Petition for Writ of Certiorari — Bobcar Media, LLC, Petitioner v. Aardvark Event Logistics, Inc.

Supreme Court briefAug 2, 2021

Ask Donna

What actually matters in this document.

Text

No. _______

IN THE

Supreme Court of the United States

BOBCAR MEDIA , LLC,

Petitioner,

—v.—

AARDVARK EVENT LOGISTICS , INC .,

Respondent.

ON PETITION FOR WRIT OF CERTIORARI TO THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL CIRCUIT

PETITION FOR WRIT OF CERTIORARI

MORRIS E. COHEN

Counsel of Record

GOLDBERG COHEN , LLP

1350 Avenue of the Americas,

3rd Floor

New York, New York 10019

(646) 380-2084

mcohen@goldbergcohen.com

Counsel for Petitioner

QUESTIONS PRESENTED

1. Whether the Court should resolve the circuit split

under Federal Rule of Appellate Procedure 36

(wherein a minority of circuit courts issue

judgments without any explanation of their

decisions), and elucidate whether or not the use of

one-word affirmances has constitutional and

statutory boundaries.

2. Whether the Federal Circuit’s extensive use of its

Rule 36, to enter judgments which extinguish

constitutional rights and private property rights

without any explanation, violates constitutional

and statutory protections, principles of right and

justice, and this Court’s supervisory authority.

3. Whether Federal Circuit Rule 36(a)(3) violates

constitutional principles, such as the Seventh

Amendment, Due Process, and Equal Protection,

by authorizing panels to affirm summary

judgment decisions denying jury trials, without

any explanation whatsoever, and irrespective of

the rules and rights in the circuit from which the

case was appealed.

PARTIES TO THE PROCEEDINGS BELOW

All parties to the proceedings are listed on the

cover page of this petition.

CORPORATE DISCLOSURE STATEMENT

Pursuant to Supreme Court Rule 29.6, Bobcar

Media Group LLC (“Bobcar”) is a privately held

corporation. More than 10% of its shares are owned

by its parent corporation, AHA Ventures LLC

(“AHA”), which is also a privately held corporation.

None of Bobcar or AHA’s shares are held by a

publicly traded company.

RELATED CASES STATEMENT

Bobcar Media LLC v. Aardvark Event Logistics,

Inc., U.S. District Court for the Southern District of

New York, No. 16-cv-885 (JPO). Order of Dismissal

Entered April 6, 2020, 2020 U.S. Dist. LEXIS 60542

(S.D.N.Y. April, 6, 2020).

Bobcar Media LLC v. Aardvark Event Logistics,

Inc., U.S. Court of Appeals for the Federal Circuit,

No. 20-1847. Judgment Entered March 5, 2021. 839

Fed. Appx. 545 (Fed. Cir. 2021).

iii

TABLE OF CONTENTS

PAGE

QUESTIONS PRESENTED ......................................... i

PARTIES TO THE PROCEEDINGS BELOW ........... ii

CORPORATE DISCLOSURE STATEMENT ............. ii

RELATED CASES STATEMENT............................... ii

TABLE OF CONTENTS............................................. iii

TABLE OF AUTHORITIES ....................................... vi

OPINIONS BELOW .................................................... 1

JURISDICTION........................................................... 1

PROVISIONS INVOLVED.......................................... 1

REASONS FOR GRANTING THE WRIT .................. 2

STATEMENT OF THE CASE..................................... 4

The District Court Proceedings .................... 4

The Federal Circuit Proceedings .................. 5

ARGUMENT ................................................................ 7

I. RULE 36 PRACTICE IS CONTRARY TO

CONSTITUTIONAL PRINCIPLES ........................ 7

A. It is Contrary to the Framework of the

Founders ............................................................... 7

B. The Constitution Was Meant to Protect

Against Decisions in Secrecy................................ 8

PAGE

II. IT UNDERMINES THE INTEGRITY OF THE

JUDICIAL SYSTEM .............................................. 10

It is Inconsistent with the Rule of Law ...... 10

B. It is Inconsistent with the Common Law

System ................................................................. 11

III.

THE CAFC’S RULE 36 PRACTICE

CONFLICTS WITH NINE CIRCUITS ................. 13

A. The Majority of Circuits Issue

Explanations ....................................................... 13

B. The Circuits’ Rules are Subject to

the Review of This Court .................................... 14

IV.

IT IS CONTRARY TO “PRINCIPLES OF

RIGHT AND JUSTICE” ........................................ 15

Reason and Truth ........................................ 15

Transparency ............................................... 17

Accountability .............................................. 18

D. Uniformity ................................................... 18

Foreign Law Is Also Instructive ................. 19

V. RULE 36 PRECLUDES MEANINGFUL

APPELLATE REVIEW .......................................... 20

A. It Eviscerates the Statutory Right to

Petition for Certiorari ......................................... 20

B. It Nullifies this Court’s Constitutional and

Supervisory Authority ........................................ 22

PAGE

VI.

IT UNDERMINES BASIC

CONSTITUTIONAL RIGHTS ............................... 23

A. It Violates Equal Protection and

Due Process ......................................................... 23

B. Reasoned Decisions are Needed to Protect

Fundamental Rights........................................... 25

VII. RULE 36 HAS UNDERMINED PUBLIC

FAITH IN THE JUDICIAL SYSTEM ................... 26

A. It Provides a Semblance of Injustice

Which Tarnishes the Courts .............................. 26

B. It Has Engendered Widespread Public

Distrust ............................................................... 27

VIII. THIS CASE IS AN EXCELLENT

VEHICLE TO ADDRESS THESE ISSUES .......... 29

A. Bobcar Received No Response to Its Due

Process Concerns ................................................ 29

It Lost Its Seventh Amendment Rights...... 32

C. Its Standing Under Lexmark Was Not

Addressed ............................................................ 34

D. Equal Protection Issues Are Involved ........ 35

E. All of Which Illustrate the Serious Risks

of Rule 36 Practice .............................................. 36

CONCLUSION .......................................................... 36

TABLE OF AUTHORITIES

PAGE(S)

CONSTITUTIONAL PROVISIONS

Article III, Section I ................................................... 28

CASES

Amerijet Int’l Inc. v. Pistole,

753 F.3d 1343 (D.C. Cir. 2014) ........................ 10

Anderson v. Liberty Lobby, Inc.,

477 U.S. 242 (1986) ............................................ 6

Anya vs. University of Oxford,

2001 EWCA Civ 405 ......................................... 24

Atlantic & Gulf Stevedores, Inc. v. Ellerman

Lines, Ltd.,

369 U.S. 355 (1962) .......................................... 39

Baltimore & Carolina Line, Inc. v. Redman,

295 U.S. 654 (1934) .......................................... 39

Birth v. United States,

958 F.2d 362 (3d Cir. 1992) .............................. 16

Booking.com v. Matal,

278 F. Supp. 3d 891 (E.D. Va. 2017) ................ 41

Burlington Truck Lines v. United States,

371 U.S. 156 (1962) .......................................... 10

Cartier, Inc. v. Sardell Jewelry, Inc.,

294 F. App’x 615 (2d Cir. 2008) ................... 6, 39

Celotex Corp. v. Catrett,

477 U.S. 317 (1986) .......................................... 36

vii

PAGE(S)

Classic Liquor Imps., Ltd. v. Spirits Int’l B.V.,

201 F. Supp. 3d 428 (S.D.N.Y. 2016) ............... 41

Commissioner Of Income-Tax v. M/S. Walchand

& Co. (Pvt.) Ltd.,

1967 AIR 1435, 1967 SCR (3) 214

(17 March 1967). ............................................... 23

Cty. of Los Angeles v. Kling,

474 U.S. 936 (1985) .......................................... 19

Cullen vs. Chief Constable of the Royal Ulster

Constabulary,

(2003) 1 WLR 1763 ........................................... 23

Dickerson v. United States,

530 U.S. 428 (2000) .......................................... 28

English vs. Emery Reimbold and Strick Limited

(2002) 1 WLR 2409 .......................................... 23

Faretta v. California,

422 U.S. 806 (1975) ............................................ 9

Gannett Co. v. DePasquale,

443 U.S. 368 (1979) .......................................... 32

Greene v. McElroy,

360 U.S. 474 (1959)............................................ 19

Griffin v. Illinois,

351 U.S. 12 (1956) ............................................ 30

In re Lloyd's Register N. Am., Inc.,

780 F.3d 283 (5th Cir. 2015) ............................ 25

In re Packard,

751 F.3d 1307 (CAFC 2014) ............................. 13

In re Rules of United States Court of Appeals etc.,

955 F.2d 36 (10th Cir. 1986) ............................ 13

viii

PAGE(S)

In re SK Hynix, Inc.,

835 Fed. Appx. 600 (Fed. Cir. 2021) .......... 26, 27

In re Tracfone Wireless, Inc.,

2021 U.S. App. LEXIS 6689

(Fed. Cir. 2021) ................................................. 27

ING Bank N.V. v. M/V Temara,

892 F.3d 511 (2d Cir. 2018) .......................... 6, 36

Keddington v. State,

19 Ariz. 457 (1918) ............................................. 9

LeSportsac, Inc. v. K Mart Corp.,

754 F.2d 71 (2d Cir. 1985) ............................ 6, 40

Lindsey v. Normet,

405 U.S. 56 (1972) ............................................ 29

Lone Star Silicon Innovations LLC v. Nanya Tech.

Corp.,

925 F.3d 1225 (Fed. Cir. 2019)......................... 42

Lucky Brand Dungarees, Inc. v. Marcel Fashions

Grp., Inc.,

140 S.Ct. 1589 (2020) ....................................... 37

McHenry v. Bond,

668 F.2d 1185 (11th Cir. 1982) ........................ 10

McNabb v. United States,

318 U.S. 332 (1943) .......................................... 28

Nordstrom, Inc. v. Nomorerack Retail Grp., Inc.,

2013 U.S. Dist. LEXIS 41810

(W.D. Wash. Mar. 25, 2013) ............................. 41

Oakley, Inc. v. Int’l Tropic-Cal Inc.,

923 F.2d 167 (Fed. Cir. 1991)........................... 26

Panduit Corp. v. All States Plastic Mfg. Co.,

744 F.2d 1564 (Fed. Cir. 1984)........................... 6

PAGE(S)

Perdue v. Kenny A.,

559 U.S. 542 (2010) .......................................... 30

Rose v. Hartford Underwriters Ins. Co.,

203 F.3d 417 (6th Cir. 2000) ............................ 26

Ruiz Torija v Spain (1995)

19 EHRR 553 .................................................... 24

Schwendimann v. Arkwright Advanced Coating, Inc.,

959 F.3d 1065 (Fed. Cir. 2020)......................... 42

TechSearch L.L.C. v. Intel Corp.,

286 F.3d 1360 (Fed. Cir. 2002)......................... 36

Thomas v. WGN News,

637 F. App’x 222 (7th Cir. 2016) ...................... 16

U.S.P.T.O. et al., v. Booking.com B.V.,

140 S.Ct. 2298 (2020) ....................................... 40

Ultratec Inc. v. CaptionCall, LLC,

872 F.3d 1267 (Fed. Cir. 2017)......................... 26

United States v. Carolene Products Co.,

304 U.S. 144 (1938) .......................................... 14

United States v. Cianfrani,

573 F.2d 835 (CA3 1978) .................................. 32

United States v. Dockery,

447 F.2d 1178 (D.C. Cir. 1971) ........................ 31

United States v. Sineneng-Smith,

140 S.Ct. 1575 (2020) ....................................... 38

Whitserve, LLC v. Comput. Packages, Inc.,

694 F.3d 10 (Fed. Cir. 2012)............................. 26

PAGE(S)

STATUTES

28 U.S.C. §1254(1) ....................................................... 1

28 U.S.C. §2072.......................................................... 18

28 U.S.C. §2350(a) ..................................................... 25

RULES

10th Cir. R. 36 ............................................................. 17

11th Cir. R. 36-1 (prior to Aug. 1, 2006) .................... 16

1st Cir. R. 36(a) ........................................................... 16

2nd Cir. Internal Operating Procedure 32.1.1 ........... 16

3rd Cir. I.O.P. 6.3.2 ..................................................... 16

4th Cir. R. 36.3 ............................................................ 16

5th Cir. R. 47.6 ............................................................ 17

8th Cir. R. 47B ............................................................ 17

9th Cir. General Order. 4.3.a ..................................... 16

D.C. Cir. R.36 ............................................................. 16

Fed. Cir. R. 18 (1982) ................................................. 27

Fed. Cir. R. 36 .................................................... passim

Fed. R. App. P. 36 .............................................. passim

Fed. R. App. P. 47(a)(1).............................................. 25

Fed. R. Civ. P. 12(b)(1)................................... 1, 5, 7, 43

Fed. R. Civ. P. 12(b)(6)............................................... 42

Fed. R. Civ. P. 56(f)(2) ........................................... 5, 37

S. Ct. R. 10(a) ............................................................. 28

PAGE(S)

OTHER AUTHORITIES

Amy Coney Barrett, The Supervisory Authority of the

Supreme Court, 106 Colum. L. Rev. 324 (2006) .... 28

Andrew Hoffman, The Federal Circuit’s Summary

Affirmance Habit, 2018 B.Y.U.L. Rev. 419 13, 22, 25

Antonin Scalia, The Rule of Law as a Law of Rules,

56 U. Chi. L. Rev. 1175 (1989) ............................... 12

Benjamin N. Cardozo, Jurisdiction of the Court of

Appeals (2d ed. 1909) ............................................. 15

Clint Bolick, The Case for Legal Textualism,

https://www.hoover.org/research/case-legaltextualism ............................................................... 11

Dennis Crouch, Wrongly Affirmed Without Opinion,

Wake Forest L. Rev. 52 (2017), University of

Missouri School of Law Legal Studies Research

Paper No. 2017-02 .................................................. 15

Evan J. Wallach et al., Federal Circuit Review of

USPTO Inter Partes Review Decisions, by the

Numbers: How the AIA Has Impacted the Caseload

of the Federal Circuit, 98 J. Pat. & Trademark

Off. Soc’y 105 (2016) ............................................... 33

Federalist 78 ............................................................ 7, 8

Federalist 80 .............................................................. 12

xii

PAGE(S)

Jason D. Eisenberg, CAFC Rule 36 Judgement:

24 Hour Affirmance with No Explanation,

National Law Review, Volume VIII, No. 52

(Feb. 21, 2018) ........................................................ 35

Jason Rantanen, Federal Circuit Now Receiving

More Appeals Arising from the PTO than the

District Courts, PatentlyO (Mar. 2, 2016),

https://patentlyo.com/patent/2016/06/circuitappeals-decisions.html ........................................... 33

John P. Stevens, Address to the Illinois State Bar

Association's Centennial Dinner, 65 Ill. B.J. 508

(1977) ...................................................................... 14

Lea Brilmayer, Carolene, Conflicts, and the Fate of

the Inside-Outsider, 134 Univ. Pa. L.R. 1291

(1986) ...................................................................... 14

Martha J. Dragich, Will the Federal Courts of Appeals

Perish if They Publish? Or Does the Declining Use

of Opinions to Explain and Justify Judicial

Decisions Pose a Greater Threat?, 44 Am. U.L.

Review 757 (1995) .................................................. 14

Martin Gardner, A Gardner’s Workout

(A K Peters/CRC Press, July 18, 2001) ................. 20

Mel Dickstein “Why judges write opinions,”

MinnPost (Oct. 7, 2014),

https://www.minnpost.com/communityvoices/2014/10/why-judges-write-opinions ...... 11, 32

xiii

PAGE(S)

Office of the Clerk, Practitioner’s Guide to the U.S.

Court of Appeals for the Tenth Circuit, Section

IX.A (2018).............................................................. 17

Office of the Clerk, Practitioner’s Guide to the U.S.

Court of Appeals for the Tenth Circuit, Section

IX.A (2021).............................................................. 17

Patricia M. Wald, The Problem with the Courts:

Black-Robed Bureaucracy or Collegiality Under

Challenge?, 42 Md. L. Rev. 766 (1983) .................. 18

Proceedings of the First Annual Jud. Conf. of

the U.S. Ct. of App. For the Fed. Cir.,

100 F.R.D. 499 (1983) ............................................ 27

Shirley S. Abrahamson, Judging In The Quiet Of

The Storm, 24 St. Mary’s L. J. 965 (1993)............. 22

Topologia z czuba,

http://prac.im.pwr.wroc.pl/~kwasnicki/pl/teaching/

archive/z_czuba_topologia_2007_I.html.................... 19

Where the Arts Meet the Sciences,

https://richbeveridge.wordpress.com/category/

math-history............................................................ 20

OPINIONS BELOW

The district court dismissed Bobcar’s patent claims

under Rule 12(b)(1) on January 19, 2019 (Appx.17a20a). It dismissed Bobcar’s trade dress claim on

summary judgment and excluded Bobcar’s expert on

April 6, 2020 (Appx.21a-42a). The Federal Circuit

issued a one-word affirmance on March 5, 2021

(Appx.43a).

JURISDICTION

Bobcar had 150 days to petition (until August 2,

2021), per this Court’s Order addressing COVID-19.

This Court has jurisdiction to review cases from the

court of appeals pursuant to 28 U.S.C. §1254(1).

PROVISIONS INVOLVED

Federal Rule of Appellate Procedure 36

(“Rule 36”)

Entry of Judgment; Notice

(a) Entry. A judgment is entered when it is noted on

the docket. The clerk must prepare, sign, and

enter the judgment:

(1) after receiving the court’s opinion—but if

settlement of the judgment’s form is

required, after final settlement; or

(2) if a judgment is rendered without an

opinion, as the court instructs.

(b) Notice. On the date when judgment is entered,

the clerk must serve on all parties a copy of the

opinion—or the judgment, if no opinion was

written—and a notice of the date when the

judgment was entered.

Federal Circuit Rule 36 (“CAFC Rule 36”)

Entry of Judgment

(a) Judgment of Affirmance Without Opinion

The court may enter a judgment of affirmance

without opinion, citing this rule, when it

determines that any of the following conditions

exist and an opinion would have no precedential

value:

(1) the judgment, decision, or order of the trial

court appealed from is based on findings

that are not clearly erroneous;

(2) the evidence supporting the jury’s verdict is

sufficient;

(3) the record supports summary judgment,

directed verdict, or judgment on the

pleadings;

(4) the decision of an administrative agency

warrants affirmance under the standard of

review in the statute authorizing the

petition for review;

(5) a judgment or decision has been entered

without an error of law.

REASONS FOR GRANTING THE WRIT

The Federal Circuit’s Rule 36 practice has gotten

out of hand, contravening the principles set forth by

the Founders of the Constitution, and basic tenets of

justice.

After Bobcar’s business was ruined, it sought

redress at the Federal Circuit for multiple

constitutional violations. For example, the district

court dismissed Bobcar’s trade dress claims under a

theory first brought up in the dismissal order itself –

a defense theory that the defendant never raised.

The court never gave Bobcar prior notice of the theory,

or an opportunity to respond, before dismissing. That

violated Rule 56(f) and Due Process.

Aggrieved, Bobcar appealed. The Second Circuit

has held that such dismissals are “almost always

reversible error” (infra, Section VIII.A). However,

Bobcar had to go to the Federal Circuit because its

case includes patent claims. On appeal, Bobcar

delineated explicit violations of Due Process and its

Seventh Amendment rights.

It also pointed to

intervening law of the Federal Circuit and this Court

contradicting the lower court’s approach on various

issues.

The Federal Circuit disposed of all the violations

using a one-word affirmance. It is impossible to

surmise the justification for that disposition.

To be sure, whether Bobcar was right or wrong is

beside the point. The larger issue is the deep flaw in

the system itself. That goes beyond any one litigant –

and affects all of them.

Unlike this Court, litigants have a statutory right

of appeal to the Federal Circuit, and, in most

instances, it is the court of last resort. Billion dollar

technologies and industries often hang on its

guidance. But, all too often, it says nothing.

Worse yet, it proved here that grievances about

anything, including serious constitutional violations,

can be injudiciously waved away without explanation.

Why? “Because we said so.” That renders all

constitutional guarantees worthless.

The Federal Circuit’s practice conflicts with nine

other circuits. It conflicts with the framework set

forth by the Founders. It conflicts with the rule of

law, and the common law system. It conflicts with

principles of right and justice, including reason,

truth, transparency, accountability, and uniformity –

principles so universal that foreign law systems have

rejected this type of practice. It violates principles of

Equal Protection and Due Process. It eviscerates the

very statutory right established by Congress to

petition to this Court, because silent dispositions

leave nothing to review.

Nor can the Executive Branch be expected to

challenge the status quo. With a single word, the

CAFC rubber stamps 60% of the Patent Office’s IPR

determinations (infra, fn.17).

The Federal Circuit’s boundless habit of invoking

Rule 36 has profoundly eroded public faith in the

judicial system, and violated constitutional and

judicial norms. As a result, exercise of this Court’s

supervisory authority is urgently necessary.

STATEMENT OF THE CASE

Bobcar Media LLC, the brainchild of two

entrepreneurs from Brooklyn, was founded to

popularize their new “Bobcar” vehicle. The Bobcar is

a “mobile showroom” which interactively engages

customers on the street, promoting products with an

immediacy that passing advertisements do not have.

Over ten patents have been issued to the Bobcar’s

design; and the company won an industry award for

its innovative work.

A. The District Court Proceedings

Aardvark’s “Aardy” vehicles came to Bobcar’s

attention in 2015 when they were used to lure away

Bobcar’s largest customers. T-Mobile, for example,

switched to the Aardy after noting its similarity to

Bobcars that T-Mobile previously used. (Appx. 55a,

¶¶123-125). As a result, Bobcar filed an action in

New York for infringement of three of its utility

patents, three design patents, and its trade dress.

In discovery, Aardvark was bereft of any R&D

evidence. The Aardy plans “coincidentally” appeared

out of thin air mere months after the Bobcar’s

successful debut. Ultimately, the Aardys ruined

Bobcar’s whole business, forcing layoffs and

ownsizing.

After discovery, the district court excluded Bobcar’s

trademark expert (who had a 20 page resume in the

relevant fields), and dismissed the trade dress claims,

finding no secondary meaning (Appx.34a-41a). It also

granted Aardvark’s motion to dismiss Bobcar’s patent

claims for lack of standing under Rule 12(b)(1)

(Appx.17a-20a), on grounds of lack of ownership of

the patents (patents that the inventors and company

all testified were owned by Bobcar).

B. The Federal Circuit Proceedings

Bobcar appealed the rulings as violating its

constitutional rights, viz., Due Process, and the

Seventh Amendment.

As to Due Process, the lower court dismissed the

trade dress claims under a theory that Aardvark

never raised in years of litigation. The court raised

the defense theory sua sponte in the dismissal order

itself. In violation of Due Process and Rule 56,1 it did

See, Fed.R.Civ.P. 56(f)(2) (a court may grant summary

judgment “on grounds not raised by a party” but only “[a]fter

giving notice and a reasonable time to respond”); ING Bank N.V.

v. M/V Temara, 892 F.3d 511, 523-24 (2d Cir. 2018).

not give Bobcar prior notice of the theory, or

opportunity to respond, before it dismissed.

As to the Seventh Amendment, Bobcar had the

right to a jury trial. Secondary meaning is a factual

question. Cartier, Inc. v. Sardell Jewelry, Inc., 294 F.

App’x 615, 618 (2d Cir. 2008) (summary order).2

Bobcar had extensive evidence, in dozens of exhibits,

on five of six factors3 (Appx.48a-54a, 56a-58a). By

law, “no ‘single factor is determinative,’ and every

element need not be proved.” Thompson Med. Co. v.

Pfizer Inc., 753 F.2d 208, 217 (2d Cir. 1985). Also, all

inferences should have been drawn in Bobcar’s favor.

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255

(1986). Instead, the judge invaded the province of the

jury and dismissed.

Bobcar also challenged the dismissal entered

January 14, 2019 (Appx.17a-20a) under 12(b)(1) for

lack of standing. Later superseding Federal Circuit

cases in 2019 and 2020 acknowledged that such

12(b)(1) dismissals are inappropriate, as per this

Court’s Lexmark decision. Infra, Section VIII.C.

Within 24 hours of oral argument, the CAFC issued

a one-word affirmance. Faced with evidence that

constitutional rights had been violated, and with

intervening decisions contrary to the lower court’s

approach, the CAFC summarily affirmed without

explaining why.

Second Circuit law governed since the claim did not

arise under patent law. Panduit Corp. v. All States Plastic Mfg.

Co., 744 F.2d 1564, 1575 (Fed. Cir. 1984) (for non-patent issues

“[w]e … adjudicate … in accordance with the applicable regional

circuit law … Where the regional circuit court has spoken on the

subject, we must apply the law as stated”).

Infra, Section VIII.B, fn.21.

ARGUMENT

RULE 36 PRACTICE IS CONTRARY TO

CONSTITUTIONAL PRINCIPLES

A. It is Contrary to the Framework of the

Founders

The founders intended that the legitimacy of the

judicial branch would be founded upon its adherence

to principles of reason; not on the raw power

characterizing the excesses of British rule. As they

explained, “[t]he judiciary … may truly be said to

have neither FORCE nor WILL, but merely

judgment.” Federalist 78.

Rule 36 eliminates that distinction. It authorizes

the issuance of reason-free orders by fiat. The

decision is “because we say so.”

This is the ultimate example of Force and Will but

no Judgment. It turns the Constitutional framework

on its head.

Under the Constitutional vision, “[t]he courts must

declare the sense of the law; and if they should be

disposed to exercise WILL instead of JUDGMENT,

the consequence would equally be the substitution of

their pleasure to that of the legislative body.”

Federalist 78. But under Rule 36, there is no need to

declare the sense of the law.

Constitutionally, appellate action was meant to

inhere in an explication of the law applying to

particular facts. “[W]hen a writ of error is brought

from an inferior to a superior court of law in this

State … the latter … cannot institute a new inquiry

concerning the fact, but it takes cognizance of it as it

appears upon the record, and pronounces the law

arising upon it.” Federalist 81 (emphasis added).

“This word is composed of JUS and DICTIO, juris

dictio or a speaking and pronouncing of the law.” Id.

fn.3. That was to be the fundamental role of the

appeals courts, i.e., to issue reasoned judgments, a

“speaking and pronouncing of the law.” Id. Rule 36

eradicates that role.

The role, however, is essential to a free society. “To

avoid an arbitrary discretion in the courts, it is

indispensable that they should be bound down by

strict rules and precedents, which serve to define and

point out their duty in every particular case that

comes before them.” Federalist 78. That constitutionally

indispensable condition is meaningless if courts can

rule without explanation. A court that does not have

to explain the basis for its decisions is not truly

bound by rules or precedents: it has no barrier to “an

arbitrary discretion.” Rule 36 permits a law of

judges, in place of a guarantee of judges of law.

B. The Constitution Was Meant to Protect

Against Decisions in Secrecy

This concern was the basis for the constitutional

system in the first place – its raison d’être was to

escape from the whims of the monarchy. “Before they

declared their independence in the colonies … star

chamber proceedings were of common occurrence,

and it was to abolish and forbid secret or star

chamber trials that called forth the provisions of the

federal and state Constitutions requiring public

trials.” Keddington v. State, 19 Ariz. 457, 459 (1918).

“The court of star chamber was an efficient,

somewhat arbitrary arm of royal power. … Star

chamber stood for swiftness and power; it was not a

competitor of the common law so much as a limitation

on it.” Faretta v. California, 422 U.S. 806, 821 fn.17

(1975) (internal citation omitted). Unfortunately, the

same goes for Rule 36: “it is not a competitor of the

common law,” but supplants its past and future. See,

infra, Section II.B.

From this early history arose “this nation’s historic

distrust of secret proceedings.” In re Oliver, 333 U.S.

257, 273 (1948). “Arbitrary and secret deprivation of

life, liberty, and property were no longer to be

tolerated. The rule of open administration of justice

was thereafter to be followed.” Keddington, 19 Ariz.

at 459. As a result of these concerns, the need for

written explanation has been upheld in multiple

contexts.

This Court, for example, has criticized unexplained

agency action. “There are no findings and no analysis

here to justify the choice made, no indication of the

basis on which the Commission exercised its expert

discretion. We are not prepared to and the

Administrative Procedure Act will not permit us to

accept such adjudicatory practice.” Burlington Truck

Lines v. United States, 371 U.S. 156, 167-68 (1962).

Though Article III appeals courts are not agencies,

the same reasoning applies. Without a requirement

for written reasoned explanations, they “can become

a monster which rules with no practical limits on its

discretion.” Id. See also, Amerijet Int’l Inc. v. Pistole,

753 F.3d 1343, 1350 (D.C. Cir. 2014) (failure to set

forth reasons “constitutes arbitrary and capricious

agency action.”); McHenry v. Bond, 668 F.2d 1185,

1192 (11th Cir. 1982) (“The fundamental principle of

reasoned explanation … serves at least three

interrelated purposes: enabling the court to give

proper review to the administrative determination;

helping to keep the administrative agency within

proper authority and discretion, as well as helping to

avoid and prevent arbitrary, discriminatory, and

irrational action by the agency; and informing the

aggrieved person of the grounds of the administrative

action so that he can plan his course of action

including the seeking of judicial review.”).

II.

IT UNDERMINES THE INTEGRITY OF

THE JUDICIAL SYSTEM

A. It is Inconsistent with the Rule of Law

The rule of law requires an adherence by judges to

collective principle, rather than personal policy. As a

judge of the Arizona Supreme Court put it, “Personal

policy preferences must yield to the rule of law or we

have no rule of law.” See, Clint Bolick, The Case for

Legal Textualism, https://www.hoover.org/research/

case-legal-textualism.

Without written decisions, no yielding is necessary.

As Judge Dickstein explained, “[i]magine how

terrifying our system of justice would be if judges

made decisions without explanation. We wouldn’t

stand for such a system because we want to know

that decisions are fairly reached.”4

As noted, such a system is also contrary to the

Constitutional intent. Supra, Section I.A (“[t]o avoid

an arbitrary discretion in the courts it is

indispensable” to bind judges “to strict rules and

precedents”). “The mere necessity of uniformity in

the interpretation of the national laws, decides the

question.” Federalist 80.

If circuits can indulge in rules that eliminate the

obligation to interpret the national laws uniformly,

the promise of the Constitution is vitiated. If they

Mel Dickstein “Why judges write opinions,” MinnPost

(Oct. 7, 2014), https://www.minnpost.com/community-voices/

2014/10/why-judges-write-opinions

can eliminate the obligation to justify their decisions,

the promise of a just and fair system is empty.

The line between the rule of law and law without

rules is effectively erased.

B. It is Inconsistent with the Common

Law System

As Justice Scalia has stated, the common law

system is one which grows through fact-specific

pronouncements. Antonin Scalia, The Rule of Law as

a Law of Rules, 56 U. Chi. L. Rev. 1175, 1177 (1989).

The law, however, cannot grow from single word

rulings – rulings lacking even the ambiguity of

Delphic pronouncements.

“Opinions are what courts do … . They are the

substance of judicial action … . Written opinions are

key to the operation of our system of stare decisis,

and without them, the state of the law would be in

confusion.” Andrew Hoffman, The Federal Circuit’s

Summary Affirmance Habit, 2018 B.Y.U.L. Rev. 419,

432 (internal citations and quotations omitted).

Decisions that are opinion-free render the common

law system a dead letter in a wide swath of cases:

there is no assurance of fidelity to the past, and no

foundation for consistency in the future.

Moreover, the notion that a case does not warrant a

written decision does a great disservice. Litigants,

commentators, and the public are often left

scratching their heads as to why seemingly sound

arguments were rejected. As a Federal Circuit judge

once stated, “I write separately because I am of the

view that a petitioner to this court seeking reversal of

a decision is entitled to an explanation of why the

arguments on which he relied for his appeal did not

prevail.” In re Packard, 751 F.3d 1307, 1314 (CAFC

2014) (Plager, J., concurring.).

Furthermore, the true importance of a decision

often remains to be seen. As Judge Holloway stated,

“when we make our ad hoc determination that a

ruling is not significant enough for publication, we

are not in as informed a position as we might believe.

Future developments may well reveal that the ruling

is significant indeed.” In re Rules of United States

Court of Appeals etc., 955 F.2d 36, 38 (10th Cir. 1986)

(Holloway, J., dissenting). Likewise, Justice Stevens

maintained that this practice “rests on a false

premise” which “assumes that an author is a reliable

judge of the quality and importance of his own work

product.”5

As this Court’s jurisprudence has shown, even

footnotes have had occasion to later take center stage.

Carolene Products’ footnote 4 is a prime example.

United States v. Carolene Products Co., 304 U.S. 144,

152 fn.4 (1938). As Professor Brilmayer noted, it is

“so venerable as to have achieved almost axiomatic

status in a world where virtually every other

proposition of constitutional law is best considered

controversial. It is, in Justice Powell’s words, ‘the

most celebrated footnote in constitutional law.’” Lea

Brilmayer, Carolene, Conflicts, and the Fate of the

Inside-Outsider, 134 Univ. Pa. L.R. 1291 (1986)

(citation omitted). In contrast, there is no telling how

Martha J. Dragich, Will the Federal Courts of Appeals

Perish if They Publish? Or Does the Declining Use of Opinions

to Explain and Justify Judicial Decisions Pose a Greater

Threat?, 44 Am. U.L. Review 757, 790 fn.204 (1995), quoting

John P. Stevens, Address to the Illinois State Bar Association’s

Centennial Dinner, 65 Ill. B.J. 508 (1977).

many impactful judicial statements have been lost

because a case was silently decided under Rule 36.

The central function of the courts of appeal to

render justice, not just dispose of cases. As Justice

Cardozo explained, there is a long appellate tradition

of explaining decisions – of not just “declaring justice

between man and man, but of settling the law.”6 Rule

36 runs squarely counter to that tradition.

III.

THE CAFC’S RULE 36 PRACTICE

CONFLICTS WITH NINE CIRCUITS

A. The

Majority

Explanations

Circuits

Issue

The legitimacy of one-word affirmances is also the

subject of a significant circuit split.

Nine circuits provide an explanation when

rendering a decision; namely, the First, Second,

Third, Fourth, Sixth, Seventh, Ninth, Eleventh, and

D.C. Circuits.

They do under internal rule or

established practice.7

Benjamin N. Cardozo, Jurisdiction of the Court of

Appeals (2d ed. 1909) § 6, quoted in Dennis Crouch, Wrongly

Affirmed Without Opinion, Wake Forest L. Rev. 52 (2017),

University of Missouri School of Law Legal Studies Research

Paper No. 2017-02.

1st Cir. R. 36(a) provides for an opinion or summary

explanation. 2nd Cir. Internal Operating Procedure 32.1.1,

permits summary orders, which contain explanations. The

Third Circuit allows affirmance by reference to the lower

decision (3rd Cir. I.O.P. 6.3.2); but, in practice, has not issued a

one-word affirmance in almost thirty years. See, Birth v. United

States, 958 F.2d 362 (3d Cir. 1992). 4th Cir. R. 36.3 requires

reasoning in any summary opinion. The Sixth Circuit has no

rule authorizing a one-word written affirmance. The Seventh

Circuit also does not have a rule; and, in practice, explains the

In contrast, the Federal Circuit joins a minority of

circuits which use one-word affirmances, namely, the

Fifth, Eighth, and Tenth Circuits.8

B. The Circuits’ Rules are Subject to the

Review of This Court

Of course, each circuit may “make and amend rules

governing its practice.” Fed. R. App. P. 47(a)(1).

However, the “discretion in promulgating local rules

is not … without limits. This Court may exercise its

inherent supervisory power to ensure that these local

rules are consistent with the principles of right and

justice.” Frazier v. Heebe, 482 U.S. 641, 645 (1987)

panel’s rationale at least briefly. See e.g., Thomas v. WGN

News, 637 F. App’x 222, 223 (7th Cir. 2016). In the Ninth

Circuit, the shortest judgment is a memorandum disposition,

which is “a concise explanation of the Court’s decision” that

recites “such information crucial to the result.” 9th Cir. General

Order. 4.3.a.

The Eleventh Circuit previously permitted

affirmances without opinion (see, 11th Cir. R. 36-1, prior to Aug.

1, 2006), but rescinded that rule in 2006. D.C. Circuit R.36(d)

provides for an abbreviated disposition “containing a notation of

precedents or accompanied by a brief memorandum” and that a

“statement explaining the basis for this court’s action” “will be

retained as part of the case file … and be publicly available

there on the same basis as any published opinion” (id., 36(e)).

See, Fed. Cir. R. 36(a) (providing five conditions under

which “[t]he Court may enter a judgment of affirmance without

opinion”); with no explanation other than citing its own rule; 5th

Cir. R. 47.6 (mirroring the Federal Circuit rule); Eight Circuit R.

47B (allowing one-word affirmances under four conditions); and

Tenth Circuit R. 36 (“The court may dispose of an appeal or

petition without written opinion.”). As to the latter, the Tenth

Circuit guidebook previously indicated that “[t]he court … may

… use a terse judgment such as the one word ‘affirmed.’”). Office

of the Clerk, Practitioner’s Guide to the U.S. Court of Appeals

for the Tenth Circuit, Section IX.A (2018). However, since 2019,

the sentence has curiously been changed to instead say that it

“may … issue a shorter decision.” Id. (2021).

(citations and quotations omitted).9 The use of CAFC

Rule 36 is inconsistent with such principles.

IV.

IT IS CONTRARY TO “PRINCIPLES OF

RIGHT AND JUSTICE”

A. Reason and Truth

For example, two core principles are that justice

must be founded on reason and truth. It should be

rooted on thoughtful, logical analyses; on sound

principles and true facts. Written decisions nurture

these values. Rule 36 does not.

As Judge Wald of the D.C. Circuit put it, “My own

guiding principle is that virtually every appellate

decision requires some statement of reasons. The

discipline of writing even a few sentences or

paragraphs explaining the basis for the judgment

insures a level of thought and scrutiny by the court

that a bare signal of affirmance, dismissal, or

reversal does not.” Patricia M. Wald, The Problem

with the Courts: Black-Robed Bureaucracy or

Collegiality Under Challenge?, 42 Md. L. Rev. 766,

782 (1983).

Likewise, Justice Stevens referred to the “decision

not to publish the opinion or to permit it to be cited”

as akin to “a body of secret law” constituting

“decisionmaking

without

the

discipline

and

accountability that the preparation of opinions

requires.” Cty. of Los Angeles v. Kling, 474 U.S. 936,

940 (1985) (Stevens, J., dissenting).

A written

reasoned opinion fosters the truth-finding process far

more than a cursory one-word decision.

See also, 28 U.S.C. §2072 (“[t]he Supreme Court shall

have the power to prescribe general rules of practice and

procedure … for cases in the … courts of appeals”).

Moreover, only a written ruling allows one to prove

when the grounds for decision are wrong. “Certain

principles have remained relatively immutable in our

jurisprudence. One of these is that … the Government’s

case must be disclosed to the individual so that he has

an opportunity to show that it is untrue.” Greene v.

McElroy, 360 U.S. 474, 496 (1959). No judicial value is

more fundamental than the ability to prove that

something is false. By removing the government’s

obligation to disclose the basis for its decision, Rule 36

removes the opportunity to show its basis is untrue.

A good decision is like a mathematical proof,

setting forth its premises, axioms, and reasoning,

taking the reader from beginning to conclusion. “It’s

worth recalling the story of the very famous

mathematician G.H. Hardy, who in a lecture said

about some detail in a proof: “This is obvious.” After

a pause, he went on: “Hmm, is it really obvious?”

After another pause he left the room to consider the

point, returning 20 minutes later with the verdict:

“Yes, I was right, it is obvious.”10

Similarly, in Princeton’s Fine Hall, “someone once

posted a ‘Scale of Obviousness’:

If Wedderburn says it’s obvious, everybody

in the room has seen it ten minutes ago.

If Bohnenblust says it’s obvious, it’s obvious.

If Bochner says it’s obvious, you can figure it

out in half an hour.

If von Neumann says it’s obvious, you can

prove it in three months if you’re a genius.

Topologia z czuba, http://prac.im.pwr.wroc.pl/~kwasnicki/

pl/teaching/archive/z_czuba_topologia_2007_I.html, quoting Jonathan

(“J.R.”) Partington.

If Lefschetz says it’s obvious, it’s wrong.11

These anecdotes hold more than a grain of truth. It

is impossible to warrant the reliability of a decision

when the underlying premises, axioms, facts, and

reasoning are all invisible. In nearly all federal

cases, the courts of appeals are the last stop. Justice

is too important to leave everyone in the dark

whether the final decision was reached via the

reasoning of a Wedderburn or a Lefschetz.

B. Transparency

Another core principle is transparency.

Our

Constitution meant to avoid secrecy, not to embrace

it. Supra, Section I.B. As Judge Stein put it, we

have a “powerful idea that there is a strong

presumption of openness to our judicial proceedings.

… To the extent that we allow the exceptions to

become bigger and bigger, then we start to look like

the Star Chamber, or lettres de cachet or similar

items that really should not find their way into our

system of justice.” Secrecy and the Courts: The

Judges’ Perspective, 9 J.L. & Pol’y 169, 191 (2000).

Indeed, secret proceedings “symbolized a menace to

liberty.” Oliver, 333 U.S. at 269.

Though commonly expressed in the context of

secret trials, the principle cannot be cabined so

narrowly.

Publishing the underlying basis for

judicial decision-making is equally, if not more,

important – it is an essential check in the democratic

system.

As Justice Black explained, quoting

Bentham: “Without publicity, all other checks are

insufficient: in comparison of publicity, all other

https://richbeveridge.wordpress.com/category/math-history

quoting, Martin Gardner, A Gardner’s Workout (A K Peters/CRC

Press, July 18, 2001).

checks are of small account. Recordation, appeal,

whatever other institutions might present themselves

in the character of checks, would be found to operate

rather as cloaks than checks; as cloaks in reality, as

checks only in appearance.” Id. at 271.

Rule 36 one-word decisions are a check “only in

appearance”; and “a cloak in reality.”

C. Accountability

Another

core

principle

accountability.

“Professor Llewellyn wrote that judges and the

decision-making process are kept in check by …

‘steadying factors.’ A key ‘steadying factor’ is the

requirement that an appellate judge write an opinion

explaining the outcome … The writing process

imposes a profound constraint on judicial discretion.”

Shirley S. Abrahamson, Judging In The Quiet Of The

Storm, 24 St. Mary’s L. J. 965, 987 (1993). “The act

of stating reasons that can be judged and evaluated,

combined with the doctrine of stare decisis, can

control judicial arbitrariness.” Id at 987-988.

In a democracy, judges must be accountable to the

law, to the public, and to each other. Written

decisions foster a conscious or unconscious constraint

on the whims and caprices of the decision-maker.

One-word decisions do not.

D. Uniformity

Another core principle is uniformity. Like cases

must be treated alike. “Publishing opinions is a key

function of appellate courts inasmuch [as] the federal

courts of appeals are ‘needed to announce, clarify,

and harmonize the rules of decision employed by the

legal system in which they serve.’ This function is

particularly important in an age in which the

Supreme Court hears a mere fraction of appellate

court cases.”12 Without written decisions, there is no

basis for uniformity.

“If there are such things as political axioms, the

propriety of the judicial power of a government being

coextensive with its legislative, may be ranked among

the number. The mere necessity of uniformity in the

interpretation of the national laws, decides the

question.” Federalist 80 (emphasis added). One-word

decisions contravene the constitutional goal of

uniformity, rather than promoting it.

E. Foreign Law Is Also Instructive

It is no surprise that these principles are reflected

in the Constitution. Given their universal nature, it

is also no surprise that foreign courts have rejected

unexplained dispositions as repugnant to justice.

The Supreme Court of India, for example, has held

that “[t]he practice of recording a decision without

reasons in support cannot but be severely

deprecated.” Commissioner Of Income-Tax v. M/S.

Walchand & Co. (Pvt.) Ltd., 1967 AIR 1435, 1967

SCR (3) 214 (17 March 1967).

The English courts have likewise held that “justice

will not be done if it is not apparent to the parties

why one has won and the other has lost.”

Articlesonlaw.in/writing-reasoned-orders, citing English

vs. Emery Reimbold and Strick Limited (2002) 1 WLR

2409. Similarly, “The House of Lords in Cullen vs.

Chief Constable of the Royal Ulster Constabulary,

(2003) 1 WLR 1763 … on the requirement of reason

held, ‘First, they impose a discipline … which may

contribute to such decisions being considered with

care. Secondly, reasons encourage transparency …

Hoffman, 2018 B.Y.U.L. Rev. at 432 (citation omitted).

Thirdly, they assist the Courts in performing their

supervisory function if judicial review proceedings

are launched.’” Id., citing para 7, page 1769.

In fact, “[s]ince the requirement to record reasons

emanates from the broad doctrine of fairness in

decision making, [it] … is now virtually a component

of human rights and was considered part of

Strasbourg Jurisprudence.” Id. (citing Ruiz Torija v

Spain (1995) 19 EHRR 553, at 562 para. 29, and

Anya vs. University of Oxford, 2001 EWCA Civ 405,

“wherein the Court referred to Article 6 of European

Convention of Human Rights which requires,

‘adequate and intelligent reasons must be given for

judicial decisions’”).

The United States should be a judicial vanguard in

protecting these principles, as the Constitution

intended. But Rule 36 makes it seem that the U.S. is

struggling to catch up in the rear.

RULE 36 PRECLUDES

APPELLATE REVIEW

MEANINGFUL

A. It Eviscerates the Statutory Right to

Petition for Certiorari

While each circuit may “make and amend rules

governing its practice” (Fed. R. App. P. 47(a)(1)), such

rules “must be consistent with … Acts of Congress”

(id.). Congress, in turn, intended that the final

judgments of the courts of appeal are to be subject to

review on a writ of certiorari. 28 U.S.C. §2350(a).

The promise of §2350(a), however, is illusory when

a circuit panel withholds its reasoning, effectively

circumventing review. Indeed, some commentators

have suggested that the Federal Circuit and other

courts use Rule 36 on occasion for precisely this

purpose – to “cert-proof” some decisions.13

Ironically, the courts of appeal have themselves

long viewed lower court decisions without

explanation as being an abuse of discretion. See e.g.,

In re Lloyd’s Register N. Am., Inc., 780 F.3d 283, 290

(5th Cir. 2015) (“It is an abuse of discretion for a

district court to grant or deny a motion to dismiss

without written or oral explanation”); Rose v.

Hartford Underwriters Ins. Co., 203 F.3d 417, 419

(6th Cir. 2000) (“the district court’s denial of the

motion to amend without explanation qualifies as an

abuse of discretion”). Justice at the courts of appeal

should not be subject to a laxer standard than at the

district court.

The Federal Circuit has itself complained for years

when the proverbial shoe was on the other foot.14

Likewise, in several recent cases it granted the

extraordinary writ of mandamus, and ordered a stay

until the district court issues a ruling providing a

Hoffman, 2018 B.Y.U.L. Rev. at 442 fns.148-150 (2018)

(collecting cites).

See e.g., Oakley, Inc. v. Int’l Tropic-Cal Inc., 923 F.2d

167, 168 (Fed. Cir. 1991) (“the court’s findings … are so limited

and conclusory that meaningful appellate review is not

possible”); Whitserve, LLC v. Comput. Packages, Inc., 694 F.3d

10, 36 (Fed. Cir. 2012) (“a trial court’s failure to explain the

basis for its ongoing royalty rate precludes this court from

reviewing the decision for an abuse of discretion”); Ultratec Inc.

v. CaptionCall, LLC, 872 F.3d 1267, 1274 (Fed. Cir. 2017) (“the

Board’s procedures impede meaningful appellate review … For

judicial review to be meaningfully achieved … the agency …

must present a full and reasoned explanation of its decision …

The agency does not have unfettered discretion … and we

cannot affirm … where the agency fails to provide a reasoned

basis for its decision”).

basis for its decision capable of meaningful appellate

review. In re SK Hynix, Inc., 835 Fed. Appx. 600, 601

(Fed. Cir. 2021); In re Tracfone Wireless, Inc., 2021

U.S. App. LEXIS 6689, *5 (Fed. Cir. 2021). Faced

with a judge dragging his feet on transferring cases

out of his court, six Federal Circuit judges viewed his

failure to issue an explanation as an abuse of

discretion. See e.g., SK Hynix, 835 Fed. Appx. at 600601.

Moreover, the Federal Circuit contradicts its origin

story. When it was created, it required opinions in all

cases. See, Fed. Cir. R. 18 (1982) (“Disposition of

appeals shall be with a published opinion or an

unpublished opinion”). Chief Judge Markey promised

that the court would always issue its reasoning. “It is

tradition. It is a requirement of the courts of this

land, thank G-d. We do not issue fiats. We do not

just render a one-worded decision and go away. We

explain our decisions. It is one of the great keys of

the American judicial system.”15

B. It Nullifies this Court’s Constitutional

and Supervisory Authority

The Constitution provides that “the judicial power

of the United States shall be vested in one Supreme

Court, and in such inferior courts as the Congress

may from time to time ordain and establish.”

Constitution, Article III, Section I. As the Supreme

Court of the land, this Court was invested with final

authority over all matters brought within the inferior

courts.

Proceedings of the First Annual Jud. Conf. of the U.S.

Ct. of App. For the Fed. Cir., 100 F.R.D. 499, 511 (1983)

(Markey, C.J.).

Similarly, as to rules of procedure, “[t]he law in

this area is clear.

This Court has supervisory

authority over the federal courts.” Dickerson v.

United States, 530 U.S. 428, 437 (2000).

That

authority was first asserted in McNabb. See, Amy

Coney Barrett, The Supervisory Authority of the

Supreme Court, 106 Colum. L. Rev. 324, 328 fn.9

(2006), citing McNabb v. United States, 318 U.S. 332

(1943).

The Court’s rules likewise provide that it has the

prerogative to assess whether a “court of appeals …

has so far departed from the accepted and usual

course of judicial proceedings, or sanctioned such a

departure by a lower court, as to call for an exercise

of this Court’s supervisory power.” S.Ct.R.10(a).

The CAFC, however, has used CAFC Rule 36 to

nullify this constitutional and supervisory authority.

In a large proportion of cases,16 its panels appropriate

the final say. This Court cannot review unwritten

decisions. For all these cases, the CAFC sets itself up

as “supreme,” contrary to the Constitution.

VI.

IT UNDERMINES BASIC CONSTITUTIONAL

RIGHTS

A. It Violates Equal Protection and Due

Process

“When an appeal is afforded … it cannot be granted

to some litigants and capriciously or arbitrarily

denied to others without violating the Equal

Protection Clause.” Lindsey v. Normet, 405 U.S. 56,

77 (1972). Rule 36, however, allows a panel to decide

which litigants will have further rights of appeal, and

which will not. There is nothing stopping them from

Infra, fn.17.

arbitrarily or capriciously denying some litigants the

further review afforded to others.

As such, Rule 36 has created a tale of two litigants.

There are now two disparate classes. The first is

granted reasoned justification for its appellate

decisions, which are then subject to petitions for

rehearing, en banc review, and petitions for

certiorari. The litigants, public, and courts can

review those decisions for potential error. The second

is granted silence, precluding further review.

This is a serious flaw in the rules, allowing

discrimination between those who have further

access to justice and those who do not. Yet, “at all

stages of the proceedings the Due Process and Equal

Protection Clauses protect persons like petitioners

from invidious discriminations.” Griffin v. Illinois,

351 U.S. 12, 18 (1956).

As this Court aptly explained, “[i]t is essential that

the judge provide a reasonably specific explanation …

Unless such an explanation is given, adequate

appellate review is not feasible, and without such

review, widely disparate awards may be made, and

awards may be influenced (or at least, may appear to

be influenced) by a judge’s subjective opinion

regarding particular attorneys or the importance of

the case.” Perdue v. Kenny A., 559 U.S. 542, 558-59

(2010). Without a reasoned decision, there is no

Equal Protection.

Equal Protection is also a concern because the

Federal Circuit has exclusive jurisdiction of an entire

appeal when it involves any patent law. A party with

patent and non-patent claims, residing in a majority

circuit which issues its reasoning, loses its “home

court” right to a reasoned decision when forced to

appeal to the CAFC. That very scenario occurred

here. Infra, Section VIII.D.

Laying open the grounds for decision-making is

also essential to preserve Due Process. As one judge

noted in the criminal context, the “right to see and

comment on the evidence … is essential … if we are

to honor our due process commitment to truth

seeking in the administration of the law. … Such

adversary comment provides a crucial check on

official findings and conclusions which will be relied

upon by the decision maker, but which cannot be

assumed to be infallibly valid.” United States v.

Dockery, 447 F.2d 1178, 1191 (D.C. Cir. 1971)

(Wright, J., dissenting). When a panel keeps its

decision-making to itself, it improperly attains

infallibility.

B. Reasoned Decisions are Needed to

Protect Fundamental Rights

The necessity of explicating a court’s reasoning is

similarly critical to protect all fundamental rights.

Without reasoned decisions justifying the particulars

of judicial action (or inaction), the protections

guaranteed by the Bill of Rights are of no moment.

Here, for example, numerous constitutional

violations were implicated. Infra, Section VIII. How

the Federal Circuit could affirm in the face of those

violations is anyone’s guess, because its one-word

affirmance shrouded its decision in mystery.

VII.

RULE 36 HAS UNDERMINED PUBLIC

FAITH IN THE JUDICIAL SYSTEM

A. It Provides a Semblance of Injustice

Which Tarnishes the Courts

It is a long-cherished tradition that the courts must

not just avoid impropriety – they must also avoid the

appearance of impropriety. Justice Blackmun said it

well. “Important in this regard … is the appearance

of justice. ‘Secret hearings – though they be

scrupulously fair in reality – are suspect by nature.

Public confidence cannot long be maintained where

important judicial decisions are made behind closed

doors and then announced in conclusive terms to the

public, with the record supporting the court’s decision

sealed from public view.’” Gannett Co. v. DePasquale,

443 U.S. 368, 429 (1979) (Blackmun J., dissenting),

quoting United States v. Cianfrani, 573 F.2d 835, 851

(CA3 1978).

As Judge Dickstein elucidated:

“What I think is so wonderful about our

system is that we come to a clear

understanding of the law when opinions are

well written and clearly expressed.

reader, following the arc of the decisions in

this case, knows how the ultimate decision

was made – what

arguments were

considered and accepted or rejected. It leads

to a respect for the law, whether or not you

agree with it. That’s how our law develops,

and one way we assure respect for the

process – it’s the reason we write legal

decisions; sometimes very long ones.”

Mel Dickstein, op. cit.

The ability to review the “arc” of a decision

preserves the integrity of the judicial system, and

fosters respect for the law. The inability to review it

does the opposite. The ability to scrutinize for

judicial

overreach,

personal

preferences,

misunderstandings of the record, is essential to trust

in the system.

All judges are human and can make errors. But

their esteem as stewards of justice is lost when their

decision-making is covered up. By hiding a decision’s

bases, Rule 36 creates an invidious perception, which

has fomented a public distrust of the judiciary.

B. It Has Engendered Widespread Public

Distrust

That distrust is copious when it comes to the

Federal Circuit. By its own admission, it employs

one-word affirmances in an astounding percentage of

decisions.17 It is no wonder that the frequent use of

CAFC Rule 36 has resulted in a profound loss of

confidence in the court. See e.g., Dennis Crouch,

Wrongly Affirmed Without Opinion, 52 Wake Forest

L. Rev. 561 (2017); Rebecca A. Lindhorst, Because I

Said So: The Federal Circuit, the PTAB, and the

Problem With Rule 36 Affirmances, 69 Case W. Res.

As CAFC Judge Wallach observed, 60% of all Inter

Partes Reviews (IPRs) by 2016 were affirmed under CAFC Rule

36. Evan J. Wallach et al., Federal Circuit Review of USPTO

Inter Partes Review Decisions, by the Numbers: How the AIA

Has Impacted the Caseload of the Federal Circuit, 98 J. Pat. &

Trademark Off. Soc’y 105, 113 (2016). Likewise, from 20082016, the rate of disposal of appeals from the district courts rose

from 21% to 43%. Jason Rantanen, Federal Circuit Now

Receiving More Appeals Arising from the PTO than the District

Courts, PatentlyO (Mar. 2, 2016), https://patentlyo.com/

patent/2016/06/circuit-appeals-decisions.html.

L. Rev. 247 (2018); Andrew Hoffman, The Federal

Circuit’s Summary Affirmance Habit, 2018 B.Y.U.L.

Rev. 419 (2018). See also, Martha J. Dragich, op. cit.

As some experienced commentators put it:

“The Supreme Court recognized that there

are some rare instances where the outcome

of the case is so clear a full opinion wouldn’t

be necessary. It seems doubtful, however,

that the Supreme Court envisioned Rule 36

decisions, which are all of one short

sentence, would be used in close to half of all

cases brought to a Circuit Court. But that is

precisely what is happening at the United

States Court of Appeals for the Federal

Circuit. America’s innovators feel as if they

are under siege, and by any honest objective

review that feeling is based on substantial

fact. … None of the so-called Regional

Circuits use Rule 36 as extensively as does

the Federal Circuit, particularly with respect

to novel and controversial issues.”

Peter Harter & Gene Quinn, Rule 36: Unprecedented

Abuse at the Federal Circuit, https://www.ip

watchdog.com/2017/01/12/rule-36-abuse-federal circuit/

id=6971.

Another reflected the prevalent frustration:

“Many in the patent bar feel that the taking

of a patent representing substantial

commercial success, millions in R&D, and

years of development, not to mention

millions in litigation costs, should never end

in a summary affirmance by the Federal

Circuit. They argue the Federal Circuit

should not be able to “punt” on a difficult

case with complex legal and factual issues.

In the end, no matter whether you are a

Patent Owner or Petitioner, after a long

fought legal battle and the millions spent on

litigation, the parties are owed more than a

single sentence.”

Jason D. Eisenberg, CAFC Rule 36 Judgement: 24

Hour Affirmance with No Explanation, National Law

Review, Volume VIII, No. 52 (Feb. 21, 2018).

This wisdom of the crowd reflects a long-simmering

dissatisfaction that nobody is immune from the

potential injustice that Rule 36 can mask. The

CAFC’s pervasive Rule 36 practice has served “to sap

the foundations of public and private confidence” in

the judiciary. Federalist 78. This can only be

corrected by this Court’s intervention.

VIII. THIS CASE IS AN EXCELLENT VEHICLE

TO ADDRESS THESE ISSUES

This case squarely presents the legal and policy

issues above, and arises out of an inequitable use of

CAFC Rule 36 which implicated issues of Due

Process, the Seventh Amendment, and Article III

standing. That the Federal Circuit could silently

gloss over constitutional and private property rights

illustrates the need for review.

A. Bobcar Received No Response to Its

Due Process Concerns

Bobcar suffered a Due Process violation wherein its

claim was dismissed under a sua sponte argument,

without prior notice, or a chance to respond. That

alone called for reversal.

“The Supreme Court has emphasized that prior

notice is a prerequisite to a sua sponte grant of

summary judgment.” ING Bank, 892 F.3d at 523-24

(2d Cir. 2018), citing Celotex Corp. v. Catrett, 477

U.S. 317, 326 (1986). “A district court’s failure to

provide adequate notice is almost always reversible

error.” Id. at 524 (emphasis added).

And yet, the Federal Circuit did not reverse. The

Second Circuit’s ING Bank decision was binding,18

but the CAFC jettisoned it.

Nor is this a minor matter. The district court

violated one of the most ancient principles of justice:

audi alteram partem, “listen to the other side.”19 It

created a theory of dismissal, and failed to let

Bobcar’s side be heard.

For example, it sua sponte stated that secondary

meaning must be assessed “before the infringement

began” (Appx.36a). It then assessed it for only one

infringement, even though there were thirteen

separate infringements.

But as this Court explained, events that occur after

a first claim “often give rise to new material operative

facts that in themselves, or taken in conjunction with

the antecedent facts, create a new claim to relief.”

Lucky Brand Dungarees, Inc. v. Marcel Fashions

Grp., Inc., 140 S.Ct. 1589 (2020) (cleaned up). “This

principle takes on particular force in the trademark

context, where the enforceability of a mark and

likelihood of confusion between marks often turns on

TechSearch L.L.C. v. Intel Corp., 286 F.3d 1360, 1377

(Fed. Cir. 2002) (regional circuit law applies to procedural issues

that are not issues of substantive patent law).

Rule 56(f) embodies this principle, but the rule and

principle were disregarded.

extrinsic facts that change over time.” Id. Indeed,

“liability for trademark infringement turns on

marketplace realities that can change dramatically

from year to year.” Id. (emphasis added). This

Court’s intervening approach dictated that each of

the 13 infringements should have been assessed on

its own as to whether secondary meaning existed at

the time of that new infringement.

Furthermore, the district court even got the date of

first infringement wrong – assessing it as of 2008

(Appx.38a). That was clearly erroneous since Bobcar

and Aardvark both agreed that the date of the first

accused infringement was in 2009. The court left out

a year of secondary meaning evidence.

That the district court created a new argument for

Aardvark was also unfair. “In our adversarial system

of adjudication, we follow the principle of party

presentation … in the first instance and on appeal …

we rely on the parties to frame the issues for decision

and assign to courts the role of neutral arbiter of

matters the parties present.” United States v.

Sineneng-Smith, 140 S.Ct. 1575, 1579 (2020)

(citations and quotations omitted). “[O]ur system is

designed around the premise that parties represented

by competent counsel know what is best for them,

and are responsible for advancing the facts and

argument entitling them to relief. … courts are

essentially passive instruments of government …

They do not, or should not, sally forth each day

looking for wrongs to right. They wait for cases to

come to them, and when cases arise, courts normally

decide only questions presented by the parties.” Id.

(cleaned up).

As such, Bobcar was also deprived of Due Process

by dismissal under a theory that Aardvark and its

expert – the former head of the Trademark Office –

never raised in years of litigation. Had Bobcar been

given notice, it could, at worst, have narrowed itself

to its strongest claims and most important

infringements, viz., the Aardys in 2015-2016 for

T-Mobile and Samsung.

It had eight years of

evidence at that point, rather than the single year the

court considered. Under the district court’s wrongful

process, Bobcar never had a chance.

Bobcar raised important issues of Due Process.

But the CAFC silently affirmed without explanation.

B. It Lost Its Seventh Amendment Rights

The lower court ruling also violated the Seventh

Amendment right to a jury trial. Under governing

precedent,20 whether the Bobcar had secondary

meaning was a heavily factual question, requiring

analysis of six factors. Cartier, 294 F. App’x at 618

(summary order).21 After Bobcar opposed dismissal

with dozens of factual exhibits (Appx.48a-54a, 56a58a), the district judge decided the question himself

(Appx.34a-41a). That ran counter to black-letter

constitutional law that “issues of law are to be

resolved by the court, and issues of fact are to be

determined by the jury under appropriate

instructions by the court.” Baltimore & Carolina

Line, Inc. v. Redman, 295 U.S. 654, 657 (1934). As

this Court stated, “neither we nor the Court of

Appeals can redetermine facts found by the jury any

Second Circuit precedent governed the trade dress issue.

Supra, fn.2.

The six factors are: “(1) advertising expenditures, (2)

consumer studies linking the mark to a source, (3) unsolicited

media coverage of the product, (4) sales success, (5) attempts to

plagiarize the mark, and (6) length and exclusivity of the mark’s

use.” Id.

more than the District Court can predetermine them.”

Atlantic & Gulf Stevedores, Inc. v. Ellerman Lines,

Ltd., 369 U.S. 355, 358-359 (1962) (emphasis added).

Bobcar’s extensive evidence encompassed five of six

factors. Relying on another district court case, the

court gave great weight to the absent factor, a survey,

calling it “most persuasive” (Appx.37a). But surveys

are not required under binding Second Circuit law.22

Likewise, their limited probative value has been

noted by at least two members of this Court.

U.S.P.T.O. et al., v. Booking.com B.V., 140 S.Ct. 2298,

2309 (2020) (Sotomayor, J., concurring) (“flaws in a

specific survey design, or weaknesses inherent in

consumer surveys generally, may limit the probative

value of surveys … I do not read the Court’s opinion

to suggest that surveys are the be-all and end-all”)

(emphasis added); id. at 2313 (Breyer, J., dissenting)

(criticizing the value of surveys). Even Aardvark’s

own expert, the former Assistant Commissioner of

Trademarks, admitted that surveys do little good.23

As another example, the court gave no weight to

advertising beyond dollars paid (Appx.36a-37a). It is

beyond peradventure that social media (e.g.,

Facebook, Twitter, etc.), can engender millions of

Thompson, 753 F.2d at 217; LeSportsac, Inc. v. K Mart

Corp., 754 F.2d 71, 78 (2d Cir. 1985) (sufficient evidence of

secondary meaning even without a survey).

Aardvark’s expert, Philip Hampton, headed the

Trademark Office from 1994-1998, and is now a trademark

litigator. He testified that he could not recall a single case in

which he ever used a survey.

(Appx.49a-50a, ¶¶78-80.)

“[T]hey’re expensive. And even though courts claim they want

them, they seem like they knock them out as much as they

accept them. And, you know, a quarter million dollars to have

your survey knocked out is not a way to ingratiate yourself with

your client.” Id.

views. But the court gave that impact no weight as to

brand awareness (secondary meaning), because the

posts are free. That was completely disassociated

from marketplace realities. Compare, Booking.com v.

Matal, 278 F. Supp. 3d 891, 922 (E.D. Va. 2017)

(social media following is indicative of the number of

consumers who are familiar with a brand), aff’d, 915

F.3d 171 (2019), aff’d, 140 S. Ct. 2298 (2020); Classic

Liquor Imps., Ltd. v. Spirits Int’l B.V., 201 F. Supp.

3d 428, 446 (S.D.N.Y. 2016) (social media a factor in

finding disputed facts as to secondary meaning,

calling for a trial); Nordstrom, Inc. v. Nomorerack

Retail Grp., Inc., 2013 U.S. Dist. LEXIS 41810, *28

(W.D. Wash. Mar. 25, 2013) (social media a factor in

determination that mark is famous). It likewise

disregarded advertising of Bobcar’s website.

All in all, the weighing of the evidence presented

fertile ground for a jury. But the judge refused to

empanel one. Perhaps he was influenced by his

heavy caseload – he complained he had 400 civil

cases pending, and 75 motions for summary

judgment fully briefed (Appx.46a).

Whatever the reason, the Seventh Amendment

cannot simply be disregarded. But the CAFC silently

affirmed without explanation.

C. Its Standing Under Lexmark Was Not

Addressed

After the district court’s ruling, the Federal Circuit

issued two decisions recognizing that its prior

approach to standing had to be changed24 per this

Lone Star Silicon Innovations LLC v. Nanya Tech. Corp.,

925 F.3d 1225, 1235-36 (Fed. Cir. 2019) (“motions to dismiss

based on ‘statutory standing’ defects are properly brought under

Rule 12(b)(6) rather than Rule 12(b)(1) in recognition of the fact

Court’s ruling in Lexmark.25 Under Lexmark, and

the CAFC’s new precedents, the district court’s

12(b)(1) dismissal was wrong. Id. But the CAFC

silently affirmed without explanation.

D. Equal Protection Issues Are Involved

The affirmance also implicates issues of Equal

Protection. Bobcar had to appeal to the CAFC

because its case included patent claims. The CAFC

then addressed the trade dress claim contrary to

governing Second Circuit precedent that the district

court’s actions were reversible error. ING Bank, 892

F.3d at 524. Bobcar lost the benefit of a reversal per

its rights in the Second Circuit because it was forced

to proceed before the CAFC.

Furthermore, the Second Circuit’s rules provide for

reasoned summary orders, at a minimum. However,

Bobcar was deprived of a written decision. The

Federal Circuit applied CAFC Rule 36, and ignored

the approach of the circuit where the case originated.

A litigant should expect equal protection regardless

of circuit. Instead, there was a stark disparity of

treatment, as shown by the Second and Federal

Circuits’ contrasting rights and rules.

that such defects are not jurisdictional”); Schwendimann v.

Arkwright Advanced Coating, Inc., 959 F.3d 1065, 1071 (Fed.

Cir. May 5, 2020) (“As long as a plaintiff alleges facts that

support an arguable case or controversy under the Patent Act,

the court has both the statutory and constitutional authority to

adjudicate the matter”).

Lone Star, 925 F.3d at 1235-36 (“the Supreme Court has

recently clarified that so-called ‘statutory standing’ defects do

not implicate a court’s subject-matter jurisdiction … Lexmark is

irreconcilable with our earlier authority treating §281 as a

jurisdictional requirement. … We therefore firmly bring

ourselves into accord with Lexmark”).

E. All of Which Illustrate the Serious

Risks of Rule 36 Practice

Ultimately, this petition does not rise or fall on

whether the lower courts were right or wrong. The

far greater concern is how Bobcar’s appeal was

addressed. Serious issues were swept under the rug

with a single word. If such appellate action is

acceptable, no rights are truly safe.

Minutes after the Constitution was ratified,

Benjamin Franklin famously said that we have “A

republic, if you can keep it.” Constitutional principles

can only sustain the republic if they are protected. If

they can be brushed off, without explanation, then

there is no protection at all.

We may have a Constitution in theory.

But we cannot keep it.

CONCLUSION

For the foregoing reasons, this Court should grant

this petition for certiorari.

Dated: August 2, 2021

Respectfully submitted,

Morris E. Cohen

Counsel of Record

GOLDBERG COHEN LLP

1350 Avenue of the Americas,

3rd Floor

New York, New York 10019

(646) 380-2084

mcohen@goldbergcohen.com

Counsel for Petitioner

APPENDIX

Appendix A

UNITED STATES DISTRICT COURT

FOR THE S ECOND C IRCUIT

__________

OPINION AND ORDER

__________

16-CV-885 (JPO)

__________

B OBCAR M EDIA , LLC,

—v.—

Plaintiff,

A ARDVARK E VENT L OGISTICS , I NC .,

Defendant.

__________

J. PAUL OETKEN, District Judge:

Plaintiff Bobcar Media, LLC (“Bobcar”) initiated

this action on February 4, 2016, against Defendant

Aardvark Event Logistics, Inc. (“Aardvark”). (Dkt.

No. 1.) In the operative Second Amended Complaint,

filed April 20, 2016, Bobcar alleges patent infringement under 35 U.S.C. § 271, trademark infringement

and unfair competition under the Lanham Act, 15

U.S.C. § 1125(a), and unfair competition under New

York law. (Dkt. No. 12 (“SAC”) ¶¶ 93–131.) Aardvark

has also asserted counterclaims against Bobcar,

seeking a declaratory judgment that the six patents

on which Bobcar bases its suit are invalid, that

Aardvark did not infringe Bobcar’s patents or trade

dress, and that Aardvark did not engage in unfair

competition. (Dkt. No. 22 at 22–31.)

On September 7, 2018, Aardvark moved to dismiss

the patent infringement claims in the Second

Amended Complaint for lack of standing.1 (Dkt. No.

101.) Specifically, Aardvark argues that Bobcar did

not own the patents at issue at the time it filed suit,

and that Bobcar thus cannot sue for patent

infringement. (Dkt. No. 102 at 1.)

Based on the evidence submitted by the parties, the

Court agrees that Bobcar has not sufficiently

demonstrated that it possessed standing to initiate

this action. Therefore, at this point in time, the Court

is inclined to grant Aardvark’s motion. However, the

Court will delay ruling on the motion to dismiss for

ten days, to give Bobcar the opportunity to either file

a sur-reply to the motion to dismiss, or move to add

the original inventors, David Hazan and Benjamin

Cohen, as plaintiffs pursuant to Rule 21.

Aardvark invokes Federal Rule of Civil Procedure

12(b)(1) as the basis for its motion. Because Aardvark has

already filed an Answer (Dkt. No. 22), though, the Court

construes this as a motion for judgment on the pleadings under

Rule 12(c), premised on a lack of subject-matter jurisdiction. See

Goodwin v. Solil Mgmt. LLC, No. 10 Civ. 5546, 2012 WL

1883473, at *1 (S.D.N.Y. May 22, 2012). Ultimately this is a

distinction without a difference, however, because “[w]here a

Rule 12(c) motion asserts that a court lacks subject matter

jurisdiction, the motion is governed by the same standard that

applies to a Rule 12(b)(1) motion.” Xu v. City of New York, No.

08 Civ. 11339, 2010 WL 3060815, at *2 n.2 (S.D.N.Y. Aug. 3,

2010).

I. Background

A. Procedural History

Bobcar filed the operative Second Amended

Complaint in this action on April 20, 2016. (Dkt. No.

12.) Aardvark moved to dismiss the Second Amended

Complaint under Rule 12(b)(6), and the Court denied

the motion on January 4, 2017. (Dkt. Nos. 13 & 21.)

Aardvark subsequently filed its Answer, which asserted

counterclaims seeking a declaratory judgment in

Aardvark’s favor on each of Bobcar’s claims. (Dkt. No.

22 at 22–31.)2 Fact discovery in this action closed on

August 17, 2018. (Dkt. No. 99.) The instant motion to

dismiss was filed on September 7, 2018. (Dkt. No.

101.) On November 14, 2018, the parties completed

their claim construction briefing (Dkt. Nos. 104, 107–

108, 110), and a Markman hearing before the Court

is scheduled for December 19, 2018 (Dkt. No. 109).

B. Factual Background

The following facts are taken from the operative

Complaint and the parties’ submissions regarding the

motion to dismiss. (See SAC; Dkt. Nos. 101–103, 105–

106.) Familiarity with the matter, as set forth in the

Court’s prior opinion in this case, is presumed. See

Bobcar Media, LLC v. Aardvark Event Logistics, Inc.,

No. 16 Civ. 885, 2017 WL 74729, at *1–3 (S.D.N.Y.

Jan. 4, 2017).

The patent infringement claims in this case involve

three utility patents and three design patents

relating to Bobcar’s promotional vehicles: U.S. Patent

Nos. 7,942,461 (“the ‘461 patent”); 8,220,854 (“the

On May 8, 2018, Aardvark moved for sanctions against

Bobcar under Rule 11; that motion is pending before the Court.

(Dkt. No. 64.)

‘854 patent”); 8,690,215 (“the ‘215 patent”); D652,353

(“the ‘353 patent”); D678,823 (“the ‘823 patent”);

D736,675 (“the ‘675 patent”). (SAC ¶¶ 9–14.) The first

of these, the ‘461 patent, was issued on May 17, 2011,

and lists the inventors as Benjamin Cohen and David

Hazan, and the assignee as Bobcar Media, LLC. (Dkt.

No. 12-1 at 1.) The other five patents were issued

between January 2012 and August 2015, list Cohen

and Hazan as the inventors and Bobcar as the

assignee, and are related to the ‘461 patent through a

chain of patent applications that are continuations

and continuations in part of the ‘461 patent. (See Dkt.

Nos. 2-2 through 12-6.)

During fact discovery in this matter, Bobcar did not

produce any documents constituting the written

assignment of the patents at issue from the inventors

(the putative assignors) to the putative assignee,

Bobcar. (Dkt. No. 102 at 2; Dkt. No. 103-3 at 26; Dkt.

No. 105 at 3.) Counsel for Bobcar, Morris Cohen,

represented at a February 14, 2018 telephonic

conference before the Court that he “believe[s] there

was an assignment document” when the patent

applications were filed, and that if a copy of the

original written assignment document “still exists” it

would have been produced; but counsel was unsure

whether “there are still copies of those documents.”

(Dkt. No. 103-3 at 27.)

David Hazan—inventor of the patents and Bobcar’s

designated Rule 30(b)(6) witness—was asked about

the existence of an assignment document at his Rule

30(b)(6) deposition:

Q. Is there any other document [other than

the face of the patents] that evidences

BobCar’s ownership of the patents?

...

A. Is there any other document? There could

be one.

Q. I can’t get into this “could be.”

A. I know. I am just saying again I can’t pull

one out of my pocket for you, but it is

possible that we produced one for you.

...

Q. Is there a written document from the

inventors assigning any right, title and

interest to BobCar?

MR. COHEN:

answered.

Objection.

Asked

and

A. I told you I don’t have a document at my

fingertips, but I am 100 percent sure that we

assigned the patents to BobCar Media, LLC.

Q. Have you ever seen a document?

A. If there is a document, I have seen it, and

I signed it, so I am telling you that I believe

that there is a document. I just don’t have

one at my fingertips to show you a document.

...

Q. Topic 10 [in the 30(b)(6) notice] requires

the identification of any assignment

document. You have not identified anything

to me, so apparently there is no assignment

document.

MR. COHEN: Objection, mischaracterizes testimony. You should go back

and read his testimony.

Q. Can you identify this document for me?

MR. COHEN:

answered.

Objection.

Asked

and

A. I answered it. I will answer it again. I

can’t identify the document for you at the

moment.

Q. This is the moment.

MR. COHEN: Objection.

A. I don’t have the document.

Q. Is there any verbal agreement between

the inventors of BobCar as to the ownership

of this patent?

...

A. Yes.

Q. There’s a verbal agreement?

A. Yes. There was definitely a verbal agreement.

(Dkt. No. 103-4 at 210–11, 227–28; Dkt. No. 105-1 at

218–19.)

In addition, accompanying its opposition to the

motion to dismiss, Bobcar submitted a declaration

from Benjamin Cohen—the other inventor on the

patents and the current President of Bobcar (Dkt. No.

105-12 ¶ 1)—regarding the alleged assignment.

Cohen avers:

David Hazan and I both executed a

document many years ago assigning to

Bobcar all of our rights in the patent

applications that we filed, i.e. all our rights

to the patents-in-suit. . . . Both of us agreed

that our company Bobcar would be the owner

of our rights to the patents-in-suit, and we

executed that document for the purpose of

transferring to Bobcar any and all our rights

to the patents-in-suit. . . . There is no

question in my mind that our written

transfer of our rights to Bobcar was executed

many years before the February 2016 filing

of suit in this action.

(Dkt. No. 105-12 ¶¶ 4, 6–7.) Bobcar has also

submitted “confirmations of assignment” from both

Cohen and Hazan, which confirm that the inventors

assigned to Bobcar all rights in the patents at issue,

and that the “original written assignment” of the

patents occurred “prior to April 5, 2011.” (Dkt. Nos.

105-9 & 105-10.)

II. Legal Standard

Article III’s case-or-controversy requirement

mandates that “the party invoking federal

jurisdiction have standing—the personal interest

that must exist at the commencement of the

litigation.” Haley v. Teachers Ins. & Annuity Ass’n of

Am., No. 17 Civ. 855, 2018 WL 1585673, at *2

(S.D.N.Y. Mar. 28, 2018) (quoting Carter v.

HealthPort Techs., LLC, 822 F.3d 47, 55 (2d Cir.

2016)). If a plaintiff cannot demonstrate standing, a

court lacks subject-matter jurisdiction over the

plaintiff’s claims and must dismiss them.

“On a motion to dismiss under Rule 12(b)(1), where

evidence relevant to the jurisdictional question is

before the court, the court ‘may refer to [that]

evidence.’” MMA Consultants 1, Inc. v. Republic of

Peru, 245 F. Supp. 3d 486, 499 (S.D.N.Y. 2017)

(alteration in original) (quoting Makarova v. United

States, 201 F.3d 110, 113 (2d Cir. 2000)). “This

evidence may include affidavits, exhibits and

declarations, all subject to the familiar standards of

admissibility found in [Federal Rule of Civil

Procedure] 56.” Id. The plaintiff bears the ultimate

burden of “prov[ing] subject-matter jurisdiction by a

preponderance of the evidence.” Kurzon v. Democratic

Nat’l Comm., No. 16 Civ. 4114, 2017 WL 2414834, at

*1 (S.D.N.Y. June 2, 2017) (quoting Morrow v. Ann

Inc., No. 16 Civ. 3340, 2017 WL 363001, at *2

(S.D.N.Y. Jan. 24, 2017)).

III. Discussion

Aardvark moves to dismiss the patent claims in the

Second Amended Complaint, contending that Bobcar

lacks standing to claim patent infringement because

it did not own the patents at issue when it

commenced this action. (Dkt. No. 102 at 1.) Bobcar

responds that although it lost the assignment

document, it nonetheless possesses standing to assert

patent infringement because it can sufficiently

demonstrate that an assignment of the patents at

issue in fact occurred. (Dkt. No. 105 at 3.)

A. Standing to Assert Patent Infringement

Claims

“Standing to sue for patent infringement derives

from the Patent Act, which provides that ‘[a] patentee

shall have remedy by civil action for infringement of

his patent.’” Au New Haven, LLC v. YKK Corp., 210

F. Supp. 3d 549, 553 (S.D.N.Y. 2016) (alteration in

original) (quoting Keranos, LLC v. Silicon Storage

Tech., Inc., 797 F.3d 1025, 1031 (Fed. Cir. 2015)

(quoting 35 U.S.C. § 281)). An entity that is not the

original recipient of a patent is also considered a

“patentee” with statutory standing to sue for

infringement in its own right if it is the “assignee[]”

and current owner of the patent, or an “exclusive

licensee[] who w[as] given all substantial rights to the

patent.” My First Shades v. Baby Blanket Suncare,

914 F. Supp. 2d 339, 345 (E.D.N.Y. 2012). Bobcar

asserts that it has standing to sue here because it is

the assignee of the patents at issue. (Dkt. No. 105 at

1.)3

It is well established that a patent in an invention

is generally issued to and initially owned by the

inventor, who may then transfer ownership through

an assignment. See Bd. of Trs. of Leland Stanford

Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S.

776, 785 (2011); Beech Aircraft Corp. v. EDO Corp.,

990 F.2d 1237, 1248 (Fed. Cir. 1993). Equally well

established, and particularly important in this case,

is that “[p]atent ownership cannot be assigned

without a ‘written instrument documenting the

transfer of proprietary rights in the patents.’” Picture

Patents, LLC v. Aeropostale, Inc., 788 F. Supp. 2d

In the alternative, Bobcar claims that it is at least an

“exclusive licensee” of the patents, and has standing to sue in

that capacity. (Dkt. No. 105 at 8–9.) Bobcar is correct that

“courts permit exclusive licensees to bring suit in their own

name, without joining the patent owner, if the exclusive licensee

holds ‘all substantial rights’ in the patent.” Telebrands Corp. v.

Del Labs., Inc., 719 F. Supp. 2d 283, 290 (S.D.N.Y. 2010). But

Bobcar ignores the fact that such “‘virtual assignments’ (i.e.,

exclusive license agreements that convey all substantial rights)

must [also] be in writing for a party to have standing to sue in

its own name.” Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 288

F. App’x 697, 705 (Fed. Cir. 2008); see also Vapor Point LLC v.

Moorhead, 832 F.3d 1343, 1351–52 (Fed. Cir. 2016) (O’Malley,

J., concurring); Blumenthal Distrib., Inc. v. Exec. Chair, Inc.,

No. 10 Civ. 1280, 2010 WL 5980151, at *4 (E.D.N.Y. Nov. 9,

2010). This argument in the alternative thus does not relieve

Bobcar of the burden of demonstrating that a written transfer of

ownership in the patents occurred.

10a

127, 137 (S.D.N.Y. 2011) (quoting Speedplay, Inc. v.

Bebop, Inc., 211 F.3d 1245, 1250 (Fed. Cir. 2000)).

During discovery, Bobcar was unable to produce a

written assignment document that transferred

ownership in the patents from the inventors—Hazan

and Cohen—to their company. (Dkt. No. 106 at 1.)

From this evidentiary gap, Aardvark infers that a

written assignment was never executed and Bobcar

was not the true owner of the patents when it

brought this case. (Dkt. No. 102 at 7–8.) Bobcar

responds that although it has lost the assignment

document, it can prove that an assignment occurred

through the testimony of the two inventors and nunc

pro tunc assignments, corroborated by the patent

applications. (Dkt. No. 105 at 4–8). Aardvark contends

that this evidence is insufficient.4 (Dkt. No. 106 at

2–3.)

In resolving Aardvark’s motion to dismiss, the

ultimate question for the Court is whether Bobcar

has shown, by a preponderance of the evidence, that

there was in fact a written assignment of the patents

at issue. Aardvark asserts that Bobcar cannot meet

its burden, because the evidence on which Bobcar

attempts to rely is (1) “inadmissible” and (2) otherwise “deficient,” and because (3) even if the Court

accepts the evidence Bobcar has put forward, that

evidence is insufficient to show that each of the six

patents at issue was assigned in writing. (Dkt. No.

106 at 2–4.) The Court agrees that the evidence on

which Bobcar relies is inadmissible to prove the

Aardvark also briefly contends that Bobcar’s inability to

produce a written assignment document “alone is dispositive”

here. (Dkt. No. 106 at 2.) The Court disagrees. The existence

and contents of a document can be proven through secondary

evidence. See Fed. R. Evid. 1004.

11a

contents of the alleged original written assignment;

therefore, at this point in time, Bobcar has not proven

that a written assignment was executed.

In resolving a motion to dismiss for lack of subjectmatter jurisdiction, courts can rely on evidence

outside the pleadings only if such evidence would be

admissible on summary judgment. See MMA

Consultants, 245 F. Supp. 3d at 499. Aardvark

contends that the evidence relied on by Bobcar should

be “deemed inadmissible,” because Bobcar has not

“offered any evidence that the purported assignment

existed, much less was lost.” (Dkt. No. 106 at 3.) The

basis for this argument is the “best evidence” rule.5

(Dkt. No. 106 at 2–3 & n.3 (citing Seiler v. Lucasfilm,

Ltd., 808 F.2d 1316, 1320 (9th Cir. 1986); Allergia,

Inc. v. Bouboulis, No. 14 Civ. 1566, 2017 WL

2547225, at *8–9 (S.D. Cal. June 13, 2017); Archie

Comic Publ’ns, Inc. v. DeCarlo, 258 F. Supp. 2d 315,

329–31 (S.D.N.Y. 2003)).)

“The ‘best evidence’ rule is codified at Rules 1002

through 1004 of the Federal Rules of Evidence.”

Bandler v. BPCM NYC, Ltd., No. 12 Civ. 3512, 2014

WL 5038407, at *7 (S.D.N.Y. Sept. 29, 2014)

(brackets omitted) (quoting Burt Rigid Box, Inc. v.

Travelers Prop. Cas. Corp., 302 F.3d 83, 91 (2d Cir.

2002)). The rule establishes the presumption that

“[a]n original writing . . . is required in order to prove

its content.” Fed. R. Evid. 1002. But it provides that

“[a]n original is not required and other evidence of

the content of a writing . . . is admissible” under

certain conditions, including where “all the originals

Although Aardvark does not expressly invoke the “best

evidence” rule by name or citation, the content of its argument

and case citations indicate that this is clearly the rule of

evidentiary admissibility on which Aardvark seeks to rely.

12a

are lost or destroyed, and not by the proponent acting

in bad faith.” Fed. R. Evid. 1004(a). “To satisfy Rule

1004, ‘[t]he party seeking to prove the contents of the

writing must establish a proper excuse for the nonproduction of the document and that the original did

exist.’” Crawford v. Franklin Credit Mgmt. Corp., No.

08 Civ. 6293, 2015 WL 1378882, at *4 (S.D.N.Y. Mar.

26, 2015) (alteration in original) (quoting Bandler,

2014 WL 5038407 at *8). And the proponent “must

meet this burden by a preponderance of the evidence.”

Id.

Because Bobcar seeks to prove the contents of a

written document that it claims was once executed—

and, in particular, seeks to prove that the document

contained an assignment of all six of the patents here

at issue—it would ordinarily need to do so by

producing the document itself. Here, though, Bobcar

contends that it cannot produce the original

assignment document because “the document was

lost.” (Dkt. No. 105 at 4.) Bobcar’s opposition brief

states that “[t]he document may still exist

somewhere, or it may be lost. With Bobcar’s prior

move of offices, it has not been found to date.” (Id. at

4 n.1.) Counsel for Bobcar made similar claims at a

teleconference before the Court, stating, “If it still

exists, we produced it. . . . I’m just saying that now

we haven’t gotten any further copies of it.” (Dkt. No.

103-3 at 27.)

The loss of a document can clearly be a proper

excuse for its non-production. See Crawford v.

Tribeca Lending Corp., 815 F.3d 121, 127 (2d Cir.

2016) (per curiam). But whether Bobcar lost the

assignment document—and did so in good faith—is a

“factual predicate[]” which it “must prove by a

preponderance of the evidence.” Id. Statements of

counsel at conference or in a brief, of course, are not

13a

evidence. See Dimond v. Darden Rests., Inc., No. 13

Civ. 5244, 2014 WL 3377105, at *12 (S.D.N.Y. July 9,

2014). And nothing in the declaration, deposition

testimony, or confirmation documents on which

Bobcar relies addresses what happened to the

original assignment document, if it ever existed at

all. The Court is left with no evidence on which to

conclude that an original assignment document was

actually lost.6

As such, the “factual predicates” for invoking the

Rule 1004 exception are not satisfied here, and the

evidence offered by Bobcar is inadmissible to prove

the contents of the alleged original assignment

document. And because Bobcar has adduced no

admissible evidence to prove the contents of the

document, it has not proven by a preponderance that

it owned the patents at issue and had statutory

standing to sue when the case was filed. Therefore,

based on the evidence before the Court at this point

in time, the Court is inclined to conclude that it lacks

subject-matter jurisdiction.

The Court will postpone ruling on Aardvark’s

motion to dismiss for ten days, however, to give

Bobcar the opportunity to file further submissions

responding to Aardvark’s reply brief (Dkt. No. 106 at

2–3) and addressing issues under the “best evidence”

rule.

Because the Court concludes that Bobcar has not

satisfied the “excuse” predicate of Rule 1004(a), it does not

decide whether Bobcar has proven by a preponderance of the

evidence another factual predicate: that “the original did exist.”

Crawford, 2015 WL 1378882, at *4 (quoting Bandler, 2014 WL

5038407, at *8).

14a

B. Adding New Plaintiffs Under Rule 21

Bobcar’s opposition to the motion to dismiss does

not address the possibility of adding the inventors of

the patents as plaintiffs, in the event that Bobcar is

unable to demonstrate standing to initiate the action

on its own. However, in support of its motion to

dismiss, Aardvark asserts that Bobcar cannot cure

any “standing defect by joining the actual owners of

the Asserted Patents to this suit.” (Dkt. No. 102 at

11.) The Court disagrees.

As discussed above, “[p]atent owners, including

assignees and exclusive licensees who were given all

substantial rights to the patent, may sue alone in

their own right.” My First Shades, 914 F. Supp. 2d at

345. By contrast, “[e]xclusive licensees, with less than

all substantial rights to the patent, may sue only if

the owner of the patent is joined as a necessary party

in the litigation.” Id. And importantly, such “an

exclusive license need not be in writing for the

licensee to have standing if the patentee or assignee

is also joined.” Id. at 350 (quoting Aspex Eyewear, Inc.

v. Altair Eyewear, Inc., 288 F. App’x 697, 706 (Fed.

Cir. 2008)).

Although Bobcar has not proven the content of the

alleged written assignment on the evidence adduced,

it has proven the existence of a verbal agreement.

(See Dkt. No. 103-4 at 228.) From the representations

of the inventors, corroborated by the patent

applications, the Court concludes that the inventors

at a minimum verbally agreed to transfer all rights in

the patents to Bobcar. Such an agreement—an

assignment in all but memorialization-by-writing—is

the equivalent of an implied exclusive license. As

such, Bobcar would have statutory standing to sue for

15a

patent infringement if the inventors of the patents

were also joined as plaintiffs.

Under Federal Circuit precedent, “an exclusive

licensee with less than all substantial rights in the

patent [that] did not have the right to sue under the

Patent Act at the inception of the lawsuit,” can “cure

the defect by filing a motion to join the patentee as a

plaintiff.” Paradise Creations, Inc. v. UV Sales, Inc.,

315 F.3d 1304, 1310 (Fed. Cir. 2003). Indeed, the

Federal Circuit has a “practice of endorsing joinder of

patent owners, under Rule 21 of the Federal Rules of

Civil Procedure, in order to avoid dismissal for lack of

standing.” Alps S., LLC v. Ohio Willow Wood Co., 787

F.3d 1379, 1385 (Fed. Cir. 2015).

This practice does not run afoul of Article III limits

on subject-matter jurisdiction because such an

exclusive licensee, with “‘the right to exclude others

from making, using, and selling an invention

described in the claims of a patent is constitutionally

injured by another entity that makes, uses, or sells

the invention’ and therefore has constitutional

standing.” My First Shades, 914 F. Supp. 2d at 345

(quoting Intellectual Prop. Dev., Inc. v. TCI

Cablevision of Cal., Inc., 248 F.3d 1333, 1346 (Fed.

Cir. 2001)). Exclusive licensees are “required to join

the title holder” only as a matter of prudential

standing, in order “to prevent multiple litigations

regarding the same patent.” Id. But “[i]t is sufficient

for [prudential] standing purposes that the title

holder is eventually added to the suit, even if the title

holder was not in the suit originally, because the

exclusive licensee meets constitutional standing

requirements.” Id. at 346.

Adding the inventors—David Hazan and Benjamin

Cohen—as plaintiffs in this action would thus cure

16a

any deficiency in Bobcar’s statutory standing at the

time it filed the suit.

Accordingly, the Court will delay granting

Aardvark’s motion to dismiss for ten days, in which

time Bobcar can move, if it so chooses, to add Hazan

and Cohen as parties under Rule 21.

IV. Conclusion

For the foregoing reasons, the Court will defer

ruling on Aardvark’s motion to dismiss for ten days.

On or before December 17, 2018, Bobcar may choose

to file either additional submissions responding to

Aardvark’s reply brief, or a motion to add additional

plaintiffs under Rule 21. If Bobcar does not act to

cure its standing deficiency within that time, the

patent infringement claims in the Second Amended

Complaint will be dismissed without prejudice. In the

event that Bobcar files additional submissions,

Aardvark will have until December 21, 2018 to

respond.

SO ORDERED.

Dated: December 7, 2018

New York, New York

/s/ J. Paul Oetken

J. PAUL OETKEN

United States District Judge

17a

Appendix B

UNITED STATES DISTRICT COURT

FOR THE S ECOND C IRCUIT

__________

16-CV-885 (JPO)

__________

ORDER

__________

B OBCAR M EDIA , LLC,

—v.—

Plaintiff,

A ARDVARK E VENT L OGISTICS , I NC .,

Defendant.

__________

J. PAUL OETKEN, District Judge:

On December 7, 2018, the Court concluded that

Plaintiff Bobcar Media LLC had not adequately

demonstrated that it possessed statutory standing to

assert patent infringement claims against Defendant

Aardvark Event Logistics, Inc. when this case was

filed. (Dkt. No. 111.) The Court deferred ruling on

Aardvark’s Rule 12(b)(1) motion to dismiss for ten

days to give Bobcar the opportunity to cure its

18a

standing deficiency.1 By the end of that period, the

Court directed Bobcar to do one of two things to

establish standing: either (1) provide “additional

submissions responding to Aardvark’s reply brief”—

specifically to “address[] issues under the ‘best

evidence’ rule”—or (2) file “a motion to add additional

plaintiffs under Rule 21” of the Federal Rules of Civil

Procedure. (Dkt. No. 111 at 10, 12.)

Bobcar chose to do neither. Instead, in its sur-reply

Bobcar essentially moves for reconsideration by

rehashing arguments made in its opposition brief,

asserting that it possesses standing as an exclusive

licensee of the patents at issue. (Compare Dkt. No.

115 at 2, with Dkt. No. 105 at 9.) Not only was this

approach not one of the ways in which the Court

permitted Bobcar to respond to the December 7, 2018

Opinion, but Bobcar’s argument had already been

squarely rejected by the Court.

As the Opinion explained, in order for an exclusive

licensee to have standing to bring a patent

infringement action on its own, the exclusive license

must be in writing. (Dkt. No. 111 at 6–7 n.3.) “[B]oth

assignments and ‘virtual assignments’ (i.e., exclusive

license agreements that convey all substantial rights)

must be in writing for a party to have standing to sue

in its own name.” Aspex Eyewear, Inc. v. Altair

Eyewear, Inc., 288 F. App’x 697, 705 (Fed. Cir. 2008)

(citing Enzo APA & Son, Inc. v. Geapag A.G., 134

F.3d 1090, 1093 (Fed. Cir. 1998)). For the reasons

stated in the December 7, 2018 Opinion, Bobcar has

not adduced sufficient admissible evidence to

demonstrate that the inventors executed an original

The Court later granted Bobcar’s request for an

extension, providing an additional ten days to comply with the

Court’s December 7, 2018 Opinion. (Dkt. No. 114.)

19a

written assignment covering the patents at issue.

(Dkt. No. 111 at 8–10.) Nor has Bobcar attempted to

prove the existence or contents of a written exclusive

license agreement. Therefore, Bobcar has not

demonstrated that it possessed statutory standing to

sue as an exclusive licensee without the inventors as

co-plaintiffs when this action was filed.

In its sur-reply, Bobcar requested that its ability to

file a motion to add the inventors as co-plaintiffs

under Rule 21 be reserved until the Court ruled on its

response to the December 7, 2018 Opinion. (Dkt. No.

115 at 3.) This request is denied. The Court afforded

Bobcar the opportunity to attempt to establish

standing by filing a Rule 21 motion on or before

December 27, 2018. (See Dkt. Nos. 111 & 114.)

Bobcar elected not to pursue this course of action, and

the Court is not inclined to defer its ruling on

Aardvark’s motion to dismiss any longer.

The Court observes that Bobcar would face a heavy

burden in attempting to add the inventors as coplaintiffs at this point in the litigation, for the

reasons identified in Aardvark’s sur-reply. (Dkt. No.

116 at 7–8.) The case has been pending for nearly

three years, and Bobcar has had notice of Aardvark’s

concerns about its standing since February 2018. (See

Dkt. No. 54 at 24–25.) Furthermore, the ability of a

Rule 21 motion to establish standing hinges on

Bobcar’s acknowledging its status as a licensee of the

patent, marking a significant departure from the

position Bobcar has maintained over the first two

years of this litigation. Ultimately, however, the

likelihood of success of any Rule 21 motion is

inapposite. The Court declines to exercise its

discretion to allow the filing of a Rule 21 motion at

this stage, after Bobcar failed to take the opportunity

to do so in the time allotted.

20a

For the reasons stated in the Opinion of December

7, 2018, Bobcar did not have statutory standing to

assert the patent infringement claims in the Second

Amended Complaint when filed. (Dkt. No. 12 (Count

I).) Accordingly, the patent infringement claims in

Bobcar’s Second Amended Complaint are hereby

DISMISSED WITHOUT PREJUDICE.

The Clerk of Court is directed to close the motion at

Docket Number 101.

SO ORDERED.

Dated: January 14, 2019

New York, New York

/s/ J. Paul Oetken

J. PAUL OETKEN

United States District Judge

21a

Appendix C

UNITED STATES DISTRICT COURT

FOR THE S ECOND C IRCUIT

__________

16-CV-885 (JPO)

__________

OPINION AND ORDER

__________

B OBCAR M EDIA , LLC,

—v.—

Plaintiff,

A ARDVARK E VENT L OGISTICS , I NC .,

Defendant.

__________

J. PAUL OETKEN, District Judge:

Plaintiff Bobcar Media, LLC (“Bobcar”) initiated

this action on February 4, 2016, against Defendant

Aardvark Event Logistics, Inc. (“Aardvark”). (Dkt.

No. 1.) In the operative Second Amended Complaint,

filed April 20, 2016, Bobcar alleged patent infringement under 35 U.S.C. § 271, trademark infringement

and unfair competition under the Lanham Act, 15

U.S.C. § 1125(a), and unfair competition under New

York law. (Dkt. No. 12 (“SAC”) ¶¶ 93–131.) Aardvark

asserted counterclaims against Bobcar, seeking a

declaratory judgment that the six patents on which

Bobcar bases its suit are invalid, that Aardvark did

22a

not infringe Bobcar’s patents or trade dress, and that

Aardvark did not engage in unfair competition. (Dkt.

No. 22 at 22–31.) On January 14, 2019, this Court

dismissed all patent infringement claims for lack of

statutory standing. (Dkt. No. 117.) Aardvark has now

moved to exclude the expert testimony of James A.

Roberts, Ph.D. (Dkt. No. 141), and for summary

judgment on all remaining claims (Dkt. No. 142).

Bobcar has cross-moved for summary judgment. (Dkt.

No. 147.) For the reasons that follow, Aardvark’s

motion to exclude is granted, Aardvark’s motion for

summary judgment is granted, and Bobcar’s crossmotion for summary judgment is denied.

I. Background

Bobcar is a company that owns technology and

designs for promotional vehicles. (SAC ¶¶ 8–9.)

Created in 2007, Bobcar vehicles “are mobile

marketing vehicles used in connection with mobile

marketing programs conducted on behalf of brands

and/or advertising agencies representing brands.”

(Aardvark SOF1 ¶¶ 8–10.) The vehicle has panels

that open and close to reveal products promoted in a

showroom. (See Dkt. No. 148 (“Bobcar SOF”) ¶¶ 60–

64.) Bobcar has used its vehicles in dozens of

campaigns. (Aardvark SOF ¶ 15.) While Bobcar holds

four utility and four design patents in connection

Aardvark’s Rule 56.1 Statement of Facts, referred to

herein as “Aardvark SOF,” was filed under seal in its entirety.

Where the Court relies on documents that have been filed under

seal, the Court has concluded that the parties’ interests in

continued sealing of the portions referenced in this Opinion and

Order are insufficient to overcome the presumption of public

access to judicial documents. See Lugosch v. Pyramid Co. of

Onondaga, 435 F.3d 110, 119–20 (2d Cir. 2006).

23a

with the Bobcar, it never registered the trade dress it

asserts in this action. (Aardvark SOF ¶¶ 57, 78.)

“Aardvark is an experimental and event mobile

marketing firm . . . that provides promotional

vehicles.” (Aardvark SOF ¶ 42.) Aardvark offers

promotional vehicles under the name “Aardy.”

(Aardvark SOF ¶ 43.) A version of the Aardy was

introduced into the marketplace in 2008. (Aardvark

CSOF2 ¶ 131.) The Aardy has also been used in

several campaigns. (Aardvark SOF ¶¶ 44–56.) Bobcar

asserts that the Aardy is confusingly similar to the

Bobcar vehicle, and that it infringes upon its trade

dress. (See SAC.) On February 4, 2016, Bobcar filed

this action. (Dkt. No. 1.)

II. Motion to Exclude

A. Legal Standard

The admissibility of expert testimony is governed

by Federal Rule of Evidence 702, which provides that

an expert who is “qualified . . . by knowledge, skill,

experience, training, or education may testify” if the

testimony would be helpful to the trier of fact, is

“based on sufficient facts or data,” and is “the product

of reliable principles and methods,” reliably applied

to the facts of the case. Fed. R. Evid. 702. And these

factors, in turn, largely have their origins in Daubert,

in which the Supreme Court held that the district

court bears a critical gatekeeping function in

assessing the admissibility of expert testimony.

Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579,

589–95 (1993).

Aardvark’s response to Bobcar’s Statement of Facts,

referred to herein as “Aardvark CSOF,” was filed under seal in

its entirety. To the extent this Court relies upon it, it is hereby

unsealed. See supra note 1.

24a

“[T]he proponent of expert testimony has the

burden of establishing by a preponderance of the

evidence that the admissibility requirements of Rule

702 are satisfied . . . .” United States v. Williams, 506

F.3d 151, 160 (2d Cir. 2007). Although Rule 702

requires courts to serve an initial gatekeeping

function to keep out “junk science,” Davis v. Carroll,

937 F. Supp. 2d 390, 412 (S.D.N.Y. 2013), it is

nonetheless “a well-accepted principle that Rule 702

embodies a liberal standard of admissibility for

expert opinions,” Nimely v. City of New York, 414

F.3d 381, 395 (2d Cir. 2005). However, “nothing in

either Daubert or the Federal Rules of Evidence

requires a district court to admit opinion evidence

that is connected to existing data only by the ipse

dixit of the expert. A court may conclude that there is

simply too great an analytical gap between the data

and the opinion proffered.” Gen. Elec. Co. v. Joiner,

522 U.S. 136, 146 (1997).

B. Discussion

Bobcar offers Dr. James A. Roberts as a “consumer

behavior expert” to opine “on issues relating to

[Bobcar’s] trade dress and relating to [Aardvark’s]

infringement thereof by its Aardvark promotional

vehicles, and its federal and state unfair

competition[, including] likelihood of confusion . . . ,

secondary meaning, and functionality.” (Dkt. No. 1413 (“Roberts Rep.”) ¶ 1.) Aardvark moves to exclude

Roberts’s expert report on the grounds (1) that

Roberts is not qualified to render an expert opinion,

(2) that he offers improper legal opinions that go to

the ultimate issue in the case, and (3) that his

opinions are not based on any recognized or reliable

methodology.

25a

Daubert presents a two-step inquiry for deciding

whether to admit expert testimony. The first question

a court poses in conducting the Daubert inquiry is

“whether the expert has sufficient qualifications to

testify.” Davis, 937 F. Supp. 2d at 412 (citation

omitted). If so, the “next question is ‘whether the

proffered testimony has a sufficiently reliable

foundation.’” Id. (quoting Amorgianos v. Nat’l R.R.

Passenger Corp., 303 F.3d 256, 265 (2d Cir. 2002)).

“The ultimate determination the Court must make on

a Daubert motion is that the expert ‘employs in the

courtroom the same level of intellectual rigor that

characterizes the practice of an expert in the relevant

field.’” Fort Worth Emps.’ Ret. Fund v. J.P. Morgan

Chase & Co., 301 F.R.D. 116, 127 (S.D.N.Y. 2014)

(quoting Kumho Tire Co. v. Carmichael, 526 U.S. 137,

152 (1999)).

As an initial matter, Aardvark does not dispute

that Roberts is qualified as a consumer behavior

expert — instead, it argues that he is not qualified to

render the specific opinions that he offers in his

expert report. “Even if ‘a witness qualifies as an

expert with respect to certain matters or areas of

knowledge, it by no means follows that he or she is

qualified to express expert opinions as to other

fields.’” LVL XIII Brands v. Louis Vuitton Malletier

S.A., 209 F. Supp. 3d 612, 638 (S.D.N.Y. 2016)

(quoting Nimely v. City of New York, 414 F.3d 381,

399 n.13 (2d Cir. 2005)). Roberts was retained to

address issues including “likelihood of confusion . . . ,

secondary meaning, and functionality.” (Roberts Rep.

¶ 1.) Aardvark argues that because these concepts

require an understanding of legal concepts that

Roberts does not possess, he is unqualified to opine

on those issues. However, an expert does not need to

be well-versed in the legal terrain to be sufficiently

26a

qualified to testify as an expert witness. A consumer

behavioral expert is not so irrelevant as to be

unqualified to testify to help the jury determine

whether there exists likelihood of confusion,

secondary meaning, or functionality. And because

Roberts has extensive experience as a consumer

behavior expert (see Roberts Rep. at 37–56), this

Court will not exclude Roberts’s testimony for lack of

qualifications.

However, it is clear that the proffered expert report

offers both impermissible legal conclusions and

opinions that are not based on any reliable

methodology. While an expert opinion “is not

objectionable just because it embraces an ultimate

issue,” Fed. R. Evid. 704(a), it remains impermissible

for experts “to offer opinions embodying legal

conclusions.” Floyd v. City of New York, 861 F. Supp.

2d 274, 287 (S.D.N.Y. 2012) (quoting United States v.

Scop, 846 F.2d 135, 139 (2d Cir. 1988)). Further, it is

axiomatic that proffered expert testimony must be

“more than subjective belief or unsupported

speculation.” Daubert, 509 U.S. at 589–90. Opinions

are inadmissible when they are “connected to existing

data only by the ipse dixit of the expert,” or when

there is “simply too great an analytical gap between

the data and the opinion proffered.” Gen. Elec. Co.,

522 U.S. at 146. As discussed below, because each

section of the report ultimately draws legal

conclusions based on evidence that is seemingly not

analyzed in any meaningful way, Roberts’s expert

report is excluded.

1. Trade Dress Opinion

Roberts opines that Bobcar has clearly identified

its trade dress, that the claimed trade dress is

distinctive, and that Bobcar was the exclusive user of

27a

the claimed trade dress when Bobcar introduced its

first vehicle in 2007. (See Roberts Rep. ¶¶ 25–33). He

based these opinions on the pleadings, exhibits

attached thereto, this Court’s January 4, 2017

Opinion and Order, deposition testimony, and

produced documents. (See id.)

To the extent that Roberts relies on the pleadings

or this Court’s prior Opinion and Order, that reliance

is misplaced. Neither the pleadings nor this Court’s

2017 Opinion and Order are admissible evidence. It is

true that “[i]f experts in the particular field would

reasonably rely on those kinds of facts or data in

forming an opinion on the subject, they need not be

admissible for the opinion to be admitted.” Fed. R.

Evid. 703. However it is unlikely, to say the least,

that consumer behavior experts reasonably rely on

legal documents to come to their conclusions.3 On

that basis alone, all conclusions based on that

evidence is excluded.

However, even excluding the opinions that rest on

an impermissible basis, the rest of the trade dress

section would not assist the jury. Because in his

expert opinion Roberts simply “rehash[es] otherwise

admissible evidence about which he has no personal

Roberts’s reliance on this Court’s Opinion and Order is

particularly problematic due to Roberts’s misunderstanding of

this Court’s ruling. At the early motion to dismiss stage, this

Court assessed whether Bobcar had, in its complaint, alleged

enough facts to state a claim under the Lanham Act and New

York state law. (See Dkt. No. 21.) This Court has not yet

adjudicated the critical questions in this case, as Roberts seems

to erroneously suggest throughout the report. (See, e.g., Roberts

Rep. ¶ 44 (claiming that this Court “previously held” that

Bobcar’s “design features are not essential to the purpose of

Bobcar’s promotional vehicles” (second quoting Dkt. No. 21 at

14)).)

28a

knowledge,” those observations are inadmissible. See

Highland Capital Mgmt., L.P. v. Schneider, 379 F.

Supp. 2d 461, 468–69 (S.D.N.Y. 2005). Roberts offers

no analysis beyond highlighting aspects of the record

that he finds important and demonstrating how it

satisfies the legal standards he sets out. Because the

jury would be engaging in the same process when

assessing Bobcar’s claims, this is impermissible ipse

dixit testimony. See Gen. Elec. Co., 522 U.S. at 146.

Accordingly, the trade dress portion of the expert

report is excluded.

2. Non-Functionality Opinion

Roberts assesses the non-functionality of Bobcar’s

promotional vehicles with the use of the same

categories of materials discussed in Section II.B.1,

supra, with the addition of a Google search. (Roberts

Rep. ¶¶ 34–44.) Roberts notes that “[a] Google search

for on-vehicle advertising provides a nearly overwhelming number of alternatives for on-vehicle

promotion” and thus concludes that “the Bobcar

promotional vehicles are only one of many ways a

vehicle can be used as an advertising medium.”

(Roberts Rep. ¶ 36.) However, it is not beyond the

understanding of the average juror that on-vehicle

advertising such as “car rooftop advertising,” “car and

truck decals and stickers,” or “bumper stickers” exist.

(See id.) Therefore, while a Google search itself may

be unwieldy to present to the jury, surely the

information that there are numerous ways that

vehicles can be used to advertise can be effectively

conveyed by way of the direct and cross examination

of fact witnesses.

And for the same reasons discussed in Section

II.B.1, supra, Roberts’s review of the other evidence is

unhelpful to the jury because it contains no analysis

29a

beyond that which can be done by the average juror.

Accordingly, the non-functionality portion of the

expert report is excluded.

3. Secondary Meaning Opinion

Roberts assesses whether Bobcar’s trade dress has

acquired secondary meaning with the use of the same

categories of materials discussed in Section II.B.1.

(See Roberts Rep. ¶¶ 45–83.) And for the same

reasons discussed in that section, Roberts’s review of

the evidence is not more sophisticated than that to be

performed by the average juror. The extent of

advertising expenditures, positive press, and sales

revenues is evident from the face of the documents

that Roberts cites. (See, e.g., Roberts Rep. ¶ 54 (“The

statements indicate millions of dollars of expenditures

on the Bobcar vehicles and their campaigns.”).)

Indeed, the only statement that goes beyond the

mere application of facts to the law is Roberts’s

opinion that:

[Bobcar’s] direct engagement is far more effective

than simple advertisements or advertising which

can more easily be ignored by a consumer or at

the periphery of a consumers’ [sic] consciousness.

The use of the brand ambassador brings the

consumer into direct contact with the BobCar[

and] brings the BobCar into the forefront of the

consumer’s consciousness.

(Roberts Rep. ¶ 57.) However, while this analysis

could conceivably be within the realm of knowledge of

a consumer behavior expert, Roberts does not provide

any support for this opinion. Because Roberts has

failed to bridge the “analytical gap” between the

evidence and his opinion, it does not pass muster. See

Gen. Elec. Co., 522 U.S. at 146. Accordingly, the

30a

secondary meaning portion of Roberts’s opinion is

excluded.

4. Likelihood of Confusion Opinion

Roberts assesses the likelihood of confusion with

the use of the same categories of materials discussed

in Section II.B.1. (See Roberts Rep. ¶¶ 84–152.) And

for same reasons discussed there, Roberts’s review of

the evidence is not more sophisticated than the

analysis of which a lay juror is capable. For example,

Roberts notes that after reviewing “hundreds of

images from the Aardvark and Bobcar websites” as

well as “depositions and exhibits,” he came to the

conclusion that “[i]t is evident that in the eye of the

ordinary consumer, [the] products are extremely

similar.” (Roberts Rep. ¶ 92.) He offers no analysis

other than the fact that he reviewed those materials

— materials that presumably jurors would be able to

review themselves at trial. (See id.) Accordingly,

statements like these are inadmissible.

In fact, the only statement in this section that

conceivably goes beyond mere application of facts to

law in this section is the following: “I am not aware of

any documentation of extensive development and

design work by Aardvark . . . as one would expect

from development of a new promotional vehicle. This

further provides a strong inference of copying and

bad faith.” (Roberts Rep. ¶ 117.) However, like the

statement discussed in Section II.B.3, supra, no

support is provided for this opinion. Accordingly, the

likelihood of confusion portion of the report is

inadmissible.

***

In sum, because every section of Roberts’s expert

report is pervaded with impermissible legal

31a

conclusions and his opinions are not based on any

evident reliable methodology, the report must be

excluded in its entirety.

III. Motions for Summary Judgment

A. Legal Standard

Summary judgment under Rule 56 is appropriate

where “there is no genuine dispute as to any material

fact and the movant is entitled to judgment as a

matter of law.” Fed. R. Civ. P. 56(a). A fact is

material if it “might affect the outcome of the suit

under the governing law.” Anderson v. Liberty Lobby,

Inc., 477 U.S. 242, 248 (1986). A dispute is genuine if,

considering the record as a whole, a rational jury

could find in favor of the non-moving party. See Ricci

v. DeStefano, 557 U.S. 557, 586 (2009).

“On summary judgment, the party bearing the

burden of proof at trial must provide evidence on each

element of its claim or defense.” Cohen Lans LLP v.

Naseman, No. 14 Civ. 4045, 2017 WL 477775, at *3

(S.D.N.Y. Feb. 3, 2017) (citing Celotex Corp. v.

Catrett, 477 U.S. 317, 322–23 (1986)). “If the party

with the burden of proof makes the requisite initial

showing, the burden shifts to the opposing party to

identify specific facts demonstrating a genuine issue

for trial, i.e., that reasonable jurors could differ about

the evidence.” Clopay Plastic Prods. Co. v. Excelsior

Packaging Grp., Inc., No. 12 Civ. 5262, 2014 WL

4652548, at *3 (S.D.N.Y. Sept. 18, 2014). The court

views all “evidence in the light most favorable to the

non-moving party,” and summary judgment may be

granted only if “no reasonable trier of fact could find

in favor of the nonmoving party.” Allen v. Coughlin,

64 F.3d 77, 79 (2d Cir. 1995) (internal quotation

32a

marks omitted) (second quoting Lunds, Inc. v. Chem.

Bank, 870 F.2d 840, 844 (2d Cir. 1989)).

B. Discussion

Aardvark and Bobcar each move for summary

judgment on all of Bobcar’s trade dress infringement

and unfair competition claims. As an initial matter, a

plaintiff must offer “a precise expression of the

character and scope of the claimed trade dress.”

Landscape Forms, Inc. v. Columbia Cascade Co., 113

F.3d 373, 381 (2d Cir. 1997). And to succeed on a

claim for trade dress infringement involving the

appearance of a product, Bobcar must show that “(1)

the claimed trade dress is non-functional; (2) the

claimed trade dress has secondary meaning; and (3)

there is a likelihood of confusion between the

plaintiff’s good and the defendant’s.” Sherwood 48

Assocs. v. Sony Corp. of Am., 76 F. App’x. 389, 391 (2d

Cir. 2003) (summary order). Aardvark argues that

Bobcar has met none of the elements to sustain its

trade dress infringement claim, and therefore the

federal- and state-law unfair competition claims must

fall as well. Bobcar argues that it has met each

element of its trade dress infringement claim and has

additionally proved its unfair competition claims.

This Court first considers whether the elements of

the trade dress infringement claim are met, then

addresses the unfair competition claims.

1. Trade Dress Description

Aardvark argues that Bobcar’s description of its

trade dress is improperly broad as a matter of law,

and therefore its trade dress infringement claim must

fail. In the Second Circuit, a plaintiff must articulate

the specific elements that comprise its alleged trade

dress. See Yurman Design, Inc. v. PAJ, Inc., 262 F.3d

101, 118 (2d Cir. 2001). Further, a plaintiff must

33a

make clear “how they are distinctive.” Nat’l Lighting

Co. v. Bridge Metal Indus., LLC, 601 F. Supp. 2d 556,

562 (S.D.N.Y. 2009). Failure to do so “may indicate

that its claim is pitched at an improper level of

generality, i.e., the claimant seeks protection for an

unprotectable style, theme, or idea.” Landscape

Forms, Inc., 113 F.3d at 381.

The Court remains unpersuaded that Bobcar’s

description of its trade dress is not particularized

enough to be protected. Bobcar’s identification of its

trade dress is as follows:

[A] promotional vehicle having a compact cab in

the front, and a compact showroom in back, the

showroom having substantially rectangular or

square panels on the left and right sides and rear

in the closed position, the vehicle having a

configuration in which those panels are raised

above the showroom and above the height of the

front cab in an open position, the showroom

being open to the public on three sides when the

panels are in the open position, providing an

open air showroom which is used to promote

goods or services displayed in the showroom,

wherein the promotional vehicle includes a

colorful front cab and colorful back, including a

colorful coordinated theme extending the entire

length of the vehicle from front to back and

corresponding to the brand or type of goods or

services in the showroom, and with the vehicle

having advertising or promotional materials on

the panels visible in the open and closed

positions and corresponding to the brand or type

of goods or services in the showroom.

(Aardvark SOF ¶ 76 (alteration in original).) While

Aardvark argues that the definition “improperly

34a

covers an inordinate number of vehicles with a

limitless number of features too numerous to

mention” (Dkt. No. 142-1 at 7), any trade dress

description can be dissected in that manner and will

therefore be at least somewhat susceptible to that

issue. Far from being “pitched at an improper level of

generality,” Landscape Forms, Inc., 113 F.3d at 381,

Bobcar’s description is quite detailed. Accordingly,

this Court concludes that Bobcar has identified a

protectable trade dress.

2. Secondary Meaning

Aardvark argues that Bobcar has not shown that

its trade dress has acquired secondary meaning, and

therefore its trade dress infringement claim fails as a

matter of law. “The trade dress of a product attains

secondary meaning when the purchasing public

associates its design with a single producer or source

rather than simply with the product itself.” Coach

Leatherware Co. v. AnnTaylor, Inc., 933 F.2d 162, 168

(2d Cir. 1991) (internal quotation marks and citations

omitted). However, “[t]rade dress generally falls into

one of two categories: product packaging or product

design.” Pure Power Boot Camp, Inc. v. Warrior

Fitness Boot Camp, LLC, 813 F. Supp. 2d 489, 537

(S.D.N.Y. 2011). While secondary meaning must be

shown for product-design trade dress, it need not be

shown for product-packaging trade dress. See WalMart Stores, Inc. v. Samara Bros, Inc., 529 U.S. 205,

215 (2000). Bobcar argues that because its trade

dress falls into the product packaging category, it

does not need to show secondary meaning to prove its

trade dress infringement claim. (See Dkt. No. 147 at

11–12.) The Court rejects this argument. The reason

that product packaging does not typically require a

showing of secondary meaning is because its

35a

“predominant function remains source identification.”

Wal-Mart Stores, Inc., 529 U.S. at 212.

This is not the function of the Bobcar. By way of

example, the Supreme Court has noted that a CocaCola bottle

may constitute packaging for those consumers

who drink the Coke and then discard the bottle,

but may constitute the product itself for those

consumers who are bottle collectors, or part of

the product itself for those consumers who buy

Coke in the classic glass bottle, rather than a

can, because they think it more stylish to drink

from the former.

Wal-Mart Stores, Inc., 529 U.S. at 215. Here, the

Bobcar is the product. Critically, its customers are

not those who might see the Bobcar vehicle on the

street, but rather the brands and advertising

agencies that secure the use of the Bobcar vehicle for

promotional purposes. Those brands and advertising

agencies are not interested in purchasing the product

that the Bobcar is promoting, unlike the consumer

who drinks Coke and discards the bottle. Bobcar’s

customers are interested in the Bobcar vehicle itself,

which makes it unequivocally the product. And even

if there is some ambiguity about into which category

the trade dress falls, the Supreme Court has held

that “courts should err on the side of caution and

classify ambiguous trade dress as product design,

thereby requiring secondary meaning.” Id. Therefore,

this Court holds that the trade dress that Bobcar

seeks to protect is of the product design variety, and

thus it is not exempted from the necessary showing of

secondary meaning.

To assess whether a trade dress has acquired

secondary meaning, courts consider the following

36a

factors: (1) advertising expenditures, (2) consumer

studies, (3) unsolicited media coverage of the product,

(4) sales success, (5) attempts to plagiarize the mark,

and (6) length and exclusivity of use. Coach

Leatherware Co., 933 F.2d at 169. Bobcar bears the

burden to show secondary meaning, and “[p]roof of

secondary meaning entails vigorous evidentiary

requirements.” Thompson Med. Co. v. Pfizer Inc., 753

F.2d 208, 217 (2d Cir. 1985) (citation omitted).

Critically, Bobcar must show that its product

acquired secondary meaning “before the infringement

began.” Braun Inc. v. Dynamics Corp. of Am., 975

F.2d 815, 826 (Fed. Cir. 1992) (citing Saratoga Vichy

Spring Co. v. Lehman, 625 F.2d 1037, 1043 (2d Cir.

1980)).

i. Advertising Expenditures

Advertising expenditures are “indirect evidence of

the possible effect that advertising might have on

consumers’ association of the trade dress with the

source of the product.” LVL XIII Brands, 209 F. Supp.

3d at 654–55 (citation omitted). And it is important to

keep in mind that advertising expenditures are of

“limited probative value” if the advertising has not

“effectively created secondary meaning.” Braun Inc.,

975 F.3d at 826–27. Bobcar argues that it has spent

millions of dollars on its promotional campaigns.

(Dkt. No. 147 at 13 (citing Dkt. No. 147-19).)

However, this represents its costs in carrying out the

Bobcar vehicle promotional campaigns purchased by

its customers. The fact that Bobcar lists its website

on its vehicles (see Dkt. No. 147-49), cannot convert

its core functions into advertisements. And while

Bobcar offers evidence that it utilizes brand

ambassadors, has sponsored at least one event, has

issued press releases, advertises on its website and

on social media, and has purchased print

37a

advertisements, it offers no evidence showing how

much money has been spent on these advertising

activities. Accordingly, this factor weighs against

Bobcar.

ii. Consumer Studies

Bobcar has failed to produce any consumer studies

to support secondary meaning. (Aardvark SOF ¶ 90.)

A consumer survey is not strictly required in this

Circuit. See LeSportsac, Inc. v. K mart Corp., 754

F.2d 71, 78 (2d Cir. 1985). However, “[a] consumer

survey is the most persuasive element in

demonstrating secondary meaning, because such a

survey provides direct evidence.” Ergotron, Inc. v.

Hergo Ergonomic Support Sys., Inc., No. 94 Civ. 2732,

1996 WL 143903, at *8 (S.D.N.Y. Mar. 29, 1996).

Bobcar curiously argues that Aardvark could have

procured a consumer survey, and thus Aardvark’s

failure to do so “lead[s] to an inference that it

believed a survey would have been unfavorable.”

(Dkt. No. 147 at 16.) However, it is black-letter law

that the plaintiff bears the burden of demonstrating

secondary meaning. See Thompson Med. Co., 753

F.2d at 217. It was Bobcar’s responsibility to procure

and marshal any and all evidence to support its trade

dress infringement claim. It cannot shift the

evidentiary burden of proof onto Aardvark in order to

escape its own failure to provide consumer-study

evidence. Accordingly, this factor weighs against

Bobcar.

iii. Unsolicited Media Coverage

As evidence of unsolicited media coverage, Bobcar

offers ten articles written about the Bobcar vehicle.

(See Dkt. Nos. 147-25, 147-28 to -36.) The Court

cannot evaluate the sufficiency of two of the articles,

because Bobcar offers only a photograph of the article

38a

rather than the article itself — and the photograph is

taken from too far a distance for the words of the

article to be readable. (See Dkt. Nos. 147-31, 147-33.)

Accordingly, these two articles must be excluded from

consideration. Three of the articles are about the

Pentax campaign’s use of the Bobcar vehicle. (See

Dkt. Nos. 147-25, 147-30, 147-36.) However, the

articles that Bobcar offers do not make it clear that

Bobcar is the source of the vehicle — indeed they

read as if Pentax created the vehicle itself. (See, e.g.,

Dkt. No. 147-25 (“Two Pentax BobCars are scooting

around a 15 mile radius in New York City . . . . I’m

happy to see [Pentax] trying something innovative to

get the word out about their products.”).) One article

is even entitled “Takin’ It to the People – The Pentax

Bobcar.” (Id.) Because this media coverage does not

refer to Bobcar as the company that created the

vehicle, it cannot support a finding of secondary

meaning. See LVL XIII Brands, 209 F. Supp. 3d at

658–59.

The remaining five articles offered do discuss

Bobcar as the source of the vehicle. (See Dkt. Nos.

147-28, 147-29, 147-32, 147-34, 147-35.) Aardvark

argues that Bobcar has not shown that this media

coverage was unsolicited. Cf. Nat’l Distillers Prods.

Co. v. Refreshment Brands, Inc., 198 F. Supp. 2d 474,

481 (S.D.N.Y. 2002) (evidence of media coverage did

not favor plaintiff where solicited). And while

Aardvark does not offer any evidence that the

coverage was not solicited, it is Bobcar’s burden to

show that it was. It has not done so. And even if it

had, none of these articles are from the relevant time

period — before the Aardy came onto the market in

2008. See Sports Traveler, Inc. v. Advance Magazine

Publishers, Inc., 25 F. Supp. 2d 154, 164 (S.D.N.Y.

1998) (holding that unsolicited media accrued after

39a

the date the infringement began “is irrelevant

because that is the date upon which [Plaintiff]’s trade

dress must have attained secondary meaning”)

Accordingly, this factor weighs against Bobcar.

iv. Sales Success

Bobcar has earned millions of dollars in revenue

from Bobcar vehicle campaigns. (See Dkt. No. 14719.) And while all of that revenue was not accrued by

the time that the Aardy went onto the market,

campaigns that ultimately brought in over $1 million

had begun by 2008. (Id.) The volume of sales success

here is robust enough such that this factor weighs in

favor of Bobcar.

v. Attempts to Plagiarize the Mark

“Evidence that a mark has been widely copied is

persuasive evidence of secondary meaning because it

demonstrates that the mark has become a strong

source identifier in the eyes of the purchasing public.”

Lopez v. Gap, Inc., 883 F. Supp. 2d 400, 428 (S.D.N.Y.

2012) (internal quotation marks and citation

omitted). Here, Bobcar presents no evidence of any

third-party copying. That alone may be enough for

this factor to weigh against Bobcar. See Metrokane,

Inc. v. The Wine Enthusiast, 160 F. Supp. 2d 633, 637

(S.D.N.Y. 2001) (“[S]ave for the copying alleged here,

there have been no attempts to plagiarize the . . .

trade dress.”)

Regarding Aardvark’s conduct, the relevant

question is whether Aardvark’s alleged “copying was

done deliberately, so as to benefit from [Bobcar’s]

name and good will.” Cartier, Inc. v. Four Star

Jewelry Creations, Inc., 348 F. Supp. 2d 217, 243

(S.D.N.Y. 2004). Bobcar argues that there is

sufficient evidence that Aardvark acted in bad faith

40a

and copied the Bobcar, based on (1) the lack of

documentation of any research and development on

the part of Aardvark; (2) the fact that the Aardy was

named after Aardvark, in the same way that the

Bobcar vehicle was named after Bobcar the company;

(3) evidence that Aardy originally had false “patent

pending” designations; and (4) the fact that no

intellectual property due diligence was conducted

regarding the Aardy. (See Dkt. No. 147 at 25–27.) On

this record, there is some evidence that Aardvark

acted in bad faith. However, this somewhat limited

evidence of Aardvark’s bad faith, coupled with the

absence of evidence that any third party intentionally

copied the Bobcar vehicle, does not sufficiently

“demonstrate[] that the mark has become a strong

source identifier in the eyes of the purchasing public.”

Lopez, 883 F. Supp. 2d at 428 (citation omitted).

Accordingly, this factor also weighs against Bobcar.

vi. Length and Exclusivity of Use

Bobcar argues that its trade dress has been

exclusive from July 2007 to present, and therefore

the use of its trade dress has been exclusive for over

twelve years. (Dkt. No. 147 at 18.) However, the

relevant question is the length and exclusivity of the

use as of the date that Aardvark entered the market.

See Sports Traveler, Inc., 25 F. Supp. 2d at 166. The

record is unclear on exactly what date in 2008 the

Aardy entered the market. At best, however, the

Bobcar enjoyed exclusive use of its trade dress for a

year and a half. This is insufficient to constitute

evidence of secondary meaning. See Cicena Ltd. v.

Columbia Telecomms. Grp., 900 F.2d 1546, 1552

(Fed. Cir. 1990) (holding that use of eighteen months

is “evidence point[ing] strongly away from a finding

of secondary meaning”). Accordingly, this factor too

weighs against Bobcar.

41a

***

The only secondary meaning factor weighing in

favor of Bobcar is its sales success. And “sales success

alone cannot establish secondary meaning.” GeigTech

E. Bay LLC v. Lutron Elecs. Co., 352 F. Supp. 3d 265,

284 (S.D.N.Y. 2018) (citation omitted). Therefore, as a

matter of law, Bobcar has not produced sufficient

evidence that its product acquired secondary meaning

“before the infringement began.” Braun Inc., 975 F.2d

at 826 (citation omitted). Accordingly, Bobcar’s trade

dress infringement claim must be dismissed.

3. Unfair Competition Claims

Bobcar asserts both federal- and state-law unfair

competition claims based on the same facts on which

its trade dress infringement claim is based. An unfair

competition claim under the Lanham Act requires a

showing (1) of a valid trademark entitled to

protection under the Act, and (2) that Defendant’s

actions are likely to cause confusion. Int’l Diamond

Importers, Inc. v. Oriental Gemco (N.Y.), Inc., 64 F.

Supp. 3d 494, 524 (S.D.N.Y. 2014) (citation omitted).

And under New York law, an unfair competition

claim “is subject to the same analysis as [a] Lanham

Act claim, except for the additional requirement of

bad faith.” Id. at 525. Because this Court has already

held that Bobcar’s trade dress is not protectable as a

matter of law, its federal- and state-law unfair

competition claims are dismissed as well. See

Maharishi Hardy Blechman Ltd. v. Abercrombie &

Fitch Co., 292 F. Supp. 2d 535, 552 (S.D.N.Y. 2003).

IV. Conclusion

For the foregoing reasons, Defendant’s motion to

exclude expert testimony is GRANTED. Defendant’s

motion for summary judgment is GRANTED.

42a

Plaintiff’s cross motion for summary judgment is

DENIED.

The Clerk of Court is directed to close the motions

at Docket Numbers 141 and 142, to enter judgment

on behalf of Defendant, and to close the case.

SO ORDERED.

Dated: April 6, 2020

New York, New York

/s/ J. Paul Oetken

J. PAUL OETKEN

United States District Judge

43a

Appendix D

NOTE: This disposition is nonprecedential.

UNITED STATES COURT OF APPEALS

FOR THE F EDERAL C IRCUIT

__________

B OBCAR M EDIA , LLC,

—v.—

Plaintiff-Appellant

A ARDVARK E VENT L OGISTICS , I NC .,

Defendant-Appellee

__________

2020-1847

__________

Appeal from the United States District Court for

the Southern District of New York in No. 1:16-cv00885-JPO, Judge J. Paul Oetken.

__________

JUDGMENT

__________

MORRIS E. COHEN, Goldberg Cohen LLP, New

York, NY, argued for plaintiff-appellant.

PETER STEVEN WEISSMAN, Blank Rome LLP,

Washington, DC, for defendant-appellee. Also represented by EVAN H. LECHTMAN, Philadelphia, PA.

__________

44a

THIS CAUSE having been heard and considered, it

is ORDERED and ADJUDGED:

PER CURIAM (MOORE, SCHALL, and TARANTO, Circuit

Judges).

AFFIRMED. See Fed. Cir. R. 36.

ENTERED BY ORDER OF THE COURT

March 5, 2021

Date

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

45a

Appendix E

UNITED STATES DISTRICT COURT

S OUTHERN D ISTRICT OF N EW Y ORK

__________

B OBCAR M EDIA , LLC,

—v.—

Plaintiff,

A ARDVARK E VENT L OGISTICS , I NC .,

Defendant.

__________

16-CV-885 (JPO)

__________

Telephone Conference

__________

New York, NY

April 23, 2019

11:30 a.m.

__________

Before:

HON. J. PAUL OETKEN

APPEARANCES

GOLDBERG COHEN LLP

BY: Attorneys for Plaintiff

BY: MORRIS E. COHEN

District Judge

46a

BLANK ROME LLP

BY: Attorneys for Defendant

BY: EVAN LECHTMAN

BY: PETER S. WEISSMAN

Transcript Page 13, Lines 1-25

MR. LECHTMAN: Yes.

MR. COHEN: Yes. Thank you.

THE COURT: Great. The next question is the

Daubert stuff. Do you want to put that on the same

schedule?

MR. LECHTMAN: As far as Daubert, at least as we

appreciate our Daubert motion as to the liability

expert offered by Bobcar, I can’t speak to what they

want to do, but we were planning on getting that on

file in short order, two weeks, with two weeks to

respond. But however your Honor wants to do it.

Is your Honor envisioning that we would do

Daubert at the same time as summary judgment? I

think the rules on Daubert may impact, may narrow

things from our perspective on summary judgment

for sure if there is no liability expert and that’s gone

and the like. So it may make our summary judgment

brief look a little different than if there was a liability

expert who could be relied on.

THE COURT: I understand. The problem is I have

400 civil cases. I have 75 motions for summary

judgment fully briefed. I’m not going to get to a Daubert

motion this summer. It’s just not possible. There is a

chance if I find that I look at it and it is something I can

bang out in five pages, but it is just not reasonable given

my workload. I wish things were easier, but they are

not. You can file it whenever you want. I just can’t

guarantee that I would get to it before

47a

Appendix F

UNITED STATES DISTRICT COURT

S OUTHERN D ISTRICT OF N EW Y ORK

__________

B OBCAR M EDIA , LLC,

—v.—

Plaintiff,

A ARDVARK E VENT L OGISTICS , I NC .,

Defendant.

__________

Civil Action No. 1:16-cv-00885-JPO

(JURY TRIAL DEMANDED)

__________

BOBCAR’S RULE 56.1 STATEMENT

OF MATERIAL UNDISPUTED FACTS

IN SUPPORT OF BOBCAR’S MOTION

FOR SUMMARY JUDGMENT

Morris E. Cohen (MC-4620)

Lee A. Goldberg (LG-9423)

GOLDBERG COHEN LLP

1350 Avenue of the America, 3rd Floor

New York, New York 10019

(646) 380-2087 (phone)

(646) 514-2123 (fax)

Mcohen@goldbergcohen.com

Lgoldberg@goldbergcohen.com

Attorneys for Plaintiff

48a

Pages 9 through 18

59. Aardvark claims it is competing better without

the trade dress. Id.

BOBCAR’S TRADE DRESS IS AKIN TO

PRODUCT PACKAGING

60. The Bobcar Mobile Showroom holds product

inside. Exhibit 1; Dkt. 12-7.

61. The Bobcar Mobile Showroom holds products

within the showroom. Exhibit 1; Dkt. 12-7.

62. The Bobcar Mobile Showroom can be opened to

access the product inside, or closed to bar access

to the product. Exhibit 1; Dkt. 12-7.

63. The showroom in the Bobcar Mobile Showroom

can be opened and closed by moving the panels.

Exhibit 1; Dkt. 12-7.

64. The products promoted by the Bobcar are

separate from the Bobcar in that they are put

inside and can be removed from the Bobcar, such

as digital cameras. Exhibit 1; Dkt. 12-7.

VI. BOBCAR’S

TRADE

SECONDARY MEANING

DRESS

HAS

A. Bobcar Has Expended Extensively on

Advertising

65. Bobcar expended millions of dollars on

promotional campaigns using its vehicle. Ex. 19,

including profit and loss statements from

campaigns for Clear Wireless, T-Mobile,

Olympus, Adorama, Pentax, and Sprint.

66. Bobcar lists its website on its vehicles, i.e.

bobcarmedia.com. Ex. 49 and B. Cohen Dec. ¶ 4.

49a

67. Bobcar’s brand ambassadors are individuals who

work with the vehicles to engage customers. Ex.

3 ¶ 55-56.

68. Bobcar has sponsored events such as the Fashion

Group International luncheon. Exhibit 20.

69. The sponsorship of the event

advertising for Bobcar. Exhibit 20.

served

70. Bobcar has issued press releases to advertise and

promote its “unique new medium,” i.e., its trade

dress. Exhibit 21.

71. The press releases in Exhibit 21 advertises the

Bobcar vehicles.

72. Bobcar’s customers have also issued press

releases about “the unique approach” of the

BobCar Showrooms, i.e. the trade dress. Exhibit

22 (Pentax press release).

73. The press release in Exhibit 22 advertises the

Bobcar vehicles.

74. Bobcar advertises via its website. Exhibit 23.

75. The website in Exhibit 23 advertises the Bobcar

vehicles.

76. Bobcar also advertises via social media. Exhibit

24. Bobcar also advertises via videos posted on

sites such as Vimeo. Exhibit 23 at 8.

77. Bobcar also advertises in print ads. Exhibit 27.

B. Consumer Studies Are Not Required or

Useful

78. Aardvark’s liability expert Mr. Hampton testified

that he rarely uses surveys. Ex. 9 at 251:9-252:4.

50a

79. He could not recall a single case in which he had

ever used a survey. Id. 252:6-15.

80. Based on years of experience as a trademark

lawyer, Mr. Hampton testified regarding surveys

that “they’re expensive. And even though courts

claim they want them, they seem like they knock

them out as much as they accept them. And, you

know, a quarter million dollars to have your

survey knocked out is not a way to ingratiate

yourself with your client.” Id. at 251:23-252:4.

C. Bobcar Has Had Substantial Unsolicited

Media Coverage

81. In October 2007, an article in “The Digital Story”

introduced readers to the Bobcars. Ex. 25.

82. This was unsolicited media coverage. Ex. 26, D.

Story Tx. at 43:9-23, 48:1-22.

83. In a deposition, the author Derrick Story

confirmed under oath that he is not affiliated

with Bobcar or any other any company that

makes marketing vehicles. Ex. 26, D. Story Tx.

at 43:9-23, 48:1-22.

84. He testified that his article was unsolicited. Id.

at 51:5-13.

85. He further testified that he wrote it because he

thought that the Bobcar was unique, interesting,

and innovative. Id. at 51:14-52:25.

86. The Digital Story article calls the Bobcar vehicle

“innovative.” See, Ex. 25.

87. The Digital Story article shows an image of the

Bobcar vehicle. See e.g., Ex. 25.

88. The Bobcar vehicle in Exhibit 25 embodies all

the features of Bobcar’s trade dress described in

51a

Bobcar’s Second Amended Complaint. Exhibit 25

and Dkt. 12 at ¶ 15.

89. There was also unsolicited media coverage about

the Bobcar in Ladylux. Ex. 28.

90. There was also unsolicited media coverage about

the Bobcar in the Robin Report. Ex. 29

91. There was also unsolicited media coverage about

the Bobcar in TechCrunch. Ex. 30.

92. There was also unsolicited media coverage about

the Bobcar in Beauty Store Business Magazine.

Ex. 31.

93. There was also unsolicited media coverage about

the Bobcar in Media Bistro. Ex. 32.

94. There was also unsolicited media coverage about

the Bobcar in Media Life Magazine. Ex. 33.

95. There was also unsolicited media coverage about

the Bobcar in Newsline. Ex. 34.

96. There was also unsolicited media coverage about

the Bobcar in Wireless Week. Ex. 35.

97. There was also unsolicited media coverage about

the Bobcar in EMbuzz. Ex. 36.

D. Bobcar Has

Success

Had

Substantial

Sales

98. Bobcar has generated millions of dollars of

revenue from vehicles using its trade dress. See,

Exhibit 19.

99. Bobcar was chosen for marketing programs by

major companies and industry leaders, including,

Samsung, T-Mobile, Verizon, Clear, Pentax,

Olympus, and Sprint. See e.g., Exhibit 19.

52a

100. Bobcar has received testimonials in writing from

customers.

101. John Legere, the CEO of T-Mobile, provided a

video testimonial calling the Bobcar product

“Unreal, guerrilla marketing at its finest …

creating havoc around New York City and

everywhere else.” See, Exhibit 37 (BOBCAR

4874).

102. John Rarrick, an executive at T-Mobile, praised

Bobcar’s success, stating that “it is very seldom

that a program delivers 100% of the results we

forecast. But it’s even rarer when you get

positive results that you didn’t even plan for.

Well that’s exactly what we got with Bobcar’s

mobile showroom program here in the

Northeast.” See, Exhibit 38 (BOBCAR 4875). See

also, Deposition of John Rarrick at 23:24-32:12.

E. Aardvark’s Bad Faith

(See, Likelihood of Confusion Section Below

F. The Length and Exclusivity of Use of

Bobcar’s Trade Dress is Undisputed

103. Aardvark’s expert Mr. Hampton could not

identify any use of Bobcar’s trade dress by a

third party from July 2007. See, Ex. 9, 164:2-11

(“Q: Are you aware of any evidence any third

party that uses the asserted trade dress in this

case or has used it from July 2007 on? … A: I’m

not aware.”) (emphasis added).

104. The “Bookmobile” that Aardvark cites is not a

promotional vehicle. See, 142-13, pg. 2 et seq.

105. The Bookmobile has no panels opening on three

sides. See, 142-13, pg. 2 et seq.

53a

106. The Bookmobile does not promote goods or

services for sale. See, 142-13, pg. 2 et seq.

107. The Bookmobile does not have a colorful front

cab and colorful back. See, 142-13, pg. 2 et seq.

108. The Bookmobile does not have advertising or

promotional materials on the panels visible in

the open and closed positions corresponding to a

brand and type of the goods or services in the

showroom. See, 142-13, pg. 2 et seq.

109. Aardvark has not produced any evidence in fact

discovery that the 100 year old “Bookmobile”

has been in use at any time from July 2004 to

the present. See e.g., Ex. 5, Rog. Response 6, pgs.

9-10.

110. Aardvark has not produced any evidence in fact

discovery of dates of actual use in commerce of

the vehicle shown in Dkt. 142-38. See e.g., Ex. 5,

Rog. Response 6, pgs. 9-10.

111. Aardvark has not produced any evidence in fact

discovery of dates of actual use in commerce of

the vehicle shown in Dkt. 142-45. See e.g., Ex. 5,

Rog. Response 6, pgs. 9-10.

112. Aardvark has not produced any evidence in fact

discovery of dates of actual use in commerce of

the vehicle shown in Dkt. 142-46. See e.g., Ex. 5,

Rog. Response 6, pgs. 9-10.

113. Aardvark has not produced any evidence in fact

discovery of dates of actual use in commerce of

the vehicle shown in Dkt. 142-47. See e.g., Ex. 5,

Rog. Response 6, pgs. 9-10.

114. Aardvark has not produced any evidence in fact

discovery of dates of actual use in commerce of

54a

the vehicle shown in Dkt. 142-40. See e.g., Ex. 5,

Rog. Response 6, pgs. 9-10.

115. Aardvark has not produced any evidence in fact

discovery of any dates of actual use in commerce

of the vehicle shown in Dkt. 142-41, before July

2007. See e.g., Ex. 5, Rog. Response 6, pgs. 9-10.

116. Aardvark has not produced any evidence in fact

discovery of any dates of actual use in commerce

of the vehicle shown in Dkt. 142-42, before July

2007. See e.g., Ex. 5, Rog. Response 6, pgs. 9-10.

117. Aardvark has not produced any evidence in fact

discovery of dates of actual use in commerce of

the vehicles shown in Dkt. 142-43 at any time

from July 2004 – the present. See e.g., Ex. 5,

Rog. Response 6, pgs. 9-10.

118. Aardvark has not produced any evidence in fact

discovery of dates of actual use in commerce of

the vehicles shown in Dkt. 142-44 at any time

from July 2004 – the present. See e.g., Ex. 5,

Rog. Response 6, pgs. 9-10.

G. Bobcar Provided Yet Further Evidence

of Secondary Meaning

119. During discovery, Bobcar also provided data

that Bobcar vehicles generate thousands of

conversations, hundreds of thousands of

primary impressions, and eleven million

roadside impressions

VII. THE AARDY CREATES A LIKELIHOOD OF

CONFUSION

A. Both Parties’ Experts Were Confused

120. Aardvark’s damages expert testified that he saw

a mobile marketing vehicle on the street that

55a

looked like an Aardy, but he couldn’t tell

whether it was an Aardy or a Bobcar. Exhibit 7,

Urbanchuk Transcript at 256:1-16.

121. Aardvark’s damages expert Mr. Urbanchuk also

testified that he spent about 90 hours on his

expert report (Ex. 7. at 41:14-21), and then

spent 16-20 hours preparing for his deposition

(id., at 11:14-12:10).

B. Bobcar’s Trade Dress is Strong

122. Bobcar is both the name of the Plaintiff’s

company and the name of its mobile showroom

vehicle. See e.g., Exhibit 23.

C. The Accused Aardy is Extremely Similar

to Bobcar’s Trade Dress

123. Molly Kennedy, an agency executive for

T-Mobile, stated in email correspondence that

the Aardy is “a close rendition of the Bobcar.”

Ex. 39.

124. Stanley Wisniewski of T-Mobile stated in email

correspondence that Aardvark has a vehicle

“very similar to what we used recently.” Ex. 39

125. Molly Kennedy, an agency executive for

T-Mobile, provided a recap of a conference in

which she referred to Aardvark stating “Very

comparable to the Bobcar.” Ex. 40.

D. The Parties’ Products are Proximate

and There is No Gap to Bridge

126. Aardvark’s expert stated that Bobcar and

Aardvark “often compete for the same clients

and utilize similar marketing strategies.”

Exhibit 8, Hampton Report at p. 5 ¶17.

56a

E. There Has

Confusion

Been

Actual

Consumer

127. Bobcar’s President has stated, in statements

made under penalty of perjury, that he has

repeatedly

encountered

actual

confusion

between the Bobcar and the Aardy. See, Exhibit

48, B. Cohen Dep. at 108:12 - 109:9; 193:18 195-16; 209:13 - 212:13; 213:24 - 215:8; 221:17 222:5; 226:12 - 227:4; B. Cohen Dec. ¶ 7; Dkt.

142-9 at 17, Rog Response 20.

F. Aardvark Adopted Bobcar’s Trade Dress

in Bad Faith

128. Aardvark’s CEO testified that he has built

thousands of promotional vehicles. Ex. 10 at

53:11-12 & 54:4-7.

129. Aardvark has not produced images in discovery

of any promotional vehicles used in commerce by

Aardvark before July 2007 and bearing the

Bobcar’s trade dress.

130. Aardvark contends it came up with the Aardy in

2008.

131. Aardvark has not provided documentation of

any research and development by Aardvark

with respect to the Aardy when the Aardy was

allegedly created in 2008.

132. Larry Borden, the CEO of Aardvark sent out an

email dated August 19, 2015, with the subject

“BobCar” to Jasun Romain and Chris Makos of

his company. Ex. 41.

133. In the email, he circulated images of a car that

Turtle Transit was building for Bobcar. Ex. 41.

134. In the email, Mr. Borden stated: “Check this

out. Apparently Turtle Transit is building

57a

BobCar vehicles on the backs of some sort of car

….. this is actually a good idea ….. we might

want to jump on something like this quickly.”

Ex. 41.

135. Aardvark has represented that its Aardy is

“patent pending.” Exhibit 42 (footer of each page

and body of last page).

136. Those “patent pending” designations were all

false. See, Ex. 10, Borden Dep. at 137:10-20.

137. Aardvark never filed a single patent application

to the Aardy. Id.

138. When asked about these false statements, Mr.

Borden claimed he never saw them before they

went out, and would have taken them off if he

had. Ex. 10, Borden Deposition at 137:21-138:6.

139. However, the false information was in an email

from his own email account. See, Ex. 43, Ex. 10,

L. Borden deposition at 140:16 - 142:17.

140. Mr. Borden claimed he didn’t know who wrote

that email. Id.

141. He also alleged that he immediately put an end

to the false statements. Id at. 151:9-19.

142. But, in fact, a further email was sent from his

account a few months later again with the same

false statements. Ex. 44.

143. When asked why the false statements continued

to go out from his email account he had no

answer. Ex. 10, L. Borden Deposition at 161:23163:7.

144. A May 22, 2018 deposition was conducted of

Aardvark’s Account Director Chris Makos.

58a

145. Mr. Makos was shown the promotional material

with the false statements and was asked who

created it. Ex. 11.

146. He testified that the material was created by

Mr. Borden, and solely by Mr. Borden. Ex. 11, C.

Makos Deposition at 115:10 – 116:12.

147. He also testified that all such materials have to

go through Mr. Borden. Id.

148. The Bobcar was patent-pending in 2008 and has

since been the subject of multiple issued

patents. See e.g., Dkt. 12-1, 12-2, 12-3, 12-4, 125, 12-6.

149. Aardvark arranged to place Aardys in locations

the day before the Bobcars would be appearing

there. Exhibit 45.

150. Mr. Borden did not conduct any intellectual

property due diligence regarding the Aardy. See,

Ex. 10, Borden Dep. at 345:19-21, 346:20 - 347:5,

347:6-15, 349:11-14.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.