Wiremold Co v. Thomas & Betts Corp

Filing 102

ORDER on Claim Construction. The parties are ordered to meet and confer and propose a revised schedule for the remaining deadlines in the case by 1/17/2019. Signed by Judge Vanessa L. Bryant on 12/20/2018. (Mattessich, William)

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT

THE WIREMOLD COMPANY
Plaintiff,
v.
THOMAS & BETTS CORPORATION
Defendant.

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No. 3:16-CV-2133 (VLB)

December 20, 2018

MEMORANDUM OF DECISION CONSTRUING CLAIMS
I.

Introduction
Before the Court are the parties’ proposed constructions of the claims at

issue in this patent infringement case filed by Wiremold Co. (“Wiremold” or
“Plaintiff”) against Thomas & Betts Corp. (“T&B,” “Thomas & Betts,” or
“Defendant”) alleging T&B infringed Wiremold’s patents for in-floor electrical
outlet boxes known as “poke-through fittings” – U.S. Patent No. 7,183,503 (“the
‘503 Patent”) and U.S. Patent No. 8,063,317 (“the ‘317 Patent”). Plaintiff seeks
declaratory judgment that Defendant infringes the ‘503 and ‘317 patents, an
injunction against future infringement, money damages with interest, and
attorney fees. [Dkt. No. 55 (Am. Compl.) at 6-7].
The parties filed separate disputed claim terms charts on December 27, 2017.
[Dkt. 73 (Plaintiff’s Disputed Claim Terms Chart); Dkt. 74 (Defendant’s Disputed
Claim Terms Chart)]. The Court adopted Wiremold’s submission as the operative

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claim terms chart. [Dkt. 79]. The court held a Markman hearing on July 24, 2018
[Dkt. 89] and now construes the disputed claims.
II.

Background
A.

The Parties

Plaintiff Wiremold manufactures “poke-through” fittings, which are “in-floor
fitting[s] for providing access to an underfloor electric distribution system.” [Dkt.
55-1, at 1]. These poke-through fittings are designed to be installed in an opening
in a floor to provide access to an outlet below the floor. [Dkt. 82 (Defendant’s
Markman Brief), at 1]. The fittings typically include “intumescent material” which
expands when heated to prevent fire from spreading out of the fitting. [Id.]. Plaintiff
owns both the ‘317 Patent and the ‘503 Patent at issue in this case. [Dkt. 83
(Plaintiff’s Markman Brief), at 1]. Like Plaintiff, Defendant holds “several U.S.
patents directed to poke-through technology.” [Dkt. 82, at 1]. One such patent is
U. S. Patent Number 6,417,446 (“the ‘446 patent” or “Whitehead”). Plaintiff alleges
that Defendant’s products infringe on the ‘317 patent and the ‘503 patent.
B.

The Patents

Both patents at issue pertain to in-floor electrical outlet boxes known as “pokethrough fittings.” The ‘503 Patent was the first, issued on February 27, 2007. [Dkt.
1, ¶ 6]. The inventors intended the ‘503 Patent to improve upon the drawback that
prior art “protrude[d] above the surface of the floor.”

[Dkt. 82, at 6].

The

specification of the patent describes “an in-floor fitting for providing access to an
underfloor electric distribution system.” [Dkt. 1-1 (the ‘503 Patent specification), at
2:3-5]. This system includes “a cover configured to move between open and closed

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positions and being moved to an open position to allow a cable to pass through.”
[Id. at 2:5-8]. The fitting also includes “a receptacle positioned below the cover and
configured to operatively connect to a cable comprising at least one of an electrical
cable and a communication cable, wherein the cover was substantially flush with
a surface of a floor when the cable is operatively connected to the receptacle and
the cover is in the closed position.” [Id. at 2:8-14]. Plaintiff alleges that the ability
to plug in an electrical device while the fitting cover is closed improves upon the
prior art. [Dkt. 83, at 4-5].
The ‘317 Patent was issued on November 22, 2011.

[Dkt. 1, ¶ 7].

The

specification for this patent describes “a recessed electrical outlet box for
mounting in a floor” that includes “a body made at least partially of intumescent
material and configured to retain at least one receptacle and a retention structure
receiving the body. The retention structure is configured to retain the body within
a hole in the floor and contain the expansion of the intumescent material.” [Dkt. 12 (the ‘317 Patent specification), at 2:13-18]. Plaintiff alleges that the ‘317 Patent
improves on prior art because it allows the body of the fitting to extend through
and below the bottom of a concrete floor while retaining fire-retardant material.
[Dkt. 83, at 10-11]. The focus of the ‘317 Patent differs slightly from that of the ‘503
patent, but the form and function of each patent is essentially the same – these are
patents for fittings designed to allow a user to insert an electrical plug into a
building floor while mitigating potential tripping and fire hazards.

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III.

Legal Standard

Resolution of a patent infringement case entails a two-step process, the first of
which is claim construction, and the second of which is a comparison of the
patented device or process to the accused device or process applying the terms
as construed. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998),
abrogated on other grounds; Phil-Insul Corp. v. Airlite Plastics Co., No. 2016-1982,
2017 WL 1374696, at *10 (Fed. Cir. Apr. 17, 2017) (same). Only those terms that are
in controversy need to be construed, and the construction only needs to be to the
extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Science &
Eng’g, Inc., 200 F.3d 795, 804 (Fed. Cir. 1999). Claim construction, furthermore, is
a question of law, and the Court has the exclusive power to construe “the meaning
of the language used in the patent claim.” Markman v. Westview Instruments, Inc.,
52 F.3d 967, 977-79 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996); 3M Innovative Props.
Co. v. Tredegar Corp., 725 F.3d 1315, 1321 (Fed. Cir. 2013). In re Cuozzo Speed
Techs, LLC, 793 F.3d 1268, 1286 (Fed. Cir. 2015) (citing Lighting Ballast Control
LLC for the principle that “[l]egal doctrine in patent law starts with the construction
of the patent claims, for the claims measure the legal rights provided by the
patent.”).
If the Court is unable to determine whether a patent includes “one or more
claims particularly pointing out and distinctly claiming the subject matter which
the inventor or a joint inventor regards as the invention,” the claims are
“indefinite.” See 35 U.S.C. § 112(b); Nautilus, Inc. v. Biosig Instruments, Inc., 134
S. Ct. 2120 (2014). A claim is indefinite when “its claims, read in light of the
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specification delineating the patent, and the prosecution history, fail to inform, with
reasonable certainty, those skilled in the art about the scope of the invention.”
Nautilus, Inc., 134 S. Ct. at 2124. Claims do not survive this standard merely
because “a court can ascribe some meaning to a patent’s claims,” but rather when
they would be understood by “a skilled artisan at the time of the patent
application[.]” Id. at 2130.
The Court is to begin the claim construction analysis with intrinsic evidence.
Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1299-300 (Fed. Cir.
2004). “Intrinsic evidence includes the claim language, the written description that
precedes the claims in the patent specification, and, if in evidence, the prosecution
history.” Chrisha Creations, Ltd. v. Dolgencorp, Inc., 817 F. Supp. 2d 363, 366
(S.D.N.Y. 2011) (citing DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1323 (Fed.
Cir. 2001)). Procedurally, when constructing patent claims, “claim terms are given
their ordinary and customary meaning, as they would be understood by one of
ordinary skill in the art in question at the time of the invention.” 3M Innovative
Props. Co., 725 F.3d at 1321; Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.
Cir. 2005). A person of ordinary skill in the art “is deemed to read the claim term
not only in the context of the particular claim in which the disputed term appears,
but in the context of the entire patent, including the specification.” Phillips, 415
F.3d at 1313. Courts must first rely only on intrinsic evidence to resolve any claim
term ambiguity, and it is impermissible to use extrinsic evidence to “contradict the
established meaning of the claim language.” See DeMarini Sports, 239 F.3d at
1323.
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The Patent Act requires the specification to “contain a written description of the
invention, and of the manner and process of making it and using it, in such full,
clear, concise and exact terms as to enable any person skilled in the art to which it
pertains, or with which it is more nearly connected, to make and use the same.” 35
U.S.C. § 112. A written description generally contains “an abstract of the invention,
a description of the invention’s background, a summary of the invention, patent
drawings, and a detailed description that discusses preferred embodiments of the
invention.” Chrisha Creations, Ltd., 817 F. Supp. 2d at 367; see Dymo Costar Corp.
v. Seiko Instruments USA, Inc., No. 3-00-cv-4 JHC, 2000 WL 502616, at *14 (D. Conn.
Mar. 20, 2000) (listing “all parts of the specification” as “the sections detailing the
background, summary, and preferred embodiment of the invention”) (citing
Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356-57 (Fed. Cir. 1999));
Lamoureux v. AnazaoHealth Corp., 669 F. Supp. 2d 227, 255 (D. Conn. 2009)
(referring to background of the invention of the specification to determine
appropriate claim construction).
“Usually, [the specification] is dispositive; it is the single best guide to the
meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996); Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599
F.3d 1308, 1314 (Fed. Cir. 2010) (quoting Phillips, 415 F.3d at 1314-15) (although
claim construction is dependent on the language of the claims themselves, it
requires reading that language “in view of the specification, of which they are a
part”). “Idiosyncratic language, highly technical terms, or terms coined by the
inventor are best understood by reference to the specification.” 3M Innovative
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Props. Co., 725 F.3d at 1321; see also Thorner v. Sony Comp. Entm’t Am. LLC, 669
F.3d 1362, 1365–67 (Fed. Cir. 2012) (“The words of a claim are generally given their
ordinary and customary meaning as understood by a person of ordinary skill in the
art when read in the context of the specification and prosecution history.”). The
Court may refer to the “descriptive part of the specification” to determine the scope
and meaning where the claims are based on the description. Phillips, 415 F.3d at
1315. The specification may be used to define terms even in the absence of an
“explicit definitional format,” as it may “define claim terms by implication such that
the meaning may be found in or ascertained by a reading of the patent documents.”
Trustees of Columbia Univ. in City of New York, 811 F.3d 1359, 1364 (Fed. Cir. 2016).
“Claim terms are entitled to a ‘heavy presumption’ that they carry their ordinary
and customary meaning to those skilled in the art in light of the claim term’s usage
in the patent specification.” Elbex Video, Ltd. V. Sensormatic Elecs. Corp., 508
F.3d 1366, 1371 (Fed. Cir. 2007) (citing SuperGuide Corp. v. DirecTV Enters. Inc.,
358 F.3d 870, 874 (Fed. Cir. 2004); Omega Eng’g, Inc., v. RayTec Corp., 334 F.3d
1314, 1323 (Fed. Cir. 2003)). The only exceptions to this rule are “1) when a
patentee sets out a definition and acts as his own lexicographer, or 2) when the
patentee disavows the full scope of a claim term either in the specification or during
prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012). “Where claim language “is comprised of commonly used terms;
each is used in common parlance and has no special meaning in the art,” “the plain
and ordinary meaning of the disputed claim language is clear” and need not be

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construed. Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed. Cir.
2015).
Even though the specification informs the Court as to the use of the terms in
the claims, “limitations discussed in the specification may not be read into the
claims.” 3M Innovative Props. Co., 725 F.3d at 1321 (citing Intervet Inc. v. Merial
Ltd., 617 F.3d 1282, 1287 (Fed. Cir. 2010)). References to a preferred embodiment
in a specification are not a claim limitation. Janssen Pharmaceutica N.V. v. Eon
Labs Mfg., Inc., No. CV 01-2322 (NG) (MDG), 2003 WL 25819555, at *9 (E.D.N.Y. Nov.
26, 2003) (citing SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir.
1985) (en banc)). That being said, “the patentee’s choice of preferred embodiments
can shed light on the intended scope of the claims.” Astrazaneca AB, Aktiebolaget
Hassle, KBI-E, Inc. v. Mut. Pharm. Co., Inc., 384 F.3d 1333, 1340 (Fed. Cir. 2004).
Also, the preamble language is not to be interpreted to limit the scope of the
claim when it “merely states the purpose or intended use of an invention.” United
Techs. Corp. v. PerkinElmer, Inc., 537 F. Supp. 2d 392, 397 (D. Conn. 2008) (citing
Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006)). The preamble may
limit the claim, however, when the body of the claim “rel[ies] upon and derive[s]
antecedent basis from the preamble” or if the drafter “chooses to use both the
preamble and the body to define the subject matter of the claimed invention.”
United Techs. Corp, 537 F. Supp. 2d at 397. Determining whether the preamble is
limiting must be based on “the facts of each case in light of the claim as a whole
and the invention described in the patent.” Id. (quoting Eaton Corp. v. Rockwell
Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003)).
8

Other claims from the patent may also be helpful to determine the meaning of a
claim term, because in general claim terms are consistently used throughout the
patent.

Phillips, 415 F.3d at 1314.

An example of this principle is where a

dependent claim adds a limitation, because such a limitation creates the
presumption that the limitation does not exist in the independent claim. Id. at 131415.
The prosecution history is another form of intrinsic evidence relevant to claim
construction, particularly where a court must consider multiple patents in one
family.

Similar to the specification, prosecution history reflects a patentee’s

“attempt[ ] to explain and obtain the patent” and evidences how the PTO and
inventor understood the patent. Phillips, 415 F.3d at 1317. “A statement made
during prosecution of related patents may be properly considered in construing a
term common to those patents, regardless of whether the statement pre- or postdates the issuance of the particular patent at issue.” Teva Pharm. USA, Inc. v.
Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015). It is during prosecution history
where an applicant may “define (lexicography), explain, or disavow claim scope
during prosecution.” Id. The prosecution history is particularly important because
it may demonstrate “whether the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it would otherwise be.”
Phillips, 415 F.3d at 1317. Limitation statements made during prosecution are
relevant to both later and earlier issued patents. See Microsoft Corp., 357 F.3d at
1350 (“[W]e conclude that Multi–Tech’s statements made during the prosecution
of the #627 patent with regard to the scope of its inventions as disclosed in the
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common specification are relevant not only to the #627 and the [later issued] #532
patents, but also to the earlier issued #649 patent.”); Elkay Mfg. Co. v. Ebco Mfg.
Co., 192 F.3d 973, 980 (Fed. Cir. 1999) (“When multiple patents derive from the same
initial application, the prosecution history regarding a claim limitation in any patent
that has issued applies with equal force to subsequently issued patents that
contain the same claim limitation.”).

Once such limitations are in place, “an

applicant cannot recapture claim scope that was surrendered or disclaimed.”
Hakim, 479 F.3d at 1317.
Only where the intrinsic evidence alone cannot resolve claim term ambiguity
may the Court also 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 (citing
Markman, 52 F.3d at 980) (internal quotation marks omitted). Extrinsic evidence,
however, is less significant than intrinsic evidence when “determining the legally
operative meaning of claim language. Id. (internal quotation marks omitted).
Dictionaries, general and technical alike, may be helpful because they
“endeavor to collect the accepted meanings of terms used in various fields of
science and technology.” Phillips, 415 F.3d at 1318. “In some cases, the ordinary
meaning of claim language as understood by a person of skill in the art may be
readily apparent even to lay judges, and claim construction in such cases involves
little more than the application of the widely accepted meaning of commonly
understood words.” Phillips, 415 F.3d at 1314. Where this is the case, “general
purpose dictionaries may be helpful.” Id.
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IV.

Analysis

A. The “Substantially Flush” Term of the ‘503 Patent (Claim 1)
The Court first turns to the disputed language of claim 1 of the ‘503 patent,
which discloses an invention “wherein said cover is substantially flush with a
surface of a floor when the cable is operatively connected to said receptacle and
said cover is in said closed position.” [Dkt. 73-1 (Disputed Claim Terms Chart) at
1]. Plaintiff argues that the term “substantially flush” in Claim 1 is “comprised of
common words used in common parlance without any special meaning in the art,
and therefore the plain and ordinary meaning is clear.” [Dkt. 83, at 15]. Plaintiff
contends that this construction is supported by the prosecution history of the
patent and prior art. [Id. at 15-16].
Defendant argues that the prosecution history of the ‘503 patent contradicts
Plaintiff’s proposed construction. Defendant asserts that the language should be
construed to mean “no portion of the cover is raised above the surface of the
floor when the cable is operatively connected to the receptacle and the cover is in
the closed position; does not encompass a cover or door raised above the floor
as shown in FIG. 2[.]” [Dkt. 82, at 6]. Defendant supports this claim with
evidence that during patent prosecution, Wiremold argued to the patent office
that its invention was distinct from a prior invention because the previous patent
showed doors that “are connected to a floor plate 146 that is mounted above the
surface of the floor . . . thus, when the doors 150 are closed, they are not
substantially flush with the surface of the floor 16, but are raised above the
surface of the floor 16 with the floor plate 146.” [Dkt. 85, at 3-4]. Furthermore,

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Defendant relies on Plaintiff distinguishing Defendant’s ‘446 patent by arguing
that the cover/doors “were not “substantially flush” with the floor because those
components were “raised above the surface of the floor.” [Dkt. 82, at 9].
The Court construes the language “substantially flush” in accordance with its
plain and ordinary meaning – the cover of the poke-through fitting is almost
completely, but not fully, flush with the surface of the floor. Defendant presents
insufficient evidence to overcome the “heavy presumption” that this term carries
its ordinary and customary meaning. SuperGuide Corp., 358 F.3d at 874.
Defendant’s construction would entirely negate the term “substantially” as it is
used in the ‘503 patent, and Defendant presents no evidence that a person of
ordinary skill in the art would have understood the limitation “substantially flush”
to mean “no portion of the cover is raised above the surface of the floor.” [Dkt.
82, at 6]. The Oxford English Dictionary defines the adverb “substantially” as
“[f]ully, amply, to a great extent or degree; considerably; significantly, much.”
Substantially definition, Oxford English Dictionary, 3rd Edition (2012). Courts
have previously construed the term “substantially” to claim an approximation.
See Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1360 (Fed. Cir. 2003); see
also Liquid Dynamics Corp. v. Vaughn Co., Inc., 355 F.3d 1361, 1368 (Fed. Cir.
2004) (“The term ‘substantial’ is a meaningful modifier implying ‘approximate’
rather than ‘perfect.’”).
Defendant cites language in the specification stating that the ‘503 Patent
teaches “a recessed in-floor fitting that remains flush with the floor even when
receiving a cable plug.” [Dkt. 85, at 2 (quoting Dkt. 55-1, at 1:16-18)]. However,

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this language must be read in light of the entire specification and the patent as a
whole. The specification describes that the trim ring at the top of the fitting shall
be mounted “slightly above, or flush with, the top surface of a floor.” [Dkt. 1-1, at
3:67-4:1]. The specification also states that the fitting “does not include any
components that protrude . . . substantially above the top surface of the floor.”
[Id. at 5:26-29]. Furthermore, the background of the invention indicates that
“[c]omponents of many in-floor fittings upwardly protrude above the surface of
the floor when electrical and communications devices within the fittings are
operatively connected . . . Such protrusions may be aesthetically unpleasant and
may also pose tripping hazards.” [Id. at 1:56-64]. The ‘503 Patent clearly uses the
words “substantially flush” to mean “sufficiently flush with the surface of the
floor so as not to pose a tripping hazard,” even when a cord is connected to the
fitting.
Defendant relies chiefly on the prosecution history of the ‘503 Patent to
support its construction, but Wiremold’s statements during prosecution do not
convince the Court that a person of ordinary skill in the art would read the ‘503
Patent in the manner Defendant proposes. The Court first notes that it does not
accept Plaintiff’s apparent contention that Wiremold’s statements during patent
prosecution are relevant only if they amount to a “clear and unmistakable
disavowal” of claim meaning. [Dkt. 83, at 12, 13; Dkt. 89 (Hearing Transcript)
6:17-19 (Plaintiff’s Counsel) (“There’s only a dispute as to whether some portion
of that plain and ordinary meaning was disavowed during the prosecution
history.”)]. Although courts look to prosecution history for clear statements

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disavowing the ordinary meaning of a claim term, it is well settled law that courts
also look to the prosecution history to inform how a person of ordinary skill in the
art would have read the claim term. See Aptalis Pharmatech, Inc. v. Apotex, Inc.,
2018 WL 286123, at *5 (Fed. Cir. 2018)(“[E]ven in the absence of a clear and
unmistakable disavowal, we conclude that the prosecution history can be
evaluated to determine how a person of ordinary skill would understand a given
claim term.”); Fenner Invs., Ltd. V. Cellco Partnership, 778 F.3d 1320, 1323 (Fed.
Cir. 2015) (“Any explanation, elaboration, or qualification presented by the
inventor during patent examination is relevant.”). See also Graham v. John Deere
co., 383 U.S. 1, 33 (1966) (“[A]n invention is construed not only in the light of the
claims, but also with reference to the file wrapper or prosecution history in the
Patent Office.”).
The prosecution history supports Plaintiff’s proposed construction. Critical to
understanding the meaning of Wiremold’s statements and those of the patent
examiner are the characteristics of the prior art referenced by the Patent Office.
First, the patent examiner found a poke-through fitting manufactured by Drane,
et. al. to disclose a cover that was “substantially flush” with the floor when the
cover was slightly raised above the surface of the floor. [Dkt. 83-7, at 2]. This was
in spite of language in the Drane specification describing the fitting as “flush.”
See [Dkt. 83-8, at 2:0035, 5:0058]. This indicates that the inventor of the ‘503
Patent did not understand it to disclose a cover that was not at all raised above
the surface of the floor. Couched positively, the inventor of the ‘503 Patent
understood the patent to disclose a cover that could be slightly above the surface

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of the floor. It further illustrates how the Patent Office interpreted the term
“substantially flush.”
Second, contrary to Defendant’s assertions, Wiremold distinguished the ‘503
Patent from T&B’s “Whitehead” patent not by contending that the Whitehead
patent was raised above the surface of the floor while the ‘503 Patent was not, but
rather that the Whitehead patent did not address whether the cover or door of the
fitting would be substantially flush with the floor. See [Dkt. 82, at 9] (“According
to Wiremold, the cover/doors shown in FIG. 2 of the [Whitehead] Patent were not
‘substantially flush’ with the floor because those components were ‘raised above
the surface of the floor.”) (internal citations omitted). Although Wiremold’s
language, without context, suggests that Wiremold argued to the Patent Office
that Whitehead did not disclose a cover that was “substantially flush,”
Wiremold’s argument was that there was no claim in the Whitehead patent that
the cover was substantially flush when a cable was connected to the fitting and
the cover was closed. Wiremold supported this argument by noting that
Whitehead’s picture showed doors that were raised above the surface of the
floor. Wiremold argued that the patent examiner had no basis to reject the ‘503
Patent because “Whitehead fails to disclose a cover or door that, when in a
closed position, is substantially flush with the floor surface. Rather, the doors
150 of Whitehead are connected to a floor plate 146 that is mounted above the
surface of the floor 16.” [Dkt. 85-24, at 8-9]. The language “fails to disclose a
cover or door that . . . is substantially flush” differs from the language “discloses
a cover or door that is not substantially flush.” Through this statement, the

15

inventor was noting the fact that the ‘446 Patent did not address this limitation at
all, not modifying the meaning of the term “substantially flush” in the ‘503 Patent.
Defendant asks the Court to examine the construction of the term
“substantially vertical faces” in Amhil Enterprises, Ltd. V. Wawa, Inc., 81 F.3d
1554 (Fed. Cir. 1996). This case is inapposite. In Amhil Enterprises, Ltd., the
court found that “the patentee used ‘substantially vertical’ and ‘vertical’
interchangeably,” both in the specification and during patent prosecution, and
that the patentee expressly distinguished its invention with prior art containing
sloping, rather than vertical, faces. Id. at 1559-1562. In contrast, Wiremold uses
the word “flush” without the modifier “substantially” only rarely in the
specification and prosecution history, and the inventor did not concede in
prosecution that the ‘503 Patent includes only embodiments in which no portion
of the cover of the fitting lies above the surface of the floor. Accordingly, the
Court adopts Wiremold’s construction of claim 1 and construes “substantially
flush” in accordance with its plain and ordinary meaning.
B. The “Sidewall” Language of the ‘317 Patent (Claims 55 and 61)
The court next examines the limitation from claims 55 and 61 of the ‘317
Patent. The parties dispute the length of the ‘317 Patent’s sidewall, which
surrounds the fitting in a hole in the floor in which the fitting is installed. Claim
55 recites: “a sidewall extending upwardly from the bottom wall between a
bottom surface of the intumescent body and the bottom surface of the concrete.”
[Dkt. 83-2 (‘317 patent), at 21:36-41]. Claim 61 recites: “the sidewall extending
from at least a bottom surface of the intumescent body to the bottom surface of

16

the concrete floor.” [Dkt. 83-2, at 22:20-26]. The Court construes these
limitations together.
Wiremold proposes that the Court construe the sidewall limitation in
accordance with plain and ordinary meaning as understood at the time of the
invention. Alternatively, Wiremold asks the Court to construe the claims to mean
“the sidewall extends upwardly from the bottom wall of the retention structure in
or through the space separating a bottom surface of the intumescent insert to the
bottom surface of the concrete, and [] the sidewall may extend beyond the bottom
surface of the concrete.” [Dkt. 83, at 24]; See [Dkt. 75-1, at 8-9].
Plaintiff argues that examining the specification shows that the sidewall “can
extend upwardly into the hole in the floor to retain the intumescent body within
the hole.” [Dkt. 83, at 26]. The specification demonstrates an instance where the
patentee used language to state that the sidewall “only extends from the bottom
surface of the intumescent body to the bottom surface of the concrete floor.” [Id.
at 28]. Plaintiff argues that this shows that if the Patentee had wanted to adopt
Thomas and Betts’ construction of claim 55, he could have done so. [Id.].
Plaintiff further argues that “T&B’s proposed construction would exclude almost
every embodiment described in the ‘317 specification except for one “alternative”
embodiment . . . There is no evidence to support such a construction, let alone
“highly persuasive” evidence.” [Dkt. 83, at 30].
Defendant proposes the court construe these claims to mean “the sidewall
does not extend up into the hole in the concrete floor but only extends from the
bottom surface of the intumescent body to the bottom surface of the concrete

17

floor.” [Dkt. 82, at 18]. Claim 55 states that this “sidewall” extends “between a
bottom surface of the intumescent body and the bottom surface of the concrete”
[Dkt. 55-2 at 22:24-26] and claim 61 states that the “sidewall” extends “from at
least a bottom surface of the intumescent body to the bottom surface of the
concrete floor” [Id. at 22:24-26].
Defendant supports this argument with the proposition that claims should be
construed in claim construction the same way they were construed to obtain their
allowance in patent prosecution. See Southwall, 54 F.3d at 1570. Defendant notes
that during prosecution of the application for the ‘317 patent, Wiremold
“distinguished claims 55 and 61 from prior art by arguing that the disputed claim
language reflected ‘[m]inimizing the overlap between the sidewall of the
containment structure and the concrete hole’, which was purportedly
‘advantageous for reducing the thermal transfer of heat through the concrete
hole.’” [Dkt. 82, at 20, citing Ex. D. at WRM000508-509; and WRM000545-57].
Defendant avers that “the plain meaning of this claim language is that the
sidewall (of the retention structure) extends up from the bottom surface of the
intumescent body to the bottom surface of the concrete floor, and no further (i.e.,
the sidewall does not extend up into the hole in the concrete floor).” [Dkt. 82, at
19].
In construing the claims, the court is “‘constrained to follow the language of
the claims and give the claim term its full breadth of ordinary meaning as
understood by persons skilled in the art.’” ACTV, Inc. v. Walt Disney Co., 346
F.3d 1082, 1091 (Fed. Cir. 2003). “In particular, ‘where claims can [be] reasonably

18

interpreted to include a specific embodiment, it is incorrect to construe the
claims to exclude that embodiment, absent provocative evidence on the
contrary.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1311 (Fed.
Cir. 2014). Construction should be ruled out when it “reads out preferred
embodiments and . . . is not supported by ‘highly persuasive’ evidence.” Epos
Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014).
Although dictionaries can be useful tools for constructing claims, the Court is
wary of Plaintiff’s heavy reliance on a dictionary definition for the word “between”
in the discussion of claims 55 and 61. [Dkt. 83, at 25; Dkt. 89, at 83:5-17]. “Heavy
reliance on the dictionary divorced from the intrinsic evidence risks transforming
the meaning of the claim term to the artisan into the meaning of the term in the
abstract, out of its particular context, which is the specification.” Phillips, 415
F.3d at 1321. However, relying primarily on the intrinsic evidence – that is, the
specification – the Court finds that the ‘317 Patent’s sidewall need not terminate
at the bottom surface of the concrete floor.
Language concerning the sidewall elsewhere in the specification supports
Plaintiff’s contention that these claims would not be read by an ordinary artisan
to limit the extension of the sidewall to the bottom surface of the floor. First,
claim 57 addresses the retention structure, of which the sidewall in claim 55 is a
part, noting that the structure “comprises a generally circular base and an
annular sidewall extending upwardly from said base.” [Dkt. 83-2, at 22:4-7]. This
discussion of the sidewall addresses a lower bound, but not an upper bound.
Claim 63 contains identical language pertaining to claim 61. [Dkt. 83-2, at 22:30-

19

33]. Second, the description of the invention refers to the sidewall as creating a
“cage” which surrounds the fitting. [Dkt. 83-2, at 5:44-47]. This language states
“the height of the cage can be limited to only span the distance of the bottom of
the body to the lower surface of the concrete floor instead of extending the entire
height of the body.” [Dkt. 83-2 (‘317 Patent) at 6:24-28]. The use of the language
“can be limited” illustrates that the specification contemplates that the sidewall of
the retention structure may in some cases not be limited. Finally, claim 61 (but
not claim 55) states that the sidewall of the retention structure extends from “at
least a bottom surface of the intumescent body to the bottom surface of the
concrete floor.” [Dkt. 1-2, at 22:16-22:26]. The term “at least” indicates that the
sidewall must cover, at a minimum, the distance between the bottom of the body
and the lower surface of the concrete floor. Neither claim 55 nor claim 61 state
that the sidewall extends “only” to the bottom of the concrete floor, or that the
sidewall “terminates” at the bottom of the concrete floor. A person of ordinary
skill in the art would not read these claims to indicate that the sidewall can extend
no further than the bottom surface of the concrete floor.
Defendant’s argument that Plaintiff noted during prosecution that
“[m]inimizing the overlap between the sidewall of the containment structure and
the concrete hole” actually bolsters Plaintiff’s construction. See [Dkt. 85, at 18].
If there was no overlap between the containment structure and the concrete hole
there would be no overlap to minimize. To “minimize” is “to reduce or keep to a
minimum.” Minimize Definition, MERRIAM-WEBSTER, https://www.merriamwebster.com/dictionary/minimize. The fact that Plaintiff referenced “minimizing”

20

an overlap between the sidewall and the concrete hole contemplates that such an
overlap would exist. Plaintiff did not claim during prosecution that the ‘317
Patent would “eliminate” this overlap.
For the foregoing reasons, the Court adopts the following construction for the
disputed language in claims 55 and 61: “the sidewall extends upwardly from the
bottom wall of the retention structure, extending fully through the space
separating a bottom surface of the intumescent insert and the bottom surface of
the concrete floor, terminating at or beyond the bottom surface of the concrete
floor.”
C. The “Operatively Connected” and “Being Moved To Said Closed Position”
Language of the ‘503 Patent (claims 7, 8, and 20 of the ‘503 Patent)
Defendant argues that claims 7, 8, and 20 of the ‘503 Patent are indefinite
under 35 U.S.C. § 112(b) because they contain language that does not refer to the
device, but rather refers to actions taken by the user of the device. [Dkt. 82, at 1114]. Defendant refers to language in 3 claims: 1) “operatively connected to said
receptacle” in claim 7; 2) “being moved to said closed position” in claim 8; and 3)
“then being moved to said closed position” in claim 20. See [Dkt. 73-1 (Disputed
Claim Terms Chart) at 2-3].
A claim is indefinite when “its claims, read in light of the specification
delineating the patent, and the prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc.,
134 S. Ct. at 2124. “Definiteness is measured from the viewpoint of a person
skilled in the art at the time the patent was filed.” Id. at 2128. If a claim recites

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both a system and a method of using that system, the claim is indefinite because
it is “unclear whether infringement . . . occurs when one creates a[n infringing]
system, or whether infringement occurs when the user actually uses [the system
in an infringing manner.” MasterMine Software, Inc. v. Microsoft Corporation, 874
F.3d 1307, 1316 (Fed. Cir. 2017) (alterations in original) (quoting UltimatePointer,
L. L. C. v. Nintendo Co., Ltd., 816 F.3d 816, 826 (Fed. Cir. 2016)). However, where
claims “merely use permissible functional language to describe the capabilities
of the claimed system,” they are not indefinite if they can “inform those skilled in
the art about the scope of the invention with reasonable certainty[.]” MasterMine,
874 F.3d at 1316.
Courts analyzing whether claims address both an apparatus and a method
of using the apparatus must “focus on whether the claim language is directed to
user actions rather than system capabilities.” Bayer Pharma. A.G. v. Watson
Labs., Inc., 2014 WL 4955617, at *6 (D. Del. Sept. 30, 2014). Defendant relies on
IPXL Holdings, LLC v. Amazon.com, Inc., in which the Federal Circuit held that a
patent claim that recites “both an apparatus and a method of using that
apparatus” is indefinite. See [Dkt. 82, at 12]; IPXL Holdings, LLC v. Amazon.com,
Inc., 430 F.3d 1377, 1384 (Fed Cir. 2005). Plaintiff argues that the claims do not
recite “method[s] of using the apparatus.”
Plaintiff argues that the claims merely describe capabilities of the device,
and that they are not indefinite because “[w]hile these claims make reference to
user selection, they do not explicitly claim the user’s act of selection, but rather,
claim the system’s capability to receive and respond to user selection.” See [Dkt.

22

84, at 23] (quoting Mastermine Software, Inc. v. Microsoft Corp.¸ 874 F.3d 1307, at
1316 (Fed. Cir. 2017)). Furthermore, Plaintiff requests that the Court defer ruling
on this language until the close of discovery. [Dkt. 83, at 36].
Claim 7 discloses the fitting identified in claim 1, “wherein a plug of an
audio/video (AV) device is operatively connected to said receptacle and is
positioned between said cover and said receptacle, and wherein said closed
cover is configured to be substantially flush with said surface when said AV
device is operatively connected to said receptacle.” [Dkt. 83-1 (‘503 Patent), at
6:37-39]. Claim 8 discloses the fitting identified in claim 1, “being moved to said
closed position” while allowing an electrical cord to remain plugged into the
fitting. [Dkt. 83-1, at 6:42-50]. Claim 20 discloses the fitting identified in claim 16,
allowing for a cable to be plugged in while an access door is open, “then being
moved to said closed position” such that a cable extends through an opening in
the cover and the cover remains substantially flush with the upper surface of the
floor. [Dkt. 83-1, at 8:39-45].
The Court finds no reason to delay construction. The disputed language in
claims 7, 8, and 20 is directed to the invention’s capabilities, not to user actions,
thus constituting permissible “functional language” as described by the Federal
Circuit. See Microprocessor Enhancement Corp. v. Tex. Instruments, Inc. (MEC),
520 F.3d 1367, 1375 (Fed. Cir. 2008); accord MasterMine, 874 F.3d at 1313. The
law requires that the patent describe the scope of invention with “reasonable
certainty.” Nautilus, 134 S.Ct. at 2124. Claims 7, 8 and 20 meet this standard.
Defendant has provided no compelling reason to depart from the ordinary

23

meaning of these terms in construction. An ordinary artisan would not read the
language of Claims 8 and 20 as an attempt to disclose a method of opening and
closing a cover, and the ordinary artisan certainly would not interpret the
language of Claim 7 to disclose the act of plugging a cord into an electrical outlet.
Therefore, the Court construes these terms in accordance with their plain,
ordinary, and customary meaning.
D. The “Outlet Box” Language of the ‘317 Patent (Claims 4, 24, and 31)
The disputed language of claims 4, 24, and 31 concerns the use of the term
“Outlet Box.” Claims 4 and 31 disclose a structure for the fitting which includes a
base that “prevents the expansion of said intumescent material downward out of
said outlet box or into the hole.” [Dkt. 83-1, at 18:13-16; 20:5-8]. Claim 24
discloses the same structure and base, which “prevents the expansion of said
intumescent material downward out of said outlet box.” [Dkt. 83-2, at 19:32-35].
Defendant argues that these claims are indefinite because they use
language referring to an antecedent which is undefined. Defendant alleges that
the claims do not define the invention with reasonable certainty because they
refer to “said outlet box” without previously defining the term “outlet box.” [Dkt.
No. 82, at 16]. Plaintiff argues that that the patentee inadvertently failed to correct
three instances of the word “outlet box” when amending the ‘317 Patent to refer
to a “poke-through fitting” rather than a “recessed electrical outlet box.” [Dkt. 83,
at 39]. Plaintiff asks the Court to correct this “obvious clerical error.” [Dkt. 83, at
41].

24

A claim can be indefinite “if a term does not have proper antecedent basis
where such basis is not otherwise present by implication or the meaning is not
reasonably ascertainable.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d
1244, 1249 (Fed. Cir. 2008). If the ambiguity in a claim stems from a clerical error,
the district court may correct the error where “(1) the correction is not subject to
reasonable debate based on consideration of the claim language and the
specification and (2) the prosecution history does not suggest a different
interpretation of the claims.” Novo Industries., L.P. v. Micro Molds Corp., 350 f.3d
1348, 1357 (Fed. Cir. 2003). Courts “may not redraft claims, whether to make
them operable or to sustain their validity.” Chef Amer., 358 F.3d at 1374. Judicial
correction is only proper if it “does not require guesswork and is not a
substantive correction to the claims.” Image Processing Techs., LLC v. Samsung
Elecs. Co.¸ No. 2:16-CV-505, 2017 WL 2672616, at *31 (E.D. Tex. June 21, 2017).
Judicial correction is only applicable if the competing “interpretations would
result in the same claim scope.” CBT Flint Partners, LLC, 654 F.3d at 1259 (Fed.
Cir. 2011).
Although the parties devote significant briefing space to arguments for or
against judicial correction of claims 4, 24, and 31, the Court need not decide
whether the standard for correction is met because the language of the claims,
read in light of the specification, already provides reasonable certainty as to the
scope of the invention. Therefore, the Court is able to construe the term “outlet
box” without correcting the language of the patent. The specification describes
the invention as follows:

25

FIG. 1 illustrates a top isometric view of a recessed in-floor fitting or outlet
box positioned in a floor slab according to an embodiment of the present
invention. By way of example only, the outlet box is a poke-through fitting.
[Dkt. 83-2, at 4:19-22].
This language indicates that a poke through fitting is a type of outlet box. A
person of ordinary skill in the art “is deemed to read the claim term not only in
the context of the particular claim in which the disputed term appears, but in the
context of the entire patent, including the specification.” Phillips, 415 F.3d at
1313. A person of ordinary skill in the art, reading the claims in light of the entire
specification, would understand that references to “said outlet box” immediately
after “said poke-through fitting” refer to the poke-through fitting addressed in the
relevant claim. Furthermore, the terms “outlet” and “box” are used in common
parlance. Even absent the description’s statement that the poke-through fitting is
a type of outlet box, a person of ordinary skill would understand the antecedent
basis for the term “said outlet box” to be the “poke-through fitting” disclosed in
the claims referenced in claims 4, 24, and 31 and throughout the preamble and
the specification.
The patent prosecution history does not contradict this construction. The
Court finds no support for Defendant’s argument that Plaintiff distinguished
poke-through fittings from outlet boxes during prosecution. In its opposition
claim construction brief, Defendant cites to the inventor’s response to the patent
examiner in 2010 which distinguishes the ‘317 Patent’s poke-through fitting from
a prior patent, known as “Dinh,” which disclosed a “raceway fitting.” See [Dkt.
85, at 23 (citing Dkt. 82-4, at 137-46)]. This interpretation of the statements is
unpersuasive. It is clear that the inventor does not distinguish the ‘317 Patent
26

from Dinh on the grounds that Dinh discloses an “outlet box” and the ‘317 Patent
discloses a “poke-through fitting.” Instead, the inventor distinguishes a “pokethrough” fitting from a “raceway fitting.” Unlike poke-through fittings, which are
installed by drilling a hole in a floor and installing the fitting in the hole, raceway
fittings involve ductwork installed underneath the floor and connecting to outlets
on the surface of the floor. [Dkt. 82-4, at 138]. The inventor refers to the Dinh
patent as disclosing a “floor box,” but does not use the term “outlet box” and
does not distinguish outlet boxes from poke-through fittings. See, e.g., [Dkt. 824, at 141].
The inventor modified the ‘317 Patent in a brief filed with the PTO in 2010.
[Dkt. 83-22 (Response to Patent Office Action, February 18, 2010)]. The inventor
states the reason for changing the term, which reason was to distinguish his
poke-through fitting from a prior patent disclosing a raceway fitting. [Id. at 16].
To accomplish this goal, the inventor replaced references to a “recessed
electrical outlet box” with references to a “poke-through fitting.” See [Dkt. 82-4,
at 125-31]. This language removes ambiguity that could cause conflict with the
Dinh patent, as the meaning of the term “recessed electrical outlet box,”
interpreting these terms in accordance with their usage in common parlance,
could also apply to Dinh’s raceway fitting.
As defendant offers no alternative construction, the court construes these
terms in accordance with their plain and ordinary meaning.

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E. The “Into the Hole” Language of the ‘317 Patent (claims 4 and 31)
In addition to the challenge of indefiniteness due to the “outlet box” language
of claims 4, 24, and 31, Defendant alleges that claims 4 and 31 are indefinite due
to their disclosure of a retention structure including a base which prevents
expansion of intumescent material “into the hole.” “Intumescent material” is a
type of material that expands when heated, creating a seal in the poke-through
fitting to prevent fire from spreading. See [Dkt. 83-2, at 1:24-3:5]. Claims 4 and 31
read:
The poke through fitting of claim [1 or 29], wherein said retention structure
includes a base that prevents the expansion of said intumescent material
downward out of said outlet box or into the hole.
[Dkt. 83-2, at 18:12-16, 20:5-9].
Defendant argues that Claims 4 and 31 are indefinite because they “recite that
the claimed base ‘prevents the expansion of said intumescent material . . . into
the hole.’” [Dkt. 82, at 17 (citing Dkt. 55-2 at 18:14-16, 20:6-8)]. Defendant alleges
that this language cannot be squared with the remaining language of claims 1, 4,
29, and 31, which explains that the claimed ‘poke through fitting’ . . . is ‘mount[ed]
in [the] hole that extends through a concrete floor.’” [Dkt. 82, at 17]. Defendant
states: “[i]f the intumescent material of the poke through fitting is already
mounted in the hole, as required by independent claims 1 and [29], there is no
possible way for a base to ‘prevent[] the expansion of said intumescent material .
. . into the hole.’” Id. Plaintiff argues that nothing in the claim language prevents
the poke through fitting from being mounted in the hole in a way that would make

28

it a “physical impossibility” for the base of the retention structure to prevent
expansion of the intumescent material downward into the hole. [Dkt. 84, at 39].
Where inconsistent claim limitations render the claims “a physical
impossibility,” those claims are indefinite. Tech. Innovations, LLC v.
Amazon.com, Inc., 35 F.Supp.3d 613, 620-21 (D. Del. 2014). See Virtual Solutions,
LLC. V. Microsoft Corp., 925 F.Supp.2d 550, 574 (S.D.N.Y. 2013) (finding a claim
indefinite when it “require[d] that two seeming-identical elements generate one
output, without disclosing their relationship to persons having ordinary skill in
the art.”).
The Court agrees with Plaintiff. Nothing in these claims would lead a person
of ordinary skill in the art to find an internal contradiction. The ‘317 Patent
discloses a fitting that is installed in a hole, but nowhere does it recite that the
fitting, including the retention structure, must fill the entire hole. In fact, the
description of the invention identifies the possibility that there will be space in
the hole below the fitting. The description states:
If the in-floor fitting extends below the slab in which it is positioned, the
intumescent material may expand downward and separate from the fitting and
thus diminish the effectiveness of the intumescent material.
[Dkt. 83-2, 1:67-2:3]. This language explicitly contemplates that there may be
some space below the fitting in the hole in which the fitting is mounted.
Therefore, the claims are not indefinite, and the Court construes them in
accordance with their plain and ordinary meaning.

29

V.

Conclusion
The Court has considered the parties’ arguments. It is hereby ordered that

the claim terms will be construed as follows:
A.

“Wherein said cover is substantially flush with a surface of a floor
when the cable is operatively connected to said receptacle and said
cover is in said closed position” is defined in accordance with its
plain, ordinary, and customary meaning.

B.

“A sidewall extending upwardly from the bottom wall between a
bottom surface of the intumescent body and the bottom surface of
the concrete” in claims 55 and 61 of the ‘317 Patent means “the
sidewall extends upwardly from the bottom wall of the retention
structure, extending fully through the space separating a bottom
surface of the intumescent insert and the bottom surface of the
concrete floor, terminating at or beyond the bottom surface of the
concrete floor.”

C.

“A plug of an audio/video (AV) device is operatively connected to
said receptacle and is positioned between said cover and said
receptacle” is defined in accordance with its plain, ordinary, and
customary meaning.

D.

“Being moved to said closed position” in claim 8 is defined in
accordance with its plain, ordinary, and customary meaning.

E.

“Then being moved to said closed position” in claim 20 is defined in
accordance with its plain, ordinary, and customary meaning.
30

F.

“Said outlet box” refers to the poke-through fitting identified earlier
in the claims.

G.

“Prevents the expansion of said intumescent material downward out
of said outlet box or into the hole” is defined in accordance with its
plain, ordinary, and customary meaning.

H.

“Prevents the expansion of said intumescent material downward out
of said outlet box” is defined in accordance with its plain, ordinary,
and customary meaning.

The parties are ORDERED to meet and confer and propose an amended
scheduling order for the remaining deadlines in the case in light of the progress
of the case as discussed at the most recent status conference. See [Dkt. 91]. The
parties shall file any proposed amendments to the Scheduling Order [Dkt. 67] and
Amended Scheduling Order [Dkt. 81] within thirty-five (35) days of the date of this
Order.
IT IS SO ORDERED
__________/s/____________
Hon. Vanessa L. Bryant
United States District Judge

Dated at Hartford, Connecticut: December 20, 2018

31