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UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF WASHINGTON 

AT SEATTLE 

GREAT NECK SAW MANUFACTURERS, 

INC., 

 Plaintiff, 

vs. 

STAR ASIA U.S.A., LLC 

 Defendant. 

 No. C06-647Z 

 ORDER 

THIS MATTER comes before the Court on three separate motions for partial 

summary judgment, one concerning the utility patent in suit, docket no. 114, another 

involving the design patents at issue, docket no. 112, and the third relating to the trade 

dress and similar claims in this matter, docket no. 113, as amended, docket no. 115. 

Having reviewed all papers filed in support of and in opposition to each motion, the 

Court now enters the following Order. 

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I. Background

 Plaintiff Great Neck Saw Manufacturers, Inc. (“Great Neck”) distributes 

various folding knives under the brand name SHEFFIELD, as well as under the 

CRAFTSMAN label for Sears Roebuck and Co. and under the HUSKY mark for The 

Home Depot. Great Neck is the assignee of one utility patent and seven design patents 

for a folding knife. Great Neck also has two trademarks on the Supplemental Register, 

one consisting of a blade holder and the other consisting of a knife handle. 

 Defendant Star Asia U.S.A., LLC (“Star Asia”) distributes a folding knife under 

the trademark TITAN. In this litigation, Great Neck has alleged that Star Asia’s 

TITAN product infringes Great Neck’s utility patent, as well as each of Great Neck’s 

seven design patents. Great Neck also asserts, under federal, New York, and 

Washington law, claims for trade dress infringement, false designation of origin, and 

unfair competition. In addition, Great Neck presents claims, under federal and New 

York law, for unprivileged imitation and passing off. Star Asia has moved for 

summary judgment as to all claims, dividing the claims into three categories, namely 

(i) infringement of the utility patent, (ii) infringement of the design patents, and 

(iii) trade dress infringement and other claims. The Court will use a similar approach. 

II. Discussion

A. Standard for Summary Judgment

The Court should grant summary judgment if no genuine issue of material fact 

exists and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 

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56(c). The moving party bears the initial burden of demonstrating the absence of a 

genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). 

A fact is material if it might affect the outcome of the suit under the governing law. 

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In support of its motion 

for summary judgment, the moving party need not negate the opponent’s claim, 

Celotex, 477 U.S. at 323; rather, the moving party will be entitled to judgment if the 

evidence is not sufficient for a jury to return a verdict in favor of the opponent, see

Anderson, 477 U.S. at 249. 

 When a properly supported motion for summary judgment has been presented, 

the adverse party “may not rely merely on allegations or denials in its own pleading.” 

Fed. R. Civ. P. 56(e)(2). Rather, the non-moving party must set forth “specific facts” 

demonstrating the existence of a genuine issue for trial. Id.; Anderson, 477 U.S. at 

256. To survive a motion for summary judgment, the adverse party must present 

“affirmative evidence,” which “is to be believed” and from which all “justifiable 

inferences” are to be favorably drawn. Anderson, 477 U.S. at 255, 257. When the 

record, however, taken as a whole, could not lead a rational trier of fact to find for the 

non-moving party, summary judgment is warranted. See Miller v. Glenn Miller Prod., 

Inc., 454 F.3d 975, 988 (9th Cir. 2006); see also Beard v. Banks, 548 U.S. 521, 529 

(2006) (“Rule 56(c) ‘mandates the entry of summary judgment, after adequate time for 

discovery and upon motion, against a party who fails to make a showing sufficient to 

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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.’” (quoting Celotex, 477 U.S. at 322)). 

B. Utility Patent

 The utility patent in suit, U.S. Patent No. 7,040,022 (“the ’022 Patent”), 

contains 31 claims, three of which are independent and 28 of which are dependent. 

See ’022 Patent, Exh. A to Fourth Amended Complaint (docket no. 60) & Exh. 1 to 

Motion (docket no. 114-2). Great Neck alleges that Star Asia has infringed Claim 26, 

which is independent, and Claims 27 to 31, which are dependent upon Claim 26. See

Plaintiff’s Statement of Asserted Claims at 2 (docket no. 39); see also Order at 2 

(docket no. 106). The parties have focused on two of the limitations within Claim 26, 

namely “blade holding means on said blade holder for removably holding a blade on 

said blade holder” and “blade lock means pivotally mounted on said blade holder.” 

See ’022 Patent at Col. 6, Lines 41-42 & 43-44, Exh. 1 to Motion (docket no. 114-2). 

Star Asia does not concede that the remaining elements of Claim 26 “read on” its 

accused TITAN device, but rather contends that one or both of the limitations to which 

it has directed the Court’s attention are not satisfied and that, as a result, neither 

Claim 26 nor any of its dependent claims are infringed. See Amhil Enters. Ltd. v. 

Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996) (literal infringement exists “when 

every limitation recited in the claim is found in the accused device, i.e., when the 

properly construed claim reads on the accused device exactly”); see also Minute Order 

at ¶ 1 (docket no. 103) (ruling that, by not taking a position regarding the construction 

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of two other claim terms, namely “means for locking and unlocking said blade holder” 

and “spring means are mounted,” Star Asia did not waive any arguments). 

 Both of the claim terms at issue incorporate the word “means.” Under the 

Patent Act of 1952, a patentee is permitted to express a claim limitation “as a means 

. . . for performing a specified function” without including in the claim language the 

structure that performs the function. 35 U.S.C. § 112, ¶ 6. In exchange, however, for 

this ability to make broad, generic claims, a patentee is obligated to “indicate in the 

specification what structure constitutes the means” for performing the function at 

issue. Biomedino, LLC v. Waters Techns. Corp., 490 F.3d 946, 948 & n.1 (Fed. Cir. 

2007); see also 35 U.S.C. § 112, ¶ 6 (“such [means-plus-function] claim shall be 

construed to cover the corresponding structure, material, or acts described in the 

specification and equivalents thereof”). When a patent claim employs the word 

“means” to describe a limitation, a presumption arises that the inventor intended to 

invoke § 112, ¶ 6. Biomedino, 490 F.3d at 950. This presumption may be rebutted if 

certain conditions are met, but in this case, after conducting a hearing pursuant to 

Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), the Court held 

that the means-plus-function standard of § 112, ¶ 6 dictated how the two limitations at 

issue should be construed. See Order at 6-9 (docket no. 106). As a result, in crafting 

its Markman Order, the Court looked to the structures described in the specification of 

the ’022 Patent, corresponding to the recited functions, to interpret the two disputed 

claim terms. 

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 The specification contains the following illustration: 

’022 Patent, Fig. 6, Exh. 1 to Motion (docket no. 114-2). Based on the language of the 

specification and the above illustration of the preferred embodiment, the Court 

construed “a blade holding means” to comprise: 

a thin main wall 34, a thin guard wall 35 pivotally mounted on the main 

wall, and a pair of spaced protrusions 40 extending from the upper 

portion of the main wall, said blade holding means being on said blade 

holder for removably holding a blade B on said blade holder, 

and “a blade lock means” to comprise: 

a u-shaped clip having a segmented or interrupted top wall 48, a pair of 

side walls 49, and a finger tab extending out from a side wall 50, said 

blade lock means being pivotally mounted on said blade holder. 

See Order at 9 & 10 (docket no. 106) (citing ’022 Patent at Col. 2, Lines 54-61; Col. 3, 

Lines 1-5; & Fig. 6). 

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 After the Court entered its Markman Order, the parties procured opinions and 

reports from their respective experts, Howard C. Miskin for Great Neck,1

 and Richard 

W. Klopp, Ph.D., P.E. for Star Asia, concerning whether Star Asia’s TITAN device 

infringes Claims 26 to 31 of Great Neck’s utility patent. Neither expert, however, 

applied the correct legal standard. The standards that govern in the means-plusfunction context differ from the usual doctrines of patent infringement. To prove 

literal infringement of a means-plus-function limitation, the patent owner must show: 

(i) the relevant structure in the accused device performs the identical function recited 

in the patent claim; and (ii) the relevant structure in the accused device is identical or 

equivalent to the corresponding structure in the specification. Odetics, Inc. v. Storage 

Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999). Although both parties cited 

Odetics in their briefs, they did not perform an analysis using the standard set forth in 

that case. 

 Applying the two-part test outlined in Odetics, the Court concludes that the first 

prong is satisfied because certain structures of the TITAN device perform the two 

claimed functions at issue, namely removably holding a standard trapezoidal blade and 

locking the blade in place. With regard to the second element of the Odetics standard, 

 

1

 In conjunction with its response to the motion for partial summary judgment relating to the utility 

patent in suit, Great Neck proffered excerpts from Mr. Miskin’s report. See Exh. 1 to McBrayer Decl. 

(docket no. 122). Star Asia objected to this practice, see Reply at 7 (docket no. 124), accurately 

observing that Great Neck’s submission does not satisfy the requirements of Federal Rule of Civil 

Procedure 56(e)(1) because no signature page or attestation by Mr. Miskin was included. The Court, 

however, declines to strike the portions of Mr. Miskin’s report that were attached to Mr. McBrayer’s 

declaration. 

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Great Neck has not disputed, and the Court finds, that the TITAN knife does not have 

structures identical to those disclosed in the specification of the ’022 Patent; the 

TITAN product has neither a pivoting guard wall nor a pivoting u-shaped clip. Thus, 

the second part of the Odetics inquiry requires only that the Court evaluate structural 

equivalence, i.e., whether the allegedly equivalent components of the accused TITAN 

device perform the claimed functions in “substantially the same way” to achieve 

“substantially the same result” as the corresponding structures described in the 

specification. Odetics, 185 F.3d at 1267; see id. (“The content of the test for 

insubstantial differences under § 112, ¶ 6 thus reduces to ‘way’ and ‘result.’”). For 

purposes of this analysis, a structure may consist of multiple components; the relevant 

structure is the totality of parts corresponding to the claimed function. Id. at 1268. 

Thus, structures with different numbers of elements may still be equivalent, and the 

Court must avoid any type of component-by-component comparison.2

 Id.; see also

Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 1380 (Fed. Cir. 2000). 

 A determination concerning patent infringement generally constitutes a 

question of fact,3

 and summary judgment of non-infringement may be granted only if, 

after viewing the alleged facts in the light most favorable to the non-movant, no 

genuine issue exists concerning whether the accused device or process is encompassed 

 

2

 Star Asia’s expert, however, improperly engaged in a component-by-component comparison, see

Klopp Report at 14-16, Exh. 4 to Motion (docket no. 114-5), and the Court has largely disregarded his 

opinion. 

3 But see Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1309 (Fed. Cir. 

1998) (observing that whether a determination of equivalents under § 112, ¶ 6 constitutes a question of 

law or fact remains undecided by the Federal Circuit (citing Markman, 52 F.3d at 977 n.8)). 

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by the patent in suit. Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1341 (Fed. 

Cir. 2001). In this case, the Court is persuaded that, contrary to Great Neck’s 

contention, Mr. Miskin’s opinion, as reflected in his report, does not create any 

genuine issue of material fact because Mr. Miskin has relied on the general doctrine of 

equivalents rather than the applicable standards associated with § 112, ¶ 6.4

 See Rebel 

Oil Co. v. Atl. Richfield Co., 51 F.3d 1421, 1440 (9th Cir. 1995) (“Assertions in expert 

affidavits do not automatically create a genuine issue of material fact. . . . ‘When the 

expert opinion is not supported by sufficient facts to validate it in the eyes of the law 

or when indisputable record facts contradict or otherwise render the opinion 

unreasonable,’ summary judgment is appropriate.”). The Court may therefore grant 

summary judgment in this case. See Grayson v. McGowan, 543 F.2d 79, 80 (9th Cir. 

1976) (“It is long established in this circuit that, when the Rule 56 standards are met 

and the court, without aid of expert opinion, can understand the prior art and patent 

 

4

 Generally, the doctrine of equivalents constitutes one of two ways of establishing patent 

infringement; however, when a means-plus-function limitation is involved, the doctrine of equivalents 

has no relevance unless the accused device employs technology developed after issuance of the patent. 

See Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1100 (Fed. Cir. 2008). As explained in Welker, 

the second “structural equivalents” prong of the literal infringement test for a means-plus-function 

limitation is “closely related” to the doctrine of equivalents, but it differs in an important way. Id. at 

1099. For purposes of the means-plus-function literal infringement (Odetics) analysis, a structure may 

be considered equivalent only if it was available at the time the patent issued; on the other hand, the 

doctrine of equivalents may capture technology available only after issuance of the patent. Id. at 

1099-1100. When the proposed equivalent in the accused device does not involve after-invented 

technology, the means-plus-function literal infringement standard and the doctrine of equivalents 

collapse into a single § 112, ¶ 6 analysis. Id. at 1100; see Bateman v. Por-Ta Target, Inc., 155 Fed. 

Appx. 511, 516-17 (Fed. Cir. 2005); Chiuminatta, 145 F.3d at 1311 (“where the equivalence issue 

does not involve later-developed technologies, but rather involve technology that predates the 

invention itself. . . . , a finding of non-equivalence for § 112, ¶ 6, purposes should preclude a contrary 

finding under the doctrine of equivalents”). In the case before the Court, Great Neck makes no 

contention that the elements of the TITAN knife at issue involve technology postdating issuance of the 

’022 Patent. Thus, the doctrine of equivalents is not applicable, and the appropriate standards for 

infringement analysis are those outlined in Odetics. 

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claims, summary judgment is proper.”); see also Intellectual Sci. & Tech., Inc. v. Sony 

Elecs., Inc., 589 F.3d 1179, 1183-84 (Fed. Cir. 2009) (Federal Circuit “considers the 

sufficiency of an expert’s opinion at summary judgment according to the standards of 

regional circuit law.”). 

 Turning to the structural equivalence analysis required by Odetics, as indicated 

earlier, Star Asia’s TITAN knife contains structures associated with the two functions 

at issue, namely removably holding a standard trapezoidal blade and locking the blade 

in place. The structure in the TITAN knife that performs the removably holding 

function consists of two fixed walls, spaced a short distance apart via top and bottom 

flanges on the rear wall, between which a blade may be inserted and easily withdrawn. 

The cross-sectional view of this structure can be represented as follows: 

The front wall contains a cross-shaped window, through which a portion of the blade 

may be viewed, as well as a half-cylindrical protrusion along the top edge, both of 

which can be seen in the following illustration: 

Fig. 3 of Klopp Report, Exh. 4 to Motion (docket no. 114-5) 

rear wall with 

top and bottom 

flanges 

front wall 

(affixed to rear 

wall via rivets) 

space into which a blade may be 

inserted (perpendicular to plane) 

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 The structure of the TITAN device that performs the blade locking function 

consists of (a) a pivoting key comprised of a straight stock with two vertical 

protrusions on one end and, on the other end, a circular projection and triangular 

ridged finger tab, (b) a set screw, and (c) a spring. The downward protrusions in the 

key correspond with the two notches 38 in the standard trapezoidal blade B. The key 

is held in place between the two fixed walls of the blade holding structure via a set 

screw around which the key may pivot. A vertically oriented spring, housed under the 

finger tab, keeps the key in the horizontal “locked” position; however, when the finger 

tab is depressed, the key’s protrusions are elevated and thereby disengaged from the 

notches of the blade. This “see-saw” motion of the key locks and unlocks the blade. 

 

See Klopp Report at Figs. 3 & 4, Exh. 4 to Motion (docket no. 114-5) (labels added); 

see also ’022 Patent, Fig. 6, Exh. 1 to Motion (docket no. 114-2) (cropped to isolate 

blade B). For the reasons outlined below, the Court concludes as a matter of law that 

the structures of the accused TITAN knife do not perform the removably holding and 

blade locking functions in “substantially the same way” to achieve “substantially the 

b 

c 

set screw 

finger tab

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same result” as the corresponding structures described in the specification of the ’022 

Patent. See Odetics, 185 F.3d at 1267. 

1. Removably Holding a Blade

 With regard to removably holding a blade, the TITAN device implements a 

simple sliding technique, while the structure in the specification of the ’022 Patent 

employs a three-part, “open, place or extract, and close” approach. When the 

TITAN’s blade locking structure is disengaged, a blade may be effortlessly slid into or 

withdrawn from the space between the two fixed walls of the blade holding structure. 

In contrast, the structure disclosed by the specification of the ’022 Patent requires 

pivoting of the guard wall to the “open” position, placement of the blade so that the 

protrusions of the main wall are aligned with the notches in the blade, or extraction of 

the blade from that same position, and pivoting of the guard wall to the “closed” 

position. Thus, the “way” in which the structures of the accused TITAN product and 

the patented knife accomplish the removably holding function is substantially 

different. Moreover, the “results” achieved by the two blade holding structures are not 

comparable. Absent the blade locking structure, the TITAN’s fixed walls do not 

inhibit the blade from sliding out, whereas the blade holding structure shown in the 

specification of the ’022 Patent, which incorporates two protrusions matching the top 

notches of a standard blade, prevents the blade from moving when the guard wall is in 

the “closed” position. 

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 2. Blade Locking

 Turning to the blade locking structures, the Court concludes that they likewise 

lack parity. In the TITAN product, the blade locking structure uses a one-step “seesaw” motion, unlocking the blade when the finger tab is vertically depressed and 

locking the blade when the finger tab is released. In contrast, the blade locking 

structure described in the specification of the ’022 Patent requires a two-part 

operation, namely vertically pulling the u-shaped clip away from the walls of the blade 

holding structure and then rotating it into the “open” position, or rotating the clip 

toward the walls of the blade holding structure and then vertically pushing it into the 

“closed” or “locked” position. In addition, although both structures incorporate a pivot 

point near the top of the blade holding structure and close to the handle of the knife,5

the blade locking structures possess different axes and degrees of rotation. The ’022 

Patent discloses a u-shaped clip that is hinged at one end, about which it rotates 

approximately 75° from the “open” to the “closed” or “locked” position. In contrast, 

the TITAN device contains a key-like stock with an intermediate pivot point that 

permits at most only 30° of rotation. Finally, unlike the structure described in the 

specification, which locks the blade when pressed down, the corresponding structure 

of the TITAN knife releases the blade when pressed down. 

 

5

 Although the specification depicts the pivot point close to the handle of the knife, the embodiment 

that Great Neck currently markets, a sample of which was provided to the Court, places the hinge on 

the leading edge of the blade holding structure, away from the handle, so that the u-shaped clip rotates 

counter-clockwise from the “closed” to the “open” position when viewed from the front of the knife. 

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 Not only do the blade locking structures achieve their functions in dissimilar 

“ways,” they accomplish disparate “results.” Although both structures, when in the 

“locked” position, inhibit blade movement, when the structures are in the “open” or 

“unlocked” orientation, the consequences are vastly different. When the blade locking 

structure disclosed in the specification is swung into the “open” orientation, the guard 

wall of the blade holding structure is free to pivot away from the main wall. In 

contrast, when the blade locking structure of the TITAN knife is depressed into the 

“unlocked” or “open” position, the walls of the blade holding structure remain fixed in 

place relative to each other. 

3. Conclusion

 Because the removably holding and blade locking structures at issue do not 

perform in “substantially the same way” to achieve “substantially the same result,” the 

Court HOLDS, as a matter of law, that the accused TITAN device does not infringe 

~30° 

SPECIFICATION 

See ’022 Patent at Fig. 6 

(modified to show degrees of rotation) 

TITAN DEVICE 

See Klopp Report at Fig. 3 

(modified to show degrees of rotation) 

~75° 

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Claims 26 to 31 of the ’022 Patent.6 The Court GRANTS partial summary judgment 

in favor of Star Asia, and DISMISSES with prejudice Great Neck’s First Cause of 

Action, alleging infringement of the utility patent. Compare Chiuminatta, 145 F.3d at 

1309 (reversing summary judgment of literal infringement, concluding that no 

reasonable jury could find the structures at issue equivalent under a § 112, ¶ 6 analysis, 

one structure being comprised of soft wheels rotatably mounted to a saw and the other 

consisting of a hard, predominantly flat “skid” plate). 

C. Design Patents

 Great Neck is the assignee of seven design patents, claiming nine different 

embodiments. Seven of these embodiments relate to the ornamental design for an 

entire utility knife, while two of these embodiments involve only the handle of a utility 

knife. The first of these design patents to issue, namely United States Patent 

No. D495, 939 (the “D’939 Patent”), contains two embodiments: 

 

6

 In light of the Court’s ruling of non-infringement, the Court declines to address Star Asia’s separate 

arguments that (i) Claim 26 of the ’022 Patent is indefinite and therefore invalid, and (ii) Star Asia did 

not engage in any willful infringement. In addition, because the doctrine of equivalents does not apply 

in this case, see supra note 4, the Court has not considered Star Asia’s contention that Great Neck is 

barred by the prosecution history associated with the ’022 Patent from asserting the doctrine of 

equivalents. 

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D’939 Patent, Exh. 6 to Motion (docket no. 112-2). The handles on these figures 

appear substantially similar, but the blade holding means differ in design, with one 

employing a segmented u-shaped clip and the other having some type of Phillips-head 

screw. The D’939 Patent issued in September 2004. Great Neck subsequently 

obtained two related patents, one resulting from a continuation-in-part of the 

application for the D’939 Patent and the other stemming from a division of the 

application for the D’939 Patent. The two ornamental designs claimed in these patents 

are, respectively, as follows: 

United States Patent No. D501,782 United States Patent No. D510,250 

Exh. 18 to Motion (docket no. 112-2) Exh. 19 to Motion (docket no. 112-2) 

 One of the distinctions between the above designs and the D’939 Patent 

involves the belt clip. The design on the left (the “D’782 Patent”) has a more rounded 

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or curved belt clip than the D’939 Patent. In addition, the belt clip in the D’782 Patent 

is placed on the reverse side of the handle, instead of on the front, as in the D’939 

Patent. Meanwhile, the design on the right (the “D’250 Patent”) contains no belt clip 

on either side of the handle. Moreover, although the D’782 Patent employs a 

segmented u-shaped clip, the finger tab is located on the rear portion of the clip, near 

the handle, rather than on the leading edge of the clip as in the D’939 Patent. Finally, 

unlike in the D’939 Patent, the D’782 Patent depicts the underside of the blade holding 

means as being serrated. 

 Both the D’782 Patent and the D’250 Patent issued in 2005. In 2006 and 2007, 

respectively, Great Neck obtained two more design patents, one of which contains two 

embodiments, and both of which are derived from continuations-in-part of the 

application for the D’250 Patent: 

United States Patent No. D528,895 United States Patent No. D552,955 

See Exh. D to Fourth Amended Exh. 26 to Motion (docket no. 112-3) 

Complaint (docket no. 60-2) 

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 The above designs differ from the three previously discussed patents (i.e., the 

D’939, D’782, and D’250 Patents) in one shared respect -- they have handles with 

squared edges rather than chamfered edges. In addition, the design on the right (the 

“D’955 Patent”) incorporates a segmented u-shaped clip that has a finger tab 

protruding from the side, near the front end, but not on the leading edge as in the 

D’939 Patent. 

 Also in the 2006 and 2007 timeframe, Great Neck secured two other design 

patents that are related to each other but independent of the D’939 Patent and its 

related patents. These two ornamental designs are comprised of chamfered-edged 

handles with curved belt clips on the reverse side, as well as flat bars at the top of the 

blade holding means with either (i) a protruding finger tab, or (ii) a squared edge, 

which is accessible through a semi-circular opening in the top walls of the blade 

holding means: 

United States Patent No. D526,877 United States Patent No. D543,822 

Exh. 29 to Motion (docket no. 112-3) Exh. 34 to Motion (docket no. 112-3) 

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 Star Asia has moved for summary judgment, asserting that its TITAN product 

does not infringe any of Great Neck’s design patents. Whether an accused device 

infringes a design patent normally constitutes a question of fact, but because design 

patents have limited scope, this issue of liability is often resolved by summary 

judgment. See, e.g., OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 

1997); see also Wing Shing Prods. Co. v. Sunbeam Prods., Inc., 665 F. Supp. 2d 357, 

368 (S.D.N.Y. 2009) (observing that, in three recent cases, the respective courts 

granted summary judgment in favor of the accused infringer). A design patent, unlike 

a utility patent, protects only the ornamental design of an article, and does not extend 

to any functional aspects of the design. Richardson v. Stanley Works, Inc., 597 F.3d 

1288, 1293-94 (Fed. Cir. 2010); OddzOn, 122 F.3d at 1404-05. Although the Federal 

Circuit has discouraged district courts from translating a design patent drawing into a 

detailed verbal description of the patent claim, it has also recognized the role district 

courts must play in distinguishing between the functional and ornamental elements of 

a design. See Richardson, 597 F.3d at 1293; Egyptian Goddess, Inc. v. Swisa, Inc., 

543 F.3d 665, 679-80 (Fed. Cir. 2008) (en banc). For example, in this case, although 

the presence of a finger tab, which allows the user to push or pull the attached 

component, whether it be a u-shaped clip or a flat bar, is functional, the features of a 

particular finger tab (e.g., size, shape, location) might be ornamental. 

 In Egyptian Goddess, the Federal Circuit clarified that the proper test for 

infringement of a design patent is whether the ordinary observer, “giving such 

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attention as a purchaser usually gives” and viewing any differences between the 

patented design and the accused product “in the context of the prior art,” finds that the 

devices bear such resemblance as to deceive the observer, inducing him or her “to 

purchase one supposing it to be the other.” 543 F.3d at 670 (quoting Gorham Mfg. Co. 

v. White, 81 U.S. 511, 528 (1871)); see id. at 676 (discussing Litton Sys., Inc. v. 

Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984)). In formulating this standard, the 

Federal Circuit recognized that, in some instances, consideration of the prior art will 

be unnecessary because the patented design and the accused product are “plainly 

dissimilar.” Id. at 678. On the other hand, in less obvious cases, examination of the 

prior art might reveal differences between the designs at issue that are unnoticeable “in 

the abstract,” but significant in the context of the prior art. Id. Thus, the Egyptian 

Goddess decision requires a two-tiered approach to infringement analysis, with the 

threshold inquiry being whether, without review of the prior art, the claimed and 

accused designs are sufficiently similar and, if so, the next level entailing a 

comparison to the prior art.7

 See id.; see also Wing Shing, 665 F. Supp. 2d at 362. In 

both stages, the appropriate method involves a side-by-side study of the designs. 

Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1304 (Fed. Cir. 2010); see Wing 

Shing, 665 F. Supp. 2d at 362-69. 

 

7

 If an accused infringer relies on a comparison with prior art as part of its defense, it bears the burden 

of producing such prior art. Egyptian Goddess, 543 F.3d at 678. The patentee, however, continues to 

have the burden of proving infringement by a preponderance of the evidence. Id. at 678-79. 

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 In this litigation, Great Neck has asserted infringement of nine designs (claimed 

in seven patents), which are shown below, side-by-side: 

 

 

All of these patented designs incorporate a handle with a scalloped lower edge 

comprised of two inwardly curved (concave) segments and one outwardly curved 

(convex) portion. In addition, all of the designs share an elliptical opening or window 

through at least the front wall of the blade holding means; some of the designs have a 

similar hole in the rear wall. Finally, with one exception, in all of the patents claiming 

a belt clip design,8

 the belt clip is on the reverse side of the handle; only the D’939 

Patent locates the belt clip on the front of the handle. 

 With these common features in mind, the Court turns to the threshold 

comparison of the claimed designs with the accused device. The Court concludes that 

the TITAN product is sufficiently distinct from at least four of the designs, namely 

those involving a segmented u-shaped clip, to render unnecessary, as to those designs, 

any examination of prior art. As seen in the following figures, the handle of the 

 

8

 The D’250 Patent contains no belt clip, and the D’955 Patent depicts the belt clip in broken lines, 

thereby disclaiming the design associated therewith. See D’955 Patent, Exh. 26 to Motion (docket 

no. 112-3 at 7) (“The broken line portions of the disclosure are included for the purpose of illustrating 

environmental structure that form no part of the claimed design.”); see also 37 C.F.R. § 1.152. 

D’939 Patent D’782 Patent D’250 Patent D’895 Patent D’955 Patent D’877 Patent D’822 Patent

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TITAN knife is more tightly scalloped, having three concave sections and two convex 

portions, the blade holding means of the TITAN product has a cross-shaped opening 

rather than an elliptical window, and the TITAN device lacks any element resembling 

a segmented u-shaped clip. 

 The disparity between these four claimed designs and the accused product is 

even more pronounced with respect to the D’782 Patent, in which the blade holding 

means has a serrated underside, and the first embodiment of the D’939 Patent, in 

which the belt clip is located on the front of the handle, in contrast to the TITAN 

product and all of Great Neck’s other designs. The Court is persuaded that the 

ordinary observer would attach importance to these differences, in part because of 

their relationship to utilitarian considerations like ease of use and comfort, but 

primarily because the “overall effect” of these features, particularly the segmented 

u-shaped clip, indicates distinct approaches to, and therefore different origins of, the 

designs. See Crocs, 598 F.3d at 1306 (examining the “overall effects” of the claimed 

design). The Court therefore HOLDS that Great Neck cannot sustain its burden of 

Accused Device 

Exh. 1 to Motion (docket no. 112-2) 

D’895 Patent 

Second Embodiment

D’955 Patent

D’782 Patent

D’939 Patent 

First Embodiment

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proving that the TITAN device would appear to the ordinary observer to be 

“substantially the same” as the embodiments depicted here, namely the D’782 Patent, 

the second embodiment of the D’895 Patent, the first embodiment of the D’939 Patent, 

and the D’955 Patent. See Egyptian Goddess, 543 F.3d at 678. 

 With regard to Great Neck’s remaining designs, the Court concludes that 

consideration of the prior art is required. When a field is crowded with many designs 

for the same type of appliance, the Court must construe the range of equivalents very 

narrowly. Egyptian Goddess, 543 F.3d at 676 (quoting Litton, 728 F.2d at 1444). 

Moreover, when a claimed design is close to the prior art, the Court may view small 

differences between the claimed design and the accused device as being important to 

the eye of the hypothetical ordinary observer. Id.

 The Court begins the second-tier of the infringement analysis with a 

comparison of the TITAN device’s handle, Great Neck’s two handle-only designs, and 

the relevant prior art submitted by Star Asia: 

Although Star Asia proffered other prior art, the two pocket-knife handles shown here 

are closest to the claimed designs. Indeed, the Victorinox design (second from the 

right) is almost identical to the claimed designs, having a fairly straight profile on the 

top of the handle and similar scallops (i.e., one convex and two concave portions) at 

D’895 Patent 

First Embodiment D’250 Patent

Locking Blade Pocket-Knife 

U.S. Patent No. 4,837,932 

Assignee: Victorinox AG 

Exh. 9 (docket no. 112-2) 

Pocketknife With Integral 

Ring Fastener (Konneker) 

U.S. Patent No. 4,570,341 

Exh. 8 (docket no. 112-2) Accused Device 

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the bottom. The handle of the Konneker pocket-knife (far right) also has scallops, but 

it has a greater number of convex and concave segments than the handles claimed in 

the D’250 and D’895 Patents, thereby illustrating the range of design possibilities, 

with the TITAN device falling somewhere between the two patents in suit and the 

Konneker design. Thus, the Court HOLDS that an ordinary observer, having such 

prior art9

 as a “frame of reference,” would readily distinguish between the handle of 

the TITAN product and the claimed designs at issue, namely the D’250 Patent and the 

first embodiment of the D’895 Patent. See Wing Shing, 665 F. Supp. 2d at 367 

(quoting Egyptian Goddess, 543 F.3d at 677). 

 Likewise, with regard to the three remaining claimed designs, a side-by-side 

comparison with the relevant prior art reveals that minor differences between the 

claimed designs and the accused device are significant. The closest prior art cited by 

Star Asia consists of a utility patent issued in 2002 to Robert E. Scarla, United States 

Patent No. 6,354,007 (the “Scarla Patent”). The Scarla Patent discloses a folding knife 

that holds the same standard trapezoidal blade used in Great Neck’s claimed designs 

and in the accused TITAN device. As in Great Neck’s designs, as well as the TITAN 

product, the Scarla knife has a blade holding means (described in the Scarla Patent as 

the “neck”), the walls of which have windows. In the Scarla design, these windows 

 

9

 Although the Victorinox and Konneker designs are contained within utility patents, they still 

constitute prior art with respect to the design patents at issue. See In re Aslanian, 590 F.2d 911, 913 

(C.C.P.A. 1979) (“Although there are different statutory bases and standards for utility patents and 

design patents, no similar distinction exists when determining what constitutes relevant prior art for 

these two types of patents.”). Indeed, the Konneker Patent is cited in both the D’250 Patent and the 

D’895 Patent. 

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are elongated pill-shaped slots. The Scarla specification indicates that these slots 14 & 

30 have a utilitarian purpose, namely providing access to the blade so that friction 

contact may be used “to assist in removing blade 12 from neck 11 in the direction of 

arrow Z.” Scarla Patent at Col. 3, Lines 42-45, Exh. 17 to Motion (docket no. 112-2). 

Id. at Figs. 1 & 5. Given their functional nature, the existence of such openings in the 

walls of the blade holding means is not itself protected by Great Neck’s design patents. 

Moreover, the elongation of such windows in the direction of blade travel, being for a 

primarily utilitarian purpose, constitutes a design feature having minimal scope. 

Shape variations perpendicular to the direction of blade travel, however, appear to be 

purely ornamental, and the TITAN device, with its cross-shaped window, differs 

significantly from the claimed designs in this respect. 

DIRECTION OF

 BLADE TRAVEL

D’939 Patent, Second Embodiment 

(example of Great Neck’s window design)

DIRECTION OF

 BLADE TRAVEL

Accused TITAN Device 

shape variation perpendicular 

to the direction of blade travel 

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ORDER - 26 

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 The other design element as to which the Scarla Patent has relevance is the 

blade lock means. The Scarla design employs a bolt, which is passed through one of 

the two notches in the trapezoidal blade when that notch is in registration with the 

circular openings 15 & 31 in the front and rear walls, respectively, of the blade holding 

means. Id. at Col. 3, Lines 48-51. The bolt is fastened in place with a nut 18, which is 

visible on the reverse side of the knife. See id. at Fig. 5. This bolt/nut mechanism 

serves to “removably fixedly secure blade 12 in aperture 38 and, consequently, in neck 

11.” Id. at Col. 3, Lines 49-51. 

 One of Great Neck’s designs, namely the second embodiment of the D’939 

Patent, likewise incorporates a bolt or set screw, visible on the front of the knife. This 

bolt or set screw has the appearance of a standard Phillipshead part, and it is located in approximately the same 

position as the fastener in the Scarla design. As indicated 

in Great Neck’s utility patent, the ’022 Patent, which 

depicts this design as one of two embodiments, the set screw or “threaded member” 

extends through an opening in the guard wall to the main wall, and it serves to hold the 

guard wall and the blade in place. See ’022 Patent at Col. 4, Lines 1-11. Given its 

functional nature and standard appearance, this blade lock means is not entitled to 

design protection, and it cannot be the basis for precluding the presence of a set screw 

on the face of the TITAN device. 

D’939 Patent 

Second Embodiment 

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 In contrast to these types of bolt/nut or set screw fasteners, the blade lock 

means on Great Neck’s other two remaining designs, namely the D’877 Patent and the 

D’822 Patent, is comprised of a flat bar that seats between the front and rear walls of 

the blade holding means and on top of the trapezoidal blade. The drawings in the 

D’877 Patent and D’822 Patent do not provide much detail about the design of this 

bar, for example, its relative height or depth or the contour of its lower edge (i.e., 

where the bar meets the top of the blade). The drawings, however, do indicate that, in 

the D’877 Patent, the bar is hinged near the leading edge of the knife and, on the 

opposite end, the bar contains a protruding finger tab that is rectangular in shape. The 

bar in the D’822 Patent, however, has no finger tab, but may be accessed via a semicircular opening in the front and rear walls of the blade holding means. Whether the 

bar in the D’822 Patent is hinged in the middle or friction fit remains unclear. 

 Both of these claimed designs differ from the blade lock means of the accused 

TITAN knife. Although the TITAN device, like the D’877 Patent, has a bar or key 

with a finger tab, the tab is triangular rather than rectangular in profile and has a ridged 

rather than a smooth upper surface, and the hinge for the bar or key is located near the 

D’822 Patent

access portal 

hinge -ORfriction point 

D’877 Patent

hinge 

finger tab 

hinge 

finger tab 

Accused Device 

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ORDER - 28 

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finger tab rather than on the opposite end. Moreover, to the extent the D’822 Patent 

claims a hinge, although the locations of the hinges are similar, the bars themselves are 

distinct because, unlike in the TITAN product, in the claimed design, no protruding 

wedge-shaped finger tab exists. 

 In light of the prior art, which highlights the significance of dissimilarities in 

the handles and the windows of the blade holding means, and given the disparities in 

the blade lock means, particularly the features of the finger tabs and relative locations 

of the hinges, the Court HOLDS that an ordinary observer would readily distinguish 

between the claimed designs and the accused device, and that Great Neck cannot, as a 

matter of law, establish that the “details of ornament” are “so much alike that in the 

market and with purchasers they would pass for the same thing.” See Egyptian 

Goddess, 543 F.3d at 670 (quoting Gorham, 81 U.S. at 531). 

 This ruling is consistent with the analysis of the Primary Examiner for the 

D’877 and D’822 Patents. In the application for the D’877 Patent, 36 drawings were 

included; Figures 1-9 related to the design eventually claimed in the D’877 Patent, 

while Figures 19-27 were diagrams of the design subsequently claimed in the D’822 

Patent. See Application No. 29/210,497, Exh. 30 to Motion (docket no. 112-3). The 

Primary Examiner required the applicant to elect between the two embodiments (in 

other words, choose Figures 1-9 or Figures 19-27), indicating that the differences “in 

the appearance of the blade holder mechanisms create patentably distinct designs,” that 

“may not be included in the same design application.” Office Action at 2, Exh. 31 to 

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Motion (docket no. 112-3). The Primary Examiner further reasoned that because the 

“appearance of the handle is shown to be conventional” by prior art, the distinguishing 

features of the blade holder mechanisms “have heightened significance.” Id. at 2-3. 

Great Neck elected to proceed with Figures 1-9 in prosecuting the D’877 Patent, and 

filed a separate application as to Figures 19-27, which gave rise to the D’822 Patent. 

See Exh. 32 to Motion (docket no. 112-3). The Primary Examiner’s conclusion that 

the claimed designs are sufficiently dissimilar to each other to warrant separate patents 

supports the Court’s view that the subtle but greater differences between the claimed 

designs and the accused device require a judgment of non-infringement. 

 In response to Star Asia’s motion relating to the various design patents, Great 

Neck submitted a brief containing minimal analysis, instead relying almost entirely on 

cross-referenced excerpts from the report of its expert. See Response (docket no. 119); 

McBrayer Decl. (docket no. 120). Star Asia requested that these portions from 

Mr. Miskin’s report be excluded because they were presented in an improper form. 

Reply at 3 (docket no. 123). Although the submissions do not comport with Federal 

Rule of Civil Procedure 56(e)(1), the Court declines to strike them. The Court notes, 

however, that the proffered segments of Mr. Miskin’s report nowhere discuss the first 

embodiment of the D’939 Patent, and the Court will treat Great Neck’s failure to 

respond as an admission that Star Asia’s motion concerning that particular design has 

merit. See Local Rule CR 7(b)(2). The Court also observes that Mr. Miskin’s report 

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contains lengthy discussions of the novelty analysis that was explicitly rejected by the 

Federal Circuit in Egyptian Goddess, and the Court has disregarded those sections. 

 Finally, the Court is persuaded that, contrary to Great Neck’s contention, 

Mr. Miskin’s report does not raise any genuine issue of material fact that would 

preclude summary judgment. In formulating his opinion, Mr. Miskin identified at 

least six, and sometimes as many as ten, similarities between a particular claimed 

design and the accused TITAN device. He did not, however, enumerate with an 

equivalent level of specificity the differences between the claimed designs and the 

TITAN product, and he did not examine, in the context of the prior art, whether those 

differences would be important to the eye of the hypothetical ordinary observer. 

Instead, he repeatedly stated in conclusory fashion that a consumer, familiar with 

Great Neck’s claimed design, as opposed to the prior art, would not distinguish 

between a particular feature of the claimed design (for example, the number of notches 

or scallops in the handle) and a comparable but dissimilar element of the accused 

TITAN knife (for example, a larger number of notches or scallops in the handle). See

Miskin Report at 29, 38, 45, 50-51, 66, 71-72, Exh. 1 to McBrayer Decl. (docket 

no. 120-2). Mr. Miskin’s analysis inappropriately focused on individual components, 

rather than the “overall effect,” of the design, see Crocs, 598 F.3d at 1306, and 

essentially ignored the lessons of Egyptian Goddess, which requires that differences 

between the claimed and accused designs be viewed through the lens of an observer 

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“who is conversant with the prior art,” and not just the claimed and accused designs. 

See 543 F.3d at 678. 

 Moreover, in his report, with respect to each claimed design, Mr. Miskin 

selected a particular prior art design and opined that the TITAN device and the 

claimed design are more similar to each other than they are to the prior art. This 

analysis is inconsistent with the teachings of the Federal Circuit and entirely unhelpful. 

For example, in analyzing the D’250 Patent, which claims a design for only the handle 

of a utility knife, Mr. Miskin chose as his only prior art reference the Scarla Patent, 

which he denominated as the ’007 Patent; in doing so, Mr. Miskin ignored the other, 

closer prior art references for handles that were discussed in Star Asia’s motion and 

earlier in this Order. For purposes of the D’877 and D’822 Patents, Mr. Miskin 

identified only Great Neck’s own D’782 Patent as prior art, and he then concluded that 

the TITAN knife and the designs in the D’877 and D’822 Patents are closer to each 

other than they are to the design in the D’782 Patent, which incorporates a segmented 

u-shaped clip. Although the Court agrees that the segmented u-shaped clip is a 

significant distinguishing feature, the Court rejects Great Neck’s implicit contention 

that, because the accused device and a particular claimed design are both distinct from 

a single prior art reference, infringement of the claimed design has been demonstrated. 

 For the foregoing reasons, the Court GRANTS Star Asia’s motion for partial 

summary judgment, and DISMISSES with prejudice Great Neck’s Second, Third, 

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Fourth, Fifth, Sixth, Fifteenth, and Sixteenth Causes of Action, alleging infringement 

of the respective design patents.

D. Trade Dress and Related Claims

 Great Neck asserts various claims under Section 43(a) of the Lanham Act, 15 

U.S.C. § 1125(a), namely trade dress infringement, false designation of origin, unfair 

competition, unprivileged imitation, and passing off. Great Neck makes similar claims 

under New York and Washington law. Great Neck, however, has not indicated the 

extent to which New York or Washington law differs, if at all, from federal law. The 

Court therefore analyzes these claims solely under federal law. 

 Section 43(a) of the Lanham Act provides in relevant part: 

(1) Any person who, on or in connection with any goods or services, or 

any container for goods, uses in commerce any word, term, name, 

symbol, or device, or any combination thereof, or any false designation 

of origin, false or misleading description of fact, or false or misleading 

representation of fact, which-- 

 (A) is likely to cause confusion, or to cause mistake, or to 

deceive as to the affiliation, connection, or association of such person 

with another person, or as to the origin, sponsorship, or approval of 

his or her goods, services, or commercial activities by another person, 

or 

 (B) in commercial advertising or promotion, misrepresents the 

nature, characteristics, qualities, or geographic origin of his or her or 

another person’s goods, services, or commercial activities, 

shall be liable in a civil action by any person who believes that he or she 

is or is likely to be damaged by such act. 

15 U.S.C. § 1125(a)(1). To recover under the Lanham Act for infringement of trade 

dress, a plaintiff must prove (i) the trade dress features at issue are nonfunctional; 

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(ii) the trade dress is inherently distinctive or has acquired distinctiveness through 

secondary meaning; and (iii) consumers are likely to confuse the plaintiff’s product 

with the defendant’s accused device. See Disc Golf Ass’n, Inc. v. Champion Discs, 

Inc., 158 F.3d 1002, 1005 (9th Cir. 1998); see also 15 U.S.C. § 1125(a)(3) (with 

respect to “trade dress not registered on the principal register, the person who asserts 

trade dress protection has the burden of proving that the matter sought to be protected 

is not functional.”). In moving for summary judgment, Star Asia contends that Great 

Neck cannot establish any of these elements. 

 1. Functionality

 With respect to trade dress protection, the requirement of functionality 

recognizes that “[i]t is the province of patent law, not trademark law, to encourage 

invention by granting inventors a monopoly over new product designs or functions for 

a limited time.” Disc Golf, 158 F.3d at 1006 (quoting Qualitex Co. v. Jacobson Prods. 

Co., 514 U.S. 159, 164 (1995)). To grant trade dress status, which may continue in 

perpetuity, to product features that are functional in nature would thwart the public’s 

ability to practice patented inventions after the patents have expired and thereby 

undermine a fundamental principle of patent law. See Alan Wood Steel Co. v. Watson, 

150 F. Supp. 861, 862 (D.D.C. 1957); see also Vornado Air Circulation Sys., Inc. v. 

Duracraft Corp., 58 F.3d 1498, 1508 (10th Cir. 1995), abrogated on other grounds by

Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999). A 

design may be functional in two ways: (i) de facto functional, meaning that the 

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product at issue has a function (a bottle of any design holds a substance); and (ii) de 

jure functional, meaning that the product at issue has a particular shape or 

configuration because it works better that way. Leatherman Tool Group, Inc. v. 

Cooper Indus., Inc., 199 F.3d 1009, 1012 (9th Cir. 1999) (quoting Textron, Inc. v. Int’l 

Trade Comm’n, 753 F.2d 1019, 1025 (Fed. Cir. 1985)). Designs that are de jure 

functional are not entitled to trade dress protection. Id.

 In evaluating whether trade dress is de jure functional, the Court must consider 

the following four factors: (i) the existence of an existing or expired utility patent or 

other evidence indicating that the design yields a utilitarian advantage; (ii) the 

availability of alternative designs; (iii) the extent of advertising touting the utilitarian 

aspects of the design; and (iv) the comparative ease and expense associated with 

manufacturing the design. Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 516 (9th 

Cir. 1989); see also Clicks Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252, 1260 (9th 

Cir. 2001). In conducting this analysis, the Court must examine the trade dress as a 

whole, rather than parsing the constituent parts, bearing in mind that “[t]rade dress is 

the composite tapestry of visual effects.” Clicks, 251 F.3d at 1259. Although 

functional elements might separately be unprotectable, they might in the aggregate 

convey a visual impression rising to the level of trade dress. Id. The fundamental 

inquiry is whether the design features at issue constitute “the actual benefit that the 

consumer wishes to purchase,” rather than “an assurance that a particular entity made, 

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sponsored, or endorsed” the product. Leatherman, 199 F.3d at 1012 (quoting Vuitton 

Et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769, 774 (9th Cir. 1981)). 

 In this case, Great Neck has asserted that its trade dress consists of eleven 

features, namely the shape, appearance, and location of (a) the blade holder, (b) the 

upper curve of the handle, (c) the bottom curve of the handle, (d) the upper notch in 

the handle, (e) the top rivets and pivot pins on the side wall of the handle, (f) the large 

pivot on the side wall of the handle, (g) the curved front and rear ends of the handle, 

(h) the handle as viewed from the rear, (i) the handle as viewed from the top, and 

(j) the handle as viewed from the bottom, as well as (k) the shape, appearance and 

relative thickness of the layers in the handle as viewed from the top and bottom.10 See

Fourth Amended Complaint at ¶ 49 (docket no. 60). These components are 

highlighted in the following illustrations: 

 

 

10 In its response to Star Asia’s motion, Great Neck argues in a cursory fashion that its trade dress is 

comprised of the aggregate of these eleven features. Great Neck, however, did not plead the “knife as 

a whole” in its Fourth Amended Complaint. Compare Response at § IV.A.12 (docket no. 117 at 16) 

with Fourth Amended Complaint at ¶¶ 48-61 (docket no. 60). Moreover, to the extent that the eleven 

features are functional, the “knife as a whole” is not entitled to trade dress protection. Leatherman, 

199 F.3d at 1013 (“where the whole is nothing other than the assemblage of functional parts, . . . it is 

semantic trickery to say that there is still some sort of separate ‘overall appearance’ which is nonfunctional”). 

b 

c 

a d 

e 

f 

g 

g 

e1

FRONT VIEW

BACK OR REVERSE VIEW

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Figs. 1, 20, & 22 to Klopp Report, Exh. 1 to Motion (docket no. 113-2) (labels added). 

As evidenced by the specification in Great Neck’s existing utility patent, the ’022 

Patent, most, if not all, of these features are functional in nature. In the ’022 Patent, 

the blade holder (a) is described in detail as having a main wall, a pivoting guard wall, 

and a pivoting segmented u-shaped clip. ’022 Patent at Col. 2, Lines 41-67 & Col. 3, 

Lines 1-15, Exh. 3 to Motion (docket no. 113-2). These elements serve the purpose of 

securing the blade, while also allowing for relatively easy replacement of the blade. 

See id. at Col. 1, Lines 14-16 & 27-29 & Col. 3, Lines 12-15 & 51-60. 

 Likewise, the upper notch (d), pivot pin (e1), and large pivot (f) are necessary 

components of the two-arm lever assembly that enables the blade holder to fold into 

the handle of the knife. See id. at Col. 2, Lines 23-40 & Col. 3, Lines 26-50. To fold 

the knife, the user must press down on the rear arm, through the notch (d), which will 

cause the rear arm to pivot about the top pin (e1) and disengage from the front arm, 

permitting the blade holder (a) to rotate at the large pivot (f) and swing into the handle. 

Id. To accept the blade holder, the underside of the handle must have an opening with 

sufficient clearance, giving rise to the inverted “U” appearance from the rear of the 

h 

k 

i 

j 

REAR VIEW

TOP VIEW

BOTTOM VIEW

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handle (h) and the slotted look underneath the handle (j). The top view of the handle 

(i) is dictated by the configuration of the rear lever arm sandwiched within the walls of 

the handle, which are held together by fasteners (e) that are passed through spacers, id.

at Col. 2, Lines 12-15, and the thicknesses of the layers (k) lend strength to the 

components without rendering them overly bulky. Finally, the scalloping at the 

bottom of the handle (c), described as “undulated” in the ’022 Patent, permits a “user’s 

fingers to grip the handle.” Id. at Col. 2, Lines 17-19. 

 Returning to the four-factor test for functionality, the Court concludes that, 

under the first factor, Great Neck’s utility patent constitutes “strong evidence” of 

functionality. See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29-30 

(2001); see also Disc Golf, 158 F.3d at 1008 (“one cannot argue that a shape is 

functionally advantageous in order to obtain a utility patent and later assert that the 

same shape is non-functional in order to obtain trademark protection” (quoting J.T. 

McCarthy, McCarthy on Trademarks and Unfair Competition § 7:89 at 7-208 (4th ed. 

1998))). With regard to the second factor, namely the availability of other designs, the 

parties have not developed much of a record. Counsel for Great Neck suggests that 

certain excerpts from Mr. Miskin’s report relate to “design alternatives for certain 

features of Star Asia’s knives.” McBrayer Decl. at ¶ 8 (docket no. 118). The portions 

provided, however, do nothing more than opine that the TITAN device infringes Great 

Neck’s various design patents, Exh. 7 to McBrayer Decl. (docket no. 118-8), which 

does not demonstrate meaningfully “available” alternatives. 

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 Evidence relating to the third factor, however, has been presented to the Court, 

and it weighs in favor of functionality. The record reflects that Great Neck touts the 

folding, “lockback,” and “quick change” characteristics of the 

SHEFFIELD device in its promotional materials, copies of 

which were submitted to the Commissioner for Trademarks in 

response to the examiner’s refusal to register the trade dress at 

issue on the Principal Register after deeming the proposed 

mark functional.11 See Exh. 4 to Motion (docket nos. 113-10 

at 18-25 & 113-11 at 1-5); see also Notice of Abandonment, 

Exh. 4 to Motion (docket no. 113-3 at 2-4). 

 As to the fourth factor, Star Asia’s expert opines that some of the forms and 

shapes at issue are comparatively easier and therefore less costly to manufacture. For 

example, with reference to notch (d), Dr. Klopp indicates that a circular shape is easier 

to create than a form with sharp corners or compound curves; a sharp notch requires 

 

11 Prior to its attempt to register on the Principal Register, Great Neck had obtained two registrations 

on the Supplemental Register, one for the blade holder and one for the handle of its knife. See Exhs. 3 

& 4 to McBrayer Decl. (docket nos. 118-4 & 118-5). Great Neck contends that these registrations 

evidence non-functionality, quoting the statutory provision concerning eligibility for the Supplemental 

Register, which permits registration of “any matter that as a whole is not functional.” 15 U.S.C. 

§ 1091(c). Great Neck, however, ignores the subsequent determination of functionality, which the 

Deputy Commissioner for Trademark Examination Policy indicated was “an absolute bar to 

registration [of Great Neck’s design] either on the Principal Register or the Supplemental Register.” 

Exh. 4 to Motion (docket no. 113-3 at 4). In addition, Great Neck cites no authority for the 

proposition that the Supplemental Register carries the same clout as the Principal Register. In fact, the 

opposite is true. Although registration on the Principal Register operates as prima facie evidence of 

inter alia the validity of the mark, see 15 U.S.C. § 1057(b), registration on the Supplemental Register 

“is not prima facie evidence of anything except that the registration issued.” Copperweld Corp. v. 

Arcair Co., 200 U.S.P.Q. 470, 474 (TTAB 1978). Finally, even if Great Neck’s registrations 

constituted some evidence of protectable trade dress, the marks depicted in the certificates do not have 

the same scope as the trade dress claimed in this litigation. 

Exh. 4 to Motion, 

 docket no. 113-11 at 2 

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tools with sharp edges that tend to wear faster than rounded tools, and compound 

curves require more sophisticated tools or machine programming. Klopp Report at 33, 

Exh. 1 to Motion (docket no. 113-2 at 35). Likewise, Dr. Klopp reports that the 

cylindrical form of pins, rivets, screws, and pivots, and the round nature of the holes 

that accommodate them, are dictated by standard production methods, including the 

use of turning equipment and rotary tooling. Id. at 34-35. Finally, Dr. Klopp 

references the functional and manufacturing considerations that determine the 

thickness and rectilinear shape of the main components of the handle and knife. The 

parts must be thick enough to maintain structural integrity, while thin enough for the 

device to remain compact and comfortable to use, as well as economical to produce, 

and their fabrication from sheets of uniform thickness renders a rectilinear shape the 

most cost effective. Id. at 33-34, 35-37. 

 Great Neck’s expert, Howard Miskin, does not directly dispute the 

manufacturing rationales articulated by Dr. Klopp.12 Indeed, in discussing notch (d), 

Mr. Miskin states that the feature could have been “a rectangle with rounded corners,” 

but fails to address the difficulty and expense associated with such design. Miskin 

Rebuttal Report at 13, Exh. 1 to McBrayer Decl. (docket no. 118-2 at 16). With regard 

to the pins and rivets (e) and large pivot (f), Mr. Miskin opines that the sizes and 

appearances could vary from Great Neck’s design, but he does not suggest that the 

measurements involved are anything other than standard dimensions, perhaps tracking 

 

12 In response to Star Asia’s motion, Great Neck submitted both excerpts of Mr. Miskin’s initial report 

and a full, unsigned copy of his rebuttal report. Star Asia has objected to these filings in light of their 

deficient form. Reply at 6 (docket no. 125). The Court, however, declines to strike them. 

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round stock diameters or rotary tooling sizes, and he provides no analysis regarding 

the relative costs of using smaller or larger, standard or custom parts. Id. at 14-15. 

Finally, while not disagreeing with Dr. Klopp’s statement that the rectilinear 

components of the knife are fabricated from uniform-thickness sheets, Mr. Miskin 

accuses Dr. Klopp of ignoring the alternatives, and he makes reference to other 

unidentified utility knives on the market with different overall thicknesses. Id. at 14. 

Mr. Miskin, however, does not examine the tradeoffs between structural integrity, 

compactness, and expense in choosing a particular thickness of starting material. In 

light of Great Neck’s failure to rebut Star Asia’s evidence concerning the 

manufacturing purposes underlying the forms of certain components, the Court 

concludes that the fourth factor weighs in favor of functionality. 

 Because Great Neck has an existing utility patent for the device at issue, Great 

Neck bears a “heavy burden” of establishing that the elements of its alleged trade dress 

are merely “ornamental, incidental, or arbitrary.” TrafFix, 532 U.S. at 30. The Court 

HOLDS that, as a matter of law, Great Neck has not met and cannot carry this burden. 

The features of Great Neck’s utility knife that it asserts constitute trade dress, when 

viewed as a whole, simply offer “the actual benefit that the consumer wishes to 

purchase,” namely a folding knife with an easily replaceable blade. See Leatherman, 

199 F.3d at 1012; see also Versa Prods. Co. v. Bifold Co.(Mfg.) Ltd., 50 F.3d 189, 207 

(3d Cir. 1995) (“Where product configurations are concerned, we must be especially 

wary of undermining competition. Competitors have broad rights to copy successful 

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product designs when those designs are not protected by (utility or design) patents. It 

is not unfair competition for someone to trade off the good will of a product; it is only 

unfair to deceive consumers as to the origin of one’s goods and thereby trade off the 

good will of a prior producer.” (citations omitted)). Under the four-factor test outlined 

in Clamp Mfg., Great Neck’s trade dress is de jure functional and therefore not entitled 

to trade dress protection. 

 2. Distinctiveness

 Great Neck makes no contention that its alleged trade dress is inherently 

distinctive; rather, it asserts that the unregistered mark has acquired distinctiveness 

through secondary meaning. Star Asia counters that Great Neck has allowed its device 

to be marketed and sold by other entities under those entities’ respective private labels, 

thereby negating any secondary meaning associated with the product design. Star Asia 

presents evidence that Great Neck’s utility knife is distributed by Sears Roebuck and 

Co. under the CRAFTSMAN label, as well as by The Home Depot under its HUSKY 

brand. See Tsitsis Decl. at ¶¶ 3 & 4 and at Exhs. A & B, Exh. 5 to Motion (docket 

no. 113-15). 

 Great Neck does not dispute that it has engaged in the practice of private 

labeling, but instead argues that the “large majority” of its products are sold under the 

SHEFFIELD mark. See Response at 14 (docket no. 117). In support of this assertion, 

Great Neck offers a spreadsheet for the years 2004 through 2008, which indicates that 

6,411,416 knives of one kind or another were sold. See Exh. 6 to McBrayer Decl. 

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(docket no. 118-7). The chart, however, does not provide any information about the 

labels under which these knives were sold, nor does it compare the number of knives 

distributed under the SHEFFIELD mark against the amount sold as CRAFTSMAN or 

HUSKY devices. Moreover, the sales data was merely appended to the declaration of 

Great Neck’s attorney, who presumably has no personal knowledge and would not be 

competent to testify about these matters. See Fed. R. Civ. P. 56(e)(1). Thus, Great 

Neck has not established that privately labeled products represent an insubstantial 

portion of its business. 

 In light of the evidence Star Asia has proffered, showing that two entities, 

which operate in the relevant market and distribute products nationwide, sell utility 

knives with the exact configuration at issue under brands other than SHEFFIELD, the 

Court HOLDS that Great Neck has not established the requisite distinctiveness to 

pursue its claims under the Lanham Act. See Versa Prods., 50 F.3d at 216 (“The use 

of private labeling undermines a claim that a product’s appearance denotes its source 

because consumers will be less likely to associate the multifariously labeled product 

with a single source.” (emphasis in original)); see also Aerogroup Int’l, Inc. v. 

Marlboro Footworks, Ltd., 1996 WL 929597 at *13 & *16 (S.D.N.Y.) (“[W]hen the 

owner of a trademark or trade dress engages in private labeling, it puts its product on 

the market with another company’s label on it. When consumers see that product in 

the marketplace as well as the company’s own product – with different labels – they 

are more likely to infer that there is more than one source supplying that product. . . . 

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Aerogroup’s practice of allowing several private label brands – including Eddie Bauer, 

Bass, Canyon River, and Trader Bay – to explicitly label the waffle sole as theirs is 

strong evidence that Aerogroup itself does not believe that consumers identify the 

waffle sole with a single source or with Aerogroup. . . . [T]he waffle sole is not 

entitled to trademark protection.”). This lack of distinctiveness constitutes a separate 

and independent ground for granting partial summary judgment in favor of Star Asia 

and dismissing Great Neck’s trade dress and related claims.

 3. Consumer Confusion

 Star Asia contends that Great Neck cannot establish the requisite consumer 

confusion to prevail on its trade dress infringement claim. The Court agrees. Indeed, 

in opposing Star Asia’s motion, Great Neck offers no admissible evidence concerning 

a number of the so-called Sleekcraft factors. See AMF Inc. v. Sleekcraft Boats, 599 

F.2d 341, 348-49 (9th Cir. 1979) (enumerating eight factors relevant to whether 

confusion between related goods is likely). For example, Great Neck has provided no 

declaration or testimony concerning the proximity of the goods at issue or describing 

their marketing channels. Moreover, in response to Star Asia’s assertion that no 

instance of actual confusion has been brought to its attention, see Hansford Decl. at 

¶ 12, Exh. 6 to Motion (docket no. 113-15), Great Neck has presented no evidence, 

even by way of expert opinion or market survey, regarding either actual or likely 

consumer confusion. Finally, Great Neck has not engaged in any analysis about the 

inherent strength of its mark or the degree of care generally exercised by purchasers of 

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its or its competitors’ utility knives. Great Neck’s extraordinarily weak response to 

this portion of Star Asia’s motion does not justify its assertion that genuine issues of 

material fact exist; Great Neck simply has not identified what, if anything, remains for 

trial. Thus, the Court is persuaded that Star Asia is entitled to partial summary 

judgment on the alternative ground that Great Neck has not satisfied its burden to 

“make a showing sufficient to establish the existence of an element essential to [its] 

case,” Beard, 548 U.S. at 529, namely the likelihood of consumer confusion. 

4. Conclusion

 Because Great Neck’s trade dress is de jure functional, the Court GRANTS Star 

Asia’s motion for partial summary judgment and DISMISSES with prejudice Great 

Neck’s Seventh, Eighth, Ninth, Tenth, Eleventh, Twelfth, Thirteenth, and Fourteenth 

Causes of Action, on the ground that the alleged trade dress is functional and therefore 

not entitled to protection under the Lanham Act or similar state laws.13 The Court also 

GRANTS Star Asia’s motion for partial summary judgment on the alternative grounds 

 

13 Star Asia contends, and Great Neck does not dispute, that a conclusion of functionality as to Great 

Neck’s alleged trade dress also defeats Great Neck’s other Lanham Act claims for false designation of 

origin, unfair competition, unprivileged imitation, and passing off. The Court agrees. The Lanham 

Act offers federal protection against two types of unfair competition: infringement of registered 

trademarks, 15 U.S.C. § 1114, and false designation of the origin of goods, 15 U.S.C. § 1125(a). 

Int’l Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 915 (9thCir. 1980). The latter tort, 

which is alleged in this case, may be asserted in a variety of ways, for example, infringement of an 

unregistered mark (consisting in this instance of trade dress), passing off, or false designation of 

origin, but a common element that must be proved by the plaintiff is non-functionality; “trademark law 

is concerned only with identification of the maker, sponsor, or endorser of the product” and it “does 

not prevent a person from copying so called ‘functional’ features of a product.” Id. at 917. Thus, 

Great Neck’s alternative theories of recovery do not survive the Court’s ruling as to the functionality 

of Great Neck’s alleged trade dress. 

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that Great Neck’s trade dress does not have the requisite distinctiveness and that Great 

Neck has not made a sufficient showing of likely customer confusion. 

 III. Conclusion

 For the foregoing reasons: 

 (1) Star Asia’s motions to strike or exclude excerpts of Great Neck’s 

expert’s reports, docket nos. 123, 124, 125, are DENIED; 

 (2) Star Asia’s motion for partial summary judgment as to infringement of 

the utility patent, docket no. 114, is GRANTED; 

 (3) Star Asia’s motion for partial summary judgment as to infringement of 

the designs patents, docket no. 112, is GRANTED; 

 (4) Star Asia’s motion for partial summary judgment as to the trade dress 

and related claims, docket nos. 113 & 115, is GRANTED on three alternative grounds, 

namely functionality of the alleged trade dress, lack of distinctiveness, and insufficient 

evidence of likely consumer confusion; 

 (5) Great Neck’s Fourth Amended Complaint, docket no. 60, and the sixteen 

causes of action alleged therein are DISMISSED with prejudice; and 

 (6) The Clerk is directed to enter judgment consistent with this Order in 

favor of Star Asia, to close this case, and to send a copy of this Order to all counsel of 

record. 

/// 

/// 

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IT IS SO ORDERED. 

DATED this 23rd day of July, 2010. 

A 

Thomas S. Zilly 

United States District Judge 

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