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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF WISCONSIN
NORDOCK, INC. )
)
Plaintiff, ))
v. ))
SYSTEMS, INC. )
)Defendant. )
CIVIL ACTION: 11-CV-0118
District Judge Rudolph T. Randa
Magistrate Judge
William E Callahan
PLAINTIFF'S MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION FOR
SUMMARY JUDGMENT AS TO THE VALIDITY AND ENFORCEABILITY OF
U.S. PATENT NO. D579,754
Plaintiff, Nordock, Inc. (Nordock) respectfully submits this Memorandum of Law
setting forth the basis upon which summary judgment should be granted in its favor.
I. NATURE AND STAGE OF PROCEEDING
This is an action for patent infringement under 35 U.S.C. 271 (Count I), federal unfair
competition under 15 U.S.C. 1125 (Count II), common law unfair competition (Count IV), and
unfair methods of competition or unfair deceptive acts or practices under Wisconsin Statute
100.18 and 100.20 (Count IV) against Systems, Inc. (Systems). Fact and expert discovery
are closed. This motion is brought by Nordock, Inc. (Nordock). Nordock asserts Systems has
and continues to infringe U.S. Design Patent No. D579.754 (the 754 Patent) for its distinctive
design for the front end of a dock leveler, specifically its lip, lug and header plate design.
Pursuant to the Federal Rules of Civil Procedure, Nordock moves this Court to enter
summary judgment in its favor and find that its 754 Patent is valid and enforceable because
there is no genuine dispute regarding the relevant evidence (or lack thereof) on these issues. In
particular, the allegations in Systems Answer, Affirmative Defenses and Counterclaim fail to
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identify any facts supporting that the industrial design covered by the 754 Patent lacks any
ornamentation, is claimed by a related utility patent, or is anticipated or rendered obvious by the
prior art. In particular, Systems fails to identify a primary prior art reference necessary to
substantiate its assertion of invalidity under 35 U.S.C. 102 or 103. Moreover, even through the
completion of fact and expert discovery in this case Systems has failed to identify any evidence
to support a finding of invalidity or unenforceability. In particular, Systems has failed to
establish that the 754 Patent is invalid or unenforceable because Systems has failed to establish:
A) the design lacks ornamentation (is de jurfunctional)B)
the design is claimed by a related utility patent,
C) a primary reference needed to assert the patent is invalid under 102 or 103,D) the patent is invalid based on anticipation under 102,E) the patent is invalid based on obviousness under 103,F) the patent is invalid under 112,G) Nordock is barred from enforcing the patent by reason of laches or estoppel, orH) Nordock is barred from enforcing the patent under the doctrine of unclean hands.
As such, judgment should be entered in favor of Nordock and against Systems regarding its
assertions, affirmative defenses and counterclaim alleging the 754 patent is of invalidity and/or
unenforceability.
Systems respectfully moves for summary judgment because there is no genuine dispute
as to any material fact regarding the validity and enforceability of the 754 Patent. The record is
clear that the design covered by the 754 Patent includes ornamentation, is not claimed by a
related utility patent, is valid under 102, 103 and 112, and Nordock is not barred from
enforcing the patent by reason of laches, estoppel or unclean hands.
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II. INTRODUCTI(ON
Nordock was founded in 2001 and is a relative newcomer to the established dock leveler
industry an industry dominated by three manufacturers (i.e., Rite-Hite, 4Front and Systems).
Although a variety manufacturers sold a variety of dock levelers throughout the U.S., Nordock
developed a distinctive front end design with a lip, lug and header plate arrangement not
previously sold in the U.S. Accordingly, many dock leveler consumers recognize Nordocks
distinctive front end design, much like many automobile consumers recognize the distinctive
front end of a particular automobile. Nordock obtained U.S. Patent No. D579,754 (the 754
Patent) for its distinctive dock leveler front end design. Although Nordocks 754 Patent issued
November 4, 2008, this design patent receives the benefit of a December 23, 2002 filing date for
Nordocks original U.S. patent application disclosing the distinctive front end design.
This litigation arises from Systems unabashed adoption of Nordocks proprietary and
patented front end design for a dock leveler. Although Systems had a 40 year history of making
dock levelers without Nordocks proprietary and patented design, in about 2005, Systems started
introducing dock levelers that included Nordocks front end design. According to Systems, it
also obtained a copy of Nordocks original December 23, 2002 patent application in about 2005.
After the 754 Patent issued and prior to filing this litigation, Nordock tried to persuade Systems
to modify its accused dock levelers to avoid infringing its proprietary and patented design.
Starting May 19, 2009, Nordock sent Systems a series of letters advising Systems of the 754
Patent, and addressing Systems assertions that the 754 Patent was invalid. These efforts went
unheeded. To date, Systems has stalwartly refused to make any changes to its accused levelers,
and maintains that the patent is invalid and unenforceable. No other loading dock manufacturer
has followed Systems down this path.
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On May 11, 2011, Systems filed its Answer, Affirmative Defenses and Counterclaim
asserting the invalidity and unenforceability of the 754 Patent. In this filing, Systems contends
that the patent was not duly and legally issued by the U.S. Patent and Trademark Office
(USPTO), and thus it is invalid and unenforceable. (19 and 47). Systems had over five (5)
years from its 2005 review of Nordocks original patent application, and two (2) years from its
receipt of Nordocks 2009 letters before it filed its Answer, Affirmative Defenses and
Counterclaim. In spite of this substantial time to develop a meaningful basis for its invalidity
and unenforceability assertions, Systems Answer, Affirmative Defenses and Counterclaim fail
to provide a shred of evidence to support these allegations. Not one fact is provided to establish
that the 754 Patent is invalid for lack of ornamentality, is anticipated or obvious under 102 or
103, or fails to satisfy 112. Similarly, Systems provides not one fact in support of its assertion
that Nordock is barred from enforcing its 754 Patent due to laches, estoppel or unclean hands.
Under U.S. law, Nordocks 754 Patent is presumed valid unless Systems proves
otherwise by clear and convincing evidence. Yet, even through the close of fact and expert
discovery, Systems has failed to establish a genuine issue of material fact that the 754 Patent is
invalid or unenforceable. The wide variety of front end designs for dock levelers disclosed by
both Systems and Nordock to date, demonstrates that the overall appearance of the front end
design of the 754 Patent is ornamental, and not de jurfunctional. Systems has failed to identify
a primary reference necessary to invalidate a U.S. design patent based under 102 or 103. No
evidence proving that the 754 Patent fails to meet 112 has been produced. Systems has also
failed to produce any evidence that Nordock is barred from enforcing its 754 Patent due to
laches, estoppel or unclean hands. For these reasons, the Court should grant summary judgment
in favor of Nordock regarding the validity and enforceability of the 754 Patent.
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III. LEGAL ARGUEMENT
A. STANDARD OF REVIEW
The 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 dispute as to a material fact is genuine if the evidence is such that a reasonable
jury could return a verdict for the nonmoving party.Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 248 (1986). A fact is material if it might affect the outcome of the suit under the governing
law.Id. In determining whether there is a genuine dispute as to a material fact, the Court must
consider the evidence in light of the substantive evidentiary burden.Id. at 254. This evidence
should be viewed in the light that is most favorable to the nonmoving party. Id. at 255. Taken
together, the inquiry the Court must resolves is whether the evidence presented is such that a
jury applying that evidentiary standard could reasonably find for the non-moving party.Id. If
the moving party has demonstrated that no reasonable jury could find for the non-moving party,
summary judgment for the moving party is proper.
The party moving for summary judgment bears the initial burden of informing the
district court of the basis for its motion, and identifying those portions of the pleadings,
depositions, answers to interrogatories, and admissions on file, together with the affidavits, if
any, which it believes demonstrate the absence of a genuine issue of material fact. Celotex
Corp. v. Catrett, 477 U.S. 317, 323 (1986). A party opposing a properly supported motion for
summary judgment may not rest upon the mere allegations or denials of his pleading, but must
set forth specific facts showing that there is a genuine issue for trial. Anderson, 477 U.S. at 248-
49. The opposing party does not have the burden of showing that a factual issue will be
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conclusively resolved in its favor. Id. Rather, the opposing party must submit sufficient
evidence to create a material factual dispute for the finder of fact to resolve at trial. Id.
B. DESIGN PATENT
The 754 Patent is presumed valid absent clear and convincing evidence presented by
Systems to the contrary. SeeAero Products Intl., Inc. v. Intex Recreation Corp., 466 F.3d 1000,
1015 (Fed. Cir. 2006). This presumption of validity under 35 U.S.C. 282 carries with it a
presumption that the Examiner did his duty and knew what claims he was allowing. Al-Site
Corp. v. VSI Intern., Inc., 174 F. 3d 1308, 1323 (Fed. Cir. 1999) (quoting Intervet Am., Inc. v.
Kee-Vet Labs., Inc., 887 F.2d 1050, 1054 (Fed.Cir.1989)). The Federal Circuit further found that
When no prior art other than that which was considered by the PTO examiner is
relied on by the attacker, he has the added burden of overcoming the deference
that is due to a qualified government agency presumed to have properly done itsjob, which includes one or more examiners who are assumed to have some
expertise in interpreting the references and to be familiar from their work with the
level of skill in the art and whose duty it is to issue only valid patents.
American Hoist & Derrick Co. v. Sowa & Sons, 725 F. 2d 1350, 1359 (Fed. Cir. 1984). It is not
Nordocks initial burden of going forward with proof of its case to submit evidence supporting
validity.Avia Group Intern., Inc. v. LA Gear California, 853 F. 2d 1557, 1562 (Fed. Cir. 1988).
Rather, the burden is first on Systems to introduce evidence which raises the issue of
invalidity.Id. To raise the issues of invalidity, Systems must establish facts, by clear and
convincing evidence, which persuasively lead to the conclusion of invalidity.Id. (citing Perkin-
Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894 (Fed.Cir.), cert. denied, 469 U.S. 857
(1984)).
1. Section 102 (Anticipation)
Systems has presented no evidence to support a genuine issue regarding the invalidity of
the 754 Patent under Section 102. The Section 102 invalidity analysis for a design patent is the
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same as it is for a utility patent.Hupp, 122 F.3d at 1461. For a publication to invalidate a design
patent under 171 or 102, it must show the same subject matter as that of the patent, and must be
identical in all material respects.Id. Thus, to invalidate the 754 Patent under Section 102,
Systems must show with clear and convincing evidence that a single publication exists that
shows the same subject matter as the 754 Patent and is identical to it in all material respects.
Systems pleadings and discovery responses produced no such publication and make no such
showing. Systems has not identified a primary reference; let alone a primary reference with
design characteristics that are basically the same as the 754 Patents claimed design. (Statement
of Facts (SOF) 61-63). Systems asserted expert report (Brookman) does not challenge
validity under 102 and does not identify a primary reference. (SOF 63). In fact, his report
concedes validity under 102 by citing to a variety of asserted prior art references instead of a
single, primary reference. Furthermore, Brookman concedes his reviews was limited to the prior
art listed on the 754 Patent, Patent Examiners are persons of ordinary skill in the art, and these
references were already considered by the USPTO. (SOF 40, 61, 63 and 64). His report does
not assert and the record does not support that he is more qualified than the Examiner that
reviewed and allowed the 754 Patent. Thus, Systems burden is even greater than clear and
convincing evidence. See American Hoist, 725 F. 2d at 1359;Al-Site, 174 F. 3d at 1323.
Instead of identifying a single, primary reference, Systems Answer to Interrogator No.
15 identifies Systems Inc. Production Documents Nos. SI100800-940, as well as all references
cited on the face of the design patent in suit and in its file history. (SOF 61). This includes
over 53 patents and 140 pages of unorganized documents (e.g. emails, unidentified
miscellaneous photographs, etc.). Systems has never supplemented or corrected its Answer, and
has never provided Nordock with a primary reference or a theory of invalidity. (SOF 62).
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Systems should not be allowed to identify a primary reference at this late date. The court
inApple v. Samsung recently found that although Samsung may have disclosed in discovery
some of the references and documents upon which its experts relied, Samsung also failed to
supplement its answers to contention interrogatories to disclose to Apple some of the bases of its
invalidity, infringement, and lack of distinctiveness theories until after the close of discovery.
(N.D. Calif., Case No. 11-cv-01846-LHK, Court Docket No. 1545 Aug. 2, 2012). The court held
that Samsung could not introduce into evidence certain prior art references because it did not
make clear that they were included its theories of anticipation, obviousness, and other grounds
of invalidity.Id. The court held that this litigation tactic violated Rule 26(e), and sanctioned
Samsung under Rule 37(c). Systems should be similarly prevented from introducing a primary
reference at this late stage in support of any proposed theory for invalidity.
2. Section 103 (Non-Obviousness)
The Federal Circuit recently reiterated the required steps for a non-obviousness analysis
of a design patent. The ultimate inquiry... is whether the claimed design would have been
obvious to a designer of ordinary skill. Apple, Inc. v. Samsung Electronics Co. Ltd., 678 F.3d
1314, 1329 (Fed. Cir. 2012) (quoting Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372,
1375 (Fed. Cir. 2009)). In making this inquiry, the finder of fact must employ the following two
step process: (1) one must find be a single, primary reference of something in existence, the
design characteristics of which are basically the same as the claimed design; and (2) other
secondary references may be used to modify the primary reference only if they are so related
to the primary reference that the appearance of certain ornamental features in one would suggest
the application of those features to the other.Id. (citingDurling v. Spectrum Furniture Co., Inc.,
101 F.3d 100, 103 (Fed. Cir. 1996)).
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a. Primary and Secondary References
As noted above in the Section 102 (Anticipation) analysis, Systems does not identify a
primary reference. (SOF 61-63). Absent a primary reference, secondary references are
irrelevant.Id. Based on this alone, Systems has failed to raise a genuine issue of material fact
regarding its asserted obviousness defense. Notwithstanding this, Systems further fails to meet
its burden of establishing obviousness by clear and convincing evidence.
b. Ordinary Observer Test
After constructing the hypothetical prior art by combining a primary reference with
secondary references, the obviousness analysis requires the application of the ordinary observer
test. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240-41(Fed. Cir.
2009). This test asks whether, in the eye of an ordinary observer, giving such attention as a
purchaser usually gives, two designs are substantially the same.Egyptian Goddess, Inc. v. Swisa,
Inc., 543 F. 3d 665, 670 (Fed. Cir. 2008) (citing Gorham Co. v. White, 81 U.S. 511, 528 (1871)).
There is no hypothetical combination of prior art that would be substantially similar to
the 754 Patent in the eye of an ordinary observer, giving such attention as a purchaser usually
gives. The Patent Examiner reviewed and considered all of the 53 patents that Systems provides
to Nordock as potential primary references. (SOF 40 and 61). The patent examiner found, by
issuing the 754 Patent, that the design was not obvious, and this finding is afforded a
presumption of validity that Systems must overcome with clear and convincing evidence. See
Aero, 466 F.3d at 1015. Simply providing the 53 patents that the examiner already considered,
as well as miscellaneous, unidentified pictures, does not demonstrate clear and convincing
evidence that the Patent Examiner was wrong in finding non-obviousness. The examiner is
presumed to have expertise in the area and to have done her job correctly. See American Hoist,
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725 F. 2d at 1359;Al-Site, 174 F. 3d at 1323. Systems expert even admits that he did not
consider any prior art that was not already considered by the USPTO, and that Patent Examiners
are persons of ordinary skill in the art. (SOF 63 and 64). Attempting to invalidate an issued
patent by citing only the prior art that was considered by the examiner, as Systems expert
attempts to do, requires the challenger to overcome the added burden of the deference that is due
to a qualified government agency presumed to have properly done its job. See American Hoist,
725 F. 2d at 1359. Examiners consider obviousness when reviewing a design patent application.
(SOF 38 and Ex. V, MPEP Section 1504.03).
c. Systems Expert Report Does Not Raise A Genuine Issue Of Material Fact and, InFact, Offers Only A Flawed Legal Opinion.
Systems asserted expert report (the Brookman Report) does not raise a genuine issue
of material fact and misstates the law regarding design patents in a number of respects. First, the
Brookman Report demonstrates a misunderstanding of an obviousness/non-obviousness analysis.
The Brookman Report claims that obviousness can be found in the event that the design is a
combination of several elements in the prior art. (Ex. AF, pg. 13). This is a misstatement of the
law. As explained in detail above, the obviousness analysis must begin with a primary reference,
and then elements from additional prior art references (i.e. secondary references) may be
combined with the primary reference.
The Brookman Report does not identify a primary reference. As noted above, a primary
reference must be identical in all material respects to the 754 Patent. The Report is further
flawed because it does not even attempt to argue that a single reference is identical in all material
respects to the 754 Patent. Instead, the Brookman Report attempts to show that each element is
in one of a variety of separate prior art references. Assuming, arguendo, that these prior art
references do separately disclose the individual elements of the 754 Patent, the obviousness
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analysis still fails because the Brookman Report does not identify a primary reference as required
by the courts. However, not one of these prior art references even shares two common features
with the 754 Patent, and taken together they do not create a hypothetical prior art that would be
substantially similar to the 754 Patent in the eye of an ordinary observer. Furthermore, the
Brookman Report makes no attempt to explain how his analysis overcomes the strong
presumption of validity afforded the 754 Patent, especially given that he cites nothing other than
the prior art considered by the examiner. See American Hoist, 725 F. 2d at 1359.
3. Ornamentality
a. Primarily Ornamental
The 754 Patents claimed design is primarily ornamental and is not dictated by function.
There is no genuine issue of material fact to the contrary. The Federal Circuit applies the
following standard for invalidating a design patent because of functionality: the design of a
useful article is deemed functional where the appearance of a claimed design is dictated by the
use or purpose of the article.Rosco, Inc. v. Mirror Lite Co., 304 F. 3d 1373, 1378 (Fed. Cir.
2002) (internal citations omitted). To determine whether a design is dictated by its use, the Court
must ask whether the claimed design is the only possible form of the article that could perform
its function.Id.
If there are several ways to achieve the function of an article of manufacture, the design
of the article is more likely to serve a primarily ornamental purpose. Id.;LA Gear, Inc. v. Thom
McAn Shoe Co., 988 F. 2d 1117, 1123 (Fed. Cir. 1993) (citingAvia, 853 F.2d at 1563);
Richardson v. Stanley Works, Inc., 610 F. Supp. 2d 1046, 1049 (D. Ariz. 2009) (Richardson I),
affd597 F.3d 1288, 1298 (Fed. Cir. 2010) (Richardson II). Put another way, if other designs
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could produce the same or similar functional capabilities, the design of the article in question is
likely ornamental, not functional.Rosco, 304 F. 3d at 1378.
The claimed design of the 754 Patent is clearly not dictated by function because it is not
the only possible form of a dock leveler that could perform its function. (SOF 1-7 and 21-24).
There are a variety of front-end designs for dock levelers. (SOF 2). Systems president, who
developed its accused levelers, even admits this. (SOF 48). There are also a variety of ways to
size, shape and arrange the various components forming the front end of the dock leveler. (SOF
3-7). If the 754 Patent were truly dictated by function, every dock leveler should look just like
the 754 Patent. This is clearly not the case.
As with shoes inAvia, there is no dispute that dock levelers are functional and that
certain features of the 754 Patents design perform functions. See Avia, 853 F.2d at 1563.
However,
a distinction exists between the functionality of an article or features thereof andthe functionality of the particular design of such article or features thereof that
perform a function. Were that not true, it would not be possible to obtain a design
patent on a utilitarian article of manufacture, or to obtain both design and utilitypatents on the same article.
Id. (citing Pacific Furniture Mfg. Co. v. Preview Furniture Corp., 800 F.2d 1111 (Fed.Cir.1986)
(design patent for chairs); Carman Indus., Inc. v. Wahl, 724 F.2d 932, 938-39 (Fed.Cir.1983);In
re Dubois & Will, 262 F.2d 88, 90 (Fed. Cir. 1958). The Federal Circuit has similarly stated
that the design of a particular article is related to the article's use may not defeat patentability.
Hupp, 122 F.3d at1460. The ultimate question is whether functional considerations demand
only this particular design or whether other designs could be used.Id. When this test is applied
to the front end desins of a dock leveler, the answer is clearly that other designs could be used
because other designs are used. (SOF 1-7 and 21-24).
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Systems has presented no genuine issue that the 754 Patents claimed design is dictated
by function. Systems does not deny that there are numerous alternative designs. (SOF 2 and 48).
Yet, Systems has provided no explanation for how the 754 Patent is dictated by function in light
of all the alternative designs. Systems asserts that a dock leveler is almost entirely functional,
but has provide no explanation for how this means they are dictated by function. Furthermore,
the prior art that Systems expert believes is illustrative of the 754 Patents functionality was all
considered by the patent examiner before she issued the 754 Patent. (SOF 40 and 61). Thus,
the burden that must be overcome to demonstrate functionality based on these prior art
references, if functionality can even be demonstrated at all, is even greater than clear and
convincing evidence. See American Hoist, 725 F. 2d at 1359;Al-Site, 174 F. 3d at 1323.
Examiners consider functionality when reviewing a design patent application. (SOF 38 and Ex.
V, MPEP Section 1504.01(c)).
b. Additional Considerations
The court inRichardson Iwent on to list the following additional considerations for
analyzing whether a design is primarily ornamental:
(1)whether the protected design represents the best design;(2)whether alternative designs would adversely affect the utility of the specified
article;
(3)whether there are any concomitant utility patents;(4)whether the advertising touts particular features of the design as having
specific utility; and
(5)whether there are any elements in the design or an overall appearance clearlynot dictated by function.
Richardson I, 610 F. Supp. 2d at 1049-50.
The other considerations fromRichardson Isupport a finding of ornamentality. As
conceded in the Brookman Report, it cannot be empirically stated which of the variety of dock
leveler designs is the best, thus demonstrating the design as primarily ornamental. (Ex. AF,
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pg.22). Also, alternative designs would clearly not adversely affect the utility of a dock leveler
because there are numerous alternative designs that tout the same specific utility. (SOF 1-7 and
43-44). Furthermore, although there is a concomitant utility patent, it was identified in the first
sentence of the 137 Application (now the 754 Patent), and is even listed on the cover page of
the 754 Patent. This is especially important given the 754 Patents presumption of validity. See
Aero, 466 F.3d at 1015. As noted above, patent examiner is deemed to have considered each of
the prior art references listed on the cover of the patent. Next, the advertising does not tout the
specific utility of the claimed design features because there are alternative designs that achieve
the same functional capabilities that are advertised. (SOF 1-7 and 43-44). Finally, there are
many elements in the 754 Patents claimed design and its overall appearance that are clearly not
dictated by function because of the number of alternatives. (SOF 3-7 and 42).
c. Systems Expert Report
As state above, the Brookman Report does not raise a genuine issue of fact and misstates
the law of design patents in a number of places. This is again demonstrated where the Brookman
Report contradicts itself in stating the law of design patent ornamentality. The Brookman Report
states that design may not be patented if it is functional. (Ex. AF, pg. 11). On the very next
page, however, the Brookman Report states that [a]n article of manufacture necessarily serves a
utilitarian purpose. (Ex. AF, pg. 12). 35 U.S.C. 171 provides that a design patent may be
obtained for any new, original and ornamental design for an article of manufacture. Therefore,
a design patent must necessarily be for something that is functional since it can only cover an
article of manufacture and an article of manufacture necessarily serves a utilitarian purpose.
Rather, a design may be patented unless it is dictated by function.Rosco, 304 F. 3d at 1378.
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The Brookman Report also fails to correctly apply the concept of dictated by function.
The Brookman Report seems to assert that something is dictated by function if it serves a
utilitarian value. (See Ex. AF, pg. 14-20). The Brookman Report even states that the 754 Patent
is dictated by function because each of the various elements has a distinct functional purpose.
(Ex. AF, pg. 20). As explained above, for a design to be dictated by function it must be the only
possible design that can achieve the utilitarian purpose. If that were the case, it would mean that
there is no other possible dock leveler design other than the one depicted in the 754 Patent. This
is clearly not the case. (SOF 1-7 and 21-24). The fact that every dock leveler patent drawing
included in the Brookman Report depicts a different dock leveler design further demonstrates the
inaccuracy of stating the 754 Patent is dictated by function. (Ex. AF, pg. 16-19).
Next, the Brookman Report fails to consider alternative designs. Many of the same cases
that the Brookman Report cites clearly state that alternative designs suggest a design is primarily
ornamental and not dictated by function.Rosco, 304 F. 3d at 1378; LA Gear, 988 F. 2d at 1123;
Avia, 853 F.2d at 1563;Richardson I, 610 F. Supp. 2d at 1049, affdRichardson II, 597 F.3d
1288, 1298. In fact, the Brookman Report goes on to state in a different section that it is hard to
say empirically whether the design claimed in the Design Patent truly represents the best design
in view of the many competing dock levelers each touting its own characteristics. (Ex. AF, pg.
22) (emphasis added). The fact that the Brookman Report cannot empirically say that the 754
Patents design is the best design demonstrates the existence of alternatives that have at least
equivalent functional capabilities. The fact that he did not consider this in his dictated by
function analysis demonstrates a lack of understanding of design patent functionality. The test
for functionality is neither that the patentee thought that its design was worthy of patent
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protection nor that a design does provide certain functional advantages, as the Brookman Report
seems to imply. (Ex. AF, pg. 22).
The Brookman Report contradicts itself again in stating that the substitution of any
different configuration for any of the elements of the design would almost certainly result in a
compromise in the overall functionality of the claimed design. (Ex. AF, pg 22). This is a direct
contradiction with the statement in the previous paragraph that the best design cannot be
empirically determined. Since it is impossible to say what the best design is, it is equally true
that substitutions for alternative designs would not necessarily affect the overall functionality. If
a substitution of any element would compromise the overall functionality, then the design would
empirically be the best. As proven by the substantial number of alternative designs for equally
functioning dock levelers, it is clearly possible to substitute certain elements of the design
without adversely affecting the functionality or cost. (SOF 1-7).
4. Section 112
Systems presents no evidence to support genuine issue regarding the invalidity of the
754 Patent under Section 112. (SOF 59). To invalidate the 754 Patent under Section 112,
Systems must show with clear and convincing evidence that the 754 Patent either does not:
(1) contain a written description of the invention, and of the manner and process
of making and using it, in such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or with which it is most nearlyconnected, to make and use the same, and shall set forth the best mode
contemplated by the inventor of carrying out his invention; or
(2) conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.
35 U.S.C. 112. Although Patent Examiners consider 112 when reviewing a design patent
application (SOF 38 and Ex. V, MPEP Section 1504.04), Systems presents no facts to support
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either showing, much less facts sufficiently to defeat the 754 Patents presumption of validity.
(SOF 41).
5. Prosecution History Estoppel
Systems presents no evidence to support a genuine issues regarding prosecution history
estoppel for the 754. Systems asserts in its Answer and Counterclaim that plaintiff is estopped
from construing the claims of these patents to encompass anything made, sold, offered for sale or
used by Systems, Inc. by reason of the proceedings in the United States Patent and Trademark
Office during the prosecution of the applications for the 754 Patent. (SOF 59, Court Docket
No. 4, 41). Systems presents no evidence of which the Patent Examiner was not aware when
she reviewed the 137 Application (now the 754 Patent). The USPTO and Examiner were most
certainly aware of the specification and claims of Nordocks original and divisional applications.
The first sentence of the 137 Application lists the application and patent numbers for the
original and divisional applications. (SOF 37). Moreover, there are several ornamental aspects
of the dock leveler front end design shown in the 754 Patent that are not claimed by its parent
Patents and applications. (SOF 35). Once again, as Systems cites nothing that was not before
the Examiner when issuing the 754 Patent, Systems burden is greater than clear and convincing
evidence. See American Hoist, 725 F. 2d at 1359;Al-Site, 174 F. 3d at 1323. Systems has not
met this burden. Systems presents no evidence to support a genuine issue of material fact that
can overcome the 754 Patents strong presumption of validity.
6. Laches
Systems presents no evidence to support a genuine issue regarding its defense of laches.
The Federal Circuit has held that laches may be defined as the neglect or delay in bringing suit
to remedy an alleged wrong, which taken together with lapse of time and other circumstances,
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causes prejudice to the adverse party and operates as an equitable bar. AC Aukerman Co. v. RL
Chaides Const. Co., 960 F. 2d 1020, 1029 (Fed. Cir. 1992). To succeed in a defense of laches,
Systems must prove the following two factors:
1. the plaintiff delayed filing suit for an unreasonable and inexcusable length of
time from the time the plaintiff knew or reasonably should have known of itsclaim against the defendant, and
2. the delay operated to the prejudice or injury of the defendant.
Id. at 1032 (citing Costello v. United States, 365 U.S. 265, 282 (1961);Meyers v. Brooks Shoe
Inc., 912 F.2d 1459, 1461 (Fed.Cir.1990);Hottel Corp. v. Seaman Corp., 833 F.2d 1570, 1572
(Fed.Cir. 1987). The period of delay does not begin prior to issuance of the patent.Id.
Systems presents no facts in support of either factors. Nordock notified Systems within six
months of being issued the 754 Patent, corresponded with Systems for several months, and filed
suit about a year later. (SOF 54-58). Systems has made no showing that this was in fact a delay
at all, much less that it was unreasonable and inexcusable in length. Moreover, Systems has
made no attempt to show how it has been prejudiced or injured. Systems admits it was aware of
Nordocks 409 Patent including Figures 10A-G showing Nordocks new header plate and lug
style design in the Spring of 2005, and notwithstanding Nordocks May 19, 2009 correspondence
and January 2011 filing of this litigation, has made no change to its levelers. (SOF 47, 54, and
57). Systems has clearly not met its burden of demonstrating by clear and convincing evidence
the defense of laches.
7. Estoppel
Systems presents no evidence to support a genuine issue regarding equitable estoppel.
(SOF 59). The Federal Circuit held that the defense of equitable estoppel requires the defendant
to show:
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a. The patentee, through misleading conduct, leads the alleged infringer to
reasonably infer that the patentee does not intend to enforce its patent against thealleged infringer. "Conduct" may include specific statements, action, inaction, or
silence where there was an obligation to speak.
b. The alleged infringer relies on that conduct.
c. Due to its reliance, the alleged infringer will be materially prejudiced if thepatentee is allowed to proceed with its claim.
Id. at 1028. Systems presents no facts to support any of these three elements.
8. Unclean Hands
Systems presents no evidence to support a genuine issue regarding unclean hands. (SOF
59). The Federal Circuit has held that the defense of unclean hands requires the defendant to
show with clear and convincing evidence that the patentee had the intent to deceive the USPTO,
and that the deception was the but-for cause of the claims issuance. Therasense, Inc. v. Becton,
Dickinson and Co., 649 F. 3d 1276, 1290-92 (Fed. Cir. 2011). Specifically, the court held that
the accused infringer must prove that the patentee acted with the specific intent to deceive the
PTO.Id. at 1290 (citing Star Scientific Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366
(Fed.Cir.2008)). A showing of gross negligence or negligence under a should have known
standard is not sufficient.Id. Rather, the accused infringer must prove by clear and convincing
evidence that the applicant knew of the reference, knew that it was material, and made a
deliberate decision to withhold it.Id. The court went on to hold that, after proving said intent,
the accused infringer must show that the PTO would not have allowed a claim had it been
aware of the undisclosed prior art.Id. at 1291. Systems presents no evidence to support either
showing.
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IV. CONCLUSION
For the foregoing reasons, the Plaintiff respectfully requests that its motion for summary
judgment as to the validity of U.S. Patent No. D579,754 be granted in its entirety.
Wherefore, moving plaintiff respectfully requests that this Court grant its motion and
enter an Order in the form attached.
Dated: this 20th day of September, 2012.
Respectfully submitted,
NORDOCK, INC.
s/Jeffrey S. Sokol
Jeffrey S. SokolSokol Law Office
828 North Broadway
Milwaukee, WI 53202