No.

17-1314

~r~iteb ~ta~te~ court of ~~ea~Y~

for t~je
,~e~era~Y circuit

ADVANTEK MARKETING,INC.,

Plaint~Appellant,
v.

SHANGHAI WALK-LONG TOOLS CO., LTD.; NEOCRAFT TOOLS

CO.,LTD.; ORION FACTORY DIRECT; and DOES 1-10 inclusive,
Defendants-Appellees.

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE

CENTRAL DISTRICT OF CALIFORNIA IN 16-CV-3061,
HON. MANUEL L. REAL

CORRECTED OPENING BRIEF OFPLAINTIFF-APPELLANT

Keith J. Wesley Jaye G. Heybl

BROWNE GEORGE ROSS LLP
2121 Avenue ofthe Stars, Suite 2800
Los Angeles, California 90067
Telephone: (310)274-7100
Facsimile: (310)275-5697
Brian M.Fitzgerald
KOPPEL PATRICK HEYBL &
PHILPOTT
2815 Townsgate Road, Suite 215
Westlake Village, California 91361
Telephone: (805)373-0060
Facsimile: (805)373-0051

Attorneysfog Plainti,ff-Appellant Advantek Marketing, Inc.

(For Continuation ofAppearances See Inside Cover)

749935.1
 K. Andrew Kent
RINCON VENTURE LAW GROUP
2815 Townsgate Road, Suite 215
Westlake Village, California 91361
Telephone: (805)557-0580
Facsimile: (805)373-0051

Attorneysfor Plaintiff-Appellant Advantek Marketing, Inc.

749935.1
 CERTIFICATE OF INTEREST

Counsel for Plaintiff-Appellant certifies the following:

1. The full naive of every party or amicus represented by me is:

Advantek Marketing, Inc.

2. The naive of the real party in interest (if the party named in the

caption is not the real party in interest) represented by me is: N/A.

3. All parent corporations and any publicly held companies that own 10

percent or more ofthe stock ofthe party or amicus curiae represented by me are:

None.

4. The names of all law firms and the partners or associates that

appeared for the party or amicus now represented by me in the trial court or are

expected to appear in this court are:

//

//

//

//

//

//

//

~a~~~~ ~ i
Keith J. Wesley,Browne George Ross LLP;

Jaye G. Heybl and Brian M.Fitzgerald, Koppel Patrick Heybl & Philpott;

K. Andrew Kent, Rincon Venture Law Group

Dated: February 6, 2017 Respectfully submitted,

BROWNE GEORGE ROSS LLP

Keith J. Wesley

KOPPEL PATRICK HEYBL & PHILPOTT

Jaye G. Heybl
Brian M.Fitzgerald
RINCON VENTURE LAW GROUP
K. Andrew Kent

By: s/ Keith J. Wesley

Keith J. Wesley
Attorneys for Plaintiff-Appellant
Advantek Marketing,Inc.

749935.1 11
 TABLE OF CONTENTS

Page

CERTIFICATE OF INTEREST .............................................................................. i

TABLE OF CONTENTS....................................................................................... iii
TABLE OF AUTHORITIES ...................................................................................v
STATEMENT OF RELATED CASES ............................................................... viii
I. JURISDICTIONAL STATEMENT ..............................................................1
II. STATEMENT OF THE ISSUES ..................................................................1
III. INTRODUCTORY STATEMENT ...............................................................2
IV. STATEMENT OF THE CASE .....................................................................7
A. Relevant Facts .....................................................................................7
1. Advantek Has a Design Patent for the Pet Gazebo,
Which is One of Advantek's Most Popular Products...............?
2. An Advantek Executive and Former Manufacturer
Conspire to Create and Sell a Knockoff of the Pet
Gazebo.......................................................................................9
B. Procedural History...............................................................................9
1. Advantek Sues Defendants.......................................................9
2. The District Court Grants Defendants' Motion for
Judgment on the Pleadings......................................................10
3. The District Court Enters Final Judgment in Favor of
Defendants...............................................................................10
V. SUMMARY OF THE ARGUMENT ..........................................................11
VI. ARGUMENT...............................................................................................13
A. Standard Of Review ..........................................................................13
B. The District Court Erred in Granting Judgment on the
Pleadings on the Basis of Prosecution History Estoppel ..................13
1. The Doctrine of Prosecution History Estoppel .......................13
2. The District Court Misconstrued the Scope and Nature
of Advantek's Claim, Which is Legally Cognizable..............14

749935.1 111
 TABLE OF CONTENTS
(Cont'd)

Page

i. The right to obtain design patent protection for a

component part of a whole design is well
established.....................................................................15
ii. Advantek is accusing the skeletal structure of
Defendants' Pet Companion of infringement...............16
iii. A component part can infringe if it is visible
during the normal life cycle ofthe product..................20
iv. Affirming the district court's ruling would reward
a deliberate infringer, which is not the purpose of
an equitable defense......................................................24
C. The District Court Ignored Established Procedural Standards
for Ruling on a Rule 12(c) Motion, Which Required Denial of
the Motion.........................................................................................26
D. The District Court Abused its Discretion in Denying Leave to
Amend...............................................................................................29
VII. CONCLUSION AND RELIEF SOUGHT ..................................................31
ADDENDUM ........................................................................................................33
PROOF OF SERVICE ...........................................................................................34
CERTIFICATE OF COMPLIANCE .....................................................................35

749935.1 1V
 TABLE OF AUTHORITIES

Pages)
EDERAL CASES

Amgen Inc. v. Sandoz Inc.,

794 F.3d 1347(Fed. Cir. 2015)................................................................. 13, 26

Chang v. Chen,
80 F.3d 1293 (9th Cir. 1996)........................................................................... 30

Chavez v. United States,

683 F.3d 1102(9th Cir. 2012)......................................................................... 26

Clifton v. Houghton Mifflin Ha~cou~t Pub. Co.,

152 F. Supp. 3d 1221, 1226(N.D. Cal. 2015)................................................. 27

Contessa Food Pods., Inc. v. Conag~a, Inc.,

282 F.3d 1370(Fed. Cir. 2002)................................................................. 21, 22

Eminence Capital, LLC v. Aspeon, Inc.,

316 F.3d 1048 (9th Cir. 2003)......................................................................... 30

Gen. Conference Corp. ofSeventh-Day Adventists v. Seventh-Day

Adventist Congregational Chu~cl~,
887 F.2d 228 (9th Cir. 1989)........................................................................... 26

Gomez v. Toledo,
446 U.S. 635 (1980)......................................................................................... 27

Gorham Co. v. White,

81 U.S. 511 (1871)........................................................................................... 15

Holmes Gip., Inc. v. I~o~nado Air Circulation Sys., Inc.,

535 U.S. 826(2002)......................................................................................... 16

In re Webb,
916 F.2d 1553 (Fed. Cir. 1990)....................................................................... 21

In ~e Zahn,
617 F.2d 261 (C.C.P.A. 1980)......................................................................... 15

749935. I V
 TABLE OF AUTHORITIES
Cont'd)
Pages)

Intl Seaway Trading Corp. v. Walgr~eens Corp.,

599 F. Supp. 2d. 1307(S.D. Fla. 2009)........................................................... 22

International Seaway Trading Corp. v. Walgreens Corp.,

589 F.3d 1233(Fed. Cir. 2009)................................................................. 21, 22

Keystone Retaining Wall Sys., Inc. v. Westrock, Inc.,

997 F.2d 1444(Fed. Cir. 1993)....................................................................... 22

McGlinchy v. Shell Chemical Co.,

845 F.2d 802(9th Cir. 1988)........................................................................... 26

Merck & Co. v. Hi-Tech Pharmacal Co.,

482 F.3d 1317(Fed. Cir. 2007)....................................................................... 13

Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC,

739 F.3d 694(Fed. Cir. 2014)............................................................. 13, 14,20

Peterson v. California,
604 F.3d 1166(9th Cir. 2010)......................................................................... 13

Pit River Tribe v. Bureau ofLand Mgmt.,

793 F.3d 1147(9th Cir. 2015)......................................................................... 26

Qantas Airways Ltd. v. United States,

62 F.3d 385 (Fed. Cir. 1995)........................................................................... 13

Samsung Elecs. Co. v. Apple Inc.,

137 S. Ct. 429(2016)................................................................................. 15, 16

Sharkey v. O'Neal,
778 F.3d 767(9th Cir. 2015)........................................................................... 30

Turner v. Cook,
362 F.3d 1219(9th Cir. 2004)......................................................................... 13

Xechem, Inc. v. Bristol-Myers Squibb Co.,

372 F.3d 899(7th Cir. 2004)........................................................................... 27

749935.1 VI
 TABLE OF AUTHORITIES
Cont'd)
Pages)

FEDERAL STATUTES

28 U.S.C. 1295(a)..................................................................................................1

28 U.S.C. 1338(a)..................................................................................................1

35 U.S.C. 171 ..................................................................................................... 15

35 U.S.C. 271(a-c)................................................................................... 5, 11, 17

35 U.S.C. 289............................................................................................... 15, 16

RULES

Fed. R. Civ. P. 8(c)(1)........................................................................................... 14

Fed. R. Civ. P. 12 .................................................................................................. 27

Fed. R Civ. P. 12(b)(6)................................................................................... 26, 27

Fed. R. Civ. P. 12(c).................................................................................. 26, 28, 31

Fed. R. Civ. P. 15(a)(2)......................................................................................... 30

OTHER AUTHORITIES

U.S. Patent No. D715,006.............................................................................. passim

749935.I V 11
 STATEMENT OF RELATED CASES

Counsel are unaware of any related cases within the meaning of Federal

Circuit Rule 47.5.

749935.1 V 111
I. JURISDICTIONAL STATEMENT

The district court had subject matter jurisdiction of this action under 28

U.S.C. 1338(a) because plaintiff Advantek Marketing, Inc. ("Advantek")

brought a claim for design patent infringement. The district court entered its final

judgment with respect to Advantek's patent infringement claim on December 2,

2016. (Appx001-003) Advantek timely filed a notice of appeal on December 5,

2016. This Court has appellate jurisdiction under 28 U.S.C. 1295(a).

II. STATEMENT OF THE ISSUES

1. Did the district court err in granting Defendants' motion for

judgment on the pleadings on Plaintiffs design patent infringement claim based

on the doctrine of prosecution history estoppel?

2. Alternatively, did the district court err in, without explanation or

analysis, denying leave to amend the design patent infringement claim for the first

time?

//

//

//

//

//

749935,1 1
III. INTRODUCTORY STATEMENT

Advantek developed and sells in stores nationwide an innovative animal

housing unit called the "Pet Gazebo." An example of the Pet Gazebo is depicted

immediately below.

The Pet Gazebo is Advantek's flagship product. It was launched before a

record-breaking crowd at a national trade show where it garnered a best new

product award. It had a unique, novel design, and customers loved its portability.

It was easy to assemble, disassemble, and transport. It provided a great solution

for pet owners who wanted to take their pets with them, whether to a friend's

house, on vacation, or simply out to the backyard.

~a9~~s i 2
 To protect its unique Pet Gazebo design from copycats, Advantek applied

for a design patent. During prosecution, as explained in more detail below,

Advantek elected to patent the skeletal structure of the gazebo, omitting the vinyl

cover, seen above, from the scope of the patent. The patent issued; thus Advantek

has patent rights in the design depicted immediately below.

749935.1 3
 After Advantek obtained its design patent, an Advantek executive

conspired with a former Advantek manufacturer to, among other things, create

and sell a knockoff version of the Pet Gazebo. The knockoff version, called the

"Pet Companion," is the subject ofthis infringement action and is depicted below.

Upon discovering the knockoff being offered for sale in the United States,

Advantek sued its former manufacturer and affiliated entities ("Defendants") in

the Central District of California. Defendants filed a motion for judgment on the

pleadings, asserting that the doctrine of "prosecution history estoppel" precluded

Advantek's infringement claim as a matter of law. Specifically, Defendants

argued: (a) Advantek had surrendered a claim to the design of its gazebo with a

cover;(b) Defendants were selling a gazebo with a cover; thus (c) Advantek was

~~99~> , 4
estopped from asserting an infringement claim against Defendants' product

because it includes a cover.

The district court, the Honorable Manuel L. Real presiding, adopted

Defendants' position and granted judgment on the pleadings without leave to

amend. In so doing, the district court erred as a matter of law for three primary

reasons.

First, it appears that the district court erroneously believed that Advantek

was accusing Defendants of infringement for the entirety of Defendants' Pet

Companion product with a cover. Rather, Advantek had always accused

Defendants of infringement for the article of manufacture constituting the skeletal

structure of Defendants' Pet Companion product. Advantek made this clear in its

operative complaint.l Advantek reiterated its position in response to Defendants'

motion for judgment on the pleadings. Nothing in the governing law prevents

' "Defendants have infringed and continue to infringe the claimed design of
the `006 patent under 35 U.S.C. 271(a-c), including but not limited to making,
using, offering for sale, and/or selling the patented design without the authority
of Advantek, and/or by contributing to and/or inducing such infringement of the
`006 patent." (Appx025)(emphasis added)

2 "Advantek obtained a patent for the entirety of the design of a component

part of its Pet Gazebo product. If any component part embodies a substantially
similar design, and that component part is visible at any point in the lifetime of
the product, Advantek may accuse it (regardless of other embodiments of the
whole ofthe product or components such as a cover)." (Appx238)

749935.1 S
Advantek from claiming that a component of Defendants' product infringes

Advantek's design patent in its component part. Indeed, as discussed below, this

Court has repeatedly confirmed that the infringement analysis extends throughout

the life cycle of a product and in the various contexts in which the product could

be viewed, and the U.S. Supreme Court recently reiterated that design patent

infringement may be based on copying of a patented component part. The district

court thus committed reversible error in disregarding Advantek's legally

cognizable claim against a product component i.e., the skeletal structure of

Defendants' Pet Companion.

Second, the district court erred by assuming that factual representations

made by Defendants about them Pet Companion product were indisputably true.

As previewed above and explained in more detail below, if the skeletal structure

of Defendants' Pet Companion product is visible at any point during normal

usage of the product, then the skeletal structure of Defendants' product could

infringe upon Advantek's design patent. Making that determination of course

involves evidentiary questions that cannot be decided on the basis of the

pleadings e.g., does the consumer first assemble the skeletal structure and then

put the cover on it (as would seem logical)T, does the consumer at any later point

disassemble the structure, taking the cover off?; does the consumer ever leave off

the cover to, for example, provide more sun and air to her pet?; does the

749935.1 6
consumer move the Pet Companion from one location to another, or travel with it

(similar to the Pet Gazebo it allegedly sought to copy)?; does the consumer clean

the skeletal structure, clean the cover, or place bowls inside?; is the design of the

skeletal structure ever apparent in any ofthese instances? The district court could

not properly grant judgment to Defendants before permitting discovery and

receiving evidence on these material issues.

Third, the district court denied Advantek an opportunity to amend its

complaint to further clarify the scope of the "accused product." The district

court's failure to explain why it denied leave to amend, in itself, constitutes

reversible error. Furthermore, had Advantek been given just one chance to

clarify or expand upon its claim in an amended pleading in view of Defendants'

estoppel defense, it is more likely the district court would have grasped fully the

nature of Advantek's claims, thus avoiding this appeal. In short, the failure to

afford Advantek an opportunity to amend is an alternative ground for reversal.

IV. STATEMENT OF THE CASE

A. Relevant Facts

1. Advantek Has a Design Patent for the Pet Gazebo, Which

is One of Advantek's Most Popular Products.

Based in Moorpark, California, Advantek is aworld-recognized leader in

animal-containment solutions ranging from humane catch-and-release animal

749935.1
traps to pet and farm housing products. (Appx021, Appx023) Advantek's CEO,

Joe Pomerantz, invented a novel design for an animal housing product designed

to look like agazebo i.e., the "Pet Gazebo" depicted on page 1 above which

issued as U.S. Patent No. D715,006 ("the `006 patent") on October 7, 2014.

(AppX014-018, Appx024)

During prosecution of the `006 patent, the Examiner issued a restriction

requirement requiring Advantek to elect between (a) a design for the component

skeletal structure as a patentably distinct segregable part of the gazebo, and (b)

the gazebo design as a whole with the cover portion affixed to it. (Appx 181) In

this restriction requirement, the Examiner stated that "under the law a design

patent covers only the invention disclosed as an entirety, and does not extend to

patentably distinct segregable parts; the only way to protect such segregable parts

is to apply for separate patents." (Appxl8l) The Examiner continued: "It is

further noted that patentably distinct combination/subcoinbination subject matter

must be supported by separate claims, whereas only a single claim is permissible

in a design patent application." (Appx181) Advantek chose to proceed with the

design of the patentably distinct segregable part that is the skeletal structure for

the gazebo design (Appx155), and obtained a patent on that component part on

October 7, 2014. (Appx014)

749935.1 O
 After the `006 patent issued, Mr. Pomerantz assigned the rights to

Advantek, which continues to own the entire right, title, and interest in the `006

patent. (Appx024) The Pet Gazebo has become one of Advantek's best-selling

and flagship products. (Appx023)

2. An Advantek Executive and Former Manufacturer

Conspire to Create and Sell a Knockoff of the Pet Gazebo.

In approximately July 2015, along-time Advantek executive named Miles

McMahill conspired with a former Advantek manufacturer and its affiliates

(Defendants herein) to use Advantek's confidential, proprietary information to

start a competing business. (Appx028-029) McMahill used his unique access to

Advantek's email server, phone and computer systems, and laptop to provide to

the China-based Defendants confidential, internal marketing and pricing strategy

lists. (Appx028-029) Defendants, with McMahill's assistance, thus set up a

competing animal-containment business, including manufacturing and selling a

knockoff version of Advantek's Pet Gazebo, the Pet Companion.

B. Procedural History

1. Advantek Sues Defendants.

Advantek sued Defendants for design patent infringement in the Central

District of California on May 4, 2016. The case was assigned to the Honorable

Manuel L. Real.

749935.1 9
 Before Defendants responded to the complaint, Advantek filed a first

amended complaint on June 24, 2016, adding claims for breach of contract and

aiding and abetting breach of fiduciary duty. (Appx019-040)

2. The District Court Grants Defendants' Motion for

Judgment on the Pleadings.

On August 31, 2016, Defendants filed a motion for judgment on the

pleadings on the basis of the doctrine of "prosecution history estoppel."

(Appx041-065) Also on August 31, 2016, Defendants filed a Request for Judicial

Notice of Prosecution History of the `006 Patent. (Appx066-220)

On September 26, 2016, Advantek filed its Opposition. (Appx221-241)

On October 3, 2016, Defendants filed their Reply. (Appx242-256)

On November 3, 2016, the district court granted Defendants' motion

without leave to amend. (Appx004-007) The district court did not explain why

leave to amend was not given. (Appx004-007) The district court did not hold a

hearing on the motion; it issued a ruling after taking the matter under submission.

3. The District Court Enters Final Judgment in Favor of

Defendants.

On December 2, 2016, after dismissal of the remaining claims and pursuant

to stipulation by the parties, the district court entered judgment against Advantek

and for Defendants. (Appx001-003)

749935.1 1
V. SUMMARY OF THE ARGUMENT

The district court committed reversible error in granting Defendants'

motion for judgment on the pleadings on the basis of the doctrine of prosecution

history estoppel.

First, the district court erred in holding that "the allegedly infringing

product is exactly the same as the design forfeited by Plaintiffs." (Appx007) In

its operative Complaint, Advantek accused the skeletal structure of Defendants'

Pet Companion product of infringement.3 Advantek reiterated its position in

response to Defendants' motion for judgment on the pleadings.4 Nothing in the

governing law prevents Advantek from claiming that a component part of

Defendants' product infringes its design patent. Indeed, as discussed below, this

Court has repeatedly confirmed that the infringement analysis extends throughout

the life cycle of a product and in the various contexts in which the product could

3 "Defendants have infringed and continue to infringe the claimed design of

the `006 patent under 35 U.S.C. 271(a-c), including but not limited to making,
using, offering for sale, and/or selling the patented design without the authority
of Advantek, andlor by contributing to and/or inducing such infringement of the
`006 patent." (Appx025)(emphasis added)

4 "Advantek obtained a patent for the entirety of the design of a component

part of its Pet Gazebo product. If any component part embodies a substantially
similar design, and that component part is visible at any point in the lifetime of
the product, Advantek may accuse it (regardless of other embodiments of the
whole ofthe product or components such as a cover)." (Appx238)

749935.1 11
be viewed, and the U.S. Supreme Court recently reiterated that design patent

infringement may be based on copying of a patented component part. The district

court thus committed reversible error in disregarding a legally cognizable claim

based on the look of the skeletal structure of Defendants' Pet Companion gazebo,

which is visible to consumers during the normal use and lifetime of the product.

Second, the district court erred by assuming that factual representations

made by Defendants about them Pet Companion product were indisputably true.

As previewed above and explained in snore detail below, if the skeletal structure

of Defendants' Pet Companion product is visible at any point during normal

usage of the product, then the skeletal structure of Defendants' product could

infringe upon Plaintiff's design patent. The district court could not properly grant

judgment to Defendants before permitting discovery and hearing evidence on this

key issue.

Third, the district court denied Advantek an opportunity to amend its

complaint. The district court's failure to explain why it denied leave to amend, in

itself, constitutes reversible error. Furthermore, had Advantek been given at least

one chance to clarify or expand upon its claim in an amended pleading, it is more

likely the district court would have grasped fully the nature of Advantek's claims,

thus avoiding this appeal.

749931. I 12
VI. ARGUMENT

A. Standard Of Review

This Court applies the procedural law of the regional circuit, here the Ninth

Circuit, when reviewing a district court's grant of a motion for judgment on the

pleadings. Amgen Inc. v. Sandoz Inc., 794 Fad 1347, 1354 (Fed. Cir. 2015)

(citing Merck & Co. v. Hi-Tech Pha~inacal Co., 482 F.3d 1317, 1320 (Fed. Cir.

2007)). The Ninth Circuit reviews the grant of judgment on the pleadings de

novo, id. (citing Peterson v. California, 604 F.3d 1166, 1169(9th Cir. 2010)), and

"accept[s] all material allegations in the complaint as true and construes] them in

the light most favorable to [the non-moving party]," id. (citing Turner v. Cook,

362 F.3d 1219, 1225 (9th Cir. 2004) (third alteration in original)). Issues of

statutory interpretation are also reviewed de novo. Id. (citing Qantas Airways

Ltd. v. United States, 62 F.3d 385, 387(Fed. Cir. 1995))

B. The District Court Erred in Granting Judgment on the

Pleadings on the Basis of Prosecution History Estoppel

1. The Doctrine of Prosecution History Estoppel

In Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d

694, 702 (Fed. Cir. 2014), this Court clarified that the doctrine of "prosecution

history estoppel" applies to design patent infringement claims. This equitable

affirmative defense involves three questions: "(1) whether there was a surrender;

749935.1 13
(2) whether it was for reasons of patentability; and (3) whether the accused design

is within the scope of the surrender." Id. The answer to all three of these

questions must be "yes" for prosecution history estoppel to apply.' For purposes

of this appeal, Advantek focuses solely on the third element i.e., "whether the

accused design is within the scope of the surrender."

Estoppel, including prosecution history estoppel, is an affirmative defense,

each element of which Defendants have the burden of pleading and proving. See

Fed. R. Civ. P. 8(c)(1). Indeed, the district court recognized that Defendants bear

this burden, stating "Defendant[s] must prove that the accused product is within

the scope of surrender." (Appx006)(emphasis added)

2. The District Court Misconstrued the Scope and Nature of

Advantek's Claim, Which is Legally Cognizable.

In holding that the "accused design is within the scope of the surrender,"

the district court "determine[d] that the allegedly infringing product is exactly the

same as the design forfeited by Plaintiffs [sic]." (Appx007) In so holding, the

district court committed reversible error because Advantek never asserted its

infringement claim against the design of Defendants' covered Pet Companion

In Pacific Coast, this Court found that only one of the three elements of the
test was not met (the accused design was not with the scope of surrender), but
because all three elements must be established, it held that prosecution history
estoppel principles did not bar Pacific Coast's infringement claim. See Pac.
Coast Marine Windshields Ltd., 739 F.3d at 702-05.

~499~s, 14
product. Rather, Advantek, which properly has a patent in the skeletal structure

of its Pet Gazebo, accused the skeletal structure of Defendants' product, which is

a legally cognizable claim.

i. The right to obtain design patent protection for a

component part of a whole design is well established.

The right to obtain design patent protection for a component part of a

whole design is well established and long-standing. This principle was

recognized as long ago as 1871, where the U.S. Supreme Court in Gorham Co. v.

WLiite, 81 U.S. Sll (1871), noted that the design patent in question was "a new

design for the handles of tablespoons and forks, which [were] under the name of

the `cottage pattern"' (emphasis added). It continues as a cornerstone of design

patent law today. Last year, the U.S. Supreme Court reiterated: "[35 U.S.C.]

Section 171 authorizes patents on ornamental designs for articles of manufacture.

While the design must be embodied in some article, the statute is not limited to

designs for complete articles, or `discrete' articles, and certainly not to articles

separately sold ...." See Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429, 435

(2016)(citingln ~e Zahn,617 F.2d 261, 268 (C.C.P.A. 1980))(emphasis added).

In Samsung Electronics, the U.S. Supreme Court considered this Court's

reading of 35 U.S.C. 289, which held that components of infringing

smartphones could not be the relevant article of manufacture for consideration of

749935.1 15
damages, because consumers could not purchase those components separately

from the smartphones as a whole. Id. at 436. In reversing this Court, the

Supreme Court held that "the term `article of manufacture' is broad enough to

embrace both a product sold to a consumer and a component of that product,

whether sold separately o~ not. Thus, reading `article of manufacture' in 289 to

cover only an end product sold to a consumer gives too narrow a meaning to the

phrase." Id. (emphasis added).

There is no question whatsoever that, like thousands of manufacturers who

invest in product design, Advantek can protect the look of a component part and

stop the sale of a competing product that incorporates the same look for its

component part.

ii. Advantek is accusing the skeletal structure of

Defendants' Pet Companion of infringement.

As the master of its complaint,6 Advantek exercised its option to claim

infringement of the skeletal st~uctu~e of Defendants' Pet Companion product.

Prosecution history estoppel therefore should only apply to Advantek's claim if

the skeletal structure was within the scope of a surrender during the prosecution

6 See Holmes Grp., Inc. v. Vo~nado Air Circulation Sys., Inc., 535 U.S. 826,
831 (2002)("plaintiff is `the master of the complaint"').
history of the `006 patent. That is not the case here, and certainly not a fact the

district court could assume against Advantek in a pleading-stage challenge.

Advantek alleged: "Defendants have infringed and continue to infringe the

claimed design of the `006 patent under 35 U.S.C. 271(a-c), including but not

limited to snaking, using, offering for sale, and/or selling the patented design

without the authority of Advantek, and/or by contributing to and/or inducing such

infringement of the `006 patent." (Appx025)(emphasis added) In other words,

Advantek alleged that Defendants were using Advantek's patented design i.e.,

the skeletal structure of the Pet Gazebo depicted in the Complaint without

permission.

Advantek reiterated and further explained its stance in opposition to

Defendants' motion for judgment on the pleadings. Advantek explained:

"[B]y choosing to obtain a patent for the entirety of the design of the

Gazebo without a cover, Advantek obtained the right to prevent

It is true that Advantek also inserted into the complaint a picture of

Defendants' Pet Companion as seen with the tarp-like cover affixed to it. That
picture, however,, was in no way intended to limit the scope of the claim. Indeed,
there is a very simple reason for Advantek's incorporation of the picture of
Defendants' product with a cover: It was the only picture of Defendants' product
that Advantek possessed at the time. As explained below, Advantek subsequently
received, and now possesses, a picture of Defendants' gazebo without a cover,
which could and would have been included in an amended complaint, had
Advantek been granted leave to amend.

749935.1 17
 infringement of every infringing pet kennel product, whether or not

the accused additional parts, such as a cover, are combined with the

skeletal component. By choosing to obtain a patent fora separately-

patentable segregable part of the whole of its Pet Gazebo product

i.e., a skeletal component(without a cover or other parts) Advantek

broadened its ability to prevent infringement of that skeletal

component when used alone or in combination with other parts."

(Appx237)

"Advantek obtained a patent for the entirety of the design of a

component part of its Pet Gazebo product. If any component part

embodies a substantially similar design, and that component part is

visible at any point in the lifetime of the product, Advantek may

accuse it (regardless of other embodiments of the whole of the

product or components such as a cover)." (Appx238)

"[C]ommon sense tells us Defendants' customers purchase the

accused `Pet Companion' products unassembled. The cover is a part

in the package ghat can be added, or not, after the product's skeletal

structure is put together. The skeletal structure of defendants'

product is, as a matter of necessity, visible during assembly and

disassembly." (Appx239-240)
 "[N]othing precludes a buyer of defendants' products from using

them without a cover, once they are assembled, in which event the

entire structure and its design would be visible. And even when the

buyer elects to use the cover, the structure is still visible to anyone

who looks under the cover, such as when a pet owner puts a dog

water bowl or food bowl inside, and to anyone who cleans the

product." (Appx240)

The district court should have known that Advantek was accusing

Defendants' component skeletal structure, and not its cover, of infringement. The

district court's Order indicates the opposite. Had the district court recognized the

actual nature and scope of Advantek's claim, the district court would have

logically concluded that the accused product was not within the scope of a

surrender during the prosecution history of the `006 patent. Rather, the accused

product is solely within the scope of the elected design. Thus, prosecution

history estoppel is inapplicable.

g The prosecution history is clear that the skeletal structure of Advantek's

gazebo design was the elected embodiment, and therefore necessarily could not
have been surrendered. The Examiner recognized that the component skeletal
structure of the gazebo design inay properly be protected, individually and
separately from the look of the whole of the gazebo itself (Appx181) In the
restriction requirement, the Examiner stated that "under the law a design patent
covers only the invention disclosed as an entirety, and does not extend to
~a99~s.~ 19
 Pacific Coast Marine, the primary case relied upon by the district court in

determining prosecution history estoppel applied to Advantek's infringement

claim, is instructive. There, this Court found that prosecution history estoppel did

not apply on the grounds that the plaintiff did not accuse a design within the

scope of a surrendered embodiment. Pac. Coast Marine Windshields Ltd. v.

Malibu Boats, LLC., 739 F.3d 694, 705 (Fed. Cir. 2014)("[s]ince the patentee

here does not argue that the accused design was within the scope of the

surrendered two-hole embodiment, no presumption of prosecution history

estoppel could arise"). Here too, had the district court recognized that the

accused product is Defendants' component skeletal structure i.e., a design that

is not within the scope of a surrendered embodiment it would have concluded

that prosecution history estoppel simply does not apply.

iii. A component part can infringe if it is visible during

the normal life cycle of the product.

Nothing in the governing law prevents Advantek from claiming that a

component part of Defendants' product infringes a design patent for the look of

patentably distinct segregable parts; the only way to protect such segregable parts
is to apply fog separate patents." (Appx181)(emphasis added) The Examiner
continued: "[i]t is further noted that patentably distinct
combination/subcombination subject matter must be supported by separate
claims, whereas only a single claim is permissible in a design patent application."
(Appx181)

749935.1 G
the component itself. Indeed, the law ofthis Court confirms that the infringement

analysis extends throughout the life cycle of a product and in the various contexts

in which the product will be viewed.

The ordinary observer test for design patent infringement evaluates

whether features of an accused product are visible during the normal use of the

product at any point during its lifetime. Indeed, "for purposes of design patent

infringement, the `ordinary observer' analysis is not limited to those features

visible during only one phase or portion ofthe normal use lifetime ofan accused

product. Instead, the comparison must extend to all ornamental features visible

during normal use of the product, i.e., `beginning after completion of manufacture

or assembly and ending with the ultimate destruction, loss, or disappearance of

the article."' Contessa Food Prods., Inc. v. Conag~a, Inc., 282 F.3d 1370, 1380

(Fed. Cir. 2002) (emphasis added, abrogated on other grounds, quoting In re

Webb, 916 F.2d 1553, 1557-58 (Fed. Cir. 1990)).

This rule was reaffirmed in International Seaway Trading Corp. v.

Walg~eens Corp., 589 F.3d 1233 (Fed. Cir. 2009). The plaintiff in International

Seaway sued for infringement of a design patent for Crocs clogs. The district

court granted summary judgment to the defendant, after comparing the exterior

portions of the patents-in-suit, but not the insoles of the designs, to the prior art.

The district court reasoned that when a shoe is in normal use, the insole is hidden

749935.1 21
by the user's foot; therefore the district court considered only "the sole of the

shoes as those are visible during use." Id. at 1237 (citing Intl Seaway Trading

Corp. v. Walgreens Corp., 599 F. Supp. 2d. 1307, 1315 (S.D. Fla. 2009)).

This Court reversed, finding that the district court "misconstrued Contessa

as requiring that the normal use of a clog be limited to the tune when it is worn."

Intl Seaway, 589 F.3d at 1241. Rather,"normal use should not be limited to only

one phase or portion of the normal use lifetime of an accused product." Id. (citing

Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed.

Cir. 1993)). This Court explained:

The sale of a clog occurs after it has been manufactured and before it
is ultimately destroyed. Thus, the point of sale for a clog clearly
occurs during its normal use lifetime. At the point of sale, the insole
is visible to potential purchasers when the clog is displayed on a
shelf or rack and when the clog is picked up for examination.
Similarly, removing a clog from a wearer's foot also occurs after
manufacture and before destruction of the clog, so it also falls
squarely within the clog's normal use lifetime. The wearer may
remove the clog temporarily to stretch out his or her toes, leave the
clogs on the beach to go for a swim, or engage in countless other
activities that would leave the insole exposed.

Id. at 1241-42.

The skeletal structure of the Pet Companion is, as a matter of necessity,

visible during assembly and disassembly of the product, a process which occurs

often during the lifetime of the Pet Companion, as these types of pet kennels are

small and transportable and are often used as portable housing for pets during

749935.1 22
camping and travel.9 Furthermore., the skeletal support structure of the Pet

Companion product is visible to ordinary users, using the product for its normal

use as a pet kennel. For example, the skeletal structure is visible when a user

places a dog food or water bowl in the Pet Companion product, when the user

cleans the inside of the Pet Companion product, or when the user replaces the

cover portion, for example, for cleaning or due to damage. Furthermore, the tarp-

like cover portion of the Pet Companion is not permanently affixed to the

product, which is sold disassembled. (App~39-240) Also, there is nothing to

prevent a user from utilizing the Pet Companion without the cover portion at all,

for example, when the Pet Companion product is set up indoors on a hot day in

order to provide an animal kennel with increased ventilation. (App~,40) For at

least these reasons, the district court committed reversible error in disregarding

Advantek's claim against the skeletal structure of Defendants' Pet Companion

product.

9 Both Advantek with its Pet Gazebo product and Defendants with the Pet
Companion include statements regarding the portability of their respective
products in their marketing and/or packaging materials. Advantek notes that
Defendants in their 12(c) motion failed to allege any facts indicating the visibility
of their product's skeletal structure during ordinary use. Advantek submits that
Advantek is capable of further alleging the visibility of Defendants' skeletal
structure during normal use of the Pet Companion during its lifetime in an
amended pleading.

749935.] 23
 iv. Affirming the district court's ruling would reward a

deliberate infringer, which is not the purpose of an

equitable defense.

Affirming the district court's ruling would result in this Court applying an

equitable defense to create an inequitable outcome and bad precedent. Take, for

example, a product designer who creates an innovative new lamp base design.

The designer responsibly applies for design patent protection. During the

prosecution, the designer restricts the scope of the patent to the base only i.e.,

the distinctive part of the lamp and excludes the relatively common,

uninteresting lamp shade. The designer makes this election in order to broaden

the scope of his protection. He is concerned that a defendant could potentially

avoid infringement by copying exactly his innovative base design but adding a

wholly different lamp shade on top. By patenting the innovative base design

alone, the designer should be able to stop anyone from using his base, regardless

of the accompanying lamp shade.

A defendant copies the product designer's iconic lamp base exactly.

Anyone who looks at the defendant's lamp would immediately recognize it as

having the designer's iconic design. The designer sues the defendant to stop the

infringement. In response, the defendant asserts that it should not be held liable

because its lamp uses the coininon, uninteresting lamp shade in the designer's

74993.I 24
unelected embodiment. Thus, the defendant contends, it should be permitted to

continue to sell exact duplicates ofthe designer's iconic lamp base.

Of course, it would be unjust and illogical ,to rule in favor of the defendant

and against the designer. The designer had done everything right. He had. created

a unique design and necessarily protected it as a design patent. The defendant, on

the other hand, had done everything wrong. He had deliberately and shamelessly

copied a protected design. Nevertheless, under the district court's reasoning, the

defendant would be the victor thanks to the equitable defense of prosecution

history estoppel. There is nothing equitable about that outcome. Likewise, there

is nothing equitable about allowing Defendants to continue to infringe

Advantek's patented design simply because they put atarp-like piece of plastic

over it. By affirming the district court's opinion in this case, this Court would

turn the law protecting design patents on its head and give deliberate infringers a

powerful new weapon in their assault against design patents.

For these reasons, the district court's order granting Defendants' motion for

judgment on the pleadings should be reversed, and the case should be remanded

for further proceedings.

~~~~;~ ~ 25
 C. The District Court Ignored Established Procedural Standards

for Ruling on a Rule 12(c) Motion, Which Required Denial of the

Motion.

As mentioned above, the controlling precedent for review of procedural

matters for the instant case is Ninth Circuit case law. See Afngen Inc. v. Sandoz

Inc., 794 F.3d 1347, 1354 (Fed. Cir. 2015). Under Ninth Circuit precedent,

"[a]nalysis under Rule 12(c) is substantially identical to analysis under Rule

12(b)(6) because, under both rules, a court must determine whether the facts

alleged in the complaint, taken as true, entitle the plaintiff to a legal remedy." Pit

Rives Vibe v. Bureau of Land Mgmt., 793 F.3d 1147, 1155 (9th Cir. 2015)

(quoting Chavez v. United States, 683 F.3d 1102, 1108 (9th Cir. 2012)(citations

and internal quotation marks omitted)). "All allegations of fact by the party

opposing the motion are accepted as true, and are construed in the light most

favorable to that party." Gen. Conference Corp. of Seventh-Day Adventists v.

Seventh-Day Adventist Congregational Church, 887 F.2d 228, 230 (9th Cir.

1989) (citing McGlinchy v. Shell Chemical Co., 845 F.2d 802, 810 (9th Cir.

1988)). Judgment on the pleadings is proper only "when there are no issues of

material fact, and the moving party is entitled to judgment as a matter of law." Id.

749935.1 ?6
 Defendants' 12(c) motion was apleading-stage challenge based entirely

upon its affirmative defense of prosecution history estoppel. (Appx041-065)

Where, as here, an affirmative defense does not appear on the face of the

complaint, dismissing a complaint under Rule 12 is not appropriate. Citing to

U.S. Supreme Court precedent, the Seventh Circuit explained in Xechem, Inc. v.

Bristol-Myers Squibb Co., 372 F.3d 899, 901 (7th Cir. 2004), "[c]omplaints need

not contain any information about defenses and may not be dismissed for that

omission" (citing Gomez v. Toledo, 446 U.S. 635 (1980)) (original emphasis).

"Only when the plaintiff pleads itself out of court that is, admits all the

ingredients of an impenetrable defense may a complaint that otherwise states a

claim be dismissed under Rule 12(b)(6)." Id.; see also Clifton v. Houghton

Mifflin Harcourt Pub. Co., 152 F. Supp. 3d 1221, 1226 (N.D. Cal. 2015)

(rejecting pleading-stage challenge based on statute of limitations affirmative

defense that was "not obvious from the face of the complaint"). No such

admissions were present on the face of the First Amended Complaint, and

Defendants' motion should have been denied by the district court for at least this

reason alone.

Furthermore, the Court should have denied Defendants' motion because it

failed to establish any facts, conclusive or otherwise, about any pet products that

Defendants make, use, offer for sale, and sell. As set forth above, Advantek

749935.1 2/
obtained a design patent on a skeletal component part of its gazebo design, which

can be asserted if the skeletal structure is visible during ordinary use of the

product during its lifetime. Defendants' Rule 12(c) motion failed to conclusively

demonstrate, at the pleading stage, (a) that Defendants do not use a skeletal

component having a substantially similar design for any of their pet products, or

(b) that the skeletal structure of the Pet Companion is entirely invisible during its

ordinary use and throughout its lifetime. Instead, Defendants argued in their

12(c) Motion: "[n]othing in the First Amended Complaint suggests that the Pet

Companion is a gazebo without a cover, nor could it, because as is evident on the

face of the pleadings, the Pet Companion has a cover. Therefore, the Pet

Companion does not infringe the `006 Patent as a matter of law." (Appx051)

Defendants should not have been able obtain a judginent on the pleadings that

they purportedly do not infringe on the `006 Patent, based on the 12(c) Motion's

bare insinuations that a component part substantially similar to the patented

design is covered up (by a tarp, no less) and, thus, it can be assumed that the

consumer does not view the structure under the tarp at any point during the

lifetime of the product.

While the district court recognized that Advantek argued in its opposition

that Defendants' motion was inappropriate at this stage of the litigation

(Appx005), the district court did not substantively address any of Advantek's

749935.1 2O
arguments. Instead the district court offered a conclusory statement that "[g]iven

that Courts may rely on facts subject to judicial notice in deciding a motion to

dismiss, it is appropriate for the Court to consider the applicability of the

prosecution history in this matter. While the 12(b)(6) and pleading standards will

apply, this Court may consider the prosecution history of U.S. Patent No.

D715,006 ("`006 Patent")." (Appx005) Advantek had never argued that the

district court could not consider the prosecution history of the `006 patent.

Furthermore, the district court did not address the deficiencies in Defendants'

motion regarding particular facts of their own product, including that Defendants'

12(c) Motion fails to establish any facts about any pet products that Defendants

make, use, offer for sale and sell, or the visibility of the skeletal structure of

Defendants' products during their normal use.

As Defendants' 12(c) motion for judgment on the pleadings was

procedurally insufficient, it should not have been granted by the district court.

D. The District Court Abused its Discretion in Denying Leave to

Amend.

As mentioned above, Advantek amended its pleadings once before

Defendants answered. That amendment was not directed to Defendants' so-called

prosecution history defense. Rather, the amendment added two non-patent claims

and was made p~io~ to Defendants raising their prosecution history estoppel

749935.1 29
defense. Thus Advantek was denied even a single opportunity to respond to the

purported estoppel defense by amending its design patent infringement claim to

further clarify the article of manufacture it was accusing. Making matters worse,

the district court made this denial without explanation, which, under Ninth Circuit

precedent, is almost automatically grounds for reversal.

As this Court knows,"[t]he court should freely give leave [to amend] when

justice so requires." Fed. R. Civ. P. 15(a)(2). Furthermore, in the Ninth Circuit,lo

a district court's failure to set forth reasons for denying leave to amend constitutes

reversible error. See, e.g., Sharkey v. O'Neal, 778 F.3d 767, 774 (9th Cir. 2015)

("A simple denial of leave to amend without any explanation ... is subject to

reversal")(citation and internal quotation marks omitted); Eminence Capital, LLC

v. Aspeon, Inc., 316 F.3d 1048, 1052 (9th Cir. 2003)("Dismissal with prejudice

and without leave to amend is not appropriate unless it is clear on de novo review

that the complaint could not be saved by amendment")(citing Chang v. Chen, 80

F.3d 1293, 1296 (9th Cir. 1996)).

10 As explained above, Ninth Circuit precedent controls procedural issues

herein.

749935.] 3
 Here, Advantek could have amended its complaint to clarify further that it

was accusing Defendants' gazebo without a cover of infringement. Moreover,

following the preparation of the first amended complaint, Advantek received

pictures of Defendants' gazebo without a cover that could have been included in

an amended complaint. Furthermore, Advantek could have pled specifically what

seems obvious to anyone viewing Defendants' product i.e., the skeletal

structure is visible during the normal use ofthe product. By denying Advantek an

opportunity to amend the complaint, the district court prevented Advantek from

having an opportunity to further clarify the scope and nature of its claims.

Particularly when doing so without explanation, the district court committed

reversible error.

VII. CONCLUSION AND RELIEF SOUGHT

Advantek requests that the district court's ruling on Defendants' Rule 12(c)

motion be reversed. Advantek also requests an Order that Advantek is not

prevented from accusing the skeletal structure of Defendants' Pet Companion

product from infringing the `006 patent by the doctrine of prosecution history

estoppel. Advantek further requests that leave to amend the First Amended

Complaint be granted to the extent that such leave is necessary to allow Advantek

to allege additional facts to accuse the skeletal structure of the Pet Companion

product of infringing on the `006 patent. Advantek finally requests that the

749935.1 31
judgment in favor of Defendants be reversed, that this case be remanded. for

further proceedings, and that it be awarded its fees and costs on appeal.

Dated: February 23, 2017 Respectfully submitted,

BROWNE GEORGE ROSS LLP

Keith J. Wesley

KOPPEL PATRICK HEYBL & PHILPOTT

Jaye G. Heybl
Brian M.Fitzgerald

RINCON VENTURE LAW GROUP

K. Andrew Kent

By: s/ Keith J. Wesley

Keith J. Wesley
Attorneys for Plaintiff-Appellant
Advantek Marketing,Inc.

749935.1 32
 ADDENDUM

TABLE OF CONTENTS

December 2, 2016 Judgment(Dkt. No. 45) Appx001-003

November 3, 2016 Order Granting Defendants Motion for Appx004-007

Judgment on the Pleadings (Dkt. No. 36)

October 7, 2014 United States Design Patent No. US Appx014-018

D715,006 S

X49935, 33
December 2, 2016 Judgment(Dkt. No. 45)
cash ~ 2:16-cv-03061-R-FFM Document 45 Filed 12/02/16 Page 1 of 3 Page ID #:470

2
JS-6
J

4
5
6
7
8 UNITED STATES DISTRICT COURT
9 CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION
10
11 ADVANTEK MARKETING,INC., Case No. 2:16-CV-3061-R(FFMx)
Hon. Manuel L. Real
12 Plaintiff, Magistrate Hon. Frederick F. Mumm
13 vs. JUDGMENT
14 SHANGHAI WALK-LONG TOOLS FSC: February 27, 2017
CO., LTD.; NEOCRAFT TOOLS CO., Trial: March 28, 2017
15 LTD.; ORION FACTORY DIRECT;
16 and DOES 1-10 inclusive,
17 Defendants.

18
SHANGHAI WALK-LONG TOOLS
19 CO., LTD.,
20 Counter-Claimant,
2l vs.
~~ ADVANTEK MARKETING,INC.,
23 Gaunter-Defendant.
24
25
26
27
28
~~ 7I9379J 2:16-CV-3061-R(FFM x)
Appx~~~GMENT
Cash ~ 2:16-cv-03061-R-FFM Document 45 Filed 12/02/16 Page 2 of 3 Page ID #:471

1 JUDGMENT

3 Judgment is hereby entered in favor of defendants Shanghai Walk-Long

4I "fools Co., Ltd. and Neocraft Tools Co., Ltd. and against plaintiff Advantek
5 Marketing, Inc. on plaintiffs claim for infringement of U.S. Design Patent No.
6 D715,006.
7 ;~
~~
8 ~ Dated: December 2, 2016,
...~
9
Honorable Manuel L. Real
10 United States District Court Judge
11
l2
13
14
15
16
l7
18
19
20
21
~2
23
24
25
26
27
28

'1' 2:16-CV-3061-R(FFMx)
GMENT
Appx0~2
Cash 2:16-cv-03061-R-FFM Document 45 Filed 12/02/16 Page 3 of 3 Page ID #:472

1 Respectfully Submitted:

3 ~ ~ Dated: December 1, 2016 BROWNE GEORGE ROSS LLP

Peter W. Ross
4 Keith J. Wesley
5 RINCON VENTURE LAW GROUP
K. Andrew Kent
6
7 By /s/ Keith I. Werlev
Keith J. Wesley
8 Attorneys for Plaintiff and Counter Defendant
Advantek Marketing, Inc.
9
10
11
~ Dated: December 1, 2016 PROGRESS LLP
12 Perry M. Goldberg
Lynne M.Brennan
13
l4
15
Attorne s for Defendants and Counterclaim
l6 Plaintif~Shanghai Walk-Long Tools Co., Ltd.
and Neocraft Tools Co., Ltd.
17
l8
19
?0
21
~~
23
?4
?5
26
27
28
719379.1 2:16-CV-3061-R(FFMac)
-2-
Q~~D]JUDGMENT
dppxO
November 3,2016 Order Granting Defendants Motion for
Judgment on the Pleadings (Dkt. No. 36)
cash 2:16-cv-03061-R-FFM Document 36 Filed 11/03/16 Page 1 of 4 Page ID #:443

JS-61

-1

8
y
UNITED STATES DISTRICT COURT
IU
CENTRAL DISTRICT OF CALIFORNIA
II

I? ADVANTEK MARKETING,INC., CASE NO. CV 16-3061-R

13
Plaintiff, ORDER GRANTING DEFENDANT'S
14 MOTION FOR JUDGMENT ON THE
PLEADINGS
l
SHANGHAI WALK-LONG TOOLS CO., et
16 al.,
17
Defendants.
18

19

20 Before the Court is Defendant's Motion for Judgment on the Pleadings(Dkt. No. 24),

21 which was filed on August 31, 2016. This Court took the matter under submission on October 4,

22 2016.

23 "After the pleadings are closed but within such time as not to delay the trial, any party may

24 move for judgment on the pleadings." Fed. R. Civ. P. 12(c). A court may grant a motion for

25 judgment on the pleadings when, accepting all factual allegations as true, there is no issue of

26 material fact, and the moving party is entitled to judgment as a matter of law. Motions under

27 12(b) and 12(c) of the Federal Rules of Civil Procedure are "functionally identical." Dworkin v.

28 Hustler Magazine, Inc., 867 F.2d 1188, 1192 (9th Cir. 1986).

Appx004
Cas 2:16-cv-03061-R-FFM Document 36 Filed 11/03/16 Page 2 of 4 Page ID #:444

Dismissal under Federal Rule of Civil Procedure 12(b)(6) is proper only when a complaint

2 exhibits either a "(1) lack of a cognizable legal theory or(2)the absence of sufficient facts alleged

under a cognizable legal theory." Balistreri v. Pacifica Police Dept., 901 F.2d 696,699(9th Cir.

4 1988). Under the heightened pleading standards of Twombly and Igbal, a plaintiff must allege

~~cnough facts to state a claim to relief that is plausible on its face," so that the defendant receives

6 "fair notice of what the...claim is and the grounds upon which it rests." Twombly, 550 U.S. at

7 570. The Plaintiff must plead factual content that allows the court to draw the reasonable

8 inference that the defendant is liable for the misconduct alleged. Igbal, 556 U.S. at 678. The

~) court will not accept "threadbare recitals of the elements of a cause of action, supported by mere

10 conclusory statement...." Id.

11 Defendant's Motion is based entirely on the doctrine of prosecution history estoppel.

12 Plaintiff opposes the Motion by arguing that Defendant's argument is inappropriate at this stage of

1~ the litigation and that even if it was, Defendants' have not met their burden of proving the

=1 elements of prosecution history estoppel.

1~ Courts may take judicial notice of facts that are "capable of accurate and ready

6 determination by resort to sources whose accuracy cannot reasonably be questioned." Fed. R.

17 Evid. 201(b)(2). It is generally accepted that records from the United States Patent and Trademark

8 Office("USPTO") may be judicially noticed. Anderson v. Kimberly-Clark Corp., 5700 Fed.

9 App'x 927, 932 n.3 (9th Cir. 2014). Courts may rely on information subject to judicial notice

2U when deciding a Rule 12 motion. Id. at 932. Defendant has offered the relevant patent's

2I prosecution history from the USPTO website for judicial notice. Plaintiff does not dispute these

22 records. Defendant's request for judicial notice is GRANTED.

23 Given that Courts may rely on facts subject to judicial notice in deciding a motion to

24 dismiss, it is appropriate for the Court to consider the applicability ofthe prosecution history in

25 this matter. While the 12(b)(6) and pleading standards will apply, this Court may consider the

?( prosecution history of U.S. Patent No. D715,006("`006 Patent"). Success under the doctrine of

7 prosecution history estoppel "turns on the answers to three questions(1) whether there was a

~; surrender;(2) whether it was for reasons of patentability; and (3) whether the accused design is

Appx005 ,,
Cas 2:16-cv-03061-R-FFM Document 36 Filed 11/03/16 Page 3 of 4 Page ID #:445

within the scope of surrender." Pacific Coast Marine Windshields v. Malibu Boats, LLC,739 F.3d

694, 702 (Fed. Cir. 2014).

Plaintiff designed a pet kennel called the "Pet Gazebo" for which it received the `006

~1 Patent. During the course of applying for the patent, Plaintiff replied to a restriction requirement

5 from the Patent and Trademark Office. Plaintiff now claims that the Defendants are infringing the

6 `006 Patent by producing and selling a pet kennel similar to the Pet Gazebo.

7 Defendant argues that Plaintiff's decision to elect the iteration of the Pet Gazebo without a

~3 cover in response to the USPTO's restriction requirement constitutes a surrender. Plaintiff

9 submitted two different design drawings to the USPTO and was forced to choose one of the two. It

0 chose the skeletal shell of the Pet Gazebo rather than a kennel with a cover on it. In choosing one

of two drawings in response to a restriction requirement, Plaintiff surrendered that claim. By

1? cancelling figures showing a gazebo with a cover,"the applicant surrendered such designs and

conceded that the claim was limited to what the remaining figure showed[.]" Id. at 703.

14 Next, Defendant argues that the surrender was made for the purpose of patentability. Like

15 the surrender at issue in Pacific Coast Marine Windshields which was not made for the purpose of

16 avoiding prior art or other "reasons of patentability," here, the surrender was made for the purpose

17 of responding to the restriction requirement and securing the patent. Plaintiff argues that this is a

18 question of fact, however, there is no such question for a design patent. Design patents, by their

19 nature may only include a single claim. Id. The USPTO responded to Plaintiff's designs by

20 requiring it to restrict the claimed patents to either "a kennel without a cover" or "a kennel with a

21 cover." This was labeled a restriction requirement by the examiner and is thus clear that in order

22 to receive the patent, Plaintiff had to surrender one of the claims. There was no reason to

23 surrender the proposed kennel with a cover other than to secure a patent.

24 Finally, Defendant must prove that the accused product is within the scope of surrender.

25 Prosecution history estoppel "requires an examination of the subject matter surrendered by the

26 narrowing amendment." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S.

?7 722, 737 (2002). Such an examination in this case reveals that the narrowing amendment

2~ surrendered a kennel with a cover. Here, Defendant has produced exactly that, a dog kennel in the

Appx006 3
Cash ~~ 2:16-cv-03061-R-FFM Document 36 Filed 11/03/16 Page 4 of 4 Page ID #:446

1 shape of a gazebo with a cover on it. Even on a Motion for Judgment on the Pleadings, taking all

factual allegations as true, this Court can determine that the allegedly infringing product is exactly

the same as the design forfeited by Plaintiffs. Plaintiff provided the description and image of

4 Defendant's product. Plaintiff does not dispute the diagrams and descriptions in the prosecution

5 history. On this information alone, the Court can determine that the scope of the surrender

6 encompasses Defendant's product. This case differs from the decision in Pacific where the

7 accused design and fell within an unclaimed range of the surrendered designs because here the

K kennel produced by Defendant is not within an unclaimed range ofthe narrowing amendment, it is

q the exact same as the design surrendered by Plaintiff.

After considering all the factual allegations made by Plaintiff as true, Defendant is entitled

to judgment as a matter of law. Plaintiff's ordinary observer arguments are exactly the types of

1? infringement analyses which are barred by the doctrine of prosecution history estoppel. Because

13 this Court has found that the doctrine applies, it need not consider them.

14 IT IS HEREBY ORDERED that Defendant's Motion for Judgment on the Pleadings

(Dkt. No. 24) is GRANTED.

16
~~a ~,
17 ~ Dated: November 3, 2016.

18 ~.~
19 MANUEL L. REAL
20 UNITED STATES DISTRICT JUDGE

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~~

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~~

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Appx007
October 7, 2014 United States Design Patent No. US D715,006 S
 I I Il ifIII I I Illy ~l l l IID I II III CI I I ~ ~Illl I I I I I IIII fill
USUOD715006S

,~z, United States Design Patent ~to~ Patent No.: US D715,006 S

Pomerantz ~as~ Date of Patent: ** *Oct. 7, 2014

(54) GAZEBU 1,996J0fi A 12%1970 ~immgaars ..........................52171

D?G8.213 S 31983 Lovitt ......................... D30r'117
4.640.061 A ?'1987 'fcumley ........................... 5y71
(76) Inventory Joseph Pomerantz, Moorpark,CA (US) 5,158,497 A IU~1992 Russignoletal................. 44912
5,448,964 A 9/1995 Takimoto ...................... 119/459
(') Notices This patent is subject to a terminal dis- 0477,116 S " 7/2003 S[okes et al.................. ll30/U5
claimer. 7,001,288 B2` ?/2006 Haziell .......................... 119%452
D573.313 S 7/2008 Bings~n ..................... D'30/l19
D652,997 S L/201? Collins ........................ D30l108
(*) Term: 14 Years
cited by examiner
(21) Appl. No.: 29/398,906
Primnry Examiner Cathy .4 MacCormac
(22) Filed: Ang.S, 2011 (74) Attorney, Agent, or Firm Koppel, Patrick, Heybl &
Philpott
(52) US.C.l.
USPC ......................................................... D30/112 (57) CLAIM
(SR) Field of('lassificatlon Search The ornamental design for a gazebo,as shown and described.
USPC ........ D30110R. 114-117.119.112: 119/452,
119/459. 474. 498. 5217] DI?SCRTPTin~
See application file fur cuuiplete saarch history.
FIG. 1 is a top perspective view showing my new gazebo
(56) References Cited Design;
FIG. 2 is a side view thereof;
U.S. PATENT DOCUMENTS HIV. 3 is a bottom view thereof; and,
3,3?5,535 A' 8/!967 Lane ................................. 52/63
PIG.4 is a top view thereof.
ll216,896 S 3/1970 Guuld ......................... D30l116
D219,275 S 11/1970 Benjamin .................... D30i114 1 Claim,4 Drawing 56eets

Appx014
Case 2:16-cv-03061-R-FFM Document 1-1 Filed 05/04/16 Page 3 of 6 Page ID #:13

jJ.~. Patent Oct. 7, 2014 Sheet 1 of 4 US D715,006 S

FIG. i

Appx015
Case 2:16-cv-03061-R-FFM Document 1-1 Filed 05/04/16 Page 4 of 6 Page ID #:14

U.S. Patent oar. ~, 2o~a Sheet 2 of 4 US D715,006 S

FIG. 2

Appx016
Case 2:16-cv-03061-R-FFM Document 1-1 Filed 05/04/16 Page 5 of 6 Page ID #:15

U.S. Patent Oct. 7,2014 Sheet 3 of 4 US D715,006 S

FIG. 3

Appx017
Case 2:16-cv-03061-R-FFM Document 1-1 Filed 05/04/16 Page 6 of 6 Page ID #:16

U.S. Patent oar. ~, Zo~~ Sheet 4 of 4 US D715,OOb S

Fi:~ a

Appx018
 PROOF OF SERVICE

The undersigned hereby certifies that on February 23, 2017, I electronically

filed the foregoing OPENING BRIEF OF PLAINTIFF/APPELLANT with the

Clerk of the Court for the United States Court of Appeals for the Federal Circuit

by using the appellate CM/ECF system. I certify that all participants in the case

are registered CM/ECF users and that service will be accomplished by the

CM/ECF system.

/s/ Keith J. Wesley

Keith J. Wesley

749935.1 34
 CERTIFICATE OF COMPLIANCE

1. This brief complies with the type-volume limitation of Federal Rule

ofFederal Circuit Rule 32(a) or Federal Rule of Federal Circuit Rule 28.1.

2. This brief contains 6,619 words, excluding the parts of the brief

exempted by Federal Rule of Appellate Procedure 32(x,

3. This brief complies with the typeface requirements of Federal Rule

of Appellate Procedure 32(a)(5) or Federal Rule of Federal Circuit Rule 28.1 and

the type style requirements of Federal Rule of Appellate Procedure 32(a)(6).

This brief has been prepared in a proportionally spaced typeface using

Microsoft Office Word 2010 in 14-point Times New Roman style.

Dated: February 23, 2017 Respectfully submitted,

BROWNE GEORGE ROSS LLP

Peter W. Ross
Keith J. Wesley

KOPPEL PATRICK HEYBL & PHILPOTT

Jaye G. Heybl
Brian M.Fitzgerald

RINCON VENTURE LAW GROUP

K. Andrew Kent

By: s/ Keith J. Wesley

Keith J. Wesley
Attorneys for Plaintiff-Appellant
Advantek Marketing,Inc.

X499>s ~ 35