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Pct International Inc. v. Holland Electronics LLC

United States District Court, D. Arizona

February 21, 2014

PCT International Inc., Plaintiff,
v.
Holland Electronics LLC, Defendant.

ORDER

JAMES A. TEILBORG, Senior District Judge.

On January 9, 2014, the Court conducted a Markman hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). Consistent with Markman, the Court now construes the claims in the patent at issue, U.S. Patent No. 6, 042, 422 (filed Oct. 8, 1998) (the "422 Patent").

I. Legal Standard

"The purpose of claim construction is to determin[e] the meaning and scope of the patent claims asserted to be infringed.'" O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (citation omitted). Claim construction is a question of law exclusively within the province of the Court. Markman, 517 U.S. at 372. The Court need only construe claims, however, when the parties raise a dispute about the proper scope of a claim. O2 Micro, 521 F.3d at 1362. Moreover, if a disputed claim term has a plain and ordinary meaning such that it needs no clarification or explanation, the Court need not adopt a construction beyond that plain meaning. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997).

In construing claims, the Court "look[s] to the words of the claims themselves, " giving them "their ordinary and customary meaning" unless clearly stated otherwise. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). "[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc); see also Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002) ("The terms used in the claims bear a heavy presumption' that they mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art.").

"[T]here is no magic formula or catechism for conducting claim construction." Phillips, 415 F.3d at 1324. The Court "looks to those sources available to the public that show what a person of skill in the art would have understood disputed 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 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." Id. The Court is not "required to analyze [these] sources in any specific sequence, " but may not use extrinsic evidence to contradict "claim meaning that is unambiguous in light of the intrinsic evidence." Phillips, 415 F.3d at 1324 (refining the holding of Vitronics ).

The specification "is the single best guide to the meaning of a disputed term." Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 711 F.3d 1348, 1361 (Fed. Cir. 2013) (quoting Vitronics, 90 F.3d at 1582). The patentee may "act as its own lexicographer, " Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012), by defining a claim term in the specification as having "a different meaning than [it] would otherwise have to a person of ordinary skill in the art, " Innova/Pure Water, 381 F.3d at 1116; see also Vitronics, 90 F.3d at 1582 (a specification "acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication"). However, the Court will find the patentee to have acted as its own lexicographer only if the patentee "clearly express[es] an intent to redefine the term." Thorner, 669 F.3d at 1365 (citation and internal quotation marks omitted).

Similarly, the specification may narrow the scope of a disputed claim term if the patentee has "demonstrate[d] intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope." Thorner, 669 F.3d at 1365 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). In ascertaining whether the patentee has disavowed the full scope of a claim, the Court must not read limitations from the specification into the claims. Teleflex, 299 F.3d at 1326 (citing Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998)). In other words, the claims are not necessarily limited to the embodiments disclosed in the specification. See SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 n.14 (Fed. Cir. 1985) (en banc).

In addition to the specification, the Court considers "the patent's prosecution history, if it is in evidence." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). "The purpose... is to exclude any interpretation that was disclaimed during prosecution.'" Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (citation omitted). The prosecution history may reveal that the patentee "has unequivocally disavowed a certain meaning to obtain [its] patent." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003). Thus, the Court examines both the specification and prosecution history to ascertain whether the patentee has disavowed the full scope of a claim term.

The Court may also consider extrinsic evidence to aid in its construction of disputed claim terms. Phillips, 415 F.3d at 1317-18. For example, "[d]ictionaries are always available to the court to aid in the task of determining meanings that would have been attributed by those of skill in the relevant art to any disputed terms used by the inventor in the claims." Texas Digital, 308 F.3d at 1202 (citing Vitronics, 90 F.3d at 1584 n.6). Dictionaries are particularly helpful in claim construction because they "endeavor to collect the accepted meanings of terms, " Phillips, 415 F.3d at 1318, but the Court should not elevate dictionaries to prominence over the specification and claim language, see id. at 1319-24. Other extrinsic evidence, such as expert testimony, is less helpful because it may suffer from bias, and the Court should "discount any expert testimony that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent.'" Id. at 1318 (quoting Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998)).

Finally, dependent claims must be construed to "incorporate by reference all the limitations of the claim[s] to which [they] refer[]." 35 U.S.C. ยง 112(d).

II. Construed Terms

The following chart summaries the disputed claim terms, each party's proposed construction, and the Court's construction.

Term Disputed Claim Relevant PCT's Proposed Holland's Proposed The Court's No. Term Claims Construction Construction Construction 1 "outer" 1, 11 "situated farther "located on the The Court does not from the center" outside" construe this term and instead construes "outer barrel" as defined below. 2 "bore" 1, 11 "the hollow of a Uncontested. "the hollow of a barrel" barrel" 3 "said collapsible 1, 11 No construction "This claim element The Court does not band having an necessary. defines the outer construe this term. outer side facing Alternatively, side' from which the away from the construe obtuse angle is longitudinal axis of "collapsible" as measured in claim said outer barrel" "foldable" and element Ref No. 4 "outer barrel" as below. The outer "drum or cylindrical side' must be facing part situated farther away from the from the center" longitudinal axis of the connector."

4 "said first portion of 1, 11 No construction "The outer side' "the surfaces of the said outer side of necessary. must have two first and second said collapsible Alternatively, different portions (as portions of the outer band and said "surfaces of first and defined in the claim) side of the collapsible second portion of second outer side which form an band form between said outer side of portions that form an obtuse angle them an angle that said collapsible angle which can be between those two can be measured, band forming an measured as more portions of the outer according to a obtuse angle than 90 and less than side' as measured circular are that is therebetween" 180 degrees" facing away from centered at the vertex the longitudinal axis of the angle and of the connector." radially farther from the longitudinal axis of the outer barrel than the vertex of the angle, as more than 90 and less than 180 degrees" 5 "said collapsible 1, 11 No construction "This claim element The Court does not band having an necessary. defines the inner construe this term. inner side facing Alternatively, side' from which the toward the construe obtuse angle is longitudinal axis of "collapsible" as measured in claim said outer barrel" "foldable" and element Ref No. 6 "outer barrel" as below. The inner "drum or cylindrical side' must be facing part situated farther toward the from the center." longitudinal axis of the connector." 6 "said first portion of 1, 11 No construction "The inner side' "the surfaces of the said inner side of necessary. must have two first and second said collapsible Alternatively, different portions (as portions of the inner band and said "surfaces of first and defined in the claim) side of the collapsible second portions of second inner side which form an band form between said inner side of portions that form an obtuse angle them an angle that said collapsible angle which can be between those two can be measured, band forming an measured as more portions of the inner according to a obtuse angle than 90 and less than side' as measured circular arc that is therebetween" 180 degrees" facing toward the centered at the vertex longitudinal axis of of the angle and the connector." radially farther from the longitudinal axis of the outer barrel than the vertex of the angle, as more than 90 and less than 180 degrees"

7 "said wall of said 1, 11 No construction "The collapsible The Court does not outer barrel having necessary. band must be part of construe this term and at least one Alternatively, the outer shell of the instead construes collapsible band" construe "outer connector. The shell "outer barrel" as barrel" as "drum or ( i.e. barrel) has a defined below. cylindrical part length greater than situated father from its diameter. (The the center" and specification equates "collapsible" as the terms shell' and "foldable." outer barrel.' See 422 Patent, column 4, lines 5-6.)" 8 "at least one 1, 11 No construction "The collapsible The Court does not collapsible band necessary. band must extend construe this term. extending between Alternatively, between two non-collapsible a first non-collapsible construe wall wall "collapsible" as portions. For portion and a "foldable" and both purposes of this second non-wall instances of "non-collapsible" patent, non-collapsible portion" as "non-foldable." collapsible wall portions' will not deform as the outer barrel is being compressed." 9 "extent" 11 Uncontested. "length" "length" 10 "essentially 11 No construction "parallel but for "parallels but with parallels" necessary. manufacturing some deviation" Alternatively, tolerances" construe as "substantially or in essence, but not necessarily exactly, parallels." "outer barrel" 1, 11 "a barrel that is located immediately exterior to the outer insulation of the coaxial cable when the coaxial cable is inserted into the barrel and prior to compression of the barrel"

III. Claim Construction

A. "said first portion of said inner side of said collapsible band and said second portion of said inner side of said collapsible band forming an obtuse angle therebetween" (Term No. 6)

The parties' dispute concerning the construction of this term stems from the phrase "obtuse angle." (Doc. 111 at 10; Doc. 113-1 at 6, 11). Holland argues that to qualify as obtuse, the angle must be measured facing toward the longitudinal axis of the connector. (Doc. 113-1 at 6-7). PCT argues that the claim terms do not require the angle to be measured from a certain direction. (Doc. 111 at 10).

More specifically, Holland contends that PCT narrowed the scope of its claim during prosecution to exclude a collapsible band having an angle measuring as obtuse facing away from the longitudinal axis of the connector. (Doc. 111-3 at 9). Therefore, according to Holland, PCT may not now define the scope of its claim as including such an angle. ( Id. at 8-10).

1. Background

Claim 1 in PCT's original patent application claimed a collapsible band "such that the outer side of said collapsible band is concave and the inner side of said collapsible band is convex when said collapsible band is viewed in cross section." (Doc. 115-2 at 21).[1] Claim 2 in PCT's original patent application claimed: "The coaxial cable end connector according to claim 1" having a collapsible band "having a shallow V-shaped cross section such that the first portion of said collapsible band and the second portion of said collapsible band form an obtuse angle on the outer side of said collapsible band when said collapsible band is viewed in cross section, prior to compression of the outer barrel." ( Id. at 22).

The PTO issued a non-final office action rejecting both claims, among others, as unpatentable. ( Id. at 45). PCT then discussed the prior art with the patent examiner, including the "Down patent" (U.S. Patent No. 5, 525, 076).

PCT subsequently amended its claims to distinguish them from those of the Down patent. ( Id. at 55). As PCT noted in its remarks to the examiner:

... the collapsible bands of Down have a flat inner surface and a shallow V-shaped outer surface.... Claim 1 as amended recites that the collapsible band of the present invention has a bend in the middle such that both the inner and outer surfaces of the collapsible band of the present invention define obtuse angles prior to axial compression of the collapsible band of the present invention.

( Id. at 65). PCT amended its claim 1 by replacing the language "such that the outer side of said collapsible band is concave and the inner side of said collapsible band is convex when said collapsible band is viewed in cross section" with the following:

... said outer side of said collapsible band having a first portion extending between said bend and said first non-collapsible wall portion, said outer side of said collapsible band having a second portion extending between said bend and said second non-collapsible wall portion, said first portion of said outer side of said collapsible band and said second portion of said outer side of said collapsible band forming an obtuse angle therebetween, said inner side of said collapsible band having a first portion extending between said bend and said first non-collapsible wall portion, said inner side of said collapsible band having a second portion extending between said bend and said second non-collapsible wall portion, said first portion of said inner side of said collapsible band and said second portion of said inner side of said collapsible band forming an obtuse angle therebetween, such that said bend is positioned radially closer to the longitudinal axis of said outer barrel than any other portion of said collapsible band when said collapsible band is viewed in cross section and prior to axial compression of said outer barrel.

( Id. at 55-56). PCT cancelled its original claim 2 entirely. ( Id. at 62). The examiner allowed the amended claim 1 (as well as its dependent claims), stating that "[t]he instant invention relates to a coaxial cable connector with an outer barrel having a V-shaped collapsible band which is ...


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