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.”).
Algierz, Inc. v. The Source of Apparel, Inc., et al., No. 12 C 5361, Slip Op. (N.D. Ill. July 13, 2012) (Chang, J.).
Judge Chang ruled upon plaintiff Algierz’s motion to extend temporary restraining orders (“TROs”) and for preliminary injunctions (“PIs”) in this patent case as follows:
- The Court denied to extend the TRO and denied a PI as to defendant Source of Apparel and an individual defendant because there was insufficient evidence that those defendants knew of the asserted direct infringement. The defendants therefore, could not be liable for contributory infringement.
- As to defendant Selah USA and another individual defendant, the TRO was extended based upon evidence of direct infringement. The Court deferred ruling upon the PI until expiration of the TRO to give the defendants time to defend against the PI and to finalize settlement.
- Defendant Hip Hop Trading LLC and two other defendants, each of whom did not appear, had a PI entered. They were given leave to file motions to dissolve the PIs upon their “prompt appearance.”
- The Court ordered Algierz and defendant D&J International and another defendant to submit their agreed, proposed PI for the Court’s consideration.