The opinion of the court was delivered by: Hon. Michael M. Anello United States District Judge
ORDER CONSTRUING DISPUTED CLAIM TERMS OF UNITED STATES PATENT NOS.
Pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), the Court conducted a hearing on March 25, 2011 regarding the construction of disputed claim terms in United States Patent Nos. 7,172,382; 7,588,406; and 7,699,575. Attorneys Valerie Ho, Franklin Ubell, and Kamran Salour appeared on behalf of Plaintiff Fastek, LLC. Attorneys Mark Brown and Stephen Swinton appeared on behalf of Defendants Steco and Blue Tee Corp. Attorney Dustin Dodgin appeared telephonically on behalf of Defendant Sierra International Machinery, LLC. Prior to the hearing, the Court provided the parties with its tentative construction of each disputed claim term and instructed the parties to meet and confer. (See attached Court's Exhibit A.) After review, Plaintiff agreed with the Court's tentative constructions, while Defendants asserted the disputed terms merited further argument before the Court. Upon careful consideration of the papers and the oral arguments of counsel, the Court issues the following order construing the disputed claim terms of the patents at issue in this case.
On May 5, 2010, Plaintiff Fastek filed a complaint for infringement of two patents-U.S. Patent Nos. 7,588,406 ("'406 Patent) and 7,699,575 ("'575 Patent"). [Doc. No. 1.] On November 30, 2010, the Court granted Plaintiff's motion for leave to file a first amended complaint to add a third patent-U.S. Patent No. 7,172,382 ("'382 Patent"). [Doc. Nos. 46, 47.] Defendants have filed counterclaims against Plaintiff asserting the patents are invalid and requesting a declaration of non-infringement. [Doc. Nos. 50, 52.] Generally, all three patents describe assemblies that teach a method for loading bulk material into a transport container quickly and efficiently. [See Doc. No. 47.]
The construction of patent claim terms is a matter of law for the court. Markman, 517 U.S. at 372. "It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1115 (Fed. Cir. 2004). As a general rule, the claim language carries its ordinary and customary meaning. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299 (Fed. Cir. 1999). The ordinary meaning of a term cannot, however, be construed in a vacuum; rather, a court "must look at the ordinary meaning in the context of the written description and the prosecution history." Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005). To ascertain the meaning of a claim term, the court refers to "those sources available to the public that show what a person of ordinary skill in the art would have understood the disputed claim language to mean." Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). The court does so to "determine whether the inventor used any terms in a manner inconsistent with their ordinary meaning." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The sources include "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Phillips, 415 F.3d at 1314 (citing Innova, 381 F.3d at 1116).
The court begins with the language of the claims. PSC Computer Prods., Inc. v. Foxconn Int'l, 355 F.3d 1353, 1359 (Fed. Cir. 2004). When considering the claim language, "the context in which a term is used in the asserted claim can be highly instructive." Phillips, 415 F.3d at 1314. The court may also consider the other claims of the patent, both asserted and non-asserted. Id. For example, as claim terms are normally used consistently throughout a patent, the usage of a term in one claim may illuminate the meaning of the same term in other claims. Id. The court may also consider differences between claims to guide in understanding the meaning of particular claim terms. Id.
As the claims do not stand alone, they "must be read in view of the specification, of which they are a part." Phillips, 415 F.3d at 1315 (citation omitted). "The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). When the specification reveals a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess, the inventor's lexicography governs. Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). The specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. Id. (citing SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001)).
The Federal Circuit also has affirmed the importance of the prosecution history. Phillips, 415 F.3d at 1317. The prosecution history represents an ongoing negotiation between the PTO and the applicant. Id. The prosecution history, like the specification, "provides evidence of how the PTO and the inventor understood the patent." Id.(citing Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1206 (Fed. Cir. 1992)). However, it is subject to inherent ambiguity because is represents the negotiation, rather than the final product of the negotiation, and is thus less useful than the specification. Id.
Extrinsic evidence "can shed useful light on the relevant art," but the Federal Circuit considers it "less significant than the intrinsic record in determining the legally operative meaning of claim language." Id. (citing C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). "Extrinsic evidence may be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1319. The Federal Circuit has held that it remains within the court's discretion to admit extrinsic evidence, provided the court keeps in mind the flaws inherent in extrinsic evidence. Id. In sum, this Court first must interpret the claim terms in light of the intrinsic evidence- specification, claims, and prosecution history-and then exercise discretion in deciding whether to consider extrinsic evidence submitted by the parties.
II. CONSTRUCTION OF DISPUTED CLAIM TERMS
With the above principles in mind, the Court turns to the construction of the disputed claim terms. The parties identified two terms for construction by the Court: (1) "engage" (and its grammatical variations); and (2) "lock." Each party proposed a single definition for each of the two terms to be applied across the three patents at issue. Accordingly, to avoid repetition, the Court will not parse each claim in each patent where the disputed terms appear. Rather, the Court will utilize exemplary claim language from a single patent that is materially identical to the relevant claims in the remaining two patents; any substantive differences among the patents that affect the Court's analysis are noted.
(A) Engage, Engaged, Engaging
The first term disputed by the parties is "engage." The following phrases utilizing the term "engage" appear in the three patents at issue:
* "wherein the barrier assembly is configured to engage the stationary support structure"
* "engaging the barrier assembly with the stationary support structure"
* "engaged with the stationary support structure"
* "engaging the movable wall of the barrier assembly"
Both parties offer proposed constructions for the term "engage." Plaintiff proposes "engage" means "any type of mechanical engagement which establishes contact, interlocking, or meshing between respective elements, whether indirectly, through intermediate component(s), or directly."
[Doc. No. 54.] Defendants propose that "engage" means "direct physical contact between mechanical components." [Id.]*fn1
The Court tentatively found that neither party offered an appropriate proposed construction of the term, as both constructions imported additional limitations not supported by the intrinsic evidence. Accordingly, the Court tentatively found that "engage" (and its grammatical variations) means "to connect directly, or indirectly through intermediate component(s)." In so ruling, the Court agreed with Plaintiff's position that the plain language of the patents, the prosecution history, and the plain meaning of "engage" do not support Defendants' narrow construction which requires direct, physical contact between mechanical components. Nothing in the record indicates the inventor intended "engage" to have a special or limited meaning as used in the patents. Rather, the intrinsic evidence supports a construction that reflects the broader plain meaning of the term "engage."*fn2 Plaintiff stipulates to the Court's tentative construction.
Defendants argue, however, the inventor's use of "disengage" precludes the Court's tentative construction. According to Defendants, if the Court's construction is adopted, and indirect components could be utilized to engage the barrier assembly with the support structure, the barrier would always remain engaged with the support structure because the two elements will always be indirectly connected through intermediate components. If "engage" encompasses indirect contact, Defendants contend that to "disengage . . . the barrier assembly would have to levitate above the stationary support structure and the load bin." [Doc. No. 74, p.2 (emphasis in original).] The Court disagrees. The term "engage" is not read in isolation, rather, it is interpreted within the context of the claim(s) in which it appears. See Toro Co., 199 F.3d at 1299 ("in judicial 'claim construction' the court must achieve the same understanding of the patent, as a document whose meaning and scope have legal consequences, as would a person experienced in the technology of the invention"); Renishaw PLC, 158 F.3d at 1251 (the meaning of a claim is to be understood in context).
For example, independent Claim 11 of the '382 Patent reads in relevant part: "engaging the barrier assembly with the stationary support structure after the drive mechanism has been operated to move the load bin into the transport container, to lock the barrier assembly adjacent to the open end of the container . . . ." (emphasis added).*fn3 The parties do not dispute that when the entire phrase is considered, it is clear the inventor used the term "engage" to describe a specific action at a specific point in time during the loading process. Namely, the barrier assembly engages the support structure after the loan bin has been moved into the transport container. The Court finds the inventor's use of the term "disengage" in dependent Claim 12 to signal the termination of this step-when the barrier assembly is disengaged from the support structure and slides to a retracted position-is consistent with the inventor's use of the term "engage." Similarly, independent Claim 1 of the '382 Patent states in relevant part: "the step of engaging includes engaging the barrier assembly with the stationary support structure, to lock the barrier assembly adjacent to the open end of the transport container." (emphasis added). Thus, the term "engage" again signals a specific action at a specific point in time for a specific purpose-the barrier assembly connects to the stationary support structure so that it is locked adjacent to the open end of the container. Stated another way, the barrier assembly connects to the stationary support structure in a specific manner for a specified duration to accomplish this step of the loading process. The limited nature of the claimed connection between the barrier assembly and stationary support structure does not speak to any potential connection between the two structures at any other point in time. Therefore, Defendants' argument that for the two components to later become "disengaged," as described in dependent Claim 2 of the '382 Patent, they must have no contact between them is unpersuasive.*fn4 In sum, the intrinsic evidence does not indicate the inventor intended the word "engage" to have a special limited meaning to describe only direct physical contact between mechanical components, and the patents' references to "disengagement" in subsequent dependent claim limitations does not require a narrower construction.
Defendants also argue the prosecution history supports their construction where "engage" requires direct contact between the barrier assembly and stationary support structure. The parties do not dispute that during prosecution of the '382 Patent, the examiner rejected the inventor's proposed claim language which provided for a "locking assembly." The examiner indicated the application did not adequately disclose the locking assembly structure that purportedly locked the barrier assembly adjacent to the open end of the container while the load bin is being retracted.
[See FAS000856-59, Exh. G to Doc. No. 69-2 (the language "does not reasonably provide enablement for a locking assembly that locks a barrier assembly to the support structure";
"applicant makes no reference to the fact that there [sic] barrier locking mechanism are well known in the art".] The examiner concluded the "locking assembly" description was deficient because one skilled in the art would not be able to implement the specification without more information.
In response, after several failed attempts to amend the language, the inventor cancelled the "locking assembly" element altogether and replaced it with the now disputed phrasing-"wherein the barrier assembly is configured to engage the stationary support structure when the drive mechanism has moved the load bin into the transport container." [Exh. G to Doc. No. 69-2 at FAS000688, FAS000694-696 (emphasis added).] This language, coupled with two expert declarations indicating that it would be immediately clear to one skilled in the art how to implement the barrier assembly identified by the inventor, proved successful and the patent was allowed. Defendants argue the inventor's decision to delete the "locking assembly" language reflects his acquiescence to narrower claim limitations, which require direct physical contact between the barrier assembly and stationary support structure. Again, the Court disagrees.
The Court has thoroughly reviewed the prosecution histories for the three patents as issue, and concludes they do not indicate the scope of the claims is limited to direct contact between the barrier assembly and the stationary support structure. Although the examiner rejected the "locking assembly" language several times during the prosecution of the '382 Patent, the examiner's remarks do not suggest that in the absence of the "locking assembly" the barrier assembly and stationary support structure were in direct contact. Rather, the examiner found what the inventor described as a locking assembly to be inadequately specified, such that one reasonably skilled in the art could not implement the locking assembly without undue experimentation. The examiner's rejection does not require the conclusion that all methods of indirectly connecting, contacting or otherwise engaging the barrier assembly and stationary support structure are also precluded.
Instead, it appears the inventor attempted to patent a locking assembly-a specific indirect method for engaging the barrier and the support structure-but was ultimately unsuccessful because he did not adequately explain how to implement the specified locking assembly element. Accordingly, the inventor eventually opted to delete his ...