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September 16, 1999


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.

Defendant Deer Stags, Inc. ("Deer Stags") is a New York corporation that is in the business of importing and selling shoes. In late 1996, Deer Stags began the development of its "Destination" model shoe (the "Destination Shoe").*fn1 See Decl. of Howard K. Weiss ("Weiss Decl.") ¶ 2. In late 1997, Rockport became aware that Deer Stage was offering to sell in its 1997 catalog a model of its Destination Shoe that Rockport alleges was a copy of Rockport's ProWalker® World Tour shoe. See Williams Decl. ¶ 9. Rockport sent a cease and desist letter to Deer Stags on November 17, 1997, demanding that Deer Stags cease all activity involving its Destination Shoe and any shoe which infringed Rockport's patent. See id. ¶ 9. On January 23, 1998, Rockport filed a Complaint against Deer Stags alleging that the Destination Shoe infringed the '594 patent. Deer Stags informed Rockport that the shoe in question was erroneously pictured in its 1997 catalog and that it was a prototype that was never intended for sale. See Weiss Decl. ¶¶ 7-8. That picture was not included in Deer Stags's 1998 catalog. On February 3, 1998, Rockport filed an Amended Complaint adding an allegation that a modified version of the Destination Shoe that Deer Stags first offered for sale in its Fall 1998 Footwear Catalog likewise infringed the '594 patent. See Williams Decl. ¶ 11; Durkin Decl. ¶ 6. Both parties agree that this motion pertains only to the alleged infringement of the '594 Patent by the Destination Shoe model that Deer Stags actually sold. See Mem. of Law in Supp. of Deer Stags's Mot. for Summ. J. at 2; Rockport's Opp. to Deer Stags's 56.1 Stmt. ¶ 5.

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) does not 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); Aerogroup Int'l ...

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