[00:00:06] Speaker 04:
the next and final case for argument this morning at fourteen one eight five two butler versus wall camp pronounce your last name please use the cord I'd like to introduce myself

[00:00:36] Speaker 00:
My name is Naraji Singh with my co-counsel, Joseph C. Zero, or plaintiff appellant, Kenneth B. Butler Sr.

[00:00:43] Speaker 00:
Today before the court, we present three main issues.

[00:00:46] Speaker 00:
Firstly, the district court granting summary judgment with facts in dispute.

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Secondly, the district court not taking into consideration the only actual evidence that was submitted by the plaintiff appellant to determine the design patent infringement.

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And thirdly, the district court substituting the

[00:01:06] Speaker 00:
opinion of Judge Barker to that of ordinary observer's test.

[00:01:12] Speaker 00:
Moving on with the first issue, Your Honor.

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That is, the judicial court granting summary judgment with facts in dispute.

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A summary judgment should only be granted when there is no genuine issue of material facts.

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or after determining all the factual inferences, the reasonable jury would not return a verdict in favor of a non-moving party.

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So what is the disputed factor?

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The disputed factor is the evidence that was submitted after the survey that was done, wherein 28 ordinary observers were approached, and they were asked to determine the infringement.

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And all 28 of them determined infringement with regards to the infringing product and the design, pardon me, Your Honor.

[00:01:48] Speaker 00:
That was submitted as an evidence, which was never considered by the district court.

[00:01:51] Speaker 04:
And that was- Are there good reasons not to have considered it?

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I mean, it's confusing.

[00:01:57] Speaker 04:
We don't know what the question is.

[00:01:59] Speaker 04:
The responses are YAE, which I don't know if there's any real definition for that.

[00:02:06] Speaker 04:
I presume you take that as yes.

[00:02:10] Speaker 04:
So if we look at it, I assume the district court judge didn't even speak to the survey, did he?

[00:02:15] Speaker 04:
No.

[00:02:16] Speaker 04:
But aren't there really good reasons when you look at it to say, nice try, but there's just no way that this creates a material to sputify?

[00:02:24] Speaker 00:
Your Honor, our client is an 85-year-old senior citizen.

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He, despite the fact that he was disabled, he made an attempt to collect this evidence by approaching various tool shops and approaching all the ordinary purchasers.

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And it was a survey done based on the analysis done by these ordinary observers.

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where they found infringement, that's the best he could do at that moment.

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And since Richardson clearly states that design patent is more facts-oriented, Judge Barker should have done the ordinary observer test in the light of this particular evidence that was submitted before the court.

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Moving on with the second issue, Your Honor, that is the district court not considering the only actual evidence that was submitted before the court by the plaintiff's appellant.

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Egyptian goddess clearly highlights the fact that the sole test for determining infringement in a design patent case is the ordinary observer's test.

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And Judge Barker, doing an ordinary observer's test by not taking into consideration the observation done by 28 ordinary observers or 28 ordinary consumers who identify confusion with regards to the infringing product and the design patent is erroneous.

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That's one of the main reasons why we're saying that the ordinary observer test

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not taking into consideration the observation done by the ordinary observer in itself is wrong.

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Moving on to another issue, Your Honor, that is the district court substituting Judge Barker's opinion to that of ordinary observer's test.

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Again, Egyptian goddess clearly highlights the fact that when you're doing an ordinary observer's test, ordinary observer is a person who is aware of prior arts.

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Ordinary observer is a group of person

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group of people who is aware of the products that are available in the market and exercise due prudence or attention when making the purchase of the product.

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Now, these 28 consumers, they were aware of the product, they were aware of the prior products, and they exercised due prudence.

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How do we know their level of awareness of the prior products?

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Your Honor, our client, Kenneth Buzzard Sr., approached tool shops when he approached these regular consumers.

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And based on their analysis with regards to the level of similarity between the infringing product and the design patent, they determine whether it infringed or not.

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How do we know whether that confusion was based on the design or based on the function of these tools?

[00:04:53] Speaker 00:
That's a very good question, Your Honor.

[00:04:56] Speaker 00:
Basically, whenever you do a comparison between a design pattern and an infringing product, the comparison should only be with regards to the ornamental aspect, ornamental features.

[00:05:06] Speaker 00:
And it was made sure that they identified the ornamental features and not the functional features when the comparison was done.

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When the survey was taken, what specific part of the question identified those ornamental aspects?

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Though the question is not mentioned in the evidence,

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When the survey was done, the ornament features such as the noiling grip and the tapered front end and the tapered back end, those were the aspects I was taking into consideration and not the male square drive.

[00:05:39] Speaker 02:
How do we have any idea?

[00:05:40] Speaker 02:
That's not in the record, is it?

[00:05:42] Speaker 02:
No, Your Honor.

[00:05:44] Speaker 02:
What question was asked the people in the survey?

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The question that was asked was with regards to whether you're taking into consideration the male square drive or the female square drive.

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Those are the functional features.

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which should not be taken into consideration.

[00:05:56] Speaker 04:
Where are we getting that?

[00:05:57] Speaker 04:
I mean, I want to get the survey list.

[00:05:59] Speaker 04:
I mean, we've got this document, right, that says if you believe both units are the same, showing both unit handlers are the same, yay or nay.

[00:06:11] Speaker 04:
That's what we have, right?

[00:06:13] Speaker 00:
Yeah, but the authenticity or the admissibility of this particular evidence was never questioned by the district court.

[00:06:20] Speaker 03:
Well, but the question is what information, what is the nature of the inquiry made to the responding parties?

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And I think what the Chief Judge just read looks like it's the only thing the responding parties were asked, right?

[00:06:38] Speaker 03:
At the top of A-31?

[00:06:39] Speaker 00:
Yes.

[00:06:41] Speaker 00:
And that was the only actual evidence that was submitted, Your Honor, because Richardson clearly said that

[00:06:47] Speaker 00:
Design patent infringement is fact-based, and the only way to prove infringement is by preponderance of evidence.

[00:06:52] Speaker 04:
We must suggest that you can never have summary judgment on a design patent infringement case.

[00:06:57] Speaker 04:
And we know that can't be right, because we've had other cases that granted summary judgment.

[00:07:01] Speaker 00:
Yes, Your Honor.

[00:07:02] Speaker 00:
For example, the Egyptian government itself had summary judgment.

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But was the summary judgment granted without considering the only actual evidence that was presented before the court?

[00:07:10] Speaker 00:
No.

[00:07:12] Speaker 04:
Well, aren't you supposed to, in the design patent analysis, compare the accused product to the design patent drawings?

[00:07:18] Speaker 04:
So, right?

[00:07:19] Speaker 04:
That's the analysis.

[00:07:20] Speaker 04:
It's not comparing two different products.

[00:07:22] Speaker 04:
It's comparing the design.

[00:07:24] Speaker 04:
There's no indication that that was before any of these survey respondents, right?

[00:07:31] Speaker 00:
Can you repeat that?

[00:07:33] Speaker 04:
Under a design patent analysis, are you not supposed to look at the accused product compared to the design patent?

[00:07:41] Speaker 04:
Yes.

[00:07:42] Speaker 04:
And here, this survey, to the extent we understand what actually we're doing, they were looking at two different units.

[00:07:50] Speaker 04:
They weren't looking at the design patent, right?

[00:07:53] Speaker 00:
They were looking at the design patent and the infringing product, Your Honor.

[00:08:00] Speaker 04:
I don't know, were they looking at two products or a patent and an accused product?

[00:08:09] Speaker 00:
They were looking at two products.

[00:08:11] Speaker 04:
Okay, so they weren't looking at the patent, they were looking at the product.

[00:08:14] Speaker 04:
Yes, Your Honor.

[00:08:15] Speaker 04:
Okay, and isn't an analysis and design patents between the accused product and the patent drawings?

[00:08:22] Speaker 00:
Yes.

[00:08:23] Speaker 04:
So do you think that's a problem?

[00:08:25] Speaker 00:
We don't think that's a problem, Your Honor, because the product for which the design patent was held represents the design patent exactly.

[00:08:35] Speaker 00:
And when we talk about the comparative.

[00:08:37] Speaker 04:
So how do we know there's, is there a stipulation?

[00:08:40] Speaker 00:
No, Your Honor.

[00:08:41] Speaker 00:
For example, when the comparative analysis was done between the design patent and the infringing product itself, this could clearly identify the functional features and the ornamental features.

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And when the comparative analysis was done,

[00:08:52] Speaker 00:
Function features like male square drive and female square drive were identified as a function feature, and the comparison was done between the ornamental features, that is the null drift, the tapered front end, the tapered back end, and the unnerled front end.

[00:09:07] Speaker 00:
However, when the district court made this analysis, as it's been clearly held in PROC CITC, that when you do a comparative analysis between the function features of design patterns,

[00:09:19] Speaker 00:
to prove infringement, the functional feature should be considered as a whole and not independently.

[00:09:24] Speaker 00:
But the district court judge, she identified independent, minute features to accentuate the differences between the ornamental features of the design patent and the infringing product.

[00:09:37] Speaker 00:
And then, in somewhat way, tried to incorporate functional features to accentuate the minute differences between the ornamental features between the infringing product and the design patent, Your Honor.

[00:09:50] Speaker 03:
To make sure that I forgot the right references here, page 11 of the appendix, which is at the back of your brief, has the spinning impact extension and the 646 patent design.

[00:10:05] Speaker 03:
Those are, I take it, the two items that are in dispute and that were shown to the survey respondents.

[00:10:17] Speaker 03:
Back of the spinning impact extension, for example, looks like, other than the functional square hole, it looks very different from the back of the 646 patent design, right?

[00:10:31] Speaker 00:
Are we talking about the protrusion from the... Well, we're talking about

[00:10:36] Speaker 03:
This spinning impact extension has a blue color in the barrel and then behind the barrel there's an extrusion of something in black.

[00:10:47] Speaker 03:
That looks like that's completely absent from the 646 design, does it not?

[00:10:53] Speaker 00:
That is the functional feature of the infringing product.

[00:10:56] Speaker 00:
That is the female square drive, which should not be taken into consideration.

[00:10:59] Speaker 03:
But that is, there is a female square drive in the 646 patent design as well.

[00:11:04] Speaker 03:
It's just, it is not, it takes a very different form, right?

[00:11:11] Speaker 00:
Yes, those are the functional features which should not be taken into consideration when you do the comparative analysis.

[00:11:15] Speaker 02:
And you just take a different... Even if the functional features are completely different in design as well?

[00:11:22] Speaker 00:
It depends, Your Honor.

[00:11:23] Speaker 00:
For example, there's a case where there was a ceiling fan with palm leaves.

[00:11:27] Speaker 00:
But in that case, consumers who is trying to purchase a ceiling fan will purchase a ceiling fan because they want the ceiling fan with palm leaves.

[00:11:36] Speaker 00:
But in this case, it's not the same.

[00:11:38] Speaker 00:
How much impact will that particular functional feature impress upon the ordinary consumer is one of the questions that should be taken into consideration by this Court as well, Your Honor.

[00:11:48] Speaker 03:
Are you saying, in effect, then, the only features of the patented design that ought to have been taken into account, taking off the front end and the back end, are the knurled rod?

[00:12:04] Speaker 03:
Yes.

[00:12:05] Speaker 03:
So you're saying any knurled rod would infringe this patent?

[00:12:10] Speaker 00:
No, Your Honor.

[00:12:11] Speaker 00:
We're saying that we're supposed to take into consideration the functional feature, which is the knurled handle.

[00:12:16] Speaker 00:
There is the tapered front end, the tapered back end, and there is a knurled front end.

[00:12:23] Speaker 03:
I'm not seeing a tapered front end of the knurled rod in the spinning impact extension.

[00:12:29] Speaker 03:
I see a front end that is not knurled for some distance and a back end before you get to the black section that is not knurled.

[00:12:40] Speaker 03:
But other than that, what is it that's tapered in the spinning impact extension?

[00:12:47] Speaker 00:
Your Honor, it was identified during the Markman Herring.

[00:12:51] Speaker 00:
These are the features of the tool that were identified by the district court during the Markman Herring.

[00:12:56] Speaker 00:
And tapered front end in the patent that's held by our client is one of the ornamental feature, and it is not the functional feature.

[00:13:08] Speaker 03:
OK.

[00:13:09] Speaker 03:
Where is it in the spinning impact extension?

[00:13:12] Speaker 03:
Tapered front end?

[00:13:13] Speaker 03:
Yes.

[00:13:15] Speaker 03:
I don't see a tapered front end in that.

[00:13:18] Speaker 00:
in the spinning impact.

[00:13:19] Speaker 03:
There is tapered front end in the spinning impact, which is... Is this not shown or am I misunderstanding tapering?

[00:13:29] Speaker 03:
It looks to me like, in the spinning impact extension, you could say that it has five features.

[00:13:34] Speaker 03:
One, it has the square device coming out the top.

[00:13:39] Speaker 03:
It has the round device coming out the back.

[00:13:41] Speaker 03:
Those are both functional, as you say, and therefore shouldn't be taken into consideration.

[00:13:45] Speaker 03:
Other than that, it has three features.

[00:13:47] Speaker 03:
One is, it has a tube which has a smooth portion at the back, a narrow portion in the middle, and a smooth portion at the front.

[00:13:56] Speaker 03:
I'm not seeing anything tapered.

[00:13:57] Speaker 00:
But the protrusion from the smooth portion in the front, which... Is that just because I can't see that?

[00:14:05] Speaker 03:
Is there a tapered section there that I'm not seeing in that diagram?

[00:14:09] Speaker 00:
There is a tapered section in the incendiary product as well, Your Honor.

[00:14:13] Speaker 03:
Okay.

[00:14:15] Speaker 03:
I don't see it in that diagram, and I don't see it in the diagram on A29, which I take it is the accused.

[00:14:20] Speaker 03:
Is there a diagram that shows the tapered section of the accused device?

[00:14:29] Speaker 03:
or a picture, or anything?

[00:14:32] Speaker 03:
Well, maybe you could wait and on reply you can show us if there is one.

[00:14:44] Speaker 04:
Alex, why don't we hear from you on the sidelines.

[00:14:45] Speaker 04:
Mr. Gohler.

[00:14:47] Speaker 01:
Good morning, Your Honors, and may it please the Court.

[00:14:51] Speaker 01:
I am John Bowler, representing the Appalachians.

[00:14:54] Speaker 01:
The heart of this appeal is whether the District Court correctly applied the ordinary observer test set forth in the Egyptian goddess case, which is the test the District Court

[00:15:06] Speaker 04:
stated it was applying to correctly- The district court didn't discuss the survey, right?

[00:15:14] Speaker 01:
The district court did not discuss the survey, Your Honor?

[00:15:18] Speaker 04:
Even if they're wrong, and we would agree with her if she had given all of these reasons why the survey is unreliable and unclear and that it

[00:15:29] Speaker 04:
Isn't it problematic that we don't have any of that discussion by her?

[00:15:33] Speaker 01:
I don't see that as problematic, Your Honor.

[00:15:35] Speaker 01:
And I point, Your Honors, to your own court precedent, to the Winter case cited in our briefs.

[00:15:41] Speaker 01:
And in the Winter case, which was an affirmative summary judgment of non-infringement, a similar argument was made, as the appellant did here, that the district court ignored.

[00:15:53] Speaker 01:
In that case, it was an evidence, not just a bald letter

[00:15:58] Speaker 01:
client to an attorney but argued that ignored evidence and an affidavit of an incident of actual confusion and this court said that simply because the magistrate judge did not refer to that evidence of actual confusion in its summary judgment order does not mean that the court did not consider that evidence and in fact the evidence itself in any event was insufficiently probative of the issue of

[00:16:25] Speaker 01:
infringement under the ordinary observer test to create any issue of fact, which goes back to the questions Your Honor have been asking this morning, that these 28 signatures were simply insufficient to create a material issue of genuine fact to require us, for example, to go out and get a counter survey.

[00:16:48] Speaker 01:
This Court has said, I think it was the Sage Products case, where typically

[00:16:52] Speaker 01:
Unlike a trade dress case, typically in a design patent case, general evidence of consumer behavior isn't as relevant because the standards are different in trade dress than design patent infringement.

[00:17:10] Speaker 01:
In design patent infringement, you have to look at the under the ordinary observer test

[00:17:16] Speaker 01:
is one, familiar with all the prior art, and also has to look at the, compare the devices factoring out functional features.

[00:17:27] Speaker 01:
And in this case, there simply is no add-in.

[00:17:29] Speaker 01:
It's just lawyer argument.

[00:17:31] Speaker 01:
about what this quote unquote survey consisted of.

[00:17:37] Speaker 01:
We established as the movement on summary judgment that there was no genuine issue of material fact such that we were entitled to summary judgment as a matter of law, which shifted the burden to the non-movement to come forward and create tribal issues of fact with an affidavit, with some documentary evidence.

[00:17:56] Speaker 01:
with something under Rule 56C or to request the court under 56D for a continuance so that it could take some discovery or go out and get that evidence.

[00:18:07] Speaker 01:
That simply wasn't done in this case.

[00:18:10] Speaker 01:
The 28 signatures are simply insufficient to create the tribal issue of fact.

[00:18:16] Speaker 01:
We submit that the district court

[00:18:21] Speaker 01:
had a very detailed analysis, properly applied the ordinary observer test, pointed out differences as well as similarities between the two designs, which this court's precedent says is permissible to do, going back to the Goodyear decision, through your decision in Richardson, through the decision in the Egyptian goddess, which itself was a tool, which was a hand tool, a nail buffer.

[00:18:48] Speaker 01:
pointing out differences between the patented design, which was a three-sided buffer versus the accused design, which was a four-sided buffer.

[00:18:59] Speaker 01:
And the court went out and pointed out, in this case, that there isn't a taper, that the neural handled portion is significantly different.

[00:19:09] Speaker 01:
In fact, neural handles are in the prior part.

[00:19:12] Speaker 01:
in the court noted that and slided to prior art in the court's opinion.

[00:19:17] Speaker 01:
In all of that, the knurling in the prior art, there were tapered front ends in the prior art, there were chamfered back or feet.

[00:19:27] Speaker 03:
I didn't see a taper

[00:19:31] Speaker 03:
in your product.

[00:19:32] Speaker 01:
Your Honor, there isn't a taper and that argument was not even presented below, so it's been waived.

[00:19:38] Speaker 01:
I think to give him the benefit of the doubt, and I think what he may be trying to argue is if you go to that front end of the extension,

[00:19:48] Speaker 01:
It's not a taper, but there's some little, I don't know what you call it, little rounding.

[00:19:54] Speaker 01:
But it's not a taper as such.

[00:19:58] Speaker 01:
So I'm hearing that argument for the first time on this appeal, and I'm doing my best to react to it.

[00:20:02] Speaker 01:
But it clearly is not.

[00:20:03] Speaker 03:
Well, but that front end was one of the portions that, if I understand your opposing counsel's argument, which should be disregarded for purposes of comparing the design with the accused.

[00:20:16] Speaker 01:
Correct.

[00:20:16] Speaker 01:
No, that is correct.

[00:20:19] Speaker 01:
And to find essentially what the court would have to do to reverse this grant of summary judgment is make a sea change in the law that a patent holder

[00:20:32] Speaker 01:
can go and ignore virtually every ornamental feature that it claimed in its design patent in terms of the comparison against the accused device.

[00:20:44] Speaker 01:
Here it's telling that the parties essentially stipulated

[00:20:50] Speaker 01:
that there were seven features in this patented design, two of which the ends were functional, the rest were ornamental.

[00:20:59] Speaker 01:
Yet at no time in response to the summary judgment below, when we showed those features, all of those ornamental features were missing from the accused device, did it come back and try to say no?

[00:21:13] Speaker 01:
There actually is a taper.

[00:21:15] Speaker 01:
Or no, you actually have

[00:21:17] Speaker 01:
knurling in the spinning impact extension, extending all the way down the handle.

[00:21:24] Speaker 01:
It's just never shown that a reasonable juror could find those ornamental features in the accused product.

[00:21:34] Speaker 01:
So unless the court has further questions, we'd rest our remaining argument on our briefs and ask that the summary judgment be affirmed.

[00:21:47] Speaker ?:
Thank you.

[00:22:01] Speaker 00:
Your Honor, we argue that the summary judgment should not have been granted.

[00:22:05] Speaker 04:
Do we have an answer to Judge Bryson's question before you go on?

[00:22:26] Speaker 00:
If I can just show you this particular page 13 from the... Well, just tell us what page we have.

[00:22:31] Speaker 00:
Page 13.

[00:22:33] Speaker 00:
Page 13?

[00:22:34] Speaker 00:
Yes, Your Honor.

[00:22:38] Speaker 00:
Okay.

[00:22:39] Speaker 00:
We identified this particular section as the tapered section.

[00:22:45] Speaker 01:
May I see the houses?

[00:22:51] Speaker 03:
Yes.

[00:22:51] Speaker 03:
So, there is a place where the rounded

[00:22:57] Speaker 03:
tube extension converts into a square extension.

[00:23:03] Speaker 03:
Yes.

[00:23:03] Speaker 03:
And you say there's a taper there?

[00:23:05] Speaker 00:
Yes.

[00:23:10] Speaker 00:
All right.

[00:23:10] Speaker 00:
If it may please the board, we just argue that the summary judgment should not be granted in this case because there was a fax in dispute.

[00:23:17] Speaker 00:
Hence, the summary judgment should be vacated and this case be remanded.

[00:23:21] Speaker 00:
If there's no further questions.

[00:23:23] Speaker 04:
Thank you.

[00:23:25] Speaker 04:
Thank you.