[00:00:43] Speaker 01:
The next argued case is No.

[00:00:46] Speaker 01:
19-1435, Spigen, Korea Company, against Elker Proof, Incorporated.

[00:00:52] Speaker 01:
Mr. Curry.

[00:00:54] Speaker 03:
Thank you, Your Honors.

[00:00:56] Speaker 03:
I'll first address Spigen's appeal of the obvious decision, because if that is decided in our favor, we believe that the cross-appeal of no exceptional case will be moot.

[00:01:05] Speaker 03:
The District Court aired in its application of the obvious success for design patents at the summary judgment stage and by taking multiple fact issues away from the jury.

[00:01:14] Speaker 03:
At step 1A of the obviousness test, the District Court incorrectly viewed the speak and design patents at too high of a level of abstraction as conceptually just a cell phone case with rounded corners, beveled edges, and cutouts to plug devices into.

[00:01:29] Speaker 03:
This is what led the District Court to air on the remaining steps of the obviousness test and to take issues away from the jury.

[00:01:35] Speaker 03:
At step 1b, when the district court was looking for a primary reference that is basically the same as the claim design, it looked the 218 prior art.

[00:01:45] Speaker 03:
But as you can see in the images in our brief, that reference is not basically the same.

[00:01:50] Speaker 03:
I'll go through this in a little bit more detail, but it has at least 10 key differences.

[00:01:53] Speaker 03:
There were just two differences in the Campbell Soup case, where this court said that a primary reference wasn't a proper primary reference.

[00:02:00] Speaker 03:
At the second step of the obviousness test,

[00:02:02] Speaker 02:
Well, how far does one have to proceed into detail?

[00:02:08] Speaker 02:
When we're talking about appearance, we've got the appearance, it's flat, it's got rounded edges, it's relatively thin, and you've got references that essentially show that with minor differences.

[00:02:22] Speaker 03:
Well, respectfully, Your Honor, there aren't minor differences in appearance, and I think I can show you this to you relatively easily if you'll look at page 37 of our blue brief and you'll compare Spiegel's 648 patent to the 218 primary reference.

[00:02:37] Speaker 03:
Spiegel's design patents have two parts.

[00:02:40] Speaker 03:
There's an outer shell and a frame, and in the 648 pattern, the outer shell is the only part that's claimed.

[00:02:46] Speaker 03:
The frame's actually shown in dotted lines.

[00:02:49] Speaker 03:
When you compare the outer shell of the speaking design pattern to the 218 reference, it's plainly evident that the designs aren't the same.

[00:02:56] Speaker 03:
There's no shell at all in the 218 design pattern.

[00:03:00] Speaker 03:
The reference is supposed to be the primary reference.

[00:03:02] Speaker 03:
There's also no portion of the frame that extends above and below the shell in the 648.

[00:03:07] Speaker 02:
Once again, if we're talking about appearance, how detailed does one have to get in comparing two things to find differences?

[00:03:19] Speaker 03:
Well, so take JOR, for example, which is the drill bit case.

[00:03:22] Speaker 03:
The only difference between the patented design and the prior art there was a smooth cylindrical shaft versus a hexagonal shaft with a little divot in it.

[00:03:32] Speaker 03:
That was a difference.

[00:03:33] Speaker 03:
It didn't disqualify that reference as a primary reference, but that was a difference.

[00:03:37] Speaker 03:
That was an obvious difference in design, and that's exactly what's going on here.

[00:03:40] Speaker 03:
If a person of ordinary skill, an ordinary designer, looks at the 218 and the 648 patent, they don't see things that are similar at all.

[00:03:47] Speaker 03:
They see in the 218 a very bulked up reference with these triangular design elements all the way around its chamfers.

[00:03:53] Speaker 03:
It doesn't have the parting lines.

[00:03:54] Speaker 03:
It doesn't have the hole in the back.

[00:03:56] Speaker 03:
It has much thicker chamfers and much thicker sides.

[00:04:00] Speaker 03:
It's just not visually the same.

[00:04:03] Speaker 03:
That's the problem.

[00:04:04] Speaker 03:
And so as this court knows in the design patent obviousness test, if there's not an appropriate primary reference, that's where the analysis ends for the combination.

[00:04:13] Speaker 03:
Switching back to the secondary reference, AltraProof identified the 209 pattern as an appropriate secondary reference.

[00:04:21] Speaker 03:
The 209 pattern is shown on page 46 of our blue brief, and we don't think the design similarities between the 209 pattern and the 2018 pattern are similar enough for those two references to be combined.

[00:04:39] Speaker 03:
If you look at the 209 pattern, it's got softly-radius, rounded aesthetic.

[00:04:43] Speaker 03:
It basically hugs the phone.

[00:04:45] Speaker 03:
The 218 pattern, on the other hand, is way at the other end of the spectrum.

[00:04:49] Speaker 03:
When you go to a store to buy a smartphone case, if you look at the 209, you are not going to think that it looks basically the same as the 218 pattern.

[00:04:58] Speaker 03:
So those are not combinable right there off of the back.

[00:05:01] Speaker 03:
The 218 also doesn't have a two-part construction.

[00:05:04] Speaker 03:
It doesn't have an outer shell and a frame.

[00:05:06] Speaker 03:
And if you look at the design elements, some of the same differences that preclude the 218 from being an appropriate primary reference for the patents also knock it out as an appropriate, also knocks out the 209 as an appropriate secondary reference.

[00:05:21] Speaker 02:
Of course, we're talking about obviousness here.

[00:05:23] Speaker 02:
Yes, Your Honor.

[00:05:23] Speaker 02:
And not lack of novelty.

[00:05:26] Speaker 02:
If you look at 218, it's thicker than 607.

[00:05:31] Speaker 02:
If you look at 209, it's thinner.

[00:05:36] Speaker 02:
So isn't 607 sort of a mesh of the two of them?

[00:05:43] Speaker 03:
The speaking design patents are probably fairly characterized as being in between the 218 and the 209.

[00:05:49] Speaker 03:
The problem here is that the 218 and the 209 are far too apart on the spectrum to be combined.

[00:05:55] Speaker 03:
And even if you did combine them, to get to the hypothetical design that Algebra got to here, if you go to page 53 of our blue brief, you'll see the hypothetical design that they came up with.

[00:06:11] Speaker 03:
And there's actually a legal error here.

[00:06:13] Speaker 03:
The way that you're supposed to do design patent obviousness is to find something in existence in the prior art that's basically the same as the patent.

[00:06:21] Speaker 03:
And then you're supposed to look for a secondary reference that has certain ornamental features that themselves suggest modifying the primary reference.

[00:06:28] Speaker 03:
Well, that's not what happened here.

[00:06:29] Speaker 03:
So if you recall, the 218 patent had, for example, prominent triangular elements on it.

[00:06:35] Speaker 03:
The hypothetical design doesn't have those.

[00:06:36] Speaker 03:
Those were just admitted.

[00:06:37] Speaker 03:
The 218 patent also had a notch cut out of the bottom.

[00:06:42] Speaker 03:
The hypothetical design again amidst that change.

[00:06:44] Speaker 03:
So what they've done here is they've done exactly what you're not allowed to do under Gordon.

[00:06:48] Speaker 03:
They went to the prior art and they said, look, we can just pick and choose different features that exist in the prior art and combine them together to create this hypothetical design.

[00:06:56] Speaker 03:
That's error.

[00:06:57] Speaker 03:
That is not the right way to do a design patent obviousness test.

[00:07:00] Speaker 03:
And your honors, even if it was,

[00:07:03] Speaker 03:
Look at the designs on page 53 of our brief.

[00:07:05] Speaker 03:
Once you have the hypothetical design construed, the question is actually an ordinary observer question.

[00:07:11] Speaker 03:
So would an ordinary consumer be confused and be deceived and think that the hypothetical design is the same, substantially similar, the same in all material respects as the design pattern, if you're standing at a store holding those two designs in your hands, you're not going to confuse them.

[00:07:28] Speaker 03:
So there's at least a material issue of fact right there, even if their hypothetical design is correct, which we don't think that it is.

[00:07:35] Speaker 03:
So the court erred by taking that away from the jury.

[00:07:41] Speaker 00:
And even if you got to...

[00:07:46] Speaker 03:
a reference that's a good primary reference before you can have that's basically the same before you can look at a secondary reference yes your honor that is that's what the apple the samsung case says that's what high point one and two both say that's what mrc says you have to start with an appropriate primary reference and that's a big problem here for ultra proof because the 218 is not what's the problem that that the

[00:08:08] Speaker 00:
that there's no translation of the device, more than just cursory language as to how they're basically the same.

[00:08:18] Speaker 03:
I'm sorry.

[00:08:19] Speaker 00:
There have been more from the court as to the

[00:08:23] Speaker 03:
I think there probably should have been more analysis, but I think the real error by the District Court there was the same error that the District Court made in High Point, both High Point 1 and 2.

[00:08:35] Speaker 03:
The District Court here below just looked at the speaking design patents as rectangular cell phone cases.

[00:08:42] Speaker 03:
with beveled edges and cutouts.

[00:08:44] Speaker 03:
But that's just a general description of a smartphone case.

[00:08:48] Speaker 03:
Well, it should have looked to the actual design elements of the Spiga design patent.

[00:08:53] Speaker 03:
And so if you look at the Spiga design patents, which are shown in a sort of profile view 36 to 37 of our blue brief,

[00:09:01] Speaker 03:
they have a tough angular appearance but they're still relatively streamlined so they're not bulked up like the 218 so they don't look like for example your honor might know the Otterbox case they don't look like a big bulky case they're also not

[00:09:15] Speaker 03:
very very thin like the the 209 patent which is basically just hugging the smartphone so overall that's where you need to start they have a different aesthetic okay some of the other features of the speaking design patents are there a two-part design you can see that very clearly by looking at the figure there's an outer shell which is the only thing claimed in the 648 patent

[00:09:34] Speaker 03:
It wraps around using a medium chamfer, which is that beveled edge in between the back surface and the side, and it only comes partially the way around.

[00:09:43] Speaker 03:
So there's a little bit of the frame sticking out on the side and out at the front.

[00:09:48] Speaker 03:
There's also a hole cut in the outer shell and the frame on the back.

[00:09:52] Speaker 03:
There are parting lines because of the outer shell on the back.

[00:09:55] Speaker 03:
They give a distinctive horizontal appearance to those parting lines.

[00:09:58] Speaker 03:
And then there's a design element above and below those parting lines.

[00:10:03] Speaker 03:
I already mentioned the medium-sized chamfers.

[00:10:04] Speaker 03:
The other notable design feature of the Spigen patents are the trapezoidal buttons.

[00:10:08] Speaker 03:
You'll see there's a very specific button design on the sides.

[00:10:12] Speaker 03:
of the speaking design patents, it actually extends into the back chamfer.

[00:10:15] Speaker 03:
So those are the things, that's the level of detail that the district court needed to go into when it was discerning the correct visual impression created by the patent and design as a whole.

[00:10:26] Speaker 03:
If the court had looked at the design patents in that level of detail, I think the court would probably have then appreciated what the differences are with the 218 patent.

[00:10:34] Speaker 03:
It's a lot more evident and it's much easier to see the differences once you understand the correct visual impression, which is

[00:10:40] Speaker 03:
As your honor points out, that's the first thing that needs to happen in the process.

[00:10:45] Speaker 02:
It almost looks like the 209 patent could have been the primary reference.

[00:10:50] Speaker 02:
You've got the aperture and you've got the stuff on the side, and so add 218 and you just make it a bit thicker.

[00:11:00] Speaker 03:
Well, there's still a problem with that, your honor, for the reasons that I talked about, the 209 and the 218, they're not similar enough to combine.

[00:11:05] Speaker 03:
But let's just start with the 209.

[00:11:07] Speaker 03:
That wasn't raised below.

[00:11:08] Speaker 03:
They could have raised the 209 as a primary reference.

[00:11:11] Speaker 03:
They didn't.

[00:11:12] Speaker 03:
Their combination was 218 plus 209.

[00:11:15] Speaker 03:
So they didn't preserve that.

[00:11:17] Speaker 03:
So the district court didn't consider it.

[00:11:18] Speaker 03:
We didn't get to argue against it below.

[00:11:20] Speaker 03:
We didn't get to have our experts submit testimony on it.

[00:11:23] Speaker 03:
So they can't just switch it up on appeal and say, oh, well, it's basically the same.

[00:11:27] Speaker 03:
So that's fine.

[00:11:28] Speaker 02:
What would an expert bring to this issue of the appearance of a cell phone case that one

[00:11:35] Speaker 02:
And look at it very easily.

[00:11:38] Speaker 03:
Well, respectfully, Your Honor, there is a huge industry for these.

[00:11:42] Speaker 03:
Millions of dollars a year.

[00:11:44] Speaker 03:
And lots of companies are in it trying to design products.

[00:11:48] Speaker 02:
And lots of prior art.

[00:11:49] Speaker 03:
Yes, there is.

[00:11:50] Speaker 03:
There is a lot of prior art.

[00:11:51] Speaker 03:
The problem is you have to apply the obviousness test here.

[00:11:54] Speaker 03:
And what Spigen did was went into an area of the prior art that wasn't captured.

[00:11:59] Speaker 03:
So Spigen didn't design a big, brutish case at one end of the spectrum, or a really thin case that hugs the smartphone at the very far other end of the spectrum.

[00:12:07] Speaker 03:
Spigen designed something that was in the middle, something that was not disclosed in the prior art, and something that you can't reach through suggestion in these drawings.

[00:12:15] Speaker 03:
So that's the problem here, Your Honor, and I do think that an expert can contribute to this because having sat with an expert and started to talk to them about these design elements, our expert tells us that the 209 is just not similar.

[00:12:29] Speaker 03:
It's very thin.

[00:12:30] Speaker 03:
It doesn't have those angular corners.

[00:12:32] Speaker 03:
Okay, so it doesn't have that bevel edge.

[00:12:34] Speaker 03:
It doesn't even have that feature at all.

[00:12:36] Speaker 03:
The design on the top and the bottom, above the outer shell and the back of the case is different.

[00:12:41] Speaker 03:
It's a rounded, softer radius design.

[00:12:44] Speaker 03:
It just doesn't look similar to the speaking design patents.

[00:12:48] Speaker 03:
Would I grant your honor that the 209 might be a more appropriate primary reference?

[00:12:54] Speaker 03:
Sure, but that's not the argument that they raise.

[00:12:56] Speaker 03:
And then for what it's worth, we didn't present this exactly this way to this court.

[00:13:01] Speaker 03:
Below, we said the 209 wasn't even prior art.

[00:13:03] Speaker 03:
The district court rejected us on that because we didn't have an assignment filed with the Patent Office.

[00:13:08] Speaker 03:
We found that co-inventor, former employee, and we now have that assignment.

[00:13:11] Speaker 03:
So if this goes back down, the 209 will be removed as a prior art reference.

[00:13:16] Speaker 03:
So it won't be an appropriate prior art reference.

[00:13:19] Speaker 03:
If I can, Your Honors, I want to go to the secondary considerations, because part of the problem here is, especially in a crowded field like this, you need to look at secondary considerations.

[00:13:27] Speaker 03:
So I'm absolutely not conceding that the hypothetical design is correct, but even if it was, there is a fact issue presented here just by the secondary considerations.

[00:13:38] Speaker 03:
We showed below that Spigen has sold tens of millions of dollars worth of the patented design because of the way that it looks.

[00:13:46] Speaker 03:
Amazon customers tell us they buy it because of the way that it looks.

[00:13:49] Speaker 03:
Our experts cited that in his report.

[00:13:51] Speaker 03:
The district court rejected it for lack of nexus.

[00:13:53] Speaker 03:
Well, he did so inappropriately because if you look at the Crocs case, which is 598 fed 1310 to 1311,

[00:14:01] Speaker 03:
You make a prima facie case of Nexus when you show that there's commercial success and the product embodies the patent.

[00:14:09] Speaker 03:
We did that here.

[00:14:10] Speaker 03:
And the Amazon reviews go even further because people are saying they bought it because of the design.

[00:14:14] Speaker 03:
Our expert also said that there was teaching away.

[00:14:17] Speaker 03:
And this is very similar to the argument I made before.

[00:14:19] Speaker 03:
The 218 is a big, brutish case at one far end of the spectrum.

[00:14:23] Speaker 03:
The 209 is a thin, hugging case at the other end of the spectrum.

[00:14:28] Speaker 02:
How can there be teaching away

[00:14:31] Speaker 02:
When you're dealing with appearance, does something have to say, this is ugly?

[00:14:37] Speaker 03:
You could do that.

[00:14:38] Speaker 03:
It does have to discourage someone.

[00:14:40] Speaker 03:
But the point is that you need to look at what motivation the images and the visual appearance suggests in the design patterns.

[00:14:47] Speaker 03:
So when you look at the 218, what that's suggesting is big, bulked up appearance.

[00:14:52] Speaker 03:
Very big, OK?

[00:14:53] Speaker 03:
When you look at the 209, it's suggesting very thin.

[00:14:57] Speaker 03:
very tightly tailored.

[00:14:58] Speaker 03:
So they're suggesting opposite ends of the spectrum.

[00:15:01] Speaker 03:
There's also evidence of copying here.

[00:15:03] Speaker 03:
We asked during discovery, how did you make the case?

[00:15:06] Speaker 03:
And basically, the owner of Ultra Proof said, well, we sent a case to China and said, copy this.

[00:15:13] Speaker 03:
They say it wasn't our case.

[00:15:14] Speaker 03:
Absolutely not.

[00:15:15] Speaker 03:
But they produce absolutely no design drawings or anything else to show how they made the case.

[00:15:19] Speaker 03:
And if you look at the beginning of our blue brief, you'll see that there's striking similarity between the patent and the design.

[00:15:25] Speaker 03:
and the accused product.

[00:15:27] Speaker 03:
So that's primatation evidence of copying.

[00:15:29] Speaker 03:
Every one of those elements also creates a fact dispute.

[00:15:32] Speaker 03:
And just to sum it up here, there's a fact dispute on whether the reference, the primary reference is basically the same, there's a fact dispute about whether you could combine them, there's a fact dispute about what the hypothetical design looks like, there's a fact dispute about whether the hypothetical design is exactly the same, and there are these secondary considerations.

[00:15:48] Speaker 03:
And I'll reserve the rest of my time.

[00:15:51] Speaker 01:
Thank you.

[00:16:01] Speaker 04:
мартн ть ть ть ть ть ть ть ть

[00:16:31] Speaker 04:
We then later go on and say that the 218 patent provides all of the necessary elements that are missing from the 209 patent.

[00:16:39] Speaker 04:
And then we discuss our expert's report who applied them in the opposite order, applied the 218 and adding the elements from the 209 patent.

[00:16:47] Speaker 04:
So the same combination in both orders was presented below.

[00:16:56] Speaker 04:
The assertion about the 209 patent not being a suitable

[00:16:59] Speaker 04:
prior art reference relates to whether it was commonly owned or under duty or obligation to assign at the time of the filing.

[00:17:07] Speaker 04:
Today is the first time we've ever heard that there was actually an assignment regarding that patent.

[00:17:11] Speaker 04:
It was never brought up in the underlying case.

[00:17:14] Speaker 04:
It was never brought up in briefing in this case.

[00:17:16] Speaker 04:
It was never brought up during mediation in this case.

[00:17:18] Speaker 04:
It was never even emailed to us prior to today.

[00:17:21] Speaker 04:
So a very basic application of Rule 37 and

[00:17:27] Speaker 04:
excluding evidence that wasn't presented during discovery would absolutely keep the 209 patent as a valid, viable reference to the designs asserted in this case.

[00:17:38] Speaker 04:
Now, the unique facts of this case separate from the typical obviousness analysis of an asserted design patent.

[00:17:44] Speaker 04:
In this case, the two references applied in the analysis include the inventor's own prior file patent, that's the 209 patent, and a competitor's phone case that's specifically referenced in the inventor's own conception drawing, that's the 218 patent.

[00:18:00] Speaker 04:
As such, what is ordinarily a purely hypothetical combination, much more closely tracks the actual design process of the CERD patents in this case.

[00:18:09] Speaker 04:
The inventor had his 209 patent,

[00:18:11] Speaker 04:
and had the 218 patent, which he refers to as the lunatic case in his conception drawing, combined the teachings of those and came up with the asserted designs in this case.

[00:18:23] Speaker 04:
Now whether we consider the 218 patent or the 209 patent as the primary reference, the other becoming the secondary reference, the resulting combination is the same.

[00:18:33] Speaker 04:
Speaking argues the 218 patent is not a suitable primary reference

[00:18:36] Speaker 04:
but even just now seems to appreciate and admit that the 209 patent is a viable primary reference.

[00:18:43] Speaker 00:
Now, the idea that the one... But he's arguing that that point was not made below.

[00:18:49] Speaker 00:
In fact... In these cases, you first have to identify a single reference, the primary reference.

[00:18:56] Speaker 04:
And I flatly disagree with that.

[00:18:58] Speaker 04:
At appendix 373, we would just... Disagree with what I said or what he said?

[00:19:01] Speaker 04:
With what counsel's saying.

[00:19:03] Speaker 04:
At appendix 373, we were specifically

[00:19:06] Speaker 04:
We discuss the 209 patent and say it's basically the same as the asserted design patents.

[00:19:10] Speaker 04:
And we say the differences are the radiused edges versus chamfered edges and the buttons.

[00:19:16] Speaker 04:
And we say that the 218 patent is a suitable secondary reference which provides all these missing elements.

[00:19:24] Speaker 04:
The 209 patent has the two-piece case, the parting line at the top, the parting line at the bottom, the circular cutout in the back.

[00:19:32] Speaker 04:
It's a relatively thin case.

[00:19:34] Speaker 04:
The idea that these are on opposite spectrums of this design process of a relatively thin case versus a thicker, more protective case is actually the motivation itself to combine them.

[00:19:47] Speaker 04:
Maybe you can draw elements from one to the other and come up with this something in between, which is what they're saying that asserted design patents are.

[00:19:56] Speaker 01:
This is summary judgment, so you need to overcome the drawing of adverse influences.

[00:20:03] Speaker 04:
I'm sorry, could you repeat?

[00:20:04] Speaker 01:
The district court granted summary judgment.

[00:20:09] Speaker 01:
Correct.

[00:20:09] Speaker 01:
Isn't that right?

[00:20:10] Speaker 01:
Yes.

[00:20:10] Speaker 01:
So that any inferences need to be drawn in their favor, not in your favor.

[00:20:16] Speaker 04:
And I would argue that the only fair inference that can be drawn from the evidence that was presented, including the fact that the 209 patent shares the same inventor as the asserted patents, is Spiegel's own prior design,

[00:20:29] Speaker 04:
And the 218 patent is specifically referenced by its commercial embodiment in the conception drawings.

[00:20:35] Speaker 04:
The only reasonable assumption that can be drawn from those is that the inventor had these designs in mind and came up with a reasonable combination of the two, which resulted in the asserted design patents.

[00:20:54] Speaker 04:
The conception drawing, by the way, is at appendix 5893.

[00:20:59] Speaker 04:
And as you can see in that, it specifically references the lunatic case, which again is the commercial embodiment of the 218 pattern, and references it for dimensions, references it for the size of the case.

[00:21:11] Speaker 04:
So again, you start with the 209, which is the inventor's own prior case, you look at the lunatic case, which is the 218 pattern, and you say, look at these dimensions, these are where I want to be, and you combine the two and you end up with the asserted designs.

[00:21:28] Speaker 00:
So did the district court actually consider the question of whether the two references could be swapped?

[00:21:34] Speaker 00:
He did not discuss it in his opinion.

[00:21:37] Speaker 00:
That wasn't part of the judgment, correct?

[00:21:39] Speaker 04:
Correct.

[00:21:40] Speaker 04:
But it was absolutely presented to him.

[00:21:41] Speaker 04:
It's alternative grounds that the panel can affirm his award or his judgment, his underlying judgment.

[00:21:49] Speaker 00:
But if the court didn't address it, we can't rule on that.

[00:21:55] Speaker 04:
I think it was presented to him.

[00:21:58] Speaker 04:
Your de novo review of the grant of summary judgment can rely on alternative grounds that are presented to the district court, including just swapping the two references.

[00:22:07] Speaker 04:
Again, it's really a form over function issue here because the

[00:22:10] Speaker 00:
the resulting combination is the same whether you call one the primary reference and the other the secondary reference it seems to me that if that's the case and almost in all these cases that would be a primary argument that would be made that here's your primary reference here's your secondary reference and by the way you can switch them around so it doesn't matter which is primary and which is secondary and that doesn't seem very correct to me well it may not be in all situations where you have art like this where all of the art is very

[00:22:40] Speaker 04:
And in fact, the facts of this case are somewhat unique in that the two references are specifically related to the design process.

[00:22:50] Speaker 04:
One is the inventor's own prior design and the other specifically referred to in his conception drawing.

[00:22:56] Speaker 04:
You don't usually have that.

[00:22:57] Speaker 04:
Usually you're drawing from prior art that you assert, yeah, a person of honorary skill would be aware of this prior art, but there's no actual evidence that the inventor himself or herself actually was aware of that reference.

[00:23:07] Speaker 04:
And so you can't actually track the design process.

[00:23:10] Speaker 04:
Here we can specifically track the design process.

[00:23:13] Speaker 04:
We can start with Mr. Kim's 209 patent, add the lunatic reference that he refers to in his conception drawing, and the end result is the hypothetical design that our expert presented and that the district court held obviates all the assertive patents.

[00:23:34] Speaker 04:
Again, the overarching theme between these two references

[00:23:37] Speaker 04:
And the third reference that's discussed in our summary judgment brief, the Slim Armor, is that they were all related to the inventor.

[00:23:45] Speaker 04:
He either specifically referred to it as the case of the 218 patent, or they're his and his company's own prior designs.

[00:23:52] Speaker 04:
The Slim Armor is Spiegel's prior design dating back to, I believe, 2011 or 2012.

[00:23:57] Speaker 04:
And the Slim Armor is a case, it's a rectangular case with rounded corners, chamfered edges, a two-piece case with a parting line at the top,

[00:24:07] Speaker 04:
The only difference there is a couple of minor differences in the buttons and the circular cutout on the back.

[00:24:16] Speaker 04:
And these differences aren't major differences.

[00:24:18] Speaker 04:
Most of them are actually dictated by the function of the underlying phone.

[00:24:23] Speaker 04:
Every year that phone companies come out with new phones, screens get bigger, the bezels around the screen get thinner, the phones get thinner, and so you have to make modifications to these cases to then accommodate these new phones.

[00:24:34] Speaker 04:
including thinning out bezels or beveled edges so that more of the screen is visible through the opening in the front and thinning out the cases overall so that they can accommodate these thinner phones.

[00:24:50] Speaker 04:
Now as to our cross appeal, speaking miscontrues our argument and how the court abused its discretion below.

[00:24:56] Speaker 04:
We do not contend that the district court was required to provide a lengthy detailed analysis of the many grounds for exceptionality that were presented.

[00:25:04] Speaker 04:
However, we do contend that it was an abuse of discretion for the district court to ignore those grounds we presented and instead present a discussion of different grounds, essentially setting up a straw man argument, leaving this court with no actual analysis of the arguments that we presented and thus nothing to defer to.

[00:25:23] Speaker 04:
And then finally, before I reserve my time, as to the standard of proof, requiring alter proof to prove any aspect of exceptionality,

[00:25:33] Speaker 04:
beyond a preponderance of the evidence would be contrary to octane fitness.

[00:25:37] Speaker 02:
There was some discussion in the briefs that... Look, we owe substantial deference to a district court who presided over the proceeding and saw all the alleged improprieties.

[00:25:52] Speaker 02:
And whether we agree with you about some of them or not, we owe a lot of deference.

[00:25:59] Speaker 04:
Sure, but here there's no indication that the trial court actually appreciated or even considered the evidence that we presented.

[00:26:06] Speaker 04:
He held a co-hearing with our case and the case against iSpeaker that you just heard as the companion case.

[00:26:14] Speaker 04:
He intermixed the arguments between the two.

[00:26:16] Speaker 04:
He actually at one point asked iSpeaker's counsel whether he was asking for fees from both cases and the indication was that he

[00:26:24] Speaker 04:
He wasn't reviewing the cases independently.

[00:26:26] Speaker 04:
And then when the orders came out the next day, they were virtually identical.

[00:26:31] Speaker 04:
Now obviously the conducts of the case in the two cases, or the parties in the two cases, was not identical.

[00:26:37] Speaker 04:
The patents being asserted were not identical.

[00:26:39] Speaker 04:
The conduct of the parties were not identical.

[00:26:41] Speaker 02:
We had to file two separate... They have different counsel on appeal here.

[00:26:48] Speaker 02:
Was the counsel different at trial?

[00:26:51] Speaker 04:
It started out with the same council until we moved to disqualify them because, as you heard just a while ago, Spiegel did not appreciate the duty to disclose prior art, relied on the patent office to find prior art, and relied on its patent attorney to decide whether to produce prior art or not.

[00:27:10] Speaker 04:
One particular reference that was very important with regard to the utility patent was the Korean utility model 465, I think it's the number.

[00:27:20] Speaker 04:
acknowledges that he was aware of that, did an analysis of that patent, did not disclose that to the patent office based on the conduct of its prosecution counsel solely.

[00:27:32] Speaker 04:
The inventor had no involvement in that at all, so he became the only witness that was available to testify about that.

[00:27:37] Speaker 04:
When we sought to depose him then, they pushed back saying, well, he's litigation counsel, he can't depose litigation counsel.

[00:27:43] Speaker 04:
Well, if he's not litigation counsel in this aspect, he's the only witness that can testify about the decision with all prior art.

[00:27:49] Speaker 02:
We had a good... You're saying the district court didn't go through all of this.

[00:27:53] Speaker 04:
Absolutely.

[00:27:55] Speaker 04:
He used the right words.

[00:27:56] Speaker 04:
He said, totality of the circumstances, preponderance of the evidence, but he didn't actually analyze our grounds for exceptionality.

[00:28:02] Speaker 04:
He presented his own grounds and said that those grounds were not enough.

[00:28:06] Speaker 04:
And with that, I'd like to end my time.

[00:28:13] Speaker 02:
Thank you.

[00:28:14] Speaker 02:
Council, there's a lot going on there that gives rise to the cross appeal.

[00:28:19] Speaker 03:
There is, Your Honor, I think I can actually dispose of it relatively quickly.

[00:28:22] Speaker 03:
They're flat wrong that the District Court didn't consider their specific arguments.

[00:28:26] Speaker 03:
If you look at the paragraph that breaks the page on Appendix 34-35, the District Court specifically looked at Alterbu's arguments that it was, quote, entitled to attorney's fees because, among other reasons, the plan is committed to an equitable conduct and final utility patent.

[00:28:41] Speaker 03:
Well, is it reviewable by us without more detail?

[00:29:00] Speaker 03:
I think that it is, Your Honor, because you do also have the briefs there, and as Your Honor noted, this is an abuse of discretion standard.

[00:29:06] Speaker 03:
This court lived with this case for years.

[00:29:09] Speaker 03:
This court ruled on the alleged lie to Amazon, ruled on the disqualification of Spiegel's primary counsel, ruled on their attempt to disqualify our firm after we came in because one of my partners

[00:29:19] Speaker 03:
was the mediator who did no work in the case.

[00:29:21] Speaker 03:
The court was familiar with this case and said that based on the substantive strength of the litigating position and the way the case was litigated, she listed out several of those things and he said, among other reasons, he did enough.

[00:29:31] Speaker 03:
If you look at the Utah case, Your Honor, you'll see that the district court doesn't have to reveal, the judge doesn't have to reveal his or her opinion about every single consideration that's raised.

[00:29:43] Speaker 03:
What the judge has to do is go through and explain whether the case is exceptional or not.

[00:29:48] Speaker 03:
And the district judge did that here.

[00:29:49] Speaker 03:
He said that our positions were not frivolous.

[00:29:52] Speaker 03:
He said we had reasonable claims at the time on invalid patents.

[00:29:55] Speaker 03:
He found that we were reasonable in the way that we conducted the litigation because we sought to stipulate out issues, for example.

[00:30:00] Speaker 03:
And he found that awarding fees wouldn't have a deferent effect because unlike the cases that they cite,

[00:30:05] Speaker 03:
There is no pattern here of speaking trying to seek nuisance value settlements.

[00:30:09] Speaker 03:
So this is just not a case where the district judge abused his discretion in deciding that there was no basis for fees.

[00:30:17] Speaker 03:
One thing about the standard of review there, we don't contest that the standard of review for 285 is preponderance of the evidence.

[00:30:23] Speaker 03:
The issue here is about if there's a subsidiary finding of inequitable conduct, does inequitable conduct have to be shown by clear and convincing evidence.

[00:30:30] Speaker 03:
That's an open issue.

[00:30:32] Speaker 03:
We submit that no matter what standard applies, they haven't shown that there was an equitable conduct.

[00:30:35] Speaker 03:
The district judge said in his fee's opinion he specifically considered that argument and didn't find that they showed it.

[00:30:41] Speaker 03:
I want to go back for just a second to the design patent appeal.

[00:30:44] Speaker 03:
What's going on here, Your Honors, is they're doing the obviousness test backwards, okay?

[00:30:49] Speaker 03:
They're looking at what the inventor considered and they're using hindsight to try to construct a design that looks as similar as possible to design patents.

[00:30:56] Speaker 03:
The PTO had before it the commercial embodiment of the 218 patent and did not reject Spiegel's design patents.

[00:31:03] Speaker 03:
Okay, so the PTO did not think that the Spiegel design patents were basically the same as the 218 design.

[00:31:11] Speaker 03:
The Patent Office also had the Slim Armor case before it, which is the other alternative round that they didn't raise.

[00:31:16] Speaker 03:
They're trying to bring up now and again didn't reject the speaking design patents over it.

[00:31:20] Speaker 03:
I do want to come back very briefly to their preservation of the 209 argument.

[00:31:25] Speaker 03:
Here's all they said.

[00:31:26] Speaker 03:
It's actually on page 376 of the appendix quote.

[00:31:30] Speaker 03:
Obviously the reverse is also a suitable combination that would result the same hypothetical design.

[00:31:35] Speaker 03:
That's just not enough to preserve it.

[00:31:38] Speaker 03:
They didn't explain why the 209 was basically the same.

[00:31:41] Speaker 03:
They didn't explain what features of the 218 would be incorporated, and they didn't explain any motivation or reason or site to any evidence to show why, even if you did combine the references, that you would eliminate certain features that were there in their base reference, in their base primary reference, whether it's the 218 or the 209.

[00:31:58] Speaker 03:
That's just not an appropriate obviousness analysis.

[00:32:01] Speaker 03:
That's a legal issue, right there by itself, that even if you disagree with everything else, mandates reversal.

[00:32:09] Speaker 03:
I also want to point out something about the summary judgment standard.

[00:32:11] Speaker 03:
Judge Newman, you brought this up.

[00:32:14] Speaker 03:
We cited in our briefs that facts are reviewed for clear error.

[00:32:18] Speaker 03:
That was a mistake on our part.

[00:32:19] Speaker 03:
Facts are reviewed for clear error when there's been a trial or a bench trial.

[00:32:23] Speaker 03:
There's been no trial here.

[00:32:24] Speaker 03:
So the normal summary judgment standard applies.

[00:32:26] Speaker 03:
And the only thing the district judge is supposed to do is figure out whether there's a material dispute of fact.

[00:32:30] Speaker 03:
You can look at the LA Gear case for a detailed discussion of all of that.

[00:32:34] Speaker 03:
But it's evident that the district judge here, at each step 1B to the hypothetical to the secondary considerations, took fact issues away from the jury.

[00:32:43] Speaker 01:
So respectfully we submit this case needs to be reversed.

[00:32:52] Speaker 02:
Thank you.

[00:32:52] Speaker 02:
Thank you both.

[00:32:54] Speaker 01:
The case is taken under submission.

[00:33:00] Speaker 04:
As to the fees issue here, the district court has not given this court enough of

[00:33:11] Speaker 04:
Enough grounds to review.

[00:33:14] Speaker 04:
There's not a record that can be looked at with regard to most of the grounds that we raised.

[00:33:19] Speaker 04:
Notably, there's no discussion about the strength of the case.

[00:33:23] Speaker 04:
One of the patents that was held invalid is the 099 patent.

[00:33:27] Speaker 04:
It has not been appealed here because frankly there's no dispute that that patent is invalid.

[00:33:33] Speaker 04:
We responded that way initially before we even answered in the underlying case.

[00:33:38] Speaker 04:
We had a claim chart.

[00:33:40] Speaker 04:
We had prior art that was cited showing that the 099 patent was invalid.

[00:33:51] Speaker 04:
The 099 patent claims a protective screen on the front of the case.

[00:33:57] Speaker 04:
Otherwise, it's essentially the same as the other cases.

[00:34:00] Speaker 04:
The accused product, instead of having just a screen, has a screen with this big, thick plastic frame around it that then interacts with the other portions of the case

[00:34:08] Speaker 04:
looking at it as a design patent are just plainly dissimilar.

[00:34:14] Speaker 04:
As to the preservation of arguments issue, the quote that council just read is from several pages back in the brief.

[00:34:25] Speaker 02:
That's not cross appeal.

[00:34:27] Speaker 04:
I apologize.

[00:34:30] Speaker 04:
So again, the district court didn't

[00:34:33] Speaker 04:
consider all of our arguments with regard to the exceptionality of the case, notably failed to consider the strength of the case at the time it was filed, failed to consider the strength of the case later on as the case progressed.

[00:34:47] Speaker 04:
We had an RFA directed to Spigen that said that the two parts of the accused product that was accused of infringing the utility patent were glued together.

[00:34:58] Speaker 04:
All of the claims require that the parts be removably mounted.

[00:35:01] Speaker 04:
Once they're glued together, they're not removable.

[00:35:03] Speaker 04:
It's being tried to save their case by saying, well, you can break the glue bond.

[00:35:08] Speaker 04:
Breaking a bond is not removable.

[00:35:11] Speaker 04:
You couldn't reverse that then.

[00:35:13] Speaker 04:
It's essentially murder.

[00:35:14] Speaker 00:
Councilor, earlier you stated that the district court mixed up the cases.

[00:35:19] Speaker 00:
Did you already do that in your brief?

[00:35:21] Speaker 04:
It wasn't apparent to us in our brief.

[00:35:23] Speaker 04:
We submitted a brief regarding... In our brief here, I'm sorry.

[00:35:28] Speaker 04:
Here.

[00:35:29] Speaker 04:
I believe we discussed that.

[00:35:31] Speaker 04:
I don't have a specific quote off the top of my head, but I do believe that was discussed.

[00:35:42] Speaker 04:
I guess with that, we are done.

[00:35:50] Speaker 01:
Thank you.

[00:35:50] Speaker 01:
Again, thank you both.

[00:35:52] Speaker 01:
Your case is submitted.

[00:35:54] Speaker 01:
That includes our argued cases for this morning.

[00:36:00] Speaker 04:
The journalist will tomorrow morning.

[00:36:03] Speaker 01:
It's an o'clock AM.