Ningbo v. QVC - Motion For Judgment On The Pleadings

Case 5:22-cv-02015-MCS-RAO Document 29-1 Filed 03/13/23 Page 1 of 33 Page ID #:402
1 John K. Rubiner (155208)

2 JRubiner@fmglaw.com
FREEMAN MATHIS & GARY, LLP
3 550 South Hope Street, Suite 2200
4 Los Angeles, CA 90071-2631
Tel. (213) 615-7000
5 Fax. (213) 615-7100
6
John Zaccaria (NYS Bar No. 2659241)
7 (Admitted Pro Hac Vice)
8 john.zaccaria@notaromichalos.com
Brian Doyle (NYS Bar No. 4597449)
10 brian.doyle@notaromichalos.com
NOTARO, MICHALOS & ZACCARIA P.C.
11 100 Dutch Hill Road, Suite 240
A Professional Corporation
12 Orangeburg, NY 10962
Los Angeles
Tel. (845) 359-7700

13 Fax. (845) 359-7798
14
Attorneys for Defendant QVC, INC.
15
16
UNITED STATES DISTRICT COURT
17 CENTRAL DISTRICT OF CALIFORNIA – EASTERN DIVISION
18
19 NINGBO FUTAI ELECTRIC Case No: 5:22-cv-02015-MCS-RAO
LIMITED,
20
MEMORANDUM OF POINTS AND
21 Plaintiff, AUTHORITIES IN SUPPORT OF
DEFENDANT QVC, INC.’S
22 v. MOTION FOR JUDGMENT ON
THE PLEADINGS
23 QVC, INC.,
Defendant. Date: April 17, 2023
24 Time: 9:00 am
25 Judge: The Hon. Mark C. Scarsi
26
27
28
i
MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF DEFENDANT QVC, INC.’S MOTION
FOR JUDGMENT ON THE PLEADINGS IN CASE NO. 5:22-cv-02015-MSC-RAO
1
TABLE OF CONTENTS
2
3 I. INTRODUCTION .......................................................................................... 1
4 II. BACKGROUND ............................................................................................ 2
5
III. LEGAL STANDARDS .................................................................................. 2
6
7 A. Plausibility Pleading Standard ............................................................. 2
8 B. Design Patent Infringement.................................................................. 3

9
1. Claim Construction ........................................................................... 4
10
2. Ordinary Observer Test..................................................................... 4
11
12 C. Motions to Dismiss Design Patents and Judicial Notice ..................... 6

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13 IV. ARGUMENT .................................................................................................. 8

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A. Work Light Express Does Not Infringe the D’036 Patent. .................. 9
15
16 1. The Overall Design of Work Light Express is Substantially
Different from D’036 Design. .............................................................. 9
17
2. When Viewed in the Context of the Prior Art, the Work Light
18
Express Does Not Infringe the D’036 Design. .................................. 14
19
B. The Work Light 360 Does Not Infringe the D’743 Patent. ............... 19
20
Different from D’036 Design. ............................................................ 19
22
23 2. When Viewed Against the Prior Art, the Differences Between
the Work Light 360 Does D’743 Design Are Even More
24 Significant. ......................................................................................... 23
25
V. CONCLUSION............................................................................................. 25
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1 TABLE OF AUTHORITIES
2 Page(s)
3 Federal Cases
4
Anderson v. Kimberly-Clark Corp.,
5 2013 WL 9760040 (W.D. Wash. 2013) aff’d, 570 Fed. Appx. 927 (Fed. Cir.
6 2014) and cert. denied, 136 S. Ct. 142 (2015) ………..…………...2, 3, 7, 15
7
Ashcroft v. Iqbal,
8 556 U.S. 662 (2009)……………………………………………...………….3
9
Bell Atl. Corp. v. Twombly, 5

10 50 U.S. 544 (2007)………………………………………………….……….2
11
12 Catalina Lighting, Inc. v. Lamps Plus, Inc.,

295 F.3d 1277 (Fed. Cir. 2002)…………………………..………………….4
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13
14 Coinstar, Inc. v. Coinbank Automated Sys., Inc.,
998 F. Supp. 1109 (N.D. Cal. 1998)……………………….....………….7, 15
15
16 Colida v. Nokia, Inc.,
17 347 Fed.Appx. 568 (Fed.Cir.2009)……………………………………….…3
18 Competitive Edge, Inc. v. Staples, Inc.,

19 763 F. Supp. 2d 997 (N.D. Ill. 2010)………………….…………………….5
20
Curver Luxembourg, SARL v. Home Expressions Inc.,
21 938 F.3d 1334 (Fed. Cir. 2019)………………………………………….….3
22
Egyptian Goddess, Inc. v. Swisa, Inc.,
23
543 F.3d 665 (Fed. Cir. 2008)………………………….4, 5, 6, 15, 17, 18, 24
24
25 GeoVector Corp. v. Samsung Elecs. Co.,
234 F. Supp. 3d 1009 (N.D. Cal. 2017)…………………….…….…...…7, 15
26
27 Gorham Co. v. White,
81 U.S. 511 (1871)………………………………………………………..4, 5
28
ii
1 Great Neck Saw Mfrs., Inc. v. Star Asia, U.S.A., LLC,

2 727 F. Supp. 2d 1038 (W.D. Wash. 2010)………………………...…….....14
3
Hoganas AB v. Dresser Indus., Inc.,
4 9 F.3d 948 (Fed. Cir. 1993)…………………….………………..…………7
5
In re Beasley,
6 117 Fed. Appx. 739 (Fed. Cir. 2004)………………………………………8
7
In re Blum,
8
374 F.2d 904 (C.C.P.A. 1967)……………………………………………..8
9
10 In re Mann,
861 F.2d 1581 (Fed. Cir. 1988)…………………………………………….8
11
12 In re Zahn,
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13 617 F.2d 261 (C.C.P.A. 1980)……………………………………………..9
14 L.A. Gear v. Thom McAn Shoe Co.,

15 988 F.2d 1117 (Fed. Cir. 1993)……………….…………………….………5
16
Massachusetts v. Westcott,
17 431 U.S. 322 (1977)………………………………….…………………….7
18
McGlinchy v. Shell Chem. Co.,
19 845 F.2d 803 (9th Cir. 1988)……………………………………..……...…2
20
National Diamond Syndicate, Inc. v. Flanders Diamond USA, Inc.,
21
264 F. Supp. 2d. 631 (N.D. Ill. 2003)………………..……………………..8
22
23 NuVasive, Inc. v. Alphatec Holdings, Inc.,
2018 WL 2734881 (S.D. Cal. 2018)……………………………………….3
24
25 OddzOn Prods., Inc. v. Just Toys, Inc.,
26 122 F.3d 1396 (Fed. Cir. 1997)……………………………………….3, 4, 6
27 Parker v. Kimberly-Clark Corp.,

28 2012 WL 74855 (N.D. Ill. 2012)…………….…………………………….7
iii
1 Pepitone v. Am. Standard, Inc.,

2 983 F.2d 1087 (Fed. Cir. 1992) …………………....…………..………….7
3
Performance Designed Prod. LLC v. Mad Catz, Inc.,
4 2016 WL 3552063 (S.D. Cal. 2016)……………………………………3, 7
5
Rockport Company, Inc. v. Deer Stags, Inc.,
6 65 F. Supp. 2d 189 (S.D. N.Y. 1999)……………………………………………4
7
SCG Characters LLC v. Telebrands Corp.,
8 2015 WL 4624200 (C.D. Cal. 2015)………………………………………3
9
Seirus Innovative Accessories, Inc. v. Cabela’s, Inc.,

10
827 F. Supp. 2d 1150 (S.D. Cal. 2011)…………………………………..18
11
12 Silverman v. Leombruni,
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2016 WL 715735 (S.D. N.Y. 2016)…………………………………….…5

13
14 Swartz v. KPMG LLP,
15 476 F.3d 756 (9th Cir. 2007)……………………...…………...………..…7
16 Wing Shing Products (BVI) Co. Ltd. v. Sunbeam Products, Inc.,

17 665 F.Supp.2d 357 (S.D. N.Y. 2009)………………………………………4
18
Zidell v. Dexter,
19 262 F. 145 (9th Cir. 1920)……………….………..……………………..…6
20
21 Federal Statutes
22
35 U.S.C. § 102(a)(2).……………………………………………………………24
23
24 35 U.S.C. § 271……………………………………………………………………4
25 35 U.S.C. § 289……………………………………………………………………4
26
37 CFR § 1.152……………………………………………………………………8
27
28 37 CFR § 1.153(a)………………………………………………………………...9
iv
1 Rules
2
Fed. R. Civ. P. 12(b)(6) ………………………………………….…………….6, 7
3
4 Fed. R. Civ. P. 12(c) ………………………………………….………………….2
5 Fed. R. Civ. P. 12(h)(2)(B) ………………………………………….…………...2

6
Fed. R. Evid. 201(b)(2)…………………………………………………………..7
7
8
Other Authorities
9
10 Manual for Patent Examining Procedure 1503.02………………………….….8, 9

11 Manual for Patent Examining Procedure 2152.01………………………………24
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v
1 Defendant QVC, Inc. (“QVC”) respectfully moves the Court, pursuant to Fed.
2
R. Civ. P. 12(c), for judgment on the pleadings with respect to Count II for
3
4 infringement of U.S. Design No. D880,743 (the “D’743 Patent”) and Count III for
5 infringement of U.S. Design No. D880,036 (the “D’036 Patent”) of the Complaint
6
filed by Plaintiff Ningbo Futai Electric Limited (“Futai” or “Plaintiff”).
7
8 I. INTRODUCTION
9 Two design patents are asserted in this case. Design patent claims are resolved
10
by judgment on the pleadings where a court cannot reasonably infer that an ordinary
11
12 observer would confuse the patented design with the accused product, such as where
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13 the accused product is “plainly dissimilar” to the patented design. This is such a case.
14
Design patents are narrow in scope and limited to the ornamental, non-
15
16 functional features in the patent’s drawings. A design patent is infringed only if the
17 accused product appears “substantially the same” as the patented design. This means
18
that an ordinary observer, familiar with the prior art, would be deceived into thinking
19
20 the accused design is the same as the patented design. The Complaint does not allege
21 facts that meet this standard because an ordinary observer would find that the accused
22
products are substantially dissimilar from the patented designs. Since this
23
24 dissimilarity is apparent from a side-by-side comparison of the designs, amending
25 the Complaint would not overcome the deficient pleading. Thus, leave to amend
26
Futai’s design patent claims would be futile, and judgment on the pleadings is
27
28 appropriate.
1
1 II. BACKGROUND
2
QVC sells a variety of consumer products via video shopping experiences in
3
various media. Two products that QVC has presented to its audience are the “Work
4
5 Light 360” and the “Work Light Express” (collectively, “Accused Products”).
6
Futai claims to own U.S. Design Patent No. D880,036 (“the D’036 Patent”)
7
entitled “Working Lamp” and U.S. Design Patent No. D880,743 (“the D’743 Patent”)
8
9 entitled “Work Light.”
10
Futai alleges that the Work Light Express infringes the D’036 Patent and that
11
the Work Light 360 infringes the D’743 Patent.

12
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13 III. LEGAL STANDARDS

14 A. Plausibility Pleading Standard
15
A party may move for judgment on the pleadings after the pleadings are closed.
16
17 Fed. R. Civ. P. 12(c). A Rule 12(c) motion may be based on the Plaintiff’s failure to
18 state a claim upon which relief can be granted. Fed. R. Civ. P. 12(h)(2)(B). A motion
19
under Rule 12(c) “faces the same test as a motion under Rule 12(b)(6).” Anderson v.
20
21 Kimberly-Clark Corp., 570 F. App’x 927, 932 (Fed. Cir. 2014) (citing McGlinchy v.
22 Shell Chem. Co., 845 F.2d 802, 810 (9th Cir.1988)).

23
To survive a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6),
24
25 a complaint must allege “enough facts to state a claim to relief that is plausible on its
26 face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial
27
plausibility when the plaintiff pleads factual content that allows the court to draw the
28
2
1 reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft
2
v. Iqbal, 556 U.S. 662, 678 (2009).
3
4 Courts have frequently granted motions to dismiss implausible design patent
5 claims. See, e.g., Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d
6
1334, 1336–37 (Fed. Cir. 2019) (affirming dismissal for failure to state a claim of
7
8 design patent infringement); Anderson, 570 F. App’x at 934 (same); Colida v. Nokia,
9 Inc., 347 Fed.Appx. 568, 570 (Fed.Cir.2009) (same); SCG Characters LLC v.
10
Telebrands Corp., No. 15-CV-00374 DDP (AGRs), 2015 WL 4624200, at *1–2
11
12 (C.D. Cal. Aug. 3, 2015) (granting motion to dismiss design patent claim);
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13 Performance Designed Prod. LLC v. Mad Catz, Inc., No. 16-CV-629-GPC(RBB),

14
2016 WL 3552063, at *1 (S.D. Cal. June 29, 2016) (same); NuVasive, Inc. v.
15
16 Alphatec Holdings, Inc., No. 18-CV-347-CAB-MDD, 2018 WL 2734881, at *3 (S.D.
17 Cal. May 14, 2018) (same).
18
Where a motion to dismiss is granted, leave to amend should be denied where
19
20 amendment could not possibly cure the deficiency in the complaint. See
21 Performance Designed Prod. LLC, 2016 WL 3552063, at *1–2.
22
B. Design Patent Infringement
23
24 A design patent protects the ornamental features of a design as shown in the
25 patent. See OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir.
26
1997).
27
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Case 5:22-cv-02015-MCS-RAO Document 29-1 Filed 03/13/23 Page 10 of 33 Page ID
#:411
1 Infringement of a design patent is the unauthorized manufacture, use, offer to

2
sell, sale or importation of the article embodying a patented design or any colorable
3
4 imitation thereof. 35 U.S.C. §§ 271, 289. “[D]etermining whether a design patent is
5 infringed is a two-step process. First, the court must construe the design patent’s
6
claim.” Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1286 (Fed. Cir.
7
8 2002). Second, the Court compares the claim construction with the accused design
9 to determine whether they are “substantially the same.” OddzOn Prods., Inc., 122
10
F.3d at 1405 (quoting Gorham Co. v. White, 81 U.S. (14 Wall) 511, 528 (1871)).
11
12 1. Claim Construction
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13 The preferred claim construction for design patents is the patent figures
14
themselves rather than a detailed verbal description of the claimed design.
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16 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008)
17
Accordingly, courts generally rely on patent drawings to construe design
18
19 claims. See Wing Shing Products (BVI) Co. Ltd. v. Sunbeam Products, Inc., 665 F.
20 Supp.2d 357, 360 (S.D.N.Y. 2009) (collecting cases).

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2. Ordinary Observer Test
22
23 The second step in determining whether a design patent is infringed requires
24 the fact-finder to “compare the patented and accused designs to determine whether
25
the accused design is substantially similar in appearance to the patented design.”
26
27 Rockport Company, Inc. v. Deer Stags, Inc., 65 F. Supp. 2d 189, 193 (S.D. N.Y.
28
4
#:412
1 1999). In making that determination, courts apply the “ordinary observer” test:
2
[I]f, in the eye of an ordinary observer, giving such
3 attention as a purchaser usually gives, two designs are
4 substantially the same, if the resemblance is such as to
deceive such an observer, inducing him to purchase one
5 supposing it to be the other, the first one patented is
6 infringed by the other.
7
Egyptian Goddess, 543 F.3d at 670 (quoting Gorham Co. v. White, 81 U.S. 511,
8
9 528 (1871)); see also L.A. Gear v. Thom McAn Shoe Co., 988 F.2d 1117, 1124
10 (Fed. Cir. 1993).

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“Ordinary observers” are those people having “ordinary acuteness, bringing

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13 to the examination of the article upon which the design has been placed that degree
14 of observation which men of ordinary intelligence give.” Gorham Co., 81 U.S. at
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528. “A district judge is an ordinary observer, and courts may therefore conduct
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17 the ordinary-observer test without referring to some hypothetical ordinary
18
observer.” Silverman v. Leombruni, No. 15 CIV. 2260 (PAC), 2016 WL 715735,
19
20 at *2 (S.D.N.Y. Feb. 19, 2016) (dismissing design patent claim under Fed. R. Civ.
21 P. 12(b)(6)).
22
The ordinary observer test requires a side-by-side comparison of the figures
23
24 of the design patent and the images of the accused article to assess whether the
25 designs, “taken as a whole, create overall visual impressions” that are substantially
26
the same. See Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997, 1011
27
28 (N.D. Ill. 2010) (citing OddzOn Prods., 122 F.3d at 1405). The overall impression
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#:413
1 is the key; there can be no infringement based on the similarity of specific features
2
if the overall appearance of the designs is dissimilar. OddzOn Prods., 122 F.3d at
3
4 1405.
5 Under the ordinary observer standard, moreover, a patented design that
6
consists “only of bringing together old elements with slight modifications of form”
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8 is not infringed by “another who uses the same elements with his own variations of
9
form . . . if his design is distinguishable by the ordinary observer from the patented
10
11 design.” Egyptian Goddess, 543 F.3d at 674 (citing Zidell v. Dexter, 262 F. 145,
12 146 (9th Cir. 1920).

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13
Accordingly, design patent cases are effectively divided into two categories
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15 under the ordinary observer test. In some instances, the claimed design and the
16 accused design are sufficiently distinct such that it is clear without more that the two
17
designs are not “substantially the same;” in other instances, when the claimed and
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19 accused designs are not plainly dissimilar, resolution of the question of whether the
20
two designs are substantially the same would benefit from a comparison of the
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22 claimed and accused designs with the prior art. Egyptian Goddess, 543 F.3d at 678.
23 C. Motions to Dismiss Design Patents and Judicial Notice

24 While a motion under Fed. R. Civ. P. 12(b)(6) generally is limited to the
25
pleadings, courts may rely on documents outside the pleadings if they are subject to
26
27 judicial notice. See, e.g., Swartz v. KPMG LLP, 476 F.3d 756, 763 (9th Cir. 2007);
28
6
#:414
1 Performance Designed Prods. v. Mad Catz, Inc., No. 16-cv-629-GPC (RBB), 2016
2
WL 3552063, at *4 n.2 (S.D. Cal. June 29, 2016) (allowing use of design patent
3
4 attached to the complaint and authentic photographs of the accused product). This
5 rule prevents plaintiffs from surviving a Rule 12(b)(6) motion by omitting references
6
to documents upon which their claims are based. Swartz, 476 F.3d at 763; see also
7
8 Anderson v. Kimberly-Clark Corp., No. C12-1979RAJ, 2013 WL 9760040, at *1-*2
9 (W.D. Wash. Sept. 25, 2013) aff’d, 570 Fed. Appx. 927 (Fed. Cir. 2014) and cert.
10
denied, 136 S. Ct. 142 (2015) (photographs of accused products considered on
11
12 motion to dismiss patent claim as they are central to plaintiffs’ allegations); Parker
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13 v. Kimberly-Clark Corp., No. 11 C 5658, 2012 WL 74855 at *1 (N.D. Ill. Jan. 10,
14
2012) (same); Pepitone v. Am. Standard, Inc., 983 F.2d 1087, n.1 (Fed. Cir. 1992)
15
16 (taking judicial notice of prior art to dismiss design patent infringement claim);
17 Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 954, n.27 (Fed. Cir. 1993)
18
(considering prior patents because patents are amenable to judicial notice).
19
20 Accordingly, courts may take judicial notice of U.S. patents, foreign patents,
21 and certified translations of foreign patents. See Coinstar, Inc. v. Coinbank
22
Automated Sys., Inc., 998 F. Supp. 1109, 1114 (N.D. Cal. 1998) (taking judicial
23
24 notice of U.S. patents); GeoVector Corp. v. Samsung Elecs. Co., 234 F. Supp. 3d
25
1009, 1016 (N.D. Cal. 2017) (taking judicial notice of Korean patent and certified
26
translation); see also Fed. R. Evid. 201(b)(2); Massachusetts v. Westcott, 431 U.S.
27
28 322, 323 n. 2 (1977) (public records “may be judicially noticed”).
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#:415
1 IV. ARGUMENT
2
The claims of the D’036 Patent and D’743 Patent are limited to the
3
4 ornamental designs shown in the figures of the respective patents. See In re Mann,
5
861 F.2d 1581, 1582 (Fed. Cir. 1988) (“Design patents have almost no scope”);
6
7 National Diamond Syndicate, Inc. v. Flanders Diamond USA, Inc., 264 F. Supp. 2d.
8 631, 639 (N.D. Ill. 2003) (“The Federal Circuit has held that design patents have a
9
narrow scope, limited to what is shown in the drawings accompanying the patent
10
11 application.”); see 37 C.F.R. § 1.152 (“[t]he design must be represented by a
12 drawing ...”). Everything shown in solid lines in the figures of the asserted design
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13
patents is part of the claimed design. As set forth in the Manual of Patent
14
15 Examining Procedure (“MPEP”),1 in a design drawing, “[t]he ornamental design
16
which is being claimed must be shown in solid lines in the drawing. There are no
17
portions of a claimed design which are immaterial or unimportant.” MPEP §
18
19 1503.02, ¶ 15.50 (citing In re Blum, 374 F.2d 904, 907 (C.C.P.A. 1967)) (emphasis
20
added).
21
22 Structure that is not part of the claimed design, but is considered necessary
23
to show the environment in which the design is associated, may be represented in
24
25 1
The MPEP “is commonly relied upon by patent examiners on procedural matters.
26 While the MPEP does not have the force of law, it is entitled to judicial notice as an
27 official interpretation of statutes or regulations as long as it is not in conflict
therewith.” In re Beasley, 117 Fed. Appx. 739, 744 n.7 (Fed. Cir. 2004) (citations
28 omitted).
8
#:416
1 the drawing by broken lines. In re Zahn, 617 F.2d 261 (C.C.P.A. 1980); MPEP §
2
1503.02. This includes any portion of an article in which the design is embodied or
3
4 applied to that is not considered part of the claimed design.
5 A. Work Light Express Does Not Infringe the D’036 Patent.
6
The claim articulated in the D’036 Patent is illustrated by figures that pertain
7
8 to two embodiments constituting one claim. See 37 C.F.R. § 1.153(a) (“More than
9 one claim [in a design patent] is neither required nor permitted.”). There are no
10
broken lines in the drawings of the D’036 Patent. See Dkt. 1-3, Figs. 1-20.
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1. The Overall Design of Work Light Express is Substantially
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13 Different from D’036 Design.

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The claimed design and the accused Work Light Express are so plainly
15
16 dissimilar that, even without considering the prior art, no reasonable fact finder
17 could conclude that they appear “substantially the same” to an ordinary observer.
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The D’036 design and the Work Light Express have at least the following
19
20 substantial differences in the appearances of their bumpers and front sides of their
21
housing:
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D’036 Design Work Light Express
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24 (1) Bumpers have three sided angled (1) Bumpers have rounded corners.
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corners.
26
27 (2) Pattern of 18 channels along edge (2) Pattern of 15 channels along edge
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9
#:417
1 D’036 Design Work Light Express

2
of bumpers, and no curved channel at of bumpers, and a curved channel at
3
4 each corner. each corner.
5 (3) Bumpers have a concave outer (3) Bumpers have a straight (not
6
edge, and a straight inner edge. concave) outer edge, and an elongated
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8 protrusion along the inner edge.
9 (4) Frame with faceted, protruding (4) Frame with rounded corners
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corners surrounds light. surrounds light, with screw head at
11
12 each corner.
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13 (5) Area between opposite bumpers is (5) Horizontal parallel ridges extend
14
relatively flat, i.e., no holes or across the area between the bumpers
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16 recesses around frame. and frame.
17 (6) Top and bottom edges (between (6) Top and bottom edges are straight
18
bumpers) of housing slant inward between the bumpers (no slanted
19
20 toward a flat recess, i.e., there are edge); i.e., there is a straight profile
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sloped edges along the top and bottom. between the bumpers.
22
The foregoing differences are seen in the following side-by-side comparison
23
24 of the D’036 design and the Work Light Express found in the pleadings:2
25
26
27 2
Throughout this paper, the red and blue text beside images of the claimed and
28 accused designs has been added to identify the differences between the designs.
10
#:418
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2
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5
6
7
8
9
10
11
12 D’036 Patent [Fig. 9] Work Light Express

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13
Dkt. 1-10, Complaint Exh. J.
14
15 As noted above, the D’036 has two embodiments; the first one is shown in
16
Figures 1 through 10 and the second one is shown in Figures 11 through 20. As
17
18 shown below, the second embodiment of the D’036 design differs from the Work
19 Light Express in the same ways as the first embodiment, with an additional
20
difference being that the bumpers of the second embodiment cover only the
21
22 corners, not the entire side edge:
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25
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#:419
1
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10
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D’036 Patent [Fig. 19] Work Light Express

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13 Dkt. 1-3, Complaint Exh. C. Dkt. 1-10, Complaint Exh. J.

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Furthermore, D’036 design (both embodiments) and the Work Light Express
15
have at least the following differences in appearance with respect to their handles
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17 and rear sides of their housing:
18
D’036 Design Work Light Express
19
20 (7) Handle has corner bumpers with (7) Handle has no bumpers.
21 ridges and depressions which match

22
the corner bumpers on the D’036 light
23
24 housing.
25 (8) Handle has a flat inner surface. (8) Handle has a scalloped inner
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surface or finger sized curvatures.
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1 D’036 Design Work Light Express

2
(9) Handle has three sided angled (9) Handle has rounded corners.
3
4 corners.
5 (10) The power button is located either (10) Power button at the center of
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along the upper edge of the back of the the side edge.
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8 light module (Fig. 2) or approximately
9 halfway between the middle and outer
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left edge of the light module (Fig. 12).
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12 (11) Light module has only one (11) Light module has a circular
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13 circular feature near each corner. magnet and a circular screw hole near
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each corner.
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16 The foregoing differences are shown in the following side-by-side
17 comparison:
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#:421
1 Dkt. 1-3, Complaint Exh. C, Dkt. 1-8, Complaint Exh. H at 3.

2 Fig. 10.
3 As seen below, when viewed from behind, the second embodiment of the
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D’036 design differs from the Work Light Express in the same ways as the first
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6 embodiment, with additional differences regarding the location of the power button
7 and the lid over the battery compartment:
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19 Dkt. 1-3, Complaint Exh. C, Dkt. 1-8, Complaint Exh. H at 3.
Fig. 20.
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21 2. When Viewed in the Context of the Prior Art, the Work
Light Express Does Not Infringe the D’036 Design.
22
As the overall appearance of the Work Light Express is “plainly dissimilar”
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24 from the D’036 Design, the prior art need not be considered. See Great Neck Saw
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Mfrs., Inc. v. Star Asia, U.S.A., LLC, 727 F. Supp. 2d 1038, 1051-52 (W.D. Wash.
26
27 2010). However, an analysis of the prior art further demonstrates that an ordinary
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#:422
1 observer familiar with such prior art would not believe that the Work Light Express
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is the same as the D’036 design.
3
4 When the prior art is used as a “frame of reference,” Egyptian Goddess, 543
5 F.3d at 677, the overall visual impression made by the Work Light Express is
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dominated by the shape of the bumpers, the pattern of ridges and depressions on
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8 the bumper, and the frame surrounding the central LED. The ordinary observer,
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informed by the prior art,3 upon examining the Work Light Express will immediately
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11 see that the Work Light Express design differs from the D’036 design and that
12 Work Light Express includes features not found in the patented design, and
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13
includes many features that are similar to prior art designs, not the patented design.
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15 For example, the ordinary observer would see that the Work Light Express,
16 as seen in the photographic images below,4 is more like the following Korean prior
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19 3
The prior art references discussed herein are submitted herewith in Exhibit C,
20 Exhibit D, and Exhibit E. Courts may take judicial notice of publicly available
prior art references, and certified translations of these references, in deciding a
21 motion to dismiss. See Pepitone, 983 F.2d at n.1; Hoganas, 9 F.3d at 954, n.27;
22 Coinstar, 998 F. Supp. at 1114; GeoVector, 234 F. Supp. 3d at 1016. Defendant
respectfully requests that the Court take judicial notice of the prior art references in
23 Exhibit C, Exhibit D, and Exhibit E.
24 4
Photographic images of the Work Light Express are submitted herewith in Exhibit
25 A to the Declaration of Brian J. Doyle. Courts may take judicial notice of
photographs of accused products. See Anderson, 2013 WL 9760040, at *2 (taking
26 judicial notice of photographs of accused products and dismissing design patent
27 claims). Defendant respectfully requests that the Court take judicial notice of the
photographic images in Exhibit A.
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#:423
1 art reference than the D’036 design:

2
D’036 Design Work Light Express Korea Registered
3 Design No. 30-0948744
4 (Dkt. 1-3, Figs. 1, 7) (Exhibit A) (Exhibit C)
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16 The striking similarities between the Work Light Express and the Korean
17 prior art reference above include the shape of the bumpers, the pattern of channels
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and holes on the bumpers, the parallel ridges that extend across the area between
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20 the bumpers and frame, and the shape of the frame around the central light.
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Similarly, the Work Light Express is also more like the following EU
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23 registered design than the D’036 design:
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#:424
1
2
D’036 Design Work Light Express EU Registered
3 Community Design
4 (Dkt. 1-3, Fig. 1) (Exhibit A) No. 004559524-0003
(Exhibit D)
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7
8
9
10 Furthermore, “when the claimed design is close to the prior art designs, small
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differences between the accused design and the claimed design are likely to be
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13 important to the eye of the hypothetical ordinary observer.” Egyptian Goddess,

14 543 F.3d at 676. Here, as seen in the table below, the claimed D’036 design is
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remarkably similar to prior art such as U.S. Design Patent D877,948. Thus, the
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17 differences between the Work Light Express and the D’036 design that are
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identified above are likely to be important to the ordinary observer.
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#:425
1 D’036 Design U.S. Design Patent D877,948

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(Dkt. 1-3, Figs. 11,20) (Exhibit E)
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In view of the prior art, the Work Light Express cannot infringe the D’036
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23 Patent. See Egyptian Goddess, 543 F.3d at 682 (no infringement where accused
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design more similar to prior art than to patented design); Seirus Innovative
25
26 Accessories, Inc. v. Cabela’s, Inc., 827 F. Supp. 2d 1150, 1156 (S.D. Cal. 2011)
27 (finding no design patent infringement in light of similarities between prior art and
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#:426
1 accused product).
2
Thus, in view of the overall difference between the D’036 design and the
3
4 Work Light Express, it is implausible that an ordinary observer, especially one
5 informed by the prior art, would be deceived into thinking that the Work Light
6
Express is same as the D’036 design.
7
8 B. The Work Light 360 Does Not Infringe the D’743 Patent.
10 Different from D’036 Design.

11 The D’743 design and the accused Work Light 360 are so plainly dissimilar
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that, even without considering the prior art, no reasonable fact finder could
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14 conclude that they appear “substantially the same” to an ordinary observer.
15
Substantial differences between the claimed design and the Work Light 360
16
are evident from the following images in the pleadings. For example, the handle
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18 of the claimed design and the handle of the Work Light 360 substantially differ in
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the following ways:
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21 D’743 Design Work Light 360
22 (1) Short bumpers wrap fully (1) Long grips wrap partially
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around the corner of the handles but around the corners of the handles and
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25 do not extend over the length of the extend over the length of the handle
26 handle bar. bar.
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#:427

2
(2) Sharply angled corners between (2) Curved corners between the
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4 the handle bar and handle arms. handle bar and handle arms.
5 (3) Handle bar has a flat bottom edge, (3) Grip on handle bar has a scalloped
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and no rectangular groove or holes. bottom edge, a rectangular groove,
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8 and two rectangular holes.
9 (4) Handle includes a series of u- (4) The handle bar has shallow
10
shaped channels that extend from its notches that do not extend into its side.
11
12 outer surface to its sides along its entire The handle arms do not have any U-
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13 length, except at the corners of the shaped channels.

14
handle.
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16 These differences are illustrated in the following images:
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#:428

2
Dkt. 1-9, Complaint Exh. I.
3
4 The light housing of the claimed design and the light housing of the Work
5 Light 360 also differ substantially in the following ways:
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D’743 Design Work Light 360
7
8 (5) Symmetrical, raised bumpers (5) Asymmetrical, flush bumpers
with sharply angled corners, a wide with rounded corners, a thin
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recess, and no screws. channel, and two screws.
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(6) Light surrounded by frame with (6) Light surrounded by rectangular
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faceted, protruding corners. frame with rounded corners.

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13 (7) No holes or recesses around (7) Oval recesses extend along the
frame. perimeter of frame.
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Dkt. 1-2, Complaint Exh. B, Fig. 12. Dkt. 1-7, Complaint Exh. G at 9.
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#:429
1 The light housing of the claimed design and the light housing of the Work
2
Light 360 are also substantially different when viewed from the rear. The
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4 photograph below of the Work Light 360 is submitted herewith in Exhibit B.5

6
(8) Symmetrical, raised bumpers (8) Asymmetrical, flush bumpers
7 each with sharply angled corners, two each with rounded corners, one thin
8 wide recesses, and one screw in the channel, and two screws.
center.
9
10 (9) One screw in the center on the (9) No screw in the center on the outer
outer edge of the light housing. edge of the light housing.
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12 (10) A notch on battery compartment (10) No notch on battery compartment

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release. release.
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26 5
Photographic images of the Work Light 360 are submitted herewith in Exhibit B
27 to the Declaration of Brian J. Doyle. Defendant respectfully requests that the Court
take judicial notice of the photographic images in Exhibit B.
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#:430

2
Dkt. 1-2, Complaint Exh. B, Fig. 2. Exhibit B
3
4 Moreover, when viewed from the top, more substantial differences between
5 the D’743 Design and the Work Light 360 are apparent.
6
D’743 Design Work Light 360
7
8 (11) Thick handle. (11) Thin handle.
9 (12) Light housing mostly obscured (12) Light housing not obscured by
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by handle. handle.
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12 (13) Power symbol on power button. (13) No power symbol on power

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13 button.
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21 Dkt. 1-2, Complaint Exh. B, Fig. 5. Exhibit A.
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2. When Viewed Against the Prior Art, the Differences Between
23 the Work Light 360 Does D’743 Design Are Even More
24 Significant.
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The claimed D’743 design is more similar to the prior art design (“You”)
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#:431
1 seen in the table below than to the Work Light 360.6 For example, whereas both
2
the D’743 design and You have a faceted frame with no recesses around the center
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4 light, the frame in the Work Light 360 is not faceted and has a pattern of oval
5 recesses. And, whereas the D’743 design and You have short bumpers that wrap
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fully around the corner of the handles, the Work Light 360 has long grips that wrap
7
8 partially around the corners. In view of these and other similarities between the
9
D’473 design and You, the differences between the D’743 design and the Work
10
11 Light 360 described above are likely to be important to the ordinary observer. See
12 Egyptian Goddess, 543 F.3d at 676.

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D’743 Design U.S. Patent Publication No.
14 2019/0353332 to You
15 (Dkt. 1-3, Figs. 12, 2) (Exhibit E)
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26 6
U.S. Patent Publication No. 2019/0353332 to You (“You”) claims priority to a
27 foreign application filed on May 21, 2018. This date is before the filing date of the
D’743 Patent on Oct. 2, 2018. Thus, You is prior art to the D’743 Patent. See 35
28 U.S.C. § 102(a)(2); MPEP 2152.01.
24
#:432
1 D’743 Design U.S. Patent Publication No.

2 2019/0353332 to You
(Dkt. 1-3, Figs. 12, 2) (Exhibit E)
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Thus, in view of the overall difference between the D’743 design and the
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14 Work Light 360, it is implausible that an ordinary observer who is informed by the
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prior art would conclude that the Work Light 360 is the “same as” the D’743
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17 design.
18 V. CONCLUSION
19 For the foregoing reasons, respectfully requests the Court dismiss Count II and
20
Count III of the Complaint with prejudice.
21
22 Dated this 13th day of March, 2023
23
Respectfully Submitted,
24
By: /s/ Brian J. Doyle
25
John Zaccaria (NYS Bar No. 2659241)
jzaccaria@notaromichalos.com
27
Brian J. Doyle (NYS Bar No. 4597449)
25
#:433
1 brian.doyle@notaromichalos.com
2 NOTARO, MICHALOS &
ZACCARIA P.C.
3 100 Dutch Hill Road, Suite 240
4 Orangeburg, NY 10962
Tel. (845) 359-7700
5 Fax. (845) 359-7798
6
John K. Rubiner (155208)
7 JRubiner@fmglaw.com
8 FREEMAN MATHIS & GARY, LLP
550 South Hope Street, Suite 2200
9 Los Angeles, CA 90071-2631
10 Tel. (213) 615-7000

Fax. (213) 615-7100
11
12 Attorneys for Defendant QVC, INC.

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#:434
1 CERTIFICATE OF SERVICE
2
I hereby certify that on March 13, 2023, I served and electronically filed the
3
4 “MEMORANDUM IN SUPPORT OF DEFENDANT’S MOTION FOR
5 JUDGMENT ON THE PLEADINGS” with the Clerk of Court using the CM/ECF
6
system which will automatically send email notification of such filing to the
7
8 following attorneys of record:
9
Alan C. Chen, Esq. - alan.chen@rimonlaw.com

10
________________
11
/s/ John K Rubiner____________

12 John K. Rubiner (155208)
Los Angeles
13 FREEMAN MATHIS & GARY,

LLP
14 Attorney for Defendant QVC, INC.
15 550 South Hope Street, Suite 2200
Los Angeles, CA 90071-2631
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Ningbo v. QVC - Motion For Judgment On The Pleadings

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Case 5:22-cv-02015-MCS-RAO Document 29-1 Filed 03/13/23 Page 1 of 33 Page ID #:402

1 John K. Rubiner (155208)

Tel. (845) 359-7700

8 B. Design Patent Infringement.................................................................. 3

12 C. Motions to Dismiss Design Patents and Judicial Notice ..................... 6

13 IV. ARGUMENT .................................................................................................. 8

Bell Atl. Corp. v. Twombly, 5

12 Catalina Lighting, Inc. v. Lamps Plus, Inc.,

18 Competitive Edge, Inc. v. Staples, Inc.,

1 Great Neck Saw Mfrs., Inc. v. Star Asia, U.S.A., LLC,

13 617 F.2d 261 (C.C.P.A. 1980)……………………………………………..9

14 L.A. Gear v. Thom McAn Shoe Co.,

27 Parker v. Kimberly-Clark Corp.,

1 Pepitone v. Am. Standard, Inc.,

Seirus Innovative Accessories, Inc. v. Cabela’s, Inc.,

2016 WL 715735 (S.D. N.Y. 2016)…………………………………….…5

16 Wing Shing Products (BVI) Co. Ltd. v. Sunbeam Products, Inc.,

5 Fed. R. Civ. P. 12(h)(2)(B) ………………………………………….…………...2

10 Manual for Patent Examining Procedure 1503.02………………………….….8, 9

the Work Light 360 infringes the D’743 Patent.

13 III. LEGAL STANDARDS

22 Shell Chem. Co., 845 F.2d 802, 810 (9th Cir.1988)).

13 Performance Designed Prod. LLC v. Mad Catz, Inc., No. 16-CV-629-GPC(RBB),

1 Infringement of a design patent is the unauthorized manufacture, use, offer to

20 Supp.2d 357, 360 (S.D.N.Y. 2009) (collecting cases).

10 (Fed. Cir. 1993).

“Ordinary observers” are those people having “ordinary acuteness, bringing

12 146 (9th Cir. 1920).

23 C. Motions to Dismiss Design Patents and Judicial Notice

13 Different from D’036 Design.

1 D’036 Design Work Light Express

12 D’036 Patent [Fig. 9] Work Light Express

D’036 Patent [Fig. 19] Work Light Express

13 Dkt. 1-3, Complaint Exh. C. Dkt. 1-10, Complaint Exh. J.

21 ridges and depressions which match

1 D’036 Design Work Light Express

1 Dkt. 1-3, Complaint Exh. C, Dkt. 1-8, Complaint Exh. H at 3.

1 art reference than the D’036 design:

13 important to the eye of the hypothetical ordinary observer.” Egyptian Goddess,

1 D’036 Design U.S. Design Patent D877,948

10 Different from D’036 Design.

1 D’743 Design Work Light 360

13 length, except at the corners of the shaped channels.

1 D’743 Design Work Light 360

faceted, protruding corners. frame with rounded corners.

5 D’743 Design Work Light 360

12 (10) A notch on battery compartment (10) No notch on battery compartment

1 D’743 Design Work Light 360

12 (13) Power symbol on power button. (13) No power symbol on power

12 Egyptian Goddess, 543 F.3d at 676.

1 D’743 Design U.S. Patent Publication No.

10 Tel. (213) 615-7000

12 Attorneys for Defendant QVC, INC.

Alan C. Chen, Esq. - alan.chen@rimonlaw.com

/s/ John K Rubiner____________

13 FREEMAN MATHIS & GARY,

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