Gatearm Technologies, Inc. v. Access Masters, LLC et al

Filing 99

ORDER ADOPTING REPORT AND RECOMMENDATIONS re 95 Report and Recommendations. Signed by Judge Robert N. Scola, Jr on 5/23/2018. (mc)

United States District Court
for the
Southern District of Florida
Gatearm Technologies, Inc.,
Plaintiff,
v.
Access Masters, LLC, and Blacksky
Technologies, Inc. Defendants.

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) Civil Action No. 14-62697-Civ-Scola
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Order Adopting Magistrate’s Report and Recommendation
This matter was referred to United States Magistrate Judge Alicia M.
Otazo-Reyes for a report and recommendation on the Plaintiff’s motion to
reopen, for an order to show cause why Defendants should not be held in
contempt, and to enforce the consent judgment (Mot., ECF No. 59). On
January 4, 2018, Judge Otazo-Reyes issued a report, recommending that the
Court adopt the Defendants’ claim construction. (R. & R., ECF No. 95.) The
Plaintiff filed objections to the report (ECF No. 97), to which the Defendants
responded (ECF No. 98). Having considered Judge Otazo-Reyes’s report, the
record in this case, and the relevant legal authorities, this Court adopts Judge
Otazo-Reyes’s report (ECF No. 95) for the reasons set forth below.
1. Background
This case involves claims of patent infringement of two patents
(8,845,125 (’125 patent) and 9,157,200 (’200 patent)) for LED arms for vehicle
and pedestrian traffic gates. (See Second Am. Compl., ECF No. 36.) The
Plaintiff provides access control products, including LED gate arms, and is the
owner of the ’125 and ’200 patents. Essentially, the Plaintiffs’ gate arms feature
small outer cavities on either side that serve as housings for strips of LED
lights. The Defendant Access Masters, LLC (“Access Masters”) competes with
the Plaintiff in the marketing and distribution of security products, including
LED gate arms. The Defendants Blacksky Technologies, Inc. (“Blacksky”) and
Gatearms.com distribute Access Masters products. The Plaintiff alleges that the
Defendants collectively infringed the ’125 and ’200 patents by manufacturing
and selling a similar LED gate arm. The design at issue is depicted as follows in
the ’125 and ’200 patents:

(Fig. 7)

(Fig. 9)

The Defendants’ accused product, which the Plaintiff contends infringed its
patents is pictured below:

The parties participated in mediation and settled this case in early 2016.
(See ECF No. 52.) Following the parties’ settlement, the Court entered a
consent decree that permanently enjoins the Defendants from “manufacturing,
advertising, marketing, distributing, selling, offering to sell, importing or
exporting the accused ‘LED Arm for a Gate’ or any vehicle barrier system with
an illuminating gate arm that would infringe any valid and enforceable claim”
of the ’125 or ’200 patents. (ECF No. 53.) Thus, the Court did not have an
opportunity to engage in any substantive analysis of the patents, or otherwise
determine whether an infringement occurred. After entry of the consent decree,
the Court closed this case.

Less than nine months later, the Plaintiff filed its motion to reopen, in
which it contends that the Defendants are in contempt of the consent decree
because they have released a new product that infringes upon the ’125 and
’200 patents, and therefore, violates the consent decree. The Defendants’ new
product appears below:

Judge Otazo-Reyes held a status conference on the Plaintiff’s motion, during
which the parties agreed that prior to determining the issue of contempt, the
Court would have to determine the issue of infringement. (ECF No. 78.)
Accordingly, Judge Otazo-Reyes set a Markman hearing. (Id.)1
During the Markman hearing, Judge Otazo-Reyes heard argument
regarding the claim terms that the parties dispute. The parties agreed with
Judge Otazo-Reyes’s assessment that only two particular phrases appearing in
Claims 1, 2, and 3 of the ’125 patent require construction—“first upper
sidewall including a terminating end” and “first lower sidewall including a
terminating end.”
Ultimately, Judge Otazo-Reyes recommends that the Court adopt the
Defendants’ proposed claim construction. (See R. & R., ECF No. 95 at 9-10)
At the Markman hearing, the parties also agreed that the ultimate adjudication of the
Plaintiff’s motion will require an evaluation of claim construction, followed by a
determination of infringement, and thereafter, a finding regarding contempt. Thus, the
present report is the first in a potential sequence of three. (See Tr. of Markman Hr’g,
ECF No. 96 at 88-89.)
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because it is consistent with the “customary and ordinary meaning” standard
applicable in patent claim construction. (Id. at 10.)
The Plaintiff has filed objections to Judge Otazo-Reyes’s report. (See
Objs. to R. & R., ECF No. 97.)
2. Legal Standard
A. Objections to a report and recommendation
“In order to challenge the findings and recommendations of the
magistrate judge, a party must file written objections which shall specifically
identify the portions of the proposed findings and recommendation to which
objection is made and the specific basis for objection.” Macort v. Prem, Inc., 208
F. App’x 781, 783 (11th Cir. 2006) (quoting Heath v. Jones, 863 F.2d 815, 822
(11th Cir.1989)) (alterations omitted). The objections must also present
supporting legal authority. Once a district court receives “objections meeting
the specificity requirement set out above,” it must “make a de novo
determination of those portions of the report to which objection is made and
may accept, reject, or modify in whole or in part, the findings or
recommendations made by the magistrate judge.” Macort, 208 F. App’x at 78384 (quoting Heath, 863 F.2d at 822) (alterations omitted). To the extent a party
fails to object to parts of the magistrate judge’s report, those portions are
reviewed for clear error. Id. at 784 (quoting Johnson v. Zema Sys. Corp., 170
F.3d 734, 739 (7th Cir.1999)). A court, in its discretion, need not consider
arguments that were not, in the first instance, presented to the magistrate
judge. Williams v. McNeil, 557 F.3d 1287, 1291 (11th Cir. 2009).
B. Legal Principles of Claim Construction
Claim construction is the process of construing disputed terms within a
patent claim. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.
Cir. 1995), aff’d, 517 U.S. 370 (1996). The goal of claim construction is to give
disputed terms their “ordinary and customary meaning” as the term would
mean to “a person of ordinary skill in the art in question. . . as of the effective
filing date of the patent application.” Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996). A person of ordinary skill in the relevant art
is the standard used because patents are addressed to others skilled in the
pertinent art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).
When a term requires construction, the Court’s task is a limited one. The
Court must construe only those terms that are in controversy, and “only to the
extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sc. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Claim construction involves
defining a term in its appropriate context. “[T]here is no magic formula. . . for
conducting claim construction. Nor is the court barred from considering any

particular sources or required to analyze the sources in any specific
sequence[.]” Phillips, 415 F.3d at 1324. “To ascertain the meaning of claims, we
consider three sources: The claims, the specification, and the prosecution
history.” Markman, 52 F.3d at 979 (quoting Unique Concepts, Inc. v. Brown, 939
F.2d 1558, 1561 (Fed. Cir. 1991)).
The claim itself often provides substantial guidance as to the meaning of
particular claim terms. See Vitronics, 90 F.3d at 1582. Because claim terms are
normally used in a consistent manner throughout a patent, usage of a term in
one claim can illuminate the meaning of the same term in another claim.
Phillips, 415 F.3d at 1324.
The claims must also “be read in view of the specification, of which they
are a part.” Markman, 52 F.3d at 979 (internal citations omitted). “The
specification contains a written description of the invention that must enable
one of ordinary skill in the art to make and use the invention.” Id.
Furthermore, a patent’s 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, 90 F.3d at 1582. For this reason, the
specification is “the primary basis for construing the claims.” Phillips, 415 F.3d
at 1315. “The 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.” Id., at 1316 (citing Renishaw PLC v. Marposs
Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir 1998)).
Courts also consider a patent’s prosecution history, if it is in evidence, to
illuminate a disputed term. Markman, 52 F.3d at 980. A patent’s prosecution
history can consist of the complete record of the proceedings before the United
States Patent Trademark Office (“USPTO”) and can include the prior art cited
during the examination of the patent, which, like the specification, can shed
light on how the inventor and USPTO understood the patent. Phillips, 415 F.3d
at 1317. However, courts are wary of placing too much emphasis on the
prosecution history because it reflects an ongoing negotiation between the
USPTO and the inventor, and thus can lack the clarity needed to be a helpful
resource. See Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1580
(Fed. Cir. 1996) (concluding that the evidence in the patent’s prosecution
history produced contradictory interpretations). Nonetheless, when the
prosecution history in evidence clearly disclaims an interpretation, the
disclaimed interpretation should be excluded from the claim construction. ZMI
Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1580 (Fed. Cir. 1988).
Finally, the Court may also rely upon extrinsic evidence, such as
treatises and dictionaries, to illuminate the meaning of claim terms. Because
extrinsic evidence is external to the patent, sometimes authored by persons not

skilled in the art in question, and does not have the benefit of being created at
the time of, or in view of, the asserted patents, it is considered less reliable,
and thus, holds less weight in claim construction. Phillips, 415 F.3d at 1318
(explaining reasons why extrinsic evidence is generally less reliable than
intrinsic evidence in determining how to read claims).
In sum, the Court construes only those claim terms which require
construction, and only then to the extent necessary to resolve the dispute. The
Court looks first to the claim itself and the specification. The Court may also
consider the patent’s prosecution history and various extrinsic sources, though
extrinsic evidence is weighted less than intrinsic evidence in claim
construction.
3. Analysis
At the Markman hearing, the parties proposed
of terms:
Claim Language
Plaintiff’s Proposed
Construction
“first upper sidewall
A sidewall extending
including a terminating
from the first upper inset
end”
channel sidewall into the
first opening.
“first lower sidewall
including a terminating
end”

A sidewall extending
from the first lower inset
channel sidewall into the
first opening.

the following construction
Defendants’ Proposed
Construction
The upper half of the
first side surface,
extending from the
convex top to its
terminal end located at
the first opening.
The lower half of the first
side surface, extending
from the convex bottom2
to its terminal end
located in the first
opening.

In reaching her recommendation that the Court adopt the Defendants’
proposed construction of the terms, Judge Otazo-Reyes reasoned that the
Plaintiff’s proposed construction requires that “sidewall” and “terminating end”
refer to the same feature, which would render the terms “including a”
impermissibly superfluous. (See R. & R., ECF No. 95 at 9.) Judge Otazo-Reyes
reasoned further that subsequent references to a “lip” or “fin” to refer to
terminating ends rather than sidewalls also undermine the Plaintiff’s proposed
interpretation of terms. (Id.) Ultimately, Judge Otazo-Reyes recommends the
Defendants’ proposed claim construction because it does not utilize
The Court assumes that reference in the report to the convex “top” in the
construction of terms referring to the “first lower sidewall” is a scrivener’s error. (See
Defs. Opening Claim Constr. Br., ECF No. 87 at 9.)
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linguistically different terms to refer to the same structural feature, and does
not render an claim language superfluous. (Id. at 10.)
In its objections, the Plaintiff argues that (1) Judge Otazo-Reyes reached
her conclusion based on an improper linguistic analysis; (2) Judge OtazoReyes’s interpretation renders the “terminating end” as a separate structure
from the “sidewall”; and (3) Judge Otazo-Reyes committed error by relying upon
references to a “lip” or “fin” to refer to “terminating ends.” Upon review, the
Court determines that the Plaintiff’s objections are without merit.
The Plaintiff contends that the Defendants’ new product infringes upon
the ’125 patent:

(’125 design)

(New product)

In construing terms, the Court begins with the language of the claim itself.
Claim 1 of the ’125 patent states, in pertinent part,
A vehicle barrier system comprising:
a gate arm formed from a single piece of material
having a top convex member and a bottom convex
member defining first and second opposing side
surfaces, a distal end and proximal end defining a
longitudinal axis therebetween, said proximal end
coupled to a housing having a control system and
power supply to selectively pivot said gate arm
between a horizontal position and a vertical position,
said gate arm including at least a first elongated inset
channel centrally disposed in said first side surface
defined by said top convex member and said bottom
convex member and formed along said longitudinal
axis of said gate arm, said first elongated inset channel
having a first opening formed by a first pair of inset
channel sidewalls integrally joined to a first inset

channel backwall, said first side surface having a first
upper sidewall including a terminating end and a
first lower sidewall including a terminating end
which ends terminate partially within said first
opening and spaced from each other[.] (emphasis
added)
(ECF No. 36-4.)3 As previously stated, the goal of claim construction is to give
“ordinary and customary meaning” to terms as ascribed by persons of ordinary
skill in the arts in question. See Vitronics Corp., 90 F.3d at 1582. Given the
language of the claim, Judge Otazo-Reyes determined that the ordinary and
customary meaning of the disputed claim terms means that the terminating
ends form part of the upper and lower sidewalls, and are not separate
sidewalls, as suggested in the Plaintiff’s proposed construction. The Plaintiff
provides no authority for its contention that Judge Otazo-Reyes’s analysis was
improper. Indeed, in the task of assigning terms their ordinary and customary
meaning, it makes sense that some linguistic analysis is required. Moreover,
the Plaintiff’s second objection assumes and argues the exact opposite of Judge
Otazo-Reyes’s recommendation. Judge Otazo-Reyes’s recommendation
acknowledges that the terminating end is a part of the sidewall and should not
be defined separately in the context of the patent, as the Plaintiff seeks to do.
Also contrary to the Plaintiff’s contention, upon a review of the record, Judge
Otazo-Reyes did not rely upon references to a “lip” or “fin” to reach her
conclusion that the Plaintiff’s claim construction should be rejected, but offered
the observation that such references further undermine the Plaintiff’s proposed
interpretation of terms.
Furthermore, the Plaintiff's proposed construction is inconsistent with
the patent specification, which refers to the upper and lower sidewalls with
their respective ends as the key features for retaining the LED light arrays. For
example, the ’125 patent specification states that
the first upper sidewall and the first lower
sidewall each terminate partially within the first
opening for removably securing the at least one light
strip within the first elongated inset channel, [and]
the vehicle barrier system further includes a top
member comprising a semi-circular shape having one
end terminating partially within the first opening, and
This language comes from the Ex Parte Reexamination Certificate, which amended
the ’125 patent after the USPTO completed its reexamination of the ’125 patent in
2015. (See ECF No. 20.)
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another end terminating partially within the second
opening, and a bottom member comprising a semicircular shape having one end terminating partially
within the first opening, and another end terminating
partially within the second opening[.]
(ECF No. 36-1 at 8.) In describing Figure 6, which is pictured below, the
specification states, “the first upper and lower sidewalls 50, 56 terminate
partially within the opening of inset channel 30. (Id. at 11.) In addition, the
specification continues to state that the “[t]erminating ends of both the first
and upper and lower sidewalls 50, 56 help retain the first array of light
emitting diodes [] within the inset channel.” (Id.) The “convex top member 48”
in turn, is “integrally formed to include a first upper sidewall 50, and a second
upper sidewall 52.” (Id.) Structures 60 and 62 are described as “inset channel
sidewalls” and structure 64 is the “inset channel backwall,” which together
“define the inset channel 30 having an opening.” (Id.)

(Figure 6)4
The Plaintiff’s proposed construction—a sidewall extending from the first
upper/lower inset channel sidewall into the first opening—seeks to insert an
entirely new structure—a sidewall defined independently from the top/bottom
convex members of the gate arm formed by the upper and lower sidewalls and
Figure 6 is modified to eliminate the numbers not discussed in this order, and to
avoid confusion.
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their terminating ends, or the inset channel sidewalls, all of which are clearly
delineated in the claim language and patent specification. Such an
interpretation, as correctly found by Judge Otazo-Reyes, would be contrary to
the ordinary and customary meaning of the terms of the claim language.
In contrast, the Defendant’s proposed construction—the upper/lower
half of the first side surface, extending from the convex top/bottom to its
terminal end located at the first opening—is consistent with the ordinary and
customary meaning of terms in the claim language, and the patent
specification.
4. Conclusion
Accordingly, the Court affirms and adopts Judge Otazo-Reyes’s report
(ECF No. 95), and the following claim construction applies:
Claim language
“first upper sidewall
including a terminating
end”
“first lower sidewall
including a terminating
end”

Construction
The upper half of the first side surface, extending
from the convex top to its terminal end located at
the first opening.
The lower half of the first side surface, extending
from the convex bottom to its terminal end located
in the first opening.

Done and ordered at Miami, Florida, on May 23, 2018.
________________________________
Robert N. Scola, Jr.
United States District Judge