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Before The
United States Supreme Court
ALLYSON WALLACE, Petitioner,
v.
IDEAVILLAGE PRODUCTS CORPORATION,
Respondent.
_______
QUESTION PRESENTED.
In this design patent infringement case, the
accused items were ruled non-infringing.
Petitioner Wallace respectfully requests that a
writ of certiorari be issued to answer the following
question:
ii
TABLE OF CONTENTS
Page
QUESTIONS PRESENTED
. ii
ii
TABLE OF CONTENTS
. iii
TABLE OF AUTHORITIES
. v
. 1
STATEMENT OF JURISDICTION
. 1
. 2
ARGUMENT
STATEMENT OF THE CASE .. 3
Introduction
.. 3
I. The Gorham, or the Goddess approach?
Fundamental change from
substantial overall similarity to
a sum of dissimilarities
being the proof standard . 6
II. The Procedural and Decisional Facts
Material to the Question Presented
. 9
III. Applying the Federal Circuits Differences-First
approach to the designs in Gorham
would provoke a different outcome
. 10
IV. Error not to follow Gorhams teachings about
. 13
overall identity and observed differences
V. The Federal Circuits Sufficiently Distinct
approach obtrudes the decisional rules
set in Gorham
. 20
Pre-2008 Adherence to Gorham . 20
iii
Page
VI. Post-2008: Federal Circuits adoption of
Sufficiently Distinct criterion as dispositive
of infringement effectively ended Petitioners
case and others
. 25
VII. The Sufficiently Distinct Approach of
Egyptian Goddess is Oppositional to
Gorhams Silver Standard of
Substantial Overall Sameness . 30
CONCLUSION
. 33
CONTENTS OF APPENDIX
APPENDIX A Orders and Opinion on Appeal
Page
Federal Circuit Order denying rehearing.
A2
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A14
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iv
TABLE OF AUTHORITIES
CASES
Page
Application of Rubinfield,
. 31
2008 WL 4838141,
2008 U.S. Dist. LEXIS 90228
(D. Utah Nov. 4, 2008)
. 23
1995 WL 873730,
1995 U.S. Dist. LEXIS 21156
(C.D. Cal. Oct. 5, 1995) . 23
. 24
22, 31
Page
. 21
4, passim
. 30
2009 WL 890550,
2009 U.S. Dist. LEXIS 27056
(E.D.N.Y. Mar. 31, 2009) . 27
. 32
vi
Page
. 22
2009 WL 691594,
2009 U.S. Dist. LEXIS 20948
(N.D. Tex. Mar. 16, 2009) . 27
. 17
Page
2015 WL 4538444,
2015 U.S. Dist. LEXIS 98246
(D. Colo. July 28, 2015) . 26
2012 WL 74855,
2012 U.S. Dist. LEXIS 2565
(N.D. Ill. Jan. 10, 2012) . 28
. 27
. 26
. 21
. 20
viii
Page
STATUTES
35 U.S.C. 171
. 2, 30
35 U.S.C. 289
. 5, 34
OTHER AUTHORITIES
Desmet & Hekkert,
Framework of Product Experience,
1 Intl Journal of Industrial Design, 57 (2007) .. 7
Michael J. Mazzeo, et. al., Explaining the
"Unpredictable": An Empirical Analysis of U.S.
Patent Infringement Awards,
35 Int'l Rev. L. & Econ. 58 (2013)
. 13
Darin Snyder, Mark Davies, The Federal Circuit
and the Supreme Court (Circa 2009),
19 Fed. Circuit B.J. 1 (2009)
.. 22, 27
ix
Where a design contains both functional and nonfunctional elements, the scope of the claim must be
construed in order to identify the non-functional aspects
of the [patented] design. OddzOn Products, Inc. v. Just
Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997).
I.
10
II.
THE PROCEDURAL AND DECISIONAL FACTS
MATERIAL TO THE QUESTION PRESENTED.
Here, the petitioner-inventor Wallaces
design patent infringement claim was rejected
without Gorhams threshold questions being
reached. Why? The Magistrate judge decided that
a sufficient quanta of distinct aspects (six) were
dispositive, based on the Federal Circuit
approach.15 The Gorham proof standard of
substantial overall identity of design, and Gorhams
measure of an ordinary observer being deceived,
were not applied.
The Federal Circuit approach shortcuts
Gorham to decide only if differences can be court
summed to a sufficiently distinct conclusion.
Using the Goddess approach and its distinct sum,
the lower court granted a judgment of noninfringement, which was affirmed on appeal.16
15
10
III.
and brush, (3) the ovoid design of the head, and (4) the
surface details thereupon; see, Appendix at A10.
17
11
12
19
13
IV.
ERROR NOT TO FOLLOW GORHAMS TEACHINGS
ABOUT OVERALL IDENTITY AND
OBSERVED DIFFERENCES.
20
14
22
15
24
16
17
27
18
19
20
V.
34
21
35
22
23
38
24
25
41
26
42
Appendix, at A23.
27
44
28
29
30
49
31
50
32
53
33
CONCLUSION
It was error, harmful to design patentees, to
replace Gorhams substantial identity and overall
56
34
58
35
Respectfully submitted,
Prof. Charles L. Thomason
thomason@spatlaw[dot]com
A1
CONTENTS OF APPENDIX
APPENDIX A Orders and Opinion on Appeal
And Statutes Involved.
Page
Federal Circuit Order denying rehearing.
A2
A4
A14
A15
Statutes Involved
A28
A2
Defendant-Appellee
2015-1077
A3
A4
Defendant-Appellee
2015-1077
A5
A6
A7
Wallace v. Ideavillage Products Corp., No. 06-CV5673-JAD, 2014 WL 4637216, at *3 (D.N.J. Sept. 15,
2014) (Dist. Ct. Op.). In granting summary
judgment, the district court
acknowledge[d] manifest differences in the
overall appearance of the '990 patent and the
[Ideavillage] product. Indeed, a comparison
supports a finding that these two designs are
sufficiently distinct and Ms. Wallace cannot,
as a matter of law, prove that the designs
appear substantially the same. To the
ordinary observer, in other words, the two
designs do not look substantially the same.
Id. at *4.
We have compared the D990 patent 's
drawings to the photographs of the accused product
in Ms. Wallace's expert report and agree with the
district court that no reasonable fact-finder would
find them to be substantially the same under the
first stage of the ordinary observer test. The district
court compared the following designs:
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A14
IDEAVILLAGE PRODUCTS
CORPORATION, Defendant.
ORDER
DICKSON, U.S.M.J.
This matter comes before the Court upon
Defendant Ideavillage Products Corporation's
(Ideavillage) motion for summary judgment (D.E.
No. 61). The Court conducted a hearing on this
motion on July 15, 2014. Upon careful
consideration of the parties submissions and
arguments, and for the reasons set forth in the
accompanying Opinion, and for good cause shown:
IT IS on this 15th day of September, 2014.
ORDERED that Defendants motion for
summary judgment, (D.E. No. 61), is GRANTED;
and it is further
ORDERED that Plaintiffs Amended
Complaint is dismissed in its entirety and with
prejudice; and it is further
ORDERED that the Clerk of Court shall
close this case.
Joseph A. Dickson
A15
IDEAVILLAGE PRODUCTS
CORPORATION, Defendant.
OPINION
DICKSON, U.S.M.J.
This matter comes before the Court upon
Defendant Ideavillage Products Corporation's
(Ideavillage) motion for summary judgment (D.E.
No. 61).
The Court has reviewed the arguments
raised by the parties in their briefs and at its
hearing on this motion on July 15, 2014. Upon
careful consideration, and for the reasons set forth
below, Defendant's motion for summary judgment
is GRANTED.
I. BACKGROUND1
Plaintiff, Allison Wallace, is the named
inventor of United States Design Patent No.
D485,990 (the '990 patent) for the ornamental
design of a body washing brush. (Defendant's L.
Civ. R. 56.1 Statement of Material Facts (Def.'s
56.1), D.E, No. 612, 2). The '990 patent was
A16
2
Plaintiff alleges no knowledge of this [fact] and the
document speaks for itself. (Plaintiff's Response to
Defendant's R. 56.1 Statement of Material Facts and
Plaintiff's Supplemental Statement of Disputed Material
Facts (Pl.'s 56.1), D.E. No. 631, 3). The '914 patent
named Ideavillage as the patent assignee, (Ex. 2 to Def's
56.1, D.E. No. 615). Therefore, the Court found
Defendant to be the owner of the '914 patent.
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(Fed.Cir.2010).
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A22
IV Product
4
Defendant also argues that the claimed design is a
shower attachment with a hollow housing, where the
end or the handle is designed to receive a hose or a water
source. (Def.'s Mot Br., D.E. No. 611, at 14). In
contrast. the accused product is a battery operated, brush
with scaled housing and the end of the handle cannot be
attached to a base or water source. (Id.) The Court finds
that the difference, although plain and apparent,
concerns the function of the product, therefore; is not
within the scope of the design patent protection.
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Egyptian Goddess abolished the element-byelement analysis. See 543 F.3d. at 671. Instead, the
A27
Joseph A. Dickson
A28
STATUTES INVOLVED
35 U.S.C. 289 is the section of the 1952
Patent Act5 that applies primarily to the questions
presented in this petition. In relevant part, 289
provides an Additional Remedy for Infringement of
Design Patent, for proof of the following:
35 U.S.C. 289. Additional remedy
for infringement.
Whoever during the term of a patent for
a design, without license of the owner, (1)
applies the patented design, or any colorable
imitation
thereof,
to
any
article
of
manufacture for the purpose of sale, or (2)
sells or exposes for sale any article of
manufacture to which such design or colorable
imitation has been applied shall be liable to
the owner to the extent of his total profit
It deserves mention that or any colorable
imitation was not in the Patent Act when this
Court decided Gorham Mfg. Co. v. White, 81 U.S. (14
Wall.) 511, 528, 20 L. Ed. 731 (1871). The Patent Act
of 18876 added that term (apparently based on
Gorham Mfg., 81 U.S. at 530), as follows:
1. Hereafter, during the term of letters
patent for a design, it shall be unlawful for
any person other than the owner of said letters
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