Case 1:11-cv-04530-KBF Document 56 Filed 10/21/13 Page 1 of 2

Case 1 :11-cv-04530-KBF Document 55 Filed 10/21/13 Page 1 of 2

GOTTLIEB, RACKMAN & REISMAN, P.C.
GEORGE GOTTLIEB
DAVIDS. KASHMAN
ALLEN I. RUBENSTEIN
JEFFREY M. KADEN
TIBERIU WEISZ
MARIA A. SAVIO
RICHARDS. SCHURIN
MARC P. MISTHAL
STEVEN STERN
BARRY R. LEWIN
COUNSELORS AT LAW
PATENTS TRADEMARKS COPYRIGHTS INTELLECTUAL PROPERTY
270 MADISON AVENUE
NEWYORK, N.Y. 10016-0601
PHONE: (212) 684-3900 FACSIMILE: (212) 684-3999
WEB: llttp:llwww.grr.com EMAIL; info@grr.com
DONNA MIRMAN BROOME
BARBARA H. LOEWENTHAL
JOSHUA R. MATTHEWS
ARIEL S. PEIKES
SAMANTHA G. ROTHAUS
JONATHAN M. PUR OW
PATENT AGENTS
ZOYA V. CHERN INA
ROBERT P. FEINLAND
COUNSEL
DIANA MULLER'
Of HiE B.AR
OF ONlY
October 21, 2013
USDCSDNY
OF COUNSEL
JAMES REISMAN
Via ECF and E-mail
Hon. Katherine B. Forrest
United States District Judge
DOCUMENT
ELECTRONJCALLY FILED
DOC#:
DATE F-IL-E"'"'"JDO"'N'Ct"I'T.......,.2or-+-<1 20 ....... 131)..... Daniel Patrick Moynihan, U.S. Courthouse
500 Pearl Street
New York, NY 10007-1312
ForrestNYSDChambers@nvsd.uscourts.gov
Re: High Point Design LLC v. Buyer's Direct, Inc.
11 CV 4530 (KBF)(DCF)
Dear Judge Forrest
We represent Plaintiff High Point Design LLC, as well as the Third-Party
Defendants Wal-mart Stores, Sears Holdings Corporation, and Meijer, Inc.
(collectively "High Point") in the above-referenced matter. We write to request
that the Court issue an order allowing High Point to renew its dispositive
combined motion, described in further detail below, and setting a supplemental
briefing schedule for this renewed motion.
This is an action by High Point for a declaratory judgment that U.S. Design
Patent D598, 183 ("the '183 patent"), covering a slipper and owned by BDI, is not
infringed because the '183 patent is invalid and/or is unenforceable. BDI has
counterclaimed for alleged infringement of the '183 patent and for related trade
dress infringement, claiming that both the '183 patent and BDI's alleged trade
dress rights have been infringed by a slipper product marketed and sold by High
Point.
Case 1:11-cv-04530-KBF Document 56 Filed 10/21/13 Page 2 of 2
Case 1: 11-cv-04530-KBF Document 55 Filed 10/21/13 Page 2 of 2
Hon. Katherine Forrest
October 21, 2013
Page 2
On May 15, 2012, this Court granted in its entirety High Point's motion for
summary judgment, pursuant to Rule 56, that the '183 patent is invalid for
obviousness and for functionality. Further, this Court granted High Point's
associated motion for judgment on the pleadings, pursuant to Rule 12(c),
determining that BDI's trade dress claims were not properly pled. As this Court is
already aware, those rulings were appealed to the U.S. Court of Appeals for the
Federal Circuit, and on September 11, 2013, the Court of Appeals handed down
an opinion reversing the grant of summary judgment of invalidity, vacating the
dismissal of BDI's trade dress claims, and remanding the case to this Court for
further proceedings consistent with its decision. A copy of the Court of Appeals'
decision is attached.
The Court of Appeals held, inter alia, that this Court's application of
various tests required by the controlling legal precedents, including, for example,
the test for obviousness of a design patent, was erroneous. Although the Court
of Appeals remanded for a more precise application of its standard for
obviousness, the Court of Appeals did not determine that BDI's patent was valid
or that the summary judgment motion was premature, nor did the Court of
Appeals take issue with the ultimate determination that BDI's patent is invalid due
to obviousness. High Point maintains that this Court reached the correct legal
conclusions, and seeks permission to renew its combined motion for summary
judgment and for judgment on the pleadings in order to brief the issues that the
Court of Appeals highlighted in its opinion.
High Point further requests that this Court stay all further discovery in this
case pending the Court's decision on High Point's renewed motion.
Encl.
\ Respectfully submitted,
\ ~ GOTTLIEB, RAC MAN & REISMAN, P.C.
\ ~
Jeffrey M. Kaden (JK 2632)
Attorneys for High Point Design LLC, Meijer,
Inc., Sears Holdings Corp. and Wal-mart
Stores, Inc.
cc: Andrew M. Ollis, Esq. (Via E-mail)