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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF OHIO EASTERN DIVISION MRC INNOVATIONS, INC. Plaintiff, v. HUNTER MFG, LLP, et al. Defendants. ) ) ) ) ) ) ) ) ) )

CIVIL ACTION NO.: 1:12-cv-00684

JUDGE PATRICIA A. GAUGHAN

MEMORANDUM IN SUPPORT OF DEFENDANTS’ JOINT MOTION FOR SUMMARY JUDGMENT

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TABLE OF CONTENTS I. Statement of the Issues to be Decided.......................................................................... 1

II. Summary of the Argument ........................................................................................... 1 III. IV. Statement of Undisputed Facts .................................................................................. 2 Standard..................................................................................................................... 5

V. Argument...................................................................................................................... 6 A. B. 1. Brief Summary of the Law of Design Patents ....................................................... 6 The ‘487 and ‘488 Patents are Invalid as a Matter of Law .................................... 7 Invalidity Over the Prior Art............................................................................... 7

a) The ‘488 Patent................................................................................................. 10 b) The ‘487 Patent................................................................................................. 17 2. VI. Invalidity Under Section 112 of the Patent Act................................................ 20

CONCLUSION ...................................................................................................... 23

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TABLE OF AUTHORITIES
Cases Anderson v. Liberty Lobby Inc., 477 U.S. 242 (1986) .................................................................... 6 Apple, Inc. v. Samsung Electronics Co. Ltd., 678 F.3d 1314 (Fed. Cir. 2012)............................... 9 Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569 (Fed. Cir. 1984) ............... 22 Avia Group Int’l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557 (Fed. Cir. 1988) ............................. 6 Campbell v. Spectrum Automation Co., 513 F.2d 932 (6th Cir. 1975)........................................... 8 Celotex Corp. v. Catrett, 477 U.S. 317 (1986) ............................................................................... 5 Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996)......................................... 9, 15 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008)........................................... 7 Halliburton Energy Services, Inc. v. M-I, LLC, 514 F.3d 1244 (Fed. Cir. 2008)......................... 21 In re Borden, 90 F.3d 1570 (Fed. Cir. 1996) .................................................................................. 8 In re Haruna, 249 F.3d 1327 (Fed. Cir. 2001) ............................................................................... 8 In re Mann, 861 F.2d 1581 (Fed. Cir. 1988) .................................................................................. 6 Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) ........ 7, 9, 16, 19 Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323 (Fed. Cir. 2001) ................... 21 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) .................................................... 20 Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (1986) ..................................... 6 Microsoft Corp. v. i4i Ltd. P’ship, 131 S.Ct. 2238 (2011) ............................................................. 8 MRC Innovations, Inc. v. Hunter MFG., LLP, 2012 U.S. Dist. LEXIS 79685 (N.D. Ohio June 7, 2012) ........................................................................................................................................... 5 Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757 (Fed. Cir. 1988) ................................ 9 iii

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Philco Corp. v. Admiral Corp., 199 F. Supp. 797 (D. Del. 1961) .......................................... 22, 23 Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418 (Fed. Cir. 1988) ......................................................... 8 Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714 (Fed. Cir. 1991).................................................. 8, 9 Scaltech, Inc. v. Retec/Tetra, LLC, 269 F.3d 1321 (Fed. Cir. 2001) ............................................ 11 Schnadig Corp. v. Gaines Mfg. Co., 494 F.2d 383 (6th Cir. 1974) ................................................ 6 Semmler v. American Honda Motor Co., Inc., 990 F.Supp. 967 (S.D. Ohio 1997) ................. 9, 20 Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613 (Fed. Cir. 1985) ................ 20 Static Control Components, Inc. v. Lexmark Int'l, Inc., 2012 U.S. App. LEXIS 18316 (6th Cir. 2012) ........................................................................................................................................... 6 Universal Oil Products Co. v. Globe Oil & Refining Co., 322 U.S. 471 (1944).......................... 23 Statutes 35 U.S.C. § 102(b) ........................................................................................................................ 11 35 U.S.C. § 112(1) ........................................................................................................................ 20 35 U.S.C. § 112(2) ........................................................................................................................ 20 35 U.S.C. § 171......................................................................................................................... 6, 20 Rules Fed. R. Civ. P. 56(c) ....................................................................................................................... 5

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I.

STATEMENT OF THE ISSUES TO BE DECIDED
Whether Plaintiff MRC Innovations, Inc.’s (“Plaintiff”) U.S. Design Patent No.

D634,487 (the “‘487 Patent”) is invalid as a matter of law as being obvious over one or more of the prior art pet jerseys cited herein. Whether Plaintiff’s U.S. Design Patent No. D634,488 (the “‘488 Patent”) is invalid as a matter of law on at least one of the following grounds: (1) obviousness under 35 U.S.C. § 103(a) over one or more of the prior art pet jerseys cited herein; (2) indefiniteness under 35 U.S.C. § 112; and/or (3) non-enabling under 35 U.S.C. § 112.

II.

SUMMARY OF THE ARGUMENT
The undisputed facts establish that at least three substantially similar designs of pet

football jerseys and at least one substantially similar design of a pet baseball jersey were offered for sale, sold, or described in a printed publication at least one year prior to the filing date of the Plaintiff’s U.S. Design Patent Nos. D634,487 (the “‘487 Patent”) and D634,488 (the “‘488 Patent”). These prior art pet jerseys serve as clear and convincing evidence of the invalidity of these patents as covering designs that are, at least, obvious and, very likely, anticipated. Furthermore, the ‘488 Patent is invalid as being indefinite and non-enabling. As evidenced below, there is no genuine issue as to any material fact to prevent this Court from holding the ‘487 Patent and the ‘488 Patent invalid as a matter of law. Accordingly, summary judgment should be granted to Defendants Hunter MFG, LLP (“Hunter”) and CDI International, Inc. (“CDI”), and Plaintiff MRC Innovations, Inc.’s
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(“Plaintiff”) Second Amended Complaint should be dismissed with prejudice.

III.

STATEMENT OF UNDISPUTED FACTS
Plaintiff is the purported owner of record of the ‘487 Patent entitled “Baseball Jersey

for a Dog,” which issued on March 15, 2011. See ¶ 3, Second Amended Complaint (Docket No. 37). The ‘487 Patent claims an ornamental design for a baseball jersey for a dog made primarily of a mesh fabric as shown and described in the patent. See Exhibit B to Docket No. 37. Plaintiff is the purported owner of record of the ‘488 Patent, entitled “Football Jersey for a Dog,” which also issued on March 15, 2011. See ¶ 2, Docket No. 37. The ‘488 Patent claims an ornamental design for a football jersey for a dog made primarily of a mesh and interlock fabric as shown and described in the patent. See Exhibit A to Docket No. 37. Mark Cohen (“Cohen”) is the named inventor of the ‘487 Patent and the ‘488 Patent, each based on a separate patent application filed on September 8, 2010. See ¶¶ 2-3, Docket No. 37. For over twenty years, Hunter has been selling licensed sports consumer products, including pet jerseys since at least as early as 2006. See ¶ 3, Declaration of Tom Neth (Docket No. 9). Hunter has sold at least two types of pet football jerseys prior to September 8, 2009 (the “critical date” for the ‘488 Patent for purposes of Section 102(b) of the Patent Act). First, Hunter developed and sold the V2 jersey (shown below) at least as early as 2008. See ¶¶ 1 and 4, Exhibit A attached hereto.

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Hunter purchased the V2 jersey from Stephen Gould Corporation (SGC), for which Cohen was a salesperson, and then sold the V2 jerseys to domestic customers prior to the critical date. See ¶¶ 2-4, Exhibit A. In addition, pursuant to instructions from Hunter and patterned off another jersey (identified as the “ACDC jersey” in Tom Neth’s deposition), Cohen designed the “Eagles” jersey (shown below) in “between the years 2007-2009.” See Exhibit B attached hereto.

Fun In Games, Inc. (“FiG”), a sister company to Plaintiff and also owned by Cohen, sold jerseys of this type to Hunter, who then sold these same jerseys through Wal-Mart and
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PetSmart prior to the “critical date.” See ¶ 5, Exhibit A. As discussed below, Defendants also note that pet baseball and football jerseys were offered for sale in the United States by Sporty K9, Ltd. (“Sporty K9”) and sold by Sporty K9 in the United States prior to the “critical date” for both the ‘487 Patent and the ‘488 Patent. See ¶ 5, Exhibit C attached hereto. These pet baseball and football jerseys were also illustrated in a printed publication in the form of a sales brochure that Sporty K9 distributed to potential consumers displaying a variety of pet apparel and accessories. See ¶¶ 3 and 5, Exhibit C. The brochure (attached to Exhibit C) illustrating these jerseys was disseminated or otherwise made available and accessible to the public in 2007. See ¶ 4, Exhibit C. In late 2010, Hunter and Cohen terminated their business relationship. See ¶ 15, Docket No. 9. Subsequently, Hunter contracted with CDI to supply pet jerseys for Hunter for sale to third parties. On March 20, 2012, Plaintiff filed its Complaint in the above-styled action alleging patent infringement of the ‘488 Patent and copyright infringement. See Docket No. 1. In addition, Plaintiff filed a motion for preliminary injunction relating to the claim of patent infringement. See Docket No. 2. Subsequently, Defendants filed a memorandum in opposition to the motion for preliminary injunction. See Docket No. 8. After Hunter filed a motion to dismiss Plaintiff’s claim for copyright infringement, Plaintiff filed a stipulated motion for leave to file an Amended Complaint, which withdrew the claim for copyright infringement. See Docket Nos. 21 and 25. The Court entered an Order denying Plaintiff’s motion for preliminary injunction, finding “the likely result in this litigation is that the
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'488 Patent is invalid under 35 U.S.C. § 103.” MRC Innovations, Inc. v. Hunter MFG., LLP, 2012 U.S. Dist. LEXIS 79685 (N.D. Ohio June 7, 2012) (emphasis added) (Docket No. 30). Finally, after a status conference with the Court, Plaintiff filed a Second Amended Complaint alleging patent infringement of the ‘487 Patent and the ‘488 Patent. See Docket No. 37. As the following discussion evidences, the Court is correct in surmising that the ‘488 patent is invalid, and the same is true for the newly asserted ‘487 Patent. Therefore, Defendants’ motion for summary judgment should be granted.

IV.

STANDARD
Summary judgment is appropriate “if the pleadings, depositions, answers to

interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (quoting Fed. R. Civ. P. 56(c)). In seeking summary judgment, the moving party has the initial burden of

demonstrating the absence of any genuine issue of material fact. Id. at 323. While the Court must draw all reasonable inferences in favor of the nonmoving party, the moving party does not need to disprove matters on which the nonmoving party has the burden of proof at trial. Id. Once the moving party meets it burden by demonstrating “that there is an absence of evidence to support the nonmoving party’s case,” the burden shifts to the nonmoving party to prove otherwise. Id. at 325. “To create a genuine issue of fact, the nonmovant must do more than present some

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evidence on an issue it asserts is disputed.” Avia Group Int’l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1560 (Fed. Cir. 1988). Instead, the nonmoving party must provide “specific facts showing that there is a genuine issue for trial.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). The “mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment.” Anderson v. Liberty Lobby Inc., 477 U.S. 242, 247-48 (1986). Rather, a genuine issue of material fact exists “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Id. at 248. Accordingly, the main issue is “whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law.” Id. at 251-52.

V.

ARGUMENT A. Brief Summary of the Law of Design Patents

Design patents are issued to “[w]hoever invents any new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171; Static Control Components, Inc. v. Lexmark Int'l, Inc., 2012 U.S. App. LEXIS 18316, 81-82 (6th Cir. August 29, 2012) (citing Schnadig Corp. v. Gaines Mfg. Co., 494 F.2d 383, 387 (6th Cir. 1974) (“To be patentable a design must be new, original, ornamental and nonobvious.”)). By their nature, design

patents are narrow in scope and protect only the novel, non-functional aspects of an ornamental design. See In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) (stating “[d]esign patents have almost no scope”).
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As noted by the Federal Circuit in the seminal case of Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008), “[t]he starting point for any discussion of the law of design patents is the Supreme Court’s decision in Gorham Co. v. White, 81 U.S. 511 (1871).” Gorham articulated the “ordinary observer” test, which remains the proper standard for determining design patent infringement. Egyptian Goddess, 543 F.3d at 670. This test explains that, “[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 as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” Gorham, 81 U.S. at 528. According to the Federal Circuit, the ordinary observer test is not only the proper standard for infringement, but also the test for determining validity based on anticipation and obviousness. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009). Indeed, “[f]or design patents, the role of one skilled in the art in the obviousness context lies only in determining whether to combine earlier references to arrive at a single piece of art for comparison with the potential design or to modify a single prior art reference. Once that piece of prior art has been constructed, obviousness, like anticipation, requires application of the ordinary observer test, not the view of one skilled in the art.” Id.

B.

The ‘487 and ‘488 Patents are Invalid as a Matter of Law
1. Invalidity Over the Prior Art

All patents are presumed valid by statute, 35 U.S.C. Section 282, and questions of

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validity arising during enforcement are matters of law that may be determined on summary judgment. See Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 716 (Fed. Cir. 1991). The burden of overcoming the statutory presumption rests on the party asserting invalidity. Campbell v. Spectrum Automation Co., 513 F.2d 932, 935 (6th Cir. 1975). Furthermore, invalidity must be established by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P’ship, 131 S.Ct. 2238, 2243, 564 U.S. __ (2011). However, the burden of persuasion

associated with proving invalidity may be more easily met where a challenger relies on prior art not before the U.S. Patent and Trademark Office (USPTO) when granting the patent. Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 1423 (Fed. Cir. 1988). A patented invention may be held invalid if is it deemed “obvious” under Section 103(a) of the Patent Act, which provides: A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. “Section 103 applies to design patents in much the same manner as it applies to utility patents.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001); In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996) (“Design patents are subject to the same conditions on patentability as utility patents, including the nonobviousness requirement of 35 U.S.C. § 103.”) and 35 U.S.C. § 171 (“The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.”). The Federal Circuit recently reviewed the proper analysis for determining obviousness
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for the ornamental invention claimed in a design patent. Specifically, “[t]o determine whether one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design, the finder of fact must employ a two step process.” Apple, Inc. v. Samsung Electronics Co. Ltd., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (quoting Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996)). First, “one must find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design.” Durling, 101 F.3d at 103. Second, after a primary reference is found, other secondary references “may be used to modify the primary reference” if “they are so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other.” Id. (emphasis added). “Once that piece of prior art has been constructed” by one skilled in the art, only then does “obviousness, like anticipation, requires application of the ordinary observer test,” asking whether an ordinary observer would find the patented design substantially the same as the hypothetical prior art reference. Int’l Seaway, 589 F.3d at 1240. The determination that an invention would have been obvious under Section 103 is also a conclusion of law based on fact. Ryko, 857 F.2d at 1423. “Where there is no genuine issue regarding the underlying facts, summary judgment may be granted on the issue of obviousness even though the ultimate conclusion of obviousness may be disputed and even though some facts favor obviousness and some non-obviousness.” Semmler v. American Honda Motor Co., Inc., 990 F.Supp. 967, 974 (S.D. Ohio 1997) (citing Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757 (Fed. Cir. 1988)) (emphasis added).
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a)

The ‘488 Patent

In this case, the undisputed facts establish that at least three different pet football jerseys qualify as prior art and were not considered by the USPTO during prosecution of the ‘488 Patent. Two of these jerseys considered by this Court in finding the design of the ‘488 Patent “likely” invalid in denying Plaintiff’s request for a preliminary injunction are set out below, side-by-side with the corresponding image from the ‘488 Patent1: ‘488 Patent V2 Jersey Eagles Jersey

The V2 jersey shown above is a photograph of the actual embodiment of the V2 pet football jersey rather than the schematic diagram of the jersey that was submitted by Defendants in their memorandum in opposition to Plaintiff’s motion for preliminary injunction.

1

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In addition to the V2 jersey and the Eagles jersey previously reviewed by this Court and found to render the ‘488 Patent likely invalid, a third jersey known as the Sporty K9 jersey is shown below:

As discussed below in more detail, the Sporty K9 jersey is “prior art” and includes several key features of the jersey of the ‘488 Patent as well. Section 102 of the Patent Act articulates when a particular activity qualifies as “prior art” to a patent. Subsection 102(b) provides that: “A person shall be entitled to a patent unless – . . . (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date the application for patent in the United States.” 35 U.S.C. § 102(b). The “critical date” for purposes of the applicability of Section 102(b) is the “date exactly one year prior to the date of application for the patent . . . .” Scaltech, Inc. v. Retec/Tetra, LLC, 269 F.3d 1321, 1327 (Fed. Cir. 2001). As noted above, the application for the ‘488 Patent was filed with the USPTO on
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September 8, 2010. Thus, the “critical date” for determining invalidity is September 8, 2009. In other words, if any of the patent defeating activities set forth in Section 102(b), i.e., the invention was described in a printed publication or on sale in this country, occurred prior to September 8, 2009, then these activities may be relied upon to invalidate the ‘488 Patent. As previously discussed, the V2 jersey was developed by Hunter’s production team in 2008 and was sold in that same year. Thus, it is indisputably “prior art” under Section 102(b), and thus “prior art” for purposes of Section 103(a) as well. The V2 jersey includes: (1) a V-shaped opening having a collar portion for the neck of the pet; (2) two openings/sleeves with cuffs for two of the limbs of the pet which are stitched to the body of the jersey; (3) stitching between the sleeves; (4) two side portions extending from the sleeves to the bottom of the jersey; (5) the neck, sleeve and side portions of the jersey are made from a non-mesh material; and (6) the body of the jersey is made from a mesh material. Similarly, the claimed pet jersey has all these identical elements, including the V-shaped collar, two sleeves/openings stitched to the body of the jersey, two side portions extending to the bottom of the jersey and utilizing two different materials, i.e., a mesh material for the body and a non-mesh material for the neck, sleeves and side portions. Turning to the Eagles jersey, it was also developed and sold in the United States prior to the critical date for the ‘488 Patent. The Eagles jersey has the following features of the claimed design: (1) an opening having a collar portion for the neck of the pet; (2) two openings/sleeves with cuffs for two of the limbs of the pet which are stitched to the body of the jersey, the stitching extends to the neck portion of the jersey; (3) cross-stitching between
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the sleeves; (4) the neck and sleeve portions of the jersey are made from a non-mesh material; and (5) the body of the jersey is made from a mesh material. See ¶ 17, Docket No. 9. Again, the claimed jersey in the ‘488 Patent also includes these same elements, including an opening with a collar, two sleeves/openings stitched to the body of the jersey, a mesh material for the body and a non-mesh material for the neck and sleeve portions. Finally, the “Sporty K9” dog football jersey is the product of Sporty K9, Ltd., an Arizona corporation. This jersey was offered for sale in the United States, sold in the United States, described in a printed publication, and publicly known in the United States, at least as early as 2007. See Exhibit C. This jersey includes: (1) a V-shaped opening having a collar portion for the neck of the pet; (2) two openings/sleeves with cuffs for two of the limbs of the pet which are stitched to the body of the jersey; (3) seams between the sleeves and the body; (4) two side portions extending from the sleeves to the bottom of the jersey; (5) the neck, sleeve and side portions of the jersey are made from a non-mesh material, namely a polyester fabric; and (6) the body of the jersey is made from a mesh material. Similarly, the claimed pet jersey of the ‘488 Patent has all these identical elements, including the V-shaped collar, two sleeves/openings stitched to the body of the jersey, two side portions extending to the bottom of the jersey and utilizing two different materials, i.e., a mesh material for the body and a non-mesh material for the neck, sleeves and side portions. Accordingly, undisputed evidence confirms that the pet football jersey claimed in the ‘488 Patent is “basically the same” as the above-referenced prior art jerseys and, thus, renders the design claimed in the ‘488 Patent obvious. Specifically, each of the prior art
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references discussed above qualify as a single reference for which the design characteristics are “basically the same as the claimed design.” Indeed, the only modest difference between the V2 and Sporty K9 jerseys known in the art and the claimed jersey is the “surge stitching” along the sleeves including a horizontal “surge” stitch between the two sleeves on the front of the jersey and vertical “surge” stitching on the back of the jersey extending from the sleeves to the bottom of the jersey. However, as can be seen below, the Eagles jersey includes nearly identical “surge” stitching on the front, which is identical to that in the claimed jersey of the ‘488 patent.

Furthermore, the Eagles jersey also contains “surge” stitching on the back of the jersey following the contours of the seams in a manner substantially identical to the claimed jersey, with the exception of the vertical “surge” stitch extending from each of the sleeves to the bottom of the jersey along the corresponding seams.

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Nonetheless, the law holds that a design may be found obvious over a “primary reference” when other secondary references “are so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other.” Durling, 101 F.3d at 103. Here, taking the V2 jersey as the primary reference for the sake of argument, the Eagles jersey is clearly “so related” as to suggest the application of surge stitching to any material seams forming the body, as is done in the design of the ‘488 Patent. Taking the Eagles jersey as the primary reference instead, the V2 jersey is also so related to suggest the addition of a V-neck and non-mesh side panels. In any case, the end result is the same: the design of the ‘488 Patent is invalid as obvious. Alternatively, the differences between the claimed design and those in the prior art are, at best, trivial advances or minor differences that would be regarded as insignificant to an ordinary observer, as a matter of law. In Int’l Seaway, the patent owner pointed to four differences in the external features of a patented clog design and the prior art design, asserting that there were material fact issues as to these differences that should preclude
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summary judgment of invalidity. The Federal Circuit agreed with the district court that these “minor variations” were insufficient to preclude a finding of invalidity “because they do not change the overall visual impression of the shoe.” Id. at 1243 (emphasis added). The court further observed that: Although the ordinary observer test requires consideration of the design as a whole, . . . this does not prevent the district court on summary judgment from determining that individual features of the design are insignificant from the point of view of the ordinary observer and should not be considered as part of the overall comparison. The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. . . . Id. (emphasis added). As demonstrated above, no “significant” differences exist between the design of the ‘488 Patent and the pet football jerseys of the prior art. Stated another way, the addition of small amounts of surge stitching along two seams is insignificant from the point of view of the ordinary observer. Thus, this “minor or trivial” difference should not be considered as precluding a finding that the football jersey of the ‘488 Patent is invalid as a matter of law. In light of the foregoing, Defendants respectfully submit that the pet football jersey of the ‘488 Patent merely combines well known features of prior art jerseys in a way which would have been obvious to any designer of ordinary skill in the field of pet jerseys. Thus, the ‘488 Patent is invalid under 35 U.S.C. § 103(a) as a matter of law as being directed to an obvious design.

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b)

The ‘487 Patent

With respect to the ‘487 Patent directed to a baseball jersey for a dog, Defendants identify the baseball jersey (shown below) known as the “Sporty K9” baseball jersey. The “Sporty K9” dog baseball jersey was made by Sporty K9, Ltd., an Arizona corporation. This baseball jersey was offered for sale in the United States, sold in the United States, described in a printed publication, and publicly known in the United States, at least as early as 2007. See Exhibit C. Since this jersey precedes the “critical date” for the ‘487 Patent, the Sporty K9 baseball jersey qualifies as prior art and may be used to render the ‘487 Patent invalid as anticipated or obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains.

‘487 Patent

Sporty K9 Baseball Jersey

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As shown above, the Sporty K9 pet baseball jersey includes: (1) a V-shaped opening having a collar portion for the neck of the pet; (2) two openings/sleeves with cuffs for two of the limbs of the pet which are stitched to the body of the jersey; (3) a banded opening at the bottom of the jersey for the hind end portion of the pet; and (4) four buttons extending vertically down the center of the front of the jersey. Similarly, the claimed pet jersey has all these identical elements, including the V-shaped collar, two sleeves/ openings stitched to the body of the jersey, a banded opening at the bottom of the jersey for the hind end portion of the pet and four buttons extending vertically down the center of the front of the jersey. Defendants move this Court for judgment that the design of the ‘487 patent is anticipated under Section 102(b) by the Sporty K9 baseball jersey. While this jersey does not appear to be made of the same exact mesh material shown in the ‘487 Patent, this is a minor
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or trivial difference. Here, “taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. . . .,” they are substantially identical in all ways. Int’l Seaway, 589 F.3d at 1243 (emphasis added). The ornamentation of both to an ordinary observer is clearly that of a baseball jersey for a pet and, thus, the two designs are “basically the same.” Accordingly, the design claimed in the ‘487 patent is considered anticipated by the Sporty K9 baseball jersey, which is prior art under at least Section 102(b). Alternatively, as evidenced by the striking similarities with the pet baseball jersey shown in the ‘487 Patent, the Sporty K9 baseball jersey qualifies as a single reference for which the design characteristics are “basically the same as the claimed design.” Indeed, the only apparent difference between the Sporty K9 baseball jersey known in the art and the ‘487 Patent is the ‘487 Patent claims the jersey is made “primarily of a mesh fabric.” On the other hand, the Sporty K9 baseball jersey is made of a polyester fabric. Nonetheless, as demonstrated above, it was well known long prior to the time the ‘487 Patent was filed to use mesh material in pet jerseys. Indeed, all of the football jerseys cited herein by Defendants (which also qualify as prior art for the ‘487 Patent as it has the same filing date as the ‘488 Patent) are made of a mesh material. Thus, the use of a mesh material was not only suggested by the prior art, but also a trivial choice, and renders the design of the ‘487 patent obvious as a matter of law. In light of the foregoing, Defendants respectfully submit that as a matter of law, the ‘487 Patent is invalid as being directed to a design that is anticipated under 35 U.S.C. §
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102(b) or alternatively obvious under 35 U.S.C. § 103(a) in view of the prior art. Accordingly, summary judgment should be granted in Defendants’ favor. 2. Invalidity Under Section 112 of the Patent Act

To be valid, design patents must comply with the requirements of section 112 of the United States Patent Code. See 35 U.S.C. § 171. The first paragraph of Section 112 requires that a patent shall describe an invention “in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same.” 35 U.S.C. § 112(1) (emphasis added). Additionally, the second paragraph of Section 112 requires that the patent “specification shall conclude with one or more claims particularly pointing out and distinctively claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112(2). These requirements exist because, “[i]f the limits of a patent are not adequately defined, a zone of uncertainty is created which would discourage invention.” Semmler, 990 F.Supp. at 974 (citing Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)). A decision as to whether a claim is invalid as indefinite involves a determination of whether those skilled in the art would understand what is claimed. Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985) (claims must “reasonably apprise those skilled in the art” as to their scope and be “as precise as the subject matter permits.”). If the accused infringer “shows by clear and convincing evidence that a skilled artisan could not discern the boundaries of the claim based on the claim language, the specification and the prosecution history,” the claim is invalid. Halliburton Energy Services,
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Inc. v. M-I, LLC, 514 F.3d 1244, 1249-50 (Fed. Cir. 2008). The ‘488 Patent includes four figures, a written description, and a claim that limits the scope of the claimed design to require that “[t]he material of the football jersey is primarily of a mesh and interlock fabric.”2 However, the ‘488 Patent is silent regarding the location and appearance of any “interlock fabric.” No location is specified in the text of the specification, and such is not shown anywhere in the drawings. Thus, the ‘488 Patent cannot “reasonably apprise those skilled in the art” of the nature of the claimed ornamental design. Indeed, even Cohen as the alleged sole inventor of the design of the ‘488 Patent proffered sworn testimony in his deposition that “interlock fabric” is made of “a hundred percent polyester,” but admitted that “the interlock can be many different textures” and that he could not tell if something is made of interlock fabric without touching it. See Exhibit B. Accordingly, it is impossible for one skilled in the art to understand the nature and scope of what is claimed based on the specification and file history of the ‘488 Patent and no amount of discovery will lead to a different conclusion. As there can be no dispute that the ornamental appearance of the interlock fabric is not shown in the ‘488 Patent, it is invalid under Section 112 of the Patent Act as a matter of law, and summary judgment in favor of the Defendants is proper.
To the extent Plaintiff contends that the claim of the ‘488 Patent is limited only to that which is illustrated, the Manual of Patent Examining Procedure § 1504.04 provides “since the drawing disclosure and any narrative description in the specification are incorporated into the claim by the use of the language ‘as shown and described,’ any determination of the scope of protection sought by the claim is also a determination of the subject matter that must be enabled by the disclosure.”) (emphasis added); see also Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (holding that the language of the claim must be given effect for it “is that language that the patentee chose to use to particularly point out and distinctly claim the subject matter which the patentee regards as his invention.”).
2

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In addition, the ‘488 Patent violates Section 112 because it does not enable a skilled artisan how to make and use the claimed invention. Like the other grounds of invalidity, issues of enablement of a patent specification are questions of law based on the underlying facts. Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Here, it is indisputable that the ‘488 Patent fails to describe the location of the interlock fabric and its ornamental appearance. Specifically, such is entirely omitted from the specification and drawings of the ‘488 Patent. Thus, the ‘488 Patent cannot enable one to make the invention as claimed, since the location and ornamentation of the claimed interlock fabric is unknown (and impossible to ascertain from the specification). While there is a dearth of case law on the enablement requirement of Section 112 to design patents, the District Court of Delaware in Philco Corp. v. Admiral Corp., 199 F. Supp. 797 (D. Del. 1961), examined a design patent claiming an ornamental television receiver and determined it to be invalid as non-enabled because of inadequate disclosure. The design patent contained a single front perspective drawing of the TV receiver and stated that “the back is unornamented.” Id. at 800. In considering a claim that the design patent violated the strictures of Section 112, the court observed that: A design patent must disclose the configuration and complete appearance of the article in which the design is embodied so fully, clearly and with such certainty as to enable those skilled in the art to make the article without being forced to resort to conjecture. . . . Sufficient disclosure has been said to be the quid pro quo for the limited monopoly granted by the government. . . . Sufficient disclosure is also required so that the industry concerned will be apprised of the precise scope of the monopoly asserted.
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Id. at 801 (citing Universal Oil Products Co. v. Globe Oil & Refining Co., 322 U.S. 471 (1944)) (emphasis added). Due to the numerous potential configurations of a TV receiver’s back panel, the failure to disclose the shape of the back panel was a fatal error. Id. at 804. The court observed that “the overall aesthetic effect of what is shown in the ‘692 drawing cannot be known until a back has been chosen. This does not satisfy the disclosure requirements of Section 112. It fails to enable those skilled in the art to learn and practice the invention.” Id. (emphasis added). For similar reasons, the nature of the interlock fabric “cannot be known” from the ‘488 Patent as it is not shown and its location is not identified, so it likewise fails to satisfy the enablement requirement of Section 112. In light of the foregoing, the ‘488 Patent is invalid for being indefinite on at least two independent grounds for which there is no factual dispute. Accordingly, Defendants’ motion for summary judgment with respect to the ‘488 Patent should be granted.

VI.

CONCLUSION
For the foregoing reasons, Defendants are entitled to summary judgment on Plaintiff’s

claims for patent infringement of the ‘487 Patent and the ‘488 Patent. Respectfully submitted, /s/ Trevor T. Graves Andrew D. Dorisio (admitted pro hac vice) Trevor T. Graves (admitted pro hac vice) KING & SCHICKLI, PLLC 247 N. Broadway Lexington, Kentucky 40507 Telephone: (859) 252-0889
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/s/ Mark J. Murphy Mark J. Murphy Edward D. Manzo Nguyen S. Vo Husch Blackwell LLP 120 South Riverside Plaza Suite 2200

Case: 1:12-cv-00684-PAG Doc #: 42-1 Filed: 10/10/12 28 of 30. PageID #: 431

Facsimile: (859) 252-0779 Todd Tucker Nicholas J. Gingo
RENNER OTTO, BOISSELLE & SKLAR,LLP

Chicago, IL 60606 Telephone: 312-655-1500 Facsimile: 312-655-1501 John Brzytwa Matthew L. Snyder Brzytwa Quick & McCrystal LLC 1660 West Second Street 900 Skylight Office Tower Cleveland, Ohio 44113 Telephone: (216) 664-6900 Facsimile: (216) 664-6901 COUNSEL FOR DEFENDANT CDI INTERNATIONAL, INC.

19th Floor, 1621 Euclid Ave. Cleveland, Ohio 44115 Telephone: (216) 621-1113 Facsimile: (216) 621-6165 COUNSEL FOR DEFENDANT HUNTER MFG, LLP

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PAGE LIMIT CERTIFICATION Pursuant to L.R. 7.1(f), the undersigned counsel hereby certify that this case was assigned to the complex track and that this Memorandum in Support complies with the page limit requirements. s/ Trevor T. Graves COUNSEL FOR DEFENDANT HUNTER MFG, LLP s/ Mark J. Murphy COUNSEL FOR DEFENDANT CDI INTERNATIONAL, INC.

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CERTIFICATE OF SERVICE On October 10, 2012, the undersigned counsel hereby certify that a copy of the foregoing was filed electronically. Parties may access this filing through the Court’s system.

s/ Trevor T. Graves COUNSEL FOR DEFENDANT HUNTER MFG, LLP s/ Mark J. Murphy COUNSEL FOR DEFENDANT CDI INTERNATIONAL, INC.

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