Patent Infringement Case Summary
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Sarah BursteinCase 1:14-cv-00249-MHT-WC Document 53 Filed 09/08/15 Page 1 of 17
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF ALABAMA
SOUTHERN DIVISION
HUNTERS EDGE, LLC, a limited
liability company,
Plaintiff,
v.
PRIMOS, INC., a corporation,
Defendant.
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Case No. 1:14-CV-00249-MHT-WC
RECOMMENDATION OF THE MAGISTRATE JUDGE
Before the court is Defendants Motion for Summary Judgment (Doc. 38). On
July 31, 2014, the District Judge entered an Order (Doc. 28) referring this matter to the
undersigned Magistrate Judge for consideration and disposition or recommendation, as
may be appropriate, on all pretrial matters, including discovery . . . and dispositive
motions. On October 24, 2014, Defendant filed its Motion for Summary Judgment,
Supporting Brief and Memorandum (Doc. 39), and the Declaration (Doc. 40) of Will
Primos in support of the Motion. On December 5, 2014, Plaintiff filed its Response
(Doc. 45) in opposition to the Motion, along with the supporting Declaration (Doc. 46) of
Jamie Bulger.
On January 5, 2015, Defendant filed a Reply (Doc. 47) and a
Supplemental Declaration (Doc. 48) of Mr. Primos in support of its Motion for Summary
Judgment. The matter is fully briefed and is ripe for recommendation to the District
Case 1:14-cv-00249-MHT-WC Document 53 Filed 09/08/15 Page 2 of 17
Judge.
For all of the following reasons, the undersigned Magistrate Judge hereby
RECOMMENDS that Defendants Motion for Summary Judgment (Doc. 38) be
GRANTED and the Complaint (Doc. 1) DISMISSED with prejudice.
I.
BACKGROUND
On April 7, 2014, Plaintiff filed its complaint alleging two counts of patent design
infringement by Defendant. Plaintiff alleged that it is the owner of U.S. Design Patent
Nos. D560 745 (entitled Turkey Front Feather and Head Fan Decoy) and 746 (entitled
Turkey Feather Fan Decoy). Plaintiff further alleged that Defendant is infringing
and/or inducing others to infringe by making, using, offering to sell and/or selling in the
United States, and/or importing into the United States, products or processes that practice
one or more inventions claimed in the Hunters Edge, LLC[,] Patents. Compl. (Doc. 1)
5. Plaintiff alleges that Defendant has profited through infringement of Plaintiffs
patents and that, due to such infringement, Plaintiff has suffered and will continue to
suffer damages. Id. Plaintiff further alleges that Defendants infringement is willful
and deliberate, entitling Plaintiff to enhanced damages and reasonable attorney fees and
costs. Id.
On September 4, 2014, the undersigned conducted a telephonic scheduling
conference with counsel for the parties and subsequently entered the courts Initial
Scheduling Order (Doc. 33), which established deadlines for the parties initial
disclosures
and
initial
infringement
and
non-infringement,
invalidity,
and
unenforceability contentions and accompanying document productions. Defendant filed
Case 1:14-cv-00249-MHT-WC Document 53 Filed 09/08/15 Page 3 of 17
the instant motion on the date its initial non-infringement, invalidity, and unenforceability
contentions were due. Defendant argues that it is entitled to summary judgment on both
of Plaintiffs claims of patent infringement on any of three independent grounds[,]
including the following: 1) the 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[;] 2) the asserted patents
are invalid as a matter of law because they are either anticipated or would have been
obvious to one of ordinary skill in designing turkey decoys[;] and 3) Defendants
products do not infringe Plaintiffs design patents because Defendants products are lifelike, full sized, three-dimensional turkey decoys which no ordinary observer would
purchase thinking it to be Plaintiffs patented design. Def.s Mot. (Doc. 38) at 1-2.
II.
SUMMARY JUDGMENT STANDARD
Under Rule 56(a) of the Federal Rules of Civil Procedure, a reviewing court shall
grant a motion for summary judgment if the movant shows that there is no genuine
dispute as to any material fact and that the moving party is entitled to a judgment as a
matter of law. Fed. R. Civ. P. 56(a).1 Only disputes about material facts will preclude
1
On December 1, 2010, amendments to Rule 56 became effective. The amendments to Rule 56
generally reorganize the provisions of the Rule and incorporate language which is intended to improve
the procedures for presenting and deciding summary judgment-motions and [is] . . . not intended to
change the summary-judgment standard or burdens. Farmers Ins. Exchange v. RNK, Inc., 632 F.3d 777,
782 n.4 (1st Cir. 2011) (internal quotations omitted) (emphasis in original). Moreover, because the
summary judgment standard remains the same, the amendments will not affect continuing development
of the decisional law construing and applying the standard now articulated in Rule 56(a). Fed. R. Civ. P.
56(a) advisory committees note to 2010 amendments. Accordingly, while the court is bound to apply the
new version of Rule 56, the undersigned will, where appropriate, continue to cite to decisional law
construing and applying prior versions of the Rule.
Case 1:14-cv-00249-MHT-WC Document 53 Filed 09/08/15 Page 4 of 17
the granting of summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249
(1986). An issue of fact is genuine if the record as a whole could lead a reasonable
trier of fact to find for the nonmoving party. An issue is material if it might affect the
outcome of the case under the governing law. Redwing Carriers, Inc. v. Saraland
Apartments, 94 F.3d 1489, 1496 (11th Cir. 1996) (quoting Anderson, 477 U.S. at 248).
Under Rule 56, summary judgment is appropriate if the pleadings, depositions,
answers to interrogatories, and admissions on file, together with the affidavits, if any,
show that there is no genuine issue as to any material fact and that the moving party is
entitled to a judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322
(1986). The party asking for summary judgment always bears the initial responsibility
of informing the district court of the basis for its motion, and identifying those portions of
the pleadings, depositions, answers to interrogatories, and admissions on file, together
with the affidavits, if any, which it believes demonstrates the absence of a genuine issue
of material fact. Id. at 323. The movant can meet this burden by presenting evidence
showing there is no dispute of material fact, or by showing the nonmoving party has
failed to present evidence in support of some element of his case on which he bears the
ultimate burden of proof. Id. at 32223.
Once the movant has satisfied this burden, the nonmoving party must go beyond
the pleadings and by his own affidavits, or by the depositions, answers to interrogatories,
and admissions on file, designate specific facts showing that there is a genuine issue for
trial. Id. at 324. In doing so, and to avoid summary judgment, the nonmovant must do
Case 1:14-cv-00249-MHT-WC Document 53 Filed 09/08/15 Page 5 of 17
more than simply show that there is some metaphysical doubt as to the material facts.
Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). The parties
must support their assertions that a fact cannot be or is genuinely disputed by citing to
particular parts of materials in the record, including depositions, documents,
electronically stored information, affidavits or declarations, stipulations[], admissions,
interrogatory answers, or other materials or by showing that the materials cited do not
establish the absence or presence of a genuine dispute, or that an adverse party cannot
produce admissible evidence to support the fact. Fed. R. Civ. P. 56(c)(1)(A) & (B).
If the nonmovant fails to properly address another partys assertion of fact as
required by Rule 56(c), then the court may consider the fact undisputed for purposes of
the motion and grant summary judgment if the motion and supporting materials including the facts considered undisputed - show that the movant is entitled to it. Fed.
R. Civ. P. 56(e)(2) & (3).
In determining whether a genuine issue for trial exists, the court must view all the
evidence in the light most favorable to the nonmovant. McCormick v. City of Fort
Lauderdale, 333 F.3d 1234, 1243 (11th Cir. 2003). Likewise, the reviewing court must
draw all justifiable inferences from the evidence in the nonmoving partys favor.
Anderson, 477 U.S. at 255.
However, mere conclusions and unsupported factual
allegations are legally insufficient to defeat a summary judgment motion. Ellis v.
England, 432 F.3d 1321, 1326 (11th Cir. 2005) (per curiam). Furthermore, [a] mere
scintilla of evidence supporting the opposing partys position will not suffice; there
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must be enough of a showing that the jury could reasonably find for that party. Walker
v. Darby, 911 F.2d 1573, 1577 (11th Cir. 1990); see also Anderson, 477 U.S. at 249-50
(If the evidence [on which the nonmoving party relies] is merely colorable, or is not
significantly probative, summary judgment may be granted.) (internal citations omitted).
III.
STATEMENT OF UNDISPUTED FACTS
Each party has submitted a statement of undisputed facts. See Def.s Br. (Doc. 39)
at 7-25; Pl.s Resp. (Doc. 45) at 3-4. The undersigned reproduces here only those facts
essential to the recommended disposition of this case. Plaintiff Hunters Edge, LLC, is a
manufacturer of hunting accessories. Dec. of Jamie Bulger (Doc. 46) 2. Jamie Bulger
is the founder, President, and CEO of Hunters Edge, and runs the day-to-day
operations, including the development of new and innovative products, as well as the
enforcement of intellectual property. Id. at 2. On February 6, 2007, Mr. Bulger filed
U.S. Patent Application No. 29/272,287, which claimed a design for a flat, twodimensional turkey feather and head fan decoy as represented by the image below:
Also, on February 6, 2007, Mr. Bulger filed U.S. Patent Application No. 29, 272,292,
which claimed a design for a two-dimensional turkey feather fan without claiming the
Case 1:14-cv-00249-MHT-WC Document 53 Filed 09/08/15 Page 7 of 17
turkeys head as represented by the image below:
On January 29, 2008, the Patent Office issued Design Patent No. D560,745 (the 745
patent, which is the turkey feather fan with head decoy) and Design Patent No.
D560,746 (the 746 patent, which is the turkey feather fan decoy without the turkeys
head). Both Design Patents have been assigned to Plaintiff Hunters Edge, LLC.
In January of 2009, Mr. Bulger, representing Hunters Edge, contacted Will
Primos, the founder of Defendant Primos, Inc., a competitor in the game hunting supplies
and accessories business, via letter for the purpose of conveying his belief that certain of
Primoss products2 infringed on the 745 and 746 patents. Mr. Bulgers letter suggested
that Primos remit to Mr. Bulger some form of royalty as a remedy for its infringement or
that the parties otherwise work to resolve the matter without the need for litigation. Mr.
Bulger sent Mr. Primos another letter in March of 2009 which provided Mr. Primos with
information about Hunters Edges patents and offered a summary of recent case law
2
In pertinent part, and as will be discussed more thoroughly later in this Recommendation, Primos
sells lifelike turkey decoys which include a three-dimensional turkey body and head with a turkey tail
feather fan which may be attached to the body of the decoy.
Case 1:14-cv-00249-MHT-WC Document 53 Filed 09/08/15 Page 8 of 17
discussing the test to be applied in cases alleging design patent infringement. In April of
2009, Primos responded to Mr. Bulgers letter, through its patent counsel, via a letter to
Hunters Edges then counsel. In the letter, Primos articulated its belief that the 745 and
746 patents are invalid, and that the patents may be unenforceable due to Mr. Bulgers
purported inequitable conduct in supposedly failing to disclose prior art turkey tail fan
feather decoys to the Patent Office when he applied for the 745 and 746 patents.
Thereafter, Mr. Bulger discontinued his efforts to press any claim for infringement
against Primos until this suit was filed in April of 2014.
IV.
DISCUSSION
Defendant contends that it is entitled to summary judgment because, inter alia, its
products do not infringe on Plaintiffs 745 and 746 patents. Because the undersigned
agrees with Defendant that, as a matter of law, the products identified by Plaintiff as
infringing on its patent do not do so, and further finds that this argument is the most
amenable to resolution at the summary judgment stage of proceedings, the undersigned
pretermits substantive discussion of Defendants other arguments in favor of summary
judgment.
A.
Legal Standard Applicable to Design Patent Infringement Claims.
In deciding whether a product infringes on the claimed design of a patent, federal
courts apply the ordinary observer test. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d
665, 678 (Fed. Cir. 2008). The ordinary observer test was first articulated in the
Supreme Courts decision in Gorham Co. v. White, 81 U.S. 511 (1871), as follows: [I]f,
Case 1:14-cv-00249-MHT-WC Document 53 Filed 09/08/15 Page 9 of 17
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. Id. at 528. Importantly, the test applies to the patented design
in its entirety, as it is claimed. Crocs, Inc. v. Interl Trade Comm., 598 F.3d 1294, 1303
(Fed. Cir. 2010). In evaluating infringement, [the court is to] determine whether the
deception that arises is the result of the similarities in the overall design, not of
similarities in ornamental features in isolation. Richardson v. Stanley Works, Inc., 597
F.3d 1288, 1295 (Fed. Cir. 2010) (quoting Amini Innovation Corp. v. Anthony California,
Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2006)).
In other words, [t]here can be no
infringement based on the similarity of specific features if the overall appearance of the
designs are dissimilar[.] Oddzon Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405
(Fed. Cir. 1997).
Under the ordinary observer test as described in Egyptian Goddess, the burden
of proof as to infringement remains on the patentee. 543 F.3d at 678.
In some instances, the claimed design and the accused design will 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, as required by Gorham. In other
instances, when the claimed and accused designs are not plainly dissimilar,
resolution of the question whether the ordinary observer would consider the
two designs to be substantially the same will benefit from a comparison of
the claimed and accused designs with the prior art . . . . Where there are
many examples of similar prior art designs, . . . differences between the
claimed and accused designs that might not be noticeable in the abstract can
become significant to the hypothetical ordinary observer who is conversant
Case 1:14-cv-00249-MHT-WC Document 53 Filed 09/08/15 Page 10 of 17
with the prior art.
Id.
A district court tasked with deciding a claim of patent infringement must first
construe the claimed design so that it may compare it to the accused design, as required
by Gorham. Id. at 679; OddzOn, 122 F.3d at 1404-05. However, there is no prescribed
particular form that the claim construction must take[,] id., and lower federal courts are
cautioned against excessive reliance on a detailed verbal description in a design
infringement case. Crocs, Inc., 598 F.3d at 1302. This is because misplaced reliance
on a detailed verbal description of the claimed design risks undue emphasis on particular
features of the design rather than examination of the design as a whole. Id. Because
claim construction must be adapted to a pictorial setting, id. (citing Contessa Food
Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002)), 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. Rather, especially where the court does not regard verbal
elaboration as necessary or helpful, id., the court should strive for simplicity in its claim
construction. In other words, in construing Plaintiffs claimed design, this court should
let the images of the claimed designs and accused products speak for themselves and
should generally limit its verbal interpretation of the visual depictions of the claimed
designs so as not to detract from the overall impression created by the claimed designs.
At least one other precept guiding a district courts claim construction should be
10
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mentioned. Fundamentally, a design patent protects only the novel, ornamental features
of the patented design.
OddzOn, 122 F.3d at 1405.
As such, courts have long
recognized that those aspects of a design which are functional, rather than purely
ornamental, are not protected by the design patent and should not be included in the
construction of the claim. Id. at 1405; Richardson, 597 F.3d at 1293-94. Accordingly,
the court is limited in its claim construction to identify the non-functional aspects of the
design as shown in the patent. OddzOn, 122 F.3d at 1405.
B.
Claims Construction
In the instant case, the courts task in construing Plaintiffs claimed designs is not
particularly challenging.
Previously in this Recommendation, the undersigned
reproduced the two most clear and direct images of Plaintiffs two claimed designs, as
they were included in Plaintiffs applications for the 745 and 746 patents. In its brief in
support of summary judgment, Defendant offered a brief and simple construction of
Plaintiffs claims to which Plaintiff lodged no objection in either its response in
opposition to summary judgment or in the Declaration of Mr. Bulger. As such, the court
adopts Defendants proposed claim constructions as follows:
[T]he 746 patent should be construed as designs comprising a semicircular 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.
11
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Def.s Br. (Doc. 39) at 37 (emphasis in original).3
These brief descriptions are
sufficiently simplistic to comport with the Federal Circuits concern that district courts
avoid overly detailed verbal descriptions of claimed designs. More importantly, they are
consonant with the designs submitted in Plaintiffs applications for the 745 and 746
patents, as reproduced supra. See also Ex. B to Pl.s Resp. (Doc. 45-2) (depicting design
claims in multiple images provided in 745 and 746 patent applications).
C.
Application of the Ordinary Observer Test
Having construed Plaintiffs claimed designs thusly, the undersigned must
compare them to the accused products and apply the ordinary observer test of Gorham.
See Anderson v. Kimberly-Clark Corp., 570 F. Appx 927, 932 (Fed. Cir. 2014)
(Determining infringement of a design patent requires comparing the drawings of the
patented design to the appearance of the accused products.). To enable this analysis, of
course, Plaintiff must identify the precise Primos products which it alleges infringe on its
patented designs. However, the complaint does not allege any specific product or design
by Primos has infringed on Plaintiffs claimed designs. Nevertheless, Mr. Bulgers
Declaration appears to identify Primoss B-Mobile, Killer-B, and Dirty-B decoys as the
accused products for purposes of the infringement analysis. See Bulger Dec. (Doc. 46) at
15, 19. Defendant explains that the B-Mobile is a molded plastic, life-size full-body
3
The undersigned is not unmindful of the implications that adopting Defendants proposed claims
construction would have on Defendants arguments about the invalidity of Plaintiffs patents. Although
Defendants proposed claim construction would arguably compel a finding of patent invalidity, the
undersigned emphasizes that this Recommendation adopts Defendants proposed claims construction only
for the purposes of completing the infringement analysis.
12
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3D tom turkey decoy with a tail feather fan as a component of the overall product.
Primos Dec. (Doc. 40) at 49. The Killer B is essentially a follow-up to the B-Mobile.
The painted body of the Killer B brings out more incandescent colors in the body and
more red in his head. Id. at 51 (quotation omitted). Like the B-Mobile, the Killer B
is a molded plastic, life-size full-body 3D tom turkey decoy with a tail feather fan as a
component of the overall product. Id.4
Plainly, the verbal descriptions pertinent to both the claimed designs and Primoss
accused products indicate that the overall visual impressions created by the subject
designs are wholly dissimilar.
Nevertheless, for the sake of context and clarity in
comparing the designs under Gorham, the undersigned will append to this
Recommendation side-by-side depictions of the accused products and Plaintiffs claimed
designs.5
Upon viewing the pictorial depictions of Plaintiffs claimed designs and
Defendants accused products, the undersigned is of the conviction that no reasonable
fact-finder could find that any ordinary observer could be induced to purchase one of the
accused products thinking it to be Plaintiffs claimed design. Plaintiffs claimed designs
4
Although Mr. Bulgers Declaration alludes to the Dirty B as an additional accused product,
Plaintiff did not accuse the Dirty B of infringement in its complaint or in its initial or final infringement
contentions. See Def.s Reply Br. (Doc. 47) at 21-22. Accordingly, Plaintiff has waived any claim that
the Dirty B infringes on its patents. Nevertheless, Defendant maintains that the Dirty B, which is also a
lifelike molded plastic decoy of a turkey with a feather fan component, see Ex. X (Doc. 48-2) at 8, does
not infringe on Plaintiffs patents for the same reasons that the B-Mobile and the Killer B do not
infringe. Id. at 22.
These images are taken from Defendants Final Non-Infringement, Invalidity, and Unenforceability
Contentions, which is included in the record as Exhibit X, appended to the Supplemental Declaration of
Will Primos (Doc. 48-2) at pages 3-6 and 7-9.
13
Case 1:14-cv-00249-MHT-WC Document 53 Filed 09/08/15 Page 14 of 17
are flat, two-dimensional photographic reproductions of a turkeys tail feather fan both
with and without a turkey head superimposed over the fan. Defendants accused products
are lifelike three-dimensional model decoys featuring molded plastic bodies to which a
component tail feather fan is attached. Simply put, no ordinary observerthat is, a
turkey hunter intending to purchase a turkey decoywould confuse the accused products
with Plaintiffs designs.
Rather than providing any evidence that an ordinary observer might confuse
Defendants accused products with his claimed designs, Mr. Bulgers Declaration
confirms the opposite conclusion: the accused designs are so dissimilar to Plaintiffs
claimed designs that ordinary observers in the marketplace, as well as retailers, easily
grasped the marketplace evolution signaled by Defendants accused designs and
responded accordingly. See Bulger Dec. (Doc. 46) at 14 (attesting that, when Primos
began selling their first 3-D full body decoy, [h]unters were excited to purchase a 3-D
turkey decoy, especially one, which included a FEATHER FAN, which was offered by
Primos. The Hunters Edge 1-D FEATHER FAN DECOY was now obsolete in retailers
eyes, because Primos had included it in the box for attachment onto their 3-D turkey
decoy.).
Plaintiff does not salvage its claim with Mr. Bulgers argument that, minus the
component fan which he claims infringes on his design, no turkey hunter alive would
purchase one of Primoss full body decoy products. Id. at 19. Plaintiffs analysis
ignores this courts obligation to consider the two designs as a whole. OddzOn, 122 F.3d
14
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at 1405. The court may not consider simply whether certain ornamental features of the
accused products are similar to the claimed designs. Rather, the court must consider
whether the patented design as a whole is substantially similar in appearance to the
accused design. Id. Considering each of the designs as a whole, [t]here can be no
infringement based on the similarity of specific features if the overall appearance of the
designs are dissimilar. Id. As set out above and reflected in the images appended to this
Recommendation, there can be no doubt that the overall appearance of the subject
designs is markedly dissimilar. Plaintiff has presented no case law establishing that this
court may find its claimed design is infringed by only a component part of the accused
design rather than by considering the accused product as a whole.6 Accordingly, this case
The undersigned would be remiss not to discuss, at some point, the general insufficiency of
Plaintiffs response to Defendants motion for summary judgment. The courts Order (Doc. 42)
instructing Plaintiff to respond directed Plaintiff to address each of Defendants material factual and
legal contentions or explain why it is unable to do so. Given the relatively early stage in the proceedings
at which summary judgment was sought, the court further instructed that, [i]n the event that Plaintiff
contends it is unable to present facts to justify any opposition to the motion, Plaintiff shall propose how
the court may fairly and efficiently apply the provisions of Rule 56(d) of the Federal Rules of Civil
Procedure in this instance.
Plaintiffs response does none of these things. Plaintiffs response to Defendants sixty-nine page
brief in support of summary judgment totals just over four pages. While the court does not mean to imply
that insufficiency can be derived merely from the disparity in the number of pages, it is no great stretch to
imagine that four pages simply is not enough to respond to all of the material factual and legal
contentions packed into sixty-nine pages of briefing. Worse, still, is that the four pages of briefing are
utterly devoid of meaningful analysis on any of the points of fact or law raised by Defendant. The
response consists entirely of roughly one page describing the summary judgment standard of Rule 56,
quotations from two statutes, a brief statement of undisputed facts about Mr. Bulgers efforts to secure his
design patents, three sentences of Argument, and a conclusion. Pl.s Br. (Doc. 45).
Plaintiffs Argument is simply that Defendant has failed to show that there is no genuine issue
of material fact which entitles it to Summary Judgment. Id. at 4. Indeed, Plaintiff submits that
Defendant has by its very submissions, demonstrated that there are genuine issues to material facts.
Summary Judgment is also improper at this time given that discovery has not yet begun. Id. Plaintiff
does not cite to particular parts of materials in the record to support its assertion that there are material
factual disputes. Fed. R. Civ. P. 56(c)(1)(A). Nor does Plaintiff show or even support its conclusory
15
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marks an instance where the claimed design and the accused design [are] sufficiently
distinct that it [is] clear without more that the patentee [cannot meet] its burden of
proving the two designs would appear substantially the same to the ordinary observer,
as required by Gorham. Egyptian Goddess, 543 F.3d at 678.
Because no reasonable fact-finder could find that an ordinary observer would
purchase Defendants accused products mistaking them for Plaintiffs claimed designs,
Plaintiff cannot establish that Defendants accused products have infringed on its
patented designs and Defendant is therefore entitled to summary judgment on Plaintiffs
claims of infringement. Accordingly, the undersigned Magistrate Judge hereby
RECOMMENDS that Defendants Motion for Summary Judgment (Doc. 38) be
GRANTED and that this case be DISMISSED with prejudice.
It is further
ORDERED that the parties are DIRECTED to file any objections to the said
Recommendation on or before September 21, 2015.
Any objections filed must
assertion that the materials cited by Defendant do not establish the absence . . . of a genuine dispute[.]
Fed. R. Civ. P. 56(c)(1)(B). Nor does Plaintiff, despite this courts clear instruction, indicate why it is
unable to respond to Defendants factual assertions for purposes of applying Rule 56(d). Notably,
Plaintiff may not simply argue that summary judgment is premature because discovery has not yet
begun. Pl.s Br. (Doc. 45) at 4. Rather, Rule 56(d) requires the nonmovant to show, by declaration or
affidavit, that it cannot present facts essential to justify its opposition to the motion for summary
judgment. Plaintiff has made no such showing. Most damning, however, is that Plaintiff has presented
no legal argument about the three separate grounds on which Defendant seeks summary judgment. The
complaint is devoid of analysis, or even a citation, of a single case applying design patent law.
At bottom, Plaintiffs response to Defendants motion is nothing more than a conclusory denial of
Defendants factual and legal argument. This is plainly insufficient in opposing summary judgment. See
Ellis, 432 F.3d at 1326 ([M]ere conclusions and unsupported factual allegations are legally insufficient
to defeat a summary judgment motion.). Nevertheless, the undersigned has endeavored to examine the
record and review applicable law, and is satisfied that Defendant is entitled to summary judgment
pursuant to Rule 56.
16
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specifically identify the findings in the Magistrate Judges Recommendation to which the
party is objecting. Frivolous, conclusive, or general objections will not be considered by
the District Court. The parties are advised that this Recommendation is not a final order
of the court and, therefore, it is not appealable.
Failure to file written objections to the proposed findings and recommendations in
the Magistrate Judges report shall bar the party from a de novo determination by the
District Court of issues covered in the report and shall bar the party from attacking on
appeal factual findings in the report accepted or adopted by the District Court except
upon grounds of plain error or manifest injustice. Nettles v. Wainwright, 677 F.2d 404
(5th Cir. 1982); see Stein v. Reynolds Securities, Inc., 667 F.2d 33 (11th Cir. 1982); see
also Bonner v. City of Prichard, 661 F.2d 1206 (11th Cir. 1981) (en banc) (adopting as
binding precedent all of the decisions of the former Fifth Circuit handed down prior to
the close of business on September 30, 1981).
DONE this 8th day of September, 2015.
/s/ Wallace Capel, Jr.
WALLACE CAPEL, JR.
UNITED STATES MAGISTRATE JUDGE
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APPENDIX
