ABT Systems, LLC et al v. Robertshaw Controls Company

Filing 68

MARKMAN ORDER Signed by the Honorable John F. Grady on April 11, 2013. Mailed notice(cdh, )

11-5112.131-RSK

April 11, 2013

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
ABT SYSTEMS, LLC and THE
UNIVERSITY OF CENTRAL FLORIDA
BOARD OF TRUSTEES on behalf of
THE UNIVERSITY OF CENTRAL FLORIDA,
Plaintiffs,
v.
ROBERTSHAW CONTROLS COMPANY,
Defendant.

)
)
)
)
)
)
)
)
)
)
)
)

No. 11 C 5112

MARKMAN ORDER
Before
Company’s

the

court

are:

(“Robertshaw”)

(1)

motion

defendant
to

limit

Robertshaw
or

exclude

Controls
inventor

testimony; (2) Robertshaw’s motion to strike portions of the
plaintiffs’ proposed means-plus-function claims constructions; and
(3) the parties’ competing claims constructions.

For the reasons

explained below, we deny Robertshaw’s motion to limit or exclude
inventor testimony, deny in part and grant in part its motion to
strike, and adopt the claims constructions set forth in Section D
of this Order.
BACKGROUND
Armin Rudd is the sole inventor of United States Patent Nos.
5,547,017 (“Air Distribution Fan Recycling Control”) (the “‘017
Patent”) and 6,431,268 (“Air Distribution Fan and Outside Air

- 2 -

Damper Recycling Control”) (the “‘268 Patent”).
conditioning

(“CAC”)

systems

typically

have

Central air
a

unit

that

“conditions” the air and a fan that circulates the “conditioned”
air.1

The fan runs when the thermostat has activated the air-

conditioning unit to achieve the desired temperature and when the
thermostat is set to run the fan continuously (“constant-fan
mode”). Rudd’s inventions periodically activate and deactivate the
fan for a period of time after the fan shuts off.

Plaintiff The

University of Central Florida (“UCF”) owns the patents and licenses
them exclusively to co-plaintiff ABT Systems, LLC (“ABT”), a
company controlled by Rudd.

(See Compl. ¶¶ 7-10; Dep. of Armin

Rudd, attached as Ex. A to Def.’s Mot. to Limit or Exclude the
Testimony of Armin Rudd During the Markman Hearing (hereinafter,
(“Mot. to Limit”), at 12-13.) UCF and ABT have sued Robertshaw for
selling thermostats that allegedly infringe the ‘017 and ‘268
Patents.

(See Compl. ¶¶ 14-37.)

The parties dispute the proper construction of the terms
“recycle control” in Claim 1 of the ‘017 Patent and Claims 4 and 5
of the ‘268 Patent, and “recycle control means” in Claim 1 of the
‘268 Patent.

On September 12, 2012, we held a hearing to address

the parties’ competing constructions.

See Markman v. Westview

Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995).

On February 28,

1/
“Conditioning” in this context means cooling, heating, humidifying,
dehumidifying, and cleaning the air. The parties have largely focused on heating
and cooling for simplicity’s sake, and we will do the same.

- 3 -

2013,

the

plaintiffs

filed

notice

of

a

Robertshaw for infringing the ‘268 Patent.
Sue, Dkt. 63.)

covenant

not

to

sue

(See Covenant Not to

Robertshaw concedes that the covenant moots

plaintiffs’ claims based upon its alleged infringement of the ‘268
Patent,

as

well

as

its

corresponding

counterclaims

for

non-

infringement and invalidity. (See Def.’s Resp. to Pl.’s Notice of
Jury Verdict and Effect of Covenant Not to Sue at 1.)

It argues,

however, that the proper construction of the ‘268 Patent is still
a live issue because it intends to seek attorney’s fees and costs
under 35 U.S.C. § 285.
exceptional

cases

may

prevailing party.”).

See 35 U.S.C. § 285 (“The court in
award

reasonable

attorney

fees

to

the

According to Robertshaw, its claim under §

285 will be based, in part, on unidentified “inequitable conduct”
in procuring the ‘268 Patent. (See Def.’s Resp. to Pl.’s Notice of
Jury Verdict and Effect of Covenant Not to Sue at 2.)

It is

unclear at this time whether the proper construction of the
disputed terms in the ‘268 Patent will be relevant to Robertshaw’s
anticipated claim under § 285.

So, we will confine our claims

construction rulings to the ‘017 Patent, only.
DISCUSSION
A.

Robertshaw’s Motion to Limit or Exclude Rudd’s Testimony
Robertshaw argues that portions of Rudd’s testimony during the

Markman hearing were improper.

During the hearing, Robertshaw

argued that the patents did not clearly identify which component(s)

- 4 -

of the “fan recycling control apparatus” constituted the “recycle
control.”

(See ‘017 Patent, Col. 7, lns. 20-33; see also id. at

Figs. 2 & 3.)

When the plaintiffs called Rudd to testify, we asked

plaintiffs’ counsel to ask Rudd to address this issue from the
perspective of a person of ordinary skill in the art.
objection

from

Robertshaw

that

the

testimony

This drew an
was

improper

“extrinsic evidence,” which we sustained subject to the plaintiffs’
offer of proof.

We now conclude that Rudd’s testimony on this

subject was proper.

First, Robertshaw overstates the Federal

Circuit’s disapproval of extrinsic evidence, which “consists of all
evidence external to the patent and prosecution history, including
expert

and

treatises.”

inventor

testimony,

dictionaries,

Markman, 52 F.3d at 980.

and

learned

Extrinsic evidence is

entitled to less weight than “intrinsic” evidence, but it is
generally admissible for whatever probative value it may have. See
Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005)
("Although we have emphasized the importance of intrinsic evidence
in claim construction, we have also authorized district courts to
rely on extrinsic evidence . . . .”).

Second, the case law does

not support the general proposition that inventors cannot testify
about what a person of ordinary skill in the art would understand.
The inventor is presumed to be skilled in the relevant art, and
Rudd impressed us during the hearing that he did in fact possess
the pertinent skill.

See Byrne v. Wood, Herron & Evans, LLP, 450

- 5 -

Fed.Appx. 956, 964 (Fed. Cir. 2011) (“As a general rule, an
inventor will be a person of at least ordinary skill in the
relevant art, and in many cases the inventor will be one of
extraordinary skill in the field of invention.”) (collecting cases)
(vacated on other grounds by Byrne v. Wood, Herron & Evans, LLP,
— S.Ct. —, 2013 WL 656035, *1 (Feb. 25, 2013) (slip op.)).

It is

true, as Robertshaw points out, that an inventor’s subjective
intent is irrelevant for purposes of claim construction.

See

Howmedica Osteonics Corp. V. Wright Med. Tech., Inc., 540 F.3d
1337, 1347 (Fed. Cir. 2008) (“[I]nventor testimony as to the
inventor’s subjective intent is irrelevant to the issue of claim
construction.”).

But that was not the nature of Rudd’s testimony.

When asked to identify the recycle control, Rudd simply recited the
relevant portions of the patent specifications.
Patent, col. 5, lns. 1-22;
1-28.)

(See, e.g., ‘017

col. 5, lns. 66-57 through col. 6, lns.

In that sense, we see no material distinction between this

testimony and Rudd’s testimony in support of the plaintiffs’ “or”
construction, (see infra), which Robertshaw concedes was proper.
(See Def.’s Reply (Mot. to Limit) at 2.)

Finally, Robertshaw

argues that we should discount Rudd’s testimony because he has an
interest in the patents through his company ABT.

We found Rudd to

be a credible witness despite his personal stake in this case.
More importantly, his testimony was consistent with the intrinsic

- 6 -

evidence concerning the scope of the disputed claims. Robertshaw’s
motion to exclude or limit Rudd’s testimony is denied.
B.

“Recycle Control”
The parties dispute the proper construction of the term

“recycle control” in Claim 1 of the ‘017 Patent:
“a recycle control for periodically activating and
deactivating only the circulating fan after a preselected
time period, since the a central air conditioning system
has been deactivated, or the fan has been deactivated
from the selectable constant fan mode.”
(Patent ‘017, Reexamination Certificate Issued Under 35 U.S.C. 307,
col. 2, lns. 4-8 (italics and brackets removed).) The parties have
articulated three main areas of disagreement with respect to this
claim: (1) whether “recycle control” is a means-plus-function
limitation; (2) whether the “recycle control” is limited to an
embodiment that is separate and distinct from the thermostat; and
(3) whether “recycle control” should be construed to require fan
activation after two fan events (heating/cooling deactivation and
constant

fan

deactivation),

or

just

one

(heating/cooling

deactivation or constant fan deactivation).
1.

Whether “Recycle
Limitation

Control”

is

a

Means-Plus-Function

The parties dispute whether the term “recycle control” is a
means-plus-function limitation.

35 U.S.C. § 112(f) provides that

“[a]n element in a claim for a combination may be expressed as a
means or step for performing a specified function without the

- 7 -

recital of structure, material, or acts in support thereof, and
such claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.”

35 U.S.C. § 112(f).

“A means-plus-function limitation

contemplated by [35 U.S.C. § 112(f)] recites a function to be
performed

rather

than

definite

performing that function.”

structure

or

materials

for

Chiuminatta Concrete Concepts, Inc. v.

Cardinal Industries, Inc., 145 F.3d 1303, 1307 (Fed. Cir. 1998).2
The use of the word

“means” — as in Claim 1 of the ‘268 Patent

(“recycle control means”) — creates a rebuttable presumption that
§ 112(f) applies. See Flo Healthcare Solutions, LLC v. Kappos, 697
F.3d 1367, 1373 (Fed. Cir. 2012).3

The absence of the word “means”

creates a rebuttable presumption that § 112(f) does not apply. See
id.

The proponent of the means-plus-function construction must

show that “the limitation essentially is devoid of anything that
can be construed as structure” to rebut the presumption.

Flo

Healthcare, 697 F.3d at 1374; see also Lighting World, Inc. v.
Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004)
(“[T]he presumption flowing from the absence of the term ‘means’ is
a strong one that is not readily overcome.”).

In Massachusetts

2/

Congress recently recodified the former 35 U.S.C. § 112, ¶ 6 as 35
U.S.C. § 112(f). See In re Avid Identification Systems, Inc., No. 2012–1092,
2013 WL 69102, *7 n.1 (Fed. Cir. Jan. 8, 2013) (slip op.).
For ease of
reference, we will refer throughout this opinion to § 112(f).
3/
Before filing their covenant not to sue, the plaintiffs did not attempt
to rebut the presumption that § 112(f) applies to the term “recycle control
means” in Claim 1 of the ‘268 Patent.

- 8 -

Institute of Technology and Electronics For Imaging, Inc. v. Abacus
Software, 462 F.3d 1344, 1353-54 (Fed. Cir. 2006), the Federal
Circuit held that the term “colorant selection mechanism” was a
means-plus-function limitation even though the patentee did not use
the word “means.”

The court reasoned that the “term ‘mechanism’

standing alone connotes no more structure than the term ‘means.’”
See id.

In reaching that conclusion, the court distinguished

Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed.
Cir. 1996), where the court held that § 112(f) did not apply to the
phrase “detent mechanism.”

Relying on dictionary definitions, the

Greenberg court concluded that “detent” was generally understood to
denote structure “in the mechanical arts.”

See id.

The Flo

Healthcare court employed similar reasoning in concluding that the
term “height adjustment mechanism” was not governed by § 112(f):
“[d]ictionary

definitions

similarly

show

that

the

noun

‘adjustment,’ which modifies ‘mechanism’ here, has a reasonably
well-understood meaning as a name for structure.”

Flo Healthcare,

697 F.3d at 1374.
This case is more similar to Abacus than it is to Greenberg or
Flo Healthcare.

Rudd testified at his deposition that the term

“recycle control” does not have a generally understood meaning in
the art.
(Claim

(See Dep. of Armin Rudd, attached as Ex. 5 to Def.’s Mem.

Construction),

at

76.)

The

most

apposite

dictionary

definition of “control” is “a device or mechanism used to regulate
or guide the operation of a machine, apparatus, or system.”

See

- 9 -

Merriam Webster’s Collegiate Dictionary, 252 (10th ed. 1996).
the

Abacus

‘means,’

court

observed,

‘element,’

and

“[t]he

generic

‘device,’

sufficiently definite structure.”

terms

typically

do

As

‘mechanism,’
not

connote

Abacus, 462 F.3d at 1354; see

also Toro Co. v. Deere & Co., 355 F.3d 1313, 1325 (Fed. Cir. 2004)
(concluding that the term “control mechanism” was a means-plusfunction limitation); cf. Ergo Licensing, LLC v. CareFusion 303,
Inc., 673 F.3d 1361, 1363-64 (Fed. Cir. 2012) (holding that the
term “control device” in a patent specification did not provide
corresponding

structure

supporting

the

means-plus-function

limitation “control means:” “[t]he recitation of ‘control device’
provides no more structure than the term ‘control means’ itself,
rather it merely replaces the word ‘means’ with the generic term
‘device’”).

And unlike Greenberg and Flo Healthcare, the term

“recycle” does not supply structure that is otherwise lacking in
the generic term “control.”
the claimed “control.”

It merely describes the function of

Finally, we are not persuaded by the

plaintiffs’ argument that the patent specifications indicate that
“recycle

control”

specification

may

denotes

structure.

support

a

finding

Language
that

a

in

a

patent

particular

claim

limitation denotes structure. See Flo Healthcare, 697 F.3d at 1374
(“[T]he

written

description

typically

uses

the

term

‘height

adjustment mechanism’ to designate a class of structures that are
generally understood to persons of skill in the art.”); see also
Lighting World, 382 F.3d at 1361 (Citing the written patent

- 10 -

description: “[i]n addition to the fact that the word ‘connector’
has

a

generally

understood

meaning

as

demonstrated

by

the

dictionary definitions of the terms, it is clear that the parties
in this case have used that term to denote structure.”).

In this

case, the written description of the ‘017 Patent sometimes refers
to an “air distribution system fan recycling control.” (See, e.g.,
‘017 Patent, col. 5, ln. 4.)

We construe this phrase to refer to

a particular embodiment of the claimed “recycle control,” one that
is “electrically wired between thermostat and the central air
conditioning (CAC) system terminal block.”
lns. 3-6; see also infra.)

(See id. at col. 5,

It does not indicate that the term

“recycle control” is generally understood to indicate structure.
Cf. Flo Healthcare, 697 F.3d at 1374.

The patent specification in

Abacus also described a particular structure for the disputed
limitation. See Abacus, 462 F.3d at 1355.

Indeed, if it had not,

the claim would have been invalid as indefinite.
Licensing, 673 F.3d at 1363-64.

See, e.g., Ergo

But that particular structural

embodiment of a “colorant selection mechanism” did not take the
case outside of § 112(f).

Just so here.

We conclude that “recycle

control” is a means-plus-function limitation.
2.

Whether the “Recycle Control” is Separate and Distinct
from the Thermostat

Robertshaw argues that the “recycle control” is limited to a
stand-alone device separate from the thermostat.
at 8-9.)

(See Def.’s Mem.

It points out that the specification of the ‘017 Patent

- 11 -

refers to an “air distribution fan recycling control,” on the one
hand, and “microprocessor based” controls on the other.

(See,

e.g., ‘017 Patent, col. 5, lns. 3-6; id. at col. 6, lns. 30-36.)
As we just discussed, we do not construe the term “recycle control”
to refer specifically to the embodiments shown in figures 2 and 3
of the ‘017 patent, despite the superficial similarity between the
terms

“recycle

control.”
the

fan

control”

and

“air

distribution

fan

recycling

As recited in the claims, the “recycle control” turns
on

at

preselected

constant-fan deactivation.

times

after

heating,

cooling,

or

The claims are not limited to a stand-

alone device, “and the specification expressly contemplates a fan
control integrated into a thermostat.”

University of Central

Florida v. Emerson Electric Co., Case No. 4:11CV00374 AGF, slip op.
at 9 (E.D. Mo. March 2, 2012).4

We conclude that the ‘017 Patent

encompasses both separate and integrated “recycle controls.”
3.

“Or” Versus “And”

Robertshaw asks us to construe the claims to require the
recycle control to operate the fan after a preselected time after
“(1) the heating or cooling unit and fan have been simultaneously
turned off; and (2) the circulating fan has been turned off from
its indefinitely on state.”

(See Joint Statement in Advance of

Claims Construction Hearing, Dkt. 38, at Ex. A (emphasis added).)

4/
The Emerson court construed claim 1 of the ‘017 Patent in an
infringement lawsuit filed by UCF against a different defendant. The court’s
unpublished Markman order appears on our docket at Dkt. 27.

- 12 -

The problem with this construction is that the claims use the word
“or:”

“a

recycle

control

for

periodically

activating

and

deactivating only the circulating fan after a preselected time
period,

since

the

central

air

conditioning

system

has

been

deactivated, or the circulating fan has been deactivated from the
selectable

constant

fan

mode.”

(Patent

Certificate Issued Under 35 U.S.C. 307.)

‘017,

Reexamination

The “or” language also

appears throughout the patent specification, (see, e.g., ‘017
Patent, col. 1, lns. 1-9), and Rudd persuasively explained during
the Markman hearing how the figures in the ‘017 Patent depict an
“or” rather than an “and” function.
Robertshaw relies primarily on the patent prosecution history
to support its counterintuitive construction.

The Federal Circuit

considers the prosecution history a form of “intrinsic” evidence,
but acknowledges its limitations: “because the prosecution history
represents

an

ongoing

negotiation

between

the

PTO

and

the

applicant, rather than the final product of that negotiation, it
often lacks the clarity of the specification and thus is less
useful for claim construction purposes.”
1317.

Phillips, 415 F.3d at

In this case, the prosecution history is not sufficiently

clear to support a construction contrary to the claim’s plain
language.

In 1998, the USPTO granted a request to reexamine the

‘017 Patent in light of two prior-art patents: United States Patent
Nos. 4,838,482 (“Vogelzang”) and 5,020,332 (“Nakatsuno”).

(See

- 13 -

Order Granting Request for Reexamination, attached as Ex. 3 to
Def.’s Mem. (Claims Construction), at ABTR001117-119.)

During the

reexamination proceedings, claim 1 was amended as follows:
a recycle control for periodically activating and
deactivating only the circulating fan after a preselected
time period, since the central air conditioning system
has been deactivated, or the circulating fan [have] has
been deactivated from the selectable constant fan mode.
(Patent ‘017, Reexamination Certificate Issued Under 35 U.S.C.
307.)5

As Robertshaw points out, the reexaminer concluded that

activating the fan after the continuous fan mode is deactivated
distinguished the prior art:
The amended claims 1-9, 15-18 now clearly point out that
the recycle control is activated after a preselected time
period under two separate conditions which are: (1) When
the circulating fan has been deactivated from its
continuous run position or (2) When the air conditioner
has been deactivated.
None of the prior art shows
activating the recycle control after the circulating fan
has been deactivated from its continuous run position and
would not be obvious from any combination of the prior
art.
Claims 1 and 15, as amended, are not broadened
claims because original claims 1 and 15 were also in the
alternative.
(Notice of Intent to Issue Reexamination Certificate, attached as
part of group Ex. 3 to Def.’s Mem. (Claim Construction), at
ABTR001141; see also Supp. Notice of Intent to Issue Reexamination
Certificate, attached as part of group Ex. 3 to Def.’s Mem. (Claim
Construction), at ABTR001147 (similar).)

But the “or” language

5/
The italicized words were added after reexamination, the words
appearing in bold brackets were deleted.
See Patent ‘017 ("Reexamination
Certificate Issued Under 35 U.S.C. 307").

- 14 -

appears in both the original and the amended claim 1, and the
specification — which likewise reflects the “or” construction — was
not amended.

Robertshaw argues that Rudd disclaimed the “or”

construction during the reexamination proceedings, relying on an
instance in the record where Rudd’s patent attorney used the word
“and.”

(See Def.’s Mem. (Claim Construction) at 11; see also

Response to Order Granting Request for Reexamination, attached as
part of group Ex. 3 to Def.’s Mem. (Claims Construction), at
ABTR001125 (“Rudd ‘017 teaches a method of fan recycling that works
automatically with an air conditioner system during the heating,
cooling and fan circulating modes.”).) But it is apparent from the
context of this statement that Rudd’s attorney was emphasizing the
“automatic” nature of his invention, as distinguished from “manual”
operation of Vogelzang’s.6

In the same paragraph the attorney

quotes a portion of the patent specification using the word “or.”
(See id.) Finally, Robertshaw argues that we should interpret “or”
to mean “and” to avoid a construction that would render the claim
invalid vis-a-vis Vogelzang and/or Nakatsuno, citing the maxim that
claims should be construed to preserve their validity.

6/

AFG

Rudd’s written response to the reexaminer’s order did not emphasize the
“continuous fan” concept as a distinguishing feature of his patent. (See Resp.
to Order Granting Request for Reexamination, attached as part of group Ex. 3 to
Def.’s Mem. (Claim Construction), at ABTR001124-131.) It appears that this issue
arose later during the reexamination process. (See Examiner Interview Summary
Record, attached as part of group Ex. 3 to Def.’s Mem. (Claim Construction), at
ABTR001137 (brief handwritten summary of the reexaminer’s interview with Rudd’s
attorney on June 22, 2009).) It is unclear whether the reexaminer considered
that feature necessary or merely sufficient to distinguish the prior art because,
as far as we can tell, he did not address Rudd’s other arguments.

- 15 -

Industries, Inc. v. Cardinal IG Co., Inc., 224 Fed.Appx. 956, 958
(Fed. Cir. 2007) (“[W]hen the validity of the patent depends on use
of a particular process, the claims are construed in the manner
that

will

sustain

their

validity,

supported by the record.”).

when

such

construction

is

But the Federal Circuit has made it

clear that this maxim is an interpretive tool of last resort: “we
have limited the maxim to cases in which the court concludes, after
applying all the available tools of claim construction, that the
claim is still ambiguous.”

Phillips, 415 F.3d at 1327 (citation

and internal quotation marks omitted).

In this case, the claims

and the specifications unambiguously support the “or” construction.
We cannot rewrite the patents to avoid purported invalidity.

See

Generation II Orthotics Inc. v. Medical Technology Inc., 263 F.3d
1356, 1365 (Fed. Cir. 2001) (“[C]laims can only be construed to
preserve their validity where the proposed claim construction is
practicable, is based on sound claim construction principles, and
does not revise or ignore the explicit language of the claims.”)
(citation and internal quotation marks omitted).
C.

Robertshaw’s Motion to Strike the Plaintiffs’ Proposed MeansPlus-Function Constructions
“Claim

construction

includes two steps.
function.

of

a

means-plus-function

limitation

First, the court must determine the claimed

Second, the court must identify the corresponding

structure in the written description of the patent that performs
that function.”

Applied Medical Resources Corp. v. U.S. Surgical

- 16 -

Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006) (citations omitted).
At the conclusion of the Markman hearing we asked the plaintiffs to
supplement their proposed constructions, which reflected their
contention that § 112(f) did not apply, with alternative meansplus-function constructions.

The plaintiffs have proposed the

following structures corresponding to the recycle-control function
identified Claim 1 of the ‘017 Patent:
(1) A fan control wired between the thermostat and
central air conditioning system, such as shown in FIGURES
2-3 and their corresponding descriptions (e.g., ‘017
Patent, 2:64-66, 3:3-33, and 4:20-6:28), and which may
use electromechanical or solid-state components (7:6-8);
or (2) a fan control controlled by a microprocessor,
located on the thermostat or humidistat, or in another
location, such as disclosed in FIGURES 4-5 and their
corresponding descriptions (e.g., 2:64-66, 3:3-33, and
6:29-7:5), and as disclosed in the attached revised
FIGURES 4-5 of the ‘017 Patent (TAB A), revised to make
clear that one or more of the heating or cooling and/or
constant fan may be called for by the thermostat, and
showing the steps of exemplary algorithms which may be
used to effectuate microprocessor control for the claimed
“[fan] recycle control . . .” if it is found to fall
within § 112, ¶ 6. See also 3/2/12 Markman Order issued
in Rudd et al. v. Emerson Electric Co. (Fleissig, J.,
E.D. Missouri, Case No. 4:11-CV-374 AGF).
(Pls.’ Proposed Means-Plus-Function Claim Constructions, dated
Sept.

18,

2012,

Dkt.

46.)

At

Tab

A

to

their

proposed

constructions, the plaintiffs have attached revised figures that
combine boxes depicted separately in the flow charts at figures 4
and 5 of the ‘017 Patent.
Robertshaw argues that it is inappropriate to rely on the
revised

figures

and

has

moved

to

strike

them.

Although

- 17 -

Robertshaw’s authorities do not deal explicitly with this question,
they do indicate that the structure corresponding to the function
described in the means-plus-function limitation must be disclosed
in the patent itself.

See 35 U.S.C. § 112(f) (A means-plus-

function claim “shall be construed to cover the corresponding
structure, material, or acts described in the specification and
equivalents thereof.”); see also Applied Medical, 448 F.3d at 1332
(directing courts to identify the structure corresponding to the
disclosed function “in the written description of the patent”);
Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 296 F.3d 1106,
1113 (Fed. Cir. 2002) (“After identifying the claimed function, the
court must then determine what structure, if any, disclosed in the
specification

corresponds

to

the

claimed

function.”).

The

plaintiffs argue that the revised figures are appropriate because
they reflect Rudd’s understanding of the patent.
(Mo. to Strike) at 4.)

(See Pls.’ Resp.

But they have not supported their position

with relevant authorities,7 nor have they addressed the authorities
that Robertshaw cites. Accordingly, we will strike the plaintiffs’

7/
The plaintiffs cite Phillips for the proposition that the inventor is
presumed to be someone skilled in the relevant art, and that patents should be
construed from the perspective of persons with similar skills. See Phillips, 415
F.3d at 1313. But this general proposition has nothing to do with whether it is
appropriate for a party to revise the patent specification to support its meansplus-function construction.

- 18 -

revised figures and the corresponding language in their proposed
construction.8
D.

The Court’s Means-Plus-Function Constructions
We define the function of the “recycle control” as follows:
Periodically activating and deactivating only the fan
after a preselected time after the (1) central air
conditioning system has been deactivated, or (2) the
circulating fan has been deactivated from the selectable
constant fan mode.

A patent may recite alternative structures performing the same
claimed function.

See Cardiac Pacemakers, 296 F.3d at 1113-14

(“Alternative embodiments may disclose different corresponding
structure, and the claim is valid even if only one embodiment
discloses corresponding structure.”).

The specification of the

‘017 Patent describes three such structures:
Structure #1: A fan control that is wired between the
thermostat and the CAC system terminal block, as in
figures 2 and 3 and their corresponding written
descriptions.
Structure #2: A fan control, as described in figures 2
and 3 and their corresponding written descriptions, that
is activated and deactivated by a microprocessor-based
thermostat or other microprocessor-based control, as
illustrated by the algorithm in figure 4 and its
corresponding written description.
Structure #3: A microprocessor-based control programmed
to perform the same function as the fan control described
in figures 2 and 3 and their corresponding written
descriptions, as illustrated by the algorithm in figure
5 and its corresponding written description.

8/
Robertshaw also moved to strike in its entirety the plaintiffs'
construction of "recycle control means" in claim 1 of the ‘268 Patent. That
issue is moot in light of the plaintiffs’ covenant not to sue.

- 19 -

CONCLUSION
Robertshaw’s motion to limit or exclude the testimony of Armin
Rudd [40] is denied. Robertshaw’s motion to strike the plaintiffs’
proposed means-plus-function constructions [49] is granted in part
and denied in part.

The motion is granted as to the revised patent

figures attached to the plaintiffs’ proposed constructions.

The

motion is denied as moot insofar as it pertains to the ‘268 Patent.
The court adopts the claims constructions set forth in Section D of
this order.

A status hearing is set for May 1, 2013 at 10:30 a.m.

DATE:

April 11, 2013

ENTER:

___________________________________________
John F. Grady, United States District Judge