John Mezzalingua Associates, Inc v. Corning Gilbert Inc.

Filing 67

MEMORANDUM-DECISION and ORDER - ORDERED that Magistrate Judge David E. Peebles September 5, 2012 Report-Recommendation and Order (Dkt. No. 59) is ADOPTED in its entirety; and it is further ORDERED that the following meanings shall be affixed t o the patent claim terms in dispute: Disputed Term Proposed Construction Cylindrical Body Member No Construction Necessary First End No Construction Necessary Cylindrical Sleeve No Construction Necessary First Central Bore A c avity lying between the inner wall of the cylindrical sleeve (194 Patent) or connector body (940 Patent) and the tubular post (194Patent) or the post (940 Patent) Compression Ring structure of a connector tha t deforms the rear end portion ofthe cylindrical sleeve inwardly toward the tubular post when slidaxially over the cylindrical body member Central Passageway a cavity in the center of thecompression ring (194 Patent) or fast ener member (940 Patent) extending between the first and second ends thereof. Commensurate mean of corresponding extent, magnitude, or degree;proportionate, adequate. Said Inwardly Tapered Annular No Construction Necessar y Wall Causing Said Rear End Portion of Said Cylindrical Sleeve to be Deformed Inwardly Connector Body Member No Construction Necessary Fastener Member the structure of the connectorthat deforms the connector body member inw ardly toward the post when slid over the connectorbody member ORDERED parties to notify the court, within fourteen (14) days of the date of this Memorandum-Decision and Order of their intentions regarding consent to have Judge Peebles conduct all further proceedings in this case under 28 U.S.C. § 636(c). Signed by Chief Judge Gary L. Sharpe on 11/21/2012. (Attachments: # 1 Judge Peebles' Report Recommendation) (jel, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
________________________________
JOHN MEZZALINGUA
ASSOCIATES, INC., d/b/a
PPC,
Plaintiff,

5:11-cv-761
(GLS/DEP)

v.
CORNING GILBERT INC.,
Defendant.
________________________________
APPEARANCES:
OF COUNSEL:
FOR THE PLAINTIFF:
Hiscock, Barclay Law Firm
Syracuse Office
One Park Place
300 South State Street
Syracuse, NY 13202-2078
FOR THE DEFENDANT:
Harter, Secrest Law Firm
Rochester Office
1600 Bausch & Lomb Place
Rochester, NY 14604-2711
DLA Piper LLP
DC Office
500 Eighth Avenue NW
Washington, DC 22004

DOUGLAS J. NASH, ESQ.
GABRIEL M. NUGENT, ESQ.
JOHN D. COOK, ESQ.

DAVID M. LASCELL, ESQ.
ERIKA N.D. STANAT, ESQ.
JERAULD E. BRYDGES, ESQ.

JOSEPH P. LAVELLE, ESQ.
ANDREW N. STEIN, ESQ.

Gary L. Sharpe
Chief Judge
MEMORANDUM-DECISION AND ORDER

I. Introduction
Plaintiff John Mezzalingua Associates, Inc., doing business as PPC,
commenced this action against defendant Corning Gilbert, Inc. for alleged
infringement of two of PPC’s coaxial cable connector patents. (See
Compl., Dkt. No. 1.) Following the parties’ request for the construction of
ten disputed terms in the two patents in suit, the court referred the matter to
Magistrate Judge David E. Peebles for a Markman hearing. (See Dkt. Nos.
34, 36, 37.) In a Report-Recommendation and Order (R&R) filed
September 5, 2012, Judge Peebles recommended constructions for five of
the disputed terms, and, with respect to the remaining five, found that no
construction was necessary.1 (See generally R&R, Dkt. No. 59.) Pending
are Corning Gilbert’s objections to the R&R. (See Dkt. No. 61.) For the
reasons that follow, the R&R is adopted in its entirety.
II. Standard of Review
Before entering final judgment, this court routinely reviews all reportrecommendation and orders in cases it has referred to a magistrate judge.
If a party has objected to specific elements of the magistrate judge’s

1

The Clerk is directed to append the R&R to this decision, and
familiarity therewith is presumed.
2

findings and recommendations, this court reviews those findings and
recommendations de novo. See Almonte v. N.Y. State Div. of Parole, No.
Civ. 904CV484GLS, 2006 WL 149049, at *6-7 (N.D.N.Y. Jan. 18, 2006).
Where no party has filed an objection, only vague or general objections are
made, or a party resubmits the same papers and arguments already
considered by the magistrate judge, this court reviews the findings and
recommendations of the magistrate judge for clear error. See id. at *4-5.
III. Discussion
Corning Gilbert’s principal objection is to Judge Peebles’
recommendation that a plain meaning construction—i.e, no construction at
all—should be applied to the terms “cylindrical body member” and
“connector body” (collectively “body members”). (See Dkt. No. 61 at 1216.) Adopting an analogous argument to that of the defendant-appellants
in O2 Micro International Limited v. Beyond Innovations Technology
Company, 521 F.3d 1351, 1360 (Fed. Cir. 2008), Corning Gilbert claims
that given the importance of these terms, the failure to construe them
would effectively force the trier of fact to decide what is undisputably a
question of law. (See Dkt. No. 61 at 13-16.) In response to Corning
Gilbert’s objections, PPC argues that Judge Peebles’ recommendations
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were appropriate. (See Dkt. No. 63 at 9-20.) In so doing, PPC requests
that the court’s construction order should include what is essentially a
disavowal of Corning Gilbert’s proposed construction of the body members.
(See id. at 10-11.) The court will address each of these arguments in turn.
When faced with “an actual dispute regarding the proper scope” of a
patent claim, the court must construe the allegedly infringed claim to
determine its meaning and scope. O2 Micro, 521 F.3d at 1360. In so
doing, the court is cognizant that unless the patentee “acts as his own
lexicographer” or “disavows the full scope of a claim term either in the
specification or during prosecution,” the words of a claim are “given their
ordinary and customary meaning as understood by a person of ordinary
skill in the art when read in the context of the specification and prosecution
history.” See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
1365 (Fed. Cir. 2012). While there are certainly cases in which “the
meaning of a claim term as understood by persons of skill in the art is not
readily apparent,” O2 Micro, 521 F.3d at 1360, such is not the case here.
In discussing the deficiencies in both parties’ proposed construction
of the body members, Judge Peebles noted that the record was devoid of
any evidence that the patentee ascribed the terms a different meaning or
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intended to narrow the scope of the claim. (See R&R at 22.) Furthermore,
the court agrees that the terms are “comprised of three words each of
which is of ordinary usage and fully capable of being understood by a
person reading the patents at issue.” (Id.) As such, the ordinary and
customary meaning approach that Judge Peebles recommended is both
adequate and appropriate in this case. (See id. at 29.)
By contrast, Corning Gilbert’s reliance on in 02 Micro, where the
district court incorrectly refused to construe the term “only if,” is unavailing.
(See Dkt. No. 61 at 14-16); O2 Micro, 521 F.3d at 1361-63. As the Federal
Circuit held, the term in that case needed construction with respect to its
scope, not its meaning; thus, application of the “plain and ordinary
meaning” standard did not resolve the dispute. O2 Micro, 521 F.3d at
1361-63. To this end, the Federal Circuit noted that where a term has
more than one “ordinary” meaning, the “plain and ordinary meaning”
standard “may be inadequate.” Id. at 1361-62 (citing cases where ordinary
terms such as “board,” “golden brown,” “cover,” “included,” “attachment,”
and “removable” were construed). Indeed, in this case, there is neither
ambiguity in the terms, nor a dispute as to the scope of the claim. Although
Corning Gilbert’s proposed construction implicates scope insofar as it
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seeks to define the body members as “‘single, unitary piece[s],’” (see Dkt.
No. 36 at 14), this attempt, standing alone, does not necessitate departure
from the “plain and ordinary meaning” standard. Equally unpersuasive—for
the time being—is PPC’s attempt to foreclose any argument at trial
regarding the composition of the body members.2 (See Dkt. No. 63 at 10.)
It follows that Corning Gilbert’s objection to the construction of the body
members is denied.
So too are Corning Gilbert’s remaining objections, which consist of
arguments it already presented to Judge Peebles. (Compare Dkt. No. 61
at 16-21, 23-25, with Dkt. No. 36 at 9-15, 16-18.) Despite its claim that the
entire R&R is reviewed de novo, (see Dkt. No. 61 at 9), the court need only
conduct a clear error review with respect to arguments that have already
been submitted to the Magistrate Judge. See Almonte, 2006 WL 149049,
at *4. Having reviewed those arguments and the remainder of Judge
Peebles’ R&R for clear error, and finding none, the court accepts and
adopts Judge Peebles’ R&R in its entirety.

2

Because PPC is essentially asking for a limiting instruction, it is
premature to resolve the propriety of such a charge at this juncture.
Nevertheless, the parties may, if they so choose, raise this issue again in
their pretrial submissions and/or proposed jury instructions.
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As an aside, the court, mindful of the highly technical nature of this
matter and the expertise of Judge Peebles in this particular area of law,
directs the parties to notify the court, within fourteen (14) days of the date
of this Memorandum-Decision and Order of their intentions regarding
consent to have Judge Peebles conduct all further proceedings in this case
under 28 U.S.C. § 636(c). By consenting, the parties—in addition to
retaining the right to appeal any decisions to the Federal Circuit, see 28
U.S.C. §§ 636(c)(3), 1295(a)(1)—will not only be able to conduct all future
proceedings in Syracuse, New York, but also will have considerable
flexibility in scheduling, inter alia, the trial, by simply consulting with Judge
Peebles on a mutually agreeable date. On the contrary, should the parties
wish to pursue all future proceedings with this court, those proceedings,
which may include oral arguments on motions, status conferences, and the
trial, will be conducted in person at the James T. Foley United States
Courthouse in Albany, New York. Moreover, given, among other things,
the court’s criminal docket, it is usually unable to either provide a fixed trial
date and/or accommodate individual scheduling requests. To facilitate this
request, the Clerk is directed to provide a copy of the consent form to the
parties along with this Memorandum-Decision and Order.
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IV. Conclusion
WHEREFORE, for the foregoing reasons, it is hereby
ORDERED that Magistrate Judge David E. Peebles’ September 5,
2012 Report-Recommendation and Order (Dkt. No. 59) is ADOPTED in its
entirety; and it is further
ORDERED that the following meanings shall be affixed to the patent
claim terms in dispute:
Disputed Term

Proposed Construction

Cylindrical Body Member

No Construction Necessary

First End

No Construction Necessary

Cylindrical Sleeve

No Construction Necessary

First Central Bore

“A cavity lying between the inner
wall of the cylindrical sleeve (’194
Patent) or connector body (’940
Patent) and the tubular post (’194
Patent) or the post (’940 Patent)”

Compression Ring

“structure of a connector that
deforms the rear end portion of
the cylindrical sleeve inwardly
toward the tubular post when slid
axially over the cylindrical body
member”

Central Passageway

“a cavity in the center of the
compression ring (’194 Patent) or
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fastener member (’940 Patent)
extending between the first and
second ends thereof.”
Commensurate

mean “of corresponding extent,
magnitude, or degree;
proportionate, adequate.”

Said Inwardly Tapered Annular
No Construction Necessary
Wall Causing Said Rear End
Portion of Said Cylindrical Sleeve
to be Deformed Inwardly
Connector Body Member

No Construction Necessary

Fastener Member

“the structure of the connector
that deforms the connector body
member inwardly toward the post
when slid over the connector
body member”

ORDERED parties to notify the court, within fourteen (14) days of the
date of this Memorandum-Decision and Order of their intentions regarding
consent to have Judge Peebles conduct all further proceedings in this case
under 28 U.S.C. § 636(c); and it is further
ORDERED that the Clerk provide a copy of this MemorandumDecision and Order to the parties.

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IT IS SO ORDERED.
November 21, 2012
Albany, New York

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