Kimber v. Bradshaw - Sanctions Briefing

8/12/2019 Kimber v. Bradshaw - Sanctions Briefing

1/166

6243892.1

IN THE UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF OHIO

EASTERN DIVISION____________________________________________

)

KIMBER CAKEWARE, LLC., )) Case No. 2:13-cv-0185

)Plaintiff, )

) Judge Marbley

v. ))

BRADSHAW INTERNATIONAL, INC., ) Magistrate Judge King

)

Defendant. )____________________________________________ )

DEFENDANT BRADSHAW INTERNATIONAL, INC.S MEMORANDUM IN

SUPPORT OF ITS MOTION FOR RULE 11 SANCTIONS

Pursuant to Federal Rule of Civil Procedure 11, Defendant Bradshaw International, Inc.

(Bradshaw) brings the present motion against Kimber Cakeware, LLC (Kimber) for

Kimbers failure to withdraw its Complaint against Bradshaw. Kimbers Complaint lacks

legitimate legal and factual foundation. Kimber has asserted that Bradshaw infringes its design

patent, but has produced no evidence that supports its assertion of infringement. Moreover,

Kimber has asserted, and still maintains, a claim construction that ignores clear Federal Circuit

precedent. Kimber has wrongly asserted protection for a functional, utilitarian article through its

designpatent, which is the epitome of what cannotbe claimed in a design patent.

Bradshaw brings the instant motion as a last resort, having made repeated attempts to

resolve this matter without resorting to filing a Rule 11 motion. Bradshaw has repeatedly sought

an explanation from Kimber as to whyKimber believes its patent is being infringed. The only

explanation that Kimber has every provided in response has been by its ipse dixitparaphrase of

the test for infringement underEgyptian Goddess, that the ordinary observer would be confused.

Case: 2:13-cv-00185-ALM-NMK Doc #: 24 Filed: 02/05/14 Page: 1 of 21 PAGEID #: 179


2/166

26243892.1

The only evidence Kimber has ever offered to support its conclusory assertion is that a single

retailer, upon inquiry by Kimber, stated that it was already selling Bradshaws product.

However, this fact actually demonstrates that the retailer lacked any confusion between the two

products, easily identifying the source. Consequently, the onlyevidence Kimber has in support

of its claim in fact rebuts Kimbers allegation of confusion.

Lacking any basis in fact or law, Kimbers true motives for bringing the instant suit can

be discerned: to shake down Bradshaw for a quick buck, regardless of the merits of its claims

or the law of design patents. Kimber has demanded a settlement amount far less than the costs

Bradshaw would need to defend the current litigation. The Federal Rules are designed to protect

defendants from this type of spurious allegation. The Court, upon full review of the facts and law

of this case, should reach the same conclusion Bradshaw hasthat Kimbers Complaint lacks

legitimate basis, Kimbers Complaint must be dismissed with prejudice, and Kimber and its

attorneys be appropriately sanctioned under Rule 11.

I. Background

Kimber filed the instant action on March 1, 2013, alleging that Bradshaw infringed a

single design patent, U.S. Patent No. D671,376 (the 376 Patent). The 376 Patent claims the

ornamental design for a batter separator, as depicted in four drawings of the 376 Patent. The

underlying utilitarian article of the claimed ornamental design, a batter separator, is designed to

fit inside a standard-sized muffin tin cup, to permit two different types of batters to be used in

creating a single muffin or cupcake (e.g., a half-vanilla, half-chocolate cupcake). The claimed

ornamental design for a batter separator is shown in Figure 1 of the 376 Patent, the front view,

while Figure 2 depicts a nearly identical rear view. Figures 3 and 4 depict the side view and

top view of the batter separator. Both Figures 3 and 4 are essentially drawings of rectangles.



3/166


4/166

46243892.1

Bradshaw Accused Product

Kimbers Complaint sought relief inter aliaa preliminary injunction for the irreparable

harm Kimber was facing due to Bradshaws alleged infringement. [D.I. 1.] However, Kimber

has made no motion for a preliminary injunction, and does not appear to be making any attempt

to seek one. Instead, Kimber has demanded payment from Bradshaw for an amount of money

that falls way below the amount that Bradshaw would be required to expend to defend the

present litigation. In fact, after Kimber had been provided financial data from Bradshaw as part

of the settlement negotiations, which demonstrated that the possible value of the alleged

infringement was even less than Kimbers settlement demand, Kimber served broad, unfocused,

and burdensome discovery on Bradshaw in an apparent attempt to force Bradshaw to settle.

II. Legal Standard

A. The Law of Design Patents

Although design patents share features of the much more common utility patentsuch as

patentability requirements under Title 35, examination before the U.S. Patent and Trademark

Officedesign patents are permitted to protect only the ornamental or non-functional aspects of

an article of manufacture. See Intl Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233,

1238 (Fed. Cir. 2009).



5/166

56243892.1

A design patent protects the "non-functional aspects of an

ornamental design as shown in a patent." Keystone Retaining Wall

Systems v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993)

(citingLee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188-89 (Fed.

Cir. 1988). A design may consist of "surface ornamentation,

configuration, or a combination of both." 1 Donald S. Chisum,Patents, 1.04 (1995). Because a design patent is by its nature

limited to ornamentation, design patents "cannot include claims tothe structural or functional aspects of the article[.]" Lee, 838 F.2d

at 1188. Indeed, if a design patented article is primarily functional,

the design patent is invalid. Avia Group International, Inc. v. L.A.

Gear California, 853 F.2d 1557, 1563 (Fed. Cir. 1988).

Arner v. Sharper Image Corp., No. 94-1713, 1995 U.S. Dist. LEXIS 21156, at *31 (C.D. Cal.

Oct. 5, 1995).

The drawings of the design patent define the scope of the claim. The first step in an

analysis of design patent infringement is to determine the scope of the claim. Determining

whether a design patent claim has been infringed requires, first, as with utility patents, that the

claim be properly construed to determine its meaning and scope.Elmer v. ICC Fabricating,

Inc.,57 F.3d 1571, 1577 (Fed. Cir. 1995). When construing the claim of a design patent, it is

important to consider that [a] patented design is defined by the drawings in the patent, not just

by one feature of the claimed design. Keystone Retaining Wall Sys., Inc. v. Westrock, Inc.,997

F.2d 1444, 1450 (Fed. Cir. 1993). Design 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).

[W]e have made clear that a design patent, unlike a utility patent, limits protection to the

ornamental design of the article. If the patented design is primarily functional rather than

ornamental, the patent is invalid. 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.David A. Richardson v. Stanley Works, Inc., 597



6/166

66243892.1

F.3d 1288, 1293-94 (Fed. Cir. 2010) (internal citations omitted). The design of a useful article is

deemed functional where the appearance of the claimed design is dictated by' the use or

purpose of the article.Rosco, Inc. v. Mirror Lite Company, 304 F.3d 1373, 1378 (Fed. Cir.

2002). (internal citation omitted). In other words, where the design of the article (or portion

thereof) is dictated by the function of the article, the design (or portion thereof) is functional. See

Avia Group International, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1563 (Fed. Cir.

1988).

When functional elements are present in a claimed design, these functional elements must

be verbally identified. Where a design contains both functional and non-functional elements, the

scope of the claim must be construedin order to identify the non-functional aspects of the

design as shown in the patent. OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405

(Fed. Cir. 1997) (quoted inEgyptian Goddess, 543 F.3d at 680) (emphasis added). The Court is

required to construe the 376 Patent to ensure the ornamental features of the design are sorted

from the functional features.

After the claim of the design patent is construed, the accused design is compared against

the patent in application of the ordinary observer test. The test originates from the Supreme

Court finding that

if, in the eye of an ordinary observer, giving such attention as apurchaser usually gives, two designs are substantially the same, if

the resemblance is such as to deceive such an observer, inducing

him to purchase one supposing it to be the other, the first onepatented is infringed by the other.

Gorham Co. v. White, 81 U.S. 511, 528 (1871). The ordinary observer is generally the principal

purchaser of the article. The Goodyear Tire & Rubber Co. v. The Hercules Tire & Rubber Co.,



7/166


8/166

86243892.1

contentions have evidentiary support or, . . . will likely have

evidentiary support after a reasonable opportunity for furtherinvestigation or discovery." Fed. R. Civ. P. 11(b)(1)-(3). As the

1993 advisory committee note explains, this rule "requires litigants

to 'stop-and-think' before initially making legal or factual

contentions." Fed. R. Civ. P. 11 advisory committee note to 1993amendments. The notes explain that the changes to the rule

"emphasize[] the duty of candor by subjecting litigants to potentialsanctions for insisting upon a position after it is no longer tenable."

Raylon v. Complus Data Innovations, Inc., 700 F.3d 1361, 1366-1367 (Fed. Cir. 2012). In other

words, Rule 11 requires litigants to not only have a legitimate basis, in both fact and law, for

asserting a claim, but are required to withdraw its claim should their position shown to be no

longer tenable.

The Federal Circuit applies the law of the regional circuit in reviewing Rule 11 sanctions.

Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1328 (Fed. Cir. 2011). Under Sixth Circuit

precedent, attorneys are required to follow an objective standard for asserting claims: The test

for the imposition of Rule 11 sanctions is whether the individual attorney's conduct was

reasonable under the circumstances.Mann v. G & G Mfg., Inc., 900 F.2d 953, 958 (6th Cir.

1990). The court elaborated that Plaintiffs counsel cannot insulate itself from Rule 11 sanctions

merely by showing that they acted in good faith, but instead must maintain a level of conduct

that meet[s] an objective standard of reasonableness under the circumstances. Id.Where a

litigants case is untenable, making conclusory allegations without factual support, and cannot be

sustained as a matter of law, Rule 11 is violated and sanctions against the litigant are warranted.

See Trans Rail Am., Inc. v. Hubbard Twp., No. 4:08-02790, 2012 U.S. Dist. LEXIS 139113, at

*10-11 (N.D. Ohio Sept. 27, 2012) (citingMann v. G & G Mfg.);Meier v. Green, 2007 U.S.

Dist. LEXIS 65766, No. 07-11410, at *7 (E.D. Mich. Sept. 6, 2007) (citingMann v. G & G

Mfg.).



9/166

96243892.1

As demonstrated below, Kimber lacked any legitimate basis to assert infringement

against Bradshaw. Kimber has continued to assert its infringement claim against Bradshaw

despite lack of evidence, clear guidance from the Federal Circuit that refutes its contentions, and

an unambiguous demonstration by Bradshaw of these deficiencies.

III. Kimbers Allegations

In Kimbers Complaint, Kimber accused Bradshaws batter separator as infringing

Kimbers 376 Patent. Kimber alleged, without any factual support or analysis that [t]he design

of Bradshaws batter separator as marked and sold would cause an ordinary observer, familiar

with the prior art designs, to be deceived into believing that the design of Bradshaws batter

separator is the same as Kimbers patented design. [D.I. 1 31.] In essence, this is an

incomplete paraphrase from the holding inEgyptian Goddess. Kimber ignores the functionality

of its patented design, ignores any consideration of the prior art, and provides no explanation as

to whythe ordinary observer would conclude that the accused Bradshaw product infringes the

376 Patent.

Accordingly, Bradshaw served an interrogatory on Kimber to provide all facts in support

of its assertion of infringement. In response, Kimber again provides an incomplete and wholly

deficient analysis on design patent claim construction and its infringement contentions, then

concludes: Applying theEgyptian Goddessstandard to the Kimber matter and observing the

designs below, it is Kimbers position that an ordinary observer would conclude that the accused

products are similar enough to create market confusion. Ex. 1, Kimbers Answers to

Bradshaws First Set of Interrogatories, No. 16. The drawings below are reproduced here:



10/166

106243892.1

The onlyevidence that Kimber cites in support of its conclusory market confusion theory is

merely repeating the same allegation made in the Complaintthat a customer of Bradshaws

refused to carry Kimbers product because it was already carrying Bradshaws product. [D.I. 1

27.] In fact, as evidenced by the email chain annexed to Kimbers Complaint, the customer was

able to precisely identify the proper source of the batter separator from Bradshaw, including a

link to Bradshaws Good Cook website. [Id.Ex. D.] Moreover, this single uncorroborated

hearsay statement fails to support the requirement that it must be the ornamentalfeatures that

create the confusion and makes no such distinction over the functional features. See OddzOn

Prods, 122 F.3d at 1406-07 (finding that where both functional and ornamental features are in a

patent design, survey evidence must demonstrate a link between the accused products and the

patented ornamental aspects of the design). Neither at the time of filing, nor more than nine

months into the litigation, has Kimber produced any scrap of evidence to support its assertion of

infringement.

At no point has Kimber acknowledged that its patented design is primarily functional,

which is not afforded design patent protection. Moreover, Kimber has also failed to acknowledge

that the established prior art of record completely abrogates any attempt by Kimber to stretch its

patent to accuse Bradshaw. These continued failures by Kimber to establish a basis in fact or law

to sustain this action are sanctionable under Rule 11.



11/166

116243892.1

IV. Kimbers Assertion of Bradshaws Infringement is Unsupported by the Law

and Bradshaw Does Not Infringe the 376 Patent as a Matter of Law

A. Kimbers Proposed Claim Construction Ignores Functional Elements, WhichAre Not Afforded Protection Under A Design Patent

Kimbers only attempt to provide any analysis on the scope of the 376 Patent was

provided through its Settlement Demand Letter of November 27, 2013.1(Ex. 2 at 4.) Kimbers

analysis on the construction of the 376 Patent is improper and contrary to the precedent

established in inEgyptian Goddess,543 F.3d 665. Kimber makes the conclusory assertion that

the Court will construe Kimbers claim as an unambiguous and clearly illustrated design for a

cupcake batter separator. (Id.) But at no point does Kimber address that the bulk of the 376

Patent claims functional elements that are not protectable under design patent law.

Functional elements have never been protectable under design patent law. In order to

prevent a design patentee from asserting utility patent protection through a design patent,

functional elements must be identified in the claim construction of the design patent. Where 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.

OddzOn Prods., 122 F.3d at 1405 (quoted inEgyptian Goddess, 543 F.3d at 680).

Kimbers letter and analysis completely ignores that the claimed batter separator has a

primarily utilitarian function of bisecting a cupcake/muffin cup. The claimed batter separator

1Although Kimbers settlement demand letter (and subsequently Bradshaws responsive letter)

are inadmissible for the purpose of establishing liability, the settlement letters demonstrateKimbers bad faith in asserting a position contrary to clear law, and thus admissible under Fed.

R. Evid. 408(b). See, e.g., Seafarers Int'l Union of N. Am. v. Thomas, 42 F. Supp. 2d 547 (3d Cir.

1999) (holding bad faith conduct during negotiations admissible);Ausherman v. Bank of Am.

Corp., 212 F. Supp. 2d 435 (D. Md. 2002) (Fed. R. Evid. 408 does not shelter [attorneys] who

attempt to shield from the Courts scrutiny deliberately untruthful statements.) However, any

statement concerning Bradshaws settlement offers remain inadmissible to prove liability underFed. R. Evid. 408(a).



12/166

126243892.1

shows in Figure 1 the front view while Figure 2 depicts a nearly identical rear view. These

two views together generally depict an upper top part of the separator, while the bottom

trapezoid conforms to the diameter of a standard size cupcake pan. (See 376 Patent, Ex. 3.) The

bottom cup-shaped part is depicted in the red box below:

The bottom part of the claimed design is unquestionably functional. The bottom part must

conform to the inverted, truncated cone shape of a muffin/cupcake cup. Any other shape would

not permit the batter poured into one half of the muffin cup to be separated from the other half of

the muffin cup. The bottom half must be trapezoid-shaped in the depicted proportion to properly

bisect the inverted, truncated cone shape of a muffin cup.

Figures 3 and 4 depict the side view and top view of the batter separator. Both figures are

essentially drawings of rectangles.



13/166

136243892.1

Unsurprisingly, Kimber has never provided an analysis on the construction of its 376 patent

utilizing Figures 3 and 4 as part of its analysis. This is a tacit admission that Kimber has no

protectable interest in their design being essentially flat. This is supported by the similar analysis

from above on the functionality of the claimed batter separator. A batter separator must be flat

and thin (as claimed) in order to bisect the inverted, truncated cone shape of a muffin cup. Any

other pattern or shape other than flat would interfere with the ability to create two halves of

a single cupcake. Any other arbitrary shape would fail to create a cupcake with two halves, and

thus is a functional element of the claimed batter separator.

There are other clear indicia of the functionality of the claimed batter separator.Berry

Sterling Corp. v. Prescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997) outlines additional

considerations, which are also present here:

Whether the protected design represents the best design. The trapezoid shape of thebottom part and the flatness of the claimed batter separate are the best design choices.Any other shape of these features would be poor choices in creating a batter divider that

evenly divided a muffin cup.

Whether alternative designs would adversely affect the utility of the specifiedarticle.A shape other than the trapezoid shape of the bottom part in the claimed

dimensions would not prevent batter being poured into one half of the muffin cup from

leaking into the other side of the muffin cup. A batter divider that was not flat and thin

would not permit the creation of muffins/cupcakes with two halves.



14/166

146243892.1

Whether the advertising touts particular features of the design as having specificutility. Kimbers advertising touts its functional features. Right beneath the product nameon Kimbers packaging is the utilitarian feature of the claimed batter separatorthat it

fits standard size cupcake pans and cups:

(SeeEx. 2 at 1, Kimber Settlement Demand Letter of November 27, 2013.)

Kimber cannot ignore the functionality of its claimed batter separator during claim

construction. The Federal Circuit has already ruled it is improper to rely on just the

unambiguous and clearly illustrated design shown in the drawings where functional elements

must be considered. See Richardson, 597 F.3d at 1294. ([Patentee] fails to explain how a court

could effectively construe design claims, where necessary, in a way other than by describing the

features shown in the drawings. [Patentees] proposition that the claim construction should

comprise nothing more than the drawings is simply another way of arguing that the court erred

by identifying the functional elements of the patented article, and is therefore unavailing. We

find no error in the courts claim construction.). Moreover, if a design contains both functional

and ornamental features, the patentee must show that the perceived similarity is based on the

ornamental features of the design.OddzOn Prods., 122 F.3d at 1405. As such, there is an

additional level of proof required from the patentee, and it cannot merely rely on the drawings

alone to construe the patent.2

2Bradshaw maintains there are additional functional features of the claimed batter separator,

including at least the overhang on the top of the cupcake design that allow the product to rest

on the cupcake/muffin cup or paper cup, and the raised bumps for gripping the separator.

However, Bradshaw does not believe it is necessary to proceed with further analysis on thesepoints at this time.



15/166

156243892.1

Kimbers proposed claim construction of the 376 patent is not merely a difference of

litigation positions, but an untenable position contrary to well-established law on design patents.

B. Kimbers Infringement Analysis Ignores Consideration Of The Prior Art AsRequired UnderEgyptian Goddess

In addition to Kimbers omission of clear precedent that prevents Kimber from claiming

design patent protection for the functionality of the claimed design, Kimbers cursory

infringement analysis relies on an improper selective reading of the operative case law. Kimber

omits key precedent fromEgyptian Goddessthat requires Kimber to consider the prior art in its

infringement analysis:

When the differences between the claimed and accused design

are viewed in light of the prior art, the attention of the

hypothetical ordinary observer will be drawn to those aspects of

the claimed design that differ from the prior art. And when theclaimed design is close to the prior art designs, small differences

between the accused design and the claimed design are likely to be

important to the eye of the hypothetical ordinary observer.

Egyptian Goddess, 543 F.3d at 675 (emphasis added). In other words, it must be the differences

between the claimed design and the prior art that cause the deception by the ordinary observer of

the similarities between the claimed design and the accused product. Comparison of the claimed

design against the prior art demonstrates exactly what feature the ordinary observer would be

drawn to in comparison with the accused product:

Fig. 1, 376 Patent Cupcake Cookie Cutter

Dated Oct. 25, 2009 (Ex. 4)



16/166

166243892.1

The only articulable difference between the claimed design and the prior art cookie cutter

is the addition of the seven circles under the bell portion of top of the claimed design. Every

other feature of the claimed design is present in this single prior art reference. Comparing the

differences between the claimed and accused design viewed in light of the prior art (and

accounting for the functional elements of the claimed design) indisputably demonstrate how

distinct the Accused Product is from the claimed design:

Fig. 1, 376 Patent Cupcake Cookie Cutter Accused Product

Again, the ordinary observer would be drawn towards the distinctive seven circles under

the bell portion of top of the claimed design, which are not present in the Accused Product. Any

attempt to construe the 376 Patent more broadly to encompass the Accused Product will render

the patent invalid as anticipated, as all of the ornamental features would be encompassed by the

Cupcake Cooke Cutter prior art reference. See Upsher-Smith Labs., Inc. v. Pamlab, LLC, 412

F.3d 1319, 1322 (Fed. Cir. 2005) (A century-old axiom of patent law holds that a product

which would literally infringe if later in time anticipates if earlier.)



17/166

176243892.1

This same analysis can be performed with any number of prior art references that the

ordinary observer would be familiar with:

D671,376 D359,153 (Ex. 5.) D601,379 (Ex. 6.)

D633,654 (Ex. 7.) D616,260 (Ex. 8.) D649,905 (Ex. 9.)

D610,944 (Ex. 10.) D590,524 (Ex. 11.) Accused Product

Bradshaw can find no plausible argument whereby Kimber can assert infringement of the

376 Patent without simultaneously distinguishing over the prior art.3

Even without the above analysis, the lack of any good faith claim of infringement can be

found in Kimbers Complaint. Kimbers repeated use of a three-way comparison between the

patent design, the accused product, and Kimbers product demonstrate how different Bradshaws

product is:

3Alternatively and additionally, the 376 Patent is invalid as anticipated by the Cupcake Cookie

Cutter prior art reference. All of the ornamental features of the two designs are the same, and theaddition of the functional gripping circles under the bell portion of the top of the design fails to

make a patentable distinction over the prior art. However, a full analysis is not necessary at this

time and Bradshaw reserves the right to revisit the invalidity of the 376 Patent later, ifwarranted.



18/166

186243892.1

The ordinary observer can easily distinguish which one of these three images is not like the

others. Nobodywould confuse the Bradshaw product in the middle as the same as the other two

pictures, let alone an ordinary observer. Not only does Bradshaw not infringe the 376 Patent,

there is no plausible argument for Kimber to assert that Bradshaw is infringing the 376 Patent.

V. Kimbers Filing and Maintaining of the Present Lawsuit Without a Basis in Fact or

Law Warrant Rule 11 Sanctions

As Kimber continues insisting on advancing its baseless claim of infringement against

Bradshaw, Kimber is subject to liability for violating Federal Rule of Civil Procedure 11. Under

Sixth Circuit precedent, the test for the imposition of Rule 11 sanctions is the objective standard

of whether the individual's conduct was reasonable under the circumstances. Union Planters

Bank v. L & J Dev. Co., 115 F.3d 378, 384 (6th Cir. 1997) (citation omitted). This objective

standard is violated when the patentee takes unsustainable positions during litigation. For

example, the Federal Circuit held that there is a threshold below which a claim construction is

so unreasonable that no reasonable litigant could believe it would succeed, and thus warrants

Rule 11 sanctions.Raylon v. Complus Data Innovations, Inc., 700 F.3d 1361, 1368 (Fed. Cir.

2012)(quoting iLor, LLC v. Google, Inc., 631 F.3d 1372, 1378 (Fed. Cir. 2011)).

As demonstrated above, Kimbers positions on claim construction and infringement are

so unreasonable that no reasonable litigant would believe it could maintain these contentions.

Kimber cannot ignore established precedent on the functionality of its claimed design or the prior



19/166

196243892.1

art that limits the scope of its design. Kimber cannot profess ignorance of the law, which also

provides no support for Kimbers assertion of infringement. As the Sixth Circuit measures

conduct against an objective standard, Kimber cannot insulate itself from failing to comply with

Rule 11 merely because it may have had a good faith belief in pursuing the present lawsuit.

Thus, Rule 11 sanctions are warranted against Kimber as it has maintained its accusation of

infringement against Bradshaw.

Even more egregious is that Kimber has had full knowledge of the facts and legal

statements contained herein since December 9, 2013, as Kimber was provided with Bradshaws

response to its settlement demand letter. (Ex. 12.) The Sixth Circuit has admonished parties that

Rule 11s requirement of reasonableness is not a one-time obligation and parties are

impressed with a continuing responsibility to review and reevaluate his pleadings and where

appropriate modify them to conform to Rule 11."Runfola & Associates, Inc. v. Spectrum

Reporting II, Inc., 88 F.3d 368, 374 (6th Cir. 1996).

In this case, Kimbers allegations and legal positions were not reasonable at Kimbers

initiation of the present lawsuit, and the continued discovery and correspondence exchanged

further demonstrate the lack of reasonableness. Where much of the factual record is publicly

available at the time of the complaint, Plaintiff must make a sound appraisal of the viability of

[its] claims.Bates v. Colony Park Ass'n, 393 F. Supp. 2d 578, 598 (E.D. Mich. 2005). Any

doubt Kimber had that it was attempting to protect non-ornamental features already present in

the prior art through its asserted design patent should have long been erased.



20/166


21/166

216243892.1

/s/ Michael B. Marion

Michael B. Marion (admittedpro hac vice)Robert J. Kenney (admittedpro hac vice)

BIRCH, STEWART, KOLASCH & BIRCH, LLP

8110 Gatehouse Road, Suite 100 East

Falls Church, Virginia 22042Phone: (703) 205-8000

Fax: (703) 205-8050

[email protected];

[email protected]

ATTORNEYS FOR DEFENDANT

BRADSHAW INTERNATIONAL, INC.

CERTIFICATE OF SERVICE

I hereby certify that on January 8, 2014 and February 5, 2014, I served via electronic

mail, a copy of the foregoingDefendant Bradshaw International, Inc.s Memorandum in Support

of its Rule 11Motion for Sanctionsupon:

Samuel N. Lillard, Esq.

Courtney J. Miller, Esq.David M. Marcus, Esq.

McNees Wallace & Nurick LLC

Fifth Third Center21 East State Street, Suite 1700

Columbus, OH 43215

[email protected]

[email protected]

[email protected]

/s/ Michael B. Marion

Michael B. Marion



22/166

EXHIBIT 1

to Defendant Bradshaw's

Rule 11Motion

Case: 2:13-cv-00185-ALM-NMK Doc #: 24-1 Filed: 02/05/14 Page: 1 of 23 PAGEID #: 200


23/166


fN TRE UN ITED STA TES DISTRICT COURTSOUTHERN DISTRI CT OF OHIOEASTERN DIVISION

KJmber Cakeware, LLC Case No. 2: 13-cv-0185PlaintiiT. Judge Marbleyvs. Magistrate Judge KingBradshaw l nte rnHtional, ln c.Defendant

PLAINTIFF KJMBE R CAKEWARE, LL SANS WERS TO DEFENDANTBRADSHAW JNTERNATIONAL , INC. S FIRST SET OF I NTE RROGATORIESNow comes the Plaintiff, Kimber Cakewarc, LLC (hereinafter Plainti rr or ''Kimber ),

through the undersigned counsel, pursuant to Rule 33 of the Federal Rules of Civil Procedureand nereby subm its its responses to De fendant Btadshaw International, Tnc. s (hereinafterDefendant or Bradshaw ) First Sel of Interrogatories under oath and in writing.

PRELIMINARY STATEMENTThe responses se t fo rth be low arc made so lely for the purpose of this action. By

responding to Defendants First Set of Intcrrogatol'ics, Plaintiff hereby states that it does no twaive its right to make all appropriate objection s including without limitation, objectionsconcerning relevancy. competency, material ity. propriety and admissibi1ity, that would requirethe exclusion of any statement contained herein or in any document referenced iJ any suchresponse or document were so ught to be introduced into evidence at any hea ring or trial in thisaction. Plaintiff expressly reserves al l such objections.

Plaintiff has not ye t completed its investigation of all the facts relating to this action andhas no1 yet completed its preparation fo r trial. he following responses are based upon


24/166


information and documents presently known to responding party and are therefore made withoutprejudice to responding party's right to produce sub sequently discovered evidence relaUng to theproof of presently known material fac ts and to produce all evidence, whenever di scovered, in anyrotm, relating to tbe proof of subsequently discovered material fac ts.

Except for ex pl icit facts admitted herein, or in any documents referenced in connectionhc 'ewith, no admission or any narwe is intended, and none should be implied or inferred.Plaintiff genera lly objects to each discovery request to U e ex tent that it seeks informationprotected by the attorney-client and/or attorney wo rk product ptivileges, including withoutlimitalion, protected communications between responding party and its cow1sel and counsel'slega l reasoning, theories opiruons, research, impressions and/or conclusions. Without waivingany objections, qualifications and limitations, Plaintiff respond s as fo llows:INTF RROGATOR O 1:

Identify each Accused Product in this action, set forth each element of the patent-in-suitthat Kimber alleges has been infringed as a result of the sale of the product; whether suchinfringement is direct or under the doctrine of equivalents; set forth , on an e lement-by-elementbasis, the corresponding structure in each product which Kimber alleges satisties each respectivecJaim element or feature; and identify eacl1 document refen ing or relating to any analysis orevaluation performed on any sample of an Accused Product.ANS\VER

Wi hrespect to fn terrogatory No. I, Kin1ber states that the Accused Product jn this actions Defendant s "Sweet Creations by Good Cook cupcake divider'' batter separator. Kimber

further states that taking its non-obvious ornamental design for a batter separator marketed as''Batter Babies ("patented design") and comparing it to Ue Accused Product, an ordinary

2


25/166


observer would believe that the patented design and Accused Product are substantially the samein appearance as illustrated below:

Kimber's Patented Design Bradshaw Batter Separator

Further, pursuant to Egyptian Goddess v Swisa, 543 F.3d 665 (Fed. C ir 2008), inconstruing design patents, courts are to genera lly forego ve rbal or narrative descriptions ofdesign patents: ''Given the recognized di fficulties entailed n trying to describe a design inwords, the preferable course ordjnarily wiJI be for a disnict court not to attempt to ' construe' adesign patent claim by providing a detailed verbal description of the c laimed design.' ' [d at 679.[D]csign patents 'typically are claimed as shown in drawings.' and claim construction 'is adapted

accordingly. ' d '[A]s a rule the illustration in the drawing views is its own best description. 'ld Accordingly, courts have generally re lied on parent draw ings to construe design claims.Wing Shing Products Co. Ltd. v. Sunbeam Products, Inc., 665 F.Supp.2d 357, 360 (S.D.N.Y.2009). Thus, Defendant's request for an element-by-clement comparison of the Accused Productand patented design is a Futile exe rcise that does not comport with the present state of therelevant law.

3


26/166


FinaUy wi th respect to Defendant s request that Kimber idemify ench document referringor elating to any analysis or evaluation performed on any sample of an Accused Product,Kimber specifically identifies U.S. Design Patent No. D671,376.INTERROGATORY NO 2:

Identify all prior art to lhe patent-in-suit, including the identification of all patentability.validity, prior art, e11forceability or infringement evaluations, searches, or opinions conducted byor lor Kimber (or any of the named inventors of the patent-i n-suit) relating to the allegedinventions described and claimed in the patent-in-suit, including for each such evaluaUon, searchor op inion, the iden tification of the date and scope of each such evaluation, search or opinjon; theidentification of each person involved in authorizing, conducting, evaluating or reviewing theresu lts of each such evaluation, search or opinion; and n identification of all documents,including in patents and other publications which were revealed by each such evaluation, searchor opi nion; and all other documents relating to each such evaluation, search, or opinion,including but not limited to any such reports.ANSWER

With respect to Interrogatory No. 2, Kimber states that it is not aware of any pdor rtrelated to he patent-in-sllit.

INTERUOGATORY NO 3:Tdentify each disclosure related to the subject matter for the patent-in-suit made prior to

the Jiling of a patent application, by any individual, including the inventors of the p t e n t i n s u i tto any thit d party, nd identify each person(s) involved in and who received such disclosUI e.

4


27/166


ANSWER:With respect to Interrogatory No. 3, Kimber states lhat it made no disclosures related to

the subject matter for the patent-in-suit to any third-party prior to the filing of the relevant patentapplication.INTERROGATORY NO 4:

Identify each communication between Kimber and any other person or companyconcerning the initial availability, offer of sale. or proposal or request to provide productsembodying any alleged invention of U1e patent-in-suit prior to fi ling the corresponding patentapplication directed to the claimed product.ANSWER:

Kimber engaged in conversations with lhe following companies concerning themanufacture, distribution, and/or marketing of its patented design prior to filing thecorresponding patent application:

Midwest Molding Inc. (Plain Ci ty, OH) PPA Graphics (Canal Winchester, OI I) TCG Continuum (Columbus, OH) Dive Creative (Columbus, OH Thomas Tool Mold Co mpany (Westerville, OI-l Priority Designs (Gahanna, OH)

INTERROG TORY NO 5:With respect to the patent-in-suit. identify each imber Product manufactured and/or

distributed by or on behalfof Kimber at any time by product name, number ot sim ilar manner ofidenti fication; state the date he product was first introduced to the market; set forth the total


28/166


sales volume in the United States in units and assoc iated dollar revenue on an annual basis fromthe date of introduction; identify the person or persons most knowledgeable with respect to eacho the relevant feaLurcs of the product; and identily the person or persons most knowledgeableconcerning lbe facts and c ircumstances related to the original introduction of the product to themarket by or on beha lf of Kimber (including the original customer to whom the product was tirstoffered).ANSWER

With respect to lnt nogatory No 5 Kimber states that it offered its Oatter Daddy'' and''Batter Babies' product lines for sale in the consumer market beginning in December 20 I0.Kimber further states that Robert Reiser, original Member and current President of Kimber. isthe person most knowledgeable with respect to the relevant features of the patented design andthe facts and circum stances related to the miginal introduction of the Bauer Babies to tbe market.Conce rning Defendant's request for sales and revenue infonnation related to the Patented designgiven the sensi tivity and proprietary nature of the information requested, Kimber stales tl1at itwill produce such information upon the cxccuLion of a mutually agreeable protected order, adrafl of which has previously been provided to Bradshaw for review and consideration.INTERROGATORY NO 6:

State the date that Kimber first became awa re or each Accused Produ ct in this action, setforth the circumstances under which Kimber became aware of the product. identi fy each personhaving know ledge of the ci rcumstances surrounding Kimber' s initial awareness of the AccusedProduct(s); and identify each document referring or relating to Kimber's awareness of theAccused Product and of its fe turesAN WER


29/166


Kimber fi rst became aware of the Accused Product in thi s action on or about October 22,2012 when Ki mb erly Reiser ( Mrs Reiser), Vice President and Mernber ofKimber, received anemail [rom Ki m Teresi ( Ms Teresi ), Se nior Buye r and Director of Ad vertis ing at a co mpanycalled Chef Ce ntraL Mrs Reiser had reached out to Ms. Teresi to explore whether Chef Cenualwou ld be interested in can ying Batter Babies fo r sale. Ms. Teresi, apparently evidencingco nfusion as to the source of Bradshaw's baller separator, responded that Chef Central wasalready carrying this product through Bradshaw/Good Cook. Mrs Reiser respond ed to inquire

how long Bradshaw had been selling its batter separator, to whi ch Ms Teresi respond ed thatBradshaws batter separator had been introduced at th e Intern ational Housewares Show in Marchof2012 On or abour October 22, 2012, Ms Reiser info rm ed Mr. Reiser about the above emailco tTespondence from Ms Teresi and forwarded hi m the relevant chain of emails A true andaccurate copy of the email chain be tween Mrs . Reiser and Ms Teresi is attached to Plaint ifPsCo mpla int as Exhibi t D

In addition, Mr. Reiser attended a housewares show in 20 13 and witnessed a salespresentation y unknown representatives and /or agents of Bradsha w who explained howBradshaw supposedly invented the Accused Product.INTERRO G TO RY NO

Identify each occun ence on whi ch an Accused Product was evaluated by or on behalf ofKimber, and identifY each docum ent referring or relating to any testing, measurement, an al ysisor observations related to the product and identify each person invo lved in the evaluation.

NSWER

7


30/166


Wit h respect to lntetrogatory No. 7, Kimber states that on or about October 22. 201 2,Robert Reiser observed the Accused Product on the Bradshaw/Good Cook website and visuallycompared the Accu sed Product to the patented design. Mr. Reiser also viewed the AccusedProduct in-person at a housewares show in 2013. In addition, the Accused Product wasevaluated and visua lly compared to the patented design by Kimbers past legal counsel, RonaldKoch, and present legal counsel, Courtney Miller. To the extent that the foregoing request seeksinform ation and documentation protec ted by the illto rney-client privilege and/or work productdoctrine, Kimber exercises its protected right to withhold such information from production.JNTERROGATORY NO :

Identify any agreements relating to or invo lving the patent-in-suit including ownershipintctests , non-disclosure agreements, development ag reements, assignment agreements, fltndingagreements. license agreements including p01tfolio licenses), settlement agreements. andconsent agreements not to enforce the patent-in-suit, and identi fy the person mo st knowledgeableregarding the identified agreements.ANSWER:

A written assignm ent of rights wus execuLe by Robert Re1ser to Kimber involving thepaten ted design. As a result, Kimber is the owner by assignment of a right, tille and interest inU.S. Design Patent No. D67 I .376 . In further response to Defendant s request. Mr Reiser is theperson mo st knowledgeable about U1e relevant wri tten assignment.lNTEIU{OGATOilV NO 9:

Jden tily each of Kimbers empl oyees, former employees, consultants or agents (otherthan clerical or similar non-technical support staff) who were involved, on behalf of lUmber, nthe prosecution of and application for the pa tent-in-suit and any foreign counterparts thereof and

8


31/166


the duties and responsibilities of each in connection witb the prosecution of and application forthe patent-in-suit.NSW R:

Robert Reiser, original Member and current President of Kimber, created the in itialdesign for the patented design, sought the application for U1e patent-in-suit, obtained the patent-in-suit assigned his rights to the patent-insuil to Kimber and observed the infii.ngement of thepatent-in-suit by Defendant.i T RROGATORY NO 10:

Identify each person that Ki.mbcr may call as a witness to testify at any proceeding in thi smauer. state the genera l subject matter to which the witness testimony is expected to re late and ,for any identified expert witness: st te the occupation of each expe1t , identify the field ofexperlise of each expert; provide a resume of qualifications of each expert; state each opinionwhkh the t xpelt may offer on behalf of Kimber; set fmth the complete basis underlying eachrespective opinion; and identify all documents and things supporting or otherwise referring orrelating to each such opinion.NSW R:

Kimber states that it has not yet identified an expert witness it may call to testify at anyproceeding in this matter. Should Kimber identify an expert witness in the future, it willseasonably supplement the foregoing response in accordance with the Federal Rules of CivilProcedure. As to lay witnesses, Kimber has not determined who it may call to testify in thismatter; however Kimber has prepared a preliminary list of witnesses be low. Kimber reserves lheright to seasonably supplement this response.

1 RobertS. Reiser, President and Member3333 Scioto f rms Dr.9


32/166


33/166


Mr. Giessman has knowledge concerning the history of Kimber and the effects ofDefendant s infringing activ ities on Kimber s business.

5. Mcrrilee M. Martin, Member6157 Joliff StreetGalloway, Ohio 43119(6 14) 361-8677Ms. Martin has knowledge co ncernmg the history of Kimber and the effects ofDefenda11t s infringing ac tivi ties on Kimbers business.

6. Keri Anderson, employee of DefendantRancho Cucamonga, California 9 1730(800) 421-6290Ms. Anderson has knowledge concerning the DeHmdant s purchase of products fromKimber based on the design protected by U.S. Design Patent No. D671 ,376. theintentional copying by Defendant ofKimber s design. and the awareness of Defendant ofthe patent-pending status of the design upon which Kimber s products are based.

7. Kim Teresi, Senior Buyer and Director ofAdvertising at ChefCentraJ240 Route 17North Paramus, NJ 07652(20 I 576-0178 ex t. 12Ms. Teresi has knowledge concerning lual onfusion between the design set forth inU.S. Des ign Patent No. 0671.376 and the Defendants infringing prod uct.

8. Jeff MegorclenExecutive Vice President at Bradshaw9409 Buffalo AvenueRancho Cucamonga, California 91730(800) 421-6290It is anticipated lhat Mr. Megorden wi ll testify about the facts and circumstances relatedto Derendant s infringemenl on U.S. Design Palent No. 0671.376.

9. Thomns Barber


34/166


9409 Buffalo AvenueRancho Cucamonga, California 91730(800) 421-6290t is anticipated that Mr. Barber will testiry about the facts m1d circumstances related to

Defendant s infringement on U.S. Design Patent No. D671 ,376.0. Any witness identified by Defendant or called to testify by Defendant in this matter.

INTERROGATORY NO 11:Identify and describe al l documents retention and do cument destruction policies o

Kimber that has been applicable or in force at any time since 2000, including any such policyconcerning information or documents stored in computer memory.ANSWER:

Kimber has no formal destruction or retention poUcy for company documents.INTERROG TORY NO 12:

Separately for each o Bradshaws interrogatories and document requests, identify eachperson who was consulted or who provided information or documents in connection with thepreparation o your answers thereto.ANSWER

Kimber states that Robert Reiser provided Kimbers responses to the foregoinginterrogatories and requests for documents with the assistance o counsel.INTERROGATORY NO 13:

State all facts that suppo11 your allegations made in paragraphs 12 1.4 o Kimber sComp laint.

2


35/166


ANSWERKimber states that prior to the formation of Kimber, Robert Reiser designed and began

marketing a full -sized cake ba tter separator called the 'Batter Dadd y. n 2009, while the designpatent was pending on the Batter Dadd y Mr. Reiser sought to partner with approximately twodozen companies for the manufac ture and distribution of the Batter Daddy. he specificcompanies that Mr. Reiser can recall communicating wi th related to partnering on the BatterDaddy included:

Wi Lon Co rp .

Brads haw/Good Cook Rubbermaid Zak Ca lphalon CHEFS arberware KitchenAid NordicWare llutzler Nopro Oneida Anchor Hocking fox Run I3rands Progressive Inti.

3


36/166


Nearly all the commutlication occurred via unsolicited co ld calls or unsolicited written letters tothe particular company and Mr. Reiser does not remember e specific names of any individualshe communi cated with. Mr. Reiser does specifically recall that the representative he spoke withfrom Bradshaw rejected partnering with him on the Batter Daddy for the stated reason thatdifficulties in lhe economy had caused Bradshaw to stop developing any new products for aperiod of lime. ThereaHer, Mr Reiser sought professional device and conducted marketresearch, and determining that there was a market for the Batter Daddy, began to prepare anJmanufacture and market the Batter Daddy on his own.INTERROGATORY NO 14:

State all facts that support your cJaims of infringement under 35 USC 271 (b), (c). and(f).ANSWER

In 201 1, Kimbers President and founder, Robert S. Reiser, applied for a design patentfrom the U S Patent Office for the Batter Babies design. On November 27, 2012, Kimber'spatent was approved and designated as U.S. Design Patent No. D67l,376. Mr Reisersubsequently assigned the patent to Kimber. Since bringing its Batter Babies line of products tothe market, Kimber has experienced growing success and received praise in the industry.

Defendant Bradshaw International, Inc. ( Bradshaw'') is a Delaware corporation with itsprincipal place of business in Rancho Cucamonga, California. ll also sells baking products,including a line of products under the name Sweet Creations by Good Cook.

4


37/166


On Friday, December 16, 20 , Bradshaw's Senior Product Manager, Keri Anderson( Ms. Anderson ), ordered a set of Batter Babies from Kimber. Kimber subsequently completedthe order request and shipped the package of Batter Babies to Ms. Anderson at Bradshaw'sfacil ities. The package sent to Ms. Anderson was clearly labeled with the notification PatentPending. Approximately I0 months later, Kimber became aware at Bradshaw was selling acompeting product to its Batter Babies with a design that was substantially the same in violationof its design patent:

Kimber's Patented Design Bradshaw Batter Separator

Bradshaw's competing product design was so similar that Kimber began to encountermarket confusion when marketing its Batler Babies product. Specifically, when Kimber inquiredas to whether Chef Central, a company that sells cookware, bakeware and other assortedaccessories, would be interested in carry ing Batter Babies fo r s le, a Chef Central representativeresponded that Chef was already carrying Kimber' s product through Bradshaw/Good Cook.Because Bradshaw has applied a colorable imitation of Kimber's patented design to its productfor the purpose of s le , it is n clear violation of 35 U.S.C. 289 which prohibits design patentinfringement.

5


38/166


INTERROGATORY NO 15:

State all facts that demonstrate the iiTeparable harm that Kimber is facing through thealleged infringement of the patent-in-suit by Bradshaw.ANSWER

With respect to tertogatory No. 15, Kimber states that as a result of Defend antsongoing in fringement of the patent-in-suit, Kimb er has been unable to supply its Patented designto bak.eware retailers, suppliers and di stributors al ready carrying the Accused Product, resultingin significant lost revenues and profits to Kimber. Defendant s sale of the Accused Product hascaused market confusion and likely led ordinary purchasers to buy the Accused Productbe liev ing it to be Kimber s patented design. s a result, Kimber's market share for its patenteddesign has been negatively impacted and it has lost potential revenue and profits.INTERROGATORY N0 16:

State all facts that support yo tu allegation that '[t]he design of Bradshaw's battersepa rator as marked ind sold would c ause an ordinary observer, familiar with the prior rtdesigns, to be deceived into believing that the design of Bradshaw's batter separator is the sameas Kimber's patented design.ANSWER

Pursuan t to the Cowt's decision in the Egyptian Goddess case, in determining whctheadesign patent is infringed requires the fact-tinder lo compare the patented and accused designsto determine whether the accused design is substantially similar in appearance to the patenteddesign. b1 making this determination, courts utilize the 'ordinary observe r' test: [l]f, in the eyeor an orclinary observer, giving such attention as a purchaser usual ly gives, two designs aresubstantia.ly the sam e, if the resemblance is such as to deceive such an observer, inducing him to

16


39/166


40/166


INTERROGATORY NO 17:State whether Kimber has ever purchased a product that competes with a Kimber prodllct,

and if so, for each such purchase, identif which competitor s products was purchased, the dateof purchase, the associated Kimber product, the Kimber employee that purchased thecompetitor s product, and the purpose fo r the purchase of the competitor s product.ANSWER:

In 2012, Kimber s r e s i d e n t ~ Robert Reiser, purchased the Accused Product in order tocompare it to its patented design and to determine whether Defendant infringed upon the patentin suj t ln 2013, Kimber s President, Robert Reiser, purchased a Wi lton Two-Tone Cupcake PanSet, to compare the quality of Wilton s product to Kjmber s products.INTERROGATORY 18:

For each Accused Product, identify, by either narratjve or by drawing, the location of thefollowing features on the Accused Product, labeled A through [ below:

ANSWER:

8


41/166


With respect to Interrogatory No. 18, as previously stated, under the '1ordinary observertest: [T]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 as to deceive such an observer,inducing him to purchase one supposing .t to be the ot her, the first one patented is infringed bythe other. Egyptian Goddess, 543 F.3d at 670 quoting Gorham Co. v. White, 81 U.S. 511, 528(1871)); see lso L.A. Gear, 988 F.2d at 11 24 ( Design paten t infringement requires a showingthat the accused design is su bstantia lly the same as the claimed design. The criterion is deceptionof the ordinary observer, such that one design would be confused with the other. ); Crocs. Inc. v.Internat ional Trade Comm n, 598 F.3d 1294, 1303 (Fed. Cir 20 10) (infringement isdemonsbated where an ordinary observer ... would be dece ived into believing that the accusedproduct is the same as the patented design ) citing Egyptian Goddess, 543 F.3d at 681. Thus, thet elevant inqu iry in this matter is whether the Accused Product is substantially similar inappearance to Kimber s patented design such that it would deceive an ordinary observer. Asdepicted below, an ordinary observer would be confused by Kimbers patented des ign whencompared to Defendant s Accused Product:

Kimbers Patented Design Bradshaw Batter Separator

9


42/166


The analysis requested by Defendant in the foregoing i11terrogatory has been rejected bythe Court in Egyptian Goddess and by numerous other Co urts, including in Gorham v. White, 81U.S. 14 (1871); Crocs. Jnc. v. International Trade Comm'n, 598 F.3d 1294 (Fed. Cir. 2010);Victor Stanley. lnc. v. Creative Pipe, lnc . 2011 U.S. Di st. LEXIS 112846 (D.Md. September 30.20 II); Apple. Inc. v. Samsung Elecs. Co., 2012 U.S. Di st. LEXJS I05125, 32-33 (N.D. Cal. July27 2 12)

Respectfully Submitted,

n IN. d ( 0 ~ 0 5 7 1 (Trial Allomey)ourtney J. Miller( 070450)David M. Marcus ( 0087144)McNees Wallace Nurick LLC21 East State Street, 17' FloorColwnbus, Ohio 43215Telephone: (6 14) 469-8000Fax: (614) [email protected]@[email protected] Kimber Cakeware LLC

20


43/166


CERTIFIC TE OF SERVI EI hereby cet1ify that a copy o the foregoing Plaintiff's Responses to Defendant's First Set

o Interrogatories was served upon the below-listed counsel via regular U.S Mail and e-mail onk ~ y o December, 20 13:

Phillip G EckenrodeHAHN LOESER PARKS, LLP65 East State Street, Suite 1400Co lumbus, Ohio [email protected]. Eric GaumHAHN LOESER PARKS, LLP200 Public Square, Suite 2800Cleveland, Ohio 441 [email protected] COUNSEL:Robert J KenneyBIRCH, STEWART, KOLASCH BIRCH, LLP8 0 Gatehouse Road, Suite IOOEFalls Church, Virginia 22042rjk@bskb [email protected] B MarionBIRCH, STEWART, KOLASCH BIRCH, LLP8110 Gatehousc Road, Suite lOOEFa lls Church, Virginia [email protected]@bskb.co rnA'Yl'ORNEYS FOR DEFENDANTBRADSHAW TNTERNATTONAL, TNC .

21


44/166


45/166

EXHIBIT 3


Rule 11Motion



46/166


c12) United States Design PatentReiser

54) BATTER SEPARATOR76) Inventor: Robert S. Reiser, Hilliard, OH US)**) Term: 14 Years21) Appl. No.: 29/388,83722) Filed: Apr. 1, 201151) LOC 9) Cl. .................................................. 07-0452) U.S. Cl. ........................................................ D7/66958) Field of Classification Search ................... D7/669,D7/368, 409; 126/373.1; 426/523; 425/289;220/533; 249/117, 171,203, 128-132, DIG. 1;

99/422, 426, DIG. 15See applicati on file for complete search history.56) References Cited

U.S. PATENT DOCUMENTS2,081,078 A 5/1937 Watson 126/373.12,327,988 A 8/1943 Bassett ......................... 249/1314,040,539 A 8/1977 Patterson ...................... 220/5265,074,777 A 12/1991 Garner .......................... 425/289

USOOD6713 76S

10) Patent No.: US D671,376 SNov. 27, 201245) Date of Patent:

5,446,965 A6,287,619 B1D593,363 S7,654,195 B28,197,116 B2* cited by examiner

9/1995 Makridi s ........... ............. . 30/3159/2001 Khan ............................ 426/5236/2009 Collinson ...................... D7 409212010 Morito eta . ................ 99/450.76/2012 Klein ............................ 220/533

Primary Examiner Terry Wallace74) Attorney Agent or i rm Ronald J Koch57) CL IM

The ornamental design for a batter separator, as shown anddescribed.DESCRIPTION

FIG. depicts a front view.FIG. 2 depicts a rear view.FIG. 3 depicts a side view with the front facing leftward; and,FIG. 4 depicts a top view wit h the front facing downward.n essentially planar body member having a distinctive out-line.

1 Claim, 4 Drawing Sheets


47/166


48/166


U.S. atent Nov. 27 2012 Shee t 2 o 4 US D671 376 S

F.I G 2 ... ..


49/166


U.S. atent Nov. 27 2012 Shee t 3 o 4 US D671 376 S

FI.G:, 3 , : .. ... : ...


50/166


U.S. atent Nov. 27, 2012 Shee t 4 of 4 US D671,376 S

.. .......................................................... :::r::=:::=w:r. .y:i

F.. I a. 4. .. . :: :. .. . :


51/166

EXHIBIT 4


Rule 11Motion



52/166


53/166

olate Moulds - Inspired By Chocolate

web.archive.org/.../20091025223149/http:/inspiredbychocolate.com.au/?articleID=showProducts&view=detail&categoryID=56&Product_ID=2340&sub_category=97[12/4/2013 12:2

2009 Inspired By Chocolate All Rights Reserved

BRADSHAW000008

http://web.archive.org/web/20091025223149/http://www.ravenculture.com/


54/166

/inspiredbychocolate.com.au/product_images/CCF0005/DSC01527.JPG[12/4/2013 12:25:41 PM]

BRADSHAW000009



55/166

EXHIBIT 5


Rule 11Motion



56/166BRADSHAW000025


United States Patent [191Viggiano[54] MUFFIN TOP[76] Inventor: Bernard J. Viggiano, 4494 DeerRidge Rd., Danville, Calif. 94541[**] Term: 14 Years[21] Appl. No.: 27,611[22] Filed: Aug. 25, 1994[52] U.S. Cl ..................................................... D1/102[58] Field of Search ................ D1/102, 104, 125, 128,D1 130, 199; 426/91, 104[56 References Cited

U.S. PATENT DOCUMENTSD. 194,577 2/1963 Herman ........................... Dl/104 X1,593,858 7/1926 Venable ........................... Dl/102 X4,139,644 2/1979 Stephenson ..................... Dl/102 X

FOREIGN PATENT DOCUMENTS638064 2/1928 France .................................. Dl/102

' '' y'..','\

111111111111111111111111111111111111111111111111111111111111111111111111111USOOD359153S[11] Patent Number: Des. 359,153[45] Date of Patent: ** Jun. 13, 1995

OTHER PUBLICATIONSJoy of Cooking", 1975. P. 630. Muffins on top left ofpage.

Primary Examiner A. Hugo WordAssistant Examiner Pamela BurgessAttorney Agent or Firm-Michael A. Glenn[57] CLAIMThe ornamental design for a muffin top, as shown anddescribed.

DESCRIPTIONFIG. 1 is a front elevational view of a muffin top show-ing my new design;FIG. 2 is a left side elevational view thereof;FIG. 3 is a bottom plan view thereof;FIG. 4 is a rear elevational view thereof;FIG. 5 is a right side elevational view thereof;FIG. 6 is a top plan view thereof; and,FIG. 7 is a front perspective view thereof.

:




U.S. Patent

. : . .-..:;

VJj.

une 13 1995

:-c.lt'.:\

{

/I

Sheet 1 of 3 Des. 359 153




U.S. Patent June 13, 1995 Sheet 2 of 3 Des. 359 153

:::: VJj

.... ._ ; - : --. : : : : : : - : : ~ : : . : : - _ : : _ . ; : _ : _ : : ~ - - : : : = ~ ; : : : : : : : : : : : : ~ ~ : : : : : : . - - ::.: .;. - ~ : : : ~ - : _ , , . _ . , , : :

.,,, : : : : : : : : : _ : : . : _ ; : . : : ~ ~ : : ~ ~ \ ; : : ; ; : : ; . ; . ; : . ~ : : ; ; : : : - ; : : - ; : : . : ( { ~ : / ; ~ : - < ~ ~ } ) . : . : \ ~ \ ~ / ) r , ~ ; ~ f { ; ; : : : _ { : : ; . ; _ ~ : ~ - : ) . / : y - ?

.--.

_.-_:.:::. ::.. .:._

::{ :::\_ _:--

::




U.S. Patent une 13 1995

.l... :

Sheet 3 of 3 Des. 359 153

VJ i


60/166

EXHIBIT 6


Rule11Motion



61/166


I

(12) United States Design PatentDeLeo

(54) CUPCAKE HOLDER(75) Inventor: Anthony M. De Leo, Comstock Park,

MI (US)(73) Assignee: Dart Industries Inc., Orlando, FL (US)(**) Term: 14 Years(21) Appl. No.: 29/312,606(22) Filed: Nov. 3, 2008(51) LOC 9) Cl .................................................. 07-02(52) U.S. Cl. ....................................................... D7/354(58) Field ofClassification Search .......... Dl/101-105,

(56)

Dl/116-118, 122; D7/323, 354-361,400,D7/402, 511,515,523,531,554.1-554.2,D7/565-566, 628, 667; D9/428-429, 617,D9/643; D23/367; D25/7; 220/671-673;4261115See application file for complete search history.References Cited

U.S. PATENT DOCUMENTS2.588.957 A 3/1952 BrownD174,352 S 3/1955 SchaefD200,806 s 4/1965 Pava3,292,840 A 12/1966 SchmidtD229.924 S 111974 Brown .. ........ ...... ...... .. .. D25/74,273,249 A 6/1981 FlorianD287,336 S 12/1986 Roehrig4,795,033 A 111989 DuffyD322,402 s 12/1991 Budzbanowski ............. D9/428D398,135 s 9/1998 BiniaJis ....................... Dl/101D404,535 S 111999 Biniaris ....................... Dl/1015,858,428 A 111999 Truscello eta . . ........... 426/115

USOOD601379S

(IO) Patent No.: US D601,379 SOct. 6, 200945) Date of Patent:

D420,440 SD442,834 SD478,785 S6,896.140 B1D506,351 SD521.872 SD540.663 S2004/0251162 A1

2 2000 El-Assir .................... D23/3675 200 1 Perez .......................... D7 /6288/2003 Rorke et al.5/2005 Perry6/2005 Scholze et a . ............... D7 /3605/2006 Wu ............................. D9/6434/2007 Tanner12/2004 McGinnis et al.

OTHER PUBLICATIONSCup-A-Cake LLC; Cup-A-Cake cupcake container; 2008 (twopages taken from www.cupacake.com w ebsite).

cited by examinerPrimary E x a m i n e r ~ Joel Sincavagessistant x a m i n e r ~ R i c k Y Pham

(74) Attorney, Agent, or F i r m ~ J o l m A . Doninger(57) CLAIMThe ornamental design for a cupcake holder, as shown anddescribed.

DESCRIPTIONFIG. 1 is a top, side and front perspective view o a cupcakeholder showing my new design;FIG. 2 is a front elevation view thereof;FIG. 3 is a rear elevation view thereof;FIG. 4 is a right side elevation view thereof;FIG. 5 is a left side elevation view thereof;FIG. is a top plan view thereof;FIG. 7 is a bottom plan view thereof; and,FIG. 8 is a bottom, side and rear perspective view thereof.



62/166


U.S. atent Oct 6 2009 Sheet 1 of 5 US D601 379 S

1 /f /1


63/166



~

~

FIG


64/166



FIG


65/166



FIG


66/166


U.S. Patent Oct 6 2009 Sheet 5 of 5US D601 379 S

FIG


67/166

EXHIBIT 7


Rule 11Motion



68/166


I

(12) United States Design PatentBerkete

(54) CUPCAKE-SHAPED CONTAINER FORHOLDING LIP-GLOSS OR THE LIKE

(76) Inventor: Carole Berkete, North Hollywood, CA(US)(**) Term: 14 Years(21) Appl. No.: 29/355,039(22) Filed: Feb.2 2010(51) LOC 9) Cl. .. .. .. .. .. .. .. .. .. 28-03(52) U.S. Cl. ........................... D28/79; D28/87; D9/643(58) Field of Classification Search .................. D28/76,D28/79, 82, 8 5 ~ 9 ; 132/286, 2 9 3 ~ 3 7 ; D9/643;Dl/101, 118, 124, 129; D7/354; 206/581,206/823See application file for complete search history.(56) References Cited

U.S. PATENT DOCUMENTSD242,297 S 1111976 Ortega ......................... Dl/101D276,087 S 10/1984 Kotyuk, Jr. .................. D28/79D398,135 S 9/1998 Biniaris ....................... Dl/101D404,535 S 111999 Biniaris ....................... Dl/101D440,016 S 4/2001 ThmpeD472,019 S 3/2003 Mmata ........................ D28/91D480,269 S 10/2003 CurrierD536,137 S 1/2007 Gill ............................. D28/79D586,175 S 212 9 FrankD594,285 S 612 9 MereyD600.496 S 9/2009 FernandesD601,379 S 10/2009 DeLeoD604J17 S 1112009 Braidotti ...................... D9/6442002/0159820 AI 10/2002 Louis et al .................. 4011129

OTHER PUBLICATIONSWIPO Intellectual Property Digital Library, Jar for cosmetic products, Registration No. DM/048388, Int'l Registration date Jul. 7,

USOOD633654S

(10) Patent No.:(45) Date of Patent: US D633,654 SMar. 1, 2011

1999, Biotherm Societe Anonyme Monegasque, Le Neptune ,Avenue Prince Hereditaire Albert, MC-98-000, Monaco, 2 pages.The Cupcakes Club, Website: www.thecupcakesclub.com/blog/commtmity/cupcakes-for-your-lipsgiveaway. First found on the internetJan. 10, 2010 4:02pm PST, 2 pages.

cited by examinerPrimary Examiner-Jennifer Rivard(74) Attorney Agent or Firm George P White(57) CLAIMThe ornamental design for a cupcake-shaped container, forholding lip-gloss or the like, substantially as shown anddescribed.

DESCRIPTIONFIG. is an exploded, perspective view showing my newdesign for a lip-gloss container with a cap portion removedfrom a base portion;FIG. 2 is a perspective view thereof;FIG. 3 is a specific side elevational view thereof;FIG. 4 is a side elevational view thereof, with the containerturned 90-degrees clockwise from the position ofFIG. 3;FIG. 5 is a side elevation view of the side opposite to that ofFIG. 4 thereof;FIG. 6 is a side elevation view of the side opposite to that ofFIG. 3 thereof;FIG. 7 is a top plan view thereof; and,FIG. 8 is a bottom view thereof.The three oblique, parallel diagonal shade lines used on thebase represent the base's translucent appearance and the circular regions of the cap represent the appearance of rhinestones.



69/166


U.S. atent Mar 1 2011 Sheet 1 of 4 US D633 654 S

Fig


70/166


U.S. Patent Mar. 1 2011 Sheet 2 of 4 US D633 654 S

Fig

Fig 4


71/166



Fig

Fig 6


72/166


U.S. atent Mar. 1 2011 Sheet 4 of 4 US D633 654 S

Fig


73/166

EXHIBIT 8


Rule 11Motion



74/166


75/166


U.S. atent May 25 2010 Sheet 1 of 2 US D616 260 S

I I Il _jL

Fig l Fig. 2

Fig 3


76/166


U.S. atent May 25 2010 Sheet 2 of2 US D616 260 S

Fig.

Fig. 6


77/166

EXHIBIT 9


Rule 11Motion



78/166


I

c12) United States Design PatentGulbinski

54) NOVELTY CONTAINER75) Inventor: Eva Gulbinski, Mississauga CA)73) Assignee: Giftcraft Ltd., Brampton CA)**) Term: 14 Years21) Appl. No.: 29/350,40122) Filed: Nov.16 200930) Foreign Application Priority Data

Jul. 22, 2009 CA) ........................................ 13150951) LOC 9) Cl . .................................................. 11-0252) U.S. Cl . ...................................................... Dll/15758) Field ofClassification Search ................. Dll/157,Dll/158, 131, 133, 134; D28/76, 79, 8,D28/85-90; 132/286, 293-307; D9/643;Dl/101, 118, 124, 129; D7/354; 206/581,206/823See application file for complete search history.56) References Cited

U.S. PATENT DOCUMENTSD279,280 S * 6/1985 Resnick ....................... Dll/146D398,135 S * 9/1998 Biniaris ......................... Dl/101D404,535 S * 111999 Biniaris ....... . . Dl/101D467,362 S * 12/2002 Gue ................................. D26 7

USOOD649905S

IO) Patent No.:45) Date of Patent: US D649,905 SDec. 6, 2011

D510,960 s * 10/2005 Choi ............. D211402D521,872 s * 5/2006 Wu .... ...... D9/643D527,520 s * 9/2006 Green ............ D3/271.1D590,524 s * 412009 Gue ................. D2617D594,285 s * 612009 Merey. ...... D7/610D601,379 s * 10/2009 DeLeo D7/354*604,117 s 11/2009 Braidotti .................. D7/628D610,864 s * 3/2010 WhitcombeD616,260 s * 5/2010 Facey eta .D633,654 s * 3/2011 Berkete ....*cited by examiner

Primary Examiner Holly Baynhamssistant Examiner Michelle E Wilson

... D7/352D7/675D28/79

74) Attorney, Agent, or Firm -Birch Stewart, KolaschBirch, LLP57) CLAIMThe ornamental design for a novelty container, as shown anddescribed.

DESCRIPTIONFIG. is a top perspective view of the novelty container;FIG. 2 is a front view thereof;FIG. 3 is a back view thereof;FIG. 4 is a side view thereof;FIG. 5 is an opposing side view thereof;FIG. 6 is a top view thereof;FIG. 7 is a bottom view thereof; and,FIG. 8 is a front perspective view thereof.



79/166


U.S. Patent Dec. 6 2011 Sheet of 5 US D649 905 S

FIG


80/166

Case: 2:13-cv-00185-ALM-NMK Doc #: 24-8 Filed: 02/05/14 Page: 4 o

FIG 2 FIG 3

. ..

------ .-=--'


81/166


II

I


82/166


FIG 6 FIG


83/166


U.S. Patent Dec. 6 2011 Sheet of US D649 905 S

FIG


84/166

EXHIBIT 10


Rule 11Motion



85/166


86/166


U.S. Patent Mar 2 2010 Sheet 1of 6US D610 944 S

FIG


87/166


U.S. Patent Mar.2 2010 Sheet 2 of 6 US D610 944 S

FIG


88/166


U.S. Patent Mar 2 2010 Sheet 3 of 6 US D610 944 SFIG


89/166



FIG


90/166


U.S. Patent Mar 2 2010 Sheet 5 of US D610 944 S

FIG


91/166



FIG


92/166

EXHIBIT 11


Rule 11Motion



93/166


12) United States Design PatentGue

54) ICE-CREAM CANDLE76) Inventor: Jimmy J Gue, P.O. Box 30536, Seattle,

WA US) 98113**) Term: 14 Years21) Appl. No.: 29/271 93022) Filed: Jan.30 200751) LOC 9) Cl. . .. ... ... ... ... ... ... ... ... ... . ... ... ... . 26-0452) U.S. Cl. ......................................................... D26/758) Field of Classification Search .............. D 2 6 6 ~ 2 3 ;

56)

431/288, 125, 126,292, 289; Dll/131, 131.1,Dll/157, 81See application file for complete search history.References Cited

U.S. PATENT DOCUMENTSD231,135 S 4/1974 Marcum ....... ...... ....... ... D26 7D246.509 S 1111977 Hytken ........................ D9/643D268,059 S 2/1983 Kracke ...... ...... ....... ...... D34/4D279,280 S 6/1985 Resnick ...... ....... ....... . Dl1 146D395,230 S 6/1998 Slater ...... ...... ....... ...... . D9/643D431,306 S 9/2000 Tsai ............................. D26/5D467,362 S 12/2002 Gue ....... ...... ...... ....... ... D26 7D508,217 S 8/2005 Graves et aL ................ Dll 81

USOOD590524S

IO) Patent No.:45) Date of Patent: US D590,524 SApr.14 2009

D510,960 S 10/2005 Choi ....... ....... ....... .... D21/402D527,520 S 9/2006 Green ....... ........ ....... D3/271.1

* cited by examinerPrimary xaminer T. Chase NelsonAssistant Examiner Ania K Dworzecka57) CLAIM

The ornamental design for an ice-cream candle, as shown anddescribed.DESCRIPTION

FIG. 1 is a front elevational view of a ice-cream candle show-ing my new design;FIG. 2 is a rear elevational view;FIG. 3 is a top plan view;FIG. 4 is a bottom plan view;FIG. 5 is a right side elevational view; and,FIG. 6 is a left side elevational view.The drawings are lined on the candle for color and on the wickfor the surface of he wick respectively. The portions ofFIG.4 shown in broken lines form no part of the claimed design.


0


94/166


U.S. atent Apr 14 2009 Sheet 1 of2 US D590 524 S

FIG FIG. 2

FIG. 3 FIG. 4


95/166


U.S. Patent Apr 14 2009 Sheet 2 of 2 US D590 524 S

FIG. 5 FIG. 6


96/166

1

IN THE UNITED STATES DISTRICT COURT

S

Kimber v. Bradshaw - Sanctions Briefing

Documents

Transcript of Kimber v. Bradshaw - Sanctions Briefing