Puma v. Forever 21 - MSJ (Design Patent Noninfringement)

Case 2:17-cv-02523-PSG-E Document 108 Filed 10/22/18 Page 1 of 22 Page ID #:1172
Seong Kim (CA ID No. 166604)

1 shkim@sheppardmullin.com
SHEPPARD, MULLIN, RICHTER
2 & HAMPTON LLP
1901 Avenue of the Stars, 16th Floor
3 Los Angeles, CA 90067
310.228.3700/310.228.3701 (fax)
4
Laura L. Chapman (CA ID No. 167249)
5 lchapman@sheppardmullin.com
Lai L. Yip (CA ID No. 258029)
6 lyip@sheppardmullin.com
Toni Qiu (CA ID No. 302268)
7 tqiu@sheppardmullin.com
8 & HAMPTON LLP
Four Embarcadero Center, 17th Floor
9 San Francisco, CA 94111
415.434.9100/415.434.3947 (fax)
10
Kent E. Baldauf, Jr. (admitted pro hac vice)
11 kbaldaufjr@webblaw.com
Cecilia R. Dickson (admitted pro hac vice)
12 cdickson@webblaw.com
Christian D. Ehret (admitted pro hac vice)
13 cehret@webblaw.com
THE WEBB LAW FIRM
14 One Gateway Center
420 Ft. Duquesne Blvd., Suite 1200
15 Pittsburgh, PA 15222
412.471.8815/412.471.4094 (fax)
16 Attorneys for Defendant Forever 21, Inc.
17
IN THE UNITED STATES DISTRICT COURT
18 FOR THE CENTRAL DISTRICT OF CALIFORNIA
19 PUMA SE and PUMA NORTH ) Civil Action
AMERICA, INC., )
20 ) No. 2:17-cv-02523-PSG-E
Plaintiffs, )
21 ) DEFENDANT FOREVER 21,
v. ) INC.’S NOTICE OF MOTION
22 ) AND MOTION FOR PARTIAL
FOREVER 21, INC., ) SUMMARY JUDGMENT
23 )
Defendant. ) Date: December 10, 2018
24 ) Time: 1:30 p.m.
) Judge: Philip S. Gutierrez
25 ) Courtroom: 6A
26
27
28
Defendant’s Motion for Partial Summary Judgment
No. 2:17-cv-02523-PSG-E
1 NOTICE OF MOTION AND

MOTION FOR PARTIAL SUMMARY JUDGMENT
2
3 TO ALL PARTIES AND THEIR COUNSEL OF RECORD:
4 PLEASE TAKE NOTICE that on December 10, 2018, at 1:30 p.m., or as soon
5
thereafter as counsel may be heard in the courtroom of the Honorable Philip S.
6
st
7 Gutierrez, located in the First Street Courthouse, 350 West 1 Street, Courtroom 6A,
8 6th Floor, Los Angeles, CA 90012, Defendant, Forever 21, Inc. (“Forever 21”), will
9
move and hereby does move for summary judgment of noninfringement on the
10
11 design patent infringement claim (Dkt. No. 64, ¶¶ 50-60), in which Plaintiffs Puma
12 SE and Puma North America, Inc. (collectively, “Puma”) assert U.S. Design Patent
13
No. D774,288 (“the ’288 Patent”).
14
15 This Motion for Summary Judgment is made following the conference of
16 counsel pursuant to C.D. Local Rule 7-3, the same of which took place on August
17
14, 2018.
18
19 Respectfully submitted,
20 SHEPPARD, MULLIN, RICHTER
21 & HAMPTON LLP
22 Dated: October 22, 2018 s/ Laura L. Chapman
23 Laura L. Chapman
24 Attorney for Defendant
25
26
27
28
Defendant’s Motion for Partial Summary Judgment
No. 2:17-cv-02523-PSG-E
1 TABLE OF CONTENTS
2
TABLE OF CONTENTS ........................................................................................ I
3
TABLE OF AUTHORITIES ................................................................................ II
4
I. INTRODUCTION .........................................................................................1
5 II. SUMMARY JUDGMENT STANDARD .....................................................1
6 III. DESIGN PATENT INFRINGEMENT STANDARD ................................2
7 IV. FACTUAL BACKGROUND........................................................................4
8 V. ARGUMENT..................................................................................................6
9 A. The Yoki Sneaker Does Not Infringe Puma’s Exceedingly Narrow Design
Patent ...............................................................................................................7
10
B. The Yoki Sneaker Is Plainly Noninfringing ..................................................10
11
12 C. The Prior Art Confirms Noninfringement .....................................................15
13 VI. CONCLUSION ............................................................................................17

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Defendant’s Motion for Partial Summary Judgment - i
No. 2:17-cv-02523-PSG-E
1 TABLE OF AUTHORITIES
2
Cases
3 Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) .................................................... 1, 2
4 Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007) . 2,
3, 8, 11
5 Boiling Point Grp., Inc. v. Fong Ware Co., No. 2:16-CV-01672-RGK-JEM, 2017 U.S.
6 Dist. LEXIS 171234 (C.D. Cal. Apr. 27, 2017) ............................................................. 14
Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir. 2002) .................. 7
7 Deckers Outdoor Corp. v. Romeo & Juliette, Inc., No. 2:15-cv-02812-ODW(CWx), 2016
8 U.S. Dist. LEXIS 166153 (C.D. Cal. Dec. 1, 2016)..................................................... 8, 9
Dyson, Inc. v. SharkNinja Operating LLC, No. 14-cv-779, 2016 U.S. Dist. LEXIS
9 142255 (N.D. Ill. Oct. 13, 2016) .................................................................................... 10
10 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) ....................... passim
Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312 (Fed. Cir. 2015) ............ 8, 10
11 HR US LLC v. Mizco Int’l, Inc., No. CV-07-2394 (DGT)(JO), 2009 U.S. Dist. LEXIS
12 27056 (E.D.N.Y. Mar. 31, 2009) .............................................................................. 13, 14
In re Mann, 861 F.2d 1581 (Fed. Cir. 1988) ................................................................... 2, 7
13 Lawman Armor Corp. v. Master Lock Co., No. 02-6605, 2004 U.S. Dist. LEXIS 3705
14 (E.D. Pa. Mar. 11, 2004) .......................................................................................... 14, 15
Lin v. Belkin Int’l, Inc., No. 8:16-cv-628-JLS-DFMx, 2017 U.S. Dist. LEXIS 167499
15 (C.D. Cal. May 12, 2017) ............................................................................................... 14
16 Minka Lighting, Inc. v. Maxim Lighting Int'l, Inc., No. 3:06-cv-995-K, 2009 U.S. Dist.
LEXIS 20948 (N.D. Tex. Mar. 16, 2009) ...................................................................... 14
17 OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997) ........................ 2, 7
18 Sofpool LLC v. Kmart Corp., No. S-10-3333 LKK/JFM, 2013 U.S. Dist. LEXIS 76293
(E.D. Cal. May 29, 2013) ................................................................................................. 9
19 Sport Dimension, Inc. v. Coleman Co., Inc., 820 F.3d 1316 (Fed. Cir. 2016) ................ 2, 9
20 Tropicana Prods., Inc. v. Land O’Lakes, Inc., 286 F. Supp. 2d 343 (D. Del. 2003) ........ 13
Zidell v. Dexter, 262 F. 145 (9th Cir. 1920) ...................................................................... 16
21
Statutes
22 35 U.S.C. § 171 .................................................................................................................... 2
23 Other Authorities
24 Paul Gorman, “George Cox: The origins of the Diano Brothel Creeper and Samples
ordered by Malcolm McLaren in 1973,” http://www.paulgormanis.com/?p=13103) ..... 5
25 Wikipedia entry for “Brothel Creeper,” https://en.wikipedia.org/wiki/Brothel_creeper) ... 5
26 Rules
Fed. R. Civ. P. 56(a)............................................................................................................. 1
27
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Defendant’s Motion for Partial Summary Judgment - ii
No. 2:17-cv-02523-PSG-E
1 I. INTRODUCTION
2 Forever 21, Inc. moves for summary judgment of noninfringement of U.S.

3
Design Patent No. D774,288 (“the ’288 Patent”) (Dkt. No. 64, ¶¶ 50-60). This claim
4
5 has no merit as a matter of law because the design patent is narrow and not infringed
6 by Forever 21’s facially different shoe, especially considering how close Puma’s
7
patent is to the prior art.
8
9 The present Motion comes before the Court with a more developed record
10 following the 12(b)(6) determination – a record that demonstrates there is no basis

11
to allow these unsupported claims to continue further. See Dkt. No. 61, at 5-6. At
12
13 this stage of the proceedings, Puma’s claim cannot survive upon a mere showing of
14 plausibility. Because there are no genuine disputes of material fact, Forever 21
15
moves for summary judgment as a matter of law.
16
17 II. SUMMARY JUDGMENT STANDARD
18 Summary judgment is appropriate when “there is no genuine dispute as to any
19
material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ.
20
21 P. 56(a). In ruling on a motion for summary judgment, “[t]he evidence of the non-
22 movant is to be believed, and all justifiable inferences are to be drawn in his
23
favor.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). “As to
24
25 materiality, the substantive law will identify which facts are material. Only disputes
26 over facts that might affect the outcome of the suit under the governing law will
27
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Defendant’s Motion for Partial Summary Judgment - 1
No. 2:17-cv-02523-PSG-E
1 properly preclude the entry of summary judgment. Factual disputes that are
2 irrelevant or unnecessary will not be counted.” Id. at 248. Only “genuine” disputes
3
of material facts preclude entry of summary judgment, i.e., disputes where “evidence
4
5 is such that a reasonable jury could return a verdict for the nonmoving party.” Id.
6 III. DESIGN PATENT INFRINGEMENT STANDARD
7
Design patents protect the ornamental designs for articles of manufacture. 35
8
9 U.S.C. § 171. The scope of a design patent is “limited to what is shown in the
10 application drawings.” In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988). To
11
infringe, an accused product “must encompass the claimed ornamental features of
12
13 all figures of a design patent.” Arminak & Assocs., Inc. v. Saint-Gobain Calmar,
14 Inc., 501 F.3d 1314, 1320 (Fed. Cir. 2007) (emphasis in original). As such, it is
15
often said that “design patents have almost no scope.” Mann, 861 F.2d at 1582.
16
17 Design patents are intended to cover aesthetics only; they do not cover
18 functional aspects of products. See OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d
19
1396, 1405 (Fed. Cir. 1997) (“Where a design contains both functional and non-
20
21 functional elements, the scope of the claim must be construed in order to identify the
22 non-functional aspects of the design as shown in the patent.”). Such functional
23
elements are relevant only to the extent they affect the ornamental appearance of the
24
25 object. See Sport Dimension, Inc. v. Coleman Co., Inc., 820 F.3d 1316, 1323 (Fed.
26 Cir. 2016) (“[T]he fact finder should not focus on the particular designs of these
27
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No. 2:17-cv-02523-PSG-E
1 elements [that serve a functional purpose] when determining infringement, but rather
2 focus on what these elements contribute to the design’s overall ornamentation.”).
3
Design patents that include many functional features and little ornamentation are
4
5 particularly narrow. Id. Design patent infringement is evaluated under the “ordinary
6 observer” test, which provides infringement exists when two designs are viewed as
7
“substantially the same.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678
8
9 (Fed. Cir. 2008). The similarity must be so great that it would “deceive such an
10 observer, inducing him to purchase one supposing it to be the other.” Id. at 670.
11
The ordinary observer is the “ordinary purchaser” of “the actual product that
12
13 is presented for purchase”—here, a typical sneakers consumer. Arminak, 501 F.3d
14 at 1322. Ordinary purchasers are deemed to be “familiar with the prior art.”
15
Egyptian Goddess, 543 F.3d at 681. Thus, purchasers “will attach importance to
16
17 differences between the claimed design and the prior art depending on the overall
18 effect of those differences on the design.” Id. at 677. Where “there are many
19
examples of similar prior art designs . . . differences between the claimed and
20
21 accused designs that might not be noticeable in the abstract can become significant
22 to the hypothetical ordinary observer who is conversant with the prior art.” Id. at
23
678.
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25
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No. 2:17-cv-02523-PSG-E
1 IV. FACTUAL BACKGROUND
2 The claim addressed in this Motion pertains to one of the three accused shoes,
3
namely, the Creeper. The other two shoes, the Bow Slide and the Fur Slide, are not
4
5 currently included in any allegations of design patent infringement.
6 The ’288 Patent entitled “Shoe,” discloses and claims a lace-up shoe as shown
7
in eight figures that are part of the ’288 Patent. Three of those figures are below:
8
9
10
11
12
13
Dkt. No. 64-1 (Dickson Declaration at ¶ 3 and Exhibit 1, Figs. 1, 3 and 4). Puma
14
15 refers to this design as its “Creeper” shoe model. Dkt. No. 64, at ¶¶ 18-19.
16
17
18
19
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21 Dkt No. 64, at ¶ 24.
22 Puma’s decision to call this design the “Creeper” is no accident, and does not
23
show any spark of originality because the name was chosen by Puma to reference a
24
25 well-known shoe style dating back decades to the mid-twentieth century. The prior
26 art submitted by Puma to the USPTO during prosecution reveals that so-called
27
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No. 2:17-cv-02523-PSG-E
1 “Brothel Creeper” shoes were a well-known shoe type originating after World War
2 II and being popular from time to time thereafter. See Dkt. No. 64-1, at 2 (citing
3
Paul Gorman, “George Cox: The origins of the Diano Brothel Creeper and Samples
4
5 ordered by Malcolm McLaren in 1973,” http://www.paulgormanis.com/?p=13103);
6 see also Dkt. No. 64-1, at 1 (citing Wikipedia entry for “Brothel Creeper,”
7
https://en.wikipedia.org/wiki/Brothel_creeper) (“Brothel creepers (sometimes
8
9 shortened to creepers) are a style of shoe which has thick crepe soles, often in
10 combination with suede uppers. This style of footwear became fashionable in the
11
years following World War II, seeing resurgences of popularity at various times ever
12
13 since.”). Exemplary prior art Brothel Creeper shoes submitted by Puma to the
14 USPTO are depicted below, including one shoe that appears to be a Puma shoe and
15
is strikingly similar to the shoe depicted in the ’288 Patent.1
16
17
18
19
20 1
Dkt. No. 64-1, at 1-2 (citations omitted). When submitting the prior art photo of
21 the purported Puma Creeper shoe, Puma denied that the shoe was an official Puma
product, but claimed that it was a “home-made, one-off shoe that was worn only
22
once at a private event where photos happened to be incidentally taken.”
23 Information Disclosure Statement (October 25, 2016), Dickson Declaration at ¶ 7
24 and Exhibit 5. At that time, Puma’s counsel represented to the USPTO that he did
not believe the Nike or Adidas shoes were ever produced or marketed for public
25 release. Id. In any event, Puma has never disputed the prior art status of the images
26 of these various shoes that it submitted to the USPTO, despite trying to downplay
their historical significance. See, e.g., Dkt. No. 58, at 5 (Puma referring to Nike and
27 Adidas shoes as “prior art shoes”).
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No. 2:17-cv-02523-PSG-E
1
2
3
4
5
6
7
8
9
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11 Against this backdrop, Puma accused the following Forever 21 “Yoki”
12
sneakers of infringement of the ’288 Patent:
13
14
15
16
17
18
19
Dkt. No. 64, at ¶¶ 19, 53.
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21 V. ARGUMENT
22
Puma’s design patent claim fails as a matter of law. First, Puma’s narrow
23
design patent is easily distinguished from the accused sneakers, particularly in light
24
25 of the very similar prior art. Courts routinely jettison such design patent
26
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No. 2:17-cv-02523-PSG-E
1 infringement claims on summary judgment, based on no more than a visual

2 inspection of the relevant designs.
3
A. The Yoki Sneaker Does Not Infringe Puma’s Exceedingly Narrow
4 Design Patent
5
Because they are limited to what is specifically shown in the application
6
drawings, “design patents have almost no scope.” Mann, 861 F.2d at 1582. Further,
7
8 the patent must be construed not to extend to functional aspects of the object in which
9
the design is embodied. OddzOn Prods., 122 F.3d at 1405. By both measures,
10
11 Puma’s patent is of the narrowest kind.
12 In addition, because the ’288 Patent drawings claim every single aspect of the
13
shoe as shown, Puma cannot now try to parse specific elements of the shoe and claim
14
15 the presence of only one element is sufficient to prove infringement. Design patent
16 applicants are permitted to claim only portions of the claimed design by showing
17
some aspects of the design in broken (i.e., dashed) lines, and by including an
18
2
19 appropriate disclaimer. That is not what Puma has done. Here, Puma claimed
20 everything shown in the drawings. See Dkt. No. 64-1; Contessa Food Prods., Inc.
21
v. Conagra, Inc., 282 F.3d 1370, 1378 (Fed. Cir. 2002) (“If features appearing in the
22
23 figures are not desired to be claimed, the patentee is permitted to show the features
24 in broken lines to exclude those features from the claimed design, and the failure to
25
26 2
Examples of such partially-claimed shoe designs may be found in U.S. Patent Nos.
27 D318,945 and D557,489 to Nike, Inc., discussed infra.
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No. 2:17-cv-02523-PSG-E
1 do so signals inclusion of the features in the claimed design.”). Puma’s patent is

2 narrow because all the design features shown in all the drawings must be
3
encompassed by the accused shoe. See Arminak, 501 F.3d at 1320.
4
5 The ’288 Patent is also directed to the design for a substantially functional
6 object—a shoe—and accordingly includes a number of features that are functional.

7
The overall foot-like shape and configuration of the shoe—i.e., having a sole, an
8
9 upper, an opening near the rear portion, and a closure mechanism (in this case,
10 laces)—are functional elements. These elements are what allow the shoe to permit
11
entry of a foot, secure the shoe to the foot, and protect the foot from external
12
13 elements and forces. Because there are essentially no alternative ways to accomplish
14 these functions, and omitting any of these features would adversely affect the utility
15
of the shoe, they are functional. See Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,
16
17 796 F.3d 1312, 1329-30 (Fed. Cir. 2015) (“We have not mandated applying any
18 particular test for determining whether a claimed design is dictated by its function
19
and therefore impermissibly functional. We have often focused, however, on the
20
21 availability of alternative designs as an important—if not dispositive—factor
22 in evaluating the legal functionality of a claimed design.”). In short, these elements
23
are functional because they “help the shoe function as a shoe.” Deckers Outdoor
24
25 Corp. v. Romeo & Juliette, Inc., No. 2:15-cv-02812-ODW(CWx), 2016 U.S. Dist.
26 LEXIS 166153, at *23-24 (C.D. Cal. Dec. 1, 2016) (emphasis in original).
27
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No. 2:17-cv-02523-PSG-E
1 This is not to say that no shoe can function unless it looks like the shoe
2 depicted in the ’288 Patent drawings. Of course, many patentable shoe designs are
3
capable of functioning as a shoe. Rather, the point is that the presence and
4
5 arrangement of the basic components of a shoe do not constitute ornamental design
6 choices that are protectable by a design patent. Those choices are reflected in the
7
specific shapes and appearances of the components as they contribute to the overall
8
9 aesthetic look of the shoe. See Sport Dimension, 820 F.3d at 1323 (“[T]he armbands
10 and side torso tapering serve a functional purpose, so the fact finder should not focus
11
on the particular designs of these elements when determining infringement, but
12
13 rather focus on what these elements contribute to the design’s overall
14 ornamentation.”). Put another way, “[t]he patent protects the shape and proportion
15
the patentee chooses, but leaves other shapes and proportions to the imagination of
16
17 other designers.” Sofpool LLC v. Kmart Corp., No. S-10-3333 LKK/JFM, 2013 U.S.
18 Dist. LEXIS 76293, at *15-17 (E.D. Cal. May 29, 2013) (granting summary
19
judgment of noninfringement).
20
21 Here, “[b]ecause of the design’s many functional elements and its minimal
22 ornamentation, the overall claim scope of the claim is accordingly narrow.” Sport
23
Dimension, 820 F.3d at 1323. The chosen thickness and specific contours of the
24
25 vertical ridging of the sole shown in the ’288 Patent drawings, for example, may be
26 ornamental, but not the location and existence of the sole per se. See Deckers
27
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No. 2:17-cv-02523-PSG-E
1 Outdoor Corp., 2016 U.S. Dist. LEXIS 166153, at *17-19; Dyson, Inc. v. SharkNinja
2 Operating LLC, No. 14-cv-779, 2016 U.S. Dist. LEXIS 142255, at *11 (N.D. Ill.
3
Oct. 13, 2016) (“The long tube [of the vacuum cleaner] is determined by function,
4
5 but the cylindrical shape and ornamentation of the tube and the cylindrical cuffs are
6 protected by the design patent.”). Likewise, the ’288 Patent drawings depict
7
ventilation holes along the sides of the upper, which perform a functional purpose
8
9 of ventilation—limiting the scope of the patented design to the number, shape, size,
10 and placement of those holes. In sum, Puma’s design patent rights are strictly limited
11
to only the very specific ornamental choices that it made and expressly claimed in
12
13 the patent drawings.
14 B. The Yoki Sneaker Is Plainly Noninfringing
15
The Yoki sneaker is plainly distinct from the ornamental design covered by
16
17 the ’288 Patent. No inquiry into the prior art is even necessary to grant this Motion.
18 See Egyptian Goddess, 543 F.3d at 678 (“In some instances, the claimed design and
19
the accused design will be sufficiently distinct that it will be clear without more that
20
21 the patentee has not met its burden of proving the two designs would appear
22 ‘substantially the same’ to the ordinary observer.”); see also Ethicon Endo-Surgery,
23
796 F.3d at 1337 (“[C]omparing the claimed and accused designs with the prior art
24
25 is beneficial only when the claimed and accused designs are not plainly dissimilar.
26 Because the district court found the nonfunctional, ornamental aspects of the claimed
27
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No. 2:17-cv-02523-PSG-E
1 and accused designs to be plainly dissimilar, it did not need to compare the claimed
2 and accused designs with the prior art, as resolution of the infringement inquiry was
3
already clear.”) (internal citation omitted).
4
5 In Puma’s Complaint, Puma deceivingly compared only a single view (Fig.
6 4) of the ’288 Patent with a single side view of the accused Yoki sneaker:
7
8
9
10
11
12
13
14
15
Dkt. No. 64, at ¶ 19. But, to infringe, an accused design “must encompass the
16
17 claimed ornamental features of all figures of a design patent.” Arminak, 501 F.3d at
18
1320 (emphasis in original). Looking at the other figures reveals glaring differences
19
20 that would not be overlooked by an ordinary observer. Fig. 3, for example, shows a
21 prominent trapezoidal feature that is omitted in the Yoki sneaker:
22
23
24
25
26
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No. 2:17-cv-02523-PSG-E
1
2
3
4
5
6
7
8
Dkt. No. 45, at 5. The shape of this rear fabric portion is also different - Puma’s
9
10 shoe gently curves inward toward the bottom while the Yoki sneaker’s design is
11 wider overall with a straight taper downward. Indeed, Puma seems to implicitly
12
recognize that comparison of all views is necessary in refusing to answer
13
14 Interrogatory Nos. 17 and 18 that provided a series of single-image depictions based
15 on an asserted lack of sufficient information to respond to those discovery requests.
16
See Dickson Declaration at ¶ 8 and Exhibit 6.
17
18 Even within the lone view that Puma identified (if that was the only view
19 provided in the ’288 Patent), there are clear and unmistakable differences between
20
the Yoki sneaker and Fig. 4, namely, (1) the ’288 Patent includes no
21
22 ornamental/visible stitching and the Yoki sneaker uses a considerable amount of
23 such stitching throughout the upper, including a prominent line extending around the
24
entire foot opening and a rectangular shape near the toe; (2) the number and
25
26
27
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No. 2:17-cv-02523-PSG-E
1 placement of the ventilation holes are significantly different; and (3) the relative
2 height of the sole with respect to the upper is much greater in the ’288 Patent:
3
4
5
6
7
8
9
10
11
12
13
14
15 Dkt. No. 45, at 6. The differences between such aesthetic choices, despite any
16 underlying common functional aspects, are readily apparent. Because the
17
ornamental aspects of these two designs are “plainly dissimilar,” Puma’s design
18
19 patent claim fails as a matter of law. Egyptian Goddess, 543 F.3d at 678.
20
Both before and after Egyptian Goddess, district courts around the country,
21
including this District, “have not hesitated to grant summary judgment for
22
23 defendants based on a ‘mere visual comparison of the patented design and the
24
accused product.’” HR US LLC v. Mizco Int’l, Inc., No. CV-07-2394 (DGT)(JO),
25
2009 U.S. Dist. LEXIS 27056, at *38 (E.D.N.Y. Mar. 31, 2009) (quoting Tropicana
26
27 Prods., Inc. v. Land O’Lakes, Inc., 286 F. Supp. 2d 343, 345 (D. Del. 2003)); see,
28
No. 2:17-cv-02523-PSG-E
1 e.g., Lin v. Belkin Int’l, Inc., No. 8:16-cv-628-JLS-DFMx, 2017 U.S. Dist. LEXIS
2 167499, at *17-18 (C.D. Cal. May 12, 2017) (“Upon comparing the design of
3
Belkin’s product with the Claimed Design, the Court finds the designs sufficiently
4
5 distinct and plainly dissimilar such that no reasonable jury could find the two designs
6 to be substantially the same.”); Boiling Point Grp., Inc. v. Fong Ware Co., No. 2:16-
7
CV-01672-RGK-JEM, 2017 U.S. Dist. LEXIS 171234, at *15 (C.D. Cal. Apr. 27,
8
9 2017) (“[T]he Court finds that the two designs look sufficiently distinct that an
10 ordinary observer would not be deceived or induced to purchase the FW Hot-Pot
11
Holder supposing it to be the ’811 claimed design. They are not so much alike that
12
13 in the market and with purchasers they would pass for the same thing.”) (citations,
14 quotation marks, and alterations omitted); Minka Lighting, Inc. v. Maxim Lighting
15
Int'l, Inc., No. 3:06-cv-995-K, 2009 U.S. Dist. LEXIS 20948, at *13-14 (N.D. Tex.
16
17 Mar. 16, 2009); Lawman Armor Corp. v. Master Lock Co., No. 02-6605, 2004 U.S.
18 Dist. LEXIS 3705 (E.D. Pa. Mar. 11, 2004).
19
Nor could Puma’s offer of an expert declaration allow this claim to survive
20
21 summary judgment. “Since a visual comparison alone is sufficient to determine non-
22 infringement under the ordinary observer test, expert testimony submitted by a
23
plaintiff cannot create a material issue of fact where the visual comparison reveals
24
25 that the alleged infringing product is not substantially similar to the patented design.”
26 HR US, 2009 U.S. Dist. LEXIS 27056, at *39-40; see also Boiling Point Grp., 2017
27
28
No. 2:17-cv-02523-PSG-E
1 U.S. Dist. LEXIS 171234, at *14-15 (“Plaintiff's expert testimony likewise does not
2 persuade the Court as it also fails to overcome the lack of overall similarity in general
3
appearance between the two designs.”); Lawman Armor, 2004 U.S. Dist. LEXIS
4
5 3705, at *26 (“Lawman’s expert does not affect this Court’s analysis because I have
6 decided after a visual comparison that Master Lock’s products are not substantially
7
similar to the 621 patent.”).
8
9 C. The Prior Art Confirms Noninfringement
10 Even if the Yoki sneaker were not facially noninfringing, consideration of the
11
prior art only confirms that an ordinary observer would not find the Yoki sneaker to
12
13 be substantially the same as the design covered by the ’288 Patent. See Egyptian
14 Goddess, 543 F.3d at 678 (“[W]hen the claimed and accused designs are not plainly
15
dissimilar, resolution of the question whether the ordinary observer would consider
16
17 the two designs to be substantially the same will benefit from a comparison of the
18 claimed and accused designs with the prior art.”).
19
The ordinary observer is deemed to be “familiar with the prior art” and, as
20
21 such, “will attach importance to differences between the claimed design and the prior
22 art depending on the overall effect of those differences on the design.” Id. at 677,
23
681. Where, as here, “there are many examples of similar prior art designs . . .
24
25 differences between the claimed and accused designs that might not be noticeable in
26 the abstract can become significant to the hypothetical ordinary observer who is
27
28
No. 2:17-cv-02523-PSG-E
1 conversant with the prior art.” Id. at 678; accord Zidell v. Dexter, 262 F. 145, 146
2 (9th Cir. 1920) (a patented design that consists “only of bringing together old
3
elements with slight modifications of form” is not infringed by “another who uses
4
5 the same elements with his own variations of form . . . if his design is distinguishable
6 by the ordinary observer from the patented design”).
7
The crowded field of prior art in this case indicates just how narrow Puma’s
8
9 design patent rights are, and just how easily an ordinary observer would distinguish
10 Puma’s design from the Yoki sneaker. As depicted above, “Creeper” shoes are well-
11
known in the prior art, and particularly are known for including the distinctive sole
12
13 that allows for inclusion of the shoe in the “creeper” genre.
14 An ordinary observer familiar with all these prior art shoes would tend to place
15
less weight on those prior art features that also appear in the ’288 Patent—e.g., the
16
17 thick sole with the vertical ridges and textured surface, the shapes of the upper fabric
18 members and foot opening, and the use of laces as a closure member. Such an
19
observer would instead focus more on the specific proportions and arrangements of
20
21 features that differ from the prior art shoes, such as the ’288 Patent’s total lack of
22 ornamental/visible stitching. See Egyptian Goddess, 543 F.3d at 678. Such features’
23
absence in the Yoki Sneakers weighs heavily against infringement.
24
25 Notably, in its application for a Temporary Restraining Order, Puma
26 identified only four elements it believed caused the accused Yoki sneaker design to
27
28
No. 2:17-cv-02523-PSG-E
1 be similar to its patented design: “[1] lace-up sneakers with [2] vertical ridged
2 tooling around the rubber outer sole, a [3] rubber ridge encircling the entire shoe
3
immediately above the vertical ridged tooling, and [4] a deep ‘C’-shaped bowl for
4
5 the foot to slide into.” Dkt. No. 21, at 22. Each and every one of these elements is
6 shown in the prior art cited on the face of the ’288 Patent, as depicted in the prior art
7
images identified in the Factual Background above. Indeed, Puma’s reliance on
8
9 those four features was ostensibly because the similarities between the ’288 Patent
10 and the Yoki sneaker end there, and do not extend to any ornamental features not
11
also present in the prior art.
12
13
VI. CONCLUSION
14
For the foregoing reasons, Forever 21 respectfully requests that the Court
15
16 enter summary judgment of noninfringement on Puma’s design patent infringement
17 claim.
18
Respectfully submitted,
19
& HAMPTON LLP
21
Laura L. Chapman
23
25
26
27
28
No. 2:17-cv-02523-PSG-E
1 CERTIFICATE OF SERVICE
2 I hereby certify that I electronically filed the document(s) with the Clerk of
3 the Court by using the CM/ECF system. Participants in the case who are registered
4 CM/ECF users will be served by the CM/ECF system. Participants in the case who
5 are not registered CM/ECF users will be served by mail or by other means permitted
6 by the court rules.
7 I declare under penalty of perjury under the laws of the United States of
8 America that the foregoing is true and correct.
9
10 Dated: October 22, 2018
11
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
12
13
By /s/ Laura L. Chapman
14
LAURA L. CHAPMAN
15
16 Attorneys for Defendant FOREVER 21, INC.
17
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-18- Case No. 2:17-CV-02523-PSG-E

DEF'S MOTION FOR PARTIAL SUMMARY JUDMENT
Case 2:17-cv-02523-PSG-E Document 108-1 Filed 10/22/18 Page 1 of 6 Page ID #:1194

1 shkim~s~r}mrdmullin.com
SHEP A , MULLIN, RICHTER
2 & HAMPTON LLP
31o.22g_3700/310.228.3701 (fax)
4
5 lcha man sne ardmullin.com
Lai . Yip A No. 258029
6 1i she ardmullin.com
om m A ID No. 302268)
7 tqiui@sheltordmullin.com
SH PA , MULLIN, RICHTER
8 & HAMPTON LLP
9 San Francisco CA 94111
415.434.91 oo/415.434.3947 (fax)
10
11 kbaldaufir webblaw.com
ec1 ia . 1c son admitted pro hac vice)
12 cdickson webblaw.com
nstian . E et admitted pro hac vice)
13 cehret webblaw.com
THE EBB LAW FIRM
412.471.8815/412.471.4094 (fax)
16 Attorneys.for Defendant Forever 21, Inc.
17
18 IN THE UNITED STATES DISTRICT COURT
FOR THE CENTRAL DISTRICT OF CALIFORNIA
19
PUMA SE and PUMA NORTH Civil Action
20 AMERICA, INC.,
No. 2: 17-cv-02523-PSG-E
21 Plaintiffs,
DECLARATION OF CECILIA R.
22 V. DICKSON IN SUPPORT OF
MOTION FOR PARTIAL
23 FOREVER 21, INC., SUMMARY JUDGMENT
24 Defendant. Date: December 10, 2018
Time: 1 :30 p.m.
25 Judge: Philip S. Gutierrez
Courtroom: 6A
26
27
28 Defendant' s Declaration of Cecilia R. Dickson
No . 2: 17-cv-02523 -PSG-E
1 DECLARATION OF CECILIA R. DICKSON IN

SUPPORT OF MOTION FOR PARTIAL SUMMARY JUDGMENT
2
3 I, Cecilia R. Dickson, do hereby declare and state as follows:
4 1. I am a Director of The Webb Law Firm located m Pittsburgh,
5
Pennsylvania. The Webb Law Firm is lead trial counsel representing Forever 21 in
6
7 the above-pending litigation.
8 2. I have been licensed to practice law in the Commonwealth of
9
Pennsylvania since 2002, and have been admitted to practice before this Honorable
10
11 Court pro hac vice.
12 3. Attached as Exhibit 1 to this Declaration is a true and correct copy of

13
U.S. Design Patent No. D774,288, which was attached as Exhibit A to Puma's
14
15 Second Amended Complaint (Dkt. No. 64). A shoe is a functional object. The
16 opening near the rear portion of the shoe claimed in the '288 Patent serves the
17
functional purpose of permitting insertion and removal of a foot. The upper of the
18
19 shoe claimed in the '288 Patent serves the functional purposes of protecting the foot
20 from external forces and elements and securing the foot inside the shoe. The sole of
21
the shoe claimed in the '288 Patent serves the functional purposes of protecting the
22
23 foot from external forces and elements and providing traction. The closure
24 mechanism (i. e., lacing) of the shoe claimed in the '28 8 Patent serves the functional
25
purpose of securing the shoe to the foot by tightening the upper around the foot,
26
27 precluding removal of the shoe from the foot. The holes shown in the sides of the
28
Defendant's Declaration of Cecilia R. Dickson - 1
No. 2: 17-cv-02523 -PSG-E
shoe upper in Figs. 1, 4, and 5 of '288 Patent serve the functional purpose of
1
2 ventilation. Omission of the upper, sole, opening, or closure mechanism would
3
adversely affect the utility and functionality of the shoe claimed in the '288 Patent.
4
5 Each and every feature of the shoe depicted in the eight figures in the '288 Patent is
6 shown in solid lines. In design patent figures, items depicted in solid lines constitute
7
the claimed invention, thus the drawings of the '288 Patent depict all the features of
8
9 the claimed invention. The '288 Patent includes no ornamental or visible stitching
10 in any of the eight figures.

11
4. Attached as Exhibit 2 to this Declaration is a copy of Paul Gorman,
12
13 "George Cox: The origins of the Diano Brothel Creeper and Samples ordered by
14 Malcolm McLaren in 1973," available at http://www.paulgormanis.com/?p= l3l03,

15
which was submitted to the U.S. Patent and Trademark Office during prosecution of
16
17 U.S. Design Patent No. D774,288.
18 5. Attached as Exhibit 3 to this Declaration is a copy of Wikipedia, which

19
was submitted to the U.S. Patent and Trademark Office during prosecution of U.S.
20
21 Design Patent No. D774,288.
22 6. Attached as Exhibit 4 to this Declaration are prior art images, which

23
were submitted to the U.S. Patent and Trademark Office or referenced in prior art
24
25 submissions in an Information Disclosure Statement provided during prosecution of
26 U.S. Design Patent No. D774,288.

27
28
Defendant' s Declaration of Cecilia R. Dickson - 2
o. 2: 17-cv-02523-PSG-E
7. Attached as Exhibit 5 to this Declaration is an Information Disclosure

1
2 Statement, which was submitted to the U.S. Patent and Trademark Office during
3
prosecution of U.S. Design Patent No. D774,288.
4
5 8. Attached as Exhibit 6 to this Declaration are Puma's Answers to
6 Interrogatories 17 and 18.

7
9. Attached as Exhibit 7 to this Declaration is a copy of "Mr. Completely
8
9 Nike and Adidas Creepers," dated Oct. 28, 2014, available at
10 http://thesnobette.com/2014/10/mr-completely-nike-adidas-creepers/, which was

11
submitted to the U.S. Patent and Trademark Office during prosecution of U .S.
12
13 Design Patent No. D774,288.
14 10. Attached as Exhibit 8 to this Declaration is a copy of "Mr. Completely

15
Shoes-Haus of Rihanna" dated Oct. 27, 2014, available at
16 '
17 http://hausofrihanna.com/mr-completely-adidas-creepy-samba-shoes/, which was
18 submitted to the U.S. Patent and Trademark Office during prosecution of U.S .
19
Design Patent No. D774,288.
20
21 11. Attached as Exhibit 9 to this Declaration is a copy of "Mr. Completely
22 Shoes-Haus of Rihanna," dated Oct. 27, 2014, http://hausofrihanna.com/rihanna-

23
puma-creative-director/mr-completely-puma-creepers-puma/), which was
24
25 referenced in an Information Disclosure Statement submitted to the U.S. Patent and
26 Trademark Office during prosecution of U .S. Design Patent No. D 774,288.

27
2'8
Defendant's Declaration of Cecilia R. Dickson - 3
No . 2: 17-cv-02523-PSG-E
Pursuant to 28 U.S.C. § 1746, I declare under penalty of perjury that the

1
2 foregoing is true and correct.

3
4
5 Dated: October 22, 2018 ~;_p;_ ?( ~~
Cecilia R. Dickson
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Defendant' s Declaration of Cecilia R. Dickson - 4
No. 2: 17-cv-02523-PSG-E
9
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14
LAURA L. CHAPMAN
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Case No. 2:17-CV-02523-PSG-E
-5-
SMRH:482586946.1 DEFENDANT'S DECL. CECILIA R. DICKSON
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EXHIBIT 6
42
1 Johanna M. Wilbert (vro hac vice pending)

Quarles & Brady LLf>
2 411 East Wisconsin A venue
Suite 2350
3 Milwaukee WI 53202-4426
Telephone: 414.277.5000
4 Facsimile: 414.271.3552
Johanna. wilbert@quarles.com
5
Christian G. Stahl (vro hac vice pending)
6 Nicholas P. Schmidbauer (pro hac vice pending)
Quarles & Brady LLP
7 31>0 N. LaSalle Street
Suite 4000
8 Chicago IL 60654-3422
Teleplione: 312.715.5000
9 Facsimile: 312.715.5155
Christian.stahl@quarles.com
1O Nicholas.schmiaoauer@quarles.com
11 Cristina D. Hernandez (Bar No. 283500)
The Long Law Group, P.C.
12 30 North Raymond Ave.
Suite 402
13 Pasadena CA 91103
Telephone: 213.631.3993
14 cristma@tyllaw.com
15 Attorney_s for Plaintiff
Puma SE and Puma North America, Inc.
16
UNITED STATES DISTRICT COURT
17 CENTRAL DISTRICT OF CALIFORNIA
18 Puma SE and Puma North America, Case No. 2:17-cv-02523-PSG-E
19 Inc.,
PLAINTIFFS PUMA SE AND
Plaintiffs, PUMA NORTH AMERICA, INC.'S
20 ANSWERS TO DEFENDANT
21 V. FOREVER 21, INC.'S FIRST SET
OF INTERROGATORIES
Forever 21, Inc.,
22
Defendant.
23
24
25 Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure and Local
26 Rule 33-2 of the United States District Court for the Central District of California,
27 Plaintiffs Puma SE and Puma North America, Inc. (together "Puma") submit the
28
Answers to First Set of Interrogatories to Defendant 1 NO. 2:17-CV-02523-PSG-E

EXHIBIT 6
43
Page 1 of 5
1 numbered shoes shown above to perform a proper analysis.

2 INTERROGATORY NO. 16: Of the slides shown in Interrogatory No. 15,
3 which would be considered infringing by Puma if introduced to market for the first
4 time today.
5 ANSWER: Puma objects to this Interrogatory as containing 8 discrete parts
6 and is therefore 8 Interrogatories. Forever 21 has exceeded its maximum number of
7 interrogatories under Rule 33(a)(l) of the Federal Rules of Civil Procedure. Puma
8 further objects to this Interrogatory to the extent it seeks information not in the
9 possession, custody and/or control of Puma. Puma objects to this Interrogatory to
10 the extent it seeks, implies, relies upon, and/or requires legal conclusions or the
11 application of legal doctrines or standards. Puma objects to this Interrogatory to the
12 extent that it calls for information protected from discovery by the attorney-client
13 privilege, the attorney work product doctrine, the joint defense or common interest
14 privilege or any other applicable privilege or doctrine. To the extent that Puma
15 objects or responds to a Interrogatory, such objection or response shall not be
16 construed to be an admission by Puma that any particular legal characterization,
17 standard, or test used in, referred to, or implied by these requests for production is
18 established, satisfied, met, or applicable. Puma further objects to this Interrogatory
19 to the extent that it calls for legal and/or expert opinions and conclusions. No
20 response shall be construed as a concession or admission to any statements,
21 inference, or allegation implied by any request.
22 Subject to and without waiver of the foregoing objections, and reserving the right
23 to assert additional objections, there is not enough information provided regarding the
25 INTERROGATORY NO. 17: Based only on the images below, identify all
26 of the differences between the Puma by Rihanna "Creeper" sneaker (# 1 below) and
27 each of the other numbered shoes shown below.
28

EXHIBIT 6
44
Page 2 of 5
1
2
3
1 2
4
5
6
7
8 4 5 6
9
10
11
12 8
13
ANSWER: Puma objects to this Interrogatory as containing 8 discrete parts
14
and is therefore 8 Interrogatories. Forever 21 has exceeded its maximum number of
15
interrogatories under Rule 33(a)(l) of the Federal Rules of Civil Procedure. Puma
16
objects to this Interrogatory to the extent that it calls for information protected from
17
discovery by the attorney-client privilege, the attorney work product doctrine, the
18
joint defense or common interest privilege or any other applicable privilege or
19
doctrine. Puma objects to this Interrogatory to the extent it seeks, implies, relies
20
upon, and/or requires legal conclusions or the application of legal doctrines or
21
standards. To the extent that Puma objects or responds to this Interrogatory, such
22
objection or response shall not be construed to be an admission by Puma that any
23
particular legal characterization, standard, or test used in, referred to, or implied by
24
these requests for production is established, satisfied, met, or applicable. Puma also
25
objects to this Interrogatory to the extent that it calls for legal and/or expert opinions
26
and conclusions. No response shall be construed as a concession or admission to
27
any statements, inference, or allegation implied by any request.
28

EXHIBIT 6
45
Page 3 of 5
1 Subject to and without waiver of the fore going objections, and reserving the right
4 INTERROGATORY NO. 18: Of the shoes shown in Interrogatory No. 17,
5 which would be considered infringing by Puma if introduced to market for the first
6 time today?
7 ANSWER: Puma objects to this Interrogatory as containing 8 discrete parts
8 and is therefore 8 Interrogatories. Forever 21 has exceeded its maximum number of
9 interrogatories under Rule 33(a)(l) of the Federal Rules of Civil Procedure. Puma
10 objects to this Interrogatory to the extent it seeks information not in the possession,
11 custody and/or control of Puma. Puma objects to this Interrogatory to the extent that
12 it calls for information protected from discovery by the attorney-client privilege, the
13 attorney work product doctrine, the joint defense or common interest privilege or
14 any other applicable privilege or doctrine. Puma objects to this Interrogatory to the
15 extent it seeks, implies, relies upon, and/or requires legal conclusions or the
16 application of legal doctrines or standards. To the extent that Puma objects or
17 responds to this Interrogatory, such objection or response shall not be construed to
18 be an admission by Puma that any particular legal characterization, standard, or test
19 used in, referred to, or implied by these requests for production is established,
20 satisfied, met, or applicable. Puma also objects to this Interrogatory to the extent
21 that it calls for legal and/or expert opinions and conclusions. No response shall be
22 construed as a concession or admission to any statements, inference, or allegation
23 implied by any request.
24 Subject to and without waiver of the foregoing objections, and reserving the right
27 INTERROGATORY NO. 19: Based only on the images below, identify all
28 of the differences between the Puma by Rihanna Bow Slide (#8 below) and each of

EXHIBIT 6
46
Page 4 of 5
1 Date: July 20, 2018

2 Respectfully submitted,
3
4
5 By: ~/J~J f/u~
Cristina D. Hemande~3500)
6 Johanna M. Wilbert (pro hac vice
pending) The Long Law Group, P.C.
7 Quarles & Brady LLP 30 North Raymond Ave.
411 East Wisconsin Avenue Suite 402
8 Suite 2350 Pasadena CA 91103
Milwaukee, WI 53202-4426 Telephone: 213.631.3993
9 Telephone: 414.277.5000 cristma@tyllaw.com
Facsimile: 414.271.3552
10 iohanna. wilbert@,quarles.com
11
12 Christian G. Stahl (pro hac vice Attorneys for Plaintiff
pending) Puma SE and Puma North America,
13 Nicholas P. Schmidbauer (pro hac vice Inc.
pending)
14 Quarles & Brady LLP
300 N. LaSalle Street
15 Suite 4000
Chicago IL 60654-3422
16 Telephone: 312.715.5000
17 Facsimile: 312.715.5155
Christian.stahl@quarles.com
18 Nicholas.schmidbauer@,quarles.com
19
20
21
22
23
24
25
26
27
28

EXHIBIT 6
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Page 1 of 1

1 shkim@sheppardmullin.com
2 & HAMPTON LLP
310.228.3700/310.228.3701 (fax)
4
5 lchapman@sheppardmullin.com
Lai L. Yip (CA ID No. 258029)
6 lyip@sheppardmullin.com
Toni Qiu (CA ID No. 302268)
7 tqiu@sheppardmullin.com
8 & HAMPTON LLP
9 San Francisco, CA 94111
415.434.9100/415.434.3947 (fax)
10
11 kbaldaufjr@webblaw.com
Cecilia R. Dickson (admitted pro hac vice)
12 cdickson@webblaw.com
Christian D. Ehret (admitted pro hac vice)
13 cehret@webblaw.com
THE WEBB LAW FIRM
412.471.8815/412.471.4094 (fax)
16 Attorneys for Defendant Forever 21, Inc.
17
IN THE UNITED STATES DISTRICT COURT
18 FOR THE CENTRAL DISTRICT OF CALIFORNIA
19 PUMA SE and PUMA NORTH ) Civil Action
AMERICA, INC., )
20 ) No. 2:17-cv-02523-PSG-E
Plaintiffs, )
21 ) DEFENDANT FOREVER 21,
v. ) INC.’S STATEMENT OF
22 ) UNCONTROVERTED FACTS
FOREVER 21, INC., ) AND CONCLUSIONS OF LAW
23 ) IN SUPPORT OF MOTION FOR
Defendant. ) PARTIAL SUMMARY
24 ) JUDGMENT
)
25 ) Date: December 10, 2018
) Time: 1:30 p.m.
26 ) Judge: Philip S. Gutierrez
) Courtroom: 6A
27
28
Defendant’s Statement of Uncontroverted Facts - 1
No. 2:17-cv-02523-PSG-E
1
Pursuant to Local Rule CV-56-1 and the Court’s directives in its Standing
2
3 Order in civil cases, Defendant, Forever 21, Inc. (“Forever 21”), hereby submits this
4 Statement of Uncontroverted Facts and Conclusions of Law in support of Forever
5
21’s accompanying Motion for Partial Summary Judgment on the design patent
6
7 infringement claims brought by Plaintiffs, Puma SE and Puma North America, Inc.
8 (collectively, “Puma”).
9
I. STATEMENT OF UNCONTROVERTED FACTS
10
11 Uncontroverted Facts Supporting Evidence
1. The document attached as Exhibit A to Dickson Declaration at ¶ 3
12 Puma’s Second Amended Complaint (Dkt. No. 64) & Exhibit 1 (Dkt No. 64-1).
13 is a true and correct copy of U.S. Design Patent No.
D774,288 (“the ’288 Patent”).
14 2. Each and every feature of the shoe depicted in Dickson Declaration at ¶ 3
15 the eight figures in the ’288 Patent is shown in solid & Exhibit 1, Figs. 1-8 (Dkt
lines. No. 64-1).
16 3. In design patent figures, items depicted in Dickson Declaration at ¶ 3
17 solid lines constitute the claimed invention, thus the & Exhibit 1, Figs. 1-8 (Dkt
drawings of the ’288 Patent depict all the features No. 64-1).
18 of the claimed invention.
19 4. The ’288 Patent includes no ornamental or Dickson Declaration at ¶ 3
visible stitching in any of the eight figures. & Exhibit 1, Figs. 1-8 (Dkt
20
No. 64-1).
21 5. The following image is of Puma’s “Creeper” Dkt. No. 64 at ¶ 24.
shoe.
22
23
24
25
26
27
28
No. 2:17-cv-02523-PSG-E

6. A shoe is a functional object. Dickson Declaration at ¶ 3
2
& Exhibit 1 (Dkt No. 64-1).
3 7. The opening near the rear portion of the shoe Dickson Declaration at ¶ 3
4 claimed in the ’288 Patent serves the functional & Exhibit 1 (Dkt No. 64-1).
purpose of permitting insertion and removal of a
5 foot.
6 8. The upper of the shoe claimed in the ’288 Dickson Declaration at ¶ 3
Patent serves the functional purposes of protecting & Exhibit 1 (Dkt No. 64-1).
7 the foot from external forces and elements and
8 securing the foot inside the shoe.
9. The sole of the shoe claimed in the ’288 Dickson Declaration at ¶ 3
9 Patent serves the functional purposes of protecting & Exhibit 1 (Dkt No. 64-1).
10 the foot from external forces and elements and
providing traction.
11 10. The closure mechanism (i.e., lacing) of the Dickson Declaration at ¶ 3
12 shoe claimed in the ’288 Patent serves the functional & Exhibit 1 (Dkt No. 64-1).
purpose of securing the shoe to the foot by
13 tightening the upper around the foot, precluding
14 removal of the shoe from the foot.
11. Omission of the upper, sole, opening, or Dickson Declaration at ¶ 3
15 closure mechanism would adversely affect the & Exhibit 1 (Dkt No. 64-1).
16 utility and functionality of the shoe claimed in the
’288 Patent.
17 12. The holes shown in the sides of the shoe upper Dickson Declaration at ¶ 3
18 in Figs. 1, 4, and 5 of ’288 Patent serve the & Exhibit 1, Figs. 1, 4 and 5
functional purpose of ventilation. (Dkt No. 64-1).
19 13. The following images are true and correct Dickson Declaration at ¶¶
20 copies of images contained in or referred to in the 3-7, 9-11 & Exhibits 1-5
prior art references and information disclosure and 7-9 (Dkt. No. 58, at 5;
21 statement submitted by Puma to the U.S. Patent & Dkt. No. 64-1, at 1-2).
22 Trademark Office during prosecution of U.S.
Design Patent No. D774,288:
23
24
25
26
27
28
No. 2:17-cv-02523-PSG-E

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No. 2:17-cv-02523-PSG-E

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9 14. In prosecuting the ’288 Patent, Puma denied Dickson Declaration at ¶ 7
that the shoe depicted below was an official Puma & Exhibits 4, 5 and 9.
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product, but claimed that it was a “home-made, one-
11 off shoe that was worn once at a private event where
photos happened to be incidentally taken.”
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13
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18 15. Puma did not coin the term “Creeper” in Dickson Declaration at ¶¶
reference to a style or model of shoe. 3-7, 9-11 & Exhibits 1-5
19 and 7-9 (Dkt. No. 58, at 5;
20 Dkt. No. 64-1, at 1-2).
16. The term “Creeper” in reference to a style or Dickson Declaration at ¶¶
21 model of shoe predates Puma’s asserted “Creeper” 3-7, 9-11 & Exhibits 1-5
22 shoe design. and 7-9 (Dkt. No. 58, at 5;
Dkt. No. 64-1, at 1-2).
23 17. “Creeper” shoe designs that predate Puma’s Dickson Declaration at ¶¶
24 design include lace-up style shoes with thick, 3-7, 9-11 & Exhibits 1-5
vertically-ridged and textured soles. and 7-9 (Dkt. No. 58, at 5;
25 Dkt. No. 64-1, at 1-2).
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No. 2:17-cv-02523-PSG-E

18. The following images are true and correct Dkt. No. 64, at ¶¶ 19 and 53.
2
images of the Yoki Sneaker accused of infringement
3 by Puma:
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5
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II. CONCLUSIONS OF LAW
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21 1. Design patents protect the ornamental designs for articles of
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manufacture. 35 U.S.C. § 171.
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2. The scope of a design patent is “limited to what is shown in the
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25 application drawings.” In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988).
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No. 2:17-cv-02523-PSG-E
1 3. To infringe, an accused product “must encompass the claimed

2
ornamental features of all figures of a design patent.” Arminak & Assocs. v. Saint-
3
Gobain Calmar, Inc., 501 F.3d 1314, 1320 (Fed. Cir. 2007) (emphasis in original).
4
5 4. Design patent infringement is evaluated under the “ordinary observer”
6
test, which provides infringement exists when two designs are viewed as
7
“substantially the same.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678
8
9 (Fed. Cir. 2008).
10
5. The similarity must be so great that it would “deceive such an observer,
11
inducing him to purchase one supposing it to be the other.” Id.
12
13 6. Design patent applicants are permitted to claim only portions of the
14
claimed design by showing some aspects of the design in broken (i.e., dashed) lines,
15
16 and by including an appropriate disclaimer. Contessa Food Prods. v. Conagra, Inc.,
17 282 F.3d 1370, 1378 (Fed. Cir. 2002).
18
7. Here, Puma claimed everything shown in the drawings of U.S. Design
19
20 Patent No. D774,288.
21 8. The Accused Products do not show all of the claimed design elements
22
reflected in the drawings, and thus Forever 21’s design does not infringe U.S. Design
23
24 Patent No. D774,288.
25 9. “Since a visual comparison alone is sufficient to determine non-
26
infringement under the ordinary observer test, expert testimony submitted by a
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No. 2:17-cv-02523-PSG-E
1 plaintiff cannot create a material issue of fact where the visual comparison reveals
2
that the alleged infringing product is not substantially similar to the patented design.”
3
HR US LLC v. Mizco Int’l, Inc., No. CV-07-2394 (DGT)(JO), 2009 U.S. Dist.
4
5 LEXIS 27056, at *38-40 (E.D.N.Y. Mar. 31, 2009).
6
10. U.S. Design Patent No. D774,288 is directed to the design for a
7
substantially functional object—a shoe—and accordingly includes a number of
8
9 features that are functional.
10
11. The presence and arrangement of the basic components of a shoe do not
11
constitute ornamental design choices that are protectable by a design patent.
12
13 12. Each of the elements claimed to infringe U.S. Design Patent No.
14
D774,288 are visible in the prior art.
15
16 13. Forever 21’s Accused Yoki Sneaker does not infringe U.S. Design
17 Patent No. D774,288.

18
Respectfully submitted,
19
& HAMPTON LLP
21
Laura L. Chapman
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No. 2:17-cv-02523-PSG-E
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LAURA L. CHAPMAN
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-9- Case No. 2:17-CV-02523-PSG-E

DEF'S STATEMENT OF UNCONTROVERTED FACTS
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8 UNITED STATES DISTRICT COURT
FOR THE CENTRAL DISTRICT OF CALIFORNIA
9
10 PUMA SE and PUMA NORTH Civil Action
11 AMERICA, INC.,
No. 2:17-cv-02523-PSG-E
12 Plaintiffs,
13 [PROPOSED] ORDER
v.
14
15 FOREVER 21, INC., Judge: Philip S. Gutierrez
16 Defendant.
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-1- Case No. 2:17-CV-02523-PSG-E
[PROP] ORDER
1 Having considered Defendant Forever 21, Inc.’s (“Forever 21”) Motion for
2
Summary Judgment, and all briefing related thereto, it is hereby ORDERED that
3
said Motion is GRANTED. The Court finds that Forever 21 does not infringe U.S.
4
5 Patent No. D774,288 because the accused design does not meet all of the required
6
elements set forth in the Patent-In-Suit.
7
IT IS SO ORDERED.
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9
Dated: _______________, 201__
10
THE HON. PHILIP S. GUTIERREZ
11 JUDGE OF THE UNITED STATES
DISTRICT COURT
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-2- Case No. 2:17-CV-02523-PSG-E

[PROP] ORDER
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13 By /s/ Laura L. Chapman
LAURA L. CHAPMAN
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-3- Case No. 2:17-CV-02523-PSG-E

[PROP] ORDER

Puma v. Forever 21 - MSJ (Design Patent Noninfringement)

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Case 2:17-cv-02523-PSG-E Document 108 Filed 10/22/18 Page 1 of 22 Page ID #:1172

Seong Kim (CA ID No. 166604)

1 NOTICE OF MOTION AND

13 VI. CONCLUSION ............................................................................................17

2 Forever 21, Inc. moves for summary judgment of noninfringement of U.S.

10 following the 12(b)(6) determination – a record that demonstrates there is no basis

1 IV. FACTUAL BACKGROUND

1 infringement claims on summary judgment, based on no more than a visual

1 do so signals inclusion of the features in the claimed design.”). Puma’s patent is

6 object—a shoe—and accordingly includes a number of features that are functional.

-18- Case No. 2:17-CV-02523-PSG-E

Seong Kim (CA ID No. 166604)

1 DECLARATION OF CECILIA R. DICKSON IN

12 3. Attached as Exhibit 1 to this Declaration is a true and correct copy of

10 in any of the eight figures.

14 Malcolm McLaren in 1973," available at http://www.paulgormanis.com/?p= l3l03,

18 5. Attached as Exhibit 3 to this Declaration is a copy of Wikipedia, which

22 6. Attached as Exhibit 4 to this Declaration are prior art images, which

26 U.S. Design Patent No. D774,288.

7. Attached as Exhibit 5 to this Declaration is an Information Disclosure

6 Interrogatories 17 and 18.

10 http://thesnobette.com/2014/10/mr-completely-nike-adidas-creepers/, which was

14 10. Attached as Exhibit 8 to this Declaration is a copy of "Mr. Completely

22 Shoes-Haus of Rihanna," dated Oct. 27, 2014, http://hausofrihanna.com/rihanna-

26 Trademark Office during prosecution of U .S. Design Patent No. D 774,288.

Pursuant to 28 U.S.C. § 1746, I declare under penalty of perjury that the

2 foregoing is true and correct.

1 Johanna M. Wilbert (vro hac vice pending)

Answers to First Set of Interrogatories to Defendant 1 NO. 2:17-CV-02523-PSG-E

1 numbered shoes shown above to perform a proper analysis.

Answers to First Set of Interrogatories to Defendant 10 NO. 2:17-CV-02523-PSG-E

Answers to First Set of Interrogatories to Defendant 11 NO. 2:17-CV-02523-PSG-E

Answers to First Set of Interrogatories to Defendant 12 NO. 2:17-CV-02523-PSG-E

1 Date: July 20, 2018

Answers to First Set of Interrogatories to Defendant 16 NO. 2:17-CV-02523-PSG-E

Seong Kim (CA ID No. 166604)

1 Uncontroverted Facts Supporting Evidence

1 Uncontroverted Facts Supporting Evidence

1 Uncontroverted Facts Supporting Evidence

1 Uncontroverted Facts Supporting Evidence

1 3. To infringe, an accused product “must encompass the claimed

17 Patent No. D774,288.

-9- Case No. 2:17-CV-02523-PSG-E

-2- Case No. 2:17-CV-02523-PSG-E

-3- Case No. 2:17-CV-02523-PSG-E

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