Gentex Corporation v. Revision Military Ltd. et al

Filing 116

MEMORANDUM ORDER REGARDING CLAIM CONSTRUCTION (U.S. Patent No. 10,638,807). Signed by Judge Maryellen Noreika on 4/27/2021. (dlw)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
GENTEX CORPORATION,
Plaintiff,
v.
GALVION LTD. and GALVION INC.,
Defendants.

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C.A. No. 19-921 (MN)

MEMORANDUM ORDER
At Wilmington this 27th day of April 2021:
As announced at the hearing on March 5, 2021, IT IS HEREBY ORDERED that the
disputed claim terms of U.S. Patent No. 10,638,807 (“the ‘807 Patent”) are construed as follows:
1.

“the shroud mount coupled to the front portion of the cover” / “the first side
rail mount coupled to the left side portion of the cover” / “the second side
rail mount coupled to the right side portion of the cover” shall be given its
plain and ordinary meaning (‘807 Patent, cl. 17); and

2.

“the shroud mount, first side rail mount, and second side rail mount being
coupled to the component by fasteners which extend through the shroud
mount, first side rail mount, second side rail mount, through the one or more
holes, and through the exterior surface of the helmet” shall be given its plain
and ordinary meaning (‘807 Patent, cl. 17).

The parties briefed the issues, (see D.I. 111), and submitted a Joint Claim Construction
Chart containing intrinsic evidence, (see D.I. 101). The Court carefully reviewed all submissions
in connection with the parties’ contentions regarding the disputed claim terms, heard oral
argument, (see D.I. 115), and applied the following legal standards in reaching its decision.
I.

LEGAL STANDARDS
A.

Claim Construction

“[T]he ultimate question of the proper construction of the patent [is] a question of law,”
although subsidiary fact-finding is sometimes necessary. Teva Pharms. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831, 837-38 (2015). “[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.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (internal
citations and quotation marks omitted). Although “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. Id. at 1314. “[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 . . .
[as] 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). 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 inventor’s lexicography governs.” Phillips, 415 F.3d at
1316. “Even when the specification describes only a single embodiment, [however,] 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) (internal quotation marks
omitted) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).
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) (en banc), 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,

2

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, courts “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. 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.”
Phillips, 415 F.3d at 1318. 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, although 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).
B.

Indefiniteness

Section 112 of the Patent Act requires a patent applicant to “particularly point out and
distinctly claim the subject matter” regarded as the applicant’s invention. 35 U.S.C. § 112 ¶ 2.
“The primary purpose of the definiteness requirement is to ensure that the claims are written in
3

such a way that they give notice to the public of the extent of the legal protection afforded by the
patent, so that interested members of the public, e.g. competitors of the patent owner, can
determine whether or not they infringe.” All Dental Prodx, LLC v. Advantage Dental Prods., Inc.,
309 F.3d 774, 779-80 (Fed. Cir. 2002) (citing Warner-Jenkinson Co. v. Hilton-Davis Chem. Co.,
520 U.S. 17, 28-29 (1997)). Put another way, “[a] patent holder should know what he owns, and
the public should know what he does not.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., Ltd., 535 U.S. 722, 731 (2002).
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 reasonable
certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). 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).
Like claim construction, definiteness is a question of law, but the Court must sometimes
render factual findings based on extrinsic evidence to resolve the ultimate issue of definiteness.
See, e.g., Sonix Tech. Co. v. Publications Int’l, Ltd., 844 F.3d 1370, 1376 (Fed. Cir. 2017); see also
Teva, 135 S. Ct. at 842-43. “Any fact critical to a holding on indefiniteness . . . must be proven
by the challenger by clear and convincing evidence.” Intel Corp. v. VIA Techs., Inc., 319 F.3d
1357, 1366 (Fed. Cir. 2003); see also Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338
(Fed. Cir. 2008).

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II.

THE COURT’S RULING
The Court’s rulings regarding the disputed claim terms of the ’807 Patent were announced

from the bench at the conclusion of the hearing as follows:
. . . So thank you for the arguments today. They were
helpful. This is our second claim construction hearing. At issue
today we have one patent and two disputed claim terms.
I am prepared to rule on each of the disputes. I will not be issuing a
written opinion, but I will issue an order stating my rulings. As I
did with my ruling on the other patents, I want to emphasize before
I announce my decisions that although I am not issuing a written
opinion, we have followed a full and thorough process before
making the decisions I am about to state. I have reviewed the patent
in dispute. I have also reviewed the portions of the prosecution
history, the dictionary definition, the invalidity contentions, and the
expert declarations of Nicholas Shewchenko and Dr. James Zheng,
all of which were included in the joint appendix. There was full
briefing on each of the disputed terms. And there has been argument
here today. All of that has been carefully considered.
Now as to my rulings. Again, I am not going to read into the record
my understanding of claim construction law and definiteness
generally. I will incorporate the law I set out in the Markman Order
I issue.
Now the disputed terms:
The first term consists of three similar phrases: “the shroud mount
coupled to the front portion of the cover”; “the first side rail mount
coupled to the left side portion of the cover”; and “the second side
rail mount coupled to the right side portion of the cover” all of which
are in claim 17. Plaintiff asserts that these phrases should be given
their plain and ordinary meaning. Defendants argue that the
disclosure lacks written description for this term or, in the
alternative, that the term should be construed as “the (shroud mount,
first side rail mount, or second side rail mount) coupled to the (front,
left side, right side) portion of the cover using a backing plate.”
The dispute centers on whether a backing plate must be used to
couple the mounts to the helmet cover. Here, I agree with Plaintiff
that the term should be afforded its plain and ordinary meaning.
The claim language supports Plaintiff’s proposed construction. The
claim states simply that each mount is “coupled to” a certain portion
of the cover. Nothing in the language of the claim suggests that a
5

backing plate is used to couple the mounts to the cover. Other
claims do, but claim 17 does not.
The specification discusses the use of the backing plate in the
context of certain embodiments.
It states that, “in some
embodiments, one or more mounting devices 20, 22 are attached to
cover . . . through the use of fasteners . . . and one or more backing
plates.”[1] Yet it also states that “[i]n one embodiment, only
cover . . . couples mounting devices 20, 22 to helmet shell,”[2] with
no mention of a backing plate. Thus, the specification does not
clearly limit the “coupling” to use of a backing plate.
Defendants argue that the only embodiments described are those in
which mounts are coupled to the helmet cover using a backing plate.
Even if that were so, however, it would not necessarily limit the
definition of “couple to” as it is used in the claim.
The ‘807 Patent does not include an explicit redefinition or
disclaimer which would make it appropriate to read in such a
limitation.[3] Rather, the specification explicitly states that “this
invention is not limited to the exemplary embodiments shown and
described, but it is intended to cover modifications within the spirit
and scope of the present invention as defined by the claims.”[4]
Thus, heeding Federal Circuit precedent cautioning against reading
limitations from embodiments in the specification into the claims,[5]
I will not do so here.
Extrinsic evidence in the form of dictionary definitions also supports
Plaintiff’s proposed construction. The Joint Appendix includes the
Oxford English Dictionary’s definition of “couple” which is defined
as “tie or fasten . . . together,” “fasten or link together,” or
alternatively as “join or connect in any way.”[6] Other dictionaries
1

(Col. 2, ll. 41–44).

2

(Col. 5, ll. 2–4).

3

B.E. Tech., L.L.C. v. Sony Mobile Commc'ns (USA) Inc., 657 F. App’x 982, 988 (Fed. Cir.
2016) (“we have rejected the notion that claim terms are limited to the embodiments
disclosed in the specification, absent redefinition or disclaimer.”) (citing Phillips, 415 F.3d
at 1316, 1323).

4

(Col. 6, ll. 22–25).

5

See, e.g., Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004);
Phillips, 415 F.3d at 1323.

6

(D.I. 111 at JA073).
6

define “couple” as “fasten together,”[7] or “fasten, link, or associate
together [or] join [or] connect.”[8] It is clear that the verb “couple”
has a readily understood meaning of connecting or fastening things
together, and does not require a particular item, such as a backing
plate, to facilitate that connection.
As to the written description argument, Defendants bear the burden
of proof and, on the record before me, I am not convinced that they
have shown by clear and convincing evidence that the term “lacks
written description.” But Defendants may continue to pursue this
issue and raise it later, if appropriate.
The second term is “the shroud mount, first side rail mount, and
second side rail mount being coupled to the component by fasteners
which extend through the shroud mount, first side rail mount, second
side rail mount, through the one or more holes, and through the
exterior surface of the helmet” in claim 17. Plaintiff again proposes
that this term be given its plain and ordinary meaning. Defendants
argue that the term is indefinite or, in the alternative, that it should
be construed to mean “the shroud mount, first side rail mount, and
second side rail mount each being attached to the component by at
least one fastener which goes through that mount, through the
component, through the one or more holes, and through the exterior
surface of the helmet.” The dispute centers on which items the
fasteners must extend through and in what configuration.
For a claim to be held invalid for indefiniteness, there must be clear
and convincing evidence.[9] Here, as with written description, on
the record I have, Defendant has not shown by clear and convincing
evidence that a skilled artisan would fail to grasp what the term
means after reading the claim language and the specification.
As to its construction, I agree with Plaintiff and will give this term
its plain and ordinary meaning.
Defendants’ proposed alternative construction seeks to read in a
number of limitations that have no support in the claim language.
Most notably, Defendants argue that the fasteners must extend
through the component because they are designed to couple the
7

(Couple, MERRIAM-WEBSTER, https://www.merriam-webster.com/dictionary/couple (last
visited Mar. 2, 2021)).

8

(Couple, DICTIONARY.COM, https://www.dictionary.com/browse/couple (last visited
Mar. 2, 2021)).

9

See Nautilus, 572 U.S. at 912 n.10 (citing Microsoft Corp. v. i4i Ltd. Partnership, 564 U.S.
91, 95 (2011))).
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component to the mounts.[10] The claim lists five items through
which the fasteners might pass: one or more of the mounts, the holes,
and the surface of the helmet. The patentee could have added the
component to this list, but it did not do so. Thus, the claim does not
support reading in this limitation.
Nor does the specification require the fasteners to extend through
the component. For example, the specification states that “[i]n one
embodiment, fasteners . . . include a projection from backing
plate . . . or mounting device.”[11] The fact that a fastener may
project from one of the items it fastens contradicts Defendants’
argument that the fasteners must pass through the component to
couple it to the mounts. Therefore, I will not add Defendants’
suggested limitation.
The remainder of Defendants’ proposed construction seeks to
substitute claim language with what, in my view, are synonyms for
the patentee’s language. Defendants seek to change “couple to” to
“attached to,” “fasteners” to “at least one fastener,” and “goes
through” to “extends through.” I do not see a need for an explicit
construction of what is readily understood from the language of the
claim.
Thus, as I have already stated, Defendants have not shown that this
term is indefinite on the current record and I will give this term its
plain and ordinary meaning.

The Honorable Maryellen Noreika
United States District Judge

10

(D.I. 111 at 17).

11

(Col. 4, ll. 49–53).
8