Degelman v. Pro-Tech - Reply re Pl MSJ

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UNITED STATES DISTRICT COURTWESTERN DISTRICT OF NEW YORK

DEGELMAN INDUSTRIES LTD.,

Plaintiff,

vs.

PRO-TECH WELDING AND FABRICATION, INC.and MICHAEL P. WEAGLEY,

Defendants.

Civil Action No.: 06-CV-6346

DECLARATION OF MICHAEL A. OROPALLO IN SUPPORT OFPLAINTIFF’S MOTION FOR PARTIAL SUMMARY JUDGMENT

MICHAEL A. OROPALLO hereby declares as follows:

1. I am an attorney at law duly licensed to practice before the courts in the State of

New York and before this Court, and am a Partner at the law firm of Hiscock & Barclay, LLP,

attorneys for the Plaintiff Degelman Industries LTD (“Plaintiff” or “Degelman”). As such, I am

fully familiar with the facts and circumstances of this action.

2. I respectfully submit this Declaration in Support of Plaintiff’s Motion for Partial

Summary Judgment.

3. Attached hereto as Exhibit A are true and accurate copies of each of the figures of

U.S. Patent Nos. D478,097, D519,128 and D519,129.

4. Attached hereto as Exhibit B are true and accurate depictions of each of the

accused products.

Case 6:06-cv-06346-JWF Document 96 Filed 12/08/09 Page 1 of 3

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Dated: December 8, 2009 HISCOCK & BARCLAY, LLP

By: /s/ Michael A. OropalloMichael A. Oropallo

(Bar Roll No. 505267)

Attorneys for PlaintiffDegelman Industries LTDOffice and Post Office AddressOne Park Place300 State StreetSyracuse, New York 13202-2078Telephone: (315) 425-2831Facsimile: (315) 703-7367E-Mail: [email protected]


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CERTIFICATE OF SERVICE

I, Michael A. Oropallo, hereby certify, that on this 8th day of December, 2009, I

electronically filed of the Declaration of Michael A. Oropallo with the Clerk of the District Court

for the Western District of New York using the CM/ECF system, which gave electronic

notification the following CM/ECF participants on this case:

Dan O’Brien, Esq.Woods Oviatt Gilman, LLP.700 Cross Roads Building2 State StreetRochester, New York 14614

I also certify that a courtesy copy of these documents were served on the following via

first class mail:

Duane C. Basch, Esq.1777 Penfield Road, Lower LevelPenfield, New York 14526

/s/ Michael A. OropalloMichael A. Oropallo


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U.S. Patent No. D478,097

Case 6:06-cv-06346-JWF Document 96-2 Filed 12/08/09 Page 1 of 3

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Pro-Tech SPL Loader


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Pro-Tech SPB Backhoe


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Pro-Tech SPS Skid Steer


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Pro-Tech ALB Angle


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Pro-Tech FPL Fold Out


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Pro-Tech SBL Switchblade Loader


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Pro-Tech Super Duty Loader


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Pro-Tech SBB Switchblade Backhoe


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Pro-Tech SBS Switchblade Skid Steer


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Pro-Tech IST Loader


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Pro-Tech IST Backhoe


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IST Skid Steer


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Pro-Tech PBS Pull Back


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Pro-Tech SPC Compact


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FTF Forklift


UNITED STATES DISTRICT COURTWESTERN DISTRICT OF NEW YORK

DEGELMAN INDUSTRIES LTD.,

Plaintiff,

vs.

PRO-TECH WELDING ANDFABRICATION, INC. andMICHAEL P. WEAGLEY,

Defendants.

Civil Action No.06-CV-6346

REPLY BRIEF IN FURTHER SUPPORT OF PLAINTIFF DEGELMAN INDUSTRIESLTD.’S MOTION FOR PARTIAL SUMMARY JUDGMENT

REDACTED COPY – FOR ECF FILING

HISCOCK & BARCLAY, LLPAttorneys for PlaintiffDegelman Industries Ltd.Office and Post Office Address2000 HSBC Plaza100 Chestnut StreetRochester, New York 14604-2404Telephone (585) 295-4308Facsimile (585) 295-8440

Christopher E. Blank E-Mail [email protected] Counsel

Office and Post Office AddressOne Park Place300 South State StreetSyracuse, New York 13202-2078Telephone (315) 425-2831Facsimile (315) 703-7367

Michael A. Oropallo E-Mail [email protected] Counsel


TABLE OF CONTENTS

I. PRELIMINARY STATEMENT.......................................................................................... 1

II. ARGUMENT ..................................................................................................................... 3

A. The Design Patents are Infringed .................................................................................... 3

B. The Orsolini Drawing is Not Prior Art and the Proffered Evidence Fails toCorroborate Public Use of Any Plow .............................................................................. 5

C. The Orsolini Drawing is Inadmissible Hearsay and Otherwise Fails toCorroborate the Appearance of the Alleged Daniels Plow............................................ 6

D. The Tenco Evidence is Inadmissible................................................................................ 7

E. Plaintiff has Proven that Defendants’ Infringement was Willful ................................. 8

IV. CONCLUSION .................................................................................................................. 9


I. PRELIMINARY STATEMENT

Degelman’s design patent case is about the ornamental features of a snow plow. The‘097, ‘128 and ‘129 Patents (the “Design Patents”) protect the ornamental features that, together,

comprise the overall visual impression that should be compared with Defendants’ accused

products in accordance with the “ordinary observer” test recently set forth by the en banc panel

of the Federal Circuit.

The Federal Circuit has also instructed district courts not to reduce such a comparison to

a “battle of experts”:As the district court recognized, our precedent in making the required comparison"counsels against measuring the similarity of designs from the viewpoint of experts indesign." Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113,1117, 48 USPQ2d 1767, 1769 (Fed.Cir.1998). Thus, whether the patented design and theaccused product are "substantially the same" is to be determined from the viewpoint of"the eyes of men generally, of observers of ordinary acuteness, bringing to theexamination of the article upon which the design has been placed that degree ofobservation which men of ordinary intelligence give." Id. (citing Gorham, 81 U.S. (14Wall.) at 528). Analysis under the "ordinary observer" test is to be conducted with the"ordinary observer" and not the expert designer in mind.

Contessa Food Products, Inc. v. Conagra, Inc., 282 F.3d 1370, 1381-82 (Fed. Circ. 2002)

(emphasis added); See also, Union Carbide Corp. v. American Can Co., 724 F.2d 1567 (Fed.

Cir. 1984)(“the references and appellant's invention are easily understandable without the need

for expert explanatory testimony.”).Degelman has presented evidence of the striking similarity between Degelman’s Design

Patents, and Defendants accused products.1 Degelman has also presented evidence of confusion

by persons associated with the very parties to this lawsuit, who are involved in the snow removal

1 For the Court’s convenience, Degelman has included a compilation of previously submitted drawings andphotographs in Exhibit A (the figures of the asserted design patents, each on a respective sheet) and in Exhibit B(depictions of the accused products, also each on a respective sheet) to the Oropallo Declaration submitted herewith


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industry. Suffice it to say, Degelman has presented more than a prima facie case of design

patent infringement, it has presented a case worthy of summary judgment.

In response to Degelman’s Motion for Partial Summary Judgment, Defendants rely

almost exclusively on Jerre Heyer, and his detailed analysis of individual features of the Design

Patents and the accused devices, including an improper dissection of the parts, as opposed to a

comparison of the whole, that the ordinary observer test mandates. Defendants analysis is more

akin to the “points of novelty” test that the Federal Circuit recently abandoned. Snow plows,

like coffee makers2, are things that the average judge or jury (at least one in Western New York)

can assess on their own. In doing so, there is only one conclusion – the ornamental features of

Defendants’ snow plows are substantially similar to the ornamental features set forth in

Degelman’s Design Patents.Defendants also place all of their proverbial eggs in one basket, in relying upon,

improperly during the infringement analysis, two uncorrobated and inadmissible pieces of

claimed prior art. First, the Tenco snowblower is not analogous prior art3. Second, there is no

foundation for the admissibility of the Tenco snowblower. Third, there is no corroboration for a

prior public use of a Daniels snow plow, and Defendants’ belated production of the oraltestimony of a previously unidentified witness is insufficient to overcome these deficiencies.

Fourth, the Orsolini drawing is not evidence of a prior public use, it is simply an incomplete

drawing of a snow plow whose probative value is outweighed by its prejudicial effect4.

2 Ironically, Defendants admit “most consumers are capable of looking at two coffee makers and determiningwhether they are substantially similar,” (Def.’ Memo. of Law in Opposition [Dkt. No. 91] at p. 6) yet claim experttestimony is necessary to compare the overall visual impression the ornamental features of a snow plow possess.3 See Union Carbide Corp., supra, at p. 1572 (“The determination that a reference is from a nonanalogous art istherefore two-fold. First, we decide if the reference is within the field of the inventor's endeavor. If it is not, weproceed to determine whether the reference is reasonably pertinent to the particular problem with which the inventorwas involved.”).4 An example of such is Defendants’ disclosure of such to Mr. Craig, in an attempt to shape his thirty year oldmemory.


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Bottom line, Defendants’ snow plows are strikingly similar to Degelman’s patenteddesigns, warranting summary judgment of infringement.

II. ARGUMENT

A. The Design Patents are Infringed

The Court has construed the Design Patents. (Claims Construction Decision, Dkt. No.

66). The Court has before it Defendants’ catalogs, brochures and marketing materials. See e.g.

Exhibit B. And the question before the Court is whether or not Defendants accused products are

substantially similar, in overall appearance, to the ornamental features of the drawings in the

Design Patents. Degelman submits reasonable minds cannot differ, and an ordinary observer

would reach a single conclusion – Defendants’ accused products infringe the Design Patents.

In an effort to blur the Federal Circuit’s recent mandate regarding the ordinary observertest, Defendants offer the testimony of a seller of Defendants’ snow plows, as a proffered experton what an ordinary observer would conclude. However, instead of looking at the overall visual

impression that an “ordinary observer” would reach, Mr. Heyer focuses on a purported “point ofnovelty,” and claims Defendants’ products do not infringe because the “gussets depicted in the

plaintiff’s design patents are single surface, triangular-shaped gussets.” (Def. Memo., p. 11).Ignoring that this improper characterization is irreconcilable with Defendants’ argument

that the claimed Orsolini drawing shows a plow with a wedge-shaped gusset, the argument is

nothing more than a blatant attempt to mislead the Court and reargue the Court’s decision onclaim construction, instead of abiding by drawings contained in the Design Patents, as the

Federal Circuit in Egyptian Goddess suggested.5 Under the Court’s claim construction, it isirrelevant how many surfaces the gussets have. What is relevant, however, is the overall visual

5 See Egyptian Goddess, 543 F.3d at 679 (“Given the recognized difficulties entailed in trying to describe a design inwords, the preferable course ordinarily will be for a district court not to attempt to ‘construe’ a design patent claimby providing a detailed verbal description of the claimed design.”)


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similarity of the patented designs to the accused products, as viewed in the context of analogous

prior art.

Accordingly, the infringement analysis boils down to whether the accused products are

more similar in overall visual appearance to the patented design in the context of analogous prior

art. Even assuming, while not admitting, that the Defendants’ proffered prior art, the Daniels

pull plow and the Tenco snow blower, are both admissible evidence, the conclusion is

inescapable:

Exemplary Accused Product: Orsolini/Daniels Plow: Tenco Snow Blower:

The exemplary accused product is strikingly similar to the patented design, as are all of

the accused products shown in Exhibit B. With respect to the ‘128 Patent which claims theornamental design of a gusset as shown, the conformation, orientation, dimensions, and

placement of the gusset of the exemplary accused product is virtually identical to that of the

patented design. The overall appearance of the Tenco snow blower is so dissimilar from every


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possible view and angle6, that it should not even be considered in the infringement analysis.

Further, if the Orsolini drawing were legally admissible, ironically, it would not meet

Defendants’ inaccurate and improper test, which it claims requires multiple views for the

substantial similarity analysis. Although Defendants criticize Degelman for failing to produce

multiple views of the accused products (even though Defendants include only a single view in

their marketing materials), they have not identified, nor described in what way, such alternative

views would alter the overall visual appearance of the accused products such that they would not

be considered substantially similar to the patented design.7 The test for infringement is

substantial similarity, and, accordingly, there is not a requirement of complete identity, as Mr.

Heyer believes.8

B. The Orsolini Drawing is Not Prior Art and the Proffered Evidence Fails toCorroborate Public Use of Any Plow

Contrary to Defendants’ representations, Mr. Orsolini specifically recanted his sworn

affidavit (that was prepared by Defendants’ counsel before even identifying the witness to

Degelman).9 Assumably recognizing this deficiency, and in a desperate attempt at post hac

corroboration, Defendants (without any explanation) try to introduce the testimony of a

previously unidentified and surprise witness Leslie Craig. For the reasons that follow, the Craig

affidavit is inadmissible and fails to corroborate a prior public use.

First, Leslie Craig was not previously or properly noticed as a witness pursuant to Rule

26 of the Federal Rules of Civil Procedure (“FRCP”). As such, Degelman was unaware of him,6 A snow blower also serves a wholly different purpose than a snow plow.7 See Egyptian Goddess, 543 F.3d at 680-683 (“the ordinary observer test does not present the risk of assigningexaggerated importance to small differences between the claimed and accused designs relating to an insignificantfeature simply because that feature can be characterized as a point of novelty.”).8 P. S.J. Mot.,Ex. J, Heyer Dep., p. 89, lines 7-10 (“Q. Is it your opinion that that type of similarity is the only typethat would satisfy substantial similarity and design pat[ents] A. I feel it has to be a direct copy.”) (emphasis added);See also p. 88, lines 10-12 (“A. Honestly, that would be my interpretation. Like a Chinese knockoff...”).9 P. S.J. Mot., Ex. P, Orsolini Dep., p. 11, lines 7-9 (“Q: Do you recall seeing the plow tested? A: I must admit Icannot recall it exactly, no.”).


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was unaware that he would be relied upon for attempted corroboration (a burden that is on

Defendants), and did not have the opportunity to question Mr. Craig.10 The Craig affidavit

should thus be automatically stricken pursuant to Rule 37(c)(1), which precludes the use of this

type of evidence.

Assuming arguendo that the Craig Affidavit is admissible, further oral testimony in an

attempt to corroborate a prior public use, whether by an interested witness or not, is insufficient

to meet the corroboration standards set forth by the Supreme Court in The Barbed Wire Patent

and associated line of cases (where the Court rejected twenty-four such witnesses)11 and

particularly, after the passage of over thirty years.12 The Craig affidavit simply provides further

testimony that that courts are “gravely suspicious” of. Finnigan Corp. v. International Trade

Commission, 180 F.3d 1354 (Fed.Cir.1999) (“oral testimony, unsupported by patents or exhibits,tending to show prior use of a device regularly patented, is, in the nature of the case, open to

grave suspicion.”).

C. The Orsolini Drawing is Inadmissible Hearsay and Otherwise Fails toCorroborate the Appearance of the Alleged Daniels Plow

The facts of the present case are extraordinarily similar to that of Finnegan, where the

Court rejected such collateral material to support a similar prior public use argument. Finnigan

Corp. 180 F.3d at 1369 (“The Jefferts' article simply does not corroborate his testimony because,

10 Defendants have contemporaneously filed a Motion to Strike with respect to this improper and untimelyevidence.11 Finnigan Corp. 180 F.3d at 1370 (“In the end, what we are left with is Jefferts' testimony concerning his allegedpublic use. Such evidence is insufficient as a matter of law to establish invalidity of the patent. This is not ajudgment that Jefferts' testimony is incredible, but simply that such testimony alone cannot surmount the hurdle thatthe clear and convincing evidence standard imposes in proving patent invalidity)).12 See Juicy Whip Inc. v. Orange Bang Inc. 92 F.3d 728 (Fed. Cir. 2002) (finding no anticipation where “Thetestimony about the 1983 and 1988 dispensers came more than eight and twelve years, respectively, after thewitnesses saw the dispensers.”)(emphasis added); see also In re Reuter, 670 F.2d 1015, 1021 (CCPA 1981) ("Therelationship of the witnesses and the fact that the asserted prior uses ended twenty years before the trial, and wereabandoned until the defendant reportedly learned of the patentee's practices, underscore the failure of this oralevidence to provide clear and convincing evidence of prior knowledge and use.")(emphasis added)


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as we have noted, that article is ambiguous at best concerning the claimed use of nonresonance

ejection.”). Absent contemporaneous, corroborating documentary evidence of the public use,

such a claim fails to satisfy the strict clear and convincing standard in overcoming the

presumption of validity of the patent in suit. Id. The purported documentary evidence proffered

by Defendants is a drawing, rather than a contemporaneous, documentary evidence of a public

use as required by the caselaw. Further, the drawing is incomplete, not to scale, and is

admittedly not useful for fabricating a plow, and Defendants admit it is not a printed publication.

Finally, the deficiencies are exponential in light of Defendants claim that one view is

insufficient.

A further deficiency is that the drawing is inadmissible hearsay to the extent that it is

used to show that a snow plow was made and what features the plow had. Defendants offer the

Orsolini drawing in an ill-fated attempt to show a prior public use. However, there is nothing

about the drawing that raises an inference of public use. Further, Defendants admit that Orsolini

“did not maintain any copies of the drawings and he had not seen it [for] many years until it waspresented to him at the original deposition.” (O’Brien Dec. ¶16). Mr. O’Brien further swears inhis Declaration that Mr. Daniels “kept the one isometric drawing as a ‘keepsake’ which he keptin his office...” Id. In light of the above, the drawing constitutes inadmissible hearsay, and is

admittedly not a record kept in the course of regularly conducted business activity. Therefore, it

does not fall under an exception to the hearsay rules, nor have Defendants offered an explanation

otherwise.

D. The Tenco Evidence is Inadmissible

Defendants attempt to offer unauthenticated photographs and/or brochures of a non-

analogous Tenco Snowblower. Although Defendants did provide an unverified statement of


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some undisclosed witness from Ithaca, New York on the last day of discovery (that had been

extended several times), the individual was never disclosed pursuant to Rule 26, and the

statement is unsworn. (Def. S.J. Mot. Exhibit 13). While the Tenco snow blower does not

anticipate the claims of the ‘576 Patent, it is also not admissible.As evidence of a sale of the Tenco Model TC-373-LM, a supposed airport manager,

Robert Nicholas, purportedly prepared an unsworn letter, addressed to “whom it may concern,”stating that a snow blower was purportedly bought and used by the airport in 1999, but fails to

set forth upon what he bases these conclusions, nor whether he has any personal knowledge of

such. Id. Defendants’ belated and insufficient attempt to authenticate, let alone corroborate,

the proffered Tenco reference, is unavailing, and the letter is inadmissible. Further,

inadmissible on hearsay grounds is the alleged “screen shot” purportedly taken from a Tenco

website, with a print date of 2007, and the uncorroborated invoice, also with a print date of

2007. Because no other admissible evidence has been produced to substantiate Defendants’claim of a commercial sale or use of the Tenco snow blower, the Tenco snow blower reference

is likewise inadmissible and inapplicable to this motion.

Finally, assuming arguiendo that the so-called prior art Tenco snow blower is

admissible, it is non-analagous art and inapplicable to the infringement analysis or, at the very

least, shows an overall ornamental design so dissimilar from that of the patented designs that it

should be entirely disregarded.

E. Plaintiff has Proven that Defendants’ Infringement was Willful

Defendants’ only proffered evidence in support of their argument that their infringement

was not willful is Weagley’s bare, self-serving, and uncorroborated affidavit. The last paragraph

on p. 13 of Defendants’ Memo of Law in Opposition to Plaintiff’s Motion For Partial Summary


9

Judgment sets forth Defendants’ only defense to their willful infringement: “Mr. Weagleydeveloped the design for the accused products and the wedge-shaped gusset they incorporate on

his own....” Though largely irrelevant to the infringement, Weagley’s statement is suspect, giventhe lack of a single piece of documentary evidence to show such. Although Weagley

documented nearly every purported innovation that Defendants claimed in numerous patents

Weagley personally filed for and was granted, there is not a single sketch, drawing, or plan, that

shows Weagley coincidently came up with a wedge-shaped gusset, or the conical section gusset

of the same configuration and conformation as Degelman’s patented design. However, there isevidence, offered by an independent witness, who states Defendants were aware of the

“Degelman Wedge,” prior to incorporating such into Defendants’ accused products. Ex. F to P.

S.J. Mot., Singer Dep., p. 36, lines 14-22 (“A: I was, I guess I was aware that there was a concept

in something that Degelman did that had inspired us.”). Degelman thus submits it is entitled to

judgment of willful infringement as a matter of law.

IV. CONCLUSION

In light of the foregoing, it is respectfully requested that Degelman’s motion for partialsummary judgment be granted in its entirety, for the costs of this action, including reasonable

attorneys fees, and for such other and further relief as to this Court may seem equitable.

Respectfully submitted,HISCOCK & BARCLAY, LLP

Dated: December 8, 2009 By: s/ Michael A. OropalloMichael A. OropalloChristopher E. Blank

Attorneys for PlaintiffOne Park Place300 South State StreetSyracuse, New York 13202-2078Telephone: (315) 425-2831Facsimile: (315) 703-7367E-Mail: [email protected]

REDACTED

REDACTED


CERTIFICATE OF SERVICE

I, Michael A. Oropallo, hereby certify, that on this 8th day of December, 2009, I

electronically filed Plaintiff’s Reply Brief in further Support of Plaintiff’s Motion for Partial

Summary Judgment and Declaration of Michael A. Oropallo, with exhibits thereto with the Clerk

of the District Court for the Western District of New York using the CM/ECF system, which

gave electronic notification the following CM/ECF participants on this case:

Dan O’Brien, Esq.Woods Oviatt Gilman, LLP.700 Cross Roads Building2 State StreetRochester, New York 14614

I also certify that a courtesy copy of these documents were served on the following via

first class mail:

Duane C. Basch, Esq.1777 Penfield Road, Lower LevelPenfield, New York 14526

/s/ Michael A. OropalloMichael A. Oropallo


Documents

Degelman v. Pro-Tech - Reply re Pl MSJ