Case: 20-1490 Document: 47 Page: 1 Filed: 12/11/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SUPER-SPARKLY SAFETY STUFF, LLC,
Plaintiff-Appellant
v.
SKYLINE USA, INC., AKA GUARD DOG SECURITY,
Defendant-Appellee
______________________
2020-1490
______________________
Appeal from the United States District Court for the
Northern District of Texas in No. 3:18-cv-00587-N, Judge
David C. Godbey.
______________________
Decided: December 11, 2020
______________________
CHRIS STEWART, Chris Stewart, PLLC, Little Rock, AR,
for plaintiff-appellant.
ROBERT GLENN OAKE, JR., Oake Law Office, Allen, TX,
for defendant-appellee.
______________________
Before NEWMAN, DYK, and REYNA, Circuit Judges.
Case: 20-1490 Document: 47 Page: 2 Filed: 12/11/2020
2 SUPER-SPARKLY SAFETY STUFF v. SKYLINE USA, INC.
DYK, Circuit Judge.
Plaintiff Super-Sparkly Safety Stuff, LLC (“Super-
Sparkly”) appeals a decision of the United States District
Court for the Northern District of Texas. The district court
entered summary judgment in favor of Defendant Skyline
USA, Inc. (“Skyline”), concluding that Skyline had not in-
fringed Super-Sparkly’s design patent. We affirm.
BACKGROUND
Super-Sparkly owns a design patent for bedazzled pep-
per spray canisters, U.S. Patent No. D731,172 (“the ’172
patent”). This patent claims a design for a pepper spray
canister decorated with rhinestones, in which rhinestones
cover the bottom and some portion of the vertical part of a
pepper spray canister.
Skyline sells a line of “Bling It On” pepper spray canis-
ters that are decorated with rhinestones. Unlike the de-
signs claimed in the ’172 patent, the bottom surface of
Skyline’s canisters is not decorated with rhinestones.
In February 2017, Super-Sparkly sent Skyline a cease-
and-desist letter in which it accused Skyline’s pepper spray
canisters of infringing its design patent. Skyline re-
sponded in April 2017, explaining that the accused product
did not infringe Super-Sparkly’s design patent because the
bottom of the canister was not decorated with rhinestones.
Super-Sparkly filed suit against Skyline in the United
States District Court for the Northern District of Texas on
March 13, 2018, alleging direct and induced infringement
of the ’172 patent. 1 Super-Sparkly subsequently contacted
1 Super-Sparkly also owns U.S. Patent No. D696,857
(“the ’857 patent”), which is similar to the ’172 patent.
While Super-Sparkly’s complaint referred in passing to the
’857 patent, the substance of the complaint involves only
the ’172 patent, and the district court found that Super-
Case: 20-1490 Document: 47 Page: 3 Filed: 12/11/2020
SUPER-SPARKLY SAFETY STUFF v. SKYLINE USA, INC. 3
Amazon.com, Inc. and Dollar General Corporation, which
resold the accused product, alleging that Skyline’s product
infringed Super-Sparkly’s design patents. As a result, Am-
azon and Dollar General stopped purchasing the accused
product from Skyline. Thereafter, in the infringement suit,
Skyline asserted counterclaims against Super-Sparkly, al-
leging unfair competition under the Lanham Act, common
law unfair competition, tortious interference with contrac-
tual relations, tortious interference with business rela-
tions, tortious interference with prospective contracts, and
business disparagement.
On August 6, 2019, Skyline filed a motion for partial
summary judgment of noninfringement. On August 21,
2019, Super-Sparkly filed a motion for an extension of time
to respond to the motion for partial summary judgment on
the grounds that discovery was not yet complete. Then, on
August 27, 2019, instead of opposing Skyline’s motion for
partial summary judgment on the merits, Super-Sparkly
filed a response pursuant to Federal Rule of Civil Proce-
dure 56(d), claiming a lack of sufficient facts to file a re-
sponse. The district court denied Super-Sparkly’s motion
for an extension of time and granted summary judgment of
noninfringement. The district court also certified its entry
of partial summary judgment as final under Federal Rule
of Civil Procedure 54(b). Super-Sparkly appeals.
DISCUSSION
This appeal requires us to resolve two issues: first,
whether summary judgment was properly certified as fi-
nal, thereby conferring jurisdiction on the court; and sec-
ond, whether summary judgment of noninfringement was
warranted.
Sparkly alleged infringement of only the ’172 patent. On
appeal, despite again making passing reference to the ’857
patent, Super-Sparkly does not dispute this determination.
Case: 20-1490 Document: 47 Page: 4 Filed: 12/11/2020
4 SUPER-SPARKLY SAFETY STUFF v. SKYLINE USA, INC.
I
When a district court certifies a decision as final under
Federal Rule of Civil Procedure 54(b), we must review the
finality of the judgment de novo to ensure we have jurisdic-
tion, even if the parties agree that jurisdiction is proper.
Ultra-Precision Mfg. v. Ford Motor Co.,
338 F.3d 1353,
1356 (Fed. Cir. 2003) (citing W.L. Gore & Assocs. v. Int’l
Med. Prosthetics Rsch. Assocs., Inc.,
975 F.2d 858, 862 (Fed.
Cir. 1992)). For Rule 54(b) to apply, three prerequisites
must be met: “(1) multiple claims for relief or multiple par-
ties must be involved; (2) at least one claim or the rights
and liabilities of at least one party must be finally decided;
and (3) the district court must find that there is no just rea-
son for delaying an appeal.” Alfred E. Mann Found. for Sci.
Rsch. v. Cochlear Corp.,
841 F.3d 1334, 1347 (Fed. Cir.
2016) (citing 10 Charles Alan Wright et al., Federal Prac-
tice and Procedure § 2656 (3d ed. 2016)). While we review
finality de novo, we review the district court’s determina-
tion that there is no just reason for delay for abuse of dis-
cretion. W.L.
Gore, 975 F.2d at 862.
Here, all three prerequisites are met. First, the case
involves multiple claims, as Skyline’s counterclaims are
still pending before the district court. Second, Super-
Sparkly’s two patent infringement claims were finally de-
cided by the district court’s entry of summary judgment of
noninfringement. Third, the district court did not abuse its
discretion in determining that there is no just reason for
delay.
As the three prerequisites to Rule 54(b) are met, we
find that the case was properly certified and that we have
jurisdiction to hear this appeal.
II
Super-Sparkly argues that summary judgment was im-
proper (1) on the merits because there was a genuine issue
of material fact as to infringement, and (2) under Federal
Case: 20-1490 Document: 47 Page: 5 Filed: 12/11/2020
SUPER-SPARKLY SAFETY STUFF v. SKYLINE USA, INC. 5
Rule of Civil Procedure 56(d), in light of Super-Sparkly’s
asserted need for additional discovery to respond to the
summary judgment motion.
A
Design patent infringement occurs when a party,
“without license of the owner, (1) applies the patented de-
sign, or any colorable imitation thereof, to any article of
manufacture for the purpose of sale, or (2) sells or exposes
for sale any article of manufacture to which such design or
colorable imitation has been applied.” 35 U.S.C. § 289. The
“ordinary observer” test is used to determine whether a de-
sign patent has been infringed. Egyptian Goddess, Inc. v.
Swisa, Inc.,
543 F.3d 665, 678 (Fed. Cir. 2008) (en banc).
The test inquires whether an accused design appears “sub-
stantially the same” as a patented design, such that “an
ordinary observer, giving such attention as a purchaser
usually gives,” would be induced “to purchase one suppos-
ing it to be the other.”
Id. at 670 (quoting Gorham Co. v.
White,
81 U.S. 511, 528 (1871)).
We review summary judgment of noninfringement de
novo. Accent Packaging, Inc. v. Leggett & Platt, Inc.,
707
F.3d 1318, 1325 (Fed. Cir. 2013) (citing Laryngeal Mask Co.
v. Ambu A/S,
618 F.3d 1367, 1370 (Fed. Cir. 2010)).
Super-Sparkly and Skyline agree that the difference
between the ’172 patent and the accused design is that the
former includes rhinestones on the bottom of the pepper
spray canister, whereas the latter does not. The district
court did not err in concluding that that this difference pre-
cludes a finding of infringement under the ordinary ob-
server test.
Under the ordinary observer test, the claimed and ac-
cused designs may be “sufficiently distinct” and “plainly
dissimilar,” such that an ordinary observer clearly would
not find the two designs “substantially the same.”
Case: 20-1490 Document: 47 Page: 6 Filed: 12/11/2020
6 SUPER-SPARKLY SAFETY STUFF v. SKYLINE USA, INC.
Egyptian
Goddess, 543 F.3d at 678. When the designs are
not “plainly dissimilar,” the analysis
will benefit from a comparison of the claimed and
accused designs with the prior art . . . . Where
there are many examples of similar prior art de-
signs . . . differences between the claimed and ac-
cused designs that might not be noticeable in the
abstract can become significant to the hypothetical
ordinary observer who is conversant with the prior
art.
Id.
The ’172 patent claims a very simple design, in which
rhinestones are applied to two surfaces of a canister: the
vertical cylinder and the bottom. Removing the rhine-
stones from one of these surfaces—the bottom—is a signif-
icant departure from the claimed design. The ’172 patent
and the accused design are thus plainly dissimilar; because
the accused design lacks rhinestones on one of the two sur-
faces decorated in the claimed design, an ordinary observer
would not find the two designs substantially the same.
Even assuming that the two designs are not “plainly
dissimilar,” a comparison with the prior art makes clear
that the accused design does not infringe the ’172 patent.
Although there do not appear to be “many examples of sim-
ilar prior art designs,” the prior art “Pepperface” reference,
dating from 2006, was widely marketed and endorsed by
various celebrities. 2 Its design has rhinestones around the
majority of the canister, but not on the top (near the spray
nozzle) or bottom of the cylinder. Per Egyptian Goddess,
then, the Pepperface design highlights that the key differ-
ence between the ’172 patent and the accused design is that
the bottom of the cylinder is decorated with rhinestones.
2A screenshot of the archived Pepperface website is
included as an attachment to this opinion.
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SUPER-SPARKLY SAFETY STUFF v. SKYLINE USA, INC. 7
As such, the attention of a hypothetical ordinary observer
conversant with bedazzled pepper spray canisters would be
drawn to the presence or absence of rhinestones on the bot-
tom of the cylinder. See Egyptian
Goddess, 543 F.3d at 676.
The hypothetical ordinary observer would therefore
find significant the lack of rhinestones on the bottom of the
accused design and would not confuse the accused design
with the ’172 patent. The district court correctly concluded
that the ordinary observer test necessitates a finding of
noninfringement.
B
Federal Rule of Civil Procedure 56(d) provides that
where, on a motion for summary judgment, “a nonmovant
shows by affidavit or declaration that, for specified reasons,
it cannot present facts essential to justify its opposition,”
the district court may defer consideration of the motion or
deny it; allow time to pursue affidavits, declarations, or dis-
covery; or “issue any other appropriate order.” Fed. R. Civ.
P. 56(d).
We apply the law of the regional circuit in interpreting
and applying Rule 56(d). Accent
Packaging, 707 F.3d at
1325. “The Fifth Circuit,” where this case arose, “reviews
the district court’s dispositions of Rule 56(d) motions for an
abuse of discretion.”
Id. (citing Raby v. Livingston,
600
F.3d 552, 561 (5th Cir. 2010)). In the Fifth Circuit, Rule
56(d) motions “are ‘broadly favored and should be liberally
granted’ because the rule is designed to ‘safeguard non-
moving parties from summary judgment motions that they
cannot adequately oppose.’”
Raby, 600 F.3d at 561 (quoting
Culwell v. City of Fort Worth,
468 F.3d 868, 871 (5th Cir.
1999)). However, a request under Rule 56(d) must explain
how “specified facts . . . if adduced, will influence the out-
come of the pending summary judgment motion.”
Id. (quot-
ing C.B. Trucking, Inc. v. Waste Mgmt. Inc.,
137 F.3d 41,
44 (1st Cir. 1998)). “If it appears that further discovery will
not provide evidence creating a genuine issue of material
Case: 20-1490 Document: 47 Page: 8 Filed: 12/11/2020
8 SUPER-SPARKLY SAFETY STUFF v. SKYLINE USA, INC.
fact, the district court may grant summary judgment.”
Id.
(quoting Access Telecom, Inc. v. MCI Telecomm. Corp.,
197
F.3d 694, 720 (5th Cir. 1999)).
In his supporting declaration, counsel for Super-
Sparkly listed fifteen facts without which Super-Sparkly
was purportedly unable to file a response to Skyline’s mo-
tion. Super-Sparkly sought information relating to Sky-
line’s knowledge and opinion of the ’172 patent and the
accused design; the creation and sale of the accused prod-
uct; and Skyline’s discovery conduct. None of this infor-
mation, however, has any bearing on the ordinary observer
test for design patent infringement. Because the infor-
mation for which Super-Sparkly sought further discovery
was irrelevant to the issue of infringement, Super-Sparkly
failed to explain how the specified facts could influence the
outcome of the motion. The district court did not abuse its
discretion by denying Super-Sparkly’s request under
Rule 56(d) and entering summary judgment of nonin-
fringement.
AFFIRMED
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SUPER-SPARKLY SAFETY STUFF v. SKYLINE USA, INC. 9
ATTACHMENT
