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Case: 1:13-cv-05570 Document #: 22 Filed: 12/13/13 Page 1 of 2 PageID #:64

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION ) ) VOLTSTAR TECHNOLOGIES, INC. f/k/a HORIZON TECHNOLOGIES, INC. ) ) Plaintiff, ) ) ) -vs.) ) AMAZON.COM, INC., ) ) Defendant. )

The Honorable John Z. Lee No. 1:13-cv-05570

DEFENDANTS MOTION INSTANTER TO FILE A BRIEF IN EXCESS OF FIFTEEN PAGES Defendant Amazon.com, Inc. (Amazon) moves to file a brief in excess of fifteen (15) pages in support of its motion for summary judgment, filed concurrently herewith. In support of the instant motion, Amazon states as follows: 1. On August 5, 2013, plaintiff Voltstar Technologies, Inc. (Voltstar)

filed its complaint in this matter. The complaint alleges that Amazon infringed a design patent owned by Voltstar. 2. Amazon is filing concurrently herewith a motion for summary judgment,

which demonstrates that the Amazon product that Voltstar has accused of infringement does not infringe as a matter of law. 3. To adequately demonstrate the deficiencies in Voltstars infringement

claim, and that Amazon is entitled to judgment as a matter of law of that issue, Amazons brief in support of summary judgment includes several figures and photographs which reflect facts at issue in this case, and other figures necessary to properly illustrate

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the conclusions of other courts in cases that Amazon relies upon as legal support for its request for summary judgment. These figures and photographs are essential for the Court to properly assess the merits of Amazons summary judgment argument. 4. Though the text of the argument in Amazons brief would otherwise

comply with the Courts rule, the inclusion of these figures and photographs has resulted in a memorandum that exceeds the 15 page limit set by the Court. 5. In light of the above, Amazon respectfully requests leave to file a memo-

randum in support of its motion for summary judgment in excess of 15 pages as is otherwise required by the Court.

WHEREFORE, defendant Amazon respectfully requests that the Court allow Amazon to file a memorandum in support of its motion for summary judgment that exceeds fifteen pages in length.

/s/ Bradford P. Lyerla____ Bradford P. Lyerla blyerla@jenner.com Kristopher R. Kiel kkiel@jenner.com Nicole C. Berg nberg@jenner.com JENNER & BLOCK LLP 353 North Clark Street Chicago, Illinois 60654 (312) 222-9350 Counsel for Defendant, AMAZON.COM, INC.

December 13, 2013

Case: 1:13-cv-05570 Document #: 22-1 Filed: 12/13/13 Page 1 of 23 PageID #:66

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION VOLTSTAR TECHNOLOGIES, INC. f/k/a HORIZON TECHNOLOGIES, INC. Plaintiff, -vs.AMAZON.COM, INC., Defendant. ) ) ) ) ) ) ) ) ) ) ) )

The Honorable John Z. Lee No. 1:13-cv-05570

MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF AMAZON.COM

Bradford P. Lyerla blyerla@jenner.com Kristopher R. Kiel kkiel@jenner.com Nicole C. Berg nberg@jenner.com JENNER & BLOCK LLP 353 North Clark Street Chicago, Illinois 60654 (312) 222-9350 Counsel for Defendant, AMAZON.COM, INC.

December 13, 2013

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TABLE OF CONTENTS INTRODUCTION----------------------------------------------------------------------------------- 1 STATEMENT OF FACTS ------------------------------------------------------------------------- 1 A. B. C. D. E. F. Plaintiff Voltstar ------------------------------------------------------------------- 1 Defendant Amazon ---------------------------------------------------------------- 2 Voltstars Complaint and Amazons Answer ---------------------------------- 2 The Protected Features of Voltstars Patented Design ------------------------ 2 The Accused Amazon Wall Plug ------------------------------------------------ 4 Status of this Litigation ----------------------------------------------------------- 6

ARGUMENT ---------------------------------------------------------------------------------------- 7 I. II. III. FUNCTIONAL SIMILARITIES CANNOT BE THE BASIS FOR DESIGN PATENT INFRINGEMENT-------------------------------------------------------------- 9 THE AMAZON PRODUCT AND VOLTSTAR PATENT SHARE NO COMMON ORNAMENTAL FEATURES ------------------------------------------- 12 NO FACT OR EXPERT DISCOVERY VOLTSTAR MIGHT SEEK CAN LEGITIMATELY PREVENT SUMMARY JUDGMENT ------------------------- 13

CONCLUSION ------------------------------------------------------------------------------------ 18

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TABLE OF AUTHORITIES Page(s): Cases: Arcteryx Equip. Inc. v. Westcomb Outerwear, Inc., No. 07-59, 2008 WL 4838141 (D. Utah Nov. 4, 2008) ------------------------------------ 8 Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997 (N.D. Ill. 2010) ------------------------------------------------ 8, 16, 17 Contessa Food Prods., Inc. v. ConAgra, Inc., 282 F.3d 1370 (2002) ------------------------------------------------------------------------- 15 Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008) ------------------------------------------------------------ 8, 15 Fanimation, Inc. v. Dans Fan City, Inc., No. 08-cv-1071, 2010 WL 5285304 (S.D. Ind. Dec. 16, 2010) --------------------------- 8 Gorham Co. v. White, 81 U.S. 511 (1871) ------------------------------------------------------------------------------ 8 Great Neck Saw Mfrs., Inc. v. Star Asia U.S.A., LLC, 727 F. Supp. 2d 1038 (W.D. Wash. 2010) --------------------------------------------------- 8 HR U.S. LLC v. Mizco Int'l, Inc., No. 07-2394, 2009 WL 890550 (E.D.N.Y. Mar. 31, 2009) ------------------------------- 8 In re Mann, 861 F.2d 1581 (Fed. Cir. 1988) --------------------------------------------------------------- 7 Lee v. Dayton-Hudson Corp., 838 F.2d 1186 (Fed. Cir. 1988) ------------------------------------------------------ 7, 11, 15 McIntire v. Sunrise Specialty Co., F. Supp. 2d, 2013 WL 1907609 (E.D. Cal. 2013) ------------------------------------ 8 Minka Lighting, Inc. v. Maxim Lighting Intl, Inc., No. 06-cv-995, 2009 WL 691594 (N.D. Tex. Mar. 16, 2009) ------------------- 8, 17, 18 OddzOn Prods., Inc. v. Just Toys, Inc. 122 F.3d 1396 (Fed. Cir. 1997) -------------------------------------------------------- passim

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Pacific Handy Cutter, Inc. v. Quick Point, Inc., No. 96-399, 1997 WL 607501 (C.D. Cal. July 9, 1997) ------------------------------ 8, 14 Rainworks Ltd. v. The Mill-Rose Co., No. 06-1549, 2009 WL 863993 (N.D. Ohio Mar. 31, 2009) ------------------------------ 8 Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010) -------------------------------------------------------- passim Schnadig Corp. v. Collezione Europa U.S.A., No. 01-1697, 2002 WL 31253750 (N.D. Ill. Oct. 4, 2002) -------------------------------- 8 Sofpool LLC v. Kmart Corp., No. S-10-3333, 2013 WL 2384331 (E.D. Cal. May 30, 2013) ----------------------- 8, 16 Statutes and Rules: Federal Rule of Civil Procedure 16(f) ------------------------------------------------------------ 6 Federal Rule of Civil Procedure 56(d) ------------------------------------------------------------ 7

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INTRODUCTION Design patents by definition protect the ornamental features of an article of manufactureand only those features. By contrast, features of an article that reflect its function, as opposed to its decorative appearance, are outside the scope of a design patents protection, and for that reason cannot form any basis of an allegation of patent infringement as a matter of law. Here, Voltstar alleges that Amazon infringes a design patent, U.S. Design Patent No. D587,192, directed solely to the ornamental features of a compact USB wall plug. While both the Voltstar patent and the accused Amazon product are functionally configured to perform as compact wall plugs, the Amazon product does not share even a single ornamental (i.e., non-functional) feature in common with Voltstars patented design. For that reason, as a matter of law, the Amazon product cannot possibly infringe. And where an accused device does not share even a single ornamental feature with a design patent, any similarity between the two necessarily would arise, if at all, solely from functional similarities that fall outside the scope of the patent. Consequently, any fact or expert discovery that Voltstar may wish to pursue, no matter its scope, could do no more than attempt to show confusion traceable solely to a functional, not ornamental, similarity which is irrelevant as a matter of law. For these reasons, as set forth more fully below, Amazon moves for summary judgment. STATEMENT OF FACTS A. Plaintiff Voltstar

Voltstar Technologies, Inc. makes and sells wall plug accessory products that can be used to charge devices designed and sold by other companies. (Amazons 56.1 State-

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ment of Facts SOF 2.) The Volt-Star Mini Charger is one such product. (Id.) Voltstars Mini Charger is currently offered for sale on amazon.com and also through Voltstars website. (Id. 4.) Voltstars website specifically advertises this product as an accessory for use with Amazon Kindle devices, among other devices. (Id. 4-5.) Voltstar also owns a number of United States and foreign patents, some of which are utility patents directed to the function of its charger products, and others are design patents directed to the ornamental features of its charger designs. (SOF 6.) B. Defendant Amazon

Amazon sells e-reader products under the popular Kindle brand. (SOF 8.) Amazon also sells accessory USB wall plugs for use in charging Kindle devices. (SOF 9.) Voltstar accuses one such USB wall plug, formerly sold by Amazon, of infringement in this case. C. Voltstars Complaint and Amazons Answer

Voltstar filed this lawsuit against Amazon on August 5, 2013, alleging that Amazons accessory USB wall plug infringes Voltstars U.S. Design Patent No. D587,192. (Dkt. No. 1.) In its complaint, Voltstar seeks an accounting, damages in no event less than a reasonable royalty, and an award of costs incurred in connection with prosecuting this action against Amazon. (Id. at 6.) Voltstar has made no prayer for injunctive relief. On October 11, 2013, Amazon filed its answer denying that it infringes Voltstars patent. (Dkt. No. 16, at 4-5.) D. The Protected Features of Voltstars Patented Design

The Voltstar patent, entitled Electrical Charger, includes a single claimed embodiment shown in six figures with various perspective views. (SOF 11, 13.) The patent is generally directed to a design for a compact USB wall plug with a number of specific ornamentali.e., non-functionalfeatures, which are the sole focus of this case.

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The principal ornamental feature of the Voltstar patent, apparent in each figure, is an overall beveled appearance with a number of facetsangled surfaces like those cut into a gemstonethat define the contours in the body of the plug. Figures 1 and 2 of the Voltstar patent, shown below, claim a beveled appearance and no fewer than ten welldefined facets in the body of the plug.

Figure 2, on the right, claims a number of annular or ring-shaped facets on a narrow projection that houses the USB port, which (because of these annular facets) resembles the threaded end of a light bulb. Additional ornamental features of Voltstars design are shown in figures 3 and 5. Among other things, these figures claim a lateral groove that runs the length of the plug and bisects it into two halves, as shown below.

The resulting overall appearance resembles a clamshell, with a top half and a bottom half sandwiched together with a discernible gap. Figure 5 claims this clamshell appearance as well and also claims a distinctive X-pattern formed when the facets on the shoulders of the plug taper toward the middle.

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Finally, in figure 5, the projection that houses the USB port is claimed to be much narrower than the body of the charger and nearly circular in shape. E. The Accused Amazon Wall Plug

The Amazon wall plug was designed and developed by Chris Green and John Johnston, product designers at Amazons Lab126 facility, beginning in the spring of 2008. (SOF 17.) Amazon released it for sale to the public in March 2009. (Id.) Notably, the design for the Amazon wall plug at issue in this case is the subject of its own patent, U.S. Design Patent No. D611,409. (Id. 18.) Amazon, the assignee of the 409 patent, therefore owns the patent rights to the design of its wall plug. The Voltstar complaint includes photos of the Amazon wall plug that Voltstar has accused of infringement. Exhibit 1 to the Johnston Declaration includes additional views. These views show that the Amazon wall plug has a number of distinct ornamental features of its own, and that each ornamental feature is different from those depicted in Voltstars design patent. In contrast to the beveled design claimed in Voltstars patent, Amazons product features no facets and only smooth contoursrepresenting a design choice that is the very opposite of Voltstars design. This difference is easy to see by comparing the two designs from any perspective, including the perspective shown below.

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Amazons product differs from Voltstars patent in other readily discernible ways as well. The Amazon product is divided in a prominently different way: while the Voltstar design patent includes a distinct top half and bottom half, the Amazon product has no such designi.e., no distinct top half and bottom half. Instead, the Amazon plug is divided into two end portions, with the dividing line between the USB port and metal prongsnot running laterally across the body of the plug, as shown below.

Thus, while the Amazon product appears as two pieces, they clearly are not the same two pieces as in Voltstars design patent. The USB side of Amazons product also includes none of the ornamental design features claimed in Voltstars patent. The sharp ornamental angles on the USB side of the Voltstar design patent are nowhere to be found on the Amazon product.

The Amazon product therefore lacks anything remotely similar to the light bulb-type threads or distinctive X shaped pattern depicted in the Voltstar patent, as shown above. In sum, the Amazon product does not include a single ornamental, non-functional

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feature claimed in the Voltstar patent. Further, the Amazon product includes several distinctive ornamental, non-functional features that are not in the Voltstar design. For example, the USB end of the Amazon product features a broad and flat wide-mouth oval shape, which contrasts with the narrow circular shape in the Voltstar design patent.

The USB end of the Amazon product, shown above, also features a recessed area that accommodates the USB cable, resulting in a well-defined lip raised around the perimeter. These features of the Amazon product are nowhere to be found in the Voltstar design patent, in which the face of the USB portion is flat with no recessed area and no lip at all. In the Amazon product, the USB end appears as a smoothly rounded cap on the body of the plug, which the Voltstar patent utterly lacks. As the discussion above makes clear, the Amazon product does not include a single ornamental, non-functional feature claimed in the Voltstar patent, and also includes distinctive ornamental, non-functional features of its own that are not in the Voltstar patents design. F. Status of this Litigation

On November 6, 2013, the Court held a Rule 16(f) status conference. In advance of the conference, the parties submitted a joint report regarding the status of the case. (Dkt. No. 17.) In the report, Amazon noted its intention to file an early summary judgment motion to dismiss this case because the accused Amazon wall plug cannot infringe given that it does not include even a single ornamental, non-functional design feature

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claimed in the Voltstar patentand thus any possible confusion between the Voltstar patent and the Amazon plug would arise, if at all, from functional (i.e., unclaimed) features that are irrelevant to an infringement analysis as a matter of law. (Id. at 2-3.) At the conference, the Court heard brief argument from Amazon on the issue, and ruled that Amazon may proceed with its planned motion. The Court set a briefing schedule for the motion, and also noted that after evaluating Amazons motion Voltstar may file a Rule 56(d) affidavit to the extent Voltstar feels discovery is required to respond. This is Amazons motion. ARGUMENT Design patents by definition protect the cosmetic and ornamentali.e., nonfunctionalappearance of an article of manufacture, and the ornamental features depicted in a design patent are the exclusive focus of any infringement analysis. As the Federal Circuit held in Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010) we have made clear that a design patent, unlike a utility patent, limits protection to the ornamental design of the article. Similarly, in OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997), the Federal Circuit affirmed summary judgment of non-infringement of a design patent, stating: A design patent only protects the novel, ornamental features of the patented design. Accord Lee v. Dayton-Hudson Corp., 838 F.2d 1186 (Fed. Cir. 1988); see also In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) (Design patents have almost no scope. The claim at bar, as in all design patent cases, is limited to what is shown in the application drawings.). The test for whether a design patent is infringed is whether an ordinary observer comparing solely the ornamental (i.e., non-functional) appearance of a patented design and solely the ornamental (i.e., non-functional) appearance of an accused product side by side would be unable to tell the difference between the two, and would instead be con-

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fused into believing they are ornamentally the same. In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008), the Federal Circuit held that this ordinary observer test set out in Gorham Co. v. White, 81 U.S. 511 (1871) is the sole test of design patent infringement, and upheld a summary judgment of non-infringement. Where the ornamental features of a design patent and the accused product are as a whole plainly dissimilaras is necessarily true when the two share not even a single ornamental (i.e., non-functional) featurefederal courts are empowered, and do not hesitate, to grant summary judgment dismissing an infringement claim. See, e.g., Egyptian Goddess, 543 F.3d at 678 (In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear substantially the same to the ordinary observer, as required by Gorham.). Numerous district courts have applied this rule in dismissing design patent cases on summary judgment.1 Where, as is true here, the asserted patent and accused product do not share in common even a single ornamental feature, the only confusion even possible necessarily

See, e.g., Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997, 1011-12 (N.D. Ill. 2010); Minka Lighting, Inc. v. Maxim Lighting Intl, Inc., No. 06-cv-995, 2009 WL 691594, at *7 (N.D. Tex. Mar. 16, 2009); Sofpool LLC v. Kmart Corp., No. S-103333, 2013 WL 2384331 (E.D. Cal. May 30, 2013); McIntire v. Sunrise Specialty Co., F. Supp. 2d, 2013 WL 1907609, at *6-7 (E.D. Cal. 2013); Fanimation, Inc. v. Dans Fan City, Inc., No. 08-cv-1071, 2010 WL 5285304 (S.D. Ind. Dec. 16, 2010); Great Neck Saw Mfrs., Inc. v. Star Asia U.S.A., LLC, 727 F. Supp. 2d 1038 (W.D. Wash. 2010); Rainworks Ltd. v. Mill-Rose Co., 622 F. Supp. 2d 650 (N.D. Ohio 2009); Arcteryx Equip. Inc. v. Westcomb Outerwear, Inc., No. 07-cv-59, 2008 WL 4838141, at *3 (D. Utah Nov. 4, 2008); HR U.S. LLC v. Mizco Int'l, Inc., No. cv-07-2394, 2009 WL 890550, at *13 (E.D.N.Y. Mar. 31, 2009) (granting summary judgment, noting that a visual comparison alone is sufficient to determine non-infringement under the ordinary observer test); see also Schnadig Corp. v. Collezione Europa U.S.A., No. 01-c-1697, 2002 WL 31253750, at *14 (N.D. Ill. Oct. 4, 2002); Pacific Handy Cutter, Inc. v. Quick Point, Inc., No. cv-96-399, 1997 WL 607501, at *4-5 (C.D. Cal. July 9, 1997).

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would result from an alleged similarity in unclaimed subject matteri.e., function. As a matter of law, a plaintiff may not rely on confusion arising from unclaimed subject matter to establish infringementand no amount of discovery directed to such features could ever raise a triable factual dispute. I. FUNCTIONAL SIMILARITIES CANNOT BE THE BASIS FOR DESIGN PATENT INFRINGEMENT.

It is black letter law that the scope of a design patent extends only to the cosmetic and ornamental features of an article of manufacture, and that functional similarities are outside the scope of the patents protection. The Federal Circuit has applied this principle repeatedly to reject over-reaching allegations of patent infringement based solely on a similar functional configuration between the asserted patent and accused product. In Richardson, 597 F.3d 1288, for example, the patentee asserted that the defendants multi-component carpentry tool, shown below on the leftwhich included hammer, claw, wrench, and crow bar elementsinfringed the scope of his design patent shown, below on the right. Id. at 1294.

Accused design

Patented design

In Richardson, the patentee argued that the generally similar configuration of the accused product compared to the patented design was sufficient to establish infringement. Affirming a judgment of non-infringement, the Federal Circuit flatly rejected that argument. Id. at 1295-96. Instead, the court applied black letter law to exclude the functional ar-

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rangement of parts on which the patentees infringement argument was based from the scope of the design patent: By definition, the patented design is for a multi-function tool that has several functional components, and we 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. Id. at 1293-94 (citations omitted). Applying this rule, the Federal Circuit characterized the patentees infringement allegation as an argument for a claim scope that includes the utilitarian elements of his multi-function tool, which would indeed be improper to allow [him] to do. Id. at 1294. The Federal Circuit then assessed infringement by focusing exclusively on the ornamental features of the two designs ignoring the functional elements of the tools. Id. at 1296. In doing so, the court easily concluded that the two designs are indeed different. Id. The obviously blunt and flat edges of the patented design, compared to the rounder and streamlined appearance of the accused product, was all that was required to affirm the district courts finding that the accused product did not infringe. Id. In OddzOn Products, 122 F.3d 1396, the Federal Circuit applied the rule to reject a similar over-reaching infringement allegation at the summary judgment stage. In OddzOn, just as in Richardson, the patentee argued that a rocket-like football, with an extended tail and fins intended to stabilize it during flight, infringed his design patent based solely on the fact that both designs entailed this functional configuration. Id. at 1400.

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Id. 1399-1400 (accused product on the left, patented design on the right). Concluding that this rocket-like appearance was dictated by function and not by ornamentation, the Federal Circuit therefore reject[ed] OddzOns contention that overall similarity of the rocket-like appearance is sufficient to show infringement. Id. at 1405. Because the two football designs clearly differed in their ornamental appearancethe only thing relevant to design patent infringementthe Federal Circuit affirmed the district courts summary judgment ruling of no infringement. Id. at 1405-07. In Lee v. Dayton-Hudson Corp., 838 F.2d 1186 (Fed. Cir. 1988), the patentee argued that his design patent directed to a massager with an elongated handle and two balls at one end covered any device with a similar configuration regardless of any differences in the surface details. Id. at 1188. The Federal Circuit again disagreed, noting that [d]esign patents do not and cannot include claims to the structural or functional aspects of the article. Id. In its analysis, the court relied on such surface details as the wooden balls, their polished finish and appearance, the proportions, the carving on the handle, and all other ornamental characteristics to find that the patented design and accused product could not be confused, and that the patent therefore was not infringed. Id. As these cases make clear, any functional similarity between the Voltstar patent and the Amazon product (such as each having a simple plug shape with metal prongs on one end and a USB connection on the other) is insufficient to showindeed, irrelevant toinfringement of Voltstars design patent. Instead, what is relevant are the ornamental

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(i.e., non-functional) features claimed in Voltstars patent, and the Amazon wall plug exhibits none of these. II. THE AMAZON PRODUCT AND VOLTSTAR PATENT SHARE NO COMMON ORNAMENTAL FEATURES.

When the general functional configuration of the Voltstar patent and the Amazon product is properly set aside, as in the Federal Circuit cases above, there is nothing on which Voltstar could legitimately base its infringement allegation. As the facts above show, not a single ornamental feature of the Voltstar patent is present in the accused Amazon product. In terms of their ornamental features, Amazons design is consistently smooth, and Voltstars patent is beveled and multi-faceted. Amazons design is divided into a plug body portion and a USB end portion. Voltstars design patent, in contrast, is divided entirely differently, and is split in half down the middle along its entire length, with a discernible top half and bottom half thereby resembling a clamshell. Amazons design includes a rounded cap at the USB end, whereas Voltstars patent includes no such feature. At the USB end, Amazons design has a wide-mouthed design with a discernible lip encircling the USB port. In contrast, Voltstars patent has a narrow circular projection at the USB end with no lip at all. While the USB cap of the Amazon design is consistently rounded, the USB end of Voltstars design patent includes ring-shaped facets on the narrow projection resembling the threaded end of a light bulb and also includes a distinctive X patternboth of which are entirely absent from the Amazon design. The following table summarizes the ornamental features that distinguish the Voltstar patent and the Amazon product:

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Ornamental Feature
Overall beveled design Facets defining body of charger Groove laterally dividing plug body Narrow circular USB projection Ring-shaped facets in USB projection X shapes pattern on USB end Overall smooth non-beveled body Unitary appearance in charger body Distinct plug body / USB portions Rounded USB cap Wide-mouth USB port with lip

Voltstar Patent

Amazon Product

From the chart above, it will be clear that not a single one of the relevant ornamental features of these two designs is present in the other. In light of these clearly discernible ornamental differences, Voltstar has no legitimate argument that Amazon infringes its patent. Any attempt to apply the Voltstar patent here would necessarily stretch the scope of that patent to cover functionalnot ornamentalfeatures of the accused Amazon product. As shown above, the Federal Circuit has repeatedly rejected that precise theory of infringement as contrary to the law. III. NO FACT OR EXPERT DISCOVERY VOLTSTAR MIGHT SEEK CAN LEGITIMATELY PREVENT SUMMARY JUDGMENT.

Any argument from Voltstar that fact or expert discovery are required before the Court can entertain a summary judgment motion would be futile. The relevant facts that bear on infringementthe figures in the Voltstar patent and the appearance of the ac-

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cused Amazon productare beyond dispute. No fact or expert discovery can change the fact that Amazons product does not exhibit even a single ornamental feature claimed in Voltstars patent. Indeed, any discovery that Voltstar might pursue could do no more than attempt to create confusion based on the functional similarity between the two, which is off-limits and irrelevant to the infringement question before the Court as a matter of law. The Federal Circuits holding in OddzOn demonstrates that proceeding with fact discovery in this case would be error. In OddzOn, the patentee presented a number of purported issues of fact in an effort to keep its design patent infringement case alive, including evidence of actual confusion in the marketplace between the two products at issue, such as surveys and customers returning one product to the manufacturer of the other. 122 F.3d at 1406-07. The Federal Circuit rejected this evidence as irrelevant because it did nothing to show that the confusion resulted from any similarity in the ornamental features of the two products, as opposed to confusion that resulted from their similar function as rocket-shaped footballs. Id. The courts analysis on these issues in OddzOn reveals that discovery into facts that can show only that two designs share a similar functional configuration may not defeat a motion for summary judgment. Similarly, in Pacific Handy Cutter, Inc. v. Quick Point, Inc., No. 96-399, 1997 WL 607501, at *4-5 (C.D. Cal. July 9, 1997), the court noted that whatever the requested fact discovery uncovered would not be sufficient to preclude a conclusion of no infringement as a matter of law under the controlling ordinary observer test. Expert opinion also cannot defeat Amazons motion. The general rule that expert opinion alone cannot create a disputed issue of fact applies with equal force in design patent cases. The Federal Circuit has observed repeatedly that infringement is assessed from the perspective of the ordinary observer, not the expert: [O]ur precedent in making

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the required comparison counsels against measuring the similarity of designs from the viewpoint of experts in design. Contessa Food Prods., Inc. v. ConAgra, Inc., 282 F.3d 1370, 1381 (Fed. Cir. 2002). In other words, expert opinion cannot alter the obvious ornamental differences, and therefore expert reports and discovery are not needed here. On the facts of this case, any expert opinion Voltstar may offer could do no more than establish that the Amazon product and Voltstar design patent are both configured as compact USB wall plugs. That opinion does nothing to address what is relevant to design patent infringement, namely, the ornamental (i.e., non-functional) features claimed in Voltstars patent. In OddzOn, the Federal Circuit disregarded expert opinion that did no more than point out similarities in the two designs at issue when that opinion did not differentiate between functional similarities (which are irrelevant) and ornamental similarities (which the court may consider without assistance from an expert). 122 F.3d at 1406. No fact or expert discovery is needed before the Court can grant summary judgment in this case. Summary judgment was the appropriate result by the district court and was affirmed in Richardson,2 OddzOn, and Leein which the Federal Circuit squarely rejected an infringement theory identical to the infringement theory pled in this case. It is clearly the only appropriate result where, as here, the asserted patent and accused product share nothing in common in the way of ornamental (as opposed to functional) features. Indeed, a number of district courts have granted summary judgment, sparing the parties the need for expensive and protracted fact or expert discovery, on facts far less compelling than those now before the Court. In Richardson, the parties briefed the issue of infringement in the context of summary judgment and stipulated to the record presented in that context for purposes of the courts infringement analysis. In addressing infringement, the court held a bench trial for which the parties agreed to rely on only the briefing and evidence presented with their cross-motions for summary judgment. Richardson v. Stanley Works, Inc., 610 F. Supp. 2d 1046, 1048 (D. Ariz. 2009).
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In Sofpool LLC v. Kmart Corp., No. S-10-3333, 2013 WL 2384331 (E.D. Cal. May 30, 2013), for example, the court granted summary judgment after comparing the designs for two pools, finding just a single difference in ornamental features sufficient to sustain that result. In Sofpool, after comparing the two pool designs, the court noted simply that one design was squat and the other taller and more elegant. Id. at *4-5. On the facts of this case, there is not just one ornamental difference that distinguishes the accused Amazon product from the patented Voltstar design, as in Sofpool, but there is a complete absence of even a single ornamental feature claimed in the Voltstar patent in the accused Amazon product. Other district courts grant summary judgment notwithstanding the presence of obvious ornamental similarities, where there are sufficient distinctions in other ornamental features to allow an ordinary observer to tell them apart. In Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997 (N.D. Ill. 2010), for example, the district court compared the designs of two calculators, and granted summary judgment even though the two shared a very distinctive ornamental feature in commonbubble-shaped calculator keys, as shown in the figures below. Id. at 1011-12.

In Competitive Edge, notwithstanding this very distinctive ornamental similarity, summary judgment was appropriate in light of a number of other clear ornamental differences

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(such as the scalloped silhouette of the patented design on the left compared to the smooth edges and gentle hourglass shape of the accused product). Id. at 1011. In this case, beyond their generally similar functional configuration, the Voltstar patent and Amazon wall plug do not share anything in common in the way of ornamental features. Summary judgment in this case is thus even more compelling than in Competitive Edge. Similarly, in Minka Lighting, Inc. v. Maxim Lighting Intl, Inc., No. 06-cv-995, 2009 WL 691594 (N.D. Tex. Mar. 16, 2009), the district court granted summary judgment of no infringement in a case involving decorative support arms for a light fixture, both of which shared a similar ornamental scroll shape as shown below. Id. at *6.

In Minka, notwithstanding this overall similar ornamental scroll shape, the court granted summary judgment because, as will also be apparent to this Court, the similarities mostly end there. Id. at *7. Again, in this case, the Voltstar patent and accused Amazon product do not share even a single ornamental feature in common, and summary judgment of no infringement is therefore the only appropriate result. The cases above demonstrate that in design patent cases district courts do not hesitate to grant summary judgment and thereby spare the parties and the court the time, effort, and expense associated with unnecessary litigation where the asserted patent and accused product are readily distinguishable. Indeed, no court that Amazon has been able to identify has denied summary judgment and required a defendant to incur the signifi-

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cant costs of fact and expert discovery on facts comparable to those now before the Court in this case. Granting summary judgment in this case would help to fulfill the mandate from Chief Judge Rader of the Federal Circuit, who recently noted that in patent cases summary judgment is the key to efficient resolution of disputes, and that the bar has a responsibility to work with the bench to streamline congested court dockets through more aggressive summary judgment practice in patent cases. Chief Judge Randall R. Rader, United States Court of Appeals for the Federal Circuit, The State of Patent Litigation, E.D. Texas Judicial Conference, at 6 (Sept. 27, 2011). CONCLUSION Voltstars allegation that the Amazon product infringes its design patent is meritless. The two designs are plainly dissimilar not just in some ways but in every critical respect. Given the incontrovertible facts that bear on infringementthe figures of the Voltstar patent and the appearance of the accused Amazon productno reasonable juror could find that the Amazon product infringes. Accordingly, Amazon respectfully requests that the Court enter summary judgment and dismiss this case. Bradford P. Lyerla Bradford P. Lyerla blyerla@jenner.com Kristopher R. Kiel kkiel@jenner.com JENNER & BLOCK LLP 353 North Clark Street Chicago, Illinois 60654 (312) 222-9350 Counsel for Defendant, AMAZON.COM, INC. .

December 13, 2013

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Case: 1:13-cv-05570 Document #: 22-1 Filed: 12/13/13 Page 23 of 23 PageID #:88

CERTIFICATE OF SERVICE I hereby certify that a true and correct copy of Amazons Memorandum in Support of Motion for Summary Judgment was served on the 13th day of December, 2013 upon the following via ECF:

Jerold I. Schneider Schneider Rothman Intellectual Property Law Group PLLC P.O. Box 812182 Boca Raton, FL 33481-2182 Keith A. Vogt Takiguchi & Vogt 1415 W. 22nd Street, Tower Floor Oak Brook, Illinois 60523-2021

/s/ Kristopher R. Kiel Kristopher R. Kiel kkiel@jenner.com JENNER & BLOCK LLP 353 North Clark Street Chicago, Illinois 60654 (312) 222-9350 Counsel for Defendant, AMAZON.COM, INC.

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Case: 1:13-cv-05570 Document #: 22-2 Filed: 12/13/13 Page 1 of 2 PageID #:89

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION VOLTSTAR TECHNOLOGIES, INC. f/k/a HORIZON TECHNOLOGIES, INC. Plaintiff, -vs.AMAZON.COM, INC., Defendant. ) ) ) ) ) ) ) ) ) ) ) )

The Honorable John Z. Lee No. 1:13-cv-05570

DECLARATION OF NICOLE C. BERG I, Nicole C. Berg, an attorney duly licensed to practice before all courts of the State of Illinois, declare under penalty of perjury that: 1. I am an associate at Jenner & Block LLP, and one of the attorneys of

record for defendant Amazon.com, Inc. (Amazon). I submit this declaration in support of the accompanying memorandum of law in support of Amazons motion for summary judgment against Voltstar Technologies, Inc., pursuant to Federal Rule of Civil Procedure 56(a) in the above-captioned matter. 2. Attached to this declaration are true and correct copies of the following

documents cited in the accompanying memorandum of law.


Exhibit A Exhibit B US Design Patent D587,192 (Voltstar patent). US Design Patent D611,409 (Amazon patent).

Case: 1:13-cv-05570 Document #: 22-2 Filed: 12/13/13 Page 2 of 2 PageID #:90

I declare under penalty of perjury under the laws of the State of Illinois that the foregoing is true and correct. Executed on December 13, 2013, at Chicago, Illinois.

/s/Nicole C. Berg Nicole C. Berg

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