OAKE

LAW OFFICE, PLLC

700 South Central Expressway, Suite 400

Allen, Texas 75013

PATENT AND INTELLECTUAL PROPERTY LITIGATION

ROBERT G. OAKE, JR.

REGISTERED PATENT ATTORNEY Telephone 972.996.4777
BOARD CERTIFIED - CIVIL TRIAL ADVOCATE, Cell 214.207.9066
NATIONAL BOARD OF TRIAL ADVOCACY Email rgo@oake.com
LL.M - PATENT AND INTELLECTUAL PROPERTY LAW Web Site www.oake.com

December 28, 2019
Lyle W. Cayce
Clerk of Court
United States Court of Appeals
for the Fifth Circuit
600 S. Maestri Place, Suite 115
New Orleans, Louisiana 70130

Re: No. 19-11294; Super-Sparkly Safety Stuff LLC v. Skyline USA, Inc.

Dear Mr. Cayce,

This firm represents Skyline USA, Inc. in the above referenced matter. This letter is
being filed pursuant to a suggestion from the Court Clerk, Fifth Circuit Court of Appeals.

The purpose of this letter is to inform the Court that this appeal is from an order granting
partial summary judgment of non-infringement in a design patent case. The order being
appealed from is attached as Exhibit 1. Counterclaims remain pending in the District Court.

28 U.S. Code § 1295(a)(1) states in relevant part “[t]he United States Court of Appeals
for the Federal Circuit shall have exclusive jurisdiction (1) of an appeal from a final decision of
a district court of the United States … in any civil action arising under, or in any civil action in
which a party has asserted a compulsory counterclaim arising under, any Act
of Congress relating to patents or plant variety protection….

Since the order appealed from involves a design patent, pursuant to 28 U.S. Code
§ 1295(a)(1), the Federal Circuit has exclusive jurisdiction of any appeal. Further, since the
order is not final, in the event this appeal is transferred, it is my belief based on experience that
the Federal Circuit will deactivate the appeal until a final judgment is rendered in District Court.

Sincerely,

Robert G. Oake, Jr.

EXHIBIT 1
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IN THE UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION

SUPER-SPARKLY SAFETY STUFF, §

LLC, §
§
Plaintiff, §
§
v. § Civil Action No. 3:18-CV-0587-N
§
SKYLINE USA, INC., dba GUARD DOG §
SECURITY, §
§
Defendant and Counterclaimant. §

MEMORANDUM OPINION AND ORDER

This Order addresses Defendant Skyline USA, Inc.’s (“Skyline”) motion for partial

summary judgment of noninfringement [33] and Super-Sparkly Safety Stuff, LLC’s

(“Super-Sparkly”) motion for extension of time to respond to the motion for partial

summary judgment (“motion for extension”) [36]. For the reasons below, the Court voids

the Order [47] that mooted Super-Sparkly’s motion for extension but denies Super-

Sparkly’s motion. The Court grants Skyline’s motion for partial summary judgment.

I. THE PATENT INFRINGEMENT DISPUTE

This is a design patent infringement action between two companies specializing in

self-defense products. Super-Sparkly, a manufacturer and distributer of personal

protection devices, filed suit against Skyline, an importer and seller that distributes security

products to individuals and third-party sellers. Complaint 2–3, 6 [2]. Super-Sparkly’s

complaint states two claims against Skyline. Super-Sparkly alleges Skyline’s “Bling it

On” pepper spray, a pepper spray cannister featuring rhinestones, both infringed and

ORDER – PAGE 1
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induced infringement of Super-Sparkly’s design patent for “Bling Sting” pepper spray, a

rhinestone-covered pepper spray cannister. Id. at 3–4, 8–9. While Super-Sparkly states

that it has two patents for a rhinestone-covered pepper spray cannister, the USD731,172S

(‘172S) and USD696,857S (‘857S) patents, it alleges infringement of only the ‘172S

patent. Id. at 3–4. Skyline now seeks summary judgment on Super-Sparkly’s claim of

infringement of the ‘172S patent.

II. LEGAL STANDARDS

A. Summary Judgment

Courts “shall grant summary judgment if the movant shows that there is no genuine

dispute as to any material fact and the movant is entitled to judgment as a matter of law.”

Fed. R. Civ. P. 56(a); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986). In making

this determination, courts must view all evidence and draw all reasonable inferences in the

light most favorable to the party opposing the motion. United States v. Diebold, Inc., 369

U.S. 654, 655 (1962).

The moving party bears the initial burden of informing the court of the basis for its

belief that there is no genuine issue for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 323

(1986). Once the movant has made the required showing, the burden shifts to the

nonmovant to establish that there is a genuine issue of material fact such that a reasonable

jury might return a verdict in its favor. Matsushita Elec. Indus. Co. v. Zenith Radio

Corp., 475 U.S. 574, 586–87 (1986). Factual controversies are resolved in favor of the

nonmoving party “‘only when an actual controversy exists, that is, when both parties have

submitted evidence of contradictory facts.’” Olabisiomotosho v. City of Houston, 185 F.3d

ORDER – PAGE 2
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521, 525 (5th Cir. 1999) (quoting McCallum Highlands, Ltd. v. Washington Capital Dus,

Inc., 66 F.3d 89, 92 (5th Cir. 1995)).

B. Design Patent Infringement

A design patent is infringed if an ordinary observer, when comparing the two

designs in context of the prior art, would think that the accused design is substantially the

same as the patented design. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678

(Fed. Cir. 2008) (en banc). The test considers “both the perspective of the ordinary

observer and the particular novelty in the claimed design.” Id. at 671. When the claimed

and accused designs are “sufficiently distinct” and “plainly dissimilar,” there is no design

patent infringement. Id. at 678. If the patented and accused products are not plainly

dissimilar, the ordinary observer test turns to “a comparison of the claimed and accused

designs with the prior art” to determine whether there is infringement. Id. But “minor

differences between a patented design and an accused article’s design cannot, and shall not,

prevent a finding of infringement.” Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d 1294, 1303

(Fed. Cir. 2010) (internal quotation marks omitted)).

III. THE COURT DENIES SUPER-SPARKLY’S MOTION FOR EXTENSION

A party seeking an extension to obtain discovery must show the court “why [it]

needs additional discovery and how the additional discovery will create a genuine issue of

material fact.” Stults v. Conoco, Inc., 76 F.3d 651, 658 (5th Cir. 1996) (internal quotation

marks omitted). Super-Sparkly has not satisfied its burden to explain how further

discovery would raise material facts relevant to the issue of noninfringement.

ORDER – PAGE 3
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Skyline’s motion for partial summary judgment of noninfringement is based on the

physical appearances of the claimed and accused product designs. Evidence relevant to

these arguments, including images and descriptions of the designs in question, has been

submitted. See Def.’s Appx. [35]. Super-Sparkly has not specified how additional

discovery would raise material new facts and merely states that it needs to take depositions.

Pltf.’s Brief Support Resp. 2–3 [39]. This is insufficient to warrant an extension.

Washington v. Allstate Ins. Co., 901 F.2d 1281, 1285 (5th Cir. 1990) (“The nonmovant

may not simply rely on vague assertions that discovery will produce needed, but

unspecified, facts.”). The Court thus denies Super-Sparkly’s motion for extension of time

to respond to Skyline’s partial summary judgment motion and voids its prior Order [47].

IV. THE COURT GRANTS SKYLINE’S MOTION FOR PARTIAL

SUMMARY JUDGMENT OF NONINFRINGEMENT

Skyline seeks summary judgment of noninfringement of the ‘172S patent, arguing

that the differences between the patented and accused product designs make them plainly

dissimilar. Def.’s Brief Support Mot. Partial Summary Judgment 11 [34]. Super-Sparkly

contends it does not have enough discovery to adequately respond to Skyline’s motion but

never addresses the merits of Skyline’s arguments or the evidence regarding the claimed

and accused products’ appearances. Pltf.’s Brief Support Resp. 2 [39]. For reasons stated

above, Super-Sparkly has not shown that additional discovery would raise material facts.

The Court thus finds that there is no genuine issue of material fact on infringement.

Further, based on the evidence that has been submitted, the Court finds that the

physical difference between the patented and accused products would be obvious. Here,

ORDER – PAGE 4
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the ‘172S patent embodiments each show a rhinestone-covered cannister with rhinestone

covered bottom. Def.’s Appx. 4 [35]. In contrast, the accused product has no rhinestones

on the cannister bottom. Id. at 43, 49. This difference is significant, particularly given the

relatively simple and limited elements of the product designs, and would be obvious to an

ordinary observer. The Court thus finds that Skyline’s Bling Sting product does not

infringe Super-Sparkly’s ‘172S patent and that Skyline is entitled to summary judgment of

noninfringement.

CONCLUSION

The Court moots its previous Order [47] but denies Super-Sparkly’s motion for

extension of time to respond to Skyline’s motion for partial summary judgment. Because

there is no genuine question of material fact on the issue of infringement and because the

design differences between the patented and accused products is obvious, the Court grants

Skyline’s motion for partial summary judgment of noninfringement of Super-Sparkly’s

‘172S patent.

Signed November 4, 2019.

___________________________
David C. Godbey
United States District Judge

ORDER – PAGE 5