2018-2214

United States Court of Appeals

For The Federal Circuit

CURVER LUXEMBOURG, SARL,

Plaintiff - Appellant,
v.

HOME EXPRESSIONS INC.,

Defendant - Appellee.

Appeal from the District Court of New Jersey, Case No. 2:17-cv-4079

PLAINTIFF-APPELLANT’S OPPOSITION TO OSHWA’S MOTION FOR

LEAVE TO FILE AN AMICUS BRIEF
JASON H. KISLIN
kislinj@gtlaw.com
BARRY SCHINDLER
schindlerb@gtlaw.com
MICHAEL A. NICODEMA
nicodemam@gtlaw.com
GREENBERG TRAURIG, LLP
500 Campus Drive
Suite 400
Florham Park, NJ 07932
(973) 360-7900

Attorneys for Plaintiff-Appellant

DECEMBER 6, 2018
 TABLE OF CONTENTS

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

II. ARGUMENT ...................................................................................................1

A. OSHWA’S PROPOSED AMICUS BRIEF WILL NOT ASSIST THE

COURT ................................................................................................... 1

B. OSHWA’s Proposed Amicus Brief Is Merely A Re-Hash Of

Home Expressions’ Responsive Brief ................................................... 5
III. CONCLUSION..............................................................................................10

CERTIFICATE OF COMPLIANCE .......................................................................11

CERTIFICATE OF SERVICE ................................................................................12

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 TABLE OF AUTHORITIES

Page(s)
Cases
Crocs, Inc. v. International Trade Commission,
598 F.3d 1294 (Fed. Cir. 2010) ............................................................................7
In re Glavas,
230 F.2d 447 (C.C.P.A. 1956) .............................................................................. 8
Jacobsen v. Katzer,
535 F.3d 1373 (Fed. Cir. 2008) ............................................................................ 4

Kellman v. Coca-Cola Co.,

280 F. Supp. 2d 671 (E.D. Mich. 2003) ............................................................... 5
L.A. Gear, Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117 (Fed. Cir. 1993) ............................................................................ 8
P.S. Prods., Inc. v. Activision Blizzard, Inc.,
140 F. Supp. 3d 795 (E.D. Ark. 2014).................................................................. 5
Payless Shoesource, Inc. v. Reebok International Ltd.,
998 F.2d 985 (Fed. Cir. 1993) ..............................................................................8

Richardson v. Stanley Works, Inc.,

597 F.3d 1288 (Fed. Cir. 2010) ............................................................................ 8
In re Rubinfield,
270 F.2d 391 (C.C.P.A. 1959) ..............................................................................9
Samsung Electronics Co., LTD v. Apple Inc.,
137 S.Ct. 429 (2016) .............................................................................................9

Vigil v. Walt Disney Co.,

No. 97-4147, 1998 U.S. Dist. LEXIS 22853 (N.D. Cal. Dec. 1,
1998), aff’d, 2000 U.S. App. LEXIS 6231 (Fed. Cir. Apr. 5, 2000) .................... 5
Voices for Choices v. Illinois Bell Telephone Co.,
339 F. 3d 542 (7th Cir. 2003) ...........................................................................2, 3

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Statutes
35 U.S.C. § 171(a) .....................................................................................................5

Other Authorities
37 C.F.R. § 1.153(a)...................................................................................................5

https://www.oshwa.org/wp-
content/uploads/2014/01/OSHWA_section_IQT-
Quarterly_Winter-2014_The-Other-Open-Source-Reimagining-
Hardware.pdf ........................................................................................................2
MPEP § 1502 (9th ed. Rev. 08.2017, Jan. 2018)....................................................... 5

United States Constitution Article I, § 8 .................................................................... 2

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 I. INTRODUCTION

Plaintiff-Appellant (“Curver”) submits this brief in opposition to Open

Source Hardware Association’s (“OSHWA”) motion for leave to file an amicus

brief on this appeal. As we show below, there is no justification for OSHWA to

file an amicus brief. OSHWA is not articulating a distinct perspective or

presenting information, ideas, or arguments that go beyond what the parties have

been able to provide this Court. Rather, the proposed brief is a political marketing

tool designed to extoll the virtues of OSHWA; and it covers the very same ground

with the same arguments as set out in Home Expressions’ Responsive Brief.

Because OSHWA’s proposed brief will not assist the Court in deciding this

appeal, we respectfully submit that OSHWA’s motion for leave should be denied.

II. ARGUMENT
A. OSHWA’s Proposed Amicus Brief Will Not Assist The Court

OSHWA is not a proponent of the United States patent system. This is

apparent from its proposed amicus brief, which states: “Open Source Hardware

Association (“OSHWA”) is a non-profit organization that supports and advocates

for the open-source hardware community. Open-source hardware designers make

their project design files publicly available so that anyone can study, modify, or

make the designs or hardware based on them” (OSHWA Br. at 1). OSWHA’s

mission is to provide “an alternative to the patent intellectual property (IP)

structure” because, in its view, “[a]lthough patent laws were originally designed to

protect inventors’ ideas and benefit the public good, today patents can sometimes

constrain further innovation.” https://www.oshwa.org/wp-

content/uploads/2014/01/OSHWA_section_IQT-Quarterly_Winter-2014_The-

Other-Open-Source-Reimagining-Hardware.pdf.

OSHWA’s mission cuts at the heart of the exclusivity provided to inventors

under Article I, § 8 of the United States Constitution, which reads, in relevant part:

Congress shall have power . . . to promote the progress of science and

useful arts, by securing for limited times to authors and inventors the
exclusive right to their respective writings and discoveries.

OSHWA’s proposed amicus brief reads more like a marketing brochure then

a submission from a “friend of the Court.” Indeed, of the 21 pages comprising

OSHWA’s proposed brief, almost half the pages are dedicated to self-praise.1

OSHWA’s proposed brief is not designed to assist the Court with a fresh

perspective, or provide information the parties could not provide. Rather, it is

merely an attempt to inject interest group politics into the appellate process.

Citing Judge Posner’s decision in Voices for Choices v. Illinois Bell

Telephone Co., 339 F. 3d 542, 545 (7th Cir. 2003), OSHWA argues at page 3 of its

“Certificate of Interest” that its proposed brief “can assist this Court ‘by presenting

1
OSHWA’s Table of Authorities contains 17 references relating to OSHWA and/or
its initiatives. See references cited under the subheadings “News, Periodicals, and
Journal Articles” and “Other Authorities.”

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ideas, arguments, theories, insights, facts, or data that are not found in the parties’

briefs.’” OSHWA’s proposed brief, however, does nothing of the kind. The brief

brings no new arguments, insights, ideas, theories, facts, or data to the process.

Rather, when OSHWA’s proposed brief is not engaging in self-

aggrandizement, it simply repeats the same arguments advanced in Home

Expressions’ Responsive Brief. This is exactly the type of situation Judge Posner

warned of in denying the submission of amicus briefs in Voices for Choices:

While the amicus briefs sought to be filed in this case contain a few
additional citations not found in the parties’ briefs and slightly more
analysis on some points, essentially they cover the same ground the
appellants, in whose support they wish to file, do. (The state
legislators’ brief is a mere seven and a half pages long.) This is not a
case in which a party is inadequately represented, or the would-be
amici have a direct interest in another case that may be materially
affected by a decision in this one, or they are articulating a distinctive
perspective or presenting specific information, ideas, arguments, etc.
that go beyond what the parties whom the amici are supporting have
been able to provide. Essentially, the proposed amicus briefs merely
announce the “vote” of the amici on the decision of the appeal. But,
as I have been at pains to emphasize in contrasting the legislative and
judicial processes, they have no vote.

339 F.3d at 545.

Here, as in Voices for Choices, there is no justification for OSHWA to file

an amicus brief because the parties to this appeal are adequately represented by

sophisticated counsel; OSHWA does not have a direct interest in another case that

may be materially affected by a decision in this one; and OSHWA is not

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articulating a distinct perspective or presenting specific information, ideas, or

arguments, that go beyond what the parties have been able to provide this Court.

OSHWA has failed to demonstrate that it has some unique perspective or

expertise the Court needs to hear to decide this appeal. OSHWA’s mission is to

promote unrestricted use of computer software and hardware designs,

unencumbered by patent rights.2 The ‘946 Patent at issue does not involve

computer software or hardware. There exist many designers of many different

types of consumer products and components in many industries across the United

States. Neither the product design community at large, nor this Court, needs

special help from OSHWA to explain design patent law and decide this appeal.

As shown below, except for a few additional and irrelevant citations,

OSHWA covers the same ground as Home Expressions, and the proposed amicus

brief merely announces OSHWA’s “vote” on the decision of this appeal.

Accordingly, OSHWA’s motion for leave to file an amicus brief should be denied.

2
Despite the altruistic picture of un-restricted collaboration OSHWA attempts to
paint, open-source intellectual property owners do care about protecting their
exclusive rights. See Jacobsen v. Katzer, 535 F.3d 1373, 1381-82 (Fed. Cir. 2008),
cited at page 5 of OSHWA’s proposed brief, wherein this Court stated: “Copyright
holders who engage in open source licensing have the right to control the
modification and distribution of copyrighted material . . . Copyright licenses are
designed to support the right to exclude; money damages alone do not support or
enforce that right. The choice to exact consideration in the form of compliance
with the open source requirements of disclosure and explanation of changes, rather
than as a dollar-denominated fee, is entitled to no less legal recognition.

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 B. OSHWA’s Proposed Amicus Brief Is Merely A Re-Hash Of Home
Expressions’ Responsive Brief

OSHWA begins its discussion of the ‘946 Patent in the last two lines of page

12 of the proposed brief.3 Beginning there, and continuing through the first three

lines of page 14, OSHWA argues generally that the ‘946 Patent should be limited

to the claimed Y-shaped ornamental pattern embodied in a chair, because a chair is

the article of manufacture disclosed in the patent. This is the same incorrect

argument made throughout Home Expressions’ Responsive Brief, and OSHWA’s

proposed brief adds nothing to that argument. Curver’s Principal and Reply Briefs

deal with this argument head-on, and explain in detail why it is without merit (see

Principal Brief at 11-13; Reply Brief at 4-8).

Next, at pages 14-15 of the proposed amicus brief, OSHWA argues that the

District Court correctly relied upon the three non-binding cases relied upon by

Home Expressions below4, and further argues that the decisions in these cases are

consistent with the provisions of 35 U.S.C. § 171(a), 37 C.F.R. § 1.153(a), and

MPEP § 1502 (9th ed. Rev. 08.2017, Jan. 2018). Home Expressions made the very

3
The preceding 11 pages contain OSHWA’s lengthy discussion of itself, and a
discussion of general principles of product design. Neither of these topics is
relevant to this appeal, and they were not at issue in the District Court.
4
See P.S. Prods., Inc. v. Activision Blizzard, Inc., 140 F. Supp. 3d 795, 803 (E.D.
Ark. 2014); Kellman v. Coca-Cola Co., 280 F. Supp. 2d 671, 679-80 (E.D. Mich.
2003); Vigil v. Walt Disney Co., No. 97-4147, 1998 U.S. Dist. LEXIS 22853 at *9
(N.D. Cal. Dec. 1, 1998), aff’d, 2000 U.S. App. LEXIS 6231 (Fed. Cir. Apr. 5,
2000).

5
same arguments at pages 5 and 10 of its Responsive Brief based on the same cases,

Patent Statute provision, Code of Federal Regulations provision, and M.P.E.P.

section. Here again, Curver’s appeal briefing directly addresses each of these

authorities, and explains in detail why they do not support the District Court’s

decision (See Principal Brief at 17; Reply Brief at 8-9).5

Next, at page 16 of its proposed amicus brief, OSHWA argues that Curver’s

attempt to patent an abstract idea is inconsistent with Copyright Law. Home

Expressions made the same argument on page 6 of its Responsive Brief, and relied

on the same authorities as OSHWA in doing so. Curver’s Reply Brief explains in

detail why it is not attempting to patent an abstract idea, and how its position on

appeal is perfectly consistent with Copyright Law (see pages 16-17).

On the second half of page 16 through the top of page 18 of its proposed

amicus brief, OSHWA further argues that untethering the scope of a design patent

from an article of manufacture would disserve the public notice function of issued

patents. Here again, Home Expressions made the very same argument at pages 1

and 13 of its Responsive Brief. And, here again, Curver’s Reply Brief explains in

detail: (a) why its position on claim scope is perfectly consistent with the law of

5
The remainder of page 15 of OSHWA’s proposed brief argues that extending
design patent protection to abstract ideas (which Curver is not attempting to do)
would limit the diversity of innovative designs the open-source community can
draw upon. This argument only reinforces the fact that OSHWA’s concern here is
with itself, and that the proposed brief is politically motivated.

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anticipation and infringement in design patent cases; (b) that it is the drawings of a

design patent (not the patent’s title) that define the scope of the claimed invention;

and (c) that Curver’s asserted claim scope for the ‘946 Patent is not untethered

from the article of manufacture shown in the drawings (see pages 6-12 and 21). 6

OSHWA’s reliance upon Crocs, Inc. v. International Trade Commission,

598 F.3d 1294 (Fed. Cir. 2010) at page 17, footnote 27 of its proposed brief is

misplaced. There, the ITC erred because it construed a design patent claim based

on a written claim construction that was different than the design shown in the

drawings. In contrast, Curver has shown why the ‘946 Patent’s title and preamble

do not limit claim scope (Reply Brief at 4-5 and 12-15), and the Patent drawings

do not show a chair.

The arguments made by OSHWA at page 18, footnote 28 of its proposed

brief concerning the “ordinary observer” test were also made by Home Expressions

at page 8 of its Responsive Brief. The supporting cases cited by OSHWA in

footnote 28 do not apply. Curver explained in both its appellate briefs that: (a)

under Supreme Court law, that which anticipates if earlier infringes if later; (b)

under this Court’s precedent, the same ordinary observer test is used to determine

infringement of a design patent and whether the claimed invention is anticipated by

6
The remainder of page 18 of the proposed amicus brief carps once again about the
open-source community – complaints which were not before the District Court,
and have no relevance here.

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the prior art; (c) under the precedential decision In re Glavas, 230 F.2d 447

(C.C.P.A. 1956), both analogous and non-analogous prior art are considered in

determining anticipation of a design patent claim; and (d) if the scope of the ‘946

Patent were limited to the claimed design embodied in a chair, the In re Glavas test

for determining anticipation (which Patent Office Examiners follow to this day)

would be eviscerated, and there would be an irreconcilable inconsistency in the law

regarding the tests for anticipation and infringement of a design patent (see

Principal Brief at 15-17; Reply Brief at 2-3, 9-12, 22). None of Curver’s

arguments in this regard are addressed in OSHWA’s proposed amicus brief, and

none of the cases cited in footnote 28 are relevant to these arguments.7

In fact, the footnote 28 cases support Curver. OSHWA cites Richardson v.

Stanley Works, Inc., 597 F.3d 1288, 1295 (Fed. Cir. 2010) and Payless Shoesource,

Inc. v. Reebok International Ltd., 998 F.2d 985, 990 (Fed. Cir. 1993) for the

proposition that, under the ordinary observer test, the ornamental design claimed in

the patent drawings must be compared to the accused product for the purposes of

determining infringement. This is perfectly consistent with Curver’s position. 8

7
Pages 19-21 of OSHWA’s proposed brief simply repeat and summarize the
arguments previously made in the brief, and they are all arguments made in Home
Expressions’ Responsive Brief.

8
Footnote 28 also cites L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117
(Fed. Cir. 1993). That case is particularly irrelevant, because infringement was not
even an issue. See id. at 1125 (“Substantial similarity is not disputed; indeed,

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 The ‘946 Patent drawings illustrate a panel structure that includes an

ornamental Y-shaped pattern. Under the Supreme Court’s analysis in Samsung

Electronics Co., LTD v. Apple Inc., 137 S.Ct. 429, 435 (2016), that panel structure

is itself an “article of manufacture;” and the Y-shaped pattern is patentable

regardless of whether a complete product is shown. As conceded by the District

Court, a panel structure with a substantially similar Y-pattern is embodied in Home

Expressions’ accused basket (Appx018). Pertinent here, this Court’s predecessor

has held that a design patent may be infringed by articles “specifically different”

from the article shown in the drawings, and that the “inventive concept” of a

design patent is not limited to “the exact article which happens to be selected for

illustration.” In re Rubinfield, 270 F.2d 391, 393 (C.C.P.A. 1959).

Thus, it matters not whether the ‘946 Patent’s title or preamble recite a chair,

because the drawings do not illustrate a chair. Rather, they show an ornamental Y

pattern embodied in a panel structure which qualifies as an article of manufacture

under Samsung. As evidenced by Home Expressions’ basket, that article can be

incorporated with other structures to make a finished product. Since the scope of a

copying is admitted. However, Melville complains that the district court's

treatment of the issue of patent infringement was ‘cursory’, in that the court
referred, in the part of its opinion relating to patent infringement, to its findings on
likelihood of confusion relative to the trade dress issue.”).

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design patent is not limited by its title, the incorporation of the patented design into

Home Expressions’ product constitutes an infringement of the ‘946 Patent.

III. CONCLUSION

For all the above reasons, we respectfully submit that OSHWA’s motion for

leave to file an amicus brief should be denied in all respects.

Dated: December 6, 2018 Respectfully submitted,

By: /s/ Jason H. Kislin

Jason H. Kislin
Barry Schindler
Michael A. Nicodema
GREENBERG TRAURIG, LLP
500 Campus Drive, Suite 400
Florham Park, NJ 07932
Tel. 973-360-7900
Fax 973-301-8410

Attorneys for Plaintiff-Appellant

Curver Luxembourg, Sarl

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 CERTIFICATE OF COMPLIANCE

This brief complies with the type-volume limitations of Federal Rule of

Appellate Procedure 32(a)(7)(B) or Federal Rule of Appellate Procedure 28.1(e).

This brief contains 2447 words, excluding the parts of the brief exempted by

Federal Rule of Appellate Procedure 32(f) and Fed. Cir. R. 32(b). This brief

complies with the typeface requirements of Federal Rule of Appellate Procedure

32(a)(5) and the type style requirements of Federal Rule of Appellate Procedure

32(a)(6). This brief has been prepared in a proportionally spaced typeface using

Microsoft Word 2010 in fourteen (14) point Times New Roman font.

Dated: December 6, 2018

/s/ Jason H. Kislin

Attorney for Appellant
Curver Luxembourg, Sarl

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 CERTIFICATE OF SERVICE

On December 6, 2018, I caused the foregoing brief of Plaintiff-Appellant in

Opposition To Oshwa’s Motion For Leave To File An Amicus Brief to be

electronically filed with the Clerk of the Federal Circuit using the CM/ECF

System, which will serve e-mail notice of such filing on the following attorneys:

Mr. Steven M. Auvil, Esq. Mr. Jeremy W. Dutra, Esq.

Squire Patton Boggs (US) LLP Squire Patton Boggs (US) LLP
127 Public Square, 4900 Key Tower 2550 M Street, NW
Cleveland, OH 44114 Washington, DC 20037

I also caused service to be effected via e-mail on the following attorneys:

Erik Stallman
Jennifer M. Urban
Samuelson Law, Technology and
Public Policy Clinic
University of California, Berkeley
School of Law
353 Boalt Hall
Berkeley, California 94720
estallman@clinical.law.berkeley.edu
jurban@law.berkeley.edu

Upon acceptance by the Court of the e-filed document, I will cause six paper

copies of the brief to be filed with the Court, via overnight delivery, within the

time provided in the Court’s rules.

/s/ Jason H. Kislin

Jason H. Kislin

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