Judicial Notice of Internet Evidence: Notice of Wayback Machine Results OK Based on Affidavit from Butler — Date in Wayback URL = Date Party Assigns to Page — Screenshots on Party’s Facebook Page Also Noticed

Dzinesquare, Inc. v. Armano Luxury Alloys, Inc., 2014 U.S. Dist. LEXIS 197546 (C.D. Cal. Dec. 22, 2014):

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 Court's tentative ruling is issued. Counsel submit on the Court's 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 Armano's 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 Crave's 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 9-11.) 2 Crave opposes. (Opp'n, Dkt. No. 31.) Armano has replied. (Reply, Dkt. No. 32.) In its Reply, Armano also seeks sanctions against 2 Crave. (Id. at 18-20.) Armano also requests that the Court take judicial notice of four exhibits. (Request [*2]  for Judicial Notice ("RJN"), Dkt. No. 29-3.) 2 Crave does not oppose this request.

For the following reasons, the Court GRANTS Armano's request for judicial notice and GRANTS Armano's partial motion for summary judgment. The Court does not reach a conclusion on Armano's Rule 36(a) request and DENIES Armano's request for sanctions.

I. Background

2 Crave manufactures and sells to American consumers various types of after market wheels for motor vehicles. (Compl., ¶¶ 4-5.) 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 Crave's 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. 4-5.) 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. 6-7.)

On March 19, 2013, Dzinesquare, Inc. filed an application for the '809 Patent, a design [*3]  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 1-2.)

On November 18, 2013, 2 Crave's 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., ¶¶ 44-48.) Armano now moves this Court for summary judgment of only 2 Crave's 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 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 [*4]  dispute of material fact. Id.; see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-24 (1986). If, and only if, the moving party meets its burden, then the non-moving party must produce specific evidence to rebut the moving party's 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).

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 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.

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 [*5]  no reasonable jury could find that the patent is not anticipated." Id. (citing Zenith Elecs. Corp. v. PDI Commc'n Sys., Inc., 522 F.3d 1348, 1356-57 (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. 29-5-29-12.) The Court will first address this request before addressing Armano's motion for partial summary judgment and the two related issues of discovery and sanctions that arose in the parties' briefs.

A. Armano's Request for Judicial Notice

Armano requests that the Court take judicial notice of four exhibits, including: (1) a PDK Wheels webpage dated November 4, 2011 showing 2 Crave's No. 21 Wheel; (2) a Wheel Resource webpage dated November 2, 2011 showing 2 Crave's No. 21 Wheel; (3) a photo on 2 Crave's Facebook website depicting 2 Crave's No. 21 Wheel on a vehicle, posted on February 28, 2012; (4) a photo on 2 Crave's Facebook website depicting 2 Crave's No. 21 Wheel with a female model, posted on February 28, 2012. (RJN; Skrdla Decl., Exs. 4-7.) 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 [*6]  known within the trial court's 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., ¶¶ 5-17.) Butler's Affidavit confirms the accuracy of the dates of Exhibits 4 and 5. (Butler Aff., ¶¶ 5-6, 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 23andMe's 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.").

3   According to his Affidavit, Christopher Butler is the office manager at Internet Archive. (Butler Aff., ¶ 1.)

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 Butler's Affidavit match the dates which Armano assigns to those webpages in its Exhibits and in Skrdla's Declaration. (Id. at Ex. A; Skrdla Decl., Exs. 4-5.)

Exhibits 6 and 7 are screenshots of photos posted on 2 Crave's Facebook webpage on February 28, 2012 from a 2 Crave open [*7]  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 Facebook's 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 Armano's request for judicial notice in its entirety.

B. Armano's Motion for Partial Summary Judgment

Armano moves for summary judgment of 2 Crave's patent infringement claim on the basis that the '809 Patent is invalid pursuant to 35 U.S.C. § 102(a). (Mot., 3-9.) More specifically, Armano argues that the '809 Patent was anticipated by prior art because 2 Crave's 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 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 [*8]  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 Crave's 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., 1:3-15, 3:24-27.) The Court must first determine whether a genuine dispute exists as to the fact that 2 Crave's 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 [*9]  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." (Opp'n, 5:8-10.) 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:

 

   [2 Crave] has been advised that [Armano] is currently manufacturing and selling wheels that incorporate three of our client's 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 [*10]  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 Armano's assertion of fact, the Court considers it undisputed that the No. 21 Wheel embodies the '809 Patent's design. See Fed. R. Civ. P. 56(e)(2).

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