Z Produx v. MAC - MSJ Brief

7/29/2019 Z Produx v. MAC - MSJ Brief

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84202728.3 MACS MOTION AND MEMORANDUM INSUPPORT OF SUMMARY JUDGMENT

, , . . .David Martinez, Bar No. [email protected] Century Park East, Suite 3400Los Angeles, CA 90067-3208Telephone: 310-552-0130Facsimile: 310-229-5800

ROBINS, KAPLAN, MILLER & CIRESI L.L.P.Jan M. Conlin (pro hac vice)Thomas C. Mahlum (pro hac vice)Larina A. Alton (pro hac vice)800 LaSalle Avenue2800 LaSalle PlazaMinneapolis, MN 55402-2015Telephone: 612-349-8500Facsimile: 612-339-4181

Attorneys for Defendant and Counterclaimant,

Make-Up Art Cosmetics, Inc.

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

Z PRODUX, INC.,

Plaintiff,

v.MAKE-UP ART COSMETICS, INC.,

Defendant.

Case No. CV 13-00734 DDP (RZx)

[Assigned to the Hon. Dean D.Pregerson]

MAKE-UP ART COSMETICS,INC.S NOTICE OF MOTIONAND MOTION FOR SUMMARY

JUDGMENT; MEMORANDUMOF POINTS AND AUTHORITIESIN SUPPORT

MAKE-UP ART COSMETICS, INC.,

Counterclaimant,

v.

Z PRODUX, INC.,

Counterclaim-Defendant.

ate: cto er ,Time: 10:00 a.m.Courtroom: 3

[Separate Statement ofUncontroverted Facts andConclusions of Law; Declaration ofThomas C. Mahlum; and [Proposed]

Judgment filed concurrentlyherewith]

Case 2:13-cv-00734-DDP-RZ Document 35 Filed 09/23/13 Page 1 of 30 Page ID #:122


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84202728.3 - 1 - MACS MOTION AND MEMORANDUM INSUPPORT OF SUMMARY JUDGMENT

TO THE HONORABLE COURT, THE CLERK OF THE COURT, ALL

PARTIES HEREIN AND THEIR ATTORNEYS OF RECORD:

PLEASE TAKE NOTICE that on October 21, 2013 at 10:00 a.m., or as

soon thereafter as the Motion may be heard at the United States District

Court, located at 312 N. Spring Street, Courtroom 3, Los Angeles, CA

90012, that Defendant and Counterclaim-Plaintiff Make-Up Art Cosmetics,

Inc. (MAC) will and hereby does move this Court, pursuant to Federal

Rule of Civil Procedure 56 and Central District of California Local Rule 56,

for an order granting summary judgment and a determination of no merit

on Plaintiff Z Produx, Inc.s entire Complaint, and its causes of action for

Design Patent Infringement pursuant to 35 U.S.C. 271.

The Motion will be made on the grounds that there are no disputed

genuine issues of fact relating to these claims and Defendant is entitled to

judgment as a matter of law because Plaintiffs Design Patent No. D642,743

is not infringed by MAC and is invalid.

This Motion is based upon this Notice of Motion, the Memorandum of

Points and Authorities, the Declaration of Thomas C. Mahlum, the SeparateStatement of Uncontroverted Facts and Conclusions of Law, the exhibits

filed concurrently herewith, the [Proposed] Judgment lodged concurrently

herewith, the Courts file on this matter, and upon such and further evidenc

and argument as may be presented prior to or at the time of the hearing on

this Motion.

//

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//

//



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84202728.3 iMACS MOTION AND MEMORANDUM IN

SUPPORT OF SUMMARY JUDGMENT

TABLE OF CONTENTSPage

MEMORANDUM OF POINTS AND AUTHORITIES ...................................... 1

INTRODUCTION ................................................................................................... 1

BACKGROUND FACTS ........................................................................................ 2

I. U.S. Patent No. D642,743 .................................................................. 2

A. The Z Palette is the Product that Embodies the 743Design ........................................................................................ 3

B. Z Produx Publicly Disclosed its Design in a RelatedTrademark Application Filed on February 19, 2009 ........... 4

C. The USPTO Rejected Ms. Shteysels Related UtilityPatent ......................................................................................... 7

II. MAC Pro Palette Large Single.......................................................... 8

ARGUMENT ........................................................................................................... 9

Legal Standard .............................................................................................. 9

I. The MAC Palette Does not Infringe the 743 Design Patent...... 10

A. The 743 Patent is Limited to Designs with SpecificCharacteristics that are not Embodied by the MAC

Palette ...................................................................................... 10B. The Only Shared Characteristics Between the MAC

Palette and the 743 Design are Functional andCannot Supply a Basis for Infringement Allegations ....... 19

II. The 743 Design Patent is Invalid Due to Prior Disclosure ........ 24

CONCLUSION ...................................................................................................... 25



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84202728.3 ii MACS MOTION AND MEMORANDUM INSUPPORT OF SUMMARY JUDGMENT

TABLE OF AUTHORITIESPage

CasesAmerican Sign & Indicator Corp. v. Schulenburg,267 F.2d 388 (7th Cir. 1959).......................................................................... 25

Anderson v. Liberty Lobby, Inc.,477 U.S. 242, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986) .................................. 9

Celotex Corp. v. Catrett,477 U.S. 317, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986) .................................. 9

Chef'n Corp. v. Trudeau Corp.,2009 U.S. Dist. LEXIS 47013, 2009 WL 1564229(W.D. Wash. June 4, 2009) ................................................................ 14, 15, 18

Egyptian Goddess,543 F.3d 665 (Fed. Cir. 2006) ........................................................................ 19

Elmer v. ICC Fabricating, Inc.,67 F.3d 1571 (Fed. Cir. 1995) ................................................................. passim

Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co.,162 F.3d 1113 (Fed. Cir. 1998) ...................................................................... 10

In re Mann,861 F.2d 1581 (Fed. Cir. 1988) ................................................................ 11, 24

Inwood Labs, Inc. v. Ives Labs, Inc.,456 U.S. 844 (1982) ....................................................................................... 20

Lee v. Dayton-Hudson Corp.,838 F.2d 1186 (Fed. Cir. 1988) .......................................................... 10, 13, 20

McIntire v. Sunrise Specialty Co.,No. Civ. S-11-2495, 2013 U.S. Dist. LEXIS 65192(E.D. Cal. May 7, 2013) ........................................................................... 11, 19

OddzOn Prods. v. Just Toys,122 F.3d 1396 (Fed. Cir. 1997) ............................................................... passim

Penn Fabrication (U.S.A.) v. Soulbella Enters.,Case No. 98-3458, 1998 U.S. Dist. LEXIS 17348(C.D. Cal. Aug. 5, 1998) ................................................................................ 24

Read Corp. v. Portec, Inc.,970 F.2d 816 (Fed. Cir. 1992) ........................................................................ 20

Read Corp. v. Portec, Inc.,970 F.2d 816 (Fed. Cir. 1992) ........................................................................ 19



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84202728.3 iii MACS MOTION AND MEMORANDUM INSUPPORT OF SUMMARY JUDGMENT

Richardson v. Stanley Works, Inc.,597 F.3d 1288 (Fed. Cir. 2010) ................................................................ 19, 20

Sofpool LLC v. Kmart Corp.,2013 U.S. Dist. LEXIS 76293 2013 WL 2384331(E.D. Cal. May 29, 2013) ........................................................................ passim

Solar Sun Ring Inc. v. Wal-Mart Stores Inc.,No. CV 11-6990 PSG, 2012 U.S. Dist. LEXIS 156373(C.D. Cal., Oct. 31, 2013) .............................................................................. 10

Spotless Enters. v. A&E Prods. Group L.P.,294 F. Supp. 2d 322, (E.D.N.Y. 2003) ........................................................... 21

Statutes35 U.S.C. 102(b) .......................................................................................... 1, 24, 25

35 U.S.C. 289 ......................................................................................................... 10

RulesFed. R. Civ. P. 1 ............................................................................................................ 2

Fed. R. Civ. P. 56(a) ................................................................................................... 9

Other Authorities37 CFR 2.27(b) ......................................................................................................... 24



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84202728.3 1 MACS MOTION AND MEMORANDUM INSUPPORT OF SUMMARY JUDGMENT

MEMORANDUM OF POINTS AND AUTHORITIES

INTRODUCTION

This is a case for alleged infringement of a design patent for the

design of a cosmetic holder. By its terms, however, a design patent is

limited to the ornamental as distinct from the functional aspects of the

design. Indeed, the design patent at issue claims [t]he ornamental design

for the cosmetic holder, as shown and described. Yet despite numerous

opportunities, the Plaintiff has failed to identify any ornamental elements of

its design that are supposedly incorporated into the accused product.

For example, the patented design contains a number of ornamental

elements, including a book like appearance, overhanging edges, a top and

bottom formed from a single piece, the use of a hinge-less flat spine

connecting the base to the cover, and a proportionally thick border for the

window frame. Instead of identifying any of these elements, Plaintiff

merely contends that the accused product has a clear top and an empty

base. But as the inventor herself has admitted, these elements are purely

functional. The function of the clear top is to enable users to see whatcosmetics are inside the holder, and the function of the empty base is to

permit the product to hold cosmetics. As a result, Plaintiffs claim for

infringement of its ornamental design fails as a matter of law.

Moreover, Plaintiffs design patent is invalid pursuant to 35 U.S.C.

102(b). More specifically, the patented design was publicly disclosed more

than one year prior to the application. In February 2009, the patented

design was described and depicted in connection with a trademark

application submitted by the Plaintiff, yet the design patent was not applied

for until April 2010.

Accordingly, defendant Make-Up Art Cosmetics, Inc. (MAC) brings



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this early1 motion for summary judgment against plaintiff Z Produx, Inc.

(Z Produx) as to its claim for design patent infringement. Because the

undisputed facts demonstrate that MAC does not infringe the protectable

ornamental elements of its design, and that its design was publicly

disclosed more than one year before the filing date of the design patent,

MAC is entitled to summary judgment and Z Produxs Complaint should

be dismissed in its entirety and with prejudice.

BACKGROUND FACTS

I. U.S. Patent No. D642,743U.S. Patent No. D642,743, Cosmetic Holder (the 743) was filed on

April 14, 2010 by inventor Zena Shteysel (Ms. Shteysel). (Declaration of

Thomas Mahlum, dated September 23, 2013 (Mahlum Decl.) at Ex. A.)2

The patent was applied for on April 14, 2010 and issued August 2, 2011. (Id.)

The USPTO system indicates it was assigned to Z Produx on May 18, 2012.

(Id., Ex. B.) It includes one claim for [t]he ornamental design for the

cosmetic holder, as shown and described. (Id., Ex. A.) The 743 includes a

number of figures, including:

1 MAC brings this dispositive motion early in an effort to avoid needless litigation costs and fees. See Fed.R. Civ. P. 1 (indicating the rules should be administered to secure the just, speedy, and inexpensivedetermination of every action and proceeding); and at 1993 Adv. Comm. Note (recognizing theaffirmative duty of the court to exercise the authority conferred by these rules to ensure that civil litigationis resolved not only fairly, but also without undue cost or delay and that [a]s officers of the court,attorneys share this responsibility with the judge to whom the case is assigned). In the event its motion isdenied, MAC reserves all rights to renew this motion based upon these or additional arguments and upona more fully developed record at the close of discovery.2 The Prosecution History for D642,743 is attached in full to the Mahlum Decl. as Exhibit Y for the Courtsreference.



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(Id., at Figs. 1-3, 8, 9.)

A. The Z Palette is the Product that Embodies the 743 Design.Ms. Shteysel is the president of Z Produx. Z Produx is in the business

of selling the Z Palette, which embodies the 743 patent. (Id., Ex C at 10, 73;

Ex. Z (depicting D642,743 patent marking on back of the Z Palette).) The

Z Palette appears as follows:

(Mahlum Decl., Ex. D.) The opaque rim of the box is relatively thick in

appearance, and is proportionally a thick border as compared to the size of

the window. In fact the thick border constitutes 39% of the surface area of

the Z Palette.3 The material of the cosmetic holder is a matte finish with a

cardboard-like texture. (See id.) Like the 743 design patent, the Z Palette has

two scores or ridges along the edges of the cosmetic holder:

3 The Z Palette is 4.75 inches wide and 8 inches long; the window pane in the lid measures 3.5 inches wideby 6 5/8 inches long. This means that the surface area of the lid is 38 square inches (4.75x8) and thesurface are of the window pane is 23.18 square inches (3.5x6.625). Proportionally, the window pane makesup 61% of the square inches of the lid, whereas the opaque rim makes up the remaining 39% of the squareinches of the lid. See Mahlum Declaration at 4.



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(Id., Ex. E.)

Additionally, as depicted in the 743 design patent, the Z Palette has a

flat, unarticulated hinge-less spine that is flat:

(Id., Ex. F.) These features together could be said to give the cosmetic

holder a book-like design and appearance.

B. Z Produx Publicly Disclosed its Design in a RelatedTrademark ApplicationFiled on February 19, 2009.

On February 19, 2009, more than a year before its design patent

application, Z Produx applied for a registered trademark for the word

Z Palette to be used with a Cosmetic case sold empty and other

comparable uses. (Id., Ex. G at 4.) The Z Palette trademark registration

application states that the Z Palette mark was used in commerce at least asearly as February 12, 2009, and further that the trademark was being used in

commerce as of the date of the trademark application. (Id., at 6 (Commerce

The applicant is using the [Z Palette] mark in commerce, or the applicant's

related company or licensee is using the mark in commerce, or the

applicant's predecessor in interest used the mark in commerce, on or in

connection with the identified goods and/or services. In International Class

018, the mark was first used at least as early as 02/12/2009, and first used in

commerce at least as early as 02/12/2009, and is now in use in such

commerce.).) Finally, the trademark applicant attested its representations

regarding the use of the Z Produx mark in commerce as of February 12,

2009, to be true:



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The undersigned, being hereby warned that willful falsestatements and the like so made are punishable by fineor imprisonment, or both, under 18 U.S.C. Section 1001,and that such willful false statements, and the like, may

jeopardize the validity of the application or any resultingregistration, declares . . . that all statements made ofhis/her own knowledge are true; and that all statementsmade on information and belief are believed to be true.

(Id., at 7.)

The USPTO specifically warns that the filing of a design or other

materials in connection with a trademark application constitutes a public

disclosure:

ALL DATA PUBLIC: All information you submit to the

USPTO at any point in the application and/orregistration process will become public record, includingyour name, phone number, e-mail address, and streetaddress. By filing this application, you acknowledge thatYOU HAVE NO RIGHT TO CONFIDENTIALITY inthe information disclosed. The public will be able toview this information in the USPTOs on-line databasesand through Internet search engines and other on-linedatabases. This information will remain public even ifthe application is later abandoned or any resultingregistration is surrendered, cancelled, or expired.

(Id., Ex. I (available at http://www.uspto.gov/trademarks/teas/#).) Theabove warning is consistent with the Trademark Manual of Examining

Procedure, which provides that The public may view and print images of

the contents of trademark application and registration records through the

TSDR portal on the USPTO website at http://tsdr.uspto.gov/. Electronic

images of Board proceeding records are also available on the USPTO

website at http://ttabvue.uspto.gov/ttabvue/. TSDR and TTABVUE are

available 24 hours a day, seven days a week, free of charge. The public may

also view and print images of the contents of trademark application and

registration records through the Trademark Image Capture and Retrieval

System (TICRS), available in the Public Search Facility on the USPTO

premises. See TMEP 402. (Id., Ex. H, at 109.01; see also id., 111, 402



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(available at http://tmep.uspto.gov/RDMS/detail/manual/TMEP/

Apr2013/d1e2.xml#/manual/TMEP/Apr2013/d1e2.xml).)

Although it had not yet applied for a patent on its product, on

February 12, 2009 Z Produx publicly filed its trademark application

attaching the following image of the Z Palette:

(Id. at 9.) The product pictured in the patent application is the

Z Palette which embodies the asserted design patent. (See id.; cf. Mahlum

Decl., Ex. C at 73 (stating that the Z Palette embodies the 743 design

patent).) As indicated above, the trademark application described the above

specimen by noting that the cosmetic case was sold empty (the cosmeticsshown in the image are for demonstrative purposes only). (Id., Ex. G.)

This image of the design and the description thereof was publicly filed on

February 12, 2009, more than a year before the April 14, 2010 filing of the

743 design patent. (Compare Mahlum Decl., Ex. G (indicating a February 12,

2009 filing date and attaching images of the Z Palette) with Ex. A (reflecting

a filing date of April 14, 2010) and Ex. I (stating that materials filed are

public); and Ex. H (further indicating public online availability of trademark

applications); see also Ex. C at 68 (testifying that an image of the Z Palette

design was attached to a trademark application as of February 19, 2009).)

The trademark was registered on September 1, 2009. (Id., Ex. G at 28

(Trademark principal register dated Sept. 1, 2009).)



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Apparently recognizing that the date of first use in the trademark

application would bar its patent applications pursuant to the on-sale bar

because the date was more than a year prior to its patent applications, on

November 30, 2011, Z Produx cancelled its trademark registration. (See id.,

Ex. G.) On the same day, Z Produx filed a new trademark application for Z

Palette that claimed a May 20, 2009 date of first use. (Id., Ex. J.) At this

time, an issue of fact exists as to the true date of first use, and the

applicability of the on-sale bar.4 But there is no dispute that the design of th

Z Palette was publicly disclosed in the original trademark application, which

was publicly filed on February 19, 2009.

C. The USPTO Rejected Ms. Shteysels Related Utility Patent.In addition to filing for a design patent, Ms. Shteysel also applied for a

utility patent covering the utilitarian aspects of her product. (See id., Ex. K

& Ex. L.) The utility patent application, filed April 14, 2010, sought to claim,

among other things, a cosmetic holder with a magnetic bottom, a spine, and

a cover with a frame in order to define a window for viewing the makeup

containers. (Id., Ex. K, Reply to Office Action dated April 1, 2012, at 4.) Butthe utility patent application was rejected as obvious, in part based on the

Liden patent5 depicted below and assigned to MAC.

4 It is possible that a sale more than a year in advance of the design patent application will beunequivocally established through additional discovery. Therefore as noted in Footnote 1 above MACreserves its rights to renew this motion on that basis at the close of discovery should it identify a sufficientbasis for doing so.5 The Liden patent is US Design Patent D597,256, filed on June 10, 2008. (Mahlum Dec., Ex. X.) Thedesign depicted in Liden is nearly identical to the accused product, with the primary exception of an insertto hold cosmetics in place.



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As the examiner noted, Liden teaches the top cover portion of a cosmetic

holder may contain a frame with an opening in which a clear material may

be inserted such that the opening covered in clear material acts as a window

for viewing the makeup containers when the cover is in a closed position.

(Id., Rejection dated 9/14/11.) Indeed, Ms. Shteysel has acknowledged that

she was not the first inventor to come up with a cosmetic holder with either

a clear top or, of course, an empty base. (See id., Ex. C at 82.)

II. MAC Pro Palette Large SingleThe only MAC product accused of infringement is the MAC Pro

Palette Large/Single (having UPC 7-73602-23605-3) (the MAC Palette).

(Complaint, Dkt.#1, at 11.) The MAC Palette has a distinct appearance

from either the 743 claimed design or the Z Palette that embodies it. First, it

has a narrower opaque rim than the proportions identified in either the 743

or the Z Palette:

(Mahlum Decl., Ex. AA.) The opaque rim of the box is relatively thin and

sleek in appearance, and is proportionally a narrow border as compared to

the size of the window. (See id.) In fact, the narrow border constitutes only

16% of the surface area of the MAC Palette.6 Additionally, rather than

having a flat back hinge that folds back on itself like the Z Palette, the MAC

Palette has a triangular or ridged hinge:

6 The MAC Palette is 4 3/8 inches wide and 7 inches long; the window pane in the lid measures 3 7/8inches wide by 6 5/8 inches long. This means that the surface area of the lid is 30.6 square inches (4.475x7)and the surface are of the window pane is 25.67 square inches (3.875x6.625). Proportionally, the windowpane makes up 83.8% of the square inches of the lid, whereas the opaque rim makes up the remaining16.2% of the square inches of the lid. See Mahlum Declaration at 5.



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(Mahlum Aff., Ex. M.) Also, the edges are flush with one another without

the scoring around the rim of the product present in the Z Palette or 743:

(Mahlum Aff., Ex. N.) Thus, as described further below, the MAC Palette

has a distinct appearance from the Z Produx patent or Z Palette product.

ARGUMENT

Legal Standard

Federal Rule of Civil Procedure 56(a) establishes that a court shall

grant summary judgment if the movant shows that 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 party may move for summary

judgment not only as to an entire case, but also as to a claim, defense, or

part of a claim or defense. Id. The movant bears the initial burden to

demonstrate the lack of a genuine issue of material fact. See Celotex Corp. v.

Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). The

movant has the burden of showing that there is no genuine issue of fact, but

the plaintiff is not thereby relieved of his own burden of producing in turn

evidence that would support a jury verdict [in his favor].Anderson v.

Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986).



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Thus the movant satisfies the burden, the nonmovant must set forth specific

evidence showing that there remains a genuine issue for trial, and may not

rest upon mere allegation or denials of his pleading. Id.

In the case of design patent cases, where no significant distinction in

design has been shown between the patent drawing and its physical

embodiment, it is not error for the court to view them both, and to compare

the embodiment of the patented design with the accused devices. Lee v.

Dayton-Hudson Corp., 838 F.2d 1186, 1189 (Fed. Cir. 1988); Solar Sun Ring Inc.

v. Wal-Mart Stores Inc., No. CV 11-6990 PSG, 2012 U.S. Dist. LEXIS 156373,

*13 (C.D. Cal., Oct. 31, 2013).

I. The MAC Palette Does not Infringe the 743 Design Patent.A cursory review of the features of the MAC Palette as compared to

the 743 reveals a distinct design and appearance of the MAC Palette that

foreclose further consideration of this matter. A design patent is infringed if

the patented design, or any colorable imitation thereof, is applied to any

article of manufacture for the purpose of sale. 35 U.S.C. 289. Thus, a

design patent is infringed by the unauthorized manufacture, use, or sale ofthe article embodying the patented design or any colorable imitation

thereof. See id.; Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162

F.3d 1113, 1116-17 (Fed. Cir. 1998).

A. The 743 Patent is Limited to Designs with SpecificCharacteristics that are not Embodied by the MAC Palette

As an initial matter, a design patentee limits the scope of his patent

by including ornamental features that give the overall design a distinctive

ornamental appearance. Sofpool LLC v. Kmart Corp., No. Civ. S-10-3333,

2013 U.S. Dist. LEXIS 76293, 3-4, 2013 WL 2384331 (E.D. Cal. May 29, 2013)

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

McIntire v. Sunrise Specialty Co., No. Civ. S-11-2495, 2013 U.S. Dist. LEXIS



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65192, at 10-11 (E.D. Cal. May 7, 2013). The claimed design does not cover

the universe of designs that remotely resemble it. See Elmer, 67 F.3d at 1577

(patentee included in its drawings certain features that gave the design a

distinctive ornamental appearance, and thus effectively limited the scope

of its patent claim by including those features in it). Thus, the initial step

in any comparison of designs is a determination of whether the accused

design is even within the limitation on scope that the patentee has imposed,

through his patent drawings. Sofpool LLC, 2013 U.S. Dist. LEXIS 76293, at 4;

McIntire, 2013 U.S. Dist. LEXIS 65192, at 10-11.

For example, in Elmer, the Federal Circuit construed the claims of the

ornamental design for a vehicle top sign holder, as shown and described.

Elmer, 67 F.3d at 1577. The only design shown and described was a

vehicle sign design that included, inter alia, triangular vertical ribs and an

upper protrusion that gave the design a distinctive ornamental appearance.

Id. No other design was suggested by the patent. Id. Because the triangular

vertical ribs were included in the patent drawings, the patentee effectively

limited the scope of its patent claim by including those features in it. Id.(citing In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) (Design patents have

almost no scope. The claim at bar, as in all design cases, is limited to what is

shown in the application drawings.)).

Because a visual comparison to the accused product revealed that the

triangular vertical ribs were not present, the Federal Circuit therefore held

that no reasonable jury could conclude that the overall visual appearance of

the claimed design is substantially similar to the accused design. Id. at 1578

(the overall ornamental appearance of the patented design, as shown in the

patent drawings, is too different from [defendants] design for an ordinary

observer to be induced into purchasing [defendants] product thinking it

was [plaintiffs] design). Therefore the Federal Circuit overturned a jury



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verdict in favor of the plaintiff and entered judgment for the defendant. Id.

Federal District Courts in the Ninth Circuit have applied Elmerto

foreclose detailed consideration of prior art and infringement contentions

where the plaintiff has failed to show a threshold level of similarity between

the patented design and the accused product. For example, in Sofpool, 2013

U.S. Dist. LEXIS 76293, at 4, Judge Karlton of the Eastern District of

California considered whether the patentees limitations on his patent

plainly excluded the accused design:

Of course, the claimed design does not coverthe universe of designs that remotely resemble it.Rather, as an initial matter, a design patentee limits

the scope of his patent by including ornamentalfeatures that give the overall design a distinctiveornamental appearance. Thus, the initial step in anycomparison of designs is a determination of whetherthe accused design is even within the limitation onscope that the patentee has imposed, through hispatent drawings.

Id., at 3 (citation omitted). In considering summary judgment, the Court

construed the claims of the patent and considered the drawings, an example

of which follows:

(Mahlum Decl., Ex. T.) The Sofpool court observed that the design patent

and the accused product shared certain features, including that they were

both designs for an oval, above-ground pool; both featured a tubular top;

both featured side struts along their long sides, stretching from just below

the tubular top, to the ground; both featured side straps that run



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underneath the pool and connect the struts where the struts meet the

ground; both featured angled side walls with a curve or bulge at the

bottom, just before the structure meets the ground; and finally both designs

contained segmented side walls. Sofpool, 2013 U.S. Dist. LEXIS 76293, at 13.

An image of the accused design is contained in the pleadings:

(Case 2:10-cv-03333-LKK-JFM, Dkt.#48 at 11.) However, despite these

similarities, the two designs featured different proportions:

[O]ne ornamental aspect of a design patent is theproportions of the design. The '817 patent claims a pooldesign that is approximately seven (7) times longer than itis tall, in its 2-strut design. Accordingly, the patent claimsa design for a squat pool. Indeed, the overall appearanceof the claimed design is of a squat, wading-type pool.

The accused pool, on the other hand, has a taller andmore elegant appearance. It does not give the appearanceof being squat. Indeed, the accused design is less thanfour (4) times longer (taking the length of the tubular top)than it is tall, approximately, in its 2-strut design. . . .

A design patent cannot, of course, claim everyconceivable shape and proportion that could arise fromits basic design. But that would appear to be the point ofpermitting design patents in the first place. The patent

protects the shape and proportion the patentee chooses,but leaves other shapes and proportions to theimagination of other designers. . .

Sofpool, 2013 U.S. Dist. LEXIS 76293, at 14-17 (emphasis added) (quoting Lee,

838 F.2d at 1188 the district court correctly viewed the design aspects of

the accused devices: the wooden balls, their polished finish and appearance,

the proportions, the carving on the handle, and all other ornamental

characteristics)(emphasis added)). Having concluded that the proportions



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of the designs were not the same, the Sofpool, LLCCourt concluded that no

reasonable juror could find that an ordinary observer would conclude that

the taller, more elegant accused pool embodies the squat pool plaintiff

patented or any colorable imitation thereof. Id., at 16-17. Because the

accused design was not within the limitation on scope that the patentee

imposed in the drawings, the Court did not consider any prior art as it was

rendered unnecessary to do so. Id., at 17 n.10.

Similarly, in Chef'n Corp. v. Trudeau Corp., Case No. C08-01135, 2009

U.S. Dist. LEXIS 47013, 9-11, 2009 WL 1564229 (W.D. Wash. June 4, 2009),

the Court considered [t]he ornamental design for a steamer, as shown and

described. Id., at 9. The Court concluded that defendant was entitled to

summary judgment because the differences between the accused product

and the patented design for a steamer were more than mere difference of

lines in the drawing or sketch or slight variances in configuration. Id., at 10

This was because the design patent depicted two circular solid lines below

the top rim, which according to plaintiffs construction depicted a change

in curvature or slope of a surface as well as a a small, depressed ring atthe center of the steamer:

(Mahlum Decl., Ex. U at Fig. 1.)

The accused product, however, had only one change in concavity

between its base and sides, and aflat center that lacked any central ring other

than that formed by its hole pattern. Chef'n Corp., 2009 U.S. Dist. LEXIS

47013 at 10. For example, see this image of the accused design submitted



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among the pleadings:

(Civ. Case No. 2:08-c01135-MJP, Dkt.#19 at 239.) As such, the Court

concluded as a matter of law that an ordinary observer familiar with the

prior art would recognize that the 503 design presents a more complex

structure in terms of slope. Chef'n Corp., 2009 U.S. Dist. LEXIS 47013, at 10.

Like the designs at issue in Elmer, Sofpool, and Chefn, the 743 patent

design does not bear a threshold resemblance to the MAC Palette. Like all

patents, the 743 patent is limited to what it actually claims: The ornamental

design for the cosmetic holder, as shown and described. (Mahlum Decl., Ex.

A.) The 743 claims a cosmetic holder with a lip that extends beyond the

edge of the cosmetic holder rather than being flush:



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(Id., highlighted excerpts of Figs. 1, 4, 7, 8, 11, 14.) The drawings are all

consistent: The lips along the front side of the design extend past the edge

of the case to give a booklike appearance. (See id.) Additionally, the images

in the picture show two seams or ridges along the side of the cosmetic case

rather than just one where the case would separate. (See id.) The Z Palette

similarly has lips that extend past the front edge of the case and multiple

seams or ridges along the edge of the case:

(Mahlum Decl., Ex. P (highlight added); see also id., Ex. C at 90-91

(explaining that because of the cardboard material the degree of extrusion

by the lip from the box varies by moment in time because it can be moved

back and forth, but that in the inventors opinion the lip in the Z Palette is

the one present in the 743 patent).)

Contrary to the claimed design, the MAC Palette exhibits one seam,

rather than three, and this is only to meet the function of a box that must

open along the seam. Contrary to the claimed design, the edges along three

sides of the box are flush to the sides with no extension of a lip along the

edge of the box. These two distinctions are shown below:

(Mahlum Decl., Ex. Q; see also id., Ex. C at 100 (admitting the MAC Palette

has no lip).)



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Further, the 743 is limited to designs that have a hinge that is flush

with the cosmetic case and formed like the binder or spine of a book:

(Mahlum Decl., Ex. A at Figs. 5 (depicting rear elevational view) & 4

(depicting side elevational view from either side) (highlighting added).)

Again, the drawings are consistent in depicting a hinge side that, though it

has apparent seams, is flush with the sides of the box. (See id.)

Similar to the claimed design, the Z Palette does not have an elevated

hinge along the back of the box:

(Mahlum Decl., Ex R (highlighting added).) In contrast, however, the

accused MAC Palette has a distinctive triangular raised hinge:



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(Mahlum Decl., Ex. M (highlighting added); Ex. C at 97 (agreeing that the

MAC Palette has a different hinge).)

These distinctions exceed the differences elaborated upon and found

to be dispositive in Elmerand Chef'n. Elmer, 67 F.3d at 1577-78 (triangular

vertical ribs present in the claimed design not present in the accused

product foreclosed infringement as a matter of law); Chef'n Corp., 2009 U.S.

Dist. LEXIS 47013 at 10 (infringement foreclosed because patent claimed

two changes in concavity and depressed ring in steamer while accused

product had only one change in concavity and a flat center that lacked any

central ring). Here, the 743 design patent claims two seams or grooves

along the sides of the cosmetic holder: the MAC Palette has only one, and it

is functional rather than ornamental. The 743 design patent claims a book-

like lip that extends beyond the edge of the side of the box: the MAC Palette

is flush along the sides of the box without a book like set of ornamental

lips. The 743 design patent claims a hinge that is flush with the side of the

box: the MAC Palette has a distinctive triangular hinge that is elevated from

the sides of the box.Additionally, though the above is more than sufficient to sustain a

finding of summary judgment against Z Produx, the claimed proportions of

the 743 design patent are also materially distinct from the proportions of

the MAC Palette. The Z Palette has a much thicker opaque rim than the

MAC Palette does, giving an overall different appearance to the products.

The Z Palette rim makes up 39% of the total surface area of the lid of the

cosmetic holder, while the MAC rim makes up only 16% of the surface area

of the lid of the cosmetic holder because it is much narrower. The MAC

opaque rim around the edge of the window is only .25 of an inch thick

while the edge of the Z Palette rim is much wider - .68 of an inch. As in

Sofpool LLC, 2013 U.S. Dist. LEXIS 76293, at 14-17, these differing



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proportions lead to a distinct appearance such that no reasonable jury could

that the ordinary observer might confuse one product for the other.

All of these differing elements contribute to an overall distinct

appearance between the patented design and the accused product. For these

reasons summary judgment should be granted in favor of MAC.

B. The Only Shared Characteristics Between the MAC Paletteand the 743 Design are Functional and Cannot Supply a Basisfor Infringement Allegations

In the event that the Court determines that the patentees limitations

on its design does not plainly exclude the accused palette, the infringement

inquiry then requires a comparison of the whole claimed design to the

design of the accused device. Sofpool LLC, 2013 U.S. Dist. LEXIS 76293, at 4;

McIntire, 2013 U.S. Dist. LEXIS 65192, at 10-11. The comparison requires the

fact-finder to determine whether the patented design as a whole is

substantially similar in appearance to the accused bowl from the

perspective of the ordinary observer familiar with the prior art and

designs. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295 (Fed. Cir.

2010). In Egyptian Goddess, the Federal Circuit recognized that the ordinaryobserver test should be the sole test for determining whether a design

patent has been infringed. 543 F.3d 665, 678 (Fed. Cir. 2006) (abolishing the

point of novelty test).

In determining the overall similarity of design, the ordinary observer

must be deceived by the features common to the claimed and accused

designs that are ornamental, not functional. OddzOn Prods. v. Just Toys, 122

F.3d 1396, 1404 (Fed. Cir. 1997) (a design patent only protects the

ornamental aspects of the design); Elmer, 67 F.3d at 1577 (stating that a

design patent protects only the nonfunctional aspects of an ornamental

design as shown in the patent); Read Corp. v. Portec, Inc., 970 F.2d 816, 820

(Fed. Cir. 1992) (it is the non-functional design aspects that are pertinent to



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determinations of infringement and the patentee must establish that an

ordinary person would be deceived by reason of the common features in

the claimed and accused designs which are ornamental); Lee, 838 F.2d at

1188-90 ([I]t is the non-functional, design aspects . . . that are pertinent to

determinations of infringement. . . . A device that copies the utilitarian or

functional features of a patented design is not an infringement unless the

ornamental aspects are also copied, such that the overall resemblance is

such as to deceive. . . . [While] infringement can be found for designs that

are not identical to the patented design, such designs must be equivalent in

their ornamental, not functional, aspects.).

Thus, in construing the claims of a design patent, the Court must

separate the ornamental and functional features of the patented design.

Richardson, 597 F.3d at 1298. Where a design contains both functional and

non-functional elements, the scope of the claim must be construed in order

to identify the non-functional aspects of the design as shown in the patent.

Id. (quoting OddzOn Prods., 122 F.3d at 1405). The Richardson Court

explained:If the patented design is primarily functional rather thanornamental, the patent is invalid. However, when thedesign also contains ornamental aspects, it is entitled to adesign patent whose scope is limited to those aspectsalone and does not extend to any functional elements ofthe claimed article.

Id. at 1293-94.

In evaluating whether a particular element is functional rather than

ornamental, an aspect is functional if it is essential to the use or purpose

of the article or if it affects the cost or quality of the article. Inwood Labs. v.

Ives Labs., 456 U.S. 844, 851 n.10, 102 S. Ct. 2182 (1982). As one Court

carefully explained, the examination of functional elements is different in

the claim construction analysis than it is when assessing invalidity:



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[Patentee] argues that in distinguishing between thefunctional and ornamental features in the infringementanalysis, the test should be the same as that used indetermining the affirmative defense of invalidity basedon functionality. The test for functionality to invalidate adesign patent is a stringent one that requires a showingthat the appearance of the claimed design is dictated bythe use or purpose of the article. [Patentee] argues thatonly the solely functional features - those that cannot beachieved with an alternative design - are excluded fromthe infringement comparison. However, the process ofdistinguishing the ornamental features is merely a formof claim construction and is distinct from the

functionality analysis of invalidity. A design patent canbe primarily ornamental, yet have swaths of features thatare not infringed if copied. As was the case in OddzOnProds., the functional characteristics, while notinvalidating the design patent, merely limit the scopeof protected subject matter. 122 F.3d at 1406.

Accordingly, even elements that are not solely dictatedby function are not included in the comparison to theextent they are functional.

Spotless Enters. v. A&E Prods. Group L.P., 294 F. Supp. 2d 322, 344-345,

(E.D.N.Y. 2003) (emphasis added, citations and quotations omitted).

In discriminating between functional design aspects that can be

copied and ornamental aspects that can be patented and protected,

Courts evaluate the usefulness of the asserted design. For example, inOddzOn Prods., 122 F.3d at 1405, the Federal Circuit evaluated a design

patent covering a foam football with a tail and fin structure:

(Mahlum Decl., Ex. W.) The accused products by New Toys were also foam

footballs with fins:



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(Mahlum Decl., Ex. V.) Donald S. Chism, 8 CHISM ON PATENTS 23.05[3][e] at

23-267 (2011). The Oddzon Court determined that the design patent covered

both functional and nonfunctional elements. OddzOn Prods., 122 F.3d at 1405

Though the patent holder could claim protection over its specific design, it

could not claim a monopoly over rocket-like tossing balls with a tail:

While [the patentee] correctly states that there are manyways of designing tossing balls it is undisputed thatthe ball in question is specifically designed to be thrownlike a football, yet travel further than a traditional foamfootball. It is the football shape combined with the finson a tail that give the design these functional qualities.The tail and fins on [the patented] design add stability inthe same manner as to the tail and fins founds on dartsor rockets. They are no less functional simply becausetossing balls can be designed without them. . . . These. . . functional characteristics . . . limit the scope of the

protected subject matter.

Id., at 1406.

Here, the only two elements Z Products has identified as shared

between the Z Palette, claimed to embody the 743, and the MAC Palette are

that (1) there is a clear window on the lid; and (2) it is sold empty. (Mahlum

Decl., Ex. S at Interrog. Resp. Nos. 3, 4, 10; Ex. C at 11 (describing the Z

Palette as a cosmetic holder with an empty base and a clear window); Ex.

C at 42 (testifying that the MAC product is exactly like the Z Palette

design because it is being sold without the [cosmetic] inserts, creating an

empty base.); at 43 (testifying that if a cosmetic holder was sold with a

cosmetic insert [that] was inside and not removable, it would not be

infringing); at 96 (testifying that the MAC Palette looked like her own

because it had a clear window and an empty base).) But each of thesedesign features is functional.

Indeed, Plaintiff admits that the purpose of the clear window is so

you can see the product immediately inside and the purpose of the empty

case is so that you can put whatever you want into it. (Mahlum Decl., Ex.

C at 11-12; see also id. at 16 (stating that the design was developed by asking



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a manufacturer to use their own design but to create something that came

with an empty pan and a clear window that was not as long and

rectangular); at 108 (testifying that a cosmetic holder product that does not

come empty cant be customized or allow the customer to mix and match

their make-up and that if the product does not have a clear window the

customer cannot see the product inside without opening the lid); at 131-32

(same).) Like the tailed and finned tossing ball at issue in Oddzon, this

palette was designed to meet a specific functional purpose: to allow users to

see what is in their palette without opening it, and to allow them to

customize the make-up kept inside it.

As Ms. Shteysel testified, the Z Palette consumer base appreciates

these design aspects because of their usefulness, not the ornamental

appearance:

[Customers of the Z Palette] like the window and thatyou can see through it. They like that you can customizeit anyway you want so you can fit any size product, anybrand, all in one palette, interchangeable. They like thatit features a magnet inside. And that I offer differentsizes, I think, and different designs.

(Id., at 94.) Customers appreciate that a clear lid allows them to easily find

and view their make-up choices. (Id., at 103, 105, 109, 110.)

Accordingly, the only two aspects of the asserted design patent

alleged to be present in the MAC Palette that it is sold empty and has a

clear top are purely functional. There is no ornamental value to their use.

The window is clear so that people can see their make-up inside and

extends to the edges of the frame so that most of the palette can be viewed.

The box is sold empty so that people can fill it, not because of the way it

makes the product look. Ms. Shteysels failed utility patent application, if

granted, would have been the appropriate methodology to enforce a

purported monopoly over these functional features. A design patent is not.



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After these functional features are factored out of the analysis through

claim construction as required, there are no shared features or similarity

between the MAC product and the asserted 743 design to form a basis for

potential infringement allegations.

For these reasons summary judgment should be granted in favor of

MAC.

II. The 743 Design Patent is Invalid Due to Prior Disclosure.Under 35 U.S.C. 102(b)(2010)7, a person shall be entitled to a patent

unless the invention was patented or described in a printed publication in this

or a foreign country or in public use or on sale in this country, more than

one year prior to the date of the application for patent in the United States.

(Emphasis added.) Such disclosures apply to invalidate design patents as

well as utility patents. In re Mann, 861 F.2d 1581, 1581-82 (Fed. Cir. 1988)

(public display of design at a trade show constitutes public use within

meaning of Section 102(b) and was therefore barred); Penn Fabrication

(U.S.A.) v. Soulbella Enters., Case No. 98-3458, 1998 U.S. Dist. LEXIS 17348, at

2 (C.D. Cal. Aug. 5, 1998) (use of easel at seminar more than one year priorto filing was public use sufficient to show lack of likelihood of success on

the merits).

Here, the Z Palette design was publicly disclosed in a trademark

application dated February 12, 2009. (Mahlum Decl., Ex. G (indicating a

February 12, 2009 filing date and attaching images of the Z Palette).) The

submission of the design to the trademark office was public at the time of

disclosure. (Mahlum Decl., Ex. I (stating that materials filed are public); Ex.

H at 109.01, 111, 402 (stating that the public has 24-hour online access to

all trademark filings).) See also 37 CFR 2.27(b) (access to the file of a

7 This section was amended under the AIA for patents filed after March 16, 2013. Because the 743 wasfiled before that date, the prior version of Section 102 is referred to.



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particular pending [Trademark] application will be permitted prior to

publication under 2.80 upon written request);American Sign & Indicator

Corp. v. Schulenburg, 267 F.2d 388, 394 (7th Cir. 1959) (The design of the

sign had been made open for public inspection by the copyright registration

more than one year prior to filing the patent application.). The public

disclosure of a the Z Palette design to the trademark office therefore

occurred on February 12, 2009, which is more than a year before the April

14, 2010 design patent filing. (Mahlum Decl., Ex. A (reflecting a filing date

of April 14, 2010).) Because of this timeline, the disclosure of the Z Palette

design to the trademark office renders the 743 patent design is anticipated

and invalid pursuant to 35 U.S.C. 102(b).

CONCLUSION

For the foregoing reasons, defendant Make-Up Art Cosmetics, Inc.

respectfully requests that summary judgment be granted in its favor on the

grounds of non-infringement of the asserted design patent, and invalidity in

light of the public disclosure of the design in connection with the February

19, 2009 patent application.

Dated: September 23, 2013 ROBINS, KAPLAN, MILLER & CIRESI L.L.P.

By: /s/ David MartinezDavid Martinez

Attorneys for Defendant and Counterclaim-Plaintiff,MAKE-UP ART COSMETICS, INC.


Documents

Z Produx v. MAC - MSJ Brief