Olaf Soot Design, LLC v. Daktronics, Inc., et al

Filing 137

OPINION re: 74 MOTION for Reconsideration re; 72 Memorandum & Opinion, (Denial of Summary Judgment of Non-Infringement) filed by Daktronics, Inc., Daktronics Hoist, Inc. : Defendants Daktronics, Inc. and Daktronics Hoist, I nc. ("Daktronics" or the "Defendants") have moved for reconsideration of this Court's October 26, 2016 decision to deny Defendants' motion for summary judgment on non-infringement regarding Defendants' Vortek winch and Plaintiff Olaf Soot Design, LLC's ("Olaf Soot" or the "Plaintiff") U.S. Patent No. 6,520,485 ("the '485 Patent"). For the foregoing reasons, Defendants' motion for reconsideration is denied. (Signed by Judge Robert W. Sweet on 5/17/2017) (jwh)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

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OLAF SOOT DESIGN, LLC,
Plaintiff,
15 Civ. 5024

(RWS)

- against OPINION
DAKTRONICS, INC. and
DAKTRONICS HOIST, INC.,
Defendants.

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A P P E A R A N C E S:

Attorneys for Plaintiff

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TROUTMAN SANDERS LLP
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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.

Sweet, D.J.

Defendants Daktronics, Inc. and Daktronics Hoist,

Inc.

("Daktronics" or the "Defendants") have moved for
reconsideration of this Court's October 26, 2016 decision to
deny Defendants' motion for summary judgment on non-infringement
regarding Defendants' Vortek winch and Plaintiff Olaf Soot
Design, LLC's ("Olaf Soot" or the "Plaintiff") U.S. Patent No.
6,520,485 ("the '485 Patent"). For the reasons set forth below,
Defendants' motion for reconsideration is denied.

Prior Proceedings

Plaintiff brought this patent infringement action on June
26, 2015. On October 26, 2016, after hearing Plaintiff's motion
for claim construction and Defendants' motion for summary
judgment, the Court construed twelve claim constructions on the
'485 Patent and denied Defendants' summary judgment motion.
(Dkt. 72.)

On November 9, 2016, Defendants moved for reconsideration.
(Dkt. 74.) The motion was taken on submission and marked fully
submitted on January 12, 2017.

(Dkt. 87.)

1

Applicable Standard

Under Local Rule 6.3, a party moving for reconsideration
"must demonstrate that the Court overlooked controlling
decisions or factual matters that were put before it on the
underlying motion." Eisenmann v. Greene, 204 F.3d 393, 395 n.2
(2d Cir. 2000)

(quotation marks and citation omitted). "The

major grounds justifying reconsideration are an intervening
change of controlling law, the availability of new evidence, or
the need to correct a clear error or prevent manifest
injustice." Virgin Atl. Airways, Ltd. v. Nat'l Mediation Bd.,
956 F.2d 1245, 1255 (2d Cir. 1992)

(quotation marks and citation

omitted).

The standard for granting such a motion is "strict" and
should only be done when the movant "can point to controlling
decisions or data that the court overlooked-matters, in other
words, that might reasonably be expected to alter the conclusion
reached by the court." Shrader v. CSX Transp., Inc., 70 F.3d
255, 257

(2d Cir. 1995). "Such motions are not vehicles for

taking a second bite at the apple," Rafter v. Liddle, 288 F.
App'x 768, 769 (2d Cir. 2008)

(internal quotation marks and

citation omitted), and "should not be granted where the moving

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party seeks solely to relitigate an issue already decided,"
Shrader, 70 F.3d at 257.

Defendants' Motion For Reconsideration Is Denied

In their motion for reconsideration,

Defendants contend

that when the Court found that a reasonable jury could find the
accused Vortek winch insubstantially different to the '485
Patent under the doctrine of equivalents,

it ignored Federal

Circuit precedent and violated part of the "all elements rule."
(Defs.' Memo in Supp. at 1, Dkt. 75.) As this issue was
previously raised by Defendants in their motion papers,
considered by the Court, and has not been shown to be clear
error, Defendants' motion is denied.

The "all elements rule" states that "an accused product or
process is not infringing unless it contains each limitation of
the claim, either literally or by an equivalent." Freedman
Seating Co. v. Am. Seating. Co., 420 F.3d 1350, 1358
2005)

(Fed. Cir.

(citations omitted). This rule "constrain[s] when and how

the doctrine of equivalents is to be applied" by finding that
"an element of an accused product or process is not, as a matter
of law, equivalent to a limitation of the claim invention if
such a finding would entirely vitiate the limitation." Id.
3

(citing Warner-Jenkinson Co. v. Hilton Davis Chern. Co., 520 U.S.
17, 29 (1997)). To find a claim limitation vitiated is a "legal
determination that the evidence is such that no reasonable jury
could determine two elements to be equivalent." Deere & Co. v.
Bush Hog, LLC, 703 F.3d 1349, 1356 (Fed. Cir. 2012)

(citing

Warner-Jenkinson, 520 U.S. at 39 n.8). "[T]he vitiation test
cannot be satisfied by simply noting that an element is missing
from the claimed structure or process because the doctrine of
equivalents, by definition, recognizes that an element is
missing that must be supplied by the equivalent substitute." Id.
"[F]or example, courts properly refuse to apply the doctrine of
equivalents 'where the accused device contain[s] the antithesis
of the claimed structure.'" Id.

(citation omitted).

Defendants repeatedly argued vitiation during briefing for
their summary judgment motion.

(See Defs.' Memo in Supp. at 10-

11, Dkt. 33; Defs.' Reply Br. at 9-10, Dkt. 51.) While citing
different cases here, it is difficult to . construe Defendants'
instant motion as anything but an attempt to "repeat[] the same
arguments included in previous motion papers." Cipollaro v. NYC
Transit Authority, 2015 WL 110147, at *l

(S.D.N.Y. Jan. 3, 2015)

(citing UniCredito Italiano Spa v. JP Morgan Chase Bank, 288 F.
Supp. 2d 485

(S.D.N.Y. 2003)). This is not the purpose of

reconsideration.
4

Nevertheless, to the extent that Defendants identify new
cases of controlling precedent, none show clear error warranting
reconsideration. The contested '458 Patent claim element is a
functional limitation that covers a corresponding structure and
its equivalents. See (Dkt. 72 at 13); 35 U.S.C.

§

112(f). The

Court already found that the '458 Patent and Vortek winch do not
possess literally identical structures.

(Dkt. 72 at 25.) But

under the doctrine of equivalents, it is not required that an
accused product literally possess every element of allegedly
infringed patent because, "by definition," it could not. Deere &
Co., 703 F.3d at 1356. A reasonable factfinder could find the
Vortek's design-where "part of the base member slide[s] relative
to the carriage and the other part remain bolted in place" as
opposed to both sides of the base member (Dkt. 72 at 27
(emphasis added) )-an "insubstantial structural difference" that
is structurally equivalent in performing an identical function
to the '458 Patent. Al-Site Corp. v. VSI Intern., Inc., 174 F.3d
1308, 1321 (Fed. Cir. 1999). Unlike the cases identified by
Defendants 1 ,

Plaintiff's means-plus-function claim covers

equivalent claim structures, and the Vortek winch's structural
1

Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350 (Fed.
Cir. 2005); Senior Techs., Inc. v. R.F. Techs., Inc. 76 Fed.
App'x 318 (Fed. Cir. 2003); Am. Calcar, Inc. v. Am. Honda Motor
Co., Inc., 651 F.3d 1318 (Fed. Cir. 2011).
5

difference neither makes the Vortek winch the "antithesis" of
the '485 Patent, Deere & Co., 703 F.3d at 1356 (citation
omitted), nor renders the given '485 Patent "limitation
meaningless." Freedman Seating, 420 F.3d at 1359 (citation
omitted).

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Conclusion

For the foregoing reasons, Defendants' motion for
reconsideration is denied.

It is so ordered.

New York, NY
May ' ( 2017

-j
OBERT W. SWEET
U.S.D.J.

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