Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`85318060
`
`Monster Cable Products, Inc.
`DAVID M KELLY
`KELLY IP LLP
`
`1330 CONNECTICUT AVE NW, SUITE 300
`WASHINGTON, DC 20036
`UNITED STATES
`
`Iinda.mc|eod@ke||y-ip.com, docketing@ke||y-ip.com, david.ke||y@ke||y—ip.com,
`stephanie.baId@keIIy—ip.com
`
`Request for Remand and Suspension of Appeal
`
`REQUEST FOR REMAND 12158 (292912).pdf(43025 bytes )
`Request for Reconsideration 12158 (292913).pdf(50946 bytes )
`Lance Rake Declaration 1-31-14 Executed (292492).pdf(200542 bytes )
`EXHIBIT A - Rake Dec (163812).pdf(142648 bytes)
`EXHIBIT B — Rake Dec (163810).pdf(991913 bytes)
`Linda K. McLeod
`
`docketing@ke||y-ip.com, Iinda.mc|eod@ke||y—ip.com, chery|.suh@ke||y—ip.com
`/Linda K. McLeod/
`
`02/06/2014
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA585914
`ESTTA Tracking number:
`02/06/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`85318060
`Monster Cable Products, Inc.
`DAVID M KELLY
`KELLY IP LLP
`1330 CONNECTICUT AVE NW, SUITE 300
`WASHINGTON, DC 20036
`UNITED STATES
`linda.mcleod@kelly-ip.com, docketing@kelly-ip.com, david.kelly@kelly-ip.com,
`stephanie.bald@kelly-ip.com
`Request for Remand and Suspension of Appeal
`REQUEST FOR REMAND 12158 (292912).pdf(43025 bytes )
`Request for Reconsideration 12158 (292913).pdf(50946 bytes )
`Lance Rake Declaration 1-31-14 Executed (292492).pdf(200542 bytes )
`EXHIBIT A - Rake Dec (163812).pdf(142648 bytes )
`EXHIBIT B - Rake Dec (163810).pdf(991913 bytes )
`Linda K. McLeod
`docketing@kelly-ip.com, linda.mcleod@kelly-ip.com, cheryl.suh@kelly-ip.com
`/Linda K. McLeod/
`02/06/2014
`
`Proceeding
`Applicant
`Correspondence
`Address
`
`Submission
`Attachments
`
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`
`
`Attorney Docket: 12158.0001
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Applicant:
`Serial Number:
`Filing Date:
`
`Mark:
`
`
`Monster, Inc.
`85318060
`May 11, 2011
`
`
`
`Examining Atty:
`Law Office:
`
`
`
`Kim Teresa Moninghoff, Esq.
`113
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`
`REQUEST FOR REMAND
`AND SUSPENSION OF APPEAL
`
`Applicant Monster, Inc. respectfully requests that the Board remand this application to
`
`
`
`allow the Examining Attorney an opportunity to reconsider the Final Office Action, issued
`
`September 10, 2012, based on compelling new evidence.
`
`As detailed in Applicant’s Request for Reconsideration, Registration has been refused
`
`under Section 23 of the on the ground that this design is believed to be functional, and also
`
`because the design is believed to be a generic product design. This refusal involves highly
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`technical patent references. Applicant has obtained a declaration from a technical and industry
`
`expert, Lance Rake, a Professor of Design at The University of Kansas in Lawrence, Kansas, to
`
`provide his expert opinion on the nature of the mark and the referenced patent(s), among other
`
`things. Applicant submits that this additional information and expert declaration will better
`
`inform the PTO of the issues, and possibly render the appeal moot. It will also better inform the
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`{292213;v1 }
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`Serial No. 85318060
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`TTAB of the issues, so that the tribunal can fully understand the complex issues on appeal and
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`make an informed decision if this case proceeds on appeal.
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`Accordingly, Applicant respectfully requests remand of this application to allow the
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`Examining Attorney to time to review and consider Applicant’s Request for Reconsideration
`
`(attached). Applicant also requests the suspension of the appeal pending disposition of the
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`Request for Reconsideration.
`
`Dated: February 6, 2014
`
`
`
`
`
`
`MONSTER, INC.
`
`By: /Linda K. McLeod/
`
`David M. Kelly
`david.kelly@kelly-ip.com
`Linda K. McLeod
`linda.mcleod@kelly-ip.com
`Robert D. Litowitz
`robert.litowitz@kelly-ip.com
`Kelly IP, LLP
`1330 Connecticut Ave., N.W.
`Suite 300
`Washington, D.C. 20036
`Telephone: 202-808-3570
`Attorneys for Applicant
`
`]
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`{292213;v1 }2
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`
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`Serial No. 85318060
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Applicant:
`Serial Number:
`Filing Date:
`
`Mark:
`
`
`Monster, Inc.
`85318060
`May 11, 2011
`
`
`
`Examining Atty:
`Law Office:
`
`
`
`Kim Teresa Moninghoff, Esq.
`113
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`
`
`REQUEST FOR RECONSIDERATION OF FINAL OFFICE ACTION
`
`Applicant Monster, Inc. respectfully requests the Examining Attorney reconsider the Final
`
`Office Action, issued September 10, 2012.
`
`I.
`
`Introduction
`
`The application seeks registration for the design of a headphone cable as illustrated below:
`
`
`
`The design consists of “the curved outside contours of a headphone cable that give way to sides
`
`of the cable jacket that are wider than they are thick.” Registration has been refused under
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`{292213;v1 }3
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`

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`Section 23 of the on the ground that this design is believed to be functional, and also because the
`
`Serial No. 85318060
`
`design is believed to be a generic product design. More specifically, the Examining Attorney
`
`found applicant’s design functional based primarily on applicant’s utility patent (U.S. Patent No.
`
`8068633B2, the ‘633 patent, entitled “Headphone Cable Splitter”), which includes drawings of a
`
`flat cable with curved outside contours as an embodiment of the invention. Additionally, the
`
`Examining Attorney concluded that Applicant’s design is one of only a few available alternatives
`
`for achieving some of the advantages associated with “flat headphone cables” as identified in the
`
`specification of Applicant’s utility patent (i.e., resisting tangling, lying flat on the wearer’s body
`
`and face, accommodating internal wires side-by-side.) Further, the Examining Attorney
`
`concluded that so-called “more complicated” alternative designs “likely . . . are more costly to
`
`manufacture than applicants simple, flat cable design.” The Examining Attorney also pointed to
`
`Applicant’s and its competitors’ advertising that discuss certain perceived advantages of “flat”
`
`headphone cables. Regarding genericness, the Examining Attorney concluded that Applicant’s
`
`design is “so common in the industry that it cannot be said to identify a particular source.”
`
`
`
`Applicant submits that both grounds for refusal should be withdrawn and that the mark
`
`should be approved for registration on the Supplemental Register. In support, Applicant submits
`
`the attached declaration of Lance G. Rake, Professor of Industrial Design at the University of
`
`Kansas and industrial designer with over 40 years of experience as a designer and educator. As
`
`shown and explained by Professor Rake, the most prominent design feature of Applicant’s
`
`trademark, the “curved outer contour,” is not claimed in Applicant’s patent nor disclosed as a
`
`functional element in the patent’s specification. Rather, it is an arbitrary design feature; an
`
`aesthetic design choice not driven by performance or functional considerations. Furthermore,
`
`Professor Rake explains that the images the Examining Attorney relied upon as evidence that
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`{292213;v1 }4
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`Applicant’s design is generic do not provide sufficiently clear images for a designer of ordinary
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`Serial No. 85318060
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`skill to discern the actual design elements of the products shown. Therefore, those images are
`
`not competent evidence that applicant’s particular design is commonplace. Accordingly,
`
`Applicant’s design is neither functional nor generic and is eligible for trademark registration.
`
`
`
`II. Discussion
`
`A. Legal Standards
`
`As the TMEP explains, when a utility patent discloses a design that is also the subject of
`
`a trademark application, it is important to read the patent to determine whether the it actually
`
`claims the features presented in the proposed mark. If the utility patent does claim the design
`
`feature, it is strong evidence that the particular product features is functional. If it does not claim
`
`the feature, or if the feature shown or mentioned in the patent is merely an arbitrary, ornamental,
`
`or incidental element, “then the probative value of the patent as evidence of functionality is
`
`substantially diminished or negated entirely.” TMEP § 1202.02(a)(v)(A), citing, TrafFix, 532
`
`U.S. 23, 34 (2001); In re Udor U.S.A., Inc., 89 USPQ2d 1978, 80-82 (TTAB 2009) (finding that
`
`where the patent’s language and a detailed comparison between the identified features of the
`
`patent drawing with the visible features of the trademark drawing established that the patent
`
`claims involved components neither shown nor described in the trademark design, the utility
`
`patent did not support a finding of functionality); In re Weber-Stephen Prods. Co., 3 USPQ2d
`
`1659 (TTAB 1987) (patent evidence did not show utilitarian advantages of barbeque grill design
`
`sought to be registered).
`
`The Court in Traffic provided examples of features that, though disclosed in a utility
`
`patent, might still qualify for trademark registration and protection:
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`{292213;v1 }5
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`Serial No. 85318060
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`In a case where a manufacturer seeks to protect arbitrary, incidental, or ornamental
`aspects of features of a product found in the patent claims, such as arbitrary curves in the
`legs or an ornamental pattern painted on the springs, a different result might obtain. There
`the manufacturer could perhaps prove that those aspects do not serve a purpose within the
`terms of the utility patent.
`
`TrafFix, 532 U.S. at 34.
`
`B. Applicant’s Patent
`
`Claim 1, the sole independent claim, and dependent claim 2 read as follows:
`
`1. A headphone cable having the following sections:
`a unitary cable section having left and right audio channel conductors, said
`unitary cable section having a cross-sectional width and thickness, said width
`being substantially greater than said thickness; and left and right cable sections
`electrically coupled to said left and right audio channel conductors, respectively,
`of said unitary cable section, and for connecting to the left and right earpieces of
`a headphone, said left and right cable sections having cross-sectional widths and
`thicknesses, said widths being substantially greater than said thicknesses, the
`left and right cable sections being oriented such that the widths of said left and
`right cable sections are substantially perpendicular to the width of said unitary
`cable section.
`2. The headphone cable of claim 1, further having a splitter for splitting said
`unitary cable section into said left and right cable sections.
`
`
`It is a “bedrock principle” of patent law that a patent’s claims— not the abstract, specification, or
`
`drawings—define the legal scope of the invention. Phillips v. AWH Corp., 415 F. 3d 1303, 1312
`
`(Fed. Cir. 2005). Because the patentee is required to "define precisely what his invention is," it
`
`is "unjust to the public, as well as an evasion of the law, to construe it in a manner different from
`
`the plain import of its terms." Id. Claims and claim terms are to be given their ordinary and
`
`customary meaning, as understood by a person of ordinary skill in the art at the time of the
`
`invention. Philips at 1313. As the Federal Circuit has stated, the ordinary meaning of claim
`
`terms is sometimes apparent even to lay people, including judges. In those cases, claim
`
`construction involves the application of the widely accepted meaning of commonly understood
`
`words. Philips at 1314.
`
`{292213;v1 }6
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`Serial No. 85318060
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`Here, Claim 1 of applicant’s utility patent describes cables with “cross-sectional width and
`
`thickness, said width being substantially greater than said thickness . . .” Claim 1, col. 4, ll. 10-
`
`14. As Professor Rake states, the meaning of this portion of Claim 1 is plain to persons of
`
`ordinary skill in the art of designing headphone cables—the claim covers cable designs where
`
`the cable sections have:
`
`a. Cross-sectional width and thickness, and where
`
`b. Said width is substantially greater than said thickness.
`
`It is not necessary to read beyond Claim 1 to understand the scope of this invention. The words
`
`are clear and unambiguous. They do not recite “flat” cables. Nor do they recite cables with
`
`“curved outer contours.”
`
`While it is true that the drawings in the patent’s specification show flat cables with
`
`curved outer contours, such images do not make those specific features elements of the claimed
`
`invention. Indeed, the Federal Circuit has “repeatedly warned against confining” a patent’s
`
`claims to a specific embodiment shown in the specification. Philips at 1323.
`
`Features need not be claimed in a utility patent to serve as evidence of functionality;
`
`statements in the specification “illuminating the purpose served by a design may constitute
`
`equally strong evidence of functionality.” In re Becton, Dickinson and Co., 675 F.3d 1372, 1375
`
`(Fed. Cir 2012) But as noted above, the Supreme Court in TrafFix recognized that not every
`
`feature or structure disclosed in a patent necessarily is “functional.”
`
`{292213;v1 }7
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`Serial No. 85318060
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`In this case, the specification’s text does not mention “curved outer contours,” much less
`
`ascribe to them any functional purpose or advantage.1 Furthermore, and as Professor Rake’s
`
`declaration establishes, the “curved outer contours” of Applicant’s design are akin to the “curves
`
`in the legs” of the hypothetical table mentioned in Traffix—the curved outer contours do not
`
`serve a purpose within the terms of Applicant’s utility patent, but rather are arbitrary, incidental
`
`to function, and ornamental. In Professor Rake’s opinion:
`
`Edge treatment such as this can be important design elements and can materially affect
`how consumers and users of a product perceive a product. As one example, Apple’s
`computers, tablets, and phones are known as much for their innovative designs as for
`their technical performance, and edge treatments are significant elements of many of
`Apple’s designs. For example, according to Walter Isaacson, author of the acclaimed
`biography of Apple founder Steve Jobs, "Jobs spent days agonizing over just how
`rounded the corners [of one Apple product] should be." In my opinion, the edge treatment
`of Monster’s cable design likewise has an impact on how consumers and users perceive
`and appreciate the product from an aesthetic standpoint. The rounded edges of Monster’s
`design convey an attractive contemporary aesthetic. Other design alternatives, such as the
`ones I propose in Exhibit B, convey different impressions.
`
`
`Rake Declaration, paragraph 21.
`
`As such, Applicant’s design is not functional, regardless of whether the drawings in
`
`applicant’s utility patent depict that design as an embodiment of Applicant’s invention.
`
`C. Alternative Designs
`
`In addition to showing that Applicant’s trademark is arbitrary, incidental to function, and
`
`ornamental, Professor Rake also provides numerous alternative designs for headphone cables
`
`that practice applicant’s utility patent and that can achieve the functional advantages described in
`
`that utility patent. The existence of functionally equivalent alternative designs is probative that a
`
`
`1 The Examining Attorney also pointed to third party advertisements supposedly reflecting
`Applicant’s design and touting its functional benefits. As with the patent specification, those
`advertisements do not attribute any function to “curved outer contours.” Like Applicant’s utility
`patent, these third party advertisement are not evidence of functionality.
`
`{292213;v1 }8
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`

`
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`design sought to be registered as a trademark is non-functional. TMEP § 1202.02(a)(v)(B),
`
`Serial No. 85318060
`
`citing Dietrich, 91 USPQ2d at 1636, citing Valu Eng'g, 278 F.3d at 1276, 61 USPQ2d at 1427
`
`In the Final Office Action, the Examining Attorney minimized the significance of design
`
`alternatives previously proposed by applicant, concluding that they would impair functionality
`
`and likely be more expensive to manufacture. Those conclusions were based only on conjecture
`
`and speculation. Those speculative conclusions, moreover, would not apply to Professor Rake’s
`
`alternative designs. As Professor Rake explains, each of his alternative design concepts can be
`
`used to practice the invention disclosed and claimed in the ’633 patent. Specifically, each of his
`
`designs yields a headphone cable that is wider than it is thick, that resists tangling, that can
`
`accommodate internal wiring, and that would lie flat against the user’s body or face, all without
`
`sacrificing performance compared to the design shown in the ‘633 patent. Furthermore, each of
`
`Professor Rake’s proposed alternative designs could be produced without adding to the cost or
`
`complexity of manufacture. Rake Declaration, paragraphs 19, 21.
`
`D. No Evidence of Genericness
`
`The Examining Attorney relied on print-outs from the Internet as evidence that third-
`
`parties are using and selling headphone cables with Applicant’s design, such that the design is
`
`“common in the industry” and “cannot be said to identify a particular source.” Those print-outs,
`
`however, do not reflect use of Applicant’s particular design, namely a cable with “curved outside
`
`contours of a headphone cable that give way to sides of the cable jacket that are wider than they
`
`are thick.” In particular, as Professor Rake explains (Rake Declaration, paragraph 22), the
`
`images provided of headphone cables from the brands listed below lack sufficient detail and
`
`clarity for a skilled designer to determine whether those cables incorporate Applicant’s design:
`
`{292213;v1 }9
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`

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`
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`Serial No. 85318060
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` JAYS brand, ILUV brand, PURGEAR brand, LUXMO brand, SKULL CANDY brand,
`GOGROOVE brand, JLAB brand, PINEAPPLE ELECTRONICS brand, CYGNETT
`brand, PAINTED TUNES brand, SONY brand, ROCKETFISH brand, JVC brand,
`PHILIPS brand, and HELLO KITTY brand.
`
`
`Therefore, these print-outs are not competent or reliable evidence of genericness.
`
`Furthermore, the Examining Attorney presented no evidence regarding sales, advertising,
`
`or marketing of any of these headphone products. Indeed, there is no evidence of record that any
`
`of these products has been sold in the United States. And, even assuming their presence on the
`
`Internet reflects offers for sale, there is no evidence regarding the date(s) of first sale, whether
`
`sales have been continuous, or the extent of any such sales in terms of units and dollar value.
`
`Thus, the record lacks any basis to conclude that any of these headphone products have achieved
`
`any level of market penetration or commercial success. Therefore, even assuming that the
`
`images contained in these Internet print-outs reflect use of Applicant’s design by other
`
`manufacturers, there is no competent or reliable evidence to prove that their commercial use has
`
`become so prevalent or pervasive as to render Applicant’s original, ornamental, non-functional
`
`design generic.
`
`For all these reasons, the refusal to register Applicant’s mark based on alleged
`
`genericness should be withdrawn.
`
`
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`{292213;v1 }10
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`

`
`
`
`III.
`
`Conclusion
`
`Serial No. 85318060
`
`For the reasons set forth above, Applicant respectfully requests that this application be
`
`approved for registration on the Supplemental Register.
`
`MONSTER, INC.
`
`By: /Linda K. McLeod/_______
`
`David M. Kelly
`david.kelly@kelly-ip.com
`Linda K. McLeod
`linda.mcleod@kelly-ip.com
`Robert D. Litowitz
`robert.litowitz@kelly-ip.com
`Kelly IP, LLP
`1330 Connecticut Ave., N.W.
`Suite 300
`Washington, D.C. 20036
`Telephone: 202-808-3570
`Attorneys for Applicant
`
`Dated: February 6, 2014
`
`
`
`
`{292213;v1 }11
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`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket: 12158.0001
`
`
`Applicant:
`Serial Number:
`Filing Date:
`
`Mark:
`
`
`Monster, Inc.
`85318060
`May 11, 2011
`
`
`
`
`
`
`
`Examining Atty:
`Law Office:
`
`
`Kim Teresa Moninghoff, Esq.
`113
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`DECLARATION OF LANCE RAKE
`
`I, Lance Rake, submit this declaration on behalf of applicant Monster, Inc.
`
`1. For over 40 years I have been studying, practicing, and teaching industrial design.
`
`2. Since 1987, I have taught Industrial Design at The University of Kansas, Lawrence
`
`Kansas, where I currently am a Professor of Design. From 1995-2003, I served as the
`
`Acting Director of the Center for Design Research at the university. I have taught and
`
`continue to teach numerous course in design, including all of the studio design courses
`
`offered at the University
`
`3. I have also taught full-time at Auburn University, and UNITEC (formerly Carrington
`
`Technical Institute) in Auckland, New Zealand.
`
`
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`{110327;v2 }-1-
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`Serial Number: 85318060
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`4. Since 2000, I have also been a designer/consultant to Infusion Design, Bonner Springs,
`
`Kansas.
`
`5. Working alone or with other professionals, I have designed commercial products,
`
`consumer products, interiors, graphics, packaging, and exhibits.
`
`6. In 2004, the editors of ID Magazine included me in their “Design 50” profile of one
`
`designer from each of the 50 states.
`
`7. I am the inventor or co-inventor of numerous design and utility patents for which
`
`applications are pending or patents have been granted by the United States Patent and
`
`Trademark Office. These patents and applications are listed in my cv, which
`
`accompanies this declaration as Exhibit A.
`
`8. I have also served as an expert witness in several cases where design patents were at
`
`issue, including one ITC case involving the design for a USB Drive.
`
`9. My experiences as an industrial designer, educator, and expert witness qualify me to
`
`opine on the issues presented in Monster, Inc.’s pending trademark application, Serial
`
`Number 853180060, for its headphone cable design. As I understand it, the mark at issue
`
`is depicted above, and has been described by Monster as consisting of “the curved
`
`outside contours of a headphone cable that give way to sides of a cable that are wider
`
`than they are thick.”
`
`10. I understand that this application has been rejected based on the Trademark Attorney’s
`
`findings that the design shown in Monster’s trademark application is also disclosed in the
`
`drawings of a utility patent, U.S. Patent No. 8068633B2, (the ‘633 patent), entitled
`
`“Headphone Cable Splitter.” The rejection focused on the patent’s discussion of the
`
`advantages of a “flat” cable, including an “inherently more rigid” structure and a “larger
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`{110327;v2 }
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`Serial Number: 85318060
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`cross sectional area” that “facilitates passage of multiple conductors in a side-by-side
`
`configuration” and “can accommodate added functionality such as conductors for a
`
`microphone.” Col. 1., ll. 17-26. Those statements appear in the patent’s specification,
`
`the portion that, along with the drawings, describes and explains the invention and how it
`
`represents an improvement over prior devices. The examining attorney also looked to the
`
`patent’s drawings, which, according to the examining attorney, illustrate cables with
`
`curved outside contours.
`
`11. I understand that the Trademark Attorney further concluded that Monster’s design is one
`
`of just a few alternatives for the design of headphone cables.
`
`12. I disagree with these conclusions:
`
`a. First, the claims of the ‘633 patent do not mention or otherwise include as
`
`limitations either “flat” cables or cables with “curved outside contours.”
`
`b. Second, numerous alternative designs exist for practicing the invention actually
`
`claimed in the ‘633 patent and for achieving the functional advantages discussed
`
`in the ‘633 patent.
`
`13. Regarding the ‘633 patent, my understanding is that the patent’s claims— not the
`
`abstract, specification, or drawings—define the legal scope of the invention. I further
`
`understand that the Court of Appeals for the Federal Circuit has described this rule as a
`
`“bedrock principle” of patent law. Phillips v. AWH Corp., 415 F. 3d 1303 (Fed. Cir.
`
`2005). I further understand that the Federal Circuit has explained that because the
`
`patentee is required to "define precisely what his invention is," it is "unjust to the public,
`
`as well as an evasion of the law, to construe it in a manner different from the plain import
`
`of its terms." Philips, citing White v. Dunbar, 119 U.S. 47, 52, 7 S.Ct. 72, 30 L.Ed. 303
`
`{110327;v2 }
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`Serial Number: 85318060
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`(1886); see also Cont'l Paper Bag Co. v. E. Paper Bag Co., 210 U.S. 405, 419, 28 S.Ct.
`
`748, 52 L.Ed. 1122 (1908) ("the claims measure the invention"); McCarty v. Lehigh
`
`Valley R.R. Co., 160 U.S. 110, 116, 16 S.Ct. 240, 40 L.Ed. 358 (1895) ("if we once begin
`
`to include elements not mentioned in the claim, in order to limit such claim ..., we should
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`never know where to stop"); Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S.
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`336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961) ("the claims made in the patent are the sole
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`measure of the grant").
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`14. Under the rules of claim construction established by the Federal Circuit, claims and claim
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`terms are to be given their ordinary and customary meaning, as understood by a person of
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`ordinary skill in the art at the time of the invention. In some cases, that ordinary meaning
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`is apparent even to lay people, including judges. In those cases, claim construction
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`involves “little more than the application of the widely accepted meaning of commonly
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`understood words. See Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir.2001) (holding that
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`the claims did "not require elaborate interpretation").
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`15. Monster’s ‘633 utility patent presents such a case where the ordinary and customary
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`meaning of claim language is apparent from the claims themselves, making further claim
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`construction unnecessary.
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`16. Claim 1, the sole independent claim, and dependent claim 2 read as follows:
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`1. A headphone cable having the following sections:
`a unitary cable section having left and right audio channel conductors, said
`unitary cable section having a cross-sectional width and thickness, said width
`being substantially greater than said thickness; and left and right cable sections
`electrically coupled to said left and right audio channel conductors, respectively,
`of said unitary cable section, and for connecting to the left and right earpieces of
`a headphone, said left and right cable sections having cross-sectional widths and
`thicknesses, said widths being substantially greater than said thicknesses, the
`left and right cable sections being oriented such that the widths of said left and
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`right cable sections are substantially perpendicular to the width of said unitary
`cable section.
`2. The headphone cable of claim 1, further having a splitter for splitting said
`unitary cable section into said left and right cable sections.
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`17. As can be readily seen, Claim 1 recites cables with “cross-sectional width and thickness,
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`said width being substantially greater than said thickness . . .” Claim 1, col. 4, ll. 10-14.
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`18. The meaning of this portion of Claim 1 is plain—the claim covers cable designs where
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`the cable sections have:
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`a. Cross-sectional width and thickness, and where
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`b. Said width is substantially greater than said thickness.
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`19. It is not necessary for a person of ordinary skill in the art, such as me, to read beyond
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`Claim 1 to understand the scope of this invention. The words are clear and unambiguous.
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`Based on the language of Claim 1, I can envision numerous aesthetic designs that can be
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`used for practicing this invention, and I reproduce them in the attached Exhibit B to my
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`declaration. In my opinion, each of these designs can be used for practicing the invention
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`disclosed and claimed in the ‘633 patent. Each has both width and thickness, and in each
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`case, the width is substantially greater than the thickness. Each of my proposed
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`alternative designs, moreover, can be used to produce audio headphone cables that can
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`accommodate left and right audio channel conductors, as Claims 1 and 2 require.
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`Although the patent’s specification describes the cables lying flat or resisting tangling as
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`benefits of the invention, the patent’s claims do not include any such limitations, and thus,
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`it is my understanding that these advantages, while perhaps desirable, are not
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`requirements of the claimed invention. Nevertheless, each of my proposed alternative
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`designs can accommodate left and right audio channel conductors, and each of those
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`alternative designs would produce cables that resist tangling.
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`20. Equally significant, nothing in the language of Claims 1 and 2 of the ‘633 patent mentions
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`or requires cables that have curved outside contours. Although the drawings in the
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`specification of the ‘633 patent depict cables with such curved outside contours, I
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`understand that those images depict one of numerous possible embodiments of the
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`invention.
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`21. In my opinion as an industrial designer with decades of practical and academic
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`experience, the use of curved outside contours in Monster’s cable design represents an
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`arbitrary, ornamental design choice, not driven by function. Edge treatment such as this
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`can be important design elements and can materially affect how consumers and users of a
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`product perceive a product. As one example, Apple’s computers, tablets, and phones are
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`known as much for their innovative designs as for their technical performance, and edge
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`treatments are significant elements of many of Apple’s designs. For example, according
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`to Walter Isaacson, author of the acclaimed biography of Apple founder Steve Jobs, "Jobs
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`spent days agonizing over just how rounded the corners [of one Apple product] should
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`be." In my opinion, the edge treatment of Monster’s cable design likewise has an impact
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`on how consumers and users perceive and appreciate the product from an aesthetic
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`standpoint. The rounded edges of Monster’s design convey an attractive contemporary
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`aesthetic. Other design alternatives, such as the ones I propose in Exhibit B, convey
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`different impressions. And significantly, I would expect that these alternative designs
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`could be produced without adding to the cost or complexity of manufacture. Edge designs
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`rarely changes the cost, tooling, or performance of a product. It can, however,
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`significantly affect the overall appearance and ultimately its appeal in the marketplace.
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`22. I have also reviewed photographic images of headphones that I understand the Examining
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`Attorney has relied upon as evidence that Monster’s cable design is commonplace. I
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`personally have not encountered any of the headphones shown in these images, and
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`therefore I cannot comment on whether these photographs represent actual products made
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`and sold in the United States. As an industrial designer, however, I am able to comment
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`on whether these photographs contain sufficient clarity and detail to enable anyone to
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`discern whether these images depict headphone cables that incorporate Applicant’s
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`design—namely, “the curved outside contours of a headphone cable that give way to sides
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`of a cable that are wider than they are thick.” In my opinion, these images do not present
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`reliable visual evidence that Applicant’s design has been copied or used by other
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`manufacturers, or that it is a commonplace design.
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`I declare under penalty of perjury of the laws of the United States that the foregoing is true and
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`correct under 28 U.S.C. s§ 1746. This declaration was executed on January ___, 2014.
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`Signature:________________________
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`
` Lance Rake
` Professor of Design
` The University of Kansas
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`Prof.
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`LANCE+===
`RAKE
`
`,IDSA
`The University of Kansas
`Department of Design
`School of Architecture, Design, and Planning
`1467 Jayhawk Blvd., Room 300
`Lawrence, Kansas 66