United States District Court, N.D. Texas, Dallas Division
MEMORANDUM OPINION AND ORDER
C. GODBEY, UNITED STATES DISTRICT JUDGE
Order addresses Defendant Skyline USA, Inc.'s
(“Skyline”) motion for partial summary judgment
of noninfringement  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”) . For the reasons
below, the Court voids the Order  that mooted
Super-Sparkly's motion for extension but denies
Super-Sparkly's motion. The Court grants Skyline's
motion for partial summary judgment.
The Patent Infringement Dispute
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 . 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 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
“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).
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 521, 525 (5th Cir. 1999) (quoting
McCallum Highlands, Ltd. v. Washington Capital Dus,
Inc., 66 F.3d 89, 92 (5th Cir. 1995)).
Design Patent Infringement
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)).
The Court Denies Super-Sparkly's Motion for
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.
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. .
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 . 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 .
The Court Grants Skyline's Motion for Partial Summary