Hilti Aktiengesellschaft v. Specified Technologies Inc.
Filing
102
MEMORANDUM ORDER on Parties' Motions for Claim Construction, (D.I. 84 ; D.I. 86 ). (See Memorandum Order for further details.) Signed by Judge Christopher J. Burke on 05/10/2024. (smg)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
HILTI AKTIENGESELLSCHAFT,
Plaintiff,
v.
SPECIFIED TECHNOLOGIES INC.,
Defendant.
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Civil Action No. 22-1383-CJB
MEMORANDUM ORDER
The Court, having reviewed the parties’ motions for claim construction (“motions”), (D.I.
84; D.I. 86), and having considered the legal standards relating to claim construction, see
Vytacera Bio LLC v. CytomX Therapeutics, Inc., Civil Action No. 20-333-LPS-CJB, 2021 WL
4621866, at *2-3 (D. Del. Oct. 7, 2021), hereby addresses the construction of term 1 (the only
remaining term the Court has not yet construed that was addressed in the motions): the
preambles of claim 1 of the asserted patents. (D.I. 83 at 6-7; D.I. 88-1 at 1-3)
The parties’ initially-proposed constructions for term 1 are set out in the chart below:
Term
“A dynamic, thermally
insulating and sealing system
for effectively thermally
insulating and sealing of a
safing slot within a building
construction having a curtain
wall construction defined by
an interior wall surface
including at least one vertical
and at least one horizontal
framing member and at least
one floor spatially disposed
from the interior wall surface
of the curtain wall
construction defining the
Plaintiff’s Proposed
Construction
The preamble is limiting.
Defendant’s Proposed
Construction
Partially Limiting
“A thermally insulating and
sealing system for effectively
thermally insulating and
sealing of a safing slot within
a building construction
having a curtain wall
construction defined by an
interior wall surface including
at least one vertical and at
least one horizontal framing
member and at least one floor
spatially disposed from the
interior wall surface of the
The phrase in the preamble:
“A dynamic, thermally
insulating and sealing system
for effectively thermally
insulating and sealing of a
safing slot within a building
construction having a curtain
wall construction” is not
limiting and need not be
construed.
The remainder of the
preamble is limiting and plain
safing slot extending between
the interior wall surface of the
curtain wall construction and
an outer edge of the floor” 1
curtain wall construction
defining the safing slot
extending between the
interior wall surface of the
curtain wall construction and
an outer edge of the floor,
which system meets the
requirements of standard
method ASTM E 1399-97,
Standard Test Method for
Cyclic Movement and
Measuring the Minimum and
Maximum Joint Widths of
Architectural Joint Systems,
having a movement
classification of class IV”
meaning should apply, which
states: “defined by an interior
wall surface including at least
one vertical and at least one
horizontal framing member
and at least one floor spatially
disposed from the interior
wall surface of the curtain
wall construction defining the
safing slot extending between
the interior wall surface of the
curtain wall construction and
an outer edge of the floor”
As to the limiting part of the
preamble[,] these words and
phrases require no
construction and should be
given their plain meaning
such that they are not limited
to systems that meet the
requirements of “. . . standard
method ASTM E 139997 . . .”, as proposed by
[Plaintiff].
(D.I. 83 at 6-7; D.I. 88-1 at 1-3) The United States Court of Appeals for the Federal Circuit has
held that there are circumstances where one portion of a claim’s preamble can be found to be
limiting while another portion is not. See Bio-Rad Lab’ys, Inc. v. 10X Genomics Inc., 967 F.3d
1353, 1371 (Fed. Cir. 2020); TomTom, Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir. 2015).
And the dispute between the parties here is over whether the entire preamble of claim 1 is
1
This is the preamble of claim 1 of asserted United States Patent No. 10,202,759
(the “'759 patent”). The preamble of claim 1 of the other asserted patent, United States Patent
No. 11,339,566 (the “'566 patent”) is not materially different and will not be reprinted here.
(D.I. 83 at 7-8 & n.3) It is undisputed that the two preambles should be construed in the same
manner. (D.I. 97 at 7-8)
2
limiting (Plaintiff’s position) or whether only a portion of the preamble is limiting (Defendant’s
position). (D.I. 83 at 8, 14)
After reviewing the briefing and discussing the parties’ positions at the March 21, 2024
Markman hearing, (D.I. 97 (hereafter, “Tr.”)), the Court concludes that Defendant’s position is
essentially correct. The Court comes to this conclusion for the following reasons:
•
Plaintiff argues that the first portion of the preamble that
Defendant construes as not limiting is in fact limiting, in part
because this portion provides antecedent basis for the term “safing
slot” (a term also referenced later in the body of the claims). (D.I.
83 at 9, 27-28) However, at the Markman hearing, Defendant
proffered a revised construction, in which Defendant asserted that
only the portion of the preamble up to and including the wording
“thermally insulating and sealing of” should be deemed nonlimiting. (Tr. at 41-42) This alteration to Defendant’s position
(which the Court agrees would be appropriate) thus moots
Plaintiff’s “antecedent basis” argument regarding the term “safing
slot.”
•
Plaintiff also argues in its briefing that the disputed portion of the
preamble should be found to be limiting because it would provide
antecedent basis for four other elements found in claim 1 or claim
2 of the patents: (1) “the horizontal framing member” in claim 1;
(2) “the curtain wall construction” in claim 1; (3) “the floor” in
claim 1; and (4) “the vertical framing member of the curtain wall
construction” in claim 2. (See D.I. 83 at 31) But as Defendant
rightly pointed out, “all of these elements of the claim body find
support from the limiting portion of the preamble proposed by
[Defendant.]” (Id. at 40-41) So this argument of Plaintiff’s did not
really make sense. And in light of this, it appears that despite
Plaintiff’s contentions, the preamble can be “neatly packaged into
two separate portions”—one which is limiting and one which is not
limiting. See Bio-Rad Lab’ys, 967 F.3d at 1371; (D.I. 83 at 40).
•
Plaintiff additionally argues that the disputed portion of the
preamble must be limiting because it uses the term “dynamic.”
Plaintiff asserts that the “dynamic” system referenced therein is
essential to the invention and that this concept is not otherwise
captured by the words in the remaining portion of the claims. (D.I.
3
83 at 8-13, 31-32) 2 Plaintiff also suggests that this reference to a
“dynamic” system in the preamble is an allusion to standard
method ASTM E 1399-97 (the “ASTM E 1399 standard” or the
“standard”). 3 (Id. at 10) Relatedly, Plaintiff proposes that the
preamble’s reference to a “dynamic” system be further construed
in the following way: “which system meets the requirements of
standard method ASTM E 1399-97, Standard Test Method for
Cyclic Movement and Measuring the Minimum and Maximum
Joint Widths of Architectural Joint Systems, having a movement
classification of class IV.” (D.I. 88-1 at 1) Plaintiff is correct that
the asserted patents are rife with references to the system described
therein being a “dynamic” system. (See, e.g., '759 patent at 1; id.,
cols. 3:18, 3:32-33, 3:65-66, 4:53-54; '566 patent at 1; id., cols.
1:17-22, 2:34-35, 5:63, 6:5-6) Indeed, the word “Dynamic” is in
the patents’ titles. ('759 patent at 1; '566 patent at 1) And it is also
true that in a few places, the '759 patent specification refers to a
“dynamic system” as one that “complies with” or is “complying
with” “ASTM E 1399[.]” ('759 patent, cols. 3:7-9, 3:18-19, 7:4344, 7:54-56; D.I. 83 at 10-12, 23, 31) What is less clear, however,
is what it is that would render the claimed system “dynamic”
(including “dynamic” in a manner that “complies” with the ASTM
E 1399 standard). If, for example, the body of claim 1 of the
patents already included a structure that made the claimed system
“dynamic,” then there would be no need to deem the disputed
portion of the preamble limiting simply because it also included
the word “dynamic.” And here, the intrinsic evidence suggests that
what makes the system “dynamic” is the particular structure that is
set out in the claims’ body. For example, when the specification
makes reference to “[t]he dynamic, thermally . . . insulating and
sealing system[,]” including one that “complies with the
requirements of standard method ASTM E 1399,” it repeatedly
describes such a system by simply making reference to structural
limitations found in the body of claim 1 of the patents. ('759
2
See Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1373 (Fed. Cir.
2014) (noting that a factor suggesting that the preamble may be limiting is when it includes the
“only reference in any independent claim to the inventive concept”); see also Catalina Mktg.
Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“[W]hen reciting
additional structure or steps underscored as important by the specification, the preamble may
operate as a claim limitation.”)).
3
The patents explain that the standard—“ASTM Designation: E: 1399-97”
(Reapproved 2005),” which is formally titled “Standard Test Method for Cyclic Movement and
Measuring the Minimum and Maximum Joint Widths of Architectural Joint Systems”—is “used
for simulation of movements of the ground, such as for example an earthquake, or even
movements under high wind load or life load.” ('759 patent, col. 3:9-17; see also D.I. 85, ex. C)
4
patent, cols. 3:17-26 (stating that “there is no system known that is
used in a curtain wall structure that provides a dynamic system
complying with ASTM E 1399, such as for example a curtain wall
structure defined by an interior wall surface, which includes . . .”);
see also id., cols. 3:65-4:7, 4:53-62, 7:50-8:47; see also D.I. 83 at
15; Tr. at 45-46, 48-49, 63-64, 68; Defendant’s Markman
Presentation Slides, Slides 10-11) These portions of the
specification seem to indicate that the inclusion of the structure
claimed in the body of claim 1 is what makes the system
“dynamic” in the manner being referred to in the specification. As
a result, there is no need to import into the meaning of the claims
the additional ASTM E-related phraseology suggested by
Plaintiff’s construction. (Tr. at 44 (Defendant’s counsel explaining
that “the structural components of the claim is the invention, and
that’s the part that is defining what this dynamic system is . . .”)) 4
•
Moreover, as noted above, the ASTM E 1399 standard is
repeatedly mentioned by name in the '759 patent specification.
There are also a few portions of that patent’s specification that
make reference to a system having a movement classification of
“class IV[.]” (See, e.g., '759 patent, cols. 3:10-11, 3:41, 7:49) So
if the patentee wanted to claim a system in the '759 patent that
captured certain additional specific testing requirements discussed
in the ASTM E 1399 standard, or if it wanted to claim a system
requiring a movement classification of “class IV,” then it surely
knew how to do so. For example, in claim 1 of that patent, it could
have made specific reference to “a movement classification of
class IV.” But it did not. This suggests that such more specific
concepts were not meant to be claimed. (Tr. at 16-17); cf.
Wonderland Nurserygoods Co. v. Baby Trend, Inc., Case No. 5:14cv-01153-JWH-SPx, 2020 WL 13680678, at *5 (C.D. Cal. Dec.
30, 2020).
4
During the Markman hearing, Plaintiff’s counsel disputed the idea that a
“dynamic” system could simply be a system with the type of structure described in the body of
claim 1 of the patents. This is so, counsel stated, because “‘dynamic’ is a [reference to] a
particular type of movement” and the structure set out in the body of claim 1 simply discloses
what elements make up the claimed “curtain wall construction”—and do not describe how the
system is “going to move.” (Tr. at 20) However, the record does not clearly support Plaintiff’s
assertion. For example, the “safing slot”—a term set out in the limiting portion of the preamble
and in the body of claim 1—is said by the patent specification to “compensate dimensional
tolerances of the concreted floor and to allow movement between the floor and the façade
element caused by load, such as by life, seismic or wind load.” ('759 patent, col. 3:27-30; see
also Tr. at 21) And so even if a “dynamic” system is one that will move in a particular way, it
appears that the elements of claim 1 (including a system that makes use of the claimed “safing
slot”) could still be describing what it is that makes the system “dynamic.”
5
•
Also notable is the fact that the '566 patent (which, like the '759
patent, includes claims to a “dynamic, thermally insulating sealing
system”) makes absolutely no reference to the ASTM E 1399
standard. The '566 patent’s application was filed later than the
'759 patent and it was also issued later than the '759 patent. ('759
patent at 1; '566 patent at 1) When one looks at the respective
content of both patents’ specifications, the fact that the '566 patent
makes no mention of the standard (after the '759 patent made
numerous references to it) seems like a conscious choice by the
patentee. (D.I. 83 at 20-21, 44 (Defendant asserting that this
indicates that Plaintiff “deliberately deleted every single reference
to [the ASTM E 1399 standard] from the '566 patent specification”
or “intentionally removed” such references from the '566 patent);
Tr. at 28) The act of removing any reference to the standard from
this patent certainly does not seem like a signal that the patentee
intended to claim reliance on particular specific testing or
performance requirements set out in that standard (such as a
requirement for class IV movement). If anything, it appears to
indicate that such requirements are not intended to be claimed
therein. Put another way, if (as Plaintiff asserts) the use of the
word “dynamic” in claim 1 of the '566 patent was meant to
incorporate some essential (but otherwise unclaimed) aspect of the
ASTM E 1399 standard, then it seems very strange that the way
the patentee signaled this was by deliberately scrubbing the patent
of any possible reference to that very same standard. 5
For the foregoing reasons, the Court essentially adopts Defendant’s proposed
construction in the manner that follows: (1) The preamble is partially limiting.; (2) The first
portion of the preamble up to the words “a safing slot” (“A dynamic, thermally insulating and
sealing system for effectively thermally insulating and sealing of . . . ”) is not limiting.; and (3)
The remaining portion of the preamble (“. . . a safing slot within a building construction having a
curtain wall construction defined by an interior wall surface including at least one vertical and at
least one horizontal framing member and at least one floor spatially disposed from the interior
5
For what it is worth, in overcoming rejections to the patents’ claims during
prosecution, Plaintiff never argued that the claims were limited to certain portions of the ASTM
E 1399 standard. (D.I. 83 at 25-27, 37, 41)
6
wall surface of the curtain wall construction defining the safing slot extending between the
interior wall surface of the curtain wall construction and an outer edge of the floor”) is limiting. 6
The Court sees no need to further construe this limiting portion of the preamble at this time (and
the parties make no request that it do so).
Dated: May 10, 2024
____________________________________
Christopher J. Burke
UNITED STATES MAGISTRATE JUDGE
6
Again here, the Court reprints only the preamble from claim 1 of the '759 patent.
But its decision should be applied to the (very similar) preamble of claim 1 of the '566 patent.
7
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