Dental USA, Inc. v. Beak & Bumper, LLC, No. 13 C 2149, Slip Op. (N.D. Ill. Feb. 21, 2014) (Chang, J.).
Judge Chang granted defendants’ Fed. R. Civ. P. 12(b)(3) motion to dismiss for improper venue because plaintiff’s design patent declaratory judgment claims related to dental pliers had to be arbitrated. The principals of the relevant parties entered a settlement agreement settling an early E.D. Michigan patent infringement suit which included the patents in suit.
The parties’ agreement bound “any and all businesses controlled” by either of them. That was sufficient to bind the parties in this suit, although none were parties to the agreement. It was sufficient that the parties’ principals bound them in the agreement. The agreement also required that plaintiff not infringe the patents in suit and that all disputes regarding the agreement be resolved by binding arbitration before the American Arbitration Association. The parties were already arbitrating a dispute regarding one of the patents.
The fact that defendants dismissed their arbitration infringement claims did not allow plaintiff to file a district court litigation. Defendants dismissed their claims without prejudice and were free to re file them with the American Arbitration Association.
Because the Court lacked venue, it did not need to consider defendants’ subject matter jurisdiction and personal jurisdiction arguments.
Saro Golf, Inc. v. Nike, Inc., No. 08 C 1110, Slip Op. (N.D. Ill. Sep. 9, 2013) (Chang, J.).
Judge Chang clarified the claim constructions in this patent case regarding an improved golf club head. “Radius of curvature” was previously construed to mean “radius of a substantially circular curve of a substantial portion of the back side profile shape.” This construction presumed that each of the heel and toe of a club head had a profile that was “circular in profile” meaning that it was largely made of a single radius. Neither party had sought a construction limiting the profile to one composed of a single radius, nor did they address the construction at the claim construction hearing.
The Court considered the parties’ briefs and the intrinsic evidence, but could not “square” the construction with the evidence because:
- The single radius requirement read one of the preferred embodiments out of the claim.
- The construction was a “mouthful” and did not make sense grammatically within the asserted claim 7. It is good to see courts concerned with making claims that could go to a jury more reasonable and understandable, although it may be a nearly impossible task.
- The prior construction was based upon the faulty premise that a radius of curvature could only be a circle. In fact, it is a mathematical term that can be applied to any curve.
The Court, therefore, held that the Radius of Curvature was an average measure along a complex curve, and the issue was where it was measured from. The Court ordered further briefing on the issue because neither party fully addressed it.
The Court also upheld the prior constructions of “Heel” and “Toe” of the club. In doing so, the Court cautioned defendants to strongly consider offering alternative constructions when arguing terms were indefinite to avoid leaving the Court “at sea” should indefiniteness be denied. The Court acknowledged that offering a construction could weaken the indefiniteness argument, but pointed out that courts regularly handle arguments in the alternative.
Albecker v. Contour Prods., Inc., No. 09 C 00631, Slip Op. (N.D. Ill. Sept. 27, 2013) (Chang, J.).
Judge Chang decided the parties’ respective Fed. R. Civ. P. 60(b) motions for reconsideration: (1) plaintiff’s motion for reconsideration of the Court’s previous claim construction order; and (2) defendant’s motion for reconsideration of the Court’s previous opinion denying defendant’s motion to dismiss the declaratory judgment count for lack of subject matter jurisdiction. Plaintiff filed affirmative patent infringement claims against defendant, as well as declaratory claims seeking to invalidate defendant’s patent. Defendant argued that the Court lacked subject matter jurisdiction to declare defendant’s patent invalid because there was no case or controversy. The Court denied defendant’s motion to dismiss. Then, during claim construction of plaintiff’s patent, the claim term “secured to” was construed to mean “attached using attachment means,” a construction that allegedly excluded a preferred embodiment disclosed in the patent’s specification.
In its motion for reconsideration, plaintiff argued that the Court’s construction impermissibly excluded a preferred embodiment disclosed in the specification. Defendant argued that this construction did not impermissibly exclude a disclosed embodiment because the intrinsic evidence supported the construction and plaintiff withdrew the claims directed to the preferred embodiment in favor of prosecuting other embodiments in response to a restriction requirement issued by the PTO. Even heeding the Federal Circuit’s cautionary warning from Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343 (Fed. Cir. 2013) to not conclude that a patentee has disclaimed claim scope simply by withdrawing claims after receiving an unexplained restriction requirement, the Court found that the bulk of intrinsic evidence supported the Court’s prior construction. Because the weight of the evidence supported the Court’s prior construction, plaintiff did not meet the burden required of a motion to reconsider.
Defendant’s motion for reconsideration of defendant’s denied motion to dismiss was granted because defendant’s actions toward plaintiff did rise to the standard required by SanDisk Corp. v. STMicroelectronics, Inc. for declaratory judgment actions. 480 F.3d 1372, 1381 (Fed. Cir. 2007) (requiring patentee to take position that “puts the declaratory judgment plaintiff in the position of either pursuing illegal behavior or abandoning that which he claims a right to do.”).