callet world v. hex - resp to msj

7/27/2019 Callet World v. Hex - Resp to MSJ

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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

CALLET WORLD, LLC,

Plaintiff,

vs.

AUGUST HAT COMPANY INC. d/b/a HEXand APPLE INC.

Defendants.

CASE NO.: 13-CV-2030 (JSR)

ECF CASE

CALLET WORLDS OPPOSITION TO DEFENDANTS MOTION FOR SUMMARY

JUDGMENT ON THE ISSUE OF NONINFRINGEMENT

MALEK SCHIFFRIN LLP

Kevin N. Malek

[email protected] Madison Avenue, Nineteenth Floor

New York, New York 10173

Office: (212) 220-9387

Fax: (603) 218-6985

Attorneys for Plaintiff

Case 1:13-cv-02030-JSR Document 24 Filed 07/19/13 Page 1 of 19


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TABLE OF AUTHORITIES

Page No(s).

Amini Innovation Corp. v. Anthony California, Inc.,

439 F.3d 1365 (Fed. Cir. 2006) ................................................................... 7

Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 106 S. Ct. 2505 (1986) ..................................................... 6, 7

Celotex Corp. v. Catrett,477 U.S. 317, 106 S. Ct. 2548 (1986) ......................................................... 6

Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008) ............................................................ passim

Frey v. Accessory Brands, Inc.,No. 11-60486, slip op. (S.D. Fla. Jun. 12, 2012) ....................................... 9

Gart v. Logitech, Inc.,

254 F.3d 1334 (Fed. Cir. 2001) ................................................................... 6

Gen. Elec. Co. v. Nintendo Co., Ltd.,179 F.3d 1350 (Fed. Cir. 1999) ................................................................... 7

Gorham v. White,

81 U.S. 511 (1872) ................................................................................ 7, 13

Guidroz-Brault v. Mo. Pac. R.R. Co.,254 F.3d 825 (9th Cir. 2001) ....................................................................... 6

Intl Seaway Trading Corp. v. Walgreens Corp.,

589 F.3d 1233 (Fed. Cir. 2009) ............................................................. 8, 14

In re Kaplan,789 F.2d 1574 (Fed. Cir. 1986) ................................................................. 12

L.A. Gear, Inc. v. Thom McAn Shoe Co.,

988 F.2d 1117 (Fed. Cir. 1993) ....................................................... 6, 13, 15



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Page No(s).

Luv NCare, Ltd. v. Mayborn USA, Inc.,

No. 1:11-cv-02460, slip op. (S.D.N.Y. Jul. 30, 2012) ............................... 9

In re Mathews,

408 F.2d 1393, 161 USPQ 276 (CCPA 1969) .......................................... 12

Mobile Hi-Tech Wheels v. Direct Tire & Wheel, Inc.,No. 09-7583, slip op. (C.D. Cal. Jan. 24, 2011) ......................................... 9

Motionless Keyboard Co. v. Microsoft Corp.,486 F.3d 1376 (Fed. Cir. 2007) ................................................................... 7

Oakley, Inc. v. Predator Outdoor Products, LLC,Case No. 11-0456 JVS (C. D. Cal.) .................................................... 15, 16

Park B. Smith, Inc. v. CHF Indus. Inc.,

811 F.Supp. 2d 766 (S.D.N.Y. 2011) .......................................................... 9

Payless Shoesource, Inc. v. Reebok Int'l, Ltd.,

998 F.2d 985 (Fed. Cir. 1993) ..................................................................... 8

Rapha Products Group, LLC v. Skullcandy, Inc.,

No. 1:10-cv-03388-JEC, slip op.(N.D.Ga. Aug. 13, 2012) ............................................................................ 9

Richardson v. Stanley Works, Inc.,

597 F.3d 1288 (Fed. Cir. 2010) ................................................................. 15

Riverwood Intl Corp. v. R.A. Jones & Co.,

324 F.3d 1346 (Fed. Cir. 2003) ................................................................. 12

Rosco, Inc. v. Mirror Lite Co.,304 F.3d 1373 (Fed. Cir. 2002) ................................................................. 15

Solar Sun Rings, Inc. v. Wal-Mart Stores, Inc.,No. CV 11-6990 PSG (JEMx), 2012 WL 5379144

(C.D. Cal. Oct. 31, 2012) ............................................................................ 8



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Page No(s).

SRI Intl v. Matsushita Electric Corp. of America,

775 F.2d 1107 (Fed. Cir. 1985) ........................................................................... 6

OTHER AUTHORITIES

35 U.S.C. 102.............................................................................................. 11, 12

Fed. R. Civ. P. 56 ................................................................................................... 6



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Plaintiff Callet World LLC (Callet World) hereby submits its opposition to Defendant

August Hat Company, Inc. d/b/a Hexs (Hex) Motion for Summary Judgment of Non-

Infringement.

I. INTRODUCTION

To prevail on its Motion for Summary Judgment, Defendant must show that there are no

genuine issues of material fact and that no reasonable jury could find that Defendants line of

Solo Wallet products (Accused Cases) are substantially similar to the design claimed in

Plaintiffs U.S. Design Patent No. D653,656 (the D656Patent). Defendants motion must fail.

Foremost, even Defendant concedes, in its opening brief, that the patented design and accused

products are roughly the same shape. Furthermore, as shown in the side-by-side comparison

below, Defendants Accused Cases are substantially the same to the design depicted in the D656

Patent, and thus infringes the D656 Patent.



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The Federal Circuit has held that the patent and accused designs do not have to be

identical, but the overall appearance as a whole of the patented design and the accused product

must be substantially similar in the eyes of an ordinary observer in order to establish

infringement. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008).

Defendants Accused Cases are not merely substantially similar under the ordinary observer

test; they are practically the same in all material respects to the Plaintiffs patented design. At a

minimum, there is a genuine issue of material fact that precludes the grant of summary judgment.

II. STATEMENT OF FACTS

Callet World is a designer and manufacturer of cases for mobile communication devices.

As a result of its research and development, Callet World has developed innovative designs that

have changed the face of the mobile phone case industry in a way that has broadly appealed to

consumers. In 2009, Callet World introduced the Callet brand mobile phone case. (See

Declaration of Brandon Charnas at 5 (hereafter referred to as the Charnas Decl.)).

The Callet combined in one small and lightweight case the protection functions and user

interface accessibility required of a mobile phone case into an elegant design that gave the Callet

an immediately recognizable look. (Complaint at 12). As a direct result of its innovative and

distinctive design, the Callet was an instant success, and it immediately became uniquely

associated with Callet World as its source. Reviewers universally praised the Callet as a must

have for 2011. (Id. at 13). News outlets reported the Callet as great and an unbeatable

gift. Commentatorspraised the Callet as a Hot Accessory on its hot list and celebrity users

celebrated the Callet as perfect for those always on the go. (Id.). Callet Worlds Callet

products have been extensively advertised throughout the United States, including network



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television, the Internet, and magazines, with the vast majority of the advertisements featuring

photographs of the distinctive design of the Callet products.

Callet World has protected its innovative designs through a design patent issued by the

United States Patent and Trademark Office. (Charnas Decl. at 3). The Callet World design

patent covers the many ornamental features of Callet Worlds devices, such as the phone cover

with integral card holder on the outwardly facing side of the phone cover. (Declaration of Kevin

N. Malek at Exhibit 1 (hereafter referred to as the Malek Decl)). This action concerns U.S.

Design Patent No. D653,656 (the D656patent). Callet World owns all right, title, and interest

in and to the D656 Patent. (Declaration of Shawn Vardi at 2 (hereafter referred to as the

Vardi Decl.)).

Defendant Hex imports and sell the Solo Wallet line of mobile phone cases that

infringe the D656 Patent (Accused Cases). The design of the Accused Cases is essentially

identical to the patented design. This is apparent from the side-by-side comparison of the

Accused Cases and the figures of the D656 Patent. Defendants Accused Cases contain all of the

major design features of the D656 Patent, including two distinct slots to hold cards or other small

personal items such as money or identification, card slots along the short face of the case as

opposed to the long face of the case, card slots integrated directly into the case itself and

outwardly facing card slots on the back of the case. (Vardi Decl. at 9). It is clear that

Defendants Accused Cases are substantially the same, if not identical in all material respects, to

the design depicted in the D656 Patent. Thus, the Accused Cases infringe Callet Worlds

patented design.

In spite of the overwhelming similarity between the Accused Cases and Callet Worlds

patented design, Defendant moved for summary judgment of non-infringement, claiming that



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there is no genuine issue of material fact and that no reasonable jury could find infringement.

Defendants position lacks merit, and this Court should deny Defendants motion.

III. LEGAL STANDARD

A. The Standard for Summary Judgment.

Summary judgment is appropriate only where the movant establishes that there are no

genuine issues of material fact and that the movant is entitled to judgment as a matter of law.

Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S. Ct. 2548, 2552

(1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 2510 (1986). In

determining whether there is a genuine issue of material fact, the evidence must be viewed in the

light most favorable to the party opposing the motion, with doubts resolved in favor of the

opponent. Gart v. Logitech, Inc., 254 F.3d 1334, 1339 (Fed. Cir. 2001).

Credibility determinations, the weighing of the evidence, and the drawing of legitimate

inferences from the facts are jury functions.Anderson, 477 U.S. at 255, 106 S. Ct. at 2513. The

ultimate question of design patent infringement presents a fact question for the jury. See SRI Intl

v. Matsushita Electric Corp. of America, 775 F.2d 1107, 1116 (Fed. Cir. 1985); see also L.A.

Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993). To prevail on summary

judgment, Defendants bear the heavy burden of showing the absence of any genuine issue of

material fact. Celotex Corp. v. Catrett, 477 U.S. at 323, 106 S. Ct. at 2552-2553.

A fact issue is genuine if the evidence is such that a reasonable jury could return a

verdict for the nonmoving party. Guidroz-Brault v. Mo. Pac. R.R. Co., 254 F.3d 825, 829 (9th

Cir. 2001) (emphasis added) (quoting Anderson, 477 U.S. at 248). [I]f a jury could decide the

issue either way, then material facts are genuinely in dispute and summary judgment must be



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denied. Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376, 1380 (Fed. Cir. 2007)

(quoting Gen. Elec. Co. v. Nintendo Co., Ltd., 179 F.3d 1350, 1353 (Fed. Cir. 1999)).

Only if Defendant presents such clear and uncontroverted evidence of non-infringement

does the burden of production shift to Plaintiff to present evidence creating a genuine issue of

material fact, and all such evidence presented by Plaintiff must be believed, with all reasonable

inferences drawn in Plaintiffs favor.Anderson, 477 U.S. at 255257, 106 S. Ct. at 2513-2514.

B. The Standard For Design Patent Infringement.

The Federal Circuit clarified the standard for design patent infringement in its en banc

decision in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008). The central

inquiry is whether an ordinary observer who is familiar with the prior art would find the

overall appearance of the accused product to be substantially the same as the overall

appearance of the patented design, or to embod[y] the patented design or any colorable

imitation thereof. Id. at 677-78; see also Amini Innovation Corp. v. Anthony California, Inc.,

439 F.3d 1365, 1372 (Fed. Cir. 2006) (court must analyz[e] the design as a whole and not

mistakenly analyze[] each element separately).

An infringing product need not be an exact copy of the patented design, and Defendant

cannot escape infringement by introducing minor variations into a product that is otherwise the

same. Egyptian Goddess, 543 F.3d at 670 ([T]he [infringing design and patented design] need

not be the same to the eye of an expert, because if that were the test, [t]here never could be

piracy of a patented design, for human ingenuity has never yet produced a design, in all its

details, exactly like another, so like, that an expert could not distinguish them) (quoting

Gorham, 81 U.S. at 527). The mandated overall comparison is a comparison taking into account

significant differences between the two designs, not minor or trivial differences that necessarily



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exist between any two designs that are not exact copies of one another. Intl Seaway Trading

Corp. v. Walgreens Corp., 589 F.3d 1233, 1243 (Fed. Cir. 2009). The critical issue is whether

the effect of the whole design [is] substantially the same minordifferences between a patent

design and an accused articles design cannot, andshall not, prevent a finding of infringement.

Payless Shoesource, Inc. v. Reebok Int'l, Ltd., 998 F.2d 985, 991 (Fed. Cir. 1993) (citations and

internal quotes omitted).

The hypothetical ordinary observer is deemed to be conversant with theprior art, which

may be relevant to infringement. Egyptian Goddess, 543 F.3d at 678. For example, [w]hen the

differences between the claimed and accused design are viewed in light of the prior art, the

attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed

design that differ from the prior art. Id. at 676. If the accused design has copied a particular

feature of the claimed design that departs conspicuously from the prior art, the accused design is

naturally more likely to be regarded as deceptively similar to the claimed design, and thus

infringing.Id. at 677. The accused infringer, not the patentee, bears the burden of pointing out

prior art that it considers pertinent to the comparison between the claimed and accused designs.

Id. at 678-79.

In light of the inherently factual nature of the determination of design patent

infringement, it is extremely difficult for a defendant to meet its burden to prevail on a motion

for summary judgment of non-infringement. See, e.g., Solar Sun Rings, Inc. v. Wal-Mart Stores,

Inc., No. CV 11-6990 PSG (JEMx), 2012 WL 5379144 *5 (C.D. Cal. Oct. 31, 2012) (denying

summary judgment of non-infringement even where the patented design and accused product

were not identical because a reasonable fact-finder could find by a preponderance of the

evidence that an ordinary observer, taking into account the prior art, could believe the accused



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design to be the same as the patented design); Mobile Hi-Tech Wheels v. Direct Tire & Wheel,

Inc., No. 09-7583, slip op. at 19 (C.D. Cal. Jan. 24, 2011) (denying summary judgment of non-

infringement of a design patent and holding that [while] a number of differences exist between

the designs of the Asserted Patents and the [accused products], as enumerated by Defendant, []

minor differences do not preclude a finding of infringement);Park B. Smith, Inc. v. CHF Indus.

Inc., 811 F.Supp. 2d 766, 778 (S.D.N.Y. 2011) (denying summary judgment of non-infringement

even in light of prior art because an ordinary observer, familiar with these designs, could still be

deceived into believing that the accused product is the same as the patented design); Rapha

Products Group, LLC v. Skullcandy, Inc., No. 1:10-cv-03388-JEC, slip op. at 11 (N.D.Ga. Aug.

13, 2012) (denying summary judgment of non-infringement of a design patent where the

differences [between the accused product and the asserted design] do not render the patented and

the accused designs sufficiently distinct that it [is] clear without more that there is no

infringement);Frey v. Accessory Brands, Inc., No. 11-60486, slip op. at 24-25 (S.D. Fla. Jun.

12, 2012) (denying summary judgment of non-infringement where a jury could reasonably find

that an ordinary observer, familiar with the prior art, and comparing the appearance of the

claimed design and the accused product as a whole would find that Defendants accused

product has an overall appearance deceptively similar to Plaintiffs design) (internal citations

omitted); Luv NCare, Ltd. v. Mayborn USA, Inc., No. 1:11-cv-02460, slip op. at 19 (S.D.N.Y.

Jul. 30, 2012) (denying summary judgment of noninfringement where the overall designs were

sufficiently similar that [the Court] cannot conclude, as a matter of law, that [the accused

product] does not infringe the [asserted patent]).

IV. THERE IS AT LEAST A GENUINE ISSUE AS TO WHETHER DEFENDANTS

ACCUSED CASES INFRINGE THE D656 PATENT



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A. Defendants Accused Cases Are Substantially The Same As The Claimed Design Of The

D461 Patent.

The D656 Patent, attached as Malek Decl. Ex. 1, is directed to the ornamental appearance

of a case for a mobile device, e.g., a mobile phone. As shown below, Defendant s Accused Cases

are not merely substantially similar under the ordinary observer test; they take the benefit of

same overall design.

The D656 Patent Defendants Solo Wallet Case

Figure 6

Figure 2



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As shown by a side-by-side comparison, the overall visual character of the Accused

Cases are essentially identical to the D656 Patent. Closely comparing Plaintiffs patented design

with Defendants Accused Cases reinforces the conclusion of substantial similarity. This

similarity is particularly evident in:

the identical number of card slots;

the identical positioning of the card slots into the top half of the case;

the identical positioning of the card slots along the short face of the case;

the identical integration of the card slots into the body of the case itself; and

the identical positioning of the card slots on the outward facing of the back side.

(Vardi Decl. at 9). There is, thus, substantial evidence that Defendants Accused Cases are

substantially similar to the D656 Patent and, thus, infringes Plaintiffs patent rights.

Accordingly, summary judgment of non-infringement is inappropriate and should be denied.

B. The Design Claimed In The D656 Patent And Copied By The Accused Cases Are

Conspicuously Different From The Prior Art.

Defendants appropriation of Plaintiffs design and the resulting infringement of the

D656 Patent becomes even more apparent in the context of prior art designs. In its Motion and

document production, Defendant identifies numerous alleged prior art designs. (See, e.g., Malek

Decl. at Exs. 2-8). Where, as shown above, a patented design departs conspicuously from the

prior art and an accused product copies the conspicuously different features, the accused

design is naturally more likely to be regarded as deceptively similar to the claimed design, and

thus infringing.Egyptian Goddess, 543 F.3d at 677. A side-by-side comparison of the alleged

prior art, Defendants Accused Cases, and the patented design of the D656 Patent shows that the

Accused Cases are nearly identical to Plaintiffs patented design, but distinct from the alleged

prior art designs.



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The D656 Patent Defendants Solo Wallet Case

Figure 6

Alleged Prior Art Designs



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As there is at least a genuine issue of material fact that Defendants Accused Cases

infringes the D656 Patent, summary judgment of non-infringement is inappropriate and should

be denied.

C. Defendants Cannot Avoid Infringement By Introducing Minor Differences To Avoid

Infringement.

The minor differences between the Accused Cases and the patented design are trivial and

legally insignificant. As discussed above, the patented design and the accused design do not have

to be identical in order for design patent infringement to be found; rather, the determination is

whether the effect of the whole design [is] substantially the same. L.A. Gear, Inc., 988 F.2d

at 1125 (quoting Gorham v. White, 81 U.S. 511, 530 (1872)). The slight visual differences

between the D656 Patent and the Accused Cases are the only details that prevent the Accused

Cases from being an exact copy of the D656 Patent.

The minor variations heralded by Defendant do not negate the overwhelming similarity

between the Accused Cases and Plaintiffs patented design, when viewed as a whole. This is

especially true in light of the significant differences between Plaintiffs patented design and the

prior art, and the Defendants appropriation of Plaintiffs distinctive design while rejecting an

assortment of other design options. Defendant cannot escape design patent infringement by

introducing insignificant differences after wholesale employ of Plaintiffs overall design. Intl

Seaway Trading Corp., 589 F.3d at 1243.

Because the trivial differences between the Accused Cases and the claimed design of the

D656 Patent do not avoid infringement, Defendant cannot meet its initial burden on summary

judgment and Defendants motion must be denied.

D. The Ornamental Design Of The D656 Patent Does Not Require Construction.



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Defendant states that the scope of the D656 Patent must be construed to eliminate

functional aspects, including the basic size and shape of the patented design, some sort of lip

on its front side that covers enough of the face of the phone so as to hold the case in place on the

phone, and the integral card holders [that] must match the dimensions of a credit card or

identification card from the claimed design. (Motion at 4-5.) This argument is based on a

misunderstanding of the law.

In a design patent case, the Court has wide discretion regarding the level of detail to be

used in describing the claimed design. Egyptian Goddess, 543 F.3d at 679. In the en banc

decision, the Federal Circuit cautioned that the preferable course ordinarily will be for a district

court not to attempt to construe a design patent claim by providing a detailed verbal description

ofthe claimed design.Id. (emphasis added).

In undertaking claim construction, the Court may find it useful to distinguish between the

ornamental and functional aspects of a design. Egyptian Goddess, 543 F.3d at 680; see also

Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010). However, the fact that

an article in a design patent performs a function does not mean that the appearance of the design

is functional or non-ornamental. A design patent ordinarily depicts an article that serves a

utilitarian purpose, L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir.

1993), such as a shoe, id, at 1122, or a tool, Richardson, 597 F.3d at 1292. However, the

appearance of the patented design is functional only if the appearance itself is dictated by the

use or purpose ofthe article.L.A. Gear, 988 F.2d at 1123. The appearance is functional only if

it is the only possible form of the article that could perform its function. Rosco, Inc. v. Mirror

Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002). When there are several ways to achieve the

function of an article of manufacture, the design of the article is more likely to serve a primarily



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ornamental purpose. L.A. Gear., 988 F.2d at 1123. The elements of the design may indeed

serve a purpose, but it is the ornamental aspect that is the b asis of the design patent. Id. Here,

examination of the D656 patent confirms that the patented design has numerous ornamental

features that have a utilitarian purpose, but are not dictated by their function. For example,

although the card slots of the patented design, the lip and the size and shape serve a utilitarian

purpose, there are countless design possibilities for each of these features, which can each

service identical utilitarian purposes. It is the design of each of these particular features that

serves a primarily ornamental purpose. See L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d

1117, 1123 (Fed. Cir. 1993).

There is no need for this Court to attempt to provide a detailed verbal description of the

claimed design, as is typically done in the case of utilitypatents, and the D656 Patent should be

construed as the ornamental design for a mobile device case, as shown and described in Figures

1 through 6 of the D656 Patent.Id.;Egyptian Goddess, 543 F.3d at 679. This is because it is the

overall appearance of the article, as is shown in the figures of the design patent, that constitutes

the scope of the patent claims.Id. The case design claimed in the D656 patent is not complicated

and is well-represented by the images presented therein. There is, thus, no need for a detailed

verbal construction of the D656 patent as such a construction would place undue emphasis on

particular features of the design and [create] the risk that a finder of fact will focus on each

individual described feature in the verbal description rather than on the design as a whole.

Egyptian Goddess, 543 F.3d at 665, 679-80.

V. DEFENDANTS MOTION IS PREMATURE

Concisely statedDefendants Motion is premature. Discovery is still in its nascent

stages. No depositions have been taken and the parties have only begun to produce documents.



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Furthermore, Callet World has only recently, received minimal substantive responses to

document production and no responses to interrogatories. The fact that only minimal discovery

has occurred demonstrates yet another reason why Defendants Motion is premature. The record

is simply not sufficiently robust to support a motion for summary judgment.

VI. CONCLUSION

Because the Accused Cases are essentially identical to the design of the D656 Patent, the

evidence of infringement is strong and substantial. Accordingly, this Court should deny

Defendants motion for summary judgment.

Dated: July 19, 2013 Respectfully submitted,

MALEK SCHIFFRIN LLP

By: /s/ Kevin N. Malek

Kevin N. Malek

[email protected]

340 Madison Avenue, Nineteenth FloorNew York, New York 10173

Office: (212) 220-9387

Fax: (603) 218-6985

Attorneys for Plaintiff



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CERTIFICATE OF SERVICE

I, Kevin N. Malek, do hereby certify that I served the foregoing Opposition to

Defendants Motion for Summary Judgment and all associated declarations and exhibits oncounsel for Defendant through the Courts ECF system and by U.S. First Class Mail on July 19,

2013.

/s/ Kevin N. Malek

Case 1:13-cv-02030-JSR Document 24-1 Filed 07/19/13 Page 1 of 1

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