IRREVOCABLE TRUST OF ANTHONY J. ANTONIOUS v. NIKE, INC.
Filing
61
OPINION and ORDER denying 57 Motion to Conform Markman Order to Markman Opinion Or, in the Alternative, to Amend Markman Order ( ECF 57). Signed by Judge Kevin McNulty on 2/20/14. (jd, )
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
Civil Action No. 1 1-cv-06327
(KM)
IRREVOCABLE TRUST of
ANTHONY J. ANTONIOUS,
Plaintiff,
OPINION AND ORDER
NIKE, INC.,
Defendant.
This matter comes before the Court on the motion of plaintiff (the
“Trust”) to Conform the Markman Order to Markman Opinion Or, in the
Alternative, to Amend Markman Order. (ECF 57) Defendant has opposed the
motion (ECF 58) and Plaintiff has filed a Reply (ECF 59).
On April 29, 2013, I held a hearing for the purpose of constructing
contested terms in the ‘754 patent at issue, pursuant to Markman v. Westview
Instmments, 52 F.3d 967 (Fed. Cir. 1995). On January 8, 2014, I filed an
Opinion and Order setting forth my construction of the disputed patent terms.
(ECF 55, 56) Among the terms constructed in my Opinion were “substantially
parallel with” in Claim 1 and “substantially parallel to” in Claim 9. My Opinion
construed the two phrases as synonymous, finding that both implied a
substantially flat bottom/sole of the club head. The Trust now claims, in its
motion, that the two phrases should be construed differently. In particular, it
concedes that “substantially parallel with” in Claim 1 entails a substantially
flat bottom/ sole of the club head, but contends that “substantially parallel to”
in Claim 9 does not.
There are several problems with the Trust’s motion as presented.
First, this is in no sense a motion to “conform” the Order to the Opinion
or to “amend” the Order. A motion to amend or conform would be used, at
most, to correct a scrivener’s error or an error in transmission between the
Opinion and the Order. This Order, however, contains a cut-and-paste of the
construction of patent terms in the Opinion. The Trust’s motion seeks to
persuade the Court to change its construction of “substantially parallel to” in
both the Opinion and the Order. That is more akin to a motion for
reconsideration. See Local Civil Rule 7.1(i).
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No legitimate grounds for reconsideration are raised by this motion. A
court will grant a motion for reconsideration only where: (1) an intervening
change in the controlling law has occurred; (2) evidence not previously
available has become available; or (3) it is necessary to correct a clear error of
law or prevent manifest injustice. Max’s Seafood Cafe ex rel. Lou-Ann, Inc. v.
Quinteros, 176 F.3d 669, 677 (3d Cir. 1999). Reconsideration is not warranted
where, as here, the movant has filed the motion merely to disagree with or
relitigate the court’s initial decision. Tehan v. Disability Mgmt. Servs., Inc., 111
F. Supp. 2d 542, 549 (D.N.J. 2000). I set aside that threshold problem for the
moment.
Second, as a matter of plain English, I fail to see how “parallel with”
differs from “parallel to” in any way that would affect the issue. To my way of
speaking, the phrases are synonymous. And the choice of preposition does not
erase the interpretation and prosecution history that defines “substantially
parallel.”
Third, the Trust at all times treated the phrases as synonymous. The
statement of the parties’ claims in its briefing, for example, stated that the term
as used in
to be constructed by the court was “Substantially parallel with/to
Claims 1 and 9.” (ECF 40 at 8) The Trust then stated the parties’ competing
constructions, and never so much as suggested that different definitions
applied to Claims 1 and 9. In my Opinion, I raised arguendo the issue of
whether the two should be construed identically; I concluded that the parties
had stated no basis to treat them differently, and added that “claim 9, added
only on reexamination, could not expand the scope of the prior claims.”
(Opinion, ECF 54 at 23) The Trust’s new position seems opportunistic.
...
Fourth, the Trust urges that Claim 1 and Claim 9 (which was added on
reexamination) have different “genealogies.” It criticizes the Court’s reliance on
a prosecution disclaimer that referred only to Claim 1. (ECF 54 at 19, 23) But,
as noted, no party ever drew any distinction between Claims 1 and 9 with
respect to this issue, and a claim added in reexamination could not be used to
expand the scope of the patent. Figure 5, which is common to the
embodiments, further supports a limitation of flatness.’
Nike, moreover, points to disclaimers in the reexamination history that suggest
a broader application to other embodiments. (See ECF 58 at 12 & n.5 (citing the
record).)
The Trust’s disclaimer of any slot extending into the sidewalls, as the Opinion
pointed out, has some relevance to the parallel/flat issues. (ECF 54 at 23) It bears, for
example, on the feasibility of an embodiment that has a curved bottom surface. It also
bears on the question of whether the club head is in an “aerodynamically efficient
configuration.” I do not interpret “aerodynamic” to mandate a curved bottom surface,
as argued by the Trust; for one thing, that interpretation would invalidate Claim 1,
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Figures 9 and 10, to which the Trust refers in its motion, are far from
definitive. The Trust appears to place undue reliance on the contour lines, or
shading lines, in the drawings. These, however, are ambiguous; examination of
all of the Figures makes me suspect that such lines may even have different
meanings (e.g., scooping away from the observer, or bulging toward the
observer) depending on where they appear. At any rate, as stated, these
illustrations and Claim 9, added in reexamination, could not expand the
coverage of the original patent by eliminating a preexisting limitation of
flatness, which is conceded as to Claim 1 and illustrated in Figure 5.
And—assuming it were permissible—if dispensing with the flatness limitation
were the goal of Claim 9, I would expect and require a clearer statement to that
effect.
In short, I do not here rehash all of the points in the Opinion, but suffice
it to say that I adhere to its reasoning and see no basis to reconsider, amend,
or conform.
Accordingly,
IT IS this 20th day of February, 2014
ORDERED that the Plaintiff’s Motion to Conform the Markman Order to
Markman Opinion Or, in the Alternative, to Amend Markman Order (ECF 57) is
DENIED.
KEVIN MCNULTY
United States District J
which, as the Trust concedes, has a flat bottom. Contrary to the Trust’s current
argument, to say that the bottom is curved, or not, is not to say that the club head is
aerodynamic, or not. Other factors are involved. Were it not so, this requirement would
rule out every design element that did not have as its sole objective the minimization
of drag. The striking face, for example, could be designed to be less flat and hence
more “aerodynamic.” But then it might be useless for hitting a golf ball.
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