High Point v. BDI - Letter & Order
2
Case 1:11-cv-04530-KBF Document 56 Filed 10/21/13 Page 1 of 2 Case 1 11-cv-04530-KBF Document 55 Filed 10/21/1 3 Page 1 of 2 GOTTLIEB , RACKMAN REISMAN, P.C. GEORGE GOTTLIEB DAVIDS KASHMAN ALLEN I RUBENSTEIN JEFFREY M. KADEN TIBERIU WEISZ MARIA A SAVIO RICHARDS . SCHURIN MARC P MISTHAL STEVEN STERN BARRY R LEWIN COUNSELORS AT LAW PATENTS TRADEMARKS · COPYRIGHTS · INTELLECTUAL PROPERTY 270 MADISON AVENUE NEWYORK, N Y 10016-0601 PHONE: (212) 684-3900 ·FACSIMILE: (212) 684-3999 WEB: llttp:llwww.grr.com · E·MAIL; [email protected] DONNA MIRMAN BROOME BARBARA H LOEWENTHAL JOSHUA R MATTHEWS ARIEL S PEIKES SAMANTHA G. ROTHAUS JONATHAN M PUR OW PATENT AGENTS ZOYA V CHERN INA ROBERT P FEINLAND COUNSEL DIANA MULLER' · ~ E M Q . R f HiE B AR O A R G E N T I ~ A O lY October 21, 2013 USDCSDNY OF COUNSEL JAMES REISMAN Via E F and E-mail Hon. Katherine B Forrest United States District Judge DOCUMENT ELECTRONJC LLY FILED DOC : DATE F-IL-E ' ' JDO 'N'Ct I'T.......,.2or-+-<1 2¥ ...... 31)..... aniel Patrick Moynihan, U.S. Courthouse 500 Pearl Street New York, NY 10007-1312 [email protected] Re: High Point Design LLC v Buyer s Direct, Inc. 11 CV 4530 KBF) DCF) Dear Judge For res t We represent Plaintiff High Point Design LLC, as well as the Third-Party Defendants Wal-mart Stores, Sears Holdings Corporation, and Meijer, Inc. (collective ly High Point ) in the above-referenced matter. We write to request that the Court issue an order allowing High Point to renew its dispositive combined motion, described in further detail below, and setting a supplemental briefing schedule for this renewed motion. This is an action by High Point for a declaratory judgment that U.S. Design Patent D598, 183 ( the '183 patent ), covering a slipper and owned by BDI, is not infringed because the '183 patent is invalid and/or is unenforc eable. BD I has counterclaimed for alleged infringement of the '183 patent and for related trade dress infringement, claiming that both the '183 patent and BDI's alleged trade dress rights have been infringed by a slipper product marketed and sold by High Point.
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Transcript of High Point v. BDI - Letter & Order
7/27/2019 High Point v. BDI - Letter & Order
http://slidepdf.com/reader/full/high-point-v-bdi-letter-order 1/2
Case 1:11-cv-04530-KBF Document 56 Filed 10/21/13 Page 1 of 2
Case 1 11-cv-04530-KBF Document 55 Filed 10/21/13 Page 1 of 2
GOTTLIEB, RACKMAN &REISMAN, P.C.
GEORGE GOTTLIEBDAVIDS. KASHMANALLEN I. RUBENSTEINJEFFREY M. KADEN
TIBERIU WEISZMARIA A. SAVIORICHARDS. SCHURINMARC P. MISTHAL
STEVEN STERNBARRY R. LEWIN
COUNSELORS AT LAW
PATENTS TRADEMARKS · COPYRIGHTS · INTELLECTUAL PROPERTY
270 MADISON AVENUE
NEWYORK, N.Y. 10016-0601PHONE: (212) 684-3900 ·FACSIMILE: (212) 684-3999
WEB: llttp:llwww.grr.com · E·MAIL; [email protected]
DONNA MIRMAN BROOMEBARBARA H. LOEWENTHAL
JOSHUA R. MATTHEWSARIEL S. PEIKES
SAMANTHA G. ROTHAUSJONATHAN M. PUR OW
PATENT AGENTSZOYA V. CHERN INA
ROBERT P. FEINLAND
COUNSEL
DIANA MULLER'
· ~ E M Q . ( R Of HiE B.AROF A R G E N T I ~ A ONlY
October 21, 2013
USDCSDNY
OF COUNSELJAMES REISMAN
Via ECF and E-mail
Hon. Katherine B. Forrest
United States District Judge
DOCUMENT
ELECTRONJCALLY FILED
DOC#:
DATE F-IL-E"'"'"JDO"'N'Ct"I'T.......,.2or-+-<12¥0......31).....aniel Patrick Moynihan, U.S. Courthouse
500 Pearl Street
New York, NY [email protected]
Re: High Point Design LLC v. Buyer's Direct, Inc.11 CV 4530 (KBF)(DCF)
Dear Judge Forrest
We represent Plaintiff High Point Design LLC, as well as the Third-Party
Defendants Wal-mart Stores, Sears Holdings Corporation, and Meijer, Inc.(collectively "High Point") in the above-referenced matter. We write to requestthat the Court issue an order allowing High Point to renew its dispositivecombined motion, described in further detail below, and setting a supplementalbriefing schedule for this renewed motion.
This is an action by High Point for a declaratory judgment that U.S. DesignPatent D598, 183 ("the '183 patent"), covering a slipper and owned by BDI, is notinfringed because the '183 patent is invalid and/or is unenforceable. BDI hascounterclaimed for alleged infringement of the '183 patent and for related tradedress infringement, claiming that both the '183 patent and BDI's alleged trade
dress rights have been infringed by a slipper product marketed and sold by HighPoint.
7/27/2019 High Point v. BDI - Letter & Order
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Case 1:11-cv-04530-KBF Document 56 Filed 10/21/13 Page 2 of 2Case 1: 11-cv-04530-KBF Document 55 Filed 10/21/13 Page 2 of 2
Hon. Katherine Forrest
October 21, 2013
Page 2
On May 15, 2012, this Court granted in its entirety High Point's motion forsummary judgment, pursuant to Rule 56, that the '183 patent is invalid for
obviousness and for functionality. Further, this Court granted High Point'sassociated motion for judgment on the pleadings, pursuant to Rule 12(c),
determining that BDI's trade dress claims were not properly pled. As this Court is
already aware, those rulings were appealed to the U.S. Court of Appeals for the
Federal Circuit, and on September 11, 2013, the Court of Appeals handed down
an opinion reversing the grant of summary judgment of invalidity, vacating the
dismissal of BDI's trade dress claims, and remanding the case to this Court for
further proceedings consistent with its decision. A copy of the Court of Appeals'
decision is attached.
The Court of Appeals held, inter alia, that this Court's appl ication of
various tests required by the controlling legal precedents, including, for example,
the test for obviousness of a design patent, was erroneous. Although the Courtof Appeals remanded for a more precise application of its standard for
obviousness, the Court of Appeals did not determine that BDI's patent was valid
or that the summary judgment motion was premature, nor did the Court of
Appeals take issue with the ultimate determination that BDI's patent is invalid due
to obviousness. High Point maintains that this Court reached the correct legal
conclusions, and seeks permission to renew its combined motion for summary
judgment and for judgment on the pleadings in order to brief the issues that the
Court of Appeals highlighted in its opinion.
High Point further requests that this Court stay all further discovery in this
case pending the Court's decision on High Point's renewed motion.
Encl.
\ Respectfully submitted,
\ ~ GOTTLIEB, RAC MAN &REISMAN, P.C.
\ ~Jeffrey M. Kaden (JK 2632)Attorneys for High Point Design LLC, Meijer,Inc., Sears Holdings Corp. and Wal-martStores, Inc.
cc: Andrew M. Ollis, Esq. (Via E-mail)
