Nassau Precision Casting Co. v. Acushnet Co.

• Decision Date: 02 April 2015
• Docket Number: No. 10–CV–4226 WFKAKT.,10–CV–4226 WFKAKT.
• Citation: 95 F.Supp.3d 332
• Parties: NASSAU PRECISION CASTING CO., INC., Plaintiff, v. ACUSHNET COMPANY, INC., Cobra Golf Company, and Puma North America, Inc., Defendants.
• Court: U.S. District Court — Eastern District of New York

95 F.Supp.3d 332

NASSAU PRECISION CASTING CO., INC., Plaintiff

v.ACUSHNET COMPANY, INC., Cobra Golf Company, and Puma North America, Inc., Defendants.

No. 10–CV–4226 WFKAKT.

United States District Court, E.D. New York.

Signed April 2, 2015.

Filed March 31, 2015.

Dariush Keyhani, Sidney R. Bresnick, Meredith & Keyhani, PLLC, New York, NY, for Plaintiff.

Benjamin Stern, Joshua Krumholz, Peter Sanborn, Holland & Knight, Boston, MA, Robert J. Burns, Steven Leo D'Alessandro, Holland and Knight LLP, New York, NY, for Defendants.

DECISION AND ORDER

WILLIAM F. KUNTZ, II, District Judge.

Nassau Precision Casting Co., Inc. (“Plaintiff”) brings this action against Acushnet Company, Inc., Cobra Golf Company, and Puma North America, Inc. (“Defendants”) for patent infringement under the patent laws of the United States, 35 U.S.C. § 101 et seq. The Court previously granted Defendants' motion for summary judgment on the basis of non-infringement. Nassau Precision Casting Co., Inc. v. Acushnet Co., Inc., 940 F.Supp.2d 76 (E.D.N.Y.2013) (Kuntz, J.). On appeal, the Court of Appeals for the Federal Circuit affirmed this Court's grant of summary judgment of non-infringement on Claim 2, and vacated and remanded this Court's grant of summary judgment of non-infringement on Claim 1. Nassau Precision Casting Co., Inc. v. Acushnet Co., Inc., 566 Fed.Appx. 933 (Fed.Cir.2014). Defendants now renew their motion for summary judgment on the bases of non-infringement and invalidity. Dkt. 92 (“D's Mot for SJ”). Plaintiff cross-moves for partial summary judgment of infringement, arguing that the Federal Circuit's decision requires a finding of infringement on Claim 1. Dkt. 95 (“P's Mot for SJ”). For the reasons stated below, Defendants' motion for summary judgment is GRANTED IN PART and DENIED IN PART, Plaintiff's cross-motion for summary judgment is DENIED, and Defendants' after-filed motion to strike one of Plaintiff's expert's declarations is dismissed as MOOT.

BACKGROUND

The Court assumes familiarity with the facts of this action and recounts only a summary of the disputed patent here. See generally Nassau Precision Casting Co., Inc. v. Acushnet., Inc., 940 F.Supp.2d 76, 78–83 (E.D.N.Y.2013) (Kuntz, J.) (hereinafter Nassau I ).

A. The Patent–in–Suit

The patent at issue in this action relates to the design of golf iron clubs and specifically to weight distribution within the head of a golf iron club. Dkt. 98–1 (“D's Memo in Support”) at 4; Dkt. 94–1 (“'000 Patent”) at 1. United States Patent No. 5,486,000 (“the '000 Patent”), titled “Weighted Golf Iron Club Head,” is a utility patent which was issued on January 23, 1996 to Robert Chorne and later assigned to Plaintiff. Nassau I, 940 F.Supp.2d at 78 ; '000 Patent at 1.

For purposes of this current dispute, the only relevant claim in the '000 Patent is Claim 1. Nassau Precision Casting Co., Inc. v. Acushnet Co., Inc., 566 Fed.Appx. 933, 937–38 (Fed.Cir.2014) (hereinafter Nassau II ). Claim 1 provides:

In a golf iron club head of a type having a ball-striking body of weight-imparting construction material inclined at a selected angle for driving a struck golf ball a corresponding selected height during its trajectory, said body having spaced-apart top and bottom surfaces bounding a ball-striking surface there between, the method of improving weight distribution comprising removing construction materials from said top-surface, relocating said removed construction material from said top surface to clearance positions below said top surface located adjacent opposite ends of said bottom, [sic ] surface whereby said removed construction material from a location not used during ball-striking service of said golf iron, is of no adverse consequence thereto and said removed construction material in said relocated positions contributes to increasing said height attained by a struck golf ball.

'000 Patent col. 4, 1. 16–32. The Court previously identified the following four limitations as comprising Claim 1:

• Removing construction material from the fop surface of a golf club head, from a location not used during ball-striking service of the golf club head;

• Relocating that removed construction material to clearance positions below the top surface at adjacent opposite ends of the bottom surface;

• Lack of any “adverse consequence” due to such removal and relocation; and

• The removal and relocation contribute to increasing the height attained by a golf ball struck by the club head.

Nassau I, 940 F.Supp.2d at 90 ; see '000 Patent col. 4, 1. 16–32. Additionally, Claim 1 also describes a design process rather than a manufacturing process. See Nassau II, 566 Fed.Appx. at 939–41. Therefore, to infringe Claim 1 of the '000 Patent, “[p]erformance of the claimed steps by a designer of the accused clubs is ... required[.]” Id. at 940.

Plaintiff alleges that the Cobra S9, Cobra S9 Second Generation, King Cobra UFi, and Cobra S2 clubs (the “Accused Clubs”), manufactured and sold by Defendants since 2006, infringe Claim 1 of the '000 Patent by practicing each of the four limitations of the identified design process. Nassau I, 940 F.Supp.2d at 78 ; Dkt. 98–25 (“P's 56.1 Statement”) at ¶ 15; Dkt. 98–2 (“D's 56.1 Statement”) at ¶ 15.

B. Procedural History

On November 27, 2012, Defendants filed a motion for summary judgment of noninfringement and invalidity, Dkt. 59. Defendants argued that the '000 Patent was invalid because (1) it was anticipated by prior art references, and (2) the term “no adverse consequence” in Claim 1 of the '000 Patent was indefinite. Id. at 20–30. Defendants further argued that the Accused Clubs did not infringe the '000 Patent because (1) the Accused Clubs did not engage in an infringing design process; (2) the Accused Clubs did not meet the “no adverse consequence” limitation of Claim 1 of the '000 Patent ; and (3) the Accused Clubs did not meet the “determined weight” limitation of Claim 2 of the '000 Patent. Id. at 7–20.

On April 17, 2013, this Court granted summary judgment in favor of Defendants. Nassau I, 940 F.Supp.2d 76, The Court found: (1) Claims 1 and 2 of the '000 Patent describe a design process, not a manufacturing process, id. at 86–90 ; (2) the Accused Clubs did not infringe Claim 1 of the '000 Patent because the Accused Clubs did not meet the “location not used during ball-striking service” limitation of Claim 1, id. at 90–92 ; and (3) the Accused Clubs did not infringe Claim 2 of the '000 Patent because the Accused Clubs did not meet the “determined weight” limitation of Claim 2 of the '000 Patent, id. at 92–93. The Court did not address the Defendants' claims about the “no adverse consequence” limitation of Claim 1 of the '000 Patent. The Court also dismissed as moot Defendants' counterclaim for invalidity. Dkt. 85 (“Amended Judgment”).

On May 8, 2013, Plaintiff filed a notice of appeal to the Federal Circuit. Dkt. 80; Dkt. 81.

On June 6, 2014, the Federal Circuit issued its decision, which affirmed in part, vacated in part, and remanded certain issues to this Court for further proceedings. Nassau II, 566 Fed.Appx. 933. The Federal Circuit affirmed this Court's finding that Claim 2 was not infringed by the Accused Clubs. Id. at 937. The Federal Circuit also affirmed that Claim 1 and Claim 2 describe design, rather than manufacturing, processes. Id. at 939–941. The Federal Circuit, however, vacated this Court's finding of non-infringement with respect to Claim 1. Id. at 938. The Federal Circuit held that the Accused Clubs did infringe the “location not used during ball-striking service” limitation of Claim 1 because the Accused Clubs remove “material ... from areas other than the club head face.” Id. at 938 (finding Plaintiff's construction and this Court's construction of the limitation both covered the removal of material from the club face). The Federal Circuit noted that Defendants had re-raised their “no adverse consequences” invalidity and non-infringement arguments at the appellate level, and remanded the issue to this Court for review “in the first instance.” Id. at 941. Thus, the Federal Circuit remanded the case to this Court for determination of (1) whether the Accused Clubs infringe the design process of Claim 1, (2) whether the Accused Clubs infringe the “no adverse consequence” limitation of Claim 1, (3) whether the “no adverse consequence” limitation is indefinite, and (4) whether the ' 000 Patent is otherwise invalid. Id. at 938, 941.

Defendants filed their renewed motion for summary judgment on October 31, 2014. D's Mot for SJ at 1. That same day, Plaintiff also filed a cross-motion for partial summary judgment on the question of infringement. P's Mot for SJ; Dkt. 95–1 (“P's Memo in Support”).

Defendants move for summary judgment because the '000 Patent is invalid, and further because the Accused Clubs do not infringe Claim 1 of the '000 Patent. D's Memo in Support at 7. Specifically, Defendants argue the '000 Patent is invalid because (1) it is anticipated by the prior art, namely the Hogan Magnum golf club, U.S. Patent No. 4,938,470 (“Antonious”), and various prior art marketing materials; and (2) the term “no adverse consequences” in Claim 1 is indefinite because that limitation does not provide an objective standard with which a person of ordinary skill in the art could understand the claim. Id. at 7, 12–15, 17–25. Defendants argue the Accused Clubs do not infringe the '000 Patent because (1) the Accused Clubs do not meet the “no adverse consequences” limitation of Claim 1 and (2) the '000 Patent describes and claims a manufacturing process not used in making the Accused Clubs. Id. at 7, 15–16.

Plaintiff, on the other hand, argues that the '000 Patent is valid because (1) it is not anticipated by the prior art cited by Defendants, and (2) the “no adverse consequences” limitation is not indefinite because evidence within the Patent itself provides an objective definition of that limitation. Dkt. 98–24 (“P's Memo in Opp.”) at 14–30. Plaintiff further argues that the Accused Clubs...