United States District Court, N.D. Illinois
September 14, 2005.
PARA GEAR EQUIPMENT CO., INC., an Illinois corporation, Plaintiff,
SQUARE ONE PARACHUTES, INC., a California corporation; and ANTHONY J. DOMENICO, a California resident, Defendants.
The opinion of the court was delivered by: JOHN DARRAH, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff, Para Gear Equipment Co., Inc., filed a Complaint for
Declaratory Judgment against Defendants, Square One Parachutes,
Inc. and Anthony J. Domenico. The Complaint contains three
counts, alleging the patent at issue is unenforceable (Count I)
and invalid (Count II) and alleging lack of infringement by Para
Gear (Count III). Presently before the Court is Para Gear's
Motion for Summary Judgment.
In December 2003 and January 2004, Square One, through letters
from its attorney, charged Para Gear with infringement of U.S.
Patent No. Des. 381,886 ("`886 Patent"). (Plaint.'s 56.1(a)(3)
Statement ¶ B-2).*fn1 The '886 patent was issued on August
5, 1997, to the inventor, Anthony J. Domenico, who assigned the
patent to Square One. (Id., ¶ C-1). The '886 patent's sole claim
is for "[t]he ornamental design for a rescue knife, as shown."
(Id., ¶ C-3). The December 1992, January 1993, February 1993, March 1993,
April 1993, May 1993, and June 1993 issues of Parachutist
magazine contain an advertisement by Square One Sales & Service,
stating, in part: "New color catalogue available February, 1993.
Call today to receive your copy." (Plaint.'s 56.1(a)(3) Statement
¶¶ C-10-C-16). The July 1993 issue of Parachutist contains an
advertisement by Square One, stating, in part: "New 150 Page
Color Catalog Now Shipping Just $5.00." (Id., ¶ C-17).
The Square One 1993/94 Catalog contains photographs of other
hook knives sold by Square One, including a hook knife identified
as "Deluxe Metal Knife Item No. 20200" and a hook knife
identified as "Jack The Ripper Hook Knife Item No. 2023."
(Plaint.'s 56.1(a)(3) Statement ¶¶ C-21-22). A portion of the
1993/94 Catalog page containing photographs of the hook knives
appeared in an advertisement of the August 1993 issue of
Parachutist. (Id., ¶ C-23).
Square One sold 128 Square One Item No. 20200 hook knives in
1993 and 166 in 1994. (Plaint.'s 56.1(a)(3) Statement ¶¶
C-24-25). Domenico knew that Square One commenced selling Item
No. 20200 in mid to late 1992. (Id., ¶ C-26). Domenico also knew
that the 1993/94 Catalog was most likely printed in 1993. (Id., ¶
Para Gear received a Square One 1993/94 catalog in the summer
of 1993. (Plaint.'s 56.1(a)(3) Statement ¶ C-27). Para Gear
purchased a hook knife identified as Item No. 20200 that same
summer. (Id., ¶ C-28). The hook knife identified as Item No.
20200 in the 1993/94 Catalog purchased by Para Gear in 1993 has
the similar outside shape of Figure 2 of the '886 patent, except
that Figure 2 of the patent shows a double blade, whereas, Item
20200 has a single blade. (Id., ¶ C-33). The Jack the Ripper Hook Knife Item No. 2023 of the 1993/94
Catalog is shown with double blades. (Id., ¶ C-34). Aeroplay is
another hook knife that was offered for sale in the United States
prior to November 24, 1994. (Id., ¶ C-56).
On December 19, 1995, Domenico signed a patent application
containing the following language: "I acknowledge the duty to
disclose information which is material to the examination of this
application in accordance with Section 1.56(a) of Title 37 of the
Code of Federal Regulations." (Plaint.'s 56.1(a)(3) Statement ¶
C-35). The patent application, which matured into the '886
patent, was filed in the Patent and Trademark Office ("PTO") on
December 22, 1995. (Id., ¶ C-37). On March 21, 1996, Domenico's
attorney filed the '886 patent application and an Information
Disclosure Statement ("IDS") in the PTO. (Id., ¶ C-38). The March
21, 1996 Information Disclosure Statement was the only IDS filed
in the '886 patent application. The IDS lists the following U.S.
Patents: 1,472,826; 3,370,163; 4,783,867; 4,918,775; 4,944,392,
and 5,313,376. No other prior art was listed. (Id., ¶ C-39).
None of the patents cited in Domenico's IDS disclose a hook
knife. (Plaint.'s 56.1(a)(3) Statement ¶ C-40). Domenico's IDS
does not disclose any part of the 1993/94 Catalog, Item 20200, or
any knife offered for sale by Square One prior to December 22,
1994. (Id., ¶¶ C-41-45).
On June 10, 1996, the patent examiner issued an Examiner's
Action in the '886 application wherein he cited eleven United
States patents. (Plaint.'s 56.1(a)(3) Statement ¶ C-48). On
December 23, 1996, Domenico filed a Supplemental Declaration in
the '886 patent application. (Id., ¶ C-50). Domenico did not
disclose any additional prior art outside that already disclosed
in the previously filed IDS. (Id., ¶ C-51). The application
underlying the '886 patent was Domenico's first effort at
patenting one of his designs. (Def.'s 56.1(B)(3) Statement ¶ 4). ANALYSIS
Summary judgment is proper if "the pleadings, depositions,
answers to interrogatories, and admissions on file, together with
affidavits, if any, show that there is no genuine issue as to any
material fact." Fed.R.Civ.P. 56(c); see also Celotex Corp. v.
Catrett, 477 U.S. 317, 322-23 (1986). All the evidence and the
reasonable inferences that may be drawn from the evidence are
viewed in the light most favorable to the nonmovant. Miller v.
American Family Mutual Ins. Co., 203 F.3d 997, 1003 (7th Cir.
2000). Summary judgment may be granted when no "reasonable jury
could return a verdict for the nonmoving party". Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
Para Gear argues that the '886 patent is unenforceable because
Domenico engaged in inequitable conduct by failing to disclose
the 20200 hook knife and the 1993/94 Catalog that depicted this
and other hook knives.
Failure to prosecute a patent application with candor, good
faith, and honesty constitutes inequitable conduct. See Molins
PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995)
(Molins). The court undertakes a two-step analysis in
determining whether inequitable conduct occurred. GFI, Inc. v.
Franklin Corp., 265 F.3d 1268, 1273 (Fed. Cir. 2001) (GFI).
First, the court determines whether there has been an affirmative
misrepresentation of material fact a failure to disclose
material information or a submission of false material
information, coupled with an intent to deceive. See
Semiconductor Energy Lab. Co. v. Samsung Elect. Co.,
204 F.3d 1368, 1373 (Fed. Cir. 2000) (Samsung). The party asserting the
defense must demonstrate by clear and convincing evidence that
the information was both material and that the conduct was
intended to deceive. See Samsung, 204 F.3d at 1373. Second, the
court weighs the materiality and intent to deceive in light of
all the circumstances to determine whether the patent applicant's conduct
is so culpable to render the patent unenforceable. See GFI,
265 F.3d at 1273.
Because the presently disputed patent was filed after March 16,
1992, materiality is determined by the current version of PTO
Rule 56, rather than the pre-1992 version of the rule. See
Purdue Pharma L.P. v. Endo Pharmaceuticals Inc., 410 F.3d 690,
696 (Fed. Cir. 2005) (Purdue); Bruno Indep. Living Aids,
Inc., 394 F.3d 1348, 1352-53 (Fed. Cir. 2005) (Bruno).
Information is "material" if:
[I]t is not cumulative to information already of
record or being made of record in the application,
(1) It establishes, by itself or in combination with
other information, a prima facie case of
unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position
the applicant takes in:
(i) Opposing an argument of unpatentability relied
upon by the Office, or
(ii) Asserting an argument of patentability.
37 C.F.R. § 1.56(b)(2004). "Materiality is not limited to prior
art but instead embraces any information that a reasonable
examiner would be substantially likely to consider important in
deciding whether to allow an application to issue as a patent."
GFI, 265 F.3d at 1274. It is incumbent on the applicant to
disclose potential priority conflicts to the examiner and not to
unilaterally make a determination that materials are not prior
art. GFI, 265 F.3d at 1274.
Para Gear argues that a side-by-side comparison of the hook
knife of the '886 patent and the 20200 hook knife demonstrates
that a reasonable examiner would have considered the information
disclosed by the ornamental design of the 20200 hook knife and
those found in the 1993/94 catalog important in deciding whether
to allow the '886 patent to issue. However, Para Gear's test of
materiality is applied to patents that were not pending or filed
after the March 16, 1992 changes to PTO Rule 56. See Purdue, 410 F.3d at 696; Bruno,
394 F.3d at 1352-53. Para Gear cites to Dayco Prod. v. Total Containment,
Inc., 329 F.3d 1358 (Fed. Cir. 2003) (Dayco), in support of
its argument that the pre-1992 test still applies. However, the
Dayco court did not rule on this issue and left that decision
for another day. See Dayco, 329 F.3d at 1363-64. Accordingly,
Para Gear has applied the incorrect test of materiality.
Furthermore, Para Gear did not address Square One's argument that
Para Gear failed to address the correct test for materiality,
except its incorrect cite to Dayco, and that Para Gear failed
to present the Court with any undisputed factual evidence under
the applicable test. Para Gear failed to present evidence of a
prima facie case of unpatentability of the '886 patent or
refutation or inconsistency with a position Domenico took in
opposing an argument of unpatentability relied upon by the PTO or
asserted as argument of patentability. In light of the lack of
evidence, Para Gear has failed to demonstrate, by clear and
convincing evidence, the materiality of the 20200 hook knife
and/or the 1993/1994 Catalog for purposes of summary judgment.
Even if Para Gear had demonstrated materiality, genuine issues
of material fact exist as to whether Domenico intended to deceive
Intent is generally inferred from the circumstances and facts
surrounding the patent applicant's conduct. Samsung,
204 F.3d at 1375. Direct evidence is usually not available to demonstrate
intent; instead, it is generally demonstrated "by a showing of
acts, the natural consequences of which are presumably intended
by the actor." Molins, 48 F.3d at 1180.
Here, it is undisputed that Domenico knew of the 20200 hook
knife and the 1993/1994 Catalog when he applied for the '886
patent. Para Gear contends that Domenico's knowledge of the 20200
hook knife and the 1993/1994 Catalog along with a comparison of
the 20200 hook knife and the '886 patent hook knife demonstrate,
by clear and convincing evidence, Domenico's intent to deceive the PTO. Domenico avers that this was his first patent
application and that he did not believe the other hook knives
were material to the '886 patent because the '886 patent depicted
a unique single large oval hole within a handle of the knife and
a dual-bladed cutting end. Issues of material fact exist as to
whether Domenico intended to deceive the PTO; thus, summary
judgment as to the unenforceability of the '886 patent must be
Para Gear also argues that the '886 patent is invalid for
obviousness based on the primary reference to the 20200 hook
knife and secondary references, including the Jack the Ripper
The statutory presumption of patent validity pursuant to
35 U.S.C. § 282 places the burden of proving invalidity on the
proponent, and the burden never shifts to the patentee. See
Sinskey v. Pharmacia Ophthalmics, Inc., 982 F.2d 494, 498 (Fed.
Cir. 1992). For design patents, the ultimate inquiry in
determining invalidity for obviousness pursuant to Section 103 is
"whether the design would have been obvious to a designer of
ordinary skill of the articles involved." In re Rosen,
673 F.2d 388, 390 (Fed. Cir. 1982) (Rosen). The overall appearance the
visual effect as a whole of the design must be taken into
consideration in making this determination. See Rosen,
673 F.2d at 390.
"More specifically, the inquiry is whether one of ordinary
skill would have combined teachings of the prior art to create
the same overall visual appearance as the claimed design."
Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir.
1996) (Durling). However, before prior art designs can be
combined, a primary reference "a something in existence, the
design characteristics of which are basically the same as the
claimed design" must be identified. Rosen, 673 F.3d at 391.
If a primary reference is identified, other references may be
used to modify it to create a design that has the same overall visual appearance as
the claimed design. See Durling, 101 F.3d at 103. Secondary
references may only be used to modify the primary reference if
they are "so related [to the primary reference] that the
appearance of certain ornamental features in one would suggest
the application of those features to the other." In re Borden,
90 F.3d 1570, 1575 (Fed. Cir. 1996). The focus in a design
patent-obviousness inquiry is on the visual appearances, not the
design concepts. See Durling, 101 F.3d at 104.
In determining whether a primary reference has been identified,
the court discerns the correct visual impression created by the
patented design as a whole and then determines whether there is a
single reference that creates "basically the same" visual
impression. See Durling, 101 F.3d at 103.
The visual appearance of the '886 patent hook knife is that of
a hook knife with: (1) an oval grip containing a single large
oval opening; (2) which narrows and wraps around to form a hook
containing two blades, one blade angled on the bottom of the hook
and one blade angled at the top of the hook which meet to form a
"V" (<) facing outward toward the oval grip at the center of the
Para Gear contends that the 20200 hook knife constitutes a
primary reference to the '886 patent. The visual appearance of
the 20200 hook knife is a hook knife with: (1) an oval grip
containing two circular openings; (2) which narrows and wraps
around to form a hook containing one blade angled at the top of
the hook which forms a "V" (<) facing outward toward the grip at
the base of the hook.*fn3 As demonstrated by the above descriptions, the 20200 hook knife
does not create basically the same visual impression as the '886
patent hook knife. The '886 patent hook knife is readily
distinguishable from the 20200 hook knife in both the grip shape
and the blade structure. Because major modifications would have
to be made to the 20200 hook knife to look like the claimed
design, it cannot qualify as a primary reference. See In re
Harvey, 12 F.3d 1061, 1063 (Fed. Cir. 1993) (prior art vase that
required major modifications to look like the claimed design
could not qualify as a primary reference). Para Gear has failed
to identify a primary reference in its Motion for Summary
Judgment; accordingly, Para Gear's Motion for Summary Judgment
seeking a finding of invalidness for obviousness is denied.
For the foregoing reasons, Para Gear's Motion for Summary
Judgment is denied. [EDITORS' NOTE: FIGURE 1 IS ELECTRONICALLY NON-TRANSFERRABLE.] [EDITORS' NOTE: FIGURE 2 IS ELECTRONICALLY NON-TRANSFERRABLE.]
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