Albecker v. Contour Products, Inc. (FL) et al

Filing 125

MEMORANDUM Opinion and Order signed by the Honorable Edmond E. Chang. For the reasons stated in the opinion, Plaintiff's motion for reconsideration 57 is denied (the claim construction on "secured to" remains as-is); Defendant' s motion for reconsideration 60 is granted (the declaration-relief claim on the '545' patent is dismissed for lack of subject matter jurisdiction); and the parties shall file a joint written status report by 10/23/2013, in advance of the 10/30/2013 status hearing. Mailed notice(slb, )

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
WALTER ALBECKER,
Plaintiff,
v.
CONTOUR PRODUCTS, INC.,
Defendant.

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No. 09 C 00631

Judge Edmond E. Chang

MEMORANDUM OPINION AND ORDER
Plaintiff Walter Albecker filed this lawsuit against Contour Products, Inc. to
enforce his U.S. Patent No. 5,836,653 (‘653 Patent) and to seek a declaration that U.S.
Patent No. 6,823,545 (‘545 Patent), owned by Contour, is invalid.1 R. 1, Compl. The ‘653
Patent describes wedge-shaped backrest and legless leisure-chair designs that support
the sitter’s lower back by maintaining the back’s lumbar region in a natural curve. R.
54, Claim Constr. Order at 2. In July 2009, the previously assigned judge denied
Contour’s motion to dismiss the declaratory judgment count for lack of subject matter
jurisdiction. R. 26. And in May 2010, after claim construction briefing by both sides,
the previously assigned judge issued an order construing certain disputed terms
contained in Claim 10 of the ‘653 Patent. Claim Constr. Order at 7-18. Albecker now
seeks reconsideration of the claim construction, R. 57, while Contour seeks
reconsideration of the denial of its motion to dismiss, R. 60. For the reasons explained

1

In this federal question case, the Court has subject matter jurisdiction under 28 U.S.C.

§ 1331.

more fully below, Albecker’s motion for reconsideration [R. 57] is denied and Contour’s
motion [R. 60] is granted.
I. Background
In January 2009, Albecker filed a complaint against Contour Products, accusing
Contour of producing and selling chairs that infringe Albecker’s ‘653 Patent. See
Compl. ¶¶ 5, 8-9. The ‘653 Patent describes wedge-shaped backrests and legless leisure
chairs for sitting on the floor or on a bed and are designed to maintain the lumbar
region of the sitter’s back in a relatively natural lordotic curve. R. 46, Exh. A, ‘653
Patent at 1. The only issue on the table right now is Claim 10 of the patent, which
describes a backrest/leisure chair comprising:
(a) a relatively firm generally wedge shaped foundation having a face, a base,
a back and two generally triangular sides, with the base being positioned
parallel to a horizontal plane such as a floor or bed, and the face being oriented
at an acute angle relative to both the base and the horizontal plane to define a
generally wedge shape, wherein said face has an upper portion and a lower
portion, wherein said upper portion has an average general pitch relative to the
horizontal plane and said lower portion base an average general pitch relative
to the horizontal plane, and wherein said face further has a contour which
orients the average general pitch of upper portion of the face at a greater incline
than the average general pitch of the lower portion;
(b) a means for supporting occupant’s lumbar region in a relatively natural
lordotic curve comprising a generally convex semi-elliptically shaped elongated
cylindrical generally firm lumbar support on the lower portion of the relatively
firm foundation and extending substantially to a lower edge of said face, said
firm lumbar support having a firmness sufficient to generally maintain its
convex shape when pressure from a reclining occupant leaning against the
foundation is applied; and
(c) a top cushion having an upper and lower portion secured to the face of the
generally wedge shaped foundation.
Id. col. 18 ll. 15-41 (emphasis added).
2

At the core of the parties’ dispute is the last paragraph of Claim 10, limitation
(c). After considering each side’s proposed claim constructions, the previously assigned
judge issued an order construing the following disputed claim terms in the following
ways:
1.

“Top cushion” refers to “the top 4'' of material on the face of the
foundation or the cushioning material on the face of the foundation.”
Claim Constr. Order at 13.

2.

“Secured to” means “attached using attachment means, such as an
adhesive or mechanical type fasteners that might be used with material
that is selected for the top cushion and foundation.” Id.

3.

“Face of the generally wedged shaped foundation” is “the top surface of
the wedge shaped foundation.” Id. at 14.

It is the second term, “secured to,” that Albecker continues to contest.
Essentially, by construing “secured to” as “attached using attachment means,” the
Court held that limitation (c) is satisfied not by a one-piece product with a top cushion
that is “integral and continuous” with the foundation, but by a two-piece product whose
top cushion is physically attached or “secured to” the foundation. Claim Constr. Order
at 13. In light of that construction, Albecker now moves to reconsider, asserting that
“secured to” should simply mean “attached to” with no reference to attachment means.
See R. 58, Pl.’s Br. at 2. Thus, Albecker believes that “secured to” encompasses both
one- and two-piece products.
For its part, Contour independently moves to reconsider the previous denial of
the motion to dismiss the declaratory judgment count in Albecker’s complaint. In its
brief, Contour asserts that this Court lacks subject matter jurisdiction to declare

3

Contour’s ‘545 Patent invalid under the Declaratory Judgment Act, 28 U.S.C. § 2201,
because there is no case or controversy over the ‘545 Patent. R. 61, Def.’s Br. at 4-8.
II. Legal Standard
Federal Rule of Civil Procedure 54(b) states that a court may reconsider an
interlocutory ruling “at any time before the entry of a judgment adjudicating all the
claims and all the parties’ rights and liabilities.” Fed R. Civ. P. 54(b). Motions for
reconsideration serve the narrow purpose of correcting manifest errors of law or fact
or presenting newly discovered evidence. Rothwell Cotton Co. v. Rosenthal & Co., 827
F.2d 246, 251 (7th Cir. 1987) (citation omitted). Thus, a motion to reconsider is proper
when “the Court has patently misunderstood a party, or has made a decision outside
the adversarial issues presented to the Court by the parties, or has made an error not
of reasoning but of apprehension.” Bank of Waunakee v. Rochester Cheese Sales, Inc.,
906 F.2d 1185, 1191 (7th Cir. 1990) (citation omitted). But a motion for reconsideration
“does not provide a vehicle for a party to undo its own procedural failures, and it
certainly does not allow a party to introduce new evidence or advance arguments that
could and should have been presented to the district court prior to the judgment.”
Bordelon v. Chicago Sch. Reform Bd. of Trs., 233 F.3d 524, 529 (7th Cir. 2000) (internal
quotation marks and citation omitted).
In the context of claim construction, a motion for reconsideration may be raised
at any stage of the case. See, e.g., Jack Guttman, Inc. v. Kopykake Enters., Inc., 302
F.3d 1352, 1361 (Fed. Cir. 2002) (after preliminary injunction ruling); Bone Care Int’l
LLC v. Pentech Pharm., Inc., 2010 WL 3023423, at *1 (N.D. Ill. July 30, 2010). Indeed,
4

the Federal Circuit has noted that “[d]istrict courts may engage in a rolling claim
construction, in which the court revisits and alters its interpretation of the claim terms
as its understanding of the technology evolves.” Jack Guttman, 302 F.3d at 1361
(citation omitted). Still, there must be some reason, whether factual or legal, to
reconsider a construction.
III. Analysis
A. Albecker’s Motion to Reconsider
Albecker moves to reconsider the Court’s prior construction of limitation (c) of
claim 10. Specifically, he disputes the construction of the term “secured to,” which the
Court interpreted as “attached using attachment means, such as an adhesive or
mechanical type fasteners that might be used with material that is selected for the top
cushion and foundation.” Claim Constr. Order at 13.
Generally, when construing claim terms, courts should look to “the words of the
claims themselves, the remainder of the specification, the prosecution history, and
extrinsic evidence concerning relevant scientific principles, the meaning of technical
terms, and the state of the art.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (en banc) (internal quotation marks and citations omitted). Out of these sources,
the intrinsic evidence (which includes the patent claims, specification, and prosecution
history) is key to determining the meaning of a disputed term. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citation omitted).
Although Albecker tries to use intrinsic evidence in arguing the reconsideration
motion, none of the arguments justify changing the construction. First, he asserts that
5

the Court’s construction of “secured to” excludes all embodiments made with an
injection-molding manufacturing process, thus impermissibly importing process
limitations. See Pl.’s Br. at 7-8. As a procedural matter, this argument is rejected
because it was previously raised during the initial round of claim-construction briefing,
see R. 45 at 8-9, and thus rehashing it is not a proper argument for a motion to
reconsider. Albecker’s argument also fails on the merits. It fails as a matter of law,
because the case that he relies on—Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512
F.3d 1338 (Fed. Cir. 2008)—reasoned that courts must generally take care not to
import process limitations from process claims into apparatus claims, id. at 1344,but
all of Albecker’s claims are apparatus claims. Because there are no process claims in
this case, Baldwin’s concern about impermissible importing from claim to claim does
not directly apply. Albecker’s argument also fails as a factual matter, because although
the specification does teach injection molding as a way to make a “high firmness
support foundation,” see ‘653 Patent col. 13 ll. 17-39, the specification also teaches
using “firm internal support members to provide the equivalent of a relatively firm
foundation,” and even explicitly refers to this method as “[a]nother way to make an
embodiment.” Id. col. 13 ll. 40, 42-44. Indeed, in discussing this production method, the
specification even instructs that “[t]he soft wedge shaped foundation and top cushion
could be made in one piece or made of two pieces in a manner similar to that shown for
Figs. 3A and 3B,”id. col. 13 ll. 48-51 (emphasis added), which means that the Court’s
construction of “secured to”—which requires the use of physical attachment
means—does not rule out production methods.
6

Second, Albecker points to his patent-specific definition of the term “top cushion”
(“the top 4'' of material on the face of the foundation is considered to be the top
cushion”), which the Court adopted in its claim construction. See ‘653 Patent col. 10 ll.
8-12. Because this definition appears in the section of the specification discussing the
embodiment disclosed in Figure 1E—which has a top cushion that is integral and
continuous to the foundation—Albecker believes that a construction of “secured to”
requiring the use of a means of physical attachment contradicts his patent-specific
definition of “top cushion.” Pl.’s Br. at 8-9. Again, Albecker made this argument in his
opening claim-construction brief. See R. 45 at 11. Even if the Court were to reconsider
an already-made argument, the argument still fails. Yes, Albecker may act as his own
lexicographer, Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298-99
(Fed Cir. 2003) (citations omitted), but Albecker’s definition of “top cushion” is not
explicitly limited to an embodiment consisting of a foundation with an integral and
continuous top cushion. Despite the definition’s location in the specification, nothing
in the definition suggests that it only applies to claims reading on that embodiment
and not to claim 10. Rather, the definition, by its own terms, applies generally “[f]or
the purposes of the claims,” ‘653 Patent col. 10 ll. 8-9, which naturally includes claim
10. And more importantly, Albecker qualified his definition with this clause: “and
though it may technically [sic] the same material, it is considered as a foundation with
a top cushion.” Id. col. 10 ll. 10-12 (emphasis added). By taking pains to point out that
this particular embodiment still has a foundation and a top cushion although the pieces
are made of the same material, Albecker himself suggests that in the other
7

embodiments the top cushion and foundation are normally not made of the same
material, and instead must be secured to each other with a means of physical
attachment. Instead of contradicting the Court’s construction of “secured to,” therefore,
the Court’s construction of “top cushion” actually supports it.
Albecker’s third argument, however, does get some traction—though ultimately
not enough to change the construction. Albecker contends that the Court’s construction
of “secured to” excludes the embodiment disclosed in Figure 1E, which describes a onepiece product with a top cushion that is integral and continuous with the foundation,
see Pl.’s Br. at 3-6, and a claim construction that excludes embodiments disclosed in the
specification is usually wrong, Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1327 (Fed Cir.
2002) (citation omitted). In response, Contour asserts that the Court’s construction of
“secured to” does not impermissibly exclude disclosed embodiments because Albecker
withdrew his one-piece product claims in favor of prosecuting a two-piece species of
invention in response to a restriction requirement issued by the Patent and Trademark
Office (PTO). See R. 84 at 3-11.
In reply to Contour’s argument, Albecker argues that the PTO did not actually
issue a restriction requirement. Contrary to Albecker’s belief, however, the prosecution
history does show that the examiner issued a restriction requirement. Specifically,
after Albecker submitted his initial patent application, the examiner issued an Office
Action in July 1996 that listed a variety of distinct species in Albecker’s application
and required him to “elect a single disclosed species for prosecution on the merits to
which the claims shall be restricted if no generic claim is finally held to be allowable.
8

Currently, no claim is generic.” R. 84-2, Def.’s Exh. A at 72, 73. In response to the PTO,
Albecker elected “the species shown in FIG.s 1A-C” (the figures disclose a chair with
a separate foundation and top cushion), selected numerous claims that read on those
species, and withdrew the other claims from consideration. ‘653 Patent figs. 1A-C;
Def.’s Exh. A at 74; see also Def.’s Exh. A at 78-79 (listing claim 12 as withdrawn from
consideration because it was drawn to a non-elected species). Albecker elected this
species without “traversing,” or disputing, the examiner’s election requirement. See
Def.’s Exh. A at 79 (“Election was made without traverse . . . .”); see also MANUAL OF
PATENT EXAMINING PROCEDURE § 818.03 (laying out the requirements to traverse). The
claims that Albecker withdrew included the new claim 11 that describes a one-piece
chair with a top cushion that is integral and continuous with the foundation. See ‘653
Patent col. 18 ll. 42-44. Although Albecker asserted that claims 11 and 21 (the claims
that would become claims 10 and 20 in the ‘653 Patent) are generic, the record does not
show that the examiner ever agreed.2 Thus, all of the withdrawn claims—including the
new claim 11—remained withdrawn after the application’s restriction. 37 C.F.R.
§ 1.146; St. Jude Med., Inc. v. Access Closure, Inc., — F.3d —, 2013 WL 4826148, at *7
(Fed. Cir. Sept. 11, 2013) (“Since no generic claim was applied for, and no such claim
2

Albecker appears to allege that he discussed the withdrawn claims with the examiner
by phone, see R. 86 at 2-4, but the examiner’s Interview Summary only discloses that claims
1, 4, 11, and 21 were discussed and that “[s]ome changes were agreed upon to better define the
claims over the prior art, and an amendment will be faxed for further consideration.” Def.’s
Exh. A at 93. The examiner never recorded that he discussed Albecker’s withdrawn claims at
all. Nor did Albecker ever file his own summary of that interview in his prosecution history file.
Thus, there is no evidence in the documentary record that the examiner ever orally agreed that
the withdrawn claims could be reinstated, or that the examiner ever orally found that any
claim was generic.

9

was finally held allowable, that is what occurred: the election of species in the
grandparent created a restriction.”). Ultimately, Albecker, in the eyes of the PTO, did
not pursue a one-piece invention.3
But just because Albecker elected—in response to an unexplained restriction
requirement—a two-piece species rather than a one-piece species does not necessarily
mean that, as a matter of law, Albecker purposely chose to claim solely a two-piece
invention and disclaim a one-piece invention. The Federal Circuit has very recently
cautioned courts from concluding that a patentee has disclaimed claim-scope simply
by withdrawing certain claims after receiving an unexplained restriction requirement
imposed by the PTO. In Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343 (Fed Cir. 2013),
Plantronics received a patent for a “concha-style” cell phone headset. Id. at 1346. After
Plantronics sued Aliph for infringement, the district court construed certain stabilizers
in the headset claims as requiring “elongated” structures and granted summary
judgment to Aliph. Id. at 1348-49. On appeal, Aliph pointed to the prosecution history
to argue that the district court properly construed the stabilizers as requiring
elongated structures and not arch-shaped or torus-shaped structures. Id. at 1350.
During prosecution, the PTO issued a restriction requirement in which the examiner
instructed Plantronics to elect one of four distinct inventions or species (at least the
3

To the extent that Albecker argues that his withdrawn claims were rejoined under the
PTO process of rejoinder, rejoinder only allows applicants to present claims “directed to the
process of making and/or using the patentable product.” MANUAL OF PATENT EXAMINING
PROCEDURE § 821.04. But Albecker’s withdrawn claim 11 is a product claim, not a process
claim, so rejoinder does not apply. And even if it did apply, there is again no record evidence
that claim 11 or any other claim reading on the embodiment disclosed in Figure 1E was ever
rejoined, or was “fully examined for patentability in accordance with 37 C.F.R. § 1.104.” Id.

10

PTO believed them to be distinct). Id. Specifically, the PTO directed Plantronics to
elect “a single disclosed species for prosecution on the merits to which the claims shall
be restricted if no generic claim is finally held to be allowable,” and also
contemporaneously stated that the application presented no “generic claim” covering
more than a single species of the invention. Id. (internal quotation marks omitted). In
response, Plantronics elected, without traverse, to prosecute only the first species,
indicated which claims read on that species, and contended that one of those claims
was generic. Id. That species happened to have elongated stabilizers. See id. Based on
this prosecution history, Aliph contended that the claim construction was properly
limited to the single invention depicting a single embodiment having one elongated
stabilizer because Plantronics elected to pursue that invention rather than an
invention with stabilizers of different shapes. See id.
The Federal Circuit rejected this argument. It reasoned that the PTO’s
restriction requirement provided no explanation why the inventions differed such that
they were patentably distinct, let alone explained more specifically what difference
arose from one invention having an elongated stabilizer and not an arch stabilizer. Id.
at 1351. In fact, the Federal Circuit noted that more than one of the PTO’s listed
species contained elongated stabilizers, which refuted Aliph’s contention that the
PTO’s restriction requirement was based on that structural difference. Id. And
although Plantronics elected the first species without traverse, Plantronics did
disagree with the PTO by saying, in the response to the PTO, that one of the claims
was a generic claim that read on all of the embodiments illustrated in the application.
11

Id. Because of this ambiguous prosecution history, the Federal Circuit held that
Plantronics did not disclaim its non-elongated-stabilizer inventions during prosecution:
“The election of an invention in response to an ambiguous restriction requirement in
turn cannot be said to provide any guidance forming a basis for narrowing a broadly
drafted claim.” Id. (citation omitted).4
Plantronics undermines Contour’s argument that Albecker intentionally
disclaimed a one-piece chair in the prosecution history. Here, the PTO required
Albecker to elect one of nine different species of inventions to pursue, using nearly
identical language to that used in Plantronics. Compare id. at 1350 (“Accordingly, the
PTO directed Plantronics to elect ‘a single disclosed species for prosecution on the
merits to which the claims shall be restricted if no generic claim is finally held to be
allowable.’ The PTO also concluded that the application presented no ‘generic claim’
covering more than a single species of the invention.” (citation omitted)), with Def.’s
Exh. A at 72 (“Applicant is required . . . to elect a single disclosed species for
prosecution on the merits to which the claims shall be restricted if no generic claim is
finally held to be allowable. Currently, no claim is generic.”). The PTO never explained
to Albecker what distinguished each of the nine species from each other, making its

4

Plantronics’ holding does drive home how important it is for the PTO to explain, as
much as practicable (the PTO’s workload is enormous), the grounds for restriction
requirements and the reasons why the examiner believes that the proposed claims set forth
patentably distinct inventions. Under Plantronics, when the restriction requirement is not
explained, an inventor can avoid disclaimer by simply noting bare-bones disagreement with
the examiner’s opinion that no claims are generic. The prosecution then moves on with the
possibility that the examiner and the inventor have fundamentally different views of the scope
of the claims and the probability that the public-information function of the patent is impaired.

12

restriction requirement just as ambiguous as Plantronics’. Indeed, a review of the
figures disclosing the nine different inventions delineated by the PTO reveals that
some of the unelected embodiments also have a foundation and cushion that are
physically separate pieces, which likewise refutes Contour’s contention that the PTO
distinguished the inventions by their number of components. Compare ‘653 Patent fig.
1D, with id. fig. 1E. If the examiner had a one-piece versus two-piece distinction in
mind, the examiner did not communicate that reasoning to Albecker. And just like in
Plantronics, despite electing the first species without traverse (that is, without
objection), Albecker disagreed with the PTO by responding that two of his claims were
generic. See Def.’s Exh. A at 74. So Albecker did not fully accede to the PTO’s findings
either. Under Plantronics, then, this Court cannot draw the conclusion that Albecker’s
election of species represented a clear and unambiguous choice to pursue a two-piece
invention specifically instead of a one-piece invention. See 724 F.3d at 1351. And that
means that this Court may not so lightly dismiss the fact that its construction of
“secured to” excludes the unelected embodiment depicted in Figure 1E.

But a claim construction that excludes a preferred embodiment—if Figure 1E
is preferred—may still be correct if there is highly persuasive evidentiary support for
that construction. Rheox, 276 F.3d at 1327 (internal quotation marks and citation
omitted). And the bulk of the intrinsic evidence supporting the Court’s prior
construction of “secured to” (remember that the term refers to “attached using
attachment means, such as an adhesive or mechanical type fasteners”) rises to that
13

level. First, the term “secured to” is used several times throughout the claim language
to refer to the physical attachment of two separate pieces. See ‘653 Patent col. 18 ll. 1-3
(“The backrest/leisure chair of claim 1 further including a seat cushion having an
attachment means secured to the lower portion of the foundation . . . .”); id. col. 18 ll.
12-14 (“[W]herein the pillow has an attachment means to secure it near the top of the
generally wedge shaped foundation.”); id. col. 19 ll. 3-5 (“The backrest/leisure chair of
claim 10 further including a seat cushion having an attachment means secured to the
lower portion of the foundation . . . .”); id. col. 19 ll. 14-16 (“[W]herein the pillow has an
attachment means to secure it near the top of the generally wedge shaped
foundation.”). These different claims use “secured” in the context of affixing physically
separate pieces to each other, rather than describing a single “integral and continuous”
piece. Because a claim term should be construed consistently with its use in other
claims, Markem-Imaje Corp. v. Zipher Ltd., 657 F.3d 1293, 1299 (Fed. Cir. 2011)
(citation omitted), the ‘653 Patent’s claim language supports the construction of
“secured to” as requiring attachment means, such as physical fasteners.
The specification, which is “the single best guide to the meaning of a disputed
term,” Vitronics, 90 F.3d at 1582, also repeatedly uses “secured to” to describe the
physical attachment of separate pieces to each other. For example, in referring to the
attachment of the seat cushion to the foundation—the key disputed language in claim
10—the specification instructs, “Unlike the head pillow straps mentioned above, this
upholstery attachment means 35 or a similar means of securing the seat cushion 34 to
the foundation 42 are essential to the proper working of . . . this embodiment.” ‘653
14

Patent col. 8 ll. 27-30. And the specification further insists that the seat cushion be
fastened tightly to the foundation with straps:
Though the methods of securing the straps to the support foundation will vary
with the type of material the support foundation is made of, the straps must be
secured well enough to the support foundation to keep the seat cushion from
moving away from the support foundation when a person is sitting on it.
Id. col. 10 l.64-col. 11 l.2; see also id. col. 10 ll. 61-64 (“The seat cushion 34 is attached
to straps 35 or another suitable upholstery attachment means which would be secured
either directly or indirectly to the high firmness support foundation.”). The
specification therefore uses “secured to” when describing the seat cushion and the
foundation as two separate pieces that are physically attached to each other with
straps or other attachment means. Similarly, the specification elsewhere uses “secured
to” when teaching that the seat cushion and head pillow should be physically fastened
to other parts of the chair. See, e.g., id. col. 8 ll. 54-58 (“The same type of technique
could be used to close the bottom of the upholstery 30 on the top cushion 26—though
it is not necessary that both the seat cushion 34 and top cushion 26 be secured together
in this manner.”); id. col. 10 ll. 59-61 (“In FIG. 2A the head pillow 32 is attached to
straps for the head pillow 33 which are secured to the support foundation 42.”).
Likewise with the specification’s description of the attachment of the upholstery to the
foundation. Id. col. 12 ll. 26-28 (“The upholstery 30 is secured around the support
foundation 42 and of course around the main cushion 26.”). Thus, no matter which
piece the specification discusses—the top cushion itself, the seat cushion, the head
pillow, or the cushion’s upholstery—it teaches the physical attachment of that separate

15

piece to each other or to the foundation, thus securing the pieces together. Indeed, the
specification even goes so far as to explicitly differentiate between a foundation with
a secured, or separate, top cushion, and a foundation with an integrated top cushion.
See id. col. 6 ll. 48-50 (“This convex lumbar support can be integral and continuous
with the foundation, or can be secured to the top of the lower portion of the
foundation . . . .” (emphasis added)). Accordingly, the ‘653 Patent’s specification also
support the Court’s construction of “secured to.”
So do other parts of the ‘653 Patent’s prosecution history. “Like the specification,
the prosecution history provides evidence of how the [Patent and Trademark Office]
and the inventor understood the patent.” Phillips, 415 F.3d at 1317 (citation omitted).
During examination, in an October 1996 letter to Albecker, the patent examiner
originally rejected what would become claim 10 on obviousness grounds, finding that
adding “an overlying cushion member” for additional comfort was obvious in light of
the prior art. See Def.’s Exh. A at 80. Thus, the PTO believed claim 10 to claim a
foundation with an “overlying” seat cushion, which naturally suggests that claim 10
intended the foundation and seat cushion to be two separate pieces and not a single
and continuous piece. And in an ex parte reexamination proceeding, the PTO found
that the prior art did not anticipate a “top cushion secured to the face of the
foundation” because the prior art teaches only “a pillow with a cover” and “a single
pillow structure.” R. 84-8, Def.’s Exh. F at 4, 5, 6. By explicitly differentiating between
“a top cushion secured to the face of the foundation” and “a pillow with a cover” or a
“single pillow structure,” the PTO therefore understood Albecker to be claiming a two16

piece invention (with the seat cushion and foundation physically attached together)
rather than a one-piece invention.
Despite the ambiguous restriction requirement, therefore, all signs but one point
to the Court’s previous construction of “secured to,” which means “attached using
attachment means, such as an adhesive or mechanical type fasteners that might be
used with material that is selected for the top cushion and foundation.” And the weight
of this textual evidence—which is more useful than the prosecution history, see
Phillips, 415 F.3d at 1317 (citations omitted)—means that Albecker has not carried the
heavy burden that he must on motions to reconsider. See Bank of Waunakee, 906 F.2d
at 1191. Accordingly, his motion is denied.
B. Contour’s Motion to Reconsider
Contour separately moves to reconsider the Court’s decision to deny its previous
motion to dismiss the declaratory judgment count in Albecker’s complaint for lack of
subject matter jurisdiction. In Contour’s view, that count seeks to declare Contour’s
‘545 Patent invalid, yet the ‘545 Patent has nothing to do with this case, and more
importantly there is no actual case or controversy over it. Def.’s Br. at 6-8.
Under the Declaratory Judgment Act, “[i]n a case of actual controversy within
its jurisdiction . . . any court of the United States . . . may declare the rights and other
legal relations of any interested party seeking such declaration, whether or not further
relief is or could be sought.” 28 U.S.C. § 2201(a). Although an action for declaratory
relief can itself be a case or controversy under Article III, “the facts alleged, under all
the circumstances, [must] show that there is a substantial controversy, between parties
17

having adverse legal interests, of sufficient immediacy and reality to warrant the
issuance of a declaratory judgment.” MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118,
127-28 (2007) (internal quotation mark and citation omitted). In the patentinfringement context, a would-be declaratory judgment plaintiff (here, Albecker) who
is not the patentee may satisfy Article III’s case-or-controversy requirement by seeking
a declaration of his legal rights without risking an infringement suit if the patentee
“asserts rights under a patent based on certain identified ongoing or planned activity
of another party, and where that party contends that it has the right to engage in the
accused activity without license.” SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d
1372, 1381 (Fed Cir. 2007) (citation omitted). Put differently, “Article III jurisdiction
may be met where the patentee takes a position that puts the declaratory judgment
plaintiff in the position of either pursuing arguably illegal behavior or abandoning that
which he claims a right to do.” Id.
Contour has not put Albecker in that position. Albecker’s complaint does not
allege, for example, that Contour sent him a cease-and-desist letter that warned him
to stop infringing its ‘545 Patent or else defend an infringement suit. Cf. Pixton v. B&B
Plastics, Inc., 291 F.3d 1324, 1326-27 (Fed. Cir. 2002) (holding that the district court
had subject matter jurisdiction despite the assertion of a defense of license where the
patentee sent several cease-and-desist letters to the defendant and filed suit for
infringement). Instead, Albecker alleges in his complaint that Contour’s CEO, E. Scott
Davis, told Albecker that “Contour Products had a patent on its product and, as a
result, [Davis] did not understand why [Albecker] believed his patent had been
18

infringed.” Compl. ¶ 19. But this allegation itself reads as merely a statement by Davis
in response to allegations of infringement made by Albecker, which is a far cry from
a warning by Davis that Albecker infringed Contour’s ‘545 Patent. Indeed, “a
communication from a patent owner to another party, merely identifying its patent and
the other party’s product line, without more, cannot establish adverse legal interests
between the parties, let alone the existence of a ‘definite and concrete’ dispute.”
Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358, 1362-64 (Fed. Cir. 2009) (holding
that declaratory judgment jurisdiction existed only because the patentee’s letters to the
plaintiff identified the patent as relating to a specific product line, imposed two-week
deadlines to respond, and insisted that the plaintiff not file suit). Albecker’s complaint,
therefore, does not allege that Contour placed Albecker in a position where he could
only choose between infringing Contour’s patent or abandoning what he believed were
legal rights.
Instead, now that this Court has denied Albecker’s motion to reconsider its prior
claim construction,5 it is clear that the ‘545 Patent has no bearing on this case.
Albecker’s complaint alleges only that Contour infringed Albecker’s ‘653 Patent. See
Compl. ¶¶ 7-12. Thus, only the ‘653 Patent is at issue. It is significant too that Contour
has not injected the ‘545 Patent into this case by asserting it as a defense, see R. 17,

5

This decision is a new event that enables Contour to renew its motion to dismiss
Albecker’s declaratory judgment count by moving to reconsider. See Rothwell Cotton Co., 827
F.2d at 251. Thus, Albecker’s assertion that Contour cannot bring its motion because it lacks
new evidence under Rule 60(b) is not well-taken, even if Rule 60(b) applied to motions to
reconsider. See R. 63 at 9-10.

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Def.’s Answer at 3-4, or as a counterclaim, see id. at 4-6 (counterclaiming only that
Albecker’s ‘653 Patent is invalid). Indeed, even when Contour previously sued Albecker
in the Southern District of Florida (more on this below), Contour’s complaint sought
a declaration that it had not infringed Albecker’s ‘653 Patent instead of a declaration
that Albecker had infringed its ‘545 Patent. Complaint, Contour Products, Inc. v.
Albecker, 08-cv-60575-WPD (S.D. Fla. Apr. 22, 2008), R. 1. The ‘545 Patent is not even
invalidating prior art, because according to Albecker’s complaint itself, Contour filed
its ‘545 Patent after Albecker filed his ‘653 Patent. Compl. ¶ 21; see also R. 19 at 2
(stating that the ‘545 Patent has a filing date of May 16, 2003 and the ‘653 Patent has
a filing date of June 19, 1995). When viewed from every angle, this case is about the
‘653 Patent, not the ‘545 Patent, so the Court has no subject matter jurisdiction to
declare that the ‘545 Patent is invalid. See SanDisk, 480 F.3d at 1380-81
(“[D]eclaratory judgment jurisdiction generally will not arise merely on the basis that
a party learns of the existence of a patent owned by another or even perceives such a
patent to pose a risk of infringement . . . .”).
The only substantive argument that Albecker raises in response—that is not an
argument about the previously assigned judge’s case-management procedures, see R.
63 at 6-9, 13-14—is that Contour is judicially estopped from contesting subject matter
jurisdiction because it previously argued that the Southern District of Florida had
subject matter jurisdiction over its own declaratory judgment action. See id. at 11-12.
“Judicial estoppel prevents a party that has taken one position in litigating a particular
set of facts from later reversing its position when it is to its advantage to do so.”
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Levinson v. United States, 969 F.2d 260, 264 (7th Cir. 1992) (citation omitted). But as
a threshold matter, the law is skeptical about allowing litigants to employ judicial
estoppel to create subject matter jurisdiction when jurisdiction would otherwise not
exist. Lara v. Trominski, 216 F.3d 487, 495 n.9 (5th Cir. 2000) (“We are especially wary
of applying judicial estoppel to create subject matter jurisdiction in the federal courts.”
(citation omitted)); Wight v. BankAmerica Corp., 219 F.3d 79, 89 (2d Cir. 2000)
(“Indeed, it has been cautioned that special care should be taken in considering
whether judicial estoppel should even apply to matters affecting federal subject matter
jurisdiction.” (internal quotation marks and citation omitted)); cf. Pennhurst State Sch.
& Hosp. v. Halderman, 465 U.S. 89, 119 (1984) (“When questions of jurisdiction have
been passed on in prior decisions sub silentio, this Court has never considered itself
bound when a subsequent case finally brings the jurisdictional issue before us.”
(internal quotation marks and citation omitted)). After all, Contour and Albecker
cannot waive arguments that the Court lacks subject matter jurisdiction and cannot
stipulate between them that subject matter jurisdiction exists, United States v. Cnty.
of Cook, Ill., 167 F.3d 381, 387 (7th Cir. 1999), so any stance they previously took ought
not to preclude them—or, more importantly, the Court—from reevaluating jurisdiction
in the future. In any event, even if judicial estoppel did apply in this context, it
requires that a litigant pursue a position that is “clearly inconsistent” with the position
it asserted in prior litigation. New Hampshire v. Maine, 532 U.S. 742, 750 (2001)
(internal quotations and citations omitted). As mentioned above, Contour previously
asserted that the Southern District of Florida had subject matter jurisdiction to declare
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that Contour had not infringed Albecker’s ‘653 Patent. Pl.’s Opp’n to Def.’s Mot.
Dismiss, Contour Products, Inc. v. Albecker, 08-cv-60575-WPD (S.D. Fla. Oct. 31, 2008),
R. 13 at 2-9. That previous position is not clearly inconsistent with Contour’s position
now, which is that this Court lacks subject matter jurisdiction to declare that Contour’s
‘545 Patent is invalid. Because this litigation involves a different plaintiff suing over
a different patent and asserting a different doctrine of patent law, Albecker has not
taken a clearly inconsistent position here. Judicial estoppel does not bar Contour’s
motion.6
Accordingly, because there is no case or controversy involving Contour’s ‘545
Patent in this case, Albecker’s declaratory judgment count is dismissed for lack of
jurisdiction.
IV. Conclusion
For the reasons explained above, Albecker’s motion to reconsider [R. 57] is
denied and Contour’s motion [R. 60] is granted. Before the next status hearing, the
parties shall confer and file a written status report expressing their respective
positions on the case’s appropriate next step. If Contour’s product is a one-piece chair,
then one possibility is for the Court to enter judgment for Contour, with Albecker
preserving his objection to the claim construction and preserving his right to appeal
it. The written status report is due by October 23, 2013. At the next status hearing on

6

Albecker also asserts that Contour’s motion is untimely under Rule 59(e), R. 63 at 9,
but motions to reconsider are decided under Rule 54, which provides that interlocutory orders
“may be revised at any time before the entry of a judgment.” Fed. R. Civ. P. 54(b) (emphasis
added).

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October 30, 2013, the parties should be prepared to address the case schedule moving
forward.

ENTERED:
s/Edmond E. Chang
Honorable Edmond E. Chang
United States District Judge
DATE: September 27, 2013

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