,,...

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20 ll-1628
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
REVISION MILITARY, INC.,jlk/a REVISION EYEWEAR, INC., and
REVISION MILITARY, LTD.,jlkla REVISION EYEWEAR, LTD.,
Plaintiffs-Appellants
v.
BALBOA MANUFACTURING COMPANY d/b/a BOBSTER EYE WEAR
Defendant-Appellee
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF VERMONT IN 5:11-CV-149,
CHIEF JUDGE CHRISTINA C. REISS
CORRECTED
OPPOSITION/RESPONSE BRIEF OF DEFENDANT-APPELLEE
BALBOA MANUFACTURING COMPANY d/b/a BOBSTER EYEWEAR
Steele N. Gillaspey, Esq.
GILLASPEY & GILLASPEY
The NBC Tower
225 Broadway, Suite 2220
San Diego, CA 921 0 I
(619) 234-3700
Attorney for Defendant-Appellee
February 24, 2012











2011-1628
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
REVISION MILITARY, INC.,ftk/a REVISION EYEWEAR, INC., and
REVISION MILITARY, LTD.,ftk/a REVISION EYEWEAR, LTD.,
Plaintiffs-Appellants
v.
BALBOA MANUFACTURING COMPANY d/b/a BOBSTER EYE WEAR
Defendant-Appellee
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF VERMONT IN 5:11-CV-149,
CHIEF JUDGE CHRISTINA C. REISS
CORRECTED
OPPOSITION/RESPONSE BRIEF OF DEFENDANT-APPELLEE
. BALBOA MANUFACTURING COMPANY d/b/a BOBSTER EYEWEAR
Steele N. Gillaspey, Esq.
GILLASPEY & GILLASPEY
The NBC Tower
225 Broadway, Suite 2220
San Diego, CA 9210 1
(619) 234-3700
Attorney for Defendant-Appellee
February 24, 2012











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Form 9
FORM 9. Certificate of Interest
UNITED STATES COURT OF' APPEALS FOR THE I<'EDERAL CIRCUIT
__ R_e_vi_s_io_n_M_il_it_ar...:..y_, l_n_c._, _et_a_l. __ v. _B_a_lb_o_a_M_a_n_u_fa_ct_u_ri_n.;:..g_C_o_. ,_L_L_C_
No. 11-1628
CERTIFICATE OF INTEREST
COtmsel for the (petitioner) (appellant) (respondent) (appellee) (amicuS) (name of party)
__ certifies the (use "None" if applicable; use extra sheets
if necessary):
I 1.
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The full name of every party or amicus represented by me is:
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Balboa Manufacturing Co., LLC dba Bobster Eyewear
2. The name of the real party in interest (if the party named in the caption is not the real
party in interest) represented by me is:
None
3. All parent corporations and any publicly held companies that own 10 percent or more
of the stock of the party or amicus curiae represented by me are:
None
··---··-·--·-·····---------------- ---·
4. The names of allla\v firms and the partners or associates that appeared for the party
or amicus now represented by me in the trial court or agency or are expected to appear in this
com1 are:
Gary Franklin, Esq., and/or Michele Tran, Esq .
l0/11/2011
Date
Please Note: All questions must be answered
cc: Andrew Manitsky, Esq., Appellant Counsel
124











TABLE OF CONTENTS
TABLE OF CONTENTS ................................................................................ .
TABLE OF AUTHORITIES........................................................................... 111
STATEMENT OF RELATED CASES ......................................................... . v.
STATEMENT OF THE CASE ........................................................................ .
STATEMENT OF THE FACTS ...................................................................... .
Relevant Balboa Company History ...................................................... .
Facts Relevant to Asserted Infringement.............................................. 3
The Court Hearing and Ruling ............ ........................ ... ..... .. ........ ..... .. 4
SUMMARY OF BALBOA ARGUMENT....................................................... 5
As to Injunction Standard ..................................................................... . 5
Function vs. Design............................................................................... 5
Observer Scrutiny ................................................................................. . 6
Revision Failure to meet Burden........................................................... 6
Revision Not Even Close....................................................................... 7
BALBOA ARGUMENT .................................................................................. . 8
I.
II .
Standard of Review .............................................................................. .
District Court Did Not ERR. Court Found That Revision Did Not
Meet the Burden of Proof for Likelihood of Success, The Call Wasn't
Even A Close Call on the Evidence ...................................................... .
8
9
Judge Reiss' Yeoman's Work and Care.................................... 9
It's Design Patents- Not Rocket Science ................................. .
11
- I -

The Ordinary Observer Test...................................................... 11
• Deception/Confusion Is the Test... ........................................... . 13
Revision Provided no Evidence of Actual
Deception/Confusion................................................................. 14

Balboa Evidence in Opposition ............................................... . 14
The Products Do Not Look the Same/Similar.......................... 15

Judge Reiss' Factual Determinations
Entitled To Great Weight............................................................... 17
III . CONCLUSION................................................................................................. 18

Rule 32A Certificate of Compliance follows Conclusion .




• - II -


TABLE OF AUTHORITIES

CASES

Amazon. com v. BarnesandNoble.com, Inc.
329 F.3d 1343 (Fed.Cir. 1998) ................................................................................. . 8
Applied Arts Corporation v. Grand Rapids Meta/craft Corporation
67 F.2d 428 (6'h Cir. 1933) ........................................................................................ 12,13,15

Contessa Food Products v. Conagra, Inc.
282 F.3d 1370 (Fed.Cir. 2009).................................................................................. 10,17
Crocs, Inc. v. Int 'I Trade Com 'n

598 F.3d 1294 (Fed.Cir. 2010) ................................................................................. . 10,17
Egyptian Goddess, Inc. v. SWISA, Inc.
543 F.3d 665 (Fed.Cir. 2008) ................................................................. 7,9,10,11,12,13,15,16

Embrex, Inc. v. Serv. Eng 'g Corp .
216 F .3d 1343 (Fed.Cir.2000) .................................................................................. . 17
Gorham Mfg. Co. v. White
81 U.S. 511 (1871) ................................................................................................. 10,12,15,16

Glaxo Group, Ltd. v. Ranbaxy Pharmaceuticals, Inc.
263 F.3d 1333 (Fed.Cir.2001)................................................................................... 17
Guttman, Inc. v. Kopycake Enters., Inc.

302 F.3d 1352 (Fed.Cir.2002) .................................................................................. . 8
Hybritech, Inc. v. Abbott Labs.
849 F.2d 1446 (Fed.Cir.1998)................................................................................... 8

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

- Ill -



Keystone Retaining Wall Systems, Inc. v. Westrock, Inc.
997 F.2d 1444 (Fed.Cir. 1993) ................................................................................. . 10
L.A. Gear, Inc. v. Thorn McCan Shoe Co.

988 F.2d 1117 (Fed.Cir. 1993) ................................................................................ 7,10, 11,13
Mikohn Gaming Corp. v. Acres Gaming, Inc.
165 F.3d 891 (Fed.Cir. 1998).................................................................................... 5
Minka Lighting, Inc. v. Maxim Lighting Intern., Inc .

No. 3:06-CV-995-K 2009 WL 691594 at 7* (N.D. Tex Mar. 16,2009) .................. . 12
Nat 'I Steel Car, Ltd. v. Canadian Pac. Ry, Ltd.
357 F.3d 1319 (Fed.Cir. 2004).................................................................................. 8

Novo Nordisk v. Genentech, Inc.
77 F.3d 1364 (Fed.Cir.1996) .................................................................................... . 8
Oakley, Inc. v. Sung/ass Hut, lnt 'I
316 F.3d 1331 (Fed.Cir. 2003) ................................................................................. 8

OddzOn Prods., Inc. v. Just Toys, Inc.
122 F .3d 1396 (Fed.Cir. 1997) ................................................................................. 11
Purdue Phara, LLP v. Boehringer lngelheim GMBM

237 F.3d 1359 (Fed.Cir. 2001) ................................................................................. 6,7,10
Reebok Int '!, Ltd. v. J Baker, Inc.
32 F.3d 1552 (Fed.Cir. 1994) .................................................................................. . 8,9,10

Richardson v. Stanley Works, Inc .
No. 2009-1354 (Fed.Cir. March 9, 2010) ................................................................ . II
Wing Shing Products v. Sunbeam Products, Inc.
665 F. Supp.2d 357 (SONY 2009) ............................................................................ 12,13,15


-IV-












CORRECTED BRIEF
STATEMENT OF RELATED CASES
Appellee Balboa Manufacturing Company dba Bobster Eyewear, in accordance
with FED ClR.R., Rule 47.5, hereby and herewith certifies:
[ l] That no other Appeal in or from the same civil action or proceeding
in the lower court or body was before this or any other Appellate Court,
and,
[2] That Appellee is not aware of any case pending before this
Honorable Court, or any other Appellate Court, that will directly affect or
be directly affected by this Honorable Court's decision in this pending
appeal.
DATED: February 24, 2012 at San Diego, CA.
20 I 1-1628
Stp<>l16(/N
a,
The NBC Tower
225 Broadway, Suite 2220
San Diego, California 9210 I
Telephone: 619 234 3 700











STATEMENT OF THE CASE
Balboa Manufacturing Company, LLC dba Bobster Eyewear ("Balboa") respectfully
disagrees with Revision Military, Ltd.'s and Revision Military, Inc.'s (jointly "Revision")
Statement of the Case in the Opening Brief as to one matter - Balboa does not infringe the
asserted desif,'11 patents as claimed by Revision.
The remainder of the Revision statement is factual procedural review which is correct
as shown on the record.
STATEMENT OF THE FACTS
Balboa respectfully disagrees with Revision's statement of the facts, inclusive of
disagreeing with Revision placing argument into the statement of facts. Balboa submits that
the record below establishes the facts as follows (references will be made to the record,
inclusive of the Declarations of Jennifer Stmebing, Patrick Hussey, and Donn Hanns, which
were admitted by the Court at the time of the hearing. Balboa Appx., Ex 1:2 Opinion & Order
of the Honorable Christina Reiss, 0813//11, ("Trans.") Pg 2, Findings of Fact):
Relevant Balboa Company History
Balboa began as a niche manufacturing and sales company in motorcycle clothing
accessories. In 1997, in response to its market, Balboa expanded into the manufacture and
sale of eyewear, namely sunglasses and goggles, primarily protective (protective meaning
impact resistant/shatterproof- providing protection to motorcycle riders' eyes against flying/
high speed debris, but not "ballistic") .











Commencing in 1999, as a result of Balboa's sales to the motorcycle market (inclusive
of to individual members of the military and law enforcement), Balboa began selling eyewear
to the military/law enforcement market. Balboa's facilities are located in somewhat central
San Diego County, Califomia, an area historically known as the home to forces of the United
States Anned Services, including:
[a] U.S. Marine Corps Base, Camp Pendleton containing elements of the infantry training
command, Force Recon (Marine Special Forces), I'' Division Combat Command, Marine
Expeditionary Unit (Combat MEU), elements of Marine Armor, and the Marine Amphibious
assault Training Command;
[b] U.S. Marine Corps LCAC Base- "No Beach Out of Reach"- amphibious warfare
base;
[c] U.S_ Marine Aviation Station Miramar- containing Marine fighter and helicopter
combat and support aviation command_ The Station was formerly known as Naval Air
Station Miramar, the U.S. Navy fighter west coast command/carrier fighter command, and
also home to the U.S Navy's Air Combat Warfare School commonly known as "Top Gun";
[d] U.S Navy Special Warfare School Coronado- west coast home and school to the
Navy SEALS and home to SEAL TEAM ONE; and,
[e] U.S. Marine Corp Recruit Training Depot (MCRD)- Marine Corps Boot Camp and
combat infantry training schooL
Again, Balboa's sales of eyewear to the military began in 1999, with sales to SEAL
TEAM ONE, with sales continuing over the years to both military and law enforcement,
including, but not limited to:
I. U.S. Border Patrol 14_ U.S_ Marines (26)
2. SEAL TEAM THREE 15. Naval Special Warfare Command (E)
U S. Marine Corps (39) 16_
U.S. Army - Kuwait
4_ US Navy Special Warfare (W)
17_
U.S Marines- (49)
5_ Naval Air Station - (T) 18_ US Marines- (46)
2











6. U.S Marine Corps (16) 19. U.S. Army- Fort Irwin
7 . MCAS Miramar 20. U.S. Marines- Chief Multi Nat'! Forces, Iraq
8. U S. Army- Fort Bragg (A) 21. U.S. Marines- MCAS Miramar- (11)
9 . Camp Pendleton 22. U.S. Army- Fort Polk
10. FBI 23. FLETC
11. Italian Armed Forces 24. Abu Dhabi Armed Forces
12 . Mexican Military/Law Enforcement 25. Polish Military
13. Swedish Law Enforcement 26. Kuwati Military
Balboa has been involved the manufacture of sunglasses and goggles for many years,
again starting well prior to Revision. Balboa also sells to the fashion markets, and the sports
market, inclusive of the extreme sports market. Balboa revises and updates its products on
a regular basis, primarily improving products from iteration to iteration based on its experience
in the market. In the early to mid-2000's, the military began promulgating specifications for
procurement (specialized standards), including, but not limited to, MILSPEC, MCEPS, and
EN 166, which specifications were updated along the way. Balboa began additional research
and development incorporating those standards for military contracting. Balboa Appx., Ex .
5:191-92, 195, Struebing 3-5,8-10, 13-16.
Revision admits that it did not start business until2003, which is some 4- 5 years after
Balboa. Balboa Appx., Ex. 8:278, Revision Opening Brie_{, Pg. 3.
Facts Relevant to Asserted Infringement
Balboa asserted below that it does not infringe upon either of the Revision asserted
Design Patents. Balboa further asserted that a plain, side by side comparison of the products
3











unequivocally established the clearly recognizable difference in overall design between the
two products, such that no ordinary observer or purchaser would mistake the two products or
be deceived.
In further support of its factual assertions, Balboa entered Exhibits 1 - 9 (direct side
by side product comparison pictures and drawings, inclusive ofDesign Patent figures), Balboa
Appx, Ex 5:201-42, Struebing Declaration; the testimony of Patrick Hussey, an expert in the
areas of commercial/military eyewear, inclusive of goggles (court admitted declaration),
Balboa Appx, Ex 6:245-53, Hussey Declaration; and the testimony ofDonn K. Hanns, patent
attomey, inclusive of comparison charts ofthe Revision '039 and '098 design patents to the
accused Balboa product (court admitted declaration). Balboa Appx, Ex 7:254-70, Harms
Declaration. Ms. Stmebing further testified at the July 20, 2011 hearing. Ibid, Ex. 2.
The Court Hearing and Ruling
On July 20, 2011, the Honorable Christina Reiss, U.S. District Court Judge held a full
hearing on the Revision Motion for Preliminary Injunction, inclusive of presentation of witness
testimony and admission of evidence. BalboaAppx., Ex 2:48-182, Trans. The Court was also
provided with actual products from both Revision and Balboa, i.e.: the asserted Revision
"Bullet Ant" and the accused Balboa "Bravo". The Revision design patents, 0537,098 and
D620,039 were also admitted. Balboa Appx., Ex 3:183-85 and Ex 4:186-89, respectively.
On August 31, 2011, the Honorable District Court issued its Opinion and Order,
denying Revision's Motion for Injunction. Balboa Appx., Ex 1:18-25, Opinion & Order,
Section C, Pgs 18 - 25 and Exhibits A-D (Ex 1:26-4 7) .
4











SUMMARY OF BALBOA ARGUMENT
As to Injunction Standard
The Honorable Christina Reiss, trial judge below, got it right. Further, contra to the
Revision argument here, Revision actually urged 2"d Circuit standards upon the Trial Court
in the Revision Motion below. Revision cited 2"d Circuit law to the Trial Court stating:
"The Second Circuit's standard (for injunctive relief) is compatible with the Supreme
Court's test ... The Federal Circuit Court of Appeals, which has appellatejurisdiclion
.for patent infringmenr actions, has determined that the standard .for granting a
preliminary injunction is not unique to patent lmt' and therefore applies the standard
of the regional circuit in which the action lies. See, Mikohn Gaming Corp. v. Acres
Gaming, Inc., 165 F. 3d 891, 894 (Fed.Cir. 1998)" .
Balboa Appx., Ex. 8:280-81, Revision Motionfor Preliminary Injunction with Incorporated
Memorandum In Support, Pgs 5-6, ("Legal Standard for Preliminary Injunction") .
Function vs. Design
Despite Revision's new arguments before this Honorable Court, the plain fact is that
Balboa does not incorporate the design features claimed by Revision. The overall observed
impressions of the designs are different. As admitted by Revision, the hallmark of the claimed
"design" are the stylized venting/depressions on the front face above the bridge/brow line of
the goggle(<<< I>>>) and the stylized shield with star rampant. It is further notable that
said front face vents are also admitted to be functional in many instances. Balboa Appx., Ex
2:100-101, Trans., 53:22-54:2. Same also fonns the overall stylized design that Revision
wants the observer to recognize. lbid, Ex. 2:101-102, Trans., 54:3-55:20 .
Ill
5










Other features identified include the functional, hexagonal vents in the foam
surrounding the goggle for the undisputed purposes of moisture wicking and anti-fogging .
Balboa Appx., Ex. 6:251, Hussey Declaration, 7:16-23.
Observer Scrutiny
Moreover, Revision admitted that the ordinary observer in this case is the military, and
Revision further admitted that the military's scmtiny is quite high when dealing with
protective eyewear for the troops in harm's way ("Q: So they're [the military/ really picky ..
A: Yes. A: They are going to look at it not only from a test standard and they are going to
require third party testing, but they 'II do internal testing too. Q: They are going to take a
really hard impection on the goggle itself themselves overall; correct? Q: .. they are going
to review that goggle and take a look at If .. handle the goggle, go over it, things like that;
right? A: I would think that would be part of"their process, yes"). Balboa Appx., Ex. 2:97,
Trans., Balboa Cross Exam of John Fowler, Revision Vice President of Product, 50:8-23 .
Revision Failure to Meet Burden
Revision, as the party seeking an injunction, had the burden of proving, in the first
instance, that Revision had a reasonable likelihood of success on the merits. fn its Motion
below, Revision cited to Purdue Phara. LLP vs. Boehringer lngelheim GMBM, 237 F.3d
1359 (Fed.Cir. 2001) for the applicable standard. On the specific subject, Purdue held" ..
Purdue as the moving party (must) "clearly establish[] the .first factor (by making a 'clear
showing' qf...in.fi·ingement .. "). Ibid., at 1363.
Ill
6

The Purdue case was expressly cited to by the Trial Court in its Ruling with respect to
e the legal standard. Balboa Appx., Ex. 1: 19, Opinion & Order, Pg. 19, 3'd ~ ) . In addition, the
Trial Comt cited to L.A. Gear Inc. vs. Thom McCan Shoe Co., 988 F.2d 1117 (Fed.Cir.









1993 ), another case cited by Revision (during the hearing). Balboa Appx. Ex. 2: 179, 'Frans.,
132:1-3. As stated by Judge Reiss, the L.A. Gear case is also clear as to the standard-
"De"·ign patent infringement is a question offact, to be proven by the preponderance of the
evidence. L.A. Gear, Inc., 988 F.2d at 1124". Balboa Appx., Ex. 1:19, Opinion & Order,
Pg. 19, 4'h ~ ) .
Revision Not Even Close
Revision failed to meets its burden. The Trial Court detennined that the case was not
a "particularly close case", expressly citing to the Egyptian Goddess. Inc. vs. SWISA. Inc.,
543 F.3d 665 standard that "In some instances, the claimed design and the accused design
will be sufficiently distinct that it will be clear without more [such as prior art references/
that the patentee has not met its burden of proving that the two designs would appear
'substantially the same' to the ordinary observer". Balboa Appx., Ex. 1:22, Opinion &
Order, Pg. 22, 3'd ~ a n d FN 5.
Revision put forward no evidence (other than Revision's own vtce president's
conclusory "opinions") of ordinary observer findings of requisite similarity or deception, i.e.:
no substantial proof that an ordinary observer was deceived into confusing the Balboa goggle
with the Revision goggle because the Balboa goggle was substantially similar to the Revision
design .
7


I.
BALBOA ARGUMENT
STANDARD OF REVIEW
"A pre/ im inary injunction is a 'drastic extraordinary remedy that is not to be
e granted". Intel Corp vs. ULSI Svs Tech. Inc, 995 F.2d 1566 (Fed.Cir. 1993). To obtain a
preliminary injunction in the district court, the moving party must demonstrate a reasonable



likelihood qfsuccess on the merits .. a movant is not entitled ((he fails to demonstrate a
substantia/likelihood qf success on the merits". Nat 'I Steel Car. Ltd vs. Canadian Pac. Rv.
Ltd, 357 F.3d 1319, 1324-1325 (Fed.Cir. 2004), citing to Guttman. Inc. vs. Kopycake Enters.,
Inc, 302 F.3d 1352, 1356 (Fed.Cir. 2002); Amazon vs. BarnesandNoble.com. Inc, 329 F.3d
1343, 1350; Hybritech. Inc vs. Abbott Labs., 849 F.2d 1446, 1451 (Fed.Cir. 1998) .
"The final..denial of a preliminary injunction is within the sound discretion o{ the
district court". Novo Nordisk vs. Genentech. Inc., 77 F.3d 1364, 1367 (Fed.Cir.1996). The
• district court's discretion "will be reviewed on appeal only for an abuse qf discretion".
Oaklev. Inc vs. Sung/ass Hut. Int '/, 316 F.3d 1331, 1338 (Fed.Cir. 2003). The Federal Circuit,
e in reviewing the reasoning of the trial court with respect to a decision on an injunction, will
review (l) factual findings for clear error, (2) conclusions oflaw de novo, and (3) the exercise



of discretion for a clear error ofjud!:,'111ent in weighing the relevant factors. Oakley, 316 F .3d
at 1339; Amazon, 239 F.3d at 1350; Novo, 77 F.3d at 1367. "District Court judges are
overburdened and needflexibility to operate efficiently. They deserve tolerance by reviewing
courts so they can tailor procedures of adjudication to the case at hand'. Reebok Int 'I, Ltd
8







vsJ. Baker, Inc., 32 FJd 1552,1557 (Fed.Cir. 1994).
With respect to asserted infringement of a design patent, the movant has the burden of
proof on the issue, and must meet that burden by establishing that the design patent and the
accused product are substantially similar in overall appearance to the ordinary observer. "(I)
testfor design patent infringement is whether an ordinary observer, familiar with the prior
art, would be deceived into thinking that the accused design was the same as the patented
design". Egyptian Goddess, 543 F.3d at 665.
II. DISTRICT COURT DID NOT ERR. COURT FOUND THAT REVISION
DID NOT MEET BURDEN OF PROOF FOR LIKELIHOOD OF SUCCESS,
THE CALL WASN'T EVEN A CLOSE CALL ON THE EVIDENCE
Revision's sturm und drang notwithstanding, the Trial Court found that Revision failed
to meet its burden of proof to enable the Court to exercise its discretion to grant an injunction.
Judge Reiss' Yeoman's Work and Care
The Trial Court, after conducting a full evidentiary hearing, upon hearing witness
testimony (inclusive of admission by stipulation of declaration testimony), inclusive ofhearing
e direct, cross, and re-direct, weighing credibility, weighing the evidence, and thereafter
reviewing the evidence, inclusive of handling the actual products, came to the detennination

that the "accused design (the Balboa "Bravo'') could not be reasonably be viewed as so
similar to the claimed design that a purchaser ... would be deceived by the similarity between
the claimed and the accused designs, inducing him to purchase one suppm-:ing it to he the

other". Balboa Appx., Ex. l:23, Opinion & Order, Pg. 23, ~ 3 .

9





Moreover, it is clearly apparent that the Honorable Trial Court put in significant effort
in the review of the case seeking to come to the correct detennination. Judge Reiss provided
the details of her yeoman's work- Judge Reiss reviewed the Federal Circuit Court of Appeals
decisions and U.S. Supreme Court decisions applicable, including, but not limited to, Purdue,
237 F.3d 1359 (Fed.Cir. 2001), L.A. Gear, 988 F.2d 1117 (Fed.Cir. 1993), 35 USC§ 289,
Gorham vs. White, 81 U.S. 511 (1871), Egyptian Goddess, 543 F.3d 665 (Fed.Cir. 2008),
Crocs. Inc., 598 F.3d 1294 (Fed.Cir. 201 0), Contessa Food, 282 F.3d 1370 (Fed.Cir. 2002);
Kevstone Retaining Wall, 997 F.2d 1444 (Fed.Cir. 1993); and Reebok, Int 'l, 32 F.3d 1552
(Fed.Cir. 1994).
Judge Reiss then went on to carefully apply said law to the facts of the case, being
• specific in her rationale. Judge Reiss reviewed the testimony, was critical ofboth parties, and
made evidentiary detenninations, inclusive of explaining the weight accorded to the respective
• testimony and proffered evidence.




Judge Reiss reviewed the proffered evidence, compared the illustrative material ofboth
sides, and reviewed the actual products, i.e.: the Revision "Bullet Ant" goggle ('039 version
no longer sold), the "Bullet Ant" goggle ('098 version), and the accused Balboa
"Bravo"goggle. Judge Reiss went through a step by step, detailed analysis over the course of
some six and half(6 Yz) pages. Balboa Appx., Ex. 1:20-25, Opinion & Order, Pgs 20-25.
In further support of her determinations, Judge Reiss attached to the ruling the
illustrative material submitted by the parties (comparisons of the respective products). Ibid,
at 1 :26-4 7, Exhibits A through D .
10











It's Design Patents - Not Rocket Science
We are dealing with two design patents. A design patent goes to the "look" of the
claimed product, which "look" is defined by the figures set forth in the design patent. L.A.
Gear. Inc., 988 F.2d at 1124. The mere issuance of design patent does not automatically
exclude all other products- "[w ]here a design contains both functional and non:fimctional
elements, the scope of the claim must be construed in order to the
aspects of the design as shown in the patent." OddzOn Prods .. Inc. v. Just Tovs. Inc., 122
F.3d 1396, 1405 (Fed. Cir. 1997) as affinned in Richards·on v Stanlev Works. Inc., No .
2009-1354 (Fed. Cir., March 9, 2010). No text I written descriptions are necessary, in fact,
same are discouraged. The claim rises and falls on that which is clearly depicted. In the case
at bar, the Revision goggles admittedly/undisputably contain functional matter, i.e.: the design
feature of the prominent six vents on the front face (bridge/brown) of the Revision goggle
have been used for air flow purposes (moisture wicking and anti-fog), and the hexagonal holes
in the foam (bottom and top) surrounding the Revision goggle are used for moisture wicking
and anti-fog, as well as for comfort and fit. Balboa Appx., Ex. 2: I 02 and 111, Trans., 53:22-
54:2, 64:1-6; Ex. 6, Hussey Declaration, 7:16-23.
The Ordinary Observer Test
In Egyptian Goddess, this Honorable Court revised the infringement standard in design
patent cases, returning the test/standard enunciated in Gorham- "f!Jf, the eye ofthe ordinary
observer, giving such attention as a purchaser usually gives, two desi&rns are substantially
the same (j"the resemblance is such as to deceive such an observer, inducing him to purchase
11

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









The "ordinary observer" standard was subsequently addressed in Applied Arts
Corporation vs. Grand Rapids Meta/craft Corporation, 67 F.2d428, 429-430 (61" Cir.l933),
utilizing the Gorham standards. Applied Arts was further discussed in Egyptian Goddess, 543
F.3d 665, 674-675 (Fed.Cir. 2008), and discussed and applied in Wing ShingProducts vs .
Sunbeam Products. Inc., 665 F.Supp.2d 357, 363 (SONY 2009) a post /:.gyptian Goddess
case. Jn WingShing, the Court discussed both Egyptian Goddess and Applied Arts in coming
to its detennination of non-infringement under the correct ordinary observer standard:
At least one district court applying Egyptian Goddess has granted summary
judgment without considering prior art where two designs d({fered primarily at one
highly sign(flcant.feature. See Minka Lighting. Inc. v. Maxim Lighting Intern., Inc.,
No. 3:06-CV-995-K, 2009 WL 69159-1. at *7 (N.D. Tex. Mar. 16, 2009).
That "a purchaser of things ofsimilar design, as the ordinary observer has
been defined, Applied Arts, 67 F.2d at -130, could be deceived by the devices
similarities seems unlikely to the Court, but resolution qf the inquily would bene.flt
from a concrete guidepost. See Egvotian Goddess. 543 F'.3d at 676-77 ( [IJt can be
d!fflcult to answer the question whether one thing;,,· like another without being given
a frame o_{reference '') .
Wing Shing 665 F.Supp.2d at 363.
Applied Arts set the clear definition for the ordinary observer with knowledge (as
discussed in Egyptian Goddess), by articulating the following standard:
A care.fit! analysis o.l Gorham v. White, and other a4Judicated cases supplies
the answer. The ordinmy observer is not any observer, but one who, with less
than the trainedfaculties o.f the expert. is "a purchaser o.l things o.lsimilar
design," or "one interested in the subject." The mythical prudent man in
negligence cases is not the Hottentot or Abyssinian who has never seen a
12











locomotive or driven an automobile, but one who has average familiarity with
such instrumentalities, and can form a reasonable judgment as to their speed
and mode o_{operation. So is the average observer not one who has never
seen an ash tray or a cigar lighter, but one who, though not an expert, has
reasonable familiarity with such objects, and is capable qf forming a
reasonable judgment when COi?fronted with a design therefor as to whether it
presents to his eye distinctiveness from or similarity with those which have
preceded it. This view is confirmed by the factual analysis which the Supreme
Court gave to the evidence in the Gorham Case, laying its greatest stress upon
the evidence there given by the large number of witnesses './ami/iar
with designs, and most q{them engaged in the trade."
Applied Arts, 67 F.2d 429-430.
Deception/Confusion Is the Test
L.A. Gear, cited by Revision, is a 1993 case, decided some 15 years prior to Egyptian
Goddess and its progeny. L.A. Gear utilizes the now over ruled two step test. However, L.A.
Gear does cite to Gorham, and with respect to design look, held:
"The criterion is deception o{ the ordinary observer, such that one design
would be confiLsed with the other ... (lthe resemblance is such as to deceive such
an observer, inducing him to purchase one suppo5;ing it to be the other, the
first .. is infringed hy the other".
L.A. Gear, 988 F.2d at 1125 .
The L.A. Gear case is also distinguishable under the facts. Thom MeAn admitted to
copying the L.A. Gear design ("Substantial similarity is not di!>puted, indeed, copying is
admitted' Ibid), which is not the fact of this case .
Egyptian Goddess and Wing Shing also discuss the issues of deception/confusion as
part of the ordinary observer with knowledge test.
Ill
13











Revision Provided No Evidence of Actual Deception/Confusion
As set forth by the applicable case law, Revision has the burden of proof regarding
deception and confusion (deception of the observer/purchaser such to cause the purchase of
the Balboa goggle when the observer/purchaser intended to buy the Revision product) .
Revision barely addressed the issue, much less provide proof.
In point of fact, what was established was that Revision did over 95% of its sales
through military procurement contracts. Balboa Appx., Ex. 2:93, Trans., 46:21-24. Further,
that Balboa has not sold ballistic eyewear through military procurement contracts. Ibid, Ex .
2:118, Trans., 71:10-14.
As to law enforcement and individual consumers, Revision did not proffer any material
proof of any confusion or deception. All that Revision asserted was, in essence, conclusory
allegations that the two goggles looked the same .
Balboa Evidence in Opposition
In addition to providing the Court the actual products in dispute, Balboa provided
competent evidence to establish its claim of non-infringement, including, but not limited to,
Balboa Appx., Ex. 5:201-238, Stru:;bing Declaration, Exhibits 1-7 (Struebing Exhibit I was
attached to the Court's Opinion & Order as Exhibit C to said Order; and Struebing Exhibit
4 was attached to the Court's Opinion & Order as Exhibit D to said Order); Balboa Appx.,
Ex. 6:245-253, Hussey Declaration (function vs. design, differences in overall visual
impressions, ordinary observer); Balboa Appx., Ex. 7:254-270:, Harms Declaration (design
patent claims/figures to the accused product as to overall visual presentation) .
14











The Products Do Not Look the Same/Similar
Under any injunctive standard regarding a design patent, the very first question is
whether the design patent claims are substantially the same or similar to the ordinary observer
such that the accused product would cause confusion/deception. Gorham, Applied Arts,
Egyptian Goddess, Wing Shing.
Revision attempts to argue that the Trial Comt engaged in an impennissible review of
"minor differences" thereby purportedly running afoul of Gorham by allegedly using an
improper point of novelty test. The record is clear that such is not the case:
"Because this is not a particularly close case,
5
the court does need prior art
as a :frame of reference' to apply to the 'ordinary observer test' which the
Federal Circuit recognizes is the 'sole test for determining whether a design
patent has been infringed". Egyptian Goddess, Inc., 543 F. 3d at 678 .
"FN 5. ("In some instance.\·, the claimed design and the accused product will
be sufficiently distincT that it will be clear without more [s·uch as prior art
references] that the patentee has not met its burden o_f proving the two designs
would appear 'substantially the same' to the ordinary observer"
Balboa Appx., Ex. l :22, Opinion & Order, Pg. 22, 3'd ~ a n d footnote 5.
Judge Reiss goes on to carefully set forth the applicable caselaw (all Federal Circuit)
as to the standards of review with respect to design patent infringement, inclusive of citation
to the evidence, including photographic comparisons and actual product comparisons. Ibid,
Ex. 1:23, Opinion & Order, Pg 23.
The Trial Court expressly and unequivocally stated that it did not engage in a point of
novelty test - that the decision was based upon the overall design:
Ill
15











The (Revision) Bullet and the (Balboa) goggles .. .{i}n the eye of the ordinary
observer .. do not clearly reflect the same design. Indeed, the "accused design
could not be reasonably viewed as so similar to the claimed design that a
purchaser .. would be deceived by the similarity between the claimed and
accused designs, 'inducing him to purchase one supposing it to be the other".
Egyptian Goddess, 543 F.3d at 683 (quoting Gorham, 81 US at 528)
Although the court reaches this conclusion by examining the overall design of
the goggles, and not on an element bv element basis, it notes that several
design features stand out as dissimilar.
Balboa Appx., Ex 1:23, Opinion & Order, Pg. 23, 3'd ~ ( emp add) .
Judge Reiss then went on to cite, based upon the design features articulated by
Revision, and by her own direct comparison of the actual products, that:
The shape of the lenses were different, which difference "provide[ d] an
immediate visual difference in the overall appearance of the two sets of
goggles";
The Revision goggle is concave with the prominent six vents/depressions
(< < < >>>)in the middle of the bridge. The Court also discussed the dispute
as to the "R" logo as part of the shield and star between the vents, albeit finding
that "Revision conced[ ed] that its logo's placement and appearance is part of the
style claimed". The Court then confinned that the Balboa goggles protruded
outward, has no such vents as in the Revision claimed design, finding the
"differences in the two designs are prominent and immediately apparent to
even a casual observer and contribute significantly to the overall
appearance ..
As to the air flow venting in the foam area surrounding the goggles, the
Court found part of the venting to be functional, however gave deference to
Revision's hexagonal shape of the vent holes in the design patents as well as
placement. However, the Court found that Balboa's use of round vent holes and
Balboa's placement/structure thereof were different in the creation of the overall
look of the respective goggles .
Judge Reiss clearly followed the guideline standards set forth by this Honorable Court,
and by the Honorable Supreme Court, as her rulings unequivocally establish:
16




The 'deception that arises' must be the 'result of the similarities in the overall
design, not of the similarities in ornamentalfeatures in isolation'. Crocs, Inc
v. Jnt 'I Trade Com 'n, 598 F 3d 1294, 1030 (Fed. Cir. 20 I OJ; see also, Contessa
Food Products v. Conagra, Inc., 282 F. 3d 1370 /379 (Fed.Cir. 2009) ("all of
the ornamentalfeatures illustrated in the [patentJ.figures must be considered
in evaluating design patent infringement'') .
Balboa Appx., Ex. 1 :20, Opinion & Order, Pg. 20, 2"d ~ -
Judge Reiss' Factual Determinations Entitled To Great Weight
The Honorable Judge Reiss perfonned the equivalent of a patent claims constmction,
albeit as to a design patent (construing the "claims" set forth by the design patent figures as
• against the accused product). Accordingly, her findings based thereon in "determin[ing)
infringement is a question of fact, which receives substantial deference on review". Glaxo

Group, Ltd vs. RanbaxvPharmaceuticals.Inc., 263 F.3d 1333, 1335 (Fed.Cir. 2001) (citing
to Embrex, Inc vs. Serv. Eng 'g Corp, 216 F.3d 1343, 1348-49 (Fed.Cir. 2000).
The Glaxo Court further found that even in a case which is a close call, the factors of

likelihood of success and irreparable hann are to fall in favor of the defendant. Glaxo, 262
F.3d at 1339. In this case, it was not a close call, as expressly found by Judge Reiss, based

upon the facts. Judge Reiss unequivocally found that the overall difference between the
asserted design patent claims and the accused product were clear even to a casual observer,

an even lower standard than the requisite ordinary observer standard as defined by the
applicable case law.

Ill
Ill

17

Ill. CONCLUSION
e Appellant Revision's argument puts the cart before the horse. The essence of design
patent infringement is whether or not the claimed ornamental (non-functional) design is
e replicate by the accused product such to cause the ordinary observer to be deceived into








buying the accused infringer's product when the observer intended to buy the patentee's
product, i.e.: if they're not the same, the patentee has no right to blame .
Here, the Honorable Judge Reiss found that the "differences in the two designs are
prominent and immediately apparent to even a casual observer" .
The record, evidence and the law support the findings of Judge Reiss, establishing that
her Honor acted appropriately and equitably in denying the "drastic remedy" of injunctive
relief under the facts of this case.
Accordingly, Appellee Balboa respectfully submits that the Opinion and Order appealed
from by Appellant Revision be AFFIRMED as to the DENIAL of preliminary injunction .
illaspey, Es .
EY & GILLASPEY
The NBC Tower
225 Broadway, Suite 2220
San Diego, California 92101
Telephone: 619 234 3700
sng@g-glaw .com
Attomey for Appellee
18

'i







Form 19
FORM 19. Certificate of Compliance With Rule 32{a)
142
CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITATION,
TYPEFACE REQUIREMENTS, AND TYPE STYLE REQUIREMENTS
l. This brief complies with the type-volume limitation of Federal Rule of
Appellate Procedure 32(a)! 7)( B'l or Federal Rule of Appellate Procedure 28.1 (c).
0 The brief contains [ 4833 ] words, excluding the pa1ts of
the brief exempted by Federal Rule of Appcllaie Procedure32(a )( 7 )(B)( iii),
or
0 The brief uses a monospaced typeface and contains [
lines of text, excluding the parts of the brief exempted by Federal Rule
of Appellate Procedure 32(a)(7)(B)(iii).
2. This brief complies with the typeface requirements of Federal Rule of
Appellate Procedure 32(al(5) or Federal Rule of Appellate Procedure 28.1 e ) and the
type style requirements of Federal Rule of Appellate Procedure 32(a)(6).
0 The brief has been prepared in a proportionally spaced typeface using
0
[ WordPerfect v. 12 ] in
[ 14 pt. Times New Roman ], or
The brief has been prepared in a monospaced typeface using
] with [
].
[
[
(Name of Attorney)
Attorney for Appellee Balboa Mfg Co, LLC
(State whether representing appellant, appellee, etc.)
February 10, 2012
(Date)






UNITED STATES COURT OF APPEALS
FOR THE
FEDERAL CIRCUIT
REVISION MIUT AR Y, INC.,flc/a
REVISION EYEWEAR, INC., and,
REVISION MILITARY, LTDjlkla
REVISION EYEWEAR, LTD,
)
)
)
)
)
Plaintiffs-Appellants )
vs.
BALBOA MANUFACTURING
COMPANY d/bia BOBSTER EYE WEAR
Defendant-Appellee
)
)
)
)
)
)
)
Docket No. 20ll-l628
CERTIFICATE OF SERVICE
I, STEELE N. GILLASPEY, ESQ, Attorney for Defendant-Appellee BALBOA
MANUFACTURING CO, dba BOBSTER EYEWEAR, certify that, on February 27, 2012, I served
e Defendant-Appellee's Corrected Opposition/Response Brief via Federal Express Over-Night Delivery
upon:

DATED February 27,2012



Andrew D Manitsky, Esq .
GRAVEL & SHEA
76 St. Paul Street, 7'h Floor
Burlington, Vermont 05402
C Tower
225 Broadway, Suite 2220
San Diego, California 9210 I
Telephone 619 234 3700
Attorney for Defendant-Appellee

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