Cloud Farm Associates LP v. Volkswagen Group of America Inc. et al
Filing
163
MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 7/27/12. (ntl)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CLOUD FARM ASSOCIATES, L.P .,
Plaintiff,
v.
C.A. No. 10-502-LPS
VOLKSWAGEN GROUP OF AMERICA, INC.,
and ZF SACHS AG,
Defendants.
Joseph C. Schoell, Esq., DRINKER BIDDLE & REATH LLP, Wilmington, DE.
William M. Brown III, Esq., Robert A. Koons, Esq., Andrea L. D'Ambra, Esq., Michael J. Burg,
Jr., Esq., DRINKER BIDDLE & REATH LLP, Philadelphia, PA.
Attorneys for Plaintiff.
James D. Taylor, Jr., Esq. and Jennifer M. Becnel-Guzzo, Esq., SAUL EWING LLP,
Wilmington, DE.
Michael J. Lennon, Esq. and Georg C. Reitboeck, Esq., KENYON & KENYON LLP, New York,
NY.
Susan A. Smith, Esq., KENYON & KENYON LLP, Washington, DC.
Attorneys for Defendant Volkswagen Group of America, Inc.
Steven J. Balick, Esq., Tiffany Geyer Lydon, Esq., Lauren E. Maguire, Esq., Andrew C. Mayo,
Esq., ASHBY & GEDDES, Wilmington, DE.
Martin B. Pavane, Esq., Lisa A. Ferrari, Esq., Marilyn Neiman, Esq., COZEN O'CONNOR, New
York, NY.
Attorneys for Defendant ZF Sachs AG.
MEMORANDUM OPINION
July 27, 2012
Wilmington, Delaware
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STARK, U.S. District Judge:
Pending before the Court is the issue of claim construction of disputed terms found in
U.S. Patent Nos. 5,529,153 (the'" 153 patent") and 5,437,354 (the '"354 patent") (collectively,
the "patents-in-suit").
I.
BACKGROUND
Plaintiff Cloud Farm Associates, L.P. ("Plaintiff' or "Cloud Farm") filed this patent
infringement action against defendants Volkswagen Group of America, Inc. ("Volkswagen") and
ZF Sachs AG ("ZF Sachs") (together, "Defendants") on June 9, 2010, alleging infringement of
the patents-in-suit. (D.I. 1) The patents-in-suit relate "to a technology for suppressing vehicular
rolling motion, i.e the tendency of the vehicle to tilt when the vehicle turns a comer or is driven
around a sharp curve." ('153 patent col.lll.16-19; '354 patent col.lll.l0-13)
The parties completed briefing on claim construction on March 2, 2012. (See D.I. 148)
The Court held a Markman hearing on May 29, 2012. See Markman Hr'g Tr., May 29, 2012
(D.I. 158) (hereinafter "Tr.").
II.
LEGAL STANDARDS
"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) (internal quotation marks omitted). Construing the claims of a patent presents a
question oflaw. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir.
1995), aff'd, 517 U.S. 370, 388-90 (1996). "[T]here is no magic formula or catechism for
conducting claim construction." Phillips, 415 F.3d at 1324. Instead, the court is free to attach
the appropriate weight to appropriate sources "in light of the statutes and policies that inform
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patent law." Id.
"[T]he words of a claim are generally given their ordinary and customary meaning ...
[which 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."
Id. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a
claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321
(internal quotation marks omitted). The patent specification "is always highly relevant to the
claim construction analysis. Usually, it 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).
While "the claims themselves provide substantial guidance as to the meaning of particular
claim terms," the context ofthe surrounding words of the claim also must be considered.
Phillips, 415 F .3d at 1314. Furthermore, "[ o]ther claims of the patent in question, both asserted
and unasserted, can also be valuable sources of enlightenment ... [b ]ecause claim terms are
normally used consistently throughout the patent .... " Id. (internal citation omitted).
It is likewise true that "[d]ifferences among claims can also be a useful guide .... For
example, the presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent claim." Id. at 131415 (internal citation omitted). This "presumption is especially strong when the limitation in
dispute is the only meaningful difference between an independent and dependent claim, and one
party is urging that the limitation in the dependent claim should be read into the independent
claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
It is also possible that "the specification may reveal a special definition given to a claim
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term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]ven
when the specification describes only a single embodiment, the claims of the patent will not be
read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
using words or expressions of manifest exclusion or restriction." Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), a.ff'd, 481
F.3d 1371 (Fed. Cir. 2007).
In addition to the specification, a court "should also consider the patent's prosecution
history, if it is in evidence." Markman, 52 F.3d at 980. The prosecution history, which is
"intrinsic evidence," "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. "[T]he prosecution history can often inform the meaning ofthe claim
language by demonstrating how the inventor understood the invention and whether the inventor
limited the invention in the course of prosecution, making the claim scope narrower than it would
otherwise be." Id.
A court also may 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." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the
court in determining the meaning of a term to those of skill in the relevant art because such
dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science
and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to
ensure that the court's understanding of the technical aspects of the patent is consistent with that
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of a person of ordinary skill in the art, or to establish that a particular term in the patent or the
prior art has a particular meaning in the pertinent field." !d. Nonetheless, courts must not lose
sight of the fact that "expert reports and testimony [are] generated at the time of and for the
purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence." !d.
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Overall, while extrinsic evidence "may be useful" to the court, it is "less reliable" than intrinsic
evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim
scope unless considered in the context of the intrinsic evidence." !d. at 1318-19.
Finally, "[t]he construction that stays true to the claim language and most naturally aligns
with the patent's description of the invention will be, in the end, the correct construction."
Renishaw PLC v. Marposs Societa 'per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows
that "a claim interpretation that would exclude the inventor's device is rarely the correct
interpretation." Osram GmbH v. Int'l Trade Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007).
III.
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CONSTRUCTION OF DISPUTED TERMS
A.
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"partially filled with hydraulic fluid" 1
Plaintiffs Proposed Construction: "partially but not completely filled with
hydraulic fluid"
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Volkswagen's Proposed Construction: No construction is necessary. However, if
the Court construes this term it should be construed as "partially, but not
completely filled with hydraulic fluid" 2
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ZF Sachs's Proposed Construction: "partially, but not completely filled with
hydraulic fluid"
1
This disputed term appears in claims 1-5, 8-12, and 16 ofthe '354 patent.
2
Volkswagen suggested this proposed construction at the Markman hearing. (See Tr. at
119)
4
Court's Construction: "partially, but not completely filled with hydraulic fluid"
The parties agree upon the construction of this disputed term. 3 Accordingly, the Court
will adopt the parties' agreed upon construction.
B.
"a chamber having two portions partially filed with hydraulic fluid" 4
Plaintiffs Proposed Construction: "the chamber is divided into two portions,
wherein the two portions taken together are partially but not completely filled with
hydraulic fluid" 5
Volkswagen's Proposed Construction: No construction is necessary. Rather, the
Court should apply the plain and ordinary meaning of this term, which is
"[chamber] having two portions, each incompletely filled with hydraulic fluid"
ZF Sachs's Proposed Construction: "the chamber is divided into two portions,
wherein the two portions taken together are partially but not completely filled with
hydraulic fluid"
Court's Construction: "the chamber is divided into two portions, wherein the two
portions taken together are partially but not completely filled with hydraulic fluid"
As an initial matter, the Court concludes that it must construe this term because the
parties do not agree on its meaning and their dispute appears to be material. See 02 Micro Int 'l
Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (stating
sometimes "the 'ordinary' meaning of a term does not resolve the parties' dispute, and claim
construction requires the court to determine what claim scope is appropriate in the context of the
patents-in-suit"). Specifically, the parties disagree about whether one portion ofthe chamber can
3
Although Volkswagen asserts "plain and ordinary meaning" as its primary argument, at
the Markman hearing Volkswagen indicated that it was "fine" with the other parties' proposed
construction and could "live with" that construction. (Tr. at 118-19)
4
This disputed term appears in claim 16 ofthe '354 patent.
5
Although Plaintiff had initially proposed a different construction, Plaintiff adopted ZF
Sachs's construction in its reply brief. (See D.I. 144 at 4)
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be completely filled with hydraulic fluid - ZF Sachs and Plaintiff contend that it can, whereas
Volkswagen contends it cannot. The Court concludes that one portion of the chamber may be
completely filled with hydraulic fluid and, accordingly, will adopt the construction proposed by
ZF Sachs and Plaintiff.
Volkswagen contends that Figure 2 of the '354 patent does not show either portion of the
chamber as being completely filled with hydraulic fluid and, therefore, argues that the Court
should not adopt the other parties' proposed construction. (D.I. 148 at 9; Tr. at 118-19)
However, the Court declines to limit the claim to the embodiment shown in Figure 2, as there is
nothing in the claim language that would justify doing so. See MBO Labs., Inc. v. Becton,
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Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007) ("[P]atent coverage is not necessarily
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also Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) ("[T]he claims of
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limited to inventions that look like the ones in the figures. . . . To hold otherwise would be to
import limitations onto the claim from the specification, which is fraught with 'danger."'); see
the patent will not be read restrictively unless the patentee has demonstrated a clear intention to
limit the claim scope using words or expressions of manifest exclusion or restriction.").
C.
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"seal"/"sealing" /"seals" 6
Plaintiffs Proposed Construction: "minimizing the flow ofhydraulic fluid
therethrough"
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Volkswagen's Proposed Construction: "closing to prevent egress of hydraulic
fluid"
6
These disputed terms appear in claims 1, 8, and 16 ofthe '354 patent and in claims 1 and
3 ofthe '153 patent.
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ZF Sachs's Proposed Construction: "stopping the flow of hydraulic fluid" 7
Court's Construction: "stopping the flow ofhydraulic fluid"
D.
"prevent flow of said fluid" 8
Plaintiffs Proposed Construction: "hinder the flow of said fluid"
Volkswagen's Proposed Construction: "shut off any further flow of said hydraulic
fluid"
ZF Sachs's Proposed Construction: "to stop flow of hydraulic fluid" 9
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Court's Construction: "to stop flow of said hydraulic fluid"
E.
"preventing tilting of the frame or body of the vehicle" 10/"preventing tilting
of the body of the vehicle 11
Plaintiff's Proposed Construction: "hinder the vehicle body's ability to tilt or lean
away from a vertical axis"
Volkswagen's Proposed Construction: "stop any further tilting of the frame or
body of the vehicle"
ZF Sachs's Proposed Construction: "to stop the frame or body of the vehicle from
tilting"
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For various claims ofthe patents-in-suit, ZF Sachs contends that the Court should not
only construe the word "seal," "seals," or "sealing," but also construe additional surrounding
claim language. (See D.I. 144 at 2, 24) Plaintiff and Volkswagen instead propose only
constructions for the words "seal," "seals," or "sealing." The Court adopts the approach of
Plaintiff and Volkswagen.
8
This disputed term appears in claims 1 and 8 ofthe '354 patent and claim 1 ofthe '153
patent.
9
ZF Sachs proposed various additions to its main construction based on the surrounding
claim language; however, the Court declines to construe the additional claim language.
10
This disputed term appears in claim 1 of the '354 patent.
11
This disputed term appears in claim 8 ofthe '354 patent.
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Court's Construction: "to stop the frame or body of the vehicle from tilting"
F.
"prevent movement of the piston and further tilting of the body of the
vehicle" 12
Plaintiffs Proposed Construction: "hinder movement of piston and further tilting
of the body of the vehicle"
Volkswagen's Proposed Construction: "stop any further movement of the piston
and any further tilting of the body of the vehicle"
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ZF Sachs's Proposed Construction: "stop movement ofthe piston and stop tilting
of the body of the vehicle"
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Court's Construction: "stop any further movement of the piston and any further
tilting of the body of the vehicle"
The parties' disagreements over these interrelated terms concern whether, upon sensing
excessive vehicle tilt, the system claimed in the patents-in-suit stops (as argued by Defendants)
or merely reduces (as argued by Plaintiff) the flow of hydraulic fluid from one portion of the tilt
controller to the other, the movement of the piston, and the tilting of the vehicle body. The
Court's constructions are supported by language of the claims. (See '354 patent col.6 11.32-35;
id. at col.711.9-11; '153 patent col.lO 11.59-63) Claim 1 ofthe '354 patent states, in pertinent
part: "to seal said opening when the sensing means is activated at a predetermined tilt position of
the body to prevent flow of said fluid from the lower portion of the chamber into the upper
portion of the chamber and thus prevent tilting of the frame or body of the vehicle." ('354 patent
col.611.30-35) (emphasis added)
The Court's constructions are also supported by the specification. The terms "seal,"
"seals," and "sealing" are used consistently in the specification to mean completely stopping the
12
This disputed term appears in claim 1 of the ' 15 3 patent.
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flow ofhydraulic fluid. Once the flow ofhydraulic fluid stops, the specification explains that
any tilting or movement of the piston or vehicle body also stops. (See id. at col.411.9-25, 11.4860; id. at col.411.62-col.5 11.3; id. at col.8 11.28-36; id. at col.8 11.66-col.911.7; id. at col.911.36-43;
id. at col.9 11.53-57; id. at col.l 0 11.23-28) For instance, when the vehicle tilt reaches a
predetermined limit, the "seal" 40 closes the opening 34 in lockplate 32 to prevent the discharge
of any hydraulic fluid, thereby preventing the piston 31 from moving upward, and thereby
restraining any further tilt of the body of the vehicle. (See id. at col.411.48-60) Each
embodiment in the '354 patent and the '153 patent also discloses that, upon sensing of excessive
tilt, the opening in the plate is closed so that fluid flow is shut off. (See id. at col.4 11.20-26; id. at
col.511.34-36; id. at col.5 11.67- col.611.5; '153 patent col.611.43-47; id. at col.711.2-10; id. at
col.8 11.66- col.911.7; id. at col.911.36-43; id. at col.911.53-57; id. at col. 10 11.23-26) The words
"hinder flow" never appear in the specification and neither of the patents-in-suit explains how it
is possible to accomplish partial sealing. (Tr. at 87)
Contrary to Plaintiffs argument, the specification of the '354 patent does not disclose an
embodiment in which fluid flow is merely hindered. Specifically, Plaintiffs contention that
Figure 2 of the '354 patent illustrates an embodiment in which perfect closure many not be
effected is unpersuasive, as Figure 2 shows that seal 40 has a larger diameter, which closes the
opening 34. Plaintiffs argument that column 5 ofthe '354 patent discloses an embodiment
where fluid flow is not completely prevented is likewise unpersuasive. (See Tr. at 49) In support
of its argument, Plaintiff points to the following language describing an embodiment: "the
opening 34 can be adjusted in size to provide shock absorptions. The smaller the opening, the
more resistance there is to fluid flow in the reservoir chamber." ('354 patent col.5 11.59-62)
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However, the '354 patent goes on to describe this embodiment as completely stopping and not
merely hindering flow: "Should a tilt be encountered as a car goes around a turn the sensor will
activate the solenoid which will close the seal 40 so that there is no longer any opening in the
piston assembly and lockplate. Fluid in the bottom chamber can then no longer enter the upper
chamber and movement ofthe body downwardly is prevented." (!d. at col.5 ll.67- col.6ll.5)
The Court's constructions are further supported by the prosecution history. During
prosecution ofthe '354 patent, the inventor attempted to claim a system that merely reduces fluid
flow, describing the sealing means of claim 18 (which led to issued claim 16) as "adapted, when
activated, to prevent any substantial flow of fluid from one portion to the other portion of the
chamber." (D.I. 127, Ex. B-1) (emphasis added) The patent examiner rejected application claim
18 as indefinite due to the ambiguity and vagueness of the phrase "any substantial flow." (!d.,
Ex. B-2) In response, the inventor amended application claim 18 by deleting the word
"substantial," resulting in a claim that read: "to prevent any flow of said fluid" and described the
invention as a whole as having sealing to "prevent any fluid flow and thus prevent any further
movement of the piston." Additionally, the inventor noted that the patented invention creates
stability of the vehicle both when moving up and down and when rounding curves due to the fact
that "no signals are transmitted to a sealing means to prevent fluid flow" - further evidence that
fluid flow is completely stopped and not merely hindered. (See D.I. 127, Ex. B-3 at 8-9; Tr. at
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94-95)
Plaintiff contends that the doctrine of claim differentiation requires that claims 1 and 8 of
the '354 patent allow some fluid to pass through opening 32 based on the words "prevent flow"
used in these claims, as opposed to the words "prevent any flow" used in claim 16. (See D.I. 125
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at 12-13; Tr. at 52) However, there are numerous meaningful differences between claims 1 and
8, on one hand, and claim 16, on the other. For instance, claim 16 does not require (1) the piston
to be attached to the vehicle axle, (2) "means for moving the sealing means," or (3) the sensing
means to be "activated at a predetermined tilt position of the body," while claims 1 and 8 do
contain these requirements. Thus, the doctrine of claim differentiation is unavailing for
Plaintiffs. See Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1370 (Fed. Cir. 2007);
Intermatic Inc. v. Lamson & Sessions Co., 273 F.3d 1355, 1364 (Fed. Cir. 2001), vacated on
other grounds, 537 U.S. 1016 (2002).
G.
separating said fluid within the chamber into a lower portion and an upper
portion" 13
Plaintiffs Proposed Construction: "a plate disposed in the chamber having a
substantially central opening in the plate, the plate separates said fluid within the
chamber into a lower portion and an upper portion" 14
Volkswagen's Proposed Construction: No construction is necessary. Court should
apply the plain and ordinary meaning of this term.
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ZF Sachs's Proposed Construction: "a plate disposed in the chamber such that the
substantially central opening in the plate is the only flow path between the
hydraulic fluid above the plate and hydraulic fluid below the plate"
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"a plate within said chamber having a substantially central opening
Court's Construction: "a plate disposed in the chamber having a substantially
central opening in the plate, the plate separates said fluid within the chamber into
a lower portion and an upper portion"
H.
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"a plate within said chamber having at least one opening separating the fluid
within the chamber into two portions" 15
This disputed term appears in claim 1 of the '354 patent.
14
Plaintiffproposed this construction in its reply brief. (See D.l. 144 at 4)
15
This disputed term appears in claim 8 of the '354 patent.
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Plaintiffs Proposed Construction: "a plate disposed in the chamber with at least
one opening in the plate, through which fluid may pass from one portion of the
chamber to the other"
Volkswagen's Proposed Construction: No construction is necessary. Court should
apply the plain and ordinary meaning of this term.
ZF Sachs's Proposed Construction: "a plate having at least one opening and
disposed in the chamber such that the plate separates the hydraulic fluid into two
portions, one below the plate and one above the plate, and wherein at least one
opening in the plate is the only flow path for the hydraulic fluid between the two
portions"
Court's Construction: "a plate disposed in the chamber with at least one opening
in the plate, through which fluid may pass from one portion of the chamber to the
other"
As an initial matter, the Court concludes that it must construe these terms because the
parties do not agree on their meanings and the parties' disputes appear to be material. See 0 2
Micro, 521 F .3d at 1361. Specifically, the parties dispute whether there can be more than one
"substantially central opening" and whether this opening must be the only fluid-flow path. ZF
Sachs contends that there can only be one substantially central opening and that it must be the
only path for hydraulic fluid flow (see D .I. 128 at 11 ), whereas Plaintiff and Volkswagen contend
that there are no such limitations (see D.I. 125 at 7).
The Court's constructions are supported by the plain language of the claims. (See '354
patent col.611.23-35; id. at col.611.68- col.711.1-2) When the claims of a patent are not limited,
the Court should not read in additional limitations without clear, unmistakable contextual support
in the specification. See generally Biovail Corp. Int'l v. Andrx Pharma., Inc., 239 F.3d 1297,
1301 (Fed. Cir. 2001). There is no clear support in the specification to import ZF Sach's
additional limitations requiring that the substantially central opening be the only flow path.
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Although the specification does describe instances where the plate only has one substantially
central opening which is the only fluid-flow path (see, e.g., '354 patent col.3 11.12-27; id. at col.4
ll.19-26), the Court declines to import these limitations from the specification into the claims, see
Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004).
I.
"means within said chamber to separate said fluid within the chamber into
two portions" 16
Plaintiffs Proposed Construction:
Function: "separating said fluid within said chamber into two portions"
Structure: "a plate within said chamber, and equivalents thereof'
Volkswagen's Proposed Construction:
Function: "separating said fluid within said chamber into two portions"
Structure: "a plate within said chamber, or an equivalent ofthe foregoing
structure"
ZF Sachs's Proposed Construction:
Function: "separating the hydraulic fluid in the chamber into two portions"
Structure: "a plate within the chamber, and equivalents thereof'
Court's Construction:
Function: "separating said fluid within said chamber into two portions"
Structure: "a plate within said chamber, and equivalents thereof'
The parties substantially agree on the construction ofthis means-plus-function claim
term. Accordingly, the Court adopts a construction that reflects the parties' agreement and is
grammatically correct.
J.
"sealing means" 17
Plaintiffs Proposed Construction:
Function: "sealing"
16
This term appears in claim 16 of the '354 patent.
17
This disputed term appears in claims 1, 8, and 16 ofthe '354 patent and claim 1 ofthe
'153 patent.
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Structure: "a valve, and equivalents thereof'
Volkswagen's Proposed Construction:
Function: "sealing"
Structure: The specification ofthe '354 patent does not describe the structure for
performing the function of sealing.
ZF Sachs's Proposed Construction:
Function: "sealing"
Structure: "seal or shut off valve and equivalents thereof'
Court's Construction:
Function: "sealing" (as construed supra)
Structure: "seal or shut-offvalve and equivalents thereof'
The parties agree that "sealing means" is a means-plus-function term and that the function
is "sealing" (as the Court has construed the term supra). The parties disagree as to which
structure the patents-in-suit describe as corresponding to this claim element and whether that
structure is a sufficiently specific structure to satisfy 35 U.S.C. § 112 ~ 6.
The Court's construction ofthe structure as "seal or shut offvalve and equivalents
thereof' is supported by the specifications of both patents-in-suit. The specifications of the '354
patent and '153 patent identify a shut-offvalve as a sealing means. (See '354 patent co1.3 11.1518; '153 patent col.411.2-3) Additionally, Figure 2 ofthe '354 patent illustrates a valve that acts
as a sealing means. (See '354 patent, Fig. 2) Thus, both ofthe patents-in-suit adequately
disclose a structure for the function of "sealing."
K.
"means for sensing the tilt" terms 18
Plaintif:f s Proposed Construction:
18
In claims 1 and 8 ofthe '354 patent and claims 1-3 ofthe '153 patent, the term reads:
"means for sensing the tilting movement of said vehicle." In claim 16 of the '3 54 patent, the
term reads: "means for sensing tilting of one of said structural elements towards said other
structural element."
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Function: "sensing lateral acceleration of the vehicle body"
Structure: "a tube in the shape of a wide shallow U and mounted crosswise ofthe
vehicle, with: ( 1) two sets of contacts at the opposite ends of the tube to be
engaged by mercury, and (a) a pool of mercury within the tube, or (b) two balls of
mercury, each within a glass envelope at each end of the U-shaped tube or (2) two
crimped portions to the left and right of the center of the tube which are each parts
of two electrical circuits, and a ball bearing free to roll within the tube, which can
complete the electrical circuit at one of the crimped portions, and/or equivalents
of any of the foregoing"
Volkswagen's Proposed Construction:
Function: "sensing sideways tilting of the vehicle body toward the vehicle axle,
excluding the sensing of acceleration exerted on the vehicle body"
Structure: "a tube in the shape of a wide shallow U and mounted crosswise ofthe
vehicle, with (1) two sets of electrical contacts at the opposite ends of the tube to
be engaged by mercury, and (a) a pool of mercury within the tube, or (b) two balls
of mercury, each within a glass envelope at each end of the U-shaped tube; or (2)
two crimped portions to the left and right of the center of the tube which are each
parts of two electrical circuits, and a ball bearing free to roll within the tube,
which can complete the electrical circuit at one of the crimped portions, or an
equivalent of any of the foregoing structures (1 )(a), (1)(b), or (2), but excluding
acceleration sensors for monitoring acceleration exerted on the vehicle body"
ZF Sachs's Construction:
Function: "sensing tilting movement of the vehicle"
Structure: "a switch consisting of (1) a wide, shallow U-shaped tube mounted
crosswise of the vehicle and having either (a) a pool of mercury in the tube and
two sets of electrical contacts at opposite ends of the tube to be engaged by the
mercury for completing an electrical circuit, or (b) a glass envelope with a ball of
mercury and a pair of electrical contacts therein at either end of the tube
engagement of the ball of mercury with contacts completing an electrical circuit,
and (2) a cylindrical tube mounted crosswise of the vehicle with a ball bearing
free to roll within the tube, the tube being crimped at two points, one to the left of
center and one to right of center, the crimps including electrical contacts to be
engaged by the ball bearing for completing an electrical circuit [and] equivalents
thereof'
Court's Construction:
Function: "sensing tilting movement of the vehicle"
Structure: "a tube in the shape of a wide shallow U and mounted crosswise of the
vehicle, with ( 1) two sets of electrical contacts at the opposite ends of the tube to
be engaged by mercury, and (a) a pool of mercury within the tube, or (b) two balls
of mercury, each within a glass envelope at each end ofthe U-shaped tube; or (2)
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two crimped portions to the left and right of the center of the tube which are each
parts of two electrical circuits, and a ball bearing free to roll within the tube,
which can complete the electrical circuit at one of the crimped portions, or an
equivalent of any of the foregoing structures"
The parties agree that these terms are means-plus-function terms within the meaning of
35 U.S.C. § 112 ~ 6. Additionally, although the parties use slightly different wording, they also
agree on some of the corresponding structures, which are discussed in the patents' descriptions of
the U-shaped tube with electrical contacts at its ends and a mercury pool, mercury balls, or a ball
bearing. (See '354 patent col.2 ll.36-46, 52-67; '153 patent col.3 11.20-39, 35-50) The parties
disagree, however, on (1) whether the inventor disclaimed certain structures during prosecution
and (2) the correct construction of the recited function.
The Court concludes that the inventor did not expressly disclaim any structures and,
consequently, prosecution history estoppel does not apply. Volkswagen contends that during
prosecution of what eventually was issued as the '354 patent, the inventor disclaimed certain
structures when he stated that the patented invention was distinct from various prior art
references and made amendments to the claims of the '354 patent to reflect these distinctions.
(See D.l. 126 at 8-11) Yet claims 1 and 8 of the '354 patent originally recited "means for sensing
the tilting movement of said vehicle" and these claim elements were never amended. Moreover,
the inventor never described any structural distinctions between his patented invention and the
prior art which he disclaimed.
The Court's construction of the function is supported by the plain language of the claims.
Claim 1 of the '354 patent states that the claimed invention addresses the "tilting" movement of
the vehicle, not lateral acceleration. (See '354 patent col.6ll.12-35) Additionally, the Court's
16
construction is supported by the specification, which discloses that each of the recited structures
senses a predetermined tilt position of the axle with respect to the body of the vehicle at which
the sensor completes a circuit for activating a switch for preventing flow of hydraulic fluid to
prevent further vehicle tilt. (See id. at col.2 11.24-35; id. at col.3 11.23-27; see also id. at col.2
11.68-col.3 11.4) The Court's construction is also supported by the prosecution history. (See D.I.
127, Ex. B-5 (inventor distinguishing invention from prior art that had lateral acceleration sensor,
noting that prior art did not "disclose the specific tilt sensing means")) Lateral acceleration is not
a form of "tilting movement."
L.
"means for moving the sealing means to seal" 19
Plaintiffs Proposed Construction:
Function: "moving the sealing means to seal"
Structure: "a solenoid and a spring, and equivalents thereof'
Volkswagen's Proposed Construction:
Function: "moving the sealing means"
Structure: "a solenoid, a rod, and a spring; or an equivalent of the foregoing
combination"
ZF Sachs's Proposed Construction:
Function: "moving the sealing means to seal the opening in the plate"
Structure: "a solenoid, rod, and spring combination, and equivalents thereof'
Court's Construction:
Function: "moving the sealing means to seal"
Structure: "a solenoid, a rod, and a spring; or an equivalent of the foregoing
combination"
M.
"electromagnetic means to move said sealing means to seal"20
19
This disputed term appears in claim 1 ofthe '153 patent and claims 1 and 8 ofthe '354
20
This disputed term appears in claim 9 of the '354 patent.
patent.
17
-
Plaintiff's Proposed Construction:
Function: "moving the sealing means to seal"
Structure: "a solenoid, a rod, and a spring; or an equivalent of the
foregoing"
Volkswagen's Proposed Construction:
Function: "moving the sealing means"
Structure: "a solenoid, a rod, and a spring; or an equivalent of the
foregoing"
ZF Sachs's Proposed Construction:
Function: "moving the sealing means"
Structure: "a solenoid, rod, and spring combination, and equivalents thereof'
Court's Construction:
Function: "moving the sealing means to seal"
Structure: "a solenoid, a rod, and a spring; or an equivalent of the
foregoing"
N.
"electromagnetic means for operating said sealing means" 21
Plaintiff's Proposed Construction:
Function: "operating said sealing means"
Structure: "a solenoid and a spring, or an equivalent of the foregoing
combination"
Volkswagen's Proposed Construction:
Function: "operating said sealing means"
Structure: "a solenoid, a rod, and a spring; or an equivalent of the
foregoing"
ZF Sachs's Proposed Construction:
Function: "operating the sealing means"
Structure: "a solenoid, rod, and spring combination, and equivalents thereof'
Court's Construction:
Function: "operating said sealing means"
Structure: "a solenoid, a rod, and a spring; or an equivalent of the
foregoing"
The parties agree that these are all means-plus-function terms within the meaning of35
21
This disputed terms appears in claim 4 of the '354 patent.
18
----------.
U.S.C. § 112 ~ 6; however, the parties dispute the proper functions and the structure.
The Court's constructions of the functions are supported by the plain language of the
claims. (See '354 patent col.611.30-31; id. at col.711.4-5; id. at col.711.14-16; id. at col.611.4445; '153 patent col.lO 11.55-56) The claims use the words "moving the sealing means to seal"
and, thus, "to seal" is part of the disclosed functions of the claims. Claim 4 of the '354 patent
explicitly discloses the function as being "operating said sealing means." ('354 patent co1.6
11.44-45)
The Court's construction of the structure is supported by the specification. The parties
agree that the corresponding structure includes a solenoid and a spring, but disagree on whether it
also includes a rod. The Court concludes that the disclosed structure includes a rod as the
patents-in-suit explicitly state: "[t]he solenoid device 36 is composed of a rod or piston 33 that
fits within the solenoid 36." ('354 patent col.411.61-62; '153 patent col.711.11-13)
0.
"predetermined tilt position of the body"22 /"set tilt position of the body"23
Plaintiff's Proposed Construction: "value at which lateral acceleration of the
vehicle causes the sensing means to activate"
Volkswagen's Proposed Construction: No construction necessary. Court should
apply the ordinary meaning of this term- "tilt position of body that is
determined/set in advance."
ZF Sachs's Proposed Construction: "the predetermined degree of tilt of the body
of the vehicle at which the sensing means is activated"
Court's Construction: "the predetermined degree of tilt of the body of the vehicle
at which the sensing means is activated"
22
This disputed term appears in claim 1 of the '354 patent.
23
This disputed term appears in claim 8 ofthe '354 patent and claim 1 of the '153 patent.
19
As an initial matter, the Court concludes that it must construe this term because the
parties do not agree on its meaning and their dispute appears to be material. See 02 Micro, 521
F.3d at 1361.
The Court's construction is supported by the plain language of the claims. (See '354
patent col.611.28-35; id. at co1.711.8-11; '153 patent col.lO 11.56-59) The Court's construction is
also supported by the specification, which states "so that the tilt of said axle increases beyond a
predetermined amount, the sensing means is activated to send a signal to the tilt controlling
means so that further tilt of the body or frame ofthe vehicle is prevented." (See '354 patent co1.2
11.24-35)
P.
"electrical switch"24/"means [including] an electrical switch" 25
Plaintiffs Proposed Construction: "a circuit element that may alter the circuit's
voltage and/or current"
Volkswagen's Proposed Construction: "A circuit element that has two states, on
and off. When on, a switch allows electrical signals to pass unimpeded. When
off, it does not allow electrical signals to pass."
ZF Sachs's Proposed Construction: "a circuit element that has two states, on and
off; when on, a switch allows electrical current to pass unimpeded, and when off,
it does not allow electrical signals to pass"
Court's Construction: "A circuit element that has two states, on and off. When
on, a switch allows electrical signals to pass unimpeded. When off, it does not
allow electrical signals to pass."
The Court's construction is supported by the specification, which describes a binary onoff switch in which the mercury ball (or mercury pool or ball bearing) either ( 1) engages the
24
This disputed term appears in claims 2, 4, 9, and 11 ofthe '354 patent.
25
This disputed term appears in claim 4 of the '354 patent.
20
electrical contacts at the end of the sensing tube, so that current flows, or (2) does not engage the
electrical contacts, so that current does not flow. (See '354 patent co1.2 11.36-67; id. at co1.5
11.30-50) Contrary to Plaintiffs assertion, nothing in the '354 patent discusses or suggests a
middle state in which there is some level of engagement such that only limited current/voltage is
flowing. Additionally, the Court's construction is consistent with the dictionary definition of an
"electrical switch." (See D.I. 127, Ex. B-19)
Q.
"means ... for energizing said electromagnetic means" 26
Plaintiffs Proposed Construction:
Function: "energizing said electromagnetic means"
Structure: "an electrical circuit including wires or other electrical connectors; or,
an equivalent of the foregoing structure"
Volkswagen's Proposed Construction:
Function: "energizing said electromagnetic means"
Structure: "an electrical circuit including wires or other electrical connectors; or,
an equivalent of the foregoing structure"
ZF Sachs's Proposed Construction:
Function: "energizing said electromagnetic means"
Structure: "an electrical circuit including wires or other electrical connectors; or,
an equivalent of the foregoing structure"
Court's Construction:
Function: "energizing said electromagnetic means"
Structure: "an electrical circuit including wires or other electrical connectors; or,
an equivalent of the foregoing structure"
The parties agree on the construction of this means-plus-function term. The Court will
adopt the parties' agreed upon construction.
R.
"said at least one opening"27
26
This term appears in claim 4 of the '354 patent.
27
This disputed term appears in claim 8 of the '354 patent.
21
Plaintiff's Proposed Construction: "one or more of the openings"
Volkswagen's Proposed Construction: "all of said one or more openings"28
ZF Sachs's Proposed Construction: No construction necessary. Alternatively, if
the Court decides to construe this term, it should be construed as "one or more
openings."
Court's Construction: "all of said one or more openings"
The Court's construction is supported by the plain language of the claim. (See '354
patent col.6 ll.68- col. 7 11.1-11) As already noted, the plate mentioned in claim 8 can contain
more than one opening. Here, the disputed language of claim 8 references the opening(s) of the
plate previously mentioned in the claim by including the word "said." Thus, the plain language
of claim 8 indicates that all of "said" openings will be sealed.
S.
"mercury switch " 29
Plaintiff's Proposed Construction: "device that detects acceleration by means of
movement of a mass through a tube so as to alter the voltage and/or current of an
electrical circuit, wherein the mass is mercury"
Volkswagen's Proposed Construction: No construction necessary. The Court
should apply the ordinary meaning of this term - "an electrical switch in which
mercury can engage two electrical contacts and thereby complete an electrical
circuit."
ZF Sachs's Proposed Construction: "an electrical switch in which the on/off states
of the switch are controlled by the movement of mercury relative to the contacts
of the switch"
Court's Construction: "an electrical switch in which the on/off states of the
switch are controlled by the movement of mercury relative to the contacts of the
switch"
28
Volkswagen proposed this construction at the Markman hearing. (See Tr. at 113)
29
This disputed term appears in claim 15 ofthe '354 patent.
22
The '354 patent explains that the mercury switch may consist of"two sets of contacts at
opposite ends of the tube to be engaged by the mercury" or "two balls of mercury ... adapted to
engage the set of electrical contacts at the ends of the tube when the tube tilts in its direction."
('354 patent col.2 11.36-46) Plaintiffs construction involving detection of acceleration is
unsupported.
T.
"prevent any flow of said fluid" 30
Plaintiffs Proposed Construction: "eliminate flow of said fluid"
Volkswagen's Proposed Construction: "shut off any further flow of said hydraulic
fluid"
ZF Sachs's Proposed Construction: "to stop flow of hydraulic fluid"
Court's Construction: "to stop flow of said hydraulic fluid"
The parties agree on the fundamental construction of this term - stopping the flow of
hydraulic fluid - but merely use different words to express this. The Court will construe this
term using the same language it used in its construction of the related term "prevent flow of said
fluid."
U.
"means for dampening the movement of the piston when the piston is
compressed or extended"31
Plaintiffs Proposed Construction:
Function: "dampening the movement of the piston when the piston is compressed
or extended"
Structure: "(1) a dampening unit comprising a series of springs and openings; or
(2) a dampening unit comprising a series of plates having openings and pop-off
valves; or (3) a dampening unit comprising a computer-operated motor acting on
the piston to decelerate its bump-induced movement; or (4) a series of openings in
30
This disputed term appears in claim 16 ofthe '3 54 patent.
31
This disputed term appears in claim 1 of the ' 15 3 patent.
23
a plate, arranged in substantial circles around a central area of the plate; or (5) a
mechanical spring affixed to the piston and the plate; and/or (6) equivalents of any
of the foregoing"
Volkswagen's Proposed Construction:
Function: "dampening the movement of the piston when the piston is compressed
or extended"
Structure: "(1) a dampening unit comprising a series of springs and openings; or
(2) a dampening unit comprising a series of plates having openings and pop-off
valves; or (3) a dampening unit comprising a computer-operated motor acting on
the piston to decelerate its bump-induced movement; or (4) a series of openings in
the plate, arranged in substantial circles around a central area of the plate; or (5) a
mechanical spring affixed to the piston and the plate, or an equivalent of any of
the foregoing structures (1) through (5)"
ZF Sachs's Proposed Construction:
Function: "dampening the movement ofthe piston when the piston is compressed
or extended"
Structure: "a series of plates, valves, and springs disposed between the piston and
the plate and affixed to the inner wall of the chamber; a series of plates having
valved openings and openings provided with pop-off valves disposed between the
piston and the plate and affixed to the inner wall of the chamber; a plate having a
series of concentric openings and affixed to the inner wall of the chamber; a coil
spring affixed at one end to the plate and at the other end to the piston; and a
computer operated motor acting on the piston to decelerate its movement, and
dampening means having one of these structures and equivalents thereof'
Court's Construction:
Function: "dampening the movement of the piston when the piston is compressed
or extended"
Structure: "(1) a dampening unit comprising a series of springs and openings; or
(2) a dampening unit comprising a series of plates having openings and pop-off
valves; or (3) a dampening unit comprising a computer-operated motor acting on
the piston to decelerate its bump-induced movement; or (4) a series of openings in
a plate, arranged in substantial circles around a central area of the plate; or (5) a
mechanical spring affixed to the piston and the plate; and/or (6) equivalents of any
of the foregoing"
The parties agree on the function ofthis means-plus-function term. Additionally,
although the parties use slightly different wording, the parties agree on the corresponding
structures. The Court's construction is supported by the specification of the '153 patent, which
24
discloses the structures identified within the Court's construction. (See '153 patent col. 7 11.50 col.8 11.25; id. at col.9 11.22-52; see also id., Figs. 2A, 2B, 2C, 9A, 9B)
V.
"being below" 32
Plaintiffs Proposed Construction: "located near the bottom of'
Volkswagen's Proposed Construction: No construction necessary. Court should
apply the ordinary meaning of this term- "being located beneath."
ZF Sachs's Proposed Construction: No construction necessary. However, if the
Court elects to construe this claim element, it should be construed in accordance
with its ordinary meaning, i.e., "the plate and the opening therein are located
below the inner tubular structure."
Court's Construction: "being located beneath"
The Court concludes that it must construe this term because the parties do not agree on its
meaning and their dispute appears to be material. See 02 Micro, 521 F.3d at 1361. The Court's
construction is supported by the plain language of the claim. (See '153 patent col.1 0 11.43-62)
By contrast, Plaintiffs construction improperly imports a limitation from Figure 2 into the claim.
See MBO Labs., 474 F.3d at 1333 ("[P]atent coverage in not necessarily limited to inventions
that look like the ones in the figures .... To hold otherwise would be to import limitations onto
the claim from the specification, which is fraught with 'danger."').
IV.
CONCLUSION
For the above reasons, the Court will construe the disputed claim terms within the
patents-in-suit consistent with this Memorandum Opinion. An appropriate Order follows.
32
This disputed term appears in claim 3 of the ' 15 3 patent.
25
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