Case 5:15-cv-01589-JVS-KK Document 91 Filed 01/12/17 Page 1 of 1 Page ID #:1206

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES GENERAL

Case No. 5:15cv01589JVSKK Date 1/12/2017

Title TOP LIGHTING CORPORATION V. LINCO INC

Present: The Honorable James V. Selna , U. S. District Judge

Karla Tunis Sharon Seffens
Deputy Clerk Court Reporter/Recorder

Attorney(s) Present for Plaintiff(s): Attorney(s) Present for Defendant(s):

Ryan Baker Gary Wang
Mitchell Ducey

Proceedings: Plaintiff / Counterclaim Defendants Motion for Summary Judgment as

to NonInfringement and Defendants Motion for Partial Summary Judgment as to
Infringement

Cause called and counsel make their appearances. The Court's tentative ruling is
issued. Counsel make their arguments. The Court DENIES both the plaintiff's and
defendant's motions as referenced above and rules in accordance with the tentative ruling
attached hereto.

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Initials of Preparer: kt

CV90 (10/08) CIVIL MINUTESGENERAL Page 1 of 1

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Top Lighting Corp. v. Linco Inc., 15-cv-01589-JVS-KK

ORDER DENYING PLAINTIFFS MOTION FOR SUMMARY

JUDGEMENT AND DENYING DEFENDANTS MOTION FOR
SUMMARY JUDGEMENT

Before the Court are cross-motions for summary judgment.

Plaintiff and counterclaim defendant Top Lighting Corp. (Top Lighting)

moved for summary judgment as to non-infringement. Docket No. 34. Defendant
and counterclaim plaintiff Linco Inc. (Linco) opposed. Docket No. 40. Top
Lighting filed an untimely reply. Docket No. 42. Linco filed a non-objection to
Top Lightings late filing. Docket No. 44.

Linco also moved for summary judgment as to infringement. Docket No. 66.
Top Lighting opposed. Docket No. 78. Linco replied. Docket No. 82.

Both motions concern the same issue, whether Top Lighting has infringed
Lincos United States Design Patent No. D712,590 ( 590 Patent). Docket No. 34
at 1; 78 at 2. For the following, reasons the Court denies Top Lightings motion
and denies Lincos motion.

BACKGROUND

Linco, a producer of studio lighting equipment, owns the 590 Patent at issue
in this case.1 Pl.s Statement of Uncontroverted Facts (Pl.s Statement), Docket
No. 35, 1; Def.s Statement of Uncontroverted Facts (Def.s Statement) at 1. In
June, 2015, Linco notified Top Lighting that Top Lighting was infringing the 590
Patent by selling an allegedly infringing product on eBay. Pl.s Statement 6,
Def.s Statement at 1.

On August 5, 2015, Top Lighting filed this action, seeking a declaratory

judgment of non-infringement as to the 590 Patent. Docket No. 1. Linco counter-

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Top Lighting objects to the Lin Declaration on the basis that it lacks foundation. Docket
No. 80. The Court overrules this objection because Top Lighting does not articulate why Lin
must explain his role with further particularity, given that he is only testifying to general
corporate activities.

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claimed for patent infringement. Docket No. 16.

LEGAL STANDARD

Summary judgment is appropriate where the record, read in the light most
favorable to the nonmovant,2 indicates that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56(a)3; 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 issue 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). Where the parties have made cross-motions for summary judgment, each
motion must be independently assessed on its own merit. California v. United
States, 271 F.3d 1377, 1380 (Fed. Cir. 2001).

ANALYSIS

I. The Court denies Top Lightings motion for summary judgment as to

non-infringement.

The parties have disputed which is the accused product at issue in this case.
Top Lighting identified one product in its Separate Statement. See Docket No. 35
15. In its opposition, Linco said that it had not alleged that Top Lightings accused

2
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 Disputes and (b) controverted by declaration or other
written evidence filed in opposition to the motion. L.R. 56-3.
3
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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product infringed 590 Patent. Docket No. 40 at 4. Instead it identified a different

accused product. Docket No. 40, Ex. L3, L4.

Therefore, because Linco does not accuse Top Lighting of infringing the
accused product at issue in Top Lightings motion, the Court denies Top
Lightings motion as moot. The Court declines to consdier Top Lightings request
for sanctions in its reply. Docket No. 42 at 48. Among other things, its request for
relief under Rule 11 is procedurally deficient. Fed. R. Civ. Proc. 11(c)(2).

II. The Court denies Lincos motion for summary judgment as to

infringement.

A. The requests for admission do not decide this motion because

Linco did not raise them until its reply brief.

In its opposition, Top Lighting explained that its prior counsel failed to
respond to Lincos previous requests for admission. Docket No. 78 at 4. Therefore,
these requests are deemed admitted under Federal Rule of Civil Procedure
36(a)(3). On December 14, 2016, Top Lighting filed an ex parte application to
withdraw these admissions. Docket No. 76. Linco opposed. Docket No. 77.
Magistrate Judge Kato denied the motion. Docket No. 85. Although Linco argued
that Top Lighting has conclusively admitted its liability, Linco raised this argument
for the first time in its reply brief. Because the Court will not consider arguments
raised for the first time in the reply, the Court will not decide the motion on that
basis. See FT Travel--N.Y., LLC v. Your Travel Ctr., Inc., 112 F. Supp. 3d 1063,
1079 (C.D. Cal. 2015) (Courts decline to consider arguments that are raised for
the first time in reply.).

B. An ordinary observer would not view the devices as substantially

similar because their knobs, bodies, and sockets are different.

Courts apply the ordinary observer test to determine infringement of a

design patent. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 677 (Fed. Cir.
2008). Under this test, courts will find infringement of a design patent [i]f, in the
eye of an ordinary observer, giving such attention as a purchaser usually gives, two
designs are substantially the same, . . . inducing him to purchase one supposing it
to be the other. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed.
Cir. 2008) (quoting Gorham Co. v. White, 81 U.S. 511, 528 (1871)). In some
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instances, the two designs are sufficiently distinct that it will be clear without
more that the patentee has not met its burden of proving the two designs would
appear substantially the same to the ordinary observer[.] Id. at 678. In other
instances, when the claimed and accused designs are not plainly dissimilar,
resolution of the question whether the ordinary observer would consider the two
designs to be substantially the same will benefit from a comparison of the claimed
and accused designs with the prior art[.] Id. When determining whether two
designs are same or different, [d]ifferences . . . must be evaluated in the context of
the claimed design as a whole, and not in the context of separate elements in
isolation. Ethicon Endo-Surgery v. Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir.
2015).

In Ethicon, the Federal Circuit applied this test to find that two designs were
plainly dissimilar despite conceptual similarities. Both designs included a small
activation button, and a fluted torque knob in relatively similar positions within the
underlying ultrasonic device. Id. at 1336. But the court found that such
similarities could not demonstrate infringement because there were plain
dissimilarities between the ornamentation of the trigger, torque knob, and button
elements of the claimed and accused designs. Id.

Here Linco argues that an ordinary observer would think that the accused
product (identified by Top Lighting as S803L) is the same as the 590 Patent.
Both have the same general shape. They also share ridged exteriors and knobs
toward the bottom of the patent.

Figure 1: Figure 5 of the 590 Patent compared to the S803L (right). Docket
No, 78, Panchal Decl. 6.

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Figure 2: Figure 4 of the 590

Patent Compared to the S803L.
Docket No. 78, Decl. 11.

Linco argues that the

prior art would lead an observer into thinking that the S803L is the same as the
590 Patent. And figure 3 shows that the 590 Patent and the S803L both mark a
break from the prior art because they add more angular features and a sharper
curve.

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Figure 3: Comparison between prior art, 590 Patent, and the S803L. Docket
No. 66 at 7.

But Top Lighting identifies several differences between the 590 Patent and the
S803L. First, the designs have distinct knobs. The 590 Patents knob is a
rectangular, bar shape, while S803Ls is curved and has three points. Docket No.
78 at 8.

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Figure 4: Comparison between 590 Patents knob (left) and S803Ls knob.
Docket No. 78 7.

Second, Top Lighting argues that the S803L has a bar in the middle of its structural
body, while the 590 Patent does not have a bar. Docket No. 78 at 8.

Figure 5: Comparison between the 590 Patents body (left) and the S803Ls
body. Docket No. 78 8.

Third, Top Lighting argues that the S803L has a sharper curve to its body than that
of the 590 Patent. Docket No. 78 at 9.

Figure 6: Comparison between the 590 Patents structure (left) and the
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S803Ls structure

Fourth, Top Lighting argues that each design has a distinct light bulb socket.
Docket No. 78 at 9. While the 590 Patent has vertical lines, the S803L does not.
Id.

Figure 7: Comparison between the 590 Patents Socket (left) and the S803Ls
Socket

Finally, Top Lighting argues that the elevational view (shown above) also show
differences. Docket No. 78 at 10. The 590 patent does not have any metal springs
in the structural body, while the S803L does. Id. And the 590 patent includes a
small hole in the light bulb socket; the S803L lacks such a feature. Id.
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In assessing infringement, the Court does not view these differences in

isolation, but examines them as part of the overall design. Ethicon, 796 F.3d at
1335. Just as in Ethicon, the designs at issue in this case appear conceptually
similar because both have a curved shape, knob, and conical light socket. But, as
Top Lighting demonstrates, they have several dissimilarities that would keep an
ordinary observer from substituting one design for the other. Key features the
designs bodies, knobs, and sockets are all dissimilar. Each of these features is
vastly different. For instance, the knobs have completely different shapes. These
stark differences would stand out to an ordinary observer and prevent confusion.

In sum, the Court finds that Linco has not established that an ordinary
observer would mistakenly think one design to be the other. Therefore, Linco
cannot sustain its claim for infringement and the Court does not address Top
Lightings other arguments on unenforceability and invalidity.

CONCLUSION

For the foregoing reasons, the Court denies Top Lightings motion and
denies Lincos motion.