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Spigen Korea Co. Ltd. v. Ispeak Co., Ltd.

United States District Court, C.D. California, Southern Division

July 22, 2016

SPIGEN KOREA CO., LTD., Plaintiff,
v.
ISPEAK CO., LTD., ET AL. Defendants.

          ORDER RE: MOTION FOR RULE 11 SANCTIONS [21]; DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT [41]; PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT [43]

          DAVID O. CARTER UNITED STATES DISTRICT JUDGE

         Before the Court are Spigen Korea Co., Ltd.’s (“Spigen” or “Plaintiff”) Motion for Summary Judgment (“Plaintiff’s Motion for Summary Judgment”) (Dkt. 43), ISpeak Co., Ltd. (“ISpeak” or “ISpeaker”) and Verus U.S.A., LLC’s (“Verus”) (collectively, “Defendants”) Motion for Summary Judgment (“Defendants’ Motion for Summary Judgment”) (Dkt. 41), and Verus’s Motion for Sanctions (“Sanctions Motion”) (Dkt. 21).

         I. Background

         A. Facts[1]

         This is a patent infringement case in which Spigen alleges Defendants ISpeak and Verus infringed and are infringing Spigen’s U.S. Patent No. 9, 049, 283 (“‘283 Patent”).

         Spigen is the owner of all right, title, and interest in the ‘283 Patent. Plaintiff’s Statement of Undisputed Facts (“Pl.’s SUF”) (Dkt. 43-3) No. 1. The ‘283 Patent covers a case for an electronic device that has a storage compartment to hold personal items, such as credit cards and identification cards. Id. No. 2. The case described in the ‘283 Patent includes three main components: “a soft protective case to cover the electronic device . . . a hard protective frame configured to removably mount over the soft protective case; and a cover.” ‘283 Patent at Col. 3:37–40.

         Claims 1 and 16 of the ‘283 Patent are independent claims; the remaining claims are dependent on either claim 1 or claim 16. Defendants’ Statement of Undisputed Facts (“Defs.’ SUF”) (Dkt. 41-2) No. 45. Claim 1 of the ‘283 Patent provides:

A case, having a storage compartment, for an electronic device, comprising: a soft protective case which comprises a back panel to cover a back portion of the electronic device, a raised wall formed on a bottom surface of the back panel to form the storage compartment, and a side wall extending from a top surface of the back panel along edges of the back panel for significantly covering a side portion of the electronic device; a hard protective frame, configured to removably mount over the soft protective case wherein the hard protective frame comprises grooves; and a cover which includes rails adapted to mate with and to be slidably mounted on the grooves so that the cover slides along the grooves to open and close the storage compartment,
wherein the soft protective case significantly covers a back portion of the electronic device with the top surface of the back panel and a side portion of the electronic device with the side wall of the soft protective case, wherein the soft protective case is sufficiently flexible to accept insertion of the electronic device therein and sufficiently rigid to securely retain the inserted electronic device.

‘283 Patent at Col. 6:56–7:12.

         Claim 16 includes a “sliding means for sliding the cover forward and backward with respect to the hard protective frame.” Id. at Col. 8:26–27. Claim 17 further provides: “[t]he case of claim 16, wherein the sliding means comprises a pair of grooves formed on the hard protective frame and a pair of rails formed on the cover wherein the rails are configured to mate with and to be slidably mounted on the grooves.” Id. at Col. 8:28–32.

         Plaintiffs accuse Defendants’ products of infringing the ‘283 Patent; the accused products specifically include Damda Slide for iPhone 6/6, Damda Slide for iPhone 6/6S Plus, Damda Slide for Galaxy Note 4, Damda Slide for Galaxy Note 5, Damda Slide for Galaxy S6, Damda Slide for Galaxy S6 Edge, and Damda Slide for Galaxy S6 Edge Plus. Defs.’ SUF No. 4. ISpeaker developed and manufactured the accused products, continues to manufacture the accused products, and sold and sells the accused products to Defendant Verus. Id. No. 5–7. Verus is the only distributer in the USA who purchases the accused products from ISpeaker. Id. No. 8. Verus continues to sell the accused products in the United States. Id. No. 57.

         B. Procedural History

         Plaintiff initiated this lawsuit on July 1, 2015. Complaint (“Compl.”) (Dkt. 1). In the Complaint, Plaintiff alleges a single claim of patent infringement. See Id . ¶¶ 9–13. Plaintiff seeks the following relief in its Complaint:

For a judgment declaring Defendants have infringed one or more claims of the ‘283 Patent of SPIGEN;
For a judgment awarding SPIGEN compensatory damages as a result of Defendants’ infringement of the ‘283 Patent, together with interest and costs, and in no event less than a reasonable royalty;
For a judgment declaring that Defendants’ infringement of the ‘283 Patent has been willful and deliberate;
For a judgment awarding SPIGEN treble damages and pre-judgment interest under 35 U.S.C. § 284 as a result of Defendants’ willful and deliberate infringement of the ‘283 Patent; For a judgment declaring that this case is exceptional and awarding SPIGEN its expenses, costs, and attorney’s fees in accordance with 35 U.S.C. §§ 284 and 285 and Rule 54(d) of the Federal Rules of Civil Procedure;
For a grant of a permanent injunction pursuant to 35 U.S.C. § 283, enjoining the Defendants from further acts of infringement; For such other and further relief as the Court deems just and proper.

Compl. at 3–4.

         On October 7, 2015, Verus filed an Amended Answer and Counterclaims (Dkt. 20). Verus asserts the following counterclaims: (1) declaratory judgment of non-infringement of the ‘283 Patent; (2) declaratory judgment of invalidity of the ‘283 Patent; and (3) declaratory judgment of unenforceability of the ‘283 Patent. Id. at 6–7.

         On November 27, 2015, ISpeaker filed an Answer and Counterclaims (Dkt. 30). ISpeaker asserts the same three counterclaims as Verus.

         Verus filed its Sanctions Motion on October 13, 2015. In the Sanctions Motion, Verus argues Plaintiff obtained the patent-in-suit by engaging in inequitable conduct. Sanctions Mot. at 2. Thus, Verus asks the Court to award sanctions pursuant to Federal Rule of Civil Procedure 11. Id. The parties appeared for a Scheduling Conference on November 30, 2015, at which they agreed the Sanctions Motion should be considered together with the instant Cross Motions for Summary Judgment. See Minutes of Scheduling Conference (Dkt. 31).

         Plaintiff filed its Motion for Summary Judgment on May 16, 2016. Defendants opposed on May 23, 2016 (Dkt. 49), and Plaintiff replied on May 27, 2016 (Dkt. 55).

         Defendants also filed their Motion for Summary Judgment on May 16, 2016. Plaintiff opposed on May 23, 2016 (Dkt. 52), and Defendants replied on May 31, 2016 (Dkt. 57).

         The Court held a hearing on the motions on July 13 and July 14, 2016. See Minutes of Motion Hearing (Dkt. 63); see Minutes of Motion Hearing (Dkt. 64).

         II. Legal Standard

         Summary judgment is proper if “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). Summary judgment is to be granted cautiously, with due respect for a party’s right to have its factually grounded claims and defenses tried to a jury. Celotex Corp. v. Catrett, 477 U.S. 317, 327 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). A court must view the facts and draw inferences in the manner most favorable to the non-moving party. United States v. Diebold, Inc., 369 U.S. 654, 655 (1992); Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1161 (9th Cir. 1992). The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact for trial, but it need not disprove the other party’s case. Celotex, 477 U.S. at 323. When the non-moving party bears the burden of proving the claim or defense, the moving party can meet its burden by pointing out that the non-moving party has failed to present any genuine issue of material fact as to an essential element of its case. See Musick v. Burke, 913 F.2d 1390, 1394 (9th Cir. 1990).

         Once the moving party meets its burden, the burden shifts to the opposing party to set out specific material facts showing a genuine issue for trial. See Liberty Lobby, 477 U.S. at 248- 49. A “material fact” is one which “might affect the outcome of the suit under the governing law . . . .” Id. at 248. A party cannot create a genuine issue of material fact simply by making assertions in its legal papers. S.A. Empresa de Viacao Aerea Rio Grandense v. Walter Kidde & Co., Inc., 690 F.2d 1235, 1238 (9th Cir. 1982). Rather, there must be specific, admissible evidence identifying the basis for the dispute. Id. The court need not “comb the record” looking for other evidence; it is only required to consider evidence set forth in the moving and opposing papers and the portions of the record cited therein. Fed.R.Civ.P. 56(c)(3); Carmen v. S.F. Unified Sch. Dist., 237 F.3d 1026, 1029 (9th Cir. 2001). The Supreme Court has held that “[t]he mere existence of a scintilla of evidence . . . will be insufficient; there must be evidence on which the jury could reasonably find for [the opposing party].” Liberty Lobby, 477 U.S. at 252.

         III. Discussion

         The parties move for summary judgment on a number of issues in their respective motions. Defendants first request construction of certain claim language; seek summary judgment in their favor on the issue of infringement; and ask the Court to find the asserted claims of the ‘283 Patent invalid on obviousness grounds under 35 U.S.C. § 103. See generally Defs.’ SJ Mot.

         Plaintiff likewise seeks summary judgment in its favor on infringement and obviousness. Pl.’s SJ Mot. at 8–20. Plaintiff also seeks summary judgment with respect to the inequitable conduct claim; specifically, Plaintiff “seeks a declaratory judgment of no Inequitable Conduct because Spigen did not withhold material information from the USPTO during the prosecution of the ‘283 Patent and Spigen did not intend to deceive the USPTO.” Id. at 21 (citation omitted).

         A. Claim Construction

         As mentioned above, Claim 1 includes a “hard protective frame, configured to removably mount over the soft protective case wherein the hard protective frame comprises grooves; and a cover which includes rails adapted to mate with and to be slidably mounted on the grooves so that the cover slides along the grooves to open and close the storage compartment.” ‘283 Patent at Col. 6:65–7:4. Both parties have proposed construction of the term “grooves.” The Court will also construe the term “sliding means, ” which is found in Claim 16.[2]

         1. Legal Standard

         “It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Claim construction “begins with the claim language itself.” Id. Claim terms are generally given “their ordinary and customary meaning, ” which is “the meaning that the term would have to a person of ordinary skill in the art.” Id. at 1312–13 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). However, the terms must be read in the context of the entire patent. Phillips, 415 F.3d at 1314. In interpreting the claim, the court focuses primarily on the intrinsic evidence ...


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