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Illinois Tool Works Inc v. Construction Moc Products Company

May 12, 2011

ILLINOIS TOOL WORKS INC., PLAINTIFF,
v.
CONSTRUCTION MOC PRODUCTS COMPANY, INC., DEFENDANT.



The opinion of the court was delivered by: Honorable Janis L. Sammartino United States District Judge

ORDER ON CLAIM

Plaintiff Illinois Tool Works Inc. brings suit against Defendant Moc Products Company, Inc. for infringement of Patent No. 5,806,629, Patent No. 6,073,638, and Patent No. 6,112,855. The patents are in the field of cleaning automotive parts, including but not limited to engines and transmissions. Presently before the Court is claim construction. After considering the briefing and oral argument, the Court construes the disputed claim terms as follows.

LEGAL STANDARD

The Court construes the scope and meaning of disputed patent claims as a matter of law. Markman v. Westview Instruments, Inc., 517 U.S. 370, 388--90 (1996). Words of a claim are "generally given their ordinary and customary meaning." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). This is the meaning the term would have to a person of ordinary skill in the art as of the effective filing date of the patent application. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Because the inquiry into the meaning of claim terms is an objective one, the court looks to publicly available sources to show what a person would have understood the claim language to mean. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). Those sources include the claims, the specification, the prosecution history, and relevant extrinsic evidence. Id.

Claim construction begins with an analysis of the words of the claims themselves. See Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 365 F.3d 1299, 1303 (Fed. Cir. 2004). In examining the claims, "the context in which a term is used can be highly instructive." Phillips, 415 F.3d at 1314. Moreover, "[o]ther claims of the patent in question, both asserted and unasserted can . . . be valuable sources of enlightenment as to the meaning of a claim term." Id. "Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims." Id. Conversely, under the doctrine of claim differentiation, "different words or phrases used in separate claims are presumed to indicate that the claims have different meanings and scope." Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1369 (Fed. Cir. 2007).

"Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313. "Usually, [the specification] is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582; accord Phillips, 415 F.3d at 1317. The specification acts as a dictionary when it expressly or implicitly defines terms used in the claims. Vitronics, 90 F.3d at 1582. In doing so, the patentee may define a claim term in a manner inconsistent with its ordinary meaning. Metabolite Labs., Inc. v. Lab. Corp. of Am., 370 F.3d 1354, 1360 (Fed. Cir. 2004).

Patent claims should ordinarily be construed to encompass the preferred embodiments described in the specification, for "[a] claim construction that excludes a preferred embodiment . . . 'is rarely, if ever correct.'" SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1285 (Fed. Cir. 2005). However, a court should not import limitations from the specification into the claims, Phillips, 415 F.3d at 1323, absent a specific reference in the claims themselves, Reinshaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).

The prosecution history may also inform claim construction. Vitronics, 90 F.3d at 1582. "Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent." Phillips, 415 F.3d at 1317. It can be useful to show "how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id.

"In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to rely on extrinsic evidence." Vitronics, 90 F.3d at 1583. But this is not a rule of admissibility, nor does it "prohibit courts from examining extrinsic evidence, even where the patent document is itself clear." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999). The court is not "barred from considering any particular sources or required to analyze sources in any specific sequence, as long as those sources are not used to contradict claim meaning that is unambiguous in light of the intrinsic evidence." Phillips, 415 F.3d at 1324.

DISCUSSION

1. Patent No. 5,806,629

Patent No. 5,806,629 is an "apparatus and method for service of an automotive automatic transmission." The invention exchanges old and new fluid in an automatic transmission fluid system without letting the system operate with insufficient fluid levels, otherwise known as "running dry." The invention achieves this goal by ensuring that equal amounts of old and new transmission fluid are exchanged.

At the Markman hearing, the parties agreed with two of the Court's constructions. The term "drivingly coupled to one another for operation simultaneously in unison" is construed as "connected such that one drives the other so that the two operate simultaneously in unison." And the term "rotary pump" is construed as "the portion of the motor/pump unit that utilizes rotational energy to move fluid." The two remaining terms are discussed below.

A. "motor/pump unit"

The proper construction of the term "motor/pump unit" is "a part having a motor and a pump." Both parties propose constructions that contain this language, but both parties also append additional limitations for which the Court can find no basis.

Plaintiff proposes that "motor/pump unit" be construed as "a motor and a pump, making up a part, drivingly coupled to one another for operation simultaneously in unison to displace a substantially equal volume of fluid." (Doc. No. 46 (P's Open. Brief) at 7.) This construction impermissibly duplicates claim language and improperly imports limitations from the preferred embodiment.

The language "to displace a substantially equal volume of fluid" duplicates language already found in claims 1, 14, and 15. Those claims all indicate that the "used ATF pumped out [of the transmission] . . . is continuously replaced in substantially equal volume with new ATF from said volume by said motor/pump unit." Patent '629 at 11:61--65.The duplication improperly denies meaning to those parts of the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 9540 (Fed. Cir. 2006). And this portion of Plaintiff's construction is properly rejected.

Second, "[d]rivingly coupled to one another for operation simultaneously in unison" improperly imports limitations from the specification. See Phillips, 415 F.3d at 1323. Plaintiff directs the Court to a portion of the specification discussing the motor/pump unit. The specification states that "the shafts drivingly connect the indicated spur gears for rotation in unison." Patent '629 at 8:23--36. But the problem is that this portion of the specification is under the heading "Detailed Description of an Exemplary Preferred Embodiment of the Invention." Patent '629 at 5:34--36. And other than this preferred embodiment, nothing requires the motor and pump be "drivingly coupled to one another for operation simultaneously in unison." Thus, this portion of Plaintiff's construction is properly rejected as well.

Defendant's construction-"a part having a motor and a pump, each containing gears, where the gears of the motor portion are forced to rotate by old ATF flowing through the motor portion, thereby rotating the pump portion which is coupled to the motor portion by two shafts"- is similarly flawed. (Doc. No. 53 (D's Resp. Brief) at 1.) It is just a description of Figure 3.

Plaintiff makes the broader argument that its construction is necessary to meet the goal of the invention: preventing the transmission from running dry. The Court disagrees. The motor and pump portions of the motor/pump unit need not be "drivingly coupled to one another for operation simultaneously in unison to displace a substantially equal volume of fluid" in order to meet the invention's goal. The claims themselves require that old ATF be "continuously replaced in substantially equal volume with new ATF . . . ." Patent '629, claims 1, 14, 15. Even without limiting the claim term as Plaintiff proposes, the claim language achieves the invention's goals.

Based on the evidence, the term "motor/pump unit" is properly construed as "a part having a motor and a pump." Both parties' proposed constructions are rejected. One impermissibly duplicates claim language, and both improperly import limitations from a preferred embodiment.

B. "rotary motor" and "rotary motor portion of the motor/pump unit"

The Court construes "rotary motor" as "a portion of the motor/pump unit that converts fluid flow into rotational energy and drives the pump unit."

Claims 1 and 15 state that "old ATF from the transmission flows via a rotary motor portion of the motor/pump unit to waste by reason of pressure provided by said internal transmission pump and drives a pump portion of said motor/pump unit." Patent '629 at 11:53--57, 18:9--13. This claim language presents two ideas. First, old ATF flows through the rotary motor and into waste. It does so by reason of pressure provided by the internal transmission pump. Second, old ATF drives a pump portion of the motor/pump unit.

The prosecution history provides further guidance. Claim 1 originally read "motor portion of the motor/pump unit" instead of "rotary motor portion of the motor/pump unit." (Doc. 50 at 25, Doc 50-1 at 28.) "Rotary" was added after the claim was rejected as anticipated. A "rotary motor" differentiated itself from prior art because prior art utilized a "piston/cylinder device of limited displacement" as opposed to "a positive displacement motor pump unit of rotary design." (Doc 50-1 at 13.) More importantly, the patentee also stated that "the rotary motor portion is thus stated to drive a pump portion of said motor/pump unit." Id. The prosecution history presents two ideas: 1) the rotary aspect is significant and 2) the rotary motor portion drives the pump portion.

In light of the intrinsic evidence, the Court concludes that "rotary motor" is properly construed as "a portion of the motor/pump unit that converts fluid flow into rotational energy and drives the pump unit."This construction fits ...


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