The opinion of the court was delivered by: Keenan, District Judge.
This is an action seeking redress for alleged patent
infringement under the United States Patent Laws,
35 U.S.C. § 271. This Court has jurisdiction pursuant to 28 U.S.C. § 1338(a).
Before the Court are the parties' cross-motions for partial
summary judgment, pursuant to Fed.R.Civ.P. 56, on the question of
whether Defendant Deer Stags, Inc. infringed U.S. Patent Design
No. 380, 594 with the manufacture and sale of its "Destination"
shoe. Also before the Court is Defendant's motion to strike
evidence included in Plaintiff's cross-motion for summary
judgment. For the reasons discussed below, the Court grants
Plaintiff's motion for partial summary judgment, denies
Defendant's motion for partial summary judgment, and denies
Defendant's motion to strike evidence.
Plaintiff the Rockport Company, Inc. ("Rockport"), is a
corporation organized and existing under the laws of the
Commonwealth of Massachusetts. Rockport designs and sells casual,
dress, and performance footwear, including walking shoes, and
related products. Rockport has been awarded more than 60 U.S.
Patents to date. Mr. Peter von Conta is the named inventor on at
least thirteen of these patents. See Decl. of Jerri A. Williams
("Williams Decl.") ¶ 3. In 1995, Peter von Conta created an
ornamental design for a shoe upper, which was given the model
name "ProWalker® World Tour." See id. ¶ 5. A shoe upper
consists of the portion of the shoe above the sole of the shoe.
Since 1996, over 3 million pairs of Rockport's ProWalker® World
Tour shoes have been sold throughout the United States and
worldwide. See id. ¶ 6. On March 11, 1996, Rockport applied to
the U.S. Patent and Trademark Office for a design patent
protecting the ornamental appearance of the ProWalker® World Tour
shoe. The U.S. Patent and Trademark Office granted Peter von
Conta U.S. Design Patent No. 380,594 ("the '594 patent"),
entitled "Shoe Upper," on July 8, 1997. See Durkin Decl., Exh.
A. Rockport is the owner, by assignment, of the '594 patent.
Deer Stags and Rockport are now crossmoving for partial summary
judgment on the question of whether Deer Stags's Destination Shoe
infringes Rockport's '594 patent.
Defendant's Motion to Strike Evidence
Deer Stags moves to strike paragraphs 13-18 of the Declaration
of Jerri A. Williams (the "Williams Declaration"), which Rockport
submitted in support of its cross-motion for partial summary
judgment. Deer Stags claims that paragraphs 13-18 should be
stricken for failure to comply with the requirements of Fed.
R.Civ.P. 56(e). Rule 56(e) requires that "[s]upporting and
opposing affidavits shall be made on personal knowledge, shall
set forth such facts as would be admissible in evidence, and
shall show affirmatively that the affiant is competent to testify
to the matters stated therein." A court may "strike portions of
an affidavit that are not based upon the affiant's personal
knowledge, contain inadmissible hearsay or make generalized and
conclusory statements." Hollander v. American Cyanamid Co.,
172 F.3d 192, 198 (2d Cir. 1999). Deer Stags alleges that there is no
indication that the statements in the Williams Declaration were
based on Ms. Williams personal knowledge of shoe design and that
"[i]t is doubtful whether Ms. Williams position as Legal Manager
of Intellectual Property could provide her with the competence
necessary to assert the allegations contained in paragraphs
13-18." See Mem. Of Law in Supp. of Def.'s Motion to Strike at
2. The Court disagrees.
Ms. Williams is the Legal Manager of Intellectual Property for
Rockport and is responsible for protection and enforcement of
Rockport's intellectual property. See Williams Decl. ¶ 1.
Paragraphs 13-15 of the Williams Declaration relate to the
overall similarity of Deer Stags's Destination shoe and the
Rockport '594 patent. Paragraphs 16-18 specify the novel features
of the '594 patent. Although Ms. Williams does not expressly
state in her declaration that the information contained in
paragraphs 13-18 was based on her personal knowledge, Rule 56(e)
require such an express statement. See Hochberg v. Howlett, No.
92 Civ. 1822, 1992 WL 373631, at *4 (S.D.N.Y. Dec. 1, 1992).
Personal knowledge may be inferred from the affidavit itself.
See id. In this instance, Ms. Williams' position as Legal
Manager of Intellectual Property at Rockport appears to qualify
her to attest to the factual allegations contained in paragraphs
13-18 of the Williams Declaration. Moreover, Ms. Williams
submitted a Supplemental Declaration which clarifies that the
"declaration of November 30, 1998[was] based on [her] personal
knowledge of [the '594 patent]; the references considered during
the examination of the '594 patent; the pleadings and discovery
produced in this litigation; and my overall general experience as
an employee at Rockport since 1996." See Supp. Decl. of Jerri
A. Williams at ¶ 3. As the Hochberg Court noted, a
supplementary affidavit affirming that an original affidavit was
based on personal knowledge "is sufficient to cure any defects
that may have existed in the original affidavits." 1992 WL
373631, at *4. As a result, Deer Stags's motion to strike
paragraphs 13-18 of the Williams Declaration is denied.
Summary Judgment Standards
A motion for summary judgment may be granted under Fed.R.Civ.P.
56 if the entire record demonstrates that "there is no genuine
issue as to any material fact and the moving party is entitled to
judgment as a matter of law." Anderson v. Liberty Lobby,
477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); D'Amico v.
City of New York, 132 F.3d 145, 149 (2d Cir.), cert. denied,
___ U.S. ___, 118 S.Ct. 2075, 141 L.Ed.2d 151 (1998). In
considering a motion for summary judgment, a court "must view the
evidence in the light most favorable to the party against whom
summary judgment is sought and must draw all reasonable
inferences in [its] favor." See L.B. Foster Co. v. America
Piles, Inc., 138 F.3d 81, 87 (2d Cir. 1998) (citing Matsushita
Electric Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587,
106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986)). Although the movant
initially bears the burden of showing that there are no genuine
issues of material fact, once such a showing is made, the
opposing party must "set forth specific facts showing that there
is a genuine issue for trial." Liberty Lobby, 477 U.S. at 256,
106 S.Ct. 2505. "The nonmoving party may not rely on mere
conclusory statements nor speculation, but instead must offer
some hard evidence showing that its version of the events is not
wholly fanciful." D'Amico, 132 F.3d at 149. To defeat a motion
for summary judgment, the party opposing the motion must produce
sufficient evidence to permit a reasonable jury to return a
verdict in its favor. See Scotto v. Almenas, 143 F.3d 105, 114
(2d Cir. 1998) (citing Liberty Lobby, 477 U.S. at 252, 106
S.Ct. at 2512).
The Federal Circuit has stated that "summary judgment is as
appropriate in a patent case as in any other." See Avia Group
Int'l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1561
(Fed.Cir. 1988) (citations omitted). This applies to design
patent cases as well as to utility patent cases. See OddzOn
Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed.Cir. 1997);
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