Brandt et al v. Honnecke et al

Filing 144

ORDER on Claim Construction by Judge Raymond P. Moore on 1/12/2018. (cthom, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Raymond P. Moore
Civil Action No. 1:15-cv-02785-RM-NYW
STEVEN LEE BRANDT, an individual,
JAMES CLAY WALTERS, an individual, and
COLORADO BOX COMPANY, INC., a Colorado corporation,
Plaintiffs,
v.
VON HONNECKE, an individual,
CHASE HONNECKE, an individual, and
S & H SHEET METAL, INC., a Colorado corporation,
Defendants.
______________________________________________________________________________
ORDER ON CLAIM CONSTRUCTION
______________________________________________________________________________
This matter is before the Court on the parties’ request for construction of certain disputed
claim terms contained in United States Patent No. 8,999,029 entitled “Furnace Filter Box and
Method of Assembly” (the “’029 Patent”). The matter is now ripe for consideration. Based on
the record, and the applicable statutes, rules, and case law, the Court construes certain claims in
the ’029 Patent as set forth below.
I.

BACKGROUND
The ‘029 Patent concerns a furnace filter box, which is made with various panels (two

sides, front, back, and bottom) and other pieces. The filter box may be shipped disassembled and
its height can be reduced to fit under a furnace. Plaintiffs Steven Brandt and James Walters are
the inventors of the furnace filter box and method of assembly covered by the ’029 Patent. They
filed their patent application on November 2, 2012, and the ’029 Patent was issued April 7, 2015.

They are now the former owners of the ’029 Patent, having transferred their interest in the patent
to the current owner, Plaintiff Colorado Box Company, Inc.
As stated in the ’029 Patent, Plaintiffs’ product is “[a] furnace filter box for mounting
next to an intake air opening in a furnace.” (Abstract.) According to the ’029 Patent, as relevant
to this case, a primary object of the invention is to provide a furnace filter box “that is adaptable
to various sizes and types of air conditioning and heating furnaces.” (Summary of the Invention
(hereafter, “Summary”), col. 1, ll. 33-36.1) Another objective is the furnace filter box can be
“adapted for holding” different size and width of furnace filters. (Summary, col. 1, ll. 44-46.)
On December 22, 2015, Plaintiffs filed suit against Defendants. Plaintiffs’ Second
Amended Complaint (“SAC”) alleges Defendants’ “Return air filter box” infringes “at least”
claims 1, 3, 5, and 17 of the ’029 Patent. (See ECF No. 42.) Plaintiffs assert three claims for
relief: direct patent infringement under 35 U.S.C. § 271(a); inducing infringement under 35
U.S.C. § 271(b); and contributory infringement under 35 U.S.C. §271(c). (ECF No. 42.)
By Scheduling Order in Patent Case entered April 4, 2016 (ECF No. 29), as amended by
Order dated June 28, 2016 (ECF No. 56), Plaintiffs’ Infringement Contentions were due by July
21, 2016; the parties’ Joint Disputed Claim Terms Chart was due by December 8, 2016; and the
parties’ opening Claim Construction Briefs were due by January 13, 2017. After the parties
served or filed such documents, the Court held a claim construction or Markman hearing2 on
April 17, 2017. Thereafter, the Court allowed the parties to submit supplemental briefs. The
parties’ papers and oral arguments raised not only how disputed claim terms should be construed
but also which claim terms in what claims should be construed. In order to address the former,
the Court must first address the latter. The Court addresses both below.

1
2

For reference, column is abbreviated to “col.” and lines to “ll.”
Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).
2

II.

LEGAL STANDARDS
A. Local Patent Rules
As relevant here, D.C.COLO.LPtR 4(b) provides that a party who serves infringement

contentions shall also serve a claim chart for each accused product. That claim chart is required
to identify each claim of each patent in suit that is allegedly infringed by the accused product.
D.C.COLO.LPtR 4(b)(1). Thereafter, the parties are required to file a Joint Disputed Claims
Terms Chart which identifies “the disputed claim terms and phrases and each party’s proposed
construction.” D.C.COLO.LPtR 14. The deadlines for the parties to comply with these rules are
set forth in the Patent Scheduling Order. See D.C.COLO.LPtR 4 & 14.
B. Claim Construction
Determining infringement is a two-step process. First, the claims at issue must be
properly construed to determine their scope and meaning. Then, second, the claims so construed
are compared to the accused device or process. Absolute Software, Inc. v. Stealth Signal, Inc.,
659 F.3d 1121, 1129 (Fed. Cir. 2011). At issue before the Court is the first step, which it
determines as a question of law. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372
(1996).
Intrinsic Evidence. “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent
define the invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). When construing
claim terms, the courts look to, and primarily rely on, intrinsic evidence, which includes the
claims themselves, the specification, and the prosecution history of the patent. Sunovion Pharm.,
Inc. v. Teva Pharm. USA, Inc., 731 F.3d 1271, 1276 (Fed. Cir. 2013). “[T]he words of a claim

3

‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); see also
Sunovion, 731 F.3d at 1276. This is “the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date
of the patent application.” Phillips, 415 F.3d at 1313.
That “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 [also] in the context of the
entire patent, including the specification.” Phillips, 415 F.3d at 1313. This is because the claims
do not stand alone. Instead, “they are part of a fully integrated written instrument,…consisting
principally of a specification that concludes with the claims. For that reason, claims must be
read in view of the specification, of which they are a part.” Phillips, 415 F.3d at 1315 (citation
and quotation marks omitted).
In addition to the words of the claims themselves and the remainder of the specification,
courts should also consider the patent’s prosecution history, if it is in evidence, to construe the
invention. Phillips, 415 F.3d at 1317. The prosecution history, also called the file wrapper,
“consists of the complete record of the proceedings before the PTO [Patent and Trademark
Office] and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d
at 1317. However, as the prosecution history “often lacks the clarity of the specification,” it is
“less useful for claim construction purposes.” Phillips, 415 F.3d at 1317.
Extrinsic Evidence. Courts are also authorized “to rely on extrinsic evidence, which
consists of all evidence external to the patent and prosecution history, including expert and
inventor testimony, dictionaries, and learned treatises.” Phillips, 415 F.3d at 1317 (citation and

4

quotation marks omitted). Such evidence, however, is less significant than intrinsic evidence in
construing disputed claim terms. Phillips, 415 F.3d at 1317.
III.

ANALYSIS
A. The Claims and Claim Terms at Issue
The parties dispute which claims as well as which claim terms and phrases (collectively,

“terms”) are at issue. Defendants contend that claims not alleged in the SAC are not at issue
while Plaintiffs argue that those claim terms disclosed in the Parties’ Chart and Tables (as
hereafter defined) control and Defendants should not be allowed thereafter to present new terms
or modify existing terms. On this record, the Court agrees with Plaintiffs.
The Court starts first with Defendants’ argument that only claims 1, 3, 5, and 17 are at
issue as they contend only those claims are alleged in the SAC. Contrary to Defendants’
argument, the record shows the SAC alleges that “at least” claims 1, 3, 5, and 17 of the ’029
Patent are at issue. Thus, the SAC did not limit the claims to only those claims. Moreover, the
record shows the parties agreed that additional claims are at issue.
Specifically, in accordance with the Patent Local Rules, Plaintiffs served their Initial
Infringement Contentions identifying the claims infringed as claims 1-6, 8-9, 17-18, and 20.
(ECF No. 69-4.) That was followed by the parties’ Joint Disputed Claim Terms Chart (the
“Chart”), again in accordance with the Patent Local Rules. The Chart identified nine claims (16, 8-9, and 17) involving 20 claim terms which the parties contended require construction.3
(ECF No. 63.) In addition, the parties submitted two tables (collectively, the “Tables”) in which
claims 18 and 20 were added as those at issue. (ECF Nos. 63-1, 64.) Thus, based on these

3

Plaintiffs identified nine terms contained in claims 1, 2, 4, 5, 6, 8, and/or 17, while Defendants identified 11 terms
contained in claims 1, 2, 3, 4, 6, 8, 9, and/or 17. (ECF No. 63, page 2.)
As used in this Order, the page numbers referenced are those assigned to the document by the District Court’s
CM/ECF system.
5

papers, the following claims have been jointly identified and agreed as being at issue: claims 16, 8-9, 17-18, and 20. Accordingly, as the SAC did not limit the claims at issue to being 1, 3, 5,
and 17, and the parties jointly agreed to the additional claims, the Court finds that claims 1-6, 89, 17-18, and 20 are at issue.4
Next, the Court addresses which claim terms are at issue. Here, the parties’ Chart and
Tables identified specific terms5 for construction. As Plaintiffs contend, Defendants’ opening
Claim Construction Brief adds at least one new term (“hinged to a top of the front panel” (claim
3)) and modifies existing terms to be construed (e.g., “mounted” instead of “mounted to” (claim
1)). After agreeing to what terms are to be construed, the Court finds Defendants may not
thereafter modify or add to such terms.6 See Howmedica Osteonics Corp. v. Zimmer, Inc., 822
F.3d 1312, 1324-5 (Fed. Cir. 2016) (affirming district court’s discretion in applying local rules to
preclude party from arguing infringement under the doctrine of equivalents). Accordingly, as
necessary, the Court will construe only those claims and terms set forth in the parties’ Chart
and/or Tables.
B. The Construction of the Claim Terms at Issue
Plaintiffs’ positions as to the construction of the various disputed terms are generally
consistent but Defendants’ arguments have substantially vacillated leaving their position
sometimes unclear. For example, in the Tables, Defendants changed their proposed construction
of “right angle flanges” (claims 6, 8, 9) from “protruding edges to attach the rails” to “protruding
edges for fastening the rails.” (Cf. ECF No. 63-1, page 4 with ECF No. 64, page 21.) Similarly,
4

Indeed, Defendants’ opening Claim Construction Brief construes terms in all claims except claim 2 and,
inexplicably, claim 5 (even though it is specifically identified in the SAC). Defendants argue claim 2 is not at issue
as it is not alleged in the SAC; however, Defendants ignore the fact that they also raised claim 2. (Cf. ECF No. 65,
page 18 with ECF No. 63, page 2.)
5
Claims 17-18 and 20 are method claims. In addition to a dispute over terms contained in claim 17, the parties also
dispute whether claims 17-18 and 20 must be performed in sequence.
6
At least not without leave of the court upon motion filed showing sufficient grounds, after conferral with opposing
parties.
6

as discussed below, Defendants’ proposed constructions changed further during the Markman
hearing and, in some instances, Defendants ultimately agreed with Plaintiffs’ proposed
construction of the disputed term. Regardless, the Court has considered all arguments, and
construes the disputed terms as follows.
1. “adapted for mounting” (Claims 1, 17)
Plaintiffs propose the term be construed as “modified and placed for use in combination
with a furnace,” to which Defendants agreed during the Markman hearing. Accordingly, the
Court accepts such construction.7 (ECF No. 63-1, page 1; No. 64, page 1.)
2. “adapted for receiving” (Claims 1, 17)
Plaintiffs propose the term be construed as “modified to accept,” to which Defendants
agreed during the Markman hearing. Accordingly, the Court accepts such construction. (ECF
No. 63-1, page 1; No. 64, page 2.)
3. “attached to/attaching” (Claims 1, 4, 17)
Plaintiffs propose the term be construed as “coupled by joining together,” to which
Defendants agreed during the Markman hearing. Accordingly, the Court accepts such
construction. (ECF No. 63-1, page 1; No. 64, page 3.)
4. “mounted to” (Claim 1)
Claim 1 provides the furnace filter box is comprised of, among other things, “a pair of
horizontal furnace filter rails mounted to an inside of an upper portion of the first and second
side panels….” (Col. 4, ll. 53-54.) Plaintiffs propose the term “mounted to” be construed as

7

The Court recognizes that, in their opening Claim Construction Brief, Plaintiffs proposed “modified for use in
combination with a furnace” to which Defendants agreed in their Reply. (ECF No. 67, page 33; No. 72, page 8.)
Nonetheless, the Court views the parties’ statements at the Markman hearing, subject to the supplemental briefs the
Court allowed, as a final expression of their positions.
7

“position on to” or “positioned onto,”8 as it is allegedly consistent with the use of
mounted/mounting in the specification. Defendants initially proposed the term be construed to
mean “securely placed on.”9 Subsequently, Defendants argued the term to be construed is
“mounted,”10 the position they also took during the Markman hearing. That term, Defendants
assert, should be construed as “set on” or “set upon” – as something other than “attached.”
As stated, the Court will construe those terms set forth in the Chart or Tables and
“mounted” is not such a term. “Mounted to,” however, is such a term; therefore, that is the term
the Court will construe.11
“Mounted to,” in the context of the claim, does not simply refer to the filter rails as being
“positioned on to” (or “onto”) the upper side of the two side panels as Plaintiffs assert. Instead,
such filter rails which are “mounted to” the side panels must have the ability to “hold” the
furnace filter, showing something more than “positioning” is required.12 This construction is
consistent with the use of the term in claim 10 and the specification, also in connection with filter
rails (e.g., col. 1, ll. 51-54; col. 5, ll. 41-43). It is also consistent with the use of the term
“positioned” in the ’029 Patent. In such instances, the word “positioned” refers to the placement
of the object at issue. (See, e.g., col. 1, ll. 7-9 (furnace filter box is “positioned next to an air
intake duct”); col. 2, ll. 31-33 (describing Fig. 6 as illustrating S-lock channels “positioned for
attachment” to the filter box panels).)
On the other end of the spectrum, construing the term as “securely placed on” (as initially
advocated by Defendants) or “firmly or permanently affixed” (as Plaintiffs appeared to argue
8

ECF No. 63-1, page 1; No. 64, page 4; No. 67, page 18.
ECF No. 63-1, page 1; No. 64, page 4.
10
ECF No. 65, pp. 13-14; No. 72, pp. 6-7.
11
The Court acknowledges that consideration of the use of the words “mount” or “mounting” in the ’029 Patent may
nonetheless assist in construing the term at issue.
12
For the same reason, more than “set upon” is required, to the extent Defendants are asserting that “mounted to”
should also be construed as “set upon.”
9

8

during the hearing) seeks too much more than “positioning,” i.e., “mounted to.” Contrary to
Plaintiffs’ contention, the prosecution history does not show support that the filter rails must be
so affixed. (See ECF No. 69-3, pp. 37-46.) According, the Court construes the term to mean
“positioned and held in place on” (“a pair of horizontal furnace filter rails [positioned and held in
place on] an inside of an upper portion of the…side panels”).
5. “adapted for holding” (Claims 1, 17)
Claim 1 provides the furnace filter box is comprised of, among other things, a pair of
furnace filter rails “adapted for holding the furnace filter next to an enlarged open top in the filter
box….” (Col. 4, ll. 55-56.) Claim 17 identifies a method for assembling the furnace filter box,
where the steps include “mounting” a pair of furnace filters which are “adapted for holding the
furnace filter next to an enlarged open top in the filter box….” (Col. 6, ll. 38-39.) Plaintiffs
propose the term “adapted for holding” be construed as “modified to accept,” which is the same
construction for the term “adapted for receiving.” Both terms are found in claims 1 and 17.
Defendants contend that, under the law, the two claim terms should have different constructions;
they propose the term be construed as “designed to retain.” The Court agrees with Defendant in
that it finds the claims and rest of the specification show the two terms have different
constructions. The Court, however, rejects both parties’ construction of the disputed term.
The Court begins with the words of the claims themselves “as an ordinary artisan would
have understood them at the time of the invention.” Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d
1374, 1381 (Fed. Cir. 2016). The disputed claim term – and the agreed upon claim term
“adapted for receiving” – both appear in claims 1 and 17. In both claims, the air intake opening
in the furnace filter box is “adapted for receiving an end of the air intake duct” while the furnace
filter rails are “adapted for holding the furnace filter next to an enlarged open top in the filter

9

box….” When viewed in context, “adapted for receiving” and “adapted for holding” are not the
same or equivalents. As the parties agreed, “adapted for receiving” is “modified to accept.” The
use of “modified to accept” in lieu of “adapted for holding” in the claim term, however, shows
the ‘029 Patent does not support Plaintiffs’ construction. (E.g., claim 1: “the furnace filter rails
[modified to accept] the furnace filter next to an enlarged open top in the filter box….”) Nor
does it support Defendants’ construction (“designed to retain”), especially since a primary
objective of the invention is that the furnace filter box is “adaptable” – i.e., modifiable – to
difference size and types of air conditioning and heating furnaces.
Unless there is evidence to the contrary, under a “basic tenet of claim construction” it is
“presume[d] that different words in a claim have different meanings.” Cormack v. United States,
119 Fed. Cl. 63, 76 (2014); see also CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co.
KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we
must presume that the use of these different terms in the claims connotes different meanings.”)
Plaintiffs fail to present sufficient evidence to overcome this presumption. For example,
Plaintiffs argue the two terms are synonymous because “they are used in the specification when
discussing the furnace filter rails holding or receiving the furnace filter.” (ECF No. 67, page 36
(emphasis added).) That, however, is incorrect. (E.g., Abstract (“filter box is adapted for
receiving a furnace filter…” (emphasis added)); claims 1, 10, 17 (“air intake opening adapted for
receiving an end of the air intake duct” (emphasis added)).) The claims and rest of the
specification show the furnace filter rails are always stated to be “adapted for holding” the
furnace filter(s) “next to” an open top in the filter box. (Abstract; Summary, col. 1, ll. 51-54;
claims 1, 10, 17.) Thus, the intrinsic evidence shows that while the word “adapted” may be used
synonymously in both claim terms, “holding” and “receiving” may not. Instead, it indicates

10

“receiving” is distinct from “holding.” The ’029 Patent as a whole shows “holding” should be
understood to mean keeping the filter in place. See Phillips, 415 F.3d at 1313 (claim term should
be read not only in the context of the particular claim in which the disputed term appears, but
also in the context of the entire patent, including the specification).13
Based on the foregoing, the Court construes the term “adapted for holding” to mean
“modified to keep in place.”
6. “a vertical air intake opening” (Claim 1)
Claim 1 states that the furnace filter box is comprised of “a vertical air intake opening” in
the first side panel of the filter box. (Col. 4, ll. 45-46, 58-59.) Plaintiffs propose the term be
construed as “an opening for allowing air to pass vertically through the furnace filter box and
into the furnace.” Defendants propose (1) the term be taken out as it is not in issue; and (2) that
it be construed as a “cut hole in vertical side sheet.” As Plaintiffs have not withdrawn this claim
term, and Defendants have not shown how or why it is not in issue, the Court will consider the
term at issue and disputed. Based on the record, the Court perceives the dispute is whether that
term relates to the air flow (i.e., vertical air) or to the orientation of the opening (i.e., vertical
opening – an opening in a vertical panel).
Claim 1 describes the orientation of the furnace filter box panels directionally, i.e., as
being comprised of “a vertical front panel” attached to “vertical sides” of two side panels, a
“vertical back panel,” and “a horizontal bottom panel.” It then goes on to state the furnace filter
box is also comprised of “a vertical air intake opening in the first side panel,….”14 Read in
context, the “vertical air intake opening” (emphasis added), like the “vertical sides,” refer to the

13

In only one instance is “adapted for holding” used with something other than filter rails. There, in the Summary,
the claim term is also used with the furnace filter box as “adapted for holding one or more different size and width
of furnace filters….” (Summary, col. 1, ll. 44-47.)
14
This same language appears in claim 10.
11

orientation of the side panel. This is consistent with the use – or non-use – of “vertical” in the
specification as well as with the prosecution history.
Claim 1 is not the only place in the ’029 Patent which describes “an air intake opening”
being cut in one of the panels. In those other places, the term is used without reference to
whether it is a “vertical” air intake opening. (See col. 1, ll. 57-60; col. 3, ll. 1-3, 53-56 (“the air
intake duct opening 36 is cut therein [i.e., a panel]”); claim 17, col. 6, ll. 41-43 (“cutting an air
intake opening in the first side panel”).) But, in those instances, there is also no reference to
whether the panels are vertical or horizontal.
Figure 1, and as described in the Detailed Description of the Preferred Embodiments, also
supports this construction. There, “intake air” (emphasis added) is shown (and stated) as being
received in the filter box and “circulated upwardly” through a furnace filter and then “moves
upwardly into the bottom of the furnace.” (Col. 2, ll. 52-56.) The air is not being described as
moving in a “vertical” direction; instead, in each instance in which “vertical” is used in the ’029
Patent, it is used to describe either the direction of the panels or of the strength ribs in such
panels. Further, where it is the air that is being described or discussed, the term used is “intake
air,” not “air intake.” (Abstract, “a furnace filter…for filtering intake air”; col. 1, ll. 44-47
(furnace filter for improving “filtered intake air”); col. 2, ll. 50-53 (air intake duct is positioned
“for supplying intake air”), ll. 53-56 (“The intake air is shown as arrows 16 [Fig. 1]. The air 16
is received in the filter box…. The intake air 16 then moves upwardly….” (emphasis in
original)); col. 3, ll. 6-12 (once the furnace is ready to be turned “on,” “the intake air 16 is
received through the air intake duct” (emphasis in original)).)
Finally, the prosecution history shows “vertical” relates to the orientation of the opening.
In distinguishing a prior art bag filtration system called “Kearsley,” the inventors amended claim

12

1 to add “vertical” to modify “air intake opening in the first side panel.” There, they stated “the
air intake opening in the first side panel is vertical” and “the Kearsley system does not include a
vertical opening in the first side panel….” (ECF No. 69-3, pages 39, 45.)
Based on the foregoing, the Court construes “a vertical air intake opening” as “a vertical
opening for air intake.”
7. “U shaped” (Claims 2, 6)
Plaintiffs propose the term be construed as “bent to resemble a shape similar to a ‘U’
when viewed in cross-section,” to which Defendants agreed during the Markman hearing.
Accordingly, the Court accepts such construction. (ECF No. 63-1, page 2; No. 64, page 7.)
8. “S-lock channel” (Claim 5)
Plaintiffs propose the term be construed as “a bent channel appearing in shape similar to
an ‘S’ when viewed in cross-section,” to which Defendants agreed during the Markman hearing.
Accordingly, the Court accepts such construction. (ECF No. 63-1, page 2; No. 64, page 8.)
9. “securing” (Claim 8)
Plaintiffs propose the term be construed as “interconnecting.” Defendants, however,
have vacillated on the issue. Initially, Defendants proposed the term be construed as “to fasten,”
but failed to address the term in their opening Claim Construction Brief leading to Plaintiffs’
contention that their construction should, therefore, be accepted. In Defendants’ Reply (ECF No.
72, page 9), however, they argued the term does not mean “interconnecting.” And, during the
Markman hearing, Defendants stated they have no objections to Plaintiffs’ construction as claim
8 is not at issue. Defendants’ position is baffling on several fronts.
First, as stated above, Defendants jointly submitted the Chart and Tables – all of which
included claim 8. Next, Defendants raised claim 8 as being at issue, albeit over a different claim

13

term (“right angle flanges”). Third, it is not the province of Defendants to declare such claim is
not at issue when there is a dispute as to whether it is at issue. Finally, Defendants were given
every opportunity to advocate their position but, ultimately, stated they have no objections.
Accordingly, on this record, the Court finds Defendants do not dispute Plaintiff’s construction
and objections, if any, have been waived. See Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352,
1360 (Fed. Cir. 2004) (defendant waived right to request construction of claim where it never
requested court to construe any terms in claim and never offered a construction of such claim);
Wi-LAN USA, Inc., 830 F.3d at 1385 (federal circuit generally supports district court’s casemanagement authority). The term is, therefore, construed as “interconnecting.”
10. “assembling” (Claim 17)
Plaintiffs propose the term “assembling” be construed as “constructing,” to which
Defendants stated during the Markman hearing they have no objection. Accordingly, the Court
accepts such construction. (ECF No. 63-1, page 2; No. 64, page 10.)
11. “vertical front panel” (Claim 1)
Plaintiffs propose the term “vertical front panel” be construed as follows. The words
“vertical” and “front” be given their plain and ordinary meaning, and the word “panel” be
construed as a “a thin sheet of material.” Defendants agree that “vertical” and “front” have
“generic meanings” and propose the term “panel” be construed as a “solid flat rectangle piece,”
“a flat sheet without a hole or opening,” or a “solid sheet.” The record shows the dispute is
whether a “panel” must be “solid” – that it cannot have a hole in it – as Defendants contend, or
whether there is no such limitation as Plaintiffs contend.
A review of the intrinsic evidence shows no limitation as proffered by Defendants. The
claim term itself, in the context of claim 1, shows no such limitation and, instead, contemplates
that the front panel will be attached to other panels. Similarly, Figure 7 illustrates the attachment
14

of metal screws to the panels when assembling the filter box. Thus, the panels can have a hole
(or holes) in it and still be a “panel.” And, as stated in the specification, these panels are
“typically made of thin sheet metal” but can be made of plastic or similar sheet material. (Col. 2,
ll. 64-67.)
Based on the foregoing, the Court construes the word “panel” to be “a thin sheet of
material.” The words “vertical” and “front” require no construction.
12. “vertical sides” (Claim 1)
Plaintiffs propose “first side” and “second side” be given their plain and ordinary
meaning, to which Defendants agreed during the Markman hearing. (ECF No. 63-1, page 3; No.
64, page 12.)
13. “furnace filter rails” (Claim 1)
Claim 1 states the filter box is comprised of “a pair of horizontal furnace filter rails….”
Plaintiffs propose the term be given its plain and ordinary meaning. Defendants initially
proposed the term be construed as a “pair of bars extending horizontally between supports” (ECF
No. 64, p. 13) but then argued in their opening Claim Construction Brief the term be construed as
“a horizontally extending sheet positioned to hold a furnace filter next to and covering the
enlarged open top.”15 This is the position Defendants maintained during the Markman hearing,
which Defendants conceded describes the use of the filter rails. As the Court understands
Defendants’ argument here, they propose a construction which would define the position of the
rails, i.e., where they are located relative to the filter box. Under such facts and circumstances,
the Court finds the term requires no construction.16

15

There are a number of problems with Defendants’ construction, including that there is nothing in the intrinsic
evidence to support the rails are a “sheet.”
16
Indeed, the Court questions whether Defendants’ argument made during the Markman hearing is, in actuality, an
infringement argument, e.g., whether an accused device infringes if the furnace filter rails are located inside the filter
15

The Court recognizes that “[a] determination that a claim term ‘needs no construction’ or
has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one
‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’
dispute.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir.
2008). But, such is not the case here. Instead, the record shows Defendants’ dispute is not with
the meaning or scope of the term “furnace filter rails.” Accordingly, the Court declines to
construe the term as Defendants request. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 804 (Fed. Cir. 1999) (court construes claim when its meaning or scope is in dispute).
14. “mounted to an inside of an upper portion of the first and second side panels”
(Claim 1)
Plaintiffs propose “mounted to,” “first side,” “second side,” and “panel” be construed as
they have already argued. See III.B.4, 11, 12, above. Defendants propose construing the word
“mounted” but the Court has already rejected allowing the parties to add to the disputed claim
terms in the Chart and Tables. In addition, Defendants’ construction of “set upon the inner
surface of the flat rectangular piece” appears inconsistent with their other proposed
constructions, e.g., essentially, “mounted”/“mounted to” be construed as “set upon” or “securely
placed on.” For the reasons stated above, the Court construes this claim term as stated above in
III.B.4, 11, and 12, above.
15. “enlarged open top” (Claim 1)
Plaintiffs propose the term “enlarged open top” be construed as follows: “enlarged”
means greater in size than the air intake opening, and “open top” be given its plain and ordinary
meaning. Although Defendants initially proposed a different construction, after making a few

box as opposed to at the top of such box. See Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., 815 F.3d
1314, 1319 (Fed. Cir. 2016), cert. denied, 137 S. Ct. 640 (2017) (“[C]ourts should not resolve questions that do not
go to claim scope, but instead go to infringement…or improper attorney argument.” (citations omitted)).
16

comments or observations, Defendants stated they did not think the construction made any
difference as the issue is what is covering the top. Thus, Defendants took no issue with
Plaintiffs’ construction. Accordingly, the Court deems Plaintiffs’ construction to be unopposed
and accepts the same. (ECF No. 63-1, page 3; No. 64, page 15.)
16. “covering open top” (Claim 1)
Claim 1 states the filter box is comprised of furnace filter rails which are “adapted for
holding the furnace filter next to an enlarged open top in the filter box and covering the opening
top.” (Col. 4, ll. 55-57 (emphasis added).) Plaintiffs propose the term “covering open top” be
construed with the term “open top” given its plain and ordinary meaning, and “covering” as
“encompassing the length and width of the open top.” Defendants propose the term be construed
as “protecting or concealing uppermost part” or “positioned to protect or conceal the open top.”
The parties’ dispute here is with the term “covering,” with Defendants arguing the term should
be construed such that “covering” would convey that the filter and rail assembly seals the airflow
between the filter box and furnace.
First, the construction Defendants propose would not convey that which they intend.
Next, nothing in the claim language supports Defendants’ construction. Finally, the description
of the filter box shows “covering” does not mean to “protect” or “seal” the open top of the filter
box. Here, the description refers to the furnace filter as being “properly seated” inside the filter
box and covering the open top. (Col. 3, ll. 6-9.) The air is described as being received in the
filter box and then circulated upwards through the furnace filter and into the bottom of the
furnace. No sealing or protection is expressed or implied by such descriptions. On the contrary,
the language of the claim and specification support Plaintiffs’ construction.

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Accordingly, the Court construes the term “covering open top” with the term “open top”
be given its plain and ordinary meaning, and “covering” as “encompassing the length and width
of the open top.”
17. “U shaped air filter rails” (Claim 2)
Plaintiffs propose the term “U shaped air filter rails” (emphasis added) be construed
consistent with “U shaped” (“bent to resemble a shape similar to a ‘U’ when viewed in crosssection”), to which Defendants do not object. As to “air filter rails,” Plaintiffs assert the words
should be given their plain and ordinary meaning. Although Defendants initially proposed a
construction for such term, ultimately (during the Markman hearing) they stated they do not
object to Plaintiffs’ construction. Accordingly, Plaintiffs’ construction is accepted. (ECF No.
63-1, page 3; No. 64, page 17.)
18. “top of the front panel” (Claim 3)
As to this term, Plaintiffs propose “top” and “front” be given their plain and ordinary
meaning, and (as stated in III.B.11, above) “panel” be construed as “a thin sheet of material.”
During the Markman hearing, Defendants stated they do not have a problem with giving “top”
and “front” their plain and ordinary meaning. This leaves only the word “panel” to be construed,
which the Court has at III.B.11 above.
19. “top panel” (Claim 4)
Plaintiffs propose the word “top” be given its plain and ordinary meaning, to which
Defendants stated in the Markman hearing that they do not object. As for “panel,” the Court has
construed that word at III.B.11 above.

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20. “right angle flanges” (Claims 6, 8, 9)
Plaintiffs propose “right angle flanges” be given their plain and ordinary meaning, to
which Defendants agreed in the Markman hearing. Accordingly, as there is no dispute, this term
requires no construction.
21. Method steps need not be performed in sequence (Claims 17-18, 20)
The parties’ dispute here is whether the method steps are to be performed in sequence.
Plaintiffs assert that the steps recite no order and the specification does not follow the sequence
of the six steps in claim 17. Defendants contend that because the panels snap together, the four
side panels must be assembled first before the bottom panel is attached. But, that is not the issue
Defendants raised, i.e., whether steps “one” and “two” (putting together the two side, front, and
back panels) must be completed before step “three.”17 Instead, Defendants raised whether the
steps in claim 17 must be performed in sequence, i.e., step one, then step two, then step three,
etc.
Generally, “‘[u]nless the steps of a method actually recite an order, the steps are not
ordinarily construed to require one.’” Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed.
Cir. 2003) (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342-43
(Fed. Cir. 2001)). However, “if grammar, logic, the specification, or the prosecution history
require[s] the steps to be performed sequentially, then the claims are so limited.” Apple Inc. v.
Motorola, Inc., 757 F.3d 1286, 1309 (Fed. Cir. 2014), overruled on other grounds by Williamson
v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). To make this determination, courts may
engage in a two-part test. First, the court “look[s] to the claim language to determine if, as a
matter of logic or grammar, [the steps] must be performed in the order written.” Altiris, Inc., 318
17

Claim 17 does not identify the steps as such, i.e., “one,” “two,” “three,” etc. The Court uses this nomenclature
solely for identifying the order in which the steps are listed in claim 17, and not as any indication they must
performed in that order.
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F.3d at 1369. “If not, we next look to the rest of the specification to determine whether it
‘directly or implicitly requires such a narrow construction.’” Altiris, Inc., 318 F.3d at 1370
(emphasis in original) (citing Interactive Gift, 256 F.3d at 1343).
In the case at hand, the intrinsic evidence does not show the method steps must be
performed in the order stated.18 The Court starts with the claim language. There, no order is
recited in claim 17. Further, there is nothing to show the side panels could not be attached to the
back panel (step two) before the front panel is attached to the side panels (step one), i.e., that step
two could not be completed before step one. The language neither grammatically nor logically
requires the bottom panel to be attached after the four panels are put together in any particular
order. Similarly, the claim language neither grammatically nor logically requires the air intake
opening to be cut after the panels are attached or that the furnace filter rails are mounted to the
side panels after all panels are put together (i.e., the completion of steps one, two, and three).
As for the specification, it too neither directly nor implicitly requires a construction that
the method steps of claim 17 be performed in the order written. In the written description of the
preferred embodiments, the following order is indicated:
(i)

the position of the air intake duct is measured and the air intake duct opening is
cut (col. 3, ll. 53-56);

(ii)

the first and second side panels are attached to the front panel, then the back panel
is attached (col. 3, ll. 58-63);

(iii)

the top panel is attached to the side panels (col. 3, ll. 66-67; col. 4, ll. 1-2);

(iv)

the furnace filter door is attached (col. 4., ll. 6-8);

(v)

the bottom panel is attached (col. 4, ll. 16-21); and

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The issue here is not, for example, whether the filter box must be assembled before it may be mounted next to the
intake air opening in the furnace, i.e., that step six must be taken last. If that were the case, the Court may reach a
different conclusion.
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(vi)

the furnace filter rails are attached (col. 4, ll. 22-26).

As in Altiris, Inc., there is no statement that the order is important, no disclaimer of any other
order of steps, and no prosecution history which has been provided to the court indicating a
surrender of any other order of steps. Accordingly, the Court finds the steps in claim 17 are not
required to be performed in the order it is written.
Finally, Defendants initially raised claims 18 and 20 as disputed but presented no
argument concerning these claims. Therefore, the Court deems any dispute over these claims to
be abandoned.
IV.

CONCLUSION
For the foregoing reasons, the Court construes the ’029 Patent as set forth above.
DATED this 12th day of January, 2018.
BY THE COURT:

____________________________________
RAYMOND P. MOORE
United States District Judge

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