Bobcar Media v. Aardvark - Motion For Sanctions

Case 1:16-cv-00885-JPO Document 65 Filed 05/08/18 Page 1 of 22
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
§
BOBCAR MEDIA, LLC, §
§
Plaintiff, § C.A. No. 1:16-CV-885 (JPO)
§
v. §
§
AARDVARK EVENT LOGISTICS, INC. §
§
Defendant.
DEFENDANT AARDVARK EVENT LOGISTICS’ MEMORANDUM OF LAW IN

SUPPORT OF ITS MOTION FOR SANCTIONS UNDER
FEDERAL RULE CIVIL PROCEDURE 11
BLANK ROME LLP

Rebecca Avrutin Foley
The Chrysler Building
405 Lexington Avenue
New York, NY 10174
Telephone: (212) 885-5000
Facsimile: (212) 885-5001
ravrutin@blankrome.com
Evan H. Lechtman
130 North 18th Street
Philadelphia, PA 19103-6998
Phone: (215) 569-5500
Facsimile: (215) 832-5500
lechtman@blankrome.com
Peter S. Weissman
1825 Eye Street, NW
Washington DC 20006
Phone: (202)-772-5805
Facsimile: (202)-572-1405
weissman@blankrome.com
TABLE OF CONTENTS
Page
I. INTRODUCTION ...............................................................................................................1
II. FACTUAL BACKGROUND ..............................................................................................3
A. The Asserted Patents ................................................................................................3
B. History of Bobcar’s Activities and this Lawsuit ......................................................4
C. Aardvark Notifies Bobcar of the Infirmities Associated With the Bobcar Design
Patents ......................................................................................................................6
III. LEGAL STANDARDS .......................................................................................................7
A. Rule 11 Sanctions ....................................................................................................7
B. Anticipation..............................................................................................................8
IV. LEGAL ARGUMENT .......................................................................................................10
A. The Bobcar Design Patents are Invalid in View of the Prior Art ..........................11
1. The D’675 Patent .......................................................................................12
2. The D’823 Patent .......................................................................................14
3. The D’353 Patent .......................................................................................14
B. This Court Should Sanction Bobcar Because It Brought and Continues to Assert
Claims for Patents It Knows are Invalid ................................................................15
V. CONCLUSION ..................................................................................................................18
i
TABLE OF AUTHORITIES
Page(s)
Cases
Colida v. Nokia, Inc.,

347 F. App’x 568 (Fed. Cir. 2009) ............................................................................................8
Commil USA, LLC v. Cisco Sys., Inc.,

720 F.3d 1361 (Fed. Cir. 2013 .................................................................................................15
Cooter & Gell v. Hartmarx Corp.,

496 U.S. 384 (1990) ...................................................................................................................7
Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008) (en banc)........................................................................9, 10, 12
Hakim v. Cannon Avent Grp., PLC,

479 F.3d 1313 (Fed. Cir. 2007)................................................................................................17
Int’l Seaway Trading Corp. v. Walgreens Corp.,

589 F.3d 1233 (Fed. Cir. 2009)..................................................................................................9
Microsoft Corp. v. i4i Ltd. P’ship,

564 U.S. 91 (2011) .....................................................................................................................9
New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,

298 F.3d 1290 (Fed. Cir. 2002)................................................................................................11
Pentagon Techs. Int’l Ltd. v. United States,

172 F. Supp. 2d 464 (S.D.N.Y. 2001)....................................................................................7, 8
Peters v. Active Mfg. Co.,

129 U.S. 530 (1889) .................................................................................................................12
Prestige Jewelry Int’l, Inc. v. BK Jewellery HK,

No. 11 CIV. 2930 LBS, 2012 WL 1066798 (S.D.N.Y. Mar. 24, 2012) ....................................9
Schering Corp. v. Geneva Pharm.,

339 F.3d 1373 (Fed. Cir. 2003)..................................................................................................8
Sorenson v. Wolfson,
683 F. App’x 33 (2d Cir. 2017) .................................................................................................8
Tokai Corp. v. Easton Enters., Inc.,

632 F.3d 1358 (Fed. Cir. 2011)..................................................................................................9
ii
View Eng’g, Inc. v. Robotic Vision Sys., Inc.,

208 F.3d 981 (Fed. Cir. 2000)..................................................................................................17
Statutes
35 U.S.C. § 100 ................................................................................................................................4
35 U.S.C. § 101 ................................................................................................................................3
35 U.S.C. § 102 ......................................................................................................................1, 8, 11
35 U.S.C. § 171 ................................................................................................................................3
35 U.S.C. § 172 ....................................................................................................................4, 11, 12
35 U.S.C. § 282 ................................................................................................................................9
Other Authorities
37 CFR 1.56 ...................................................................................................................................16
37 CFR 1.78 .....................................................................................................................................4
Fed. R. Civ. P. 11 .............................................................................................................................7
iii
I. INTRODUCTION
Defendant, Aardvark Event Logistics, Inc. (“Aardvark” or “Defendant”), brings this
motion under Rule 11 because Plaintiff, Bobcar Media, LLC (“Bobcar” or “Plaintiff”), is
maintaining claims for infringement of three (3) design patents it knows are invalid based on its
failure to file them within the time prescribed by the U.S. Patent Statute (Title 35, US Code).1
Defendant has repeatedly advised Plaintiff of this critical defect in its patents, and demanded that
Plaintiff immediately drop its claims under these patents. Rather than address these demands by
dismissing its claims against Defendant, Bobcar has continued to pursue the litigation as it relates
to the three patents at issue in this Motion, thereby causing Defendant to continue to incur
additional unnecessary costs to defend those claims.
One of the most basic and critical concepts of patent law is that once an invention is
disclosed to the public, the inventor has a limited period of time from that date -- namely one-year
-- to file a patent application (the “grace period”). See 35 U.S.C. §102(b). Thus, any disclosure
by the inventor (or anyone else) that occurs more than one-year prior to the filing date of the patent
application (the “critical date”), constitutes a complete bar to any patent for that invention. Bobcar
plainly failed to file three of its patents - - U.S. Design Patent Nos. D652,353 (“the D’353 Patent”),
D678,823 (“the D’823 Patent”), and D736,675 (“the D’675 Patent”) (collectively, “Bobcar Design
Patents”) - - within that one-year grace period. Rather, as discussed more fully below, those
applications were filed well after that grace period had expired, thereby rendering those patents
invalid.
1
Bobcar has asserted claims against Aardvark pursuant to six (6) patents. D.I. 12, ¶¶ 10-14, 29, 96, 97. Three of
those patents are the subject of the instant Motion. For an easy visual relationship between the asserted Bobcar Patents,
see the Patent Tree, Exhibit 1 hereto, which represents a simplified relationship and timeline for the asserted patents.
It is noted that the Bobcar Patents purport to have other relationships between the patents that are not reflected in Ex.
1.
1
Bobcar’s failure to timely file its patents resulted from a fatal error that was committed
during prosecution.2 Bobcar and its counsel should have known that the three Bobcar patents at
issue in this Motion were in jeopardy when the U.S. Patent & Trademark Office (“USPTO”) denied
the Bobcar Design Patents their priority dates in September 2011. Yet, Bobcar failed to notify the
USPTO that it had been commercially using and publicly displaying the invention more than a
year before it filed those patents, as it is required to do, thereby denying the USPTO the ability to
review the issue currently at hand, and the ability to prevent those patents from issuing in the first
place.
Aardvark has previously notified Bobcar that these three patents were meritless and warned
that unless corrective action was taken it would file a Rule 11 motion. Bobcar has not responded
to Aardvark’s warnings in any meaningful way. It never provided Aardvark with any explanation
for why the Bobcar patents are valid over its own activities. Nor has it pointed to a single
difference between the prior art and the alleged claimed inventions. And, despite being advised
on several occasions that its patents are clearly invalid, Bobcar has maintained this action for
infringement of those patents.
Aardvark requests that the Court declare the Bobcar Design Patents invalid and dismiss
Bobcar’s claims that Aardvark infringes those patents with prejudice to relieve Aardvark from
wasting further resources defending against these frivolous claims. Aardvark further seeks its fees
and costs (including attorney’s fees) expended to date in having to defend itself against claims
related to three clearly invalid patents.
2
Notably, Bobcar was represented by attorney Morris E. Cohen in the prosecution of the patents at issue in this
Motion. See, e.g., Ex. 2, D’353 Prosecution History, at 37 (BOBCAR000422). Mr. Cohen is also representing Bobcar
in connection with the above-captioned action. See D.I. 2.
2
II. FACTUAL BACKGROUND
A. The Asserted Patents.
In this litigation, Bobcar has accused Aardvark of infringing three utility patents and three
design patents.3 D.I. 12, ¶¶ 10-14, 29, 96, 97. The asserted utility patents are U.S. Patent No.
7,942,461 (“the ‘461 Patent”), U.S. Patent No. 8,220,854 (“the ’854 Patent”), and U.S. Patent No.
8,690,215 (“the ’215 Patent”) (collectively, the “Utility Patents”).4 The asserted design patents
are the Bobcar Design Patents (at issue in this Motion). The Utility Patents relate to the
configuration of the Bobcar Vehicle itself, whereas the Bobcar Design Patents by definition relate
to the aesthetic (non-functional) features of the Bobcar Vehicle.5
On March 7, 2008, Bobcar purports to file a provisional patent application no. 61/068,700
(the “Provisional Application”).6 See Ex. 3, Prov. App. Prosecution History, at 11
(BOBCAR000871); Ex. 1, Patent Tree.
On March 5, 2009, Bobcar then purports to file the Bobcar ’461 Utility Patent, claiming
priority to the Provisional Application. See Ex. 1, Patent Tree.
In 2010, 2012 and 2013, Bobcar then purports to file the Bobcar Design Patents. Upon
filing those applications, Bobcar attempted to claim priority to the Provisional Application - - i.e.,
that the Bobcar Design Patents (filed in 2010, 2012, 2013) were actually entitled to the earlier
3
For purposes of this Motion, Defendant refers to the patents as being those of Bobcar. However, Defendant does
not make any admission or waive any defense or right with respect to Bobcar’s purported ownership of the asserted
patents.
4
To clarify, the ’461, ’854 and ’215 Patents are not at issue in this Motion.
5
A “utility patent” protects a “new and useful process, machine, manufacture, or composition of matter” (35 U.S.C.
§ 101), while a “design patent” protects “any new, original, and ornamental design for an article of manufacture” (35
U.S.C. § 171). That is, a utility patent protects the article, whereas the design patent protects how the article looks
(not the article itself), i.e. the aesthetic non-functional aspects of that article.
6
In contrast to utility and design patents, a provisional application is a temporary filing. It only lasts for one year, is
not examined by the USPTO, and cannot itself become a patent.
3
filing date (March 7, 2008) of the Provisional Application.7 See, e.g., Ex. 2, D’353 Patent
Prosecution History, at 47-48 (BOBCAR000432-433); Ex. 2, Patent Tree. However, in a fatal
error, Bobcar failed to recognize that design patents (as opposed to utility patents) are not
permitted, as a matter of law, to claim priority to provisional applications. See 35 U.S.C. §172
(pre-AIA); 37 CFR 1.78(a)(4). Consequently, on September 11, 2011, the patent examiner at the
USPTO denied Bobcar’s priority claim and removed reference to it from the application:
Applicant is advised that the cross reference to related application

paragraph must be corrected to reflect only the present application
being a CIP and claiming benefit of priority of only 12/380,989
[now the Bobcar ‘461 Utility Patent] filed March 5, 2009 and
removing “which claims priority of US Provisional Application
61/068,700 filed March 7, 2008 regardless of the fact it is actually
reflecting more so the benefit of priority of 12/380,989 because
there is no such provisions claiming benefit of priority in a
provisional application in relation to a design patent. See 35 USC
172 and 37 CFR 1.78(a)(4). …
See Ex. 2, D’353 Prosecution History, at 14 (BOBCAR000399) (emphasis added).
This means that the Bobcar Design Patents cannot claim benefit to the earlier filing date of
the Provisional Application, which is why the Provisional Application is absent from the face of
the Bobcar Design Patents. See Ex. 4, D’353 Patent, at 2; Ex. 5, D’823 Patent, at 2; Ex. 6, D’675
Patent, at 2. Thus, the earliest effective filing date for all of the Bobcar Design Patents is March
5, 2009, the filing date of the first Bobcar ’461 Utility Patent (to which the Bobcar Design Patents
also claim priority). See Ex. 1, Patent Tree.
B. History of Bobcar’s Activities and this Lawsuit.
On October 16, 2007, more than one-year prior to the March 5, 2009 earliest effective
filing date of the Bobcar Design Patents, Bobcar initiated a commercial marketing campaign in
7
See 35 U.S.C. § 100(i) (“The term ‘effective filing date’ for a claimed invention in a patent … means … the filing
date of the earliest application for which the patent … is entitled, as to such invention, to a right of priority … .”).
4
which it used two vehicles (“the Bobcar Vehicles”) that are the very embodiment of the purported
invention itself,8 to display and promote cameras for its customer, Pentax (now Ricoh) (“the Pentax
Campaign”). Bobcar displayed its vehicles at dozens of different locations throughout New York
City over a six-week period of time “to engage and educate consumers right on the street.” See
Ex. 7, Pentax Publication, at 2 (BC0009442); see also Ex. 8, Digital Story Publication, at 5
(AARD_0000534).
On October 26, 2007, the Pentax Publication reported the Pentax Campaign on its website
(the “Pentax Publication”) with pictures of the Bobcar Vehicles, including in front of the well-
known B&H Photo, the first stop of the Pentax campaign as listed in the Pentax Publication. See
Ex. 7, Pentax Publication, at 4, 5 (BC0009444, 9445); D.I. 51, Ex. 4. Third parties took note of
the Pentax Campaign, as it was independently reported a few days later on October 30, 2007, on
at least one popular online blog known as The Digital Story (the “Digital Story Publication”).9 Ex.
8, Digital Story Publication, at 5 (AARD_0000534). The Digital Story Publication included a
cropped version of one of the pictures from the Pentax Publication, shown below, and a link to the
Pentax Campaign schedule. See id.
8
According to Bobcar, the invention is a vehicle that has a cab in the front and a showroom in the rear. The showroom
comprises a display area and has panels on three sides that open and close. See D.I. 52-1, p. 14, ll. 20-22. The vehicle
can be used, for instance, to display product for promotional purposes.
9
During a deposition of Derrick Story, author of the Digital Story Publication, his blog currently has over 6 million
viewers. Ex. 9, Story Depo. Tr. at 14: 17-25.
5
Image from the Digital Story and Pentax Publications
The Pentax Campaign, Pentax Publication and Digital Story Publication are individually
and collectively referred to herein as the “Prior Art” or the “Pentax Campaign Prior Art”.
C. Aardvark Notifies Bobcar of the Infirmities Associated With the Bobcar

Design Patents.
Nearly five years after the USPTO denied Bobcar’s priority claim to the Provisional
Application, Bobcar initiated the present action, accusing Aardvark of infringing the Bobcar
Design Patents. See D.I. 1, 12. On June 29, 2017, Aardvark contacted Bobcar about the fact that
the Bobcar Design Patents are “clearly invalid” in view of Bobcar’s own activities and the Digital
Story Publication. Ex. 10, Letter from Aardvark counsel, dated June 29, 2017, at 1. Aardvark
further explained that Bobcar could not proceed in good faith to assert the Bobcar Design Patents
for this reason and, if it continued to do so, Aardvark would serve Bobcar with a Rule 11 notice.
Id.
Bobcar responded to Aardvark’s letter on July 11, 2017, without addressing Aardvark’s
invalidity assertions. Ex. 11, Letter from Bobcar counsel, dated July 11, 2017, at 2. Indeed,
Bobcar did not provide an explanation for why the Bobcar Design Patents are valid over the Digital
6
Story Publication or Bobcar’s own activities. See id. Nor did Bobcar dispute the existence of the
prior art or point to a single difference between the prior art and the alleged inventions. See id.
Instead, Bobcar alleged Aardvark’s invalidity assertions were inappropriate because Aardvark was
prematurely construing the claims. Id.
On August 22, 2017, hoping to avoid further expense, including to prepare the present
motion, Aardvark again reached out to Bobcar’s counsel to seek an explanation as to why its
Bobcar Design Patents were not invalid. See Ex. 12, Letter from Aardvark counsel, dated Aug.
22, 1017, at 2.
Bobcar never responded to that letter. Weissman Decl., ¶ 14.
III. LEGAL STANDARDS
A. Rule 11 Sanctions.
A district court has broad discretion under Federal Rule of Civil Procedure 11 (“Rule 11”)
to sanction a litigant or counsel. Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 400 (1990);
Pentagon Techs. Int’l Ltd. v. United States, 172 F. Supp. 2d 464, 470 (S.D.N.Y. 2001). In pertinent
part, Rule 11 provides that, “[b]y presenting to the court a pleading … an attorney … certifies that
to the best of the person’s knowledge, information, and belief, formed after an inquiry reasonable
under the circumstances,” the pleading “is not being presented for any improper purpose,” and
“the claims, defenses and other legal contentions are warranted by existing law or by a
nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new
law.” FED. R. CIV. R. 11(b). A violation of Rule 11 is thus triggered when a pleading has been
interposed for any improper purpose or has been signed “‘without a belief formed from a
reasonable inquiry’ that the argument is non-frivolous.” Pentagon Techs., 172 F. Supp. 2d at 470
(quoting Caisse Nationale de Credit Agricole–CNCA, New York Branch v. Valcorp., Inc., 28 F.3d
7
259, 264 (2d Cir. 1994)); see also Sorenson v. Wolfson, 683 F. App’x 33, 35 (2d Cir. 2017). “A
filing is frivolous if it is ‘clear under existing precedent that there is no chance of success and no
reasonable argument to extend, modify or reverse the law as it stands.’” Pentagon Techs., 172 F.
Supp. 2d at 470 (quoting Simon DeBartolo Group, L.P. v. Richard E. Jacobs, Inc., 186 F.3d 157,
167 (2d Cir. 1999)).10 “[I]n assessing a claim for Rule 11 sanctions, courts apply a standard of
‘objective unreasonableness.’” Id. at 471 (quoting Ted Lapidus, S.A. v. Vann, 112 F.3d 91, 96 (2d
Cir. 1997)).
B. Anticipation.
Activities that occur more than one year prior to the filing date of a patent application (the
“critical date”) are prior art to that application. 35 U.S.C. 102(b) (pre-AIA). That one-year grace
period for inventors is established by 35 U.S.C. 102(b) (pre-AIA), which recites:
A person shall be entitled to a patent unless —
. . . (b) the invention was patented or described in a printed

publication in this or a foreign country or in public use or on sale
in this country, more than one year prior to the date of the
application for patent in the United States,
“A patent is invalid for anticipation if a single prior art reference discloses each and every
limitation of the claimed invention.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed.
Cir. 2003) (citing Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir. 1987)).
“Moreover, a prior art reference may anticipate without disclosing a feature of the claimed
invention if that missing characteristic is necessarily present, or inherent, in the single anticipating
reference.” Id. (citing Cont’l Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)).
10
The Federal Circuit “appl[ies] regional circuit law when reviewing sanctions under Rule 11.” Colida v. Nokia, Inc.,
347 F. App’x 568, 571 (Fed. Cir. 2009) (citing Q–Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295, 1299 (Fed.
Cir. 2004)) (applying law of Second Circuit).
8
A patent is presumed valid, 35 U.S.C. § 282, and invalidity must be proved by “clear and
convincing evidence.” Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1367 (Fed. Cir. 2011)
(citing Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365 (Fed. Cir.
2004)). If the prior art reference supporting the invalidity defense is new (i.e., it was not before
the USPTO during the prosecution of the challenged patent), it “‘carr[ies] more weight’ in an
infringement action than evidence previously considered by the PTO.” Microsoft Corp. v. i4i Ltd.
P’ship, 564 U.S. 91, 110 (2011) (citing Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d
1350, 1360 (Fed. Cir. 1984)). This is because the tribunal considering the new prior art “is not
faced with having to disagree with the [US]PTO or with deferring to its judgment or with taking
its expertise into account.” Id. at 111 (citations omitted). In other words, the burden to prove
invalidity is lower. See id.
The test for anticipation for design patents is “whether an ordinary observer familiar with
the prior art” would be deceived into believing that the design in question was the same as a prior
art reference. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678, 682 (Fed. Cir. 2008) (en
banc); Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009)
(holding ordinary observer test is “the sole test for anticipation”). “Under the ‘ordinary observer’
test for invalidity, “the court compares the claim to the accused or allegedly anticipating article
[asking whether] their resemblance is deceptive to the extent that it would induce an ordinary
observer, giving such attention as a purchaser usually gives, to purchase an article having one
design supposing it to be another.” Prestige Jewelry Int’l, Inc. v. BK Jewellery HK, No. 11 CIV.
2930 LBS, 2012 WL 1066798, at *2 (S.D.N.Y. Mar. 24, 2012) (alteration added by Court)
9
(emphasis omitted) (quoting Door–Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313 (Fed.
Cir. 2001)).11
IV. LEGAL ARGUMENT
The Bobcar Design Patents are invalid based on the following prior art, each of which
independently constitutes a complete bar to those patents: (a) Bobcar’s commercial activities
manifested in the Bobcar Vehicles that were shown, sold and used in the Pentax Campaign; (b)
the Pentax Publication; and (c) the Digital Story Publication (collectively referred to herein as the
“Prior Art” or the “Pentax Campaign Prior Art”). Each of those Prior Art separately discloses each
and every limitation of these patents, and any one of them alone renders the Bobcar Patents invalid.
Indeed, a side-by-side comparison of the Prior Art and the Bobcar Design Patents reveals
an unmistakable sameness. That comes as no surprise because Bobcar filed those patents for the
express purpose of protecting the Bobcar Vehicle that it commercialized in the Pentax Campaign
and featured in the Pentax and Digital Story Publications.
Moreover, the Prior Art activities all occurred in October 2007. Bobcar made an error
during prosecution of those patents and, as a result, its Design Patents were not filed until March
5, 2009, more than one-year after those 2007 Prior Art activities. As a result, the claims asserted
in this litigation relating to the Bobcar Design Patents are frivolous, in violation of Rule 11.
11
It is further noted that each of the Bobcar Design Patents has a single claim: “I claim the ornamental design for a
promotional vehicle, as shown and described.” Ex. 4, D’353 Patent, at 2; Ex. 5, D’823 Patent, at 2; Ex. 6, D’675
Patent, at 2. Thus, the Bobcar Design Patents are claimed as shown in the drawings. See Egyptian Goddess, 543 F.3d
at 679 (citing Arminiak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1319 (Fed. Cir. 2007)). And, as
noted on the face of those patents, “[t]he broken lines shown throughout the drawing views are for illustrative purposes
only and form no part of the claimed design.” Ex. 4, D’353 Patent, at 2; Ex. 5, D’823 Patent, at 2; Ex. 6, D’675 Patent,
at 2.
10
A. The Bobcar Design Patents are Invalid in View of the Prior Art.
In filing its Design Patents, Bobcar clearly intended to protect the very Bobcar Vehicle it
used in the 2007 Pentax Campaign and that was shown in the Pentax and Digital Story
Publications. But in filing those Bobcar Design Patents, Bobcar mistakenly believed that the
Bobcar Design Patents were entitled to the filing date of the 2008 Provisional Application. See
supra, section II(A) at 3-4. To the contrary, the USPTO expressly denied Bobcar’s priority claim
to the Provisional Application, as a matter of law. See supra II(A) at 3-4; 35 U.S.C. § 172 (pre-
AIA); Ex. 2, D’353 Prosecution History, at 14 (BOBCAR000399).
That was a fatal error by Bobcar because the effective filing date for the Bobcar Design
Patents fell from March 7, 2008 (the filing date of the Provisional Application) to March 5, 2009
(the filing date of the first Bobcar ’461 Utility Patent). Ex. 1, Patent Tree. That loss of an entire
year, in turn, moved the 2007 Prior Art activities beyond the critical date (i.e., the one-year grace
period), transforming those activities into invalidating Prior Art and a complete bar to the Bobcar
Design Patents. See 35 U.S.C. 102(b) (pre-AIA).
This case is analogous to New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290
(Fed. Cir. 2002). In that case, as here, the invention was on-sale more than one year prior to the
filing date of the patent, but not more than one year before the filing date of the provisional
application. Id. at 1294. The Federal Circuit found that the provisional application did not disclose
an element of the claim, and the patent therefore was not entitled to claim priority to the provisional
application filing date. Id. at 1295-97. Consequently, the patent was declared invalid over the
patent owner’s own prior activities. Id. at 1297
Here, there can be no dispute that the Bobcar Design Patents are not entitled to the priority
date of the Provisional Application, because the law specifically precludes it, and the USPTO
11
specifically denied Bobcar’s attempt to claim it. See supra II(A) at 3-4; 35 U.S.C. § 172 (pre-
AIA); Ex. 2, D’353 Prosecution History, at 14 (BOBCAR000399).
In addition, there can be no doubt that the claims of the Bobcar Design Patents are
anticipated by the Prior Art. See Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889) (“That which
infringes, if later, would anticipate, if earlier.”). The Bobcar Design Patents are not only invalid
since “an ordinary observer familiar with the prior art” would be deceived into believing that the
design in question was the same as the prior art - - but in fact, the Design Patents are the same as
the Prior Art. See Egyptian Goddess, 543 F.3d at 681. That is readily evident in the charts below,
where the figures from the Bobcar Design Patents are shown in the left column, and pictures of
the Bobcar Vehicle from the Pentax and Digital Story Publications are shown in the right column.
The Bobcar Vehicle has a remarkable sameness with the claimed design of each of the Bobcar
Design Patents.
Nevertheless, Bobcar failed to notify the USPTO that it had been commercially using the
invention prior to the critical date. As a result, Bobcar eluded the USPTO’s review of those Prior
Art activities. Consequently, the USPTO was not able to prevent the Bobcar Design Patents from
issuing in the first place.
Thus, the Bobcar Design Patents are not entitled to claim priority to the Provisional
Application as a matter of law. See 35 U.S.C. § 172 (pre-AIA). Consequently, the Prior Art
renders the Bobcar Design Patents invalid.
1. The D’675 Patent
It bears repeating that in the figures below, the Bobcar Design Patents only claim the
features shown in solid lines. The dashed or broken lines do not form a part of the claimed design.
12
See Ex. 4, D’353 Patent, at 2 (claim); Ex. 5, D’823 Patent, at 2 (claim); Ex. 6, D’675 Patent, at 2
(claim).
The D’675 Patent The Prior Art

(effective filing date March 5, 2009) (October 2007)
Ex. 8, Digital Story Publication at 5

(AARD_0000534); see also Ex. 7, Pentax
Publication, at 4 (BC000944).
Ex. 6, D’675 Patent at 4, 6.
13

Ex. 5, D’823 Patent at 3. Ex. 8, Digital Story Publication at 5

Publication, at 4 (BC000944).

14
Ex. 8, Digital Story Publication at 5

Publication, 4 (BC000944).
Ex. 4, D’353 Patent, at 3, 5, 8.
B. This Court Should Sanction Bobcar Because It Brought and Continues to

Assert Claims for Patents It Knows are Invalid.
As shown above, the Bobcar Design Patents are clearly invalid in view of the Prior Art.
Bobcar’s infringement claims for these patents are therefore objectively unreasonable, frivolous
and not warranted. See Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1368 (Fed. Cir.
2013), vacated in part on other grounds, 135 S. Ct. 1920 (2015) (“It is axiomatic that one cannot
infringe an invalid patent.”).
15
Moreover, Bobcar knew about the Prior Art because it included Bobcar’s own activities
that occurred more than a decade ago,12 and certainly knew about it prior to bringing this action.
Bobcar’s litigation counsel, Mr. Cohen, also knew of the fatal error when he prosecuted those
patents years ago, as the USPTO specifically denied priority to the Provisional Application in an
office action to him as of at least September 11, 2011. See Ex. 2, D’353 Prosecution History, at
14 (BOBCAR000399). Yet, Bobcar failed to notify the USPTO that it had been commercially
using and publicly displaying the invention more than a year before it filed those patents, as it is
required to do, 35 CFR 1.56(a), thereby denying the USPTO the ability to review the issue
currently at hand, and the ability to prevent those patents from ever issuing in the first place.
Despite this, Bobcar has continued to assert these frivolous claims even though Aardvark
has repeatedly advised Bobcar that the Digital Story Publication and Bobcar’s own activities
invalidate the Bobcar Design Patents. See, e.g., Ex. 10, Letter from Aardvark counsel, dated June
29, 2017, at 2; Ex. 12, Letter from Aardvark counsel, dated Aug. 22, 2017, at 2.13 Aardvark gave
Bobcar ample warning on multiple occasions that it would serve a Rule 11 notice if Bobcar refused
to dismiss these blatantly invalid patents from the case and continued to cause Aardvark to incur
costs associated with defending against those frivolous claims. See, e.g., Ex. 10, Letter from
Aardvark counsel, dated June 29, 2017, at 2; Ex. 12, Letter from Aardvark counsel, dated Aug. 22,
2017, at 2.
12
Based on the limited information produced by Bobcar in discovery to date, it appears that Bobcar may have
performed a similar campaign for Samsung at or about the time of the Pentax campaign.
13
Aardvark also notified Bobcar that its patents were invalid over the Prior Art in its Invalidity Contentions dated
June 1, 2017, November 14, 2017, and responses to interrogatories dated January 5, 2018. See Ex. 13, Aardvark’s
Invalidity Contentions, dated June 1, 2017; Ex. 14, Aardvark’s Supp. Invalidity Contentions, dated Nov. 14, 2017;
Ex. 15, Aardvark’s Interrogatory Responses, dated Jan. 5, 2018, at 11-15 (note that pages 21-26 contained confidential
information and have been removed from Ex. 15).
16
Bobcar, for its part, has refused to respond to Aardvark in any meaningful way. See Ex.
11, Letter from Bobcar counsel, dated July 11, 2017, at 2. Bobcar did not offer a single explanation
for why Bobcar’s Design Patents are valid over the Digital Story publication and its own activities.
See id. Nor did it dispute the existence of the prior art or point to a single difference between the
prior art and the alleged inventions. See id. Instead, it tried to deflect the issue by alleging that
Aardvark was prematurely construing the claims and that it was difficult to invalidate a patent. Id.
Bobcar, however, has offered no construction of the patents that would render them valid. See
Hakim v. Cannon Avent Grp. , PLC, 479 F.3d 1313, 1318-19 (Fed. Cir. 2007) (upholding district
court decision invalidating a patent before claim construction because there was no dispute to the
meaning of the term at issue, and no alternative meanings presented for the terms that would affect
validity). Thus, Bobcar knowingly continues to prosecute plainly frivolous claims.
Bobcar did not need to wait for Defendant Aardvark to investigate the validity of those
patents through discovery that included a deposition of Mr. Story. Bobcar also did not need to
ignore Aardvark’s repeated notices that the Bobcar patents were meritless and warnings that
Aardvark would file a Rule 11 motion.
Bobcar’s frivolous claims have resulted in an unnecessary waste of time, and unless
withdrawn by Bobcar, will result in an unnecessary waste of the Court’s time to consider and rule
on this motion. This Court should therefore “express its broad discretion in favor of Rule 11
sanctions” because Bobcar has always known, and has been reminded repeatedly by Aardvark,
that the Bobcar Design Patents are invalid. See View Eng’g, Inc. v. Robotic Vision Sys., Inc., 208
F.3d 981, 986 (Fed. Cir. 2000). Bobcar has forced Aardvark to defend against its frivolous
infringement allegations for long enough. See id. (“Defending against baseless claims of
17
infringement subjects the alleged infringer to undue costs—precisely the scenario Rule 11
contemplates.”).
V. CONCLUSION
For the foregoing reasons, the Court should grant Aardvark’s Motion for Rule 11 sanctions
and dismiss Bobcar’s claims that Aardvark infringes the Bobcar Design Patents with prejudice.
The Court should also award Aardvark its reasonable attorneys’ fees and costs associated with the
defending against Bobcar’s frivolous claims for the Bobcar Design Patents.
Dated: May 8, 2018 Respectfully submitted,
/s/ Peter S. Weissman

BLANK ROME LLP
Rebecca Avrutin Foley
The Chrysler Building
405 Lexington Avenue
New York, NY 10174
Telephone: (212) 885-5000
Facsimile: (212) 885-5001
ravrutin@blankrome.com
Evan H. Lechtman
130 North 18th Street
Philadelphia, PA 19103-6998
Phone: (215) 569-5500
Facsimile: (215) 832-5500
lechtman@blankrome.com
Peter S. Weissman
1825 Eye Street, NW
Washington DC 20006
Phone: (202)-772-5805
Facsimile: (202)-572-1405
weissman@blankrome.com
Attorneys for Defendant Aardvark Event

Logistics, Inc.
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Case 1:16-cv-00885-JPO Document 65 Filed 05/08/18 Page 1 of 22

UNITED STATES DISTRICT COURT

DEFENDANT AARDVARK EVENT LOGISTICS’ MEMORANDUM OF LAW IN

BLANK ROME LLP

II. FACTUAL BACKGROUND ..............................................................................................3

A. The Asserted Patents ................................................................................................3

B. History of Bobcar’s Activities and this Lawsuit ......................................................4

III. LEGAL STANDARDS .......................................................................................................7

A. Rule 11 Sanctions ....................................................................................................7

IV. LEGAL ARGUMENT .......................................................................................................10

1. The D’675 Patent .......................................................................................12

2. The D’823 Patent .......................................................................................14

3. The D’353 Patent .......................................................................................14

Colida v. Nokia, Inc.,

Commil USA, LLC v. Cisco Sys., Inc.,

Cooter & Gell v. Hartmarx Corp.,

Egyptian Goddess, Inc. v. Swisa, Inc.,

Hakim v. Cannon Avent Grp., PLC,

Int’l Seaway Trading Corp. v. Walgreens Corp.,

Microsoft Corp. v. i4i Ltd. P’ship,

New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,

Pentagon Techs. Int’l Ltd. v. United States,

Peters v. Active Mfg. Co.,

Prestige Jewelry Int’l, Inc. v. BK Jewellery HK,

Schering Corp. v. Geneva Pharm.,

Tokai Corp. v. Easton Enters., Inc.,

View Eng’g, Inc. v. Robotic Vision Sys., Inc.,

35 U.S.C. § 100 ................................................................................................................................4

35 U.S.C. § 101 ................................................................................................................................3

35 U.S.C. § 102 ......................................................................................................................1, 8, 11

35 U.S.C. § 171 ................................................................................................................................3

35 U.S.C. § 172 ....................................................................................................................4, 11, 12

35 U.S.C. § 282 ................................................................................................................................9

37 CFR 1.56 ...................................................................................................................................16

37 CFR 1.78 .....................................................................................................................................4

Fed. R. Civ. P. 11 .............................................................................................................................7

Defendant, Aardvark Event Logistics, Inc. (“Aardvark” or “Defendant”), brings this

additional unnecessary costs to defend those claims.

infringement of those patents.

related to three clearly invalid patents.

II. FACTUAL BACKGROUND

A. The Asserted Patents.

to the aesthetic (non-functional) features of the Bobcar Vehicle.5

(the “Provisional Application”).6 See Ex. 3, Prov. App. Prosecution History, at 11

(BOBCAR000871); Ex. 1, Patent Tree.

priority to the Provisional Application. See Ex. 1, Patent Tree.

Prosecution History, at 47-48 (BOBCAR000432-433); Ex. 2, Patent Tree. However, in a fatal

Applicant is advised that the cross reference to related application

See Ex. 2, D’353 Prosecution History, at 14 (BOBCAR000399) (emphasis added).

also claim priority). See Ex. 1, Patent Tree.

B. History of Bobcar’s Activities and this Lawsuit.

8, Digital Story Publication, at 5 (AARD_0000534). The Digital Story Publication included a

Pentax Campaign schedule. See id.

Image from the Digital Story and Pentax Publications

C. Aardvark Notifies Bobcar of the Infirmities Associated With the Bobcar

prematurely construing the claims. Id.

Bobcar never responded to that letter. Weissman Decl., ¶ 14.

III. LEGAL STANDARDS

period for inventors is established by 35 U.S.C. 102(b) (pre-AIA), which recites:

A person shall be entitled to a patent unless —

. . . (b) the invention was patented or described in a printed

invalidity is lower. See id.

IV. LEGAL ARGUMENT