Degelman - Motion for JMOL

7139963.1

UNITED STATES DISTRICT COURT FOR THEWESTERN DISTRICT OF NEW YORK

DEGELMAN INDUSTRIES LTD.,

Plaintiff,

vs.

PRO-TECH WELDING ANDFABRICATION, INC. andMICHAEL P. WEAGLEY,

Defendants.

Civil Action No.06-CV-6346

DEGELMAN INDUSTRIES LTD’S NOTICE OF MOTION FORJUDGMENT AS A MATTER OF LAW AND FOR A NEW TRIAL

PURSUANT TO FED. R. CIV. P. RULES 50 AND 59

PLEASE TAKE NOTICE that Plaintiff Degelman Industries, Ltd. (“Degelman”) by and

through its attorneys, based upon (1) this Notice of Motion; (2) the Memorandum of Law in

Support of Degelman’s Motion for a New Trial; and (3) the Declaration of Michael A. Oropallo,

with exhibits, will move this Court, at a motion term to be held at the United States Courthouse,

100 State Street, Rochester, New York, on a date and time to be set by the Court, for an Order

granting judgment as a matter of law or for a new trial on the following: (1) for Design Patent

Infringement, including willful infringement; (2) for willful Utility Patent Infringement; (3) that

the patents are valid and enforceable; and (4) for such other and further relief as the Court deems

just and proper.

PLEASE TAKE FURTHER NOTICE that, unless otherwise ordered by the Court,

Defendants Pro-Tech Welding and Fabrication, Inc. and Michael P. Weagley are required,

pursuant to Local Rule 7(b)(2)(B), to file and serve opposing papers within fourteen (14) days

Case 6:06-cv-06346-JWF Document 234 Filed 04/15/13 of 3

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after service of this motion, and that Plaintiff Degelman Industries, Ltd. is required to file and

serve reply papers within seven (7) days after service of responding papers.

PLEASE TAKE FURTHER NOTICE that oral argument is requested on this motion.

Respectfully submitted,

HISCOCK & BARCLAY, LLP

Dated: April 15, 2013 By:

Christopher E. BlankAttorneys for PlaintiffDegelman Industries Ltd.2000 HSBC Plaza,100 Chestnut StreetRochester, New York 14604Telephone (585) 325-7570Facsimile (585) 325-5458E-Mail: [email protected]

Michael A. OropalloJohn M. Nichols

One Park Place300 South State StreetSyracuse, New York 13202-2078Telephone (315) 425-2831Facsimile (315) 703-7367E-Mail: [email protected]: [email protected]


7139963.1 - 3 -

CERTIFICATE OF SERVICE

I hereby certify that on April 15, 2013, I caused: a Notice of Motion, and accompanying

papers, to be filed with the Clerk of the Court via the CM/ECF System which sent notification of

such filing to counsel of record, and to be served via first class mail upon:

Duane C. Basch, Esq.Basch & Nickerson, LLP1777 Penfield Road, Lower LevelPenfield, New York 14526

Michael A. Oropallo


7139962.1



Plaintiff,

vs.


Defendants.


DECLARATION OF MICHAEL A. OROPALLO IN SUPPORT OFDEGELMAN INDUSTRIES LTD’S MOTION FOR

JUDGMENT AS A MATTER OF LAW AND FOR A NEW TRIALPURSUANT TO FED. R. CIV. P. RULES 50 AND 59

MICHAEL A. OROPALLO hereby declares as follows:

1. I am an attorney at law duly licensed to practice before the courts in the State of

New York and before this Court, and am a partner at the law firm of Hiscock & Barclay, LLP,

attorneys for the Plaintiff Degelman Industries Ltd. (“Plaintiff” or “Degelman”). I am fully

familiar with the facts and circumstances of this action.

2. I respectfully submit this Declaration in support of Degelman’s Motion for a New

Trial, pursuant to Rule 59 of the Federal Rules of Civil Procedure, seeking an Order granting

judgment as a matter of law or for a new trial on the following: (1) for Design Patent

Infringement, including willful infringement; (2) for willful Utility Patent Infringement; (3) that

the patents are valid and enforceable; and (4) for such other and further relief as the Court deems

just and proper.

3. The Court presided over a Jury Trial in this action from February 25, 2013,

Case 6:06-cv-06346-JWF Document 234-1 Filed 04/15/13 Page 1 of 7

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through March 8, 2013.

4. The Jury rendered a verdict on March 8, 2013. (See Verdict Form, entered

Mar. 8, 2013, (“Jury Verdict” or “Verdict”), [Dkt. No. 220].)

5. The Court entered Judgment on March 18, 2013, (see Judgment, entered Mar. 18,

2013, (“Judgment”), [Dkt. No. 222]), and an Amended Judgment on March 26, 2013. (See

Amended Judgment, entered Mar. 26, 2013, (“Amended Judgment”), [Dkt. No. 223].)

6. The following Official Transcripts of Proceedings have been filed on the Court’s

Docket, and are hereby incorporated by reference:

a. Official Transcript of Proceedings, held Feb. 25, 2013, Opening Statement byMr. O’Brien, (“Trial Tr., O’Brien Opening”) [Dkt. No. 203];

b. Official Transcript of Proceedings, held Feb. 27, 2013, Plaintiff’s WitnessesTestimonies of Gregory Vennard Cross Examination and Redirect and Recross,Justin Tremblay, and Michael Weagley Direct Examination (“Trial Tr., Pl.’sVennard Cross Redirect Recross” or “Trial Tr., Pl.’s Tremblay” or “Trial Tr., Pl.’sWeagley Direct”) [Dkt. No. 205];

c. Official Transcript of Proceedings, held Feb. 27, 2013, Plaintiff’s WitnessMichael Weagley Cross Examination (“Trial Tr., Pl.’s Weagley Cross”) [Dkt.No. 206];

d. Official Transcript of Proceedings, held Feb. 28, 2013, Plaintiff’s WitnessesMichael Weagley Cross Examination and Redirect and Recross and Re-redirect(“Trial Tr., Pl.’s Weagley Cross Redirect Recross Re-redirect”) [Dkt. No. 208];

e. Official Transcript of Proceedings, held Mar. 1, 2013, Defendants’ WitnessMichael Weagley (“Trial Tr., Defs.’ Weagley”) [Dkt. No. 211];

f. Official Transcript of Proceedings, held Mar. 1, 2013, Defendants’ Witness CraigGeller (“Trial Tr., Defs.’ Geller”) [Dkt. No. 215];

g. Official Transcript of Proceedings, held Mar. 4, 2013, Defendants’ Witness JerreHeyer (“Trial Tr., Defs.’ Heyer”) [Dkt. No. 216];

h. Official Transcript of Proceedings, held Feb. 28, 2013, Plaintiff’s Witness JohnSinger (“Trial Tr., Pl.’s Singer”) [Dkt. No. 217];

i. Official Transcript of Proceedings, held Feb. 25, 2013, Court’s PreliminaryInstructions, Opening Statement of Mr. Oropallo, Plaintiff’s Witness RolandDegelman, Plaintiff’s Witness Scott Degelman Direct (“Trial Tr., Court’s


7139962.1 - 3 -

Preliminary Instructions” or “Trial Tr., Oropallo Opening” or “Trial Tr., Pl.R. Degelman” or “Trial Tr., Pl. S, Degelman Direct”) [Dkt. No. 224];

j. Official Transcript of Proceedings, held Feb. 26, 2013, Plaintiff’s Witness ScottDegelman continued (“Trial Tr., Pl. S. Degelman (cont.)”) [Dkt. No. 225];

k. Official Transcript of Proceedings, held Feb. 27, 2013, Plaintiff’s WitnessGregory Vennard Direct Examination (“Trial Tr., Pl. Vennard Direct”) [Dkt.No. 226];

l. Official Transcript of Proceedings, held Feb. 28, 2013, Plaintiff’s WitnessesDeposition of Miles Evans, Deposition Testimony of Craig Geller (“Trial Tr., Pl.Evans Depo.” or “Trial Tr., Pl. Geller Depo.”) [Dkt. No. 227];

m. Official Transcript of Proceedings, held Mar. 1, 2013, Defendants’ WitnessesCraig Geller, Deposition Testimony of Justin Tremblay, Deposition Testimony ofScott Degelman (“Trial Tr., Defs. Geller” or “Trial Tr., Defs. Tremblay Depo.” or“Trial Tr., Defs. S. Degelman Depo.”) [Dkt. No. 228];

n. Official Transcript of Proceedings, held Mar. 4, 2013, Defendants’ WitnessesNicholas Godici, Alan Douglas (“Trial Tr., Defs.’ Godici” or “Trial Tr., Defs.’Douglas”) [Dkt. No. 229];

o. Official Transcript of Proceedings, held Mar. 7, 2013, Closing Argument ofMr. O’Brien, Closing Argument of Mr. Oropallo, Jury Charges (“Trial Tr.,O’Brien Closing” or “Trial Tr., Oropallo Closing” or “Trial Tr., Jury Charges”)[Dkt. No. 230];

p. Official Transcript of Proceedings, held Mar. 8, 2013, Jury Charge continued(“Trial Tr., Jury Charge (cont.)”) [Dkt. No. 231];

q. Official Transcript of Proceedings, held Mar. 5, 2013, Defendants’ WitnessesWilliam Leonard, Robert Nicholas, Deposition of John Allin, Deposition of GregDaniels (“Trial Tr., Defs. Leonard” or “Trial Tr., Defs. Nicholas” or “Trial Tr.,Defs.’ Allin Depo.” or “Trial Tr., Defs. G. Daniels Depo.”) [Dkt. No. 232];

r. Official Transcript of Proceedings, held Mar. 6, 2013, Defendants’ WitnessesDeposition of Robert Orsolini, Deposition of Leslie Craig (“Trial Tr., Defs.Orsolini Depo.” or “Trial Tr., Defs. Craig Depo.”) [Dkt. No. 233];

7. Attached hereto are true and accurate copies of the following:

Exhibit 1 - Trial Joint Exhibit (“J___”) 1;

Exhibit 2 - Trial Joint Exhibit J2;



7139962.1 - 4 -




Exhibit 7 - Two-Columned Comparison of ‘128 Patent, Fig. 1 (TrialExhibit J3) to: Degelman Strongbox® image, fromSchedule 1 of Letter Brief from Michael A. Oropallo toHon. Jonathan W. Feldman, dated Feb. 21, 2013 (“DegelmanFeb. 21st Letter Brief”); Tenco Snowblower image excerptfrom Trial Defendants Exhibit (“D___”) 69; OrsoliniDrawing image excerpt from Trial Defendants Exhibit D74;SPC Compact images excerpted from Trial Joint ExhibitJ174; and

Exhibit 8 - Trial Defendants Exhibit D77.

8. Defendants’ counsel, in closing argument, stated the following:

[W]e think it’s also clear that it would have been obvious to aperson of ordinary skill in the art to combine the wedge-shapedgusset that’s in the Tenco snowblower – to combine the wedge-shaped gusset present in the Tenco snowblower or present in theOrsolini-Daniels pull plow with a downwardly depending supportpost present in many containment plows before DegelmanIndustries began its R and D project.

(Trial Tr., O’Brien Closing [Dkt. No. 230] 692:15-21) (emphasis supplied).

9. Defendants’ counsel, in closing argument, stated the following:

[W]e don’t contend that Degelman [] was aware of the Tencosnowblower or the Orsolini-Daniels pull plow. The judge will tellyou that that does not matter because the patentee in this casedoesn’t need to know of the existence of these prior art referencesfor them to be considered in your invalidity analysis. And thejudge . . . will tell you that if references are not considered by theU.S. PTO during the patent application process, then they need notbe scrutinized as carefully as ones that were actually before thePTO as considered as part of the patent prosecution process.

(Trial Tr., O’Brien Closing [Dkt. No. 230] 705:20-706:7 (emphasis added).)

10. The Court, in the Jury Charge, stated the following:

When a party challenging the validity of a patent presents evidence


7139962.1 - 5 -

that was not considered by the examiner during the prosecution ofthe application which resulted in the issued patent, such newevidence may be given more weight and may make it easier tosatisfy that party’s clear and convincing evidence burden.

(Trial Tr., Jury Charge [Dkt. No. 230] 777:3-8.)

11. The Court, during the testimony by deposition of Robert Orsolini, stated the

following:

The defendants have admitted that [the Orsolini Drawing] is notprior art. The drawing may be considered by you only for thelimited purposes of corroborating the testimony of some witnessesthat claim to have used a snowplow publicly in the 1970s.

(Trial Tr., Defs. Orsolini Depo. [Dkt. No. 233] 611:7-11.)

12. Defendants’ witness, Jerre Heyer, gave the following testimony before the jury:

Q. [D]o you have an opinion as to whether or not the design of the‘097 patent and the design of the accused products weresubstantially similar?

* * *

THE WITNESS: They were actually dissimilar.

(Trial Tr., Defs. Heyer [Dkt. No. 216] 50:21-51:5, 51:17 (objection colloquy omitted).)

13. Degelman objected to that testimony. (Trial Tr., Defs. Heyer [Dkt. No. 216]

51:6-11 (objecting as to ‘097 Patent)

14. Degelman’s objection was overruled. (Trial Tr., Defs. Heyer [Dkt. No. 216]

51:12 (overruling as to ‘097 Patent).)


Q. [D]o you have an opinion as to whether or not the design of the‘129 patent and the design of the accused products is substantiallysimilar?

* * *

THE WITNESS: Yes, I have an opinion.


7139962.1 - 6 -

Q. What’s that opinion?

A. They’re dissimilar.

(Trial Tr., Defs. Heyer [Dkt. No. 216] 53:12-18, 53:25-54:3 (objection colloquy omitted).)

16. Degelman objected to that testimony. (Trial Tr., Defs. Heyer [Dkt. No. 216]

53:19 (objecting as to ‘129 Patent).)

17. Degelman’s objection was overruled. (Trial Tr., Defs. Heyer [Dkt. No. 216]

53:20 (overruling as to ‘129 Patent).)


Q. [D]o you have an opinion as to whether or not the design of the‘128 Patent and the design of the accused products is substantiallysimilar?

* * *

THE WITNESS: Yes, I have an opinion.

Q. What is that opinion?

A. The opinion is that they’re dissimilar.

(Trial Tr., Defs. Heyer [Dkt. No. 216] 59:19-60:4 (objection colloquy omitted).)

19. Degelman objected to that testimony. (Trial Tr., Defs. Heyer [Dkt. No. 216] 60:1

(objecting as to ‘128 Patent).)

20. Degelman’s objection was overruled. (Trial Tr., Defs. Heyer [Dkt. No. 216] 60:2

(overruling as to ‘128 Patent).)


Q. Well, I noted that you talked about a number of functional itemstoday as opposed to ornamental designs. I think you even called itthe ‘attachment mechanism.’ Did that enter into your opinion withregard to the dissimilarities?

* * *

THE WITNESS: It entered into my decision, but it was only one of


7139962.1 - 7 -

numerous dissimilarities.

Q. And did you include that dissimilarity in determining what theoverall ornamental features of the ‘129 snowplow was?

A. Yes.

(Trial Tr., Defs. Heyer [Dkt. No. 216] 64:22-65:21 (objection colloquy omitted).)

I declare under penalty of perjury that foregoing is true and correct.

Dated: April 15, 2013 HISCOCK & BARCLAY, LLP

By:

Michael A. OropalloAttorneys for PlaintiffDegelman Industries Ltd.Office and Post Office AddressOne Park Place300 State StreetSyracuse, New York 13202-2078Telephone (315) 425-2831Facsimile (315) 703-7367E-Mail: [email protected]


EXHIBIT 1


1


UNITED STATES DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

February 15, 2012

THIS IS TO CERTIFY THAT ANNEXED HERETO IS A TRUE COPY FROM

THE RECORDS OF TillS OFFICE OF:

U.S. PATENT: 6,845,576

ISSUE DATE: January 25,2005

By Authority of the

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office

_.,,2/ ; ::j'/V c.)/ # _ 7 ---~-rL-y.-:7v~ P. R. GRANT ··-·

Certifying Officer

JOINT EXH IBIT


(12) United States Patent Vennard et al.

(54) MATERIALS MOVING BLADE

(76) Inventors: Robert G. Vennard, 10 Ricke Bay, Regina SK (CA), S4R 7G5; Justin L. Tremblay, 5327 McKinley Avenue, Regina SK (CA), S4T 7M2; Miles M. E. Evans, 308-2600 Arens Road, Regina SK (CA), S4V 3A7

( *) Notice: Subject to any disclaimer, the term of this patent is extended or adjusted under 35 U.S.C. 154(b) by 0 days.

(21) Appl. No.: 10/630,327

(22) Filed: Jul. 30, 2003

(65) Prior Publication Data

US 2004/0104032 A1 Jun. 3, 2004

Related U.S. Application Data

( 63) Continuation-in-part of application No. 29/171,447, filed on Nov. 21, 2002, now Pat. No. Des. 478,097, and a continuation-in-part of application No. 29/185,854, filed on Jul. 3, 2003, now abandoned.

2

26

40

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111111 1111111111111111111111111111111111111111111111111111111111111 US006845576B2

(10) Patent No.: (45) Date of Patent:

US 6,845,576 B2 Jan.25,2005

(51) Int. Cl.7 ............................... E02F 3/76; EOlH 5/06

(52) U.S. Cl ........................................... 37/266; 172/832 (58) Field of Search ................................. 172/832, 815,

172/811; 37/214, 253, 266-284

(56) References Cited

U.S. PATENT DOCUMENTS

5,473,541 A * 12/1995 Ishino eta!. .................. 701!50 6,112,438 A * 9/2000 Weagley ...................... 37/270

* cited by examiner

Primary Examiner--Christopher J. Novosad (74) Attorney, Agent, or Firm--Davis & Bujold, P.L.L.C.

(57) ABSTRACT

A materials pushing or moving blade for use with heavy equipment vehicles, for example, a bulldozer or loader, and more specifically to a method and apparatus for moving snow, specifically a snow moving blade having a reinforcing gusset for strengthening the extended sidewalls of the snow moving blade.

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Case 6:06-cv-06346-JWF Document 234-2 Filed 04/15/13 Page 14 of 17T US 6,845,576 B2

1 MATERIALS MOVING BLADE

This Application is a Continuation-in-Part of United States Design Patent Application 29/171,447, filed Nov. 21, 2002 entitled; SNOW MOVING APPARATUS and Appli- 5

cation No. 29/185,854, filed Jul. 3, 2003 also entitled abandoned; SNOW MOVING APPARATUS.

FIELD OF TilE INVENTION

2 tially vertical joint between the sidewall and main blade. The support thus forms a triangular-type brace between the front surface of the main blade and the inner side of the sidewall to provide further rigidity and support to the sidewall.

These previously known supports present several problems, including a space between the support and the joint in which objects could be caught up or entangled. Also, such a horizontal support tends to form a shelf or trap for snow, ice or other debris which cannot become loosened

The present invention relates to a materials pushing or moving blade for use with heavy equipment vehicles, for example, a bulldozer or loader and more specifically to a method and apparatus for moving snow, specifically a snow moving blade having a reinforcing gusset for strengthening the extended sidewalls of the snow moving blade.

10 without the operator intervening. In snow plowing, snow may build up in and around these supports and in order to remove such build up of snow, the operator must strike the blade upon the ground surface to loosen the snow or must physically remove the buildup by exiting from the cab and

15 scraping the snow out, all of which may cause damage and time delays with respect to snow removing.

BACKGROUND OF TilE INVENTION OBJECT AND SUMMARY OF TilE INVENTION

In general, heavy equipment, for example, a bulldozer, loader, etc., for moving materials, e.g., earth, snow, refuse, etc., are provided with a main blade which is attached to a hydraulically articulated blade adjustment device on the vehicle. A general materials moving blade is a substantially planar, rectangular piece of steel which may have a substantially vertically oriented curve or bend along its length to facilitate materials handling and moving. It is also known that these blades may be divided into horizontally adjacent blade segments for materials handling purposes as well. The blades are also often provided with a replaceable or reinforced lower edge to replace or prevent damage to the blade

Wherefore, it is an object of the present invention to overcome the above mentioned shortcomings and draw-

20 backs associated with the prior art. Another object of the present invention is to provide a

materials moving blade having sidewalls which are strengthened relative to the main blade by a conic section gusset.

25 A further object of the invention is to provide the gusset

with a substantially larger base portion adjacent the connected ends of the main blade and sidewall to a substantially smaller apex portion adjacent the extended free end of the sidewall.

30 from the ground surface over which the blade is pushed, pulled or carried by the machinery.

For purposes of snow removal, such above described blades are provided with a substantially longer longitudinal length than conventional earth moving blades due to the

35 generally lighter and more consistent nature of snow relative

Yet another object of the present invention is to provide a gusset for strengthening a joint between substantially perpendicular members of a heavy equipment blade which easily sheds materials being plowed, for example, snow, ice and/or earth where the materials being moved or plowed contact only a contiguous forward facing surface to facilitate disengagement of the material from the blade or bucket.

to other materials. The longer length facilitates the clearing of large swaths of, for example, roads, parking lots, loading docks etc., of commercial and industrial centers during the winter months.

A still further object of the present invention is to provide an easy to manufacture and economical support gusset to provide increased strength and stability of the material

40 mover with the least amount of additional weight to the blade or bucket. In order to contain the snow within the span or longitu

dinal length of the blade, sidewalls are often attached to the ends of the blade extending substantially perpendicularly out from the blade, i.e., parallel to the direction of travel of the equipment. This ensures that as much snow as possible is 45 maintained in front of the blade, i.e., snow does not spill off the ends of the main blade. The sidewalls are usually a single, relatively thin piece of steel to keep the blade as light weight as possible.

A problem that arises with such apparatus is the lack of 50

strength in the connection or joint between each sidewall attached at opposing ends of the blade. The substantially perpendicular welded joint attaching each sidewall to the blade, as is usual in the art, provides attachment but only minimal support for the relatively thin sidewall which 55

extends a desired distance out in front of the main blade. Without any support other than the joint with the main blade, the thin sidewalls can be easily damaged, and are particularly susceptible to being bent outwards by sufficient snow loads within the confines of the box blade, especially as the 60

machine pushes the blade with a load. In order to overcome this problem of stability and to better

secure the sidewalls to the main blade and prevent such damage, a support bar, tube, or a multiplicity of such bars or tubes are often welded between each sidewall and main 65

blade. The support(s) are generally horizontal to the ground, i.e., perpendicular relative to but spaced from the substan-

The present invention also relates to a materials moving blade for attachment to a vehicle comprising a main blade (2) defined by a first and second ends, a top edge (18), a bottom edge (20) and a front and back surfaces ( 4, 6); a first sidewall (26) and a second sidewall (28) attached to and extending substantially perpendicular from the respective first and second ends of the main blade (2); a first support gusset extending from a larger base portion connected to the front surface ( 4) of the main blade (2) to a smaller apex portion connected to the first sidewall (26); a second support gusset extending from a larger base portion connected to the front surface ( 4) of the main blade (2) to a smaller apex portion connected to the second sidewall (28).

The present invention also relates to a materials moving box blade (1) comprising a main blade (2) defined by a first and second ends, a top edge (18), a bottom edge (20) and a front and back surfaces ( 4, 6); a first sidewall (26) and a second sidewall (28) attached to and extending substantially perpendicular from the respective first and second ends of the main blade (2); a first support gusset extending from a larger base portion connected to the front surface ( 4) of the main blade (2) to a smaller apex portion connected to the first sidewall (26); a second support gusset extending from a larger base portion connected to the front surface ( 4) of the main blade (2) to a smaller apex portion connected to the second sidewall (28).


US 6,845,576 B2 3

The present invention also relates to a method of strengthening a materials moving box blade (1), the method comprising the steps of providing a main blade (2) defined by a first and second ends, a top edge (1S), a bottom edge (20) and a front and back surfaces ( 4, 6); attaching a first sidewall s (26) and a second sidewall (2S) to and extending substantially perpendicular from the respective first and second ends of the main blade (2); attaching a first support gusset extending from a larger base portion connected to the front surface ( 4) of the main blade (2) to a smaller apex portion 10

connected to the first sidewall (26); attaching a second support gusset extending from a larger base portion connected to the front surface ( 4) of the main blade (2) to a smaller apex portion connected to the second sidewall (2S).

4 any vehicle connection devices attached to the rear wall10 of the main blade 2 where the front wallS is damaged by an object. In any event, whether the main blade 2 is single or double walled, the main blade 2 is defined having the front surface 4 and the back surface 6.

Observing FIGS. 3 and 4, besides the front and back surfaces 4, 6, the main blade 2 has opposing first and second side ends 14, 16, a top edge 1S and a bottom edge 20. The bottom edge 20 is normally in contact or very close to the ground during cutting and pushing operations, especially during snow clearing operations, although it may be raised above the ground in certain situations for transport and providing necessary clearance for certain objects on the ground, curbs, reflectors, etc. The bottom edge 20 of the

BRIEF DESCRIPTION OF THE DRAWINGS

The invention will now be described, by way of example, with reference to the accompanying drawings in which:

FIG. 1 is a front perspective view of the materials moving apparatus;

15 main blade 2 is often provided with attachment points or bolt holes 22 (as shown) to facilitate the attachment of a replaceable edge 24 which can be fastened to the bottom edge 20, for example, by rivets or bolts. Such a replaceable edge 24 is important for protecting the main blade 2 from wear

FIG. 2 is a rear perspective view of the materials moving apparatus;

FIG. 3 is a front elevational view of the materials moving apparatus;

FIG. 4 is a rear elevational view of the materials moving apparatus;

FIG. 5 is a bottom plan view of the materials moving apparatus;

FIG. 6 is a top plan view of the materials moving apparatus;

FIG. 7 is a left side view of the materials moving apparatus;

20 against the ground as well as minimizing damage from objects which the blade may encounter.

As is well known in the colder latitudes of the world, heavy earth moving equipment vehicles, e.g., graders, scrapers, loaders, etc., are often used to facilitate the

25 removal of snow, for example, at airports, large commercial parking and vehicle loading lots, etc. The heavy equipment is usually provided with the box blade 1 as shown in FIGS. 1-4 and designed specifically for snow removal. The box blade 1 is used in place of or attached to the main regular

30 bucket or blade of the heavy equipment. In addition to the above described main blade 2, box blades 1 are provided with an opposing first and second side walls 26, 2S to better entrap the snow and facilitate the removal thereof.

FIG. S is a right side view of the materials moving 35

apparatus;

The first sidewall 26 and the second sidewall 2S are attached to the respective first and second ends 14,16 of the main blade 2. The first and second sidewalls 26, 2S are, in general, welded or connected in some manner, as known in the art, to the respective first and second ends 14, 16 of the

FIG. 9 is a front perspective view of the materials moving apparatus; and

FIG. 10 is a front perspective view of an embodiment of 40

the materials moving apparatus.

DETAILED DESCRIPTION OF THE INVENTION

main blade 2 and are generally formed of a single planar piece of material for purposes of conserving weight. The intersection between each connected sidewall26, 2S and the respective side edges 14, 16 of the main blade 2 defines a substantially vertical connection joint 30 running perpen-

In conjunction with FIGS. 1 and 2, a brief description concerning the various components of the present invention will now be provided. As can be seen in this embodiment, the present invention provides a box blade 1 having main blade 2 extending along a longitudinal axis A for a longitudinallength L. The main blade 2 may be planar, i.e.·, flat, relative to the longitudinal axis A or curved and/or bent at an angle substantially about the longitudinal axis A running the longitudinal length L of the blade 1 to facilitate retention of materials being moved by the blade 1.

45 dicular to the longitudinal axis A of the main blade 2. The box blade 1 is formed by providing the first and second sidewalls 26, 2S with a height h defined by a sidewall top and bottom edges 31, 33 and a length 1 defined between the front and rear sidewall edges 32, 34. These edges may define

50 overall a substantially square or rectangular end wall, although other shapes could be contemplated as well.

The main blade 2 has a front surface 4 for engaging 55

material and a back surface 6 generally for supporting mounting hardware. The main blade 2 may be provided as either a single sheet of metal or, as shown in conjunction with FIG. 2, the main blade 2 may be a double walled design having a spaced apart front and rear wallS, 10, respectively. 60

A double walled design may include the front and rear walls S, 10 having a substantially different curvature, bend or orientation about the longitudinal axis A, for example, the front wall S may be curved as in FIG. 1, and the back wall 10 may have a bend 7 as shown in FIG. 2. Also due to the 65

space between the front and back walls S, 10, the double walled design can also help stop damage to the hydraulics or

For purposes of discussion, the following description relates to only the first connection joint 30 between the first side edge 14 of the main blade 2 and the first sidewall 26, as each opposing sidewall is joined in the same manner and with the same components and structures, only a description of one side is believed necessary. The first sidewall 26 is connected near or adjacent its rear edge to the respective first side edge 14 of the main blade 2, along the connection joint 30. From the connection joint 30, the sidewall 26 extends substantially perpendicularly with respect to the main blade 2, and radially from the longitudinal axis A, along its length 1 to space the front sidewall edge 32 at a substantial distance relative to the rear sidewall edge 34 from the longitudinal axis A of the blade.

As seen in FIGS. 5-8, the bottom edge 31 of the sidewall may be provided with a skid foot, or a plurality of skid feet


US 6,845,576 B2 5

36, in order to protect the sidewall bottom edge 31 and facilitate the passage of the box blade 1 itself across a ground surface without damage. The skid feet 36 may be either welded or bolted to the bottom edge 31 of the first and second sidewalls 26, 28 in order to facilitate replacement in 5 the event of damage or breakage.

With the sidewalls 26, 28 attached to each end 14 16 of the main blade 2, the above described arrangement' essentially defines a 3-sided box structure having a forward facing opening 0 to push and contain the materials being moved,

10 thus the term "box blade" as is known in the art. With respect to such box blades, as is readily apparent to one of ordinary skill in the art, the farther the front sidewall edge 32 extends from the respective connection joint 30 with the main blade 2, the more flexible the first and second sidewalls 26 28 become due to the increasing weight of the sidewall ~s it 15

extends farther from the connection joint 30 thus creating a greater moment arm about the connection joint 30.

Turning to FIG. 9, in order to maintain the integrity of the box blade 1, specifically the rigidity of the main blade 2, and

20 especially the first and second sidewalls 26, 28, relative thereto, a strengthening gusset 40 is incorporated with each connection joint 30 and between the sidewall and the main blade 2 to stabilize each sidewall relative to the main blade

6 The use of such a conical shape is particularly important

in that the gusset 40 may be formed from a single piece of material which may be bent or curved into the desired surface shape and then welded or connected to the main blade 2 along the outer edge 48. This provides not only a structurally strong gusset 40 and unbroken material moving face, but also provides ease of manufacture and application of the gusset 40 to the main blade 2 and first sidewall 26.

It is well known to those in the mechanical field that in order to reduce the moment of an arm about an axis the weight or mass of the arm can be reduced. It is an impo~tant aspect of the present invention that as the gusset 40 extends from the main blade 2 and the longitudinal axis A, the cone gusset 40 has the larger base portion 42 decreasing to the more narrow apex portion 44 as it extends radially away from the main blade 2 and consequently the longitudinal axis A. With the first and second sidewalls 26, 28 extending perpendicular to the axis, this decreased mass of the apex portion 44 of the cone gusset is particularly helpful in lowering the moment of the first and second sidewalls 26, 28 and the gusset 40 about the horizontal axis.

2. Each gusset 40 is formed as a substantially conic section,

i.e., a partial cone, having a base portion 42 attached to and extending radially from the front surface 4 of the main blade 2 to an apex portion 44 spaced therefrom and attached on the inner surface of the sidewalls 26, 28. The apex portion 44 may extend substantially the length of the inner surface of the sidewall to be situated substantially near the front edge

In the above described embodiment of the present invention, the cone gusset 40, which also extends radially and substantially perpendicular relative to the longitudinal

25 axisAofthe main blade 2, depends downward from the base portion 42 located higher up relative to the ground surface, to the apex portion 44 situated closer to the ground G and attached adjacent the lower edge 31 and front edge 32 of the sidewall26. Such a downward depending gusset 40 inher-

32 or forward edge of the respective sidewall. The conic section gusset 40 is provided with a contiguous

outer surface 46 and an outer supporting edge 48 which is joined to the respective front surface 4 of the main blade 2 and the inner surface of the sidewall 26. The attachment between the main blade 2, the sidewall26 and the gusset 40

30 ently also aligns the contiguous surfaces 50 and 52 of the conic section gusset 40 not only inward relative to the box blade 1, but also radially downward towards the ground which facilitates the shedding of snow and/or earth or other material from the gusset 40.

35 Since certain changes may be made in the above described improved materials moving apparatus without departing from the spirit and scope of the invention herein involved, it is intended that all of the subject matter of the is complete, i.e., it defines a contiguous, usually welded

gusset seam attaching the entire outer edge 48 of the conic section gusset to the box blade 1. Thus, the gusset 40, in conjunction with the sidewall26 and main blade 2, presents an uninterrupted or unbroken face to any material being pushed or moved

40 above description or shown in the accompanying drawings shall be interpreted merely as examples illustrating the inventive concept herein and shall not be construed as limiting the invention.

In the present embodiment, the contiguous outer surface 45

46 of the conic section gusset 40 is formed by a first and second substantially planar surfaces 50, 52 aligned at an angle with respect to one another. The first and second planar surfaces 50, 52 are angled with respect to one another along a bend 54 which extends substantially the length of the conic 50

section from the base portion 42 connected to the main blade 2 to the apex portion 44 connected to the first sidewall 26.

In another embodiment as seen in FIG. 10, the cone may have a substantially hemispherical or semi-hemispherical surface 56 having a radius of curvature, for instance, a 55

semi-circular section. It is to be understood that the conic section gusset 40 may also be formed with a plurality of adjacent surfaces to effectively produce the conic section provided with a respective number of angles to effect a number of differently surfaced conic sections. Generally, the 60

conic section gusset 40 is integrally formed from a single piece of material, for example, steel, although it could be made of several separate sections joined together to form the gusset 40. In any event, each adjacent surface of a multisurface conic section gusset is provided with a wider base 65

portion 42 and a narrower apex portion 44 joined to the respective main blade 2 and sidewal126 as described above.

We claim: 1. A materials moving blade for attachment to a vehicle

comprising: a main blade defined by first and second ends, a top edge,

a bottom edge and front and back surfaces; a first sidewall and a second sidewall attached to and

extending substantially perpendicular from the respective first and second ends of the main blade;

a first support gusset extending from a larger base portion connected to the front surface of the main blade to a smaller apex portion connected to the first sidewall;

a second support gusset extending from a larger base portion connected to the front surface of the main blade to a smaller apex portion connected to the second sidewall; and

wherein the first and second gusset are each formed as a conic section delineated by a side support dege connected to one of the first and second sidewalls and a base edge connected to the main blade.

2. The materials moving blade for attachment to a vehicle as set forth in claim 1, wherein the side support edge and the base edge of each of the conic section gussets are contiguously joined to the respective first and second sidewall and the main blade.



US 6,845,576 B2 7

3. The materials moving blade for attachment to a vehicle as set forth in claim 2, wherein each of the first and second conic section gussets depends downward from the base portion attached to a substantially middle portion of the main blade to the apex portion of the gussets attached 5

adjacent a lower edge of the respective first and second sidewalls.

4. The materials moving blade for attachment to a vehicle as set forth in claim 3, wherein each of said conic section gussets comprise a plurality of adjacent surfaces extending 10

from a larger end attached to the main blade to a smaller end attached to the sidewall.

5. A materials moving box blade comprising: a main blade defined by first and second ends, a top edge,

a bottom edge and front and back surfaces; 15

8 to a smaller apex portion connected to the second sidewalls; and

wherein the first and second gusset are each formed as conic section delineated by a side support edge connected to one of the first and second sidewalls and a base edge connected to the main blade.

6. The materials moving box blade as set forth in claim 5, wherein the side support edge and the base edge of each of the conic section gussets are contiguously joined to the respective first and second sidewall and main blade.

7. The materials moving box blade as set forth in claim 6, wherein each of the first and second conic section gussets depends downward from the base portion attached to a substantially middle portion of the main blade to the apex portion of the gussets attached adjacent a lower edge of the respective first and second sidewalls. a first sidewall and a second sidewall attached to and

extending substantially perpendicular from the respective first and second ends of the main blade;

a first support gusset extending from a larger base portion connected to the front surface of the main blade to a smaller apex portion connected to the first sidewall;

8. The materials moving box blade as set forth in claim 7, wherein each of said conic section gussets comprise a

20 plurality of adjacent surfaces extending from a larger end attached to the main blade to a smaller end attached to the

a second support gusset extending from a larger base portion connected to the front surface of the main blade

sidewall.

* * * * *

EXHIBIT 2


2




February 15, 2012


THE RECORDS OF THIS OFFICE OF:

U.S. PATENT: D478,097

ISSUE DATE: August 05, 2003

By Authority of the


:::;?/ .;? ,) (];!',, / ;J . / ·? / ' .. -· _ .. · ~J-v--1~

P. R. GRANT L Certifying Officer

JOINT EXH IBIT


I IIIII 11111111 11111111111111111111111111111 11111111111 USOOD478097S

(12) United States Design Patent (lo) Patent No.: US D478,097 S ** Aug. 5, 2003 Vennard et al. (45) Date of Patent:

(54) SNOW MOVING APPARATUS

(75) Inventors: Robert G. Vennard, Regina (CA); Justin L. Tremblay, Regina (CA); Miles M. E. Evans, Regina (CA)

(73) Assignee: Degelman Industries, Inc., Regina (CA)

(**) Term: 14 Years

(21) Appl. No.: 29/171,447

(22) Filed: Nov. 21, 2002

(51) LOC (7) Cl ..................................................... 15-03 (52) U.S. Cl ......................................................... D15/ll (58) Field of Search .............................. D15/10, 11, 23,

D15/25, 28, 32; 37/219, 273, 276, 407, 266, 279; 254/131.5, 54.5, 59; 701/41, 50; 702/41; 180/6.7, 701.1, 4.5; 172/7,

2, 817, 826, 821



4,306,362 A * 12/1981 Waterman .................... 37/219 4,531,713 A * 7/1985 Balboni ................... 254/131.5 5,473,541 A * 12/1995 Ishino et a!. .................. 701/50

5,535,830 A * 7/1996 Matsushita eta!. ............ 172/7 5,799,737 A * 9/1998 Kamikawa eta!. ............ 172/2 6,481,506 B2 * 11/2002 Okada et a!. ............... 172/812

* cited by examiner

Primary Examiner-Mitchell Siegel (74) Attorney, Agent, or Firm-Davis & Bujold, P.L.L.C.

(57) ClAIM

We claim the ornamental design for a snow moving apparatus, as shown and described.

DESCRIPTION

FIG. 1 is a front perspective view of the snow moving apparatus; FIG. 2 is a rear perspective view of the snow moving apparatus; FIG. 3 is a front elevational view of the snow moving apparatus; FIG. 4 is a rear elevational view of the snow moving apparatus; FIG. 5 is a bottom plan view of the snow moving apparatus; FIG. 6 is a top plan view of the snow moving apparatus; FIG. 7 is a left side view of the snow moving apparatus; and, FIG. 8 is a right side view of the snow moving apparatus.

1 Claim, 8 Drawing Sheets


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3




February 15, 2012


THE RECORDS OF TillS OFFICE OF:


ISSUE DATE: Apri/18, 2006

By Authority of the


~) :?.;1 P.R. GRANT

Certifying Officer

JOINT EXH IBIT


I IIIII 11111111 lllllllllllllllllllllllllllllllllllllllllllllll USOOD519128S

(12) United States Design Patent cw) Patent No.: US D519,128 S ** Apr. 18, 2006 Vennard et al. (45) Date of Patent:


(75) Inventors: Robert G. Vennard, Regina (CA); Justin L. Tremblay, Regina (CA); Miles M. E. Evans, Regina (CA)

(73) Assignee: Degelman Industries Ltd., Regina (CA)

(**) Term: 14 Years

(21) Appl. No.: 29/185,854

(22) Filed: Jul. 3, 2003


(63) Continuation-in-part of application No. 29/171,447, filed on Nov. 21, 2002, now Pat. No. Des. 478,097.

(51) LOC (8) Cl •.................................................... 15-03 (52) U.S. Cl ......................................................... D15/11 (58) Field of Classification Search .................. D15/10,

D15/11, 23, 25, 28, 32; 37/219, 273, 276, 37/407, 266, 279, 217; 254/131.5, 54.5, 59; 701141, 50; 702/41; 180/6.7, 701.1, 4.5, 7,

180/2,817,826, 821; 172/7,2,817, 826, 172/821

See application file for complete search history.



4,306,362 A * 12/1981 Waterman .................... 37/219

4,531,713 A * 7/1985 Balboni ................... 254/131.5 5,473,541 A * 12/1995 Ishino eta!. .................. 701/50 5,535,830 A * 7/1996 Matsushita et al. ............ 172/7 5,799,737 A * 9/1998 Kamikawa et al. ............ 172/2 6,481,506 B1 * 1112002 Okada eta!. ............... 172/812 D478,097 S * 8/2003 Vennard et al ............... D15/ll

* cited by examiner

Primary Examiner-Mitchell Siegel (74) Attorney, Agent, or Firm-Davis & Bujold, P.L.L.C.

(57) CLAIM

We claim the ornamental design for a snow moving apparatus, as shown and described.

DESCRIPTION

FIG. 1 is a front perspective view of the snow moving apparatus;

FIG. 2 is a front elevational view of the snow moving apparatus;

FIG. 3 is a bottom plan view of the snow moving apparatus; and,

FIG. 4 is a top plan view of the snow moving apparatus.

The broken line showing of is for illustrative purposes only and forms no part of the claimed design.



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EXHIBIT 4


4




February 15, 2012


THE RECORDS OF TIDS OFFICE OF:


ISSUE DATE: Apri/18, 2006

By Authority of the


/v _::?~ o.j) - -/ ~ ~1 _/J.z;:dv(:-P.R. GRANT

Certifying Officer

JOINT EXH IBIT


11111111 lllllllllllllllllllllllllllll 11111111111 USOOD519129S

(12) United States Design Patent (10) Patent No.: US D519,129 S ** Apr. 18, 2006 Vennard et al. (45) Date of Patent:


(76) Inventors: Robert G. Vennard, 10 Ricke Bay, Regina, SK (CA), S4R 7G5; Justin L. Tremblay, 5327 McKinley Avenue, Regina, SK (CA), S4T 7M2; Miles M. E. Evans, 308-2600 Arens Road, Regina, SK (CA), S4V 3A7

(**) Term: 14 Years

(21) Appl. No.: 29/231,484

(22) Filed: Jun. 6,2005


( 60) Division of application No. 29/185,854, filed on Jul. 3, 2003, which is a continuation-in-part of application No. 29/171, 447, filed on Nov. 21, 2002, now Pat. No. Des. 478,097.

(51) LOC (8) Cl ..................................................... 15-03 (52) U.S. Cl ......................................................... D15/11 (58) Field of Classification Search .................. D15/10,

(56)

D15111, 23, 25, 28, 32; 37/217,273,276, 37/407,266, 279; 254/131.5, 54.5, 59; 701141,

701/50; 702/41; 180/6.7, 701.1, 4.5, 7, 2, 180/817,826,821

See application file for complete search history.

References Cited


4,306,362 A 12/1981 Waterman

4,531,713 A 7/1985 Balboni 5,473,541 A 12/1995 Ishino eta!. 5,535,830 A 7/1996 Matsushita et a!. 5,799,737 A 9/1998 Kamikawa et a!. 6,481,506 B1 11/2002 Okada eta!. D478,097 S 8/2003 Vennard et a!.

Primary Examiner-Mitchell Seigel (74) Attorney, Agent, or Firm-Davis & Bujold, P.L.L.C.

(57) CLAIM

I/We claim the ornamental design for a snow moving apparatus, as shown and described.

DESCRIPTION

FIG. 1 is a front perspective view of the snow moving apparatus; FIG. 2 is a rear perspective view of the snow moving apparatus; FIG. 3 is a front elevational view of the snow moving apparatus; FIG. 4 is a rear elevational view of the snow moving apparatus; FIG. 5 is a bottom plan view of the snow moving apparatus; FIG. 6 is a top plan view of the snow moving apparatus; FIG. 7 is a left side view of the snow moving apparatus; and, FIG. 8 is a right side view of the snow moving apparatus. The broken line showing of is for illustrative purposes only and forms no part of the claimed design. The blade portion of the claimed design is shown broken-away do to indeterminate length.



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EXHIBIT 5


D478,097

1

Exhibit A

174


D478,097

2

FIG. 1 is a front perspective view of the snow moving apparatus

Pro-Tech Product Photos

SPL Loader Model

SPB Backhoe Model

SPS Skid Steer Model


D478,097

3

FPL/FPB Fold Out Model SBL Switchblade Loader Model

Super Duty Loader ModelSBB Switchblade Backhoe Model

SBS Switchblade Skid Steer Model IST Loader Model

IST Backhoe ModelIST Skid Steer Model


D478,097

4

PBS/PBB Pull Back ModelSPC Compact Model

FTF Forklift Model


D478,097

5

FIG. 2 is a rear perspective view of the snow moving apparatus


SPL Loader ModelSPB Backhoe Model


FPL/FPB Fold Out Model

SBL Switchblade Loader Model


D478,097

6

Super Duty Loader Model

SBB Switchblade Backhoe Model

SBS Switchblade Skid Steer Model

IST Loader Model

IST Backhoe Model

IST Skid Steer Model

PBS/PBB Pull Back Model SPC Compact Model

FTF Forklift Model


D478,097

7

FIG. 3 is a front elevational view of the snow moving apparatus


SPL Loader ModelSPB Backhoe Model







D478,097

8

SBS Switchblade Skid Steer ModelIST Loader Model

IST Backhoe Model IST Skid Steer Model

PBS/PBB Pull Back Model

SPC Compact Model

FTF Forklift Model


D478,097

9

FIG. 4 is a rear elevational view of the snow moving apparatus


SPL Loader Model

SPB Backhoe Model








D478,097

10



FTF Forklift Model


D478,097

11

FIG. 5 is a bottom plan view of the snow moving apparatus


SPL Loader Model

SPB Backhoe Model






D478,097

12


IST Backhoe ModelIST Skid Steer Model


FTF Forklift Model


D478,097

13

FIG. 6 is a top plan view of the snow moving apparatus


SPL Loader Model

SPB Backhoe Model






D478,097

14



PBS/PBB Pull Back Model SPC Compact Model

FTF Forklift Model


D478,097

15

FIG. 7 is a left side view of the snow moving apparatus


SPL Loader Model SPB Backhoe Model



D478,097

16







D478,097

17



SPC Compact Model

FTF Forklift Model


D478,097

18

FIG. 8 is a right side view of the snow moving apparatus


SPL Loader Model SPB Backhoe Model



D478,097

19






D478,097

20



SPC Compact Model

FTF Forklift Model


EXHIBIT 6


306


LICENSE AGREEMENT

This Agreement, effective as of the j2._ day of ~'f , 2005, (the

"Effective Date") is by and among ATTACHMENT TECHNOLOGIES, INC., a

Delaware, U.S.A. corporation, whose address and principal place of business is 5825

Council Street NE, Cedar Rapids, Iowa 52402 ("ATI"), of the first part,. and

OEGELMAN INDUSTRIES LTD., a company incorporated under the laws of

Saskatchewan, Canada, whose address and principal place of business is 272 Industrial

Drive, Regina, Saskatchewan, Canada S4P 381 ("DEGELMAN"), of the second part.

RECITALS:

DEGELMAN has patents and patent applications related to materials pushing or

moving blades.

ATI desires to obtain a non-exclusive license from DEGELMAN, and

DEGELMAN is willing to grant a non-exclusive license to A TI under its patents and

patent applications related to materials pushing or moving blades.

In consideration of these premises and of the mutual promises set forth below, the

parties to this Agreement agree as follows:

ARTICLE 1

DEFINITIONS

For the purposes of this Agreement, the terms defined in this Article shall have ·

the meaning specified and shall be applicable both to the singular and plural forms.

A. "Party" shall mean ATI or DEGELMAN as applicable.

B. "Entity" shall mean any corporation, company, firm.1 partnership, proprietorship, or

other forril of business organiz.ation.

C. ''Affiliate" sha).l mean any individual who or Entity that in whatever country

organized or resident, directly or indirectly through or one or more intermediaries, is .

controlled by, or is under common control with, or controls, a Party.

D. "Licensee" shall mean A TI or any AT! Affiliate.

-1-

JOINT EXH IBIT

0000200 HIGHLY CONFIDENTIAL

COUNSEL ONLY

AD-0374


E. "Patent Rights" shall mean U.S. Patent No. 6,845,576, U.S. Design Patent No.

0478,097, Canadian Industrial Design No. l 02790, and U.S. Patent Application No.

29/185,854, and all continuations, continuation-in-parts, divisions, or substitutions

thereof, and any reissue or reexamination of any patent thereof.

F. "Licensed Product" shall mean all articles covered by a claim in any of the Patent

Rights or all articles whose method of manufacture or use is covered by a claim in

any of the Patent Rights.

G. "Licensed Territory" shall mean the U.S.A. and Canada.

H. "Net Sales11 shall mean the amount invoiced by or on behalf of a Licensee for sale of

a Licensed Product to a third party, less sales, excise or use taxes or transportation

charges shown on the face of the invoice, less credits for defective or returned

Licensed Products, and less all regular trade and discount allowances. Leasing,

lending, consigning or any other activity by means of which a third party acquires the

right to possession or use of a Licensed Product shall be considered to be a sale for

the purpose of detennining Net Sales. Notwithstanding anything contained in this

paragraph, with respect to any Licensed Products disposed of by a licensee to third

persons in any manner other than a regular competitive sales transaction, the net ·

invoice price of any item sold in such manner shall be deemed to be an amount equal

to the amount which would have been the net invoice price of such item, had it been

sold in the same market for cash in a regular, competitive transaction.

I. "Earned Royalty" shall mean the royalties paid or payable under this Agreement on

Net Sales. "Calendar Quarter" shall mean the respective t~ree month periods

ending March 3 I, June 30, September 30 and December 31 of any year.

J. 11Royalty Year" shall mean the year beginning with the frrst full Calendar Quarter

following the effective date of this Agreement, and each year thereafter during the

term of this Agreement.

ARTICLE2

GRANT

A. In consideration for performance by A TI of the obligations set out in this Agreement,

DEGELMAN hereby grant<> to A Tr, and A TI hereby accept<;, a non-exclusive right

D000201 HIGHLY CONFIDENTIAl COUNSEL ONLY

AD-0375


and license und~r the. Patent Rights to make, have made, use, sell, offer for sale, and

import Licensed Products in the Licensed Territory. This grant includes the right for

A TI to grant sublicenses to any and aU A TI Affiliates, provided that any such ·

sublicense shall terminate in the event the sublicensee ceases to be an Affiliate of

ATL This license includes the right for customers (ultimate or in privity or other) of

any Licensee to use and/or sell such Licensed Products so made.

ARTICLE3

ROYALTY

A. Earned Royalty. ATI shall pay DEGELMAN an Earned Royalty of five percent (5%)

of Net Sales.

B. Pawent and Reports. A TI shall pay the Earned Royalties due under this Agreement

not later than two months following each Calendar Quarter in which the Earned

Royalties accrue. Each payment shall be accompanied by a report identifying the unit

volume and royalty due for each Licensed Product. Such reports shall be made

quarterly to DEGELMAN, regardless of whether there is any payment due in the

current quarter. Payments and such reports shall be made to the address for

DEGELMAN set forth in Article 9 hereof, or to such other address as DEGELMAN

may from time to time designate.

C. Right to Audit. DEGELMAN may inspect and audit the records of Licensee

pertaining to the sale of Licen~yd Products through accountants of its own selection

(but not employees of DEGELMAN). Licensee shall provide such accountants with

access to the records during reasonable business hours, to check, at DEGELMAN's·

expense, the royalty due hereunder. Such access need not be given to any such set of

records more often than once each year nor more than three (3) years after the date of

any report to be audited, and the accountants shall report to DEGELMAN only the

. ~ount of royalty due. DEGELMAN shall give Licensee written notice of its

election to inspect and audit the records related to the royalty due hereunder not less

than ten (1 0) business days prior to the proposed date.of review of Licensee's records

by DEGELMAN's accountants.

0000202 HIGHLY CONFIDEN'flAi COUNSEL ONLY

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ARTICLE4

REPRESENTATIONS, WARRANTIES, AND INDEMNIFICATIONS

A. No Conflicting Agreements. The Parties warrant that they and their Affiliates have

no agreements with any third party or commitments or obligations which conflict in

any way with their obligations under this Agreement. No Party shall enter into any

agreement, commitment or obligation during the term of this Agreement that is in

conflict with its obligations under this Agreement.

B. Noninfringement. DEGELMAN warrants and represents that it is not aware of any

patents or patent applications having a claim covering Licensed Products other than

those already identified as included within the Patent Rights.

C. No Other Patents. DEGELMAN warrants and represents that it has no patents or

patent applications relating to materials pushing or moving blades other than those

already identified as included within the Patent Rights.

D. Disclaimer of Other Warranties. A TI disclaims all warranties not expre~sly granted

by this Agreement.

E. Indemnification. A TI agrees to indemnify, defend and hold hannless DEGELMAN

and DEGELMAN Affiliates, their directors, members, officers, employees,

distributors, representatives and agents from any and all claims, actions, demands,

losses, costs, expenses (including but not limited to reasonable attorneys fees and all

other expenses of litigation and the expenses of handling claims), damages, liabilities

and obligations relating to or arising from the Licensed Product or alleged Licensed

Product or any_ component or product incorporating the Licensed Product or alleged

Licensed Product, and which are brought, asserted, commenced or pursued by any

person or entity not a party to this Agreement, regardless of actual or alleged

negligence or fault, including but not limited to indemnifiable losses relating to:

sickness, bodily injury, personal injury, or death of any person, property damage, or

business damage relating to or arising from the Licensed Product or alleged Licensed

Product or any component or product incorporating the Licensed Product or alleged

Licensed Product.

D000203 HIGHLY CONFIDENTIAL COUNSEL ONLY

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ARTICLES

CONFIDENTIALITY

A. Information About the Agreement. For the term of this Agreement plus two (2) years

thereafter, each Party and its Affiliates shall keep confidenti<:tl by not disclosing to

any third party any information relating to this Agreement (including but not limited

to the text of this Agreement and reports of sales or transfers of Licensed Products),

transmitted to it by the other Party or its Affiliates, that the receiving Party or its

Affiliates have a reasonable basis to believe is confidential to the transmitting Party

or its Affiliates or that is treated by the transmitting Party or its Affiliates as

confidential.

B. Limitations. The foregoing obligations of Article 5.A. shall not apply when and to

the extent such information:

l) was known to the receiving Party or its Affiliates prior to receipt from the

transmitting Party or its Affiliate, as documented in written records or

publications that lawfully are in the possession of the receiving Party or its

Affiliates or known to them prior to such receipt;

2) was lawfully available to the trade or to the public prior to receipt from the

transmitting Party or its Affiliates;

3) through no act on the part of the receiving Party or its Affiliates thereafter

becomes lawfully available to the trade or to the public;

4) corresponds in substance to any information received in good faith by the

receiving Party or its Affiliates from any third party, unless such third party is

subject to a confidentiality covenant with respect to such information;

5) is communicated to any third party by the transmitting Party or its Affiliates

without restriction as to confidentiality or on the basis of a restriction that has

lapsed;

6) is independently developed by an employee or agent of the receiving Party or its

Affiliates, subsequent to receipt of such information from the transmitting Party

or its Affiliates;

7) is required to be disclosed to a third party pursuant to law or legal process,

provided that the Party required to make such disclosure takes reasonable steps to

D000204 HIGHLY CONFIDENTIAL

COUNSEL ONLY

AD-0378


inform the transmitting Party of such disclosure before it takes place and provides

the transmitting Party an opportunity to object or otherwise act; or

8) is disclosed by DEGELMAN to a third party that is a potential or actual assignee

of the Agreement. Furthermore. DEGELMAN may disclose the existence and

terms of the Agreement to any actual or potential licensee of any of the Patent

Rights.

ARTICLE6

PAST SALES

A. No royalties or other sums shall be due or owing to DEGELMAN for articles covered

by a claim in any of the Patent Rights sold by A TI or A TI Affiliates prior to the

effective date of this Agreement.

ARTICLE7

UNLICENSED COMPETITION AND LITIGATION ·

A. DEGELMAN shall have the sole right to take, or not to take, any measures deemed

appropriate by DEGELMAN, including the bringing or defending of suits, to prevent

infiingement of the Patent Rights. DEGELMAN undertakes no obligation or duty to

enforce or settle or license any of the Patent Rights on any terms with any third party.

ARTICLES

TERM AND TERMINATION

A. Termination. This Agreement· shall terminate of its own accord upon expiration of ali

of the Patent Rights.

B. Termination by ATI. A TI may terminate without cause at any time by three month

written notice to DEGELMAN.

C. Termination Upon Default. Jf ATI or any of its Affiliates at any time during the term

of this Agreement shall fail to perform any of its obligations hereunder, DEGELMAN

may so notify A TI in writing of such default, stating in such written notice the

obligations which A TI or its Affiliate shall have failed to perform. A TI shall then

have one month after the giving of such notice to remedy or have remedied such

D000205 HJGHLY CONFIDENTIAl COUNSEL ONLY

AD-0379


/

default. If A TI fails to so cure the default, DEGELMAN may at its option tenninate

this Agreement in whole or in part by giving A Tl written notice of such termination.

D. Termination Upon Insolvency. If ATl becomes insolvent or the subject of a

proceeding under any bankruptcy or re-organization law, ( l) A TI shall promptly

notify DEGELMAN, and (2) DEGELMAN may provide ATI with written

notification of termination of this Agreement in whole or in part. If the insolvency or

proceeding is without the application, approval or consent of ATI, ATI shall have two

months to have the order, judgement, or decree revoked or dismissed and thereby ·

cure the situation. In the absence of such a cure, the Agreement shall terminate two

months following such written notification.

E. Continuing Obligations. Any tennination for any reason as provided herein shall not

relieve A TI of any of its obligations incurred prior to such termination, including,

without limitation, the obligation to pay royalties accrued prior to such termination.

F. No Waiver. No waiver by DEGELMAN of any default or breach of any covenant by

the ATI shall be implied from any omission by DEGELMAN to take action on

account of such defuult if such default persists or is repeated, and no express waiver

shall affect any default other than the default specified in the waiver, and then said

waiver shall be operative only for the time and to the extent therein stated.

ARTICLE9

MISCELLANEOUS

A. Nothing in this Article 9 shaH preclude any Party from taking whatever actions are

necessary to prevent immediate, irreparable harm to its interests. This Article 9 shall

survive the termination or expiration of the Agreement.

B. Personal Jurisdiction and Aoolicable Law. Any questions, claims, disputes, remedies,

or procedural matters shall be governed by the laws of the State of Minnesota and by

the federal laws of United States, without regard to its principles of conflicts oflaw.

The Parties agree that each sells its product in the State of Minnesota, and as such the

State of Minnesota has a substantial relationship to this transaction and is considered

neutral ground for the purposes of this Agreement. Each Party agrees that the courts

of Minnesota may properly exercise personal jurisdiction over them in the courts


AD-0380


thereof The Parties agree that any and all dispute resolution, including ·without

limitation litigation relating to tlus Agreement or the Patent Rights, shall be brought

in the State of Minnesota in the appropriate State or Federal Court having subject

matter jurisdiction.

C. Damages. DEGELMAN and A TI each agree to waive any right to receive punitive,

consequential, special or indirect damages relating in any way to this Agreement.

D. Force Majeure. No Party shall be· considered in default or be liable for any delay in

performance or for any nonperformance caused by circumstances beyond the

reasonable control of such Party, including but not limited to acts of God, explosion,

fire, flood, accident, strike or other labor disturbance, war (whether declared or not),

sabotage, order or decree of any court or action of any governmental authority, or

other causes, whether similar or dissimilar to those specified, that cannot reasonably

be controlled by the Party who failed to perform.

E. Separability. The provisions of this Agreement shall be deemed separable.

Therefore, if any p~ or provision of this Agreement is rendered void, invalid or

unenforceable, in any jurisdiction in which this Agreement is performed, then such

part or provision shall be severed from the remainder of the Agreement only as to

such jurisdiction. Such severance shall not affect the validity of enforceability of the ·

remainder of this Agreement unless the part or parts that are void, invalid or

unenforceable as aforesaid shaH substantially impair the value of the whole

agreement to either Party.

F. Notices. Any and all communications required by this Agreement shall be in writing

and sent by first class mail, postage prepaid, and addressed to the last known address

of the Party to be served there·with. Notices sent by Registered or Certified mail,

Return Receipt Requested, shall be presumed to have been received. Any notice to be

given to DEGELMAN shall be addressed to:

Degelman Industries Ltd. 272 Industrial Drive Regina, SK S4P 3Bl" Attention; Scott Degelman


AD-0381


With a copy to:

Stuart J. Wicijowski c/o McDougall Gauley Bani.sters and Solicitors 700, 2010- 11th Avenue Regina, Saskatchewan S4P OJ3

Any notice to be given to ATI shall be addressed to:

Attachment Technologies, Inp. 5825 Council Street NE Cedar Rapids, Iowa 52402 U.S.A.

With a copy to:

Robert W. Hoke Shuttleworth & Ingersoll, P.L.C. 115 third Street SE, Suite 500 P.O. Box 2107 Cedar Rapids, IA 52406-2107

Any change of address of a Party shall be promptly communicated in writing the

other Party.

G. Integration, Amendment and Assigrynent. This Agreement sets forth the entire

agreement among the Parties relating to the subject matter contained herein. Neither

this Agretiment nor any right or obligation hereunder shall be modified, amended,

assigned or discharged except as expressly stated .in this Agreement or by a written

agreement signed by the Parties hereto. This Agreement and any of the rights and

obligations thereof are fully assignable by DEGELMAN. The license granted to the

Licensee is personal to the Licensee and, except as expressly provided herein, may

not be assigned nor may any subiicenses be granted by the sublicensee.

Notwithstanding the previous sentence, ATI may assign its rights and obligations,

provided that no such assignment shall be effective as against DEGELMAN until aU

of the following conditions have been satisfied:

0000208 HIGHLY CONFIDENTIAL COUNSEL ONLY


1. DEGELMAN has been provided with an agreement in writing, executed by -such

assignee of A Tl, wherein such assignee agrees with DEGELMAN to be bound ·

by all of the tenns and conditions of this Agreement;

2. the Agreement referred to in number I above shall be in a fonn and content

satisfactory to DEGELMAN acting reasonably;

3. no assignment of this Agreement shall release ATI from any of its obligations

accruing up to the date such assignment becomes effective hereunder;

4. A TI may assign all but not less all of its rights hereunder, and upon such

assignment becoming effective pursuant to the terms hereof, ATI sball have no

further rights in the Patent Rights; and

the assignment may only be made to a party acquiring all or substantially aU of the

business of A TI, or all or substantially all of the line of business of A TI comprising

its blade attachment and materials pushing business.

H. Succession. This Agreement and the rights and obligations granted and undertaken

thereunder shaii be binding upon and inure to the benefit of the Parties hereto, and

their successors, trustee(s) or receiver(s) in bankruptcy and permitted assigns.

I. Headings. The headings in this Agreement are inserted for convenience only and

shall not constitute a part hereof.

J. Guarantee ofPerfonnance. Each Party hereby guarantees the performance of its

Affiliates under this Agreement.

K. Counternarts. This Agreement may be executed in two or more counterparts, each of

which shall be deemed to constitute an original, but all of which together shall

constitute one and the same instrument.

L. This Agreement was negotiated between the Parties, each of whom had the

opportunity to consult with legal counsel during the negotiation, drafting, and

execution of this Agreement, and the Parties agree that this Agreement shall not be

construed against any Party as tbe drafter.

--1 0-


AD-0383


M. No Party has relied on any representation or warranty of any kind in entering into this

agreement, except for those representations and warranties expressly set forth herein.

IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be

executed by their duly authorized representatives in duplicate as ofthe date and year first

above written.

Date:

ATTACHMENT TECHNOLOGIES, INC.

Per: o~zv · Titl7 cFD

DEGELMAN INDUSTRIES LTD.

Date: Mbi \\boos Per; ..")roTT OFGELMAt.J '

--11-

..

D0002IO HIGHLY CONFIDENTIAL COUNSEL ONLY

AD-0384


ATTACHMENT TECHNOLOGIES. Vendor: 176 Degelrnau industries, LTD

1 ! 70 02281006 2128/2006

ATTACHMENT TECHNOLOGIES, INC. 5825 COUNCIL ST. NE CEDAR RAPIDS, IA 52402

2,143.70

KEYBANKNA 56-7041412

2,143.70 CheckAmt:

Check

673

2,143.70 2,143.70

D000211

PAY ***Two Thousand One Hundred Forty-Three and 70/l 00 Dollars***

'l'i) THE Degelman Industries, LTD . DER OF Attn: Scott Degelman

· 272lndustrial Drive Regina SK S4P3Bl ···~ ·~

:,...,,. ,..: HIGHLY CONFiDENTIAL (il SECURITY F!;ATURES INClUDED. DETAILS ON BACK. fij COUNSEL ONLy

_,._,LP'-*~' rtsnacii'll'Rt AD-0385


Batch !D(s} from 1

Report Totals:

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0000213 HIGHLY CONFIDENTIAL COUNSEL ONLY

AD-0387


D000214


D000216

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HIGHLY CONFIDENTIAL COUNSEL ONLY

AD-0390


DEGELMAN ROYAL TIES

For Net Sales durfng the Quarterly Period Ended

Paladin Part# #Units Cumul Net Sales $

Grainger - lnv # 69863 Grainger - lnv # 69863

Totals

11016-0057 1 $ 11020-0057 i $

0 $ 0 $ 0 $ D $ 0 $ 0 $ 0 $ 0 $ 0 $ 0 $ 2 $

})~d f'V\Ql'\ TV!dustrJ.V> Ltd.

tH+n·. Scotf Dt1t1Mtlf\

?-71... :r:rdosl-r\aJ Dnv~

3,285.80 3,878.40

----------

7,144.20

12£31ri0. I ~ 3 8.1,

Cb.\'l.a.do_ . •<J :lf7;: • .: ..•. ~

D000217

30-sep-05

Royalty o/o Royalty$

5% $ 163.29 5% $ 193.92 5% $ -5% $ . 5% $ -5% $ . 5% $ -5% $ -5% $ -5% $ -5% $ -5% $ -5% 357.21

HIGHLY CONFIDENTIA: COUNSEL ONLY

AD-0391


Sweepster & FFC Attachments - 4x4 Snow Push

• Snow Home .- Home Page • Request literature "' Online Literature • Operator's Manuals • Parts & Service • Contact Us

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Page 1 of 1


EXHIBIT 6

EXHIBIT 7Two-Columned Comparison to ‘128 Patent


‘128 Patent Orsolini Drawing

‘128 Patent Tenco Snowblower

‘128 Patent SPC Compact Model


‘128 Patent Degelman Strongbox®


EXHIBIT 8



EXHIBIT

l DIW i&S LfA. roo

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New Stamp

bsb

Typewritten Text

77

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Typewritten Text

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Typewritten Text

7152289.1



Plaintiff,

vs.


Defendants.


MEMORANDUM OF LAW IN SUPPORT OF DEGELMAN INDUSTRIES LTD’SMOTION FOR JUDGMENT AS A MATTER OF LAW AND FOR A NEW TRIAL

PURSUANT TO FED. R. CIV. P. RULES 50 AND 59

HISCOCK & BARCLAY, LLPAttorneys for PlaintiffDegelman Industries Ltd.2000 HSBC Plaza100 Chestnut StreetRochester, New York 14602-2404Telephone (585) 295-4308Facsimile (585) 295-8440

Christopher E. Blank E-Mail [email protected] Counsel

One Park Place300 South State StreetSyracuse, New York 13202-2078Telephone (315) 425-2831Facsimile (315) 703-7367

Michael A. Oropallo E-Mail [email protected] M. Nichols E-Mail [email protected] Counsel


7152289.1

TABLE OF CONTENTS

TABLE OF AUTHORITIES ......................................................................................................... iv

INTRODUCTION .......................................................................................................................... 1

PRELIMINARY STATEMENT .................................................................................................... 1

ARGUMENT.................................................................................................................................. 2

POINT I LEGAL STANDARDS .......................................................................................... 2

POINT II THE DEFENDANTS FAILED TO OVERCOME THEPRESUMPTION OF VALIDITY........................................................................... 2

A. There Was No Substantive Evidence Presented On The TencoSnowblower, Which Is Not Analogous Prior Art........................................... 4

B. Defendants Failed To Present Evidence Of Any Motivation ToCombine Elements Within The Applicable Art. ............................................ 6

C. The Unrebutted Evidence Of Secondary Considerations Compels AFinding Of Non-Obviousness......................................................................... 8

D. The Court Erred In Instructing The Jury That A Lesser StandardApplies To Evidence Not Considered By The Patent ExaminerDuring Prosecution, Nor Was There Any Testimony On ThisSubject. ........................................................................................................... 9

POINT III THE ADMISSION AND USE OF THE ORSOLINI DRAWINGWAS PREJUDICIAL ERROR WARRANTING A NEW TRIAL...................... 11

A. The Orsolini Drawing Is Not A Printed Publication. ................................... 14

B. The Orsolini Drawing Is Incomplete. ........................................................... 14

C. The Orsolini Drawing Is Not Evidence Of The Final Product, Or OfWhat May Have Been Used Publicly. .......................................................... 15

POINT IV DEGELMAN IS ENTITLED TO A NEW TRIAL ON DESIGNPATENT INFRINGEMENT ................................................................................ 16

A. It Was Improper To Allow Heyer To Testify On Infringement. .................. 17

B. Defendants’ Ordinary Observer’s Opinions On Infringement WereBased On The Wrong Standard And, Therefore, Confused The Jury.......... 19


- iii -7152289.1

C. In Deciding The Issue Of Design Patent Infringement, The JuryShould Have Been Allowed To Compare Degelman’s CommercialEmbodiment To Defendants’ Accused Products.......................................... 20

D. In Deciding The Issue Of Design Patent Infringement, The JuryShould Have Been Allowed To Consider Evidence Of ConfusionBetween Degelman’s Commercial Embodiment And Defendants’Accused Products. ........................................................................................ 21

POINT V THE ‘128 PATENT COULD NOT HAVE BEEN FOUND TO BEINVALID AND, AT THE SAME TIME, NOT-INFRINGED BYTHE ACCUSED PRODUCTS ............................................................................. 22

CONCLUSION............................................................................................................................. 25


- iv -7152289.1

TABLE OF AUTHORITIES

Cases Page

Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365 (Fed. Cir.2006) ......................................................................................................................................... 16

Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir.1985) ........................................................................................................................................... 8

Barbed Wire Patent, 143 U.S. 275 (1882).............................................................................. 11, 13

Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815 (Fed. Cir. 1992) ............................. 17, 20, 22

Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir.2001) ................................................................................................................................... 14, 24

Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254 (Fed. Cir. 2007) ..................................... 7

Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098 (Fed. Cir. 2003)......................................... 11

Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369 (Fed. Cir. 2006) ........................ 8

Eurand, Inc. v. Mylan Pharms., Inc., 676 F.3d 1063 (Fed. Cir. 2012)........................................... 3

Gorham Co. v. White, 81 U.S. 511 (1872).................................................................................... 20

Graham v. John Deere Co., 383 U.S. 1 (1966) ..................................................................... passim

Heidelberger Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d1068 (Fed. Cir. 1994).................................................................................................................. 5

In re Reuter, 670 F.2d 1015 (C.C.P.A. 1981)............................................................................... 15

Isley v. Motown Record Corp., 69 F.R.D. 12 (S.D.N.Y. 1975) ...................................................... 2

Keystone Retaining Wall Sys., Inc. v. Rockwood Retaining Wall, Inc., No. 00-496(RHK/SRN), 2001 U.S. Dist. LEXIS 26272 (D. Minn. Oct. 9, 2001) ..................................... 22

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)........................................................................ 6

Lacks Indus. Inc. v. McKechnie Vehicle Components USA Inc., 322 F.3d 1335(Fed. Cir. 2003)......................................................................................................................... 13

Leader Techs., Inc. v. Facebook, Inc., 678 F.3d 1300 (Fed. Cir. 2012) ......................................... 2

Lee v. Dayton-Hudson Corp., 838 F.2d 1186 (Fed. Cir. 1988) ........................................ 16, 19, 20


- v -7152289.1

Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) .................................................... 16

Microsoft Corp. v i4i Ltd. P’ship, 564 U.S. ___, 131 S. Ct. 2238 (2011) .................................... 10

OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997).......................... 16, 17, 22

Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285 (Fed. Cir.2012) .................................................................................................................................. passim

Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561 (Fed. Cir. 1987) ...................................... 3, 7

Parker v. Reda, 327 F.3d 211 (2d Cir. 2003) ..................................................................... 2, 16, 19

Song v. Ives Labs., Inc., 957 F.2d 1041 (2d Cir. 1992) .................................................................. 2

United States v. Arboleda, 20 F.3d 58 (2d Cir. 1994) .................................................................... 7

Statutes

35 U.S.C. § 282............................................................................................................................... 9

Rules

Fed. R. Civ. P 50............................................................................................................................. 2


7152289.1

INTRODUCTION

Plaintiff Degelman Industries Ltd. (“Degelman”), by and through undersigned counsel,

moves this Court pursuant to Federal Rules of Civil Procedure, Rules 50 and 59 for judgment as

a matter of law and/or a new trial on the following: (1) for Design Patent Infringement, including

willful infringement; (2) for willful Utility Patent Infringement; (3) that the patents are valid and

enforceable; and (4) for such other and further relief as the Court deems just and proper.

PRELIMINARY STATEMENT

The jury’s verdict must be set aside, or a new trial ordered, because: 1) the trial record

lacks the requisite proof necessary to make out a prima facie case of invalidity, let alone

sufficient evidence to support a jury finding that the patents-in-suit are invalid; 2) it was error to

admit over objection the Orsolini Drawing, as it was admittedly not proof of the actual plow

allegedly used, and which lead to jury confusion and an invalidity finding that was without

evidentiary support; 3) it was error to admit, over objection, the ultimate opinion testimony of

Jerre Heyer, who Defendants conceded was not an expert witness, and which unduly influenced,

and confused the jury on the issue of design patent infringement; 4) the ‘128 Design Patent was

infringed as a matter of law; 5) alternatively, the jury’s inconsistent findings regarding the ‘128

Patent warrant a new trial – the similarity between the ‘128 Patent and the Accused Products is

far closer than the prior art - the jury did not find infringement, yet found the ‘128 Patent invalid;

6) the oral testimony concerning an alleged prior public use was insufficient and uncorroborated;

7) it was error to charge the jury on alleged prior art not considered by the PTO; 8) the patents

were willfully infringed; and 9) the Court erred in not admitting the proffered evidence of actual

confusion testimony of contemporaneous industry witnesses, and in not allowing the jury to

compare the commercial embodiments of the patented designs to the accused devices, especially,


7152289.1 - 2 -

because the plans and drawings for the commercial embodiments all came from Degelman’s

Solid Works software program, the same source of the drawings for the Design Patents.

ARGUMENT

POINT I

LEGAL STANDARDS

The law of the regional circuit governs the standards on a motion for a new trial. Leader

Techs., Inc. v. Facebook, Inc., 678 F.3d 1300, 1305 (Fed. Cir. 2012). The Second Circuit

recognizes a “trial judge hearing a motion for a new trial ‘is free to weigh the evidence himself

and need not view it in the light most favorable to the verdict winner.’” Song v. Ives Labs., Inc.,

957 F.2d 1041, 1047 (2d Cir. 1992). A new trial may be granted even if there is substantial

evidence to support the verdict. Id. A new trial is thus appropriate if “the jury has reached a

seriously erroneous result,” (id.), or “‘the verdict is a miscarriage of justice,’” for any reason,

including erroneous evidentiary rulings and improper and prejudicial conduct of counsel. See

Parker v. Reda, 327 F.3d 211, 213 (2d Cir. 2003); see also Isley v. Motown Record Corp.,

69 F.R.D. 12, 16 (S.D.N.Y. 1975) (trial judge has power grant new trial, even if there is

substantial evidence to foreclose a directed verdict). Where there is insufficient evidence to

support the jury’s findings, judgment should be entered as a matter of law. Fed. R. Civ. P 50.

POINT II

THE DEFENDANTS FAILEDTO OVERCOME THE PRESUMPTION OF VALIDITY

An infringer has a heavy evidentiary burden in order to rebut a duly issued patent’s

statutory presumption of validity. See Graham v. John Deere Co., 383 U.S. 1, 17 (1966).

Because obviousness is a question of law, a court must set aside an obviousness verdict that


7152289.1 - 3 -

lacks the proof dictated by Graham. Id. Here, the record is devoid of any testimony or

evidence: 1) assessing or explaining the scope and content of the prior art, let alone what if any

differences exist between the prior art and the claims at issue; 2) explaining or assessing the

requisite level of ordinary skill in the pertinent art; nor 3) that such an undefined hypothetical

person had a motivation or suggestion to combine the purported prior art teachings. Id.; see

Eurand, Inc. v. Mylan Pharms., Inc., 676 F.3d 1063, 1075 (Fed. Cir. 2012).

It is not enough to show the individual elements of a patent’s claim were known in the

prior art. See Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987)

(“[E]lements of separate prior patents cannot be combined when there is no suggestion of such

combination anywhere in those patents.”) (emphasis added). Such a hindsight analysis has been

countenanced by the Federal Circuit, mandating judgment as a matter of law, or a remand for a

new trial on the subject, especially when the necessary proof set forth in Graham is lacking. See

Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1298 (Fed. Cir. 2012).

Here, there was no expert testimony on the issue of invalidity or obviousness. No person

took the stand to explain the scope and content of the prior art. No person took the stand to

explain what requisite skill would be needed for a person skilled in the art (let alone what that art

was). But what is most fatally lacking, was any suggestion, reason or motivation to combine the

suspect references. Even the evidence presented on claimed prior art references is insufficient to

overcome the presumption of validity. It was limited to suspect, inconsistent and tainted

testimony about a plow that was supposedly used over thirty years ago. It also lacked specificity

let alone any contemporaneous documentary proof of its purported use, such as where it was

used, when it was used, or what it looked like, except for a couple of blurry photographs that

were admitted by the witnesses to be indiscernible.


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Defendants presented no evidence of the Graham factors. They also failed to prove by

clear and convincing evidence what device was supposedly used back in the 1970’s or 80’s.

Such speculation, lacking any connection, (Fed. R. Evid. 104), and the bare and conclusory

comments of counsel during closing, is insufficient as a matter of law to overcome the

heightened clear and convincing evidentiary standard necessary to invalidate a duly issued patent

after examination by the United States Patent and Trademark Office, and to overcome the

recognized presumption of validity. Allowing a jury to void the extensive efforts of Degelman,

and the strictures of the PTO in issuing the Patents, without the Court exercising its gatekeeper

role to decide obviousness as a matter of law, would be an injustice, subjecting patents to the

unfettered whims of ordinary people, and having a chilling effect on innovation and our already

questioned patent system.

A. There Was No Substantive Evidence Presented On The TencoSnowblower, Which Is Not Analogous Prior Art.

Obviousness is an issue of law. Eli Lilly & Co. v. Zenith Goldline Pharms., Inc.,

471 F.3d 1369, 1380 (Fed. Cir. 2006). The Court has the exclusive power to assess whether

Defendants have met that burden. Because Defendants failed to put on a witness to explain what

the snow blower does, or why it was claimed to be prior art, there are no “facts” to support the

consideration of such evidence. Outside the Box Innovations, 695 F.3d at 1298 (“[The

obviousness] inquiry . . . must be made in the context of the field of the invention.”).

The only time the Tenco snowblower was mentioned (aside from counsel’s prejudicial

closing argument) was through an authenticating witness1. Mr. Nicholas was not a technical

witness, nor did he testify in that regard. He only said that Ithaca Airport bought and owns such

1 The exhibit was admitted for that limited purpose. (See Fed. R. Evid. 104(b).)


7152289.1 - 5 -

a piece of equipment. (See Trial Tr. Defs. Nicholas [Dkt. No. 232] 504:21-505:5.) There was no

“connecting dots.” Conspicuously absent from Defendants’ proof was any mention of what the

snowblower does, how it operates, or how its features would have been considered relevant by a

person of ordinary skill in the art when searching for prior art. Heidelberger Druckmaschinen

AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1071 (Fed. Cir. 1994).

Neither a court nor a jury can judge the worth of the claimed prior art in a vacuum. As

such, counsel’s remarks during closing argument lacks support in the record. As such it should

be disregarded altogether. Id. (“[References] are described as ‘analogous art’, when a person of

ordinary skill would reasonably have consulted those references and applied their teachings in

seeking a solution to the problem that the inventor was attempting to solve.”); see Outside the

Box Innovations, 695 F.3d at 1298 (“The uniform thread of [the obviousness] inquiry is that it

must be made in the context of the field of the invention.”).

Here, there was no testimony to show whether the Tenco snowblower is in the same field

of endeavor as the patents-in-suit. It cannot form the basis for the jury’s invalidity finding, and

without it, that finding must be set aside (or a new trial granted). The snowblower operates

different from a snow plow; Tenco draws snow through augers, and blows snow out through an

exhaust chute. Though unnecessary given the lack of substance, Degelman had no opportunity

to refute a claim that the Tenco is analogous prior art (other than in its pretrial motions), because

no one was called by Defendants to assert such.

Nor was there any testimony as to why a person of ordinary skill in the art “would

reasonably have consulted” the snowblower references, let alone what teachings the Tenco

reference had to offer. The patented cone gusset design at issue was an ornamental and

innovative alternative to the post sidewall reinforcements in the prior that eliminated the problem


7152289.1 - 6 -

of snow and ice building up in the posts. There was no testimony or any suggestion that the

Tenco snowblower taught two of the primary elements of the utility ‘576 Patent, which are a

main blade and a side wall. Though the absence of any substantive testimony is fatal to

Defendants claimed reference, so too is the totally different purpose of a snowblower – funneling

snow through augers. The only “testimony” on the Tenco reference came not from a witness, but

from Defendants’ counsel during summation:

[W]e think it’s also clear that it would have been obvious to aperson of ordinary skill in the art to combine the wedge-shapedgusset that’s in the Tenco snowblower – to combine the wedge-shaped gusset present in the Tenco snowblower or present in theOrsolini-Daniels pull plow with a downwardly depending supportpost present in many containment plows before DegelmanIndustries began its R and D project.

(Trial Tr., O’Brien Closing [Dkt. No. 230] 692:15-21) (emphasis supplied). If it seems as though

that assertion came out of thin air, that’s because it did. And it is why closing arguments are not

evidence and a court can overturn an erroneous verdict.

B. Defendants Failed To Present Evidence Of Any Motivation ToCombine Elements Within The Applicable Art.

Obviousness is not the same as “hindsight.” Courts and the PTO have consistently

guarded against such an ad hoc analysis by requiring some reason why a person of ordinary skill

in the art would take separate pieces of prior art and combine them. See KSR Int’l Co. v. Teleflex

Inc., 550 U.S. 398, 421 (2007). It is black letter law that simply showing individual elements of

a claim existing separately in other patents is insufficient to show obviousness. Id., at 418.

Therefore, to assert obviousness, one must present evidence why those separate elements would

have been obvious to combine. Such evidence is completely lacking here.

Defendants produced no expert testimony on the issue of invalidity, nor is there any

other competent evidence assessing or explaining the scope and content of the prior art, or any


7152289.1 - 7 -

similarities or differences between the prior art and the claims at issue. Also absent was any

expert testimony or admissible evidence explaining or assessing the requisite level of ordinary

skill in the pertinent art, let alone how such an undefined hypothetical person would have been

motivated by to combine the separate prior art teachings. See Daiichi Sankyo Co., Ltd. v.

Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Defendants thus failed to present the

necessary predicate evidence to allow the jury to make the leap from hindsight to obviousness.

There was not a scintilla of evidence informing the jury what the “scope and content of the prior

art” was. See Graham, 383 U.S. at 17. Other than counsel showing the jury the Orsolini

Drawing and close-ups of the Tenco snow-blower, there was no other proof addressing the state

of the art2. No one explained to the jury what if any similarities or differences existed between

the prior art and the claims at issue. There was simply no testimony about the prior art other than

efforts to authenticate Tenco or attempts to describe the use of the Daniels plow. The most the

jury heard on obviousness was from Defendants’ counsel, on closing argument – which of course

is not evidence. United States v. Arboleda, 20 F.3d 58, 61 (2d Cir. 1994). (See Trial Tr.,

O’Brien Closing [Dkt. No. 230] 692:15-21.) Compare with Panduit, 810 F.2d at 1570 (“[O]ne

answering the [obviousness] question is drawing a legal conclusion.”)

Graham also requires proof sufficient to assess the level of ordinary skill in the art, and

whether such a fictional person would find the patent obvious “in the context of the prior art.”

Outside the Box Innovations, 695 F.3d at 1298. Moreover, even with a purported motivation to

combine, or other teaching or suggestion presented through expert testimony, Graham forbids

the jury from engaging in “hindsight” analysis. As the Federal Circuit has recognized, “[t]he foil

2 Degelman, on the other hand, though not its burden to do so, provided its detailed “competitive analysis,” thatshowed the state of the art prior to its patented cone gusset innovation. (See Trial Tr., Pl. S. Degelman [Dkt.No. 224] 56:15-20, 57:10-:58:8, 62:15-63:17; Trial Tr., Pl. S. Degelman (cont.) [Dkt. No. 225] 100:9-22.)


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to judicial hindsight is the testimony of persons experienced in the field of the invention.” Id.,

at 1297. Here, Defendants failed to advance any such obviousness testimony.

C. The Unrebutted Evidence Of Secondary Considerations Compels AFinding Of Non-Obviousness.

One factor in assessing obviousness is evidence of secondary considerations tending to

show the invention is nonobviousness. Graham, 383 U.S. at 17. Because this evidence

objectively shows why the invention is a successful departure from the prior art, courts have

stated, such secondary considerations, “may be the most pertinent, probative, and revealing

evidence available . . . in reaching a conclusion on the obviousness/nonobviousness issue.”

Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 306 (Fed. Cir. 1985).

Degelman presented evidence at trial showing a long-felt but unmet need (to prevent snow from

building up inside the posts in the plow), commercial success (Defendants’ sales of infringing

plows), failure of others in the field, and evidence of copying by others. See id., at 291.

Both parties’ witnesses identified problems in the containment plow industry, including

snow and ice buildup, and in particular snow becoming trapped behind the prior art sidewall-

reinforcing support tubes. (See Trial Tr., Defs. Geller [Dkt. No. 215] 19:7-17; Trial Tr., Pl.

Weagley Direct [Dkt. No. 205] 111:18-21; Trial Tr., Pl. S. Degelman (cont.)

[Dkt. No. 225] 155:8-11.) Additionally, there was unrebutted evidence that Defendants made, on

average, two-thousand units of the accused products per year. (Trial Tr., Pl. Weagley Cross

[Dkt. No. 206] 28:4-6.)

Moreover, Degelman presented unrebutted evidence that over the mid- to late-1990s and

into the early-2000s, innovation in the containment plow industry was at a standstill, with

products overwhelmingly featuring a single-tube or dual-tube sidewall-reinforcing design. See

Eli Lilly, 471 F.3d at 1380 (noted that market struggled for over a decade to find an alternative to


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the predecessor drug). (See Trial Tr., Pl. S. Degelman [Dkt. No. 224] 64:14-21, 73:2-9, 74:2-5,

89:2-12.) Before Degelman’s invention, no one had been able to resolve these problems. (Trial

Tr., Pl. Weagley Direct [Dkt. No. 205] 111:15-21; Trial Tr., Defs. Geller [Dkt. No. 215] 15:14-

16:9.)

The record also includes evidence showing the cone-shaped design was copied by

Defendants and others. (Compare Trial Joint Exhibits (“J__”) 1-4 [Declaration of Michael A.

Oropallo in Support of Degelman’s Motion for Judgment As A Matter Of Law And For A New

Trial, declared Apr. 15, 2013 (“Oropallo Decl.”), Exs. 1-4], with Trial Joint Exhibit J174

[Oropallo Decl., Ex. 5].) There was also was evidence that others licensed Degelman’s

invention. (See Trial Tr., Pl. S. Degelman (cont.) [Dkt. No. 225] 180:10-17; Trial Joint Exhibit

(“J__”) 306 [Oropallo Decl., Ex. 6].)

D. The Court Erred In Instructing The Jury That A Lesser StandardApplies To Evidence Not Considered By The Patent Examiner DuringProsecution, Nor Was There Any Testimony On This Subject.

The inconsistency of the verdict is proof the jury was confused by the different burdens

of proof. Compounding that confusion was the Court’s instruction that there are two levels of

prior art that must be assessed by the jury. If the Court finds that neither proffered reference is

prior art, or that Defendants have not met their burden under the Graham factors, it need not

address this issue. However, the tripartite burden of proof contained in the jury instructions was

error.

During the sixty (60) plus years since Congress codified the common law presumption of

patent validity, (35 U.S.C. § 282), the clear and convincing standard has vindicated the public

policy that “primary responsibility for sifting out unpatentable material lies in the Patent Office.”

See Graham, 383 U.S. at 18. The U.S. Supreme Court recently reaffirmed the integrity of the


7152289.1 - 10 -

clear and convincing burden of proof standard for patent invalidity. See Microsoft Corp. v i4i

Ltd. P’ship, 564 U.S. ___, 131 S. Ct. 2238, 2252 (2011). Where the evidence adduced at trial

includes purported prior art that was not before the PTO examiner, the jury instructions on

invalidity must avoid giving the impression that the clear and convincing standard is somehow

relaxed – it is not. See id., at 2251. Although declining to offer a precise formulation as to what

instructions juries should receive, the Supreme Court said:

[T]he jury may be instructed to evaluate whether the evidencebefore it is materially new, and if so, to consider that fact whendetermining whether an invalidity defense has been proved byclear and convincing evidence.

Id. (emphasis added). Defendants’ requested instruction was improper for several reasons. First,

there must be proof that the purported reference is prior art. Second, it must be shown to be

“materially new.” Third, it must be shown to be different from what was considered by the PTO.

There was no such evidence presented during trial. The file histories of the Patents-in-Suit were

not even discussed. Consequently, it was error to give this instruction. In no event would such

circumstances ever relax the clear and convincing standard. See id. Here, the requested

instruction went far beyond i4i, expressly stating the presentation of any prior art reference not

considered by the examiner may be given more weight, thus upsetting the mandatory clear and

convincing burden of proof, and the statutory presumption of validity. The instruction stated:

When a party challenging the validity of a patent presents evidencethat was not considered by the examiner during the prosecution ofthe application which resulted in the issued patent, such newevidence may be given more weight and may make it easier tosatisfy that party’s clear and convincing evidence burden.

(Trial Tr., Jury Charge [Dkt. No. 230] 777:3-8.) Here, the instruction bypassed the necessary

“materially new” threshold, and insinuated to the jury that if the alleged prior art – materially

new or not –was not listed on the patent, then it was easier for the jury to find invalidity. The


7152289.1 - 11 -

damage caused by the improper instruction is further compounded by counsel’s statements

during closing argument, when he told the jury:

[I]f references are not considered by the U.S. PTO during thepatent application process, then they need not be scrutinized ascarefully as ones that were actually before the PTO.

(Trial Tr. at 706:1-7, Mar. 7, 2013 (emphasis added).)

The improper jury instruction, coupled with Defendants’ counsel’s improper instructing

of the jury, resulted in the jury’s complete misapprehension of the standard of proof of invalidity.

The message to the jury was that, regardless of the content of the prior art, if it was not before the

PTO, they can scrutinize it less heavily, while weighing it more heavily, in the invalidity

analysis. As such, invalidity cannot stand. See Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d

1098, 1108-09 (Fed. Cir. 2003).

POINT III

THE ADMISSION AND USE OF THE ORSOLINI DRAWINGWAS PREJUDICIAL ERROR WARRANTING A NEW TRIAL

The Orsolini Drawing is not prior art, and Defendants acknowledged it was not. (See

Report and Recommendation on Defendants’ Motion for Partial Summary Judgment (“R&R

Defs.’ MPSJ”), [Dkt. No. 131], at 38-39 of 50, Pt. VII.A.1.; Degelman’s Motion In Limine to

Exclude the Orsolini Drawing, and References to the Device Depicted Therein, From Being

Admitted into Evidence at Trial, filed Jan. 18, 2013 (“Orsolini MIL”), Ex. 2, Defendants’

Response to Plaintiff’s First Set of Interrogatories (“Defs. 1st Interrog. Resp.”), [Dkt. No. 174-4],

at 8 of 33, Resp. No. 3.) Unlike a printed publication, or a previously issued patent, where the

invention is described in detail, evidence of a prior public use is prone to speculation and faded

memories and demands corroboration. See Barbed Wire Patent, 143 U.S. 275 (1882).


7152289.1 - 12 -

Here, Defendants claimed that a pull-from-behind snow plow was developed by Greg

Daniels and used publicly in the streets of suburban Chicago over thirty years ago. As proof of

this purported use, Defendants offered only the bare oral testimony in the form of pretrial

depositions of three individuals: Greg Daniels. Leslie Craig, and Robert Orsolini3. Degelman

was not even given the opportunity to cross-examine these witnesses. Oral testimony, without

contemporaneous documentary evidence to corroborate the alleged public use, is insufficient to

meet the clear and convincing burden of proof to establish invalidity. See Barbed Wire Patent,

143 U.S. 275 (1882). The Orsolini Drawing is not evidence of corroboration. Simply put, it is

not prior art, but was treated as such.

Defendants claimed the Drawing was offered solely as corroboration, and the Court so

instructed the jury. (See Trial Tr., Orsolini, at 611:7-11, Mar. 6, 2013 (“MAGISTRATE JUDGE

FELDMAN: The defendants have admitted that [the Orsolini Drawing] is not prior art. The

drawing may be considered by you only for the limited purposes of corroborating the testimony

of some witnesses that claim to have used a snowplow publicly in the 1970s.”).) However, and

despite representing to the Court and opposing counsel that it would not use the Drawing as a

surrogate for prior art, that is exactly what Defendants’ counsel did. Ignoring the Court’s

mandate, counsel featured an enlargement of the Drawing during closing argument, placing it

within inches of the jurors, and referring to it both expressly and implicitly as “prior art.” (See,

e.g., Trial Tr., O’Brien Closing [Dkt. No. 230] 692:3-9.) The Drawing is simply not prior art, is

3 Orsolini acknowledged he did not see the plow publicly used. (Trial Tr., Defs. Orsolini [Dkt. No. 233] 614:3-4.)Therefore, his testimony is irrelevant. Even if he did fabricate a snow plow, and even if it looked like the plow inthe Drawing, there is simply no documentary proof (other than blurry photographs) that it was that plow that wasused publicly. Such evidence is insufficient to overcome the presumption of validity of the Patents-in-Suit. SeeBarbed Wire Patent, 143 U.S. 275 (1882).


7152289.1 - 13 -

incomplete, and is not corroboration of the use of a plow. Its admission was prejudicial, was

misused by counsel, and caused jury confusion.

The inconsistent and contradictory oral testimony of Greg Daniels and Leslie Craig

individually or collectively acknowledged the use of several plows some thirty-five years ago,

during an indeterminate time period, during non-daylight hours, and in an unidentified area. The

only documentary evidence presented was a few blurry photographs that even the witnesses

admitted did not identify the structural features on the plows, let alone which of the several pull-

plows Daniels claimed to own during the period. (See Trial Defendants Exhibit (“D___”) 77

[Oropallo Decl., Ex. 8].) This evidence is not enough to prove a prior public use.

Unlike a printed publication, evidence of a prior “public use” requires contemporaneous

documentary evidence of that “use” (what, where, when and how), by the heightened clear and

convincing standard. See Barbed Wire Patent, 143 U.S. 275 (1882); Lacks Indus. Inc. v.

McKechnie Vehicle Components USA Inc., 322 F.3d 1335, 1350 (Fed. Cir. 2003). In the Barbed

Wire case, the court held that twenty-four witnesses’ oral testimonies were insufficient to prove

the existence of an alleged prior art barbed wire design that had supposedly been exhibited at a

county fair. See 143 U.S. at 289. The lesson is clear, it does not matter how many people “say”

they saw something, oral testimony is not enough to overcome the presumption of validity

accorded issued patents. Here, not only is the proffered oral testimony insufficient as a matter of

law, the Drawing showed only a pre-fabrication perspective view of a snow plow that may or

may not have been built, was incomplete, contained no dimensions, was admittedly insufficient

to build it, and Defendants confused the jury to use it as a printed publication, when it was not.

The role of the Orsolini drawing corroborating the proffered testimonies is quite limited.

Orsolini admitted he did not witness any public use, and his testimony should be disregarded


7152289.1 - 14 -

altogether. The faded memories of these witnesses are exemplified by their inconsistencies. For

example, they differ with one another regarding the structural features, dimensions, and even

how many plows there were. (Trial Tr., Defs. Craig Depo. [Dkt. No. 233] 632:3-5, 635:24-

636:4.) Orsolini even acknowledged he would have to “guess” as to what the dimensions were.

(Trial Tr., Defs. Orsolini Depo. [Dkt. No. 233] 612:19 (emphasis added).)

It is difficult for lawyers and judges to understand the nuances of patent law, let alone to

expect lay jurors to limit their consideration of a non-prior art drawing. Especially when

Defendants’ counsel features it during his closing argument. Bottom line, in absence of the

Orsolini Drawing, jurors would be left to guess at what the plow that was supposedly used many

years ago, looked like. As such, there was no basis to invalidate the design patents-in-suit. See

Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001).

A. The Orsolini Drawing Is Not A Printed Publication.

The Orsolini Drawing is admittedly not prior art. Defendants acknowledged such.

(Degelman’s Motion In Limine to Exclude the Orsolini Drawing, and References to the Device

Depicted Therein, From Being Admitted into Evidence at Trial, filed Jan. 18, 2013 (“Orsolini

MIL”), Memorandum of Law (“Memo”), [Dkt. No. 174-1], at 4 of 21, n.3; id., Orsolini MIL,

Ex. 2, [Dkt. No. 174-4], at 8 of 33, Resp. to Interrog. No. 3 (“The defendants do not contend that

Exhibit “A” [the Orsolini Drawing] is a printed publication.”) (emphasis added).) (See Trial Tr.,

Defs. Orsolini Depo. [Dkt. No. 233] 607:1-4.)

B. The Orsolini Drawing Is Incomplete.

The drawing contains no dimensions. (Trial Tr., Orsolini, at 612:10-12, Mar. 6, 2013

(“Q. Does [the Orsolini Drawing] contain any dimensions? . . . A. No.”)) It contains no

measurements at all. (Id. [Dkt. No. 233] 612:16-21.) In fact, of all the possible measurements


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and dimensions that the alleged Daniels pull plow could have had, Orsolini testified he recalled

only that the plow “was approximately 6 feet wide, approximately 2 feet tall” and only that

because he “recall[ed] the vehicle it fit on . . . .” (Id. [Dkt. No. 233] 612:16-18.) “Everything

else,” including the measurements, angles, and orientation of any gussets, “would just be a

guess.” (Id. [Dkt. No. 233] 612:19 (emphasis added).)

C. The Orsolini Drawing Is Not Evidence Of The Final Product, Or OfWhat May Have Been Used Publicly.

The Orsolini Drawing is not evidence of public use and as such is irrelevant. Defendants’

burden is to show what was used publicly, not what may have lead to public use. (See Orsolini

MIL, Memo, [Dkt. No. 174-1], at 11-18 of 21, Pt. II.) It is the publicly used plow that must be

corroborated, not the Drawing. Defendants’ evidence fails to satisfy the multi-factor test for

corroboration of oral testimony of an alleged prior public use, as set forth in In re Reuter,

670 F.2d 1015, 1021, n.9 (C.C.P.A. 1981) ((1) relationship between corroborating witness and

alleged prior user; (2) time period between event and trial; (3) interest of corroborating witness

in the subject matter in suit; (4) contradiction or impeachment of witness’ testimony; (5) extent

and details of corroborating testimony; (6) witness’ familiarity with the subject matter of the

patented invention and the prior use; (7) probability that prior use could occur considering state

of the art at the time; and (8) impact of invention on the industry, and commercial value of its

practice). Degelman’s arguments on these point, as advanced in motions in limine, (see Orsolini

MIL, Memo, [Dkt. No. 174-1], at 11-18 of 21, Pt. II), are incorporated herein by reference.

The incompetency of the oral testimony is exemplified in testimony: 1) that there were

multiple pull-plows used by Daniels, and there was no evidence showing what they all looked

like; 2) there was testimony that the pull-plow did not work; 3) there was no corroboration about

where the various plows were used’ 4) there was no corroboration about when the various plows


7152289.1 - 16 -

were used, when such use began, and when such use ended; 5) the photographs do no show the

features of the plow; 6) there is no documentary evidence showing the features of the plows; and

7) the features of the plows, at least those within the box of any plow, were not in the public’s

view. (Trial Tr., Defs. Craig [Dkt. No. 233] 634:21-635:14.)

Degelman repeatedly objected to the Orsolini Drawing, expressly incorporating its prior

MIL arguments, and specifically referring to the Special Master’s Report and Recommendation

on summary judgment, concerning corroboration of prior public use. (Trial Tr., Defs. Orsolini

Depo. [Dkt. No. 233] 609:11-17; see R&R Defs.’ MPSJ [Dkt. No. 131], at 38-39 of 50,

Pt. VII.A.1.) However, even with the limiting instruction, (Trial Tr., Defs. Orsolini Depo. [Dkt.

No. 233] 611:3-13), its admission was error justifying a new trial. Parker, 327 F.3d at 213.

POINT IV

DEGELMAN IS ENTITLED TO A NEW TRIAL ONDESIGN PATENT INFRINGEMENT4

To establish design patent infringement, the court first construes the claims, and then

compares such construed claims to the accused device. OddzOn Prods., Inc. v. Just Toys, Inc.,

122 F.3d 1396, 1405 (Fed. Cir. 1997); see Markman v. Westview Instruments, Inc., 517 U.S. 370,

374 (1996); Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188, (Fed. Cir. 1988); Amini

Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1370-71 (Fed. Cir. 2006) The

Court construed the terms of the Design Patents to be: “the overall visual impression of the

ornamental design,” as to the ‘097: “of a snow moving apparatus with gusset as set forth in the

drawings of the patent”; as to the ‘128: “of a gusset used in a snow moving apparatus as set forth

in the drawings of the patent”; as to the ‘129 Patent: “of a snow moving apparatus with gusset as

4 Given the evidence at trial, Degelman also respectfully requests judgment as a matter law, or a new trial, on theissues of willful infringement of the utility patent-in-suit, and of willful infringement of the design patents-in-suit.


7152289.1 - 17 -

set forth in the drawings of the patent.” (Decision and Order, entered Dec. 23, 2008 (“Claim

Construction Order”) [Dkt. No. 66] at 21 of 21.)

The second step of the design patent infringement analysis is to compare the properly

construed claims to the accused product(s). See OddzOn Prods., 122 F.3d at 1405. This

comparison step “requires the fact-finder to determine whether the patented design as a whole is

substantially similar in appearance to the accused design.” Id. (emphasis added). The patented

design and the accused product need not be identical for there to be infringement. Braun Inc. v.

Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992).

A. It Was Improper To Allow Heyer To Testify On Infringement.

The Report and Recommendation On Expert Opinions and Reports, adopted by the

Court’s Decision and Order, concluded that Heyer is barred from testifying on infringement:

[I]t is recommended that the testimony of Mr. Heyer as an ordinaryobserver be permitted to assist the Court and the jury regarding theexperience of an ordinary observer, the appearance of the accusedproducts, the appearance of the apparatus illustrated and claimed inthe Design Patents, and the similarities and difference betweenthem. It is further recommended that Mr. Heyer be precludedfrom testifying on the ultimate issue of infringement and that allstatements contained in his Report as to the ultimate issue ofinfringement not be considered.

(Report and Recommendation On Expert Opinions and Reports, filed May 27, 2011, (“Experts

R&R”), [Dkt. No. 133], at 19 of 36 (emphasis added); see Dec. 23rd D&O [Dkt. No. 153] at 34

of 34 (“Heyer may not, however, testify on the ultimate issue of infringement, as Heyer lacks

any specialized legal knowledge or training to opine as an expert as to whether or not the

asserted patents are infringed”) (emphasis added).) The Court specifically noted that Heyer’s

testimony “is simply part of a larger body of evidence that the trier of fact will need to consider

in determining whether or not the accused products infringe the design patents.” (Dec. 23rd


7152289.1 - 18 -

D&O [Dkt. No. 153] at 20 of 34.) That “larger body of evidence” to be considered by the jury

also includes the patents-in-suit, images of the accused products, and testimony about

Defendants’ own confusion between Degelman’s Strongbox® – the commercial embodiment of

the patents-in-suit – and their own accused products. (See Trial Tr., Pl. S. Degelman (cont.)

[Dkt. No. 225] 170:21-171:3, 171:9-23, 172:11-18, 172:25-173:12.)

However, Defendants confused the jury by presenting impermissible testimony – over

Degelman’s objections – of their purported ordinary observer on design patent infringement,

Jerre Heyer. After well over an hour of testimony largely about functional differences between

the design patents-in-suit and the accused products, Heyer testified to having “an overall visual

impression” of the ‘097 Patent and of each of the accused products, and that the designs in the

‘097 Patent and the accused products were substantially dissimilar. (Trial Tr., Defs. Heyer [Dkt.

No. 216] 50:21-51:5, 51:17 (“Q. [D]o you have an opinion as to whether or not the design of the

‘097 patent and the design of the accused products were substantially similar? * * * THE

WITNESS: They were actually dissimilar.”) (objection colloquy omitted).)

Heyer gave the same impermissible opinion about having formed an overall visual

impression of the ‘129 Patent, and that based on that impression the design of the ‘129 Patent

and the design of the accused products are substantially dissimilar. (Trial Tr., Defs. Heyer [Dkt.

No. 216] 53:12-18, 53:25-54:3 (“Q. [D]o you have an opinion as to whether or not the design of

the ‘129 patent and the design of the accused products is substantially similar? * * * THE

WITNESS: Yes, I have an opinion. Q. What’s that opinion? A. They’re dissimilar.”)

(objection colloquy omitted).)

Again, Heyer gave the same impermissible opinion about having formed an overall

visual impression of the ‘128 Patent, and that based on that impression the design of the ‘128


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Patent and the design of the accused products are substantially dissimilar. (Trial Tr., Defs.

Heyer [Dkt. No. 216] 59:19-60:4 (“Q. Mr. Heyer, were you able to formulate an overall visual

impression of the gusset shown in the ‘128 Patent? A. Yes, I was. Q. [D]o you have an opinion

as to whether or not the design of the ‘128 Patent and the design of the accused products is

substantially similar? * * * THE WITNESS: Yes, I have an opinion. Q. What is that opinion?

A. The opinion is that they’re dissimilar.”) (objection colloquy omitted).)

Three times Defendants offered this impermissible testimony. Three times Degelman

immediately objected to it. (Trial Tr., Defs. Heyer [Dkt. No. 216] 51:6-11 (objecting as to ‘097

Patent); Trial Tr., Defs. Heyer [Dkt. No. 216] 53:19 (objecting as to ‘129 Patent); Trial Tr., Defs.

Heyer [Dkt. No. 216] 60:1 (objecting as to ‘128 Patent).) Three times Degelman’s objections

were overruled. (Trial Tr., Defs. Heyer [Dkt. No. 216] 51:12 (overruling as to ‘097 Patent); Trial

Tr., Defs. Heyer [Dkt. No. 216] 53:20 (overruling as to ‘129 Patent); Trial Tr., Defs. Heyer [Dkt.

No. 216] 60:2 (overruling as to ‘128 Patent).) This testimony brought to fruition the improper

results feared by the Special Master, and by the Court in adopting the Experts R&R and

precluding Heyer’s opinion on infringement. (See generally Dec. 23rd D&O [Dkt. No. 153]

at 21 of 34.) As such, the jury’s finding of non-infringement of the design patents worked a

miscarriage of justice warranting a new trial. See Parker, 327 F.3d at 213.

B. Defendants’ Ordinary Observer’s Opinions On Infringement WereBased On The Wrong Standard And, Therefore, Confused The Jury.

Even if Heyer’s opinions properly were presented to the jury, those opinions were

fundamentally flawed, as a matter of law, and their confusing effect on the jury warrants a new

trial. See Parker, 327 F.3d at 213. As to design patents, and as to the design patents-in-suit in

particular, they claim only ornamental features shown in the patent drawings, and do not claim

any functional features whatsoever. See Lee, 838 F.2d at 1188. (See Decision and Order,


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entered Dec. 23, 2008 (“Claim Construction Order”) [Dkt. No. 66] at 21 of 21.) The design

patents respectively were construed as “the overall visual impression of the ornamental design,”

as to the ‘097: “of a snow moving apparatus with gusset as set forth in the drawings of the

patent”; as to the ‘128: “of a gusset used in a snow moving apparatus as set forth in the drawings

of the patent”; as to the ‘129 Patent: “of a snow moving apparatus with gusset as set forth in the

drawings of the patent.” (Claim Construction Order [Dkt. No. 66] at 21 of 21.)

However, Heyer admitted that he took those functional aspects into consideration when

formulating his stated opinion about the overall ornamental features of the design patents-in-

suit. (Trial Tr., Defs. Heyer [Dkt. No. 216] 64:22-65:21.) Therefore, not only was the jury

confused and deprived of its opportunity to determine an overall visual impression of the

ornamental design, but Heyer’s testimony unduly prejudiced Degelman by polluting the jury’s

analysis with the wrong legal standard, and in violation of the Claim Construction Order. This

irreparably altered the non-infringement analysis and, thus, Degelman is entitled to a new trial.

C. In Deciding The Issue Of Design Patent Infringement, The JuryShould Have Been Allowed To Compare Degelman’s CommercialEmbodiment To Defendants’ Accused Products.

“Nothing in Gorham suggests that, in finding design patent infringement, a trier of fact

may not as a matter of law rely exclusively or primarily on a visual comparison of the patented

design, as well as the device that embodies the design, and the accused device's design.” Braun,

975 F.2d at 820 (citing Gorham Co. v. White, 81 U.S. 511, 530 (1872)); see Lee, 838 F.2d

at 1188 (compare accused products to commercial embodiment “[w]hen no significant

distinction in design has been shown between the patent drawing and its physical embodiment”).

Defendants cannot have their cake and eat it too. They argued Degelman was not

allowed to compare its commercial embodiment of the patented design with the accused products


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because it only showed one view of the product. However, Defendants then argued the one-view

Orsolini Drawing – one plan in an alleged set of plans – could be used to invalidate the Design

Patents. Defendants’ contradictory positions and arguments should not be rewarded by mere

sleight of hand. Degelman presented evidence that its commercial embodiments were derived

directly from the same drawings contained as part of the Design Patent figures:5

‘128 Patent Degelman Strongbox®

Degelman presented uncontroverted evidence that the Solid Works drawings that were

used for its final plans and its advertisements were the same as the figures in the patents. (Trial

Tr., Pl. S. Degelman (cont.) [Dkt. No. 225] 165:13-15.) As such, the jury should have been

instructed that it could compare the commercial embodiment to the accused products. If it had,

the jury would have heard the testimony of witnesses who saw the Pro-Tech snow plow at the

2003 SIMA show, and thought it was the Degelman product.

D. In Deciding The Issue Of Design Patent Infringement, The JuryShould Have Been Allowed To Consider Evidence Of ConfusionBetween Degelman’s Commercial Embodiment And Defendants’Accused Products.

The Court improperly declined Degelman’s proffer of evidence of confusion between

Degelman’s commercial embodiment and Defendants’ accused products. In doing so, the Court

5 (See Oropallo Decl., Ex. 7.)


7152289.1 - 22 -

placed an unwarranted emphasis on certain case law’s reliance on the pertinent confusion being

customer/consumer confusion. (See Trial Tr., Colloquy [Dkt. No. 227] 304:12-15, 305:9-10,

305:21-23, 305:24-306:24, 307:5-7, 308:7-9, 308:13-14, 308:19-21, 308:23-309:9, 309:20-

310:4.) The focus on customers/consumers apparently stems from the Keystone Retaining Wall

case. See Keystone Retaining Wall Sys., Inc. v. Rockwood Retaining Wall, Inc., No. 00-496

(RHK/SRN), 2001 U.S. Dist. LEXIS 26272, at *30 (D. Minn. Oct. 9, 2001).

There was nothing specific in Keystone to indicate that the consumer could not be some

other actor within the relevant marketplace. In fact, that court acknowledged that “design patent

infringement does not concern itself with the broad issue of consumer behavior in the

marketplace.” 2001 U.S. Dist. LEXIS 26272, at *30 (quoting Braun, 975 F.2d at 820.

Logically, the confused person could be just about anyone within the marketplace whose

observations would tend to show that an accused product reads on the claims of the patented

invention. Be that as it may, the “low threshold for relevancy” weighs in favor of admitting

confusion evidence. See OddzOn Prods., 122 F.3d at 1407.

POINT V

THE ‘128 PATENT COULD NOT HAVE BEEN FOUND TO BE INVALIDAND, AT THE SAME TIME, NOT-INFRINGED BY THE ACCUSED PRODUCTS

The jury’s confusion is no more apparent than as to its inconsistent findings on the ‘128

Patent. The ‘128 Patent was construed by the Court to be “a gusset” on a snow plow as depicted

in the ‘128 Patent. The ‘128 Patent did not claim any features of the snow plow, only that it was

in association with a snow plow. The Court instructed the jury to compare the patented design to

the accused products. Despite an uncanny resemblance between the patented design and the


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cone gusset on the accused product, the jury found the accused product did not infringe:6

‘128 Patent SPC Compact Model

However, the jury also found that the much more dissimilar looking purported prior art

references offered by Defendants were essentially the same as the patented design in finding the

patents invalid. The dimensions of the incomplete Orsolini Drawing7 are completely unknown.

The Tenco snowblower is clearly not similar in overall appearance. By remarkable contrast, the

cone-shaped gusset – the only claim in the ‘128 Patent –depends downwardly like the Accused

Products. In terms of overall appearance, the ‘128 Patent is much closer to the accused products

than it is to either of the purported prior art references, by any objective observation:8

6 (See Oropallo Decl., Ex. 7.)7 Defendants objected to Degelman’s proof on this ground. (Trial Tr., Pl. S. Degelman (cont.) [Dkt. No. 225]174:7-23 (Defendants objections to Degelman’s Cease & Desist Letters sustained because they were allegedlyincomplete).)8 (See Oropallo Decl., Ex. 7.)


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‘128 Patent Orsolini Drawing

‘128 Patent Tenco Snowblower

Nonetheless, the import of the jury’s confused finding was that the accused products did

not infringe the ‘128 Patent, but that the ‘128 Patent would infringe the Orsolini Drawing and

the Tenco snowblower. See Bristol-Myers, 246 F.3d at 1378 (“[T]hat which would infringe if

later anticipates if earlier.”) This inconsistency can only be explained by Defendants’ counsel’s

summation. Defendants’ counsel totally ignored the Court’s claims construction, and argued that

the patented design was for a single plate gusset. Defendants’ counsel also ignored the Court’s

repeated admonitions that “the view” only showed one side of the gusset. Regardless of the

reason, these inconsistencies, together with the lack of evidence, shows the Jury was confused

and the verdict should be set aside, or a new trial ordered.


7152289.1 - 25 -

CONCLUSION

For the reasons stated herein, and for those set forth in the accompanying declaration and

exhibits thereto, Degelman respectfully requests an Order granting judgment as a matter of law

and/or a new trial, and for such other and further relief as the Court deems just and proper.

Respectfully submitted,

HISCOCK & BARCLAY, LLP

Dated: April 15, 2013 By:

Christopher E. BlankAttorneys for PlaintiffDegelman Industries Ltd.2000 HSBC Plaza,100 Chestnut StreetRochester, New York 14604Telephone (585) 325-7570Facsimile (585) 325-5458E-Mail: [email protected]

Michael A. OropalloJohn M. Nichols

One Park Place300 South State StreetSyracuse, New York 13202-2078Telephone (315) 425-2831Facsimile (315) 703-7367E-Mail: [email protected]: [email protected]


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