2013-1358 In The

United States Court of Appeals

For The Federal Circuit

HUTZLER MANUFACTURING COMPANY, INC.,

Plaintiff Appellee, v.

BRADSHAW INTERNATIONAL, INC.,

Defendant Appellant.

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK IN CASE NO. 11-CV-7211, JUDGE PAUL G. GARDEPHE

BRIEF OF APPELLANT

Robert J. Kenney Michael B. Marion BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road, Suite 100E Falls Church, Virginia 22042 (703) 205-8000 RJK@bskb.com Counsel for Appellant July 12, 2013

THE LEX GROUPDC 1825 K Street, N.W. Suite 103 Washington, D.C. 20006
(202) 955-0001 (800) 856-4419 Fax: (202) 955-0022 www.thelexgroup.com

Form 9 FORM 9. Certicate of Interest

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

HUTZLER MANUFACTURING COMPANY, INC., ____________________________

BRADSHAW INTERNATIONAL, INC., v. ____________________________

2013-1358 No. _______

CERTIFICATE OF INTEREST
Counsel for the (petitioner) (appellant) (respondent) (appellee) (amicus) (name of party)
Bradshaw International, Inc. certifies the following (use None if applicable; use extra sheets _______________________

if necessary): 1.

The full name of every party or amicus represented by me is:

Bradshaw International, Inc. _____________________________________________________________________________

_____________________________________________________________________________ _____________________________________________________________________________ 2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by me is: Bradshaw International, Inc. _____________________________________________________________________________ _____________________________________________________________________________ _____________________________________________________________________________ 3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the party or amicus curiae represented by me are:
NONE _____________________________________________________________________________

_____________________________________________________________________________ _____________________________________________________________________________ 4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court are:
Robert J. Kenney, Esq., Birch Stewart Kolasch & Birch, LLP 8110 Gatehouse Rd. _____________________________________________________________________________ Ste. 100 East, Falls Church, VA 22402

_____________________________________________________________________________ 07/12/2013 _____________________ Date /s/ Robert J. Kenney _______________________________ Signature of counsel Robert J. Kenney _______________________________ Printed name of counsel

Please Note: All questions must be answered P. Smith cc: Turner ___________________________________
Reset Fields
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TABLE OF CONTENTS Page TABLE OF AUTHORITIES ................................................................................... iii I. II. III. IV. V. VI. STATEMENT OF RELATED CASES........................................................... 1 JURISDICTIONAL STATEMENT ................................................................ 1 STATEMENT OF THE ISSUES .................................................................... 2 STATEMENT OF THE CASE ....................................................................... 2 STATEMENT OF FACTS .............................................................................. 4 SUMMARY OF THE ARGUMENT .............................................................. 8

VII. STANDARD OF REVIEW ............................................................................. 9 VIII. ARGUMENT ................................................................................................. 10 A. The District Court Interpreted The Scope Of The 114 Patent And The 463 Patent Far Beyond The Drawings Of The Patents....... 10 1. The District Court Failed To Consider The Prior Art As Part Of The Ordinary Observer Analysis ................................. 11 The District Court Ignored Expressly Claimed Limitations Recited In The 114 Patent and the 463 Patent ......................................................................................... 17 The District Court Improperly Included Functional Elements As Part Of The Scope Of The 114 Patent And The 463 Patent ......................................................................... 19

2.

3.

4.

Upon Proper Interpretation Of The 114 Patent And The 463 Patent, The Bradshaw Products Cannot Infringe ............. 23 a. The Design Of The 114 Patent Is Not Substantially Similar To The Bradshaw Onion Keeper ............................................................................. 23 The Design Of The 463 Patent Is Not Substantially Similar To The Bradshaw Garlic Keeper ............................................................................. 28

b.

B.

The District Court Failed to Apply the Polaroid Factors In Evaluating A Likelihood of Confusion in Relation To Hutzlers Unfair Competition Claim ................................................................... 33 Hutzler Cannot Protect Under Unfair Competition Law What It Failed To Patent................................................................................... 37 The District Court Failed To Find Any Facts That Establish Bad Faith Committed by Bradshaw................................................. 44 1. Mere Awareness Of The Competitors Products Fails To Establish Bad Faith On The Part Of The Competitor ........... 45 The Facts Presented At The District Court Demonstrate Bradshaws Good Faith In Avoiding Hutzlers Product Line ........................................................................................... 46 The District Court Ignored Bradshaws Reliance On Opinion Of Counsel In Avoiding Infringement Of The Hutzler Patents .......................................................................... 48

C.

D.

2.

3.

IX.

CONCLUSION.............................................................................................. 49

ADDENDUM CERTIFICATE OF FILING AND SERVICE CERTIFICATE OF COMPLIANCE

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TABLE OF AUTHORITIES Page(s) CASES Am. Signature, Inc. v. United States, 598 F.3d 816 (Fed. Cir. 2010) ...................................................................9, 10 Arrow Fastener Co. v. Stanley Works, 59 F.3d 384 (2d Cir. 1995) ............................................................................ 35 Berry Sterling Corp. v. Prescor Plastics, Inc., 122 F.3d 1452 (Fed. Cir. 1997) .........................................................21, 22, 23 Contessa Food Products, Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed Cir. 2002) ..........................................................17, 23, 24 Dippin Dots, Inc. v. Frosty Bites Distrib., LLC, 369 F.3d 1197 (11th Cir. 2004) ..................................................................... 14 Disc Golf Assn v. Champion Discs, 158 F.3d 1002 (9th Cir. 1998) ....................................................................... 22 Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498 (2d Cir. 1982) .......................................................................... 14 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) .................................................................11, 12 Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995) ....................................................................... 26 FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521 (Fed. Cir. 1987) ....................................................................... 11 Fun-Damental Too v. Gemmy Indus. Corp., 111 F.3d 993 (2d Cir. 1997) .......................................................................... 45

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Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137 (2d Cir. 1997) ....................................................................34, 36 Girl Scouts v. Bantam Doubleday Dell Publg Group, Inc., 808 F. Supp. 1112 (S.D.N.Y. 1992) .............................................................. 34 Gorham Co. v. White, 81 U.S. 511 (1872).............................................................................11, 19, 28 Government of Canal Zone v. Burjan, 596 F.2d 690 (5th Cir. 1979) ......................................................................... 13 Hardy v Johns-Manville Sales Corp., 681 F.2d 334 (5th Cir. 1982) ......................................................................... 14 Haye v United States, 461 F. Supp. 1168 (C.D. Cal. 1978) .............................................................. 14 Hosly Intern. Trading Corp. v. K Mart Corp., 237 F. Supp. 2d 907 (N.D.Ill. 2002) .............................................................. 17 In re Bose Corp., 476 F.3d 1331 (Fed. Cir. 2007) ..................................................................... 38 In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956)................................................... 13 In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)................................................... 15 In re Mann, 861 F.2d 1581 (Fed. Cir. 1988) ....................................................................... 8 KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444 (Fed. Cir. 1993) ..................................................................... 17 Lee v. Dayton-Hudson Corp., 838 F.2d 1186 (Fed. Cir. 1988) ..................................................................... 19

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Lopez v. Gap, Inc., No. 11-3185, 2012 U.S. Dist. LEXIS 108602 (S.D.N.Y. Aug. 2, 2012) ...... 34 Lorillard Tobacco Co. v. Jamelis Grocery, Inc., 378 F. Supp. 2d 448 (S.D.N.Y. 2005) ........................................................... 34 Louis Vuitton Malletier v. Dooney & Bourke, Inc., 340 F. Supp. 2d 415 (S.D.N.Y. 2004) ........................................................... 35 Marcyan v. Nissen Corp., 578 F. Supp. 485 (N.D. Ind. 1982), affd, 725 F.2d 687 (7th Cir. 1983) ......................................................................... 14 Natural Organics, Inc. v. Nutraceutical Corp., 426 F.3d 576 (2d Cir. 2005) .......................................................................... 36 New Kayak Pool Corp. v. R&P Pools, Inc., 246 F.3d 183 (2d Cir. 2001) .......................................................................... 36 New York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d 305 (S.D.N.Y. 2010) ........................................................... 34 OddzOn Prods. v. Just Toys, 122 F.3d 1396 (Fed. Cir. 1997) ...............................................................21, 22 Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) ...................................................................passim Qingdao Taifa Group Co. v. United States, 581 F.3d 1375 (Fed. Cir. 2009) ....................................................................... 9 Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010) ...............................................................10, 17 Streetwise Maps v. VanDam, Inc., 159 F.3d 739 (2d Cir. 1998) .......................................................................... 45 Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208 (2d Cir. 1985) .......................................................................... 35

Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372 (Fed. Cir. 2009) .................................................................9, 10 TrafFix Devices v. Marketing Displays, 532 U.S. 23, 121 S. Ct. 1255, 149 L. Ed. 2d 164 (2001) .............................. 38 W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567 (2d Cir. 1993) .......................................................................... 48 Wing Shing Prods. (BVI) Co. v. Sunbeam Prods., 665 F. Supp. 2d 357 (S.D.N.Y. 2009) ........................................................... 12 Winter v. NRDC, Inc., 555 U.S. 7, 129 S. Ct. 365, 172 L. Ed. 2d 249 (2008) .................................. 10 STATUTES 28 U.S.C. 1292(a)(1) ............................................................................................... 2 28 U.S.C. 1292(c)(1) ............................................................................................... 2 28 U.S.C. 1295(a)(1) ............................................................................................... 2 28 U.S.C. 1331 ........................................................................................................ 1 28 U.S.C. 1338 ........................................................................................................ 1 28 U.S.C. 1367 ........................................................................................................ 1 35 U.S.C. 102(b) ................................................................................................... 13 35 U.S.C. 271(a) ..................................................................................................... 3 35 U.S.C. 271(b) ..................................................................................................... 3

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RULES Fed. R. Evid. 201(b) ...........................................................................................13, 14 Fed. R. Evid. 201(c)(2) ............................................................................................ 14 Fed. R. Evid. 201(d) ................................................................................................. 13

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I.

STATEMENT OF RELATED CASES No other appeal in or from the same civil action or proceeding in the lower

court or body was previously before this or any other appellate court under the same or similar title. No other case known to counsel is pending in this or any other court that will directly affect or be directly affected by this Courts decision in the pending appeal. II. JURISDICTIONAL STATEMENT This is an appeal from the granting of a preliminary injunction by the United States District Court for the Southern District of New York on the infringement of two design patents and an unfair competition cause of action. The district court has jurisdiction under 28 U.S.C. 1331, 1338, and 1367. The district court issued its order on the preliminary injunction on July 25, 2012. (JA10) A motion for reconsideration of the entry of the preliminary injunction was timely filed and denied on March 27, 2013. (JA404) The district court entered an order dated March 28, 2013, entering the terms of the preliminary injunction and terminating the motion. (JA1) Appellant Bradshaw International, Inc. timely filed an appeal on April 26, 2013. (JA708)

This appeal is from an order granting a motion for preliminary injunction, which is appealable. 28 U.S.C. 1292(a)(1). The Federal Circuit has jurisdiction in the appeal under 28 U.S.C. 1295(a)(1) and 28 U.S.C. 1292(c)(1). III. STATEMENT OF THE ISSUES A. The District Court erred in granting the Motion for Preliminary Injunction 1. Whether the District Court erred as a matter of law in granting the Motion for Preliminary Injunction, concluding that the Plaintiff was likely to succeed on the merits in that its interpretation of the scope of the claim protection for the patents in issue improperly included several functional elements, failed to take into consideration the prior art and excluded consideration of expressly claimed elements. 2. Whether the District Court erred as a matter of law in failing to apply the proper factors in concluding Plaintiff was likely to succeed on the merits of its unfair competition claim. 3. Whether the District Court also erred as a matter of fact in concluding there was unfair competition by Defendants sale of items not subject to any patent protection of Plaintiff. B. The District Court erred as a matter of fact in finding and concluding that the Defendant acted in bad faith. IV. STATEMENT OF THE CASE Appellant Bradshaw International, Inc. (Bradshaw) appeals the entry of a preliminary injunction enjoining its making, using, offering for sale, selling, importing, or distributing of its onion-shaped onion storage containers called Onion Keepers and its garlic-shaped garlic storage containers called Garlic

Keepers. Bradshaw also appeals the entry of a preliminary injunction enjoining marketing, selling, advertising or promoting the Bradshaw Onion Keeper or the Bradshaw Garlic Keeper, or any other container that embodies the designs claimed in U.S. Patent No. D538,114 or U.S. Patent No. D592,463, or any container that is likely to be confused with the Hutzler Onion Saver or the Hutzler Garlic Saver. Hutzler Manufacturing Company, Inc. (Hutzler) is the owner of two U.S. design patents at issue in this matter. On March 13, 2007, the United States Patent and Trademark Office issued Hutzler U.S. Patent No. D538, 114 (the 114 Patent), a design patent covering the ornamental design for an onion container. (JA52) On May 19, 2009, the Patent and Trademark Office issued Hutzler U.S. Patent No. D592,463 (the 463 Patent), a design patent protecting the ornamental design for a container designed to hold garlic. (JA54) On October 13, 2011, Hutzler filed a complaint alleging infringement of both the 114 Patent and the 463 Patent in violation of 35 U.S.C. 271(a) and (b), as well as tortious interference with business and unfair competition under New York law. (JA59) On October 20, 2011, Hutzler moved for a preliminary injunction enjoining Bradshaw from: (1) infringing, or inducing infringement of, Hutzlers patents; and (2) unfairly competing with Hutzlers line of produce containers. (JA83) The district court entered a preliminary injunction against Bradshaw on July 25, 2012

(JA10), and denied Bradshaws motion for reconsideration on March 27, 2013 (JA1) V. STATEMENT OF FACTS Hutzler Manufacturing Company, Inc. is the owner of two U.S. design patents at issue in this matter. On March 13, 2007, the United States Patent and Trademark Office issued Hutzler U.S. Patent No. D538, 114 (the 114 Patent), a design patent covering the ornamental design for an onion container. (JA52) The overall appearance of the design of the 114 Patent shows similar characteristics and appearance as a real onion bulb. (JA52-53) Hutzler makes the accusation that the Bradshaw Onion Keeper product infringes the 114 Patent. (JA 68; JA244)

Figure 1, 114 Patent

Sample Red Onion

Bradshaw Onion Keeper

On May 19, 2009, the Patent and Trademark Office issued Hutzler U.S. Patent No. D592,463 (the 463 Patent), a design patent protecting the ornamental design for a container designed to hold garlic. (JA54) Similar to its 114 Patent, the overall appearance of the design of the 463 Patent shows similar 4

characteristics and appearance as a real garlic bulb. (Id.) Hutzler makes the accusation that the Bradshaw Garlic Keeper product infringes the 114 Patent. (JA 69; JA250)

Figure 1, 463 Patent

Sample Garlic Bulb

Bradshaw Garlic Keeper

Moreover, Hutzler and Bradshaw both sell full product lines of produceshaped produce containers. Hutzlers product line is called Food Savers, while Bradshaws product line is called Food Keepers, with sample products illustrated below:

Sample Hutzler Food Savers

Bradshaw Keeper Products

(JA427-429) As far as the creation of the Bradshaw line of Keeper products, in October 2009, as Bradshaw was preparing for the annual International Housewares Association (IHA) tradeshow in Chicago, its head of product development, Tom Barber, gave to Jeff Boutthavon, one of Bradshaws designers, some documents, including rough sketches and catalog and magazine clippings, and stated that he wanted to talk that same day because he wanted Bradshaw to have food keeper type products to exhibit at the IHA tradeshow in March 2010. (JA493 6; JA509-510) The clippings showed onion, garlic, pepper, tomato, and lemon containers. (JA493 7) None of the clippings were from Hutzler catalogs or advertisements or showed Hutzler products. In fact, some of the clippings were of Bradshaws own ProFreshionals brand. (Id.) From these drawings and clippings, Jeff Boutthavon rendered a proto-type on the computer. However, Tom Barber was not satisfied with the design and decided to turn the project over to an outside design firm named A2. (Id. at 8) Bradshaw provided A2, a successful New York-based design firm, with a box of samples that Tom Barber and his designers had purchased. (Id. at 9) No inventory of that box remains, but Tom Barber recalls it contained ceramic and plastic decorative fruit and vegetable pieces, small storage containers, Tupperware food containers and a Hutzler food saver. (Id.)

The sketches originally produced by Tom Barber and conveyed to A2 were pencil drawings which focused on Bradshaws desire to produce items which were stylish and contemporary rather than natural-looking. (Id. at 10) While Hutzler has alleged that Bradshaw copied Hutzlers food saver items, quite the opposite is true. Tom Barber wanted items that did not look like the Hutzler items because he believed the Hutzler food savers looked like bad versions of the real thing; like a toy. (Id.) In fact, on February 17, 2010, Tom Barber and Lou Henry, the designer at A2, discussed making the Bradshaw items contemporary, and different from the items in the market, which Tom felt had no style. (Id.) Their goal was to design keepers which the viewer saw as stylish, as if they had come from the chic Italian design house, Alessi. (Id.) That concept is memorialized in Tom Barbers email to Lou Henry of that same date. (JA522) Based on the sketches and at Bradshaws direction, A2 created a design that not only follows the sketches and captures the desired stylish and contemporary theme, but is also a product which could be manufactured economically given the operational constraints of injection molding. (JA493 11) Bradshaw did not provide an item to a designer or manufacturer and request it to copy that item. (JA499) Bradshaw employs six (6) in-house designers and also works with outside design firms such as A2, on which it relies to develop original product ideas and designs. (Id.)

Bradshaw, upon receiving the initial cease and desist letter from Hutzlers counsel, immediately sought out and received an opinion from its patent counsel, Mr. Paul Lewis, stating that Onion and Garlic keepers did not infringe Hutzlers asserted patents. (JA496-497) That oral opinion was reduced to writing by Mr. Lewis and provided to Bradshaw. (Id.) Bradshaw relied on this opinion in having a good faith belief it was not infringing any Hutzler patents. (JA493) VI. SUMMARY OF THE ARGUMENT In complete contravention of the evidence presented and the law of design patents and unfair competition, the district court found that Hutzler had a likelihood of success on the merits for its claims of infringing its 114 Patent and its 463 Patent, as well as a likelihood of success on the merits for its unfair competition claim. (JA36) If this Court were to sustain the district courts finding of a likelihood of success on the merits of Hutzlers design patent infringement claim, it would complete in a mere twenty-five years a stunning 180-degree about-face as to the scope of protection afforded a design patent. In 1988, this Court proclaimed that, [d]esign patents have almost no scope. The claim in all design cases, is limited to what is shown in the application drawing. In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988). Under the facts of the present case, a finding of a likelihood of success on the claims of infringement of the 114 Patent and 463 Patent by

Bradshaws Onion Keeper and Garlic Keeper, respectively, would mean that design patents have nearly limitless scope, that functional elements can be claimed and that expressly claimed features can be ignored. Moreover, if the Court were to maintain the district courts finding of a likelihood of success on Hutzlers unfair competition claim, the Court would countenance the expansion of patent rights through trademark rights and thereby effectively granting monopolies to any first comer that effectively advertises its products and moreover would distort both bodies of law by allowing a party to claim protected rights in the natural shapes of vegetable produce. VII. STANDARD OF REVIEW The governing standard of review on appeal of a grant or denial of a preliminary injunction is abuse of discretion. Am. Signature, Inc. v. United States, 598 F.3d 816, 823 (Fed. Cir. 2010) (citing Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009)). An abuse of discretion may be established under Federal Circuit law by showing that the court made a clear error of judgment in weighing the relevant factors or exercised its discretion based on an error of law or clearly erroneous fact finding. Id. (quoting Qingdao Taifa Group Co. v. United States, 581 F.3d 1375, 1379 (Fed. Cir. 2009)).

VIII. ARGUMENT In determining whether a preliminary injunction should issue, the Court must evaluate: [a] plaintiff seeking a preliminary injunction must establish [1] that he is likely to succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his favor, and [4] that an injunction is in the public interest. Am. Signature, Inc. v. United States, 598 F.3d 816, 823 (Fed. Cir. 2010) (quoting Winter v. NRDC, Inc., 129 S. Ct. 365, 374, 172 L. Ed. 2d 249 (2008)). From the four-factor test, the plaintiff must prove a likelihood of success on the merits. The failure of the plaintiff to prove a likelihood of success is fatal to the plaintiffs motion for a preliminary injunction and the remaining factors need not be evaluated. Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1385 (Fed. Cir. 2009). The district courts finding of a likelihood of success on the merits by Hutzler on its design patent infringement and its unfair competition claims is predicated upon multiple errors of law and erroneous fact finding. A. The District Court Interpreted The Scope Of The 114 Patent And The 463 Patent Far Beyond The Drawings Of The Patents

The Court reviews claim construction of a patent (including a design patent) de novo on appeal. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010). The test for determining infringement of a design patent is the

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ordinary observer test, where the court compares the accused device with the drawings of the patent through the eyes of the ordinary observer. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 677 (Fed. Cir. 2008). [D]ifferences between patented and accused designs are not irrelevant. Courts should take into account similarities and differences in determining whether or not consumer deception could occur. FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 527 (Fed. Cir. 1987). Although the Egyptian Goddess case removed point of novelty as the second prong of the test for design patent infringement, a patentee cannot protect a design that he did not invent, and cannot claim protection for a design that is in the prior art. 1. The District Court Failed To Consider The Prior Art As Part Of The Ordinary Observer Analysis

The ordinary observer test of Gorham require[s] that the perspective of the ordinary observer be informed by a comparison of the patented design and the accused design in light of the prior art. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 674 (Fed. Cir. 2008) (emphasis added). In neither the district courts opinion granting the preliminary injunction nor the district courts opinion denying the motion for reconsideration was there any consideration of the prior art in determining the scope of the Hutzler patents. (JA10 (citing the Egyptian Goddess ordinary observer test without consideration that the ordinary observer has knowledge of the prior art)). The Court must consider the prior art to determine the 11

proper scope of the design patent. The Egyptian Goddess standard is engineered to avoid the anomalous result where a design that simply embodies a piece of prior art is found to infringe. See Wing Shing Prods. (BVI) Co. v. Sunbeam Prods., 665 F. Supp. 2d 357, 361 (S.D.N.Y. 2009). This anomalous result is indeed the result occurring in the present caseBradshaw is found to be infringing only because it embodies elements found in the prior art. The major impetus for the district courts improper finding of likelihood of success on the patent infringement claims is that Bradshaws products are shaped like an onion and a garlic bulb. The district court explicitly stated that its finding that Hutzler had established a likelihood of success on the merits of its patent infringement claims was premised in large part on its perception that [t]he patent designs and Bradshaws products have the same shape that of onion and garlic bulbs in the same proportions. (JA26) The district court was unwilling to acknowledge that these same shapes that of an onion and garlic bulbs are also the same size and proportions of red onions and elephant garlic bulbs. (Id.) Although what it seems like an unnecessary request for common sense and unnecessary, Bradshaw is compelled to ask that the Court take judicial notice of the fact that red onions and elephant garlic bulbs of similar size, shape, proportion, and color have existed at least one year prior to the filing of the 114 Patent and the 463 Patent, and thus are prior art to the 114 Patent and the 463 Patent.

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The existence of similarly-shaped produce as prior art is the kind of fact the Court must take notice of. The court may judicially notice a fact that is not subject to reasonable dispute because it: (1) is generally known within the trial courts territorial jurisdiction; or (2) can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned. Federal Rule of Evidence 201(b). It is proper for the Federal Circuit to take judicial notice of facts that meet the criteria of F.R.E. 201(b). Federal Rule of Evidence 201(d) provides that judicial notice may be taken at any stage of the proceeding, and the Advisory Committees note to this provision explains that it permits the taking of judicial notice at any stage, whether in the trial court or on appeal. Government of Canal Zone v. Burjan, 596 F.2d 690, 694 (5th Cir. 1979). Hutzler cannot dispute that the requirements of judicial notice are met. First, onions and garlic are available at any grocery store anywhere in the country. Red onions and elephant garlic bulbs have existed ubiquitously since time immemorial and in the United States certainly since its founding, thus meeting the requirements of 35 U.S.C. 102(b). See In re Glavas, 230 F.2d 447, 450 (CCPA 1956) (the use to which an article is to be put has no bearing on its patentability as a design and . . . if the prior art discloses any article of substantially the same appearance as that of an applicant, it is immaterial what the use of such article is . . . Accordingly, so far as anticipation by a single prior art disclosure is concerned, there can be no

13

question as to nonanalagous art in design case.). Second, the size of onions and garlic blubs can readily ascertained by visiting the produce section of any grocery store. In particular, the general shape and qualities of well-known products are the types of facts that are proper for the Court to take judicial notice of. Examples include taking judicial notice of characteristics of snowmen, Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498 (2d Cir. 1982), of characteristics of bicycles, Marcyan v. Nissen Corp., 578 F. Supp. 485 (N.D. Ind. 1982), affd, 725 F.2d 687 (7th Cir. 1983), and of characteristics of ice cream colors. Dippin Dots, Inc. v Frosty Bites Distrib., LLC, 369 F.3d 1197 (11th Cir. 2004). These are the kind of self-evident facts the court can take judicial notice of. See Hardy v. JohnsManville Sales Corp., 681 F.2d 334 (5th Cir. 1982). Moreover, once the requirements of F.R.E. 201(b) are met, the Court is required to take notice under F.R.E. 201(c)(2). See Haye v. United States, 461 F. Supp. 1168 (C.D. Cal. 1978). The Court must consider the size, shape, color, and proportions of red onions and elephant garlic bulbs when evaluating the scope of the Hutzler patents. In addition to the shape of red onions and elephant garlic bulbs, the district court failed to consider the prior art made of record. Most notably, the district court found likelihood of success on the merits on infringement of the 114 Patent based on three particular features: The 114 Patent and Bradshaws Onion Keeper

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likewise have (1) vertical striations running the length of the product; (2) striations that convene in a narrow stem at the top; and (3) a horizontal line running across the middle of the container where the products open. (JA26) Remarkably, all three of these elements are found in the exact same piece of prior art. On the record before the district court was U.S. Patent No. 4,795,033, titled Packaging and Storage Container, filed on July 10, 1987 (the 033 Patent). (J751) The 033 Patent disclosed numerous food-shaped containers, designed to look like the item of produce it was designed to contain. Moreover, Figures 1-3 show an onion-shaped onion container, with Figure 1 reproduced below (both in original form and rotated 90 degrees):1

Figure 1, U.S Patent No. 4,795,033

The orientation of particular features in the prior art are merely arbitrary descriptors (i.e. vertical is not with reference to any particular axis) does not disqualify the reference as relevant prior art. Cf. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). 15

The onion-shaped container of the 033 Patent depicts striations running the length of the product from the top of the onion to the bottom of the onion. The 033 Patent depicts striations that convene in a narrow stem at the top of the onion. The 033 Patent depicts a line running along the circumference of the middle of the container where the product is made to open. As all three of these elements can be found in the prior art of record, it was legally insufficient for the district court to premise a finding of infringement of the 114 Patent upon elements solely found in that prior art. The 114 Patent must be construed much more narrowly than the handful of generic elements recited by the district court to avoid encroaching onto the prior art and invalidating the patent.2

In January 2010, Dennis Crouch, Associate Professor, University of Missouri School Law and author of the prominent patent law blog PatentlyO.com, performed a study of 1049 design patent applications that had issued during the previous twelve months (which is the same timeframe during the pendency of the 114 Patent and the 463 Patent). His study found that only 1.2% of design patent applications received a prior art rejection during its pendency before the USPTO. Moreover, 81.6% of applications never received any rejection during its pendency before the USPTO. Mr. Crouchs study corroborates the USPTOs reported allowance rate of about 90% for design patents. (JA747) The Hutzler patent applications in this case were also granted without a single prior art rejection. (JA712) Although Bradshaw does not ask the Court to disregard the presumption of validity of design patents, the Court must at least see the failure of both the USPTO and the District Court to consider the scope of a design patent in view of the prior art. 16

2.

The District Court Ignored Expressly Claimed Limitations Recited In The 114 Patent and the 463 Patent

The district court, in its Memorandum correctly notes that [i]t is the drawings in the patent, not just one feature of the claimed design, that define the patent design, (JA 19), quoting KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993), and, citing Richardson v. Stanley Works, Inc., 597 F.3d 1288, (Fed. Cir. 2010), and further emphasized the decisive importance of drawings in a design patent. (JA18) Finally, as the Court in Contessa Food Prods. Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir. 2002) stated: If features appearing in the figures are not desired to be claimed, the patentee is permitted to show the features in broken lines to exclude those features from the claimed design, and the failure to do so signals inclusion of the features in the claimed design. Id. at 1378. Thus, every line and feature depicted in the drawings is an element of the claimed design, either the surface ornamentation or the product configuration, and must be considered in construing the scope of the claims and analyzing infringement. See Hosly Intern. Trading Corp. v. K Mart Corp., 237 F. Supp. 2d 907, 910 (N.D.Ill. 2002). Yet, despite the critical importance of all of the elements shown in the patent drawings, the district court concluded that: The claims extend to the overall design of the onion and garlic containersincluding the shape and proportions of the products and the horizontal line across the middle of the onion container and two-thirds of the way down the garlic container. 17

(JA24) The district courts only mention of the relevance of the vertical lines shown in the drawings of the 114 patent erroneously references vertical lines running the length of the product. (JA26) The drawings of the 114 patent show lines of varying length on the surface of the product, none of which run the length of the product. (JA52) Moreover, in the district courts interpretation of the claims of the 463 garlic patent, there is no mention whatsoever of the surface lines shown in the drawings. Even if there were, however, and similarly to the 114 patent above, none of those lines run the length of the product, as they do in the Bradshaw garlic saver product. (JA252) Moreover, as shown in Figure 8 of the 463 Patent, there is a very distinctive design in the center of the garlic container. (JA58) Specifically, the design includes surface texturing with a picture of what appears to represent a piece of garlic. (Id.) In the Bradshaw garlic container, however, there is surface texturing, but this surface texturing is a series of broken concentric circles. (JA256) In addition, the bottom of the Bradshaw garlic container has four (4) holes that are arranged in two (2) opposite pairs. (Id.) This design and

arrangement of holes provides a very different look to the Bradshaw garlic container than that of the patented design. (Id.) No other mention whatsoever is made to the surface lines shown in the patents, nor to the fact that those lines were considered in any way to be important

18

elements of the claims. In fact, the court seems to have read-out those surface lines altogether. In other words, the outside surface appearance of the patented design, as claimed by the lines shown in the patented drawings, has been wipedaway by the district courts interpretation of the drawings/claims, rendering a patent drawing that is limited solely to the solid lines depicting the shape of the design in silhouette and the center line. As the Court itself acknowledged in citing Keystone and Richardson, this is not proper. 3. The District Court Improperly Included Functional Elements As Part Of The Scope Of The 114 Patent And The 463 Patent

The district court erred by defining the function of the Hutzler designs too narrowly. As a result, the district court erroneously held the shape of Hutzlers products are non-functional. (JA35) The court went to hold that Hutzler has established a likelihood of success on the merits of its patent infringement claim. (JA36) Design patents do not and cannot include claims to the structural or functional aspects of the article. Lee v. Dayton-Hudson Corp., 838 F.2d 1186 (Fed. Cir. 1988). A design that copies the utilitarian or functional features of a patented design is not an infringement unless the ornamental aspects are also copied, such that the overall resemblance is such as to deceive. Id. at 1189 (quoting Gorham Co. v. White, 81 U.S. 511, 528 (1872)).

19

The district considered only the food storage function of the patented designs. It did not consider the communication function of the designs, i.e.,

conveying to users that which is stored inside the container, which is an equally important function of the product design. Admittedly, a sealed container of any shape and size could be used to store foods in a refrigerator as long as the inside of the container is bigger than the food to be stored and the outside of the container is smaller than the inside of the refrigerator. There are a limited number of ways in which the container can simultaneously store the food and communicate what is contained inside the container, however. For example, the container can be clear, it can have a label on which a description can be written, and it can have an external shape that correlates to the food stored inside. The idea of a container having an external shape that correlates to the food stored inside is not the proper subject of design patent protection. The structural and functional aspects of an embodiment of that idea may be protected by a utility patent. Only the ornamental features of such a container, whether surface

ornamentation or product configuration, can be protected with a design patent. The district court correctly identified the factors to consider when discerning the ornamental from the functional aspects in a design containing both: whether the protected design represents the best design; whether alternative designs would adversely affect the 20

utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or any overall appearance clearly not dictated by function. (JA16) (citing Berry Sterling Corp. v. Prescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997)). The district court erred, however, in failing to consider those factors in the present case to disentangle the ornamental from the functional. The court summarily concluded that the onion and garlic shapes are not functional characteristicsbecause, as noted above, onion and garlic can be and are stored in containers of myriad shapes and sizes. (JA26) While this may be true with regard to food storage exclusively, it is incorrect with regard to shapes intended both to store food and communicate what is inside the container. Alternative designs would affect the communication function of the specified article, which is a factor to be considered under Berry Sterling. In many respects this case is analogous to OddzOn Prods. v. Just Toys, 122 F.3d 1396 (Fed. Cir. 1997). In OddzOn, Plaintiff OddzOn argued that the shape of a football with an arrow-like tail is an ornamental feature because it is not required for a tossing ball. This Court pointed out that: [plaintiff] correctly states that there are many ways of designing tossing balls, it is undisputed that the ball in question is specifically designed to be thrown like a football, yet travel farther than a traditional foam football. It is the football shape combined with fins on a tail that give the design these functional qualities. The 21

tail and fins on OddzOns design add stability in the same manner as do the tail and fins found on darts or rockets. They are no less functional simply because tossing balls can be designed without them. OddzOn Prods., 122 F.3d at 1406. Similarly in the present case, having a food storage container shaped like the food stored in it is not required, but doing so enhances the functionality of the container by communicating the contents of the container. The shapes in the patents-in-suit are designed to store food, but they also are designed to talk to consumers and let them know what is inside. It is this enhanced functionality that dictates the shape of the containers and enhances their usefulness and functionality by making it easier to recognize what they contain just as the fins and tail make the football in Oddzon easier to throw. Hutlzer itself promotes the utility of the shape of the designs in issue also a factor listed in Berry Sterling. (JA440-447) In reference to its onion saver

product, as well as for several others in its food saver line, Hutzler promotes that the design makes the product [e]asy to find in the refrigerator, and the containers are [m]ade to look just like an onion, the Onion Saver will never be lost or forgotten in the fridge. (JA433-439) If a seller advertises the utilitarian

advantages of a particular feature, this constitutes strong evidence of functionality. Disc Golf Assn v. Champion Discs, 158 F.3d 1002, 1009 (9th Cir. 1998). 22

According to the Hutzler marketing materials, its products are easy to find because they are shaped like an onion or garlic bulb. This sort of product

promotion is the kind of advertising referred to by the Court in Berry Sterling as tending to prove the design is dictated by function and is not protectable with a design patent. The district court erred by either not considering these factors, or by not according them appropriate weight. As a result, the court erred as a matter of law in construing the claims to cover the general product configuration depicted in the patented designs. This over-broad claim construction resulted in the court mistakenly concluding that Hutzler established a substantial likelihood of success on the merits of its patent infringement claim. Construed properly, Hutzler is unlikely to prove the Bradshaw designs infringe the patents. Construed improperly as done so by the district court, Hutzler still is unlikely to be successful on the merits of its patent infringement claims, because the patents are invalid as obvious and anticipated by the prior art. 4. Upon Proper Interpretation Of The 114 Patent And The 463 Patent, The Bradshaw Products Cannot Infringe a. The Design Of The 114 Patent Is Not Substantially Similar To The Bradshaw Onion Keeper

The 114 Patent includes 3 figures, which are directed to the ornamental design of an onion container, as shown and described. (JA53) As stated in

Contessa Food Products, Inc. v. Conagra, Inc., it was held that the ordinary

23

observer analysis is not limited to the ornamental features of a subset of the drawings, but instead must encompass the claimed ornamental features of all figures of a design patent. 282 F.3d 1370, 1379 (Fed Cir. 2002). As can be seen from Figure 1 of the 114 Patent, the outside circumference of the onion container is a perfect circle. (JA53) In addition, the onion container includes a surface texture that looks like the skin of an onion and is solid, not transparent. (Id.) This surface texture is uneven and arbitrary, but includes generally radially extending lines in the top view that converge at a center of the circular onion container. (Id.) The center of the onion container also includes a very narrow top or tip surface. (Id.) Conversely, the outside circumference of the Bradshaw onion keeper is not a perfect circle, but has a scalloped edge in top view. (JA242) In addition, in the Bradshaw onion keeper, the top view clearly shows that the material is transparent, not solid as in Figure 1 of the 114 Patent and does not resemble an onion at all. (Id.) This provides a very different look to the Bradshaw onion keeper, since the internal surfaces of the onion keeper are visible through the top. The Bradshaw onion keeper has a smooth surface, except for the twelve (12) very distinctive, radially extending indentations. (Id.) Finally, the Bradshaw onion keeper has a very wide top or tip surface, which, due to the converging of the twelve (12) indentations, the top or tip surface is circular, but is not a perfect circle, having a

24

scalloped edge which mimics the outside circumference of the Bradshaw onion keeper. An examination of the side view of the 114 Patent and the Bradshaw onion keeper further reveal that the overall appearance of the design of the 114 Patent and the Bradshaw onion keeper are not the same. Figure 1 of the 114 Patent includes a surface texture that looks like the skin of an onion. (JA53) This surface texture is uneven and arbitrary. In Figure 2 of the 114 Patent, the surface texture includes generally vertically extending lines in the center, and angled lines at the opposite sides that converge at a top center of the circular onion container. (JA53) The center of the onion container is very narrow on the top, so that the surface texture comes to a point. (Id.) There is also a separation at the vertical midsection of the onion container. (Id.) The surface texture above the separation and below the separation is generally continuous, and the material is clearly solid, not transparent. (Id.) The overall appearance of the Bradshaw onion keeper is quite different. As mentioned above, there is no surface texture that looks like the outside of a real onion. Of the 12 vertical indentations in the Bradshaw onion keeper, in any side view, there are only 4-6 that are ever visible. These indentations are very recognizable when viewing the side of the Bradshaw onion keeper, in stark distinction to the hundreds of arbitrary lines that appear in Figure 2 of the onion

25

container of the 114 Patent. The Bradshaw onion keeper also has a very thick top, and the angle of the top from horizontal is not the same as in Figure 2 of the 114 Patent. The Bradshaw onion keeper includes a separation point where an ordinary observer would recognize one of the biggest differences between the design of the 114 Patent and the Bradshaw onion keeper; namely that the Bradshaw onion keeper above the separation is transparent, whereas the bottom below the separation is solid, providing a very different look to the Bradshaw onion keeper. (JA244) The top portion provides a reflection back to the ordinary observer, while also allowing the rear part of the onion keeper to be seen through the surface of the front part, providing a two-toned appearance to the Bradshaw onion keeper, which does not have the appearance of the skin of an onion, as in the design of the 114 Patent.3 The numerous vertical lines in the design of the 114 Patent create a completely different overall appearance to the onion container when compared to the Bradshaw onion keeper. As the Court stated in Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995), since vertical lines are included in the drawings, their effect on the overall appearance must be considered. Id. at 1577. Since the

The transparent top portions of the Bradshaw products also provide for a visual of the produce when stored in the container, thereby also potentially changing the overall appearance of the products to the consumer when in use. 26

Bradshaw onion keeper does not include these numerous vertical lines, which provide the appearance of the skin of an onion, the overall appearance of the Bradshaw onion keeper is not the same as the overall appearance of the 114 Patent. Examining the last drawing of the 114 Patent, the surface texture in Figure 3 of the 114 Patent looks like the skin of an onion and the outer circumference is a perfect circle. In addition, Figure 3 of the 114 Patent appears to include a gradually curving surface from the sides to the bottom, until the bottom center ultimately becomes flat. The sides of the onion container curve downwardly on the outside (see Figure 2), and then have a more abrupt curve at the bottom, but there is no clear line of demarcation between the side walls and the bottom wall, as seen in the partial concentric circles shown surrounding the center of the bottom in Figure 3 of the 114 Patent. Referring to the photograph of the bottom of the Bradshaw onion keeper, the surface texture is also not present, and the outer circumference is generally circular, but also has a scalloped edge. In addition, there is a ridge formed at a spaced location from the center of the onion keeper. This ridge is formed from a recessed bottom. In addition, there is a narrow portion outside of the ridge, which is flat, and then gradually curves into the side walls (see Figure 2 of the Bradshaw

27

onion keeper). In view of this, the bottom of the Bradshaw onion keeper is very different from Figure 3 of the 114 Patent. Clearly, the overall appearance of the Bradshaw onion keeper is very different from the entire design of the onion container in Figures 1-3 of the 114 Patent. Therefore, an ordinary observer would not consider the two designs to be substantially the same, as would be required to meet ordinary observer test for design patent infringement. Gorham, 81 U.S. at 528. Therefore, such an observer would not be deceived to purchase the Bradshaw onion keeper, supposing it to be the design of the 114 Patent. b. The Design Of The 463 Patent Is Not Substantially Similar To The Bradshaw Garlic Keeper

The 463 Patent includes 8 figures directed to the ornamental design of a garlic container. (JA55-58) Beginning with an examination of Figure 2 of the 463 Patent, while the garlic container of the 463 Patent is generally circular in top view, the outside circumference of the garlic container is not a perfect circle, but rather has a diameter which changes around the entire circumference in an arbitrary manner. (JA248) In addition, the garlic container includes a surface texture that is nontransparent, and looks like the skin of a piece of garlic and includes radially extending lines that terminate at a spaced location from the center of the garlic

28

container. (Id.) The center of the garlic container also includes a top or tip surface that is a perfect circle in the top view. (Id.) Referring to the top view of the Bradshaw garlic keeper, while it is generally circular, the outside circumference is not a perfect circle, but has a scalloped edge, and, most notably, is also symmetric, not arbitrary. (Id.) In addition, in the Bradshaw garlic keeper, the top view clearly shows that the material is transparent, not solid as in Figure 2 of the 463 Patent. (Id.) This provides a very different look to the Bradshaw garlic keeper, since the internal surfaces of the garlic keeper are visible through the top, and do not resemble the skin of a piece of garlic. The Bradshaw garlic keeper has a smooth surface, except for the eight (8) very distinctive, radially extending indentations. These indentations extend to and converge at the tip or top of the Bradshaw garlic keeper, and are not spaced therefrom as in Figure 2 of the 463 Patent. Actually, the indentations do not resemble a piece of garlic at all, as a real piece of garlic is not smooth with radial indentations as is the Bradshaw garlic keeper. Finally, the Bradshaw garlic keeper has a top or tip surface, which, due to the converging of the eight (8) indentations is generally circular, but is not a perfect circle, having a scalloped edge similar to the outside circumference of the Bradshaw garlic keeper. (Id.) Referring to Figures 3-6 of the 463 Patent the overall appearance of the design of the 463 Patent and the Bradshaw garlic keeper are not the same. (JA250)

29

The 463 patent garlic container includes a surface texture that is uneven and arbitrary; looks like the skin of a piece of garlic, and includes generally vertically extending lines in the center, and angled lines at the opposite sides that converge toward the top or tip of the circular garlic container. (Id.) However, the lines are spaced substantially from the top or tip of the garlic container. (Id.) The top or tip of the garlic container is angled at a very steep angle. (Id.) Also, the surface texture above the separation and below the separation is generally continuous, and the material is clearly solid, not transparent. (Id.) Finally, there are apertures formed near the bottom of the garlic container in each of Figures 3-6 of the 463 Patent. (Id.) In the Bradshaw garlic keeper there is no surface texture that looks like the outside of a real piece of garlic and there are eight (8) vertically extending indentations in the entire Bradshaw garlic keeper. (Id.) In any side view, there are only 3-4 that are ever visible at one time. (Id.) This is in stark distinction to the twenty (20) or more arbitrary lines that appear in the side views of the garlic container of the 463 Patent. (Id.) The Bradshaw garlic keeper top or tip does not include the distinctive angle that is present in the side views of the 463 Patent, and the Bradshaw garlic keeper is symmetric. (Id.) Therefore, it is the same from the side no matter from which direction it is viewed. (Id.) The garlic container of the

30

463 Patent, with its arbitrary vertical lines and slanted top are different in each of the side views (Figures 3-6). (Id.) The Bradshaw garlic keeper also includes a separation point where an ordinary observer would recognize one of the biggest differences between the design of the 463 Patent and the Bradshaw garlic keeper. Specifically, the top of the Bradshaw garlic keeper above the separation is transparent, whereas the bottom below the separation is solid. (Id.) This difference of material provides a very different look to the Bradshaw garlic keeper. The top portion provides a reflection back to the ordinary observer, while also allowing the rear part of the garlic keeper to be seen through the surface of the front part and also providing for a view of the produce when it is stored in the container. Also, the dramatic difference between the top and bottom portions of the Bradshaw garlic keeper provides a two-toned appearance to the Bradshaw garlic keeper, which does not have the appearance of the skin of a piece of garlic, as in the design of the 463 Patent. (Id.) The same reasoning would apply to the perspective view (Figure 1) of the 463 Patent. (JA252) In Figure 7 of the 463 Patent, the same visual appearances mentioned above with regard to the other figures of the 463 Patent are also present. (JA254) Specifically, the surface texture in Figure 7 of the 463 Patent looks like the skin of a piece of garlic and the outer circumference is random and arbitrary. (Id.) In

31

addition, Figure 7 of the 463 illustrates that there are five (5) tear drop shaped holes formed in the bottom of the garlic container. (Id.) Finally, there is no clear line of demarcation between the side walls and the bottom wall. (Id.) In the Bradshaw garlic keeper, the surface texture is also not present, and the outer circumference is generally circular, but also has a scalloped edge. (Id.) In addition, there is a ridge formed at a spaced location from the center of the garlic keeper. (Id.) This ridge is formed from a recessed bottom. (Id.) In addition, there is a narrow portion outside of the ridge which is flat, and then gradually curves into the side walls. (Id.) Furthermore, there are only four (4) rectangularly shaped holes in the bottom. (Id.) These holes are less in number and are also a completely different shape from the tear drop shaped holes in Figure 7 of the 436 Patent. (Id.) In addition, the holes are spaced around the center of the Bradshaw garlic keeper, so that there are two (2) pairs of holes, which if extended would form a cross. (Id.) In view of the above differences, the ordinary observer would conclude that the bottom of the Bradshaw garlic keeper is completely different from Figure 7 of the 463 Patent. In Figure 8 of the 463 Patent, in addition to the five (5) holes mentioned above with regard to Figure 7, there is a very distinctive design in the center of the garlic container. (JA256) Specifically, the design includes surface texturing with a picture of what appears to represent a piece of garlic. (Id.) In the Bradshaw garlic

32

container, however, there is surface texturing, but this surface texturing is a series of broken concentric circles. (Id.) In addition, there are the four (4) holes that are arranged in two (2) opposite pairs. (Id.) This design and arrangement of holes provides a very different look to the Bradshaw garlic container. In view of the above, Bradshaw respectfully submits that the overall appearance of the Bradshaw garlic keeper is very different from the entire design of the garlic container in Figures 1-8 of the 463 Patent. Therefore, an ordinary observer would not consider the two designs to be substantially the same, as would be required to meet ordinary observer test for design patent infringement. Gorham, 81 U.S. at 528. Therefore, such ordinary observer would not be deceived to purchase the Bradshaw garlic keeper, supposing it to be the design of the 463 Patent. B. The District Court Failed to Apply the Polaroid Factors In Evaluating A Likelihood of Confusion in Relation To Hutzlers Unfair Competition Claim

Somewhat incredibly, a district court residing under the regional jurisdiction of the Court of Appeals for the Second Circuit failed to undertake a likelihood of confusion analysis under the long-established Polaroid factors, the quintessential recitation of factors determining likelihood of confusion. Long-established Second Circuit precedent requires that consideration is paid to every Polaroid factor in determining a likelihood of confusion, including a recitation why certain factors

33

are inapplicable. One of the most important Polaroid factors, the strength of the mark, was never analyzed by the district court.4 To succeed on an unfair competition claim under New York common law, the plaintiff must prove 1) a likelihood of confusion; and 2) the defendants bad faith. New York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d 305, 325 (S.D.N.Y. 2010). Under New York law, the elements necessary to prevail on causes of action for trademark infringement and unfair competition . . . mirror the Lanham Act claims. Lopez v. Gap, Inc., No. 11-3185, 2012 U.S. Dist. LEXIS 108602, at *67 (S.D.N.Y. Aug. 2, 2012) (quoting Lorillard Tobacco Co. v. Jamelis Grocery, Inc., 378 F. Supp. 2d 448, 456 (S.D.N.Y. 2005)). In fact, the Second Circuit has held that the claim of unfair competition under New York Law and a Lanham Act claim are the same, except that the state law claim requires the additional element of bad faith. Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 149 (2d Cir. 1997) (quoting Girl Scouts v. Bantam Doubleday Dell Publg Group, Inc., 808 F. Supp. 1112, 1131 (S.D.N.Y. 1992)). Likewise, this Court has explicitly held that under New York law, [i]n addition, to succeed on the merits of a common law claim of unfair competition, [a plaintiff] must couple its evidence supporting liability under the Lanham Act with additional evidence demonstrating

And as explained in Section C, it was erroneous for the district court to conclude Hutzler had any protectable interest in the entirety of its food container product line. 34

[the defendants] bad faith. Louis Vuitton Malletier v. Dooney & Bourke, Inc., 340 F. Supp. 2d 415, 436 (S.D.N.Y. 2004) (internal quotations omitted). The district court failed to consider at all in entering its Order on Preliminary Injunction the factors recited in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) in determining a likelihood of confusion. However, since the test for likelihood of confusion under New York common law has been adjudicated to be the same as the test for likelihood of confusion under the Lanham Act, the test applied must be the same. It was an abuse of discretion by the district court to fail to consider at all the Polaroid factors in determining whether a likelihood of confusion exists. The Second Circuit expounded on this point in the context of a preliminary injunction: In determining a likelihood of confusion, it has long been the practice of this Circuit to apply the multi-factor balancing test articulated by Judge Friendly in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). See Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 391 (2d Cir. 1995) (Under the law of this Circuit, courts deciding whether a plaintiff has established likelihood of confusion must consider the eight [Polaroid] factors.). Although we have recognized that the application of the Polaroid test need not be rigid, it is nevertheless incumbent upon the district judge to engage in a deliberate review of each factor, and, if a factor is inapplicable to a case, to explain why. Id. at 400; see also Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208, 214 (2d Cir. 1985) (No single Polaroid factor is pre-eminent, nor can the presence or absence of one without analysis of the others, determine the outcome of an infringement suit.). 35

We review a denial of a preliminary injunction for abuse of discretion, which occurs, inter alia, when the district court applies the wrong legal standard. Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 142 (2d Cir. 1997). In this case, the district court did not apply the Polaroid test to the facts before it, or even mention the test in its opinion. Thus, it cannot be said that the court engaged in a deliberate review of any, much less all, of the Polaroid factors as required under the law of this Circuit. New Kayak Pool Corp. v. R&P Pools, Inc., 246 F.3d 183, 185 (2d Cir. 2001). The Second Circuit vacated the district courts decision and remanded for the district court to apply the Polaroid factors. These same Polaroid factors are applied in allegations of unfair competition. See Natural Organics, Inc. v. Nutraceutical Corp., 426 F.3d 576, 578 (2d Cir. 2005). The eight Polaroid factors are: 1) the strength of the plaintiffs mark; 2) the similarity of plaintiffs and defendants marks; 3) the competitive proximity of the products; 4) the likelihood that plaintiff will bridge the gap and offer a product like defendants; 5) actual confusion between products; 6) good faith on the defendants part; 7) the quality of defendants product; and 8) the sophistication of buyers. The very first one of these factors, the strength of the plaintiffs rights, was never analyzed or considered by the district court, and the district court explicitly acknowledged it never analyzed whether Hutzler had any protectable mark or rights. (JA6-7) As explained below, Hutzler is asserting rights through unfair competition law that it simply does not possess, and through proper application of the Polaroid 36

factors, the Court must reach a conclusion there is no likelihood of confusion between the Hutzler product line and the Bradshaw product line. At a minimum it is reversible error that the district court failed to consider all of the Poloroid factors. C. Hutzler Cannot Protect Under Unfair Competition Law What It Failed To Patent

In the present action, Hutzler has brought an allegation of unfair competition against Bradshaw for unfairly competing with its entire Food Saver Line of products. (JA70-71) In its memorandum opinion, the Court appears to conclude that Hutzler has invented food-shaped containers, and therefore is entitled to protection under unfair competition law. (JA39) However, the established record before the Court (let alone many additional examples Bradshaw provides) demonstrates that Hutzler did not invent food-shaped containers. Rather, the

concept of food-shaped containers is already in the public domain and an idea that any company is free to commercialize and sell. On only the record before the Court, Bradshaw has provided evidence that, as a matter of law, the idea of food-shaped containers was invented long before Hutzlers application (and commercialization) of its onion-shaped container, let alone the remainder of its food-shaped product line. One of the references cited by the Examiner in the 463 Patent was U.S. Patent No. 4,795,033, titled Packaging and Storage Container, filed on July 10, 1987, (the 033 Patent). (JA751) The 033 Patent disclosed numerous food-shaped containers, designed to look like the 37

item of food it was containing. The drawings of the 033 Patent are particularly illustrative of this point, and are summarized as follows: Figures 1 and 2 show an onion-shaped onion container; Figures 4 and 5 show a cucumber-shaped cucumber container; Figure 6 shows a lemon/lime-shaped lemon/lime container; Figure 7 shows a tomato-shaped tomato container; and Figure 8 shows a lettuce-shaped lettuce container.

Taken collectively, the 033 Patent discloses an entire line of food-shaped containers. The 033 Patent expired on July 10, 2007, thereby entering the public domain. Therefore anybody is permitted to practice the general idea of making a line of food-shaped containers. Hutzler cannot monopolize an idea that it did not come up with and has already been dedicated to the public. A utility patent is strong evidence that the features claimed therein are functional and further that one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional. In re Bose Corp., 476 F.3d 1331, 1336 (Fed. Cir. 2007) (quoting TrafFix Devices v. Marketing Displays, 532 U.S. 23, 121 S. Ct. 1255, 149 L. Ed. 2d 164 (2001)). However, Hutzler is not seeking to protect through trademark rights something it had invented and disclosed in a utility patent. Rather, Hutzler is seeking to protect through trademark rights what someone else had invented. There are simply no rights here for Hutzler to claim protection over, beyond those rights embodied in its own patents.

38

To the extent that the Court could even consider Hutzler having some protectable interest in its entire product line, the district courts factual determination is erroneous based on an incomplete factual record. The district court concluded that [i]n addition to the onion and garlic containers, Bradshaw chose to produce containers for lemons, tomatoes and green peppers, thereby duplicating Hutzlers entire Food Saver Line. (JA38) What Hutzler has failed to disclose is that the Hutzler Food Saver line of products contains many more foodshaped containers than these five products. In addition to the aforementioned products, Hutzlers Food Saver line also includes an apple-shaped container, a carrot-shaped container, a bunch of grapes-shaped container, a celery-shaped container, a half head of lettuce-shaped container, a half grapefruit-shaped container, a lime-shaped container, a red pepper-shaped container, a yellow pepper-shaped container, and an orange pepper-shaped container. (JA448-450) Conversely, the Bradshaw line of Keeper products contains additional products as well. Bradshaw has introduced asparagus-, cantaloupe-, and banana-shaped containers, none of which are sold by Hutzler. (JA451-453) It is simply erroneous to find that Bradshaw has duplicated Hutzlers entire Food Saver Line. To the extent there is overlap between the Bradshaw and Hutzler product lines (and the products disclosed in the 033 Patent), the logical basis for the overlap is the existence of a relatively small number of unique fruits and

39

vegetables to consumers in American grocery stores. The same problem of a finite number of choices applies to the district courts conclusion of alleged copying the same size and proportions of the Hutzler food-shaped containers. An onion-shaped onion container must have the same general proportions of onions typically found in grocery stores. The container must also have a size slightly larger than the typical larger onions found in the grocery store. An onion-shaped onion container the size of a golf ball cannot hold an onion and would be pointless to make. Conversely, an onion-shaped onion container the size and shape of a football would also be pointless, unnecessarily taking up limited space in the consumers refrigerator. Hutzlers food-shaped container line of products cannot be afforded the presumption that there is a virtually unlimited number of ways to combine visual elements where there is a demonstration of such a finite number of ways to make a food-shaped container resembling the item of food the container is designed to hold. As such, the Court cannot find a likelihood of confusion on the basis of the containers having similar size and proportions. Lastly, the district courts conclusion that the Hutzler and Bradshaw products are the same color is erroneous and contrary to the established factual record. As the district court had noted, the Bradshaw products embody a twotone appearance, with the top half of the product produced from a translucent material, while the Hutzler products are of a singular opaque color. (JA35) To the

40

extent the district court explained why it would not consider material in its patent infringement analysis, the district court failed to provide any explanation why it would not consider material in its likelihood of confusion analysis. Failure to consider the two-tone appearance of the Bradshaw containers is an abuse of discretion and must be considered as part of the likelihood of confusion test. (Id.) Moreover, when holding the Bradshaw and Hutzler products next to each other, the products are not the same color. For example, the Hutzler tomato-shaped container has a different shade of red than either of the two shades of red found on the Bradshaw tomato-shaped container:

Hutzler Tomato Saver

Bradshaw Tomato Keeper

To label both containers as the identical shade of red is erroneous and runs afoul of the same limited design choices of size and proportion (i.e. why would anybody produce a blue tomato-shaped container?). The same is true for the entire product line, the remainder shown below:

41

Hutzler Green Pepper Saver

Bradshaw Green Pepper Keeper

Hutzler Lemon Saver

Bradshaw Lemon Keeper

Comparisons of whole product lines yield the same result, showing remarkably different approaches to food-shaped storage between the Hutzler line (which have a realistic appearance similar to the item of produce) against the Bradshaw line (which could not be mistaken for a real item of produce):

42

Sample Hutzler Food Savers

Bradshaw Keeper Products Ultimately, it is because the Hutzler and Bradshaw products resemble the actual produce itself that is the source of any similarity between the Hutzler and Bradshaw products. Only when the real items of produce are inserted into the visual analysis (for which Hutzler cannot claim protection) does any similarity between the product lines emerge:

Sample Hutzler Food Savers

Sample Produce

Bradshaw Keeper Products

43

As demonstrated, it is not the case that the Hutzler and Bradshaw products are confusingly similar to each other; rather it is that the Hutzler and Bradshaw products each resemble produce, and in strikingly different ways. Hutzler (or any other person) cannot have any intellectual property interest in the items of produce themselves, and the only finding of a likelihood of confusion with these products is the confusion with the produce, not with each others products. D. The District Court Failed To Find Any Facts That Establish Bad Faith Committed by Bradshaw

In the District Courts Order Granting the Preliminary Injunction, in support of its conclusion that Bradshaw had acted in bad faith, the district court made two findings of fact. First, Bradshaw and Hutzler both make similar product lines. (JA39) Second, Bradshaw was aware of Hutzlers products when it was developing its products. (Id.) Based on these two facts alone, the District Court makes the conclusion that Bradshaw acted in bad faith when it created its product line. (Id.) There are significant defects with the district courts analysis. As a general matter, this incredible use of post hoc ergo propter hoc by the District Court would permit the conclusion that any second entrant into the field would be found unfairly competing with the first entrant and would effectively grant the first entrant a monopoly short of complete (and likely willful) ignorance by the second entrant. Specific to this case, however, the evidence presented by Bradshaw

44

demonstrates careful avoidance of Hutzlers product line when it was creating its product line. 1. Mere Awareness Of The Competitors Products Fails To Establish Bad Faith On The Part Of The Competitor

The District Court cites no law to support the proposition that mere awareness of the Huztlers products results in a finding of bad faith on the part of the defendant. This is almost certainly due to the Second Circuit unequivocally finding that mere copying is insufficient to support a finding of bad faith. Even if Bradshaws actions could be construed as copying, which flies in the face of the facts, in the absence of evidence, apart from proof of copying, that the defendant sought to confuse consumers, bad faith should not be inferred simply from the fact of copying. Fun-Damental Too v. Gemmy Indus. Corp., 111 F.3d 993, 1005 (2d Cir. 1997) accord Streetwise Maps v. VanDam, Inc., 159 F.3d 739, 745 (2d Cir. 1998) (stating the intent to compete by imitating the successful features of anothers product is vastly different from the intent to deceive purchasers as to the source of the product). Whatever copying Hutzler insists occurred by Bradshaw when designing its keeper products, it is legally insufficient to support a finding of any bad faith on Bradshaws part.5

The District Court also completely ignored that over two years elapsed between Bradshaw becoming aware of the Hutzler products and when Bradshaw brought an independently developed design to market. (JA492, 4, 6) 45

2.

The Facts Presented At The District Court Demonstrate Bradshaws Good Faith In Avoiding Hutzlers Product Line

In October 2009, as Bradshaw was preparing for the annual International Housewares Association (IHA) tradeshow in Chicago, its head of product development, Tom Barber gave to Jeff Boutthavon, one of Bradshaws designers, some documents, including rough sketches and catalog and magazine clippings, and stated that he wanted to talk that same day because he wanted Bradshaw to have food keeper type products to exhibit at the IHA tradeshow in March 2010. (JA493 6) The clippings showed onion, garlic, pepper, tomato and lemon containers. (Id. at 7) None of the clippings were from Hutzler catalogs or advertisements or showed Hutzler products. In fact, some of the clippings were of Bradshaws own ProFreshionals brand. (Id.) From these drawings and clippings, Jeff Boutthavon rendered a proto-type on the computer. However, Tom Barber was not satisfied with the design and decided to turn the project over to an outside design firm named A2. (Id. at 8) Bradshaw provided A2, a successful New York-based design firm, with a box of samples that Tom Barber and his designers had purchased. (Id. at 9) No inventory of that box remains, but Tom Barber recalls it contained ceramic and plastic decorative fruit and vegetable pieces, small storage containers, Tupperware food containers and a Hutzler food saver. (Id.)

46

The sketches originally produced by Tom Barber and conveyed to A2 were pencil drawings which focused on Bradshaws desire to produce items which were stylish and contemporary rather than natural-looking. (Id. at 10) While Hutzler has alleged that Bradshaw copied Hutzlers food saver items, quite the opposite is true. Tom Barber wanted items that did not look like the Hutzler items because he believed the Hutzler food savers looked like bad versions of the real thing; like a toy. (Id.) In fact, on February 17, 2010, Tom Barber and Lou Henry, the designer at A2, discussed making the Bradshaw items contemporary, and different from the items in the market, which Tom felt had no style. (Id.) Their goal was to design keepers which the viewer saw as stylish, as if they had come from the chic Italian design house, Alessi. (Id.) That concept is memorialized in Tom Barbers email to Lou Henry of that same date. (JA522) Based on the sketches and at Bradshaws direction, A2 created a design that not only follows the sketches and captures the desired stylish and contemporary theme, but is also a product which could be manufactured economically given the operational constraints of injection molding. (JA493 11) As noted above, when designing the Bradshaw food keeper products, in addition to having been provided samples of food related items, including food savers, and instructions to create a stylish, contemporary product, A2 was aware of items then being sold; but Bradshaw did not, and never would, provide an item to a

47

designer or manufacturer and request it to copy that item. (Id. at 30) Bradshaw employs six (6) in-house designers and also works with outside design firms such as A2. It certainly would not need such substantial design assistance if its practice was to simply copy existing items. (Id. at 30) The facts presented before the district court show that Bradshaw was diligent in pursuing its own designs for food-shaped food containers and were specifically avoiding the Hutzler designs for its own line of products. 3. The District Court Ignored Bradshaws Reliance On Opinion Of Counsel In Avoiding Infringement Of The Hutzler Patents

Bradshaw also provided in detail the circumstances of its reliance on a legal opinion of counsel to insulate itself from any allegation of impropriety. (JA473) Bradshaws reliance on opinion of counsel defeats the allegation of bad faith. See W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 575 (2d Cir. 1993) (finding of good faith where defendant relies on advice of counsel). The district courts failure to consider Bradshaws reliance on opinion of counsel ignores the fact that Bradshaw, upon receiving the initial cease and desist letter from Hutzlers counsel, immediately sought out and received an opinion from its patent counsel, Mr. Paul Lewis, stating that Onion and Garlic keepers did not infringe Hutzlers asserted patents. (JA496-497) That oral opinion was later reduced to writing by Mr. Lewis and provided to Bradshaw. (Id.) Bradshaw relied on this opinion and had no reason to simply capitulate to Hutzlers assertion of 48

infringement and stop shipping the products. (JA493) Bradshaw has at all times acted in good faith and upon the reliance of opinion of counsel. Therefore, the entirety of the record before the district court shows that Bradshaw has acted in good faith in the creation of its food-shaped food containers. IX. CONCLUSION For all of the above reasons, the Court must find that the District Court abused its discretion in granting Hutzlers motion for a preliminary injunction. The district court erred as a matter of law concluding that the Plaintiff was likely to succeed on the merits in that its interpretation of the scope of the claim protection for the patents in issue by improperly including functional elements, failing to take into consideration the prior art and excluding consideration of expressly claimed elements. The District Court also erred as a matter of law in failing to apply the proper factors in concluding Plaintiff was likely to succeed on the merits of its unfair competition claim. And the District Court also erred as a matter of fact in concluding there was unfair competition by Defendants sale of items not subject to any patent protection of Plaintiff. Lastly, the District Court erred as a matter of fact in finding and concluding that the Defendant acted in bad faith.

49

Dated: July 12, 2013

Respectfully submitted, BIRCH, STEWART, KOLASCH & BIRCH, LLP /s/ Robert J. Kenney Robert J. Kenney Michael B. Marion BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road, Suite 100E Falls Church, VA 22042 Phone: (703) 205-8000 Fax: (703) 205-8050 RJK@bskb.com ATTORNEYS FOR DEFENDANT BRADSHAW INTERNATIONAL, INC.

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ADDENDUM

TABLE OF CONTENTS Appendix Page Memorandum Opinion and Order of The Honorable Paul G. Gardephe Re: Granting Plaintiffs Motion for Preliminary Injunction filed July 25, 2012 ........................................................................................... 1 Order of The Honorable Paul G. Gardephe Re: Denial of Bradshaws Motion for Reconsideration of the July 25, 2012 Memorandum Opinion and Order Granting Plaintiffs Motion for a Preliminary Injunction filed March 27, 2013...................................................................................... 36 Patent No. D538,114 ................................................................................................ 45 Patent No. D592,463 ................................................................................................ 47

Case 1:11-cv-07211-PGG Document 24

Filed Page 1 of 35 ,--_....07/25/12 -_

..

USDC SDNY

DOCUMENT ELECTRONICALLY FILED

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK HUTZLER MANUFACTURING
COMPANY, INC.,
Plaintiff, - against BRADSHAW INTERNTIONAL, INC., Defendant.
MEMORANDUM OPINION & ORDER

DOC#: lDATE FILE-D:l- l.f'/t Z.

11 Civ. 7211 (PGG)

PAUL G. GARDEPHE, U.S.DJ.: Plaintiff Hutzler Manufacturing Company, Inc. ("Hutzler") has moved for a preliminary injunction against Defendant Bradshaw International, Inc. ("Bradshaw"), alleging that Bradshaw infringed Hutzler's design patents for garlic and onion storage containers. For the reasons set forth below, Hutzler's motion will be GRANTED.
BACKGROUND

Plaintiff Hutzler is the manufacturer of a line of plastic housewares products called the "Food Saver Line," which is used for storing and preserving various types of produce. (Cmplt.
~

9) Hutzler owns U.S. patents for two products in the Food Saver Line - the "Onion

Saver" and the "Garlic Saver" - which resemble the type of produce they are intended to store.

(lQJ On March 13,2007, the United States Patent and Trademark Office issued Hutzler U.S.
Patent No. D538, 114 (the '" 114 Patent"), a design patent covering the "ornamental design for an onion container."

iliL ~ 11) On May 19,2009, the Patent and Trademark Office issued Hutzler

U.S. Patent No. D592,463 (the "'463 Patent"), a design patent protecting the "ornamental design for a container" designed to hold garlic. (Id. ~ 13)

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Hutzler alleges that Defendant Bradshaw "misappropriated the design patents for the Onion Saver and the Garlic Saver," and has sold, and currently is offering for sale, products that infringe the' 114 Patent and the'463 Patent. (Id.
~~

18-19)

Hutzler introduced its Food Saver Line in 2005, and sales have grown steadily since that time. These products now account for 63 percent of Hutzler's sales. (ld.
~~

9-10, 30)

Since Bradshaw introduced its competing products in 2011, however, Hutzler's sales have declined by 21 percent. (ld.
~

31)

On October 13,2011, Hutzler filed a complaint alleging infringement of both the '114 Patent and the '463 Patent in violation of 35 U.S.C. 271(a) and (b), as well as tortious interference with business and unfair competition under New York law. (Dkt. No.1) On October 20, 2011, Hutzler moved for a preliminary injunction enjoining Bradshaw from: (1) infringing, or inducing infringement of, Hutzler's patents; and (2) unfairly competing with Hutzler's line of produce containers. (Dkt. No.4) Bradshaw argues that Hutzler's motion should be denied because it has not demonstrated (1) a likelihood of success on either its patent infringement or unfair competition claims, or (2) that it will suffer irreparable harm in the absence of an injunction. (Def. Opp. Br. 1) The Court held a hearing on Hutzler's application on January 19,2012.

DISCUSSION I. PRELIMINARY INJUNCTION STANDARD

"The factors the trial court considers when determining whether to grant a preliminary injunction are oflongstanding and universal applicability," Titan Tire Corp. v. Case New Holland. Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009), and may be summarized as follows: First ... a court may issue a preliminary injunction ... only if the plaintiff has demonstrated "either (a) a likelihood of success on the merits or (b) sufficiently
2

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serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the [plaintiff]'s favor." Second, the court may issue the injunction only if the plaintiff has demonstrated "that he is likely to suffer irreparable injury in the absence of an injunction." The court must not adopt a "categorical" or "general" rule or presume that the plaintiff will suffer irreparable harm (unless such a "departure from the long tradition of equity practice" was intended by Congress). Instead, the court must actually consider the injury the plaintiff will suffer ifhe or she loses on the preliminary injunction but ultimately prevails on the merits, paying particular attention to whether the "remedies available at law, such as monetary damages, are inadequate to compensate for that injury." Third, a court must consider the balance of hardships between the plaintiff and defendant and issue the injunction only if the balance of hardships tips in the plaintiff's favor. Finally, the court must ensure that the "public interest would not be disserved" by the issuance of a preliminary injunction. Salinger v. Colting, 607 F.3d 68, 79-80 (2d Cir. 2010) (internal citations omitted). In the context of patent litigation, a "patentee's entitlement to [a preliminary] injunction is a matter largely within the discretion ofthe trial court." Titan Tire, 566 F.3d at 1375 (citing Genentech, Inc. v. Novo Nordisk, AlS, 108 F.3d 1361, 1364 (Fed. Cir. 1997)).

II.

LIKELIHOOD OF SUCCESS
A.
Patent Infringement Claim
To establish a likelihood of success on the merits of a patent infringement claim,

"the patentee seeking a preliminary injunction ... must show that it will likely prove infringement, and that it will likely withstand challenges, if any, to the validity of the patent." Titan Tire, 566 F.3d at 1376 (citing Genentech, 108 F .3d at 1364). 1.

Patent Validity a. Standards and Burden of Proof

"[W]hen the question of validity arises at the preliminary injunction stage ... the patent enjoys the same presumption of validity ... as at other stages oflitigation." Titan Tire, 566 F.3d at 1377 (citing Canon Computer Sys., Inc. v. Nu-Kote Int'l, Inc., 134 F.3d 1085, 1088

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(Fed. Cir. 1998)). Where, as here, "the alleged infringer responds to the preliminary injunction motion by launching an attack on the validity of the patent, the burden is on the challenger to come forward with evidence of invalidity, just as it would be at triaL" Id. "The patentee, to avoid a conclusion that it is unable to show a likelihood of success, then has the burden of responding with contrary evidence, which of course may include analysis and argument." Id. "While the evidentiary burdens at the preliminary injunction stage track the burdens at trial, importantly the ultimate question before the trial court is different": Instead of the alleged infringer having to persuade the trial court that the patent is invalid, at this stage it is the patentee, the movant, who must persuade the court that, despite the challenge presented to validity, the patentee nevertheless is likely to succeed at trial on the validity issue. Id. at 1377; see also Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1359 (Fed. Cir. 2001) (The party seeking a preliminary injunction "need not establish the validity of a patent beyond question," but rather must "present a clear case supporting the validity ofthe patent in suit.") (citing Atlas Powder Co. v. Ireco Chems., 773 F.2d 1230, 1233 (Fed. Cir. 1985); Nutrition 21 v. United States, 930 F.2d 867, 871 (Fed. Cir. 1991)) (internal citations omitted). "If the alleged infringer raises a 'substantial question' regarding invalidity, Le., asserts an invalidity defense that the patentee cannot prove 'lacks substantial merit,' the preliminary injunction should not issue." Entegris, Inc. v. Pall Corp., 490 F.3d 1340, 1351 (Fed. Cir. 2007) (quoting Genentech, 108 F.3d at 1364); see also Amazon.com, 239 F.3d at 1359 ("In resisting a preliminary injunction ... one need not make out a case of actual invalidity.... The showing of a substantial question as to invalidity thus requires less proof than the clear and convincing showing necessary to establish invalidity itself.")

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h.

Nature of a Design Patent

The' 114 and '463 Patents at issue in this litigation are design patents. I "A design patent is directed to the appearance of an article of manufacture." L.A. Gear, Inc. v. Thorn McAn Shoe Co., 988 F.2d 1117,1123 (Fed. Cir. 1993) (citations omitted). Accordingly, a "design patent, unlike a utility patent, limits protection to the ornamental design of the article." Richardson v. Stanley Works. Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010) (citing Lee v. DaytonHudson Corp., 838 F.2d 1186, 1188 (Fed. Cir.1988)(citing 35 U.S.C. 171)). "Ifthe patented design is primarily functional rather than ornamental, the patent is invalid." Id. at 1293-94. "However, when the design also contains ornamental aspects, it is entitled to a design patent whose scope is limited to those aspects alone and does not extend to any functional elements of the claimed article." Id. at 1294 (citing L.A. Gear, 988 F.2d at 1123 ("The elements of the design may indeed serve a utilitarian purpose, but it is the ornamental aspect that is the basis of the design patent.")).

"An article of manufacture necessarily serves a utilitarian purpose, and the design
of a useful article is deemed to be functional, when the appearance ofthe claimed design is 'dictated by' the use or purpose of the article." L.A. Gear, 988 F.2d at 1123 (citations omitted). "If the particular design is essential to the use ofthe article, it [cannot] be the subject of a design patent." Id. Stated another way, "[i]fthe design of a particular feature must appear a certain way, and only that way, in order to perform a particular function, then the feature is functional and not ornamental." Etna Prods. Co. v. 0 Mktg. Group, Ltd., No. 03 Civ. 3805(SAS), 2004 U.S. Dist. LEXIS 15323, at *22 (S.D.N.Y. Aug. 4, 2004) (citation omitted), Conversely,

1 Title 35, U.S.C. 171 provides in pertinent part that "[w]hoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements ofthis title." 35 U.S.C. 171.

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'" [w]hen there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental [as opposed to functional] purpose.'" Rockport Co., Inc. v. Deer Stags, Inc., 65 F. Supp. 2d 189, 194 n.3 (S.D.N.Y. 1999) (quoting L.A. Gear, 988 F.2d at 1123).

c.

Bradshaw's Invalidity Argument

Here, Bradshaw argues that Hutzler's patents are invalid because their "ornamental feature or design is <merely a by-product' of functional and mechanical considerations dictating the design .... The shape is dictated by the shape of the produce that is intended to be stored inside." (Def. Opp. Br. 18) Bradshaw maintains that "[i]n order for an onion container to be an onion container or a garlic container to be a garlic container, it should have the general size and shape of an onion or a piece of garlic." (Id. at 16) Bradshaw further argues that in designing the Onion Saver and the Garlic Saver, Hutzler sought "to make the product immediately convey to the consumer what the item does .... [T]hat is the definition of functional, because it ... immediately tells the customer something about the product: ... what it is used for." (Jan. 19,2012 Tr. 15-16) The Court concludes that Bradshaw's argument that Hutzler's patented designs are primarily functional does not "raise[] a 'substantial question' regarding invalidity." Entegris, Inc., 490 F.3d at 1351. In reaching this conclusion, the Court has considered, inter alia, a variety of alternative designs demonstrating that produce preservers come in a variety of shapes and sizes. The Federal Circuit has noted that "[c]onsideration of alternative designs ... useful tool that may allow a court to conclude that a challenged design is not invalid for
IS

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functionality.,,2 Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997). At the preliminary injunction hearing, Hutzler produced numerous examples of products used to store onion and garlic that do not have the same shape or general design as Hutzler's patented designs. (See Px 5-8) Bradshaw also submitted photographs of competing products that do not share the design of Hutzler's products. (Megorden Aff., Ex. A, A4, AS) Hutzler has also offered evidence that it considered "numerous alternative designs" in designing its "Food Saver Line," and found "no evidence that a specific design was best for storing produce." (Ehrenhaus Decl.
~

4)

Bradshaw's argument that the shape of Hutzler's products conveys to the consumer the type of produce that is intended to be stored inside does not demonstrate invalidity on functionality grounds. Assuming arguendo that Bradshaw's argument is relevant to the analysis, food storage containers need not be in the shape of the produce that they are designed to store in order for manufacturers to communicate to consumers the function of these products. The function of these products may be, and commonly is, communicated through appropriate labeling. See,~, Px 7.

In sum, Bradshaw's functionality challenge to the validity of Hutzler's patents is

likely to fail. Hutzler has demonstrated that the design of the Onion Saver and the Garlic Saver is not "dictated by" the use or purpose of the article, and that onion and garlic may be stored and preserved in products of myriad shapes and sizes. Because Hutzler has established that there are numerous ways to store and preserve onions and garlic and thus to achieve the function of the

2 The Court noted that "[0]ther appropriate considerations might include: whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having a specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function." Berry Sterling Corp., 122 F.3d at 1456. 7

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patented designs, "the design of the article[s] is more likely to serve a primarily ornamental [as opposed to functional] purpose." Rockport, 65 F. Supp. 2d at 194 n.3 (quoting L.A. Gear, 988 F.2d at 1123). Accordingly, Hutzler will likely prevail on the patent validity issue at trial.

2.

Infringement

a.

Claim Construction

"[D]etermining whether a design patent is infringed is a two-step process. First, the court must construe the design patent's claim." Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1286 (Fed. Cir. 2002). "In construing a design patent claim, the focus is on overall appearance and the visual impression it creates." Blumenthal Distrib., Inc. v. Exec. Chair, Inc., No. CV-10-1280(CBA), 2010 WL 5980151, at *5 (E.D.N.Y. Nov. 9,2010) (citing OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997); Spotless Enters., Inc. v. A & E Prods. Group L.P., 294 F. Supp. 2d 322, 343-44 (E.D.N.Y. 2003, report and recommendation adopted Qy 2011 WL 839546 (E.D.N.Y. Mar. 3,2011). "'[W]here a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.'" Rockport, 65 F. Supp. 2d at 193 (quoting OddzOn, 122 F.3d at 1405 (citing Lee, 838 F.2d at 1188. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) makes clear that, in construing design patents, district courts should generally forego verbal description: Given the recognized difficulties entailed in trying to describe a design in words, the preferable course ordinarily will be for a district court not to attempt to "construe" a design patent claim by providing a detailed verbal description of the claimed design. Id. at 679. "[D]esign patents 'typically are claimed as shown in drawings,' and ... claim construction 'is adapted accordingly.'" Id. (quoting Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1319 (Fed. Cir. 2007. '''[A]s a rule the illustration in the drawing

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views is its own best description.'" Id. (quoting MANUAL OF PATENT EXAMINING PROCEDURE 1503.01 (8th ed. 2006)). Accordingly, "[d]istrict courts following Egyptian Goddess have generally relied on patent drawings to construe design claims." Wing Shing Products (BV!) Co. Ltd. v. Sunbeam Products, Inc., 665 F.Supp.2d 357,360 (S.D.N.Y. 2009) (collecting cases). Here, the Court finds that "the claims articulated in each of the design patents at issue are unambiguous and are clearly illustrated by the figures contained therein." Nike, Inc. v. Meitac Int'l Enter. Co. Ltd., No. 06-CV-000934(PMP)(PAL), 2006 U.S. Dist. LEXIS 94662, at *6 (D. Nev. Oct. 10,2006). In accordance with Egyptian Goddess, 543 F.3d at 679, this Court will not provide a detailed verbal description of the' 114 and '463 Patents and will rely instead on the illustrations set out in the patents. The Court construes Hutzler's claims as the ornamental design for an onion container as shown in figures 1 through 3 of the' 114 Patent, and the ornamental design for a garlic container as shown in figures 1 through 8 of the' 463 Patent. See,
~,

Wing Shing, 665 F. Supp. 2d at 360 ("[t]his Court ... construes [plaintiffs] claim as the

ornamental design for a coffeemaker, as shown in figures 1 through 7 of the '585 patent"); HR U.S. LLC v. Mizco Internat'l, Inc., No. CV-07-2394(DGT)(JO), 2009 WL 890550, at *9 (E.D.N.Y. Mar. 31, 2009) ("a detailed verbal description ofthe '250 patent is unnecessary; it is appropriate to 'rely upon the illustrations set out in the [patent], as they better represent the claimed design"') (quoting Arc'teryx Equip., Inc. v. Westcomb Outerwear, Inc., No. 07-cv59(TS), 2008 WL 4838141, at *2 (D. Utah Nov. 4, 2008)).

b.

Ordinary Observer Test

The second step in determining whether a design patent is infringed requires the fact-finder to "compare the patented and accused designs to determine whether the accused

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design is substantially similar in appearance to the patented design." Rockport, 65 F. Supp. 2d at 193. In making that determination, courts utilize the "ordinary observer" test: [I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. Egyptian Goddess, 543 F.3d at 670 (quoting Gorham Co. v. White, 81 U.S. 511, 528 (1871)); see also L.A. Gear, 988 F.2d at 1124 ("Design patent infringement requires a showing that the accused design is substantially the same as the claimed design. The criterion is deception of the ordinary observer, such that one design would be confused with the other."); Crocs, Inc. v. In!'l Trade Comm'n, 598 F.3d 1294, 1303 (Fed. Cir. 2010) (infringement is demonstrated where "an ordinary observer ... would be deceived into believing that the accused product is the same as the patented design") (citing Egyptian Goddess, 543 F.3d at 681). The "ordinary observer" test is more easily stated than applied. Is the "ordinary observer" someone encountering the product or products for the first time, or someone who is generally familiar with products of the sort in question? How should courts determine the amount of "attention ... a purchaser usually gives"? In determining whether "two designs are substantially the same," should courts conduct a side-by-side comparison? How similar must designs be to support a finding of infringement? What weight should be given to the color, size, or material used in the products? The Court considers these and other questions below.
(i) Who is the "Ordinary Observer"?

The case law makes clear that the "ordinary observer" is not an expert in the field. As the Supreme Court said in Gorham, "[e]xperts ... are not the persons to be deceived." Gorham, 81 U.S. at 528. The "ordinary observer" is likewise not a patent lawyer "who inspects the designs critically to highlight each and every perceivable difference between them." Durdin 10

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v. Kuryakyn Holdings, Inc., 440 F. Supp. 2d 921,933-34 (W.D. Wis. 2006); see also Tappan Co. v. Gen. Motors Corp., 248 F. Supp. 978, 980 (N.D. Ohio 1965) ("The Supreme Court has said [in Gorham1that sameness of effect upon the eye is the main test of substantial identity of design, but it is not essential that the appearance should be the same to the eye of the expert. It is sufficient if it is the same to the ordinary observer."). The notional "ordinary observer" is, instead, someone who - while not an expert in the product - is not entirely ignorant of it, and indeed has some degree of familiarity with it. The "ordinary observer" thus includes someone who has purchased, or shopped for, a like item in the past.
See,~,

Henry Hanger & Display Fixture Corp. of Am. v. Sel-O-Rak Corp., 270

F.2d 635, 641 (5th Cir. 1959) ('''[T]he ordinary purchaser of revolving racks, who was acquainted with the patented design would, upon viewing any of defendants' racks, including the wrought iron rack, ... assume that he was viewing an identical or slightly modified version of the patented design."') (quoting Sel-O-Rak Corp. v. Henry Hanger & Display Fixture Corp. of Am., 159 F. Supp. 769, 773 (S.D. Fla. 1958)); Applied Arts Corp. v. Grand Rapids Metalcraft Corp., 67 F.2d 428,430 (6th Cir. 1933) ("[T]he ordinary observer is not any observer, but one who, with less than the trained faculties of the expert, is 'a purchaser of things of similar design,' or 'one interested in the subject."'); Graff, Washboume & Dunn v. Webster, 195 F. 522, 524 (2d Cir. 1912) ("Having seen the complainant's design in a show case or shop window, the ordinary buyer would be very likely to mistake the defendants' design for it, if seen in a similar environment. This is the real test of infringement of design patents. If the ordinary buyer, having seen one of the complainant's dishes and wishing to procure one like it, would be induced to buy one ofthe defendants' dishes instead, it is enough."); Minka Lighting, Inc. v. Maxim Lighting Int'l, Inc., No. Civ. A. 3:06-CV-995-K, 2009 WL 691594 (N.D. Tex. Mar. 16,2009)

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("The ordinary observer is therefore a member of the public who is currently shopping for or has recently purchased lighting fixtures indeed, a 'purchaser of things of similar design. "');

Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 424 F. Supp. 2d 1188, 1196 (C.D. CaL 2006) ("[The ordinary] observer is not a person who has never seen the type of item the patent describes, 'but one who, though not an expert, has reasonable familiarity with such objects, and is capable of fonning a reasonable judgment when confronted with a design therefor as to whether it presents to his eye distinctiveness from or similarity with those which have preceded it."') (quoting Applied Arts, 67 F.2d at 430). Accordingly, the "ordinary observer" here is someone who has seen, shopped for, or purchased food storage items of similar design.
ii. Attention

Under the Gorham test, a court must compare the patented and accused designs "giving such attention as a purchaser usually gives." Gorham, 81 U.S. at 528. Gorham makes clear that "such attention as a purchaser usually gives" does not include the attention that a purchaser would give the products if asked to conduct a "critical examination" of them, or after being told that there may be differences between them. Id. at 529 30 (detennination whether ordinary purchaser would regard products as substantially the same does not tum on whether "some diversities in (the product] ... are discoverable when attention is called to them," whether differences become apparent "when stimulated by a suspicion that there may be diversity," or whether differences become apparent when "critical examination" is brought to bear that would not typically be employed by an ordinary purchaser). In considering the degree of attention a typical consumer is likely to bring to a purchase, it is reasonable to assume that consumers will bring greater attention to an expensive

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purchase, and give less attention where the cost is inconsequential. See Braun, Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820, 820 n.9 (Fed. Cir. 1992) (relying on trial testimony that "consumers typically purchase hand held electric [blenders] on an 'impulse' and as a result they may not differentiate [between] designs," particularly where the products "are relatively inexpensive"); Cardiac Pacemakers, Inc. v. Coratomic, Inc., 535 F. Supp. 280,286 (D. Minn. 1982) ("The test for design patent infringement is whether an ordinary purchaser would be induced to purchase a product supposing it to be another.... Pacers are expensive and generally are sold to physicians who specialize in pacer implants .... [The accused infringer's] pacers are sufficiently different from [the patentee's] pacer so that the ordinary consumer would not be misled.") (emphasis added); Superior Merchandise Co., Inc. v. MGI Wholesale, Inc., Nos. Civ.

A. 98-3174, Civ. A. 99-3492,2000 WL 322779, at *11 (E.D. La. Mar. 27, 2000) ("Whether
undertaking a desperate search to purchase the bodacious bead for its novel appearance, or encountering the breast bead upon first impression while browsing a bead vendor's wears, the ordinary purchaser is likely to see, quite simply, a three-dimensional simulation of well-endowed bare human female breasts. In addition, considering the amount of attention that is likely to be given during an impulse purchase of the bodacious beads, it must be concluded that the two designs are substantially the same."). Given that the products at issue here are inexpensive - ranging in price from $2.00 to $4.00 (Jan. 19,2012 Tr. 10,26) and thus likely to be purchased on impulse, the Court

concludes that the ordinary purchaser is not likely to give significant attention to the products when purchasing them.

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iii.

"Substantially the Same"

"Design patent infringement requires a showing that the accused design is substantially the same as the claimed design. The criterion is deception of the ordinary observer, such that one design would be confused with the other." L.A. Gear, 988 F.2d at 1124; see also Crocs, 598 F.3d at 1303 (infringement is demonstrated where "an ordinary observer ... would be deceived into believing that the accused product is the same as the patented design"). "In conducting such analysis the patented design is viewed in its entirety, as it is claimed.... [T]he ultimate question requires determining whether '''the effect of the whole design [is] substantially the same.'" L.A. Gear, 988 F.2d at 1125 (quoting Gorham, 81 U.S. at 530).

(a)

Focus on "Overall Visual Appearance"

In determining whether two designs are "substantially the same," courts focus on the overall impression given by the claimed design, rather than particular ornamental details or minutiae.
See,~,

Crocs, 598 F.3d at 1303 ('" [T]he deception that arises is a result ofthe

similarities in the overall design, not of similarities in ornamental features in isolation.' ... The ordinary observer test applies to the patented design in its entirety, as it is claimed.") (quoting Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2002)); Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002) ("What is controlling is the appearance of the design as a whole in comparison to the accused product."); OddzOn, 122 F .3d at 1405 ("[I]t is the appearance of a design as a whole which is controlling in determining infringement. There can be no infringement based on the similarity of specific features ifthe overall appearance of the designs are dissimilar...."); Elmer v. ICC Fabricating, Inc., 67 F.3d 1571,1577 (Fed. Cir. 1995) ("Under Gorham, the focus is on the overall ornamental appearance of the claimed design, not selected ornamental features.") (emphasis in

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original); Payless Shoesource, Inc. v. Reebok In!'l, Ltd., 998 F.2d 985,991 (Fed. Cir. 1993) (,"[M]inor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement.' Here, the district court's infringement analysis clearly evidences a focus on a single difference as opposed to the entirety of the patented design. Thus, the district court erred by failing to 'consider the ornamental aspects of the design as a whole and not merely isolated portions of the patented design."') (citations omitted); HR U.S. LLC, 2009 WL 890550, at *12 ("It is improper to focus on specific features that differ between two designs if such a focus ignores the critical issue of whether the overall designs, as a whole, are substantially similar.") (citing Amini Innovation, 439 F.3d at 1372); see also Decade Indus. v. Wood Tech., Inc., 100 F. Supp. 2d 979 (D. Minn. 2000) ("While Wood has tweaked some of the angles and proportions of the Sanus design and has inserted additional shelves between the upright legs, these minor changes do not materially alter the substantial visual likeness of the two designs when they are viewed in their entirety."). Consistent with this approach, courts give significant attention to the lines and overall shape ofthe designs at issue. See, Sh&" Crocs, 598 F.3d at 1306 ("One of the overall effects of the design is the interaction between the strap assembly portion and the base portion of the shoes where the strap is attached to the base. Multiple major design lines and curves converge at that point creating a focal point attracting the eye of the ordinary observer when viewing the overall effect of the design. Another overall effect of the design is a visual theme of rounded curves and ellipses throughout the design, including the strap forming a sort of continuation of the sidewall of the base to create a visually continuous ring encircling the entire shoe."); Richardson, 597 F.3d at 1296 ("[T]he two designs are indeed different. Each of the Fubar tools has a streamlined visual theme that runs throughout the design including elements

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such as a tapered hammer-head, a streamlined crow-bar, a triangular neck with rounded surfaces, and a smoothly contoured handle. In a side-by-side comparison with the' 167 patent design, the overall effect of this streamlined theme makes the Fubar tools significantly different from Richardson's design. Overall, the accused products clearly have a more rounded appearance and fewer blunt edges than the patented design."); Braun, 975 F.2d at 820 (finding infringement despite the "readily noticeable difference" between the patented blender and the accused blender in that "[Braun's blender] has a handgrip indentation while the latter does not"; noting that "both Waring's blender and Braun's blender share a fluid, ornamental, aerodynamic overall design. The shafts of both blenders are encased in a housing that gradually tapers away from the motor housing. The top portion of each blender, when viewed from the front, is tapered at the top to integrate the handle into the motor housing. The shaft housing of each blender gradually expands to form a blade housing, which is punctured by four elongated, essentially rectangular ports"); see also Unique Functional Prods., Inc. v. Mastercraft Boat Co., Inc., 82 F. App'x 683, 689 (Fed. Cir. 2003) ("[T]he Reliable coupler has a rounded nose ... whereas, as previously illustrated, the '777 patent requires a boxy and blunt nose. Second, the Reliable coupler's nose ... slopes sharply downwardly, rather than having a substantially square or block-shaped face as required by the '777 patent."); Moore v. Stewart, 600 F. Supp. 655, 664 (D. Ark. 1985) ("In the court's view the appearances of the Moore and the Stewart whistles are substantially identical despite the previously noted variations. The Stewart whistle even as modified retains the general shape, configuration, and dimensions of the Moore design; any differences in appearance, though discernible upon close examination, are not likely to be quickly perceived by an ordinary observer paying the degree of attention a purchaser would."); Duncan & Miller Glass Co. v. Hazel Atlas Glass Co., 47 F. Supp. 192, 195 (D. Va. 1942) ("The outside, or contour, is a very

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important factor in making up the general, or over-all impression to the average purchaser. Defendant's ash tray has a stem while the design patent has no stem. The stem is of prime importance and is one of the first differences to strike the eye of the ordinary observer.") Accordingly, in considering whether the designs at issue here are "substantially the same," this Court's focus will be on the overall impression given by the claimed designs, rather than on particular ornamental details or minutiae.

(b)

Propriety of Side-by-Side Comparison

The case law is not entirely consistent as to whether side-by-side comparison of the patented and allegedly infringing products is appropriate. Some early decisions counseled against such an approach. See Sanson Hosiery Mills, Inc. v. S.H. Kress & Co., 109 F. Supp. 383,384 (D.N.C. 1952) ("Actual comparison for minute inspection is not a fair test. The imitation may be on display when the patented article is not present.... A design patent protects the general design, the pictured effect on the mind from a general view, rather than details revealed by a minute test. Therefore, testimony of a comparison test is not exclusive nor conclusive."); Try-Me Beverage & Compound Co. v. Metropole, 25 F.2d 138, 141 (D.S.C. 1928) ('" It may also be assumed ... that side by side comparison in court is not a proper test. ..."') (quoting Coca-Cola Co. v. Whistle Co. of Am., 20 F.2d 955, 956 (D. Del. 1927; Friedberger Aaron Mfg. Co. v. Chapin, 151 F. 264, 265 (C.C.Pa. 1907) (finding infringement even though it was "very easy to distinguish between the two designs when brought together"). There is clearly some tension between the "ordinary observer" test - which does not contemplate an opportunity to conduct a detailed comparative analysis of the two products at issue comparison by the Court. and a side-by-side

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The Federal Circuit has, however, regularly engaged in side-by-side comparisons of patented and accused designs in order to determine whether they are "substantially the same."
See,~,

Richardson, 597 F.3d at 1296 ("In a side-by-side comparison with the' 167 patent

design, the overall effect of this streamlined theme makes the Fubar tools significantly different from Richardson's design."); Crocs, 598 F.3d at 1304 ("The proper comparison requires a side by-side view of the drawings ofthe '789 patent design and the accused products."); Arminak & Assocs., 501 F.3d at 1327 ("Calmar also implies that it was improper for the district court to do a detailed side-by-side comparison between the patented design and the accused design. Calmar cites no authority for this contention because there is none. To establish infringement in a design patent case, the district court is required to compare the patented design with the accused design. Without comparing the patented design with the accused design, there was no way for the district court to determine whether an ordinary observer would find the accused design deceptively similar...."), abrogated on other grounds Qy Egyptian Goddess, 543 F.3d 665. A long line of cases counsels that, in performing a side-by-side comparison, courts generally should compare the design set forth in the patent that is, the drawings - with

the accused product, rather than comparing the embodiment of the patented design and the accused product. See Payless Shoe source, 998 F.2d at 990 ("Proper application of the Gorham test requires that an accused design be compared to the claimed design, not to a commercial embodiment.") ; also Richardson, 597 F.3d at 1294 ("We also reject Richardson's argument

that the court did not include drawings from the patent in its claim construction. Richardson argues that it is the ordinary observer's perception of those drawings that is the controlling consideration under the Supreme Court's opinion in [Gorham]. We agree with Richardson on the decisive importance of drawings in a design patent."); Amini Innovation, 439 F.3d at 1370

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71 ("'A design patent protects the non-functional aspects of an ornamental design as seen as a whole and as shown in the patent ... It is the drawings in the patent, not just one feature of the claimed design, that define the patented design. "') (quoting KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993)) (emphasis added); Elmer, 67 F.3d at 1578 ("Under Gorham, the focus is on the overall ornamental appearance ofthe claimed design, not selected ornamental features. The overall ornamental appearance of the '620 design, as shown in the patent drawings, is too different from ICC's design for an ordinary observer to be induced into purchasing ICC's product thinking it was HTH's design.") (first emphasis in original; second emphasis added); Rockport, 65 F. Supp. 2d at 192-93 ("A design patent's claim is limited to what is shown in the application drawings .... The test for infringement does not compare the commercial embodiments of the two products. Rather, the allegedly infringing product is compared only to the patented design."). However, "[w ]hen no significant distinction in design has been shown between the patent drawing and its physical embodiment, [the Federal Circuit has stated that] it is not error ... to compare the embodiment ofthe patented design with the accused devices." Lee, 838 F.2d at 1189; see also L.A. Gear, 988 F.2d at 1125-26 ("[w]hen the patented design and the design of the article sold by the patentee are substantially the same, it is not error to compare the patentee's and the accused articles directly ... ; indeed, such comparison may facilitate application of the Gorham criterion of whether an ordinary purchaser would be deceived into thinking that one were the other") (citing Lee, 838 F.2d at 1189). Because the Court concludes that the design of the Hutzler products and their commercial embodiments are substantially the same, the Court has considered the drawings set forth in Hutzler's patents as well as the parties' products.

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(c)

Degree of Similarity Necessary to Find Infringement

"[P]atent infringement can be found for a design that is not identical to the patented design." Braun, 975 F.2d at 820; see also Rockport, 65 F. Supp. 2d at 193 ("The accused design does not have to be identical to the patented design for infringement to be found."); HR U.S. LLC, 2009 WL 890550, at *10 ("[t]he patented and accused designs ... need not be identical in order for design patent infringement to be found") (citing Egyptian Goddess, 543 F.3d at 678 (explaining that under the ordinary observer test infringement may be found where the accused article "'embod[ies] the patented design or any colorable imitation thereof")); Metrokane, Inc. v. Wine Enthusiast, 185 F. Supp. 2d 321,329 (S.D.N.Y. 2002) ("A design need not be identical to the patented design for infringement to occur."); Nike, 2006 U.S. Dist. LEXIS 94662, at *4 ("In assessing infringement, the patented and accused designs do not have to be identical in order for design patent infringement to be found."). '''[M]inor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement.'" Crocs, 598 F.3d at 1303 (quoting Payless Shoesource, 998 F.2d at 991). In practice, however, the cases in which the Federal Circuit has sustained a finding of infringement have involved a very high degree of similarity.
See,~,

Crocs, 598

F.3d at 1306 ("In one [side-by-side] comparison after another, the shoes appear nearly identical. If the claimed design and the accused designs were arrayed in matching colors and mixed up randomly, this court is not confident that an ordinary observer could properly restore them to their original order without very careful and prolonged effort."); L.A. Gear, 988 F.2d at 1125-26 (affirming district court's holding of design patent infringement where "[t]he district court found that the designs of four models of [defendant's] accused shoes were' almost a direct copy' of the '081 design"); 838 F.2d at 1190 ("While we agree with Lee that infringement can be found 20

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for designs that are not identical to the patented design, such designs must be equivalent in their ornamental, not functional, aspects. The accused devices must meet the Gorham test of similarity of ornamental appearance such that an ordinary observer would be likely to purchase one thinking it was the otheL").

(d)
Where - as here

Relevance of Color, Size, and Material

the design patent is not limited to a particular size, color, or

construction material, such factors should not be taken into consideration in performing an infringement analysis. See Lee, 838 F.2d at 1189 ("Lee also points to the court's observation that the tennis balls used in the physical model of the Lee design were colored, arguing that color has no role in design patent infringement and that the court may have been improperly influenced by the color differences of the accused structures .... The record does not support Lee's view that the district court's reference to the colored tennis balls means that the court's decision turned on the color oifferences. The court is presumed to have applied the law correctly, absent a clear showing to the contrary."); Herbko In1'l, Inc. v. Gemmy Industries Corp., 916 F. Supp. 322, 326 (S.D.N.Y. 1996) ("If an ordinary consumer were to be deceived, the deception would result from shared features of the products that are not protected by the design patent: (1) features that are not included in Herbko' s patent, such as the color, size and material (plastic) of the two products ...."); Superior Merch., 2000 WL 322779, at *11 ("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."); Physio-Control Corp. v. Medical Research Labs., No. 85 C 4973, 1988 WL 5023, at *1 (N.D. Ill. Jan. 15,1988) ("'A determination of the infringement issue is somewhat of an existential exercise. It is not enough to say that no one would confuse the two designs

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because one is red and the other is green and both have prominently displayed logos. The test is not palming off; color and designations are not part of the patented design and must be ignored. "); also Unique Functional Prods., 82 F. App'x at 690 ("[T]he '777 patent is not

limited to any particular size or color. We conclude, therefore, that the court erred by taking those features into consideration in its infringement analysis ...."). Accordingly, this Court will not consider the size, color, sheen, or construction material of the products, as these features are not claimed in Hutzler's design patents.

c.

Bradshaw's Arguments on Similarity

Bradshaw maintains that "the designs of the' 114 and '463 Patents ... and the accused Bradshaw products would not be considered 'substantially the same' to an ordinary observer." (Def. Opp. Br. 7) With respect to the' 114 Patent, Bradshaw points out that the top view of the patented design, illustrated in Figure 1, shows that "the outside circumference of [Hutzler's] onion container is a perfect circle," while the "outside circumference of the Bradshaw onion keeper is not a perfect circle, but has a scalloped edge in top view." (Id. at 8) Bradshaw further notes that Hutzler's "onion container includes a surface texture that looks like the skin of an onion and is solid, not transparent," while "in the Bradshaw onion keeper, the top view clearly shows that the material is transparent, not solid ... and does not resemble an onion at alL"

(hlJ

Bradshaw further observes that the surface texture of the Hutzler design is "uneven and arbitrary, but includes generally radially extending lines in the top view that converge at a center of the circular onion container" and "includes a very narrow top or tip surface." (Id.) Bradshaw argues that, in contrast, its product "has a smooth surface, except for the twelve (12) very distinctive, radially extending indentations" and "has a very wide top or tip surface, which ... is not a perfect circle, having a scalloped edge ...." (Id.)

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In comparing Figure 2 of the '114 Patent (a side view) with the side view of Bradshaw's product, Bradshaw notes that while the "surface texture above the separation and below the separation [of the patented design] is generally continuous, and the material is clearly solid, not transparent," the "Bradshaw onion keeper above the separation is transparent, whereas the bottom below the separation is solid." (Id. at 9) Bradshaw argues that this two-toned appearance provides "a very different 'look' to the Bradshaw onion keeper." (Id.) Bradshaw further asserts that the numerous vertical lines in the design of the' 114 Patent provide a completely different overall appearance to the onion container when compared to the Bradshaw onion keeper .... Since the Bradshaw onion keeper does not include these numerous vertical lines, which provide the appearance of the skin of an onion, the overall appearance of the Bradshaw onion keeper is not the same as the overall appearance of the' 114 Patent. (Id. at 9-10) In comparing Figure 3 of the '114 Patent (a bottom view) with the bottom view of Bradshaw's onion keeper, Bradshaw notes that "Figure 3 ... appears to include a gradually curving surface from the sides to the bottom, until the bottom center ultimately becomes flat. ... [T]here is no clear line of demarcation between the side walls and the bottom wall ...." (Id. at 10) The bottom of Bradshaw's onion keeper has a "ridge formed at a spaced location from the center of the onion keeper ... formed from a recessed bottom ... [and] there is a narrow portion outside of the ridge, which is flat, and then gradually curves into the side walls."

CklJ

Bradshaw makes similar arguments concerning the differences between the' 463 Patent and Bradshaw's garlic keeper. 3

Bradshaw notes, inter alia, that the '463 design has a surface texture that is not transparent and looks like the skin of a piece of garlic and that the tip of the design is a perfect circle. (Def. Opp. Bf. 11) By contrast, Bradshaw argues, its garlic container is transparent on the top, its surface texture does not resemble a piece of garlic, and the tip of its product has a scalloped edge. (Id. at 23

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d.

Analysis

The' 114 Patent claims "[t]he ornamental design for an onion container, as shown and described," while the '463 Patent claims "[t]he ornamental design for a garlic container, as shown and described." The claims extend to the overall design of the onion and garlic containers including the shape and proportions of the products and the horizontal line across the middle of the onion container and two-thirds of the way down the garlic container. As noted above, "patent infringement can be found for a design that is not identical to the patented design." Braun, 975 F.2d at 820; HR U.S. LLC, 2009 WL 890550, at *10; Metrokane, Inc., 185 F. Supp. 2d at 329; Nike, 2006 U.S. Dist. LEXIS 94662, at *4. "[I]n the 'ordinary observer' analysis, the patented design is viewed in its entirety, as it is claimed," Contessa Food Prods., 282 F.3d at 1378, and "[i]t is improper to focus on specific features that differ between two designs if such a focus ignores the critical issue of whether the overall designs, as a whole, are substantially similar." HR U.S. LLC, 2009 WL 890550, at *12 (citing Amini Innovation, 439 F.3d at 1372). "[T]he concentration on small differences in isolation distract[s] from the overall impression ofthe claimed ornamental features." Crocs, 598 F.3d at 1303-04. "It is the drawings in the patent, not just one feature ofthe claimed design, that define the patented design." Amini Innovation, 439 F.3d at 1371 (citing KeyStone, 997 F.2d at 1450). Bradshaw's arguments regarding the differences between the containers focus too narrowly on the details of their ornamentation, rather than considering the overall look of the design. The Federal Circuit has made clear that it is error for a trial court to focus on "each

12) Bradshaw maintains that "the dramatic difference between the top and bottom portions of the Bradshaw garlic keeper provides a two-toned appearance to the Bradshaw garlic keeper, which does not [- unlike the Hutzler product -] have the appearance of the skin of a piece of garlic." (Id. at 13) 24

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[design] element separately instead of analyzing the design as a whole from the perspective of an ordinary observer." Amini Innovation, 439 F.3d at 1372. In L.A. Gear, the manufacturer of the accused design pointed out differences between features of its shoes and the design of the patentee. L.A. Gear, 988 F.2d at 1126. Despite these differences, the Federal Circuit affirmed the district court's finding "that 'the placement of all the major design elements is the same, creating the same distinctive overall look,' and ... that the four infringing models were confusingly similar to the patented design, as viewed by the ordinary observer." Id. Similarly, in Rockport, the Court noted that there were differences between the patented shoe design and the accused product: "First, the mud guard of the [accused product] is broken into several parts instead ofthe ... patent's one-piece mud guard .... The second difference is that the [accused shoe] does not have the double layer of shoe extending from the bottom of the eye stay to between the second and third eyelets." Rockport, 65 F. Supp. 2d at 195. Nevertheless, the court found infringement, noting that '''[u]nder Gorham, the focus is on the overall ornamental appearance of the claimed design, not selected ornamental features. '" Id. (quoting Elmer, 67 F.3d at 1577). Here, while the Court acknowledges that there are differences between the patented designs and Bradshaw's products, "[a] visual comparison of the ... design patent[s] with [Bradshaw's Onion and Garlic Keepers] reveals that the overall look of the [products] is extremely similar ... [and] [a]lthough a highly discerning consumer might notice the differences if the [products] were placed side by side, the strength of the [products'] common features greatly outweighs their differences." Jack Schwartz Shoes, Inc. v. Skechers USA, Inc., 233 F. Supp. 2d 512, 514 (S.D.N.Y. 2002).

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The patented designs and Bradshaw's products have the same shape

that of

onion and garlic bulbs - in the same proportions. Given that the onion and garlic shapes are not "functional" characteristics - because, as noted above, onion and garlic can be and are stored in containers of myriad shapes and sizes - the Court must take into account the shapes and proportions of Hutzler's designs and Bradshaw's products. The' 114 Patent and Bradshaw's Onion Keeper likewise have (1) vertical striations running the length ofthe product; (2) striations that convene in a narrow "stem" at the top; and (3) a horizontal line running across the middle of the container where the products open. The '463 Patent and Bradshaw's Garlic Keeper both have (1) a horizontal line running across the container approximately two-thirds of the way down where the products open; (2) air slits on the bottom; and (3) raised designs of approximately the same size in the center of the interior of the bottom. Disregarding the color, sheen, and construction material differences - as this Court must do - "the accused products embody the overall effect ofthe ['114 and '463 designs] in sufficient detail and clarity to cause market confusion.,,4 Crocs, 598 F.3d at 1306.

4 As noted above, Bradshaw argues that its products are not similar to Hutzler's designs because they are "two-toned," with the top portion of the containers transparent. Bradshaw asserts that Hutzler's products are "solid, not transparent" (Def. Opp. Br. 8-9), and that the transparent aspect of its products gives them a "very different' look.'" (Id. at 9) As an initial matter, the top part of Bradshaw's Garlic Keeper is not transparent. It is, for the most part, opaque, except at its striations, which approach translucence. Moreover, to the extent that Bradshaw contends that this Court should attribute significance to the "two-toned" nature of its products, it contradicts the case law discussed above holding that color must be ignored where, as here, it is not part of the patented design. Neither side has cited case law addressing whether it is appropriate for a court to consider transparency or translucency in performing an infringement analysis. While the Federal Circuit recently cited the Manual of Patent Examining Procedure 1503.02 (8th ed. 2006) for the proposition that "[0]blique line shading must be used to show transparent, translucent and highly polished or reflective surfaces," see Apple, Inc. v. Sarnsung Elecs. Co., Ltd., 678 F.3d 1314, 1331 (Fed. Cir. 2012), and neither the' 114 Patent nor the '463 Patent utilizes oblique line 26

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The Court's conclusions are buttressed by other aspects of the Gorham "ordinary observer" test. Given how inexpensive these items are, a purchaser has little motive to pay attention to the subtle differences highlighted by Bradshaw. Stripping away the color, sheen and construction material differences, a consumer who has seen Hutzler's design in a store, and later sees Bradshaw's products, is likely to purchase the latter believing it to be the former. Accordingly, Hutzler has established a likelihood of success on the merits of its patent infringement claim.

B.

Unfair Competition Claim

To succeed on an unfair competition claim under New York common law, "a

plaintiff must demonstrate: 1) a likelihood of confusion; and 2) the defendant's bad faith." New York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d 305, 325 (S.D.N.Y. 2010) (citing Kraft Gen. Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 135 (S.D.N.Y. 1993); Stem's Miracle-Gro Prods., Inc. v. Shark Prods., Inc., 823 F. Supp. 1077, 1093 (S.D.N.Y. 1993)). "'[T]he essence of unfair competition under New York common law is the bad faith misappropriation of the labors and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods.'" Blumenthal Distrib., 2010 WL 5980151, at

*11 (quoting Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27,34 (2d Cir. 1995)
(quoting Rosenfeld v. W.B. Saunders, 728 F. Supp. 236, 249-50 (S.D.N.Y. 1990))); see also Medtech Prods., Inc. v. Ranir, LLC, 596 F. Supp. 2d 778,816 (S.D.N.Y. 2008) ("[i]n order to

shading, the case law is not clear that the consequence of a failure to indicate on a design patent that the surface texture is translucent or transparent results in a design patent claim that is limited to opaque surfaces. Even assuming arguendo that this is true, the Court finds that the transparency of the Bradshaw Onion Keeper, and the partial translucency of its Garlic Keeper, are not sufficient to vitiate the Court's finding that Bradshaw's products are substantially the same as Hutzler's designs, given the similarities discussed above and in light of the small degree of attention an ordinary purchaser is likely to give to these inexpensive products. 27

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state a claim of unfair competition under New York law, a plaintiff must allege that the defendant 'misappropriated the plaintiffs' labors, skills, expenditures, or good will and displayed some element of bad faith in doing so."') (quoting Abe's Rooms, Inc. v. Space Hunters, Inc., 38 A.D.3d 690,692 (2d Dept. 2007; Towers Fin. Corp. v. Dun & Bradstreet, Inc., 803 F. Supp. 820,823 (S.D.N.Y. 1992) ("to make out a claim of unfair competition under New York law, [p1aintiffJ must show that [defendant] ... "'misappropriat[ed] for the commercial advantage of one person ... a benefit or "property" right belonging to another"') (quoting Roy Export Co. v. Columbia Broad. Sys., Inc., 672 F.2d 1095, 1105 (2d Cir. 1982. "'Traditionally, unfair competition was limited to claims that one party had attempted to "pass off' his goods as those of another, to mislead the buying public into purchasing goods while thinking they were getting those of someone else.'" Diversified Mktg., Inc. v. Estee Lauder, Inc., 705 F. Supp. 128, 131 (S.D.N.Y. 1988) (quoting Ideal Toy Corp. v. Kenner Prods., 443 F. Supp. 291,305 (S.D.N.Y. 1977) (citing Flexitized, Inc. v. National Flexitized Corp., 335 F.2d 774,781 (2d Cir. 1964). "However, contemporary New York unfair competition law also encompasses a broader range of unfair practices generally described as the misappropriation of the skill, expenditures and labors of another." Id. (quoting Ideal Toy, 443 F. Supp. at 305 (citing Flexitized, 335 F.2d at 781. Here, Hutzler contends that Bradshaw "has copied Hutzler's entire line of Food Saver Products, resulting in Bradshaw misappropriating .... labors, skills, expenditures, and goodwill that Hutzler accumulated while developing, marketing, and selling the Food Saver Line.... Knowing that the Hutzler Food Saver Line was successful, Bradshaw produced identical products." (Pltf. Br. 11-12) Hutzler further argues that given the "obvious" similarity between Hutzler's Food Saver Line and Bradshaw's Food Keeper Line, the fact that Hutzler and

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Bradshaw are direct competitors, and the fact that Bradshaw "has taken no steps to differentiate itself from Hutzler in supermarkets, or in advertisements," the Court should find that it has demonstrated a likelihood of confusion. (Id. at 12) Bradshaw maintains that "[c]onsumers are not likely to be confused as to the origin of product elements dictated by function." (Def. Opp. Br. 20) Bradshaw argues that "[i]n addition to the differences in the appearance of the products themselves, Bradshaw's labels, packaging and advertising bear no resemblance to those of Hutzler."

(klJ

In arguing that

Hutzler cannot establish bad faith on the part of Bradshaw, Bradshaw notes that it "took significant efforts to design products which do not infringe those patents" and that it obtained an opinion from its intellectual property counsel "and relied upon that opinion in proceeding with the marketing of the accused products." (Id.) The Court concludes that Hutzler has demonstrated a likelihood of confusion. As noted above, Bradshaw's Onion and Garlic Keepers and Hutzler's designs are substantially the same. In addition to the onion and garlic containers, Bradshaw chose to produce containers for lemons, tomatoes and green peppers, thereby duplicating Hutzler's entire Food Saver Line. (Ehrenhaus Dec!.
~

18; Px 9-14) All of the containers are essentially the same size, proportions,

shape, and color. (Px 9-14) Hutzler and Bradshaw are direct competitors operating in the same market and vying for the same customers. Indeed, Hutzler has offered evidence that the two companies' products have been intermingled in supermarket displays, making it likely that customers will confuse the origin of the products. (Ehrenhaus Decl., Ex. D) In short, Hutzler has demonstrated that consumers are likely to be confused as to the origin of the products. Hutzler has also demonstrated that it is likely to establish that Bradshaw has acted in bad faith. Having seen the success of Hutzler's Food Saver Line, which required a significant

29

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expenditure of time and money on Hutzler's part (Hutzler Decl. own line of substantially similar containers Decl. ~ 18)

7), Bradshaw developed its

for the same five vegetables and fruits (Ehrenhaus

to be marketed to the same customers. Bradshaw acknowledges that it was aware

of Hutzler's products when it developed its own competing line. (Megorden Aff. ~ 5) Given that Bradshaw knew of Hutzler's products, its actions here must be viewed as deliberate and indicative of bad faith. Although Bradshaw maintains that it relied on an attorney's opinion in proceeding with the marketing of its products (Id. ~ 6), Bradshaw has refused to provide that opinion to the Court. Because Bradshaw has refused to provide the attorney's opinion, the fact that it solicited advice from counsel is entitled to little weight. There is no way to know whether Bradshaw followed the advice of its attorney in launching its new product line.

In sum, the Court finds that Bradshaw has demonstrated a likelihood of success
on its unfair competition claim.

III.

PLAINTIFF'S SHOWING OF IRREPARABLE INJURY

Under the Salinger standard, a court "must not adopt a 'categorical' or 'general'

rule or presume that the plaintiff will suffer irreparable harm (unless such a 'departure from the long tradition of equity practice' was intended by Congress)." Salinger, 607 F.3d at 80 (quoting Winter v. Natural Resources Defense Council, 555 U.S. 7 (2008); eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006)). Instead, "plaintiffs must show that, on the facts oftheir case, the failure to issue an injunction would actually cause irreparable harm." Salinger, 607 F.3d at 82. Hutzler seeks an order preliminarily enjoining defendant Bradshaw ... from: (1) infringing, or inducing infringement, of Hutzler's patents, and (2) unfairly competing with Hutzler's line of produce containers, specifically, from directly or indirectly making, using, selling or offering for sale any products embodying the inventions of the patents 30

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during their terms or the Food Saver Line, or without the express written authority of Hutzler. (Dkt. No.4) Hutzler argues that, absent an injunction, it will suffer six types of irreparable harm: (1) reputational harm; (2) decrease in market share and loss of market leader position; (3) price erosion; (4) loss of customers' goodwill; (5) adverse effects on sales momentum and profits; and (6) encouragement of other infringement. (Pltf. Br. 14-17). The Court finds that Hutzler will suffer irreparable harm in the form of decreased market share, loss of its position

as market leader, and price erosion - if an injunction is not issued. "It is well-established that a movant's loss of current or future market share may constitute irreparable harm." Grand River Enter. Six Nations, Ltd. v. Pryor, 481 F.3d 60, 67 (2d Cir. 2007) (citing Freedom Holdings, Inc. v. Spitzer, 408 F.3d 112, 114-15 (2d Cir. 2005); Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharms. Co., 290 F.3d 578,596 (3d Cir. 2002)); see also Stein Indus, Inc. v. Jarco Indus., Inc., 934 F. Supp. 55, 58 (E.D.N.Y. 1996). Moreover, '''the potential loss of ... the advantage of being the pioneer in the field and the market leader[ ] may constitute irreparable harm.'" Norbrook Labs. Ltd. v. G.c. Hanford Mfg. Co., 297 F. Supp. 2d 463,492 (N.D.N.Y. 2003) (quoting Comp Assocs. Int'l Inc. v. Bryan, 784 F. Supp. 982, 986 (E.D.N.Y. 1992)). Here, Hutzler has offered evidence that its sales have dropped significantly since Bradshaw's products entered the marketplace in 2011, and that it has lost certain customers who have switched to Bradshaw's products. (See Ehrenhaus Decl. '12, Ex. B; Hutzler Decl. "29, 32-35) The effect of Hutzler's loss of clients is difficult to quantify, and Hutzler may not be able to recover these lost relationships. Moreover, Hutzler has demonstrated that if Bradshaw is not

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enjoined, Hutzler will lose its market leadership. This showing is sufficient to make out irreparable harm. Hutzler also argues that "Defendant's distribution of the Infringing Products, if not enjoined, will result in irreparable price erosion of Hutzler's patented products in that Hutzler will be forced to drastically change its pricing structure in order to complete with lower-priced 'knock-off' products." (Pltf. Br. 15; Hutzler Decl.
~

30) Hutzler maintains that Bradshaw's

products "are priced approximately 25-50 percent lower than Hutzler's Food Saver Line products." (Hutzler Decl.
~

27) It is settled law that "the loss of pricing power resulting from

the sale of inexpensive 'knock-offs' is, by its very nature, irreparable." Mint, Inc. v. Amad, No. 10 Civ. 9395(SAS), 2011 WL 1792570, at *3 (citing Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1362 (Fed. Cir. 2008) (citing Purdue Pharma L.P. v. Boehringer Ingelheim GmbH, 237 F.3d 1359, 1368 (Fed. Cir. 2001) (likelihood of price erosion and loss of market share are evidence of irreparable harm); Polymer Techs., Inc. v. Bridwell, 103 F.3d 970,975-76 (Fed. Cir. 1996) (loss of market opportunities cannot be quantified or adequately compensated and is evidence of irreparable harm))). Hutzler has demonstrated that Bradshaw's products are priced lower than Hutzler's products (Hutzler DecL
~

30; Ehrenhaus Decl., Ex. B) and that it was required to lower

~

its prices in order to avoid losing business to Bradshaw. (Ehrenhaus Decl.

13, Ex. C)

Accordingly, Hutzler has likewise demonstrated irreparable harm flowing from the continued price erosion it will suffer if Bradshaw is not enjoined.

IV.

BALANCE OF HARDHIPS
Where as here - plaintiff has demonstrated a likelihood of success on the merits

and a likelihood of irreparable harm absent an injunction, a court must next "consider the balance

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of hardships between the plaintiff and defendant and issue the injunction only if the balance of hardships tips in the plaintiff's favor." Salinger, 607 F.3d at 80. "The Court 'must balance the hann that will occur to the moving party from the denial of the preliminary injunction with the hann that the non-moving party will incur if the injunction is granted.'" Novo Nordisk A/S v. Pfizer, Inc., No. 06 Civ. 5819(LBS), 2006 WL 3714312, at *6 (S.D.N.Y. Dec. 14,2006) (quoting Hybritech, Inc. v. Abbott Labs., 849 F.2d 1446, 1457 (Fed. Cir. 1988. Here, the balance of hardships factor favors Hutzler. Given the price erosion, loss of market share, and potential loss of market leader position, and the fact that Hutzler's Food Saver Line accounts for 63% of its sales with the Onion Saver and the Garlic Saver
~

constituting 27% of the company's sales (Ehrenhaus Decl.

6) - absent an injunction, Hutzler

faces the potential destruction of its business. See Tuccillo v. Geisha NYC, LLC, 635 F. Supp. 2d 227,247 (E.D.N.Y. 2009) (balance of hardships favored movant given that it faced potential destruction of its business). Bradshaw argues that it "would be hanned by failure to meet the terms of present importation and distribution contracts and be forced to breach its present obligations, which would injure its reputation within the industry, subject it to significant economic hann and hinder its potential to engage in future arrangements with those parties." (Def. Opp. Br. 24; Megorden Aff.
~

13) Bradshaw's product line of home goods includes more than 2,400 different items,
~

however. (Megorden Aff.

2) Accordingly, the impact of an injunction on Bradshaw's business

is likely to be much less serious than the absence of an injunction on Hutzler's business. Moreover, Bradshaw knowingly copied Hutzler's patented designs, and thus assumed the risk that it would suffer financial loss. See Tuccillo, 635 F. Supp. 2d at 247-48

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(citing Novartis, 290 F.3d at 596 ("[T]he injury a defendant might suffer if an injunction were imposed may be discounted by the fact that the defendant brought that injury upon itself')). The Court concludes that the balance of hardships factor weighs in favor of issuing a preliminary injunction.

V.

PUBLIC INTEREST
As the final step in the Salinger analysis, "the court must ensure that the 'public

interest would not be disserved' by the issuance of a preliminary injunction." Salinger, 607 F.3d at 80 (quoting eBay, 547 U.S. at 391). "[A]lthough there exists a public interest in protecting rights secured by valid patents," the Federal Circuit has instructed that "the focus of the district court's public interest analysis should be whether there exists some critical public interest that would be injured by the grant of preliminary relief." Hybritech, 849 F.2d at 1458. Bradshaw has not argued that the public interest would be injured by the grant of preliminary relief, and this Court concludes that the public interest will not be adversely affected by the issuance of a preliminary injunction.

Hutzler has demonstrated that (l) it is likely to succeed on the merits of its patent infringement and unfair competition claims; (2) it is likely to suffer irreparable injury in the absence of an injunction; (3) the balance of hardships favors the granting of an injunction; and (4) the public interest will not be dis served by the issuance of an injunction. Accordingly, the Salinger test is satisfied and a preliminary injunction is appropriate.

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CONCLUSION

For the reasons stated above, Plaintiffs motion for a preliminary injunction is GRANTED. Plaintiff is directed to submit a proposed order by July 26,2012. Defendant will submit any opposition to Plaintiffs proposed order by July 30, 2012. The Court will consider an appropriate Rule 65(c) bond amount once the terms of the preliminary injunction have been determined. The Clerk of Court is directed to terminate the motion. (Dkt. No.4) Dated: New York, New York July 24,2012 SO ORDERED.

Paul G. Gardephe United States District Judge

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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK HUTZLER MANUFACTURING COMPANY, INC.,

USDC SDNY DOCUMENT ELECTRONICALLY FILED DOC #: _________________ DATE FILED: March 27, 2013 ORDER

Plaintiff, 11 Civ. 7211 (PGG) - against BRADSHAW INTERNATIONAL, INC., Defendant.

PAUL G. GARDEPHE, U.S.D.J.: Defendant Bradshaw International, Inc. has moved for reconsideration of this Courts July 25, 2012 Memorandum Opinion & Order (the Order) (Hutzler Mfg. Co., Inc. v. Bradshaw Intl, Inc., No. 11 Civ. 7211 (PGG), 2012 WL 3031150 (S.D.N.Y. July 25, 2012)) granting Plaintiff Hutzler Manufacturing Company, Inc.s motion for a preliminary injunction. (Dkt. No. 38) Familiarity with the Order is presumed. For the reasons stated below, Bradshaws motion for reconsideration will be denied. BACKGROUND Hutzler is the manufacturer of a line of plastic housewares products called the Food Saver Line, which are used for storing and preserving various types of produce. These containers resemble the type of produce they are intended to store. (Cmplt. 9) Hutzler owns U.S. design patents for two products in the Food Saver Line the Onion Saver and the Garlic Saver. (Id. 9, 11, 13) Hutzler alleges that Bradshaw has sold, and is currently offering for sale, products that infringe Hutzlers patents. (Id. 18-19) In addition to alleging patent infringement, Hutzler asserts a claim for unfair competition under New York law. (Id. 64-73)

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In granting Hutzlers motion for a preliminary injunction, this Court found that Hutzler will likely prevail on the patent validity issue at trial. Hutzler, 2012 WL 3031150, at *4. The Court further determined that Hutzler has established a likelihood of success on the merits of its patent infringement claim, finding that while . . . there are differences between the patented designs and Bradshaws products, [a] visual comparison of the . . . design patent[s] with [Bradshaws Onion and Garlic Keepers] reveals that the overall look of the [products] is extremely similar . . . [and] [a]lthough a highly discerning consumer might notice the differences if the [products] were placed side by side, the strength of the [products] common features greatly outweighs their differences. Id. at *14 (quoting Jack Schwartz Shoes, Inc. v. Skechers USA, Inc., 233 F. Supp. 2d 512, 514 (S.D.N.Y. 2002). The Court also concluded that Hutzler ha[d] demonstrated a likelihood of success on its unfair competition claim, finding that Hutzler had shown a likelihood of confusion and would likely . . . establish that Bradshaw ha[d] acted in bad faith. Id. at *1617.1 DISCUSSION I. LEGAL STANDARD A motion for reconsideration is an extraordinary remedy to be employed sparingly in the interests of finality and conservation of scarce judicial resources, In re Initial Public Offering Sec. Litig., 399 F. Supp. 2d 298, 300 (S.D.N.Y. 2005) (quoting In re Health Mgmt. Sys., Inc. Sec. Litig., 113 F. Supp. 2d 613, 614 (S.D.N.Y. 2000)), and may be granted only where a court has overlooked controlling decisions or factual matters that were put before it on the underlying motion and which, if examined, might reasonably have led to a different

This Court further concluded that Hutzler had demonstrated irreparable harm in the form of price erosion, loss of customers, and loss of market leadership. Hutzler, 2012 WL 3031150, at *17-18. Finally, the Court determined that the balance of hardships and public interest factors favored issuance of a preliminary injunction. Id. at *17-18. 2

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result. Eisemann v. Greene, 204 F.3d 393, 395 n.2 (2d Cir. 2000) (quoting Shamis v. Ambassador Factors Corp., 187 F.R.D. 148, 151 (S.D.N.Y. 1999)). Reconsideration should not be granted where the moving party seeks solely to relitigate an issue already decided; in addition, the moving party may not advance new facts, issues or arguments not previously presented to the Court. Christoforou v. Cadman Plaza N., Inc., No. 04 Civ. 08403 (KMW), 2009 WL 723003, at *7 (S.D.N.Y. Mar. 19, 2009) (quoting Shamis, 187 F.R.D. at 151). II. ANALYSIS A. Bradshaw May Not Re-Litigate Issues That Have Already Been Decided Bradshaw argues that the Court improperly disregarded the surface lines shown in the 114 and 463 Patents. (Def. Reconsideration Br. 2-5) Bradshaw asserts: The Courts only mention of the relevance of the vertical lines shown in the drawings of the 114 patent erroneously references vertical lines running the length of the product. The drawings of the 114 patent show lines of varying length on the surface of the product, none of which run the length of the product. Moreover, in the Courts interpretation of the 463 garlic patent, there is no mention whatsoever of the surface lines shown in the drawings. Even if there were, however, and similarly to the 114 patent above, none of those lines run the length of the product, as they do in the Bradshaw garlic saver product. No other mention whatsoever is made to the surface lines shown in the patents, nor to the fact that those lines were considered in any way to be important elements of the claims. In fact, the court seems to have read-out those surface lines altogether. (Id. at 3-4) Bradshaw further asserts that the Court misses the point . . . that the lines shown in the Hutzler design patents relate to the overall look and texture of the design, namely that they are intended to protect a design which looks as closely as possible [to] the natural surfaces of onions and garlic. (Id. at 4)

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Bradshaw made these arguments in its opposition brief (Def. PI Opp. Br. 7-15) and at the preliminary injunction hearing (Jan. 19, 2012 Tr. at 19-20, 23-24), and acknowledges in the instant motion that it previously raised these arguments: [t]his point was emphasized by Bradshaw in its Brief in Opposition to the Motion for Preliminary Injunction (Bradshaw Brief, pp. 7-8), as well as extensively by Bradshaws counsel at the January 19, 2012 hearing of this matter . . . . (Def. Reconsideration Br. 3) A motion for reconsideration is not a second bite at the apple for a party dissatisfied with a courts ruling. Corines v. Am. Physicians Ins. Trust, 769 F. Supp. 2d 584, 593 (S.D.N.Y. 2011) (citation omitted). Accordingly, Bradshaws renewal of these arguments will not be entertained.2 Likewise, Bradshaws argument (see Def. Reconsideration Br. at 5) that the shapes, proportions, and center openings of the products are functional was presented in detail by Bradshaw in its briefing and at oral argument on the preliminary injunction motion. (See, e.g.,

In any event, the Court explicitly acknowledged the surface lines or striations depicted in Hutzlers patents, but ultimately concluded that Bradshaws products embody the overall effect of [Hutzlers designs] in sufficient detail and clarity to cause market confusion. Hutzler, 2012 WL 3031150, at *14 (quoting Crocs, Inc. v. Intl Trade Commn, 598 F.3d 1294, 1306 (Fed. Cir. 2010). As the Court discussed at length in the Order, the Federal Circuit has emphasized that courts must focus on the overall appearance of products when analyzing design patent infringement. Hutzler, 2012 WL 3031150, at *8-10 (citing Crocs, Inc., 598 F.3d at 1303 ([T]he deception that arises is a result of the similarities in the overall design, not of similarities in ornamental features in isolation. . . . The ordinary observer test applies to the patented design in its entirety, as it is claimed.) (emphasis added; internal quotation omitted); Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995) (Under Gorham, the focus is on the overall ornamental appearance of the claimed design, not selected ornamental features.) (emphasis in original)). Bradshaw also errs in arguing that the Court failed to consider all of the drawings in each of the patents. The Court considered all of the drawings and explicitly addressed numerous features of the designs depicted in the patent drawings. For example, with respect to the 463 Patent, the Court discussed, inter alia, the air slits on the bottom depicted in Figures 7 and 8 of the 463 Patent, the raised design in the center of the interior of the bottom depicted in Figure 8, and the horizontal line running across the container approximately two-thirds of the way down where the products open as depicted in Figures 1 and 3. Hutzler, 2012 WL 3031150, at *14. 4

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Def. PI Opp. Br. 16-19 ([A]lthough there is a separation at the vertical midsection in the Bradshaw onion keeper and garlic keeper, this separation is a functional aspect of the design, since there must be a separation in order to open the container to gain access to the inside of the container. The most likely location to place the separation is at the midsection, since this is the widest part of the container, and therefore serves a function of allowing the wide[st] access to insert and remove items. . . . [A]n onion container and a garlic container in and of themselves are functional. In order for an onion container to be an onion container or a garlic container to be a garlic container, it should have the general size and shape of an onion or a piece of garlic. . . . Bradshaw asserts that the 114 and 463 Patents are invalid because their ornamental feature or design is merely a by-product of functional and mechanical considerations dictating the design. . . . The shape is dictated by the shape of the produce that is intended to be stored inside.); Jan. 19, 2012 Tr. at 15-16 ([A] statement that [Hutzlers counsel] made in his argument struck me as extremely relevant to this issue [of functionality]. He said in making that design decision, the idea was to make the product immediately convey to the consumer what the item does. . . . To me, that is the definition of functional, because it . . . immediately tells the customer . . . something about the product: what it functions as, what it is used for.)) Bradshaw further maintains that in concluding that the onion and garlic shapes are not functional characteristics because onion and garlic can be and are stored in containers of myriad shapes and sizes, Hutzler, 2012 WL 3031150, at *14 the Court ignore[d] the fact that alternative designs would affect the utility of the specified article . . . . For example, storing an onion in a plain black box bearing the word onion in the refrigerator would not have the same effect as doing so in an onion-shaped container[]. (Def. Reconsideration Br. 6) In making this argument, Bradshaw now states that Hutzler itself, through its website, specifically touts the

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utility of the shape of the designs in issue . . . . Specifically, for its onion saver product, as well as for several others in its food saver line, Hutzler touts that the design makes the product [e]asy to find in the refrigerator, and [m]ade to look just like an onion, the Onion Saver will never be lost or forgotten in the fridge. (Id. at 7) This is simply an expansion of the functionality argument that Bradshaw made in its opposition brief and at the injunction hearing, however, and a motion for reconsideration is not a vehicle to offer additional support for an argument rejected previously by the Court. Capitol Records, Inc. v. MP3Tunes, LLC, No. 07 Civ. 9931 (WHP), 2009 WL 5102794, at *1 (S.D.N.Y. Dec. 14, 2009). B. Bradshaw May Not Present New Theories and Arguments Just as Bradshaw may not rehash arguments it made previously, it may not offer new theories or arguments that could have been presented before but were not. Bradshaw argues, for example, that the Court was required to apply the factors outlined in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), in determining likelihood of confusion in connection with Hutzlers unfair competition claim. (Def. Reconsideration Br. 13-14) Bradshaw never made this argument in its briefing or at oral argument, however, and accordingly it may not be raised now. A motion for reconsideration is not an opportunity for a losing party to advance new arguments to supplant those that failed in the prior briefing of the issue. Fredericks v. Chemipal, Ltd., No. 06 Civ. 966 (GEL), 2007 WL 1975441, at *1 (S.D.N.Y. July 6, 2007); see also EEOC v. Fed. Express Corp., 268 F. Supp. 2d 192, 199 (E.D.N.Y. 2003) (Under Local Rule 6.3, a party may not advance new facts, issues or arguments not previously presented to the Court. (internal quotation omitted)).3

Although Bradshaw never suggested that a Polaroid analysis was necessary or appropriate, the Order discusses those aspects of the Polaroid analysis about which the parties offered evidence, including the success of Hutzlers Food Saver Line in the marketplace, the similarity of the 6

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Bradshaws argument that the two companies do not have identical product lines (see Def. Reconsideration Br. 16) was also not presented before. Based on the record before it, the Court found that, [i]n addition to the onion and garlic containers, Bradshaw chose to produce containers for lemons, tomatoes and green peppers, thereby duplicating Hutzlers entire Food Saver Line. Hutzler, 2012 WL 3031150, at *16. Bradshaw now argues that Hutzler failed to disclose to the Court . . . that the Hutzler Food Saver line of products contains many more food-shaped containers than these five products. . . . Conversely, the Bradshaw line of Keeper products contains additional products as well. (Def. Reconsideration Br. 16) Bradshaw could have made this argument before, of course, but it did not. A motion for reconsideration is not an opportunity for parties to advance new facts, issues, or arguments that have previously not been presented to the court. Xuedan Wang v. Hearst Corp., No. 12 Civ. 793 (HB), 2012 WL 3642410, at *1 (S.D.N.Y. Aug. 24, 2012).

products, their proximity in the marketplace, Bradshaws bad faith, the inexpensive nature of the products, and the nature of the likely buyer and the degree of attention he or she would likely bring to a purchase of these products. Hutzler, 2012 WL 3031550, at *7, *15-16. Bradshaw has not shown that a deeper analysis of the Polaroid factors at this stage of the litigation is necessary, particularly given that Bradshaw never argued that the Polaroid test is applicable. Bradshaw also argues that, in considering Hutzlers unfair competition claim, the Court improperly conflate[d] the issues of patent infringement and unfair competition. (Def. Reconsideration Br. 13) This argument has no merit. The Court separately considered Hutzlers unfair competition claim and made the following findings, inter alia, specific to that claim: (1) Bradshaws Onion and Garlic Keepers and Hutzlers designs are substantially the same; (2) [i]n addition to the onion and garlic containers, Bradshaw chose to produce containers for lemons, tomatoes and green peppers, thereby duplicating Hutzlers entire Food Saver Line; (3) [a]ll of the containers are essentially the same size, proportions, shape, and color; (4) Hutzler and Bradshaw are direct competitors operating in the same market and vying for the same customers; and (5) Hutzler has offered evidence that the two companies products have been intermingled in supermarket displays, making it likely that customers will confuse the origin of the products. Hutzler, 2012 WL 3031150, at *16. The Court further found that Hutzler had demonstrated it is likely to establish that Bradshaw has acted in bad faith. Id. These findings are independent of the Courts patent infringement analysis. 7

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In any event, Hutzler disputes Bradshaws claim: Bradshaw has the facts wrong . . . . It knew what the Hutzler Food Saver line consisted of in October 2011 when this case was commenced and in January 2012 when the parties appeared in court for oral argument. So it should know, but has failed to tell the Court, that the [additional food-shaped containers] were not part of the Food Saver line when suit was filed or the preliminary injunction motion was argued . . . . (Pltf. Reconsideration Opp. Br. 10) Bradshaws remaining arguments concerning the alleged differences between Hutzlers and Bradshaws lines constitute an attempt to re-litigate issues already decided by the Court and will not be considered. 4

Bradshaw has also moved for leave to file the August 8, 2012 Affidavit of Robert J. Kenney in support of its motion for reconsideration. (Dkt. Nos. 29, 33) Pursuant to Local Rule 6.3, [n]o affidavits shall be filed [with respect to a motion for reconsideration] by any party unless directed by the court. Local Civ. R. 6.3. Bradshaw will be granted leave to file the Kenney Affidavit (Dkt. No. 40), which recounts the Courts request that Kenney re-send a January 25, 2012 letter that he had previously submitted on behalf of Bradshaw. Kenney asserts that the Court issued the Order before he was able to re-send the letter, and that accordingly the Court did not consider his letter before issuing the Order. (Dkt. No. 40 at 10) That is incorrect. After leaving a message for Kenney, Chambers located the letter and the Court reviewed it before issuing the Order. Kenneys January 25, 2012 letter reflecting that it was faxed to Chambers on January 25, 2012 has been docketed. (Dkt. No. 56) Hutzlers letter concerning the same topic has also been docketed. (Dkt. No. 55) 8

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CONCLUSION
For the reasons stated above, Bradshaw's motion for leave to file the August 8, 2012 Affidavit of Robert 1. Kenney (Dkt. Nos. 29, 33) is granted, and Bradshaw's motion for reconsideration (Dkt. No. 38) is denied. The Clerk of the Court is directed to terminate the motions. Dated: New York, New York March 27,2013
SO ORDERED.

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III DIII~~~I I IhID IIHII 1111111 lHD1111111 1111 INI

US0013538114S

(12)

United States Design Patent

Kolano
ONION CONTAINER Inventor: William Kolano, Pittsburgh. PA (US)

(10) (45)

Patent No.: Date of Patent:

*8/1991 *8/1994

US D538,114 S
**

Mar. 13, 2007

(54) (75) (73)

D319,009 S D349,643 S D436,855 S

Astrab, Jr................0D9/644

Szymnanski.............. D9/644 1/2001 Papiernik ............... 0D9/428

Assignee: Hutzler Manfacturing Co., Inc., Canaan, CT (US) 14 Years

cited by examiner Primary Examiner-Terry A. Wallace (74) Attorney Agent, or Firin-Michael (57) CLA?%I ornamental design for an onion container, as shown and DESCRIPTION FIG. 1 satpve fa noncnanrsoigm e e iso iw fnoincotie hoigm e ein FIG. 2 is a side view thereof,- which is also a mirror image of the opposite side vicw thereof; and, FIG. 3 is a bottom view thereof.

(*)Term: (21)

j. Striker

AppI. No.: 29/259,206 (22)File: Ma 4, 006The (22)File: Ma 4, 006described. LOC (8) Ci ....................................... 07-01 D9/644 U.S. CI.D.....................17/628; Field of Classification Search ............. D7/628, D7/612-615, 602, 629; D9/643, 644; 206/4571 220/780-806, 4.21 See application file for complete search history. References Cited U.S. PATENT DOCUMENTS 0196.985 S
'11/1963

(51) (52) (58)

(56)

Selinering et al .

D......19/644

1 Claim, 1 Drawing Sheet

- 45 -

U.S. Patent

Mar. 13, 2007

US D538,114 S

FIG. I

- 46 -

US0003592463S

(12)

United States Design Patent

Ebrenhaus et al.
GARLIC CONTAINER Inventors: Rich Ehrenhaus. New York, NY (US); Colin F. Gentle. Brooklyn, NY (US) Assignee: Hutzler Manufacturing Co., Inc., Canaan, CT (US) 14 Years

(10)
(45)

Patent No.: Date of Patent:

US D592,463 S
**

May 19, 2009

(54) (75)

D436,855 S * 1/2001 Papiernik ............... D9/428 D519,376 S *~ 4/2006 Ames................... D7/615 D538,1 14 S * 3/2007 Kolano..................0D7/628
*cited

by examiner

(73)

PrimaryExaminer-Terry A Wallace (74) Attorney, Agent, or Firm-MichaelJ1. Striker (57) CLAIM

(*)Term: (21) (22) (51) (52) (58)

AppI. No.: 29/283,424 Filed: Aug. 14, 2007

The ornamental design for a garlic container, as shown and dsrbd

DESCRIPTION 07-01 LOC (9) Cl........................................ U.S. Cl................................. D7/613; 137/628 FIG. l is a front perspective view of a garlic container showing our new design; 07/612-615, Field of Classification Search ...... D7/628, 602. 606; D9/643, 644, 428. 429; FIG. 2 is a top view thereof: 206/457; 2201780-806, 4.21 FI.3iafrnvewtrof See application file for complete search history.FI.3iafrnvewtro, 4 is a rear view thereof-, (56) efernces itedFIG. (56)Refrencs CtedFIG. 5 is a right side view thereof;, U.S. PATENT DOCUMENTS D196,985 D267,396 4,795.033 0319,009 D349,643 D409,052 S *11/1963 S *12/1982 A * 111989 S * 811991 S * 8/1994 S * 5/1999 Schnering et al.......... D9/644 McDuffee et al.......... D9,'429 Duffy .................. 2061457 Astrab, Jr................ D9/644 Szymanski.............. D9,/644 Terraova...............0D71615 FIG. 6 is a left side view thereof; FIG. 7 is a bottom view thereof, and, FIG. 8 is an interior surface of the bottom portion in an open
position.

I Claim, 4 Drawing Sheets

- 47 -

U.S. Patent

May 19, 2009

Sheet 1 of 4

US D592,463 S

FIG. 1

FIG.2
- 48 -

U.S. Patent

May 19, 2009

Sheet 2 of 4

US D592,463 S

FIG.3

FIG.4
- 49 -

U.S. Patent

May 19, 2009

Sheet 3 of 4

US D592,463 S

FIG .5

FIG.6
- 50 -

U.S. Patent

May 19, 2009

Sheet 4 of 4i

US D592,463 S

FIG.7

FIG.8
- 51 -

CERTIFICATE OF FILING AND SERVICE I hereby certify that on this 12th day of July, 2013, I caused this Brief of Appellant to be filed electronically with the Clerk of the Court using the CM/ECF System, which will send notice of such filing to the following registered CM/ECF users: Michael R. Graif CHADBOURNE & PARKE, LLP 30 Rockefeller Plaza New York, New York 10112 Turner P. Smith CURTIS, MALLETT-PREVOST, COLT & MOSLE 101 Park Avenue, Suite 3500 New York, New York 10178 (212) 696-6121 Counsel for Appellee Upon acceptance by the Clerk of the Court of the electronically filed document, the required number of copies of the Brief of Appellant will be hand filed at the Office of the Clerk, United States Court of Appeals for the Federal Circuit in accordance with the Federal Circuit Rules. /s/ Robert J. Kenney Counsel for Appellant

CERTIFICATE OF COMPLIANCE 1. This brief complies with the type-volume limitation of Fed. R. App. P. 28.1(e)(2) or 32(a)(7)(B) because: [ X ] this brief contains [11,535] words, excluding the parts of the brief exempted by Fed. R. App. P. 32(a)(7)(B)(iii), or [ ] this brief uses a monospaced typeface and contains [state the number of] lines of text, excluding the parts of the brief exempted by Fed. R. App. P. 32(a)(7)(B)(iii). 2. This brief complies with the typeface requirements of Fed. R. App. P. 32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because: [ X ] this brief has been prepared in a proportionally spaced typeface using [Microsoft Word 2007] in [14pt Times New Roman]; or [ ] this brief has been prepared in a monospaced typeface using [state name and version of word processing program] with [state number of characters per inch and name of type style].

Dated: July 12, 2013

/s/ Robert J. Kenney Counsel for Appellant