Case 2:13-cv-00792-SPC-DNF Document 107 Filed 06/19/15 Page 1 of 11 PageID 4935

UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
CHICOS FAS, INC., a Florida
corporation
Plaintiff,
v.

Case No: 2:13-cv-792-FtM-38DNF

ANDREA CLAIR, ANASTASIOS

KOSKINAS and 1654754 ONTARIO,
INC.,
Defendants.
/
ORDER1
This matter comes before the Court on Plaintiffs Motion for Summary Judgment
(Doc. #67) filed on March 6, 2015. Defendants filed a response in opposition on April 9,
2015. (Doc. #91). Then, Plaintiff filed a reply and request for oral argument on April 27,
2015. (Doc. #93; Doc. #94). This matter is ripe for review.
Background
This is a patent infringement lawsuit. Plaintiff Chicos Fas, Inc. (Chicos) sues
Defendants Andrea Clair, Anastasios Koskinas, and 1654754 Ontario, Inc. (Wink) for
declaratory judgment. (Doc. #61). The three counts are specifically declaratory judgment
of non-infringement of the patents-in-suit (Count I); declaratory judgment of invalidity of
the patents-in-suit (Count II); and declaratory judgment of unenforceability of the patents-

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in-suit (Count III). (Doc. #61). Wink countersues Chicos. (Doc. #63). The three
counterclaims are specifically Infringement of U.S. Patent No. 8,506,347 (Counterclaim
I); Infringement of U.S. Patent No. 8,182,310 (Counterclaim II); and Infringement of U.S.
Patent No. D622,478 (Counterclaim III). (Doc. #63).
Chicos and Wink sell camisole bras,2 garments that combine traditional bras with
a swatch of fabric that covers cleavage. Wink owns camisole bra patents. At issue in this
litigation is Winks design patent, United States Patent No. D622,478 (D478 Patent),
and two utility patents, United States Patent Nos. 8,506,347 (347 Patent) and
8,182,310 (310 Patent). Chicos now moves for summary judgment on four separate
grounds: (1) the patents are invalid and unenforceable due to improper inventorship; (2)
the utility patents are invalid as the claims are anticipated by prior art; (3) the D478 Patent
is primarily functional, rendering it invalid; and (4) the D478 Patent claims only a flat
material and cannot be infringed by Chicos products.
Undisputed Facts
On July 6, 2009, Andrea T. Clair and Anastasios Koskinas, the listed inventors,
applied for a utility patent with regard to a combination brassiere and tank top. (Doc. #912, at 2). The United States Patent and Trademark Office (USPTO) granted the patent
application. This cami-bra patent is referred to as the 310 Patent. (Doc. #91-2, at 2). A
bra, foam cup bra, underwire bra, and tank top are well known articles in the garment
industry. (Doc. #91-2, at 5). This invention, however, combines these well-known articles
to create a new invention. (Doc. #91-2, at 5). That is, this cami-bra invention combines a
tank top overlay, foam cup bra, and underwire bra. (Doc. #91-2, at 2, 5). This cami-bra is

Sometimes throughout this order camisole bras are referred to as cami bras.

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designed to support, shape and lift the breast, while providing full coverage of the nipple.
(Doc. #91-2, at 5). The inventors envisioned this cami-bra to be used under low cut
dresses and blouses to cover cleavage and dcolletage. (Doc. #91-2, at 5). This camibra patent has 20 claims. (Doc. #91-2, at 2, 6).
Then on March 12, 2012, Clair and Koskinas, the listed inventors, applied for an
additional utility patent with regard to a combination brassier and tank top. (Doc. #91-3,
at 2). The USPTO granted the patent application. This cami-bra patent is referred to as
the 347 Patent and is a continuation of the 310 Patent. (Doc. #91-3, at 3). This cami-bra
patent has 16 claims. (Doc. #91-3, at 2, 6).
Also, on March 31, 2008, Clair and Koskinas, the listed inventors, applied for a
design patent with regard to a combination brassier and tank top. (Doc. #91-4, at 2). The
USPTO granted the patent application. This cami-bra patent is referred to as the D478
Patent. (Doc. #91-4, at 2). It has one claim, [t]he ornamental design for a combination
brassier and tank top. (Doc. #91-4, at 2). There are two descriptions and two drawing
sheets that accompany the D478 Patent. (See Doc. #91-4, at 2-4). The two drawings are
as follows:

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(Doc. #91-4, at 3-4). The descriptions read as follows:

FIG. 1 is a rear elevational view of a combination brassiere and tank top,
showing our new design; and,
FIG. 2 is a front elevational view thereof.
The broken lines shown in the drawings are for environmental purposes
only and form no part of the claimed design.
(Doc. #91-4, at 2).
Standard
Summary judgment is appropriate only when the Court is satisfied that there is no
genuine issue as to any material fact and the moving party is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(c). An issue is genuine if there is sufficient evidence such
that a reasonable jury could return a verdict for either party. Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986). Similarly, an issue is material if it may affect the outcome
of the suit under governing law. Id.

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The moving party bears the burden of showing the absence of any genuine issue
of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). In deciding whether
the moving party has met this initial burden, the Court must review the record and all
reasonable inferences drawn from the record in the light most favorable to the non-moving
party. Whatley v. CNA Ins. Co., 189 F.3d 1310, 1313 (11th Cir. 1999). Once the Court
determines that the moving party has met its burden, the burden shifts and the nonmoving party must present specific facts showing that there is a genuine issue for trial
that precludes summary judgment. Matsushita Elec. Indus. Co. Ltd. v. Zenith Radio Corp.,
475 U.S. 574, 587 (1986). The evidence presented cannot consist of conclusory
allegations, legal conclusions or evidence which would be inadmissible at trial. Demyan
v. Sun Life Assurance Co. of Canada, 148 F. Supp. 2d 1316, 1320 (S.D. Fla. 2001) (citing
Avirgan v. Hull, 932 F.2d 1572, 1577 (11th Cir. 1991)). Failure to show sufficient evidence
of any essential element is fatal to the claim and the Court should grant the summary
judgment. Celotex, 477 U.S. at 322-23. Conversely, if reasonable minds could find a
genuine issue of material fact then summary judgment should be denied. Miranda v. B &
B Cash Grocery Store, Inc., 975 F.2d 1518, 1532 (11th Cir. 1992). If a reasonable fact
finder evaluating the evidence could draw more than one inference from the facts, and if
that inference introduces a genuine issue of material fact, then the court should not grant
summary judgment. Allen v. Bd. of Pub. Educ., 495 F.3d 1306, 1315 (11th Cir. 2007).
Discussion
I.

WHETHER THE PATENTS ARE INVALID DUE TO IMPROPER INVENTORSHIP?

Chicos alleges the patents-in-suit are unenforceable due to inequitable conduct.

According to Chicos, the inequitable conduct is that Andrea T. Clair and Anastasios

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Koskinas, the listed inventors of the patents-in-suit, intentionally withheld information from
the USPTO by omitting that Beverley Johnson was also an inventor. Since the filing of
this motion, the Court found Chicos has not proven inequitable conduct by clear and
convincing evidence. (See Doc. #103). In light of this finding, the Court denies Chicos
motion for summary judgment as it relates to the inequitable conduct issue.
II.

WHETHER THE UTILITY PATENTS ARE ANTICIPATED BY PRIOR ART?

Chicos alleges the utility patents-in-suit, 310 Patent and 347 Patent, are invalid

because the claims are anticipated by prior art. Specifically, Chicos argues Natori Zen
Floral, Peony Contour, and Soma Briana are prior art.
Patents should only be issued to new inventions. That is, a patent is issued when
an invention is not readily known, used, or described in a printed publication. 35 U.S.C.
102(a). A patent can be invalidated by prior art through anticipation. In order to render a
claim invalid through anticipation, a single prior art reference must disclose each and
every element of the claim. 35 U.S.C. 102; Schering Corp. v. Geneva Pharms., Inc.,
339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Lewmar Marine, Inc. v. Barient, Inc., 827
F.2d 744, 747 (Fed. Cir. 1987)). The relevant single prior art reference must have existed
at least one year before the patent application at issue. See 35 U.S.C. 102(b)(1). If the
prior art reference existed, it must have been known or used by others in this country, or
patented or described in a printed publication. 35 U.S.C. 102(a). Once a party asserting
invalidity establishes a prima facie case of invalidity through clear and convincing
evidence, then the opposing party must bring forward contrary evidence. PowerOasis,
Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (citing Ralston Purina
Co. v. Far-Mar-Co., 772 F.2d 1570, 1573 (Fed. Cir. 1985)).

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a. Natori Zen Florida

Chicos sold a bra similar to the Natori Zen Florida. (Doc. #69-12, at 5). The Natori
Zen Florida was created in 2006. (Doc. #69-11, at 3). Chicos argues the Natori Zen
Floral was first published to the public in 2006 at New York Fashion Week, and also
published in linesheets in 2007. (Doc. #69-11, at 6). Chicos argues the Natori Zen Flora
is prior art because it was known and used by people in the United States more than a
year before the patents-in-suits were filed and published in linesheets. Moreover, Chicos
argues the Natori Zen Florida inventor exercised reasonable diligence in reducing the
invention to practice and selling it to the public.
Upon consideration, the Court finds summary judgment is inappropriate. Even
though the Natori Zen Flora was published through New York Fashion week and
linesheets at least one year before Clair and Koskinas applied for their utility patents, it is
unclear whether the Natori Zen Flora contains every element of the claims within the utility
patents. See Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014)
(explaining that prior art is considered published and thus known if it is publically
accessible and sufficiently disclosed); Schering Corp., 339 F.3d at 1377 (A patent is
invalid for anticipation if a single prior art reference discloses each and every limitation of
the claimed invention.). Chicos has failed to demonstrate Natori Zen Flora contains all
of the same elements of the patents-in-suit. As such, Chicos has failed to establish a
prima facie case of invalidity through anticipation. Summary judgment is inappropriate.
b. Peony Contour
Chicos argues the Peony Contour bra, which was developed in January 2008, has
the same structural components as its accused products. Chicos argues, according to

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Winks evidence, its accused products infringe some but not all claims of the patents-insuits. Since the Peony Contour is structurally the same as Chicos accused products and
the Peony Contour was created prior to the patents-in-suit, Chicos argues in a
roundabout way that the Peony Contour is prior art to the patents-in-suit.
The Court finds Chicos argument is without merit. Since, Chicos concedes the
Peony Contour is structurally the same at its accused products, and Chicos accused
products are only suspected of infringing some but not all claims, it is unclear whether the
Peony Contour is sincere prior art. This is because there is no evidence that the Peony
Contour has all of the claims as the patents-in-suit, a requirement in the anticipation
context. Furthermore, there is no evidence that the Peony Contour was published, readily
known, or the like one year before Clair and Koskinas applied for their patents. Prior
creation without publication, sufficient knowledge, or the like, is not enough to anticipate
a patent. 35 U.S.C. 102(a). Accordingly, summary judgment is inappropriate.
c. Soma Briana
Chicos asserts the Soma Brianna was created sometime in 2007 and sold in
Chicos stores sometime in 2008. (Doc. #69-11, at 7-8, Doc. #69-12, at 6). Chicos did
not provide any specific argument as to why the Soma Briana should be considered prior
art to the patents-in-suit. Since it is unclear to the Court if the Soma Brianna contains all
of the claims in the patents-in-suits, and it is unclear that the Soma Brianna even existed
at least one year before Clair and Koskinas applied for a patent, it is unclear whether the
Soma Brianna is sincerely prior art. As such, summary judgment is inappropriate.

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III.

WHETHER THE D478 PATENT IS PRIMARILY FUNCTIONAL?

Design patents are limited to the ornamental design, or appearance, of an article.

Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010) (citing Lee v.
Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988)); see also L.A. Gear, Inc. v.
Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993). If a design patent is
primarily functional rather than ornamental, then it is invalid. Richardson, 597 F.3d at
1293-94. That is, upon review of the overall appearance of the article, if a design patent
is dictated by the use or purpose of the article then it is primarily functional. L.A. Gear,
988 F.3d at 1123; see also Rains v. Cascade Indus., Inc., 402 F.2d 241, 247 (3d Cir.
1968) (To be ornamental the configuration must be designed for aesthetic appeal rather
than dictated primarily by functional requirements, and the design as a whole must
produce a pleasing impression on the aesthetic sense.). Also, design patent infringement
is a question of fact that must be proven by a preponderance of the evidence. L.A. Gear,
988 F.3d at 1124.
Chicos argues the D478 Patent is primarily functional and thus invalid. According
to Chicos, the article is functional because it also received a utility patent, it is designed
to cover cleavage, and it is made of flat and plain materials rather than ornate and
embellished materials.
Upon review of D478 Patent, including a careful review of the drawings, the Court
is not persuaded for summary judgment purposes by Chicos arguments. There are plenty
of articles that hold valid simultaneous utility and design patents. See generally Ropat
Corp. v. McGraw-Edison Co., 535 F.2d 378, 381 (7th Cir. 1976) (explaining that patent
law allows for an article to receive both a utility patent and design patent at times). If an

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article has a utility patent, this does not mean it is primarily functional per se. This is true
in this case, despite how the bra is designed to cover cleavage. After all, there is
deposition testimony acknowledging that the bra function of covering cleavage can be
accomplished by different designs. (See, e.g., Doc. #91-13, at 3; Doc. #91-12, at 3-4;
Doc. #91-14, at 2). This evidence helps support a possible finding that the article is worthy
of its design patent. Overall, examination of the design patent leads the Court to conclude
that it cannot be said as an indisputable statement of fact that D478 Patent is not pleasing
to the ordinary observer. Here, the inquiry is quite subjective in that reasonable minds
may differ. It is ultimately a jury question as to whether this D478 Patent is aesthetically
pleasing. Since there is a material dispute as to whether the design patent is primarily
functional, the motion for summary judgment is due to be denied.
IV.

WHETHER THE D478 PATENT CLAIMS ONLY A FLAT MATERIAL?

Chicos argues the design patent only encompasses a flat surface on the front of

the product. Since Chicos accused products contains contour on the front of the products,
Chicos argues its products do not infringe Winks design patent. Chicos also emphasizes
that Wink sought an updated design patent that included contour cups but this request
was rejected by the USPTO. (See Doc. #69-19, at 2-4). As such, Chicos argues its
products do not infringe Winks products.
Chicos argument is not definitive. A review of the drawings and description does
not demonstrate that the design patent is limited to a flat surface. For example, Chicos
manually filed an example of its accused product in connection with this instant motion.
A review of this example does not distinguish the Chicos product from the D478 Patent
in the manner Chicos argues. That is, the front part of the Chicos product appears just

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as flat as the D478 Patent drawings. The Court, however, recognizes that a reasonable
jury could find a different finding.
Also, an examiners comment is not decisive for summary judgment purposes. See
generally Bell Atlantic Network Servs., Inc. v. Covad Commcns Group, Inc., 262 F.3d
1258, 1273 (Fed .Cir. 2001) (explaining in the utility patent context that an examiners
comment will not necessarily limit a claim). A review of the examiners comment
demonstrates the examiner warned Clair and Koskinas that they could not add to their
original design patent, elements that were not originally known to them at the time they
initially applied for the design patent. (Doc. #69-19, at 3). Although such warning may
support Chicos position, it does not convincingly prove Chicos design patent is limited
to a flat surface as Chicos argues. Summary judgment is due to be denied. See generally
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (explaining that
design patent infringement is determined by the ordinary observer test).
Accordingly, it is now
ORDERED:
1. Plaintiffs Motion for Summary Judgment (Doc. #67) is DENIED.
2. Plaintiffs Request for Oral Argument (Doc. #94) is DENIED.
DONE and ORDERED in Fort Myers, Florida this 19th day of June, 2015.

Copies: All Parties of Record

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