Simplehuman v. Itouchless - Motion To Dismiss

Case 4:19-cv-02701-HSG Document 24 Filed 07/26/19 Page 1 of 31
1 Victor de Gyarfas (SBN 171950)

email: vdegyarfas@foley.com
2 Foley & Lardner LLP
555 South Flower Street, Suite 3300
3 Los Angeles, CA 90071-2411
Telephone: 213-972-4500
4 Facsimile: 213-486-0065
5
Attorneys for Defendant
6 iTouchless Housewares and Products, Inc.
7
8 UNITED STATES DISTRICT COURT

9 NORTHERN DISTRICT OF CALIFORNIA
10
11 SIMPLEHUMAN, LLC, CASE NO: 4:19-CV-2701-HSG

a California limited liability company,
12 DEFENDANT’S NOTICE OF MOTION AND
PLAINTIFF, MOTION TO DISMISS AMENDED
13 COMPLAINT; MEMORANDUM OF POINTS
v. AND AUTHORITIES IN SUPPORT OF
14 MOTION TO DISMISS AMENDED
ITOUCHLESS HOUSEWARES AND COMPLAINT DESIGN PATENT CLAIMS
15 PRODUCTS, INC., a California corporation,
[Filed concurrently: Memorandum of Points and
16 DEFENDANT. Authorities in Support; Declaration of Victor de
Gyarfas in Support and exhibits; Proposed Order]
17
18 Date: January 9, 2020

Time: 2:00 p.m.
19 Place: Courtroom 2, 4th Floor
Judge: Hon. Haywood S. Gilliam, Jr.
20
21
22
23 [TO BE PRINTED IN COLOR]

24
25
26
27
28
MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

Case No. 4:19-CV-2701-HSG
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1 TABLE OF CONTENTS
2 Page
3 I. INTRODUCTION ....................................................................................................................... 1
4 II. FACTUAL BACKGROUND ...................................................................................................... 3
5 A. THE ASSERTED PATENTS AND ACCUSED PRODUCTS ....................................... 3
6 B. PRIOR ART CITED AGAINST THE D807 IS CLOSER THAN THE
ACCUSED PRODUCT ................................................................................................... 4
7
III. THE COMPLAINT SHOULD BE DISMISSED WITH PREJUDICE BASED ON THE
8 DISSIMILARITIES BETWEEN THE ACCUSED PRODUCTS AND ASSSERTED
DESIGN PATENTS .................................................................................................................... 6
9 A. GOVERNING PRINCIPLES OF LAW .......................................................................... 6
10 1. Failure To State A Claim Upon Which Relief Can Be Granted ....................... 6
11 2. The Court May Take Judicial Notice Of Certain Things Outside
The Pleadings And Should Take Notice of The Design Patents,
12 Photographs Of The Accused Products, And Patent File History .................... 7
13 3. Pleading Patent Infringement Generally ........................................................... 8
14 4. Pleading Design Patent Infringement ............................................................... 9
15 5. Design Patent Infringement Claims Routinely Are Dismissed At

The Pleading Stage ......................................................................................... 11
16 B. PLAINTIFF’S COMPLAINT SHOULD BE DISMISSED FOR FAILURE TO
STATE A PLAUSIBLE CLAIM FOR DESIGN PATENT INFRINGEMENT OF
17 THE D807 PATENT...................................................................................................... 12
18 1. Plaintiff Failed Even To Include All Views Of The Accused
Products In The Complaint And Failed To Plead Design Patent
19 Infringement Adequately ................................................................................ 12
20 2. The Dual-Deodorizing Open-Top Trash Can Is Dissimilar From
the Claimed Design......................................................................................... 13
21
a. Side-By-Side Views Demonstrate The Dissimilarity ......................... 13
22
b. Prior Art Highlights The Dissimilarity Between The
23 Accused Product And The Claimed Design ....................................... 19
24 3. The Dual-Compartment Open-Top Trash And Recycle Can Is

Dissimilar From the Claimed Design ............................................................. 21
25 a. Side-By-Side Views Demonstrate The Dissimilarity ......................... 21
26 C. PLAINTIFF SHOULD NOT BE GIVEN LEAVE TO AMEND ................................. 25
27 IV. CONCLUSION .......................................................................................................................... 25
28

i Case No. 4:19-CV-2701-HSG
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1 TABLE OF AUTHORITIES
2 Page(s)
3 Federal Cases
4 Aminini Innovation Corp. v. Anthony California, Inc.,
439 F.3d 1365 (Fed. Cir. 2006)............................................................................................................10
5
Anderson v. Kimberly-Clark Corp.,
6 570 Fed. Appx. 927 (Fed. Cir. 2014) ...................................................................................................11
7 Anderson v. Kimberly-Clark Corp.,
No. C12-1979RAJ, 2013 WL 9760040 (W.D. Wash. Sept. 25, 2013) aff’d, 570 Fed.
8 Appx. 927 (Fed. Cir. 2014) ....................................................................................................................8
9 Apple, Inc. v. Samsung Elecs. Co., Ltd.,
No. 11-CV-01846-LHK, 2012 WL 3071477 (N.D. Cal. July 27, 2012) .............................................10
10
Arunachalam v. Apple, Inc.,
11 No.5:18-cv-01250-EJD, 2018WL 5023378 (N.D. Cal. Oct. 16, 2018) .................................................9
12 Ashcroft v. Iqbal,
556 U.S. 662 (2009) .................................................................................................................7, 8, 9, 21
13
Atlas IP LLC v. Pac. Gas & Elec. Co.,
14 No. 15-cv-05469, 2016 WL 1719545 (N.D. Cal. Mar. 9, 2016) ...........................................................9
15 Bell Atl. Corp. v. Twombly,
550 U.S. 544 (2007) .......................................................................................................................7, 8, 9
16
Colida v. Nokia, Inc.,
17 No. 2009-1326, 2009 WL 3172724 (Fed. Cir. Oct. 6, 2009)...............................................................12
18 Colt Int’l Clothing Inc. v. Quasar Science, LLC,
304 F. Supp.3d 891 (C.D. Cal. 2018) ....................................................................................................8
19
Competitive Edge, Inc. v. Staples, Inc.,
20 763 F. Supp. 2d 997 (N.D. Ill. 2010) ...................................................................................................11
21 Conley v. Gibson,
335 U.S. 41 (1957) .................................................................................................................................9
22
Contessa Food Prods., Inc. v. Conagra, Inc.,
23 282 F. 3d 1370 (Fed. Cir. 2002) abrogated on other grounds by Egyptian Goddess,
Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) ...............................................................................10
24
Crocs, Inc. v. Int’l. Trade Comm’n.,
25 598 F.3d 1294 (Fed. Cir. 2010)............................................................................................................10
26 Doe I v. Wal-Mart Stores, Inc.,
572 F.3d 677 (9th Cir. 2009) .................................................................................................................7
27
Dynacore Holdings Corp. v. U.S. Philips Corp.,
28 363 F. 3d 1263 (Fed. Cir. 2004).............................................................................................................8

ii Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1 e.Digital Corp. v. iBaby Labs, Inc.,

No. 15-CV-05790-JST, 2016 WL 4427209 (N.D. Cal. Aug. 22, 2016) ................................................9
2
Egyptian Goddess, Inc. v. Swisa, Inc.,
3 543 F.3d 665 (Fed. Cir. 2008) (en banc)............................................................................11, 13, 18, 19
4 Elmer v. ICC Fabricating, Inc.,
67 F.3d 1571 (Fed. Cir. 1995)..............................................................................................................10
5
Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,
6 796 F.3d 1312 (Fed. Cir. 2015)............................................................................................................11
7 Great Neck Saw Mfrs., Inc. v. Star Asia, U.S.A., LLC,
727 F. Supp. 2d 1038 (W.D. Wash. 2010) ...............................................................................11, 13, 19
8
Hall v. Bed Bath & Beyond, Inc.,
9 705 F.3d 1357 (Fed. Cir. 2013)..............................................................................................................9
10 Hoganas AB v. Dresser Indus., Inc.,
9 F.3d 948 (Fed. Cir. 1993) ...................................................................................................................8
11
KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc.,
12 997 F.2d 1444 (Fed. Cir. 1993)............................................................................................................12
13 Leadsinger, Inc. v. BMG Music Publ’g,
512 F.3d 522 (9th Cir. 2008) ...............................................................................................................25
14
In re Mann,
15 861 F.2d 1581 (Fed. Cir. 1988)............................................................................................................10
16 Massachusetts v. Westcott,
431 U.S. 322 (1977) ...............................................................................................................................8
17
Novitaz, Inc. v. inMarket Media, LLC,
18 No. 16-cv-06795-EJD, 2017WL 2311407 (N.D. Cal. May 26, 2017) ..................................................8
19 NuVasive, Inc. v. Alphatec Holdings, Inc.,
No.: 18-CV-347-CAB-MDD, 2018 WL 2734881 (S.D. Cal. May 14, 2018) .......................................9
20
OddzOn Prods., Inc. v. Just Toys, Inc.,
21 122 F.3d 1396 (Fed. Cir. 1997)............................................................................................................10
22 Parker v. Kimberly-Clark Corp.,
No. 11 C 5658, 2012 WL 74855 (N.D. Ill. Jan. 10, 2012) ....................................................................8
23
Parrino v. FHP, Inc.,
24 146 F.3d 699 (9th Cir. 1998), superseded by statute on other grounds as recognized
in Abrego v. The Dow Chem. Co., 443 F.3d 676 (9th Cir. 2006) ..........................................................7
25
Pepitone v. Am. Standard, Inc.,
26 983 F.2d 1087 (Fed. Cir. 1992)..............................................................................................................8
27 Performance Designed Prods. v. Mad Catz, Inc.,
No. 16-cv-629-GPC (RBB), 2016 WL 3552063 (S.D. Cal. June 29, 2016)..........................................7
28

iii Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1 Philco Corp. v. Admiral Corp.,

199 F. Supp. 797 (D. Del. 1961) ..........................................................................................................10
2
Phonometrics, Inc., v. Hosp. Franchise Sys., Inc.,
3 203 F.3d 790 (Fed. Cir. 2003)................................................................................................................9
4 SCG Characters LLC v. Telebrands Corp.,
No. CV-15-00374 DDP, 2015 WL 4624200 (C.D. Cal. Aug. 3, 2015)...............................................11
5
Scripps Research Institute v. Illumina, Inc.,
6 No. 16-cv-661 JLS (BGS), 2016 WL 6834024 (S.D. Cal. Nov. 21, 2016) ...........................................9
7 Spreewell v. Golden State Warriors,
266 F.3d 979 (9th Cir. 2001) .................................................................................................................7
8
Standard Havens Prods., Inc. v. Gencor Indus., Inc.,
9 897 F.2d 511 (Fed. Cir. 1990)................................................................................................................8
10 Swartz v. KPMG LLP,
476 F.3d 756 (9th Cir. 2007) .............................................................................................................7, 8
11
TeleSign Corp. v. Twilio, Inc.,
12 No. 16-2106, 2016 WL 4703873 (C.D. Cal. Aug. 3, 2016) ..................................................................9
13 Wright’s Well Control Services, LLC v. Oceaneering Int’l, Inc.,
No. 15-1720, 2017 WL 568781 (E.D. La. Feb. 13, 2017) .....................................................................9
14
Federal Statutes
15
35 U.S.C. § 271(a) .......................................................................................................................................8
16
Other Authorities
17
37 C.F.R. § 1.11(d) ......................................................................................................................................8
18
37 C.F.R. §§ 1.152 .....................................................................................................................................10
19
Fed. R. Civ. P. 8(a)(2) ..................................................................................................................................6
20
Fed. R. Civ. P. 12(b)(6)............................................................................................................................7, 8
21
Fed. R. Evid. 201(b)(2) ................................................................................................................................8
22
23
24
25
26
27
28

iv Case No. 4:19-CV-2701-HSG
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1 NOTICE OF MOTION
2 PLEASE TAKE NOTICE that Defendant iTouchless Houseware and Products Inc.
3 (“iTouchless”) will move and hereby does move this Court on January 9, 2020, at 2:00 p.m., in
4 Courtroom 2 on the 4th Floor of the United States Courthouse, 1301 Clay Street, Oakland, California,
5 before Honorable Judge Haywood S. Gilliam, Jr., pursuant to Fed. R. Civ. P. 12(b)(6), for an order
6 dismissing the design patent claims from Plaintiff’s Amended Complaint (Doc. 19, hereinafter
7 “Complaint”, Ex. 1) with prejudice for failure to state a claim upon which relief may be granted and for
8 failure to plead properly. The motion is based on this notice, the concurrently filed memorandum of
9 points and authorities and supporting declaration and exhibits, and all the matters of record filed with the
10 Court in this case and such other evidence as may be submitted.
11 RELIEF SOUGHT
12 Defendant seeks an order dismissing Plaintiff’s design patent infringement claims under Fed. R.
13 Civ. P. 12(b)(6). The parties met and conferred about this motion on July 22, 2019, but were unable to
14 resolve disagreements.
15 I. INTRODUCTION
16 The design patent claims in this lawsuit are baseless. The scope of a design patent is extremely
17 narrow, and is limited to the ornamental features illustrated in the patent’s drawings. A design patent is
18 infringed only if the overall appearance of an accused product is substantially the same as the patented
19 design as a whole. There can be no design patent infringement unless an ordinary observer, familiar
20 with the prior art, would be deceived into thinking the accused product is the same as the patented
21 design. Plaintiff does not and cannot meet this standard because Defendant’s Accused Products1 for
22 trash cans are significantly different than the design claimed (the “Claimed Design”) by U.S. Patent No.
23 D644,807 (“the D807 Patent,” Ex. 2) and U.S. Patent No. D729,485 (“the D485 Patent,” Ex. 3)
24 (collectively, “the Asserted Design Patents”).
25
26
27
1
28 D807 is asserted against Defendant’s Dual-Deodorizing Open-Top trash can and D485 is
asserted against Defendant’s Dual-Compartment Open Top Trash and Recycle Can. Collectively, these
two trash can products are referred to as the “Accused Products.”
1 Case No. 4:19-CV-2701-HSG
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1 The Federal Circuit’s test for design patent infringement is a side-by-side view comparison of the
2 drawings contained in the asserted patent and photographs depicting the accused product.2 As shown
3 herein, such a comparison reveals that the Accused Products lacks prominent ornamental features that
4 contribute to the overall appearance of the designs claimed in the asserted design patents.
5 The D807 Patent is for a running track

6 type oval shaped product with many seams
7 and flared bands. The D807 design has the
8 same oval shape as a traditional oval running
9 track, including two semicircular portions at
10 the ends and straight portions connecting to
11 the ends:
12 By contrast, the accused Dual-

13 Deodorizing Open-Top Trash Can does not
14 have a running track oval shape. Neither does
15 it have the many seams and other features of the D807 Patent. Instead, it is rectangular with rounded
16 corners and sides, no straight portions at all,
17 just one seam, and no flared bands, making a
18 much simpler design. Comparing the top view
19 of the D807 Patent next to an image of the
20 accused product highlights the difference in
21 the oval shape and the much thinner, seamless
22 cover on the Dual-Deodorizing Open-Top
23 Trash Can than on the D807 Patent.
24
25
26
27
28 2
Contrary to the insinuations in the Amended Complaint ¶ 15, the design patent infringement
test is not a comparison of words in advertising copy to words Plaintiff has used to describe its design.
4848-9850-8957.1
1 Similarly, with respect to the D485 Patent, the claimed design has two symmetrical square
2 openings with each corner of the opening being rounded. The D485 design also has a complicated
3 pattern on the top surface and a beveled top surface. By contrast, the accused Dual-Compartment Open-
4 Top Trash And Recycle Can product has two non-square rectangular openings of different proportions
5 than the claimed design, with each opening having both two right angle corners and two curved corners.
6 The accused product also has having openings that are much simpler than the claimed design, with a flat
7 top surface.
8
10
11
12
13
14
Even this cursory comparison is sufficient to conclude that an ordinary observer would never
15
believe that the Accused Product is the same as that of the Claimed Design. Thus, Plaintiff’s
16
infringement allegation is not only implausible, but also impossible.
17
Plaintiff does not assert any factual allegations sufficient to raise even an inference of purported
18
similarity between the Accused Products and the Asserted Design Patents. Instead, Plaintiff bases its
19
infringement claim for each design patent on a single, conclusory allegation that Defendant infringes
20
each of the Asserted Design Patents (Complaint ¶¶ 27, 28 (Ex. 1)). Yet, other than both items being
21
trash cans, Plaintiff cannot show that the overall appearance of an Accused Product is substantially the
22
same as the patented designs. Plaintiff’s conclusory allegations alone are insufficient to plead properly
23
its claim. Therefore, the Complaint should be dismissed because it fails to state a plausible claim and
24
does not contain facts sufficient to allow the Court to draw any reasonable inference that Defendant is
25
liable for infringement. Leave to amend the Complaint would be futile, as no amendment can overcome
26
the plain differences between the Accused Product and the Claimed Design.
27
II. FACTUAL BACKGROUND
28
A. THE ASSERTED PATENTS AND ACCUSED PRODUCTS
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1 Plaintiff’s D807 Patent is asserted against Defendant’s Dual-Deodorizing Open-Top trash can.
2 See Complaint ¶ 27, Ex. 1. The D485 Patent is asserted against Defendant’s Dual-Compartment Open
3 Top Trash and Recycle Can. See Complaint ¶ 28, Ex. 1. The original complaint only included one view
4 of each product. The amended complaint contains five views, but fail to recognize that normally at least
5 six views are required, at a minimum, to show a product fully. That is, to show a product fully,
6 normally the (1) top, (2) bottom, (3) left, (4) right, (5) front, (6) rear of a product must be shown unless
7 the product is a mirror image in some of the views. Additionally, often a perspective view is shown in
8 design patent drawings. Plaintiff provides a perspective view, a top view, a front view, a right view, and
9 a bottom view. With respect to left and right views, Plaintiff only shows one side of the accused
10 products, but the accused products do not both have mirror image right and left views. Similarly, with
11 respect to front and rear views, Plaintiff one shows one side of the accused products, but again, the
12 Dual-Deodorizing Open-Top trash can product does not have mirror image front and rear views. The
13 Complaint makes no attempt to identify any other alleged similarities between the accused products and
14 the patents.
15 B. PRIOR ART CITED AGAINST THE D807 IS CLOSER THAN THE ACCUSED
16 PRODUCT
17 The D807 patent underwent a supplemental examination proceeding. Complaint at ¶ 8. As noted
18 on page 3 of Plaintiff’s 2/21/2017 (Ex. 4) “Request for Supplemental Examination,” by Plaintiff’s own
19 admission, a trash can called the “Hero Bullet” is prior art to the D807 patent:
20
21
22
23
24
25
26
27
28

4848-9850-8957.1
1 As also admitted by Plaintiff, “the Hero Bullet shows an erect, open-top trash can that includes
2 rounded curvature.” Id. In response to Plaintiff’s admissions concerning the Hero Bullet design, on
3 5/18/2017 (Ex. 5, EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM), the
4 Patent Office noted that:
5
10
11
12
13
14
15
16 In that same document, the Patent Office also noted, when discussing the claimed design and the
17 Hero Bullet design, “The characteristics both designs have in common include … (2) a slightly flared
18 band along the perimeter of the base, … (4) a wide slightly flared band at the base of the cover.” As the
19 Patent Office also noted, “The decision of In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967) states
20 ‘there are no portions of a design which are “immaterial” or “not important.”’”
21 Plaintiff, in arguing for patentability of its design over the Hero Bullet, responded by pointing
22 out, “while the description of the ‘flared bands’ and the ‘domed cover’ (Office Action at 3) focuses
23 narrowly on specific features, it should also state the body is oval, the aperture is oval, the flared bands
24 are both oval, and the domed cover is oval.” 7/31/2018 Response to Office Action Mailed May 31, 2018
25 at 4 (emphasis in original) Ex. 6).
26 While Plaintiff touted the importance of the oval shapes of its product, nowhere does it show the
27 accused product as being of the same oval shape. The accused product accused has a primarily
28 rectangular shape with rounded corners and sides.

4848-9850-8957.1
1 Plaintiff also argued that another prior art trash can with a shape much more similar to the
2 claimed design than the accused product also did not invalidate the D807 Patent:
3
10
11
12
13 See page 9 of Plaintiff’s 2/21/2017 (Ex. 4) “Request for Supplemental Examination.” While the
14 prior art shape of the trash can is much more oval than the accused product, Plaintiff argued that the
15 “upper curvature” shown in D807 were lacking in the Yang ‘817 reference, and the Yang ‘817 reference
16 had a “prominent hinge.” Id. at 10-11.
17 By Plaintiff’s own admissions, a product that is not of the same running track oval shape, would
18 not be considered the same design as Plaintiff’s. Accordingly, it would not infringe. Additionally,
19 Plaintiff noted how important it was that the “flared bands are both oval” in the prior art design. The
20 lack of oval shape and lack of oval flared bands similarly distinguishes the accused product from the
21 D807 patent.
22 III. THE COMPLAINT SHOULD BE DISMISSED WITH PREJUDICE BASED ON THE
23 DISSIMILARITIES BETWEEN THE ACCUSED PRODUCTS AND ASSSERTED
24 DESIGN PATENTS
25 A. GOVERNING PRINCIPLES OF LAW
26 1. Failure To State A Claim Upon Which Relief Can Be Granted
27 To state a claim upon which relief can be granted, a complaint must contain a “short and plain
28 statement of the claim showing the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2) (emphasis

4848-9850-8957.1
1 added). To survive a motion to dismiss, a complaint must contain sufficient factual matter “to ‘state a
2 claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atl.
3 Corp. v. Twombly, 550 U.S. 544, 570 (2007)). This “plausibility requirement” requires the allegations in
4 the complaint to “be enough to raise a right to relief above the speculative level[.]” Twombly, 550 U.S.
5 at 555. The plaintiff must plead “factual content that allows the court to draw the reasonable inference
6 that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678. Thus, “where the well-
7 pleaded facts do not permit the court to infer more than the mere possibility of misconduct, the
8 complaint has alleged — but it has not show[n] — that the pleader is entitled to relief.” Id. at 679
9 (internal citation omitted).
10 Generally, in evaluating a motion for failure to state a claim upon which relief can be granted,
11 “[a]ll allegations of material fact are taken as true and construed in the light most favorable to the
12 nonmoving party.” Spreewell v. Golden State Warriors, 266 F.3d 979, 988 (9th Cir. 2001). A “court
13 need not, however, accept as true allegations that contradict matters properly subject to judicial notice or
14 by exhibit.” Id. “Nor is the court required to accept as true allegations that are merely conclusory,
15 unwarranted deductions of fact, or unreasonable inferences.” Id.; see also, Doe I v. Wal-Mart Stores,
16 Inc., 572 F.3d 677, 683 (9th Cir. 2009) (courts “need not accept Plaintiffs’ unwarranted conclusion in
17 reviewing a motion to dismiss”); Iqbal, 556 U.S. at 678-79 (modern pleading standard “does not unlock
18 the doors of discovery for a plaintiff armed with nothing more than conclusions”).
19 2. The Court May Take Judicial Notice Of Certain Things Outside The
20 Pleadings And Should Take Notice of The Design Patents, Photographs Of
21 The Accused Products, And Patent File History
22 While a motion under Fed. R. Civ. P. 12(b)(6) generally is limited to the pleadings, a court may
23 rely on documents outside the pleadings if they are subject to judicial notice, or if they are integral to the
24 plaintiff’s claims and their authenticity is not disputed. Parrino v. FHP, Inc., 146 F.3d 699, 705-06 (9th
25 Cir. 1998), superseded by statute on other grounds as recognized in Abrego v. The Dow Chem. Co., 443
26 F.3d 676, 681 (9th Cir. 2006); Swartz v. KPMG LLP, 476 F.3d 756, 763 (9th Cir. 2007); Performance
27 Designed Prods. v. Mad Catz, Inc., No. 16-cv-629-GPC (RBB), 2016 WL 3552063, at *4 n.2 (S.D. Cal.
28 June 29, 2016) (allowing use of design patent attached to the complaint and undisputed authentic

4848-9850-8957.1
1 photographs of the accused product). The Ninth Circuit has explained that such an extension comes
2 from the policy concern underlying this rule: Plaintiffs should be prevented from surviving a Rule
3 12(b)(6) motion by omitting references to documents upon which their claims are based. Swartz, 476
4 F.3d at 763; see also Anderson v. Kimberly-Clark Corp., No. C12-1979RAJ, 2013 WL 9760040, at *1-
5 *2 (W.D. Wash. Sept. 25, 2013) aff’d, 570 Fed. Appx. 927 (Fed. Cir. 2014) and cert. denied, 136 S. Ct.
6 142 (2015) (photographs of accused products considered on motion to dismiss patent claim as they are
7 central to plaintiffs’ allegations); Parker v. Kimberly-Clark Corp., No. 11 C 5658, 2012 WL 74855 at *1
8 (N.D. Ill. Jan. 10, 2012) (same); Pepitone v. Am. Standard, Inc., 983 F.2d 1087, n.1 (Fed. Cir. 1992)
9 (taking judicial notice of prior art to dismiss design patent infringement claim); Hoganas AB v. Dresser
10 Indus., Inc., 9 F.3d 948, 954 n.27 (Fed. Cir. 1993) (court may consider prior patents because patents are
11 amenable to judicial notice).
12 The court may also take judicial notice of a patent’s file history on a motion to dismiss. Colt Int’l
13 Clothing Inc. v. Quasar Science, LLC, 304 F. Supp.3d 891, 892 (C.D. Cal. 2018) (taking judicial notice
14 of patent file history on a motion to dismiss); See Fed. R. Evid. 201(b)(2); Standard Havens Prods., Inc.
15 v. Gencor Indus., Inc., 897 F.2d 511, 514 n.3 (Fed. Cir. 1990) (appropriate to take judicial notice of PTO
16 correspondence which is part of the public record); Massachusetts v. Westcott, 431 U.S. 322, 323 n. 2
17 (1977) (public records "may be judicially noticed"); 37 C.F.R. § 1.11(d) ("All papers or copies thereof
18 relating to a reexamination proceeding which have been entered of record in the patent or reexamination
19 file are open to inspection by the general public.")
20 3. Pleading Patent Infringement Generally
21 Patent infringement under 35 U.S.C. § 271(a) requires a showing that all limitations of the
22 asserted claim are present in the accused product. See Dynacore Holdings Corp. v. U.S. Philips Corp.,
23 363 F. 3d 1263, 1273 (Fed. Cir. 2004). On December 1, 2015, Form 18 to the Federal Rules of Civil
24 Procedure was abrogated, and since that time, cases involving utility patents “have assessed the
25 sufficiency of claims for direct patent infringement under the standard set forth in Twombly and Iqbal.”
26 Novitaz, Inc. v. inMarket Media, LLC, No. 16-cv-06795-EJD, 2017WL 2311407, at *2 (N.D. Cal. May
27 26, 2017) citing e.Digital Corp. v. iBaby Labs, Inc., No. 15-CV-05790-JST, 2016 WL 4427209, at *3
28 (N.D. Cal. Aug. 22, 2016).

4848-9850-8957.1
1 After December 1, 2015 patent infringement complaints must plead “‘factual allegations that the
2 accused product practices every element of at least one exemplary claim.’” Arunachalam v. Apple, Inc.,
3 No.5:18-cv-01250-EJD, 2018WL 5023378, at *2 (N.D. Cal. Oct. 16, 2018) quoting Noviatz, 2017 WL
4 2311407 at *3.3
5 4. Pleading Design Patent Infringement

6 While compliance with Iqbal/Twombly pleading standards is now common for utility patent
7 complaints, some cases have applied pre-December 1, 2015 case law to the pleading of design patent
8 claims. See, e.g., NuVasive, Inc. v. Alphatec Holdings, Inc., No.: 18-CV-347-CAB-MDD, 2018 WL
9 2734881, at *4 (S.D. Cal. May 14, 2018) citing Hall v. Bed Bath & Beyond, Inc., 705 F.3d 1357, 1362
10 (Fed. Cir. 2013).4 In NuVasive, the court did not decide whether the Hall requirements differ from
11 Iqbal/Twombly, but did find that Plaintiff failed to “state the means by which [Defendant] infringes.” Id.
12 After the abolition of Form 18, there is no principled basis to allow different pleading standards for
13 design patent cases than utility patent cases, and any suggestion to the contrary should be disregarded as
14 outdated law. Thus, to plead design patent infringement adequately, just as with utility patents, a
15 Plaintiff must plead a factual basis for infringement of every limitation of the claim, which standard
16 requires addressing every view of the figures shown in the design patent.
17 A design patent contains only a single claim, and that claim is to the ornamental, non-functional,
18
3
19 Numerous cases decided after December 1, 2015 hold similarly. See Atlas IP LLC v. Pac. Gas
& Elec. Co., No. 15-cv-05469, 2016 WL 1719545, at *5 (N.D. Cal. Mar. 9, 2016) (dismissing direct
20 infringement claim because complaint made no allegations relating to a necessary element and a
necessary limitation of the claim); TeleSign Corp. v. Twilio, Inc., No. 16-2106, 2016 WL 4703873, at *4
21 (C.D. Cal. Aug. 3, 2016) (noting that under Twombly and Iqbal a “plaintiff must still plausibly allege
that a defendant's product or products practice all elements of at least one patent claim”) (citations
22 omitted); e.Digital Corp. v. iBaby Labs, Inc., No. 15-cv-05790, 2016 WL 4427209, at *3-4 (N.D. Cal.
Aug. 22, 2016) (applying “each of the limitations” standard); Scripps Research Institute v. Illumina,
23 Inc., No. 16-cv-661 JLS (BGS), 2016 WL 6834024, at *5 (S.D. Cal. Nov. 21, 2016) (“[T]he Court joins
several other courts in holding that in order to properly plead direct infringement under Twombly and
24 Iqbal, a plaintiff must plausibly allege that a defendant directly infringes each limitation in at least one
asserted claim.”) (citations omitted); Wright’s Well Control Services, LLC v. Oceaneering Int’l, Inc., No.
25 15-1720, 2017 WL 568781, at *4 (E.D. La. Feb. 13, 2017) (“simply putting defendants on notice that
their product allegedly infringes at least one of the claims within [Plaintiff’s] patents, without more,
26 does not satisfy the plausibility standard.”).
4
Hall lists five requirements to meet the pleading standard for patent infringement claims. Hall,
27 705 F.3d at 1362. However, Hall relies on language in Phonometrics, Inc., v. Hosp. Franchise Sys., Inc.,
203 F.3d 790, 793-94 (Fed. Cir. 2003), which applied the old notice pleading standard from Conley v.
28 Gibson, 335 U.S. 41 (1957) while noting that the appended forms to the Rules were illustrative. After
Twombly overruled Conley in 2007 and Form 18 was abrogated in 2015, it necessarily follows that Hall
is no longer good law.
4848-9850-8957.1
1 design of the specified article “as shown.” Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed.
2 Cir. 1995).5 “It is the drawings in the patent, not just one feature of the claimed design, that define the
3 patented design.” Aminini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1371 (Fed. Cir.
4 2006). All drawings must be considered to determine infringement. See Contessa Food Prods., Inc. v.
5 Conagra, Inc., 282 F. 3d 1370, 1379 (Fed. Cir. 2002) abrogated on other grounds by Egyptian Goddess,
6 Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (reversing district court finding of infringement
7 because it failed to consider Figure 4 of the design patent in suit); Philco Corp. v. Admiral Corp., 199 F.
8 Supp. 797, 804-805 (D. Del. 1961) (finding failure to provide adequate views of a design prevents
9 “applying the legal standard for infringement” because the lack of adequate views “prevents a
10 comparison between the patent drawing and the accused device.”); see also 37 C.F.R. §§ 1.152 (“The
11 design must be represented by a drawing that complies with the requirements of § 1.84 and must contain
12 a sufficient number of views to constitute a complete disclosure of the appearance of the design.”) and
13 1.84(h)(“ The drawing must contain as many views as necessary to show the invention.”).
14 Because a design patent is defined by its drawings, the scope of a design patent is very narrow.
15 In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) (“[d]esign patents have almost no scope” and are
16 “limited to what is shown in the application drawings.”). Design patent infringement is determined
17 under the “ordinary observer test.” Crocs, Inc. v. Int’l. Trade Comm'n., 598 F.3d 1294, 1303 (Fed. Cir.
18 2010). That is, a design patent is infringed only if the two designs in question are “substantially the
19 same,” i.e., an ordinary observer, familiar with the prior art, would be deceived into thinking that the
20 accused design was the same as the patented design. Id. (citing Egyptian Goddess, Inc. v. Swisa, Inc.,
21 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc)). In evaluating infringement, the appearance of a design as
22 a whole is controlling: “There can be no infringement based on the similarity of specific features if the
23 overall appearance of the designs are dissimilar.” OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396,
24 1405 (Fed. Cir. 1997).

25 “The proper comparison requires a side-by-side view of the drawings of the [asserted design
26 patent] and the accused products.” Crocs, Inc., 598 F.3d at 1304. The Federal Circuit has recognized
27
5
28 The claimed portion of the drawings is shown by the use of solid lines, while those portions
unclaimed, and specifically disclaimed, are shown by the use of broken lines. Apple, Inc. v. Samsung
Elecs. Co., Ltd., No. 11-CV-01846-LHK, 2012 WL 3071477, at *4 (N.D. Cal. July 27, 2012).
10 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1 that, in some instances, “the claimed design and the accused design will be sufficiently distinct that it
2 will be clear without more that the patentee has not met its burden of proving the two designs would
3 appear ‘substantially the same’ to the ordinary observer.” Egyptian Goddess, 543 F.3d at 678.
4 However, “when the claimed and accused designs are not plainly dissimilar, resolution of the question
5 whether the ordinary observer would consider the two designs to be substantially the same will benefit
6 from a comparison of the claimed and accused designs with the prior art.” Id.; see also Great Neck Saw
7 Mfrs., Inc. v. Star Asia, U.S.A., LLC, 727 F. Supp. 2d 1038, 1051-52 (W.D. Wash. 2010). “[D]ifferences
8 between the claimed and accused designs that might not be noticeable in the abstract can become
9 significant to the hypothetical ordinary observer who is conversant with the prior art.” Egyptian
10 Goddess, 543 F.3d at 678; see also Great Neck Saw Mfrs., Inc., 727 F. Supp. 2d at 1051. “When the
11 differences between the claimed and accused design are viewed in light of the prior art, the attention of
12 the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ
13 from the prior art.” Egyptian Goddess, 543 F.3d at 676 (emphasis added).
14 5. Design Patent Infringement Claims Routinely Are Dismissed At The
15 Pleading Stage
16 As noted above, the infringement analysis involves a side-by-side study of the patented design
17 and the appearance of the accused products. Great Neck Saw Mfrs., Inc., 727 F. Supp. 2d at 1051 (citing
18 Crocs, 598 F.3d at 1304).6 Because such a comparison can be made solely on evidence that is central to
19 a plaintiff’s claim, district courts routinely dismiss design patent infringement claims at the pleading
20 stage. See, e.g., SCG Characters LLC v. Telebrands Corp., No. CV-15-00374 DDP (AGRx), 2015 WL
21 4624200, at *5-6 (C.D. Cal. Aug. 3, 2015) (“the Court may consider the patents and the images of the
22 accused products without converting the motion to dismiss into one for summary judgment.”); Anderson
23 v. Kimberly-Clark Corp., 570 Fed. Appx. 927, 931-34 (Fed. Cir. 2014) (district court “properly
24
25 6
It is irrelevant that the Asserted Design Patents and the Accused Products are all trash cans, as
26 many courts have found the same types of products to be plainly dissimilar. See, e.g., Competitive Edge,
Inc. v. Staples, Inc., 763 F. Supp. 2d 997, 1011 (N.D. Ill. 2010) (calculators with bubble shaped keys
27 “plainly dissimilar”); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1336 (Fed. Cir.
2015) (finding “hand-held surgical devices with open trigger handles” dissimilar); Anderson v.
28 Kimberly-Clark Corp., 570 Fed. Appx. 927, 933-34 (Fed. Cir. 2014) (design for underwear dissimilar
from accused underwear).

11 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1 concluded that ‘plain differences’ exist between the accused products and the patented design”)
2 (applying motion to dismiss test and applying Ninth Circuit law); Colida v. Nokia, Inc., No. 2009-1326,
3 2009 WL 3172724, at *2 (Fed. Cir. Oct. 6, 2009) (dismissing design patent infringement claims because
4 “dissimilarities far exceed the similarities”).
5 B. PLAINTIFF’S COMPLAINT SHOULD BE DISMISSED FOR FAILURE TO

6 STATE A PLAUSIBLE CLAIM FOR DESIGN PATENT INFRINGEMENT OF
7 THE D807 PATENT
8 1. Plaintiff Failed Even To Include All Views Of The Accused Products In The
9 Complaint And Failed To Plead Design Patent Infringement Adequately
10 “[O]ne cannot establish design patent infringement by showing similarity of only one part of a
11 patented design if the designs as a whole are substantially dissimilar.” KeyStone Retaining Wall Sys.,
12 Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993). “A patented design is defined by the
13 drawings in the patent, not just by one feature of the claimed design.” Id. Just as in utility patent cases,
14 where a plausible factual basis must be pleaded for every claim limitation,7 pleading design patent
15 infringement requires pleading a factual basis for the presence of every limitation, which limitations are
16 shown in the drawings.
17 Here, Plaintiff attempted to provide its factual basis for infringement of the design patents in just
18 two paragraphs, Complaint ¶¶ 27, 28. While those paragraphs show each figure from each design
19 patent, the design patents each require that the front and rear views, as well as the right and left side
20 views are “mirror images” of each other. See asserted design patents, Complaint Exhibits 1 and 2, each
21 of which provides that: Fig. 2 is a front view, and the rear view is a mirror image; Fig. 3 is a right side
22 view, and the left side view is a mirror image. The accused products, however, do not have mirror image
23 front and rear, and right and left sides. The Complaint fails to show both front and rear, as well as left
24 and right views of the accused products. Indeed, the Complaint does not even identify what the views
25 shown are meant to represent in ¶¶ 27, 28. Because this pleading fails to show all relevant views of the
26 accused products, it does not plead a plausible factual basis for the presence of every design patent claim
27 limitation. Accordingly, the pleading is inadequate on its face and should be dismissed on this basis
28
7
See Section III.A.4. and n.2.
12 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1 alone.
2 2. The Dual-Deodorizing Open-Top Trash Can Is Dissimilar From the Claimed
3 Design
4 a. Side-By-Side Views Demonstrate The Dissimilarity
5 A simple side-by-side view comparison demonstrates that Plaintiff simply cannot meet its burden
6 of establishing that the Accused Products and the Asserted Design Patents are “substantially similar.”
7 Egyptian Goddess, 543 F.3d at 678. To the contrary, the Accused Product is “plainly dissimilar” from
8 the patented design, and no ordinary observer familiar with the prior art would be deceived into
9 believing that the Accused Product is the same. Great Neck Saw Mfrs., Inc., 727 F. Supp. 2d at 1051.
10 To demonstrate this dissimilarity, below is a side-by-side comparison view of all of the drawings
11 of the D807 Patent and photographic images of the Accused Product pictured in angles and from
12 viewpoints corresponding to each of the angles and viewpoints of the drawings. Additionally, for
13 comparison to Figure 3, a close up of the bottom of the accused product is provided showing that the
14 band on the bottom of the accused product is not flush with the body.
15 To the extent Plaintiff provides relevant images of the accused products in the current version of
16 the Complaint, those images are used in the following comparisons. For views Plaintiff failed to
17 provide, Defendant provides the necessary images.
18
19
20
21
22
23
24
25
26
27
28

13 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1
Top Side
2  Running track Oval shaped opening, i.e.,  Rectangular opening i.e., “aperture” with
“aperture” rounded corners aperture
3
 Running track Oval shaped cover  Rectangular cover with rounded corners
4 cover
5  Four seam lines on outside of cover; no  No seam lines on cover - Seamless
seam line on inside of cover
6
 Semicircular ends  No semicircular ends
7
 Straight portions in the middle  No straight portions in the middle
8
9 Claimed Design Accused Product
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

14 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1
Right & Left Sides
2  Cut out in upper band for handles on both  No cut outs in upper band; just a solid
sides shown in solid line band; accused product handle is separate
3 attachment below solid band
4  Four seam lines that run from top to  Only one seam line on back that is not
bottom on outside (two on each side) that symmetrical; only in the side and not
5 are through cover, top band, side, and cover or bands; seamless on one side
bottom band
6
 Flared upper band  Upper band has no flare; straight from top
7 of band to bottom of band
8  Flared thick band at base of cover flares  Thin band along perimeter of base does
out from top of band to bottom of band not flare out from top of band to bottom
9 of band; recessed more at bottom of band
than at top of band
10
 Thick bottom band along perimeter of  Thin bottom band along perimeter of base
11 base has top part that starts flush with not flush with body
body
12
 Mirror image sides  Sides are not mirror images of each other;
13 one side is seamless while other side has
one seam. The left side also has a
14 prominent handle not on the right side.
15
Claimed Design Accused Product
16
17
18
19
20
21
22
23
24
25
26
27
28

15 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1
Front & Rear Sides
2  Top band is flared from top to bottom  No flare on top band
such that bottom of band is wider than top
3 of band
 No flare on bottom band; bottom band
4  Bottom band is flared from top to bottom actually gets narrower on bottom than top
such that bottom of band is wider than top
5 of band
 Thick bottom band along perimeter of  Thin bottom band along perimeter of base
6 base
7  Band along perimeter of base has top part
 Band along perimeter of base has top part that is wider than body of trash can and
8 that starts flush with body not flush with the body
9  Sides are mirror images  Sides are not mirror images or
symmetrical because a handle is only on
10 one side
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

16 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1
Bottom Side
2  Running track Oval shaped  Rectangular with rounded corners
3  Small pairs of features around running  No feature pairs around an oval shape
track oval that conform to oval shape
4  See cut outs for handles in top band  No cut outs for handles in top band
5

7
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

17 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1
Perspective
2  Running track Oval shaped aperture and  Rectangular opening/aperture and cover
cover with rounded corners
3
 Four seam lines on outside of cover; no  Only one seam line on outside of cover;
4 seam line on inside of cover no seam line on inside of cover
 Handle cutout  No handle cutout
5
 Thick lower band starts flush with body  Thin lower band is not flush with body
6
7
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24 As shown above, the Accused Product looks significantly different the D807 drawings and the
25 side-by-side comparison reveals many easily discernable dissimilarities between the Claimed Design of
26 the D807 Patent and the Dual-Deodorizing Open-Top Trash Can. Especially in view of the fact that
27 oval trash cans were known prior art (Yang ‘817), and “the hypothetical ordinary observer will be
28 drawn to those aspects of the claimed design that differ from the prior art,” Egyptian Goddess, 543

18 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1 F.3d at 676, the hypothetical observer would find it significant that the accused product is not an oval
2 like the claimed design and the prior art, but rather is rectangular with rounded corners. In addition to
3 lacking the running track oval shape, the accused product lacks the numerous seams of the claimed
4 design and is a much simpler design.
5 In short, an ordinary observer would immediately notice that the overall appearance of the
6 Accused Product is “plainly dissimilar” from the Claimed Design illustrated in the D807 Patent. In view
7 of these significant differences, Plaintiff has not met, and cannot meet, its burden of proving that the
8 designs would appear substantially similar to an ordinary observer. Thus, there can be no infringement.
9 See Egyptian Goddess, 543 F.3d at 678. The Court is not required to accept Plaintiff’s conclusory
10 allegations of infringement as true, and because Plaintiff has not stated a plausible claim for relief, the
11 Complaint should be dismissed.
12 b. Prior Art Highlights The Dissimilarity Between The Accused Product

13 And The Claimed Design
14 As the overall appearance of the Accused Product is “plainly dissimilar” from the Claimed
15 Design, the prior art need not be considered. Great Neck Saw Mfrs., Inc., 727 F. Supp. 2d at 1051-52.
16 An analysis of the prior art, however, only further serves to demonstrate that an ordinary observer
17 familiar with such prior art would not be deceived into believing that the Accused Product is the same as
18 the patented design. There are numerous prior art references disclosing various designs for trash cans.
19 The differences between the appearance of the Accused Product and the Claimed Design are even more
20 apparent when this prior art is considered.
21 As noted above, Plaintiff’s own prior art “Bullet Hero” design looks far more similar to the D807
22 patent than does Defendant’s accused product. The primary difference between the Bullet Hero and
23 D807 is the lack of a perfectly oval shape of the Bullet Hero:
24
25
26
27
28

19 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
10
11
And, Plaintiff’s own prior art Yang ‘817 provides the same oval shape as the D807 patent.
12
13
14
15
16
17
18
19
20
21
22
Thus, one of ordinary skill in the art would already know that prior art trash cans, over which
23
prior art the Patent Office allowed the D807 to issue, had essentially the same appearance as the D807,
24
except for having an oval shape, which other prior art had. The accused product, by contrast, lacks both
25
the important “oval” shape, as well as many other features discussed above shown in D807.
26
In sum, Plaintiff’s Complaint contains only a single, unsupported, conclusory allegation of
27
infringement. That allegation need not be accepted as true on this Motion. The documents available to
28
the Court on this Motion conclusively demonstrate that Plaintiff cannot state a plausible claim for design
20 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1 patent infringement, given the obvious dissimilarity between the patented design and the Accused
2 Products and the prior art. Defendant should not be forced to incur the costs associated with litigating a
3 meritless case brought by a Plaintiff seeking an unwarranted financial windfall. Iqbal, 556 U.S. at 678-
4 79 (conclusory pleading “does not unlock the doors of discovery”). Accordingly, Plaintiff’s claim for
5 design patent infringement should be dismissed.
6 3. The Dual-Compartment Open-Top Trash And Recycle Can Is Dissimilar
7 From the Claimed Design
8 a. Side-By-Side Views Demonstrate The Dissimilarity
9 Just as with the D807 Patent and the Dual-Deodorizing Open-Top Trash Can, the D485 patent
10 and the accused Dual-Compartment Open Top Trash and Recycle Can are strikingly different in
11 appearance, including overall proportions, as the D485 design is much longer and taller than the accused
12 product.
13
14 Perspective And Top

 Beveled on outer surface near openings,  Flat near openings
15 starting low and slopes upward
16  Steps down into openings  Sloped straight from top surface for
openings
17
 Openings each curved at all four corners  Openings squared (right angle) at two
18 corners and curved at two other corners
19  Surfaces at center divider are rounded  Sloped surfaces at center divider are
trapezoidal
20
 Has many seam lines  Is mostly seamless
21
 Center divider looks like hourglass shape  Center divider looks completely straight
22 from top from top
23  Center divider is lower than outer  Center divider is same height as outer
periphery; entirely recessed down periphery and flows smoothly at same
24 height into outside
25  Each opening is square, i.e., symmetrical  Each opening is not square, i.e.,
asymmetrical
26
27
28

21 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1

2
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22
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24
25
26
27
28

22 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1
Right & Left Sides
2  Have seams  Seamless on one side
3  Sides are mirror images of each other  Sides are not mirror images
4  Completely flat except for two seams  Neither side is flat because both are
curved; and Right side has a handle cut
5 into the side and that side and has a seam
6  Bottom is flat all the way to bottom  Have band around bottom that covers the
bottom of the body; the band sticks out
7 around bottom
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

23 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1
Front & Rear Sides
2  Have seams  Seamless
3  Accused product top does not slope
 At top, design slopes upward upward; it has completely flat portion
4 starting from outer periphery
6
10
11
12
13
14
15
16
17 Bottom
 Bottom outside band is whole  Bottom has cut outs around periphery
18
19  Bottom surface is flat  Bottom surface has raised square patterns
21
22
23
24
25
26
27
28

24 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1 In summary, the patented design is a fairly complicated design having symmetrical square
2 openings with rounded corners, numerous seams, and a beveled top. The accused product is a simpler
3 design with non-square rectangular openings with different types of corners, just one seam, and a non-
4 beveled top. No ordinary observer would be decieved into thinking the two products are the same, and
5 the claim for infringement of the D485 Patent should be dismissed.
6 C. PLAINTIFF SHOULD NOT BE GIVEN LEAVE TO AMEND
7 Plaintiff has already amended once in an attempt to cure its deficiencies, and that effort was a
8 failure. Plaintiff should not be given leave to amend the Complaint again because it is impossible for it
9 to state facts to correct the above referenced deficiencies in its design patent infringement claims. No
10 set of facts will make the Accused Products substantially similar to the Claimed Designs. Amending the
11 Complaint here would be futile. District courts have discretion to dismiss pleadings with prejudice in
12 such circumstances. Leadsinger, Inc. v. BMG Music Publ’g, 512 F.3d 522, 532 (9th Cir. 2008).
13 IV. CONCLUSION
14 For the foregoing reasons, Plaintiff has not and cannot plead any fact supporting a prima facie
15 infringement claim of the Asserted Design Patents or willful infringement. The design patent claims and
16 the claim for treble damages should be dismissed.
17 DATED: July 26, 2019 /s/ Victor de Gyarfas
VICTOR DE GYARFAS
18 FOLEY & LARDNER LLP
Attorneys for Defendant ITOUCHLESS
19 HOUSEWARES AND PRODUCTS, INC.
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25 Case No. 4:19-CV-2701-HSG
4848-9850-8957.1
1 PROOF OF SERVICE Electronic Filing

2 I HEREBY CERTIFY that on July 26, 2019 I electronically filed the foregoing with the Clerk of
Court by using the CM/ECF system which will send a notice of electronic filing to the Electronic
3 Service List for this case.
4
/s/ Victor de Gyarfas
5 Victor de Gyarfas
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4848-9850-8957.1

Simplehuman v. Itouchless - Motion To Dismiss

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Simplehuman v. Itouchless - Motion To Dismiss

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Case 4:19-cv-02701-HSG Document 24 Filed 07/26/19 Page 1 of 31

1 Victor de Gyarfas (SBN 171950)

8 UNITED STATES DISTRICT COURT

11 SIMPLEHUMAN, LLC, CASE NO: 4:19-CV-2701-HSG

18 Date: January 9, 2020

23 [TO BE PRINTED IN COLOR]

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

14 4. Pleading Design Patent Infringement ............................................................... 9

15 5. Design Patent Infringement Claims Routinely Are Dismissed At

24 3. The Dual-Compartment Open-Top Trash And Recycle Can Is

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

1 e.Digital Corp. v. iBaby Labs, Inc.,

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

1 Philco Corp. v. Admiral Corp.,

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

10 Court in this case and such other evidence as may be submitted.

24 (collectively, “the Asserted Design Patents”).

5 The D807 Patent is for a running track

7 and flared bands. The D807 design has the

8 same oval shape as a traditional oval running

9 track, including two semicircular portions at

10 the ends and straight portions connecting to

12 By contrast, the accused Dual-

14 have a running track oval shape. Neither does

16 corners and sides, no straight portions at all,

17 just one seam, and no flared bands, making a

18 much simpler design. Comparing the top view

19 of the D807 Patent next to an image of the

20 accused product highlights the difference in

21 the oval shape and the much thinner, seamless

22 cover on the Dual-Deodorizing Open-Top

23 Trash Can than on the D807 Patent.

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

9 (internal citation omitted).

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

5 4. Pleading Design Patent Infringement

24 1405 (Fed. Cir. 1997).

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

4 “dissimilarities far exceed the similarities”).

5 B. PLAINTIFF’S COMPLAINT SHOULD BE DISMISSED FOR FAILURE TO

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

9 Claimed Design Accused Product

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

6 Claimed Design Accused Product

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

11 Complaint should be dismissed.

12 b. Prior Art Highlights The Dissimilarity Between The Accused Product

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

14 Perspective And Top

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

1 Claimed Design Accused Product

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT

19  Bottom surface is flat  Bottom surface has raised square patterns

20 Claimed Design Accused Product

MEM. OF P. & A. MOT. TO DISMISS COMPLAINT