[00:00:23] Speaker 01:
OK, the next case is number 15, 1248, Polyamerica LP against API Industries.

[00:00:31] Speaker 04:
Ms.

[00:00:32] Speaker 04:
Harris.

[00:00:34] Speaker 04:
Thank you, Your Honors.

[00:00:36] Speaker 04:
This case raises a very interesting question of how frequently a feature must be visible in order to be of concern for the ordinary observer analysis.

[00:00:47] Speaker 04:
This court in Contessa, Keystone, and Doormaster drew the outer boundaries

[00:00:53] Speaker 04:
if a feature is always visible, even if only visible, at one point during the normal use of... Could we start at a more, I guess, elemental level?

[00:01:04] Speaker 02:
What would you say is the contribution to the ornamental arts with this patent?

[00:01:13] Speaker 02:
How did this patent promote the progress of the ornamental arts?

[00:01:19] Speaker 04:
I admit I had not thought about that question, Your Honor.

[00:01:24] Speaker 04:
The overall design of the container is not one that is found in the prior art, and in particular, the shape of the perforated opening was something unique, not found in the prior art.

[00:01:44] Speaker 03:
The trapezoidal opening on the front panel?

[00:01:49] Speaker 04:
Yes and no.

[00:01:51] Speaker 04:
No, my statement was not meant to refer to simply the fact that it was a trapezoidal shape.

[00:01:56] Speaker 04:
There was evidence in the record below that trapezoidal shapes had been used for perforated openings in the past.

[00:02:02] Speaker 04:
My statement was referring to the exact shape of the rounded finger push portion.

[00:02:11] Speaker 03:
That tab that's at the end of the trapezoidal opening?

[00:02:17] Speaker 02:
Yes, your honor.

[00:02:19] Speaker 02:
This design patent, it's fairly minimal list, wouldn't you say?

[00:02:25] Speaker 03:
Yes, your honor.

[00:02:26] Speaker 02:
And the design patent very clearly displays that what we have on our hands here is a two feature design for a container, for a box.

[00:02:40] Speaker 02:
One feature is the trapezoidal opening on the front panel, and then the other feature

[00:02:46] Speaker 02:
is the tabs and slots on the top of the box.

[00:02:51] Speaker 02:
And so I'm wondering, does it seem strange to you that you can present your two feature design to the patent office and rely on those two features in order to get a patent, but then when it comes to litigation and infringement, tell the court that

[00:03:14] Speaker 02:
Well, ignore one of the two features, throw that out.

[00:03:18] Speaker 02:
All that really matters for infringement purposes is one of the two features.

[00:03:23] Speaker 04:
Your Honor has identified a definite tension between the way patents are claimed and patented in the Patent Trademark Office and the ordinary observer analysis.

[00:03:35] Speaker 04:
I believe that it is still appropriate to disregard those features that are not visible during the ordinary, during the normal use of the product.

[00:03:43] Speaker 04:
on a regular or general basis for two reasons.

[00:03:46] Speaker 04:
First, to the extent that you have that tension, the tension needs to be resolved in favor of the ordinary observer analysis.

[00:03:52] Speaker 04:
And that is because the whole point of having design patents is to make sure that ordinary observers are not tricked into buying something that's substantially similar to something else.

[00:04:02] Speaker 04:
So set aside for the moment that the USPTO may want to do its thing differently.

[00:04:07] Speaker 04:
I'm not an expert in that theory.

[00:04:08] Speaker 02:
So hypothetically, if the point of novelty for your design

[00:04:13] Speaker 02:
box is something that in your view and normal use would be hidden.

[00:04:21] Speaker 02:
What does that mean?

[00:04:22] Speaker 02:
Does that mean you shouldn't be relying on it for patentability purposes, for trying to get a patent on the design?

[00:04:29] Speaker 04:
Well, I don't know the answer to that question, but I can tell you that at the end in litigation context, it will come full circle because just as in the utility patent context, if a party takes a, if a patent holder

[00:04:42] Speaker 04:
takes a claim during claim construction and wins on that, then it lives with that claim construction on the validity back end of the litigation.

[00:04:52] Speaker 02:
We're talking about utility patents, right?

[00:04:55] Speaker 04:
Yes, I'm analogizing to the utility patent context.

[00:04:58] Speaker 04:
So in the design patent context, if, as here, a patent holder has in its design patent the feature that you address, the top flaps, tabs, and slots,

[00:05:10] Speaker 04:
but then takes the position as it has here, that that is not a generally visible feature during the normal use of a particular accused product in patented design at issue, then that patent holder is going to have to live with that when it comes to the court's validity analysis so that he can, in other words, the patent holder wouldn't be able to say the reason my design is not obvious

[00:05:39] Speaker 04:
is because of the tabs and slots and heights.

[00:05:41] Speaker 04:
Couldn't do that anymore because you said that the reason that you aren't going to see the tabs, slots, and heights of the flaps.

[00:05:50] Speaker 04:
So in the litigation context, I do not believe there is a tension.

[00:05:54] Speaker 04:
But your honor's point about the way that you go and get a patent in the PTO and that you can draw something that in fact then in the normal use of the product isn't seen, there is that tension.

[00:06:08] Speaker 02:
This is a more rational way to approach the laws.

[00:06:11] Speaker 02:
If you present figures like this to the patent office showing the tabs, then that's almost a concession that the normal use for a design like this in the marketplace is that people will see these tabs in one form or another.

[00:06:30] Speaker 02:
And so therefore, just as it matters for validity, patentability purposes, it likewise matters for infringement purposes.

[00:06:39] Speaker 04:
Yes, Your Honor, the law could develop that way.

[00:06:41] Speaker 04:
In this case, there was no evidence that consumers would generally or ordinarily open the container from the top.

[00:06:51] Speaker 04:
APIs experts said that based on the way he dealt with boxes, his personal experience, he sometimes opened boxes from the top.

[00:07:00] Speaker 04:
And so that's where he's getting the idea that you open it from the top.

[00:07:04] Speaker 04:
The three Polymeric employees who had actually

[00:07:09] Speaker 04:
opened the box, opened it from the perforated opening.

[00:07:12] Speaker 04:
And certainly I, when I get a box of baggies or Kleenex, I use the perforated opening.

[00:07:19] Speaker 04:
But certainly, Your Honor, this court could make that the rule.

[00:07:24] Speaker 02:
And when I have one of these boxes that has the perforation going all the way around to the other panel, I open up my flap all the way across both panels.

[00:07:35] Speaker 04:
And that point, Your Honor, that

[00:07:39] Speaker 04:
different people may use the box differently or open it differently is one that I think creates the interesting question in this case, which is how frequently does an ordinary observer need to open or destroy of an item in a particular way to reveal an otherwise concealed feature?

[00:08:03] Speaker 04:
And in Contessa and Door Master and Keystone,

[00:08:09] Speaker 04:
It was an easy, those were easier cases because the feature at issue was always visible at some point during the normal use.

[00:08:19] Speaker 04:
And the corollary implication from those cases is that if it's never visible during the normal use, it shouldn't be considered.

[00:08:29] Speaker 04:
Here, the only testimony that it was ever visible was from API's expert.

[00:08:34] Speaker 04:
And what he said was someone could open it from the top.

[00:08:39] Speaker 04:
in a way to preserve the tops and flaps.

[00:08:41] Speaker 04:
He also conceded that he didn't know how many people would because he didn't do any testing that would give him any sense of how often destruction in a particular way to flatten it out and force open the top wouldn't destroy those features or that it would be open in a particular way.

[00:09:05] Speaker 02:
Is there a case that you know of where

[00:09:08] Speaker 02:
this court or maybe another court has excluded one of the features of the design patent for infringement analysis?

[00:09:18] Speaker 04:
No, Your Honor.

[00:09:19] Speaker 04:
I don't believe any court has been faced with this particular set of circumstances where someone argued that a feature was... I mean, litigants have argued that features were concealed.

[00:09:31] Speaker 04:
But the arguments have been, they were concealed on the shelf or they were concealed because, you know, and then the court said, no, it always becomes visible.

[00:09:39] Speaker 04:
I don't know of a case in this context where the litigants are saying it's possible that it might be revealed.

[00:09:50] Speaker 04:
But, you know, one side says, I've got some evidence that it won't be revealed.

[00:09:54] Speaker 04:
And the other one says, I've got evidence that it might be revealed.

[00:09:58] Speaker 04:
and there's no evidence about the frequency or the generality or regularity.

[00:10:03] Speaker 04:
So it is an interesting question for this court to resolve.

[00:10:11] Speaker 04:
One last point on this frequency argument and then I will move over to the expert point.

[00:10:16] Speaker 04:
Given that the purpose of design patent law is to prevent ordinary observers from being deceived by buying something substantially similar, Polymarket does not believe it would be appropriate for

[00:10:28] Speaker 04:
the standard to be that just because one or a few ordinary observers could use or destroy of a product in such a particular way as to make a regularly concealed feature visible, that that would be enough.

[00:10:41] Speaker 04:
Because if that was the standard, then you could defeat a claim of design patent infringement anytime the designs are not identical.

[00:10:53] Speaker 04:
And this core has already said you don't have to have identical designs.

[00:10:55] Speaker 04:
And the reason I say that is because

[00:10:58] Speaker 04:
It's always easy to imagine that one person might use a product in a way that most others would not, or destroy it in a way most others would not.

[00:11:08] Speaker 04:
So with that, let me turn to the second basis that Polymerica has cited for reversal of the district court's opinion, and that is the immiscibility of API's expert testimony.

[00:11:21] Speaker 04:
It is an abuse of discretion standard.

[00:11:24] Speaker 04:
PolyAmerica believes that the District Court abused its discretion in denying the motion to exclude because the District Court did not consider the second prong of the two-part test under Rule 702.

[00:11:35] Speaker 04:
In the District Court's opinion, the District Court lays out the two-part test.

[00:11:39] Speaker 04:
You need specialized or scientific knowledge and you need reliable methodology.

[00:11:44] Speaker 04:
The District Court then says Collins had the specialized knowledge that would help to try our fact because he was an expert in packaging

[00:11:53] Speaker 04:
had worked with corrugated packaging, even though none of the corrugated packaging had perforated openings, and had engaged in consumer research, even though none of that consumer research was ever with corrugated packaging.

[00:12:06] Speaker 04:
The district court never analyzed whether it was a reliable methodology.

[00:12:09] Speaker 04:
Holly America in the lower court had argued the methodology was not reliable, that this is just his personal opinion because under Kumo Tyre, one of the

[00:12:20] Speaker 04:
One of the indicators of reliable methodology or not is whether the expert employs the same methodology in the non-litigation context that it does in the litigation context.

[00:12:31] Speaker 04:
Here, API's expert conceded that whenever he wanted to know what consumers were going to think or perceive in the non-litigation context, he conducted some sort of consumer research, surveys, testing, interviews.

[00:12:43] Speaker 04:
But here, he did not.

[00:12:44] Speaker 04:
He also conceded that you can't predict what consumers

[00:12:47] Speaker 04:
will proceed.

[00:12:48] Speaker 04:
That's what his past research had told him.

[00:12:52] Speaker 04:
So in light of that, it was an error to admit his testimony.

[00:12:59] Speaker 04:
And without it, there was no testimony regarding the visibility of the top tabs and slots, only evidence on the other side of the question.

[00:13:07] Speaker 04:
And I'll stop there.

[00:13:08] Speaker 04:
Thank you, Your Honor.

[00:13:10] Speaker 01:
Okay.

[00:13:11] Speaker 01:
Thank you, Sarah.

[00:13:13] Speaker 01:
Mr. Blumenfeld?

[00:13:14] Speaker 00:
Thank you, Your Honor.

[00:13:15] Speaker 00:
Jack Blumenfeld for Defendant App of the API.

[00:13:21] Speaker 00:
Figures 8 to 13 of the 719 patent are six figures with top flaps in what is called an open configuration, with equal height flaps, tabs on the back flap, slots on the front flap.

[00:13:37] Speaker 00:
And figures 8, 11, and 12 were amended, quote, to more clearly illustrate the design during prosecution.

[00:13:43] Speaker 00:
That's at 8, 10, 41.

[00:13:45] Speaker 00:
And so there is an open configuration as part of the design.

[00:13:52] Speaker 00:
And that is normal use.

[00:13:54] Speaker 00:
It has a closed configuration and open.

[00:13:56] Speaker 00:
But one point I'd like to make, because PolyAmerica has never addressed this, is that even in the closed configuration, you can see the tabs

[00:14:06] Speaker 00:
and the slots, and that's in figures one, two, and six.

[00:14:10] Speaker 00:
They're always visible because when you close the open configuration, the tabs go into the slots and you can see them.

[00:14:18] Speaker 00:
That's something Mr. Collins testified to.

[00:14:21] Speaker 00:
They said, oh, in their brief, they quoted something where he said, aren't all these boxes going to look identical?

[00:14:27] Speaker 00:
It's at 845.

[00:14:30] Speaker 00:
And they quote him saying, yeah, they look identical.

[00:14:33] Speaker 00:
The next answer that he gave was,

[00:14:35] Speaker 00:
except if they have tabs.

[00:14:36] Speaker 00:
They didn't put that in their brief.

[00:14:38] Speaker 00:
The tabs are there.

[00:14:39] Speaker 00:
The patent was on a design for open or closed configurations at the top by using the tabs in the slots.

[00:14:49] Speaker 00:
All of the ornamental features of that top opening configuration are part of the patent.

[00:14:57] Speaker 00:
And Polly never argues and can't argue

[00:15:02] Speaker 00:
that there's any substantial similarity between that design and what API is doing, because it can't.

[00:15:11] Speaker 00:
The design is entirely different.

[00:15:14] Speaker 00:
And in fact, the tops of APIs boxes are always visible, whether they're opened or closed.

[00:15:23] Speaker 00:
You never see the even height flaps.

[00:15:28] Speaker 00:
You never see the tabs.

[00:15:30] Speaker 00:
You never see the slots.

[00:15:32] Speaker 00:
But the reason isn't because something isn't visible.

[00:15:36] Speaker 00:
The reason you don't see them in API's boxes is because they aren't there.

[00:15:40] Speaker 00:
We don't have them.

[00:15:42] Speaker 00:
So what they have is a patent which says, here's six drawings showing an open configuration.

[00:15:48] Speaker 00:
An API doesn't have that open configuration.

[00:15:52] Speaker 00:
It just isn't there.

[00:15:53] Speaker 00:
When the box is closed, you won't see those flaps of even height.

[00:15:58] Speaker 00:
You won't see the tabs and slots that are shown in figures 1, 2, 6, 8, and 13.

[00:16:04] Speaker 00:
And when the box is open, you won't see them either because they're not there.

[00:16:10] Speaker 00:
It's a completely different design, and that's really the issue.

[00:16:14] Speaker 00:
Now, I don't think there's anything terribly surprising in the world we live in that people open cardboard boxes and that people recycle boxes.

[00:16:25] Speaker 00:
One of the things Mr. Collins said was,

[00:16:27] Speaker 00:
In Massachusetts, where he lives, they're required to recycle boxes.

[00:16:31] Speaker 00:
The notion that we had to prove some frequency by which consumers who use these boxes flatten them and throw them in the trash.

[00:16:41] Speaker 00:
I mean, we had an expert who came in and said, I've been a packaging designer for 40 years.

[00:16:46] Speaker 00:
I know all kinds of packages.

[00:16:48] Speaker 00:
I've worked with corrugated cardboard.

[00:16:51] Speaker 00:
I've done consumer testing.

[00:16:55] Speaker 00:
In my opinion, the tabs and slots would be visible to the consumer in the store, and they would be because they're shown even in the closed configuration, that all the boxes look the same when they're sealed unless they have tabs, that consumers would open the boxes and if there were top flaps of equal height, if there were tabs and slots, they would see them.

[00:17:19] Speaker 00:
Consumers would flatten and recycle these.

[00:17:22] Speaker 00:
There's nothing about any of that.

[00:17:25] Speaker 00:
that is very surprising and that the tops would be visible.

[00:17:32] Speaker 00:
And there's one other point that I would like to go back to, and that is the district court's decision.

[00:17:39] Speaker 00:
Because there is almost nothing in Polly America's brief about the district court's decision.

[00:17:49] Speaker 00:
But the district court looked at the overall design

[00:17:54] Speaker 00:
The district court concluded that the patented and cues designs are not substantially the same after looking at all the features.

[00:18:02] Speaker 00:
She looked at the front opening.

[00:18:04] Speaker 00:
She looked at the top flaps.

[00:18:06] Speaker 00:
She looked at all the ornamental features.

[00:18:08] Speaker 00:
She looked at two pieces of prior art.

[00:18:10] Speaker 00:
She did what she said was a side by side comparison, which is clearly the comparison that you're supposed to do.

[00:18:17] Speaker 00:
And she concluded that the front opening of the cues design was more like the prior art than like the design of the patent.

[00:18:24] Speaker 00:
And the top flaps quote, create a very different visual impression.

[00:18:30] Speaker 00:
And then she concluded by saying, altogether then, the claimed and accused designs would not appear substantially the same to an ordinary observer.

[00:18:39] Speaker 00:
And on the side by side comparison, it's interesting because we did a side by side comparison in our brief below on summary judgment.

[00:18:50] Speaker 00:
We did a side by side comparison in our brief here, and if you look at

[00:18:54] Speaker 00:
Page 11 of our brief, we have the drawing of, with all the features next to our box, totally different.

[00:19:02] Speaker 00:
The judge, the district judge did a side-by-side comparison.

[00:19:06] Speaker 00:
She reached the same conclusion.

[00:19:08] Speaker 00:
She looked at all the ornamental features.

[00:19:10] Speaker 00:
She found there was nothing substantially similar.

[00:19:13] Speaker 00:
The one party here who's never done a side-by-side comparison is the plaintiff, Polly America.

[00:19:20] Speaker 00:
So they have the burden of proving infringement.

[00:19:22] Speaker 00:
They've never done a side-by-side analysis, not below, not on appeal.

[00:19:28] Speaker 00:
And there's a reason for that, because when you look at these side-by-side, they are very, very different designs.

[00:19:36] Speaker 00:
And one of the reasons they're different designs is because the front opening is different.

[00:19:42] Speaker 00:
Ours opens across the front and around the right side, unlike theirs, shown in many figures of their patent.

[00:19:49] Speaker 00:
Second, they have the open configuration of the top flaps, which we don't have.

[00:19:54] Speaker 00:
So there are two very basic reasons why the designs are different.

[00:19:58] Speaker 00:
Judge Robinson recognized that.

[00:20:00] Speaker 00:
We've done the side-by-side comparison, and PolyAmerica has never done that analysis.

[00:20:06] Speaker 00:
All it says is, well, one of our employees didn't even notice that you could open it all the way around the right side.

[00:20:14] Speaker 00:
That's not evidence to get you to a jury.

[00:20:16] Speaker 00:
I mean, the ordinary observer test

[00:20:19] Speaker 00:
uh, is something that judges do in the lower court, in this court.

[00:20:23] Speaker 00:
It's not something that you can get by on by saying, well, I have a lawyer, a lawyer employee who says he didn't even notice and that's enough to get to a jury.

[00:20:32] Speaker 00:
And unless the court has questions, um, that's all I have to say about it.

[00:20:38] Speaker 01:
Okay.

[00:20:39] Speaker 01:
Thank you, Mr. Blumenfeld.

[00:20:43] Speaker 01:
Ms.

[00:20:43] Speaker 01:
Harris.

[00:20:44] Speaker 04:
Your Honors, API contends that Collins did not say they always look the same when on the shelf.

[00:20:50] Speaker 04:
That's not true.

[00:20:51] Speaker 04:
It's the court turns to appendix 845.

[00:20:55] Speaker 04:
Collins did, in fact, say they would all look the same when they're closed and then when pressed because he did add, but you could see the tabs and slots when they're open.

[00:21:05] Speaker 04:
And then he was pressed and said, well, that's only if you open it in this very particular way, preserve on destruction or when you're opening.

[00:21:11] Speaker 04:
And he said, yes.

[00:21:12] Speaker 04:
So the issue really is the one that Judge Chen identified at the outset of the case, which is, do you make a blanket rule that says if it's in the pictures, then you can't claim that it's not seen during the normal use?

[00:21:25] Speaker 04:
Or do you have the litigants produce evidence of what is visible during the normal use?

[00:21:31] Speaker 04:
That is the heart of the case.

[00:21:33] Speaker 04:
With regard to the expert having all this general packaging expertise,

[00:21:39] Speaker 04:
undisputed that he worked in the packaging industry for 40 years.

[00:21:42] Speaker 04:
That's not the issue.

[00:21:43] Speaker 04:
The issue is whether, as in the lower courts, when an expert says, I have had experience with kitchen products for 40 years, does he then get to a pine as to what ordinary observers will see when it's one patented peeler at issue?

[00:21:57] Speaker 04:
And Chef and Co-op, Wang and Bush all say no, because the expert is not an ordinary observer.

[00:22:03] Speaker 04:
The United States Supreme Court already said in Gorham that an expert is not the person to be deceived.

[00:22:08] Speaker 04:
So he cannot just from his own personal opinion say it.

[00:22:11] Speaker 04:
He has to point to something specific in his experience.

[00:22:14] Speaker 04:
I watch people using similar boxes with similar openings on both ends, and I know that people will open it this different way.

[00:22:22] Speaker 04:
The expert in this case had no such experience.

[00:22:24] Speaker 04:
Finally, with regard to the substantial similarity and side-by-side comparison, it is just not true that Pauli Merkut didn't do it in the underlying brief.

[00:22:33] Speaker 04:
Those briefs are not in the appendix.

[00:22:34] Speaker 04:
They are in the record.

[00:22:35] Speaker 04:
There is side-by-side pictures.

[00:22:37] Speaker 04:
The whole dispute goes back to Judge Chen's point, which is when Polymerica does the side-by-side, it's showing a closed box where it's just open on the front panel compared to the patent design, whereas the other API is showing, you know, open with tops preserved, which when it's taped up and you open it, it wouldn't even look like that.

[00:22:56] Speaker 04:
But that's the only difference.

[00:22:59] Speaker 04:
There was sufficient evidence for the district court to find

[00:23:02] Speaker 04:
Um, that the two, uh, were substantially similar.

[00:23:06] Speaker 04:
It was just not just the polymericus employees.

[00:23:08] Speaker 04:
It was API CFO saying that, um, they're out of town.

[00:23:13] Speaker 04:
Thank you very much, your honor.

[00:23:15] Speaker 01:
Okay.

[00:23:15] Speaker 01:
Thank you, Sarah.

[00:23:16] Speaker 01:
Thank you, Mr. Broomfield.

[00:23:18] Speaker 01:
The case is taken under submission.

[00:23:20] Speaker 01:
That concludes the argued cases for this morning.

[00:23:24] Speaker 01:
All right.

[00:23:28] Speaker 00:
The Honorable Court is adjourned until tomorrow morning at 10 o'clock a.m.