Supreme Court, U.S.

FILED

15-273

AUG 3 1 2015

No.

3Jn tbe

~upreme

OFFICE OF THE CLERK

QCourt of tbe Wniteb

~tates

KENNETH BUTLER, SR.,

Petitioner,
v.

BALKAMP INC., et al.,

Respondents.
On Petition for Writ of Certiorari to the
United States Court of Appeals for the Federal Circuit

PETITION FOR WRIT OF CERTIORARI

JOSEPH J. ZITO
Counsel of Record
DNL ZITO
1250 Connecticut Ave, NW, Suite 200
Washington, DC 20036
202-466-3500
j zi to@dnlzi to. com
PATRICK R. DELANEY
DITTHAVONG & STEINER, P.C.
44 Canal Center Plaza, Suite 322
Alexandria, VA 22314
703-822-7140
pdelaney@dcpatent. com

Counsel for Petitioner

Becker Gallagher Cincinnati, OH Washington, D.C. 800.890.5001

QUESTION PRESENTED
Is summary judgement proper in a District Court
when a factual dispute exists in a Design Patent action
and the District Court substitutes its own opinion for
that of the ordinary observer?
Factual Disputes:
In Anderson v. Liberty Lobby, Inc., 477 U.S. 242
(1986), this court articulated the standard that a
District Court must consider evidence presented by the
non-moving party: "the evidence of the non-movant is
to be believed, and all justifiable inferences are to be
drawn in his favor." Since, Anderson, and without
further guidance from this Court, lower courts have
reformulated the standard to allow summary judgment
when there is a genuine issue as to material fact. The
specific questions presented in this case:

1. Was the District Court in error in granting

summary judgment of non-infringement when the
record included competent and unrefuted evidence
that ordinary observers considered the patented
and accused designs to be substantially the same?
2. Was the District Court's decision to ignore the
evidence presented by Plaintiff, the non-movant, in
direct conflict with the standard articulated by this
Court in Anderson, 4 77 U.S. 242?
Design Patents:
Infringement of a design patent is a question of fact
not a question of law. (cite) The standard for
determining design patent infringement was
established by this Court in Gorham Co. v. White, 81

11

U.S. 511, (1871). In Gorham, this court created a test

that expressly favored the ordinary observer's
viewpoint when considering the overall similarity of a
patented design to an accused design. Since, Gorham,
and without further guidance from this Court, lower
courts have reformulated the test by substituting the
opinion of the District Court for that of the ordinary
observers. The question presented in this case is:
3. Can a District Court substitute its own
observations on substantial similarity for the
observations of ordinary observers and thus change
the "facts," without impermissibly altering the
Gorham's ordinary observers test for design patent
infringement?

lll

PARTIES TO THE PROCEEDINGS

1. Kenneth Butler, Sr., Petitioner.

2. Balkamp Inc., Respondents.

3. National Auto Parts Association, Respondents.
4. Genuine Parts Company Corporation, Respondents.
5. Tien-I Industrial Corporation, Limited, Respondents.
6. Yuh Yeou Industry Co., Ltd., Respondents.

IV

TABLE OF CONTENTS

QUESTION PRESENTED . . . . . . . . . . . . . . . . . . . .

PARTIES TO THE PROCEEDINGS ........... m

TABLE OF AUTHORITIES . . . . . . . . . . . . . . . . . .

v1

PETITION FOR A WRIT OF CERTIORARI . . . . . . 1

OPINIONS BELOW . . . . . . . . . . . . . . . . . . . . . . . . . 1
JURISDICTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
CONSTITUTIONAL PROVISIONS INVOLVED . . 1
STATUTES AND REGULATIONS INVOLVED ... 2
STATEMENT OF THE CASE ................. 2
I.

THE PATENTS-IN-SUIT ................ 3

II.

FACTUAL BACKGROUND AND THE

INFRINGEMENT ...................... 4

III.

THE DECISION OF THE DISTRICT

COURT .............................. 6

IV.

THE DECISION OF THE FEDERAL

CIRCUIT ............................ 10

REASONS FOR GRANTING THE PETITION ... 11

I.

THE DECISION ABUSED PROPER

SUMMARY JUDGMENT STANDARDS ... 11

II.

ORDINARY OBSERVERS TEST - THE

SOLE STANDARD FOR DESIGN PATENT
INFRINGEMENT ..................... 13

III.

A JUDGE IS NOT AN ORDINARY

OBSERVER . . . . . . . . . . . . . . . . . . . . . . . . . 15

IV.

DESIGN PATENT INFRINGEMENT: A

FACTUAL
DETERMINATION
APPROPRIATE FOR A JURY . . . . . . . . . . . 16

CONCLUSION ............................ 18
APPENDIX
Appendix A Judgment in the United States Court
of Appeals for the Federal Circuit
(June 5, 2015) ................ App. 1
Appendix B Order on Pending Motions in the
United States District Court,
Southern District of Indiana,
Indianapolis Division
(September 3, 2014) ........... App. 3
Appendix C U.S. Patent D 500,646 ........ App. 20
Appendix D Ordinary Observer Test Undertaken
by the Petitioner
[Fold-Out Exhibit] ........... App. 26
Appendix E 35 U.S.C. 171 .............. App. 27
35 U.S.C. 271 ............. App. 27
35 U.S.C. 289 ............. App. 35
Fed.R.Civ.P.56

........... App.36

VI

TABLE OF AUTHORITIES
CASES
Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1986) .................. passim
Braun Inc. v. Dynamics Corp. of America,
975 F.2d 821 (Fed. Cir. 1992) ........... 15, 16
Celotex v. Catrett,
4 77 U.S. 317 (1986) ................. 3, 10, 11
Crocs, Inc. v. Int'l Trade Comm'n,
598 F.3d 1294 (Fed. Cir. 2010) .............. 9
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) .......... 6, 9, 10
Fanimation, Inc. v. Dan's Fan City, Inc.,
Case No. 1:08-cv-1071-TWP-WGH, 2010 U.S.
Dist. LEXIS 134526 (S.D. Ind. Dec. 16, 2010) .. 7
Goodyear Tire & Rubber Co. v. Hercules Tire &
Rubber Co.,
162 F.3d 1113 (Fed. Cir. 1998) .......... 15, 16
Gorham Co. v. White,
81 U.S. 511 (1871) ................... passim
Kustom Signals, Inc. u. Applied Concepts, Inc.,
264 F.3d 1326 (Fed. Cir. 2001) ........... 9, 11
LA Gear, Inc. v. Thom MeAn Shoe Co.,
988 F.2d 1117 (Fed. Cir. 1993) ............. 17
Richardson v. Stanley Works, Inc.,
597 F.3d 1288 (Fed. Cir. 2010) ........... 8, 11

Vll

Robert W. Lee v. Dayton-Hudson,

838 F.2d 1186 (Fed. Cir. 1988) ............. 16

CONSTITUTION
U.S. Const. amend. VII ................. 1, 17, 18

STATUTES AND RULES

28 U.S.C. 1254(1) .......................... 1
35 U.S.C. 171 ............................. 2
35 U.S.C. 271 ............................. 2
35 U.S.C. 289 ............................ 16
Fed. Cir. R. 36 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
Fed. R. Civ. P. 56 ............................ 2
Fed. R. Civ. P. 56(c) ......................... 17

BLANK PAGE

PETITION FOR A WRIT OF CERTIORARI

Petitioner, Kenneth Butler Sr., an individual and
U.S. citizen residing in the State of Connecticut,
respectfully petition this court for a writ of certiorari to
review the judgment of the United States Court of
Appeals for the Federal Circuit in this case.

OPINIONS BELOW
The non-precedential opinion of the United States
Court of Appeals for the Federal Circuit is not officially
reported, but is available at 2015 WL 3528264, and
reproduced in the Appendix hereto ("App.") at App. 1-2.
The opinion of the District Court for the Southern
District of Indiana is not officially reported, but is
available at 2014 WL 4370691, and reproduced atApp.
3-19.

JURISDICTION
The judgment ofthe Federal Circuit was entered on
June 5, 2015. App. 1. The jurisdiction of this court is
invoked under 28 U.S.C. 1254(1).

CONSTITUTIONAL PROVISIONS INVOLVED

The Seventh Amendment of the United States
Constitution provides:
"In Suits at common law, where the value in
controversy shall exceed twenty dollars, the
right of trial by jury shall be preserved, and no
fact tried by a jury, shall be otherwise
reexamined in any Court of the United States,
than according to the rules of the common law."

STATUTES AND REGULATIONS INVOLVED

This case involves provisions of the Patent Act, 35
U.S.C. 171 entitled "Patents for Designs" is set forth
at App. 27. 35 U.S.C. 271 entitled "Infringement of
Patents" is set forth at App. 27-35. This case also
involves provisions of the Federal Rules of Civil
Procedure: Rule 56 entitled "Summary Judgment" is
set forth at App. 36-39.

STATEMENT OF THE CASE

This case raises questions concerning the ability of
patent owners to fairly protect their novel designs.
Plaintiff/Petitioner, Mr. Butler filed suit with a jury
demand, exercising his right for the factual issue of
infringement to be heard by a jury as the trier of fact.
This Court in Gorham, 81 U.S. at 511 established
the ordinary observer test for the determination of
substantial similarity between the patented and
accused designs. "if, in the eye of the ordinary
observer, giving such attention as a purchaser usually
gives, two designs are substantially the same, if the
resemblance is such as to deceive such an observer,
inducing him to purchase one supposing it to be the
other, the first one patented is infringed by the other."
Gorham at 528.
Plain tiff provided unrefuted evidence from ordinary
observers at App. 26 which was ignored by the District
Court. The Respondents did not provide any factual
evidence at the District Court, only opinion. The
District Court substituted its own observations for
those of the relevant and admissible evidence of the
ordinary observer which demonstrated substantial
similarities between the patented and accused designs.

3
The approach of the District Court contravenes with
this Court's express precedent in Gorham and abuses
the summary judgment standards established in
Anderson, 4 77 U.S. at 242, Celotex u. Catrett, 4 77 U.S.
317 (1986), and their progeny. Only this Court can
correct this clear departure from its binding precedent.

I.

THE PATENTS-IN-SUIT

This is a patent infringement action in which

Kenneth Butler Sr. ("Petitioner"), seeks to enforce U.S.
Design Patent No. 500,646 (the "646 Patent") entitled
"Tool Handle." App. 20-25. This patent claims a design
for a tool handle that is used with socket wrench sets.
The '646 Patent had a single claim: "[T]he Ornamental
design for a tool handle, as shown and described." The
'646 Patent also includes seven figures that illustrate
the claimed design:
Fig.l

II.

FACTUAL BACKGROUND
INFRINGEMENT

AND

THE

Petitioner manufactures and sells tools though his

company KB tools, Inc. In 2003, Petitioner invented a
new design for a tool handle used with socket wrench
sets, and applied for a design patent. The '646 Patent
at was issued on January 11, 2005, with Petitioner
being the exclusive licensee. App. 20-25.
Respondents, Balkamp Inc. ("Balkamp") and
National Auto Parts Association ("NAPA") are
subsidiaries of Genuine Parts Company Corporation
("Genuine Parts"). Respondents Tein-I Industrial and
Yuh Yeou Industry manufactured the accused product.
Balkamp imports and distributes automotive
aftermarket products to NAPA. Genuine Parts
imported the accused product through its subsidiary
Balkamp and distributed the accused product through
its subsidiary NAPA.
Petitioner personally observed the accused
"Spinning Impact Extension" ("accused product") on
sale at NAPA's retail store, and immediately
recognized it as substantially similar to the '646

Patent. App. 26. Before filing suit, Petitioner contacted

Respondents and conducted a survey of purchasers at
a NAPA store and found that the purchasers were also
confused by the similarity of design. App. 26. Petitioner
filed suit in 2012, requesting a trial by jury.
Petitioner alleges the accused product applies the
design of the '646 patent or is a colorable imitation
thereof. The accused product comes in three sizes
shown below:
front

I ell

.(I)

VX'' Driw- 7" Length l Pan 'i61- 1)07 1

l/2" Drive- H"' Length (Part 461-5XOI'il

In 2012, Petitioner filed suit for infringement of the

'646 patent against Respondents in the United States
District Court for the Southern District of Indiana. On
December 3, 2013, the parties filed a joint claim
construction statement and, on December 31,2013, the
Parties filed their initial Markman claim construction
briefs and Respondents filed their motion for summary
judgment of non-infringement. In support of its
opposition to Respondent's motion for summary
judgment, Petitioner submitted unchallenged survey
evidence (App. 26) demonstrating substantial
similarity between the accused product and the
patented design sufficient to establish a genuine issue

6
of material fact that should have precluded summary
judgment ofnon-infringement.

III.

THE DECISION OF THE DISTRICT COURT

The District Court factored out functional aspects of

the '646 Patent during claim construction, and adopted
"The ornamental design of a tool handle, as shown and
described, excluding the functional front and rear
square drive ends." 1

In rendering its determination on infringement, the

District Court identified what it observed as differences
in the appearance of the patented design and the
accused product. These were differences noticed by the
Court, not by an ordinary observer and by the Court
looking at photographs of the accused product, not an
ordinary observer looking at the actual physical
product. Plaintiffs evidence was gathered at the point
of sale NAPA stores of Respondents, from ordinary
purchasers in the setting of an ordinary purchase.

"Where a design contains both functional and non-functional

elements, the scope of the claim must be construed in order to
identify the non-functional aspects of the design as shown in the
patent." See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665,
680 (Fed. Cir. 2008).

The Court's personal observations included that

'646 patent is knurled along its entire length while the
accused product had unknurled portions at each end of
the cylindrical body and that the back end of the
accused product extends farther than the patented
design. App. 15. These minor differences were also
observable by the ordinary observers, but apparently
not considered to be distinguishing factors "giving such
attention as a purchaser usually gives" to ordinary
observers. It is important to note that in the context of
a tool handle, a purchaser may give less attention to
the aesthetics than a purchaser of a ceiling fan with
unique blades that looks like palm leaves. Fanimation,
Inc. v. Dan's Fan City, Inc., Case No. 1:08-cv-1071TWP-WGH, 2010 U.S. Dist. LEXIS 134526 (S.D. Ind.
Dec. 16, 2010) at p. 11. The District Court while
identifying the design distinctions noticed by the Court
in substituting its observations for those of an ordinary
observer failed to comprehend different levels of
attention given by ordinary observers based on product
types.
'

'

Element

Descri,gtion

Front (male) square drive or Front

adapter

Cylindrical extension shaft or

Cylindrical front end portion

Tapered front end

Unknurled, reduced diameter front

end or Untapered front end

Knurled handle or Knurled portion of

the handle

Beveled or tapered back end

Rear (female) square drive or Square

back adaptor

The District Court's approach in considering

functional features while determining design
infringement is incorrect. Rather than considering the
design as a whole, the District Court should have
considered the ornamental features ofthe design as a
whole. Richardson v. Stanley Works, Inc., 597 F.3d
1288, 1293-1294 (Fed. Cir. 2010).
The District Court did not consider, or discuss, the
survey evidence demonstrating actual confusion
amongst twenty eight of the twenty eight ordinary
observers regarding the accused design and the
patented design. Instead, the District Court deemed it
proper to make its own independent observations not
within the context of an ordinary observer and decide

itself whether or not the designs were substantially

similar.
A Summary Judgment of non-infringement was
entered in this matter on September 3, 2014, with the
District Court recognizing that:

The sole test for determining whether a

design patent has been infringed is the
ordinary observer test. Egyptian Goddess,
543 F.3d at 678. Under this test, a product is
infringed if an ordinary observer, familiar with
the prior art and giving such attention as a
purchaser would usually give, "would be
deceived into believing that the accused product
is the same as the patented design." Crocs, Inc.,
598 F.3d at 1303 (citing id. at 681). Although
patent infringement is a question of fact,
"summary judgment may be appropriate when
there is no genuine issue of material fact or
when, drawing all factual inferences in favor of
the nonmoving party, no reasonable jury could
return a verdict for the nonmoving party."
Kustom Signals, Inc. v. Applied concepts, Inc.,
264 F.3d 1326, 1332 (Fed. Cir. 2001). App. 12.
The District Court concluded that the patented and
accused designs are not substantially similar based
solely on its own visual observation and comparison of
photos ofthe accused product and the patented design.
In doing so, the District Court completely disregarded
Petitioner's survey evidence wherein every single
ordinary observer found the designs to be substantially
the same. In fact, the District Court did not even
mention the survey evidence in its written opinion.

10
The District Court erroneously applied the ordinary
observer's test by (a) substituting its own observations
and opinion as a non-ordinary consumer for that of the
ordinary consumer in finding non-infringement, and
ignored the rules of evidence in (b) disregarding the
survey evidence (App. 26) of ordinary observer which
created a genuine issue of material fact which should
have precluded summary judgement.

IV.

THE DECISION
CIRCUIT

OF

THE

FEDERAL

On appeal, the Federal Circuit affirmed the District

Court's grant of summary judgment per curiam,
without opinion, under Rule 36. By affirming the
summary judgment, the Federal Circuit supported the
methodology wherein District Courts are not required
to consider competent evidence that demonstrates
substantial similarity between the infringing design
and the patented design. The Federal Circuit has given
District Courts the authority to ignore the evidence of
ordinary observers test, and decide the issue of design
patent infringement based on their personal
evaluation. This decision of the Federal Circuit
impermissibly alters Gorham and Egyptian Goddess as
it allows District Courts to replace ordinary observers
from the ordinary observers' test, and impermissibly
alters Anderson, and Celotex v. Catrett, and their
progeny in the established standard for summary
determinations The Federal Circuit's judgment
warrants review and correction by this Court.

11

REASONS FOR GRANTING THE PETITION

I.

THE DECISION ABUSED PROPER

SUMMARY JUDGMENT STANDARDS

Summary judgment is improper when there exists

a genuine dispute on an issue of material fact. Kustom
Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326,
1332 (Fed. Cir. 2001). When the non-moving party
bears the burden of proof at trial, summary judgment
is only proper if the non-movant fails to make an
evidentiary "showing sufficient to establish the
existence of an element essential to that party's case."
Celotex Corp., 4 77 U.S. at 322. The Petitioner produced
survey evidence during discovery, (discovery had not
yet closed at the time of the entry of summary
judgement) that demonstrated substantial similarity
between the designs resulting in a likelihood of
confusion amongst ordinary observers. 2 In addition,
when the non-moving party bears the burden of proof
at trial, the moving party must prove that there is an
absence of evidence to support the non-moving party's
case. Celotex Corp., 477 U.S. at 317. The Respondents
failed to meet its burden of proving absence of evidence
of infringement.
Design patent infringement focuses only on
ornamental aspects of the patented designs.
Richardson, 597 F. 3d at 1293. The survey participants
were tool users and understood that the functionality
of the infringing product was different from its design.

"Plaintiff, to survive defendant's summary judgment motion,

need only present evidence from which a jury might return a
verdict in his favor." See Anderson, 477 U.S. at 257.

12
These ordinary observers knew that the function could
be accomplished with different ornamentation and only
considered the ornamental features during their
observation. The survey evidence established that the
participants were deceived into believing that the
accused product was the same as the patented design.
The District Court is not free to disregard this
competent evidence offered by the Petitioner because
"the evidence of the non-movant is to be believed, and
all justifiable inferences are to be drawn in his favor."
Anderson, 477 U.S. at 255. Nevertheless, the District
Court did not consider Petitioner's survey evidence
during determination of a summary judgment for noninfringement, and did not even mention nor refer to
this evidence in its written decision.
The District Court agreed that there were certain
similarities between the two products:
It is true that there are certain similarities
between the two products, including the
cylindrical body of both tool handles with
extensions protruding from the front end of the
main body. In short, it is true as Plaintiff argues
that the patented design and the accused
product share certain general similarities, to
wit, they are both tool handles with unprotected
functional front and back ends that have
cylindrical main bodies with knurling located
somewhere on the handle. [App. 14].

But ignored the impact such similarities would have

on ordinary observers. The uniquely visually appealing,
balanced and unified impression presents a common
visual appearance to the ordinary observer. This

13
similarity is a matter of fact to be determined by a
presentation of evidence to the trier of fact, in this
instance a jury, and not to be decided on summary
judgment, even before the close of discovery.
The District Court abused the established summary
judgment standard by entering summary judgement
without finding that there was no genuine issue of
material fact such that no reasonable jury could return
a verdict for the non-moving party. In determining
summary judgment of non-infringement, the District
Court should have inquired whether or not a
reasonable jury could conclude that ordinary
purchasers would find the designs to be substantially
the same. The proper way to make this inquiry was to
consider the evidence already before the Court (App.
26), deny summary judgement, allow discovery to be
completed and have the factual determination tried
before the jury.
The Federal Circuit by affirming the District
Court's decision maintained that District Courts are
not required to consider, even at the summary
judgment stage, competent evidence that validates
confusion amongst ordinary purchasers regarding the
patented and accused designs.

II.

ORDINARY OBSERVERS TEST - THE

SOLE STANDARD FOR DESIGN PATENT
INFRINGEMENT

This Court addressed the proper test for design

patent infringement in Gorham, 81 U.S. at 526.
"We are now prepared to inquire what is the
true test of identity of design. Plainly, it must be
sameness of appearance, and mere difference of

14

lines in the drawing or sketch, a greater or

smaller number of lines, or slight variances in
configuration, if insufficient to change the effect
upon the eye, will not destroy substantial
identity."
This Court further articulated in Gorham, 81 U.S.
at 528:
"We hold, therefore, that if, in the eye of the
ordinary observer, giving such attention as a
purchaser usually gives, two designs are
substantially the same, if the resemblance is
such as to deceive such an observer, inducing
him to purchase one supposing it to be the other,
the first one patented is infringed by the other."
To determine infringement of a design patent, this
Court in Gorham, 81 U.S. at 528, created a test that
does not rely upon expert viewpoints but instead favors
unsophisticated and general ordinary observers when
considering the overall similarity of a patented design
to an accused design. The standard set forth in Gorham
rejects the detailed analysis that might find "slight
variances in configuration" and instead relies upon "the
effect upon the eye" of the ordinary observer.
The ordinary observers test is best conducted by a
survey of ordinary purchasers who can be, and were,
found at the place of business of Respondent, NAPA.
(App. 26) Determining whether purchasers and/or user
of products would be deceived into buying one product
while thinking they are buying another is based upon
perceived substantial similarities in the designs, by the
ordinary observer. To the ordinary observer, the design
of the '646 Patent and the design of the Accused

15
Product appear visually similar. The Plaintiff provided
twenty eight instances of ordinary observers confused
or "deceived" by observation into thinking that the
accused device was depicted in the design patent
drawings. The Respondents did not refute this
evidence. The Respondents did not present any survey
or other evidence from any ordinary observers. The
District Court did not address this evidence in its
decision.

III.

A JUDGE IS
OBSERVER

NOT

AN

ORDINARY

This Court established in Gorham, 81 U.S. at 528,

that the viewpoint of an "ordinary observer," is the
relevant test m determining design patent
infringement.
The Federal Circuit in affirming the District Court's
holding allowed the observations of the Court to
substitute for those of the ordinary observer. This
directly contravenes with the Supreme Court's express
admonition against reliance on non-ordinary observer's
viewpoints. A judge is a non-ordinary observer by
virtue of education, training and skill. In Braun Inc. u.
Dynamics Corp. of America, 975 F.2d 821 (Fed. Cir.
1992), the court expressly recognized that the jury
represented a "sampling of ordinary observers." A jury
of"ordinary observers" would have been appropriate in
this case, instead of entering summary judgment based
upon a District Court's personal view.
The Federal Circuit in Goodyear Tire & Rubber Co.
v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1117
(Fed. Cir. 1998), found the proper ordinary observers to
be truck drivers and fleet operators who were the

16
purchasers and users of the tires that incorporated the
patented design. In Braun, the Federal Circuit held the
ordinary observer to be a member of the general public
or an ordinary juror. In departing from the standards
set forth in Gorham and applied in Goodyear, and
Braun the Federal Circuit, in affirming the decision of
the District Court here, has shifted the infringement
inquiry away from the ordinary observers.
The methodology wherein a District Court can
conduct design patent infringement analysis from their
own personal points of view, and not through the eyes
of ordinary observers, as Gorham mandates, IS
substantively and procedurally flawed.

IV.

DESIGN PATENT INFRINGEMENT: A

FACTUAL
DETERMINATION
APPROPRIATE FOR A JURY

In 35 U.S.C. 289 infringement is defined as

unauthorized manufacture or sale of "the patented
design, or any colorable imitation thereof." App. 35.
Design patent infringement requires a showing that
the accused design is substantially the same as the
claimed design. Gorham, 81 U.S. at 528; Robert W. Lee
v. Dayton-Hudson, 838 F.2d 1186, 1187 (Fed. Cir.
1988). In conducting such analysis the patented design
is viewed in its entirety, as it is claimed. A dispute is
genuine if the evidence "is such that a reasonable jury
could return a verdict for the nonmoving party."
Anderson, 4 77 U.S. at 248. There could be no doubt
that there were genuine disputes of material facts in
this case, as the survey evidence submitted by the
Petitioner clearly established infringement of the '646
patent. The weighing of the evidence and the drawing
of legitimate inferences from the facts are jury

17
functions, not those of a judge. Anderson, 4 77 U.S. at
242,255. Under Rule 56( c) of the Federal Rules of Civil
Procedure, "the judge's function at the summary
judgment stage is not himself to weigh the evidence
and determine the truth of the matter, but to
determine whether there is a genuine issue for trial."
Instead the District Court, acting as a fact finder,
wrongly made its own finding of non-infringement. The
District Court should not have decided the issue as a
fact finder.
Design patent infringement is a question of fact,
which a patentee must prove by a preponderance of the
evidence. LA Gear, Inc. v. Thom MeAn Shoe Co., 988
F.2d 1117, 1224 (Fed. Cir. 1993). The Anderson
standard should apply equally to Petitioner because the
Petitioner presented survey evidence that
demonstrated disputes with regard to material facts.
The disputed material facts are genuine and must be
heard by a jury to determine the verdict of
infringement. Petitioners right to secure a jury trial for
an issue which belongs to the jury was denied by the
improper entry of summary determination. The
Federal Circuit's affirmance is a denial of Petitioner's
constitutional right to a jury trial.
This Court should grant certiorari to decide whether
in a design patent infringement action, where a jury is
timely demanded, the Seventh Amendment permits
judges to resolve, as a matter oflaw, a genuine factual
dispute regarding design patent infringement. In
affirming the District Court's finding of no
infringement, the Federal Circuit ignored the
precedent of this Court, its own binding precedent and

18
more importantly, the right to a jury trial provided by
the Seventh Amendment.

CONCLUSION
For the foregoing reasons, Petitioner respectfully
requests that the Court grant this Petition for A Writ
of Certiorari and reverse the judgment of the Court of
Appeals for the Federal Circuit.
Respectfully submitted,
JOSEPH J. ZITO
Counsel of Record
DNL ZITO
1250 Connecticut Ave, NW, Suite 200
Washington, DC 20036
202-466-3500
jzi to@dnlzito.com
PATRICK R. DELANEY
DITTHAVONG & STEINER, P.C.
44 Canal Center Plaza, Suite 322
Alexandria, VA 22314
703-822-7140
pdelaney@dcpa ten t.com
Counsel for Petitioner