American Axle & Manufacturing, Inc. v. Neapco Holdings LLC et al

Filing 113

MEMORANDUM OPINION re Claim Construction. Signed by Judge Leonard P. Stark on 4/7/2017. (etg)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
AMERICAN AXLE & MANUFACTURING,
INC.,
Plaintiff,
v.
NEAPCO HOLDINGS LLC and NEAPCO
DRIVELINES LLC,
Defendants.

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C.A. No. 15-1168-LPS

John W. Shaw and Jeffrey T. Castellano, SHAW KELLER LLP, Wilmington, DE
James R. Nuttall, Katherine H. Johnson, Randal S. Alexander, and Robert F. Kappers, STEPTOE
& JOHNSON LLP, Chicago, IL
Boyd Cloern, STEPTOE & JOHNSON LLP, Washington, DC
Attorneys for Plaintiff.

Melanie K. Sharp and Robert M. Vrana, YOUNG CONAWAY STARGATT & TAYLOR, LLP,
Wilmington, DE
J. Michael Huget, Brian J. Arnold, and Sarah E. Waidelich, HONIGMAN MILLER
SCHWARTZ AND COHN LLP, Ann Arbor, MI
Attorneys for Defendants.

MEMORANDUM OPINION

April 7, 2017
Wilmington, Delaware

STARK, U.S. District Judge:
Plaintiff American Axle & Manufacturing, Inc. (“AAM”) brought this patent infringement
suit against Defendants Neapco Holdings LLC and Neapco Drivelines LLC (collectively,
“Neapco”), alleging that Neapco’s propeller shaft assemblies with liners for certain GM trucks
infringe AAM’s U.S. Patent Nos. 7,774,911; 8,176,613; and 8,528,180. The asserted patents
describe and claim methods for reducing noise and vibration by inserting tuned liners into a shaft
assembly of a driveline system.1 Presently before the Court is the issue of claim construction.
The parties submitted technology tutorials (see D.I. 67, 68) and claim construction briefs (see
D.I. 69, 70, 75, 76). Both parties also submitted expert declarations (see D.I. 69 Ex. D, 71, 75
Ex. H, 77), which the Court has considered. The Court held a claim construction hearing on
February 7, 2017. (See D.I. 96 (“Tr.”))
I.

LEGAL STANDARDS
The ultimate question of the proper construction of a patent is a question of law. See Teva

Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837 (2015) (citing Markman v. Westview
Instruments, Inc., 517 U.S. 370, 388-91 (1996)). “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).
“[T]here is no magic formula or catechism for conducting claim construction.” Id. at 1324.
Instead, the court is free to attach the appropriate weight to appropriate sources “in light of the
statutes and policies that inform patent law.” Id.

1

Because the specifications are nearly identical, the Court’s citations are generally to the
’911 patent.
1

“[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 of the 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
term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
2

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.” Hill-Rom Servs., Inc. v. Stryker
Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358
F.3d 898, 906 (Fed. Cir. 2004)) (internal quotation marks omitted).
In addition to the specification, a court “should also consider the patent’s prosecution
history, if it is in evidence.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
1995), aff’d, 517 U.S. 370 (1996). 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 of the 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.
In some cases, “the district court will need to look beyond the patent’s intrinsic evidence
and to consult extrinsic evidence in order to understand, for example, the background science or
the meaning of a term in the relevant art during the relevant time period.” Teva, 135 S. Ct. at
841. Extrinsic evidence “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
3

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 of a person of 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.” Id. 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.” Id. 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.” Id. at 1318-19. Where the intrinsic record unambiguously describes the
scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90
F.3d at 1583).
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)
(quoting Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).

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II.

CONSTRUCTION OF DISPUTED TERMS
A.

Tuning Terms
“tuning at least one liner to attenuate at least two types of vibration
transmitted through the shaft member”2

AAM
“controlling characteristics of at least one liner, such that the at least one liner is effective in
reducing vibration of a shaft member at a relevant frequency, to reduce at least two types of
vibration transmitted through the shaft member”
Neapco
“adjusting at least one liner to target frequencies to dampen at least two types of vibration
transmitted through the shaft member”
Court
“controlling characteristics of at least one liner to configure the liner to match a relevant
frequency or frequencies to reduce at least two types of vibration transmitted through the shaft
member”
“providing a liner tuned to attenuate a plurality of types of vibration
transmitted through the shaft member”3
AAM
“providing a liner having characteristics controlled, such that the liner is effective in reducing
vibration of a shaft member at a relevant frequency, to reduce a plurality of types of vibration
transmitted through the shaft member”
Neapco
“providing a liner that is adjusted to target frequencies to dampen a plurality of types of
vibration transmitted through the shaft member”
Court
“providing a liner having characteristics configured to match a relevant frequency or
frequencies to reduce a plurality of types of vibration transmitted through the shaft member”

2

This term appears in claim 1 of the ’911 patent.

3

This term appears in claim 17 of the ’613 patent.
5

“tuning a mass and stiffness of at least one liner”4
AAM
“controlling a mass and stiffness of at least one liner such that the at least one liner is effective
in reducing vibration of a shaft member at a relevant frequency”
Neapco
“adjusting a mass and stiffness of at least one liner to target a frequency”
Court
“controlling a mass and stiffness of at least one liner to configure the liner to match a relevant
frequency or frequencies”
“liner having a mass and a stiffness that are tuned to the driveline system”5
AAM
“liner having a mass and stiffness controlled such that the liner is effective in reducing
vibration of a shaft member at a relevant frequency of the driveline system”
Neapco
“liner having a mass and a stiffness that are adjusted to target a frequency of the driveline
system”
Court
“liner having a mass and a stiffness configured to match a relevant frequency or frequencies of
the driveline system”
“tuned resistive absorber for attenuating shell mode vibrations”6
AAM
“a liner whose characteristics are controlled such that the liner is effective in reducing shell
mode vibration of a shaft member at a relevant frequency by deforming as vibration energy
from the shaft member is transmitted through the liner so that the liner absorbs the vibration
energy”

4

This term appears in claims 22 and 36 of the ’911 patent.

5

This term appears in claim 13 of the ’180 patent.

6

This term appears in claims 22 and 36 of the ’911 patent and claim 13 of the ’180 patent.
6

Neapco
“absorber that is adjusted to target a frequency and that deforms as vibration energy is
transmitted through it to absorb the vibration energy to dampen shell mode vibrations”
Court
“a liner having characteristics configured to match a relevant frequency or frequencies to
deform as vibration energy is transmitted through the liner to absorb the vibration energy to
dampen shell mode vibrations”
“tuned reactive absorber for attenuating bending mode vibrations”7
AAM
“a liner whose characteristics are controlled such that the liner is effective in reducing bending
mode vibration of a shaft member at a relevant frequency by oscillating in opposition to
vibration energy of the shaft member to cancel out a portion of the vibration energy”
Neapco
“absorber that is adjusted to target a frequency and that oscillates in opposition to vibration
energy to cancel out a portion of the vibration energy to dampen bending mode vibrations”
Court
“a liner having characteristics configured to match a relevant frequency or frequencies to
oscillate in opposition to vibration energy to cancel out a portion of the vibration energy to
dampen bending mode vibrations”
“tuned reactive absorber for attenuating at least one of bending mode
vibrations and torsion mode vibrations”8
AAM
“a liner whose characteristics are controlled such that the liner is effective in reducing at least
one of a bending mode vibration and torsion mode vibration of a shaft member at a relevant
frequency by oscillating in opposition to vibration energy of the shaft member to cancel out a
portion of the vibration energy”
Neapco
“absorber that is adjusted to target a frequency and that oscillates in opposition to vibration
energy to cancel out a portion of the vibration energy to dampen at least one of bending mode
vibrations or torsion mode vibrations”

7

This term appears in claim 22 of the ’911 patent.

8

This term appears in claim 36 of the ’911 patent and claim 13 of the ’180 patent.
7

Court
“a liner having characteristics configured to match a relevant frequency or frequencies to
oscillate in opposition to vibration energy to cancel out a portion of the vibration energy to
dampen at least one of bending mode vibrations or torsion mode vibrations”
The parties’ disputes relating to these various claim terms center on the meaning of
“tuning” and “tuned.” Neapco contends that tuning refers to adjusting a liner to a target
frequency, while AAM argues that tuning requires controlling characteristics such that the liner is
effective in reducing vibration. (See D.I. 76 at 3) The Court agrees, in part, with both parties.
The specification makes clear that tuning a liner involves matching a natural frequency of
the liner to a relevant frequency or frequencies of the propshaft assembly. The specification
indicates that liners “are preferably tuned to a natural frequency corresponding to” shell modes,
bending modes, or torsion modes of vibration of the propshaft. ’911 patent col. 7 ll. 44-55. The
specification also notes that “it may not be possible to exactly tune the liner [] to the two or more
relevant frequencies associated with a given propshaft assembly,” and so a liner “will be
considered to be tuned to a relevant frequency if it is effective in attenuating vibration at the
relevant frequency.” Col. 8 ll. 24-31. For example, the specification suggests that a liner “can be
considered to be tuned to a relevant frequency if a frequency at which it achieves maximum
attenuation is within ±20% of that relevant frequency.” Col. 8 ll. 31-34.
The patent makes equally clear that tuning is achieved by controlling certain physical
properties of the liner. See col. 7 ll. 56-59 (“[V]arious characteristics of the liner [] can be
controlled to tune its damping properties in the shell mode and in one or both of the bending
mode and the torsion mode.”). The specification details some of the characteristics that may be
controlled to result in a tuned liner:

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mass, length and outer diameter of the liner 204, diameter and wall
thickness of the structural portion 300, material of which the
structural portion 300 was fabricated, the quantity of the resilient
members 302, the material of which the resilient members 302 was
fabricated, the helix angle 330 and pitch 332 with which the
resilient members 302 are fixed to the structural portion 300, the
configuration of the lip member(s) 322 of the resilient member
302, and the location of the liners 204 within the shaft member
200.
Col. 7 l. 60 - col. 8 l. 2. The specification, therefore, teaches tuning a liner by controlling certain
characteristics of that liner, such that the liner attenuates certain vibrations of the propshaft. See
col. 8 ll. 29-31.
The Court is persuaded that “tuning” must incorporate both of these concepts.
Accordingly, the Court will construe, for instance, “tuning at least one liner to attenuate as least
two types of vibration transmitted through the shaft member” to mean “controlling characteristics
of at least one liner to configure the liner to match a relevant frequency or frequencies to reduce
at least two types of vibration transmitted through the shaft member.”
B.

Indefiniteness
“positioning the at least one liner within the shaft member such that the at
least one liner is configured to damp shell mode vibrations in the shaft
member by an amount that is greater than or equal to about 2%”9 /
“positioning the liner within the shaft member to damp shell mode vibration
by an amount that is greater than or equal to about 2%”10

AAM
plain and ordinary meaning, no construction necessary
Neapco
Indefinite

9

This term appears in claim 1 of the ’911 patent.

10

This term appears in claim 17 of the ’613 patent.
9

Court
Indefinite
“tuned to within about ± 20% [15%, 10%, 5%] of a bending mode natural
frequency of the shaft assembly as installed in the driveline system”11 /
“tuned to within about ± 20% [15%, 10%, 5%] of the natural frequency of
the driveline system in at least one of the bending mode and the torsion
mode”12
AAM
plain and ordinary meaning, no construction necessary
Neapco
Indefinite
Court
Indefinite
Neapco contends that these terms are indefinite because the claims and the specification
fail to provide any guidance about the testing and calculation methods that should be performed
to determine whether a system practices these claim elements. (See D.I. 70 at 17-18) In
particular, Neapco – supported by expert testimony – argues that an ordinarily skilled artisan
would not know (1) the baseline state from which damping is measured; (2) whether to use static
or dynamic testing; (3) what test conditions to use, such as boundary conditions or temperature;
and (4) how to calculate the damping amount. (See id. at 18-20; D.I. 76 at 12-14)
A patent claim is indefinite if, “viewed in light of the specification and prosecution
history, [it fails to] inform those skilled in the art about the scope of the invention with

11

This term appears in claims 1-4 of the ’911 patent.

12

This term appears in claims 17-20 of the ’613 patent.
10

reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014).13
A claim may be indefinite if the patent does not convey with reasonable certainty how to measure
a claimed feature. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341 (Fed. Cir.
2015). But “[i]f such an understanding of how to measure the claimed [feature] was within the
scope of knowledge possessed by one of ordinary skill in the art, there is no requirement for the
specification to identify a particular measurement technique.” Ethicon Endo-Surgery, Inc. v.
Covidien, Inc., 796 F.3d 1312, 1319 (Fed. Cir. 2015).
AAM acknowledges that the patent is devoid of information and instruction as to how to
assess the amount of damping in a system and how to determine the natural frequencies of a
bending or torsion mode of a shaft assembly. AAM contends, however, that a person of skill in
the art would know how to measure these properties. Further, AAM argues that a person of skill
in the art would understand that “[b]ending and torsion mode frequencies and the amount of shell
mode damping in the system are natural properties that can be measured and do not change based
on what test is used.” (D.I. 75 at 12) Thus, it is AAM’s view that a person of skill in the art
independently possesses the knowledge needed to measure the claimed features, making
explication in the patent unnecessary.
AAM’s position is premised on the assertion that a person of ordinary skill knows that the
relevant properties do not change based on test conditions or the test used. (See D.I. 75 at ¶ 11)
The Court is not persuaded that this assumption is correct.
The patent itself states that “those of ordinary skill in the art will appreciate that the
13

The parties disagree as to the identity of a person of ordinary skill in the art, but they
agree that it is not necessary for the Court to resolve that dispute in order to construe the claims.
(See D.I. 69 at 4; D.I. 70 at 11)
11

bending mode natural frequency is a function of not only the propshaft assembly [], but also of
the ‘boundary conditions’ (i.e., the manner in which the propshaft assembly [] is coupled to the
driveline []).” ’911 patent col. 6 ll. 21-25 (emphasis added). The patent similarly states that
“those of ordinary skill in the art will appreciate that the natural torsion frequency is a function
of not only the propshaft assembly [], but also of the first and second driveline components
(e.g., the transmission [] and the rear axle []) to which the propshaft assembly is coupled).” Col.
6 ll. 36-40 (emphasis added). Thus, the patent makes explicit that these frequencies will change
depending on the boundary conditions used in a given test.
Further, the patent describes a number of real-world excitation sources of drivelines
installed in vehicles, including “driveline imbalance and/or run-out, fluctuations in engine torque,
engine idle shake, and motion variation in the meshing gear teeth of the hypoid gear set.” Col. 1
ll. 24-26. The patent goes on to explain that “[m]otion variation is typically not constant,” and
“will typically vary as a function of load, temperature, gearset build position, and break-in wear.”
Col. 1 ll. 33-35. The patent then states that “[t]he various excitation sources can typically cause
the propshaft to vibrate.” Col. 1 ll. 42-43. That the patent describes various excitation sources –
and how those excitation sources vary under different conditions – suggests that those excitation
sources may also be expected to play some role in the extent to which the propshaft vibrates. Yet
the patent provides no teaching as to how those excitation sources should be set. This results in
the very real possibility that persons of ordinary skill in the art – lacking guidance as to, for
example, the “load, temperature, gearset build position, and break-in wear” to be used when
assessing a potential embodiment of the claims – would not have reasonable certainty as to
whether a particular device is within or without the scope of the patent’s claims.
12

Accordingly, the Court rejects AAM’s assertion that the relevant properties do not change
based on test conditions used to measure them. Instead, the Court is persuaded that these
properties – while natural properties that may not change once test conditions are fixed – may
vary based on how a test is designed.14 The parties’ experts agree that there are a number of
variables and considerations that go into designing a test, including boundary conditions,
excitation source, static versus dynamic testing, and temperature. (See D.I. 71 at ¶¶ 18-24; D.I.
69 Ex. D at ¶ 22) But the patent does not describe any set of testing conditions that can be used
to measure the claimed features.
AAM contends that the patent discloses some of the test conditions that should be
employed when measuring damping or natural frequencies. For instance, AAM argues that the
claims and specification make clear to one of ordinary skill in the art that the proper boundary
condition is the propshaft installed in the driveline system. (See D.I. 75 at 13) But, even if some
test conditions are revealed, others plainly are not – for example, the temperature at which the
relevant measurements are taken. AAM simply declares those undisclosed conditions to be
irrelevant without explaining how a person of skill in the art would select appropriate conditions
and without establishing (or even asserting) that there is a standard set of conditions employed in
this industry. (See, e.g., D.I. 75 Ex. H at ¶ 15) As the record supports a finding that conditions
such as temperature will impact properties such as damping or vibrational frequencies – for
14

See, e.g., D.I. 71 at ¶ 18 (“[A] system designer could prepare a set of test conditions and
measurement protocols and determine that a system meets the claimed damping amounts.
Another designer could prepare a different set of test conditions and measurement protocols and
determine that the exact same system does not meet the damping amounts. Neither the claims
nor specification in the patents-in-suit provides any guidance to determine whether a system
practices these claim elements. Whether a system meets these claim elements is left to the
subjective choice of the engineer in preparing test conditions and methodologies.”).
13

example, these properties are expected to change depending on whether the vehicle is being
tested at 100° F or 10° F – and whether the claims are satisfied depends (in part) on such
properties, yet the patent is silent as to such testing conditions (e.g., at which temperature to test),
it follows that a POSA would lack reasonable certainty as to the scope of the invention.15 (See
Tr. at 54-55, 69-70; D.I. 71 at ¶ 24)
Accordingly, the Court finds by clear and convincing evidence that these terms are
indefinite.
III.

CONCLUSION
The Court construes the disputed terms as explained above. An appropriate Order

follows.

15

Although sometimes a “patent is not rendered invalid on the ground that the inventors
failed to specify the method to be used in measuring the [claimed feature] set forth in the
claims,” PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1563 (Fed. Cir. 1996), the
Court is not persuaded that that is the case here. The pre-Nautilus cases cited by AAM are not
persuasive. (See D.I. 75 at 10-11) After Nautilus, “the existence of multiple methods leading to
different results without guidance in the patent or the prosecution history as to which method
should be used renders the claims indefinite,” where a person of skill in the art would not have
knowledge regarding which test to select. Dow Chem. Co. v. Nova Chems. Corp. (Canada), 803
F.3d 620, 634 (Fed. Cir. 2015). Here, the Court finds that there are a number of test methods and
conditions that can be employed, and the evidence does not show that most or all persons of skill
in the art would know to implement the same conditions. As discussed above, different test
conditions are expected to give different results.
14