Catalyst v. Elago - MSJ Brief

Case 3:22-cv-00536-LL-MDD Document 44-1 Filed 04/19/23 PageID.
373 Page 1 of 24
1 Sheila Mojtehedi, SBN 313002

2 [email protected]
806 E Avenida Pico, Ste I MB 291
3 San Clemente, CA 92673
Telephone: (323) 412-0472
4 Fax: (323) 403-4170
5 Travis P. Ribar (Pro Hac Vice)
6 [email protected]
Paratus Law Group, PLLC
7 1765 Greensboro Station Pl., #320
Tysons Corner, Virginia 22102
8 Telephone: (571) 313-7556
9
Attorneys for Defendants and Counterclaimants
10 Elyel Corporation and Elago Co., Ltd
11 UNITED STATES DISTRICT COURT
12 SOUTHERN DISTRICT OF CALIFORNIA
13
14 CATALYST LIFESTYLE CASE NO. 3:22-cv-00536-LL-MDD
LIMITED,
15 Hon. Linda Lopez
Plaintiff, Hon. Mitchell D. Dembin
16
vs.
17 DEFENDANTS ELYEL
ELAGO CO., LTD; and ELYEL CORPORATION AND
18 CORPORATION, ELAGO CO., LTD’S MEMORANDUM
OF POINTS AND AUTHORITIES IN
19 Defendants. SUPPORT OF MOTION FOR
20 PARTIAL SUMMARY JUDGMENT
21 Complaint Filed: April 18, 2022

22 Trial Date: None Yet Assigned
23 Hearing Date: May 24, 2023

24
PER CHAMBERS RULES, NO ORAL
25 ARGUMENT UNLESS SEPARATELY
26 ORDERED BY THE COURT
27
28 -1-
DEFENDANTS MEMORANDUM OF POINTS AND AUTHORITIES ISO

MOTION FOR PARTIAL SUMMARY JUDGMENT
Case 3:22-cv-00536-LL-MDD Document 44-1 Filed 04/19/23 PageID.374 Page 2 of 24
1 TABLE OF CONTENTS
2 I. INTRODUCTION........................................................................................... 1
3 II. STATEMENT OF FACTS ............................................................................. 1
4 a. The ‘617 Patent ............................................................................................ 1
5 b. The Accused Products ................................................................................. 2
6 c. Patents Applicable To The Accused Products ............................................. 3
7 III. APPLICABLE LEGAL PRINCIPLES ........................................................... 3
8 a. Legal Standard For Summary Judgement ................................................... 3
9 b. Legal Standard For Design Patent Infringement ......................................... 4
10 c. Legal Standard For Summary Judgment Of Patent Non-Infringement ....... 5
11 IV. ARGUMENT .................................................................................................. 6
12 a. The Accused Products Are Distinct From The Figures In The ‘617 Patent
13 As A Matter Of Law .................................................................................... 6
14 i. The Design Claimed in the ‘617 Patent .................................................. 9
15 ii. The Many Differences Between AI-1 and the ‘617 Patent ................... 10
16 iii. The Many Differences Between AI-2 and the ‘617 Patent ................... 11
17 iv. The Many Differences Between AI-3 and the ‘617 Patent ................... 12
18 v. The Many Differences Between AI-4 and the ‘617 Patent ................... 13
19 b. The Accused Products Are Clearly Different Than The Patented Design
20 When Prior Art Is Considered ................................................................... 15
21 V. CONCLUSION ............................................................................................. 20
22
23
24
25
26
27
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MOTION FOR PARTIAL SUMMARY JUDGMENT
1 TABLE OF AUTHORITIES
2 Cases
3 Amini Innovation Corp. v. Anthony California, Inc.,
4 439 F. 3d 1365 (Fed. Cir. 2006) ....................................................................... 4, 9
5 Anderson v. Liberty Lobby, Inc.,
6 477 U.S. 242 (1986) ............................................................................................. 4
7 Columbia Sportswear NA v. Seirus Innovative Accessories, Inc.,
8 942 F.3d 1119 (Fed. Cir. 2019) ...................................................................... 4, 11
9 Egyptian Goddess v. Swisa,
10 543 F.3d 665 (Fed. Cir. 2008) .............................................................. 5, 6, 15, 16
11 Exigent Tech. v. Atrana Sols., Inc.,
12 442 F.3d 1301 (Fed. Cir. 2006) ............................................................................ 5
13 Golden Eye Media United States, Inc. v. Trolly Bags UK, Ltd.,
14 525 F. Supp. 3d 1145 (S.D. Cal. 2021) .......................................................... 5, 16
15 Gorham Co. v. White,
16 81 U.S. 511 (1871). .......................................................................................... 4, 5
17 Hansen v. United States,
18 7 F. 3d 137 (9th Cir. 1993) ................................................................................... 4
19 Harel v. K.K. Int’l Trading Corp.,
20 994 F. Supp. 2d 276 (E.D.N.Y. 2014).............................................................. 7, 8
21 High Point Design LLC v. Buyer’s Direct, Inc.,
22 No. 1:11-cv-04530-KBF, 2014 U.S. Dist. LEXIS 41290 (S.D.N.Y., Mar. 26,
23 2014) aff’d 621 Fed. Appx. 632 (Fed. Cir. 2015) .......................................... 6, 14
24 Keystone Retaining Wal Sys., Inc. v. Westrock, Inc.,
25 997 F.2d 1444 (Fed. Cir. 1995) ............................................................................ 4
26 Lanard Toys Ltd. v. Dolgencorp LLC,
27 958 F.3d 1337 (Fed. Cir. 2020) ...................................................................... 5, 18
28

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MOTION FOR PARTIAL SUMMARY ADJUDICATION
1 Marks v. Dept. of Justice,

2 578 F.2d 261 (9th Cir. 1978) ................................................................................ 4
3 Read Corp. v. Portec, Inc.,
4 970 F.2d 816 (Fed. Cir. 1992) .............................................................................. 9
5 Seirus Innovative Accessories, Inc. v. Cabela’s Inc.,
6 827 F. Supp. 2d 1150 (S.D. Cal. 2011) .................................................. 15, 16, 19
7 Super-Sparkly Safety Stuff, LLC v. Skyline USA, Inc., AKA Guard Dog Security,
8 No. 3:18-cv-00587-N, 2019 U.S. Dist. LEXIS 191338 (N.D. Tex. Nov. 4,
9 2019), aff’d 836 Fed. Appx. 895 (Fed. Cir. 2020) ....................................... 6, 8, 9
10 Warner-Lambert Co. v. Teva Pharms. USA, Inc.,
11 418 F.3d 1326 (Fed. Cir. 2005) ............................................................................ 5
12 Weber-Stephen Prods. LLC v. Sears Holding Corp.,
13 13C01686, 2015 U.S. Dist. LEXIS 170989 (N.D. Ill., Dec. 22, 2015).............. 16
14 Wing Shing Prods. (BVI) Co. v. Sunbeam Prods.,
15 665 F. Supp. 2d 357 (S.D.N.Y. 2009) ................................................................ 15
16
17 Statutes
18 35 U.S.C. § 102(a)(2) ........................................................................................... 14
19 35 U.S.C. § 103 .................................................................................................... 14
20 35 U.S.C. § 171 ...................................................................................................... 4
21 35 U.S.C. § 289 ...................................................................................................... 4
22 Fed. R. Civ. P. 56(a) ........................................................................................... 3, 4
23
24
25
26
27
28

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1 I. INTRODUCTION
2 This is a design patent and trademark infringement lawsuit concerning
3 fitted, waterproof sleeves for Apple AirPods cases. Plaintiff Catalyst Lifestyle
4 Limited is identified as the applicant and assignee of United States Patent No.
5 D794,617, the only patent at issue. ECF 1-2, at 1. Through this motion,
6 Defendants Elago Co., Ltd and Elyel Corporation seek summary judgment of the
7 First Claim for Relief for patent infringement. ECF 1 at 13. Based on the
8 undisputed material facts, no reasonable fact finder could return a verdict in favor
9 of Plaintiff on infringement, as no hypothetical ordinary observer would find that
10 the patented design and the four accused products are substantially similar.
11 II. STATEMENT OF FACTS
12 a. The ‘617 Patent
13 United States Patent No. D794,617 (“the ‘617 Patent”) is a design patent
14 entitled, “Sleeve for Electronic Device,” and was issued on August 15, 2017.
15 Separate Statement of Undisputed Material Facts (“SS”), Undisputed Material
16 Fact Nos. (“No.” or “Nos.”) 1, 2. The ‘617 Patent includes only one claim for
17 “[t]he ornamental design for a sleeve for electronic device, as shown and
18 described,” and Figures 1-10. SS Nos. 3-14.
19
20 Figures 1-10 of the ‘617 Patent
21
22
23
24
25
26
27
28

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1 Figures 1-10 of the ‘617 Patent

2
3
4
5
6
7
8
9
10 SS Nos. 5-14.
11 b. The Accused Products
12 Defendant Elago Co., Ltd (“Elago”) designs award-winning technology
13 accessories. See ECF 29 at 18 ¶ 2. Defendant Elyel Corporation (“Elyel”) is the
14 exclusive United States distributor for Elago. Id. at 7 ¶ 41. Plaintiff alleges four
15 sleeves for Apple AirPods cases designed by Elago and sold by Elyel in the
16 United States infringe the ‘617 Patent (hereafter the “Accused Products”), SS No.
17 15, certain images of which are identified below.
18
19 AirPods Waterproof Hang Case (“AI-1”) AirPods Pro Waterproof Case (“AI-2”)
20
21
22
23
24
25
26
27
28

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1 Waterproof Hang Active Case for Waterproof Case Compatible with

2 AirPods 1&2 (“AI-3”) AirPods 1&2 (“AI-4”)
3
4
5
6
7
8
9
10
11
12
13 SS Nos. 16-19.
14 c. Patents Applicable To The Accused Products
15 Elago owns design patents for AI-1, AI-2, and AI-4. Declaration of Sheila
16 Mojtehedi (“Mojtehedi Decl.”) ¶¶ 10-12, Exs. 9-11. U.S. Patent Nos. D872,723
17 (applicable to AI-1), D881,867 (applicable to AI-2), and D872,724 (applicable to
18 AI-4) (hereafter “D’723,” “D’867,” and “D’724”) were issued to Elago after
19 multiple Examiners at the United States Patent and Trademark Office (hereafter,
20 “USPTO”) compared the figures therein to the design in the ‘617 Patent. Id.
21 Elago applied for D’723 and D’724 in 2018, and the USPTO granted these
22 patents in 2020. Id ¶ 10, 11, Exs. 9, 10. Elago applied for D’867 in 2019 and
23 was granted this patent in 2020. Id. ¶ 12, Ex. 11.
24 III. APPLICABLE LEGAL PRINCIPLES
25 a. Legal Standard For Summary Judgement
26 A party may move for summary judgment, identifying each claim or
27 defense – or the part of each claim or defense – on which summary judgment is
28 sought. Fed. R. Civ. P. 56(a). Summary judgment should be granted when there

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1 is no genuine issue of material fact and the moving party is entitled to judgment
2 as a matter of law. Id. A fact is material when, under the governing substantive
3 law, it could affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477
4 U.S. 242, 248 (1986). A dispute is genuine if a reasonable jury could return a
5 verdict for the nonmoving party. Anderson, 477 U.S. at 248.
6 The moving party has the burden of demonstrating the absence of a
7 genuine issue of fact for trial. Anderson, 477 U.S. at 256. If the moving party
8 satisfies this burden, the burden shifts and the party opposing the motion must
9 designate specific facts showing that there remains a genuine issue for trial. Id.
10 at 257. Conclusory allegations unsupported by factual data, however, are
11 insufficient to create a triable issue of fact to preclude summary judgment.
12 Hansen v. United States, 7 F. 3d 137, 138 (9th Cir. 1993) (citing Marks v. Dept.
13 of Justice, 578 F.2d 261, 263 (9th Cir. 1978)).
14 b. Legal Standard For Design Patent Infringement
15 A design patent may issue to the inventor of “any new, original and
16 ornamental design.” 35 U.S.C. § 171. Design patents protect only the non-
17 functional aspects of an ornamental design as shown in the patent document.
18 Amini Innovation Corp. v. Anthony California, Inc., 439 F. 3d 1365, 1370 (Fed.
19 Cir. 2006) (citing Keystone Retaining Wal Sys., Inc. v. Westrock, Inc., 997 F.2d
20 1444, 1450 (Fed. Cir. 1995)). Design patent infringement occurs when a party,
21 “without license of the owner, applies the patented design, or any colorable
22 imitation thereof, to any article of manufacture for the purpose of sale, or sells or
23 exposes for sale any article of manufacture to which such design or colorable
24 imitation has been applied.” 35 U.S.C. § 289.
25 “The ‘ordinary observer’ test is the sole test for determining whether a
26 design patent has been infringed” and “originates from the Supreme Court’s
27 Gorham decision.” Columbia Sportswear NA v. Seirus Innovative Accessories,
28 Inc., 942 F.3d 1119, 1129 (Fed. Cir. 2019) (citing Egyptian Goddess, Inc. v.

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1 Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008)). “If in the eye of an ordinary
2 observer, giving such attention as a purchaser usually gives, two designs are
3 substantially the same, if the resemblance is such as to deceive such an observer,
4 inducing him to purchase one supposed it to be the other, the first one patented is
5 infringed by the other.” Gorham Co. v. White, 81 U.S. 511, 528 (1871). To find
6 design patent infringement, the ordinary observer test requires the finder of fact
7 to conclude that the similarities of the overall designs of the claimed design
8 patent and accused product would cause a purchaser to obtain one product
9 believing it to be the other. Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d
10 1337, 1343 (Fed. Cir. 2020).
11 c. Legal Standard For Summary Judgment Of Patent Non-
12 Infringement
13 In patent cases, the party asserting infringement, which in this case is
14 Plaintiff, bears the burden at trial of proving infringement by a preponderance of
15 the evidence. Warner-Lambert Co. v. Teva Pharms. USA, Inc., 418 F.3d 1326,
16 1342 (Fed. Cir. 2005). A party moving for summary judgment of
17 noninfringement, however, does “not have to support its motion with evidence of
18 non-infringement.” Exigent Tech. v. Atrana Sols., Inc., 442 F.3d 1301, 1308
19 (Fed. Cir. 2006) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 321 (1986)).
20 Instead, “nothing more is required than the filing of a summary judgment motion
21 stating that the patentee had no evidence of infringement and pointing to the
22 specific ways in which accused systems did not meet the claim limitations.” Id. at
23 1309. Accordingly, the issue of design patent non-infringement is amenable to
24 summary judgment due to the narrower scope of proof required. See Golden Eye
25 Media United States, Inc. v. Trolly Bags UK, Ltd., 525 F. Supp. 3d 1145, 1211
26 (S.D. Cal. 2021) (Benitez, J.) (citing sources).
27
28

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1 IV. ARGUMENT
2 The Court should find non-infringement as a matter of law based on a side-
3 by-side comparison of the ten Figures in the ‘617 Patent and the Accused
4 Products alone. Even if the Court continues to the second step of the analysis,
5 comparing the prior art and the Accused Products further confirms that a finding
6 of non-infringement as a matter of law is appropriate here.
7 a. The Accused Products Are Distinct From The Figures In The
8 ‘617 Patent As A Matter Of Law
9 After a design patent has been construed1 based on the figures therein,
10 Egyptian Goddess, 543 F.3d at 679, the next step is to compare the patented and
11 accused design for overall visual similarity; if the accused and patented designs
12 are “sufficiently distinct” in overall design, there is no infringement as a matter
13 of law. Egyptian Goddess, 543 F.3d at 678. Where, as here, the accused
14 products appear “plainly dissimilar” from the patented design, there is no need to
15 go to the second step, which is a review of the prior art. See, e.g., High Point
16 Design LLC v. Buyer’s Direct, Inc., No. 1:11-cv-04530-KBF, 2014 U.S. Dist.
17 LEXIS 41290 (S.D.N.Y., Mar. 26, 2014) aff’d 621 Fed. Appx. 632 (Fed. Cir.
18 2015) (affirming dismissal for non-infringement without reviewing prior art); see
19 also, Super-Sparkly Safety Stuff, LLC v. Skyline USA, Inc., AKA Guard Dog
20 Security, No. 3:18-cv-00587-N, 2019 U.S. Dist. LEXIS 191338 (N.D. Tex. Nov.
21 4, 2019), aff’d 836 Fed. Appx. 895 (Fed. Cir. 2020) (same).
22 With relatively simple designs, differences in the claimed and accused
23 designs will be more significant to the hypothetical ordinary observer.
24 Accordingly, in such cases, courts have granted summary judgment based on a
25 mere visual comparison of the patented design and the accused product. See,
26
27 1
The Claim Construction Hearing is scheduled for May 30, 2023, at 10:00 am.
28 ECF 19 at 2. As of the filing of this Motion, the parties have only submitted their
opening claim construction briefs. ECF 40, 41.

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1 e.g., Harel v. K.K. Int’l Trading Corp., 994 F. Supp. 2d 276, 279 (E.D.N.Y.
2 2014) (citing sources) (hereafter, “Harel”). In these cases, some examples of
3 which are highlighted below, the consistent principle is that high-level
4 similarities alone are insufficient for the plaintiff to survive summary judgment
5 on the issue of infringement.
6 In Harel, the district court granted summary judgment and found non-
7 infringement in a case involving two lighters with the same shape and overall
8 design, but with different ornamental features. 944 F. Supp. At 293. The
9 comparison there was as follows:
10
11
12
13
14
15
16
17 Id. at 281, 283. The court rejected the Plaintiff’s argument that the outline and
18 profile of the two lighter designs were the same, observing “[t]he fact of the
19 matter is these kinds of lighters may and most likely will continue to have very
20 similar or ‘the same’ outline and profile because they are all rectangular lighters.”
21 Id. at 283. Further, “[t]he fact that the accused and patented designs have the
22 same or similar shape is not sufficient to demonstrate that an ordinary observer
23 would confuse the two products, especially where there are other unmistakable
24 differences in design.” Id.
25 Focusing on the images on the left, the court observed the wind guard of
26 the patented design has five vertical lines, while the defendants’ lighter is
27 ornamented with a pattern of eight dimples, arranged in three horizontal,
28 vertically offset rows. Id. at 281. The defendants’ design has a textured, metal

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1 frame on the upper end of the bottom half of the insert, whereas plaintiffs’
2 patented design has a plain, smooth surface covering the entire insert’s bottom
3 half. Id. As for the designs on the right, the court observed the wind guards on
4 the patented design and defendants’ design were plainly different. Id. at 282-83.
5 The court rejected the plaintiff’s argument that an ordinary observer “would not
6 focus on ‘any minor differences’ such as the eight dimples on the windguard,” as
7 “the design of the windguards inevitably influences the overall effect of each of
8 the lighters.” Id. at 283.
9 Similarly, in High Point Design LLC v. Buyer’s Direct, Inc., No. 1:11-cv-
10 04530-KBF, 2014 U.S. Dist. LEXIS 41290 (S.D.N.Y., Mar. 26, 2014) aff’d 621
11 Fed. Appx. 632 (Fed. Cir. 2015) (hereafter, “High Point Design”), the district
12 court granted summary judgment and found non-infringement in a case involving
13 fuzzy slippers. The accused product and design patent at issue was as follows:
14
15
16
17
18
19
20 High Point Designs LLC, 621 Fed. Appx. at 641. In analyzing the pictures
21 above, the accused fuzzy slipper and patented design were each the same general
22 shape with a top opening lined by a fur-like trim. Yet, those general similarities
23 were insufficient for the plaintiff to survive summary judgment, and the district
24 court’s ruling was affirmed on appeal by the Federal Circuit.
25 In Super-Sparkly Safety Stuff, LLC v. Skyline USA, Inc., AKA Guard Dog
26 Security, No. 3:18-cv-00587-N, 2019 U.S. Dist. LEXIS 191338 (N.D. Tex. Nov.
27 4, 2019), aff’d 836 Fed. Appx. 895 (Fed. Cir. 2020) (hereafter, “Super-Sparkly
28 Safety Stuff”), the district court granted summary judgment and found non-

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1 infringement in a case where the patented design was a pepper spray canister
2 with rhinestones on the bottom and sides of the cannister, but where the accused
3 product had rhinestones only on the sides, not the bottom. 2019 U.S. Dist.
4 LEXIS 191338, at *6. The court noted, “[t]his difference is significant,
5 particularly given the relatively simple and limited elements of the product
6 designs, and would be obvious to an ordinary observer.” Id. The Federal Circuit
7 affirmed the district court’s summary judgment ruling in this case as well.
8 Here, like in each of these cases, a visual comparison alone shows that the
9 Accused Products do not infringe on the ‘617 Patent.
10 i. The Design Claimed in the ‘617 Patent
11 As noted in Defendants opening claim construction brief, ECF 40, Figures
12 1 to 10 of the ‘617 Patent collectively portray a rectangular, two-piece design
13 with a removable charge port cover, rounded corners, a corner flange (i.e., the
14 corner piece where a carabiner or other fastening mechanism can attach), notches
15 on the sides, and an opening across from the corner flange. SS Nos. 20, 21, 22,
16 23, 24, 25. The sleeve depicted and claimed has a smooth surface with no bumps
17 or grooves except for the referenced notches. SS No. 26.
18 As a sleeve for an electronic device which Plaintiff alleges is waterproof,
19 some design elements of the ‘617 Patent are likely functional. However, even
20 those functional elements have ornamental designs and shapes which must be
21 considered when determining the scope of the ‘617 Patent’s claimed ornamental
22 design. Amini, 439 F.3d at 1371 (quoting Read Corp. v. Portec, Inc., 970 F.2d
23 816, 825 (Fed. Cir. 1992)). Additional ornamental aspects of the ‘617 Patent
24 identified in solid lines2 include: the notches are shaped as sideways “W”s, SS
25 No. 25; the removable charge port cover is entirely separable from the sleeve, SS
26
2
As noted in Defendants’ opening claim construction brief, ECF 40, the ‘617
27 Patent expressly distinguishes between solid lines and broken lines, with “broken
28 lines indicat[ing] environment and form[] no part of the claimed design.” See
also Mojtehedi Decl. ¶ 2, Ex. 1 at 1.

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1 No. 21, and has an oblong shape and an oval-shaped opening, which surrounds
2 the corner flange when attached to the sleeve, SS Nos. 27, 28; the outline of the
3 detachable charge port cover is visible when the charge port is attached to the
4 sleeve, SS No. 29; the outline of the top opening is an oval when viewed from the
5 top and a “U” when viewed from the side, SS Nos. 30, 31; the shape of the corner
6 flange is circular, SS No. 32; and the hole therein is a circle, SS Nos. 33, 34.
7 ii. The Many Differences Between AI-1 and the ‘617 Patent
8 Unlike the ‘617 Patent, AI-1 is a single-piece design with no notches and
9 no removable charge port cover. SS Nos. 35, 36, 41. AI-1’s charge port cover is
10 permanently attached to the sleeve; the shape is generally limited to the shape of
11 the charge port opening and does not surround the corner flange. SS No. 36.
12 AI-1 also has a loop on the bottom when the charge port cover is closed, which is
13 the strip connecting the charge port cover to the sleeve. SS No. 40.
14
‘617 Patent AI-1
15
16
17
18
19
20
21
22
23
24
25
26 SS Nos. 6, 8, 9, 11, 13, 16. Focusing on the corner flange, the overall shape of
27 the flange and the hole of the flange for AI-1 is an oval; the overall shape of the
28 ‘617 Patent flange is not an oval, but instead a circle. SS Nos. 33, 34, 42, 43.

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1 The shape of the top opening of AI-1, when viewed from the side, is a sideways
2 “C”, while the ‘617 Patent illustrates a “U.” SS Nos. 31, 37. In other words, the
3 top opening for AI-1 tapers in much more than the design in the ‘617 Patent. To
4 that end, when viewed from the top, the opening of AI-1 is a dog bone, while the
5 ‘617 Patent illustrates an oval. SS Nos. 30, 38. Finally, AI-1 has the word
6 “elago” written on the side. SS No. 39.3 In sum, the absence of notches and a
7 removable charge port cover, and entirely different design for the top opening,
8 when combined with all the other differences identified herein, create an overall
9 visual impression that renders AI-1 plainly dissimilar to the ‘617 Patent.
10 iii. The Many Differences Between AI-2 and the ‘617 Patent
11 The orientation and ridged exterior design of AI-2 is entirely different
12 from the design of the ‘617 Patent.
13
‘617 Patent AI-2
14
15
16
17
18
19
20
21
22
23
24
25 3
Design patent infringement is not avoided simply by labelling the accused
26 products with the alleged infringer’s logo; however, logo placement must be
considered as part of the infringement analysis. See Columbia Sportswear, 942
27 F.3d at 1131-32 (reversing district court’s grant of summary judgement of
28 infringement because, inter alia, “the court improperly declined to consider the
effect of [defendant’s] logo on its infringement analysis”).

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1 SS Nos. 6, 8, 9, 11, 13, 17. When viewed with the opening at the top, unlike the
2 ‘617 Patent, the width of AI-2 is greater than its height. SS No. 46. Unlike the
3 ‘617 Patent and its smooth sides, AI-2 has multiple ridges extending outward
4 from its rectangular shape. SS Nos. 26, 46. The notch on the side of the ‘617
5 Patent design is a sideways “W”, SS No. 25, while the notch on the side of AI-2
6 is a sideways “U” with a thick, indented band running around the entirety of the
7 sleeve. SS No. 51. Especially when viewed from the side, the overall visual
8 appearance of AI-2 is much more bulbous than the ‘617 Patent due to the exterior
9 ridges and the sleeve tapering inwards at the indented band.
10 And, like AI-1, and unlike the ‘617 Patent, AI-2 is a single-piece design
11 with a permanent charge port cover. SS Nos. 35, 36. AI-2 also does not have a
12 visible outline of a charge port cover surrounding the corner flange. SS No. 36.
13 AI-2 also has an additional loop on the bottom when the charge port cover is
14 closed, which is the piece that connects the charge port to the sleeve. SS No. 40.
15 Like AI-1, the overall shape of the flange and the hole of the flange for AI-2 is an
16 oval, while the ‘617 Patent flange has a circular hole and is not an oval. SS Nos.
17 32-34, 42, 43. Similarly, the shape of the top opening of AI-2, when viewed
18 from the side, is a sideways “C”, while the ‘617 Patent illustrates a “U”. SS Nos.
19 31, 37. When viewed from the top, the opening of AI-2 is a dog bone, while the
20 ‘617 Patent illustrates an oval. SS Nos. 30, 38. Finally, AI-1 has the word
21 “elago” written on the side. SS 39. Even more so than AI-1, the overall visual
22 impression of the ‘617 Patent when compared to AI-2 is plainly dissimilar.
23 iv. The Many Differences Between AI-3 and the ‘617 Patent
24 AI-3 is comparable to AI-1 but is even more plainly dissimilar to the ‘617
25 Patent.
26
27
28

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1 ‘617 Patent AI-3

2
3
4
5
6
7
8
9
10
11
12
13
14 SS Nos. 6, 8, 9, 11, 13, 18. AI-3 shares all the same dissimilarities as AI-1—one-
15 piece design, top opening is a “C” when viewed from the side and dog bone
16 shaped when viewed from the top, no side notch, permanent charge port cover
17 with a loop on the bottom when closed, no outline of a charge port cover
18 surrounding a corner flange, and the word “elago” etched on the side. SS Nos.
19 35-41. What sets AI-3 even further apart from the ‘617 Patent is that AI-3 does
20 not have a corner flange, but instead has a loop on the side that looks entirely
21 different from the corner flange of the ‘617 Patent. SS Nos. 47, 48. AI-3 also
22 has a textured surface. SS No. 52. AI-3 is even more plainly dissimilar to the
23 ‘617 Patent than AI-1.
24 v. The Many Differences Between AI-4 and the ‘617 Patent
25 AI-4 is the most minimalist design of the four Accused Products.
26
27
28

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1
‘617 Patent AI-4
2
3
4
5
6
7
8
9
10
11
12
13 SS Nos. 6, 8, 9, 11, 13, 19. AI-4 shares in the dissimilarities of AI-1 and AI-3 – a
14 one-piece design, the top opening is “C” and dog bone shaped when viewed from
15 the side and top, no side notch, permanent charge port cover that has a loop on
16 the bottom when closed, and word “elago” written on the side. SS Nos. 35-41.
17 Additionally, AI-4 does not have any flange whatsoever. SS No. 41, 50. AI-4 is
18 also plainly dissimilar to the ‘617 Patent.4
19
20
21
4
22 While not dispositive of the inquiry here, the Court should consider as
persuasive that AI-1, AI-2, and AI-4 are subject to their own design patents,
23 which Elago was granted in early 2020 only after the USPTO considered the ‘617
24 Patent. Before the patents were issued, USPTO Examiners evaluated the ‘617
Patent to determine whether it anticipated Defendant’s claimed design (i.e., the
25 claimed design was not novel) or whether it rendered Defendant’s claimed design
26 obvious. 35 U.S.C. § 102(a)(2); 35 U.S.C. § 103. If the Examiners believed that
the ‘617 Patent anticipated Defendant’s claimed design or rendered it obvious,
27 the patent would not issue. As is relevant here, anticipation is judged by the
28 same test as infringement of design patents. See High Point Design., 621 F.
App'x at 641 (citing Egyptian Goddess, 543 F.3d at 678).

-14-
1 b. The Accused Products Are Clearly Different Than The Patented

2 Design When Prior Art Is Considered
3 Even if the Court proceeds to step two of the analysis, a comparison of the
4 claimed design and accused designs with the prior art only further confirms
5 Defendants’ position. Egyptian Goddess, 543 F.3d at 678. “[W]hen the claimed
6 design is close to the prior art designs, small differences between the accused
7 design and the claimed design are likely to be important to the eye of the
8 hypothetical ordinary observer.” Id. at 676. “[S]trong similarities between the
9 accused design and the prior art are an indication of non-infringement.” Wing
10 Shing Prods. (BVI) Co. v. Sunbeam Prods., 665 F. Supp. 2d 357, 368 (S.D.N.Y.
11 2009); see also Egyptian Goddess, 543 F.3d at 682.
12 Egyptian Goddess demonstrates the significant impact that prior art has on
13 the analysis. There, the patented design and the accused design for nail buffers
14 were strikingly similar. Id. at 543 F.3d at 681. Nonetheless, the district court
15 granted summary judgment on non-infringement and the en banc Federal Circuit
16 affirmed. Egyptian Goddess, 543 F.3d at 665, 680-83. Although the accused
17 nail buffer was like the patented nail buffer, those similarities dissipated when
18 considering the prior art, leaving the differences apparent. Id. at 681-83.
19
20
21 Id. at 681.
22 In 2011, the Hon. Marilyn L. Huff granted summary judgment in favor of
23 the defendants in a case involving, inter alia, a design patent protecting the
24 design of a neck gaiter. Seirus Innovative Accessories, Inc. v. Cabela’s Inc., 827
25 F. Supp. 2d 1150, 1157 (S.D. Cal. 2011). While the accused neck gaiters
26 generally had the same shape as the design patent at issue, the prior art depicted a
27 diagonal zipper like the accused product, unlike the design patent, which depicted
28 a neck gaiter with a vertical zipper. Id. at 1156-57; see also Golden Eye Media

-15-
1 United States, Inc., 525 F. Supp. 3d at 1218 (citing Seirus with approval in
2 granting summary judgment on non-infringement in favor of defendants and
3 finding prior art rendered accused product plainly dissimilar from design patent).
4 More recently, in Weber-Stephen Prods. LLC v. Sears Holding Corp.,
5 13C01686, 2015 U.S. Dist. LEXIS 170989, *42 (N.D. Ill., Dec. 22, 2015)
6 (“Weber”), the court found on summary judgment non-infringement in favor of
7 the defense in a case involving barbecue shrouds. Id. at 32. The court observed
8 that the design patent was “very close in design to the prior art[.]” Id.
9
10
11
12
13
14
15
16
17
18 Id. at *32. The court observed that “the prior art shares the same basic shape as
19 the ‘824 design and also shares rivets, flat side panels, and rotisserie notches.”
20 Id. “Given these similarities, small differences between the accused design and
21 the claimed design must take on more importance.” Id. at *32 (citing Egyptian
22 Goddess, 543 F.3d at 676) (internal quotation omitted); Id. at *34 (“[O]nce the
23 prior art informs the comparison, the differences between the ‘834 design and the
24 Kenmore Elite grills stand out inescapably.”).
25 Here, like in Weber, the general design of the ‘617 Patent is very close to
26 that present in the prior art:
27
28

-16-
1 ‘617 Patent Prior Art Accused Products

2 SS No. 8. ‘657 Patent (SS No. 55) SS No. 16
3
4
5
6
7
‘174 Patent (SS No. 60) SS No. 17
8
9
10
11
12
13 ‘148 Patent (SS No. 64) SS No. 18
14
15
16
17
18
SS No. 65 SS No. 19
19
20
21
22
23
24
25 Plaintiff’s ’617 Patent undeniably looks like United States Patent No. 355,657,
26 issued on February 21, 1995, a design patent claiming “[t]he ornamental design
27 for a cover for a selective call receiver, as shown and described.” SS Nos. 53, 54.
28 The rounded edges, the corner placement of the flange, and the shape of the

-17-
1 flange and flange hole are strikingly similar. Lanard Toys, 958 F.3d at 1344 (if
2 the patented design is close to the prior art designs, minor differences between
3 the patented design and the accused product’s design are likely to be important to
4 the eye of the hypothetical ordinary observer).
5 Unsurprisingly, this general design concept has also been applied to other
6 electronics covers, as seen in the design claimed by United States Patent No.
7 D726,174 (hereafter the “‘174 Patent) issued on April 7, 2015, which claims “the
8 ornamental design for a smart phone case with lanyard attachment, as shown and
9 described.”. SS Nos. 58-61. The general design concept is also present in prior
10 art unrelated to electronic devices, as shown by United States Patent No. 393,148
11 (hereafter “the ‘148 Patent”) issued on April 7, 1998, which claims “[t]he
12 ornamental design for a key chain box as shown and described.” SS Nos. 62-65.
13 The differences identified between the ‘617 Patent and the Accused Products are
14 even more prominent when compared with the prior art.
15 The top opening and rounded corners depicted in the ‘617 Patent are also
16 in the prior art. United States Patent No. 7,647,082 (hereafter “the ‘082 Patent”)
17 issued on January 12, 2010, discloses, “[t]he invention relates to a cover for a
18 portable device…”. SS Nos. 66-67. Figures 10 and 11 of the ‘082 Patent show
19 that these two design elements appear similar to the design elements in the ‘617
20 Patent, and highlights how the overall visual impression of the Accused Products
21 (including with a “C” opening when viewed from the side and a dog bone shape
22 when viewed from above) is different than the ‘617 Patent and the ‘082 Patent:
23
24
25
26
27
28

-18-
1 ‘617 Patent ‘082 Patent Accused Products
2
3
4
5
6
7
SS No. 5 (image
8
rotated).
9
10
11
SS Nos. 68, 69.
12
13
14
15
16
17 SS Nos. 5 (rotated image), 16-19, 68, 69. Plaintiff’s addition of a corner flange
18 having the claimed shape, removable charge port cover that wraps around the
19 flange, and notches having the shape of a sideways “W” on the sides of the
20 design in the ‘617 Patent would also be significant to the ordinary observer
21 because it is those design elements that set the design in the ‘617 Patent apart
22 from that in the ‘082 Patent. The absence of those design elements, changes
23 thereto, or additional design elements absent in either render the Accused
24 Products plainly dissimilar from the ‘617 Patent. See, Seirus Innovative
25 Accessories, Inc., 827 F. Supp. 2d at 1157 (no infringement where accused
26 design and prior art share similar features absent from the patented design).
27
28

-19-
1 V. CONCLUSION
2 A visual comparison shows that the four Accused Products are plainly
3 dissimilar from the ‘617 Patent. Consideration of the prior art further confirms
4 that the general design concept of a sleeve for an electronic device with rounded
5 corners and a corner flange is not unique to Catalyst, and many of the claimed
6 ornamental aspects of the ‘617 Patent are present in the prior art. The Accused
7 Products differ from the ‘617 Patent in the shape or presence of those ornamental
8 aspects. As a result, the hypothetical ordinary observer would appreciate those
9 differences and there would be no confusion between the Accused Products and
10 the design claimed in the ‘617 Patent. Accordingly, Defendants respectfully
11 request the Court find that the Accused Products do not infringe on the ‘617
12 Patent as a matter of law and grant summary judgment in their favor on the First
13 Claim for Relief for patent infringement.
14
15 Respectfully submitted,
16 DATED: April 19, 2023 By: /s/ Sheila Mojtehedi
Sheila Mojtehedi
17
18 Attorneys Defendants
19 Elyel Corporation and Elago Co., Ltd
20
21
22
23
24
25
26
27
28

-20-

Catalyst v. Elago - MSJ Brief

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Case 3:22-cv-00536-LL-MDD Document 44-1 Filed 04/19/23 PageID.

1 Sheila Mojtehedi, SBN 313002

21 Complaint Filed: April 18, 2022

23 Hearing Date: May 24, 2023

DEFENDANTS MEMORANDUM OF POINTS AND AUTHORITIES ISO

DEFENDANTS MEMORANDUM OF POINTS AND AUTHORITIES ISO

1 Marks v. Dept. of Justice,

1 Figures 1-10 of the ‘617 Patent

1 Waterproof Hang Active Case for Waterproof Case Compatible with

1 ‘617 Patent AI-3

1 b. The Accused Products Are Clearly Different Than The Patented

1 ‘617 Patent Prior Art Accused Products

1 ‘617 Patent ‘082 Patent Accused Products

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