Southern Snow Manufacturing Co., Inc. v. SnoWizard Holdings, Inc. et al

Filing 608

ORDER & REASONS re SnoWizard, Inc. and Ronald R. Sciortino's (collectively, "SnoWizard") 579 Motion for a Markman Determination and for Summary Judgment: Having determined that the Court has enough information to make a Markman deter mination without holding a hearing, claims 1 and 11 of the 871 patent should be construed in accordance with the interpretation herein. Although the Court also finds that the claims of the 871 patent read onto SS-1, summary judgment is not appropriat e here because the validity of the patent has yet to be determined. Accordingly, IT IS HEREBY ORDERED that SnoWizard's Motion for a Markman Determination and for Summary Judgment of Patent Infringement is GRANTED IN PART AND DENIED IN PART as set forth herein.. Signed by Judge Nannette Jolivette Brown on 1/2/2013. (Reference: 11-1499)(rll, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
SOUTHERN SNOW MANUFACTURING CO., INC.

CIVIL ACTION

VERSUS

NO.

SNOWIZARD HOLDINGS, INC., et. al.

SECTION: “G” (1)

06-9170
09-3394
10-0791
11-1499

ORDER AND REASONS
Before the Court is SnoWizard, Inc. and Ronald R. Sciortino’s (collectively, “SnoWizard”)
Motion for a Markman Determination and for Summary Judgment of Patent Infringement.1
Therein, SnoWizard first requests a Markman determination, which requires that the Court interpret
the meaning of key phrases in SnoWizard’s U.S. Patent No. 7,536,871.

Second, SnoWizard

requests that the Court find that a device developed by Southern Snow Manufacturing Co., Inc.
(“Southern Snow”) infringes SnoWizard’s patent and that the Court grant summary judgment in
SnoWizard’s favor on this issue. Having considered the motion, the response, the reply, and the
applicable law, the Court will make a Markman determination but will deny the motion for
summary judgment of patent infringement as premature considering the parties previously
stipulated that there exists a material fact in dispute, which may affect the validity of the patent.
Unless and until a jury decides when the patented device was first sold, which is a necessary
prerequisite factual finding for the Court to decide whether the patent is valid, a decision on patent
infringement is premature in this case.

1

Rec. Doc. 579.

1

I. Background
On May 26, 2009, U.S. Patent No. 7,536,871, for “Icemaker with Improved Cam Assembly”
(hereinafter, the “871 patent”) was issued to Ronald R. Sciortino (“Sciortino”), the principal of
SnoWizard, Inc. Sciortino claims to have exclusively licensed the patent to SnoWizard, Inc.2 “The
’871 patent issued to SnoWizard relates to a cam assembly for an ice shaving machine that
maximizes the distance an ice-block pusher plate is advanced by a reciprocal handle.”3 The scope
of the invention is limited by 20 claims, of which claims 1 and 11 are in dispute in the pending
motion.4 Claim 1 provides for:
A cam assembly for an icemaker having a pusher arm with ratchet teeth
comprising:
a cam connector, the cam connector is adapted to be coupled to a handle of
said icemaker; and,
a cam member having a single elongated structure that has a gradually
tapering width from back to front, the back having a forked end pivotally coupled to
said cam connector and the front having a second end, the second end has formed in
a bottom surface thereof, a[n] indented cavity for receipt of a ratchet tooth.5
Claim 11 also provides for:
An icemaker comprising:
means for shaving ice;
a pusher arm with ratchet teeth;
a handle; and,
a cam assembly, the cam assembly comprising:
a cam connector, the cam connector is adapted to be coupled to said handle of
said icemaker and
a cam member having a single elongated structure that has a gradually
tapering width from back to front, the back having a forked end pivotally coupled to

2

Rec. Doc. 579-5.

3

Rec. Doc. 579-1 at pp. 4-5. See also id. at Ex. A-1, Column 3 at lns. 63-67, Column 4 at lns. 1-35.

4

Rec. Doc. 579-5 at pp. 7-8.

5

Id. at p. 7.

2

said cam connector and the front having a second end, the second end has formed in
a bottom surface thereof, a[n] indented cavity for receipt of a ratchet tooth.6
Specifically, the parties dispute in the pending motion the interpretation of the phrases: (1)
“gradually tapering width from back to front;” and (2) “the second end has formed in a bottom
surface thereof, a[n] indented cavity for receipt of a ratchet tooth.”
Prior to invention of the cam assembly patented by the 871 patent, Southern Snow and
SnoWizard used “old-style ratchet linkages assembled from 2 bars of metal drilled and fitted with 3
steel pins.”7 The old-style cam assembly had empty spaces between the three steel pins and straight
parallel edges along the length of the arm of the cam with a rounded edge. From 2006 to 2011,
Southern Snow claims to have used a cam assembly it “develop[ed] on its own” (hereinafter, “SS1”).8

After SnoWizard’s 871 patent issued and SnoWizard sued Southern Snow for patent

infringement, Southern Snow claims to have developed a new design in September of 2011, which
was incorporated into machines in 2012 (hereinafter, “SS-2”).9 Both SS-1 and the 871 patent have
an indented rectangular area on one side and have edges that taper down to a point along the entire
length of arm of the cam. SS-2, on the other hand, has no indentations in the metal and the edges
are straight along most of the arm, only tapering at the end.10
SnoWizard filed its counterclaim against Southern Snow, Banister & Co. Inc., Milton G.
Wendling, Jr., Precision Metalsmiths, Inc., Raggs Supply, LP, Doty Management LLC, Julie K.

6

Id. at p. 8.

7

Rec. Doc. 585 at p. 2.

8

Id. See also Rec. Doc. 579-6 (photograph of SS-1).

9

Rec. Doc. 585 at p. 2. See also Rec. Doc. 579-9 (photograph of SS-2).

10

Rec. Doc. 585 at p. 2.

3

Doty, and Ron Robinson (collectively, “Plaintiffs”)11 for infringement of the 871 patent on August
29, 2011.12 SnoWizard maintains that both SS-1 and SS-2 infringe the 871 patent.
Plaintiffs moved for dismissal of the counterclaims against them under Federal Rule of Civil
Procedure 12(b)(6) on September 27, 2011.13 Prior to resolution of the motion to dismiss, Plaintiffs
filed a Motion for Partial Summary Judgment Dismissing Entire Counterclaim for Patent
Infringement on November 7, 2011.14 A status conference was conducted on September 27, 2012
wherein the parties stipulated to: (1) denial of Plaintiffs’ Motion to Dismiss Counterclaim provided
Defendants amend their Counterclaim for Patent Infringement to include a more definite statement
regarding the “secondary patent infringement” and join Sciortino as a party, and (2) denial of
Plaintiffs’ Motion for Partial Summary Judgment Dismissing Counterclaim for Patent Infringement
on the basis of a disputed material issue of fact regarding the on-sale bar.15 Based on the parties’
stipulations, the Court denied the Plaintiff’s Motion to Dismiss Counterclaim16 and Motion for
Partial Summary Judgment Dismissing Counterclaim for Patent Infringement17 on September 27,
2012.18

11

Precision Metalsmiths, Inc. was never represented by Plaintiffs’ counsel and was terminated as a party to the
action after settling with SnoWizard, and is therefore excluded from the collective “Plaintiffs.”
12

Rec. Doc. 414.

13

Rec. Doc. 432.

14

Rec. Doc. 461.

15

Rec. Doc. 560.

16

Rec. Doc. 432.

17

Rec. Doc. 461.

18

See Rec. Docs. 564 & 565.

4

On November 6, 2012, SnoWizard filed the pending Motion for a Markman Determination
and for Summary Judgment of Patent Infringement.19 Plaintiffs timely submitted their opposition to
the pending motion on November 13, 2012,20 and SnoWizard subsequently filed a reply to the
opposition with leave of Court.21

II. Parties’ Arguments
SnoWizard asks this Court to (1) interpret patent claims 1 and 11 in its 871 patent, and (2)
enter summary judgment for SnoWizard on the issue that SS-1, Southern Snow’s first version of the
cam assembly, infringes SnoWizard’s patent. In opposition, Plaintiffs request that the motion for a
Markman determination be denied and a Markman hearing set, or if the Court is satisfied that
sufficient information has been presented, the Court should determine that the words have their
“normal dictionary definitions.”22

A. Markman Determination
The Supreme Court of the United States, in Markman v. Westview Instruments,23 held that
the interpretation of patent claims, including the terms of art used, is a question of law to be decided
by the Court.24 While the parties agree that the interpretation of patent claims is a question of law

19

Rec. Doc. 579.

20

Rec. Doc. 585.

21

Rec. Doc. 590.

22

Rec. Doc. 585 at p. 10.

23

517 U.S. 370 (1996).

24

Id. at 372.

5

for the Court, they dispute the necessity of conducting a claim construction hearing, also known as a
Markman hearing. SnoWizard contends that such a determination does not require a formal hearing
and may be done at various stages of litigation and through a motion for summary judgment,25
which SnoWizard claims is especially appropriate where, as here, the subject matter is not highly
technical.26 In contrast, Plaintiffs argue that a claim construction hearing should be held, because it
provides the Court with the “most and best information available in order to construe the patent
claims.”27
Regardless of whether a claim construction hearing is held, the parties dispute the
appropriate interpretation of claims 1 and 11. Specifically, Plaintiffs argue that SnoWizard is
impermissibly asking the Court to disregard several claim terms or interpret them as having no
meaning.28

Plaintiffs further claim that “maybe the claims can be construed on summary

judgment,” and to that end, Plaintiffs “identif[y] the dictionary definitions and suggest[] how they
might be applied to the claim terms.”29

1. SnoWizard’s Interpretation of the Claims
SnoWizard contends that “the [C]ourt should look first to intrinsic evidence, which includes
the language of the patent claims, the specification, and the prosecution history of the patent[,]” to
25

Rec. Doc. 579-1 at pp. 2-3 (citing Elder v. Tanner, 180 F. Supp. 2d 818, 821 (E.D. Tex. 2001); PMG Inc. v.
Stinger Spike Sys., Inc., 2002 WL 31008137, at *2 (N.D. W. Va. 2002); Utah Med. Prods. Inc. v. Clinical Innovations
Assocs., Inc., 79 F. Supp. 2d 1290, 1299 (D. Utah 1999); Leoutsakos v. Coll’s Hospital Pharmacy, Inc., 51 Fed. App.
310, 312 (Fed. Cir. 2002); J.G. Peta, Inc. v. Club Protector, Inc., 65 Fed. Appx. 724 727 (Fed. Cir. 2003)).
26

Id. at p. 3.

27

Rec. Doc. 585 at p. 8.

28

Id.

29

Id.

6

interpret the patent claims.30 Further, SnoWizard explains that courts should examine the claims
and give them their “ordinary and accustomed meaning as understood by one of ordinary skill in the
art at the time of the invention.”31 In doing so, SnoWizard maintains that “terms that are not used in
a technical sense may be construed through reference to a general purpose dictionary.”32 According
to SnoWizard, when “claim language is clear on its face, the remaining intrinsic evidence is
considered only to determine whether a deviation from that clear definition is specified, either
because the patentee set forth a definition of the disputed claim term, or because the patentee
distinguished the term from the prior art.”33
SnoWizard argues that two phrases, both of which are present in claims 1 and 11, are in
dispute. Specifically, SnoWizard explains that the Court must construe the phrases “gradually
tapering width from back to front” and “the second end has formed in a bottom surface thereof, (an)
indented cavity for receipt of a ratchet tooth[,]” in order to determine after the trial whether SS-2,
Southern Snow’s more recently developed cam, infringes the 871 patent.34

a. Interpretation of “A Gradually Tapering Width from Back to Front”
SnoWizard argues that “gradually” and “tapering” should be given their ordinary meaning
as defined by a general-purpose dictionary, because the words are not technical, esoteric, or

30

Rec. Doc. 579-1 at p. 3.

31

Id. at p. 4 (citing Bell Atlantic Network Servs., Inc. v. Convad Comm. Grp., Inc., 262 F.3d 1258, 1267 (Fed. Cir.

2001)).
32

AFG Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239, 1248 (Fed. Cir. 2001).

33

Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001).

34

Rec. Doc. 579-1 at p. 5.

7

assigned a special definition by the patent specification or prosecution history.35

Relying on

definitions from the Merriam-Webster Online Dictionary, SnoWizard argues that the claimed
limitation defines “a reduction in thickness from back to front.”36 SnoWizard further claims that the
tapering in thickness does not need to be continuous and uniform from the back edge to the front
edge, because that limitation is nonexistent in the claims or specifications. Therefore, SnoWizard
reasons that the Court should construe the limitation “a gradually tapering width from back to front”
as diminutive (or any) decrease in width at the front of the cam with respect to the back.37

b. Interpretation of “The Second End has Formed in a Bottom Surface Thereof,
a[n] Indented Cavity for Receipt of a Ratchet Tooth”
Again, SnoWizard argues that the claim should be interpreted by reference to a generalpurpose dictionary in light of the heavy presumption that claim terms carry their ordinary and
customary meaning, absent a specific definition in the prosecution history, patent specification, or
by distinguishing the term from the prior art.38 Therefore, SnoWizard contends that the ordinary
definitions of the key words indicate that the claim defines the bottom surface of the cam member
as being “notched, jagged, or having a hollowed out space therein.”39

35

Id. at p. 9.

36

Id. “Taper” is defined as “a gradual diminution of thickness, diameter, or width in an elongated object” or “a
gradual decrease.” “Gradual” is defined as “1: proceeding by steps or degrees; 2: moving, changing, or developing by
fine or often imperceptible degrees.” Id.
37

38

Id.
Id. at p. 7 (citing Interactive Gift Express, Inc., 256 F.3d at 1331).

39

Id. at p. 8. “Cavity” is defined as “an unfilled space within a mass; especially a hollowed-out space.” “Indent”
is defined as “2: to notch the edge of: make jagged 3: indenture; 4: to set (as a line of a paragraph) in from the margin.”
Id. at p. 8.

8

2. Plaintiffs’ Interpretation of the Claims
Plaintiffs contend that SnoWizard fails to analyze the patent claims with reference to the
prior art, which is necessary for claim construction because “the prior art specifies what cannot
possibly be covered by the Patent because it already existed.”40 In addition to proposing alternative
claim constructions, Plaintiffs argue that SS-2 does not infringe SnoWizard’s 871 patent, because
every element of Plaintiffs’ proposed claim constructions does not read onto SS-2. However, the
pending motion only evaluates whether SS-1 infringes the 871 patent, and Plaintiffs’ arguments
relating to SS-2 are irrelevant to the pending motion.41

a. Interpretation of “A Gradually Tapering Width from Back to Front”
Plaintiffs maintain that SnoWizard’s interpretation of “a gradually tapering width from back
to front” to mean “any[] decrease in width at the front …with respect to the back” 42 is wrong,
because it encompasses the prior art which also diminished in size at one end to form a rounded
point.43 According to Plaintiffs, SnoWizard’s interpretation ignores the fact that the claims define
“a single elongated structure” and specify which ends are the “back” and the “front.”44 Plaintiffs
argue that, based on the general-purpose dictionary, the claim should be interpreted to mean “a

40

Rec. Doc. 585 at p. 3.

41

Although interpretation of the claims will ultimately impact the determination of whether SS-2 infringes
SnoWizard’s 871 patent, this motion does not evaluate the validity of the allegations of patent infringement by SS-2.
42

Rec. Doc. 585 at p. 4 (citing Rec. Doc. 579-1 at p. 9).

43

Id.

44

Id. at p. 6.

9

gradual diminution of width, changing by fine or often imperceptible degrees, over the whole
‘single elongated structure,’ from the ‘back’ to the ‘front.’”45

b. Interpretation of “The Second End has Formed in a Bottom Surface Thereof, a[n]
Indented Cavity for Receipt of a Ratchet Tooth”
Again, Plaintiffs reason that SnoWizard’s interpretation of “indented cavity for receipt of a
ratchet tooth” to mean “notched, jagged or having a hollowed out space therein” is incorrect
because it incorporates the prior art, which had empty spaces for the ratchet teeth to fit into.46
Because SnoWizard’s new ratchet linkage did not have an empty space for the ratchet tooth,
Plaintiffs contend that “SnoWizard had to ‘invent’ an ‘indented cavity for receipt of a ratchet
tooth.’”47 Plaintiffs argue that, “[a]ccording to the general-purpose dictionary, ‘indented cavity for
receipt of a ratchet tooth’ in SnoWizard’s patent means a hollowed-out space within the body of the
piece, set in from the exterior margin of the piece like a notch, which acts as a receptacle or
container for the next ratchet tooth.”48

B. Summary Judgment of Patent Infringement
1. SnoWizard’s Arguments for Summary Judgment
Although SnoWizard ultimately wants judgments that both of Southern Snow’s cam
assemblies infringe SnoWizard’s 871 patent, this motion only requests summary judgment on

45

Id. at p. 7.

46

Id. at p. 4 (citing Rec. Doc. 579-1 at pp. 6-8).

47

Id. at p. 3.

48

Id. at p. 6.

10

infringement of SnoWizard’s patent by SS-1.49 According to SnoWizard, a patentee may prove
infringement either by showing that an accused product literally infringes a claim in the patent or
that the product infringes under the doctrine of equivalents.50 Literal infringement requires proof
that every limitation set forth in a claim is “found in an accused product, exactly;”51 whereas, under
the doctrine of equivalents, infringement can be shown if every element in the claim is “either
literally or equivalently present in the accused product.”52 SnoWizard reasons that analyzing literal
patent infringement should proceed in two steps: “proper construction of the asserted claim and then
a determination as to whether the accused method or product infringes the asserted claim as
properly construed.”53
SnoWizard claims that “regardless of the Court’s ultimate construction of the claims at
issue, SS-1 literally infringes the 871 patent.”54 Specifically, SnoWizard relies on (1) Plaintiff’s
alleged “judicial admission” that SS-1 infringes the 871 patent, and (2) Defendant Ronald R.
Sciortino’s personal inspection of the Southern Snow cam assembly, SS-1.
SnoWizard contends that in Civil Action 10-4275,55 Plaintiffs’ counsel, intending to
introduce photographs of SnoWizard’s patented cam assembly, mistakenly introduced photographs

49

The Markman determination that SnoWizard requests is necessary to determine after trial whether SS-2
infringed the 871 patent.
50

Rec. Doc. 579-1 at p. 10 (citing Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir. 1995)).

51

Id. (citing Southwall Techs., Inc., 54 F.3d at 1575).

52

Id.

53

Id. at p. 11 (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1581 (Fed. Cir. 1996)).

54

Id. at pp. 11-12.

55

Civil Action No. 10-4275 was originally consolidated with Civil Action No. 06-9170. Civil Action No. 10-4275
was severed from the consolidated matter by Judge Zainey on February 11, 2011. No. 10-4275, Rec. Doc. 13.

11

of SS-1.56 The photographs included arrows to more clearly illustrate how the claims of the 871
patent read onto the photographed cam assembly. Due to the mistake in using photographs of SS-1
instead of SnoWizard’s patented cam assembly, SnoWizard argues that Plaintiffs have judicially
admitted that SS-1 infringes the 871 patent by demonstrating how the claims of the 871 patent read
onto SS-1.57

2. Plaintiffs’ Arguments Opposing Summary Judgment
First, Plaintiffs argue that summary judgment cannot be granted here because SnoWizard
already stipulated that a disputed issue of material fact exists regarding the on-sale bar.58 Second,
Plaintiffs reiterate the arguments and evidence presented in the motion for partial summary
judgment that this Court denied based on the parties stipulations.59 Specifically, Plaintiffs argue
that patent infringement requires a valid patent, and that element is disputed by the evidence set
forth in the motion for partial summary judgment regarding the on-sale bar.60 Plaintiffs contend
that SnoWizard avoided invalidation of the 871 patent on Plaintiffs’ earlier motion for partial
summary judgment by stipulating to the Court that material facts were disputed. 61 However, by
filing this new motion for summary judgment, Plaintiffs argue that SnoWizard is repudiating its
56

Rec. Doc. 579-1 at p. 12; Rec. Doc. 579-8.

57

Rec. Doc. 579-1 at p. 12

58

Rec. Doc. 585 at p. 8. Plaintiffs filed a Motion for Partial Summary Judgment Dismissing Entire Counterclaim
for Patent Infringement on November 7, 2011. Rec. Doc. 461. On September 27, 2012, the pending motion for partial
summary judgment was dismissed on the basis of the parties’ stipulation in a status conference that there existed a
disputed material issue of fact regarding the on-sale bar. See Rec. Docs. 560 & 561.
59

Id.

60

Rec. Doc. 585 at p. 9.

61

Id.

12

earlier stipulation.62 Third, Plaintiffs aver that SnoWizard merely includes “some photographs from
where SnoWizard’s owner took the side cover off of a Southern Snow ice-shaving machine to see
the ratchet linkage,” and SnoWizard has not proven patent infringement, which requires analyzing
the elements of the accused device and connecting them to the elements in one or more patent
claims.63

III. Law & Analysis
A. Markman Determination
In Markman v. Westview Instruments,64 the Supreme Court determined that the
interpretation of patent claims is a question of law to be decided by the Court.65 The United States
Court of Appeals for the Federal Circuit has clarified that “Markman does not require a district
court to follow any particular procedure in conducting claim construction.”66 The Federal Circuit
further elaborated, saying that:
[Markman] merely holds that claim construction is the province of the court, not a
jury. To perform that task, some courts have found it useful to hold hearings and
issue orders comprehensively construing the claims in issue. Such a procedure is not
always necessary, however. If the district court considers one issue to be dispositive,
the court may cut to the heart of the matter and need not exhaustively discuss all the
other issues presented by the parties. District courts have wide latitude in how they
conduct the proceedings before them, and there is nothing unique about claim
construction that requires the court to proceed according to any particular protocol.
As long as the trial court construes the claims to the extent necessary to determine

62

Id.

63

Id. at p. 10.

64

517 U.S. 370 (1996).

65

Id. at 372.

66

Ballard Med. Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352, 1358 (Fed. Cir. 2001).

13

whether the accused device infringes, the court may approach the task in any way
that it deems best.67
Some district courts have exercised this “wide latitude” to make Markman determinations on
summary judgment.68

Moreover, Respondents have not indicated what, if any, additional

information would be presented at a Markman hearing. In fact, both parties argue that the Court
should apply the definitions contained in a general-purpose dictionary to construe the patent claims,
and the Court does not find that the application of those definitions to the patent claims would be
aided by conducting a hearing.

1. Law Applicable to Claim Construction
Where words of a claim require interpretation, courts should look to the intrinsic evidence,
namely the patent claims, the specification, and the prosecution history. 69 Reliance on extrinsic
evidence is proper only if the intrinsic evidence fails to resolve ambiguities in a disputed claim
term.70 Terms within patent claims should be given their ordinary and accustomed meanings as
understood by one of ordinary skill in the art at the time of the invention.71 To that end, courts may
consult scientific dictionaries and scientific treatises to determine the ordinary meaning of a

67

Id.

68

See Leoutsakos, 51 Fed. Appx. 310; Elder, 180 F. Supp. 2d 818; PMG, Inc., 2002 WL 31008137; Utah Med.
Prods., Inc., 79 F. Supp. 2d 1290.
69

Vitronics Corp., 90 F.3d 1576, 1582 (Fed. Cir. 1996).

70

Id.

71

Bell Atlantic, 262 F.3d at 1267.

14

technical term,72 and they may consult a general-purpose dictionary to determine the meaning of
non-technical terms.73
When claim language is clear on its face, reference to the patent specification and
prosecution history is only considered insofar as they set forth a definition deviating from the clear
definition of the claim language or the prior art.74 Here, both parties rely on a general-purpose
dictionary to interpret the patent claims,75 and neither party suggests that the patent claims in
dispute involve the interpretation of any technical or scientific terms, or that the patent specification
or prosecution history indicates a definition differing from the ordinary meaning.76 Moreover,
“there is a heavy presumption in favor of the ordinary meaning of claim language as understood by
one of ordinary skill in the art.”77 Therefore, construction of the disputed claim terms should begin
with a general-purpose dictionary.

2. Interpretation of “The Second End has Formed in a Bottom Surface Thereof, a[n]
Indented Cavity for Receipt of a Ratchet Tooth”
To evaluate the meaning of “the second end has formed in a bottom surface thereof, [a]n
indented cavity for receipt of a ratchet tooth,” the key disputed terms that may require the Court to
consult a dictionary are “indented,” “cavity,” and “receipt.”

The Merriam-Webster Online

72

Dow Chem. Co. v. Sumitomo Chem. Co., Ltd., 257 F.3d 1364, 1372-73 (Fed. Cir. 2001).

73

AFG Indus., 239 F.3d at 1248.

74

See Interactive Gift Express, Inc., 256 F.3d at 1331.

75

See Rec. Doc. 585 at pp. 5-8; Rec. Doc. 579 at pp. 8-9.

76

Although Plaintiffs appear to argue that a Markman hearing would aid the Court in construing the patent claims,
Plaintiffs do not indicate what if any additional evidence or information would be provided to the Court in a hearing.
See Rec. Doc. 585 at p. 8.
77

Bell Atlantic, 262 F.3d at 1268.

15

Dictionary contains the following potentially applicable definitions of “indented”: (1) to notch the
edge of: make jagged; (2) indenture; and (3) to set (as a line of a paragraph) in from the margin.
“Cavity” is defined by the Merriam-Webster Online Dictionary as “an unfilled space within a mass;
especially a hollowed-out space.” Finally, “receipt” is defined as “the act or process of receiving,”
and “receiving” is defined as: (1) to come into possession of; (2) to act as a receptacle or container
for; (3) to permit to enter; and (4) to support the weight or pressure of.
Having determined the ordinary meaning of the key words, the phrase in dispute seems to
have three distinct parts. First, the phrase indicates where the indented cavity must be located: on
the second end on the bottom surface. Second, the phrase requires the existence of an indented
cavity, at the above-referenced location. SnoWizard’s proposed interpretation of “indented cavity”
would make the word indented have the same meaning as cavity, or no meaning at all. The
definition relied upon must be one that gives meaning to the use of the word “indented” to modify
“cavity.” Therefore, in this context, “indented cavity” must be a hollowed- out space set in from the
margin. Finally, the phrase requires that the indented cavity at the specified location be for a
specific purpose: to act as a receptacle or container for the ratchet tooth, to permit the ratchet tooth
to enter, or to support the weight or pressure of the ratchet tooth. Therefore, the phrase “the second
end has formed a bottom surface thereof, a[n] indented cavity for receipt of a ratchet tooth” means
that the bottom surface at the end of the arm of the cam has a hollowed-out space set in from the
margin for the purpose of receiving a ratchet tooth.

3. Interpretation of “A Gradually Tapering Width from Back to Front”
The parties dispute construction of the phrase “a gradually tapering width from back to
front,” and, in particular, they dispute the definition of the key words “gradually tapering.” The
16

Merriam-Webster Online Dictionary defines “gradual” as “proceeding by steps or degrees” and
“moving, changing, or developing by fine or often imperceptible degrees.” The same dictionary
defines taper as “a gradual diminution of thickness, diameter, or width in an elongated object” or “a
gradual decrease.” Thus, the ordinary meaning of “gradually tapering” is a diminution of thickness,
by steps or degrees, in an elongated object. Here, SnoWizard would have the Court find that it is
irrelevant where this tapering occurs, but, in fact, the claim specifies that this gradual tapering
occurs from back to front along “a single elongated structure.”78 Further, within both patent claims
at issue, the “front” and “back” of the “single elongated structure” are specified.79 Notwithstanding
the doctrine of claim differentiation, which SnoWizard notes requires that “each claim in a patent
must be interpreted to have a different scope than every other claim,”80 the terms and phrases within
a single claim can and should modify the scope and meaning of that particular claim. Therefore, the
phrase “a gradually tapering width from back to front” should be interpreted to mean a diminution
of thickness, by steps or degrees, along the length of the cam member from the back, where the cam
member is connected to the cam connector, to the front, where the indented cavity is located.

B. Summary Judgment of Patent Infringement
1. Standard on a Motion for Summary Judgment for Patent Infringement
Summary judgment is appropriate when the pleadings, the discovery, and any affidavits
show that “there is no genuine issue as to any material fact and that the movant is entitled to
78

See Rec. Doc. 579-5 at pp. 7-8 (claims 1 and 11).

79

Id.

80

Rec. Doc. 579-1 at p. 8 (citing SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1122 (Fed. Cir. 1985)
(“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation
cannot be read into the former claim in determining either validity or infringement.”))

17

judgment as a matter of law.”81 When assessing whether a dispute as to any material fact exists, the
court considers “all of the evidence in the record but refrains from making credibility
determinations or weighing the evidence.”82 All reasonable inferences are drawn in favor of the
nonmoving party,83 but “unsupported allegations or affidavits setting forth ‘ultimate or conclusory
facts and conclusions of law’ are insufficient to either support or defeat a motion for summary
judgment.”84 If the record, as a whole, could not lead a rational trier of fact to find for the nonmoving party, then no genuine issue of fact exists and the moving party is entitled to judgment as a
matter of law.85

2. Patent Validity
Although SnoWizard has moved for summary judgment of patent infringement of the 871
patent by SS-1, the validity of the 871 patent has not yet been resolved. The Court recognizes that
validity and infringement are two distinct issues. Here, however, the parties have stipulated that
there is a disputed issue of material fact relating to the on-sale bar, which must be resolved before
the validity of the 871 patent can be evaluated.86 Because the infringement issues will not be
decided until the validity of the patent is determined, SnoWizard’s motion for summary judgment of
patent infringement is premature. Nevertheless, the Court examines the alleged infringement, and
81

Fed. R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986); Southwall Techs., Inc., 54
F.3d at 1575.
82

Delta & Pine Land Co. v. Nationwide Agribusiness Ins. Co., 530 F.3d 395, 398-99 (5th Cir. 2008).

83

SRI Int’l, 775 F.2d at 1116.

84

Galindo v. Precision Am. Corp., 754 F.2d 1212, 1216 (5th Cir. 1985).

85

Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 586 (1986).

86

See Rec. Docs. 564 & 565.

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notes that there are no material issues of fact in dispute regarding whether the claims of the 871
patent read onto SS-1.

3. Literal Infringement of the 871 Patent
A patentee may prove infringement either by showing that an accused product literally
infringes a claim in the patent or that the product infringes under the doctrine of equivalents.87
Literal infringement requires proof that every limitation set forth in a claim is found in an accused
product, exactly;88 whereas, a product may infringe under the doctrine of equivalents if every
element in the claim is either literally or equivalently present in the accused product. 89 “A claim
element is equivalently present in an accused device if only insubstantial differences distinguish the
missing claim element from the corresponding aspects of the accused device.”90
Literal patent-infringement analysis involves two steps: proper construction of the asserted
claim and then a determination as to whether the accused method or product infringes the asserted
claim as properly construed.91 As discussed above, the construction of a patent, including terms of
art within a claim, are exclusively within the province of the court.92 The existence of literal
infringement is determined by a word-by-word reading of the patent claims onto the accused

87

Southwall, 54 F.3d at 1579.

88

Id. at 1575.

89

Sage Prods., Inc. v. Devon Indus. Inc., 126 F.3d 1420, 1423 (Fed. Cir. 1997).

90

Id.

91

Vitronics, 90 F.3d at 1581-82.

92

Markman, 517 U.S. at 387.

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product.93 The failure of the accused product to meet a single claim limitation is sufficient to negate
literal infringement of the claim.94

4. Application of the 871 Patent Claims to SS-1
In the pending motion, SnoWizard asks the Court to determine if SS-1, Southern Snow’s
cam assembly used from 2006 to 2011, infringes the 871 patent. First, a comparison of the
photographic evidence submitted along with the briefs, reveals that SS-1 and SnoWizard’s patented
cam assembly are virtually identical.95 To aid in this claim-by-claim comparison of the accused
product and the 871 patent, SnoWizard attaches an exhibit to its memorandum in support of the
motion, wherein arrows and labels are used to demonstrate how the 871 patent reads onto the
accused product.96 It is clear from the evidence that each and every claim of the 871 patent reads
onto SS-1. Additionally, SnoWizard submits the declaration of Sciortino, the inventor of the
patented cam assembly, wherein Sciortino submits statements under oath that each and every
element of claim 1 and claim 11 are found in SS-1.97 Plaintiffs have not presented any evidence,
nor is there any evidence in the record, to refute the evidence submitted by SnoWizard that SS-1
infringes the 871 patent.

93

Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991).

94

Id.

95

See Rec. Docs. 579-5, 579-6, 579-7, 579-8; Rec. Doc. 585 at pp. 2-3.

96

See Rec. Doc. 579-8. These pictures were originally submitted by Plaintiffs’ counsel, Mark Andrews, in Civil
Action No. 10-4275, to demonstrate how the 871 patent reads onto SnoWizard’s cam assembly. No. 10-4275, Rec.
Docs. 18-4, 18-6, 18-7. Andrews inadvertently used a Southern Snow cam assembly in the exhibits, instead of the
SnoWizard cam assembly, and the Court did not allow the evidence to be withdrawn. No. 10-4275, Rec. Doc. 24.
97

Rec. Doc. 579-4.

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Second, Plaintiffs recognize in their opposition that “after SnoWizard sued Southern Snow
for patent infringement, Southern Snow developed a newer design in September 2011, which …
went into Southern Snow ice-shaving machines in 2012. Southern Snow’s newest ratchet linkage
[SS-2] was designed to avoid SnoWizard’s Patent.”98 Plaintiffs further state that the new ratchet
linkage went back to the prior-art by having essentially straight sides—a “change that was intended
to avoid the Patent by going back to the prior art.”99
Based on Plaintiffs own admissions and the evidence submitted by SnoWizard, there is no
genuine issue as to any material fact that the patent claims of the 871 patent are present in SS-1.
However, the Court finds that summary judgment is not appropriate regarding the issue of patent
infringement, because an initial decision that the patent is valid must be made, and the issue of
validity cannot be reached on a motion for summary judgment because the parties have stipulated to
the existence of a disputed issue of material fact regarding when the patented device was first sold.

IV. Conclusion
Having determined that the Court has enough information to make a Markman
determination without holding a hearing, claims 1 and 11 of the 871 patent should be construed in
accordance with the foregoing interpretation.100 Although the Court also finds that the claims of the
871 patent read onto SS-1, summary judgment is not appropriate here because the validity of the
patent has yet to be determined. Accordingly,

98

Rec. Doc. 585 at p. 2.

99

Id.

100

See supra Part IV.A.2 & IV.A.3.

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IT IS HEREBY ORDERED that SnoWizard’s Motion for a Markman Determination and
for Summary Judgment of Patent Infringement101 is GRANTED IN PART AND DENIED IN
PART.
IT IS FURTHER ORDERED that the Markman determinations as to the disputed phrases
are as follows: (1) “the second end has formed in a bottom surface thereof, a[n] indented cavity for
receipt of a ratchet tooth” means that the bottom surface at the end of the arm of the cam has a
hollowed-out space set in from the margin for the purpose of receiving a ratchet tooth; and (2) “a
gradually tapering width from back to front” means a diminution of thickness, by steps or degrees,
along the length of the cam member from the back, where the cam member is connected to the cam
connector, to the front, where the indented cavity is located.
IT IS FURTHER ORDERED that SnoWizard’s motion is DENIED as premature insofar
as it requests summary judgment of patent infringement by SS-1, because questions regarding the
validity of the patent have not been resolved.

NEW ORLEANS, LOUISIANA, this 2nd day of January, 2013.

___________________________________
NANNETTE JOLIVETTE BROWN
UNITED STATES DISTRICT JUDGE

101

Rec. Doc. 579.

22