Case: 21-2159 Document: 47 Page: 1 Filed: 09/22/2022
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`NOTE: This disposition is nonprecedential.
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`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`CAP EXPORT, LLC,
`Plaintiff/Counterclaim Defendant-Appellee
`
`ABRAHAM AMOUYAL,
`Third-Party Defendant-Appellee
`
`4MODA CORP.,
`Third-Party Defendant
`v.
`
`ZINUS, INC.,
`Defendant/Third Party Plaintiff/Counterclaimant-Appel-
`lant
`
`DOES, 1 THROUGH 10, INCLUSIVE,
`Defendant
`______________________
`
`2021-2159
`______________________
`
`Appeal from the United States District Court for the
`Central District of California in No. 2:16-cv-00371-JWH-
`MRW, Judge John W. Holcomb.
`______________________
`
`Decided: September 22, 2022
`______________________
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`Case: 21-2159 Document: 47 Page: 2 Filed: 09/22/2022
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`CAP EXPORT, LLC v. ZINUS, INC.
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`DAVID BEITCHMAN, Beitchman & Zekian, PC, Encino,
`CA, argued for Cap Export, LLC, Abraham Amouyal. Also
`represented by MILORD A. KESHISHIAN, Milord & Associ-
`ates, PC, Los Angeles, CA.
`
` MATTHEW WOLF, Arnold & Porter Kaye Scholer LLP,
`Washington, DC, argued for Zinus, Inc. Also represented
`by JIN-SUK PARK; RYAN M. NISHIMOTO, Los Angeles, CA.
` ______________________
`
`Before DYK, TARANTO, and STOLL, Circuit Judges.
`STOLL, Circuit Judge.
`This case comes to us on appeal for a third time. Zinus,
`Inc. appeals the United States District Court for the Cen-
`tral District of California’s summary judgment of invalidity
`under the on-sale bar, 35 U.S.C. § 102(a)(1), (b)(1). Be-
`cause there are material factual disputes regarding
`whether the on-sale product anticipates the asserted
`claims of U.S. Patent No. 8,931,123, we vacate the district
`court’s summary judgment and remand.
`BACKGROUND
`Zinus is the current assignee of the ’123 patent, which
`is directed to “[a]n assemblable mattress support [that] can
`be shipped with all of its components compactly packed
`into the headboard.” ’123 patent, Abstract. Claim 1 is rep-
`resentative:
`1. A mattress support comprising:
`a longitudinal bar with a first connector and a sec-
`ond connector;
`a headboard with a compartment and a third con-
`nector; and
`a footboard with a fourth connector, wherein the
`first connector is adapted to attach to the third con-
`nector, wherein the second connector is adapted to
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`Case: 21-2159 Document: 47 Page: 3 Filed: 09/22/2022
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`CAP EXPORT, LLC v. ZINUS, INC.
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`attach to the fourth connector, wherein legs are at-
`tached to a bottom side of the footboard, wherein
`the longitudinal bar and the footboard fit inside the
`compartment of the headboard, wherein the first
`connector is directly connected to the third con-
`nector, and the second connector is directly con-
`nected to the fourth connector in an assembled
`state of the mattress support, wherein the first con-
`nector is not connected to the third connector, and
`the second connector is not connected to the fourth
`connector in a compact state of the mattress sup-
`port, and wherein the longitudinal bar and the
`footboard are contained inside the compartment in
`the compact state of the mattress support.
`Id. at col. 6 ll. 21–40 (emphasis added to highlight the dis-
`puted limitation on appeal).
`The protracted history of this case goes back to at least
`2016, when Cap Export, LLC filed a declaratory judgment
`action against Zinus, alleging that the ’123 patent claims
`are invalid and not infringed. Zinus counterclaimed, alleg-
`ing (among various state law counterclaims) that Cap Ex-
`port infringed the ’123 patent claims.
`After two appeals to this court and multiple remands
`to the district court, Cap Export filed a motion for summary
`judgment of invalidity under the on-sale bar. Cap Export’s
`invalidity theory is based on the sale of a particular bed-in-
`a-box product—the “Mersin” bed—sold by third party
`Woody Furniture to Zinus’s then-president Colin Lawrie
`before the ’123 patent’s critical date. Although disputed at
`the district court, Zinus does not dispute on appeal that
`this sale was a commercial sale or that the bed was ready
`for patenting. Instead, the crux of the parties’ dispute be-
`fore the district court, as relevant on appeal, was whether
`the assembly instructions that accompanied the Mersin
`bed sold to Mr. Lawrie, which on their face indicate that
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`CAP EXPORT, LLC v. ZINUS, INC.
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`they were for the “Fusion” bed, also applied to the Mersin
`bed.
`Zinus presented testimony suggesting the Fusion bed
`instructions might have been mistakenly included in the
`Mersin bed box. Specifically, in connection with its brief
`opposing summary judgment, Zinus provided a declaration
`from its former Director of Marketing, Cyndi Hunting. As
`part of her job, Ms. Hunting stated she “was responsible for
`monitoring upholstered platform bed offerings of the com-
`petition in the market, and specifically on the Internet.”
`J.A. 9054 (Hunting Decl. ¶ 5). Based on her experience
`working in the industry, Ms. Hunting explained that “it is
`not uncommon for assembly instructions for one version of
`a bed type to be put into the shipping boxes for another
`version of the bed type,” due to “a mistake, sloppiness, or a
`failure to update/correct the assembly instructions.”
`J.A. 9060 (Hunting Decl. ¶ 27).
`There is no dispute on appeal that the product dis-
`closed in the Fusion bed assembly instructions would sat-
`isfy every element of claim 1. As shown in step 6 of the
`assembly instructions (reproduced below), a tab on a longi-
`tudinal bar 4 inserts into a bracket on the footboard (shown
`between 1 and 2). The parties dispute, however, whether
`the Mersin bed is constructed in the same way as the Fu-
`sion bed such that it satisfies every element of that claim—
`specifically, whether it has a “longitudinal bar” with a “sec-
`ond connector” that is “adapted to attach” to a “fourth con-
`nector” on the “footboard.” ’123 patent col. 6 ll. 21–40.
`Zinus presented evidence that it alleged shows that the as-
`sold Mersin bed does not include the connector shown in
`step 6 of the assembly instructions, including a photo of the
`as-sold Mersin bed taken from an inspection report. Step
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`CAP EXPORT, LLC v. ZINUS, INC.
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`6 of the instructions and the photo are reproduced side-by-
`side below:
`instructions, excerpted);
`(Fusion assembly
`J.A. 8424
`J.A. 8434 (photo of Mersin bed from inspection report, ex-
`cerpted).
`
`In her declaration on behalf of Zinus, Ms. Hunting dis-
`cussed the Fusion bed assembly instructions, explaining
`that “the end of the rail (4) appears to have a downward
`oriented tab” that “appears to be fashioned to engage a
`bracket” located between (1) and (2). J.A. 9059–60 (Hunt-
`ing Decl. ¶ 24). She further explained that, in contrast, the
`photograph of the Mersin bed shows “neither one of th[e]
`two structures (a tongue or a bracket)” that is shown in the
`Fusion assembly instructions. J.A. 9060 (Hunting Decl.
`¶ 25). She continued: “What is pictured [in the photo] is
`most likely a hole. The rail does not appear to have any
`downward oriented tongue. The fabric is not bulging out-
`ward as would be the case if the wings of the bracket were
`underneath the fabric.” Id. She thus concluded that the
`Fusion bed and the as-sold Mersin bed are different.
`She wasn’t the only one to come to this conclusion.
`Mr. Jayson Lee, a member of Zinus’s research and develop-
`ment team, explained that the cost of production for the
`Mersin bed shown in the inspection report was low. He
`suggested that this was due, in part, to the design of the
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`CAP EXPORT, LLC v. ZINUS, INC.
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`bed having a center support rail that is inserted into a slot
`in the footboard rather than having a center support rail
`with a connector that attaches to another connector on the
`footboard. J.A. 9068–69 (Lee Decl. ¶ 9). This design, he
`said, would result in a “lower material cost,” consistent
`with the low material cost reported on the inspection re-
`port. Id.
`Cap Export, for its part, argued that the Fusion and
`Mersin beds were one and the same and therefore that the
`Fusion assembly instructions depicted what was shown in
`the photo from the inspection report. That is, Cap Export
`argued that the instructions clarified that the Mersin bed
`did indeed have the requisite connectors on the center rail
`and the footboard, not just a hole for the rail to slide into.
`It relied principally on the testimony of third-party witness
`Agnes Tan, Woody’s marketing director. During her depo-
`sition, Ms. Tan testified that Woody’s Mersin bed has a
`PC001 factory code, and that this factory code is for
`Woody’s “bed in a box” product.
` J.A. 8447 (Tan
`Dep. 17:8–14, 18:13–14). She also confirmed that “[a]ny
`time there is a PC001 as the first part of the identifying
`code, that refers to the ‘bed in a box.’” Id. (Tan
`Dep. 19:11–15). She further testified that products with
`the PC001 factory code are “all the same constructions” but
`with different possible stitching on the headboard. Id. (Tan
`Dep. 18:18–19:10). She also testified that “Mersin” is the
`name that Jusama Group Consulting Inc.1 calls the prod-
`uct. Because the Fusion bed assembly instructions were
`also for a “bed-in-a-box” product, Cap Export argued that
`it necessarily had a PC001 factory code and the same con-
`struction as the Mersin bed-in-a-box product, thus defeat-
`ing Zinus’s theory that the photo from the inspection report
`
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`1 Mr. Lawrie was part-owner of Jusama (a sales rep-
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`resentative for Zinus Inc. (Korea)) when Jusama purchased
`the Mersin bed from Woody.
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`showed a hole in the footboard of the Mersin bed for the
`center support rail to slide into instead of tab and bracket
`connectors.
`The district court agreed with Cap Export. In doing so,
`it considered the Fusion assembly instructions alongside
`the photo of the as-sold Mersin bed from the inspection re-
`port, concluding that Ms. Tan’s testimony “demonstrates
`that they are the same bed-in-a-box product.” Cap Export,
`LLC. v. Zinus, Inc., 542 F. Supp. 3d 968, 981 (C.D. Cal.
`2021) (Summary Judgment Op.) (citing J.A. 8447 (Tan
`Dep. 17:8–20:21)). Using the Fusion assembly instructions
`to “explain how to connect the [Mersin bed’s] longitudinal
`bar . . . to the headboard and footboard,” the district court
`concluded that the on-sale Mersin bed satisfied every ele-
`ment of the claims, including the requisite connector on the
`longitudinal bar configured to attach to the connector on
`the footboard. See id. at 988–91. The court entered sum-
`mary judgment of invalidity on this basis.2
`Zinus appeals. We have jurisdiction under 28 U.S.C.
`§ 1295(a)(1).
`
`DISCUSSION
`We review the district court’s summary judgment un-
`der the law of the regional circuit, here the Ninth Circuit.
`Pharma Tech Sols., Inc. v. LifeScan, Inc., 942 F.3d 1372,
`1379–80 (Fed. Cir. 2019). “The Ninth Circuit reviews a
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`2 Cap Export also argued before the district court
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`that even if Zinus was correct that the picture of the as-
`sold Fusion bed showed the longitudinal bar inserted into
`a hole in the footboard, it would still anticipate the patent
`claims, because a male-female connection mechanism
`would anticipate the disputed connector limitations. The
`district court did not address this argument in reaching its
`decision, and, accordingly, the parties did not brief it on ap-
`peal.
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`district court’s grant of summary judgment de novo.” Id.
`at 1380 (citing Forester v. Chertoff, 500 F.3d 920, 923
`(9th Cir. 2007)). Summary judgment is only appropriate
`“if the movant shows 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).
`Whether a patent is invalid under the on-sale bar is a
`question of law based on underlying fact findings. Meds.
`Co. v. Hospira, Inc., 827 F.3d 1363, 1371 (Fed. Cir. 2016)
`(en banc). The on-sale bar is triggered if, before the critical
`date, the claimed invention was both (1) the subject of a
`commercial offer for sale and (2) ready for patenting. Pfaff
`v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998). “The invention
`that is the subject matter of the offer for sale must satisfy
`each claim limitation of the patent,” and “it may do so in-
`herently.” Scaltech, Inc. v. Retec/Tetra, LLC, 269 F.3d
`1321, 1329 (Fed. Cir. 2001). Because anticipation is a ques-
`tion of fact, summary judgment of invalidity under the on-
`sale bar is only proper “if no reasonable jury could find that
`the patent is not anticipated” by the on-sale product. Te-
`lemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316,
`1327 (Fed. Cir. 2001).
`On appeal, Zinus argues that multiple disputed facts
`preclude summary judgment. Zinus argues, as it did be-
`low, that there is a factual dispute over whether the Fusion
`assembly instructions apply to the as-sold Mersin bed, cit-
`ing the testimony from Ms. Hunting that those instructions
`could have been placed in the Mersin box by mistake as
`well as Ms. Hunting’s interpretation of the photo from the
`inspection report. Cap Export defends the district court’s
`judgment, arguing that Ms. Tan’s testimony establishes
`that the two beds are one and the same. We agree with
`Zinus that there are genuine disputes of material fact. In-
`deed, there are factual disputes regarding whether the Fu-
`sion bed and Mersin bed are the same structurally,
`whether the Fusion instructions describe the structure of
`the as-sold Mersin bed, and what exactly the ambiguous
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`photo of the Mersin bed depicts. Accordingly, summary
`judgment was improperly granted.
`The district court reviewed the evidence and concluded
`that no reasonable jury could find that the Fusion instruc-
`tions do not apply to the as-sold Mersin bed. To do so, how-
`ever, the court had to make factual inferences in Cap
`Export’s favor. For instance, the court inferred from
`Ms. Tan’s testimony that the PC001 factory code must ap-
`ply to the Fusion bed, demonstrating that the Fusion and
`Mersin beds are the same. Summary Judgment Op.,
`542 F. Supp. 3d at 981. While a jury could infer this con-
`clusion from Ms. Tan’s testimony, this is not the only infer-
`ence one could reasonably draw given the vague manner in
`which Ms. Tan testified. Indeed, Ms. Tan did not testify
`that the Fusion bed had a PC001 factory code; rather, this
`must be inferred from her other testimony. Such an infer-
`ence would favor the movant, Cap Export, as opposed to the
`non-movant, Zinus, which is procedurally improper on
`summary judgment. Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242, 255 (1986) (at summary judgment, “the
`weighing of the evidence[] and the drawing of legitimate
`inferences from the facts are jury functions,” “[t]he evi-
`dence of the non-movant is to be believed, and all justifiable
`inferences are to be drawn in his favor”).
`The district court also ignored Ms. Hunting’s declara-
`tion, which contained factual assertions that tend to under-
`mine the court’s factual conclusion that the Fusion
`assembly instructions apply to the Mersin bed. Taking the
`record as whole, some evidence supports a conclusion that
`the Fusion assembly instructions apply to the Mersin bed
`and some detracts from that conclusion.
`Whether the Fusion assembly instructions apply to the
`Mersin bed is no doubt material to the parties’ dispute re-
`garding whether the on-sale Mersin bed in fact satisfies all
`of the claim limitations. Should a jury agree with non-mo-
`vant Zinus and find that the Fusion assembly instructions
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`do not apply to the Mersin bed, Cap Export would be left
`with the photograph of the Mersin bed as the only evidence
`with which to prove that the on-sale Mersin bed anticipates
`the ’123 patent claims. But what exactly that photograph
`shows is also a disputed factual question for the jury to con-
`sider. Zinus put forward testimony from Ms. Hunting and
`Mr. Lee that what is depicted in the photograph is a hole
`in the footboard for the center support rail to slide into.
`That is, record evidence could support a factual conclusion
`that neither the footboard nor the center support rail has
`the claimed connectors that attach to one another.
`In sum, while Cap Export presented strong evidence
`connecting the Fusion instructions to the Mersin bed, there
`are nonetheless genuine disputes of material fact that pre-
`clude summary judgment. On remand, however, we would
`“not foreclose the district court from entertaining a motion
`for summary judgment” on a slightly more developed fac-
`tual record “that might obviate the need for a further trial.”
`Medisim Ltd. v. BestMed, LLC, 758 F.3d 1352, 1361
`(Fed. Cir. 2014) (quoting ArcelorMittal Fr. v. AK Steel
`Corp., 700 F.3d 1314, 1326 (Fed. Cir. 2012)). The factual
`disputes here relate to very targeted issues, e.g., whether
`the Fusion bed and the Mersin bed are in fact one and the
`same with respect to the features claimed in the ’123 pa-
`tent. Should Cap Export produce additional evidence,
`summary judgment might well be appropriate at that time.
`CONCLUSION
`We have considered the parties’ remaining arguments
`and are not persuaded. For the foregoing reasons, we va-
`cate the district court’s summary judgment and remand for
`further proceedings.
`VACATED AND REMANDED
`COSTS
`
`No costs.
`
`