Nike, Inc. et al v. QiLoo International Limited

Filing 4

Emergency MOTION for Temporary Restraining Order by Plaintiffs Converse, Inc., Nike, Inc.. Motion ripe 2/6/2012. (Attachments: # 1 Declaration Kelly Hibler, # 2 Declaration Wayne Patrick Seehafer, # 3 Declaration Thomas Scavuzzo, # 4 Declaration Erik S. Maurer, # 5 Exhibit A, # 6 Exhibit B, # 7 Exhibit C, # 8 Exhibit D, # 9 Exhibit E, # 10 Exhibit F, # 11 Exhibit G, # 12 Exhibit H, # 13 Exhibit I, # 14 Exhibit J, # 15 Exhibit K, # 16 Exhibit L, # 17 Exhibit M, # 18 Exhibit N, # 19 Exhibit O, # 20 Exhibit P, # 21 Exhibit Q, # 22 Exhibit R, # 23 Exhibit S, # 24 Exhibit T, # 25 Exhibit U, # 26 Exhibit V, # 27 Exhibit W, # 28 Exhibit X, # 29 Exhibit Y, # 30 Exhibit Z, # 31 Exhibit AA, # 32 Exhibit BB, # 33 Exhibit CC, # 34 Exhibit DD, # 35 Exhibit EE, # 36 Exhibit FF, # 37 Exhibit GG, # 38 Exhibit HH, # 39 Exhibit II, # 40 Exhibit JJ, # 41 Exhibit KK, # 42 Exhibit LL, # 43 Exhibit MM, # 44 Exhibit NN, # 45 Exhibit OO, # 46 Exhibit PP, # 47 Exhibit QQ, # 48 Memorandum Of Law, # 49 Proposed Order)(Fountain, Jonathan)

EXHIBIT QQ
TO DECLARATION AND LOCAL RULE 7-5 CERTIFICATION OF ERIK
S. MAURER IN SUPPORT OF PLAINTIFFS’ EMERGENCY MOTION
FOR TEMPORARY RESTRAINING ORDER, SEIZURE ORDER, AND
PRELIMINARY INJUNCTION

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Slip Copy, 2006 WL 3883278 (D.Nev.)
(Cite as: Slip Copy)

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Briefs and Other Related Documents
Nike, Inc. v. Meitac Int'l Enterprise Co.
LtdD.Nev.,2006.Only the Westlaw citation is
currently available.
United States District Court,D. Nevada.
NIKE, INC., Plaintiff,
v.
MEITAC INT'L ENTERPRISE CO. LTD., in Shoe,
Inc., and Man Lee Mo, Defendants.
No. 2:06-CV-00934-PMP-PA.
Oct. 11, 2006.
Christopher J. Renk, Erik S. Maurer, Michael Harris,
of Banner & Witcoff Ltd, Chicago, IL, for Nike, Inc.
ORDER RE PRELIMINARY INJUNCTION
PRO, Chief J.
*1 This action was commenced August 1, 2006, by
the filing of Plaintiff Nike, Inc.'s (“Nike”) Complaint
seeking declaratory and injunctive relief and damages
for Defendants Meitac Int'l Enterprise Co., Ltd. and
Man Lee Mo's (collectively “Meitac”) alleged
infringement of Plaintiff Nike's design patents for
athletic and fashion footwear.
Coterminous with their Complaint, Nike filed an
Emergency Motion for Temporary Restraining Order
Without Notice and a Preliminary Injunction (# 8).
On August 1, 2006, the Honorable Roger L. Hunt,
United States District Judge, entered an Order
granting Nike's Motion for Temporary Restraining
Order (# 11 and # 13) which authorized seizure of
specified athletic shoes then on display by Meitac at
the World Shoe Association Trade Show which was
being held in Las Vegas from August 1-4, 2006.
On August 7, 2006, Nike filed a Statement of
Inventory of Seized Materials (# 16). On September
13, 2006, Nike filed a First Amended Complaint
refining its allegations of design patent infringement
by Meitac. Included in Nike's Amended Complaint is
a table comparing Nike's design patents with Meitac's
allegedly infringing shoes which were seized at the
WSA Trade Show pursuant to the Temporary
Restraining and Seizure Order issued by Judge Hunt
on August 1, 2006.
Hearing

on

Nike's

fully-briefed

Motion

for

Preliminary Injunction was stayed pursuant to
stipulation of the parties until October 5, 2006. At
that hearing (# 48), the Court received into evidence
a series of exhibits consisting of examples of shoes
seized from Meitac at the World Shoe Association
Trade Show pursuant to the Temporary Restraining
and Seizure Order entered by Judge Hunt, together
with copies of the design patents which each shoe
allegedly infringes. (See Exhibits 1 and 1A through
15 and 15A.)
The issues presented by Nike's Motion for
Preliminary Injunction are straight forward. “A
design patent protects the nonfunctional aspects of an
ornamental design as shown in the patent.” Elmer
and HTH, Inc. v. ICC Fabricating, Inc., 67 F.3d
1571, 1577 (Fed.Cir.1995). “Injunctive relief in
patent cases is authorized by 35 U.S.C. § 283.
Whether a preliminary injunction should issue turns
upon four factors: (1) the movant's reasonable
likelihood of success of the merits; (2) the irreparable
harm the movant will suffer if preliminary relief is
not granted; (3) the balance of hardships tipping in its
favor; and (4) the adverse impact on the public
interest. (Citations omitted.)” Reebok Int'l Ltd., v. J.
Baker, Inc., 32 F.3d 1552, 1555 (Fed.Cir.1994).
In determining whether a design patent is infringed,
the Court is called upon to construe the patent claim
and compare the construed claim to the accused
product. Contessa Food Products, Inc. v. Conagra,
Inc., 282 F.3d 1370 at 1376 (Fed.Cir.2002).
In construing a design patent claim the scope of the
claimed design encompasses “its visual appearance
as a whole,” and in particular “the visual impression
it creates.” See Durling v. Spectrum Furniture Co.,
101 F.3d 100, 104-05, 40 USPQ2d 1788, 1791
(Fed.Cir.1996). In assessing infringement, the
patented and accused designs do not have to be
identical in order for design patent infringement to be
found. Braun Inc. v. Dynamics Corp. of Am., 975
F.2d 815, 820, 24 USPQ2d 1121, 1125
(Fed.Cir.1992). What is controlling is the appearance
of the design as a whole in comparison to the accused
product. OddzOn Prods., Inc. v. Just Toys, Inc. 122
F.2d 1396, 1405, 43 USPQ2d 1641, 1647
(Fed.Cir.1997).
*2 Comparison to the accused product includes two
distinct tests, both of which must be satisfied in order
to find infringement: (a) the “ordinary observer” test,
and (b) the “point of novelty” test. See Unidynamics

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Corp. v. Automatic Prods. Int'l, Ltd., 157 F.3d 1311,
1323, 48 USPQ2d 1099, 1107 (Fed.Cir.1998). The
“ordinary observer” test requires that the district
court perform the inquiry set forth in Gorham Co. v.
White: if, in the eye of an ordinary observe, giving
such attention as a purchaser usually gives, two
designs are substantially the same, if the resemblance
is such as to deceive such an observer, inducing him
to purchase one supposing it to be the other, the first
one patented is infringed by the other.
The “point of novelty” test is distinct from the
“ordinary observer” test and requires proof that the
accused design appropriates the novelty which
distinguishes the patented design from the prior art.
Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423,
1444, 221 USPQ 97, 109 (Fed.Cir.1984). Although
application of the “ordinary observer” and “point of
novelty” tests may sometimes lead to the same result,
see Shelcore, Inc. v. Durham Indus., Inc., 745 F.2d
621, 628 N. 16, 223 USPQ 584, 590 n. 17
(Fed.Cir.1984), it is legal error to merge the two tests,
for example by relying on the claimed overall design
as the point of novelty. See Sun Hill Indus., Inc. v.
Easter Unlimited, Inc., 48 F.3d 1193, 1197, 33
USPQ2d 1925, 1928 (Fed.Cir.1995); Winner Int'l
Corp. v. Wolo Mfg. Corp., 905 F.2d 375, 376 15
USPQ2d 1076, 1077 (Fed.Cir.1990)(“To consider the
overall appearance of a design without regard to prior
art would eviscerate the purpose of the ‘point of
novelty’ approach, which is to focus on those aspects
of a design which render the design different from
prior art designs.”).
Id. at 1376-1377.
The question for the Court at this stage of the
proceedings is whether Nike enjoys a reasonable
likelihood of success on its claim that the design
patents alleged in its Amended Complaint and
Motion for Preliminary Injunction are infringed by
Meitac's shoes which were seized and offered into
evidence at the hearing conducted October 5, 2006.
The Court finds that the claims articulated in each of
the design patents at issue are unambiguous and are
clearly illustrated by the figures contained therein.
The Court also finds that in applying the “ordinary
observer” test, a reasonable finder of fact would by a
preponderance of the evidence conclude that the
competing designs are substantially similar and that
the accused products infringe Nike's patent design
claims.
The Court recognizes that to establish fully the
“points of novelty” test for design patent
infringement at trial, Nike will be required to

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introduce into evidence, “... at a minimum, the design
patent at issue, its prosecution history, and the
relevant prior art references cited in the prosecution
history; and must present, in some form, its
contentions as to points of novelty....” Bernhardt v.
Collezione Europa USA, Inc., 386 F.3d 1371, 1384.
The Court finds that at this of the proceedings on a
Motion for Preliminary Injunction, Nike is not
required to present the same quantum of evidence as
will be necessary at trial, but is required only to show
a reasonable likelihood of success on the merits of its
design patent infringement claim. For now, the Court
finds only that Nike has demonstrated by a
preponderance of the evidence a reasonable
likelihood of success on the merits of its design
patent infringement claim by sufficiently satisfying
both the “points of novelty” test and the “ordinary
observer” test. To do more, in the view of this Court,
would collapse the requirements of a plaintiff's
burden at trial with those at the preliminary
injunction stage.
*3 Where, as here, Meitac's accused products
duplicate a presumptively valid patent design in
virtually every respect, it also misappropriates the
novel aspects of the design and necessarily
incorporates the design patent's points of novelty.
Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423,
1444 (Fed.Cir.1984). See also L.A. Gear, Inc. v.
Thom McAn Shoe Co., 988 F.2d 1117, 1125-26
(Fed.Cir.1993). Here, Meitac's shoes duplicate Nike's
patented designs in almost every significant feature.
Nike has met its burden of showing a reasonable
likelihood of success on the merits to sustain its
prayer for preliminary injunctive relief.
The Court further finds that by virtue of Nike's
showing of a reasonable likelihood of success on the
merits, it is entitled to a presumption of irreparable
harm. Hybritech, Inc. v. Abbott Labs., 849 F.2d 1446,
1456-57 (Fed.Cir.1988). Nike's showing of
irreparable harm is strengthened by the fact that if
preliminary injunctive relief is not made available,
Nike will be severely handicapped in its ability to
prevent further importation of infringing products,
thereby destroying any potential of preserving the
status quo pending a resolution of this case on its
merits.
Finally, while the Court recognizes that granting a
preliminary injunction will always pose some
hardship on the party enjoined, the hardship which
would befall Nike as described above clearly
outweighs any hardship which will be suffered by
Meitac as a result of its inability to market the

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allegedly infringing shoes within the jurisdiction of
this Court. Moreover, the public interest is clearly
served by seeing that patents are enforced and the
status quo with the respect to the enforcement of such
patents is preserved pending trial where, as here, a
plaintiff has shown a likelihood of success of the
merits.
IT IS THEREFORE ORDERED that Plaintiff Nike,
Inc.'s Motion for Preliminary Injunction (# 8) is
granted and that Defendant Meitac International
Enterprises Co, Ltd., In Shoe, Inc., and Man Lee Mo
are hereby preliminarily enjoined from infringing
Nike U.S. Patent Nos. D498,914; D499,248;
D511,884;
D512,214;
D522,231;
D522,739;
D522,740;
D523,229;
D523,230;
D523,233;
D523,618; D523,620; and D524,529, including at
least by making, selling, offering to sell and/or
importing Meitac footwear model numbers: Na0576,
Na2154, Na0994, Na2370, Na2167, 1-427, Na0978,
M-7010, Na1805, Na1407, Na11563, Na1228,
Na2166, Na0819, Na0891, and Na0841, as well as
other footwear models bearing the patented designs
and colorable imitations thereof.
IT IS FURTHER ORDERED that the $50,000 bond
previously posted by Plaintiff Nike is sufficient to
secure the instant preliminary injunction.
IT IS FURTHER ORDERED that the Clerk of Court
shall preserve all exhibits introduced at the hearing
regarding Plaintiff's Motion for Preliminary
Injunction conducted October 5, 2006, including the
two boxes of athletic shoes and accompanying design
patents (Exhibits 1 and 1A through 15 and 15A).
*4 IT IS FURTHER ORDERED that counsel for the
parties to this action shall forthwith meet and confer,
and not later than November 13, 2006, shall file with
the Court a proposed Joint Discovery Plan and
Scheduling Order in accord with Local Rule 26-1.
D.Nev.,2006.
Nike, Inc. v. Meitac Int'l Enterprise Co. Ltd
Slip Copy, 2006 WL 3883278 (D.Nev.)
Briefs and Other Related Documents (Back to top)
• 2006 WL 2376971 (Trial Pleading) Complaint
(Aug. 1, 2006) Original Image of this Document
(PDF)
• 2:06cv00934 (Docket) (Aug. 1, 2006)
END OF DOCUMENT

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