[00:00:41] Speaker 03:
Okay, the next argued case is number 19, 1292, Spigen Korea Company against Oddspeaker Company.

[00:00:50] Speaker 03:
Ms.

[00:00:50] Speaker 03:
Kim.

[00:01:04] Speaker 01:
May I please the court?

[00:01:07] Speaker 01:
I speaker's evidence simply was not sufficient to support a finding of a grant of summary judgment on invalidity.

[00:01:14] Speaker 01:
Further, the district court cannot grant summary judgment saying there's no dispute over the facts where there is.

[00:01:23] Speaker 01:
The district court ignores.

[00:01:25] Speaker 02:
Counsel, what's non-obvious about exchanging a hinge draw for a sliding draw?

[00:01:32] Speaker 01:
Well, Your Honor,

[00:01:35] Speaker 01:
Sliding doors and hinge doors are known alternatives generally, but the 283 patent is not just a sliding door Versus a hinge door.

[00:01:48] Speaker 01:
It's that's not the entirety of one claim even a much less the entire patent and There are other structures that Needed to be addressed and they were not well of course if you're moving from a hinge to a

[00:02:03] Speaker 02:
to the sliding door, you need grooves.

[00:02:05] Speaker 02:
And those are in the reference describing the sliding door.

[00:02:11] Speaker 01:
True.

[00:02:12] Speaker 01:
But there are other structures unrelated to the sliding door, such as the raised wall, that there was a dispute about that the district court ignored.

[00:02:24] Speaker 01:
Another structure that is unrelated to the sliding door would be the

[00:02:30] Speaker 01:
the aperture that surrounds the raised wall.

[00:02:34] Speaker 01:
That is an element that was not addressed by a speaker at all in its summary judgment briefs.

[00:02:41] Speaker 02:
Well, we're talking about obviousness here, not lack of novelty.

[00:02:45] Speaker 02:
And these are pretty obvious features.

[00:02:50] Speaker 02:
What's distinctive about the back wall and the aperture?

[00:02:54] Speaker 01:
Well, they're not found in the prior art at all, and Ice Beaker never pointed to them.

[00:03:01] Speaker 01:
pointed to them in the prior art in its briefing.

[00:03:04] Speaker 01:
They actually made no mention of a surrounds limitation at all anywhere.

[00:03:10] Speaker 01:
And it was only at the appellate level where they brought in new arguments saying that surround means the same thing as snuggly fitting, but it's clear that on its face by the plain meaning of the two terms that they're not the same.

[00:03:32] Speaker 01:
Further.

[00:03:32] Speaker 01:
I speaker also didn't address.

[00:03:46] Speaker 01:
the aperture to form a storage compartment in claim 16, which also doesn't appear at all in the prior art.

[00:03:54] Speaker 01:
They pointed to an aperture, but that's where their analysis ended.

[00:03:58] Speaker 01:
They didn't complete the analysis for the entire limitation where it forms the storage compartment.

[00:04:07] Speaker 01:
I speakers only argument there was that claims 16 is encompassed in claims one and two but claims one and two don't include a Aperture that forms a storage compartment in claims one and two or in claims one and two the storage compartment is formed by a raised wall and raised wall is not included in claim 16 and

[00:04:32] Speaker 01:
Here again, the district court ignored that the prior art just doesn't disclose the claim element.

[00:04:45] Speaker 01:
There are a couple of limitations in claim 14 that were highly disputed.

[00:04:51] Speaker 01:
The first was a recess formed along the outer side of the raised wall.

[00:04:57] Speaker 01:
And the second was a protrusion formed along a boundary of the aperture.

[00:05:02] Speaker 01:
At this point, the district court had found that the stowaway disclosed the raised wall.

[00:05:06] Speaker 01:
So based on that finding, Spiegel's interpretation was that, well, then the recess was formed on the top surface of the raised wall.

[00:05:17] Speaker 01:
This was supported by iSpeaker's own evidence, the declaration of Timothy Kwan, who is an employee of Incipia, which is the company that makes the stowaway.

[00:05:28] Speaker 01:
Mr. Kwan's

[00:05:30] Speaker 01:
Declaration, which is at appendix 1644 and 1646 to 47.

[00:05:36] Speaker 01:
In his declaration, he said that the recess was located on, quote, the surface of the silicon core.

[00:05:47] Speaker 01:
The photos that were included in his declaration, which presumably were provided to him, had arrows pointing to

[00:05:58] Speaker 01:
a recess and also to a protrusion, but any annotations that denoted the raised wall or aperture or boundary of the aperture were added later for the summary judgment briefs and for the appellate briefs, and they were not included in Mr. Kwan's declaration.

[00:06:17] Speaker 01:
The fact that Mr. Kwan didn't at any point in his declaration indicate that there was a raised wall on the stowaway or

[00:06:26] Speaker 01:
that locate the protrusion along a boundary of the raised wall is telling.

[00:06:33] Speaker 01:
The recess itself is too shallow to meet the ordinary understanding of a side of a wall.

[00:06:41] Speaker 01:
It's less than half a millimeter.

[00:06:44] Speaker 01:
And although there is a protrusion on the hard frame of the stowaway,

[00:06:49] Speaker 01:
the position is arbitrary.

[00:06:51] Speaker 01:
It's closer to the other end of the hard frame than it is to the aperture, and it doesn't even follow along the same shape as the boundary.

[00:07:04] Speaker 01:
Seeing that the protrusion on the stowaway follows along

[00:07:10] Speaker 01:
the boundary of aperture removes all meaning from the word along by not requiring that there be any relationship between the protrusion and the boundary of the aperture other than general proximity.

[00:07:22] Speaker 01:
But along is not the same as near.

[00:07:25] Speaker 01:
And so there was a genuine dispute over these two limitations in claim 14, but instead

[00:07:36] Speaker 01:
the district court used hindsight to say that even if the elements weren't there in the prior art, it would just be obvious to Opposito to try to move it there.

[00:07:48] Speaker 01:
So it does fit the claim.

[00:07:55] Speaker 01:
In claim 10, there is a stowaway, or there is a depression for easy access to the items stored within the storage compartment, and the stowaway does not teach that depression.

[00:08:11] Speaker 01:
Claim one, upon which claim 10 depends, gives us a soft case which comprises a storage compartment.

[00:08:20] Speaker 01:
And then claim 10 tells us that the soft case further comprises a depression.

[00:08:26] Speaker 01:
This denotes that these are two separate structures and cannot be the same structure the way that iSpeaker has been claiming.

[00:08:34] Speaker 01:
The district court said that it was unclear about whether the Stow-Away meets the limitation of easy access at all.

[00:08:42] Speaker 01:
That's at Appendix 67.

[00:08:44] Speaker 01:
And the court's confusion may be in part because never in its summary judgment briefs did I speak or argue that the Stow-Away's depression actually does provide easy access.

[00:08:54] Speaker 01:
Instead, they just said that there was a depression, and therefore claim 10's limitation was satisfied.

[00:09:01] Speaker 01:
And the district court, in saying that it was unclear about it, should have looked to the specification for clarification of this vague term, which is what a posita would have done.

[00:09:15] Speaker 01:
But the district court did not do this.

[00:09:17] Speaker 01:
Instead, it relied on its layperson understanding and ignored the specification and drawings which Spiegel did point the district court to.

[00:09:26] Speaker 01:
And if the district court couldn't

[00:09:29] Speaker 01:
couldn't determine whether the prior art even teaches the required claim.

[00:09:34] Speaker 01:
It shouldn't have invalidated it.

[00:09:37] Speaker 02:
Counsel, this is a very close prior art here.

[00:09:41] Speaker 02:
There are all sorts of cell phone cases.

[00:09:46] Speaker 02:
I notice in your patent there were no pieces of prior art cited by the applicant.

[00:09:56] Speaker 02:
Everything was cited by the examiner, which seems very strange to me in a very close prior art.

[00:10:02] Speaker 02:
The Lawson reference has two, four, six columns of prior art.

[00:10:07] Speaker 02:
This is a very close prior art.

[00:10:10] Speaker 02:
And these aren't very substantial differences that you're urging on us.

[00:10:20] Speaker 01:
First, the patentee decided to rely on

[00:10:25] Speaker 01:
the PTO's prior art search.

[00:10:29] Speaker 01:
The PTO has the resources to conduct a much more thorough search than the patentee.

[00:10:35] Speaker 02:
Are you aware of the duty of disclosure?

[00:10:38] Speaker 01:
Yes.

[00:10:40] Speaker 01:
And it seems that the, the patentee, to the patentee it seemed that any prior art that it had found was, was encompassed by what the PTO had found.

[00:10:54] Speaker 01:
As far as Lawson and the other prior art, the only similarities are that they, well, at least for the stowaway and for Lawson, that they come in three pieces.

[00:11:07] Speaker 01:
They have a soft case, a hard structure of some sort on the outside and some sort of sliding cover or storage.

[00:11:15] Speaker 01:
And it's a phone case and it has storage.

[00:11:19] Speaker 01:
And that's pretty much where the similarities end.

[00:11:24] Speaker 01:
All of these, all of the prior art phone cases were bulkier than the 283

[00:11:34] Speaker 01:
patents invention and what made the 283 patents the invention of the 283 patent patentable was the fact that it was able to achieve having these all these the storage compartment three pieces for a phone case and still make somehow managed to have a structure that was slim compact and then also have a hidden compartment

[00:12:04] Speaker 01:
And this was unexpected because when you think of putting a raised wall onto the surface of a structure, you would think that would add bulk to it.

[00:12:21] Speaker 01:
But instead of making it bulkier, the patentee was able to make the structure even slimmer than other prior art.

[00:12:29] Speaker 01:
And speaking of the raised wall, there was a genuine dispute over whether there was a raised wall or not.

[00:12:36] Speaker 01:
The interpretation that I speaker and the district court give about raised wall reads raised out of the claim, leaving only wall.

[00:12:44] Speaker 01:
By saying that a raised wall and the side of a depression are essentially the same thing, they take meaning out of the word raised.

[00:12:53] Speaker 01:
The patent includes words like recess, indentation, depression throughout for various structures, but only uses raised for the walls.

[00:13:03] Speaker 01:
The patentee could have easily used the word depression for the storage compartment if he had so intended, but he didn't.

[00:13:10] Speaker 01:
He intentionally used the word raised, raised walls for that element.

[00:13:15] Speaker 01:
And that should have meaning.

[00:13:19] Speaker 01:
The district court was really fixated on this being simple technology.

[00:13:23] Speaker 01:
And so it was so simple that all the combinations and modifications that needed to be made were also simple.

[00:13:32] Speaker 01:
But simple technology doesn't mean that this is simple engineering or simple invention.

[00:13:37] Speaker 01:
And it doesn't mean that you can ignore the claim limitations, which have structural meaning and which depart from the prior art.

[00:13:50] Speaker 01:
Posita was defined as somebody who has a Bachelor of Science degree in mechanical engineering and one to two years of experience in working in the industry.

[00:14:00] Speaker 01:
And while that's not an incredibly high level of education and experience, it's still significantly more than what a layperson has and what a layperson would understand.

[00:14:12] Speaker 01:
If this technology really was so simple, then that definition of a Posita would not have been necessary.

[00:14:20] Speaker 01:
But the district court ignored all the distinctions about the terms in the prior art and read raised out of the claim, leaving and just said that, well, these are just changes in elevation that are obvious to try.

[00:14:35] Speaker 01:
But they're not just changes in elevation.

[00:14:37] Speaker 01:
They're completely different structures altogether.

[00:14:42] Speaker 03:
Thank you.

[00:14:43] Speaker 03:
We'll save you rebuttal time.

[00:14:49] Speaker 03:
Mr. Eisenberg.

[00:14:51] Speaker 00:
Good morning, Honors.

[00:14:53] Speaker 00:
It may please the Court.

[00:14:55] Speaker 00:
There was a lot of discussion during Appellant's argument about raised wall and depression.

[00:15:02] Speaker 00:
The answer to the question is very simple.

[00:15:04] Speaker 00:
Relative to the depression, there's a raised wall.

[00:15:07] Speaker 00:
Relative to the raised wall, there's a depression.

[00:15:10] Speaker 00:
Nothing in the claims require anything different.

[00:15:13] Speaker 00:
And all that the appellant has done over and over again is said, well, this is what we think the claims mean.

[00:15:22] Speaker 00:
There's something very important missing in appellant's analysis here and before the district court, and that's claim construction.

[00:15:31] Speaker 00:
On appeal, there are three terms for which the appellant has asked for claim construction.

[00:15:36] Speaker 00:
Grooves, sliding means, and comprises grooves.

[00:15:41] Speaker 00:
Those are the only three issues.

[00:15:42] Speaker 00:
None of those touch upon any of the issues for your honors to deal with here today.

[00:15:49] Speaker 00:
Instead, these are the terms that the appellant has said make their claims different, but without telling us why, what they mean, giving us an analysis based on plaid and ori meaning, the specification, the prosecution history, anything at all.

[00:16:06] Speaker 00:
Those terms include frame.

[00:16:08] Speaker 00:
raised wall, snugly fitting with an outer side, opposite side, depression.

[00:16:14] Speaker 00:
It goes on and on.

[00:16:15] Speaker 00:
For none of those, does plaintiff want to put pen to paper and say, here's what we think these claims mean?

[00:16:22] Speaker 00:
And there's an important reason for that absence from their briefing here.

[00:16:27] Speaker 00:
It hurts them on infringement on every one of those issues.

[00:16:32] Speaker 00:
Now, a key one is snugly fitting.

[00:16:34] Speaker 00:
It appears in claim 2.

[00:16:37] Speaker 00:
A very similar requirement is in claim 16.

[00:16:41] Speaker 00:
Claim 18, I believe, surrounds.

[00:16:44] Speaker 00:
If you look at appendix at 431, there is an image from their infringement contentions about what they think snuggly fitting means.

[00:16:55] Speaker 00:
And it's the same exact image that they provide for the other claim that refers to the aperture being around.

[00:17:05] Speaker 00:
This is also in appellee's response below here at 24 and also in the appendix at 1263.

[00:17:15] Speaker 00:
And what you can see there is what they point to in the aperture is on top of or away from every single one of the supposed raised walls in the accused product.

[00:17:29] Speaker 00:
And this court has said over and over again,

[00:17:31] Speaker 00:
If you are going to take an incredibly broad view of your claims for infringement, that also must be stuck with you for purposes of validity.

[00:17:43] Speaker 00:
That's what the appellant has done here.

[00:17:45] Speaker 00:
And a great case on this from just last year was 01 Communique Lab versus Citrix, 889 F3rd, 735.

[00:17:55] Speaker 00:
And what the court said is a defendant is permitted to argue

[00:18:00] Speaker 00:
that if the claim term must be broadly interpreted to read on an accused device, then this same broad construction will read on the prior art.

[00:18:09] Speaker 00:
What they've done in each instance is take very minor details and said, well, those are on our claims, and that's why the prior art's not good enough.

[00:18:19] Speaker 00:
And in each example, what they've also done is, for purposes of infringement, effectively read that requirement out of the claim

[00:18:28] Speaker 00:
in order to have any basis to proceed on infringement.

[00:18:32] Speaker 00:
Now, the district court here, based on the clear and validity of the claims, did not reach the issue of infringement.

[00:18:40] Speaker 00:
And that's fine for all purposes here today.

[00:18:45] Speaker 00:
But that does not mean that this court should ignore the positions that the plaintiff took below, and the appellant is still doing here.

[00:18:54] Speaker 00:
It cannot be that somewhat near,

[00:18:57] Speaker 00:
which is what they have for infringement of snugly fitting is good enough.

[00:19:01] Speaker 00:
And they did that in both claim 14 and in claim two is good enough.

[00:19:06] Speaker 00:
But when it comes to validity, nope, it's got to be touching and it's got to be touching the outside surface.

[00:19:12] Speaker 00:
That's not how litigation is supposed to go.

[00:19:14] Speaker 00:
It's a game.

[00:19:15] Speaker 00:
It's a game for the appellant to see how far they can go before they get caught in one side of the other of their analysis.

[00:19:23] Speaker 00:
And it should stop here.

[00:19:24] Speaker 00:
There's no reason to send it back for us to, again, discuss these minor modifications which they harp on when all of them are within the prior art as a whole.

[00:19:36] Speaker 00:
And it does not, I mean, going back to KSR,

[00:19:40] Speaker 00:
KSR is very clear.

[00:19:41] Speaker 00:
We look at the scope and content of the prior art.

[00:19:44] Speaker 00:
Below, each and every limitation was addressed.

[00:19:48] Speaker 00:
For the most part, if you go to the statement of undisputed facts and their response, those issues were admitted for claim three for

[00:20:00] Speaker 00:
For claim four, for claim five, there was one issue about whether it was supporting, and again, based on claim construction.

[00:20:08] Speaker 00:
For claim eight, admitted.

[00:20:10] Speaker 00:
For claim 10, the only argument raised was whether the depression and raised wall were the same or different, and also whether easy access was provided.

[00:20:24] Speaker 00:
Well, this was addressed at oral arguments.

[00:20:27] Speaker 00:
And what I said there, what I'll say here is, if you made the depression a little bit narrower, it would hold the card tighter, and that would provide for less easy access.

[00:20:37] Speaker 00:
It's a relative term.

[00:20:39] Speaker 00:
Yes, of course, you could always make access harder.

[00:20:41] Speaker 00:
The depression makes it easier as structured relative to what it would otherwise be.

[00:20:46] Speaker 00:
This is not rocket science.

[00:20:48] Speaker 00:
For claim 13, there's no dispute.

[00:20:52] Speaker 00:
This is just about the materials used.

[00:20:56] Speaker 00:
For claim 17, no dispute, just requires a pair of grooves.

[00:21:02] Speaker 00:
For claim 19, it's basically the same as claim 3, indentation and complements, admitted that it's in the prior art, and long recess and protrusions, claim 22, directly in the prior art, admitted, undisputed in the statement of facts,

[00:21:17] Speaker 00:
If you go through the statement of facts, you will see that basically every limitation, other than the few mentioned here, were undisputed in the record.

[00:21:26] Speaker 00:
And the sole question was, under KSR, with those undisputed elements, and Pelle having gone through and identified in detail the differences, we talked about the ordinary skill, which is relatively low, and there's no dispute.

[00:21:44] Speaker 00:
Judge Carter below found that the technology is very simple.

[00:21:50] Speaker 00:
What he said was, as a matter of law, which is what obviousness is based on, there's no issue here that requires jury intervention, requires a jury to decide what's a raised wall, what's a depression.

[00:22:04] Speaker 00:
There's no real dispute, and there's no claim construction under which a dispute would be raised.

[00:22:10] Speaker 00:
The last issue under KSR is secondary considerations.

[00:22:14] Speaker 00:
On appeal, there was a thick stack of information provided to the court, supposedly showing secondary considerations.

[00:22:22] Speaker 00:
One big problem with all of that evidence was it was submitted after all but claim 14 were already invalidated.

[00:22:34] Speaker 00:
They didn't tell you that.

[00:22:35] Speaker 00:
But that's an important fact.

[00:22:37] Speaker 00:
You cannot supplement the record after the decision is made and say, OK, here's our secondary considerations now that we've lost.

[00:22:45] Speaker 00:
None of that material goes to claim 14 at all.

[00:22:54] Speaker 00:
And finally the heavy bulky not slim You can read the claims all you want front to back back to front None of that stuff is in the claims and that's what we're supposed to be here discussing.

[00:23:08] Speaker 00:
That's What a patent what's with the ownership interest is that's what they assert.

[00:23:14] Speaker 00:
That's what we have to defend When you read limitations in the claim from the specification, we all know that's improper

[00:23:21] Speaker 00:
We all know that that's not how claim construction is done, even if they had done claim construction.

[00:23:26] Speaker 00:
Instead, we're just looking at high-level differences that they say are between the prior art and their preferred embodiment and their commercial product.

[00:23:37] Speaker 00:
And throughout the process below, that was their process.

[00:23:41] Speaker 02:
You haven't identified the prior art.

[00:23:43] Speaker 02:
Presumably, you're talking about stowaway and loss.

[00:23:46] Speaker 00:
Yes, Your Honor, there were others too, mostly for the purpose of showing the interchangeability of a hinged door with a sliding door.

[00:23:54] Speaker 00:
Lots of prior art showed both.

[00:23:56] Speaker 00:
And in fact, the appellant admitted that there was a reason at the time that someone would have had to use a sliding door instead of a hinge door.

[00:24:10] Speaker 00:
So as opposed to in most KSR cases, that's the crux of the issue.

[00:24:15] Speaker 00:
Would someone have had reason?

[00:24:17] Speaker 00:
Here, that's not even where the fight is.

[00:24:22] Speaker 03:
Unless there are any other questions, I'm glad to take my seat.

[00:24:55] Speaker 01:
Your Honor, first to discuss claim construction, we did bring those three claim limitations for construction, but only in case this court decides to remand.

[00:25:15] Speaker 01:
And we thought it would be helpful if this court does remand to have an opinion on the construction of those claim terms.

[00:25:24] Speaker 01:
And the district court below didn't reach infringement yet, so we didn't feel the need to, at this point, to really go into the claim construction for those terms.

[00:25:51] Speaker 01:
Speaker so you were leaving you were leaving the claim construction to us and you were leaving finding prior off to the patent office Well no, I think that we have sufficiently argued claim construction for those terms And I think that we had sufficiently Outlined them in in our summary judgment briefs as well but we have

[00:26:19] Speaker 01:
we don't believe that the district court can correctly construe them.

[00:26:25] Speaker 01:
In particular, with sliding means, the district court confined the claim construction to one embodiment by saying that the roofs and rails can only slide in a vertical fashion when the specification clearly states that

[00:26:45] Speaker 01:
they can go horizontally as well.

[00:26:47] Speaker 01:
And the drawing in figure 12b would also show that the grooves and rails would have to go and slide horizontally in order for the embodiment of figure 12b to exist.

[00:27:04] Speaker 01:
And as far as the other structures, iSpeaker says that these are just minor structures, but they're not minor structures.

[00:27:12] Speaker 01:
They are structures that, when taken together with the independent claims, provide to the invention the benefits that we've talked about being slim and compact and lightweight and having a hidden storage compartment.

[00:27:35] Speaker 01:
What Ice Speaker doesn't seem to really talk about is that the scope and content of the prior art was highly disputed.

[00:27:46] Speaker 01:
And so therefore, summary judgment should not have been granted in this case.

[00:27:51] Speaker 01:
And Ice Speaker doesn't say, no, the prior art does disclose the limitations that we've said aren't in the prior art, such as,

[00:28:05] Speaker 01:
the surrounds limitation and the aperture to form the storage compartment.

[00:28:08] Speaker 01:
Those simply don't exist in the prior art, and iSpeaker didn't point to them at summary judgment and doesn't point to them here at appeal.

[00:28:21] Speaker 01:
The district court simply ignored that those prior art elements did not exist, or that those claim limitations did not exist in the prior art.

[00:28:29] Speaker 01:
And the district court ignored that

[00:28:35] Speaker 01:
iSpeaker didn't have any evidence to support its arguments that the prior art taught certain claim limitations, such as the structurally supporting, how the protuberance supposedly structurally supports and reinforces the indentation on the hard protective frame.

[00:28:55] Speaker 01:
That's a conclusory statement that iSpeaker gave about the stowaway.

[00:29:00] Speaker 01:
But it had no evidence to support that conclusion.

[00:29:04] Speaker 01:
And Spiegel has contested that the protuberance on the Stoway does not structurally support and reinforce the indentation.

[00:29:17] Speaker 01:
In fact, Spiegel says they have no relationship whatsoever.

[00:29:20] Speaker 01:
But the district court invalidated the claim anyway, saying that it was Spiegel's burden to prove that the structures didn't

[00:29:29] Speaker 01:
what it said.

[00:29:31] Speaker 01:
But it was iSpeaker's burden to prove that in the first place.

[00:29:36] Speaker 01:
It's not Spigen's burden to prove the inverse.

[00:29:40] Speaker 01:
iSpeaker needed to show evidence that the prior art did actually fulfill the, satisfy the claim limitations.

[00:29:53] Speaker 01:
And it did not here.

[00:29:56] Speaker 01:
And the district court

[00:29:57] Speaker 01:
ignored that there were disputes over the raised wall, over structures related to the raised wall.

[00:30:06] Speaker 01:
And it's precisely for these reasons that this court should reverse invalidating.

[00:30:16] Speaker 03:
Thank you.

[00:30:16] Speaker 03:
Thank you both.

[00:30:17] Speaker 03:
The case is taken under submission.