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Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 1 of 22

1 Paul A. Stewart (SBN 153,467)


paul.stewart@knobbe.com
2 Ali S. Razai (SBN 246,922)
ali.razai@knobbe.com
3
Nicole R. Townes (SBN 272,342)
4 nicole.townes@knobbe.com
Brandon G. Smith (SBN 307,676)
5 brandon.smith@knobbe.com
KNOBBE, MARTENS, OLSON & BEAR, LLP
6 2040 Main Street, Fourteenth Floor
7 Irvine, CA 92614
Telephone: (949) 760-0404
8 Facsimile: (949) 760-9502

9 Attorneys for Plaintiff


10 simplehuman, LLC

11
IN THE UNITED STATES DISTRICT COURT
12
FOR THE NORTHERN DISTRICT OF CALIFORNIA
13

14 OAKLAND DIVISION

15 SIMPLEHUMAN, LLC, ) Case No. 4:19-cv-02701-HSG


a California limited liability company, )
16 ) PLAINTIFF SIMPLEHUMAN, LLC’S
17 Plaintiff, ) OPPOSITION TO DEFENDANT’S
) MOTION TO DISMISS AMENDED
18 v. ) COMPLAINT
)
19 ITOUCHLESS HOUSEWARES AND ) Honorable Haywood S. Gilliam, Jr.
PRODUCTS, INC., )
20
a California corporation, ) Hearing Date: October 17, 2019
21 ) Hearing Time: 2:00 p.m.
Defendant. ) Courtroom: 2, 4th Floor
22 )
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PLAINTIFF SIMPLEHUMAN, LLC’S Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 2 of 22

1 TABLE OF CONTENTS
2 Page No.
3

4 I. INTRODUCTION ............................................................................................................. 1 

5 II. LEGAL BACKGROUND ................................................................................................. 4 

6 III. SIMPLEHUMAN’S INFRINGEMENT CLAIMS ARE PLAUSIBLE ............................ 6 

7 A.  The Accused Product And The D807 Patent Are Not Plainly Dissimilar ............. 6 

8 B.  Defendant Has Also Failed To Show That simplehuman’s Claim Of


Infringement Of The D485 Patent Is Implausible................................................ 11 
9
C.  Defendant’s Cited Cases Are Plainly Inapposite ................................................. 13 
10
IV. CONCLUSION ................................................................................................................ 16 
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PLAINTIFF SIMPLEHUMAN, LLC’S -i- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 3 of 22

1 TABLE OF AUTHORITIES
2 Page No(s).
3

4 Amini Innovation Corp. v. Anthony CA, Inc.,


439 F.3d 1365 (Fed. Cir. 2006)..............................................................................................5, 9
5
Anderson v. Kimberly-Clark Corp.,
6 570 Fed. Appx. 927 (Fed. Cir. 2014) .......................................................................................14

7 Ashcroft v. Iqbal,
556 U.S. 662 (2009) ...................................................................................................................4
8
Bell Atl. Corp. v. Twombly,
9 550 U.S. 544 (2007) ...................................................................................................................4

10 Catalina Lighting, Inc. v. Lamps Plus, Inc.,


295 F.3d 1277 (Fed. Cir. 2002)..................................................................................................4
11
Colida v. Nokia, Inc.,
12 347 Fed. Appx. 568 (Fed. Cir. 2009) .......................................................................................15

13 Crocs, Inc. v. Int’l Trade Comm’n,


598 F.3d 1294 (Fed. Cir. 2014)..........................................................................................2, 4, 9
14
Deckers Outdoor Corp. v. J.C. Penny Co.,
15 45 F. Supp. 3d 1181 (C.D. Cal. 2014) .................................................................5, 6, 10, 15, 16

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


543 F.3d 665 (Fed. Cir. 2008) (en banc)..........................................................................4, 5, 13
17
Enerlites, Inc. v. Century Prods. Inc.,
18 Case No. SACV 18-839 JVS, 2018 WL 4859947
(C.D. Cal. Aug. 13, 2018) ..........................................................................................3, 5, 10, 13
19
Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,
20 796 F.3d 1312 (Fed. Cir. 2015)..................................................................................................7

21 Five Star Gourmet Foods, Inc. v. Ready Pac Foods, Inc.,


Case No. 5:18-cv-2436 DDP, 2019 WL 1260634
22 (C.D. Cal. Mar. 18, 2019) ..........................................................................................5, 6, 10, 13

23 Hall v. Bed Bath & Beyond, Inc.,


705 F.3d 1357 (Fed. Cir. 2013)..............................................................................................4, 6
24
Kolcraft Enters., Inc. v. Graco Children’s Prods., Inc.,
25 927 F.3d 1320 (Fed. Cir. 2019)................................................................................................10

26 Manzarek v. St. Paul Fire & Marine Ins. Co.,


519 F.3d 1025 (9th Cir. 2008) ...................................................................................................8
27

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PLAINTIFF SIMPLEHUMAN, LLC’S -ii- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 4 of 22

1 TABLE OF AUTHORITIES
(cont’d)
2
Page No(s).
3

4 Oakley, Inc. v. Trillion Top Co. Ltd. LLC,


Case No. SACV 17-01580 AG, 2018 WL 5099484
5 (C.D. Cal. Jun. 4, 2018) .............................................................................................6, 7, 13, 16
6 Puma SE v. Forever 21, Inc.,
Case No. CV17-2523 PSG, 2017 WL 4771004
7 (C.D. Cal. June 29, 2017) ....................................................................................................4, 10
8
Resnick v. Hayes,
9 213 F.3d 443 (9th Cir. 2000) .....................................................................................................4

10 Saverglass, Inc. v. Vitro Packaging, LLC,


130 F. Supp. 3d 747 (E.D.N.Y. 2015) .................................................................................9, 12
11
SCG Characters LLC v. Telebrands Corp.,
12 No. 15-cv-0374 DDP (AGRx), 2015 WL 4624200
(C.D. Cal. Aug. 3, 2015) ................................................................................................5, 14, 15
13

14 OTHER AUTHORITIES

15 37 C.F.R. § 1.152 .......................................................................................................................8, 12

16 M.P.E.P. § 1503.02 ..............................................................................................................8, 10, 12

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PLAINTIFF SIMPLEHUMAN, LLC’S -iii- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 5 of 22

1 Plaintiff simplehuman, LLC (“simplehuman”) hereby opposes iTouchless Housewares

2 and Products, Inc.’s (“iTouchless” or “Defendant”) Motion to Dismiss Amended Complaint

3 Design Patent Claims.

4 I. INTRODUCTION
5 Defendant seeks a judgment of non-infringement of simplehuman’s asserted design

6 patents at the pleading stage. However, design patent infringement is a question of fact, and

7 generally not appropriate for determination on a motion to dismiss. Only when the designs are

8 so “plainly dissimilar” on their face will courts grant a motion to dismiss a design patent

9 infringement claim. A mere review of the side-by-side images of all of the views shown in the

10 asserted designs patents with the corresponding views of the accused products shown in the

11 Amended Complaint demonstrates that the designs in this case are not “plainly dissimilar,” and

12 Defendant’s Motion should be denied.

13 Defendant makes far-fetched and improper arguments to support its allegation that

14 simplehuman’s claims of infringement of the asserted design patents are implausible. For

15 example, in support of its request for dismissal of simplehuman’s claim of infringement of U.S.

16 Design Patent No. D644,807 C1 (“the D807 Patent”), Defendant asserts that the accused product

17 is not an “oval” and is thus distinguishable from the D807 Patent. But the words Defendant’s

18 counsel selects to characterize the shape of the accused product are immaterial to whether

19 simplehuman’s claim of infringement is plausible. It is the overall appearance of the accused

20 product that matters, not the technical definition of an “oval.” The images in the Amended

21 Complaint speak for themselves and demonstrate that it is more than plausible that the design of

22 the accused product and the design in the D807 Patent are substantially the same. In addition,

23 Defendant’s counsel’s characterization of the shape of the accused product contradicts the

24 allegation in the Amended Complaint, which must be accepted as true, that Defendant’s own

25 advertising characterizes the accused product as “oval.” See Dkt. 19 ¶ 15.

26 Many of Defendant’s other alleged differences between the accused product and the

27 D807 Patent rely on elements that are not even part of the claimed design shown in the D807

28 Patent. For example, Defendant argues that the D807 Patent contains “seam” lines not used in

PLAINTIFF SIMPLEHUMAN, LLC’S -1- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 6 of 22

1 the accused product; but the lines which Defendant identifies as “seam” lines are instead a

2 drafting convention which merely shows contour in the claimed designs. Defendant also points

3 to features in the drawings in the D807 Patent which are displayed in dotted lines. However,

4 case law and the disclosures in the D807 Patent demonstrate that the dotted lines denote

5 unclaimed features which should not be considered in determining infringement.

6 Defendant’s remaining arguments as to why the design of the accused product and the

7 D807 Patent are plainly dissimilar relate to alleged minor details in the two designs such as

8 whether certain edges are perfectly round or perfectly straight and whether there is a slight flare

9 in certain bands. These alleged minor differences would not be noticed by the ordinary observer

10 when giving as much attention as a purchaser usually does. Further, minute differences in the

11 designs will not avoid a finding of infringement, much less make the products so plainly

12 dissimilar that it is implausible an ordinary observer would confuse them. See Crocs, Inc. v. Int’l

13 Trade Comm’n, 598 F.3d 1294, 1295 (Fed. Cir. 2014) (“[M]inor differences between a patented

14 design and an accused article’s design cannot, and shall not, prevent a finding of infringement.”).

15 Defendant also urges this Court to dismiss simplehuman’s claim for infringement of the

16 D807 Patent on the ground that a circular prior art trash can design is more similar to the design

17 in the D807 Patent than Defendant’s trash can. As shown in the images below, it is Defendant’s

18 argument that is implausible, not simplehuman’s claim of infringement of the D807 Patent:

19 D807 Patent (Fig. 1) Accused Product Prior Art


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27 (Dkt. 19-1 at 3) (Dkt. 19 ¶ 27) (Dkt. 24-2 at 70)


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PLAINTIFF SIMPLEHUMAN, LLC’S -2- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 7 of 22

1 For the claim of infringement of U.S. Design Patent No. D729,485 S (“the D485

2 Patent”), Defendant does not cite any prior art and relies solely on its assertion that the products

3 are plainly dissimilar. See Mot. (Dkt. 24) at 21-25. As shown below in a comparison of the

4 D485 Patent and the accused product from the Amended Complaint, Defendant cannot meet its

5 burden of showing the products are so plainly dissimilar that no ordinary observer would confuse

6 them.

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17 Dkt. 19 ¶ 28. Defendant again turns to pointing out alleged minute differences in the designs

18 such as the slopes of the openings in the trash cans. But analyzing the minutia of the designs

19 cannot meet the standard for establishing entitlement to dismissal of design patent infringement

20 claims at the pleading stage. See Enerlites, Inc. v. Century Prods. Inc., Case No. SACV 18-839

21 JVS (KESx), 2018 WL 4859947, at *3 (C.D. Cal. Aug. 13, 2018). Further, many of the alleged

22 differences are based on Defendant’s improper and unsupported assertion that some of the lines

23 shown in the drawings in the D485 Patent are “seam” lines.

24 Defendant’s Motion is hopelessly flawed. Infringement of design patents is a question of

25 fact, and dismissal at the pleading stage based on the implausibility of infringement requires a

26 significant showing. Defendant has not, and cannot, show that the accused products are so

27 plainly dissimilar from simplehuman’s patented designs that it is implausible that an ordinary

28 observer would confuse them. Accordingly, Defendant’s Motion should be denied.

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OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 8 of 22

1 II. LEGAL BACKGROUND


2 A complaint need only present plausible factual allegations that raise the right to relief

3 above the speculative level. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570-71 (2007). The court

4 accepts as true all plausible factual allegations and construes those facts in the light most

5 favorable to the plaintiff. Resnick v. Hayes, 213 F.3d 443, 447 (9th Cir. 2000). A claim has

6 “facial plausibility” if the plaintiff pleads facts that “allow[] the court to draw the reasonable

7 inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S.

8 662, 678 (2009).

9 To properly plead design patent infringement, a plaintiff need only: (1) allege ownership

10 of the patent; (2) name each defendant; (3) cite the patent; (4) state the means by which the

11 defendant allegedly infringes; and (5) point to the sections of the patent law invoked. See Hall v.

12 Bed Bath & Beyond, Inc., 705 F.3d 1357, 1362 (Fed. Cir. 2013); Puma SE v. Forever 21, Inc.,

13 Case No. CV17-2523 PSG, 2017 WL 4771004, at *2 (C.D. Cal. June 29, 2017).

14 The test for design patent infringement is whether “an ordinary observer, familiar with

15 the prior art designs, would be deceived into believing that the accused product is the same as the

16 patented design.” Crocs, 598 F.3d at 1303 (citing Egyptian Goddess, Inc. v. Swisa, Inc., 543

17 F.3d 665, 681 (Fed. Cir. 2008) (en banc)). In evaluating design patent infringement, an ordinary

18 observer is deemed to give the designs “such attention as a purchaser usually gives.” Egyptian

19 Goddess, 543 F.3d at 670. In applying this “ordinary observer” test, both the patented design

20 and the accused infringing product must be viewed in their entireties as a whole. Crocs, 598

21 F.3d at 1295. “[M]inor differences between a patented design and an accused article’s design

22 cannot, and shall not, prevent a finding of infringement.” Id. (holding that all of the defendant’s

23 shoes infringed the asserted design patents, even though two of the defendant’s shoes had wider

24 fronts and an additional row of holes than shown in the patents, and another of defendant’s shoes

25 had square holes on the top, rather than round ones shown in the patents).

26 “Infringement of a design patent is a question of fact.” Catalina Lighting, Inc. v. Lamps

27 Plus, Inc., 295 F.3d 1277, 1287 (Fed. Cir. 2002). “Therefore, it is generally inappropriate to

28 make [a non-infringement] determination on a motion to dismiss unless the claimed design and

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OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 9 of 22

1 accused product are so plainly dissimilar that it is implausible that an ordinary observer would

2 confuse them.” Enerlites, 2018 WL 4859947, at *3 (citing Grand General Accessories Mfg. v.

3 United Pac. Indus. Inc., No. 08–07078 DDP (VBKx), 2009 WL 10672038, at *3 (C.D. Cal. June

4 11, 2009) (“[I]t is not generally appropriate to make this determination on a motion to dismiss.”);

5 Dioptics Med. Prods., Inc. v. IdeaVillage Prods. Corp., No. CV 08-03538 PVT, 2010 WL

6 4393876, at *2 (N.D. Cal. Oct. 29, 2010) (“Which features [of the design] would be significant

7 to the ordinary observer is a question of fact.”)); compare Deckers Outdoor Corp. v. J.C. Penny

8 Co., 45 F. Supp. 3d 1181, 1186-87 (C.D. Cal. 2014) (stating that it is improper “to contend that a

9 plaintiff has failed to allege design-patent infringement based on a comparison of the subject

10 designs, since the [c]ourt must accept all factual allegations as true in deciding a Rule 12(b)(6)

11 motion” and “a comparison of the protected designs with the accused products demonstrates a

12 sufficient visual similarity to at least render infringement of the [patent at issue] plausible”), with

13 SCG Characters LLC v. Telebrands Corp., No. 15-cv-0374 DDP (AGRx), 2015 WL 4624200, at

14 *4 (C.D. Cal. Aug. 3, 2015) (distinguishing Deckers and dismissing design patent infringement

15 claim because the accused design and patented design shared essentially no similarities and were

16 so distinct that it was not plausible that the ordinary observer test could be satisfied). “Courts

17 ordinarily do not dismiss a sufficiently plead design infringement claim ‘based on a comparison

18 of the subject design, unless the claimed design and accused product are so plainly dissimilar that

19 it is implausible that an ordinary observer would confuse them.’” Five Star Gourmet Foods, Inc.

20 v. Ready Pac Foods, Inc., Case No. 5:18-cv-2436 DDP (KKx), 2019 WL 1260634, at *3 (C.D.

21 Cal. Mar. 18, 2019). Accordingly, Defendant must show it is implausible the designs would be

22 viewed as substantially similar in the eyes of an ordinary observer when giving such attention as

23 a purchaser usually gives and analyzed as a whole, not on an element-by-element basis. See

24 Egyptian Goddess, 543 F.3d at 678; Amini Innovation Corp. v. Anthony CA, Inc., 439 F.3d 1365,

25 1372 (Fed. Cir. 2006).

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PLAINTIFF SIMPLEHUMAN, LLC’S -5- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 10 of 22

1 III. SIMPLEHUMAN’S INFRINGEMENT CLAIMS ARE PLAUSIBLE


2 A. The Accused Product And The D807 Patent Are Not Plainly Dissimilar
3 simplehuman’s Amended Complaint sufficiently pleads infringement of the D807 Patent.

4 Dkt. 19 ¶ 27 (including the subsequent images). The Amended Complaint alleges that

5 simplehuman is the owner of the D807 Patent and that Defendant infringes the D807 Patent by

6 making, using, selling, offering for sale, and/or importing the Dual-Deodorizer Oval Open-Top

7 product. Id. ¶¶ 9, 27. The Amended Complaint also includes comparisons of each figure from

8 the D807 Patent and the corresponding view of the accused Dual-Deodorizer Oval Open-Top

9 product. Id. ¶ 27. This is sufficient to state a claim for design patent infringement. See Hall,

10 705 F.3d at 1362; Oakley, Inc. v. Trillion Top Co. Ltd. LLC, Case No. SACV 17-01580 AG

11 (JCGx), 2018 WL 5099484, at *3-4 (C.D. Cal. Jun. 4, 2018) (“to properly plead design patent

12 infringement, a visual comparison that ‘demonstrates a sufficient visual similarity as to at least

13 render infringement of the [p]atent plausible’ is adequate.”) (quoting Deckers, 45 F. Supp. 3d at

14 1186)).

15 Defendant tacitly concedes that simplehuman’s First Amended Complaint sufficiently

16 pleads the elements required to allege design patent infringement. Thus, the central question for

17 this Court is whether the design claimed in the D807 Patent and Defendant’s accused product are

18 so plainly dissimilar that infringement would be implausible. See Five Star, 2019 WL 1260634,

19 at *3. However, the side-by-side comparisons in the Amended Complaint show that the accused

20 product and the claimed design are not only similar, they are in fact substantially similar.

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AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 11 of 22

1 Dkt. 19 ¶ 27. Defendant cannot meet its heavy burden to show that the designs are plainly

2 dissimilar.

3 When viewed in their entirety, the design claimed in the D807 Patent and the accused

4 Dual-Deodorizer Oval Open-Top product are substantially similar. This comparison shows that

5 the upper openings of both are generally oval in shape. Both designs show a relatively thin base

6 that is slightly larger and parallel to the circumference of the bodies, both of which have a

7 generally soft and rounded appearance. Both designs show the body element of the product

8 capped with a rim that overhangs the upper perimeter of the product body. Both designs show a

9 top cap with curved sidewalls that slope upward and inward to a top edge, which curves into an

10 opening to create a generally oval upper rim. Collectively, these shared visual elements viewed

11 in their entirety represent substantially similar visual appearances. Under the ordinary observer

12 test, simplehuman’s claim that Defendant infringes the D807 Patent is not just plausible, it is

13 probable.

14 Defendant spends several pages manufacturing minute differences between the two

15 designs. See Mot. at 14-18. However, Defendant ignores the fundamental tenets of design

16 patent law. In evaluating infringement, differences between the accused product and the claimed

17 design must be “evaluated in the context of the claimed design as a whole, and not in the context

18 of separate elements in isolation . . . the fact finder must apply the ordinary observer test by

19 comparing similarities in overall designs, not similarities of ornamental features in isolation.”

20 Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir. 2015) (citing

21 Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295 (Fed. Cir. 2010)).

22 Defendant’s primary argument is that the D807 Patent claims an oval design, whereas the

23 accused Dual-Deodorizer Oval Open-Top product is allegedly “rectangular with rounded

24 corners.” See, e.g., Mot. at 19. However, Defendant’s argument is unavailing for several

25 reasons. First, the words Defendant uses to characterize the shape of the accused product is

26 irrelevant. See Oakley, 2018 WL 5099484, at *3 (“a design patent ‘is claimed as shown in its

27 drawing’”) (quoting Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., Inc., 162 F.3d

28 1113, 1116 (Fed. Cir. 1998)). The side-by-side images in the Amended Complaint speak for

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OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 12 of 22

1 themselves. And they show that the design of the accused product and the D807 Patent, however

2 described in words, are not plainly dissimilar in overall appearance.

3 Further, Defendant’s argument that its accused product is not oval shaped directly

4 contradicts the factual allegations in the Amended Complaint, which is inappropriate in the

5 context of a motion to dismiss. Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025,

6 1031 (9th Cir. 2008) (For purposes of ruling on a Rule 12(b)(6) motion, the court must “accept

7 factual allegations in the complaint as true and construe the pleadings in the light most favorable

8 to the nonmoving party.”). simplehuman expressly alleges in its Amended Complaint that the

9 Dual-Deodorizer Oval Open-Top product is indeed oval. Dkt. 19 ¶ 15. Critically, this allegation

10 is based on factual averments taken directly from Defendant’s own website, which repeatedly

11 describes the Dual-Deodorizer Oval-Top product as having a “Versatile flat oval design.”

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19 Dkt. 19 ¶ 15. In fact, the name of the Dual-Deodorizer Oval Open-Top includes the word oval.

20 Defendant’s contrary argument is disingenuous and should be rejected.

21 Moreover, the fact that there is a fact dispute over how Defendant’s own marketing

22 department and Defendant’s counsel view the Dual-Deodorizer Oval Open Top product shows

23 that the issue of non-infringement is improper for resolution even at the summary judgment

24 stage, much less at the pleading stage.

25 Defendant next argues that the claimed design includes “seam lines,” whereas the

26 accused product does not. See Mot. at 14-15, 18; Dkt. 19-1 at Fig. 1. Defendant misunderstands

27 design patents. The lines highlighted by Defendant in its motion are contour lines that show the

28 three-dimensional contours of the claimed design. See M.P.E.P. § 1503.02 (37 C.F.R. § 1.152).

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AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 13 of 22

1 These lines do not depict ornamental features of the design claimed in the D807 Patent. For

2 example, in Saverglass, the court made clear in its construction of the claimed design shown

3 below that the “[o]blique lines shown on the surfaces of the bottle in FIGS. 1–7 represent

4 shading and contour lines, not surface ornamentation.” Saverglass, Inc. v. Vitro Packaging,

5 LLC, 130 F. Supp. 3d 747, 753 (E.D.N.Y. 2015) (emphasis added).

10

11

12 Similarly, the lines shown on the figures of the D807 Patent are not ornamental elements,

13 but instead represent the contours of the three-dimensional design shown in the two dimensional

14 figure. Regardless, even if the claimed design included “seam lines,” when viewed as a whole,

15 the difference would be trivial and the Dual-Deodorizer Oval Open-Top product would still

16 infringe. See Amini, 439 F.3d at 1372 (“the trial court mistakenly analyzed each element

17 separately instead of analyzing the design as a whole from the perspective of an ordinary

18 observer.”); Crocs, 598 F.3d at 1295 (“[M]inor differences between a patented design and an

19 accused article’s design cannot, and shall not, prevent a finding of infringement.”) (emphasis

20 added).

21 Defendant next points to other minutia to argue that the designs are plainly dissimilar.

22 Specifically, Defendant argues that the bands on the accused product are not “flared” and that the

23 bottom band is thinner than the claimed design. Defendant also argues that the top of the

24 accused product does not have perfectly semicircular ends or a perfectly straight middle. See

25 Mot. at 14. Even with the color-coded annotated figures and corresponding chart included in

26 ///

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AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 14 of 22

1 Defendant’s brief, these alleged differences are barely discernible to the trained eye.1 At best,

2 these differences are trivial when viewed in context of the design as a whole. It is untenable that

3 these minor differences would be so stark that an ordinary observer would believe the designs to

4 be “plainly dissimilar.” Five Star, 2019 WL 1260634, at *3 (“Even if at this stage the court

5 notes some dissimilarities between the claimed design and the accused design, such differences

6 do not amount to a finding of plain dissimilarity.”). Defendant cannot meet its heavy burden to

7 show that simplehuman’s claim of infringement is implausible. See, e.g., Enerlites, 2018 WL

8 4859947, at *4 (denying motion to dismiss because despite their differences, “a comparison of

9 the two products demonstrates a sufficient visual similarity to at least render infringement []

10 plausible” (internal quotations omitted)); Five Star, 2019 WL 1260634, at *3 (“The court finds

11 that based on the allegations and the photographs in the complaint the designs are not so

12 sufficiently distinct to warrant dismissal at this stage.”); Puma, 2017 WL 4771004, at *3

13 (denying motion to dismiss where the claimed design and accused product “bear a substantial

14 degree of similarity when considering the overall design.”); Deckers, 45 F. Supp. 3d at 1186-87

15 (denying motion to dismiss where “a comparison of the protected designs with the accused

16 products demonstrates a sufficient visual similarity to at least render infringement of the [patent]

17 plausible.”).

18 Defendant also references a prior art product known as the “Hero Bullet” and a prior art

19 patent known as “Yang ‘817” in an attempt to show that simplehuman’s claim of infringement of

20
1
21 Defendant also points to unclaimed features in the D807 Patent to highlight additional
trivial differences. See Mot. at 17 (green circles added by Defendant). However, unclaimed
22 features of the D807 Patent cannot be included in the infringement analysis. See Kolcraft
Enters., Inc. v. Graco Children’s Prods., Inc., 927 F.3d 1320, 1322 (Fed. Cir. 2019) (citing
23 M.P.E.P. § 1503.02 (9th ed. 2018)) (“The dashed lines do not form part of the claimed design.”).
Defendant points to the dashed lines showing the handle of the claimed design to argue that the
24 accused Dual-Deodorizer Oval Open-Top product lacks this feature. See, e.g., Mot. at 15, 18.
But, the entire area for the handle is unclaimed. Defendant then annotates Figure 5 of the D807
25 Patent with green circles to highlight features of the bottom of the trash can design that are
shown in dashed lines. Again, these features are expressly disclaimed and cannot be included in
26 the infringement analysis. Defendant’s arguments relating to unclaimed features in the D807
Patent are not only improper, but highlight that Defendant cannot meet its heavy burden to show
27 that the claimed design and the accused Dual-Deodorizer Oval Open-Top product are plainly
dissimilar.
28

PLAINTIFF SIMPLEHUMAN, LLC’S -10- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 15 of 22

1 the D807 Patent is implausible. However, rather than showing dissimilarities between the

2 accused product and the claimed design, the prior art actually provides the proper perspective to

3 confirm that the Dual-Deodorizer Oval Open-Top product infringes the D807 Patent. A four-

4 way comparison of the D807 Patent, the accused product, and the cited prior art clearly shows

5 that only two of the designs are similar: the accused product and the design claimed in the D807

6 Patent.

7 D807 (Fig. 1) Accused Product Hero Bullet Yang ’817


8

10

11

12

13

14 (Dkt. 19-1) (Dkt. 19 ¶ 27) (Dkt. 24-2 at 70) (Dkt. 24-2 at 75)
15

16 In sum, Defendant cannot meet its heavy burden to show on the pleadings that the
17 claimed design and the accused Dual-Deodorizer Oval Open-Top product are plainly dissimilar
18 and Defendant’s motion should be denied.
19 B. Defendant Has Also Failed To Show That simplehuman’s Claim Of Infringement Of
20 The D485 Patent Is Implausible
21 The side-by-side comparison of the claimed design of the D485 Patent and Defendant’s
22 accused product—the Dual-Compartment Open Top Trash and Recycle Can—shows that
23 Defendant’s allegation that simplehuman’s design patent infringement claim is implausible lacks
24 merit.
25 ///
26 ///
27 ///
28 ///

PLAINTIFF SIMPLEHUMAN, LLC’S -11- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 16 of 22

10 Dkt. 19 ¶ 28. The side-by-side comparisons, shown in the Amended Complaint, show that both

11 designs have a thin base element, a body element with generally flat side panels connected by

12 rounded corners, similarly proportioned top caps with side walls and corners congruent with the

13 body element, and with a generally flat horizontal top edge that is punctured by two large

14 cavities with inwardly sloping sidewalls. Collectively, these individual elements create similar

15 overall visual images of a softened rectangular container with two tapered openings into separate

16 compartments. The accused Dual-Compartment Open Top Trash and Recycle Can and the

17 design claimed in the D485 Patent are, in fact, substantially similar. Defendant cannot meet its

18 burden of showing the designs are so plainly dissimilar that it is implausible an ordinary observer

19 would confuse them.

20 Again, Defendant improperly asserts that the claimed design in the D485 Patent contains

21 “seam” lines which are not present in the accused product. However, similar to the D807 Patent,

22 the referenced lines are contour lines that show inflection points and contours on the claimed

23 design, not seams. See M.P.E.P. § 1503.02 (37 C.F.R. § 1.152); Saverglass, 130 F. Supp. 3d at

24 753. These contour lines are not ornamental features, but instead illustrate the three-dimensional

25 nature of the claimed design on the two dimensional page.

26 Defendant also points to purported minute differences between the claimed design in the

27 D485 Patent and the accused product such as the slope of the edges surrounding the openings at

28 ///

PLAINTIFF SIMPLEHUMAN, LLC’S -12- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 17 of 22

1 the top of the trash cans.2 Mot. at 21-24. As previously explained, Defendant’s analysis of

2 minute details is improper, especially at this stage of the proceedings. On a motion to dismiss,

3 the question is whether the designs are so plainly dissimilar that it is implausible that an ordinary

4 observer would confuse the designs. Enerlites, 2018 WL 4859947, at *3. The purported

5 differences are not ones that an ordinary observer would notice, much less do these alleged

6 minor differences rise to the level of plain dissimilarity. See Egyptian Goddess, 543 F.3d at 683.

7 Defendant falls well short of showing that the designs are plainly dissimilar.

8 The side-by-side comparisons in the Amended Complaint sufficiently allege a plausible

9 claim of infringement of the D485 Patent. See, e.g., Oakley, 2018 WL 5099484, at *3-4. As

10 shown, for example, in the image above, Defendant’s Dual Compartment Open Top Trash and

11 Recycle Can is not so plainly dissimilar from the claimed design of the D485 Patent that it is

12 implausible an ordinary observer would confuse the designs. Accordingly, Defendant has failed

13 to meet its burden, and its Motion should be denied.

14 C. Defendant’s Cited Cases Are Plainly Inapposite


15 Defendant’s Motion cites to three cases where defendants were able to show that the

16 designs were plainly dissimilar at the motion to dismiss stage. However, looking at the designs

17 at issue in these cases, it is clear these cases are nothing like the present case. Even a very

18 cursory review of the designs in these cases made it evident that the designs were plainly

19 dissimilar and that it was implausible an ordinary observer would confuse them. The courts did

20 not need to dive into minutia of the designs to make a ruling of plain dissimilarity.

21 The asserted design and the accused design in the non-precedential Kimberly-Clark case

22 cited by Defendant are shown below:

23 ///

24 ///

25
2
26 Defendant relies on purported images of its products that were not included in the
Amended Complaint to point out these alleged minor differences. See Mot. at 23 (“Right”
27 image), 24 (“Front” image). This evidence from outside the pleadings should be disregarded.
Five Star, 2019 WL 1260634, at *3.
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PLAINTIFF SIMPLEHUMAN, LLC’S -13- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 18 of 22

6 Anderson v. Kimberly-Clark Corp., 570 Fed. Appx. 927, 933 (Fed. Cir. 2014). The plain

7 dissimilarity between the designs is immediately apparent. The court identified “striking”

8 differences between the two designs, including, but not limited to, “the patented design contains

9 a ‘bloomers-style’ undergarment that covers each upper leg versus the Depend® ‘briefs’-style’

10 undergarment with no leg covering.” Id.

11 The second product at issue in Kimberly-Clark was the GoodNites® product shown below

12 to the right:

13

14

15

16

17

18 Id. The court noted that the GoodNites® product was not “a unitary undergarment” as claimed in

19 the patent because the GoodNites® product consisted of an inner “briefs-style undergarment not

20 unlike the Depend products” and an outer “boxer-short-style layer.” Id. (internal quotations

21 omitted). Thus, the Federal Circuit held that the district court “properly concluded that ‘plain

22 differences’ exist” between the patented design and GoodNites® product. Id. at 933-34.

23 Defendant also cites SCG Characters LLC v. Telebrands Corp., No. CV-15-00374 DDP

24 (AGRx), 2015 WL 4624200 (C.D. Cal. Aug. 3, 2015). A side-by-side comparison of the

25 asserted designs and accused products from the SCG case is below:

26 ///

27 ///

28 ///

PLAINTIFF SIMPLEHUMAN, LLC’S -14- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 19 of 22

10

11 SCG, 2015 WL 9264070, at *5-6. The court concluded that the accused products were plainly

12 dissimilar because the accused products “share[d] essentially no similarities” with distinctive

13 features of the patented designs. SCG, 2015 WL 4624200, at *5-6. Specifically, the court found

14 that the accused designs did not have stalks or antennae on their heads, there were no designs on

15 the chest of the toys, and they do not have tails or backpacks, among numerous other major

16 differences. Id. The reason for the court’s conclusion is immediately apparent from the images

17 above.

18 The last case cited by Defendant is Colida v. Nokia, Inc., 347 Fed. Appx. 568 (Fed. Cir.

19 2009). The patented design (left) and accused product (right) from the Colida case are shown

20 below:

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22

23

24

25

26

27 Id. at 570. The fact that the products are plainly dissimilar is again immediately apparent from

28 the images above.

PLAINTIFF SIMPLEHUMAN, LLC’S -15- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 20 of 22

1 Here, Defendant does not argue and cannot show that based on the side-by-side

2 comparisons of the patented design and the accused products it is immediately apparent that the

3 designs are plainly dissimilar. Instead, Defendant resorts to improperly analyzing minute details

4 of each of the designs. This exercise merely evidences the lack of merit of Defendant’s Motion.

5 This case is far more similar to Deckers Outdoor Corp., where the court looked at a

6 single side-by-side comparison of the patented design and the accused products, and concluded

7 the comparison at least rendered the claims plausible. Deckers, 45 F. Supp. 3d at 1186-87; see

8 also Oakley, 2018 WL 5099484, at *3-4. The following are side-by-side images of the patented

9 design and accused products in the Deckers case:

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11

12

13

14

15

16

17 Deckers, 45 F. Supp. 3d at 1186-87 (denying motion to dismiss). As the Court stated in Deckers,

18 the mere presence of differences is not sufficient to make infringement implausible. See

19 Deckers, 45 F. Supp. 3d at 1186-87. simplehuman’s Amended Complaint shows that, at a

20 minimum, it is plausible an ordinary observer would conclude that Defendant’s accused products

21 are substantially similar to the claimed designs of the asserted patents, and therefore infringe.

22 See Dkt. 19 ¶ 27. Defendant’s Motion has come nowhere near the required showing of

23 implausibility.

24 IV. CONCLUSION
25 simplehuman has plausibly alleged that Defendant’s products are substantially similar to

26 the designs in the D807 and D485 Patents by including images of each view from each patent

27 next to corresponding images of the accused products. Defendant’s Motion falls significantly

28 short of showing that the designs are plainly dissimilar and that simplehuman has failed to allege

PLAINTIFF SIMPLEHUMAN, LLC’S -16- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 21 of 22

1 plausible claims of infringement. Accordingly, simplehuman respectfully requests that the Court

2 deny Defendant’s motion to dismiss.

3 Respectfully submitted,

4 KNOBBE, MARTENS, OLSON & BEAR, LLP

5 Dated: August 16, 2019 By: /s/ Ali S. Razai


Paul A. Stewart
6 Ali S. Razai
Nicole R. Townes
7
Brandon G. Smith
8
Attorneys for Plaintiff
9 simplehuman, LLC
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PLAINTIFF SIMPLEHUMAN, LLC’S -17- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT
Case 4:19-cv-02701-HSG Document 31 Filed 08/16/19 Page 22 of 22

1 CERTIFICATE OF SERVICE
2 I hereby certify that on August 16, 2019, I caused PLAINTIFF SIMPLEHUMAN,
3 LLC’S OPPOSITION TO DEFENDANT’S MOTION TO DISMISS AMENDED
4 COMPLAINT to be electronically filed with the Clerk of the Court using the CM/ECF system
5 which will send electronic notification of such filing to all attorneys of record.

6 I certify and declare under penalty of perjury that I am employed in the office of a

7 member of the bar of this Court at whose direction the service was made, and that the foregoing

8 is true and correct.

9 Executed on August 16, 2019, at San Francisco, California.

10

11 /s/ Kate Erwin


Kate Erwin
12

13 31124054

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PLAINTIFF SIMPLEHUMAN, LLC’S -18- Case No. 4:19-cv-02701-HSG


OPPOSITION TO MOTION TO DISMISS
AMENDED COMPLAINT