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    Catalyst v. Elago - Order Denying SJ

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    Sarah Burstein
    This order denies the defendants' motion for summary judgment on the plaintiff's patent infringement claim without prejudice as premature. The order notes that claim construction must occur before determining infringement. The parties have submitted claim construction briefs but a hearing and order are still pending. Discovery is also ongoing. The order finds that summary judgment is not appropriate until after claim construction and allows the defendants to refile their motion later.

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    Catalyst v. Elago - Order Denying SJ

    Uploaded by

    Sarah Burstein
    51 views3 pages
    This order denies the defendants' motion for summary judgment on the plaintiff's patent infringement claim without prejudice as premature. The order notes that claim construction must occur before determining infringement. The parties have submitted claim construction briefs but a hearing and order are still pending. Discovery is also ongoing. The order finds that summary judgment is not appropriate until after claim construction and allows the defendants to refile their motion later.

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    Catalyst v. Elago - Order Denying SJ

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    This order denies the defendants' motion for summary judgment on the plaintiff's patent infringement claim without prejudice as premature. The order notes that claim construction must occur before determining infringement. The parties have submitted claim construction briefs but a hearing and order are still pending. Discovery is also ongoing. The order finds that summary judgment is not appropriate until after claim construction and allows the defendants to refile their motion later.

    Copyright:

    © All Rights Reserved
    Download as PDF, TXT or read online from Scribd
    Download as pdf or txt
    51 views3 pages

    Catalyst v. Elago - Order Denying SJ

    Uploaded by

    Sarah Burstein
    This order denies the defendants' motion for summary judgment on the plaintiff's patent infringement claim without prejudice as premature. The order notes that claim construction must occur before determining infringement. The parties have submitted claim construction briefs but a hearing and order are still pending. Discovery is also ongoing. The order finds that summary judgment is not appropriate until after claim construction and allows the defendants to refile their motion later.

    Copyright:

    © All Rights Reserved
    Download as PDF, TXT or read online from Scribd
    Download as pdf or txt
    of 3

    Case 3:22-cv-00536-LL-MDD Document 46 Filed 04/24/23 PageID.

    514 Page 1 of 3

    1
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    8 UNITED STATES DISTRICT COURT
    9 SOUTHERN DISTRICT OF CALIFORNIA
    10
    11 CATALYST LIFESTYLE LIMITED, Case No.: 22cv536-LL-MDD
    12 Plaintiff,
    ORDER DENYING MOTION FOR
    13 v. SUMMARY JUDGMENT WITHOUT
    PREJUDICE
    14 ELAGO CO., LTD and ELYEL
    CORPORATION,
    15 [ECF No. 44]
    Defendants.
    16
    17
    ELAGO CO., LTD and ELYEL
    18 CORPORATION,
    19 Counter Claimants,
    20 v.
    21 CATALYST LIFESTYLE LIMITED,
    22 Counter Defendant.

    23
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    In the present action, Plaintiff Catalyst Lifestyle Limited (“Plaintiff”) asserts, among
    25
    other claims, a claim for infringement of United States Design Patent No. D794,617 (“the
    26
    ’617 Patent”) against Defendants Elago Co., Ltd and Elyel Corporation (collectively
    27
    “Defendants”). ECF No. 1, Complaint (“Compl.”) ¶¶ 14–17, 74–78. Specifically, Plaintiff
    28

    1
    22cv536-LL-MDD
    Case 3:22-cv-00536-LL-MDD Document 46 Filed 04/24/23 PageID.515 Page 2 of 3

    1 alleges that Defendants have made, used, imported, offered to sell, and/or sold waterproof
    2 headphone case products that infringe the ’617 Patent. See id. ¶¶ 40-70, 74-78.
    3 On April 19, 2023, Defendants filed a Motion for Partial Summary Judgment
    4 (“Motion”). ECF No. 44. Defendants move for summary judgment on Plaintiff’s patent
    5 infringement claim, arguing that the accused products do not infringe the ’617 Patent as a
    6 matter of law. See ECF No. 44-1 at 10.
    7 The ’617 Patent is a design patent. United States Design Patent No. D794,617
    8 (issued Aug. 15, 2017). “Determining whether a design patent has been infringed is a two-
    9 part test: (1) the court first construes the claim to determine its meaning and scope; (2) the
    10 fact finder then compares the properly construed claim to the accused design.” Lanard
    11 Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337, 1341 (Fed. Cir. 2020); see Catalina Lighting,
    12 Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1286 (Fed. Cir. 2002) (“As with utility patents,
    13 determining whether a design patent is infringed is a two-step process. First, the court must
    14 construe the design patent’s claim.”). In fact, Defendants acknowledge in the Motion that
    15 the Court must first construe the claims of the ’617 Patent in order to engage in the
    16 necessary infringement analysis. See ECF No. 44-1 at 10 (“After a design patent has been
    17 construed based on the figures therein, the next step is to compare the patented and accused
    18 design for overall visual similarity” (footnote and citation omitted)).
    19 On November 9, 2022, the Court issued scheduling orders for the action. ECF Nos.
    20 19, 20. Pursuant to the deadlines set forth in those scheduling orders, the parties filed their
    21 opening claim construction briefs on April 4, 2023. ECF Nos. 40, 41. The parties’
    22 responsive claim construction briefs are due by May 2, 2023. See ECF No. 19 at 2. A claim
    23 construction hearing is currently scheduled for July 27, 2023, at 10:00 a.m. See ECF No.
    24 45. As such, the proper construction of the claims of the ’617 Patent is currently pending
    25 before the Court. In light of this, Defendants’ Motion is premature. See, e.g., Ameranth,
    26 Inc. v. Papa John’s USA, Inc., 946 F. Supp. 2d 1049, 1058 (S.D. Cal. 2013) (denying
    27 motion for summary judgment regarding patent infringement without prejudice as
    28 premature where claim construction had not yet occurred); Alpha One Transporter, Inc. v.

    2
    22cv536-LL-MDD
    Case 3:22-cv-00536-LL-MDD Document 46 Filed 04/24/23 PageID.516 Page 3 of 3

    1 Perkins Motor Transport, Inc., 2014 WL 3002399, at *4 (S.D. Cal. July 1, 2014) (same);
    2 Etagz, Inc. v. Quicksilver, Inc., 2012 WL 2135497, at *3 (C.D. Cal. June 11, 2012)
    3 (denying summary judgment motion as “premature,” and noting that “[n]umerous courts
    4 have held that the inquiry of whether two claims are identical should not occur until after
    5 formal claim construction.”). Further, discovery in this action is still ongoing and has not
    6 been completed. Generally speaking, “summary judgment [must] be refused where the
    7 nonmoving party has not had the opportunity to discover information that is essential to his
    8 opposition.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 n.5 (1986).
    9 Given the current posture of this case and the patent infringement cause of action,
    10 Defendants fail to address why summary judgment would be appropriate before the parties
    11 have had the opportunity to present their arguments and evidence at the scheduled claim
    12 construction hearing and before the Court’s claim construction order. Accordingly, the
    13 Court DENIES WITHOUT PREJUDICE Defendants’ Motion for Partial Summary
    14 Judgment as premature. Defendants may refile their motion for summary judgment
    15 following the issuance of the Court’s claim construction order in this action.
    16 IT IS SO ORDERED.
    17 Dated: April 24, 2023
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    22cv536-LL-MDD

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