Z Produx v. MAC - MSJ Brief

Case 2:13-cv-00734-DDP-RZ Document 35 Filed 09/23/13 Page 1 of 30 Page ID #:122
1 2 3 4 5 6 7 R OBINS , K APLAN , M ILLER & C IRESI L.L.P. 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
ROBINS, KAPLAN, MILLER & CIRESI L.L.P. David Martinez, Bar No. 193183 DMartinez@rkmc.com 2049 Century Park East, Suite 3400 Los Angeles, CA 90067-3208 Telephone: 310-552-0130 Facsimile: 310-229-5800 ROBINS, KAPLAN, MILLER & CIRESI L.L.P. Jan M. Conlin (pro hac vice) Thomas C. Mahlum (pro hac vice) Larina A. Alton (pro hac vice) 800 LaSalle Avenue 2800 LaSalle Plaza Minneapolis, MN 55402-2015 Telephone: 612-349-8500 Facsimile: 612-339-4181 Attorneys for Defendant and Counterclaimant, Make-Up Art Cosmetics, Inc. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA Z PRODUX, INC., Plaintiff, v. MAKE-UP ART COSMETICS, INC., Defendant. Case No. CV 13-00734 DDP (RZx) [Assigned to the Hon. Dean D. Pregerson] MAKE-UP ART COSMETICS, INC.S NOTICE OF MOTION AND MOTION FOR SUMMARY JUDGMENT; MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT
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Date: October 21, 2013 MAKE-UP ART COSMETICS, INC., Time: 10:00 a.m. Courtroom: 3 Counterclaimant, [Separate Statement of v. Uncontroverted Facts and Conclusions of Law; Declaration of Z PRODUX, INC., Thomas C. Mahlum; and [Proposed] Judgment filed concurrently Counterclaimherewith] Defendant.
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MACS MOTION AND MEMORANDUM IN SUPPORT OF SUMMARY JUDGMENT
TO THE HONORABLE COURT, THE CLERK OF THE COURT, ALL PARTIES HEREIN AND THEIR ATTORNEYS OF RECORD: PLEASE TAKE NOTICE that on October 21, 2013 at 10:00 a.m., or as soon thereafter as the Motion may be heard at the United States District Court, located at 312 N. Spring Street, Courtroom 3, Los Angeles, CA 90012, that Defendant and Counterclaim-Plaintiff Make-Up Art Cosmetics, Inc. (MAC) will and hereby does move this Court, pursuant to Federal Rule of Civil Procedure 56 and Central District of California Local Rule 56, for an order granting summary judgment and a determination of no merit on Plaintiff Z Produx, Inc.s entire Complaint, and its causes of action for Design Patent Infringement pursuant to 35 U.S.C. 271. The Motion will be made on the grounds that there are no disputed genuine issues of fact relating to these claims and Defendant is entitled to judgment as a matter of law because Plaintiffs Design Patent No. D642,743 is not infringed by MAC and is invalid. This Motion is based upon this Notice of Motion, the Memorandum of Points and Authorities, the Declaration of Thomas C. Mahlum, the Separate Statement of Uncontroverted Facts and Conclusions of Law, the exhibits filed concurrently herewith, the [Proposed] Judgment lodged concurrently herewith, the Courts file on this matter, and upon such and further evidence and argument as may be presented prior to or at the time of the hearing on this Motion. // // // // // //
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TABLE OF CONTENTS
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MEMORANDUM OF POINTS AND AUTHORITIES...................................... 1 INTRODUCTION ................................................................................................... 1 BACKGROUND FACTS ........................................................................................ 2 I. U.S. Patent No. D642,743 .................................................................. 2 A. B. C. II. The Z Palette is the Product that Embodies the 743 Design ........................................................................................ 3 Z Produx Publicly Disclosed its Design in a Related Trademark Application Filed on February 19, 2009 ........... 4 The USPTO Rejected Ms. Shteysels Related Utility Patent ......................................................................................... 7
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MAC Pro Palette Large Single.......................................................... 8
ARGUMENT ........................................................................................................... 9 Legal Standard .............................................................................................. 9 I. The MAC Palette Does not Infringe the 743 Design Patent...... 10 A. B. II. The 743 Patent is Limited to Designs with Specific Characteristics that are not Embodied by the MAC Palette ...................................................................................... 10 The Only Shared Characteristics Between the MAC Palette and the 743 Design are Functional and Cannot Supply a Basis for Infringement Allegations....... 19
The 743 Design Patent is Invalid Due to Prior Disclosure ........ 24
CONCLUSION ...................................................................................................... 25

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Cases American Sign & Indicator Corp. v. Schulenburg, 267 F.2d 388 (7th Cir. 1959).......................................................................... 25 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986).................................. 9 Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986).................................. 9 Chef'n Corp. v. Trudeau Corp., 2009 U.S. Dist. LEXIS 47013, 2009 WL 1564229 (W.D. Wash. June 4, 2009)................................................................ 14, 15, 18 Egyptian Goddess, 543 F.3d 665 (Fed. Cir. 2006) ........................................................................ 19 Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995) ................................................................. passim Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113 (Fed. Cir. 1998) ...................................................................... 10 In re Mann, 861 F.2d 1581 (Fed. Cir. 1988) ................................................................ 11, 24 Inwood Labs, Inc. v. Ives Labs, Inc., 456 U.S. 844 (1982) ....................................................................................... 20 Lee v. Dayton-Hudson Corp., 838 F.2d 1186 (Fed. Cir. 1988) .......................................................... 10, 13, 20 McIntire v. Sunrise Specialty Co., No. Civ. S-11-2495, 2013 U.S. Dist. LEXIS 65192 (E.D. Cal. May 7, 2013) ........................................................................... 11, 19 OddzOn Prods. v. Just Toys, 122 F.3d 1396 (Fed. Cir. 1997) ............................................................... passim Penn Fabrication (U.S.A.) v. Soulbella Enters., Case No. 98-3458, 1998 U.S. Dist. LEXIS 17348 (C.D. Cal. Aug. 5, 1998) ................................................................................ 24 Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992) ........................................................................ 20 Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992) ........................................................................ 19
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Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010) ................................................................ 19, 20 Sofpool LLC v. Kmart Corp., 2013 U.S. Dist. LEXIS 76293 2013 WL 2384331 (E.D. Cal. May 29, 2013) ........................................................................ passim Solar Sun Ring Inc. v. Wal-Mart Stores Inc., No. CV 11-6990 PSG, 2012 U.S. Dist. LEXIS 156373 (C.D. Cal., Oct. 31, 2013) .............................................................................. 10 Spotless Enters. v. A&E Prods. Group L.P., 294 F. Supp. 2d 322, (E.D.N.Y. 2003) ........................................................... 21 Statutes 35 U.S.C. 102(b) .......................................................................................... 1, 24, 25 35 U.S.C. 289 ......................................................................................................... 10 Rules Fed. R. Civ. P. 1 ............................................................................................................ 2 Fed. R. Civ. P. 56(a) ................................................................................................... 9 Other Authorities 37 CFR 2.27(b) ......................................................................................................... 24
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MEMORANDUM OF POINTS AND AUTHORITIES INTRODUCTION This is a case for alleged infringement of a design patent for the design of a cosmetic holder. By its terms, however, a design patent is limited to the ornamental as distinct from the functional aspects of the design. Indeed, the design patent at issue claims [t]he ornamental design for the cosmetic holder, as shown and described. Yet despite numerous opportunities, the Plaintiff has failed to identify any ornamental elements of its design that are supposedly incorporated into the accused product. For example, the patented design contains a number of ornamental elements, including a book like appearance, overhanging edges, a top and bottom formed from a single piece, the use of a hinge-less flat spine connecting the base to the cover, and a proportionally thick border for the window frame. Instead of identifying any of these elements, Plaintiff merely contends that the accused product has a clear top and an empty base. But as the inventor herself has admitted, these elements are purely functional. The function of the clear top is to enable users to see what cosmetics are inside the holder, and the function of the empty base is to permit the product to hold cosmetics. As a result, Plaintiffs claim for infringement of its ornamental design fails as a matter of law. Moreover, Plaintiffs design patent is invalid pursuant to 35 U.S.C. 102(b). More specifically, the patented design was publicly disclosed more than one year prior to the application. In February 2009, the patented design was described and depicted in connection with a trademark application submitted by the Plaintiff, yet the design patent was not applied for until April 2010. Accordingly, defendant Make-Up Art Cosmetics, Inc. (MAC) brings
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this early1 motion for summary judgment against plaintiff Z Produx, Inc. (Z Produx) as to its claim for design patent infringement. Because the undisputed facts demonstrate that MAC does not infringe the protectable ornamental elements of its design, and that its design was publicly disclosed more than one year before the filing date of the design patent, MAC is entitled to summary judgment and Z Produxs Complaint should be dismissed in its entirety and with prejudice. BACKGROUND FACTS I. U.S. Patent No. D642,743 U.S. Patent No. D642,743, Cosmetic Holder (the 743) was filed on April 14, 2010 by inventor Zena Shteysel (Ms. Shteysel). (Declaration of Thomas Mahlum, dated September 23, 2013 (Mahlum Decl.) at Ex. A.)2 The patent was applied for on April 14, 2010 and issued August 2, 2011. (Id.) The USPTO system indicates it was assigned to Z Produx on May 18, 2012. (Id., Ex. B.) It includes one claim for [t]he ornamental design for the cosmetic holder, as shown and described. (Id., Ex. A.) The 743 includes a number of figures, including:
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1 MAC brings this dispositive motion early in an effort to avoid needless litigation costs and fees. See Fed. R. Civ. P. 1 (indicating the rules should be administered to secure the just, speedy, and inexpensive determination of every action and proceeding); and at 1993 Adv. Comm. Note (recognizing the affirmative duty of the court to exercise the authority conferred by these rules to ensure that civil litigation is resolved not only fairly, but also without undue cost or delay and that [a]s officers of the court, attorneys share this responsibility with the judge to whom the case is assigned). In the event its motion is denied, MAC reserves all rights to renew this motion based upon these or additional arguments and upon a more fully developed record at the close of discovery. 2 The Prosecution History for D642,743 is attached in full to the Mahlum Decl. as Exhibit Y for the Courts reference.
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(Id., at Figs. 1-3, 8, 9.) A. The Z Palette is the Product that Embodies the 743 Design. Ms. Shteysel is the president of Z Produx. Z Produx is in the business of selling the Z Palette, which embodies the 743 patent. (Id., Ex C at 10, 73; Ex. Z (depicting D642,743 patent marking on back of the Z Palette).) The Z Palette appears as follows:
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(Mahlum Decl., Ex. D.) The opaque rim of the box is relatively thick in appearance, and is proportionally a thick border as compared to the size of the window. In fact the thick border constitutes 39% of the surface area of the Z Palette.3 The material of the cosmetic holder is a matte finish with a cardboard-like texture. (See id.) Like the 743 design patent, the Z Palette has two scores or ridges along the edges of the cosmetic holder:
The Z Palette is 4.75 inches wide and 8 inches long; the window pane in the lid measures 3.5 inches wide by 6 5/8 inches long. This means that the surface area of the lid is 38 square inches (4.75x8) and the surface are of the window pane is 23.18 square inches (3.5x6.625). Proportionally, the window pane makes up 61% of the square inches of the lid, whereas the opaque rim makes up the remaining 39% of the square inches of the lid. See Mahlum Declaration at 4.
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(Id., Ex. E.) Additionally, as depicted in the 743 design patent, the Z Palette has a flat, unarticulated hinge-less spine that is flat:
(Id., Ex. F.) These features together could be said to give the cosmetic holder a book-like design and appearance. B. Z Produx Publicly Disclosed its Design in a Related Trademark Application Filed on February 19, 2009.
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On February 19, 2009, more than a year before its design patent application, Z Produx applied for a registered trademark for the word Z Palette to be used with a Cosmetic case sold empty and other comparable uses. (Id., Ex. G at 4.) The Z Palette trademark registration application states that the Z Palette mark was used in commerce at least as early as February 12, 2009, and further that the trademark was being used in commerce as of the date of the trademark application. (Id., at 6 (Commerce: The applicant is using the [Z Palette] mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. In International Class 018, the mark was first used at least as early as 02/12/2009, and first used in commerce at least as early as 02/12/2009, and is now in use in such commerce.).) Finally, the trademark applicant attested its representations regarding the use of the Z Produx mark in commerce as of February 12, 2009, to be true:
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1 2 3 4 5 6 7 R OBINS , K APLAN , M ILLER & C IRESI L.L.P. 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 (Id., at 7.)
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares . . . that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.
The USPTO specifically warns that the filing of a design or other materials in connection with a trademark application constitutes a public disclosure: ALL DATA PUBLIC: All information you submit to the USPTO at any point in the application and/or registration process will become public record, including your name, phone number, e-mail address, and street address. By filing this application, you acknowledge that YOU HAVE NO RIGHT TO CONFIDENTIALITY in the information disclosed. The public will be able to view this information in the USPTOs on-line databases and through Internet search engines and other on-line databases. This information will remain public even if the application is later abandoned or any resulting registration is surrendered, cancelled, or expired. (Id., Ex. I (available at http://www.uspto.gov/trademarks/teas/#).) The above warning is consistent with the Trademark Manual of Examining Procedure, which provides that The public may view and print images of the contents of trademark application and registration records through the TSDR portal on the USPTO website at http://tsdr.uspto.gov/. Electronic images of Board proceeding records are also available on the USPTO website at http://ttabvue.uspto.gov/ttabvue/. TSDR and TTABVUE are available 24 hours a day, seven days a week, free of charge. The public may also view and print images of the contents of trademark application and registration records through the Trademark Image Capture and Retrieval System (TICRS), available in the Public Search Facility on the USPTO premises. See TMEP 402. (Id., Ex. H, at 109.01; see also id., 111, 402
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(available at http://tmep.uspto.gov/RDMS/detail/manual/TMEP/ Apr2013/d1e2.xml#/manual/TMEP/Apr2013/d1e2.xml).) Although it had not yet applied for a patent on its product, on February 12, 2009 Z Produx publicly filed its trademark application attaching the following image of the Z Palette:
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(Id. at 9.) The product pictured in the patent application is the Z Palette which embodies the asserted design patent. (See id.; cf. Mahlum Decl., Ex. C at 73 (stating that the Z Palette embodies the 743 design patent).) As indicated above, the trademark application described the above specimen by noting that the cosmetic case was sold empty (the cosmetics shown in the image are for demonstrative purposes only). (Id., Ex. G.) This image of the design and the description thereof was publicly filed on February 12, 2009, more than a year before the April 14, 2010 filing of the 743 design patent. (Compare Mahlum Decl., Ex. G (indicating a February 12, 2009 filing date and attaching images of the Z Palette) with Ex. A (reflecting a filing date of April 14, 2010) and Ex. I (stating that materials filed are public); and Ex. H (further indicating public online availability of trademark applications); see also Ex. C at 68 (testifying that an image of the Z Palette design was attached to a trademark application as of February 19, 2009).) The trademark was registered on September 1, 2009. (Id., Ex. G at 28 (Trademark principal register dated Sept. 1, 2009).)
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Apparently recognizing that the date of first use in the trademark application would bar its patent applications pursuant to the on-sale bar because the date was more than a year prior to its patent applications, on November 30, 2011, Z Produx cancelled its trademark registration. (See id., Ex. G.) On the same day, Z Produx filed a new trademark application for Z Palette that claimed a May 20, 2009 date of first use. (Id., Ex. J.) At this time, an issue of fact exists as to the true date of first use, and the applicability of the on-sale bar.4 But there is no dispute that the design of the Z Palette was publicly disclosed in the original trademark application, which was publicly filed on February 19, 2009. C. The USPTO Rejected Ms. Shteysels Related Utility Patent. In addition to filing for a design patent, Ms. Shteysel also applied for a utility patent covering the utilitarian aspects of her product. (See id., Ex. K & Ex. L.) The utility patent application, filed April 14, 2010, sought to claim, among other things, a cosmetic holder with a magnetic bottom, a spine, and a cover with a frame in order to define a window for viewing the makeup containers. (Id., Ex. K, Reply to Office Action dated April 1, 2012, at 4.) But the utility patent application was rejected as obvious, in part based on the Liden patent5 depicted below and assigned to MAC.
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4 It is possible that a sale more than a year in advance of the design patent application will be unequivocally established through additional discovery. Therefore as noted in Footnote 1 above MAC reserves its rights to renew this motion on that basis at the close of discovery should it identify a sufficient basis for doing so. 5 The Liden patent is US Design Patent D597,256, filed on June 10, 2008. (Mahlum Dec., Ex. X.) The design depicted in Liden is nearly identical to the accused product, with the primary exception of an insert to hold cosmetics in place.
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As the examiner noted, Liden teaches the top cover portion of a cosmetic holder may contain a frame with an opening in which a clear material may be inserted such that the opening covered in clear material acts as a window for viewing the makeup containers when the cover is in a closed position. (Id., Rejection dated 9/14/11.) Indeed, Ms. Shteysel has acknowledged that she was not the first inventor to come up with a cosmetic holder with either a clear top or, of course, an empty base. (See id., Ex. C at 82.) II. MAC Pro Palette Large Single The only MAC product accused of infringement is the MAC Pro Palette Large/Single (having UPC 7-73602-23605-3) (the MAC Palette). (Complaint, Dkt.#1, at 11.) The MAC Palette has a distinct appearance from either the 743 claimed design or the Z Palette that embodies it. First, it has a narrower opaque rim than the proportions identified in either the 743 or the Z Palette:
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(Mahlum Decl., Ex. AA.) The opaque rim of the box is relatively thin and sleek in appearance, and is proportionally a narrow border as compared to the size of the window. (See id.) In fact, the narrow border constitutes only 16% of the surface area of the MAC Palette.6 Additionally, rather than having a flat back hinge that folds back on itself like the Z Palette, the MAC Palette has a triangular or ridged hinge:
6 The MAC Palette is 4 3/8 inches wide and 7 inches long; the window pane in the lid measures 3 7/8 inches wide by 6 5/8 inches long. This means that the surface area of the lid is 30.6 square inches (4.475x7) and the surface are of the window pane is 25.67 square inches (3.875x6.625). Proportionally, the window pane makes up 83.8% of the square inches of the lid, whereas the opaque rim makes up the remaining 16.2% of the square inches of the lid. See Mahlum Declaration at 5.
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1 2 3 4 5 6 7 R OBINS , K APLAN , M ILLER & C IRESI L.L.P. 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Legal Standard Federal Rule of Civil Procedure 56(a) establishes that a court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). A party may move for summary judgment not only as to an entire case, but also as to a claim, defense, or part of a claim or defense. Id. The movant bears the initial burden to demonstrate the lack of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). The movant has the burden of showing that there is no genuine issue of fact, but the plaintiff is not thereby relieved of his own burden of producing in turn evidence that would support a jury verdict [in his favor]. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986).
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(Mahlum Aff., Ex. M.) Also, the edges are flush with one another without the scoring around the rim of the product present in the Z Palette or 743:
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(Mahlum Aff., Ex. N.) Thus, as described further below, the MAC Palette has a distinct appearance from the Z Produx patent or Z Palette product. ARGUMENT
Thus the movant satisfies the burden, the nonmovant must set forth specific evidence showing that there remains a genuine issue for trial, and may not rest upon mere allegation or denials of his pleading. Id. In the case of design patent cases, where no significant distinction in design has been shown between the patent drawing and its physical embodiment, it is not error for the court to view them both, and to compare the embodiment of the patented design with the accused devices. Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1189 (Fed. Cir. 1988); Solar Sun Ring Inc. v. Wal-Mart Stores Inc., No. CV 11-6990 PSG, 2012 U.S. Dist. LEXIS 156373, *13 (C.D. Cal., Oct. 31, 2013). I. The MAC Palette Does not Infringe the 743 Design Patent. A cursory review of the features of the MAC Palette as compared to the 743 reveals a distinct design and appearance of the MAC Palette that foreclose further consideration of this matter. A design patent is infringed if the patented design, or any colorable imitation thereof, is applied to any article of manufacture for the purpose of sale. 35 U.S.C. 289. Thus, a design patent is infringed by the unauthorized manufacture, use, or sale of the article embodying the patented design or any colorable imitation thereof. See id.; Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113, 1116-17 (Fed. Cir. 1998). A. The 743 Patent is Limited to Designs with Specific Characteristics that are not Embodied by the MAC Palette
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As an initial matter, a design patentee limits the scope of his patent by including ornamental features that give the overall design a distinctive ornamental appearance. Sofpool LLC v. Kmart Corp., No. Civ. S-10-3333, 2013 U.S. Dist. LEXIS 76293, 3-4, 2013 WL 2384331 (E.D. Cal. May 29, 2013) (citing Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)); McIntire v. Sunrise Specialty Co., No. Civ. S-11-2495, 2013 U.S. Dist. LEXIS
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65192, at 10-11 (E.D. Cal. May 7, 2013). The claimed design does not cover the universe of designs that remotely resemble it. See Elmer, 67 F.3d at 1577 (patentee included in its drawings certain features that gave the design a distinctive ornamental appearance, and thus effectively limited the scope of its patent claim by including those features in it). Thus, the initial step in any comparison of designs is a determination of whether the accused design is even within the limitation on scope that the patentee has imposed, through his patent drawings. Sofpool LLC, 2013 U.S. Dist. LEXIS 76293, at 4; McIntire, 2013 U.S. Dist. LEXIS 65192, at 10-11. For example, in Elmer, the Federal Circuit construed the claims of the ornamental design for a vehicle top sign holder, as shown and described. Elmer, 67 F.3d at 1577. The only design shown and described was a vehicle sign design that included, inter alia, triangular vertical ribs and an upper protrusion that gave the design a distinctive ornamental appearance. Id. No other design was suggested by the patent. Id. Because the triangular vertical ribs were included in the patent drawings, the patentee effectively limited the scope of its patent claim by including those features in it. Id. (citing In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) (Design patents have almost no scope. The claim at bar, as in all design cases, is limited to what is shown in the application drawings.)). Because a visual comparison to the accused product revealed that the triangular vertical ribs were not present, the Federal Circuit therefore held that no reasonable jury could conclude that the overall visual appearance of the claimed design is substantially similar to the accused design. Id. at 1578 (the overall ornamental appearance of the patented design, as shown in the patent drawings, is too different from [defendants] design for an ordinary observer to be induced into purchasing [defendants] product thinking it was [plaintiffs] design). Therefore the Federal Circuit overturned a jury
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verdict in favor of the plaintiff and entered judgment for the defendant. Id. Federal District Courts in the Ninth Circuit have applied Elmer to foreclose detailed consideration of prior art and infringement contentions where the plaintiff has failed to show a threshold level of similarity between the patented design and the accused product. For example, in Sofpool, 2013 U.S. Dist. LEXIS 76293, at 4, Judge Karlton of the Eastern District of California considered whether the patentees limitations on his patent plainly excluded the accused design: Of course, the claimed design does not cover the universe of designs that remotely resemble it. Rather, as an initial matter, a design patentee limits the scope of his patent by including ornamental features that give the overall design a distinctive ornamental appearance. Thus, the initial step in any comparison of designs is a determination of whether the accused design is even within the limitation on scope that the patentee has imposed, through his patent drawings. Id., at 3 (citation omitted). In considering summary judgment, the Court construed the claims of the patent and considered the drawings, an example of which follows:
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(Mahlum Decl., Ex. T.) The Sofpool court observed that the design patent and the accused product shared certain features, including that they were both designs for an oval, above-ground pool; both featured a tubular top; both featured side struts along their long sides, stretching from just below the tubular top, to the ground; both featured side straps that run
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underneath the pool and connect the struts where the struts meet the ground; both featured angled side walls with a curve or bulge at the bottom, just before the structure meets the ground; and finally both designs contained segmented side walls. Sofpool, 2013 U.S. Dist. LEXIS 76293, at 13. An image of the accused design is contained in the pleadings:
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(Case 2:10-cv-03333-LKK-JFM, Dkt.#48 at 11.) However, despite these similarities, the two designs featured different proportions: [O]ne ornamental aspect of a design patent is the proportions of the design. The '817 patent claims a pool design that is approximately seven (7) times longer than it is tall, in its 2-strut design. Accordingly, the patent claims a design for a squat pool. Indeed, the overall appearance of the claimed design is of a squat, wading-type pool. The accused pool, on the other hand, has a taller and more elegant appearance. It does not give the appearance of being squat. Indeed, the accused design is less than four (4) times longer (taking the length of the tubular top) than it is tall, approximately, in its 2-strut design. . . . A design patent cannot, of course, claim every conceivable shape and proportion that could arise from its basic design. But that would appear to be the point of permitting design patents in the first place. The patent protects the shape and proportion the patentee chooses, but leaves other shapes and proportions to the imagination of other designers. . . Sofpool, 2013 U.S. Dist. LEXIS 76293, at 14-17 (emphasis added) (quoting Lee, 838 F.2d at 1188 the district court correctly viewed the design aspects of the accused devices: the wooden balls, their polished finish and appearance, the proportions, the carving on the handle, and all other ornamental characteristics)(emphasis added)). Having concluded that the proportions
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of the designs were not the same, the Sofpool, LLC Court concluded that no reasonable juror could find that an ordinary observer would conclude that the taller, more elegant accused pool embodies the squat pool plaintiff patented or any colorable imitation thereof. Id., at 16-17. Because the accused design was not within the limitation on scope that the patentee imposed in the drawings, the Court did not consider any prior art as it was rendered unnecessary to do so. Id., at 17 n.10. Similarly, in Chef'n Corp. v. Trudeau Corp., Case No. C08-01135, 2009 U.S. Dist. LEXIS 47013, 9-11, 2009 WL 1564229 (W.D. Wash. June 4, 2009), the Court considered [t]he ornamental design for a steamer, as shown and described. Id., at 9. The Court concluded that defendant was entitled to summary judgment because the differences between the accused product and the patented design for a steamer were more than mere difference of lines in the drawing or sketch or slight variances in configuration. Id., at 10. This was because the design patent depicted two circular solid lines below the top rim, which according to plaintiffs construction depicted a change in curvature or slope of a surface as well as a a small, depressed ring at the center of the steamer:
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(Mahlum Decl., Ex. U at Fig. 1.) The accused product, however, had only one change in concavity between its base and sides, and a flat center that lacked any central ring other than that formed by its hole pattern. Chef'n Corp., 2009 U.S. Dist. LEXIS 47013 at 10. For example, see this image of the accused design submitted
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among the pleadings:
(Civ. Case No. 2:08-c01135-MJP, Dkt.#19 at 239.) As such, the Court concluded as a matter of law that an ordinary observer familiar with the prior art would recognize that the 503 design presents a more complex structure in terms of slope. Chef'n Corp., 2009 U.S. Dist. LEXIS 47013, at 10. Like the designs at issue in Elmer, Sofpool, and Chefn, the 743 patent design does not bear a threshold resemblance to the MAC Palette. Like all patents, the 743 patent is limited to what it actually claims: The ornamental design for the cosmetic holder, as shown and described. (Mahlum Decl., Ex. A.) The 743 claims a cosmetic holder with a lip that extends beyond the edge of the cosmetic holder rather than being flush:
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(Id., highlighted excerpts of Figs. 1, 4, 7, 8, 11, 14.) The drawings are all consistent: The lips along the front side of the design extend past the edge of the case to give a booklike appearance. (See id.) Additionally, the images in the picture show two seams or ridges along the side of the cosmetic case rather than just one where the case would separate. (See id.) The Z Palette similarly has lips that extend past the front edge of the case and multiple seams or ridges along the edge of the case:
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(Mahlum Decl., Ex. P (highlight added); see also id., Ex. C at 90-91 (explaining that because of the cardboard material the degree of extrusion by the lip from the box varies by moment in time because it can be moved back and forth, but that in the inventors opinion the lip in the Z Palette is the one present in the 743 patent).) Contrary to the claimed design, the MAC Palette exhibits one seam, rather than three, and this is only to meet the function of a box that must open along the seam. Contrary to the claimed design, the edges along three sides of the box are flush to the sides with no extension of a lip along the edge of the box. These two distinctions are shown below:
(Mahlum Decl., Ex. Q; see also id., Ex. C at 100 (admitting the MAC Palette has no lip).)
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Further, the 743 is limited to designs that have a hinge that is flush with the cosmetic case and formed like the binder or spine of a book:
(Mahlum Decl., Ex. A at Figs. 5 (depicting rear elevational view) & 4 (depicting side elevational view from either side) (highlighting added).) Again, the drawings are consistent in depicting a hinge side that, though it has apparent seams, is flush with the sides of the box. (See id.) Similar to the claimed design, the Z Palette does not have an elevated hinge along the back of the box:
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(Mahlum Decl., Ex R (highlighting added).) In contrast, however, the accused MAC Palette has a distinctive triangular raised hinge:
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(Mahlum Decl., Ex. M (highlighting added); Ex. C at 97 (agreeing that the MAC Palette has a different hinge).) These distinctions exceed the differences elaborated upon and found to be dispositive in Elmer and Chef'n. Elmer, 67 F.3d at 1577-78 (triangular vertical ribs present in the claimed design not present in the accused product foreclosed infringement as a matter of law); Chef'n Corp., 2009 U.S. Dist. LEXIS 47013 at 10 (infringement foreclosed because patent claimed two changes in concavity and depressed ring in steamer while accused product had only one change in concavity and a flat center that lacked any central ring). Here, the 743 design patent claims two seams or grooves along the sides of the cosmetic holder: the MAC Palette has only one, and it is functional rather than ornamental. The 743 design patent claims a booklike lip that extends beyond the edge of the side of the box: the MAC Palette is flush along the sides of the box without a book like set of ornamental lips. The 743 design patent claims a hinge that is flush with the side of the box: the MAC Palette has a distinctive triangular hinge that is elevated from the sides of the box. Additionally, though the above is more than sufficient to sustain a finding of summary judgment against Z Produx, the claimed proportions of the 743 design patent are also materially distinct from the proportions of the MAC Palette. The Z Palette has a much thicker opaque rim than the MAC Palette does, giving an overall different appearance to the products. The Z Palette rim makes up 39% of the total surface area of the lid of the cosmetic holder, while the MAC rim makes up only 16% of the surface area of the lid of the cosmetic holder because it is much narrower. The MAC opaque rim around the edge of the window is only .25 of an inch thick while the edge of the Z Palette rim is much wider - .68 of an inch. As in Sofpool LLC, 2013 U.S. Dist. LEXIS 76293, at 14-17, these differing
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proportions lead to a distinct appearance such that no reasonable jury could that the ordinary observer might confuse one product for the other. All of these differing elements contribute to an overall distinct appearance between the patented design and the accused product. For these reasons summary judgment should be granted in favor of MAC. B. The Only Shared Characteristics Between the MAC Palette and the 743 Design are Functional and Cannot Supply a Basis for Infringement Allegations
In the event that the Court determines that the patentees limitations on its design does not plainly exclude the accused palette, the infringement inquiry then requires a comparison of the whole claimed design to the design of the accused device. Sofpool LLC, 2013 U.S. Dist. LEXIS 76293, at 4; McIntire, 2013 U.S. Dist. LEXIS 65192, at 10-11. The comparison requires the fact-finder to determine whether the patented design as a whole is substantially similar in appearance to the accused bowl from the perspective of the ordinary observer familiar with the prior art and designs. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295 (Fed. Cir. 2010). In Egyptian Goddess, the Federal Circuit recognized that the ordinary observer test should be the sole test for determining whether a design patent has been infringed. 543 F.3d 665, 678 (Fed. Cir. 2006) (abolishing the point of novelty test). In determining the overall similarity of design, the ordinary observer must be deceived by the features common to the claimed and accused designs that are ornamental, not functional. OddzOn Prods. v. Just Toys, 122 F.3d 1396, 1404 (Fed. Cir. 1997) (a design patent only protects the ornamental aspects of the design); Elmer, 67 F.3d at 1577 (stating that a design patent protects only the nonfunctional aspects of an ornamental design as shown in the patent); Read Corp. v. Portec, Inc., 970 F.2d 816, 820 (Fed. Cir. 1992) (it is the non-functional design aspects that are pertinent to
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determinations of infringement and the patentee must establish that an ordinary person would be deceived by reason of the common features in the claimed and accused designs which are ornamental); Lee, 838 F.2d at 1188-90 ([I]t is the non-functional, design aspects . . . that are pertinent to determinations of infringement. . . . A device that copies the utilitarian or functional features of a patented design is not an infringement unless the ornamental aspects are also copied, such that the overall resemblance is such as to deceive. . . . [While] infringement can be found for designs that are not identical to the patented design, such designs must be equivalent in their ornamental, not functional, aspects.). Thus, in construing the claims of a design patent, the Court must separate the ornamental and functional features of the patented design. Richardson, 597 F.3d at 1298. 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. Id. (quoting OddzOn Prods., 122 F.3d at 1405). The Richardson Court explained: If the patented design is primarily functional rather than ornamental, the patent is invalid. However, when the design also contains ornamental aspects, it is entitled to a design patent whose scope is limited to those aspects alone and does not extend to any functional elements of the claimed article. Id. at 1293-94. In evaluating whether a particular element is functional rather than ornamental, an aspect is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. Inwood Labs. v. Ives Labs., 456 U.S. 844, 851 n.10, 102 S. Ct. 2182 (1982). As one Court carefully explained, the examination of functional elements is different in the claim construction analysis than it is when assessing invalidity:
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[Patentee] argues that in distinguishing between the functional and ornamental features in the infringement analysis, the test should be the same as that used in determining the affirmative defense of invalidity based on functionality. The test for functionality to invalidate a design patent is a stringent one that requires a showing that the appearance of the claimed design is dictated by the use or purpose of the article. [Patentee] argues that only the solely functional features - those that cannot be achieved with an alternative design - are excluded from the infringement comparison. However, the process of distinguishing the ornamental features is merely a form of claim construction and is distinct from the functionality analysis of invalidity. A design patent can be primarily ornamental, yet have swaths of features that are not infringed if copied. As was the case in OddzOn Prods., the functional characteristics, while not invalidating the design patent, merely limit the scope of protected subject matter. 122 F.3d at 1406. Accordingly, even elements that are not solely dictated by function are not included in the comparison to the extent they are functional. Spotless Enters. v. A&E Prods. Group L.P., 294 F. Supp. 2d 322, 344-345, (E.D.N.Y. 2003) (emphasis added, citations and quotations omitted). In discriminating between functional design aspects that can be copied and ornamental aspects that can be patented and protected, Courts evaluate the usefulness of the asserted design. For example, in OddzOn Prods., 122 F.3d at 1405, the Federal Circuit evaluated a design patent covering a foam football with a tail and fin structure:
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(Mahlum Decl., Ex. W.) The accused products by New Toys were also foam footballs with fins:
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(Mahlum Decl., Ex. V.) Donald S. Chism, 8 CHISM ON PATENTS 23.05[3][e] at 23-267 (2011). The Oddzon Court determined that the design patent covered both functional and nonfunctional elements. OddzOn Prods., 122 F.3d at 1405. Though the patent holder could claim protection over its specific design, it could not claim a monopoly over rocket-like tossing balls with a tail: While [the patentee] correctly states that there are many ways of designing tossing balls it is undisputed that the ball in question is specifically designed to be thrown like a football, yet travel further than a traditional foam football. It is the football shape combined with the fins on a tail that give the design these functional qualities. The tail and fins on [the patented] design add stability in the same manner as to the tail and fins founds on darts or rockets. They are no less functional simply because tossing balls can be designed without them. . . . These . . . functional characteristics . . . limit the scope of the protected subject matter. Id., at 1406. Here, the only two elements Z Products has identified as shared between the Z Palette, claimed to embody the 743, and the MAC Palette are that (1) there is a clear window on the lid; and (2) it is sold empty. (Mahlum Decl., Ex. S at Interrog. Resp. Nos. 3, 4, 10; Ex. C at 11 (describing the Z Palette as a cosmetic holder with an empty base and a clear window); Ex. C at 42 (testifying that the MAC product is exactly like the Z Palette design because it is being sold without the [cosmetic] inserts, creating an empty base.); at 43 (testifying that if a cosmetic holder was sold with a cosmetic insert [that] was inside and not removable, it would not be infringing); at 96 (testifying that the MAC Palette looked like her own because it had a clear window and an empty base).) But each of these design features is functional. Indeed, Plaintiff admits that the purpose of the clear window is so you can see the product immediately inside and the purpose of the empty case is so that you can put whatever you want into it. (Mahlum Decl., Ex. C at 11-12; see also id. at 16 (stating that the design was developed by asking
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a manufacturer to use their own design but to create something that came with an empty pan and a clear window that was not as long and rectangular); at 108 (testifying that a cosmetic holder product that does not come empty cant be customized or allow the customer to mix and match their make-up and that if the product does not have a clear window the customer cannot see the product inside without opening the lid); at 131-32 (same).) Like the tailed and finned tossing ball at issue in Oddzon, this palette was designed to meet a specific functional purpose: to allow users to see what is in their palette without opening it, and to allow them to customize the make-up kept inside it. As Ms. Shteysel testified, the Z Palette consumer base appreciates these design aspects because of their usefulness, not the ornamental appearance: [Customers of the Z Palette] like the window and that you can see through it. They like that you can customize it anyway you want so you can fit any size product, any brand, all in one palette, interchangeable. They like that it features a magnet inside. And that I offer different sizes, I think, and different designs. (Id., at 94.) Customers appreciate that a clear lid allows them to easily find and view their make-up choices. (Id., at 103, 105, 109, 110.) Accordingly, the only two aspects of the asserted design patent alleged to be present in the MAC Palette that it is sold empty and has a clear top are purely functional. There is no ornamental value to their use. The window is clear so that people can see their make-up inside and extends to the edges of the frame so that most of the palette can be viewed. The box is sold empty so that people can fill it, not because of the way it makes the product look. Ms. Shteysels failed utility patent application, if granted, would have been the appropriate methodology to enforce a purported monopoly over these functional features. A design patent is not.
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After these functional features are factored out of the analysis through claim construction as required, there are no shared features or similarity between the MAC product and the asserted 743 design to form a basis for potential infringement allegations. For these reasons summary judgment should be granted in favor of MAC. II. The 743 Design Patent is Invalid Due to Prior Disclosure. Under 35 U.S.C. 102(b)(2010)7, a person shall be entitled to a patent unless the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States. (Emphasis added.) Such disclosures apply to invalidate design patents as well as utility patents. In re Mann, 861 F.2d 1581, 1581-82 (Fed. Cir. 1988) (public display of design at a trade show constitutes public use within meaning of Section 102(b) and was therefore barred); Penn Fabrication (U.S.A.) v. Soulbella Enters., Case No. 98-3458, 1998 U.S. Dist. LEXIS 17348, at 2 (C.D. Cal. Aug. 5, 1998) (use of easel at seminar more than one year prior to filing was public use sufficient to show lack of likelihood of success on the merits). Here, the Z Palette design was publicly disclosed in a trademark application dated February 12, 2009. (Mahlum Decl., Ex. G (indicating a February 12, 2009 filing date and attaching images of the Z Palette).) The submission of the design to the trademark office was public at the time of disclosure. (Mahlum Decl., Ex. I (stating that materials filed are public); Ex. H at 109.01, 111, 402 (stating that the public has 24-hour online access to all trademark filings).) See also 37 CFR 2.27(b) (access to the file of a
7 This section was amended under the AIA for patents filed after March 16, 2013. Because the 743 was filed before that date, the prior version of Section 102 is referred to.
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particular pending [Trademark] application will be permitted prior to publication under 2.80 upon written request); American Sign & Indicator Corp. v. Schulenburg, 267 F.2d 388, 394 (7th Cir. 1959) (The design of the sign had been made open for public inspection by the copyright registration more than one year prior to filing the patent application.). The public disclosure of a the Z Palette design to the trademark office therefore occurred on February 12, 2009, which is more than a year before the April 14, 2010 design patent filing. (Mahlum Decl., Ex. A (reflecting a filing date of April 14, 2010).) Because of this timeline, the disclosure of the Z Palette design to the trademark office renders the 743 patent design is anticipated and invalid pursuant to 35 U.S.C. 102(b). CONCLUSION For the foregoing reasons, defendant Make-Up Art Cosmetics, Inc. respectfully requests that summary judgment be granted in its favor on the grounds of non-infringement of the asserted design patent, and invalidity in light of the public disclosure of the design in connection with the February 19, 2009 patent application. Dated: September 23, 2013 ROBINS, KAPLAN, MILLER & CIRESI L.L.P. By: /s/ David Martinez David Martinez
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Attorneys for Defendant and CounterclaimPlaintiff, MAKE-UP ART COSMETICS, INC.
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Z Produx v. MAC - MSJ Brief

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Case 2:13-cv-00734-DDP-RZ Document 35 Filed 09/23/13 Page 1 of 30 Page ID #:122

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MACS MOTION AND MEMORANDUM IN SUPPORT OF SUMMARY JUDGMENT

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MAC Pro Palette Large Single.......................................................... 8

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among the pleadings:

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