NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

CAP EXPORT, LLC, A CALIFORNIA LIMITED 

LIABILITY COMPANY,

Plaintiff-Appellee

ABRAHAM AMOUYAL, AN INDIVIDUAL, 4MODA 

CORP., A CALIFORNIA CORPORATION,

Third Party Defendants

v.

ZINUS, INC., A CALIFORNIA CORPORATION,

Defendant-Appellant

DOES, 1 THROUGH 10, INCLUSIVE,

Defendant

______________________ 

2017-1540

______________________ 

Appeal from the United States District Court for the 

Central District of California in No. 2:16-cv-00371-SVWMRW, Judge Stephen V. Wilson.

______________________ 

Decided: January 18, 2018

______________________ 

 DAVID BEITCHMAN, Beitchman & Zekian, PC, Encino, 

CA, argued for plaintiff-appellee. 
2 CAP EXPORT, LLC v. ZINUS, INC. 

 DARIEN KENNETH WALLACE, Imperium Patent Works 

LLP, Pleasanton, CA, argued for defendant-appellant. 

Also represented by AMIR VICENTE ADIBI, T. LESTER 

WALLACE. 

______________________ 

Before MOORE, BRYSON, and HUGHES, Circuit Judges.

BRYSON, Circuit Judge.

Defendant Zinus, Inc., appeals from a summary 

judgment entered in favor of plaintiff Cap Export, LLC, 

and third-party defendants Abraham Amouyal and 

4Moda Corp. (collectively, “Cap Export”) by the United 

States District Court for the Central District of California. 

The district court ordered Zinus, the owner of U.S. Patent 

No. 8,931,123 (“the ’123 patent”), to file a motion for 

summary judgment of validity of that patent. Following

briefing, the court held two of the asserted claims of 

Zinus’s patent invalid for obviousness. The court then 

dismissed all of Zinus’s counterclaims with prejudice. We

vacate the district court’s summary judgment and remand 

for further proceedings.

I 

The ’123 patent is directed to a bed frame that can be 

assembled from components that all fit within a compartment fashioned from the bed’s headboard. For convenience and in order to lower shipping costs, all of the 

pieces of the frame, including the longitudinal support 

bar, the footboard, and the frame’s legs, can be packed 

into the headboard compartment and shipped in a single 

box. 

In January 2016, Cap Export, LLC, filed a declaratory 

judgment action against Zinus, alleging that the ’123 

patent was invalid and not infringed. Zinus counterclaimed for patent infringement and unfair business 
CAP EXPORT, LLC v. ZINUS, INC. 3

practices under California state law, and added Amouyal 

and 4Moda Corp. as third-party defendants.

At a status conference held on May 2, 2016, the district court ordered Zinus to file a motion for summary 

judgment of validity as to the ’123 patent and stayed 

discovery on all other issues. In its opening brief, Zinus 

addressed the prior art references that Cap Export’s 

counsel had raised in an April 2016 letter to Zinus’s 

counsel, which included a “bed in a box” product described 

on the website GoodsHomeDesign.com. In its opposition 

brief, Cap Export raised new prior art references but did 

not discuss the “bed in a box” reference. Cap Export also 

argued that the ’123 patent was not properly assigned to 

Zinus, and that Zinus therefore lacked standing to sue on 

the patent. Zinus filed a reply on those issues, which 

included new evidence and a new declaration from Zinus’s 

president.

At a status conference on August 29, 2016, the district 

court granted Cap Export leave to depose Zinus’s president and to file a sur-reply to address ownership and 

Zinus’s evidence about prior art. The district court stated 

that all discovery would be stayed except as it related to 

standing. Cap Export filed its sur-reply on November 11, 

2016. In that filing, Cap Export raised new prior art 

references and included a declaration from a new expert, 

Leonard Backer. Zinus moved to strike Backer’s declaration and the new prior art references cited in Cap Export’s 

sur-reply. The district court instead granted Zinus leave 

to respond to the new prior art in a sur-sur-reply, and 

gave Zinus a week to do so. Zinus filed its sur-sur-reply 

on November 28, 2016.

The following day, the district court granted summary 

judgment in Cap Export’s favor. The district court first 

concluded that the assignment to Zinus was proper, 

despite a scrivener’s error in the assignment documents. 

The court therefore held that Zinus had standing to assert 
4 CAP EXPORT, LLC v. ZINUS, INC. 

infringement of the ’123 patent. The district court then 

held that claim 1 of the patent would have been obvious in 

light of three prior art references—the Tiffany bed, the 

Aspelund bed, and the “bed in a box.” The court also held 

that claim 3 would have been obvious in light of those 

three references combined with the Ledge Headboard 

Twin reference. Because neither party presented arguments regarding secondary considerations of nonobviousness, the district court stated that it would not consider 

them. The district court entered judgment holding claims 

1 and 3 of the ’123 patent invalid and dismissing all of 

Zinus’s counterclaims and third-party claims with prejudice.

II

On appeal, Zinus raises a number of objections to the 

district court’s summary judgment ruling. Three of 

Zinus’s arguments are persuasive.

First, the district court improperly granted summary 

judgment for Cap Export sua sponte, without proper 

notice to Zinus. “It is well established that a district court 

has ‘the power to enter summary judgment[] sua sponte, 

so long as the losing party was on notice that she had to 

come forward with all of her evidence.’” Mikkelsen Graphic Eng’g, Inc. v. Zund Am., Inc., 541 F. App’x 964, 972 

(Fed. Cir. 2013) (quoting Celotex Corp. v. Catrett, 477 U.S. 

317, 326 (1986)); see also Albino v. Baca, 747 F.3d 1162, 

1176 (9th Cir. 2014) (“Even when there has been no crossmotion for summary judgment, a district court may enter 

summary judgment sua sponte against a moving party if 

the losing party has had a full and fair opportunity to 

ventilate the issues involved in the matter.”). Rule 56(f) 

of the Federal Rules of Civil Procedure provides that

district courts may grant summary judgment for a nonmovant only after “giving notice and a reasonable time to 

respond.” See Mikkelsen, 541 F. App’x at 972–73. When a 

district court’s grant of summary judgment sua sponte is 
CAP EXPORT, LLC v. ZINUS, INC. 5

procedurally improper, we must vacate the entry of judgment and remand for further proceedings. See, e.g., Fin 

Control Systems Pty, Ltd. v. OAM, Inc., 265 F.3d 1311, 

1321 (Fed. Cir. 2001).

When it ordered Zinus to make a motion for summary 

judgment of validity, the district court provided no notice 

that the court was contemplating entering summary 

judgment of invalidity. Normally, if a patent holder were 

to lose a motion for summary judgment of validity, the 

result would be a trial, not a judgment of invalidity. In 

fact, because a patent carries a presumption of validity 

and a challenger must prove invalidity by clear and 

convincing evidence, a patentee need not present any 

factual evidence to prevail on a motion for summary 

judgment of validity. Massey v. Del Labs., Inc., 118 F.3d 

1568, 1573 (Fed. Cir. 1997). The district court gave no 

notice that it might grant summary judgment against 

Zinus.

Furthermore, Zinus lacked a “full and fair opportunity 

to ventilate the issues.” Gospel Missions of Am. v. City of 

Los Angeles, 328 F.3d 548, 553 (9th Cir. 2003). Because of 

the unusual sequence of briefs and evidence, Zinus did not 

have an opportunity to depose Cap Export’s expert, whose 

declaration was first presented as part of Cap Export’s 

sur-reply filed on November 11, 2016. Nevertheless, the 

district court relied on the expert’s testimony and found it 

“credible.” Zinus was also denied an opportunity to 

present evidence of objective indicia of nonobviousness, 

which could have supported its position that the claims of 

the ’123 patent were not obvious. See, e.g., Cheese Sys., 

Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 

1341, 1353 (Fed. Cir. 2013). Although Zinus stated in its 

reply brief in support of its motion for summary judgment 

of validity that it was not “at this time asking the Court to 

consider any objective evidence of nonobviousness,” Zinus 

was entitled to present evidence of nonobviousness, 
6 CAP EXPORT, LLC v. ZINUS, INC. 

including objective evidence of nonobviousness, in defending against a motion for summary judgment of invalidity.

Under these circumstances, Zinus lacked both notice 

that the district court would enter summary judgment of 

invalidity sua sponte and an opportunity to present evidence and argument as to why summary judgment should 

not be entered against it. Accordingly, the district court’s 

entry of summary judgment in Cap Export’s favor was

procedurally improper.1

Second, the district court improperly dismissed Zinus’s assertion of claim 2 of the ’123 patent and Zinus’s 

state law claims with prejudice. Although Zinus omitted 

claim 2 of the ’123 patent from its motion for summary 

judgment of validity, the most that can be inferred from 

that omission is that Zinus concluded that there were 

triable issues of fact with respect to the validity of claim 2

that would warrant factual development at trial. As 

neither party raised arguments regarding the validity of 

claim 2, the district court erred in dismissing that claim 

with prejudice. In addition, although a district court may 

decline to exercise supplemental jurisdiction over state 

law claims after dismissing federal claims pursuant to 28 

U.S.C. § 1367(c)(3), any such dismissal must be without 

1 Cap Export argues that Zinus conceded in the parties’ Joint Rule 26(f) Report that “the issue of the validity 

of [Zinus’s] patent would be dispositive of its claims,” and 

therefore should have been on notice of the possibility of 

judgment of invalidity against it. That argument mischaracterizes the record: Zinus agreed that “resolution 

of . . . the issue of infringement would lead to the overall 

disposition of the case.” That statement in the parties’ 

Rule 26(f) Report does not suggest that Zinus had notice 

that the district court was considering granting summary 

judgment sua sponte against it.

 
CAP EXPORT, LLC v. ZINUS, INC. 7

prejudice. Davila v. Smith, 684 F. App’x 637, 638 (9th 

Cir. 2017) (citing Gini v. Las Vegas Metro. Police Dep’t, 40 

F.3d 1041, 1046 (9th Cir. 1994)). Accordingly, the district 

court erred in dismissing claim 2 of the ’123 patent and 

Zinus’s state law claims with prejudice. 

Third, the district court improperly relied on the “bed 

in a box” prior art reference despite a factual dispute 

regarding whether the reference predated the ’123 patent. 

Cap Export alluded to the “Amazing Bed in a Box” website only in its April 2016 letter to Zinus’s counsel; it did 

not assert the website as prior art in any of its briefs to 

the district court in connection with Zinus’s motion for 

summary judgment of validity. In its opening brief on 

that motion, Zinus argued that the website does not 

predate the priority date of the ’123 patent, which is 

September 25, 2013, because the website appears to have 

been posted in November 2014.2 It appears that Cap 

Export may have abandoned the reference altogether, as 

Cap Export did not address that reference in its opposition brief before the district court. See Shakur v. Schriro, 

514 F.3d 878, 892 (9th Cir. 2008) (holding that a party 

abandons claims by not defending them in opposition to a 

motion for summary judgment); Stichting Pensioenfonds 

ABP v. Countrywide Fin. Corp., 802 F. Supp. 2d 1125, 

1132 (C.D. Cal. 2011) (“[I]n most circumstances, failure to 

respond in an opposition brief to an argument put forward 

2 The GoodsHomeDesign.com webpage cites as its 

source a webpage published on December 25, 2013, which 

is a strong indication that the “Amazing Bed in a Box” 

post was published after the effective filing date of the 

’123 patent. See “Amazing Bed in a Box,” 

http://www.goodshomedesign.com/amazing-bed-in-a-box/2/

(linking to “098 California King Size Folding Bed,” 

http://3dwoodworkingplans.com/bed-in-a-box-098/ (published Dec. 25, 2013)).

 
8 CAP EXPORT, LLC v. ZINUS, INC. 

in an opening brief constitutes waiver or abandonment in 

regard to the uncontested issue.”).

Nevertheless, the district court relied on that reference in concluding that claims 1 and 3 would have been

obvious. The court explained that “someone with ordinary skill in the art would view the Tiffany Bed (with a 

headboard compartment), the Aspelund bed (with legs 

attached to the footboard), and the Bed in a Box (where 

all pieces of the bed fit in one compartment), and combine 

these references . . . .” At best, the disputed fact regarding the publication date of the “bed in a box” reference 

precludes reliance on that reference for purposes of summary judgment. See Tennison v. City & Cty. of San 

Francisco, 570 F.3d 1078, 1087 (9th Cir. 2009); Lamle v. 

Mattel, Inc., 65 F. App’x 293, 295 (Fed. Cir. 2003).

III

We vacate the district court’s grant of summary 

judgment of invalidity as to claims 1 and 3 of the ’123 

patent and the dismissal with prejudice of Zinus’s counterclaims. We remand for further proceedings consistent 

with this opinion.

Costs to Zinus.

VACATED AND REMANDED.