The opinion of the court was delivered by: Honorable Janis L. Sammartino United States District Judge
ORDER ON CLAIM CONSTRUCTION
On March 30, 2010, Plaintiff Weiland Sliding Doors and Windows, Inc. brought suit against Defendant Panda Windows and Doors, LLC alleging infringement of U.S. Patent No. 6,792,651, and a continuation patent, Patent No. 7,007,343. Presently before the Court is claim construction.
Patent Nos. 6,792,651 and 7,007,343 are in the field of sliding-door assemblies-specifically the tracks. Prior-art track systems were inadequate when one side of the panel and track system was exposed to a fluid heavy environment. Fluid would often flow through the space between the panel and the track into an area where fluid didn't belong. Fluid accumulating around the track could also freeze and prevent the panels from sliding properly. And the worst problem occurred when fluid accumulated around the track and weakened the subfloor supporting the track. This was not only a problem because of damage to the subfloor, but also because the tracks would shift and prevent the panels from sliding properly.
The invention envisioned in the '651 and '343 patents aimed to solve these problems by controlling and preventing fluid accumulation. The core of the invention involves five parts: a base, a track on which panels slide, a splash guard, a collection pan, and a means for drawing off moisture collected in the collection pan. From the base extends the track and upright splash guard; and together, the three form a channel. Below the channel is the collection pan. Any fluid that flows over the track falls into the channel and collects in the collection pan. The fluid is then drawn out of the collection pan via some other means.
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.
The parties approach the Court with twenty-nine issues. That this many issues exist reflects not the complexity of the case but rather the manner in which the parties approached claim construction. Of the twenty-nine issues, only three are truly disputed. And of those three, only two require extensive discussion.
A. Patent 6,792,651 claims 1 and 6
The parties disagree whether the preambles for claims 1 and 6 in the '651 patent are limiting. Plaintiff argues that the preambles should not be construed as part of the claim. Defendant disagrees.
The preamble to a claim can be a limitation if it recites essential structure or steps, or if it is necessary to give life, meaning, and validity to a claim. Vizio, Inc. v. Int'l Trade Comm'n, 605 F.3d 1330, 1340 (Fed. Cir. 2010.) Conversely, a preamble is not limiting "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention." Catalina Marketing Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).
The preambles for claims 1 and 6 state a purpose and intended use for the invention, and the claim bodies define structurally complete inventions. The preambles are therefore not claim limitations.
Claim 1's preamble states that it claims "[a]n in-floor, adjustable, track assembly with built-in weep system for sliding panels, comprising . . . ." Patent '651 at 6:28--29. The body of the claim then states what the "track assembly" is comprised of. It comprises, in short, a base having a track extending upward therefrom, an upright splashguard forming an open-top channel with said track and said base, at least one collection pan mounted under each said channel for collecting moisture, an egress means for drawing off the moisture from the collection pan, a pair of alignment clamps, a means for attaching the clamps to the base and to a track support rail, and a means for securing the track support rail to the floor. Patent '651 at 6:28--55.
The preamble names what is being claimed, a "track assembly," but does little else. And simply naming the structure being claimed in the body is insufficient to render the preamble limiting. See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 Fed Cir. 2000). The body of claim 1 defines a structurally complete invention without reference to the preamble. Indeed, deleting the premable would not affect the claimed invention. See id.
The analysis is equally applicable to claim 6. Claim 6's preamble states that it claims "a built-in weep system for slidable panels, comprising . . . ." Patent '651 at 6:26. The body recites a complete structure independent of the preamble. It claims:
a) at least two bases, each having a track extending upward therefrom, said tracks arranged in closely spaced-apart, parallel manner . . . ;
b) at least two upright splash guards, each parallel to a respective one of said tracks, extending upward from each base, and each spaced slightly apart from a respective one of said tracks, . . . each said splash guard forming an open-top channel with a respective one of said tracks and said bases for collecting moisture therein;
c) at least one collection pan mounted under each said channel to collect moisture from each said channel;
d) egress means for drawing off the moisture from each of said collection pans.
Patent '651 at 7:27--8:4. As before, the body of the claim sufficiently describes what is being claimed without reference to the preamble. And as before, the preamble provides a name for what is being claimed; in this case, a "weep system."
The preambles for claims 1 and 6 are not claim limitations. The preambles do not recite essential structure or steps, nor are they necessary to give life, meaning, and validity to their respective claims.
B. 7,997,343 claims 1, 2, 3, and 4
Defendant argues that the preambles for claims 1, 2, 3, and 4 in the '343 patent are limiting. Plaintiff disagrees. Claims 1, 2, and 3 of the '343 patent are nearly identical to claim 1 of the '651 patent. And just like claim 1 of the '651 patent, the preambles for claims 1,2, and 3 are not limiting. The bodies of those claims define structurally complete inventions without reference to the preamble. And there is no other reason to construe the preamble as limiting.
Claim 4 has different content, but the preamble is still not limiting. The preamble recites "a track assembly for a sliding panel comprising: . . . ." The body of the claim then recites the components of said "track assembly." They include:
a) a base having a track . . . , said base further comprising at least one flange extending outwardly from at least one side of the base
b) an aperture in said base for . . .
c) a flexible tube coupled to said aperture for . . .
d) at least one support rail configured to be positioned underneath said base; and
e) at least one alignment clamp configured to engage at least a portion of the [sic] at least one flange and the [sic] at least one support rail . . . .
Patent '343 at 7:44--8:4. Just like claims 1--3, the body of the claim recites a structurally complete invention. The preamble neither recites essential structure or steps, nor does it give life, meaning, and validity to a claim.
Defendant directs the Court to the prosecution history in support of reading some of the '343 preambles as limiting. A claim preamble can be limiting when there is "clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art." Catalina Marketing Int'l, Inc., 289 F.3d at 808 (citing generally Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1375 (Fed Cir. 2001)).
In an office action before the USPTO, the USPTO rejected claims 3--6, and 8 as obvious and unpatentable over a Japanese patent in view of Patent 3,938,621 (the Bobbit, Jr. reference). (D's Open. Brief, Exhibit C ¶ 10.) And specific to claim 4, the USPTO stated that it would have been obvious "to modify the assembly of [the Japanese Patent] with an additional drainage conduit coupled to the first aperture as taught by '621." (Id.)
Plaintiff objected to the rejection. Plaintiff argued that when performing the obviousness analysis under 35 U.S.C. § 103, the patentee is presumed to have full knowledge of all prior art in the field of his endeavor. But when it comes to prior art outside that field, the USPTO assumes that the patentee would have knowledge of prior art that would have commended itself to the inventor's attention in considering his problem.
And with that, the patentee asserted that the '621 patent and claim 4 were from nonanalogous arts:
Bobbit's teachings relating to a drain for fluid collection pit for a vehicle servicing system, and claim 4's recitation of a "track assembly for a sliding panel," i.e. a track assembly for sliding doors with a built-in weep (i.e. moisture condensation collection) system for use in building construction, clearly relate to nonalagous [sic] arts.
(D's Open. Brief, Exhibit C ¶ 10.) And because the prior art was from a nonanalogous field, the patentee argued that the USPTO examiner failed to show that the '621 reference would "commend itself to the attention of an inventor of a sliding door track assembly for building construction." As a result, the patentee requested the USPTO examiner reconsider his rejection of claim 4.
Defendant uses Plaintiff's response to the rejection of claim 4 to argue that the preamble is limiting. Defendant asserts that Plaintiff quotes the preamble of claim 4-"track assembly for a sliding panel"-to distinguish the prior art reference during prosecution and overcome a claim rejection. (D's ...