Norix Group, Inc. v. Correctional Technologies, Inc. d/b/a Cortech USA et al
Filing
109
MEMORANDUM Opinion and Order Signed by the Honorable John Robert Blakey on 3/10/2020. Mailed notice(gel, )
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
NORIX GROUP, INC.,
Plaintiff,
Case No. 17-cv-07914
v.
Judge John Robert Blakey
CORRECTOINAL TECHNOLOGIES,
INC., d/b/a CORTECH USA, and VDL
INDUSTRIES, LLC, d/b/a AMERICAN
SHAMROCK,
Defendants.
MEMORANDUM OPINION AND ORDER
This patent infringement action comes before this Court for interpretation and
construction of certain disputed claims in patent no. 9,661,933 (the ’933 patent). This
patent generally claims a one-piece, molded bed suitable for intensive use
environments such as prisons and behavioral health centers. This Court conducted
a Markman hearing on January 10, 2019. [93]. Upon consideration of the parties’
arguments, and for the reasons stated herein, this Court adopts the constructions set
forth below.
I.
Patent Overview
As Plaintiff’s counsel explained at the Markman hearing, the ’933 patent
describes an intensive-use bed suitable for demanding environments—such as
prisons or mental health facilities—requiring furniture that resists abuse from
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occupants. Plaintiff also designed the bed so that occupants could not use it as a tool
to hurt themselves or others. For these reasons, Plaintiff sought to create a durable
bed that remains easy to maintain and possesses certain features useful for these
goals, such as the ability to mount to the ground or wall.
The ’933 patent consists of three independent claims (Claims 1, 12, and 15).
[31-1] at 20. In its briefing, Plaintiff provided a visual breakdown of the claims and
their elements. [74-2]. This Court reproduces that chart below. The parties dispute
the bolded terms.
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3
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As to the disputed claims, the chart below details the contested claims and the parties’
competing constructions.
Term/phrase addressed in
claim construction briefs
“a support surface on the
top surface” (claims 1, 12,
15)
Plaintiff’s proposed construction
Defendants’ proposed construction
Ordinary meaning, or,
alternatively, the part of the top
surface that together with the Two distinct elements, namely a “top
ridge forms a recessed pocket as surface” and “a support surface” on
the top surface.
a means for locating a mattress
as well as containing the seepage
of fluids within the ridge.
Any of the structures described
A “means for attaching the in the specification for attaching
furniture to a mounting surface,
bed” (claim 1)
or an equivalent thereof.
Recessed scallop shaped pockets in
outer walls with a mounting flange
and a hole for receiving a fastener
such as a bolt that passes through
the hole and into the floor, or an
equivalent structure thereof.
“mounting surface” (claim
1)
Ordinary meaning, or,
alternatively, a surface upon
which the bed should be
mounted, such as the floor.
The outer edge of the bottom surface
of the bed that contains the caulk
channel and which contacts a
structural element, such as a floor.
“in one of the first or
second side wall” (claim 1)
In either of the first or second
side walls.
In one of the first or second side
wall, but not both side walls.
“within the perimeter of
the support surface”
(claims 1, 12, 15)
Ordinary meaning or,
alternatively, into the perimeter
of the support surface.
Within the perimeter defined by the
support surface and not extending
beyond.
“integrally molded in the
outer shell” (claims 1, 12)
Molded and part of, welded to, or
attached by fasteners or adhesive
to the outer shell.
Molded as a single complete unit.
“to form an enclosed space”
(claim 1)
Ordinary meaning or,
alternatively, to form a space
bounded on all sides by surfaces
or a single opening
A space enclosed on all sides.
“the storage compartment
under the support surface
having a storage opening
in a wall” (claim 12)
Ordinary meaning or,
alternatively, the storage
compartment being under the
support surface and having a
storage opening in any one of the
side or end walls.
A storage compartment under the
support surface having a storage
opening in a separate and distinct
wall from any wall previously
defined earlier in the claim.
Ordinary meaning or,
alternatively, a top to the storage
“a top on the top surface”
compartment that is attached or
(claim 12)
in proximity to the top surface of
the bed.
“further comprises a
Ordinary meaning or,
sloping storage cavity floor”
alternatively, the storage
(claim 12)
compartment floor is sloping.
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A new “top” element on the top
surface.
An additional element, a sloping
cavity floor.
II.
Legal Standard
Claim construction constitutes a question of law to be determined by the court.
Markman v. Westview Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en
banc), aff’d, 517 U.S. 370 (1996). This question remains a critical task because the
patent claims define the scope of the patent, impacting the future infringement
analysis. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005).
To determine patent claims, courts must give the claim words their “ordinary
and customary meaning” as they would have to a person of ordinary skill in the field.
Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
Courts must always begin by considering the intrinsic evidence on record including
the patent itself, consisting of the claims, the specification, and the prosecution
history. Vitronics, 90 F.3d at 1582. In fact, the specification often constitutes the
single best guide to determining the meaning of a disputed term. Id. at 1582. If the
intrinsic evidence does not settle the matter, however, courts may then turn to
extrinsic evidence. Phillips, 415 F.3d at 1317. Extrinsic evidence consists of “all
evidence external to the patent and prosecution history, including expert and
inventor testimony, dictionaries, and learned treatises.” Id. (quoting Markman, 52
F.3d at 980).
III.
Analysis
1.
“A Support Surface on the Top Surface” (Claims 1, 12, 15)
The parties first dispute the phrase “a support surface on the top surface.” [311] at 20. Defendants argue that this language requires the patented invention to
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include two separate surfaces: a top surface and a support surface. [56] at 13–14.
Defendants’ argument relies heavily upon an alleged necessary corollary of the
“antecedent basis rule.” Id. They explain that the antecedent basis rule stipulates
that the patent will refer to previously introduced claim elements or limitations using
definite articles such as “the” or “said.” Id. at 13. Thus, Defendants claim, elements
or limitations introduced with “a” or “an” must necessarily signal the introduction of
a new element or limitation. Id. While this Court accepts that it might certainly be
true that sometimes the patent will introduce a new element or limitation with “a” or
“an,” Defendants provide no support for why this must necessarily be the case.
Accordingly, under the requisite standards, this Court must examine the use
of the word “a” within the context of the whole patent. Interactive Gift Exp., Inc. v.
Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (explaining that the intrinsic
evidence, i.e., the patent itself, constitutes the most significant source of the operative
meaning of the claims).
Here, the patent states it claims an intensive use bed
comprising “a molded outer shell having a top surface, bottom surface, a pair of end
walls, a first side wall and a second side wall.” [31-1] at 20. This description lays out
the bed’s basic geometry. After describing the bed’s geometry, the patent further
states the bed has “a support surface on the top surface” and “a ridge surrounding
the perimeter of the support surface.” Id. In another section, the specification
explains that the ridge outlining the support surface forms a “recessed pocket as a
means for locating a mattress (not shown) as well as containing a seepage of bodily
or other undesirable fluid within the ridge.” Id. at 17.
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As such, the patent first explains the bed’s geometry as having a top, bottom,
and two end sides and two wall sides, and then goes on to specify certain features
about the top surface: namely that the top surface encompasses a support surface and
a ridge wall, together creating a recessed pocket. The specification does not mandate
a separate surface on the top surface. While the use of the word “a” could introduce
a new element, no language here compels such a conclusion. Moreover, the drawings
(corresponding to the numbered components in the specification and claims) further
confirm that the support surface does not constitute a separate surface from the top
surface. As Figures 1 and 3 show, the top surface (22) and the support surface (35)
point to the same area and do not provide any indication of a separate surface on top
of the top surface. Id. at 4–5. Instead, the drawing further clarifies the top surface’s
features.
Accordingly, this Court adopts the following construction: the support
surface is part of the top surface that together with the ridge forms a recessed pocket
as a means for locating a mattress as well as containing the seepage of fluids within
the ridge.
2.
A “Means for Attaching the Bed” (Claim 1)
In Claim 1, the patent claims an intensive use bed that includes “a means for
attaching the bed to a mounting surface in one of the first or second side wall.” Id.
at 20 (emphasis added). Both parties agree this claim amounts to a “means plus
function” claim. [56] at 15; [74] at 10. The Patent Act permits patent seekers to draft
claims in a means-plus-function format. 35 U.S.C. § 112(f) (“An element in a claim
for a combination may be expressed as a means or step for performing a specified
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function.”). These claims recite “a function to be performed rather than a definite
structure or the materials required to perform the function.” Advanced Med. Optics,
Inc. v. Alcon Inc., 361 F. Supp. 2d 370, 391 (D. Del. 2005). To construe this claim,
this Court must identify both: (1) the function recited in the claim; and (2) the
“structure(s) in the specification of the patent necessary to perform the recited
function.” Id.
Neither party disputes that the function described here constitutes a means
for attaching the intensive use bed to a mounting surface. See [56] at 15–16; [74] at
10–12. Instead, the parties contest the structures necessary to attach the bed to a
mounting surface. Id. Defendants propose a narrow construction based upon the
patent’s figures, proposing the following structure definition: “recessed scallop
shaped pockets in outer walls with a mounting flange and a hole for receiving a
fastener such as a bolt that passes through the hole and into the floor.” [56] at 16.
Fearing an arbitrarily narrowed scope of the claim, Plaintiff seeks a broad
construction that does not limit the function to only the structure set forth in the
specification. [74] at 11. 1 Instead, Plaintiff argues, the relevant structures consist of
any of the “structures described in the specification for attaching furniture to a
mounting surface, or an equivalent thereof.” Id. at 10.
Despite Plaintiff’s fears, the Patent Act clearly mandates that functional claims be “construed to
cover corresponding structure . . . described in the specification and equivalents thereof.” 35 U.S.C. §
112(f) (emphasis added). For this reason, naming a specific corresponding structure does not prohibit
a patentee from arguing that another product has an equivalent structure and thus infringes the
patent. Such issues, however, should be saved for the infringement analysis, rather than claim
construction.
1
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In both the patent language and figures here, the patent describes and shows
fastener pockets along the outer walls of the beds, which remain generally scalloped
shaped. See, e.g., [31-1] at 17, 20, Figures 1–10. These pockets include fastener holes
extending through the bottom surface. Accordingly, this Court construes “a means
for attaching the bed” as a means for attaching a bed through the following
structures: fastener pockets, generally scalloped shaped, along the outer bed walls
wherein each pocket contains a fastener hole extending through the bottom surface.
3.
“Mounting Surface” (Claim 1)
Relatedly, Claim 1 not only claims a means for attaching the bed, but a “means
for attaching the bed to a mounting surface.”
Id. at 20 (emphasis added).
Defendants construe “mounting surface” as a part of the bed, and seek the following
construction: “The outer edge of the bottom surface of the bed that contains the caulk
channel and which contacts a structural element, such as a floor.” [56] at 19. Plaintiff
counters that the mounting surface remains separate from the bed and should be
construed as “a surface upon which the bed should be mounted, such as a floor.” [74]
at 12.
Defendants premise their argument largely upon language from an earlier
Norix patent (the ’059 patent) wherein Defendants claim that Plaintiff defined
“mounting surface” as a specific portion of the bed. [56] at 16–20. Defendants also
point to Plaintiff’s communications to the USPTO during the ’059 patent’s
prosecution in which Plaintiff allegedly used the term “mounting surface” with an
alternative meaning. Id. at 17–18.
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This Court will again begin with the most important evidence, the patent’s
intrinsic evidence. Advanced Med. Optics, 361 F. Supp. 2d at 376. The language of
the claim unmistakably shows the mounting surface remains separate from the bed.
[33–1] at 20 (claiming an intensive use bed comprising of “a means for attaching the
bed to a mounting surface”) (emphasis added). Indeed, the entire concept of attaching
one item to another requires two distinct items to create the attachment. Attachable,
WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (3d ed. 1986) (“capable of being
fastened or added to something”) (emphasis added). Moreover, the specification also
clearly states that the mounting surface constitutes an external surface such as a
floor or a wall. See, e.g., [33–1] at 20 (“In the preferred embodiment, the components
are typically bolted to a structurally sound mounting surface such as a floor (bed,
nightstand, stool) or a wall (Wardrobe, wall shelf, wall storage units) through moldedin bolt hole locations.”).
In attempting to refute this evidence, Defendants point to certain language in
the ’059 patent’s specification that they claim seemingly describes the mounting
surface as part of the bed. See [56] at 16 (“The caulk channel 54 may be molded or
cut into the mounting surface and extends around the entire perimeter of the lower
surface.”). But this evidence remains extrinsic evidence related to a different patent
and it fails to overcome the intrinsic evidence. Moreover, as Plaintiff explains, when
an individual mounts two surfaces together, those in the industry commonly refer to
both surfaces as a “mounting surface” depending upon context. [74] at 13. Based
upon the record, this Court finds Plaintiff’s reading plausible and proper. For these
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reasons, this Court construes the phrase “mounting surface” as: a surface upon which
the bed could be mounted, such as a floor.
4.
“In One of the First or Second Side Wall” (Claim 1)
Claim 1 claims “a means for attaching the bed to a mounting surface in one
of the first or second side wall.” [31-1] at 20 (emphasis added). The dispute over
this phrase centers around the meaning of the word “or.” Defendants argue that the
patent uses “or” exclusively, so that the bed must be mounted in either the first or
second side wall but not both. [56] at 20. Plaintiff contends the patent uses “or”
inclusively, thus, the bed needs to be mounted in at least the first or second side wall
but could also be mounted in both. [74] at 15–16. This Court adopts the latter view.
The patent contains no evidence requiring or even suggesting that the bed may
not be attached to the mounting surface through both the first and second side wall.
Despite Defendants’ claims to the contrary, courts recognize that “or” can be either
exclusive or inclusive; and courts typically consider “or” exclusive only when
combined with “either,” see, e.g., Gonzalez v. Infostream Grp., Inc., Case No. 2:14-cv906-JRG-RSP, 2015 WL 5604448, at *18 (E.D. Tex. Sept. 21, 2015), which is not
present here. Given that the patent does not use the word “either” and that nothing
in the language, drawings, or function of the bed otherwise suggests use of the
exclusive version of “or,” this Court construes “in one of the first or second side wall”
to mean: in one of the first or second side walls or in both side walls.
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5.
“Within the Perimeter of the Support Surface” (Claims 1, 12, 15)
Claims 1, 12, and 15 claim an intensive use bed that features “a storage
compartment within the perimeter of the support surface.”
[31-1] at 20
(emphasis added). Figures 3 and 4 depict those storage compartments, labeled as
“28.”
Id. at 5.
Defendants contend that because the patent defines storage
compartment as “within the perimeter of the support surface” and the patent
elsewhere defines the “support surface” as surrounded by a different element (i.e., the
ridge surrounding the support surface as shown as (33) in Figures 1 and 3), then for
the storage compartment to be “within the perimeter of the support surface” it must
not extend beyond the support surface and into the ridge surrounding the support
surface. [56] at 22. This Court finds this reading unreasonable as the compartments
would not be compartments at all but hollow squares in the interior of the bed. No
third-party reading the patent would understand “compartment” that way, nor did
the illustrations depict the compartments in such a manner.
Additionally, the patent did not employ this language in a vacuum. Rather the
patent examiner modified the original language describing the storage compartment
spatially as “in the bed” to “within the perimeter of the support surface.” See [55] at
A532-33. The patent examiner modified this language in order to distinguish the ’933
patent from the prior art. Id.
That prior art disclosed beds featuring storage
compartments on the side of the bed, as opposed to compartments integrally molded
into the bed and located under the support surface. [74-4] at 8. In order to convey
that the ’933 patent describes internally molded storage compartments rather than
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molded on the bedside, the patent examiner added this language. Accordingly, the
language serves not to exclude the necessity of a storage opening in one of the side
walls (which would invariably encroach on the perimeter of the support surface as
described), but rather to clarify the position of that compartment.
Finally, Defendants’ proposed construction also directly conflicts with the list
of elements described in the subsequent claim language. For example, the claim then
describes that the storage compartment has “a storage opening,” which would be
impossible if the compartment did not encroach into the ridge area. [33-1] at 20.
Plaintiff’s proposed construction, on the other hand, does not conflict with the claim
language and still gives effect to the narrowing of claim scope the patent examiner
intended for the language to provide.
Accordingly, this Court construes “within the perimeter of the support surface”
to mean: into the perimeter of the support surface.
6.
“Integrally Molded in the Outer Shell” (Claims 1 and 12)
In further describing the storage compartments, Claims 1 and 12 claim an
intensive use bed with “a storage compartment integrally molded in the outer
shell.” [31-1] at 20 (emphasis added). Defendants argue that “integrally” modifies
the claim element requiring that the bed storage compartments be a part of the bed
as a single complete unit. [56] at 23. Plaintiff, on the other hand, claims the patent
provided an alternate definition for “integrally molded.” [74] at 19. Based upon the
record, Defendants’ reading prevails.
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To begin, this Court finds the claim language unambiguous.
The patent
describes the storage compartments as “integrally molded in the outer shell [of the
bed] to form an enclosed space.” [31-1] at 20. This description also remains consistent
with the disclosed embodiments, which show the storage compartments as molded
portions of the bed itself, not attachments. See id. at 5, Figures 3, 4.
Plaintiff’s proposed construction focuses upon one portion of the specification
explaining an alternate embodiment of intensive use furniture as depicted in Figures
25 and 34:
An integrally molded sloped top surface 193 is used to prevent storage
and concealment of contraband and further resist climbing. The sloped
surfaced [sic] could be a separate piece and attached during
manufacturing or installation by fasteners or adhesive as is well known
n [sic] the art of fastening plastic components together.
Id. at 19. This disclosure alone, however, does not provide the clear intent required
to substitute for an ordinary meaning under the “inventor’s lexicography.” Thorner
v. Sony Comput. Entm’t. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“It is not
enough for a patentee to simply disclose a single embodiment or use a word in the
same manner in all embodiments, the patentee must ‘clearly express an intent’ to
redefine the term.”) (citations omitted). In fact, this disclosure supports Defendants’
construction.
In the disclosure, Plaintiff introduces an element of its disclosed
wardrobe as “integrally molded.” The following sentence then describes that the
same element “could be a separate piece and attached during manufacturing or
installation.” (emphasis added). The patent could have described this element as a
separate piece attached later, but, as disclosed in the preferred embodiment, the
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patent describes the element as integrally molded. Therefore, “integrally molded”
does not encompass items created as a separate piece and attached later as used by
Plaintiff in this disclosure. Finally, this language refers to an “alternate embodiment
of an intensive use furniture” rather than the specific claimed intensive use bed
claimed in Claims 1 and 12.
For these reasons, this Court construes “integrally molded in the outer shell”
to mean: molded as a single complete unit within the outer shell.
7.
“To Form an Enclosed Space” (Claim 1)
The next contested phrase concerns the storage compartments and describing
the storage compartments as “integrally molded in the outer shell to form an enclosed
space.” [31-1] at 20. Figures 3 and 4 depict these storage compartments. Id. at 5.
Defendants argue that an enclosed space should be construed as “a space enclosed on
all sides,” [56] at 25, while Plaintiff maintains it should be understood as “to form a
space bounded on all sides by surfaces or a single opening,” [74] at 20.
Here,
Plaintiff’s reading controls.
To begin, Defendants rely entirely upon one piece of extrinsic evidence, a
dictionary definition, to support their construction.
[56] at 25–26.
Defendants
further concede that construing a storage compartment as enclosed on all sides would
lead to absurd results but claim this Court cannot redraft claims to avoid absurd
results. Id. While that may so, this Court also may not ignore unambiguous intrinsic
evidence to create an absurd result.
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As the claim itself explains, “enclosed space” refers to the storage
compartment, [31-1] at 20; and compartments must normally be accessible in order
to contain something. Figures 3 and 4 also affirm that the storage compartment
enclosure contains an opening.
Id. at 5.
Moreover, the definitions Defendants
mention—“to close in,” “surround,” or “confine,” [56] at 25—are not necessarily
inconsistent with a storage compartment containing a single opening, and other
sources explicitly recognize that an “enclosed space” includes an opening. See, e.g.,
Enclosed
Space
-
Definition(s),
Int’l
Ass’n
Drilling
Contractors
(2014),
https://www.iadclexicon.org/enclosed-space/ (describing the term in the drilling
context as a space with “limited openings for entry and exit”). Thus, this Court
construes “to form an enclosed space” as: bounded on most sides.
8.
“The Storage Compartment Under the Support Surface Having a
Storage Opening in a Wall” (Claim 12)
Claim 12 claims an intensive use bed that includes a storage compartment
“under the support surface having a storage opening in a wall.” [31-1] at 20. The
parties dispute the use of the word “a” to describe the “wall.” Defendants again point
to their logical corollary of the antecedent basis rule and maintain that any element
introduced with “a” or “an” must be a new element. [56] at 27. Once again, use of the
antecedent basis rule fails on the record presented here.
Instead, looking at the claim language, the disputed claim language does not
introduce a new element. When Claim 12 refers to “the storage compartment . . .
having a support surface in a wall,” the claim refers to the walls previously described
in the claim. [31-1] at 20 (describing “a pair of end walls, a first side wall and a second
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side wall”).
The patent buttresses this interference by the fact that no part of the
patent describes a fifth wall.
Accordingly, this Court construes “the storage
compartment under the support surface having a storage opening in a wall” to mean:
the storage compartment being under the support surface and having a storage
opening in one of the side walls.
9.
“A Top on the Top Surface” (Claim 12)
This Court next turns to the meaning of a storage compartment with “a top on
the top surface.” [31-1] at 20. Keeping with their theme, Defendants argue a “top”
constitutes a new element and must be something different than the “top surface.”
[56] at 27–29. As explained before, this Court does not construe “a” or “an” as
necessarily introducing a new element or surface. In context of the entire claim
element, this language instead explains the storage compartment, noting that it has
“a top,” which is located “on the top surface.” [31-1] at 20. Additionally, the patent
specification drawings remain consistent with this interpretation because the
specification fails to identify a new, separate surface on the compartment’s top
surface. Id. at 5, Figures 3, 4. For these reasons, this Court construes “a top on the
top surface” to mean: a top of the storage compartment, constituting the top surface.
10.
“Further Comprises a Sloping Storage Cavity Floor” (Claim 12)
Finally, this Court considers the meaning of a storage compartment that
“further comprises a sloping storage cavity floor.” [31-1] at 20. Defendants argue
that the use of “further comprising” means that the patent, once again, introduces a
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new element. [56] at 29. Plaintiff counters that the sloping floor merely describes
the storage compartment as consisting of a sloped floor. [74] at 24.
Based upon the record, this language introduces a limitation—that the storage
cavity floor slopes—rather than creating a distinct, separate storage compartment
floor. In fact, the entire claim makes clear that the patent introduces a limitation
rather than a new element:
[A] storage compartment within the perimeter of the support surface,
the storage compartment under the support surface having a storage
opening in a wall, a top on the top surface and a storage cavity floor, the
storage compartment integrally molded in the outer shell, the storage
compartment further comprises a sloping storage cavity floor opening
into one of the walls and disposed between the top surface and the
bottom surface.
[31-1] at 20 (emphasis added). The first part of the claim lists the elements explaining
the basic spatial relationships. The clause beginning with “further comprises” then
introduces more limitations and information about how these elements fit together,
mainly that the storage cavity floor slopes into the storage opening. Additionally,
Defendants offers no intrinsic support for their construction.
For these reasons, this Court construes “further comprising a sloping cavity
floor” as: the storage compartment floor slopes.
IV.
Conclusion
For the foregoing reasons, this Court adopts the constructions set forth above.
Dated: March 10, 2020.
____________________________________
John Robert Blakey
United States District Judge
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