Rehco LLC v. Spin Master Ltd.

Filing 125

MEMORANDUM Opinion and Order Signed by the Honorable John Robert Blakey on 12/11/2015. Mailed notice(gel, )

IN THE UNITED STATES DISTRICT COURT FOR THE
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
REHCO LLC,
Plaintiff,
v.
SPIN MASTER LTD.,
Defendant.

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Case No. 13 C 2245
Judge John Robert Blakey

MEMORANDUM OPINION AND ORDER
This case is before the Court on claim construction. The parties dispute two
claim terms in U.S. Patent No. 7,100,866. After reviewing the parties’ briefs and
submissions on claim construction, as well as the patent itself (including the claims,
the specification and the prosecution history in the record) the Court construes the
disputed claim terms as set forth in this Memorandum Opinion and Order.
Background & Procedural History
A.

Rehco and Spin Master
Rehco, LLC is a limited liability corporation, founded by two brothers Steve

and Jeff Rehkemper, that invents new products for license primarily in the toy
industry. Second Amended Complaint [37], ¶¶1-2. Rehco is recognized by the toy
industry as a leader in inventing and innovation; in fact, over the past 30 years, the
Rehkemper brothers have invented hundreds of revolutionary products in the toy
industry that have resulted in well over a billion dollars in combined sales for
clients such as Mattel, Hasbro and Spin Master. Id., ¶¶3-4. In particular, Steve

Rehkemper is the named inventor on over sixty United States patents, and Jeff
Rehkemper is the named inventor on over fifty United States patents, including the
patent that is the subject of this lawsuit: United States Patent No. 7,100,866 (“the
‘866 Patent”). Id., ¶5. That patent was issued September 5, 2006 and is owned by
Rehco. Exhibit 4 [37-2].
Spin Master is the third largest toy company in North America. Its Air Hogs
line of radio-controlled flying products is the largest radio-controlled toy brand in
the world and is ranked in the top twenty-five of all brands in the toy industry.
Amended Complaint [37], ¶¶7-8. In 2008, Spin Master received the coveted Toy
Industry Association’s “Toy of the Year” Award for its Air Hogs Havoc Heli Laser
Battle radio-controlled helicopter toy, which is one of the products at issue in this
lawsuit. Id., ¶9.
On December 21, 2000, Rehco and Spin Master entered into a Rechargeable
Radio-Controlled Airplane Development Agreement [37-5]. The parties executed a
First Amendment to that Agreement in September 2001 [37-6], a Second
Amendment in January 2003 [37-7], and a Third Amendment in March of 2003 [378]. Second Amended Complaint [37], ¶¶44-47. The Agreement, together with the
Amendments – collectively referred to as the “Airplane Agreement” – granted Spin
Master “a sole and exclusive right to manufacture, have manufactured for it, use,
sell, distribute and have distributed for it the “Item,” a term described in the
agreement as a “Rechargeable Radio Controlled Airplane.”

Id., ¶48; Airplane

Agreement [37-5], ¶1. In exchange, Spin Master was obligated “to pay Rehco a

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royalty of 1.5% on the ‘Net Wholesale Selling Price’ of all sales of the Item . . .’”
Second Amended Complaint [37], ¶49. The Airplane Agreement also assigned to
Spin Master “the right to change the form of the Item and to produce and sell it
under the new form, provided, however, that all provisions of [the Airplane]
Agreement shall apply to said new form of the Item.” Id., ¶50.
On September 1, 2001, Rehco and Spin Master entered into a RadioControlled Helicopter Agreement [37-1]. They executed a First Amendment to that
Agreement in September 2004 [37-2], and a Second Amendment to that Agreement
in July 2006 [37-3]. The Agreement, together with the Amendments – collectively,
the “Helicopter Agreement” – grants Spin Master “a sole and exclusive license to
manufacture, have manufactured for it, use, sell, distribute, and have distributed
for it the “Licensed Products.” “Licensed Products” is defined in the Agreement to
mean “merchandise based upon, derived from or embodying the Item, 1 including but
not limited to merchandise based upon, derived from or embodying the Item’s
means for controlling the horizontal stability of the helicopter.” Second Amended
Complaint [37], ¶¶20, 23; Helicopter Agreement [37-1], ¶2.g. In exchange for this
exclusive license, Spin Master was obligated to pay to Rehco a royalty of 3% on the
“Net Wholesale Selling Price of all sales by Spin Master and its Subsidiaries or
Affiliates of the Licensed Products.” Id., ¶21.
On September 12, 2008, Rehco terminated the Helicopter Agreement for nonpayment. Second Amended Complaint [37], ¶24. Rehco terminated the Airplane
1Item,

another term defined in the agreement, refers to a particular motorized helicopter.
[37-1], ¶1.a.

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Agreement on May 26, 2013 for non-payment. Id., ¶52.
Rehco initially filed this lawsuit on March 26, 2013 [1], amending its
complaint first on April 19, 2013 [16] and again on August 8, 2013 [37]. In the
Second Amended Complaint – which is the operative complaint – Rehco alleged
breach of contract based on Spin Master’s failure to pay royalties under the
Helicopter Agreement (Count I) and the Airplane Agreement (Count III);
infringement of the ‘866 patent (Count II); and infringement of U.S. Patent No.
6,612,893 (Count IV).

Second Amended Complaint [37].

The Court dismissed

Count IV on March 17, 2014 [86]. Thus the only infringement claim remaining in
the lawsuit concerns the ‘866 patent. 2
With regard to the ‘866 patent, Rehco alleged both direct and indirect
infringement. More specifically, Rehco alleged that Spin Master directly infringed
one or more claims of the ‘866 patent, including at least claims 1, 2, 10, 11 and 12,
by making, using, offering for sale, selling and/or importing auto hover toys that
infringe the ‘866 patent.

Second Amended Complaint [37], ¶30.

Alternatively,

Rehco alleged that Spin Master indirectly infringed one or more claims of the ‘866
patent, including at least claims 1, 2, 10, 11 and 12, by inducing others (namely,
users of the above products) to use the infringing products in a manner that violates
one or more claims of the ‘866 patent. Id., ¶31.
B.

The ‘866 Patent and its Prosecution History

Because the case is presently up on claim construction, the breach of contract claims are
relevant only to provide context for the lawsuit. Similarly, the Court does not at this time
consider the infringement claim or analyze the allegedly infringing products. Indeed, at
this point in the proceedings, the Court does not look at Spin Master at all, but simply
focuses its analysis on the patent alleged to be infringed – the ‘866 patent.
2

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The ‘866 patent relates to hovercraft toys and discloses a “Control System for
a Flying Vehicle.” The ‘866 patent’s abstract, which is intended to give an overview
of the disclosed invention, provides:
In one embodiment of the present invention there is described a vehicle
having a propeller mechanism for propelling the vehicle in a horizontal
direction. The vehicle includes a transmitter positioned on the bottom
of the vehicle for transmitting a signal from the vehicle downwardly
away from the vehicle. A receiver is positioned on the bottom of the
vehicle for receiving the signal as it is bounced off of a surface, defined
as a bounced signal. A control system is also provided that
automatically sets a speed of the propeller mechanism in response to
the receiver. The control system sets the speed of the propeller
mechanism to a first speed when the receiver receives the bounced
signal and the control system sets the speed of the propeller
mechanism to a second speed when the receiver does not receive the
bounced signal. The first speed is predefined as a speed that causes the
vehicle to gain altitude, while the second speed is predefined as a
speed that causes the vehicle to lose altitude. When the vehicle reaches
a predetermined distance away from the surface of the object, the
vehicle will hover at the predetermined distance as the control system
toggles between the first and second speeds.
U.S. Patent No. 7,100,866, Abstract. The patent as issued recites 17 claims. The
disputed claim terms appear in claim 1, which is an independent claim, from which
several of the other claims depend.
Rehco filed the application for the ‘866 patent on January 14, 2005. That
application included a different version of claim 1. As originally submitted, claim 1
recited:
1. A vehicle having a means for propelling in a vertical
direction, further comprising:
a transmitter positioned on the bottom of said vehicle for transmitting
a signal from the vehicle downwardly away from said vehicle;
a receiver positioned on the bottom of said vehicle for receiving said
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signal as it is bounced off of a surface, defined as a bounced
signal; and
a control system that automatically sets a speed of the propelling
means in response to the receiver, said control system sets the
speed of the propelling means to a first speed when the receiver
receives the bounced signal and the control system sets the
speed of the propelling means to a second speed when the
receiver does not receive the bounced signal, the first speed
being predefined as a speed that causes the vehicle to gain
altitude and the second speed being predefined as a speed that
causes the vehicle to lose altitude.
Joint Appendix [93], p. 63.
On February 21, 2006, the primary examiner rejected claims 1-18, on a nonfinal basis.

See Office Action Summary [93], pp. 95-99.

In response, Rehco

amended claims 1, 6 and 17 and resubmitted the application.

Claim 1, in its

amended form, recited:
1. A vehicle having a means for propelling in a vertical
direction, further comprising:
a transmitter positioned on the bottom of said vehicle for transmitting
a signal from the vehicle downwardly away from said vehicle;
a receiver positioned on the bottom of said vehicle for receiving said
signal as it is bounced off of a surface, defined as a bounced
signal; and
a control system that automatically sets a speed of the propelling
means in response to the receiver, said control system having a
first means to set the speed of the propelling means to a first
speed when the receiver receives the bounced signal and the
control system having a second means to set the speed of the
propelling means to a second speed when the receiver does not
receive the bounced signal, the first speed being predefined as a
speed that causes the vehicle to gain altitude and the
second speed being predefined as a speed that causes the vehicle
to lose altitude.

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Joint Appendix [93], p. 105.

With these amendments (and some additional

amendments by the examiner, who cancelled claim 16 and made claim 12 depend
from claim 1), the claims were allowed. See Notice of Allowability [93], pp. 114-119.
Prosecution of the patent was then closed, and the patent issued on September 6,
2006.
C.

The Parties’ Proposed Claim Constructions
1.

Spin Master’s Proposed Claim Construction

Spin Master argues that, when Rehco filed its patent application for the ‘866
patent, the hovercraft toy market was crowded and the idea behind the invention
was not new. The focus of the ‘866 patent was the method of controlling the height
of the toy above the ground.

According to Spin Master, the patent describes a

specific series of steps that could be programmed onto a control circuit board that
would control the speed of the rotor and allow the toy to move up and down,
depending on the height above the ground.
Spin Master argues that, by amending its claims as it did during the
prosecution of the ‘866 patent, Rehco was agreeing to limit its claims to means-plusfunction claiming.

This means, Spin Master argues, that Rehco claimed its

invention in functional terms (i.e., in terms of what the invention does) and is thus
limited to the specific structures identified in the patent for performing that
function (i.e., how the invention does it). Spin Master argues that Rehco added both
of the disputed terms to secure the allowance of the ‘866 patent and that its decision
to use means-plus-function claim limitations necessarily requires that the claims

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now be limited to the structure(s) specifically disclosed in the patent specification.
Thus, Spin Master proposes the following construction:
Claim Term

Proposed Construction

“first means to set the speed of the Function: “to set the speed of the
propelling means to a first speed when propelling means to a first speed when
the receiver receives the bounced signal” the receiver receives the bounced signal”
Structure:
“Circuit
board
136
programmed to perform steps 200, 205,
210, 215, 220, 225, and 230 in Fig. 7”
“second means to set the speed of the Function: “to set the speed of the
propelling means to a second speed when propelling means to a second speed when
the receiver does not receive the bounced the receiver does not receive the bounced
signal”
signal”
Structure:
“Circuit
board
136
programmed to perform steps 200, 205,
255, 260, 265, 270, 275, and 280 in Fig.
7”
2.

Rehco’s Proposed Claim Construction

Rehco concedes that its claims are recited in “means-plus-function” terms.
Thus, Rehco acknowledges that the Court must construe the claims to identify both
the claimed function and the corresponding structure in the written description for
performing that function. Rehco’s Responsive Claim Construction Brief [99], p. 3.
Rehco also emphasizes, however, the principle that, when construing a means-plusfunction limitation, a court “may not import structural limitations from the written
description that are unnecessary to perform the claimed function.”

Id. (citing

Wenger Manufacturing, Inc. v. Coating Machinery Systems, Inc., 239 F.3d 1225,
1233 (Fed. Cir. 2001)). According to Rehco, Spin Master’s proposed construction
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does just that.

Rehco argues that the ‘866 patent discloses at least three

embodiments, and that defendant’s proposed construction improperly limits the
claim to the third embodiment and excludes the first and second embodiments – a
narrow approach that is contrary to long-standing Federal Circuit precedent.
Rehco’s Responsive Claim Construction Brief [99], pp. 8-9.
With this in mind, Rehco proposes the following claim construction:
Claim Term

Proposed Construction

“first means to set the speed of the Function: “to set the speed of the
propelling means to a first speed when propelling means to a first speed when
the receiver receives the bounced signal” the receiver receives the bounced signal”
Structure:
“Circuit
board
136
programmed to set the speed of the
propelling means to a first speed when
the receiver receives the bounced signal
and equivalents thereof”
“second means to set the speed of the Function: “to set the speed of the
propelling means to a second speed when propelling means to a second speed when
the receiver does not receive the bounced the receiver does not receive the bounced
signal”
signal”
Structure:
“Circuit
board
136
programmed to set the speed of the
propelling means to a second speed when
the receiver receivers the bounced signal
and equivalents thereof”

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Discussion
A.

Applicable Legal Standards
Because the claims of a patent define the invention, claim construction – the

process of giving meaning to the claim language – defines the scope of the invention.
See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)(en banc)(“It is a
‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
which the patentee is entitled the right to exclude.’”)(citation omitted). Claim
construction is a matter of law for the Court to determine. Markman v. Westview
Instruments, Inc., 517 U.S. 370, 391 (1996); Marine Polymer Techs., Inc. v. HemCon,
Inc., 672 F.3d 1350, 1357-58 (Fed. Cir. 2012).
The claim construction analysis begins with the words of the claims
themselves, giving those words their ordinary and customary meaning, which is the
“meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention.”

Phillips, 415 F.3d at 1312-13; see also

InterDigital Commc’ns, LLC v. Int’l Trade Commc’n, 690 F.3d 1318, 1324 (Fed. Cir.
2012).

Thus, in interpreting claims, a court “should look first to the intrinsic

evidence of record, i.e., the patent itself, including the claims, the specification and,
if in evidence, the prosecution history.”

Wenger Manufacturing, Inc. v. Coating

Machinery Systems, Inc., 239 F.3d 1225, 1232 (Fed. Cir. 2001)(quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “Importantly, the
person of ordinary skill in the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term appears, but in the

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context of the entire patent, including the specification.” Phillips, 415 F.3d at 1315.
A “district court’s construction of a patent claim, like a district court’s
interpretation of a written instrument, often requires the judge only to examine and
to construe the document’s words without requiring the judge to resolve any
underlying factual disputes.” Teva Pharms. USA, Inc. v. Sandoz, Inc., --- U.S. ---,
135 S.Ct. 831, 840-41 (2015). “In some cases, however, the district court will need to
look beyond the patent’s intrinsic evidence and to consult extrinsic evidence in order
to understand, for example, the background science or the meaning of a term in the
relevant art during the relevant time period.” Id. Although “less significant than
the intrinsic record,” extrinsic evidence, which consists of “all evidence external to
the patent and prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises,” may “shed useful light on the relevant art.” See
Phillips, 415 F.3d at 1317 (citations omitted); see also HTC, 667 F.3d at 1277 (“A
court may also look to extrinsic evidence, such as dictionaries and expert
opinions.”)(citing Phillips, 415 F.3d at 1317). Before considering extrinsic evidence
to construe a disputed claim, however, courts must first examine the intrinsic
evidence. Phillips, 415 F.3d at 1317-19.

If a term is ambiguous based on the

intrinsic record, reliance on extrinsic evidence is then appropriate. See Power
Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1360 (Fed.
Cir. 2013)(citing Phillips, 415 F.3d at 1317)(“Where the intrinsic record is
ambiguous, and when necessary, we have authorized district courts to rely on
extrinsic evidence, which ‘consists of all evidence external to the patent and

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prosecution history, including expert and inventor testimony, dictionaries, and
learned treatises’”).
B.

Analysis of the Disputed Claim Terms

Means-plus-function claiming occurs when a claim term is drafted in a
manner that invokes 35 U.S.C. § 112, ¶ 6, which states: “An element in a claim for a
combination may be expressed as a means or step for performing a specified
function without the 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.” The question of whether
certain claim language invokes 35 U.S.C. §112, ¶6 is an exercise of claim
construction and is therefore a question of law. Wenger, 239 F.3d at 1231.
The parties agree that the claim language at issue invokes §112, ¶6, and the
Court agrees with the parties that the disputed claim language should be construed
as a means-plus-function limitation under §112, ¶6. The claim limitation’s use of
the word “means” creates a presumption that this section applies. E.g., Wenger, 239
F.3d at 1232 (citing Personalized Media v. Int’l Trade Comm’n, 161 F.3d 696, 703
(Fed. Cir. 1998)). And, here, the claim also recites a function corresponding to the
means – namely, “to set the speed of the propelling means to a first speed when the
receiver receives the bounced signal” (first means) and “to set the speed of the
propelling means to a second speed when the receiver does not receive the bounced
signal” (second means). ‘866 patent, col. 7, line 65-col. 8, line 3. Thus, the Court
construes the claim under §112, ¶6.

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Construing a means-plus-function claim term is a two-step process: the
Court must first identify the claimed function and must, second, determine what
structure, if any, disclosed in the specification corresponds to the claimed function.
Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012)(citing
Applied Medical Resources Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed.
Cir. 2006)). See also Wenger, 239 F.3d 1233 (“In construing a means-plus-function
limitation, a court must identify both the claimed function and the corresponding
structure in the written description for performing that function.”)(citing Micro
Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999)). “A
structure disclosed in the specification qualifies as a ‘corresponding structure’ if the
specification or the prosecution history ‘clearly links or associates that structure to
the function recited in the claim.’” Noah Systems, 675 F.3d at 1311 (quoting B.
Braun Medical, Inc. v. Abbott Laboratories, 124 F.3d 1419, 1424 (Fed. Cir. 1997)).
“Under §112, ¶6, a court may not import functional limitations that are not recited
in the claim, or structural limitations from the written description that are
unnecessary to perform the claimed function.” Wenger, 239 F.3d at 1233 (citing
Micro Chem., 194 F.3d at 1258).
Here, the parties agree that the claimed function of the “means for propelling
in a vertical direction,” is to propel the vehicle in a vertical direction. They also
agree that the corresponding structure that performs this function is “a single rotor
assembly, a single rotor assembly and a separate counter-torque assembly, or a
counter-rotating assembly, and equivalents thereof.”

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Joint Claim Construction

Chart [104], p. 1. With respect to the “first means to set the speed of the propelling
means to a first speed when the receiver receivers the bounced signal,” the parties
agree that the claimed function is “to set the speed of the propelling means to a first
speed when the receiver receives the bounced signal.” Id. And with respect to the
“second means to set the speed of the propelling means to a second speed when the
receiver does not receiver the bounced signal,” the parties agree that the claimed
function is “to set the speed of the propelling means to a second speed when the
receiver does not receive the bounced signal.”

Joint Claim Construction Chart

[104], p. 2.
The parties disagree, however, about which structures disclosed in the
specification correspond to the claimed functions.

Spin Master argues that the

corresponding structure for the first means function is a circuit board – Circuit
Board 136 – programmed to perform all of the steps shown in the top half of Figure
7 (namely, steps 200, 205, 210, 215, 220, 225 and 230 in Figure 7). Id., p. 2. Rehco
argues that the structure is a circuit board – Circuit Board 136 – programmed to set
the speed of the propelling means to a first speed when the receiver receives the
bounced signal and equivalents thereof.” Id., p. 2.
Similarly, with respect to the second means function, Spin Master argues
that the structure is Circuit Board 136 programmed to perform the steps delineated
in Figure 7 when the receiver’s output equals no surface detected – namely, steps
200, 205, 255, 260, 265, 270, 275, and 280. Id. Rehco argues that the structure is
“Circuit Board 136 programmed to set the speed of the propelling means to a second

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speed when the receiver receives the bounced signal and equivalents thereof.” Id.
Essentially, the parties’ dispute comes down to whether Figure 7 represents
the sole embodiment of the claimed structure. Spin Master’s proposed construction
of the corresponding structures for the first means function and the second means
function necessarily incorporate each and every one of the steps described in the
corresponding part of Figure 7.

Rehco’s proposed construction is broader,

encompassing some of those steps in every embodiment but not necessarily
encompassing all of those steps in each and every embodiment. The Court finds
that Rehco’s proposed construction is consistent with the language of the
specification and the claims; Spin Master’s is not.
As explained, claim 1 discloses:
A vehicle having a means for propelling in a vertical direction,
further comprising:
a transmitter positioned on the bottom of said vehicle for transmitting
a signal from the vehicle downwardly away from said vehicle;
a receiver positioned on the bottom of said vehicle for receiving said
signal as it is bounced off of a surface, defined as a bounced
signal; and
a control system that automatically sets a speed of the propelling
means in response to the receiver, said control system
having a first means to set the speed of the propelling
means to a first speed when the receiver receives the
bounced signal and the control system having a second
means to set the speed of the propelling means to a
second speed when the receiver does not receive the
bounced signal, the first speed being predefined as a speed
that causes the vehicle to gain altitude and the second speed
being predefined as a speed that causes the vehicle to
lose
altitude.

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‘866 Patent, col. 7, line 55 – col. 8, line 6 (emphasis added to highlight disputed
claim terms). Claim 1 does not disclose the Circuit Board 136 or any programming
for that Circuit Board.

The specification and the drawings, however, provide

further detail concerning the control system disclosed in claim 1.
The specification and the drawings show that the “Circuit Board 136” is part
of the “control system” disclosed in the patent. Figures 3a, 3b and 3c all show the
circuit board as part of the control system. The specification discusses the circuit
board in some detail. It states:
Once the vehicle is activated, through a remote control or an on
switch, the circuit board sends the vehicle into a climbing phase, by
increasing the rotor speed to the climbing speed. In addition, the
circuit board begins transmitting a signal. When the vehicle is close to
a surface or object, the receiver will receive the transmission signal
that is bounced off of the surface. As long as the receiver receives the
signal, the circuit board maintains a climbing phase (Fig. 3a). As the
vehicle moves further from the surface, the receiver will eventually
lose the signal that is bounced off of the surface. At the moment the
receiver loses the signal, the circuit board will switch to the fall speed
and enter a deceleration phase.
The control system may also
decrement to the deceleration speed in steps, so the movement of the
vehicle is not too severe. As the receiver regains the signal connection,
the circuit board switches back to the climbing phase (again the control
system may increment from the deceleration speed to the climbing
speed to control the movement of the vehicle). Eventually, the vehicle
will toggle back and forth between the deceleration and climbing phase
as the signal strength rests on the fringe of being received and not
received.
U.S. Patent No. 7,100,866, col. 3, line 65-col. 4, line 19. This description explains
the function the Circuit Board serves and, read along with the drawings, explains
the steps in the process. This is the description of the corresponding structure.
The specification goes on to discuss a preferred embodiment:

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In the preferred embodiment, the transmitter transmits an
infra-red frequency signal. The circuit board monitors the receiver’s
output in that upon detecting the signal bounced off of a surface the
receiver’s output is off (referred to as surface detected) and upon not
detecting the signal the receiver’s output is on (referred to as no
surface detected). When the surface is detected for a predetermined
time the propelling means is set to the climb speed and when the
surface is not detected for a predetermined time the propelling means
is set to the fall speed. Moreover, whenever there is a change in the
receiver’s output (from surface detected to surface not detected or vice
versa) the propelling means is set to the hover speed.
‘866 Patent, col. 4, lines 20-32. The specification then explains Figure 7, which
“illustrates a process of controlling the vehicle.” Id., col. 4, line 33.
The process initially resets a timer, Step 200. The timer is used
to time how long the receiver’s output has been in a particular state.
The receiver’s output is monitored and checked to determine if a
surface is detected, Step 205. If the receiver’s output does not indicate
a surface is detected, then the process goes to Step 255, where the
output must be no surface detected.
Continuing from Step 205, the receiver’s output is continually
monitored to determine if there has been a change, Step 210. If there
has been a change, the propelling means 110 is set to hover speed and
the timer is reset, Step 215. Since the receiver’s output changed from
surface detected to no surface detected, the process moves from Step
215 (out of the surface detected section) to Point A (into the no surface
detected section, discussed in further detail below).
From Step 210, if the receiver’s output has not changed, the
process checks to see if the time is equal to a predetermined set time,
Step 220. If the timer is not equal to the predetermined set time, then
the process increments the timer, Step 225, and moves back to Step
210. If the timer is equal to the predetermined set time, then the
propelling means 110 is set to the climb speed, Step 230.
Following Step 255 or Point A, when the receiver’s output equals
no surface detected, the receiver’s output is checked to determine if
there has been a change 260. If there has been a change in the output,
the propelling means is set to hover speed and the time is reset, Step
265. Since the receiver’s output changed, from no surface detected to
surface detected, the process moves from Step 265 (out of the surface
detected section) to Point B (into the surface detected section).
From Step 260, if the receiver’s output has not changed, the
process checks to see if the time is equal to a predetermined set time,
17

Step 270. If the timer is not equal to the predetermined set time, then
the process increments the timer, Step 275, and moves back to Step
260. If the timer is equal to the predetermined set time, then the
propelling means 110 is set to the fall speed, Step 280. The process
then goes back to Step 260 to monitor the output.
‘866 Patent, col. 4, line 33 – col. 5, line 4.
The Court finds that this latter description, which describes the process
illustrated by Figure 7, is a preferred embodiment and not, as Spin Master argues,
the proper construction for the corresponding structure.
The intrinsic evidence does not support Spin Master’s position. First, the
structure referenced in claim 1 (the control system) does not reference Figure 7, and
Figure 7 includes several steps that are not disclosed in claim 1. Most significantly,
the timing element incorporated into Figure 7 and discussed in the specification is
not disclosed in claim 1. In fact, the timing element is first disclosed in claim 5,
which depends from claim 1. Claim 5 discloses: “[t]he vehicle of claim 1, wherein
the control system further includes a means to increment the first speed and second
speed as functions of time.” ‘866 Patent, col. 8, lines 21-23.
“[T]he examination of other claims in a patent may provide guidance and
context for interpreting a disputed means-plus-function limitation, especially if they
recite additional functions.” Wenger Mfg., 239 F.3d at 1234. The doctrine of claim
differentiation provides that, as a general rule, each claim in a patent is presumed
to have a different scope. E.g., Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438
F.3d 1374, 1380 (Fed. Cir. 2006); Versa Corp. v. Ag–Bag Int'l Ltd., 392 F.3d 1325,
1330 (Fed.Cir. 2004).

The doctrine “stems from ‘the common sense notion that

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different words or phrases used in separate claims are presumed to indicate that
the claims have different meanings and scope.’” Seachange Int'l, Inc. v. C-COR, Inc.,
413 F.3d 1361, 1368-69 (Fed. Cir. 2005)(quoting Karlin Tech. Inc. v. Surgical
Dynamics, Inc., 177 F.3d 968, 971-72 (Fed.Cir. 1999)).

The doctrine is most

compelling “where the limitation sought to be ‘read into’ an independent claim
already appears in a dependent claim,” Seachange, 413 F.3d at 1368-69 (quoting
Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir. 2004)). Although
it is true that the doctrine “only creates a presumption that each claim in a patent
has a different scope” and is “not a hard and fast rule of construction.” Seachange,
413 F.3d 1369 (quoting Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d 1362, 1368
Fed. Cir. 2000)), the Court finds that it applies here. Reading claim 5 into claim 1,
as Spin Master’s construction does, adds a component that simply is not disclosed in
claim 1 and is not present in at least of the embodiments described in the
specification. Accordingly, the Court rejects Spin Master’s construction.
This conclusion is similarly support by the specification, which expressly
disclaims any intent to limit the control system disclosed in claim 1 to the circuit
board shown in Figure 7. The specification itself is clear that Figure 7 is just one
embodiment of the claimed invention and is not intended as the only possible
structure disclosed in the patent. In the “Detailed Description of the Invention”
section of the specification, the ‘866 patent states:
While the invention is susceptible to embodiments in many different
forms, there are shown in the drawings and will be described herein, in
detail, the preferred embodiments of the present invention. It should
be understood, however, that the present disclosure is to be considered
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an exemplification of the principles of the invention, and is not
intended to limit the spirit or scope of the invention and/or the
embodiments illustrated.
‘866 patent, col. 2, line 63-col. 3, line 3. Farther on, the specification states: “[f]rom
the foregoing and as mentioned above, it will be observed that numerous variations
and modifications may be effected without departing from the spirit and scope of the
novel concept of the invention. It is to be understood that no limitation with respect
to the specific methods and apparatus illustrated herein is intended or should be
inferred.” ‘866 Patent, col. 7, lines 48-53. The specification and description of the
preferred embodiments make clear that Figure 7 shows a preferred embodiment, not
the only embodiment. The specification states that Figure 7 “illustrates a process of
controlling the vehicle,” not the process for controlling the vehicle. ‘866 Patent, col.
4, line 33.
Spin Master suggests that Rehco’s proposed construction does not pass
muster under Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir. 2009).
In that case, the Federal Circuit considered the adequacy of the disclosure for an
“access control manager” limitation in a means-plus-function claim. There, the
patentee argued that the access control manager could be “any computer-related
device or program that performs the function of access control.” Blackboard, 574
F.3d at 1383. The Federal Circuit held that this type of disclosure was insufficient
because “[b]y failing to describe the means by which the access control manager will
create an access control list, Blackboard has attempted to capture any possible
means for achieving that end.” Id. at 1385. Citing Net MoneyIN, Inc. v. VeriSign,

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Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008), the court in Blackboard held that in a
means-plus-function claim in which the disclosed structure is a computer, or
microprocessor, programmed to carry out an algorithm, the disclosed structure is
not the general purpose computer, but rather the special purpose computer
programmed to perform the disclosed algorithm.”

Id. at 1384.

Rehco is not

claiming a general purpose computer or a generic circuit board; rather, it is
claiming Circuit Board 36 programmed to achieve the function disclosed in the
patent, according to the process described in the specification. Rehco’s disclosure of
the corresponding structure is consistent with Blackboard.
When a patentee employs means-plus-function language in a claim, he “must
set forth in the specification an adequate disclosure showing what is meant by that
language.” Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412
F.3d 1291, 1298 (Fed. Cir. 2005). “The requirement that the claims ‘particularly
point[] out and distinctly claim[]’ the invention is met when a person experienced in
the field of the invention would understand the scope of the subject matter that is
patented when reading the claim in conjunction with the rest of the specification.”
Id. (quoting S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1367 (Fed. Cir. 2001)).
Here, the testimony and declarations of the parties’ experts may be “useful to
confirm that the construed meaning is consistent with the denotation ascribed by
those in the field of the art,” but it may “not be used to vary the plain language of
the patent document.” Default Proof, 412 F.3d at 1298 (Omega Engineering, Inc. v.
Raytek Corp., 334 F.3d 1314, 1332 (Fed. Cir. 2003)).

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In support of its argument that the corresponding structure is the Circuit
Board disclosed in Figure 7 alone, Spin Master offers the declaration of its expert,
Dr. Mark E. Campbell.

Dr. Campbell analyzed the ‘866 patent, searching for

disclosure of algorithms that, to those skilled in the art, clearly corresponded to the
claimed functions of the “first means” and “second means” limitations, and opined
that “the circuit board in 136 must [be] programmed according to the algorithms
identified in Figure 7, which are the only algorithms corresponding to the claimed
functions disclosed in the specification . . . .” Campbell Declaration [94-1], ¶19. Yet
Dr. Campbell conceded at his deposition that he would be able to program the
Circuit Board to perform the recited function without the timing element. Campbell
Deposition [99-2], p. 23. This undermines Spin Master’s argument that the ‘866
patent would not allow one skilled in the art to program the Circuit Board 136 to
perform the claimed function without incorporating each and every step in Figure 7.
In contrast, Rehco’s expert, Matthew Spenko, opined that the structure that
corresponds to the recited function of the first means is the Circuit Board 136
programmed “to set the speed of the propelling means to a first speed when the
receiver receives a bounced signal,” and the structure that corresponds to the
recited function of the second means is the Circuit Board 136 programmed “to set
the speed of the propelling means to a second speed when the receiver does not
receive the bounced signal.” Spenko Declaration [99-1], ¶¶21-22, 27-28. Dr. Spenko
opined that the algorithm for the Circuit Board 136 for the first means function is:
step 205, step 210, step 230 and step 210. Spenko Declaration, ¶27. He opined that

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the algorithm for the Circuit Board 136 for the second means functions is: step 255,
step 260, step 280, step 260. Id., ¶28. This is consistent with the process described
in the specification at col. 3, line 65 – col. 4, line 19. And, unlike Spin Master’s
proposed construction, this construction is also consistent with the language of the
specification that disclaims any intent to limit the claimed structure to that
disclosed in Figure 7.
Spin Master relies on Nomos Corp. v. Brainlab USA, Inc., 357 F.3d 1364
(Fed. Cir. 2004) to support its argument that the corresponding structure is limited
to the structure disclosed in Figure 7. Reply [103], p. 4. In that case, only one
embodiment was described in the patent. Id., 1368. That is not the case here.
Indeed, as shown above, the ‘866 patent describes several embodiments, including
an embodiment that is broader than the embodiment shown in Figure 7, and
specifically notes that the embodiment disclosed in Figure 7 is just one embodiment.
In arguing that Figure 7 necessarily defines the corresponding structure,
Spin Master impermissibly reads into claim 1 additional limitations that are
neither disclosed nor necessary to the performance of the claimed function. The
Court “may not import structural limitations from the written description that are
unnecessary to perform the claimed function.” Id. (citing Wenger Manufacturing,
239 F.3d at 1233).

Spin Master’s expert conceded at his deposition that he would

be able to program the Circuit Board to perform the recited function without the
timing element. Campbell Deposition [99-2], p. 23. If it is not necessary to perform
the function, then it may not be read into the structure. Spin Master’s proposed

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construction violates this principle. Rehco’s does not.
Based upon the plain language of the claims and the specification, the Court
finds that the corresponding structure disclosed in the ‘866 patent to perform the
function of setting the speed of the propelling means to a first speed when the
receiver receives the bounced signal is Circuit Board 136 programmed to set the
speed of the propelling means to a first speed when the receiver receives the
bounced signal.

Additionally, the Court finds that the corresponding structure

disclosed in the ‘866 patent to perform the function of setting the speed of the
propelling means to a second speed when the receiver does not receive the bounced
signal is Circuit Board 136 programmed to set the speed of the propelling means to
a second speed when the receiver does not receive the bounced signal.
Conclusion
For the reasons explained above, the Court finds that Spin Master’s proposed
construction defines too narrowly the “structure” disclosed in the patent that is
necessary to perform the claimed function. Spin Master’s proposed construction
impermissibly imports an embodiment from the specification to limit the claim
terms and improperly imposes on claim 1 a limitation that is not recited there. In
contrast, Rehco’s proposed construction is consistent with the claim language,
specification and prosecution history of the patent in suit. It is also most consistent
with the extrinsic evidence in the record.

Accordingly, the Court rejects Spin

Master’s proposed construction and adopts Rehco’s proposed construction.
The Court construes the disputed claim terms as follows:

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Disputed Claim Term

Court’s Construction

“first means to set the speed of the
propelling means to a first speed when
the receiver receives the bounced signal”

Function: to set the speed of the
propelling means to a first speed when
the receiver receives the bounced signal

Structure:
Circuit
Board
136
programmed to set the speed of the
propelling means to a first speed when
the receiver receives the bounced signal
or equivalents thereof
“second means to set the speed of the
Function: to set the speed of the
propelling means to a second speed when propelling means to a second speed when
the receiver does not receive the bounced the receiver does not receive the bounced
signal”
signal
Structure: Circuit Board 136
programmed to set the speed of the
propelling means to a second speed when
the receiver does not receive the bounced
signal or equivalents thereof
Additionally, consistent with the Court’s prior Orders, the parties are to
complete all fact discovery by January 22, 2016. The case is set for a status hearing
January 21, 2016 at 9:45 a.m. in Courtroom 1725.
Dated: December 11, 2015
ENTERED:

___________________________________
John Robert Blakey
United States District Judge

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