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

Filing 72

OPINION. Based on the conclusions set forth above and the claim constructions determined by the Court, the motion for summary judgment on non-infringement is denied. It is so ordered. re: 32 MOTION for Summary Judgment of Noninfringement filed by Daktronics, Inc., Daktronics Hoist, Inc. (Signed by Judge Robert W. Sweet on 10/26/2016) (rjm)

r

•
UNITED STATE S DISTRICT COURT
SOUTHERN DIS TRICT OF NEW YORK

--------------------------------------------x
OLAF SOOT DESIGN , LLC,
Plaintiff,

1 5 Civ. 5024

- against-

OPINI ON

DAKTRON I CS , INC. and DAKTRON I CS HOIST,

INC.,

, Defendants .
-------------------------------------------- x
A P P E A RAN C E S :
Attorneys fo r Plaintiff
TROU TMAN SANDER S LLP
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.

USDCSDNY
DOCU 1ENT
· ELECrPONTC/JJ_ ., FILED
DOC#:

i i~ I'0.

DATE FILED:( (

(

II

Sweet, D.J.

Plaintiff Olaf Sbbt Design, LLC ("Olaf Sbbt" or
"Plaintiff") has moved for claim construction on 12 terms
appearing in U.S. Patent No. 6,520,485 ("the '485 Patent")
Defendants Daktronics, Inc. and Daktronics Hoist, Inc.
("Daktronics" or "Defendants") has moved for summary judgment of
non-infringement on the '485 Patent.

Based on the conclusions

set forth below and the claim constructions determined by the
Court, the motion for summary judgment on non-infringement is
denied.

Prior Proceedings

Plaintiff brought this action for patent infringement
on June 26, 2015.

The '485 Patent is for a stage scenery winch

system that helps to move large scenes quickly and efficiently
replacing the work that had been done by counterweight sets.

The instant motion for summary judgment on noninfringement was heard and marked fully submitted on June 8,
2016.

The claim construction motion was heard and marked fully

submitted on September 15, 2016.
1

The Applicable Standard

Summary judgment is appropriate only where "there is
no genuine issue as to any material fact and . . . the moving
party i s entit l ed to a j udgment as a matter of l aw . " Fed . R.
Civ. P . 56(c) .

A dispute is "genuine " i f " the ev i dence is such

that a reasonable jury cou l d return a verdict for the nonmoving
party."

Anderson v . Liberty Lobby , Inc . , 477 U. S . 242, 248

(1986) .

The relevant inquiry on app l icat i on for summary

judgment is " whether the evidence presents a suff i cient
disagreement to require submission to a jury or whether it is so
one - sided that one party must prevail as a matter of law . "

Id.

at 251 - 52 .

A court is not charged with we i ghing the evidence and
determining its truth , but with determining whether there is a
genuine issue for tria l.

Westinghouse Elec . Corp . v . N . Y . City

Transit Auth., 735 F . Supp . 1205 , 1212
Anderson, 477 U. S . at 249).

(S . D. N.Y. 1 990)

(quoting

"[T ] he mere existence of some

alleged factua l d i spute between the parties will not defeat an
otherwise properly supported motion for summary judgment ; the

2

requirement is that there be no genuine i ssue of material fact ."
Anderson, 477 U. S . at 247 - 48

(emphasis i n origina l )

The Supreme Court has held tha t claim construction is
a matter of l aw to be de t ermined by the court in order to assist
the jury with questions of patent infringement .

Markman v .

Westvi ew Instruments , 5 1 7 U. S. 370 , 372

There are two

(1996) .

steps to an infringement claim on summary judgment .

The f i rst

step is determining " the meaning and scope of the patent cla i ms
asserted to be infringed" and the second step is " comparing the
proper l y construed c l aims to the device accused of i nfring i ng. "
Markman v . Westview Instruments, 52 F.3d 967,

976 (Fed . Cir .

1995) .

Claim Construction Standard

Cla i m terms "are generally given their ordinary and
customary meaning" as understood by "a person of ordinary skill
in the art at the time of invention ."
415 F . 3d 1303 , 1312 - 13 (Fed . Cir . 2005)
internal quotat i on marks omi tted) .

Phillips v . AWH Corp .,

(en bane)

(citations and

The court reads a c l a im term

" not only in the context of the particular claim in which the
disputed t erm appears , but in the context of the ent i re patent ,
including the specification ."

Id . at 1 313 ; see also , Williamson
3

e x rel. At Home Bondholders' Liquidating Trust v. Verizon
Communications Inc., Nos. 11 Civ . 4948 (LTS) (HBP) , 13 Civ.

0645( LTS ) (HBP) , 2013 WL 4083267, at *1-2

(Aug . 12, 2013) .

The patent specification is "always highly relevant to
the claim construction analysis" has been described as "a
dictionary when it expressly defines terms used in the claims "
and "the single best guide to the meaning of a disputed term."
Vitronics Corp . v . Conceptronic, Inc.,

Cir. 1996).

90 F.3d 1 576, 1582

(Fed .

It is a "statut ory requirement that the

specification describe the claimed invention in 'full, clear ,
concise , and exact terms.'"
35

u.s.c.

§

Phillips , 416 F.3d at 1 3 1 6 (quoting

112).

"However, preferred embodiments and written
descriptions in the specification should not be used to limit
the scope of claims."

Williamson ex rel. At Home Bondholders'

Liquidating Trust, 20 13 WL 4083267 , at *2 ; see also , Phillips,

416 F.3d at 13 20 ("reading a limitation from the written
description into the claims" is "one of the cardinal sins of
patent law")

(quoting SciMed Life Sys., Inc. v . Advanced

Cardiovascular Sys., Inc., 242 F.3d 1337 , 1340 (Fed . Cir .

2001)).

" [I ]t is important to keep in mind that the purposes of

4

the specification are t o teach and enable those of ski l l in the
art to make and use the invention, " not to define the limits of
a claim term .

Phillips , 416 F . 3d at 1323 .

Agreed Upon Constructions

The parties agreed to the constructions for Terms 1
and 2 and therefore the parties' mutual constructions are
adopted.

Disputed Constructions

Term 3 :

Base Member

The parties dispute the construction for Term 3, the
base member .

Plaintiff's proposed construction is "one or more

components of the winch assembly that are connected to the
carriage to support and position the drum assembly."
Defendants' proposed construction is "a component of the winch
that is separate from the carriage and supports the drum."
There are three disputes in these compet i ng constructions.

The

first is whether there can be more than one component in the
base member ; second, whether the base member is connected to the

5

carriage or separate from the carriage; third, whether the base
member supports the drum.

First, the parties dispute whether there can be more
than one component in the base member because the allegedly
infringing Vortek product produced by the Defendants is
constructed with two components that collectively comprise the
base member.

If there can only be one base member, then the

Vortek product is not infringing on Plaintiff's patent.

The Federal Circuit instructs that when interpreting a
claim, "First, we look to the words of the claims themselves
. to define the scope of the patented invention."
Corp. v. Conceptronic, Inc.,

1996) .

Vitronics

90 F.3d 1576, 1582 (Fed. Cir.

In the '485 Patent, Claims 21 and 27 both define base

member as "a base member having first and second end portions."
This language indicates that there is only one base member.

The

key question is whether there can be more than one component
that collectively comprises the base member.
two required components of the base member:
end portions.

The claim lists
first and second

Therefore there are at least two components that

comprise the base member and the base member can be comprised of
two or more components.

6

Second, the parties dispute whether the base member is
connected to the carriage or separate from the carriage.
parties are correct.

Both

This issue is not addressed in the claim,

but is detailed in the drawings and specifications.

When the

answer is not clear from the text of the claim, "second, it is
always necessary to review the specification" which "acts as a
dictionary when it expressly defines terms used in the claims or
when it defines terms by implication."
1582.

Vitronics,

Further, "Claims must be read in view of the

specification, of which they are a part."
Instruments, Inc.,
aff'd,

90 F.3d at

Markman v. Westview

52 F.3d 967, 979 (Fed. Cir. 1995)

517 U.S. 370, 116 S.Ct. 1384

(1996).

(en bane),

The specification

"is the single best guide to the meaning of a disputed term."
Vitronics,

90 F.3d at 1582.

Here, the specifications in Figures 1, 2, 7, and 8 all
show that the base member is separate from the carriage and is
connected to the carriage by slideable linear bearings.

Both

parties' constructions will be adopted.

Third, the parties dispute whether the base member
supports the drum.

The claim states that the drum has "a

7

longitudinal axis rotatably mounted on the base member."

All of

the drawings show that the drum is mounted on the base member.
Plaintiff advances an interpretation of the term that finds that
the base is "connected to the carriage to support and position
the drum assembly."

Therefore, it appears that the parties

agree that in some way since the drum is mounted to the base
member and therefore that the base member supports the drum.
However,

Defendants' construction adheres more closely to the

only portion of the specification that discusses this issue in
which the invention is summarized as saying that "the drum (and
its support base)."

('485 Patent at 2:2.)

Therefore, the base

member supports the base.

The adopted construction is:

"one or more components

of the winch, including first and second end portions, which are
connected to and separate from the carriage, supporting the
drum."

Term 4:

Hollow Drum

The parties dispute the construction for Term 4,
hollow drum.

the

Plaintiff's proposed construction is "An elongated

cylindrically shaped assembly with an internal cavity and an
external surface to store one or more cables that can be unwound
8

by rotational motion."

Defendants argue that no construction is

necessary.

Claim construction "is not an obligatory exercise in
redundancy."

U.S. Surgical Corp. v. Ethicon, Inc.,

1554, 1568 (Fed. Cir. 1997).

103 F.3d

Instead, "[c]laim construction is

a matter of resolution of disputed meanings and technical scope,
to clarify and when necessary to explain what the patentee
covered by the claims, for use in the determination of
infringement."

Id.

Here, Plaintiff's proposed construction is

more difficult to understand than the term itself and will only
confuse the jury.

There is no need to add that the hollow drum

is an "elongated cylindrical assembly with an internal cavity."
There is also no need to confuse the jury with the difference
between the drum and the drum assembly, which are different
terms with different meanings.

It does not help to explain the

language that is already in the term.

The adopted construction is:

"hollow drum."

Term 5:
An elongated hollow drum .
. rotatably mounted
on the base member and a cable for simultaneously winding
and unwinding the cable on or off the drum grooves when the
drum is rotated

9

The parties dispute the construction for Term 5,
describing the hollow drum.

Plaintiff's proposed construction

is "a hollow drum supported by the base member with a cable in
which the cable winds and unwinds on or off of the drum grooves
when the drum is rotated."

Defendants argue that no

construction is necessary.

While these two constructions are similar, Plaintiff's
construction does not add any additional explanation to the
claim term.

It eliminates certain easily understood terms such

as that the drum must be "elongated."

The adopted construction is:
drum .

"an elongated hollow

. rotatably mounted on the base member and a cable for

simultaneously winding and unwinding the cable on or off the
drum grooves when the drum is rotated."

Term 6:
First means for slideably mounting the base
member to the carriage

The parties agree that this is a means-plus-function
element.

However, their constructions for the means-plus-

function elements diverge on several key points.
proposed construction is "a means clause:
10

Plaintiff's

the supporting

structure is a linear bearing and all equivalents thereof for
the function of connecting the base member to the carriage and
providing relative linear motion between the carriage and the
base member/drum."

Defendants' proposed construction is "a

means-plus-function limitation pursuant to
Function:
Structure:

§

112,

~-

6.

slidably mounting the base member to the carriage.
two slides 45 that

(i) are rigidly fastened to the

frame of the carriage and (ii) engage linear bearings 35A that
are mounted into the top portions of the base member's first and
second end portions."

The function in a means-plus-function element must be
explicitly recited in the claim.
Interact Accessories, Inc.,

2005) .

JVW Enterprises, Inc.

v.

424 F.3d 1324, 1331 (Fed. Cir.

The role of the Court is to "determine what structure,

if any, disclosed in the specification corresponds to the
claimed function" and the specifications "must clearly associate
the structure with the performance of the function."

Id.

Defendants' proposed function restates the exact
language of the claim.

Plaintiff's proposed language only helps

to further explain the claim function language.

Therefore, the

function will be "slideably mounting the base member to the

11

carriage providing relative linear mot i on between the carriage
and the base member."

The issue is how to define the structure .

Plaintiff

advances that there can only be one linear bearing , which has
severa l embodiments and that is how the base member slides with
respect to the carriage.

However , this interpretation does not

reflect the language in the specification and the drawings .

The

specification and drawings demonstrate that the two slides 45
and linear bearings 35A and 358 are necessary for sliding to
function.

There are multiple embodiments and not all require

two 35As and 35Bs , however all embodiments include two sl i des 45
and more than one 35A and/or 35B.

The specifications and the drawings collectively
define that the carriage is slideably connected to the base
member "through slides 45 , which are rigidly fashioned to the
frame.

The slides engage linear bearings 35A and 35B , mounted

into the top portion of the base 30 vertical members 31 and 32. "
'485 Patent 5 : 47-51 .

Figure 3 of the specifications shows how

linear bearings 35A and 35B could both be used to engage with
the sl i de 45 .

Even if Figure 1 on l y has two 35As and Figure 2

12

has two 35B s, there are two slides and at least two 35A/B linear
bearings in all embodiments.

The adopted construction is:

"the structure is two

slides 45 that are mounted to the carriage and engage linear
bearings, which can be a combination o f 35A and 35B that are
mounted to the top of the base member's first and second end
portions t hat function to slideably mount the base member to the
carriage providing relative linear motion between the carriage
and the base member."

Term 7:

Hollow Hub

The parties have similar constructions for this term,
but dispute whether the hollow hub is a drum end cap or a
portion of a drum end cap.

Different areas o f the specification

refer to t he hollow hub as either the "end cap 14 hub portion"
or "the brake end cap 14."
5:7-17.)

(Compare,

'4 85 Patent 8:2 -14 and

The parties can each cite to these conflicting

specifications.

The specification notes that the "brake end cap 14
elongated hub, which hub is hollow so that the screw 51 can
pass, via the hollow hub, inside the drum 11, which is also
13

hollow."

('485 Patent 4:37-41 . )

This language demonstrates

that the hub is a portion of the brake end cap and not the
entire end cap.

The adopted construction is:

"a portion of the drum

end cap with an elongated opening to allow passage of the
elongated screw."

A hollow hub rotatably journalled at the first
Term 8:
end portion of the base member

Here the parties dispute whether this claim term
requires construction .

While the claim term is clear ,

Plaintiff's construction provides additional detail and clarity
for the jury.

The adopted construction is:

"a portion of the drum

end cap with an elongated opening located at the first end
portion of the base member to allow passage of the elongated
screw."

Term 9 :
Second means for rotating the drum relative to
the base member such that the base member with its drum and
the carriage can move with respect to each other

14

The parties agree that this is a means-plus-function
element.

However, their constructions for the means-plus-

function elements differ.
function,

Again, the parties agree on the

"rotating the drum relative to the base member such

that the base member with its drum and the carriage can move
with respect to each other."

However, the parties dispute the structure necessary
for this function.

First, the parties dispute what type of

screw is needed to rotate the drum.

Both embodiments will be

permitted, either a power or ACME screw.
agree that a motor 37 is required.

Next, the parties

The base member is included

in the claim, so it will also be included in the construction.
The slides and linear bearings will not be included in the
construction for this term as they were included in Term 6 (the
first means) and are not necessary for the function of the
second means of rotation and lateral movement of the drum.

The adopted construction is:

"the structure is a

motor 37, power or ACME screw, drum, carriage and base member
that function to rotate the drum relative to the base member
such that the base member with its drum and the carriage can
move with respect to each other."

15

Term 10:

Elongated screw

The parties dispute whether construction is needed for
this term.

Plaintiff's proposed cons tructi on to explain that

this is a power screw with "a length that permits the drum to
wind (and store) and unwind the cable or cables synchronized
with lateral movement.

However , th is co nstru ction on l y adds

confus i on to a simple term.

An elongated screw is a long screw

and the parties can explain its function t o the jury without the
need for additional construction o f this term.

The adopted construction is:

"el ongated screw ."

Term 11: An elongated screw having a first end nonr otatably mounted to the carriage

The parties also dispute whether construction is
needed for this term .

Plaintiff's proposed constr u ction adds

language about the drum winding and unwinding the cab les.

This

language is not needed to adequately understand the claim
language and will only confuse the jury with further technical
terms that are not required by the claim or clearly are in the
specifications.
16

The adopted construction is:

"an elongated screw

having a first end non -r otatably mounted to the carriage ."

Term 12 : Said hollow hub and hollow drum being sized such
that the screw can move into the hol l ow hub to allow the
hollow drum to receive the screw as the cab l es unwind from
or wind up on the drum

The parties dispute whether construction is needed for
this term .

Plain t iff's proposed construction removes references

to the hollow hub and adds information about the drum end cap
that is not in the claim .
jury .

This language will only confuse the

No construction of this term is necessary.

The adopted construction is :

" said hollow hub and

hollow drum being sized such that the screw can move into the
hollow hub to allow the hollow drum to receive the screw as the
cab l es unwind from or wind up on the drum ."

Defendants' Summary Judgment Motion for Non-Infringement Is
Denied

For literal infringement, Plaintiff bears the burden
of proving that "each limitation of the claim must be present in

17

the accused device."

Telemac Cellular Corp. v. Topp Telecom,

Inc., 247 F.3d 1316, 1330 (Fed. Cir. 2001).

In addition to literal infringement, an accused device
can infringe under the doctrine of equivalents.

This doctrine

states that "a product or process that does not literally
infringe upon the express terms of a patent claim may
nonetheless be found to infringe if there is 'equivalence'
between the elements of the accused product or process and the
claimed elements of the patented invention."
v. Medtronic Sofamor Danek, Inc.,
2006)

Depuy Spine, Inc.

469 F.3d 1005, 1016 (Fed. Cir.

(citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,

520 U.S. 17, 21, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997))

The

Supreme Court has noted that without the doctrine of
equivalents, "Unimportant and insubstantial substitutes for
certain elements could defeat the patent, and its value to
inventors could be destroyed by simple acts of copying."

Festa

Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722,
731, 122 S.Ct. 1831, 152 L.Ed.2d 944

(2002).

The test for the doctrine of equivalents,

known as the

function-way-result test, asks "whether the accused device
performs substantially the same function in substantially the

18

same way to obtain substantially the same result as the claim
limitation."

VirnetX, Inc. v. Cisco Systems, Inc.,

1308, 1322 (Fed. Cir. 2014).

767 F.3d

If that is the case, then "they

are the same, even though they differ in name, form,

or shape."

Warner-Jenkinson Co., 520 U.S. at 35 (quoting Union Paper-Bag
Machine Co. v. Murphy,

97 U.S. 120, 125,

(1878)).

Summary Judgment is Denied as to whether the Accused Vortek
Product Contains an Infringing Base Member

The parties dispute whether the accused Vortek winch
has an infringing base member.

The claim defines the term as "a

base member having first and second end portions."
was constructed as:

This term

"One or more components of the winch,

including first and second end portions, which are connected to
and separate from the carriage, supporting the drum."

Under literal infringement, "each limitation in the
asserted claim [must be] found present in the accused device or
process."

Baxter Healthcare Corp. v. Spectramed, Inc.,

1575, 1583 (Fed. Cir. 1995).

49 F.3d

Here, to find literal infringement

the Vortek winch must have all of the elements of the claim
construction for the base member, which is not the case here
because the Vortek lacks a horizontal member.
19

The accused Vortek winch does not have one contiguous
base member, but instead has first and second end portions that
Plaintiff claims comprise the base member.

The key dispute is

whether the components of the base member must be connected to
one another or can be separately connected to the carriage .
Either the first and second vertical end portions must be
connected by a horizontal member or the horizontal member is
only one embodiment and is not dispositive.

For literal

infring ement , there must be a horizontal member.

Plaintiff argues that a horizontal member cannot be a
requirement for the '4 85 Patent when it was not included in the
claim.

"[I ]t is imp or tant to keep in mind that the purposes of

the specification are to teach and enable those of skill in the
art to make and use the invention," not to define the limits o f
a claim term.

Phillips, 416 F.3d at 1323 .

Olaf Soot argues

that here, to mandate that an infringing device have a
horizontal member based on the specifications would be defining
the limits of the c laim term instead of merely serving as a
dictionary for how to interpret the claim.

20

However, the patent specification is "always highly
relevant to the claim construction analysis" has been described
as "a dictionary when it expressly defines terms used in the
c laims" and "the single best guide to the meaning of a disputed
term."

Vitronics Corp . v. Conceptronic , Inc.,

1582 (Fed . Cir. 1996).

90 F.3d 1576 ,

Here the parties hotly dispute what it

means to have a base member with first and second end portions,
which is not c l ear on its face.

All of the drawings displaying pref erred embodiments
of the winch in the specifications (Figures 1, 2 , 7, and 8) show
a version of the winch with a horizontal member.

While the

horizontal member is not included in the actual cla im, it is
included in the specifications.

For example , one specification

describes the base (number 30 in the drawings) as "the vertical
members 31 and 32 incorporate the geometry for all weld
preparations necessary for welding them to the horizontal member
3 3. "

( '4 85 Patent at 5:32-34.)

Th e specification notes,

"[O]ther means for constructing the base 30, or connecting its
components to each other , can be used."
40.)

( '4 85 Patent at 5:39-

The specification clearly envisioned connecting the

components of the base member together and not having them be
separate.

21

There is no literal infringement in this case because
evaluating the claim language with the help of the
specifications, the '485 Patent described a base member with a
horizontal member.

The Vortek winch does not have a base member

and therefore it is not literally infringing.

However, the 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 lacks a horizontal member would allow, "Unimportant and
insubstantial substitutes for certain elements could defeat the
patent."

Festa Corp.,

535 U.S. at 731.

The test for the

doctrine of equivalents asks "whether the accused device
performs substantially the same function in substantially the
same way to obtain substantially the same result as the claim
limitation."

VirnetX, Inc. v. Cisco Systems, Inc.,

767 F.3d

1308, 1322 (Fed. Cir. 2014).

Here, the Vortek contains all of the required elements
of a base member.

The constructions requires:

(1) one or more

components, including first and second end portions;

(2) which

are connected to and separate from the carriage; and (3) which

22

support the drum.

The Vortek product satisfies all three prongs

under the doctrine of equivalents.

First, the Vortek has both

an end portion base member and a front portion base member.
Second, both end portions are connected to the carriage (and are
separate from the carriage).

Third, these components both

support the drum in the same way that the specifications in the
'4 85 Patent support the drum .

Under the doctrine of

equiva l ents , these two designs "are the same, even though they
differ in name, form, or shape."

Warner-Jenkinson Co ., 520 U.S.

at 35 (quoting Union Paper-Bag Machine Co . v. Murphy , 97 U.S.
120, 1 25 ,

(1878)).

The Accused Vortek Product Has an Equivalent "First Means
for Slideably Mounting the Base Member to the Carriage"

The parties dispute whether the Vortek has the meansplus-function clause "first means for slideably mounting the
base member to the carriage."

The function of this term was

constructed as "slideably mounting the base member to the
carriage providing relative linear motion between the carriage
and the base member."

The structure was constructed as "two

slides 45 that are mounted to the carriage and engage linear
bearings, which can be a combination of 35A and 358 that are

23

mounted to the top of the base member's first and second end
portions."

The parties agree that the claim function should be
interpreted as "providing relative linear motion between the
carriage and the base member."
Construction, Term 6 , Dkt. No.

(See Plaintiff's Proposed
The Defendants argue

63, Ex. 2.)

that the accused Vortek winch does not violate th is function
because one of the Vortek 's base member end portions is bolted
in place and does not allow for any relative motion between the
carriage and the base member.

In order to make a finding of lit eral infring ement for
a means-plus-function clause, the accused device must "perform a
function identical to that identified in the means c lause."
Ishida Co . v . Taylor,

221 F.3d 1 310 , 1316-17

(Fed. Cir . 2000)

Here, the accused Vortek winch does not perform an identical
function to the means clause.

Unlike all of the specifications

and drawings, which show relative linear motion between the
carriage and the base member through two slides 45 and linear
bearings 35A and 35B (See Figures 1, 2 , 3,

4, 5, 7,

8) , the

Vortek winch does not have linear motion between the carriage
and base member because the front end vertical member is fixed

24

and bolted to the carriage .

The rear end vertical member in the

Vortek winch is connected to the carriage by a slide and linear
bearings that allow the rear vertical member to move relative to
the carriage just as in the drawings and specifications , such as
Figure 3 .

There is no literal infringement because the front

end portion of the base member cannot move relative to the
carriage since the front end vertical member of the base member
and the carriage are bolted toget h er .

However, the parties dispute whether there is
infringement under the doctrine of equivalents .
"Noninfringement under the doctrine of equivalents , al t hough a
factual issue, may be determined as a matter of law when no
reasonable fact - finder could determine other than that the
substitute element plays a ro l e substant i ally different from the
claim limitation . "

Unique Coupons, Inc . v . Northfield Corp., 12

Fed . Appx . 928 , 936 (Fed . Cir . 2001) .

Here, the Defendants have

not met that burden and the fact - finder must determine whether
having one end portion of the base member bolted in place and
the other slideably mounted to the carriage is " substantially
different. "

25

"The proper test" to determine whether the doctrine of
equivalents applies to a means-plus-function clause is "whether
the differences between the structure in the accused device and
any disclosed in the specification are insubstantial."
Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries,
Inc.,

145 F.3d 1303, 1309 (Fed. Cir. 1998).

Another way to

state the test for a means-plus-function term is, "The doctrine
of equivalents covers accused structures that perform
substantially the same function in substantially the same way
with substantially the same results.

The doctrine of

equivalents thus covers structures with equivalent, but not
identical, functions."

Ring & Pinion Service Inc. v. ARB Corp.

Ltd., 743 F.3d 831, 835 (Fed. Cir. 2014).

Here, there is no slide 45 or linear bearing 35A or
35B on the front end base member of the Vortek winch, which is a
difference in structure.
is bolted to the carriage.

Further, the front end vertical member
This difference in structure

prevents the Vortek winch from having an identical function of
the front end base member slideably moving relative to the
carriage.

However, the back end vertical member does have a

slide 45 and linear bearings 35A and/or B.

The back end member

does slide relative to the carriage in exactly the way that the

26

patent specifications dictate in Figures 1, 2 , 3 , 4, 5, 7, and
8.

The issue for this claim term is whether having part
of the base member slide relative to the carriage and the other
part remain bolted in place is a "substantial" difference .
Chiuminatta , 145 F.3d at 1309.

In Chiuminatta the difference

between using a skid plate and wheels was substantial under the
doctrine of equivalents.

Id.

Here, the difference is less

substantial than in Chiuminatta because the back end member of
the Vortek winch slides using exactly the same linear bearing
technology described and depicted in the specifications instead
of an entire l y different technology like wheels or skid plates
in Chiuminatta.

Likewise, in Interactive Pictures Corp. v.
Pictures, Inc.,

Infinite

the Federal Circuit evaluated whether an image

viewing system that is a digitized image collected from a
fisheye lens camera was equiva l ent to the accused product.
Interactive Pictures Corp. v.

1371 , 1382

(Fed Cir . 2001) .

Infinite Pictures, Inc.,

274 F.3d

The parties disputed whether there

was infringement under the doctrine of equivalents because the
accused product also produced a circular view of an image, but

27

with no fisheye distortion by using an equirectangular panorama
file instead of the fisheye lens camera.

Id.

Those two

products have a substantially greater variance in structure
because they use entirely different technologies to achieve a
similar result as compared to the '485 Patent and the Vortek,
which is at least half the identical structure in the base
member.

There is no dispute that the '4 85 Patent and the Vortek

winches achieve exactly the same result of lifting and lowering
scenery for theatres using a motorized winch.

While the accused

product used an entirely different technology achieving a
slightly different end result in Interactive Pictures, the Court
refused to overturn a jury's determination that "the difference
was insubstantial."

Id.

If a jury could find those differences

insubstantial, the factfinder in this case should be permitted
to make the same determination under the function-way-result
test.

Defendants have not shown that "no reasonable factf inder could determine other than that the substitute e lement
plays a role substantially different from the claim limitation."

Unique Coupons , Inc.,

12 Fed. Appx. at 936 .

While there are

clear differences in the sliding nature of the front end
vertical base member, the differences are not substantial enough

28

to preclude a factfinder determining that there was
infringement .

Ring & Pinion , 743 F.3d at 835.

For these

reasons, this means - plus - function clause creates a disputed
issue of fact for the factfinder to determine.

The Accused Vortek Product Includes an "Elongated Screw
Having a First End Non-Rotatably Mounted to the Carriage"

The parties dispute whether the accused Vortek winch
has an infringing "elongated screw having a first end non rotatably mounted to the carriage . "

There was no construction

necessary for this term.

For this term , the dispute is whether the elongated
screw is actually mounted to the carriage .

The Vortek winch has

an elongated screw that is non-rotatably mounted to what the
parties describe as a "tail - end bracket . "

This bracket is

attached to the carriage and is bolted to the front vertical
member .

The dispute is whether the tail - end bracket is part of

the carriage or the base member .

If it is a part of the base

member , the Vortek is not infringing on the ' 485 patent.
is part of the carriage , then the Vortek is infringing.

29

If it

•'
The claim language does not provide any detail about
the difference between the carriage and the base member's first
and second end portions.

In the absence of explanation from the

claim, "the court looks to those sources available to the public
that show what a person of skill in the art would have
understood disputed c laim language to mean," which includes
evaluating a claim t erm "not only in the context of the
particular c laim in wh i ch the disputed term appears, but in the
context of the entire patent, including the specification."

Phillips v. AWH Corp ., 415 F.3d at 1313-14 (internal citations
omitted).

Under literal infringement, the Vortek does not
literally infringe because each of the drawings that depict the
carriage and base member do not have them attached to one
another as one tail-end bracket like in the Vortek winch .
However , the accused Vortek construct i on is infringing under the
doctrine of equivalents.

This is because the variances for the

elongated screw are "[u]nimportant and insubstantial
substitutes" in comparison to the patent specifications.

Festa

Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. at 731.

30

The carriage can include the tail-end bracket under
the doctrine of equivalents because the carriage is more than
one piece in each of the embodiments in the specifications.

The

pieces of the carriage are connected together just as the tailend bracket is attached to the carriage in the Vortek winch in
Figures 1, 2 , 7 and 8.

Figure 1 is described in the

specifications as ha v ing a " car riage 40 frame 41

[that]

is L-

shaped comprising a horizonta l member 41A and a vertica l member
418."

( '485 Patent at 5:40-42.)

This demonstrates that the

'4 85 Patent covers embodiments of the winch that have several
different shapes and sizes of carr iag e frames.

The test for the doctrine of equivalents,

known as the

function-way-result test , asks "whether the accused device
performs substantially the same function in substantially the
same way to obtain substantially the same result as the c laim
limitation."
1 308 , 1322

VirnetX, Inc. v. Cisco Systems, Inc.,

(Fed. Cir. 2014).

7 67 F. 3d

If that is the case , then "they

are the same, even though they differ in name,

form,

or shape."

Warner - Jenkinson Co ., 520 U.S. at 35 (quoting Union Paper-Bag
Machine Co . v . Murphy,

97 U.S. 120, 125,

(1878)).

Here whi le

the carriage does differ in form or shape from the exact
configuration in the drawings and specifications, the way in

31

which the elongated screw is non-rotatably mounted to th e
carriage is essentially the same and is infringing under the
doctrine of equivalents.

Summary Judgment is Denied Because a Reasonable Factfinder
Could Find Infringement for Each Term

Summary judgment on the i ssue of non-infringement is
proper when "no reasonable jury could find that every limitation
recited in a properly construed claim either is or is not found
in the accused device either l iterall y or under the doctrine of
equivalents."

Spiel Associates , Inc. v. Gateway Bookbinding

Sys., Ltd., No. 03-CV-4696, 2010 WL 546746, at *6 (E.D.N.Y. Feb.
16, 2010)

(c iting PC Connector Solutions LLC v. SmartDisk Corp .,

406 F.3d 1359, 1364 (Fed.Cir.2005)); see also, Mich & Mich.

TGR,

Inc. v. Brazabra, Corp. , 128 F.Supp.3d 621 , 631 (E .D.N.Y. 2015).
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 non-rotatably
mounted to the carriage are infringing.

Plaintiff urges the

Court to sua sponte find infringement, but Plaintiff has not met
the high burden to show that Defendants made a "woefully
inadequate showing."

Gertrude Newmark Rothschild v. Cree , Inc.,

711 F.Supp.2d 173, 195 (D. Mass. 2010)
32

Conclusion

Based on the conclusions set forth above and the claim
constru ctions determined by the Court , the motion for summary
judgment on non - infringement is denied .

It

is so orde r ed .

New York, 'flY
October ,.-Yb, 2016

33