual members of the military and law enforcement), Balboa began selling eyewearto the military/law enforcement market. Balboa's facilities are located in somewhat centralSan Diego County, Califomia, an area historically known as the home to forces of the UnitedStates Anned Services, including:

[a] U.S. Marine Corps Base, Camp Pendleton containing elements of he infantry trainingcommand, Force Recon (Marine Special Forces), I'' Division Combat Command, MarineExpeditionary Unit (Combat MEU), elements of Marine Armor, and the Marine Amphibiousassault Training Command;[b] U.S. Marine Corps LCAC Base- "No Beach Out of Reach"- amphibious warfarebase;[c] U.S_ Marine Aviation Station Miramar- containing Marine fighter and helicoptercombat and support aviation command_ The Station was formerly known as Naval AirStation Miramar, the U.S. Navy fighter west coast command/carrier fighter command, andalso home to the U.S Navy's Air Combat Warfare School commonly known as "Top Gun";[d] U.S Navy Special Warfare School Coronado- west coast home and school to theNavy SEALS and home to SEAL TEAM ONE; and,[e] U.S. Marine Corp Recruit Training Depot (MCRD)- Marine Corps Boot Camp andcombat infantry training schooL

Again, Balboa's sales of eyewear to the military began in 1999, with sales to SEALTEAM ONE, with sales continuing over the years to both military and law enforcement,including, but not limited to:

I. U.S. Border Patrol 14_ U.S_ Marines (26)2. SEAL TEAM THREE 15. Naval Special Warfare Command (E)

U S. Marine Corps (39) 16_ U.S. Army - Kuwait4_ US Navy Special Warfare (W) 17_ U.S Marines- (49)5_ Naval Air Station - (T) 18_ US Marines- (46)

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6. U.S Marine Corps (16) 19. U.S. Army- Fort Irwin7 MCAS Miramar 20. U.S. Marines- Chief Multi Nat' ! Forces, Iraq8. U S. Army- Fort Bragg (A) 21. U.S. Marines- MCAS Miramar- (11)9 . Camp Pendleton 22. U.S. Army- Fort Polk10. FBI 23. FLETC11. Italian Armed Forces 24. Abu Dhabi Armed Forces12 . Mexican Military/Law Enforcement 25. Polish Military13. Swedish Law Enforcement 26. Kuwati Military

Balboa has been involved the manufacture of sunglasses and goggles for many years,again starting well prior to Revision. Balboa also sells to the fashion markets, and the sportsmarket, inclusive of the extreme sports market. Balboa revises and updates its products ona regular basis, primarily improving products from iteration to iteration based on its experiencein the market. In the early to mid-2000's, the military began promulgating specifications forprocurement (specialized standards), including, but not limited to, MILSPEC, MCEPS, andEN 166, which specifications were updated along the way. Balboa began additional researchand development incorporating those standards for military contracting. Balboa Appx., Ex .5:191-92, 195, Struebing D e c l a r a t i o n , ~ ~ 3-5,8-10, 13-16.

Revision admits that it did not start business until2003, which is some 4- 5 years afterBalboa. Balboa Appx., Ex. 8:278, Revision Opening Brie_{, Pg. 3.

Facts Relevant to Asserted InfringementBalboa asserted below that it does not infringe upon either of the Revision asserted

Design Patents. Balboa further asserted that a plain, side by side comparison of the products3


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unequivocally established the clearly recognizable difference in overall design between thetwo products, such that no ordinary observer or purchaser would mistake the two products orbe deceived.

In further support of its factual assertions, Balboa entered Exhibits 1 - 9 (direct sideby side product comparison pictures and drawings, inclusive ofDesign Patent figures), BalboaAppx, Ex 5:201-42, Struebing Declaration; the testimony ofPatrick Hussey, an expert in theareas of commercial/military eyewear, inclusive of goggles (court admitted declaration),Balboa Appx, Ex 6:245-53, Hussey Declaration; and the testimony ofDonn K. Hanns, patentattomey, inclusive of comparison charts ofthe Revision '039 and '098 design patents to theaccused Balboa product (court admitted declaration). Balboa Appx, Ex 7:254-70, HarmsDeclaration. Ms. Stmebing further testified at the July 20, 2011 hearing. Ibid, Ex. 2.

The Court Hearing and RulingOn July 20, 2011, the Honorable Christina Reiss, U.S. District Court Judge held a full

hearing on the Revision Motion for Preliminary Injunction, inclusive ofpresentation ofwitnesstestimony and admission ofevidence. BalboaAppx., Ex 2:48-182, Trans. The Court was alsoprovided with actual products from both Revision and Balboa, i.e.: the asserted Revision"Bullet Ant" and the accused Balboa "Bravo". The Revision design patents, 0537,098 andD620,039 were also admitted. Balboa Appx., Ex 3:183-85 and Ex 4:186-89, respectively.

On August 31, 2011, the Honorable District Court issued its Opinion and Order,denying Revision's Motion for Injunction. Balboa Appx., Ex 1:18-25, Opinion & Order,Section C, Pgs 18 - 25 and Exhibits A-D (Ex 1:26-4 7) .

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SUMMARY OF BALBOA ARGUMENT

As to Injunction StandardThe Honorable Christina Reiss, trial judge below, got it right. Further, contra to the

Revision argument here, Revision actually urged 2"d Circuit standards upon the Trial Courtin the Revision Motion below. Revision cited 2"d Circuit law to the Trial Court stating:

"The Second Circuit's standard (for injunctive relief) is compatible with the SupremeCourt's test .. The Federal Circuit Court ofAppeals, which has appellatejurisdiclion.for patent infringmenr actions, has determined that the standard .for granting apreliminary injunction is not unique to patent lmt' and therefore applies the standardof he regional circuit in which the action lies. See, Mikohn Gaming Corp. v. AcresGaming, Inc., 165 F. 3d 891, 894 (Fed.Cir. 1998)"

Balboa Appx., Ex. 8:280-81, Revision Motionfor Preliminary Injunction with IncorporatedMemorandum In Support, Pgs 5-6, ("Legal Standard for Preliminary Injunction") .

Function vs. DesignDespite Revision's new arguments before this Honorable Court, the plain fact is that

Balboa does not incorporate the design features claimed by Revision. The overall observedimpressions of he designs are different. As admitted by Revision, the hallmark of he claimed"design" are the stylized venting/depressions on the front face above the bridge/brow line ofthe goggle(>) and the stylized shield with star rampant. It is further notable thatsaid front face vents are also admitted to be functional in many instances. Balboa Appx., Ex2:100-101, Trans., 53:22-54:2. Same also fonns the overall stylized design that Revisionwants the observer to recognize. lbid, Ex. 2:101-102, Trans., 54:3-55:20 .Il l

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Other features identified include the functional, hexagonal vents in the foamsurrounding the goggle for the undisputed purposes of moisture wicking and anti-foggingBalboa Appx., Ex. 6:251, Hussey Declaration, 7:16-23.

Observer ScrutinyMoreover, Revision admitted that the ordinary observer in this case is the military, and

Revision further admitted that the military's scmtiny is quite high when dealing withprotective eyewear for the troops in harm's way ("Q: So they're [the military/ really picky .A: Yes. A: They are going to look at it not only from a test standard and they are going torequire third party testing, but they 'II do internal testing too. Q: They are going to take areally hard impection on the goggle itself themselves overall; correct? Q: .. they are goingto review that goggle and take a look at If . handle the goggle, go over it, things like that;right? A: I would think that would be part of"their process, yes") . Balboa Appx., Ex. 2:97,Trans., Balboa Cross Exam of John Fowler, Revision Vice President of Product, 50:8-23 .

Revision Failure to Meet BurdenRevision, as the party seeking an injunction, had the burden of proving, in the first

instance, that Revision had a reasonable likelihood of success on the merits. fn its Motionbelow, Revision cited to Purdue Phara. LLP vs. Boehringer lngelheim GMBM, 237 F.3d1359 (Fed.Cir. 2001) for the applicable standard. On the specific subject, Purdue held" .Purdue as the moving party (must) "clearly establish[] the .first factor (by making a 'clearshowing' qf...in.fiingement . "). Ibid., at 1363.Ill

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The Purdue case was expressly cited to by the Trial Court in its Ruling with respect tothe legal standard. Balboa Appx., Ex. 1: 19, Opinion & Order, Pg. 19, 3'd In addition, theTrial Comt cited to L.A. Gear Inc. vs. Thom McCan Shoe Co., 988 F.2d 1117 (Fed.Cir.1993 ), another case cited by Revision (during the hearing). Balboa Appx. Ex. 2: 179, 'Frans.,132:1-3. As stated by Judge Reiss, the L.A. Gear case is also clear as to the standard-"De"ign patent infringement is a question offact, to be proven by the preponderance of heevidence. L.A. Gear, Inc., 988 F.2d at 1124". Balboa Appx., Ex. 1:19, Opinion & Order,Pg. 19, 4'h ~ ) .

Revision Not Even CloseRevision failed to meets its burden. The Trial Court detennined that the case was not

a "particularly close case", expressly citing to the Egyptian Goddess. Inc. vs. SWISA. Inc.,543 F.3d 665 standard that "In some instances, the claimed design and the accused designwill be sufficiently distinct that it will be clear without more [such as prior art references/that the patentee has not met its burden of proving that the two designs would appear'substantially the same' to the ordinary observer". Balboa Appx., Ex. 1:22, Opinion &Order, Pg. 22, 3'd ~ a n d FN 5.

Revision put forward no evidence (other than Revision's own vtce president'sconclusory "opinions") ofordinary observer findings of requisite similarity or deception, i.e.:no substantial proof that an ordinary observer was deceived into confusing the Balboa gogglewith the Revision goggle because the Balboa goggle was substantially similar to the Revisiondesign .

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I.

BALBOA ARGUMENT

STANDARD OF REVIEW

"A pre/ m inary injunction is a 'drastic extraordinary remedy that is not to be o u t i n e ~ ygranted". Intel Corp vs. ULSI Svs Tech. Inc, 995 F.2d 1566 (Fed.Cir. 1993). To obtain apreliminary injunction in the district court, the moving party must demonstrate a reasonablelikelihood qfsuccess on the merits .a movant is not entitled ((he fails to demonstrate asubstantia/likelihood qfsuccess on the merits". Nat 'I Steel Car. Ltd vs. Canadian Pac. Rv.Ltd, 357 F.3d 1319, 1324-1325 (Fed.Cir. 2004), citing to Guttman. Inc. vs. Kopycake Enters.,Inc, 302 F.3d 1352, 1356 (Fed.Cir. 2002); Amazon vs. BarnesandNoble.com. Inc, 329 F.3d1343, 1350; Hybritech. Inc vs. Abbott Labs., 849 F.2d 1446, 1451 (Fed.Cir. 1998) .

"The final..denial ofa preliminary injunction is within the sound discretion o{ thedistrict court". Novo Nordisk vs. Genentech. Inc., 77 F.3d 1364, 1367 (Fed.Cir.1996). Thedistrict court's discretion "will be reviewed on appeal only for an abuse qf discretion".Oaklev. Inc vs. Sung/ass Hut. Int '/, 316 F.3d 1331, 1338 (Fed.Cir. 2003). The Federal Circuit,in reviewing the reasoning of the trial court with respect to a decision on an injunction, willreview (l) factual findings for clear error, (2) conclusions oflaw de novo, and (3) the exerciseof discretion for a clear error ofjud!:,'111ent in weighing the relevant factors. Oakley, 316 F .3dat 1339; Amazon, 239 F.3d at 1350; Novo, 77 F.3d at 1367. "District Court judges areoverburdened and needflexibility to operate efficiently. They deserve tolerance by reviewingcourts so they can tailor procedures ofadjudication to the case at hand'. Reebok Int 'I, Ltd

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vsJ. Baker, Inc., 32 FJd 1552,1557 (Fed.Cir. 1994).With respect to asserted infringement of a design patent, the movant has the burden of

proof on the issue, and must meet that burden by establishing that the design patent and theaccused product are substantially similar in overall appearance to the ordinary observer. "(I)testfor design patent infringement is whether an ordinary observer, familiar with the priorart, would be deceived into thinking that the accused design was the same as the patenteddesign". Egyptian Goddess, 543 F.3d at 665.

II. DISTRICT COURT DID NOT ERR. COURT FOUND THAT REVISIONDID NOT MEET BURDEN OF PROOF FOR LIKELIHOOD OF SUCCESS,THE CALL WASN'T EVEN A CLOSE CALL ON THE EVIDENCERevision's sturm und drang notwithstanding, the Trial Court found that Revision failed

to meet its burden ofproof to enable the Court to exercise its discretion to grant an injunction.Judge Reiss' Yeoman's Work and Care

The Trial Court, after conducting a full evidentiary hearing, upon hearing witnesstestimony (inclusive ofadmission by stipulation ofdeclaration testimony), inclusive ofhearingdirect, cross, and re-direct, weighing credibility, weighing the evidence, and thereafterreviewing the evidence, inclusive of handling the actual products, came to the detennination

that the "accused design (the Balboa "Bravo'') could not be reasonably be viewed as sosimilar to the claimed design that a purchaser ..would be deceived by the similarity betweenthe claimed and the accused designs, inducing him to purchase one suppm-:ing it to he theother". Balboa Appx., Ex. l:23, Opinion & Order, Pg. 23, ~ 3 .

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Moreover, it is clearly apparent that the Honorable Trial Court put in significant effortin the review of the case seeking to come to the correct detennination. Judge Reiss providedthe details ofher yeoman's work- Judge Reiss reviewed the Federal Circuit Court ofAppealsdecisions and U.S. Supreme Court decisions applicable, including, but not limited to, Purdue,237 F.3d 1359 (Fed.Cir. 2001), L.A. Gear, 988 F.2d 1117 (Fed.Cir. 1993), 35 USC 289,Gorham vs. White, 81 U.S. 511 (1871), Egyptian Goddess, 543 F.3d 665 (Fed.Cir. 2008),Crocs. Inc., 598 F.3d 1294 (Fed.Cir. 201 0), Contessa Food, 282 F.3d 1370 (Fed.Cir. 2002);Kevstone Retaining Wall, 997 F.2d 1444 (Fed.Cir. 1993); and Reebok, Int 'l, 32 F.3d 1552(Fed.Cir. 1994).

Judge Reiss then went on to carefully apply said law to the facts of the case, beingin her rationale. Judge Reiss reviewed the testimony, was critical ofboth parties, and

made evidentiary detenninations, inclusiveofexplaining the weight accorded to the respectivetestimony and proffered evidence.

Judge Reiss reviewed the proffered evidence, compared the illustrative material ofbothsides, and reviewed the actual products, i.e.: the Revision "Bullet Ant" goggle ('039 versionno longer sold), the "Bullet Ant" goggle ('098 version), and the accused Balboa"Bravo"goggle. Judge Reiss went through a step by step, detailed analysis over the course ofsome six and half(6 Yz) pages. Balboa Appx., Ex. 1:20-25, Opinion & Order, Pgs 20-25.

In further support of her determinations, Judge Reiss attached to the ruling theillustrative material submitted by the parties (comparisons of the respective products). Ibid,at 1 26-47, Exhibits A through D .

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It's Design Patents - Not Rocket ScienceWe are dealing with two design patents. A design patent goes to the "look" of the

claimed product, which "look" is defined by the figures set forth in the design patent. L.A.Gear. Inc., 988 F.2d at 1124. The mere issuance of design patent does not automaticallyexclude all other products- "[w]here a design contains both functional and non:fimctionalelements, the scope of he claim must be construed in order to i d e n t ~ f y the n o n ~ f i m c t i o n a /aspects of he design as shown in the patent." OddzOn Prods . Inc. v. Just Tovs. Inc., 122

F.3d 1396, 1405 (Fed. Cir. 1997) as affinned in Richardson v Stanlev Works. Inc., No .2009-1354 (Fed. Cir., March 9, 2010). No text I written descriptions are necessary, in fact,same are discouraged. The claim rises and falls on that which is clearly depicted. In the caseat bar, the Revision goggles admittedly/undisputably contain functional matter, i.e.: the designfeature of the prominent six vents on the front face (bridge/brown) of the Revision gogglehave been used for air flow purposes (moisture wicking and anti-fog), and the hexagonal holesin the foam (bottom and top) surrounding the Revision goggle are used for moisture wickingand anti-fog, as well as for comfort and fit. Balboa Appx., Ex. 2: I02 and 111, Trans., 53:22-54:2, 64:1-6; Ex. 6, Hussey Declaration, 7:16-23.

The Ordinary Observer TestIn Egyptian Goddess, this Honorable Court revised the infringement standard in design

patent cases, returning the test/standard enunciated in Gorham- "f!Jf, the eye ofthe ordinaryobserver, giving such attention as a purchaser usually gives, two desi&rns are substantiallythe same (j"the resemblance is such as to deceive such an observer, inducing him to purchase

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one supposing it to be the other, the first one patented is infringed by the other". GorhamMfg. Co., 81 US at 527.

The "ordinary observer" standard was subsequently addressed in Applied ArtsCorporation vs. Grand Rapids Meta/craft Corporation, 67 F.2d428, 429-430 (61" Cir.l933),utilizing the Gorham standards. Applied Arts was further discussed in Egyptian Goddess, 543F.3d 665, 674-675 (Fed.Cir. 2008), and discussed and applied in Wing ShingProducts vsSunbeam Products. Inc., 665 F.Supp.2d 357, 363 (SONY 2009) a post /:.gyptian Goddesscase. Jn WingShing, the Court discussed both Egyptian Goddess and Applied Arts in comingto its detennination of non-infringement under the correct ordinary observer standard:

At least one district court applying Egyptian Goddess has granted summaryjudgment without considering prior art where two designs d({fered primarily at onehighly sign(flcant.feature. See Minka Lighting. Inc. v. Maxim Lighting Intern., Inc.,No. 3:06-CV-995-K, 2009 WL 69159-1. at *7 (N.D. Tex. Mar. 16, 2009).

That "a purchaser of hings ofsimilar design, as the ordinary observer hasbeen defined, Applied Arts, 67 F.2d at -130, could be deceived by the devicessimilarities seems unlikely to the Court, but resolution qf the inquily would bene.fltfrom a concrete guidepost. See Egvotian Goddess. 543 F'.3d at 676-77 ( [IJt can bed!fflcult to answer the question whether one thing;,, like another without being givena frame o_{reference '') .

Wing Shing 665 F.Supp.2d at 363.Applied Arts set the clear definition for the ordinary observer with knowledge (as

discussed in Egyptian Goddess), by articulating the following standard:A care.fit! analysis o.l Gorham v. White, and other a4Judicated cases suppliesthe answer. The ordinmy observer is not any observer, but one who, with lessthan the trainedfaculties o.f the expert. is "a purchaser o.l things o.lsimilardesign," or "one interested in the subject." The mythical prudent man innegligence cases is not the Hottentot or Abyssinian who has never seen a

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locomotive or driven an automobile, but one who has average familiarity withsuch instrumentalities, and can form a reasonable judgment as to their speedand mode o_{operation. So is the average observer not one who has neverseen an ash tray or a cigar lighter, but one who, though not an expert, hasreasonable familiarity with such objects, and is capable qf forming areasonable judgment when COi?fronted with a design therefor as to whether itpresents to his eye distinctiveness from or similarity with those which havepreceded it. This view is confirmed by the factual analysis which the SupremeCourt gave to the evidence in the Gorham Case, laying its greatest stress uponthe evidence ~ { s a m e n e s s there given by the large numberofwitnesses './ami/iarwith designs, and most q{them engaged in the trade."

Applied Arts, 67 F.2d 429-430.

Deception/Confusion Is the TestL.A. Gear, cited by Revision, is a 1993 case, decided some 15 years prior to Egyptian

Goddess and its progeny. L.A. Gear utilizes the now over ruled two step test. However, L.A.Gear does cite to Gorham, and with respect to design look, held:

"The criterion is deception o{ the ordinary observer, such that one designwould be confiLsed with the other .. (lthe resemblance is such as to deceive suchan observer, inducing him to purchase one suppo5;ing it to be the other, thefirst . is infringed hy the other".

L.A. Gear, 988 F.2d at 1125 .The L.A. Gear case is also distinguishable under the facts. Thom MeAn admitted to

copying the L.A. Gear design ("Substantial similarity is not di!>puted, indeed, copying isadmitted' Ibid), which is not the fact of this case .

Egyptian Goddess and Wing Shing also discuss the issues of deception/confusion aspart of the ordinary observer with knowledge test.Il l

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Revision Provided No Evidence of Actual Deception/ConfusionAs set forth by the applicable case law, Revision has the burden of proof regarding

deception and confusion (deception of the observer/purchaser such to cause the purchase ofthe Balboa goggle when the observer/purchaser intended to buy the Revision product) .Revision barely addressed the issue, much less provide proof.

In point of fact, what was established was that Revision did over 95% of its salesthrough military procurement contracts. Balboa Appx., Ex. 2:93, Trans., 46:21-24. Further,that Balboa has not sold ballistic eyewear through military procurement contracts. Ibid, Ex .2:118, Trans., 71:10-14.

As to law enforcement and individual consumers, Revision did not proffer any materialproofof any confusion or deception. All that Revision asserted was, in essence, conclusoryallegations that the two goggles looked the same .

Balboa Evidence in OppositionIn addition to providing the Court the actual products in dispute, Balboa provided

competent evidence to establish its claim of non-infringement, including, but not limited to,Balboa Appx., Ex. 5:201-238, Stru:;bing Declaration, Exhibits 1-7 (Struebing Exhibit I wasattached to the Court's Opinion & Order as Exhibit C to said Order; and Struebing Exhibit4 was attached to the Court's Opinion & Order as Exhibit D to said Order); Balboa Appx.,Ex. 6:245-253, Hussey Declaration (function vs. design, differences in overall visualimpressions, ordinary observer); Balboa Appx., Ex. 7:254-270:, Harms Declaration (designpatent claims/figures to the accused product as to overall visual presentation) .

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The Products Do Not Look the Same/Similar

Under any injunctive standard regarding a design patent, the very first question iswhether the design patent claims are substantially the same or similar to the ordinary observersuch that the accused product would cause confusion/deception. Gorham, Applied Arts,Egyptian Goddess, Wing Shing.

Revision attempts to argue that the Trial Comt engaged in an impennissible review of"minor differences" thereby purportedly running afoul of Gorham by allegedly using animproper point of novelty test. The record is clear that such is not the case:

"Because this is not a particularly close case, 5 the court does needprior artas a :frame of reference' to apply to the 'ordinary observer test' which theFederal Circuit recognizes is the 'sole test for determining whether a designpatent has been infringed". Egyptian Goddess, Inc., 543 F. 3d at 678 ."FN 5. ("In some instance.\, the claimed design and the accused product willbe sufficiently distincT that it will be clear without more [such as prior artreferences] that the patentee has not met its burden o_fproving the two designswould appear 'substantially the same' to the ordinary observer"

Balboa Appx., Ex. l :22, Opinion & Order, Pg. 22, 3'd ~ a n d footnote 5.Judge Reiss goes on to carefully set forth the applicable caselaw (all Federal Circuit)

as to the standards of review with respect to design patent infringement, inclusive of citationto the evidence, including photographic comparisons and actual product comparisons. Ibid,Ex. 1:23, Opinion & Order, Pg 23.

The Trial Court expressly and unequivocally stated that it did not engage in a point ofnovelty test - that the decision was based upon the overall design:Il l

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The (Revision) Bullet and the (Balboa) goggles . .{i}n the eye of the ordinaryobserver .do not clearly reflect the same design. Indeed, the "accused designcould not be reasonably viewed as so similar to the claimed design that apurchaser .would be deceived by the similarity between the claimed andaccused designs, 'inducing him to purchase one supposing it to be the other".Egyptian Goddess, 543 F.3d at 683 (quoting Gorham, 81 US at 528)Although the court reaches this conclusion by examining the overall design ofthe goggles, and not on an element bv element basis, it notes that severaldesign features stand out as dissimilar.

Balboa Appx., Ex 1:23, Opinion & Order, Pg. 23, 3'd ~ ( emp add) .Judge Reiss then went on to cite, based upon the design features articulated by

Revision, and by her own direct comparison of the actual products, that:The shape of the lenses were different, which difference "provide[d] an

immediate visual difference in the overall appearance of the two sets ofgoggles";

The Revision goggle is concave with the prominent six vents/depressions(< < < >>>)in the middle of the bridge. The Court also discussed the disputeas to the "R" logo as part of the shield and star between the vents, albeit findingthat "Revision conced[ ed] that its logo's placement and appearance is part of hestyle claimed". The Court then confinned that the Balboa goggles protrudedoutward, has no such vents as in the Revision claimed design, finding the"differences in the two designs are prominent and immediately apparent toeven a casual observer and contribute significantly to the overallappearance .

As to the air flow venting in the foam area surrounding the goggles, theCourt found part of the venting to be functional, however gave deference toRevision's hexagonal shape of the vent holes in the design patents as well asplacement. However, the Court found that Balboa's use of round vent holes andBalboa's placement/structure thereof were different in the creation of he overalllook of the respective goggles .

Judge Reiss clearly followed the guideline standards set forth by this Honorable Court,and by the Honorable Supreme Court, as her rulings unequivocally establish:

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The 'deception that arises' must be the 'result of he similarities in the overalldesign, not of he similarities in ornamentalfeatures in isolation'. Crocs, Incv. Jnt 'I Trade Com 'n, 598 F 3d 1294, 1030 (Fed. Cir. 20 IOJ; see also, ContessaFood Products v. Conagra, Inc., 282 F. 3d 1370 /379 (Fed.Cir. 2009) ("all ofthe ornamentalfeatures illustrated in the [patentJ.figures must be consideredin evaluating design patent infringement'') .

Balboa Appx., Ex. 1 20, Opinion & Order, Pg. 20, 2"dJudge Reiss' Factual Determinations Entitled To Great Weight

The Honorable Judge Reiss perfonned the equivalent of a patent claims constmction,albeit as to a design patent (construing the "claims" set forth by the design patent figures asagainst the accused product). Accordingly, her findings based thereon in "determin[ing)infringement is a question of act, which receives substantial deference on review". GlaxoGroup, Ltd vs. RanbaxvPharmaceuticals.Inc., 263 F.3d 1333, 1335 (Fed.Cir. 2001) (citingto Embrex, Inc vs. Serv. Eng 'g Corp, 216 F.3d 1343, 1348-49 (Fed.Cir. 2000).

The Glaxo Court further found that even in a case which is a close call, the factors oflikelihood of success and irreparable hann are to fall in favor of the defendant. Glaxo, 262F.3d at 1339. In this case, it was not a close call, as expressly found by Judge Reiss, basedupon the facts. Judge Reiss unequivocally found that the overall difference between theasserted design patent claims and the accused product were clear even to a casual observer,an even lower standard than the requisite ordinary observer standard as defined by theapplicable case law.Il l

Il l

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Ill. CONCLUSION

Appellant Revision's argument puts the cart before the horse. The essence of design

patent infringement is whether or not the claimed ornamental (non-functional) design isreplicate by the accused product such to cause the ordinary observer to be deceived intobuying the accused infringer's product when the observer intended to buy the patentee'sproduct, i.e.: if they're not the same, the patentee has no right to blame

Here, the Honorable Judge Reiss found that the "differences in the two designs areprominent and immediately apparent to even a casual observer"

The record, evidence and the law support the findings of Judge Reiss, establishing thather Honor acted appropriately and equitably in denying the "drastic remedy" of injunctiverelief under the facts of this case.

Accordingly, Appellee Balboa respectfully submits that the Opinion and Order appealedfrom by Appellant Revision be AFFIRMED as to the DENIAL of preliminary injunction .

illaspey, Es .EY & GILLASPEY

The NBC Tower225 Broadway, Suite 2220San Diego, California 92101Telephone: 619 234 3700sng@g-glaw .comAttomey for Appellee

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'i

Form 19FORM 19. Certificate of Compliance With Rule 32{a)

142

CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITATION,TYPEFACE REQUIREMENTS, AND TYPE STYLE REQUIREMENTS

l. This brief complies with the type-volume limitation of Federal Rule ofAppellate Procedure 32(a)! 7)(B'l or Federal Rule of Appellate Procedure 28.1 (c).

0 The brie f contains [ 4833 ] words, excluding the pa1ts ofthe brief exempted by Federal Rule ofAppcllaie Procedure32(a )( 7)(B)( iii),or

0 The brief uses a monospaced typeface and contains [lines of ext, excluding the parts of he briefexempted by Federal Ruleof Appellate Procedure 32(a)(7)(B)(iii).

2. This brief complies with the typeface requirements of Federal Rule ofAppellate Procedure 32(al(5) or Federal Rule ofAppellate Procedure 28.1 and thetype style requirements of Federal Rule of Appellate Procedure 32(a)(6).

0 The brief has been prepared in a proportionally spaced typeface using

0

[ WordPerfect v. 12 ] in[ 14 pt. Times New Roman ], or

The brief has been prepared in a monospaced typeface using] with [].[[

(Name of Attorney)Attorney for Appellee Balboa Mfg Co, LLC(State whether representing appellant, appellee, etc.)February 10, 2012

(Date)


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UNITED STATES COURT OF APPEALSFOR THE

FEDERAL CIRCUIT

REVISION MIUTARY, INC.,flc/aREVISION EYEWEAR, INC., and,REVISION MILITARY, LTDjlklaREVISION EYEWEAR, LTD,

)))))

Plaintiffs-Appellants )vs.

BALBOA MANUFACTURINGCOMPANY d/bia BOBSTER EYEWEARDefendant-Appellee

)))))))

Docket No. 20ll-l628

CERTIFICATE OF SERVICE

I, STEELE N. GILLASPEY, ESQ, Attorney for Defendant-Appellee BALBOAMANUFACTURING CO, dba BOBSTER EYEWEAR, certify that, on February 27, 2012, I servedDefendant-Appellee's Corrected Opposition/Response Briefvia Federal Express Over-Night Deliveryupon:

DATED February 27,2012

Andrew D Manitsky, EsqGRAVEL & SHEA76 St. Paul Street, 7'h FloorBurlington, Vermont 05402

C Tower225 Broadway, Suite 2220San Diego, California 9210 ITelephone 619 234 3700

Documents

Revision Military v. Balboa - Appellee Brief