Roto-Mix LLC v. Sioux Automation Center Inc
Filing
69
ORDER: The court has construed the various disputed claims in the two patents-in-suit, as set forth herein (see text of Order). Signed by Judge Linda R Reade on 12/27/2017. (skm)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF IOWA
WESTERN DIVISION
ROTO-MIX LLC,
Plaintiff,
No. 16-CV-4116-LRR
vs.
ORDER
SIOUX AUTOMATION CENTER,
INC.,
Defendant.
SIOUX AUTOMATION CENTER,
INC.,
Counter Claimant,
vs.
ROTO-MIX LLC,
Counter Defendant.
__________________
TABLE OF CONTENTS
I.
INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2
II.
RELEVANT FACTUAL AND PROCEDURAL BACKGROUND . . . . . . . . . 2
III.
SUBJECT MATTER JURISDICTION. . . . . . . . . . . . . . . . . . . . . . . . . . 3
IV.
PRINCIPLES OF CLAIM CONSTRUCTION . . . . . . . . . . . . . . . . . . . . . 4
A.
B.
C.
D.
V.
Claims . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Specification . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Prosecution History. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Extrinsic Evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
4
5
7
7
ANALYSIS. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
A.
The ‘166 Patent (Claim 1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
1.
Proposed constructions . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
2.
The parties’ arguments . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
3.
10
10
11
14
B.
The ‘166 Patent (Claim 2) and the ‘419 Patent (Claims 5 and 7) . . .
1.
Proposed constructions . . . . . . . . . . . . . . . . . . . . . . . . . .
2.
The parties’ arguments . . . . . . . . . . . . . . . . . . . . . . . . . .
3.
The court’s construction . . . . . . . . . . . . . . . . . . . . . . . . .
15
15
15
16
C.
VI.
The court’s construction . . . . . . . . . . . . . . . . . . . . . . . . .
a. “[E]ach” . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
b. “[B]eing free from surfaces” . . . . . . . . . . . . . . . . . . . .
c. Summary . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
The ‘419 Patent (Claims 1 and 6) . . . . . . . . . . . . . . . . . . . . . . .
1.
Proposed constructions . . . . . . . . . . . . . . . . . . . . . . . . . .
2.
The parties’ arguments . . . . . . . . . . . . . . . . . . . . . . . . . .
3.
The court’s construction . . . . . . . . . . . . . . . . . . . . . . . . .
18
18
18
19
CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
I. INTRODUCTION
This matter comes before the court for construction of the disputed claims of the
two patents-in-suit: (1) Animal Feed and Industrial Mixer Having Staggered Rotor Paddles
and Method for Making and Using Same, U.S. Patent No. 7,566,166 (filed June 26, 2006)
(the “‘166 Patent”) (docket no. 26-1); and (2) Animal Feed and Industrial Mixer Having
Staggered Rotor Paddles, U.S. Patent No. 8,177,419 (filed July 1, 2009) (the “‘419
Patent”) (docket no. 26-2).
II. RELEVANT FACTUAL AND PROCEDURAL BACKGROUND
Plaintiff Roto-Mix, LLC (“Roto-Mix”) is a Kansas limited liability company with
its principal place of business in Dodge City, Kansas. See Complaint (docket no. 2) ¶ 2.
On June 26, 2006, Roto-Mix applied for the ‘166 Patent. See ‘166 Patent. The ‘166
Patent describes “an animal feed and industrial mixer for mixing an animal feed mixture
and other industrial mixtures.” ‘166 Patent col. 2 l. 39-41. On July 28, 2009, the United
States Patent and Trademark Office issued the ‘166 Patent.
See id. On July 1, 2009,
shortly before the ‘166 Patent was issued, Roto-Mix filed a continuation application. See
‘419 Patent. On May 15, 2012, the continuation application was issued as the ‘419 Patent.
2
Id.
On September 21, 2016, Roto-Mix filed the present action against Defendant Sioux
Automation Center, Inc. (“SAC”). SAC is an Iowa corporation with its principal place
of business in Sioux Center, Iowa. See Complaint ¶ 3. Roto-Mix alleges that SAC
manufactures, uses and sells products which infringe on the ‘166 Patent and the ‘419
Patent.
See id. ¶¶ 5-22.
Roto-Mix alleges that it has been damaged by SAC’s
infringement and will continue to be damaged unless SAC is permanently enjoined from
infringing its patents. See id. ¶¶ 10, 18. Roto-Mix also seeks damages for the alleged
infringements. SAC denies that it has infringed either the ‘166 Patent or the ‘419 Patent.
See Answer and Counterclaims (docket no. 9) at 2-3.
SAC also asserts several
counterclaims against Roto-Mix. See id. at 5-7.
On July 3, 2017, the parties filed a “Joint Claim Construction Statement” (“Joint
Statement”) (docket no. 24) identifying all disputed claim terms and providing each
parties’ proposed construction. On July 31, 2017, Roto-Mix filed its “Opening Brief on
Claim Construction Issues” (“Roto-Mix Brief”) (docket no. 25). On that same date, SAC
filed its “Opening Claim Construction Brief” (“SAC Brief”) (docket no. 26). On August
14, 2017, Roto-Mix filed a Rebuttal (“Roto-Mix Rebuttal”) (docket no. 28). On August
17, 2017, SAC filed a Rebuttal (“SAC Rebuttal”) (docket no. 30).
On October 2, 2017, the court held a hearing pursuant to Markman v. Westview
Instruments, Inc., 517 U.S. 370 (1996). See October 2, 2017 Minute Entry (docket no.
32); see also Markman, 517 U.S. at 384 (stating that claim construction is a question of
law for the court), aff’g, 52 F.3d 967 (Fed. Cir. 1995) (en banc).
The court finds that the disputed claims are fully submitted and ready for
construction.
III. SUBJECT MATTER JURISDICTION
The court has original jurisdiction of civil actions “arising under any Act of
3
Congress relating to patents.” 28 U.S.C. § 1338(a). Roto-Mix’s Complaint and SAC’s
Counterclaims raise various claims of patent infringement, in violation of 35 U.S.C. § 271.
Therefore, the court has subject-matter jurisdiction pursuant to 28 U.S.C. § 1338(a).
IV. PRINCIPLES OF CLAIM CONSTRUCTION
A patent is a legal document that describes the exact scope of an invention to
“secure to [the patentee] all to which he is entitled, [and] to apprise the public of what is
still open to them.” Markman, 517 U.S. at 373 (alterations in original) (citation omitted).
By statute, a patent consists of two different elements: (1) “one or more ‘claims,’ which
‘particularly poin[t] out and distinctly clai[m] the subject matter which the applicant
regards as his invention[;]’” and (2) the “specification,” which describes the invention “in
such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to
make and use the same.” Id. (citing 35 U.S.C. § 112). “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, 1312 (Fed. Cir. 2005) (en
banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
1111, 1115 (Fed. Cir. 2004)). The goal of claim construction is to give proper meaning
and scope to claim language. See Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed.
Cir. 1997).
“[T]here is no magic formula or catechism for conducting claim construction.”
Phillips, 415 F.3d at 1324. However, the Federal Circuit Court of Appeals has developed
the following general principles.
A. Claims
Claim construction always starts with the language of the claim itself. See Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“First, we look to the
words of the claims themselves . . . to define the scope of the patented invention.”).
“Claim terms are generally given their plain and ordinary meanings to one of skill in the
4
art when read in the context of the specification and prosecution history.” Hill-Rom
Servs., Inc. v. Stryker Corp, 755 F.3d 1367, 1371 (Fed. Cir. 2014) (citing Phillips, 415
F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets
out a definition and acts as his own lexicographer, or 2) when the patentee disavows the
full scope of the claim term either in the specification or during prosecution.” Id. (quoting
Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). The
ordinary rules of grammar and syntax also apply. See In re Hyatt, 708 F.2d 712, 714
(Fed. Cir. 1983) (“A claim must be read in accordance with the precepts of English
grammar.”).
“[T]he ordinary and customary meaning of a claim term 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,
i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313
(citation omitted). The perspective of a person of ordinary skill in the art is “based on the
well-settled understanding that inventors are typically persons skilled in the field of the
invention and that patents are addressed to and intended to be read by others of skill in the
pertinent art.” Id. In certain cases, however, the patentee may unequivocally impart a
novel meaning to claim terms. See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
1323 (Fed. Cir. 2003) (citations omitted). “It is a well-established axiom in patent law that
a patentee is free to be his or her own lexicographer and thus may use terms in a manner
contrary to or inconsistent with one or more of their ordinary meanings.” Hormone
Research Found., Inc. v. Genentech, Inc., 904 F.2d 1558, 1563 (Fed. Cir. 1990) (citation
omitted). Therefore, “it is always necessary to review the specification to determine
whether the inventor has used any terms in a manner inconsistent with their ordinary
meaning.” Vitronics, 90 F.3d at 1582.
B. Specification
The claims “must be read in view of the specification, of which they are a part.”
5
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc),
aff’d, 517 U.S. 370 (1996). The specification is “the primary basis for construing the
claims.” Phillips, 415 F.3d at 1315 (quoting Standard Oil Co. v. Am. Cynamid Co., 774
F.2d 448, 452 (Fed. Cir. 1985)). “The close kinship between the [specification] and the
claims is enforced by the statutory requirement that the specification describe the claimed
invention in ‘full, clear, concise, and exact terms.’” Id. at 1316 (quoting 35 U.S.C. §
112). The Federal Circuit has summarized:
Ultimately, the interpretation to be given a term can only be
determined and confirmed with a full understanding of what
the inventors actually invented and intended to envelop with
the claim. The construction that stays true to the claim
language and most naturally aligns with the patent’s
description of the invention will be, in the end, the correct
construction.
Id. (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed.
Cir. 1998)).
If there is a dispute about the meaning of a claim term, the specification presents
“the single best guide to the meaning of a disputed term.” Vitronics, 90 F.3d at 1582.
“[T]he purposes of the specification are to teach and enable those of skill in the art to make
and use the invention and to provide a best mode for doing so.” Phillips, 415 F.3d at
1323. It is well-settled, however, that courts should not ordinarily read a limitation into
a claim from the specification. As the Federal Circuit makes clear:
[The Federal Circuit] has consistently adhered to the
proposition that courts cannot alter what the patentee has
chosen to claim as his invention, that limitations appearing in
the specification will not be read into claims, and that
interpreting what is meant by a word in a claim “is not to be
confused with adding an extraneous limitation appearing in the
specification, which is improper.”
Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1348 (Fed. Cir. 1998) (emphasis in original)
6
(citation omitted); accord KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed.
Cir. 2000) (“[A]lthough the specifications may well indicate that certain embodiments are
preferred, particular embodiments appearing in a specification will not be read into the
claims when the claim language is broader than such embodiments.” (alteration in original)
(quoting Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir.
1994))). To avoid pitfalls, the court must remain focused “on understanding how a person
of ordinary skill in the art would understand the claim terms.” Phillips, 415 F.3d at 1323.
C. Prosecution History
The court “should also consider the patent’s prosecution history, if it is in
evidence.” Id. at 1317 (quoting Markman, 52 F.3d at 980). The prosecution history
consists of the record of the patent before the PTO. See id. The prosecution history also
includes the prior art cited during the examination of the patent. See id.
Although the prosecution history may assist in claim interpretation, as a general rule
it may not “enlarge, diminish, or vary the limitations in the claims.” Markman, 52 F.3d
at 980. Moreover, the prosecution history “often lacks the clarity of the specification and
thus is less useful for claim construction purposes.”
Phillips, 415 F.3d at 1317.
“Nonetheless, the prosecution history can often inform the meaning of the claim language
by demonstrating how the inventor understood the invention and whether the inventor
limited the invention in the course of prosecution, making the claim scope narrower than
it would otherwise be.” Id.
D. Extrinsic Evidence
The claims, the specification and the patent’s prosecution history comprise the socalled “intrinsic” evidence of the meaning of the claim terms. See Vitronics, 90 F.3d at
1582. The intrinsic evidence is considered the most important evidence for construing a
patent. See id. Other evidence that may be considered in construing a patent is so-called
“extrinsic evidence,” which is “evidence [that] is external to the patent and file history,
7
such as expert testimony, inventor testimony, dictionaries, and technical treatises and
articles.” Id. at 1584. For example, the court may:
consult dictionaries and technical treatises “at any time in
order to better understand the underlying technology and may
also rely on dictionary definitions when construing claim
terms, so long as the dictionary definition does not contradict
any definition found in or ascertained by a reading of the
patent documents.”
Phillips, 415 F.3d at 1322-23 (quoting Vitronics, 90 F.3d at 1584 n.6).
The Federal Circuit, however, has repeatedly cautioned district courts that, “while
extrinsic evidence ‘can shed useful light on the relevant art,’ . . . it is ‘less significant than
the intrinsic record in determining “the legally operative meaning of claim language.”’”
Id. at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir.
2004)). Extrinsic evidence “is unlikely to result in a reliable interpretation of patent claim
scope unless considered in the context of the intrinsic evidence.” Id. at 1319. As the
Federal Circuit articulated in Vitronics:
[I]n most situations, an analysis of the intrinsic evidence alone
will resolve any ambiguity in a disputed claim term. In such
circumstances, it is improper to rely on extrinsic evidence.
. . . The claims, specification, and [prosecution] history,
rather than extrinsic evidence, constitute the public record of
the patentee’s claim, a record on which the public is entitled to
rely. In other words, competitors are entitled to review the
public record, apply the established rules of claim
construction, ascertain the scope of the patentee’s claimed
invention and, thus, design around the claimed invention.
Allowing the public record to be altered or changed by
extrinsic evidence introduced at trial, such as expert testimony,
would make this right meaningless.
90 F.3d at 1583 (citations omitted).
The court has discretion to admit extrinsic evidence. See Phillips, 415 F.3d at
1319. District courts are not “barred from considering any particular sources or required
8
to analyze sources in any specific sequence, as long as those sources are not used to
contradict claim meaning that is unambiguous in light of the intrinsic evidence.” Id. at
1324. In exercising its discretion, however, the court should “keep in mind the flaws
inherent in each type of evidence and assess that evidence accordingly.” Id. at 1319.1
V. ANALYSIS
A. The ‘166 Patent (Claim 1)
1.
Proposed constructions
Term
Roto-Mix’s Proposed
Construction
SAC’s Proposed
Construction
“. . . each of the paddles
being free from surfaces
that impart axial movement
in opposite directions to the
mixture during rotation of
the rotor shaft”
“[E]ach paddle must be free
from two or more surfaces
that impart axial movement
in two or more opposite
directions to the mixture
during rotation of the rotor
shaft.”
“[T]he paddles must not
impart axial movement in
opposite directions to the
mixture during rotation of
the rotor shaft.”
See Joint Statement at 2.
2.
The parties’ arguments
The parties identify two issues in constructing this term. First, the parties dispute
the construction of the word “each” as incorporated into the term. Roto-Mix argues that
the word “‘each’ is used in its customary and ordinary fashion as a singular pronoun to
refer to each paddle separately.” Roto-Mix Rebuttal at 7. This term, therefore, should
be interpreted as referring to each paddle individually and not collectively. See id. SAC,
Title 35 U.S.C. § 112(f) also provides for a means-plus-function or step-plusfunction limitation. See Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364
(Fed. Cir. 2000) (noting that this statute “allows patent applicants to claim an element of
a combination functionally, without reciting structures for performing those functions”).
Neither party claims that this statute applies. Therefore, the court will not address the
relevant case law at this time.
1
9
however, contends that “each of the paddles” refers to the “collective ‘paddles,’ not each
paddle individually” and points to sections of the specification that refer to the paddles
collectively. SAC Brief at 10.
The second issue is whether “each of the paddles being free from surfaces that
impart axial movement in opposite directions” limits the paddles from having any surface
that imparts axial movement, or two or more surfaces that impart axial movement. RotoMix argues that it “did not limit its paddles to being free from surfaces that impart any
axial movement.” Roto-Mix Brief at 19 (emphasis omitted). Rather, the “phrase is a
limitation on each paddle and requires each paddle to be free from ‘surfaces’ that would
otherwise impart axial movement in ‘opposite directions.’”
Id. at 17 (emphasis in
original). Roto-Mix contends that reading a “pluralism requirement” into this term is
consistent with the specification, which states that “each paddle may ‘impart a single axial
direction, but not opposite directions to the materials being mixed.’” Id. at 18. SAC,
alternatively, contends that the term limits the paddles from having any surface that imparts
axial movement. See SAC Brief at 10. SAC contends that its interpretation is consistent
with the ordinary meaning, specification and the prosecution history—in which Roto-Mix
sought to distinguish its patent from what the parties refer to as the “Davis Patent,”2 which
covers a similar, but distinguishable, mixing apparatus. See id. at 10-14; SAC Rebuttal
at 5-6.
3.
The court’s construction
a.
“[E]ach”
The court begins its construction by defining the term “each.” The court finds that
a person with ordinary skill in the art would understand “each” to refer to the paddles
individually. The court notes that other sections of Claim 1 of the ‘166 Patent clearly refer
Material-Mixing Apparatus, U.S. Patent No. 3,638,920 (filed Nov. 27, 1970)
(docket no. 26-3).
2
10
to “all of the paddles” when the patent seeks to refer to the paddles collectively, suggesting
that “each” specifically denotes when the patent is referring to the paddles separately or
individually. See ‘166 Patent at 14. The prosecution history of the ‘166 Patent supports
this construction. The Examiner objected to Claim 18 of the originally filed ‘166 Patent
because it used a plural verb, “include,” rather than the singular, “included,” in relation
to the term “each of the paddles.” See Initial Office Action (docket no. 25-4) at 4 (“‘The
method of claim 15 wherein each of the paddles include a paddle edge . . .’ uses ‘include’
in the plural where the singular was apparently intended. Appropriate correction is
required.” (alteration in original) (emphasis omitted)). This suggests that the PTO viewed
the use of the term “each” as referring to each individual paddle. Finally, the court notes
that extrinsic evidence supports the court’s reading of the term. The dictionary defines
“each” as follows: “Every (individual of a number) regarded or treated separately.” Each,
Oxford English Dictionary. SAC produced no evidence suggesting that a person with
ordinary skill in the art would understand it differently.
SAC argues that the specification often refers to the paddles collectively and, thus,
“each” should be interpreted as referring to the paddles collectively. See SAC Rebuttal
at 6. That the specification refers to the paddles in the plural does not prevent Claim 1
from using “each” to address the paddles individually. SAC’s proposed construction of
“each” twists the ordinary meaning in a way that is not supported by the specification or
prosecution history. Accordingly, the court shall adopt Roto-Mix’s proposed construction.
b.
“[B]eing free from surfaces”
The court next constructs the phrase “being free from surfaces that impart axial
movement in opposite directions to the mixture during rotation of the rotor shaft.” The
court finds that the common usage of this term supports SAC’s proposed construction.
Roto-Mix is correct that the plural “surfaces” is used instead of the singular “surface.”
Despite use of the plural, a person with ordinary skill in the art would understand the
11
plural, when used in this context, to be inclusive of the singular. This is highlighted by
examining this convention in other contexts; for example, in the phrase “the courtroom is
free from judges that are hearing arguments.” For Roto-Mix, this phrase is true so long
as the courtroom does not contain two or more judges hearing arguments, that is, it is true
as long as the courtroom has no judge or only a singular judge in it. For SAC, however,
this phrase is true if there are not any judges hearing argument in the courtroom. SAC’s
construction is the common usage and Roto-Mix has not established that a person with
ordinary skill in the art would understand the term according to the hyper-technical manner
proposed by it.
This construction is also supported by the specification. The specification for the
‘166 Patent repeatedly states that the paddles are designed to “lift[] and tumbl[e]” the
mixture, not to impart axial movement to the mixture. See, e.g., ‘166 Patent col. 2 l. 2225 (“[T]he paddles turning rotation of the rotor imparting only lifting and tumbling action
and not imparting any axial or end to end movement with respect to the rotation of the
rotor.”); col. 3 l. 2-5 (“Each of the paddles is free from surfaces that impart axial
movement to the feed mixer during rotation of the rotor shaft but is positioned to
contribute to an improved tumbling action.”); col. 3 l. 26-29 (“[T]he rotation of the rotor
shaft and paddles on the arm ends does not cause the feed mixer to move in an axial
direction, but does impart a lifting and tumbling action to the mixer.”). The specification
also distinguishes the ‘166 Patent from the Davis Patent by stating that the Davis Patent:
shows paddles that are canted with respect to the axis of [the]
shaft so as to impart an axial movement to the material being
mixed. . . .
In contrast, the present invention . . . has paddles that are
parallel to the axis of the rotor shaft. Consequently, the
paddles of the present invention lift and tumble the ingredients
being mixed and do not impart an axial motion to the
ingredients being mixed.
12
Id. col. 1 l. 34-46 (formatting omitted). In contrasting the Davis Patent, the specification
notes that the Davis Patent depicts paddles canted so as to impart axial movement in a
single direction and distinguishes the ‘166 Patent as having paddles that do not impart
“an” axial movement.3 See id. The specification’s description of the paddles is illustrated
by figures showing paddles that lift and tumble but do not add axial movement to the
mixture. See id. fig. 2-5, 7-8. As such, the specification supports SAC’s proposed
construction.
The prosecution history also supports SAC’s proposed construction. In a Request
for Continued Examination (docket no 25-7), which Roto-Mix filed December 18, 2008,
Roto-Mix again distinguished the Davis Patent:
The Davis [P]atent . . . shows axial movement which is
precluded by the combination of [C]laim 1 in that each of the
paddles being free from surfaces that “impart axial movement
in opposite directions to the feed mixture during the rotation of
the rotor shaft.” It would not be obvious to create these
paddles that do not impart axial movement, and therefore the
Davis [P]atent . . . does not anticipate the patents. Similarly
the Rozeboom [P]atent does not show a device that precludes
axial movement.
Request for Continued Examination at 12. This prosecution history highlights that Claim
1 precludes paddles that impart axial movement and that part of the reason the ‘166 Patent
is novel is because it was not obvious to create “paddles that do not impart axial
movement.” See id.
At the Markman hearing, Roto-Mix suggested that the paddles depicted in the
Davis Patent include the blades on the shafts which impart axial movement in an opposite
direction to the paddles and, as such, the Davis Patent depicts paddles imparting axial
movement in two or more directions. The specification does not, however, adopt this
understanding of the paddles. Rather, it specifically discusses the “paddles that are canted
. . . so as to impart an axial movement” and the “shafts or arms [which] have blades . . .
that also impart an axial movement.” ‘166 Patent col. 1 l. 34-39.
3
13
The only support the court can find for Roto-Mix’s proposed construction is an
alternative statement included in the specification. See ‘166 Patent. col. 5. l. 48-53
(“[P]referably the paddles . . . include longitudinal axes that are parallel to shaft so as to
impart a lifting and tumbling action, but not an axial direction to the materials being
mixed.
Alternatively the paddles impart a single axial direction, but not opposite
directions to the materials being mixed.”). The use of the alternate suggests that the claim
language would not ordinarily support this construction. Further, this alternate language
runs counter to every other portion of the specification and the prosecution history, which
make clear that the paddles are designed to lift and tumble but not impart axial movement.
The court finds that a person of ordinary skill—in light of the common usage, specification
and prosecution history—would understand this disputed term to limit the paddles from
having any surface which imparts axial movement. Accordingly, the court shall adopt a
construction similar to that of SAC.
c.
Summary
The meaning of the term “each of the paddles being free from surfaces that impart
axial movement in opposite directions to the mixture during rotation of the rotor shaft” as
used in Claim 1 of the ‘166 Patent, is that each paddle must be free from any surface that
imparts axial movement in opposite directions to the mixture during rotation of the rotor
shaft. The court finds that this construction gives the term its plain and ordinary meaning
in light of the specification and prosecution history.
14
B. The ‘166 Patent (Claim 2) and the ‘419 Patent (Claims 5 and 7)
1.
Proposed constructions
Term
Roto-Mix’s Proposed
Construction
SAC’s Proposed
Construction
“. . . the paddles each
have a paddle edge
extending in a line parallel
to the longitudinal axis of
the rotor shaft”
“[E]ach paddle has a
portion that forms a line
contacting the wall of the
second chamber where the
contact line would, if
extended forever, never
contact the line formed by
the rotational axis of the
rotor shaft.”
“[E]ach paddle has a paddle
edge extending in a line that is
in the same plane as the
longitudinal axis of the rotor
shaft, and which, if extended
forever, would never contact
the line formed by the
rotational axis of the rotor
shaft; that is, not canted with
respect to the longitudinal axis
of the rotor shaft.”
See Joint Statement at 4-5, 8-9.
2.
The parties’ arguments
The parties dispute the construction of “line parallel to the longitudinal axis of the
rotor shaft.”4 Roto-Mix argues that this limitation “reinforces that [C]laim 1 allows each
paddle to impart axial movement in at least one direction—for example, via canting
(angling) of the paddle—but not in two opposite directions, while [C]laim 2, with its
requirement of at least one parallel edge on the paddle further minimizes axial movement
by requiring parallelism.” Roto-Mix Brief at 20. Roto-Mix does not believe that this
The parties agree that the limitations at issue in Claim 2 of the ‘166 Patent and
Claims 5 and 7 of the ‘419 Patent should be interpreted consistently. See Roto-Mix Brief
at 13; SAC Brief at 19. As such, the court shall interpret these limitations consistently.
See, e.g., Phillips, 415 F.3d at 1314 (“Because claim terms are normally used consistently
throughout [a] patent, the usage of a term in one claim can often illuminate the meaning
of the same term in other claims.”); Dayco Prods., Inc. v. Total Containment, Inc., 258
F.3d 1317, 1319, 1325-26 (Fed. Cir. 2001) (noting that where patents are derived from
the same parent application and have “nearly identical” specifications, the same words in
multiple patents will ordinarily have the same meaning).
4
15
limitation requires the parallel lines to remain equidistant to each other, but only requires
that the lines, if extended forever, would never contact each other. SAC contends that this
limitation requires both that the lines extend on the same plane, remaining equidistant from
each other indefinitely, and that the lines never touch. See SAC Brief at 14-15, 19.
3.
The court’s construction
The court finds that a person with ordinary skill in the art would understand
“parallel,” as used, to require that the lines remain equidistant to each other. The ‘166 and
‘419 Patent specifications support this construction when distinguishing the Davis Patent,
which:
shows paddles that are canted with respect to the axis of the
shaft so as to impart an axial movement to the material being
mixed. . . .
In contrast, the present invention . . . has paddles that are
parallel to the axis of the rotor shaft. Consequently, the
paddles of the present invention lift and tumble the ingredients
being mixed and do not impart an axial motion to the
ingredients being mixed.
‘166 Patent col. 1 l. 35-46 (formatting omitted); ‘419 Patent col. 1 l. 40-51 (formatting
omitted). The specification is clear that the parallel requirement of the claim language
prevents the paddles from being canted like those in the Davis Patent. Both patents also
provide figures which illustrate paddles with edge lines that would, if extended forever,
remain equidistant to the line extending from the rotor shaft. See ‘166 Patent fig. 2-5, 7-8;
‘419 Patent fig. 2-5, 7-8.
The dictionary definition of parallel also supports this
construction. See, e.g., Parallel, Oxford English Dictionary (defining“parallel” as: “lying
or extending alongside each other and always at the same distance apart; continuously
equidistant”). Roto-Mix presents no evidence that a person of ordinary skill would
construe “parallel” in a way counter to the plain and ordinary meaning.
Roto-Mix’s proposed construction abandons the common understanding of parallel,
which requires lines to remain equidistant, and instead proposes an interpretation where
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the parallel limitation only requires that the lines not intersect. Roto-Mix points to nothing
in the record supporting this counterintuitive definition. Indeed, the common usage is
supported by the specifications. See, e.g., ‘166 Patent col. 3 l. 50-55 (“The paddles are
oriented in a direction parallel with the axis of the rotor shaft within the second chamber
to prevent axial movement of the feed materials within the second chamber, while allowing
lifting and tumbling action of the mixture between the first and second chambers.”); ‘419
Patent col. 3 l. 23-25 (“[T]he paddles each have a paddle edge extending in a line parallel
to the longitudinal axis of the rotor shaft.”). Thus, the court adopts a construction similar
to the construction proposed by SAC.
Accordingly, the meaning of the term “the paddles each have a paddle edge
extending in a line parallel to the longitudinal axis of the rotor shaft,” as used in Claim 2
of the ‘166 Patent and Claims 5 and 7 of the ‘419 Patent, is that each paddle has a paddle
edge which, if extended forever, would remain parallel—that is, extending alongside and
always at the same distance apart; continuously equidistant—to the longitudinal axis of the
rotor shaft. The court finds that this construction gives the term its plain and ordinary
meaning in light of the specification and prosecution history.
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C. The ‘419 Patent (Claims 1 and 6)
1.
Proposed constructions
Term
Roto-Mix’s Proposed
Construction
SAC’s Proposed
Construction
“. . . each of the paddles is
free from surfaces that
would impart significant
axial movement to a
mixture in the second
chamber as the rotor shaft
is rotated”
See Joint Statement at 6-7.
“[E]ach paddle must be free
from two or more surfaces
that impart an important,
weighty, and notable,
movement of the mixture in
an axial direction.”
“[E]ach paddle must be free
of a surface that imparts a
perceptible, observable
movement of the mixture in
an axial direction.”
2.
The parties’ arguments
This dispute centers on the proper construction of the word “significant.”5 RotoMix argues that significant should be given its plain and ordinary meaning. Roto-Mix
Rebuttal at 10. Roto-Mix contends that “under SAC’s interpretation, significant axial
movement is effectively synonymous with mere axial movement.” Id. This is improper
because the “inclusion of ‘significant’ reinforces the inventors’ intention that the device
focus on lifting and tumbling the mixture.” Id. SAC contends that “‘significant’ operates
as language of magnitude” because it describes how much axial movement is allowed.
SAC Brief at 17. SAC argues that the specification only allows the paddles to lift and
tumble the mixture but not impart any axial movement. Id. Thus, SAC believes that
significant prevents “perceptible, observable” axial movement of the mixture.
The parties agree that the limitations at issue in Claims 1 and 6 of the ‘419 Patent
should be interpreted consistently. See Joint Statement at 6-7. As such, the court shall
interpret these limitations consistently. See Phillips, 415 F.3d at 1314 (“Because claim
terms are normally used consistently throughout a patent, the usage of a term in one claim
can often illuminate the meaning of the same term in other claims.”).
5
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3.
The court’s construction
As an initial matter, the court constructs “each of the paddles is free from surfaces
that would impart . . . axial movement to a mixture” in a manner consistent with the
court’s construction of Claim 1 of the ‘166 Patent. The parties have not provided any
argument suggesting that this portion of the term should be constructed differently.
Further, the ‘419 Patent is a continuation patent that is nearly identical to the ‘166 Patent.
See Dayco, 258 F.3d at 1319, 1325-26 (noting that where patents are derived from the
same parent application and have “nearly identical” specifications, the same words in
multiple patents will ordinarily have the same meaning). As such, the same principles of
construction apply.
The court next turns to the construction of “significant.” The use of significant in
Claims 1 and 6 is instructive; significant is used to describe the magnitude of axial
movement allowed. As Roto-Mix notes, it is reasonable to expect that the paddles may
impart some minor axial movement to the mixture. This is true even if the paddles are
parallel to the rotor shaft and free from any surface designed to impart axial movement.
The addition of “significant” allows the paddles to impart incidental axial movement but
prevents the kinds of notable axial movement that would result from a paddle surface
designed to produce the same. The court notes that extrinsic evidence supports the court’s
reading of the term. The dictionary defines “significant” as follows: “Sufficiently great
or important to be worthy of attention; noteworthy; consequential, influential.”
Significant, Oxford English Dictionary. SAC’s proposed definition, which limits any
perceptible axial movement, is counter to the common understanding of significant and
would effectively erase “significant” from the claim language. SAC points to nothing in
the specification or elsewhere, and the court finds nothing, that suggests “the inventor has
used [the term “significant”] in a manner inconsistent with [its] ordinary meaning.”
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Vitronics, 90 F.3d at 1582. Accordingly, the court adopts a construction of “significant”
similar to that proposed by Roto-Mix.
The meaning of the term “each of the paddles is free from surfaces that would
impart significant axial movement to a mixture in the second chamber as the rotor shaft is
rotated” as used in Claims 1 and 6 of the ‘419 Patent, is that each paddle must be free
from any surface that imparts important and notable axial movement to a mixture in the
second chamber as the rotor shaft is rotated. The court finds that this construction gives
the term its plain and ordinary meaning in light of the specification and prosecution
history.
VI. CONCLUSION
The court has construed the various disputed claims in the two patents-in-suit, as
set forth herein.
IT IS SO ORDERED.
DATED this 27th day of December, 2017.
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