Not Dead Yet Manufacturing, Inc. v. Pride Solutions, LLC et al

Filing 112

MEMORANDUM Opinion and Order Signed by the Honorable Rebecca R. Pallmeyer on 10/5/2015. Mailed notice. (etv, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
NOT DEAD YET
MANUFACTURING, INC.,
Plaintiff,
v.
PRIDE SOLUTIONS, LLC, AND,
MAY WEST MANUFACTURING,
Defendants.

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No. 13 C 3418
Judge Rebecca R. Pallmeyer

MEMORANDUM OPINION AND ORDER
Plaintiff Not Dead Yet Manufacturing, Inc. (“Not Dead Yet”) is an Illinois corporation
whose president, Kenneth E. Shoup, invents agricultural products, such as planting and
harvesting machinery. (Comp. ¶¶ 1, 8-10 [1].) Among those products is a device known as a
“stalk stomper”—an implement attached to the front of a combine or tractor to protect the
vehicle’s tires from being damaged by the stiff stalks left after grain or produce is harvested.
Stalk stompers can be cumbersome to attach and remove from the combine or tractor. To
address this problem, Mr. Shoup developed and, in 2013, received a patent for a “quick connect
and disconnect assembly” for securing a stalk stomper to a tool bar without the need for tools.
U.S. Patent No. 8,418,432 (the “‘432 Patent”). In 2014, Mr. Shoup was awarded a related
patent, which added specific claims directed at the overall quick connect and disconnect design
concept. U.S. Patent No. 8,745,963 (the “‘963 Patent”). Most notably, the ‘963 Patent provides
for adjustments to the angle of the stalk stomper as it is attached to the tractor and includes a
torsion spring component, which affords several advantages over a conventional coil spring.
In this lawsuit, Plaintiff charges Defendants Pride Solutions, LLC (“Pride Solutions”) and
its agricultural division, May West Manufacturing (“May West”), with infringing both the ‘432 and
‘963 Patents. The parties have presented competing interpretations of four claim terms in the

‘432 Patent and two claim terms in the ‘963 Patent. The court’s construction of those terms
follows.
BACKGROUND
A.

The Patented Invention
A stalk stomper is a commonly used agricultural implement that attaches to the front of a

tractor or combine. It is designed to protect a tractor or combine’s tires from damage caused by
corn stalk, bean stubble, and other types of cut stalks. (‘432 Patent, JA Ex. A, col., ll. 14-16 [691].) The top part of the stalk stomper is attached to the tractor via a bracket and tool bar
assembly positioned on the front of the vehicle. (Id. at col. 1, ll. 16-21.) The bottom part of the
stalk stomper acts as a shield, forcing stalk and other stubble to the ground as the tractor or
combine moves through the field. (Id.) The top part of the stalk stomper and bottom shield are
joined in the front, but connected by a spring, as well, which holds the bottom shield in tension
against the ground. (Id. at col. 1, ll. 23-26.) They also are connected by a chain, which limits th
force that the spring can exert against the bottom shield. (Id. at col. 1, ll. 26-29.) Ordinarily, an
individual must use tools to install the stalk stomper to the tractor’s bracket and tool bar,
necessarily a time-consuming process. (‘432 Patent, JA Ex. A, col. 1, line 24.) Mr. Shoup’s
patented “quick connect/disconnect coupling for a stalk stomper,” however, allows for an
individual to install the stalk stomper to a vehicle’s tool bar without the need for tools. (Id. at
col. 1, ll. 32-36.)
A depiction of the preferred embodiment of the invention, taken from the ‘432 Patent, is
reproduced below.

(‘432 Patent, JA Ex. A, FIG. 6.)

The Patent describes an assembly

comprised of: a bracket (42) with a pair of transversely aligned recessed arm members (46) and
holes (48); a pin (31); and a plate member (26) with a retention stop (27), depending arms (24)
and cross bar (29).

2

To connect the stalk stomper (10) to the tool bar assembly (12), the cross bar
(29) is engaged in the recesses (46) and the stalk stomper (10) is pivoted so that
the angle plate member (26) of the stalk stomper (10) is above the top of the pair
of holes (48) . . . . The pin (31) will engage the retention stop (27) to preclude
longitudinal movement of the stalk stomper (10) [and] . . . to prevent the cross
bar or transverse bar (29) from disengaging from the recesses (46) in use.
(Id. at col. 4, ll. 15-25.)

The ‘963 Patent describes a very similar invention, but also includes a slightly different
depiction of the preferred embodiment. (‘963 Patent, JA Ex. B, FIG. 8 [69-2].) As set forth in
the description of the invention section in the ‘963 Patent, the pin (131) is inserted into holes on
the bracket (148), as well as holes (150, 152, 154) on sidewalls (125) of the plate member
(126). (Id. at col. 6, ll. 38-53.) The desired angle of the stalk stomper is obtained by selecting
from the pair of holes (150, 152, 154) on the sidewalls (125). (Id. at col. 6, ll. 59-63.)

3

B.

The Disputed Claim Terms of the ‘432 Patent
The ‘432 Patent sets forth two claims. (‘432 JA Ex. A, col. 4, line 57 – col. 5, line 16.)

The parties dispute the meaning of the terms emphasized below in claim 1:
1. A quick connect/disconnect coupling for securing a stalk stomper to a tool bar
assembly on a combine corn head without the need for tools, the tool bar
assembly comprising a bracket having a pair of spaced-apart arm members
depending therefrom, each having a recess therein, the recesses being generally
transversely aligned and a pair of holes in the bracket spaced from the
recesses, the pair of holes being generally transversely aligned, and a pin
adapted to be received in the holes, the stalk stomper being provided with a
plate member having a cross bar adapted to be received in the recesses in the
depending arm members on the tool bar assembly and a retention means on
the plate member, whereby, to connect the stalk stomper to the tool bar
assembly, the cross bar is engaged in the recesses and the stalk stomper
is pivoted so that the plate member is above the pair of holes and the pin
can be inserted into the transversely aligned holes to connect the stalk
stomper to the tool bar assembly, the pin engaging the retention means so as to
prevent longitudinal movement of the stalk stomper with respect to the tool bar
assembly in operation to prevent the cross bar from disengaging from recesses
in use, and to disconnect the stalk stomper from the tool bar assembly, the pin is
removed from the transversely aligned holes and the cross bar is removed from
engagement with the recesses in the arm members.
(Id. at col. 4, line 57 – col. 5, line 13.)
C.

The Disputed Claim Terms of the ‘963 Patent
The ‘963 Patent sets forth twelve claims, only four of which contain disputed terms.

(‘963 Patent, JA Ex. B, col. 8, line 1 – col. 9, line 27.) The disputed terms, emphasized below,
are found in independent claims 1 and 6 and dependent claims 11 and 12:
1. A stalk stomper assembly adapted for adjustable attachment, the stalk stomper
comprising: . . . an upper support member . . . comprising an upper plate member
. . . and sidewall members extending longitudinally from the cross bar member
along the plate member, the sidewall members defining a pair of transversely
opposed attachment holes for securing a first end of the skid shoe member, . . . .
6. A stalk stomper assembly comprising: . . . (b) a detachable bracket member . . .
including a first and a second arm member, . . . each of the first arm member and
the second arm member defining a recess, the first arm member recess and the
second arm member recess being transversely aligned, each of the first and
second arm members further defining a hole spaced from the recesses, the holes
of the first and second arm members being generally transversely aligned; . . .
(d) a support member including: a crossbar adapted for receipt into the recesses;
. . . a retention member, the retention member adapted such that when the
support member and the bracket member are engaged the pin member is
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positioned within the holes of the first and second arm member and engages the
retention member of the support member to restrict longitudinal movement of
the support member relative to the bracket member; . . . .
11. The stalk stomper assembly as in claim 6, wherein the retention member
comprises at least one pair of mounting holes.
12. The stalk stomper assembly as in claim 9, wherein the retention member
comprises a plurality of pairs of adjustment holes formed along an arcuate path.
(Id.)
D.

Prosecution History
Mr. Shoup initially filed his patent application with the U.S. Patent and Trademark Office

(“PTO”) on July 19, 2011. (‘432 Patent, JA Ex. A, at 1.) The initial application included five
claims. Mr. Shoup withdrew claims 1 through 3 after the PTO Examiner rejected these as
obvious based on prior art reviewed by the office. 1 (JA Ex. C, at 46, 51-54 [69-3].) The PTO
Examiner then provided Mr. Shoup with a Notice of Allowance of pending claims 4 and 5, which
were issued on April 16, 2013 in the ‘432 Patent as claims 1 and 2. (Id. at 22-26.)
On June 26, 2013, Mr. Shoup filed another patent application with the PTO for a similar
stalk stomper invention, but with new features, including a torsion spring and a component
allowing for adjustments to the angle of the stalk stomper. (‘963 Patent, JA Ex. B, at 1.) The
initial application included twelve claims, and was supplemented twice, ultimately including
twenty-four claims. (Id. at JA Ex. D, at 80 [69-4].) Mr. Shoup withdrew twelve of the claims after
they were rejected by the PTO Examiner. (Id. at 38-44, 118.) On June 14, 2014, the remaining
claims were issued in the ‘963 Patent as claims 1 through 12. (‘963 Patent, JA Ex. B, at 1.).
In the meantime, on May 7, 2013, Plaintiff initiated this lawsuit, charging Defendant Pride
Solutions with infringing the ‘432 Patent. Pride responded by filing a petition with the PTO
Patent Trial and Appeal Board (PTAB), requesting an in partes review of the ‘432 Patent claims.
1

Prior art considered by the PTO included patents issued by Brown et al. (U.S.
Patent No. 5,634,736 and U.S. Patent Not. 5,915,837), Rohweder et al. (U.S. Patent No.
3,982,384), Kistner (U.S. Patent No. 4,890,974), Woerman (U.S. Patent No. 5,890,871), and
Schneider et al. (U.S. Patent No. 5,685,689) involving various types of couplings for heavy
equipment vehicles, including tractors and combines. (JA Ex. C, at 56, 175.)
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(See generally JA Ex. C.) In its petition, filed on September 26, 2013, Pride advanced two
arguments: first, the claim term “retention means” was not a proper means-plus-function
element as permitted under 35 U.S.C. § 112(6); and second, the patent was obvious under 35
U.S.C. § 103(a). (Id. at 6, 9.) In support of its § 103(a) argument, Pride Solutions relied on six
different prior art references. 2 (Id. at 126-160.) In a written decision on March 17, 2014, the
PTAB denied Pride Solutions’ petition, concluding that “‘retention means’ is a means-plusfunction term that includes a retention block or a retention stop in the form of an L-shaped
bracket,” and that Pride Solutions had not provided sufficient evidence showing that any of the
prior art involved a “retention means” as the PTAB had construed the term. (Id. at 11-12.)
E.

The Instant Lawsuit
Not Dead Yet filed suit against Pride Solutions and its agricultural division May West on

May 7, 2013, alleging that certain stalk stompers being manufactured and sold by Pride
Solutions infringe on Not Dead Yet’s ‘432 Patent. (Compl. ¶ 37.) On June 13, 2014, Not Dead
Yet amended its complaint to include state and federal law claims of false advertising by Pride
Solutions. 3 (1st Am. Compl. ¶¶ 68-94 [48].) Then, after issuance of the ‘963 Patent, Not Dead
Yet filed a second amended complaint on June 26, 2014, adding an allegation that Pride
Solutions’ stalk stompers infringe on the ‘963 Patent, as well. (2d Am. Compl. ¶¶ 99-103 [52].)
Pride Solutions denies that its products infringe on the ‘432 and ‘963 Patents, and asserts
affirmative defenses including that the ‘432 Patent and ‘963 Patent are invalid and/or
unenforceable. (Am. Ans. at 23-33 [54].)

2

In its PTO petition, Pride Solutions discussed agricultural implements
manufactured by Brown et al. (U.S. Patent No. 5,634,736), Fo (U.S. Patent No. 2006/0242865),
Lankota (LAN SS600C 2, Installation Instructions, Stalk Stomper Attachment for John Deere®
600 Series Corn Heads), Montgomery (U.S. Patent No. 3,874,533), Pierson (U.S. Patent No.
7,658,058), and Wolfe (U.S. Patent No. 2,935,802). (Id. at 5, 126-160.)
3

Not Dead Yet brought claims under The Lanham Act (15 U.S.C. § 1125(a)(1)),
the Illinois Uniform Deceptive Trade Practices Act (815 ILCS 510/2), and the Illinois Consumer
Fraud And Deceptive Business Practices Act (815 ILCS 505 et seq.). (1st Am. Comp. ¶¶ 6894.)
6

The parties dispute the meaning of a number of claim terms in the ‘432 and ‘963
Patents, namely “plate member” and related terms, “retention means,” “retention member,” and
“transversely.” In addition, the parties dispute whether the “whereby” clause contained in claim
1 of the ‘432 Patent imposes a limitation on the claim. This court addresses the disputed claim
language below.
DISCUSSION
A.

Legal Standards Governing Claim Construction
“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.’” Phillips v. AWH Corp., 415 F.3d 1303,
1311–12 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration
Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Claim construction is “the process of giving
proper meaning to the claim language,” and thus defines the scope of the protected invention.
Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997). Claim construction is a
matter of law for the court to determine. Markman v. Westview Instruments, Inc., 517 U.S. 370,
391 (1996).
As described in Phillips, the court begins its claim construction analysis by looking to the
words of the claims themselves, giving those words their ordinary and customary meaning as
understood by “a person of ordinary skill in the art in question at the time of the invention.”
Phillips, 415 F.3d at 1312-13. In some cases, the court’s claim construction “involves little more
than the application of the widely accepted meaning of commonly understood words.” Id. at
1314; CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“[D]ictionary
definitions may establish a claim term’s ordinary meaning[.]”) Even “readily apparent” claim
terms, however, must be read “in the context of the entire patent, including the specification.”
Phillips, 415 F.3d at 1312-13. If the meaning of a disputed term is not apparent from the claim
language, looked at in the context of the patent as a whole, the court may turn to other intrinsic

7

evidence, namely the specification and prosecution history. The specification in particular is an
important guide to the meaning of a disputed term, id. at 1315 (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)), because it includes a “full” and “exact”
description of the claimed invention, 35 U.S.C. § 112, thereby providing the reader with a “full
understanding of what the inventor[ ] actually invented and intended to envelop with the claim.”
Id. at 1316 (internal quotations omitted).
The prosecution history is also helpful to the court’s analysis because it “provides
evidence of how the PTO and the inventor understood the patent.” Id. at 1317. Prosecution
history consists of the record of proceedings before the PTO and may include prior art cited by
the patentee during the examination of the patent. Id. The court must be mindful, however, that
the prosecution history represents a negotiation between the PTO and the inventor and thus “is
less useful [than the specification] for claim construction purposes.” Id.
Finally, while in most situations an analysis of the intrinsic evidence alone will resolve
any ambiguity in a disputed claim term, the court may also consider extrinsic evidence, such as
technical dictionaries, treatises, and expert testimony. Id. at 1317-18. Extrinsic evidence is
deemed less reliable than the intrinsic evidence, however, for several reasons outlined by the
Federal Circuit in Phillips. Id. at 1318-19. In cases where the intrinsic evidence unambiguously
describes the scope of the patented invention, therefore, reliance on extrinsic evidence is
improper. Vitronics Corp., 90 F.3d at 1583.
With these standards of construction in mind, the court turns to the disputed claim
language. The court will also briefly address Plaintiff’s motion to strike Defendants’ expert’s
claim construction opinions. [72]
B.

Defendants’ Expert’s Claim Construction Opinions
Plaintiff moves to strike the opinions of Defendants’ expert, Dr. Frederick T. Elder (“Dr.

Elder”) on the grounds that his opinion does not take into account important intrinsic evidence,
such as the prosecution history. (Pl’s Mem. in Support of Motion to Strike, at 1 [73].) Whatever
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the merits of Plaintiff’s objections to Dr. Elder and his qualifications as an expert, the court does
not need to address these objections because it has not considered Dr. Elder’s opinion as part
of the claim construction process. Rather, the court’s decision is based on other more reliable
intrinsic and extrinsic evidence. The motion to strike is therefore stricken as moot.
C.

Plate Member and Related Terms (‘432 Patent)

Claim Term
plate
plate member

plate member having a cross
bar
1.

Plaintiff’s Proposed
Construction
See construction for “plate
member”
an upper support structure
comprising a generally planar
upper portion

plate member including at
least a cross bar

Defendants’ Proposed
Construction
a thin, flat sheet of metal of
uniform thickness
a plate formed as a planar
plate in exactly one plane or
formed as an angle plate in
exactly two intersecting
planes, and with a width that
is less than a spacing of
spaced apart arm member
depending from a bracket so
that the plate will fit between
arm members in an
assembled relationship, and
a thickness that is less than
a spacing between the top of
the holes in the arm
members and the bottom of
the bracket so that, with the
pins in the holes, the plate
member will be secured
between the bracket and the
pin.
plate member having formed
thereon a cross bar

Plate Member

The disputed term “plate member” 4 appears in claim 1 of the ‘432 Patent in the following
context: “the stalk stomper being provided with a plate member having a cross bar . . . and a

4

Defendants assert that the terms “plate” and “plate member” should be construed
separately because the term “plate” appears once in the specification without being followed by
the term “member.” Claim construction, however, focuses on construction of claims, not on
other parts of a patent. See Vitronics Corp., 90 F.3d at 1581-82 (defining “claim construction”
as “construction of the asserted claim”) (emphasis added). Accordingly, while the commonly
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retention means on the plate member, whereby, to connect the stalk stomper to the tool bar
assembly, . . . the plate member is above the pair of holes[.]” (‘432 Patent, JA Ex. A, col. 4, line
65 – col. 5, line 4.)
Defendants urge an extremely narrow construction of “plate member,” which they
contend is supported by the specification. They point to the specification’s description of the
plate member’s width and thickness and to its exclusive reference to two “species” of plate
member: “angle member” and “planar member.” 5 (Defs’ Br. at 14-15 [70].) Defendants argue
the word “plate” in particular means “a thin, flat sheet of metal of uniform thickness,” based on
its commonly understood meaning. (See Joint Claim Construction Chart and Status Report
(“Claim Construction Chart”), Ex. 1 [87-1].) In support of their construction, Defendants rely not
only on intrinsic evidence, but also on extrinsic evidence in the form of the American Society for
Testing and Materials (hereinafter, “ASTM”) standards and an expert declaration. (Defs’ Br. at
12-13.) Under the ASTM standards, “plate” is defined as a “flat, rolled sheet having a width and
length much greater than thickness.” (Id., Ex. F, at 6 [70-6].) Similarly, Defendant’s expert
states that, within the mechanical engineering industry, “plates are necessarily of uniform
thickness . . . necessarily flat . . . [and] have a thickness in excess of 3/16 inch.” (Id., Ex. A, at 9
[70-1].)
Plaintiff argues for a much broader interpretation; Plaintiff contends that “plate” should
be construed to mean any “upper support structure comprising a generally planar upper
portion.” (See Claim Construction Chart, Ex. 1.) Plaintiff directs the court’s attention to the
patent specification, which does not appear to limit “plate member” to a particular shape or
structure, as well as to prior art cited in the prosecution history, which uses the term “plate” to

understood meaning of “plate” is a necessary part of the court’s construction of the term “plate
member,” the court does not purport to construe terms outside of the claims themselves.
5

An “angle member,” according to Defendants, is a “single piece of plate having a
single bend along its longitudinal length,” while a “planar member” is a “single piece of plate.”
(Id. at 16.)
10

refer to non-flat materials. (Pl’s Br. at 7-10.) Plaintiff, specifically, points to two patents (U.S.
Patent 5,634,736 and U.S. Patent 5,915,837) (hereinafter, the “Brown Patents”) for “quick
connect-disconnect coupling device[s],” which use the terms “connecting plate” and “mounting
plates” to describe thin, curved pieces of material. (Id. at 11 n.3; Ex. 7 & 9 [71-8] [71-10].)
Plaintiff also cites to a patent (U.S. Patent 5,890,871) (hereinafter, the “Woerman Patent”) for a
“latching mechanism for a quick coupler,” which calls a thin, curved sheet of material a “bottom
plate” and a thin, non-curved sheet of material a “side plate.” (Id. at 11 n.3; Ex. 8 [71-9].)
The ordinary meaning of “plate” is “a smooth flat thin piece of material,” such as a “metal
. . . sheet.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 949 (11th ed. 2003), and nothing in
the claim language, nor the specification, provides the court with a reason to depart from this
ordinary meaning. Indeed, the specification’s repeated reference to an “angle plate member”
confirms that a “plate” may not be angled. (See, e.g., JA Ex. A, col. 1, ll. 27, 44, 47-48.) Prior
art cited during the prosecution history also supports the conclusion that the term “plate”
denotes a smooth flat thin sheet of metal, though it may be slightly angled or otherwise curved.
(See Pl’s Br. at 7.) Some of the prior art, such as the Woerman Patent, uses “plate” to refer to a
smooth flat thin sheet of metal that is entirely straight (Pl’s Br., Ex. 8), while other prior art, such
as the Brown Patents, use the same term to refer to a smooth flat thin sheet of metal that
contains minor curves. 6 (Id., Ex. 7 & 9.)
Neither side’s construction of the term “plate” in this case is fully consistent with this
ordinary meaning. Plaintiff interprets the term “plate” as any “upper support structure” that
“compris[es] a generally planar upper portion.”

(Claim Construction Chart, Ex. 1.)

That

construction of the term appears to be broader than what is supported by the intrinsic record. A
6

Plaintiff also points to a prior art stalk stomper comprised of a structural
component that appears to serve a similar purpose as the “plate member” in the ‘432 Patent.
(Pl.’s Br. at 7.) The component in the prior art has a flat upper portion, with two sides that
protrude downwards. (Id.) Plaintiff calls this component a “plate member” and then uses it as
so-called intrinsic evidence in support of Plaintiff’s broad construction of the term “plate
member” in the ‘432 Patent. (Id.) Because the prior art does not use the word “plate” to
describe the structure, however, its evidentiary value is limited.
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box-shaped “support structure” comprised of four distinct side pieces has “a generally planar
upper portion,” for example, but it would be incorrect to call the entire structure a “plate” under
the meaning adopted by dictionaries and prior art. Rather, it would be more accurate to call
each individual side of the box a “plate.” The specification and prosecution history are also
devoid of evidence that the words “support structure” were used in reference to “plate member,”
as Plaintiff suggests. (See Pl’s Br. at 7 (quoting Kinik Co. v. Int’l Trade Comm’n, 362 F.3d 1359,
1365 (Fed. Cir. 2004) (“The words of patent claims have the meaning and scope with which
they are used in the specification and prosecution history.”).)
Conversely, the court is unpersuaded by Defendants’ arguments that the patent
language supports the following very specific meaning of “plate member”:
a plate formed as a planar plate in exactly one plane or formed as an angle plate
in exactly two intersecting planes, and with a width that is less than a spacing of
spaced apart arm member depending from a bracket so that the plate will fit
between arm members in an assembled relationship, and a thickness that is less
than a spacing between the top of the holes in the arm members and the bottom
of the bracket so that, with the pins in the holes, the plate member will be
secured between the bracket and the pin.
(Claim Construction Chart, Ex. 1.) While it is true that “claim terms are understood in light of the
specification, a claim construction must not import limitations from the specification into the
claims” absent a clear disclaimer of claim scope. Deere & Co. v. Bush Hog, LLC, 703 F.3d
1349, 1354 (Fed. Cir. 2012); Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1373
(Fed. Cir. 2007). The Federal Circuit has thus “repeatedly warned against confining the claims”
to embodiments or examples that the inventor has provided in the specification. Phillips, 415
F.3d at 1323. Accordingly, the court declines to adopt Defendants’ contention that the ‘432
Patent specification “defines the width and thickness required of the plate member” and
confines the term to two specific “species.” (Defs’ Br. at 13-14). The court will not import these
restrictions into the term “plate member” where the claim itself does not require that the term be
limited in this manner.

12

The parties also dispute whether “plate member” is limited to “a single piece of an
assembly” (Defs’ Br. at 15), or “just means ‘part of a whole’” and can include multiple parts.
(Pl’s Br. at 13.) A Federal Circuit case cited by neither party offers some guidance. In CCS
Fitness, Inc. v. Brunswick Corp., the Federal Circuit held that “reciprocating member” could
include a “multi-component, curved structure.”

288 F.3d 1359, 1367 (Fed. Cir. 2002).

In

reaching its decision, the court reasoned that “‘member,’ as defined by common and technical
dictionaries, refers to a structural unit such as a . . . beam or tie, or a combination of these . . . or
to a distinct part of a whole.” Id. (internal quotations and citations omitted). The court then
rejected the argument that “member” was limited to a “structure comprising a single component
only.” Id.
In the patent at issue in this case, however, the term “member” is preceded by the noun
“plate,” which implies that “plate member” is limited to a single piece. This is because the
commonly understood meaning of “plate,” as discussed above, means a “sheet” of material.
Thus, while “member” in other contexts may include a structure with multiple components, the
context in which it appears in the ‘432 Patent satisfies the court that “plate member” is limited to
a single piece.
In light of the ordinary meaning of the term “plate,” as well as other intrinsic evidence,
this court construes “plate member” as: “a single smooth thin flat sheet of material that may
contain minor angles or curves.”
D.

Plate Member “Having a Cross Bar”
A related dispute concerns whether the phrase “plate member having a cross bar” in

claim 1 of the ‘432 Patent means the plate member “having formed thereon a cross bar,” which
is Defendants’ position, or the plate member “including at least a cross bar,” which is the
position taken by Plaintiff. (Claim Construction Chart, Ex. 1.) Plaintiff correctly recognizes that
the construction of the phrase “plate member having a cross bar” is largely determined by the
construction of the word “member.” (See Pl’s Br. at 12-13.) If “plate member” is limited to a
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single component, as discussed above, it cannot include a cross bar. For this reason, “plate
member having a cross bar” must mean “plate member having thereon a cross bar” because
“plate member” is properly construed as a “single . . . sheet of metal” that cannot include other
components. This construction is also supported by the specification, which provides that “[t]he
implement includes a plate member having thereon a cross bar[.]” (‘432 Patent, JA Ex. A,
col. 2, ll. 17-18 (emphasis added).)
E.

Retention Means and Related Terms (‘432 Patent)

Claim Term
retention means

Retention means “on the
plate member”

1.

Plaintiff’s Proposed
Construction
If not subject to 112(f): “a
structure formed with the plate
member, such as a block or
stop, adapted to physically
engage a pin member and
hold the position of the plate
member in place relative to
the bracket.”
If subject to 112(f): “a physical
block or a stop formed with
the plate member that retains
the position of the stalk
stomper with respect to the
mounting bracket by
restricting longitudinal
movement through
engagement or abutment with
a pin member.”
Retention means is
“supported by the plate
member”

Defendants’ Proposed
Construction
“a retention block or a
retention stop in the form of
an L-shaped bracket”

Retention means is
“positioned to be in contact
with the plate member”

Retention Means

The term “retention means” appears in claim 1 of the ‘432 Patent, which states that “the
stalk stomper [will be] provided with . . . a retention means on the plate member.” (Patent ‘432,
JA Ex. A, col. 4, line 65; col. 5, line 1.) The claim goes on to explain that “to connect the stalk
stomper to the tool bar assembly . . . the pin can be inserted into the transversely aligned holes
. . . the pin engaging the retention means so as to prevent longitudinal movement of the stalk
14

stomper . . . .” (Id. at col. 5, ll. 1-8.). The ‘432 Patent employs similar language in its description
of the invention, where it states, for example, that “provided on the angle plate member 26 are
retention means 27, which may be a retention block or a retention stop.” 7 (Id. at col. 4, ll. 2-4.)
In several other places, the patent also references the terms “retention stop” and “retention
block” without any reference to “retention means.” (See, e.g., id. at col. 1, line 61; col. 2, ll. 1,
19, 25, 44-45; col. 4, ll. 11, 21.)
The parties’ central dispute about the term “retention means” is whether “retention
means” is a means-plus-function term under 35 U.S.C. § 112(f). Section 112(f) provides a
“limited exception” to the general rule that claims must “particularly point[ ] out and distinctly
claim[ ] the subject matter of the invention,” 35 U.S.C. § 112(b), by permitting a claim to be
expressed “as a means or step for performing a specified function without the recital of
structure, material, or acts in support thereof.” Unlike other claim terms, so-called “means-plusfunction” terms under Section 112(f) are construed “to cover the corresponding structure,
material, or acts described in the specification or equivalents thereof.” 35 U.S.C. § 112(f);
Function Media, LLC v. Google, Inc., 708 1310, 1317 (Fed. Cir. 2003).
Once the court establishes that a disputed claim term is drafted in a means-plus-function
format, invoking § 112(f), construction of the term is a two-step process. Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). First, “[t]he court must identify the claimed
function.”

Id.

Second, “the court must determine what structure, if any, disclosed in the

specification corresponds to the claimed function.” Id.
The threshold question, therefore, is whether “retention means” should be considered a
means-plus-function limitation under 35 U.S.C. § 112(f).

Defendants argue that “retention

means” is governed by § 112(f) because the term “means” creates a presumption that Section
112(f) applies. (Defs’ Br. at 6.) Defendants also rely on the inter partes decision of the PTAB,

7

The summary section includes almost identical language: “Retention means in
the form of a retention stop are provided on the plate member.” (Id. at col. 2, ll. 38-39.)
15

which determined that “retention means” should be considered a means-plus-function limitation
under § 112(f). (Id. at 8.) Plaintiff urges that “retention means” is not governed by § 112(f).
Plaintiff acknowledges that the use of the word “means” creates a rebuttable presumption that a
term is within the purview of § 112(f), but argues that intrinsic evidence rebuts the presumption
in this case.

(Pl’s Br. at 14.)

Specifically, Plaintiff relies on language in the claim and

specification, which, in Plaintiff’s view, “shows a [person of ordinary skill in the art of the
invention] would understand ‘retention means’ to be a type of structure, and not merely anything
that retains the longitudinal position of a plate member relative to a bracket.” (Pl’s Br. at 14-15.)
As both parties understand, generally “the use of the word ‘means’ in a claim element
creates a rebuttable presumption that § 112[(f)] . . . applies.” Williamson, 792 F.3d at 1348. In
Unidynamics Corp. v. Automatic Prods. Int’l, Ltd., for example, the Federal Circuit held the claim
language “spring means tending to keep the door closed” was a means-plus-function limitation
under § 112(f). 157 F.3d 1311, 1319 (Fed. Cir. 1998) (emphasis added). Similarly, the Federal
Circuit in B. Braun Medical, Inc. v. Abbott Laboratories held that the phrase “means with the
other body element for holding said disc firmly against said first means in such a manner that
said disc is restrained from sideways movement” was subject to the requirements of § 112(f).
124 F.3d 1419, 1424 (Fed. Cir. 1997). “[T]he essential inquiry,” however, “is not merely the
presence or absence of the word ‘means’ but whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently definite meaning as the name for the
structure.” Williamson, 792 F.3d at 1348. Accordingly, the presumption can be rebutted by
relevant intrinsic and extrinsic evidence, Personalized Media Commc’ns, LLC v. Int’l Trade
Comm’n, 161 F.3d 696, 704 (Fed. Cir. 1998), such as “where a claim recites a function, but then
goes on to elaborate a sufficient structure, materials, or acts within the claim itself to perform
entirely the recited function.” Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28 (Fed.
Cir. 1997).

16

This court finds that the presumption in this case has not been rebutted by the evidence.
The pertinent part of the claim mentions that “[r]etention means” are “on the plate member” and
is “engag[ed]” by a pin “to prevent longitudinal movement of the stalk stomper.” (‘432 Patent, JA
Ex. A, col. 5, ll. 1, 6-7.) Plaintiff argues this claim language is evidence that “retention means”
refers to a physical structure. (Pl’s Br. at 14.). While this may be true, the relevant question is
not whether the words in the claim indicate the existence of some type of physical structure.
See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1536 (Fed. Cir. 1991) (“The recitation of
some structure in a means-plus-function element does not preclude the applicability of section
112[.]”). The question, rather, is whether the words in the claim “have a sufficiently definite
meaning as the name for the structure.” Williamson, 792 F.3d at 1348 (emphasis added). And
the answer to this question is no. A person of ordinary skill in the art would not be able to
extrapolate a name for the structure acting as a “retention means” on the invention simply based
on the fact that retention means are “on the plate member” and “engag[ed]” by a pin. (‘432
Patent, JA Ex. A, col. 5, ll. 1, 6-7.)
The patent specification supports the conclusion that the term “retention means” is
governed by § 112(f). The summary section states that “[r]etention means in the form of a
retention stop are provided on the plate member,” (‘432 Patent, JA Ex. A, col. 2, ll. 38-39
(emphasis added)), while the description of the invention states that “[p]rovided on the angle
plate member 26 are retention means 27, which may be a retention block or a retention stop.”
(Id. at col. 4, ll. 2-4 (emphasis added).) The plural form of “retention means,” as used in the
claim language, does not evoke a definite structure. On the contrary, the plural form suggests
that “retention means” may encompass multiple types of structures and/or methods of
performing the particular function. See MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 955 (11th
ed. 2003) (defining “plural” as “a class of grammatical forms [usually] used to denote more than
one”). Plaintiff argues the above language, as well as other language in the summary section,
rebuts the presumption that § 112 applies because it “defines ‘retention means’ as being ‘in the
17

form of a retention stop’” that “abuts a pin member.” (Pl’s Br. at 15.) The statement that “A is in
the form of B,” however, is not the same the statement that “A equals B,” especially when the
Federal Circuit has “warned against importing [such] limitations from the specification into the
claims absent a clear disclaimer of claim scope.” Andersen Corp., 474 F.3d at 1373. This
language that Plaintiff emphasizes, therefore, is best understood as part of the second step in
the court’s means-plus-function analysis–identification of “the corresponding structure . . .
described in the specification,” 35 U.S.C. § 112(f)—as opposed to the court’s preliminary
analysis of whether the claim term is subject to the requirements of § 112(f).
Having determined that “retention means” is a means-plus-function term governed by §
112(f), the court turns to the next step: “identify[ing] the claimed function.” Williamson, 792
F.3d at 1351. That step is relatively straightforward here. The claim states that a “pin engag[es]
the retention means so as to prevent longitudinal movement of the stalk stomper with respect to
the tool bar assembly in operation to prevent the cross bar from disengaging from the recesses
in use . . . .” (‘432 Patent, JA Ex. A, col. 5, ll. 6-8.) A person of ordinary skill in the art of the
invention would thus understand the function of retention means to be “prevent[ing] longitudinal
movement of the stalk stomper with respect to the tool bar assembly” and “prevent[ing] the
cross bar from disengaging from the recesses in use.” Id.
Next, with this function in mind, “the court must determine what structure, if any,
disclosed in the specification corresponds to the claimed function.” Williamson, 792 F.3d at
1351. An examination of the specification shows a clear and unambiguous disclosure of such
structure. As mentioned above, the summary section explains that “[r]etention means in the
form of a retention stop are provided on the plate member.” (‘432 Patent, JA Ex. A, col. 2, ll. 3839.) Likewise, the description of the invention section states: “[p]rovided on the angle plate
member 26 are retention means 27, which may be a retention block or a retention stop.” (Id. at
col. 4, ll. 2-4.) The drawing of the preferred embodiment also depicts a retention block or stop,
specifically in the form of an L-shaped bracket (see element 27 depicted in FIG. 6 above).
18

Defendants argue that the structure corresponding to “retention means” is limited to the
L-shaped bracket portrayed in the preferred embodiment drawing because it is “the only
depicted embodiment” of the structure contained in the patent. (Defs’ Br. at 6.) As Defendants
point out, this was also the conclusion reached by the PTAB. (See PTAB Decision, JA Ex. C, at
9.) Plaintiff, on the other hand, contends that “retention means” should not be limited to the Lshaped bracket, but instead may include “any shape block or stop that retains the position of the
stalk stomper with respect to the mounting bracket by restricting the longitudinal movement via
engagement with a pin member, and equivalents thereof.” (Pl’s Br. at 18.) In support of its
argument, Plaintiff underscores that the L-shaped bracket only appears in the drawing of the
preferred embodiment, whereas the text itself refers to “retention means” as a stop or block
without limiting it to any particular shape. (Id.)
The court agrees with Plaintiff that the structure corresponding to “retention means” is
not limited to an L-shaped bracket. 8 Throughout the patent, “retention means” is repeatedly
referred to in the written description as a retention “stop” or “block.” (See, e.g., ‘432 Patent, JA
Ex. A, col. 2, ll. 38-39, 44-46; col. 3, ll. 33-35; col. 4, ll. 2-4; col. 5, 10-14, 21-25.) No patent
language confines the retention stop or block to a specific shape.

Although the preferred

embodiment drawings portray the retention stop or block as an L-shaped structure, a patentee
cannot be expected to include all possible forms of the invention in the patent figures. Nor was
the patentee here required to do so. Just as patent drawings “may not be relied on to show
particular sizes if the specification is completely silent on the issue,” Hockerson-Halberstadt,
Inc. v. Avia Group Intern, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000), patent drawings may not be
relied on to show particular shapes where the specification is silent and the patent drawings
only depict a preferred embodiment.
8

Although the court’s conclusion differs from the findings of the PTAB, because
review of patent language and other intrinsic evidence for purposes of claim construction is
solely a determination of law, the PTAB’s claim construction findings are subject to de novo
review by this court. Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841
(2015).
19

The court concludes that Plaintiff’s suggested construction of the means-plus-function
term “retention means” is consistent with the corresponding structure disclosed in the
specification. The court, therefore, adopts the following construction of the term: “a block or
stop that retains the position of the stalk stomper with respect to the mounting bracket by
restricting the longitudinal movement via engagement with a pin member, and equivalents
thereof.”
2.

Retention Means On the Plate Member

Relatedly, the parties dispute the meaning of the phrase “[r]etention means on the plate
member,” which appears in claim 1 of the ‘432 Patent. (‘432 Patent, JA Ex. A, col. 5, line 1.)
Plaintiff contends the phrase should be construed to mean that the retention means is
“supported by the plate member,” while Defendants argue the phrase should be construed to
mean retention means is “positioned to be in contact with the plate member.”

(Claim

Construction Chart, Ex. 1.) The court dispenses with both proposed constructions, as both are
inconsistent with the commonly understood meaning of the basic word “on.”
Defendants’ proposed construction of “on the plate member” is far too broad.

It is

common for an object to be “positioned to be in contact” with one another object, without the
first object necessarily being “on” the second object. A fork and spoon lying side-by-side, for
example, may be “positioned to be in contact” with each other, without the fork being “on” the
spoon, or vice versa. Plaintiff’s proposed construction of the phrase “on the plate member,”
however, is also overbroad. Skyscrapers are supported by their frames, but one would not
describe skyscrapers as being “on” their frames. The ordinary meaning of the word “on” is
“physically in contact with and supported by the top surface of.”
COLLEGIATE DICTIONARY 864 (11th ed. 2003).
departing from that ordinary meaning.

MERRIAM-W EBSTER’S

The parties offer no compelling reason for

The court thus adopts the following construction of

“retention means on the plate member”: “retention means physically in contact with and
supported by the surface of the plate member.”
20

F.

Retention Member (‘963 Patent)

Claim Term
retention member

Plaintiff’s Proposed
Construction
If not subject to 112(f): “a
structure included with the
support member, such as a
block or stop, adapted to
physically engage a pin
member and hold the position
of the support member in
place relative to the bracket.”

Defendants’ Proposed
Construction
If not subject to 112(f): “a
plurality of pairs of
adjustment holes formed
along an arcuate path”
If subject to 112(f): “a
retention block or retention
stop in the form of an Lshaped bracket”

If subject to 112(f): “a
structural stop or block
included with the support
member”
A similar issue is in dispute with respect to the term “retention member,” which appears
in claims 6, 7, 11, and 12 in the ‘963 Patent. Claim 6 states that the support member includes a
“retention member . . . adapted such that when the support member and the bracket member
are engaged the pin member . . . engages the retention member of the support member to
restrict longitudinal movement of the support member . . . .” (‘963 Patent, JA Ex. B, col. 9, ll. 38.) Claims 11 and 12, meanwhile, specify particular forms of the retention member, claim 11
explaining that “the retention member comprises at least one pair of mounting holes,” and claim
12 stating that “the retention member comprises a plurality of pairs of adjustment holes formed
along an arcuate path.” (Id. at col. 9, ll. 22-27.)
Defendants assert that, like “retention means” in the ‘432 Patent, “retention member” is a
means-plus-function term subject to § 112(f), which should be construed identically with
“retention means.” (Defs’ Br. at 9-10.) The term “retention member” used in the ‘932 Patent
does not use the word “means,” but Defendants urge that § 112(f) nonetheless applies because
the patent claims “recite no structure for this term,” and the use of the term “substantially
parallels the recitation of ‘retention means’” in the ‘432 Patent.

(Defs’ Br. at 9.)

In the

alternative, Defendants argue, if the court finds “retention member” is not a means-plus-function

21

term, it should be construed as “a plurality of pairs of adjustment holes formed along an arcuate
path,” as recited in Claim 12 of the ‘963 Patent. (Id. at 11.)
Plaintiff rejects the contention that “retention member” is a means-plus-function term
under § 112(f), urging that the absence of the word “means” creates a presumption that § 112(f)
does not apply. (Pl’s Br. at 24; see also Pl’s Notice of Recent Legal Authority at 2 [93].) This
presumption, according to Plaintiff, has not been rebutted because the patent language shows
that “retention member” denotes a structural obstruction that engages a pin. (Id.)
Indeed, until recently, the Federal Circuit had concluded that the absence of the word
“means” in a claim term creates a “strong” presumption that § 112(f) does not apply.
Williamson, decided earlier this year, changes things. 792 F.3d at 1349. According to the
Williamson court, the absence of the word “means” creates a presumption that the term is not
governed by § 112(f), but no “heightened evidentiary showing” is needed to rebut this
presumption. Id. Rather, the presumption can be overcome merely by showing “that the claim
term fails to recite sufficiently definite structure” or else recites “function without reciting
sufficient structure for performing that function.” Id. (internal citations and quotations omitted).
As with “retention means,” therefore, the court’s analysis of “retention member” hinges
on whether the claim language recites a “definite structure” in reference to the term. The ‘432
and ‘963 Patents use similar language to refer to the terms “retention means” and “retention
member.” Not only does each term include the word “retention,” but each term also performs
the same function: to prevent, or restrict, longitudinal movement of the stalk stomper. (‘432
Patent, JA Ex. A, col. 5, line 7 (using the word “prevent”); ‘963 Patent, JA Ex. B, col. 9, ll. 7-8
(using the word “restrict”).)

The “retention means” and “retention member” are also both

“engag[ed]” by a pin once it is inserted into bracket holes on the assembly. (‘432 Patent, JA
Ex. A, col. 2, 5. 6-7; ‘963 Patent, JA Ex. B, col. 9, line 6.) Claim 6 of the ‘963 Patent contains no
additional guidance regarding the structure of the “retention member.” Thus, for the same

22

reasons that the court concluded “retention means” is a means-plus-function term, the court
also construes “retention member” as a means-plus-function term under § 112(f).
Having determined that “retention means” and “retention member” serve the same
function—to prevent, or restrict, longitudinal movement of the stalk stomper—the court turns to
the remaining issue: identifying the disclosed “structure . . . [that] corresponds to the claimed
function.” Williamson, 792 F.3d at 1351. Dependent claims 11 and 12 in the ‘963 Patent state
that “the retention member comprises at least one pair of mounting holes,” in one embodiment,
and “a plurality of adjustment holes formed along an arcuate path,” in another. (‘963 Patent, JA
Ex. B, col. 9, ll. 23-27.) The specification does not mention the term “retention member,” but
does refer to the structures “detent,” “retention stop,” and “stop member” as carrying out the
same function. (See, e.g., ‘963 Patent, Ex. B, col. 2, ll. 7-8, 15, 39; col. 4, line 64.) This is,
again, very similar to the ‘432 Patent specification, in which “retention stop” or “retention block”
are the disclosed structures. This court will thus adopt the same construction as it did for the
‘432 Patent. “Retention member” is construed as: “a block or stop that retains the position of
the stalk stomper with respect to the mounting bracket by restricting the longitudinal movement
via engagement with a pin member, and equivalents thereof.” This construction is consistent
with the patent language, as a “block or stop that retains the position of the stalk stomper” can
be comprised of either a “pair of mounting holes” (claim 11) or “a plurality of adjustment holes
formed along an arcuate path” (claim 12).
G.

Whereby Clause (‘432 Patent)

Claim Term
stalk stomper is pivoted

stalk stomper is pivoted so
that the plate member is

Plaintiff’s Proposed
Construction
Process language is not a
claim limitation

Not a limitation.
23

Defendants’ Proposed
Construction
stalk stomper is rotated
about a transverse axis
through the cross bar while
the cross bar is engaged in
the recesses so as to
connect the stalk stomper to
the tool bar assembly
stalk stomper is pivoted to
position the plate member

above the pair of holes

If a limitation, “at least a
portion of the plate member is
positioned above the holes in
the bracket”

to connect the stalk stomper
to the tool bar assembly, the
cross bar is engaged in the
recesses and the stalk
stomper is pivoted so that
the plate member is above
the pair or holes and the pin
can be inserted into the
transversely aligned holes

Process language is not a
claim limitation.

between a bottom of the
bracket and a top of the pair
of holes such that the pin is
under the plate member
when the pin is inserted into
the pair of holes
to connect the stalk stomper
to the tool bar assembly:
first, the cross bar is
engaged in the recesses;
second, with the cross bar
engaged in the recesses, the
stalk stomper is then pivoted
so that the plate member is
above the pair of holes; and
third, with the stalk stomper
so pivoted, the pin can then
be inserted into the
transversely aligned holes

The next three disputed terms hinge on whether the “whereby” clause in claim 1 of the
‘432 Patent imposes limitations on the patented invention. The “whereby” clause appears in
claim 1 of the ‘432 Patent as follows:
whereby, to connect the stalk stomper tool bar assembly, the cross bar is
engaged in the recesses and the stalk stomper is pivoted so that the plate
member is above the pair of holes and the pin can be inserted into the
transversely aligned holes to connect the stalk stomper to the tool bar assembly,
the pin engaging the retention means so as to prevent longitudinal movement of
the stalk stomper with respect to the tool bar assembly in operation to prevent
the cross bar from disengaging from the recesses in use . . . .
(‘432 Patent, JA Ex. A, col. 5, ll. 1-10.)
It is well established that a “whereby” clause does not limit a claim when it merely
expresses the “intended result” of the limitations already stated in the claim. Minton v. Nat’l
Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003); Texas Instruments
Inc. v. United States Int’l Trade Comm’n, 988 F.2d 1165, 1172 (Fed. Cir. 1993). When a
“whereby” clause expresses a “condition that is material to patentability,” however, “it cannot be
ignored . . . .” Hoffer v. Microsoft, 405 F.3d 1326, 1329 (Fed. Cir. 2005). Although both Hoffer
and Minton interpreted a “whereby” clause in the context of a method claim, Hoffer did not
confine its “materiality” test to method claims.
24

Accordingly, the court assumes the same

analysis applies to apparatus claims.

See, e.g., Titan Atlas Inc. v. Sisk, 894 F.Supp.2d 754,

762 (W.D. Va. 2012) (applying Hoffer to a “whereby” clause in an apparatus claim). The key
question, therefore, is whether the clause expresses a “condition that is material to
patentability.” Id. By the same token, a clause that simply recites the result of an already
established limitation is not considered “material.” Minton, 336 F.3d at 1381.
Defendants argue the “whereby” clause in claim 1 should be construed as a limitation
because it introduces new conditions material to patentability that are more than “the intended
result” of other limitations in the claim. (Defs’ Br. at 19-20.) Specifically, Defendants propose,
the “whereby” clause limits the method of connecting the stalk stomper to the tool bar as
requiring the following steps: first, the cross bar is engaged in the recesses; second, with the
cross bar engaged in the recesses, the stalk stomper is pivoted so that the plate member is
above the pair of holes; and third, with the stalk stomper pivoted, the pin can then be inserted
into the transversely aligned holes. (Id. at 20.) In addition, they contend the particular phrases
“stalk stomper is pivoted” and “plate member is above the pair of holes,” which both appear in
the “whereby” clause, impose further limitations on the claim.

(Id. at 21-23.)

Plaintiff,

meanwhile, advocates for a distinction between construing “whereby” clauses in “method
claims” versus “apparatus claims.” (Pl’s Br. at 21-22.) Claim 1 is an “apparatus claim,” Plaintiff
observes, while the “whereby” clause describes the “method” for connecting the stalk stomper to
the tool bar assembly. (Id.) As a result, Plaintiff contends, the court should not read these socalled process limitations into the claim because they add no new conditions to the apparatus or
structure itself. (Id.)
In support of its position, Plaintiff cites Baldwin Graphic Sys., Inc. v. Siebert, Inc., where
the Federal Circuit cautioned that “[c]ourts must generally take care to avoid reading process
limitations into an apparatus claim . . . because the process by which a product is made is
irrelevant to the question of whether that product infringes on a pure apparatus claim.” 512 F.3d
1338, 1345 (Fed. Cir. 2008) (internal citations omitted). In Baldwin, the court held the phrase
25

“reduced air content cleaning fabric” in an apparatus claim could not be construed together with
a similar phrase in a process claim, “reducing air content of a strip of cleaning fabric,” because
each claim involved a different class of patentable subject matter under 35 U.S.C. § 101. Id.
Baldwin did not involve a “whereby” clause, however, and therefore does not change the
general rule that when determining whether a “whereby” clause limits a claim, courts must focus
on whether the conditions cited in the clause are “material to patentability.” Hoffer, 405 F.3d at
1329. Indeed, Plaintiff acknowledges this much. (Pl’s Br. at 21.)
Baldwin asserts, more generally, that courts should avoid reading process limitations
into apparatus claims. Here, the court need not decide whether Baldwin’s teaching governs the
court’s interpretation of the “whereby” clause. Conditions recited in the “whereby” clause in this
parent are material to patentability to the extent they relate to the function of the term “retention
means,” not to the process by which the stalk stomper is assembled. See Cordis Corp. v.
Boston Scientific Corp., 561 F.3d 1319, 1135 (Fed. Cir. 2009) (“[F]unctional language can be a
claim limitation.”) (citing Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d
1367, 1375 (Fed. Cir. 2008)). The relevant part of the “whereby” clause provides: “so that the
plate member is above the pair of holes and the pin can be inserted into the transversely
aligned holes to connect the stalk stomper to the tool bar assembly, the pin engaging the
retention means so as to prevent longitudinal movement of the stalk stomper . . . .” (‘432
Patent, JA Ex. A, col. 5, ll. 1-8.) The “whereby” clause, therefore, describes the function of the
retention means as “prevent[ing] longitudinal movement of the stalk stomper,” which, as
mentioned by the PTAB, is not identified anywhere else in the claim language. (JA Ex. C, at 8;
‘432 Patent, JA Ex. A, col. 5, line 1.) The function of the retention means is certainly an “integral
part of the invention.” Hoffer, 405 F.3d at 1330. 9

9

Plaintiff implicitly concedes that the “whereby” clause at least imposes some
limitations: it argues that the phrase “pin engaging the retention means” limits retention means
to a particular structure that abuts a pin. (Pl’s Br. at 15.)
26

As the court reads the above language, it also identifies a necessary part of the retention
means’ function: the plate member must be “above the pair of holes” so that the pin can be
inserted into the holes and engage the retention means. The disputed phrase “so that the plate
member is above the pair of holes,” therefore, is material to patentability and imposes a
functional limitation on the claim.

(‘432 Patent, JA Ex. A, col. 5, line 4.)

This finding is

consistent with Federal Circuit case law holding the phrase “such that” can operate as a claim
limitation where it is followed by functional language. See Cordis Corp., 561 F.3d at 1336
(holding that a stent patent claim phrase “such that the links and bands define an expandable
structure having axial flexibility in an unexpanded configuration” limited the claim to stents
“having axial flexibility”).
The next question is how the phrase should be construed to limit the claim. Defendants
argue the phrase “so that the plate member is above the pair of holes” should be construed to
mean the “stalk stomper is pivoted to position the plate member between a bottom of the
bracket and a top [sic] the pair of holes such that the pin is under the plate member when the
pin is inserted into the pair of holes.” (Claim Construction Chart, Ex. 1.) A person of ordinary
skill in the art of this invention, according to Defendants, would understand that the pin, once
inserted into the bracket holes, acts as a support for the stalk stomper. (Defs’ Br. at 22-23.)
The pin can only provide this support, moreover, if it is positioned “under” the plate member.
(Id. at 23.) To the extent the clause is limiting, Plaintiff proposes “the plate member is above the
pair of holes” means simply that “at least a portion of the plate member is positioned above the
holes in the bracket.”

(Claim Construction Chart, Ex. 1.)

Plaintiff points to the preferred

embodiment drawing of the invention, which, as discussed below, supports its position. ( Pl’s
Br. at 23.)
Although courts must generally avoid imposing limitations from a preferred embodiment
into a patent claim, courts also must avoid construing a patent claim in a manner that would
result in the preferred embodiment falling outside the scope of the patent. Vitronics Corp., 90
27

F.3d at 1583 (“Such an interpretation is rarely, if ever, correct and would require highly
persuasive evidentiary support[.]”) As Plaintiff notes, the preferred embodiment of the invention
in the ‘432 Patent depicts a plate member having a substantial portion above the holes and
inserted pin member, and a minor portion below the holes and inserted pin member:

26

(‘432 Patent, JA Ex. A, FIG. 2 (emphasis added).) Plaintiff, therefore, is correct that it would be
improper to construe “above” as requiring the entire plate member to be in a position higher
than the holes and inserted pin. (Pl’s Br. at 23.) 10 It would also be improper to construe “above”
as requiring the plate member to be positioned “between a bottom of the bracket and . . . the
pair of holes,” as Defendants urge the court to do (Claim Construction Chart, Ex. 1), because
nothing in the claim language supports this limited construction.

The description of the

preferred embodiment does provide that the “plate member 26 will be secured between the
bracket 42 and the pin 31,” (Ex. A, col. 4, ll. 6-10), but, as noted earlier, the specification does
not limit a patent claim absent specific evidence to the contrary. Deere & Co., 703 F.3d at 1354;
Andersen Corp., 474 F.3d at 1373.
The common meaning of “above” means “in . . . a higher place than.”

MERRIAM-

WEBSTER’S COLLEGIATE DICTIONARY 4 (11th ed. 2003). Merely construing the word “above”

10

Contrary to Plaintiff’s assertions, Defendants’ proposed construction would not
require the entire plate member to be above the bracket holes. (See id.) The plate member can
be “a top [sic] of the pair of holes such that the pin is under the [inserted] plate member,” (Defs’
Br. at 22) while also having a portion of the plate member below the holes and inserted pin
member, as depicted in the preferred embodiment.
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according to its common meaning, however, would not resolve the parties’ dispute over whether
the patent requires the entire plate member, as opposed to a portion of the plate member, to be
in a higher place than the bracket holes.

As mentioned above, the preferred embodiment

drawing in the ‘432 Patent precludes a construction of “above” as requiring the entire plate
member to be higher than the bracket holes. At the same time, however, Plaintiff’s suggestion
that “above” merely requires “at least a portion of the plate member [to be] positioned above the
holes in the bracket,” (Claim Construction Chart, Ex. 1 (emphasis added)), is not consistent with
the way that a oerson of ordinary skill in the art would understand that term. Although Plaintiff
uses the example of a boat, which may be simultaneously above and below the water’s surface,
(Pl’s Br. at 23), a boat is only “above” water when a substantial portion of the boat is higher than
the water’s surface. Otherwise, the boat is sinking, or at least appears to be. Likewise, the
plate member is not necessarily “above” the bracket holes whenever any portion of the plate
member is positioned above the holes. It can only be “above” the bracket holes if a substantial
portion of the plate member is higher than the holes.
Accordingly, this court construes the phrase the stalk stomper is pivoted “so that the
plate member is above the pair of holes” as: the stalk stomper is pivoted “so that a substantial
portion of the plate member is in a higher place than the pair of holes.” (JA Ex. A, col. 5, ll. 1-8.)
This construction is consistent with the claim language, preferred embodiment, and other
intrinsic evidence.
It is unnecessary to construe the remaining disputed terms that appear in the “whereby”
clause because they do not relate to the function of “retention means,” nor are they material to
patentability. Specifically, the meaning of the term “pivoted,” and whether the stalk stomper is
pivoted at all, is not integral to the invention. Rather, the fact that the stalk stomper is “pivoted”
is merely a result of other limitations already recited in the claim; in order for the cross bar to be
received in the recesses and the pin inserted into the bracket holes, engaging the retention
means, the stalk stomper must be pivoted. Similarly, the court rejects Defendants’ contention
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that the “whereby” clause should be construed to require three steps performed in a specific
sequence. (Defs’ Br. at 23.) Unlike the terms relating to the function of retention means, a
recitation of the sequence in which certain actions occur to connect the stalk stomper to the tool
bar assembly is purely a process issue. Defendants provide no evidence that this process was
material to, much less considered in, the intrinsic record.
In sum, the only claim limitations imposed by the “whereby” clause relate to the function
of the “retention means,” which includes the following disputed phrase: “so that the plate
member is above the pair of holes.” The court construes this phrase as: “so that a substantial
portion of the plate member is in a higher place than the pair of holes.” (JA Ex. A, col. 5, ll. 1-8.)
H.

Transversely (‘432 and ‘963 Patent)

Claim Term
transversely

Plaintiff’s Proposed
Construction
being across

Defendants’ Proposed
Construction
directed along a line parallel
to an axis about which the
cross bar pivots when the
cross bar is engaged in the
recesses

The last disputed term, “transversely,” is used in the claims of both patents to describe
the placement of holes and recesses in the bracket arm members of the device. 11 Claim 1 of
the ‘432 Patent includes the following recitation: “the tool bar assembly comprising a bracket
having a pair of spaced-apart arm members . . . each having a recess therein, the recesses
being generally transversely aligned and a pair of holes in the bracket . . . being generally
transversely aligned . . . .” (‘432 Patent, JA Ex. A, col. 4, ll. 59-64.) Claims 1 and 6 of the ‘963
Patent contain similar language, claim 1 stating that the stalk stomper assembly includes “two
sidewall members defining a pair of transversely opposed attachment holes” and claim 6 stating

11

In their brief, Defendants also dispute the term “transverse.” (Defs’ Br. at 24.)
Plaintiff’s brief, however, only mentions the term “transversely,” (Pl’s Br. at 20), as does
Defendants’ reply brief, (Defs’ Reply Br. at 15), and the Joint Claim Construction Chart
submitted by the parties. (Claim Construction Chart, Ex. 1.) Accordingly, this court will only
construe the claim term “transversely.”
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that the assembly includes a pair of arm members “defining a recess, the first and second arm
member recess being transversely aligned.” (‘963 Patent, JA Ex. B, at col. 8, ll. 14, 52.)
Both parties agree that “transversely” is a commonly understood term, yet each party
has advocated for a different meaning. (Defs’ Br. at 24; Pl’s Br. at 20.) Defendants contend
“transversely” should be construed as “directed along a line parallel to an axis about which the
cross bar pivots when the cross bar is engaged in the recesses.” (Defs’ Br. at 24.) Plaintiff,
meanwhile, argues “transversely” means “being across.” (Pl’s Br. at 20.) For the reasons
explained below, this court finds that Plaintiff’s proposed construction is the correct one.
As with all other terms, this court’s analysis of the term “transversely” begins with the
words of the claims themselves, in view of the specification. Phillips, 415 F.3d at 1315. The
commonly understood meaning of “transverse” is “acting, lying, or being across.” MERRIAMWEBSTER’S COLLEGIATE DICTIONARY 1331 (11th ed. 2003). “Transverse” can also mean “made
at right angles to the long axis of the body.” Id. A “transverse section,” for example, is a cross
section obtained by slicing the body (or any part of the body) in a horizontal plane that intersects
the longitudinal axis at a right angle.
A review of the claim language shows the term “transversely” should be construed
according to its common meaning, “acting, lying, or being across.” Throughout the claims,
“transversely” modifies the word “aligned,” and in the case of the ‘963 Patent, the word
“opposed.” (See, e.g., ‘432 Patent, JA Ex. A, col. 4, line 64; ‘963 Patent, JA Ex. B, col. 8, ll. 14,
52.)

Both “aligned” and “opposed” typically describe the position of one thing relative to

another. One may state, for example, that “stars are aligned” or “opinions are diametrically
opposed.” Thus, the fact that the holes and recesses are described as being “transversely
aligned” or “transversely opposed” appears to refer to the relationship between the holes and
between the recesses, not their relationship with an axis. Phillips, 415 F.3d at 1314 (“[T]he
context in which a term is used in the asserted claim can be highly instructive.”). The use of the
phrase “transversely opposed” in the ‘963 Patent especially shows that “transversely” refers to
31

holes and recesses positioned across from, and opposite to, one another.

See MERRIAM-

WEBSTER’S COLLEGIATE DICTIONARY 871 (11th ed. 2003) (defining “opposite” as “set over
against something that is at the other end or side of an intervening line or space”).

And,

contrary to Defendants’ contention, nothing in the specification, prosecution history, or other
intrinsic evidence supports the alternate construction. In fact, like the claims themselves, the
specification in each patent also describes the holes and recesses as being “transversely
aligned.” (See, e.g., ‘432 Patent, JA Ex. A, col. 1, ll. 42, 45, 62; col. 2, ll. 14, 23; col. 4, ll. 1-2,
26-27; ‘432 Patent, JA Ex. B, col. 2, ll. 1, 4, 13, 37, 42, 53.)

To support their position,

Defendants primarily rely on a technical dictionary definition of “transverse,” as well as an expert
declaration. (Defs’ Br. at 24-25.) It is well established, however, that these forms of extrinsic
evidence are of less significance than the intrinsic record. Phillips, 415 F.3d at 1317 (citing C.R.
Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).
Because there is no reason why the meaning of “transversely” should depart from its
commonly understood meaning, this court concludes that Plaintiff’s construction more
accurately captures the meaning of the term. Thus the court construes the term “transversely”
as: “across from.”
CONCLUSION
The claim terms in the ‘432 Patent and ‘963 Patent are construed in accordance with the
foregoing.
ENTER:

Dated: October 5, 2015

_________________________________________
REBECCA R. PALLMEYER
United States District Judge

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