IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

DYSON, INC. and )

DYSON TECHNOLOGY LIMITED, )
)
Plaintiffs, )
) Case No. 14-cv-779
v. )
) Judge Robert M. Dow, Jr.
SHARKNINJA OPERATING LLC and )
SHARKNINJA SALES COMPANY, )
)
Defendants. )
)

MEMORANDUM OPINION AND ORDER

Plaintiffs Dyson, Inc. and Dyson Technology Limited bring this action against

Defendants SharkNinja Operating Company LLC and SharkNinja Sales Company for patent

infringement. This matter is before the Court on the parties’ motions to exclude certain expert

testimony, [367], [370], [373], [389], [395], [398], the parties’ cross-motions for summary

judgment, [369], [375], [377], [384], [387], [392], and other miscellaneous motions [362-1],

[457], [495], [500]. For the reasons explained below, the Court grants Defendants’ motion for

summary judgment of non-infringement [369] and denies as moot the remaining motions for

summary judgment, [375], [377], [384], [387], [392], motions to exclude expert testimony,

[367], [370], [373], [389], [395], [398], and miscellaneous motions, [362-1], [457], [495], [500].

Judgment will be entered in favor of Defendants and against Plaintiffs.

I. Background

The Court takes the relevant facts primarily from the parties’ Local Rule 56.1 statements.

See [403] (Plaintiffs’ facts), [430] (Defendants’ response and additional facts), [441]

(Defendants’ facts), [447] (Plaintiffs’ response and additional facts), [468] (Defendants’ response
to Plaintiffs’ additional facts), and [486] (Plaintiffs’ response to Defendants’ additional facts).

The facts relevant to the disposition are undisputed except where otherwise noted. The Court

also takes relevant facts from orders that were entered on the docket previously by Judge Darrah,

who presided over the case from 2014 until it was transferred here in March 2017.

A. Dyson

Plaintiff Dyson, Inc. is an Illinois corporation with its principal place of business in

Chicago, Illinois. Plaintiff Dyson Technology Limited is a private limited company organized

and existing under the laws of England and Wales, with its principal place of business in

Malmesbury, United Kingdom. In this opinion, the Court will refer to Plaintiffs collectively as

“Dyson” unless it is necessary to distinguish between the two entities.

Dyson sells or has sold a number of different handheld vacuum cleaner (“hand vac”) and

stick vacuum clean (“stick vac”) products, including the DC16 and DC35 products (depicted

below). The DC16 is a hand vac, which Dyson launched in the United States in October 2006.

The DC35 is a stick vac, which Dyson launched in the United States in December 2010.

Three of Dyson’s design patents are at issue in this lawsuit. Dyson’s design patent for

the hand vac is the ‘163 Patent. It is titled “Cleaning Appliance,” was filed on January 18, 2007,

issued on September 16, 2008, and claims the ornamental design for a cleaning appliance (the

“‘163 Patent” or “Hand Vac Patent”). The following figures are consistent with the ‘163 Patent:

2
 Dyson’s design patents for the stick vacs are the ‘010 Patent and the ‘823 Patent

(together, the “Stick Vac Patents”). The ‘010 Patent, titled “Vacuum Cleaner,” was filed on

February 8, 2011, issued on September 25, 2012, and claims the ornamental design for a vacuum

cleaner. Earlier in this action, Judge Darrah construed the ‘010 patent as the replacement

drawings that Dyson submitted to the U.S. Patent and Trademark Office (“PTO”) on May 8,

2012. The following figures are consistent with the replacement drawings for the ‘010 patent:

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4
5
 As shown in the drawings above, the ‘010 patent claims the entire vacuum cleaner design

shown in the patent drawings except for the parts indicated with dashed lines, which are

disclaimed from the patent.

The second stick vac patent is the ‘823 Patent, titled “Vacuum Cleaner,” which was filed

on February 4, 2011, issued on October 9, 2012, and claims the ornamental design for a vacuum

cleaner. The following drawings are consistent with the ‘163 Patent, with the dashed lines

indicating the portions of the vacuum that are disclaimed from the patent:

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7
 In this opinion, the Court will refer to the ‘163 Patent, the ‘010 Patent, and the ‘823

Patent collectively as the “Asserted Patents.”

B. Shark

Defendant SharkNinja Operating LLC is a limited liability company organized under the

laws of the state of Delaware. Defendant SharkNinja Sales Company is a corporation also

organized under the laws of the state of Delaware. Both Defendants have a principal place of

business in Newton, Massachusetts. In this opinion, the Court will refer to Defendants

collectively as “Shark” unless it is necessary to distinguish between the two entities.

Shark sells vacuum cleaners in the United States under the “Shark Rocket” brand. In this

lawsuit, there are four different series of Shark Rocket vacuum cleaners that Dyson accuses of

infringing its design patents: the HV300 series, the HV310 series, the HV320 series, and the

HV380 series. The Court refers to the four series of Shark Rockets collectively as the “Accused

Designs.” The parties agree that, for purposes of determining design patent non-infringement,

the HV300 vacuum is representative of the HV300 series; the HV310 vacuum cleaner is

representative of the HV310 series; the HV321 vacuum cleaner is representative of the HV320

series; and the HV381 vacuum cleaner is representative of the HV380 series. Shark takes the

position that, although the designs of the HV300 and HV310 have a few differences, they may be

analyzed together for purposes of non-infringement. Dyson takes the position that all four

models are substantially the same and can be analyzed together. The following are images of the

representative HV300, HV310, and HV321 stick vacs:

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 The following images show the handheld portion of the HV300 stick vac from different

angles:

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10
 The following images show the HV300 stick vac as a whole from different angles:

Shark was granted design patents covering the HV300, including U.S. Patent No.

D731,720 (“‘720 patent”), U.S. Patent No. D742,083 (“‘083 patent”), and U.S. Patent No.

D738,583 (“‘583 patent”). It is undisputed that Shark applied for the ‘720 and ‘583 patents in

November 2013; the parties dispute whether Shark applied for the ‘083 patent in November 2013

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(as Shark contends) or April 2015 (as Dyson contends). The following are representative

drawings of Shark’s HV300 design patents1:

Shark’s HV321 product has a different configuration from the HV310 and HV300

products. Shark takes the position that the major differences in the HV321 product include the

movement of the motor housing from beneath the handle to a position in front of the handle and

an extended capacity dust cup. The following images show the handheld portion of the HV321

stick vac from different angles:

1
Dyson disputes that these are representative drawings on the basis that they obscure the dotted lines that
indicate the portions of the design that are not claimed. The Court finds it unnecessary to resolve this
factual dispute, which is not material to its analysis.

12
13
The following images show the HV321 stick vac as a whole:

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 Shark was granted design patents covering the HV321. The following are representative

drawings of Shark’s HV321 design patents:

Shark takes the position that its HV381 product is different than its HV321, HV310, and

HV300 products, with the major differences being a new and different floor nozzle, differently

shaped and colored headlights, and a more crisply defined top section. The following images

show the handheld portion of the HV381 stick vac from different angles:

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 The following image shows the HV381 stick vac as a whole:

Shark contends that it is currently pursuing a design patent application covering the

HV380 design; Dyson disputes this.

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 C. Prior Art

In some cases, the determination of whether a patent has been infringed can benefit from

using “prior art” as a frame of reference to compare the similarities and differences among the

accused designs, the prior art, and the patent drawings. Shark identifies a number of designs that

it considers to be relevant comparison prior art.

First, Shark points to the manual for the Dyson DC31 (“DC31 Manual”), which is

available at https://www.dyson.com/medialibrary/Files/Dyson/Support/downloads/US/Floorcare/

manuals/dc31_opmanual_usa%20pdf.pdf (last visited Mar. 27, 2018), and includes a date of

April 20, 2009. Shark includes the following image of the DC31 in its L.R. 56.1 statement2:

Shark contends that the DC31 was used as the “base product” in creating Dyson’s DC25 stick

vac. Dyson disputes this characterization, explaining that the DC35 “embodies the ‘010 and

‘823 patents[,] which are not limited to any particular ‘base product.’” [447] at 40.

The second item of prior art identified by Shark is U.K. Reg. Des. No. 4,010,242 (“‘242

design”), which discloses the design of the Dyson DC26 floor unit and was granted on August

18, 2009. An image of the ‘242 design is shown below:

2
Dyson disputes that the image is contained in the DC31 Manual. It appears that the image provided in
Shark’s LR 56.1 statement is inverted when compared to the images in the DC31 Manual.

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 Third, U.S. Design Patent No. D480,848 (“‘848 patent”) discloses a design for a suction

tube and was granted on October 14, 2003. Shark contends that the following image shows the

design of the suction tube disclosed by the ‘848 patent:

Dyson asserts that the above image is not representative, and that instead the following image,

which is shown on the cover of the patent, is representative:

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 The fourth prior art reference that Shark identifies is the following entry (“2006 DC 16

Post”) that allegedly appeared on the online “What’s the Best” forum on October 21, 2006, in a

thread titled “Dyson DC 16 Root 6 Hand Held Bagless Cleaner”; it is currently available at

https://www.abbysguide.com/vacuum/legacy/cgi-bin/yabb/2615~YaBB.html (last visited Mar.

27, 2018):

Dyson disputes that the 2006 DC 16 Post was “available” to a person of ordinary skill exercising

reasonable diligence without hindsight knowledge of the DC16 Post. Dyson also disputes

whether this post has been adequately authenticated. See [447] at 43-55. Further, Dyson

contends that it is improper to combine the DC31, DC26, and ‘848 references as prior art,

because such a combination is outside the skill of the ordinary observer. See [445] at 56.
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 Fifth, a YouTube video (“2009 DC31 Video”) describing a stick vacuum comprised of a

DC31 hand vac, a suction tube, and a floor unit was (but no longer is) available at the following

URL: https://www.youtube.com/watch?v=zAVC70Vcboo. A screenshot of the vacuum

disclosed in that video is shown below:

Shark asserts that the “2009 DC31 Video” reference was publicly accessible from December 28,

2009 and therefore qualifies as prior art to the ‘010 and ‘823 patents under 35 U.S.C. 102(a) as a

“printed publication.” Dyson disagrees, arguing that there is insufficient evidence that the 2009

DC31 Video was publicly available at the identified URL before 2010 or before the invention

date of the ‘010 and ‘823 patents. See [447] at 61. Dyson also contends that the 2009 DC31

Video is not prior art to the ‘010 and ‘823 patents because those patents had already been

reduced to practice in 2008. Shark disputes this. See [468] at 55-56.

On November 14, 2016, the European Patent Office concluded that the 2009 DC31 Video

“was made available to the public on 28.12.2009 and that it formed part of the state of the art in

the sense of Article 54(2) EPC for the patent-in-suit at the priority date.” [447] at 61. Dyson

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does not dispute that the European Patent Office made the quoted statement, but disputes that it

has any relevance to determining “public accessibility” under the applicable legal standards in

the United States and also disputes that a screenshot showed the video had been “viewed 6,960

times.” Id. at 62. Dyson also asserts that the 2006 DC16 Post and the 2009DC31 Video cannot

be considered prior art because there is insufficient evidence that they were disseminated to

persons of ordinary skill in the art, as required to qualify as prior art. See id. at 62-64.

Sixth, Dyson produced an internal, confidential workbook that names Michael Peace on

its cover and contains an entry dated October 24, 2005 that includes the following sketch:

Dyson disputes that Peace sketched the drawing and disputes that the sketch is for a stick vac.

See [447] at 65. Dyson also contends that the 2005 Peace sketch does not qualify as prior art

because there is no evidence that Peace communicated it to the Dyson employees who invented

the ‘010 and ‘823 patents (Peter Gammack and James Dyson) prior to the filing of those patents.

See [468] at 51.

Seventh, United Kingdom Patent App No. GB 2 035 787 A (“‘787 patent”) was

published on June 25, 1980 and discloses a design for a hand vacuum cleaner. The design

disclosed in the ‘787 patent is shown below (labels removed):

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Dyson contends that it is unable to verify when the patent application was published.

Finally, JP2002-85297 A was published on March 26, 2002 and discloses a hand and

stick vacuum design. The designs disclosed in JP2002-85297 A are shown below:

Dyson disputes the publication date and that the image is of a stick vacuum design on the basis

that JP2002-85297 A is written in a foreign language.

Dyson also identifies a number of stick-vac designs that it contends constitute prior art, as

shown in the following images:

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 D. Relevant Procedural History

Dyson filed this patent infringement suit in February 2014. Early in the case, Shark filed

a motion for summary judgment of noninfringement. See [65]. Shark argued that its Accused

Designs were plainly dissimilar from Dyson’s Asserted Patents, and therefore Dyson could not

meet its burden to show that the claimed and accused designs are substantially the same in the

eyes of an ordinary observer. Shark also argued that, when the functional aspects of Dyson’s

claimed designs were properly discounted from the analysis, the differences between the accused

products and claimed designs becomes even more pronounced, further warranting summary

judgment of noninfringement. Judge Darrah denied Shark’s motion. See [125]. Judge Darrah

concluded that (a) the determination of which parts of patented designs were functional was a

question of fact for jury; and (b) the patented and allegedly infringing designs were not so

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dissimilar that Shark was entitled to summary judgment. The opinion’s infringement analysis

consisted of three pages and did not discuss or compare the parties’ designs. See id. at 6-8.

Shark filed a motion for reconsideration. See [127]. Shark asserted that Judge Darrah’s

order denying summary judgment contained an error of law because, under governing Federal

Circuit precedent, “the determination of which aspects of a claimed design are functional and

which are ornamental is a matter of claim construction—a legal issue for the Court, not a

question of fact for the jury.” Id. at 2 (citing Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d

665, 679-80 (Fed. Cir. 2008) (en banc)). Shark further argued that, when the claimed designs are

properly construed to their narrow ornamental scope, the accused products are plainly dissimilar.

In his ruling on the motion for reconsideration, Judge Darrah acknowledged that the

determination of which parts of a patented design are functional is a question for the court, not

for the jury as originally held. See [134] at 3. Nonetheless, Judge Darrah concluded that Shark

was not entitled to summary judgment because it had not shown that the patented and infringing

designs were plainly dissimilar. Id. Judge Darrah explained that, “[t]o the extent that [Shark is]

arguing that, when the claimed designs are properly construed to have narrow ornamental scope,

the accused products are plainly dissimilar, Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796

F.3d 1312, 1334 (Fed. Cir. 2015), is unhelpful,” because “[i]n Ethicon, the district court granted

summary judgment of noninfringement after performing a claim construction hearing,” whereas

“[t]here has been no claim construction in this case, and the parties disagree about what aspects

of the design are functional and to what extent.” [134] at 3-4.

Subsequently, the parties briefed claim construction and Judge Darrah issued a claim

construction order [293]. The claim construction order determined the meaning and scope of the

patent claims asserted to be infringed and resolved the parties’ dispute concerning which aspects

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of the design patents were functional and to what extent. Judge Darrah considered the grip,

motor and battery, upright cylinder, suction tube, and floor unit features of the design patents.

Judge Darrah identified the following functional and ornamental aspects of the hand vac’s and

stick vacs’ features:

Feature Functional (Non-Protected) Ornamental (Protected) Aspects

Aspects
Grip The straight, pistol grip handle; The cylindrical motor housing,
the vertical orientation of the grip cylindrical suction nozzle, and
triangular coupling; the shape and
ornamentation of the pistol grip
handle to the extent they contribute
to the overall ornamentation of the
design
Motor and Battery The arrangement of the motor and
battery above and below the handle
Upright Cylinder The shape and size of the upright
cylinder
Suction Tube The long tube The cylindrical shape and
ornamentation of the tube and the
cylindrical cuffs
Floor Unit The spherical wheels, the low- The cylindrical coupling, the
profile aspect of the floor unit ornamentation of the spherical
wheels and low-profile floor unit to
the extent they contribute to the
overall ornamentation of the design

See [293] at 9-13.

Judge Darrah concluded: “The patents are construed as the ornamental design of the

drawings contained in the patents themselves for the ‘163 Patent and the ‘823 Patent and as the

replacement drawings for the ‘010 Patent, subject to the functionality findings. The straight,

pistol-grip handle, the long tube, and the low-profile floor unit are functional features that are not

protected by the design patent; but the shape and ornamentation of those features are protected to

the extent that they contribute to the overall ornamentation of the design. The spherical wheels

are functional features that are not protected by the design patent, but the ornamentation of the

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spherical wheels [is] protected to the extent that it contributes to the overall ornamentation of the

design.” [293] at 15-16.

The current docket now spans 89 printed pages, comprising 519 docket entries, more than

100 of which have been filed under seal. Since the transfer of this case from Judge Darrah’s

docket in March 2017, this Court has held two lengthy hearings (on October 11, 2017 and March

9, 2018) during which counsel on both sides have given thorough oral and written presentations

on the issues encompassed within the pending motions. In addition, after the October 2017

presentation, counsel agreed to deliver to the Court sample vacuums (used as demonstratives

during that presentation) that have aided the Court’s consideration of the corresponding evidence

set out on the printed page.

II. Summary Judgment Standard

Summary judgment is proper where “the movant shows that there is no genuine dispute

as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.

56(a). “A party asserting that a fact cannot be or is genuinely disputed must support the assertion

by * * * citing to particular parts of materials in the record” or “showing that the materials cited

do not establish the absence or presence of a genuine dispute, or that an adverse party cannot

produce admissible evidence to support the fact.” Fed. R. Civ. P. 56(c)(1). A genuine issue of

material fact exists if “the evidence is such that a reasonable jury could return a verdict for the

nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The party

seeking summary judgment has the burden of establishing the lack of any genuine issue of

material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). The Court “must

construe all facts and draw all reasonable inferences in the light most favorable to the nonmoving

26
party.” Majors v. Gen. Elec. Co., 714 F.3d 527, 532-33 (7th Cir. 2013) (internal quotation marks

and citation omitted).

To avoid summary judgment, the nonmoving party must go beyond the pleadings and

“set forth specific facts showing that there is a genuine issue for trial.” Liberty Lobby, 477 U.S.

at 250. Summary judgment is proper if the nonmoving party “‘fails to make a showing sufficient

to establish the existence of an element essential to that party’s case, and on which that party will

bear the burden of proof at trial.’” Ellis v. CCA of Tennessee LLC, 650 F.3d 640, 646 (7th Cir.

2011) (quoting Celotex, 477 U.S. at 322). The non-moving party “must do more than simply

show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus.

Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). In other words, the “mere existence

of a scintilla of evidence in support of the [non-movant’s] position will be insufficient; there

must be evidence on which the jury could reasonably find for the [non-movant].” Liberty Lobby,

477 U.S. at 252.

III. Analysis

As indicated in the first paragraph of this order, the Court concludes that Shark is entitled

to summary judgment of noninfringement. Before turning to the merits of the infringement

issue, the Court addresses two preliminary issues: (1) whether Shark should be permitted to

move for summary judgment of noninfringement for a second time; and (2) whether the

testimony of Shark’s and/or Dyson’s experts on infringement should be excluded under Daubert.

A. Successive Summary Judgment Motion

Although Judge Darrah denied Shark’s original motion for summary judgment, he never

foreclosed Shark from filing another motion following claim construction. Instead, he said

“[l]et’s wait and see.” [445] at 32 (quoting 9/3/2014 hearing transcript). To be sure, he added a

27
“guess” that there would not be a second summary judgment motion on infringement based on

his sense that “[i]t would be counterproductive to do it twice on the issue of infringement” as a

matter of “common sense.” Id. Yet he subsequently allowed the parties to file additional

summary judgment motions, including ones going to infringement. It was “within the

discretion” of Judge Darrah to allow the “filing of successive summary judgment motions,” and

it is within this Court’s discretion to consider a successive motion for summary judgment of

noninfringement. Narducci v. Moore, 572 F.3d 313, 324 (7th Cir. 2009).

There is good cause to authorize a successive summary judgment motion where, as here,

it will allow the Court to consider “new evidence or an expanded factual record,” Whitford v.

Boglino, 63 F.3d 527, 530 (7th Cir. 1995) (internal quotation marks and citation omitted), or

avoid an unnecessary trial, Kim v. Conagra Foods, Inc., 2003 WL 22669035, *2 (N.D. Ill. Nov.

10, 2003). Judge Darrah’s claim construction order clarified and narrowed the relevant

infringement analysis by identifying the purely functional aspects of Dyson’s Asserted Patents.

When the claim construction is properly taken into account, the Court concludes that Dyson’s

Asserted Patents and Shark’s Accused Designs are plainly dissimilar, as explained below.

Permitting the infringement question to go to a jury simply because the issue is before the Court

on a successive motion for summary judgment would be an enormous waste of time and

resources. The Court would either have to rule for Shark as a matter of law following trial or

face reversal by the Federal Circuit on appeal.

B. Daubert Motions

In regard to the Daubert motions, the Court concludes that it is unnecessary to rule on the

admissibility of the parties’ infringement experts as a prerequisite to deciding Shark’s motion for

summary judgment of non-infringement. The governing ordinary observer test “does not

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prohibit a trier of fact from relying exclusively or primarily on a visual comparison of the

patented design and the accused device’s design in finding design patent infringement.” Hosley

Int’l Trading Corp. v. K Mart Corp., 237 F. Supp. 2d 907, 911 (N.D. Ill. 2002) (citing Braun Inc.

v. Dynamics Corp. of America, 975 F.2d 815, 821 (Fed. Cir. 1992)); see also Minka Lighting,

Inc. v. Craftmade Int’l, Inc., 93 Fed. Appx. 214, 217 (Fed. Cir. 2004).

Further, expert testimony “cannot create a material issue of fact, where [a] visual

comparison reveals that the alleged infringing [design] is not substantially similar to the

[patented] design.” Harel v. K.K. Intern. Trading Corp., 994 F. Supp. 2d 276, 284 (E.D. N.Y.

2014); see also Wallace v. Ideavillage Products Corp., 640 Fed. Appx. 970, 972 (Fed. Cir. 2016)

(comparing the patent drawings for a body washing brush to the photographs of an accused

product set forth in plaintiff’s expert report and “agree[ing] with the district court that no

reasonable fact-finder would find them to be substantially the same under * * * the ordinary

observer test”); Bush Indus., Inc. v. O’Sullivan Indus., Inc., 772 F. Supp. 1442, 1450 (D. Del.

1991) (“[e]xpert testimony is unnecessary under the ordinary observer prong of the infringement

test”); HR U.S. LLC v. Mizco Int’l, Inc., 2009 WL 890550, at *13 (E.D. N.Y. Mar. 31, 2009)

(holding that the “conclusions of plaintiff’s experts are insufficient to preclude a finding of non-

infringement as a matter of law”); Schnadicr Corp. v. Collezione Europa U.S.A., 2002 WL

31253750, at *11-12 (N.D. Ill. Oct. 4, 2002) (granting in relevant part summary judgment for

non-infringement based on ordinary observer test and refusing to rely on expert testimony from

both parties concerning whether the ordinary observer test was satisfied).

Dyson’s infringement expert, Charles Mauro, and Shark’s infringement expert, Alan Ball,

have both provided detailed reports analyzing how the ordinary observer would view Dyson’s

Asserted Patents and Shark’s Accused Designs. These reports have been useful in distilling a

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large and complex record into the core issues of significance, especially on the infringement

claim. In particular, the Court has taken many of the comparison images used in its analysis

below from Mauro’s report. His thorough work has assisted the Court considerably by focusing

the Court’s attention on the similarities and differences between the competing designs.

Nonetheless, even when it excludes from consideration Ball’s reports, and views the relevant and

reliable portions of Mauro’s reports and testimony in the light most favorable to Dyson, the

Court concludes that Dyson’s Asserted Patents and Shark’s Accused Designs are plainly

dissimilar under governing Federal Circuit precedent and therefore Shark is entitled to summary

judgment of noninfringement.3 See Egyptian Goddess, 543 F.3d 681-83 (affirming grant of

summary judgment in favor of alleged infringer and concluding that accused design could not

reasonably be viewed as so similar to the claimed design that the ordinary observer would be

induced “to purchase one supposing it to be the other,” despite plaintiff’s expert’s testimony to

the contrary, and without excluding plaintiff’s expert’s testimony under Daubert); OddzOn

Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) (affirming grant of

summary judgment in favor of alleged infringer and concluding that district court did not err in

giving little weight to testimony of plaintiff’s expert regarding similarity between rocket-shaped

football that was subject of plaintiff’s design patent and allegedly infringing ball, as expert

testified only as to overall similarity between balls, not that similarity was caused by copying of

protectable ornamental features).

Mauro has decades of experience in the field of vision science and has submitted

approximately 250 pages of reports in this case for the Court’s careful consideration. But, as the

Federal Circuit cases cited above make clear, the interplay between the summary judgment and

3
Consistent with this approach, the Court finds it unnecessary to resolve the motions to exclude the
infringement experts [373] and [389] and denies them as moot.

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Daubert standards does not require the Court to uncritically accept every one of Mauro’s

opinions, nor does it suggest that the Court should overlook any flaws, omissions, or

inconsistencies in his work. To the contrary, in OddzOn, the Federal Circuit rejected an

argument that “the district court erred by evaluating the persuasiveness of [Plaintiff’s] expert’s

testimony on summary judgment.” 122 F.3d at 1405. The court went on to explain that although

“the district court viewed the expert’s testimony in the light most favorable to [Plaintiff],” it

nonetheless “held that the expert’s opinion was wholly conclusory and devoid of any analysis

regarding whether the ornamental features created the overall similarity” and properly concluded

that “the expert testimony was insufficient to support a jury verdict in [Plaintiff’s] favor.” Id.

Similarly, in Egyptian Goddess, the Federal Circuit noted several problems with the plaintiff’s

expert’s declaration in affirming a grant of summary judgment of non-infringement on the

ground that no reasonable fact-finder would believe the accused design to be the same as the

patented design. 543 F.3d at 682. Here, too, notwithstanding Mauro’s impressive credentials

and helpful organization of the key concepts, the Court sees several gaps in his analysis

(explained in detail below) that undermine the persuasiveness of his opinions.

C. Infringement

The Court now turns to Shark’s motion for summary judgment of noninfringement.

Shark argues that it is entitled to summary judgment that its Accused Designs do not infringe

Dyson’s Asserted Patents because its designs and Dyson’s designs are plainly dissimilar. Dyson

responds that this is a question of fact that must be answered by a jury. Before addressing the

substance of the parties’ arguments, the Court outlines the applicable legal principles.

“The scope of a claimed design encompasses ‘its visual appearance as a whole, and in

particular the visual impression it creates.’” Hosley, 237 F. Supp. 2d at 909 (quoting Contessa

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Food Products, Inc. v. Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002), abrogated on other

grounds by Egyptian Goddess, 543 F.3d 665). “Unlike an invention in a utility patent, a patented

ornamental design has no use other than its visual appearance,” and therefore “its scope is

‘limited to what is shown in the application drawings.’” In re Harvey, 12 F.3d 1061, 1064 (Fed.

Cir. 1993) (quoting In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988)); see also Hosley, 237 F.

Supp. 2d at 909; Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995) (“‘Design

patents have almost no scope. The claim at bar, as in all design cases, is limited to what is shown

in the application drawings.’” (quoting Mann, 861 F.2d at 1582)).

The patentee “must prove infringement of a design patent by a preponderance of the

evidence.” Ethicon, 796 F.3d at 1335. A design patent is infringed “‘[i]f, in the eye of an

ordinary observer, giving such attention as a purchaser usually gives, two designs are

substantially the same, if the resemblance is such as to deceive such an observer, inducing him to

purchase one supposing it to be the other.’” Egyptian Goddess, 543 F.3d at 670 (quoting

Gorham Co. v. White, 81 U.S. 511, 528 (1871)). The “ordinary observer” is “not an expert in the

claimed designs,” but rather “one of ‘ordinary acuteness’ who is a ‘principal purchaser[]’ of the

underlying articles with the claimed designs.” Ethicon, 796 F.3d at 1337. The ordinary observer

“has the capability of making a reasonably discerning decision when observing the accused

item’s design whether the accused item is substantially the same as the item claimed in the

design patent.” Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1323

(Fed. Cir. 2007), abrogated on other grounds by Egyptian Goddess, 543 F.3d at 678 (eliminating

the “point of novelty” test from the analysis of a claim for design patent infringement).

The “infringement inquiry” is not limited “to those features visible at the time of sale,”

but also applies to “those features visible at any time in the ‘normal use’ lifetime of the accused

32
product,” which “extends from the completing of manufacture or assembly until the ultimate

destruction, loss, or disappearance of the article.” Int’l Seaway Trading Corp. v. Walgreens

Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009) (citing Contessa Food, 282 F.3d at 1380). These

are the “features of the patented design the ordinary observer is to examine in determining if

there is substantial similarity with an accused design.” Arminak, 501 F.3d at 1323.

The Federal Circuit has “made clear that a design patent, unlike a utility patent, limits

protection to the ornamental design of the article.” Richardson v. Stanley Works, Inc., 597 F.3d

1288, 1293 (Fed. Cir. 2010) (citing Lee v. Dayton–Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir.

1988); 35 U.S.C. § 171). When the design contains both functional and ornamental aspects, “it

is entitled to a design patent whose scope is limited to those [ornamental] aspects alone and does

not extend to any functional elements of the claimed article.” Id. at 1394. Thus, “[w]here a

design contains both functional and ornamental features, ‘the scope of the claim must be

construed in * * * order to identify the non-functional aspects of the design as shown in the

patent,’ as only the ornamental features are protected.” Colida v. Sharp Electronics Corp., 125

Fed. Appx. 993, 994 (Fed. Cir. 2005) (quoting OddzOn, 122 F.3d at 1405). Claim construction

“limits the scope of the patent to its overall ornamental visual impression, rather than to the

broader general design concept.” OddzOn, 122 F.3d at 1405.

Following claim construction, “the patentee must show that the perceived similarity”

between the patented design and the allegedly infringing design “is based on the ornamental

features of the design.” OddzOn, 122 F.3d at 1405. In other words, “[t]he patentee ‘must

establish that an ordinary person would be deceived by reason of the common features in the

claimed and accused designs which are ornamental.’” Id. (quoting Read Corp. v. Portec, Inc.,

970 F.2d 816, 825 (Fed. Cir. 1992)). “When no significant distinction in design has been shown

33
between the patent drawing and its physical embodiment,” the Court may “view them both, and

* * * compare the embodiment of the patented design with the accused devices.” Lee, 838 F.2d

at 1189.

The focus of the ordinary observer test must be on the overall ornamental visual

impression, rather than “similarities of ornamental features in isolation.” Ethicon, 796 F.3d at

1335. Thus, “[a]n element-by-element comparison, untethered from application of the ordinary

observer inquiry to the overall design, is procedural error.” Id.; see also Sport Dimension, Inc. v.

Coleman Co., Inc., 820 F.3d 1316, 1322 (Fed. Cir. 2016) (“design patents protect the overall

ornamentation of a design, not an aggregation of separable elements”). Nonetheless, “‘all of

the ornamental features illustrated in the figures must be considered in evaluating design patent

infringement.’” Int’l Seaway, 589 F.3d at 1241 (quoting Contessa Food, 282 F.3d at 1378). And

a “proper comparison requires a side-by-side view of the drawings of the * * * patent design and

the accused products.” Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1304 (Fed. Cir.

2010).4

4
Dyson argues that “[t]he ordinary observer has ‘ordinary acuteness,’ but is not one who ‘sees and
examines the articles containing [the accused and patented designs] side by side.’” [445] at 29 (quoting
Gorham, 81 U.S. at 527). However, Gorham was criticizing not the use of a side-by-side comparison
generally, but the lower court’s use of a side-by-side comparison from the perspective of “a person
engaged in the manufacture or sale of articles containing such designs.” 81 U.S. at 527. In more recent
cases, the Federal Circuit has approved of the use of side-by-side comparisons in applying the “ordinary
observer” test. See Crocs, 598 F.3d at 1304; Apple, Inc. v. Samsung Electronics Co., Ltd., 678 F.3d 1314,
1330–31 (Fed. Cir. 2012) (“A side-by-side comparison of the two designs shows substantial differences
in the overall visual appearance between the patented design and the Fidler reference[.]”); Richardson,
597 F.3d at 1296 (“In a side-by-side comparison with the [asserted] patent design, the overall effect of
this streamlined theme makes the [allegedly infringing] tools significantly different from [the plaintiff’s
patented] design.”); Arminak, 501 F.3d at 1327 (“[The plaintiff] also implies that it was improper for the
district court to do a detailed side-by-side comparison between the patented design and the accused
design. [The plaintiff] cites no authority for this contention because there is none. To establish
infringement in a design patent case, the district court is required to compare the patented design with the
accused design. Without comparing the patented design with the accused design, there was no way for
the district court to determine whether an ordinary observer would find the accused design deceptively
similar[.]”).

34
 “Where the claimed and accused designs are ‘sufficiently distinct’ and ‘plainly

dissimilar,’ the patentee fails to meet its burden of proving infringement as a matter of law.”

Ethicon, 796 F.3d at 1335 (quoting Egyptian Goddess, 543 F.3d at 678). Only if, under the

ordinary observer analysis, the infringing design is not plainly dissimilar, is it necessary to look

at prior art. See Ethicon, 796 F.3d at 1337 (“[C]omparing the claimed and accused designs with

the prior art is beneficial only when the claimed and accused designs are not plainly

dissimilar.”); Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997, 1012 (N.D. Ill. 2010)

(“if the claimed design and the accused design are sufficiently distinct, as here, no comparison

with the prior art is necessary”); Voltstar Techs., Inc. v. Amazon.com, Inc., 2014 WL 3725860, at

*2 (N.D. Ill. Jul. 28, 2014); Wallace v. Ideavillage Products Corp., 2014 WL 4637216, at *4

(D.N.J. Sep. 15, 2014) (“Pursuant to the teaching of Egyptian Goddess, District Courts have

granted summary judgment based solely on comparison between accused and patented designs,

without referring to prior art.” (collecting cases)). Prior art is examined “to identify differences

that are not noticeable in the abstract but would be significant to the hypothetical ordinary

observer familiar with the prior art.” Ethicon, 796 F.3d at 1335. “If the accused design has

copied a particular feature of the claimed design that departs conspicuously from the prior art,

the accused design is naturally more likely to be regarded as deceptively similar to the claimed

design, and thus infringing.” Egyptian Goddess, 543 F.3d at 677.

The Court is guided by the Federal Circuit’s application of the ordinary observer standard

in other design patent cases in which the asserted design contained both functional and

ornamental elements. In Ethicon, for example, the court was required to compare the following

patented design for a surgical device and an allegedly infringing surgical device:

35
The court construed three functional elements of the design: a fluted torque knob, a rounded

activation button, and a U-shaped trigger. The court restricted the claim scope to “the particular

ornamental designs of those underlying elements.” Ethicon, 796 F.3d at 1334. And taking that

claim scope into account, the Federal Circuit affirmed the district court’s summary judgment of

non-infringement because the ornamental aspects of the claimed and accused designs were

“plainly dissimilar,” even though, “[o]n a general conceptual level, both designs include an open

trigger, a small activation button, and a fluted torque knob in relatively similar positions within

the underlying ultrasonic device.” Id. at 1336. The district court had determined that the “most

obvious difference between the claimed and accused designs [w]as ‘the overall contoured shape’

of the claimed design’ and the ‘overall linear shape’ of the accused design.” Id. It also had

noted specific differences between the curvature of the trigger, the width and length of the

handles and triggers, the shape of the activation button, and the spacing of the tapered flutes. Id.

Affirming the district court’s ruling, the Federal Circuit concluded, “there can be no genuine

dispute that at the proper level of granularity, the claimed ornamental designs of the [d]esign

[p]atents are, as a whole, plainly dissimilar from the ornamental design of [the alleged

infringer’s] accused ultrasonic shears.” Id. at 1337.

36
 In OddzOn, the Federal Circuit evaluated a patented design and an allegedly infringing

design for a rocket-shaped football, shown in the following images:

Claimed design (functional tail and fins show in yellow and blue, respectively)

Accused products

The Federal Circuit affirmed the district court’s grant of summary judgment to the defendants for

noninfringement. The court of appeals agreed with the district court’s claim construction, which

limited “the scope of the patent to its overall ornamental visual impression, rather than to the

broader general design concept of a rocket-like tossing ball.” OddzOn, 122 F.3d at 1405.

“Because the accused products are clearly similar to OddzOn’s design in terms of the their

football shape and their tail and fins,” the court of appeals explained, “it was incumbent on

OddzOn to submit evidence establishing that the ornamental aspects of their football-with-tail-

and-fin combination accounted for the similarity perceived by the survey evidence.” Id. at 1406.

The court of appeals concluded that none of the evidence, viewed in the light most favorable to

OddzOn, “would support a jury verdict that the accused devices are similar to the patented

37
design with its football-shaped ball, slender tailshaft, and three fins which seemingly protrude

out of the football and gently flare outward.” Id.

In Elmer, 67 F.3d 1571, the Federal Circuit examined designs for vehicle-mounted

advertising signs, as shown in the following images:

Patented design (upper protrusion in purple, triangular vertical ribs in yellow)

Accused product

The district court allowed the question of infringement to go to the jury. But the court of appeals

reversed, holding that overall shape similarity was insufficient as a matter of law. Elmer, 67

F.3d at 1578. The court concluded that no reasonable jury could have ignored the two

ornamental features that distinguished the designs at issue: the upper protrusion and the

triangular vertical ribs. Id. at 1577-78 (“The claimed design * * * is limited to a vehicle sign

having, inter alia, triangular vertical ribs and an upper protrusion. * * * The overall ornamental

appearance of the * * * design, as shown in the patent drawings, is too different from [the alleged

infringer’s] design for an ordinary observer to be induced into purchasing [the allegedly

infringing] product thinking it was [the plaintiff’s] design.”).

38
 With this legal background in mind, the Court turns to the parties’ vacuums. Shark

argues that it is entitled to summary judgment that its Shark Rockets do not infringe the Asserted

Patents because the overall ornamental visual impression of the Shark Rockets is plainly

dissimilar to Dyson’s patented designs. In evaluating this argument, the Court views the

undisputed evidence in the light most favorable to Dyson. The Court primarily gives

consideration to the patent drawings, the other images provided by the parties and reproduced

above, and the sample vacuums that the parties delivered to the Court following the October 11,

2017 hearing. The Court also takes into consideration the expert reports prepared by Dyson’s

infringement expert, Mauro, but not the expert reports of Shark’s infringement expert, Ball. For

purposes of this motion, the Court accepts Dyson’s position that all four models of the Shark

Rockets are substantially the same and can be analyzed together.

The Court begins with Judge Darrah’s claim construction. Judge Darrah found that the

pistol grip handle, long tube, and low profile floor unit were functional features. Therefore, the

Court agrees with Shark that “it is not enough for Dyson to show that the Shark Rockets have

pistol-grip hand vacuums with long tubes and low-profile floor units with wheels.” [371] at 35;

see also Ethicon, 796 F.3d at 1336 (“Similarity at [a] conceptual level * * * is not sufficient to

demonstrate infringement of the claimed designs.”); Richardson, 597 F.3d at 1296 (“[I]gnoring

the functional elements of the [claimed and accused] tools, the two designs are indeed

different.”); OddzOn, 122 F.3d at 1405 (rejecting “contention that overall similarity of the

‘rocket-like’ appearance is sufficient to show infringement”); Lee, 838 F.2d at 1188 (rejecting

contention “that the patent is perforce infringed by [an accused product] with that general

configuration” and affirming non-infringement based on different “surface details”). Instead,

39
Dyson would need to prove at trial that the ornamental features of the Shark Rockets combine to

produce substantially the same overall ornamental appearance as Dyson’s patented designs.

The Court concludes that Shark is entitled to summary judgment of noninfringement

because, viewing the undisputed facts in the light most favorable to Dyson, the Shark Rockets

have a substantially different overall ornamental appearance than the Asserted Patents. The

Court starts with the overall designs and then considers more granular significant differences

between the designs. The Federal Circuit has confirmed that this is a proper way to apply the

“ordinary observer” test.

Take, for instance, Richardson, which involved two multi-tool designs that had the same

overall shape:

Patented design

Accused product

40
The Federal Circuit concluded that the district court properly “appl[ied] the ordinary observer

test in finding no infringement” where it stated the correct legal standard and “recited the

significant differences between the ornamental features of the two designs but, in determining

infringement, it mainly focused on whether an ordinary observer would be deceived into thinking

that any of the [alleged infringing] designs were the same as [the plaintiff’s patented design.”

Richardson, 597 F.3d at 1295. The Federal Circuit agreed with the district court that “[o]verall,

the accused products clearly have a more rounded appearance and fewer blunt edges than the

patented designs.” Id. at 1296.

Another example is Lee, in which the Federal Circuit determined that an ordinary

observer would not mistake the following massage tools for one another:

Claimed design

Accused product

The Federal Circuit rejected the plaintiff’s invitation to hold “that the patent is perforce infringed

by a massage device with [the same] general configuration,” instead holding that the district
41
court correctly viewed the more granular design aspects of the accused devices—“the wooden

balls, their polished finish and appearance, the proportions, the carving on the handle, and all

other ornamental characteristics”—in applying the ordinary observer test. Lee, 838 F.2d at 1188.

The Federal Circuit concluded that those different “surface details” were “sufficient to make

apparent to an ordinary observer that one design is not the other.” Id. at 1189.

The Court starts with the overall design, as depicted in the following comparison images

from Mauro’s expert report, [75-1] at 301, showing the side angle of the competing stick vac

designs:

42
Overall, the Shark Rockets have streamlined shapes with flowing contours that create an

aerodynamic look. The handheld portion of the design appears as a unified oval shape that flows

into the cylindrical tube connecting the hand vac to the floor unit. By contrast, the Dyson design

uses regular geometric shapes—like rectangles, circles, and tubes—and perpendicular lines that

create a more industrial, machine-like look with distinct component parts.

Most of the individual, significant design features identified in Judge Darrah’s claim

construction order also are substantially different, coming together to create a substantially

different overall ornamental appearance. The Court begins with the handheld portion of the

vacuums, as depicted in the following images:

‘010 and ‘823 patents and HV300/310 designs

These images show that the Dyson stick vacs have a push-in “trigger”-style power button located

on their handles.5 By contrast, the Shark Rockets have a sliding power button located on top of

5
Several of the “industry executives and industrial designers” whom Mauro references in his report
emphasized this “new” feature, writing, for instance, that “[b]oth DC59 vacuums work with a pull of the
pistol grip trigger”; “the new handheld DC58 looks just like a power drill, and in a way, it performs like
one too”; the DC59 has a “trigger design.” [75-1] at 23.

43
the handle. The Dyson stick and hand vacs have a motor housing above the handle and the

battery housing below, while the Shark Rockets have no battery (and instead have a 30-foot

cord) and a motor housing below (HV300) or in front of (HV321, HV381) the handle. The

handheld portion of the Dyson stick and hand vacs is an upright cylinder, with a cylindrical dust

cup on the bottom. The Shark Rockets, in contrast, do not have a cylindrical shape above the

handle, and instead have a tapered shape that connects with the handle. They also have a curved,

wedge-shaped dust cup rather than a cylinder. Further, the ‘010 patent contains Dyson’s eye-

catching “crown” array of cyclones at the top, which the Shark Rockets lack.6

The Court recognizes that Dyson’s ‘823 patent does not encompass the crown array or

other portions of the hand vac that are shown in dashed lines. Thus, in analyzing the ‘823 patent,

the Court excludes those portions of the Dyson and Shark vacuums, leaving the focus on the

motor housing located above the crown and the dust cup located below the crown. This more

limited focus serves to emphasizes the differences between the two designs: while the Dyson has

a cylindrical motor housing on the top of the handle connecting at a crisp angle to the handle, the

Shark has no motor housing on top of the handle and instead has a curved, angular piece that

connects with a swoop to the pistol-grip handle. And while the Dyson has a cylindrical dust cup,

the Shark has a wedge-shaped dust cup.

Perhaps the best illustration of the substantially different visual appearance of the

handheld portion of the Dyson and Shark stick vacs is the overlay image submitted by Dyson’s

infringement expert, Mauro, showing the Dyson on top of the Shark Rocket:

6
One of the industry articles quoted in Mauro’s study described this design element as a “retro-futuristic
crown for the motor component that makes you think vaguely of classic cars.” [75-1] at 23.

44
The overlay shows that the overall shape, the component shapes, the angles, and the prominent

ornamental elements of the two designs are plainly different.

Turning to the floor unit portion of the designs, the Dyson stick vacs have narrow-set,

“cylindrical” wheels with a circular, ribbed detail. The Shark Rockets have much wider-set

wheels, with spoke-type ornamentation. The floor unit of the Shark Rockets is more than twice

the size of the Dyson floor units, as shown in the following image from the appendix to Mauro’s

report, [75-1] at 302:

45
 The cylindrical tubes connecting the hand vacs to the floor units are similar in the Dyson

and Shark Rocket designs, but nonetheless have readily noticeable differences. The suction tube

on the Shark Rockets is proportionally thinner and has a much longer plastic fitting on the

bottom, as the following image in the appendix to Mauro’s report shows, [75-1] at 325:

46
 In sum, there are substantial differences in both the overall ornamentation, as well as the

significant ornamental details that contribute to the overall ornamentation, when comparing

Dyson’s patented designs and Shark’s allegedly infringing designs, creating an overall

ornamental impression that is plainly dissimilar. In reaching this conclusion, the Court is guided

by the Federal Circuit precedent outlined above, which Shark discusses extensively in its briefs

and Dyson largely ignores. In all of those cases, the overall shapes of the designs were the same,

but the Federal Circuit placed dispositive weight on the kinds of design details identified above.

Dyson does not explain why the details mattered to the ordinary observer in those Federal Circuit

cases affirming judgment of non-infringement as a matter of law, but do not matter here.

47
 Dyson quotes Crocs, 598 F.3d at 1303, for the proposition that “‘minor differences

between a patented design and an accused article’s design cannot, and shall not, prevent a

finding of infringement.’” [445] at 9-10. But in Crocs, the overall shapes of the patented design

and allegedly infringing shoe were nearly identical, as illustrated by the following images, with

the patented designs in the left column and the allegedly infringing designs in the right column:

Crocs, 598 F.3d at 1304; see also id. at 1304-06 (additional comparison images).

Dyson also cites four district court cases for the proposition that “Courts routinely deny

summary judgment when there is a fact dispute over the salience—or, in other words, the relative

impact—of specific differences between the accused and patented designs.” [445] at 39.7 But

7
See Solar Sun Rings, Inc. v. Wal-Mart Stores, Inc., 2012 WL 5379144, at *5 (C.D. Cal. Oct. 31, 2012)
(floating solar pool heater, question of fact whether ordinary observer would see the circular welds that
were unique to Defendant’s design, or would only see the square pillows created by the welds, which
were “nearly identical” to the pillows in plaintiff’s patent); Nichia Corp. v. Seoul Semiconductor Ltd.,
2007 WL 2771298, at *3 (N.D. Cal. Aug. 22, 2007) (whether design differences between LEDs were
“insubstantial, as [plaintiff] argues, or significant, as [defendant] argues, constitutes an issue of fact for
the jury”; differences were alleged infringing design’s “lack of a rectangular recession on the rear
surface” and “inclusion of a translucent window on the front surface” and, “in at least some models, a
flattened outer corner on the vertical leg of the electrode”); Mondo Polymers Technologies, Inc. v.
Monroeville Indus. Moldings, Inc., 2009 WL 3698432, *4 (S.D. Ohio Nov. 3, 2009) (alleged infringer
manufactured an offset block that was different than the patented design in that it featured a clip that
attached to one end of one side and flat flanges that did not extend the full length of the side wall or base,

48
Dyson does not discuss the designs or other relevant facts from any of those cases, and only one

of the cases, OraLabs, has illustrations of the asserted and allegedly infringing designs. 2015

WL 4538444, at *8-10. In OraLabs, the overall shape of the patented lip gloss and allegedly

infringing lip gloss was almost identical, with the only noticeable difference being the flattened

top in the allegedly infringing design, as shown in the following images:

Here, by contrast, the overall shape and the prominent design elements of Dyson’s Asserted

Patents and Shark’s Accused Designs are all significantly different in the ways noted above.

Dyson also cites Braun, which involved an allegedly infringing handheld blender, for the

proposition that the Federal Circuit has affirmed jury verdicts of infringement “where the

but the overall visual similarity of the blocks was significant); OraLabs, Inc. v. Kind Group LLC, 2015
WL 4538444, *8-10 (D. Colo. July 28, 2015) (designs of egg-shaped lip glosses not plainly dissimilar,
where only differences were one had flat top (rather than round), a circular side wall (rather than partially
indented) and three raised “s” shaped curves on the side wall).

49
evidence showed that even a ‘readily noticeable different’ and other asserted dissimilarities

between designs did not affect the ordinary observer’s perception of overall design.” [445] at 40

(quoting Braun, 975 F.2d at 820-21). But the facts in that case were very different. The court

did not identify any functional aspects of the patented design, see Braun, 975 F.2d at 820 n.7,

and the patented design and allegedly infringing design were close to identical, as shown in the

figures copied below. Accordingly, “[t]he jury could * * * reasonably find that the only readily

noticeable difference between Braun’s blender and Waring’s blender is that the former has a

handgrip indentation while the latter does not.” Braun, 975 F.2d at 820.

Dyson urges the Court to deny summary judgment based on Mauro’s opinion that the

Asserted Patents and Accused Designs look substantially similar to the ordinary observer.

Mauro, an industrial designer, used a methodology based on “shape perception science” to

compare Dyson’s Asserted Patents to the Shark’s Accused Designs. He submitted a report prior

50
to claim construction [75], a declaration regarding claim construction [146], and a supplemental

report following claim construction [379-22].

In the report he prepared prior to claim construction, Mauro explained that his analysis

was “based on examination of the overall appearance, not on the details, of the patented and

accused designs” because Dyson created a “new product category” that “narrows the analysis of

infringement by demonstrating that the Dyson ‘power tool, pistol grip, point and shoot’

configuration design created an overall visual design category which was new and distinct.”

[75-1] at 28, ¶ 42 (emphasis in original). Mauro opined that when an ordinary observer is

cognitively processing visual design, the process “proceeds to a point where recognition takes

place,” and “[o]nce this happens, the ordinary observer does not (de facto) continue to view the

product at greater levels of detail but simply confirms that the product matches the knowledge

they have about a product and then moves on to the next visual or physical task.” Id. at 44, ¶ 64.

According to this approach, “when any design shape is perceived by the ordinary observer as a

member of the Dyson patented category as determined by overall shape, the act of categorization

may constitute baseline infringement.” Id. at 50, ¶ 77. Mauro further opined that the

arrangement of a “pistol grip” shape attached to a “suction tube” shape and a “floor suction”

shape “gives rise to the overall shape of the product and is what fundamentally results in a

finding of infringement.” Id. at 55, ¶¶ 84-85. Comparing the ‘010 patent and Shark’s HV300

design, for example, Mauro concluded that “all of the major aspects that make up these designs,

including salient shapes, critical alignments of salient shapes, number of parts, and overall shape

complexity, would be perceived by ordinary observers as the same.” Id. at 6, ¶ 5. He illustrates

this with a comparison of the side view of the two vacuums, with red boxes around what he

deems the three “salient shapes”: the pistol-grip power tool shape, the suction tube shape, and the

51
floor suction shape. Id. He opined that although “there are differences in the details between the

Shark Rocket designs and Dyson’s patented designs, such details do not make the overall

appearance of the accused and patented designs different so as not to infringe. In other words,

despite the differences, ordinary observers giving the designs normal attention would find their

overall appearance to be substantially the same.” Id. at 7, ¶ 5.

During claim construction, Mauro submitted a declaration [146] in which he asserted that

he did not consider any aspect of the claimed designs (pistol grip, long suction tube, or low-

profile floor unit) to be functional. Judge Darrah rejected Mauro’s position and held that all

three of these elements were functional and therefore were protected only to the extent that their

shape and ornamentation contributed to the overall ornamentation of the patented designs.

Following claim construction, Mauro issued a supplemental expert report. [379-22]. The

supplemental report addressed “whether and to what extent the shape and ornamentation of the

[features identified as functional in the Court’s claim construction] contribute[] to the overall

ornamentation of the designs of the Asserted Patents.” Id. at 7-8, ¶ 18. Mauro opined that the

shape and ornamentation of the straight, pistol-grip handle, long tube, and floor unit contributed

“significantly to the overall ornamentation of” the Asserted Patents. Id. at 7-9, ¶¶ 18-21. He

also explained that, “[t]o the extent the Court’s construction identifies functionality that should

not be considered, that does not change my opinion because no such functionality was ever used

as the basis for my prior or current opinions.” Id. at 9, ¶ 23.

Mauro’s reports do not convince the Court that Dyson’s Asserted Patents and Shark’s

Accused Designs are so similar that an ordinary observer would purchase a Shark supposing it to

be a Dyson. The “ordinary observer” assumed in Mauro’s analysis does not give the kind of

attention to the designs that the Federal Circuit requires under the ordinary observer test. The

52
ordinary observer must consider “all of the ornamental features illustrated in the figures.” Int’l

Seaway, 589 F.3d at 1241 (quoting Contessa Food, 282 F.3d at 1378); see also High Point

Design LLC v. Buyer’s Direct, Inc., 621 Fed. Appx. 632, 640 (Fed. Cir. 2015) (same). She

cannot be assumed to simply take a quick glance at the two vacuums, conclude that they are the

same basic shape, and stop looking. The ordinary observer is presumed to use more care in her

evaluation.

Dyson claims that Mauro did not disregard “the differences in minor details between the

patented design and the accused products,” but simply “concluded that they are too immaterial to

rise to the level of altering the overall shape, style and appearance of the product as perceived by

the ordinary observer.” [446] at 19. But in fact, Mauro concluded that an ordinary observer

would not look past this shape after—having taken a five to eight second glance, [445] at 36

(quoting Mauro 1/27/2015 deposition)—she placed the Shark Rockets in the “shape category”

composed of a pistol-grip vacuum, long tube, and floor unit. An “ordinary observer” would be

hard-pressed to make any decision about the design of any item in that period of time, much less

the requisite “reasonably discerning decision” (Arminak, 501 F.3d at 1323) about a product that

stands almost three feet high and can cost a couple hundred dollars. See Child Craft Industries,

Inc. v. Simmons Juvenile Products, Inc., 990 F. Supp. 638, 644 (S.D. Ind. 1998) (finding it

“implausible” that an ordinary observer would view a product “priced in the hundreds of dollars”

to be an “impulse purchase”). Moreover, the features that Mauro uses to define the category—

the pistol grip shape, the suction tube, and the floor unit—are the same features that Judge

Darrah determined were functional.

The Court recognizes that these features are protected by the design patents to the extent

that the shape and ornamentation of these elements contribute to the overall ornamentation of the

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vacuums. However, Mauro fails to discuss any of the ornamental features of the Asserted

Patents or the Accused Designs including most notably the prominent “crown” found in the ‘163

and ‘010 Patents. This is a significant oversight, as the ordinary observer must consider “all of

the ornamental features illustrated” in the patent. Int’l Seaway, 589 F.3d at 1241; cf. OddzOn,

122 F.3d at 1405 (district court did not err by affording “little probative weight” to plaintiff’s

expert who testified only as to overall similarity between rocket-shaped tossing balls, not that

similarity was caused by copying of protectable ornamental features). For instance, in Elmer, the

Federal Circuit explained that by including the vertical ribs and upper protrusion in its patent

drawings for its vehicle mounted advertising sign, it “effectively limited the scope of its patent

claim” to “a design that includes among its ornamental features triangular vertical ribs and upper

protrusion.” 67 F.3d at 1577.

While Mauro’s reports do not compare the competing designs’ ornamentation, they do

address similarities in the shape of the designs. However, the Court cannot agree that Mauro’s

comparison images support his ultimate legal conclusion that the ordinary observer would

purchase a Shark Rocket believing it to be a Dyson. For instance, Mauro looks at the

“transformational alignment” of the designs and concludes that “[o]ne can see immediately the

overall shape congruence, alignment of component parts, essential duplication of component part

shapes and the exact duplication of critical component part transitions between salient parts.”

[379-22] at 11-13. But his images show that the designs are not so similar.

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 In the image above, Mauro’s red lines do not, in fact, separate the “part transitions” of the

designs. See [379-22] at 12. The delineation between the floor unit and the suction tube should

be placed immediately behind the wheels; it is not for the Asserted Patent. If the red lines were

accurately drawn to separate the parts—as it is below—it would be even more apparent that the

floor unit of the Shark Rocket is substantially larger than the Dyson.

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 Likewise, in this image from Mauro’s analysis the red lines are not placed consistently

across the Asserted Patent and Accused Design. See [379-22] at 13. In particular, the first solid

vertical line runs along the front of the Asserted Patent’s floor unit, but cuts through the Accused

Design’s floor unit; Line B runs through the middle of the wheel on the Asserted Patent, but in

front of the wheel in the Accused Design; and the second solid vertical line runs along the back

of the lower cylindrical cuff in the Asserted Patent, but toward the front of the cylindrical cuff in

the Accused Design. This line placement cannot obscure the fact that the Shark floor unit is

much larger than the Dyson floor unit. The second and third solid vertical lines line up with the

top and bottom of the Dyson’s cylindrical tube, but not the Shark’s cylindrical tube, which

actually underscores their differences rather than their similarities.

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 Mauro also compares the number of angles and parts, concluding based in part on the

following image, that there is “essential duplication of component part shapes and the exact

duplication of critical component part transitions between salient parts.” [379-22] at 14:

But again, the red lines do not actually trace both of the designs’ component parts. While the

Dyson floor unit fits neatly in the front-most rectangular box, the Shark floor unit hangs out

several inches in front of the box. The square box tracing the Dyson’s lower coupling is much

too small to fit the Shark’s larger lower coupling. The square box tracing the Dyson’s upper

coupling does not fit the Shark’s larger, angled upper coupling. The line tracing the bottom of

the Shark hand unit does not follow the bottom of the Shark, which angles upwards at the back.

And the line tracing the top of the Dyson hand unit cuts off the top of the Shark hand unit. Since

the line drawings do not actually follow the lines of the designs, the Court cannot rely on the

drawings as a basis to conclude that the designs are substantially similar.

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 Moreover, Mauro’s opinions are incomplete because his reports analyze the designs from

only one angle, the side. Images of the other angles are relegated to appendices, which Mauro

does not discuss in the body of his reports. Mauro explains that “[d]uring [his] analysis of the

patented and accused designs, [he] examined all of the views in Appendix E in order to inform

my opinion of infringement” and that although he “included only the side view images,” in his

report, “the analysis applies to the others as well.” [75-1] at 53, ¶ 82. But this is unconvincing,

both due to Mauro’s lack of elaboration and because the difference between the overall

ornamentation of the two designs is even more apparent when other views are taken into

consideration. The following views of the top and bottom of the competing designs, see [75-1]

at 309, 315, show that the Shark Rocket’s floor unit are is much larger, its wheels are more wide-

set, and its hand unit is a more streamlined, ovular shape (rather than a combination of regular

geometric shapes) and lacks the prominent “crown” ornamentation found on the Dyson:

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 The incompleteness of Mauro’s analysis of significant design details and their

contribution to overall visual ornamentation is highlighted when Mauro’s opinions from other

cases are considered. In those cases, Mauro provided an expert report for the defendant and

opined that the defendant’s design did not infringe the plaintiff’s patent. In The Holmes Grp.,

Inc. v. West Bend Housewares, LLC, No. 1:05-cv-11367-WGY (D. Mass.), Mauro opined on the

following slow cooker designs:

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 Claimed design

Accused product

Mauro opined that all “humans” visually process designs in a step-wise fashion, starting first

with “overall ‘dominant shape,’” then “proceed[ing] to the ‘critical details(s)’ followed by

viewing of ‘minor details.’” [391-4] at 15. He looked beyond “overall shape” and pointed to the

different “critical details” of the “lid, lip, and knob” of the accused slow-cookers to conclude that

there was no infringement: “I then proceeded in the identification of those ornamental features

which fell into the category of ‘critical detail’. This analysis led to the identification of several

shape features including the design of the lid, lip, and knob. These shape features combine to

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form the ‘critical detail’ of the cookers in this litigation* * * . [T]hese aspects of the products

show very different shape features and therefore when combined to contribute to the overall

shape style and appearance of these products results in the finding that the [] patented designs

and the [] accused products are not substantially similar.” Id. at 17-18.

In Certain Foldable Stools, Inv. No. 337-TA-693 (U.S.I.T.C.), Mauro examined the

following designs for, as the name suggests, foldable stools:

Claimed design

Accused product

Mauro’s analysis looked at overall shape as well as “critical details.” [90-2] at 63-76, 93. Mauro

concluded that the designs “in actual fact, are dissimilar in all ornamental details and will not be

viewed as confusingly similar by the ordinary observer.” Id. at 124.

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 In contrast to the slow cooker and foldable stool cases, in this case Mauro stops at the

first step, “overall shape,” and then dismisses smaller details in conclusory fashion. Dyson

argues that there is no inconsistency in Mauro’s prior opinions, because each one presented a

unique set of factual and legal issues that factor into the infringement analysis, including: “(1)

the applicable law at the time the opinion was rendered; (2) the Court’s claim construction in that

case, (3) the identity of the ordinary observer, and (4) whether the design at issue exists in a

crowded field of very similar prior art designs, or whether the claimed design represents a

significant departure from the prior art.” [446] at 29. In theory, those arguments might justify

different approaches to the respective cases. But Dyson does not explain why any of these

factors lead Mauro to apply his method differently in this case. Why would the ordinary

observer stop his observation at overall shape when purchasing or using a $200 vacuum, but not

when buying a slow cooker or step stool? See Child Craft, 990 F. Supp. at 644. Further, as to

factor (4), there is no need to look at prior art if the infringing design is plainly dissimilar. See

Ethicon, 796 F.3d at 1337.

Dyson also points to Mauro’s opinion that “[i]t is likely that at some point during

development of the [Shark] designs the Dyson design was examined with precision,” because

“[t]here is no other reasonable explanation for such high degree of agreement between overall

salient shape configurations, relationships and related perceptual inventory.” [445] at 42. But

evidence of copying is “‘of no import’” to the analysis of whether a design patent has been

infringed. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1336 (Fed. Cir.

2009) (quoting Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1351 (Fed. Cir. 2002));

see also Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1311 (Fed. Cir. 2011) (same).

Similarly, Dyson cites anecdotal evidence of people saying the Shark Rockets look similar to

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Dysons or like knock-offs. See [445] at 47-49. But none of these people were applying the

ordinary observer test, and Dyson does not claim that any of them stated that they would buy a

Shark Rocket believing it to be a Dyson. Neither side has introduced actual survey results into

the record—for good reasons explored at length during the March 2018 hearing. In sum,

Mauro’s reports, viewed in the light most favorable to Dyson while taking into account the

shortcomings in his analysis identified above (see Egyptian Goddess, 543 F.3d at 682; OddzOn,

122 F.3d at 1405) do not change the Court’s conclusion that Dyson’s Asserted Patents and

Shark’s Accused Designs are plainly dissimilar. Shark is entitled to summary judgment of

noninfringement.

Because the Dyson Asserted Patents and Shark Accused Products are plainly dissimilar,

it is unnecessary for the Court to analyze the prior art. Ethicon, 796 F.3d at 1337; see also

Boiling Point Group, Inc. v. Fong Ware Co., 2017 WL 2930838, at *3 (C.D. Cal. Apr. 27, 2017)

(citing Ethicon and concluding that “[t]he Court finds the two designs sufficiently distinct and

thus will not explicitly compare them with the prior art”). The pending summary judgment and

Daubert motions concerning prior art, [370], [384], are therefore denied as moot.

Finally, turning to the remaining issues raised by the parties’ motions, the Court need not

reach Shark’s alternative argument that Dyson’s asserted patents are invalid, and therefore denies

as moot Dyson’s motions for partial summary judgment concerning the validity of its patents,

[375], [387], [392]. All motions concerning damages and damages experts, [377], [367], [395],

and [398], are moot as well because Shark, having prevailed on Dyson’s infringement claim, is

not liable for damages. Finally, there are four pending motions on miscellaneous issues: Shark’s

motion for leave to amend its answer and counterclaims to assert inequitable conduct [363];

Dyson’s motion for leave to file a surreply to that motion [495]; Shark’s motion for leave to file

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a motion for a finding that Dyson is in contempt for failing to comply with the court’s waiver

orders [457]; and Dyson’s motion to strike Shark’s motion for leave to file a motion for contempt

[500]. At the October 2017 hearing, Shark tendered to the Court a proposed decision path

indicating that if Shark were to prevail on its motion for summary judgment of noninfringement,

then judgment should be entered in its favor and the other pending motions need not be resolved.

Having decided the infringement issue in Shark’s favor, the Court presumes that Shark does not

intend to pursue its counterclaims or motion for contempt, and will deny as moot the four

miscellaneous motions [362-1], [457], [495], [500], going to those issues. If the Court has

misconstrued Shark’s intentions, Shark may of course file an appropriate motion under Rule 59.

Dyson, too, may file a Rule 59 motion if it believes the Court should reconsider today’s rulings.

Any motions to alter or amend the judgment must be filed by April 26, 2018. See Fed. R. Civ. P.

59(e).

IV. Conclusion

For these reasons, the Court grants Defendants’ motion for summary judgment of non-

infringement [369] and denies as moot the remaining motions for summary judgment, [375],

[377], [384], [387], [392], motions to exclude expert testimony, [367], [370], [373], [389], [395],

and [398], and miscellaneous motions, [362-1], [457], [495], [500]. Judgment will be entered in

favor of Defendants and against Plaintiffs.

Dated: March 29, 2018 _________________________________

Robert M. Dow, Jr.
United States District Judge

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