Kimber v. Bradshaw - Sanctions Briefing

Case: 2:13-cv-00185-ALM-NMK Doc #: 24 Filed: 02/05/14 Page: 1 of 21 PAGEID #: 179
IN THE UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF OHIO EASTERN DIVISION ____________________________________________ ) KIMBER CAKEWARE, LLC., ) ) Case No. 2:13-cv-0185 ) Plaintiff, ) ) Judge Marbley v. ) ) BRADSHAW INTERNATIONAL, INC., ) Magistrate Judge King ) Defendant. ) ____________________________________________ ) DEFENDANT BRADSHAW INTERNATIONAL, INC.S MEMORANDUM IN SUPPORT OF ITS MOTION FOR RULE 11 SANCTIONS Pursuant to Federal Rule of Civil Procedure 11, Defendant Bradshaw International, Inc. (Bradshaw) brings the present motion against Kimber Cakeware, LLC (Kimber) for Kimbers failure to withdraw its Complaint against Bradshaw. Kimbers Complaint lacks legitimate legal and factual foundation. Kimber has asserted that Bradshaw infringes its design patent, but has produced no evidence that supports its assertion of infringement. Moreover, Kimber has asserted, and still maintains, a claim construction that ignores clear Federal Circuit precedent. Kimber has wrongly asserted protection for a functional, utilitarian article through its design patent, which is the epitome of what cannot be claimed in a design patent. Bradshaw brings the instant motion as a last resort, having made repeated attempts to resolve this matter without resorting to filing a Rule 11 motion. Bradshaw has repeatedly sought an explanation from Kimber as to why Kimber believes its patent is being infringed. The only explanation that Kimber has every provided in response has been by its ipse dixit paraphrase of the test for infringement under Egyptian Goddess, that the ordinary observer would be confused.
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The only evidence Kimber has ever offered to support its conclusory assertion is that a single retailer, upon inquiry by Kimber, stated that it was already selling Bradshaws product. However, this fact actually demonstrates that the retailer lacked any confusion between the two products, easily identifying the source. Consequently, the only evidence Kimber has in support of its claim in fact rebuts Kimbers allegation of confusion. Lacking any basis in fact or law, Kimbers true motives for bringing the instant suit can be discerned: to shake down Bradshaw for a quick buck, regardless of the merits of its claims or the law of design patents. Kimber has demanded a settlement amount far less than the costs Bradshaw would need to defend the current litigation. The Federal Rules are designed to protect defendants from this type of spurious allegation. The Court, upon full review of the facts and law of this case, should reach the same conclusion Bradshaw hasthat Kimbers Complaint lacks legitimate basis, Kimbers Complaint must be dismissed with prejudice, and Kimber and its attorneys be appropriately sanctioned under Rule 11. I. Background Kimber filed the instant action on March 1, 2013, alleging that Bradshaw infringed a single design patent, U.S. Patent No. D671,376 (the 376 Patent). The 376 Patent claims the ornamental design for a batter separator, as depicted in four drawings of the 376 Patent. The underlying utilitarian article of the claimed ornamental design, a batter separator, is designed to fit inside a standard-sized muffin tin cup, to permit two different types of batters to be used in creating a single muffin or cupcake (e.g., a half-vanilla, half-chocolate cupcake). The claimed ornamental design for a batter separator is shown in Figure 1 of the 376 Patent, the front view, while Figure 2 depicts a nearly identical rear view. Figures 3 and 4 depict the side view and top view of the batter separator. Both Figures 3 and 4 are essentially drawings of rectangles.
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Figure 1
Figure 3
As shown above, the claimed design is two-dimensional and minimalist. The distinctive features of the claimed design include a lower trapezoidal cup-shaped portion, protrusions extending over the edge of the cup area, a semi-circular bell at the top of the product, a simple curved slope of the top edge of the product extending from the protrusions to the bell, and seven small circles located under the bell portion. The accused infringing Bradshaw product, the Sweet Creations by Good Cook cupcake divider, takes a completely different aesthetic approach in its ornamental design for a cupcakeshaped cupcake divider. The Bradshaw product has a distinctive circular swirl pattern throughout the top half of the divider, with a two-tier top that, combined with the swirl, provides the illusion of three-dimensional depth of the topping of the cupcake. The Bradshaw accused product also provides the utilitarian function of fitting into standard-sized muffin cup tin.
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Bradshaw Accused Product Kimbers Complaint sought relief inter alia a preliminary injunction for the irreparable harm Kimber was facing due to Bradshaws alleged infringement. [D.I. 1.] However, Kimber has made no motion for a preliminary injunction, and does not appear to be making any attempt to seek one. Instead, Kimber has demanded payment from Bradshaw for an amount of money that falls way below the amount that Bradshaw would be required to expend to defend the present litigation. In fact, after Kimber had been provided financial data from Bradshaw as part of the settlement negotiations, which demonstrated that the possible value of the alleged infringement was even less than Kimbers settlement demand, Kimber served broad, unfocused, and burdensome discovery on Bradshaw in an apparent attempt to force Bradshaw to settle. II. Legal Standard A. The Law of Design Patents
Although design patents share features of the much more common utility patentsuch as patentability requirements under Title 35, examination before the U.S. Patent and Trademark Officedesign patents are permitted to protect only the ornamental or non-functional aspects of an article of manufacture. See Intl Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1238 (Fed. Cir. 2009).
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A design patent protects the "non-functional aspects of an ornamental design as shown in a patent." Keystone Retaining Wall Systems v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993) (citing Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188-89 (Fed. Cir. 1988). A design may consist of "surface ornamentation, configuration, or a combination of both." 1 Donald S. Chisum, Patents, 1.04 (1995). Because a design patent is by its nature limited to ornamentation, design patents "cannot include claims to the structural or functional aspects of the article[.]" Lee, 838 F.2d at 1188. Indeed, if a design patented article is primarily functional, the design patent is invalid. Avia Group International, Inc. v. L.A. Gear California, 853 F.2d 1557, 1563 (Fed. Cir. 1988). Arner v. Sharper Image Corp., No. 94-1713, 1995 U.S. Dist. LEXIS 21156, at *31 (C.D. Cal. Oct. 5, 1995). The drawings of the design patent define the scope of the claim. The first step in an analysis of design patent infringement is to determine the scope of the claim. Determining whether a design patent claim has been infringed requires, first, as with utility patents, that the claim be properly construed to determine its meaning and scope. Elmer v. ICC Fabricating, Inc., 57 F.3d 1571, 1577 (Fed. Cir. 1995). When construing the claim of a design patent, it is important to consider that [a] patented design is defined by the drawings in the patent, not just by one feature of the claimed design. Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993). Design patents have almost no scope. The claim . . . in all design cases, is limited to what is shown in the application drawing. In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988). [W]e have made clear that a design patent, unlike a utility patent, limits protection to the ornamental design of the article. 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. David A. Richardson v. Stanley Works, Inc., 597 5
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F.3d 1288, 1293-94 (Fed. Cir. 2010) (internal citations omitted). The design of a useful article is deemed functional where the appearance of the claimed design is dictated by' the use or purpose of the article. Rosco, Inc. v. Mirror Lite Company, 304 F.3d 1373, 1378 (Fed. Cir. 2002). (internal citation omitted). In other words, where the design of the article (or portion thereof) is dictated by the function of the article, the design (or portion thereof) is functional. See Avia Group International, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1563 (Fed. Cir. 1988). When functional elements are present in a claimed design, these functional elements must be verbally identified. 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. OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) (quoted in Egyptian Goddess, 543 F.3d at 680) (emphasis added). The Court is required to construe the 376 Patent to ensure the ornamental features of the design are sorted from the functional features. After the claim of the design patent is construed, the accused design is compared against the patent in application of the ordinary observer test. The test originates from the Supreme Court finding that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. Gorham Co. v. White, 81 U.S. 511, 528 (1871). The ordinary observer is generally the principal purchaser of the article. The Goodyear Tire & Rubber Co. v. The Hercules Tire & Rubber Co.,
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Inc., 162 F.3d 1113, 1117 (Fed. Cir. 1998). However, this ordinary observer is imputed with the knowledge of prior art designs. When the differences between the claimed and accused designs are viewed in light of the prior art, the attention of the hypothetical ordinary observer may be drawn to those aspects of the claimed design that differ from the prior art. If the claimed design is close to the prior art designs, small differences between the accused design and the claimed design assume more importance to the eye of the hypothetical ordinary observer. The ordinary observer, however, will likely attach importance to those differences depending on the overall effect of those differences on the design. Crocs, Inc. v. International Trade Commission, 598 F.3d 1294, 1303 (Fed. Cir. 2010). Accordingly, the test has more recently been formulated by the Federal Circuit to inquire whether an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design. Richardson, 597 F.3d at 1295 (citing Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 681 (Fed. Cir. 2008) (en banc)) (emphasis added). In other words, infringement of a design patent can only be found where, in a side-by-side comparison of the construed design patent claim (accounting for functional features) with the accused product, the overall designs are confusingly similar, but with particular emphasis on smaller differences when the claimed design is similar to the prior art. B. Rule 11 Sanctions
The Federal Circuit recently summarized the purpose and intent of Federal Rule of Civil Procedure 11: Rule 11 expressly requires that an attorney presenting a pleading, motion, or other paper before the court certify that he has performed "an inquiry reasonable under the circumstances" such that he can verify that (1) "it is not being presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation," (2) "the claims . . . are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law;" (3) "the factual 7
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contentions have evidentiary support or, . . . will likely have evidentiary support after a reasonable opportunity for further investigation or discovery." Fed. R. Civ. P. 11(b)(1)-(3). As the 1993 advisory committee note explains, this rule "requires litigants to 'stop-and-think' before initially making legal or factual contentions." Fed. R. Civ. P. 11 advisory committee note to 1993 amendments. The notes explain that the changes to the rule "emphasize[] the duty of candor by subjecting litigants to potential sanctions for insisting upon a position after it is no longer tenable." Raylon v. Complus Data Innovations, Inc., 700 F.3d 1361, 1366-1367 (Fed. Cir. 2012). In other words, Rule 11 requires litigants to not only have a legitimate basis, in both fact and law, for asserting a claim, but are required to withdraw its claim should their position shown to be no longer tenable. The Federal Circuit applies the law of the regional circuit in reviewing Rule 11 sanctions. Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1328 (Fed. Cir. 2011). Under Sixth Circuit precedent, attorneys are required to follow an objective standard for asserting claims: The test for the imposition of Rule 11 sanctions is whether the individual attorney's conduct was reasonable under the circumstances. Mann v. G & G Mfg., Inc., 900 F.2d 953, 958 (6th Cir. 1990). The court elaborated that Plaintiffs counsel cannot insulate itself from Rule 11 sanctions merely by showing that they acted in good faith, but instead must maintain a level of conduct that meet[s] an objective standard of reasonableness under the circumstances. Id. Where a litigants case is untenable, making conclusory allegations without factual support, and cannot be sustained as a matter of law, Rule 11 is violated and sanctions against the litigant are warranted. See Trans Rail Am., Inc. v. Hubbard Twp., No. 4:08-02790, 2012 U.S. Dist. LEXIS 139113, at *10-11 (N.D. Ohio Sept. 27, 2012) (citing Mann v. G & G Mfg.); Meier v. Green, 2007 U.S. Dist. LEXIS 65766, No. 07-11410, at *7 (E.D. Mich. Sept. 6, 2007) (citing Mann v. G & G Mfg.).
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As demonstrated below, Kimber lacked any legitimate basis to assert infringement against Bradshaw. Kimber has continued to assert its infringement claim against Bradshaw despite lack of evidence, clear guidance from the Federal Circuit that refutes its contentions, and an unambiguous demonstration by Bradshaw of these deficiencies. III. Kimbers Allegations In Kimbers Complaint, Kimber accused Bradshaws batter separator as infringing Kimbers 376 Patent. Kimber alleged, without any factual support or analysis that [t]he design of Bradshaws batter separator as marked and sold would cause an ordinary observer, familiar with the prior art designs, to be deceived into believing that the design of Bradshaws batter separator is the same as Kimbers patented design. [D.I. 1 31.] In essence, this is an incomplete paraphrase from the holding in Egyptian Goddess. Kimber ignores the functionality of its patented design, ignores any consideration of the prior art, and provides no explanation as to why the ordinary observer would conclude that the accused Bradshaw product infringes the 376 Patent. Accordingly, Bradshaw served an interrogatory on Kimber to provide all facts in support of its assertion of infringement. In response, Kimber again provides an incomplete and wholly deficient analysis on design patent claim construction and its infringement contentions, then concludes: Applying the Egyptian Goddess standard to the Kimber matter and observing the designs below, it is Kimbers position that an ordinary observer would conclude that the accused products are similar enough to create market confusion. Ex. 1, Kimbers Answers to Bradshaws First Set of Interrogatories, No. 16. The drawings below are reproduced here:
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The only evidence that Kimber cites in support of its conclusory market confusion theory is merely repeating the same allegation made in the Complaintthat a customer of Bradshaws refused to carry Kimbers product because it was already carrying Bradshaws product. [D.I. 1 27.] In fact, as evidenced by the email chain annexed to Kimbers Complaint, the customer was able to precisely identify the proper source of the batter separator from Bradshaw, including a link to Bradshaws Good Cook website. [Id. Ex. D.] Moreover, this single uncorroborated hearsay statement fails to support the requirement that it must be the ornamental features that create the confusion and makes no such distinction over the functional features. See OddzOn Prods, 122 F.3d at 1406-07 (finding that where both functional and ornamental features are in a patent design, survey evidence must demonstrate a link between the accused products and the patented ornamental aspects of the design). Neither at the time of filing, nor more than nine months into the litigation, has Kimber produced any scrap of evidence to support its assertion of infringement. At no point has Kimber acknowledged that its patented design is primarily functional, which is not afforded design patent protection. Moreover, Kimber has also failed to acknowledge that the established prior art of record completely abrogates any attempt by Kimber to stretch its patent to accuse Bradshaw. These continued failures by Kimber to establish a basis in fact or law to sustain this action are sanctionable under Rule 11. 10
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IV.
Kimbers Assertion of Bradshaws Infringement is Unsupported by the Law and Bradshaw Does Not Infringe the 376 Patent as a Matter of Law A. Kimbers Proposed Claim Construction Ignores Functional Elements, Which Are Not Afforded Protection Under A Design Patent
Kimbers only attempt to provide any analysis on the scope of the 376 Patent was provided through its Settlement Demand Letter of November 27, 2013.1 (Ex. 2 at 4.) Kimbers analysis on the construction of the 376 Patent is improper and contrary to the precedent established in in Egyptian Goddess, 543 F.3d 665. Kimber makes the conclusory assertion that the Court will construe Kimbers claim as an unambiguous and clearly illustrated design for a cupcake batter separator. (Id.) But at no point does Kimber address that the bulk of the 376 Patent claims functional elements that are not protectable under design patent law. Functional elements have never been protectable under design patent law. In order to prevent a design patentee from asserting utility patent protection through a design patent, functional elements must be identified in the claim construction of the design patent. 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. OddzOn Prods., 122 F.3d at 1405 (quoted in Egyptian Goddess, 543 F.3d at 680). Kimbers letter and analysis completely ignores that the claimed batter separator has a primarily utilitarian function of bisecting a cupcake/muffin cup. The claimed batter separator
Although Kimbers settlement demand letter (and subsequently Bradshaws responsive letter) are inadmissible for the purpose of establishing liability, the settlement letters demonstrate Kimbers bad faith in asserting a position contrary to clear law, and thus admissible under Fed. R. Evid. 408(b). See, e.g., Seafarers Int'l Union of N. Am. v. Thomas, 42 F. Supp. 2d 547 (3d Cir. 1999) (holding bad faith conduct during negotiations admissible); Ausherman v. Bank of Am. Corp., 212 F. Supp. 2d 435 (D. Md. 2002) (Fed. R. Evid. 408 does not shelter [attorneys] who attempt to shield from the Courts scrutiny deliberately untruthful statements.) However, any statement concerning Bradshaws settlement offers remain inadmissible to prove liability under Fed. R. Evid. 408(a). 11
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shows in Figure 1 the front view while Figure 2 depicts a nearly identical rear view. These two views together generally depict an upper top part of the separator, while the bottom trapezoid conforms to the diameter of a standard size cupcake pan. (See 376 Patent, Ex. 3.) The bottom cup-shaped part is depicted in the red box below:
The bottom part of the claimed design is unquestionably functional. The bottom part must conform to the inverted, truncated cone shape of a muffin/cupcake cup. Any other shape would not permit the batter poured into one half of the muffin cup to be separated from the other half of the muffin cup. The bottom half must be trapezoid-shaped in the depicted proportion to properly bisect the inverted, truncated cone shape of a muffin cup. Figures 3 and 4 depict the side view and top view of the batter separator. Both figures are essentially drawings of rectangles.
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Unsurprisingly, Kimber has never provided an analysis on the construction of its 376 patent utilizing Figures 3 and 4 as part of its analysis. This is a tacit admission that Kimber has no protectable interest in their design being essentially flat. This is supported by the similar analysis from above on the functionality of the claimed batter separator. A batter separator must be flat and thin (as claimed) in order to bisect the inverted, truncated cone shape of a muffin cup. Any other pattern or shape other than flat would interfere with the ability to create two halves of a single cupcake. Any other arbitrary shape would fail to create a cupcake with two halves, and thus is a functional element of the claimed batter separator. There are other clear indicia of the functionality of the claimed batter separator. Berry Sterling Corp. v. Prescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997) outlines additional considerations, which are also present here: Whether the protected design represents the best design. The trapezoid shape of the bottom part and the flatness of the claimed batter separate are the best design choices. Any other shape of these features would be poor choices in creating a batter divider that evenly divided a muffin cup. Whether alternative designs would adversely affect the utility of the specified article. A shape other than the trapezoid shape of the bottom part in the claimed dimensions would not prevent batter being poured into one half of the muffin cup from leaking into the other side of the muffin cup. A batter divider that was not flat and thin would not permit the creation of muffins/cupcakes with two halves.
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Whether the advertising touts particular features of the design as having specific utility. Kimbers advertising touts its functional features. Right beneath the product name on Kimbers packaging is the utilitarian feature of the claimed batter separatorthat it fits standard size cupcake pans and cups:
(See Ex. 2 at 1, Kimber Settlement Demand Letter of November 27, 2013.) Kimber cannot ignore the functionality of its claimed batter separator during claim construction. The Federal Circuit has already ruled it is improper to rely on just the unambiguous and clearly illustrated design shown in the drawings where functional elements must be considered. See Richardson, 597 F.3d at 1294. ([Patentee] fails to explain how a court could effectively construe design claims, where necessary, in a way other than by describing the features shown in the drawings. [Patentees] proposition that the claim construction should comprise nothing more than the drawings is simply another way of arguing that the court erred by identifying the functional elements of the patented article, and is therefore unavailing. We find no error in the courts claim construction.). Moreover, if a design contains both functional and ornamental features, the patentee must show that the perceived similarity is based on the ornamental features of the design. OddzOn Prods., 122 F.3d at 1405. As such, there is an additional level of proof required from the patentee, and it cannot merely rely on the drawings alone to construe the patent.2
Bradshaw maintains there are additional functional features of the claimed batter separator, including at least the overhang on the top of the cupcake design that allow the product to rest on the cupcake/muffin cup or paper cup, and the raised bumps for gripping the separator. However, Bradshaw does not believe it is necessary to proceed with further analysis on these points at this time. 14
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Kimbers proposed claim construction of the 376 patent is not merely a difference of litigation positions, but an untenable position contrary to well-established law on design patents. B. Kimbers Infringement Analysis Ignores Consideration Of The Prior Art As Required Under Egyptian Goddess
In addition to Kimbers omission of clear precedent that prevents Kimber from claiming design patent protection for the functionality of the claimed design, Kimbers cursory infringement analysis relies on an improper selective reading of the operative case law. Kimber omits key precedent from Egyptian Goddess that requires Kimber to consider the prior art in its infringement analysis: When the differences between the claimed and accused design are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art. And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer. Egyptian Goddess, 543 F.3d at 675 (emphasis added). In other words, it must be the differences between the claimed design and the prior art that cause the deception by the ordinary observer of the similarities between the claimed design and the accused product. Comparison of the claimed design against the prior art demonstrates exactly what feature the ordinary observer would be drawn to in comparison with the accused product:
Fig. 1, 376 Patent
Cupcake Cookie Cutter Dated Oct. 25, 2009 (Ex. 4) 15
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The only articulable difference between the claimed design and the prior art cookie cutter is the addition of the seven circles under the bell portion of top of the claimed design. Every other feature of the claimed design is present in this single prior art reference. Comparing the differences between the claimed and accused design viewed in light of the prior art (and accounting for the functional elements of the claimed design) indisputably demonstrate how distinct the Accused Product is from the claimed design:
Fig. 1, 376 Patent
Cupcake Cookie Cutter
Accused Product
Again, the ordinary observer would be drawn towards the distinctive seven circles under the bell portion of top of the claimed design, which are not present in the Accused Product. Any attempt to construe the 376 Patent more broadly to encompass the Accused Product will render the patent invalid as anticipated, as all of the ornamental features would be encompassed by the Cupcake Cooke Cutter prior art reference. See Upsher-Smith Labs., Inc. v. Pamlab, LLC, 412 F.3d 1319, 1322 (Fed. Cir. 2005) (A century-old axiom of patent law holds that a product which would literally infringe if later in time anticipates if earlier.)
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This same analysis can be performed with any number of prior art references that the ordinary observer would be familiar with:
D671,376
D359,153 (Ex. 5.)
D601,379 (Ex. 6.)
D633,654 (Ex. 7.)
D616,260 (Ex. 8.)
D649,905 (Ex. 9.)
D610,944 (Ex. 10.)
D590,524 (Ex. 11.)
Accused Product
Bradshaw can find no plausible argument whereby Kimber can assert infringement of the 376 Patent without simultaneously distinguishing over the prior art.3 Even without the above analysis, the lack of any good faith claim of infringement can be found in Kimbers Complaint. Kimbers repeated use of a three-way comparison between the patent design, the accused product, and Kimbers product demonstrate how different Bradshaws product is:
Alternatively and additionally, the 376 Patent is invalid as anticipated by the Cupcake Cookie Cutter prior art reference. All of the ornamental features of the two designs are the same, and the addition of the functional gripping circles under the bell portion of the top of the design fails to make a patentable distinction over the prior art. However, a full analysis is not necessary at this time and Bradshaw reserves the right to revisit the invalidity of the 376 Patent later, if warranted. 17
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The ordinary observer can easily distinguish which one of these three images is not like the others. Nobody would confuse the Bradshaw product in the middle as the same as the other two pictures, let alone an ordinary observer. Not only does Bradshaw not infringe the 376 Patent, there is no plausible argument for Kimber to assert that Bradshaw is infringing the 376 Patent. V. Kimbers Filing and Maintaining of the Present Lawsuit Without a Basis in Fact or Law Warrant Rule 11 Sanctions As Kimber continues insisting on advancing its baseless claim of infringement against Bradshaw, Kimber is subject to liability for violating Federal Rule of Civil Procedure 11. Under Sixth Circuit precedent, the test for the imposition of Rule 11 sanctions is the objective standard of whether the individual's conduct was reasonable under the circumstances. Union Planters Bank v. L & J Dev. Co., 115 F.3d 378, 384 (6th Cir. 1997) (citation omitted). This objective standard is violated when the patentee takes unsustainable positions during litigation. For example, the Federal Circuit held that there is a threshold below which a claim construction is so unreasonable that no reasonable litigant could believe it would succeed, and thus warrants Rule 11 sanctions. Raylon v. Complus Data Innovations, Inc., 700 F.3d 1361, 1368 (Fed. Cir. 2012)(quoting iLor, LLC v. Google, Inc., 631 F.3d 1372, 1378 (Fed. Cir. 2011)). As demonstrated above, Kimbers positions on claim construction and infringement are so unreasonable that no reasonable litigant would believe it could maintain these contentions. Kimber cannot ignore established precedent on the functionality of its claimed design or the prior
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art that limits the scope of its design. Kimber cannot profess ignorance of the law, which also provides no support for Kimbers assertion of infringement. As the Sixth Circuit measures conduct against an objective standard, Kimber cannot insulate itself from failing to comply with Rule 11 merely because it may have had a good faith belief in pursuing the present lawsuit. Thus, Rule 11 sanctions are warranted against Kimber as it has maintained its accusation of infringement against Bradshaw. Even more egregious is that Kimber has had full knowledge of the facts and legal statements contained herein since December 9, 2013, as Kimber was provided with Bradshaws response to its settlement demand letter. (Ex. 12.) The Sixth Circuit has admonished parties that Rule 11s requirement of reasonableness is not a one-time obligation and parties are impressed with a continuing responsibility to review and reevaluate his pleadings and where appropriate modify them to conform to Rule 11." Runfola & Associates, Inc. v. Spectrum Reporting II, Inc., 88 F.3d 368, 374 (6th Cir. 1996). In this case, Kimbers allegations and legal positions were not reasonable at Kimbers initiation of the present lawsuit, and the continued discovery and correspondence exchanged further demonstrate the lack of reasonableness. Where much of the factual record is publicly available at the time of the complaint, Plaintiff must make a sound appraisal of the viability of [its] claims. Bates v. Colony Park Ass'n, 393 F. Supp. 2d 578, 598 (E.D. Mich. 2005). Any doubt Kimber had that it was attempting to protect non-ornamental features already present in the prior art through its asserted design patent should have long been erased.
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Instead, Kimbers malice in advancing the present action against Bradshaw can be seen through its conduct.4 Kimbers settlement demands were far below the costs required by Bradshaw to defend the current suit. (See Ex. 2 at 7, Kimber Settlement Demand Letter of November 27, 2013.) Kimber apparently attempted to extract a nuisance value from Bradshaw, in hopes that it would impose a high cost against Bradshaw to combat Kimbers meritless claim. This type of conduct is one recent example of bad faith litigation. Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1324 (Fed. Cir. 2011). VI. Conclusion As explained above, at the outset of the present litigation, Kimbers complaint lacked basis in fact or law to sustain its allegations of design patent infringement against Bradshaw. Ultimately, there is no prospect that further discovery may make Kimbers infringement allegations sustainable. The Court must find that Kimber has violated Rule 11, dismiss Kimbers Complaint with prejudice, and award an appropriate sanction amount against Kimber and/or its counsel at a minimum to make Bradshaw whole again and sufficient to deter repetition of the conduct or comparable conduct by others pursuant to Fed. R. Civ. P. 11(c)(4). Dated: February 5, 2014 Respectfully submitted, /s/ Phillip G. Eckenrode Phillip G. Eckenrode (# 0084187) HANH LOESER & PARKS, LLP 65 East State Street, Suite 1400 Columbus, Ohio 43215 Phone: (614) 233-5147 Fax: (614) 233-5194 peckenrode@hahnlaw.com
Proof of malicious intent is not required to sustain sanctions under the objective Rule 11 standard, but should be considered as part of the Courts analysis. 20
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/s/ Michael B. Marion Michael B. Marion (admitted pro hac vice) Robert J. Kenney (admitted pro hac vice) BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road, Suite 100 East Falls Church, Virginia 22042 Phone: (703) 205-8000 Fax: (703) 205-8050 rjk@bskb.com; mbm@bskb.com ATTORNEYS FOR DEFENDANT BRADSHAW INTERNATIONAL, INC.
CERTIFICATE OF SERVICE I hereby certify that on January 8, 2014 and February 5, 2014, I served via electronic mail, a copy of the foregoing Defendant Bradshaw International, Inc.s Memorandum in Support of its Rule 11 Motion for Sanctions upon: Samuel N. Lillard, Esq. Courtney J. Miller, Esq. David M. Marcus, Esq. McNees Wallace & Nurick LLC Fifth Third Center 21 East State Street, Suite 1700 Columbus, OH 43215 slillard@mwncmh.com cmiller@mwncmh.com dmarcus@mwncmh.com
/s/ Michael B. Marion Michael B. Marion
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Case: 2:13-cv-00185-ALM-NMK Doc #: 24-1 Filed: 02/05/14 Page: 1 of 23 PAGEID #: 200
EXHIBIT 1 to Defendant Bradshaw's Rule 11Motion
fN TRE UNITED STATES DISTRICT COURT SOUTHERN DISTRI CT OF OHIO EASTERN DIVISION KJmber Ca keware, LLC
Case No. 2: 13-cv-0 185 PlaintiiT. Judge Marbley
vs.
Magistrate Judge King
Bradshaw l nternHtional, lnc.
Defendant
PLAINTIFF KJMBE R CAKEWARE, LLCS ANSW ERS TO DEFE NDANT BRADSHAW JNTERNATIONAL, INC.'S FIRST SET OF I NTE RROGATORIES
Now comes the Plaintiff, Kimber Cakewarc, LLC (hereinafter " Plainti rr or ''Kimber"), through the undersigned counsel, pursuant to Rule 33 of the Federal Rul es of Civil Procedure, and nereby subm its its responses to Defendant Btadshaw International, Tnc. 's (hereinafter Defendant" or "Bradshaw") First Sel of Interrogatories under oath and in writing.
PRELIM INARY STATEMENT The responses set fo rth below arc made solely for the purpose of this action.
By
responding to Defendant's First Set of Intcrrogatol'ics, Plaintiff hereby states that it does not waive its right to make all appropriate objections, including without limitation, objections concerning relevancy. competency, material ity. propriety and admissibi1ity, that would require the exclusion of any statement contained herein or in any document referenced iJ any such response or document were so ught to be introduced into evidence at any hearing or trial in this action. Plaintiff expressly reserves all such objections. Plaintiff has not yet completed its investigation of all the facts relating to this action and has no1 yet completed its preparation fo r trial.
The following responses are based upon
information and documents presently known to responding party and are therefore made without
prejudice to responding party's right to produce subsequently discovered evidence relaUng to the proof of presently known material facts and to produce all evidence, whenever di scovered, in any rotm, relating to tbe proof of subsequently discovered material facts. Except for expl icit facts adm itted herein, or in any documents referenced in connection hc!'ewith, no admission or any narwe is intended, and none should be implied or inferred. Plaintiff generally objects to each discovery request to U1e extent that it seeks information
protected by the attorney-client and/or attorney work product ptivileges, including without
limitalion, protected communications between responding party and its cow1sel and cou nsel's
legal reasoning, theories, opiruons, research, impressions and/or conclusions. Without waiving
any objections, qualifications and limitations, Plaintiff responds as fo llows:

INTF:RROGATORYNO. 1:
Identify each Accused Product in this action, set forth each element of the patent-in-suit that Kimber alleges has been infringed as a result of the sale of the product; whether such infringement is direct or under the doctrine of equivalents; set forth, on an element-by-element basis, the corresponding structure in each product which Kimber alleges satisties each respective cJaim element or feature; and identify eacl1 document refen ing or relating to any analysis or evaluation performed on any sample of an Accused Product.
ANS\VER:
Wi1 h respect to fn terrogatory No. I, Kin1ber states that the Accused Product jn this action
is Defendant's "Sweet Creations by Good Cook cupcake divider'' batter separator. Kimber
further states that taking its non-obvious ornamental design for a batter separator marketed as ''Batter Babies ("patented design") and comparing it to U 1e Accused Product, an ordinary
observer would believe that the patented design and Accused Product are substantially the same in appearance as illustrated below: Kimber's Patented Design Bradshaw Batter Separator
Further, pursuant to Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008), in construing design patents, courts are to generall y forego ve rbal or narrative descriptions of design patents: ''Given the recogn ized di fficulties entailed in trying to describe a design in words, the preferable course ordjnarily wiJI be for a disnict court not to attempt to ' construe' a design patent claim by providing a detailed verbal description of the claimed design.'' [d. at 679. "[D]csign patents 'typically are c laimed as shown in drawings.' and claim construction 'is adapted accordingly."' I d. "'[A]s a rule the illustration in the drawing views is its own best description."' ld. Accordingly, courts have generall y relied on parent drawings to construe design claims.
Wing Shing Products Co. Ltd. v. Sunbeam Products, Inc., 665 F.Supp.2d 357, 360 (S.D.N.Y. 2009). Thus, Defendant's request for an element-by-clement comparison of the Accused Product and patented design is a Futile exercise that does not comport with the present state of the relevant law.
FinaUy, with respect to Defendant's request that Kimber idemify ench document referring
or elating to any analysis or evaluation performed on any sample of an Accused Product, Kimber specifically identifies U.S. Design Patent No. D671,376.
INTERROGATORY NO.2:
Identify all prior art to lhe patent-in-suit, including the identification of all patentability. validity, prior art, e11forceability, or infringement evaluations, searches, or opinions conducted by or lor Kimber (or any of the named inventors of the patent-i n-suit) relating to the alleged inventions described and claimed in the patent-in-suit, including for each such evaluaUon, search
or opinion, the identifi cation of the date and scope of each such evaluation, search or opinjon; the
identification of each person involved in authorizing, conducting, evaluating or reviewing the results of each such evaluation, search or opinion; and an identification of all documents, including in patents and other publications, which were revealed by each such evaluation, search or opinion; and all other documents relating to each such evaluation, search, or opinion,
including but not limited to any such reports.

ANSWER:
With respect to Interrogatory No. 2, Kimber states that it is not aware of any pdor art related to Ihe patent-in-sllit.
INTERUOGATORY NO.3:
Tdentify each disclosure related to the subject matter for the patent-in-suit made prior to the Jiling of a patent application, by any individual, including the inventors of the patent-in-suit~ to any thit'd party, and identify each person(s) involved in and who received such di sclosUI'e.
ANSWER:
With respect to Interrogatory No. 3, Kimber states lhat it made no disclosures related to
the subject matter for the patent-in-suit to any third-party prior to the filing of the relevant patent
application.
INTERROGATORY NO. 4:
Identify each communication between Kimber and any other person or company concerning the initial availability, offer of sale. or proposal or request to provide products embodying any alleged invention of U1e patent-in-suit prior to fi ling the corresponding patent application directed to the claimed product.
ANSWER:
Kimber engaged in conversations with lhe following companies concerning the manufacture, distribution, and/or marketing of its patented design prior to filing the corresponding patent application: Midwest Molding Inc. (Plain City, OH) PPA Graphics (Canal Winchester, OI I) TCG Continuum (Columbus, OH) Dive Creative (Columbus, OH) Thomas Tool & Mold Company (Westerville, OI-l) Priority Designs (Gahanna, OH)
Wi th respect to the patent-in-suit. identify each Kimber Product manufactured and/or
distributed by or on behalf of Kimber at any time by product name, number ot similar manner of identi fication; state the date Lhe product was first introduced to the market; set forth the total
sales volume in the United States in units and associated dollar revenue on an annual basis from the date of introduction; identify the person or persons most knowledgeable with respect to each
o[
the relevant feaLurcs of the prod uct; and identil'y the person or persons most knowledgeable
concerning lbe facts and circumstances related to the original introduction of the product to the market by or on behalf of Kimber (including the original customer to whom the product was tirst offered).
ANSWER:
With respect to lntenogatory No. 5. Kimber states that it offered its "Oatter Daddy'' and ''Batter Babies' product lines for sale in the consumer market beginning in December 20 I0. Kimber further states that Robert Reiser, original Member and current President of Kimber. is the person most knowledgeable with respect to the relevant features of the patented design and
the facts and circumstances related to the miginal introduction of the Bauer Babies to tbe market.
Concerning Defendant's request for sales and revenue infonnation related to the Patented design. given the sensi tivity and proprietary nature of the information requested, Kimber stales tl1at it will produce such information upon the cxccuLion of a mutually agreeable protected order, a drafl of which has previously been provided to Bradshaw for review and consideration.
INTERROGATORY NO.6:
State the date that Kimber first became aware or each Accused Product in this action, set forth the circumstances under which Kimber became aware of the product. identify each person having knowledge of the ci rcumstances surrounding Kimber' s initial awareness of the Accused Product(s); and identify each document referring or relating to Kimber's awareness of the Accused Product and of its features.
AN WER:
Kimber fi rst became aware of the Accused Product in this action on or about October 22, 2012 when Ki mberly Reiser ("Mrs. Reiser"), Vice President and Mernber of Kimber, received an email [rom Kim Teresi ("Ms. Teresi"), Senior Buyer and Director of Advertising at a company
called Chef CentraL Mrs. Reiser had reached out to Ms. Teresi to explore whether Chef Cenual
would be interested in can ying Batter Babies fo r sale. Ms. Teresi, apparently evidencing
confusion as to the source of Bradshaw's ba.ller separator, responded that Chef Central was "already carrying thi s product through Bradshaw/Good Cook." Mrs. Reiser responded to inquire how long Bradshaw had been selling its batter separator, to which Ms. Teresi responded that Bradshaw's batter separator had been introduced at the International Housewares Show in March of20 12. On or abour October 22, 2012, Ms. Reiser informed Mr. Reiser about the above email cotTespondence from Ms. Teresi and forwarded hi m the relevant chain of emails. A true and accurate copy of the email chain between Mrs . Reiser and Ms. Teresi is attached to Plaint ifPs Compla int as Exhibit D. In additi on, Mr. Reiser attended a housewares show in 20 13 and witnessed a sales presentation by unknown representatives and/or agents of Bradsha w who explained how Bradshaw supposedly invented the Accused Product.
INTERROGATO RY NO.7:
Identify each occun ence on which an Accused Product was evaluated by or on behalf of Kimber, and identifY each document referring or relati ng to any testing, measurement, anal ysis or observations related to the product and identify each person involved in the evaluation.
ANSWER:
With respect to lntetrogatory No. 7, Kimber states that on or about October 22. 201 2, Robert Reiser observed the Accused Product on the Bradshaw/Good Cook website and visually compared the Accused Product to the patented design. Mr. Reiser also viewed the Accused Product in-person at a housewares show in 2013. In addition, the Accused Product was
evaluated and visually compared to the patented design by Kimber's past legal counsel, Ronald Koch, and present legal counsel, Courtney Miller. To the extent that the foregoing request seeks information and documentation protected by the illtorney-client privilege and/or work product doctrine, Kimber exercises its protected right to withhold such information from production.
JNTERROGATORY NO. 8:
Identify any agreements relating to or involving the patent-in-suit including ownership intctests, non-disclosure agreements, development agreements, assignment agreements, fltnding agreements. license agreements (including p01tfolio licenses), settlement agreements. and consent agreements not to enforce the patent-in-suit, and identi fy the person most knowledgeable regarding the identified agreements.
ANSWER:
A written assignment of rights wus execuL ed by Robert Re1ser to Kimber involving the patented design. As a result, Kimber is the owner by assignment of all right, tille and interest in U.S. Design Patent No. D67 I .376 . In further response to Defendant's request. Mr. Reiser is the person most knowledgeable about U1e relevant wri tten assignment.
lNTEIU{OGATOilV NO.9:
Jdentily each of Kimber's employees, former employees, consultants or agents (other than clerical or similar non-technical support staff) who were involved, on behalf of lUmber, in the prosecution of and application for the patent-in-suit and any foreign counterparts thereof and
the duties and responsibilities of each in connection witb the prosecution of and application for the patent-in-suit. ANSWER: Robert Reiser, original Member and current President of Kimber, created the in itial design for the patented design, sought the application for U 1e patent-in-suit, obtained the patentin-suit, assigned his rights to the patent-insuil to Kimber and observed the infii.ngement of the patent-in-suit by Defendant.
iNTERROGATORY NO. 10:
Identify each person that Ki.mbcr may call as a witness to testify at any proceeding in thi s
mauer. state the general subject matter to which the witness testimony is expected to relate and,
for any identified expert witness: state the occupation of each expe1t , identify the field of experlise of each expert; provide a resume of qualifications of each expert; state each opinion whkh the t!xpelt may offer on behalf of Kimber; set fmth the complete basis underlying each respective opinion; and identify all documents and things supporting or otherwise referring or relating to each such opinion.
ANSWE R:
Kimber states that it has not yet identified an expert witness it may call to testify at any proceeding in this matter. Should Kimber identify an expert witness in the future, it will
seasonably supplement the foregoing response in accordance with the Federal Rules of Civil Procedure. As to lay witnesses, Kimber has not determined who it may call to testify in this matter; however Kimber has prepared a preliminary list of witnesses below. Kimber reserves lhe right to seasonably supplement this response.
1. RobertS. Reiser, President and Member 3333 Scioto farms Dr.
Hilliard. Ohio 43026 (6 14) 742-7929 Mr. Reiser has knowledge concerning the creation of Lhe design protected by U.S. Design Patent No. 0671 .376, development of Kimber's products, the discovery of Defendant's infringing product, communications he has had evidencing market confusion between lGmber's design and Defendant's product, damages relating to lost sales, the business activities of Kimber, and the distribution of the Defendant's infri nging products.
2. Kimberly M. Reiser. Vice President and Member 3333 Scioto Fam1s Dr. I Ii iliard, Ohio 43026 (6 14) 742-7929
Mrs. Reiser has knowledge concerning tl1e creation of the design protected by U.S. Design Patent No. D671 .376, development of Kimber's products, the discovery of Defendant's infringing product, communicat ions she has bad evidencing market cont\J sion between Kimber's design and Defendant's product, dan1ages relating to lost sales, U1e business activities of Kimber, and the di stribution of Lhe Defendant's infringing products. 3. Rradl ey R. Gall, Member 9480 Santa Clnra Ci rcle Plain City, Ohio 43064 (6 14) 395-0 167 Mr. Gall has knowledge concerning the history or Kimber and the effects of Defendant's infringing acti vities on Kimber's business.
4. Robert D. Giesseman, Member 5640 Barry Trace
Dublin, Ohio 43017

(614) 4 19-0825
10
Mr. Giessman has knowledge concerning the history of Kimber and the effects of Defendant's infringing activities on Kimber's business. 5. Mcrrilee M. Martin, Member 6157 Joliff Street Galloway, Ohio 43119 (6 14) 361-8677 Ms. Martin has knowledge concernmg the history of Kimber and the effects of
Defenda11t's infringing activities on Kimber's business.

6. Keri Anderson, employee of Defendant Rancho Cucamonga, California 9 1730 (800) 421-6290 Ms. Anderson has knowledge concerning the DeHmdant s purchase of products from Kimber based on the design protected by U.S. Design Patent No. D671 ,376. the
intentional copying by Defendant of Kimber' s design. and the awareness of Defendant of

the patent-pending status of the design upon which Kimber's products are based. 7. Kim Teresi, Senior Buyer and Director of Advertising at ChefCentraJ 240 Route 17 North Paramus, NJ 07652 (20 I) 576-0178 ext. 12 Ms. Teresi has knowledge concerni ng aclual confusion between the design set forth in U.S. Design Patent No. 0671.376 and the Defendants infringing prod uct. 8. Jeff Megorclen Executive Vice President at Bradshaw 9409 Buffalo A venue Rancho Cucamonga, California 91730 (800) 42 1-6290 It is anticipated lhat Mr. Megorden wi ll testify about the facts and circumstances related to Derendant's infringemenl on U.S. Design Palent No. 0671.376.
9. Thomns Barber
1t
9409 Buffalo Avenue Rancho Cucamonga, California 91730 (800) 421-6290

It is anticipated that Mr. Barber will testiry about the facts m1d circumstances related to
Defendant's infringement on U.S. Design Patent No. D671 ,376.

I 0. Any witness identified by Defendant or called to testify by Defendant in this matter.

Identify and describe al l documents retention and document destruction policies of Kimber that has been applicable or in force at any time since 2000, including any such policy concerning information or documents stored in computer memory.
ANSWER:
Kimber has no formal destruction or retention poUcy for company documents.
I NTERROGATORY NO. 12:
Separately for each of Bradshaw's interrogatories and document requests, identify each person who was consul ted or who provided information or documents in connection with the preparation of your answers thereto.
ANSWER:
Kimber states that Robert Reiser provided Kimber's responses to the foregoing interrogatories and requests for documents with the assistance of counsel.

State all facts that suppo1 1 your allegations made in paragraphs 12-1.4 of Kimber's Complaint.
12
ANSWER:
Kimber states that prior to the formation of Kimber, Robert Reiser designed and began marketing a full-sized cake batter separator called the 'Batter Daddy." In 2009, while the design patent was pending on the Batter Daddy, Mr. Reiser sought to partner with approximately two dozen companies for the manufacture and distribution of the Batter Daddy.
The specific
companies that Mr. Reiser can recall communicating wi th related to partnering on the Batter Daddy included:
Wi ILon Corp. Bradshaw/Good Cook Rubbermaid

Zak
Calphalon
CHEFS
Farberware
KitchenAid NordicWare llutzler Nopro

Oneida
Anchor Hocki ng
fox Run I3rands
Progressive Inti.
13
Nearly all the commutlication occurred via unsolicited cold calls or unsolicited written letters to the particular company and Mr. Reiser does not remember Lhe specific names of any individuals he communicated with. Mr. Reiser does specificall y recall that the representative he spoke with from Bradshaw rejected partnering with him on the Batter Daddy for the stated reason that difficulties in lhe economy had caused Bradshaw to stop developing any new products for a period of lime. ThereaHer, Mr. Reiser sought professional device and conducted market
research, and determining that there was a market for the Batter Daddy, began to prepare anJ manufacture and market the Batter Daddy on his own.

State all facts tha t support your cJaims of infringement under 35 USC 271 (b), (c). and
(f).
ANSWER:
In 201 1, Kimber's President and founder, Robert S. Reiser, applied for a design patent from the U.S. Patent Office for the Batter Babies design. On November 27, 2012, Kimber's patent was approved and designated as U.S. Design Patent No. D67l,376.
Mr. Reiser
subsequently assigned the patent to Kimber. Since bringing its Batter Babies line of products to the market, Kimber has experienced growing success and received praise in the industry.
Defendant Bradshaw International, Inc. ("Bradshaw'') is a Delaware corporation with its principal place of business in Rancho Cucamonga, California. ll also sells baking products, including a line of products under the name "Sweet Creations by Good Cook."
14
On Friday, December 16, 20 11 , Bradshaw's Senior Product Manager, Keri Anderson ("Ms. Anderson"), ordered a set of Batter Babies from Kimber. Kimber subsequently completed the order request and shipped the package of Batter Babies to Ms. Anderson at Bradshaw's facil ities. The package sent to Ms. Anderson was clearly labeled with the notification "Patent Pending." Approximately I 0 months later, Kimber became aware U1at Bradshaw was selling a competing product to its Batter Babies with a design that was substantially the same i n violation of its design patent:
Kimber's Patented Design
Bradshaw Batter Separator
Bradshaw's competing product design was so similar that Kimber began to encounter market confusion when marketing its Batler Babies product. Specifically, when Kimber inquired as to whether Chef Central, a company that sells cookware, bakeware and other assorted accessories, would be interested in carrying Batter Babies fo r sale, a Chef Central representative responded that Chef was " already carrying Kimber' s product through Bradshaw/Good Cook." Because Bradshaw has applied a colorable imitation of Kimber' s patented design to its product for the purpose of sale, it is in clear violation of 35 U.S.C. 289 which prohibits design patent infringement.
15
State all facts that demonstrate the iiTeparable harm that Kimber is facing through the alleged infringement of the patent-in-suit by Bradshaw.
ANSWER:
With respect to 1ntertogatory No. 15, Kimber states that as a result of Defendant's ongoing in fringement of the patent-in-suit, Kimber has been unable to supply its Patented design to bak.eware retailers, suppliers and distributors already carrying the Accused Product, resulting
in significant lost revenues and profits to Kimber. Defendant's sale of the Accused Product has
caused market confusion and likely led ordinary purchasers to buy the Accused Product believing it to be Kimber's patented design. As a result, Kimber's market share for its patented design has been negatively impacted and it has lost potential revenue and profits.
INTERROGATORY N0.16:
State all facts that support yotu' allegation that '[t]he design of Bradshaw's batter
sepa rator as marked <cind sold would c.ause an ordinary observer, familiar with the prior art designs, to be deceived into believing that the design of Bradshaw's batter separator is the same
as Kimber's patented design."
ANSWER:
Pursuant to the Cowt's decision in the Egyptian Goddess case, in determining whcthe a design patent is infringed requires the fact-tinder lo "compare the patented and accused designs to determine whether the accused design is substantially similar in appearance to the patented design. b1 making this determination, courts utilize the 'ordinary observer' test: [l] f, in the eye or an orclinary observer, giving such attention as a purchaser usually gives, two designs are substantia.lly the same, if the resemblance is such as to deceive such an observer, inducing him to
16
purchase one supposing it to be the other, the first one patented is infringed by the other. Egyptian Goddess, 543 F.3d at 670 quoNng Gorham Co. v. White, 8 1 U.S. 511, 528 ( 1871)); see
also L.A. Gear, 988 F .2d at 11 24 ("Design patent infringement requires a showing that the
accused design is substantially the same as the claimed design. The criterion is deception of the ordinary observer, such that one design would be confused with the other."); Crocs, lnc. v. International Trade Comm 'n, 598 F .3d 1294, 1303 (Fed. Cir. 20 10) (infringement is __ would be deceived into believing that the accused demonstrated where "an ord inary observer _ product is the same as the patented design'') citing Egyptian Goddess, 543 F.3d at 681. Applying the Egyptian Goddess standard to the Kimber matter and observing the designs he accused below, it is Kimber's position that an ord inary observer would conclude that L products are similar enough to create market confusion. And, in fact, Bradshaw has created such confusion as evidenced by Chef Central's response to Kimber' s inquiry about can ying its Batter Babies line of products.
Kimber's Patented Design
Bradshaw Batter Separator
17
State whether Kimber has ever purchased a product that competes with a Kimber prodllct, and if so, for each such purchase, identifY which competitor' s products was purchased, the date of purchase, the associated Kimber product, the Kimber employee that purchased the competitor's product, and the purpose for the purchase of the com petitor' s product.
ANSWER:
In 2012, Kimber' s
President~
Robert Reiser, purchased the Accused Product in order to
compare it to its patented design and to determine whether Defendant infringed upon the patent in suj t. ln 2013, Kimber' s President, Robert Reiser, purchased a Wi lton Two-Tone Cupcake Pan Set, to compare the quality of Wilton's product to Kjmber's products.
INTERROGATORY N0. 18:
For each Accused Product, identify, by either narratjve or by drawing, the location of the following features on the Accused Product, labeled A through [ below:
ANSWER:
18
With respect to Interrogatory No. 18, as previously stated, under the '1 ordinary observer" test: [T] f. in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, it to be the ot her, the first one patented is infringed by inducing him to purchase one supposing . the other. Egyptian Goddess, 543 F.3d at 670 quoting Gorham Co. v. White, 81 U.S. 511, 528 (187 1)); see also L.A. Gear, 988 F .2d at 1124 ("Design patent infringement requires a showing that the accused design is substantially the same as the claimed design. The criterion is deception of the ordinary observer, such that one design would be confused with the other."); Crocs. Inc. v. International Trade Comm'n, 598 F.3d 1294, 1303 (Fed. Cir. 20 10) (infringement is demonsbated where "an ordinary observer ... would be deceived into believing that the accused product is the sam e as the patented design") citing Egyptian Goddess, 543 F .3d at 681. Thus, the t'elevant inquiry in thi s matter is whether the Accused Product is substantially similar in appearance to Kimber's patented design such that it would deceive an ordinary observer. As depicted below, an ordinary observer would be confused by Kimber's patented design when compared to De fendant's Accused Product: Kimber's Patented Design Bradshaw Batter Separator
19
The analysis requested by Defendant in the foregoing i11terrogatory has been rejected by the Court in Egyptian Goddess and by numerous other Courts, including in Gorham v. White, 81
U.S. 14 (1871); Crocs. Jnc. v. International Trade Comm'n, 598 F.3d 1294 (Fed. Cir. 2010);
Victor Stanley. lnc. v. Creative Pipe, lnc .. 2011 U.S. Dist. LEXIS 112846 (D.Md. September 30.
20 II); Apple. Inc. v. Samsung Elecs. Co., 20 12 U.S. Dist. LEXJS I05125, 32-33 (N.D. Cal. July 27,2012)
Respectfully Submitted,
I N. d (#0 ~0571) (Trial Allomey) ourtney J. Miller(# 070450) David M. Marcus (#0087144) McNees Wallace & Nurick LLC
n
21 East State Street, 17'" Floor Colwnbus, Ohio 43215 Telephone: (6 14) 469-8000
Fax: (614) 469-4653
slillard@mwncrnh.com cmiller@mwncmh.com dmarcus@mwncmh.com

Allorneysfor Kimber Cakeware, LLC
20
CERTIFICATE OF SERVICE
I hereby cet1ify that a copy of the foregoing Plaintiff's Responses to Defendant's First Set
of Interrogatories was served upon the below-listed counsel via regular U.S. Mail and e-mail on
tbis k~ay of December, 20 13:

Phillip G. Eckenrode HAHN LOESER & PARKS, LLP 65 East State Street, Suite 1400 Columbus, Ohio 43215 peckenrode@hahnlaw.com R. Eric Gaum HAHN LOESER & PARKS, LLP 200 Public Square, Suite 2800 Cleveland, Ohio 441 l4 regaum@hahlaw.com OF COUNSEL: Robert J. Kenney BIRCH, STEWART, KOLASCH & BIRCH, LLP 811 0 Gatehouse Road, Suite I OOE Falls Church, Virginia 22042 rjk@bskb.com mailroom@bskb.com Michael B. Marion BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehousc Road, Suite lOOE Falls Church, Virginia 22042 rnbm@bskb.com mailroom@bskb.corn A'Yl'ORNEYS FOR DEFENDANT BRADSHAW TNTERNATTONAL, TNC.
21
VERIFICATION
Now comes RobertS. Reiser, President and Member of Kimber Cakeware, LLC, and deposes and states tha1 he is authorized to answer the foregoing lnlen-ogatories and Requests for Production of Documenr, that he has read the answers and. responses, and further, that the answers contained herein are complete, tn&e, and con-ect as he verily believes.
-....;:::: :'" ...
- - 2 ""\
-~~ Ide ~.:-=.

ROBERTS. REISER
-.~-~-.,-~
--.?
Case: 2:13-cv-00185-ALM-NMK Doc #: 24-2 Filed: 02/05/14 Page: 2 of 6 PAGEID #: 224 111111 1111111111111111111111111111111111111111111111111111111111111
USOOD6713 76S
c12)
United States Design Patent

Reiser
BATTER SEPARATOR
Inventor: Term:
(10) (45)
Patent No.: Date of Patent:

A * B1 * S * B2 * B2 * 9/1995 9/2001 6/2009 212010 6/2012
US D671,376 S
** Nov. 27, 2012

Makridis ......................... 30/315 Khan ............................ 426/523 Collinson ...................... D7 /409 Morito eta!. ................ 99/450.7 Klein ............................ 220/533
(54) (76) (**) (21) (22) (51) (52) (58)
Robert S. Reiser, Hilliard, OH (US) 14 Years
5,446,965 6,287,619 D593,363 7,654,195 8,197,116
* cited by examiner
Appl. No.: 29/388,837 Filed:
Apr. 1, 2011
Primary Examiner- Terry Wallace (74) Attorney, Agent, or Firm- Ronald J. Koch
CLAIM (57) The ornamental design for a batter separator, as shown and described. DESCRIPTION
FIG. 1 depicts a front view. FIG. 2 depicts a rear view. FIG. 3 depicts a side view with the front facing leftward; and, FIG. 4 depicts a top view with the front facing downward. An essentially planar body member having a distinctive outline.
LOC (9) Cl. .................................................. 07-04 U.S. Cl. ........................................................ D7/669 Field of Classification Search ................... D7/669, D7/368, 409; 126/373.1; 426/523; 425/289; 220/533; 249/117, 171,203, 128-132, DIG. 1; 99/422, 426, DIG. 15 See application file for complete search history. References Cited
U.S. PATENT DOCUMENTS
2,081,078 2,327,988 4,040,539 5,074,777 A A A A
(56)
* * * *
5/1937 8/1943 8/1977 12/1991
Watson 126/373.1 Bassett ......................... 249/131 Patterson ...................... 220/526 Garner .......................... 425/289
1 Claim, 4 Drawing Sheets
U.S. Patent
Nov. 27, 2012
Sheet 1 of 4
US D671,376 S
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U.S. Patent
Nov. 27, 2012
Sheet 2 of 4
US D671,376 S
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Nov. 27, 2012
Sheet 3 of 4
US D671,376 S
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Nov. 27, 2012
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Tinplate cookie cutters should not be immersed in water or put into the dishwasher. Clean by wiping with a damp cloth. If required to wash, dry immediately.
PLEASE NOTE: Individual Metal Cookie Cutter sizes listed here are approximated to the nearest inch. the measurements are for the largest area and are included as a guideline only. AUD $ 2.50 Including GST
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Chocolate Moulds - Inspired By Chocolate

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Case: 2:13-cv-00185-ALM-NMK Doc #: 24-4 Filed: 02/05/14 Page: 2 of 5 PAGEID #: 234 .111111111111111111111111111111111111111111111111111111111111111111111111111
United States Patent

Viggiano
[54] [76]
[**]
USOOD359153S
[191
[11]
Patent Number: Date of Patent:
Des. 359,153
[45]
** Jun. 13, 1995
MUFFIN TOP Inventor: Term: Bernard J. Viggiano, 4494 Deer Ridge Rd., Danville, Calif. 94541 14 Years
OTHER PUBLICATIONS "Joy of Cooking", 1975. P. 630. Muffins on top left of page.
[21] [22] [52] [58] [56)
Appl. No.: 27,611 Filed: Aug. 25, 1994 U.S. Cl...................................................... D1/102 Field of Search ................ D1/102, 104, 125, 128, D1!130, 199; 426/91, 104 References Cited U.S. PATENT DOCUMENTS
Primary Examiner-A. Hugo Word Assistant Examiner-Pamela Burgess Attorney, Agent, or Firm-Michael A. Glenn
CLAIM The ornamental design for a muffin top, as shown and described.
[57] DESCRIPTION FIG. 1 is a front elevational view of a muffin top showing my new design; FIG. 2 is a left side elevational view thereof; FIG. 3 is a bottom plan view thereof; FIG. 4 is a rear elevational view thereof; FIG. 5 is a right side elevational view thereof; FIG. 6 is a top plan view thereof; and, FIG. 7 is a front perspective view thereof.
D. 194,577 2/1963 Herman ........................... Dl/104 X 1,593,858 7/1926 Venable ........................... Dl/102 X 4,139,644 2/1979 Stephenson ..................... Dl/102 X
FOREIGN PATENT DOCUMENTS

638064 2/1928 France .................................. Dl/102
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DeLeo
(IO)
(45)

S * 2!2000 S * 5!200 1 S 8/2003 B1 5/2005 S * 6/2005 S * 5/2006 4/2007 S A1 12/2004
US D601,379 S
**
Oct. 6, 2009
(54) CUPCAKE HOLDER (75) Inventor:
Anthony M. De Leo, Comstock Park, MI (US)
(73) Assignee: Dart Industries Inc., Orlando, FL (US) (**) Term:
14 Years
D420,440 D442,834 D478,785 6,896.140 D506,351 D521.872 D540.663 2004/0251162
El-Assir .................... D23/367 Perez .......................... D7 /628 Rorke et al. Perry Scholze et a!. ............... D7 /360 Wu ............................. D9/643 Tanner McGinnis et al.
OTHER PUBLICATIONS (21) Appl. No.: 29/312,606 (22) (51) (52) (58) Filed:
Nov. 3, 2008
Cup-A-Cake LLC; Cup-A-Cake cupcake container; 2008 (two pages taken from www.cupacake.com website).
LOC (9) Cl . .................................................. 07-02 U.S. Cl. ....................................................... D7/354 Field of Classification Search .......... Dl/101-105, Dl/116-118, 122; D7/323, 354-361,400, D7/402, 511,515,523,531,554.1-554.2, D7/565-566, 628, 667; D9/428-429, 617, D9/643; D23/367; D25/7; 220/671-673; 4261115 See application file for complete search history. References Cited
2.588.957 D174,352 D200,806 3,292,840 D229.924 4,273,249 D287,336 4,795,033 D322,402 D398,135 D404,535 5,858,428 A S 3/1952 3/1955 4/1965 12/1966 111974 6/1981 12/1986 111989 12/1991 9/1998 111999 111999 Brown Schaef Pava Schmidt Brown .. ........ ...... ...... .. .. D25/7 Florian Roehrig Duffy Budzbanowski ............. D9/428 BiniaJis ....................... Dl/101 Biniaris ....................... Dl/101 Truscello eta!. ............ 426/115
* cited by examiner
Primary Examiner~Joel Sincavage Assistant Examiner~Rick"Y Pham (74) Attorney, Agent, or Firm~JolmA. Doninger
(57)
CLAIM
The ornamental design for a cupcake holder, as shown and described.
(56)
DESCRIPTION FIG. 1 is a top, side and front perspective view of a cupcake holder showing my new design; FIG. 2 is a front elevation view thereof;
FIG. 3 is a rear elevation view thereof; FIG. 4 is a right side elevation view thereof; FIG. 5 is a left side elevation view thereof; FIG. 6 is a top plan view thereof; FIG. 7 is a bottom plan view thereof; and, FIG. 8 is a bottom, side and rear perspective view thereof.
A S A S A
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* *
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Oct. 6, 2009
Sheet 4 of 5
US D601,379 S
FIG. 6
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US D601,379 S
U.S. Patent
Oct. 6, 2009
Sheet 5 of 5
FIG. 8
BRADSHAW000064
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(12)
11111111
USOOD633654S
11111111111111111111111111111
11111111111

Berkete
(10) (45)
US D633,654 S
**
Mar. 1, 2011
(54) CUPCAKE-SHAPED CONTAINER FOR HOLDING LIP-GLOSS OR THE LIKE (76) Inventor: (**) Term:
Carole Berkete, North Hollywood, CA (US) 14 Years
1999, Biotherm Societe Anonyme Monegasque, "Le Neptune", Avenue Prince Hereditaire Albert, MC-98-000, Monaco, 2 pages. The Cupcakes Club, Website: www.thecupcakesclub.com/blog/commtmity/cupcakes-for-your-lips giveaway. First found on the internet Jan. 10, 2010 4:02pm PST, 2 pages.
* cited by examiner
Primary Examiner-Jennifer Rivard (74) Attorney, Agent, or Firm-George P. White
(21) Appl. No.: 29/355,039 (22) Filed:

(51) (52) (58)
Feb.2,2010
(57)
CLAIM
LOC (9) Cl. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. 28-03 U.S. Cl. ........................... D28/79; D28/87; D9/643 Field of Classification Search .................. D28/76, D28/79, 82, 85~90; 132/286, 293~307; D9/643; Dl/101, 118, 124, 129; D7/354; 206/581, 206/823 See application file for complete search history. References Cited
S * S * S * S * S S * S S * S S S S S * AI *
The ornamental design for a cupcake-shaped container, for holding lip-gloss or the like, substantially as shown and described.
DESCRIPTION
FIG. 1 is an exploded, perspective view showing my new design for a lip-gloss container with a cap portion removed from a base portion; FIG. 2 is a perspective view thereof; FIG. 3 is a specific side elevational view thereof; FIG. 4 is a side elevational view thereof, with the container turned 90-degrees clockwise from the position of FIG. 3; FIG. 5 is a side elevation view of the side opposite to that of FIG. 4 thereof; FIG. 6 is a side elevation view of the side opposite to that of FIG. 3 thereof; FIG. 7 is a top plan view thereof; and, FIG. 8 is a bottom view thereof. The three oblique, parallel diagonal shade lines used on the base represent the base's translucent appearance and the circular regions of the cap represent the appearance of rhinestones.
(56)
D242,297 D276,087 D398,135 D404,535 D440,016 D472,019 D480,269 D536,137 D586,175 D594,285 D600.496 D601,379 D604J17 2002/0159820
1111976 10/1984 9/1998 111999 4/2001 3/2003 10/2003 1/2007 212009 612009 9/2009 10/2009 1112009 10/2002
Ortega ......................... Dl/101 Kotyuk, Jr. .................. D28/79 Biniaris ....................... Dl/101 Biniaris ....................... Dl/101 Thmpe Mmata ........................ D28/91 Currier Gill ............................. D28/79 Frank Merey Fernandes DeLeo Braidotti ...................... D9/644 Louis et al .................. 4011129
OTHER PUBLICATIONS
WIPO Intellectual Property Digital Library, Jar for cosmetic products, Registration No. DM/048388, Int'l Registration date Jul. 7,
BRADSHAW000088
U.S. Patent
Mar. 1, 2011
Sheet 1 of 4
US D633,654 S
Fig. 1
BRADSHAW000089
U.S. Patent
Mar. 1, 2011
Sheet 2 of 4
US D633,654 S
Fig. 3
Fig. 4
BRADSHAW000090
U.S. Patent
Mar. 1, 2011
Sheet 3 of 4
US D633,654 S
Fig. 5
Fig. 6
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U.S. Patent
Mar. 1, 2011
Sheet 4 of 4
US D633,654 S
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IIIIII
(12)
11111111
USOOD616260S
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11111111111

Facey et al.
(IO) (45)

* *
US D616,260 S
**
May 25, 2010
(54) CUPCAKE MOLD (76) Inventors: Jeanette Facey, 37 Briar Patch Rd., Osterville, M.A (US) 02655; Mark Facey, 37 Briar Patch Rd., Osterville, MA (US) 02655 (**) Term:
D521,872 S D527,520 S
5/2006 Wu ............................. D9/643 9/2006 Green ...................... D3/271.1
* cited by examiner
Primary Examiner~Terry A Wallace (7 4) Attorney, Agent, or Firm~Leason Ellis LLP

(57)
14 Years
CLAIM
(21) Appl. No.: 29/341,233 (22) Filed:
The ornamental design for a cupcake mold, as shown and described.
Jul. 31, 2009 DESCRIPTION FIG. 1 is a top plan view of a cupcake mold in a closed position showing my new design;
FIG. 2 is a left side plan view thereof, the right side view being a mirror image; FIG. 3 is a side plan view shown rotated ninety degrees about a central vertical axis as compared to the view of FIG. 2; FIG. 4 is a bottom plan view thereof; FIG. 5 is a perspective view showing an interior of the cupcake mold in a partially-opened position; and, FIG. 6 is a perspective view showing an exterior of the cupcake mold in a partially-opened position. The broken lines of FIGS. 2-6 are for illustrative purposes only to show an exemplary hinge and form no part of the claimed design.
(51) LOC (9) Cl. .................................................. 07-07 (52) U.S. Cl. ....................................................... D7/675 (58) Field of Classification Search .......... D7/672-677, D7/628, 606, 604, 610; D9/643; 249/119, 249/121, 117, 170, 58,141; 425/DIG. 57; 426/306; Dl/101, 102, 105, 106, 122, 199 See application file for complete search history. (56)
References Cited
928,162 2,392,561 D215,113 3,680,828 D226,530 D268,037 D325,112 6,896,140 A A S A S S S B1
* * * * * * * *
7/1909 1/1946 9/1969 8/1972 3/1973 2/1983 4/1992 5/2005
Stewart ...................... 249/170 Weber, Jr ..................... 249/58 Rasmusson .................. D7/675 Swett ......................... 249/134 Caras so ....................... D7 /672 Wiseltier eta!. ........... D21/472 Thompson ................... Dl/118 Perry ......................... 206/551
BRADSHAW000085
U.S. Patent
May 25, 2010
Sheet 1 of 2
US D616,260 S
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Fig. l
Fig. 2
Fig. 3
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U.S. Patent
May 25,2010
Sheet 2 of2
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Fig. 5
Fig. 6
BRADSHAW000087
IIIIII
c12)
11111111
USOOD649905S
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11111111111

Gulbinski
NOVELTY CONTAINER
Inventor:
(IO)
(45)

s s s s s s s s s s
* * * * * * * * * *
10/2005 5/2006 9/2006 412009 612009 10/2009 11/2009 3/2010 5/2010 3/2011
US D649,905 S
**
Dec. 6, 2011
(54) (75)
Eva Gulbinski, Mississauga (CA)
(73) Assignee: Giftcraft Ltd., Brampton (CA) (**) Term:
14 Years
(21) Appl. No.: 29/350,401 (22) (30) Filed:
D510,960 D521,872 D527,520 D590,524 D594,285 D601,379 D604,117 D610,864 D616,260 D633,654
............. D211402 Choi .. ...... D9/643 Wu .... ............ D3/271.1 Green ................. D2617 Gue ... ...... D7/610 Merey. .. D7/354 DeLeo Braidotti .. .................. .. D7/628 Whitcombe ... D7/352 Facey eta!. ................. .. D7/675 Berkete .... .................. .. D28/79
* cited by examiner
Primary Examiner Holly Baynham Assistant Examiner Michelle E Wilson (7 4) Attorney, Agent, or Firm -Birch, Stewart, Kolasch & Birch, LLP
(57) CLAIM The ornamental design for a novelty container, as shown and described.
Nov.16, 2009 Foreign Application Priority Data

(CA) ........................................ 131509
Jul. 22, 2009 (51) (52) (58)
LOC (9) Cl . .................................................. 11-02 U.S. Cl. ...................................................... Dll/157 Field of Classification Search ................. Dll/157, Dll/158, 131, 133, 134; D28/76, 79, 8, D28/85-90; 132/286, 293-307; D9/643; Dl/101, 118, 124, 129; D7/354; 206/581, 206/823 See application file for complete search history. References Cited
D279,280 D398,135 D404,535 D467,362 S S S S
DESCRIPTION
FIG. FIG. FIG. FIG. FIG. FIG. FIG. FIG. 1 is a top perspective view of the novelty container; 2 is a front view thereof; 3 is a back view thereof; 4 is a side view thereof; 5 is an opposing side view thereof; 6 is a top view thereof; 7 is a bottom view thereof; and, 8 is a front perspective view thereof.
(56)
* * * *
6/1985 9/1998 111999 12/2002
Resnick ....................... Dll/146 Biniaris ......................... Dl/101 Biniaris ....... . ... Dl/101 Gue ................................. D26!7
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Dec. 6, 2011
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IIIIII
(12)
11111111
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11111111111

Tristram
(IO) (45)
US D610,944 S
**
Mar. 2, 2010
(54) MA.LE FIGURINE WITH A MUFFIN TORSO AND HEAD (76) Inventor: (**) Term:
D502,227 S * 2003/0092354 AI*
2!2005 Dilts eta!. ................. D21!621 5!2003 Wexler ....................... 446/369
Tris Tristram, 104 Route 521, Newton, NJ (US) 07860 14 Years
OTHER PUBLICATIONS
Mr. Peanut-Trademm'k Registration No. 0799958, Dec. 7, 1965, First used in commercce Jtm. 1916, Standmd Brands Incorporated Corporation Delawme, Trademmk Electronic Service System (TESS), available at www.uspto.gov. * Morning Glory Muffins-My recipes.com, Pulled from the web-Aug. 27, 2009, http://find.myrecipes.com/recipes/ recipefinder.dyn?action=displayRecipe&recipe_id= 1634 764. *
(21) Appl. No.: 29/309,009 (22) Filed:
Jun.11,2008 Related U.S. Application Data
* cited by examiner
Primary Examiner-Janice E Seeger Assistant Examiner-Mary Ann Calabrese (7 4) Attorney, Agent, or Firm-Thomas J. Germinario
(63) Continuation-in-part of application No. 29/289,687, filed on Jul. 30, 2007, now abandoned. (51) LOC (9) Cl . .................................................. 11-02 (52) U.S. Cl. ..................................................... D11/160 (58) Field of Classification Search .... .... .. ........ D20/1 0, D20112, 29, 30-32, 99; 40/407, 411, 415, 40/416, 418-420, 538, 584; D21/621, 629; Dll/160, 161; D6/303; 223/66, 120; 446/46, 446/199,268,353,369,372,385 See application file for complete search history. (56)
(57)
CLAIM
The ornamental design for a male figurine with a muffin torso and head, as shown and described.
References Cited
2,105,904 D144,381 D146J26 D196J24 D250,758 4,630,762 5.215,493 D337,664 5,989,095 6,390,879 6,390,882 A S S S S A A S A B1 B1 * * 1!1938 4/1946 * 12/1946 * 8/1963 * 1/1979 * 12/1986 * 6/1993 * 7/1993 * 1111999 Dale ........................... 401407 Holmes ....................... D20/31 Bergman ................... Dll/160 Argiro ....................... D21!629 Braddock .................. D11/160 Stringer ....................... 223/66 Zgrodek eta!. ............. 446/372 Perry .......................... D6!303 Wotton ....................... 446/385 512002 Spector ....................... 446/46 5/2002 Chang ........................ 446/268
DESCRIPTION FIG. 1 is a front perspective view of a male figurine with a muffin torso and head embodying my design. FIG. 2 is a rear perspective view of a male figurine with a muffin torso and head embodying my design. FIG. 3 is a left side perspective view of a male figurine with a muffin torso and head embodying my design.
FIG. 4 is a right side perspective view of a male figurine with a muffin torso and head embodying my design. FIG. 5 is a top plan view of a male figurine with a muffin torso and head embodying my design; and, FIG. 6 is a bottom plan view of a male figurine with a muffin torso and head embodying my design.
BRADSHAW000078
US D610,944 S
U.S. Patent
Mar. 2, 2010
Sheet 1 of 6
FIG. 1
BRADSHAW000079
U.S. Patent
Mar.2,2010
Sheet 2 of 6
US D610,944 S
FIG. 2
BRADSHAW000080
U.S. Patent
Mar. 2, 2010
Sheet 3 of 6
US D610,944 S
FIG. 3
BRADSHAW000081
US D610,944 S
U.S. Patent
Mar. 2, 2010
Sheet 4 of 6
FIG. 4
BRADSHAW000082
U.S. Patent
Mar. 2, 2010
Sheet 5 of6
US D610,944 S
FIG. 5
BRADSHAW000083
U.S. Patent
Mar. 2, 2010
Sheet 6 of 6
US D610,944 S
FIG. 6
BRADSHAW000084
IIIIII
(12)
11111111
11111111111111111111111111111 USOOD590524S
11111111111

Gue
(IO)
(45)

* *
US D590,524 S
** Apr.14, 2009
(54) ICE-CREAM CANDLE (76) Inventor:

(**) Term:
D510,960 S D527,520 S
10/2005 Choi ......................... D21/402 9/2006 Green ...................... D3/271.1
Jimmy J Gue, P.O. Box 30536, Seattle, WA (US) 98113

14 Years
* cited by examiner
Primary Examiner-T. Chase Nelson Assistant Examiner-Ania K Dworzecka
(21) Appl. No.: 29/271,930 (22) Filed:

Jan.30,2007
(57)
CLAIM
(51) LOC (9) Cl. .... ... ... ... .. ... ... ... ... ... .. ... ... ... ... .. ... . 26-04 (52) U.S. Cl. ......................................................... D26/7 (58) Field of Classification Search .............. D26/6~23; 431/288, 125, 126,292, 289; Dll/131, 131.1, Dll/157, 81 See application file for complete search history. (56)
References Cited U.S. PATENT DOCUMENTS
D231,135 D246.509 D268,059 D279,280 D395,230 D431,306 D467,362 D508,217 S S S S S S S S
The ornamental design for an ice-cream candle, as shown and described. DESCRIPTION FIG. 1 is a front elevational view of a ice-cream candle showing my new design; FIG. 2 is a rear elevational view; FIG. 3 is a top plan view; FIG. 4 is a bottom plan view; FIG. 5 is a right side elevational view; and, FIG. 6 is a left side elevational view. The drawings are lined on the candle for color and on the wick for the surface of the wick respectively. The portions of FIG. 4 shown in broken lines form no part of the claimed design. 1 Claim, 2 Drawing Sheets
* * * * * * * *
4/1974 1111977 2/1983 6/1985 6/1998 9/2000 12/2002 8/2005
Marcum ....................... D2617 Hytken ........................ D9/643 Kracke ......................... D34/4 Resnick ..................... Dl1!146 Slater .......................... D9/643 Tsai ............................. D26/5 Gue ............................. D2617 Graves et aL ................ Dll/81
0
BRADSHAW000052
U.S. Patent
Apr. 14, 2009
Sheet 1 of2
US D590,524 S
FIG. 1
FIG. 2
FIG. 3
FIG. 4
BRADSHAW000053
U.S. Patent
Apr. 14, 2009
Sheet 2 of 2
US D590,524 S
FIG. 5
FIG. 6
BRADSHAW000054
IN THE UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF OHIO EASTERN DIVISION Kimber Cakeware, LLC Plaintiff, vs. Bradshaw International, Inc. Defendant : : : : : : : : :
Case No. 2:13-cv-0185 Judge Marbley Magistrate Judge King
PLAINTIFF KIMBER CAKEWARE, LLCS MEMORANDUM IN OPPOSITION TO DEFENDANTS MOTION FOR RULE 11 SANCTIONS, MEMORANDUM IN SUPPORT OF COSTS UNDER 28 U.S.C. 1927, AND MEMORANDUM IN OPPOSITION TO DEFENDANTS MOTION FOR LEAVE TO FILE EXHIBITS UNDER SEAL NOW COMES Plaintiff Kimber Cakeware, LLC (hereinafter Plaintiff or Kimber), by and through counsel, pursuant to Fed. Civ. R. P. 11 and 28 U.S.C. 1927, and hereby opposes Defendant Bradshaw International, Inc.s (hereinafter Defendant or Bradshaw) motion for sanctions filed on February 5, 2014. As articulated more fully in the accompanying
memorandum in support, the arguments raised in Bradshaws motion for sanctions are so lacking in any reasonable legal basis and are otherwise frivolous on their face that the motion could have only been brought as a vexatious litigation tactic or other improper purpose. Accordingly, Kimber asks the Court to award it its reasonable attorneys fees under 28 U.S.C. 1927. In addition, Plaintiff opposes Defendants motion to file exhibits 2 and 12 in support of its motion for sanctions under seal. As fully briefed below, Bradshaw devotes multiple portions of its brief disparaging Kimbers motives in making a previous good faith settlement offer to Bradshaw in its public filing of its motion for sanctions. Bradshaw then then has the temerity to ask the Court to seal the very record that refutes, instead of supports its allegation. Under such 1
circumstances, Kimber asserts that if Defendant is allowed to use settlement and mediation documents in prohibition of Fed. Evidence R. 408, then it is not entitled to have the record sealed on equitable grounds. Instead, Kimber asks the Court to deny the motion so that Bradshaws spurious allegations can be cleansed by the light of day, as the exhibits state Kimbers motivation to protect its patent. Respectfully Submitted, McNEES WALLACE & NURICK LLC _/s/ Samuel N. Lillard______________________ Samuel N. Lillard (#0040571) (Trial Attorney) Courtney J. Miller (#0070450) David M. Marcus (#0087144) McNees Wallace & Nurick LLC 21 East State Street, 17th Floor Columbus, Ohio 43215 Telephone: (614) 469-8000 Fax: (614) 469-4653 slillard@mwncmh.com cmiller@mwncmh.com dmarcus@mwncmh.com Attorneys for Kimber Cakeware, LLC
TABLE OF CONTENTS PAGE
TABLE OF AUTHORITIES. MEMORANDUM IN SUPPORT. I. II. III. INTRODUCTION STATEMENT OF RELEVANT FACTS LAW & ARGUMENT A. Legal Standard for Sanctions Pursuant to Rule 11 B. Standard for Award of Costs Under Rule 11 and 28 U.S.C. 1927 C. The Law of Design Patents.. D. There is No Basis in Law for Bradshaws Legal Arguments in Its Motion for Sanctions and It Appears the Motion was Brought Simply to Obstruct the Litigation of Kimbers Nonfrivolous Claims in Violation of 28 U.S.C. 1927... 1. Bradshaws Functionality Analysis Does Not Comport with Well-Settled Case Law and Only Highlights the Frivolity of Bradshaws Motion for Sanctions. None of What Bradshaw Cites as Purported Prior Art Qualifies as Such under the Law and Bradshaw Has Intentionally Manipulated the Purported Prior Art to Serve Its Needs..
ii 1 1 2 6 6
7 8
13
13
2.
18
E. The Court Should Deny Bradshaws Motion for Leave to File Exhibits 2 and 12 in Support of Its Motion for Sanctions Under Seal. IV. V. CONCLUSION CERTIFICATE OF SERVICE i
24 26 27
TABLE OF AUTHORITIES CASES Antonious v. Spalding & Evenflo Cos., 275 F.3d 1066, 1072 (Fed. Cir. 2002) Apple, Inc., v. Samsung Electronics Co., Ltd., 678 F.3d 1314, 1326 (Fed. Cir. 2012) Applied Arts Corp. v. Grand Rapids Metalcraft Corp., 67 F.2d 428 (6th Cir. 1933). Bidasaria v. Central Michigan University, 2012 WL 3077211 (E.D. Mich. 2012).. Bond v. American Medical Assn, 764 F.Supp. 122, 126, FN 3 (N.D. Ill. 1991) Braun Inc. v. Dynamics Corp. of America, 975 F.2d 815, 821 (Fed. Cir. 1992).. Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1286 (Fed. Cir. 2002). Crocs, Inc. v. International Trade Comm'n, 598 F.3d 1294, 1303 (Fed. Cir. 2010). CypressFairbanks Independent School Dist. v. Michael F. by Barry F., 931 F.Supp. 474 (S.D.Tex.1995). . Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008).. Etna Prods. Co. v. Q Mktg. Group, Ltd., No. 03 Civ. 3805(SAS), 2004 U.S. Dist. LEXIS 15323, at *22 (S.D.N.Y. Aug. 4, 2004). FDIC v. Tefken Construction and Installation Co., Inc., 847 F.2d 440, 444 (7th Cir. 1988) Foy v. First Natl Bank, 868 F.2d 251, 258 (7th Cir. 1989) Goodyear Tire & Rubber Co. V. Hercules Tire & Rubber Co., 162 F.3d 1113, 1118 (Fed. Cir. 1998).. PAGE
12, 21
20
11, 19
10
11, 12
8 9,10,11,12,13 14
ii
Gorham v. White, 81 U.S. 511, 528 (1871) Harlyn Sales Corp. Profit Sharing Plan v. Kemper Financial Servs., Inc., 9 F.3d 1263, 1269 (7th Cir. 1993) L.A. Gear, Inc. v. Thom Mcan Shoe Co., 988 F.2d 1117,1124. Lanphere v. 1 Corp., 2012 WL 1965436 (N.D. Ill. 2012). Lemaster v. United States, 891 F.2d 115, 118 (6th Cir. 1989) Microsoft Corp. v. i4i Limited Partnership, 131 S.Ct. 2238 (2011).. Q Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295, 1300-01 (Fed. Cir. 2004).. Riddle v. Egensperger,266 F.3d 542, 553 (6th Cir.2001).. Rockport Co., Inc. v. Peer Stags, Inc., 65 F, Supp.2d 189, 194 n. 3 (S.D.N.Y.1999). Sears, Roebuck & Co. v. Talge, 140 F.2d 395 (8th Cir. 1944).. Specht v. Google, Inc., 805 F.Supp.2d 551 (N.D.Ill.2011). Tahfs v. Proctor, 316 F.3d 584, 595 (6th Cir. 2003). Union Planters Bank v. L & J Dev. Co., 115 F.3d 378, 384 (6th Cir. 1997).. View Engg, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000).. Wing Shing Products Co. Ltd. v. Sunbeam Products, Inc., 665 F.Supp.2d 357, 360 (S.D.N.Y. 2009) Zidell v. Dexter, 262 F.145 (9th Cir. 1920). STATUTES & OTHER AUTHORITIES 35 U.S.C. 282.. 28 U.S.C. 1927
8,9,11,20 7 11, 14 7 6 18 6 8 14 20 8 7 6
10 20
18 1
iii
MEMORANDUM IN SUPPORT I. INTRODUCTION
As should be evident, Bradshaws repeated assertions in its motion for sanctions that Kimbers complaint is legally groundless are based on nothing more than its own self-serving and misguided interpretations of the law on design patent infringement. Most glaring is
Bradshaws absurd assertion that Kimber has somehow engaged in sanctionable conduct by relying on the validity of U.S. Design Patent No. D671,376 (the 376 patent), entitled Batter Separator, which was issued by the U.S. Patent Office on November 27, 2012. Attached hereto as Exhibit 1 is a true and accurate copy of the 376 patent. Also glaring is Bradshaws reliance on a rather contrived analysis of the purported prior art in what appears to be a deliberate attempt to mislead the Court. What makes Bradshaws conduct particularly egregious in this matter is the fact that Kimber sent it a thoroughly-sourced, 8-page, letter on January 21, 2014 prior to its filing of the pending motion for sanctions - explaining in detail the numerous errors contained in the motion for sanctions and making it plainly obvious that its complaint was in full compliance with Rule 11. Attached hereto as Exhibit 2 is a true and accurate copy of Kimbers correspondence to Bradshaw dated January 21, 2014. That Bradshaw proceeded to file its fundamentally flawed motion for sanctions in the face of Kimbers letter of January 21, 2014, coupled with Bradshaws repeated actions to delay the due course of discovery in this action, can only suggest that Bradshaw improperly filed its motion for sanctions in an effort to prematurely litigate the merits of the pending action in order to avoid its discovery obligations1 and/or to make the instant litigation so costly as to prevent Kimber, a much smaller company than Bradshaw, from
Kimbers repeated efforts to obtain overdue discovery from Bradshaw are articulated in its contemporaneously filed motion to defer the time to respond to Bradshaws motion for summary judgment. Based on Bradshaws conduct to date, Kimber also anticipates that it will be required to file a motion to compel discovery in this matter.
1
exercising its rights protected by the 376 patent. Further evidence of this improper strategy can be found in the fact that Defendant is represented by knowledgeable counsel who should have undoubtedly recognized that its motion for sanctions presents wholly frivolous arguments. As the record reflects, Kimber has made good faith efforts to resolve this matter or bring it to trial in an orderly manner, only to be repeatedly stymied by Bradshaws intransigence. Kimber regrets being obliged to further burden the Courts docket, but has little choice other than to seek reimbursement for the costs Kimber is being forced to bear by Bradshaws duplicitous and improper tactics. II. STATEMENT OF RELEVANT FACTS
The relevant facts in this matter are fully articulated in Plaintiff Kimbers complaint and will be proven at trial. Kimber is a small, but growing, bakeware manufacturer located in Hilliard, Ohio. The company has been in the business of making and selling baking products since 2010 specifically creating and marketing a line of cake batter separators under the name Batter Daddies and a line of cupcake batter separators under the name Batter Babies. These products allow purchasers to make two-flavored or two-colored cakes or cupcakes. As pictured below, Batter Babies cupcake batter separator has a unique ornamental design in the shape of a cupcake:
Relevant to this action, in April of 2011, Kimbers founder and President, Robert Reiser (Mr. Reiser), applied for a design patent from the U.S. Patent Office for the Batter Babies design. On November 27, 2012, Kimbers design patent was approved and designated as the 376 patent. Mr. Reiser subsequently assigned the patent to Kimber. Since bringing its Batter Babies line of products to the market, Kimber has experienced growing success and has received accolades and praise in the bakeware industry. Defendant Bradshaw is a large Delaware corporation with its principal place of business in Rancho Cucamonga, California. Bradshaw operates under a number of different trade names, including Good Cook, Touch, Betty Crocker, Bonny, Profreshanols, Oneida, Bialetti, Buttler, Dawn, Mr. Clean, and Black & Decker. In 2009, prior to the formation of Kimber, Mr. Reiser reached out to Bradshaw to determine whether it might have some interest in partnering to manufacture and distribute the Batter Daddy cake separator. Mr. Reiser recalls that a representative of Bradshaw indicated it was not interested in such a partnership due to the still declining economy and further indicated it was not developing any new products at that time. This would not be the last interaction Kimber and Bradshaw would have, however. In particular, it is not disputed that on Friday, December 16, 2011, Bradshaws Senior Product Manager, Keri Anderson (Ms. Anderson), ordered a set of Batter Babies from Kimber to be shipped to Bradshaws headquarters in California. Kimber subsequently completed the order request and shipped the package of Batter Babies with the designation Patent Pending to Ms. Anderson at Bradshaws facilities. On Saturday, December 17, 2011, Mr. Reiser contacted Ms. Anderson by email to inquire as to Bradshaws interest in the Batter Babies product, and to offer to work with Bradshaw as a distributor for the Batter Babies and/or Batter Daddy product lines.
Ms. Anderson called Kimber at the end of 2011 and spoke briefly with Kimberly M. Reiser, member and vice president of Kimber, and indicated that she would call again to speak with Mr. Reiser in more detail after the New Year holiday, but Ms. Anderson did not call again. It is believed Bradshaw first introduced its competing cupcake batter separator under the name Sweet Creations by Good Cook at an international housewares show in March 2012 approximately three months after Ms. Anderson purchased a set of Kimbers Batter Babies. However, Kimber did not become aware that Bradshaw was selling a competing product to its Batter Babies with a design that was substantially the same until October 2012. Bradshaws competing product design was so similar that Kimber began to encounter market confusion when marketing its Batter Babies product. Specifically, when Kimber inquired as to whether Chef Central, a company that sells cookware, bakeware and other assorted accessories, would be interested in carrying Batter Babies for sale, a Chef Central representative responded that Chef was already carry[ing] [Kimbers] product through Bradshaw/Good Cook. Based on the above facts, it is Kimbers belief that Bradshaw maliciously copied its product from Kimbers patented design. Images of Kimbers patented design, its Batter Babies cupcake separator and Bradshaws competing cupcake batter separator are found below:
Kimbers Patented Design Kimbers Batter Babies Bradshaw Batter Separator
Kimber recognizes that it is not an uncommon occurrence for competing companies to observe product trends in the marketplace and then attempt to replicate those trends in order to syphon away market share. When a company infringes upon another businesss patent, it results in a disincentive for creativity and ingenuity and has the consequence of robbing the patent holder of the fruits of its labor. Unfortunately, Kimber is aware that Bradshaw has a history of this type of corporate bad behavior with other companies. In particular, on July 25, 2012, District Judge Paul G. Gardephe granted Hutzler Manufacturing Company a preliminary injunction against Bradshaw for infringement of their design patents for garlic and onion storage containers:
In the relevant portion of the courts decision, Judge Gardephe compared Hutzler's and Bradshaw's products, stripped of differences of color, sheen and construction materials, and found the products' design so similar that a consumer was likely to buy Bradshaw's lower-priced products believing them to be Hutzler's products. Hutzler Mfg. Co. v. Bradshaw Intl., No. 11 Civ. 7211 (PGG), 2012 U.S. Dist. LEXIS 103864 (S.D.N.Y. July 24, 2012). Applying this simple and straightforward analysis to Bradshaws similar infringement of Kimbers design in this case, it is Kimbers position that a similar conclusion should be reached. 5
III.
LAW & ARGUMENT A. Legal Standard for Sanctions Pursuant to Rule 11
Under Rule 11, by presenting a pleading, written motion, or other paper to the court, an attorney certifies to the best of the persons knowledge, information, and belief, formed after an inquiry reasonable under the circumstances: * * * (1) it is not being presented for an improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation; (2) the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law; [and] (3) the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery In the context of accused design patent infringement, Rule 11 to require[s], at a minimum, that an attorney interpret the asserted patent claims and compare the accused device with those claims before filing a claim alleging infringement. Q Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295, 1300-01 (Fed. Cir. 2004). Further, the attorney must conclude that there is a reasonable basis for a finding of infringement of at least one claim of [the] patent View Engg, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000); see also Union Planters Bank v. L & J Dev. Co., 115 F.3d 378, 384 (6th Cir. 1997) quoting Lemaster v. United States, 891 F.2d 115, 118 (6th Cir. 1989)(In the Sixth Circuit the test for the imposition of Rule 11 sanctions [is] whether the individuals conduct was reasonable under the circumstances.) To satisfy [the objective reasonableness] requirement, there must be some basis in law to support each legal argument in the complaint. A legal argument is unjustified if a reasonable attorney would recognize it as frivolous. Antonious v. Spalding & Evenflo Cos., 275 F.3d 1066, 1072 (Fed.
Cir. 2002). Even where a legal argument raised in a plaintiffs complaint ultimately turns out to be unavailing, it is not sanctionable unless it is determined that it was completely unwarranted by existing law. Tahfs v. Proctor, 316 F.3d 584, 595 (6th Cir. 2003). Rule 11 ordinarily should not be used as a proxy to litigate the merits of a case. If claims lack merit on their face as a matter of law, then a motion to dismiss is appropriate. If a plaintiff does not have enough evidence as a matter of law to prove his claims, that determination is usually made toward the end of the litigation or, at a minimum, after discovery has been completed in the context of a motion for summary judgment. That is true even in patent litigation. Lanphere v. 1 Corp., 2012 WL 1965436 (N.D. Ill. 2012). Moreover, the Sixth Circuit has cautioned against awarding sanctions based on the assertion that a complaint is frivolous before discovery has been completed. Tahfs, 316 F.3d at 594. Further, Rule 11 should not be used as a battleground for satellite controversies where, in effect, the tail would wag the dog, potentially diverting judicial resources from the prompt disposition of the merits of controversies. Id. citing Harlyn Sales Corp. Profit Sharing Plan v. Kemper Financial Servs., Inc., 9 F.3d 1263, 1269 (7th Cir. 1993). To forestall such tactics, a court should apply Rule 11 sanctions only with utmost care and caution. Id. citing FDIC v. Tefken Construction and Installation Co., Inc., 847 F.2d 440, 444 (7th Cir. 1988). B. Standard for Award of Costs Under Rule 11 and 28 U.S.C. 1927 Relevant to Kimbers own request to recoup its costs incurred in having to respond to Bradshaws motion for sanctions, it should be pointed out that filing a frivolous motion for
sanctions is, in itself, sanctionable. Bond v. American Medical Assn, 764 F.Supp. 122, 126, FN 3 (N.D. Ill. 1991); Foy v. First Natl Bank, 868 F.2d 251, 258 (7th Cir. 1989). Likewise, Rule 11, itself, contemplates an award of reasonable expenses, including attorneys fees, incurred by the prevailing party for the motion when warranted. Fed. Civ. R. 11(c)(2).
Additionally, pursuant to 28 U.S.C. 1927, an attorney ... who so multiplies the proceedings in any case unreasonably and vexatiously may be required by the court to satisfy personally the excess costs, expenses, and attorneys' fees reasonably incurred because of such conduct. Sanctions under this section of the Code are appropriate where an attorney is shown to have acted in bad faith, with improper motive, or with reckless disregard of duty owed to the court, and the decision to award attorney fees thereunder is committed to a court's discretion. See CypressFairbanks Independent School Dist. v. Michael F. by Barry F., 931 F.Supp. 474 (S.D.Tex.1995); see also Specht v. Google, Inc., 805 F.Supp.2d 551 (N.D.Ill.2011) Section 1927 does not require a showing of subjective bad faith but, rather, is satisfied when an attorney knows or reasonably should know that a claim pursued is frivolous, or that his or her litigation tactics will needlessly obstruct the litigation of nonfrivolous claims. (Emphasis added.) Riddle v. Egensperger,266 F.3d 542, 553 (6th Cir.2001). No advance service, safe harbor rule applies to a request for sanctions pursuant to 28 U.S.C. 1927. Bidasaria v. Central Michigan University, 2012 WL 3077211 (E.D. Mich. 2012) at *2. C. The Law of Design Patents With regard to the substantive law on design patent infringement, prior to 2008, design patent holders were required to satisfy two separate and distinct tests in order to succeed on a design patent infringement claim. First, the design patent holder had to show that the patented and accused designs appeared substantially similar as a whole to the ordinary observer. This is known as the ordinary observer test which was first adopted by the Supreme Court in Gorham v. White, 81 U.S. 511, 528 (1871). In deciding whether there was substantial similarity, the focus was on the overall impression of the claimed and accused designs. Id. Utilizing this standard, the Supreme Court determined that despite there being noticeable and articulable
differences between the below patented flatware design and the accused product, the accused product infringed on the patented design:
In the decades following Gorham, however, courts, including the Federal Circuit, added the separate points of novelty inquiry to the analysis. Under this test, a patent holder had to also show that the accused design contain[ed] substantially the same points of novelty that distinguished the patented design from the prior art. Goodyear Tire & Rubber Co. V. Hercules Tire & Rubber Co., 162 F.3d 1113, 1118 (Fed. Cir. 1998). Over time, the separate points of novelty test proved unworkable as it was oftentimes extremely difficult to identify points of novelty, particularly in complex designs with multiple prior art references.2 There was also a contradictory tension between the two tests: In tandem, these tests created an odd scenario where courts, on the one hand, viewed infringement as a generalist or ordinary observer when judging overall or substantial similarity, and on the other hand, then focused like an expert on its elements during a point-of-novelty analysis.3 In response, in Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008)(en banc), the Federal Circuit ushered in a sea change to design patent litigation which greatly simplified the
Design Patent Perspective: Prior Art and the Ordinary Observer Test, Part 1 by Robert G. Oake, Jr. at P. 2; http://www.designpatentschool.com/assets/20%20Prior%20Art%20and%20the%20Ordinary%20Observer%20Test %20-%20Part%201%20-%20May%202013.pdf 3 The Origins of American Design Protection 88 Ind. L.J. 40, FN. 252 (2013).
analysis and standard for determining design patent infringement and eliminated the points of novelty test altogether. Id. at 678-79. Following Egyptian Goddess, analysis of a design patent infringement claim involves a two-step streamlined process. First, the court must construe the design patents claim. Hutzler, at *4 citing Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1286 (Fed. Cir. 2002). In construing a design patent claim, the focus is on overall appearance and the visual impression it creates. Id. (Citations omitted.) [W]here 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. (Citations omitted.) [I]n construing design patents, district courts should generally forego verbal descriptions: Given the recognized difficulties entailed in trying to describe a design in words, the preferable course ordinarily will be for a district court not to attempt to construe a design patent claim by providing a detailed verbal description of the claimed design. Egyptian Goddess, 543 F.3d at 679. "[D]esign patents 'typically are claimed as shown in drawings,' and claim construction 'is adapted accordingly.'" Id. '''[A]s a rule the illustration in the drawing views is its own best description.'" Id. Accordingly, courts should generally rely on patent drawings to construe design claims. Wing Shing Products Co. Ltd. v. Sunbeam Products, Inc., 665 F.Supp.2d 357, 360 (S.D.N.Y. 2009). The second step in determining whether a design patent is infringed requires the factfinder to "compare the patented and accused designs to determine whether the accused design is substantially similar in appearance to the patented design. Hutzler, at *5 (citation omitted). In making this determination, courts still utilize the ordinary observer test: [I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are
10
substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. Egyptian Goddess, 543 F.3d at 670 quoting Gorham Co. v. White, 81 U.S. 511, 528 (1871); see also L.A. Gear, Inc. v. Thom Mcan Shoe Co., 988 F.2d 1117,1124 ("Design patent infringement requires a showing that the accused design is substantially the same as the claimed design. The criterion is deception of the ordinary observer, such that one design would be confused with the other."); Crocs, Inc. v. International Trade Comm'n, 598 F.3d 1294, 1303 (Fed. Cir. 2010) (infringement is demonstrated where "an ordinary observer ... would be deceived into believing that the accused product is the same as the patented design") citing Egyptian Goddess, 543 F.3d at 681. In constructing such analysis the patented design is viewed in its entirety, as it is claimed[T]he ultimate question requires determining whether the effect of the whole design [is] substantially the same. Hutzler, at *6 citing L.A. Gear, 988 F.2d at 1125. In determining whether two designs are substantially the same, courts focus on the overall impression given by the claimed design, rather than particular ornamental details or minutiae. Id. There is no requirement that a patent holder provide empirical evidence as to whether ordinary observers would be deceived by the accused devices design in order to establish infringement. Braun Inc. v. Dynamics Corp. of America, 975 F.2d 815, 821 (Fed. Cir. 1992). Rather, a trier of fact, may, as a matter of law, rely exclusively or primarily on a visual comparison of the patented device and accused device in reaching such conclusion. Id. An ordinary observer is not an expert in the field. Id. The ordinary observer is likewise not a patent lawyer who inspects the designs critically to highlight each and every perceivable difference between them. Id. (citations omitted). The ordinary observer is,
11
instead, someone who while not an expert in the product is not entirely ignorant of it, and indeed has some degree of familiarity with it. The ordinary observer thus includes someone who has purchased, or shopped for, a like item in the past. Id. at *6. In addition, the ordinary observer is one who is familiar with the prior art. Egyptian Goddess, at 672. Utilizing this standard, courts have found design infringement in the following circumstances since Egyptian Goddess was decided:
Crocs, Inc. v. International Trade Comm'n, 598 F.3d 1294 (Fed. Cir. 2010)
Victor Stanley, Inc. v. Creative Pipe, Inc., 2011 U.S. Dist. LEXIS 112846 (D.Md. 2011).
Apple, Inc. v. Samsung Elecs. Co., 2012 U.S. Dist. LEXIS 105125, 32-33 (N.D. Cal. 2012) 12
D. There is No Basis in Law for Bradshaws Legal Arguments in Its Motion for Sanctions and It Appears the Motion was Brought Simply to Obstruct the Litigation of Kimbers Nonfrivolous Claims in Violation of 28 U.S.C. 1927. Turning now to Bradshaws motion for sanctions, and with the above standards in mind, a cursory review of the filing reveals that, in large part, it consists of nothing more than an overly-dramatized protestation that Kimber has failed to condense an entire trial into Kimbers complaint, and that Kimber has declined to engage with Bradshaws mistaken view of the law in response to interrogatories. Substantively, Bradshaw makes two rather dubious arguments in support of its motion. First, it contends that the bottom trapezoidal shape of Kimbers patented design is unquestionably functional and, therefore, not protected by its design patent. See Defendants Motion for Sanctions at PP. 11-12. Bradshaws second argument centers on its contention that as a matter of law an ordinary observer could not confuse Bradshaws competing cupcake batter separator for Kimbers patented design in light of prior art and, therefore, it could not be found to infringe on the 376 patent. Id. at PP. 15-17. Ignoring Bradshaws inappropriate and transparent attempt to litigate the merits of this case through a motion for sanctions before the parties have even completed the discovery process, both of Bradshaws arguments are quite easily defeated in light of Egyptian Goddess and other relevant precedent. In fact, Bradshaws arguments are so plainly wrong that one can only presume that the pending motion is brought to hinder the litigation of Kimbers infringement claim. The deficiencies in each of Bradshaws arguments are discussed in turn. 1. Bradshaws Functionality Analysis Does Not Comport with Well-Settled Case Law and Only Highlights the Frivolity of Bradshaws Motion for Sanctions. As articulated, the U.S. Patent Office approved in whole Kimbers design patent for its ornamental, novel and non-obvious cupcake-shaped batter separator design. Despite this fact, 13
Bradshaw claims in its motion for sanction that the entire bottom base of the patented design is functional and, therefore, not protected by the 376 patent. In relevant part, Defendant states of the trapezoidal base: [t]he bottom part must conform to the inverted, truncated cone shape of a muffin/cupcake cup. Any other shape would not permit the batter poured into one half of the muffin cup to be separated from the other half of the muffin cup. Id. at P. 12. (Emphasis in original.) Simply put, such a statement is not true as a matter of fact and as a matter of law and Bradshaw was put on notice that this contention lacked merit in Kimbers January 21, 2014 correspondence related to its threatened motion for sanctions. As Bradshaw was made aware in the Hutzler case in which a preliminary injunction for design patent infringement was granted against the company, [a]n article of manufacture necessarily serves a utilitarian purpose, and the design of a useful article is deemed to be functional, when the appearance of the claimed design is dictated by the use or purpose of the article. Hutzler, at *5-6 citing L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993)(citations omitted). If the particular design is essential to the use of the article, it [cannot] be the subject of a design patent. Id. Stated another way, [i]f the design of a particular feature must appear a certain way, and only that way, in order to perform a particular function, then the feature is functional and not ornamental. Id. citing Etna Prods. Co. v. Q Mktg. Group, Ltd., No. 03 Civ. 3805(SAS), 2004 U.S. Dist. LEXIS 15323, at *22 (S.D.N.Y. Aug. 4, 2004) (citation omitted). Conversely, [w]hen there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental [as opposed to functional] purpose. Id. citing Rockport Co., Inc. v. Peer Stags, Inc., 65 F, Supp.2d 189, 194 n. 3 (S.D.N.Y.1999) quoting L.A. Gear, 988 F.2d at 1123.
14
Here, there are innumerable ways in which batter can be divided in a cupcake tin. For example, rather than a straight line bisecting a cupcake, a batter divider could easily be designed to create a wavy dividing line or a yin-yang pattern. In addition, batter could be separated using a semicircle or half-moon design. In fact, the following are two examples of alternative designs which were found in less than one minute of searching on the Internet:
L: Wilton Two Tone Cupcake Baking Set
R: Mrs. Fields Half NHalf Cupcake Pan
These above examples were specifically cited in Kimbers January 21, 2014 letter to Bradshaw. Below is an additional potential alternative cupcake batter divider design found in a matter of minutes on the Internet:
http://foodfamilyfinds.com
15
Furthermore, a simple square or rectangular design, such as the cracker used below, could also constitute an alternative design:
http://thebravecook.blogspot.com/2013/03/rainbow-cupcakes.html
In essence, Bradshaw has assumed that its own lack of creativity and slavish copying of designs necessitates that other designers must be similarly encumbered. As shown by the above, however, this is not the case. Further, even including a trapezoidal base, innumerable other designs could be contemplated which would create an overall different impression, as is exemplified by the following mock-ups:
16
Also noteworthy, Bradshaws own advertising on its website for its cupcake batter divider reveals that its arguments regarding the trapezoid it identifies for litigation purposes as functional are specious. As can be seen in the promotional picture reproduced below, the Bradshaw product includes a fill line well below the rim of the cupcake pan, which represents the height of the trapezoid that Bradshaw believes is necessary to divide batter. Thus, Bradshaw is arguing in litigation that more of the batter divider is functional that its own advertising substantiates. See Defendants Motion for Sanctions at P. 12. This photograph also clearly reveals as fallacious Bradshaws assertions that the overhang of the cupcake top are dictated by a function of allowing the protected design to rest on the cupcake pan or paper or that the bumps are dictated by the function of gripping the separator.
17
Finally, and perhaps most importantly, it must be noted that in arguing that Kimber has wrongfully asserted protection for a functional, utilitarian article and should be subject to sanctions from this Court, Bradshaw is implicitly contending that it is inherently unreasonable for Kimber to rely on the validity of the 376 patent in support of its complaint in this matter. Again, the 376 patent was duly examined and issued by the United States Patent and Trademark Office. Not surprisingly, Bradshaw fails to site a single case where a court has concluded that a patent holder should be subject to sanctions for its reliance on the validity of a patent that was reviewed and approved by the U.S. Patent Office. Indeed, cutting against such an argument is the fact that there is a strong presumption that a patent is valid. See 35 U.S.C. 282; see also Microsoft Corp. v. i4i Limited Partnership, 131 S.Ct. 2238 (2011). In sum, given the sheer baselessness of Bradshaws functionality argument, and the absurd logic the Court would have to adopt to find in Bradshaws favor, Kimber respectfully submits that the only conclusion that can be reached is that Bradshaw chose to proceed with its motion for sanctions as a means to improperly frustrate the litigation process and force Kimber to unnecessarily waste its time and expend its limited financial resources. 2. None of What Bradshaw Cites as Purported Prior Art Qualifies as Such under the Law and Bradshaw Has Intentionally Manipulated the Purported Prior Art to Serve Its Needs. Bradshaw goes on to make the perplexing assertion that as a matter of law an ordinary observer could not confuse its competing cupcake-shaped batter separator with Kimbers patented cupcake-shaped batter separator. Defendants Motion for Sanctions at P. 18. It also cites a number of design patents it claims constitute prior art that it suggests should be compared to Kimbers patented design and Bradshaws competing design in analyzing the issue of infringement. Id. at PP. 15-18. 18
Preliminarily, Bradshaws contention that an ordinary observer could not confuse its cupcake batter separator with Kimbers patented design is belied by the record. Again, a representative from Chef Central a company that sells cookware, bakeware and other culinary accessories indicated to Kimber her belief that Chef Central was already carry[ing] [Kimbers] product through Bradshaw/Good Cook when Kimber inquired about distributing its products in Chef Central stores. One can safely presume that an individual employed in the cookware/bakeware industry has more knowledge of cupcake batter separators than the casual shopper who constitutes an ordinary observer; yet there was still confusion on the part of the Chef Central employee. This is rather significant evidence that the two designs are substantially the same. And again, there is no dispute that Bradshaws Senior Product Manager purchased a set of Batter Babies and had it delivered to Bradshaws headquarters just three months before Bradshaw brought its own competing product to the market. No satisfactory or reasonable explanation has been offered for why Bradshaws employee would purchase Kimbers product. It is anticipated that once Kimber has an opportunity to depose the employee it will elicit evidence suggesting that the companys actions were deliberate and in bad faith to intentionally cause market confusion. Moreover, as Defendant is aware, this substantial and damaging evidence is not even necessarily required to establish market confusion. Braun Inc. v. Dynamics Corp. of America, 975 F.2d 815, 821 (Fed. Cir. 1992) (holding that there is no requirement that a patent holder provide empirical evidence as to whether ordinary observers would be deceived by the accused devices design in order to establish infringement. Rather, a trier of fact, may, as a matter of law, rely exclusively or primarily on a visual comparison of the patented device and accused device in
19
reaching such conclusion.) The substantial similarities between Kimbers patented design and Bradshaws accused design when visually compared to one another are sufficient on their own for a factfinder to conclude that an ordinary observer could experience market confusion. Thus, it strains the bounds of credulity to insist, as Bradshaw has, that an ordinary observer could not find the respective batter separators to be so aesthetically similar that they would cause market confusion to an ordinary observer in the marketplace. Focusing on Bradshaws prior art argument, it should also be beyond question that none of the design patents cited by Bradshaw fall within the scope of prior art and are, therefore, wholly inapplicable to the discussion of whether its cupcake batter separator infringes on the 376 patent. Courts, including the Supreme Court and Sixth Circuit, have determined that the scope of the prior art in the context of the ordinary observer test should be limited to articles of the same type that have the same purpose. For example, in Gorham, supra, the only prior art references mentioned or used in the course of applying the ordinary observer test were other silverware designs. Gorham, 81 U.S. 511 (1872). Likewise, in Smith v. Whitman Saddle, a case involving designs for horse saddles, the only prior art mentioned when analyzing infringement were other horse saddle designs. 148 U.S. 674 (1893). Similarly, in a design patent case involving a combination ashtray and cigarette lighter for use in an automobile, the only prior art cited by the Court was combination ashtray and cigarette lighters. Applied Arts Corp. v. Grand Rapids Metalcraft Corp., 67 F.2d 428 (6th Cir. 1933). In Sears, Roebuck & Co. v. Talge, 140 F.2d 395 (8th Cir. 1944), a case involving designs for fruit juicers, the only prior art considered by the court were household fruit juicers. Finally, in Zidell v. Dexter, 262 F.145 (9th Cir. 1920), the court determined in a design patent dispute involving childrens rompers, only childrens rompers were compared as prior art.
20
Here, none of the several design patents Bradshaw relies upon as examples of comparable prior art is a cupcake batter separator. Instead, Defendant references designs for cupcake-shaped storage containers, an ice cream-shaped candle, a male figurine with a muffin torso, a cookie cutter and various other irrelevant designs. As none of the cited articles are of the same type or have the same purpose as Kimbers patented design, they are irrelevant in analyzing whether Bradshaws cupcake-shaped batter separator infringes upon Kimbers patented cupcake-shaped batter separator. However, more troubling than the propriety of Bradshaws legal argument related to purported prior art is the fact that Bradshaw arbitrarily alters the designs it cites to make them seem to more closely resemble Kimbers patented design. In particular, in all cases but one,
Bradshaw has altered the designs to cut off the bottom portions of the graphic. Bradshaw presumably justifies these alterations on the basis of its incorrect contention that only the upper portion of one view of the design of the 376 patent need be considered and the rest can literally be deleted, given its position that the trapezoidal base of the design is functional rather than ornamental. However, as made clear by the Federal Circuit as recently as 2012, the entire threedimensional design must be considered when examining prior art. See Apple, Inc., v. Samsung Electronics Co., Ltd., 678 F.3d 1314, 1326 (Fed. Cir. 2012). This includes side views, bottom views and the like, precisely because a design patent covers a three-dimensional article of manufacture, not merely an arbitrary view thereof. The reasons for this can be made no clearer than through a comparison of the selected view of U.S. Patent D610,944 chosen by Bradshaw and the actual three-dimensional design disclosed in the patent in question: Selected View Presented by the Defendant:
21
Actual Design disclosed by U.S. Patent D610,944:
Bradshaws redaction of the design claimed by U.S. Patent D610,944 masks a number of features which clearly distinguish this design from the 376 patent, not the least of which are the three-dimensional shape (rather than being an essentially planar body), the muscular legs and arms, the eight-pack abdominal muscles, the defined gluteus muscles, and the presence of facial features, including the provocatively raised eyebrow. Nothing even remotely corresponding to any of these features is present in the 376 patent, which results in a dramatically different visual impression upon viewing the full designs. It is also apparent that Bradshaw has rotated the redacted view, which further obfuscates the design differences. Nothing could better exemplify the importance of viewing an entire design for visual impression than a full comparison of the 376 patent and U.S. Patent D610,944. In short, not only is it abundantly clear that U.S. Patent D610,944 is neither relevant, nor analogous prior art to the 376 patent, but it is equally clear that Bradshaws selective editing is likely a bad-faith attempt to mislead the Court. Likewise, none of the remaining purported prior art relied upon by Bradshaw could reasonably be considered substantially similar in appearance to the design of the 376 patent, as is apparent from even a cursory examination of the actual figures. Indeed, a review of the remaining designs excerpts reveals that three are arguably even more egregiously deceptive than Bradshaws redaction of U.S. Patent D610,944. In each example, Bradshaw has simply removed 22
distinguishing features of designs without identification or explanation. At least when removing the bottom portion of the designs, Bradshaw could conceivably rely on an incorrect justification. However, with regard to U.S. Patents D601,379, D649,905 and D590,524, Bradshaw has blatantly modified the designs to remove features that clearly distinguish even the singular view without any justification whatsoever:
Kimber cannot surmise any proper basis for making the above redactions. The only other purported prior art cited by Bradshaw is an undated image of a cookie cutter. As an initial matter, it is uncertain at best whether such evidence, without proper authentication could be admitted for any purpose. More importantly, however, the cookie cutter is not an article of the same type and does not have the same purpose as a cupcake batter separator. Thus, it cannot be considered prior art at all. In addition, the referenced cookie cutter is so different in appearance from the design of the 376 patent, it could not otherwise qualify as prior art. Whereas the design of the 376 patent is for an essentially planar body member having a distinctive outline, the cookie cutter is a band of flat metal bent into a hollow shape. Again, Kimber cautioned Bradshaw on the lack of any support for it contentions related to the purported prior art in its January 21, 2014 correspondence. The obvious fact is that 23
Bradshaw has apparently been unable to locate even a single piece of relevant or analogous prior art for an essentially planar body member having a distinctive outline as shown in the four figures depicting the ornamental design for a batter separator, as shown, claimed and described in the 376 patent. The lengths and depths to which Bradshaw has gone in an attempt to manufacture relevant prior art only serves to emphasize that Kimbers design is unique and that there is no analogous prior art available to limit the scope of protection afforded to the 376 patent. Kimber could not have provided a better offer of proof for the strength of its case than Bradshaw has itself concocted. Moreover, once again, Bradshaws legal argument that purportedly supports its motion for sanctions does not stand up to even the slightest level of scrutiny. In fact, Bradshaws contention that its cupcake batter separator is not substantially similar to Kimbers patented design is so misguided on multiple levels and wholly unwarranted by existing law, that its motion for sanctions can only be perceived as vexatious tactic to frustrate the prosecution of this case. Thus, Defendant should be required to reimburse Kimber for the cost it has had to expend to fully defend itself from what Bradshaw should have plainly recognized was a frivolous filing at the time it was submitted to the Court. E. The Court Should Deny Bradshaws Motion for Leave to File Exhibits 2 and 12 in Support of Its Motion for Sanctions Under Seal. Finally, Kimber takes this opportunity to oppose Bradshaws motion for leave to file exhibits 2 and 12 in support of its motion for sanctions under seal. The exhibits consist of correspondence from Kimber attempting to resolve this case early in the litigation under mutually beneficial and reasonable terms. In its motion for sanctions, Bradshaw makes the highly dubious and disparaging assertion that Kimbers motivation in making these reasonable offers of settlement was part of an effort to shake down Bradshaw for a quick buck, regardless 24
of the merits of its claims and to extract a nuisance value from Bradshaw in hopes that it would impose a high cost against Bradshaw to combat Kimbers meritless claims. Defendants Motion for Sanctions at PP. 2, 20. Not only are these claims absolutely false, they are quite clearly designed to damage Kimbers reputation in the bakeware industry and the community at large. As Bradshaw surely recognizes, this case has garnered interest in the patent world and among the general public. One need only conduct a basic Google search for confirmation of this fact. In fact, Bradshaws motion for sanctions has been posted on a number of publicly available blogs. See e.g. http://design-law.tumblr.com/page/2 (Update: In a recently-filed motion, the defendant argues that Kimbers Complaint lacks legitimate legal and factual foundation. Yikes.). Kimber submits that Bradshaw should not be permitted to make reckless statements in public pleadings and then turn around and attempt to hide behind procedural rules to cover up the falsity of those statements by seeking to have exculpatory documents sealed. Unlike Bradshaw, Kimber has nothing to hide and those interested in the parties in this case should be able to judge for themselves who is and is not being reasonable and forthright in this litigation. Accordingly, Kimber asks that Bradshaws motion for leave to file under seal be denied. Any sensitive financial information can be resolved through redaction. IV. CONCLUSION
In sum, based on the foregoing, Kimber respectfully submits it should be abundantly obvious that its complaint in this matter was properly pleaded and is well-grounded in law and fact to easily clear the relatively low threshold of objective reasonableness under Rule 11. In contrast, the arguments presented in Bradshaws motion for sanctions are so clearly lacking in
25
any sound legal basis that, in the interest of fundamental fairness and to send a strong message that such reckless conduct will not be tolerated, Bradshaw should be required to reimburse Kimber its costs and attorneys fees incurred in having to respond to its spurious motion. In addition, Bradshaws motion to file exhibits under seal should be denied on equitable grounds so that Kimber can mitigate the harm caused by Bradshaws defamatory claims. Respectfully Submitted, McNEES WALLACE & NURICK LLC _/s/ Samuel N. Lillard______________________ Samuel N. Lillard (#0040571) (Trial Attorney) Courtney J. Miller (#0070450) David M. Marcus (#0087144) McNees Wallace & Nurick LLC 21 East State Street, 17th Floor Columbus, Ohio 43215 Telephone: (614) 469-8000 Fax: (614) 469-4653 slillard@mwncmh.com cmiller@mwncmh.com dmarcus@mwncmh.com Attorneys for Kimber Cakeware, LLC
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CERTIFICATE OF SERVICE I hereby certify that on this 27th day of February, 2014, I electronically transmitted the foregoing Memorandum in Opposition to Defendants Motion for Rule 11 Sanctions, Memorandum in Support of Costs Under 28 U.S.C. 1927, and Memorandum in Opposition to Defendants Motion for Leave to File Exhibits Under Seal to the Clerk of Court using the ECF system for filing and transmittal of a Notice of Electronic Filing upon counsel for the defendant as follows: Phillip G. Eckenrode HAHN LOESER & PARKS, LLP 65 East State Street, Suite 1400 Columbus, Ohio 43215 peckenrode@hahnlaw.com R. Eric Guam HAHN LOESER & PARKS, LLP 200 Public Square, Suite 2800 Cleveland, Ohio 44114 reguam@hahlaw.com Robert J. Kenney BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road, Suite 100E Falls Church, Virginia 22042 rjk@bskb.com mailroom@bskb.com Michael B. Marion BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road, Suite 100E Falls Church, Virginia 22042 mbm@bskb.com mailroom@bskb.com ATTORNEYS FOR DEFENDANT BRADSHAW INTERNATIONAL, INC.
/s/ Samuel N. Lillard
27
Exhibit 1
Exhibit 2
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Exhibit 3
http://www.goodcook.com/sweet-creations/baking-gadget-&-decorating-tools/cupcake-batter-divider-p-700.html[2/7/2014 11:54:40 AM]
IN THE UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF OHIO EASTERN DIVISION ____________________________________________ ) KIMBER CAKEWARE, LLC, ) ) Case No. 2:13-cv-0185 ) Plaintiff, ) ) Judge Marbley v. ) ) BRADSHAW INTERNATIONAL, INC., ) Magistrate Judge King ) Defendant. ) ____________________________________________ ) DEFENDANT BRADSHAW INTERNATIONAL, INC.S REPLY BRIEF TO PLAINTIFF, KIMBER CAKEWARE, LLCS OPPOSITION TO BRADSHAWS RULE 11 MOTION FOR SANCTIONS I. INTRODUCTION Defendant, Bradshaw International, Inc. (hereinafter Bradshaw) hereby submits its Reply in support of its Rule 11 Motion For Sanctions, responding to Kimber Cakeware, LLC (Kimber) opposition to the same. [D.I. 31.] Bradshaw filed its motion for sanctions because Kimber lacked basis in fact and law to assert infringement of its design patent, U.S. Pat. No. D671,376 (the 376 Patent) against Bradshaws batter separator, and Kimber thereafter improperly maintained the litigation despite being informed specifically of its improper positions. Kimbers opposition argues that Bradshaw lacked a basis to bring its motion for sanctions under Rule 11 and then proceeds to engage in a series of ad hominem attacks on Bradshaw. Regardless of whatever vilification of Bradshaw that Kimber chooses to engage in, Kimbers opposition omits the only issue Kimber needed to address in its oppositionany explanation of the facts and law that support its claim that Bradshaw infringed Kimbers patent. 1
In fact nearly the entirety of Kimbers opposition is an attempt to fabricate some improper conduct by Bradshaw. For example, Kimbers opposition accuses Bradshaw of improperly filing the instant motion for inter alia Bradshaws absurd assertion that Kimber has somehow engaged in sanctionable conduct by relying on the validity of U.S. Design Patent No. D671,376. [Opp. at 1.] Firstly, Kimbers statement implies that any patentee-plaintiff that holds a valid U.S. Patent is ipso facto insulated from bringing meritless claims. Numerous decisions have found sanctionable conduct by a plaintiff in a patent suit for reasons other than asserting an invalid patent. See, e.g., Hoffman-LaRoche Inc. v. Invamed, Inc., 213 F.3d 1359, 1362 (Fed. Cir. 2000); View Eng'g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981 (Fed. Cir. 2000); Judin v. United States, 110 F.3d 780, 784 (Fed. Cir. 1997). Secondly, Bradshaw did not make this assertion. Among Bradshaws basis for its motion was that Kimber lacked sufficient basis to assert infringement of the 376 Patent, and that any attempt by Kimber to stretch its patent to cover Bradshaws product would result in the 376 Patent encompassing numerous prior art designs of cupcakes. Setting aside the series of distractions in Kimbers opposition, it is clear Kimber could not provide any evidence to refute that its Complaint lacked sufficient basis to assert infringement. Bradshaw filed the instant motion seeking sanctions against Kimber because it was apparent on the face of Kimbers Complaint that, under the law of design patents, Bradshaws accused product did not infringe Kimbers asserted patent. Both the asserted patent and the accused product were depicted in Kimbers Complaint. The two designs take dramatically different and easily distinguishable approaches to an ornamental design for a cupcake-shaped batter separator. As explained in great detail in Bradshaws memorandum in support of Rule 11 Sanctions, the design of the asserted patent presents an overall impression of a design that is two-
dimensional and minimalist. The distinctive features of the claimed design gives an overall impression of a cupcake with a cherry and sprinkles on top. The accused infringing Bradshaw product, the Sweet Creations by Good Cook cupcake divider, takes a completely different aesthetic approach in its ornamental design for a cupcakeshaped cupcake divider. The Bradshaw product has a distinctive circular swirl pattern throughout the top half of the divider, with a two-tier top that, combined with the swirl, provides the illusion of three-dimensional depth of the topping of the cupcake. The overall impression of the Bradshaw product is a cupcake with a swirled icing effect. Without rehashing the entirety of its non-infringement analysis, Bradshaw directs the Court to consider the question of infringement from a different view. The Federal Circuit has provided useful guidance on a practical application of the Egyptian Goddess test for design patent infringement. Although not the black letter law of design patent infringement, the Federal Circuit stated that, [i]f the claimed design and the accused designs were arrayed in matching colors and mixed up randomly, this court is not confident that an ordinary observer could properly restore them to their original order without very careful and prolonged effort. Crocs, Inc. v. ITC, 598 F.3d 1294, 1306 (Fed. Cir. 2010). The Court should feel confident in concluding that an ordinary observer of cupcake baking supplies could easily separate out the claimed design and the accused design if they were mixed together. When only the ornamental (non-functional) features of the claimed design are compared against the accused design in view of the prior art, the differences between the designs become incontrovertible. A review of the entirety Kimbers opposition fails to provide any analysis or basis for its infringement claims, either at the time of filing its Complaint or at any time since. Still, at this late stage of this case, Kimber cannot explain why Bradshaws batter separator infringes the 376
Patent. This is not an area of the law where res ipsa loquitur applies. Although design patents are concerned with the overall impressions of the claimed design, which are difficult to translate into words, there must be some articulable reason why the accused product infringes the asserted design patent. Kimbers conclusory allegations of infringement it has maintained throughout the litigation [see D.I. 24, Ex. 2 at 6] fail to meet the requirement that Kimber was require to have a basis in fact and law to file and maintain the present lawsuit. This is a quintessential violation of Rule 11 and requires appropriate sanctions by the Court to make Bradshaw whole again and deter others from making similar spurious allegations. Although Kimber failed to provide any evidence that it had an objectively reasonable basis, Kimber makes several erroneous arguments that necessitate a response below. II. ARGUMENT A. Kimbers Motion For More Time To Oppose Bradshaws Motion For Summary Judgment On Non-Infringement Conclusively Demonstrates Kimber Lacked Sufficient Factual Basis To File The Suit Contemporaneously with the filing of the present motion for sanctions, based on Kimbers suit lacking basis in fact and law under Rule 11, Bradshaw also filed a motion for summary judgment on non-infringement.1 As well established under legal precedent, in order to defeat a motion for summary judgment, all the non-movant must show is that some issue of fact that would affect the outcome of the summary judgment motion is still genuinely in dispute. All evidence presented at summary judgment is viewed in a light most favorable to the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-50 (1986). Instead of providing any evidence to refute Bradshaws factual support that Bradshaws accused product does not infringe the 376 Patent, Kimber filed a motion seeking three In view of Bradshaws motion for summary judgment, Kimbers suggestion that Bradshaw is somehow improperly using its motion for sanctions under Rule 11 in lieu of litigating on the merits is contradicted by the record. 4
1
additional months of discovery. [D.I. 30.] Kimber is only entitled to such additional discovery if it cannot provide any facts to create a genuine dispute of material facts on the issue of noninfringement. Consequently, Kimbers actions have confirmed that all of the evidence it had in its possession at the time it filed the Complaint was insufficient to establish a basis to assert infringement against Bradshaw in the first place. It is incredible that, after more than a year has elapsed since the filing the Complaint, Kimber still has no evidence to support its claim of design patent infringement.2 Kimbers failure to provide any factual basis to support its claim of design patent infringement is precisely the violation of Rule 11 Bradshaw is seeking in its motion for sanctions. Federal Rule of Civil Procedure 11(b)(2) requires that all factual contentions [have] evidentiary support.3 Kimbers motion for more time for discovery of irrelevant facts is plainly an admission that it lacked a basis in the first place to file the suit. B. The Prior Art Cited By Bradshaw In Its Motion For Sanctions Is Prior Art As part of its motion for sanctions, Bradshaw presented numerous examples of prior art cupcake-shaped designs to be considered as part of the Egyptian Goddess test. Kimber provides no response to Bradshaws analysis that an ordinary observer, familiar with the references Bradshaw cited in its motion, would purchase Bradshaws design thinking it was the patented design. Instead, Kimber argues that only prior art that of the same type that have the same purpose is permitted to be considered under the Egyptian Goddess test. [Opp. at 25.] Kimber
2
As explained in Bradshaws opposition to Kimbers motion for more time, none of the evidence Kimber requested in its motion under Rule 56(d) would have any bearing on the outcome of Bradshaws motion for summary judgment of non-infringement. Or if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery but no such identification was made by Kimber in its opposition. 5
3
cites no authority to provide such a restrictive limitation on the scope of prior art and its limiting definition is contrary to the definition of what is prior art. Prior art is defined as any material that meets any of the criteria under 35 U.S.C. 102. Prior art includes any patent or printed publication that antedates the filing date of the patent-atissue by more than one year. 35 U.S.C. 102(b) (former). Prior art also includes any U.S. patent that has a U.S. filing date that antedates the filing date of the patent-at-issue. 35 U.S.C. 102(e) (former).4 A patent is invalid if all of the elements are disclosed in a single prior art reference. A reference may be from an entirely different field of endeavor than that of the claimed invention or may be directed to an entirely different problem from the one addressed by the inventor, yet the reference will still anticipate if it explicitly or inherently discloses every limitation recited in the claim. State Contr. & Eng'g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1068 (Fed. Cir. 2003). There is no limitation of prior art to only those references that are of the same type and have the same purpose as the claimed invention. Moreover, an ordinary designer of a cupcake-shaped article of manufacture would look to other cupcake-shaped articles for the inspiration of creating a new cupcake-shaped article. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). The ornamental features of a cupcake-shaped container would provide inspiration for the ordinary designer of other cupcake-shaped goods.
The new 35 U.S.C. 102 under the America Invents Act specifically labels this Section as Prior Art. 6
It is important also to note that the application of Kimbers fabricated restriction on prior art would have the universal effect of affording design patent holders with de facto utility patent protection. Clearly that is not proper. Nearly all (if not all) of the non-functional features of the Kimber design are found in the prior art references, and the ordinary observer, familiar with all prior art references, would be more drawn to the differences between the asserted patent and the accused design. The differences between the design of the 376 Patent and the Bradshaw product are so striking in view of the cupcake-shaped cookie cutter cited in Bradshaws motion, it is impossible to construct the 376 Patent in any manner that would have the 376 Patent not look almost identical to the cookie-cutter. Any attempt to overlook the seven circles under the bell of the 376 Patent would anticipate and thus invalidate the 376 Patent. Accordingly, the simple result is that the Bradshaw product does not infringe the 376 Patent. It is worth noting that Kimber accuses Bradshaw of bad faith and misleading the Court by highlighting portions of prior art that contain shapes of cupcakes in the body of Bradshaws memorandum in support of its motion, and not showing portions of the prior art that do not include shapes of cupcakes. Seeing how Bradshaw attached the prior art as exhibits to its motion, fully disclosing the prior art reference, Bradshaw cannot comprehend how it could have misled the Court. Kimbers argument appears to be that Bradshaw should have included irrelevant material in its briefing, the notion of which is simply baffling. C. Kimbers Opposition Demonstrates The Functionality Of The Bottom Trapezoid Portion Of The Asserted Design As Bradshaws memorandum in support of sanctions explained, the bottom trapezoid shape of the design depicted in the 376 Patent has the function of bisecting the inverted truncated cone of a single muffin cup in a muffin tin. The trapezoid shape is the only effective 7
shape to separate the emulsions of two different batters to create two-tone cupcakes and has no ornamental or decorative purpose to it. As even Kimber properly quoted in its Opposition, [i]f the design of a particular feature must appear a certain way, and only that way, in order to perform a particular function, then the feature is functional and not ornamental. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993) (citations omitted). Ultimately, the shape is dictated by the geometry of the muffin tin and must appear as a trapezoid. Kimbers Opposition presented four alternative designs which Kimber claimed performed the same function. [D.I. 31 at 15-16.] However, these alternatives reinforce the concept that the bottom portion of the design of the 376 Patent is functional. The three commercial products that appear in its Opposition have different functions than claimed design: (1) creation of cupcakes/muffins with a cored center different than the outer portion, (2) creation of three- to six-toned cupcakes, and (3) creation of a whole muffin tin of two-tone cupcakes. None of these products have the same function as the claimed design of creating a single two-tone cupcake.5 As none of these products have the same function as the design of the 376 Patent, none of Kimbers arguments about the applicability of these alternative designs carry any weight. Kimbers final argument on functionality is that a simple square or rectangular design, such as the cracker used below, could also constitute an alternative design. [D.I. 31 at 16.] Kimbers hypothetical cracker design misses the point entirely. For hypothetical alternative designs, the same argument could be made that a brick with a strap attached could constitute an alternative design for a shoe or an iPhone could constitute an alternative design for a bookmark.
5
In fact, the referenced Mrs. Fields Half N Half Cupcake Pan actually further reinforces that the patented design is functional, as the pictured pan contains the identical trapezoidal shape in each individual muffin cup. 8
With an endless imagination, a conceptual artist could probably create any number of alternatives for every manufactured good ever created, and thus annihilating the entire doctrine of functionality from design patent law. Kimber would have the Court ignore the guidelines from Berry Sterling Corp. v. Prescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997), which demonstrate that Kimbers design represents the best design, that alternative designs would adversely affect the utility of the specified article, and that Kimbers advertising touts the functional features as fitting in most standard siz cupcake pans and cups. The functionality of the trapezoid portion of the 376 Patent is easily seen by its shape. Kimbers arguments against the functionality its own product touts are specious and contrary to well-established principals of design patent law. D. Bradshaw Filed The Motion To Seal Exhibits Under Rule 2 And 12 Out Of An Abundance Of Caution And Withdraws Its Motion To Seal These Exhibits In View Of Kimbers Position, Which Further Demonstrate Kimbers Lack Of Basis To Maintain The Present Suit As stated in Bradshaws motion to seal, Bradshaw believed the information in Kimbers settlement demand letter was sufficiently sensitive to meet the good cause standard to seal the document, but is unsure if Kimber contends such information should be submitted under seal. [D.I. 26 at 2.] Accordingly, Bradshaw filed its motion to seal Kimbers settlement demand letter, as well Bradshaws letter, which referenced the same information from Kimbers letter. Bradshaws motion was filed out of an abundance of caution to permit Kimber an opportunity to demonstrate the requisite good cause to seal its letter. [Id.] Kimbers opposition made it clear that, although there is confidential information of Kimber contained in Bradshaws Exhibits 2 and 12 (and thus Bradshaw, under the protective order, was obligated to seek the sealing of these documents), Kimber opposes the sealing of these documents. Accordingly, Bradshaw withdraws its motion to seal Exhibits 2 and 12, to 9
remove any doubt that Kimbers allegations of some impropriety by Bradshaw are baseless. Ultimately, these letters further demonstrate that Kimber has been advancing a meritless claim while Bradshaw has maintained the same position throughout the litigation. III. CONCLUSION Bradshaw did not file the instant motion for sanctions hastily or to play games with the judicial process as Kimber intimates. Kimbers argumentation cannot overcome its failure to file a complaint lacked basis in fact and law. Kimber has compounded the problem by sustaining its allegations of design patent infringement against Bradshaw despite unambiguous case law to the contrary. Because Kimbers conduct is in violation of Rule 11, the Court must fashion an appropriate sanction to deter future wrongdoing by others who would attempt the same wrongdoing, while making Bradshaw whole for the money spent defending against Kimbers conduct. At a minimum, the Court must find that Kimber has violated Rule 11, dismiss Kimbers Complaint with prejudice, award an appropriate sanction amount against Kimber and/or its counsel at a minimum to cover the entirety of Bradshaws litigation expenses to date, and any other remedy the Court sees fit to impose. Dated: March 17, 2014 Respectfully submitted, /s/ Phillip G. Eckenrode Phillip G. Eckenrode (# 0084187) HANH LOESER & PARKS, LLP 65 East State Street, Suite 1400 Columbus, Ohio 43215 Phone: (614) 233-5147 Fax: (614) 233-5194 peckenrode@hahnlaw.com
10
/s/ Michael B. Marion Michael B. Marion (admitted pro hac vice) Robert J. Kenney (admitted pro hac vice) BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road, Suite 100 East Falls Church, Virginia 22042 Phone: (703) 205-8000 Fax: (703) 205-8050 rjk@bskb.com; mbm@bskb.com ATTORNEYS FOR DEFENDANT BRADSHAW INTERNATIONAL, INC.
CERTIFICATE OF SERVICE I hereby certify that on this 17th day of March, 2014, I served via electronic mail a copy of the foregoing upon: Samuel N. Lillard, Esq. Courtney J. Miller, Esq. David M. Marcus, Esq. McNees Wallace & Nurick LLC Fifth Third Center 21 East State Street, Suite 1700 Columbus, OH 43215 slillard@mwncmh.com cmiller@mwncmh.com dmarcus@mwncmh.com
/s/ Michael B. Marion Michael B. Marion
11

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Fig. 1, 376 Patent

Cupcake Cookie Cutter Dated Oct. 25, 2009 (Ex. 4) 15

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Fig. 1, 376 Patent

Cupcake Cookie Cutter

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D359,153 (Ex. 5.)

D601,379 (Ex. 6.)

D633,654 (Ex. 7.)

D616,260 (Ex. 8.)

D649,905 (Ex. 9.)

D610,944 (Ex. 10.)

D590,524 (Ex. 11.)

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/s/ Michael B. Marion Michael B. Marion

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EXHIBIT 1 to Defendant Bradshaw's Rule 11Motion

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Case No. 2: 13-cv-0 185 PlaintiiT. Judge Marbley

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any objections, qualifications and limitations, Plaintiff responds as fo llows:

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including but not limited to any such reports.

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Dublin, Ohio 43017

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Defenda11t's infringing activities on Kimber's business.

intentional copying by Defendant of Kimber' s design. and the awareness of Defendant of

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9409 Buffalo Avenue Rancho Cucamonga, California 91730 (800) 421-6290

Defendant's infringement on U.S. Design Patent No. D671 ,376.

INTERROGATORY NO. 11:

INTERROGATORY NO. 13:

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Wi ILon Corp. Bradshaw/Good Cook Rubbermaid

KitchenAid NordicWare llutzler Nopro

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INTERROGATORY NO. 14:

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Kimber's Patented Design