Olaf Soot Design, LLC v. Daktronics, Inc.

• Decision Date: 26 October 2016
• Docket Number: 15 Civ. 5024
• Citation: 220 F.Supp.3d 458
• Parties: OLAF SOOT DESIGN, LLC, Plaintiff, v. DAKTRONICS, INC. and Daktronics Hoist, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

220 F.Supp.3d 458

OLAF SOOT DESIGN, LLC, Plaintiff,

v.DAKTRONICS, INC. and Daktronics Hoist, Inc., Defendants.

15 Civ. 5024

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

Signed October 26, 2016

Attorneys for Plaintiff, TROUTMAN SANDERS LLP, 875 Third Avenue, New York, NY 10022, By: James M. Bollinger, Esq., Timothy P. Heaton, Esq., Phoenix S. Pak, Esq., Katherine Harihar, Esq.

Attorneys for Defendants, BLANK ROME LLP, 405 Lexington Ave, New York, NY 10174, By: Kenneth L. Bressler, Esq., BLANK ROME LLP, 717 Texas Avenue, Suite 1400, Houston, TX 77002, By: Russel T. Wong, Esq., Linh Bui, Esq.

OPINION

Sweet, District Judge.

Plaintiff Olaf Sööt Design, LLC ("Olaf Sööt" or "Plaintiff") has moved for claim construction on 12 terms appearing in U.S. Patent No. 6,520,485 ("the '485 Patent"). Defendants Daktronics, Inc. and Daktronics Hoist, Inc. ("Daktronics" or "Defendants") has moved for summary judgment of non-infringement on the '485 Patent. Based on the conclusions set forth below and the claim constructions determined by the Court, the motion for summary judgment on non-infringement is denied.

Prior Proceedings

Plaintiff brought this action for patent infringement on June 26, 2015. The '485 Patent is for a stage scenery winch system that helps to move large scenes quickly and efficiently replacing the work that had been done by counterweight sets.

The instant motion for summary judgment on non-infringement was heard and marked fully submitted on June 8, 2016. The claim construction motion was heard and marked fully submitted on September 15, 2016.

The Applicable Standard

Summary judgment is appropriate only where "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). A dispute is "genuine" if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The relevant inquiry on application for summary judgment is "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Id. at 251–52, 106 S.Ct. 2505.

A court is not charged with weighing the evidence and determining its truth, but with determining whether there is a genuine issue for trial. Westinghouse Elec. Corp. v. N.Y. City Transit Auth. , 735 F.Supp. 1205, 1212 (S.D.N.Y. 1990) (quoting Anderson , 477 U.S. at 249, 106 S.Ct. 2505 ). "[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact ." Anderson , 477 U.S. at 247–48, 106 S.Ct. 2505 (emphasis in original).

The Supreme Court has held that claim construction is a matter of law to be determined by the court in order to assist the jury with questions of patent infringement. Markman v. Westview Instruments , 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). There are two steps to an infringement claim on summary judgment. The first step is determining "the meaning and scope of the patent claims asserted to be infringed" and the second step is "comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments , 52 F.3d 967, 976 (Fed. Cir. 1995).

Claim Construction Standard

Claim terms "are generally given their ordinary and customary meaning" as understood by "a person of ordinary skill in the art at the time of invention." Phillips v. AWH Corp. , 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citations and internal quotation marks omitted). The court reads a claim term "not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id. at 1313 ; see also, Williamson ex rel. At Home Bondholders' Liquidating Trust v. Verizon Communications Inc. , Nos. 11 Civ. 4948(LTS)(HBP), 13 Civ. 0645(LTS)(HBP), 2013 WL 4083267, at *1–2 (Aug. 12, 2013).

The patent specification is "always highly relevant to the claim construction analysis" has been described as "a dictionary when it expressly defines terms used in the claims" and "the single best guide to the meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996). It is a "statutory requirement that the specification describe the claimed invention in ‘full, clear, concise, and exact terms.’ " Phillips , 415 F.3d at 1316 (quoting 35 U.S.C. § 112 ).

"However, preferred embodiments and written descriptions in the specification should not be used to limit the scope of claims." Williamson ex rel. At Home Bondholders' Liquidating Trust , 2013 WL 4083267, at *2 ; see also, Phillips , 415 F.3d at 1320 ("reading a limitation from the written description into the claims" is "one of the cardinal sins of patent law") (quoting SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc. , 242 F.3d 1337, 1340 (Fed. Cir. 2001) ). "[I]t is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention," not to define the limits of a claim term. Phillips , 415 F.3d at 1323.

Agreed Upon Constructions

The parties agreed to the constructions for Terms 1 and 2 and therefore the parties' mutual constructions are adopted.

Disputed Constructions

Term 3: Base Member

The parties dispute the construction for Term 3, the base member. Plaintiff's proposed construction is "one or more components of the winch assembly that are connected to the carriage to support and position the drum assembly." Defendants' proposed construction is "a component of the winch that is separate from the carriage and supports the drum." There are three disputes in these competing constructions. The first is whether there can be more than one component in the base member; second, whether the base member is connected to the carriage or separate from the carriage; third, whether the base member supports the drum.

First, the parties dispute whether there can be more than one component in the base member because the allegedly infringing Vortek product produced by the Defendants is constructed with two components that collectively comprise the base member. If there can only be one base member, then the Vortek product is not infringing on Plaintiff's patent.

The Federal Circuit instructs that when interpreting a claim, "First, we look to the words of the claims themselves ... to define the scope of the patented invention." Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996). In the '485 Patent, Claims 21 and 27 both define base member as "a base member having first and second end portions." This language indicates that there is only one base member. The key question is whether there can be more than one component that collectively comprises the base member. The claim lists two required components of the base member: first and second end portions. Therefore there are at least two components that comprise the base member and the base member can be comprised of two or more components.

Second, the parties dispute whether the base member is connected to the carriage or separate from the carriage. Both parties are correct. This issue is not addressed in the claim, but is detailed in the drawings and specifications. When the answer is not clear from the text of the claim, "second, it is always necessary to review the specification" which "acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication." Vitronics , 90 F.3d at 1582. Further, "Claims must be read in view of the specification, of which they are a part." Markman v. Westview Instruments, Inc. , 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc ), aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996). The specification "is the single best guide to the meaning of a disputed term." Vitronics , 90 F.3d at 1582.

Here, the specifications in Figures 1, 2, 7, and 8 all show that the base member is separate from the carriage and is connected to the carriage by slideable linear bearings. Both parties' constructions will be adopted.

Third, the parties dispute whether the base member supports the drum. The claim states that the drum has "a longitudinal axis rotatably mounted on the base member." All of the drawings show that the drum is mounted on the base member. Plaintiff advances an interpretation of the term that finds that the base is "connected to the carriage to support and position the drum assembly." Therefore, it appears that the parties agree that in some way since the drum is mounted to the base member and therefore that the base member supports the drum. However, Defendants' construction adheres more closely to the only portion of the specification that discusses this issue in which the invention is summarized as saying that "the drum (and its support base)." ('485 Patent at 2:2.) Therefore, the base member supports the base.

The adopted construction is: " one or more components of the winch, including first and second end portions, which are connected to and separate from the carriage, supporting the drum."

Term 4: Hollow Drum

The parties dispute the construction for Term 4, the hollow drum. Plaintiff's proposed construction is "An elongated cylindrically shaped assembly with an internal cavity and an external surface to store one or more cables that can be unwound by rotational motion." Defendants argue that no construction is necessary.

Claim construction "is not an obligatory exercise in redundancy." U.S. Surgical Corp. v. Ethicon, Inc. , 103 F.3d 1554, 1568 (Fed. Cir. 1997). Instead, "[c]laim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of...