Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 1 of 31.

PageID #: 679

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT
CIVIL ACTION NO. 1:12-CV-00684

IN THE UNITED STATES DISTRICT COURT FOR THE 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 PLAINTIFF’S MEMORANDUM IN OPPOSITION TO DEFENDANTS’ JOINT MOTION FOR SUMMARY JUDGMENT

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 2 of 31. PageID #: 680

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22

TABLE OF CONTENTS

Table of Contents.................................................................................................................... Table of Authorities................................................................................................................ I. II. III. IV. Statement of the Issues to be Decided ……………………………………………... Summary of the Argument …………………………………………………………. Statement of Facts ………………………………………………………………….. Law and Argument …………………………………………………………………. A. B. C. Summary Judgment Standard ……………………………………………… Patentability of Design Patents …………………………………………….. Validity of The '488 Patent Under 35 U.S.C. §103(a) ……………………... 1. 2. 3. 4. 5. 6. D. The Scope and Content of the Prior Art ……………………………. The Differences Between the Claimed Invention and the Prior Art .. The Level of Ordinary Skill in the Art ……………………………... Objective Evidence of Nonobviousness …………………………… Do the Graham Factors Support a Conclusion of Prima Facie Obviousness? ....……………………………………………………. Other Evidence Supporting a Conclusion of Non-Obviousness ……

i ii 1 1 1 8 8 8 8 10 11 17 18 18 19 21 25 26 27 27

Validity of The '487 Patent Under 35 U.S.C. §§102(b) and 103(a) ………... Validity of The '488 Patent Under 35 U.S.C. §112 …………………………

23 24 25 26 27 28 29 30 31 32 33 PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - i
CIVIL ACTION NO. 1:12-CV-00684

E. V.

Conclusion ………………………………………………………………………….

Page Limit Certification......................................................................................................... Certificate of Service..............................................................................................................

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 3 of 31. PageID #: 681

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

TABLE OF AUTHORITIES

Cases: Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365 (Fed. Cir. 2006) ……... Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) ………………………………. Apple, Inc. v. Samsung Electronics Co. Ltd., 678 F.3d 1314 (Fed. Cir. 2012) ………. Celotex Corp. v. Catrett, 477 U.S. 317 (1986) ………………………………………. Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) …………………. Graham v. John Deere Co., 383 U.S. 1 (1966) ………………………………………. 8 8 9 8 9 9-11, 1719, 22 In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012) …………………………………………………………… In re Cho, 813 F.2d 378 (Fed. Cir. 1987) ……………………………………………. In re Harvey, 12 F.3d 1061 (Fed. Cir. 1993) ………………………………………… In re Leslie, 547 F.2d 116 (CCPA 1977) ...................................................................... In re Jennings 182 F.2d 207 (CCPA 1950) .................................................................. In re Yardley, 493 F.2d 1389 (CCPA 1974) ................................................................. In re Nalbandian, 661 F.2d 1214 (CCPA 1981) ……………………………………... In re Rosen, 673 F.2d 388, 391 (CCPA 1982)............................................................... Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) ….. KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444 (Fed. Cir.1993). Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342 (Fed. Cir. 2012) …... KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 415 (2007) ……………………………. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993) …………... Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (1986) …………… Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012) ……………………... Petersen Mfg. Co. v. Central Purchasing, Inc., 740 F.2d 1541, 1548 (Fed. Cir. 1984) Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348 (Fed. Cir. 2007) …………………………. Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989 (Fed. Cir. 2009) ….. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628 (Fed. Cir. 1987) …….
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - ii
CIVIL ACTION NO. 1:12-CV-00684

10 18 10, 12 12 11 12 18 11 9 8 18 9 10, 17, 18 8 10 11 9 9 24

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 4 of 31. PageID #: 682

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

Statutes: 35 U.S.C. §102(b) ...…………………………………………………………………. 35 U.S.C. § 103(a) …………………………………………………………………… 21, 22, 24 1, 8, 9, 21, 22 35 U.S.C. §112 35 U.S.C. § 171 ………………………………………………………………………. 1, 25 8

Rules: Fed. R. Civ. P. 56 ……....…………………………………………………………….. 8

PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - iii
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 5 of 31. PageID #: 683

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

I.

STATEMENT OF THE ISSUES TO BE DECIDED Whether Defendants have proven by clear and convincing evidence, with all evidence of

record being construed most strongly in favor of Plaintiff, that U.S. Design Patent No. D 634,487 (the “‘487 Patent”) is invalid as a matter of law as being obvious over one or more of the prior art pet jerseys identified in Defendants' motion. Whether Defendants have proven by clear and convincing evidence, with such evidence being construed most strongly in favor of Plaintiff, that U.S. Design Patent No. D634,488 (the “‘488 Patent”) is invalid as a matter of law on any of the following grounds: (1) obviousness under 35 U.S.C. §103(a) over one or more of the prior art jerseys identified in Defendants' motion; (2) indefiniteness under 35 U.S.C. §112; and/or (3) non-enablement under 35 U.S.C. §112.

II.

SUMMARY OF THE ARGUMENT The evidence of record, when properly construed, demonstrates that Defendants have

failed to meet their burden to prove by clear and convincing evidence that the ‘487 Patent and the ‘488 Patent are invalid as a matter of law. On the contrary, the evidence of record establishes that both patents are valid and enforceable, and at the very least, that there are issues of material fact in dispute that preclude the entry of summary judgment in favor of defendants. Accordingly, Defendants’ Joint Motion for Summary Judgment should be denied.

III.

STATEMENT OF FACTS Plaintiff, MRC Innovations, Inc. ("MRC"), is an Ohio Corporation (Cohen Dec. at ¶2).

The letters "MRC" in MRC Innovations, Inc. are the initials of its principal shareholder, Mark R. Cohen ("Cohen") (Cohen Dec. at ¶2). MRC licenses Fun-In-Games, Inc. ("FiG") to manufacture and sell pet jerseys to third parties (Cohen Dec. at ¶3). Beginning on or about September of 2008, FiG began supplying pet jerseys to Defendant, Hunter MFG, LLP ("Hunter") (Cohen Dec. at ¶5). In most instances FiG supplied pet jerseys to Hunter in specified colors (Cohen Dec. at ¶5). Hunter would apply transfers to the pet jerseys for particular markets (e.g., red pet jerseys might be decorated with Ohio State logos or St. Louis Cardinals logos whereas orange pet jerseys might be decorated with Cleveland Browns logos or
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 1
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 6 of 31. PageID #: 684

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

Cincinnati Bengals logos). In some circumstances, FiG would apply the transfers and ship a finished product to Hunter (Cohen Dec. at ¶5). The pet jerseys initially supplied by FiG to Hunter were designed by Cohen and have been identified in this litigation as the "V2 Jersey" (Cohen Dec. at ¶6). "V2" stands for "Version 2", because this particular design of this pet jersey was a new design that replaced an earlier design for a pet jersey previously purchased by Hunter from other suppliers (Cohen Dec. at ¶6). A photograph depicting the front and back, respectively of a representative V2 Jersey is provided in Cohen Dec. at ¶7. The material of the V2 Jersey was primarily of a mesh and dazzle fabric (Cohen Dec. at ¶7). Dazzle fabric is well known to designers of ordinary skill in the art as being a type of polyester fabric that tends to be sleek and shiny, yet is soft and somewhat silky (Cohen Dec. at ¶7). Dazzle fabric is used in a variety of applications, including sports uniforms, baby carriages and car seats (Cohen Dec. at ¶7). Mesh fabric is also well known to designers of ordinary skill in the art as being a fabric having a large number of closely-spaced holes (i.e., any of the open spaces in a fabric and the material surrounding these spaces; an openwork fabric) (Cohen Dec. at ¶7). Mesh fabric is used in a variety of applications, including laundry bags and athletic jerseys (Cohen Dec. at ¶7). In the photo of the V2 Jersey shown above, the dazzle fabric appears shiny and slightly lighter in color than the mesh fabric (Cohen Dec. at ¶7). The V2 Jersey also featured a V-neck collar, banded arm holes and narrow panels of dazzle fabric that run from below each arm opening to the bottom of the pet jersey (Cohen Dec. at ¶8). Sales of the V2 Jersey by FiG to Hunter were modest (Cohen Dec. at ¶8). For a short period of time, FiG supplied a football jersey for a special NFL program to be offered by Hunter (Cohen Dec. at ¶9). A sample of such a jersey has been identified in the litigation as an "Eagles Jersey" (based on the presence of Philadelphia Eagles transfers that were applied to the jersey depicted in the photos below - jerseys of similar design were supplied by FiG in different colors and other NFL team transfers were applied to them by Hunter) (Cohen Dec. at ¶9). A photograph depicting the front and back, respectively of a representative Eagles Jersey is provided in Cohen Dec. at ¶9.

PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 2
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 7 of 31. PageID #: 685

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

The Eagles Jersey represented a substantially different design than the V2 Jersey (Cohen Dec. at ¶10). The material of the Eagles Jersey was primarily of a mesh and interlock fabric (Cohen Dec. at ¶10). No dazzle fabric was used at all in the Eagles Jersey at all (Cohen Dec. at ¶10). Interlock fabric is well known to designers of ordinary skill in the art as being a type of double-knit fabric in which the loops are locked to each other such that both faces of the fabric are substantially smooth and identical (Cohen Dec. at ¶10). Interlock fabric is used in a variety of applications, including T-shirts, sports uniforms and home furnishing products (Cohen Dec. at ¶10). The design of the V2 Jersey included a V-neck collar, whereas the design of the Eagles Jersey included a crew neck collar (Cohen Dec. at ¶11). The design of the V2 Jersey included dazzle fabric sleeves, whereas the design of the Eagles Jersey included interlock fabric sleeves (Cohen Dec. at ¶11). The design of the V2 Jersey included sleeves that are "drop sleeves", meaning that the sleeve seam drops from the neckline, where the design of the Eagles Jersey included "raglan-style sleeves", meaning that the sleeves are directly attached to the neckline (Cohen Dec. at ¶11). The design of the V2 Jersey included narrow panels of dazzle fabric that ran from below each arm opening to the bottom of the pet jersey, whereas the design of the Eagles Jersey included no such panels at all (Cohen Dec. at ¶11). The design of the V2 Jersey did not include any ornamental serge stitching, whereas the design of the Eagles Jersey included ornamental serge stitching (appears as wide lines formed of white thread in the photos) that extended from the crew neck in the front below each sleeve and to the rear of the crew neck and also horizontally across the chest and rear shoulders of the Eagles Jersey (Cohen Dec. at ¶11). In 2009, Cohen invented several new designs for pet jerseys (Cohen Dec. at ¶12). One such design has been referred to in this litigation as the "V3 Jersey" (Cohen Dec. at ¶12). "V3" stands for "Version 3", because the design of this pet jersey was a new design that replaced the V2 Jersey design previously purchased by Hunter from FiG (Cohen Dec. at ¶12). A photograph depicting the front and back, respectively of a representative V3 Jersey is provided in Cohen Dec. at ¶12. The V3 Jersey is a substantially different design than both the V2 Jersey and the Eagles Jersey (Cohen Dec. at ¶13). The material of the V3 Jersey is primarily of a mesh and interlock fabric. No dazzle fabric, which was used extensively in the V2 Jersey, was used in the V3 Jersey
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 3
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 8 of 31. PageID #: 686

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

at all (Cohen Dec. at ¶13). The design of the V3 Jersey includes raglan-style sleeves beneath which narrow panels of interlock fabric separating front and rear mesh panels extend to the bottom of the jersey (Cohen Dec. at ¶13). The design of the V2 Jersey included drop sleeves beneath which narrow panels of dazzle fabric separating front and rear mesh panels extended to the bottom of the Jersey (Cohen Dec. at ¶13). And, the design of the Eagles Jersey included raglan-style sleeves, but no narrow panels of interlock fabric between mesh front panels and rear panels (Cohen Dec. at ¶13). The design of the V3 Jersey includes ornamental serge stitching extending from the neckline underneath both sleeves, horizontally across the chest and back, and vertically on the back only between the narrow interlock fabric panel and the rear mesh panel (Cohen Dec. at ¶14). In contrast, the V2 Jersey did not include any ornamental serge stitching at all, and the Eagles Jersey did not include the vertical serge stitching on the back only (Cohen Dec. at ¶14). The ornamental serge stitching in the V3 Jersey is decorative and is provided over the stitching that binds together the respective mesh and interlock fabric panels that form the V3 Jersey (Cohen Dec. at ¶14). Hunter began purchasing the V3 Jersey from FiG sometime after September 8, 2009 (Cohen Dec. at ¶15). Hunter's president, Thomas Neth, testified that he believed Hunter's catalogs indicated that the V3 Jersey was a "new design." Q. A. Do you know if catalogs would indicate that the V3 was a new design? I believe it did, yes. [Neth Depo. at p. 89, excerpts attached hereto as Exhibit A]. Sales of the V3 Jersey supplied by FiG to Hunter increased appreciably by comparison to the V2 Jersey (Cohen Dec. at ¶15). On September 7, 2010, Cohen communicated to one of Hunter's principals, John T. Fitzgerald ("Fitzgerald"), that Cohen intended to file patent applications on his designs for pet jerseys that FiG was supplying to Hunter, including the V3 Jersey (Cohen Dec. at ¶16). On September 7, 2010, Fitzgerald (with a copy to the other principal of Hunter, Dan Campbell) sent

PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 4
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 9 of 31. PageID #: 687

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

an e-mail to Mark Cohen that referenced Cohen's intention to file patent applications (Cohen Dec. at ¶16). On September 8, 2010, Cohen filed a design patent application on the design of the V3 Jersey (Cohen Dec. at ¶17). The application was assigned U.S. Ser. No. 29/369,427, and included drawings that were prepared based on the V3 Jersey and were intended to match, exactly, the V3 Jersey FiG was supplying to Hunter (Cohen Dec. at ¶17). On that same date, Cohen also filed a design patent application on a design for a baseball jersey for a dog, which FiG was also supplying to Hunter at the time (Cohen Dec. at ¶18). The application was assigned U.S. Ser. No. 29/369,425, and included drawings that were prepared based on the baseball jerseys for a pet and were intended to match, exactly, the baseball jerseys for a pet that FiG was supplying to Hunter (Cohen Dec. at ¶18). In December of 2010, Hunter's president had a telephone conversation with Cohen, which included a discussion of Cohen's design patent applications (Neth Depo. at p. 56). The telephone conversation occurred because Hunter was slow in paying invoices for products that had been ordered by Hunter and then shipped by FiG to Hunter (Cohen Dec. at ¶19). During the telephone conversation, Cohen stated his intention to cease doing business with Hunter due to the slow pays and other issues (Cohen Dec. at ¶19). Notwithstanding the telephone conversation in December of 2010, FiG continued to ship pet jerseys to Hunter for several months thereafter (Cohen Dec. at ¶19). At some point thereafter, and without Cohen's knowledge or consent, Hunter sent a Request for Proposal ("RFP") to two companies requesting that they manufacture the V3 Jersey Cohen had designed and supplied to Hunter through FiG (Cohen Dec. at ¶20; Neth Depo. at pp. 68-71; and Casey Depo. at p. 10, excerpts attached hereto as Exhibit B). The RFP's included an actual sample of a V3 Jersey that had been produced by FIG and supplied to Hunter (Neth Depo. at p. 71; Casey Depo. at p. 10). Hunter sent the RFP's despite having been informed by Cohen that he was submitting patent applications covering the pet jerseys he had designed. Ultimately, Hunter elected to accept a bid submitted by Defendant, CDI International, Inc., to manufacture and supply V3 Jerseys to Hunter (Neth Depo. at p. 73). CDI has the V3 jerseys manufactured in China (Casey Depo. at p. 12).

PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 5
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 10 of 31. PageID #: 688

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

On March 15, 2011, U.S. Pat. No. D634,487 (hereinafter "the '487 Patent") issued to Cohen for the design of a Baseball Jersey for a Dog (Cohen Dec. at ¶21). On that same date, U.S. Pat. No. D634,488 (hereinafter "the '488 Patent") issued to Cohen for the design of a Football Jersey for a Dog (Cohen Dec. at ¶21). Cohen assigned both patents to MRC, which granted a license to FiG to produce V3 Jerseys and baseball jerseys for a dog as covered by the patents, reserving to MRC all rights to enforce the patents and to retain damages for infringement thereof (Cohen Dec. at ¶22). Thereafter, FiG began marking jerseys covered by the patents as required under 35 U.S.C. §282 (Cohen Dec. at ¶22). For example, V3 Jerseys FiG supplied to Hunter included a label that identified the product as patented and specifically identified the patent number (Cohen Dec. at ¶22). A photograph of such a label in a V3 Jersey supplied by FiG to Hunter is shown in Cohen Dec. at ¶22. After issuance of the '487 Patent and the '488 Patent, Hunter continued to buy V3 Jerseys from FiG (Cohen Dec. at ¶23). No baseball jerseys for a dog were purchased by Hunter from FiG after the issuance of the '487 Patent (Cohen Dec. at ¶23). Thus, there were no baseball jerseys for a dog in the market that bore a label with the patent number at the time the present litigation commenced (Cohen Dec. at ¶23). Unbeknownst to MRC, and without Cohen's

knowledge or consent, Hunter was also buying V3 Jerseys and baseball jerseys for a dog from CDI (Cohen Dec. at ¶23; Neth Depo. at pp. 75-76). CDI copied the V3 Jersey designed by Cohen so well that it is nearly impossible to differentiate a V3 Jersey supplied by FiG to Hunter from a V3 Jersey supplied by CDI to Hunter (Cohen Dec. at ¶24). Although Hunter's president, Neth, denied under oath that the V3 Jerseys supplied by CDI were copies of V3 Jerseys supplied by FIG, Neth could not tell them apart when asked to do so [Neth Depo: pages 74-84]. Cohen also could not tell them apart (Cohen Dec. at ¶24). And CDI's representative, Denis Casey, testified that it would be difficult for him to do so too (Case Depo. at p. 17). By December of 2011, FiG had stopped shipping V3 Jerseys to Hunter (Cohen Dec. at ¶25). Cohen expected that many of the V3 Jerseys and perhaps some of the baseball jerseys for a dog that FiG had supplied to Hunter were likely still in Hunter's inventory, and would continue to appear on the shelves of retailers for some time (Cohen Dec. at ¶25). Several months after
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 6
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 11 of 31. PageID #: 689

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

FiG stopped shipping V3 Jerseys and baseball jerseys for a dog to Hunter, Cohen began to suspect, but could tell for certain, that some of the V3 Jersey products appearing in the marketplace were being supplied to Hunter by someone other than FiG (i.e., more than just remaining inventory of product previously shipped by FiG to Hunter) (Cohen Dec. at ¶25). Cohen eventually found a product with a manufacturing date later than the issue date of the '488 Patent, which did not bear the design patent number (Cohen Dec. at ¶25). Cohen thereafter determined that CDI was supplying V3 Jersey to Hunter (Cohen Dec. at ¶25). A copy of a V3 Jersey manufactured by CDI is shown in Cohen Dec. at ¶25. The V3 Jersey manufactured by CDI appears substantially the same as the drawing figures accompanying the '488 Patent to an ordinary observer (Cohen Dec. at ¶26). MRC filed suit against both Defendants for infringement of the '487 Patent on March 20, 2012. It was only after discovery commenced in this case that MRC obtained information establishing that CDI was also supplying Hunter with baseball jerseys for a dog that were produced from samples of baseball jerseys for a dog previously supplied by FiG to Hunter (Cohen Dec. at ¶27). Again, the version of the baseball jersey for a dog produced by CDI for Hunter is so similar to the version that FiG supplied to Hunter that the two products cannot be readily be distinguished from each other upon ordinary examination (Cohen Dec. at ¶27). Once MRC determined that CDI was supplying Hunter with baseball jerseys for a dog, MRC amended its complaint to assert claims for infringement of the '487 Patent. As of May of 2012, Neth testified that Hunter was continuing to sell its remaining inventor of V3 Jerseys that had previously been supplied to Hunter by FiG, which include labels indicating that the product is covered by the '487 Patent (Neth Depo. at pp. 61-63). In their answers to MRC's first set of interrogatories served on May 2, 2012, CDI and Hunter indicated that a very large quantity of V3 Jerseys have been produced by CDI, most of which have been delivered to Hunter and sold by Hunter to retailers, without a license from MRC, and without any royalties or other compensation having been paid to MRC. Defendants designated the actual quantity of V3 Jerseys produced and sold as "Confidential - Attorney's Eyes Only" in their answers to MRC's first set of interrogatories, and have not provided MRC with the exact quantity of V3 Jerseys that have been made and sold to date, nor have they provided MRC with the number of baseball jerseys for a dog that have been produced by CDI and sold by Hunter.
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 7
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 12 of 31. PageID #: 690

1 2

IV.

LAW AND ARGUMENT A. Summary Judgment Standard

3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22

In deciding a summary judgment motion, a Court must view the evidence in the light most favorable to the non-moving party and draw all justifiable inferences in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). "The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The moving party bears the initial burden of demonstrating the absence of a genuine issue of fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the moving party meets its initial responsibility, the burden then shifts to the opposing party to establish that a genuine issue as to any material fact exists. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). A factual issue is "genuine" when there is sufficient evidence such that a reasonable trier of fact could resolve the issue in the nonmovant's favor, and an issue is "material" when its resolution might affect the outcome of the suit under the governing law. Anderson, 477 U.S. at 248. B. Patentability of Design Patents

Under 35 U.S.C. § 171, "[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 of this title." 35 U.S.C. § 171. "A design patent protects the nonfunctional aspects of an ornamental design as seen as a whole and as shown in the patent." Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2006) (quoting KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir.1993)).

23 24 25 26 27 28 29 30 31 32 33 PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 8
CIVIL ACTION NO. 1:12-CV-00684

C.

Validity of The '488 Patent Under 35 U.S.C. §103(a)

On pages 10-16 of their Memorandum in Support of Defendants' Joint Motion for Summary Judgment, Defendants argue that the '488 Patent should be declared invalid under 35 U.S.C. §103(a) as being obvious in view of the V2 Jersey, the Eagles jersey and/or the Sporty K9 jersey. However, Defendants thereafter failed to provide the Court with the evidence or analysis required to make a proper obviousness determination in accordance with U.S. patent law.
RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 13 of 31. PageID #: 691

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

A patent is obvious, and, therefore, invalid "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." 35 U.S.C. § 103(a). Obviousness is a question of law based on underlying factual findings: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). A party seeking to invalidate a patent on the basis of obviousness must "demonstrate 'by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.'" Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). While an analysis of any teaching, suggestion, or motivation to combine elements from different prior art references is useful in an obviousness analysis, the overall inquiry must be expansive and flexible. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 415, 419 (2007). In determining obviousness for the ornamental invention claimed in a design patent, the Federal Circuit stated that “[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, 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. “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 Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009).
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 9
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 14 of 31. PageID #: 692

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

The Court of Appeals for the Federal Circuit has further explained that the obviousness inquiry requires examination of all four Graham factors. See, e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1375 (Fed. Cir. 2012). Indeed, the Court has held that District Courts must consider all of the Graham factors prior to reaching a conclusion with respect to obviousness. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1076-77 (Fed. Cir. 2012) (collecting cases). At all times, the burden is on the defendant to establish by clear and convincing evidence that the patent is obvious. Id. at 1077-78. In their joint motion for summary judgment, Defendants did not provide the Court with any examination or analysis of the Graham factors. Plaintiff respectfully submits that when a proper analysis is conducted and the evidence of record is construed most strongly in Plaintiff's favor as required, Defendants have failed to meet their burden to establish by clear and convincing evidence that the '488 Patent is obvious. 1. The Scope and Content of the Prior Art

The first consideration in a Graham factors obviousness analysis, namely the scope and content of the prior art, is based on "whether there is a reference to something in existence, the design characteristics of which are basically the same as the claimed design." L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed. Cir. 1993) (internal citations omitted). The prior art references may take the form of other patents, printed publications, or actual items which were in public use more than one year prior to the contested patent application. In re Harvey, 12 F.3d 1061, 1065 (Fed. Cir. 1993). Such references must have existed at the time of invention, and hindsight may not be used to determine that the challenged design was obvious. Id. Moreover, in conducting this analysis, the court must look at the design as a whole, rather than merely referencing its component parts. Id. If the prior art merely suggests "components of the [challenged] design, but not its overall appearance, an obviousness rejection is inappropriate." Id. at 1063. In their motion, Defendants identify three prior art references, namely the V2 Jersey, the Eagles Jersey and the Sporty K9 Jersey. The V2 Jersey and the Eagles Jersey were previously identified and discussed in the "Facts" portion of this Memorandum and in the Declaration of Mark Cohen. Unfortunately, Defendants provided very little information regarding the Sporty
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 10
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 15 of 31. PageID #: 693

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

K9 Jersey in their joint motion for summary judgment. For the benefit of the Court, Plaintiff obtained and enlarged a photograph of a Sporty K9 Jersey (football version) from the company's website, which is reproduced in Cohen Dec. at ¶28. The photograph of the Sporty K9 Jersey appears to be the same as the photograph that appears in the Sporty K9 brochure attached as Exhibit 1 to the Declaration of Sharon Kelly (Doc # 42-4 - see page 4 of 5 top right corner) (Cohen Dec. at ¶29). The Sporty K9 brochure states that the Sporty K9 Jersey (football version) is "Made of polyester fabric and mesh, rib trim and v-neck." (Cohen Dec. at ¶29). The photograph above shows that the polyester fabric has a shiny appearance, from which one can reasonably draw an inference that it is made of dazzle fabric, and not interlock fabric (Cohen Dec. at ¶29). In any event, Defendants did not provide any information about the fabric used in the Sporty K9 Jersey beyond that it is made of polyester, which is consistent with dazzle fabric (Cohen Dec. at ¶29). Defendants contend that the V2 Jersey, the Eagles Jersey and the Sporty K9 Jersey can all be considered as something in existence, the design characteristics of which are "basically the same" as the claimed design. As will be pointed out in detail below, Defendants' contention is completely without merit. 2. The Differences Between the Claimed Invention and the Prior Art

The second consideration in the Graham factors analysis is the difference, if any, between the prior art and the claimed invention. When analyzing this factor, courts may

consider "opinion testimony by experts concluding that an invention would or would not have been obvious." Petersen Mfg. Co. v. Central Purchasing, Inc., 740 F.2d 1541, 1548 (Fed. Cir. 1984). However, such opinions do not necessarily preclude the grant of summary judgment against the offering party because the obviousness of a design is a question of law for the court to resolve. Id. As a whole, a design must be compared with something in existence, and not something brought into existence by selecting and combining features from prior art references. In re Jennings, 182 F.2d 207 (CCPA 1950). The “something in existence” referred to in Jennings has been defined as “...a reference... the design characteristics of which are basically the same as the claimed design....” In re Rosen, 673 F.2d 388, 391 (CCPA 1982) (the primary reference did
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 11
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 16 of 31. PageID #: 694

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

“...not give the same visual impression...” as the design claimed but had a “...different overall appearance and aesthetic appeal...”.). Hence, it is clear that “design characteristics” means overall visual appearance. This definition of “design characteristics” is reinforced in the decision of In re Harvey, 12 F.3d 1061, 1063 (Fed. Cir. 1993), and is supported by the earlier decisions of In re Yardley, 493 F.2d 1389 (CCPA 1974) and In re Leslie, 547 F.2d 116 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93. Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. In re Harvey, 12 F.3d 1061 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103(a) can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art. The following drawing composite identifies differences between the claimed design and the V2 Jersey (Cohen Dec. at ¶30):

PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 12
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 17 of 31. PageID #: 695

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

Plaintiff has added red arrows to the figures showing the front and back of the design claimed in the '488 Patent. Arrow "A" points to an interlock fabric panel that is present in the claimed design, which is not present in the V2 Jersey (Cohen Dec. at ¶30). As noted above, the panel in the V2 Jersey is made of dazzle fabric, which provides a different ornamental appearance (it is shiny) (Cohen Dec. at ¶30). Arrow "B" points to ornamental serge stitching, which appears on the front of the claimed design and which is not present in the V2 Jersey (Cohen Dec. at ¶30). Arrow "C" points to ornamental serge stitching, which appears on the rear of the claimed design and which is not present in the V2 Jersey (Cohen Dec. at ¶30). Arrow "D" points to the raglan-style sleeves in the claimed design, which are different than the drop sleeves
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 13
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 18 of 31. PageID #: 696

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

in the V2 Jersey (Cohen Dec. at ¶30). The V2 Jersey thus clearly does not exhibit design characteristics of which are basically the same as the claimed design, as asserted by Defendants (Cohen Dec. at ¶30). The following drawing composite identifies differences between the claimed design and the Eagles Jersey (Cohen Dec. at ¶31):

PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 14
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 19 of 31. PageID #: 697

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

Again, Plaintiff has added red arrows to the figures showing the front and back of the design claimed in the '488 Patent. Arrow "A" points to an interlock fabric panel that is present in the claimed design, which is not present in the Eagles Jersey (Cohen Dec. at ¶32). Arrow "B" points to a V-neck collar, which is present in the claimed design and which is not present in the Eagles Jersey (Cohen Dec. at ¶32). The design of the Eagles Jersey features a crew neck (Cohen Dec. at ¶32). Arrow "C" points to a vertical line of ornamental serge stitching, which appears on the rear of the claimed design and which is not present in the Eagles Jersey (Cohen Dec. at ¶32). The Eagles Jersey thus clearly does not exhibit design characteristics of which are basically the same as the claimed design, as asserted by Defendants (Cohen Dec. at ¶32). The following drawing composite identifies differences between the claimed design and the Sporty K9 Jersey (Cohen Dec. at ¶33):

PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 15
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 20 of 31. PageID #: 698

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 16
CIVIL ACTION NO. 1:12-CV-00684

Again, Plaintiff has added red arrows to the figures showing the front and back of the design claimed in the '488 Patent. Arrow "A" points to an interlock fabric panel that is present in the claimed design, which is not present in the Sporty K9 Jersey (Cohen Dec. at ¶34). As noted above, the panel in the Sporty K9 Jersey appears to be made of dazzle fabric, which provides a different ornamental appearance (it is shiny) (Cohen Dec. at ¶34). Arrow "B" points to

ornamental serge stitching, which appears on the front of the claimed design and which is not present in the Sporty K9 Jersey (Cohen Dec. at ¶34). Arrow "C" points to ornamental serge stitching, which appears on the rear of the claimed design and which is not present in the Sporty
RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 21 of 31. PageID #: 699

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

K9 Jersey (Cohen Dec. at ¶34). Arrow "D" points to the raglan-style sleeves in the claimed design, which are different than the drop sleeves in the Sporty K9 Jersey (Cohen Dec. at ¶34). The Sporty K9 Jersey thus clearly does not exhibit design characteristics of which are basically the same as the claimed design, as asserted by Defendants (Cohen Dec. at ¶34). In view of the foregoing, Plaintiff respectfully submits that Defendants have failed to identify “something in existence” "the design characteristics of which are basically the same as the claimed design” as required to support a contention that the claimed design would have been obvious to one having ordinary skill in the art. Each of the jerseys identified as prior art by Defendants present a different overall visual appearance, which is not substantially the same as the claimed design. Accordingly, no holding of obviousness under 35 U.S.C. 103(a) can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art. 3. The Level of Ordinary Skill in the Art

The third consideration in the Graham factors analysis is the level of ordinary skill in the art that someone would have claimed at the time of the invention. For design patents,

obviousness is determined from the vantage of the "designer of ordinary skill or capability in the field to which the design pertains." L.A. Gear, 988 F.2d at 1124. Defendants have not presented any evidence whatsoever regarding what capabilities are possessed by a designer of ordinary skill or capability in the field of designing pet jerseys. Thus, there is no evidence upon which the Court can determine the level of ordinary skill in the art and thus no basis upon which the Court can grant Defendants' joint motion for summary judgment. Despite the complete absence of such evidence, Defendants argue to the Court that a designer having ordinary skill in the art would have been motivated to arrive at the claimed design in view of the V2 Jersey, the Eagles Jersey and the Sporty K9 Jersey. Plaintiff notes that Defendants' argument, without evidence from a designer, is not evidence and cannot be relied upon to support a motion for summary judgment. Furthermore, applicable law states that when the patented design constitutes a combination of selected elements in the prior art, a holding of obviousness requires that there be some teaching or suggestion whereby it would have been obvious to a designer of ordinary skill to make the particular selection and combination made by
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 17
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 22 of 31. PageID #: 700

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22

the patentee. In re Cho, 813 F.2d 378, 382 (Fed. Cir. 1987). A reconstruction of known elements does not invalidate a design patent, absent some basis whereby a designer of ordinary skill would be led to create this particular design. L.A. Gear, 988 F.2d at 1124. As noted, Defendants have not produced any evidence from any designer that states that it would have been obvious to a designer of ordinary skill to make the football jersey for a dog as claimed in the '488 Patent in view of any of the prior art pet jerseys of record. 4. Objective Evidence of Nonobviousness

Finally, the fourth consideration in the Graham factors obviousness analysis is whether there are any objective indicia of nonobviousness. In the present case, there are at least three recognized indicia of nonobviousness, namely: (1) commercial success; (2) copying; and (3) acceptance by others. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1367 (Fed. Cir. 2012). First, the evidence of record establishes that sales of the V3 Jersey, which embody the patented design, have been more successful on a commercial basis than the design of the V2 Jersey it replaced (Cohen Dec. at ¶15). Second, the evidence of record establishes that Hunter and CDI chose to copy the V3 Jersey, which embodies the patented design, rather than to select another design or create another design (Cohen Dec. at ¶26; Neth Depo. at pp. 68-71; and Casey Depo. at p. 10). Third, the evidence of record establishes that MRC has granted a license under the '488 Patent to an entity that is not wholly owned by MRC or its principals (Cohen Dec. at ¶25). This objective evidence further supports a conclusion that the claimed design is not obvious in view of the prior art of record. 5. Do the Graham Factors Support a Conclusion of Prima Facie Obviousness?

23 24

Once the factual inquiries mandated under Graham have been made, the Court must
25 26 27 28 29 30 31 32 33 PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 18
CIVIL ACTION NO. 1:12-CV-00684

determine whether they support a conclusion of prima facie obviousness. In determining prima facie obviousness, the proper standard is whether the design would have been obvious to a designer of ordinary skill with the claimed type of article. In re Nalbandian, 661 F.2d 1214 (CCPA 1981).

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 23 of 31. PageID #: 701

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22

As noted above, none of the prior art references cited by Defendants exhibit design characteristics of which are basically the same as the claimed design. And Defendants have not presented any evidence whatsoever from a designer suggesting that modifications to such prior art references would have been obvious to a designer having ordinary skill in the art. Moreover, Plaintiff notes that there are no prior references of record that teach or depict at least two design characteristics of the claimed design, namely: (1) the narrow side panels made of interlock fabric disposed between front and back mesh panels (see Arrow "A" in each the comparison images previously set forth above); and (2) the portion of the serge stitching running down back between mesh fabric and interlock fabric panel (see Arrow "C" in each of the comparison images previously set forth above) (Cohen Dec. at ¶s 30-34). The portion of the ornamental serge stitching on the back of the football jersey for a dog as shown and described in the '488 Patent is simply not present in any reference of record. And, the only prior art references of record that show narrow side panels disposed between front and back mesh panels are made of dazzle fabric rather than interlock fabric. Therefore, no single prior art reference creates the same overall visual appearance as the claimed design of the ‘488 Patent. Thus, even if the Court entertains the Defendants' combination of references, which is improper under a Graham factors obviousness analysis, the resulting combination of references still would not establish a prima facie case of obviousness. There simply is no possible way to combine the reference teachings to arrive at the design claimed in the '488 Patent, and thus Defendants have not carried their burden of proof to establish obviousness by clear and convincing evidence. 6. Other Evidence Supporting a Conclusion of Non-Obviousness

23 24 25 26 27 28 29 30 31 32 33

Although Defendants did not provide any testimony from a designer that the design claimed in the '488 Patent would have been obvious to a designer having ordinary skill in the art in view of the prior art of record at the time of Cohen's invention, Plaintiff has presented testimony from a designer, namely Cohen, who states that the design as claimed in the '488 Patent would not have been obvious to a designer having ordinary skill in the art in view of the prior art of record at the time of Cohen's invention (Cohen Dec. at ¶s 30-34). Plaintiff

acknowledges that the Court is permitted to give little weight to such testimony because of
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 19
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 24 of 31. PageID #: 702

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

Cohen's interest in the litigation, but Plaintiff notes that Cohen's testimony is supported by recent developments in the U.S. Patent Office. On October 17, 2011, Cohen filed an application for a design patent on a hockey jersey for a dog (Cohen Dec. at ¶35). Design patent applications are not made available to the public until the date of issue, and thus the prosecution history for the hockey jersey for a dog was previously produced to Defendants marked as "confidential" (Cohen Dec. at ¶35). However, inasmuch as a patent is about to issue on the design, plaintiff has not filed the prosecution history of the hockey jersey under seal and no longer regards such information as confidential. In view of the Defendants' invalidity contentions in this case, Cohen identified the V2 Jersey (in the form of pages from the Hunter catalog depicting the same and a designer specification sheet), the V3 Jersey (in the form of the '488 Patent), the Eagles Jersey (in the form of the same photographs as presented in this litigation) and other known prior art to the U.S. Patent Office in Information Disclosure Statements (Cohen Dec. at ¶36). The U.S. Patent Examiner, who is trained to make obviousness determinations in design patent cases and thus qualifies as an expert in the field, issued a Notice of Allowance in the hockey jersey for a dog design patent application on November 15, 2012 (Cohen Dec. at ¶36). The U.S. Patent Examiner did not assert that the design of a hockey jersey for a dog as shown in the above drawing figures was obvious in view of the V2 Jersey, the Eagles Jersey and the design for a football jersey for a dog as shown and described in the '488 Patent (Cohen Dec. at ¶36). Plaintiff submits that this strongly supports the conclusion that the design for a football jersey for a dog as shown and described in the '488 Patent would not have been obvious to one having ordinary skill in the art in view of the V2 Jersey and the Eagles Jersey, as argued by Defendants. Clearly, in this particular field of art, subtle differences are deemed to affect the overall appearance of a design. Exhibit A attached to the Declaration of Cohen consists of selected copies of prior art patent references cited by the Examiner during prosecution of the design patent application for a hockey jersey for a dog (Cohen Dec. at ¶37). The Court should take notice of the similarities between patented designs and the subtle differences therebetween, which is evidence that seemingly minor design differences are regarded as engendering patentable designs in this particular field of art. They are not generally regarded as being "trivial" differences, as suggested by Defendants.
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 20
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 25 of 31. PageID #: 703

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23

In their motion, Defendants make reference to a line in the Court's prior ruling on Plaintiff's Motion for Preliminary Injunction, wherein the Court stated that "[...] the likely result in this litigation is that the '488 Patent is invalid under 35 U.S.C. §103." (see Doc #: 30, page 11, line 8). Defendants do not make reference to a later portion of the Court's prior ruling, which clarified that the ruling was made in the context of a motion for preliminary injunction: Accordingly, the materials before the Court on this motion for a preliminary injunction indicate that the prior art jerseys in Exhibits 2 and 4-6 have a substantially similar overall appearance and design as the patented jersey such that the patented design appears to be obvious under 35 U.S.C. § 103. MRC has not persuasively distinguished the “overall design” of its patented design from the prior art pet jerseys. Accordingly, MRC has not met its burden at this preliminary injunction stage of persuading the Court that is has a likelihood of success on the merits. Rather, at this preliminary injunction stage, a likelihood of success on the merits of MRC’s patent infringement claim is lacking because the patented design appears obvious in light of prior art under 35 U.S.C. §103. (Doc #: 30, page 13, lines 5-13) The Court now has the benefit of a full record and additional evidence that was not presented with the motion for preliminary injunction. Furthermore, the burden of proof is no longer upon Plaintiff to establish a reasonable likelihood of success on the merits, but rather is upon Defendants to establish that the '488 Patent is invalid under 35 U.S.C. §103(a) by clear and convincing evidence, with all evidence of record being construed most strongly in favor of Plaintiff. Defendants clearly cannot meet this burden, and their joint motion should be denied.

D.

Validity of The '487 Patent Under 35 U.S.C. §§102(b) and 103(a)

On pages 17-20 of their Memorandum in Support of Defendants' Joint Motion for
24

Summary Judgment, Defendants argue that the '487 Patent should be declared invalid under 35
25 26 27 28 29 30 31 32 33 PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 21
CIVIL ACTION NO. 1:12-CV-00684

U.S.C. §102(b) as being anticipated by or, alternative, under 35 U.S.C. §103(a) as being obvious in view of, a baseball jersey for a dog shown in a 2007 Sporty K9 brochure attached as Exhibit 1 to the Declaration of Sharon Kelly. Again, Defendants thereafter failed to provide the Court with the evidence or analysis required to make a proper obviousness determination in accordance with U.S. patent law.
RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 26 of 31. PageID #: 704

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

In their motion, Defendants again provided very little information regarding the Sporty K9 Jersey (baseball version) in their joint motion for summary judgment. For the benefit of the Court, Plaintiff obtained and enlarged photograph of a Sporty K9 Jersey (baseball version) from the company's website, which is reproduced in Cohen Dec. at ¶38. The photograph appears to be the same as the photograph provided in the Sporty K9 brochure attached as Exhibit 1 to the Declaration of Sharon Kelly (Doc # 42-4 - see page 4 of 5 top left corner) (Cohen Dec. at ¶39). The Sporty K9 brochure states that the Sporty K9 Jersey (baseball version) is "Made of polyester fabric rib trim v-neck and side panels with faux t-shirt, velcro [®] closure and button trim" (Cohen Dec. at ¶39). Defendants contend that the Sporty K9 Jersey (baseball version) can be considered as something in existence, the design characteristics of which are "basically the same" as the claimed design, both from an anticipation perspective under 35 U.S.C. §102(b) and from an obviousness perspective under 35 U.S.C. §103(a). As pointed out in detail below, Defendants' contention is completely without merit. Again, in an effort to comply with the mandated Graham factors analysis, Plaintiff has created an image that compares the patented design as claimed in the '487 Patent with the Sporty K9 Jersey (baseball version) as shown above (Cohen Dec. at ¶40):

PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 22
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 27 of 31. PageID #: 705

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

Again, Plaintiff has added red arrows to the figures showing the front and back of the design claimed in the '487 Patent. Arrow "A" points to v-neck collar that is present in the claimed design, which is very different than the collar assembly in the Sporty K9 Jersey (baseball version), which appears to consist of a faux t-shirt portion having a crew neck that
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 23
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 28 of 31. PageID #: 706

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

underlies a second collarless portion (Cohen Dec. at ¶40). Arrow "B" points to the mesh fabric from which the design claimed in the '487 Patent is made, which is different than the polyester fabric of the Sporty K9 Jersey (baseball version) (Cohen Dec. at ¶40). Arrow "C" points to the comparatively wide difference between the length of the front of the jersey as compared to the length of the rear of the jersey in the design claimed in the '487 Patent, which is different than the comparatively narrow difference in such lengths in the Sporty K9 Jersey (baseball version) (Cohen Dec. at ¶40). The Sporty K9 Jersey (baseball version) is thus much more "tubular" when donned by a dog as compared to the design shown in the '487 Patent (Cohen Dec. at ¶40). Finally, Arrow "D" points to the faux t-shirt portion of the Sporty K9 Jersey (baseball version), which is not present at all in the design claimed in the '487 Patent (Cohen Dec. at ¶40). It is well-settled that a claim is anticipated "only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Because there are substantial differences between the claimed design and the prior art cited by Defendants, there can be no finding that the design claimed in the '487 Patent is anticipated under 35 U.S.C. §102(b). Clearly, Defendants have failed to identify “something in existence” "the design characteristics of which are basically the same as the claimed design” as required to support a contention that the claimed design would have been obvious to one having ordinary skill in the art. The Sporty K9 Jersey (baseball version) identified as prior art by Defendants presents a different overall visual appearance, which is not substantially the same as the claimed design (Cohen Dec. at ¶s39-40). Furthermore, Defendants have not provided any evidence from any designer having ordinary skill in the art that would suggest that the design should be modified so as to have the ornamental appearance of the design claimed in the '487 Patent. And, as in the case of the prior analysis of the design claimed in the '488 Patent, there is at least one piece of objective evidence of non-obviousness, namely the copying of the design by Defendants. In view of the foregoing, and upon consideration of the Graham factors, Defendants' motion for summary judgment should be denied.

PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 24
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 29 of 31. PageID #: 707

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

E.

Validity of The '488 Patent Under 35 U.S.C. §112

On pages 20-23 of their Memorandum in Support of Defendants' Joint Motion for Summary Judgment, Defendants argue that the '488 Patent should be declared invalid under 35 U.S.C. §112, first and second paragraphs. Defendants' argument rests entirely on the dubious propositions that (1) the '488 Patent fails to identify the location of the interlock fabric used in the design; and (2) that a designer having ordinary skill in the art would not know what interlock fabric is. What should be readily apparent to the Court is that Defendants failed to present any testimony from any designers having ordinary skill in the art on either of these two propositions for which Defendants bear a burden of proof by clear and convincing evidence. Cohen, who is a designer having ordinary skill in the art, has declared that any designer having such skill would readily appreciate that the areas in the drawings of the '488 Patent that are shown with grid lines indicate that such areas would be constructed of mesh fabric, and that the panels shown without such grid lines would be constructed of interlock fabric (Cohen Dec. at ¶17). And Cohen's position is supported by none other than the testimony of Hunter's president himself, who while not being a designer, readily identified during his deposition what portion of the drawing figures accompanying the '488 Patent constituted mesh (and by process of elimination, what portion would constitute interlock fabric): Q: A: [...] Can you identify in the figures accompanying the 488 patent what is mesh? The area that looks like a grid. (Neth Depo at p. 66)

Furthermore, Cohen has testified that any designer of ordinary skill in the art would readily understand and appreciate what is meant by the term interlock fabric (Cohen Dec. at ¶10). Thus, there is no evidence of record supporting Defendants' contentions, and a wealth of evidence, which must be construed in favor of Plaintiff, that the '488 Patent includes information sufficient for one having ordinary skill in the art to construct a football jersey for a dog in accordance with the claimed design and to readily ascertain whether a football jersey for a dog infringes the claimed design.
PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 25
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 30 of 31. PageID #: 708

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

V.

CONCLUSION For the reasons set forth above, Defendants' joint motion for summary judgment should

be denied. RESPECTFULLY SUBMITTED this 28th day of November, 2012.

RANKIN, HILL & CLARK LLP s/Randolph E. Digges, III/ Randolph E. Digges, III (OH# 0059298) Email: digges@rankinhill.com Robert A. Sidoti (OH# 0069700) Email: sidoti@rankinhill.com. Jonathan A. Withrow (OH# 0074752) Email: withrow@rankinhill.com 38210 Glenn Avenue Willoughby, OH 44094 Tel: (216) 566-9700 Fax: (216) 566-9711 Attorneys for MRC Innovations, Inc.

PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 26
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711

Case: 1:12-cv-00684-PAG Doc #: 49 Filed: 11/28/12 31 of 31. PageID #: 709

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33

PAGE LIMIT CERTIFICATION Pursuant to L.R. 7.1(f), the undersigned counsel hereby certifies that this case was assigned to the complex track and this Memorandum in Support of Plaintiff’s Response in Opposition to Defendants’ Joint Motion for Summary Judgment complies with the page limit requirements.

s/Randolph E. Digges, III/ Randolph E. Digges, III (OH# 0059298) Attorney for MRC Innovations, Inc

CERTIFICATE OF SERVICE On November 28, 2012, a copy of the foregoing was filed electronically. Parties may access this filing through the Court’s system.

s/Randolph E. Digges, III/ Randolph E. Digges, III (OH# 0059298) Attorney for MRC Innovations, Inc.

PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENTANTS’ JOINT MOTION FOR SUMMARY JUDGMENT - 27
CIVIL ACTION NO. 1:12-CV-00684

RANKIN, HILL & CLARK LLP
38210 Glenn Avenue Willoughby, OH 44094 Phone: 216.566.9700 Fax: 216.566.9711