TEK Global S.R.L. et.al. v. Sealant Systems International Inc. et.al.

Filing 88

ORDER RE: CLAIM CONSTRUCTION. Signed by Judge Paul S. Grewal on 8/29/2012. psglc3, COURT STAFF) (Filed on 8/29/2012).

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

United States District Court
For the Northern District of California

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SEALANT SYSTEMS INTERNATIONAL,
INC. AND ACCESSORIES MARKETING,
INC.,
Plaintiffs,
v.
TEK GLOBAL S.R.L. AND TEK
CORPORATION,

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Defendants.

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Case No.: 11-CV-00774-PSG
(consolidated with
Case No. 11-CV-1649-PSG)
CLAIM CONSTRUCTION ORDER
(Re: Docket Nos. 67, 25)

In this patent infringement suit, 1 Plaintiffs Sealant Systems International, Inc. (“SSI”) and

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Accessories Marketing, Inc. (“AMI”) allege that Defendants TEK Global S.R.L. and TEK

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Corporation (collectively “TEK”) infringe U.S. Patent No. 6,789,581 (the “‘581 Patent”). TEK

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alleges that SSI infringes U.S. Patent No. 7,789,110 (the “’110 Patent). The parties seek

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construction of ten terms and phrases for each of the patents. After consideration of the claims,

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specification, prosecution history, and other relevant evidence, and after hearing the arguments of

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the parties, the court construes the disputed language of the asserted patents as set forth below.

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TEK filed Case No. 11-1649 against SSI alleging infringement of the ‘110 Patent in the Southern
District of New York. SSI filed Case No. 11-774 against TEK seeking a declaratory judgment that
SSI did not infringe the ‘110 Patent in this district. After SSI’s sister company, AMI, purchased the
‘581 Patent from an unrelated third party, AMI’s claim for infringement was added in the first
amended complaint. SSI then filed a second amended complaint adding TEK as a defendant with
respect to the claim of infringement. TEK’s infringement case was transferred to this district and
consolidated with Case No. 11-774.
All parties have consented to magistrate judge jurisdiction pursuant to 28 U.S.C. §636(c).
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Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

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I.

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BACKGROUND
The inventions claimed in both the ‘581 and ‘110 Patents involve a self-contained tire

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repair kit. Both are aimed at allowing an ordinary motorist to repair and inflate a flat tire while the

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tire remains on the wheel of the vehicle. 2 The kits allow the motorist to avoid the danger and hassle

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of replacing a flat tire with a spare alongside a busy highway or a desolate road and provide for

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more space in the trunk of a vehicle than would be required ordinarily to store a spare tire.

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The ‘581 Patent was filed on October 31, 2002 and assigned to Interdynamics, Inc.

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(“Interdynamics”). On April 29, 2011, Interdynamics sold the ‘581 Patent to AMI. The claimed

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invention has never been sold in the United States.

United States District Court
For the Northern District of California

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The ‘110 Patent was filed on February 8, 2005 and cites to the ‘581 Patent as prior art. It

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was assigned to TEK. During the prosecution, original dependent claim 10 was amended to

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incorporate features of the claim on which it depended and thereafter was allowed. 3 Claim 10 is

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written in means-plus-function format. In addition, new claims were added parallel to that amended

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claim and other claims dependent on it, but the means-plus-function terms of the original claims

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were written in structural terms to avoid the means-plus-function language and were reported as

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such to the examiner. Those claims also were allowed. 4

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II.

LEGAL STANDARDS
Seven years after the Federal Circuit’s seminal Phillips decision, 5 the cannons of claim

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construction are now well-known even if not perfectly understood by parties and courts alike. “To

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construe a claim term, the trial court must determine the meaning of any disputed words from the

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perspective of one of ordinary skill in the pertinent art at the time of filing.” 6 This requires a careful

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review of the intrinsic record, comprised of the claim terms, written description, and prosecution

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See, e.g., ‘581 Patent, Summary of Invention, Col. 2:15-18.

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See Mathiowetz Decl., Ex. C at 4-5 (Docket No. 26).

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See id., Ex. D.

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Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).

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Chamberlain Group, Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir. 2008).

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Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

history of the patent. 7 While claim terms “are generally given their ordinary and customary

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meaning,” the claims themselves and the context in which the terms appear “provide substantial

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guidance as to the meaning of particular claim terms.” Indeed, a patent’s specification “is always

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highly relevant to the claim construction analysis.” 8 Claims “must be read in view of the

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specification, of which they are part.” 9 Although the patent’s prosecution history “lacks the clarity

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of the specification and thus is less useful for claim construction purposes,” it “can often inform the

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meaning of the claim language by demonstrating how the inventor understood the invention and

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whether the inventor limited the invention in the course of prosecution, making the claim scope

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narrower than it would otherwise be.” 10 The court also has the discretion to consider extrinsic

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United States District Court
For the Northern District of California

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evidence, including dictionaries, scientific treatises, and testimony from experts and inventors.

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Such evidence, however, is “less significant than the intrinsic record in determining the legally

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operative meaning of claim language.” 11

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The court notes that it may adjust its construction of the claims at issue if later-introduced

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evidence compels an alternative construction. 12

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III.

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ANALYSIS
A. ‘581 Patent

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1.

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TERM
“an air flow path from said compressor
adapted to be connected to a tire”

CONSTRUCTION
A route from a compressor to a tire into which,
when tire sealant is received, a mixture of air
and tire sealant is directed.

Claims 1, 2, 3, 10, 21, 27, and 43

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Id.; Phillips, 415 F.3d at 1312 (internal citations omitted).

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Phillips, 415 F.3d at 1312-15.

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Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517
U.S. 370 (1996). See also Ultimax Cement Mfg. Corp v. CTS Cement Mfg. Corp., 587 F. 3d 1339,
1347 (Fed. Cir. 2009).

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Phillips, 415 F.3d at 1317 (internal quotations omitted).

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Id. (internal quotations omitted).

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See Pressure Prods. Medical Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1316 (Fed. Cir.
2010) (citing Pfizer, Inc. v. Teva Pharm., USA, Inc., 429 F.3d 1364, 1377 (Fed. Cir. 2005)).
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Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

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SSI urges that the above claim be given its plain and ordinary meaning. The specification

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teaches that when the compressor is activated and a container of sealant is in place, compressed air

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is forced into the container. This pushes tire sealant out of the container and into the receptacle and

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then into the air flow path air and into the tire. 13 Based on this description, SSI argues that an “air

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flow path” describes a course or route for compressed air, not limited to any particular hardware or

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pathway, and which is consistent with its use in the claims. 14 SSI disputes that the patent discloses

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simultaneous or distinct streams of compressed air that force sealant out of the container and also

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“continuously” or “directly” direct air into the tire. As an alternative to plain meaning, SSI

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proposes a construction that describes the route as including “at least one conduit or hose for

United States District Court
For the Northern District of California

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directing the compressed air.”

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TEK contends that the embodiments and prosecution history support an interpretation of the

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claim language that is based on the mixing of air with tire sealant described in the specification. In

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the Notice of Allowability, the examiner distinguished the ‘581 Patent from prior art based on the

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air/sealant mixture that results from air being forced into the container of sealant and sealant being

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pushed out and into the air flow path to the tire. 15 Because the applicant did not challenge the

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examiner’s statements, TEK argues that there was acquiescence to such a construction. 16 TEK

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further argues that the air/sealant mixture relied on by the examiner is based on a continuous or

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direct air flow path from the compressor through a receptacle to a tire. As an example, TEK points

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to the embodiment of Figure 13 which shows that when the compressor is activated, air flows from

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the compressor, into and out of the receptacle, to the tire. Tire sealant escapes from the pressurized

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13

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See ‘581 Patent, Col. 2:31-67; Col. 4:65-67; Col. 5:1-22; Col. 6:6-18; Col. 7:13-14; Col. 7:66;
Col. 8:4; Figs. 3-5, 9-14.
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‘581 Patent, claim 1 (“air from said air compressor is forced into the container and pushes tire
SSI out of the container, into said receptacle, into said air flow path, and into the tire”); claim 46
(“wherein said air flow path comprises a hose attachable to a tire valve”); claim 47 (“wherein said
air flow path comprises a tire valve adapter stem.”).
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The Notice of Allowability states: “The Scott reference pertains to a tire sealant dispenser with a
pressurized source of sealant (i.e. no air/sealant mixing), the Thurner reference pertains to another
sealant dispenser with a housing, compressor and a flexible bag-type sealant source (i.e. again no
air/sealant mixing) and the Savidge reference pertains to tire balancing device with air/pulverant
material mixing (i.e. not sealant).” See Docket No. 26, Ex. F.
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See Torpharm, Inc. v. Ranbaxy Pharmaceuticals, Inc., 336 F.3d 1322, 1330 (Fed. Cir. 2003).
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Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

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container and is emitted into the air flow path and “entrained with the air heading towards the

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tire.” 17

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The court agrees with TEK that the claim term requires construction because the language

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alone does not convey what a person of skill in the art would understand from the intrinsic record

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as a whole. 18 The claim language, written description, embodiments, and examiner’s statements in

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the Notice of Allowability all contemplate an air flow path into which air and tire sealant are being

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mixed. The claims themselves refer to air from the air compressor that “pushes tire sealant out of

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the container, into said receptacle, into said air flow path,” an exhaust in the receptacle that

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“receives air and tire sealant from the container and directs the air and tire sealant into said air flow

United States District Court
For the Northern District of California

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path,” and “tire sealant [that] leaves the container and is entrained into said air flow path.” 19 The

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specification further explains how one skilled in the art might understand the device: “[w]hen a

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container of tire sealant is received in the receptacle, the intake directs air from the air flow path

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substantially into the container, and the exhaust receives air and tire sealant from the container and

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directs the air and tire sealant into the air flow path.” 20 The examiner’s statement in the Notice of

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Allowability moreover suggests that this understanding of the invention, predicated on the mixing

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of air and sealant, is essential to the design’s patentability.

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The record does not address, however, where the air path lies and whether that path must be

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continuous or “direct” from the compressor to the tire, as TEK contends. Although air and tire

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sealant are being mixed along or entrained into a common path (“an air flow path”), nothing in the

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‘581 Patent, Col. 7:45-58.

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See Phillips, 415 F.3d at 1313 (“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.”); Brookhill-Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003) (noting “the context of the
surrounding words of the claim also must be considered in determining the ordinary and customary
meaning of those terms”).
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See ‘581 Patent, claim 1 (“air from said air compressor is forced into the container and pushes
tire sealant out of the container, into said receptacle, into said air flow path”; claim 3 (“said exhaust
receives air and tire sealant from the container and directs the air and tire sealant into said air flow
path”); claim 43 (“tire sealant leaves the container and is entrained into said air flow path”).
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Id., Col. 2:45-50.
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Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

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claim language or specification precludes additional hoses or pathways through which air also

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might travel. In fact, the specification suggests some dichotomy between the container with sealant,

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when received in the receptacle, and the air flow path. 21 One of ordinary skill in the art would

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understand that the air flow path is a route for the compressed air to take, which may include or

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encompass air being diverted through the container, and which does include air that is being mixed

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with tire sealant. The court thus finds that elements of both parties’ proposed constructions are

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appropriate to describe the plain meaning of the term. “An air flow path from said compressor

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adapted to be connected to a tire” will be construed as “a route from a compressor to a tire into

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which, when tire sealant is received, a mixture of air and tire sealant is directed.”

United States District Court
For the Northern District of California

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2.

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CONSTRUCTION

TERM
“a receptacle formed in said housing”

Plain and ordinary meaning.

Claims 1 and 27

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SSI contends that the above claim term should be given its plain and ordinary meaning

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because the meaning is readily apparent even to lay people and involves little more than the

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application of commonly understood words. The plain meaning of the claim term also is supported

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by the specification. 22 TEK responds that the plain and ordinary meaning fails to capture the full

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meaning imputed by the claim language and specification.
Claim 1 describes “a receptacle formed in said housing in communication with said air flow

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path adapted to sealingly receive a container of tire sealant” and explains that compressed air

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“pushes tire sealant out of the container, into said receptacle, into said air flow path, and into the

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tire. 23 TEK contends that its proposed construction of “an enclosure formed within and as an

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See ‘581 Patent, Col. 2:42-50 (describing an intake that “receives air from the air flow path” and
an exhaust that “returns air to the air flow path” such that “[w]hen a container of tire sealant is
received in the receptacle, the intake directs air from the air flow path substantially into the
container, and the exhaust receives air and tire sealant from the container and directs the air and
tire sealant into the air flow path”) (emphasis added).
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See ‘581 Patent, Col. 2:31-67; Col. 3:7-14; Col. 4:26-41, 65-67; Col. 5:1-18, 33-34; Col. 7:5-9,
14-32, 45-51; Col. 7: 66-Col. 8:4; Figs. 3-5, 9-14.
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Id., Col. 8:12-19.
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Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

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integral part of the housing that sealingly receives air and/or tire sealant” necessarily denotes the

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volumetric shape capable of receiving and exhausting air and sealant that is taught. It disputes that

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“receptacle” alone sufficiently denotes a volumetric shape. TEK further contrasts “receptacle” as

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used in the claim language from “port,” which the specification describes may be integral with the

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housing or may be a separate element. 24

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The court is not persuaded that the claim term requires further construction. The word

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“receptacle” connotes depth to the extent that it is able to receive a container of tire sealant and

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provide a pass-through for sealant leaving the container and entering into the air flow path. The

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court accepts SSI’s contention that a person skilled in the art would understand “receptacle” as

United States District Court
For the Northern District of California

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something that receives or contains something. The court does not find that substituting

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“enclosure” helps to clarify the claim meaning. Nor does the claim language or specification

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require that that the receptacle be integral to the housing. The receptacle’s function, according to

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the claim language and specification, is to connect to the flow of compressed air and to sealingly

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receive a container of sealant. The patent uses the word “integral” elsewhere both to specify the

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placement of a component (“a button or pressure relief valve integral with receptacle 14 or port

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40…”) 25 or to specify an alternative structure (“portions of or all of the port may be made integral

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with the housing”). 26 These uses suggest that the absence of “integral” in the description of the

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receptacle is not happenstance. Without more, the court will not impose “integral” as a limitation. 27

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The claim term will be given its plain and ordinary meaning.

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3.

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CONSTRUCTION
TERM
“air from said air compressor is forced
Plain and ordinary meaning.
into the container and pushes tire sealant
out of the container, into said receptacle,

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See id., Col.3:35-42; 7:5-8.

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‘581 Patent, Col. 6:55-57.

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Id., Col. 7:5-9.

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See Phillips, 415 F.3d at 1323 (cautioning against reading limitations that may be present in the
specification into the claim).
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Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

into said air flow path”

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4.

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Subject to the court’s construction of “air flow path” as explained above, the court finds

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United States District Court
For the Northern District of California

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Plain and ordinary meaning.

Claim 3, 30, 38 and 45

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Claims 1, 27, 39, and 42
“exhaust receives air and tire sealant
from the container and directs the air
and tire sealant into said air flow path”

that these claim terms have a plain and ordinary meaning that is supported by the claim language
and specification. TEK’s proposed constructions 28 rely on the same reasoning as TEK urged with
respect to claim No. 1. For example, TEK argues that for claim term No. 3 to have literal meaning
wherein sealant is pushed out of the container into the air flow path, and for there to be air/sealant
mixing as the examiner stated, there must be a continuous flow of air from the compressor to the
tire through the receptacle. As explained earlier, the mixing of air and sealant in the air flow path
does not necessarily support TEK’s limitation of a continuous or direct path. The terms therefore
will be given their plain and ordinary meaning, taking into account the adopted construction for “an
air flow path.”

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6.

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TERM
“said intake and said exhaust are
opposite substantially the same opening
of a container of tire sealant”
Claims 10 and 33
“said opening substantially opposes said
intake and said exhaust”

CONSTRUCTION
The intake and exhaust opening are on opposite
sides of the opening of the container (when a
container of sealant is received in the
receptacle).

Claims 13 and 36

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The parties first dispute whether these terms may be construed at all. TEK contends that the

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phrase “the same opening” of a container of tire sealant is indefinite because there is no antecedent

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For term No. 3, TEK proposes the following construction: “Compressed air pushes tire sealant
out of the container into the receptacle [or port, depending on use in claim] and into the
compressed air stream flowing directly from the air compressor to the tire.”
For term No. 4, TEK proposes: “The exhaust receives compressed air that has been diverted into
the bottle and tire sealant that has been forced from the bottle by the diverted compressed air and
delivers them into the compressed air stream flowing directly from the air compressor to the tire.”
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Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

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basis for it. Although claim 10 is dependent on claim 2, which itself is dependent on claim 1,

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claims 1 or 2 make no reference to the “opening” indicated by claim 10. The lack of antecedent

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basis, however, does not render either claim term indefinite, because a person skilled in the art

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would understand from the context of the claims that the containers described in the specification

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have an opening that is sealingly received in the receptacle. 29 That opening is discussed in several

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places in the specification and described as “preferably provided with a single opening.” 30

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Turning to the construction, SSI contends that the claim terms relating to intake and exhaust

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should be given their plain and ordinary meaning. In the alternative, SSI would interpret the

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phrases to mean that “the intake and exhaust openings point in (or, alternatively, face) a different

United States District Court
For the Northern District of California

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direction from the opening of a container of tire sealant.” TEK proposes what it asserts is

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essentially the plain meaning – the intake and exhaust openings are on opposite sides of the

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opening of the container. TEK points to Figure 5 to support that construction. Figure 5 and the

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accompanying description show an intake nozzle and internal bore terminating in intake hole 46,

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and an exhaust nozzle and internal bore terminating in exhaust hole 47. 31 The specification teaches

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that intake hole 46 lies within the bottle when a container of sealant is secured to the receptacle,

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while exhaust hole 47 lies outside the opening of the bottle. Hence, the openings are on opposite

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sides of the container of sealant.

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SSI argues that this construction is contradicted by the language of claim 33, depending

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from claim 31, which refers to the intake and exhaust nozzles (that point in a different direction

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from the container opening as shown in Figures 4 and 5) and not to “intake hole 46” or “exhaust

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hole 47.” Under Section 112, a claim in dependent form must be construed to incorporate the

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29

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See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006)
(holding a claim is not invalid for indefiniteness despite the lack of antecedent basis where a person
of skill in the art would be able to understand the claim scope from the specification).

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30

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See, e.g., ‘581 Patent, Col. 5:23-49 (referring to bottle 16 as “preferably provided with a single
opening 17” which is sealed and may be installed into receptacle 14); Col 5:63-66 (describing the
benefit of this invention as using a bottle with only one opening requiring only one seal). See also
id., Col. 10:53-63 (claim 37 for a plastic bottle housing having an opening).
31

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See id., Col. 5:8-16; Fig. 5.
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Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

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limitations of the reference claim. 32 By SSI’s reasoning, the intake and exhaust terms in claims 10,

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13, 33 and 36 – which refer merely to “said intake” and “said exhaust” – would be bound by the

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reference in dependent claim 33 to the intake and exhaust nozzles described in claim 31. Yet

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claims 10, 13, and 36 are also dependent claims, none of which refer back to exhaust nozzle or

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intake nozzle limitations. Claims 10 and 13 depend from claim 2, which describes generally “an

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intake” and “an exhaust” in the context of the receptacle; claim 36 depends from claim 28, which

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describes the same in the context of the port. 33

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The court agrees with TEK that a person skilled in the art, reviewing the terms at issue and
in the context of the entire specification, would understand “opposite substantially the same

United States District Court
For the Northern District of California

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opening of a container” to refer to the openings of the exhaust and intake located in the receptacle.

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This interpretation is consistent with Figures 4 and 5 as well as the specification. Similarly, for the

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opening to “substantially oppose[]” the intake and exhaust when the container is received in the

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receptacle (claim 13) or the bottle is secured to the port (claim 36), the exhaust and intake openings

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located in the receptacle must serve as the point of reference. The court will adopt TEK’s proposed

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construction.

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7.

CONSTRUCTION

TERM

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An enclosure that may be formed within and as
an integral part of the housing or as a separate
structure that sealingly receives air and/or tire
sealant.

“port”
Claims 27-28, 30-33, 37-41, and 45

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SSI contends that the above claim term should be given its plain and ordinary meaning.
Because “port” is a commonly understood, non-technical word used according to its ordinary
meaning and understood as such by those of ordinary skill in the art, SSI argues that “port” need
not be construed. Further, there is nothing in the claim language, specification, or file history that
narrows or alters the plain meaning.

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32

See 35 U.S.C. § 112, ¶ 4.

33

See ‘581 Patent, Col. 8:19-25; 8:55-59; 9:5-7; 10:47-42.

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CLAIM CONSTRUCTION ORDER

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TEK contends that a port shares many of the same characteristics as a receptacle except that

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it may or may not be formed in the housing. It points to the following examples: (1) “[a] receptacle

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and/or port is formed in the housing in communication with the air flow path” 34; (2) “[t]he port

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may be a separate attachment that can be secured to a container of tire sealant, or it may be integral

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with a disposable container of tire sealant” 35; (3) “[s]ealant receiving port 40, best illustrated in

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Figs. 3-5 and 9, is disposed in receptacle 14 for the purposes of injecting air from air compressor

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60 into bottle 16 when the bottle is disposed in receptacle 14 and for accepting tire sealant forced

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out of the bottle by way of the high pressure compressed air injected therein” 36; (4) “In Fig. 11,

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port 140 is substantially similar to port 40 described above. However, port 140 is not necessarily

United States District Court
For the Northern District of California

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physically connected to the housing of the device.” 37 TEK disputes that the plain meaning of port is

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adequate, because as with receptacle, port as used in the specification is a structure that has a

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volume and is not simply “an opening for intake or exhaust of a fluid.” 38

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The court agrees with TEK. Although the purpose of the specification is to teach and not to

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impose a further limitation on the relevant claim, “port” alone does not connote the extent of the

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structure described in the patent. According to the specification, “port” may be integral to the

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housing or may be a separate structure. 39 Indeed, the specification describes embodiments that are

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not integral to the housing. 40 The port as claimed comprises an intake and an exhaust for

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compressed air and/or sealant. 41 The port further serves to sealingly receive or secure a bottle or

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34

Id., Col. 2:35-36.

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35

Id., Col. 3:40-43.

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36

Id., Col. 4:67-Col. 5:5.

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37

Id., Col. 7:17-19.

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38

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Docket No. 27 at 17-18 (TEK’s Responsive Claim Construction Br.) (quoting Webster’s Ninth
New Collegiate Dictionary (1988 ed.)).
39

See, e.g., ‘581 Patent, Col. 7:5-8; Col. 3:40-43.

40

See, e.g., id., Col. 7:48-51.

41

See, e.g., id., Col. 5:8-15; 10:6-12; 10:21-25.

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28

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Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

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container of tire sealant. 42 The claim term will be construed as: “an enclosure that may be formed

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within and as an integral part of the housing or as a separate structure that sealingly receives air

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and/or tire sealant.”

4
TERM

CONSTRUCTION

6

“a reservoir formed in said housing”

A “reservoir” is a cavity where sealant collects
separate from the container.

7

Claim 42

5

8.

8
9

United States District Court
For the Northern District of California

10

SSI contends that the above claim term should be construed to avoid any misconception
that “receptacle,” “port,” and “reservoir” refer to the same structure. SSI proposes that reservoir be
construed as “a cavity where sealant collects separate from the container.”

11

TEK responds that as used in Claim 42, which reads on the embodiment of Figure 12,

12

“reservoir” has the characteristics and functionality of a receptacle to which a container of sealant

13

has been mounted if the device is used for repair, or onto which a cap is screwed if the device is

14

used for inflating a tire. The reservoir must be in connection with the air flow path, allowing

15

compressed air to pass through the reservoir if there is no sealant in the reservoir, or to push sealant

16

out of the reservoir, into the air flow path if there is sealant in the reservoir. 43 TEK therefore

17

concludes that reservoir should be construed the same as receptacle.

18

Even though “reservoir” and “receptacle” serve similar functions in different embodiments,

19

the specification teaches that they are different structures. To construe both in the same way

20

ignores this difference and might confuse a jury as to the role of each structure. Both receptacle and

21

port are adapted to receive a container or bottle of tire sealant, whereas as used in claim 42, the

22

reservoir simply is “adapted to receive tire sealant.” The specification teaches that after removing

23

the cap, sealant is poured directly into the reservoir, into which air is directed from the compressor

24

and out of which is exhausted both air and tire sealant. As with “receptacle,” the specification may

25

allow for but does not require that the reservoir be formed integral to the housing.

26
42

See, e.g., id., Col. 5:26-36; 10:26-38; 10:47-51; 12:23-27.

43

See id., Col. 7:33-44.

27
28

12
Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

The court therefore agrees with SSI that “cavity” appropriately describes the structure into

2

which sealant is poured. The court will adopt SSI’s proposed construction of a “reservoir” as a

3

cavity where sealant collects separate from the container.

4
5
6
7

9.

CONSTRUCTION
TERM
“air from said air compressor is forced
Plain and ordinary meaning.
into said reservoir and pushes tire
sealant out of said reservoir, into said air
flow path”

8
9

Claim 42
SSI contends that the above claim term should be given its plain and ordinary meaning.

United States District Court
For the Northern District of California

10
Consistent with its earlier arguments, TEK contends that there is a direct and continuous stream of
11
compressed air from the compressor to the tire, as evidenced by air and sealant mixing as the
12
sealant is pushed out of the reservoir and into the tire.
13
As with claim term Nos. 3 and 4, the claim language, specification, and file history do not
14
support a construction that the compressed air flows “directly” from the air compressor to the tire.
15
A person of skill in the art would understand the claim in context to mean simply what it says –
16
that compressed air moves through the reservoir and pushes sealant out along with the air. As
17
modified by the court’s construction of “air flow path,” the claim term will be given its plain and
18
ordinary meaning.
19
20
21
22
23
24

CONSTRUCTION

10. TERM
“tire sealant leaves the container and is
entrained into said air flow path”

Tire sealant leaves the container and is drawn
into the air flow path.

Claims 43 and 44
SSI contends that the above claim term should be given its plain and ordinary meaning.

25

TEK responds that the claim term should be construed because the words “entrained into said air

26

flow path” are given special meaning by the written description. As used in Claims 43 and 44,

27

which read on the embodiment of Figure 13, sealant leaves an already pressurized container when

28

the switch on the container is activated; sealant is not forced out by a stream of compressed air, as
13
Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

in other embodiments. The specification states in relevant part: “[d]epressing the

2

switch/button/lever [on container 316] allows the contents of the container to leave the container …

3

When switch 319 is also activated, tire sealant escapes container 316 and is emitted into the air

4

flow path and entrained with the air heading towards the tire.” 44 TEK thus proposes a construction

5

that describes tire sealant leaving the container as being “swept into the compressed air stream

6

flowing directly from the air compressor to the tire.”

7

The court agrees that there is a distinction between tire sealant leaving a pressurized
container upon activation of a switch or being forced out by the entry of compressed air. It is

9

sufficient, however, that the claim term uses “leaves” for this purpose, and which TEK does not

10
United States District Court
For the Northern District of California

8

dispute. The parties disagree whether a jury will understand the plain meaning of “entrained” as

11

being “drawn in and transported (as solid particles or gas) by flow of fluid.” Because “entrained” is

12

not in common usage and the specification teaches that the air leaving the pressurized container is

13

effectively drawn into and mixed with the flow of air, the court will adopt the following

14

construction: [t]ire sealant leaves the container and is drawn into the air flow path. As the court

15

explained earlier, the claim language and intrinsic record do not require the air flow path to be

16

direct.

17

B. ‘110 Patent

18
19

CONSTRUCTION

1. TERM
“connecting means”

20

[C]onnecting means is subject to 35 U.S.C.
§112(6).

Claims 1-5, 11-15, and 21-25

21

The function of “connecting means” is
connecting the container to the compressor
assembly and to an inflatable article for
repair or inflation.

22
23
24

The corresponding structures of the
connecting means are: (1) a first hose
connecting the container to the compressor
assembly and fitted in its free end (i.e.,
opposite the end connected to the

25
26
27
44

28

‘581 Patent, Col. 7:45-58.
14

Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

compressor) with a fast-fit, e.g., lever
operated, coupling, and a second hose
connecting the container to a valve of the
inflatable article; (2) a first hose connecting
the dispenser unit to the compressor
assembly with a fitting, and a second hose
connecting the container assembly to the
inflatable article; and (3) equivalents
thereof.

1
2
3
4
5
6

The parties agree that the claim term is a means-plus-function term under 35 U.S.C.

7

§112(6). Construction of a means-plus-function limitation requires the court first to determine the

8

claimed function, and second to identify the corresponding structure in the written description of

9

the patent that performs that function. 45 The parties disagree on both the function performed and

United States District Court
For the Northern District of California

10

the corresponding structure.

11

Claim 1 describes the function of connecting means in pertinent part below:

12

1. A kit for inflating and repairing inflatable articles; the kit comprising a compressor
assembly (2), a container (3) of sealing liquid, and connecting means (4,5) for
connecting the container to the compressor assembly (2) and to an inflatable article for
repair or inflation. 46

13
14

TEK contends that the function, as stated in the claim, is to connect the container to the
15
compressor assembly and to an inflatable article for repair or inflation. SSI responds that its
16
proposed construction additionally reflects the actual function performed by the claim element, i.e.,
17
the function of “connecting means” is to provide air from the compressor to the container and to
18
connect the container to an inflatable article.
19
The court agrees with TEK that the claim term need not include the limitation that the
20
function is to provide air from the compressor to the container. Although providing air may indeed
21
be the practical effect or result, nothing in the claim language or specification requires this
22
limitation be imported into the claim meaning. The function will be defined as “connecting the
23
container to the compressor assembly and to an inflatable article for repair or inflation.”
24
25
45

26
27

See Applied Medical Resources Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir.
2006) (quoting Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir.
1993)).
46

28

‘110 Patent, Col. 5:43-47.
15

Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1
2

The corresponding structure to “connecting means” is identified in the claim by reference to
elements 4 and 5 in the figures. These are described in the specification as follows:
Kit 1 substantially comprises an electric compressor assembly 2; a container 3 of sealing
liquid; a first hose 4 connecting container 3 to compressor assembly 2, and a second hose 5
connecting container 3 to a valve (not shown) of the tyre. 47

3
4
5

The specification goes on to describe a particular fitting for first hose 4:
First fitting 50 is connected to hose 5, which, when not in use, may be wound about the
casing …; and second fitting 53 is connected to compressor 2 by hose 4. Conveniently,
hose 4 is longer than required for connection to fitting 53, and is fitted on its free end with
a fast-fit, e.g. lever-operated, coupling 58. Hose 4 is therefore normally connected to
second fitting 53, but can be detached easily and connected directly to the article, e.g. a
tyre, ball, dinghy, etc., if this simply needs inflating and not repair. 48

6
7
8
9

United States District Court
For the Northern District of California

10

The parties disagree whether the fast-fit coupling is a necessary component of the corresponding
structure.

11

TEK contends that the initial description in the specification, based on the reference to

12

elements 4 and 5, adequately defines the structure of the connecting means. TEK argues that SSI’s

13

proposed limitation to include the fast-fit coupling is too narrow because one of ordinary skill in

14

the art would understand that multiple types of connections can be used to connect a hose to a

15

compressor. The plain language of the specification demonstrates this by referring to the “lever-

16

operated,” fast-fit coupling as an example only (using “e.g.” and not “i.e.”) for “convenience” and

17

not as a necessary part of the structure. 49 TEK further points to the embodiment depicted in Figure

18

7 in which TEK argues that there is no need for a fast-fit coupling because the hose connecting the

19

container to the compressor assembly does not get removed, even if the device is to be used solely

20

for inflation and not for repair.

21

SSI responds that the corresponding structure includes not only first hose 4 and second hose

22

5, but also the specific fittings disclosed in the specification. SSI argues that because the

23

specification discloses the specific fittings, that disclosure must be considered in determining the

24
25

47

Id., Col. 2:44-48 (emphasis added).

26

48

Id., Col. 4:4-13 (emphasis added).

27

49

28

See Col. 4:7-11 (“Conveniently, hose 4 is longer than required for connecting to fitting 53, and is
fitted on its free end with a fast-fit, e.g. lever-operated, coupling 58.”).
16
Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

corresponding structure. 50 That similar types of connectors can be used goes to the issue of

2

“equivalents” to the claimed structure, not to its inclusion in the first instance. SSI further points

3

out that TEK previously included “associated fittings” in its proposed claim construction.

4

SSI is correct that “under § 112 every structure disclosed in the specification and its

5

equivalents should be considered.” 51 But a structure disclosed in the specification is a

6

“corresponding” structure “only if the specification or prosecution history clearly links or

7

associates that structure to the function recited in the claim.” 52 Here, the defined function of

8

connecting means is connecting the container to the compressor assembly and to an inflatable

9

article for repair or inflation. Because the connection to the inflatable article includes both repair

United States District Court
For the Northern District of California

10

and inflation, the fast-fit, e.g., lever-operated coupling described in the specification is clearly

11

linked to the function of connecting the hose to the inflatable article. As TEK points out, however,

12

the fast-fit coupling is identified in the best mode section of the specification, and “lever-operated”

13

is provided only as an example. The specification corresponding to Figure 7 describes a second

14

embodiment in which there remains a connecting means between the container, compressor

15

assembly, and inflatable article, but no particular fitting type is specified. Yet the unspecified

16

fitting is clearly linked to the connecting means function. 53 The court therefore will construe

17

“connecting means” to have encompass two corresponding structures: (1) a first hose connecting

18

the container to the compressor assembly and fitted in its free end (i.e., opposite the end connected

19

to the compressor) with a fast-fit, e.g., lever operated, coupling, and a second hose connecting the

20

container to a valve of the inflatable article; and (2) a first hose connecting the dispenser unit to the

21

compressor assembly with a fitting, and a second hose connecting the container assembly to the

22

inflatable article.

23
24
50

25

See Docket No. 28 at 11-12 (SSI’s Responsive Claim Construction Br.) (citing Altiris, Inc. v.
Symantec Corp., 318 F.3d 1363, 1377 (Fed. Cir. 2003)).

26

51

Altiris, Inc., 318 F.3d at 1377.

27

52

Id. at 1375 (quoting B. Braun Med. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed.Cir.1997)).

28

53

See ‘110 Patent, Col. 5:10-16; 5:24-29.
17

Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1
2

2.

3
4

7
8
9

United States District Court
For the Northern District of California

10
11

TEK contends that the claim term should be given its plain meaning as would be
understood not only by one of ordinary skill in the art but also by a lay person. The seat for a
container of liquid is shown in Figures 1, 2 and 4 and is described consistently in the specification
as being contained in the outer casing. For example, the Disclosure of Invention states: “[T]he kit
… being characterized by comprising an outer casing housing said compressor assembly and
defining a seat for the container of sealing liquid….” 54 In addition, the best mode section describes
the seat within the housing as follows:

12

Casing 6 is substantially parallelpiped-shaped and, at one longitudinal end, defines a seat 7
for housing container 3 upside down. More specifically, seat 7 is bounded laterally by a
substantially semicylindrical end wall 10 of casing 6, and at the bottom by a circular base
14 projecting from the end wall 10. 55

13
14

SSI responds that the plain meaning fails to capture a limitation that is made clear by the

15
16
17
18
19
20
21

intrinsic record – that when the container is housed in the seat, it is maintained “functionally
connected” to the compressor assembly. For example, claim 1 states in part that “the container,
when housed in said seat (7), is maintained functionally connected to said compressor assembly
(2).” 56 In addition, in the Background of the Art, the patentee distinguishes the proposed kit from
other prior art tire repair kits by noting that they were not functionally connected to the compressor
when housed in the casing and required connection of the separate parts before use. 57
SSI’s position, however, is based on an incomplete reading of the claim language. The

22
23
24

Plain and ordinary meaning.

Claims 1-5, 11-15, and 21-25

5
6

CONSTRUCTION

TERM
“an outer casing … defining a seat for
the container of sealing liquid.”

reference in claim 1 to the container, when housed in the seat, being “maintained functionally
connected” to the compressor assembly is itself part of a longer chain in which the claim identifies

25

54

‘110 Patent, Col. 2:9-14.

26

55

Id., Col. 2:52-56.

27

56

Id., Claim 1, Col. 5:51-55.

28

57

Id., Col. 1:52-54.
18

Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

“container connecting means (4, 40) for stably connecting said container to said compressor

2

assembly” and the means by which the container, when housed in the seat, is maintained

3

functionally connected. It therefore would be improper to import this function into the definition of

4

what in the patent is a structure only. The same is true for the prior art distinction made by the

5

patentee, where the container and the compressor must be connected before use. The claim term

6

shall be given its plain and ordinary meaning.

7
8

3.

9

United States District Court
For the Northern District of California

10

13
14
15
16
17
18
19
20

23
24
25

proposed construction, adding “easily” to indicate that the container is “capable of being easily
removed from its seat, i.e., without having to disassemble any part of the tire repair kit to remove it
from its seat,” is necessary to enforce a distinction that the patentee made over prior art. The
claimed invention explains that the dispenser unit is detachably connected to the container and that
the container includes an integral valve to ensure the container is closed fluid tight when detached
from the kit. 58 SSI argues that TEK cannot now construe the claims in a manner that eliminates this
distinction. The parties also dispute whether a second embodiment in the patent contradicts SSI’s
proposed limitation by teaching removal of the dispenser unit from the kit along with the container,
rather than removal of the container from the seat without disassembly of any part of the kit. 59
The court finds that “said container being housed removably in said seat” requires no
further construction. The prior art distinction based on removability is not lost in the plain
meaning. Nothing in the specification or prosecution history uses the word “easily,” although a
person of skill in the art might understand “removable” to indicate that the container may be
removed requiring some effort less than disassembly. The section of the specification that provides

26
58

Id., Col. 2:57-63.

59

See id., Col. 5:1-6.

27
28

Plain and ordinary meaning.

TEK contends that the claim term should be given its plain meaning. SSI contends that its

21
22

CONSTRUCTION

Claims 1-5, 11-15, and 21-25

11
12

TERM
“said container being housed removably
in said seat”

19
Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

that the container “is ready for use at all times, i.e. fitted permanently to [the] kit” such that the

2

dispenser unit “is preferably detachable” from the casing and “carried by” the container similarly

3

does not shed light on the ease or difficulty of removing the container from the housing. Rather,

4

that description merely explains that the container with its integrated valve device constitutes an

5

independent sealed unit regardless of whether or not it is connected to the dispenser, and that the

6

dispenser unit may be detached from the casing and carried with the container. 60 Regardless of

7

whether the dispenser unit is detachable from the casing, the container is “housed removably” in its

8

seat. The term shall be given its plain and ordinary meaning.

9

United States District Court
For the Northern District of California

10

4.

11

TERM
“container connecting means”
Claims 1-5, 11-15, and 21-25

12

[C]ontainer connecting means is a means plus
function term to be construed pursuant to 35
U.S.C. §112(6).
The function is “to stably and functionally
connect the container to the compressor.”

13
14

The corresponding structures are the hose and
dispenser unit housed inside a recess in the
base of the casing, and equivalents thereof.

15
16

The parties agree that the above claim term is a means-plus-function term subject to 35

17
18

CONSTRUCTION

U.S.C. §112(6). While their proposed functions are similar, they are stated somewhat differently.
The claim language in relevant part states: “… and by comprising container connecting

19
20

means (4,40) for stably connecting said container to said compressor assembly (2), so that the

21

container, when housed in said seat (7), is maintained functionally connected to said compressor

22

assembly (2). 61 TEK contends that the claim term states a dual function: to stably and to

23

functionally connect the container to the compressor assembly. SSI’s proposed construction omits

24

“stably” and includes the limitation “when the container is housed in the seat.” 62 TEK argues that

25
60

Id., Col. 4: 56-58.

61

Id., Col. 5:51-55.

26
27
62

28

SSI’s proposed alternative construction, however, includes the dual language. See Docket No.
28, n. 5 (“Alternatively, SSI proposes that the claimed function is ‘to stably connect the container
20
Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

the additional clause adds nothing to the function to be performed since the claim already recites

2

that the “container (3) [is] housed removably in said seat (7).”

3

Because the claim language “ties both functions to the same means-plus-function element”

4

– “stably” and “functionally” – it is appropriate that “container connecting means” be construed to

5

include both. 63 The court further agrees with TEK that the additional language is not necessary to

6

clarify the function of the container connecting means because a person skilled in the art would

7

understand that the function as it appears in the context of the entire claim.

8

The parties also disagree whether the corresponding structure is limited to the hose and the

9

dispenser unit or further includes the structure that houses the dispenser unit. TEK argues that the

United States District Court
For the Northern District of California

10

structure for holding the dispenser unit is a separate element that is not part of the container

11

connecting means. SSI responds that the structure for holding the dispenser unit is a structural

12

component which is necessary for performing the claimed function. SSI thus proposes that the

13

corresponding be identified as “a hose (4) and a dispenser unit (40) housed inside a recess in the

14

base of the casing. 64

15

The court agrees with SSI that the structure for housing the dispenser unit is a necessary

16

component for performing the function of container connecting means. As stated in claim 1, the

17

container connecting means performs its function when the container is housed in the seat. A

18

person skilled in the art would understand the specification to disclose the housing for the

19

dispenser unit as a structure that enables the claimed function to perform as described. 65

20
21

to the compressor assembly, so that the container, when housed in the seat, is maintained
functionally connected to said compressor assembly.’”).
63

22
23

See Baran v. Medical Device Technologies, Inc., 616 F.3d 1309, 1317 (Fed. Cir. 2010) (holding
that the claim language recites two types of function, both tied to the same claim element, even
though the placement of one function is before the means-plus-function claim term at issue).
64

24
25

See Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999) (noting
the court may not incorporate structure from the written description beyond that necessary to
perform the claimed function).
65

26
27
28

See Telecordia Technologies, Inc. v. Cisco Systems, Inc., 612 F.3d 1365, 1376 (Fed. Cir. 2010)
(“‘The question is not whether one of skill in the art would be capable of implementing a structure
to perform the function, but whether that person would understand the written description itself to
disclose such a structure.’”) (quoting Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338
(Fed. Cir. 2008)).
21
Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

Specifically, “[tire repair] kit 1 also comprises a dispenser unit 40, which is housed stably but

2

detachably inside a recess 44 in base 16 of casing 6, and is connected detachably to container 3 to

3

fit it, upside down, to casing 6 (FIGS. 1, 5 and 6).” 66 The recessed housing for the dispenser unit

4

thus provides in part a means for the container to connect to the compressor. 67 The corresponding

5

structures will be defined as the hose and dispenser unit housed inside a recess in the base of the

6

casing.

7
8

5.

9

A valve with one input and two outputs.

Claims 1-5, 11-15, and 21-25

10
United States District Court
For the Northern District of California

CONSTRUCTION

TERM
“a three-way valve” 68

TEK contends that the above claim term should be given its plain meaning which is “the

11
12

input of a three-way valve,” a three-way valve being a valve with one input and two outputs. SSI

13

proposes construction of the entire phrase not limited to the input but including the output as well.

14

SSI’s proposed construction also would include language linking the three-way valve to the

15

enabling positions of the selector described in the specification. 69 Alternatively, SSI accepts TEK’s

16

description of a valve with one input and two outputs.

17

It is appropriate to construe the phrase “a three-way valve” rather than solely that pertaining

18

to the valve input, which risks leaving a jury with an incomplete understanding of the structure. As

19

shown diagrammatically in Figure 7 as element 81 and described in the written description, the

20

three-way valve has an input connected to the compressor assembly, an output to the conduit

21

66

22

67

23
24

‘110 Patent, Col. 3:40-43.

See Telecordia Technologies, Inc., 612 F.3d 1365, 1376-77 (Fed. Cir. 2010) (finding that the
written description, as understood by one skilled in the art, adequately disclosed a particular
structure without which the function would not perform as claimed).
68

25

The parties dispute whether the court is to construe “a three-way valve input,” as initially
identified by the parties in the joint claim construction briefing, or “a three-way valve.” The court
agrees with SSI that construction of “a three-way valve” is appropriate, as explained above.

26

69

27
28

SSI’s proposed construction reads in full: “A valve with a first enabling position connecting the
compressor to the container and disconnecting the compressor from the additional hose; and a
second enabling position connecting the compressor to the additional hose and disconnecting it
from the container.”
22
Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

(connected to the container assembly), and an output to the additional hose (to the tire). 70 SSI’s

2

proposed construction conflates the structure of the three-way valve with properties belonging to

3

the selector switch. The position of the selector switch directs the positioning of the valve with

4

respect to the output(s), but does not change the structure of the valve itself. A three-way valve will

5

be construed as a valve with one input and two outputs.

6
6.

7
8
9

United States District Court
For the Northern District of California

10

TERM
“a valve device fitted in a fluid-tight
manner to the opening and having an
inlet connectable to said compressed-air
feed line, and an output for the sealing
liquid”

CONSTRUCTION
One or more valves fitted in a fluid-tight
manner to the opening and having an inlet
connectable to said compressed-air feed line,
and an output for the sealing liquid.

Claims 2-5

11

The parties disagree whether “a valve device” means one or more valves or only a single

12
13

valve. TEK argues that in the field of patents, the indefinite article “a” carries a meaning of “one or

14

more” in open-ended claims. 71 Because the claim for “a valve device” is not specific as to the

15

number of elements and does not indicate a singular limitation, TEK contends that it should be

16
given its plain meaning, or alternatively should be construed to mean “one or more” valve devices.
17
SSI responds that the article “a” should be construed to mean a single valve based on the

18
19

intrinsic record, which fails to disclose any reference to or embodiment using more than a single

20

valve. 72 For example, the claim language refers to a valve device having “an” inlet connectable to

21

said compressed-air feed line and “an” outlet for the sealing liquid. The claim also identifies the

22

valve device by numeral 18, which the patent exclusively and extensively describes as a single

23
24
70

25

See ‘110 Patent, Col. 5:10-31.

71

26
27

See Docket No. 30 at 18-19 (citing KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1357
(Fed. Cir. 2000); Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 (Fed. Cir. 1999); AbTox, Inc.
v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997)).
72

28

See AbTox, Inc., 122 F.3d at 1023 (“[T]he article ‘a’ suggests a single chamber.”).
23

Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1
2

valve. In addition, Claims 3-5 refer to “said” valve device which connotes a single device. The
specification also discloses embodiments using a single valve device. 73

3

The Federal Circuit recently addressed the construction of claim language using the article

4

“a.” In 01 Communique Laboratory, Inc. v. LogMeIn, Inc., the court reiterated the circuit’s “well-

5

established precedent” that “‘[a]s a general rule, the words “a” or “an” in a patent claim carry the

6

meaning of “one or more.”’” 74 The court further explained that exceptions to the general rule are

7
8
9

few and do not extend to the subsequent use of definite articles “the” or “said” when referring back
to the claim term. 75 Unless the claim language, the specification, or the prosecution history

United States District Court
For the Northern District of California

10

“necessitate a departure from the rule,” the term shall retain its non-singular meaning. 76 In

11

LogMeIn, Inc., the court found the use of singular referents such as “its location on the Internet

12

being defined by a static IP address” as well as figures in the specification showing the term in

13
14

question – “the location facility” – to be represented by a single box to be insufficient to overcome
the presumption of plural meaning. 77

15
Here, the patentee similarly has not shown any clear intent to limit the claim to a single

16
17

valve. The showing of a single valve device in the embodiments does not serve as a sufficient basis

18
19
20
73

21
22
23
24

See e.g., ‘110 Patent, Col. 2:64-67 (“Valve device 18 comprises a body 19 having a cylindrical
lateral wall 20, of axis A, inserted in fluid tight manner inside neck 16, and a portion 20a of which
extends beyond neck 16, into vessel 15, and is closed at one end by an end wall 21”); Col. 3, II. 5-9
(“Body 19 of valve device 18 also comprises an inner member 26 defined by a tubular rod 27 of
axis A”); Col. 4, II. 63-64 (“Using a two-way valve device 18 closed stably in the absence of
pressure along the feed line 4”).
74

25

01 Communique Laboratory, Inc. v. LogMeIn, Inc., -- F.3d. --, 2012 WL 3089367, *4 (Fed. Cir.
July 31, 2012) (quoting TiVo, Inc. v. EchoStar Commc'ns Corp., 516 F.3d 1290, 1303
(Fed.Cir.2008)).

26

75

See id. (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)).

27

76

See id.

28

77

See id.
24

Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1
2

to limit the claim to a single valve device. 78 “A valve device” will be construed to mean one or
more.

3

7.

4
5

CONSTRUCTION

TERM
“elastic means”
Claims 4, 14

“[E]lastic means” is subject to 35 U.S.C. §112
(6).
The function of “elastic means” is “to keep a
control member stably in a closed position in
the absence of air pressure and open in
response to air pressure.”

6
7
8

The corresponding structure for the elastic
means is a spring and equivalents thereof.

9

United States District Court
For the Northern District of California

10

The parties agree that the claim term is a means-plus-function term subject to 35 U.S.C.

11

§112 (6). They agree that the elastic means must keep a control member closed in the absence of

12

pressure. The parties further agree that the corresponding structure is a spring and its equivalents.

13

The parties disagree, however, whether for the “elastic means” to function as intended, it must

14

open in response to air pressure and return to a closed position when the air pressure is removed.

15

TEK contends that the function of “elastic means” is set forth in Claims 4 and 14 and does

16

not need modification. Claims 4 and 14 are identical except for reference to their base claims.

17

Claim 4 states:
4. A kit as claimed in claim 3, characterized in that said valve device (18) comprises elastic
means (31) for keeping said control member (30) stably in said closed position in the
absence of pressure to said inlet (27c). 79

18
19
20

TEK argues that is consistent with the discussion of valve 18 in the written description, which

21

describes valve 18 in pertinent part as follows:

22
Device 18 therefore acts as a two-way, two-position, pneumatic valve. In the closed
position (Fig. 5), the container is sealed; with pressure along the feed line defined by hose
4, device 18 opens automatically to allow compressed air into container 3, and
simultaneous outflow of sealing liquid. 80

23
24
25
78

See id. See also Altiris, Inc., 318 F.3d at 1373.

79

‘110 Patent, Claim 4, Col. 6:11-14 (emphasis added).

80

Id., Col. 4:46-50.

26
27
28

25
Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

3

Using a two-way valve device, 18 closed stably in the absence of pressure along the feed
line 4, sealing liquid leakage is prevented, even in abnormal conditions, such as
overpressure in container 3 caused by high temperature inside the boot of a car parked in
the sun. 81

4

SSI’s proposed construction introduces a limitation not found in the specification, that the elastic

5

means must be able to return the control member to its original position upon removal of the air

6

pressure. According to TEK, the condition whereby the elastic means keeps the control member

2

7

closed in the absence of air pressure is met at least from the time the tire repair kit is assembled

8
9

until the time as it is used to repair a tire. The control member may or may not be forced to return

United States District Court
For the Northern District of California

10

to its original position, depending on the overall design of valve 18, but the claims nevertheless do

11

not require it one way or the other.

12
13
14
15

SSI responds that TEK’s construction ignores the plain meaning of the term and its own
summary of the invention, in which TEK explains that “prior to the introduction of compressed air
into valve 18, interior element 30 is held in a closed position by the elastic means, spring 31,” but
when compressed air is fed into the valve, “spring 31 compresses, and air flows into container 3.” 82

16
17

Similarly, the specification describes the action by which pressure along the feed line causes device

18

18 to “open[] automatically to allow compressed air into [the] container, and simultaneous outflow

19

of sealing liquid.” SSI thus contends that the specification supports a definition of the “elastic

20

means” that keeps the control member stably closed in the absence of air pressure, “open in the

21

response to air pressure, and able to return to its original position upon removal of the air

22

pressure.”

23
The court agrees with SSI but only in part. That the corresponding function of “elastic
24
25

means” is to respond both to the absence of air pressure (by maintaining a closed position) and to

26
81

Id., Col. 4: 63-67.

82

See Docket No. 25 at 30 (TEK’s Opening Claim Construction Br.).

27
28

26
Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

the presence of air pressure (by opening) is inherent in the meaning of the claim term and is

2

supported by the written description. The relevant inquiry is whether “elastic” is itself a functional

3

term or merely describes a characteristic the structure is capable of performing. 83 Like the term

4

“release” in Baran v. Medical Device Technologies, Inc., “elastic” is not an “idle description.” 84

5

“Elastic” implies a function capable of changing or deforming in response to pressure. TEK’s

6

proposed construction ignores this meaning of “elastic;” for example, a non-elastic means also

7
8
9

could “keep a control member stably in a closed position in the absence of air pressure.” The
elastic means, however, functions to keep the control member closed in the absence of air pressure

United States District Court
For the Northern District of California

10

and, by definition, to open in response to air pressure. 85 The written description supports this

11

construction wherein the function of the elastic means is to keep the control member in a closed

12

position until compressed air is fed to the valve, and to open in response to that air. TEK is correct,

13
14

however, that nothing in the claim language or even the intrinsic record requires the elastic means
also be “able to return to its original position upon removal of the air pressure.” This additional

15
16
17

clause suggests a function that the structure may indeed be capable of performing in a working
embodiment or even in a working device, but which is not present in the claim. 86

18
8.

19
20
21

CONSTRUCTION

TERM
“conduits connecting the container to
the compressor assembly and to an
inflatable article for repair or inflation”

83

See Baran, 616 F.3d at 1317.

84

Hoses and associated fittings connecting the
container to the compressor assembly and to an
inflatable article for repair or inflation.

See id.

22
23
85

24
25
26
27
28

Cf. JVW Enter., Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 31 (Fed. Cir. 2005) (holding
that the district court erred in construing the claim term for a “means for lockably receiving a video
game controller in fixed position” to include the function of also “unlocking” or “releasing” the
controller).
86

See id. (“[A] court errs ‘by importing the functions of a working device into the[ ] specific
claims, rather than reading the claims for their meaning independent of any working
embodiment.’”) (quoting Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1303 (Fed. Cir.
1999)).
27
Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

Claims 26-31

2

9.

“container connecting conduit”

3

A hose and associated fittings for connecting
the container to the compressor assembly.

Claims 26-31
4
A claim format using “means” creates a presumption that 35 U.S.C. §112(6) applies; the

5
6

absence of “means” in a claim creates a countervailing presumption that §112(6) does not apply. 87

7

The presumption that §112(6) does not apply can be rebutted by evidence intrinsic to the patent or

8

by relevant extrinsic evidence. 88 There are two ways in which the intrinsic evidence can serve to

9

rebut this presumption: either the claim term “fails to ‘recite sufficiently definite structure’ or else

United States District Court
For the Northern District of California

10

recites a ‘function without reciting sufficient structure for performing that function.’” 89 In

11
12
13

determining whether a claim term has sufficient structure to maintain the presumption, the court
examines whether the term has an understood meaning in the art. 90
TEK contends that the claim term sufficiently identifies “conduits” as the structural element

14
15

and further argues that the phrase is readily understood without further construction. TEK finds

16

support in the prosecution history, wherein original dependent claim 10, noted to be allowable if

17
18

amended to incorporate the features on which it depended, was rewritten to avoid means-for
language and the limitations of 35 U.S.C. §112(6). 91

19
SSI responds that both claim terms fail to cite sufficient structures and thereby rebut the

20
21
22
23

presumption that 35 U.S.C. §112(6) does not apply. SSI points out that the claim language is for all
87

See Personalized Media Communications, LLC v. International Trade Commission, 161 F.3d
696, 703 (Fed. Cir. 1999).
88

24

Id. at 704.

89

25

CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002) (quoting Watts v.
XL Systems, Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).

26

90

27

91

28

See id.

See Docket No. 26, Ex. C at 10 (“New claim 26 is similar to claim 10 but defines the
connections in structural terms rather than ‘means for’ language. It is submitted that it is patentable
for the same reasons.”).
28
Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

purposes identical to the functional language of “container connecting means” used in claim 1,

2

except “conduits” is substituted for “connecting means for.” 92 SSI argues that TEK’s claim term

3

cannot be construed to cover every way or means to perform the function of connecting the

4

container to the compressor assembly and to an inflatable article for repair or inflation – as might

5

be suggested by the broader term “conduit” – in light of the limited disclosure in the specification.

6

SSI also argues that TEK’s reliance on the prosecution history is misplaced. While the inventor

7
8
9

United States District Court
For the Northern District of California

10

sought to avoid the limitations of 35 U.S.C. §112(6), he represented to the examiner that they were
“patentable for the same reasons” as the allowed claims. SSI contends that TEK should not be
permitted now to change the claim scope.

11

With respect to the form of the claim terms at issue, the court finds that 35 U.S.C. §112(6)

12

does not apply. Both claims lack “means-for” language and presumptively do not fall within

13

paragraph 6 of §112. 93 “Conduit” is a noun that describes a general class of structures sufficient to

14

avoid construction under 35 U.S.C. §112(6). 94 The court finds that “conduit” is not a generic term

15
16

along the lines of “mechanism,” “means,” “element,” or “device,” 95 but recites a structure that

17

would be understood by one skilled in the art and in light of the claim language. The prosecution

18

history further establishes that the language in the original claims was rewritten to avoid means-for

19

language. It is nevertheless appropriate to construe these terms, given the broad range of structures

20

that “conduit” may be understood to incorporate and in light of the prosecution history. The terms

21

92

22
23

Compare ‘110 Patent, Claim 1 (“… and by comprising container connecting means for stably
connecting said container to said compressor assembly”) with Claim 26 (“… conduits connecting
the container to the compressor assembly) and Claim 26 (“… and additionally comprising a
container connecting conduit connecting said container to said compressor assembly”).
93

24

See Personalized Media Communications, LLC, 161 F.3d at 703.

94

25
26

See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (citing
examples of nouns derived from their functions that are used to designate categories of structure
including “clamp” and “container” and “filter” and “screwdriver” and “brake” and “lock”).
95

27
28

See Mass. Inst. of Tech. and Elec. For Imaging, Inc. v. Abascus Software, 462 F.3d 1344, 1354
(Fed. Cir. 2006) (differentiating between more generic terms and those reciting sufficient structure,
such as “detector”).
29
Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

will be construed respectively to mean “hoses and associated fittings connecting the container to

2

the compressor assembly and to an inflatable article for repair or inflation” and “a hose and

3

associated fittings for connecting the container to the compressor assembly.”

4
10. TERM
“said valve device”

5
6

CONSTRUCTION
Plain and ordinary meaning.

Claims 29 and 30

7

Dependent claims 29 and 30 refer to claim 26 “wherein said valve device comprises at least

8

one control member movable, in response to pressurization of said compressed-air feed line…”

9

“[S]aid valve device,” however, lacks an antecedent basis in claim 26. SSI contends that the lack of

United States District Court
For the Northern District of California

10

antecedent basis renders the term indefinite. SSI offers no alternative construction. TEK responds

11

that the lack of an antecedent basis is not dispositive if despite the absence of explicit antecedent

12

basis, “‘the scope of the claim would be reasonably ascertainable by those skilled in the art.’” 96

13

TEK contends that even though claim 26 does not recite a valve device, one of ordinary

14

skill in the art can readily determine that “valve device” in claims 29 and 30 is identical to that in

15

dependent claims 13 and 14 (referring back to claim 1). The patentee stated that “New claims 28-

16

30 are dependent on claim 26 and parallel original claims 11, 3 and 4 [sic, 11, 13 and 14] written in

17

structural rather than “means for” language.” 97 TEK therefore concludes that the claim term “said

18

valve device” is not indeterminate and corresponding claims 29 and 30 are not indefinite, because a

19

person skilled in the art would apply the same meaning to “said valve device” in claims 29 and 30

20

as the term appears in other portions of the claims. 98

21
22

SSI responds that the claim is not readily ascertained by those skilled in the art because the
surrounding language of the claim and the recited structures do not point to the omitted structure.

23
96

24

See Energizer Holdings, Inc. v. Intern. Trade Comm’n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006)
(quoting from Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001)).

25

97

26

98

27
28

Docket No. 26, Ex. C at 10.

See Shoenhaus v. Genesco, Inc., 440 F.3d 1354, 1357 (Fed. Cir. 2006) (citing the “‘presumption
that the same terms appearing in different portions of the claims should be given the same meaning
unless it is clear from the specification and prosecution history that the terms have different
meanings at different portions of the claims’”) (quoting Fin Control Sys. Pty., Ltd. v. OAM, Inc.,
265 F.3d 1311, 1318 (Fed. Cir. 2001)).
30
Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER

1

SSI argues that claims 29 and 30 refer only to a different valve, i.e. a three-way valve, that

2

performs a wholly different function, and not to any element in which “said valve” may be viewed

3

as an inherent component. 99 SSI also argues that the prosecution history is insufficient to clarify the

4

antecedent basis, because the patentee identified claims 3 and 4 as parallel to claims 29 and 30.

5

Claims 3 and 4 depend from claim 2, so that the court would have to re-write claim 26 (or claims

6

29 and 30) to add claim 2, which in relevant part reads: “connecting means comprise … and a

7

valve device (18) fitted in a fluid-tight manner to the opening (17) and having an inlet (27c)

8

connectable to said compressed-air feed line (4), and an outlet (29a) for the sealing liquid.” In

9

addition, claim 2 is written in a means-plus-function format that would further convolute any re-

United States District Court
For the Northern District of California

10

writing of claim 26.

11

Claims 3 and 4, identified in the prosecution history, provide an antecedent basis for “said

12

valve device” by referring back to claim 2. A person skilled in the art, reading the claim language,

13

the specification, and looking to the explanation in the prosecution history that claims 28-30

14

parallel original claims 11, 3 and 4, would understand the basis for “said valve device” as “a valve

15

device (18) fitted in a fluid-tight manner to the opening (17) and having an inlet (27c) connectable

16

to said compressed-air feed line (4), and an outlet (29a) for the sealing liquid.” 100 The term is

17

therefore not indefinite and will be given its plain and ordinary meaning, consistent with the

18

construction of “a valve device” set forth above with respect to claim term No. 6.

19

IT IS SO ORDERED.

20

Dated: August 29, 2012

21

_________________________________
PAUL S. GREWAL
United States Magistrate Judge

22
23
24
99

25
26
27
28

Cf. Energizer Holdings, Inc., 435 F.3d at 1370-71 (Fed. Cir. 2006) (finding sufficient antecedent
basis for “said zinc anode” in claim reciting “and an anode gel comprised of zinc as the active
anode component, wherein the cell contains less than 50 parts of mercury per million parts by
weight of the cell and said zinc anode has a gel expansion”); Bose Corp., 274 F.3d at 1359 (finding
sufficient antecedent basis for “an eclipse having a major diameter” in the earlier recitation of “an
eclipse” where “an eclipse” is an inherent component of the later-recited term).
100

See ‘110 Patent, Claim 2, Col. 5:66-6:2.
31

Case No.: C 11-774 PSG
CLAIM CONSTRUCTION ORDER