callet world v. august hat - msj

7/28/2019 Callet World v. August Hat - MSJ

1/8

Case 1:13-cv-02030-JSR Document 23 Filed 07/03/13 Page 1 of 8

UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF NEW YORK

CALLET WORLD, LLCPlaintiff,

vs.AUGUST HAT COMPANY INC. d/b/a HEXand APPLE INC.

Defendants.

Civil Action No. 13-CV-02030 JSRECF CASE

DEFENDANT'S STATEMENT OF UNDISPUTED MATERIAL FACTS PURSUANT TOLOCAL RULE 56. l(a)

-1-


2/8


Pursuant to Local Civil Rule 56.1(a) Defendants August Hat Company Inc. d/b/a Hex("Hex") respectfully submits this statement of undisputed material facts in support of its motionfor summary judgment of non-infringement.

1. Hex is a small company in Southern California that sells a variety of consumerproducts, including cell phone cases. In 2011, Hex expanded its cell phone case offerings bydeveloping a case that incorporated slots on the back of the case in which credit cards, driver'slicenses, or money could be placed. [Declaration of Trent Valladares ("Valladares Decl.") 2and Ex. 1.]

2. Hex's case is made of polycarbonite, and has no slots on the back. [ValladaresDecl. 3.]

3. Hex's case is wrapped in leather. [Valladares Decl. 3.]4. Slots are cut into the leather cover ofHex's case. [Valladares Decl. 3.]5. As sold to consumers, Hex's case includes the leather wrapping with the two slots.

[Valladares Decl. 3.]6. Hex previously had sold a porftolio-style case that included the same features,

except with a front cover that opened like a book, with the card slots on the inside. [SeeValladares Decl. 4.]

7. When deciding to move the slots from the inside-front of the case to the back,Hex was completely unaware of Plaintiff, or its products. [See Valladares Decl. 4.]

8. Hex designed the accused cell phone cases in March 2011, and the products werefirst sold in August 2011, months before the Patent No. 0653,656 (the "'656 Patent") issued.[See Valladares Decl. 4; Complaint (Dkt. No. 1) Ex. 1.]

9. Plaint iff Callet World, LLC ("Callet World") claims that it "introduced the Calletmobile phone case" in 2009. [ C o m p l a i n t ~ 12).]

10. Callet World filed a patent application on May 6, 2010 that claims the mobilephone case that Callet Work alleges it first sold in 2009. [Complaint Ex. 1.]

-2-


3/8


11. Callet World's Patent No. D653,656 (the '"656 Patent") issued nearly two yearslater, on February 7, 2012. [Complaint Ex. 1.]

12. In prosecuting its patent, Callet World alleged four different inventors: BrandonCharnas, Kenneth Goldie, Hunter Gellin, and Shawn Vardi. [Complaint Ex. 1.]

13. On December 27, 2012, Callet World filed a petition to correct inventorship.[Declaration of Brian K. Brookey ("Brookey Decl.") ,-r 2 and Ex. 1.]

14. The petition indicates that Callet World's attorney did not actually ask these fourgentlemen about their respective contributions to the invention until long after he filed theapplication naming them co-inventors. Once he did ask, he discovered that contrary to therepresentations in the patent application, Messrs. Gellin, Goldie and Vardie were not, in fact, coinventors. [Brookey Dec . ,-r 2 and Ex. 1]

15. The United States Patent and Trademark Office granted the petition to correctinventorship, so the sole remaining alleged inventor is Chamas. [Brookey Decl. ,-r 2 and Ex. 2.]

16. Exactly three weeks after the certificate of correction was issued, Callet Worldfiled its complaint in this action, alleging that certain Hex cell phone cases infringe the '656Patent. [Cf Brookey Decl. Ex. 2 with Complaint.]

17. In its infringement contentions, Callet World identified the following Hexproducts as infringing:

[A 11 versions of all HEX mobile device cases with at least one card sloton the outer exposed face made, used, offered for sale, sold in, or imported into,the United States since the '656 Patent issued, such as the Solo Wallet, whichincludes the HEX X Fool's Gold Solo Wallet for iPhone 5, Solo Wallet, and HEXX Pretty Sweet Solo Wallet Case.

[Plaintiff Callet World LLC's Disclosure of Asserted Claims and Infringement Contentions(Brookey Decl. Ex. 3) at p. 2.]

-3-


4/8


18. All versions of these cases are depicted in a PDF attached to the declaration ofTrent Valladares, Hex's Vice President. [Valladares Decl. Ex. 2.]

19. All of the accused products have the same characteristics. [Valladares Decl. Ex.2.]

20. The size and shape of the patented design is dictated by the size and shape of thephone it is encasing. [See Complaint Ex. 1.]

21. The patented design has a lip on its front side that covers enough of the face of thephone so as to hold the case in place on the phone. [See Complaint Ex. 1.]

22. The patented design includes integral card holders that match the dimensions of acredit card or identification card and that have some sort of gap wherein the cards can beinserted. [Complaint Ex. 1.]

23. The features described in Paragraphs 20-22 are all found in the prior art. [U.S.Patent D631 ,246 (Brookey Decl. Ex. 4) (phone case with pocket for carrying a sheet of pills) andD615,078 ( Brookey Decl. Ex. 5) (phone case with pocket for cards).]

24. While the patented design and accused products are roughly the same shape, theaccused product has an extremely thin, almost minimalist lip that wraps around the front of thephone to hold it in place. [Brookey Decl. Ex. 6.]

25. The patented design possesses a much thicker lip that covers more of the front ofthe phone. [Cf Brookey Decl. Ex. 6 with Complaint Ex. 1.]

26. The patented design has softer, more rounded comers than the accused product.[Cf Brookey Decl. Ex. 6 with Complaint Ex. 1.]

27. The accused product is much narrower than the patented design. [Cf BrookeyDecl. Ex. 6 with Complaint Ex. 1.]

28. The accused product has a functional opening for the phone's camera that doesnot appear in any form in the '656 Patent. [Cf Brookey Decl. Ex. 6 with Complaint Ex. 1.]

29. The integral card holders in the patented design are not on the same plane as theback surface of the case. Instead, they stick out like stair steps. [Complaint Ex. 1.]

-4-


5/8


30. The bottom of the case in the patented design is much thicker than the top.[Complaint Ex. 1.]

3I. The card slots in the accused product comprise slits in the back of the case.[Brookey Dec . Ex. 6.]

32. The card slots in the accused product are flush with the backside of the case anddo not create a tiered, stair-like effect. [Brookey Decl. Ex. 6.]

33. The accused product is of uniform width from top to bottom. [Brookey Decl. Ex.6.]

34. The integral card holders in the patented design extend all the way to the sides ofthe case and wrap slightly around the sides while the card holders on the accused products donot. [Cf Brookey Dec . Ex. 6 with Complaint Ex. I.]

35. The top of the patented design slopes down at an angle from the back of the caseto the front whereas the top and bottom surfaces of the accused product are parallel. [CfBrookey Dec . Ex. 6 with Complaint Ex. I.]

36. The comers of the patented design are more rounded than those on the accusedproduct. [Cf Brookey Dec . Ex. 6 with Complaint Ex. I.]

37. The accused product has a cutout on one side whereas the patented design doesnot. [Cf Brookey Decl. Ex. 6 with Complaint Ex. 1.]

38. The card holders in the accused product are flush with the back of the case andtherefore are not visible from above. [Brookey Decl. Ex. 6.]

39. The card holders in the accused product do not extend to the side of the case.[Brookey Decl. Ex. 6.]

40. The accused product contains a cutaway at the top while the patented design doesnot. [Cf Brookey Dec . Ex. 6 with Complaint Ex. I. ]

41. In response to an article regarding this lawsuit, consumers, who are the "ordinaryobservers" in this action, made the following statements: "Lol? [,-r] They don't even look that

-5-


6/8


similar as iPhone cases go."; "An attempt of a desperate company to get a settlement? Thosecases look nothing alike."; "[O]ne looks like it was designed by a professional and the otherlooks like it was designed in home-ec class. [I]'ll let you decide which."; "The hex one looksnice! The callet... Not so much."; and "Thanks Callet, if it wasn't for your lawsuit I would of[sic] never realize[d] [how] crappy your products are compared to the competition." [BrookeyDecl. Ex. 7.]

42. In another article discussing this action, the author asks which case is "morepretty" and determines that "apparently," the accused products are. [See Brookey Decl. Ex. 8.]

43. Other individuals commenting on an article about this litigation describe the cellphone cases at issue as "less alike than the iPhone and the Galaxy S"; refer to the Callet case asugly while stating a preference for the Hex case; and, in perhaps the most colorful example,weighed in on this lawsuit as follows: "Looked at the photos and thought that Callet is jealousbecause the Hex just emphasizes how ugly the Callet is. Hex should sue Callet for lacking tasteand design savvy." [Brookey Decl. Ex. 9.]

44. The '656 Patent itself lists myriad examples of relevant prior art. [Complaint Ex.1.]

45. The prior art depicts numerous aspects that are similar to those in the asserteddesign. [Cf Complaint Ex. 1 with Brookey Decl. Exs. 4 and 5.]

46. The prior art cell phone cases have integral card holders that are not on the same

plane as the back surface of the cover. [Brookey Decl. Exs. 4 and 5.]47. The prior art cell phone cases include lips that partially cover the front of the

phone to hold it in place. [Brookey Decl. Exs. 4 and 5.]

-6-


7/8


48. The prior art cell phone cases possess comers that are rounded. [Brookey Decl.Exs. 4 and 5.]

49. The top side of a prior art cell phone case slopes downward from the front of thecase to the back. [Brookey Dec . Ex. 5.]

DATED: July 3, 2013 Respectfully submitted,

. ~~ ~ ~ ~ - ~ - 1 - - - - - - - - - - - - - - - - - -,_ H ~ : ~ : t : ; R & HALE, LLP655 N. Central Avenue, Suite 2300Glendale, California 91203-1445Telephone:(626) 795-9900Facsimile: (626) 577-8800E-mail: [email protected]

Attorneys for Defendants,AUGUST HAT COMPANY INC. d/b/a HEX

-7-


8/8


CERTIFICATE OF SERVICEI certify that on July 3, 2013, a copy of the foregoing Defendant's Statement of

Undisputed Material Facts Pursuant to Local Rule 56.l(a) was filed electronically. Notice of thisfiling will be sent by e-mail to all parties by operation of the Court's electronic filing system.Parties may access this filing through the Court's system.

Susan Lovelace

SCL PASJ244622.1-*-07/3/J3 12:35 PM

-8-

callet world v. august hat - msj

Documents