Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc.

Filing 70

ORDER CONSTRUING CLAIMS OF UNITED STATES PATENT NOS. 6,254,180 AND 6,378,938. Signed by Judge Jon S. Tigar on April 16, 2014. (wsn, COURT STAFF) (Filed on 4/16/2014)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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ICON-IP PTY LTD.,

Case No. 12-cv-03844-JST

Plaintiff,
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v.
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SPECIALIZED BICYCLE COMPONENTS,
INC.,

Re: ECF No. 53

Defendant.

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United States District Court
Northern District of California

ORDER CONSTRUING CLAIMS OF
UNITED STATES PATENT NOS.
6,254,180 AND 6,378,938

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In this patent infringement action involving bicycle seats, the parties seek construction of

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ten terms used in the two patents-in-suit.

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I.

BACKGROUND

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A.

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Icon-IP Pty Ltd. (“Icon”) alleges that Specialized Bicycle Components, Inc.

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(“Specialized”) infringes two of its patents by manufacturing, selling, and/or offering to sell

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bicycles seats. Compl. ¶ 5. The following chart identifies the two patents-in-suit and the

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remaining asserted claims:

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Patents-in-Suit and Remaining Asserted Claims

Patent

Claims

U.S. Patent 6,254,180 (“the ’180 patent”)

1, 3-6, 12, 14, 15, 17, 21, 22

U.S. Patent 6,378,938 (“the ’938 patent”)

1-3, 5, 11-14

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B.

The ’180 Patent

The ’180 patent, entitled “Bicycle Seat,” claims a bicycle seat that includes two buttocks
support portions. The support portions are coupled to a front portion and can be separated by a
slot. A hinge connects each of the support portions and the front portion, so that the support
portions can move in an arcuate manner in relation to the front portion and independent of each

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other. This movement can take place during the pedaling motion of the bicycle, and as such, the

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rider is comfortably supported in an energy-sufficient manner for pedaling the bicycle. The seat

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may be formed as an integral shell that includes the supports portions, the front portion, and the

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hinges. The shell may be supported by ribs that protrude from its lower surface, and may be

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covered by upholstery. Also, a support rail can be coupled to the underside of the seat with nuts,

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bolts, and/or receiving slots, and may have free ends that are positioned below the support

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portions. These free ends may act as stops to limit the amount of movement of the support

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portions. In addition, springs may exist between the rail and the shell.
The ’180 patent also discloses a bicycle seat that is made up by a housing that has two

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portions, which are connected by a bridging passage. The housing contains fluid, so that the two

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United States District Court
Northern District of California

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support portions can expand and contract as pressure is applied to them during the pedaling

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motion of the bicycle. This embodiment, however, is not claimed and does not form a part of the

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parties’ dispute.
Five of the ten terms to be construed are found in this patent.

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C.

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The remaining five terms are found in the ’938 patent, which claims a bicycle seat that

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positions the rider in a posture that delivers greater pedal power without the rider having to raise
herself from the seat of the cycle. The seat also increases rider comfort and reduces fatigue and
soreness.
The seat includes an abutment means that is transverse with respect to the longitudinal axis

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The ’938 Patent

of the bicycle. The abutment means is formed from two abutment segments that are connected
together. The segments are dimensioned to support the gluteus maximus muscles adjacent the
ischial bones, so that the majority of the gluteus maximus muscles are not in contact with the seat.
The segments thus prevent the rider from permanently siting in a vertical position without other
supports, so that she is permanently supported in a generally standing position on the bicycle
pedals, thus delivering substantially maximum pedal power.
//
//
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II.

LEGAL STANDARD

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The construction of patent claim terms is a matter of law for the court. Markman v.

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Westview Instruments, Inc., 517 U.S. 370, 372 (1996). A “bedrock principle” of patent law is that

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“the claims of a patent define the invention to which the patentee is entitled the right to exclude.”

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Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). In construing a term, the

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“objective baseline” is the “ordinary and customary meaning,” which is “the meaning that the term

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would have to a person of ordinary skill in the art in question at the time of the invention[.]” Id. at

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1313. “[T]he person of ordinary skill in the art is deemed to read the claim term not only in the

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context of the particular claim in which the disputed term appears, but in the context of the entire

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patent, including the specification” and the prosecution history. Id.
The “primary basis for construing [a] claim” and “the best source for understanding a

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Northern District of California

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technical term” is a patent’s intrinsic evidence. Id. at 1314. Intrinsic evidence includes the patent

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and its file history, including any reexaminations and reissues, related patents and their

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prosecution histories, and the prior art that is cited or incorporated by reference in the patent‐in‐

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suit and prosecution history. Id. Extrinsic evidence refers to all other types of evidence, including

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inventor testimony, expert testimony, documentary evidence of how the patentee and alleged

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infringer have used the claim terms, dictionaries, treatises, and other similar sources. Id. at 1318.

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Intrinsic evidence trumps any extrinsic evidence that would contradict it. Id. at 1314.

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III.

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DISCUSSION
A.

“hinge” terms — ’180 patent claims 1, 12, 14

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United States District Court
Northern District of California

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Terms
1. “at least one
hinge between
each of the first
and second
portions and the
front portion for
allowing each of
the first and
second support
portions to
undergo
substantially
independent
arcuate
movement” (claim
1)
2. “a hinge for
allowing each of
the first and
second support
portions to
undergo
substantially
independent
movement arcuate
relative to one
another and the
nose portion”
(claim 12)

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Icon’s proposed construction
Icon contends that this claim term
requires no construction. However,
if the Court determines this claim
requires construction, Icon
contends the construction should
be:

Specialized’s proposed construction
The construction for each of Term
Nos. 1-3 is:

“a specific localized region between
each of the support portions and the
nose/front portion that flexes during
pedaling to allow each of the support
“at least one flexible area
portions to independently rotate in an
separating each of the support
arc about the region without
portions from the front portion1 to
interference or significant dampening,
allow flexing to occur between each while the nose/front portion is held
of the first and second support
substantially still”
portions and the front portion so
that each of the first and second
support portions undergo
substantially independent arcuate
movement”
Icon contends that this claim term
requires no construction. However,
if the Court determines this claim
requires construction, Icon
contends the construction should
be:
“a flexible area separating each of
the support portions from the front
portion2 to allow flexing between
each of the support portions and the
nose portion so that each of the first
and second support portions may
undergo substantially independent
arcuate movement relative to one
another and the nose portion”

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Icon’s proposed construction recites “the nose,” but since no such term exists in claim 1, the
Court replaces it for its equivalent—“the front portion.”
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Icon’s proposed construction recites “the nose,” but since no such term exists in claim 1, the
Court replaces it for its equivalent—“the front portion.”
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3. “a hinge
allowing the two
separate support
portions to
undergo
substantially
independently
movement” (claim
14)

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Icon contends that this claim term
requires no construction. However,
if the Court determines this claim
requires construction, Icon
contends the construction should
be:
“a flexible area separating each of
the support portions from the front
portion3 to allow flexing between
each of the support portions and the
nose portion so that the two
separate support portions may
undergo substantially independent
movement”

The Court adopts a modified version of Icon’s proposed constructions, namely one in
which the term “nose” in Icon’s proposed constructions is replaced by the term “the front

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portion.”
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Northern District of California

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This construction reflects what the inventors “intended to envelop with the claim[s].”

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Phillips, 415 F.3d at 1316. In Phillips, the Federal Circuit made clear that courts should primarily
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look to intrinsic evidence to determine the meaning of a claim term. Id. at 1313-14. Here,
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intrinsic evidence supports Icon’s proposed construction.

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As a preliminary matter, the Court finds that the “hinge” terms require construction. While
“district courts are not (and should not be) required to construe every limitation present in a
patent’s asserted claims,” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1362 (Fed. Cir. 2008), “claim construction is a matter of resolution of disputed meanings and

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technical scope, to clarify and when necessary to explain what the patentee covered by the claims,
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for use in the determination of infringement.” Id. Here, the Court finds that the “hinge” terms do

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not speak for themselves as to what the patent covers and their construction is therefore necessary.
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Although the specification provides several embodiments of hinges, it does not define what
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a hinge is. In the Joint Claim Construction Statement, both parties cited the American Heritage
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Dictionary in support of their proposed constructions. Joint Claim Construction Statement, Ex. A
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at 1, Ex. B at 5. The dictionary defines a hinge as a “jointed or flexible device that allows the

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Icon’s proposed construction recites “the nose,” but since no such term exists in claim 1, the
Court replaces it for its equivalent—“the front portion.”
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turning or pivoting of a part, such as a door or lid, on a stationary frame.” Specialized’s

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Responsive Brief, Olson Decl., Ex. Y at 3. However, this ordinary and customary meaning of

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does not provide guidance to the Court as to what a hinge is to one of ordinary skill in the art in

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the context of the patent.

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In its proposed construction, Icon equates a hinge with a “flexible area.” Although this

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interpretation is broader than the ordinary and customary meaning of the word “hinge,” it reflects

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what the patentee intended to encompass with the claims. In more than one instance, the

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specification describes a hinge not merely as a specific, localized, and flexible region different

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from the adjacent support portions and front portion. Instead, it considers the possibility of a
hinge being made from the same material as and formed integrally with the adjacent portions. For

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example, “the hinges 20 and 22 are integral with the remainder of the shell 11, [and] the shell is

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formed from a flexible material . . . .” ’180 patent col. 8 ll. 17-19. Also, “[t]he seat 240 may be

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formed from spring metal material or spring plastic material and in such an embodiment, the hinge

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sections 246 are merely integral portions of the seat 240 and defined by the transition areas

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between the buttock support sections 242 and the horn section 244.” Id. col. 17 ll. 19-23.

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Comparing the above with embodiments in which the hinge is made from spring material while

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the adjacent portions from non-spring material, Id. col. 17 ll. 24-29, it is clear that the patentee

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intended for the “hinge” terms to encompass all of these configurations.

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Specialized argues that a construction that does not require the hinges to be specific and

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localized regions necessarily means that they could overlap with or be part of the support or front

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portion. This notion is unsupported by the claim language, however. “A claim element is a

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discrete component or element of the device as set forth in the claim.” Blumenthal v. Barber-

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Colman Holdings Corp., 62 F.3d 1433 (Fed. Cir. 1995). Because the hinges, support portions, and

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front portion are claimed as distinct elements, they are discrete and must be individually met for

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purposes of finding infringement.

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Specialized’s proposed construction improperly incorporates extraneous limitations into

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the claims. See 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1321 (Fed. Cir.

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2013) (citation omitted) (“[W]hile [courts] construe the claims in light of the specification,
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limitations discussed in the specification may not be read into the claims.”). First, as discussed

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above, a hinge can comprise a transition area between the support and front portions and does not

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have to be specific or localized. Second, the claim language and specification do not require the

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movement by the support portions to be without interference or significant dampening. In fact, the

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specification discloses that there may be some interference and dampening. For example, the stop

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members limit the amount of flexing movement of the support portions. See ’180 patent, col. 13

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ll. 45-57. Also, the ribs underneath the seat increase the stiffness of the seat and decrease the

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amount of flexing movement. Id. col. 14 ll. 6-11. Third, there is no express language in either the

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claims or specification that requires the front portion to be held substantially still.

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In addition, Specialized’s proposed construction contains ambiguous terms that could

United States District Court
Northern District of California

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result in jury confusion. For example, Specialized does not explain what it means for a region to

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be “specific” and “localized.” It also does not explain how the support portions rotate “without

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interference or significant dampening,” or what distinguishes “significant dampening” from

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“insignificant dampening.”

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Specialized also unpersuasively argues that Icon’s proposed construction improperly

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covers prior art, namely the Mythos bicycle saddle. The Mythos saddle prior art is not a part of

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the intrinsic record. As such, Specialized’s argument invites the Court to conduct an invalidity

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analysis as part of its claim construction. The Court declines to engage in an invalidity analysis at

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this stage of the litigation. The Federal Circuit has “acknowledged the maxim that claims should

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be construed to preserve their validity,” but it “ha[s] not applied that principle broadly, and [it]

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ha[s] certainly not endorsed a regime in which validity analysis is a regular component of claim

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construction.” Phillips, 415 F.3d at 1327. Indeed, the Federal Circuit “ha[s] limited the maxim to

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cases in which the court concludes, after applying all the available tools of claim construction, that

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the claim is still ambiguous.” Id. (citations and internal quotation marks omitted); see also E.I. du

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Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1434 (Fed.Cir.1988) (rejecting

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argument that limitations should be added to claims to preserve the validity of the claims). Here,

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the “hinge” terms are not “still ambiguous.” As discussed above, Icon’s proposed construction is

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amply supported by the language of the claims and the specification. Accordingly, the Court need
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not engage in a claim construction exercise aimed at preserving the validity of the claims.
Finally, the Court finds the prosecution histories of the Taiwanese and South Korean

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patent applications irrelevant. Specialized refers to these histories to argue that “a saddle with

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divided rear portions fixed to rigid rails [is] outside the scope of [the] invention.” Specialized’s

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Responsive Brief at 15. Specialized quotes a dated Federal Circuit opinion, Caterpillar Tractor

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Co. v. Berco, S.p.A., which states in the context of determining claim scope: “Though no authority

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is cited for the proposition that instructions to foreign counsel and a representation to foreign

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patent offices should be considered, . . . when such matters comprise relevant evidence they must

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be considered.” 714 F.2d 1110, 1116 (Fed. Cir. 1983). Caterpillar, however, only requires
consideration of relevant evidence but provides no guidance on what is relevant. In the same

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Northern District of California

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sentence, the Caterpillar court actually noted that “the varying legal and procedural requirements

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for obtaining patent protection in foreign countries might render consideration of certain types of

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representations inappropriate . . . .” Id. On the other hand, the Federal Circuit has found foreign

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prosecution histories irrelevant for claim construction. In Pfizer, Inc. v. Ranbaxy Laboratories

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Ltd., the Federal Circuit agreed with the “district court’s conclusion that the statements made

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during prosecution of foreign counterparts . . . are irrelevant to claim construction because they

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were made in response to patentability requirements unique to [foreign] law.” 457 F.3d 1284,

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1290 (Fed. Cir. 2006).

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Even if the Court were to consider these foreign prosecution histories, however, they

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would not change the Court’s analysis. The statements made to the foreign patent examiners were

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related to the rails extending to the rear of the seat or to the prior art’s lack of a hinge, but not to

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the scope or meaning of the “hinge” terms. The statements thus do not shed light on what the

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patentee intended to encompass with the “hinge” terms. In the Taiwanese prosecution history, the

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applicant argued that in the Bigolin reference—the prior art at issue, “the supporting frame

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extends from the nose part of the seat cushion to the tail part, which is different from [the

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circumstance whereby] the end part of the supporting frame as stated in New Claim 4 of this case

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terminates at the central portion of the seat cushion.” Specialized’s Responsive Brief, Olson

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Decl., Ex. Q at 1. In the Korean prosecution history, the applicant argued that Bigolin did not
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include a hinge and that “the bent metallic pipe component (4) supporting the frame (2) restricts

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the movement of the rear part of the saddle.” Id. Ex. W at 20.

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Specialized also points to patent markings and a license between the ’180 patent’s previous

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owner and Selle San Marco as indicative of the patentee’s understanding of claim scope. The

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Court finds this evidence irrelevant. The case relied on by Specialized, Frolow v. Wilson Sporting

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Goods Co., is inapposite. 710 F.3d 1303 (Fed. Cir. 2013). First, there is no indication in Frolow,

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a patent licensing dispute, that evidence considered for infringement and breach-of-contract

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purposes should be considered in claim construction. Second, the Frolow court held: “Placing a

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patent number on a product is an admission by the marking party that the marked product falls
within the scope of the patent claims.” Id. at 1309-10 (emphasis added). The court did not hold

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Northern District of California

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that licenses or markings constitute an admission regarding claim scope by the patentee. Further,

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Specialized cites no case law to explain why the court should consider the license and markings

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not by Icon, but by the ’180 patent’s previous owner. Although Icon is the successor in patent

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interest, Specialized has failed to explain why Icon should be bound by third party statements.

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B.

“stop means” terms — ’180 patent claims 12, 22

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Terms
4. “stop means for
limiting the
amount of
movement of the
first and second
support portions”
(claim 12)

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5. “stop means is
provided for
limiting movement
of the two support
portions” (claim
22)

Icon’s proposed construction
Icon contends that this term is
governed by 35 U.S.C § 112(f).

Specialized’s proposed construction
Term Nos. 4 and 5 are governed by 35
U.S.C. § 112(f).

Function: “limiting the amount of
movement of the first and second
support portions”

Functions:
4. “limiting the amount of movement
of the first and second support
portions”
5. “limiting movement of the two
support portions”

Corresponding structure: “end
portions of the mounting brackets
and equivalents”
Icon contends that this term is
governed by 35 U.S.C § 112(f).
Function: “limiting the amount of
movement of the two support
portions”
Corresponding structure: “end
portions of the mounting brackets
and equivalents”

Corresponding structure: “the
rearwardly extending free end sections
145 spaced from the lower surface of
the shell 11 as shown and described in
col. 3 ll. 47-50, col. 12 ll. 45-57, col.
13 ll. 42-65, col. 14 ll. 39-51, figs. 29,
32-36, and equivalents”

The Court adopts Specialized’s proposed construction, but summarizes the
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corresponding structure as: “as shown in figures 29 and 32-36, the rearwardly extending

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free end sections 145, which are spaced from the lower surface of the shell 11 and which

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extend from outwardly extending sections 159, where the sections 159 and 145 may form a

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continuously curved profile.”

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Icon and Specialized agree that the functions of the “stop means” terms in claims 12 and

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22 are “limiting the amount of movement of the first and second support portions,” and “limiting

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the amount of movement of the two support portions,” respectively. The only issue before the

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Court, therefore, is the corresponding structure. The Court concludes that Specialized’s proposed

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structure is necessary for performing the claimed functions in the specification. Icon’s proposed

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Northern District of California

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structure, on the other hand, encompasses unnecessary elements.
In construing a term under § 112(f), “structure disclosed in the specification qualifies as

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‘corresponding’ structure only if the specification or prosecution history clearly links or associates

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that structure to the function recited in the claim. This duty to link or associate structure to

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function is the quid pro quo for the convenience of employing § 112[(f)].” Default Proof Credit

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Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005) (internal

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citation omitted).

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In the embodiment depicted in figures 23-36, the ’180 patent links the rearwardly

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extending free end sections of the rail to the claimed function of limiting the amount of movement

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of the support portions. ’180 patent col. 13 ll. 43-47 (“The rear portions 145 form stop members

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which limit the amount of flexing movement of the portions 12 and 14 relative to one another and

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the nose 18 . . . .”). The specification makes clear that the free end sections that form the stop

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members are those that are spaced from the lower surface of the shell, not other types of end

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sections. Id. col. 3 ll. 47-50, col. 13 ll. 43-47, 57-58. In other embodiments, the specification does

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not mention that the end sections therein form stop members. For example, in the embodiment

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described in figures 37-40, the ends of the mounting rail extend to below the support portions, but

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the specification does not link these ends to the function of the stop means—limiting the amount

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of movement of the support portions. This supports Specialized’s proposed construction.

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Icon correctly points out that “a court may not import . . . structural limitations from the
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written description that are unnecessary to perform the claimed function.” Icon’s Opening Brief at

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13 (citing Wenger Mfg., Inc. v. Coating Machinery Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir.

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2001)). Icon thus argues that Specialized’s proposed construction improperly imports a limitation

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into “stop means” by “requiring the end portions of the mounting bracket to be ‘spaced from the

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lower surface of the shell 11.’” Id. at 13-14.

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However, while the Court cannot import limitations that unnecessarily constrict the

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breadth of the corresponding structure, neither can it unduly broaden the breadth by including

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structure that is unnecessary for performing the claimed function. “The corresponding structure to

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a function set forth in a means-plus-function limitation must be necessary to perform the claimed
function.” Frank’s Casing Crew & Rental Tools, Inc. v. Weatherford Int’l, Inc., 389 F.3d 1370

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Northern District of California

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(Fed. Cir. 2004) (internal quotation marks omitted). Here, Icon’s proposed construction

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improperly includes structures unnecessary for performing the claimed function. See Northrop

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Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1352 (Fed. Cir. 2003). Icon’s proposed

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construction lacks the phrase “spaced from the lower surface of the shell,” which limits the kind of

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end sections that perform the claimed function. Without this limitation, the claimed structure may

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encompass any type of end sections, even those shown in figures 1-22, which do not perform the

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claimed functions. Since these end sections are unnecessary for performing the claimed functions,

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they cannot be the corresponding structure.

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Icon also argues that the language in dependent claim 13 “provides strong evidence against

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the construction proposed by Specialized,” because dependent claim 13 contains the limitation

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“[t]he bicycle seat of claim 12, wherein the bicycle seat includes a mounting rail for mounting the

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seat to a bicycle and the stop means comprises end portions of the mounting rail which are spaced

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from the first and second support portions and positioned below the first and second support

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portions.” Mot. at 14 (emphasis added).
The doctrine of claim differentiation provides that “[t]he presence of a dependent claim
that adds a particular limitation raises a presumption that the limitation in question is not found in
the independent claim.” Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007).
“That presumption is especially strong when the limitation in dispute is the only meaningful
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difference between an independent and dependent claim, and one party is urging that the limitation

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in the dependent claim should be read into the independent claim.” Id.

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Here, Icon is correct that the doctrine of claim differentiation raises a presumption that

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independent claim 12 does not contain the “stop means” structure, because that structure is the

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only meaningful difference between claim 12 and dependent claim 13. This presumption is

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rebutted here, however. The statutorily mandated scope of means-plus-function terms cannot be
broadened by claim differentiation. See, e.g., Saffran v. Johnson & Johnson, 712 F.3d 549, 563
(Fed. Cir. 2013) (“[A] patentee cannot rely on claim differentiation to broaden a means-plusfunction limitation beyond those structures specifically disclosed in the specification.”); Cross
Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1304 (Fed. Cir. 2005)
(“[A]lthough the doctrine of claim differentiation suggests that claim 5 should be broader than

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Northern District of California

claim 1, any presumption that the claims differ with respect to this feature may be overcome by a
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contrary construction mandated by the application of § 112[(f)].”). A construction lacking the
“stop means” structure would impermissibly broaden the scope of claim 12 beyond the structures
disclosed in the specification.
Therefore, the Court adopts Specialized’s proposed construction because it points to
the corresponding structure necessary for performing the claimed function, and nothing

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more. For the sake of clarity and convenience of the jury, the Court summarizes this

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structure as: “as shown in figures 29 and 32-36, the rearwardly extending free end sections

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145, which are spaced from the lower surface of the shell 11 and which extend from

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outwardly extending sections 159, where the sections 159 and 145 may form a continuously

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curved profile.”

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C.

“permanently transverse” — ’938 patent claims 1, 5, 11-14

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Terms
6. “permanently
transverse with
respect to the
longitudinal axis of
the bicycle when
the support means
couples the seat to
the bicycle so that

Icon’s proposed construction
Icon contends that this claim term
requires no construction. However,
if the Court determines this claim
requires construction, Icon
contends the construction should
be:
“permanently on an inclined axis
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Specialized’s proposed construction
“when the support means couples the
seat to the bicycle, the abutment
means is permanently inclined with
respect to the horizontal as viewed
from either side of the bicycle to such
an extent that that it is not possible for
a rider with the backbone arranged
generally vertically to sit on the seat

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without other
supports, it is not
possible to
permanently sit on
the [inclined
surface/abutment
means] with the
backbone of the
[rider/person]
arranged generally
vertically”

that crosses the longitudinal axis of
the bicycle when the support means
couples the seat to the bicycle so
that without other supports, it is not
possible to permanently sit on the
[inclined surface/abutment means]
with the backbone of the
[person/rider] arranged generally
vertically while in a riding
position”

permanently without some other
support because the rider will simply
slip forward on the seat, and therefore
the rider is placed in a generally
standing position as opposed to a
seated position”

The Court holds that this term does not require construction.
7
The Court finds that when given their ordinary and customary meaning, the words in this
8
claim term are sufficiently clear for a jury to ascertain the scope of the claim, so there is no need
9

for construction. “[C]laim construction is a matter of resolution of disputed meanings and

10
technical scope, to clarify and when necessary to explain what the patentee covered by the claims,
United States District Court
Northern District of California

11

for use in the determination of infringement.” O2 Micro, 521 F.3d at 1362 (emphasis added). The

12
goal of claim construction is to instruct the jury on what the meaning of the claimed term is. See
13
14
15

Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1348 (Fed. Cir. 2010) (“The terms, as
construed by the court, must ensure that the jury fully understands the court’s claim construction
rulings and what the patentee covered by the claims.”) (internal citation omitted). If construing a

16
claim term does not provide further clarity for a jury, it may be appropriate to allow the claim
17
language to speak for itself.
18
19
20
21
22

“There is a heavy presumption that claim terms are to be given their ordinary and
customary meaning.” Aventis Pharms. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir.
2013). “Courts are required therefore to look to the words of the claims themselves to define the
scope of the patented invention.” Id. (internal citation omitted). Here, the words of the claims
themselves define the meaning of the claim term. The abutment means is “permanently transverse

23
with respect to the longitudinal axis of the bicycle when the support means couples the seat to the
24

bicycle.” ’938 patent col. 6 ll. 53-56, col. 7 ll. 5-8, 44-47, col. 8 ll. 5-8, 27-30, 47-50. The words

25
further make clear that the abutment means is transverse to the extent that without other supports,
26
it is not possible to permanently sit on the abutment means with the backbone of the ride arranged
27
generally vertically. Id. col. 6 ll. 56-58, col. 7 ll. 8-11, 47-50, col. 8 ll. 8-12, 30-33, 50-52.
28
13

On the other hand, neither party’s proposed construction provides clarity beyond the plain

1
2

and ordinary meaning of the term. Instead, these constructions impermissibly read limitations

3

from the specification into the claims. On the one hand, Icon substitutes “transverse with respect

4

to the longitudinal axis” with “on an inclined axis that crosses the longitudinal axis.” It is unclear

5

how the abutment means can be “on an inclined axis,” and how this inclined axis “crosses the

6

longitudinal axis.” Also, while the term “while in a riding position” does not necessarily make the

7

entire limitation a tautology,4 it is ambiguous. It is unclear what a riding position is. Does it only

8

encompass the position depicted in Fig. 5 of the ’938 patent, or does it include all positions in

9

which a rider can ride a bicycle?
On the other hand, Specialized’s proposed construction substitutes “longitudinal axis of the

10

United States District Court
Northern District of California

11

bicycle” with “the horizontal as viewed from either side of the bicycle,” which is an ambiguous

12

phrase that was viewed by the examiner as a source of indefiniteness. Icon’s Opening Brief, Ex. C

13

at 3. Also, it is equally unclear what constitutes a “generally standing position,” as opposed to a

14

“seated position.” When a rider is on a bicycle with the claimed seat, with most of her weight on

15

the pedals but torso hunched forward, is she standing or seated?
D.

16

“abutment means” terms — ’938 patent claims 1, 15, 11-14

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18
19
20
21
22
23
24
25
26
27
28

Terms
7. “an inclined
surface forming
abutment means
for receiving a
portion of a rider’s
anatomy which is
adjacent to at least
4

Icon’s proposed construction
Icon contends that this claim term
requires no construction. However,
if the Court determines this claim
requires construction, Icon
contends the construction should
be:

Specialized’s proposed construction
The phrase “an inclined surface
forming” in these terms needs no
construction. The remainder of the
claim language in Term Nos. 7-10 is
governed by 35 U.S.C. § 112(f).
Functions:

Specialized contends: “[U]nder Icon’s construction, if a rider’s center of gravity is forward of the
seat when the rider is leaning forward in a riding position, the limitation is met because the rider
will fall forward unless he is supported by handlebars or pedals. Under this construction, the
permanently transverse limitation is met by any bicycle saddle.” Specialized’s Responsive Brief
at 22 (emphasis added). It is not true that the permanently transverse limitation is met by any
bicycle saddle because of the limitation “with the backbone of the [person/rider] arranged
generally vertically.” When a rider is on a typical bicycle saddle and leans forward when riding,
even if she slides forward when she lets go of other supports (such as handlebars), the
“permanently transverse” limitation is not met because the rider’s backbone is not vertical. If it is
vertical, the rider’s center of gravity would not be forward of the ischial contact on the seat, and
she would not slide forward.
14

1
2

one of the rider’s
ischial bones”
(claim 1)

3
4
5
6
7

8. “an inclined
surface forming
abutment means
against which a
rider’s tissue can
abut” (claims 5,
11)

8
9
10

United States District Court
Northern District of California

11
12
13
14
15

9. “an inclined
surface forming
abutment means
for receiving
substantially only
that portion of a
person’s seating
anatomy which
covers at least a
part of one of the
person’s ischial
bones thereof”
(claim 12)

16

“an inclined surface forming an
abutment for receiving a portion of
a rider’s anatomy which is directly
next to at least one of the rider’s
ischial bones while in a riding
position”
Icon contends that this claim term
requires no construction. However,
if the Court determines this claim
requires construction, Icon
contends the construction should
be:

7. “receiving a portion of a rider’s
anatomy which is adjacent to at least
one of the rider’s ischial bones”
8. “abutting a rider’s tissue”
9. “receiving substantially only that
portion of a person’s seating anatomy
which covers at least a part of one of
the person’s ischial bones thereof”
10. “receiving a portion of a person’s
seating anatomy which covers at least
a part of one of the person’s ischial
bones thereof”

“an inclined surface forming an
abutment against which a rider’s
tissue can abut while in a riding
position”
Icon contends that this claim term
requires no construction. However,
if the Court determines
this claim requires construction,
Icon contends the construction
should be:

Corresponding structure: “the
abutment segments 14 as shown in
figs. 1-5 and described at col. 4 ll. 512, 20-47, 52-63, and equivalents”

“an inclined surface forming an
abutment for receiving substantially
only that portion of a person’s
seating anatomy which covers at
least a part of one of the person’s
ischial bones thereof while in a
riding position”

17
18
19
20
21
22
23
24
25
26
27
28

10. “an inclined
surface [portion]
forming abutment
means intended for
receiving a portion
of a person’s
seating anatomy
which covers at
least a part of one
of the person’s
ischial bones

Icon contends that this claim term
requires no construction. However,
if the Court determines this claim
requires construction, Icon
contends the construction should
be:
“an inclined surface forming an
abutment for receiving a portion of
a person’s seating anatomy which
covers at least one of the person’s
15

1

thereof” (claims
13, 14)

ischial bones thereof while in a
riding position”

The Court adopts Specialized’s proposed construction, but describes the

2
3

corresponding structure as: “as shown in figures 1-5, the abutment segments 14, which are

4

contoured to provide a generally curved profile, matching the contour of the gluteus

5

maximus muscles adjacent a person’s ischial bones.”

6

As a threshold matter, the Court must determine whether the terms are governed by 35

7

U.S.C. § 112(f). The “use of the word ‘means’ creates a presumption that the drafter intended to

8

invoke § 112[(f)].” Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (Fed. Cir.

9

2012).

10

Here, the claims used the term “means,” which raises a rebuttable presumption that the

United States District Court
Northern District of California

11

term is subject to § 112(f). However, this presumption is rebuttable. “[W]hen a claim recites a

12

function but then goes on to elaborate sufficient structure, material, or acts within the claim itself

13

to perform entirely the recited function, the claim is not in means-plus-function format even if the

14

claim uses the term ‘means.’” Id. Thus, as Icon correctly pointed out, this presumption can be

15

overcome by reciting sufficient structure in the claim, even when the patentee incorporated the

16

term “means” during prosecution. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1261 (Fed. Cir.

17

2008). But here, the presumption is not rebutted. The patentee expressly told the Patent Office

18

(and thus the public) that his amendment was intended to put the claims in means-plus-function

19

format. Icon’s Opening Brief, Ex. C at 8 (stating in response to an office action “[b]y this

20

amendment, Applicant has amended the claims to recite the structure in ‘means-plus-function’

21

terminology so that the structure forming the cycle seat is defined as structure for performing the

22

functional/operational language as now recited in those claims.”). Such a statement is analogous

23

to prosecution history disclaimer, where a patentee makes “a clear and unmistakable disavowal of

24

scope during prosecution,” removing from the scope what would otherwise fall within. Purdue

25

Pharm. L.P. v. Endo Pharms. Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006). By clearly and

26

unmistakably telling the public that the amendment was intended to invoke § 112(f) and thus limit

27

the claim scope to the exact structures disclosed in the specification, the patentee has given up any

28

extra scope and cannot reclaim it in claim construction.
16

1

Icon cites TriMed, arguing that its reasoning prevents the Court from construing “abutment

2

means” as a means-plus-function term. However, TriMed is distinguishable. In TriMed, the

3

Federal Circuit found that amending a term to recite “means” did not convert the term to means-

4

plus-function format. TriMed, 514 F.3d at 1261. But this holding was based on the patentee’s

5

remarks that he intended for the structures recited in the claim to be sufficient for accomplishing

6

the claimed functions. Id. Here, the patentee expressly stated an opposite intention during

7

prosecution. Icon’s Opening Brief, Ex. C at 8. Also, Icon points to a footnote in TriMed, which

8

states: “A statement that use of means-plus-function language would help overcome prior art does

9

not magically transform language that clearly does not meet our legal tests for § 112[(f)] into
means-plus-function language.” TriMed, 514 F.3d at 1261. This reasoning, however, does not

11
United States District Court
Northern District of California

10

preclude a construction of “abutment means” as a means-plus-function term. First, a statement

12

that use of means-plus-function language would overcome prior art is not the same as a statement

13

that unequivocally declares a patentee’s intention to invoke § 112(f). Second, in the footnote, the

14

Federal Circuit was referring to a statement by the examiner, not the patentee. Id. While a

15

statement by an examiner may be ambiguous as to a patentee’s intent, a patentee’s express remark

16

can constitute “a clear and unmistakable disavowal of scope during prosecution.” See Purdue

17

Pharm., 438 F.3d at 1136. The Court therefore finds Icon’s reliance on TriMed unpersuasive.

18

Having established that the claims at issue are subject to § 112(f), the Court now turns to

19

the construction issues before it. Construction of a means-plus-function limitation requires two

20

steps. “First, the court must identify the claimed function. Second, the court must identify the

21

corresponding structure in the specification that performs the recited function.” Chicago Bd.

22

Options Exchange, Inc. v. Int’l Securities Exchange, LLC, 677 F.3d 1361, 1367 (Fed. Cir. 2012)

23

(internal citation omitted). The functions of the abutment means are recited in the claims. For

24

Term Nos. 7-10, their respective functions are: “receiving a portion of a rider’s anatomy which is

25

adjacent to at least one of the rider’s ischial bones,” “abutting a rider’s tissue,” “receiving

26

substantially only that portion of a person’s seating anatomy which covers at least a part of one of

27

the person’s ischial bones thereof,” and “receiving a portion of a person’s seating anatomy which

28

covers at least a part of one of the person’s ischial bones thereof.”
17

Next, in determining the corresponding structure, “[s]tructure disclosed in the specification

1
2

is ‘corresponding’ structure only if the specification or prosecution history clearly links or

3

associates that structure to the function recited in the claim.” Minks v. Polaris Indus., Inc., 546

4

F.3d 1364, 1377 (Fed. Cir. 2008) (internal citation omitted). Specialized points to the abutment

5

segments 14 as shown in figures 1-5 and described at column 4, lines 5-12 and column 4, lines 20-

6

47 and lines 52-63, which are the exact structure that performs the claimed functions. Icon, on the

7

other hand, proposes a corresponding structure of broader scope, but fails to explain why it is

8

clearly linked or associated with the claimed functions.
The Court thus adopts Specialized’s proposed construction. For the sake of clarity

9

and convenience of the jury, the Court distills the above structure described in the

11
United States District Court
Northern District of California

10

specification as: “as shown in figures 1-5, the abutment segments 14, which are contoured to

12

provide a generally curved profile, matching the contour of the gluteus maximus muscles

13

adjacent a person’s ischial bones.”

14

IV.

15

CONCLUSION
The Court construes the ten disputed terms as follows:

16
17
18
19
20

Disputed term
1. “at least one hinge between each of the first
and second portions and the front portion for
allowing each of the first and second support
portions to undergo substantially independent
arcuate movement”

“at least one flexible area separating each of the
support portions from the front portion to allow
flexing to occur between each of the first and
second support portions and the front portion so
that each of the first and second support
portions undergo substantially independent
arcuate movement”

2. “a hinge for allowing each of the first and
second support portions to undergo
substantially independent movement arcuate
relative to one another and the nose portion”

“a flexible area separating each of the support
portions from the nose portion to allow flexing
between each of the support portions and the
nose portion so that each of the first and second
support portions may undergo substantially
independent arcuate movement relative to one
another and the nose portion”

21
22
23
24
25
26

Construction

27
28
18

1

Disputed term

Construction

2

3. “a hinge allowing the two separate support
portions to undergo substantially independently
movement”

“a flexible area separating each of the support
portions from the nose portion to allow flexing
between each of the support portions and the
nose portion so that the two separate support
portions may undergo substantially independent
movement”

4. “stop means for limiting the amount of
movement of the first and second support
portions”

Term Nos. 4 and 5 are governed by 35 U.S.C.
§ 112(f).

5. “stop means is provided for limiting
movement of the two support portions”

Functions:

3
4
5
6
7
8
9
10

5. “limiting movement of the two support
portions”

11
United States District Court
Northern District of California

4. “limiting the amount of movement of the first
and second support portions”

12
Corresponding structure: “as shown in figures
29 and 32-36, the rearwardly extending free end
sections 145, which are spaced from the lower
surface of the shell 11 and which extend from
outwardly extending sections 159, where the
sections 159 and 145 may form a continuously
curved profile”

13
14
15
16
17
18
19
20
21

6. “permanently transverse with respect to the
longitudinal axis of the bicycle when the
support means couples the seat to the bicycle so
that without other supports, it is not possible to
permanently sit on the [inclined
surface/abutment means] with the backbone of
the [rider/person] arranged generally vertically”

No construction required

22
23
24
25
26
27
28
19

1

Disputed term

2

7. “an inclined surface forming abutment means
for receiving a portion of a rider’s anatomy
which is adjacent to at least one of the rider’s
ischial bones” (claim 1)

3
4

Construction

5

The phrase “an inclined surface forming” in
these terms needs no construction. The
remainder of the claim language in Term Nos.
7-10 is governed by 35 U.S.C. § 112(f).
Functions:

6

7. “receiving a portion of a rider’s anatomy
which is adjacent to at least one of the rider’s
ischial bones”

7
8

8. “abutting a rider’s tissue”

9

9. “receiving substantially only that portion of a
person’s seating anatomy which covers at least
a part of one of the person’s ischial bones
thereof”

10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19
20
21
22
23

8. “an inclined surface forming abutment means
against which a rider’s tissue can abut” (claims
5, 11)
9. “an inclined surface forming abutment means
for receiving substantially only that portion of a
person’s seating anatomy which covers at least
a part of one of the person’s ischial bones
thereof” (claim 12)
10. “an inclined surface [portion] forming
abutment means intended for receiving a
portion of a person’s seating anatomy which
covers at least a part of one of the person’s
ischial bones thereof” (claims 13, 14)

10. “receiving a portion of a person’s seating
anatomy which covers at least a part of one of
the person’s ischial bones thereof”
Corresponding structure: “as shown in figures
1-5, the abutment segments 14, which are
contoured to provide a generally curved profile,
matching the contour of the gluteus maximus
muscles adjacent a person’s ischial bones”

IT IS SO ORDERED.
Dated: April 16, 2014
______________________________________
JON S. TIGAR
United States District Judge

24
25
26
27
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20