leben sixty four carpet incorporated versus brookstone company mr joseph good morning good morning welcome to you and please proceed with the your argument this case is a little bit complicated because it has quite a number of issues and you have to husband your time carefully because you probably won't have time to fully discuss the every issue raised in the brief but the selection is entirely up to you as well as the sequence so we'll be glad to hear your argument thank you my name is joel joseph from from bethesda maryland representing karr pat and stephen saylor the  in this case i'm afraid to say that we have become a knockoff nation no longer are not gough's only sold by street vendors they are now being sold in  reputed catalogs and stores just last week so i don't know how much of your time you you want to spend on editorials were quite aware what the policies of the patent law are the question is whether this reversible error on any of the particular rulings that you challenge here i was getting to that briefly just last week coach sue tart target stores the national chain for copying its its products bet this court should send a clear message that knockoffs are not to be taller it's not our job to send messages it's our job to decide appeals in accordance with the facts and the law so the question for us is under the precedents is there reversible error in the rulings that you challenge or not yes there certainly are reverse of boyer's your honor stephen saylor invented the carpet mat that goes onto a garage floor to trap liquids and pretend and run off us united states patent office issued a patent to him he also was issued patents in canada japan australia and new zealand were told that if you build a better mousetrap that the world will come to your door when you build a better mousetrap like mr saylor did it will be copied the card pad name was also issued a registered trademark by the united states penetrated by mark office mr actually made the same concept this difference actually made the product work and function and be sold and be a success in the marketplace and i give the analogy in the briefs that there were prior art and patents on the electric light bulb before mr ed let's talk about the current we're talking about the sleeve portion of the edge of the carmine and you're saying it was inventive to use a pliable hose as the filler for the sleeve as opposed to the pliable materials used in prior art sleeves and i don't see why the hose is any different it seems to me it would be equally obvious to use as the insert in the sleeve any of a hundred  materials so long as they the sufficient lead pliable qualities that when the tire runs over them they crush down and then the spring back up so that the sleeve once again has enough height so it's i don't see how you've answered judge laurie question about why using the hoses the sleeve insert wasn't an obvious variation of the prior art well it may appear obvious in retrospect but at the time no one else did it he was the first one to use of on those and to that doesn't make it not for us the issue is whether it was an obvious thing to do given what the prior art taught the prior art taught you need to put something in the sleeve that has a springy kind of quality so that after the tire flattens out momentarily the sleeve it will spring back up because these insert in the sleeve has that quality to it seems like any material that has the spring in quality would work fine as a sleeve insert including a hose it would seem that but it's not actually true the other products were foam and did not work i think the analogy it's precisely on point with the electric light bulb yes you can use many so many products for a filament but the one that edison used was the want to actually work in edison like mr saylor experimented and experimented and tried many different things to fill that perimeter on the car produced unexpected packages compared with what was in the prior ah yes we held a hearing on that your honor where is the evidence that there was a transcript i'm not sure if it's in the in the record it should be in the  record not sure one pretty sure it's on the record on the we helped many proceedings over the last several years and i think that was due to motion for a preliminary injunction where the judge heard testimony about how the device was invented experimentation mr sale and so forth you know on the obviousness issue that was decided on summary judgment did you create an evidentiary record in the obviousness summary judgment context showing unexpected result was that the hose work way better than all the other materials yes where is what is it what we referred to the earlier testimony and there was an affidavit from mr saylor submitted with the carpet sold its products to brookstone for seven years during that time the products so well so well that brookstone decided to copy it and have it made in taiwan they also still kept the copy in that hard pad with the registered trademark notice when they sold their imitation product and one of the issues before the this court is whether the district  disallowance of evidence being presented or of the of the argument being made that it was an intentional trademark infringement  i'll give the examples first of all just the fact that they were selling their imitation product in response to the copy that said car carpet with the register trademar that's enough however there was also a letter from their attorney where they were asked their asking if it was alright to sell this other product in the attorney one them not to they would because what they told them that well because it was a patent that's right but we're not talking about the patent now quiet about trademark infringement and whether the trademark infringement was intentional right yes that's right but it shows that the inter mixing apples and oranges it seems to me but they it does go to the a knew about the patent and they warned about the utility patent and therefore they must have intentionally infringed the trademark with it i don't see any connection between the the judge's instructions yes in error this were improper yes i am ok now in that regard please we're exactly are i'm looking at the i guess there's an appendix but let me just points to the point that i think was the most confusing part of the instructions the court told the jury that if they found that car pad was used as a noun that it was generic i think that's absolutely incorrect and i put the instructions said that use as a noun would be an indication that it might be generic not that it had to be found generic and i thought the instruction concluded with a sentence specifically saying that even if it is used as a noun you that yuri don't have to find that it's generic so seem to me your grotesquely missed describing what the instruction contained i think that instruction to a lay jury is still misleading when the court says that if it's a noun it's strong evidence that is the case law holds that it is strong evidence not necessarily conclusive but strong evidence i still think the instruction was confusing to the jury and that if you look there you go when you if you could reasonably object when you take a look at the and the other is the pages eighty through eighty one both of the dress generic is one of these instructions twenty eight that's the one in seventy six and the other is instruction fifty one part of which instruction put those two instructions together well putting it into context a carpet is not generic you don't know what it means if we look it up in the dictionary you can't find it is there the instructions the two of them they cross reference either mistake the law or were so confusing that a jury couldn't handle it and i don't understand you to have answered judge charles question about where in lies the confusion where in life the misstatement of the law the confusion i think is proved by what the jury found car this confession has to be in the words of the instruction where your allegation is that the instruction is confusing no i don't think necessarily so otherwise we would always have to reverse because the losing side would say well the jury ruled against me and the adverse verdict is the proof that the instruction was too confusing are wrong i don't think so your honor i think if you take the word car pad the court as a matter of walk and make a determination it is not generic is it a pad that goes if you move for summary judgment that it should be declared to be not generic no did not well then how can you complain that the court didn't rule as a matter of law to that effect well i just think the decision of the jury i mean is it generically or is not the jury could be wrong but the judge can't be wrong for not granting summary judgment of non generic appearing this morning on behalf of the pelly brookstone company inc on this appeal the record demonstrates i think that carp had a mr saylor got a very fair trial and the judge read the district judge  painstakingly considered all the rulings he made in this case particularly those which affected the ultimate outcome all of the trial court's decisions in this case should be affirmed by this court the first question that was addressed by mr joseph was the patten issue summary judgment is certainly permitted under the loft under thirty five u s c section one hundred three when it's appropriate and in this case it was there were two not talking about inequitable conduct we're just talking about obvious that's that's true your honor but they weren't examined by the patent trademark office this is a relatively simple invention it's a rectangular plat vinyl mat we we know it to look like ok and schumacher both disclose the same alleged invention mr joseph spent a lot of time talking about the notion that neither the inventions under robel or schumacher were commercially successful i don't think that's particularly relevant this appeal and to the extent that commercial success of those prior inventions was somehow relevant to judge reached determination on s judgment there is no evidence in the record regarding that issue indeed one of your honors asked the question of mr joseph when the summary judgment issue came up on the patent question wasn't evidence of a record created on the question of obviousness with respect to commercial success and lack thereof for the role and schumacher inventions well there was there is an affidavit from mr saylor that's in the it could be a factor your honor i don't think frankly that the sailor led sailor invention was anything different than what was disclosed in roll and schumacher road did either robel or hue mocker have a hollow sleeve into which insert was place the boat into which an insert was placed yes they both that the only arguable difference is that sailor specifically discloses the use of a i think he calls it a reinforced holds it's a card judgment as a matter of law obviously at the close of the plaintiff's case carpi had presented two witnesses in its case this a sailor and a gentleman who was associated with the company that supplies  there's no question that instructions twenty eight and fifty one given by judge read were correct and they fully comport with the law you can say there's no question but you you heard mr joseph claim that either they were  unacceptably confusing were they misstated the law i think he said both but he certainly said the former and so your response pinpoint response  is three responses your honor first of all mr joseph never presented any alternative instructions either to the trial court or to this court you never proposed any alternative instructions so if they were so confusing he should have said something before and point number two is that if you read those instructions and the authorities that they rely on they do accurately recite the law and with respect to instruction number twenty eight which you discussed with mr joseph  your paraphrasing of that instruction was exactly correct the jury did have the option to determine whether this mark was a generic but they also had the option to determine whether it was descriptive suggestive or arbitrary or fanc now brookstone did move in limiting for an order from judge read that would have said carpet as a matter of law is neither arbitrary nor fanciful and he denied that so he let the jury pick on the special which is part of the record you know what is this mark where does it fall on the on the spectrum of trademarks with respect to instruction number fifty one this is a sprint a standard trademark instruction that has to be given in any trademark litigation is a clear and correct statement along but it does seem that if you look at struction twenty eight the reference to kleenex could be a little fuse and what do you say about that disagreed router with all due respect i think if the jury was told merely  that evidence of usage of a mark as a noun rather than that than an adjective without any further description of what that means would maybe confuse the jury some  have forgotten from grammar school but the difference between a noun and an adjective this the other comment i have your honor in response to that question is that that phrasing and the use of the example of kleenex which we're all  and so with respect to the issue of the jury instructions numbers twenty eight fifty one mr joseph is not arguing as i understand it on this appeal that the jury's finding  oral suggestions made about altering the pattern or model jury instructions prior to the instructions being finalized your honor there was a lengthy conference with the judges clerk where a record was made where an opportunity was available to either side to object to instructions and you're saying that in that setting there was no objection raised by mr joseph to any portion of the instruction twenty eight or fifty one in fact there was mr joseph did object to instruction of her twenty eight and he specifically objected to the use of the word strong in that instruction only that was his only objection to twenty eight that's my recollection or the judge read took a break of say anything by way of objecting to any portion of the tentative instruction later issued a fifty one to my recollection of the night here and it's certain in addition that he did not the i guess the final comment i would like to make unless you're owners have any further questions is with respect to the  sanctions issue that arose during the course of discovery first of all i'm not clear in my mind as to why this issue was being raised on appeal but let me ask you a factual question the the magistrate judge ordered a second letter to be sent to the customer list to brookstone there was an objection and the judge modified the language a little bit of final text was arrived at was that letter ever actually sent that second letter according to mr joseph at a subsequent hearing your honor it was but i've never received evidence that it was ok but but he reports that it was sent yesterday now does that make it moot that was actually one of my one way points is i don't know why this issue is being raised at all first of all the trade dress claim that was originally brought is not part of this appeal and i also think the moot i guess one other comment on a an issue raised in mr josephs brief that i would have pertains to the issue of the number of types of goods at issue this let me ask another factual question because i have so much difficulty figuring out what happened here it into the confusion about the letter there was some confusion about whether a customer service which apparently mr joseph said he wanted to do and which would have been consistent with rather than violative of the discovery order i can't figure out from the brief whether that customer survey was done or not done it seems like one brief as it was done in the other  then why can't we agree about whether there was a customer survey completed or not you're out and we tried for ten months prior to the trial of this case to get that consumer survey it was never produced by mr joseph he acknowledged to the magistrate judge  quickly that it was not produced i believe he acknowledged the judge read that it was not produced where it was so what do you think it was done completed it's in his file but it was never submitted to the court is that is that what the conclusion is it was only and in his brief submitted to this court your honor that i saw that mr joseph claimed for the first time that a survey was done which is not in the record lawyer for sure for sure ok in conclusion with respect to the issue of the number of types of goods at issue this issue of course is also moot if the court sustains the jury's determination of generic ness and the propriety of judges reads instructions on the on the trademark claim in this case instructions number instruction numbers twenty eight fifty one i would point out in a tongue you what is moot in light of what else i'm sorry or mr joseph has challenged judge reached determination are any cases out there on this question they favor brookstone for the reasons we've stated in our brief the let me ask you this it may not be necessary tour decision not i'm not certain but is there a potential problem of  es or first amendment infringement for the court to order a party against its will to under certain words on paper so maybe others and the right to publish  in a letter to the customers of the opposing party not in a situation like this your honor where there is no authority that i'm aware of certainly none that they've cited that says judge reads determination on that matter was wrong moreover  they did violate a discovery no no no i'm i'm i'm i'm assuming there was a violation of a discovery order my question is given that violation how can we determine that it's within the power of the court to remedy that violation by ordering the trains aggressive or to write a letter containing certain statements as judge read pointed out your honor in his ruling the resolution of that question involved a balancing act balancing mr sailor's rights under the first amendment with a compelling governmental interest of ensuring the integrity of the judicial process how is the integrity ensured by or enhanced by the second letter being sent containing the statements to essentially dictated by the court if those were important statements that the customers of brookstone should read then maybe the court should have sent a letter well it ensures the integrity of the process your honor by hopefully encouraging mr saylor to abide by future court orders either in that proceeding or any other moreover mr saylor never object to setting out th a letter while there may be waiver if there is no objection timely made although there is objection now but but but i'm trying to follow the logic here of how the integrity of the judicial process where there's been a violation of a discovery orders terms is enhanced and could only be hance and be enhanced by making the violator write a letter to the other side's customers why couldn't brookstone write the letter or the court write the letter or there be some other way to tell the world hey we don't let people cheat we don't let people violate discovery order so here's what we've done about it if the world needs to know that there are lots of ways that fact could be published as it's not clear to me why it has to be that mr joseph is compelled to write a letter a second letter i suppose honor could have written that remedial letter but it was mr sailor who sent up the letter in the first place no question he was the violator that that goes beyond i think serious argument but that doesn't necessarily mean he needs to be the author of the correct letter i suppose that's true so that it is is a letter from him the least restrictive possible means for the court to vindicate its authority and uphold the sanctity of its discovery order that was limited to surveys and not soliciting class action co plaintiff under the circumstances of this case yes because because mr saylor sent out the letter initially had it been sent by brookstone of the court the recipients would have discounted only fifty seconds but will give you several minutes to thank you your honor first address the generic description and instruction number twenty eight i did mr jay was correct i did object to that i did object to certain terms and including strong evidence i think it's misleading part of it quote it's an appellate appendix to seventy six quote plaintiffs themselves have repeatedly used the word carpet as a noun that's on into that the court is telling the jury that it has been used as in that no that's not right the full sentence as i recall says brookstone contends that the plaintiff himself has used carpet as a noun obviously it's up to the jury to decide whether that's the fact or not well party contentions are assertions who is certainly not as educated as we are sitting in reno nevada reading this phrase plaintiff's themselves appropriately use the word carpet as a noun then it goes right on you are instructed that evidence of a trademark owners own generic use of it strip his trademark is strong evidence the trademark is generic he repeats generic rather than saying as a noun so it's implying strongly that plaintiffs not only used it as by code telling the jury you must find that it's generic because i think it's generic and you better also agree with me it's not that what you're saying no it's not by code i think it's misleading i think and i did object to twenty eight i think it's misleading your honor and i'd like to go on to some of the other published leading in the sense of coercive it's forcing the jury to agree with you what you think the judges yes yes i do and in fact if you if you went went through all the jury instructions one of the problems with this case is that jury instructions were like two hundred pages long and that's not before you know i'm just i'm just telling the court there were too many instructions in this case it was too confusing you  believe that most of these instructions were taken from the ninth circuit pattern instruction book ok and i don't know if every word of every instruction was blessed and i don't know that i did a good question is twenty eight in fifty one we're not talking about any other infections or twenty eight in fifty one taken from the pattern book not i do not exactly but substantially second question has what was jay said when he was up there with respect to the  the reveal letter he said that he never got a copy of a petition said it was sent to her i guess it was sad and i wanted a book i liked to this court we objected to it strenuous strenuously and first amendment grounds we sought an injunction pending appeal before this court which was denied trial so he didn't have to send a letter we thought that it was unconstitutional to require a plaintiff to put words in his own mouth but why isn't it now moved to the letter sent as required with the verbiage the court ultimately insisted on and so whatever the consequences are they are over well that's true to some extent the rest of the order prohibited us from introducing evidence from the survey a survey was conducted however just to stick with mr kay argues that the issue of your being required to send the second letter is a moot retrospect mr saylor should know that he had a constitutional right to do what he did and as if i recall the supreme court decision the more case i can't remember the full one but it was an election case and something was moot because the election day took place the supreme court ruled that if it was likely to come up again that situation that the court should rule could could still rule on it i've gone way over time if there are no more questions  d thank you very much thank you i think both counsel and will take the appeal under advisement