hutzler v. bradshaw - appellant brief

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2013-1358

THE LEX GROUPDC 1825 K Street, N.W. Suite 103 Washington, D.C. 20006

(202) 955-0001 (800) 856-4419 Fax: (202) 955-0022 www.thelexgroup.com

In The United States Court of Appeals

For The Federal Circuit

HUTZLER MANUFACTURING COMPANY, INC.,

Plaintiff – Appellee,

v.

BRADSHAW INTERNATIONAL, INC.,

Defendant – Appellant.

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE

SOUTHERN DISTRICT OF NEW YORK IN CASE NO. 11-CV-7211,

JUDGE PAUL G. GARDEPHE

BRIEF OF APPELLANT

Robert J. Kenney

Michael B. MarionBIRCH, STEWART, KOLASCH & BIRCH, LLP

8110 Gatehouse Road, Suite 100E

Falls Church, Virginia 22042

(703) 205-8000

[email protected]

Counsel for Appellant July 12, 2013



124

FORM 9. Certificate of Interest

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

____________________________ v. ____________________________

No. _______

CERTIFICATE OF INTEREST

Counsel for the (petitioner) (appellant) (respondent) (appellee) (amicus) (name of party)

_______________________ certifies the following (use “None” if applicable; use extra sheetsif necessary):

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

_____________________________________________________________________________

_____________________________________________________________________________

_____________________________________________________________________________

2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by me is:

_____________________________________________________________________________

_____________________________________________________________________________

_____________________________________________________________________________

3. All parent corporations and any publicly held companies that own 10 percent or moreof the stock of the party or amicus curiae represented by me are:

_____________________________________________________________________________

_____________________________________________________________________________

_____________________________________________________________________________

4. The names of all law firms and the partners or associates that appeared for the partyor amicus now represented by me in the trial court or agency or are expected to appear in thiscourt are:

_____________________________________________________________________________

_____________________________________________________________________________

_____________________ _______________________________ Date Signature of counsel

_______________________________ Printed name of counsel

Please Note: All questions must be answered

cc: ___________________________________

Form 9

HUTZLER MANUFACTURING COMPANY, INC., BRADSHAW INTERNATIONAL, INC.,

2013-1358

Bradshaw International, Inc.



NONE

Robert J. Kenney, Esq., Birch Stewart Kolasch & Birch, LLP 8110 Gatehouse Rd.

Ste. 100 East, Falls Church, VA 22402

Reset Fields

Turner P. Smith

07 12 2013 s Robert J. Kenney

Robert J. Kenney



i

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES ................................................................................... iii

I. STATEMENT OF RELATED CASES ........................................................... 1

II. JURISDICTIONAL STATEMENT ................................................................ 1

III. STATEMENT OF THE ISSUES .................................................................... 2

IV. STATEMENT OF THE CASE ....................................................................... 2

V. STATEMENT OF FACTS .............................................................................. 4

VI. SUMMARY OF THE ARGUMENT .............................................................. 8

VII. STANDARD OF REVIEW ............................................................................. 9

VIII. ARGUMENT ................................................................................................. 10

A. The District Court Interpreted The Scope Of The ’114 Patent

And The ’463 Patent Far Beyond The Drawings Of The Patents ....... 10

1. The District Court Failed To Consider The Prior Art As

Part Of The Ordinary Observer Analysis ................................. 11

2. The District Court Ignored Expressly Claimed

Limitations Recited In The ’114 Patent and the ’463

Patent ......................................................................................... 17

3. The District Court Improperly Included Functional

Elements As Part Of The Scope Of The ’114 Patent And The ’463 Patent ......................................................................... 19



ii

4. Upon Proper Interpretation Of The ’114 Patent And The

’463 Patent, The Bradshaw Products Cannot Infringe ............. 23

a. The Design Of The ’114 Patent Is Not

Substantially Similar To The Bradshaw Onion

Keeper ............................................................................. 23

b. The Design Of The ’463 Patent Is Not

Substantially Similar To The Bradshaw Garlic

Keeper ............................................................................. 28

B. The District Court Failed to Apply the Polaroid Factors In

Evaluating A Likelihood of Confusion in Relation To Hutzler’s

Unfair Competition Claim ................................................................... 33

C. Hutzler Cannot Protect Under Unfair Competition Law What It

Failed To Patent ................................................................................... 37

D. The District Court Failed To Find Any Facts That Establish

“Bad Faith” Committed by Bradshaw ................................................. 44

1. Mere Awareness Of The Competitor’s Products Fails To

Establish “Bad Faith” On The Part Of The Competitor ........... 45

2. The Facts Presented At The District Court Demonstrate

Bradshaw’s Good Faith In Avoiding Hutzler’s Product

Line ........................................................................................... 46

3. The District Court Ignored Bradshaw’s Reliance On

Opinion Of Counsel In Avoiding Infringement Of The

Hutzler Patents .......................................................................... 48

IX. CONCLUSION .............................................................................................. 49

ADDENDUM

CERTIFICATE OF FILING AND SERVICE

CERTIFICATE OF COMPLIANCE



iii

TABLE OF AUTHORITIES

Page(s)

CASES

Am. Signature, Inc. v. United States,

598 F.3d 816 (Fed. Cir. 2010) ................................................................... 9, 10

Arrow Fastener Co. v. Stanley Works,

59 F.3d 384 (2d Cir. 1995) ............................................................................ 35

Berry Sterling Corp. v. Prescor Plastics, Inc.,

122 F.3d 1452 (Fed. Cir. 1997) ......................................................... 21, 22, 23

Contessa Food Products, Inc. v. Conagra, Inc.,

282 F.3d 1370 (Fed Cir. 2002) .......................................................... 17, 23, 24

Dippin’ Dots, Inc. v. Frosty Bites Distrib., LLC ,

369 F.3d 1197 (11th Cir. 2004) ..................................................................... 14

Disc Golf Ass’n v. Champion Discs,

158 F.3d 1002 (9th Cir. 1998) ....................................................................... 22

Eden Toys, Inc. v. Marshall Field & Co.,

675 F.2d 498 (2d Cir. 1982) .......................................................................... 14

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

543 F.3d 665 (Fed. Cir. 2008) ................................................................. 11, 12

Elmer v. ICC Fabricating, Inc.,

67 F.3d 1571 (Fed. Cir. 1995) ....................................................................... 26

FMC Corp. v. Hennessy Indus., Inc.,836 F.2d 521 (Fed. Cir. 1987) ....................................................................... 11

Fun-Damental Too v. Gemmy Indus. Corp.,

111 F.3d 993 (2d Cir. 1997) .......................................................................... 45



iv

Genesee Brewing Co. v. Stroh Brewing Co.,

124 F.3d 137 (2d Cir. 1997) .................................................................... 34, 36

Girl Scouts v. Bantam Doubleday Dell Publ’g Group, Inc.,

808 F. Supp. 1112 (S.D.N.Y. 1992) .............................................................. 34

Gorham Co. v. White,

81 U.S. 511 (1872)............................................................................. 11, 19, 28

Government of Canal Zone v. Burjan,

596 F.2d 690 (5th Cir. 1979) ......................................................................... 13

Hardy v Johns-Manville Sales Corp.,

681 F.2d 334 (5th Cir. 1982) ......................................................................... 14

Haye v United States,

461 F. Supp. 1168 (C.D. Cal. 1978) .............................................................. 14

Hosly Intern. Trading Corp. v. K Mart Corp.,

237 F. Supp. 2d 907 (N.D.Ill. 2002) .............................................................. 17

In re Bose Corp.,

476 F.3d 1331 (Fed. Cir. 2007) ..................................................................... 38

In re Glavas,

230 F.2d 447, 109 USPQ 50 (CCPA 1956)................................................... 13

In re Japikse,

181 F.2d 1019, 86 USPQ 70 (CCPA 1950)................................................... 15

In re Mann,

861 F.2d 1581 (Fed. Cir. 1988) ....................................................................... 8

KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc.,997 F.2d 1444 (Fed. Cir. 1993) ..................................................................... 17

Lee v. Dayton-Hudson Corp.,

838 F.2d 1186 (Fed. Cir. 1988) ..................................................................... 19



v

Lopez v. Gap, Inc.,

No. 11-3185, 2012 U.S. Dist. LEXIS 108602 (S.D.N.Y. Aug. 2, 2012) ...... 34

Lorillard Tobacco Co. v. Jamelis Grocery, Inc.,

378 F. Supp. 2d 448 (S.D.N.Y. 2005) ........................................................... 34

Louis Vuitton Malletier v. Dooney & Bourke, Inc.,

340 F. Supp. 2d 415 (S.D.N.Y. 2004) ........................................................... 35

Marcyan v. Nissen Corp.,

578 F. Supp. 485 (N.D. Ind. 1982), aff’d ,

725 F.2d 687 (7th Cir. 1983) ......................................................................... 14

Natural Organics, Inc. v. Nutraceutical Corp.,

426 F.3d 576 (2d Cir. 2005) .......................................................................... 36

New Kayak Pool Corp. v. R&P Pools, Inc.,

246 F.3d 183 (2d Cir. 2001) .......................................................................... 36

New York City Triathlon, LLC v. NYC Triathlon Club, Inc.,

704 F. Supp. 2d 305 (S.D.N.Y. 2010) ........................................................... 34

OddzOn Prods. v. Just Toys,

122 F.3d 1396 (Fed. Cir. 1997) ............................................................... 21, 22

Polaroid Corp. v. Polarad Elecs. Corp.,

287 F.2d 492 (2d Cir. 1961) ................................................................... passim

Qingdao Taifa Group Co. v. United States,

581 F.3d 1375 (Fed. Cir. 2009) ....................................................................... 9

Richardson v. Stanley Works, Inc.,

597 F.3d 1288 (Fed. Cir. 2010) ............................................................... 10, 17

Streetwise Maps v. VanDam, Inc.,

159 F.3d 739 (2d Cir. 1998) .......................................................................... 45

Thompson Med. Co. v. Pfizer Inc.,

753 F.2d 208 (2d Cir. 1985) .......................................................................... 35



vi

Titan Tire Corp. v. Case New Holland, Inc.,

566 F.3d 1372 (Fed. Cir. 2009) ................................................................. 9, 10

TrafFix Devices v. Marketing Displays,

532 U.S. 23, 121 S. Ct. 1255, 149 L. Ed. 2d 164 (2001) .............................. 38

W.W.W. Pharmaceutical Co. v. Gillette Co.,

984 F.2d 567 (2d Cir. 1993) .......................................................................... 48

Wing Shing Prods. (BVI) Co. v. Sunbeam Prods.,

665 F. Supp. 2d 357 (S.D.N.Y. 2009) ........................................................... 12

Winter v. NRDC, Inc.,

555 U.S. 7, 129 S. Ct. 365, 172 L. Ed. 2d 249 (2008) .................................. 10

STATUTES

28 U.S.C. § 1292(a)(1) ............................................................................................... 2

28 U.S.C. § 1292(c)(1) ............................................................................................... 2

28 U.S.C. § 1295(a)(1) ............................................................................................... 2

28 U.S.C. § 1331 ........................................................................................................ 1

28 U.S.C. § 1338 ........................................................................................................ 1

28 U.S.C. § 1367 ........................................................................................................ 1

35 U.S.C. § 102(b) ................................................................................................... 13

35 U.S.C. § 271(a) ..................................................................................................... 3

35 U.S.C. § 271(b) ..................................................................................................... 3



vii

RULES

Fed. R. Evid. 201(b) ........................................................................................... 13, 14

Fed. R. Evid. 201(c)(2) ............................................................................................ 14

Fed. R. Evid. 201(d) ................................................................................................. 13



1

I. STATEMENT OF RELATED CASES

No other appeal in or from the same civil action or proceeding in the lower

court or body was previously before this or any other appellate court under the

same or similar title.

No other case known to counsel is pending in this or any other court that will

directly affect or be directly affected by this Court’s decision in the pending

appeal.

II. JURISDICTIONAL STATEMENT

This is an appeal from the granting of a preliminary injunction by the United

States District Court for the Southern District of New York on the infringement of

two design patents and an unfair competition cause of action. The district court

has jurisdiction under 28 U.S.C. §§ 1331, 1338, and 1367.

The district court issued its order on the preliminary injunction on July 25,

2012. (JA10) A motion for reconsideration of the entry of the preliminary

injunction was timely filed and denied on March 27, 2013. (JA404) The district

court entered an order dated March 28, 2013, entering the terms of the preliminary

injunction and terminating the motion. (JA1) Appellant Bradshaw International,

Inc. timely filed an appeal on April 26, 2013. (JA708)



2

This appeal is from an order granting a motion for preliminary injunction,

which is appealable. 28 U.S.C. § 1292(a)(1). The Federal Circuit has jurisdiction in

the appeal under 28 U.S.C. § 1295(a)(1) and 28 U.S.C. § 1292(c)(1).

III. STATEMENT OF THE ISSUES

A. The District Court erred in granting the Motion for Preliminary

Injunction

1. Whether the District Court erred as a matter of law in granting the

Motion for Preliminary Injunction, concluding that the Plaintiff

was likely to succeed on the merits in that its interpretation of the

scope of the claim protection for the patents in issue improperlyincluded several functional elements, failed to take into

consideration the prior art and excluded consideration of expressly

claimed elements.

2. Whether the District Court erred as a matter of law in failing to

apply the proper factors in concluding Plaintiff was likely to

succeed on the merits of its unfair competition claim.

3. Whether the District Court also erred as a matter of fact in

concluding there was unfair competition by Defendants’ sale of

items not subject to any patent protection of Plaintiff.

B. The District Court erred as a matter of fact in finding and concluding

that the Defendant acted in bad faith.

IV. STATEMENT OF THE CASE

Appellant Bradshaw International, Inc. (Bradshaw) appeals the entry of a

preliminary injunction enjoining its making, using, offering for sale, selling,

importing, or distributing of its onion-shaped onion storage containers called

Onion Keepers and its garlic-shaped garlic storage containers called Garlic



3

Keepers. Bradshaw also appeals the entry of a preliminary injunction enjoining

“marketing, selling, advertising or promoting the Bradshaw Onion Keeper or the

Bradshaw Garlic Keeper, or any other container that embodies the designs claimed

in U.S. Patent No. D538,114 or U.S. Patent No. D592,463, or any container that is

likely to be confused with the Hutzler Onion Saver or the Hutzler Garlic Saver.”

Hutzler Manufacturing Company, Inc. (Hutzler) is the owner of two U.S.

design patents at issue in this matter. On March 13, 2007, the United States Patent

and Trademark Office issued Hutzler U.S. Patent No. D538, 114 (the “’114

Patent”), a design patent covering the “ornamental design for an onion container.”

(JA52) On May 19, 2009, the Patent and Trademark Office issued Hutzler U.S.

Patent No. D592,463 (the “’463 Patent”), a design patent protecting the

“ornamental design for a container” designed to hold garlic. (JA54)

On October 13, 2011, Hutzler filed a complaint alleging infringement of

both the ’114 Patent and the ’463 Patent in violation of 35 U.S.C. §§ 271(a) and

(b), as well as tortious interference with business and unfair competition under

New York law. (JA59)

On October 20, 2011, Hutzler moved for a preliminary injunction enjoining

Bradshaw from: (1) infringing, or inducing infringement of, Hutzler’s patents; and

(2) unfairly competing with Hutzler’s line of produce containers. (JA83) The

district court entered a preliminary injunction against Bradshaw on July 25, 2012



4

(JA10), and denied Bradshaw’s motion for reconsideration on March 27, 2013

(JA1)

V. STATEMENT OF FACTS

Hutzler Manufacturing Company, Inc. is the owner of two U.S. design

patents at issue in this matter. On March 13, 2007, the United States Patent and

Trademark Office issued Hutzler U.S. Patent No. D538, 114 (the “’114 Patent”), a

design patent covering the “ornamental design for an onion container.” (JA52) The

overall appearance of the design of the ’114 Patent shows similar characteristics

and appearance as a real onion bulb. (JA52-53) Hutzler makes the accusation that

the Bradshaw Onion Keeper product infringes the ’114 Patent. (JA 68; JA244)

Figure 1, ’114 Patent Sample Red Onion Bradshaw Onion Keeper

On May 19, 2009, the Patent and Trademark Office issued Hutzler U.S.

Patent No. D592,463 (the “’463 Patent”), a design patent protecting the

“ornamental design for a container” designed to hold garlic. (JA54) Similar to its

’114 Patent, the overall appearance of the design of the ’463 Patent shows similar



5

characteristics and appearance as a real garlic bulb. ( Id .) Hutzler makes the

accusation that the Bradshaw Garlic Keeper product infringes the ’114 Patent. (JA

69; JA250)

Figure 1, ’463 Patent Sample Garlic Bulb Bradshaw Garlic Keeper

Moreover, Hutzler and Bradshaw both sell full product lines of produce-

shaped produce containers. Hutzler’s product line is called Food Savers, while

Bradshaw’s product line is called Food Keepers, with sample products illustrated

below:

Sample Hutzler Food Savers

Bradshaw Keeper Products



6

(JA427-429) As far as the creation of the Bradshaw line of Keeper products,

in October 2009, as Bradshaw was preparing for the annual International

Housewares Association (“IHA”) tradeshow in Chicago, its head of product

development, Tom Barber, gave to Jeff Boutthavon, one of Bradshaw’s designers,

some documents, including rough sketches and catalog and magazine clippings,

and stated that he wanted to talk that same day because he wanted Bradshaw to

have food keeper type products to exhibit at the IHA tradeshow in March 2010.

(JA493 ¶ 6; JA509-510) The clippings showed onion, garlic, pepper, tomato, and

lemon containers. (JA493 ¶ 7) None of the clippings were from Hutzler catalogs or

advertisements or showed Hutzler products. In fact, some of the clippings were of

Bradshaw’s own ProFreshionals® brand. ( Id .)

From these drawings and clippings, Jeff Boutthavon rendered a proto-type on

the computer. However, Tom Barber was not satisfied with the design and decided

to turn the project over to an outside design firm named A2. ( Id . at ¶ 8)

Bradshaw provided A2, a successful New York-based design firm, with a

box of samples that Tom Barber and his designers had purchased. ( Id . at ¶ 9) No

inventory of that box remains, but Tom Barber recalls it contained ceramic and

plastic decorative fruit and vegetable pieces, small storage containers,

Tupperware® food containers and a Hutzler food saver. ( Id .)



7

The sketches originally produced by Tom Barber and conveyed to A2 were

pencil drawings which focused on Bradshaw’s desire to produce items which were

stylish and contemporary rather than natural-looking. ( Id. at ¶ 10) While Hutzler

has alleged that Bradshaw copied Hutzler’s food saver items, quite the opposite is

true. Tom Barber wanted items that did not look like the Hutzler items because he

believed the Hutzler food savers looked like “bad versions of the real thing; like a

toy.” ( Id .) In fact, on February 17, 2010, Tom Barber and Lou Henry, the designer

at A2, discussed making the Bradshaw items “contemporary,” and different from

the items in the market, which Tom felt had “no style.” ( Id .) Their goal was to

design keepers which the viewer saw as stylish, as if they had come from the chic

Italian design house, Alessi. ( Id .) That concept is memorialized in Tom Barber’s

email to Lou Henry of that same date. (JA522)

Based on the sketches and at Bradshaw’s direction, A2 created a design that

not only follows the sketches and captures the desired stylish and contemporary

theme, but is also a product which could be manufactured economically given the

operational constraints of injection molding. (JA493 ¶11) Bradshaw did not

provide an item to a designer or manufacturer and request it to copy that item.

(JA499) Bradshaw employs six (6) in-house designers and also works with outside

design firms such as A2, on which it relies to develop original product ideas and

designs. ( Id .)



8

Bradshaw, upon receiving the initial cease and desist letter from Hutzler’s

counsel, immediately sought out and received an opinion from its patent counsel,

Mr. Paul Lewis, stating that Onion and Garlic keepers did not infringe Hutzler’s

asserted patents. (JA496-497) That oral opinion was reduced to writing by Mr.

Lewis and provided to Bradshaw. ( Id.) Bradshaw relied on this opinion in having a

good faith belief it was not infringing any Hutzler patents. (JA493)

VI. SUMMARY OF THE ARGUMENT

In complete contravention of the evidence presented and the law of design

patents and unfair competition, the district court found that Hutzler had a

likelihood of success on the merits for its claims of infringing its ’114 Patent and

its ’463 Patent, as well as a likelihood of success on the merits for its unfair

competition claim. (JA36)

If this Court were to sustain the district court’s finding of a likelihood of

success on the merits of Hutzler’s design patent infringement claim, it would

complete in a mere twenty-five years a stunning 180-degree about-face as to the

scope of protection afforded a design patent. In 1988, this Court proclaimed that,

“[d]esign patents have almost no scope. The claim … in all design cases, is limited

to what is shown in the application drawing.” In re Mann, 861 F.2d 1581, 1582

(Fed. Cir. 1988). Under the facts of the present case, a finding of a likelihood of

success on the claims of infringement of the ’114 Patent and ’463 Patent by



9

Bradshaw’s Onion Keeper and Garlic Keeper, respectively, would mean that

design patents have nearly limitless scope, that functional elements can be claimed

and that expressly claimed features can be ignored. Moreover, if the Court were to

maintain the district court’s finding of a likelihood of success on Hutzler’s unfair

competition claim, the Court would countenance the expansion of patent rights

through trademark rights – and thereby effectively granting monopolies to any first

comer that effectively advertises its products – and moreover would distort both

bodies of law by allowing a party to claim protected rights in the natural shapes of

vegetable produce.

VII. STANDARD OF REVIEW

“The governing standard of review on appeal of a grant or denial of a

preliminary injunction is abuse of discretion.” Am. Signature, Inc. v. United States,

598 F.3d 816, 823 (Fed. Cir. 2010) (citing Titan Tire Corp. v. Case New Holland,

Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009)). “‘An abuse of discretion may be

established under Federal Circuit law by showing that the court made a clear error

of judgment in weighing the relevant factors or exercised its discretion based on an

error of law or clearly erroneous fact finding.’” Id. (quoting Qingdao Taifa Group

Co. v. United States, 581 F.3d 1375, 1379 (Fed. Cir. 2009)).



10

VIII. ARGUMENT

In determining whether a preliminary injunction should issue, the Court

must evaluate:

“[a] plaintiff seeking a preliminary injunction must

establish [1] that he is likely to succeed on the merits,

[2] that he is likely to suffer irreparable harm in the

absence of preliminary relief, [3] that the balance of

equities tips in his favor, and [4] that an injunction is in

the public interest.”

Am. Signature, Inc. v. United States, 598 F.3d 816, 823 (Fed. Cir. 2010) (quoting

Winter v. NRDC, Inc., 129 S. Ct. 365, 374, 172 L. Ed. 2d 249 (2008)). From the

four-factor test, the plaintiff must prove a likelihood of success on the merits. The

failure of the plaintiff to prove a likelihood of success is fatal to the plaintiff’s

motion for a preliminary injunction and the remaining factors need not be

evaluated. Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1385 (Fed.

Cir. 2009). The district court’s finding of a likelihood of success on the merits by

Hutzler on its design patent infringement and its unfair competition claims is

predicated upon multiple errors of law and erroneous fact finding.

A. The District Court Interpreted The Scope Of The ’114 Patent And

The ’463 Patent Far Beyond The Drawings Of The Patents

The Court reviews claim construction of a patent (including a design patent)

de novo on appeal. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed.

Cir. 2010). The test for determining infringement of a design patent is the



11

“ordinary observer” test, where the court compares the accused device with the

drawings of the patent through the eyes of the ordinary observer. Egyptian

Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 677 (Fed. Cir. 2008). “[D]ifferences

between patented and accused designs are not irrelevant. Courts should take into

account similarities and differences” in determining whether or not consumer

deception could occur. FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 527

(Fed. Cir. 1987). Although the Egyptian Goddess case removed “point of novelty”

as the second prong of the test for design patent infringement, a patentee cannot

protect a design that he did not invent, and cannot claim protection for a design

that is in the prior art.

1. The District Court Failed To Consider The Prior Art As

Part Of The Ordinary Observer Analysis

“The ordinary observer test of Gorham require[s] that the perspective of the

ordinary observer be informed by a comparison of the patented design and the

accused design in light of the prior art.” Egyptian Goddess, Inc. v. Swisa, Inc., 543

F.3d 665, 674 (Fed. Cir. 2008) (emphasis added). In neither the district court’s

opinion granting the preliminary injunction nor the district court’s opinion denying

the motion for reconsideration was there any consideration of the prior art in

determining the scope of the Hutzler patents. (JA10 (citing the Egyptian Goddess

ordinary observer test without consideration that the ordinary observer has

knowledge of the prior art)). The Court must consider the prior art to determine the



12

proper scope of the design patent. “The Egyptian Goddess standard is engineered

to avoid the anomalous result where a design that simply embodies a piece of prior

art is found to infringe.” See Wing Shing Prods. (BVI) Co. v. Sunbeam Prods., 665

F. Supp. 2d 357, 361 (S.D.N.Y. 2009). This “anomalous result” is indeed the result

occurring in the present case—Bradshaw is found to be infringing only because it

embodies elements found in the prior art.

The major impetus for the district court’s improper finding of likelihood of

success on the patent infringement claims is that Bradshaw’s products are shaped

like an onion and a garlic bulb. The district court explicitly stated that its finding

that Hutzler had established a likelihood of success on the merits of its patent

infringement claims was premised in large part on its perception that “[t]he patent

designs and Bradshaw’s products have the same shape – that of onion and garlic

bulbs – in the same proportions.” (JA26) The district court was unwilling to

acknowledge that these same shapes – that of an onion and garlic bulbs – are also

the same size and proportions of red onions and elephant garlic bulbs. ( Id .)

Although what it seems like an unnecessary request for common sense and

unnecessary, Bradshaw is compelled to ask that the Court take judicial notice of

the fact that red onions and elephant garlic bulbs of similar size, shape, proportion,

and color have existed at least one year prior to the filing of the ’114 Patent and the

’463 Patent, and thus are prior art to the ’114 Patent and the ’463 Patent.



13

The existence of similarly-shaped produce as prior art is the kind of fact the

Court must take notice of. “The court may judicially notice a fact that is not subject

to reasonable dispute because it: (1) is generally known within the trial court’s

territorial jurisdiction; or (2) can be accurately and readily determined from

sources whose accuracy cannot reasonably be questioned.” Federal Rule of

Evidence 201(b). It is proper for the Federal Circuit to take judicial notice of facts

that meet the criteria of F.R.E. 201(b). Federal Rule of Evidence 201(d) provides

that “‘judicial notice may be taken at any stage of the proceeding,’ and the

Advisory Committee’s note to this provision explains that it permits the taking of

judicial notice at any stage, ‘whether in the trial court or on appeal.’” Government

of Canal Zone v. Burjan, 596 F.2d 690, 694 (5th Cir. 1979).

Hutzler cannot dispute that the requirements of judicial notice are met. First,

onions and garlic are available at any grocery store anywhere in the country. Red

onions and elephant garlic bulbs have existed ubiquitously since time immemorial

and in the United States certainly since its founding, thus meeting the requirements

of 35 U.S.C. § 102(b). See In re Glavas, 230 F.2d 447, 450 (CCPA 1956) (“the use

to which an article is to be put has no bearing on its patentability as a design

and . . . if the prior art discloses any article of substantially the same appearance as

that of an applicant, it is immaterial what the use of such article is . . . Accordingly,

so far as anticipation by a single prior art disclosure is concerned, there can be no



14

question as to nonanalagous art in design case.”). Second, the size of onions and

garlic blubs can readily ascertained by visiting the produce section of any grocery

store.

In particular, the general shape and qualities of well-known products are the

types of facts that are proper for the Court to take judicial notice of. Examples

include taking judicial notice of characteristics of snowmen, Eden Toys, Inc. v.

Marshall Field & Co., 675 F.2d 498 (2d Cir. 1982), of characteristics of bicycles,

Marcyan v. Nissen Corp., 578 F. Supp. 485 (N.D. Ind. 1982), aff’d , 725 F.2d 687

(7th Cir. 1983), and of characteristics of ice cream colors. Dippin’ Dots, Inc. v

Frosty Bites Distrib., LLC , 369 F.3d 1197 (11th Cir. 2004). These are the kind of

“self-evident” facts the court can take judicial notice of. See Hardy v. Johns-

Manville Sales Corp., 681 F.2d 334 (5th Cir. 1982). Moreover, once the

requirements of F.R.E. 201(b) are met, the Court is required to take notice under

F.R.E. 201(c)(2). See Haye v. United States, 461 F. Supp. 1168 (C.D. Cal. 1978).

The Court must consider the size, shape, color, and proportions of red onions and

elephant garlic bulbs when evaluating the scope of the Hutzler patents.

In addition to the shape of red onions and elephant garlic bulbs, the district

court failed to consider the prior art made of record. Most notably, the district court

found likelihood of success on the merits on infringement of the ’114 Patent based

on three particular features: “The ’114 Patent and Bradshaw’s Onion Keeper



15

likewise have (1) vertical striations running the length of the product; (2) striations

that convene in a narrow ‘stem’ at the top; and (3) a horizontal line running across

the middle of the container where the products open.” (JA26)

Remarkably, all three of these elements are found in the exact same piece of

prior art. On the record before the district court was U.S. Patent No. 4,795,033,

titled “Packaging and Storage Container,” filed on July 10, 1987 (the “‘033

Patent”). (J751) The ‘033 Patent disclosed numerous food-shaped containers,

designed to look like the item of produce it was designed to contain. Moreover,

Figures 1-3 show an onion-shaped onion container, with Figure 1 reproduced

below (both in original form and rotated 90 degrees):1

Figure 1, U.S Patent No. 4,795,033

1The orientation of particular features in the prior art are merely arbitrary

descriptors (i.e. “vertical” is not with reference to any particular axis) does not

disqualify the reference as relevant prior art. Cf. In re Japikse, 181 F.2d 1019, 86

USPQ 70 (CCPA 1950).



16

The onion-shaped container of the ‘033 Patent depicts striations running the length

of the product from the “top” of the onion to the “bottom” of the onion. The ‘033

Patent depicts striations that convene in a narrow “stem” at the “top” of the onion.

The ‘033 Patent depicts a line running along the circumference of the middle of the

container where the product is made to open. As all three of these elements can be

found in the prior art of record, it was legally insufficient for the district court to

premise a finding of infringement of the ’114 Patent upon elements solely found in

that prior art. The ’114 Patent must be construed much more narrowly than the

handful of generic elements recited by the district court to avoid encroaching onto

the prior art and invalidating the patent.2

2In January 2010, Dennis Crouch, Associate Professor, University of Missouri

School Law and author of the prominent patent law blog PatentlyO.com,

performed a study of 1049 design patent applications that had issued during the

previous twelve months (which is the same timeframe during the pendency of the

‘114 Patent and the ‘463 Patent). His study found that only 1.2% of design patent

applications received a prior art rejection during its pendency before the USPTO.

Moreover, 81.6% of applications never received any rejection during its pendency

before the USPTO. Mr. Crouch’s study corroborates the USPTO’s reported allowance rate of about 90% for design patents. (JA747) The Hutzler patent

applications in this case were also granted without a single prior art rejection.

(JA712) Although Bradshaw does not ask the Court to disregard the presumption

of validity of design patents, the Court must at least see the failure of both the

USPTO and the District Court to consider the scope of a design patent in view of

the prior art.



17

2. The District Court Ignored Expressly Claimed Limitations

Recited In The ’114 Patent and the ’463 Patent

The district court, in its Memorandum correctly notes that “[i]t is the

drawings in the patent, not just one feature of the claimed design, that define the

patent design,” (JA 19), quoting KeyStone Retaining Wall Sys., Inc. v. Westrock,

Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993), and, citing Richardson v. Stanley

Works, Inc., 597 F.3d 1288, (Fed. Cir. 2010), and further emphasized “the decisive

importance of drawings in a design patent.” (JA18) Finally, as the Court in

Contessa Food Prods. Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir. 2002) stated:

If features appearing in the figures are not desired to be

claimed, the patentee is permitted to show the features in

broken lines to exclude those features from the claimed

design, and the failure to do so signals inclusion of the

features in the claimed design.

Id. at 1378. Thus, every line and feature depicted in the drawings is an element of

the claimed design, either the surface ornamentation or the product configuration,

and must be considered in construing the scope of the claims and analyzing

infringement. See Hosly Intern. Trading Corp. v. K Mart Corp., 237 F. Supp. 2d

907, 910 (N.D.Ill. 2002). Yet, despite the critical importance of all of the elements

shown in the patent drawings, the district court concluded that:

The claims extend to the overall design of the onion and

garlic containers—including the shape and proportions of

the products and the horizontal line across the middle of

the onion container and two-thirds of the way down the

garlic container.



18

(JA24) The district court’s only mention of the relevance of the vertical lines

shown in the drawings of the ’114 patent erroneously references vertical lines

“running the length of the product.” (JA26) The drawings of the ’114 patent show

lines of varying length on the surface of the product, none of which “run the length

of the product.” (JA52)

Moreover, in the district court’s interpretation of the claims of the ’463

garlic patent, there is no mention whatsoever of the surface lines shown in the

drawings. Even if there were, however, and similarly to the ’114 patent above,

none of those lines “run the length of the product,” as they do in the Bradshaw

garlic saver product. (JA252) Moreover, as shown in Figure 8 of the ’463 Patent,

there is a very distinctive design in the center of the garlic container. (JA58)

Specifically, the design includes surface texturing with a picture of what appears to

represent a piece of garlic. ( Id.) In the Bradshaw garlic container, however, there

is surface texturing, but this surface texturing is a series of broken concentric

circles. (JA256) In addition, the bottom of the Bradshaw garlic container has four

(4) holes that are arranged in two (2) opposite pairs. ( Id .) This design and

arrangement of holes provides a very different “look” to the Bradshaw garlic

container than that of the patented design. ( Id.)

No other mention whatsoever is made to the surface lines shown in the

patents, nor to the fact that those lines were considered in any way to be important



19

elements of the claims. In fact, the court seems to have “read-out” those surface

lines altogether. In other words, the outside surface appearance of the patented

design, as claimed by the lines shown in the patented drawings, has been wiped-

away by the district court’s interpretation of the drawings/claims, rendering a

patent drawing that is limited solely to the solid lines depicting the shape of the

design in silhouette and the center line. As the Court itself acknowledged in citing

Keystone and Richardson, this is not proper.

3. The District Court Improperly Included FunctionalElements As Part Of The Scope Of The ’114 Patent And

The ’463 Patent

The district court erred by defining the function of the Hutzler designs too

narrowly. As a result, the district court erroneously held the shape of Hutzler’s

products are non-functional. (JA35) The court went to hold that “Hutzler has

established a likelihood of success on the merits of its patent infringement claim.”

(JA36)

“Design patents do not and cannot include claims to the structural or

functional aspects of the article.” Lee v. Dayton-Hudson Corp., 838 F.2d 1186

(Fed. Cir. 1988). A design that “copies the utilitarian or functional features of a

patented design is not an infringement unless the ornamental aspects are also

copied, such that the overall ‘resemblance is such as to deceive.’” Id. at 1189

(quoting Gorham Co. v. White, 81 U.S. 511, 528 (1872)).



20

The district considered only the food storage function of the patented

designs. It did not consider the communication function of the designs, i.e.,

conveying to users that which is stored inside the container, which is an equally

important function of the product design.

Admittedly, a sealed container of any shape and size could be used to store

foods in a refrigerator as long as the inside of the container is bigger than the food

to be stored and the outside of the container is smaller than the inside of the

refrigerator. There are a limited number of ways in which the container can

simultaneously store the food and communicate what is contained inside the

container, however. For example, the container can be clear, it can have a label on

which a description can be written, and it can have an external shape that correlates

to the food stored inside.

The idea of a container having an external shape that correlates to the food

stored inside is not the proper subject of design patent protection. The structural

and functional aspects of an embodiment of that idea may be protected by a utility

patent. Only the ornamental features of such a container, whether surface

ornamentation or product configuration, can be protected with a design patent.

The district court correctly identified the factors to consider when discerning

the ornamental from the functional aspects in a design containing both:

whether the protected design represents the best design;

whether alternative designs would adversely affect the



22

tail and fins on OddzOn’s design add stability in the

same manner as do the tail and fins found on darts or

rockets. They are no less functional simply because

“tossing balls” can be designed without them.

OddzOn Prods., 122 F.3d at 1406.

Similarly in the present case, having a food storage container shaped like the

food stored in it is not required, but doing so enhances the functionality of the

container by communicating the contents of the container. The shapes in the

patents-in-suit are designed to store food, but they also are designed to talk to

consumers and let them know what is inside. It is this enhanced functionality that

dictates the shape of the containers and enhances their usefulness and functionality

by making it easier to recognize what they contain just as the fins and tail make the

football in Oddzon easier to throw.

Hutlzer itself promotes the utility of the shape of the designs in issue – also a

factor listed in Berry Sterling. (JA440-447) In reference to its onion saver

product, as well as for several others in its food saver line, Hutzler promotes that

the design makes the product “[e]asy to find in the refrigerator,” and the containers

are “[m]ade to look just like an onion, the Onion Saver® will never be lost or

forgotten in the fridge.” (JA433-439) “If a seller advertises the utilitarian

advantages of a particular feature, this constitutes strong evidence of

functionality.” Disc Golf Ass’n v. Champion Discs, 158 F.3d 1002, 1009 (9th Cir.

1998).



23

According to the Hutzler marketing materials, its products are easy to find

because they are shaped like an onion or garlic bulb. This sort of product

promotion is the kind of advertising referred to by the Court in Berry Sterling as

tending to prove the design is dictated by function and is not protectable with a

design patent. The district court erred by either not considering these factors, or by

not according them appropriate weight. As a result, the court erred as a matter of

law in construing the claims to cover the general product configuration depicted in

the patented designs. This over-broad claim construction resulted in the court

mistakenly concluding that Hutzler established a substantial likelihood of success

on the merits of its patent infringement claim. Construed properly, Hutzler is

unlikely to prove the Bradshaw designs infringe the patents. Construed improperly

as done so by the district court, Hutzler still is unlikely to be successful on the

merits of its patent infringement claims, because the patents are invalid as obvious

and anticipated by the prior art.

4. Upon Proper Interpretation Of The ’114 Patent And The

’463 Patent, The Bradshaw Products Cannot Infringe

a. The Design Of The ’114 Patent Is Not Substantially

Similar To The Bradshaw Onion Keeper

The ’114 Patent includes 3 figures, which are directed to the ornamental

design of an onion container, as shown and described. (JA53) As stated in

Contessa Food Products, Inc. v. Conagra, Inc., it was held that “the ‘ordinary



24

observer’ analysis is not limited to the ornamental features of a subset of the

drawings, but instead must encompass the claimed ornamental features of all

figures of a design patent.” 282 F.3d 1370, 1379 (Fed Cir. 2002).

As can be seen from Figure 1 of the ’114 Patent, the outside circumference

of the onion container is a perfect circle. (JA53) In addition, the onion container

includes a surface texture that looks like the skin of an onion and is solid, not

transparent. ( Id.) This surface texture is uneven and arbitrary, but includes

generally radially extending lines in the top view that converge at a center of the

circular onion container. ( Id .) The center of the onion container also includes a

very narrow top or tip surface. ( Id.)

Conversely, the outside circumference of the Bradshaw onion keeper is not a

perfect circle, but has a scalloped edge in top view. (JA242) In addition, in the

Bradshaw onion keeper, the top view clearly shows that the material is transparent,

not solid as in Figure 1 of the ’114 Patent and does not resemble an onion at all.

( Id .) This provides a very different “look” to the Bradshaw onion keeper, since the

internal surfaces of the onion keeper are visible through the top. The Bradshaw

onion keeper has a smooth surface, except for the twelve (12) very distinctive,

radially extending indentations. ( Id .) Finally, the Bradshaw onion keeper has a

very wide top or tip surface, which, due to the converging of the twelve (12)

indentations, the top or tip surface is circular, but is not a perfect circle, having a



25

scalloped edge which mimics the outside circumference of the Bradshaw onion

keeper.

An examination of the side view of the ’114 Patent and the Bradshaw onion

keeper further reveal that the overall appearance of the design of the ’114 Patent

and the Bradshaw onion keeper are not the same. Figure 1 of the ’114 Patent

includes a surface texture that looks like the skin of an onion. (JA53) This surface

texture is uneven and arbitrary. In Figure 2 of the ’114 Patent, the surface texture

includes generally vertically extending lines in the center, and angled lines at the

opposite sides that converge at a top center of the circular onion container. (JA53)

The center of the onion container is very narrow on the top, so that the surface

texture comes to a point. ( Id .) There is also a separation at the vertical midsection

of the onion container. ( Id .) The surface texture above the separation and below the

separation is generally continuous, and the material is clearly solid, not transparent.

( Id .)

The overall appearance of the Bradshaw onion keeper is quite different. As

mentioned above, there is no surface texture that looks like the outside of a real

onion. Of the 12 vertical indentations in the Bradshaw onion keeper, in any side

view, there are only 4-6 that are ever visible. These indentations are very

recognizable when viewing the side of the Bradshaw onion keeper, in stark

distinction to the hundreds of arbitrary lines that appear in Figure 2 of the onion



26

container of the ’114 Patent. The Bradshaw onion keeper also has a very thick top,

and the angle of the top from horizontal is not the same as in Figure 2 of the ’114

Patent.

The Bradshaw onion keeper includes a separation point where an ordinary

observer would recognize one of the biggest differences between the design of the

’114 Patent and the Bradshaw onion keeper; namely that the Bradshaw onion

keeper above the separation is transparent, whereas the bottom below the

separation is solid, providing a very different “look” to the Bradshaw onion keeper.

(JA244) The top portion provides a reflection back to the ordinary observer, while

also allowing the rear part of the onion keeper to be seen through the surface of the

front part, providing a two-toned appearance to the Bradshaw onion keeper, which

does not have the appearance of the skin of an onion, as in the design of the ’114

Patent.3

The numerous vertical lines in the design of the ’114 Patent create a

completely different overall appearance to the onion container when compared to

the Bradshaw onion keeper. As the Court stated in Elmer v. ICC Fabricating, Inc.,

67 F.3d 1571 (Fed. Cir. 1995), since vertical lines are included in the drawings,

their effect on the overall appearance must be considered. Id. at 1577. Since the

3The transparent top portions of the Bradshaw products also provide for a visual of

the produce when stored in the container, thereby also potentially changing the

overall appearance of the products to the consumer when in use.



27

Bradshaw onion keeper does not include these numerous vertical lines, which

provide the appearance of the skin of an onion, the overall appearance of the

Bradshaw onion keeper is not the same as the overall appearance of the ’114

Patent.

Examining the last drawing of the ’114 Patent, the surface texture in Figure

3 of the ’114 Patent looks like the skin of an onion and the outer circumference is a

perfect circle. In addition, Figure 3 of the ’114 Patent appears to include a

gradually curving surface from the sides to the bottom, until the bottom center

ultimately becomes flat. The sides of the onion container curve downwardly on the

outside (see Figure 2), and then have a more abrupt curve at the bottom, but there

is no clear line of demarcation between the side walls and the bottom wall, as seen

in the partial concentric circles shown surrounding the center of the bottom in

Figure 3 of the ’114 Patent.

Referring to the photograph of the bottom of the Bradshaw onion keeper, the

surface texture is also not present, and the outer circumference is generally

circular, but also has a scalloped edge. In addition, there is a ridge formed at a

spaced location from the center of the onion keeper. This ridge is formed from a

recessed bottom. In addition, there is a narrow portion outside of the ridge, which

is flat, and then gradually curves into the side walls (see Figure 2 of the Bradshaw



28

onion keeper). In view of this, the bottom of the Bradshaw onion keeper is very

different from Figure 3 of the ’114 Patent.

Clearly, the overall appearance of the Bradshaw onion keeper is very

different from the entire design of the onion container in Figures 1-3 of the ’114

Patent. Therefore, an ordinary observer would not consider the two designs to be

“substantially the same,” as would be required to meet “ordinary observer” test for

design patent infringement. Gorham, 81 U.S. at 528. Therefore, such an observer

would not be deceived to purchase the Bradshaw onion keeper, supposing it to be

the design of the ’114 Patent.

b. The Design Of The ’463 Patent Is Not Substantially

Similar To The Bradshaw Garlic Keeper

The ’463 Patent includes 8 figures directed to the ornamental design of a

garlic container. (JA55-58)

Beginning with an examination of Figure 2 of the ’463 Patent, while the

garlic container of the ’463 Patent is generally circular in top view, the outside

circumference of the garlic container is not a perfect circle, but rather has a

diameter which changes around the entire circumference in an arbitrary manner.

(JA248) In addition, the garlic container includes a surface texture that is non-

transparent, and looks like the skin of a piece of garlic and includes radially

extending lines that terminate at a spaced location from the center of the garlic



29

container. ( Id .) The center of the garlic container also includes a top or tip surface

that is a perfect circle in the top view. ( Id .)

Referring to the top view of the Bradshaw garlic keeper, while it is generally

circular, the outside circumference is not a perfect circle, but has a scalloped edge,

and, most notably, is also symmetric, not arbitrary. ( Id .) In addition, in the

Bradshaw garlic keeper, the top view clearly shows that the material is transparent,

not solid as in Figure 2 of the ’463 Patent. ( Id .) This provides a very different

“look” to the Bradshaw garlic keeper, since the internal surfaces of the garlic

keeper are visible through the top, and do not resemble the skin of a piece of garlic.

The Bradshaw garlic keeper has a smooth surface, except for the eight (8) very

distinctive, radially extending indentations. These indentations extend to and

converge at the tip or top of the Bradshaw garlic keeper, and are not spaced

therefrom as in Figure 2 of the ’463 Patent. Actually, the indentations do not

resemble a piece of garlic at all, as a real piece of garlic is not smooth with radial

indentations as is the Bradshaw garlic keeper. Finally, the Bradshaw garlic keeper

has a top or tip surface, which, due to the converging of the eight (8) indentations

is generally circular, but is not a perfect circle, having a scalloped edge similar to

the outside circumference of the Bradshaw garlic keeper. ( Id .)

Referring to Figures 3-6 of the ’463 Patent the overall appearance of the

design of the ’463 Patent and the Bradshaw garlic keeper are not the same. (JA250)



30

The ’463 patent garlic container includes a surface texture that is uneven and

arbitrary; looks like the skin of a piece of garlic, and includes generally vertically

extending lines in the center, and angled lines at the opposite sides that converge

toward the top or tip of the circular garlic container. ( Id .) However, the lines are

spaced substantially from the top or tip of the garlic container. ( Id .) The top or tip

of the garlic container is angled at a very steep angle. ( Id .) Also, the surface texture

above the separation and below the separation is generally continuous, and the

material is clearly solid, not transparent. ( Id .) Finally, there are apertures formed

near the bottom of the garlic container in each of Figures 3-6 of the ’463 Patent.

( Id .)

In the Bradshaw garlic keeper there is no surface texture that looks like the

outside of a real piece of garlic and there are eight (8) vertically extending

indentations in the entire Bradshaw garlic keeper. ( Id .) In any side view, there are

only 3-4 that are ever visible at one time. ( Id .) This is in stark distinction to the

twenty (20) or more arbitrary lines that appear in the side views of the garlic

container of the ’463 Patent. ( Id .) The Bradshaw garlic keeper top or tip does not

include the distinctive angle that is present in the side views of the ’463 Patent, and

the Bradshaw garlic keeper is symmetric. ( Id .) Therefore, it is the same from the

side no matter from which direction it is viewed. ( Id .) The garlic container of the



31

’463 Patent, with its arbitrary vertical lines and slanted top are different in each of

the side views (Figures 3-6). ( Id .)

The Bradshaw garlic keeper also includes a separation point where an

ordinary observer would recognize one of the biggest differences between the

design of the ’463 Patent and the Bradshaw garlic keeper. Specifically, the top of

the Bradshaw garlic keeper above the separation is transparent, whereas the bottom

below the separation is solid. ( Id.) This difference of material provides a very

different “look” to the Bradshaw garlic keeper. The top portion provides a

reflection back to the ordinary observer, while also allowing the rear part of the

garlic keeper to be seen through the surface of the front part and also providing for

a view of the produce when it is stored in the container. Also, the dramatic

difference between the top and bottom portions of the Bradshaw garlic keeper

provides a two-toned appearance to the Bradshaw garlic keeper, which does not

have the appearance of the skin of a piece of garlic, as in the design of the ’463

Patent. ( Id .) The same reasoning would apply to the perspective view (Figure 1) of

the ’463 Patent. (JA252)

In Figure 7 of the ’463 Patent, the same visual appearances mentioned above

with regard to the other figures of the ’463 Patent are also present. (JA254)

Specifically, the surface texture in Figure 7 of the ’463 Patent looks like the skin of

a piece of garlic and the outer circumference is random and arbitrary. ( Id .) In



32

addition, Figure 7 of the ’463 illustrates that there are five (5) tear drop shaped

holes formed in the bottom of the garlic container. ( Id .) Finally, there is no clear

line of demarcation between the side walls and the bottom wall. ( Id .)

In the Bradshaw garlic keeper, the surface texture is also not present, and the

outer circumference is generally circular, but also has a scalloped edge. ( Id .) In

addition, there is a ridge formed at a spaced location from the center of the garlic

keeper. ( Id .) This ridge is formed from a recessed bottom. ( Id .) In addition, there is

a narrow portion outside of the ridge which is flat, and then gradually curves into

the side walls. ( Id .) Furthermore, there are only four (4) rectangularly shaped holes

in the bottom. ( Id .) These holes are less in number and are also a completely

different shape from the tear drop shaped holes in Figure 7 of the ‘436 Patent. ( Id .)

In addition, the holes are spaced around the center of the Bradshaw garlic keeper,

so that there are two (2) pairs of holes, which if extended would form a cross. ( Id .)

In view of the above differences, the ordinary observer would conclude that the

bottom of the Bradshaw garlic keeper is completely different from Figure 7 of the

’463 Patent.

In Figure 8 of the ’463 Patent, in addition to the five (5) holes mentioned

above with regard to Figure 7, there is a very distinctive design in the center of the

garlic container. (JA256) Specifically, the design includes surface texturing with a

picture of what appears to represent a piece of garlic. ( Id .) In the Bradshaw garlic



33

container, however, there is surface texturing, but this surface texturing is a series

of broken concentric circles. ( Id .) In addition, there are the four (4) holes that are

arranged in two (2) opposite pairs. ( Id .) This design and arrangement of holes

provides a very different “look” to the Bradshaw garlic container.

In view of the above, Bradshaw respectfully submits that the overall

appearance of the Bradshaw garlic keeper is very different from the entire design

of the garlic container in Figures 1-8 of the ’463 Patent. Therefore, an ordinary

observer would not consider the two designs to be “substantially the same,” as

would be required to meet “ordinary observer” test for design patent infringement.

Gorham, 81 U.S. at 528. Therefore, such ordinary observer would not be deceived

to purchase the Bradshaw garlic keeper, supposing it to be the design of the ’463

Patent.

B. The District Court Failed to Apply the Polaroid Factors In

Evaluating A Likelihood of Confusion in Relation To Hutzler’s

Unfair Competition Claim

Somewhat incredibly, a district court residing under the regional jurisdiction

of the Court of Appeals for the Second Circuit failed to undertake a likelihood of

confusion analysis under the long-established Polaroid factors, the quintessential

recitation of factors determining likelihood of confusion. Long-established Second

Circuit precedent requires that consideration is paid to every Polaroid factor in

determining a likelihood of confusion, including a recitation why certain factors



34

are inapplicable. One of the most important Polaroid factors, the strength of the

mark, was never analyzed by the district court.4

To succeed on an unfair competition claim under New York common law,

the plaintiff must prove “1) a likelihood of confusion; and 2) the defendant’s bad

faith.” New York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d

305, 325 (S.D.N.Y. 2010). Under New York law, “the elements necessary to

prevail on causes of action for trademark infringement and unfair competition . . .

mirror the Lanham Act claims.” Lopez v. Gap, Inc., No. 11-3185, 2012 U.S. Dist.

LEXIS 108602, at *67 (S.D.N.Y. Aug. 2, 2012) (quoting Lorillard Tobacco Co. v.

Jamelis Grocery, Inc., 378 F. Supp. 2d 448, 456 (S.D.N.Y. 2005)). In fact, the

Second Circuit has held that the claim of unfair competition under New York Law

and a Lanham Act claim are the same, except that the state law claim requires the

additional element of bad faith. Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d

137, 149 (2d Cir. 1997) (quoting Girl Scouts v. Bantam Doubleday Dell Publ’g

Group, Inc., 808 F. Supp. 1112, 1131 (S.D.N.Y. 1992)). Likewise, this Court has

explicitly held that under New York law, “[i]n addition, to succeed on the merits of a

common law claim of unfair competition, [a plaintiff] must couple its evidence

supporting liability under the Lanham Act with additional evidence demonstrating

4And as explained in Section C, it was erroneous for the district court to conclude

Hutzler had any protectable interest in the “entirety” of its food container product

line.



35

[the defendant’s] bad faith.” Louis Vuitton Malletier v. Dooney & Bourke, Inc., 340 F.

Supp. 2d 415, 436 (S.D.N.Y. 2004) (internal quotations omitted).

The district court failed to consider at all in entering its Order on Preliminary

Injunction the factors recited in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d

492 (2d Cir. 1961) in determining a likelihood of confusion. However, since the

test for likelihood of confusion under New York common law has been adjudicated

to be the same as the test for likelihood of confusion under the Lanham Act, the

test applied must be the same. It was an abuse of discretion by the district court to

fail to consider at all the Polaroid factors in determining whether a likelihood of

confusion exists. The Second Circuit expounded on this point in the context of a

preliminary injunction:

In determining a likelihood of confusion, it has long been

the practice of this Circuit to apply the multi-factor

balancing test articulated by Judge Friendly in Polaroid

Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d

Cir. 1961). See Arrow Fastener Co. v. Stanley Works, 59

F.3d 384, 391 (2d Cir. 1995) (“Under the law of this

Circuit, courts deciding whether a plaintiff has

established likelihood of confusion must consider the

eight [Polaroid ] factors.”). Although we have recognized

that the application of the Polaroid test need not be rigid,

it is nevertheless “incumbent upon the district judge to

engage in a deliberate review of each factor, and, if afactor is inapplicable to a case, to explain why.” Id. at

400; see also Thompson Med. Co. v. Pfizer Inc., 753 F.2d

208, 214 (2d Cir. 1985) (“No single Polaroid factor is

pre-eminent, nor can the presence or absence of one

without analysis of the others, determine the outcome of

an infringement suit.”).



36

We review a denial of a preliminary injunction for abuse

of discretion, “which occurs, inter alia, when the district

court applies the wrong legal standard.” Genesee

Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 142 (2d

Cir. 1997). In this case, the district court did not apply

the Polaroid test to the facts before it, or even mention

the test in its opinion. Thus, it cannot be said that the

court engaged in a deliberate review of any, much less

all, of the Polaroid factors as required under the law of

this Circuit.

New Kayak Pool Corp. v. R&P Pools, Inc., 246 F.3d 183, 185 (2d Cir. 2001). The

Second Circuit vacated the district court’s decision and remanded for the district

court to apply the Polaroid factors. These same Polaroid factors are applied in

allegations of unfair competition. See Natural Organics, Inc. v. Nutraceutical

Corp., 426 F.3d 576, 578 (2d Cir. 2005).

The eight Polaroid factors are: 1) the strength of the plaintiff’s mark; 2) the

similarity of plaintiff’s and defendant’s marks; 3) the competitive proximity of the

products; 4) the likelihood that plaintiff will “bridge the gap” and offer a product

like defendant’s; 5) actual confusion between products; 6) good faith on the

defendant’s part; 7) the quality of defendant’s product; and 8) the sophistication of

buyers. The very first one of these factors, the strength of the plaintiff’s rights, was

never analyzed or considered by the district court, and the district court explicitly

acknowledged it never analyzed whether Hutzler had any protectable mark or rights.

(JA6-7) As explained below, Hutzler is asserting rights through unfair competition

law that it simply does not possess, and through proper application of the Polaroid



37

factors, the Court must reach a conclusion there is no likelihood of confusion

between the Hutzler product line and the Bradshaw product line. At a minimum it is

reversible error that the district court failed to consider all of the Poloroid factors.

C. Hutzler Cannot Protect Under Unfair Competition Law What It

Failed To Patent

In the present action, Hutzler has brought an allegation of unfair competition

against Bradshaw for unfairly competing with its entire Food Saver Line of

products. (JA70-71) In its memorandum opinion, the Court appears to conclude

that Hutzler has invented food-shaped containers, and therefore is entitled to

protection under unfair competition law. (JA39) However, the established record

before the Court (let alone many additional examples Bradshaw provides)

demonstrates that Hutzler did not invent food-shaped containers. Rather, the

concept of food-shaped containers is already in the public domain and an idea that

any company is free to commercialize and sell.

On only the record before the Court, Bradshaw has provided evidence that,

as a matter of law, the idea of food-shaped containers was invented long before

Hutzler’s application (and commercialization) of its onion-shaped container, let

alone the remainder of its food-shaped product line. One of the references cited by

the Examiner in the ’463 Patent was U.S. Patent No. 4,795,033, titled “Packaging

and Storage Container,” filed on July 10, 1987, (the “’033 Patent”). (JA751) The

’033 Patent disclosed numerous food-shaped containers, designed to look like the



38

item of food it was containing. The drawings of the ’033 Patent are particularly

illustrative of this point, and are summarized as follows:

Figures 1 and 2 show an onion-shaped onion container;

Figures 4 and 5 show a cucumber-shaped cucumber container;

Figure 6 shows a lemon/lime-shaped lemon/lime container;

Figure 7 shows a tomato-shaped tomato container; and

Figure 8 shows a lettuce-shaped lettuce container.

Taken collectively, the ’033 Patent discloses an entire line of food-shaped

containers. The ’033 Patent expired on July 10, 2007, thereby entering the public

domain. Therefore anybody is permitted to practice the general idea of making a

line of food-shaped containers. Hutzler cannot monopolize an idea that it did not

come up with and has already been dedicated to the public. “A utility patent ‘is

strong evidence that the features claimed therein are functional’ and further that

‘one who seeks to establish trade dress protection must carry the heavy burden of

showing that the feature is not functional.’” In re Bose Corp., 476 F.3d 1331, 1336

(Fed. Cir. 2007) (quoting TrafFix Devices v. Marketing Displays, 532 U.S. 23, 121

S. Ct. 1255, 149 L. Ed. 2d 164 (2001)). However, Hutzler is not seeking to protect

through trademark rights something it had invented and disclosed in a utility

patent. Rather, Hutzler is seeking to protect through trademark rights what

someone else had invented . There are simply no rights here for Hutzler to claim

protection over, beyond those rights embodied in its own patents.



39

To the extent that the Court could even consider Hutzler having some

protectable interest in its entire product line, the district court’s factual

determination is erroneous based on an incomplete factual record. The district

court concluded that “[i]n addition to the onion and garlic containers, Bradshaw

chose to produce containers for lemons, tomatoes and green peppers, thereby

duplicating Hutzler’s entire Food Saver Line.” (JA38) What Hutzler has failed to

disclose is that the Hutzler Food Saver line of products contains many more food-

shaped containers than these five products. In addition to the aforementioned

products, Hutzler’s Food Saver line also includes an apple-shaped container, a

carrot-shaped container, a bunch of grapes-shaped container, a celery-shaped

container, a half head of lettuce-shaped container, a half grapefruit-shaped

container, a lime-shaped container, a red pepper-shaped container, a yellow

pepper-shaped container, and an orange pepper-shaped container.” (JA448-450)

Conversely, the Bradshaw line of Keeper products contains additional products as

well. Bradshaw has introduced asparagus-, cantaloupe-, and banana-shaped

containers, none of which are sold by Hutzler. (JA451-453) It is simply erroneous

to find that Bradshaw has duplicated Hutzler’s entire Food Saver Line.

To the extent there is overlap between the Bradshaw and Hutzler product

lines (and the products disclosed in the ’033 Patent), the logical basis for the

overlap is the existence of a relatively small number of unique fruits and



40

vegetables to consumers in American grocery stores. The same problem of a finite

number of choices applies to the district court’s conclusion of alleged copying the

same size and proportions of the Hutzler food-shaped containers. An onion-shaped

onion container must have the same general proportions of onions typically found

in grocery stores. The container must also have a size slightly larger than the

typical larger onions found in the grocery store. An onion-shaped onion container

the size of a golf ball cannot hold an onion and would be pointless to make.

Conversely, an onion-shaped onion container the size and shape of a football

would also be pointless, unnecessarily taking up limited space in the consumer’s

refrigerator. Hutzler’s food-shaped container line of products cannot be afforded

the presumption that there is a “virtually unlimited” number of ways to combine

visual elements where there is a demonstration of such a finite number of ways to

make a food-shaped container resembling the item of food the container is

designed to hold. As such, the Court cannot find a likelihood of confusion on the

basis of the containers having similar size and proportions.

Lastly, the district court’s conclusion that the Hutzler and Bradshaw

products are the same color is erroneous and contrary to the established factual

record. As the district court had noted, the Bradshaw products embody a “two-

tone” appearance, with the top half of the product produced from a translucent

material, while the Hutzler products are of a singular opaque color. (JA35) To the



41

extent the district court explained why it would not consider material in its patent

infringement analysis, the district court failed to provide any explanation why it

would not consider material in its likelihood of confusion analysis. Failure to

consider the two-tone appearance of the Bradshaw containers is an abuse of

discretion and must be considered as part of the likelihood of confusion test. ( Id .)

Moreover, when holding the Bradshaw and Hutzler products next to each

other, the products are not the same color. For example, the Hutzler tomato-shaped

container has a different shade of red than either of the two shades of red found on

the Bradshaw tomato-shaped container:

Hutzler Tomato Saver Bradshaw Tomato Keeper

To label both containers as the identical shade of red is erroneous and runs

afoul of the same limited design choices of size and proportion (i.e. why would

anybody produce a blue tomato-shaped container?). The same is true for the entire

product line, the remainder shown below:



42

Hutzler Green Pepper Saver Bradshaw Green Pepper Keeper

Hutzler Lemon Saver Bradshaw Lemon Keeper

Comparisons of whole product lines yield the same result, showing

remarkably different approaches to food-shaped storage between the Hutzler line

(which have a realistic appearance similar to the item of produce) against the

Bradshaw line (which could not be mistaken for a real item of produce):



43



Ultimately, it is because the Hutzler and Bradshaw products resemble the

actual produce itself that is the source of any similarity between the Hutzler and

Bradshaw products. Only when the real items of produce are inserted into the

visual analysis (for which Hutzler cannot claim protection) does any similarity

between the product lines emerge:


Sample Produce




44

As demonstrated, it is not the case that the Hutzler and Bradshaw products

are confusingly similar to each other; rather it is that the Hutzler and Bradshaw

products each resemble produce, and in strikingly different ways. Hutzler (or any

other person) cannot have any intellectual property interest in the items of produce

themselves, and the only finding of a likelihood of confusion with these products is

the confusion with the produce, not with each other’s products.

D. The District Court Failed To Find Any Facts That Establish “Bad

Faith” Committed by Bradshaw

In the District Court’s Order Granting the Preliminary Injunction, in support

of its conclusion that Bradshaw had acted in “bad faith,” the district court made

two findings of fact. First, Bradshaw and Hutzler both make similar product lines.

(JA39) Second, Bradshaw was aware of Hutzler’s products when it was developing

its products. ( Id .) Based on these two facts alone, the District Court makes the

conclusion that Bradshaw acted in bad faith when it created its product line. ( Id .)

There are significant defects with the district court’s analysis. As a general

matter, this incredible use of post hoc ergo propter hoc by the District Court would

permit the conclusion that any second entrant into the field would be found

unfairly competing with the first entrant and would effectively grant the first

entrant a monopoly short of complete (and likely willful) ignorance by the second

entrant. Specific to this case, however, the evidence presented by Bradshaw



45

demonstrates careful avoidance of Hutzler’s product line when it was creating its

product line.

1. Mere Awareness Of The Competitor’s Products Fails To

Establish “Bad Faith” On The Part Of The Competitor

The District Court cites no law to support the proposition that mere

awareness of the Huztler’s products results in a finding of “bad faith” on the part of

the defendant. This is almost certainly due to the Second Circuit unequivocally

finding that mere copying is insufficient to support a finding of bad faith. Even if

Bradshaw’s actions could be construed as “copying,” which flies in the face of the

facts, “in the absence of evidence, apart from proof of copying, that the defendant

sought to confuse consumers, bad faith should not be inferred simply from the fact

of copying.” Fun-Damental Too v. Gemmy Indus. Corp., 111 F.3d 993, 1005 (2d

Cir. 1997) accord Streetwise Maps v. VanDam, Inc., 159 F.3d 739, 745 (2d Cir.

1998) (stating “the intent to compete by imitating the successful features of

another’s product is vastly different from the intent to deceive purchasers as to the

source of the product”). Whatever “copying” Hutzler insists occurred by Bradshaw

when designing its keeper products, it is legally insufficient to support a finding of

any bad faith on Bradshaw’s part.5

5The District Court also completely ignored that over two years elapsed between

Bradshaw becoming aware of the Hutzler products and when Bradshaw brought an

independently developed design to market. (JA492, ¶¶ 4, 6)



46

2. The Facts Presented At The District Court Demonstrate

Bradshaw’s Good Faith In Avoiding Hutzler’s Product Line

In October 2009, as Bradshaw was preparing for the annual International

Housewares Association (“IHA”) tradeshow in Chicago, its head of product

development, Tom Barber gave to Jeff Boutthavon, one of Bradshaw’s designers,

some documents, including rough sketches and catalog and magazine clippings,

and stated that he wanted to talk that same day because he wanted Bradshaw to

have food keeper type products to exhibit at the IHA tradeshow in March 2010.

(JA493 ¶ 6) The clippings showed onion, garlic, pepper, tomato and lemon

containers. ( Id . at ¶ 7) None of the clippings were from Hutzler catalogs or

advertisements or showed Hutzler products. In fact, some of the clippings were of

Bradshaw’s own ProFreshionals® brand. ( Id .)

From these drawings and clippings, Jeff Boutthavon rendered a proto-type on

the computer. However, Tom Barber was not satisfied with the design and decided

to turn the project over to an outside design firm named A2. ( Id . at ¶ 8)

Bradshaw provided A2, a successful New York-based design firm, with a

box of samples that Tom Barber and his designers had purchased. ( Id . at ¶ 9) No

inventory of that box remains, but Tom Barber recalls it contained ceramic and

plastic decorative fruit and vegetable pieces, small storage containers,

Tupperware® food containers and a Hutzler food saver. ( Id .)



47

The sketches originally produced by Tom Barber and conveyed to A2 were

pencil drawings which focused on Bradshaw’s desire to produce items which were

stylish and contemporary rather than natural-looking. ( Id. at ¶ 10) While Hutzler

has alleged that Bradshaw copied Hutzler’s food saver items, quite the opposite is

true. Tom Barber wanted items that did not look like the Hutzler items because he

believed the Hutzler food savers looked like “bad versions of the real thing; like a

toy.” ( Id .) In fact, on February 17, 2010, Tom Barber and Lou Henry, the designer

at A2, discussed making the Bradshaw items “contemporary,” and different from

the items in the market, which Tom felt had “no style.” ( Id .) Their goal was to

design keepers which the viewer saw as stylish, as if they had come from the chic

Italian design house, Alessi. ( Id .) That concept is memorialized in Tom Barber’s

email to Lou Henry of that same date. (JA522)

Based on the sketches and at Bradshaw’s direction, A2 created a design that

not only follows the sketches and captures the desired stylish and contemporary

theme, but is also a product which could be manufactured economically given the

operational constraints of injection molding. (JA493 ¶ 11)

As noted above, when designing the Bradshaw food keeper products, in

addition to having been provided samples of food related items, including food

savers, and instructions to create a stylish, contemporary product, A2 was aware of

items then being sold; but Bradshaw did not, and never would, provide an item to a



48

designer or manufacturer and request it to copy that item. ( Id . at ¶ 30) Bradshaw

employs six (6) in-house designers and also works with outside design firms such

as A2. It certainly would not need such substantial design assistance if its practice

was to simply copy existing items. ( Id . at ¶ 30)

The facts presented before the district court show that Bradshaw was diligent

in pursuing its own designs for food-shaped food containers and were specifically

avoiding the Hutzler designs for its own line of products.

3. The District Court Ignored Bradshaw’s Reliance On OpinionOf Counsel In Avoiding Infringement Of The Hutzler Patents

Bradshaw also provided in detail the circumstances of its reliance on a legal

opinion of counsel to insulate itself from any allegation of impropriety. (JA473)

Bradshaw’s reliance on opinion of counsel defeats the allegation of bad faith. See

W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 575 (2d Cir. 1993)

(finding of “good faith” where defendant relies on advice of counsel).

The district court’s failure to consider Bradshaw’s reliance on opinion of

counsel ignores the fact that Bradshaw, upon receiving the initial cease and desist

letter from Hutzler’s counsel, immediately sought out and received an opinion

from its patent counsel, Mr. Paul Lewis, stating that Onion and Garlic keepers did

not infringe Hutzler’s asserted patents. (JA496-497) That oral opinion was later

reduced to writing by Mr. Lewis and provided to Bradshaw. ( Id.) Bradshaw relied

on this opinion and had no reason to simply capitulate to Hutzler’s assertion of



49

infringement and stop shipping the products. (JA493) Bradshaw has at all times

acted in good faith and upon the reliance of opinion of counsel.

Therefore, the entirety of the record before the district court shows that

Bradshaw has acted in good faith in the creation of its food-shaped food

containers.

IX. CONCLUSION

For all of the above reasons, the Court must find that the District Court

abused its discretion in granting Hutzler’s motion for a preliminary injunction. The

district court erred as a matter of law concluding that the Plaintiff was likely to

succeed on the merits in that its interpretation of the scope of the claim protection

for the patents in issue by improperly including functional elements, failing to take

into consideration the prior art and excluding consideration of expressly claimed

elements. The District Court also erred as a matter of law in failing to apply the

proper factors in concluding Plaintiff was likely to succeed on the merits of its

unfair competition claim. And the District Court also erred as a matter of fact in

concluding there was unfair competition by Defendants’ sale of items not subject

to any patent protection of Plaintiff. Lastly, the District Court erred as a matter of

fact in finding and concluding that the Defendant acted in bad faith.



50

Dated: July 12, 2013 Respectfully submitted,

BIRCH, STEWART, KOLASCH &

BIRCH, LLP

/s/ Robert J. Kenney

Robert J. Kenney

Michael B. Marion

BIRCH, STEWART, KOLASCH &

BIRCH, LLP

8110 Gatehouse Road, Suite 100E

Falls Church, VA 22042

Phone: (703) 205-8000

Fax: (703) 205-8050

[email protected]

ATTORNEYS FOR DEFENDANT

BRADSHAW INTERNATIONAL, INC.



ADDENDUM



UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

,--_.... -_ ..USDC SDNY

DOCUMENT

ELECTRONICALLY FILED

DOC#: l-DATE FILE-D:l- l.f'/t Z.

HUTZLER MANUFACTURING

COMPANY, INC.,

MEMORANDUM

Plaintiff, OPINION & ORDER

- against 11 Civ. 7211 (PGG)

BRADSHAW INTERNTIONAL, INC.,

Defendant.

PAUL G. GARDEPHE, U.S.DJ. :

Plaintiff Hutzler Manufacturing Company, Inc. ("Hutzler") has moved for a

preliminary injunction against Defendant Bradshaw International, Inc. ("Bradshaw"), alleging

that Bradshaw infringed Hutzler's design patents for garlic and onion storage containers. For the

reasons set forth below, Hutzler's motion will be GRANTED.

BACKGROUND

Plaintiff Hutzler is the manufacturer of a line ofplastic housewares products

called the "Food Saver Line," which is used for storing and preserving various types ofproduce.

(Cmplt. 9) Hutzler owns U.S. patents for two products in the Food Saver Line - the "Onion

Saver" and the "Garlic Saver" - which resemble the type of produce they are intended to store.

(lQJ On March 13,2007, the United States Patent and Trademark Office issued Hutzler U.S.

Patent No. D538, 114 (the '" 114 Patent"), a design patent covering the "ornamental design for an

onion container." iliL 11) On May 19,2009, the Patent and Trademark Office issued Hutzler

U.S. Patent No. D592,463 (the "'463 Patent"), a design patent protecting the "ornamental design

for a container" designed to hold garlic. (Id. 13)

Case 1:11-cv-07211-PGG Document 24 Filed 07/25/12 Page 1 of 35

- 1 -



Hutzler alleges that Defendant Bradshaw "misappropriated the design patents for

the Onion Saver and the Garlic Saver," and has sold, and currently is offering for sale, products

that infringe the' 114 Patent and the'463 Patent. (Id. 18-19)

Hutzler introduced its Food Saver Line in 2005, and sales have grown steadily

since that time. These products now account for 63 percent ofHutzler's sales. (ld. 9-10, 30)

Since Bradshaw introduced its competing products in 2011, however, Hutzler's sales have

declined by 21 percent. (ld. 31)

On October 13,2011, Hutzler filed a complaint alleging infringement of both the

'114 Patent and the '463 Patent in violation of 35 U.S.C. §§ 271(a) and (b), as well as tortious

interference with business and unfair competition under New York law. (Dkt. No.1)

On October 20, 2011, Hutzler moved for a preliminary injunction enjoining

Bradshaw from: (1) infringing, or inducing infringement of, Hutzler's patents; and (2) unfairly

competing with Hutzler's line of produce containers. (Dkt. No.4) Bradshaw argues that

Hutzler's motion should be denied because it has not demonstrated (1) a likelihood of success on

either its patent infringement or unfair competition claims, or (2) that it will suffer irreparable

harm in the absence of an injunction. (Def. Opp. Br. 1) The Court held a hearing on Hutzler's

application on January 19,2012.

DISCUSSION

I. PRELIMINARY INJUNCTION STANDARD

"The factors the trial court considers when determining whether to grant a

preliminary injunction are oflongstanding and universal applicability," Titan Tire Corp. v. Case

New Holland. Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009), and may be summarized as follows:

First . . . a court may issue a preliminary injunction . . . only if the plaintiff has

demonstrated "either (a) a likelihood of success on the merits or (b) sufficiently

2


- 2 -



serious questions going to the merits to make them a fair ground for litigation and

a balance of hardships tipping decidedly in the [plaintiff]'s favor." Second, the

court may issue the injunction only if the plaintiff has demonstrated "that he is

likely to suffer irreparable injury in the absence of an injunction." The court must

not adopt a "categorical" or "general" rule or presume that the plaintiff will suffer

irreparable harm (unless such a "departure from the long tradition of equitypractice" was intended by Congress). Instead, the court must actually consider

the injury the plaintiff will suffer ifhe or she loses on the preliminary injunction

but ultimately prevails on the merits, paying particular attention to whether the

"remedies available at law, such as monetary damages, are inadequate to

compensate for that injury." Third, a court must consider the balance of hardships

between the plaintiff and defendant and issue the injunction only if the balance of

hardships tips in the plaintiff's favor. Finally, the court must ensure that the

"public interest would not be disserved" by the issuance of a preliminary

injunction.

Salinger v. Colting, 607 F.3d 68, 79-80 (2d Cir. 2010) (internal citations omitted). In the context

of patent litigation, a "patentee's entitlement to [a preliminary] injunction is a matter largely

within the discretion ofthe trial court." Titan Tire, 566 F.3d at 1375 (citing Genentech, Inc. v.

Novo Nordisk, AlS, 108 F.3d 1361, 1364 (Fed. Cir. 1997)).

II. LIKELIHOOD OF SUCCESS

A. Patent Infringement Claim

To establish a likelihood of success on the merits of a patent infringement claim,

"the patentee seeking a preliminary injunction . . . must show that it will likely prove

infringement, and that it will likely withstand challenges, if any, to the validity of the patent."

Titan Tire, 566 F.3d at 1376 (citing Genentech, 108 F 3d at 1364).

1. Patent Validity

a.

Standards and Burdenof

Proof

"[W]hen the question of validity arises at the preliminary injunction stage . . . the

patent enjoys the same presumption of validity . . . as at other stages oflitigation." Titan Tire,

566 F.3d at 1377 (citing Canon Computer Sys., Inc. v. Nu-Kote Int'l, Inc., 134 F.3d 1085, 1088

3


- 3 -



(Fed. Cir. 1998)). Where, as here, "the alleged infringer responds to the preliminary injunction

motion by launching an attack on the validity of the patent, the burden is on the challenger to

come forward with evidence of invalidity, just as it would be at triaL" Id. "The patentee, to

avoid a conclusion that it is unable to show a likelihood of success, then has the burden of

responding with contrary evidence, which of course may include analysis and argument." Id.

"Whi le the evidentiary burdens at the preliminary injunction stage track the

burdens at trial, importantly the ultimate question before the trial court is different":

Instead of the alleged infringer having to persuade the trial court that the patent is

invalid, at this stage it is the patentee, the movant, who must persuade the court

that, despite the challenge presented to validity, the patentee nevertheless is likelyto succeed at trial on the validity issue.

Id. at 1377; see also Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1359 (Fed.

Cir. 2001) (The party seeking a preliminary injunction "need not establish the validity of a patent

beyond question," but rather must "present a clear case supporting the validity ofthe patent in

suit.") (citing Atlas Powder Co. v. Ireco Chems., 773 F.2d 1230, 1233 (Fed. Cir. 1985); Nutrition

21v. United States, 930 F.2d 867, 871 (Fed. Cir. 1991)) (internal citations omitted).

"If the alleged infringer raises a 'substant ial question' regarding invalidity, Le., asserts an

invalidity defense that the patentee cannot prove ' lacks substantial merit,' the preliminary

injunction should not issue." Entegris, Inc. v. Pall Corp., 490 F.3d 1340, 1351 (Fed. Cir. 2007)

(quoting Genentech, 108 F.3d at 1364); see also Amazon.com, 239 F.3d at 1359 ("In resisting a

preliminary injunction . . . one need not make out a case of actual invalidity. . . . The showing of

a substantial quest ion as to invalidity thus requires less proof than the clear and convincing

showing necessary to establish invalidity itself.")

4


- 4 -

http://slidepdf.com/reader/full/Amazon.com

http://bloomberglaw.com/



http://bloomberglaw.com/




h. Nature of a Design Patent

The' 114 and '463 Patents at issue in this litigation are design patents. "A design

patent is directed to the appearance of an article ofmanufacture." L.A. Gear, Inc. v. Thorn

McAn Shoe Co., 988 F.2d 1117,1123 (Fed. Cir. 1993) (citations omitted). Accordingly, a

"design patent, unlike a utility patent, limits protection to the ornamental design of the article."

Richardson v. Stanley Works. Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010) (citing Lee v. Dayton-

Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir.1988)(citing 35 U.S.C. § 171)). "Ifthe patented

design is primarily functional rather than ornamental, the patent is invalid." Id. at 1293-94.

"However, when the design also contains ornamental aspects, it is entitled to a design patent

whose scope is limited to those aspects alone and does not extend to any functional elements of

the claimed article." Id. at 1294 (citing L.A. Gear, 988 F.2d at 1123 ("The elements of the

design may indeed serve a utilitarian purpose, but it is the ornamental aspect that is the basis of

the design patent.")).

"An article ofmanufacture necessarily serves a utilitarian purpose, and the design

of a useful article is deemed to be functional, when the appearance ofthe claimed design is

'dictated by ' the use or purpose of the article." L.A. Gear, 988 F.2d at 1123 (citations omitted).

"I f the particular design is essential to the use ofthe article, it [cannot] be the subject of a design

patent." Id. Stated another way, "[i]fthe design of a particular feature must appear a certain

way, and only that way, in order to perform a particular function, then the feature is functional

and not ornamental ." Etna Prods. Co. v. 0 Mktg. Group, Ltd., No. 03 Civ. 3805(SAS), 2004

U.S. Dist. LEXIS 15323, at *22 (S.D.N.Y. Aug. 4, 2004) (citation omitted), Conversely,

1 Title 35, U.S.C. § 171 provides in pertinent part that "[w]hoever invents any new, original and

ornamental design for an article of manufacture may obtain a patent therefor, subject to the

conditions and requirements ofthis title." 35 U.S.C. § 171.

5


- 5 -



'" [w hen there are several ways to achieve the function of an article ofmanufacture, the design

of the article is more likely to serve a primarily ornamental [as opposed to functional] purpose.'"

Rockport Co., Inc. v. Deer Stags, Inc., 65 F. Supp. 2d 189, 194 n.3 (S.D.N.Y. 1999) (quoting

L.A. Gear, 988 F.2d at 1123).

c. Bradshaw's Invalidity Argument

Here, Bradshaw argues that Hutzler's patents are invalid because their

"ornamental feature or design is <merely a by-product' of functional and mechanical

considerations dictating the design. . . . The shape is dictated by the shape of the produce that is

intended to be stored inside." (Def. Opp. Br. 18) Bradshaw maintains that "[i]n order for an

onion container to be an onion container or a garlic container to be a garlic container, it should

have the general size and shape of an onion or a piece of garlic." (Id. at 16) Bradshaw further

argues that in designing the Onion Saver and the Garlic Saver, Hutzler sought "to make the

product immediately convey to the consumer what the item does. . . . [T]hat is the definition of

functional, because it . . . immediately tells the customer something about the product: . . . what

it is used for." (Jan. 19,2012 Tr. 15-16)

The Court concludes that Bradshaw's argument that Hutzler's patented designs

are primarily functional does not "raise[] a 'substantial question' regarding invalidity." Entegris,

Inc., 490 F.3d at 1351. In reaching this conclusion, the Court has considered, inter alia, a variety

of alternative designs demonstrating that produce preservers come in a variety of shapes and

sizes.

The Federal Circuit has noted that "[c ]onsideration of alternative designs . . . IS a

useful tool that may allow a court to conclude that a challenged design is not invalid for

6


- 6 -



functionality.,,2 Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir.

1997). At the preliminary injunction hearing, Hutzler produced numerous examples ofproducts

used to store onion and garlic that do not have the same shape or general design as Hutzle r's

patented designs. (See Px 5-8) Bradshaw also submitted photographs of competing products

that do not share the design ofHutzler' s products. (Megorden Aff., Ex. A, A4, AS) Hutzler has

also offered evidence that it considered "numerous alternative designs" in designing its "Food

Saver Line," and found "no evidence that a specific design was best for storing produce."

(Ehrenhaus Decl. 4)

Bradshaw's argument that the shape of Hutzler's products conveys to the

consumer the type of produce that is intended to be stored inside does not demonstrate invalidity

on functionality grounds. Assuming arguendo that Bradshaw's argument is relevant to the

analysis, food storage containers need not be in the shape of the produce that they are designed to

store in order for manufacturers to communicate to consumers the function of these products.

The function of these products may be, and commonly is, communicated through appropriate

labeling. S e e , ~ , Px 7.

In sum, Bradshaw's functionality challenge to the validity ofHutzler's patents is

likely to fail. Hutzler has demonstrated that the design of the Onion Saver and the Garlic Saver

is not "dictated by" the use or purpose of the article, and that onion and garlic may be stored and

preserved in products of myriad shapes and sizes. Because Hutzler has established that there are

numerous ways to store and preserve onions and garlic and thus to achieve the function of the

2 The Court noted that "[0]ther appropriate considerations might include: whether the protected

design represents the best design; whether alternative designs would adversely affect the utility

of the specified article; whether there are any concomitant utility patents; whether the advertising

touts particular features of the design as having a specific utility; and whether there are any

elements in the design or an overall appearance clearly not dictated by function." Berry Sterling

Corp., 122 F.3d at 1456.

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patented designs, "the design of the article[s] is more likely to serve a primarily ornamental [as

opposed to functional] purpose." Rockport, 65 F. Supp. 2d at 194 n.3 (quoting L.A. Gear, 988

F.2d at 1123). Accordingly, Hutzler will likely prevail on the patent validity issue at trial.

2. Infringement

a. Claim Construction

"[D]etermining whether a design patent is infringed is a two-step process. First,

the court must construe the design patent 's claim." Catalina Lighting, Inc. v. Lamps Plus, Inc.,

295 F.3d 1277, 1286 (Fed. Cir. 2002). "In construing a design patent claim, the focus is on

overall appearance and the visual impression it creates." Blumenthal Distrib., Inc. v. Exec.

Chair, Inc., No. CV-10-1280(CBA), 2010 WL 5980151, at *5 (E.D.N.Y. Nov. 9,2010) (citing

OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997); Spotless Enters.,

Inc. v. A & E Prods. Group L.P., 294 F. Supp. 2d 322, 343-44 (E.D.N.Y. 2003», report and

recommendation adopted Qy 2011 WL 839546 (E.D.N.Y. Mar. 3,2011). "'[W]here a design

contains both functional and non-functional elements, the scope of the claim must be construed

in order to identify the non-functional aspects of the design as shown in the patent.'" Rockport,

65 F. Supp. 2d at 193 (quoting OddzOn, 122 F.3d at 1405 (citing Lee, 838 F.2d at 1188».

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) makes clear

that, in construing design patents, district courts should generally forego verbal description:

Given the recognized difficulties entailed in trying to describe a design in words,

the preferable course ordinarily will be for a district court not to attempt to

"construe" a design patent claim by providing a detailed verbal description of the

claimed design.

Id. at 679. "[D]esign patents 'typically are claimed as shown in drawings,' and . . . claim

construction 'is adapted accordingly.'" Id. (quoting Arminak & Assocs., Inc. v. Saint-Gobain

Calmar, Inc., 501 F.3d 1314, 1319 (Fed. Cir. 2007». '' '[A]s a rule the illustration in the drawing

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views is its own best description.'" Id. (quoting MANUAL OF PATENT EXAMINING PROCEDURE §

1503.01 (8th ed. 2006)). Accordingly, "[d]istrict courts following Egyptian Goddess have

generally relied on patent drawings to construe design claims." Wing Shing Products (BV!) Co.

Ltd. v. Sunbeam Products, Inc., 665 F.Supp.2d 357,360 (S.D.N.Y. 2009) (collecting cases).

Here, the Court finds that "the claims articulated in each of the design patents at

issue are unambiguous and are clearly illustrated by the figures contained therein." Nike, Inc. v.

Meitac Int'l Enter. Co. Ltd., No. 06-CV-000934(PMP)(PAL), 2006 U.S. Dist. LEXIS 94662, at

*6 (D. Nev. Oct. 10,2006). In accordance with Egyptian Goddess, 543 F.3d at 679, this Court

will not provide a detailed verbal description of the' 114 and '463 Patents and will rely instead

on the illustrations set out in the patents. The Court construes Hutzler's claims as the ornamental

design for an onion container as shown in figures 1 through 3 of the' 114 Patent, and the

ornamental design for a garlic container as shown in figures 1 through 8 ofthe'463 Patent. See,

~ , Wing Shing, 665 F. Supp. 2d at 360 ("[t]his Court . . . construes [plaintiffs] claim as the

ornamental design for a coffeemaker, as shown in figures 1 through 7 of the '585 patent"); HR

U.S. LLC v. Mizco Internat'l, Inc., No. CV-07-2394(DGT)(JO), 2009 WL 890550, at *9

(E.D.N.Y. Mar. 31, 2009) ("a detailed verbal description ofthe '250 patent is unnecessary; it is

appropriate to 're ly upon the illustrations set out in the [patent], as they better represent the

claimed design"') (quoting Arc'teryx Equip., Inc. v. Westcomb Outerwear, Inc., No. 07-cv-

59(TS), 2008 WL 4838141, at *2 (D. Utah Nov. 4, 2008)).

b.Ordinary Observer Test

The second step in determining whether a design patent is infringed requires the

fact-finder to "compare the patented and accused designs to determine whether the accused

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http://slidepdf.com/reader/full/F.Supp.2d

http://slidepdf.com/reader/full/F.Supp.2d



design is substantially similar in appearance to the patented design." Rockport, 65 F. Supp. 2d at

193. In making that determination, courts utilize the "ordinary observer" test:

[I]f, in the eye of an ordinary observer, giving such attention as a purchaser

usually gives, two designs are substantially the same, if the resemblance is such asto deceive such an observer, inducing him to purchase one supposing it to be the

other, the first one patented is infringed by the other.

Egyptian Goddess, 543 F.3d at 670 (quoting Gorham Co. v. White, 81 U.S. 511, 528 (1871)); see

also L.A. Gear, 988 F.2d at 1124 ("Design patent infringement requires a showing that the

accused design is substantially the same as the claimed design. The criterion is deception of the

ordinary observer, such that one design would be confused with the other."); Crocs, Inc. v. In!'l

Trade Comm'n, 598 F.3d 1294, 1303 (Fed. Cir. 2010) (infringement is demonstrated where "an

ordinary observer . . . would be deceived into believing that the accused product is the same as

the patented design") (citing Egyptian Goddess, 543 F.3d at 681).

The "ordinary observer" test is more easily stated than applied. Is the "ordinary

observer" someone encountering the product or products for the first time, or someone who is

generally familiar with products of the sort in question? How should courts determine the

amount of "attention . . . a purchaser usually gives"? In determining whether "two designs are

substantially the same," should courts conduct a side-by-side comparison? How similar must

designs be to support a finding of infringement? What weight should be given to the color, size,

or material used in the products? The Court considers these and other questions below.

(i) Who is the "Ordinary Observer"?

The case law makes clear that the "ordinary observer" is not an expert in the field.

As the Supreme Court said in Gorham, "[e]xperts . . . are not the persons to be deceived."

Gorham, 81 U.S. at 528. The "ordinary observer" is likewise not a patent lawyer "who inspects

the designs critically to highlight each and every perceivable difference between them." Durdin

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v. Kuryakyn Holdings, Inc., 440 F. Supp. 2d 921,933-34 (W.D. Wis. 2006); see also Tappan Co.

v. Gen. Motors Corp., 248 F. Supp. 978, 980 (N.D. Ohio 1965) ("The Supreme Court has said [in

Gorham1that sameness of effect upon the eye is the main test of substantial identity of design,

but it is not essential that the appearance should be the same to the eye of the expert. It is

sufficient if it is the same to the ordinary observer.").

The notional "ordinary observer" is, instead, someone who - while not an expert

in the product - is not entirely ignorant of it, and indeed has some degree of familiarity with it.

The "ordinary observer" thus includes someone who has purchased, or shopped for, a like item

in the past. S e e , ~ , Henry Hanger & Display Fixture Corp. ofAm. v. Sel-O-Rak Corp., 270

F.2d 635, 641 (5th Cir. 1959) ('''[T]he ordinary purchaser of revolving racks, who was

acquainted with the patented design would, upon viewing any of defendants' racks, including the

wrought iron rack, . . . assume that he was viewing an identical or slightly modified version of

the patented design."') (quoting Sel-O-Rak Corp. v. Henry Hanger & Display Fixture Corp. of

Am., 159 F. Supp. 769, 773 (S.D. Fla. 1958)); Applied Arts Corp. v. Grand Rapids Metalcraft

Corp., 67 F.2d 428,430 (6th Cir. 1933) ("[T]he ordinary observer is not any observer, but one

who, with less than the trained faculties of the expert, is 'a purchaser of things of similar design, '

or 'one interested in the subject."'); Graff, Washboume & Dunn v. Webster, 195 F. 522, 524 (2d

Cir. 1912) ("Having seen the complainant's design in a show case or shop window, the ordinary

buyer would be very likely to mistake the defendants' design for it, if seen in a similar

environment. This is the real test of infringement ofdesign patents. If the ordinary buyer,

having seen one of the complainant's dishes and wishing to procure one like it, would be induced

to buy one ofthe defendants' dishes instead, it is enough."); Minka Lighting, Inc. v. Maxim

Lighting Int'l, Inc., No. Civ. A. 3:06-CV-995-K, 2009 WL 691594 (N.D. Tex. Mar. 16,2009)

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("The ordinary observer is therefore a member of the public who is currently shopping for or has

recently purchased lighting fixtures indeed, a 'purchaser of things of similar design. "');

Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 424 F. Supp. 2d 1188, 1196 (C.D. CaL

2006) ("[The ordinary] observer is not a person who has never seen the type of item the patent

describes, 'but one who, though not an expert, has reasonable familiarity with such objects, and

is capable of fonning a reasonable judgment when confronted with a design therefor as to

whether it presents to his eye distinctiveness from or similarity with those which have preceded

it."') (quoting Applied Arts, 67 F.2d at 430).

Accordingly, the "ordinary observer" here is someone who has seen, shopped for,

or purchased food storage items of similar design.

ii. Attention

Under the Gorham test, a court must compare the patented and accused designs

"giving such attention as a purchaser usually gives." Gorham, 81 U.S. at 528.

Gorham makes clear that "such attention as a purchaser usually gives" does not

include the attention that a purchaser would give the products if asked to conduct a "critical

examination" of them, or after being told that there may be differences between them. Id. at 529

30 (detennination whether ordinary purchaser would regard products as substantially the same

does not tum on whether "some diversities in (the product] . . . are discoverable when attention is

called to them," whether differences become apparent "when stimulated by a suspicion that there

may be diversity," or whether differences become apparent when "critical examination" is

brought to bear that would not typically be employed by an ordinary purchaser).

In considering the degree of attention a typical consumer is likely to bring to a

purchase, it is reasonable to assume that consumers will bring greater attention to an expensive

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purchase, and give less attention where the cost is inconsequential. See Braun, Inc. v. Dynamics

Corp. of Am., 975 F.2d 815, 820, 820 n.9 (Fed. Cir. 1992) (relying on trial testimony that

"consumers typically purchase hand held electric [blenders] on an 'impulse' and as a result they

may not differentiate [between] designs," particularly where the products "are relatively

inexpensive"); Cardiac Pacemakers, Inc. v. Coratomic, Inc., 535 F. Supp. 280,286 (D. Minn.

1982) ("The test for design patent infringement is whether an ordinary purchaser would be

induced to purchase a product supposing it to be another. . . . Pacers are expensive and generally

are sold to physicians who specialize in pacer implants. . . . [The accused infringer's] pacers are

sufficiently different from [the patentee's] pacer so that the ordinary consumer would not be

misled.") (emphasis added); Superior Merchandise Co., Inc. v. MGI Wholesale, Inc., Nos. Civ.

A. 98-3174, Civ. A. 99-3492,2000 WL 322779, at *11 (E.D. La. Mar. 27, 2000) ("Whether

undertaking a desperate search to purchase the bodacious bead for its novel appearance, or

encountering the breast bead upon first impression while browsing a bead vendor's wears, the

ordinary purchaser is likely to see, quite simply, a three-dimensional simulation of well-endowed

bare human female breasts. In addition, considering the amount of attention that is likely to be

given during an impulse purchase of the bodacious beads, it must be concluded that the two

designs are substantially the same.").

Given that the products at issue here are inexpensive - ranging in price from

$2.00 to $4.00 (Jan. 19,2012 Tr. 10,26) and thus likely to be purchased on impulse, the Court

concludes that the ordinary purchaser is not likely to give significant attention to the products

when purchasing them.

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iii. "Substantially the Same"

"Design patent infringement requires a showing that the accused design is

substantially the same as the claimed design. The criterion is deception of the ordinary observer,

such that one design would be confused with the other." L.A. Gear, 988 F.2d at 1124; see also

Crocs, 598 F.3d at 1303 (infringement is demonstrated where "an ordinary observer . . . would

be deceived into believing that the accused product is the same as the patented design"). "In

conducting such analysis the patented design is viewed in its entirety, as it is claimed . . . [T]he

ultimate question requires determining whether ' ' 'the effect of the whole design [is] substantially

the same.'" L.A. Gear, 988 F.2d at 1125 (quoting Gorham, 81 U.S. at 530).

(a) Focus on "Overall Visual Appearance"

In determining whether two designs are "substantially the same," courts focus on

the overall impression given by the claimed design, rather than particular ornamental details or

minutiae. S e e , ~ , Crocs, 598 F.3d at 1303 ('" [T]he deception that arises is a result ofthe

similarities in the overall design, not of similarities in ornamental features in isolation.' . . . The

ordinary observer test applies to the patented design in its entirety, as it is claimed.") (quoting

Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2002));

Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002) ("What is

controlling is the appearance of the design as a whole in comparison to the accused product.");

OddzOn, 122 F .3d at 1405 ("[I]t is the appearance of a design as a whole which is controlling in

determining infringement. There can be no infringement based on the similarity of specific

features ifthe overall appearance of the designs are dissimilar. . . ."); Elmer v. ICC Fabricating,

Inc., 67 F.3d 1571,1577 (Fed. Cir. 1995) ("Under Gorham, the focus is on the overall

ornamental appearance of the claimed design, not selected ornamental features.") (emphasis in

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original); Payless Shoesource, Inc. v. Reebok In!'l, Ltd., 998 F.2d 985,991 (Fed. Cir. 1993)

(,"[M]inor differences between a patented design and an accused article's design cannot, and

shall not, prevent a finding of infringement.' Here, the district court's infringement analysis

clearly evidences a focus on a single difference as opposed to the entirety of the patented design.

Thus, the district court erred by failing to 'consider the ornamental aspects of the design as a

whole and not merely isolated portions of the patented design."') (citations omitted); HR U.S.

LLC, 2009 WL 890550, at *12 ("It is improper to focus on specific features that differ between

two designs if such a focus ignores the critical issue of whether the overall designs, as a whole,

are substantially similar.") (citing Amini Innovation, 439 F.3d at 1372); see also Decade Indus.

v. Wood Tech., Inc., 100 F. Supp. 2d 979 (D. Minn. 2000) ("While Wood has tweaked some of

the angles and proportions of the Sanus design and has inserted additional shelves between the

upright legs, these minor changes do not materially alter the substantial visual likeness of the two

designs when they are viewed in their entirety.").

Consistent with this approach, courts give significant attention to the lines and

overall shape ofthe designs at issue. See, Sh&" Crocs, 598 F.3d at 1306 ("One of the overall

effects of the design is the interaction between the strap assembly portion and the base portion of

the shoes where the strap is attached to the base. Multiple major design lines and curves

converge at that point creating a focal point attracting the eye of the ordinary observer when

viewing the overall effect of the design. Another overall effect of the design is a visual theme of

rounded curves and ellipses throughout the design, including the strap forming a sortof

continuation of the sidewall of the base to create a visually continuous ring encircling the entire

shoe."); Richardson, 597 F.3d at 1296 ("[T]he two designs are indeed different. Each of the

Fubar tools has a streamlined visual theme that runs throughout the design including elements

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such as a tapered hammer-head, a streamlined crow-bar, a triangular neck with rounded surfaces,

and a smoothly contoured handle. In a side-by-side comparison with the' 167 patent design, the

overall effect of this streamlined theme makes the Fubar tools significantly different from

Richardson's design. Overall, the accused products clearly have a more rounded appearance and

fewer blunt edges than the patented design."); Braun, 975 F.2d at 820 (finding infringement

despite the "readily noticeable difference" between the patented blender and the accused blender

in that "[Braun's blender] has a handgrip indentation while the latter does not"; noting that "both

Waring's blender and Braun's blender share a fluid, ornamental, aerodynamic overall design.

The shaftsof

both blenders are encased in a housing that gradually tapers away from the motor

housing. The top portion of each blender, when viewed from the front, is tapered at the top to

integrate the handle into the motor housing. The shaft housing of each blender gradually

expands to form a blade housing, which is punctured by four elongated, essentially rectangular

ports"); see also Unique Functional Prods., Inc. v. Mastercraft Boat Co., Inc., 82 F. App'x 683,

689 (Fed. Cir. 2003) ("[T]he Reliable coupler has a rounded nose . . . whereas, as previously

illustrated, the '777 patent requires a boxy and blunt nose. Second, the Reliable coupler's nose

. . . slopes sharply downwardly, rather than having a substantially square or block-shaped face as

required by the '777 patent."); Moore v. Stewart, 600 F. Supp. 655, 664 (D. Ark. 1985) ("In the

court's view the appearances of the Moore and the Stewart whistles are substantially identical

despite the previously noted variations. The Stewart whistle even as modified retains the general

shape, configuration, and dimensions of the Moore design; any differences in appearance, though

discernible upon close examination, are not likely to be quickly perceived by an ordinary

observer paying the degree of attention a purchaser would."); Duncan & Miller Glass Co. v.

Hazel Atlas Glass Co., 47 F. Supp. 192, 195 (D. Va. 1942) ("The outside, or contour, is a very

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important factor in making up the general, or over-all impression to the average purchaser.

Defendant's ash tray has a stem while the design patent has no stem. The stem is ofprime

importance and is one of the first differences to strike the eye of the ordinary observer.")

Accordingly, in considering whether the designs at issue here are "substantially

the same," this Court's focus will be on the overall impression given by the claimed designs,

rather than on particular ornamental details or minutiae.

(b) Propriety of Side-by-Side Comparison

The case law is not entirely consistent as to whether side-by-side comparison of

the patented and allegedly infringing products is appropriate. Some early decisions counseled

against such an approach. See Sanson Hosiery Mills, Inc. v. S.H. Kress & Co., 109 F. Supp.

383,384 (D.N.C. 1952) ("Actual comparison for minute inspection is not a fair test. The

imitation may be on display when the patented article is not present . . . A design patent protects

the general design, the pictured effect on the mind from a general view, rather than details

revealed by a minute test. Therefore, testimony of a comparison test is not exclusive nor

conclusive."); Try-Me Beverage & Compound Co. v. Metropole, 25 F.2d 138, 141 (D.S.C. 1928)

('" It may also be assumed . . . that side by side comparison in court is not a proper test. . . . "' )

(quoting Coca-Cola Co. v. Whistle Co. of Am., 20 F.2d 955, 956 (D. Del. 1927»; Friedberger

Aaron Mfg. Co. v. Chapin, 151 F. 264, 265 (C.C.Pa. 1907) (finding infringement even though it

was "very easy to distinguish between the two designs when brought together"). There is clearly

some tension between the "ordinary observer" test - which does not contemplate an opportunity

to conduct a detailed comparative analysis of the two products at issue and a side-by-side

comparison by the Court.

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The Federal Circuit has, however, regularly engaged in side-by-side comparisons

of patented and accused designs in order to determine whether they are "substantially the same."

S e e , ~ , Richardson, 597 F.3d at 1296 ("In a side-by-side comparison with the' 167 patent

design, the overall effect of this streamlined theme makes the Fubar tools significantly different

from Richardson's design."); Crocs, 598 F.3d at 1304 ("The proper comparison requires a side

by-side view of the drawings ofthe '789 patent design and the accused products."); Arminak &

Assocs., 501 F.3d at 1327 ("Calmar also implies that it was improper for the district court to do a

detailed side-by-side comparison between the patented design and the accused design. Calmar

cites no authority for this contention because there is none. To establish infringement in a design

patent case, the district court is required to compare the patented design with the accused design.

Without comparing the patented design with the accused design, there was no way for the district

court to determine whether an ordinary observer would find the accused design deceptively

similar. . . ."), abrogated on other grounds Qy Egyptian Goddess, 543 F.3d 665.

A long line of cases counsels that, in performing a side-by-side comparison,

courts generally should compare the design set forth in the patent that is, the drawings - with

the accused product, rather than comparing the embodiment of the patented design and the

accused product. See Payless Shoe source, 998 F.2d at 990 ("Proper application of the Gorham

test requires that an accused design be compared to the claimed design, not to a commercial

embodiment.") ; also Richardson, 597 F.3d at 1294 ("We also reject Richardson's argument

that the court did not include drawings from the patent in its claim construction. Richardson

argues that it is the ordinary observer's perception of those drawings that is the controlling

considerat ion under the Supreme Court' s opinion in [Gorham]. We agree with Richardson on

the decisive importance of drawings in a design patent."); Amini Innovation, 439 F.3d at 1370

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71 ("'A design patent protects the non-functional aspects of an ornamental design as seen as a

whole and as shown in the patent . . . It is the drawings in the patent, not just one feature of the

claimed design, that define the patented design. "' ) (quoting KeyStone Retaining Wall Sys., Inc.

v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993)) (emphasis added); Elmer, 67 F.3d at

1578 ("Under Gorham, the focus is on the overall ornamental appearance ofthe claimed design,

not selected ornamental features. The overall ornamental appearance of the '620 design, as

shown in the patent drawings, is too different from ICC's design for an ordinary observer to be

induced into purchasing ICC's product thinking it was HTH's design.") (first emphasis in

original; second emphasis added); Rockport, 65 F. Supp. 2d at 192-93 ("A design patent's claim

is limited to what is shown in the application drawings. . . . The test for infringement does not

compare the commercial embodiments of the two products. Rather, the allegedly infringing

product is compared only to the patented design.").

However, "[w ]hen no significant distinction in design has been shown between

the patent drawing and its physical embodiment, [the Federal Circuit has stated that] it is not

error . . . to compare the embodiment ofthe patented design with the accused devices." Lee, 838

F.2d at 1189; see also L.A. Gear, 988 F.2d at 1125-26 ("[w]hen the patented design and the

design of the article sold by the patentee are substantially the same, it is not error to compare the

patentee's and the accused articles directly . . . ; indeed, such comparison may facilitate

application of the Gorham criterion ofwhether an ordinary purchaser would be deceived into

thinking that one were the other") (citing Lee, 838 F.2d at 1189).

Because the Court concludes that the design of the Hutzler products and their

commercial embodiments are substantially the same, the Court has considered the drawings set

forth in Hutzler's patents as well as the parties' products.

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(c) Degree of Similarity

Necessary to Find Infringement

"[P]atent infringement can be found for a design that is not identical to the

patented design." Braun, 975 F.2d at 820; see also Rockport, 65 F. Supp. 2d at 193 ("The

accused design does not have to be identical to the patented design for infringement to be

found."); HR U.S. LLC, 2009 WL 890550, at *10 ("[t]he patented and accused designs . . . need

not be identical in order for design patent infringement to be found") (citing Egyptian Goddess,

543 F.3d at 678 (explaining that under the ordinary observer test infringement may be found

where the accused article "'embod[ies] the patented design or any colorable imitation thereof"));

Metrokane, Inc. v. Wine Enthusiast, 185 F. Supp. 2d 321,329 (S.D.N.Y. 2002) ("A design need

not be identical to the patented design for infringement to occur."); Nike, 2006 U.S. Dist. LEXIS

94662, at *4 ("In assessing infringement, the patented and accused designs do not have to be

identical in order for design patent infringement to be found."). ''' [M]inor differences between a

patented design and an accused article's design cannot, and shall not, prevent a finding of

infringement.'" Crocs, 598 F.3d at 1303 (quoting Payless Shoesource, 998 F.2d at 991).

In practice, however, the cases in which the Federal Circuit has sustained a

finding of infringement have involved a very high degree of similarity. S e e , ~ , Crocs, 598

F.3d at 1306 ("In one [side-by-side] comparison after another, the shoes appear nearly identical.

If the claimed design and the accused designs were arrayed in matching colors and mixed up

randomly, this court is not confident that an ordinary observer could properly restore them to

their original order without very careful and prolonged effort."); L.A. Gear, 988 F.2d at 1125-26

(affirming district court's holding ofdesign patent infringement where "[t]he district court found

that the designs of four models of [defendant's] accused shoes were' almost a direct copy' of the

'081 design"); 838 F.2d at 1190 ("While we agree with Lee that infringement can be found

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for designs that are not identical to the patented design, such designs must be equivalent in their

ornamental, not functional, aspects. The accused devices must meet the Gorham test of

similarity of ornamental appearance such that an ordinary observer would be likely to purchase

one thinking it was the otheL").

(d) Relevance of Color, Size, and Material

Where - as here the design patent is not limited to a particular size, color, or

construction material, such factors should not be taken into consideration in performing an

infringement analysis. See Lee, 838 F.2d at 1189 ("Lee also points to the court's observation

that the tennis balls used in the physical model of the Lee design were colored, arguing that color

has no role in design patent infringement and that the court may have been improperly

influenced by the color differences of the accused structures. . . . The record does not support

Lee's view that the district cour t's reference to the colored tennis balls means that the court' s

decision turned on the color oifferences. The court is presumed to have applied the law

correctly, absent a clear showing to the contrary."); Herbko In1'l, Inc. v. Gemmy Industries

Corp., 916 F. Supp. 322, 326 (S.D.N.Y. 1996) ("If an ordinary consumer were to be deceived,

the deception would result from shared features of the products that are not protected by the

design patent: (1) features that are not included in Herbko' s patent, such as the color, size and

material (plastic) of the two products. . . ."); Superior Merch., 2000 WL 322779, at *11

("Unclaimed features are irrelevant; color, size and construction material cannot be the basis of

similarity where these features of the commercial embodiment are beyond those described in the

patent claim."); Physio-Control Corp. v. Medical Research Labs., No. 85 C 4973, 1988 WL

5023, at *1 (N.D. Ill. Jan. 15,1988) ("'A determination of the infringement issue is somewhat of

an existential exercise. It is not enough to say that no one would confuse the two designs

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because one is red and the other is green and both have prominently displayed logos. The test is

not palming off; color and designations are not part of the patented design and must be

ignored. "); also Unique Functional Prods., 82 F. App'x at 690 ("[T]he '777 patent is not

limited to any particular size or color. We conclude, therefore, that the court erred by taking

those features into consideration in its infringement analysis. . . . ").

Accordingly, this Court will not consider the size, color, sheen, or construction

material of the products, as these features are not claimed in Hutzler's design patents.

c. Bradshaw's Arguments on Similarity

Bradshaw maintains that "the designs of the' 114 and '463 Patents . . . and the

accused Bradshaw products would not be considered 'substantially the same' to an ordinary

observer." (Def. Opp. Br. 7) With respect to the' 114 Patent, Bradshaw points out that the top

view of the patented design, illustrated in Figure 1, shows that "the outside circumference of

[Hutzler's] onion container is a perfect circle," while the "outside circumference of the Bradshaw

onion keeper is not a perfect circle, but has a scalloped edge in top view." (Id. at 8) Bradshaw

further notes that Hutzler 's "onion container includes a surface texture that looks like the skin of

an onion and is solid, not transparent," while "in the Bradshaw onion keeper, the top view clearly

shows that the material is transparent, not solid . . . and does not resemble an onion at alL" (hlJ

Bradshaw further observes that the surface texture of the Hutzler design is "uneven and arbitrary,

but includes generally radially extending lines in the top view that converge at a center of the

circular onion container" and "includes a very narrow top or tip surface." (Id.) Bradshaw argues

that, in contrast, its product "has a smooth surface, except for the twelve (12) very distinctive,

radially extending indentations" and "has a very wide top or tip surface, which . . . is not a

perfect circle, having a scalloped edge. . . ." (Id.)

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In comparing Figure 2 of the '114 Patent (a side view) with the side view of

Bradshaw's product, Bradshaw notes that while the "surface texture above the separation and

below the separation [of the patented design] is generally continuous, and the material is clearly

solid, not transparent," the "Bradshaw onion keeper above the separation is transparent, whereas

the bottom below the separation is solid." (Id. at 9) Bradshaw argues that this two-toned

appearance provides "a very different 'look' to the Bradshaw onion keeper." (Id.) Bradshaw

further asserts that the

numerous vertical lines in the design of the ' 114 Patent provide a completely

different overall appearance to the onion container when compared to the

Bradshaw onion keeper. . . . Since the Bradshaw onion keeper does not includethese numerous vertical lines, which provide the appearance of the skin of an

onion, the overall appearance of the Bradshaw onion keeper is not the same as the

overall appearance of the' 114 Patent.

(Id. at 9-10)

In comparing Figure 3 of the '114 Patent (a bottom view) with the bottom view of

Bradshaw's onion keeper, Bradshaw notes that "Figure 3 . . . appears to include a gradually

curving surface from the sides to the bottom, until the bottom center ultimately becomes flat. . . .[T]here is no clear line of demarcation between the side walls and the bottom wall. . . ." (Id. at

10) The bottom of Bradshaw's onion keeper has a "ridge formed at a spaced location from the

center of the onion keeper . . . formed from a recessed bottom . . . [and] there is a narrow portion

outside of the ridge, which is flat, and then gradually curves into the side walls." CklJ

Bradshaw makes similar arguments concerning the differences between the'463

Patent and Bradshaw's garlic keeper.3

3 Bradshaw notes, inter alia, that the '463 design has a surface texture that is not transparent and

looks like the skin of a piece of garlic and that the tip of the design is a perfect circle. (Def. Opp.

Bf. 11) By contrast, Bradshaw argues, its garlic container is transparent on the top, its surface

texture does not resemble a piece of garlic, and the tip of its product has a scalloped edge. (Id. at

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d. Analysis

The' 114 Patent claims "[t]he ornamental design for an onion container, as shown

and described," while the '463 Patent claims "[t]he ornamental design for a garlic container, as

shown and described." The claims extend to the overall design of the onion and garlic containers

including the shape and proportions of the products and the horizontal line across the middle of

the onion container and two-thirds of the way down the garlic container.

As noted above, "patent infringement can be found for a design that is not

identical to the patented design." Braun, 975 F.2d at 820; HR U.S. LLC, 2009 WL 890550, at

*10; Metrokane, Inc., 185 F. Supp. 2d at 329; Nike, 2006 U.S. Dist. LEXIS 94662, at *4. "[I]n

the 'ordinary observer' analysis, the patented design is viewed in its entirety, as it is claimed,"

Contessa Food Prods., 282 F.3d at 1378, and "[i]t is improper to focus on specific features that

differ between two designs if such a focus ignores the critical issue ofwhether the overall

designs, as a whole, are substantially similar." HR U.S. LLC, 2009 WL 890550, at *12 (citing

Amini Innovation, 439 F.3d at 1372). "[T]he concentration on small differences in isolation

distract[s] from the overall impression ofthe claimed ornamental features." Crocs, 598 F.3d at

1303-04. "It is the drawings in the patent, not just one feature ofthe claimed design, that define

the patented design." Amini Innovation, 439 F.3d at 1371 (citing KeyStone, 997 F.2d at 1450).

Bradshaw's arguments regarding the differences between the containers focus too

narrowly on the details of their ornamentation, rather than considering the overall look of the

design. The Federal Circuit has made clear that it is error for a trial court to focus on "each

12) Bradshaw maintains that "the dramatic difference between the top and bottom portions of

the Bradshaw garlic keeper provides a two-toned appearance to the Bradshaw garlic keeper,

which does not [- unlike the Hutzler product -] have the appearance of the skin of a piece of

garlic." (Id. at 13)

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[design] element separately instead of analyzing the design as a whole from the perspective of an

ordinary observer." Amini Innovation, 439 F.3d at 1372.

In L.A. Gear, the manufacturer of the accused design pointed out differences

between features of its shoes and the design of the patentee. L.A. Gear, 988 F 2d at 1126.

Despite these differences, the Federal Circuit affirmed the district court's finding "that 'the

placement of all the major design elements is the same, creating the same distinctive overall

look,' and . . . that the four infringing models were confusingly similar to the patented design, as

viewed by the ordinary observer." Id.

Similarly, in Rockport, the Court noted that there were differences between the

patented shoe design and the accused product: "First, the mud guard of the [accused product] is

broken into several parts instead ofthe . . . patent's one-piece mud guard. . . . The second

difference is that the [accused shoe] does not have the double layer of shoe extending from the

bottom of the eye stay to between the second and third eyelets." Rockport, 65 F. Supp. 2d at 195.

Nevertheless, the court found infringement, noting that '''[u]nder Gorham, the focus is on the

overall ornamental appearance of the claimed design, not selected ornamental features. '" Id.

(quoting Elmer, 67 F.3d at 1577).

Here, while the Court acknowledges that there are differences between the

patented designs and Bradshaw's products, "[a] visual comparison of the . . . design patent[s]

with [Bradshaw's Onion and Garlic Keepers] reveals that the overall look of the [products] is

extremely similar. . .

[and] [a]lthough a highly discerning consumer might notice the differences

if the [products] were placed side by side, the strength of the [products'] common features

greatly outweighs their differences." Jack Schwartz Shoes, Inc. v. Skechers USA, Inc., 233 F.

Supp. 2d 512, 514 (S.D.N.Y. 2002).

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The patented designs and Bradshaw's products have the same shape that of

onion and garlic bulbs - in the same proportions. Given that the onion and garlic shapes are not

"functional" characteristics - because, as noted above, onion and garlic can be and are stored in

containers ofmyriad shapes and sizes - the Court must take into account the shapes and

proportions of Hutzler 's designs and Bradshaw's products.

The' 114 Patent and Bradshaw's Onion Keeper likewise have (1) vertical

striations running the length ofthe product; (2) striations that convene in a narrow "stem" at the

top; and (3) a horizontal line running across the middle of the container where the products open.

The '463 Patent and Bradshaw's Garlic Keeper both have (1) a horizontal line running across the

container approximately two-thirds of the way down where the products open; (2) air slits on the

bottom; and (3) raised designs of approximately the same size in the center of the interior of the

bottom. Disregarding the color, sheen, and construction material differences - as this Court must

do - "the accused products embody the overall effect ofthe ['114 and '463 designs] in sufficient

detail and clarity to cause market confusion.,,4 Crocs, 598 F.3d at 1306.

4 As noted above, Bradshaw argues that its products are not similar to Hutzler's designs because

they are "two-toned," with the top portion of the containers transparent. Bradshaw asserts that

Hutzler's products are "solid, not transparent" (Def. Opp. Br. 8-9), and that the transparent

aspect of its products gives them a "very different' look.'" (Id. at 9)

As an initial matter, the top part of Bradshaw's Garlic Keeper is not transparent. It is, for the

most part, opaque, except at its striations, which approach translucence. Moreover, to the extent

that Bradshaw contends that this Court should attribute significance to the "two-toned" nature of

its products, it contradicts the case law discussed above holding that color must be ignoredwhere, as here, it is not part of the patented design.

Neither side has cited case law addressing whether it is appropriate for a court to consider

transparency or translucency in performing an infringement analysis. While the Federal Circuit

recently cited the Manual of Patent Examining Procedure § 1503.02 (8th ed. 2006) for the

proposition that "[0]blique line shading must be used to show transparent, translucent and highly

polished or reflective surfaces," see Apple, Inc. v. Sarnsung Elecs. Co., Ltd., 678 F.3d 1314,

1331 (Fed. Cir. 2012), and neither the' 114 Patent nor the '463 Patent utilizes oblique line

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The Court's conclusions are buttressed by other aspects of the Gorham "ordinary

observer" test. Given how inexpensive these items are, a purchaser has little motive to pay

attention to the subtle differences highlighted by Bradshaw. Stripping away the color, sheen and

construction material differences, a consumer who has seen Hutzler's design in a store, and later

sees Bradshaw's products, is likely to purchase the latter believing it to be the former.

Accordingly, Hutzler has established a likelihood of success on the merits of its patent

infringement claim.

B. Unfair Competition Claim

To succeed on an unfair competition claim under New York common law, "a

plaintiff must demonstrate: 1) a likelihood of confusion; and 2) the defendant's bad faith." New

York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d 305, 325 (S.D.N.Y.

2010) (citing Kraft Gen. Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 135 (S.D.N.Y.

1993); Stem's Miracle-Gro Prods., Inc. v. Shark Prods., Inc., 823 F. Supp. 1077, 1093 (S.D.N.Y.

1993)). "'[T]he essence of unfair competition under New York common law is the bad faith

misappropriation of the labors and expenditures of another, likely to cause confusion or to

deceive purchasers as to the origin of the goods.'" Blumenthal Distrib., 2010 WL 5980151, at

*11 (quoting Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27,34 (2d Cir. 1995)

(quoting Rosenfeld v. W.B. Saunders, 728 F. Supp. 236, 249-50 (S.D.N.Y. 1990))); see also

Medtech Prods., Inc. v. Ranir, LLC, 596 F. Supp. 2d 778,816 (S.D.N.Y. 2008) ("[i]n order to

shading, the case law is not clear that the consequence of a failure to indicate on a design patent

that the surface texture is translucent or transparent results in a design patent claim that is limited

to opaque surfaces. Even assuming arguendo that this is true, the Court finds that the

transparency of the Bradshaw Onion Keeper, and the partial translucency of its Garlic Keeper,

are not sufficient to vitiate the Court's finding that Bradshaw's products are substantially the

same as Hutzler's designs, given the similarities discussed above and in light of the small degree

of attention an ordinary purchaser is likely to give to these inexpensive products.

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state a claim of unfair competition under New York law, a plaintiff must allege that the

defendant 'misappropriated the plaintiffs' labors, skills, expenditures, or good will and displayed

some element of bad faith in doing so."') (quoting Abe's Rooms, Inc. v. Space Hunters, Inc., 38

A.D.3d 690,692 (2d Dept. 2007»; Towers Fin. Corp. v. Dun & Bradstreet, Inc., 803 F. Supp.

820,823 (S.D.N.Y. 1992) ("to make out a claim ofunfair competition under New York law,

[p1aintiffJ must show that [defendant] . . . "'misappropriat[ed] for the commercial advantage of

one person . . . a benefit or "property" right belonging to another"') (quoting Roy Export Co. v.

Columbia Broad. Sys., Inc., 672 F.2d 1095, 1105 (2d Cir. 1982».

"'Traditionally, unfair competition was limited to claims that one party had

attempted to "pass off' his goods as those of another, to mislead the buying public into

purchasing goods while thinking they were getting those of someone else.'" Diversified Mktg.,

Inc. v. Estee Lauder, Inc., 705 F. Supp. 128, 131 (S.D.N.Y. 1988) (quoting Ideal Toy Corp. v.

Kenner Prods., 443 F. Supp. 291,305 (S.D.N.Y. 1977) (citing Flexitized, Inc. v. National

Flexitized Corp., 335 F.2d 774,781 (2d Cir. 1964»). "However, contemporary New York unfair

competition law also encompasses a broader range ofunfair practices generally described as the

misappropriation of the skill, expenditures and labors of another." Id. (quoting Ideal Toy, 443 F.

Supp. at 305 (citing Flexitized, 335 F.2d at 781».

Here, Hutzler contends that Bradshaw "has copied Hutzler's entire line of Food

Saver Products, resulting in Bradshaw misappropriating. . . . labors, skills, expenditures, and

goodwill that Hutzler accumulated while developing, marketing, and selling the Food Saver

Line. . . . Knowing that the Hutzler Food Saver Line was successful, Bradshaw produced

identical products." (Pltf. Br. 11-12) Hutzler further argues that given the "obvious" similarity

between Hutzler's Food Saver Line and Bradshaw's Food Keeper Line, the fact that Hutzler and

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Bradshaw are direct competitors, and the fact that Bradshaw "has taken no steps to differentiate

itself from Hutzler in supermarkets, or in advertisements," the Court should find that it has

demonstrated a likelihood of confusion. (Id. at 12)

Bradshaw maintains that "[c]onsumers are not likely to be confused as to the

origin of product elements dictated by function." (Def. Opp. Br. 20) Bradshaw argues that "[i]n

addition to the differences in the appearance of the products themselves, Bradshaw's labels,

packaging and advertising bear no resemblance to those ofHutzler." (klJ In arguing that

Hutzler cannot establish bad faith on the part ofBradshaw, Bradshaw notes that it "took

significant efforts to design products which do not infringe those patents" and that it obtained an

opinion from its intellectual property counsel "and relied upon that opinion in proceeding with

the marketing of the accused products." (Id.)

The Court concludes that Hutzler has demonstrated a likelihood of confusion. As

noted above, Bradshaw's Onion and Garlic Keepers and Hutzler's designs are substantially the

same. In addition to the onion and garlic containers, Bradshaw chose to produce containers for

lemons, tomatoes and green peppers, thereby duplicating Hutzler 's entire Food Saver Line.

(Ehrenhaus Dec!. 18; Px 9-14) All of the containers are essentially the same size, proportions,

shape, and color. (Px 9-14) Hutzler and Bradshaw are direct competitors operating in the same

market and vying for the same customers. Indeed, Hutzler has offered evidence that the two

companies' products have been intermingled in supermarket displays, making it likely that

customers will confuse the origin of the products. (Ehrenhaus Decl., Ex. D) In short, Hutzler

has demonstrated that consumers are likely to be confused as to the origin of the products.

Hutzler has also demonstrated that it is likely to establish that Bradshaw has acted

in bad faith. Having seen the success of Hutzler's Food Saver Line, which required a significant

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expenditure of time and money on Hutzler's part (Hutzler Decl. 7), Bradshaw developed its

own line of substantially similar containers for the same five vegetables and fruits (Ehrenhaus

Decl. 18) to be marketed to the same customers. Bradshaw acknowledges that it was aware

ofHutzler's products when it developed its own competing line. (Megorden Aff. 5) Given

that Bradshaw knew ofHutz ler's products, its actions here must be viewed as deliberate and

indicative of bad faith. Although Bradshaw maintains that it relied on an attorney's opinion in

proceeding with the marketing of its products (Id. 6), Bradshaw has refused to provide that

opinion to the Court. Because Bradshaw has refused to provide the attorney's opinion, the fact

that it solicited advice from counsel is entitled to little weight. There is no way to know whether

Bradshaw followed the advice of its attorney in launching its new product line.

In sum, the Court finds that Bradshaw has demonstrated a likelihood of success

on its unfair competition claim.

III. PLAINTIFF'S SHOWING OF IRREPARABLE INJURY

Under the Salinger standard, a court "must not adopt a 'categorical' or 'general'

rule or presume that the plaintiff will suffer irreparable harm (unless such a 'departure from the

long tradition of equity practice' was intended by Congress)." Salinger, 607 F.3d at 80 (quoting

Winter v. Natural Resources Defense Council, 555 U.S. 7 (2008); eBay Inc. v. MercExchange,

L.L.C., 547 U.S. 388, 391 (2006)). Instead, "plaintiffs must show that, on the facts oftheir case,

the failure to issue an injunction would actually cause irreparable harm." Salinger, 607 F.3d at

82.

Hutzler seeks an order

preliminarily enjoining defendant Bradshaw . . . from: (1) infringing, or inducing

infringement, of Hutzler's patents, and (2) unfairly competing with Hutzler's line

of produce containers, specifically, from directly or indirectly making, using,

selling or offering for sale any products embodying the inventions of the patents

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during their terms or the Food Saver Line, or without the express written authority

ofHutzler.

(Dkt. No.4)

Hutzler argues that, absent an injunction, it will suffer six types of irreparable

harm: (1) reputational harm; (2) decrease in market share and loss ofmarket leader position; (3)

price erosion; (4) loss of customers' goodwill; (5) adverse effects on sales momentum and

profits; and (6) encouragement of other infringement. (Pltf. Br. 14-17). The Court finds that

Hutzler will suffer irreparable harm in the form of decreased market share, loss of its position

as market leader, and price erosion - if an injunction is not issued.

"It is well-established that a movant's loss of current or future market share may

constitute irreparable harm." Grand River Enter. Six Nations, Ltd. v. Pryor, 481 F.3d 60, 67 (2d

Cir. 2007) (citing Freedom Holdings, Inc. v. Spitzer, 408 F.3d 112, 114-15 (2d Cir. 2005);

Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharms. Co., 290 F.3d

578,596 (3d Cir. 2002)); see also Stein Indus, Inc. v. Jarco Indus., Inc., 934 F. Supp. 55, 58

(E.D.N.Y. 1996). Moreover, '''the potential loss of . . . the advantage of being the pioneer in the

field and the market leader[ ] may constitute irreparable harm.'" Norbrook Labs. Ltd. v. G.c.

Hanford Mfg. Co., 297 F. Supp. 2d 463,492 (N.D.N.Y. 2003) (quoting Comp Assocs. Int'l Inc.

v. Bryan, 784 F. Supp. 982, 986 (E.D.N.Y. 1992)).

Here, Hutzler has offered evidence that its sales have dropped significantly since

Bradshaw's products entered the marketplace in 2011, and that it has lost certain customers who

have switched to Bradshaw's products. (See Ehrenhaus Decl. '12 , Ex. B; Hutzler Decl. "29 ,

32-35) The effect ofHutzler's loss of clients is difficult to quantify, and Hutzler may not be able

to recover these lost relationships. Moreover, Hutzler has demonstrated that ifBradshaw is not

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enjoined, Hutzler will lose its market leadership. This showing is sufficient to make out

irreparable harm.

Hutzler also argues that "Defendant's distribution of the Infringing Products, if

not enjoined, will result in irreparable price erosion ofHutzler's patented products in that Hutzler

will be forced to drastically change its pricing structure in order to complete with lower-priced

'knock-off ' products." (Pltf. Br. 15; Hutzler Decl. 30) Hutzler maintains that Bradshaw's

products "are priced approximately 25-50 percent lower than Hutzler's Food Saver Line

products." (Hutzler Decl. 27) It is settled law that "the loss of pricing power resulting from

the sale of inexpensive 'knock-offs' is, by its very nature, irreparable." Mint, Inc. v. Amad, No.

10 Civ. 9395(SAS), 2011 WL 1792570, at *3 (citing Abbott Labs. v. Sandoz, Inc., 544 F.3d

1341, 1362 (Fed. Cir. 2008) (citing Purdue Pharma L.P. v. Boehringer Ingelheim GmbH, 237

F.3d 1359, 1368 (Fed. Cir. 2001) (likelihood of price erosion and loss ofmarket share are

evidence of irreparable harm); Polymer Techs., Inc. v. Bridwell, 103 F.3d 970,975-76 (Fed. Cir.

1996) (loss ofmarket opportunities cannot be quantified or adequately compensated and is

evidence of irreparable harm))).

Hutzler has demonstrated that Bradshaw's products are priced lower than

Hutzler 's products (Hutzler DecL 30; Ehrenhaus Decl., Ex. B) and that it was required to lower

its prices in order to avoid losing business to Bradshaw. (Ehrenhaus Decl. 13, Ex. C)

Accordingly, Hutzler has likewise demonstrated irreparable harm flowing from the continued

price erosion it will sufferif

Bradshaw is not enjoined.

IV. BALANCE OF HARDHIPS

Where as here - plaintiff has demonstrated a likelihood of success on the merits

and a likelihood of irreparable harm absent an injunction, a court must next "consider the balance

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of hardships between the plaintiff and defendant and issue the injunction only if the balance of

hardships tips in the plaintiff 's favor." Salinger, 607 F.3d at 80. "The Court 'must balance the

hann that will occur to the moving party from the denial of the preliminary injunction with the

hann that the non-moving party will incur if the injunction is granted.'" Novo Nordisk A/S v.

Pfizer, Inc., No. 06 Civ. 5819(LBS), 2006 WL 3714312, at *6 (S.D.N.Y. Dec. 14,2006) (quoting

Hybritech, Inc. v. Abbott Labs., 849 F.2d 1446, 1457 (Fed. Cir. 1988».

Here, the balance of hardships factor favors Hutzler. Given the price erosion, loss

ofmarket share, and potential loss ofmarket leader position, and the fact that Hutzler's Food

Saver Line accounts for 63% of its sales with the Onion Saver and the Garlic Saver

constituting 27% of the company's sales (Ehrenhaus Decl. 6) - absent an injunction, Hutzler

faces the potential destruction of its business. See Tuccillo v. Geisha NYC, LLC, 635 F. Supp.

2d 227,247 (E.D.N.Y. 2009) (balance of hardships favored movant given that it faced potential

destruction of its business).

Bradshaw argues that it "would be hanned by failure to meet the terms of present

importation and distribution contracts and be forced to breach its present obligations, which

would injure its reputation within the industry, subject it to significant economic hann and hinder

its potential to engage in future arrangements with those parties." (Def. Opp. Br. 24; Megorden

Aff. 13) Bradshaw's product line of home goods includes more than 2,400 different items,

however. (Megorden Aff. 2) Accordingly, the impact of an injunction on Bradshaw's business

is likely to be much less serious than the absence of an injunction on Hutzler's business.

Moreover, Bradshaw knowingly copied Hutzler's patented designs, and thus

assumed the risk that it would suffer financial loss. See Tuccillo, 635 F. Supp. 2d at 247-48

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(citing Novartis, 290 F.3d at 596 ("[T]he injury a defendant might suffer if an injunction were

imposed may be discounted by the fact that the defendant brought that injury upon itself')).

The Court concludes that the balance of hardships factor weighs in favor of

issuing a preliminary injunction.

V. PUBLIC INTEREST

As the final step in the Salinger analysis, "the court must ensure that the 'public

interest would not be disserved' by the issuance of a preliminary injunction." Salinger, 607 F.3d

at 80 (quoting eBay, 547 U.S. at 391).

"[A]lthough there exists a public interest in protecting rights secured by valid

patents," the Federal Circuit has instructed that "the focus of the district court's public interest

analysis should be whether there exists some critical public interest that would be injured by the

grant of preliminary relief." Hybritech, 849 F.2d at 1458.

Bradshaw has not argued that the public interest would be injured by the grant of

preliminary relief, and this Court concludes that the public interest will not be adversely affected

by the issuance of a preliminary injunction.

* * * *

Hutzler has demonstrated that (l) it is likely to succeed on the merits of its patent

infringement and unfair competition claims; (2) it is likely to suffer irreparable injury in the

absence of an injunction; (3) the balance of hardships favors the granting of an injunction; and

(4) the public interest will not be dis served by the issuance of an injunction. Accordingly, the

Salinger test is satisfied and a preliminary injunction is appropriate.

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CONCLUSION

For the reasons stated above, Plaintiffs motion for a preliminary injunction is

GRANTED. Plaintiff is directed to submit a proposed order by July 26,2012. Defendant will

submit any opposition to Plaintiffs proposed order by July 30, 2012. The Court will consider an

appropriate Rule 65(c) bond amount once the terms of the preliminary injunction have been

determined. The Clerk ofCourt is directed to terminate the motion. (Dkt. No.4)

Dated: New York, New York

July 24,2012

SO ORDERED.

Paul G. Gardephe

United States District Judge

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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

HUTZLER MANUFACTURINGCOMPANY, INC.,

Plaintiff,

- against -

BRADSHAW INTERNATIONAL, INC.,

Defendant.

ORDER

11 Civ. 7211 (PGG)

PAUL G. GARDEPHE, U.S.D.J.:

Defendant Bradshaw International, Inc. has moved for reconsideration of this

Court’s July 25, 2012 Memorandum Opinion & Order (the “Order”) (Hutzler Mfg. Co., Inc. v.

Bradshaw Int’l, Inc., No. 11 Civ. 7211 (PGG), 2012 WL 3031150 (S.D.N.Y. July 25, 2012))

granting Plaintiff Hutzler Manufacturing Company, Inc.’s motion for a preliminary injunction.

(Dkt. No. 38) Familiarity with the Order is presumed. For the reasons stated below, Bradshaw’s

motion for reconsideration will be denied.

BACKGROUND

Hutzler is the manufacturer of a line of plastic housewares products called the

“Food Saver Line,” which are used for storing and preserving various types of produce. These

containers resemble the type of produce they are intended to store. (Cmplt. ¶ 9) Hutzler owns

U.S. design patents for two products in the Food Saver Line – the “Onion Saver” and the “Garlic

Saver.” (Id. ¶¶ 9, 11, 13) Hutzler alleges that Bradshaw has sold, and is currently offering for

sale, products that infringe Hutzler’s patents. (Id. ¶¶ 18-19) In addition to alleging patent

infringement, Hutzler asserts a claim for unfair competition under New York law. (Id. ¶¶ 64-73)

USDC SDNY

DOCUMENTELECTRONICALLY FILED

DOC #: _________________

DATE FILED: March 27, 2013


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2

In granting Hutzler’s motion for a preliminary injunction, this Court found that

“Hutzler will likely prevail on the patent validity issue at trial.” Hutzler, 2012 WL 3031150, at

*4. The Court further determined that “Hutzler has established a likelihood of success on the

merits of its patent infringement claim,” finding that

while . . . there are differences between the patented designs and Bradshaw’s products, “[a] visual comparison of the . . . design patent[s] with [Bradshaw’s

Onion and Garlic Keepers] reveals that the overall look of the [products] is

extremely similar . . . [and] [a]lthough a highly discerning consumer might noticethe differences if the [products] were placed side by side, the strength of the

[products’] common features greatly outweighs their differences.”

Id. at *14 (quoting Jack Schwartz Shoes, Inc. v. Skechers USA, Inc., 233 F. Supp. 2d 512, 514

(S.D.N.Y. 2002). The Court also concluded that Hutzler “ha[d] demonstrated a likelihood of

success on its unfair competition claim,” finding that Hutzler had shown “a likelihood of

confusion” and would “likely . . . establish that Bradshaw ha[d] acted in bad faith.” Id. at *16-

17.1

DISCUSSION

I. LEGAL STANDARD

A motion for reconsideration is “an ‘extraordinary remedy to be employed

sparingly in the interests of finality and conservation of scarce judicial resources,’” In re Initial

Public Offering Sec. Litig., 399 F. Supp. 2d 298, 300 (S.D.N.Y. 2005) (quoting In re Health

Mgmt. Sys., Inc. Sec. Litig., 113 F. Supp. 2d 613, 614 (S.D.N.Y. 2000)), and may be granted

only where a court has overlooked “‘controlling decisions or factual matters that were put before

it on the underlying motion’” and which, if examined, might reasonably have led to a different

1This Court further concluded that Hutzler had demonstrated irreparable harm in the form of

price erosion, loss of customers, and loss of market leadership. Hutzler, 2012 WL 3031150, at

*17-18. Finally, the Court determined that the balance of hardships and public interest factors

favored issuance of a preliminary injunction. Id. at *17-18.


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3

result. Eisemann v. Greene, 204 F.3d 393, 395 n.2 (2d Cir. 2000) (quoting Shamis v.

Ambassador Factors Corp., 187 F.R.D. 148, 151 (S.D.N.Y. 1999)). “Reconsideration should not

be granted where the moving party seeks solely to relitigate an issue already decided; in addition,

the moving party may not ‘advance new facts, issues or arguments not previously presented to

the Court.’” Christoforou v. Cadman Plaza N., Inc., No. 04 Civ. 08403 (KMW), 2009 WL

723003, at *7 (S.D.N.Y. Mar. 19, 2009) (quoting Shamis, 187 F.R.D. at 151).

II. ANALYSIS

A. Bradshaw May Not Re-Litigate Issues That Have Already Been Decided

Bradshaw argues that the Court improperly disregarded the surface lines shown in

the ‘114 and ‘463 Patents. (Def. Reconsideration Br. 2-5) Bradshaw asserts:

The Court’s only mention of the relevance of the vertical lines shown in the

drawings of the ‘114 patent erroneously references vertical lines “running thelength of the product.” The drawings of the ‘114 patent show lines of varying

length on the surface of the product, none of which “run the length of the

product.”

Moreover, in the Court’s interpretation of the ‘463 garlic patent, there is nomention whatsoever of the surface lines shown in the drawings. Even if there

were, however, and similarly to the ‘114 patent above, none of those lines “run

the length of the product,” as they do in the Bradshaw garlic saver product.

No other mention whatsoever is made to the surface lines shown in the patents,

nor to the fact that those lines were considered in any way to be important

elements of the claims. In fact, the court seems to have “read-out” those surfacelines altogether.

(Id. at 3-4) Bradshaw further asserts that “the Court misses the point . . . that the lines shown in

the Hutzler design patents relate to the overall look and texture of the design, namely that they

are intended to protect a design which looks as closely as possible [to] the natural surfaces of

onions and garlic.” (Id. at 4)


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4

Bradshaw made these arguments in its opposition brief (Def. PI Opp. Br. 7-15)

and at the preliminary injunction hearing (Jan. 19, 2012 Tr. at 19-20, 23-24), and acknowledges

in the instant motion that it previously raised these arguments: “[t]his point was emphasized by

Bradshaw in its Brief in Opposition to the Motion for Preliminary Injunction (Bradshaw Brief,

pp. 7-8), as well as extensively by Bradshaw’s counsel at the January 19, 2012 hearing of this

matter . . . .” (Def. Reconsideration Br. 3) A motion for reconsideration is not a “‘second bite at

the apple’ for a party dissatisfied with a court’s ruling.” Corines v. Am. Physicians Ins. Trust,

769 F. Supp. 2d 584, 593 (S.D.N.Y. 2011) (citation omitted). Accordingly, Bradshaw’s renewal

of these arguments will not be entertained.

2

Likewise, Bradshaw’s argument (see Def. Reconsideration Br. at 5) that the

shapes, proportions, and center openings of the products are functional was presented in detail by

Bradshaw in its briefing and at oral argument on the preliminary injunction motion. (See, e.g.,

2In any event, the Court explicitly acknowledged the surface lines – or striations – depicted in

Hutzler’s patents, but ultimately concluded that Bradshaw’s products “‘embody the overall effect

of [Hutzler’s designs] in sufficient detail and clarity to cause market confusion.’” Hutzler, 2012

WL 3031150, at *14 (quoting Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1306 (Fed. Cir.

2010). As the Court discussed at length in the Order, the Federal Circuit has emphasized thatcourts must focus on the overall appearance of products when analyzing design patent

infringement. Hutzler, 2012 WL 3031150, at *8-10 (citing Crocs, Inc., 598 F.3d at 1303 (“[T]he

deception that arises is a result of the similarities in the overall design, not of similarities inornamental features in isolation. . . . The ordinary observer test applies to the patented design in

its entirety, as it is claimed.”) (emphasis added; internal quotation omitted); Elmer v. ICC

Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995) (“Under Gorham, the focus is on theoverall ornamental appearance of the claimed design, not selected ornamental features.”)

(emphasis in original)).

Bradshaw also errs in arguing that the Court failed to consider all of the drawings in each of the

patents. The Court considered all of the drawings and explicitly addressed numerous features of

the designs depicted in the patent drawings. For example, with respect to the ‘463 Patent, the

Court discussed, inter alia, the air slits on the bottom depicted in Figures 7 and 8 of the ‘463Patent, the raised design in the center of the interior of the bottom depicted in Figure 8, and the

horizontal line running across the container approximately two-thirds of the way down – where

the products open – as depicted in Figures 1 and 3. Hutzler, 2012 WL 3031150, at *14.


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6

utility of the shape of the designs in issue . . . . Specifically, for its onion saver product, as well

as for several others in its food saver line, Hutzler touts that the design makes the product ‘[e]asy

to find in the refrigerator,’ and ‘[m]ade to look just like an onion, the Onion Saver will never be

lost or forgotten in the fridge.’” (Id. at 7) This is simply an expansion of the functionality

argument that Bradshaw made in its opposition brief and at the injunction hearing, however, and

a motion for reconsideration “is not a vehicle to offer additional support for an argument rejected

previously by the Court.” Capitol Records, Inc. v. MP3Tunes, LLC, No. 07 Civ. 9931 (WHP),

2009 WL 5102794, at *1 (S.D.N.Y. Dec. 14, 2009).

B.

Bradshaw May Not Present New Theories and Arguments

Just as Bradshaw may not rehash arguments it made previously, it may not offer

new theories or arguments that could have been presented before but were not. Bradshaw

argues, for example, that the Court was required to apply the factors outlined in Polaroid Corp. v.

Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), in determining likelihood of confusion in

connection with Hutzler’s unfair competition claim. (Def. Reconsideration Br. 13-14)

Bradshaw never made this argument in its briefing or at oral argument, however, and accordingly

it may not be raised now. “A motion for reconsideration is not an opportunity for a losing party

to advance new arguments to supplant those that failed in the prior briefing of the issue.”

Fredericks v. Chemipal, Ltd., No. 06 Civ. 966 (GEL), 2007 WL 1975441, at *1 (S.D.N.Y. July

6, 2007); see also EEOC v. Fed. Express Corp., 268 F. Supp. 2d 192, 199 (E.D.N.Y. 2003)

(“Under Local Rule 6.3, a party may not advance new facts, issues or arguments not previously

presented to the Court.” (internal quotation omitted)).3

3Although Bradshaw never suggested that a Polaroid analysis was necessary or appropriate, the

Order discusses those aspects of the Polaroid analysis about which the parties offered evidence,

including the success of Hutzler’s Food Saver Line in the marketplace, the similarity of the


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7

Bradshaw’s argument that the two companies do not have identical product lines

(see Def. Reconsideration Br. 16) was also not presented before. Based on the record before it,

the Court found that, “[i]n addition to the onion and garlic containers, Bradshaw chose to

produce containers for lemons, tomatoes and green peppers, thereby duplicating Hutzler’s entire

Food Saver Line.” Hutzler, 2012 WL 3031150, at *16. Bradshaw now argues that Hutzler

“failed to disclose to the Court . . . that the Hutzler Food Saver line of products contains many

more food-shaped containers than these five products. . . . Conversely, the Bradshaw line of

Keeper products contains additional products as well.” (Def. Reconsideration Br. 16) Bradshaw

could have made this argument before, of course, but it did not. A motion for reconsideration “is

not an opportunity for parties to advance new facts, issues, or arguments that have previously not

been presented to the court.” Xuedan Wang v. Hearst Corp., No. 12 Civ. 793 (HB), 2012 WL

3642410, at *1 (S.D.N.Y. Aug. 24, 2012).

products, their proximity in the marketplace, Bradshaw’s bad faith, the inexpensive nature of the

products, and the nature of the likely buyer and the degree of attention he or she would likely

bring to a purchase of these products. Hutzler, 2012 WL 3031550, at *7, *15-16. Bradshaw has

not shown that a deeper analysis of the Polaroid factors at this stage of the litigation is necessary, particularly given that Bradshaw never argued that the Polaroid test is applicable.

Bradshaw also argues that, in considering Hutzler’s unfair competition claim, the Courtimproperly “conflate[d] the issues of patent infringement and unfair competition.” (Def.

Reconsideration Br. 13) This argument has no merit. The Court separately considered Hutzler’s

unfair competition claim and made the following findings, inter alia, specific to that claim: (1)“Bradshaw’s Onion and Garlic Keepers and Hutzler’s designs are substantially the same”; (2)

“[i]n addition to the onion and garlic containers, Bradshaw chose to produce containers for

lemons, tomatoes and green peppers, thereby duplicating Hutzler’s entire Food Saver Line”; (3)“[a]ll of the containers are essentially the same size, proportions, shape, and color”; (4) “Hutzler

and Bradshaw are direct competitors operating in the same market and vying for the same

customers”; and (5) “Hutzler has offered evidence that the two companies’ products have been

intermingled in supermarket displays, making it likely that customers will confuse the origin of the products.” Hutzler, 2012 WL 3031150, at *16. The Court further found that Hutzler had

demonstrated “it is likely to establish that Bradshaw has acted in bad faith.” Id. These findings

are independent of the Court’s patent infringement analysis.


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8

In any event, Hutzler disputes Bradshaw’s claim: “Bradshaw has the facts wrong

. . . . It knew what the Hutzler Food Saver line consisted of in October 2011 when this case was

commenced and in January 2012 when the parties appeared in court for oral argument. So it

should know, but has failed to tell the Court, that the [additional food-shaped containers] were

not part of the Food Saver line when suit was filed or the preliminary injunction motion was

argued . . . .” (Pltf. Reconsideration Opp. Br. 10)

Bradshaw’s remaining arguments concerning the alleged differences between

Hutzler’s and Bradshaw’s lines constitute an attempt to re-litigate issues already decided by the

Court and will not be considered.

4

4Bradshaw has also moved for leave to file the August 8, 2012 Affidavit of Robert J. Kenney in

support of its motion for reconsideration. (Dkt. Nos. 29, 33) Pursuant to Local Rule 6.3, “[n]oaffidavits shall be filed [with respect to a motion for reconsideration] by any party unless

directed by the court.” Local Civ. R. 6.3. Bradshaw will be granted leave to file the Kenney

Affidavit (Dkt. No. 40), which recounts the Court’s request that Kenney re-send a January 25,2012 letter that he had previously submitted on behalf of Bradshaw. Kenney asserts that the

Court issued the Order before he was able to re-send the letter, and that accordingly the Court did

not consider his letter before issuing the Order. (Dkt. No. 40 at ¶ 10) That is incorrect. After

leaving a message for Kenney, Chambers located the letter and the Court reviewed it beforeissuing the Order. Kenney’s January 25, 2012 letter – reflecting that it was faxed to Chambers

on January 25, 2012 – has been docketed. (Dkt. No. 56) Hutzler’s letter concerning the same

topic has also been docketed. (Dkt. No. 55)


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CONCLUSION

For the reasons stated above, Bradshaw's motion for leave to file the August 8,

2012 Affidavit of Robert 1. Kenney (Dkt. Nos. 29, 33) is granted, and Bradshaw's motion for

reconsideration (Dkt. No. 38) is denied. The Clerk of the Court is directed to terminate the

motions.

Dated: New York, New York

March 27,2013

SO ORDERED.

9


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III DIII~~~IhIDIHII 1111111111111HD111111111NIUS0013538114S

(12) United States Design Patent (10) Patent No.: US D538,114 SKolano (45) Date of Patent: ** Mar. 13, 2007

(54) ONION CONTAINER D319,009 S *8/1991 Astrab, Jr................0D9/644D349,643 S *8/1994 Szymnanski.............. D9/644

(75) Inventor: William Kolano, Pittsburgh. PA (US) D436,855 S 1/2001 Papiernik ............... 0D9/428

(73) Assignee: Hutzler Manfacturing Co., Inc., cited by examiner

Canaan, CT (US) Primary Examiner-Terry A. Wallace

(*)Term: 14 Years (74) Attorney Agent, or Firin-Michael j. Striker

(21) AppI. No.: 29/259,206 (57) CLA?%I

(22)File:a 4, 006The ornamental design for an onion container, as shown and(22)File:a 4, 006described.

(51) LOC (8) Ci ....................................... 07-01

(52) U.S. CI.D.....................17/628;9/644 DESCRIPTION

(58) Field of Classification Search ............. D7/628, FIG. 1 satpve fa noncnanrsoigm eD7/612-615, 602, 629; D9/643, 644; 206/4571 e iso iw fnoincotie hoigm e

220/780-806, 4.21 ein

See application file for complete search history. FIG. 2 is a side view thereof,- which is also a mirror image

of the opposite side vicw thereof; and,(56) References Cited FIG. 3 is a bottom view thereof.

U.S. PATENT DOCUMENTS

0196.985 S '11/1963 Selinering et al . D......19/644 1 Claim, 1 Drawing Sheet

- 45 -



U.S. Patent Mar. 13, 2007 US D538,114 S

FIG. I

- 46 -



US0003592463S

(12) United States Design Patent (10) Patent No.: US D592,463 S

Ebrenhaus et al. (45) Date of Patent: ** May 19, 2009

(54) GARLIC CONTAINER D436,855 S * 1/2001 Papiernik ............... D9/428

D519,376 S *~ 4/2006 Ames................... D7/615

(75) Inventors: Rich Ehrenhaus. Ne w York, NY (US); D538,1 14 S * 3/2007 Kolano..................0D7/628Colin F. Gentle. Brooklyn, NY (US) *cited by examiner

(73) Assignee: Hutzler Manufacturing Co., Inc., PrimaryExaminer-Terry A WallaceCanaan, CT (US) (74) Attorney,Agent, or Firm-MichaelJ1. triker

(*)Term: 14 Years (57) CLAIM

(21) AppI. No.: 29/283,424 The ornamental design fo r a garlic container, as shown an d

(22) Filed: Aug. 14, 2007 dsrbd

(51) LOC (9) Cl........................................ 07-01 DESCRIPTION

(52) U.S. Cl................................. D7/613; 137/628 FIG. l is a front perspective view of a garlic container show-

(58) Field of Classification Search ...... 07/612-615, ing our new design;

D7/628, 602. 606; D9/643, 644, 428. 429; FIG. 2 is a top view thereof:

206/457; 2201780-806, 4.21 FI.3iafrnvewtrofSe e application file for complete search history.FI.3iafrnvewtro,

(56) fernces itedFIG. 4 is a rear view thereof-,

(56)Refrencs CtedFIG. 5 is a right side view thereof;,

U.S. PATENT DOCUMENTS FIG. 6 is a left side view thereof;

D196,985 S *11/1963 Schnering et al.......... D9/644 FIG. 7 is a bottom view thereof, and,D267,396 S *12/1982 McDuffee et al.......... D9,'429 FIG. 8 is an interior surface of the bottom portion in an open4,795.033 A * 111989 Duffy .................. 2061457

0319,009 S * 811991 Astrab, Jr................ D9/644 position.

D349,643 S * 8/1994 Szymanski.............. D9,/644D409,052 S * 5/1999 Terraova...............0D71615 I Claim, 4 Drawing Sheets

- 47 -



U.S. Patent May 19, 2009 Sheet 1 of 4 US D592,463 S

FIG. 1

FIG.2

- 48 -




FIG.3

FIG.4

- 49 -




FIG .5

FIG.6

- 50 -



U.S. Patent May 19 , 2009 Sheet 4 of 4i US D592,463 S

FIG.7

FIG.8

- 51 -



CERTIFICATE OF FILING AND SERVICE

I hereby certify that on this 12th day of July, 2013, I caused this Brief of

Appellant to be filed electronically with the Clerk of the Court using the CM/ECF

System, which will send notice of such filing to the following registered CM/ECF

users:

Michael R. Graif

CHADBOURNE & PARKE, LLP

30 Rockefeller Plaza

New York, New York 10112

Turner P. Smith

CURTIS, MALLETT-PREVOST, COLT & MOSLE

101 Park Avenue, Suite 3500

New York, New York 10178

(212) 696-6121

Counsel for Appellee

Upon acceptance by the Clerk of the Court of the electronically filed

document, the required number of copies of the Brief of Appellant will be hand

filed at the Office of the Clerk, United States Court of Appeals for the Federal

Circuit in accordance with the Federal Circuit Rules.

/s/ Robert J. Kenney

Counsel for Appellant



CERTIFICATE OF COMPLIANCE

1. This brief complies with the type-volume limitation of Fed. R. App. P.

28.1(e)(2) or 32(a)(7)(B) because:

[ X ] this brief contains [11,535] words, excluding the parts of the brief

exempted by Fed. R. App. P. 32(a)(7)(B)(iii), or

[ ] this brief uses a monospaced typeface and contains [state the number

of ] lines of text, excluding the parts of the brief exempted by Fed. R. App. P.

32(a)(7)(B)(iii).

2. This brief complies with the typeface requirements of Fed. R. App. P.

32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because:

[ X ] this brief has been prepared in a proportionally spaced typeface using

[ Microsoft Word 2007 ] in [14pt Times New Roman]; or

[ ] this brief has been prepared in a monospaced typeface using [state

name and version of word processing program] with [state number of

characters per inch and name of type style].

Dated: July 12, 2013 /s/ Robert J. Kenney

Counsel for Appellant

hutzler v. bradshaw - appellant brief

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