United States District Court, C.D. California, Southern Division
ORDER RE: MOTION FOR RULE 11 SANCTIONS ;
DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT ;
PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT 
O. CARTER UNITED STATES DISTRICT JUDGE
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).
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
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.
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.
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.
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.
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.
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.
November 27, 2015, ISpeaker filed an Answer and Counterclaims
(Dkt. 30). ISpeaker asserts the same three counterclaims as
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).
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).
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).
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).
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).
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
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.
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
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
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