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Speedfit LLC v. Woodway USA, Inc.

United States District Court, E.D. New York

November 20, 2017

WOODWAY USA, INC., Defendant.


          Kiyo A. Matsumoto United States District Judge.

         Plaintiffs Speedfit LLC (“Speedfit”) and Aurel A. Astilean (“Astilean”) (collectively, “plaintiffs”) commenced the instant action against Woodway USA, Inc. (“Woodway” or “defendant”), alleging that Woodway wrongfully infringed upon United States Patent No. 8, 308, 619 (“the ‘619 Patent”) and United States Patent No. 8, 343, 016 (“the ‘016 Patent”), both of which are owned by Speedfit and relate to a manually-powered treadmill involving a closed-loop treadmill belt designed to maintain a curved running surface. Presently before the court are the parties' submissions for claim construction of a single disputed term, “means for slackening, ” recited in Claim 1 of the ‘016 Patent.[1]


         Plaintiff Speedfit, founded by plaintiff Astilean and co-inventor Dan Bostan, who is not joined in this action, is a New York-based company that develops fitness programs and equipment. (ECF No. 150, Supplemental Complaint, dated 2/10/2017 (“Supp. Compl.”) at ¶¶ 8-9.) Defendant Woodway is a Wisconsin-based corporation that designs, manufactures, and sells fitness and exercise products, including manually-operated treadmills with a curved running surface. (Id. at ¶ 10.) The patents at issue relate to a manually-powered treadmill design involving a closed-loop treadmill belt designed to maintain a curved running surface.

         The ‘619 Patent, which derives its priority from United States Provisional Application Serial No. 61/280, 265 (“the ‘265 Application”), was filed on October 29, 2010 and issued on November 13, 2012, with a single, independent claim. (Pl. Mem. at 1; Ex. B, ‘619 Patent.) The ‘016 Patent was filed November 1, 2010 and issued on January 1, 2013, with seventeen claims, of which Claim 1 is the sole independent claim. (Id. at 1; Ex. A, ‘016 Patent.) The ‘016 Patent also derives its priority from the ‘265 Application. (Id.)

         Plaintiffs allege that Astilean brought his non-motorized treadmill invention to Woodway's attention in early December of 2008, after filing a provisional patent application (“the ‘239 Application”), [3] and arranged with the President of Woodway, Doug Bayerlein, that Woodway's engineer, Nicholas Oblamski, would build a production model for use at an upcoming tradeshow. (Pl. Mem. at 4-5.) Plaintiffs allege that Woodway subsequently misappropriated their unique concept, design, and patent rights, by filing a provisional patent application in its name only. (Id. at 5.) In particular, plaintiffs allege that Woodway filed the provisional patent application “in attempt to secure patent rights to a leg-powered treadmill with a curved running surface that relies upon a means for slackening . . . . to keep the upper part of the treadmill belt from floating up off the rails and losing the slightly concave shape.” (Id.) Plaintiffs claim that the “means for slackening” at issue was their unique conception. (Id.)

         Plaintiffs commenced the instant action on March 11, 2013, seeking, inter alia, a declaratory judgment invalidating Woodway's patent application or, alternatively, adding Astilean as an inventor on the pending application. (ECF No. 1, Complaint, dated 3/11/2013.) The parties have already engaged in substantial motion practice, resulting in the filing of multiple amended complaints, including most recently, a supplemental complaint dated February 10, 2017.[4] (See generally Supp. Compl.) The parties submitted a joint disputed claim terms chart on April 19, 2017, in which plaintiffs proposed constructions for multiple claim terms recited in the ‘016 and ‘619 Patents, and defendant contended, in response, that no construction was necessary, and that ordinary meaning should govern for all terms except for “means for slackening.” (See ECF No. 158, Joint Disputed Claim Terms Chart.)

         Plaintiffs filed their instant motion for claim construction pursuant to court order, in which they limited the construction sought to four claim terms, including the “means for slackening” claim term presently at issue. (Pl. Mem. at 13- 14.) A claim construction, or Markman, hearing was held before this court on August 15, 2017, at which the parties presented oral arguments and expert testimony to further explain their respective constructions of the claim term in dispute. (See generally Tr.) As discussed above, the parties represented that they reached a resolution on all disputed claim terms, with the exception of “means for slackening” as it is recited in Claim 1 of the ‘016 Patent. (Id. at 5:4-15, 98:4-12; see also ECF No. 177, Memorandum in Opposition (“Def. Opp.”) at 12-13.)


         I. Claim Construction

         Before reaching a determination regarding an alleged infringement, the court must first construe a patent's claim limitations to define the meaning and scope of the invention from which a patentee has a right to exclude others. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004) (noting that “determining infringement is a two-step process” whereby the court must first construe a patent's claim limitations to define the meaning and scope of the invention, and second, compare the accused device to the construed claims). To effectively protect an inventor's rights, patents must describe the exact scope of an invention. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996) (“[A] patent must describe the exact scope of an invention and its manufacture to secure to [the patentee] all to which he is entitled, [and] to apprise the public of what is still open to them.” (internal citation and quotation marks omitted) (alterations in original)). Through the patent claims, a patentee seeks to define the precise scope of the invention and thus, the scope of the patentee's right to exclude others from making, using, or selling the patented invention. Id.

         Construction of a patent, including the terms within its claims, must be determined by the court. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 835 (2015) (“‘[T]he construction of a patent, including terms of art within its claim, ' is not for a jury but ‘exclusively' for ‘the court to determine.'” (quoting Markman, 517 U.S. at 390)). The law of the Federal Circuit governs issues of substantive patent law, which includes claim construction. See Spiel Assoc., Inc. v. Gateway Bookbinding Sys., Ltd., No. 03-CV-4696, 2007 WL 6148516, at *3 (E.D.N.Y. June 21, 2007) (“The construction of patent terms is a question of law to be determined by the Court, applying the law of the Federal Circuit to issues of substantive patent law.” (citations omitted)), adopted by 2008 WL 5750018 (E.D.N.Y. Feb. 28, 2008). In addition to its protective function with respect to the patentee, claim construction is significant in providing proper notice to the public as to what inventions are and are not covered by a given patent. See Markman, 517 U.S. at 373; see also Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1311 (Fed. Cir. 1999) (referring to the “public notice function” of patent claims).

         In deciding matters of claim construction, district courts have “wide latitude” regarding the procedure by which to reach a final determination. Ballard Med. Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352, 1358 (Fed. Cir. 2001) (“As long as the trial court construes the claims to the extent necessary to determine whether the accused device infringes, the court may approach the task in any way that it deems best.”). In addition, the court need only construe claims that are “in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (citing U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)); see also Ballard, 268 F.3d at 1358 (“If the district court considers one issue to be dispositive, the court may cut to the heart of the matter and need not exhaustively discuss all the other issues presented by the parties.”). Further, the court is not required to construe every limitation present in a patent's asserted claims, but rather, the focus is on resolution of disputed meanings and scope for use in determination of infringement. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).

         II. Sources for Construing Claims

         Courts must construe patent claims objectively, Vivid Techs., 200 F.3d at 803, by seeking to accord a claim the meaning it would have to a “person of ordinary skill in the art at the time of the invention.” Innova/Pure Water, 381 F.3d at 1116. In construing claims, courts consider three primary sources within the intrinsic evidence of record: (i) the language of the claims, (ii) the specification, and (iii) the prosecution history. Secure Web Conference Corp. v. Microsoft Corp., No. 13-CV-2642, 2014 WL 4954644, at *1 (E.D.N.Y. Oct. 2, 2014) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. ...

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