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

Filing 312

OPINION: The Court's holding in the Summary Judgment Opinion is clear: the "base member," the "first means," and the "elongated screw" elements are not literally infringed by the Vortek product, but a reasonable jur y could nonetheless find infringement under the doctrine of equivalents. See Summary Judgment Opinion at 33 ("Summary Judgment is denied because a reasonable factfinder could find infringement for each term") The language Plaintiffs invoke to argue otherwise, while inartful, conflicts both with the Summary Judgment Opinion's holding as well as this the Court's clarification of the same in its reconsideration opinion. See ECF Nos. 72 and 82. It therefore has no effect on the & quot;law of the case." The issues to be determined at trial, then, include whether each of these terms (base member, first means, and elongated screw) is infringed upon under the doctrine of equivalents. Parties shall incorporate the above clarification into their presentment of the issues at trial. It is so ordered. (Signed by Judge Robert W. Sweet on 12/10/2018) (js)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

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OLAF SOOT DESIGN, LLC,
Plaintiff,

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15 Civ. 5024
- against OP INION
DAKTRONICS, INC. and
DAKTRONICS HOIST , INC.,
Defendants.

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APPEARANCES:

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

Attorneys for Defendants
BLANK ROME LLP
405 Lexingt on Ave
New York, NY 10174
By:
Kenneth L. Bressler , Esq.
BLANK ROME LLP
717 Te xas Avenue, Suite 1400
Houston , TX 77002
By:
Wong, Esq.
·, Esq.

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Sweet, D.J.

Before this Court is a dispute over the interpretation
of this Court's October 26 , 20 1 6 Summary Judgment and Claim
Const ructi on Opinion ("Summar y Judgment Opinion"). See Summary
Judgment Opinion, ECF No. 72.

In its Summary Judgment Opinion, this Court construed
twelve claim terms appearing in U.S. Patent No. 6,520,485 patent
("485 patent") and denied Defendant's motion for summary
judgment on non-infringement. Id. In denying summary judgment
with respect to th e alleged infringement of the '4 85 patent's
"base member," for example, which functions to support
horizontally the cylindrica l drum this Court held that , because
"the Vortek winch does not h ave a base member .

it is not

literall y infringing." Id. at 23. The language that follows,
however, appears to be the source of th e instant dispute:
"[T]he Vortek winch's base member is infringing under
the doctrine of equivalents. Finding that there is no
infringement for having a base member that supports
the drum, but la cks a h orizonta l member would allow
"unimportant and insubstantial substitutes for certa in
elements that could defeat the patent."
Id. at 23 (cleaned up).

1

Similar language appears in this Court's analysis
of equ i valent infringement by the Vortek product against
the "first means for slideably mounting the base member to
the carriage" ("first means") and "elongated screw having a
first end non-rotatably mounted to the carriage "
("elongated screw") terms of the ' 485 patent. Id. at 23 ,
2 9 , 32

This Court ultimately denied summary judgment, holding
that "a reasonable factfinder could find infringement for each
term." See id. at 33 ("In this case, a reasonable jury could
find that the base member, first means for slideably mounting
the base member to the carriage, and elongated screw having a
first end having a first end non-rotatably mounted to the
carriage are infringing.").

In deciding not to reconsider its Summary Judgment
Opinion, the Court clarified its finding. See ECF No. 82

("A

reasonable factfinder could find the Vortek 's design .
insubstantial structural difference that is structurally
equivalent in performing an identical function to the '45 8
patent.").

2

"an

Now, on the eve of trial, parties hotly contest the
import of the Summary Judgment Opinion-specifically, whether its
holding settled the issue of equivalent infringement by the
accused Vortek product against the '4 85 patent. See Pls.'s Memo.
in Supp., ECF No. 287 and Def.'s Memo. in Supp., ECF No. 288.

Plaintiff Olaf Soot Design, LL C ("O laf" or the
"Plaintiff") takes the position that the Court's Summary
Judgment Opinion contained an "explicit finding under 56(f) that
'base member,'

[among others] is infringed under the doctrine of

equiva le nts - removing the issue from trial." Pl.'s Memo. in
Supp . at 11, ECF No. 287 . In Plaintiff's view , this Court's
denial of Defendant's non-infringement summary judgment motion
affirmative ly established doctrine of equivalents infringement
with res1pect to the "base member having first and second end
portions" claim element. Id.

Defendant Daktronics, Inc.

( "Daktronics" or the

"Defendant") "does not agree the Court found the [base member]
element met under the doctrine of equivalents." Def. Response in
Opp. at 2, ECF No. 288. Defendant contends that, while "the
Court initially said that the Vortek base member is infringing
under the doctrine of equivalents ,

3

[it] ultimately held that a

reasonable jury could find that the base member is infringing."
Id. at 2 (cleaned up). This Court agrees.

The Summary Judgment Opinion did not find doctrine of
equivalents infringement

The "law of the case" doctrine in this circuit "does
not limit the power of a court, but merely expresses the
practice of courts generally to refuse to reopen what has been
decided." See North River Ins. Co. v. Philadelphia Reinsurance
Corp, 63 F.3d 160, 164 (2d Cir. 1995).

The Court's holding in the Summary Judgment Opinion is
clear: the "base member," the "first means," and the "elongated
screw" elements are not literally infringed by the Vortek
product, but a reasonable jury could nonetheless find
infringement under the doctrine of equivalents. See Summary
Judgment Opinion at 33 ("Summary Judgment is denied because a
reasonable factfinder could find infringement for each term")
The language Plaintiffs invoke to argue otherwise, while
inartful, conflicts both with the Summary Judgment Opinion's
holding as well as this the Court's clarification of the same in
its reconsideration opinion. See ECF Nos. 72 and 82. It
therefore has no effect on the "law of the case."
4

The issues to be determined at trial, then, include
whether each of these terms

(base member, first means, and

elongated screw) is infringed upon under the doctrine of
equivalents.

5

Conclusion

Parties shall incorporate the above clarification into
their presentment of the issues at trial.

It is so ordered.

New York, NY
December
2018

/lJ ,

ROBERT W. SWEET
U.S.D.J.

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