Floodbreak, LLC v. Art Metal Industries, LLC et al

Filing 94

ORDER regarding Claim Construction. Signed by Judge Stefan R Underhill on 7/8/2019. (Kaas, E.)

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT

FLOODBREAK, LLC,
Plaintiff,

No. 3:18-cv-503 (SRU)

v.
ART METAL INDUSTRIES, LLC, et al.,
Defendants.
CLAIM CONSTRUCTION RULING
Floodbreak, LLC (“Floodbreak”) filed suit against Art Metal Industries, LLC (“AMI”)
and its principal owner, Kevin F. Biebel,1 for patent infringement of United States Patent No.
9,752,342 (“the ‘342 patent”), pursuant to 35 U.S.C. § 271 et seq. Compl., Doc. No. 1, at ¶ 4.
The ‘342 patent relates to a flood protection apparatus for underground air vents.
Floodbreak and AMI have submitted claim construction arguments concerning three
terms: (1) “stops”, as used in independent claims 1, 22, 23, and 24 of the ‘342 patent, (2)
“profile”, as used in independent claims 1, 22, 23, and 24, and (3) “gravitational rotation”, as
used in independent claims 23 and 24. Floodbreak has generally argued against the need for
claim construction, asserting that the claim language at issue has an ordinary meaning
understood by a person of skill in the art, while AMI has generally argued for more narrow
definitions of the terms at issue.
For the reasons discussed below, I find that that the terms “stops” and “profile” do not
require construction because they each have an ordinary meaning to those skilled in the art. I

1

Throughout the ruling, I refer to AMI and Biebel collectively as “AMI”.

find, however, that the term “gravitational rotation” does not have ordinary meaning to those
skilled in the art, and thus requires construction. I construe that term below.
I.

Background
Floodbreak alleges that AMI directly infringed, and continues to infringe, one or more

claims of the ‘342 patent” by making, using, offering to sell, and selling innovative Mechanical
Closure Devices (“MCDs”), which are covered by the ‘342 patent, and which Floodbreak
therefore owns. Id. at ¶¶ 8–10. MCDs are used in ventilation ducts and serve to block flooding
water from entering underground ventilation passages in the New York City subway system. Id.
at ¶ 10.
Floodbreak alleges that “AMI has copied Floodbreak’s technology and partners with
installers…to enter into contracts with the New York City Transit Authority to supply an MCD
which has been represented as being ‘equal to the specified Flood Break unit.” Id. at ¶ 11.
Floodbreak alleges that AMI continues to make, use, offer to sell, and sell Floodbreak’s MCD
units with full knowledge of infringement of the ‘342 patent. Id. at ¶ 19.
Floodbreak seeks a court order permanently enjoining AMI’s infringing activities. Id. at
7. Floodbreak also seeks money damages as well as costs, expenses, and reasonable attorneys’
fees. Id.
The complaint was filed on March 26, 2018. Doc. No. 1. On May 11, 2018, AMI filed an
answer. Doc. No. 23. After a Rule 16 conference, a Markman claim construction hearing was
scheduled. Doc. No. 28. A joint claim construction statement was filed by the parties on October
19, 2018. Doc. No. 35. A joint appendix of intrinsic evidence was filed by the parties on October
26, 2018. Doc. No. 36. Floodbreak and AMI filed opening claim construction briefs on
November 19, 2018. Doc. Nos. 38 and 39. Both parties filed responses on December 18, 2018.
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Doc. Nos. 41 and 42. Affidavits were filed by both parties on that same day. Doc. Nos. 43, 44,
and 45. I held a hearing on January 8, 2019. Doc. No. 47.
II.

Claim Construction
As a general matter, the claims of a patent define the invention that a patentee is granted

the right to exclude others from making or using, with the specification in a patent serving as a
basic presentation teaching that invention. See, e.g., Innova/Pure Water Inc. v. Safari Water
Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004); Oak Technology Inc. v.
International Trade Commission, 248 F.3d 1316, 1328-29 (Fed. Cir. 2001). Courts construe
claims in order to resolve ambiguities and to assign meaning to claims so that a patentee’s right
to exclude is clearly defined. Liquid Dynamics Corp. v. Vaughan Co., 355 F.3d 1361, 1367 (Fed.
Cir. 2004). Because the claims define an invention, limitations should not be read from the
specification into those claims, but a claim should be read in light of the specification. Comark
Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186–87 (Fed. Cir. 1998). This can be
difficult, because “the distinction between using the specification to interpret the meaning of a
claim and importing limitations from the specification into the claim can be a difficult one to
apply in practice.” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005).
In Phillips, the Federal Circuit discussed, clarified, and re-affirmed principles of claim
construction, providing courts with direction in the manner in which claims should be construed.
First, the claims themselves provide substantial guidance about the meaning of particular claim
terms. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “[T]he context
in which a term is used in the asserted claim can be highly instructive.... [T]he use of a term
within the claim provides a firm basis for construing the term.” Phillips, 415 F.3d at 1314. The
use of a term in one claim can help demonstrate the meaning of that term in another claim, and
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differences among claims can also guide understanding. See Rexnord Corp. v. Laitram Corp.,
274 F.3d 1336, 1342 (Fed. Cir. 2001); Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538
(Fed. Cir. 1991). Notably, when a dependent claim adds a limitation that is not present in the
claim on which it depends, the independent claim is presumed to be free of that limitation.
Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).
Because claims are part of the patent as a whole, “claims must be read in view of the
specification, of which they are a part.” Phillips, 415 F.3d at 1315 (internal quotation marks
omitted) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 979–81 (Fed. Cir. 1995)
(en banc), aff’d, 517 U.S. 370 (1996)). That specification is “highly relevant to the claim
construction analysis ... [and is] the single best guide to the meaning of a disputed term.”
Vitronics, 90 F.3d at 1582. The scope and construction of claims, then, is determined by “giving
claims their broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art.” Phillips, 415 F.3d at 1316 (internal quotation
marks and citation omitted). In other words, the specification may indicate certain outer limits of
a claim’s scope, but that claim may be broader than the embodiments identified and discussed in
a patent’s specification.
Here, as discussed below, the specifications in the ‘342 patent are instructive regarding
the meaning and proper construction of the claim terms “stops” and “profile”. Therefore, I limit
my discussion of those terms to the claims and their specifications, and do not consult the
patents’ prosecution histories or any extrinsic sources, such as dictionaries or trade publications.
For the term “gravitational rotation”, however, the prosecution history must be examined to
reach a determination, as discussed below.

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III.

Discussion
Floodbreak has generally argued against the need for claim construction, asserting that

the claim language at issue has an ordinary meaning understood by a person of skill in the art.
See Phillips, 415 F.3d at 1316 (internal quotation marks and citation omitted). AMI has argued
for a narrower interpretation of each of the disputed terms.
A. Stipulated Terms
The parties have stipulated to a construction of two terms: (1) “one or more panels
mounted…for…rotation downwardly…solely by gravitational impetus on its own weight”, as
used in claim 1; and (2) “one or more panels mounted…for rotation…in gravitational rotation
falling solely under the impetus of its own weight”, as used in claim 22. Joint Disputed Claim
Terms Chart, Doc. No. 35-1, at 2–4. Those stipulated terms are adopted.
B. “Stops”
The first issue is the meaning of the term “stops”, which appears in independent claims 1,
22, 23, and 24. Joint Appendix of Intrinsic Evidence, Doc. No. 36-1, ‘342 Patent.
The Federal Circuit has held that “it will not read unstated limitations into claim
language.” Rambus Inc. v. Infineon Techs AG, 318 F. 3d 1081, 1088 (Fed. Cir. 2003).
Furthermore, “[w]here the plain and ordinary meaning [of a term] is clear, no additional
construction is necessary.” See Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed.
Cir. 2015). In addition, “[u]sually, [the specification] is dispositive; it is the single best guide to
the meaning of a disputed term.” Vitronics, 90 F.3d at 1582.
Here, Floodbreak contends that the term “stops” should be given its ordinary and
customary meaning to a person of ordinary skill in the art, or, if construction is necessary, should
be construed to mean “something that impedes, obstructs or brings [a panel] to a halt”. Joint
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Claim Construction Statement Exhibit A (“Claim Chart”), Doc. No. 35-1, at 2. AMI seeks to
attach a more detailed interpretation and argues that I should construe the term to mean “rails
that extend obliquely between two adjacent perpendicular walls of the support and are fastened
to each wall, to prevent downward rotation of the panels or doors once they achieve the
horizontal closed position.” Claim Chart, Doc. No. 35-1, at 2.
The meaning of the term “stops” appears to be clear from its use in the claims, and is not
limited to any particular illustration. For example, in the detailed description of embodiments,
the patent states: “the concept of the invention is not limited to this disposition. Stops for
stopping panel lowering may be positions to stop the downward travel above horizontal and still
close a ventilation passage.” Joint Appendix of Intrinsic Evidence, Doc. No. 36-1, ‘342 Patent,
Column 8, lines 22-29. The specification shows that the stops bring a panel to a halt.
Although AMI contends that the narrower meaning that it proposes is “completely
consistent with the claim language”, that argument is unpersuasive because the Federal Circuit
has held “it will not read unstated limitations into claim language.” Rambus Inc., 318 F. 3d at
1088. Because the ordinary meaning of the term “stops” is clear, additional construction is
unnecessary. See Summit 6, LLC, 802 F.3d at 1291.
Furthermore, although AMI argues that the ordinary meaning of the term “stops” is
“impermissibly broad” because the claim language “clearly prohibits” a stop being a support
structure itself, I do not read the claim language as clearly prohibiting a stop as a support
structure. Instead, a stop as a support structure could fall into the category of “within” the
support structure itself, and therefore does not appear to be prohibited. See JA26, at claim 1, col.
14:20-22. In their Answering Claim Construction Brief, Defendants state that “Upon further
review, Defendants acknowledge that there are other configurations that could satisfy this claim

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language, such as ‘rods’ or ‘I-beams’ rather than ‘rails,’ and angles (e.g., perpendicular) other
than oblique ones.” Def’s Answering Claim Construction Brief, Doc. No. 42, at 7 n.2.
The claims and the specification do not contradict the ordinary and customary meaning of
the term “stops”, and therefore the term does not require construction.
C. Meaning of the term “profile”
The next issue is the meaning of the term “profile”, which appears in independent claims
1, 22, 23, and 24. Joint Appendix of Intrinsic Evidence, Doc. No. 36-1, ‘342 Patent. Floodbreak
contends that the term “profile” should be given its ordinary and customary meaning to a person
of ordinary skill in the art, or, if construction is necessary, should be construed to mean “the
shape of a panel”. Claim Chart, Doc. No. 35-1, at 2. AMI seeks to attach a more detailed
interpretation and urges me to construe the term to mean “distal portion of each panel that has
outer edges that match the shape of the passage defined by the sidewalls and wiping seal
positioned around the outer edges of the respective panel and positioned between the panel outer
edge and sidewall when closed to prevent any leakage of flood water into the vent.” Claim Chart,
Doc. No. 35-1, at 2.
AMI advocates for construction of the term “profile” that contains language that can be
found in dependent claim 6, which contains the phrases “distal portion” and “said panels have
rounded corners with a radius of curvature substantially the same as said first radius of curvature
of the sidewall” and dependent claim 7, which contains the phrases “said panels include seals for
sealing said passage”.
Floodbreak is correct in asserting that there is a presumption that limitations that appear
in dependent claims are not to be read into the independent claims on which they depend.
Phillips, 415 F.3d at 1315.
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In Liebel-Flarsheim Co. v. Medrad, Inc., the court held that the presumption that
limitations that appear in dependent claims should not be read into the independent claims from
which they depend “can be overcome if the circumstances suggest a different explanation, or if
the evidence favoring a different claim construction is strong.” 358 F.3d 898, 910 (Fed. Cir.
2004). The court held that the doctrine of claim differentiation is “at its strongest” in a situation
“where the limitation that is sought to be ‘read into’ an independent claim already appears in a
dependent claim[.]” Id. (internal citation omitted).
In Liebel-Flarsheim, the court held that the presumption was unrebutted because the
defendant did not offer an alternative explanation for why the limitations were found in the
dependent claims but not in the corresponding independent claims. Id. Similarly, in the present
case, AMI provides no alternative explanation regarding why the limitations can be found in the
dependent claims but not in the independent claims.
Instead, AMI argues that a key sentence in the specification says that the rounded corners
of the panels and the baseboards allow wiper seals to fully seal the perimeter of panels.
Defendants’ Opening Brief, Doc. No. 38, at 22–23. That statement, however, is in the preferred
embodiment rather than in the independent claim. There are other possible ways to close the
perimeter of the panels, without the “profile” including wiper seals, that are completely
consistent with the claimed invention. Thus, because it is possible to accomplish closure of the
device without sealing the panel, it is unnecessary to import a limitation from the specification
that is not in the claim.
AMI argues that “a construction that renders the claimed invention inoperable should be
viewed with extreme skepticism[.]” Defendants’ Opening Brief, Doc. No. 38, at 24, citing AIA
Eng’g Ltd. V. Magotteaux Int’l S/A, 657 F.3d 1264, 1278 (Fed Cir. 2011). But a construction

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using ordinary meaning does not render the invention here inoperable. Although the meaning the
AMI puts forth is more specific, an interpretation using the ordinary meaning of the term “profile
that closes the passage” does not preclude sealing the passage so that water cannot pass through a
gap. Therefore, the invention is not rendered inoperable and the ordinary meaning can be used
here.
D. Meaning of the term “gravitational rotation”
At issue is the meaning of the term “in gravitational rotation falling from said upright
home position to a lower passage closing position”, which appears in independent claims 23 and
24. Joint Appendix of Intrinsic Evidence, Doc. No. 36-1, ‘342 Patent.
Floodbreak contends that the term “gravitational rotation” should be given its ordinary
and customary meaning to a person of ordinary skill in the art, or, if construction is necessary,
should be construed to mean “[t]he panels are mounted to rotate from a higher place to a lower
place and fall using the force of gravity to rotate the panels downwardly”. Claim Chart, Doc. No.
35-1, at 3. AMI seeks to attach a more detailed interpretation and urges me to construe the term
to mean “[r]otation of the panels or doors of the MCD from an open vertical position to a closed
horizontal position wherein the gravitational pull supplied by the weight of the panels is the only
force that moves the panels in the direction of rotation toward the closed horizontal position.”
Claim Chart, Doc. No. 35-1, at 3.
“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 v.
Beyond Innovation Tech., 521 F.3d 1351, 1361 (Fed. Cir. 2008).

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AMI argues that in light of the narrowing amendments made by Floodbreak during patent
prosecution, an open-ended construction of the term is inadequate and inconsistent with the
term’s specification and file history. Defendants’ Opening Brief, Doc. No. 38, at 12–13.2
During prosecution, Floodbreak added “New” independent claims, 23 and 24. See JT
APP00012–131. During the Markman hearing, Floodbreak argued that because claims 23 and
24 were new, they were never amended, and therefore were not narrowed. Markman Hearing
Transcript, Doc. No. 46, at 23:2–6.
AMI argues that the ‘342 patent repeatedly describes operation of the assembly during its
transition from the upright, vertical position to the horizontal, closed position as swinging due to
the force of gravity alone. Defendants’ Opening Brief, Doc. No. 38, at 13.
“[W]hen a patentee uses a claim term throughout the entire patent specification, in a
manner consistent with only a single meaning, he has defined that term by implication. Id. at 14,
citing Bell Atl. Network Servs., Inc. v. Covad Communications Grp., Inc., 262 F.3d 1258, 1271
(Fed. Cir. 2001) (internal quotes and citations omitted).
However, during patent prosecution, the applicants were “very careful to distinguish their
reasons for the patentability of claims 23 and 24 versus the reasons for patentability of Claims 1
and 22.” Doc. No, 39, Plaintiff’s Opening Brief, at 18. Floodbreak provides an example of the
differentiation of claims: in a patent amendment submitted on October 6, 2014, Floodbreak
differentiated between flood prevention by gravity and flood prevention by human action in
claims 1 versus claims 23 and 24. See JT APP000143.

During patent prosecution, Floodbreak amended the scope of its claims by adding the “solely by gravitational
impetus of its own weight” limitation in a claim involving gravitational force. See Interview Request, dated August
11, 2016, with proposed amended claim 1, JA103-06, at JA105-06.
2

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From examining the patent amendment language, that differentiation is clear. The
doctrine of claim differentiation is “based on the common sense notion that different words or
phrases used in separate claims are presumed to indicate that the claims have different meaning
and scope….” Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed. Cir.
1999). Furthermore, “[t]he use of a term in one claim can help demonstrate the meaning of that
term in another claim, and differences among claims can also guide understanding.” Clearwater
Sys. Corp. v. Evapco, Inc., 553 F. Supp. 2d 173, 176 (D. Conn. 2008).
Although Floodbreak narrowed the scope of claim 1 in its 2016 proposed amendment, it
did not do so for claims 23 and 24, and therefore AMI’s suggested meaning of the term
“gravitational rotation” cannot be applied generally throughout the patent. In addition, the
“gravitational” language in claim 1 differs greatly from the language in claims 23 and 24. In
claim 1, the panels are mounted for rotation upwardly to a home position “and rotation
downwardly…solely by gravitational impetus on its own weight to a lower passage closing
position.” Doc. No. 36-1, at JT APP000026 (emphasis added). Claim 22 also uses the word
“solely” regarding downward rotation of the panels: “in gravitational rotation falling solely under
the impetus of its own weight…to a lower passage closing position.” Id. at JT APP000027.
Claims 23 and 24 do not use the term “solely” or “only”. Id. at JT AP000027-28. Accordingly,
one of ordinary skill in the art would not incorporate “only” in the definition of the phrase at
issue.
Furthermore, even though the patent examiner stated that all pending claims, including
claims 23 and 24, contained the language “solely by gravitational impetus”, Notice of
Allowability, Doc. No. 36-9, at JT APP000177, as discussed above, that statement is incorrect.

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The Federal Circuit has held that the applicant’s language should be afforded greater
weight than the language used by the examiner. 3M Innovative Props. Co. v. Tredegar Corp.,
725 F.3d 1315, 1332 (Fed. Cir. 2013) (“[w]e are guided by legal principles dictating that we rest
on the statements by the patentee over conflicting statements of an examiner because it is the
patentee’s words that define the claim.”). Here, the language used by the applicants in the
amendment demonstrates that different kinds of force are meant to be used in specific patent
claims.
Accordingly, AMI’s proffered definition cannot be adopted.
Floodbreak argues that, in its reading of the patent, claims 23 and 24 would allow either
the release to move the panels sideways to initiate gravitational force, or some other force would
be permitted to move it sideways to get it to the point where gravity would allow it to fall.
Markman Hearing Transcript, Doc. No. 46, at 20:14–21:3. That argument is supported by the
prosecution history, and thus Floodbreak’s proffered definition is adopted here.
IV.

Conclusion
For the foregoing reasons, I hold that the terms “stops” and “profile” do not require

construction, and are given their ordinary meaning by one skilled in the art, and, in construing
the term “gravitational rotation”, I adopt the meaning put forth by Floodbreak, holding that
“gravitational rotation” in the ‘342 patent means “[t]he panels are mounted to rotate from a
higher place to a lower place and fall using the force of gravity to rotate the panels downwardly”.
So ordered.
Dated at Bridgeport, Connecticut, this 8th day of July 2019.

/s/ STEFAN R. UNDERHILL
Stefan R. Underhill
United States District Judge
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