Sioux Steel Company v. Prairie Land Millwright Services, Inc.

Filing 230

MEMORANDUM Opinion and Order: The Court construes the disputed claim terms as set forth in the accompanying Memorandum Opinion and Order. Signed by the Honorable Mary M. Rowland on 8/13/2020. Mailed notice. (dm, )

Case: 1:16-cv-02212 Document #: 230 Filed: 08/13/20 Page 1 of 19 PageID #:3706

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
SIOUX STEEL COMPANY,
Plaintiff,

Case No. 16-cv-2212

v.

Judge Mary M. Rowland

PRAIRIE LAND MILLWRIGHT
SERVICES, INC. and DUANE
CHAON,
Defendants.

MEMORANDUM OPINION AND ORDER
Plaintiff Sioux Steel Company (Sioux Steel) brings this suit against Defendants,
Prairie Land Millwright Services, Inc. and Duane Chaon (collectively, Prairie Land),
accusing them of infringing on Sioux Steel’s intellectual property rights. As set forth
in

Sioux

Steel’s

First

Amended

Complaint

(Dkt.

165),

Sioux

Steel

is

pursuing claims of patent infringement under 35 U.S.C § 271; false advertising under
the Lanham Act, 15 U.S.C. § 1125(a); and state law claims. As for the patent claims,
Sioux Steel alleges that Prairie Land has infringed U.S. Patent No. 8,967,937 (“the
‘937 Patent”). Prairie Land denies infringement and argues that the disputed claim
terms should be analyzed under 35 U.S.C. § 112(f).
A. Background and Procedural History
Sioux Steel, a South Dakota corporation, developed a modular storage bin sweep
that utilizes interconnected paddles to sweep and empty grain bins. The use of
paddles allows grain bins to be emptied more efficiently and is a safer system than

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the previous systems. 1 The ‘937 Patent discloses a “modular storage bin sweep
system.” U.S. Patent 8,967,937, Abstract. (Dkt. 174-1). This system “utiliz[es] paddles
to sweep particulate matter across a floor [and] may comprise a sweep assembly
including at least two units connectable together.” Id. The system may be comprised
of a “power unit configured to the paddles, a drive unit configured to move the sweep
assembly,” and in some instances “a traction enhancement structure” and/or “a pivot
unit . . . to permit a degree of pivotability.” Id. The ‘937 Patent was issued on March
3, 2015, with Sioux Steel as the sole assignee. Id. The ‘937 Patent contains twentyeight claims—one independent claim and twenty-seven dependent claims.
In filing this lawsuit, Sioux Steel alleged that Prairie Land’s “Bin Gator” bin
paddle sweep products infringe the ‘937 Patent. On April 28, 2016, Prairie Land
raised the invalidity of the ‘937 Patent in its Answer and Counterclaims (Dkt. 22); it
did not raise non-infringement based on a § 112(f) interpretation of the patent claims.
(Id.). However, in responding to a dismissal motion, Prairie Land amended their
pleadings to include the § 112(f) non-infringement defenses. (Dkt. 32). On August 8,
2016, the parties stipulated to the dismissal of the non-infringement claim including
Prairie Land’s § 112(f) argument. (Dkt. 38). On September 21, 2016, Prairie Land
petitioned for Inter Partes Review (IPR) with the Patent and Trial Appeals Board
(“PTAB”) seeking to invalidate the ‘937 Patent. See IPR2016–01873 (Dkt. 169-2). This
proceeding was conducted pursuant to the standard outlined in Phillips v. AWH
Previously, mechanical sweeps used an auger system that relied on an exposed helical blade
that could cause serious injury. Auger sweeps also had the disadvantage of not being able to
reach the entire bin floor, therefore preventing them from removing the maximum amount
of grain. (Dkt. 174 at 9-10).

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Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), requiring claim terms to receive the
“broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art.” Id. at 1316 (citation omitted). See also
Deep Green Wireless LLC v. Ooma, Inc., 809 F. App'x 804, 806 (Fed. Cir. 2020) (“When
an IPR is instituted from a petition filed before November 13, 2018, as here, the
claims are given the ‘broadest reasonable interpretation’ consistent with the
specification.”).
In its April 4, 2018 decision, the PTAB ruled that Prairie Land did not show that
claims 1–28 were unpatentable and found Patent ‘937 to be valid. The Board
construed the term “carry” as “supporting the paddles while they move”. (Dkt. 169-2
at 15). The Federal Circuit recently affirmed the Board’s decision. Prairie Land
Millwright Servs. v. Sioux Steel Co., No. 2019-1668, 2020 U.S. App. LEXIS 18770
(Fed. Cir. June 15, 2020) (per curium). Following PTAB’s decision, Prairie Land
reasserted their non-infringement and non-patentability counterclaims and
affirmative defenses, including that based on 35 U.S.C. § 112(f). (Dkt. 172).
The parties have presented their respective views on the disputed claims in
briefing and in a joint claim construction chart (Dkt. 178) and the Court held a claim
construction hearing on February 4, 2020. (Dkt. 216). This Court now construes the
disputed claim terms. 2

Prior to the hearing the parties agreed that a “pivot structure” which appears in claim 1
will be construed to mean a “structure containing a pin or shaft that allows for movement
about such pin or shaft.” (Dkt. 180). Further, at the start of the hearing, without objection
from Prairie Land, the Court determined that “weight support” used in claim 14 will be
construed as “an extended support for a weight” and the term “weight support” used in claim
21 requires no construction. (Dkt. 216, 2/4/20 Tr. at 5).

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B. Applicable Standard
1. 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, 415 F.3d
at 1312 (citation omitted). Claim construction is a matter of law for the Court to
determine. Markman v. Westview Instruments, Inc., 517 U.S. 370, 391, 116 S. Ct.
1384, 134 L. Ed. 2d 577 (1996); Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d
1350, 1357-58 (Fed. Cir. 2012); see also AFG Indus. v. Cardinal IG Co., 239 F.3d 1239,
1247 (Fed. Cir. 2001) (“the claim construction becomes the basis of the jury
instructions, should the case go to trial.”).
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 Communs.,
LLC v. ITC, 690 F.3d 1318, 1324 (Fed. Cir. 2012). A court interpreting a claim “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 context of the entire patent, including the specification.” Phillips, 415 F.3d

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at 1315. “After considering [] intrinsic evidence, a court may also seek guidance from
extrinsic evidence such as expert testimony, dictionaries, and treatises.” H-W Tech.,
L.C. v. Overstock.com, Inc., 758 F.3d 1329, 1332 (Fed. Cir. 2014).
2. Means-plus-function: 35 U.S.C. §112(f)
Prairie Land maintains that the terms in dispute in the ‘937 Patent are subject to
35 U.S.C. § 112(f), which provides: “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.” 3
Prairie Land argues that § 112(f) applies because the claim “terminology fails to
‘recite sufficiently definite structure’ or else recites ‘function without reciting
sufficient structure for performing that function.’” (Dkt. 175 at 8, quoting Williamson
v. Citrix Online, LLC, 792 F.3d 1339, 1348–1349 (Fed. Cir. 2015) (en banc) (citations
omitted)). In Williamson, the court observed that in enacting §112(f), Congress
allowed patentees to “express a claim limitation by reciting a function to be performed
rather than by reciting structure for performing that function, while placing specific
constraints on how such a limitation is to be construed, namely, by restricting the
scope of coverage to only the structure, materials, or acts described in the

Because of the filing date of the patent application here, September 9, 2011, “the meansplus-function provision applicable in this case is 35 U.S.C. § 112, ¶ 6, which is now codified,
without change material to this case, as 35 U.S.C. § 112(f).” Cochlear Bone Anchored Sols.
AB v. Oticon Med. AB, 958 F.3d 1348, 1352 n.1 (Fed. Cir. 2020). The parties refer to § 112(f)
and for consistency the Court will do so as well.

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specification as corresponding to the claimed function and equivalents thereof.” Id. at
1347. In determining whether to apply this analysis, the Federal Circuit recently
explained:
First, we determine if the claim limitation is drafted in means-plusfunction format. As part of this step, we consider whether the claim
limitation connotes ‘sufficiently definite structure’ to a person of
ordinary skill in the art. If we conclude that the limitation is in meanplus-function format, the second step requires us to review the
specifications to identify the structure that performs the claimed
function(s) and thus ‘corresponds to’ the claimed means. While related,
these two inquiries are distinct.
MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1344 (Fed. Cir. 2019).
In determining whether the claim is in means-plus-function format, courts
have acknowledged the importance of the presence [or absence] of the word ‘‘means.’’
Williamson, 792 F.3d at 1348. The use of the word ‘‘means’’ creates a rebuttable
presumption that § 112(f) applies. Id.; see Personalized Media Communications, LLC
v. International Trade Commission, 161 F.3d 696, 703–04 (Fed. Cir. 1998). The
converse is true: the failure to use the word “means” creates a rebuttable presumption
that § 112(f) does not apply. Williamson, 792 F.3d at 1348. MTD Prods., 933 F.3d at
1341 (“If [the claim limitation] does not [use the word ‘means’], we apply a rebuttable
presumption that the term conveys sufficiently definite structure and is not subject
to § 112, ¶ 6.”). However, when a claim term lacks the word ‘‘means,’’ the presumption
can be overcome if the challenger demonstrates that the claim term fails to ‘‘recite
sufficiently definite structure’’ or else recites ‘‘function without reciting sufficient
structure for performing that function.’’ Id. (citations omitted).

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The terms of the claim, irrespective of the presence of the word “means,” are to be
analyzed and understood by persons of ordinary skill in the art and whether this
person would understand the term to have “a sufficiently definite meaning as the
name for structure.” MTD Prods., 933 F.3d at 1344; see also Greenberg v. Ethicon
Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“What is important is . . .
that the term, as the name for structure, has a reasonably well understood meaning
in the art.”). A critical question is whether “the claim term is used in common
parlance or by persons of skill in the pertinent art to designate structure,” including
either a structure or a class of structures. MTD Prods., 933 F.3d at 1341 (quoting
Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1019 (Fed. Cir. 2017) (citing TecSec,
Inc. v. Int’l Bus. Machs. Corp., 731 F.3d 1336, 1347 (Fed. Cir. 2013)) (claim term
“wireless device means” did not invoke § 112, ¶ 6 because it denotes a class of
structures).
“One way to demonstrate that a claim limitation fails to recite sufficiently definite
structure is to show that, although not employing the word ‘means,’ the claim
limitation uses a similar ‘nonce word that can operate as a substitute for means in
the context of § 112, para. 6.’” MTD Prods., 933 F.3d at 1341 (citation omitted).
Further, even if the claims recite a nonce term followed by functional language, other
language in the claim “might inform the structural character of the limitation-inquestion or otherwise impart structure” to the claim term. Id. at 1341–42 (quoting
Williamson, 792 F.3d at 1351).

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In assessing whether § 112(f) applies, the Court considers the “entire passage
including functions performed by the introductory phrase.” Id. at 1342. The ultimate
question is whether “the claim language, read in light of the specification, recites
sufficiently definite structure to avoid § 112.” Media Rights Techs. Inc. v. Capital One
Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015) (citing Robert Bosch, LLC v. SnapOn Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014)). The Court analyzes whether the
“[c]laims are interpreted in light of the written description supporting them, and that
is true whether or not the claim construction involves interpreting a ‘means’
clause.” MTD Prods., 933 F.3d at 1342 (citing Inventio AG v. ThyssenKrupp Elevator
Ams. Corp., 649 F.3d 1350, 1356 (Fed. Cir. 2011), overruled on other grounds
by Williamson, 792 F.3d at 1339).
With these background principles in mind, the Court turns to the terms in dispute.
C. Discussion
1. A pivot unit
Sioux Steel asks the Court to construe ‘‘a pivot unit configured to carry a portion
of the succession of interconnected paddles” as a “unit allowing for pivotability
configured to contain and direct the course of a portion of the series of paddles
connected to one another.” (Dkt. 174 at 21). Prairie Land urges the Court to construe
“pivot unit” pursuant to § 112(f) and construe “a pivot unit configured to carry” as
“the structure, material, or acts described in the specification which carry a portion
of the succession of interconnected paddles” (i.e., “support the weight of a portion of
paddles”), and thus encompasses a sprocket or similar “rotatable driven member”

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which supports the paddles’ weight via their chain and other “endless loop member.”
(Dkt. 178-1 at 2).
The Court construes the term “pivot unit” consistent with Sioux Steel’s proposed
construction. First, the claim does not use the word “means”; therefore, the
presumption weighs against relying on § 112(f). Williamson, 792 F.3d at 1348. Prairie
Land argues the word “unit” is a nonce term and a substitute for the word “means.”
(Dkt. 175 at 5). But the term “unit” is not to be analyzed in isolation, rather the Court
is to consider other language in the claim that “might inform the structural character
of the limitation-in-question or otherwise impart structure” to the claim. MTD Prods.,
933 F.3d at 1341–42 (citation omitted). To determine the meaning of the term, the
Court must consider whether “the claim language, read in light of the specification,
recites sufficiently definite structure to avoid § 112(f).” Media Rights Techs. Inc., 800
F.3d at 1372. For the following reasons, the Court concludes “pivot unit” is a definite
structure and declines to construe the term under § 112(f).
Claim 1 gives context to the term “pivot unit” when it states that the pivot unit
includes a “pivot structure positioned between and connecting the sections [of
interconnected paddles] to permit pivoting...” 11:10-14. See Phillips, 415 F.3d at 1314
(“the claims themselves provide substantial guidance as to the meaning of particular
claim terms”). Further, prior to the hearing the parties agreed “pivot structure” will
be construed to mean “a structure containing a pin or shaft that allows for movement
about such pin or shaft” (Dkt. 180), giving more definition to the meaning of the “pivot
unit.”

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In addition, the dependent claims also state that the pivot unit “also forms the
drive unit”; the pivot structure “comprises one or more pivot arms…the pivot arms
and the pivot tabs being pivotally fastened together by pivot pins”; the pivot unit is
“positioned between the power unit and the drive unit”; and the pivot unit includes a
“surface engaging portion.” (Claims 4, 6, 8, 10). See TEK Glob., S.R.L. v. Sealant Sys.
Int'l, 920 F.3d 777, 786 (Fed. Cir. 2019) (dependent claims suggested that § 112, ¶ 6
did not govern because they “add[ed] limitations that either describe particular
structural features or flesh out whether the term has a particular structural
meaning.”) (citation omitted). Furthermore, Figure 11 depicts, in detail, a “schematic
exploded perspective view of the pivot unit of the bin sweep system, according to an
illustrative embodiment, and shown isolated from other elements of the system.” The
pivot unit (90), is shown as comprising the entire object in Figure 11 and containing
a number of structural elements. (Fig. 11).
Finally, the Specification states “units” may have different lengths that: (1)
correspond to the length of the sweep assembly and the radius of the grain bin, and
(2) may be connected to form a sweep assembly. 4:62–5:8. Furthermore, Column 9
provides greater detail about the “pivot unit” that convinces the Court it is a definite
structure. It states that the “pivot unit” may “have a pair of connected sections that
are able to move with respect to each other, and may be able to pivot about a
substantially horizontal axis with respect to each other” (9:31-35), and it may “be
combined or integrated with the drive unit.” 9:53–54.

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In light of all of the above-described intrinsic evidence, the Court adopts Sioux
Steel’s proposed construction and construes the term “pivot unit” as a “unit allowing
for pivotability”.
2. Carry
Next, the Court turns to the term “carry.” Prairie Land urges the court to follow
the PTAB’s interpretation that “carry” means “supporting the paddles while they
move” and supporting “the weight of a portion of paddles”. (Dkt. 178-1 at 2); see
IPR2016–01873 (Dkt. 169-2, p.14). First the Court acknowledges that it is not bound
by the Patent Office’s interpretation. SRAM Corp. v. AD-II Engineering, Inc., 465
F.3d 1351, 1359 (Fed. Cir. 2006); PPC Broadband, Inc. v. Corning Optical Communs.
RF, LLC, 815 F.3d 734, 742 (Fed. Cir. 2016); see also Rensselaer Polytechnic Inst. v.
Apple Inc., 2014 U.S. Dist. LEXIS 5186, at *29 (N.D.N.Y. Jan. 15, 2014) (“[t]he focus
of the PTAB in [inter partes review] is upon validity; even if an IPR is conducted, that
administrative body will not engage in claim construction[;] [i]n making its
determination, the PTAB is mandated to accord claim terms their broadest possible
construction.”).
However, the PTAB determined the meaning of the term “carry” as supporting the
paddles while they move “in accordance with its plain and ordinary meaning”. 4 (Dkt.
211-2 at 14). PTAB noted Figure 13 is consistent with this construction. (Id. at 14-

PTAB noted that neither party urged the Board to interpret “carry” in any way other than
its plain and ordinary meaning. (Dkt. 211-2 at 13-14).
4

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15). 5 In addition, as noted by Prairie Land, the two terms (carry and supporting) are
used interchangeably twice to convey the movement of the paddles. (Dkt. 175 at 9,
comparing 9:65 (“endless loop member carrying the paddles”) to 5:50–51 (“endless
loop member supporting the succession of paddles”) (emphasis added). Further, the
Specification describes that the “power unit may comprise a first base portion which
carries a portion of the succession of interconnected paddles”. 5:41–43. The
specification thus shows that the ordinary and customary meaning of carry in this
context is supporting the paddles.
Sioux Steel argues that “carry” should be construed as “to contain and direct.”
(Dkt. 174 at 22). Sioux Steel argues that PTAB’s construction cannot be adopted
because it considered the wrong figure since it did not analyze the stand-alone pivot
unit. (Dkt. 174 at 18 (arguing the figure with the sprocket, Figure 13, should not have
been analyzed and the stand-alone figure, Figure 11, should have been considered
when construing the word)). While the Court agrees that Figure 13 is not dispositive,
PTAB did not make their decision solely based on Figure 13, but rather noted their
construction was consistent with Figure 13. (See Dkt. 211-2 at 14-15, relying on figs.
7-8 & 13 and the “endless loop” of paddles).
To argue for its construction, Sioux Steel also relies on the opinion of its expert,
Jeffrey D. Decker, that “…[t]he housing of the units aid to keep the paddles
contained within the linear array and along the path that extends between the

Specifically, PTAB found that “the embodiment of pivot unit/drive unit shown in Figure 13
is configured to support the weight of a portion of paddles 18 via rotatable driven member
60 while paddles 18 move.” (Id. at 14).

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inboard and outboard ends of the sweep.” (Dkt. 174 at 22-23). However, the Court
finds the intrinsic evidence in the Specification more convincing than the expert’s
opinion. And the Court does not find ambiguity in the patent such that it needs expert
testimony to construe the term “carry.” See Endo Pharm., Inc. v. Actavis LLC, 922
F.3d 1365, 1371 (Fed. Cir. 2019) (“While courts may consider extrinsic evidence in
claim construction, such evidence is generally of less significance than the intrinsic
record.”) (citation and quotations omitted); BASF Agro B.V. v. Makhteshim Agan of
N. Am., Inc., 519 F. App'x 1008, 1015 (Fed. Cir. 2013) (court looks to expert testimony
if “intrinsic record leaves ambiguities and unresolved questions.”); see also Brown v.
3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001) (terms that are “not technical terms of art”
generally “do not require elaborate interpretation.”). The Court finds that a person of
ordinary skill in the art in question at the time of the invention would understand
carry to mean “supporting the weight” of the paddles, and that finding is supported
by the language of the patent itself as well as the PTAB’s interpretation of the term.
Finally, under Phillips, Sioux Steel’s proposed construction would be broader than
the “broadest reasonable construction in light of the specification of the patent in
which they appear.” Phillips, 415 F.3d at 1316.
For these reasons, the Court adopts Prairie Land’s proposed construction and
construes the term “carry” as “supporting the weight.” 6

Sioux Steel argues Prairie Land argued in its brief in the Federal Circuit that the broadest
reasonable construction of “carry” does not just mean “supporting the weight,” but
encompasses the words “convey” and “transport.” (Dkt. 189-A at 4). Apparently, Defendant
argued to the Federal Circuit that “under the broadest reasonable construction standard,
where two claim constructions are reasonable, the broader construction governs” such that
PTAB’s construction was not the broadest one. Id. at 5. Prairie Land responds that its Federal
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3. A surface engaging portion
This phrase appears in Claim 1 as a “surface engaging portion configured to
engage a surface below the sweep assembly and move the sweep assembly with
respect to the surface . . .”
Sioux Steel argues that “surface engaging portion” does not need construction, but
if construed it should be construed in light of the claims and other intrinsic
information. (Dkt. 174 at 27). Similar to “pivot unit”, Prairie Land argues “surface
engaging portion” should be construed under § 112(f) and should be limited only to
the structure as stated in the Specification or equivalents thereof. (Dkt. 175 at 15).
However, Prairie Land also asserts that regardless of whether the Court construes
the term under § 112(f), the construction should not be as constrained as Sioux Steel’s
proposed construction. (Id.). For the reasons discussed below, the Court construes the
phrase in accord with Sioux Steel’s proposed construction.
This claim phrase does not use the word “means,” which means the burden rests
on Prairie Land to rebut the presumption. Williamson, 792 F.3d at 1348. First, the
term is not to be analyzed in isolation, but the Court is to consider other language in
the claim. MTD Prods., 933 F.3d at 1341–42 (citation omitted). Claim 1 indicates the
“surface engaging portion” is a structural part of the drive unit that engages the
surface below the sweep assembly. 11:1–3. Further, Claim 1 indicates the “surface

Circuit arguments have no bearing on this Court’s claim construction determination and
asserts Sioux Steel has itself revised its positions. (Dkt. 195 at 1-2). The Court is not
persuaded by these arguments. In any event, the Court “has an independent obligation to
determine the meaning of the claims, notwithstanding the views asserted by the adversary
parties.” Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995).

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engaging portion” comprises at least one surface engaging wheel. 11:4–6. The next
step is to analyze the claim in light of the specification. Media Rights Techs. Inc., 800
F.3d at 1372. When looking at column 7, the Specification indicates permissive
language describing the “surface engaging portion.” These descriptions include being
mounted on the second housing segment, including a surface engaging wheel, and
including a drive train. 7:15–34. Therefore, the claim language read in light of the
Specification sufficiently recites a sufficient, definite structure to perform the claimed
function. Rembrandt Data Techs., LLC v. AOL, LLC, 641 F.3d 1331, 1340 (Fed. Cir.
2011). The Court finds § 112(f) is not applicable.
Prairie Land next argues that the “surface engaging portion” should be construed
to include a “drive train.” An embodiment states “the surface engaging portion may
include a drive train that is configured to transmit power from the succession of the
paddles (such as the endless loop member) to the wheel or wheels.” 7:34–37. However,
it is improper to “import[ ] limitations from the specification into the claims,” Phillips,
415 F.3d at 1323. By adopting Prairie Land’s construction, this Court would be
importing a limitation on the claim from the Specification, which the Phillips court
forbids.
Despite Sioux Steel arguing this term does not need construction, the Court holds
that this term is subject to construction to resolve a disputed term and clarify its
technical scope. 7 U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir.
The Federal Circuit has held that a finding that a claim term “needs no construction” or has
the “plain and ordinary meaning” is inadequate when it does not resolve the parties’ dispute.
O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008)
(where parties agreed that “only if” has a common meaning, but then proceeded to dispute

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1997). The Court adopts Sioux Steel’s construction and holds “surface engaging
portion” means “a portion of the drive unit configured to engage a surface.”
4. A motor portion
A motor portion is contained in Claim 11 and refers to the power unit that
“includes a motor portion configured to move the succession of interconnected paddles
along the path.” Sioux Steel argues that “motor portion” does not need construction,
but if construed it should be construed in light of the claims and other intrinsic
information. (Dkt. 174 at 30). Similar to the “surface engaging portion”, Prairie Land
argues “motor portion” should be construed under 35 U.S.C. § 112(f), but even if it is
not, Sioux Steel’s proposed construction is too constrained. (Dkt. 175 at 16). For the
reasons discussed below, the Court construes the phrase in alignment with Sioux
Steel’s proposed construction.
Again, the claim does not use the word “means”; but the patent provides
sufficiently definite structure to avoid interpretation under § 112. Media Rights
Techs. Inc., 800 F.3d at 1372. For example, the specification states that “motor
portion” is part of the power unit, it is connected to the first base portion, and it is
mounted on the first housing segment. 6:41-50. Further the motor portion may
“comprise a motor connected to the rotatable drive member”, “a hood that encloses
the motor,” and a “gearset [] connects the motor to the rotatable drive member.” Id.

the scope of that claim term … the “ordinary” meaning of term did not resolve the parties’
dispute, and “claim construction required the court to determine what claim scope is
appropriate in the context of the patents-in-suit.”)

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Case: 1:16-cv-02212 Document #: 230 Filed: 08/13/20 Page 17 of 19 PageID #:3722

See TEK Glob., S.R.L., 920 F.3d at 786 (specification showed patent “contemplate[d]
a conduit having physical structure.”).
The Court therefore construes the term “motor portion” consistent with Sioux
Steel’s proposal to mean “a portion of the power unit, which includes at least a motor.”
5. Traction enhancement structure
This term appears in Claims 12 and 21. Sioux Steel believes there is no
construction needed, but if construed it should be construed as “structure for
increasing the traction or tractability of the drive unit.” Sioux Steel relies on the
claims and other intrinsic evidence. (Dkt. 174 at 35). Prairie Land argues “traction
enhancement structure” should be construed under 35 U.S.C. § 112(f) because the
word “structure” does not recite a sufficient definite structure, but only recites a
function. (Dkt. 175 at 17–19).
Similar to all the above terms, this claim does not use the word “means” and the
burden is placed on Prairie Land. Williamson, 792 F.3d at 1348. The phrase is not to
be analyzed in isolation. MTD Prods., 933 F.3d at 1341–42 (citation omitted). As with
the previous terms, the patent provides sufficiently definite structure to
avoid interpretation under § 112(f). Media Rights Techs. Inc., 800 F.3d at 1372.
Despite Sioux Steel arguing this term does not need construction, the Court holds
that this term is subject to construction to resolve a disputed term and clarify its
technical scope. U.S. Surgical Corp., 103 F.3d at 1568. In terms of construction, the
“traction enhancement structure”, according to claim 12, is mounted on the drive unit.
11:47–48. This provides a definite structural aspect to the traction enhancement

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structure. Further, Claims 13-21 explicitly include other structural aspects, which
lead the Court to conclude that the “traction enhancement structure” is a definite
structure. See generally 11:49–12:37. For example, Claim 21 identifies the “traction
enhancement structure” as including a weight support mounted on the drive unit and
extending rearwardly of the drive unit to terminate rearwardly of the at least one
wheel and a weight removably mounted on the weight support. 12:30–37. For these
reasons the Court construes the phrase “traction enhancement structure” as
“structure for increasing the traction or tractability of the drive unit.”
D. Conclusion
For the reasons explained above, the disputed claim terms and phrases are
construed as follows:
Disputed Claim Term

Court’s Construction

“pivot unit”

unit allowing for pivotability

“carry”

supporting the weight

“a surface engaging portion”

a portion of the drive unit configured
to engage a surface

“motor portion”

a portion of the power unit, which
includes at least a motor

“traction enhancement structure”

structure for increasing the traction
or tractability of the drive unit

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E N T E R:
Dated: August 13, 2020
MARY M. ROWLAND
United States District Judge

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