Voltstar v. Amazon - MSJ Brief (proposed)

8/13/2019 Voltstar v. Amazon - MSJ Brief (proposed)

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS,

EASTERN DIVISION

VOLTSTAR TECHNOLOGIES, INC.

f/k/a HORIZON TECHNOLOGIES, INC.

Plaintiff,

-vs.-

AMAZON.COM, INC.,

Defendant.

))

))

)

))

)

))

)

)

The Honorable

John Z. Lee

No. 1:13-cv-05570

DEFENDANTS MOTION INSTANTER TO

FILE A BRIEF IN EXCESS OF FIFTEEN PAGES

Defendant Amazon.com, Inc. (Amazon) moves to file a brief in excess of fif-

teen (15) pages in support of its motion for summary judgment, filed concurrently he-

rewith. In support of the instant motion, Amazon states as follows:

1. On August 5, 2013, plaintiff Voltstar Technologies, Inc. (Voltstar)filed its complaint in this matter. The complaint alleges that Amazon infringed a design

patent owned by Voltstar.

2. Amazon is filing concurrently herewith a motion for summary judgment,which demonstrates that the Amazon product that Voltstar has accused of infringement

does not infringe as a matter of law.

3.

To adequately demonstrate the deficiencies in Voltstars infringementclaim, and that Amazon is entitled to judgment as a matter of law of that issue, Ama-

zons brief in support of summary judgment includes several figures and photographs

which reflect facts at issue in this case, and other figures necessary to properly illustrate

Case: 1:13-cv-05570 Document #: 22 Filed: 12/13/13 Page 1 of 2 PageID #:64


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the conclusions of other courts in cases that Amazon relies upon as legal support for its

request for summary judgment. These figures and photographs are essential for the

Court to properly assess the merits of Amazons summary judgment argument.

4. Though the text of the argument in Amazons brief would otherwisecomply with the Courts rule, the inclusion of these figures and photographs has re-

sulted in a memorandum that exceeds the 15 page limit set by the Court.

5. In light of the above, Amazon respectfully requests leave to file a memo-randum in support of its motion for summary judgment in excess of 15 pages as is oth-

erwise required by the Court.

WHEREFORE, defendant Amazon respectfully requests that the Court allow

Amazon to file a memorandum in support of its motion for summary judgment that ex-

ceeds fifteen pages in length.

/s/ Bradford P. Lyerla____

Bradford P. Lyerla

[email protected]

Kristopher R. [email protected]

Nicole C. Berg

[email protected] & BLOCK LLP

353 North Clark Street

Chicago, Illinois 60654(312) 222-9350

Counsel for Defendant,

AMAZON.COM, INC.

December 13, 2013

Case: 1:13-cv-05570 Document #: 22 Filed: 12/13/13 Page 2 of 2 PageID #:65


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IN THE UNITED STATES DISTRICT COURTFOR THE NORTHERN DISTRICT OF ILLINOIS,

EASTERN DIVISION



Plaintiff,

-vs.-

AMAZON.COM, INC.,

Defendant.

))

)

))

)

)

))

)

)

)

The Honorable

John Z. Lee

No. 1:13-cv-05570

MEMORANDUM IN SUPPORT OF

MOTION FOR SUMMARY JUDGMENT OF AMAZON.COM

Bradford P. [email protected]

Kristopher R. Kiel

[email protected] C. Berg

[email protected]

JENNER & BLOCK LLP

353 North Clark StreetChicago, Illinois 60654

(312) 222-9350


AMAZON.COM, INC.

December 13, 2013

Case: 1:13-cv-05570 Document #: 22-1 Filed: 12/13/13 Page 1 of 23 PageID #:66


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TABLE OF CONTENTS

INTRODUCTION ----------------------------------------------------------------------------------- 1STATEMENT OF FACTS ------------------------------------------------------------------------- 1

A. Plaintiff Voltstar ------------------------------------------------------------------- 1B. Defendant Amazon ---------------------------------------------------------------- 2C. Voltstars Complaint and Amazons Answer ---------------------------------- 2D. The Protected Features of Voltstars Patented Design ------------------------ 2E. The Accused Amazon Wall Plug ------------------------------------------------ 4F. Status of this Litigation ----------------------------------------------------------- 6

ARGUMENT ---------------------------------------------------------------------------------------- 7I. FUNCTIONAL SIMILARITIES CANNOT BE THE BASIS FOR DESIGN

PATENT INFRINGEMENT -------------------------------------------------------------- 9II. THE AMAZON PRODUCT AND VOLTSTAR PATENT SHARE NO

COMMON ORNAMENTAL FEATURES ------------------------------------------- 12III. NO FACT OR EXPERT DISCOVERY VOLTSTAR MIGHT SEEK CAN

LEGITIMATELY PREVENT SUMMARY JUDGMENT ------------------------- 13CONCLUSION ------------------------------------------------------------------------------------ 18



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TABLE OF AUTHORITIES

Page(s):

Cases:

Arcteryx Equip. Inc. v. Westcomb Outerwear, Inc.,No. 07-59, 2008 WL 4838141 (D. Utah Nov. 4, 2008) ------------------------------------ 8

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

763 F. Supp. 2d 997 (N.D. Ill. 2010) ------------------------------------------------ 8, 16, 17

Contessa Food Prods., Inc. v. ConAgra, Inc.,

282 F.3d 1370 (2002) ------------------------------------------------------------------------- 15

Egyptian Goddess v. Swisa,543 F.3d 665 (Fed. Cir. 2008) ------------------------------------------------------------ 8, 15

Fanimation, Inc. v. Dans Fan City, Inc.,

No. 08-cv-1071, 2010 WL 5285304 (S.D. Ind. Dec. 16, 2010) --------------------------- 8

Gorham Co. v. White,81 U.S. 511 (1871) ------------------------------------------------------------------------------ 8

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

727 F. Supp. 2d 1038 (W.D. Wash. 2010) --------------------------------------------------- 8

HR U.S. LLC v. Mizco Int'l, Inc.,No. 07-2394, 2009 WL 890550 (E.D.N.Y. Mar. 31, 2009) ------------------------------- 8

In re Mann,

861 F.2d 1581 (Fed. Cir. 1988) --------------------------------------------------------------- 7

Lee v. Dayton-Hudson Corp.,

838 F.2d 1186 (Fed. Cir. 1988) ------------------------------------------------------ 7, 11, 15

McIntire v. Sunrise Specialty Co.,F. Supp. 2d, 2013 WL 1907609 (E.D. Cal. 2013) ------------------------------------ 8

Minka Lighting, Inc. v. Maxim Lighting Intl, Inc.,

No. 06-cv-995, 2009 WL 691594 (N.D. Tex. Mar. 16, 2009) ------------------- 8, 17, 18

OddzOn Prods., Inc. v. Just Toys, Inc.

122 F.3d 1396 (Fed. Cir. 1997) -------------------------------------------------------- passim



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Pacific Handy Cutter, Inc. v. Quick Point, Inc.,No. 96-399, 1997 WL 607501 (C.D. Cal. July 9, 1997) ------------------------------ 8, 14

Rainworks Ltd. v. The Mill-Rose Co.,

No. 06-1549, 2009 WL 863993 (N.D. Ohio Mar. 31, 2009) ------------------------------ 8

Richardson v. Stanley Works, Inc.,

597 F.3d 1288 (Fed. Cir. 2010) -------------------------------------------------------- passim

Schnadig Corp. v. Collezione Europa U.S.A.,

No. 01-1697, 2002 WL 31253750 (N.D. Ill. Oct. 4, 2002) -------------------------------- 8

Sofpool LLC v. Kmart Corp.,

No. S-10-3333, 2013 WL 2384331 (E.D. Cal. May 30, 2013) ----------------------- 8, 16

Statutes and Rules:

Federal Rule of Civil Procedure 16(f) ------------------------------------------------------------ 6

Federal Rule of Civil Procedure 56(d) ------------------------------------------------------------ 7



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INTRODUCTION

Design patents by definition protect the ornamental features of an article of manu-

factureand only those features. By contrast, features of an article that reflect itsfunc-

tion, as opposed to its decorative appearance,are outside the scope of a design patents

protection, and for that reason cannot form anybasis of an allegation of patent infringe-

ment as a matter of law.

Here, Voltstar alleges that Amazon infringes a design patent, U.S. Design Patent

No. D587,192, directed solely to the ornamental features of a compact USB wall plug.

While both the Voltstar patent and the accused Amazon product are functionally confi-

gured to perform as compact wall plugs, the Amazon product does not share even asingle

ornamental (i.e., non-functional) feature in common with Voltstars patented design. For

that reason, as a matter of law, the Amazon product cannot possibly infringe. And where

an accused device does not share even asingle ornamental feature with a design patent,

any similarity between the two necessarily would arise, if at all, solely from functional

similarities that fall outside the scope of the patent. Consequently, any fact or expert dis-

covery that Voltstar may wish to pursue, no matter its scope, could do no more than at-

tempt to show confusion traceable solely to a functional, not ornamental, similarity

which is irrelevant as a matter of law.

For these reasons, as set forth more fully below, Amazon moves for summary

judgment.

STATEMENT OF FACTS

A. Plaintiff VoltstarVoltstar Technologies, Inc. makes and sells wall plug accessory products that can

be used to charge devices designed and sold by other companies. (Amazons 56.1 State-



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ment of Facts SOF 2.) The Volt-Star Mini Charger is one such product. (Id.)

Voltstars Mini Charger is currently offered for sale on amazon.com and also through

Voltstars website. (Id. 4.) Voltstars website specifically advertises this product as an

accessory for use with Amazon Kindle devices, among other devices. (Id. 4-5.)

Voltstar also owns a number of United States and foreign patents, some of which

are utility patents directed to the function of its charger products, and others are design

patents directed to the ornamental features of its charger designs. (SOF 6.)

B. Defendant AmazonAmazon sells e-reader products under the popular Kindle brand. (SOF 8.)

Amazon also sells accessory USB wall plugs for use in charging Kindle devices. (SOF

9.) Voltstar accuses one such USB wall plug, formerly sold by Amazon, of infringement

in this case.

C. Voltstars Complaint and Amazons AnswerVoltstar filed this lawsuit against Amazon on August 5, 2013, alleging that Ama-

zons accessory USB wall plug infringes Voltstars U.S. Design Patent No. D587,192.

(Dkt. No. 1.) In its complaint, Voltstar seeks an accounting, damages in no event less

than a reasonable royalty, and an award of costs incurred in connection with prosecuting

this action against Amazon. (Id.at 6.) Voltstar has made no prayer for injunctive relief.

On October 11, 2013, Amazon filed its answer denying that it infringes Voltstars

patent. (Dkt. No. 16, at 4-5.)

D. The Protected Features of Voltstars Patented DesignThe Voltstar patent, entitled Electrical Charger, includes a single claimed em-

bodiment shown in six figures with various perspective views. (SOF 11, 13.) The pa-

tent is generally directed to a design for a compact USB wall plug with a number of spe-

cific ornamentali.e., non-functionalfeatures, which are the sole focus of this case.



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The principal ornamental feature of the Voltstar patent, apparent in each figure, is

an overall beveled appearance with a number of facetsangled surfaces like those cut

into a gemstonethat define the contours in the body of the plug. Figures 1 and 2 of the

Voltstar patent, shown below, claim a beveled appearance and no fewer than ten well-

defined facets in the body of the plug.

Figure 2, on the right, claims a number of annular or ring-shaped facets on a narrow pro-

jection that houses the USB port, which (because of these annular facets) resembles the

threaded end of a light bulb.

Additional ornamental features of Voltstars design are shown in figures 3 and 5.

Among other things, these figures claim a lateral groove that runs the length of the plug

and bisects it into two halves, as shown below.

The resulting overall appearance resembles a clamshell, with a top half and a bottom half

sandwiched together with a discernible gap.

Figure 5 claims this clamshell appearance as well and also claims a distinctive

X-pattern formed when the facets on the shoulders of the plug taper toward the middle.



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Finally, in figure 5, the projection that houses the USB port is claimed to be much nar-

rower than the body of the charger and nearly circular in shape.

E. The Accused Amazon Wall PlugThe Amazon wall plug was designed and developed by Chris Green and John

Johnston, product designers at Amazons Lab126 facility, beginning in the spring of

2008. (SOF 17.) Amazon released it for sale to the public in March 2009. (Id.) Nota-

bly, the design for the Amazon wall plug at issue in this case is the subject of its own pa-

tent, U.S. Design Patent No. D611,409. (Id. 18.) Amazon, the assignee of the 409 pa-

tent, therefore owns the patent rights to the design of its wall plug.

The Voltstar complaint includes photos of the Amazon wall plug that Voltstar has

accused of infringement. Exhibit 1 to the Johnston Declaration includes additional views.

These views show that the Amazon wall plug has a number of distinct ornamental fea-

tures of its own, and that each ornamental feature is different from those depicted in

Voltstars design patent.

In contrast to the beveled design claimed in Voltstars patent, Amazons product

features no facets and only smooth contoursrepresenting a design choice that is the

very opposite of Voltstars design. This difference is easy to see by comparing the two

designs from any perspective, including the perspective shown below.



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Amazons product differs from Voltstars patent in other readily discernible ways

as well. The Amazon product is divided in a prominently different way: while the

Voltstar design patent includes a distinct top half and bottom half, the Amazon product

has no such designi.e., no distinct top half and bottom half. Instead, the Amazon plug

is divided into two end portions, with the dividing line between the USB port and metal

prongsnot running laterally across the body of the plug, as shown below.

Thus, while the Amazon product appears as two pieces, they clearly are not the same two

pieces as in Voltstars design patent.

The USB side of Amazons product also includes none of the ornamental design

features claimed in Voltstars patent. The sharp ornamental angles on the USB side of

the Voltstar design patent are nowhere to be found on the Amazon product.

The Amazon product therefore lacks anything remotely similar to the light bulb-type

threads or distinctive X shaped pattern depicted in the Voltstar patent, as shown above.

In sum, the Amazon product does not include a single ornamental, non-functional



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feature claimed in the Voltstar patent. Further, the Amazon product includes several dis-

tinctive ornamental, non-functional features that are not in the Voltstar design. For ex-

ample, the USB end of the Amazon product features a broad and flat wide-mouth oval

shape, which contrasts with the narrow circular shape in the Voltstar design patent.

The USB end of the Amazon product, shown above, also features a recessed area that ac-

commodates the USB cable, resulting in a well-defined lip raised around the perimeter.

These features of the Amazon product are nowhere to be found in the Voltstar design pa-

tent, in which the face of the USB portion is flat with no recessed area and no lip at all.

In the Amazon product, the USB end appears as a smoothly rounded cap on the body

of the plug, which the Voltstar patent utterly lacks.

As the discussion above makes clear, the Amazon product does not include a sin-

gle ornamental, non-functional feature claimed in the Voltstar patent, and also includes

distinctive ornamental, non-functional features of its own that are not in the Voltstar pa-

tents design.

F. Status of this LitigationOn November 6, 2013, the Court held a Rule 16(f) status conference. In advance

of the conference, the parties submitted a joint report regarding the status of the case.

(Dkt. No. 17.) In the report, Amazon noted its intention to file an early summary judg-

ment motion to dismiss this case because the accused Amazon wall plug cannot infringe

given that it does not include even a single ornamental, non-functional design feature



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claimed in the Voltstar patentand thus any possible confusion between the Voltstar pa-

tent and the Amazon plug would arise, if at all, from functional (i.e., unclaimed) features

that are irrelevant to an infringement analysis as a matter of law. (Id. at 2-3.)

At the conference, the Court heard brief argument from Amazon on the issue, and

ruled that Amazon may proceed with its planned motion. The Court set a briefing sche-

dule for the motion, and also noted that after evaluating Amazons motion Voltstar may

file a Rule 56(d) affidavit to the extent Voltstar feels discovery is required to respond.

This is Amazons motion.

ARGUMENT

Design patents by definition protect the cosmetic and ornamentali.e., non-

functionalappearance of an article of manufacture, and the ornamental features de-

picted in a design patent are the exclusive focus of any infringement analysis. As the

Federal Circuit held inRichardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir.

2010) we have made clear that a design patent, unlike a utility patent, limits protection

to the ornamental design of the article. Similarly, in OddzOn Products, Inc. v. Just

Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997), the Federal Circuit affirmed summary

judgment of non-infringement of a design patent, stating: A design patent only protects

the novel, ornamental features of the patented design. Accord Lee v. Dayton-Hudson

Corp., 838 F.2d 1186 (Fed. Cir. 1988); see also In re Mann, 861 F.2d 1581, 1582 (Fed.

Cir. 1988) (Design patents have almost no scope. The claim at bar, as in all design pa-

tent cases, is limited to what is shown in the application drawings.).

The test for whether a design patent is infringed is whether an ordinary observer

comparing solely the ornamental (i.e., non-functional) appearance of a patented design

andsolely the ornamental (i.e., non-functional) appearance of an accused product side by

side would be unable to tell the difference between the two, and would instead be con-



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fused into believing they are ornamentally the same. InEgyptian Goddess, Inc. v. Swisa,

Inc., 543 F.3d 665, 678 (Fed. Cir. 2008), the Federal Circuitheld that this ordinary ob-

server test set out in Gorham Co. v. White, 81 U.S. 511 (1871) is the sole test of design

patent infringement, and upheld a summary judgment of non-infringement.

Where the ornamental features of a design patent and the accused product are as a

whole plainly dissimilaras is necessarily true when the two share not even a single

ornamental (i.e., non-functional) featurefederal courts are empowered, and do not hesi-

tate, to grant summary judgment dismissing an infringement claim. See, e.g., Egyptian

Goddess, 543 F.3d at 678 (In some instances, the claimed design and the accused design

will be sufficiently distinct that it will be clear without more that the patentee has not met

its burden of proving the two designs would appear substantially the same to the ordi-

nary observer, as required by Gorham.). Numerous district courts have applied this rule

in dismissing design patent cases on summary judgment.1

Where, as is true here, the asserted patent and accused product do not share in

common even a single ornamental feature, the only confusion even possible necessarily

1 See, e.g., Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997, 1011-12(N.D. Ill. 2010);Minka Lighting, Inc. v. Maxim Lighting Intl, Inc., No. 06-cv-995, 2009

WL 691594, at *7 (N.D. Tex. Mar. 16, 2009); Sofpool LLC v. Kmart Corp., No. S-10-

3333, 2013 WL 2384331 (E.D. Cal. May 30, 2013);McIntire v. Sunrise Specialty Co.,

F. Supp. 2d, 2013 WL 1907609, at *6-7 (E.D. Cal. 2013);Fanimation, Inc. v. DansFan City, Inc., No. 08-cv-1071, 2010 WL 5285304 (S.D. Ind. Dec. 16, 2010); Great Neck

Saw Mfrs., Inc. v. Star Asia U.S.A., LLC, 727 F. Supp. 2d 1038 (W.D. Wash. 2010);

Rainworks Ltd. v. Mill-Rose Co., 622 F. Supp. 2d 650 (N.D. Ohio 2009); ArcteryxEquip. Inc. v. Westcomb Outerwear, Inc., No. 07-cv-59, 2008 WL 4838141, at *3 (D.

Utah Nov. 4, 2008);HR U.S. LLC v. Mizco Int'l, Inc., No. cv-07-2394, 2009 WL 890550,at *13 (E.D.N.Y. Mar. 31, 2009) (granting summary judgment, noting that a visualcomparison alone is sufficient to determine non-infringement under the ordinary observer

test); see also Schnadig Corp. v. Collezione Europa U.S.A., No. 01-c-1697, 2002 WL

31253750, at *14 (N.D. Ill. Oct. 4, 2002);Pacific Handy Cutter, Inc. v. Quick Point, Inc.,

No. cv-96-399, 1997 WL 607501, at *4-5 (C.D. Cal. July 9, 1997).



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Accused design Patented design

would result from an alleged similarity in unclaimed subject matteri.e., function. As a

matter of law, a plaintiff may not rely on confusion arising from unclaimed subject matter

to establish infringementand no amount of discovery directed to such features could

ever raise a triable factual dispute.

I. FUNCTIONAL SIMILARITIES CANNOT BE THE BASISFOR DESIGN PATENT INFRINGEMENT.

It is black letter law that the scope of a design patent extends only to the cosmetic

and ornamental features of an article of manufacture, and that functional similarities are

outside the scope of the patents protection. The Federal Circuit has applied this prin-

ciple repeatedly to reject over-reaching allegations of patent infringement based solely on

a similar functional configuration between the asserted patent and accused product.

InRichardson, 597 F.3d 1288, for example, the patentee asserted that the defen-

dants multi-component carpentry tool, shown below on the leftwhich included ham-

mer, claw, wrench, and crow bar elementsinfringed the scope of his design patent

shown, below on the right. Id.at 1294.

InRichardson, the patentee argued that the generally similar configuration of the accusedproduct compared to the patented design was sufficient to establish infringement. Af-

firming a judgment of non-infringement, the Federal Circuit flatly rejected that argument.

Id. at 1295-96. Instead, the court applied black letter law to exclude the functional ar-



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rangement of parts on which the patentees infringement argument was based from the

scope of the design patent:

By definition, the patented design is for a multi-functiontool that has several functional components, and we havemade clear that a design patent, unlike a utility patent, lim-

its protection to the ornamental design of the article. If the

patented design is primarily functional rather than orna-mental, the patent is invalid. However, when the design al-

so contains ornamental aspects, it is entitled to a design pa-

tent whose scope is limited to those aspects alone and doesnot extend to any functional elements of the claimed article.

Id. at 1293-94 (citations omitted). Applying this rule, the Federal Circuit characterized

the patentees infringement allegation as an argument for a claim scope that includes the

utilitarian elements of his multi-function tool, which would indeed be improper to al-

low [him] to do. Id. at 1294. The Federal Circuit then assessed infringement by focus-

ing exclusively on the ornamental features of the two designs ignoring the functional

elements of the tools. Id. at 1296. In doing so, the court easily concluded that the two

designs are indeed different. Id. The obviously blunt and flat edges of the patented de-

sign, compared to the rounder and streamlined appearance of the accused product, was all

that was required to affirm the district courts finding that the accused product did not

infringe. Id.

In OddzOn Products, 122 F.3d 1396, the Federal Circuit applied the rule to reject

a similar over-reaching infringement allegation at the summary judgment stage. In Oddz-

On, just as in Richardson, the patentee argued that a rocket-like football, with an ex-

tended tail and fins intended to stabilize it during flight, infringed his design patent based

solely on the fact that both designs entailed this functional configuration. Id. at 1400.



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Id. 1399-1400 (accused product on the left, patented design on the right). Concluding

that this rocket-like appearance was dictated by function and not by ornamentation, the

Federal Circuit therefore reject[ed] OddzOns contention that overall similarity of the

rocket-like appearance is sufficient to show infringement. Id. at 1405. Because the

two football designs clearly differed in their ornamental appearancethe only thing rele-

vant to design patent infringementthe Federal Circuit affirmed the district courts

summary judgment ruling of no infringement. Id.at 1405-07.

InLee v. Dayton-Hudson Corp., 838 F.2d 1186 (Fed. Cir. 1988), the patentee ar-

gued that his design patent directed to a massager with an elongated handle and two balls

at one end covered anydevice with a similar configuration regardless of any differences

in the surface details. Id. at 1188. The Federal Circuit again disagreed, noting that

[d]esign patents do not and cannot include claims to the structural or functional aspects

of the article. Id. In its analysis, the court relied on such surface details as the wooden

balls, their polished finish and appearance, the proportions, the carving on the handle, and

all other ornamental characteristics to find that the patented design and accused product

could not be confused, and that the patent therefore was not infringed. Id.

As these cases make clear, any functional similarity between the Voltstar patent

and the Amazon product (such as each having a simple plug shape with metal prongs on

one end and a USB connection on the other) is insufficient to showindeed, irrelevant

toinfringement of Voltstars design patent. Instead, what is relevant are the ornamental



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(i.e., non-functional) features claimed in Voltstars patent, and the Amazon wall plug ex-

hibits none of these.

II. THE AMAZON PRODUCT AND VOLTSTAR PATENTSHARE NO COMMON ORNAMENTAL FEATURES.

When the general functional configuration of the Voltstar patent and the Amazon

product is properly set aside, as in the Federal Circuit cases above, there is nothingon

which Voltstar could legitimately base its infringement allegation. As the facts above

show, not a single ornamental feature of the Voltstar patent is present in the accused

Amazon product.

In terms of their ornamental features, Amazons design is consistently smooth,

and Voltstars patent is beveled and multi-faceted. Amazons design is divided into a

plug body portion and a USB end portion. Voltstars design patent, in contrast, is divided

entirely differently, and is split in half down the middle along its entire length, with a dis-

cernible top half and bottom half thereby resembling a clamshell. Amazons design in-

cludes a rounded cap at the USB end, whereas Voltstars patent includes no such fea-

ture. At the USB end, Amazons design has a wide-mouthed design with a discernible lip

encircling the USB port. In contrast, Voltstars patent has a narrow circular projection at

the USB end with no lip at all. While the USB cap of the Amazon design is consistently

rounded, the USB end of Voltstars design patent includes ring-shaped facets on the nar-

row projection resembling the threaded end of a light bulb and also includes a distinctive

X patternboth of which are entirely absent from the Amazon design.

The following table summarizes the ornamental features that distinguish the

Voltstar patent and the Amazon product:



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Ornamental Feature Voltstar Patent Amazon Product

Overall beveled design

Facets defining body of charger

Groove laterally dividing plug body

Narrow circular USB projection

Ring-shaped facets in USB projection

X shapes pattern on USB end

Overall smooth non-beveled body

Unitary appearance in charger body

Distinct plug body / USB portions

Rounded USB cap

Wide-mouth USB port with lip

From the chart above, it will be clear that not a single one of the relevant ornamental fea-

tures of these two designs is present in the other.

In light of these clearly discernible ornamental differences, Voltstar has no legiti-

mate argument that Amazon infringes its patent. Any attempt to apply the Voltstar patent

here would necessarily stretch the scope of that patent to cover functionalnot ornamen-

talfeatures of the accused Amazon product. As shown above, the Federal Circuit has

repeatedly rejected that precise theory of infringement as contrary to the law.

III. NO FACT OR EXPERT DISCOVERY VOLTSTAR MIGHTSEEK CAN LEGITIMATELY PREVENT SUMMARY

JUDGMENT.

Any argument from Voltstar that fact or expert discovery are required before the

Court can entertain a summary judgment motion wouldbe futile. The relevant facts that

bear on infringementthe figures in the Voltstar patent and the appearance of the ac-



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cused Amazon productare beyond dispute. No fact or expert discovery can change the

fact that Amazons product does not exhibit even a single ornamental feature claimed in

Voltstars patent. Indeed, any discovery that Voltstar might pursue could do no more

than attempt to create confusion based on the functional similarity between the two,

which is off-limits and irrelevant to the infringement question before the Court as a mat-

ter of law.

The Federal Circuits holding in OddzOn demonstrates that proceeding with fact

discovery in this case would be error. In OddzOn, the patentee presented a number of

purported issues of fact in an effort to keep its design patent infringement case alive, in-

cluding evidence of actual confusion in the marketplace between the two products at is-

sue, such as surveys and customers returning one product to the manufacturer of the oth-

er. 122 F.3d at 1406-07. The Federal Circuit rejected this evidence as irrelevant because

it did nothing to show that the confusion resulted from any similarity in the ornamental

features of the two products, as opposed to confusion that resulted from their similar

function as rocket-shaped footballs. Id. The courts analysis on these issues in OddzOn

reveals that discovery into facts that can show only that two designs share a similar func-

tional configuration may not defeat a motion for summary judgment. Similarly, inPacif-

ic Handy Cutter, Inc. v. Quick Point, Inc., No. 96-399, 1997 WL 607501, at *4-5 (C.D.

Cal. July 9, 1997), the court noted that whatever the requested fact discovery uncovered

would not be sufficient to preclude a conclusion of no infringement as a matter of law

under the controlling ordinary observer test.

Expert opinion also cannot defeat Amazons motion. The general rule that expert

opinion alone cannot create a disputed issue of fact applies with equal force in design pa-

tent cases. The Federal Circuit has observed repeatedly that infringement is assessed

from the perspective of the ordinary observer, not the expert:[O]ur precedent in making



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the required comparison counsels against measuring the similarity of designs from the

viewpoint of experts in design. Contessa Food Prods., Inc. v. ConAgra, Inc., 282 F.3d

1370, 1381 (Fed. Cir. 2002). In other words, expert opinion cannot alter the obvious or-

namental differences, and therefore expert reports and discovery are not needed here.

On the facts of this case, any expert opinion Voltstar may offer could do no more

than establish that the Amazon product and Voltstar design patent are both configured as

compact USB wall plugs. That opinion does nothing to address what is relevant to design

patent infringement, namely, the ornamental (i.e., non-functional) features claimed in

Voltstars patent. In OddzOn, the Federal Circuit disregarded expert opinion that did no

more than point out similarities in the two designs at issue when that opinion did not dif-

ferentiate betweenfunctionalsimilarities (which are irrelevant) and ornamentalsimilari-

ties (which the court may consider without assistance from an expert). 122 F.3d at 1406.

No fact or expert discovery is needed before the Court can grant summary judg-

ment in this case. Summary judgment was the appropriate result by the district court and

was affirmed in Richardson,2OddzOn, and Leein which the Federal Circuit squarely

rejected an infringement theory identical to the infringement theory pled in this case. It is

clearly the only appropriate result where, as here, the asserted patent and accused product

share nothing in common in the way of ornamental (as opposed to functional) features.

Indeed, a number of district courts have granted summary judgment, sparing the parties

the need for expensive and protracted fact or expert discovery, on facts far less compel-

ling than those now before the Court.

2In Richardson, the parties briefed the issue of infringement in the context of sum-mary judgment and stipulated to the record presented in that context for purposes of the

courts infringement analysis. In addressing infringement, the court held a bench trial for

which the parties agreed to rely on only the briefing and evidence presented with their

cross-motions for summary judgment. Richardson v. Stanley Works, Inc., 610 F. Supp.2d 1046, 1048 (D. Ariz. 2009).



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In Sofpool LLC v. Kmart Corp., No. S-10-3333, 2013 WL 2384331 (E.D. Cal.

May 30, 2013), for example, the court granted summary judgment after comparing the

designs for two pools, finding just asingledifference in ornamental features sufficient to

sustain that result. In Sofpool, after comparing the two pool designs, the court noted

simply that one design was squat and the other taller and more elegant. Id. at *4-5.

On the facts of this case, there is not just one ornamental difference that distinguishes the

accused Amazon product from the patented Voltstar design, as in Sofpool, but there is a

complete absence of even a single ornamental feature claimed in the Voltstar patent in the

accused Amazon product.

Other district courts grant summary judgment notwithstanding the presence of

obvious ornamentalsimilarities, where there are sufficient distinctions in other ornamen-

tal features to allow an ordinary observer to tell them apart. In Competitive Edge, Inc. v.

Staples, Inc., 763 F. Supp. 2d 997 (N.D. Ill. 2010), for example, the district court com-

pared the designs of two calculators, and granted summary judgment even though the two

shared a very distinctive ornamental feature in commonbubble-shaped calculator keys,

as shown in the figures below. Id. at 1011-12.

In Competitive Edge, notwithstanding this very distinctive ornamental similarity, sum-

mary judgment was appropriate in light of a number of other clear ornamental differences



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(such as the scalloped silhouette of the patented design on the left compared to the

smooth edges and gentle hourglass shape of the accused product). Id.at 1011. In this

case, beyond their generally similar functional configuration, the Voltstar patent and

Amazon wall plug do not share anything in common in the way of ornamental features.

Summary judgment in this case is thus even more compelling than in Competitive Edge.

Similarly, in Minka Lighting, Inc. v. Maxim Lighting Intl, Inc., No. 06-cv-995,

2009 WL 691594 (N.D. Tex. Mar. 16, 2009), the district court granted summary judg-

ment of no infringement in a case involving decorative support arms for a light fixture,

both of which shared a similar ornamental scroll shape as shown below. Id. at *6.

InMinka, notwithstanding this overall similar ornamental scroll shape, the court granted

summary judgment because, as will also be apparent to this Court, the similarities most-

ly end there. Id. at *7. Again, in this case, the Voltstar patent and accused Amazon

product do not share even a single ornamental feature in common, and summary judg-

ment of no infringement is therefore the only appropriate result.

The cases above demonstrate that in design patent cases district courts do not he-

sitate to grant summary judgment and thereby spare the parties and the court the time,

effort, and expense associated with unnecessary litigation where the asserted patent and

accused product are readily distinguishable. Indeed, no court that Amazon has been able

to identify has denied summary judgment and required a defendant to incur the signifi-



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CERTIFICATE OF SERVICE

I hereby certify that a true and correct copy of Amazons Memorandum in Sup-

port of Motion for Summary Judgment was served on the 13th day of December, 2013

upon the following via ECF:

Jerold I. Schneider

Schneider Rothman Intellectual PropertyLaw Group PLLC

P.O. Box 812182

Boca Raton, FL 33481-2182

Keith A. VogtTakiguchi & Vogt1415 W. 22nd Street, Tower Floor

Oak Brook, Illinois 60523-2021

/s/ Kristopher R. Kiel .

Kristopher R. [email protected]

JENNER & BLOCK LLP

353 North Clark StreetChicago, Illinois 60654

(312) 222-9350


AMAZON.COM, INC.



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IN THE UNITED STATES DISTRICT COURTFOR THE NORTHERN DISTRICT OF ILLINOIS,

EASTERN DIVISION



Plaintiff,

-vs.-

AMAZON.COM, INC.,

Defendant.

))

)

))

)

)

))

)

)

)

The Honorable

John Z. Lee

No. 1:13-cv-05570

DECLARATION OF NICOLE C. BERG

I, Nicole C. Berg, an attorney duly licensed to practice before all courts of the

State of Illinois, declare under penalty of perjury that:

1. I am an associate at Jenner & Block LLP, and one of the attorneys ofrecord for defendant Amazon.com, Inc. (Amazon). I submit this declaration in support

of the accompanying memorandum of law in support of Amazons motion for summary

judgment against Voltstar Technologies, Inc., pursuant to Federal Rule of Civil Procedure

56(a) in the above-captioned matter.

2. Attached to this declaration are true and correct copies of the followingdocuments cited in the accompanying memorandum of law.

Exhibit A US Design Patent D587,192 (Voltstar patent).

Exhibit B US Design Patent D611,409 (Amazon patent).



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I declare under penalty of perjury under the laws of the State of Illinois that the

foregoing is true and correct.

Executed on December 13, 2013, at Chicago, Illinois.

/s/Nicole C. Berg .

Nicole C. Berg


Voltstar v. Amazon - MSJ Brief (proposed)

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Transcript of Voltstar v. Amazon - MSJ Brief (proposed)