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2013-1358
THE LEX GROUPDC 1825 K Street, N.W. Suite 103 Washington, D.C. 20006
(202) 955-0001 (800) 856-4419 Fax: (202) 955-0022 www.thelexgroup.com
In The United States Court of Appeals
For The Federal Circuit
HUTZLER MANUFACTURING COMPANY, INC.,
Plaintiff – Appellee,
v.
BRADSHAW INTERNATIONAL, INC.,
Defendant – Appellant.
APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE
SOUTHERN DISTRICT OF NEW YORK IN CASE NO. 11-CV-7211,
JUDGE PAUL G. GARDEPHE
BRIEF OF APPELLANT
Robert J. Kenney
Michael B. MarionBIRCH, STEWART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road, Suite 100E
Falls Church, Virginia 22042
(703) 205-8000
Counsel for Appellant July 12, 2013
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FORM 9. Certificate of Interest
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
____________________________ v. ____________________________
No. _______
CERTIFICATE OF INTEREST
Counsel for the (petitioner) (appellant) (respondent) (appellee) (amicus) (name of party)
_______________________ certifies the following (use “None” if applicable; use extra sheetsif necessary):
1. The full name of every party or amicus represented by me is:
_____________________________________________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by me is:
_____________________________________________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
3. All parent corporations and any publicly held companies that own 10 percent or moreof the stock of the party or amicus curiae represented by me are:
_____________________________________________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
4. The names of all law firms and the partners or associates that appeared for the partyor amicus now represented by me in the trial court or agency or are expected to appear in thiscourt are:
_____________________________________________________________________________
_____________________________________________________________________________
_____________________ _______________________________ Date Signature of counsel
_______________________________ Printed name of counsel
Please Note: All questions must be answered
cc: ___________________________________
Form 9
HUTZLER MANUFACTURING COMPANY, INC., BRADSHAW INTERNATIONAL, INC.,
2013-1358
Bradshaw International, Inc.
Bradshaw International, Inc.
Bradshaw International, Inc.
NONE
Robert J. Kenney, Esq., Birch Stewart Kolasch & Birch, LLP 8110 Gatehouse Rd.
Ste. 100 East, Falls Church, VA 22402
Reset Fields
Turner P. Smith
07 12 2013 s Robert J. Kenney
Robert J. Kenney
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i
TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES ................................................................................... iii
I. STATEMENT OF RELATED CASES ........................................................... 1
II. JURISDICTIONAL STATEMENT ................................................................ 1
III. STATEMENT OF THE ISSUES .................................................................... 2
IV. STATEMENT OF THE CASE ....................................................................... 2
V. STATEMENT OF FACTS .............................................................................. 4
VI. SUMMARY OF THE ARGUMENT .............................................................. 8
VII. STANDARD OF REVIEW ............................................................................. 9
VIII. ARGUMENT ................................................................................................. 10
A. The District Court Interpreted The Scope Of The ’114 Patent
And The ’463 Patent Far Beyond The Drawings Of The Patents ....... 10
1. The District Court Failed To Consider The Prior Art As
Part Of The Ordinary Observer Analysis ................................. 11
2. The District Court Ignored Expressly Claimed
Limitations Recited In The ’114 Patent and the ’463
Patent ......................................................................................... 17
3. The District Court Improperly Included Functional
Elements As Part Of The Scope Of The ’114 Patent And The ’463 Patent ......................................................................... 19
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4. Upon Proper Interpretation Of The ’114 Patent And The
’463 Patent, The Bradshaw Products Cannot Infringe ............. 23
a. The Design Of The ’114 Patent Is Not
Substantially Similar To The Bradshaw Onion
Keeper ............................................................................. 23
b. The Design Of The ’463 Patent Is Not
Substantially Similar To The Bradshaw Garlic
Keeper ............................................................................. 28
B. The District Court Failed to Apply the Polaroid Factors In
Evaluating A Likelihood of Confusion in Relation To Hutzler’s
Unfair Competition Claim ................................................................... 33
C. Hutzler Cannot Protect Under Unfair Competition Law What It
Failed To Patent ................................................................................... 37
D. The District Court Failed To Find Any Facts That Establish
“Bad Faith” Committed by Bradshaw ................................................. 44
1. Mere Awareness Of The Competitor’s Products Fails To
Establish “Bad Faith” On The Part Of The Competitor ........... 45
2. The Facts Presented At The District Court Demonstrate
Bradshaw’s Good Faith In Avoiding Hutzler’s Product
Line ........................................................................................... 46
3. The District Court Ignored Bradshaw’s Reliance On
Opinion Of Counsel In Avoiding Infringement Of The
Hutzler Patents .......................................................................... 48
IX. CONCLUSION .............................................................................................. 49
ADDENDUM
CERTIFICATE OF FILING AND SERVICE
CERTIFICATE OF COMPLIANCE
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TABLE OF AUTHORITIES
Page(s)
CASES
Am. Signature, Inc. v. United States,
598 F.3d 816 (Fed. Cir. 2010) ................................................................... 9, 10
Arrow Fastener Co. v. Stanley Works,
59 F.3d 384 (2d Cir. 1995) ............................................................................ 35
Berry Sterling Corp. v. Prescor Plastics, Inc.,
122 F.3d 1452 (Fed. Cir. 1997) ......................................................... 21, 22, 23
Contessa Food Products, Inc. v. Conagra, Inc.,
282 F.3d 1370 (Fed Cir. 2002) .......................................................... 17, 23, 24
Dippin’ Dots, Inc. v. Frosty Bites Distrib., LLC ,
369 F.3d 1197 (11th Cir. 2004) ..................................................................... 14
Disc Golf Ass’n v. Champion Discs,
158 F.3d 1002 (9th Cir. 1998) ....................................................................... 22
Eden Toys, Inc. v. Marshall Field & Co.,
675 F.2d 498 (2d Cir. 1982) .......................................................................... 14
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) ................................................................. 11, 12
Elmer v. ICC Fabricating, Inc.,
67 F.3d 1571 (Fed. Cir. 1995) ....................................................................... 26
FMC Corp. v. Hennessy Indus., Inc.,836 F.2d 521 (Fed. Cir. 1987) ....................................................................... 11
Fun-Damental Too v. Gemmy Indus. Corp.,
111 F.3d 993 (2d Cir. 1997) .......................................................................... 45
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Genesee Brewing Co. v. Stroh Brewing Co.,
124 F.3d 137 (2d Cir. 1997) .................................................................... 34, 36
Girl Scouts v. Bantam Doubleday Dell Publ’g Group, Inc.,
808 F. Supp. 1112 (S.D.N.Y. 1992) .............................................................. 34
Gorham Co. v. White,
81 U.S. 511 (1872)............................................................................. 11, 19, 28
Government of Canal Zone v. Burjan,
596 F.2d 690 (5th Cir. 1979) ......................................................................... 13
Hardy v Johns-Manville Sales Corp.,
681 F.2d 334 (5th Cir. 1982) ......................................................................... 14
Haye v United States,
461 F. Supp. 1168 (C.D. Cal. 1978) .............................................................. 14
Hosly Intern. Trading Corp. v. K Mart Corp.,
237 F. Supp. 2d 907 (N.D.Ill. 2002) .............................................................. 17
In re Bose Corp.,
476 F.3d 1331 (Fed. Cir. 2007) ..................................................................... 38
In re Glavas,
230 F.2d 447, 109 USPQ 50 (CCPA 1956)................................................... 13
In re Japikse,
181 F.2d 1019, 86 USPQ 70 (CCPA 1950)................................................... 15
In re Mann,
861 F.2d 1581 (Fed. Cir. 1988) ....................................................................... 8
KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc.,997 F.2d 1444 (Fed. Cir. 1993) ..................................................................... 17
Lee v. Dayton-Hudson Corp.,
838 F.2d 1186 (Fed. Cir. 1988) ..................................................................... 19
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Lopez v. Gap, Inc.,
No. 11-3185, 2012 U.S. Dist. LEXIS 108602 (S.D.N.Y. Aug. 2, 2012) ...... 34
Lorillard Tobacco Co. v. Jamelis Grocery, Inc.,
378 F. Supp. 2d 448 (S.D.N.Y. 2005) ........................................................... 34
Louis Vuitton Malletier v. Dooney & Bourke, Inc.,
340 F. Supp. 2d 415 (S.D.N.Y. 2004) ........................................................... 35
Marcyan v. Nissen Corp.,
578 F. Supp. 485 (N.D. Ind. 1982), aff’d ,
725 F.2d 687 (7th Cir. 1983) ......................................................................... 14
Natural Organics, Inc. v. Nutraceutical Corp.,
426 F.3d 576 (2d Cir. 2005) .......................................................................... 36
New Kayak Pool Corp. v. R&P Pools, Inc.,
246 F.3d 183 (2d Cir. 2001) .......................................................................... 36
New York City Triathlon, LLC v. NYC Triathlon Club, Inc.,
704 F. Supp. 2d 305 (S.D.N.Y. 2010) ........................................................... 34
OddzOn Prods. v. Just Toys,
122 F.3d 1396 (Fed. Cir. 1997) ............................................................... 21, 22
Polaroid Corp. v. Polarad Elecs. Corp.,
287 F.2d 492 (2d Cir. 1961) ................................................................... passim
Qingdao Taifa Group Co. v. United States,
581 F.3d 1375 (Fed. Cir. 2009) ....................................................................... 9
Richardson v. Stanley Works, Inc.,
597 F.3d 1288 (Fed. Cir. 2010) ............................................................... 10, 17
Streetwise Maps v. VanDam, Inc.,
159 F.3d 739 (2d Cir. 1998) .......................................................................... 45
Thompson Med. Co. v. Pfizer Inc.,
753 F.2d 208 (2d Cir. 1985) .......................................................................... 35
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Titan Tire Corp. v. Case New Holland, Inc.,
566 F.3d 1372 (Fed. Cir. 2009) ................................................................. 9, 10
TrafFix Devices v. Marketing Displays,
532 U.S. 23, 121 S. Ct. 1255, 149 L. Ed. 2d 164 (2001) .............................. 38
W.W.W. Pharmaceutical Co. v. Gillette Co.,
984 F.2d 567 (2d Cir. 1993) .......................................................................... 48
Wing Shing Prods. (BVI) Co. v. Sunbeam Prods.,
665 F. Supp. 2d 357 (S.D.N.Y. 2009) ........................................................... 12
Winter v. NRDC, Inc.,
555 U.S. 7, 129 S. Ct. 365, 172 L. Ed. 2d 249 (2008) .................................. 10
STATUTES
28 U.S.C. § 1292(a)(1) ............................................................................................... 2
28 U.S.C. § 1292(c)(1) ............................................................................................... 2
28 U.S.C. § 1295(a)(1) ............................................................................................... 2
28 U.S.C. § 1331 ........................................................................................................ 1
28 U.S.C. § 1338 ........................................................................................................ 1
28 U.S.C. § 1367 ........................................................................................................ 1
35 U.S.C. § 102(b) ................................................................................................... 13
35 U.S.C. § 271(a) ..................................................................................................... 3
35 U.S.C. § 271(b) ..................................................................................................... 3
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RULES
Fed. R. Evid. 201(b) ........................................................................................... 13, 14
Fed. R. Evid. 201(c)(2) ............................................................................................ 14
Fed. R. Evid. 201(d) ................................................................................................. 13
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I. STATEMENT OF RELATED CASES
No other appeal in or from the same civil action or proceeding in the lower
court or body was previously before this or any other appellate court under the
same or similar title.
No other case known to counsel is pending in this or any other court that will
directly affect or be directly affected by this Court’s decision in the pending
appeal.
II. JURISDICTIONAL STATEMENT
This is an appeal from the granting of a preliminary injunction by the United
States District Court for the Southern District of New York on the infringement of
two design patents and an unfair competition cause of action. The district court
has jurisdiction under 28 U.S.C. §§ 1331, 1338, and 1367.
The district court issued its order on the preliminary injunction on July 25,
2012. (JA10) A motion for reconsideration of the entry of the preliminary
injunction was timely filed and denied on March 27, 2013. (JA404) The district
court entered an order dated March 28, 2013, entering the terms of the preliminary
injunction and terminating the motion. (JA1) Appellant Bradshaw International,
Inc. timely filed an appeal on April 26, 2013. (JA708)
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This appeal is from an order granting a motion for preliminary injunction,
which is appealable. 28 U.S.C. § 1292(a)(1). The Federal Circuit has jurisdiction in
the appeal under 28 U.S.C. § 1295(a)(1) and 28 U.S.C. § 1292(c)(1).
III. STATEMENT OF THE ISSUES
A. The District Court erred in granting the Motion for Preliminary
Injunction
1. Whether the District Court erred as a matter of law in granting the
Motion for Preliminary Injunction, concluding that the Plaintiff
was likely to succeed on the merits in that its interpretation of the
scope of the claim protection for the patents in issue improperlyincluded several functional elements, failed to take into
consideration the prior art and excluded consideration of expressly
claimed elements.
2. Whether the District Court erred as a matter of law in failing to
apply the proper factors in concluding Plaintiff was likely to
succeed on the merits of its unfair competition claim.
3. Whether the District Court also erred as a matter of fact in
concluding there was unfair competition by Defendants’ sale of
items not subject to any patent protection of Plaintiff.
B. The District Court erred as a matter of fact in finding and concluding
that the Defendant acted in bad faith.
IV. STATEMENT OF THE CASE
Appellant Bradshaw International, Inc. (Bradshaw) appeals the entry of a
preliminary injunction enjoining its making, using, offering for sale, selling,
importing, or distributing of its onion-shaped onion storage containers called
Onion Keepers and its garlic-shaped garlic storage containers called Garlic
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Keepers. Bradshaw also appeals the entry of a preliminary injunction enjoining
“marketing, selling, advertising or promoting the Bradshaw Onion Keeper or the
Bradshaw Garlic Keeper, or any other container that embodies the designs claimed
in U.S. Patent No. D538,114 or U.S. Patent No. D592,463, or any container that is
likely to be confused with the Hutzler Onion Saver or the Hutzler Garlic Saver.”
Hutzler Manufacturing Company, Inc. (Hutzler) is the owner of two U.S.
design patents at issue in this matter. On March 13, 2007, the United States Patent
and Trademark Office issued Hutzler U.S. Patent No. D538, 114 (the “’114
Patent”), a design patent covering the “ornamental design for an onion container.”
(JA52) On May 19, 2009, the Patent and Trademark Office issued Hutzler U.S.
Patent No. D592,463 (the “’463 Patent”), a design patent protecting the
“ornamental design for a container” designed to hold garlic. (JA54)
On October 13, 2011, Hutzler filed a complaint alleging infringement of
both the ’114 Patent and the ’463 Patent in violation of 35 U.S.C. §§ 271(a) and
(b), as well as tortious interference with business and unfair competition under
New York law. (JA59)
On October 20, 2011, Hutzler moved for a preliminary injunction enjoining
Bradshaw from: (1) infringing, or inducing infringement of, Hutzler’s patents; and
(2) unfairly competing with Hutzler’s line of produce containers. (JA83) The
district court entered a preliminary injunction against Bradshaw on July 25, 2012
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(JA10), and denied Bradshaw’s motion for reconsideration on March 27, 2013
(JA1)
V. STATEMENT OF FACTS
Hutzler Manufacturing Company, Inc. is the owner of two U.S. design
patents at issue in this matter. On March 13, 2007, the United States Patent and
Trademark Office issued Hutzler U.S. Patent No. D538, 114 (the “’114 Patent”), a
design patent covering the “ornamental design for an onion container.” (JA52) The
overall appearance of the design of the ’114 Patent shows similar characteristics
and appearance as a real onion bulb. (JA52-53) Hutzler makes the accusation that
the Bradshaw Onion Keeper product infringes the ’114 Patent. (JA 68; JA244)
Figure 1, ’114 Patent Sample Red Onion Bradshaw Onion Keeper
On May 19, 2009, the Patent and Trademark Office issued Hutzler U.S.
Patent No. D592,463 (the “’463 Patent”), a design patent protecting the
“ornamental design for a container” designed to hold garlic. (JA54) Similar to its
’114 Patent, the overall appearance of the design of the ’463 Patent shows similar
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characteristics and appearance as a real garlic bulb. ( Id .) Hutzler makes the
accusation that the Bradshaw Garlic Keeper product infringes the ’114 Patent. (JA
69; JA250)
Figure 1, ’463 Patent Sample Garlic Bulb Bradshaw Garlic Keeper
Moreover, Hutzler and Bradshaw both sell full product lines of produce-
shaped produce containers. Hutzler’s product line is called Food Savers, while
Bradshaw’s product line is called Food Keepers, with sample products illustrated
below:
Sample Hutzler Food Savers
Bradshaw Keeper Products
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(JA427-429) As far as the creation of the Bradshaw line of Keeper products,
in October 2009, as Bradshaw was preparing for the annual International
Housewares Association (“IHA”) tradeshow in Chicago, its head of product
development, Tom Barber, gave to Jeff Boutthavon, one of Bradshaw’s designers,
some documents, including rough sketches and catalog and magazine clippings,
and stated that he wanted to talk that same day because he wanted Bradshaw to
have food keeper type products to exhibit at the IHA tradeshow in March 2010.
(JA493 ¶ 6; JA509-510) The clippings showed onion, garlic, pepper, tomato, and
lemon containers. (JA493 ¶ 7) None of the clippings were from Hutzler catalogs or
advertisements or showed Hutzler products. In fact, some of the clippings were of
Bradshaw’s own ProFreshionals® brand. ( Id .)
From these drawings and clippings, Jeff Boutthavon rendered a proto-type on
the computer. However, Tom Barber was not satisfied with the design and decided
to turn the project over to an outside design firm named A2. ( Id . at ¶ 8)
Bradshaw provided A2, a successful New York-based design firm, with a
box of samples that Tom Barber and his designers had purchased. ( Id . at ¶ 9) No
inventory of that box remains, but Tom Barber recalls it contained ceramic and
plastic decorative fruit and vegetable pieces, small storage containers,
Tupperware® food containers and a Hutzler food saver. ( Id .)
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The sketches originally produced by Tom Barber and conveyed to A2 were
pencil drawings which focused on Bradshaw’s desire to produce items which were
stylish and contemporary rather than natural-looking. ( Id. at ¶ 10) While Hutzler
has alleged that Bradshaw copied Hutzler’s food saver items, quite the opposite is
true. Tom Barber wanted items that did not look like the Hutzler items because he
believed the Hutzler food savers looked like “bad versions of the real thing; like a
toy.” ( Id .) In fact, on February 17, 2010, Tom Barber and Lou Henry, the designer
at A2, discussed making the Bradshaw items “contemporary,” and different from
the items in the market, which Tom felt had “no style.” ( Id .) Their goal was to
design keepers which the viewer saw as stylish, as if they had come from the chic
Italian design house, Alessi. ( Id .) That concept is memorialized in Tom Barber’s
email to Lou Henry of that same date. (JA522)
Based on the sketches and at Bradshaw’s direction, A2 created a design that
not only follows the sketches and captures the desired stylish and contemporary
theme, but is also a product which could be manufactured economically given the
operational constraints of injection molding. (JA493 ¶11) Bradshaw did not
provide an item to a designer or manufacturer and request it to copy that item.
(JA499) Bradshaw employs six (6) in-house designers and also works with outside
design firms such as A2, on which it relies to develop original product ideas and
designs. ( Id .)
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Bradshaw, upon receiving the initial cease and desist letter from Hutzler’s
counsel, immediately sought out and received an opinion from its patent counsel,
Mr. Paul Lewis, stating that Onion and Garlic keepers did not infringe Hutzler’s
asserted patents. (JA496-497) That oral opinion was reduced to writing by Mr.
Lewis and provided to Bradshaw. ( Id.) Bradshaw relied on this opinion in having a
good faith belief it was not infringing any Hutzler patents. (JA493)
VI. SUMMARY OF THE ARGUMENT
In complete contravention of the evidence presented and the law of design
patents and unfair competition, the district court found that Hutzler had a
likelihood of success on the merits for its claims of infringing its ’114 Patent and
its ’463 Patent, as well as a likelihood of success on the merits for its unfair
competition claim. (JA36)
If this Court were to sustain the district court’s finding of a likelihood of
success on the merits of Hutzler’s design patent infringement claim, it would
complete in a mere twenty-five years a stunning 180-degree about-face as to the
scope of protection afforded a design patent. In 1988, this Court proclaimed that,
“[d]esign 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). Under the facts of the present case, a finding of a likelihood of
success on the claims of infringement of the ’114 Patent and ’463 Patent by
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Bradshaw’s Onion Keeper and Garlic Keeper, respectively, would mean that
design patents have nearly limitless scope, that functional elements can be claimed
and that expressly claimed features can be ignored. Moreover, if the Court were to
maintain the district court’s finding of a likelihood of success on Hutzler’s unfair
competition claim, the Court would countenance the expansion of patent rights
through trademark rights – and thereby effectively granting monopolies to any first
comer that effectively advertises its products – and moreover would distort both
bodies of law by allowing a party to claim protected rights in the natural shapes of
vegetable produce.
VII. STANDARD OF REVIEW
“The governing standard of review on appeal of a grant or denial of a
preliminary injunction is abuse of discretion.” Am. Signature, Inc. v. United States,
598 F.3d 816, 823 (Fed. Cir. 2010) (citing Titan Tire Corp. v. Case New Holland,
Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009)). “‘An abuse of discretion may be
established under Federal Circuit law by showing that the court made a clear error
of judgment in weighing the relevant factors or exercised its discretion based on an
error of law or clearly erroneous fact finding.’” Id. (quoting Qingdao Taifa Group
Co. v. United States, 581 F.3d 1375, 1379 (Fed. Cir. 2009)).
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VIII. ARGUMENT
In determining whether a preliminary injunction should issue, the Court
must evaluate:
“[a] plaintiff seeking a preliminary injunction must
establish [1] that he is likely to succeed on the merits,
[2] that he is likely to suffer irreparable harm in the
absence of preliminary relief, [3] that the balance of
equities tips in his favor, and [4] that an injunction is in
the public interest.”
Am. Signature, Inc. v. United States, 598 F.3d 816, 823 (Fed. Cir. 2010) (quoting
Winter v. NRDC, Inc., 129 S. Ct. 365, 374, 172 L. Ed. 2d 249 (2008)). From the
four-factor test, the plaintiff must prove a likelihood of success on the merits. The
failure of the plaintiff to prove a likelihood of success is fatal to the plaintiff’s
motion for a preliminary injunction and the remaining factors need not be
evaluated. Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1385 (Fed.
Cir. 2009). The district court’s finding of a likelihood of success on the merits by
Hutzler on its design patent infringement and its unfair competition claims is
predicated upon multiple errors of law and erroneous fact finding.
A. The District Court Interpreted The Scope Of The ’114 Patent And
The ’463 Patent Far Beyond The Drawings Of The Patents
The Court reviews claim construction of a patent (including a design patent)
de novo on appeal. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed.
Cir. 2010). The test for determining infringement of a design patent is the
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“ordinary observer” test, where the court compares the accused device with the
drawings of the patent through the eyes of the ordinary observer. Egyptian
Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 677 (Fed. Cir. 2008). “[D]ifferences
between patented and accused designs are not irrelevant. Courts should take into
account similarities and differences” in determining whether or not consumer
deception could occur. FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 527
(Fed. Cir. 1987). Although the Egyptian Goddess case removed “point of novelty”
as the second prong of the test for design patent infringement, a patentee cannot
protect a design that he did not invent, and cannot claim protection for a design
that is in the prior art.
1. The District Court Failed To Consider The Prior Art As
Part Of The Ordinary Observer Analysis
“The ordinary observer test of Gorham require[s] that the perspective of the
ordinary observer be informed by a comparison of the patented design and the
accused design in light of the prior art.” Egyptian Goddess, Inc. v. Swisa, Inc., 543
F.3d 665, 674 (Fed. Cir. 2008) (emphasis added). In neither the district court’s
opinion granting the preliminary injunction nor the district court’s opinion denying
the motion for reconsideration was there any consideration of the prior art in
determining the scope of the Hutzler patents. (JA10 (citing the Egyptian Goddess
ordinary observer test without consideration that the ordinary observer has
knowledge of the prior art)). The Court must consider the prior art to determine the
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proper scope of the design patent. “The Egyptian Goddess standard is engineered
to avoid the anomalous result where a design that simply embodies a piece of prior
art is found to infringe.” See Wing Shing Prods. (BVI) Co. v. Sunbeam Prods., 665
F. Supp. 2d 357, 361 (S.D.N.Y. 2009). This “anomalous result” is indeed the result
occurring in the present case—Bradshaw is found to be infringing only because it
embodies elements found in the prior art.
The major impetus for the district court’s improper finding of likelihood of
success on the patent infringement claims is that Bradshaw’s products are shaped
like an onion and a garlic bulb. The district court explicitly stated that its finding
that Hutzler had established a likelihood of success on the merits of its patent
infringement claims was premised in large part on its perception that “[t]he patent
designs and Bradshaw’s products have the same shape – that of onion and garlic
bulbs – in the same proportions.” (JA26) The district court was unwilling to
acknowledge that these same shapes – that of an onion and garlic bulbs – are also
the same size and proportions of red onions and elephant garlic bulbs. ( Id .)
Although what it seems like an unnecessary request for common sense and
unnecessary, Bradshaw is compelled to ask that the Court take judicial notice of
the fact that red onions and elephant garlic bulbs of similar size, shape, proportion,
and color have existed at least one year prior to the filing of the ’114 Patent and the
’463 Patent, and thus are prior art to the ’114 Patent and the ’463 Patent.
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The existence of similarly-shaped produce as prior art is the kind of fact the
Court must take notice of. “The court may judicially notice a fact that is not subject
to reasonable dispute because it: (1) is generally known within the trial court’s
territorial jurisdiction; or (2) can be accurately and readily determined from
sources whose accuracy cannot reasonably be questioned.” Federal Rule of
Evidence 201(b). It is proper for the Federal Circuit to take judicial notice of facts
that meet the criteria of F.R.E. 201(b). Federal Rule of Evidence 201(d) provides
that “‘judicial notice may be taken at any stage of the proceeding,’ and the
Advisory Committee’s note to this provision explains that it permits the taking of
judicial notice at any stage, ‘whether in the trial court or on appeal.’” Government
of Canal Zone v. Burjan, 596 F.2d 690, 694 (5th Cir. 1979).
Hutzler cannot dispute that the requirements of judicial notice are met. First,
onions and garlic are available at any grocery store anywhere in the country. Red
onions and elephant garlic bulbs have existed ubiquitously since time immemorial
and in the United States certainly since its founding, thus meeting the requirements
of 35 U.S.C. § 102(b). See In re Glavas, 230 F.2d 447, 450 (CCPA 1956) (“the use
to which an article is to be put has no bearing on its patentability as a design
and . . . if the prior art discloses any article of substantially the same appearance as
that of an applicant, it is immaterial what the use of such article is . . . Accordingly,
so far as anticipation by a single prior art disclosure is concerned, there can be no
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question as to nonanalagous art in design case.”). Second, the size of onions and
garlic blubs can readily ascertained by visiting the produce section of any grocery
store.
In particular, the general shape and qualities of well-known products are the
types of facts that are proper for the Court to take judicial notice of. Examples
include taking judicial notice of characteristics of snowmen, Eden Toys, Inc. v.
Marshall Field & Co., 675 F.2d 498 (2d Cir. 1982), of characteristics of bicycles,
Marcyan v. Nissen Corp., 578 F. Supp. 485 (N.D. Ind. 1982), aff’d , 725 F.2d 687
(7th Cir. 1983), and of characteristics of ice cream colors. Dippin’ Dots, Inc. v
Frosty Bites Distrib., LLC , 369 F.3d 1197 (11th Cir. 2004). These are the kind of
“self-evident” facts the court can take judicial notice of. See Hardy v. Johns-
Manville Sales Corp., 681 F.2d 334 (5th Cir. 1982). Moreover, once the
requirements of F.R.E. 201(b) are met, the Court is required to take notice under
F.R.E. 201(c)(2). See Haye v. United States, 461 F. Supp. 1168 (C.D. Cal. 1978).
The Court must consider the size, shape, color, and proportions of red onions and
elephant garlic bulbs when evaluating the scope of the Hutzler patents.
In addition to the shape of red onions and elephant garlic bulbs, the district
court failed to consider the prior art made of record. Most notably, the district court
found likelihood of success on the merits on infringement of the ’114 Patent based
on three particular features: “The ’114 Patent and Bradshaw’s Onion Keeper
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likewise have (1) vertical striations running the length of the product; (2) striations
that convene in a narrow ‘stem’ at the top; and (3) a horizontal line running across
the middle of the container where the products open.” (JA26)
Remarkably, all three of these elements are found in the exact same piece of
prior art. On the record before the district court was U.S. Patent No. 4,795,033,
titled “Packaging and Storage Container,” filed on July 10, 1987 (the “‘033
Patent”). (J751) The ‘033 Patent disclosed numerous food-shaped containers,
designed to look like the item of produce it was designed to contain. Moreover,
Figures 1-3 show an onion-shaped onion container, with Figure 1 reproduced
below (both in original form and rotated 90 degrees):1
Figure 1, U.S Patent No. 4,795,033
1The orientation of particular features in the prior art are merely arbitrary
descriptors (i.e. “vertical” is not with reference to any particular axis) does not
disqualify the reference as relevant prior art. Cf. In re Japikse, 181 F.2d 1019, 86
USPQ 70 (CCPA 1950).
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The onion-shaped container of the ‘033 Patent depicts striations running the length
of the product from the “top” of the onion to the “bottom” of the onion. The ‘033
Patent depicts striations that convene in a narrow “stem” at the “top” of the onion.
The ‘033 Patent depicts a line running along the circumference of the middle of the
container where the product is made to open. As all three of these elements can be
found in the prior art of record, it was legally insufficient for the district court to
premise a finding of infringement of the ’114 Patent upon elements solely found in
that prior art. The ’114 Patent must be construed much more narrowly than the
handful of generic elements recited by the district court to avoid encroaching onto
the prior art and invalidating the patent.2
2In January 2010, Dennis Crouch, Associate Professor, University of Missouri
School Law and author of the prominent patent law blog PatentlyO.com,
performed a study of 1049 design patent applications that had issued during the
previous twelve months (which is the same timeframe during the pendency of the
‘114 Patent and the ‘463 Patent). His study found that only 1.2% of design patent
applications received a prior art rejection during its pendency before the USPTO.
Moreover, 81.6% of applications never received any rejection during its pendency
before the USPTO. Mr. Crouch’s study corroborates the USPTO’s reported allowance rate of about 90% for design patents. (JA747) The Hutzler patent
applications in this case were also granted without a single prior art rejection.
(JA712) Although Bradshaw does not ask the Court to disregard the presumption
of validity of design patents, the Court must at least see the failure of both the
USPTO and the District Court to consider the scope of a design patent in view of
the prior art.
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2. The District Court Ignored Expressly Claimed Limitations
Recited In The ’114 Patent and the ’463 Patent
The district court, in its Memorandum correctly notes that “[i]t is the
drawings in the patent, not just one feature of the claimed design, that define the
patent design,” (JA 19), quoting KeyStone Retaining Wall Sys., Inc. v. Westrock,
Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993), and, citing Richardson v. Stanley
Works, Inc., 597 F.3d 1288, (Fed. Cir. 2010), and further emphasized “the decisive
importance of drawings in a design patent.” (JA18) Finally, as the Court in
Contessa Food Prods. Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir. 2002) stated:
If features appearing in the figures are not desired to be
claimed, the patentee is permitted to show the features in
broken lines to exclude those features from the claimed
design, and the failure to do so signals inclusion of the
features in the claimed design.
Id. at 1378. Thus, every line and feature depicted in the drawings is an element of
the claimed design, either the surface ornamentation or the product configuration,
and must be considered in construing the scope of the claims and analyzing
infringement. See Hosly Intern. Trading Corp. v. K Mart Corp., 237 F. Supp. 2d
907, 910 (N.D.Ill. 2002). Yet, despite the critical importance of all of the elements
shown in the patent drawings, the district court concluded that:
The claims extend to the overall design of the onion and
garlic containers—including the shape and proportions of
the products and the horizontal line across the middle of
the onion container and two-thirds of the way down the
garlic container.
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(JA24) The district court’s only mention of the relevance of the vertical lines
shown in the drawings of the ’114 patent erroneously references vertical lines
“running the length of the product.” (JA26) The drawings of the ’114 patent show
lines of varying length on the surface of the product, none of which “run the length
of the product.” (JA52)
Moreover, in the district court’s interpretation of the claims of the ’463
garlic patent, there is no mention whatsoever of the surface lines shown in the
drawings. Even if there were, however, and similarly to the ’114 patent above,
none of those lines “run the length of the product,” as they do in the Bradshaw
garlic saver product. (JA252) Moreover, as shown in Figure 8 of the ’463 Patent,
there is a very distinctive design in the center of the garlic container. (JA58)
Specifically, the design includes surface texturing with a picture of what appears to
represent a piece of garlic. ( Id.) In the Bradshaw garlic container, however, there
is surface texturing, but this surface texturing is a series of broken concentric
circles. (JA256) In addition, the bottom of the Bradshaw garlic container has four
(4) holes that are arranged in two (2) opposite pairs. ( Id .) This design and
arrangement of holes provides a very different “look” to the Bradshaw garlic
container than that of the patented design. ( Id.)
No other mention whatsoever is made to the surface lines shown in the
patents, nor to the fact that those lines were considered in any way to be important
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elements of the claims. In fact, the court seems to have “read-out” those surface
lines altogether. In other words, the outside surface appearance of the patented
design, as claimed by the lines shown in the patented drawings, has been wiped-
away by the district court’s interpretation of the drawings/claims, rendering a
patent drawing that is limited solely to the solid lines depicting the shape of the
design in silhouette and the center line. As the Court itself acknowledged in citing
Keystone and Richardson, this is not proper.
3. The District Court Improperly Included FunctionalElements As Part Of The Scope Of The ’114 Patent And
The ’463 Patent
The district court erred by defining the function of the Hutzler designs too
narrowly. As a result, the district court erroneously held the shape of Hutzler’s
products are non-functional. (JA35) The court went to hold that “Hutzler has
established a likelihood of success on the merits of its patent infringement claim.”
(JA36)
“Design patents do not and cannot include claims to the structural or
functional aspects of the article.” Lee v. Dayton-Hudson Corp., 838 F.2d 1186
(Fed. Cir. 1988). A design that “copies the utilitarian or functional features of a
patented design is not an infringement unless the ornamental aspects are also
copied, such that the overall ‘resemblance is such as to deceive.’” Id. at 1189
(quoting Gorham Co. v. White, 81 U.S. 511, 528 (1872)).
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The district considered only the food storage function of the patented
designs. It did not consider the communication function of the designs, i.e.,
conveying to users that which is stored inside the container, which is an equally
important function of the product design.
Admittedly, a sealed container of any shape and size could be used to store
foods in a refrigerator as long as the inside of the container is bigger than the food
to be stored and the outside of the container is smaller than the inside of the
refrigerator. There are a limited number of ways in which the container can
simultaneously store the food and communicate what is contained inside the
container, however. For example, the container can be clear, it can have a label on
which a description can be written, and it can have an external shape that correlates
to the food stored inside.
The idea of a container having an external shape that correlates to the food
stored inside is not the proper subject of design patent protection. The structural
and functional aspects of an embodiment of that idea may be protected by a utility
patent. Only the ornamental features of such a container, whether surface
ornamentation or product configuration, can be protected with a design patent.
The district court correctly identified the factors to consider when discerning
the ornamental from the functional aspects in a design containing both:
whether the protected design represents the best design;
whether alternative designs would adversely affect the
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tail and fins on OddzOn’s design add stability in the
same manner as do the tail and fins found on darts or
rockets. They are no less functional simply because
“tossing balls” can be designed without them.
OddzOn Prods., 122 F.3d at 1406.
Similarly in the present case, having a food storage container shaped like the
food stored in it is not required, but doing so enhances the functionality of the
container by communicating the contents of the container. The shapes in the
patents-in-suit are designed to store food, but they also are designed to talk to
consumers and let them know what is inside. It is this enhanced functionality that
dictates the shape of the containers and enhances their usefulness and functionality
by making it easier to recognize what they contain just as the fins and tail make the
football in Oddzon easier to throw.
Hutlzer itself promotes the utility of the shape of the designs in issue – also a
factor listed in Berry Sterling. (JA440-447) In reference to its onion saver
product, as well as for several others in its food saver line, Hutzler promotes that
the design makes the product “[e]asy to find in the refrigerator,” and the containers
are “[m]ade to look just like an onion, the Onion Saver® will never be lost or
forgotten in the fridge.” (JA433-439) “If a seller advertises the utilitarian
advantages of a particular feature, this constitutes strong evidence of
functionality.” Disc Golf Ass’n v. Champion Discs, 158 F.3d 1002, 1009 (9th Cir.
1998).
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According to the Hutzler marketing materials, its products are easy to find
because they are shaped like an onion or garlic bulb. This sort of product
promotion is the kind of advertising referred to by the Court in Berry Sterling as
tending to prove the design is dictated by function and is not protectable with a
design patent. The district court erred by either not considering these factors, or by
not according them appropriate weight. As a result, the court erred as a matter of
law in construing the claims to cover the general product configuration depicted in
the patented designs. This over-broad claim construction resulted in the court
mistakenly concluding that Hutzler established a substantial likelihood of success
on the merits of its patent infringement claim. Construed properly, Hutzler is
unlikely to prove the Bradshaw designs infringe the patents. Construed improperly
as done so by the district court, Hutzler still is unlikely to be successful on the
merits of its patent infringement claims, because the patents are invalid as obvious
and anticipated by the prior art.
4. Upon Proper Interpretation Of The ’114 Patent And The
’463 Patent, The Bradshaw Products Cannot Infringe
a. The Design Of The ’114 Patent Is Not Substantially
Similar To The Bradshaw Onion Keeper
The ’114 Patent includes 3 figures, which are directed to the ornamental
design of an onion container, as shown and described. (JA53) As stated in
Contessa Food Products, Inc. v. Conagra, Inc., it was held that “the ‘ordinary
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observer’ analysis is not limited to the ornamental features of a subset of the
drawings, but instead must encompass the claimed ornamental features of all
figures of a design patent.” 282 F.3d 1370, 1379 (Fed Cir. 2002).
As can be seen from Figure 1 of the ’114 Patent, the outside circumference
of the onion container is a perfect circle. (JA53) In addition, the onion container
includes a surface texture that looks like the skin of an onion and is solid, not
transparent. ( Id.) This surface texture is uneven and arbitrary, but includes
generally radially extending lines in the top view that converge at a center of the
circular onion container. ( Id .) The center of the onion container also includes a
very narrow top or tip surface. ( Id.)
Conversely, the outside circumference of the Bradshaw onion keeper is not a
perfect circle, but has a scalloped edge in top view. (JA242) In addition, in the
Bradshaw onion keeper, the top view clearly shows that the material is transparent,
not solid as in Figure 1 of the ’114 Patent and does not resemble an onion at all.
( Id .) This provides a very different “look” to the Bradshaw onion keeper, since the
internal surfaces of the onion keeper are visible through the top. The Bradshaw
onion keeper has a smooth surface, except for the twelve (12) very distinctive,
radially extending indentations. ( Id .) Finally, the Bradshaw onion keeper has a
very wide top or tip surface, which, due to the converging of the twelve (12)
indentations, the top or tip surface is circular, but is not a perfect circle, having a
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scalloped edge which mimics the outside circumference of the Bradshaw onion
keeper.
An examination of the side view of the ’114 Patent and the Bradshaw onion
keeper further reveal that the overall appearance of the design of the ’114 Patent
and the Bradshaw onion keeper are not the same. Figure 1 of the ’114 Patent
includes a surface texture that looks like the skin of an onion. (JA53) This surface
texture is uneven and arbitrary. In Figure 2 of the ’114 Patent, the surface texture
includes generally vertically extending lines in the center, and angled lines at the
opposite sides that converge at a top center of the circular onion container. (JA53)
The center of the onion container is very narrow on the top, so that the surface
texture comes to a point. ( Id .) There is also a separation at the vertical midsection
of the onion container. ( Id .) The surface texture above the separation and below the
separation is generally continuous, and the material is clearly solid, not transparent.
( Id .)
The overall appearance of the Bradshaw onion keeper is quite different. As
mentioned above, there is no surface texture that looks like the outside of a real
onion. Of the 12 vertical indentations in the Bradshaw onion keeper, in any side
view, there are only 4-6 that are ever visible. These indentations are very
recognizable when viewing the side of the Bradshaw onion keeper, in stark
distinction to the hundreds of arbitrary lines that appear in Figure 2 of the onion
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container of the ’114 Patent. The Bradshaw onion keeper also has a very thick top,
and the angle of the top from horizontal is not the same as in Figure 2 of the ’114
Patent.
The Bradshaw onion keeper includes a separation point where an ordinary
observer would recognize one of the biggest differences between the design of the
’114 Patent and the Bradshaw onion keeper; namely that the Bradshaw onion
keeper above the separation is transparent, whereas the bottom below the
separation is solid, providing a very different “look” to the Bradshaw onion keeper.
(JA244) The top portion provides a reflection back to the ordinary observer, while
also allowing the rear part of the onion keeper to be seen through the surface of the
front part, providing a two-toned appearance to the Bradshaw onion keeper, which
does not have the appearance of the skin of an onion, as in the design of the ’114
Patent.3
The numerous vertical lines in the design of the ’114 Patent create a
completely different overall appearance to the onion container when compared to
the Bradshaw onion keeper. As the Court stated in Elmer v. ICC Fabricating, Inc.,
67 F.3d 1571 (Fed. Cir. 1995), since vertical lines are included in the drawings,
their effect on the overall appearance must be considered. Id. at 1577. Since the
3The transparent top portions of the Bradshaw products also provide for a visual of
the produce when stored in the container, thereby also potentially changing the
overall appearance of the products to the consumer when in use.
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Bradshaw onion keeper does not include these numerous vertical lines, which
provide the appearance of the skin of an onion, the overall appearance of the
Bradshaw onion keeper is not the same as the overall appearance of the ’114
Patent.
Examining the last drawing of the ’114 Patent, the surface texture in Figure
3 of the ’114 Patent looks like the skin of an onion and the outer circumference is a
perfect circle. In addition, Figure 3 of the ’114 Patent appears to include a
gradually curving surface from the sides to the bottom, until the bottom center
ultimately becomes flat. The sides of the onion container curve downwardly on the
outside (see Figure 2), and then have a more abrupt curve at the bottom, but there
is no clear line of demarcation between the side walls and the bottom wall, as seen
in the partial concentric circles shown surrounding the center of the bottom in
Figure 3 of the ’114 Patent.
Referring to the photograph of the bottom of the Bradshaw onion keeper, the
surface texture is also not present, and the outer circumference is generally
circular, but also has a scalloped edge. In addition, there is a ridge formed at a
spaced location from the center of the onion keeper. This ridge is formed from a
recessed bottom. In addition, there is a narrow portion outside of the ridge, which
is flat, and then gradually curves into the side walls (see Figure 2 of the Bradshaw
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onion keeper). In view of this, the bottom of the Bradshaw onion keeper is very
different from Figure 3 of the ’114 Patent.
Clearly, the overall appearance of the Bradshaw onion keeper is very
different from the entire design of the onion container in Figures 1-3 of the ’114
Patent. Therefore, an ordinary observer would not consider the two designs to be
“substantially the same,” as would be required to meet “ordinary observer” test for
design patent infringement. Gorham, 81 U.S. at 528. Therefore, such an observer
would not be deceived to purchase the Bradshaw onion keeper, supposing it to be
the design of the ’114 Patent.
b. The Design Of The ’463 Patent Is Not Substantially
Similar To The Bradshaw Garlic Keeper
The ’463 Patent includes 8 figures directed to the ornamental design of a
garlic container. (JA55-58)
Beginning with an examination of Figure 2 of the ’463 Patent, while the
garlic container of the ’463 Patent is generally circular in top view, the outside
circumference of the garlic container is not a perfect circle, but rather has a
diameter which changes around the entire circumference in an arbitrary manner.
(JA248) In addition, the garlic container includes a surface texture that is non-
transparent, and looks like the skin of a piece of garlic and includes radially
extending lines that terminate at a spaced location from the center of the garlic
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container. ( Id .) The center of the garlic container also includes a top or tip surface
that is a perfect circle in the top view. ( Id .)
Referring to the top view of the Bradshaw garlic keeper, while it is generally
circular, the outside circumference is not a perfect circle, but has a scalloped edge,
and, most notably, is also symmetric, not arbitrary. ( Id .) In addition, in the
Bradshaw garlic keeper, the top view clearly shows that the material is transparent,
not solid as in Figure 2 of the ’463 Patent. ( Id .) This provides a very different
“look” to the Bradshaw garlic keeper, since the internal surfaces of the garlic
keeper are visible through the top, and do not resemble the skin of a piece of garlic.
The Bradshaw garlic keeper has a smooth surface, except for the eight (8) very
distinctive, radially extending indentations. These indentations extend to and
converge at the tip or top of the Bradshaw garlic keeper, and are not spaced
therefrom as in Figure 2 of the ’463 Patent. Actually, the indentations do not
resemble a piece of garlic at all, as a real piece of garlic is not smooth with radial
indentations as is the Bradshaw garlic keeper. Finally, the Bradshaw garlic keeper
has a top or tip surface, which, due to the converging of the eight (8) indentations
is generally circular, but is not a perfect circle, having a scalloped edge similar to
the outside circumference of the Bradshaw garlic keeper. ( Id .)
Referring to Figures 3-6 of the ’463 Patent the overall appearance of the
design of the ’463 Patent and the Bradshaw garlic keeper are not the same. (JA250)
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The ’463 patent garlic container includes a surface texture that is uneven and
arbitrary; looks like the skin of a piece of garlic, and includes generally vertically
extending lines in the center, and angled lines at the opposite sides that converge
toward the top or tip of the circular garlic container. ( Id .) However, the lines are
spaced substantially from the top or tip of the garlic container. ( Id .) The top or tip
of the garlic container is angled at a very steep angle. ( Id .) Also, the surface texture
above the separation and below the separation is generally continuous, and the
material is clearly solid, not transparent. ( Id .) Finally, there are apertures formed
near the bottom of the garlic container in each of Figures 3-6 of the ’463 Patent.
( Id .)
In the Bradshaw garlic keeper there is no surface texture that looks like the
outside of a real piece of garlic and there are eight (8) vertically extending
indentations in the entire Bradshaw garlic keeper. ( Id .) In any side view, there are
only 3-4 that are ever visible at one time. ( Id .) This is in stark distinction to the
twenty (20) or more arbitrary lines that appear in the side views of the garlic
container of the ’463 Patent. ( Id .) The Bradshaw garlic keeper top or tip does not
include the distinctive angle that is present in the side views of the ’463 Patent, and
the Bradshaw garlic keeper is symmetric. ( Id .) Therefore, it is the same from the
side no matter from which direction it is viewed. ( Id .) The garlic container of the
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’463 Patent, with its arbitrary vertical lines and slanted top are different in each of
the side views (Figures 3-6). ( Id .)
The Bradshaw garlic keeper also includes a separation point where an
ordinary observer would recognize one of the biggest differences between the
design of the ’463 Patent and the Bradshaw garlic keeper. Specifically, the top of
the Bradshaw garlic keeper above the separation is transparent, whereas the bottom
below the separation is solid. ( Id.) This difference of material provides a very
different “look” to the Bradshaw garlic keeper. The top portion provides a
reflection back to the ordinary observer, while also allowing the rear part of the
garlic keeper to be seen through the surface of the front part and also providing for
a view of the produce when it is stored in the container. Also, the dramatic
difference between the top and bottom portions of the Bradshaw garlic keeper
provides a two-toned appearance to the Bradshaw garlic keeper, which does not
have the appearance of the skin of a piece of garlic, as in the design of the ’463
Patent. ( Id .) The same reasoning would apply to the perspective view (Figure 1) of
the ’463 Patent. (JA252)
In Figure 7 of the ’463 Patent, the same visual appearances mentioned above
with regard to the other figures of the ’463 Patent are also present. (JA254)
Specifically, the surface texture in Figure 7 of the ’463 Patent looks like the skin of
a piece of garlic and the outer circumference is random and arbitrary. ( Id .) In
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addition, Figure 7 of the ’463 illustrates that there are five (5) tear drop shaped
holes formed in the bottom of the garlic container. ( Id .) Finally, there is no clear
line of demarcation between the side walls and the bottom wall. ( Id .)
In the Bradshaw garlic keeper, the surface texture is also not present, and the
outer circumference is generally circular, but also has a scalloped edge. ( Id .) In
addition, there is a ridge formed at a spaced location from the center of the garlic
keeper. ( Id .) This ridge is formed from a recessed bottom. ( Id .) In addition, there is
a narrow portion outside of the ridge which is flat, and then gradually curves into
the side walls. ( Id .) Furthermore, there are only four (4) rectangularly shaped holes
in the bottom. ( Id .) These holes are less in number and are also a completely
different shape from the tear drop shaped holes in Figure 7 of the ‘436 Patent. ( Id .)
In addition, the holes are spaced around the center of the Bradshaw garlic keeper,
so that there are two (2) pairs of holes, which if extended would form a cross. ( Id .)
In view of the above differences, the ordinary observer would conclude that the
bottom of the Bradshaw garlic keeper is completely different from Figure 7 of the
’463 Patent.
In Figure 8 of the ’463 Patent, in addition to the five (5) holes mentioned
above with regard to Figure 7, there is a very distinctive design in the center of the
garlic container. (JA256) Specifically, the design includes surface texturing with a
picture of what appears to represent a piece of garlic. ( Id .) In the Bradshaw garlic
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container, however, there is surface texturing, but this surface texturing is a series
of broken concentric circles. ( Id .) In addition, there are the four (4) holes that are
arranged in two (2) opposite pairs. ( Id .) This design and arrangement of holes
provides a very different “look” to the Bradshaw garlic container.
In view of the above, Bradshaw respectfully submits that the overall
appearance of the Bradshaw garlic keeper is very different from the entire design
of the garlic container in Figures 1-8 of the ’463 Patent. Therefore, an ordinary
observer would not consider the two designs to be “substantially the same,” as
would be required to meet “ordinary observer” test for design patent infringement.
Gorham, 81 U.S. at 528. Therefore, such ordinary observer would not be deceived
to purchase the Bradshaw garlic keeper, supposing it to be the design of the ’463
Patent.
B. The District Court Failed to Apply the Polaroid Factors In
Evaluating A Likelihood of Confusion in Relation To Hutzler’s
Unfair Competition Claim
Somewhat incredibly, a district court residing under the regional jurisdiction
of the Court of Appeals for the Second Circuit failed to undertake a likelihood of
confusion analysis under the long-established Polaroid factors, the quintessential
recitation of factors determining likelihood of confusion. Long-established Second
Circuit precedent requires that consideration is paid to every Polaroid factor in
determining a likelihood of confusion, including a recitation why certain factors
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are inapplicable. One of the most important Polaroid factors, the strength of the
mark, was never analyzed by the district court.4
To succeed on an unfair competition claim under New York common law,
the plaintiff must prove “1) a likelihood of confusion; and 2) the defendant’s bad
faith.” New York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d
305, 325 (S.D.N.Y. 2010). Under New York law, “the elements necessary to
prevail on causes of action for trademark infringement and unfair competition . . .
mirror the Lanham Act claims.” Lopez v. Gap, Inc., No. 11-3185, 2012 U.S. Dist.
LEXIS 108602, at *67 (S.D.N.Y. Aug. 2, 2012) (quoting Lorillard Tobacco Co. v.
Jamelis Grocery, Inc., 378 F. Supp. 2d 448, 456 (S.D.N.Y. 2005)). In fact, the
Second Circuit has held that the claim of unfair competition under New York Law
and a Lanham Act claim are the same, except that the state law claim requires the
additional element of bad faith. Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d
137, 149 (2d Cir. 1997) (quoting Girl Scouts v. Bantam Doubleday Dell Publ’g
Group, Inc., 808 F. Supp. 1112, 1131 (S.D.N.Y. 1992)). Likewise, this Court has
explicitly held that under New York law, “[i]n addition, to succeed on the merits of a
common law claim of unfair competition, [a plaintiff] must couple its evidence
supporting liability under the Lanham Act with additional evidence demonstrating
4And as explained in Section C, it was erroneous for the district court to conclude
Hutzler had any protectable interest in the “entirety” of its food container product
line.
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[the defendant’s] bad faith.” Louis Vuitton Malletier v. Dooney & Bourke, Inc., 340 F.
Supp. 2d 415, 436 (S.D.N.Y. 2004) (internal quotations omitted).
The district court failed to consider at all in entering its Order on Preliminary
Injunction the factors recited in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d
492 (2d Cir. 1961) in determining a likelihood of confusion. However, since the
test for likelihood of confusion under New York common law has been adjudicated
to be the same as the test for likelihood of confusion under the Lanham Act, the
test applied must be the same. It was an abuse of discretion by the district court to
fail to consider at all the Polaroid factors in determining whether a likelihood of
confusion exists. The Second Circuit expounded on this point in the context of a
preliminary injunction:
In determining a likelihood of confusion, it has long been
the practice of this Circuit to apply the multi-factor
balancing test articulated by Judge Friendly in Polaroid
Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d
Cir. 1961). See Arrow Fastener Co. v. Stanley Works, 59
F.3d 384, 391 (2d Cir. 1995) (“Under the law of this
Circuit, courts deciding whether a plaintiff has
established likelihood of confusion must consider the
eight [Polaroid ] factors.”). Although we have recognized
that the application of the Polaroid test need not be rigid,
it is nevertheless “incumbent upon the district judge to
engage in a deliberate review of each factor, and, if afactor is inapplicable to a case, to explain why.” Id. at
400; see also Thompson Med. Co. v. Pfizer Inc., 753 F.2d
208, 214 (2d Cir. 1985) (“No single Polaroid factor is
pre-eminent, nor can the presence or absence of one
without analysis of the others, determine the outcome of
an infringement suit.”).
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We review a denial of a preliminary injunction for abuse
of discretion, “which occurs, inter alia, when the district
court applies the wrong legal standard.” Genesee
Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 142 (2d
Cir. 1997). In this case, the district court did not apply
the Polaroid test to the facts before it, or even mention
the test in its opinion. Thus, it cannot be said that the
court engaged in a deliberate review of any, much less
all, of the Polaroid factors as required under the law of
this Circuit.
New Kayak Pool Corp. v. R&P Pools, Inc., 246 F.3d 183, 185 (2d Cir. 2001). The
Second Circuit vacated the district court’s decision and remanded for the district
court to apply the Polaroid factors. These same Polaroid factors are applied in
allegations of unfair competition. See Natural Organics, Inc. v. Nutraceutical
Corp., 426 F.3d 576, 578 (2d Cir. 2005).
The eight Polaroid factors are: 1) the strength of the plaintiff’s mark; 2) the
similarity of plaintiff’s and defendant’s marks; 3) the competitive proximity of the
products; 4) the likelihood that plaintiff will “bridge the gap” and offer a product
like defendant’s; 5) actual confusion between products; 6) good faith on the
defendant’s part; 7) the quality of defendant’s product; and 8) the sophistication of
buyers. The very first one of these factors, the strength of the plaintiff’s rights, was
never analyzed or considered by the district court, and the district court explicitly
acknowledged it never analyzed whether Hutzler had any protectable mark or rights.
(JA6-7) As explained below, Hutzler is asserting rights through unfair competition
law that it simply does not possess, and through proper application of the Polaroid
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factors, the Court must reach a conclusion there is no likelihood of confusion
between the Hutzler product line and the Bradshaw product line. At a minimum it is
reversible error that the district court failed to consider all of the Poloroid factors.
C. Hutzler Cannot Protect Under Unfair Competition Law What It
Failed To Patent
In the present action, Hutzler has brought an allegation of unfair competition
against Bradshaw for unfairly competing with its entire Food Saver Line of
products. (JA70-71) In its memorandum opinion, the Court appears to conclude
that Hutzler has invented food-shaped containers, and therefore is entitled to
protection under unfair competition law. (JA39) However, the established record
before the Court (let alone many additional examples Bradshaw provides)
demonstrates that Hutzler did not invent food-shaped containers. Rather, the
concept of food-shaped containers is already in the public domain and an idea that
any company is free to commercialize and sell.
On only the record before the Court, Bradshaw has provided evidence that,
as a matter of law, the idea of food-shaped containers was invented long before
Hutzler’s application (and commercialization) of its onion-shaped container, let
alone the remainder of its food-shaped product line. One of the references cited by
the Examiner in the ’463 Patent was U.S. Patent No. 4,795,033, titled “Packaging
and Storage Container,” filed on July 10, 1987, (the “’033 Patent”). (JA751) The
’033 Patent disclosed numerous food-shaped containers, designed to look like the
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item of food it was containing. The drawings of the ’033 Patent are particularly
illustrative of this point, and are summarized as follows:
Figures 1 and 2 show an onion-shaped onion container;
Figures 4 and 5 show a cucumber-shaped cucumber container;
Figure 6 shows a lemon/lime-shaped lemon/lime container;
Figure 7 shows a tomato-shaped tomato container; and
Figure 8 shows a lettuce-shaped lettuce container.
Taken collectively, the ’033 Patent discloses an entire line of food-shaped
containers. The ’033 Patent expired on July 10, 2007, thereby entering the public
domain. Therefore anybody is permitted to practice the general idea of making a
line of food-shaped containers. Hutzler cannot monopolize an idea that it did not
come up with and has already been dedicated to the public. “A utility patent ‘is
strong evidence that the features claimed therein are functional’ and further that
‘one who seeks to establish trade dress protection must carry the heavy burden of
showing that the feature is not functional.’” In re Bose Corp., 476 F.3d 1331, 1336
(Fed. Cir. 2007) (quoting TrafFix Devices v. Marketing Displays, 532 U.S. 23, 121
S. Ct. 1255, 149 L. Ed. 2d 164 (2001)). However, Hutzler is not seeking to protect
through trademark rights something it had invented and disclosed in a utility
patent. Rather, Hutzler is seeking to protect through trademark rights what
someone else had invented . There are simply no rights here for Hutzler to claim
protection over, beyond those rights embodied in its own patents.
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To the extent that the Court could even consider Hutzler having some
protectable interest in its entire product line, the district court’s factual
determination is erroneous based on an incomplete factual record. The district
court concluded that “[i]n addition to the onion and garlic containers, Bradshaw
chose to produce containers for lemons, tomatoes and green peppers, thereby
duplicating Hutzler’s entire Food Saver Line.” (JA38) What Hutzler has failed to
disclose is that the Hutzler Food Saver line of products contains many more food-
shaped containers than these five products. In addition to the aforementioned
products, Hutzler’s Food Saver line also includes an apple-shaped container, a
carrot-shaped container, a bunch of grapes-shaped container, a celery-shaped
container, a half head of lettuce-shaped container, a half grapefruit-shaped
container, a lime-shaped container, a red pepper-shaped container, a yellow
pepper-shaped container, and an orange pepper-shaped container.” (JA448-450)
Conversely, the Bradshaw line of Keeper products contains additional products as
well. Bradshaw has introduced asparagus-, cantaloupe-, and banana-shaped
containers, none of which are sold by Hutzler. (JA451-453) It is simply erroneous
to find that Bradshaw has duplicated Hutzler’s entire Food Saver Line.
To the extent there is overlap between the Bradshaw and Hutzler product
lines (and the products disclosed in the ’033 Patent), the logical basis for the
overlap is the existence of a relatively small number of unique fruits and
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vegetables to consumers in American grocery stores. The same problem of a finite
number of choices applies to the district court’s conclusion of alleged copying the
same size and proportions of the Hutzler food-shaped containers. An onion-shaped
onion container must have the same general proportions of onions typically found
in grocery stores. The container must also have a size slightly larger than the
typical larger onions found in the grocery store. An onion-shaped onion container
the size of a golf ball cannot hold an onion and would be pointless to make.
Conversely, an onion-shaped onion container the size and shape of a football
would also be pointless, unnecessarily taking up limited space in the consumer’s
refrigerator. Hutzler’s food-shaped container line of products cannot be afforded
the presumption that there is a “virtually unlimited” number of ways to combine
visual elements where there is a demonstration of such a finite number of ways to
make a food-shaped container resembling the item of food the container is
designed to hold. As such, the Court cannot find a likelihood of confusion on the
basis of the containers having similar size and proportions.
Lastly, the district court’s conclusion that the Hutzler and Bradshaw
products are the same color is erroneous and contrary to the established factual
record. As the district court had noted, the Bradshaw products embody a “two-
tone” appearance, with the top half of the product produced from a translucent
material, while the Hutzler products are of a singular opaque color. (JA35) To the
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extent the district court explained why it would not consider material in its patent
infringement analysis, the district court failed to provide any explanation why it
would not consider material in its likelihood of confusion analysis. Failure to
consider the two-tone appearance of the Bradshaw containers is an abuse of
discretion and must be considered as part of the likelihood of confusion test. ( Id .)
Moreover, when holding the Bradshaw and Hutzler products next to each
other, the products are not the same color. For example, the Hutzler tomato-shaped
container has a different shade of red than either of the two shades of red found on
the Bradshaw tomato-shaped container:
Hutzler Tomato Saver Bradshaw Tomato Keeper
To label both containers as the identical shade of red is erroneous and runs
afoul of the same limited design choices of size and proportion (i.e. why would
anybody produce a blue tomato-shaped container?). The same is true for the entire
product line, the remainder shown below:
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Hutzler Green Pepper Saver Bradshaw Green Pepper Keeper
Hutzler Lemon Saver Bradshaw Lemon Keeper
Comparisons of whole product lines yield the same result, showing
remarkably different approaches to food-shaped storage between the Hutzler line
(which have a realistic appearance similar to the item of produce) against the
Bradshaw line (which could not be mistaken for a real item of produce):
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Sample Hutzler Food Savers
Bradshaw Keeper Products
Ultimately, it is because the Hutzler and Bradshaw products resemble the
actual produce itself that is the source of any similarity between the Hutzler and
Bradshaw products. Only when the real items of produce are inserted into the
visual analysis (for which Hutzler cannot claim protection) does any similarity
between the product lines emerge:
Sample Hutzler Food Savers
Sample Produce
Bradshaw Keeper Products
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As demonstrated, it is not the case that the Hutzler and Bradshaw products
are confusingly similar to each other; rather it is that the Hutzler and Bradshaw
products each resemble produce, and in strikingly different ways. Hutzler (or any
other person) cannot have any intellectual property interest in the items of produce
themselves, and the only finding of a likelihood of confusion with these products is
the confusion with the produce, not with each other’s products.
D. The District Court Failed To Find Any Facts That Establish “Bad
Faith” Committed by Bradshaw
In the District Court’s Order Granting the Preliminary Injunction, in support
of its conclusion that Bradshaw had acted in “bad faith,” the district court made
two findings of fact. First, Bradshaw and Hutzler both make similar product lines.
(JA39) Second, Bradshaw was aware of Hutzler’s products when it was developing
its products. ( Id .) Based on these two facts alone, the District Court makes the
conclusion that Bradshaw acted in bad faith when it created its product line. ( Id .)
There are significant defects with the district court’s analysis. As a general
matter, this incredible use of post hoc ergo propter hoc by the District Court would
permit the conclusion that any second entrant into the field would be found
unfairly competing with the first entrant and would effectively grant the first
entrant a monopoly short of complete (and likely willful) ignorance by the second
entrant. Specific to this case, however, the evidence presented by Bradshaw
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demonstrates careful avoidance of Hutzler’s product line when it was creating its
product line.
1. Mere Awareness Of The Competitor’s Products Fails To
Establish “Bad Faith” On The Part Of The Competitor
The District Court cites no law to support the proposition that mere
awareness of the Huztler’s products results in a finding of “bad faith” on the part of
the defendant. This is almost certainly due to the Second Circuit unequivocally
finding that mere copying is insufficient to support a finding of bad faith. Even if
Bradshaw’s actions could be construed as “copying,” which flies in the face of the
facts, “in the absence of evidence, apart from proof of copying, that the defendant
sought to confuse consumers, bad faith should not be inferred simply from the fact
of copying.” Fun-Damental Too v. Gemmy Indus. Corp., 111 F.3d 993, 1005 (2d
Cir. 1997) accord Streetwise Maps v. VanDam, Inc., 159 F.3d 739, 745 (2d Cir.
1998) (stating “the intent to compete by imitating the successful features of
another’s product is vastly different from the intent to deceive purchasers as to the
source of the product”). Whatever “copying” Hutzler insists occurred by Bradshaw
when designing its keeper products, it is legally insufficient to support a finding of
any bad faith on Bradshaw’s part.5
5The District Court also completely ignored that over two years elapsed between
Bradshaw becoming aware of the Hutzler products and when Bradshaw brought an
independently developed design to market. (JA492, ¶¶ 4, 6)
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2. The Facts Presented At The District Court Demonstrate
Bradshaw’s Good Faith In Avoiding Hutzler’s Product Line
In October 2009, as Bradshaw was preparing for the annual International
Housewares Association (“IHA”) tradeshow in Chicago, its head of product
development, Tom Barber gave to Jeff Boutthavon, one of Bradshaw’s designers,
some documents, including rough sketches and catalog and magazine clippings,
and stated that he wanted to talk that same day because he wanted Bradshaw to
have food keeper type products to exhibit at the IHA tradeshow in March 2010.
(JA493 ¶ 6) The clippings showed onion, garlic, pepper, tomato and lemon
containers. ( Id . at ¶ 7) None of the clippings were from Hutzler catalogs or
advertisements or showed Hutzler products. In fact, some of the clippings were of
Bradshaw’s own ProFreshionals® brand. ( Id .)
From these drawings and clippings, Jeff Boutthavon rendered a proto-type on
the computer. However, Tom Barber was not satisfied with the design and decided
to turn the project over to an outside design firm named A2. ( Id . at ¶ 8)
Bradshaw provided A2, a successful New York-based design firm, with a
box of samples that Tom Barber and his designers had purchased. ( Id . at ¶ 9) No
inventory of that box remains, but Tom Barber recalls it contained ceramic and
plastic decorative fruit and vegetable pieces, small storage containers,
Tupperware® food containers and a Hutzler food saver. ( Id .)
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The sketches originally produced by Tom Barber and conveyed to A2 were
pencil drawings which focused on Bradshaw’s desire to produce items which were
stylish and contemporary rather than natural-looking. ( Id. at ¶ 10) While Hutzler
has alleged that Bradshaw copied Hutzler’s food saver items, quite the opposite is
true. Tom Barber wanted items that did not look like the Hutzler items because he
believed the Hutzler food savers looked like “bad versions of the real thing; like a
toy.” ( Id .) In fact, on February 17, 2010, Tom Barber and Lou Henry, the designer
at A2, discussed making the Bradshaw items “contemporary,” and different from
the items in the market, which Tom felt had “no style.” ( Id .) Their goal was to
design keepers which the viewer saw as stylish, as if they had come from the chic
Italian design house, Alessi. ( Id .) That concept is memorialized in Tom Barber’s
email to Lou Henry of that same date. (JA522)
Based on the sketches and at Bradshaw’s direction, A2 created a design that
not only follows the sketches and captures the desired stylish and contemporary
theme, but is also a product which could be manufactured economically given the
operational constraints of injection molding. (JA493 ¶ 11)
As noted above, when designing the Bradshaw food keeper products, in
addition to having been provided samples of food related items, including food
savers, and instructions to create a stylish, contemporary product, A2 was aware of
items then being sold; but Bradshaw did not, and never would, provide an item to a
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designer or manufacturer and request it to copy that item. ( Id . at ¶ 30) Bradshaw
employs six (6) in-house designers and also works with outside design firms such
as A2. It certainly would not need such substantial design assistance if its practice
was to simply copy existing items. ( Id . at ¶ 30)
The facts presented before the district court show that Bradshaw was diligent
in pursuing its own designs for food-shaped food containers and were specifically
avoiding the Hutzler designs for its own line of products.
3. The District Court Ignored Bradshaw’s Reliance On OpinionOf Counsel In Avoiding Infringement Of The Hutzler Patents
Bradshaw also provided in detail the circumstances of its reliance on a legal
opinion of counsel to insulate itself from any allegation of impropriety. (JA473)
Bradshaw’s reliance on opinion of counsel defeats the allegation of bad faith. See
W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 575 (2d Cir. 1993)
(finding of “good faith” where defendant relies on advice of counsel).
The district court’s failure to consider Bradshaw’s reliance on opinion of
counsel ignores the fact that Bradshaw, upon receiving the initial cease and desist
letter from Hutzler’s counsel, immediately sought out and received an opinion
from its patent counsel, Mr. Paul Lewis, stating that Onion and Garlic keepers did
not infringe Hutzler’s asserted patents. (JA496-497) That oral opinion was later
reduced to writing by Mr. Lewis and provided to Bradshaw. ( Id.) Bradshaw relied
on this opinion and had no reason to simply capitulate to Hutzler’s assertion of
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infringement and stop shipping the products. (JA493) Bradshaw has at all times
acted in good faith and upon the reliance of opinion of counsel.
Therefore, the entirety of the record before the district court shows that
Bradshaw has acted in good faith in the creation of its food-shaped food
containers.
IX. CONCLUSION
For all of the above reasons, the Court must find that the District Court
abused its discretion in granting Hutzler’s motion for a preliminary injunction. The
district court erred as a matter of law concluding that the Plaintiff was likely to
succeed on the merits in that its interpretation of the scope of the claim protection
for the patents in issue by improperly including functional elements, failing to take
into consideration the prior art and excluding consideration of expressly claimed
elements. The District Court also erred as a matter of law in failing to apply the
proper factors in concluding Plaintiff was likely to succeed on the merits of its
unfair competition claim. And the District Court also erred as a matter of fact in
concluding there was unfair competition by Defendants’ sale of items not subject
to any patent protection of Plaintiff. Lastly, the District Court erred as a matter of
fact in finding and concluding that the Defendant acted in bad faith.
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Dated: July 12, 2013 Respectfully submitted,
BIRCH, STEWART, KOLASCH &
BIRCH, LLP
/s/ Robert J. Kenney
Robert J. Kenney
Michael B. Marion
BIRCH, STEWART, KOLASCH &
BIRCH, LLP
8110 Gatehouse Road, Suite 100E
Falls Church, VA 22042
Phone: (703) 205-8000
Fax: (703) 205-8050
ATTORNEYS FOR DEFENDANT
BRADSHAW INTERNATIONAL, INC.
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ADDENDUM
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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
,--_.... -_ ..USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC#: l-DATE FILE-D:l- l.f'/t Z.
HUTZLER MANUFACTURING
COMPANY, INC.,
MEMORANDUM
Plaintiff, OPINION & ORDER
- against 11 Civ. 7211 (PGG)
BRADSHAW INTERNTIONAL, INC.,
Defendant.
PAUL G. GARDEPHE, U.S.DJ. :
Plaintiff Hutzler Manufacturing Company, Inc. ("Hutzler") has moved for a
preliminary injunction against Defendant Bradshaw International, Inc. ("Bradshaw"), alleging
that Bradshaw infringed Hutzler's design patents for garlic and onion storage containers. For the
reasons set forth below, Hutzler's motion will be GRANTED.
BACKGROUND
Plaintiff Hutzler is the manufacturer of a line ofplastic housewares products
called the "Food Saver Line," which is used for storing and preserving various types ofproduce.
(Cmplt. 9) Hutzler owns U.S. patents for two products in the Food Saver Line - the "Onion
Saver" and the "Garlic Saver" - which resemble the type of produce they are intended to store.
(lQJ On March 13,2007, the United States Patent and Trademark Office issued Hutzler U.S.
Patent No. D538, 114 (the '" 114 Patent"), a design patent covering the "ornamental design for an
onion container." iliL 11) On May 19,2009, the Patent and Trademark Office issued Hutzler
U.S. Patent No. D592,463 (the "'463 Patent"), a design patent protecting the "ornamental design
for a container" designed to hold garlic. (Id. 13)
Case 1:11-cv-07211-PGG Document 24 Filed 07/25/12 Page 1 of 35
- 1 -
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Hutzler alleges that Defendant Bradshaw "misappropriated the design patents for
the Onion Saver and the Garlic Saver," and has sold, and currently is offering for sale, products
that infringe the' 114 Patent and the'463 Patent. (Id. 18-19)
Hutzler introduced its Food Saver Line in 2005, and sales have grown steadily
since that time. These products now account for 63 percent ofHutzler's sales. (ld. 9-10, 30)
Since Bradshaw introduced its competing products in 2011, however, Hutzler's sales have
declined by 21 percent. (ld. 31)
On October 13,2011, Hutzler filed a complaint alleging infringement of both the
'114 Patent and the '463 Patent in violation of 35 U.S.C. §§ 271(a) and (b), as well as tortious
interference with business and unfair competition under New York law. (Dkt. No.1)
On October 20, 2011, Hutzler moved for a preliminary injunction enjoining
Bradshaw from: (1) infringing, or inducing infringement of, Hutzler's patents; and (2) unfairly
competing with Hutzler's line of produce containers. (Dkt. No.4) Bradshaw argues that
Hutzler's motion should be denied because it has not demonstrated (1) a likelihood of success on
either its patent infringement or unfair competition claims, or (2) that it will suffer irreparable
harm in the absence of an injunction. (Def. Opp. Br. 1) The Court held a hearing on Hutzler's
application on January 19,2012.
DISCUSSION
I. PRELIMINARY INJUNCTION STANDARD
"The factors the trial court considers when determining whether to grant a
preliminary injunction are oflongstanding and universal applicability," Titan Tire Corp. v. Case
New Holland. Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009), and may be summarized as follows:
First . . . a court may issue a preliminary injunction . . . only if the plaintiff has
demonstrated "either (a) a likelihood of success on the merits or (b) sufficiently
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serious questions going to the merits to make them a fair ground for litigation and
a balance of hardships tipping decidedly in the [plaintiff]'s favor." Second, the
court may issue the injunction only if the plaintiff has demonstrated "that he is
likely to suffer irreparable injury in the absence of an injunction." The court must
not adopt a "categorical" or "general" rule or presume that the plaintiff will suffer
irreparable harm (unless such a "departure from the long tradition of equitypractice" was intended by Congress). Instead, the court must actually consider
the injury the plaintiff will suffer ifhe or she loses on the preliminary injunction
but ultimately prevails on the merits, paying particular attention to whether the
"remedies available at law, such as monetary damages, are inadequate to
compensate for that injury." Third, a court must consider the balance of hardships
between the plaintiff and defendant and issue the injunction only if the balance of
hardships tips in the plaintiff's favor. Finally, the court must ensure that the
"public interest would not be disserved" by the issuance of a preliminary
injunction.
Salinger v. Colting, 607 F.3d 68, 79-80 (2d Cir. 2010) (internal citations omitted). In the context
of patent litigation, a "patentee's entitlement to [a preliminary] injunction is a matter largely
within the discretion ofthe trial court." Titan Tire, 566 F.3d at 1375 (citing Genentech, Inc. v.
Novo Nordisk, AlS, 108 F.3d 1361, 1364 (Fed. Cir. 1997)).
II. LIKELIHOOD OF SUCCESS
A. Patent Infringement Claim
To establish a likelihood of success on the merits of a patent infringement claim,
"the patentee seeking a preliminary injunction . . . must show that it will likely prove
infringement, and that it will likely withstand challenges, if any, to the validity of the patent."
Titan Tire, 566 F.3d at 1376 (citing Genentech, 108 F 3d at 1364).
1. Patent Validity
a.
Standards and Burdenof
Proof
"[W]hen the question of validity arises at the preliminary injunction stage . . . the
patent enjoys the same presumption of validity . . . as at other stages oflitigation." Titan Tire,
566 F.3d at 1377 (citing Canon Computer Sys., Inc. v. Nu-Kote Int'l, Inc., 134 F.3d 1085, 1088
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(Fed. Cir. 1998)). Where, as here, "the alleged infringer responds to the preliminary injunction
motion by launching an attack on the validity of the patent, the burden is on the challenger to
come forward with evidence of invalidity, just as it would be at triaL" Id. "The patentee, to
avoid a conclusion that it is unable to show a likelihood of success, then has the burden of
responding with contrary evidence, which of course may include analysis and argument." Id.
"Whi le the evidentiary burdens at the preliminary injunction stage track the
burdens at trial, importantly the ultimate question before the trial court is different":
Instead of the alleged infringer having to persuade the trial court that the patent is
invalid, at this stage it is the patentee, the movant, who must persuade the court
that, despite the challenge presented to validity, the patentee nevertheless is likelyto succeed at trial on the validity issue.
Id. at 1377; see also Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1359 (Fed.
Cir. 2001) (The party seeking a preliminary injunction "need not establish the validity of a patent
beyond question," but rather must "present a clear case supporting the validity ofthe patent in
suit.") (citing Atlas Powder Co. v. Ireco Chems., 773 F.2d 1230, 1233 (Fed. Cir. 1985); Nutrition
21v. United States, 930 F.2d 867, 871 (Fed. Cir. 1991)) (internal citations omitted).
"If the alleged infringer raises a 'substant ial question' regarding invalidity, Le., asserts an
invalidity defense that the patentee cannot prove ' lacks substantial merit,' the preliminary
injunction should not issue." Entegris, Inc. v. Pall Corp., 490 F.3d 1340, 1351 (Fed. Cir. 2007)
(quoting Genentech, 108 F.3d at 1364); see also Amazon.com, 239 F.3d at 1359 ("In resisting a
preliminary injunction . . . one need not make out a case of actual invalidity. . . . The showing of
a substantial quest ion as to invalidity thus requires less proof than the clear and convincing
showing necessary to establish invalidity itself.")
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h. Nature of a Design Patent
The' 114 and '463 Patents at issue in this litigation are design patents. "A design
patent is directed to the appearance of an article ofmanufacture." L.A. Gear, Inc. v. Thorn
McAn Shoe Co., 988 F.2d 1117,1123 (Fed. Cir. 1993) (citations omitted). Accordingly, a
"design patent, unlike a utility patent, limits protection to the ornamental design of the article."
Richardson v. Stanley Works. Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010) (citing Lee v. Dayton-
Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir.1988)(citing 35 U.S.C. § 171)). "Ifthe patented
design is primarily functional rather than ornamental, the patent is invalid." Id. at 1293-94.
"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." Id. at 1294 (citing L.A. Gear, 988 F.2d at 1123 ("The elements of the
design may indeed serve a utilitarian purpose, but it is the ornamental aspect that is the basis of
the design patent.")).
"An article ofmanufacture necessarily serves a utilitarian purpose, and the design
of a useful article is deemed to be functional, when the appearance ofthe claimed design is
'dictated by ' the use or purpose of the article." L.A. Gear, 988 F.2d at 1123 (citations omitted).
"I f the particular design is essential to the use ofthe article, it [cannot] be the subject of a design
patent." Id. Stated another way, "[i]fthe design of a particular feature must appear a certain
way, and only that way, in order to perform a particular function, then the feature is functional
and not ornamental ." Etna Prods. Co. v. 0 Mktg. Group, Ltd., No. 03 Civ. 3805(SAS), 2004
U.S. Dist. LEXIS 15323, at *22 (S.D.N.Y. Aug. 4, 2004) (citation omitted), Conversely,
1 Title 35, U.S.C. § 171 provides in pertinent part that "[w]hoever invents any new, original and
ornamental design for an article of manufacture may obtain a patent therefor, subject to the
conditions and requirements ofthis title." 35 U.S.C. § 171.
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'" [w hen there are several ways to achieve the function of an article ofmanufacture, the design
of the article is more likely to serve a primarily ornamental [as opposed to functional] purpose.'"
Rockport Co., Inc. v. Deer Stags, Inc., 65 F. Supp. 2d 189, 194 n.3 (S.D.N.Y. 1999) (quoting
L.A. Gear, 988 F.2d at 1123).
c. Bradshaw's Invalidity Argument
Here, Bradshaw argues that Hutzler's patents are invalid because their
"ornamental feature or design is <merely a by-product' of functional and mechanical
considerations dictating the design. . . . The shape is dictated by the shape of the produce that is
intended to be stored inside." (Def. Opp. Br. 18) Bradshaw maintains that "[i]n order for an
onion container to be an onion container or a garlic container to be a garlic container, it should
have the general size and shape of an onion or a piece of garlic." (Id. at 16) Bradshaw further
argues that in designing the Onion Saver and the Garlic Saver, Hutzler sought "to make the
product immediately convey to the consumer what the item does. . . . [T]hat is the definition of
functional, because it . . . immediately tells the customer something about the product: . . . what
it is used for." (Jan. 19,2012 Tr. 15-16)
The Court concludes that Bradshaw's argument that Hutzler's patented designs
are primarily functional does not "raise[] a 'substantial question' regarding invalidity." Entegris,
Inc., 490 F.3d at 1351. In reaching this conclusion, the Court has considered, inter alia, a variety
of alternative designs demonstrating that produce preservers come in a variety of shapes and
sizes.
The Federal Circuit has noted that "[c ]onsideration of alternative designs . . . IS a
useful tool that may allow a court to conclude that a challenged design is not invalid for
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functionality.,,2 Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir.
1997). At the preliminary injunction hearing, Hutzler produced numerous examples ofproducts
used to store onion and garlic that do not have the same shape or general design as Hutzle r's
patented designs. (See Px 5-8) Bradshaw also submitted photographs of competing products
that do not share the design ofHutzler' s products. (Megorden Aff., Ex. A, A4, AS) Hutzler has
also offered evidence that it considered "numerous alternative designs" in designing its "Food
Saver Line," and found "no evidence that a specific design was best for storing produce."
(Ehrenhaus Decl. 4)
Bradshaw's argument that the shape of Hutzler's products conveys to the
consumer the type of produce that is intended to be stored inside does not demonstrate invalidity
on functionality grounds. Assuming arguendo that Bradshaw's argument is relevant to the
analysis, food storage containers need not be in the shape of the produce that they are designed to
store in order for manufacturers to communicate to consumers the function of these products.
The function of these products may be, and commonly is, communicated through appropriate
labeling. S e e , ~ , Px 7.
In sum, Bradshaw's functionality challenge to the validity ofHutzler's patents is
likely to fail. Hutzler has demonstrated that the design of the Onion Saver and the Garlic Saver
is not "dictated by" the use or purpose of the article, and that onion and garlic may be stored and
preserved in products of myriad shapes and sizes. Because Hutzler has established that there are
numerous ways to store and preserve onions and garlic and thus to achieve the function of the
2 The Court noted that "[0]ther appropriate considerations might include: whether the protected
design represents the best design; whether alternative designs would adversely affect the utility
of the specified article; whether there are any concomitant utility patents; whether the advertising
touts particular features of the design as having a specific utility; and whether there are any
elements in the design or an overall appearance clearly not dictated by function." Berry Sterling
Corp., 122 F.3d at 1456.
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patented designs, "the design of the article[s] is more likely to serve a primarily ornamental [as
opposed to functional] purpose." Rockport, 65 F. Supp. 2d at 194 n.3 (quoting L.A. Gear, 988
F.2d at 1123). Accordingly, Hutzler will likely prevail on the patent validity issue at trial.
2. Infringement
a. Claim Construction
"[D]etermining whether a design patent is infringed is a two-step process. First,
the court must construe the design patent 's claim." Catalina Lighting, Inc. v. Lamps Plus, Inc.,
295 F.3d 1277, 1286 (Fed. Cir. 2002). "In construing a design patent claim, the focus is on
overall appearance and the visual impression it creates." Blumenthal Distrib., Inc. v. Exec.
Chair, Inc., No. CV-10-1280(CBA), 2010 WL 5980151, at *5 (E.D.N.Y. Nov. 9,2010) (citing
OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997); Spotless Enters.,
Inc. v. A & E Prods. Group L.P., 294 F. Supp. 2d 322, 343-44 (E.D.N.Y. 2003», report and
recommendation adopted Qy 2011 WL 839546 (E.D.N.Y. Mar. 3,2011). "'[W]here 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.'" Rockport,
65 F. Supp. 2d at 193 (quoting OddzOn, 122 F.3d at 1405 (citing Lee, 838 F.2d at 1188».
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) makes clear
that, in construing design patents, district courts should generally forego verbal description:
Given the recognized difficulties entailed in trying to describe a design in words,
the preferable course ordinarily will be for a district court not to attempt to
"construe" a design patent claim by providing a detailed verbal description of the
claimed design.
Id. at 679. "[D]esign patents 'typically are claimed as shown in drawings,' and . . . claim
construction 'is adapted accordingly.'" Id. (quoting Arminak & Assocs., Inc. v. Saint-Gobain
Calmar, Inc., 501 F.3d 1314, 1319 (Fed. Cir. 2007». '' '[A]s a rule the illustration in the drawing
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views is its own best description.'" Id. (quoting MANUAL OF PATENT EXAMINING PROCEDURE §
1503.01 (8th ed. 2006)). Accordingly, "[d]istrict courts following Egyptian Goddess have
generally relied on patent drawings to construe design claims." Wing Shing Products (BV!) Co.
Ltd. v. Sunbeam Products, Inc., 665 F.Supp.2d 357,360 (S.D.N.Y. 2009) (collecting cases).
Here, the Court finds that "the claims articulated in each of the design patents at
issue are unambiguous and are clearly illustrated by the figures contained therein." Nike, Inc. v.
Meitac Int'l Enter. Co. Ltd., No. 06-CV-000934(PMP)(PAL), 2006 U.S. Dist. LEXIS 94662, at
*6 (D. Nev. Oct. 10,2006). In accordance with Egyptian Goddess, 543 F.3d at 679, this Court
will not provide a detailed verbal description of the' 114 and '463 Patents and will rely instead
on the illustrations set out in the patents. The Court construes Hutzler's claims as the ornamental
design for an onion container as shown in figures 1 through 3 of the' 114 Patent, and the
ornamental design for a garlic container as shown in figures 1 through 8 ofthe'463 Patent. See,
~ , Wing Shing, 665 F. Supp. 2d at 360 ("[t]his Court . . . construes [plaintiffs] claim as the
ornamental design for a coffeemaker, as shown in figures 1 through 7 of the '585 patent"); HR
U.S. LLC v. Mizco Internat'l, Inc., No. CV-07-2394(DGT)(JO), 2009 WL 890550, at *9
(E.D.N.Y. Mar. 31, 2009) ("a detailed verbal description ofthe '250 patent is unnecessary; it is
appropriate to 're ly upon the illustrations set out in the [patent], as they better represent the
claimed design"') (quoting Arc'teryx Equip., Inc. v. Westcomb Outerwear, Inc., No. 07-cv-
59(TS), 2008 WL 4838141, at *2 (D. Utah Nov. 4, 2008)).
b.Ordinary Observer Test
The second step in determining whether a design patent is infringed requires the
fact-finder to "compare the patented and accused designs to determine whether the accused
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design is substantially similar in appearance to the patented design." Rockport, 65 F. Supp. 2d at
193. In making that determination, courts utilize the "ordinary observer" test:
[I]f, in the eye of an ordinary observer, giving such attention as a purchaser
usually gives, two designs are substantially the same, if the resemblance is such asto deceive such an observer, inducing him to purchase one supposing it to be the
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. 511, 528 (1871)); see
also L.A. Gear, 988 F.2d at 1124 ("Design patent infringement requires a showing that the
accused design is substantially the same as the claimed design. The criterion is deception of the
ordinary observer, such that one design would be confused with the other."); Crocs, Inc. v. In!'l
Trade Comm'n, 598 F.3d 1294, 1303 (Fed. Cir. 2010) (infringement is demonstrated where "an
ordinary observer . . . would be deceived into believing that the accused product is the same as
the patented design") (citing Egyptian Goddess, 543 F.3d at 681).
The "ordinary observer" test is more easily stated than applied. Is the "ordinary
observer" someone encountering the product or products for the first time, or someone who is
generally familiar with products of the sort in question? How should courts determine the
amount of "attention . . . a purchaser usually gives"? In determining whether "two designs are
substantially the same," should courts conduct a side-by-side comparison? How similar must
designs be to support a finding of infringement? What weight should be given to the color, size,
or material used in the products? The Court considers these and other questions below.
(i) Who is the "Ordinary Observer"?
The case law makes clear that the "ordinary observer" is not an expert in the field.
As the Supreme Court said in Gorham, "[e]xperts . . . are not the persons to be deceived."
Gorham, 81 U.S. at 528. The "ordinary observer" is likewise not a patent lawyer "who inspects
the designs critically to highlight each and every perceivable difference between them." Durdin
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v. Kuryakyn Holdings, Inc., 440 F. Supp. 2d 921,933-34 (W.D. Wis. 2006); see also Tappan Co.
v. Gen. Motors Corp., 248 F. Supp. 978, 980 (N.D. Ohio 1965) ("The Supreme Court has said [in
Gorham1that sameness of effect upon the eye is the main test of substantial identity of design,
but it is not essential that the appearance should be the same to the eye of the expert. It is
sufficient if it is the same to the ordinary observer.").
The notional "ordinary observer" is, instead, someone who - while not an expert
in the product - is not entirely ignorant of it, and indeed has some degree of familiarity with it.
The "ordinary observer" thus includes someone who has purchased, or shopped for, a like item
in the past. S e e , ~ , Henry Hanger & Display Fixture Corp. ofAm. v. Sel-O-Rak Corp., 270
F.2d 635, 641 (5th Cir. 1959) ('''[T]he ordinary purchaser of revolving racks, who was
acquainted with the patented design would, upon viewing any of defendants' racks, including the
wrought iron rack, . . . assume that he was viewing an identical or slightly modified version of
the patented design."') (quoting Sel-O-Rak Corp. v. Henry Hanger & Display Fixture Corp. of
Am., 159 F. Supp. 769, 773 (S.D. Fla. 1958)); Applied Arts Corp. v. Grand Rapids Metalcraft
Corp., 67 F.2d 428,430 (6th Cir. 1933) ("[T]he ordinary observer is not any observer, but one
who, with less than the trained faculties of the expert, is 'a purchaser of things of similar design, '
or 'one interested in the subject."'); Graff, Washboume & Dunn v. Webster, 195 F. 522, 524 (2d
Cir. 1912) ("Having seen the complainant's design in a show case or shop window, the ordinary
buyer would be very likely to mistake the defendants' design for it, if seen in a similar
environment. This is the real test of infringement ofdesign patents. If the ordinary buyer,
having seen one of the complainant's dishes and wishing to procure one like it, would be induced
to buy one ofthe defendants' dishes instead, it is enough."); Minka Lighting, Inc. v. Maxim
Lighting Int'l, Inc., No. Civ. A. 3:06-CV-995-K, 2009 WL 691594 (N.D. Tex. Mar. 16,2009)
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("The ordinary observer is therefore a member of the public who is currently shopping for or has
recently purchased lighting fixtures indeed, a 'purchaser of things of similar design. "');
Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 424 F. Supp. 2d 1188, 1196 (C.D. CaL
2006) ("[The ordinary] observer is not a person who has never seen the type of item the patent
describes, 'but one who, though not an expert, has reasonable familiarity with such objects, and
is capable of fonning a reasonable judgment when confronted with a design therefor as to
whether it presents to his eye distinctiveness from or similarity with those which have preceded
it."') (quoting Applied Arts, 67 F.2d at 430).
Accordingly, the "ordinary observer" here is someone who has seen, shopped for,
or purchased food storage items of similar design.
ii. Attention
Under the Gorham test, a court must compare the patented and accused designs
"giving such attention as a purchaser usually gives." Gorham, 81 U.S. at 528.
Gorham makes clear that "such attention as a purchaser usually gives" does not
include the attention that a purchaser would give the products if asked to conduct a "critical
examination" of them, or after being told that there may be differences between them. Id. at 529
30 (detennination whether ordinary purchaser would regard products as substantially the same
does not tum on whether "some diversities in (the product] . . . are discoverable when attention is
called to them," whether differences become apparent "when stimulated by a suspicion that there
may be diversity," or whether differences become apparent when "critical examination" is
brought to bear that would not typically be employed by an ordinary purchaser).
In considering the degree of attention a typical consumer is likely to bring to a
purchase, it is reasonable to assume that consumers will bring greater attention to an expensive
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purchase, and give less attention where the cost is inconsequential. See Braun, Inc. v. Dynamics
Corp. of Am., 975 F.2d 815, 820, 820 n.9 (Fed. Cir. 1992) (relying on trial testimony that
"consumers typically purchase hand held electric [blenders] on an 'impulse' and as a result they
may not differentiate [between] designs," particularly where the products "are relatively
inexpensive"); Cardiac Pacemakers, Inc. v. Coratomic, Inc., 535 F. Supp. 280,286 (D. Minn.
1982) ("The test for design patent infringement is whether an ordinary purchaser would be
induced to purchase a product supposing it to be another. . . . Pacers are expensive and generally
are sold to physicians who specialize in pacer implants. . . . [The accused infringer's] pacers are
sufficiently different from [the patentee's] pacer so that the ordinary consumer would not be
misled.") (emphasis added); Superior Merchandise Co., Inc. v. MGI Wholesale, Inc., Nos. Civ.
A. 98-3174, Civ. A. 99-3492,2000 WL 322779, at *11 (E.D. La. Mar. 27, 2000) ("Whether
undertaking a desperate search to purchase the bodacious bead for its novel appearance, or
encountering the breast bead upon first impression while browsing a bead vendor's wears, the
ordinary purchaser is likely to see, quite simply, a three-dimensional simulation of well-endowed
bare human female breasts. In addition, considering the amount of attention that is likely to be
given during an impulse purchase of the bodacious beads, it must be concluded that the two
designs are substantially the same.").
Given that the products at issue here are inexpensive - ranging in price from
$2.00 to $4.00 (Jan. 19,2012 Tr. 10,26) and thus likely to be purchased on impulse, the Court
concludes that the ordinary purchaser is not likely to give significant attention to the products
when purchasing them.
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iii. "Substantially the Same"
"Design patent infringement requires a showing that the accused design is
substantially the same as the claimed design. The criterion is deception of the ordinary observer,
such that one design would be confused with the other." L.A. Gear, 988 F.2d at 1124; see also
Crocs, 598 F.3d at 1303 (infringement is demonstrated where "an ordinary observer . . . would
be deceived into believing that the accused product is the same as the patented design"). "In
conducting such analysis the patented design is viewed in its entirety, as it is claimed . . . [T]he
ultimate question requires determining whether ' ' 'the effect of the whole design [is] substantially
the same.'" L.A. Gear, 988 F.2d at 1125 (quoting Gorham, 81 U.S. at 530).
(a) Focus on "Overall Visual Appearance"
In determining whether two designs are "substantially the same," courts focus on
the overall impression given by the claimed design, rather than particular ornamental details or
minutiae. S e e , ~ , Crocs, 598 F.3d at 1303 ('" [T]he deception that arises is a result ofthe
similarities in the overall design, not of similarities in ornamental features in isolation.' . . . The
ordinary observer test applies to the patented design in its entirety, as it is claimed.") (quoting
Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2002));
Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002) ("What is
controlling is the appearance of the design as a whole in comparison to the accused product.");
OddzOn, 122 F .3d at 1405 ("[I]t is the appearance of a design as a whole which is controlling in
determining infringement. There can be no infringement based on the similarity of specific
features ifthe overall appearance of the designs are dissimilar. . . ."); Elmer v. ICC Fabricating,
Inc., 67 F.3d 1571,1577 (Fed. Cir. 1995) ("Under Gorham, the focus is on the overall
ornamental appearance of the claimed design, not selected ornamental features.") (emphasis in
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original); Payless Shoesource, Inc. v. Reebok In!'l, Ltd., 998 F.2d 985,991 (Fed. Cir. 1993)
(,"[M]inor differences between a patented design and an accused article's design cannot, and
shall not, prevent a finding of infringement.' Here, the district court's infringement analysis
clearly evidences a focus on a single difference as opposed to the entirety of the patented design.
Thus, the district court erred by failing to 'consider the ornamental aspects of the design as a
whole and not merely isolated portions of the patented design."') (citations omitted); HR U.S.
LLC, 2009 WL 890550, at *12 ("It is improper to focus on specific features that differ between
two designs if such a focus ignores the critical issue of whether the overall designs, as a whole,
are substantially similar.") (citing Amini Innovation, 439 F.3d at 1372); see also Decade Indus.
v. Wood Tech., Inc., 100 F. Supp. 2d 979 (D. Minn. 2000) ("While Wood has tweaked some of
the angles and proportions of the Sanus design and has inserted additional shelves between the
upright legs, these minor changes do not materially alter the substantial visual likeness of the two
designs when they are viewed in their entirety.").
Consistent with this approach, courts give significant attention to the lines and
overall shape ofthe designs at issue. See, Sh&" Crocs, 598 F.3d at 1306 ("One of the overall
effects of the design is the interaction between the strap assembly portion and the base portion of
the shoes where the strap is attached to the base. Multiple major design lines and curves
converge at that point creating a focal point attracting the eye of the ordinary observer when
viewing the overall effect of the design. Another overall effect of the design is a visual theme of
rounded curves and ellipses throughout the design, including the strap forming a sortof
continuation of the sidewall of the base to create a visually continuous ring encircling the entire
shoe."); Richardson, 597 F.3d at 1296 ("[T]he two designs are indeed different. Each of the
Fubar tools has a streamlined visual theme that runs throughout the design including elements
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such as a tapered hammer-head, a streamlined crow-bar, a triangular neck with rounded surfaces,
and a smoothly contoured handle. In a side-by-side comparison with the' 167 patent design, the
overall effect of this streamlined theme makes the Fubar tools significantly different from
Richardson's design. Overall, the accused products clearly have a more rounded appearance and
fewer blunt edges than the patented design."); Braun, 975 F.2d at 820 (finding infringement
despite the "readily noticeable difference" between the patented blender and the accused blender
in that "[Braun's blender] has a handgrip indentation while the latter does not"; noting that "both
Waring's blender and Braun's blender share a fluid, ornamental, aerodynamic overall design.
The shaftsof
both blenders are encased in a housing that gradually tapers away from the motor
housing. The top portion of each blender, when viewed from the front, is tapered at the top to
integrate the handle into the motor housing. The shaft housing of each blender gradually
expands to form a blade housing, which is punctured by four elongated, essentially rectangular
ports"); see also Unique Functional Prods., Inc. v. Mastercraft Boat Co., Inc., 82 F. App'x 683,
689 (Fed. Cir. 2003) ("[T]he Reliable coupler has a rounded nose . . . whereas, as previously
illustrated, the '777 patent requires a boxy and blunt nose. Second, the Reliable coupler's nose
. . . slopes sharply downwardly, rather than having a substantially square or block-shaped face as
required by the '777 patent."); Moore v. Stewart, 600 F. Supp. 655, 664 (D. Ark. 1985) ("In the
court's view the appearances of the Moore and the Stewart whistles are substantially identical
despite the previously noted variations. The Stewart whistle even as modified retains the general
shape, configuration, and dimensions of the Moore design; any differences in appearance, though
discernible upon close examination, are not likely to be quickly perceived by an ordinary
observer paying the degree of attention a purchaser would."); Duncan & Miller Glass Co. v.
Hazel Atlas Glass Co., 47 F. Supp. 192, 195 (D. Va. 1942) ("The outside, or contour, is a very
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important factor in making up the general, or over-all impression to the average purchaser.
Defendant's ash tray has a stem while the design patent has no stem. The stem is ofprime
importance and is one of the first differences to strike the eye of the ordinary observer.")
Accordingly, in considering whether the designs at issue here are "substantially
the same," this Court's focus will be on the overall impression given by the claimed designs,
rather than on particular ornamental details or minutiae.
(b) Propriety of Side-by-Side Comparison
The case law is not entirely consistent as to whether side-by-side comparison of
the patented and allegedly infringing products is appropriate. Some early decisions counseled
against such an approach. See Sanson Hosiery Mills, Inc. v. S.H. Kress & Co., 109 F. Supp.
383,384 (D.N.C. 1952) ("Actual comparison for minute inspection is not a fair test. The
imitation may be on display when the patented article is not present . . . A design patent protects
the general design, the pictured effect on the mind from a general view, rather than details
revealed by a minute test. Therefore, testimony of a comparison test is not exclusive nor
conclusive."); Try-Me Beverage & Compound Co. v. Metropole, 25 F.2d 138, 141 (D.S.C. 1928)
('" It may also be assumed . . . that side by side comparison in court is not a proper test. . . . "' )
(quoting Coca-Cola Co. v. Whistle Co. of Am., 20 F.2d 955, 956 (D. Del. 1927»; Friedberger
Aaron Mfg. Co. v. Chapin, 151 F. 264, 265 (C.C.Pa. 1907) (finding infringement even though it
was "very easy to distinguish between the two designs when brought together"). There is clearly
some tension between the "ordinary observer" test - which does not contemplate an opportunity
to conduct a detailed comparative analysis of the two products at issue and a side-by-side
comparison by the Court.
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The Federal Circuit has, however, regularly engaged in side-by-side comparisons
of patented and accused designs in order to determine whether they are "substantially the same."
S e e , ~ , Richardson, 597 F.3d at 1296 ("In a side-by-side comparison with the' 167 patent
design, the overall effect of this streamlined theme makes the Fubar tools significantly different
from Richardson's design."); Crocs, 598 F.3d at 1304 ("The proper comparison requires a side
by-side view of the drawings ofthe '789 patent design and the accused products."); Arminak &
Assocs., 501 F.3d at 1327 ("Calmar also implies that it was improper for the district court to do a
detailed side-by-side comparison between the patented design and the accused design. Calmar
cites no authority for this contention because there is none. To establish infringement in a design
patent case, the district court is required to compare the patented design with the accused design.
Without comparing the patented design with the accused design, there was no way for the district
court to determine whether an ordinary observer would find the accused design deceptively
similar. . . ."), abrogated on other grounds Qy Egyptian Goddess, 543 F.3d 665.
A long line of cases counsels that, in performing a side-by-side comparison,
courts generally should compare the design set forth in the patent that is, the drawings - with
the accused product, rather than comparing the embodiment of the patented design and the
accused product. See Payless Shoe source, 998 F.2d at 990 ("Proper application of the Gorham
test requires that an accused design be compared to the claimed design, not to a commercial
embodiment.") ; also Richardson, 597 F.3d at 1294 ("We also reject Richardson's argument
that the court did not include drawings from the patent in its claim construction. Richardson
argues that it is the ordinary observer's perception of those drawings that is the controlling
considerat ion under the Supreme Court' s opinion in [Gorham]. We agree with Richardson on
the decisive importance of drawings in a design patent."); Amini Innovation, 439 F.3d at 1370
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71 ("'A design patent protects the non-functional aspects of an ornamental design as seen as a
whole and as shown in the patent . . . It is the drawings in the patent, not just one feature of the
claimed design, that define the patented design. "' ) (quoting KeyStone Retaining Wall Sys., Inc.
v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993)) (emphasis added); Elmer, 67 F.3d at
1578 ("Under Gorham, the focus is on the overall ornamental appearance ofthe claimed design,
not selected ornamental features. The overall ornamental appearance of the '620 design, as
shown in the patent drawings, is too different from ICC's design for an ordinary observer to be
induced into purchasing ICC's product thinking it was HTH's design.") (first emphasis in
original; second emphasis added); Rockport, 65 F. Supp. 2d at 192-93 ("A design patent's claim
is limited to what is shown in the application drawings. . . . The test for infringement does not
compare the commercial embodiments of the two products. Rather, the allegedly infringing
product is compared only to the patented design.").
However, "[w ]hen no significant distinction in design has been shown between
the patent drawing and its physical embodiment, [the Federal Circuit has stated that] it is not
error . . . to compare the embodiment ofthe patented design with the accused devices." Lee, 838
F.2d at 1189; see also L.A. Gear, 988 F.2d at 1125-26 ("[w]hen the patented design and the
design of the article sold by the patentee are substantially the same, it is not error to compare the
patentee's and the accused articles directly . . . ; indeed, such comparison may facilitate
application of the Gorham criterion ofwhether an ordinary purchaser would be deceived into
thinking that one were the other") (citing Lee, 838 F.2d at 1189).
Because the Court concludes that the design of the Hutzler products and their
commercial embodiments are substantially the same, the Court has considered the drawings set
forth in Hutzler's patents as well as the parties' products.
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(c) Degree of Similarity
Necessary to Find Infringement
"[P]atent infringement can be found for a design that is not identical to the
patented design." Braun, 975 F.2d at 820; see also Rockport, 65 F. Supp. 2d at 193 ("The
accused design does not have to be identical to the patented design for infringement to be
found."); HR U.S. LLC, 2009 WL 890550, at *10 ("[t]he patented and accused designs . . . need
not be identical in order for design patent infringement to be found") (citing Egyptian Goddess,
543 F.3d at 678 (explaining that under the ordinary observer test infringement may be found
where the accused article "'embod[ies] the patented design or any colorable imitation thereof"));
Metrokane, Inc. v. Wine Enthusiast, 185 F. Supp. 2d 321,329 (S.D.N.Y. 2002) ("A design need
not be identical to the patented design for infringement to occur."); Nike, 2006 U.S. Dist. LEXIS
94662, at *4 ("In assessing infringement, the patented and accused designs do not have to be
identical in order for design patent infringement to be found."). ''' [M]inor differences between a
patented design and an accused article's design cannot, and shall not, prevent a finding of
infringement.'" Crocs, 598 F.3d at 1303 (quoting Payless Shoesource, 998 F.2d at 991).
In practice, however, the cases in which the Federal Circuit has sustained a
finding of infringement have involved a very high degree of similarity. S e e , ~ , Crocs, 598
F.3d at 1306 ("In one [side-by-side] comparison after another, the shoes appear nearly identical.
If the claimed design and the accused designs were arrayed in matching colors and mixed up
randomly, this court is not confident that an ordinary observer could properly restore them to
their original order without very careful and prolonged effort."); L.A. Gear, 988 F.2d at 1125-26
(affirming district court's holding ofdesign patent infringement where "[t]he district court found
that the designs of four models of [defendant's] accused shoes were' almost a direct copy' of the
'081 design"); 838 F.2d at 1190 ("While we agree with Lee that infringement can be found
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for designs that are not identical to the patented design, such designs must be equivalent in their
ornamental, not functional, aspects. The accused devices must meet the Gorham test of
similarity of ornamental appearance such that an ordinary observer would be likely to purchase
one thinking it was the otheL").
(d) Relevance of Color, Size, and Material
Where - as here the design patent is not limited to a particular size, color, or
construction material, such factors should not be taken into consideration in performing an
infringement analysis. See Lee, 838 F.2d at 1189 ("Lee also points to the court's observation
that the tennis balls used in the physical model of the Lee design were colored, arguing that color
has no role in design patent infringement and that the court may have been improperly
influenced by the color differences of the accused structures. . . . The record does not support
Lee's view that the district cour t's reference to the colored tennis balls means that the court' s
decision turned on the color oifferences. The court is presumed to have applied the law
correctly, absent a clear showing to the contrary."); Herbko In1'l, Inc. v. Gemmy Industries
Corp., 916 F. Supp. 322, 326 (S.D.N.Y. 1996) ("If an ordinary consumer were to be deceived,
the deception would result from shared features of the products that are not protected by the
design patent: (1) features that are not included in Herbko' s patent, such as the color, size and
material (plastic) of the two products. . . ."); Superior Merch., 2000 WL 322779, at *11
("Unclaimed features are irrelevant; color, size and construction material cannot be the basis of
similarity where these features of the commercial embodiment are beyond those described in the
patent claim."); Physio-Control Corp. v. Medical Research Labs., No. 85 C 4973, 1988 WL
5023, at *1 (N.D. Ill. Jan. 15,1988) ("'A determination of the infringement issue is somewhat of
an existential exercise. It is not enough to say that no one would confuse the two designs
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because one is red and the other is green and both have prominently displayed logos. The test is
not palming off; color and designations are not part of the patented design and must be
ignored. "); also Unique Functional Prods., 82 F. App'x at 690 ("[T]he '777 patent is not
limited to any particular size or color. We conclude, therefore, that the court erred by taking
those features into consideration in its infringement analysis. . . . ").
Accordingly, this Court will not consider the size, color, sheen, or construction
material of the products, as these features are not claimed in Hutzler's design patents.
c. Bradshaw's Arguments on Similarity
Bradshaw maintains that "the designs of the' 114 and '463 Patents . . . and the
accused Bradshaw products would not be considered 'substantially the same' to an ordinary
observer." (Def. Opp. Br. 7) With respect to the' 114 Patent, Bradshaw points out that the top
view of the patented design, illustrated in Figure 1, shows that "the outside circumference of
[Hutzler's] onion container is a perfect circle," while the "outside circumference of the Bradshaw
onion keeper is not a perfect circle, but has a scalloped edge in top view." (Id. at 8) Bradshaw
further notes that Hutzler 's "onion container includes a surface texture that looks like the skin of
an onion and is solid, not transparent," while "in the Bradshaw onion keeper, the top view clearly
shows that the material is transparent, not solid . . . and does not resemble an onion at alL" (hlJ
Bradshaw further observes that the surface texture of the Hutzler design is "uneven and arbitrary,
but includes generally radially extending lines in the top view that converge at a center of the
circular onion container" and "includes a very narrow top or tip surface." (Id.) Bradshaw argues
that, in contrast, its product "has a smooth surface, except for the twelve (12) very distinctive,
radially extending indentations" and "has a very wide top or tip surface, which . . . is not a
perfect circle, having a scalloped edge. . . ." (Id.)
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In comparing Figure 2 of the '114 Patent (a side view) with the side view of
Bradshaw's product, Bradshaw notes that while the "surface texture above the separation and
below the separation [of the patented design] is generally continuous, and the material is clearly
solid, not transparent," the "Bradshaw onion keeper above the separation is transparent, whereas
the bottom below the separation is solid." (Id. at 9) Bradshaw argues that this two-toned
appearance provides "a very different 'look' to the Bradshaw onion keeper." (Id.) Bradshaw
further asserts that the
numerous vertical lines in the design of the ' 114 Patent provide a completely
different overall appearance to the onion container when compared to the
Bradshaw onion keeper. . . . Since the Bradshaw onion keeper does not includethese numerous vertical lines, which provide the appearance of the skin of an
onion, the overall appearance of the Bradshaw onion keeper is not the same as the
overall appearance of the' 114 Patent.
(Id. at 9-10)
In comparing Figure 3 of the '114 Patent (a bottom view) with the bottom view of
Bradshaw's onion keeper, Bradshaw notes that "Figure 3 . . . appears to include a gradually
curving surface from the sides to the bottom, until the bottom center ultimately becomes flat. . . .[T]here is no clear line of demarcation between the side walls and the bottom wall. . . ." (Id. at
10) The bottom of Bradshaw's onion keeper has a "ridge formed at a spaced location from the
center of the onion keeper . . . formed from a recessed bottom . . . [and] there is a narrow portion
outside of the ridge, which is flat, and then gradually curves into the side walls." CklJ
Bradshaw makes similar arguments concerning the differences between the'463
Patent and Bradshaw's garlic keeper.3
3 Bradshaw notes, inter alia, that the '463 design has a surface texture that is not transparent and
looks like the skin of a piece of garlic and that the tip of the design is a perfect circle. (Def. Opp.
Bf. 11) By contrast, Bradshaw argues, its garlic container is transparent on the top, its surface
texture does not resemble a piece of garlic, and the tip of its product has a scalloped edge. (Id. at
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d. Analysis
The' 114 Patent claims "[t]he ornamental design for an onion container, as shown
and described," while the '463 Patent claims "[t]he ornamental design for a garlic container, as
shown and described." The claims extend to the overall design of the onion and garlic containers
including the shape and proportions of the products and the horizontal line across the middle of
the onion container and two-thirds of the way down the garlic container.
As noted above, "patent infringement can be found for a design that is not
identical to the patented design." Braun, 975 F.2d at 820; HR U.S. LLC, 2009 WL 890550, at
*10; Metrokane, Inc., 185 F. Supp. 2d at 329; Nike, 2006 U.S. Dist. LEXIS 94662, at *4. "[I]n
the 'ordinary observer' analysis, the patented design is viewed in its entirety, as it is claimed,"
Contessa Food Prods., 282 F.3d at 1378, and "[i]t is improper to focus on specific features that
differ between two designs if such a focus ignores the critical issue ofwhether the overall
designs, as a whole, are substantially similar." HR U.S. LLC, 2009 WL 890550, at *12 (citing
Amini Innovation, 439 F.3d at 1372). "[T]he concentration on small differences in isolation
distract[s] from the overall impression ofthe claimed ornamental features." Crocs, 598 F.3d at
1303-04. "It is the drawings in the patent, not just one feature ofthe claimed design, that define
the patented design." Amini Innovation, 439 F.3d at 1371 (citing KeyStone, 997 F.2d at 1450).
Bradshaw's arguments regarding the differences between the containers focus too
narrowly on the details of their ornamentation, rather than considering the overall look of the
design. The Federal Circuit has made clear that it is error for a trial court to focus on "each
12) Bradshaw maintains that "the dramatic difference between the top and bottom portions of
the Bradshaw garlic keeper provides a two-toned appearance to the Bradshaw garlic keeper,
which does not [- unlike the Hutzler product -] have the appearance of the skin of a piece of
garlic." (Id. at 13)
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[design] element separately instead of analyzing the design as a whole from the perspective of an
ordinary observer." Amini Innovation, 439 F.3d at 1372.
In L.A. Gear, the manufacturer of the accused design pointed out differences
between features of its shoes and the design of the patentee. L.A. Gear, 988 F 2d at 1126.
Despite these differences, the Federal Circuit affirmed the district court's finding "that 'the
placement of all the major design elements is the same, creating the same distinctive overall
look,' and . . . that the four infringing models were confusingly similar to the patented design, as
viewed by the ordinary observer." Id.
Similarly, in Rockport, the Court noted that there were differences between the
patented shoe design and the accused product: "First, the mud guard of the [accused product] is
broken into several parts instead ofthe . . . patent's one-piece mud guard. . . . The second
difference is that the [accused shoe] does not have the double layer of shoe extending from the
bottom of the eye stay to between the second and third eyelets." Rockport, 65 F. Supp. 2d at 195.
Nevertheless, the court found infringement, noting that '''[u]nder Gorham, the focus is on the
overall ornamental appearance of the claimed design, not selected ornamental features. '" Id.
(quoting Elmer, 67 F.3d at 1577).
Here, while the Court acknowledges that there are differences between the
patented designs and Bradshaw's products, "[a] visual comparison of the . . . design patent[s]
with [Bradshaw's Onion and Garlic Keepers] reveals that the overall look of the [products] is
extremely similar. . .
[and] [a]lthough a highly discerning consumer might notice the differences
if the [products] were placed side by side, the strength of the [products'] common features
greatly outweighs their differences." Jack Schwartz Shoes, Inc. v. Skechers USA, Inc., 233 F.
Supp. 2d 512, 514 (S.D.N.Y. 2002).
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The patented designs and Bradshaw's products have the same shape that of
onion and garlic bulbs - in the same proportions. Given that the onion and garlic shapes are not
"functional" characteristics - because, as noted above, onion and garlic can be and are stored in
containers ofmyriad shapes and sizes - the Court must take into account the shapes and
proportions of Hutzler 's designs and Bradshaw's products.
The' 114 Patent and Bradshaw's Onion Keeper likewise have (1) vertical
striations running the length ofthe product; (2) striations that convene in a narrow "stem" at the
top; and (3) a horizontal line running across the middle of the container where the products open.
The '463 Patent and Bradshaw's Garlic Keeper both have (1) a horizontal line running across the
container approximately two-thirds of the way down where the products open; (2) air slits on the
bottom; and (3) raised designs of approximately the same size in the center of the interior of the
bottom. Disregarding the color, sheen, and construction material differences - as this Court must
do - "the accused products embody the overall effect ofthe ['114 and '463 designs] in sufficient
detail and clarity to cause market confusion.,,4 Crocs, 598 F.3d at 1306.
4 As noted above, Bradshaw argues that its products are not similar to Hutzler's designs because
they are "two-toned," with the top portion of the containers transparent. Bradshaw asserts that
Hutzler's products are "solid, not transparent" (Def. Opp. Br. 8-9), and that the transparent
aspect of its products gives them a "very different' look.'" (Id. at 9)
As an initial matter, the top part of Bradshaw's Garlic Keeper is not transparent. It is, for the
most part, opaque, except at its striations, which approach translucence. Moreover, to the extent
that Bradshaw contends that this Court should attribute significance to the "two-toned" nature of
its products, it contradicts the case law discussed above holding that color must be ignoredwhere, as here, it is not part of the patented design.
Neither side has cited case law addressing whether it is appropriate for a court to consider
transparency or translucency in performing an infringement analysis. While the Federal Circuit
recently cited the Manual of Patent Examining Procedure § 1503.02 (8th ed. 2006) for the
proposition that "[0]blique line shading must be used to show transparent, translucent and highly
polished or reflective surfaces," see Apple, Inc. v. Sarnsung Elecs. Co., Ltd., 678 F.3d 1314,
1331 (Fed. Cir. 2012), and neither the' 114 Patent nor the '463 Patent utilizes oblique line
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The Court's conclusions are buttressed by other aspects of the Gorham "ordinary
observer" test. Given how inexpensive these items are, a purchaser has little motive to pay
attention to the subtle differences highlighted by Bradshaw. Stripping away the color, sheen and
construction material differences, a consumer who has seen Hutzler's design in a store, and later
sees Bradshaw's products, is likely to purchase the latter believing it to be the former.
Accordingly, Hutzler has established a likelihood of success on the merits of its patent
infringement claim.
B. Unfair Competition Claim
To succeed on an unfair competition claim under New York common law, "a
plaintiff must demonstrate: 1) a likelihood of confusion; and 2) the defendant's bad faith." New
York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d 305, 325 (S.D.N.Y.
2010) (citing Kraft Gen. Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 135 (S.D.N.Y.
1993); Stem's Miracle-Gro Prods., Inc. v. Shark Prods., Inc., 823 F. Supp. 1077, 1093 (S.D.N.Y.
1993)). "'[T]he essence of unfair competition under New York common law is the bad faith
misappropriation of the labors and expenditures of another, likely to cause confusion or to
deceive purchasers as to the origin of the goods.'" Blumenthal Distrib., 2010 WL 5980151, at
*11 (quoting Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27,34 (2d Cir. 1995)
(quoting Rosenfeld v. W.B. Saunders, 728 F. Supp. 236, 249-50 (S.D.N.Y. 1990))); see also
Medtech Prods., Inc. v. Ranir, LLC, 596 F. Supp. 2d 778,816 (S.D.N.Y. 2008) ("[i]n order to
shading, the case law is not clear that the consequence of a failure to indicate on a design patent
that the surface texture is translucent or transparent results in a design patent claim that is limited
to opaque surfaces. Even assuming arguendo that this is true, the Court finds that the
transparency of the Bradshaw Onion Keeper, and the partial translucency of its Garlic Keeper,
are not sufficient to vitiate the Court's finding that Bradshaw's products are substantially the
same as Hutzler's designs, given the similarities discussed above and in light of the small degree
of attention an ordinary purchaser is likely to give to these inexpensive products.
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state a claim of unfair competition under New York law, a plaintiff must allege that the
defendant 'misappropriated the plaintiffs' labors, skills, expenditures, or good will and displayed
some element of bad faith in doing so."') (quoting Abe's Rooms, Inc. v. Space Hunters, Inc., 38
A.D.3d 690,692 (2d Dept. 2007»; Towers Fin. Corp. v. Dun & Bradstreet, Inc., 803 F. Supp.
820,823 (S.D.N.Y. 1992) ("to make out a claim ofunfair competition under New York law,
[p1aintiffJ must show that [defendant] . . . "'misappropriat[ed] for the commercial advantage of
one person . . . a benefit or "property" right belonging to another"') (quoting Roy Export Co. v.
Columbia Broad. Sys., Inc., 672 F.2d 1095, 1105 (2d Cir. 1982».
"'Traditionally, unfair competition was limited to claims that one party had
attempted to "pass off' his goods as those of another, to mislead the buying public into
purchasing goods while thinking they were getting those of someone else.'" Diversified Mktg.,
Inc. v. Estee Lauder, Inc., 705 F. Supp. 128, 131 (S.D.N.Y. 1988) (quoting Ideal Toy Corp. v.
Kenner Prods., 443 F. Supp. 291,305 (S.D.N.Y. 1977) (citing Flexitized, Inc. v. National
Flexitized Corp., 335 F.2d 774,781 (2d Cir. 1964»). "However, contemporary New York unfair
competition law also encompasses a broader range ofunfair practices generally described as the
misappropriation of the skill, expenditures and labors of another." Id. (quoting Ideal Toy, 443 F.
Supp. at 305 (citing Flexitized, 335 F.2d at 781».
Here, Hutzler contends that Bradshaw "has copied Hutzler's entire line of Food
Saver Products, resulting in Bradshaw misappropriating. . . . labors, skills, expenditures, and
goodwill that Hutzler accumulated while developing, marketing, and selling the Food Saver
Line. . . . Knowing that the Hutzler Food Saver Line was successful, Bradshaw produced
identical products." (Pltf. Br. 11-12) Hutzler further argues that given the "obvious" similarity
between Hutzler's Food Saver Line and Bradshaw's Food Keeper Line, the fact that Hutzler and
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Bradshaw are direct competitors, and the fact that Bradshaw "has taken no steps to differentiate
itself from Hutzler in supermarkets, or in advertisements," the Court should find that it has
demonstrated a likelihood of confusion. (Id. at 12)
Bradshaw maintains that "[c]onsumers are not likely to be confused as to the
origin of product elements dictated by function." (Def. Opp. Br. 20) Bradshaw argues that "[i]n
addition to the differences in the appearance of the products themselves, Bradshaw's labels,
packaging and advertising bear no resemblance to those ofHutzler." (klJ In arguing that
Hutzler cannot establish bad faith on the part ofBradshaw, Bradshaw notes that it "took
significant efforts to design products which do not infringe those patents" and that it obtained an
opinion from its intellectual property counsel "and relied upon that opinion in proceeding with
the marketing of the accused products." (Id.)
The Court concludes that Hutzler has demonstrated a likelihood of confusion. As
noted above, Bradshaw's Onion and Garlic Keepers and Hutzler's designs are substantially the
same. In addition to the onion and garlic containers, Bradshaw chose to produce containers for
lemons, tomatoes and green peppers, thereby duplicating Hutzler 's entire Food Saver Line.
(Ehrenhaus Dec!. 18; Px 9-14) All of the containers are essentially the same size, proportions,
shape, and color. (Px 9-14) Hutzler and Bradshaw are direct competitors operating in the same
market and vying for the same customers. Indeed, Hutzler has offered evidence that the two
companies' products have been intermingled in supermarket displays, making it likely that
customers will confuse the origin of the products. (Ehrenhaus Decl., Ex. D) In short, Hutzler
has demonstrated that consumers are likely to be confused as to the origin of the products.
Hutzler has also demonstrated that it is likely to establish that Bradshaw has acted
in bad faith. Having seen the success of Hutzler's Food Saver Line, which required a significant
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expenditure of time and money on Hutzler's part (Hutzler Decl. 7), Bradshaw developed its
own line of substantially similar containers for the same five vegetables and fruits (Ehrenhaus
Decl. 18) to be marketed to the same customers. Bradshaw acknowledges that it was aware
ofHutzler's products when it developed its own competing line. (Megorden Aff. 5) Given
that Bradshaw knew ofHutz ler's products, its actions here must be viewed as deliberate and
indicative of bad faith. Although Bradshaw maintains that it relied on an attorney's opinion in
proceeding with the marketing of its products (Id. 6), Bradshaw has refused to provide that
opinion to the Court. Because Bradshaw has refused to provide the attorney's opinion, the fact
that it solicited advice from counsel is entitled to little weight. There is no way to know whether
Bradshaw followed the advice of its attorney in launching its new product line.
In sum, the Court finds that Bradshaw has demonstrated a likelihood of success
on its unfair competition claim.
III. PLAINTIFF'S SHOWING OF IRREPARABLE INJURY
Under the Salinger standard, a court "must not adopt a 'categorical' or 'general'
rule or presume that the plaintiff will suffer irreparable harm (unless such a 'departure from the
long tradition of equity practice' was intended by Congress)." Salinger, 607 F.3d at 80 (quoting
Winter v. Natural Resources Defense Council, 555 U.S. 7 (2008); eBay Inc. v. MercExchange,
L.L.C., 547 U.S. 388, 391 (2006)). Instead, "plaintiffs must show that, on the facts oftheir case,
the failure to issue an injunction would actually cause irreparable harm." Salinger, 607 F.3d at
82.
Hutzler seeks an order
preliminarily enjoining defendant Bradshaw . . . from: (1) infringing, or inducing
infringement, of Hutzler's patents, and (2) unfairly competing with Hutzler's line
of produce containers, specifically, from directly or indirectly making, using,
selling or offering for sale any products embodying the inventions of the patents
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during their terms or the Food Saver Line, or without the express written authority
ofHutzler.
(Dkt. No.4)
Hutzler argues that, absent an injunction, it will suffer six types of irreparable
harm: (1) reputational harm; (2) decrease in market share and loss ofmarket leader position; (3)
price erosion; (4) loss of customers' goodwill; (5) adverse effects on sales momentum and
profits; and (6) encouragement of other infringement. (Pltf. Br. 14-17). The Court finds that
Hutzler will suffer irreparable harm in the form of decreased market share, loss of its position
as market leader, and price erosion - if an injunction is not issued.
"It is well-established that a movant's loss of current or future market share may
constitute irreparable harm." Grand River Enter. Six Nations, Ltd. v. Pryor, 481 F.3d 60, 67 (2d
Cir. 2007) (citing Freedom Holdings, Inc. v. Spitzer, 408 F.3d 112, 114-15 (2d Cir. 2005);
Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharms. Co., 290 F.3d
578,596 (3d Cir. 2002)); see also Stein Indus, Inc. v. Jarco Indus., Inc., 934 F. Supp. 55, 58
(E.D.N.Y. 1996). Moreover, '''the potential loss of . . . the advantage of being the pioneer in the
field and the market leader[ ] may constitute irreparable harm.'" Norbrook Labs. Ltd. v. G.c.
Hanford Mfg. Co., 297 F. Supp. 2d 463,492 (N.D.N.Y. 2003) (quoting Comp Assocs. Int'l Inc.
v. Bryan, 784 F. Supp. 982, 986 (E.D.N.Y. 1992)).
Here, Hutzler has offered evidence that its sales have dropped significantly since
Bradshaw's products entered the marketplace in 2011, and that it has lost certain customers who
have switched to Bradshaw's products. (See Ehrenhaus Decl. '12 , Ex. B; Hutzler Decl. "29 ,
32-35) The effect ofHutzler's loss of clients is difficult to quantify, and Hutzler may not be able
to recover these lost relationships. Moreover, Hutzler has demonstrated that ifBradshaw is not
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enjoined, Hutzler will lose its market leadership. This showing is sufficient to make out
irreparable harm.
Hutzler also argues that "Defendant's distribution of the Infringing Products, if
not enjoined, will result in irreparable price erosion ofHutzler's patented products in that Hutzler
will be forced to drastically change its pricing structure in order to complete with lower-priced
'knock-off ' products." (Pltf. Br. 15; Hutzler Decl. 30) Hutzler maintains that Bradshaw's
products "are priced approximately 25-50 percent lower than Hutzler's Food Saver Line
products." (Hutzler Decl. 27) It is settled law that "the loss of pricing power resulting from
the sale of inexpensive 'knock-offs' is, by its very nature, irreparable." Mint, Inc. v. Amad, No.
10 Civ. 9395(SAS), 2011 WL 1792570, at *3 (citing Abbott Labs. v. Sandoz, Inc., 544 F.3d
1341, 1362 (Fed. Cir. 2008) (citing Purdue Pharma L.P. v. Boehringer Ingelheim GmbH, 237
F.3d 1359, 1368 (Fed. Cir. 2001) (likelihood of price erosion and loss ofmarket share are
evidence of irreparable harm); Polymer Techs., Inc. v. Bridwell, 103 F.3d 970,975-76 (Fed. Cir.
1996) (loss ofmarket opportunities cannot be quantified or adequately compensated and is
evidence of irreparable harm))).
Hutzler has demonstrated that Bradshaw's products are priced lower than
Hutzler 's products (Hutzler DecL 30; Ehrenhaus Decl., Ex. B) and that it was required to lower
its prices in order to avoid losing business to Bradshaw. (Ehrenhaus Decl. 13, Ex. C)
Accordingly, Hutzler has likewise demonstrated irreparable harm flowing from the continued
price erosion it will sufferif
Bradshaw is not enjoined.
IV. BALANCE OF HARDHIPS
Where as here - plaintiff has demonstrated a likelihood of success on the merits
and a likelihood of irreparable harm absent an injunction, a court must next "consider the balance
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of hardships between the plaintiff and defendant and issue the injunction only if the balance of
hardships tips in the plaintiff 's favor." Salinger, 607 F.3d at 80. "The Court 'must balance the
hann that will occur to the moving party from the denial of the preliminary injunction with the
hann that the non-moving party will incur if the injunction is granted.'" Novo Nordisk A/S v.
Pfizer, Inc., No. 06 Civ. 5819(LBS), 2006 WL 3714312, at *6 (S.D.N.Y. Dec. 14,2006) (quoting
Hybritech, Inc. v. Abbott Labs., 849 F.2d 1446, 1457 (Fed. Cir. 1988».
Here, the balance of hardships factor favors Hutzler. Given the price erosion, loss
ofmarket share, and potential loss ofmarket leader position, and the fact that Hutzler's Food
Saver Line accounts for 63% of its sales with the Onion Saver and the Garlic Saver
constituting 27% of the company's sales (Ehrenhaus Decl. 6) - absent an injunction, Hutzler
faces the potential destruction of its business. See Tuccillo v. Geisha NYC, LLC, 635 F. Supp.
2d 227,247 (E.D.N.Y. 2009) (balance of hardships favored movant given that it faced potential
destruction of its business).
Bradshaw argues that it "would be hanned by failure to meet the terms of present
importation and distribution contracts and be forced to breach its present obligations, which
would injure its reputation within the industry, subject it to significant economic hann and hinder
its potential to engage in future arrangements with those parties." (Def. Opp. Br. 24; Megorden
Aff. 13) Bradshaw's product line of home goods includes more than 2,400 different items,
however. (Megorden Aff. 2) Accordingly, the impact of an injunction on Bradshaw's business
is likely to be much less serious than the absence of an injunction on Hutzler's business.
Moreover, Bradshaw knowingly copied Hutzler's patented designs, and thus
assumed the risk that it would suffer financial loss. See Tuccillo, 635 F. Supp. 2d at 247-48
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(citing Novartis, 290 F.3d at 596 ("[T]he injury a defendant might suffer if an injunction were
imposed may be discounted by the fact that the defendant brought that injury upon itself')).
The Court concludes that the balance of hardships factor weighs in favor of
issuing a preliminary injunction.
V. PUBLIC INTEREST
As the final step in the Salinger analysis, "the court must ensure that the 'public
interest would not be disserved' by the issuance of a preliminary injunction." Salinger, 607 F.3d
at 80 (quoting eBay, 547 U.S. at 391).
"[A]lthough there exists a public interest in protecting rights secured by valid
patents," the Federal Circuit has instructed that "the focus of the district court's public interest
analysis should be whether there exists some critical public interest that would be injured by the
grant of preliminary relief." Hybritech, 849 F.2d at 1458.
Bradshaw has not argued that the public interest would be injured by the grant of
preliminary relief, and this Court concludes that the public interest will not be adversely affected
by the issuance of a preliminary injunction.
* * * *
Hutzler has demonstrated that (l) it is likely to succeed on the merits of its patent
infringement and unfair competition claims; (2) it is likely to suffer irreparable injury in the
absence of an injunction; (3) the balance of hardships favors the granting of an injunction; and
(4) the public interest will not be dis served by the issuance of an injunction. Accordingly, the
Salinger test is satisfied and a preliminary injunction is appropriate.
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CONCLUSION
For the reasons stated above, Plaintiffs motion for a preliminary injunction is
GRANTED. Plaintiff is directed to submit a proposed order by July 26,2012. Defendant will
submit any opposition to Plaintiffs proposed order by July 30, 2012. The Court will consider an
appropriate Rule 65(c) bond amount once the terms of the preliminary injunction have been
determined. The Clerk ofCourt is directed to terminate the motion. (Dkt. No.4)
Dated: New York, New York
July 24,2012
SO ORDERED.
Paul G. Gardephe
United States District Judge
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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
HUTZLER MANUFACTURINGCOMPANY, INC.,
Plaintiff,
- against -
BRADSHAW INTERNATIONAL, INC.,
Defendant.
ORDER
11 Civ. 7211 (PGG)
PAUL G. GARDEPHE, U.S.D.J.:
Defendant Bradshaw International, Inc. has moved for reconsideration of this
Court’s July 25, 2012 Memorandum Opinion & Order (the “Order”) (Hutzler Mfg. Co., Inc. v.
Bradshaw Int’l, Inc., No. 11 Civ. 7211 (PGG), 2012 WL 3031150 (S.D.N.Y. July 25, 2012))
granting Plaintiff Hutzler Manufacturing Company, Inc.’s motion for a preliminary injunction.
(Dkt. No. 38) Familiarity with the Order is presumed. For the reasons stated below, Bradshaw’s
motion for reconsideration will be denied.
BACKGROUND
Hutzler is the manufacturer of a line of plastic housewares products called the
“Food Saver Line,” which are used for storing and preserving various types of produce. These
containers resemble the type of produce they are intended to store. (Cmplt. ¶ 9) Hutzler owns
U.S. design patents for two products in the Food Saver Line – the “Onion Saver” and the “Garlic
Saver.” (Id. ¶¶ 9, 11, 13) Hutzler alleges that Bradshaw has sold, and is currently offering for
sale, products that infringe Hutzler’s patents. (Id. ¶¶ 18-19) In addition to alleging patent
infringement, Hutzler asserts a claim for unfair competition under New York law. (Id. ¶¶ 64-73)
USDC SDNY
DOCUMENTELECTRONICALLY FILED
DOC #: _________________
DATE FILED: March 27, 2013
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2
In granting Hutzler’s motion for a preliminary injunction, this Court found that
“Hutzler will likely prevail on the patent validity issue at trial.” Hutzler, 2012 WL 3031150, at
*4. The Court further determined that “Hutzler has established a likelihood of success on the
merits of its patent infringement claim,” finding that
while . . . there are differences between the patented designs and Bradshaw’s products, “[a] visual comparison of the . . . design patent[s] with [Bradshaw’s
Onion and Garlic Keepers] reveals that the overall look of the [products] is
extremely similar . . . [and] [a]lthough a highly discerning consumer might noticethe differences if the [products] were placed side by side, the strength of the
[products’] common features greatly outweighs their differences.”
Id. at *14 (quoting Jack Schwartz Shoes, Inc. v. Skechers USA, Inc., 233 F. Supp. 2d 512, 514
(S.D.N.Y. 2002). The Court also concluded that Hutzler “ha[d] demonstrated a likelihood of
success on its unfair competition claim,” finding that Hutzler had shown “a likelihood of
confusion” and would “likely . . . establish that Bradshaw ha[d] acted in bad faith.” Id. at *16-
17.1
DISCUSSION
I. LEGAL STANDARD
A motion for reconsideration is “an ‘extraordinary remedy to be employed
sparingly in the interests of finality and conservation of scarce judicial resources,’” In re Initial
Public Offering Sec. Litig., 399 F. Supp. 2d 298, 300 (S.D.N.Y. 2005) (quoting In re Health
Mgmt. Sys., Inc. Sec. Litig., 113 F. Supp. 2d 613, 614 (S.D.N.Y. 2000)), and may be granted
only where a court has overlooked “‘controlling decisions or factual matters that were put before
it on the underlying motion’” and which, if examined, might reasonably have led to a different
1This Court further concluded that Hutzler had demonstrated irreparable harm in the form of
price erosion, loss of customers, and loss of market leadership. Hutzler, 2012 WL 3031150, at
*17-18. Finally, the Court determined that the balance of hardships and public interest factors
favored issuance of a preliminary injunction. Id. at *17-18.
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result. Eisemann v. Greene, 204 F.3d 393, 395 n.2 (2d Cir. 2000) (quoting Shamis v.
Ambassador Factors Corp., 187 F.R.D. 148, 151 (S.D.N.Y. 1999)). “Reconsideration should not
be granted where the moving party seeks solely to relitigate an issue already decided; in addition,
the moving party may not ‘advance new facts, issues or arguments not previously presented to
the Court.’” Christoforou v. Cadman Plaza N., Inc., No. 04 Civ. 08403 (KMW), 2009 WL
723003, at *7 (S.D.N.Y. Mar. 19, 2009) (quoting Shamis, 187 F.R.D. at 151).
II. ANALYSIS
A. Bradshaw May Not Re-Litigate Issues That Have Already Been Decided
Bradshaw argues that the Court improperly disregarded the surface lines shown in
the ‘114 and ‘463 Patents. (Def. Reconsideration Br. 2-5) Bradshaw asserts:
The Court’s only mention of the relevance of the vertical lines shown in the
drawings of the ‘114 patent erroneously references vertical lines “running thelength of the product.” The drawings of the ‘114 patent show lines of varying
length on the surface of the product, none of which “run the length of the
product.”
Moreover, in the Court’s interpretation of the ‘463 garlic patent, there is nomention whatsoever of the surface lines shown in the drawings. Even if there
were, however, and similarly to the ‘114 patent above, none of those lines “run
the length of the product,” as they do in the Bradshaw garlic saver product.
No other mention whatsoever is made to the surface lines shown in the patents,
nor to the fact that those lines were considered in any way to be important
elements of the claims. In fact, the court seems to have “read-out” those surfacelines altogether.
(Id. at 3-4) Bradshaw further asserts that “the Court misses the point . . . that the lines shown in
the Hutzler design patents relate to the overall look and texture of the design, namely that they
are intended to protect a design which looks as closely as possible [to] the natural surfaces of
onions and garlic.” (Id. at 4)
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Bradshaw made these arguments in its opposition brief (Def. PI Opp. Br. 7-15)
and at the preliminary injunction hearing (Jan. 19, 2012 Tr. at 19-20, 23-24), and acknowledges
in the instant motion that it previously raised these arguments: “[t]his point was emphasized by
Bradshaw in its Brief in Opposition to the Motion for Preliminary Injunction (Bradshaw Brief,
pp. 7-8), as well as extensively by Bradshaw’s counsel at the January 19, 2012 hearing of this
matter . . . .” (Def. Reconsideration Br. 3) A motion for reconsideration is not a “‘second bite at
the apple’ for a party dissatisfied with a court’s ruling.” Corines v. Am. Physicians Ins. Trust,
769 F. Supp. 2d 584, 593 (S.D.N.Y. 2011) (citation omitted). Accordingly, Bradshaw’s renewal
of these arguments will not be entertained.
2
Likewise, Bradshaw’s argument (see Def. Reconsideration Br. at 5) that the
shapes, proportions, and center openings of the products are functional was presented in detail by
Bradshaw in its briefing and at oral argument on the preliminary injunction motion. (See, e.g.,
2In any event, the Court explicitly acknowledged the surface lines – or striations – depicted in
Hutzler’s patents, but ultimately concluded that Bradshaw’s products “‘embody the overall effect
of [Hutzler’s designs] in sufficient detail and clarity to cause market confusion.’” Hutzler, 2012
WL 3031150, at *14 (quoting Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1306 (Fed. Cir.
2010). As the Court discussed at length in the Order, the Federal Circuit has emphasized thatcourts must focus on the overall appearance of products when analyzing design patent
infringement. Hutzler, 2012 WL 3031150, at *8-10 (citing Crocs, Inc., 598 F.3d at 1303 (“[T]he
deception that arises is a result of the similarities in the overall design, not of similarities inornamental features in isolation. . . . The ordinary observer test applies to the patented design in
its entirety, as it is claimed.”) (emphasis added; internal quotation omitted); Elmer v. ICC
Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995) (“Under Gorham, the focus is on theoverall ornamental appearance of the claimed design, not selected ornamental features.”)
(emphasis in original)).
Bradshaw also errs in arguing that the Court failed to consider all of the drawings in each of the
patents. The Court considered all of the drawings and explicitly addressed numerous features of
the designs depicted in the patent drawings. For example, with respect to the ‘463 Patent, the
Court discussed, inter alia, the air slits on the bottom depicted in Figures 7 and 8 of the ‘463Patent, the raised design in the center of the interior of the bottom depicted in Figure 8, and the
horizontal line running across the container approximately two-thirds of the way down – where
the products open – as depicted in Figures 1 and 3. Hutzler, 2012 WL 3031150, at *14.
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utility of the shape of the designs in issue . . . . Specifically, for its onion saver product, as well
as for several others in its food saver line, Hutzler touts that the design makes the product ‘[e]asy
to find in the refrigerator,’ and ‘[m]ade to look just like an onion, the Onion Saver will never be
lost or forgotten in the fridge.’” (Id. at 7) This is simply an expansion of the functionality
argument that Bradshaw made in its opposition brief and at the injunction hearing, however, and
a motion for reconsideration “is not a vehicle to offer additional support for an argument rejected
previously by the Court.” Capitol Records, Inc. v. MP3Tunes, LLC, No. 07 Civ. 9931 (WHP),
2009 WL 5102794, at *1 (S.D.N.Y. Dec. 14, 2009).
B.
Bradshaw May Not Present New Theories and Arguments
Just as Bradshaw may not rehash arguments it made previously, it may not offer
new theories or arguments that could have been presented before but were not. Bradshaw
argues, for example, that the Court was required to apply the factors outlined in Polaroid Corp. v.
Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), in determining likelihood of confusion in
connection with Hutzler’s unfair competition claim. (Def. Reconsideration Br. 13-14)
Bradshaw never made this argument in its briefing or at oral argument, however, and accordingly
it may not be raised now. “A motion for reconsideration is not an opportunity for a losing party
to advance new arguments to supplant those that failed in the prior briefing of the issue.”
Fredericks v. Chemipal, Ltd., No. 06 Civ. 966 (GEL), 2007 WL 1975441, at *1 (S.D.N.Y. July
6, 2007); see also EEOC v. Fed. Express Corp., 268 F. Supp. 2d 192, 199 (E.D.N.Y. 2003)
(“Under Local Rule 6.3, a party may not advance new facts, issues or arguments not previously
presented to the Court.” (internal quotation omitted)).3
3Although Bradshaw never suggested that a Polaroid analysis was necessary or appropriate, the
Order discusses those aspects of the Polaroid analysis about which the parties offered evidence,
including the success of Hutzler’s Food Saver Line in the marketplace, the similarity of the
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Bradshaw’s argument that the two companies do not have identical product lines
(see Def. Reconsideration Br. 16) was also not presented before. Based on the record before it,
the Court found that, “[i]n addition to the onion and garlic containers, Bradshaw chose to
produce containers for lemons, tomatoes and green peppers, thereby duplicating Hutzler’s entire
Food Saver Line.” Hutzler, 2012 WL 3031150, at *16. Bradshaw now argues that Hutzler
“failed to disclose to the Court . . . that the Hutzler Food Saver line of products contains many
more food-shaped containers than these five products. . . . Conversely, the Bradshaw line of
Keeper products contains additional products as well.” (Def. Reconsideration Br. 16) Bradshaw
could have made this argument before, of course, but it did not. A motion for reconsideration “is
not an opportunity for parties to advance new facts, issues, or arguments that have previously not
been presented to the court.” Xuedan Wang v. Hearst Corp., No. 12 Civ. 793 (HB), 2012 WL
3642410, at *1 (S.D.N.Y. Aug. 24, 2012).
products, their proximity in the marketplace, Bradshaw’s bad faith, the inexpensive nature of the
products, and the nature of the likely buyer and the degree of attention he or she would likely
bring to a purchase of these products. Hutzler, 2012 WL 3031550, at *7, *15-16. Bradshaw has
not shown that a deeper analysis of the Polaroid factors at this stage of the litigation is necessary, particularly given that Bradshaw never argued that the Polaroid test is applicable.
Bradshaw also argues that, in considering Hutzler’s unfair competition claim, the Courtimproperly “conflate[d] the issues of patent infringement and unfair competition.” (Def.
Reconsideration Br. 13) This argument has no merit. The Court separately considered Hutzler’s
unfair competition claim and made the following findings, inter alia, specific to that claim: (1)“Bradshaw’s Onion and Garlic Keepers and Hutzler’s designs are substantially the same”; (2)
“[i]n addition to the onion and garlic containers, Bradshaw chose to produce containers for
lemons, tomatoes and green peppers, thereby duplicating Hutzler’s entire Food Saver Line”; (3)“[a]ll of the containers are essentially the same size, proportions, shape, and color”; (4) “Hutzler
and Bradshaw are direct competitors operating in the same market and vying for the same
customers”; and (5) “Hutzler has offered evidence that the two companies’ products have been
intermingled in supermarket displays, making it likely that customers will confuse the origin of the products.” Hutzler, 2012 WL 3031150, at *16. The Court further found that Hutzler had
demonstrated “it is likely to establish that Bradshaw has acted in bad faith.” Id. These findings
are independent of the Court’s patent infringement analysis.
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8
In any event, Hutzler disputes Bradshaw’s claim: “Bradshaw has the facts wrong
. . . . It knew what the Hutzler Food Saver line consisted of in October 2011 when this case was
commenced and in January 2012 when the parties appeared in court for oral argument. So it
should know, but has failed to tell the Court, that the [additional food-shaped containers] were
not part of the Food Saver line when suit was filed or the preliminary injunction motion was
argued . . . .” (Pltf. Reconsideration Opp. Br. 10)
Bradshaw’s remaining arguments concerning the alleged differences between
Hutzler’s and Bradshaw’s lines constitute an attempt to re-litigate issues already decided by the
Court and will not be considered.
4
4Bradshaw has also moved for leave to file the August 8, 2012 Affidavit of Robert J. Kenney in
support of its motion for reconsideration. (Dkt. Nos. 29, 33) Pursuant to Local Rule 6.3, “[n]oaffidavits shall be filed [with respect to a motion for reconsideration] by any party unless
directed by the court.” Local Civ. R. 6.3. Bradshaw will be granted leave to file the Kenney
Affidavit (Dkt. No. 40), which recounts the Court’s request that Kenney re-send a January 25,2012 letter that he had previously submitted on behalf of Bradshaw. Kenney asserts that the
Court issued the Order before he was able to re-send the letter, and that accordingly the Court did
not consider his letter before issuing the Order. (Dkt. No. 40 at ¶ 10) That is incorrect. After
leaving a message for Kenney, Chambers located the letter and the Court reviewed it beforeissuing the Order. Kenney’s January 25, 2012 letter – reflecting that it was faxed to Chambers
on January 25, 2012 – has been docketed. (Dkt. No. 56) Hutzler’s letter concerning the same
topic has also been docketed. (Dkt. No. 55)
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CONCLUSION
For the reasons stated above, Bradshaw's motion for leave to file the August 8,
2012 Affidavit of Robert 1. Kenney (Dkt. Nos. 29, 33) is granted, and Bradshaw's motion for
reconsideration (Dkt. No. 38) is denied. The Clerk of the Court is directed to terminate the
motions.
Dated: New York, New York
March 27,2013
SO ORDERED.
9
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III DIII~~~IhIDIHII 1111111111111HD111111111NIUS0013538114S
(12) United States Design Patent (10) Patent No.: US D538,114 SKolano (45) Date of Patent: ** Mar. 13, 2007
(54) ONION CONTAINER D319,009 S *8/1991 Astrab, Jr................0D9/644D349,643 S *8/1994 Szymnanski.............. D9/644
(75) Inventor: William Kolano, Pittsburgh. PA (US) D436,855 S 1/2001 Papiernik ............... 0D9/428
(73) Assignee: Hutzler Manfacturing Co., Inc., cited by examiner
Canaan, CT (US) Primary Examiner-Terry A. Wallace
(*)Term: 14 Years (74) Attorney Agent, or Firin-Michael j. Striker
(21) AppI. No.: 29/259,206 (57) CLA?%I
(22)File:a 4, 006The ornamental design for an onion container, as shown and(22)File:a 4, 006described.
(51) LOC (8) Ci ....................................... 07-01
(52) U.S. CI.D.....................17/628;9/644 DESCRIPTION
(58) Field of Classification Search ............. D7/628, FIG. 1 satpve fa noncnanrsoigm eD7/612-615, 602, 629; D9/643, 644; 206/4571 e iso iw fnoincotie hoigm e
220/780-806, 4.21 ein
See application file for complete search history. FIG. 2 is a side view thereof,- which is also a mirror image
of the opposite side vicw thereof; and,(56) References Cited FIG. 3 is a bottom view thereof.
U.S. PATENT DOCUMENTS
0196.985 S '11/1963 Selinering et al . D......19/644 1 Claim, 1 Drawing Sheet
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U.S. Patent Mar. 13, 2007 US D538,114 S
FIG. I
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US0003592463S
(12) United States Design Patent (10) Patent No.: US D592,463 S
Ebrenhaus et al. (45) Date of Patent: ** May 19, 2009
(54) GARLIC CONTAINER D436,855 S * 1/2001 Papiernik ............... D9/428
D519,376 S *~ 4/2006 Ames................... D7/615
(75) Inventors: Rich Ehrenhaus. Ne w York, NY (US); D538,1 14 S * 3/2007 Kolano..................0D7/628Colin F. Gentle. Brooklyn, NY (US) *cited by examiner
(73) Assignee: Hutzler Manufacturing Co., Inc., PrimaryExaminer-Terry A WallaceCanaan, CT (US) (74) Attorney,Agent, or Firm-MichaelJ1. triker
(*)Term: 14 Years (57) CLAIM
(21) AppI. No.: 29/283,424 The ornamental design fo r a garlic container, as shown an d
(22) Filed: Aug. 14, 2007 dsrbd
(51) LOC (9) Cl........................................ 07-01 DESCRIPTION
(52) U.S. Cl................................. D7/613; 137/628 FIG. l is a front perspective view of a garlic container show-
(58) Field of Classification Search ...... 07/612-615, ing our new design;
D7/628, 602. 606; D9/643, 644, 428. 429; FIG. 2 is a top view thereof:
206/457; 2201780-806, 4.21 FI.3iafrnvewtrofSe e application file for complete search history.FI.3iafrnvewtro,
(56) fernces itedFIG. 4 is a rear view thereof-,
(56)Refrencs CtedFIG. 5 is a right side view thereof;,
U.S. PATENT DOCUMENTS FIG. 6 is a left side view thereof;
D196,985 S *11/1963 Schnering et al.......... D9/644 FIG. 7 is a bottom view thereof, and,D267,396 S *12/1982 McDuffee et al.......... D9,'429 FIG. 8 is an interior surface of the bottom portion in an open4,795.033 A * 111989 Duffy .................. 2061457
0319,009 S * 811991 Astrab, Jr................ D9/644 position.
D349,643 S * 8/1994 Szymanski.............. D9,/644D409,052 S * 5/1999 Terraova...............0D71615 I Claim, 4 Drawing Sheets
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U.S. Patent May 19, 2009 Sheet 1 of 4 US D592,463 S
FIG. 1
FIG.2
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U.S. Patent May 19, 2009 Sheet 2 of 4 US D592,463 S
FIG.3
FIG.4
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U.S. Patent May 19, 2009 Sheet 3 of 4 US D592,463 S
FIG .5
FIG.6
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U.S. Patent May 19 , 2009 Sheet 4 of 4i US D592,463 S
FIG.7
FIG.8
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CERTIFICATE OF FILING AND SERVICE
I hereby certify that on this 12th day of July, 2013, I caused this Brief of
Appellant to be filed electronically with the Clerk of the Court using the CM/ECF
System, which will send notice of such filing to the following registered CM/ECF
users:
Michael R. Graif
CHADBOURNE & PARKE, LLP
30 Rockefeller Plaza
New York, New York 10112
Turner P. Smith
CURTIS, MALLETT-PREVOST, COLT & MOSLE
101 Park Avenue, Suite 3500
New York, New York 10178
(212) 696-6121
Counsel for Appellee
Upon acceptance by the Clerk of the Court of the electronically filed
document, the required number of copies of the Brief of Appellant will be hand
filed at the Office of the Clerk, United States Court of Appeals for the Federal
Circuit in accordance with the Federal Circuit Rules.
/s/ Robert J. Kenney
Counsel for Appellant
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CERTIFICATE OF COMPLIANCE
1. This brief complies with the type-volume limitation of Fed. R. App. P.
28.1(e)(2) or 32(a)(7)(B) because:
[ X ] this brief contains [11,535] words, excluding the parts of the brief
exempted by Fed. R. App. P. 32(a)(7)(B)(iii), or
[ ] this brief uses a monospaced typeface and contains [state the number
of ] lines of text, excluding the parts of the brief exempted by Fed. R. App. P.
32(a)(7)(B)(iii).
2. This brief complies with the typeface requirements of Fed. R. App. P.
32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because:
[ X ] this brief has been prepared in a proportionally spaced typeface using
[ Microsoft Word 2007 ] in [14pt Times New Roman]; or
[ ] this brief has been prepared in a monospaced typeface using [state
name and version of word processing program] with [state number of
characters per inch and name of type style].
Dated: July 12, 2013 /s/ Robert J. Kenney
Counsel for Appellant