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UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA


CIVIL MINUTES - GENERAL
Date

Case No.

CV 14-01918 JVS (JCGx)

Title

Dzinesquare, Inc. V. Armano Luxury Alloys, Inc., et al.

Present: The
Honorable

December 22, 2014

James V. Selna
Karla J. Tunis

Sharon Seffens

Deputy Clerk

Court Reporter

Attorneys Present for Plaintiffs:

Attorneys Present for Defendants:

Francis Ryu

James Lowe

Proceedings:

Defendant Armano Luxury Alloys Inc.s Motion for Partial


Summary Judgment as to Invalidity (Fld 11-12-14)

Cause called and counsel make their appearances. The Courts tentative
ruling is issued. Counsel submit on the Courts tentative ruling. The Court
GRANTS the above referenced motion for partial summary jdugment and rules in
accordance with the tentative ruling as follows:
Among the eight claims in its Complaint, Plaintiff Dzinesquare, Inc., dba 2 Crave
(2 Crave) asserts a patent infringement claim against Defendant Armano Luxury
Alloys, Inc. (Armano) based on Armanos alleged infringement of U.S. Patent No.
D689,809 S (809 Patent). (Compl., Docket (Dkt.) No. 1.) Armano now moves for
summary judgment of 2 Craves patent infringement claim on the basis that the 809
Patent is invalid under 35 U.S.C. 102(a). (Mot., Dkt. No. 29-1.) In its Motion, Armano
also makes a request under Federal Rule of Civil Procedure 36(a). (Id. at 911.) 2 Crave
opposes. (Oppn, Dkt. No. 31.) Armano has replied. (Reply, Dkt. No. 32.) In its Reply,
Armano also seeks sanctions against 2 Crave. (Id. at 1820.) Armano also requests that
the Court take judicial notice of four exhibits. (Request for Judicial Notice (RJN), Dkt.
No. 29-3.) 2 Crave does not oppose this request.
For the following reasons, the Court GRANTS Armanos request for judicial
notice and GRANTS Armanos partial motion for summary judgment. The Court does
not reach a conclusion on Armanos Rule 36(a) request and DENIES Armanos request
for sanctions.
I.

Background

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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Date

Case No.

CV 14-01918 JVS (JCGx)

Title

Dzinesquare, Inc. V. Armano Luxury Alloys, Inc., et al.

December 22, 2014

2 Crave manufactures and sells to American consumers various types of after


market wheels for motor vehicles. (Compl., 45.) One of those wheels is the No. 21
Wheel. (Declaration of Emily Skrdla (Skrdla Decl.), Ex. 3, Dkt. No. 29-8.) The No.
21 Wheel is advertised and displayed in 2 Craves 2011 Catalog. (Id.) 2 Crave also sold
the No. 21 Wheel as early as October 28, 2011, specifically to another company called
Wheel Resource. (Id. at Ex. 2.) In November 2011, Wheel Resource and another
company called PDK Wheels & Auto Accessories (PDK Wheels) advertised the No. 21
Wheel on their company webpages. (Id. at Exs. 45.) On February 28, 2012, 2 Crave
posted pictures of the No. 21 Wheel on its Facebook webpage from an open house event
in La Mirada, California. (Id. at Exs. 67.)
On March 19, 2013, Dzinesquare, Inc. filed an application for the 809 Patent, a
design patent which was granted on September 17, 2013. (Compl., Ex. A (809 Patent).)
The only claim in the design patent is [t]he ornamental design for a vehicle wheel, as
shown and described. (809 Patent, line 57.) The 809 Patent includes two figures
displaying a wheel with the patented design. (Id. at Figures 12.)
On November 18, 2013, 2 Craves counsel sent a cease and desist letter to Armano
which alleged that Armano was manufacturing and selling wheels that incorporated three
protected designs. (Skrdla Decl., Ex. 1.) The letter listed Design No. 21: Patent number
D689,809S as one of those protected designs. (Id.) 2 Crave filed a Complaint against
Armano in this Court on March 13, 2014 and alleged eight claims, including a claim of
infringement of the 809 Patent. (Compl., 4448.) Armano now moves this Court for
summary judgment of only 2 Craves patent infringement claim.
II.

Legal Standard
A.

Summary Judgment

Summary judgment is appropriate where the record, read in the light most
favorable to the nonmovant,1 indicates that there is no genuine dispute as to any material
1

In determining any motion for summary judgment or partial


summary judgment, the Court may assume that the material facts as
claimed and adequately supported by the moving party are admitted
to exist without controversy except to the extent that such
material facts are (a) included in the Statement of Genuine
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Date

Case No.

CV 14-01918 JVS (JCGx)

Title

Dzinesquare, Inc. V. Armano Luxury Alloys, Inc., et al.

December 22, 2014

fact and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a)2;
see also MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d
1369, 1373 (Fed. Cir. 2005). The burden initially is on the moving party to demonstrate
an absence of a genuine dispute of material fact. Id.; see also Celotex Corp. v. Catrett,
477 U.S. 317, 32224 (1986). If, and only if, the moving party meets its burden, then the
non-moving party must produce specific evidence to rebut the moving partys claim and
create a genuine dispute of material fact. MEMC, 420 F.3d at 1373; see also Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). If the non-moving party meets this
burden, then the motion will be denied. See generally, Bose Corp. v. JBL, Inc., 274 F.3d
1354, 1360 (Fed. Cir. 2001).
B.

Invalidity

To obtain summary judgment of invalidity, a moving party must overcome the


statutory presumption of 35 U.S.C. 282 that issued patent claims are valid. Section 282
mandates that [a] patent shall be presumed valid and that [t]he burden of establishing
invalidity of a patent or any claim thereof shall rest on the party asserting such
invalidity. 35 U.S.C. 282. A party seeking to overcome the statutory presumption and
establish the invalidity of an issued patent claim must prove the invalidity by clear and
convincing evidence. Apple Computer, Inc. v. Articulate, Sys., Inc., 234 F.3d 14, 26
(Fed. Cir. 2000).
A patent is invalid for anticipation if a single prior art reference discloses each
and every limitation of the claimed invention. Schering Corp. v. Geneva Pharm., Inc.,
339 F.3d 1373, 1377 (Fed. Cir. 2003) (internal citation omitted). Anticipation under 35
U.S.C. 102 is a question of fact, but it may be resolved on summary judgment if no
genuine dispute of material fact exists. OSRAM Sylvania, Inc. v. Am. Induction Techs.,
Inc., 701 F.3d 698, 704 (Fed. Cir. 2012) (internal citation omitted). Moreover,
[s]ummary judgment is proper if no reasonable jury could find that the patent is not
Disputes and (b) controverted by declaration or other written
evidence filed in opposition to the motion. L.R. 56-3.
2

Rule 56 was amended in 2010. Subdivision (a), as amended,


carries forward the summary-judgment standard expressed in
former subdivision (c), changing only one word genuine issue
becomes genuine dispute. Fed. R. Civ. P. 56, Notes of Advisory
Committee on 2010 amendments.
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Date

Case No.

CV 14-01918 JVS (JCGx)

Title

Dzinesquare, Inc. V. Armano Luxury Alloys, Inc., et al.

December 22, 2014

anticipated. Id. (citing Zenith Elecs. Corp. v. PDI Commcn Sys., Inc., 522 F.3d 1348,
135657 (Fed. Cir. 2008)).
III.

Discussion

Armano requests that the Court take judicial notice of four exhibits submitted with
the Declaration of Emily Skrdla, more specifically Exhibits 4 through 7. (RJN; Skrdla
Decl., Dkt. No. 29-529-12.) The Court will first address this request before addressing
Armanos motion for partial summary judgment and the two related issues of discovery
and sanctions that arose in the parties briefs.
Armanos Request for Judicial Notice

A.

Armano requests that the Court take judicial notice of four exhibits, including: (1)
a PDK Wheels webpage dated November 4, 2011 showing 2 Craves No. 21 Wheel; (2) a
Wheel Resource webpage dated November 2, 2011 showing 2 Craves No. 21 Wheel; (3)
a photo on 2 Craves Facebook website depicting 2 Craves No. 21 Wheel on a vehicle,
posted on February 28, 2012; (4) a photo on 2 Craves Facebook website depicting 2
Craves No. 21 Wheel with a female model, posted on February 28, 2012. (RJN; Skrdla
Decl., Exs. 47.) 2 Crave does not oppose this request.
Pursuant to Federal Rule of Evidence 201(b), the Court may take judicial notice of
a fact not subject to reasonable dispute because it (1) is generally known within the trial
courts territorial jurisdiction; or (2) can be accurately and readily determined from
sources whose accuracy cannot reasonably be questioned.
Armano obtained Exhibits 4 and 5 through the Internet Archive, which is a
website that provides access to a digital library of Internet sites. (Affidavit of
Christopher Butler (Butler Aff.), 2, Dkt. No. 29-4.)3 Armano used a service provided
by the Internet Archive called the Wayback Machine to obtain a version of the PDK
Wheels webpage dated November 4, 2011, and a version of the Wheel Resource webpage
dated November 2, 2011. (Skrdla Decl., 517.) Butlers Affidavit confirms the

According to his Affidavit, Christopher Butler is the


office manager at Internet Archive. (Butler Aff., 1.)
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Date

Case No.

CV 14-01918 JVS (JCGx)

Title

Dzinesquare, Inc. V. Armano Luxury Alloys, Inc., et al.

December 22, 2014

accuracy of the dates of Exhibits 4 and 5. (Butler Aff., 56, Ex. A.)4 The Court thus
takes judicial notice of Exhibits 4 and 5 pursuant to Federal Rule of Evidence 201. See,
e.g., Tompkins v. 23andMe, Inc., 2014 U.S. Dist. LEXIS 88068 at *7 n.1 (N.D. Cal. June
25, 2014) ([T]he Court takes judicial notice of the Internet Archive (http://archive.org)
version of 23andMes website as of November 20, 2013, the full version of the website
archived . . . .); In re Methyl Tertiary Butyl Ether (MTBE) Products Liability Litig.,
2013 WL 6869410 at *4 n.65 (S.D.N.Y. Dec. 30, 2013) (Courts have taken judicial
notice of the contents of internet archives.).
Exhibits 6 and 7 are screenshots of photos posted on 2 Craves Facebook webpage
on February 28, 2012 from a 2 Crave open house event in La Mirada, California. The
Court also takes judicial notice of these exhibits pursuant to Federal Rule of Evidence
201. See, e.g., I.B. ex rel. Fife v. Facebook, Inc., 905 F. Supp. 2d 989, 998 (N.D. Cal.
2012) (taking judicial notice of screen shots from Facebooks website because the facts
could be accurately and readily determined from sources who accuracy cannot
reasonably be questioned pursuant to Federal Rule of Evidence 201).
The Court thus GRANTS Armanos request for judicial notice in its entirety.
Armanos Motion for Partial Summary Judgment

B.

Armano moves for summary judgment of 2 Craves patent infringement claim on


the basis that the 809 Patent is invalid pursuant to 35 U.S.C. 102(a). (Mot., 39.)
More specifically, Armano argues that the 809 Patent was anticipated by prior art
because 2 Craves No. 21 Wheel, which allegedly embodies the design in the 809 Patent,
was on sale, in public use, and described in printed publications more than one year prior
to the filing date of the 809 Patent. (Id.)
Under 35 U.S.C. 102(a)(1), a patent is invalid if the the claimed invention was
4

Butler describes in his Affidavit that the Internet


Archive assigns a URL on its site to the archived files in a
format which indicates the date upon which the webpage was
archived. (Id. at 5.) The dates indicated in the URLs for the
PDK Wheels webpage and the Wheel Resource webpage in Exhibit A of
Butlers Affidavit match the dates which Armano assigns to those
webpages in its Exhibits and in Skrdlas Declaration. (Id. at
Ex. A; Skrdla Decl., Exs. 45.)
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Date

Case No.

CV 14-01918 JVS (JCGx)

Title

Dzinesquare, Inc. V. Armano Luxury Alloys, Inc., et al.

December 22, 2014

patented, described in a printed publication, or in public use, on sale, or otherwise


available to the public before the effective filing date of the claimed invention.
However, [a] disclosure made [by the inventor or joint inventor] one year or less before
the effective filing date of a claimed invention shall not be prior art and will not render
the patent invalid. 35 U.S.C. 102(b)(1).
The effective filing date for the 809 Patent is March 19, 2013. (809 Patent, line
22.) Thus, Armano must show by clear and convincing evidence that 2 Crave made
disclosures of the 809 Patent prior to March 19, 2012 in order to show that the
102(b)(1) exception does not apply and that the 809 Patent is invalid. Armano argues
that 2 Craves No. 21 Wheel embodies the design in the 809 Patent and that the No. 21
Wheel was sold, in public use, and described in printed publications before March 19,
2012. (Mot., 1:315, 3:2427.) The Court must first determine whether a genuine
dispute exists as to the fact that 2 Craves No. 21 Wheel embodies the design in the 809
Patent. Then the Court will determine whether a genuine dispute exists as to the fact that
No. 21 Wheel was disclosed more than a year prior to March 19, 2012.
Before proceeding with the analysis, the Court must first note that 2 Crave did not
file a Statement of Genuine Disputes with its Opposition brief as is required by Local
Rule 56-2. Moreover, 2 Crave failed throughout its brief to cite to materials in the record
to show a fact is genuinely disputed, as is required by Federal Rule of Civil Procedure
56(c)(1)(A). As such, pursuant to Local Rule 56-3, the Court assumes that the material
facts as claimed and adequately supported by Armano are admitted to exist without
controversy.
1.

The No. 21 Wheel Embodies the Design in the 809 Patent

2 Crave claims that a genuine dispute exists as to whether the versions [of the No.
21 Wheel] sold before the critical date of March 19, 2012 were in fact the embodiment of
the 809 Patent. (Oppn, 5:810.) However, 2 Crave neither submits nor cites any
evidence to show that such a dispute exists. Armano, on the other hand, cites clear and
convincing evidence that no genuine dispute exists.
First, 2 Crave admits in its own cease and desist letter it sent to Armano on
November 18, 2013 that the No. 21 Wheel embodies the 809 Patent. (Skrdla Decl., Ex.
1.) The outset of the letter states:
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Date

Case No.

CV 14-01918 JVS (JCGx)

Title

Dzinesquare, Inc. V. Armano Luxury Alloys, Inc., et al.

December 22, 2014

[2 Crave] has been advised that [Armano] is currently


manufacturing and selling wheels that incorporate three of our
clients protected designs:
Design No. 21: Patent number D689, 809 S.
(Id.) Second, 2 Crave admits in its infringement contentions that it identifies its product
known as Wheel No. 21 as a product that incorporates at least one of the asserted claims
of the [809] Patent. However, the 809 Patent only asserts one claim, namely [t]he
ornamental design for a vehicle wheel, as shown and described. Thus, if 2 Crave admits
that the No. 21 wheel incorporates at least one of the asserted claims of the 809 Patent, 2
Crave is essentially admitting that the No. 21 Wheel incorporates the only claim of the
809 Patent.
The Court cannot say that a genuine dispute exists simply because 2 Crave alleges
that one exists. Because 2 Crave fails to cite any evidence that addresses Armanos
assertion of fact, the Court considers it undisputed that the No. 21 Wheel embodies the
809 Patents design. See Fed. R. Civ. P. 56(e)(2).
2.

Armano Has Met its Burden to Show that the 809 Patent is
Invalid

Armano asserts that 2 Craves No. 21 Wheel, which embodies the 809 Patent, was
on sale, in public use, and described in printed publications before March 19, 2012. The
Court reviews Armanos evidence for such assertions in turn.
a.

Whether the 809 Patent is Invalid Under the On-Sale Bar

Two conditions must be satisfied before March 19, 2012 for the 809 Patent to be
held invalid pursuant to the on-sale bar of 35 U.S.C. 102(a)(1).5 See Pfaff v. Wells
5

Paragraph (b) of 35 U.S.C. 102 was replaced with newly


designated 102(a)(1) as a result of the LeahySmith America
Invents Act (AIA). Pub.L. No. 11229. Section 102(a)(1)
applies to patents filed eighteen months after the passage of the
AIA, meaning after March 16, 2013. Id. Pfaff analyzed the onsale bar under the pre-AIA 102(b), Pfaff 525 U.S. at 6768, but
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Date

Case No.

CV 14-01918 JVS (JCGx)

Title

Dzinesquare, Inc. V. Armano Luxury Alloys, Inc., et al.

December 22, 2014

Electronics, Inc., 525 U.S. 55, 6768 (1998). The claimed invention must be (1) the
subject of a sale or commercial offer for sale; and (2) ready for patenting. Id.
For the first prong of the test, the Court must apply traditional contract law
principles to determine whether a sale or commercial offer for sale has occurred. Allen
Engg Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1352 (Fed. Cir. 2002). [A] single
sale or offer for sale suffices to bar patentability. Electromotive Div. of Gen. Motors
Corp. v. Transp. Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1209 (Fed. Cir. 2005).
However, this prong is not met if there is adequate proof that a device was sold
primarily for experimentation. Allen Engg, 299 F.3d at 1353.
Armano argues that 2 Crave sold and offered to sell its No. 21 Wheel prior to
March 19, 2012. (Mot., 46.) To prove a sale of the No. 21 Wheel, Armano cites a 2
Crave invoice for an order from Wheel Resource, dated October 28, 2011 and indicated
as paid for on January 26, 2012. (Skrdla Decl., Ex. 2.) The invoice shows two orders for
the No. 21 Wheel, each for a quantity of four wheels. (Id.) 2 Crave does not dispute that
it sold the No. 21 Wheel to Wheel Resource, nor does it provide any evidence that the
No. 21 Wheel was sold primarily for experimentation. The Court thus considers it
undisputed that 2 Crave sold the No. 21 Wheel for a non-experimental purpose before
March 19, 2012. This single sale of the No. 21 Wheel is sufficient to meet the first prong
of the on-sale bar under 102(a)(1).
Armano also contends that 2 Crave offered the No. 21 Wheel for sale by
advertising the wheel in its 2011 Catalog, posting pictures on its Facebook webpage on
February 28, 2012 of a public display of the wheel, and allowing two companies to
advertise the wheel on their websites. (See Mot., 5:46:8; Skrdla Decl., Exs. 37.)
Armano asserts that these were commercial offers for sale because another party could
make [] a binding contract by simple acceptance of those advertisements and displays.
(Mot., 5:46:8.); see Grp. One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1048 (Fed.
Cir. 2001). However, contract law traditionally recognizes that mere advertising and

neither the language of the AIA nor the post-AIA 102(a)(1)


indicates that the on-sale bar should be interpreted any
differently from when it was embodied in 102(b). For the same
reason, the Court analyzes the public use and printed publication
bars in the same manner as was done when they were embodied in
102(b).
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Date

Case No.

CV 14-01918 JVS (JCGx)

Title

Dzinesquare, Inc. V. Armano Luxury Alloys, Inc., et al.

December 22, 2014

promoting of a product may be nothing more than an invitation for offers, while
responding to such an invitation may itself be an offer. Grp. One, 254 F.3d at 1048
(citing Restatement (Second) of Contracts 26 (1981)). Because the single sale of the
No. 21 Wheel is alone sufficient to meet the first prong of the on-sale bar, the Court does
not reach a conclusion as to whether the advertising and display of the No. 21 Wheel
constituted offers for sale.
The second prong of the test may be met in at least two ways, namely by proof of
reduction to practice before the critical date; or by proof that prior to the critical date the
inventor had prepared drawings or other descriptions of the invention that were
sufficiently specific to enable a person skilled in the art to practice the invention. Pfaff,
525 U.S. at 6768. Armano asserts that the No. 21 Wheel is a reduction to practice of the
design in the 809 Patent and that the various advertisements and displays of the wheel
are proof of this reduction to practice. (Mot., 67; Skrdla Decl., Exs. 37.) The Court
agrees. See Fitzgerald v. Arbib, 268 F.2d 763, 765 (C.C.P.A. 1959) ([R]eduction to
practice of a three-dimensional design invention requires the production of an article
embodying that design.); Continental Plastic Containers v. Owens Brockway Plastic
Prods., Inc., 141 F.3d 1073, 1080 (Fed. Cir. 1998) ([D]esign inventions are reduced to
practice as soon as an embodiment is constructed.). 2 Crave submits no evidence to
show any genuine dispute that the No. 21 Wheel was produced, advertised, and displayed
prior to March 19, 2012. Thus, the design in the 809 Patent was ready for patenting
before March 19, 2012.
Armano has met its burden and shown by clear and convincing evidence that the
809 Patent is invalid under the on-sale bar of 102(a)(1).
b.

Whether the 809 Patent is Invalid Under the Public-Use Bar

Two conditions must be satisfied before March 19, 2012 for the 809 Patent to be
held invalid pursuant to the public-use bar of 102(a)(1). Invitrogen Corp. v. Biocrest
Mfg., L.P., 424 F.3d 1374, 137980 (Fed. Cir. 2005). The claimed invention must be (1)
in public use; and (2) ready for patenting. Id. The ready-for-patenting prong is the same
as that in the test for the on-sale bar. Id. Thus, the Court only addresses the first prong
because the Court has already established that the 809 Patent design was ready for
patenting before the critical date. Evidence of experimental use may also negate either
prong of the public use test. Id. at 1380.
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Date

Case No.

CV 14-01918 JVS (JCGx)

Title

Dzinesquare, Inc. V. Armano Luxury Alloys, Inc., et al.

December 22, 2014

A claimed invention is considered to be in public use if it was (1) accessible to the


public; or (2) commercially exploited. Id. Accessibility to the public includes looking at
the nature of the activity that occurred in public and public access to the use, while
commercial exploitation is a clear indication of public use. Id. (citing Allied Colloids
v. Am. Cyanamid Co., 64 F.3d 1570, 1574 (Fed. Cir. 1995)). Armano has shown that the
809 Patent design was both accessible to the public and commercially exploited. 2
Crave advertised the No. 21 Wheel in its 2011 Catalog and displayed the wheel on its
Facebook webpage, neither source being something of which the public lacked access.
(Skrdla Decl., Exs. 3, 6, 7.) The No. 21 Wheel was also accessible to the public by being
displayed on two wheel company sites. (Id. at Exs. 4, 5.) One of those companies,
Wheel Resource, is the same company to which 2 Crave sold the No. 21 Wheel on
October 28, 2011. (Id. at Exs. 2, 5.) Additionally, this sale of the No. 21 Wheel qualifies
as a commercial exploitation. See, e.g., TP Labs., Inc. v. Profl Positioners, Inc., 724
F.2d 965, 97071, 973 (Fed. Cir. 1984) (holding that no commercial exploitation had
occurred in part because the inventor had not sold the claimed invention). 2 Crave argues
that a genuine dispute exists as to whether the advertising and displaying of the No. 21
Wheel was for experimental use, but again provides no evidence to support that assertion.
(Oppn, 45.)
Therefore, Armano has met its evidentiary burden to show that the 809 Patent is
invalid under the public-use bar of 102(a)(1).
c.

Whether the 809 Patent is Invalid Under the PrintedPublication Bar

Whether a given reference, such as a catalog or website, is a printed publication


depends on whether it was publicly accessible before the critical date. Bruckelmyer v.
Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). A given reference is
publicly accessible upon a satisfactory showing that such document has been
disseminated or otherwise made available to the extent that persons interested and
ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it
and recognize and comprehend therefrom the essentials of the claimed invention without
need of further research or experimentation. Id. (internal citation omitted).
Armano argues that the 809 Patents design, embodied in the No. 21 Wheel, was
publically accessible in printed publications because that wheel was advertised or
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Date

Case No.

CV 14-01918 JVS (JCGx)

Title

Dzinesquare, Inc. V. Armano Luxury Alloys, Inc., et al.

December 22, 2014

displayed in 2 Craves 2011 Catalog, two wheel company websites, and 2 Craves
Facebook webpage. (Mot., 9:914; Skrdla Decl., Exs. 37.) 2 Crave does not dispute the
existence or occurrence of these advertisements or displays; rather, it tries to argue that
they do not automatically make the 809 Patent invalid because there must be an inquiry
into the facts of each advertisement or display. (Oppn, 8:510.) This is correct, but 2
Crave offers no evidence to create a genuine dispute about the catalog, websites, and
Facebook webpage containing the No. 21 Wheel or about the public accessibility of those
references. It is undisputed that the No. 21 Wheel embodies the only claimed design in
the 809 Patent. Therefore, any reference that includes the No. 21 Wheel and is publicly
accessible renders the 809 Patent invalid under the printed-publication bar of
102(a)(1).
The Court concludes that 2 Craves 2011 Catalog and its Facebook webpage were
publicly accessible, but the Court does not reach a decision as to the two retailer websites.
See, e.g. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 136465 (Fed. Cir. 2014)
([T]he Post [in an online newsgroup] was sufficiently disseminated to those of ordinary
skill in the art to be considered publically accessible.); Voter Verified, Inc. v. Premier
Election Solutions, Inc., 698 F.3d 1374, 138081 (Fed. Cir. 2012) (article on a website
that was a prominent forum for discussing the technologies embodied in the patent and
was open to any internet user was a publicly accessible publication). Armano does not
provide evidence that one ordinarily skilled in the art of wheel designs would be
independently aware of the PDK Wheels and Wheel Resource websites. One can likely
assume that a person of such ordinary skill would be aware of wheel company websites,
but the Court need not make such an assumption because it is clear that 2 Craves Catalog
and Facebook webpage are publicly accessible. It would be contradictory to 2 Craves
claim that it promotes automotive vehicle wheels if it were to argue that one ordinarily
skilled in the art of wheel design would not be independently aware of its Catalog and
Facebook webpage. (See Compl. 5.) Moreover, 2 Crave does not dispute that the
public had access to its 2011 Catalog or its Facebook webpage. Each posting on its
Facebook webpage also has a like, thereby further indicating that the public had access
to the webpage. (Skrdla Decl., Exs. 67.)
Therefore, Armano has shown by clear and convincing evidence that the 809
Patent is invalid under the printed-publication bar. In conclusion, Armano has met its
burden and shown that the 809 Patent is invalid under the on-sale, public-use, and
printed-publication bars. The Court thus GRANTS Armanos motion for partial
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Date

Case No.

CV 14-01918 JVS (JCGx)

Title

Dzinesquare, Inc. V. Armano Luxury Alloys, Inc., et al.

December 22, 2014

summary judgment.
C.

Armanos Discovery Request to Order Rule 36(a) Responses Admitted

In its motion for partial summary judgment, Armano also requests that the Court
order 2 Craves allegedly evasive responses to Armanos Rule 36(a) request for
admissions as admitted. (Mot., 911.) Armano did not bring a separate Rule 36(a)
motion for this request, but instead tries to embed it within its motion for partial summary
judgment. Pursuant to Rule 36(a)(6) and like the two cases upon which Armano relies,
Armano must raise its arguments regarding 2 Craves responses in a separate Rule 36(a)
motion. Fed. R. Civ. P. 36(a)(6) (The requesting party may move to determine the
sufficiency of an answer or objection. . . . On finding that an answer does not comply
with this rule, the court may order [] that the matter is admitted.); see Asea, Inc. v. S.
Pac. Transp. Co., 669 F.2d 1242, 1245 (9th Cir. 1981) (Asea moved to have the requests
ordered admitted.); KNapp v. Adams, 2014 U.S. Dist. LEXIS 142099 at *2 (E.D. Cal.
Oct. 6, 2014) (On August 15, 2014, Plaintiff filed a motion for the court to determine the
sufficiency of Defendantss objections and answers to Plaintiffs Fourth set of Requests
for Admission.).
Therefore, the Court does not reach a conclusion on Armanos request that 2
Craves Rule 36(a) be ordered admitted.
D.

Armanos Request for Sanctions Against 2 Crave

Armano also seeks Local Rule 83-7 sanctions against 2 Crave for violating Local
Rule 7-13 and allegedly violating Local Rule 11-9. (Reply, 1820.) Sanctions are not
appropriate here.
The Court thus DENIES Armanos request for sanctions.
IV.

Conclusion

For the foregoing reasons, the Court GRANTS Armanos motion for partial
summary judgment on 2 Craves patent infringement claim and concludes that the 809
Patent is invalid under 35 U.S.C. 102(a)(1).
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UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Date

Case No.

CV 14-01918 JVS (JCGx)

Title

Dzinesquare, Inc. V. Armano Luxury Alloys, Inc., et al.

December 22, 2014

The Court also GRANTS Armanos request for judicial notice in its entirety, but
does not reach a conclusion on Armanos request to order Rule 36(a) responses admitted
and DENIES Armanos request for sanctions.
IT IS SO ORDERED.

0
Initials of Preparer

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05

kjt

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