Pacific Handy Cutter, Inc. v. Quick Point, Inc. (C.D. Cal. 1997)

Calendar Item # 22

Plaintiff's Motion for Summary Adjudication is GRANTED.

Under Fed.R.Civ.P. 56, the party moving for summary judgment or adjudication has the burden of showing there are no genuine issues of material fact so the party is entitled to judgment as a matter of law. The question in a summary adjudication motion therefore is whether the evidence, considered with any reasonable inferences drawn from that evidence, establishes a "genuine issue as to any material fact." See United Steel Workers of America v. Phelps Dodge Corp., 865 F.2d 1539, 1540 (9th Cir. 1989). The Supreme Court has held that a dispute is "genuine" for the purposes of summary judgment if a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, 477 U.S. 242, 248, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986); Winner International Corp v. Wolo Mfg. Corp., 905 F.2d 375, 376 (Fed. Cir. 1990).

Plaintiff Pacific Handy Cutter moves for summary adjudication of non-infringement as to each of its six letter opener designs. According to Cutter, none of its letter opener designs infringe Defendant Quick Point's letter opener patents.

Quick Point argues (1) there is a triable issue of fact as to infringement, or, in the alternative, (2) this motion is premature because discovery is ongoing.

The Court concludes Cutter's letter opener designs do not infringe Quick Point's design patents.

A design patent protects the non-functional aspects of an ornamental design as shown in the patent. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995); KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993). Design patents are extremely narrow in scope. See In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988). A design patent's claim is limited to what is shown in the application drawings. See id.

To establish infringement, the patentee must prove both "substantial similarity" and appropriation of the "points of novelty." Sun Hill Industries, Inc. v. Easter Unlimited, Inc., 48 F.3d 1193, 1197 (Fed. Cir. 1995)(citing Shelcore, Inc. v. Durham Indus., Inc., 745 F.2d 621, 628 n.16 (Fed. Cir. 1984)).

Substantial similarity is determined through a visual comparison of the patented and accused designs. See Elmer, 67 F.3d at 1577; see also Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 518, 20 L. Ed. 731 (1871) ("if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same . . . inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other."). Because the Court concludes no reasonable jury could conclude the designs are substantially similar, it does not address whether the alleged infringing designs have appropriated the patentee's points of novelty.

I. SUBSTANTIAL SIMILARITY

A. " Basic Opener"

In support of its Motion for Summary Adjudication, Cutter submits its '316 Design Patent, Exhibit 1, and Quick Point's '394 Patent, Exhibit 2. According to Cutter, it is evident from the drawings incorporated in the patents that the two designs are not substantially similar as a matter of law. The Court agrees.

First, each opener has a markedly different blade apparatus. The Quick Point design's thin, pointed "finger tip" extends the full length of the opener, while the Cutter opener's "finger tip" is thicker, trapezoidal and extends only three-quarters of the length of the opener. The Cutter opener's blade has holes; the Quick Point opener's blade does not. Second, the Quick Point opener has a clear window on its face; the Cutter opener's face is solid. Last, the Cutter opener includes what looks like a ruler along its top edge. The Quick Point opener's top edge is smooth.

After examining the two designs, the Court concludes no reasonable jury could find Cutter's Basic Opener design to be substantially similar to Quick Point's Basic Opener design. Summary adjudication of non-infringement as to Quick Point's '394 patent is appropriate.

B. " Business Card Opener"

In support of its Motion for Summary Adjudication, Cutter submits drawings attached to its '952 Design Patent Application, Exhibit 8, and Quick Point's '770 Patent, Exhibit 7. It is evident from the drawings the two designs are not substantially similar as a matter of law.

As with the Basic Opener, each party's Business Card Opener incorporates a different blade apparatus. See supra, section I.A. Also as with the Basic Opener, Cutter's Business Card Opener has what looks like a ruler along its top edge; Quick Point's Business Card Opener does not include this feature. Moreover, it appears Quick Point's Business Card Opener is considerably thicker than Cutter's. Last, Quick Point's Business Card Opener has several horizontal ridges below the business card window; Cutter's Business Card Opener has no similar ridges.

The Court concludes no reasonable jury could find Cutter's Business Card Opener design to be substantially similar to Quick Point's Business Card Opener design. Thus, summary adjudication of non-infringement as to Quick Point's '770 patent is appropriate.

C. " Telephone Opener"

In support of its Motion for Summary Adjudication, Cutter submits drawings attached to its '677 Design Patent Application, Exhibit 13, and Quick Point's '183 Patent, Exhibit 12. According to Cutter, it is evident from the drawings the two designs are not substantially similar as a matter of law. The Court agrees.

First, each of the two Telephone Openers has a markedly different blade apparatus. See supra, section I.A. Second, Quick Point's Telephone Opener is significantly more detailed than Cutter's. Quick Point's Telephone Opener incorporates raised buttons and a detailed handset, whereas Cutter's Telephone Opener does not include similar detail. Last, Quick Point's Telephone Opener has a clear window above the blade; Cutter's Telephone Opener has no similar feature.

The Court concludes no reasonable jury could find Cutter's Business Card Opener design to be substantially similar to Quick Point's Business Card Opener design. Thus, summary adjudication of non-infringement as to Quick Point's '183 patent is appropriate.

D. " Computer Opener"

In support of its Motion for Summary Adjudication, Cutter submits drawings attached to its '655 Design Patent Application, Exhibit 19, and Quick Point's '008 Patent, Exhibit 18. According to Cutter, it is evident from the drawings the two designs are not substantially similar as a matter of law. The Court agrees.

First, as in the other designs, each party's Computer Opener uses a different blade apparatus. See supra, section I.A. Second, Quick Point's Computer Opener is more detailed than Cutter's Computer Opener. Where Quick Point's Opener includes detail of a computer keyboard, disk drive and monitor, Cutter's Computer Opener is a mere outline of a computer. Moreover, the shape of each computer is entirely different. Quick Point's computer is much more easily recognizable as a computer. Cutter's computer, on the other hand, looks like one smaller, rounded rectangle resting on a longer, sharper rectangle.

The Court concludes no reasonable jury could find Cutter's Telephone Opener design to be substantially similar to Quick Point's Telephone Opener design. Thus, summary adjudication of non-infringement as to Quick Point's '008 patent is appropriate.

E. " Truck Opener"

In support of its Motion for Summary Adjudication, Cutter submits drawings attached to its '654 Design Patent Application, Exhibit 25, and Quick Point's '108 Patent, Exhibit 24. It is evident from the drawings the two designs are not substantially similar as a matter of law.

Again, each party's truck opener uses a different blade apparatus. See supra, section I.A. Also as with the other designs, Quick Point's Truck Opener is significantly more detailed than Cutter's design. The cab of Quick Point's tractor trailer has a stylized door, window and windscreen, whereas there is only a window on Cutter's design. Further, the cab of Quick Point's tractor appears to extend to the top of the trailer; Cutter's cab reaches only half the distance up the trailer. In addition, it appears Quick Point's design includes a clear window on the trailer; Cutter's Truck Opener is solid.

The Court concludes no reasonable jury could find Cutter's Truck Opener design to be substantially similar to Quick Point's Truck Opener design. Summary adjudication of non-infringement as to Quick Point's '108 patent is appropriate.

F. " House Opener"

In support of its Motion for Summary Adjudication, Cutter submits its '347 Design Patent, Exhibit 30, and Quick Point's '184 Patent, Exhibit 29. According to Cutter, it is evident from the drawings incorporated in the patents that the two designs are not substantially similar as a matter of law. The Court agrees.

As with the other openers, each of the parties' House Openers uses a different blade apparatus. See supra, section I.A. Also as with the other openers, Quick Point's House Opener is more detailed than Cutter's House Opener. Quick Point incorporates a stylized chimney with detailed bricks and a roof with horizontal ridges. Cutter's House Opener is merely in the shape of a crude house. Further, Quick Point's House Opener has a large, clear window across its front; Cutter's opener has a smooth, flat surface.

The Court concludes no reasonable jury could find Cutter's House Opener design to be substantially similar to Quick Point's House Opener design. Thus, summary adjudication of non-infringement as to Quick Point's '184 patent is appropriate.

In sum, it is readily apparent from a comparison of each letter opener at issue that Cutter's designs are not substantially similar to Quick Point's. Generally, it appears Cutter's designs are markedly less detailed than Quick Point's designs. Moreover, the parties use a significantly different blade apparatus on each's letter openers. The Court holds, as a matter of law, no reasonable jury could conclude there is substantial similarity between any of the six designs at issue.

II. DISCOVERY ISSUES

Quick Point contends summary adjudication of non-infringement is premature because it has not yet completed discovery. According to Quick Point, it intends to perform consumer surveys to determine whether the "ordinary observer" would conclude the designs are substantially similar. In addition, Quick Point argues discovery will uncover evidence Cutter had access to Quick Point's designs when it developed its own letter openers. Last, Quick Point argues it has not yet received responses to relevant discovery served upon Cutter.

The Court concludes the discovery Quick Point intends to perform would not raise a triable issue of fact as to non-infringement. Accordingly, summary adjudication of non-infringement is appropriate at this point in the proceedings.

Under Fed.R.Civ.Proc. 56(f), the party opposing summary adjudication bears the burden of showing what facts it hopes to discover to raise a triable issue of fact. Terrell v. R.D. Brewer, 935 F.2d 1015, 1018 (9th Cir. 1991). Where additional discovery would not preclude summary judgment, it is appropriate to deny a Rule 56(f) request for a continuance. Harris v. Duty Free Shoppers Limited Partnership, 940 F.2d 1272, 1276 (9th Cir. 1991).

First, evidence relating to consumer confusion would not raise a triable issue of fact. A finding of infringement or of non-infringement may, as a matter of law, be made relying "exclusively or primarily on a visual comparison of the patented design, as well as the device that embodies the design, and the accused device's design." See Braun Inc. v. Dynamics Corp. of America, 975 F.2d 815 (Fed. Cir. 1992). "Likelihood of confusion as to the source of the goods is not a necessary or appropriate factor for determining infringement of a design patent." Unette Corp. v. Unit Pack Co., Inc., 785 F.2d 1026, 1028 (Fed. Cir. 1986)(emphasis added).

The Court has concluded no reasonable juror could find substantial similarity between the parties' designs. Evidence of consumer confusion would not change this result. "Design patent infringement does not concern itself with the broad issue of consumer behavior in the marketplace." Braun Inc., 975 F.2d at 821. There is no need to continue this motion to allow Quick Point to perform consumer research--this discovery would not raise a triable issue of fact. The designs are not substantially similar as a matter of law.

Second, the question of whether Cutter had access to Quick Point's designs before developing its own letter openers is irrelevant to the question of infringement. See Warner-Jenkinson Co. v. Hilton Davis Chemical, 137 L. Ed. 2d 146, 117 S. Ct. 1040, 1052 (holding, in the context of utility patents, that "intent plays no role in the application of the doctrine of equivalents"); see also FMC Corp. v. Hennessy Industries, Inc., 836 F.2d 521, 527-28 (Fed. Cir. 1987)("That FMC wanted its tire changer to 'look like [Hennessy's]' is irrelevant where as here the final product does not infringe the patented design."). Accordingly, evidence which Quick Point could produce relating to Cutter's access to Quick Point's designs would not raise a triable issue of fact sufficient to defeat Cutter's Motion for Summary Adjudication.

Third, the Court concludes the responses to discovery requests Quick Point has served on Cutter would also fail to raise a triable issue of fact. Quick Point has requested information concerning the identity of machinery and tool suppliers; the identity of fact and expert witnesses; information relating to damages; and attorney opinions provided on the issues of validity, enforceability, scope, and infringement. This information, if produced, would not raise a triable issue of fact as to whether the patents are substantially similar.

The Court concludes a Rule 56(f) continuance is not appropriate--the discovery Quick Point has identified would not raise a triable issue of fact. Accordingly, Cutter's Motion for Summary Adjudication as to non-infringement is GRANTED.

DATED: 7-7-97

GARY L. TAYLOR

UNITED STATES DISTRICT JUDGE