Case 1:21-cv-05685-AKH-OTW Document 53 Filed 03/15/22 Page 1 of 32

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

BOBCAR MEDIA, LLC,

Plaintiff,

v. Case No.: 1:21-CV-05685 (AJN)

DEUTSCHE TELEKOM AG (d/b/a T-

MOBILE), T-MOBILE USA, INC.,
SAMSUNG ELECTRONICS CO., LTD., and
SAMSUNG ELECTRONICS AMERICA,
INC.,

Defendants.

DEFENDANTS’ MEMORANDUM OF LAW IN SUPPORT OF THEIR MOTION TO

DISMISS PLAINTIFF’S AMENDED COMPLAINT
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TABLE OF CONTENTS

Page

INTRODUCTION .......................................................................................................................... 1
BACKGROUND ............................................................................................................................ 2
ARGUMENT .................................................................................................................................. 5
I. LEGAL STANDARD UNDER RULE 12(b)(6) ................................................................ 5
II. BOBCAR IS PRECLUDED FROM RE-LITIGATING ITS TRADE DRESS
INFRINGEMENT AND UNFAIR COMPETITION CLAIMS ......................................... 6
A. Law of Preclusion ................................................................................................... 6
B. The Trade Dress-Related Claims and Issues Decided in the 2016 Action ............. 7
C. Issue Preclusion Bars Bobcar’s Trademark and Unfair Competition Claims......... 9
III. PLAINTIFF’S FIRST AMENDED COMPLAINT DOES NOT PLAUSIBLY ALLEGE
DESIGN PATENT INFRINGEMENT............................................................................. 11
A. Design Patent Law ................................................................................................ 12
B. The Asserted Design Patents and the Accused Aardy Vehicles ........................... 13
C. Bobcar Has Not Plausibly Alleged Infringement, and the Accused Aardy Vehicles
Do Not Infringe ..................................................................................................... 15
IV. THE CLAIMS FOR UTILITY PATENT INFRINGEMENT SHOULD BE DISMISSED
BECAUSE THE PATENTS ARE INVALID UNDER 35 U.S.C. § 101 ......................... 17
A. Utility Patent Eligibility under 35 U.S.C. § 101 ................................................... 17
B. The Asserted Utility Patents and Bobcar’s First Amended Complaint ................ 19
C. The Utility Patents Are Directed to An Abstract Idea and Do Not Involve Any
Inventive Concept or Technological Improvement .............................................. 22
1. Alice Step One........................................................................................... 22
2. Alice Step Two .......................................................................................... 24
CONCLUSION ............................................................................................................................. 25

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Page(s)
FEDERAL CASES

Alice Corp. v. CLS Bank Int’l,

573 U.S. 208 (2014) ...............................................................................................18, 19, 24

Anderson v. Kimberly-Clark Corp.,

570 F. App’x 927 (Fed. Cir. July 10, 2014) .......................................................................13

Ariosa Diagnostics, Inc. v. Sequenom, Inc.,

788 F.3d 1371 (Fed. Cir. 2015)....................................................................................24, 25

Ashcroft v. Iqbal,
556 U.S. 662 (2009) .......................................................................................................5, 24

Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,

569 U.S. 576 (2013) .....................................................................................................17, 18

Aurelius Capital Master, Inc. v. MBIA Ins. Corp.,

695 F. Supp. 2d 68 (S.D.N.Y. 2010)....................................................................................6

Bell Atl. Corp. v. Twombly,

550 U.S. 544 (2007) .............................................................................................................5

Blonder-Tongue Labs., Inc. v. Univ. of Ill. Foundation,

402 U.S. 313 (1971) .............................................................................................................6

Bobcar Media, LLC v. Aardvark Event Logistics, Inc.,

--- F.Supp.3d ----, 2020 WL 1673687 (S.D.N.Y. Apr. 6, 2020) ................................ passim

Bobcar Media, LLC v. Aardvark Event Logistics, Inc., 142 S.Ct. 235 (2021) ......................5, 7

Bobcar Media, LLC v. Aardvark Event Logistics, Inc.,

839 F. App’x 545 (Fed. Cir. Mar. 5, 2021) ......................................................................5, 7

Buyer’s Direct Inc. v. Dick’s Sporting Goods, Inc.,

No. 18-cv-597, 2019 WL 5491548 (E.D.N.C. Oct. 24, 2019)...........................................13

Chamberlain Grp. v. Techtronic Indus. Co.,

935 F.3d 1341 (Fed. Cir. 2019).................................................................................. passim

CLS Bank v. Alice,

717 F.3d 1269 (Fed. Cir. 2013)..........................................................................................19

Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n,
776 F.3d 1343 (Fed. Cir. 2014)..........................................................................................23

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Contessa Food Prods., Inc. v. Conagra, Inc.,

282 F. 3d 1370 (Fed. Cir. 2002).............................................................................12, 13, 16

Crocs, Inc. v. Int’l Trade Comm’n,

598 F.3d 1294 (Fed. Cir. 2010)..........................................................................................12

Customedia Techs., LLC v. Dish Network Corp.,

951 F.3d 1359 (Fed. Cir. 2020)..........................................................................................23

DDR Holdings, LLC v. Hotels.com, L.P.,

773 F.3d 1245 (Fed. Cir. 2014)..........................................................................................18

Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008)......................................................................................12, 13

George & Co., LLC v. Spin Master Corp.,

19-cv-4391-RPK-SJB, 2020 WL 7042665 (S.D.N.Y. Nov. 30, 2020)..........................9, 10

Gorham Mfg. Co. v. White,

81 U.S. 511 (1871) .............................................................................................................13

In re TLI Commc’ns LLC Patent Litig.,

823 F.3d 607 (Fed. Cir. 2016)......................................................................................23, 24

Island Intellectual Prop., LLC v. Stonecastle Asset Mgmt. LLC,

463 F. Supp. 3d 490 (S.D.N.Y. 2020)................................................................................19

ITT Corp. v. United States,

963 F.2d 561 (2d Cir. 1992)...............................................................................................11

Jewel Pathway LLC v. Polar Electro Inc.,

No. 20-cv-4108 (ER), 2021 WL 3621885 (S.D.N.Y. Aug. 16, 2021) ...............................19

Mayo Collab. Servs. v. Prometheus Labs., Inc.,

566 U.S. 66 (2012) .............................................................................................................18

McRO, Inc. v. Bandai Namco Games Am. Inc.,

837 F.3d 1299 (Fed. Cir. 2016)..........................................................................................18

Montana v. United States,

440 U.S. 147 (1979) .............................................................................................................6

MRC Innovations, Inc. v. Hunter Mfg., LLP,

747 F.3d 1326 (Fed. Cir. 2014)..........................................................................................12

MSA Prods., Inc. v. Nifty Home Prods., Inc.,

883 F. Supp. 2d 535 (D.N.J. 2012) ....................................................................................13

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OddzOn Prods., Inc. v. Just Toys, Inc.,

122 F.3d 1396 (Fed. Cir. 1997)..........................................................................................12

Open Text S.A. v. Alfresco Software Ltd.,

No. 13-cv-04842-JD, 2014 WL 4684429 (N.D. Cal. Sept. 19, 2014) ...............................23

Performance Designed Prods. LLC v. Mad Catz, Inc.,

No. 16-cv-629, 2016 WL 3552063 (S.D. Cal. June 29, 2016) ..........................................13

Pers. Beasties Grp. LLC v. Nike, Inc.,

341 F. Supp. 3d 382 (S.D.N.Y. 2018)................................................................................19

Plasmart, Inc. v. Wincell Int’l Inc.,

442 F. Supp. 2d 53 (S.D.N.Y. 2006)..............................................................................9, 10

Quantum Stream Inc. v. Charter Commc’ns, Inc.,

309 F. Supp. 3d 171 (S.D.N.Y. 2018)................................................................................23

Rosado-Acha v. Red Bull GmbH,

No. 15-cv-7620-KPF, 2016 WL 3636672 (S.D.N.Y. June 29, 2016) .................................6

Russell-Newman, Inc. v. Robeworks, Inc.,

No. 00-cv-9797-JFK, 2002 WL 1918325 (S.D.N.Y. Aug. 19, 2002) ...........................7, 11

Secured Mail Sols. LLC v. Universal Wilde, Inc.,

873 F.3d 905 (Fed. Cir. 2017)............................................................................................19

Solutran, Inc. v. Elavon, Inc.,

931 F.3d 1161 (Fed. Cir. 2019)..........................................................................................24

Stan Lee Media v. Lee,

774 F.3d 1292 (10th Cir. 2014) .........................................................................................11

Taylor v. Sturgell,
553 U.S. 880 (2008) .............................................................................................................6

Transaero, Inc. v. La Fuerza Aerea Boliviana,

162 F.3d 724 (2d Cir. 1998).....................................................................................7, 10, 11

Universal Secure Registry LLC v. Apple Inc.,

10 F.4th 1342 (Fed. Cir. 2021) ..........................................................................................24

Wine Enthusiast, Inc. v. Vinotemp Int’l Corp.,

317 F. Supp. 3d 795 (S.D.N.Y. 2018)..........................................................................12, 13

Yu v. Apple Inc.,
1 F.4th 1040 (Fed. Cir. 2021) ................................................................................18, 22, 24

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Zherka v. City of N.Y.,

459 F. App’x 10 (2d Cir. Jan. 19, 2012) ............................................................................11

FEDERAL STATUTES

35 U.S.C. § 101................................................................................................................ passim

35 U.S.C. § 171(a) ...................................................................................................................17

RULES

Federal Rule of Civil Procedure 8(a) .........................................................................................5

Federal Rule of Civil Procedure 12(b)(6) ........................................................................ passim

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INTRODUCTION

In 2016, Plaintiff Bobcar Media, LLC (“Bobcar”) sued Aardvark Event Logistics, Inc.

(“Aardvark”) for, inter alia, trade dress infringement based on “Aardy” vehicles made and

operated by Aardvark in connection with several mobile advertising campaigns, including

Aardvark’s 2015 and 2016 campaigns for T-Mobile and Samsung. After four years of litigation

before Judge Oetken, all accused Aardy vehicles were found not to infringe Bobcar’s trade dress

as a matter of law. Bobcar appealed and lost at the Federal Circuit on March 5, 2021, and its

petition for certiorari to the Supreme Court was denied. Having had a full and fair opportunity to

litigate its trade dress claims, that should have ended the matter.

Nonetheless, on June 30, 2021, nearly three months after losing at the Federal Circuit,

Bobcar filed this second action against T-Mobile and Samsung, seeking to relitigate the same trade

dress infringement claims it already lost on the merits against Aardvark. To be clear, the accused

Aardy vehicles in this case are the very same vehicles that Bobcar unsuccessfully accused of

infringing in its previous action against Aardvark. Knowing that preclusion bars its trade dress

claims, Bobcar now attempts to circumvent that final judgment by contending that the trade dress

definition it advanced with Judge Oetken for over four years was not quite how it wanted to say

things after all. Instead, it puts forth a trade dress definition that, in Bobcar’s words, is “somewhat

more detailed and specific” compared to the 2016 action, (dkt. no. 45 ¶ 161)—hoping to

sufficiently cloud the issues to skirt a motion to dismiss. But Bobcar cannot use sleight-of-hand

and wordsmithing to relitigate claims that it already lost on the merits. Issue preclusion bars

Bobcar’s trade dress-related claims, and they should be dismissed.

Bobcar’s patent infringement claims should also be dismissed. Bobcar’s design patent

claims are not plausibly alleged because Bobcar provides no evidence of the overall visual

impression of the accused vehicles relative to any of the three asserted design patents—a

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prerequisite to a claim for design patent infringement. Moreover, the ornamental design of the

accused vehicles is fundamentally different from Bobcar’s claimed designs. As to the three utility

patents, those claims are invalid under at least 35 U.S.C. § 101 because they are improperly

directed to the abstract idea for the ornamental designs reflected in Bobcar’s design patents and

trade dress. Thus, for the reasons explained below, Defendants respectfully request that Bobcar’s

First Amended Complaint (“2022 FAC”) be dismissed under Rule 12(b)(6).

BACKGROUND

On February 4, 2016, Bobcar sued Aardvark in this district. Bobcar Media, LLC v.

Aardvark Event Logistics, Inc., No. 16-cv-885 (JPO) (“2016 Action”). The operative complaint

in that action was the Second Amended Complaint, dated April 16, 2016. (2016 Action, dkt. no.

12 (“2016 SAC”) (Ex. 1).) Bobcar asserted the same intellectual property and claims in that action

as it asserts against Defendants here—namely, infringement of three utility patents (U.S. Patent

Nos. 7,942,461, 8220,854, and 8,690,215 (dkt. nos. 45-1, 45-2, 45-3)) and three design patents

(U.S. Patent Nos. D652,353, D678,823, and D736,675 (dkt. nos. 45-4, 45-4, 45-6)) (Count I);

Lanham Act trademark infringement and unfair competition claims (Count II); and an unfair

competition claim under New York law based on the underlying trade dress claim (Count III).

Bobcar also accused Aardvark of infringement in the first action based on the same Aardy

vehicles at issue in this case, specifically accusing “an infringing vehicle that jointly promotes the

products and services of both Samsung and T-Mobile.” (Ex. 1 ¶ 124; compare also Ex. 1 ¶¶ 30,

44, 54, 122-24 (Aardvark’s “articles that infringe Bobcar’s patents include Defendant’s ‘Aardy’

promotional vehicles”) with dkt. no. 45 ¶¶ 40-43 (asserting infringement against T-Mobile and

Samsung based only on “‘Aardy’ vehicles supplied by Aardvark” used between 2015 and 2016).)

In fact, as shown below, the photographs that Bobcar used to identify the Aardy vehicles at issue

in this case are literally the same photographs used by Bobcar to identify the accused Aardys from

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the T-Mobile and Samsung campaigns in the 2016 Action:

Accused Aardys from 2016 Action Accused Aardys in this Action

(See 2016 Action, dkt. no. 147-2 at 19, 23 (Ex. 2); dkt nos. 45-8, 45-10; compare also Ex. 2, 147-

2 at 19-24 (showing 14 images of the accused T-Mobile-related Aardy and 5 images of the accused

Samsung-related Aardy), with dkt nos. 45-8, 45-10 (showing the same 14 images and 5 images,

respectively).) Thus, the alleged acts of trade dress infringement in this case stem from the same

Aardy vehicles that were held not to infringe Bobcar’s trade dress in the 2016 Action.

In the 2016 Action, after allowing Bobcar four years to prosecute its case, Judge Oetken

granted summary judgment against Bobcar on the entirety of its trade dress and unfair competition

claims, finding as a matter of law that Bobcar could not establish secondary meaning prior to

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Aardvark’s 2008 entry into the market. (2016 Action, dkt. no. 159, 2020 WL 1673687 (S.D.N.Y.

Apr. 6, 2020).)1 Judge Oetken carefully considered the parties’ evidence and arguments, and his

summary judgment order adjudicated all accused Aardy vehicles to be non-infringing based on his

secondary meaning finding, including the specific Aardy vehicles accused in this case. Id. at *9.

As to the patent claims, Judge Oetken found that the named inventors had not properly

assigned their patent rights to Bobcar and dismissed the patent claims without prejudice for lack

of standing. (2016 Action, dkt. no. 111, 117).2 The court entered final judgment against Bobcar

on April 30, 2020, (2016 Action, dkt. no. 164), which Bobcar appealed to the Federal Circuit.

In its appeal brief, Bobcar pointed to the same Aardvark programs for T-Mobile and

Samsung that it accuses in this case. (Ex. 3 at 11 (discussing “Samsung and T-Mobile 2016

programs”).) Bobcar also raised the same arguments against Judge Oekten’s summary judgment

ruling that it attempts to relitigate here. (Compare id. at 32-48 (arguing Aardvark’s entry into the

market was 2009 not 2008, arguing for legal significance relating to different alleged versions of

Aardys for secondary meaning purposes, and arguing for secondary meaning) with dkt. no. 45

¶¶ 135-159 (same)). For example, Bobcar specifically argued that Judge Oetken’s secondary

meaning analysis should have operated differently for the 2015 and 2016 T-Mobile and Samsung-

related campaigns compared to earlier campaigns:

Some infringements started as late as 2015 and 2016 (Appx 2338). Thus, the
evidentiary calculus was substantially different as to whether there was secondary
meaning “in 2008” shortly after the Bobcar emerged, and in 2015 & 2016 – eight
to nine years after its popularization.

(Ex. 3 at 35 (emphasis in original)). In affirming the judgment, the Federal Circuit necessarily

rejected that argument. Thus, the question of whether a different secondary meaning analysis can

1
Citations in this brief to Judge Oetken’s summary judgment order are to the Westlaw reporter.
2
The 2022 FAC alleges that after the 2016 Action was filed the named inventors executed written
patent assignments to Bobcar. (dkt. no. 45 ¶¶ 18-19.)

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apply to the 2015 and 2016 campaigns that Aardvark conducted for T-Mobile and Samsung has

already been resolved against Bobcar.

On March 5, 2021, the Federal Circuit affirmed the judgment against Bobcar as to all

claims. Bobcar Media, LLC v. Aardvark Event Logistics, Inc., 839 F. App’x 545 (Fed. Cir. Mar.

5, 2021). Nevertheless, on June 30, 2021, Bobcar filed this lawsuit against Aardvark’s customers,

T-Mobile and Samsung, accusing the same Aardy vehicles adjudicated non-infringing in the 2016

Action. (dkt. no. 45 ¶¶ 40-43.) Bobcar also sought certiorari from the Supreme Court, which was

denied on October 4, 2021. 142 S.Ct. 235 (No. 21-158).

ARGUMENT

Defendants move for dismissal under Rule 12(b)(6) based on (1) issue preclusion as to

the trademark and unfair competition claims, (2) failure to state a claim as to the three design

patents, and (3) invalidity under 35 U.S.C. § 101 as to the three utility patents.

I. LEGAL STANDARD UNDER RULE 12(b)(6)

Federal Rule of Civil Procedure 12(b)(6) permits a party to move for dismissal of a complaint

that “fail[s] to state a claim upon which relief can be granted.” Courts evaluate whether a complaint

states a cognizable legal theory in light of Federal Rule of Civil Procedure 8(a), which requires a

“short and plain statement of the claim showing that the pleader is entitled to relief.” See generally

Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007). A

“plaintiff’s obligation to provide the ‘grounds’ of his ‘entitle[ment] to relief’ requires more than

labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do.”

Twombly, 550 U.S. at 555 (alteration in original and citation omitted). “Nor does a complaint suffice

if it tenders ‘naked assertion[s]’ devoid of ‘further factual enhancement.’” Iqbal, 556 U.S. at 678

(alteration in original) (quoting Twombly, 550 U.S. at 557). In deciding a motion to dismiss, a court

may take judicial notice of “pleadings, orders, judgments, and other related documents” of a prior

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action. Rosado-Acha v. Red Bull GmbH, No. 15-cv-7620-KPF, 2016 WL 3636672, at *7

(S.D.N.Y. June 29, 2016); see also Aurelius Capital Master, Inc. v. MBIA Ins. Corp., 695 F. Supp.

2d 68, 75 (S.D.N.Y. 2010).

II. BOBCAR IS PRECLUDED FROM RE-LITIGATING ITS TRADE DRESS

INFRINGEMENT AND UNFAIR COMPETITION CLAIMS

Bobcar’s adverse final judgment on its trade-dress related claims in the 2016 Action

precludes the trademark and unfair competition claims (Counts II and III) that it asserts here.

A. Law of Preclusion

“The preclusive effect of a judgment is defined by claim preclusion and issue preclusion.”

Taylor v. Sturgell, 553 U.S. 880, 892 (2008). “By ‘preclud[ing] parties from contesting matters

that they have had a full and fair opportunity to litigate,’ these two doctrines protect against ‘the

expense and vexation attending multiple lawsuits, conserve[e] judicial resources, and foste[r]

reliance on judicial action by minimizing the possibility of inconsistent decisions.’” Id. (quoting

Montana v. United States, 440 U.S. 147, 153-54 (1979)). The Supreme Court allows for

nonmutual assertion of issue preclusion, including because “[p]ermitting repeated litigation of the

same issue as long as the supply of unrelated defendants holds out reflects either the aura of the

gaming table or a lack of discipline and of disinterestedness on the part of the lower courts, hardly

a worthy or wise basis for fashioning rules of procedure.” Blonder-Tongue Labs., Inc. v. Univ. of

Ill. Foundation, 402 U.S. 313, 329 (1971) (citation and internal quotation marks omitted).

Relevant here,3 issue preclusion forbids re-litigation of previously resolved issues, even if

they arise in the context of a different claim. Id. It is applicable when: “(1) the issues in both

proceedings are identical, (2) the issue in the prior proceeding was actually litigated and actually

3
While Defendants focus on issue preclusion for purposes of this motion, they reserve all rights
as to nonmutual defensive claim preclusion.

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decided, (3) there was full and fair opportunity to litigate in the prior proceeding, and (4) the issue

previously litigated was necessary to support a valid and final judgment on the merits.” Transaero,

Inc. v. La Fuerza Aerea Boliviana, 162 F.3d 724, 731 (2d Cir. 1998) (citation and internal quotation

omitted). “The party seeking preclusion bears the burden of showing the identity of issues, while

the party against whom collateral estoppel is asserted bears the burden of showing the absence of

a full and fair opportunity to litigate.” Russell-Newman, Inc. v. Robeworks, Inc., No. 00-cv-9797-

JFK, 2002 WL 1918325, at *3 (S.D.N.Y. Aug. 19, 2002).

B. The Trade Dress-Related Claims and Issues Decided in the 2016 Action

In the 2016 Action, all trademark and unfair competition claims were resolved against

Bobcar. Judge Oetken granted Aardvark’s motion for summary judgment, finding, “as a matter of

law, Bobcar has not produced sufficient evidence that its product acquired secondary meaning

‘before the infringement began.’” 2020 WL 1673687, at *9 (citation omitted). He further found,

“[b]ecause this Court has already held that Bobcar’s trade dress is not protectable as a matter of

law, its federal- and state-law unfair competition claims are dismissed as well.” Id. This finding

disposed of all claims on the accused Aardy vehicles, including the 2015 and 2016 Aardy vehicles

accused here. Id. (See also Ex. 2 at 147-2, 19-24.) The Federal Circuit affirmed Judge Oetken’s

judgment (839 F. App’x at 545), and Bobcar’s petition for certiorari was denied (142 S.Ct. 235).

Here, Bobcar is asserting claims based on the same trade dress litigated in the 2016 Action.

In fact, Bobcar admits that its two articulations are fundamentally the same, just with the current

one being “somewhat more detailed and specific.” (dkt. no. 45 ¶ 161). This is shown in the table

below, which reproduces Bobcar’s definitions from the two operative complaints. The added color

coding shows how the elements from each alleged trade dress correspond to each other:

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2016 SAC ¶ 15 (Ex. 1) 2022 FAC ¶ 20 (dkt. no. 45)

a promotional vehicle having a compact cab (a) a promotional vehicle having a cab in the
in the front, and a compact showroom in front, and a showroom in the back
back, (b) the cab and showroom each being
compact in size
the showroom having substantially (c) the showroom having substantially
rectangular or square panels on the left and rectangular or square panels on the left and
right sides and rear in the closed position, right sides and rear in the closed position;
the vehicle having a configuration in which (d) the panels having an open position;
those panels are raised above the showroom (f) wherein, in the panels’ open position, the
and above the height of the front cab in an vehicle has a configuration in which the
open position, panels have a vertical component raised
above the display platform and at least
partially above the height of the front cab;
the showroom being open to the public on (e) the showroom having a display platform
three sides when the panels are in the open which is open to the public when the panels
position, providing an open air showroom are in the open position, providing an open air
which is used to promote goods or services showroom which is used to promote goods or
displayed in the showroom, services displayed in the showroom;
(g) the showroom having three sides, a right
side, a left side, and a back side, such that
there are surfaces on three sides for affixation
of goods and/or displays, including physical
displays and/or electronic displays (e.g.,
computer or television displays);
wherein the promotional vehicle includes a (h) wherein the promotional vehicle includes
colorful front cab and colorful back, including a colorful front cab and colorful back,
a colorful coordinated theme extending the including a colorful coordinated theme
entire length of the vehicle from front to back extending the entire length of the vehicle from
and corresponding to the brand or type of the front to back, and corresponding to the
goods or services in the showroom, and brand or type of goods or services in the
showroom;
with the vehicle having advertising or (i) with the vehicle having advertising or
promotional materials on the panels visible in promotional materials on the panels visible in
the open and closed positions and the open and closed positions, and
corresponding to the brand or type of goods corresponding to the brand or type of goods
or services in the showroom. or services being displayed or promoted in the
showroom.

Bobcar’s formulation in the 2022 FAC has nearly complete overlap with the express

language of the trade dress asserted in the 2016 Action. Bobcar’s amended language underlined

in black in element (g) is implicit in having a “showroom” with “three sides” that are “open to the

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public” “when the panels are in the open position.” And whatever exactly Bobcar contends these

“surfaces” are, the same structures that are necessarily present for having a showroom with three

sides and panels that open and close also gives rise to surfaces to which goods and displays could

be affixed. Thus, Bobcar’s wordsmithing does not change the fact that the formulation of its trade

dress in 2022 is substantively identical to the formulation adjudicated in the 2016 Action.

Likewise, the unfair competition claims are substantially identical as between the 2016

SAC and the 2022 FAC. (Compare Ex. 1 ¶¶ 106-131 with dkt. no. 45 ¶¶ 234-260.)

C. Issue Preclusion Bars Bobcar’s Trademark and Unfair Competition Claims

To succeed on a claim for trade dress infringement involving the appearance of a product,

a plaintiff must show that, “(1) the claimed trade dress is non-functional; (2) the claimed trade

dress has secondary meaning; and (3) there is a likelihood of confusion between the plaintiff’s

good and the defendant’s.” 2016 Action, 2020 WL 1673687, at *5 (citation omitted). And “[i]n

order to succeed on a claim of infringement based on secondary meaning, a plaintiff must show

that ‘the mark had acquired secondary meaning before its competitor commenced use of the

mark.’” Plasmart, Inc. v. Wincell Int’l Inc., 442 F. Supp. 2d 53, 60 (S.D.N.Y. 2006) (citation

omitted) (emphasis in original)); see also George & Co., LLC v. Spin Master Corp., 19-cv-4391-

RPK-SJB, 2020 WL 7042665 (S.D.N.Y. Nov. 30, 2020) (dismissing trademark claim under Rule

12(b)(6) based on issue preclusion due to prior finding of no secondary meaning for the asserted

mark prior to entry of the competitor into the market).

Relevant to this motion, in the 2016 Action, Judge Oetken found that Bobcar could not

establish secondary meaning for its alleged trade dress based on the at most year-and-a-half period

between when Bobcar’s vehicles entered the market in 2007 and when its competitor—

Aardvark—entered in 2008. 2016 Action, 2020 WL 1673687, at *9. For this reason, Judge Oetken

found that “Bobcar’s trade dress is not protectable as a matter of law,” and, as a result, dismissed

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Bobcar’s trade dress and unfair competition claims. Id. Bobcar then argued on appeal that Judge

Oetken’s application of the lack of secondary meaning in 2008 to accused infringements from

2015 and 2016 was erroneous. (Ex. 3 at 35.) But the Federal Circuit rejected Bobcar’s arguments

and affirmed Judge Oetken’s judgment, confirming that the finding of no secondary meaning prior

to Aardvark’s 2008 entry in the market applied equally to accused Aardys from the 2015 and 2016

campaigns for T-Mobile and Samsung. In view of these adverse findings from the 2016 Action,

issue preclusion prohibits Bobcar from relitigating its trade dress-related claims in this case.

First, the identical issue of secondary meaning and whether Bobcar has a protectable trade

dress was raised in the 2016 Action. 2016 Action, 2020 WL 1673687 at *7-9. While Bobcar will

undoubtedly want the secondary meaning question adjudicated differently in this case compared

to what Judge Oetken decided in the last case, that is precisely the kind of wasteful collateral attack

that issue preclusion does not allow. In the previous case, Bobcar put at issue the same alleged

2015 and 2016 infringements, and its claims were found wanting based on Aardvark’s 2008 entry

into the market and the consequential lack of secondary meaning in Bobcar’s trade dress. Id.; see

also Plasmart, 442 F. Supp. 2d at 60; George & Co, 2020 WL 7042665, at *8 (secondary meaning

must be established before the “competitor” entered the market). Thus, the same argument that

Bobcar seeks to advance in this case—that its trade dress has secondary meaning—was already

resolved against Bobcar in the prior action.

Second, the issue of secondary meaning was fully litigated and decided against Bobcar in

the 2016 Action. 2016 Action, 2020 WL 1673687 at *7-9.

Third, it is clear from the record that Bobcar had a full and fair opportunity to litigate this

issue, and Bobcar cannot meet its burden to show otherwise. Transaero, 162 F.3d at 731. Bobcar

pursued the 2016 Action for over four years in this district and then on appeal to the Federal Circuit

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and Supreme Court. Id.; see also Stan Lee Media v. Lee, 774 F.3d 1292, 1297-98 (10th Cir. 2014).

Fourth, the issue of whether Bobcar had acquired secondary meaning was the basis of the

court’s summary judgment ruling. 2016 Action, 2020 WL 1673687 at *9.

Finally, Bobcar’s late-breaking attempt to redraft its trade dress to be “somewhat more

detailed and specific,” (dkt. no. 45 ¶ 161), fails for multiple reasons. First, as shown above,

notwithstanding its wordsmithing, the alleged trade dress is substantively identical to the previous

formulation that Bobcar litigated for nearly six years. Second, as courts in this district have made

clear, a trade dress plaintiff “cannot continuously redefine its trade dress in an attempt to avoid

preclusion and flood the courts with litigation until it succeeds.” Russell-Newman, 2002 WL

1918325, at *4. As in Russell-Newman, Bobcar “had the opportunity to define the trade dress,”

and its wordsmithing at most reflects its counsel now desiring a “change of strategy;” not any

legally cognizable change in the underlying facts applicable to issue preclusion. Id. Just as in

Russell-Newman, “to allow this action to proceed would defeat the goals and objectives of the

doctrine of collateral estoppel.” Id. Third, even if the issue here were not exactly identical, that

is not the test. Rather “it is sufficient that ‘the issues presented in [the earlier litigation] are

substantially the same as those presented by [the later] action.’” Zherka v. City of N.Y., 459 F.

App’x 10, 13 (2d Cir. Jan. 19, 2012) (quoting ITT Corp. v. United States, 963 F.2d 561, 564 (2d

Cir. 1992)) (alterations in original and emphasis added). Thus, given the substantive identity of

the trade dress and the complete identity of accused Aardy vehicles at issue in this case with those

accused in the 2016 Action, issue preclusion bars Bobcar’s trade dress-related claims.

III. PLAINTIFF’S FIRST AMENDED COMPLAINT DOES NOT PLAUSIBLY

ALLEGE DESIGN PATENT INFRINGEMENT

Bobcar’s 2022 FAC also fails to raise a plausible allegation of design patent infringement.

First, it provides no evidence of the overall visual impression of the accused Aardy vehicles, a

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prerequisite for stating a plausible claim of design patent infringement. Second, the ornamental

design of the accused vehicles is fundamentally different from the claimed designs in Bobcar’s

patents. Accordingly, the design patent claims should be dismissed under Rule 12(b)(6).

A. Design Patent Law

Unlike utility patents, design patents have only one claim, covering the ornamental design

depicted by the solid lines of the drawings in the patent. See generally Wine Enthusiast, Inc. v.

Vinotemp Int’l Corp., 317 F. Supp. 3d 795, 800-801 (S.D.N.Y. 2018). Design patent claims are

directed to the ornamental, “non-functional aspects of the design as shown in the patent.” OddzOn

Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). Importantly, “design patents

have almost no scope beyond the precise images shown in the drawings.” MRC Innovations, Inc.

v. Hunter Mfg., LLP, 747 F.3d 1326, 1333 n.1 (Fed. Cir. 2014) (citation omitted).

In considering what a design patent covers for purposes of then comparing the claimed

design to an accused product, Federal Circuit “precedent makes clear that all of the ornamental

features illustrated in the figures must be considered in evaluating design patent infringement.

This is because ‘[a] patented design is defined by the drawings in the patent, not just by one feature

of the claimed design.’” Contessa Food Prods., Inc. v. Conagra, Inc., 282 F. 3d 1370, 1378 (Fed.

Cir. 2002), abrogated on other grounds, Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed.

Cir. 2008) (en banc) (emphasis added and citation omitted). Thus, to establish infringement, a

plaintiff must compare the accused devices to the patented design “viewed in its entirety” as shown

in all figures of the design patent. Id.

“In determining whether an accused product infringes a patented design . . . court[s] appl[y]

the ‘ordinary observer’ test.” Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir.

2010) (citation omitted). This test provides: “[I]f in the eye of an ordinary observer, giving such

attention as a purchaser usually gives, two designs are substantially the same, if the resemblance

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is such as to deceive such an observer, inducing him to purchase one supposing it to be the other,

the first one patented is infringed by the other.” Gorham Mfg. Co. v. White, 81 U.S. 511, 528

(1871); see generally Egyptian Goddess, 543 F.3d at 665. This analysis is not “limited to those

features visible during only one phase or portion of the normal use lifetime of an accused

product.” Contessa Food, 282 F.3d at 1380. “Instead, the comparison must extend to all

ornamental features visible during normal use of the product, i.e., beginning after completion of

manufacture or assembly and ending with the ultimate destruction, loss, or disappearance of the

article.” Id. (citation omitted).

Applying these principles, courts have not hesitated to dismiss design patent infringement

claims, where, as here, they do not plausibly state a claim for infringement. Wine Enthusiast, 317

F. Supp. 3d at 800-801; see also Anderson v. Kimberly-Clark Corp., 570 F. App’x 927, 933-34

(Fed. Cir. July 10, 2014) (affirming trial court’s grant of judgment on the pleadings of non-

infringement of a design patent); Buyer’s Direct Inc. v. Dick’s Sporting Goods, Inc., No. 18-cv-

597, 2019 WL 5491548, at *2-3 (E.D.N.C. Oct. 24, 2019) (granting judgment on the pleadings of

non-infringement of design patents where the accused products and asserted patents were

sufficiently distinct); Performance Designed Prods. LLC v. Mad Catz, Inc., No. 16-cv-629, 2016

WL 3552063, at *5-6 (S.D. Cal. June 29, 2016) (same); MSA Prods., Inc. v. Nifty Home Prods.,

Inc., 883 F. Supp. 2d 535, 541 (D.N.J. 2012) (same).

B. The Asserted Design Patents and the Accused Aardy Vehicles

Bobcar alleges infringement of three design patents—U.S. Patent Nos. D652,353 (D’353

Patent); D678,823 (D’823 Patent); D736,675 (D’675 Patent). (dkt. nos. 45-4, 45-5, 45-6.) These

three patents are directed to the “ornamental design for a promotional vehicle, as shown and

described.” (E.g., dkt. no. 45-4, Claim.) The claimed ornamental design is illustrated by the solid

lines included in the 6 figures in each of the D’823 and D’675 Patents and the 7 figures in the

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D’353 Patent. Thus, understanding the visual impression created by each of the claimed designs

involves considering the claimed ornamental portions of the 6 or 7 figures from a particular patent

taken together and in view of how they are set out within the context provided by their figures.

The claimed design from the D’353 Patent includes, for example, ornamental aspects of

the rear paneling and showroom in both the “closed position” and “open position”:

With respect to the D’675 Patent, as shown in Figures 2, 3, and 6, the claimed design is

directed, for example, to the ornamental placement of the side panels after having been moved

upward into the open position (as shown in the solid black lines below). The claim requires,

amongst other things, that the panels be oriented vertically near to the side of the vehicle:

With respect to the D’823 Patent, as shown in Figures 1 and 3, the claimed ornamental

design of the openings to the rear display area requires, for example, rectangular openings of the

same height on all three sides of the back display area:

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By contrast and amongst numerous other differences between the claimed designs and the

accused vehicles, the accused Aardy vehicles have panels that open into “L”-shaped wings, not by

sliding vertically upward. Moreover, contrary to paragraph 52 of the 2022 FAC, no rear opening

to the interior display area is shown and no relevant comparison can be made to the corresponding

portions of the claimed designs from the D’353 and D’823 Patents:

(dkt. nos. 45-8, 45-10.)

C. Bobcar Has Not Plausibly Alleged Infringement, and the Accused Aardy
Vehicles Do Not Infringe

Bobcar fails to allege a plausible claim for relief based on design patent infringement, and

the accused Aardy vehicles do not infringe as a matter of law.4

4
Aardvark brought a motion to dismiss the design patent claims under Rule 12(b)(6), and Judge
Oetken denied that motion. (2016 Action, dkt. no. 21.) However, in defending its pleading,
Bobcar pointed only to isolated perspectives of the Aardy vehicles, and the parties seemed not to

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First, the 2022 FAC is insufficient because it provides no evidence of the overall visual

impression of the accused Aardy vehicles compared to each claimed design “viewed in its

entirety.” Contessa Food, 282 F. 3d at 1378. Specifically, Bobcar acknowledges that for the

D’353 Patent an open-air showroom on three sides is required, (see dkt. no. 45 ¶ 81), but no

opening in the back to the showroom is shown in Exhibits 8 or 10, let alone a rear opening having

the same vertical height as the side openings as shown and claimed in the D’353 Patent. The

D’823 Patent similarly requires a rear opening to the showroom having an equal vertical height to

the side openings, (see dkt. no. 45-5, Figs. 1, 3-5), but again none is shown or plausibly alleged.

Thus, Bobcar does not put forward any allegation that allows for a visual comparison of all claimed

aspects of the D’823 and D’353 Patents to the Aardy vehicles, as required under Federal Circuit

law. Also fatal to its design patent allegations, Bobcar does not plead any top views or direct rear

views of the accused vehicles, and without such allegations no proper comparison can be made to

the ornamental aspects of Figures 3 and 6 of the D’675 and D’353 Patents, which require vertical,

“I”-shaped side panels next to the vehicle. For these reasons alone, Bobcar fails to adequately

plead infringement of the design patents, requiring dismissal under Rule 12(b)(6).

Second, the 2022 FAC should be dismissed because Bobcar’s deficient pleading also shows

that the ornamental design of the accused vehicles is fundamentally different from the claimed

designs in Bobcar’s patents. Amongst the numerous differences shown in the images attached to

Bobcar’s 2022 FAC, the panels of the Aardy vehicle open into L-shaped wings with the top vertical

portion of the panels located substantially away from the side of the accused vehicle. No

reasonable observer, applying the required Federal Circuit test, could find substantial similarity

have apprised the court of the legal requirement that design patent infringement must be based on
the patented design “viewed in its entirety.” Contessa Food, 282 F. 3d at 1378.

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between a design having the claimed I-shaped panels placed next to the vehicle in the open position

as shown in the D’823, D’675, and D’353 Patents, as compared to the Aardys’ fundamentally

different L-shaped, winged-design. Therefore, as a matter of law, there is no infringement and

dismissal is warranted.

IV. THE CLAIMS FOR UTILITY PATENT INFRINGEMENT SHOULD BE

DISMISSED BECAUSE THE PATENTS ARE INVALID UNDER 35 U.S.C. § 101

The claims of the three asserted utility patents are directed to the abstract idea of mobile

sales and advertising using a conventional vehicle. These patents do not purport to improve the

underlying technology for either the claimed vehicles or display components. In fact, the close

similarity between the utility patent claims and Bobcar’s alleged “non-functional,” “ornamental”

trade dress, (dkt. no. 45 ¶ 29-30), confirms that the utility patents are directed to an unpatentable

abstract idea. Indeed, Supreme Court and Federal Circuit precedent applying § 101 does not allow

Bobcar to enlarge the scope of protections for an ornamental design through utility claims that are

merely directed to generic formulations of the underlying design idea.

A. Utility Patent Eligibility under 35 U.S.C. § 101

There are two types of patents—utility and design. The utility patent statute provides:

Whoever invents or discovers any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvement thereof, may obtain
a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. § 101 (emphases added). In contrast to inventions with utility, 35 U.S.C. § 171(a)

provides for “patents for designs,” involving “any new, original and ornamental design for an

article of manufacture.” Helping to ensure that utility patents remain grounded in their

fundamental purpose to promote the progress of science and the useful arts, the Supreme Court

has long recognized that § 101 “contains an important implicit exception: Laws of nature, natural

phenomena, and abstract ideas are not patentable.” Ass’n for Molecular Pathology v. Myriad

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Genetics, Inc., 569 U.S. 576, 589 (2013) (brackets omitted) (quoting Mayo Collab. Servs. v.

Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)). As the Supreme Court explained, “without this

exception, there would be considerable danger that the grant of patents would ‘tie up’ the use of

such tools [i.e., laws of nature, natural phenomena, and abstract ideas] and thereby ‘inhibit future

innovation premised upon them.’” Ass’n for Molecular Pathology, 569 U.S. at

589 (quoting Mayo, 566 U.S. at 73). Thus, under § 101, patent claims must be directed to eligible

subject matter. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014).

“In analyzing whether claims are patent eligible under § 101, [courts] employ the two-

step Mayo/Alice framework.” Yu v. Apple Inc., 1 F.4th 1040, 1043 (Fed. Cir. 2021) (affirming

dismissal on Alice grounds under Rule 12(b)(6)). First, courts “determine whether a patent claim

is directed to an unpatentable law of nature, natural phenomenon, or abstract idea.” Id. Under

step one, courts “look at the focus of the claimed advance over the prior art to determine if the

claim’s character as a whole is directed to excluded subject matter.” Chamberlain Grp. v.

Techtronic Indus. Co., 935 F.3d 1341, 1346 (Fed. Cir. 2019) (citation omitted). Significant to this

inquiry is whether the patent claims “focus on a specific means or method that improves the

relevant technology,” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed.

Cir. 2016), or “effect an improvement in any other technology or technical field,” DDR Holdings,

LLC v. Hotels.com, L.P., 773 F.3d 1245, 1265 (Fed. Cir. 2014) (quoting Alice, 573 U.S. at 225).

If the claims have no such technological improvements, this suggests the claims are directed to

improper abstract ideas and do not pass muster under step one. Chamberlain, 935 F.3d at 1347.

If a patent claim fails step one, then under step two courts “determine whether the claim

nonetheless includes an ‘inventive concept’ sufficient to ‘transform the nature of the claim’ into a

patent-eligible application.” Yu, 1 F.4th at 1043 (quoting Mayo, 566 U.S. at 72, 78). To survive

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this step, the patent claim must supply an “inventive concept” that is “significantly more” than the

abstract idea itself. Alice, 573 U.S. at 221-22; see also CLS Bank v. Alice, 717 F.3d 1269, 1283

(Fed. Cir. 2013) (noting that an inventive concept must be a “genuine human contribution to the

claimed subject matter” that is not a “trivial appendix to the underlying abstract idea”). “Simply

appending conventional steps, specified at a high level of generality, [i]s not enough to supply an

inventive concept.” Alice, 573 U.S. at 222; see also Chamberlain, 935 F.3d at 1348-49.

“Patent eligibility under § 101 is a question of law that may contain underlying issues of

fact.” Chamberlain, 935 F.3d at 1346 (reversing denial of JMOL of invalidity and finding the

asserted claims of the relevant patent invalid under § 101). “In ruling on a 12(b)(6) motion, a court

need not accept as true allegations that contradict matters properly subject to judicial notice or by

exhibit, such as the claims and the patent specification.” Secured Mail Sols. LLC v. Universal

Wilde, Inc., 873 F.3d 905, 913 (Fed. Cir. 2017). Applying these principles, courts in this district

have readily granted motions to dismiss based on § 101. See Jewel Pathway LLC v. Polar Electro

Inc., No. 20-cv-4108 (ER), 2021 WL 3621885 (S.D.N.Y. Aug. 16, 2021) (granting 12(b)(6) motion

to dismiss finding claims invalid under § 101); Island Intellectual Prop., LLC v. Stonecastle Asset

Mgmt. LLC, 463 F. Supp. 3d 490 (S.D.N.Y. 2020) (same); Pers. Beasties Grp. LLC v. Nike, Inc.,

341 F. Supp. 3d 382 (S.D.N.Y. 2018) (same).

B. The Asserted Utility Patents and Bobcar’s First Amended Complaint

The three asserted utility patents—U.S. Patent Nos. 7,942,461 (“the ’461 Patent”),

8,220,854 (“the ’854 Patent), and 8,690,215 (“the ’215 Patent”)—are all entitled “Method and

Apparatus for Selling Consumer Products.” (dkt. nos. 45-1, 45-2, 45-3.) The patents all claim

priority to a provisional application filed on March 7, 2008, and the specification of each patent is

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substantively identical.5

In its 2022 FAC, Bobcar pleads three claims—independent claim 1 of each three patents—

in a single, combined analysis. (dkt. no. 45 ¶¶ 44-55.) Of the three claims asserted in the 2022

FAC, claim 1 of the ’461 Patent reflects the most specific implementation and provides as follows:

An article of manufacture, comprising:

(a) a self-propelled moving vehicle, said self-propelled moving vehicle comprising

a cab and a showroom, said showroom being provided behind said cab;

(b) said showroom comprising a frame and a display platform, said frame and
display platform defining an internal display area;

(c) said self-propelled moving vehicle comprising a series of panels affixed to said
frame, said series of panels comprising a panel on the left side of said showroom, a
panel on the right side of said showroom, and a panel at the rear of said showroom;

(d) said panels having a front side and a back side, wherein advertising is provided
on at least one of said sides of at least one of said panels to promote a product or
service to consumers;

(e) wherein each of said panels is movable, such that said panels have a lowered
position and a raised position;

(f) wherein said series of panels surround said showroom on three sides when said
panels are in said lowered position;

(g) wherein said display platform is open to the air on at least three sides when said
series of panels are all in said raised position, such that a consumer can reach in
from the left side, right side, and rear of said showroom to touch any products
positioned on said display platform; and,

(h) wherein advertising is provided on said front of at least one of said panels when
said panels are in said raised position, such that said panel serves as a vertical
billboard above said display platform and above said roof of said showroom.

As can be seen when considering the above claim in relation to the alleged trade dress, (dkt. no. 45

5
The specification of the ’215 Patent, (dkt. no. 45-3), differs from the ’461 and ’854 Patents in
that it adds 24 figures (i.e., Figs. 4-27), showing additional perspectives of the mobile advertising
vehicle. These figures do not alter the underlying abstract idea or add any inventive concept or
technological improvements compared to the ’461 and ’854 Patents. The patent citations in this
brief are to the figures and column/line numbers of the ’461 Patent, (dkt. no. 45-1).

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¶ 20), and design claimed in the D’353 Patent, the above claim reflects nothing more than an

abstracted recitation of the ornamental design idea underlying the trade dress and design patents.

No technological innovations or improvements to the underlying technology for vehicles or

promotional displays is disclosed or claimed (e.g., no improved hinges, sliding mechanisms, or

any other technological improvements). Claim 1 of the ’854 and ’215 Patents, respectively, are

similarly directed to the idea of mobile sales and advertising using a conventional vehicle and

similarly do not claim any technological improvements.

The specifications of the patents further confirm that the claims are directed to the abstract

idea of mobile sales and advertising. As the Summary of the Invention makes clear, the purported

“inventions include a mobile vehicle for such advertising, promotion, marketing and sales, wherein

the vehicle is self-propelled and self-contained for transport to, and operation in, any locale. A

showroom affixed to or carried by or in the moving vehicle, the vehicle acting as a moving

showroom, mobile kiosk, or mobile store.” (dkt. no. 45-1 at 1:63-2:3.) The patents explain that

their perceived advancement over the prior art is using conventional vehicles with an arrangement

of panels for mobile sales and advertising. (See id. at 2:19-23, 2:25-28, 8:9-11, 9:34-37, 10:8-10,

12:19-22.) In total, the patents spend five columns detailing nine categories of proposed mobile

advertising, from promoting electronics to cable television, cosmetics, mobile banking, insurance,

timeshares, cruises, vacations, and get-out-the-vote efforts. (Id. at 7:63-12:44.)

Significantly, neither the 2022 FAC nor the patents purport to improve the underlying

technology or functioning of the underlying vehicle. To the contrary, the patents expressly state

that the underlying vehicle is “readily commercially available and can be three-wheeled as shown

in FIGS. 1-3 or can be of a more common four-wheeled configuration.” (Id. at 3:30-32 (emphasis

added).) The claims recite no technological improvements or functionality beyond what is

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reflected in the ornamental design of the design patents and alleged trade dress. Specifically, to

the extent there is “functionality” in the utility patents’ implementation of the mobile advertising

concept, it relates to the claimed arrangement of movable panels. But this arrangement of panels

is also reflected in the trade dress—which recites an ornamental arrangement of panels that opens

and closes and which Bobcar specifically asserts is “non-functional.” (dkt. no. 45 ¶ 29 (emphasis

added).) In other words, when stripped of the ornamental design elements and focusing on the

utility and technological improvements needed to give rise to a cognizable inventive concept under

§ 101, the utility patents claims contain no patent eligible subject matter.

C. The Utility Patents Are Directed to An Abstract Idea and Do Not Involve
Any Inventive Concept or Technological Improvement

1. Alice Step One

To determine whether patents are directed to an abstract idea under Alice step one, the

analysis centers on the “the claimed advance over the prior art.” Yu, 1 F.4th at 1043; see also

Chamberlain, 935 F.3d at 1346. As discussed above, the patents are clear that their perceived

advancement over the prior art is adapting known, “readily commercially available” vehicles for

mobile advertising and sales (dkt. no. 45-1 at 3:30-32), stating that the purported invention is a

“system for promoting, marketing, advertising and selling [] products” and permits products to be

“brought directly to consumers, rather than requiring them to come to a retail store.” (Id. at 2:25-

28; see also id. at Abstract, 2:19-23, 8:9-11, 9:34-37, 10:8-10, 12:19-22.)

This conclusion is reinforced by the fact that the patents spend five columns detailing nine

categories of proposed mobile advertising concepts, and no space disclosing any technological

improvements to the underlying vehicle or components for the proposed mobile advertising or

sales concept. (Id. at 7:63-12:44.) In this manner, the patents are directed to the abstract idea of

mobile sales and advertising using “readily commercially available” vehicles and components.

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Consistent with the specification, the claims are equally drawn to this abstract idea. As

discussed above, claim 1 of the ’461 patent6 is directed to a moving vehicle with a showroom

enclosed by movable panels that are capable of displaying advertising or acting as a “billboard.”

No technological innovations or improvements are claimed, and the claims reflect the abstract idea

of mobile sales and advertising using a conventional vehicle having an ornamental arrangement of

known components as a showroom for product promotion or sales. (Id. at Claim 1.)

Tellingly, Bobcar admits that the “utility” patents are directed to a “mobile showroom

design.” (dkt. no. 45 ¶ 108 (emphasis added).) To the extent patentable, such designs would be

protected through design patents, not utility patents. Moreover, the Federal Circuit and numerous

district courts, including in this district, have found patent claims whose purported improvement

over the prior art is advertising or sales to be unpatentable abstract ideas. See Customedia Techs.,

LLC v. Dish Network Corp., 951 F.3d 1359, 1362-1363 (Fed. Cir. 2020); Quantum Stream Inc. v.

Charter Commc’ns, Inc., 309 F. Supp. 3d 171, 184 (S.D.N.Y. 2018) (finding that the patents “are

directed to an ineligible abstract idea: specifically, custom advertising based upon consumer

qualities or other data”); Open Text S.A. v. Alfresco Software Ltd., No. 13-cv-04842-JD, 2014 WL

4684429, *4 (N.D. Cal. Sept. 19, 2014).

A patent holder also cannot “escape[] the reach of the abstract-idea inquiry” by merely

“recit[ing] concrete, tangible components.” In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,

611 (Fed. Cir. 2016). This is especially true where, as here, the physical components reflect a

mere “design.” (dkt. no. 45 ¶¶ 108-110.) The utility patents cover an abstract idea—mobile sales

and advertising—and the claimed conventional components “simply recite conventional actions

6
When claims are “substantially similar and linked to the same abstract idea,” such as here, the
court may use a representative claim for its two-step Alice analysis. See, e.g., Content Extraction
& Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014).

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in a generic way” and “do not purport to improve any underlying technology.” Universal Secure

Registry LLC v. Apple Inc., 10 F.4th 1342, 1349 (Fed. Cir. 2021) (quoting Solutran, Inc. v. Elavon,

Inc., 931 F.3d 1161, 1168 (Fed. Cir. 2019)). This does not pass muster under Alice step one.

2. Alice Step Two

Under Alice step two, a patent claim to an abstract idea will be unpatentable unless there is

an “inventive concept” that is “significantly more” than the abstract idea itself. Alice, 573 U.S. at

217-18. As the Federal Circuit has repeatedly recognized, reciting “conventional, routine and well

understood applications in the art” does not supply an “inventive concept.” Ariosa Diagnostics,

Inc. v. Sequenom, Inc., 788 F.3d 1371, 1378 (Fed. Cir. 2015); see also Yu, 1 F.4th at 1045;

Chamberlain, 935 F.3d at 1348-49; In re TLI Commc’ns , 823 F.3d at 615 (concluding patent

claims ineligible at step two in part because “the recited physical components behave exactly as

expected according to their ordinary use”).

Here, the patent claims merely place the abstract idea of mobile advertising and sales into

an ornamental arrangement using a conventional vehicle and display-related components or

paneling. As in Yu, Chamberlain, and TLI, use of conventional components or machinery

according to their ordinary and expected uses cannot, as a matter of law, transform this abstract

idea into patent eligible subject matter.

None of the allegations in the 2022 FAC change the result. For example, statements such

as the “combination of features in Bobcar’s machines provide improvements over prior vehicles”

(dkt. no. 45 ¶ 100; see also id. ¶¶ 118, 120) are “threadbare recitals” and “mere conclusory

statements” that “do not suffice.” Iqbal, 556 U.S. at 678. Likewise, the statements that the PTO

granted the patents over the prior art before the PTO, (dkt. no. 45 ¶¶ 102-107), and found the

vehicles to be novel and non-obvious over that limited record, (id. ¶¶ 114-116), are directed to the

novelty and nonobvious requirements of the Patent Statute (§ 102 and § 103, respectively), not

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 Case 1:21-cv-05685-AKH-OTW Document 53 Filed 03/15/22 Page 31 of 32

patent ineligibility under § 101. Chamberlain, 935 F.3d at 1348-49. Finally, the various

statements that the utility patents do not preempt others from advertising using other vehicles do

not save them. (dkt. no. 45 ¶¶ 121-129.) “While preemption may signal patent ineligible subject

matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa

Diagnostics, 788 F.3d at 1379.

Nowhere does the 2022 FAC describe how the claims are directed to a technological

improvement. To the contrary, the 2022 FAC admits that “Bobcar modified the backs of existing

vehicles to create Bobcar’s unique mobile showroom design.” (dkt. no. 45 ¶ 108 (emphasis

added); see also id. ¶¶ 109, 110.) Such designs, however, are not the proper subject of utility

patents under § 101; the utility patents are, thus, invalid under § 101 and should be dismissed.

CONCLUSION

Because (1) Bobcar’s trademark and unfair competition claims are precluded, (2) Bobcar

cannot plausibly allege design patent infringement, and (3) the utility patents are invalid under

§101, Defendants respectfully request that Bobcar’s Amended Complaint be dismissed.

Dated: March 15, 2022 _/S/ Christopher J. Burrell__________

FAEGRE DRINKER BIDDLE & REATH LLP
Christopher J. Burrell (admitted pro hac vice)
Brianna Lynn Silverstein (admitted pro hac vice)
1500 K Street NW, Suite 1100
Washington, DC 20005
Phone: (202) 842 8800
Facsimile: (202) 842 8465
[email protected]
[email protected]

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 Case 1:21-cv-05685-AKH-OTW Document 53 Filed 03/15/22 Page 32 of 32

Danielle S. Rosenthal (DR1128)

1177 Avenue of the Americas, 41st Floor
New York, New York 10036
Phone: (212) 248 3140
Facsimile: (202) 248 3141
[email protected]

Timothy E. Grimsrud (admitted pro hac vice)

2200 Wells Fargo Center
90 South 7th Street
Minneapolis, MN 55402
Phone: (612) 766 7000
Facsimile: (612) 766 1600
[email protected]
Counsel for Defendant Samsung Electronics
America, Inc.

Dated: March 15, 2022 _/S/ Martin E. Gilmore________

PERKINS COIE LLP
Martin E. Gilmore
1155 Avenue of the Americas
22nd Floor
New York, NY 10036-2711
Phone: (212) 261 6814
Facsimile: (212) 977 1649
[email protected]

James S. Miller III

1201 Third Ave., Suite 4900
Seattle, WA 98101
Phone: (206) 359-8584
Facsimile: (206) 359-9584
[email protected]
Counsel for Defendant T-Mobile USA, Inc.

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