Petition for Writ of Certiorari — Quick Point, Inc. v. Pacific Handy Cutter, Inc.

Supreme Court, U.S.

FILED

981269 FEBS 1999

OFFICE OF THE CLERK

No. 98-

IN THE

Supreme Court of the Gnited States

OCTOBER TERM, 1998

QUICK POINT, INC..,

Petitioner.

Vv.

PACIFIC HANDY CUTTER, INC..

Respondent

On Petition for a Writ of Certiorari to the

United States Court of Appeals for the Federal Circuit

PETITION FOR A WRIT OF CERTIORARI

GREGORY E. UPCHURCH

Counsel of Record

THOMPSON COBURN

One Mercantile Center

St. Louis, MO 63101

(314) 552-6580

Counsel for Petitioner

QUESTIONS PRESENTED

1. Indesign patent cases, have precedents of the Court of

Appeals for the Federal Circuit in effect overruled Gorham Co.

v. White, 81 U.S. (14 Wall.) 511 (1871)?

2. Is there a irrebuttable presumption, found in the Court

of Appeals for the Federal Circuit’s precedent but not in the

Statute, that design patents have practically no scope?

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RULE 29.1 LISTING

There are no parent or subsidiary corporations (other than

wholly owned subsidiaries) of either party.

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TABLE OF CONTENTS

Page

Questions Presented ..........--. Sore PPP ak

Rule 29.1 Listing .......--.-..--- Pe ee oe i

Table of Contents ........... OP EE ETE Perea

Table of Authorities ...........-. Poem See E Ee

Petition For Writ of Certiorari .

Introductory Prayer .......-----++++ee0: Sean ee

Opinions Below .......------++++++++>: Fagin aloe ts

eee eee ee uae eae

Statutory Provision Involved ....-...----+++--++++00:

Statement of the Case... .....-.--- eee eee e re eeeees l

A. Fetroduction ... 2... ccc cece cece cee r cece:

B. The Parties and the Patents at Issue..........- |

C. Proceedings .........-----seceecereerceee: 2

Reasons for Granting the Writ ........-.----+--+-++> 2

SRE Ee ree ee ee ee 9

Appendices:

Judgment Without Opinion of Circuit Court .........-.- la

Notice of Entry of Judgment Without Opinion ........-. 2a

Order of Final Judgment ........-------ee seer eeree 3a

Decision of District Court ........----- ee ee eee eeees Sa

iV

TABLE OF AUTHORITIES

Page(s)

FEDERAL CASES:

American Eagle Wheel Corp. v. American Racing

Equipment, Inc., 129 F.3d 135 (Fed. Cir. 1997) ...... 8

Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed.

CR Pe er hte e shes eee et eaese rte ean ks 8

Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871) . passim

In re Mann, 861 F.2d 1581 (Fed. Cir. 1988) .......... 7,8

Pacific Handy Cutter Inc. v. Quick Point, Inc., 43

Uses 1624 Ca 1999) on cde ec ceee ceases ]

FEDERAL STATUTES:

WMUSLAM eee 1,8

PETITION FOR WRIT OF CERTIORARI

Quick Point, Inc., respectfully petitions for a writ of

certiorari to review the judgment of the United States Court of

Appeals for the Federal Circuit in this Case.

OPINIONS BELOW

The Court of Appeals for the Federal Circuit affirmed

without opinion, which action is reported at: 1998 WL 781239

(Fed.Cir. 1998). The district court opinion is reported at: 1997

WL 607501 (C.D.Cal. 1997) and 43 USPQ2D 1624 (C.D.Cal.

1997).

JURISDICTION

The Court of Appeals entered its judgment on November

10, 1998 (App., infra, 1a). The jurisdiction of this Court is

invoked under 28 U.S.C. § 1254(1).

STATUTORY PROVISION INVOLVED

The only statute dealing with the test for design patent

infringement is 35 U.S.C. § 289 which provides an additional

remedy in design patent cases against those who use or sell “the

patented design, or any colorable imitation thereof”.

STATEMENT OF THE CASE

A. Introduction

Petitioner Quick Point, Inc. (“Quick Point”) seeks review

of a judgment without opinion of the Court of Appeals for the

Federal Circuit. That judgment affirmed a summary judgment

of non-infringement of six of Quick Point’s design patents.

B. The Parties and the Patents at Issue

Both Respondent Pacific Handy Cutter, Inc. ("Pacific

Handy Cutter") and Petitioner Quick Point manufacture

envelope openers. Quick Point obtained design patents on

several of its products, including the six (6) design patents at

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2

issue (the "Quick Point Patents” or the "Quick Point Openers").

Several of the designs themselves are reproduced in the

argument section of this petition, infra.

C. Proceedings Below

Pacific Handy Cutter brought the instant action seeking a

declaration that it did not infringe the Quick Point Patents and

that the Quick Point Patents were invalid.

Pacific Handy Cutter filed for summary judgment on the

issue of non-infringement and on July 7, 1997 the district court

found that none of the six design patents were infringed [App..,

infra., S5a-15a]. All other issues between the parties were

subsequently resolved and final judgment was entered. [App..,

infra., 3a-4a]. The Court of Appeals affirmed without opinion

on November 10, 1998 [App., infra., la]

REASONS FOR GRANTING THE WRIT

In Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871),

this Court set out the test for design patent infringement which

has been uniformly cited and purportedly followed ever since.

The Court stated the test in Gorham to be as follows:

“{I}f, in the eye of an ordinary observer, giving such

attention as a purchaser usually gives, two designs are

substantially the same, if the resemblance is such as to

deceive such an observer, inducing him to purchase

one supposing it to be the other, the first one patented

is infringed by the other.” 81 U.S. at 528.

The Court in Gorham also stated the following, which is

particularly relevant when comparing designs having different

levels of complexity:

“We are now prepared to inquire what is the true test

of identity of design. Plainly, it must be sameness of

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appearance, and mere difference of lines in the

drawing or sketch, a greater or smaller number of

lines, or slight variances in configuration, if

insufficient to change the effect upon the eye, will not

destroy the substantial identity. An engraving which

has many lines may present to the eye the same

picture, and to the mind the same idea or

conception as another with much fewer lines. The

design, however, would be the same.” (Emphasis

added) 81 U.S. at 526-27.

The Court in Gorham, faced with a design which featured both

ornamentation and an outline or configuration of the object

decided that “the outline or configuration is most impressive to

the eye” and was therefore the proper point for comparison. 81

U.S. at 528-29.

Neither the Court of Appeals nor the district court even

pretended to follow these holdings from Gorham.

The legal error committed by the district court and the

Court of Appeals is readily seen by just looking at what the

Supreme Court held to be infringing in Gorham and then

comparing that result with the non-infringement holdings, on

summary judgment, in the case below.

In Gorham, the patented design is the one to the left. The

two designs to the rights were held to be infringing. These

drawings are found at 81 U.S. (14 Wall.) at 521. Note that both

infringing designs in Gorham differed significantly from the

patented design in the degree of detail present. Nevertheless,

the Court held there was infringement.

5

Contrast the result in Gorham with the following example

from the present case. In this example, the district court found,

and the Court of Appeals affirmed, that the design on the top

row was not infringed by the design on the bottom row.

‘184 Patented Design

U.S. Patent Sep. 2, 992 Des. 339,184

AGS Fi

6

Similarly, the district court found, and the Court of

Appeals affirmed, that with respect to the designs below the

design on the top row (Petitioner’s patented design) was not

infringed by the design on the bottom row.

“183 Patented Design

US. Patext Sen 2, 2982 Des. 329,183

WiGs FIR 2 Figs

& | | | |

Pacific Handy Cutter Design

Fug. t.

ay ad Frag. 5.

fig. 4.

Fg: 4:

SS

The other four examples of the comparisons of the designs in

the case below are similar.

es

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How can the district court’s holding, and the Court of

Appeals’ affirmance, be reconciled with the holding in Gorham

and with the language in Gorham that:

“An engraving which has many lines may present

to the eye the same picture, and to the mind the

same idea or conception as another with much

fewer lines. The design, however, would be the

same.” (Emphasis added) 81 U.S. at 526-27.

They cannot. The courts are paying lip service to Gorham, and

are ignoring its reasoning and its holding.

How have we reached the position that a court need only

point out differences between the patented and accused designs

to find non-infringement? We have been led down that path by

a line of Court of Appeals for the Federal Circuit cases that

started with Jn re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988).

The district court used Mann to determine the scope of the

design patents at issue in this case. Specifically, the district

court’s entire discussion of claim scope in this case consists of

the following statement, citing Mann as authority:

“Design patents are extremely narrow in scope.”

(App., infra. 7a.)

With this as the test, practically any difference between the

accused and patented designs is enough to avoid infringement.

But Mann is wrong. One cannot look at the designs in

Gorham and conclude that design patents are extremely narrow

in scope, as the district court said, or that, in the language of

Mann itself:

“Design patents have almost no scope.” 861 F.2d at

1582.

8

If design patents have almost no scope, then any differences

between the patented and accused designs will result in a

finding of non-infringement. That result cannot be reconciled

with Gorham.

The error in Mann which misled the district court would be

fairly harmless if it were an isolated occurrence, but it is not.

Mann has been followed by the Court of Appeals for the

Federal Circuit in several subsequent cases. See, e.g., Elmer v.

ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995);

American Eagle Wheel Corp. v. American Racing Equipment,

Inc., 129 F.3d 135 (Fed. Cir. 1997)(“the scope of what the

design patent claims must be construed narrowly”)(emphasis

added).

Given the Court of Appeals for the Federal Circuit’s detour

along the path set by Mann, it had no choice but to affirm the

district court’s decision in this case.

Not only is it impossible to reconcile the Mann rule with

Gorham, it is also impossible to reconcile it with the statute.

Title 35, § 289 provides for the recovery of a design

infringer’s profit. (This is an additional remedy for design

patent infringement which is not available against utility patent

infringers.) This remedy is available when the infringer

“applies the patented design, or any colorable imitation

thereof” to an article of manufacture. (Emphasis added). It

would be strange indeed if there was no liability for “colorable

imitations” of a patented design, but there was a remedy. If

Mann is correct, if design patents have “almost no scope”, then

what can the statute possibly be talking about?

There is only one answer. Mann is not correct. Gorham

tells us how to properly determine design patent infringement,

but the lower courts have encrusted additional restrictions on

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design patents so that the result in Gorham would be

impossible to reach today.

It is respectfully submitted that Gorham and the statute are

controlling, and that the Court of Appeals for the Federal

Circuit and the district court below are in error.

CONCLUSION

The petition for a writ of certiorari should be granted.

Respectfully submitted,

GREGORY E. UPCHURCH

Counsel of Record

THOMPSON COBURN

One Mercantile Center

St. Louis, MO 63101

(314) 552-6580

Counsel for Petitioner

APPENDICES

7

ia

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

98-1167, -1220

PACIFIC HANDY CUTTER, INC.,

Plaintiff-Cross-Appellant,

v.

QUICK POINT, INC.,

Defendant-Appellant.

FILED U.S. COURT OF APPEALS

FOR THE FEDERAL CIRCUIT, NOV 10 1998

JAN HORBALY CLERK

JUDGMENT

ON APPEAL from the United States District Court for the

Central District of California

In CASE NO(S). 96-CV-399

This CAUSE having been heard and considered, it is

ORDERED AND ADJUDGED: AFFIRMED. See Fed. Cir. R.

36

Per Curiam (NE‘VMAN, RADER, and BRYSON, Circuit

Judges)

ENTERED BY ORDER OF THE COURT

DATED NOV 10 1998 /s/JAN HORBALY PBS

Jan Horbaly, Clerk

ISSUED AS A MANDATE: DECEMBER 1, 1998

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is not

citable as precedent. It is a public record. The disposition will

appear in tables published periodically.

2a

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

NOTICE OF ENTRY OF

JUDGMENT WITHOUT OPINION

JUDGMENT ENTERED: 11/10/98

The judgment of the court in your case was entered today

pursuant to Rule 36. This Court affirmed the judgment or

decision that was appealed. None of the relief sought in the

appeal was granted. No opinion accompanied the judgment.

The mandate will be issued in due course.

Information is also provided about petitions for rehearing

and suggestions for rehearing in banc. The questions and

answers are those frequently asked and answered by the Clerk’s

Office.

No costs were taxed in this appeal.

Exhibits and visual aids shall be promptly retrieved by the

party that lodged them with this court.

JAN HORBALY

Clerk

CC: GREGORY E. UPCHURCH

GUY P. SMITH

PACIFIC HANDY CUTTER V QUICK POINT, 98-1167

DCT CD/CZ - 96-CV-399

3a

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

SOUTHERN DIVISION

PACIFIC HANDY CUTTER, INC.,

Plaintiff,

VS.

QUICK POINT, INC.,

Defendant.

Case No. SA CV 96-399 GLT (Eex)

STIPULATION TO DISMISS DEFENDANT

QUICK POINT’S COUNTERCLAIM FOR

A DECLARATORY JUDGMENT WITH REGARD

TO PACIFIC HANDY CUTTER’S U.S. PATENT

NO. Des. 355,347 AND FOR ENTRY OF

FINAL JUDGMENT; ORDER THEREON

FILED Nov 25, 1997

CLERK, U.S. DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

SANTA ANA OFFICE

BY DEPUTY

ENTERED

Nov 26, 1997

CLERK, U.S. DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

SANTA ANA OFFICE

BY DEPUTY

The parties, subject to the approval of the Court, through

their respective counsel, hereby stipulate to the dismissal

ta

without prejudice of Quick Point’s Counterclaim for

declaratory relief that Pacific Handy Cutter’s U.S. Patent No.

Des. 355,347 (347 Patent) is invalid and unenforceable and for

entry of final judgment.

The parties will bear their own costs and fees with regard

to the claim involving the ’347 Patent.

Dated: November 20, 1997 /s/Charles Rosenberg

Charles Rosenberg, a member

of OPPENHEIMER POMS

SMITH

Attorneys for Plaintiff

Dated: November 12, 1997 /s/John J. Quinn

John J. Quinn

Jonathan Gluck, members of

RIORDAN & McKENZIE

Attorneys for Defendant

Quick Point, Inc.

ORDER

IT IS SO ORDERED:

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Dated: 11-25-97 /s/ iB R

Judge

Sa

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

SOUTHERN DIVISION

PACIFIC HANDY CUTTER, INC.,

Plaintiff,

VS.

QUICK POINT, INC.,

Defendant.

Case No. SA CV 96-399 GLT (Eex)

ORDER GRANTING PLAINTIFF’S MOTION FOR

SUMMARY ADJUDICATION OF NON-INFRINGEMENT

Calendar Item # 22

FILED July 7, 1997

CLERK, U.S. DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

SANTA ANA OFFICE

BY DEPUTY

Plaintiffs Motion for Summary Adjudication is

GRANTED.

Under Fed.R.Civ.P. 56, the party moving for summary

judgment or adjudication has the burden of showing there are

no genuine issues of material fact so the party is entitled to

judgment as a matter of law. The question in a summary

adjudication motion therefore is whether the evidence,

considered with any reasonable inferences drawn from that

evidence, establishes a “genuine issue as to any material fact.”

See United Steel Workers of America v. Phelps Dodge Corp.,

865 F.2d 1539, 1540 (9th Cir.1989). The Supreme Court has

. ee

6a

held that a dispute is “genuine” for the purposes of summary

judgment if a reasonable jury could return a verdict for the

nonmoving party. Anderson v. Liberty Lobby, 477 U.S. 242,

248; Winner International Corp. v. Wolo Mfg. Corp., 905 F.2d

375, 376 (Fed.Cir.1990).

Plaintiff Pacific Handy Cutter moves for summary

adjudication of non-infringement as to each of its six letter

opener designs.' According to Cutter, none of its letter opener

designs infringe Defendant Quick Point’s letter opener patents.’

Quick Point argues (1) there is a triable issue of fact as to

infringement, or, in the alternative, (2) this motion is premature

because discovery is ongoing.

Cutter holds two design patents and has applied for four others.

Cutter has been issued the following two patents: (1) U.S. Design

Patent No. 353,316, issued on December 13, 1994 (Cutter’s Basic Opener)

and (2) U.S. Design Patent No. 355,347, issued on Feb. 14, 1995

(Cutter’s House Opener).

Cutter has filed the following applications for design patents: (1)

Application Serial No. 29/051,952 (Cutter’s Business Card Opener); (2)

Application Serial No. 29/048,677 (Cutter’s Telephone Opener); (3)

Application Serial No. 29/048,655 (Cutter’s Computer Opener); (4)

Application Serial No. 29/048,654 (Cutter’s Truck Opener).

> Quick Point has been issued the following design patents for its letter

openers: (1) U.S. Design Patent No. 306,394, issued on March 6, 1990

(Quick Point’s Basic Opener); (2) U.S. Design Patent No. 350,770,

issued on Sept. 20, 1994 (Quick Point’s Business Card Opener); (3) U.S.

Design Patent No. 329,183, issued on Sept. 8, 1992 (Quick Point’s

Telephone Opener); (4) U.S. Design Patent No. 342,008, issued on Dec.

7, 1993 (Quick Point’s Computer Opener); (5) U.S. Design Patent No.

355,108, issued on Feb. 7, 1995 (Quick Point Truck Opener); (6) U.S.

Design Patent No. 329,184, issued on Sept. 8, 1992 (Quick Point House

Opener).

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The Court concludes Cutter’s letter opener designs do not

infringe Quick Point’s design patents.

A design patent protects the non-functional aspects of an

ornamental design as shown in the patent. Elmer v. ICC

Fabricating, Inc., 67 F.3d 1571, 1577 (Fed.Cir.1995);

KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d

1444, 1450 (Fed.Cir.1993). Design patents are extremely

narrow in scope. See Jn re Mann, 861 F.2d 1581, 1582

(Fed.Cir.1988) A design patent’s claim is limited to what is

shown in the application drawings. See id.

To establish infringement, the patentee must prove both

“substantial similarity” and appropriation of the “points of

novelty.” Sun Hill Industries, Inc. v. Easter Unlimited, Inc., 48

F.3d 1193, 1197 (Fed.Cir.1995) (citing Shelcore, Inc. v.

Durham Indus., Inc., 745 F.2d 621, 628 n. 16 (Fed.Cir.1984)).

Substantial similarity is determined through a visual

comparison of the patented and accused designs. See Elmer, 67

F.3d at 1577; see also Gorham Co. v. White, 81 U.S. (14 Wall.)

511, 518, 20 L.Ed. 731 (1871) (“if, in the eye of an ordinary

observer, giving such attention as a purchaser usually gives,

two designs are substantially the same . . . inducing him to

purchase one supposing it to be the other, the first one patented

is infringed by the other.”). Because the Court concludes no

reasonable jury could conclude the designs are substantially

similar, it does not address whether the alleged infringing

designs have appropriated the patentee’s points of novelty.

8a

I. SUBSTANTIAL SIMILARITY

A. “Basic Opener”

In support of its Motion for Summary Adjudication, Cutter

submits its '316 Design Patent, Exhibit 1,° and Quick Point’s

'394 Patent, Exhibit 2. According to Cutter, it is evident from

the drawings incorporated in the patents that the two designs

are not substantially similar as a matter of law. The Court

agrees.

First, each opener has a markedly different blade

apparatus. The Quick Point design’s thin, pointed “finger tip”

extends the full length of the opener, while the Cutter opener’s

“finger tip” is thicker, trapezoidal and extends only three-

quarters of the length of the opener. The Cutter opener’s blade

has holes; the Quick Point opener’s blade does not. Second,

the Quick Point opener has a clear window on its face; the

Cutter opener’s face is solid. Last, the Cutter opener includes

what looks like a ruler along its top edge. The Quick Point

opener’s top edge is smooth.

After examining the two designs, the Court concludes no

reasonable jury could find Cutter’s Basic Opener design to be

substantially similar to Quick Point’s Basic Opener design.*

Summary adjudication of non-infringement as to Quick Poini’s

'394 patent is appropriate.

: All citations to exhibits refer to those attached to the Declaration of

Charles Rosenberg submitted in support of Plaintiff's Motion for Summary

Adjudication.

* The U.S. Patent Office had the opportunity to compare the

similarities and differences between these two designs when it issued

Cutter a patent over its design. See National Presto Industries, Inc. v.

West Bend Co., 76 F.3d 1185, 1192 (Fed.Cir.1996).

9a

B. “Business Card Opener”

In support of its Motion for Summary Adjudication, Cutter

submits drawings attached to its '952 Design Patent

Application, Exhibit 8, and Quick Point’s '770 Patent, Exhibit

7. It is evident from the drawings the two designs are not

substantially similar as a matter of law.

As with the Basic Opener, each party’s Business Card

Opener incorporates a different blade apparatus. See supra,

section I.A. Also as with the Basic Opener, Cutter’s Business

Card Opener has what looks like a ruler along its top edge;

Quick Point’s Business Card Opener does not include this

feature. Moreover, it appears Quick Point’s Business Card

Opener is considerably thicker than Cutter’s. Last, Quick

Point’s Business Card Opener has several horizontal ridges

below the business card window; Cutter’s Business Card

Opener has no similar ridges.

The Court concludes no reasonable jury could find Cutter’s

Business Card Opener design to be substantially similar to

Quick Point’s Business Card Opener design. Thus, summary

adjudication of non-infringement as to Quick Point’s '770

patent is appropriate.

C. “Telephone Opener”

In support of its Motion for Summary Adjudication, Cutter

submits drawings attached to its '677 Design Patent

Application, Exhibit 13, and Quick Point’s '183 Patent, Exhibit

12. According to Cutter, it is evident from the drawings the

two designs are not substantially similar as a matter of law.

The Court agrees.

First, each of the two Telephone Openers has a markedly

different blade apparatus. See supra, section I1.A. Second,

Quick Point’s Telephone Opener is significantly more detailed

10a

than Cutter’s. Quick Point’s Telephone Opener incorporates

raised buttons and a detailed handset, whereas Cutter’s

Telephone Opener does not include similar detail. Last, Quick

Point’s Telephone Opener has a clear window above the blade;

Cutter’s Telephone Opener has no similar feature.

The Court concludes no reasonable jury could find Cutter’s

Business Card Opener design to be substantially similar to

Quick Point’s Business Card Opener design. Thus, summary

adjudication of non-infringement as to Quick Point’s '183

patent is appropriate.

D. “Computer Opener”

In support of its Motion for Summary Adjudication, Cutter

submits drawings attached to its ‘655 Design Patent

Application, Exhibit 19, and Quick Point’s '008 Patent, Exhibit

18. According to Cutter, it is evident from the drawings the

two designs are not substantially similar as a matter of law.

The Court agrees.

First, as in the other designs, each party's Computer

Opener uses a different blade apparatus. See supra, section I.A.

Second, Quick Point’s Computer Opener is more detailed than

Cutter’s Computer Opener. Where Quick Point’s Opener

includes detail of a computer keyboard, disk drive and monitor,

Cutter’s Computer Opener is a mere outline of a computer.

Moreover, the shape of each computer is entirely different.

Quick Point’s computer is much more easily recognizable as a

computer. Cutter’s computer, on the other hand, looks like one

smaller, rounded rectangle resting on a longer, sharper

rectangle.

The Court concludes no reasonable jury could find Cutter’s

Telephone Opener design to be substantially similar to Quick

Point’s Telephone Opener design. Thus, summary adjudication

lla

of non-infringement as to Quick Point’s '008 patent is

appropriate.

E. “Truck Opener”

In support of its Motion for Summary Adjudication, Cutter

submits drawings attached to its '654 Design Patent

Application, Exhibit 25, and Quick Point’s '108 Patent, Exhibit

24. It is evident from the drawings the two designs are not

substantially similar as a matter of law.

Again, each party’s truck opener uses a different blade

apparatus. See supra, section I.A. Also as with the other

designs, Quick Point’s Truck Opener is significantly more

detailed than Cutter’s design. The cab of Quick Point’s tractor

trailer has a stylized door, window and windscreen, whereas

there is only a window on Cutter’s design. Further, the cab of

Quick Point’s tractor appears to extend to the top of the trailer;

Cutter’s cab reaches only half the distance up the trailer. In

addition, it appears Quick Point’s design includes a clear

window on the trailer; Cutter’s Truck Opener is solid.

The Court concludes no reasonable jury could find Cutter’s

Truck Opener design to be substantially similar to Quick

Point’s Truck Opener design. Summary adjudication of non-

infringement as to Quick Point’s '108 patent is appropriate.

F. “House Opener”

In support of its Motion for Summary Adjudication, Cutter

submits its '347 Design Patent, Exhibit 30, and Quick Point’s

'184 Patent, Exhibit 29. According to Cutter, it is evident from

the drawings incorporated in the patents that the two designs

are not substantially similar as a matter of law. The Court

agrees.

As with the other openers, each of the parties’ House

Openers uses a different blade apparatus. See supra, section

12a

[.A. Also as with the other openers, Quick Point’s House

Opener is more detailed than Cutter’s House Opener. Quick

Point incorporates a stylized chimney with detailed bricks and

a roof with horizontal ridges. Cutter’s House Opener is merely

in the shape of a crude house. Further, Quick Point’s House

Opener has a large, clear window across its front; Cutter’s

opener has a smooth, flat surface.

The Court concludes no reasonable jury could find Cutter’s

House Opener design to be substantially similar to Quick

Point’s House Opener design. Thus, summary adjudication of

non-infringement as to Quick Point’s '184 patent is appropriate.

In sum, it is readily apparent from a comparison of each

letter opener at issue that Cutter’s designs are not substantially

similar to Quick Point’s. Generally, it appears Cutter’s designs

are markedly less detailed than Quick Point’s designs.

Moreover, the parties use a significantly different blade

apparatus on each’s letter openers. The Court holds, as a

matter of law, no reasonable jury could conclude there is

substantial similarity between any of the six designs at issue.

II. DISCOVERY ISSUES

Quick Point contends summary adjudication of non-

infringement is premature because it has not yet completed

discovery. According to Quick Point, it intends to perform

consumer surveys to determine whether the “ordinary observer”

would conclude the designs are substantially similar.° In

addition, Quick Point argues discovery will uncover evidence

‘

Quick Point also argues it needs discovery to determine the relevant

prior art for purposes of determining whether Cutter has appropriated its

“points of novelty.” In light of the Court’s holding the designs are not

substantially similar as a matter of law, an inquiry into prior art is

unnecessary .

13a

Cutter had access to Quick Point’s designs when it developed

its own letter openers. Last, Quick Point argues it has not yet

received responses to relevant discovery served upon Cutter.

The Court concludes the discovery Quick Point intends to

perform would not raise a triable issue of fact as to non-

infringement. Accordingly, summary adjudication of non-

infringement is appropriate at this point in the proceedings.

Under Fed.R.Civ.Proc. 56(f), the party opposing summary

adjudication bears the burden of showing what facts it hopes to

discover to raise a triable issue of fact. Terrell v. R.D. Brewer,

935 F.2d 1015, 1018 (9th Cir.1991). Where additional

discovery would not preclude summary judgment, it is

appropriate to deny a Rule 56(f) request for a continuance.

Harris v. Duty Free Shoppers Limited Partnership, 940 F.2d

1272, 1276 (9th Cir.1991).

First, evidence relating to consumer confusion would not

raise a triable issue of fact. A finding of infringement or of

non-infringement may, as a matter of law, be made relying

“exclusively or primarily on a visual comparison of the

patented design, as well as the device that embodies the design,

and the accused device’s design.” See Braun Inc. v. Dynamics

Corp. of America, 975 F.2d 815 (Fed.Cir.1992). “Likelihood

of confusion as to the source of the goods is not a necessary or

appropriate factor for determining infringement of a design

patent.” Unette Corp. v. Unit Pack Co., Inc., 785 F.2d 1026,

1028 (Fed.Cir.1986) (emphasis added).

The Court has concluded no reasonable juror could find

substantial similarity between the parties’ designs. Evidence

of consumer confusion would not change this result. “Design

patent infringement does not concern itself with the broad issue

of consumer behavior in the marketplace.” Braun Inc., 975

F.2d at 821. There is no need to continue this motion to allow

14a

Quick Point to perform consumer research—this discovery

would not raise a triable issue of fact. The designs are not

substantially similar as a matter of law.

Second, the question of whether Cutter had access to

Quick Point’s designs before developing its own letter openers

is irrelevant to the question of infringement. See Warner-

Jenkinson Co. v. Hilton Davis Chemical, --- U.S. ----, ----, 117

S.Ct. 1040, 1052, 137 L.Ed.2d 146 (holding, in the context of

utility patents, that “intent plays no role in the application of the

doctrine of equivalents”); see also FMC Corp. v. Hennessy

Industries, Inc., 836 F.2d 521, 527-28 (Fed.Cir.1987) (“That

FMC wanted its tire changer to ‘look like [Hennessy’s]’ is

irrelevant where as here the final product does not infringe the

patented design.”). Accordingly, evidence which Quick Point

could produce relating to Cutter’s access to Quick Point’s

designs would not raise a triable issue of fact sufficient to

defeat Cutter’s Motion for Summary Adjudication.

Third, the Court concludes the responses to discovery

requests Quick Point has served on Cutter would also fail to

raise a triable issue of fact. Quick Point has requested

information concerning the identity of machinery and tool

suppliers; the identity of fact and expert witnesses;

information relating to damages; and attorney opinions

provided on the issues of validity, enforceability, scope, and

infringement. This information, if produced, would not raise

a triable issue of fact as to whether the patents are substantially

similar.

The Court concludes a Rule 56(f) continuance is not

appropriate the discovery Quick Point has identified would not

raise a triable issue of fact. Accordingly, Cutter's Motion for

Summary Adjudication as to non-infringement is GRANTED.

DATED: 7-7-97 is/GARY L. TAYLOR

GARY L. TAYLOR

UNITED STATES DISTRICT JUDGE