Hunter's Edge v. Primos - Def.'s MSJ

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF ALABAMA

SOUTHERN DIVISION

HUNTERS EDGE, LLC, a
corporation,

Plaintiff,

v.

PRIMOS, INC., a corporation,

Defendant.
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)
)
)
)
)
)
)
)
)
)
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Case No. 1:14-CV-00249-MHT-WC

PRIMOS, INC.S BRIEF IN
SUPPORT OF ITS MOTION
FOR SUMMARY JUDGMENT

Judge Myron H. Thompson
Magistrate Judge Wallace Capel, Jr.

Plaintiff Hunters Edge, LLC (Hunters Edge) asserts two counts of patent
infringement against Defendant Primos, Inc. (Primos) in this lawsuit. See
Complaint (Dkt. 1). Primos seeks summary judgment on both counts because
there are no genuine issues of material fact and these claims can be resolved by the
Court as a matter of law in favor of Primos.
Case 1:14-cv-00249-MHT-WC Document 39 Filed 10/24/14 Page 1 of 78
i

TABLE OF CONTENTS
I. UNDISPUTED MATERIAL FACTS AND STATEMENT
OF ELEMENTS .............................................................................................. 3
A. Statement of Legal Elements ................................................................. 3
1. Originality ................................................................................... 3
2. Anticipation ................................................................................. 4
3. Obviousness ................................................................................ 5
4. Infringement ................................................................................ 7
B. Statement of Undisputed Facts .............................................................. 7
1. The 745 Patent ........................................................................... 7
2. The 746 Patent ......................................................................... 14
3. Bulger Failed to Disclose Prior Art .......................................... 19
4. The Abandoned 2009 Claim ..................................................... 23
II. THE DESIGN PATENTS LACK PATENTABLE ORIGINALITY ............ 26
III. THE PATENTED DESIGNS ARE EITHER ANTICIPATED OR
OBVIOUS IN LIGHT OF PRIOR ART DECOYS THAT USE ACTUAL
OR PHOTOGRAPHIC REPRODUCTIONS OF ACTUAL TURKEY TAIL
FEATHERS ................................................................................................... 33
A. The Design Patents are Anticipated .................................................... 34
1. Claim Construction ................................................................... 36
2. The Design Patents Are Anticipated ......................................... 38
B. The Design Patents are Obvious ......................................................... 43
1. Level of Ordinary Skill in the Art ............................................. 45
2. The Hunters Edge Design Patents are Obvious ....................... 46
3. Prior Art Designs ...................................................................... 47
IV. PRIMOS ACCUSED PRODUCTS DO NOT INFRINGE .......................... 53
A. The Proper Analysis Compares the Accused Products to the Claimed
Ornamental Designs, not the Commercial Embodiment or Functional
Features of the Commercial Product ................................................... 55
B. Comparing the Properly Construed Claims to the Accused Design ... 58
C. Comparing the Claims to the Accused Design in Light of the
Prior Art ............................................................................................... 63
ii

TABLE OF AUTHORITIES
Page(s)
CASES
Amgen, Inc. v. Hoechst Marion Roussel,
314 F.3d 1313 (Fed. Cir. 2003) .......................................................................... 54
Anderson v. Kimberly-Clark Corp.,
2014 WL 3361130 (Fed. Cir. J uly 10, 2014) ................................................ 56, 58
Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1986) ............................................................................................ 24
Animal Legal Def. Fund v. Quigg,
932 F.2d 920 (Fed. Cir. 1991) ............................................................................ 25
Apple, Inc. v. Samsung Elecs. Co.,
678 F.3d 1314 (Fed. Cir. 2012) .......................................................................... 42
Avia Group Intl, Inc. v. L.A. Gear California, Inc.,
853 F.2d 1557 (Fed. Cir. 1988) ............................................................................ 6
Bernhardt, LLC v. Collezione Europa USA, Inc.,
386 F.3d 1371 (Fed. Cir. 2004) .................................................................. 4, 5, 33
Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,
489 U.S. 141 (1989) ............................................................................................ 43
Brooks Furniture Mfg., Inc. v. Dutailier Intl, Inc.,
393 F.3d 1378 (Fed. Cir. 2005) .......................................................................... 35
Celotex Corp. v. Catrett,
477 U.S. 317 (1986) ............................................................................................ 24
Contessa Food Prods., Inc. v. Conagra, Inc.,
282 F.3d 1370 (Fed. Cir. 2002) .......................................................................... 34
Diamond v. Chakrabarty,
447 U.S. 303 (1980) ............................................................................................ 26
Diamond v. Diehr,
450 U.S. 175 (1981) ............................................................................................ 26
iii

Dobson v. Dornan,
118 U.S. 10 (1886) .............................................................................................. 34
Durdin v. Kuryakyn Holdings, Inc.,
440 F. Supp. 2d 921 (W.D. Wis. 2006) .................................................... 4, 26, 28
Durling v. Spectrum Furniture Co.,
101 F.3d 100 (Fed. Cir. 1996) .................................................................. 6, 35, 42
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) (en banc) .....................................................passim
Elmer v. ICC Fabricating,
67 F.3d 1571 (Fed. Cir. 1995) ............................................................ 7, 10, 35, 52
Funk Bros. Seed Co. v. Kalo Inoculant Co.,
333 U.S. 127 (1948) ............................................................................................ 26
Gorham Co. v. White,
81 U.S. 511 (1871) .............................................................................. 7, 33, 52, 55
Graham v. John Deere Co.,
383 U.S. 1 (1966) ............................................................................................ 6, 41
High Point Design LLC v. Buyers Direct, Inc.,
2014 WL 1244558 (S.D.N.Y March 26, 2014) .................................. 5, 38, 39, 41
High Point Design, LLC v. Buyers Direct, Inc.,
730 F.3d 1301 (Fed. Cir. 2013) ............................................................................ 6
Hosley Intl Trading Corp. v. K Mart Corp.,
237 F. Supp. 2d 907 (N.D. Ill. 2002) .................................................................. 54
Hupp v. Siroflex of Am., Inc.,
122 F.3d 1456 (Fed. Cir. 1997) ...................................................................... 5, 34
In re Finch,
535 F.2d 70 (C.C.P.A. 1976) .............................................................................. 42
In re GPAC, Inc.,
57 F.3d 1573 (Fed. Cir. 1995) ............................................................................ 43
In re Klein,
987 F.2d 1569 (Fed. Cir. 1993) .......................................................................... 26
iv

In re Mann,
861 F.2d 1581 (Fed. Cir. 1988) ...................................................................... 3, 25
In re Nalbandian,
661 F.2d 1214 (C.C.P.A. 1981) ........................................................................ 6, 7
In re Smith,
77 F.2d 513 (C.C.P.A. 1935) .......................................................................passim
In re Smith,
77 F.2d 514 (C.C.P.A 1935) ............................................................... 4, 25, 27, 28
Intl. Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233 (Fed. Cir. 2009) .......................................................... 6, 33, 34, 39
Knickerbocker Plastic Co. v. B. Shackman & Co.,
184 F.2d 652 (2d Cir. 1950) ............................................................................... 27
KSR Intl Co. v. Teleflex Inc.,
550 U.S. 398 (2007) ............................................................................................ 41
Markman v. Westview Instruments, Inc.,
52 F.3d 967 (Fed. Cir. 1995), affd, 517 U.S. 370 (1996) .............................. 7, 52
Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574 (1986) ............................................................................................ 24
Microsoft Corp. v. i4i Ltd. Pship,
131 S. Ct. 2238 (2011) ........................................................................................ 32
MRC Innovations, Inc. v. Hunter Mfg., LLP,
747 F.3d 1326 (Fed. Cir. 2014) ........................................................ 48, 49, 50, 51
Neo-Art, Inc. v. Hawkeye Distilled Prods. Co.,
883 F.2d 1027 (Fed. Cir. 1989) .......................................................................... 43
Neo-Art Inc. v. Hawkeye Distilled Products Co.,
2 U.S.P.Q.2d 1371 (C.D. Cal. 1987), affd, 883 F.2d 1027 (Fed.
Cir. 1989) ............................................................................................................ 27
Newel Companies, Inc. v. Kenney Mfg. Co.,
864 F.2d 757 (Fed. Cir. 1988) ............................................................................ 42
v

OddzOn Prods., Inc. v. Just Toys, Inc.,
122 F.3d 1396 (Fed. Cir. 1997) .............................................................. 33, 35, 56
Parker v. Flook,
437 U.S. 584 (1978) ............................................................................................ 26
Payless Shoesource, Inc. v. Reebok Intl Ltd.,
998 F.2d 985 (Fed. Cir. 1993) ............................................................................ 55
Peters v. Active Mfg. Co.,
129 U.S. 530 (1889) ........................................................................................ 4, 33
R.M. Palmer Co. v. Ludens Inc.,
236 F.2d 496 (3d Cir. 1956) ........................................................................... 4, 25
Richardson v. Stanley Works, Inc.,
597 F.3d 1288 (Fed. Cir. 2010) .......................................................................... 52
Ryco, Inc. v. Ag-Bag Corp.,
857 F.2d 1418 (Fed. Cir. 1988) .......................................................................... 32
Ryko Mfg. Co. v. Nu-Star, Inc.,
950 F.2d 714 (Fed. Cir 1991) ............................................................................. 32
Sams Riverside, Inc. v. Intercon Solutions, Inc.,
790 F. Supp. 2d 965 (S.D. Iowa 2011) ............................................................... 22
Scaltech, Inc. v. Retec/Tetra, LLC,
269 F.3d 1321 (Fed. Cir. 2001) .......................................................................... 18
Seirus Innovative v. Cabelas,
827 F. Supp. 2d 1150 (S.D. Cal. Oct. 25, 2011) ..................................... 65, 66, 67
Semmler v. American Honda Motor Co.,
990 F. Supp. 967 (S.D. Ohio 1997) .................................................................... 42
Sun Hill Industries, Inc. v. Easter Unlimited, Inc.,
48 F.3d 1193 (Fed. Cir. 1995) ............................................................................ 54
Superior Merchandise Co. v. M.G.I. Wholesale Inc.,
52 U.S.P.Q.2d 1935 (E.D. La. 1999) .................................................................. 54
Thomas America Corp. v. Fitzgerald,
869 F. Supp. 221 (S.D.N.Y 1994) ................................................................ 27, 42
vi

TriMed, Inc. v. Stryker Corp.,
608 F.3d 1333 (Fed. Cir. 2010) .......................................................................... 41
Victor Stanley, Inc. v. Creative Pipe, Inc.,
2011 U.S. Dist. LEXIS 112846 (D. Md. Sept. 30, 2011), affd,
2013 U.S. App. LEXIS 10265 (Fed. Cir. Feb. 20, 2013)
................................................................................................................. 59, 60, 61
STATUTES
35 U.S.C. 171 .............................................................................................. 2, 25, 27
35 U.S.C. 101 ........................................................................................................ 26
35 U.S.C. 101, 171 .............................................................................................. 25
35 U.S.C. 102 .............................................................................................. 5, 39, 43
35 U.S.C. 102(b) ............................................................................................. 18, 33
35 U.S.C. 103(a) ..................................................................................................... 5
35 U.S.C. 171 .................................................................................................passim
35 U.S.C. 282 ........................................................................................................ 32
OTHER AUTHORITIES
Fed. R. Civ. P. 56(c) ................................................................................................. 24
MPEP 1503.01 ...................................................................................................... 34
MPEP 1504(d) ....................................................................................................... 27
MPEP 1504(d) ..................................................................................................... 2, 4
Fed. R. Civ. P. 11 ..................................................................................................... 23
Fed. R. Civ. P. 12(b)(6) ................................................................................ 57, 58, 59

1

INTRODUCTION
In its Complaint, Hunters Edge asserts infringement of its design patents,
namely Design Patent No. D560,745 (the 745 patent, Dkt. 1-1) and Design
Patent No. D560,746 (the 746 patent, Dkt. 1-2) (collectively the Design
Patents). The 745 patent claims the ornamental design for a turkey feather and
head fan decoy, depicted in two figures which are photographic reproductions of a
turkeys tail feather fan (with the head). Dkt. 1-1 at 1, 3-4. The 746 patent claims
the ornamental design for a turkey feather fan decoy, depicted in three figures
which are photographic reproductions of a turkeys tail feather fan (without the
head). Dkt. 1-2 at 3-5. Both counts of Hunters Edges Complaint against Primos
should be resolved on summary judgment on any of three independent grounds.
First, the Design Patents are invalid because they do not include a new,
original design but only photographic reproductions of actual turkey tail feather
fans already existing in nature and widely known in the prior art. Purported
inventor J amie Bulger photographed a turkey and then cut-and-pasted natures
designsa natural form, in a natural poseinto his two patent applications; but
this is not a protectable design. Such imitation of a natural form is unpatentable.
35 U.S.C. 171. Protectable designs must include a considerable departure from
the natural formoften including fanciful, grotesque, exaggerated, or caricature-
like changes. The Design Patents here do not include any originality and should
2

never have issued. See Manual of Patent Examining Procedure (MPEP) 1504(d)
(A claim directed to a design for an article which simulates a well known or
naturally occurring object or person should be rejected under 35 U.S.C. 171 as
nonstatutory subject matter in that the claimed design lacks originality.).
Accordingly, the Design Patents are invalid as a matter of law because they do not
include a new, original designas required by statute.
Second, the Design Patents are invalid as a matter of law because they are
either anticipated or would have been obvious to one of ordinary skill designing
turkey decoys. Here, two prior art turkey tail feather fan decoysthe J akester
and the Pretty Boyeach disclose fundamentally the same overall visual
impression and features shown in the Design Patents: photographic reproductions
of a turkey tail feather fan for a decoy. Additionally, for years hunters have used
real turkey tail feather fans and real stuffed turkey decoys while hunting turkeys,
which are also prior art. Lastly, publications showing real, living turkeys also
anticipate the Design Patents photographic reproductions of the real turkeys and
these images have been available for decades. To the extent the prior art designs
do not anticipate the Design Patents, the Design Patents are obvious as a matter of
law.
Third, ignoring the lack of originality and clear invalidity, Primos accused
products do not infringe the Design Patents. Design patents have almost no
3

scope. See In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988). The sole test for
determining design patent infringement is the ordinary observer test, which asks
whether two designs are so similar that an ordinary observer would buy the
accused product believing it was the patented design. See Egyptian Goddess, Inc.
v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (en banc). Here, no rational fact
finder would determine that an ordinary observer would be deceived or confused.
Primos accused products include additional features not found in the Design
Patentsthey are life-like, full sized, three-dimensional turkey decoys, not just a
tail feather fanconfirming a different overall impression and that Primos
products do not infringe either design patent as a matter of law.
MEMORANDUM
I. UNDISPUTED MATERIAL FACTS AND STATEMENT OF
ELEMENTS
A. STATEMENT OF LEGAL ELEMENTS
The statement of undisputed facts must be viewed in the context of the
applicable legal elements. Therefore, Primos first provides the legal elements that
govern the summary judgment issues presented in this Motion. Then it presents its
statement of undisputed facts.
1. Originality
For a design to be patentable it must be new, original, and ornamental. 35
U.S.C. 171 ([W]hoever invents any new, original and ornamental design for an
4

article of manufacture may obtain a patent therefor, subject to the conditions and
requirements of this title.). A new and original design must be more than
mere imitation or simulation of known or natural form designs. In re Smith, 77
F.2d 513, 513 (C.C.P.A. 1935) (Smith I); In re Smith, 77 F.2d 514, 515 (C.C.P.A
1935) (Smith II). Designs of objects found in nature must considerably deviate
from natures blueprint. R.M. Palmer Co. v. Ludens Inc., 236 F.2d 496, 497-98
(3d Cir. 1956). [A] design which simulates an existing object or person is not
original as required by the statute. Manual of Patent Examining Procedure
(MPEP) 1504(d). To be protectable, a design must substantially depart from the
naturally occurring form and the context of the design should be examined.
Durdin v. Kuryakyn Holdings, Inc., 440 F. Supp. 2d 921, 936 (W.D. Wis. 2006)
(design substantially departed from natural female form by omitting head, neck,
and arms, and by applying it to a motorcycle part, not a doll or other human-
shaped object).
2. Anticipation
Anticipation derives from the Supreme Courts statement, over 125 years
ago: [t]hat which infringes, if later, would anticipate, if earlier. Peters v. Active
Mfg. Co., 129 U.S. 530, 537 (1889); see Bernhardt, LLC v. Collezione Europa
USA, Inc., 386 F.3d 1371, 1378 (Fed. Cir. 2004) (applying rule to design patents).
5

Accordingly, the same standard used for infringement applies for determining
anticipation when comparing the design claimed in a patent with the prior art:
if, in the eye of an ordinary observer, giving such
attention as a purchaser usually gives, two designs are
substantially the same, if resemblance is such as to
deceive such an observer, inducing him to purchase one
supposing it to be the other, the first one is [anticipated]
by the other.
Id. Design patent anticipation requires showing that a prior art reference is alike in
all material respects to the claimed invention. E.g., Hupp v. Siroflex of Am., Inc.,
122 F.3d 1456, 1461 (Fed. Cir. 1997). But the law does not require exact copies of
the patent design to find anticipation; instead, minor design differences do not
defeat a finding of anticipation. E.g., High Point Design LLC v. Buyers Direct,
Inc., 2014 WL 1244558, at *6 (S.D.N.Y March 26, 2014).
3. Obviousness
Section 103 of the Patent Act sets forth the test for obviousness, stating:
A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section
102 of this title, if the differences between the subject
matter sought to be patented and the prior art are such
that the subject matter as a whole would have been
obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject
matter pertains.
35 U.S.C. 103(a). In the design patent context, the ultimate question is whether
the claimed design [as a whole] would have been obvious to the designer of
6

ordinary skill who designs articles of the type involved . . . the inquiry is whether
one of ordinary skill would have combined teachings of the prior art to create the
same overall visual appearance as the claimed design. Durling v. Spectrum
Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996). See also, High Point Design,
LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1313 (Fed. Cir. 2013) (the precedent
of this court and our predecessor court assess obviousness in a design patent case
from the viewpoint of an ordinary designer).
Under 103, the scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to be ascertained; and
the level of ordinary skill in the pertinent art should be resolved. See Graham v.
John Deere Co., 383 U.S. 1, 17 (1966). When analyzing a design patent,
obviousness is determined from the vantage of the designer
1
of ordinary
capability who designs articles of the type presented in the application. Avia

1
The Federal Circuit teaches that the ordinary designer is the correct viewpoint
for examining obviousness. Avia Group Intl, Inc. v. L.A. Gear California, Inc.,
853 F.2d 1557, 1564 (Fed. Cir. 1988) (obviousness is determined from the
vantage of the designer of ordinary capability who designs articles of the type
presented in the application.) (quoting In re Nalbandian, 661 F.2d 1214, 1216
(C.C.P.A. 1981)). One Federal Circuit case, in dicta, suggested that obviousness
could be performed from the ordinary observer viewpoint. See e.g., Intl.
Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1243-44 (Fed. Cir.
2009). However, the Federal Circuit has recently clarified that obviousness is
determinedas it has been for decadesfrom the viewpoint of an ordinary
designer. High Point Design, 730 F.3d at 1313.

7

Group Intl, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1564 (Fed. Cir.
1988) (quoting In re Nalbandian, 661 F.2d 1214, 1216 (C.C.P.A. 1981)).
4. Infringement
The sole test for determining infringement of design patents is the
ordinary observer test. Egyptian Goddess, 543 F.3d at 678. This test
requires determining:
if, in the eye of an ordinary observer, giving such
substantially the same, if the resemblance is such as to
supposing it to be the other, the first one patented is
infringed by the other.
Id. at 670 (quoting Gorham Co. v. White, 81 U.S. 511, 526-27 (1871)).
Determining design patent infringement involves a two-step process. First,
one must properly construe the claim to determine its meaning and scope. E.g.,
Elmer v. ICC Fabricating, 67 F.3d 1571, 1577 (Fed. Cir. 1995) (citing Markman v.
Westview Instruments, Inc., 52 F.3d 967, 975 (Fed. Cir. 1995), affd, 517 U.S. 370
(1996)). Then, one must compare the properly construed claim to the accused
design. Id.
B. STATEMENT OF UNDISPUTED FACTS
1. The 745 Patent
1. Inventor J amie Bulger filed U.S. Patent Application No. 29/272,287
(the 287 application) on February 6, 2007, which later matured into the 745

patent.
head fan
In the 28
n decoy co
87 applicat
omprising t
tion, Bulg
the followi
8
er claimed
ing figures
d a design
s:
for a turk

key featherr and

9

10

745 patent file history (Ex. A
2
) at PRIMOS 000061-65.
2. On May 18, 2007, counsel for Bulger filed an Information Disclosure
Statement identifying 32 prior art patents. Id. at PRIMOS 000053-55.
Importantly, Bulger failed to disclose prior art products that employed
photographic reproductions of turkey tail feathers or actual turkey tail feathers,
which had existed in the marketplace for years prior to this application. Id. Primos
Decl. 14-20.
3. The prior art closest to the claimed design that was disclosed in the
Information Disclosure Statement included U.S. Patent No. 4,590,699 issued to
David Nicks on May 27, 1986 (the Nicks patent) (Ex. B) and U.S. Design Patent
No. D398,697 issued to Mark Scordo on September 22, 1998 (the Scordo patent)
(Ex. C). Primos Decl. 12. The Nicks patent discloses a turkey tail fan decoy in
line-drawing form with a head as shown below:

2
Exhibits referenced in this brief are attached to the simultaneously filed
Declaration of Will Primos (Primos Decl.).

Ex. B at
4
drawing
t Fig. 1.
4. The S
g form. Th
Scordo pat
he front vie
tent claims
ew is show
11
s the design
wn below:
n for a turk

key tail fann decoy in line-

Ex. C at
5
(Patent
oath or
not sho
descript
6
Bulger
t Fig. 1.
. On A
t Office)
declaration
own, Figu
tion. Ex. A
6. In re
s duty of
August 15,
issued a N
n was defe
ure 3 mus
A, 745 pat
esponse, c
disclosure
2007, the
Notice of A
ective and
st be dele
tent file his
counsel for
. In addit
12
e United St
Allowabilit
that becau
eted along
story at PR
r Bulger
tion, Bulge
tates Paten
ty to Bulg
use the rea
g with th
RIMOS 000
verified th
er claimed

nt and Tra
er, but ind
ar view of t
he corresp
0044-46.
he oath, a
d that the r
ademark O
dicated tha
the design
ponding fi
acknowled
requiremen
ffice
at the
was
igure
dging
nt to

cancel F
fan is th
cancelat
7
turkey
below:
Figure 3 w
he same as
tion of Fig
. There
feather an
was improp
s on the oth
gure 3. Id.
eafter, the
nd head fa
per becaus
her side of
at PRIMO
745 paten
n decoy a
13
e the view
f the fan,
OS 00039-4
nt issued cl
as shown a
w of the tu
but nevert
40.
laiming an
and descri
urkey on o
theless acq
n ornament
ibed in Fi

one side of
quiesced to
tal design f
gures 1 an
f the
o the
for a
nd 2

Dkt. 1-1
8
Bulger
which m
292 ap
See 74
best illu

3
The f
patent.
file hist
1.
3

2.
. On F
filed U.S
matured in
pplication a
6 file histo
ustrates the

figures in
This is lik
tory.
The 746
February 6
. Patent A
nto the 74
and the 28
ory (Ex. D
e claimed s

the origin
kely the res
6 Patent
6, 2007 (th
Application
46 patent.
87 applica
D) at PRIM
subject mat
nal applica
sult of poor
14
he same d
n No. 29/2
Dkt. 1-2.
ation is tha
MOS 00011
tter:
tion appea
r quality ph
day he file
/272,292 (
The only
at the turke
3-117. Fi
ar to be d
hotocopies
ed the 28
(the 292
y differenc
eys head i
igure 2 of t
different fr
s of the app

7 applicat
applicatio
ce between
is not claim
the applica
rom the is
plication in
ion),
on),
n the
med.
ation
sued
n the

Id. at PR
9
Informa
prior ar
patents,
disclose
product
decoys
20.
1
Allowab
RIMOS 00
9. In th
ation Discl
rt patents.
, which de
ed. Primo
ts that use
or real, ac
0. On
bility, indi
00116.
he 292 a
losure Stat
Id. at P
epict line-d
s Decl. 1
ed photogr
ctual turkey
August 1
icating tha
application
tement as
PRIMOS 0
drawn turk
12. Once
raphic repr
y tail feath
18, 2007,
at the oath
15
n, Bulger
filed in th
000099-10
key tail fe
again, Bu
roductions
her designs
the Pate
was defec
s counsel
he 287 ap
1. Again
eathers, w
ulger failed
s of turkey
s. Id.; Pri
ent Office
ctive, and
l filed th
pplication
n, the Nick
were the cl
d to disclos
y tail feath
imos Decl.
e issued
indicating

e exact s
disclosing
ks and Sc
osest prio
se the prio
hers in tu
. 11-13,
a Notice
g that Figu
same
g 32
ordo
r art
or art
urkey
, 14-
e of
ure 3
16

must be deleted along with the corresponding figure description because the rear
view of the design was not shown or described in the specification. Id. at PRIMOS
000090-92.
11. On October 10, 2007, Bulgers counsel again asserted that the oath
was proper and stated that the view of the turkey on one side of the fan is the
same as on the other side of the fan and thus Figures 2 and 3 do not require
revision, but acquiescing to the cancelation of Figure 3. Id. at PRIMOS 000085-
86.
12. On J anuary 29, 2008, the 746 patent issued claiming a turkey feather
fan decoy as shown in the following drawings:

17


Dkt. 1-2
submitt
submitt
turkeys
a correc
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3. Bulger Failed to Disclose Prior Art
14. Both of the Design Patents were filed on February 6, 2007meaning
the critical date
4
for prior art is February 6, 2006. 35 U.S.C. 102(b).
15. Several turkey tail feather fan decoys were publicly available and
offered for sale well before the critical date of the Design Patents. First, Flambeau,
Inc. (Flambeau)a turkey decoy competitor of Primossold a turkey tail
feather fan decoy called the J akester Fantail Turkey Decoy (J akester) at least as
of 2002. Page 22 of Flambeaus 2002 catalog (Ex. E at PRIMOS 000018), shows
the J akester, which is a photographic reproduction of a turkeys tail feather fana
jake in particular.
5
Primos Decl. 15. A photograph of the J akester from
Flambeaus 2002 catalog is provided below:

4
The critical date for purposes of applying Section 102(b) prior art is the date
exactly one year prior to the date of application for the patent. Scaltech, Inc. v.
Retec/Tetra, LLC, 269 F.3d 1321, 1327 (Fed. Cir. 2001).
5
A jake is a juvenile male turkey; a tom is a mature male turkey. The top tail
feathers of a jake are often longer than the other tail feathers. All of the tail
feathers of a tom are the same length. Primos Decl. at 15, n. 2, 37, 43.

Id. at PR
PRIMO
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22

Mobile productaccused of infringement in this casewas a full, stuffed
(taxidermized) tom turkey used as a decoy by Primos hunters and affectionately
named Bob. B-Mobile is short for Bob Mobile. Primos used Bob as a decoy
on videoed turkey hunts prior to the critical dateincluding in 2005. Primos Decl.
19; Ex. Q, Primos 2005 Truth Video.
7
These prior usesmade publicly
available by Primos before the critical dateconstitute prior art to the Design
Patents.
18. Fourth, published prior art photographs of actual living turkeys had
been available for decades prior to the critical date of the Design Patents. Primos
Decl. 17; e.g., Ex. P, National Wild Turkey Federation (NWTF) Websites. Any
exemplary photo of a live turkey showing its tail feather fan design constitutes
prior art that should have been disclosed. 35 U.S.C. 102(b) (prior art that
precludes a patent includes inventions shown in a printed publication). For
example, website publications of photos showing real turkeys from a well-known

Conventional Filing have been sent via United States mail to both the Court and
opposing counsel on October 24, 2014. It is Primos understanding that the Court
will then upload a copy of Ex. L for the record.
7
Ex. Q (Primos 2005 Truth Video) is being submitted by conventional filing
because of its file type and file size. A copy of this video and a Notice of
Conventional Filing have been sent via United States mail to both the Court and
opposing counsel on October 24, 2014. It is Primos understanding that the Court
will then upload a copy of Ex. Q for the record.
23

industry sourcethe National Wild Turkey Federation (NWTF)were available
at least by 2004 and 2006. Ex. P, NWTF Websites; Primos Decl. 17, 40.
8

19. None of the prior artincluding the J akester, the Pretty Boy, the real
stuffed turkey decoys, the real turkey tail feather fan decoys used by hunters, and
the publications showing photos of living turkeys having tail feather fanswas
disclosed to the Patent Office during prosecution of the Design Patents. Primos
Decl. 11-12, 15-20. Had these prior art turkey decoys been available to the
Patent Office, the Design Patents would not have issued. Primos Decl. 20.
4. The Abandoned 2009 Claim
20. On March 4, 2009, Hunters Edge and Bulger, through its patent
counsel, sent a cease and desist letter to Primos. A copy of that letter is attached
(Ex. I).

8
Primos provides the exemplary 2004 and 2006 National Wild Turkey Federation
(NWTF) websites (Ex. P) using the Internet Archive Wayback Machine. The
Wayback Machine printouts remain publicly available at www.archive.org. The
Wayback Machine is a website operated by the Internet Archive, which is a non-
profit organization. The Wayback Machine provides users access to a digital
library of archived webpages. The Internet Archives mission is to preserve
information contained on the Internet and provide permanent access to collections
that exist in digital format. The Wayback Machine allows a user to access an
archived webpage by typing in a website address and specifying the applicable
date. The Wayback Machine websites are admissible as evidence of prior art.
Sams Riverside, Inc. v. Intercon Solutions, Inc., 790 F. Supp. 2d 965, 981 (S.D.
Iowa 2011). The authenticating affidavit of Internet Archive that runs the
Wayback Machine will be subsequently filed.
24

21. On April 15, 2009, Primos responded, after reviewing the Design
Patents and their respective file histories (Ex. J ). Specifically, Primos identified
the J akester and the Pretty Boy prior art that were not disclosed by Bulger to the
Patent Office during prosecution and which invalidate the Design Patents. Primos
also asserted that due to Bulgers non-disclosure of these prior art designs, issues
of inequitable conduct likely rendered the patent unenforceable. Primos believed
the issues had been resolved when it sent its letter. Primos Decl. 23.
22. Following Primos letter, Hunters Edges/Bulgers patent counsel
never further asserted any claim. Primos Decl. 24.
23. Since 2009, Primos has continued to sell its three-dimensional turkey
decoy products having a turkey feather fan, and has expanded its product line.
Primos now sells the B-Mobile and the Killer B products. Primos Decl. 25.
Primos decoy products are life-like, full sized, three-dimensional plastic turkey
decoysas shown by the B-Mobile and Killer B products depicted below. Primos
Decl. 19, 25, & 49-52.

2
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26

(1986). The party seeking summary judgment has the initial burden to demonstrate
the absence of any genuine issue of material fact. Celotex Corp. v. Catrett, 477
U.S. 317, 323 (1986). While the Court draws all reasonable inferences in favor of
the non-movant, the movant does not need to disprove matters that the non-movant
must prove at trial. Id. When the movant meets its burden, the burden shifts to the
non-movant to provide specific facts showing that there is a genuine issue for
trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586
(1986).
II. THE DESIGN PATENTS LACK PATENTABLE ORIGINALITY
The Design Patents purport to protect photographic reproductions of real
turkey tail feathers and therefore lack the originality required by the Patent Act.
Design patents issue to [w]hoever invents any new, original and ornamental
design for an article of manufacture. 35 U.S.C. 171. [D]esign patents have
almost no scope. See In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988). Design
patents protect only the novel, non-functional aspects of an ornamental design. Id.
A design patent directed to a design occurring in nature is invalid as non-
original. 35 U.S.C. 171. Design patents directed to a natural form, in a natural
pose are invalid as a matter of law. Smith I, 77 F.2d at 513; Smith II, 77 F.2d at
515. A mere imitation or reproduction of a naturally occurring design is not
protectable. E.g., Smith II, 77 F.2d at 515 (finding mere simulation or imitation
27

of natural forms, which any artisan has the right to apply to any object, is not
properly the subject of a patent.). Rather, some grotesqueness, exaggeration,
or considerable departure from the natural formnot just simulation or
replicationis required. Id.; Smith I, 77 F.2d at 514; R.M. Palmer Co. v. Ludens
Inc., 236 F.2d 496, 497-98 (3d Cir. 1956) (Fanciful, decorated productions of
ornamented caricatures as patentable).
Ideas directed to non-eligible subject matter cannot be patented; if the Patent
Office mistakenly issues a patent on such subject matter, the patent is invalid. See
35 U.S.C. 101, 171; Animal Legal Def. Fund v. Quigg, 932 F.2d 920, 929-30
(Fed. Cir. 1991) ([W]hether patents are allowable for [challenged subject matter]
is not a matter of discretion, but of law . . . Either the subject matter falls within
Section 101 or it does not.).
9
The non-eligible subject matter categories include
laws of nature, natural phenomena, and abstract ideas. See, e.g., Diamond v.
Chakrabarty, 447 U.S. 303, 309 (1980) (Such discoveries are manifestations
of . . . nature, free to all men and reserved exclusively to none.) (quoting Funk
Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948)); see also

9
The case law clarifies the relationship between 101 and 171, stating that the
tests for determining the validity of a design patent issued pursuant to 35 U.S.C.
171 are identical to those for determining the validity of a utility patent issued
pursuant to 35 U.S.C. 101. In re Klein, 987 F.2d 1569, 1570 (Fed. Cir. 1993).
28

Diamond v. Diehr, 450 U.S. 175, 185 (1981); Parker v. Flook, 437 U.S. 584
(1978).
While the law does not prohibit patent protection of depictions modifying
designs found in nature (i.e., babies, women, animals), to be protectable a design
must substantially depart from the naturally occurring form. Durdin v. Kuryakyn
Holdings, Inc., 440 F. Supp. 2d 921, 936 (W.D. Wis. 2006) (design substantially
departed from natural female form by omitting head, neck, and arms, and by
applying claimed design to a motorcycle part, not a doll or other human-shaped
object).
If a design lacks this departure from naturethus lacking originalitythe
design is invalid because it merely simulates a naturally-occurring design that an
applicant did not invent. See MPEP 1504(d) (A claim directed to a design for
an article which simulates a well known or naturally occurring object or person
should be rejected under 35 U.S.C. 171 as nonstatutory subject matter in that the
claimed design lacks originality.); Smith II, 77 F.2d at 515. A design depicting an
animal that is not stylized, caricaturized, or abnormal in any way is not patentable.
MPEP 1504(d) (providing form rejection for when an animal which is not
stylized or caricatured in any way); Smith I, 77 F.2d at 514.
Further, even non-natural animal designs similar to other well-known, non-
natural animal designs are not original. See Knickerbocker Plastic Co. v. B.
29

Shackman & Co., 184 F.2d 652, 654 (2d Cir. 1950) (the Disney product had so
popularized the not too unusual idea of a grotesque animal design for this
particular fowl that more than this type of change would appear to be needed to
show invention.). See also Thomas America Corp. v. Fitzgerald, 869 F. Supp.
221, 225 (S.D.N.Y 1994) (simulated antique telephone not patentable: Simply
put, Fitzgerald has done too good a job of reproducing early twentieth century
public domain phones . . . .); Neo-Art Inc. v. Hawkeye Distilled Products Co., 2
U.S.P.Q.2d 1371, 1374 (C.D. Cal. 1987) affd, 883 F.2d 1027 (Fed. Cir. 1989)
(invalidating patent for alcoholic beverage dispenser imitating medical intravenous
fluid dispenser from M*A*S*H show: The Court is aware of no case . . . in
which a court has held that simply designing one product to look like another, the
design for which has long been in the public domain, entitles the designer to patent
protection.).
In addition, the designs contextmeaning the type of product on which the
designed is used forsignificantly impacts the non-originality analysis. See Smith
I, 77 F.2d at 513-14 (determining design imitating a baby used for baby dolls not
patentable); Durdin, 440 F. Supp. 2d at 936 (finding human female design
patentable because it was applied to a motorcycle part, not a doll or other human-
shaped object).
30

The Design Patents at issue here are directly analogous to the baby designs
used for baby dolls in Smith I and Smith II. E.g., Smith I, 77 F.2d at 513. There,
the court described the design as follows: [t]he figure of the infant seems to be
that of one about one year of age, and, so far as can be detected, is a representation
of a normal child of that age, with no unusual features not found in the ordinary
child. Id. The court found the baby doll designs invalid because the purported
inventor merely took a natural form, in a natural pose, and utilize[d] it as his
design. Id.; Smith II, 77 F.2d at 514 (It seems to us that there is no such
departure from the natural form as to render the design sufficiently distinctive in
this respect to merit allowance of the claim.).
A similar analysis applies here. Bulger merely obtained a photograph of the
natural form of a turkey tail feather fan and then reproduced it on a synthetic
material to look exactly like the turkey tail feather fan in the photograph. No
original design exists, and thus no patentable subject matter exists.
Hunters Edges advertising for its patented product belies any claim of
originality. Its website states:
The TransFan [the patented product] replicates a gobbler
in full strut . . . the TransFan is so lifelike, it could be
mistaken for the real thing.
See Hunters Edge website (Ex. K). Additionally, the Hunters Edge website has a
link for a video in which Bulger discusses the impetus for his invention: a real
31

turkey tail feather fan used by his brother and others to hunt turkeys for several
years before Bulgers purported invention. Bulger states on the video that in
designing his tail feather fan, he wanted to make it look as realistic as we can.
See TransFan Video (Ex. L) http://www.hunters-
edge.com/movies/TransFan%20promo.html, at 02:11.
But Hunters Edge is not unique in trying to make and sell products that look
exactly like the turkeys found in nature. Carry-Lite, maker of the Pretty Boy,
claims: Our only real competition is Mother Nature. Ex. G, EBSCO website
(italics original). The Carry-Lite catalog describes the Pretty Boy as the most
realistic strutting tom decoy on the market! Ex. H, Carry-Lite 2006 Product
Guide at PRIMOS 000024. The Pretty Boy gobbler uses an artificial fan
(included) or you can dry a real turkey fan and use it for added realism
(instructions for creating your own decoy fan are included). Id.
Likewise, Flambeaus J akester product is advertised to mimic a real turkey:
because [the J akester] has a realistic jake fan tail in full strut printed on both sides
of the poly vinyl body, toms will circle it looking for the head which means youre
guaranteed a shot no matter where you set up. See
http://coolhuntingstuff.com/hunting-decoys/flambeau-outdoors-jakester-fantail
(Ex. M). See also Exs. E (moves like a real turkey fan in the slightest breeze)
32

and F (J akester strutting fantail decoy is the easy way to create the illusion of a
jake strutting his stuff to a receptive hen).
Even Primos advertising shows that its accused products derive from the
desire to mimic a real turkey:
The plan to hatch B-MOBILE started with a real
stuffed gobbler we named Bob. He wasnt the easiest
thing to carry around in the woods, but he got the job
done. We decided to try and build a decoy that worked
as well as Bob but was more mobile. After working with
prototypes of full strutting gobblers, we finally had it all
come together with B-MOBILE, short for Bob-mobile.
Now you can all have all the benefits of a mounted
gobbler in an easy to carry unit.
Primos website (Ex. N). None of the prior art designs, nor Bulgers Design Patents
satisfy the originality standard of the Patent Actespecially because the prior art
real, living turkey tail feather designs have been known and published for decades.
E.g., Ex. P, NWTF Websites. Simply copying Mother Natureby
photographing a real turkeys tail feather fan (and head)is not enough to enjoy a
monopoly granted by the patent system.
10

10
Primos does not propose a categorical prohibition on patenting naturally
occurring animals or other designs. Rather, in order to enjoy design patent
protection, the inventor must add originality and do something more than merely
photograph, imitate, or mimic naturally occurring designs. See Smith I, 77 F.2d at
513-14 (distinguishing other baby doll designs as patentable because they had
unusual, striking features, departing from the ordinary.).
33

The Design Patents claim photographic reproductions of a real turkey tail
feather fan and head as they exist in a natural form and in a natural pose. By
photographing a real turkeys tail feather fan, and reproducing it on a fabric so that
it looks as realistic as possible, Bulger confesses that no originality exists. His
unpatentable invention looks just like the real turkey photographed. Therefore, the
Design Patents are invalidencompassing only non-original, non-statutory subject
matter. See 35 U.S.C. 171. Accordingly, as a matter of law, summary judgment
should be granted in Primos favor.
III. THE PATENTED DESIGNS ARE EITHER ANTICIPATED OR
OBVIOUS IN LIGHT OF PRIOR ART DECOYS THAT USE
ACTUAL OR PHOTOGRAPHIC REPRODUCTIONS OF ACTUAL
TURKEY TAIL FEATHERS
The Courts analysis can and should end with the lack of originality. There
is no place in design patent law for protection of photographic reproductions of
real turkey tail feather fans (with or without heads), which is what Bulger patented.
Nevertheless, if the Court overlooks this dispositive lack of originality, the Design
Patents are also invalid because they are anticipated and/or rendered obvious by
the prior art.
Patents are presumed valid under 35 U.S.C. 282. However, questions of
validity are matters of law appropriate for summary judgment. See Ryko Mfg. Co.
v. Nu-Star, Inc., 950 F.2d 714, 716 (Fed. Cir 1991). The burden of showing
34

invalidity by clear and convincing evidence rests on the party asserting invalidity.
Microsoft Corp. v. i4i Ltd. Pship, 131 S. Ct. 2238, 2239 (2011). This burden is
more easily met where a challenger relies on prior art not previously considered by
the Patent Office when examining the patent. Ryco, Inc. v. Ag-Bag Corp., 857
F.2d 1418, 1423 (Fed. Cir. 1988).
Here, the prior art at issue concerns: published photographs of actual
turkeys; actual stuffed turkeys; real turkey tail feather fans; and photographic
reproductions of turkey tail feather fans used in commercial products (the
Flambeau J akester and the Carry-Lite Pretty Boy). Primos Decl. 15-20, 23.
None of this prior art was considered by the Patent Office during the prosecution
of the 745 and the 746 patents. See, e.g., Exs. A and D. This prior art illustrates
that the design is anticipated or rendered obvious; therefore the Design Patents are
invalid.
A. THE DESIGN PATENTS ARE ANTICIPATED
A design patent is invalid if the claimed designs are anticipated by a public
use, a patent, or a printed publication available more than a year before the patents
filing date. See 35 U.S.C. 102(b). Federal courts have long established that the
same test must be used for anticipation and infringement. The Supreme Court
stated: [t]hat which infringes, if later, would anticipate, if earlier. Peters v.
Active Mfg. Co., 129 U.S. 530, 537 (1889); Bernhardt, 386 F.3d at 1378 (applying
35

rule to design patents). Thus, the sole test for patent invalidity by anticipation is
the ordinary observer testthe test for infringement.
11
Intl Seaway, 589 F.3d at
1240 (citing Egyptian Goddess, 543 F.3d at 678).
The anticipation test requires the Court to 1) construe the claimed design,
and 2) compare the claimed design to each anticipatory reference. OddzOn Prods.,
Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404 (Fed. Cir. 1997). The ordinary
observer test requires considering the claimed design as a whole while determining
differences between the claimed and the anticipatory designs. Egyptian Goddess,
543 F.3d at 675. This mandated overall comparison should address significant
differences between the two designsnot minor or trivial differences that
necessarily exist between any two designs that are not exact copies. Intl Seaway,
589 F.3d at 1243; Hupp v. Siroflex of America Inc., 122 F.3d 1456, 1461 (Fed. Cir.
1997). J ust as minor differences between a patented design and an accused
articles design cannot . . . prevent a finding of infringement so too minor
differences cannot prevent a finding of anticipation. Intl Seaway, 589 F.3d at
1243 (internal references omitted).

11
As established, the ordinary observer test provides 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 [anticipated] by the other. Egyptian Goddess, 543 F.3d at 678 (citing
Gorham, 81 U.S. at 528).
36

1. Claim Construction
As to the first step, the Court should construe the claimed design in the 745
and the 746 patents as they were presented and prosecuted at the Patent Office.
Design patents are typically claimed as shown in the drawings and claim
construction must be adapted to a pictorial setting. See, e.g., Contessa Food
Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002) (construing a
design patent claim as meaning a tray of a certain design as shown in Figures 1
3). An illustration often depicts a design better than it could be by any
description and a description would probably not be intelligible without the
illustration. Dobson v. Dornan, 118 U.S. 10, 14 (1886); MPEP 1503.01([A]s a
rule, the illustration in the drawing views is its own best description.).
Written detailed descriptions of the features shown in the drawings may be
used for claim construction, but are not required and simply aid in determining
infringement based on the patent figures themselves. E.g., Crocs, 598 F.3d at
1302; Egyptian Goddess, 543 F.3d at 679. The detailed description translates the
patent drawings into words that evoke the visual image of the claimed design.
Durling, 101 F.3d at 103. The description must be specific enough to evoke a
visual image constant with the claimed design. Id. at 104. [D]esign patents are
entitled to almost no scope beyond the precise content of the patent drawings.
Brooks Furniture Mfg., Inc. v. Dutailier Intl, Inc., 393 F.3d 1378, 1383 (Fed. Cir.
37

2005) (emphasis added) (citing Elmer, 67 F.3d at 1577). Finally, a proper
construction focuses on the overall visual impression of the designs ornamental
features. OddzOn Prods., 122 F.3d at 1405.
The 745 patent simply claims a semi-circular shaped reproduction of a
natural turkeys tail feather fan and the turkeys head. The 746 patent design
shows a semi-circular shaped reproduction of a natural turkey tail feather fan, not
including the turkeys head. The prosecution history makes clear that both designs
are photographic reproductions. See 746 file history (Ex. D) at PRIMOS 00008
(confirming both applications employ virtually the same photographs).
Accordingly, the 746 patent should be construed as designs comprising a
semi-circular shaped photographic reproduction of a natural turkey tail
feather fan. The 745 patent should be construed as designs comprising a semi-
circular shaped photographic reproduction of a natural turkey tail feather fan
and turkeys head.
This construction of the Design Patents is consistent with the file history,
and the inventors personal description in a video describing his alleged invention.
See Hunters Edge website video (Ex. L). This description likewise follows the
explanation of the commercial product on Hunters Edges website. See Ex. K.
There is nothing in the file history that would suggest a more narrow construction
of the claimed designs.
38

2. The Design Patents Are Anticipated
Turning to anticipation, Primos first addresses the 746 patent. The claimed
design is a semi-circular shaped photographic reproduction of a natural turkey tail
feather fan as shown below:

This design is clearly anticipated. The prior art discloses the same semi-
circular shaped photographic reproduction of a natural turkey tail feather fan. The
J akester and the Pretty Boy photographically reproduce natural turkey tail feather
fans having the same overall semi-circular shape with only minor, non-material
differences.

L
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and num
alone, a
before t
Prior
Like the de
raphic repr
d designs in
n addition
y turkey hu
fan also
ly admit th
tail feathe
Hunters
tail feather
merous oth
and as part
the critical
r Art J akest
sign claim
roduction)
n the Desig
to comme
unters to
anticipates
hat they p
er fans wi
Edge web
r fans were
her resourc
t of Bob, t
l date of th
ter
med in the
a natural t
gn Patents.
ercially so
simulate (
s the claim
ersonally
th real tur
bsite video
e the inspir
es confirm
the stuffed
he 746 pat
39

746 patent
turkey tail
.
ld decoys,
(or duplica
med desig
along wi
rkey tail f
o (Ex. L), a
ation for th
m the public
d tom turke
tent. Prim
Prior A
t, these prio
feather fa
, the use o
ate) the lo
gns. Mr.
ith other h
feather rep
at 00:12-0
he claimed
c use of rea
ey, publicl
mos Decl. a
Art Pretty B
or art desig
an and thus
of real turk
ook of a r
Bulger an
huntersu
production
00:26. Ind
d design. I
al turkey t
ly used by
at 18-20
Boy
gns mimic
s anticipate
key tail fea
real turkey
nd his bro
used all-na
ns for sev
deed, these
Id. Mr. Pri
ail feather
y hunters y
0; Exs. L, N

(via
e the
ather
y tail
other
atural
veral
real
imos
fans
years
N, O
40

& Q. The use of a real turkey tail feather fan clearly anticipates the claimed
designs, which are merely a photographic reproduction of the same actual turkey
tail feather fan.
Further, publications showing live turkeysapart from the all-natural turkey
decoys described abovealso anticipate the claimed designs. Published
photographs of the undeniable existence of living turkeys with Mother Natures
ornamental designhaving tail feather fansare attached as Ex. P. These 2004
and 2006 websites show pictures of all-natural living turkeys having the same tail
feather designs as the Design Patents. Accordingly, the designs are anticipated.
The High Point Design LLC v. Buyers Direct Inc., 2014 WL 1244558, at
*2, 6-7 (S.D.N.Y. March 26, 2014) case illustrates that the Design Patents here are
anticipated and thus invalid. In High Point, the court determined each of two prior
art referencesthe Penta and the Laurel Hillinvalidated the fuzzy slipper
patent based on the courts broad claim construction. Id. at *6-7. The Penta prior
art design and the invalid patent design are shown below.
41

The court determined on summary judgment that both prior art designs
independently invalidated the patent because each conveyed the same overall
visual effect as the claimed slipper. Id. In addition, the court disregarded an
experts close study and opinion identifying indistinguishable differences as
completely unnecessary and irrelevant to the ordinary observer test. Id. at *7.
The court confirmed that the law does not require identical designs for finding
anticipation; rather, minor, trivial differences do not defeat a finding of
anticipation. Id. at *6 (citing Intl Seaway, 589 F.3d at 1243). The court also
questioned how the invalid fuzzy slipper design even issued as a patent. Id. at *7
([h]ow and why the 183 Patent ever issued in the first instance given its lack of
novelty is known only to the PTO; nevertheless, that patent grant is without real
force because the Court finds the patent invalid under 35 U.S.C. 102.).

T
Patents
Pri
Pri
T
because
natural
and the
impress
by an or
The prior ar
as anticipa
or Art J ake
ior Art Rea
The J akeste
e each illu
turkey tail
e Pretty Bo
sion of a ph
rdinary ob
rt dictates t
ated, as sho
ester (left),
al Live Tur
er and the
ustrates a
l feather fa
oy, like sh
hotographi
server.
the same r
own below
, 746 Pate
rkey NWT
e Pretty B
semi-circu
an. The in
hading and
ic reprodu
42
esult here
w.
ent (middle
TF Website
Boy prior
ular shaped
nsubstantia
d texture,
ction of tu
invalidat
e), Prior A
e (left), Tra
art anticip
d photogr
al differenc
do not ch
urkey tail f
ting both th
Art Pretty B
ansFan Vid
pate the D
raphic repr
ces betwee
hange the
feather fan
he Design
Boy (right)

deo (right)
Design Pat
roduction
en the J ake
overall vi
as determ

tents
of a
ester
isual
mined
43

In addition, the real turkey tail feather fan public uses (Ex. L; Primos Decl.
18), the prior art publications of turkey photographs (Ex. P, NWTF Websites),
and the real turkey tail feather fan on Primos Bob decoy (Ex. Q, Primos 2005
Truth Video; Primos Decl. 15-20) also convey the same overall impression to an
ordinary observer as the Design Patents photographic reproductions of the same
thing. Like the fuzzy slipper design, the Design Patents should never have
issued and have no real force. 2014 WL 1244558, at *7. As a matter of law they
are anticipated and invalid.
B. THE DESIGN PATENTS ARE OBVIOUS
The general obviousness analysis for patents includes several inquiries:
(1) determination of the scope and content of prior art;
(2) ascertainment of the differences between the prior art
and the claim at issue;
(3) resolution of the level of ordinary skill in the
pertinent art; and
(4) consideration of secondary circumstances such as
commercial success, long felt but unresolved needs, and
failure of others.
See Graham v. John Deere Co., 383 U.S. at 17-18. Summary judgment of
obviousness is appropriate if the content of the prior art, the scope of the patent
claim, and the level of ordinary skill in the art are not in material dispute, and the
obviousness of the claim is apparent in light of these factors. TriMed, Inc. v.
Stryker Corp., 608 F.3d 1333, 1341 (Fed. Cir. 2010) (citing KSR Intl Co. v.
44

Teleflex Inc., 550 U.S. 398, 427 (2007)). Where there is no genuine issue
regarding the underlying facts, summary judgment may be granted on the issue of
obviousness even though the ultimate conclusion of obviousness may be disputed
and even though some facts favor obviousness and some non-obviousness.
Semmler v. American Honda Motor Co., 990 F. Supp. 967, 974 (S.D. Ohio 1997)
(citing Newel Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757 (Fed. Cir. 1988)).
In the design patent context, the ultimate obviousness question is whether
the claimed design [as a whole] would have been obvious to the designer of
ordinary skill who designs articles of the type involved . . . the inquiry is whether
one of ordinary skill would have combined teachings of the prior art to create the
same overall visual appearance as the claimed design. Apple, Inc. v. Samsung
Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (quoting Durling, 101 F.3d at
103).
In addition to directly comparing the patented designs to specific prior art
designs, other naturally-occurring designs in the public knowledge should also be
considered. See, e.g., In re Finch, 535 F.2d 70, 72 (C.C.P.A. 1976) (finding
human body design obvious because use known for 10,000,000 years and in
virtually every art form for centuries); Thomas America, Corp. v. Fitzgerald, 869
F. Supp. 221, 225 (S.D.N.Y 1994) (Unpatentable material is not only that which
is known to the public, but also that which is readily deducible from publicly
45

available material by a person of ordinary skill in the pertinent field of endeavor.)
(citing Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150 (1989)).
Slight modifications of prior art designs, such as dimensions or length, do
not make a design non-obvious and are the work of a mechanicnot an inventor.
See Bonito Boats Inc. v. Thunder Craft Boats Inc., 489 U.S. 141, 149-50 (1989);
Neo-Art, Inc. v. Hawkeye Distilled Prods. Co., 883 F.2d 1027, 1027 (Fed. Cir.
1989) (finding only dissimilar element compared to prior art was change in length
that failed to render design non-obvious).
1. Level of Ordinary Skill in the Art
The person of ordinary skill in the art is a hypothetical person who is
presumed to know all the relevant prior art, which includes all publicly available
publications, among other things. See In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed.
Cir. 1995); 35 U.S.C. 102.
Based on the Design Patents subject matter, the innovation level and
required technical background of a person of ordinary skill in this art is low. This
level of ordinary skill would not require an advanced education, specialized
training, scientific or technical experience, or expert knowledge; it would only
require knowledge of what a turkey tail feather fan looks like. Any person with
experience designing a turkey decoy would qualify as a person of ordinary
skill in the art, regardless of education.

P
specific
living tu
turkey t
Howeve
anticipa
A
compris
turkey
construe
natural
T
2.
Primos beli
cally, the J a
urkeys (N
tail fan fea
er, to the
ated, they a
As establish
sing a sem
tail feathe
ed as comp
l turkey ta
These claim
The Hun
ieves that
akester, th
NWTF web
athers by h
extent th
are invalid
hed, the cl
mi-circula
er fan with
prising a s
ail feather
med design
nters Edg
the Desig
e Pretty B
bsites), and
hunters pri
e Court d
as obvious
aimed desi
r shaped
h a turkey
emi-circul
fan.
ns are show
74
46
ge Design P
gn Patents
oy, the pub
d the use of
ior to the c
determines
s.
ign of the
photogra
ys head. T
lar shaped
wn below:
45 Patent
Patents ar
are anticip
ublications
f an actual
critical dat
that the
745 paten
aphic repr
The 746 p
d photogra
re Obviou
pated by t
of photogr
l turkey (B
te of the D
Design P
nt should b
roduction
patented de
aphic repr

s
the prior a
raphs of ac
Bob) and ac
Design Pat
Patents are
be construe
of a nat
esign shoul
roduction
art
ctual
ctual
ents.
e not
ed as
tural
ld be
of a
47

746 Patent
3. Prior Art Designs
Flambeau is a competitor in the turkey decoy market. It has sold the
J akester, depicted below, since at least 2002. Statement of Facts (SOF) 15.

Prior Art J akester
48

The J akester shows a semi-circular shaped photographic reproduction of a
natural tail feather fan. While there are minor differences between the design
shown in the 746 patent and the J akester, to the extent they are sufficient to avoid
anticipation, one of ordinary skill in the art of designing turkey decoys would find
the invention claimed in the 746 patent obvious in view of the J akester prior art.
12

Primos Decl. at 41-47.
The addition of the turkeys head to the design of the 745 patent is almost
meaningless in the context of the obviousness analysis for a turkey decoy. It
would be obvious to any designer of a turkey decoy to add a head to a turkey tail
feather fan to make it more life-like. Primos Decl. 43-45. Thus, the J akester
prior art alone renders the designs claimed in the Design Patents obvious.
Likewise, the Pretty Boy gobbler design offered for sale since 2005, to the
extent it does not anticipate the designs of the Design Patents, renders the claimed
design obvious. The Pretty Boy turkey tail fan is depicted below:

12
A jake shown in the J akester is a juvenile male turkey having different length
tail feathers, while a tom is a mature male turkey having tail feathers of equal
length as shown in the Pretty Boy. It would have been obvious and an obvious
design choice to use a mature toms tail feather fan instead of a jakes tail feather
fan as shown in a J akester. Primos Decl. 15, n. 2, 37, 43.

T
shaped
includes
are not
find the
gobbler
just obv
In
one of o
patent (
The Pretty
photograp
s the turke
identical,
e designs c
r decoy. T
viousness.
n the obvi
ordinary sk
(depicting
Boy deco
phic reprod
eys head.
one of ord
claimed in
he differen
Primos De
iousness an
kill in the
a turkey he
Prior A
oy, like th
duction of
While the
dinary skill
the Desig
nces are m
ecl. 34-
nalysis, pr
art, combi
ead, Ex. B
49
Art Pretty B
he claimed
f a natura
e Pretty Bo
l in the art
gn Patents
minimal j
40.
rior art ref
ining the J
B), the use/
Boy
d designs,
al turkey t
oy design
t of designi
obvious in
ustifying f
ferences m
J akester, th
/publication
includes a
tail feather
and the cl
ing turkey
n view of t
finding ant
may be com
he Pretty B
n of actual

a semi-circ
r fan. It
laimed des
y decoys w
the Pretty
ticipation
mbined. T
Boy, the N
l turkeys
cular
also
signs
would
Boy
not
Thus,
Nicks
like
50

Primos Bob and the NWTF websites and actual turkey tail feather fans used in
the hunting context (using any one of these as a primary reference and others as
secondary references), would also render obvious the designs claimed in the
Design Patents.
Combining references is taught in the prior art because the objective of a
turkey decoy is to realistically replicateas closely as possiblea real turkeys
tail feather fan, which is what all of the prior art decoys are designed to do. See
Ex. L (Bulger stating on video that in designing his tail feather fan, he wanted to
make it look as realistic as we can.); Primos Decl. 42-46; Exs. H and M-P
(touting realistic designs). Thus, an ordinary designer would combine features
(such as adding a head to the J akester from the Pretty Boy, the Nicks patent, or
Primos Bob decoy) in an attempt to most-closely reproduce Mother Natures
design. See Ex. P, NWTF Websites.
This case is similar to MRC where the Federal Circuit affirmed summary
judgment of invalidity based on obviousness. MRC Innovations, Inc. v. Hunter
Mfg., LLP, 747 F.3d 1326, 1332-33 (Fed. Cir. 2014). In MRC, the invalid design
patents covered dog sports jersey designs. Id. at 1328-29. The Federal Circuit
affirmed a determination that the patented design created the same overall visual
impression as the prior art jerseys (V2 and Eagles J erseys) based on overall shape,
similar fabric, and ornamental surge stitching. Id. at 1333.

T
placeme
determi
invalida
H
a semi-
feather
includin
fan (wit
The court
ent of the i
ned that su
ating the de
Here, the D
-circular
r fanwit
ng the J ake
thout the tu
identified
interlockin
uch differe
esign paten
Design Pate
shaped ph
th and wit
ester decoy
urkeys hea
d slight,
ng fabric an
ences faile
nts. Id.
ents are ana
hotograph
thout the
y (without
ad), Pretty
51
merely-tri
nd the orna
ed to defea
alogously o
hic reprod
turkeys h
the turkey
y Boy (a fu
ivial diffe
amental sti
at a claim
obvious. T
duction of
head. The
s head), th
ll three-dim
erences in
itching, bu
of obviou
The Design
f a natur
e prior ar
he real turk
mensional

n the pre
ut convinci
usnesswh
n Patents c
al turkey
rt referenc
key tail fea
turkey dec
ecise
ingly
holly
cover
tail
es
ather
coy),

Primos
only de
feather
shading
Pri
Pri
W
the exac
as in M
Bob deco
esign with
fanscre
g, and ornam
or Art J ake
ior Art Rea
While the D
ct shading
MRCfail t
oy (a fully
a head, E
ate the sam
mental tex
ester (left),
al Live Tur
Design Pat
and textur
to defeat a
y stuffed to
Ex. B), an
me overal
xturing.
, 746 Pate
rkey NWT
tents conta
ring of the
claim of o
52
om turkey)
nd publishe
l visual im
ent (middle
TF Website
ain some s
e reproduce
obviousnes
), the Nick
ed photogr
mpression
e), Prior A
e (left), Tra
slight, mer
ed tail feat
ss. 747 F.
ks patent (
raphs of r
based on
Art Pretty B
ansFan Vid
rely-trivial
thers, such
.3d at 1333
(depicting
real turkey
shape, sim
Boy (right)

deo (right)
difference
h differenc
3. In addi
fan-
y tail
milar

es in
es
ition,
53

the fact that the designs are not identical, does not preclude a finding of
obviousness. Id.
Thus, one of ordinary skill in the art would look at all possible designs to
make the decoy realistic, including publications of real living turkeys, use of a real
stuffed turkey, and real turkey tail feathers in designing a turkey tail feather decoy.
Primos Decl. 26-33; 43-46; Ex. K, TransFan Website; Ex. P, NWTF Websites;
Ex. Q, Primos 2005 Truth Video. The designs claimed in the Design Patents
appropriate no unique, novel or ornamental feature not found in the prior art
including the all-natural designs of live turkeys that have existed for hundreds of
years. Ex. P, NWTF Websites. The prior art conveys an overall visual impression
that is the same asif not identical tothe visual impression conveyed by the
Design Patents. Accordingly, the Design Patents are invalid as obvious.
IV. PRIMOS ACCUSED PRODUCTS DO NOT INFRINGE
The Courts analysis of this matter can and should end with the foregoing.
But in the highly unlikely scenario that the Court does not find a lack of originality
and construes the claims so narrowly as to avoid anticipation or obviousness,
Primos does not infringe the Design Patents.
The sole test for determining design patent infringement is the ordinary
observer test. Egyptian Goddess, 543 F.3d at 678. This test requires determining:
54

[i]f, in the eye of an ordinary observer, giving such
substantially the same, if the resemblance is such as to
supposing it to be the other, the first one patented is
infringed by the other.
Id. at 670 (quoting Gorham, 81 U.S. at 526-27).
Determining infringement of a design patent involves a two-step process.
First, properly construing the claim to determine its meaning and scope. E.g.,
Elmer v. ICC Fabricating, 67 F.3d 1571, 1577 (Fed. Cir. 1995) (citing Markman,
52 F.3d at 975, affd, 517 U.S. 370 (1996)). Second, comparing the properly
construed claim to the accused design. Id.
Primos has undertaken the claim construction analysis in the Invalidity
Section, above. Primos can conceive of no construction that would result in valid
Design Patents. Nevertheless, if the Court construes the Design Patents so
narrowly as to avoid invalidity, there can be no infringement.
In determining infringement, the Court should note the various differences
between the claimed and the accused designs and compare the overall visual
effects of each from the view of an ordinary observer. See Richardson v. Stanley
Works, Inc., 597 F.3d 1288, 1295-96 (Fed. Cir. 2010); Egyptian Goddess, 543 F.3d
at 681 (An ordinary observer, comparing the claimed and accused designs in light
of the prior art, will attach importance to differences between the claimed design
55

and the prior art depending on the overall effect of those differences on the
design.). The claimed design and the accused design may be sufficiently distinct
that it will be clear without more that the patentee has not met its burden of
proving the two designs would appear substantially the same to the ordinary
observer. E.g., Egyptian Goddess, 543 F.3d at 678.
A. THE PROPER ANALYSIS COMPARES THE ACCUSED PRODUCTS TO
THE CLAIMED ORNAMENTAL DESIGNS, NOT THE COMMERCIAL
EMBODIMENT OR FUNCTIONAL FEATURES OF THE COMMERCIAL
PRODUCT
Hunters Edges barebones complaint does not specifically identify any
allegation of infringement. See Dkt. 1. Hunters Edges Initial Infringement
Contentions illustrate fundamental misunderstandings of design patent law. Ex. S.
Hunters Edge first asserts that Primos Killer B decoy infringes Hunters Edges
TransFan Turkey Decoy Turkey tail feather which is a collapsible turkey tail
feather decoy made out of silk. Ex. S at 1. Thus, instead of comparing the
Design Patents claims to Primos product as the law requires, Hunters Edge
desires a straight product-to-product comparison to determine infringement. But
the patent claims define the rights of a patenteenot the commercial product sold
by the patentee. If the accused device falls within the scope of the claim, it
infringes. Sole product-to-product comparisonsisolated from the patent
56

claimshave never been, are not today, and never will be appropriate in patent
infringement cases.
The test for infringement is not whether the accused product is substantially
similar to the patentees commercial embodiment of the claimed design . . . . Such
a test risks relying on unclaimed and therefore irrelevant features as grounds for
similarity or difference. It is legal error to base an infringement finding on features
of the commercial embodiment not claimed in the patent. Sun Hill Industries,
Inc. v. Easter Unlimited, Inc., 48 F.3d 1193, 1196-97 (Fed. Cir. 1995) (finding case
presented commercial embodiment distinct from patented design because
embodiment contained more features and in comparing the two fact finder had
obligation to carefully confine its comparison only to the claimed features, and
not to unclaimed features, of the commercial embodiment.); Hosley Intl Trading
Corp. v. K Mart Corp., 237 F. Supp. 2d 907, 910 (N.D. Ill. 2002) (Basing an
infringement finding on features of the commercial embodiment not claimed in the
patent constitutes legal error.)
Unclaimed features are irrelevant; color, size and construction material
cannot be the basis of similarity where these features of the commercial
embodiment are beyond those described in the patent claim. Superior
Merchandise Co. v. M.G.I. Wholesale Inc., 52 U.S.P.Q.2d 1935, 1940 (E.D. La.
1999); Amgen, Inc. v. Hoechst Marion Roussel, 314 F.3d 1313, 1347 (Fed. Cir.
57

2003) (The [district] court eschewed the cardinal principle that the accused device
must be compared to the claims rather than to a preferred embodiment or
commercial embodiment.).
Proper application of the Gorham test requires that an accused design be
compared to the claimed design, not to a commercial embodiment . . . . [T]he
instant case clearly shows that the district court was improperly influenced by
features extraneous to the claimed design and that its decision turned on those
features. Payless Shoesource, Inc. v. Reebok Intl Ltd., 998 F.2d 985, 990 (Fed.
Cir. 1993). In the analysis below, Primos compares the claims of the Design
Patents to the accused Primos products. As a matter of law, there is no
infringement.
In addition to an improper product-to-product comparison, Hunters Edge
also asserts functional features which are not claimed (and cannot lawfully be
claimed in a design patent) as a basis for infringement. In its Initial Infringement
Contentions, for instance, Hunters Edge contends the collapsible turkey tail
feather component is the subject of infringement. Ex. S at 1. Hunters Edge
goes so far as to suggest that the doctrine of equivalence applies in this case to
prevent an infringer from stealing the benefit of a patented invention by changing
only minor or insubstantial details of the claimed invention while retaining the
same functionality. Id. at 1-2 (emphasis added). Hunters Edges infringement
58

contentions directly contradict fundamental design patent law. Design patents
protect only ornamental features, not functional features. Egyptian Goddess, 543
F.3d at 680 (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 aspect of the design as shown in the patent.) (quoting Oddzon Prods.
Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997)).
13

The correct infringement analysis requires comparing the Design Patents
claimed ornamental designs directly with Primos productsnot based on Hunters
Edges commercial TransFan product, which incorporates unclaimed features
(such as color and the level of detail shown in the commercial product) and
functional features (such as the collapsible nature of the commercial product). As
a matter of law, Primos does not infringe.
B. COMPARING THE PROPERLY CONSTRUED CLAIMS TO THE ACCUSED
DESIGN
A comparison of the accused Primos products and the Design Patents clearly
shows no infringement. No ordinary observer would believe that the designs are
substantially the same, if construed to avoid the prior art.

13
Hunters Edge considered the possibility of filing a utility patent application.
However, its patent counsel determine that there was nothing patentably unique
about the utilitarian design of Mr. Bulgers invention. See Ex. U at HE 000001-2
(Hunters Edges attorney stating the differences between your decoy and the
Nicks patent would not appear to support patentability, and we do not think that
meaningful utility patent protection would be available for this concept.).

T
product
Cir. J ul
Determ
patented
B-Mobi
The law re
ts as a who
ly 10, 201
mining infr
d design to
ile and Kil
Prim
equires co
ole. Ander
14) (affirm
ringement o
o the appea
ler B produ
mos B-Mob
mparing t
rson v. Kim
ming distri
of a design
arance of t
ucts and th
bile Product
59
the claime
mberly-Cla
ict courts
n patent req
the accuse
he claimed
t (left), 745
ed designs
ark Corp.,
s Rule 12
quires com
d products
designs ar
5 Patent De
to the ac
2014 WL
(b)(6) dism
mparing the
s). The a
re compare
esign (right
ccused Pri
3361130 (
missal, sta
e drawings
accused Pri
ed below:
t)
imos
(Fed.
ating
s of a
imos


A
would n
50-5
where t
patent a

14
As es
not incl
infringe
product
three-di
Prim
An ordinar
never confu
2. Anders
the court
and found

stablished,
lude the tu
ement claim
ts have a th
imensional
mos Killer B
ry observe
fuse either w
son, 2014 W
compared
that the p

the 745 p
urkeys hea
m relating
hree-dimen
l turkey de
B Product (
er evaluatin
with Hunte
WL 33611
photograp
plaintiff d
patent incl
ad. That
to the 746
nsional turk
coy.
60
(left), 745
ng Primos
ers Edge
30 at *4 (a
phs of the
did not sta
ludes the tu
difference
6 patent giv
keys head
Patent Desi
s B-Mobi
s claimed
affirming a
e accused
ate a plau
urkeys he
, if anythi
ven that th
das a par
ign (right)
1
ile or Kill
designs. P
a Rule 12(b
design w
usible claim
ead; the 7
ing, streng
he Killer B
rt of a life-l
4

ler B prod
Primos Dec
b)(6) dism
with the de
m for why
46 patent
thens the
B and B-Mo
like, full si

ducts
cl. at
missal
esign
y the
does
non-
obile
ized,
61

ordinary observer would be deceived into believing that [defendants products]
were the same as the patented design). The Design Patents claim only a turkey
tail feather fanwith and without a head. Primos accused products are full sized,
life-like, three-dimensional plastic tom turkey decoys. The photographic
reproduction of a turkey tail feather fan is only a component of the overall accused
products. No ordinary observer would confuse Primos accused products with the
claimed designs. Indeed, an ordinary observer would instantly distinguish Primos
accused life-like, full sized, three-dimensional turkey decoy products from the
mere tail feather fans claimed in the Design Patents. Accordingly, an ordinary
observerhere a turkey hunter giving attention to choosing a turkey decoy
would find the designs sufficiently distinct, not substantially the same, and
would clearly and readily distinguish between the Design Patents and Primos
accused products. Id.
The common component of the two designs is the photographic reproduction
of the turkeys tail feather fan. But even the tail feather fan components are
substantially different in coloring, shading, feather patterns, edges and texture. In
the eye of the ordinary observer, even the fan component products have a
distinctive and different look that are not confusing.
The differences between the claimed designs and Primos products make
this case similar to Victor Stanley, Inc. v. Creative Pipe, Inc., 2011 U.S. Dist.

LEXIS
10265 (
non-infr
thus cre
patent.
A
taken i
features
accused
ordinary
A
design m
design,
112846, *
(Fed. Cir. F
fringing be
eated a diff
See the fig
Additional
n conjunc
sillustrat
d design cr
y observer
As affirmed
may gener
distinguish
*56-57 (D
Feb. 20, 20
ecause it ad
ferent over
gures from
non-trivia
ction with
ting non-ob
reated a d
.); see als
d by the Fe
rally resem
hing featur
. Md. Sep
013). Ther
dded a sec
rall visual i
m that case b
al elements
other dif
bviousness
ifferent an
so Egyptian
ederal Circ
mble a desig
res create
62
pt. 30, 201
re, the cou
cond brace
impression
below:
s influenc
fferences p
s. See id. a
nd distincti
n Goddess
cuit in Victo
gn that is f
a different
11), affd,
urt found th
e and oval
n than the o
cing the ov
provide si
at *57 (fin
ive look th
s, 543 F.3d
or Stanley
functionall
t and a dis
2013 U.S
he accused
l below the
one created
verall visu
ignificant
nding overa
hat would n
d at 682.
y, even whe
ly similar t
stinctive lo
. App. LE
d Necati de
e arm rest
d by the de

ual impres
distinguis
all effect o
not confuse
ere the acc
to the pate
ook that w
EXIS
esign
t and
esign
ssion
shing
f the
e the
used
ented
would
63

not confuse or deceive the ordinary observer. 2011 U.S. Dist. LEXIS 112846, at
*57. Ultimately, there is infringement only if the ordinary observer would
purchase one product taking it to be another. Id.
As a matter of law, Hunters Edge cannot make an infringement showing
here. No reasonable jury would find that an ordinary observer would purchase
Primos accused productslife-like, full sized, three-dimensional turkey decoys
believing that they were merely Hunters Edges turkey tail feather fan design.
Indeed, despite the co-existence of these products in the market for at least 6 years,
no consumer has purchased a Primos product believing it to be a Hunters Edge
product. Primos therefore does not infringe the Design Patents.
C. COMPARING THE CLAIMS TO THE ACCUSED DESIGN IN LIGHT OF
THE PRIOR ART
For all the reasons highlighted above, a direct comparison of the claimed
designs to Primos accused products illustrates the designs are plainly dissimilar
and no ordinary observer would buy one believing it to be the other. However,
even if the different overall impression was not dispositively evident, making this
comparison in light of the prior art designs, conclusively confirmsindeed leaves
no doubtthat Primos products do not infringe as a matter of law. Egyptian
Goddess, 543 F.3d at 679 (when the claimed and accused designs are not plainly
dissimilar, resolution of the question whether the ordinary observer would consider
64

the two designs to be substantially the same will benefit from a comparison of the
claimed and accused designs with the prior art.).
When considering prior art in the infringement analysis, the question before
this Court is whether an ordinary observer familiar with the prior artincluding
publication of photos of real living turkeys, real stuffed turkeys like Bob, real tail
feather fans, and the prior commercial decoys, including the J akester and Pretty
Boy designs (Exs. N-Q)would be deceived into purchasing Primos products
believing them to be the patented turkey tail feather designs. Egyptian Goddess,
543 F.3d at 681. The answercompelled by the visual comparison of all
designsis no, the ordinary observer would not be deceived.


Prior
745
Prior
r Art Real L
T
Patent
r Art J akest
Live Turke
The Design
ter
ey NWTF
65
ns (with B-

Website
-Mobile)

Prior A
Prim
746 Patent
Art Pretty B
mos B-Mob
t
Boy

bile Produ

uct

Prio

745
Prior
or Art Real
T
Patent
r Art J akest
Live Turk
The Design
ter
key NWTF
66
ns (with K

F Website
Killer B)

Prior A
Prim
746 Patent
Art Pretty B
mos Killer
t
Boy

r B Produc

ct

C
tail fan
close ca
prior ar
claimed
S
25, 201
infringe
and the

T
claimed
diagona
the cour
Comparison
feather de
ase. Primo
rt, not Bu
d designs th
Seirus Inno
11) is inst
ement after
accused pr
Patented D
The court
d vertical
al zipper d
rt compare
n of the ov
esigns in t
os B-Mob
ulgers des
han the acc
ovative v. C
tructive. T
r comparin
roduct.
Design (le
first const
zipper de
design. Id
ed the accu
verall accu
the Design
bile and Ki
signs. The
cused Prim
Cabelas, 82
There, the
ng the claim
ft), Prior A
trued the
esign comp
d. at 1155-5
used produ
67
used Primo
n Patents in
iller B des
e prior ar
mos produc
27 F. Supp
e court gra
med neck
Art (middle
claims bas
pared to
56. Then,
uct to the p
os product
n view of
signs incor
rt designs
ts.
p. 2d 1150,
anted sum
protector
e), Accused
sed on th
the prior
, in determ
patented de
ts to the p
f the prior
rporate fea
are much
, 1155-56 (
mmary judg
design wit
d Product
e figures
art that i
mining non
esign in lig
patented tu
art, it is n
atures from
h closer to
(S.D. Cal.
gment of
th the prio
(right)
and noted
incorporate
n-infringem
ght of the p
urkey
not a
m the
o the
Oct.
non-
or art

d the
ed a
ment,
prior
68

art (U.S. Patent No. 6,397,403). Id. By comparing the diagonal zipper in the prior
art with the vertical zipper in the patent, the court determined that the patent only
covered a design with a vertical zipper. Id. In effect, the accused product included
features found in the prior art (such as the diagonal zipper and borders along its
edges) and did not include those claimed in the patent. Id. Accordingly, the
accused product did not infringe as a matter of law because an ordinary observer
would not be deceived into believing the accused products were the same as the
claimed design.
In the instance case, the stark differences between the claimed tail feather
fans in the Design Patents and Primos accused three-dimensional decoys in view
of the prior art plainly demonstrate no infringement. However, Primos overall
productthe legally required comparisonincludes not only the fan, but a life-
like, full sized, three-dimensional tom turkey in full strut. For Seirus to be truly
analogous, it would be like the accused product in Seirus also including not only
the neck gaitor, but also a human manikin (a three-dimensional bodily
representation), which is not even remotely close to infringement. See Egyptian
Goddess, 543 F.3d at 682.
Based on the clear dissimilarity between the Design Patents and Primos
accused products in light of the prior art, no reasonable fact-finder could find that
69

an ordinary observer would believe the accused Primos B-Mobile and Killer B
products to be the same as the patented designs.
Primos accused products do not infringe either the 745 patent or the 746
patent as a matter of law. Accordingly, this Court should grant summary judgment
in Primos favor.
CONCLUSION
As shown above the Design Patents are invalid because they are directed to
non-patentable, non-original designs for naturally occurring turkey tail feather fans
and heads, and the prior art designs (J akester, Pretty Boy, real stuffed turkey, real
turkey tail feather fans, and publications of photos of live turkeys) anticipate or
render obvious the photographic reproductions in the Design Patents. In addition,
as a matter of law, Primos accused products do not infringe the claimed designs
because no ordinary observer would be deceived given the additional elements in
Primos products and the clear differences between the claimed designs and
Primos productsespecially in light of the prior art.
Accordingly, this Court should grant summary judgment in Primos favor.

70

Dated: October 24, 2014. Respectfully submitted,

By: /s/Brett L. Foster
L. Grant Foster (pro hac vice)
Utah Bar No. 7202
gfoster@hollandhart.com
Brett L. Foster (pro hac vice)
Utah Bar No. 6089
bfoster@hollandhart.com
HOLLAND & HART LLP
222 S. Main Street, Suite 2200
Salt Lake City, Utah 84101
Phone: (801) 799-5800
Fax: (801) 799-5700

Chris T. Hellums
ASB-5583-L73C
chrish@pittmandutton.com
PITTMAN, DUTTON, & HELLUMS, P.C.
2001 Park Place North, Suite 1100
Birmingham, AL 35203
Phone: (205) 322-8880
Fax: (205) 328-2711

Attorneys for Defendant
PRIMOS, INC.

71

PROOF OF SERVICE
I hereby certify that on October 24, 2014, I caused the foregoing PRIMOS,
INC.S BRIEF IN SUPPORT OF ITS MOTION FOR SUMMARY
JUDGMENT to be electronically filed with the Clerk of the Court using the
CM/ECF system, which will send electronic notification of this filing to the
following persons:

Debra H. Buchanan (HEN079)
Stephen G. Mcgowan (MCG071)
STEPHEN G. MCGOWAN, LLC
P.O. Box 2
Dothan, AL 3302
(334) 699-6688 (phone)
(334) 699-6707 (fax)
debbiehendersonbuchanan@gmail.com
smcgowan@graceba.net

Attorneys for Plaintiff
HUNTERS EDGE, LLC

/s/ TraciLyn Hales
AN EMPLOYEE OF HOLLAND & HART LLP

7274517_2

Hunter's Edge v. Primos - Def.'s MSJ

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IN THE UNITED STATES DISTRICT COURT

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